Successful representation at the ITC requires experienced IP practitioners with extensive technical knowledge and creative strategic capabilities. Our ITC team checks every box.
Because of its fast-moving docket, the global impact of its outcomes, and its knowledgeable commissioners and administrative law judges, the International Trade Commission (ITC) has been a popular forum for businesses seeking to protect their valuable intellectual property (IP) assets. Clients from every corner of the U.S. and around the world hire us to go to work on behalf of their brand names and bottom lines. We have won, favorably settled, or had dismissed more than 50 ITC investigations on behalf of both complainants and respondents.
With so many IP disputes involving complex technology patents, a thorough understanding of both the scientific issues and the legal and litigation strategies involved is essential to a successful outcome at the ITC. We can bring IP practitioners with advanced degrees in engineering, chemistry, and other scientific fields to a matter and create the strongest possible team for each client.
We are also nationally recognized thought leaders among peer ITC practitioners. Our team includes a past president of the ITC Trial Lawyers Association, a past president of the American Intellectual Property Lawyers Association, and an ITC Senior Statesperson as recognized by Chambers.
We have experience on both sides of the table, having represented both complainants and respondents in Section 337 investigations. This experience helps us begin discovery efficiently, so we can identify defects in complaints early in the process and determine how to bring dispositive issues before the Commission early in the process. As a global firm, we also can call on a deep bench of tech-savvy IP litigators and patent attorneys who can jump in to staff a new ITC case and get up to speed quickly.
We have had success for our clients under the ITC’s 100-Day Program, created to fast-track a discrete and manageable issue so it can be resolved on an expedited schedule. While not all cases are eligible, we know how to use this program to our clients’ advantage when the circumstances are favorable.
- Daniel P. MuinoPartner
- Mary PrendergastPartner
- Mark L. WhitakerPartner
- Daniel P. MuinoPartner
- Mary PrendergastPartner
- Mark L. WhitakerPartner
Experience
We won a complete victory for Renesas at the ITC before the judge, the Commission, and the Federal Circuit. Complainant Broadcom alleged that Renesas’s automotive chips, which are integrated into vehicle infotainment systems that are incorporated into Toyota vehicles, infringed six patents. Toyota and the infotainment system manufacturers were also respondents. After a trial in June 2019, the ALJ issued an initial determination finding no violation on all asserted patents, which was affirmed by the Commission. The Federal Circuit affirmed the ITC’s determination in 2022. The total victory was based on findings of non-infringement, invalidity, and lack of technical domestic industry for the asserted claims. MoFo also represented Socionext Inc. in the case. (Certain Infotainment Systems, Components Thereof, and Automobiles Containing the Same, 337-TA-1119).
We represented Amazon in several ITC investigations. In an investigation brought by Walbro. we won summary determination that Walbro failed to prove a domestic industry. (Carburetors, 337-TA-1123). In an investigation involving unusual Lanham Act claims concerning fashion items, we secured a favorable settlement just before trial. (Female Fashion Dresses, 337-TA-1157). Favorable settlements were also obtained in investigations concerning Amazon Fire Tablets (Touch-Controlled Mobile Devices, 337-TA-1162), filament LED light bulbs (Filament Light-Emitting Diodes, 337-TA-1172), and Amazon Echo speakers (Integrated Circuits, 337-TA-1287).
We represented TSMC and its customers in three ITC investigations involving semiconductor design and fabrication.The first matter, initiated by Innovative Foundry Technologies, in which we represented TSMC and MediaTek, settled favorably near the close of fact discovery.The second and third matters were parallel ITC investigations initiated by competitor GlobalFoundries, in which we represented TSMC and many of its customers (including Hisense, MediaTek, Xilinx, and NVIDIA).Both cases settled favorably.(Certain Semiconductor Devices, Integrated Circuits, and Consumer Products Containing the Same, 337-TA-1149; Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (I) and (II), 337-TA-1176, and -1177).
Represented Nikon against complainants Carl Zeiss and ASML in several ITC investigations involving lithography machines, semiconductor lithography systems, and digital cameras and related software.The digital camera matter settled favorably after trial; the others all settled favorably pre-trial.(Certain Semiconductor Lithography Systems and Components Thereof, 337-TA-1137; Certain Lithography Machines and Systems and Components Thereof (I) and (II), 337-TA-1128 and -1129; Certain Digital Cameras, Software, and Components Thereof, 337-TA-1059).
Advised respondents BlackBerry Ltd. and the BlackBerry Corporation against complainants Creative Technology Ltd. and Creative Labs, Inc., who alleged that certain Android devices manufactured and sold by BlackBerry and other respondents infringed a patent directed to methods of organizing and displaying music tracks.Under the 100-Day Program, the ALJ issued an initial determination finding the asserted patent invalid under Section 101 as covering patent-ineligible subject matter. The Commission declined to review the ALJ’s determination, leaving it as the final determination of the ITC and a complete win for our client.(Certain Portable Electronic Devices and Components Thereof, 337-TA-994).
Represented automaker Honda and infotainment manufacturer Fujitsu Ten and related affiliates as respondents against Advanced Silicon Technologies LLC in an investigation involving graphics and display system technologies for automobiles. We settled the case on favorable terms about a month before trial.(Certain Computing or Graphics Systems, Components Thereof and Vehicles Containing Same, 337-TA-984).
Achieved a win for Kyocera after a two-week ITC trial and a favorable ruling from the ALJ.Complainant Technology Properties Limited (TPL) accused Kyocera and several other companies of importing wireless electronic devices that allegedly infringed a microprocessor patent. The ALJ found that none of Kyocera’s 14 accused products infringed the claims of the asserted patent.(Certain Wireless Consumer Electronics Devices and Components Thereof, 337-TA-853).