I. ITC COMPLAINTS
Even if you are an experienced litigator, preparing your first US International Trade Commission (ITC) complaint is often an eye-opening experience.
ITC complaints are very different than those in US district courts; in many ways they are more similar to a summary judgement motion in a default case than a district court complaint.
In addition, there is a long list of specific information and documents that need to be included. Drafting a good complaint often takes over a month, and the final product may be 50 pages long with hundreds of pages of exhibits.
While there are numerous procedural requirements, it is also important to remember that the complaint is both your first chance to persuade the judge and the Commission of the merits of your case. The complaint will also determine the maximum scope of relief it is possible for you to obtain.
While there are many other subtleties to drafting an ITC complaint, some of the biggest decisions to make, and the elements required by ITC rules are discussed below.
II. KEY STRATEGIC DECISIONS
The most important strategic decisions to make when drafting the complaint are:
a.) what to include in the case caption;
b.) what is included in the “plain English statement of accused products;” and
c.) which buyers of infringing products to name as respondents, if any.
Case caption:
This is often an afterthought but should not be!
The caption determines what products may ultimately be stopped by Customs should you obtain an exclusion order. The caption is also important to determining the scope of allowed discovery.
For example, if the infringing product is often imported as components, rather than finished products, Customs will not stop shipments of components unless the case caption includes them.
Conversely, if the infringing products usually enter the U.S. as components of other finished products, the finished products will not be stopped unless the case caption includes “products containing the same” or similar language.
Keep things as broad as you can—it is very easy to waive positions and allegations at the ITC. And while narrowing is easy, expansion of claims is difficult.
Description of accused products:
While case captions can be broad and relatively vague (i.e. “Certain Electronic Devices,” or “Certain Imaging Products”), the ITC also requires the complaint to include a plain English description of the accused products.
During the pre-filing review process the ITC will push to make this “plain language description” as concrete as possible to provide the public with the greatest degree of notice as to what products may actually be impacted by this investigation.
While respecting its guidance, it is also important that your counsel be able to negotiate the broadest scope possible for this description. Like the case caption, the description will be used both by Customs to determine which types of products it stops from entry, as well as by the judges to determine the scope of discovery.
For example, if the accused products are DRAM and products containing them, and the plain language statement only discloses tablets and laptops, the judges may not allow discovery relating to mobile phones, nor will any exclusion order that issues authorize Customs to exclude phones from entry.
Naming respondents:
If the infringing products are components of other products, consider naming the infringer’s customers as respondents.
In most cases (other than those seeking general exclusion orders) the ITC will only issue orders excluding products imported or made by the respondents in the case.
The exclusion orders do not usually include what are often called “downstream products,” which are products incorporating the infringing product that are sold or imported by non-respondents.
For example, if the infringing product is a LED made overseas, and sold overseas to manufacturers that incorporate it into lamps imported into the U.S., the lamps are unlikely to be excluded from the U.S. unless the lamp maker was named as a respondent in the complaint.
The degree to which downstream products of non-respondents will be excluded can vary based on the type of product.
Additionally, the consequences of adding additional respondents will vary depending on the potential respondents, so the decision on which respondents to name, or not name, in the complaint must be made carefully.
III. ITC COMPLAINT REQUIREMENTS
Below is a list of the components required by the current ITC rules for a complaint alleging patent or registered trademark infringement, including the formal elements, relevant rules, as well as, in parentheses, some guidance on each element.
Complaints alleging causes of action such as false advertising, trade dress violations, infringement of an unregistered mark, or trade secret misappropriation have an additional requirement—to show injury—which is discussed at the end.
- The complaint must describe specific instances of unlawful importations or sales by each respondent, meaning that for each respondent you must provide:
a. Their official name, address, and a description of their business (Commission Rule 210.12(a)(4)). (In situations where there are a parent company and subsidiaries, name each independent subsidiary which is involved in the importation, manufacture, or sale of the accused product.);
b. Evidence that they sold an infringing product to be imported into the U.S., imported an infringing product into the U.S., or sold an imported infringing product in the U.S. (Commission Rule 210.12(a)(9)(viii)) (Evidence of selling for importation into the U.S. is often indirect, such as showing that the product is manufactured outside of the U.S. but has substantial sales within it, or that the U.S. is a significant market for the infringer.);
c. Evidence that the relevant accused product has been imported into the U.S. (Commission Rule 210.12(a)(3)). (The two methods most commonly used to show this are either a receipt showing purchase in U.S.--which shows the product entered the U.S.--and or a country of origin designation such as “Made in China” on the product or its packaging, which shows that the product entered the U.S. rather than being manufactured inside of it.);
d. A description of how exactly they infringe the relevant patent(s) or mark(s). (Commission Rule 210.12(a)(2)).;
e. For each asserted independent claim or mark that they are accused of infringing, a detailed claim chart showing how they infringe. (Commission Rule 210.12(a)(9)(viii)). (If they sell multiple types of products that infringe the asserted patent or trademark in substantially different ways, it may be helpful to include claim charts for each of the categories of accused product.)
- For each accused product you must include:
a. Information regarding the tariff number under which the item is imported (Commission Rule 210.12(a)(3)). (This will be used by Customs to help enforce any exclusion order you obtain.);
b. Either a sample or, if the product is too large or expensive, a photograph.(Commission Rule 210.12(b)). (For mechanical products submitting an actual product can be very helpful to showing infringement, so you should try to submit a sample if possible.);
c. Evidence that the product was imported into the U.S.—meaning that the product both was present in the U.S. and either was manufactured outside of the U.S. or taken outside of the U.S. for some time then reimported. (Commission Rule 210.12(a)(3)). (The entry into the U.S. does not have to have been for purposes of a sale—any entry, including sending a sample in for testing or to be shown at a trade show—may satisfy this requirement.);
d. A plain language statement listing it. (Commission Rule 210.12(a)(12).
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You must provide a listing of each asserted patent or mark as well as each patent claim which is being asserted. (Commission Rule 210.12(a)(9)(i)) For each asserted patent or trademark you must provide:
a. A showing that at least one complainant is the owner or exclusive licensee;
b. A certified copy of the patent or registration. (Commission Rule 210.12(a)(9)(i)), 210.12(d));
c. A certified copy of the prosecution history.(Commission Rule 210.12(c )(i), 210.12(d)) (Order all certified copies well ahead of time as at various times it may take weeks to receive them.);
d. A copy of each reference cited in the prosecution history. (Commission Rule 210.12(c)(ii). (Yes, they really do mean each and every one.);
e. A certified copy of each assignment. (Commission Rule 210.12(a)(9)(ii));
f. A listing of each licensee under the patent. (Commission Rule 210.12(a)(9)(iii)). (This may be designated confidential if desired.);
g. A copy of each license agreement for the patent that the complainant relies upon to establish its standing or the domestic industry. (Commission Rule 210.12(a)(9)(iv)). (This can also be marked confidential.);
h. A listing of each foreign counterpart, including applications, and their status. (Commission Rule 210.12(a)(9)(v));
i. A nontechnical description of the invention of the patent. (Commission Rule 210.12(a)(9)(vi)). (While making the description as clear and easily understood as possible, keep in mind that any statements made regarding the patent, claims, or prior art may, and likely will, be used against you later.);j. A list of asserted claims with independent claim(s) identified, and an identification of which claims each respondent allegedly infringes. (Commission Rule 210.12(a)(9)(vii));
k. A plain English statement of the accused products. (Commission Rule 210.12(a)(12));
l. Claim charts (or equivalent) for each asserted independent claim against each respondent. (Commission Rule 210.12(a)(9)(viii)). (If there are multiple types of accused product that infringe in different ways, it can be helpful to include charts for each type of product to avoid later claims of waiver.); and
m. Expiration date. (Commission Rule 210.12(a)(9)(xi)).
- For each asserted patent you must show that you or a licensee has satisfied the domestic industry requirement, which means that for each patent you must demonstrate that a domestic industry exists or is in the process of being established. (Commission Rule 210.12(a)(6)(i, ix)). To do this you must:
a. Show that you or your licensee manufactures or will manufacture a product which meets the limitations of at least one claim of the patent, called “the domestic industry product(s).” (This is typically done by providing a claim chart comparing the limitations of a claim to the domestic industry product. The claim whose limitations are met does not have to be one of the claims allegedly infringed.);
b. Provide a sample or photograph of each domestic industry product. (Commission Rule 210.12(a)(9)(x));
c. Provide a showing that you or your licensee has made significant or substantial investment in the U.S. in plants, equipment, labor, or other capital expenditures relating to a domestic industry product or in exploitation of the patent by, for example, licensing it or performing research. (Commission Rule 210.12(a)(6)(i)). (This showing typically includes both a narrative description of the U.S. activities performed relating to each domestic industry product or exploitation activity as well as a detailed accounting of your expenditures, in terms of workers or dollars, over the last three years on each activity. Gathering the information for this is often time consuming, and often a declaration regarding the activities or expenditures is involved.)
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Other required elements of the complaint:
a. description of any related or prior litigations (Commission Rule 210.12(a)(5));
b. A description of each complainant including their name, address, and description of their relevant activities. (Commission Rule 210.12(a)(7));
c. Public interest statement explaining why the requested exclusion orders are not contrary to the public interest;
d. A description of the remedy sought. (Commission Rule 210.12(a)(11)). (Whether you are asking for a limited exclusion order or general exclusion order, if you are requesting cease and desist orders, and if you are requesting that a bond be imposed during the Presidential Review period.);
e. A signature/verification by an authorized officer, agent, or attorney of the complainant. (Commission Rule 210.4, 210.12(a)(1));
f. If the complaint is alleging something other than infringement of a patent or registered trademark, the complaint must provide a showing that an industry in the U.S. has been injured by the accused activity.(Commission Rule 210.12(a)(8)). (This showing is separate from the domestic industry requirement, is quite detailed, and often involves declarations and factual evidence.)
Author: Aarti Shah (Kilpatrick Townsend)
