Let’s take a step back and look at the International Trade Commission (ITC) investigation process from the beginning. Someone is importing products, or components in products, that infringe on your intellectual property rights. You decide to sue them for infringement before the ITC instead of (or in addition to) in a federal court. How do you start?
Q1. What types of claims can be brought in the ITC?
The vast majority of ITC investigations, which are commonly called Section 337 investigations, involve patent infringement. However, you can also assert other types of intellectual property claims in the ITC including infringement of trademarks, registered copyrights, mask works, and even boat hull designs. Unfair competition claims including misappropriation of trade secrets, passing off, false advertising, and violations of antitrust laws can also be brought.
Q2. What are the ITC Complaint requirements?
Just like filing a complaint in a federal court, you must include sufficient detail in your ITC Complaint. The ITC provides a list of specific facts and allegations that must be included in the Complaint in its regulations. 19 CFR § 210.12. For example, the Complaint must
include a statement of facts constituting the unfair acts;
describe specific instances of unlawful importations or sales; and
state the name, address, and nature of the business alleged to be violating Section 337.
The Complaint must also include a statement as to whether a “domestic industry” exists (or is in the process of being established) because Congress created Section 337 actions specifically to protect industries in the United States. Because the domestic industry requirement can become a complicated analysis for companies, we will cover this topic in later posts. But, generally, if the complainant is making a product covered by the patent and the infringing components compete with that product in the market, there is a domestic industry. Non-practicing entities may have a hard time meeting this requirement.
Because the relief in an ITC action is an exclusion order, barring the import of the infringing components, the Complaint must include a public interest statement, which explains why the requested relief would not have an undue adverse effect on the public interest. 19 CFR § 210.8. As one example, the ITC denied requested relief based on the public interest when complainants tried to exclude hospital beds for burn victims in the 1980’s, just as today the ITC likely would not bar critical medical supplies needed to address a global pandemic.
Q3. What do I need to do before filing a Complaint?
Keep in mind the ITC does not always pursue, or formally “institute,” an investigation based on a Complaint. Because of the many complicated requirements for filing a Complaint in the ITC, submitting your draft Complaint and near-final exhibits to the ITC’s Office of Unfair Import Investigations (“OUII”) before filing is a good idea. Meetings with the OUII are completely off-record and typically occur between 7 to 10 days of sending them your Complaint. The OUII has a very good sense of the ITC’s rules and recent opinions, and can provide suggestions on how to improve your Complaint.
Q4. How do I file?
Once the Complaint is ready to go, you will need to physically bring a signed original copy, the requisite number of true copies, and all the additional required documents to the ITC for filing. 19 C.F.R. § 210.8. The Complaint and copies must be filed by paper, although the ITC is now temporarily permitting electronic filing during the COVID-19 outbreak. You can file confidential and public versions of a Complaint or your exhibits if they contain Confidential Business Information, which the ITC specifically defines in its regulations quite expansively.
Q5. Does this create an ITC Investigation?
Not yet! As alluded to earlier, the Complaint does not automatically trigger an investigation. The ITC must first “institute” the investigation. Accordingly, the filing of the Complaint commences the “preinstitution” proceedings, and the ITC assigns a “Docket No.” During this time, the ITC checks the Complaint for compliance with its requirements and can also perform its own preliminary investigation. 19 C.F.R. § 210.9.
Also during this time, the OUII prepares an institution memorandum to provide its recommendation (usually within 20 days). The OUII may ask you for more information after the Complaint is filed, which sometimes leads to the filing of Supplemental Complaints.
Within 30 days, the ITC will provide the final decision on whether it will institute an investigation or part of an investigation. 19 C.F.R. § 210.10. The ITC typically institutes investigations that have gone through initial OUII consultation, but in rare circumstances, the ITC may still deny institution—for example, if the issue is better addressed by another federal agency.
Q6. What happens when the ITC institutes an Investigation?
Once the ITC institutes an investigation, it will assign an “Investigation No.” and will publish a notice in the Federal Register that identifies the scope of the investigation, respondents, and accused products or activities. This publication triggers a number of things, including the ability for you to start seeking documents and testimony from respondent and third parties. The Chief Administrative Law Judge (“ALJ”) will also assign an ALJ to preside over the investigation.
Finally, the ITC will proceed to serve the Complaint on each respondent. However, because of the COVID outbreak, the complainants must now serve the Complaint and exhibits on each respondent and provide proof of service. A public record of all of these activities is available via the ITC’s website and document portal, known as “EDIS.”
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...
Joseph R. Dorris is a litigation Associate in the Atlanta office of Fish & Richardson. He has experience in multiple stages of litigation with District Court and International Trade Commission (ITC) proceedings. He was previously a summer associate at Fish where he worked on matters involving computing, telecommunications and...