Parties and counsel considering mediation of a Section 337 case would be expected to be familiar with the materials and forms published by the ITC on its mediation program, particularly the materials and forms relating to confidentiality.
Prudent parties and counsel considering mediation of a 337 case will want to familiarize themselves with the following ITC Orders.
Certain Composite Aerogel Insulation Materials and Methods for Manufacturing the Same, Inv. 1003, Order No. 20 (ALJ McNamara, December 15, 2016)(extension for mediation based on delay in receipt of travel visas).
Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. 997, Order No. 24 (ALJ McNamara, December 14, 2016)(extending mediation deadline due to difficulties in coordinating the schedules of the mediator, principals, and attorneys for each party).
Certain Silicon-On-Insulator Wafers, Inv. 1025, Order No. 9 (ALJ McNamara, December 9, 2016)(OUII “may be present at the settlement meeting to facilitate, but not mediate, the process without my prior approval. In this case, the first settlement conference should occur toward the end of discovery. The mediation should be ideally scheduled after discovery had concluded but well before pre-hearing briefs at filed.”).
Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing Same, Inv. 1010, Order No. 48 (ALJ Lord, November 30, 2016)(extension of mediation deadline based on parties unable to ﬁnd mutually-agreeable dates for mediation by the current deadline).
Certain Mobile and Portable Electronic Devices Incorporating Haptics (Including Smartphones and Laptops) and Components Thereof, Inv. 1004/990, Order No. 20 (Chief ALJ Bullock, November 28, 2016)(mediation deadline extended to “facilitate profess at the mediation”).
Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. 997, Conference Transcript at 28 (ALJ McNamara, November 17, 2016)(best time to schedule mediation varies from case to case).
Certain Composite Intermediate Bulk Containers, Inv. 1014, Conference Transcript (ALJ Lord, September 9, 2016)(counsel for Chinese Respondent seeks clarification about necessity of corporate representative attending settlement conferences and mediation in person; ALJ Lord: “Is there reason why outside counsel cannot be given authority to settle?”); Order No. 7 (January 12, 2017)(mediation deadline extended to allow the parties to conduct additional face to face settlement negotiations and to schedule mediation).
L-Tryptophan, L-Tryptophan Products, and Their Methods of Production, Inv. 1005, Order No. 6 (ALJ Essex, August 22, 2016)(parties granted leave to conduct settlement conferences telephonically but on condition if parties cannot hold required second and third settlement conferences in person the parties will be required to participate in the Commission’s mediation program). See also Certain Air Mattress Bed Systems and Components Thereof, Inv. 999, Order No. 6 (ALJ Essex, September 1, 2016)
Certain Radio Frequency Identification (“RFID”) Products and Components Thereof, Inv. 979, Order No. 14 (ALJ McNamara, May 4, 2016)(denying Complainant’s motion to cancel mediation based on Respondents’ alleged “unreasonable settlement posture”).
Certain Air Mattress Systems, Components Thereof, and Methods of Using the Same, Inv. 971, Order No. 13 (Chief ALJ Bullock, May 3, 2016)(eleven day extension to mediation deadline due to scheduling conflicts of corporate representatives).
Certain Activity Tracking Devices, Systems, and Components Thereof, Inv. 963, Order No. 24 (ALJ Lord, January 15, 2016)(denying motion for sanctions for alleged failure to participate in good faith in settlement conferences; Rule 408 does not preclude receipt of evidence of bad faith at required settlement negotiations; ALJ finds correspondence on settlement “sarcastic,” “pejorative,” “demeaning,” “hyperbolic”; ALJ denies proposal supported by OUII to bar third-party creditor participants at future mediations and required settlement conference.)
Certain Silicon-On-Insulator Wafers, Inv. 966, Order No. 5 (ALJ McNamara, January 5, 2016)(second settlement conference and mediation rescheduled to occur immediately after Markman hearing).
Certain Electric Skin Care Devices, Brushes and Chargers Therefor, and Kits Containing Same, Inv. 959, Order No. 35 (ALJ Lord, January 4, 2016)(investigation stayed based on agreement on settlement term sheet at mediation).
Certain Electric Skin Care Devices, Brushes and Chargers Therefor, and Kits Containing Same, Inv. 959 (OUII Opposition to Motion To Extend Mediation Date, November 12, 2015)(proposed extension too late in the proceedings; motion defective for failure to timely file before due date).
Certain Electric Skin Care Devices, Brushes and Chargers Therefor, and Kits Containing Same, Inv. 959, Order No. 28 (ALJ Lord, November 19, 2015)(leave granted for representative to attend mediation by telephone due to personal circumstances and in view of fact of counsel’s attendance in person); Order No. 33, December 10, 2015 (motion for extension granted in part to conform procedural schedule to mediation scheduled by the private parties for December 15, 2015).
Certain Wireless Standard Compliant Electronic Devices, Including Communication Devices and Tablet Computers, Inv. 953, Order No. 26 (ALJ Lord, October 14, 2015)(extension to mediate based on scheduling constraints of participants).
Certain Recombinant Factor VIII Products, Inv. 956, Order No. 13 (ALJ Lord, October 14, 2015)(extension to complete mediation in order to clarify and narrow the issues in dispute and to address logistical issues of scheduling and travel).
Certain Laser Abraded Denim Garments, Inv. 930, Order 96 (ALJ McNamara, Aug. 24, 2015)(Complainant and Respondent ordered to provide information and documentation on settlement discussions and mediation during pendency of motion to terminate Respondent by default); Order No. 99 (ALJ McNamara, Sept. 9, 2015)(parties and counsel ordered to show cause why they should not be sanctioned for failure to participate in settlement discussions and mediation); Order No. 104 (ALJ McNamara, Oct. 5, 2015)(Determination after review of responses to show cause order; matter deemed resolved due to settlement of the case).
Certain Light-Emitting Diode Products and Components Thereof, Inv. 947, Order No. 18 (Chief ALJ Bullock, July 23, 2015)(extension for mediation due to mediator scheduling).
Certain Footwear Products, Inv. 936, Order No. 117 (Chief ALJ Bullock, June 16, 2015)(unopposed motion to extend deadline for mediation and mediation report).
Certain Laser Abraded Denim Garments, Inv. 930, Order No. 49 (Chief ALJ Bullock, May 26, 2015)(Regarding stipulation on personal and telephonic participation in mediation); Order No. 52 (Chief ALJ Bullock, May 29, 2015)(Regarding waiver of personal appearance at mediation and order requiring in person participation in future mediation). See also Order Nos. 54-60, 64, 65, 69, and 70 (Regarding extensions of time to mediate).
Certain Laser Abraded Denim Garments, Inv. 930, Order No. 45 (Chief ALJ Bullock, May 8, 2015)(Regarding stipulation on joint participation in mediation by related Respondents).
Certain Communications or Computing Devices and Components Thereof, Inv. 925, Order No. 24 (ALJ Lord, April 20, 2015 (one-day extension to conduct mediation).
Certain Non-Volatile Memory Chips and Products Containing Same, Inv. 916, Order No. 13 (ALJ Lord, October 15, 2014)(joint motion to cancel mediation granted based on moving parties’ multiple settlement conferences in multi-district litigation).
Certain Hemostatic Products and Components Thereof, Inv. 913, Order No. 11 (Chief ALJ Bullock, Sept. 4, 2014)(Postponing mediation until after expert reports).
Mr. Stevens is well-positioned to mediate Section 337 cases – including discovery matters, pre- and post- Markman mediations, and enforcement disputes before the ITC and Customs -- in view of his decades of experience representing small and large, foreign and domestic, Complainants, Respondents, and third-parties in ITC cases.
Section 337 cases are litigated pursuant to the formal adjudication provisions of the Administrative Procedure Act under the supervision of an ITC Administrative Law Judge, who presides over formal discovery and a trial according to rules and procedures akin to an IP case in Federal Court.
Title 19, Section 1337 of the U.S. Code directs the United States International Trade Commission (“ITC”) to conduct investigations of unfair acts in the import trade and to remedy unfair trade act with orders excluding products from importation into the United States or sale in the United States. Section 337 investigations are typically inter parties proceedings involving alleged infringement of intellectual property rights.
Appeals are made to the full ITC, an independent Federal agency comprised of six Commissioners appointed by the President and confirmed by the U.S. Senate. ITC remedial orders are immediately appealable to the President, who may disapprove of the determination on policy grounds. ITC final determinations are also
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Please contact Kent Stevens to discuss your mediation options.
Kent R. Stevens
Mediator - ADR Professional
J.D., M.P.A., LL.M.
Kent R. Stevens
J.D., M.P.A., LL.M.
Copyright © Kent R. Stevens Mediator-ADR Professional. All rights reserved.
appealable to Court of Appeals for the Federal Circuit. ITC exclusion orders are enforced by U.S. Customs and Border Protection of the Department of Homeland Security; ITC cease and desist orders are enforced by the ITC itself, which has authority to issue civil penalties for violation of a C&D order.
The ITC has a formal mediation program to encourage parties to a Section 337 investigation to settle the case in whole or in part. All Section 337 investigation are eligible for participation in the mediation program.
At the start of a Section 337 case the Commission sends to each of the Complainants and Respondents a packet of materials explaining the mediation program. Each party is required to certify to the Commission that it has received the materials, reviewed the materials, and understands the materials. The details on Initiating Mediation, Selecting a Mediator, and Participating in a Mediation are explained in the ITC’s publications available at: https://www.usitc.gov/intellectual_property/mediation.htm.
For Chinese language background on ITC mediation co-authored by Mr. Stevens please see