06/26/19

Preclusive Effect of the International Trade Commission’s Patent Decisions: Can District Courts Ignore Texas Instruments Inc. v. Cypress Semiconductor Corp.?

Preclusive Effect of the International Trade Commission’s Patent Decisions: Can District Courts Ignore Texas Instruments Inc. v. Cypress Semiconductor Corp.?

Emre Yuzak

Section 337 of the Tariff Act of 1930, as amended, gives complainants a powerful remedy against unfair practices in import trade. It permits the United States International Trade Commission (“ITC”) to exclude certain items from importation, directing Customs and Border Patrol to deny their entry. Section 337, with its liberal grants of exclusion orders, attracts mainly intellectual property disputes, including several high-profile smartphone cases.

Litigants in section 337 cases may also bring their disputes to state or federal court, raising the question of what preclusive effect the ITC’s decision has. In Texas Instruments Inc. v. Cypress Semiconductor Corp., the Federal Circuit ruled that parties cannot rely on the ITC’s decision in patent cases to apply claim preclusion or issue preclusion in other cases. 

This article examines the preclusive effect of the ITC’s decisions and also examines related issues that are still unresolved. Courts have not agreed on whether the Federal Circuit’s decisions on an appeal from the ITC should receive the same treatment as the ITC’s own decisions. Several regional courts of appeal have held that the ITC’s decision in non-patent cases can have preclusive effect, but none have addressed copyright cases, which may require treatment different from other non-patent cases. Lastly, this article argues that when the Federal Circuit decided the preclusive effect of the ITC’s patent decisions in Texas Instruments, its holding was potentially not binding on any other court.

100 J. Pat. & Trademark Off. Soc’y 657(2019)

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