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Prosecution & Counseling

The International Trade Commission (ITC) addresses high-stakes intellectual property disputes involving imported goods. With its expedited schedule, the ITC can resolve issues quickly and forcefully. It offers a substantive resolution to companies seeking to block imported products that allegedly infringe a U.S. intellectual property right.

To harness the power of an ITC decision on a client’s behalf, Fish & Richardson offers the strongest, most experienced team practicing before the ITC today. Fish’s lawyers bring a multidisciplinary approach to ITC proceedings, drawing on their expertise in patent law, licensing of intellectual property rights, and litigation.

Together, Fish’s lawyers provide an exceptional blend of knowledge and familiarity with the ITC’s unique rules and procedures. The Fish team of more than 150 ITC lawyers includes:

  • a former Supervisory Attorney and Investigative Attorney in the Office of Unfair Import Investigations with over 25 years of experience at the ITC,
  • a prominent trial attorney who co-teaches, with a former Administrative Law Judge, the first law school class in the U.S. dedicated to IP enforcement rights at the ITC, and
  • one of the first lawyers to develop expertise trying patent cases at the ITC and who has handled more than 60 cases in this forum.

Fish has been involved in more than 130 ITC investigations since 2000.

Fish was active in the ITC long before the rush to appear in its chambers. Our firm’s deep experience and winning track record are why we handle more ITC patent litigation than any other law firm.  Fish has handled it all at the ITC: from changing the law regarding “downstream products,” to advancing the standards for when non-practicing entities can litigate in the ITC, to conducting unprecedented hearings before the full Commission regarding public interest issues.

Advantages of the ITC

The ITC is the forum of choice for expedited relief because its cases, called investigations, have three primary advantages:

  1. ITC cases are generally decided in 12-18 months – much more expeditiously than district court cases, which typically take two to four years to resolve.
  2. The ITC wields broad jurisdiction, including nationwide subpoena power and in rem jurisdiction on goods imported into the United States.
  3. Although the ITC cannot award monetary damages, it can bar infringing products from entry into the United States by issuing exclusion orders, which are enforced by U.S. Customs and Border Protection.

ITC proceedings allow patent holders to obtain significant prospective relief without filing actions against numerous foreign and/or domestic infringers. As a result, accused infringers often face the possibility of having entire product lines – or perhaps their entire business – barred from the U.S. market.

While an ITC investigation can be used in lieu of a district court action, it can also be a powerful complement to a conventional patent litigation in federal district court. Moreover, ITC investigations are not limited to patent disputes. Trademark, copyright, and trade secret owners have found the ITC extremely effective in protecting their IP rights. The swift and powerful remedies available before the ITC provide a striking tactic for IP owners and frequently afford greater leverage in negotiations. No firm manages this better than Fish.

Recent Case Experience

In the Matter of Certain Subsea Telecommunication Systems and Components Thereof (ITC 337-TA-1098, Oct. 3, 2019)
Fish won a significant case for client NEC Corporation at the ITC with a clean sweep win on every issue – proving noninfringement, patent invalidity, and no domestic industry – in this high-stakes case in the multi-billion dollar subsea telecommunications industry. Xtera sued NEC at the ITC (and in N.D. Tex.) in December 2017 alleging infringement of five patents related to submarine telecommunications equipment that transmit, carry, and receive data through a global mesh of submarine fiber-optic cables that interconnect the world’s cities. Xtera was seeking a limited exclusion order, which would have banned the importation of these products (primarily the dry equipment used at U.S. landing sites where the underwater cables connect) into the U.S.

The ITC investigation was instituted in January 2018, and the district court litigation was stayed while the ITC case moved forward. Fish successfully disposed of three of the five patents at issue before the five-day ITC evidentiary hearing in December 2018. In April 2019, Administrative Law Judge Clark Cheney issued an initial determination finding no violation of section 337, completely exonerating NEC of Xtera’s allegations. The Commission agreed with the initial determination and found no violation of section 337.

After the loss at the ITC, Xtera said they do not plan to appeal the decision. Xtera also withdrew the district court complaint that had been stayed while the ITC case progressed—all major wins for Fish and NEC in this high-stakes litigation.

Certain UV Curable Coatings for Optical Fibers, Coated Optical Fibers, and Products Containing Same (ITC 337-TA-1031, Final determination June 7, 2018)
Fish won this business-critical case as lead counsel for client Momentive UV Coatings (MUV) as the respondent in this four-patent ITC case against DSM Desotech and its parent company. The case involved patents on optical fiber coatings and coated optical fibers, with DSM seeking to block the importation of MUV’s UV curable coating products into the United States. The Commission found all asserted claims of the patents-in-suit either invalid or not infringed by MUV. DSM was seeking a limited exclusion order against MUV’s largest-selling coating in the ITC case, and was asking for $30 million in damages in a related district court case.

In the Matter of Certain Load Supporting Systems, including Composite Mat Systems, and Components Thereof (ITC 337-TA-1095, Initial determination June 26, 2018, terminating investigation based on consent orders and settlement agreement)
Fish led two market-defining patent infringement cases for clients Newpark Resources and Newpark Mats & Integrated Services in W.D. Pa. and at the ITC. Fish filed the district court case against Checkers and thereafter filed the ITC case against four entities – Checkers Industrial Products, Checkers Safety Products and Zigma Ground Solutions in the U.K. and Isokon in Slovenia – alleging patent infringement of two Newpark patents that are the “crown jewels” of the company’s large industrial mat market. The mats are primarily used in the oil and gas industry to contain spills and protect the ground underlying the well site from environmental contamination, and to provide a loading structure for equipment and trucks.

After Checkers underbid Newpark and won a large contract, Newpark filed the ITC case to stop the competing mats from entering the U.S., and to deal with the inventory of mats Checkers had already imported into the U.S. The ITC action forced a settlement in both the ITC and district court, and forced Newpark’s largest competitor out of the U.S. market. Fish and Newpark got everything they asked for and more in the settlement, including payment for the mats imported into the U.S. and a consent decree from all the respondents prohibiting importation of the infringing mats into the U.S. during the life of the Newpark asserted patents.

Certain Non-Volatile Memory Devices and Products Containing Same (ITC 337-TA-1046, Initial determination Apr. 27, 2018, Final determination Oct. 9, 2018)
Fish won big for client Macronix International, a leading integrated device manufacturer in the non-volatile memory market, against Toshiba Corp. and its subsidiaries by obtaining a reversal of an administrative law judge’s (ALJ) initial determination of no violation and by securing an exclusion order, while clarifying the law regarding the domestic industry requirement.

The ITC investigation began in April 2017 after Fish filed a complaint for Macronix that Toshiba’s imported products infringed Macronix’s patents. After a February 2018 trial, the ALJ found that, although Toshiba infringed a Macronix patent, there was no violation of Section 337, based on a statutory interpretation that excluded non-commercial products from the scope of the economic domestic industry requirement.

After Fish sought plenary review, the Commission reversed the ALJ’s no-violation decision, finding that Toshiba’s accused products infringed Macronix’s valid patent claim and that Macronix’s significant investments in the U.S. satisfy the economic domestic industry requirement. The Commission issued an exclusion order and cease-and-desist orders preventing Toshiba and its affiliates from importing, selling or marketing any infringing devices. The Commission’s determination removes the commercialization requirement, thus significantly expanding the scope of domestic industry products on which a complainant can rely.

In the Matter of Certain Composite Aerogel Insulation Materials and Methods for Manufacturing the Same (ITC 337-TA-1003, Final determination Feb. 5, 2018) – Fish scored a major ITC victory for Aspen Aerogels, Inc., in a patent infringement case against two China-based competitors, Guangdong Alison Hi-Tech Co. Ltd. and Nano Tech Co. Ltd. In its final determination, the ITC found that Alison and Nano each infringed Aspen Aerogels’ three asserted patents, that Aspen Aerogels has a domestic industry in every asserted claim, and that Alison and Nano failed to prove any of the claims invalid. The ITC issued a limited exclusion order barring the importation of Alison’s and Nano’s composite aerogel insulation into the U.S. market.

There was a lot at stake for Aspen Aerogels, which is a leading energy technology company providing innovative thermal management solutions to the $3.2 billion energy insulation market. The company turned to Fish in 2015 after the two Chinese companies began to sell cheap knockoffs in the marketplace. Fish filed the case with the ITC in May 2016. Alison and Nano failed in their attempts to throw up many roadblocks throughout the pendency of the ITC case, including Alison filing a number of IPR petitions against Aspen Aerogels’ patents, which were all denied institution by the PTAB.


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