U.S. International Trade Commission (Internationale Handelskommission der Vereinigten Staaten)

The U.S. International Trade Commission (ITC) is the ultimate in high-stakes litigation, as a loss in the ITC inflicts devastating financial consequences. Since the ITC can exclude entire classes of devices from being imported into the United States, success depends on counsel who can guide companies through this fierce battleground.

Further complicating matters are the ITC's unique demands. The Commission moves at a breakneck pace - more than twice as fast as a typical U.S. litigation - and has dozens of ITC-specific rules and regulations. Victory demands extraordinary precision and skill.

These rigorous elements are why companies around the world rely on Orrick to protect their most innovative products from exclusion, or to halt competitors' infringing goods. Orrick has participated in 50 ITC investigations in the last five years alone. As demonstrated in the experience listed below, Orrick earned its reputation as a destination ITC practice by combining technical savvy and litigation power with practical ITC experience.

  • Amarin v. DSM Nutritional Products:  Our IP and appellate litigators won a major ruling on behalf of clients Pharmavite and Royal DSM when the Federal Circuit affirmed the ITC’s decision not to institute an investigation sought by Amarin Pharmaceuticals. Amarin—the maker of an FDA-approved prescription drug that contains purified fish oil—asked the ITC to block the importation of dietary supplements that also contain purified fish oil on the ground that those products violate the Food, Drug, and Cosmetics Act. Although the ITC declines to institute an investigation regarding less than 1% of complaints filed, we persuaded the Commission not to investigate Amarin’s claim since that would invade the province of the FDA. Amarin appealed the Commission’s decision and we represented all respondents who intervened. Ultimately, the Federal Circuit affirmed the ITC’s decision, giving our clients a major victory in a case that shuts the door on expansive new claims in the ITC. The decision received national press coverage, including in The National Law Journal and Law360.

    Hitachi Metals and Metglas v. Advanced Technology & Materials: We defended AT&M, a Chinese state-owned enterprise, from a rare trade secret ITC investigation. Our team's innovative approach focused on combating the deficiencies in the allegations of misappropriation, as opposed to whether the accused technologies "practiced" the trade secrets. This strategy put early pressure on the complainants and minimized the discovery for our clients. As a result, we won a complete victory when the complainants unilaterally moved to terminate the investigation at the close of fact discovery, without any concession or settlement agreement.

    Ultravision v. LED Panel Industry:  We achieved a complete victory in a patent infringement action at the ITC for our clients Shanghai Sansi Electronic Engineering, CreateLED Electronics and Yaham Optoelectronics, following the termination of a Section 337 investigation based on withdrawal of the complaint by Ultravision Technologies. Ultravision filed an ITC complaint to broadly block the importation of most modular LED display panels, regardless of whether or not the importer is a named party. The panels at issue are used in displays such as New York's Times Square, London's Piccadilly Circus and sports stadiums. We developed strong non-infringement and invalidity positions on behalf of our clients, forcing Ultravision to withdraw the complaint during the expert discovery period. The victory in this case enables our clients to stay in the U.S. market. We continue to litigate this matter in district court. 

    Microsoft v. Barnes & Noble: We successfully represented Microsoft in the ITC. The investigation stemmed from Microsoft's request that Barnes & Noble license its IP for use in the Android-powered e-reader, the Nook. After Barnes & Noble refused, Microsoft filed suit in the ITC. Microsoft hired Orrick to represent it with respect to Barnes & Noble's patent misuse defense. The ITC rejected that defense before trial, clearing the way for settlement negotiations, which concluded with a mutually beneficial strategic business partnership between the two companies.

    Motiva v. Nintendo: We secured a complete victory on behalf of Nintendo against leading plaintiff's lawyer Mark Lanier. The case threatened 40% of Nintendo's market for its most successful product, the Nintendo Wii. The Commission found that Nintendo's Wii system does not infringe Motiva's patents and that it failed to establish a domestic industry. The Federal Circuit affirmed in a published and frequently-cited opinion. See Motiva, LLC v. Int'l Trade Comm'n, 716 F.3d 596 (Fed. Cir. 2013).

    Advanced Research Corporation v. Fujifilm and Oracle: We defended Fujifilm and Oracle in an investigation relating to magnetic data storage tapes. We successfully resisted the complainant's motion to amend and broaden the scope of the investigation and negotiated favorable settlements for both clients shortly before the trial was scheduled to begin.