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Foster, Murphy, Altman & Nickel, PC
ITC Section 337 Litigation

The value and significance of intellectual property (IP) in international trade and competition are accelerating at stunning speed. The evidence is everywhere, from newspaper headlines of major semiconductor companies giving up wafer fabrication altogether in favor of outsourcing, licensing, and design, to record monetary judgments or injunctions in patent cases stopping a foreign competitor dead in its tracks. Long gone are the days when intellectual property issues were secondary considerations in the development of a competitive corporate strategy. They now lie at the very heart of business strategy and are no longer limited by national boundaries.

Just as the terms of business competition have become increasingly international, so have intellectual property litigation and strategy development. Foster, Murphy, Altman & Nickel is at the forefront of those who practice at the intersection of intellectual property and international trade law. The group brings together lawyers with deep experience in a variety of related bodies of law and litigation forums, as well as that gained from serving in senior government positions.

Strategic Counsel

Foster, Murphy, Altman & Nickel has one of the strongest and most experienced Section 337 practices in the country, having litigated approximately 130 Section 337 cases in private practice, which represents close to 20 percent of the cases filed since 1974, when Section 337 took its current form. The Firm is nationally recognized and ranked by Chambers & Partners, Managing Intellectual Property and Legal 500, and is considered a go-to firm for Section 337 experience and guidance. Because of the breadth and depth of our lawyers' experience, we are able to provide clients and co-counsel with real value in the form of strategic guidance on their matters.

For more than 25 years, our attorneys have been engaged in all aspects of Section 337 investigations, including preparing complaints; engaging in extensive and concentrated discovery; handling expedited motions; appearing in hearings before numerous administrative law judges; briefing issues of violation and remedy to the U.S. International Trade Commission (ITC); and engaging in appellate review. Our team has represented domestic and foreign companies pursuing and defending against Section 337 relief in cases involving all types of unfair acts, including patent, trademark, copyright and/or trade dress infringement, as well as claims of false advertising, trade secret misappropriation, and gray market goods. These cases have covered the gamut of industries and technologies, including semiconductor chips, consumer goods, chemicals, industrial machinery, communication devices, and computer software. As most Section 337 investigations involve patent infringement, our lawyers often collaborate and work effectively as co-counsel with our clients' existing patent counsel in these fast paced investigations, providing much needed expertise in assisting these firms and clients through the rigorous demands of a Section 337 investigation.

Our lawyers are experienced in IP litigation in the United States and internationally, including litigation in the federal district courts. The benefits of that collective experience and continuous involvement in the field are numerous. In many cases, disputes are high-stakes and time is of the essence. Knowing what works and what does not, as opposed to learning it on the job, can make an enormous difference in both the outcome and the cost of litigation.

Section 337 Investigations

Under 19 USC Section 337, an intellectual property owner may seek remedies before the ITC for unfair practices related to imports. Unfair practices that are actionable under Section 337 include infringement of U.S. patents, trademarks, copyrights, and a variety of other intellectual property rights. The proceedings are expedited, typically leading to a final disposition and remedy within 16 months from the date of filing. The principal remedy, known as an exclusion order, bars importation of all infringing products and is enforced by U.S. Customs and Border Protection. Our lawyers have decades of experience in these actions, having handled over 130 investigations since Section 337 took its current form in 1974.

U.S. Customs Border Enforcement

U.S. Customs and Border Protection is charged with assisting in the border enforcement of U.S. intellectual property rights (IPR) in a variety of contexts, including enforcement of Section 337 orders, trademark and copyright recordation, counterfeiting, and gray market imports. In order to maximize the potential benefit from these resources, our team works with U.S. IPR owners to ensure the most effective implementation of Customs enforcement capabilities. Our lawyers also interact with Customs to avoid or mitigate the adverse effects of such enforcement activities.

Representative Engagements

  • Certain Semiconductor Chips and Products Containing Same, Inv. No. 337-TA-753 (Rambus v. LSI Corp., et al) Representing Respondents LSI and Seagate in a multi-patent infringement Section 337 investigation brought by Rambus. The investigation is currently in the discovery phase.
  • Certain Automated Library Devices, Inv. No. 337-TA-746 (Overland Storage v. BDT, IBM and Dell) Representing the BDT Respondents, one of the largest manufacturers of automated library devices, in a patent-based Section 337 investigation brought by a competitor, Overland Storage. The investigation is currently in the discovery phase.
  • Liquid Crystal Display Devices, Including Monitors, Televisions, and Modules, and Components Thereof, Inv. No. 337-TA- 741/749 (Thomson Licensing SAS v. MStar Semiconductor, Inc., et al) Representing MStar, a manufacturer of controller chips used in display monitors against claims of patent infringement. The investigation is currently in the discovery phase.
  • Underground Cable and Pipe Locators, Inv. No. 337-TA-727 (Radiodetection, Ltd. v. Vivax-Metrotech Corp. and Leidi Supply Ltd.) Successfully represented the Respondents Vivax-Metrotech and Leidi, manufacturers and sellers of underground cable and pipe locators, in a patent-based Section 337 investigation. Our clients obtained a very favorable settlement agreement, which included dismissal of a pending parallel district court action.
  • DC-DC Controllers and Products Containing the Same, Inv. No. 337-TA-698, (Richtek Technology v. Advanced Micro Devices, uPI Semiconductor et al.) Represented Respondents MSI Corp. and Micro-Star International in a patent infringement and misappropriation of trade secrets Section 337 investigation. MSI obtained a very favorable settlement agreement that included the dismissal of pending parallel and related infringement litigation.
  • Bulk Welding Wire Containers and Components Thereof and Welding Wire, Inv. No. 337-TA-686. (Lincoln Global v. Kiswel Ltd., et al) Represented Respondent Kiswel Ltd. in a Section 337 investigation filed by Lincoln Electric and Lincoln Global alleging patent infringement of several patents relating to bulk welding wire or containers of same. Kiswel obtained a favorable settlement agreement that included the dismissal of pending parallel and related infringement litigation in the Northern District of Ohio.
  • Adjustable Keyboard Support Systems, Inv. No. 337-TA-670 (Humanscale Corp. v. CompX International and Waterloo Furniture Components Limited). Successfully represented Respondent CompX in an investigation involving competitors with pending cross-litigation in district court. Following a largely favorable ruling from the Chief Administrative Law Judge ("CALJ"), the International Trade Commission ruled entirely in favor of CompX, finding no violation based on non-infringement of the asserted claims and ruling that the claims were invalid.
  • Personal Computers and Digital Display Devices, Inv. No. 337-TA-606 (Hewlett Packard v. Acer, Inc. et al.). Represented respondent Acer against Hewlett-Packard in a major patent dispute between two of the top sellers of personal computers in the United States. Acer, whose entire line of personal computers and monitors was at risk in this investigation, obtained a favorable settlement.
  • Semiconductor Chips with Minimized Chip Package Size, Inv. Nos. 337-TA-605 and 337-TA-649 (Tessera v. ATI Technologies, et al.): Representing complainant Tessera in two investigations involving patents on seminal technology in modern integrated circuit manufacture. These related cases were brought against numerous chip manufacturers and package assemblers. In the 605 investigation, the Commission found that every respondent, including industry leaders like Qualcomm, Motorola, and ST Micro, violated Section 337 and issued an exclusion order and cease and desist orders prohibiting certain respondents (and their affiliates) from importing and/or selling the infringing chips. Upon issuance of the Commission's decision, Motorola took a license to maintain continued access for its downstream products to the U.S. market. The 649 investigation was dismissed to pursue damages in district court litigation in lieu of the ITC investigation.
  • Unified Communication Systems, Inv. No. 337-TA-598 (Microsoft v. Alcatel Lucent). Represented respondent Alcatel in one of its many patent infringement disputes with Microsoft. The Section 337 investigation involved unified communication systems designed to better integrate email, voicemail, scheduling and other sophisticated communications capabilities. The ITC ruled in Alcatel's favor on each asserted patent, finding no violation based on non-infringement and/or patent invalidity.
  • Universal Transmitters for Garage Door Openers, Inv. No. 337-TA-497 (Chamberlain v. Skylink Technologies, et al.). Represented respondent Skylink to secure a favorable summary determination on the merits that it had not violated Section 337 by defeating Chamberlain's assertion that Skylink had violated the Digital Millennium Copyright Act (DMCA). The investigation was the first at the ITC to involve the DMCA.
  • Microlithographic Machines, Inv. No. 337-TA-468 (Nikon v. ASML). Represented complainant Nikon in a fully contested investigation against respondent ASML. Nikon ultimately obtained a settlement of $145 million, in resolution of the Section 337 investigation and district court litigation, while the Section 337 decision was on appeal to the Federal Circuit.
  • Adjustable Keyboard Support Systems, Inv. No. 337-TA-670 (Humanscale Corp. v. CompX International and Waterloo Furniture Components Limited). Representing respondents in investigation in the discovery phase.
  • Sucralose, Inv. No. 337-TA-604 (Tate & Lyle v. various foreign companies). Represented complainant Tate & Lyle in a multiple patent-based Section 337 investigation against several foreign sweetener manufacturers accused of violating Tate & Lyle's patents covering the process for making sucralose. The ITC found a violation against certain defaulting respondents and issued limited exclusion orders.
  • GPS Chips, Inv. No. 337-TA-596 (SiRF Technologies v. Global Locate) and Imv. No. 337-TA-602 (Global Locate v. SiRF Technologies). Representing SiRF as complainant in an investigation involving integrated circuit technology for global positioning systems and also as respondent in a counter-investigation involving similar basic technology.
  • Wireless Communication Devices and Equipment, Inv. No. 337-TA 577 (Samsung v. Ericsson) and Inv. No. 337-TA-583 (Ericsson v. Samsung). Represented complainant and counter-respondent Samsung in a major dispute between two of the leading players in the mobile telephone equipment industry.
  • Inkmarkers, Inv. No. 337-TA-522 (Sanford v. Beifa, et al.). Represented respondent Ningbo Beifa in a case involving the trade dress of its ink marker products. The action was ultimately settled.
  • Flash Memory Device, Inv. No. 337-TA-552 (Toshiba v. Hynix) and NAND Flash Memory Devices, Inv. No. 337-TA-553 (Hynix v. Toshiba). Represented complainant Toshiba in its investigation against respondent Hynix for infringement of its patents. We also represented Toshiba as a respondent in a retaliatory investigation commenced thereafter by Hynix. Those cases were resolved post-trial in a favorable settlement.
  • Display Controllers and Products Containing Same, Inv. No. 337-TA-481/491 (Enforcement) (Genesis Microchip v. MStar Semiconductor, et al.). Represented respondent MStar Semiconductor in an enforcement proceeding commenced by Genesis.
  • Power Adaptors, Inv. No. 337-TA-513 (Mobility Electronics v. Formosa Electronics). Represented complainant Mobility Electronics in a patent action involving universal power adapters for consumer electronic products. The action was terminated by Mobility in favor of a parallel proceeding.
  • Systems for Detecting Computer Viruses/Worms, Inv. No. 337-TA-510 (Trend Micro v. Fortinet). Represented respondent Fortinet in both a patent action and a subsequent enforcement action commenced by Trend Micro. The action was ultimately resolved by way of settlement.
  • Signature Capture Transaction Devices, Inv. No. 337-TA-504 (NCR v. Ingenico, et al.). Represented complainant NCR in an action involving infringement of NCR's patents covering point of sale terminals and helped NCR secure a favorable settlement.
  • Automated Mechanical Truck Transmission Systems, Inv. No. 337-TA-503 (Eaton v. ZF Meritor, et al.). Obtained a limited exclusion order and cease and desist order for complainant Eaton against respondents in a patent infringement investigation involving one of Eaton's control method patents for medium and heavy-duty truck transmissions. We also represented Eaton in subsequent proceedings before the ITC, Court of International Trade, and United States Court of Appeals for the Federal Circuit.
  • Home Vacuum Packaging Machines, Inv. No. 337-TA-496 (Tilia v. The Holmes Group, et al.). Represented complainant Tilia in the only fully litigated temporary relief (Temporary Exclusion Order) proceeding to be brought before the ITC in the past 14 years, and thereafter secured a settlement that favorably terminated the action prior to a hearing on permanent relief.
  • Breath Test Systems for the Detection of Gastrointestinal Disorders, Inv. No. 337-TA-495 (Meretek Diagnostics v. Oridion, et al.). Represented complainant Meretek in an action involving devices used to test patients for a bacteria that causes ulcers. The cases terminated with the entry of consent orders against the respondents.
  • Semiconductor Devices, Inv. No. 337-TA-472 (Toshiba v. Samsung). Represented Toshiba as a complainant against Samsung, with the case ending in an early settlement favorable to Toshiba.
  • Semiconductor Memory Devices, Inv. No. 337-TA-470 (Mosel Vitelic v. Hitachi). Represented Mosel Vitelic, a Taiwanese company, as a complainant against Hitachi Corp., with the case ending in an early settlement favorable to Mosel Vitelic.
  • Set Top Boxes (Interactive TV Guide), Inv. No. 337-TA-454 (Gemstar et al. v. Echostar et al.). Represented respondent Echostar in defending claims of infringement and in asserting a defense of patent misuse. The ITC found in favor of our client, Echostar, deciding not to find a violation of Section 337.
  • Excimer Laser Systems, Inv. No. 337-TA-419 (VISX v. Nidek). Represented respondent Nidek against charges of infringement by VISX related to equipment used for corrective laser eye surgery. The ITC found no violation of Section 337 on multiple grounds. The press widely reported a sharp drop in VISX's share price after the ITC's decision.
  • Disposable Cameras (Lens-Fitted-Film Packages), Inv. No. 337-TA-406 (Fuji Photo Film v. Achiever, et al.). Represented Fuji against imports from multiple sources, primarily located in China, securing a general exclusion order.
  • Hardware Logic Emulators, Inv. No. 337-TA-383 (Quickturn v. Mentor Graphics et al.). Represented complainant Quickturn in a case in which the ITC found a violation of Section 337 and issued an exclusion order against Mentor.
  • Human Growth Hormone, Inv. No. 337-TA-358 (Genentech v. Novo Nordisk et al.). Represented complainant Genentech in a patent case directed at stopping infringing imports of HgH from competitors trying to enter the U.S. market.
  • Cell Phones, Inv. No. 337-TA-297 (Motorola v. Nokia). Represented Nokia in a high profile case involving early cell phones, securing a settlement favorable to Nokia that permitted imports unabated.
  • DRAMs, Inv. No. 337-TA-242 (Texas Instruments v. NEC et al.). Represented respondent NEC in defending a case in which the ITC found no violation of Section 337 by NEC. Eventually, TI and NEC settled.
  • Optical Waveguide Fibers, Inv. No. 337-TA-189 (Corning v. Sumitomo Electric Industries). Represented respondent Sumitomo Electric in defending against a complaint filed by Corning. The ITC reached a determination of no violation of Section 337.
  • Burn Beds (Fluidized Supporting Apparatus), Inv. No. 337-TA-182/188 (Support Systems Int'l v. UHI Corp.). Represented complainant Support Systems (337-TA-182) and obtained a preliminary determination of violation for, while simultaneously successfully defending against a charge of infringement by UHI in a counter Section 337 action (337-TA-188). The cases settled very favorably for Support Systems.
  • Antibody Assays (Abbott Labs v Tosoh Medics, (N.D. Ill.)). Represented defendant Tosoh Medics against claims of infringement by Abbott in a district court case related to technology for antibody assays. Abbott withdrew the complaint after validity problems were uncovered in discovery.

Rankings and Recognition

  • Chambers Global: International Trade: Intellectual Property (Section 337) (United States), 2009 - 2011
  • Chambers Global: International Trade/WTO (Global), 2009
  • Chambers USA: International Trade: Intellectual Property (Section 337) (National), 2008 - 2010
  • Managing Intellectual Property World IP Survey: Tier 1 - ITC (United States), 2011
  • Legal 500: Intellectual Property: Patent Litigation - International Trade Commission, 2009 - 2010

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