ITC Litigation
Perkins Coie's deep experience and history of success are why it has been nationally recognized as a leader in ITC Section 337 litigation for both complainants and respondents.
The U.S. International Trade Commission (ITC) can stop the importation of goods that infringe on U.S. intellectual property (IP) rights. With its expedited procedural schedule and specialized procedures, the ITC resolves disputes quickly and issues remedial orders enforced at U.S. ports of entry by U.S. Customs and Border Protection (CBP) agents.
Perkins Coie is nationally recognized as one of the most active law firms at the ITC. At the same time, the firm is ranked among the best performing firms for complainants and respondents, including a #1 ranking for its representation of respondents and a #3 ranking for the best performing law firm overall between 2016 – 2022, and a #1 ranking for its representation of complainants at the ITC between 2014 – 2019. We achieve this consistency in outstanding results for our clients by offering an experienced, nationally recognized team of lawyers who are repeat players at the ITC. Perkins Coie has a deep bench in every technical discipline, including Ph.D.s, professional engineers, and former industry professionals who draw on their technology experience and combine it with extensive knowledge of patent law, litigation, and the ITC’s unique rules and procedures.
The Perkins Coie ITC team includes:
- Three litigators who are identified in Chambers USA for their accomplishments in Section 337 investigations.
- A litigator who is nationally ranked as second-best performing ITC attorney between 2014-2019, out of more than 7,500 ITC practitioners who worked on investigations in that time period.
- Another trial attorney with experience in over 30 ITC investigations, who was nationally recognized for the unique litigation tactics employed to prevail in a major ITC action.
Perkins Coie has been involved in several landmark investigations at the ITC, such as when our lawyers (1) litigated the first “100-day” investigation instituted by the ITC; (2) represented two parties in the ITC’s largest investigation that resulted in the U.S. Court of Appeals for the Federal Circuit’s Kyocera decision, which changed the law concerning downstream products; (3) defended the respondents in an ITC litigation that marked the start of the so-called smartphone wars; and (4) obtained a rare delay in the effective date of an ITC remedial order.
Learn More About Perkins Coie's ITC Team
The ITC Offers Fast and Powerful Remedies
The ITC is an increasingly popular venue for intellectual property rights enforcement. Under 19 U.S.C. § 1337 (Section 337), the ITC conducts investigations and provides relief for intellectual property rights holders by barring the importation or sale after importation of goods that infringe upon a utility patent, design patent, trademark, or copyright, or goods that are made using misappropriated trade secrets.
Section 337 authorizes the ITC to investigate a wide variety of unfair methods of competition and unfair acts in the importation of goods. At the conclusion of a Section 337 investigation, the ITC can issue an exclusion order barring goods from being imported into the United States and prohibiting sales of existing inventories of imported goods in the United States, requiring their destruction or removal from the country.
An exclusion order is a unique and powerful remedy that poses a daunting problem for foreign manufacturers, who risk losing access to the U.S. market, and for domestic importers and sellers, who risk a disruption of their supply of goods found to infringe. Moreover, the ITC can issue a general exclusion order barring all products from any source. As such, Section 337 investigations are often “bet-the-company” litigations for respondents.
Section 337 investigations are fast paced, with evidentiary hearings (trials) occurring seven to nine months after an investigation is instituted, as detailed in our exemplary timeline of a Section 337 investigation. Developments in patent law over the last several years have made litigation in U.S. district courts less attractive for patent owners, and it renewed interest in the ITC as the venue of choice in the United States for asserting IP rights.
The exclusion order remedy is enforced by agents of the U.S. Customs and Border Protection (CBP) at U.S. ports of entry. Violations of an exclusion order are addressed by the ITC in an enforcement proceeding. Requests to import goods that design-around the intellectual property in an exclusion order are addressed by the CBP under 19 C.F.R. § 177 (often referred to as Rule 177 proceedings), or by the ITC in an advisory opinion proceeding that can last from a few weeks to several months.
Navigating Complainants and Respondents Through ITC Investigations
Perkins Coie attorneys have represented complainants and respondents in Section 337 investigations, including large and small companies, and U.S. and foreign litigants. As explained above, the collective experience of our team spans dozens of investigations, allowing us to provide clients with guidance on the intricacies of ITC law and procedure, from filing of the complaint through appeals to the Federal Circuit, and in proceedings before CBP. Our team includes practitioners in Washington D.C., and our other offices across the United States and in Asia.
Leveraging Award-Winning IP and Appellate Practice Experience
Our Section 337 team is part of our Intellectual Property practice consisting of over 275 attorneys—130 with degrees in electrical engineering (EE) or computer science (CS), including 15 Ph.D.s, as well as 30 with degrees in life science fields, including 12 Ph.D.s. We have the experience and resources to handle Section 337 investigations in a wide range of technical fields, including semiconductors, electronics, networking equipment, pharmaceuticals, medical devices, bioengineering, and chemical sciences.
Our team also leverages the firm’s core competencies in a variety of areas, including patent litigation, inter partes review patent validity challenges before the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), Federal Circuit appeals, district court litigations, and others.
150+ REGISTERED USPTO PRACTITIONERS
120+ EXPERIENCED PATENT LITIGATORS
130+ ADVANCED DEGREES IN EE/CS RELATED TECHNOLOGIES INCLUDING 15 PH.D.S
30+ ADVANCED DEGREES IN LIFE SCIENCES INCLUDING 12 PH.D.S
Recognition of these complementary appellate, litigation, and patent invalidity challenge practices include the following:
- Named a finalist by The American Lawyer in their Intellectual Property “Litigation Department of the Year,” 2021 and 2019.
- Named by Law360 as an Intellectual Property "Practice Group of the Year" in 2019.
- Named in The National Law Journal’s 2021 Appellate Hot List, an annual list of law firms that have won key matters before the U.S. Supreme Court and federal courts of appeals.
- Ranked nationally for patent litigation in the United States and in China by Managing IP
- Ranked ninth most active law firm in the country for inter partes reviews over the last five years, in Patexia’s 2021 IPR Intelligence Report.
- Named “Law Firm of the Year – Patent Law” by U.S. News Best Lawyers®, 2020, 2018, 2014, 2013—more times than any other firm.
- Law360 named Perkins Coie as one of the “Firms That Dominated the Federal Circuit” three years in a row, ranking number one for win percentage (85%) and third in total victories in 2018.
- Ranked nationally for Post-Grant Proceedings by Managing Intellectual Property as one of the top five law firms representing PTAB petitioners in 2018.
- Ranked sixth in "Top Law Firms Representing Patent Owners" before USPTO PTAB in 2016.
- Ranked seventh in “Most Active Firms for Petitioners” before USPTO PTAB in 2019 Lex Machina Patent Litigation Report.
- Ranked fourth most active national law firm for patent litigation defense cases in the past decade and in the top ten most active firms for post-grant proceedings since the PTAB’s inception.
- Named by Law360 as one of the “Firms That Dominated the Federal Circuit” in 2017 and 2016.
- Named by Law360 as an appellate "Practice Group of the Year" in 2018.
- Ranked third by Lex Machina nationally, in 2016 and 2017, among “Firms That Landed The Most Patent Defense Suits Last Year.”
- Ranked second among national law firms handling the most patent defense cases in 2020 by Lex Machina’s Patent Litigation Report.
- Ranked fifth by Lex Machina nationally in “Most Active Defendants Law Firms in 2018.”
- Ranked by Docket Navigator as one of the top ten law firms handling post-grant proceedings in 2018.
- Ranked as the leading patent litigation firm for technology cases in 2022 by Docket Navigator.
- Recognized in multiple years by Docket Navigator among the top 10 law firms representing parties in IPR, Covered Business Method Patent (CBM) and Post Grant Review (PGR) proceedings before the USPTO PTAB.
Recommended for Chinese Complainants and Respondents
In 2021, the Ministry of Commerce of the People’s Republic of China (MOFCOM) once again selected Perkins Coie as one of a handful of U.S. firms recommended to provide legal consultation in relation to Section 337 investigations and related legal issues. Perkins Coie has Mandarin-speaking lawyers and business professionals, and our offices in China are available to provide on-the-ground support for Chinese litigants, including patent analysis and e-discovery services.
Practical Representation Focused on Client Business Objectives
Intellectual property rights holders considering relief under Section 337, and companies accused of violating Section 337, need knowledgeable counsel to navigate the complex issues, short time frames, and high stakes associated with these investigations. Our team of veteran litigators work to achieve our clients’ business objectives in a cost-effective manner.
Our Team
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Awards and Recognition
- Ranked first in “Best Performing Law Firm for Respondents” and third in “Best Performing ITC Law Firm Overall” in the 2022 ITC Intelligence Report by Patexia, Inc.
- #1 Best Performing ITC Law Firm for Representing Respondents, for the second consecutive year.
- #6 Best Performing ITC Law Firm Overall (#4 when ITC local counsel firms excluded)
- #4 Most Active ITC Law Firm for Representing Respondents
- #7 Most Active ITC Law Firm Overall
Insights
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Professional Experience
ITC Litigation Experience
In the Matter of Certain Electronic Devices Having Wireless Communication Capabilities and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1284
Defending respondents TCL Electronics Holdings Ltd. f/k/a TCL Multimedia Technology Holdings Ltd.; TCT Mobile (US) Inc. and TTE Technology, Inc.; HMD Global Oy; and HMD America, Inc. in a four-patent investigation before ALJ Shaw involving wireless devices. Investigation terminated as to HMD respondents because complainant withdrew the complaint; investigation pending as to TCL respondents.
In the Matter of Certain Capacitive Touch Sensing Systems, Capacitive Touch Sensing Controllers, Microcontrollers With Capacitive Touch Sensing Functionality, and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1268
Defended respondents STMicroelectronics, Inc.; STMicroelectronics (North America) Holdings, Inc.; and STMicroelectronics NV, in a four-patent investigation before Chief ALJ Cheney concerning capacitive touch sensing devices. Settled favorably prior to the hearing.
In the Matter of Certain Portable Battery Jump Starters and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1256
Defending respondents Shenzhen Carku Technology Co., Ltd.; 70mai Co., Ltd.; Antigravity Batteries LLC; Gooloo Technologies LLC; Great Neck Saw Manufacturers, Inc.; Horizon Tool, Inc.; Matco Tools Corporation; Nekteck, Inc.; Paris Corporation; PowerMax Battery (U.S.A.), Inc.; and Shenzhen Gooloo E-Commerce Co., Ltd. in a two-patent investigation before ALJ Shaw concerning portable vehicle jump-start devices. Initial determination of no violation based on noninfringement and no technical domestic industry; pending.
In the Matter of Certain Polycrystalline Diamond Compacts and Articles Containing Same, U.S. International Trade Commission Investigation No. 337-TA-1236
Defended respondents Element Six Abrasives Holdings, Ltd.; Element Six Global Innovation Centre; Element Six GmbH; Element Six Hard Materials (Wuxi) Co., Ltd.; Element Six Limited; Element Six Production (Pty) Limited; Element Six Technologies U.S. Corporation; Element Six Trading (Shanghai) Co. Limited; and Element Six U.S. Corporation in a five-patent investigation before ALJ Elliot concerning polycrystalline diamond compacts (PDCs) for drilling applications. Settled favorably prior to the hearing.
In the Matter of Certain Digital Video-Capable Devices and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1224
Defended respondents TCL Electronics Holdings Ltd. f/k/a TCL Multimedia Technology Holdings Ltd.; TCL Industries Holdings Co., Ltd.; TCL King Electrical Appliances (Huizhou) Company Ltd.; TCL MOKA International Ltd.; TCL Moka Manufacturing, SA de CV; TCL Smart Device (Vietnam) Company, Ltd.; and TTE Technology, Inc. in a four-patent investigation before ALJ Elliot concerning alleged secure authenticated distance measurement in television devices. Initial determination of no violation of Section 337 after evidentiary hearing; the Commission affirmed the initial determination of no violation, terminating the investigation in favor of TCL.
In the Matter of Certain Electronic Candle Products and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1212
Defended respondents Shenzhen Liown Electronics Company, Ltd.; L&L Candle Company LLC; and Luminara Worldwide, LLC in a four-patent investigation before ALJ Elliot involving electronic candle technology. Settled on favorable terms.
In the Matter of Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1200
Defended TCL respondents in a six-patent investigation before ALJ Elliot involving video streaming technology that was terminated when the complainant withdrew the claims asserted against our clients.
In the Matter of Certain Portable Gaming Console Systems With Attachable Handheld Controllers and Components Thereof II, U.S. International Trade Commission Investigation No. 337-TA-1197
Counsel for respondents Nintendo Co., Ltd. and Nintendo of America Inc. in a one-patent investigation before ALJ Shaw concerning game console systems. Initial determination of no violation of Section 337 after the evidentiary hearing; the Commission affirmed the initial determination of no violation, terminating the investigation in favor of Nintendo; appeal to the Federal Circuit voluntarily dismissed by Gamevice, terminating the appeal.
In the Matter of Certain Electronic Candle Products and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1195
Representing complainants L&L Candle Company LLC and Sotera Tschetter, Inc. in a five-patent investigation before ALJ Lord involving electronic candle technology to obtain a general exclusion order against multiple respondents, obtained favorable settlements and consent orders as to multiple respondents; the investigation is still pending as to defaulting respondents.
In the Matter of Certain Touch-Controlled Mobile Devices, Computers, and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1162
Defended respondents Dell Inc., Dell Products LP, and Dell Technologies Inc in a four-patent investigation before ALJ Elliot involving smartphones and tablets; settled on favorable terms.
In the Matter of Certain Semiconductor Devices, Integrated Circuits, and Consumer Products Containing the Same, U.S. International Trade Commission Investigation No. 337-TA-1149
Served as counsel for respondents TCL Corporation, Inc. and TCT Mobile (US) Inc. in a five-patent investigation before ALJ Cheney concerning semiconductors and the consumer devices containing those semiconductors; investigation as to TCL and TCT terminated because the complaint was withdrawn.
In the Matter of Certain Movable Barrier Operation Systems and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1118
Defending respondents Nortek Security & Control, LLC, Nortek, Inc., and GTO Access Systems, LLC in a three-patent investigation before ALJ McNamara concerning automatic garage and gate openers; initial determination of no violation of Section 337 by all represented respondents after a four-day ITC trial; pending.
In the Matter of Certain Carburetors and Products Containing Such Carburetors, U.S. International Trade Commission Investigation No. 337-TA-1123
Defended respondent Ardisam, Inc. in a six-patent investigation before Chief ALJ Bullock concerning carburetors for use in small or utility gasoline engines. The investigation was terminated when Adrisam agreed to a consent order to stop importation of discontinued products allowing for continued importation of “design around” devices.
In the Matter of Certain Portable Gaming Console Systems With Attachable Handheld Controllers and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-1111
Defended respondents, Nintendo Co., Ltd. and Nintendo of America Inc., in a two-patent investigation before ALJ Cheney (later reassigned ALJ Shaw) concerning game console systems. After a favorable claim construction order, an unopposed motion of summary determination of non-infringement was granted, resulting in an initial determination of no violation of Section 337; the Commission affirmed the initial determination of no violation, terminating the investigation in favor of Nintendo. The matter is on appeal.
In the Matter of Certain Multi-Domain Test and Measurement Instruments, U.S. International Trade Commission Investigation No. 337-TA-1104
Served as counsel for complainant Tektronix, Inc. in a two-patent investigation before ALJ Cheney concerning multi-domain test and measurement instruments; investigation terminated when opposing party agreed to a consent order to stop importation of accused products.
In the Matter of Certain Microperforated Packaging Containing Fresh Produce, U.S. International Trade Commission Investigation No. 337-TA-1096
Defending Apio, Inc. in a one-patent investigation before ALJ Shaw relating to produce packaging. The investigation was terminated as a result of a favorable settlement.
In the Matter of Integrated Circuits With Voltage Regulators and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-1024
Served as counsel for multiple respondents in a one-patent investigation before Chief ALJ Bullock concerning high-frequency switching semiconductor technology, including voltage regulating integrated circuits with voltage spike protection.
In the Matter of Certain Quartz Slabs and Portions Thereof (Ii), U.S. International Trade Commission Investigation No. 337-TA-1017
Served as counsel for respondent Pental Granite and Marble, Inc. in a five-design patent investigation before ALJ McNamara relating to quartz slabs used in surfaces such as countertops. Investigation ended when the complainant withdrew its complaint.
In the Matter of Certain Passenger Vehicle Automotive Wheels, U.S. International Trade Commission Investigation No. 337-TA-1006
Defended Amazon.com, Inc. in a 22-design patent and 30-trademark investigation before ALJ Pender concerning passenger vehicle wheels. Investigation terminated based on settlement.
In the Matter of Certain Rack Mountable Power Distribution Units, U.S. International Trade Commission Investigation No. 337-TA-980
Served as counsel for complainant Server Technology, Inc. in an investigation against competitor before ALJ Essex that prompted a global settlement, including other pending litigation between the parties.
In the Matter of Certain Touchscreen Controllers and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-957
Defended respondents Shenzhen Huiding Technology Co., Ltd. (d.b.a. Goodix) and Goodix Technology Inc. in a four-patent investigation against competitor Synaptics before ALJ Essex concerning touchscreen controllers used in smartphones. The ITC case was settled favorably after post-hearing briefs before the ITC. At the time of settlement, the OUII recommended a finding of no violation (no liability by Goodix) because the asserted patents were invalid. Successfully implemented IPR strategies for Goodix on the asserted patents at PTAB to secure timely PTAB institution decisions on at least all asserted claims in favor of our client Goodix before the ITC trial. At the time of settlement, five IPR trials were instituted and four additional IPR petitions were awaiting institution decisions.
In the Matter of Certain Audio Processing Hardware and Software and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-949
Represented nonparties Fortress Investment Group LLC and AND34 Funding LLC in a five-patent investigation before ALJ Pender concerning processing audio signals to avoid interference in tablets, desktops, and laptops. The Commission selected the investigation for the second ever 100-Day Pilot Program to determine within 100 days whether complainant had standing to sue or if the investigation should be immediately terminated for failure to include Fortress Investment Group LLC or AND34 Funding LLC as additional complainants. The ALJ found that complainant had standing to sue.
In the Matter of Certain Laser Abraided Denim Garments, U.S. International Trade Commission Investigation No. 337-TA-930*
Defended American Eagle Outfitters, Inc. in a six-patent investigation before Chief ALJ Bullock concerning denim garments that have been laser abraded to give a worn appearance.
In the Matter of Certain Multiple Mode Outdoor Grills and Parts Thereof, U.S. International Trade Commission Investigation No. 337-TA-895
Represented respondents Academy Ltd. and Ningbo Huige Outdoor Products Co., Ltd. in a one-patent, two-design patent investigation before ALJ Shaw concerning multiple mode barbeque grills.
In the Matter of Certain Point-To Point Network Communication Devices and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-892
Represented respondents Netflix and AmTRAN in a three-patent investigation before ALJ Shaw concerning Smart TVs, blu-ray players, and other devices and software involved in point-to-point communication and content delivery networks. Just prior to trial, complainant Straight Path IP Group, Inc. withdrew its complaint and dropped its allegations in the ITC action in their entirety.
In the Matter of Products Having Laminated Packaging, Laminated Packaging and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-874
Represented Hasbro in a two-patent investigation before ALJ Essex in the first investigation in which the ITC used its new pilot program and held an early hearing on whether a domestic industry exists. The ALJ held that there was no domestic industry, and the full Commission affirmed and terminated the action. The matter settled on appeal.
In the Matter of Certain Sintered Rare Earth Magnets, Methods of Making Same and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-855
Defended Allstar Magnetics in a four-patent investigation before ALJ Bullock relating to magnets used in consumer electronics devices. The investigation was terminated as a result of settlement.
In the Matter of Certain Electronic Imaging Devices, U.S. International Trade Commission Investigation No. 337-TA-850
Defended HTC in a four-patent investigation before ALJ Essex relating to smartphones, including the chipsets, user interface, and software used in those smartphones. The patents at issue were owned by FlashPoint Technology, Inc., a non-practicing entity founded in 1996 as a spinoff of Apple Computer, Inc. In the ITC’s final ruling, HTC was cleared of all patent infringement allegations, and FlashPoint chose not to appeal the decision.
In the Matter of Certain Products Containing Interactive Program Guide and Parental Control Technology, U.S. International Trade Commission Investigation No. 337-TA-845
Defended Netflix and Roku in a seven-patent investigation before ALJ Shaw relating to software used to stream video content into customers' homes for display on televisions and computers. Netflix and Roku were each cleared of patent infringement claims brought by Rovi Corp. and its subsidiaries by the ALJ, and the Commission largely affirmed that determination.
In the Matter of Certain Drill Bits and Products Containing the Same, U.S. International Trade Commission Investigation No. 337-TA-844
Represented complainant Boart Longyear in a three-patent investigation before ALJ Rogers relating to drill bits used in core drilling applications. The investigation was terminated when the respondent affirmed that it was no longer importing the patented drill bits into the United States.
In the Matter of Certain Consumer Electronics, Including Mobile Phones and Tablets, U.S. International Trade Commission Investigation No. 337-TA-839
Defended ASUS in a five-patent investigation before ALJ Gildea, brought by patent assertion entity Pragmatus, directed to smartphones, televisions, and tablets. The investigation was terminated as a result of settlement.
In the Matter of Certain Consumer Electronics and Display Devices and Products, U.S. International Trade Commission Investigation No. 337-TA-836
Defended HTC in a four-patent investigation before ALJ Essex, brought by patent assertion entity against Graphic Properties Inc., directed to smartphones, including the CPU architecture, floating point rasterization, and framebuffering in graphics processing units, and large-area, wide aspect ratio, flat-panel technologies. The effective use of statements made by the patent owner during IPR proceedings helped to limit the scope of the claims. The matter was terminated as a result of settlement.
In the Matter of Certain Mobile Electronic Devices Incorporating Haptics, U.S. International Trade Commission Investigation No. 337-TA-834
Defended HTC in a six-patent investigation before ALJ Gildea relating to mobile devices incorporating haptics technologies. HTC developed, imported, and introduced into the investigation design-around products. The patent owner, Immersion Corporation, voluntarily withdrew its complaint just weeks before trial.
In the Matter of Certain Portable Electronic Devices and Related Software, U.S. International Trade Commission Investigation No. 337-TA-797
Defended HTC in a six-patent investigation before ALJ Gildea relating to hardware and software used by smartphones and tablets. Dismissed as a result of settlement after the hearing.
In the Matter of Certain Motion-Sensitive Sound Effects Devices and Image Display Devices and Components and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-773
Defended Planar Systems, Inc. in a two-patent investigation before ALJ Gildea relating to image display systems. Dismissed as a result of settlement.
In the Matter of Certain Semiconductor Chips and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-753
Defended Broadcom in a six-patent investigation before ALJ Essex relating to DDRx memory controller products and peripheral interface products. The investigation was terminated as a result of the settlement shortly after the hearing.
In the Matter of Certain Turbomachinery Blades, Engines, and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-751
Represented third-party in a one-patent investigation before ALJ Bullock covering commercial jet engine technology in which it was argued that any remedy imposed on the respondent would be void as contrary to the public interest due to its effect on the public, including third-party Boeing. The investigation was terminated based on settlement.
In the Matter of Certain Electronic Imaging Devices, U.S. International Trade Commission Investigation No. 337-TA-726
Defended HTC in an investigation before Chief ALJ Luckern in which FlashPoint Technology, Inc., a spinoff from Apple, asserted that all of HTC’s (and most of the rest of the smartphone market’s) Android and Windows-based phones infringed three patents, relating primarily to digital imaging functionality and device capability querying technologies. Almost all respondents, including Nokia and RIM, settled before the trial. Chief ALJ Luckern found that none of the asserted patents were infringed, FlashPoint failed to prove a domestic industry for its patents, and one of Flashpoint’s patents was invalid. The Commission affirmed, and the Federal Circuit issued a summary affirmance less than a week after oral arguments. The Financial Times recognized the representation of HTC in this investigation as a “Standout in Intellectual Property” in its publication of U.S. Innovative Lawyers 2012, dated November 29, 2012.
In the Matter of Certain Personal Data and Mobile Communication Devices and Related Software, U.S. International Trade Commission Investigation No. 337-TA-710
Defended HTC in an investigation before ALJ Charneski in which Apple initially asserted that HTC smartphones infringed 10 patents relating to operating systems software and software and techniques by which a user interacts with a touch-screen. Obtained a favorable outcome when Apple was forced to withdraw its claims on six of those patents before a verdict was reached on them. Of the remaining four patents, the ALJ found two not infringed (and the Commission affirmed) and two infringed (and the Commission affirmed for one and reversed for the other).
In the Matter of Certain Welding Wire Containers and Welding Wire, U.S. International Trade Commission Investigation No. 337-TA-686
Represented Lincoln Global, Inc. and The Lincoln Electric Company in a seven-patent investigation before ALJ Rogers relating to welding wire containers and welding wire.
In the Matter of Certain Flash Memory and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-685
Defended Synology in a two-patent investigation before ALJ Charneski relating to flash memory chips.
In the Matter of Certain Collaborative System Products and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-682*
Defended QOMO HiteVision, LLC in a one-patent investigation before ALJ Gildea relating to wireless devices.
In the Matter of Certain Electronic Devices, Including Handheld Wireless Communication Devices, U.S. International Trade Commission Investigation No. 337-TA-667
Defended HTC in a three-patent investigation before ALJ Rogers relating to performance and power management in semiconductors used in wireless communication devices. Dismissed as a result of settlement.
In the Matter of Certain Cold Cathode Fluorescent Lamp Inverter Circuits and Products Containing the Same, U.S. International Trade Commission Investigation No. 337-TA-666*
Defended Monolithic Power Systems and ASUS in a four-patent investigation before ALJ Gildea relating to products implementing inverter circuits. Subsequently withdrew as counsel.
In the Matter of Certain Tunable Laser Chips, Assemblies and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-662*
Defended Syntune AB and Cyoptics in a two-patent investigation before Chief ALJ Luckern relating to tunable semiconductor lasers and laser assemblies. Case settled favorably.
In the Matter of Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-661*
Defended ASUS in a nine-patent investigation before ALJ Essex relating to products incorporating NVIDIA memory controllers, and DDR2 and DDR3 memory.
In the Matter of Certain Automotive Multimedia Display and Navigation Systems, Components Thereof, and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-657*
Defended Alpine Electronics and Alpine Electronics of America in six-patent investigation relating to global positioning systems and vehicle navigation systems. Case settled favorably prior to the hearing.
In the Matter of Certain Rubber Antidegradants, Components Thereof, and Products Containing Same I, U.S. International Trade Commission Investigation No. 337-TA-652*
Represented complainant Flexsys America, L.P. in a two-patent investigation before CALJ Luckern relating to rubber antidegradant additives for products such as vehicle tires.
In the Matter of Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-630
Defended SMART Modular Technologies in a three-patent investigation before ALJ Essex relating to semiconductor packaging. The Commission held that SMART Modular Technologies and other respondents did not infringe Tessera's patents.
In the Matter of Certain Computer Products, Computer Components and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-628*
Defended ASUS in a three-patent investigation before ALJ Essex relating to products implementing power supplies, variable speed fans, and Network Address Port Translation; won at trial and initial determination of no infringement. Commission decided not to review initial determination, which became the final determination. The case subsequently settled favorably. The American Lawyer favorably recognized the representation of ASUS in this investigation when selecting finalists for Litigation Department of the Year 2010.
In the Matter of Certain Probe Card Assemblies, U.S. International Trade Commission Investigation No. 337-TA-621*
Represented Micronics Japan Company and its U.S. subsidiary in a six-patent investigation before ALJ Bullock relating to probe cards. A hearing was held after all of the patents asserted against Micronics were either invalid or not infringed. The Commission upheld Judge Bullock's initial determination.
In the Matter of Certain Flash Memory Controllers, Drives, Memory Cards, and Media Players and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-619*
Defended several companies in a five-patent investigation before ALJ Bullock relating to flash memory controllers and devices.
In the Matter of Certain Ground Fault Circuit Interrupters and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-615
Defended Wenzhou Trimone in three-patent investigation before ALJ Charneski relating to GFCI technology.
In the Matter of Certain Dynamic Random Access Memory Devices and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-595*
Defended Samsung in a two-patent investigation before ALJ Essex relating to on-die termination and driver circuits for DDR2 SDRAM memory devices and phase-shift masks used in the fabrication of DDR1 and DDR2 SDRAM memory devices. Staff concurred with non-infringement and invalidity of asserted patents. The case settled favorably 2 days before the initial determination was to be issued.
In the Matter of Certain and Flash Memory Devices and Components Thereof, U.S. International Trade Commission Investigation No. 337-TA-592*
Defended Hynix Semiconductor in a two-patent investigation before ALJ Luckern relating to flash memory devices. Case settled favorably.
In the Matter of Certain Wireless Communication Devices, Components Thereof, and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-583*
Represented patent owner in a nine-patent investigation before ALJ Bullock relating to wireless communication devices, including cell phones and base stations. The patents concerned hardware and software for UMTS (i.e., 3G or WCDMA) wireless telecommunication devices, including wireless infrastructure equipment, cellular telephones and error-control coding. The investigation was terminated as a result of settlement.
In the Matter of Certain Wireless Communication Equipment, Articles Therein, and Products Containing the Same, U.S. International Trade Commission Investigation No. 337-TA-577*
Defended a client in multipatent investigation before ALJ Luckern relating to wireless communication devices, including cell phones and base stations. The patents concerned hardware and software for UMTS (3G or WCDMA) wireless telecommunication devices including wireless infrastructure equipment, cellular telephones, and error-control coding. The investigation was terminated as a result of settlement.
In the Matter of Certain Portable Digital Media Players, U.S. International Trade Commission Investigation No. 337-TA-576*
Defended company in "slap back" litigation brought by opposing party involving the same technologies as related ITC action (No. 337-TA-573). Dismissed as a result of settlement.
In the Matter of Certain Portable Digital Media Players, U.S. International Trade Commission Investigation No. 337-TA-573*
Defended a client in litigation before ALJ Luckern brought by Creative Labs, Inc. and Creative Technology Ltd., relating to portable digital media (music) players. The investigation was terminated as a result of settlement.
In the Matter of Certain Flash Memory Chips, Flash Memory Systems, and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-570
Defended Micron Technology and co-counsel for its subsidiary, Lexar Media, in a three-patent investigation before ALJ Barton relating to flash memory controller chips. Dismissed as a result of settlement.
In the Matter of Certain Flash Memory Devices and Components Thereof, and Products Containing Such Devices and Components, U.S. International Trade Commission Investigation No. 337-TA-552*
Defended Hynix Semiconductor in a three-patent investigation before ALJ Luckern, relating to circuit- and process- related patents allegedly involving NAND flash memory devices, against complainant widely perceived to be a pioneer in NAND flash memory with widely licensed memory portfolio. Won at trial and initial determination and then case subsequently settled favorably.
In the Matter of Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, Including Cellular Telephone Handsets, U.S. International Trade Commission Investigation No. 337-TA-543*
Represented Motorola in the remedy phase of five-patent investigation before ALJ Bullock relating to systems and chipsets for wireless communications. This investigation was recognized as one of the largest in the history of the ITC and resulted in the Federal Circuit’s Kyocera decision, which precluded the ITC from issuing remedies directed to unnamed downstream product manufacturers and importers.
In the Matter of Certain Power Supply Controllers and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-541*
ITC found infringement and entered an order excluding the accused products and certain downstream products incorporating them from the United States. Successfully represented Power Integrations on appeal and secured a summary affirmance of the ITC decision.
In the Matter of Certain Audio Processing Integrated Circuits, U.S. International Trade Commission Investigation No. 337-TA-538*
Represented patent owner SigmaTel in a two-patent investigation against Actions Semiconductor Co. before ALJ Luckern relating to audio processing integrated circuits and products containing the same, such as MP3 players.
In the Matter of Certain Optical Disk Controller Chips and Chipsets and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-523*
Defended MediaTek in a three-patent investigation before ALJ Barton relating to disk drive controller circuit technology.
In the Matter of Voltage Regulator Circuits, Components Thereof and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-521
Defended Monolithic Power Systems in a two-patent investigation before ALJ Harris relating to voltage regulator circuits. Dismissed as a result of settlement.
In the Matter of Certain Systems for Detecting and Removing Viruses or Worms, U.S. International Trade Commission Investigation No. 337-TA-510
Defended Fortinet in a one-patent investigation before ALJ Luckern relating to a computer system for the detection and removal of viruses and worms.
In the Matter of Home Vacuum Packaging Machines, U.S. International Trade Commission Investigation No. 337-TA-496
Represented Complaints Tilia, Inc. and Tilia International, Inc. in a one-patent investigation relating to vacuum packaging. Dismissed as a result of settlement.
In the Matter of Certain Zero-Mercury-Added Alkaline Batteries, U.S. International Trade Commission Investigation No. 337-TA-493*
Defended Chinese company in one-patent investigation before ALJ Bullock relating to zero-mercury-added alkaline batteries.
In the Matter of Certain Display Controllers and Products Containing the Same, U.S. International Trade Commission Investigation No. 337-TA-491*
Defended MStar Semiconductor in three-patent investigation before ALJ Terrill relating to flat-panel display controller technology.
In the Matter of Certain Agricultural Tractors, U.S. International Trade Commission Investigation No. 337-TA-486*
Represented complainant New Holland in a trade dress infringement investigation before ALJ Harris, brought against foreign importer of agricultural tractors. Litigation resulted in the issuance of a limited exclusion order.
In the Matter of Certain Set Top Boxes and Components Therein, U.S. International Trade Commission Investigation No. 337-TA-454*
Represented Gemstar in a four-patent investigation before ALJ Luckern relating to core television technologies, including interactive program guides and set-top box electronics. Adverse final determination reversed on appeal to Federal Circuit. The case subsequently settled favorably.
In the Matter of Certain CMOS Active Pixel Image Sensors and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-451*
Defended Photobit, OmniVision Technologies, and Caltech in a three-patent investigation before ALJ Luckern relating to CMOS active pixel sensors. Case settled favorably prior to trial.
In the Matter of Certain Cesulfame Potassium and Blends and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-403*
Represented German manufacturer of high potency sweetener Acesulfame K (found in Pepsi One) in a two-patent investigation before ALJ Harris against Chinese manufacturer. No infringement found.
In the Matter of Certain Integrated Circuits and Products Containing Same; Certain Sdrams, Drams, Asics, Ram and Logic Chips, Microprocessors, Microcontrollers, Processes for Manufacturing Same and Products Containing Same, U.S. International Trade Commission Investigation No. 337-TA-402 and -404*
Assisted Fujitsu's case teams in concurrent investigations before ALJ Luckern relating to a total of four patents. Performed patent analysis that led to withdrawal of patent by complainant Samsung before the evidentiary hearing. Following the hearing, the parties settled on terms favorable to Fujitsu.
* Prior Experience
Case Study: Pursued a Litigation Strategy Recognized by the Financial Times
Client:
Asian Based Smartphone and Tablet Manufacturer
Issue:
An entity spun off from Apple, Inc. known as FlashPoint Technology, Inc. accused our client’s smartphones of patent infringement. Our client had to choose between paying a substantial settlement for a license, as others had done earlier in the litigation, or taking the case to trial to avoid an infringement finding and an ITC order excluding our client’s entire line of smartphone products from the U.S. market.
Challenge:
Perkins Coie needed to leverage the experience of a talented but small litigation team to defeat allegations of infringement at the ITC while remaining within the client’s tight budget.
Solution:
We identified the strengths and weaknesses of the asserted patents and remained within the budget by using a small team and litigating only those issues that had the best chance of success. Specifically, we focused on certain claim limitations, license defenses and a very limited number of invalidity defenses.
Immediately prior to the hearing, FlashPoint dropped one of its three asserted patents, and we established that a second patent was invalid in view of the on-sale bar provision of 35 U.S.C. § 102(b). We further established that our client had a license with respect to accused products that utilized Windows operating systems, based on agreements entered into between FlashPoint and Apple, and between Apple and Microsoft. Finally, we defeated FlashPoint’s allegations that the third asserted patent was infringed. FlashPoint appealed to the U.S. Court of Appeals for the Federal Circuit, and we worked closely with the ITC’s Office of the General Counsel to sustain the ITC’s decision, which was upheld without comment by the Federal Circuit just after oral arguments.
Perkins Coie’s successful, value-driven approach in this case was highlighted as an exemplar in the Financial Times’ U.S. Innovative Lawyers 2013 report.
Case Study: First Delay in an Exclusion Order
Client:
Asian Based Smartphone and Tablet Manufacturer
Issue:
When our client was accused of infringing multiple claims from 10 patents asserted by Apple at the ITC, the company faced the potential exclusion of its entire line of smartphone and tablet products from the U.S. market.
Challenge:
It was critical to develop a backup plan to allow the continued importation of our client’s products without disruption of the supply chain in the event of a finding of infringement and the issuance of an ITC exclusion order.
Solution:
Perkins Coie identified the patents and claims that were at risk of being found infringed by the ITC and developed design around alternatives by modifying the accused features of our client’s products based on Apple’s infringement and invalidity arguments.
We communicated with attorneys at U.S. Customs, which is charged with enforcing exclusion orders issued by the ITC, to determine the type of evidence they find most persuasive when approving design around devices for importation. U.S. Customs attorneys explained that testimony from the opposing expert was the most persuasive. At the hearing, we solicited helpful testimony from Apple’s expert relating to the design around devices without disclosing our intentions to Apple.
On a separate track, we successfully argued that the ITC should delay any remedial orders by three months, on public interest grounds, to minimize the harm to third-party cellular carriers and service providers. This first-ever delay of an ITC exclusion order for our client based on public interest considerations in a decision, Inv. No. 337-710, is routinely cited by others seeking similar relief. With the extra time, we were able to obtain approval for our client to import a design around alternative without disrupting its supply chain.
When the ITC found infringement of two Apple patents, we quickly submitted our design around device plan to U.S. Customs for approval, along with the testimony from Apple’s expert, so that our client could import devices containing the design around when the ITC’s remedial orders became effective. Once the design around was approved by U.S. Customs, there ultimately was no impact on our client’s ability to continue importing phones incorporating the design around to the United States.
Case Study: First “100-Day” ITC Hearing
Client:
Multinational Toy Company
Issue:
When our client was accused of patent infringement at the ITC by a non-practicing entity (NPE), the presiding administrative law judge (ALJ) was instructed to conduct the first-of-its-kind, 100-day hearing to determine within 100 days whether the economic requirements of a domestic industry existed with respect to the asserted patents or if the investigation should be immediately terminated.
The 100-day hearing procedure was created by the ITC as way to quickly address ITC complaints that appeared to lack substantial merit with respect to the domestic industry economic requirement or other issues.
Challenge:
The ALJ adopted a dual-track procedural schedule to reach a determination on the domestic industry issue within 100 days while maintaining the longer-term deadlines on other substantive issues if he ruled in favor of the patent owner.
As a result, Perkins Coie had to develop a plan to quickly conduct discovery, draft briefs, prepare witnesses and participate in an early hearing limited to domestic industry issues while staying on track to litigate other issues, such as non-infringement and invalidity if the matter proceeded to its conclusion. Because the 100-day hearing procedure had not been used previously, several unexpected issues arose relating to the application of the ALJ’s ground rules and whether claim construction was a necessary part of the 100-day hearing process.
Solution:
Perkins Coie persuaded the ALJ to waive several of his ground rules in order to complete expedited discovery on domestic industry issues, including discovery from third parties. We also convinced him to reject the NPE’s assertion that a costly claim construction determination was necessary to render the 100-day decision relating to the economic elements of a domestic industry. We divided up responsibilities among the Respondents, completed the necessary long- and short-term discovery tasks, and prepared expert and fact witnesses for the hearing.
After the hearing, and within the 100-day schedule mandated by the ITC, the ALJ determined that there was no economic domestic industry as to the asserted patents. However, he also ruled that the ITC lacked the procedural authority to conduct a 100-day hearing without engaging in new rule-making procedures first. We successfully convinced the six ITC Commissioners that the ALJ’s finding of no domestic industry was correct but his determination that ITC lacked the authority to conduct the 100-day hearing procedure was not. The ITC terminated the investigation with an early finding of no violation. As a result of our successful navigation of this new process on substantive and procedural grounds, our client saved a substantial amount of litigation expenses.