Desmarais LLP attorneys have participated in dozens of International Trade Commission (“ITC”) investigations, most of which have gone through an evidentiary hearing before one of the ITC’s Administrative Law Judges (“ALJs”). Those cases have spanned rights from patents to trade secrets and technologies as diverse as warehouse automation robotics, medical devices for dermatology and dentistry, semiconductor manufacturing, and Botox formulations. Through our varied and deep experience, we are familiar with the ALJs and the Office of Unfair Import Investigation Staff (“OUII”) at the Commission, well-versed in the ITC’s unique procedural requirements and accustomed to the speed of ITC investigations, and experienced with how those investigations interplay with District Court and PTAB proceedings. Desmarais LLP attorneys have been and remain committed to the ITC, having been members of and serving on the board of the ITC Trial Lawyers Association.
Desmarais LLP attorneys have represented all types of parties in the ITC as well. The procedural mechanisms of the ITC provide an efficient and effective means to address widespread infringement, and we have represented ITC complainants seeking to enforce their intellectual property against a primary competitor, or in some cases, many industry competitors. In that role, our lawyers have successfully obtained hard-to-get general exclusion orders and represented the first ITC complainant to successfully navigate and win a demanding 100-day proceeding that could have derailed the matter before substantive discovery even started. On the other hand, we have also successfully represented respondents who have been brought to the ITC by patent holders seeking to keep their competitor’s products out of the United States to maximize their market share or use the threat of an exclusion order as leverage in licensing negotiations.
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Representative Matters
For the Complainant
Desmarais LLP attorneys secured a victory at the ITC for Sun Pharma (branded side). Sun Pharma alleged that Biofrontera, based in Germany, was importing its RhodoLED XL photodynamic therapy lamp and associated prescription medicine in violation of Sun Pharma’s patent rights. We conducted a one-week evidentiary hearing that resulted in a complete victory for Sun Pharma on patents covering its industry-leading BLU-U photodynamic therapy medical devices and their associated prescription medicine for treating dermatologic conditions.
Desmarais LLP attorneys secured an ITC victory for OPEX Corporation. OPEX alleged that HC Robotics, based in China, and its U.S. distributor, Invata, imported warehouse automation systems that infringed OPEX’s patents embodied in its industry-leading Sure Sort product line. After the hearing, the ITC’s Chief ALJ ruled that HC Robotics and Invata infringed all of OPEX’s asserted patents and violated section 337 of the Tariff Act of 1930. The ITC fully upheld Desmarais LLP’s complete trial victory for OPEX and issued limited exclusion orders and cease and desist orders preventing HC Robotics and Invata from importing, marketing, or selling their competing knock-off products. Recently, based on oral argument presented by Desmarais LLP attorneys, the U.S. Court of Appeals for the Federal Circuit affirmed the ITC’s ruling and Desmarais LLP’s victory for OPEX.
Desmarais LLP attorneys obtained a general exclusion order on behalf Fraen Corporation. Fraen, a manufacturing company outside of Boston, Massachusetts, brought an ITC complaint alleging that numerous LED lighting companies were infringing Fraen’s patents directed towards color mixing light guides and optics used in LED lighting systems. The primary application for these lighting systems is in the entertainment industry. Fraen supplied its optical components to some of the biggest lighting companies in the industry, who were facing competition from infringing products primarily manufactured in China, but supplied into the U.S. through myriad distribution channels. After institution of the investigation, Desmarais LLP attorneys, in concert with Fraen’s in-house counsel, secured favorable licenses with multiple named respondents and proved that a section 337 violation had occurred at summary determination. Desmarais LLP attorneys were then able to secure a general exclusion order from the Commission for Fraen, and after the order went into effect, they assisted Fraen in enforcing the order by preparing materials for and making multiple presentations to officials from U.S. Customs and Border Protection, to help them enforce Fraen’s general exclusion order.
These are just a few of the many examples showing how Desmarais LLP’s ITC Practice Group can help patent owners efficiently use their most valuable intellectual property to protect their U.S. markets.
For the Respondent
Attorneys in Desmarais LLP’s ITC practice group won a hearing for Japanese chemical companies Kuraray and Nagamine against their competitor Ingevity, resulting in a judgment for Kuraray and Calgon Carbon in a case in which the complainant was seeking to exclude our clients from importing and selling their MPAC automotive emission control product in the United States. The case involved one asserted patent that Ingevity had used to stifle competition for nearly two decades. Throughout discovery, Desmarais LLP attorneys pursued a nearly-20-year old trail of evidence, ultimately proving at the hearing that another industry participant invented the claims of Ingevity’s asserted patent before Ingevity. Based on this evidence, the ALJ found that Ingevity’s asserted patent was invalid, and that decision was affirmed by both the ITC and the Federal Circuit.
Attorneys in Desmarais LLP’s ITC practice group successfully represented Winplus North America, Inc. in an investigation initiated by its competitor NOCO Company seeking to prevent Winplus from importing its portable lithium-ion battery jump starters. Throughout the investigation, Desmarais LLP attorneys pursued evidence and arguments to establish that neither Winplus’s nor NOCO’s products practiced the asserted patents. After the hearing, the ALJ found that Winplus’s jump starters did not infringe NOCO’s patents and NOCO failed to establish a domestic industry—a requirement specific to the ITC. The ITC upheld the ALJ’s findings.
Attorneys in Desmarais LLP’s ITC practice group successfully represented 3Shape in three different ITC investigations initiated by its biggest competitor, Align Technology. Align was seeking to exclude 3Shape from importing and selling its award-winning TRIOS line of intraoral scanners and digital dentistry software in the United States. After each of the three hearings, the ITC found that 3Shape did not commit any violations of section 337 of the Tariff Act of 1930, and therefore declined to exclude 3Shape from importing or selling its TRIOS intraoral scanners and digital dentistry software.
These cases serve as examples of Desmarais LLP’s ability to defend clients from potential exclusion orders directed to their most lucrative and popular products in the face of a fast-paced, demanding ITC investigation.
