Commission du commerce international des États-Unis

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.

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: 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, which is currently on appeal to the Federal Circuit, we won a finding of non-infringement regarding the re-designed product, paving the way for Mahindra to resume production in the United States.

UEI v. Funai: We represented Funai Electric Co., Ltd., Hisense Co., Ltd. and their affiliates in defense against a patent infringement action brought by Universal Electronics Inc. (“UEI”) related to smart TVs. UEI terminated our clients from the investigation without settlement.

Microsoft v. Barnes & Noble: With an investigation stemming from Microsoft's request that Barnes & Noble license its IP for use in the Android-powered e-reader, the Nook, 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.

  • BIC Corporation v. Arrow Lighter, Inc. et al: We won a rare general exclusion order—one of only a handful issued each year by the ITC—to stop the importation of knock-off pocket lighters that infringe BIC’s trademarked design and do not conform to its stringent safety and quality standards. Orrick pursued a general exclusion order to help BIC solve a common whack-a-mole problem: just as BIC beat back one infringing import, another would pop up in its place. This problem poses a particular danger with pocket lighters, because low-quality, non-compliant lighters can injure consumers and damage property. For example, during the ITC investigation, Orrick developed factual evidence and expert opinion that showed that infringing pocket lighters remained lit for 30 seconds after the user released the pusher. The general exclusion order enables BIC to coordinate with Customs and Border Protection to bar all infringing imports, regardless of source. BIC also settled with two respondents, forcing them to redesign their lighters worldwide and pay BIC a significant settlement.

    J.S.T. Corporation v. Bosch and Foxconn: We represented Bosch and Foxconn in an ITC Investigation brought by J.S.T. Corporation and in a parallel district court action. JST alleged that an electrical connector manufactured by Foxconn and used in “body control modules” manufactured by Bosch infringes a JST patent. The Bosch body control modules are used in a wide variety of GM cars, so an exclusion order could have significantly impacted not only Bosch and Foxconn, but also GM. The Chief ALJ wrote an Initial Determination (“ID”) finding the asserted patent infringed and not invalid. In other words, his ruling was a complete victory for JST. Orrick convinced the full Commission to review the entirety of the Chief ALJ’s ID and after further briefing, the Commission overturned the Chief ALJ’s ruling on both issues, finding the asserted patent not infringed and invalid as anticipated by a prior art product Orrick found by disassembling old Dell computers. We turned a complete loss in front of the Chief ALJ into a complete win in front of the Commission.

    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.  As lead counsel for New Balance, the team first won a Final Determination of no violation in 2016 and then briefed and argued a Federal Circuit appeal in 2018. In October 2019, the team won an Initial Determination of no violation on remand and the Commission issued a Final Determination affirming that decision in September 2020. The case clarified the law on trade dress in the Federal Circuit and at the ITC and, for New Balance, is particularly important because the entire PF Flyers product line was at stake. Over the years, Law360 selected this case as the most important trademark ruling of 2016 and an appeal to watch in 2018. 

    Hitachi Metals and Metglas v. Advanced Technology & Materials: We defended AT&M, a Chinese state-owned enterprise, in a trade secret misappropriation 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.

    Mahindra & Mahindra Ltd et al v. FCA US LLC: We represented Mahindra & Mahindra Ltd. and Mahindra Automotive North America in an ITC trademark and trade dress investigation and a parallel district court proceeding in E.D. Michigan involving the design of Mahindra’s ROXOR off-road-only vehicle.  The ROXOR is Mahindra’s first off-road vehicle launched in the United States and represents a significant investment in a new industry.  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, which is currently on appeal to the Federal Circuit, we won a finding of non-infringement regarding the re-designed product, paving the way for Mahindra to resume production in the United States.

    UEI v. Funai: We represented Funai Electric Co., Ltd., Hisense Co., Ltd. and their affiliates in defense against a patent infringement action brought by Universal Electronics Inc. (“UEI”) related to smart TVs. UEI terminated our clients from the investigation without settlement.

    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.