When a Section 337 complaint is filed with the US International Trade Commission, the ITC has thirty days to evaluate the complaint before starting an investigation. This time might be perceived as the calm before the storm, but a company sued at the ITC should make maximum use of this period by selecting counsel, hiring experts, organizing offensive and defensive discovery, and other preparations. Once the investigation starts, a company must respond to numerous external and internal demands (many unique to the ITC) in much shorter time periods than in US court proceedings. Thus, the thirty days after a complaint is filed are an important phase of an ITC investigation. For some companies, even those familiar with US district court litigation, the unique procedures and pace of a 337 investigation can be intimidating. In this series, Steptoe’s Section 337 team addresses some of the actions to be taken for maximum advantage during this time. Here, we suggest questions that a company may consider asking outside counsel candidates.
One of the first tasks is to retain a capable, experienced team of ITC lawyers. Ensuring that you have counsel who have handled Section 337 cases and understand the intricacies and nuances of working with, and trying cases before, the ITC, is critical. We suggest considering the following questions as you select counsel:
- In view of the rapid pace and myriad demands of an ITC investigation, what are five first steps you would take if you were selected to act for us?
- Given the many simultaneous activities that must occur during an ITC investigation, how would you staff this case, and how does that differ from a district court patent litigation?
- Experts are typically the most important witness in an ITC investigation; how do you propose selecting and using consulting and testifying experts?
- What is your experience and approach in working with ITC personnel, including the Staff attorney?
- Can you describe your experience with US Customs concerning their enforcement of ITC orders?
- What is your approach to using redesigns in an ITC case, and did the ITC specifically address the redesign?
- What is your win rate in Section 337 investigations, and how do you calculate that number?
In future installments, we discuss potential responses to some of these questions. Each company will have particular issues of concern, but these questions may be useful in selecting the right firm for the time before (and during) the storm.