Intellectual Property

ITC – Section 337 Investigations

The attorneys of Mintz Levin’s IP Litigation Practice have successfully represented both complainants (plaintiffs) and respondents (defendants) in the International Trade Commission (ITC). With our experience, we know the ITC’s and the Administrative Law Judges’ (ALJs) procedures inside and out; among our members is a former senior investigative attorney from the ITC who joined the firm in 2015. The ITC raises the stakes of litigation by offering the exclusion of infringing articles from importation into the United States, and it also acts quickly, providing its final decisions within 12 to 18 months of filing. To succeed under those time constraints, especially given the additional statutory requirements of ITC practice, requires a team experienced with the agency's fast pace and complex procedures. Mintz Levin is that firm for many clients. Our team is steeped in the ITC and has a singular command of technology and patent law.

We have succeeded for our clients when the stakes are highest. For instance, when a client faced bankruptcy as the result of the illegal importation of knock-off cameras that infringed its patents, and when standard exclusionary relief wouldn’t prevent the infringers from importing under assumed names, members of our team successfully argued for a General Exclusion Order, restricting the importation of all infringing articles, including those of entities that weren’t parties to the investigation. This was one of the only occasions the Commission has ever granted this extraordinary relief, and with it, the client has thrived.

The risk from District Court enforcement is perceived today to be at a low point, given recent patent reform and decisions affecting the magnitude of the remedy available for infringement. As a consequence, many patent holders now look to enforce in the ITC, a forum that raises the stakes of litigation by offering the exclusion of infringing articles from importation into the United States. If you want to pursue enforcement of your patent rights at the ITC, or are faced with infringement claims at the ITC and need to move fast, Mintz Levin is a firm you can count on.

Quick Facts


  • One of very few firms to have achieved a General Exclusion Order at the ITC.
  • Successfully represent clients as complainants and pespondents.
  • Experienced ITC litigators with exceptional technical education and experience in the following areas:
    • Biomedical Engineering
    • Computer Engineering
    • Electrical Engineering
    • Industrial Engineering
    • Radar Systems Design
    • Software Development
    • Chemical Engineering
    • Database Systems Integration
    • Genetics
    • Mechanical Engineering
    • Semiconductor Manufacturing
    • Telecommunications

Rankings & Recognition

  • IAM Patent 1000 (2016)
    • Patent Litigation Practice and 7 attorneys recognized among the "World's Leading Patent Practitioners,” including Michael T. Renaud, head of the ITC Litigation practice
  • IAM Strategy 300 (2015/2016)
    • Division Head for IP and head of the ITC Litigation practice, Michael T. Renaud, identified among "The World's Leading IP Strategists"
  • Chambers USA (2016)
    • 3 IP attorneys identified as leaders in their respective patent fields, including Michael T. Renaud, Division Head for IP and leader of the ITC Litigation Practice
  • BTI Consulting Group's 2016 Litigation Outlook
    • IP Litigation ranked in top 5% of all law firms by corporate counsel
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Experience

  • Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) Filed an ITC complaint on behalf of Advanced Micro Devices (AMD). The patented technology covers graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG, VIZIO, MediaTek, and Sigma Designs. The evidentiary hearing is scheduled for early December 2017.
  • Certain Memory Modules and Components Thereof, and Products Containing Same (337-TA-1023) Represent Complainant Netlist, Inc., a California memory module company, in the ITC asserting six patents against the Korean-based memory giant SK hynix. The technology claimed by the asserted patents is essential to the JEDEC DDR4 RDIMM and LRDIMM standards, which are implemented by the accused imported products. The respondents are asserting novel RAND defenses in the ITC, and in a co-pending case involving the same patents in the District Court for the Central District of California. The ITC evidentiary hearing is scheduled for early May 2017, while the trial in the CDCA is scheduled for July of 2018.
  • Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) – Mintz Levin represented AST as complainant in this ITC investigation against leading automobile and original equipment manufacturers, including Honda, BMW, Toyota, Volkswagen, Audi, Renesas, NVIDIA, Texas Instruments, and Fujitsu. The patents generally related to graphics processing and intelligent memory control. At issue in the investigation were infotainment systems, head-end units, navigation systems, graphics processors, microprocessors, integrated circuits, and other computing and/or graphics-capable electronic devices. The investigation instituted in January of 2016 and resolved favorably prior to the conclusion of expert discovery in August of 2016.
  • Certain RF Capable Integrated Circuits (337-TA-982) – Mintz Levin represents ParkerVision as complainant against leading integrated device manufacturers, including LG Electronics, Samsung, Apple, and Qualcomm. The patents relate to RF transmission and receiver technology, and the accused products include smartphones, tablets, and baseband processors. In related matters, the firm also represents ParkerVision in enforcement proceedings in Germany, resulting so far in a finding of infringement by LG, and in inter partes review proceedings, which thus far have resulted in the Patent Trial and Appeal Board denying institution of a Qualcomm petition for review.
  • Certain Communications or Computing Devices and Components Thereof (337-TA-925) – Represented owner of portfolio of communications and computing patents from former enterprise communications business unit of large multinational innovation company. An ITC investigation was instituted in August 2014 as to respondent entities Apple, Samsung Electronics, LG Electronics and HTC Corporation. Google participated as an intervenor. The investigation resolved prior to evidentiary hearing in June of 2015.
  • Certain Point-to-Point Network Communication Devices and Products Containing Same (337-TA-892) – Mintz Levin represents complainant Straight Path IP Group, Inc. in patent litigation involving streaming media technology in the Eastern District of Texas and the Eastern District of Virginia. Defendants include some of the most recognized global electronics manufacturers and streaming video service providers, such as Samsung, LG, and Hulu. Mintz Levin also represents Straight Path in related IPR proceedings. Notably, after PTAB invalidated a Straight Path patent in an IPR proceeding where Straight Path was represented by alternative counsel, Mintz Levin substituted and successfully obtained a reversal at the Court of Appeals for the Federal Circuit, among the first times the Federal Circuit overturned a Final Written Decision on an IPR. Mintz Levin has also successfully convinced PTAB not to institute 17 IPR petitions brought by sophisticated parties like Samsung, LG, and Hulu against Straight Path patents.
  • Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) – Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz Levin successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the Administrative Law Judge’s Initial Determination was pending.
  • Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) – Represented Graphics Properties Holdings, owners of the patent portfolio of the former Silicon Graphics and Cray Computers, as complainant in the ITC, and as plaintiff in multiple parallel District of Delaware cases. Cases were filed between late 2011 and early 2012, and all were resolved by the end of January 2013. The technology at issue relates to LCD panels, central processor units, graphics processing units, and other microprocessor technology. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space — Apple, LG, Research in Motion, Samsung, and Sony.
  • Certain Portable Communication Devices (337-TA-827) – The practice represented the complainant in co-pending ITC and District of Delaware cases. Within six months of filing, all respondents, including some of the largest and most recognized names in the converged device space — Amazon, LG, Motorola, Pantech Wireless, Research in Motion, Sony, and more — took a license on terms favorable to the client.
  • Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804) – The practice represented a small, award-winning company that makes LED lighting systems for use in film and TV production, at the International Trade Commission. Rampant infringement of the client’s patents by foreign competitors threatened to drive it out of business, leaving it with litte choice other than to seek the exclusion of the infringing articles. In this bet-the-company litigation, the practice obtained a General Exclusion Order forbidding the importation of entire categories of infringing products — whether imported or sold by a respondent or not. This remedy is awarded only on rare occasions by the ITC.
  • Certain Electronic Imaging Devices (337-TA-726) – The practice represented the complainant in an ITC investigation filed in June 2010 against converged device manufacturers. At issue was digital camera technology found in cell phones, laptop computers, and personal digital assistants. By April 2011, nearly all respondents had resolved on terms favorable to the client.