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 lie at the very heart of business strategy in today’s world. Gone too are the days when such strategies were limited by national boundaries.

Just as terms of business competition have become increasingly international, so have intellectual property litigation and strategy development. Miller & Chevalier’s International Intellectual Property Group is at the forefront of those who practice at the intersection of intellectual property and international trade law. The group brings together attorneys with  deep experience in a variety of related bodies of law and litigation forums.

Overview

Our intellectual property litigation group is experienced in IP litigation in the United States and internationally, including litigation before the U.S. courts and the U.S. International Trade Commission (ITC). Our experience includes patent, trademark, trade dress, trade secrets, and copyright cases. Our International Intellectual Property Litigation Group comprises more than 10 attorneys, all of whom have years of experience litigating such disputes and counseling clients. A list of attorneys, practicing in this group, along with relevant biographical information, is available on request. 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 cost of litigation. Combining this knowledge with the resources of Miller & Chevalier’s Litigation Department, as well as the litigation resources of the International Trade Department, which is ranked among the top international trade practices in the U.S. by Chambers USA, permits us to handle even the largest, bet-the-company cases effectively and efficiently. Our services include:  Assistance to Governments;  Section 337 Investigations; U.S. District Court Litigation; U.S. Customs Border Enforcement; Multinational Licensing and Litigation; Protection of IP Rights in Government Contracts; Specialized Knowledge Is Critical to Achieving Business Objectives; and Protecting Your Investment in Existing Relationships with Intellectual Property Counsel.

Assistance to Governments

Miller & Chevalier has assisted governments for many years in understanding and complying with IP rules and obligations of the United States and under international agreements, including the governments of Taiwan and Japan.

Section 337 Investigations

Under 19 USC § 1337, an intellectual property owner may seek remedies before the ITC for unfair practices related to imports. Unfair practices that are actionable under § 337 include infringement of U.S. patents, trademarks, copyrights, and a variety of other intellectual property rights. The proceedings are expedited, usually leading to a final disposition and remedy within 12 to 18 months from the date of filing. The principal remedy, known as an exclusion order, bars importation of all infringing products and is enforced by the U.S. Customs Service.

In order to obtain relief, an intellectual property owner must prove both the unfair act (e.g., patent infringement), and that there is significant U.S. investment or other activity related to the asserted intellectual property right (e.g., U.S. research and development or manufacturing of products that practice a claim of the asserted patent).

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 § 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 § 337.   It is not unusual in the case of major patent litigation for parallel cases to be filed in both the ITC under § 337 and the district court. Due to the more expedited schedule, an ITC § 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, sometimes referred to as the “Rocket Docket,” because of its expedited schedules.

U.S. Customs Border Enforcement

The U.S. Customs Service is charged with assisting in the border enforcement of U.S. intellectual property rights (IPR) in a variety of contexts, including enforcement of § 337 orders, trademark and copyright recordation, counterfeiting, and gray-market imports. In order to maximize the potential benefit from these resources, U.S. IPR owners must understand what tools are available, as well as how to get Customs to implement them effectively. From the perspective of an importer, there are also many instances when it may be necessary to interact with Customs to avoid or mitigate adverse effects of such enforcement activities.

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.  Miller & Chevalier’s international experience can help make the extraordinary logistical challenges of such proceedings manageable.

Protection of IP Rights in Government Contracts

Drawing on the strength of Miller & Chevalier’s Government Contracts Department, the firm advises companies on securing and protecting their rights in computer software, technical data, copyrights, and patents when they do business as part of a government contract (both U.S. and foreign). The firm litigates these issues if a dispute arises or if a company alleges infringement of a patent in the course of a government contract, which is actionable in the Court of Federal Claims under 28 USC § 1498. On the counseling side, the firm assists clients in preparing and negotiating software licensing agreements, teaming agreements and joint ventures, consulting agreements, nondisclosure agreements, cooperative research and development agreements (CRADAs), and grants.

Specialized Knowledge Is Critical to Achieving Business Objectives

The simple fact is that litigating an intellectual property dispute or developing a strategy involving parties, products or technologies that cross national borders is not the same as a purely domestic dispute. Understanding the differences can be critical to accomplishing business objectives.

Questions such as the following are typical of those that confront a company faced with international IP litigation or strategy development:

• How do you get key technical information to prove infringement when it resides in the offices of a foreign company?
• Does it make sense for a foreign company to start a declaratory judgment action in a U.S. court to stop a U.S. company from frightening customers with baseless claims of infringement? 
• How can you get U.S. Customs to actually enforce your important intellectual property rights?
• Can a U.S. company do anything to increase pressure on a foreign government to stop counterfeiters or enforce its rights in that country?

These are the kinds of questions and issues companies face when they move into the arena of international intellectual property litigation. These are precisely the kinds of questions and issues that our attorneys resolve day in and day out.

Protecting Your Investment in Existing Relationships with Intellectual Property Counsel

Many companies have long-standing relationships with intellectual property attorneys 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. In that setting, 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 specialized areas such as § 337 and U.S. district courts 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 attorneys whom we know and trust.

Representative Engagements:

Hard Disk Drives, 337-TA-616 (Reiber v. Western Digital, et al.): We are representing Complainants, two individual inventors, in a case against a number of manufacturers of hard disk drives.

Personal Computers, 337-TA-606 (HP v. Acer):  We are representing Respondent Acer in an investigation involving various personal computer and digital display technologies between the number three and number four personal computer companies in the United States.

Semiconductor Chips with Minimized Chip Package Size, 337-TA- 605 (Tessera v. ATI Technologies, et al.): We are representing Complainant Tessera in an investigation involving patents on seminal technology in modern integrated circuit manufacture.

Sucralose Sweeteners, 337-TA-604 (Tate & Lyle v. AIDP, et al.):  We are representing Complianant Tate & Lyle in an investigation involving Sucralose sweeteners.

GPS Chips, 337-TA-596 (SiRF Technologies v. Global Locate) and 337-TA-602 (Global Locate v. SiRF Technologies):  We are representing SiRF as a Complainant in an investigation involving integrated circuit technology for global positioning systems and also as a Respondent in a counter-investigation involving similar basic technology.

Wireless Communication Devices and Equipment, 337-TA 577 (Samsung v. Ericsson) and 337-TA-583 (Ericsson v. Samsung):  We represented Complainant and counter-Respondent Samsung in a major dispute between two of the leading players in the mobile telephone equipment industry.

Inkmarkers, 337-TA-522 (Sanford v. Beifa, et al.): We represented Respondent Ningbo Beifa in a case involving the trade dress of its ink marker products.  The action was ultimately settled.

Flash Memory Devices 337-TA-552 (Toshiba v. Hynix)
NAND Flash Memory Devices 337-TA-553 (Hynix v. Toshiba): We represented Complainant Toshiba in its investigation against Respondent Hynix for infringement of its patents. We also represented Toshiba as a Respondent in a retaliatory investigation commenced thereafter by Hynix. Those cases were recently resolved post-trial in a favorable settlement.

Display Controllers and Products Containing Same, 337-TA-481/491 (Enforcement) (Genesis Microchip v. MStar Semiconductor, et al.): We represent Respondent MStar Semiconductor in an enforcement proceeding commenced by Genesis.

Power Adaptors, 337-TA-513 (Mobility Electronics v. Formosa Electronics): We represented complainant Mobility Electronics in a patent action involving universal power adapters for consumer electronic products. The action was terminated by Mobility in favor of a parallel proceeding.

Systems for Detecting Computer Viruses/Worms, 337-TA-510 (Trend Micro v. Fortinet): We represented respondent Fortinet in both a patent action and a subsequent enforcement action commenced by Trend Micro. The action was ultimately resolved by way of settlement.

Signature Capture Transaction Devices, 337-TA-504 (NCR v. Ingenico, et al.): We represented complainant NCR in an action involving infringement of NCR’s patents covering point of sale terminals, and helped NCR secure a favorable settlement.

Automated Mechanical Truck Transmission Systems, 337-TA-503 (Eaton v. ZF Meritor, et al.): We obtained a limited exclusion order and cease and desist order for complainant Eaton against respondents in a patent infringement investigation involving one of Eaton’s control method patents for medium and heavy-duty truck transmissions. We also represented Eaton in subsequent proceedings before the ITC, Court of International Trade, and U.S. Court of Appeals for the Federal Circuit.

Universal Transmitters for Garage Door Openers, 337-TA-497 (Chamberlain v. Skylink Technologies, et al.). We helped respondent Skylink secure a favorable summary determination on the merits that it had not violated § 337 by defeating Chamberlain’s assertion that Skylink had violated the Digital Millennium Copyright Act (DMCA). The investigation was the first at the ITC to involve the DMCA.

Home Vacuum Packaging Machines, 337-TA-496 (Tilia v. The Holmes Group, et al.): We represented complainant Tilia in the first fully litigated temporary relief (TEO) proceeding to be brought before the ITC in almost seven years, and thereafter secured a settlement that favorably terminated the action prior to a hearing on permanent relief.

Breath Test Systems for the Detection of Gastrointestinal Disorders , 337-TA-495 (Meretek Diagnostics v. Oridion, et al.): We successfully represented complainant Meretek in an action involving devices used to test patients for a bacteria that causes ulcers. The cases terminated with the entry of consent orders against the respondents.

Semiconductor Devices, 337-TA-472 (Toshiba v. Samsung): We represented Toshiba as a complainant against Samsung, with the case ending in an early settlement favorable to Toshiba.

Semiconductor Memory Devices, 337-TA-470 (Mosel Vitelic v. Hitachi): We represented Mosel Vitelic, a Taiwanese company, as a complainant against Hitachi Corp., with the case ending in an early settlement favorable to Mosel Vitelic.

Microlithographic Machines, 337-TA-468 (Nikon v. ASML): We represented Complainant Nikon in a fully contested investigation against Respondent ASML. Nikon ultimately obtained a favorable settlement while the case was on appeal to the Federal Circuit.

Set Top Boxes (Interactive TV Guide), 337-TA-454 (Gemstar et al. v. Echostar et al.): We represented respondent Echostar in defending claims of infringement and in asserting a defense of patent misuse. The ITC found in favor of our client, Echostar, deciding not to find a violation of Section 337.

Excimer Laser Systems, 337-TA-419 (VISX v. Nidek): We successfully represented respondent Nidek against charges of infringement by VISX related to equipment used for corrective laser eye surgery. The ITC found no violation of § 337 on multiple grounds. The press widely reported a sharp drop in VISX’s share price after the ITC’s decision.

Disposable Cameras (Lens-Fitted-Film Packages), 337-TA-406 (Fuji Photo Film v. Achiever, et al.): We represented Fuji against imports from multiple sources, primarily located in China, securing a general exclusion order.

Hardware Logic Emulators, 337-TA-383 (Quickturn v. Mentor Graphics et al.): We successfully represented complainant Quickturn in a case in which the ITC found a violation of Section 337 and issued an exclusion order against Mentor.

Human Growth Hormone, 337-TA-358 (Genentech v. Novo Nordisk et al.): We represented complainant Genentech in a patent case directed at stopping infringing imports of HgH from competitors trying to enter the U.S. market.

Cell Phones, 337-TA-297 (Motorola v. Nokia): We represented Nokia in a high profile case involving early cell phones, securing a settlement favorable to Nokia that permitted imports unabated.

DRAMs, 337-TA-242 (Texas Instruments v. NEC et al.): We represented respondent NEC in defending a case in which the ITC found no violation of § 337 by NEC. Eventually, TI and NEC settled.

Optical Waveguide Fibers, 337-TA-189 (Corning v. Sumitomo Electric Industries): We successfully represented respondent Sumitomo Electric in defending against a complaint filed by Corning. The ITC reached a determination of no violation of § 337.

Burn Beds (Fluidized Supporting Apparatus), 337-TA-182/188 (Support Systems Int’l v. UHI Corp.): We secured a preliminary determination of violation for Support Systems (337-TA-182), while simultaneously successfully defending against a charge of infringement by UHI in a counter § 337 action (337-TA-188). The case settled very favorably for Support Systems.

Abbott Labs v Tosoh Medics, (N.D. Ill.): We successfully represented defendant Tosoh Medics against claims of infringement by Abbott in a district court case related to technology for antibody assays. Abbott withdrew the complaint after validity problems were uncovered in discovery.