How ITC Is Addressing Its Importation Requirement

• Published date: 21 June 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Elizabeth Niemeyer

A distinguishing aspect of aU.S. International Trade Commissioninvestigation under Section 337 from a district court action is the importation requirement - the accused product must have been imported, or sold for importation, into the U.S.

Specifically, depending on the basis for the alleged violation, the statute requires either unfair acts "in the importation of articles ... into the United States, or in the sale of such articles"¹ or the "importation into the United States, the sale for importation, or the sale within the United States after importation" of an article accused of infringing an intellectual property right.² A well-pled complaint, accordingly, must "[d]escribe specific instances of alleged unlawful importations or sales."³

The importation requirement is frequently one of the less contentious issues in a Section 337 investigation. A complaint may include a picture of the accused product and its packaging that indicates it was made outside the U.S. (e.g., "Made in France") along with a receipt showing it was purchased in the U.S. And parties often stipulate that the importation requirement has been satisfied.

There have been high-profile disputes, but they are not common - e.g., theU.S. Court of Appeals for the Federal Circuit's notable en banc Suprema Inc. v. ITC decision and ClearCorrect Operating LLC v. ITC decision were both decided seven years ago.⁴

Recent Cases

Although importation is a relatively quiet area of dispute, a handful of recent decisions suggests opportunities for ongoing developments or, at least, creative thinking.

In Certain Electrical Connectors and Cages, Components Thereof, and Products Containing the Same, the presiding administrative law judge required a showing of importation for each product accused of infringement.

In Certain Laptops, Desktops, Servers, Mobile Phones, Tablets, and Components Thereof, a respondent moved unsuccessfully for summary determination of no importation under the argument it was not the "owner, importer, or consignee" of the accused products under the statute.

In Certain Toner Supply Containers and Components Thereof (I), the commission took review of a finding of importation in the final initial determination by a respondent that had been terminated by consent order.

And in Certain Flocked Swabs, Products Containing Flocked Swabs, and Methods of Using Same, the presiding ALJ denied a motion to compel discovery of products that had not been, and would not be, imported into the U.S.

The 1241 Investigation

In Certain Electrical Connectors, the complainant at trial accused six categories of products, which included 15 products, of infringing claims from up to three...