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When it comes to intensity, speed and complexity, few forums for litigation can rival the International Trade Commission.

The small, independent agency hears cases that involve disputes between the owners of U.S. intellectual property and foreign imports alleged to infringe these rights. Often, the disputes involve multiple defendants scattered around the globe, numerous law firms, reams of discovery (which may or may not be in English) and incredibly tight deadlines. Cases usually go to trial within six to nine months from the date of institution, and a final decision is issued within 12 to 15 months.

In this context, efficient, effective and reliable systems for litigation support are essential. After 20-plus years of experience spanning more than 60 cases, our attorneys and support staff have honed a series of practices to cope with these extraordinary demands. Among them: creating a parallel case management process; maintaining a detailed “best practices” guide, including an internal library of background research and sample templates; using the concept of “triage” to review mountains of discovery documents; and setting up a secure extranet or Web-based application to coordinate work with other firms.


Unfair import cases at the International Trade Commission are brought under Section 337 of the Tariff Act of 1930. In simple terms, the statute allows a U.S. intellectual property owner to take the same infringement case to the ITC as it could in U.S. district court. What’s different is the remedy – instead of monetary damages, a victor at the ITC can secure an exclusion order enforced by the Customs Service that prevents foreign-made infringing articles from entering the United States. Also, because ITC jurisdiction depends more on the presence of infringing articles than on the contacts of foreign infringers with the United States, it is often possible to take respondents to the ITC who could never be taken to a district court.

In recent years, the ITC has seen its docket of Section 337 cases grow substantially. In addition to the unique remedy, the ITC is appealing because of its speed. Over 12 to 15 months, Section 337 investigations typically involve the same range of activities seen in fully litigated patent actions in U.S. district courts that span three to five years.

Some flavor for the magnitude of the challenge is given by one of the cases on which we are working now: a dispute involving six patents and more than 70 individual patent claims covering complex transmission systems for trucks, three named respondents (defendants) – one a German company, one based in the United States and one a joint venture between the two.

The ITC administrative law judge set a 15-month target date for completion of the investigation. In order to meet the target date, the parties were allowed seven months to complete all discovery (including experts), five weeks for pre-hearing motions and other filings, and 10 days for a full hearing on the merits of all contested issues. Following the hearing, post-hearing briefing should take less than four weeks, thereby allowing the ALJ just over two months to prepare his determination and the full commission three months to review it and offer its own opinion.

Clearly, there is no margin for error. Further, the ITC prides itself on sticking to its schedules; extensions or postponements for discovery or trial are extremely rare. Because one cannot play catch-up following mistakes or surprises, detailed planning, adequate case management and support resources, and forum-specific experience are all essential.


All litigation benefits from strong subject matter and forum experience. Yet the stakes are even higher in Section 337 cases because the extreme time pressures create not only incentives to do your legal analysis correctly and efficiently, but also to have a brutal assessment of what can and must be litigated in this period and what is non-essential. Many a Section 337 litigant has been badly hurt by trying to do too much or choosing the wrong issues to take to trial.

Because a typical Section 337 case involves tight and often overlapping deadlines, one cannot plan on sequentially litigating discrete issues in the order in which they arise or in the order that would be tactically most advantageous. (For example, first do all document production and review, then take offensive discovery of respondent’s personnel in Germany, then defend respondent’s deposition of your client’s personnel in San Diego, etc.)

Instead, most cases require creation and management of simultaneous processes (e.g., take German offensive depositions at the same time you are defending San Diego depositions, at the same time you are doing offensive document review in North Carolina, at the same time you are doing your own document production).

The crush of concurrent processes has direct implications for case management structure and support systems.

On the management side, it means that there is a greater demand for more time purely devoted to management. The concept is relatively simple, the execution far more challenging. This is particularly true when the lead counsel is more familiar with district court cases, where there is often adequate time for one person to both manage a case and actually participate in a substantial amount of the litigation.

The stark reality of an ITC case is that it is rarely possible for one person to do both well. Some lawyers who try may find that as the pace of the case reaches a critical juncture, key substantive elements of the case (e.g., infringement proof) are poorly prepared because time has been consumed by putting out day-to-day fires.

Other times, the attorney with official case “management” responsibility gets swallowed up with substantive work and key parts of the coordination and strategy formulation process begin to fall apart. A breakdown on either front can be critical.

In our experience, ITC cases require a two-level management structure: an attorney coordinator who handles substantive tasks such as allocation of assignments, tracking of deadlines and coordination of internal and external communications, and a paralegal case manager, who handles matters such as the filing and service of pleadings, maintenance of the case file and preparation of trial materials. When multiple law firms are involved, clear lines of authority and definitions of assignments are absolutely critical.

At both the attorney and paralegal level, these managers must be able to call upon a large pool of additional skilled individuals who can be brought in on short notice to meet the at times crushing demand for staffing inherent in Section 337 investigations.


Although the rigors of Section 337 practice demand a broad pool of skilled team members, time constraints make on-the-job training difficult. Therefore, internal training programs and best-practices protocols developed outside the context of active investigations are invaluable in bringing new team members up to speed before litigation begins and as fallback resources thereafter.

At the core of any such training should be a documented and highly detailed best-practices manual, an internal library cataloging background research and the experiences of past investigations, sample pleading templates, the ALJ’s ground rules for investigations, commission protective orders, and key precedents.

Training should also include familiarizing support staff with established systems for dealing with the voluminous materials expected in an investigation (both discovery documents and litigation pleadings), so that critical documents can be retained, tracked, indexed and retrieved quickly in either paper or electronic form.

Mindful that the same number of discovery documents that are reviewed over years in a district court patent case may need to be reviewed and screened in a Section 337 investigation within a matter of months, if not weeks, this challenge should not be underestimated.

In most Section 337 cases, there simply is not adequate time to index or code all discovery documents. As a result, some form of “triage” is required wherein judgments must be made about what subsets of discovery documents warrant the investment of additional time and effort associated with indexing or coding.

When operating in a multifirm team, access to case materials is often best provided through a secure extranet or Web-based application. While we have worked with a number of Web-based service providers that can provide the infrastructure to do this, our experience is that most are set up to operate at “district court speed” but not “Section 337 speed.”

Namely, we have found it hard to accelerate the service provider’s standard turn-around time between receiving and posting documents. In a number of instances, we started with an outside vendor only to supplant it with in-house systems as the pace of the case picked up.

Whichever route is taken, training should include familiarity with protocols for sharing discovery and pleadings with co-counsel. The real-time access that such systems provide to members of the litigation team around the world can prove critical, particularly when deposing witnesses in different time zones or preparing for trial.


The need for many skilled individuals operating in parallel continues throughout the trial – referred to as a hearing in ITC parlance.

In a Section 337 investigation involving patents, the parties often litigate a broad range of issues: patent infringement, patent validity, patent misuse, importation of the accused product and whether a “domestic industry” exists. Experts are used extensively.

Even in the most complex cases, all of these issues will need to be litigated in no more than 10 to 12 days, which usually translates to about 30 hours of actual trial time for each side (including cross-examination). This compressed schedule puts pressure on all involved and makes the efficient handling of information paramount. Planning and careful allocation of available time to ensure required proofs make it into evidence are necessary.

In this regard, we have found very detailed “proof roadmaps” that identify all legally required elements of proof and the individual pieces of evidence that will be introduced to satisfy them, to be essential. The roadmaps are synchronized with witness testimony outlines to ensure each element is covered and there is no unnecessary duplication.

ITC judges expect and require examining counsel to use witness binders. The binder contains all exhibits that a witness will be questioned about in sequential order. These binders save an enormous amount of trial time otherwise spent fumbling around for documents.

Given the many discrete facts that must be introduced in a limited time, it is unrealistic for a single trial attorney to prepare and present a party’s entire case. As in the discovery phase, this pressure tends to dictate the use of a trial team manager who does not himself assume much of the substantive witness examination.

Given the compressed period for post-trial briefing and findings of fact, work usually commences on these elements while the hearing is ongoing. Often, the same lawyers handle the written motion practice during the hearing as well.

Throughout this process, the team’s support staff remains vital. Not only must staff members move a copy of the entire case file to the ITC hearing room, they must be able to locate every document within the file. They must also coordinate tech support for the hearing.

Because the ITC building in Washington, D.C., (at 500 E St., S.W.) could be far from one’s home base office, staff must arrange for a full “war room” nearby, usually at a hotel. The war room is used for last-minute witness preparation, team lunches and document assembly.

Ultimately, Section 337 can provide litigants with fast, effective relief, so long as counsel and their support staff are prepared for the many challenges along the way. Those who arrive unprepared or fail to take seriously the rigors of practice before the ITC do so at their clients’ peril. Those who succeed, on the other hand, know that to be successful, they not only must have expert knowledge of specialized areas of law, but also have in place a top-to-bottom team adept at managing a large, fast-paced, labor-intensive proceeding.

STURGIS M. SOBIN is chairman of the international department at Miller & Chevalier. He has more than 20 years’ experience representing parties in Section 337 investigations both before the ITC and the U.S. Court of Appeals for the Federal Circuit, as well as in other intellectual property and unfair competition disputes in the U.S. district courts. ALEXANDER D. CHINOY is a senior associate in the international department at Miller & Chevalier. MICHELLE M. PINSONAT is a case manager at Miller & Chevalier.

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