United States: Enhanced Practice Group Capability: Retail Litigation In The International Trade Commission

The merger of Hunton & Williams and Andrews Kurth Kenyon in 2018 resulted in an intellectual property (IP) group with a long, successful history of handling high-stakes Section 337 investigations at the US International Trade Commission (ITC). Our attorneys from Kenyon & Kenyon first became familiar with the venue in the 1970s and were soon after joined in the 1980s by a former chief administrative law judge of the ITC, who helped develop the skilled practice that continues at our combined firm today.

The Hunton Andrews Kurth ITC team has been involved in precedent-setting investigations. For decades, we've authored the leading treatise on navigating IP litigation in the ITC, "Unfair Competition and the ITC: A Treatise on Section 337 Actions" (published by Thomson Reuters). And, more than a third of the attorneys in our IP group—including attorneys originating from Hunton, Andrews Kurth, and Kenyon—have worked on multiple ITC investigations. With clients ranging from Global Fortune® 100 corporations who trust us to represent them in ITC litigation year after year to businesses engaging us for the first time, we have represented US-based and international companies in over 50 Section 337 investigations during the past 10 years alone, on both the complainant and respondent sides.

ITC 101

While Section 337 of the Tariff Act of 1930, as amended, is a trade statute that addresses unfair acts involving the importation into and sale in the United States of "articles," those unfair acts include infringement of IP rights by retail goods. The ITC conducts investigations to resolve disputes regarding alleged patent, trademark and copyright infringement, and other allegations of unfair competition, such as trade secret misappropriation and false advertising, with respect to products that are imported into, sold for importation into and/or sold in the United States after importation from abroad.

Section 337 investigations are known for their speed, complexity and the powerful threat of an exclusion order preventing the entry (and sale) of products into the United States; the ITC does not award monetary damages. From institution to a final determination by the Commission, most investigations conclude in 14 to 16 months, with a hearing on the merits a mere seven to nine months after a complaint is filed. On top of that, an ITC investigation includes proofs not required or considered in district court, such as importation, domestic industry and the public interest.

The ITC is a Popular Forum for Consumer Electronics and Patent Infringement Allegations

Section 337 investigations are well known as investigations into allegations of utility patent infringement made against retailers and manufacturers of popular consumer electronics, such as mobile phones, tablets, televisions, digital cameras and gaming systems.

That reputation is not undeserved.

Of the 12 ITC matters handled by Hunton Andrews Kurth over the past 18 months, almost half related to accused products falling within that category, and all involved patent infringement allegations.

In 2018, similar types of ITC investigations were brought against other consumer electronics companies, such as Apple, Comcast, DJI, HP, HTC, Lenovo and Nintendo.

But the ITC is Also Useful for Other Retail Products and Types of Unfair Competition

Of interest to the retail industry, there are many different types of products, companies and allegations investigated by the ITC. For example, this year, the ITC instituted investigations related to the automotive sector (infotainment systems, motorized "off-road" vehicles, fuel vapor canister systems); sports equipment (jump rope systems, archery equipment, strength-training systems); home and office goods (convertible sofas, printer toner cartridges, height-adjustable desk platforms); and food and beverages (beverage containers, beverage dispensing systems, microperforated packaging for fresh produce, water filters, electronic nicotine delivery systems). Parties to these investigations ranged from complainants Anheuser- Busch, Bear Archery, Canon, Electrolux, Fiat Chrysler Automobiles, Hoist Fitness Systems, Juul and Varidesk , to respondents Denso, Glory Foods and Growers Express, Heineken, Krug, Mahindra, Panasonic and Toyota . Some of these investigations included allegations of design patent infringement, trademark infringement and trade dress misappropriation. In the recent past, the ITC has investigated similar allegations of infringement and misappropriation, as well as counterfeiting, in the fashion industry, including based on complaints brought by Converse, Crocs and Louis Vuitton.

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In short, as a member of the retail industry, whether you are accused of violating Section 337 or are seeking to secure exclusion and cease and desist orders against an infringer of your IP rights, we will use our vision, wisdom and drive to vigorously defend and protect the interests of your company. Our attorneys have the specialized expertise and comprehensive understanding of the unique challenges presented by litigating in the ITC necessary to succeed in these investigations.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.