ITC Section 337 Toolkit: Complaints, Domestic Industry Proof, and Remedy Briefing

Summary. The working documents of a Section 337 investigation, annotated.

Template 1 — Forum decision memorandum

Owner: lead counsel, before any drafting. Two pages.

1. IS THERE IMPORTATION?
   Accused articles, manufacturer, country, evidence of importation

2. WHAT RIGHT IS ASSERTED?
   [ ] Patent  [ ] Registered TM  [ ] Registered © [ ] Mask work
   [ ] Unfair act (trade secret, trade dress, false advertising)
       -> requires proof of INJURY to a domestic industry

3. TECHNICAL PRONG
   Domestic article: ____________
   Claim practiced: ____________
   Owned by complainant or licensee? ____________
   Will the licensee cooperate? ____________

4. ECONOMIC PRONG (19 U.S.C. 1337(a)(3))
   (A) Plant and equipment          $________
   (B) Labor or capital             $________
   (C) Engineering / R&D / licensing $________
   Are (C) expenditures patent-based or litigation-driven? ________

5. WHAT IS THE OBJECTIVE?
   Exclusion / leverage / damages (ITC awards none)

6. PARALLEL DISTRICT COURT ACTION? Y/N

7. RECOMMENDATION AND BUDGET

What it prevents: an eighteen-month jurisdictional loss.

Template 2 — Economic prong allocation worksheet

Owner: the client's controller, with counsel. Built from contemporaneous systems.

Rules. Every number traces to a system of record. Every allocation basis is documented and was chosen for business reasons, not for this case. Litigation-driven licensing expenditures are segregated and excluded from the subsection (C) showing.

Template 3 — Technical prong claim chart

Identical in form to an infringement chart, but directed at your own product.

Cross-check before filing: does the construction you need for the accused imports also cover this article? If not, you have a problem that will surface at the hearing.

Template 4 — Importation evidence log

Retain for each purchase: invoice, packing slip, shipping label, packaging photographs, country-of-origin marking photographs, the article itself, and the name of the person who took possession.

Template 5 — ITC complaint outline

I.    INTRODUCTION
II.   THE PARTIES
      A. Complainant, including domestic operations
      B. Proposed respondents, with addresses for service
III.  THE PRODUCTS AT ISSUE
IV.   THE ASSERTED INTELLECTUAL PROPERTY
      A. Patents, with certified copies (Exhibit __)
      B. Ownership and assignment chain (Exhibit __)
      C. Licenses (Exhibit __)
      D. Foreign counterparts
V.    UNLAWFUL AND UNFAIR ACTS
      A. Importation (Exhibits __)
      B. Infringement, with claim charts (Exhibits __)
VI.   SPECIFIC INSTANCES OF UNFAIR IMPORTATION
VII.  THE DOMESTIC INDUSTRY
      A. Technical prong, with claim chart (Exhibit __)
      B. Economic prong, with financial exhibits (Exhibit __)
VIII. CLASSIFICATION UNDER THE HTSUS
IX.   RELATED LITIGATION
X.    RELIEF REQUESTED
      A. Limited exclusion order
      B. General exclusion order (state the statutory predicate)
      C. Cease and desist orders (state inventory basis)
XI.   PUBLIC INTEREST STATEMENT

Template 6 — 100-day program request

Filed at or near institution. Short and specific.

Respondent requests that the Commission designate the following issue for early disposition under the 100-day program: whether Complainant has established a domestic industry under 19 U.S.C. § 1337(a)(3)(C).

The issue is potentially dispositive. Complainant relies exclusively on licensing investment; it manufactures nothing in the United States and has identified no licensee article.

The issue is discrete. It requires limited discovery into the nature and purpose of Complainant's licensing expenditures.

The public record supports the request. [Cite the complainant's litigation history and the settlement-based character of the identified licenses.]

Early resolution conserves resources. Full adjudication would require [n] depositions and [n] expert reports on issues that need not be reached.

Template 7 — Ground rules compliance sheet

Owner: one named associate. Updated when the ALJ issues or amends ground rules.

Template 8 — Prehearing brief issue matrix

The waiver rule: issues not raised in the prehearing brief are waived. This matrix exists so nothing is left out.

Template 9 — Remedy briefing outline (complainant)

I.   A LIMITED EXCLUSION ORDER SHOULD ISSUE
     A. Violation found as to each respondent
     B. Proposed scope and article description
     C. Downstream products should be covered [nine-factor analysis]
II.  A GENERAL EXCLUSION ORDER IS WARRANTED
     A. Statutory predicate: circumvention (337(d)(2)(A))
        - Corporate restructuring, shell importers, name changes
     B. Statutory predicate: pattern of violation and difficulty
        identifying sources (337(d)(2)(B))
        - Number of sellers; marketplace listings; defaults;
          untraceable foreign entities; failed enforcement efforts
III. CEASE AND DESIST ORDERS SHOULD ISSUE
     A. Commercially significant domestic inventory (current evidence)
     B. Proposed order terms
IV.  THE PUBLIC INTEREST FAVORS RELIEF
     A. Public health and welfare
     B. Competitive conditions
     C. Domestic production of like articles — complainant's capacity
     D. United States consumers
V.   BOND SHOULD BE SET AT ___% OF ENTERED VALUE
     A. Price differential evidence
     B. Alternative royalty basis
VI.  PROPOSED ORDERS

Template 10 — Public interest declaration (third party, for respondent)

1. I am [title] at [entity], which [describes operations].
2. [Entity] purchases [accused articles] for use in [application].
3. Annual purchase volume is approximately [ ].
4. Alternative sources. I have evaluated available alternatives. [Describe: none available / available only at [n]-month lead time / available but incompatible with installed systems].
5. Consequences of exclusion. If the accused articles were excluded, [entity] would [describe concrete operational consequence].
6. Service and repair. [Entity] maintains an installed base of [n] units requiring replacement parts. Exclusion without a service carve-out would [consequence].
7. I make this declaration under penalty of perjury pursuant to 28 U.S.C. § 1746.

Note: the Commission rarely denies relief on public interest grounds, but it regularly tailors orders. Carve-outs for service, repair, warranty replacement, and existing contracts are the realistic objective.

Template 11 — Bond evidence package

Why it matters: where the record is insufficient, the Commission has set bonds at 100% of entered value. A respondent that puts in no evidence gets the worst outcome available.

Template 12 — CBP enforcement package (complainant, post-order)

Delivered to the Exclusion Order Enforcement branch before the order takes effect.

1. PLAIN-LANGUAGE DESCRIPTION OF COVERED ARTICLES
   (Written for a customs officer, not a patent lawyer)

2. PHYSICAL IDENTIFICATION CRITERIA
   - Visual characteristics
   - Package markings and part numbering conventions
   - Component footprints or electrical signatures
   - Photographs of covered and non-covered articles side by side

3. SAMPLES
   Physical exemplars where feasible

4. KNOWN IMPORTERS AND BRANDS
   Entity names, alternate names, addresses, ports of entry

5. SHIPPING PATTERNS
   Typical origin ports, carriers, HTSUS classifications used

6. TECHNICAL CONTACT
   Name, telephone, email — available for real-time questions

7. NON-COVERED ARTICLES
   Explicitly identify complainant's own products and known
   non-infringing competitor products to prevent over-exclusion

Item 7 matters more than complainants expect. Over-exclusion generates complaints from innocent importers and erodes CBP's willingness to enforce aggressively.

Template 13 — Redesign coverage request

Used by either party when a respondent modifies the accused product.

Contents of the request: the original claim chart, the redesign described element by element, the specific limitation the redesign is said to avoid, and technical evidence (schematics, source code, test data) supporting the assertion.

Template 14 — Consent order term sheet

1. Covered articles. [Definition — negotiate narrowly.]
2. Undertaking. Respondent will not import, sell for importation, or sell after importation covered articles.
3. Carve-outs. Service parts for units imported before [date]; warranty replacements; articles found not to infringe in a subsequent proceeding.
4. Redesigns. Procedure for determining whether a modified product is a covered article.
5. No admission. Respondent does not admit infringement, validity, or that a domestic industry exists.
6. Reservation. Respondent reserves all defenses in any other forum, including the parallel district court action and any PTAB proceeding.
7. Term. Until expiration of the asserted patents.
8. Enforcement. Commission enforcement with civil penalties; no private right of action created.
9. License. [If paired with a license: scope, rate, term, most-favored terms.]

Template 15 — Investigation status memorandum

One page, to the client, monthly. The Commission's pace makes stale reporting worse than none.

Target date: [ ] · Days remaining: [ ] Completed since last report: [ ] Next 30 days: [ ] with dates Client tasks: [ ] with owners and dates Risk of the month: [ ] Spend to date / projected to hearing: [ ] Settlement posture: [ ]

Template 16 — Cross-forum coordination log

Owner: one named person. Most Section 337 respondents are simultaneously in district court and at the PTAB.

Standing questions to run before every substantive filing in any forum:

1. Does this claim construction match the position taken at the Commission and at the Board?
2. Does this invalidity ground implicate 35 U.S.C. § 315(e) estoppel from an instituted inter partes review?
3. Does this characterization of the accused product match the technical description given elsewhere?
4. Has the client's business testimony about market conditions been consistent across forums?
5. If we prevail here, what happens to the other proceedings? If we lose?

Known timing interactions:

• The ITC will not stay for an inter partes review; the two run in parallel and the ITC finishes first.
• The district court case is stayed as of right under 28 U.S.C. § 1659 while the ITC case runs.
• The IPR one-year bar runs from district court service, not from ITC institution.
• Cancellation of the asserted claims at the Board requires rescission of an exclusion order once final.

Template 17 — Post-order monitoring protocol

Owner: complainant's counsel, with the client's trade compliance function.

Document every enforcement contact. A record of active enforcement supports later requests for modification, and supports a general exclusion order in any follow-on investigation by showing that limited orders were circumvented.

Related documents

• Section 337 Investigations at the ITC: Exclusion Orders, Domestic Industry, and Speed
• Litigating a Section 337 Investigation at the ITC: A Practical Guide
• ITC Section 337 Checklist: A Practical Checklist
• Border Enforcement Toolkit: Recordations, Seizure Responses, and Gray Market Programs
• Customs Compliance Toolkit: Classification Files, Origin Support, and Penalty Responses
• Patent Litigation Toolkit: A Roadmap and Research Guide
• Trade Secret Protection Toolkit: Building and Defending a Confidentiality Program