When your company receives a notice from the International Trade Commission (“ITC”) that a complaint was filed against it and the Commission has decided to institute a Section 337 Investigation, your first question might be can my company even be sued at the ITC?
In short, probably. Like complaints against defendants in district court litigation, the ITC Complaint will allege the named “respondent” (the entity sued) infringes a valid, enforceable U.S. patent. Infringement at the ITC applies the same substantive law as that in district court. However, unlike in district court where a plaintiff may not be able to serve a foreign defendant without resorting to the Hague Convention, the ITC itself serves the complaint on a foreign named respondent by express delivery. Unique to the ITC, the plaintiff (“complainant”) need only prove that the alleged infringing articles are imported into the U.S., sold for importation into the U.S., or sold in the U.S. after importation. As part of instituting a Section 337 Investigation, the ITC evaluates a filed complaint for a prima facie showing of specific instances of importation of the accused articles, by one or more of the named respondents.
This importation requirement is statutorily imposed:
The following are unlawful, and when found by the Commission to exist shall be dealt with….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 patent….
19 U.S.C. § 1337 (a)(1)(B).
Additionally, because the ITC has in rem jurisdiction over imported articles accused of infringement, a complainant does not need to prove that the ITC has in personam jurisdiction over the respondents in order to begin an investigation. Thus, the ITC has far-reaching jurisdictional authority that can cover both domestic and international respondents.
If your client is a U.S. based company, this might strike you as strange because the Tariff Act of 1930 set up Section 337 investigations as part of a trade statute designed to protect U.S. industries. But, since jurisdiction exists over imported articles, U.S. companies can fall under the ITC’s purview in several ways. For example, many U.S. companies have global supply chains even if those companies design and market products in the U.S. Further, the ITC can institute Section 337 Investigations against someone who sells imported articles in the U.S., not just against the companies that import the accused articles. And there is a common practice at the ITC of naming multiple respondents that are part of a single company, which can bring in U.S. based subsidiaries when the alleged infringer is a large multinational company. As long as the importation requirement is satisfied, the ITC can commence Section 337 proceedings to investigate a respondent for infringement.
But what meets the importation requirement?
As touched on above, the scenarios extend beyond just importing an accused article. Yes, importing accused articles into the U.S. does check the importation requirement box. However, you are not in the clear just because you might assemble your products in the U.S. Many companies that manufacture their products in the U.S. import components for those products. Importation at the ITC can include components that are imported and are later incorporated into infringing products. With respect to incorporated components, the ITC can issue exclusion orders on components themselves. A recent trend in ITC decisions even seem to indicate that if a violation for the accused end-product is found, an attentive respondent may need to obtain an affirmative Commission finding that complainant has failed to prove infringement of any imported components named by the complainant in order for those components to avoid being included in an exclusion order. Infringement does not necessarily need to occur at the time an article is imported for the ITC to have jurisdiction.
Further, the ITC can also reach downstream products that incorporate imported, infringing articles, which is why many ITC complaints cover the allegedly infringing article “and products containing same.” In fact, the orders can even extend to imports where the infringing article was made or processed in the U.S., exported for incorporation into a larger article, and it was the larger article that was imported. There are thus multiple ways the ITC can reach U.S. manufactured products.
Additionally, the statute’s prohibition against the “sale for importation” of infringing articles has been found to confer jurisdiction in the instance where there was a sale pursuant to the U.C.C., even though the article itself had yet to enter the United States. And in recent years ITC jurisdiction has stretched even further. Some Administrative Law Judges (“ALJs”) have allowed for jurisdiction over respondents who are alleged infringers but do not actually import the accused articles, as long as their activities are found to have some nexus to an element of section 337. This can include groups that are involved in training and supporting resellers, as well as distributors and end users of the infringing goods in the U.S.
You might think this sounds like quite a few respondents can be sued in a given investigation, right?
Right. The ITC tracks how many respondents are named in investigations on a yearly basis. In 2019, 53% of instituted investigations had more than five respondents. However, both the Commission upon institution and the assigned ALJ prior to or upon 30 days after institution have the authority to sever a single investigation into multiple investigations.
Now that you have an idea of who can be sued at the ITC, check back soon for a discussion of how an Investigation will proceed after it is instituted.
 Because Section 337 Investigations based on patent infringement make up 95% of the cases at the ITC in the last decade, this post answers this question in the context of patent infringement allegations. See Lex Machina, https://lexmachina.com/ (last visited Apr. 28, 2020). However, the importation requirement applies to any Respondent in a Section 337 proceeding, regardless of the alleged infringement or unfair act.
In the Matter of Certain Carbon and Alloy Steel Prods., Inv. No. 337-TA-1002, 2018 WL 7572059, Comm’n Op., at *6 (Mar. 19, 2018) (“For example, when the Commission is asked to address an allegation of patent infringement in the importation of goods under section 337, the Commission follows substantive U.S. patent law.”).
 19 C.F.R. §§ 201.16, 210.11. However, this rule was temporarily modified in view of the pandemic to require the complainant, instead of the Commission, to serve the complaint. 85 Fed. Reg. 15798 (Mar. 19, 2020).
See Certain Steel Rod Treating Apparatus and Components Thereof, Inv. No. 337-TA-97, 1981 WL 50444, Comm’n Op., at *3 (June 30, 1981).
 A Centennial History of the USITC, USITC Pub. 4744, at 124 (Nov. 2017). We take a closer look at the historical evolution of the ITC in a previous post, supra note 1.
Certain Three-Dimensional Cinema Sys. and Components Thereof, Inv. No. 337-TA-939, Comm’n Op., at 58-59 (July 21, 2016); Certain Robotic Vacuum Cleaning Devices and Components Thereof Such As Spare Parts, Inv. No. 337-TA-1057, Comm’n Op., at 57-58 (Feb. 1, 2019).
Certain Digital Video Receivers and Hardware and Software Components Thereof, Inv. No. 337-TA-1001, USITC Pub. 4931, 2017 WL 11249982 (Dec. 6, 2017) aff’d Comcast Corp. v. Int’l Trade Comm’n, 951 F.3d 1301, 1308 (Fed. Cir. 2020) (“The Commission correctly held that Section 337 applies to articles that infringe after importation.”). “Recent Case Highlights the Breadth of the ITC’s ‘Sufficient Involvement’ Standard for Establishing Jurisdiction over Respondents,” Aug. 28, 2017, available at https://www.fr.com/fish-litigation/breadth-of-itc-sufficient-involvement-standard/.
Certain Sputtered Carbon Coated Computer Disks and Products Containing Same, Including Disk Drives, Inv. No. 337-TA-350, Comm’n Op., at 9 (Oct. 27, 1993).
Certain Variable Speed Wind Turbines and Components Thereof, Inv. No. 337-TA-376, Init. Det., at 19 (May 30, 1996) (unreviewed in relevant part).
Certain Intraoral Scanner and Related Hardware and Software, Inv. No. 337-TA-1090, Init. Det., at 18-19 (Apr. 26, 2019), vacating as moot, Inv. No. 337-TA-1090, Comm’n Notice (Aug. 20, 2019) (vacating the ID as moot because the asserted patent expired four days after the target date for the completion of the investigation).
See 19 C.F.R. § 210.14. As an example, Inv. Nos. 337-TA-1163 and -1164 were originally filed under one compliant but severed by the Commission. See Certain Light-Emitting Diode Prods., Sys., and Components Thereof (I), Inv. No. 337-TA-1163, Compl. (Apr. 30, 2019) (naming 25 respondents); Certain Light-Emitting Diode Products, Systems, and Components Thereof (I), Inv. No. 337-TA-1163, Notice of Institution (June 20, 2019) (naming 23 respondents); Certain Light-Emitting Diode Products, Systems, and Components Thereof (II), Inv. No. 337-TA-1164, Notice of Institution (June 20, 2019) (naming 8 respondents). The case was then further severed by the ALJ in Inv. No. 337-TA-1163. See Certain Light-Emitting Diode Prods., Sys., and Components Thereof (I), Inv. No. 337-TA-1163, Order No. 5 (July 10, 2019) (severing investigation by groups of patents).
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.
Elizabeth Connors is a litigation associate in the Washington D.C. office* of Fish & Richardson.
*Admitted only in California. Not admitted to practice in D.C. Work conducted in D.C. is directly supervised by a member of the DC Bar or is limited to federal courts or agencies listed below or otherwise authorized by law.
Jacqueline Tio’s practice emphasizes intellectual property litigation matters, including patent and trade secrets litigation in venues across the country and covering a wide range of technologies. Her experience includes both active litigations and pre-litigation due diligence. Over the years, Ms. Tio has participated and argued on...
Thomas S. “Monty” Fusco is Of Counsel in the Washington, DC, office of Fish & Richardson, where his practice focuses on Section 337 matters at the International Trade Commission (ITC). Prior to joining the firm he worked at the ITC for 25 years, focusing for the...