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Sale for Importation, Third-Party Disclosure of Trade Secrets at Issue in IPR Probe

Thursday, September 25, 2014
Sandler, Travis & Rosenberg Trade Report

The International Trade Commission is reviewing in part the final initial determination issued by the presiding administrative law judge in investigation 337-TA-887 that the importation, sale for importation and sale within the U.S. after importation of certain crawler cranes and components thereof are infringing Section 337 of the 1930 Tariff Act by reason of infringement of certain patents and misappropriation of certain trade secrets.

The ITC will review the ALJ’s findings with respect to importation of the accused products, infringement of the asserted patents, estoppel, the technical prong of the domestic industry requirement and the asserted trade secrets. In connection with this review, the Commission is requesting that complainant Manitowoc Cranes LLC and the respondents, which are located in China and the U.S., provide input on a number of specific issues, including the following.

- any legal support for the proposition that “sale for importation” requires that the article be constructed and ready for use

- whether there can be a violation of section 337 when there is a sale for importation but no later act of importation

- whether there can be a sale for importation of articles that infringe a patent claim without proof of direct infringement in the United States

- under what circumstances a third party has a duty to refrain from disclosing a trade secret, the consequences of a trade secret being disseminated by a third party, and how extensive the disclosure of a trade secret by a third party must be to prevent or destroy trade secret protection

- with respect to each trade secret allegation, the appropriate length of the remedy the ITC may impose if it finds misappropriation

In addition, the ITC is seeking public comments by Oct. 1 on (a) the form of remedy, if any, that should be ordered (e.g., an exclusion order or a cease and desist order), (b) the effects of any such remedy on the public health and welfare, competitive conditions in the U.S. economy, U.S. production of articles that are like or directly competitive with those that are subject to investigation, and U.S. consumers, and (c) the amount of the bond under which infringing articles could continue to enter the U.S. during the 60-day period the president has to review any ITC-ordered remedy.

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