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Forum Selection Clause Supports Early Termination of Trade Secret Investigation at the ITC

Fish & Richardson

Authors

On July 28, 2026, Administrative Law Judge (ALJ) Bryan F. Moore issued an initial determination (Order No. 16) terminating Certain In-Vehicle Infotainment Systems, Components Thereof, and Products Containing the Same, Inv. No. 337-TA-1493, in its entirety based on a contractual forum selection clause requiring litigation in Munich, Germany.1 The ruling is a rare example of a contested Section 337 investigation being terminated on a private forum selection agreement, and one that turns heavily on parallel district court injunction practice and the Commission’s policy favoring expeditious adjudication. The initial determination (ID) is now before the Commission under 19 C.F.R. § 210.42(h).2

Background

The investigation concerns alleged trade secret misappropriation and related unfair acts involving in-vehicle infotainment technology. In September 2021, Zync, Inc., and BMW AG entered into a confidentiality agreement covering all confidential information, including trade secrets, disclosed in connection with an “in-car entertainment platform” project.3 The agreement includes a forum selection provision stating that it “shall be governed by the laws of the Federal Republic of Germany and the exclusive place of jurisdiction shall be Munich, unless a different place of jurisdiction is required by mandatory law.”4 A subsequent pilot project agreement expressly incorporated the confidentiality agreement and subjected project-related confidential information to its terms.5

In April 2025, Zync sued BMW AG subsidiary BMW of North America (collectively, “BMW”) in California state court on trade secret and tort theories that Zync later characterized as substantially the same as those asserted at the International Trade Commission (ITC).6 The state court dismissed that action on May 12, 2026, concluding that the forum selection clause was mandatory and required suit in Munich for claims arising from disclosure or misappropriation of confidential information connected to the pilot project.7

Zync filed its Section 337 complaint before that dismissal.8 BMW responded by seeking non-institution (or, in the alternative, early disposition) based on the same forum selection clause; the Commission declined, describing the issue as “too complex” for early disposition.9 BMW then (1) filed a German declaratory judgment action in Munich and (2) sought a declaratory judgement and emergency injunctive relief in the U.S. District Court for the Northern District of California (hereinafter, “the district court”).10

On June 22, 2026, the district court entered a preliminary injunction and ordered Zync to request a stay of the ITC investigation pending Zync’s appeal of the California state court forum selection ruling.11 Zync filed an emergency motion to stay the district court’s injunction pending Zync’s appeal, which the Ninth Circuit denied.12 Zync thereafter moved to stay the investigation pending the state court appeal.13

Against that backdrop, BMW moved to terminate under 19 C.F.R. § 210.21(a)(2) on the basis of an “other agreement” — the parties’ negotiated forum selection clause.14 Zync did not dispute that the issues in the investigation fell within the scope of the clause.15 Instead, Zync argued that (1) Section 337 is “mandatory law” within the clause’s exemption, and (2) enforcing the clause would violate the ITC’s public policy against unfair trade practices.16

ALJ Moore’s analysis

“Mandatory law” exemption

ALJ Moore rejected Zync’s contention that Section 337 is “mandatory law” that displaces the Munich exclusive jurisdiction provision.17 The ALJ framed the question not as whether the Commission has jurisdiction over unfair imports — it does — but whether the Commission may, in appropriate circumstances, exercise discretion to terminate an investigation based on the parties’ private agreement.18 ALJ Moore further emphasized that Section 337 is not a “mandatory law” here because the parties, including Zync, are not required to file Section 337 complaints whenever unfair acts in importation are alleged.19 And Zync’s arguments under the Rome I and Rome II Regulations fared no better: Because Section 337 is not an obligation the parties must pursue, it does not fit the “overriding mandatory provisions” framing Zync advanced.20

In support, ALJ Moore also cited the statutory and regulatory authority for termination based on private agreements, including 19 U.S.C. § 1337(c) and 19 C.F.R. § 210.21(a)(2), as well as prior orders recognizing that a negotiated forum selection clause “may inform the basis for terminating an investigation.”21 BMW’s alternative issue preclusion theory based on the California state court ruling was noted but not adopted; the ALJ declined to apply issue preclusion as a matter of discretion.22

Public policy and the Color Intraoral Scanners line

Zync leaned on Color Intraoral Scanners for the proposition that enforcing a forum selection clause would contravene the ITC’s strong public policy.23 ALJ Moore distinguished that authority on the facts. In Color Intraoral Scanners, the Chief ALJ observed that a respondent could seek a district court injunction compelling the complainant to withdraw an ITC complaint for breach of a forum selection clause.24 Here, that path had materialized: When BMW filed its motion to terminate, it had already obtained a preliminary injunction the district court, and the district court had ordered Zync to request a stay.25

Given that distinction, ALJ Moore saw two principal paths forward: (1) a potentially multi-year stay pending the state court appeal, or (2) termination based on the forum selection clause.26 The Commission strongly disfavors lengthy stays and is charged with concluding investigations “at the earliest practicable time.”27 On the specific record — parallel forum selection enforcement already underway in state and federal court, ITC staff support for termination, and the prospect of an extended stay — the ALJ concluded that the public policy favoring expeditious resolution outweighed the public policy concerns that counselled against termination in Color Intraoral Scanners.28 A third option, termination based on withdrawal of the complaint, was unavailable because Zync had not moved to withdraw.29

For these reasons, the ALJ granted the motion to terminate the investigation in its entirety and certified the ID to the Commission.30

Takeaways

In-Vehicle Infotainment Systems serves less as a free-standing declaration that forum selection clauses always trump Section 337 and more as a reminder of ALJs’ termination authority under § 210.21 where multi-forum enforcement of the same clause had already matured.

For practitioners, several points stand out:

  1. Forum-selection clauses can support contested termination — not only settlement-style dispositions. The ALJ treated the parties’ confidentiality agreement as an “other agreement” under 19 C.F.R. § 210.21(a)(2) and held that the usual “no other agreements” certification required for certain other termination paths did not apply.31
  2. “Mandatory law” carve-outs may not salvage an ITC filing. Arguments that Section 337 is inherently non-waivable “mandatory law” failed where the complainant was free not to invoke the Commission’s processes and the investigation’s subject matter fell within a negotiated exclusive forum.32
  3. Parallel district court relief can reframe the public policy balance. Prior orders had suggested that public policy may counsel against terminating an investigation solely on a forum selection clause while leaving open district court enforcement of that clause. Where a federal court has already ordered the complainant to seek a stay — and a lengthy stay is the only practical alternative — expedition principles may support termination instead.33 
  4. Non-institution is not the only early path. The Commission declined to resolve the forum selection issue at institution as “too complex,” yet the same issue later supported a full investigation ID terminating the case. Respondents facing similar clauses may still need a developed record (and, in some cases, coordinated district court practice) after institution.34

What to watch

On August 3, 2026, Zync filed a petition for the Commission to review the ID. How the Commission treats Order No. 16 — if reviewed — will matter for trade secret and contract-adjacent Section 337 practice going forward, particularly where complainants refile in the ITC after (or alongside) forum selection battles in other courts.

  1. 1

    Certain In-Vehicle Infotainment Sys., Components Thereof, & Prods. Containing the Same, Inv. No. 337-TA-1493, Order No. 16: Initial Determination Granting Respondents’ Motion to Terminate the Investigation (July 28, 2026) (Moore, A.L.J.) (public version) [hereinafter Order No. 16], at 1, 8; EDIS Doc. ID 889592. 

  2. 2

    Id. at 8 (citing 19 C.F.R. § 210.42(h)). 

  3. 3

    Id. at 2 (referencing Confidentiality Agreement of Sept. 2021, attached as Exhibit 1); id. Ex. 1 ¶ 1 (identifying project as “In-car entertainment platform.”).

  4. 4

    Id. at 2 (quoting Confidentiality Agreement § 9). 

  5. 5

    Id. at 2–3 (quoting Pilot Project Agreement, attached as Exhibit 2, ¶ 5, incorporating the Confidentiality Agreement). 

  6. 6

    Id. at 3.

  7. 7

    Id.

  8. 8

    Id.

  9. 9

    Id.

  10. 10

    Id.

  11. 11

    Id. at 3-4.

  12. 12

    Id. at 4 n.5 (Ninth Circuit denial of emergency stay of the preliminary injunction on July 22, 2026, EDIS Doc. ID 889151; see also EDIS Doc. ID 889175).

  13. 13

    Id. at 4. 

  14. 14

    Id.

  15. 15

    Id.

  16. 16

    Id. at 4–5.

  17. 17

    Id. at 5 (“I disagree that Section 337 is the type of ‘mandatory law’ that would prevent the application of the parties’ forum selection clause.”).

  18. 18

    Id. at 5–6. 

  19. 19

    Id. at 6 (“Parties are not required to file complaints with the Commission whenever there are allegations of unfair methods of competition or unfair acts in importation. Nor was it mandatory for Zync to file a complaint at the ITC.”).

  20. 20

    Id. at 6–7 (addressing Rome I Regulation (EC) No. 593/2008, art. 9(1), and Rome II Regulation (EC) No. 864/2007, arts. 6(4), 16).

  21. 21

    Id. at 6 n.8 (citing 19 U.S.C. § 1337(c); 19 C.F.R. § 210.21(a)(2); Certain Color Intraoral Scanners & Related Hardware & Software, Inv. No. 337-TA-1091, Order No. 23 at 5 (May 18, 2018) (“A negotiated forum selection clause informs and constrains the private rights of the parties to the agreement, and thus may inform the basis for terminating an investigation”). 

  22. 22

    Id. at 4 n.7 (citing Certain Semiconductor Integrated Circuits Using Tungsten Metallization & Prods. Containing Same, Inv. No. 337-TA-648, Comm’n Op. (Feb. 18, 2009) (“The application of issue preclusion is discretionary.”)).

  23. 23

    Id. at 7 (citing Color Intraoral Scanners, Order No. 23 at 8; Certain Bicycle Trainers & Components Thereof, Inv. No. 337-TA-1475, Order No. 6 at 2 (Jan. 22, 2026)). 

  24. 24

    Id.

  25. 25

    Id. at 7–8 (“That is what occurred here. . . . BMW has obtained a preliminary injunction, and the District Court for the Northern District of California has ordered Zync to request a stay of this Investigation.”). 

  26. 26

    Id. at 8.

  27. 27

    Id. (quoting 19 U.S.C. § 1337(b)(1) and citing Certain Semiconductor Chips with Minimized Chip Package Size & Prods. Containing Same, Inv. No. 337-TA-605, Comm’n Op. at 6 (May 27, 2008)).

  28. 28

    Id. (“[T]here is a strong public policy against staying the investigation. This strong public policy outweighs the public policy against terminating the Investigation due to a forum selection clause based on the specific facts presented in this investigation.”). 

  29. 29

    Id. at 8 n.9.

  30. 30

    Id. at 8.

  31. 31

    Id. at 4; see also id. at 4, n.6 (stating “no agreements” certification of §§ 210.21(a)(1), (b)(1), (c) not required). 

  32. 32

    Id. at 5–7.

  33. 33

    Id. at 7–8 (distinguishing Color Intraoral Scanners and Bicycle Trainers on the developed multi-forum record).

  34. 34

    Id. at 3 (Commission non-institution denial, EDIS Doc. ID 876671); id. at 8 (grant of post-institution termination). 

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.