Did You Know...
By Eric Schweibenz and Sasha Rao
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Dec
16
For purposes of assessing the ongoing impact of the Commission’s 2011 plan to reduce the role of the Office of Unfair Import Investigations (“OUII”) in Section 337 investigations, we reviewed OUII’s participation rate in newly-instituted Section 337 actions over approximately the last three years.

By way of background, OUII serves, inter alia, as an independent third party representing the public interest in Section 337 actions. One of OUII’s tasks is to help create a complete record on all contested issues so that the Commission can properly enforce the provisions of Section 337. This is important because, unlike with district court litigation, a Section 337 action “is not purely private litigation ‘between the parties’ but rather is an ‘investigation’ by the Government into unfair methods of competition or unfair acts in the importation of articles into the United States.” Young Eng’rs, Inc. v. U.S. Int’l Trade Comm’n, 721 F.2d 1305, 1315 (Fed. Cir. 1983).
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By Tom Fisher
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May
19
In Section 337 actions before the International Trade Commission (“the Commission”), the complainant must establish that a domestic industry for articles protected by the asserted patent(s) exists or is in the process of being established.  19 U.S.C. § 1337(a)(2).  The domestic industry requirement consists of two prongs:  an economic prong and a technical prong.

To satisfy the economic prong of the domestic industry requirement, a complainant must show that one of the economic activities set forth in subsection 19 U.S.C. § 1337(a)(3) has taken place or is taking place.  These economic activities include:  significant investment in plant and equipment; significant employment of labor or capital; or substantial investment in exploitation, including engineering, research and development, or licensing.  The first two categories of economic activity generally require the complainant to show that significant manufacturing-related activities are taking place in the United States, while the third addresses other activities that may be considered in situations where there usually is no domestic manufacture of articles covered by the patents in suit.


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By Eric Schweibenz
|
Jun
29
Historically, stays of Section 337 actions pending the resolution of patent reexaminations at the U.S. Patent and Trademark Office (“PTO”) have rarely been granted.  But on September 16, 2012, new post-grant proceedings—Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP), and Inter Partes Review (IPR)—will become available to the public pursuant to the America Invents Act (AIA).  Unlike traditional reexamination, these new post-grant proceedings are designed to proceed relatively rapidly to final resolution.  Also unlike traditional reexamination, the estoppel provisions of the new proceedings will extend to the ITC.  As discussed on the Patents Post-Grant Blog, in view of these significant differences, it is possible that the ITC will eventually start to grant motions to stay Section 337 actions pending resolution of the new post-grant proceedings much more readily than it has in the past with traditional reexaminations.

By way of background, patents asserted in Section 337 actions have often been the subject of concurrent reexamination proceedings at the PTO.  When this occurs, Respondents sometimes seek to stay the Section 337 investigation pending the outcome of the reexamination.  However, because of the unique nature of the ITC as a forum, stays pending reexamination have rarely been granted at the ITC.  See our November 6, 2009 post for more details on the factors used in evaluating motions to stay at the ITC.  For example, in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (Inv. No. 337-TA-605), the Commission reversed an ALJ’s Initial Determination granting a motion to stay the investigation pending the completion of reexamination proceedings.  The Commission made note of “Congress’s mandate that section 337 investigations be expeditiously adjudicated … and the Commission policy that, to the extent practicable and consistent with requirements of law, investigations be conducted expeditiously to avoid delay.”  Comm’n Op. at 6.  The Federal Circuit later denied a request for a writ of mandamus to vacate the Commission’s opinion.  In re Freescale Semiconductor, Inc., 2008 U.S. App. LEXIS 15739, at *4 (Fed. Cir. Jun. 25, 2008).  More recently, ALJ E. James Gildea denied a motion to stay an investigation pending reexamination in Certain Blu-Ray Disc Players, Components Thereof and Products Containing the Same (Inv. No. 337-TA-824).  See our April 18, 2012 post for more details.


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By Eric Schweibenz
|
Jun
22
Any regular reader of this blog will recognize that the vast majority of Section 337 actions involve the importation, sale for importation, and/or sale within the U.S. after importation of articles that allegedly infringe U.S. patents.  See 19 U.S.C. § 1337(a)(1)(B).  However, patents are not the only form of intellectual property that can form the basis for a Section 337 action.  The statute also prohibits, inter alia, “[u]nfair methods of competition and unfair acts in the importation of articles … into the United States, … the threat or effect of which is … to destroy or substantially injure an industry in the United States.”  19 U.S.C. § 1337(a)(1)(A).  The ITC has long interpreted this provision of Section 337 to apply to trade secret misappropriation.  See TianRui Group Co. v. ITC, 661 F.3d 1322, 1326 (Fed. Cir. 2011).  But until the TianRui decision, it was not entirely clear whether Section 337 could prohibit the importation of articles manufactured using misappropriated trade secrets where the acts of misappropriation occurred entirely outside the U.S.

By way of background, TianRui was an appeal from the ITC’s finding of a violation of Section 337 in Certain Cast Steel Railway Wheels, Certain Processes For Manufacturing Or Relating To Same And Certain Products Containing Same (Inv. No. 337-TA-655).  See our October 19, 2009 and December 4, 2009 posts for more details.  Complainant Amsted Industries Inc. (“Amsted”) was an American-based company that developed two secret processes to make cast steel railway wheels.  Amsted used one of the processes and licensed the other to companies overseas, including companies in China.  The basis of the ITC’s investigation was Amsted’s complaint, filed August 14, 2008, alleging a violation of Section 337 in the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain cast steel railway wheels and products containing the same by reason of misappropriation of Amsted’s trade secrets (the “ABC trade secrets”).  The complaint named TianRui Group Company Limited; TianRui Group Foundry Company Limited; Standard Car Truck Company, Inc. and Barber TianRui Railway Supply, LLC (collectively “TianRui”) as Respondents. 


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By Tia Fenton
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Apr
23
The Federal Circuit recently issued a precedential opinion in General Electric Co. v. ITC, 670 F.3d 1206 (Fed. Cir. 2012).  See our March 1, 2012 post.  In this opinion, the Court addressed its 1984 decision in Beloit, which gave the Commission the “liberty to reach a ‘no violation’ determination on a single dispositive issue,” such as non-infringement.  Beloit Corp. v. Valment Oy, 742 F.3d 1421, 1423 (Fed. Cir. 1984).  In other words, under Beloit, the Commission could dispose of investigations by reaching final determinations as to some, but not all dispositive issues.  Recognizing that the approach carried a risk of remand, the Court reasoned that the risk was outweighed by the benefits of easing the burden on a Commission that was often faced with “numerous complex issues … within rigid time limits,” and saving “the parties, the Commission, and this court unnecessary cost and effort.”  Id

On appeal in Beloit, the Respondent was precluded from arguing the issues of validity and domestic industry, as the Commission only took a position on non-infringement.  Id. at 1422-23.  This issue of judicial appeal, when the Commission takes no position on certain issues in disposing of a Section 337 action, was addressed by the Federal Circuit in the General Electric case.  In the General Electric (“GE”) investigation, the ALJ found that Respondent infringed three patents, including U.S. Patent No. 6,921,985 (the ‘985 patent); that the three patents were unenforceable or invalid; that GE had domestic industry with respect to two of the three patents; and that there was a violation of Section 337.  The parties petitioned for review and the Commission issued a Notice of Review, indicating that it would review all issues in the decision, except importation and the intent element of inequitable conduct.  With respect to the ‘985 patent, however, the Commission only addressed the technical prong of the domestic industry requirement in reversing the ALJ’s determination and finding no violation of Section 337.  See our January 9, 2010 and March 5, 2010 posts for more details on the Commission’s final determination in this investigation.  Complainant GE appealed to the Federal Circuit on all issues relating to the ‘985 patent that the Commission noticed for review, including those that the Commission did not take a position on in disposing of the investigation. 


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By Eric Schweibenz
|
Apr
11
Investigations at the ITC already move very quickly, but did you know that the parties can make investigations move even more rapidly?  For example, under 19 C.F.R. § 210.15(c), parties to an ITC investigation have 10 days after service of any written motion to respond, unless a longer or shorter time is designated by the presiding Administrative Law Judge (“ALJ”) or the Commission.  Accordingly, most Ground Rules provide that a party may request a shortened response time during which the opposing party may respond to its motion.

By way of example, ALJ Gildea’s Ground Rule 3.7 states that “[a] motion shall include any request to shorten the period of time during which other parties may respond to the motion.  The fact that a shortened response time is requested shall be noted in the title of the motion and the motion shall include an explanation of the grounds for such a request.  A request for a shortened response time shall not be made through a separate motion.”  See also Chief ALJ Bullock Ground Rule 3.7, ALJ Essex Ground Rule 3.7, ALJ Rogers Ground Rule 3.7, and ALJ Pender Ground Rule 5.1.3


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By Tom Fisher
|
Mar
29
Under Commission Rule 210.76, any person who believes that “changed conditions of fact or law, or the public interest” require that an exclusion order, cease and desist order, or consent order be modified or set aside can petition the Commission for such relief.  The petition must state the changes sought and the changed circumstances warranting such action, together with supporting materials and argument.  The Commission can also consider such action sua sponte.  The Commission may provisionally accept the petition, at which point notice will be published in the Federal Register and service of both the petition and the notice will be made on the former parties to the investigation.  Any person may file an opposition to the petition within 10 days of service.  See 19 C.F.R. § 210.76(a)(1).

If the petitioner was previously found in violation of Section 337 and requests a determination that it is no longer in violation, or requests modification or rescission of an order issued pursuant to Section 337(d), (e), (f), (g), or (i), the burden of proof is on the petitioner.  See 19 C.F.R. § 210.76(a)(2).


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By Eric Schweibenz
|
Jun
17
In Section 337 actions before the International Trade Commission (the “Commission”), the Office of Unfair Import Investigations (the “Commission Investigative Staff” or “OUII”) serves as an independent third party representing the public interest.  OUII’s principal task is to help create a complete record on all contested issues so that the Commission can properly enforce the provisions of Section 337.  This is necessary because, unlike with district court litigation, a Section 337 action “is not purely private litigation ‘between the parties’ but rather is an ‘investigation’ by the Government into unfair methods of competition or unfair acts in the importation of articles into the United States.”  Young Eng’rs, Inc. v. U.S. Int’l Trade Comm’n, 721 F.2d 1305, 1315 (Fed. Cir. 1983).

OUII can trace its origins back to the Trade Act of 1974 (the “Trade Act”), which instituted significant changes in the procedures for Section 337 actions.  Prior to the passage of the Trade Act, the provisions of the Administrative Procedure Act (“APA”) did not apply to Section 337 actions, and there was therefore very limited participation by the private parties after institution of an investigation -- the Commission investigated complaints directly.  This changed drastically after the enactment of the Trade Act.  The private parties suddenly had substantial new rights to participate directly in Section 337 proceedings.  The problem, however, was that now the Commission could not directly communicate with the private parties ex parte because it was serving as an administrative fact-finder.  To remedy this situation, OUII (originally known as the Unfair Import Investigations Division or “UIID”) was created so as to represent the public interest in the proceeding and help the Commission reach a correct and fully informed determination.


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By Eric Schweibenz
|
Feb
23
Under 28 U.S.C. § 1659(a), upon timely request of a Section 337 Respondent, who is also a party in a civil action, a “district court shall stay, until the determination of the Commission becomes final, proceedings in the civil action with respect to any claim that involves the same issues involved in the proceeding before the Commission.”  A Respondent’s request for a stay is deemed timely only if made within (1) 30 days after being named as a respondent in the ITC proceeding, or (2) 30 days after the district court action is filed, whichever is later.

In addition to making a timely request, a Respondent also must show that the claims in the district court action involve the same issues before the ITC.  This similarity of issues requirement has been interpreted by some district courts to require that the patents asserted in both forums be identical.  By way of example, in Saxon Innovations, LLC v. Palm, Inc., 2009 U.S. Dist. LEXIS 105928 (E.D. Tx. Nov. 4, 2009), the plaintiff Saxon accused Palm of infringing its ‘873 patent.  Saxon had also asserted its ‘873 patent in a parallel ITC investigation.  Although Palm was a respondent in that parallel ITC investigation, Saxon did not assert its ‘873 patent against Palm in that forum.  The district court denied Palm’s request to stay the district court action against it finding that “[t]he claims against Palm in this case and the claims against Palm in the ITC investigation are not ‘identical parallel claims.’”  In explaining its ruling, the court noted the fact that the ITC will not consider Palm’s alleged infringement of the ‘873 patent nor will it consider Palm’s invalidity theories of the ‘873 patent, if any.  Similarly, in Micron Tech., Inc. v. Mosel Vitelic Corp., 1999 U.S. Dist. LEXIS 4792 (D. Id. Mar. 31, 1999), the district court denied the defendants’ request to stay under § 1659(a) a consolidated action in its entirety where only four of eleven patent infringement claims were asserted in the ITC.  The district court rejected the defendants’ assertions that the seven patent infringement claims not before the ITC were so related to the four patent infringement claims before the ITC that they implicated substantially similar legal and factual issues, including the fact that the plaintiff alleged the same products infringed all eleven patents.  Although the district court refused to stay the action with respect to the seven patent infringement claims not before the ITC, the court granted the defendants’ motion to stay the remaining four patent infringement claims until such time as the resolution of the ITC action became final.


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By Eric Schweibenz
|
Jan
04
Under Section 337, complainants may seek and obtain temporary relief within a short time period.  Where such a motion for temporary relief is filed, and an investigation is instituted, the time period until a final determination by the Commission on the motion for temporary relief is extremely short, 90 days in most cases, and 150 days in “more complicated” cases.  Although Section 337 complainants rarely seek this form of relief, the Commission is currently considering such a motion in Certain Silicon Microphone Packages (Inv. No. 337-TA-695).  See our November 17, December 18 and 23 posts for more information.

Temporary relief may be granted, under Section 337, to a party to “the same extent as preliminary injunctions and temporary restraining orders may be granted under the Federal Rules of Civil Procedure.”  19 U.S.C. § 1337(e)(3).  In order to obtain temporary relief, a party must show (1) reasonable likelihood of success on the merits, (2) irreparable harm caused if relief is not granted, (3) balance of hardships tipping in the requesting party’s favor, and (4) the public interest does not preclude issuance of relief.  Reasonable likelihood of success on the merits, in Section 337 cases, includes demonstration that a valid and enforceable intellectual property right has been infringed and that a domestic industry exists, or is in the process of being established, that practices the asserted intellectual property right.


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