United States: Top Developments At The ITC In 2015

The past year has seen a number of major developments for Section 337 investigations at the International Trade Commission, including several high profile Federal Circuit decisions, the announcement or proposed expansion of two pilot programs for expedited proceedings, and the naming of a new Administrative Law Judge (ALJ). Here are the top developments at the ITC in 2015:

  1. In August 2015, the en banc Federal Circuit ruled in Suprema v. ITC that the ITC has the power to exclude infringing imports under an induced infringement theory even if the imports do not infringe the patented method until after they have been imported into the United States. The court held that the statutory language "articles that infringe" covers goods that infringe the asserted patent post-importation. The accused products were fingerprint scanning devices that did not infringe until software was added within the United States. By reversing an earlier panel decision, the Federal Circuit eliminated substantial uncertainty as to whether method patents (which would generally only be infringed after importation) are enforceable at the ITC.

    Suprema v. ITC, 796 F.3d 1338 (Fed. Cir. 2015) is discussed in our previous post, " Suprema v. ITC: Federal Circuit Affirms Induced Infringement at ITC."
  2. In November 2015, a Federal Circuit panel issued its decision in ClearCorrect v. ITC, concluding that the ITC does not have the authority to exclude infringing digital products (e.g., software or other data) that are electronically transmitted to the United States (as opposed to being imported on a physical medium, such as a CD-ROM). Interpreting Section 337, the court held that the term "articles" is limited to "material things."

    In her dissent, Judge Newman pointed out that the decision would permit exclusion of infringing digital data carried on discs or other storage media, but not the same infringing data if transmitted electronically. The Commission recently filed a request for en banc rehearing of this appeal, which has not yet been ruled upon by the court.

    ClearCorrect Operating, LLC v. ITC, 116 U.S.P.Q.2d 1883 (Fed. Cir. 2015) is discussed in our previous posts, " Digital Models: Federal Circuit Rejects ITC Jurisdiction Over Electronic Transmissions," and " Digital Models: ITC and Align Ask for Federal Circuit En Banc Review."
  3. In March 2015, the Federal Circuit again affirmed that to establish a domestic industry based on licensing activities, the complainant must show the existence of articles that practice the patent-in-suit. The Federal Circuit in the LSI case affirmed a Commission determination that a domestic industry did not exist because the complainant's licensing activities did not relate specifically to "articles protected by the [asserted] patent." LSI Corp. v. ITC, 604 Fed. Appx. 924 (2015).

    Though non-precedential, the LSI decision extends the Federal Circuit and Commission's development of the "articles" requirement for domestic industry based on licensing, as explained in our previous post, " Show Me the Article: The "Articles" Requirement for Domestic Industry Based on Licensing."
  4. In August 2015, Judge MaryJoan McNamara was named an ALJ at the ITC, filling a vacancy that was created when Judge Gildea retired in August 2014.  The Commission now has a full complement of six ALJs. See our prior post, "MaryJoan McNamara Named New ALJ."
  5. Complainants asserting trade secret misappropriation at the ITC had considerable success in 2015.  In both Certain Opaque Polymers and Certain Crawler Cranes, the Commission found a violation of Section 337 based on misappropriation of trade secrets. The remedy for both cases involved limited exclusion orders and cease-and-desist orders directed to importation of the products manufactured using the misappropriated trade secrets. In Certain Opaque Polymers, the finding of violation was part of dispositive sanctions issued by the ALJ for respondents' bad faith spoliation of evidence. 

    These investigations are discussed in our previous posts, " Opaque Polymers: ITC Affirms Dispositive Sanctions," and " Crawler Cranes: 10-Year Exclusion Order for Misappropriated Trade Secrets."
  6. In a September 2015 notice, the ITC proposed codifying and expanding its 100-day pilot program for expedited consideration of case-dispositive issues in Section 337 investigations. The current program, which has been used for two investigations so far, allows the Commission to designate case-dispositive issues for an early ruling after an expedited hearing. The new proposal would allow parties to move for an early ruling and allow ALJs to designate, on their own initiatives, issues for early ruling.

    This proposal and other proposed rules are discussed in our previous post, " ITC Proposes Expansion of 100-Day Pilot Program for Early Termination."
  7. In February 2015, the ITC announced a new pilot program to decide whether new or redesigned products are covered by ITC exclusion orders. A respondent who loses in a Section 337 investigation can file a petition to determine whether its re-designed product should be "carved out" of the existing exclusion order. Petitions involving "purely legal" questions will be assigned to the ITC General Counsel for a recommendation, followed by a Commission decision within 60-90 days after institution. Petitions that require "minimal fact finding" will be decided by the Commission 90-180 days after a proceeding before the Office of Unfair Import Investigation (OUII). Petitions with extensive fact-finding will be assigned to an ALJ for an initial determination, followed by a Commission decision 6-9 months after institution. 

    Further discussion is available in our previous post, " New ITC Pilot Program for Redesigns and New Products."
  8. In May 2015, in Lelo Inc. v. ITC, the Federal Circuit found that qualitative factors alone, without quantitative data, were insufficient to show that the complainant's purported domestic industry investments were significant. The Commission had found that the complainant's purchase of "crucial" components of its practicing devices from suppliers in the United States could satisfy the domestic industry requirement because the "contribution of the components at issue from a qualitative standpoint is indeed significant." The Federal Circuit reversed, concluding that qualitative factors cannot overcome the lack of quantitative data supporting the significance of the investments.

    Further discussion is available in our previous post, " Lelo v. ITC: Qualitative Factors Alone Are Insufficient for Domestic Industry."
  9. The ITC experienced a surge in new Section 337 filings in the last quarter of 2015.  The Commission instituted 36 new investigations in 2015, and 16 Section 337 complaints were filed between October 1 and December 31.

    A round-up of 2015 statistics is available in our previous post, " Round-Up: 2015 Decisional Statistics."

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions