ITC Section 337 Checklist: A Practical Checklist

Summary. Everything the Commission's schedule will not give you time to fix.

Phase 1 — Complainant: forum assessment

• Confirm the accused articles are imported, sold for importation, or sold in the United States after importation.
• Confirm the asserted right is a patent, registered trademark, registered copyright, mask work, or vessel hull design (statutory IP track) — or plan to prove injury under the unfair acts prong.
• Identify a specific domestic article that practices at least one asserted claim.
• Confirm the domestic article is yours, or that a licensee will cooperate.
• Assess the economic prong under 19 U.S.C. § 1337(a)(3): plant and equipment, labor and capital, or substantial investment in exploitation.
• If relying on licensing, confirm the investments are patent-based and not litigation-driven.
• Confirm damages are not the objective — the ITC awards none.
• Decide whether to file a parallel district court action for damages.
• Budget $3–6 million per side through final determination.
• Confirm client witnesses (controller, engineering manager, executive) will be available in Washington on the Commission's schedule.

Failure mode: filing without a provable domestic industry, and losing on jurisdiction after eighteen months.

Phase 2 — Complainant: build the domestic industry record

Technical prong

• Select the domestic article and the claim it practices.
• Prepare an element-by-element claim chart with engineering support.
• Confirm the constructions needed to reach the imports also cover the domestic article.
• Collect schematics, source code, test data, and product specifications.
• Identify the engineer who will testify.

Economic prong

• Allocate facility costs to the protected articles (square footage, line utilization).
• Allocate headcount by function, with time allocation for shared employees.
• Identify equipment dedicated to the protected articles, with cost and depreciation.
• Extract R&D expenditures from the engineering time system, tied to the asserted technology.
• Separate patent-based licensing expenditures from litigation-driven settlement activity.
• Build every allocation from contemporaneous records, not estimates.
• Prepare the controller to explain every allocation basis.
• Retain an economist to opine on significance and substantiality in industry context.

Failure mode: an allocation reconstructed by counsel, destroyed on cross-examination.

Phase 3 — Complainant: importation evidence

• Purchase accused products in the United States; retain invoices and shipping documents.
• Photograph packaging, markings, and country-of-origin labeling under 19 U.S.C. § 1304.
• Preserve the article itself with a documented chain of custody.
• Collect import data, marketplace listings, and respondent marketing describing foreign manufacture.
• Identify each proposed respondent's role: manufacturer, importer, distributor, seller.
• Confirm addresses for service.

Phase 4 — The complaint

Confirm the complaint contains:

• Description of complainant's business and domestic operations.
• Certified copies of the asserted rights and assignment records establishing ownership.
• Specific identification of accused products.
• Importation evidence.
• Element-by-element infringement claim charts.
• Domestic industry showing on both prongs, with financial and technical exhibits.
• Disclosure of related litigation, including district court and PTAB proceedings.
• Licensing history for the asserted rights.
• The remedy sought: limited exclusion order, general exclusion order, cease and desist orders.
• Public interest statement addressing all four statutory factors.
• Compliance with the form and exhibit requirements of 19 C.F.R. Part 210.
• A parallel district court complaint, if damages are wanted.

Phase 5 — Respondent: the first thirty days

• Day 1: obtain the ALJ's ground rules and the procedural schedule; build the full calendar to the target date.
• Day 1: issue a litigation hold covering accused products, design history, importation records, United States inventory, and communications with the complainant.
• Week 1: verify importation and whether you have been correctly identified.
• Week 1: quantify United States inventory — it determines cease and desist exposure.
• Week 1: analyze the complainant's domestic industry exhibits for weakness.
• Week 2: evaluate a 100-day program request on domestic industry or standing.
• Week 2: move to stay any parallel district court case under 28 U.S.C. § 1659.
• Week 3: calendar the 35 U.S.C. § 315(b) one-year IPR deadline from district court service.
• Week 3: file the answer within 20 days of institution.
• Week 4: begin the design-around. Engineering started now can ship before an order issues.
• Decide whether to appear or default, understanding that default supports a general exclusion order.
• Screen the team for prosecution-bar conflicts before anyone signs the protective order.

Failure mode: treating month one as organizational time.

Phase 6 — Discovery

• Serve discovery in the first week after institution.
• Read and calendar every requirement of the ALJ's ground rules.
• Build document review capacity for ten-day response times.
• Issue third-party subpoenas early; they take longer than party discovery.
• Complainant: target importation, infringement, inventory, and respondent theories.
• Respondent: target the domestic industry allocation, the technical prong article, prior art, and licensing history.
• Set up the confidential business information handling protocol before production begins.
• Track the source of every CBI designation, including third-party documents.
• Depose the complainant's controller on allocation methodology.
• Depose corporate witnesses on importation and inventory.
• Retain experts by month three at the latest.

Phase 7 — Hearing preparation

• Raise every issue in the prehearing brief. Issues omitted are waived.
• Identify every witness and exhibit as required by the ground rules.
• Prepare written direct testimony if the ALJ requires it; it must be complete.
• Prepare witnesses for immediate cross-examination with no live direct.
• Prepare witnesses for examination by OUII Staff.
• Prepare the controller as carefully as the technical experts.
• Identify which topics are CBI and plan closed sessions to be consolidated.
• Confirm exhibit numbering, format, and exchange deadlines.
• Brief remedy, bond, and public interest in the prehearing submissions.

Phase 8 — Remedy and bond

Complainant

• Brief the scope of a limited exclusion order, including downstream coverage under the nine-factor analysis.
• If seeking a general exclusion order, prove circumvention or a pattern of violation plus difficulty identifying sources.
• Prove commercially significant domestic inventory for cease and desist orders, with current evidence.
• Propose order language that CBP can actually administer.
• Address all four public interest factors, including domestic supply adequacy.

Respondent

• Build the public interest record with third-party declarations if exclusion would disrupt supply.
• Request carve-outs for warranty service, repair parts, and existing contracts.
• Put comparable pricing or royalty evidence in the record to keep the bond low.
• Oppose downstream coverage with evidence about burden on legitimate trade.

Phase 9 — After the determination

• Petition for Commission review within 12 days of the Initial Determination.
• Respond to the other side's petition.
• Prepare for the 60-day presidential review period.
• Respondent: arrange bonding and continue importing if the economics justify it.
• Complainant: engage CBP's Exclusion Order Enforcement branch before the order takes effect.
• Provide CBP with plain-language coverage descriptions, identification criteria, and samples.
• Establish monitoring: import data, marketplaces, trade press.
• Prepare for redesigns: CBP ruling request, Commission advisory opinion, or modification proceeding.
• Calendar the lifting of the district court stay and prepare to resume there.
• Remember that the ITC determination has no preclusive effect on validity or infringement in district court.

Quick reference: dispositive issues, ranked by frequency

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