Import patent infringement: the [section]337 investigation.

• Author: Joffrion, Clayton J.
• Position: Out of State Division

Unlike a registered trademark or copyrighted materials, a patent is not filed with U.S. Customs and Border Protection. Import infringement of a patent is investigated by the International Trade Commission (ITC). Only after infringement is found to exist is an exclusion order granted to be enforced by Customs and Border Protection and/or a cease and desist order issued.

Section 337 of the Tariff Act of 1930 (1) declares that the infringement of the following are unlawful import practices: a U.S. patent or a U.S. copyright registered under Title 17, a registered trademark, and other rights not addressed here. (2) In cases involving infringement of these intellectual property rights, there is no injury requirement.

Background on [section]337

Under [section]337, the ITC conducts investigations into allegations of certain unfair practices in import trade. Most [section]337 investigations involve allegations of patents or registered trademarks. The regulations are mostly procedural. However, the practitioner must research and be prepared to prove or defend allegations of unfair trade. Section 337 investigations are initiated by the commission following the receipt of a complaint that complies with the commission's rules. Once an investigation is instituted, the chief administrative law judge assigns an administrative law judge to preside over the proceedings and to render an "initial determination" as to whether [section]337 has been violated.

The commission also assigns an investigative attorney from the commission's Office of Unfair Import Investigations (OUII), who functions as an independent litigant representing the public interest in the investigation. In the notice announcing initiation of an investigation, the commission identifies the entities that may participate in the investigation as parties, namely, the complainants that allege a violation, the respondent or respondents that are alleged to have violated [section]337, and the OUII staff attorney. Section 337 investigations are conducted in accordance with procedural rules similar to the Federal Rules of Civil Procedure. These commission procedural rules (found in 19 C.F.R. Part 210) are typically supplemented by a set of ground rules issued by the presiding administrative law judge.

A formal evidentiary hearing on the merits is conducted by the presiding administrative law judge in conformity with the Administrative Procedure Act. (3) The parties have the right of adequate notice, cross-examination, presentation of evidence, objection, motion, argument, and other rights essential to a fair hearing. Following the hearing on the merits of the case, the administrative law judge issues the initial determination (ID) that is then certified to the commission. The commission may review and adopt, modify, or reverse the ID, or it may decide not to review the ID. If the commission declines to review an ID, the ID becomes the final determination of the commission. If the commission determines that [section]337 has been violated, the commission may issue an exclusion order barring the products at issue from entry into the U.S., as well as a "cease and desist" order directing the violating parties to cease certain actions. The commission's exclusion orders are enforced by U.S. Customs and Border Protection. Commission orders become effective within 60 days of issuance. Appeals of commission orders are heard by the U.S. Court of Appeals for the Federal Circuit. Also, the president has the authority to veto exclusionary orders.

Filing a Complaint

Before drafting a complaint, bear in mind that once it has been filed, the public version of the complaint and any other public document filed in the matter can be accessed via the commission's electronic document information system (EDIS). The ITC allows the filing of a redacted copy as the public version.

Paper Filing

Paper documents are filed with Docket Services at 500 E Street, S.W., Room 112-A, Washington, D.C. 20436. When a case is before the commission, a filing in paper form requires an original and 12 copies. (4) When a case is before an administrative law judge, (5) filing in paper form requires the submission of an original and six copies of a document. Documents will not be accepted for filing if an insufficient number of copies are submitted. Also note that when filing in paper form, the original signed copy of the document, as well as one additional copy, should not be stapled, bound, or hole-punched so it can be scanned. All documents submitted for filing must be accompanied by an EDIS cover sheet, which must be filled out online on the EDIS website: http://edis. usitc.gov. The cover sheet contains certain information about the document, including the date of submission, the name of the signatory, and whether the document contains confidential business information and is used to index the documents in EDIS. There is a coding manual to assist parties with coding documents for EDIS. (6)

Filing Evidentiary Documents

Documents presented for filing must conform to the commission's Rules 210.4 and 201.8. Some public documents may be filed electronically in portable document format (PDF). The electronic document information system is an electronic repository of the official record of documents filed at the commission. When a complaint is based upon the alleged infringement of certain intellectual property rights, the commission's rules require that it be accompanied by background materials relating to the rights asserted. (7) In patent-based cases, the rules require that the complaint be accompanied by a certified prosecution history for each asserted patent. Additionally, the complainant must submit copies of license agreements if the complaint relies on license agreements...