Settlement Agreement in ITC Section 337 Investigations

Summary

This template is an agreement for settlement between opposing parties in an investigation brought under 19 U.S.C. § 1337 (337 Investigations) at the U.S. International Trade Commission (ITC). This is filed with motion to terminate to globally settle the Investigation and any co-pending district court litigation and post-grant review proceedings. This template includes practical guidance, drafting notes, and alternate clauses. Commission Rule § 210.21 provides that parties may terminate 337 investigations based on a settlement agreement, a consent order, or an arbitration agreement. See 19 C.F.R. §210.21(b) (settlement); §210.21(c) (consent order); §210.21(d) (arbitration agreement). This form may be used to terminate a pending 337 Investigation, or may be adapted to settle a dispute before a 337 Investigation is initiated. It is assumed for purposes of this form that: • the 337 Investigation was initiated based on patent infringement allegations; • there are only two parties – a patent owner alleging patent infringement (the ''Complainant'') and a single accused infringer (the ''Respondent''); • a single allegedly infringed U.S. patent (the ''Asserted Patent''); and • a single allegedly infringing product (''Respondent's Product''). This form can be adapted to settle disputes involving additional parties, additional U.S. patent(s), additional alleged infringing product(s), and different unfair competition allegations, such as trademark or copyright infringement. While confidentiality is an important consideration in every settlement agreement, it is particularly important in 337 Investigations because the ITC requires that any written settlement agreement be filed with a motion to terminate. See 19 C.F.R. § 210.21(a). Commission Rule § 210.21(a) states that ''any agreements concerning the subject matter of the investigation'' must be identified and that all written agreements must be ''filed with the Commission along with the motion.'' To maintain confidentiality, Commission Rule § 210.21(a) permits the parties to file both a redacted version and a confidential version of the agreement with a motion to terminate. However, the ALJ may reject the motion if the public version is overly redacted, or in rare occasions, if the settlement agreement is contrary to public interest. Commission Rule § 210.21(a) also permits motions to limit service of the settlement agreement for ''good cause.'' Commission Rule 210.21(a), requiring disclosure of ''any agreements concerning the subject matter of the investigation,'' has been interpreted to include agreements with third-parties that are not participating in 337 Investigation. See Certain Semiconductor Devices Having Layered Dummy Fill, Electronic Devices, and Components Thereof, Inv. No. 337-TA-1342, Comm'n Determination (July 11, 2023) (EDIS Doc. ID 800115). For more information on ITC Section 337 Investigations, see ITC Section 337 Investigations in Patent Infringement: Pre-suit Considerations, and ITC Section 337 Investigations in Patent Infringement: Overview. For more information on patent rights, claims, and infringement, see Patent Fundamentals, Pre-suit Considerations for Patent Infringement Litigation, and Patent Litigation Fundamentals. For more on settlement in patent cases, see Patent Settlement Agreement Checklist.