By Chad Gorka
Section 337 of the Tariff Act of 1930, codified at 19 U.S.C. § 1337, authorizes the ITC to declare unlawful the “importation into the United States, the sale for importation, or the sale within the United States after importation. . . of articles that - (i) infringe a valid and enforceable United States patent . . . ; or (ii) are made, produced, processed, or mined under, or by means of, a process covered by the claims of a valid and enforceable United States patent.”  Actions under this statute only require the ITC to have in rem jurisdiction over the imported articles at issue.  Unlike the personal jurisdiction requirement to bring an infringement case in a U.S. district court, the ITC does not need personal jurisdiction over any party. 

The explicit requirement in section 337 is often referred to as the importation requirement.  In the ITC, a complainant must establish that infringing articles have been, or imminently will be, imported into the United States in order to prevail.  In contrast, establishing importation is not required when initiating a patent infringement case in a U.S. district court.  Proving importation in a section 337 proceeding is not typically arduous.  Parties often stipulate to this element while, in other cases, importation is decided by the ITC on summary determination. 

Importation of an article into the U.S. does not have to actually occur in order to bring a complaint before the ITC, but it must at least be imminent.  In this respect, the Commission has previously recognized that there could be an imminent importation without a sale.  See, e.g., Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-376).  For example, a contract for future sale for importation into the U.S. has been deemed sufficient to establish importation.  Id.  Further, a complainant can satisfy the importation requirement even if the sale was made outside the U.S. by a foreign manufacturer to an intermediary.  See Ride-On Toy Vehicles (Inv. No. 337-TA-314) (importation established through sale to trading company outside the U.S.).  Moreover, if accused articles are imported into the U.S., even a small quantity will satisfy the importation requirement, such as samples for a trade show.  See, e.g., Acesulfame Potassium and Blends (Inv. No. 337-TA-403).  Also, products such as software can be imported electronically and thus are still considered as imported goods under section 337.  See, e.g., Hardware Logic Emulation Systems (Inv. No. 337-TA-383).  The ITC has even found importation when the very act of infringement occurs inside the U.S., if the accused article is exported from the U.S. and is later reimported.  See, e.g., Sputtered Carbon Coated Computer Disks (Inv. No. 337-TA-350).

With the increased popularity of the ITC as a forum for enforcing intellectual property rights, it is important to be cognizant of the importation requirement, even if it presents a relatively low hurdle for complainants in 337 investigations.

* Chad Gorka is a summer associate at Oblon Spivak