Since 2010, the commission has instituted approximately 16 investigations involving allegations of trademark infringement or dilution. This article discusses asserting trademarks at the ITC and the remedies available for trademark infringement, provides a statistical analysis of the 16 recent trademark-based Section 337 investigations, and concludes with an in-depth examination of two recent high-profile cases and the remedies achieved in those investigations.ITC PRACTICE AND TRADEMARKS The ITC is an independent, quasi-judicial federal agency with broad authority to investigate unfair methods of competition, including trademark infringement, pursuant to Section 337, 19U.S.C. §1337. Unlike federal courts, which are limited to national boundaries by in personam jurisdiction, the ITC has in rem jurisdiction over allegedly infringing goods.

The decision demonstrates the value of the ITC for intellectual property rights holders seeking to combat a wide variety of intellectual property infringement, particularly in instances where one or more of the potential respondents may not appear in the ITC to defend against the infringement claims. Background Laerdal filed its complaint with the ITC on March 21, 2016, alleging that eleven respondents were infringing Laerdal’s patent, trademark, trade dress, and copyright rights by importing, selling for importation, or selling within the United States certain products, including spine boards, cervical collars, CPR masks, training manikins, and accompanying product literature, in violation of 19 U.S.C. § 1337. Among other remedies, Laerdal sought a general exclusion order covering the infringing products, as well as limited exclusion orders and cease and desist orders directed to each respondent.

"[A]n ITC order terminating an investigation on the basis of an arbitration agreement [is] an appealable final determination under 19 U.S.C. § 1337(c) [over which the Federal Circuit has] jurisdiction under 28 U.S.C. § 1295(a)(6)." On June 7, 2013, in InterDigital Commc'ns, Inc. v. Int'l Trade Comm'n, the U.S. Court of Appeals for the Federal Circuit (Lourie, Bryson, Prost*) reversed and remanded the ITC order terminating the 19 U.S.C. § 1337 investigation in favor of arbitration because of a prior patent license agreement, which related to patents covering operations of 2G and 3G wireless communication devices, between InterDigital and LG that permitted the parties to submit to arbitration any disputes arising under the agreement.

2The ITC instituted an investigation as to a subset of Laerdal’s claims — specifically its trade dress claims, one patent claim, two copyright claims and one trademark claim. After none of the respondents appeared or responded to the notice of investigation, on Oct. 20, 2016, Laerdal moved for an order requiring the respondents to show cause as to why they should not be found in default under 19 U.S.C. § 1337(g)(1). The administrative law judge granted this order to show cause, and after no response or acknowledgement of the order by any respondent, the ALJ issued an initial determination finding all respondents in default.

Some of Deere’s authorized dealers import and sell European model harvesters in the United States. Deere filed a complaint with the ITC alleging violations of 19 U.S.C. § 1337 by the importation and sale in the United States of used European model Deere harvesters that infringed Deer’s federally registered trademarks. Following an investigation, the ALJ found that the appellants’ importation of used Deere version forage harvesters violated section 1337.

U.S. companies face many challenges to remedying the effect of such unfair conduct. One forum to consider in seeking recourse is the U.S. International Trade Commission (“ITC”) pursuant to Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337. Trade secret misappropriation claims at the ITC provide many advantages over traditional mechanisms of pursuing foreign cyber thieves, including the ability to obtain remedial orders excluding any of the thieves’ products that utilize stolen trade secrets from the United States and streamlined mechanisms for obtaining discovery abroad.Cyber Attacks and Trade Secret Misappropriation Federal and state laws offer various legal remedies to combat cyber trade secret misappropriation.

The ITC monthly wrap-up for March 2022 focuses on two Federal Circuit decisions that help explore two of the major differences between patent litigation in the International Trade Commission (ITC) and federal district court: (1) the form of relief (injunctive relief; not monetary damages), and (2) the domestic industry requirement per 19 U.S.C. § 1337 (“Section 1337”). Specifically, this month’s wrap-up focuses on Federal Circuit opinions affirming the Commission’s findings in two separate investigations—Certain Two-Way Global Satellite Communication Devices, Inv. No. 337-TA-854 (“854 Investigation”) and Certain Infotainment Sys., Components Thereof, and Auto. Containing the Same, Inv. No. 337-TA-1119 (“1119 Investigation”).To start, even though the ITC typically grants injunctive relief rather than monetary awards, in the 854 Investigation, the Federal Circuit affirmed the ITC’s remand determination not to modify or rescind a $6.2 million civil penalty imposed on DBN Holding Inc. for violations of a consent order.

In its complaint, Andrea alleged that the Respondents induced infringement of the asserted patents. In addition to the allegations of importing articles that infringe a U.S. patent, Andrea alleged that the Respondents had violated 19 U.S.C. § 1337(a)(1)(A), which prohibits unfair methods of competition and unfair acts in the importation of articles, by importing products which induced infringement of the asserted patents. In particular, Andrea alleged that “Respondents’ unfair methods of competition and unfair acts include their importation and sale of articles used by end users to practice one or more claims of Andrea’s Asserted Patents in the United States.”

This article was originally published on January 30, 2024 on IPWatchdog.com and is republished here with permission.In a pending case, the Federal Circuit is primed to provide much-needed clarity on the economic prong of the domestic industry requirement at the United States International Trade Commission (ITC). In ruling, the court will likely resolve a long-running dispute between individual commissioners regarding how to apply the so-called "mere importer" test when determining whether the domestic industry requirement is met. If the complainant, Lashify, prevails, it could make the ITC a more appealing forum for patent infringement suits involving entities that have under-utilized the ITC, including inventors, universities, and start-ups. The case at issue is Lashify, Inc. v. ITC, No. 23-1245.A Brief Primer on the Domestic Industry RequirementThe domestic industry requirement is defined in the ITC's governing statute, 19 U.S.C. § 1337. The statute provides that the ITC can provide relief for infringement of patent and other intellectual property rights "only if an industry in the United States, relating to the articles protected by the patent … exists or is in the process of being established." 19 U.S.C. § 1337(a)(2). The next provision defines three separate avenues that a complainant can use to show the existence of a domestic industry, often referred to as "Prong A," "Prong B," and "Prong C":[A]n industry in the United States shall be considered to exist if there is in the United States, with respect to the articles protected by the patent […]—(A) significant investment in plant and equipment;(B) significant employment of labor or capital; or(C) substantial investment in its exploitation, including engineering, research and development, or licensing.19 U.S.C. § 1337(a)(3). For a more detailed discussion of the domestic industry requirement, see Defending Breakthrough Innovations – Protecting University Patents a

What’s Happening with the Apple Watch?Regular consumers now enjoy a front-row seat to the long-running intellectual property dispute between Apple, the tech giant based in Cupertino, California, and Masimo, a medical device company based in Irvine, California.Back in January 2020, Masimo sued Apple for patent infringement, trade secret misappropriation, and declaratory judgment of patent ownership in the Central District of California. The patents at issue cover a device (e.g., a smartwatch) that measures a person’s blood-oxygen level using light sensors.On June 29, 2021, Masimo also filed a complaint under 19 U.S.C. § 1337 (“Section 337” of the Tariff Act of 1930, as amended) against Apple in the United States International Trade Commission (“ITC”) for importing products that infringe five of the patents.In July-August 2022, Apple responded by filing petitions for inter partes review at the Patent Trial and Appeal Board (“PTAB”) of the United States Patent Office against all twelve of Masimo’s asserted patents, but the PTAB denied the institution of at least some of these petitions.The ITC ruled in favor of Masimo. On December 26, 2023, limited exclusion and cease and desist orders by the ITC prohibiting the import of certain versions of the Apple Watch went into effect in the United States. The Biden administration subsequently declined an opportunity to veto the ban. However, as is common with litigation, a single unfavorable decision is not the end of the story. Only a day later, on December 27, Apple succeeded in an emergency appeal to the U.S. Court of Appeals for the Federal Circuit to halt the ba