News & Analysis as of

Exclusion Orders Cease and Desist Orders International Trade Commission (ITC)

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Design Patent Trends at the ITC – Mid-Year Update

Ten Section 337 Investigations were terminated in the first half of 2024. Of those ten investigations, two involved design patents. Although those investigations ended with the Commission issuing no remedial orders (including...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 ITC Section 337 Year in Review: Analysis & Trends: Looking Beyond Inventory Numbers to Secure a Cease and Desist Order

The Commission may grant a cease and desist order (“CDO”) when it finds a violation of Section 337. See 19 U.S.C. 1337(f)(1). Historically the Commission would grant a CDO upon a showing that a respondent had a “commercially...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2022 Design Patents Year in Review: Analysis and Trends: ITC: Design Patents Continue to Outperform on Obtaining Remedies at the...

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 Design Patents Year in Review: Analysis and Trends: US International Trade Commission: Design Patents Outperform on Obtaining...

In May 2020, we reported in an article published by Law360, “design patents outperform utility patents when it comes to injunctive relief.” The same is true when it comes to a rare form of injunctive relief—a general...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 Design Patents Year in Review: Analysis and Trends

This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - November 2021: Watching the Pot™

ITC to Determine if Importing of Oil-Vape Cartridges to Go Up in Smoke - The ITC recently initiated an investigation into whether 38 manufacturers' imports of oil-vape cartridges used to smoke cannabis and THC infringe a...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - November 2021

The November 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the emergence of trademark filings for NFTs and a recent ITC patent infringement case regarding imported oil-vape cartridges. In this...more

Goodwin

ITC 337 Quarterly Insider Q2 2020

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Goodwin’s 337 Quarterly Insider remains the premiere publicly available source for keeping up to date on all meaningful decisions coming out of the Commission. Please find below Goodwin’s insights on the months of April, May,...more

Jones Day

Recent ITC Statistics

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The COVID-19 pandemic surprisingly is not impacting the number of filings at the ITC in fiscal year (“FY”) 2020.  Prior to the start of quarantine on March 16, 2020, fifteen (15) new complaints were filed at the ITC.  On...more

Mintz - Intellectual Property Viewpoints

District Court denies motion to dismiss despite Federal Circuit’s finding of patent invalidity in appeal of parallel ITC...

On December 5, 2019, Judge David C. Godbey of the Northern District of Texas denied the defendant Diebold Nixdorf, Inc.’s (“Diebold”) motion to dismiss under Rule 12(b)(6), in Nautilus Hyosung Inc. v. Diebold, Inc. et al.,...more

Jones Day

ITC Imposes Fine for Violating Cease and Desist Order

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In a recent Enforcement Initial Determination, ALJ Shaw held that Sony had violated previously issued cease and desist orders (“CDOs”) and determined that the appropriate penalty was a fine of $210,134 – Sony’s net profit...more

Mintz - Intellectual Property Viewpoints

Commission Reverses Apple Infringement Finding, Thereby Mooting the Public Interest Inquiry...For Now

On March 26, 2019, the International Trade Commission issued its Final Determination in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065. The 1065 Investigation is one of...more

Jones Day

Commission Cleans Up Remedies for Robotic Vacuum Cleaners

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While it is well understood that the ITC can issue an exclusion order to stop the importation of articles found to infringe a patent, it is not as well known that such orders can also prevent certain domestic activities. A...more

Jones Day

The ITC is Not Just for Patents – Brand Owners are Welcome Too

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When people think of actions filed with the International Trade Commission (ITC) under section 337 of the Tariff Act of 1930, they likely think of patent infringement cases. And the majority of ITC cases do involve patents,...more

Jones Day

Don’t Forget to Bring Your Redesigned Products to the ITC

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The ITC recently modified a previously issued remedial order such that certain of the Respondents’ redesigned products were not covered by the limited exclusion order (LEO) or the cease and desist order (CDO). Certain Network...more

Jones Day

ITC Affirms Termination of Investigation Based on Expiration of Patent

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The U.S. International Trade Commission (“ITC”) terminated Investigation No. 337-TA-1094 based on actual expiration of the asserted patent at issue. Upon a review of the Initial Determination (“ID”), the Commission determined...more

Jones Day

ITC Clarifies Domestic Industry Requirement for Unregistered Trade Dress

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The ITC issued an Opinion finding a violation of Section 337 and issuing a general exclusion order and cease and desist orders. Of note, the Commission clarified that the “domestic industry” for unregistered trade dress need...more

Jones Day

ITC Remains Unpersuaded by Final PTAB Rulings

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This week the ITC stood firm in its position that final PTAB rulings of unpatentability in IPR proceedings are not grounds to modify, suspend, or rescind remedial orders. In Certain Foam Footwear, Inv. No. 337-TA-567, the ITC...more

Jones Day

Federal Circuit Stay Order Demonstrates Value of Redesign as Defense in ITC Actions

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The Federal Circuit has determined to partially stay an ITC exclusion order as it pertains to products redesigned after the remedial orders issued. We have previously posted about Certain Network Devices, Related Software and...more

Morrison & Foerster LLP - MoFo@ITC

Asserting trademarks and available remedies at the ITC

Trademark owners seeking non-monetary relief for infringement can turn to the U.S. International Trade Commission. The ITC offers a variety of powerful remedies pursuant to Section 337 of the Tariff Act of 1930, as amended....more

Knobbe Martens

ITC Issues Limited Exclusion Order of Diebold ATMs Following Finding of Patent Infringement

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Patent Judgments and Awards - On July 14, 2017, the International Trade Commission determined that financial services company Diebold Nixdorf, Inc. (“Diebold”) violated Section 337 of the Tariff Act by importing ATMs and...more

Jones Day

No Stay of Remedial Orders Even After PTAB Finds Claims Unpatentable

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The ITC has dealt a significant blow to the use of Inter Partes Review as a defense to a Section 337 investigation. In an order issued this week, the Commission denied a request to stay remedial orders that are currently on...more

Jones Day

Final Written Decision Not So Final in Eyes of The ITC

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The ITC recently continued its trend of giving little deference to parallel PTAB IPR proceedings. In Certain Network Devices, Related Software and Components Thereof (II), Inv. No. 337-TA-945, the ITC denied a request to...more

Jones Day

Colorable Difference Test Not Applicable to CDO Sanctions

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A recent ITC enforcement decision highlights the importance of redesigns as an effective strategy for Respondents at the ITC....more

Jones Day

ITC Scrubs Domestic Industry Holding In Brushes Investigation

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On February 7, 2017, the ITC issued a Notice modifying the ALJ’s Initial Determination in Certain Electric Skin Care Devices, Brushes and Chargers Therefor, and Kits Containing Same, ITC Inv. No. 337-TA-959 and issuing...more

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