International
Trade Commission Experience
When Speed, Efficiency and Results Matter
Whether you are considering filing a complaint or you find your company involved in a “Section 337” investigation, you need lawyers who combine specific ITC experience with a broader understanding of IP issues.
The ITC operates at an extremely quick pace—often trials begin in as few as seven months after the investigation. Orrick lawyers are experienced with the unique demands of ITC investigations and have successfully represented complainants, respondents and third parties in a range of investigations concerning allegations of patent infringement, trademark infringement, theft of trade secrets, false designation of origin and passing off of goods.
Moreover, the significant first-chair trial experience and the breadth and depth of Orrick’s IP Group provide the requisite skills and resources to successfully handle any type of matter before the ITC, including preparing or responding to the complaint, expedited discovery and motions practice, trial, post-hearing briefs and appeals to the full commission and the Federal Circuit.
Companies have turned to Orrick lawyers to assist them with cases involving semiconductor, electronic, mechanical and pharmaceutical patents, including:
Semiconductor Cases
- Semiconductor Memory Devices and Products Containing Same (Investigation No. 337-TA-414). Lawyers at Orrick represented Respondents Mosel Vitelic, Inc. and Mosel Vitelic Corporation. Complainant Micron Technology had alleged that Mosel's semiconductor memory devices and processes infringed four Micron patents. After a 10 day trial, the asserted patents were determined to be invalid, not infringed, and unenforceable due to Micron's inequitable conduct. Further, the ALJ determined that Micron had failed to prove the existence of a domestic industry. Thereafter, the matter settled to the client's satisfaction. Pursuant to Mosel's victory at trial, the matter settled to Mosel's benefit.
- Memory Devices with Increased Capacitance and Products Containing Same (Investigation No. 337-TA-371). Lawyers at Orrick represented Respondents Mitsubishi Electric Corporation and Mitsubishi Electric America, Inc. Complainant Patent Enforcement Fund, Inc. alleged that Mitsubishi and more than a half dozen other notable electronic companies infringed its patent. The Respondents prevailed and no patent violation was found.
- NAND Flash Memory Circuits and Products Containing Same (Investigation No. 337-TA-526). Orrick lawyers are assisting Respondents STMicroelectronics, Inc. and STMicroelectronics N.V. in this pending investigation brought by Complainant SanDisk Corporation, in which SanDisk alleges that STMicroelectronics infringed a patent related to flash memory devices.
- Semiconductor Memory Devices and Products Containing Same (Investigation No. 337-TA-470). Lawyers at Orrick represented Complainants Mosel Vitelic, Inc. and Mosel Vitelic Corporation. Mosel asserted that various U.S. and Japanese companies infringed Mosel's semiconductor memory device patents. The matter was settled to the client's satisfaction prior to trial.
- Synchronous Dynamic Random-Access Memory Devices, Microprocessors and Products Containing Same (Investigation No. 337-TA-431). Lawyers at Orrick represented Respondents Hitachi, Ltd. (Japan) and Hitachi Semiconductor (U.S.), Inc. Complainant Rambus Inc. alleged that Hitachi's DRAM devices infringed two Rambus patents. The matter settled to the clients' satisfaction while discovery was under way.
- Integrated Circuit Devices, Processes for Making Same, Components Thereof and Products Containing Same (Investigation No. 337-TA-356). Lawyers at Orrick represented Respondents Mitsubishi Electric Corp. and Mitsubishi Electronics America, Inc. Complainant National Semiconductor Corporation had alleged that Mitsubishi infringed National's patents related to semiconductor memory chips. After extensive discovery, the matter was settled to the client's satisfaction.
- Erasable Programmable Read Only Memories, Components Thereof, Products Containing Such Memories and Processes for Making Such Memories (Investigation No. 337-TA-276). Lawyers at Orrick represented Intervenor Seeq Technology, Inc. in an investigation into Intel Corporation's allegation that various U.S. and Korean companies infringed eight Intel semiconductor memory patents. Seeq played a crucial role in convincing the U.S. Department of Defense not to object to the entry of an exclusion order.
Software Cases
- Hardware Logic Emulation Systems and Components Thereof (Investigation No. 337-TA-383). Lawyers at Orrick represented Complainant Quickturn Design Systems, Inc. against a U.S. company and its French subsidiary accused of importing hardware logic emulation systems that infringed Quickturn's fundamental hardware logic emulation patents. Early in the investigation, the ALJ conducted an 11-day trial and granted Quickturn's request for a temporary limited exclusion order (“TEO”) and a temporary cease-and-desist order, only the fourth time such orders had been issued since the 1988 implementing legislation. The ALJ's grant of a TEO was upheld by the full Commission and, subsequently, the Federal Circuit. A year later, following a second, 14-day trial, the ITC determined that all 41 claims at issue in the five asserted patents were infringed and issued a permanent limited exclusion order prohibiting the importation of Respondents' hardware logic emulation systems, subassemblies thereof and components for use therein. This determination was particularly noteworthy as the first ITC prohibition against the importation of infringing software via electronic transmission.
In related district court proceedings, Orrick lawyers successfully asserted Quickturn's patents against Respondents, and then defended Quickturn and its parent Cadence in a retaliatory patent and trade secret action brought by Respondents, who sought $1 billion in damages from Quickturn. Prior to trial, summary judgment was entered that Quickturn infringed two of the three patents Respondents asserted against it. After five weeks of trial and nine days of deliberation, the jury returned a verdict completely in Quickturn's favor, invalidating the asserted patents on all grounds put forth by Quickturn and finding no trade secret misappropriation.
- HSP Modems, Software and Hardware Components Thereof and Products Containing Same (Investigation No. 337-TA-439). Lawyers at Orrick represented Complainant PCTEL, Inc. PCTEL alleged that various U.S., Israeli and Taiwanese Respondents infringed four PCTEL patents related to host signal processing software modems. After a nine-day trial, PCTEL’s patents were found valid, enforceable and infringed. After PCTEL’s victory at trial, the matter settled to PCTEL’s satisfaction.
Electronic Cases
- Digital Satellite System (DSS) Receivers and Components Thereof (Investigation No. 337-TA-392). Lawyers at Orrick represented Complainant Personalized Media Communications L.L.C. (“PMC”). PMC alleged that various Respondents infringed PMC's patent on direct broadcast satellite television systems. On appeal, the Federal Circuit reversed the ITC's determination of no violation and, thereafter, the case settled to the client's satisfaction. The Federal Circuit's published opinion is of particular note for addressing whether certain claims were means-plus-function claims. See Personalized Media Communications v. International Trade Comm'n, 161 F.3d 696 (Fed. Cir. 1998).
- Ion Trap Mass Spectrometers and Components Thereof (Investigation No. 337-TA-393). Lawyers at Orrick represented Respondents Bruker-Franzen Analytik GmbH (German) and Bruker Instruments Inc. After a 10-day trial, the ALJ determined that the asserted patents were both invalid and not infringed. This determination was affirmed first by the full ITC and then by the Federal Circuit. In reviewing the ITC's determination, the Federal Circuit issued a significant opinion concerning collaboration of oral testimony for prior art purposes. See Finnigan Corp. v. United States Int'l Trade Comm'n, 180 F.3d 1354 (Fed. Cir. 1999).
- Signature Capture Transaction Devices and Component Parts Thereof and Systems That Employ Such Devices (Investigation No. 337-TA-504). Orrick lawyers represented Complainant NCR Corporation. NCR alleged that various French and Canadian companies infringed NCR's digital signature verification patent. The investigation was settled to the client's satisfaction.
- Optical Disk Controller Chips and Chipsets and Products Containing Same, Including DVD Players and PC Optical Storage Devices (Investigation No. 337-TA-506). Lawyers at Orrick assisted third party Silterra Malaysia Sdn. Bhd. respond to subpoenas. Computers and Peripherals
- Display Controllers and Products Containing Same (Investigation No. 337-TA-491). Lawyers at Orrick represented Complainant Genesis Microchip in its efforts to stop various U.S. and Taiwanese companies from importing infringing video display controllers. After more than 11 days of trial, the ITC determined that Respondents had infringed Genesis's patent and engaged in unfair trade practices. As a result, the ITC issued a limited exclusion order prohibiting the importation of Respondents' infringing display controllers, as well as circuit boards and LCD monitors containing those controllers. That order is still in effect.
- Display Controllers With Upscaling Functionality and Products Containing Same (Investigation No. 337-TA-481). Lawyers at Orrick represented Complainant Genesis Microchip. Genesis alleged that various U.S. and Taiwanese companies were infringing Genesis's display controllers patent. Genesis prevailed on several motions for summary determination, positioning it well for the 10-day trial. After the trial, the ITC determined that Respondents infringed Genesis's patent and issued a limited exclusion order prohibiting the importation of Respondents' infringing display controllers, as well as circuit boards and LCD monitors containing those controllers. That order is still in effect.
- Double-Sided Floppy Disk Drives and Components Thereof (Investigation No. 337-TA-215). Lawyers at Orrick represented Respondents Mitsubishi Electric Corporation and Mitsubishi Electronic America, Inc. Complainant Tandon Corporation alleged that Mitsubishi infringed Tandon's patents. After a trial, the ALJ determined there was no violation. The ALJ's decision was later affirmed by the full Commission.
- Sputtered Carbon-Coated Computer Disks and Products Containing Same, including Disk Drives (Investigation No. 337-TA-350). Lawyers at Orrick represented Respondent Quantum Corporation. Complainant Harry E. Aine alleged that Quantum and several leading Japanese and Taiwanese companies infringed his patent. The case was settled to the client's satisfaction.
- Removable Hard Disk Cartridges and Products Containing Same (Investigation No. 337-TA-351). Lawyers at Orrick represented Complainant SyQuest Technology, Inc. SyQuest asserted that various French and U.S. companies had misappropriated its trade secrets and trade dress, infringed its trademarks and were passing off goods. The case settled to the client's satisfaction.
- Personal Computers, Server Computers and Components Thereof (Investigation No. 337-TA-509). In this pending investigation, Orrick lawyers helped third party Wistron Corporation respond to subpoenas and depositions.
Mechanical Cases
- Spring Assemblies and Components Thereof and Methods for Their Manufacture, Investigation No. 337-TA-088). Lawyers at Orrick represented Complainant Kuhlman Corp., which asserted two patents against a number of respondents, including Ford Motor Corp. and General Motors Corp. After a 3-week trial, the ALJ determined that one of the two asserted patents was invalid but held that the Respondents had infringed the second patent. In a published opinion, the full International Trade Commission rejected the ALJ's finding of invalidity and held that claims from both patents were not invalid, enforceable and infringed by the Respondents. See, In re Spring Assemblies and Components Thereof, and Methods for their Manufacture, 216 USPQ 255 (U.S. Int'l Trade Comm'n, 1981). The Commission issued a general exclusion order barring the importation of infringing spring assemblies.
- Bar Clamps, Bar Clamp Pads, and Related Packaging, Display and Other Materials (Investigation No. 337-TA-429). Lawyers at Orrick represented Respondents Wolfcraft GmbH and Wolfcraft, Inc. Wolfcraft was accused of misappropriating American Tool Companies, Inc.'s trade dress and infringing its patents and trademarks. After a week-long trial, the ALJ found for Wolfcraft. The case subsequently settled and American Tool withdrew its complaint.
- Screen Printing Machines, Vision Alignment Devices Used Therein, and Component Parts Thereof (Investigation No. 337-TA-394). Lawyers at Orrick represented Respondents DEK Printing Machines Ltd. and DEK U.S.A., Inc. in an investigation concerning MPM Corp.'s allegations that DEK infringed MPM's machine vision patent. After extensive pretrial written discovery, motions practice and depositions, the matter was quickly favorably settled.
- Stretch Wrapping Apparatus and Components Thereof (Investigation No. 337-TA-191). Lawyers at Orrick represented Respondents Muller Manufacturing, Ltd. and Muller Packaging System, Inc. in a patent infringement investigation. The matter was resolved to the clients' satisfaction.
Pharmaceutical Cases
- Diltiazem Hydrochloride and Diltiazem Preparations (Investigation No. 337-TA-349). Lawyers at Orrick represented Complainant Marion Merrell Dow, Inc., which asserted that imports from Italy, Israel and Finland infringed its patent on the drug Cardizem. This investigation was especially noteworthy as it viewed the domestic industry requirement very broadly, thus extending the jurisdiction of the ITC.
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Orrick lawyers have assisted companies in dozens of ITC "337" investigations.
- When representing Complainants, Orrick lawyers have secured temporary exclusion orders, general exclusion orders, and cease-and-desist orders.
- When representing Respondents, Orrick lawyers have secured summary determinations of invalidity and non-infringement and final determinations of no violation.
- When representing third parties, Orrick lawyers have helped them respond to subpoenas and depositions and helped them understand and work with the ITC.
Orrick lawyers are experienced representing companies before the ITC in many technical areas, including:
- Semiconductors
- Software
- Electronics
- Computer
- Mechanical
- Pharmaceutical
Orrick lawyers are practiced in all aspects of ITC work from drafting or responding to a complaint through trial and appeal. |
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