The United States International Trade Commission (ITC) is a critical venue for intellectual property disputes. Section 337 investigations proceed quickly — often going to trial within eight to 10 months — and outcomes can have a major impact on a company’s short- and long-term future. To optimize the likelihood of successful outcomes, it is essential to engage counsel well-versed in ITC processes and procedures.
Over the past 20 years, McDermott’s lawyers have been involved in more than 60 Section 337 investigations. We have represented complainants and respondents alike in investigations involving a wide range of technologies, including computer hardware and software, mechanical devices and consumer electronics, among others. Our experience spans various causes of action, including patent, gray market trademark and copyright infringement, and trade secret misappropriation. In almost all cases, our investigations have involved concurrent litigation in federal district courts and/or post-grant proceedings before the Patent Trial and Appeal Board (PTAB), where members of McDermott have coordinated the representation.
McDermott’s ITC-focused team includes:
Former lawyers from relevant regulatory and enforcement authorities
A 12 year veteran inside the ITC who is the only person to have ever held positions in the Office of the General Counsel, the Office of the Chairman and the Office of Unfair Import Investigations
A former senior official at the Office of the United States Trade Representative, which reviews all ITC exclusion orders
More broadly, McDermott’s global IP practice, which includes more than 30 lawyers with significant Section 337 experience as well as a diverse roster of multinational clients from the United States, Europe and Asia, provides the foundational knowledge and geographic depth necessary to strategically staff even the most uniquely challenging matters. In particular, the Firm’s strategic alliance with MWE China Law Offices in Shanghai has provided China-based companies with a local lawyer through which we have coordinated discovery and strategy on Section 337 investigations.
Our accomplishments at the ITC are regularly acknowledged by legal and industry publications, including Chambers USA, which has singled out McDermott for our work on “high-value…ITC investigations,” and The Legal 500 United States, among others. Our lawyers also remain active in leadership groups such as the ITC Trial Lawyers Association, AIPLA, Intellectual Property Owners Association’s (IPO) ITC Committee and other bar associations focused on the latest ITC/Section 337 developments.
Complete victories for ZTE Corporation and ZTE USA, a Chinese manufacturer and seller of mobile phones and other devices, in three investigations covering a total of thirteen patents:
Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof (ITC Inv. No. 337-TA-868)
Certain Wireless Devices with 3G Capabilities and Components Thereof (USITC Inv. No. 337-TA-800)
Certain Wireless Consumer Electronics Devices and Components Thereof (USITC 337-TA-853)
Secured several successful outcomes for Panasonic, including:
A favorable settlement for both Panasonic and Nintendo in an ITC investigation instituted by a non-practicing entity, Optical Devices LLC. In the Matter of Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (USITC 337-TA-897)
A victory in an ITC investigation involving Black Hills Media and accusations of infringement relating to five US patents. In the Matter of Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software (USITC 337-TA-882)
A complete victory for Funai Electric, a Japanese manufacturer of consumer electronics under the Magnavox, Sylvania, Emerson and Philips brand names, involving allegations that certain patents were essential to the practice of several wireless and video standards used throughout the industry. In the Matter of Certain Audiovisual Components and Products Containing the same (USITC 337-TA-837)
Achieved a significant victory for Hewlett-Packard and Extreme Networks, Inc., in a Section 337 investigation brought before the ITC by ChriMar Systems alleging infringement of a patent for network equipment. The complaint targeted telephones, switches, wireless access points, routers and other devices used in LANS, and cameras using Power Over Ethernet technology. In the Matter of Certain Communication Equipment Components thereof, and Products Containing Same, Including Power Over Ethernet Telephones, Switches, Wireless Access Points, Routers and Other Devices Used in WLANs and Cameras (USITC 337-TA-817)
Defended HTC against Nokia in an ITC investigation involving 9 patents related to handset technology. As a result, seven of the nine asserted patents in the investigation were removed and a global settlement was reached. In the Matter of Portable Electronic Communications Devices, Including Mobile Phones and Components Thereof (USCITC 337-TA-885)
Represented Qualcomm at the ITC and in the US District Court for the Eastern District of Texas against plaintiff Tessera’s allegations of infringement of patent claims directed to features of certain semiconductor packages. Upon completion of the ITC investigation, a stay in the Eastern District of Texas action was lifted and the matter was transferred to the US District Court for the Northern District of California. Tessera filed a dismissal with prejudice in favor of Qualcomm shortly thereafter, finally ending the seven-year battle on terms extremely favorable to Qualcomm. In the Matter of Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (USITC 337-TA-605)
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