International Trade Commission Section 337

Rapid Resolution of Intellectual Property Conflicts

Mintz attorneys represent complainants and respondents in Section 337 investigations at the U.S. International Trade Commission. Our team successfully handles patent, trade secret and trademark matters in this fast-moving venue which can harness the power of U.S. Customs and Border Protection to ban import to the U.S. of infringing products. This relief is much sought after by companies seeking to defend their innovations, and is a significant threat to importers which are accused of infringing intellectual property.

Awards

Chambers USA

IP practice chair recognized by Chambers USA as leading ITC Patent Litigation practitioner nationally (2023)

Patexia

Ranked by Patexia among the Top 10 Best Performing Law Firms Representing Complainants and 12 attorneys ranked in Best Performing ITC Attorneys Representing Complainants (2024)

Managing Intellectual Property

ITC Litigation practice ranked nationally among top firms (2023)

Patexia

Ranked by Patexia among the Top 10 Most Active Law Firms Representing Complainants and 12 attorneys ranked in Most Active ITC Attorneys Representing Complainants (2024)

IAM Strategy 300

IP Division Head and multiple patent litigators recognized (2015 ‒ 2022)

IAM Patent 1000

Multiple patent litigators recognized, including the leader of the ITC practice (2015 ‒ 2022)

Managing Intellectual Property

Chair of the IP Division and Leader of Patent Litigation and Monetization practice short-listed for Top Practitioner of the Year (Litigation) in Massachusetts by Managing Intellectual Property (2021 – 2023)

IAM Strategy 300

Multiple attorneys identified among "The World's Leading IP Strategists" in IAM Strategy 300 (2017 – 2022) and included in IAM’s inaugural edition of the Strategy 300 Global Leaders guide

Legal 500

Practice recognized by The Legal 500 for Patent Litigation – International Trade Commission

Our Experience

ITC Issues Exclusion Order To Protect Glycosyn’s Innovation

Mintz helped patent prosecution client Glycosyn defend its exclusive patent rights against the company's largest competitor, a global company selling infringing ingredients used in baby formula.

ITC Issues LEOs and C&D Letters, Excluding Smart TVs from the US

Mintz represents Advanced Micro Devices in enforcing its patent rights related to novel architectures for GPU circuitry. The ITC handed down a decision that VIZIO, MediaTek and Sigma Designs violated Section 337 of the Tariff Act and recommended certain products be excluded from import to the US.

Licensing Revenue Success for AST in Multi-Prong Program

Mintz helped patent licensing company Advanced Silicon Technologies (AST) monetize 3D video graphics processing and intelligent memory control patents. Mintz asserted four patents for AST against manufacturers in the International Trade Commission (ITC), district court, and European venues.

Our Approach

To achieve success at the ITC, an attorney must understand the unique nature of the venue. Intellectual property litigation at the ITC is very fast-paced – investigations typically take less than 18 months – with complex procedures, Administrative Law Judges with great expertise in intellectual property disputes, global discovery, and unique substantive requirements, including the “domestic industry” requirement.

Complainants must come to the ITC highly prepared. There will be no time for the complainant to learn its own case – proactive preparation before the complaint is filed is essential. This is especially true with respect to ITC-specific issues such as importation and satisfaction of the domestic industry requirement. The ITC has unique tools that allow for powerful domestic and international discovery. But for these tools to be effective, careful planning – and knowledge of domestic and foreign enforcement rules – is essential. The Complainant also must have a preemptive strategy to drive the case to an effective remedy, anticipating possible public interest considerations that are unique to this venue.

As a Respondent you will be playing catch-up against the Petitioner and have a short window in which to develop a defense to maintain the right to compete in the US market. The Complainant will have had ample time to prepare the complaint, while you will be learning the case in real time. Nevertheless, there are many procedural opportunities for Respondents to take the initiative and the fight to the complainant. Early development of redesigns and challenges to the complainant’s case in chief – such as through use of the ITC’s “Pilot Program” to address case dispositive issues in 100 days – can allow Respondents to control their destiny.

The Mintz team brings to the table an unmatched bench of legal, strategic and tactical experience in the prosecution and defense of ITC cases.

Value to Complainants

Powerful, injunction-like remedies: Exclude infringing products from importation to or sale in the US, and obtain powerful cease and desist orders preventing the domestic sale and distribution of the accused products.
Rapid adjudication: Investigations take 18 months from filing to verdict as compared to years in district courts
Nationwide and worldwide subpoena and enforcement powers
Specialized IP Focus: Patents, Trade Secrets and Trademarks all enforceable with potential for importation bans
Specialized Administrative Law Judges highly experienced with IP cases
No Joinder Restrictions: Multiple parties as respondents in a single investigation without joinder restrictions

Risk/Reward for Respondents

Import Ban: Loss could block importation of products to world’s largest market
Remedial Order Mitigation: The ITC’s procedural nuances can allow prepared Respondents to mitigate the effects of potential remedial orders, such as through the prompt adjudication of redesigns and unilateral consent orders
3rd Party Impact on Remedial Orders: In some cases, the timely mobilization of third parties and customers can have a significant effect on the scope of remedial orders
Venue Moves Fast: Speed of the venue puts tremendous pressure on Respondents – but Respondents need only win on one issue
Technical Defenses Welcome: Knowledgeable Administrative Law Judges mean technical defenses have a willing audience
Strong Protective Orders: Confidentiality ensured through a strictly policed, single level of protective order (highest)

Why Mintz at the ITC?

One of very few firms ever to have achieved a General Exclusion Order in a 337 investigation
Knowledge of and experience with the ITC staff attorneys who are critical to success, including a partner who previously worked in the OUI office
Among most active firms in the ITC and handling IP cases in the venue for more than 15 years
Teams structured for maximum success based on extensive experience in the venue
Successful representation of parties on both sides of ITC investigations

Domestic Industry Alive and Well

Unambiguous and historical data shows that the International Trade Commission’s statutory economic prong of the domestic industry requirement remains consistently favorable to complainants. Despite the recent perception that the requirement is becoming harder to satisfy, this data shows that there is no growing risk that ITC complainants will be unable to meet it.

I've worked with many other firms over the years, but this is one of the few that I feel a real connection to and in which I have great trust and confidence.

Client in Chambers USA

As a group, they are among the more practical, strategic-thinking firms I've ever worked with.

Client in Chambers USA

A combination of their substantive expertise in our areas of focus; their responsiveness; their dedication; their loyalty; their zealous representation.