Since I will be starting my internship at the International Trade Commission (ITC) next week, I decided this would be a good time to write some blog posts about the agency and how patent attorneys can leverage it to enforce patent rights for their clients. The ITC is unique in that it works in conjunction with the U.S. Customs and Border Protection ("CBP"), a bureau of the Department of Homeland Security, to enforce patent rights at the border by preventing unlawful imports of infringing goods. There are many unique aspects of enforcement under Section 337, and this article will provide a good primer on the topic. Without further ado, let's dive in.

Statutory Basis and Basics

Section 337 of the Tariff Act of 1930, promulgated as 19 U.S.C. Section 1337 empowers the ITC to issue remedies that prevent unfair practices in importing goods into the United States. Specifically, 19 U.S.C. Section 1337(a)(1)(B) sets out that "[t]he importation into the United States, the sale for importation, or the sale within the United States after importation, or the sale within the United States after importation by the owner, importer, or consignee, of articles that—

(i) infringe a valid and enforceable United States patent or a valid and enforceable United States copyright registered under title 17; 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"

are unlawful. The ITC can either conduct a section 337 investigation based on complaints by affected companies and individuals or its own initiative. In addition to patent infringement, a complainant can also file a section 337 investigation based on trademark, copyright, or unfair practices violation. However, a majority of Section 337 cases involve patent infringement. The ITC is a relatively small agency with a $60 million budget and 350 employees, and Section 337 represents about 17% of the agency's activity.

Procedures at the ITC

Procedures at the ITC are similar to District Court practice, but there are some differences. For one, Section 337 investigations are extremely expedited, partially because of the limitations of remedies that can be sought. Unlike at district courts where parties can seek an injunction and/or damages for infringement, the primary remedy at the ITC is an exclusion order issued by the agency Commissioner that directs the CBP to stop infringing imports at the border (the Commission can also issue cease and desist orders where parties have a substantial amount of infringing goods already within the United States borders). Because of this difference, among others, the trial-like evidentiary hearing at the ITC in a 337 investigation normally takes 9-12 months, and a Final Determination (FD) will typically issue within 15-16 months.

While 337 investigation procedures are much more rapid than their district court counterparts, discovery is substantially the same as in a district court proceeding (unlike, for instance, an AIA post-grant proceeding such as an Inter Partes Review). Therefore, litigating at the ITC is an extremely aggressive approach. Litigants should expect to pay a similar amount of legal fees as expected in a district court equivalent proceeding; it is just that the expenses are more compressed.

Unique Aspects of 337 Investigations

While the procedural aspects of 337 investigations resemble their district court counterparts, some key differences should be considered.

The Offices of Unfair Import Investigations ("OUII")

Unlike the district court, where there are typically only plaintiffs and defendants, a third party is present in 337 investigations. This third party, the OUII, advises the ITC on whether to commence an investigation (and can offer informal pre-filing advice to the complainant on compliance with the pleading rules). The OUII participates as an independent party in the investigation and acts on behalf of the public interest. It serves discovery, takes positions on motions, examines witnesses, and even takes positions on the cases' merits. The OUII typically assigns a staff attorney to each case. From a litigant's perspective, it is often crucial to develop a solid working relationship with the staff attorney. It can be beneficial for them to understand your position to argue for your position on the merits and procedural issues.

No eBay Standard for Injunctions

One critical aspect of 337 investigations is that the eBay standard for granting injunctions is not applied, which means that it is substantially easier to receive an injunction than in a district court proceeding. The standard outlined in eBay Inc. v. MercExchange, LLC includes a four-factor test for whether a court should issue an injunction as a remedy.1 "A plaintiff must demonstrate:

(1) that it has suffered an irreparable injury;
(2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
(3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
(4) that the public interest would not be disserved by a permanent injunction."2

Why doesn't the ITC apply the eBay factors? Well, in one case, Baseband Processor Chips explains that "[t]he Tariff Act of 1930 replaced the monetary remedy of § 316 of the Tariff Act of 1922 with the remedy of exclusion.  19 U.S.C. § 1337(d),(e),(g).  This represents a legislative determination that there is an inadequate remedy at law for infringement by importation.  Second, the Tariff Act of 1930 was amended in 1988 to remove the requirement of proof of harm to domestic industry.  This represents a legislative determination that it is unnecessary to show irreparable harm to the patentee in the case of infringement by importation.  The remaining factors, those of balance of hardships and public interest, are analyzed by the Commission in its EPROMs factors and public interest analysis.”3

As one might expect, there can be anomalous results when a party can receive an injunction from the ITC in a situation that they would not have been able to at a district court. For instance, if a non-practicing entity can receive an injunction at the ITC, can a scenario result in which non of the parties can practice the invention in the United States? This could most likely not occur because of the Domestic Industry requirement of initiating a 337 investigation, which we will look at next.

Domestic Industry Requirement

The Domestic Industry requirement is a complex topic and will be discussed later this week in a more detailed article, so for the moment; I will only touch on it briefly in illustrating the differences between 337 investigations and district court litigations. The ITC exists to protect interests from imported, "knock-off" goods that infringe valid US IP rights. The domestic industry requirement ensures that the protections offered by the ITC actually benefit companies with significant investments in the IP in the United States. There are two prongs to analyze whether a domestic industry exists: an economic prong and a technical prong.

Economic Prong

Under Section 337(a)(e), "an industry in the United States shall be considered to exist if there is in the United States, with respect to the articles protected by the patent, copyright, trademark, mask work, or design concerned—

(A) significant investment in plant and equipment;
(B) significant employment of labor or capital; or
(C) substantial investment in its exploitation, including engineering, research and development, or licensing."

While these factors are normally hotly contested in the course of a 337 investigation, and therefore subject to their own discussion, it should be noted that there needs to be some domestic practice of the patent claims at issue that is non-trivial. Simply being a non-practicing entity holding a patent is far from sufficient to clear the Domestic Industry hurdle. If the patentee is a licensing entity, then the licensing activities must be substantial.4

Technical Prong

The technical prong of the Domestic Industry requirement necessitates literal or doctrine of equivalents infringement of the complainant's product. In other words, there must be a "technical nexus" between the patent sought to be enforced, and the domestic industry relied upon. The technical prong is normally satisfied if the product produced or engineering and labor invested in under the economic prong are covered by at least one claim of the patent being asserted in the 337 investigation.

Conclusion

I hope this discussion gave you a better idea of what a 337 investigation is and some of the ways that it differs from a standard district court litigation for enforcing a patent. If you are interested in learning more about patent enforcement at the ITC, stay tuned for more articles on the topic this week!

[1] 547 U.S. 388 (2006).

[2] Id. at 391.

[3] In re Certain Baseband Processor Chips and Chipsets, Inv. No. 337-TA-542, Comm'n Op., 2011 WL 6121182, at 62 (Oct. 1, 2011) (emphasis added).

[4] InterDigital Communication LLC v. ITC, 707 F.3d 1295 (Fed. Cir., 2013) (finding InterDigital's investment in licensing activities substantial because InterDigital had invested approximately $7.6 million in salaries and benefits for employees engaged in licensing activities in the US, and had received almost $1 billion in revenues from portfolio licenses, including the patents-in-suit).