Five Questions You Should Ask Yourself About the Section 337 Complaint That Was Just Filed Against You

​You just found out your company has been sued in the ITC under Section 337 (19 U.S.C. § 1337).  Here are the first five questions you should ask yourself when reading the Complaint.

1. Is Complainant’s counsel ready for the ITC?  The first page of a Section 337 complaint will identify the law firm(s) and lead attorneys representing the Complainant.  19 C.F.R. § 210.12(a)(1).  A complainant represented by counsel inexperienced in the ITC is headed for trouble – trouble you can exploit if you retain experienced counsel.  Simple internet searches can tell you a lot about Complainant’s lawyers’ experience in the ITC, with the relevant technology, and with the Complainant itself.  A savvy respondent will use this information to select its counsel and to develop early litigation strategies.
2. How strong are Complainant’s infringement allegations?  Unlike complaints filed in U.S. district courts, patent infringement complaints filed in the ITC must show, usually through claim charts, how each accused product is allegedly covered by each asserted independent claim.  19 C.F.R. 210.12(a)(9)(viii).  With certain types of accused products, Respondents can use this information to gauge the strength of Complainant’s infringement allegations.  These claim charts may also identify the specific accused component, which may frame the respondents’ roles in the investigation (e.g., upstream component supplier, OEM, seller), whether indemnification provisions will come into play, and the types of information the Respondent should begin collecting to support its defenses.
3. Should I submit a public interest statement?  The complaint must include a statement regarding the effect the requested relief may have on the public interest.  19 C.F.R. § 210.8(b).  Respondents may submit their own public interest comments, which are due 8 calendar days after publication of the notice of the filing of the complaint.  Id. § 210.8(c).  These comments may ask the Commission not to institute the Investigation at all (an extremely unlikely outcome; see ITC Docket No. 337-2919), to place the Investigation into the ITC’s pilot program for early resolution of case-dispositive issues (still very unlikely; see ITC Docket Nos. 337-TA-949, -874); or to order the ALJ to take discovery and issue a recommended determination regarding the public interest (a more likely outcome; see 19 C.F.R. § 210.50(b)(1)).  Respondents should carefully consider t​he merits of their public interest arguments, however, before investing in the drafting and submission of public interest comments.
4. Am I licensed to the asserted patents?  The complaint must list all licensees to each asserted patent.  19 C.F.R. § 210.12(1)(9)(iii).  Respondents (or their counsel if the licensees are confidential) should carefully study these lists to determine whether they are licensed to the asserted patents, perhaps through membership in a defensive patent aggregator, or the Complainant’s assertion rights are exhausted as to the Respondent because the Respondent purchases an accused component from a licensee.
5. What has happened in other litigation involving these patents?  The complaint must summarize any litigation involving the asserted patents.  19 C.F.R. § 210.12(a)(5).  Respondents should carefully review the records of any such cases to look for positions taken by the courts, litigants, or the Patent Office that may advance any defense the Respondent pursues in the ITC.

This article was originally published in Managing Intellectual Property in August 2015.