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ITC Section 337

Wolf Greenfield’s ITC practice includes litigators with decades of intellectual property trial experience, extensive technical prowess, and a comprehensive understanding of the ITC’s unique substantive and procedural law, providing our clients with the best possible resources for achieving their objectives.

Wolf Greenfield's Unique Approach to ITC Litigation

The US International Trade Commission (“ITC”) is a popular but complex avenue for enforcing intellectual property rights. Successfully navigating the unique rules and procedures of ITC investigations as the complainant or the respondent requires counsel with substantive legal knowledge and first-rate trial skills. 

Wolf Greenfield’s ITC practice includes litigators with decades of intellectual property trial experience, extensive technical prowess, and a comprehensive understanding of the ITC’s unique substantive and procedural law, providing our clients with the best possible resources for achieving their objectives.     

Wolf Greenfield is nationally recognized as one of the best-performing law firms for its representation of both complainants and respondents. In January 2020, Patexia published its first annual “ITC Intelligence Report,” which includes rankings of law firms handling patent litigation at the International Trade Commission over the past five years. Wolf Greenfield was recognized to be in the top 5% of all national firms (#11 out of 268 national law firms) for respondent-side and complainant-side success.

Our exceptional track record of success includes obtaining the first-ever victory on unpatentability in a 100-day proceeding, successfully obtaining a rarely-granted General Exclusion Order, and significant experience before US Customs and Border Protection (“Customs”) with the recent Inter Partes Rule 177 proceedings. Our legal talent and prowess is bolstered by our unparalleled technical experience, where over 90% of our team members have science or engineering degrees, and over 70% of our team members have advanced technical degrees.

 

About ITC Litigation

Section 337 of the Tariff Act of 1930 prohibits unfair trade practices, including the importation of articles that violate a valid US patent, trademark, trade dress or copyright infringement.  Section 337 also applies to the misappropriation of trade secrets and other forms of unfair competition.

Section 337 Investigations move at a rapid pace, and the primary remedy available to the complainant is an order that excludes importation into the US of the infringing article.  As a result, Section 337 Investigations are high-stakes matters requiring serious and prompt attention.    

 

Wolf Greenfield Representative Experience

Wolf Greenfield represents both complainants and respondents in Section 337 ITC investigations with a significant track record of success. Wolf Greenfield obtained the first ever victory on unpatentability in a 100-day proceeding. Moreover, in the last four years alone, Wolf Greenfield has handled 10 Section 337 ITC Investigations, with client success in each one. Wolf Greenfield also handles enforcement and modification proceedings before the ITC, as well as enforcement-related proceedings (including proceedings regarding redesigned products) before Customs.  

Wolf Greenfield’s recent representative experience at the ITC and before Customs includes:

Inv. No. 337-TA-1012 (Fujifilm v. Sony) and Inv. No. 337-TA-1076 (Fujifilm v. Sony). We successfully represented Sony in a multi-year global patent dispute with Fujifilm related to computer storage technology. The dispute spanned multiple ITC investigations, as well as parallel proceedings at the Patent Trial and Appeal Board (PTAB) and Rule 177 proceedings before Customs. During the ITC investigations, Wolf Greenfield prevailed in preventing any violation based on Sony’s newest generation of accused products and technology.  

Inv. No. 337-TA-1012-Enforcement (Fujifilm v. Sony). In this follow-on enforcement proceeding (337-TA-1012-Enforcement), Wolf Greenfield secured on behalf of client Sony  an initial determination that rejected nearly every theory pursued by opponent Fujifilm. The ALJ specifically found that client Sony acted entirely in good faith in attempting to comply with the ITC’s orders.

Inv. No. 337-TA-1012-Enforcement (Fujifilm v. Sony). In this follow-on enforcement proceeding (337-TA-1012-Enforcement), Wolf Greenfield secured on behalf of client Sony  an initial determination that rejected nearly every theory pursued by opponent Fujifilm. The ALJ specifically found that client Sony acted entirely in good faith in attempting to comply with the ITC’s orders.

Inv. No. 337-TA-1174. We successfully represented Aster Graphics (a printer cartridge manufacturer) in in this ITC investigation launched by Canon concerning replacement printer cartridges. The ALJ granted Aster’s motion for summary determination of non-infringement.

Inv. No. 337-TA-994. We succeeded in obtaining the first-ever victory on unpatentability in a 100-day proceeding for all joint defense respondents major electronics companies (e.g. Sony, HTC, LG, Samsung, etc.), securing a ruling from the ITC that the asserted patent was invalid under 35 U.S.C. § 101. We also led the joint defense group effort to secure a claim construction under which there was no infringement. These successful decisions were affirmed by the Federal Circuit.

Inv. No. 337-TA-935. We successfully represented patent owners Segway and DEKA as plaintiffs in this ITC investigation against multiple competitors concerning Segway-type personal transporter and controller devices. We successfully secured a rarely-granted General Exclusion Order (GEO) to preclude importation by numerous respondents and non-respondents. Critical to our success were our claim construction arguments, which persuaded the ITC staff attorney, and later the ALJ, to adopt our positions, which paved the way for the GEO and forced multiple settlements.

Inv. No. 337-TA-903. We successfully represented patent owner BTG, as plaintiffs in this ITC investigation against multiple competitors concerning antibody pharmaceutical products against competitors targeting soon-to-be launched products. Our team secured a string of pre-trial victories, including a favorable claim construction decision, compelling critical discovery and defeating several motions for summary determination. These successes positioned BTG to secure a favorable settlement on the eve of trial, securing our client’s high-value market exclusivity for many years.

Inv. No. 337-TA-892. We successfully defended Sony against wide-ranging infringement allegations involving VoIP technology, including claims against the PlayStation 4. Our extensive technical workup of invalidity and product-based prior art led to favorable settlement and the plaintiff dropping its case two weeks before the hearing.Inv. No. 337-TA-935. We successfully represented patent owners Segway and DEKA as plaintiffs in this ITC investigation against multiple competitors concerning Segway-type personal transporter and controller devices. We successfully secured a rarely-granted General Exclusion Order (GEO) to preclude importation by numerous respondents and non-respondents. Critical to our success were our claim construction arguments, which persuaded the ITC staff attorney, and later the ALJ, to adopt our positions, which paved the way for the GEO and forced multiple settlements.

Inv. No. 337-TA-836. We successfully represented Sony in this complex multi-respondent case involving LCD, CPU and GPU technologies, and succeeded in convincing ITC Staff to support our summary determination motion, leading to favorable pre-hearing settlement. 

Inv. No. 337-TA-741/749. We successfully represented respondent MStar Semiconductor in these investigations targeting MStar’s semiconductor chips, which were incorporated into numerous LCD products imported into the United States. We took the case through the hearing and secured a complete victory for MStar on the merits of non-infringement. 

Our Team

Chair, Litigation Practice
Greg, Litigation Practice Chair, is a highly-experienced and successful first-chair lead litigation shareholder with extensive ITC experience. Greg has 20 years of experience, including as a partner at Kirkland & Ellis, where he practiced IP litigation for over 10 years. Greg has first-chaired numerous ITC investigations while at Wolf Greenfield, including 903, 935, 1012, 1012e and 1076 Investigations.
Shareholder
Mike heads the firm's New York Office  and is a former co-chair of the firm's Litigation Practice. Mike has been with Wolf Greenfield for his entire career, since the Summer of 1997. He represents the firm’s clients as lead counsel in patent, trademark and copyright litigation matters, and practices frequently before the International Trade Commission and district courts around the country, as well as the Patent Trial and Appeal Board in post-grant matters such as inter partes reviews. His disciplined approach to case management has enabled him to litigate successfully, and with great efficiency for his clients, against some of the largest law firms in the country.
Shareholder
Charlie is a shareholder in the Litigation Practice and has served as day-to-day lead for numerous ITC investigations—including the 836, 892, 903, 1012e and 1076. Charlie has particular experience as a “case architect” who takes a holistic view of the case and identifies weaknesses in a patent owner’s positions—for example, he regularly exploits tensions between infringement and validity theories.
Shareholder
Bryan, shareholder in the Litigation Practice, has significant ITC experience. Prior to joining Wolf Greenfield, Bryan spent 10 years at WilmerHale, where he played critical roles on multiple ITC cases. In one case (Inv. No. 781), Bryan represented Intel, Apple and HP in a six-patent ITC investigation involving integrated circuit packaging layouts.
Associate
Libbie, a senior associate in the Litigation Practice, has worked on numerous ITC cases, including the 903, 1012, 1012e and 1076. She was directly responsible for a particularly complex patent on which we were completely successful. She helped the team to develop compelling invalidity defenses based on prior art products—leading the complainant to drop most of its patent laims. Subsequently, the ALJ determined that our client (Sony) had not infringed the remaining claims.
Associate
Anant, a senior associate in the Post-Grant Proceedings Practice, has represented both plaintiffs and defendants in cases involving numerous aspects of LED lighting technology, including epitaxy, phosphors and packaging. He has experience working with expert witnesses and independent testing labs on analysis of LED semiconductors using techniques such as atom probe tomography and transmission electron microscopy. Anant also has experience with all phases of IP litigation at the trial and appellate levels.

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