ITC Section 337 Update – July 2014

by King & Spalding

Commission Affirms No Domestic Industry Based On Research And Development In 859 Investigation – On July 21, 2014, the Commission issued a Notice To Affirm In Part, Reverse In Part And Vacate In Part The Final Initial Determination Finding No Violation in Certain Integrated Circuit Chips And Products Containing The Same, Inv. No. 337-TA-859.  The Commission affirmed in part Judge Dee Lord’s March 21, 2014 final Initial Determination finding no violation, including Judge Lord’s finding that no domestic industry exists under 19 U.S.C. 1337(a)(3)(C) based on research and development despite determining that claims 1-10 of the asserted ‘928 patent were infringed by accused chips made with bond pad structures, and at least claim 10 was valid and infringed.    Prior to rendering its decision, the Commission issued a Notice on May 29, 2014 (79 Fed. Reg. 30878-80) including seventeen questions to the parties, including inquiring:  (i) how Complainant Realtek’s research and development in the United States involves or relates to articles protected by the asserted patent, citing Microsoft Corp. v. ITC, 731 F.3d 1354, 1362 (Fed. Circ. 2013); and (ii) requesting identification of each investment in the United States in exploitation of the asserted patent and explaining why the investments, as a whole, are substantial.  Another issue in the investigation raised by Respondents LSI and Seagate was that Realtek failed to present evidence that its alleged domestic industry activities are ongoing, and therefore, Realtek is not entitled to a remedy, and if a limited exclusion order were to issue, a quarterly reporting requirement would be appropriate to ensure that a domestic industry continues to exist in the future.  A public version of the Commission’s Opinion has not yet been released.        

The Federal Circuit Vacates Commission Decision That Reviewed A Non-Final ALJ Order – In Align Technology, Inc. v. Int’l Trade Comm’n, 2013-1240 (Fed. Cir., July 18, 2014), the Federal Circuit held that the Commission’s decision to terminate Inv. No. 337-TA-562 based on the Commission’s review of a non-final ALJ order exceeded the Commission’s authority.  Specifically, the Commission’s decision overturned an order by former ALJ Rogers denying ClearCorrect’s motion to terminate an enforcement proceeding into whether ClearCorrect Operating LLC (“ClearCorrect”) breached a 2006 agreement with Align Technology, Inc. (“Align”) not to import products protected by Align’s U.S. patents.  Align argued, and the Federal Circuit agreed, that ALJ Rogers’ ruling was a non-final order, and thus not subject to review by the Commission, unless the respondents moved for an interlocutory appeal, which they did not.  The Federal Circuit found that the Commission exceeded its authority under Rule 210.24 by reviewing the ALJ order – which was not an initial determination – denying and not granting a motion to terminate the investigation.  The Federal Circuit also noted that although the Commission could have amended or waived its rules to review the ALJ order for good reason, the Commission never attempted to do so.

Fifth Annual “Live At The ITC” Forum To Be Held July 30 – On July 30, 3:00-8:00 p.m., King & Spalding LLP will host the ABA’s fifth annual “Live At The ITC” forum on Section 337 and other developments at the U.S. International Trade Commission.  The forum will consist of two round-table discussions featuring ITC Commissioners and former attorneys from the Office of Unfair Import Investigations (OUII), as well as remarks by current OUII Director Margaret Macdonald.  The first round-table discussion, “An Intimate Q&A Session With The ITC Commissioners,” will feature a discussion on topics including recent substantive and procedural developments at the Commission.  The Commissioners are open to responding to questions that do not touch on current issues for decision before the Commission.  Questions for the Commissioners may be submitted in advance to James Altman ( and Jeffrey Telep (  Director Macdonald will discuss various roles that OUII plays in Section 337 investigations and how to work effectively with OUII.  Rounding out the evening, the second round-table discussion, “Jurisdiction Under Section 337,” will examine issues including non-traditional uses of Section 337 to protect trade secrets, copyrights, and trademarks, as well as how recent investigations involving electronic imports may affect the Section 337 landscape.  Refreshments will be served immediately after the second round table.  To register, click here.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© King & Spalding | Attorney Advertising

Written by:

King & Spalding

King & Spalding on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.