Unlike in federal district court, a party in a 337 Investigation, who redesigns a product after having been found to infringe a patent, may petition the International Trade Commission (the "Commission") for an "advisory opinion" on whether the new design is subject to an existing exclusion order. In response to such a petition, the Commission may institute a proceeding, pursuant to 19 C.F.R. § 210.79, to determine "whether any person's proposed course of action would violate a Commission exclusion order, cease and desist order, or consent order." Therefore, it was not surprising that the Commission recently instituted an Advisory Opinion Proceeding in Certain Kinesiotherapy Devices and Components Thereof, 337-TA-823, after one of the respondents requested institution of an Advisory Opinion Proceeding to determine whether its new kinesiotherapy devices were covered by the general exclusion order and cease and desist order directed against it.
What made the decision noteworthy was that the Commission did not, as it had in the past, refer the petitioner's request to the Office of General Counsel or the Administrative Law Judge ("ALJ") in the original investigation, for additional findings and recommendations. Instead, the Commission referred the petition to the Office of Unfair Import Investigations ("OUII") for analysis. The Commission ordered that: "The parties will furnish OUII with information as requested, and OUII shall investigate and issue a report to the Commission within ninety (90) days of the date of publication of this notice." See 79 Fed. Reg. 8731 (February 13, 2014). The Commission indicated that it will issue an advisory opinion in the matter by June 30, 2014, "based on the written report of OUII." Continued attention to the Commission's actions in this and future Advisory Opinion Proceeding merit watching, to see whether the Commission's order signals an expansion of OUII's role in future Section 337 matters.
The author Carl C. Charneski is a former Administrative Law Judge at the International Trade Commission (ITC). At Brinks Gilson & Lione, Mr. Charneski focuses his practice on international trade and litigation matters, with an emphasis on representing clients in Section 337 investigations before the ITC.
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