International Trade Commission (ITC) Proceedings

The International Trade Commission (ITC or the Commission) is the U.S. administrative agency responsible for investigating trade violations based on infringement of U.S. intellectual property rights.

When the Commission finds that a foreign manufacturer’s product infringes a U.S. patent, it can issue an exclusion order to prevent infringing imports from entering the U.S. The ITC also can issue cease-and-desist orders that prohibit domestic sale of infringing products, which could remain in effect for the lives of the infringed patents. BakerHostetler offers skilled and tested patent litigation advocacy in Section 337 proceedings before the ITC, where trials occur in less than a year and remedial orders go into effect in less than two. There is also the potential for the complainants in ITC investigations initiating parallel infringement proceedings in district court to recover past damages, increasing risk to accused infringers both reputationally and financially.

Defended a global leader in water treatment and its subsidiary, a pour-through water filtration system, in an ITC investigation brought by a competitor, resulting in a complete win. The Commission issued a final ruling finding the competition’s patent invalid on three separate grounds, and terminated the investigation without issuing any remedial order against the client, allowing their gravity fed water filtration products to remain available in the U.S.
Successfully defended a leading wind turbine manufacturer in a high-stakes ITC investigation initiated by a competitor that sought to bar the client from selling wind turbines in the U.S. based on alleged infringement of two patents. In earlier cases, the competitor had successfully used these patents to block other manufacturers from the U.S. market. After an evidentiary hearing, the ITC determined that one patent was invalid and the other was not infringed. One set of claims from the second patent presented infringement risk to the accused wind turbines, but the client and BakerHostetler eliminated this risk with a quick software redesign. As a result, the ITC proceeding did not affect the client’s U.S. wind turbine business.
Successfully defended a leading electronic cigarette manufacturer in an ITC investigation brought by a competitor, targeting electronic nicotine delivery systems and cartridges. The firm guided the respondent in negotiating a settlement agreement on favorable terms that also served to dismiss a companion patent infringement case filed in the U.S. District Court for the District of New Jersey.
Successfully defended a global integrated pharmaceutical company and its affiliates in an ITC
investigation initiated by a global diagnostic company seeking to bar the client’s newly introduced rubidium infusion systems from the U.S. market. The firm obtained rulings that all asserted claims were invalid as obvious. The firm also worked with the client’s engineers to design around the three asserted patents as a hedge against an adverse ruling. Because the ITC determined that the asserted patents were invalid, no remedial order was entered and the design-around product became unnecessary. Concurrently, in IPR proceedings before the U.S. Patent and Trademark Office (USPTO), BakerHostetler invalidated two other patents that were asserted in a parallel district court action. BakerHostetler also represented the client in the appeals of the ITC and USPTO decisions, both of which were affirmed by the Federal Circuit.
Successfully defended an electronics suppler for Walmart and Sam’s Club and its U.S. subsidiaries in an ITC action brought by a provider of semiconductors and infrastructure software involving 10 patents in the semiconductor and audiovisual device fields. We also represented the client in the companion CDCA patent infringement case and a related antitrust and breach of contract action against the plaintiff in NDCA and negotiated a settlement of all three actions on favorable terms for the client shortly before the ITC trial.