Practice Areas

Section 337 Intellectual Property and Unfair Trade Practices Litigation at the International Trade Commission

Section 337 of the Tariff Act of 1930 makes it unlawful to import articles into the United States, or to sell imported articles in the United States, that infringe a valid and enforceable U.S. patent, trademark, or copyright.  Even more broadly, Section 337(a)(1)(A) makes it unlawful to import articles into the United States pursuant to “unfair methods of competition and unfair acts in the importation of articles . . . into the United States.”  Subsection (a)(1)(A) can be used as the legal vehicle for other intellectual property-based causes of action (e.g., trademark dilution, misappropriation of trade dress, misappropriation of trade secrets), as well as for tort-based causes of action targeting the types of illegitimate conduct that sometimes accompany unfairly traded imports (e.g., breach of contract, tortious interference with a contract or license, fraudulent inducement to breach (or to enter into) a contract or license, and fraud). 

Section 337 investigations are conducted by the International Trade Commission, which is based in Washington, D.C.  If the Commission finds (i) a violation of the intellectual property right or an unfair trade practice, (ii) that there is an industry in the United States related to the articles for which protection is sought, and (iii), in cases brought under Section 337(a)(1)(A), that the domestic industry has been injured or threatened with injury, the ITC may issue an exclusion order barring future imports of the infringing or unfairly traded product and/or a cease and desist order prohibiting sales of such merchandise that has already been imported into the United States.  Exclusion orders are of two types, a limited exclusion order directed against the imports of a single, named respondent, and the far broader general exclusion order, a blanket in rem prohibition against the importation of any infringing/unfairly traded product.  Enforcement of the Commission’s orders is the joint responsibility of the U.S. Customs and Border Protection Department and the Commission.

U.S. intellectual property rights holders are increasingly relying on Section 337 investigations in preference to traditional intellectual property litigation in federal district court because of the numerous advantages offered by such investigations.  Between 2000 and 2006, the number of Section 337 investigations instituted at the International Trade Commission more than tripled and the number of active Section 337 cases is presently at an all-time high.

The Blakeslee Law Firm represents both complainants and respondents in Section 337 investigations and stands ready to assist clients wishing to bring a Section 337 investigation to protect their intellectual property or other trade-related rights, as well as clients named as respondents in such investigations. 

RELEVANT PUBLICATIONS AND PRESENTATIONS BY MERRITT R. BLAKESLEE

A Survivor’s Guide to Section 337 Investigations and ITC General Exclusion Orders: Part I – The International Trade Commission and the ink and toner cartridge remanufacturing industry, RECYCLING TIMES No. 72, 34-39 (March 2016).

Patent Infringement Actions at the International Trade Commission and in Federal District Court: A Complainant / Plaintiff’s Perspective, presented to the Intellectual Property Law Association of Florida, Ft. Lauderdale, FL, October 17, 2013.

Pursuing Patent Infringement Litigation at the U.S. International Trade Commission and in Federal District Court: A Primer for SEMA Members, online article at website of Specialty Equipment Manufacturers Association, http://www.sema.org/intellectual-property-rights-guide/past-articles-webinars (September 2010).

Do you have what it takes to bring suit at the ITC? - Standing and the ITC's domestic industry requirement, IPWATCHDOG.COM, online article available at http://ipwatchdog.com/2010/08/24/itc-standing-domestic-industry-requirement/id=12264/ (August 25, 2010) (with Scott M. Daniels).

Post-litigation Enforcement of Remedial Orders Issued by the U.S. International Trade Commission in Section 337 Investigations, 8 JOHN MARSHALL REVIEW OF INTELLECTUAL PROPERTY LAW 248 (Winter 2009).

Protect It or Lose It!  Techniques for Enforcing your Intellectual Property Rights against Infringers, presented as part of a seminar entitled FROM REGISTRATION TO LITIGATION: HOW TO SAFEGUARD YOUR COMPANY AGAINST ILLEGAL KNOCKOFFS AND COUNTERFEITS at the 2008 annual trade show of the Specialty Equipment Manufacturers Association, Las Vegas, NV (Nov. 3, 2008).

Options for Enforcing ITC Remedial Orders:  An Overview, presented in a session entitled SO YOU WON! NOW WHAT?: POST-LITIGATION ENFORCEMENT OF INTERNATIONAL TRADE COMMISSION REMEDIAL ORDERS at the Annual Meeting of American Intellectual Property Law Association, Washington, D.C. (Oct. 24, 2008).

Protecting your Company’s Intellectual Property from Infringement, presented as part of a webinar entitled DEVELOPING STRATEGIES TO PROTECT YOUR INTELLECTUAL PROPERTY broadcast to the membership of the Specialty Equipment Manufacturers Association (Apr. 7, 2008).

Seeking Adjudication of a Design-Around in Section 337 Patent Infringement Investigations:  Procedural Context and Strategic Considerations, 35 AIPLA QUARTERLY JOURNAL 385 (Fall 2007) (with Christopher V. Meservy).

Why Your Company’s Intellectual Property Is a Valuable Asset and What to Do to Protect It from Infringement, seminar presented at the 2005 annual trade show of the Specialty Equipment Manufacturers Association, Las Vegas, NV (Nov. 2, 2005); also presented as a webinar broadcast to the membership of the Specialty Equipment Manufacturers Association (Sept. 14, 2005).

Hong Lu and Merritt R. Blakeslee, Settling Section 337 Investigations:  Procedures and Practice, 21 ITC TRIAL LAWYERS ASS’N 337 REP. 87 (2005 summer associate issue).

Protecting American Trademarks Against Infringing Imports:  Customs Seizures, Exclusion Orders, Monetary Damages, seminar presented at the 2004 annual trade show of the Specialty Equipment Manufacturers Association, Las Vegas, NV (Nov. 3, 2004).

REPRESENTATIVE CASES

Certain Toner Cartridges and Components Thereof (Canon), Inv. No. 337-TA-918 (2014) (counsel to respondent).

Certain Sintered Rare Earth Magnets, Methods of Making Same and Products Containing Same, Inv. No. 337-TA-855 (2012) (counsel to two respondents).

Certain Toner Cartridges and Components Thereof (Canon), Inv. No. 337-TA-829 (2012) (counsel to respondent).

Certain LED Photographic Lighting Devices, Inv. No. 337-TA-804 (2011) (counsel to four respondents).

Certain Glassware, Inv. No. 337-TA-767 (2011) (counsel to all respondents).

Certain Starter Motors and Alternators, Inv. No. 337-TA-755 (2011) (counsel to respondent).

Certain Toner Cartridges, Inv. No. 337-TA-740 (2010) (counsel to respondent).

Certain Electronic Paper Towel Dispensing Devices and Components Thereof, Inv. No. 337-TA-718 (2010) (counsel to respondent).

Certain Foldable Stools, Inv. No. 337-TA-693 (2009-2010) (counsel to respondents).

Certain Dual Access Locks and Products Containing Same, Inv. No. 337-TA-689 (2009-2010) (consultant to respondents).

Certain Energy Drink Products, Inv. No. 337-TA-678 (2009) (counsel to three respondents).

Certain Nitrile Gloves, Inv. No. 337-TA-608 (2007) (counsel to respondent).

Certain Laminated Floor Panels, Inv. No. 337-TA-545 (2005) (counsel to two respondents).

Certain Automotive Measuring Devices, Products Containing the Same, and Bezels for Such Devices, Inv. No. 337-TA-494 (2004) (counsel to complainant).

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