cadwalader, wickersham & taft llp new york london charlotte washington beijing may 8, 2008...

Cadwalader, Wickersham & Taft LLPNew York London Charlotte Washington Beijing

April 18, 2023

SECTION 337 IP LITIGATION AT THE U.S. INTERNATIONAL TRADE COMMISSION

Presented to:Colorado Bar Association, IP Section

Presented by:Kent R. Stevens

Cadwalader, Wickersham & Taft LLP 2

Overview of Presentation

• Background on ITC as an institution

• Advantages/Disadvantages of ITC Litigation

• Substantive Elements of a Section 337 Case

• Procedural Overview of a Section 337 Case

• Trends

• Time Permitting: The Downstream Remedy in Broadcom v. Qualcomm


Background on the ITC

• Independent federal agency

• Responsible for international trade investigations, Harmonized Tariff Schedule; studies and reports for the President, USTR and the Congress

• Relatively small agency (60 million dollar budget, 350 employees); Section 337 as 17% of activity

• Six Commissioners appointed by the President approved by Senate


United States International Trade Commission (cont.)

U.S. International Trade Commission Organization

Source: www.usitc.gov

Office of theAdministrative

Law Judges

Office of theDirector ofOperations

Office of the General

Counsel

Office ofUnfairImport

Investigations

Office ofthe Secretary

COMMISSION

Section 337 responsibilities

Non-Section 337 activity

Chairman



Section 337 cases assigned to Administrative Law JudgesCareer civil servants; independence and authority per the Admin. Proc. Act

Procedures akin to Federal Civil Procedure and District Court practiceProcedural rules similar to Fed. Rules (19 C.F.R. Chapter II, Part 210)Judges Ground Rules provide key guidance, reflect substantial experience

Trials akin to District Court bench trials

Exception: ITC Judges follow but not bound to Federal Rules of EvidenceITC Judges more likely to admit hearsayITC evidentiary record typically voluminous

ITC Judges render “Initial Determinations” that are subject to full ITC review

ITC Judges will render an opinion on all issues

ITC Administrative Law Judges



• Honorable Paul J. Luckern

– Georgetown (J.D. 1959)

– B.S. Degree Chemistry

– M.S. Degree Organic Chemistry (Cornell)

– Patent Examiner (1956 – 1960)

– ALJ since 1984

ITC Administrative Law Judges (cont.)



• Honorable Charles E. Bullock

– Appointed as of May 5, 2002

– Since 1996 was an ALJ for US EPA

– George Washington University (J.D. 1971)

– Political Science B.A. from Bucknell University (1968)




• Honorable Carl C. Charneski

– Appointed as of April 16, 2007

– Previously served as ALJ at the U.S. Environmental Protection Agency from 1995 until his ITC appointment; ALJ at U.S. Social Security Administration from 1994 to 1995; Trial Attorney with the Mine Safety and Health Administration of the U.S. Department of Labor from 1991 to 1994 and appellate attorney with that agency from 1988 to 1991; Counsel to Commissioner L. Clair Nelson at the Federal Mine Safety and Health Review Commission from 1983 to 1988; Attorney in Office of the General Counsel at the Federal Mine Safety and Health Review Commission from 1977 to 1983

– St. John’s University School of Law (J.D.)

– St. Francis College (B.A.)




• Honorable Theodore R. Essex

– Appointed in Fall 2007

– Previously served as ALJ at the Office of Medicare Hearings and Appeals in Cleveland, Ohio from November 2006 until his ITC appointment

– Consultant to Compensation and Pension Service of Department of Veterans Affairs in Washington, D.C. from 2005 to 2006

– From 1985 to 2005, served in a variety of positions with U.S. Air Force

– Ohio State University (J.D.)

– Miami University in Oxford, Ohio (B.A.)




• Advises ITC on whether to commence an investigation

– Offers informal pre-filing advice to Complainant on compliance with pleading rules

• Participates as an independent party in an investigation on behalf of the public interest

– Serves discovery

– Takes positions on motions

– Examines witnesses at depositions and trial

– Takes position on merits of case

ITC Office of Unfair Import Investigations (“OUII”)



• Why the ITC?

– Speed

– IP Expertise

– Broad Injunctive Remedies

– Other Benefits (i.e., no counterclaims)



• Speed

– Statutory responsibility to complete cases quickly

– Statutory/rule responsibility to adhere to target dates for completion

Strategies Performance IndicatorsFY 2005 Performance

GoalsFY 2006 Performance

Goals

1. Meet statutory and key administrative and court deadlines, conclude section 337 investigations expeditiously, and reduce the average time to conclude ancillary proceedings

a. Investigations are instituted, target dates are set, and court briefs are filed, on time (OUII/GC)

b. Final IDs and final determinations are issued on their target dates (GC)

a. 100% of actions occur on time

b. 100% of actions occur on time

a. 100% of actions occur on time

b. 100% of actions occur on time

ITC Budget Justification FY2006 at 85



• Speed (cont.)

– Investigation commenced within 30 days after Complaint filed

– Nearly all 12(b) issues resolved by ITC’s 30-day preliminary investigation

– ITC serves Complaint and Notice of Investigation (no delays)

– Protective Order issues immediately

– Discovery commences immediately



• Speed (cont.)

– Judge conducts initial discovery conference

– Discovery/motions proceed on short deadlines

– Judges available to resolve discovery disputes

• No competing civil or criminal docket

– Average Time To Trial: about 10 months



• IP Expertise

– Statutory responsibility and budget to conduct IP investigations for domestic industries

– ITC Judges as IP comfortable

• Approximately 9/10 cases are patent cases

– ITC has internal review process

• Multiple attorneys involved in determining whether to adopt or modify Judge’s opinion before issuance of final ITC opinion

– ITC defends its own opinions at the Federal Circuit

– Result: High Percentage of ITC Decisions Affirmed by Federal Circuit



• Broad Injunctive Relief

– The Exclusion Order

• Directs U.S. Customs Service to deny entry at all U.S. ports

• Framework for Customs Service seizure and forfeiture

• An In Rem Order – Functions without regard to personal jurisdiction

• Can cover downstream products that contain an infringing component

• ITC procedures available to Complainant to broaden Customs enforcement (advisory opinion procedures, enforcement procedures, modification procedures)



• Broad Injunctive Relief (cont.)

– The Limited Exclusion Order

• Issued by ITC in the typical one-on-one case

• Bars importation of the products of the Respondent in the ITC case

– The General Exclusion Order

• Bars importation of infringing products from all sources (even sources that were not parties to the case) See, e.g., Ink Cartridge Investigation No. 337-TA-565 (October 19, 2007)

• Highly coveted; higher statutory standard for issuance

– Typically requires proof of widespread infringement; ease of entry into the business; and difficulty of identifying source of infringing product (the “Spray Pump” factors)



• Broad Injunctive Relief (cont.)

– Downstream Product Remedies

• Excludes infringing product and all downstream products

– Analysis of nine factors (the “EPROMs factors”)

– Balances Complainant’s interest in full protection against burdens on third-parties and potential disruption of legitimate trade



• eBay Standard Not Applicable

• Supreme Court opinion on standard for granting injunctive relief eBay, Inc. v. MercExchange, LLC, 126 S.Ct. 1837 (2006)

• Commission finds eBay not applicable to Section 337 cases

– Tariff Act of 1930 contains legislative determination that there is an inadequate remedy at law for unfair acts in import commerce

– Amendments to remove injury requirement confirm that irreparable harm need not be proven

– Balance of harms and public interest analysis as part of ITC analytical framework

– Importation activity governed differently under the trade laws

Broad Injunctive Relief



• Other Tangible Benefits of ITC Actions

– No counterclaims

• Case focused on allegations in Complaint and ITC Notice

• ITC directed by statute to not consider counterclaims

• Counterclaims, if any, must be removed to District Court

– Nationwide subpoena power

– No issues with personal service of Complaint

– No laches defense


Disadvantages of ITC

• Rarely an early Markman decision

• No money damages

• President can disapprove on public policy grounds


ITC and District Court

• Often a parallel District Court case is filed

• Defendant can stay case as a matter of right

• ITC case will proceed to conclusion

• District Court stay can be lifted and case tried again, for money damages

• Commission determination on infringement and validity is persuasive but not res judicata


• Importation• Infringement• Domestic Industry

Section 337: Substantive Elements

• Substantive Elements Pleaded Specifically

– (fact pleading rather than notice pleading)

– (19 CFR § 210.12)

• Pleading rules require other details

– (e.g., claim charts, description of related litigation, copies of prior art)

• Respondent must also plead certain matters in detail

– (e.g., identity of manufacturer; manufacturing capacity)


Substantive Element: Importation

• Importation Requirement

– Accused products must be imported or sold off-shore for importation into U.S.

– ITC jurisdiction extends to sales in U.S. of imported products

• Case can be brought against distributors and distribution in the U.S.

• Complaint must contain solid evidence of importation

U.S. Port of entrySource: Customs Website

“The following are unlawful] -- “The importation into the United States, the sale for importation, or the sale within the United States after importation” [infringing products]. 19 U.S.C. §1337(a)(1)(B)


Substantive Element: Importation (cont.)

• Broad leeway in satisfying the “Importation” element

– Imported component that induces infringement

– Made in U.S.A., exported and re-imported (mequiladoro plants)

– Product imported as component within downstream product

– Process practiced in U.S., product exported and re-imported

– Contract sale for importation into U.S., but not yet imported

Importation element satisfied by importation of a single unit(advance showing at U.S. tradeshow)


Substantive Element: Infringement

• Standard patent infringement proof

– Direct infringement

– Induced infringement

– Contributory infringement

– Doctrine of equivalents

– Product of patented process - No § 271(g) defense


• Judges Luckern and Charneski

– No formal Markman procedure

– Construe claims at Hearing or summary determination decisions

• Judge Bullock

– Has had a few Markman hearings

– The few Markman hearings have been based on briefing and attorney argument, but has not precluded testimony and would leave open the door to it. Bullock is in favor of a quick procedure.

– Still has an open mind on claim construction procedures

– Finds helpful in limiting scope of proceeding

ALJ Claim Construction Practices




• Judge Essex

– Only Judge with Ground Rule on Markman Hearing (Ground Rule 5A)

5A. Markman Hearing on Claim Construction

“If the Administrative Law Judge determines that a Markman hearing would be beneficial to the investigation, the Administrative Law Judge may conduct a Markman hearing.....”


• Domestic Industry Requirement

– Section 337 as an international trade statute to protect U.S. industry

– Complainant must demonstrate that there exists an industry in the U.S. exploiting the patent-in-suit

– Two elements: (1) “Economic prong,” and (2) “Technical prong”

Substantive Element: Domestic Industry

“. . .only if an industry in the United States, relating to the articles protected by the patent, copyright, trademark, mask work or design concerned, exists or is in the process of being established.” 19 U.S.C. § 1337(a)(2)


Substantive Element: Domestic Industry (cont.)

• Economic Prong

Asks: Is there an industry in the U.S. to protect?

• Technical Prong

Asks: Does the U.S. industry practice the patent?


Overview of an ITC Patent Case

• ITC Remedies

– Exclusion of products from U.S. – enforced by Customs

– Cease and desist orders – enforced by ITC with civil penalties

– No money damages

AdministrativeLaw Judge

CommissionFederal Appeals

Court

Initial Decisionon merits

Final Decision

Orders remedy

Appellate DecisionDeferential on remedy issues


Chronology of a Section 337 case

Jan. Feb. Apr.Mar. May June

ITC votes to institute

investigation

ITC servesComplaintand Notice

Discovery served

Judge issuesProtective

Order

Response toComplaint

(domestic parties)

Complaintfiled

Confidentialtreatment

request filed

ITC pre-filingreview ofcomplaint

MandatorySettlementConference

Responseto

Complaint(foreignparties)

File DiscoveryStatement

DiscoveryConference

Judge issuesGround rules

Judge issuesTarget date

Notice of Investigationpublished


Chronology of a Section 337 case (cont.)

Pre-trialconference

TRIAL(2 weeks)

July Aug. Oct.Sep. Nov. Dec. Jan.

Objections toexhibits

Rebuttal exhibits

Pre-trialbriefs

Tutorial

Post-trials Briefs

Post-trial Findingsof Fact

Reply Briefs

Objections to Findings

Reply Findings

June

Expert Reportserved

Expert Rebuttalserved

Expertidentified

Prior Artnotice

Motion(s) forsummary

determination

Cut-offs for:

Objections torebuttal exhibits

- Sum. Det. Motions;- Fact Discovery; and- Expert Discovery


Sample Chronology of a Section 337 case

Jan. Feb. Apr.Mar. May June

InitialDetermination(after 4:00 pm)

Petitions forReview

Reply toPetitions

CommissionNotice on

Review

Briefs on Remedy, PublicInterest, Bonding

(per date in ITC notice)

FinalCommission

Determination

PresidentialReview

CAFCAppeal


“Appeal” of Initial Determination

• Following petitions filed by either party, the Commission will decide whether to review the Initial Determination

• If the Commission elects to review, it may request additional briefing

• Following review the Commission may: reverse the Initial Determination; reverse it in part; remand for further hearing and/or briefing

• The Commission ultimately issues a Final Determination

• Remedies enforceable after issuance of Final Determination


ITC Public Interest Review

• The ITC’s Public Interest Review of Proposed Remedies

– ITC required to take account of public interest before issuing remedial order

– Cited by ITC when declining to exclude downstream products

– Public interest can block relief (rare)

The Commission shall direct exclusion of the articles from entry “unless, after considering the effect of such exclusion upon the public health and welfare, competitive conditions in the United States economy, the production of like or directly competitive conditions in the United States, and United States consumers, it finds that such articles should not be excluded from entry.” 19 U.S.C. § 1337(d)


ITC’s Public Interest Review

• Statutory duty to consult with other agencies during “the course of each investigation”

• ITC serves Notice of Investigation on:

– FTC (Director, International Antitrust)

– Justice (Foreign Commerce, Antitrust Division)

– HHS (National Institute of Health)

– Customs (IPR Branch)

• ITC serves certain ID’s on agencies

• Agencies may seek to intervene before ALJ


Presidential Review (USTR review)

• 60-day review period

• President may disapprove of an ITC order “for policy reasons”

• Very rare: Cited most recently to disapprove of order directed to downstream products

• Product may be imported during 60 day period under bond

– Rarely invoked

– Bonds typically 100% of entered value


Presidential Review

• Trade Policy Committee

– Chaired by USTR

– ITC as non-voting member

• Trade Policy Staff Committee

• Input via Hill, Agencies, Parties, Public

• Remedy modification recommendations


The Presidential Disapproval Power Has Been Exercised on Only Five Occasions

• Welded Stainless Steel Pipe and Tube, Inv. No. 337-TA-29,43 Fed. Reg. 17,789 (Apr. 22, 1978)

• Certain Multi-Ply Headboxes, Inv. No. 337-TA-82,46 Fed. Reg. 32,361 (June 22, 1981)

• Molded-In Sandwich Panel Inserts, Inv. No. 337-TA-99,47 Fed. Reg. 29,919 (July 9, 1982)

• Certain Alkaline Batteries, Inv. No. 337-TA-165,50 Fed. Reg. 1655 (Jan. 11, 1985)

• Certain Dynamic Random Access Memories,Inv. No. 337-TA-242, 52 Fed. Reg. 46,011 (Dec. 3, 1987)


Appeals of ITC Final Determination

• Appeals to U.S. Court of Appeals for Federal Circuit

• ITC named as Appellee; defends own decisions

• ITC Final Determinations often limit issues for appeal



Increasing Trend for ITC Section 337 Investigations

10 1012 11

1512 12

32

16

21

2725

3431

50

0

5

10

15

20

25

30

35

40

45

50

1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008

Litigation in the International Trade Commission

Source: ITC Annual Reports(fiscal year October to October)1 Projected based on numbers for first and second quarters FY 2008.

1

projected >


• www.usitc.gov

– Electronic Docket

• Recent 337 Complaints

• 337 Investigational History

• Outstanding Exclusion Orders

– Electronic Document Information System (EDIS) and Electronic Docket

• 19 U.S.C. §1337

• 19 C.F.R. § §201-210

• Each Judge’s Ground Rules and Orders for a particular investigation

USITC Resources


Appendix

• The Broadcom/Qualcomm Case and the Downstream Remedy


Procedural Background: Proceedings before ALJ

• ALJ bifurcates proceedings (issues on merits, issues on remedy)

• ALJ allows certain manufacturers and network operators to intervene on remedy issues (Motorola, Samsung, Kyocera, Samsung, Verizon and Sprint Nextel)

• ALJ finds infringement of claims of one patent

• ALJ recommends exclusion of accused Qualcomm chips

– Recommends against remedy against downstream products


Procedural Background: Proceedings before ITC

• Commission affirms ALJ’s infringement determination

• Commission holds two day hearing on remedy issues

• Commission receives testimony and submissions from parties, intervenors, members of Congress, FCC, FEMA, the District of Columbia, academics, public safety associations, and other interested groups


Procedural Background: Commission’s Determination

• Majority:

– Exclusion of accused Qualcomm chips and

– Exclusion of “downstream handheld wireless communications devices, including cellular telephone handsets, that contain the infringing chips and that are models not being imported into the United States for sale to the general public on or before June 7, 2007”

• Two Commissioners dissented


Procedural Background: Post Commission

• Presidential Review process per 19 U.S.C. § 1337(j)

• USTR announces Commission order will not be disapproved

• Appeals to Federal Circuit

• Appellants include:

• Status: Pending before the Federal Circuit

Kyocera Motorola Samsung LG Electronics Sanyo Fisher T-Mobile

ATT Mobility Sprint Nextel Pantech UT Starcom High Tech Shenzhen Huawei

RIM Palm Foxcomm Casio Hitachi


Commission’s Analytical Framework the Downstream Issue

• First: Consider a remedy that excludes all downstream products

– Analysis of nine factors (the “EPROMs factors”)

• Balances Complainant’s interest in full protection against burdens on third-parties and potential disruption of legitimate trade

• Second (contingent factor): Fashion alternative remedy if relief against all downstream products deemed inappropriate.

• Third: Apply statutory public interest factors


Factor 1: Comparative Value

• “The value of the infringing articles compared to the value of the downstream products in which they are incorporated”

– Commission Opinion: “the value of the infringing components relative to the targeted downstream products, both in terms of the monetary value of the components and the importance of the components to the operation of the downstream products in which they are incorporated”

– Commission declines to consider value of the patented technology vis a vis the value of the downstream product

– Held: Accused chip as “essential” to handset operation; adds “significant” value

– Factor 1 weighs in favor of downstream exclusion


Factor 2: Party or Third-Parties Products?

• “The identity of the manufacturer of the downstream products, i.e., whether it can be determined that the downstream products are manufactured by the respondent or by a third party”

– Commission Opinion: Factor generally weighs against downstream relief where downstream products manufactured by non-parties

– Policy pronouncement: Commission policy favors naming of parties that are known to or likely to import products believed to contain infringing downstream articles

– Held: Broadcom’s failure to name downstream manufacturers weighs against relief against downstream products but this factor is not given special weight. Factor does not result in automatic denial of downstream remedy


Factor 3: Value of full relief to Complainant

• “The incremental value to the complainant of the exclusion of downstream products”

– Commission Opinion: This factor is often the “compelling factor” when the infringing product is imported only in downstream products

– Commission rejects analysis of sales competition between Complainant and Respondent’s products

– Held: Factor 3 “weighs heavily” in favor of downstream relief


Factor 4: Detriment to Respondents

• “The incremental detriment to respondents of exclusion of such products”

– Commission Opinion: Analysis focused on detriment to respondent’s non-infringing activities; Qualcomm may lose sales of non-infringing chips

– Held: Factor 4 weighs against exclusion of downstream products; actor given “little weight”


Factor 5: Third-Party Burden

• “The burdens imposed on third parties resulting from exclusion of downstream products”

– Commission Opinion: Third parties can be generally grouped according to their “proximity to Qualcomm and the conduct in violation of Section 337”

• Manufacturers

• Network operators

• Vendors of related supplies and services (e.g., Warner Music Group)

– Commission rejects Broadcom argument on failure of third-parties to mitigate harm

– Held: Burdens on third parties weighs heavily against exclusion of downstream products


Factor 6: Non-infringing alternatives?

• “The availability of alternative downstream products that do not contain the infringing articles”

– General Rule: Where alternative downstream products available, this factor weighs in favor of exclusion

– Commission Findings: No alternative products for certain market segments (e.g., 3G EV-DO products)

– Held: Factor weighs heavily against exclusion of downstream products


Factor 7: Non-infringement of products with same HTS number?

• “The likelihood that the downstream products actually contain the infringing articles and are thereby subject to exclusion”

– Commission Opinion: “The central issue with respect to factor 7 is the effect of a downstream exclusion order on products entered under the same HTS number that do not contain infringing chips”

– Commission Finding: Not all phones imported under the HTS number have infringing chips

– Held: Factor weighs “somewhat against” relief against downstream products


Factor 8: Opportunity for evasion?

• “The opportunity for evasion of an exclusion order that does not include downstream products”

– Commission Opinion: Focus is on whether relief directed against the infringing product only (i.e., chips) may become ineffective by subsequent practice of importing the product incorporated into downstream product

– Finding: The pre-existing practice is importation in downstream products

– Held: Factor not germane; inapplicable to the analysisFact that chips are imported in downstream products weighs in Factor 3 (incremental benefit of downstream relief to Complainant)


Factor 9: Enforceability by Customs

• “The enforceability of an order by Customs”

– Generally not dispositive

– Burdens on commerce reduced by certification provision

– Importers may certify to Customs that a product does not contain the accused chip


Commission’s Conclusion on EPROMs Nine Factors

• Consideration of EPROMs factors “as a whole”

• “weigh the complainant’s interest in obtaining maximum protection from all infringing imports against the potential of such relief to harm third parties and disrupt legitimate trade in products that were not found to violate Section 337”

• No rigid formula; no factor necessarily dispositive

• Analysis first applied to the default remedy of exclusion of all downstream products

Commission’s Reasoning on EPROMs Analysis


Summary of EPROM factors applied to the default remedy

Limited

Weighs in Favor Weighs Against Significance

• Factor 1 (value of infringing article vis a vis downstream product).......................................X

• Factor 2 (identity of downstream manuf.).....................................................X

• Factor 3 (incremental value to Complainant).................X

• Factor 4 (incremental detriment to Respondent).....................................................................X

• Factor 5 (burden on third-parties)..................................................................X

• Factor 6 (availability of alternatives)..............................................................X

• Factor 7 (likelihood downstream productContains infringing product)...........................................X

• Factor 8 (opportunity for evasion)............................................................................................X

• Factor 9 (enforceability by customs)........................................................................................X

Conclusions: Burdens to third-parties and unavailability of EV-DO products weigh heavily against relief against all downstream products. Exclusion of all downstream products not appropriate.


Fashioning an Alternative Remedy

• Commission sought alternative remedy that would provide “meaningful relief” yet “substantially ameliorate the burdens imposed on third parties”

• Proposal: Exclude all downstream products, yet exempt certain products to provide for continued sales of EV-DO devices (and WCDMA devices)

• Determination: (1) Exclude all downstream products in particular HTS category (handsets) and (2) exempt from exclusion (or “grandfather”) any model that was being imported into the United States for sale to the general public on or before date of the exclusion order (June 7, 2007)


Public Interest Analysis

• Commission examines the proposed remedy against public interest considerations

• Analysis limited to the public interests enumerated in the statute (19 U.S.C. § 1337(d))

– The public health and welfare;

– Competitive conditions in US economy;

– Production of like or directly competitive articles in US; and

– US consumers


Public Interest Analysis (cont.)

• Analysis involves a balancing of the patentee’s rights and the public interest in IP enforcement against the statutory public interest factors

• Statue directs that the remedy should be issued except where public interest concerns are “so great as to trump the public interest in enforcement of intellectual property rights”

• Conclusion: Public interest concerns do not preclude issuance of the proposed exclusion of downstream products

• Approach advocated in concurring and dissenting opinions


Key Points: ITC Authority to Issue Limited Exclusion Orders Cover Products of Non-parties

• Intervenors’ position:

– Section 337(d)(2) limits ITC authority to exclude non-party products

• “[t]he authority of the Commission to order an exclusion from entry of articles shall be limited to persons determined by the Commission to be violating this section”

– Section 337(d)(2) as required to bring statute into compliance with GATT “national treatment” requirements per GATT panel finding


Other Key Points: ITC

• Commission’s conclusions re statutory authority:

– Statute directs the Commission to exclude “the articles concerned”

– Violation determination focused on specific chips; remedy does not extend beyond products containing the specific infringing articles

• Section 337(d)(2)

– “. . .the authority. . . .shall be limited. . .” relates to General Exclusion Orders

• Statutory command that the Commission “shall” exclude contains no exception for downstream products

• Commission concludes it has authority to exclude non-party downstream products


Other Key Points: The Default Remedy Against All Downstream Products

• Commission “presumption” of exclusion of all downstream products

• [w]e generally exclude all downstream products containing the infringing chips, unless a contrary result [is] counseled by our evaluation of the EPROMs factors of the statutory public interest considerations”


Other Key Points: eBay Standard Not Applicable

• Supreme Court opinion on standard for granting injunctive relief eBay, Inc. v. MercExchange, LLC, 126 S. Ct. 1837 (2006)

• Commission finds eBay not applicable to Section 337 cases

– Tariff Act of 1930 contains legislative determination that there is an inadequate remedy at law for unfair acts in import commerce

– Amendments to remove injury requirement confirm that irreparable harm need not be proven

– balance of harms and public interest analysis as part of ITC analytical framework

– importation activity governed differently under the trade laws

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