U.S. International Trade Commission

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 more than 18 ITC investigations in the past five years alone.

But winning at the ITC can be just the start. Orrick is also experienced with Federal Circuit appeals, Commission enforcement and modification proceedings, and Customs 177 proceedings.

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.

Certain Dynamic Random Access Memory Device and Product Containing Same: Secured early defensive victory for Etron Technology Inc. of Taiwan before the U.S. International Trade Commission, with judgement that the patent infringement complaint lodged against Etron’s semiconductor chip imports did not warrant institution of the Section 337 investigation sought. Orrick’s team advocated early and compellingly to the Commission that the complaint did not sufficiently allege importation, domestic industry, infringement, or otherwise—causing complainant to amend. We again illuminated deficiencies as to the amended complaint to the Commission, leading it to deny institution—an extremely rare, decisive, efficient win for our client before the ITC.

Dietary Supplements Company (U.S.): The ITC declines to institute an investigation in less than 1% of complaints filed, yet we have secured this ideal outcome for an American Dietary Supplement Company. We won denial of an investigation sought by Amarin Pharmaceuticals, in a case with sweeping ramifications for industries regulated by the U.S. Food and Drug Administration (FDA). 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. We countered the ITC lacked jurisdiction to investigate Amarin’s claims since such an action would invade the province of the FDA. Shortly thereafter, the FDA echoed our argument that the law and policy issues are within the exclusive domain of the FDA. The ITC agreed with our jurisdictional argument, and declined to investigate Amarin’s claims. Amarin appealed the Commission’s denial and we represented all respondents who intervened—the Federal Circuit affirmed.

Sonos Inc. v. Google LLC.: Successfully represented Sonos in multiple ITC investigations against Google. Proved that multiple Google products infringed five Sonos patents. When Google retaliated and brought two separate ITC investigations, we defended Sonos and the Commission agreed there was no violation.

Bell Semiconductor, LLC v. Micron Technology Inc.: Orrick secured a victory for its client, Micron Technology, without a costly investigation. By vigorously challenging the complaint, Orrick was able to raise sufficient issues so that the complainant ultimately agreed to voluntarily terminate the investigation.

BIC Corporation v. Arrow Lighter, Inc. et al: On behalf of BIC, we won a rare general exclusion order stopping the importation of knock-off pocket lighters that infringe BIC’s trademarked design and do not conform to its stringent safety and quality standards.

J.S.T. Corporation v. Bosch and Foxconn: Orrick turned a loss into a win by overturning the Chief ALJ’s initial determination of infringement and validity of a patent using a prior art product Orrick found by disassembling old Dell computers.

New Balance Athletic Shoe, Inc. v. Converse Inc.:  Orrick won a complete victory on behalf New Balance in a six-year long ITC Investigation initiated by Converse involving claims of trade dress infringement related to certain design elements of Converse’s Chuck Taylor All-Star brand footwear. 

Hitachi Metals and Metglas v. Advanced Technology & Materials: 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.

Mahindra & Mahindra Ltd et al v. FCA US LLC: We served as lead trial counsel in the ITC investigation, which included an early trial in the 100-day pilot program. Following a decision on the initial design at the ITC, we won a finding of non-infringement regarding the re-designed product, paving the way for Mahindra to resume production in the United States.

The “Smart Phone Wars”: Orrick represented a Leading Tech Company (U.S.) accused of infringing four patents related to image compression. This was one of the first cases in what became known as the “Smart Phone Wars” and Orrick secured a complete victory by proving that the asserted claims were invalid and not infringed.