Axinn’s deep bench of seasoned IP trial attorneys are experienced at navigating the intricacies of Section 337 investigations. Although damages are not available, these proceedings offer the powerful remedy of excluding from importation into the United States products determined to infringe the asserted patents or trademarks (or other forms of unfair competition such as trade secret misappropriation, false advertising, or copyright infringement). Our attorneys have a proven track record of success in this specialized forum on behalf of complainants, respondents, intervenors, and third parties in different technology fields, including mobile devices, video, image sensors, semiconductors, displays, chemical compounds, and mechanical devices.
Our team of IP trial attorneys have handled numerous hearings before different ALJs with successful outcomes on behalf of clients. Representative examples include:
- Obtained final determination of no violation due to determinations of non-infringement and lack of technical domestic industry as to all four asserted patents alleged to be standard-essential to UMTS and LTE cellular communications, in addition to findings of indefiniteness and lack of written description for a number of asserted claims.
- Obtained withdrawal of a patent family in response to motion for summary determination of invalidity and initial determination of no violation as to remaining patents in investigation involving generations of mobile devices and tablet computers; terminated second investigation and related district court action as part of global resolution.
- Obtained termination of investigation involving CMOS image sensors and concurrent district court action with additional asserted patents as part of resolution following claim construction and conclusion of fact discovery.
- Led defense group on behalf of five different groups of respondents involving LCD products, our attorneys obtained a final determination of no liability on all five asserted patents, affirmed by the Federal Circuit.
- Represented a respondent fiber optic company in a pair of ancillary proceedings at the ITC. The advisory proceeding was won on summary determination and, after a full enforcement proceeding trial, the Staff sided with our client on all contested issues. The case settled favorably before an Initial Determination was issued.
- Represented a national store against allegations of trade dress infringement at the ITC. The Initial Determination found client did not infringe and that the trade dress was invalid, resulting in a finding of no violation.
- Represented a respondent semiconductor supply company in an ITC investigation involving memory modules. The Initial Determination found no violation. Commission did not review.
- Represented a respondent multinational e-commerce and technology conglomerate in an ITC investigation involving electronic scooter technology. Deciding an issue of first impression in the respondent’s favor, the Initial Determination found no violation.
- Represented a complainant security systems company in an ITC investigation involving retail security tags. Settled on the eve of trial, with all respondents agreeing to a consent order.
- Represented a respondent multinational technology company in an ITC investigation involving consumer electronics, including gaming devices and FRAND obligations. Commission found no violation.
- Represented a complainant multinational technology company in an ITC investigation involving consumer electronics. Commission found a violation for all accused products. The result was affirmed by the Federal Circuit.
- Represented respondent multinational technology companies in an ITC investigation involving consumer electronic and FRAND obligations. Commission found no violation.
The intensity and speed of 337 investigations demand not just technical and legal expertise but also familiarity with the particularities of ITC practice and procedures, including the role and preferences of the Office of Unfair Import Investigations (“OUII” or “Staff”). These matters are typically completed between 15 to 17 months from institution until disposition, during which the sheer amount of discovery and motion practice can be crushing. Complainants and respondents may take at least twenty depositions per side and propound up to 175 interrogatories, and in investigations where OUII is a party, Staff may conduct additional discovery and file its own motions. Responses to discovery and motions are due within ten days of service. Accordingly, 337 investigations present significant expense and challenges to all parties.