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April 12, 2016
Webinar
Using the ITC as a Trademark Enforcement Tool
Sheryl Koval GarkoPrincipal, Boston
Monty FuscoOf Counsel, Washington, DC
Overview
CLE Contact: [email protected]
Materials available post-webinar on
FishTMCopyrightblog.com
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Outline of Today’s Discussion
• The ITC Generally
Agency Overview
Jurisdiction
• Section 337 Proceedings
Institution
Timing
Discovery
Pre-Hearing Filings
Hearings
Relief
Determinations and Appeals
Why the ITC?
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Advantages of Relief, Jurisdiction, and Speed
• Exclusion order
• Excludes importation of infringing products into the U.S. market
• Better than recording at Customs
• Fast-paced litigation
• Typically ends 16 months after institution
• Impending exclusion order motivates settlement
• Nationwide jurisdiction
• In rem over the article, not personal over the party
• Need not run around to different district courts, but can have a single
action against multiple infringers
Agency Overview
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Non-partisan, quasi-judicial federal agency
• Commissioners
Board of 6 (3R/3D) appointed for 9 year terms
Determine whether to institute an investigation
Review “Initial Determinations” of the ALJs
• Administrative Law Judges (ALJs)
Ground Rules – Specific to each ALJ’s preferences
Attorneys-advisor – similar to law clerks in district court
• Office of Unfair Import Investigations (OUII)
Staff Attorneys – typically assigned (30 out of 35 investigations in 2015)
Conducts independent investigation and represents the public interest
Statutory Authority
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Relevant portions of Section 337
(A) is used for common law marks/trade dress
(C) is used for registered marks
(A) “Unfair methods of competition and unfair acts in the importation of articles (other than articles
provided for in subparagraphs (B), (C), (D), and (E)) into the United States, or in the sale of such
articles by the owner, importer, or consignee, the threat or effect of which is—
(i) to destroy or substantially injure an industry in the United States;
(ii) to prevent the establishment of such an industry; or
(iii) to restrain or monopolize trade and commerce in the United
States.”
(C) The importation into the United States, the sale for importation, or the sale within the United States
after importation by the owner, importer, or consignee, of articles that infringe a valid and enforceable
United States trademark registered under the Trademark Act of 1946 (15 U.S.C. 1051 et seq.).
19 U.S.C. § 1337(a)(1)
Section 337 Case Statistics
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0
10
20
30
40
50
60
70
Cases Instituted
Section 337 Statistics: Types of Unfair Acts Alleged in Active Investigations, FY 2006—FY 2015
8Source: USITC, Year in Review, for Fiscal Years 2006–2010
Section 337: Relief
• Only prospective relief – no money damages
• Exclusion Order
Limited – directed to respondents
General – directed to all infringing goods
Both enforced by Customs
• Cease & Desist Order
Directed to goods already imported and in inventory
Enforced by the Commission
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Section 337 : Filing a Complaint
• Pre-Filing Review
Review by OUII Supervisory Attorney – Allow 7-10 days
• Complaint and Public Interest Statement filed
Fact pleading required – 19 C.F.R. 210.12
Must address the domestic industry requirement
Separate public interest statement required
• Pre-institution Proceedings
• Institution requires majority vote of Commission
o Usually within 30 days of filing
• Notice of Institution to parties and Federal Register
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Section 337: Responding to a Complaint
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• Pre-institution
• Can file letter regarding public interest implications of requested relief
• Can request utilization of the 100-day program (rare)
• Commission orders ALJ to conduct an expedited proceeding on a single, potentially dispositive, issue
• Has been used for domestic industry (Laminated Packaging Inv. No. 337-874) and standing (Audio Processing Hardware, Inv. No. 337-949)
• Response to complaint due 20 days after date of service of complaint by the Commission
• Extra time for service, more if respondent is located in another country
• ALJ’s routinely grant a motion to coordinate responses by related respondents
• Detailed response required – 19 C.F.R. 210.13
• Statistical data regarding quantity and value of imports
Jan. Feb. Mar. Apr. May Jun. July Aug. Sept. Oct. Nov. Dec. Jan. Feb. Mar. Apr. May Jun.
Pre-Hearing Briefs, Motions in Limine due
Hearing
Section 337: Timing
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ITC cases move quickly
Notice ofInstitution
Answer due
Complaint filed
Markman Hearing(if applicable)
Fact Discoverycloses
Summary Determinationdeadline
Post-Hearing Briefing
Initial Determination
CompletedInvestigation
Jan. Feb. Mar. Apr. May Jun. July Aug. Sept. Oct. Nov. Dec. Jan. Feb. Mar. Apr. May Jun.
Pre-Hearing Briefs, Motions in Limine due
Hearing
Section 337: Discovery
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Discovery
Notice ofInstitution
Answer due
Complaint filed
Markman Hearing(if applicable)
Fact Discoverycloses
Summary Determinationdeadline
Post-Hearing Briefing
Initial Determination
CompletedInvestigation
Discovery opens with responses due 10 days post-service
Section 337: Discovery
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• Governed in large part by Ground Rules – May vary between ALJs
• Depositions
Complainant – 5 per respondent or 20 (whichever is greater)
Respondents – 20 maximum
OUII Staff – 10 maximum, and participation in all others
No 7 hour limit
• Interrogatories
Up to 175 allowed
May be served as soon as notice of investigation is published; must be answered in 10 days
• Document Requests and Requests for Admissions
No limitations on number allowed
May be served as soon as notice of investigation is published; must be answered in 10 days
• Expert Discovery
Expert reports are often due within a week or two of fact discovery closing
Daubert motions typically unsuccessful
Domestic Industry Requirement
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Section 337 is a trade statute – Protects “domestic industry” from
unfair imports (in rem jurisdiction over the articles)
Statutory and non-statutory intellectual property
Key difference is non-statutory causes of action require showing of
substantial injury to “an industry” – not necessarily one using the IP
right at issue TianRui Group v. USITC, 661 F.3d 1322 (Fed. Cir. 2011)
With a registered mark, the industry must be with respect to the article
protected by the IP right. 19 U.S.C. § 1337(a)(2)
DI exists if there is in the United States, with respect to the article:
“(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.”
19 U.S.C. § 1337(a)(3)
Section 337: Pre-Hearing Filings
• Motions for Summary Determination
Akin to motions for summary judgment
Responses due in 10 days
Order granting summary judgment is an initial determination and immediately reviewable by the Commission
• Pre-Hearing Statements and Briefs
Statement: exhibit lists, witness lists, statements of testimony, stipulations, length of trial, order and dates for witnesses
Brief: must address claims and defenses with particularity; contentions not set forth will likely be deemed waived
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Section 337: Hearing
• Ground Rules govern
• Evidentiary Issues
Parties may file motions in limine and “high priority objections”
The Federal Rules of Evidence do not apply
o “Reliable hearsay” is admissible
o Can have important impact on admissibility of anecdotal evidence of actual confusion
Willing to conduct hearing “on the confidential record”
• Procedure Generally
Some form of opening statements generally allowed
Follow same format as district court trial, with the addition of time for OUII Staff to present its case
Direct examination often presented by written witness statements
Exhibits to be used on cross examination may be limited to those on witness list
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Section 337: Post-Hearing
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• Briefing
Post-hearing brief and reply brief
• Initial Determination by ALJ
• Provided at least four months prior to investigation’s target completion date
• Commission Review
Upon request of Complainant, Respondent(s), or Staff
Three bases: (1) finding of material fact that is clearly erroneous; (2) legal conclusion that is erroneous; or (3) determination affects Commission policy
Requires vote of a single Commissioner
If violation is found, decision is published in the Federal Register (decision is enforceable at that time)
• Presidential Review
Import can continue if bond is posted
Disapproval is very rare (President cannot modify order)
• Appeal to the Federal Circuit
Section 337: Relief (?)
• Commission is authorized to deny relief that would be contrary to the public interest. 19 U.S.C. § 1337 (d)(1)
• Public health and welfare
• Competitive conditions in the U.S. economy
• Production of like or directly competitive articles in the U.S.
• Effect on consumers
• But an increase in prices to consumers generally does not outweigh the public interest in enforcing valid IP rights
• Good discussion in the ALJ’s initial determination in Ignition Wrappers, Inv. No. 337-TA-756 at pages 282-291 (Feb. 1, 2012)
• Commission’s exclusion order is subject to Presidential disapproval
• Decision delegated to U.S. Trade Representative
• Very very rare. Last occurred in 2013 (Electronic Devices (Inv. 337-794) exclusion order would have covered Apple’s smart phones and tablets); last previous disapproval was in 1987
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Contact Information and Questions
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Sheryl Koval Garko
Fish & Richardson
617-521-7043
Monty Fusco
Fish & Richardson
202-626-7740
Please send your NY CLE forms or questions about the webinar to Lauren McGovern at
A replay of the webinar will be available for viewing at FishTMCopyrightblog.com and
www.fr.com.
Thank you!
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