The value and significance of intellectual property (IP) in international trade and competition are accelerating at stunning speed. The evidence is everywhere, from newspaper headlines of major semiconductor companies giving up wafer fabrication altogether in favor of outsourcing, licensing, and design, to record monetary judgments or injunctions in patent cases stopping a foreign competitor dead in its tracks. Long gone are the days when intellectual property issues were secondary considerations in the development of a competitive corporate strategy. They now lie at the very heart of business strategy and are no longer limited by national boundaries.
Just as the terms of business competition have become increasingly international, so have intellectual property litigation and strategy development. Miller & Chevalier’s ITC Section 337 Litigation group is at the forefront of those who practice at the intersection of intellectual property and international trade law. The group brings together lawyers with deep experience in a variety of related bodies of law and litigation forums, as well as that gained from serving in senior government positions.
Strategic Counsel
Miller & Chevalier’s ITC Section 337 Litigation group has one of the largest such practices in the country, having litigated approximately 120 Section 337 cases in private practice, which represents close to 20 percent of the cases filed since 1974, when Section 337 took its current form. Miller & Chevalier is nationally recognized and ranked and is considered a go-to firm for Section 337 experience and guidance. Because of the breadth and depth of our lawyers’ experience, we are able to provide clients and co-counsel with real value in the form of strategic guidance on their matters.
For more than 25 years, Miller & Chevalier’s lawyers have been engaged in all aspects of Section 337 investigations, including preparing complaints; engaging in extensive and concentrated discovery; handling expedited motions; appearing in hearings before numerous administrative law judges; briefing issues of violation and remedy to the U.S. International Trade Commission (ITC); and engaging in appellate review. Our team has represented domestic and foreign companies pursuing and defending against Section 337 relief in cases involving all types of unfair acts, including patent, trademark, copyright and/or trade dress infringement, as well as claims of false advertising, trade secret misappropriation, and gray market goods. These cases have covered the gamut of industries and technologies, including semiconductor chips, consumer goods, chemicals, industrial machinery, communication devices, and computer software. As most Section 337 investigations involve patent infringement, our lawyers often collaborate and work as co-counsel with our clients’ existing patent counsel in these fast paced investigations.
Our lawyers are experienced in IP litigation in the United States and internationally, including litigation in the federal district courts. The benefits of that collective experience and continuous involvement in the field are numerous. In many cases, disputes are high-stakes and time is of the essence. Knowing what works and what does not, as opposed to learning it on the job, can make an enormous difference in both the outcome and the cost of litigation. Combining this knowledge with the resources of Miller & Chevalier’s Litigation and International Trade practices permits us to handle even the largest, bet-the-company cases effectively and efficiently.
Section 337 Investigations
Under 19 USC Section 337, an intellectual property owner may seek remedies before the ITC for unfair practices related to imports. Unfair practices that are actionable under Section 337 include infringement of U.S. patents, trademarks, copyrights, and a variety of other intellectual property rights. The proceedings are expedited, typically leading to a final disposition and remedy within 16 months from the date of filing. The principal remedy, known as an exclusion order, bars importation of all infringing products and is enforced by U.S. Customs and Border Protection. Our lawyers have decades of experience in these actions, having handled over 120 investigations since Section 337 took its current form in 1974.
U.S. Customs Border Enforcement
U.S. Customs and Border Protection is charged with assisting in the border enforcement of U.S. intellectual property rights (IPR) in a variety of contexts, including enforcement of Section 337 orders, trademark and copyright recordation, counterfeiting, and gray market imports. In order to maximize the potential benefit from these resources, our team works with U.S. IPR owners to ensure the most effective implementation of Customs enforcement capabilities. Our lawyers also interact with Customs to avoid or mitigate the adverse effects of such enforcement activities.
U.S. District Court Litigation
Parties may also sue or be sued for violation of intellectual property rights in U.S. district courts. In contrast to the remedies available under Section 337, U.S. district courts may award monetary damages, in addition to injunctive relief, although district court cases normally proceed on a schedule that is much slower than under Section 337. It is not unusual in the case of major patent litigation for parallel cases to be filed in both the ITC under Section 337 and the district court. Due to the more expedited schedule, an ITC Section 337 case is typically litigated first and the district court case stayed.
Developing an effective strategy for parallel proceedings in the two forums can be complex and requires an appreciation of the unique rules, precedent, procedures, and decision makers of both forums. Miller & Chevalier has substantial experience, in particular, in handling parallel cases in the Eastern District of Virginia, one of several “rocket dockets” in which intellectual property litigation is filed.
Multinational Licensing and Litigation
U.S. intellectual property litigation can also be just a part of broader, worldwide licensing and litigation involving assertion of patents or other IPR outside of the United States. In these cases, companies face a host of issues ranging from selection and oversight of foreign counsel, to coordination of multi-country and multi-forum activities (e.g., discovery) and strategies, to achieving efficiencies and avoiding duplication of work. Our international experience can help make the extraordinary logistical challenges of such proceedings manageable.
Protecting Companies’ Investments in Existing Relationships with IP Counsel
Many companies have long-standing relationships with intellectual property lawyers who may have played a key role in prosecution or evaluation of the company’s patents and have a high degree of knowledge of the company’s technology. Clients often would like to preserve and utilize their “investment” when it comes to litigation. Miller & Chevalier understands that proposition and has developed time-tested models for close collaboration and teamwork with existing patent counsel to provide the client the best of both resources, particularly in areas such as Section 337 and U.S. district court litigation with “fast-track” dockets, such as the Eastern District of Virginia. Furthermore, if needed, we can draw on our many years of close collaboration with the top patent law firms in the world to offer referrals to or partner with IP lawyers whom we know and trust.
Assistance to Governments
For many years, our firm has assisted governments, including the governments of Taiwan and Japan, in understanding and complying with the IP rules and obligations of the United States and under international agreements. |