United States International Trade Commission Issues Final Determination After Holding First Public Hearing in Nearly a Decade

by Akin Gump Strauss Hauer & Feld LLP

Akin Gump Strauss Hauer & Feld LLP

Key Points

  • After the first public hearing by the United States International Trade Commission (“ITC”) in almost a decade, the ITC issued a Limited Exclusion Order (LEO) that excludes the Respondent’s accused products from entering the United States.
  • These products may be imported during the 60-day Presidential review period, subject to the production of a bond for three percent of the entered value that will be enforced by United States Customs and Border Protection.
  • The ITC took no position on the legal question of whether laches is an available defense at the Commission and found that the Respondent’s defense failed on the merits.

On December 16, 2016, the ITC issued a Notice of Final Determination (the “Notice”) in Certain Lithium Metal Oxide Cathode Materials, Lithium-Ion Batteries For Power Tool Products Containing Same, And Power Tool Products With Lithium-Ion Batteries Containing Same, Inv. No. 337-TA-951 (the “951 Investigation”), issuing the LEO requested by the Complainants, BASF Corporation of Florham Park, New Jersey and UChicago Argonne LLC of Lemont, Illinois. While the Final Determination is not yet publicly available, the Notice identified several main holdings of the ITC in the Final Determination, including:

(1) determining that the Respondent, Umicore, induced infringement of U.S. Patent Nos. 6,677,082 and 6,680,143 (the “Asserted Patents”), thereby reversing Administrative Law Judge (ALJ) Thomas Pender’s finding of no induced infringement by Umicore in the Final Initial Determination issued on February 29, 2016 (the ID);

(2) affirming the ALJ’s findings that Umicore’s laches defense failed on the merits, while taking no position on the broader legal question of whether laches is an available defense at the ITC; and

(3) determining that the public interest factors in 19 U.S.C. § 1337(d) did not preclude the issuance of an LEO.

The ITC issued the Notice and the Final Determination after holding a public hearing for the first time in nearly a decade. At that hearing, held on November 17, 2016, the ITC heard argument from the parties on induced infringement and laches, as well as other issues. The ITC also heard from interested non-parties on the effect that a potential remedy such as an LEO would have on the public interest.

For background, the ITC instituted the 951 Investigation on March 30, 2015, based on a complaint filed by BASF and UChicago Argonne LLC. The Complaint accused two Umicore entities (Umicore N.V. of Belgium and Umicore USA Inc. of Raleigh, North Carolina), as well as others, of infringing the Asserted Patents. In response, Umicore asserted several defenses, including an affirmative defense of laches. ALJ Pender conducted the evidentiary hearing in the Investigation from October 26-30, 2015.

The ID issued on February 29, 2016. In the ID, the ALJ found that the Respondent’s accused products directly infringed the asserted patents, and that Umicore contributorily infringed the asserted patents. The ALJ, however, found that Complainants failed to show that Umicore induced infringement. The ALJ also found that Umicore’s laches defense failed as a matter of law and also on the merits. Further, the ALJ recommended that the ITC issue a LEO to exclude the accused products from entering the United States and required a bond on the importation of accused products during the 60-day Presidential review period. However, the ALJ did not recommend the issuance of a cease-and-desist order, finding that there was no evidence of a commercially significant inventory of the accused products in the United States.

The ITC decided to review the ID in part and requested that the parties brief their positions on the ALJ’s contributory and induced-infringement findings, as well as the findings on laches. In addition, the ITC agreed to hold a public hearing on these issues and to hear from third parties regarding the effect that any potential remedy granted by the ITC would have on the public interest. The ITC invited government agencies, public-interest groups, and interested members of the public to provide submissions and to make oral presentations regarding the remedy and the public interest.

The ITC held a two-part hearing on November 17, 2016. The first part of the hearing was limited to the parties in the 951 Investigation, who presented arguments on the issues of laches, contributory infringement and the public interest. The second part of the hearing featured non-party witnesses regarding the public interest. In all, twelve witnesses who opposed the imposition of an Exclusion Order appeared before the ITC during the second part of the hearing, and four witnesses supported the issuance of the LEO.

After considering the submissions and the testimony presented at the hearing, the ITC issued the Notice, determining that Umicore infringed the Asserted Patents and that a LEO was an appropriate remedy in view of the public interest concerns. The ITC also determined that a bond in the amount of three percent of the entered value of the accused products will be required to allow the temporary importation of products that are subject to the LEO during the 60-day period of presidential review of the ITC’s Final Determination. Both the LEO and the bond will be enforced by United States Customs and Border Protection. In the event the Final Determination is unchanged, Umicore may appeal the ITC’s determination to the United States Court of Appeals for the Federal Circuit. 

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.

© Akin Gump Strauss Hauer & Feld LLP | Attorney Advertising

Written by:

Akin Gump Strauss Hauer & Feld LLP

Akin Gump Strauss Hauer & Feld LLP 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 info@jdsupra.com. 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: info@jdsupra.com.

- 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.