1. Section 337 Actions at the ITC: Past, Present, and Future
AUSTIN
DALLAS
HOUSTON
LOS ANGELES
MARSHALL
NEW YORK
SILICON VALLEY
WASHINGTON, DC
Section 337 Actions at the ITC: Past, Present, and Future
April 27, 2016
Austin Intellectual Property Law Association
Benjamin Levi
McKool Smith, P.C.

2. Past • 100th Anniversary of the ITC
• U.S. Tariff Commission created on September 8, 1916

3. Past

4. Past • Tariff Act of 1916 • §316 of Tariff Act of 1922
• Prohibited “unfair methods of competition and unfair acts” in the importation of articles into the United States, and in their sale after importation

5. Past
• §316 of Tariff Act of 1922
• Applied to actions that threatened to injure a domestic industry that existed or was in the process of being established

6. Past
• §316 of Tariff Act of 1922
• Empowered the President to fix an additional duty upon the importation of the articles to which the unfair practice relates, or, if he is satisfied the unfairness is extreme, by directing that the articles be excluded from entry

7. Past • Under§316 of Tariff Act of 1922, first case involved revolvers:
• brought by Smith & Wesson
• President authorized temporary relief the same day petition filed

8. Past • Ex parte Bakelite Corp., 279 U.S. 438 (1929)
• Frischer Co. v. Bakelite Corp., 39 F.2d 247 (CCPA 1930)
• “We are, therefore, of opinion that there is no valid objection to said section 316 as an unconstitutional delegation of legislative authority to the President.”
• “The provision relating to unfair methods of competition in the importation of goods is broad enough to prevent every type and form of unfair practice and is therefore a more adequate protection to American industry than any antidumping statute the country has ever had.” (quoting Senate Finance Committee report).

9. Past • Frischer Co. v. Bakelite Corp., 39 F.2d 247 (CCPA 1930)
• “[I]t is very obvious that it was the purpose of the law to give to industries of the United States not only the benefit of the favorable laws and conditions to be found in this country, but also to protect such industries from being unfairly deprived of the advantage of the same and permit them to grow and develop.”

10. Past • Smoot-Hawley Tariff Act of 1930
• §337 of 1930 Act superseded §316 of 1922 Act

13. Past
• Amendments
• Amendments
• GATT, 1994

14. Past • 1974 Amendments • created “U.S. International Trade Commission”
• gave ITC power to impose remedies

15. Past • 1988 Amendments • removed injury requirement
• added subsection (C)

16. Past
• Amendments
• an industry in the United States shall be considered to exist if there is in the United States, with respect to the articles protected by the patent, copyright, trademark, mask work or design concerned –
(A) significant investment in plant and equipment;
(B) significant employment of labor or capital; or
(C) substantial investment in its exploitation, including engineering, research and development, or licensing.

17. Past
• GATT, 1994
• Defendant can automatically stay district court litigation involving “same issues” as ITC investigation (28 U.S.C. § 1659)

18. Present

19. Present

20. Present

21. Present
• eBay v. MercExchange, 547 U.S. 388 (2006)

22. Present • Domestic Industry requirement • economic prong
• technical prong

23. Present • Economic prong
• complainant (i.e., plaintiff) can rely on its own product and expenditures, or on the product and expenditures of its licensees
• domestic industry is determined as of the date the Complaint is filed (although there are exceptions)

24. Present • Technical prong
• the domestic industry article must practice any single claim of the asserted patent
• subsection (c) investments should be targeted in patented aspect of article

25. Present • Design-arounds
A Complainant should fully consider potential for design-arounds before filing Complaint
Commission’s pilot program on adjudication of design-arounds:
7modprocpilot_fs_final.doc

26. Present
• 100-day program to address potentially case-dispositive issues

27. Present • Electronic Transmissions
ITC’s jurisdiction does not include “imported” electronic data
ClearCorrect Operating LLC v. International Trade Commission

28. Future • Study the past if you would define the future --Confucius
• Those who cannot remember the past are condemned to repeat it
--George Santayana

29. Future

30. Future?

31. Future?

32. Future?
. . . Continued

33. Future?
• Rep. Cardenas Bill

34. Future?

35. Future?

36. Future?

37. Contact Benjamin Levi McKool Smith, P.C. blevi@mckoolsmith.com

38. Office Locations austin dallas houston los angeles marshall new york
austin
West 6th Street
Suite 1700
Austin, TX 78701
dallas
300 Crescent Court
Suite 1500
Dallas, TX 75201
houston
600 Travis Street
Suite 7000
Houston, TX 77002
los angeles
One California Plaza
300 South Grand Ave,
Suite 2900
Los Angeles, CA 90071
marshall
104 E. Houston
Suite 300
Marshall, TX 75670
new york
One Bryant Park
47th Floor
New York, NY 10036
silicon valley
255 Shoreline Drive
Suite 510
Redwood Shores, CA
washington, dc
1999 K Street, NW
Suite 600
Washington, DC 20006