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1. Vol. 21 No. 7
July 2016
Copyright© 2016 Federal Circuit Bar Association.
All rights reserved.
Judiciary Embraces
Efficiency, House Is
Told
ITC Enters Unfamiliar Territory in New Steel-
Related Section 337 Case
Geoffrey M. Goodale1
FisherBroyles, LLP
On June 2, 2016, the U.S. International
Trade Commission (“ITC”) issued a notice
of institution of investigation based on
a complaint filed by United States Steel
Corporation (“U.S. Steel”) in which U.S.
Steel alleged that numerous entities
have engaged in various violations of
Section 337 of the Trade Act of 1930,
as amended, relating to certain carbon
and alloy steel products that have been
manufactured in China and imported
into the United States (the “Investigation
Institution Notice”).2
As discussed below,
this Section 337 investigation will examine
novel issues and could result in remedies
being issued that could effectively prohibit
a wide range of Chinese-origin carbon
and alloy steel products from being
imported into or sold in the United States.
Novel Causes of Action Involved
in the New Investigation
The vast majority of Section 337
investigations in recent years have
involved allegations of patent or registered
1The views expressed in this article are the author’s
alone and should not be attributed to the Federal
Circuit Bar Association, FisherBroyles, LLP or any of
its clients.
2 Certain Carbon and Alloy Steel Products, Inv.
No. 337-TA-1002, Notice of Institution of Investi-
gation, 81 Fed. Reg. 35,381 (USITC June 2, 2016)
(hereinafter the “Investigation Institution Notice”).
trademark infringement.3
However, the
statute also permits parties to request
that the ITC conduct Section 337
investigations relating to other kinds
of unfair trade practices, including,
but not limited to, trade secret
misappropriation, passing off, and
false designation of origin of goods.4
In the Section 337 complaint that
it filed with the ITC on April 26,
2016, U.S. Steel alleged some unfair
trade practices that are rarely, if
ever, brought before the ITC.
Specifically, U.S. Steel asserted that
the importation into the United States
of certain Chinese-origin carbon and
alloy steel products involved: (1) a
conspiracy to fix prices and control
output and export volumes of the
subject products; (2) misappropriation
and use of trade secrets; and (3)
false designation of origin or
manufacturer(s) in an effort to avoid
antidumping and countervailing duty
orders imposed on certain Chinese-
origin carbon and alloy steel products
imposed by the U.S. Government.5
3 See USITC, Section 337 Statistics: Types of
Unfair Acts Alleged in Active Investigations, FY
2006-FY 2015, available at https://usitc.gov/
intellectual_property/337_statistics_types_un-
fair_acts_alleged_active.htm.
4 19 U.S.C. § 1337(a)(1)(A).
5 Investigation Institution Notice, 81 Fed.
Reg. at 35,381.
ITC see page 4
United States Courts
The federal Judiciary uses a wide
array of initiatives—including ad-
vanced technology, cost reduc-
tion and aggressive auditing—to
deliver justice efficiently, while
enhancing public access to and
knowledge of the courts, accord-
ing to testimony delivered July 6 to
a House Judiciary subcommittee.
“As the Third Branch performs
its constitutional duties,” said
James C. Duff, Director of the
Administrative Office of the U.S.
Courts, “we are focused on be-
ing good stewards of the re-
sources Congress has provided,
while also meeting the needs
of the litigants and the public.”
Duff testified before the Sub-
committee on Courts, Intellec-
tual Property, and the Internet,
about “the Judicial Branch and
the Efficient Administration of
Justice.” Written testimony also
was submitted by U.S. District
Chief Judge Rodney W. Sippel,
Judiciary see page 5

2. The Glow of Halo
Vishal Gupta & David L. Hecht1
Steptoe & Johnson, LLP
In June 2016, the Supreme Court, in
Halo Electronics v. Pulse Electronics, ex-
pressly overruled the standard for determin-
ing enhanced damages under 35 U.S.C. §
284. See 579 U.S. __ (2016), Nos. 14-
1513 and 14-1520 (June 13, 2016). As
a result, the Court has given district courts
broader discretion to decide whether en-
hanced damages are appropriate in light
of the particular circumstances of a case.
Rejecting the Seagate Test
The prior standard was articulated in
In re Seagate Technology, LLC, in which
the Federal Circuit held that enhanced
damages were appropriate when infringe-
ment was willful pursuant to the following
two-pronged test, consisting of objective
and subjective inquiries. 497 F.3d 1360
(Fed. Cir. 2007). First, a patentee had
to demonstrate, by clear and convinc-
ing evidence, that “the infringer acted
despite an objectively high likelihood that
its actions constituted infringement of
a valid patent.” Id. at 1371. Second,
the patent owner had to show, again by
clear and convincing evidence, that the
risk of infringement “was either known
or so obvious that it should have been
known to the accused infringer.” Id.
The Supreme Court found that the
Seagate test was “unduly rigid” and
heightened the requirements for enhanced
damages. Slip op. at 9. For example,
under Seagate, if a defendant presented
a reasonable non-infringement or inva-
lidity defense, its infringement would not
1The views expressed in this article are the author’s
alone and should not be attributed to the Federal
Circuit Bar Association, Steptoe & Johnson, LLP or
any of its clients.
qualify as objectively willful, even if the
defense had not been contemplated
at the time of infringement. Id. at
10. The Supreme Court found that
such a categorical bar to a finding of
objective recklessness was erroneous
since culpable offenders that wan-
tonly and knowingly infringed could
avoid enhanced damages simply by
raising a defense that was not objec-
tively baseless. Id; see also id. at 6.
Next, the clear and convincing stan-
dard for both prongs of the Seagate
test was held to be inconsistent with
35 U.S.C. § 284. Id. at 12. Rather,
the Court found that preponderance
of the evidence is the more appropri-
ate standard for enhanced damages
because there is no reference to “clear
and convincing” within the statute. Id.
A New Standard
The decision of whether to award
enhanced damages is now wholly
discretionary based on the facts and
circumstances of a particular case.
Id. at 12-13. Under Halo, demon-
strating willfulness is one way—not
the only way—that a district court
could properly base its discretion
to award enhanced damages. The
Court guided that enhanced dam-
ages “should generally be reserved
for egregious cases typified by willful
misconduct.” Id. at 11 (emphasis
added). As a result, district courts have
been granted wider latitude to decide
when to award enhanced damages.
Who Decides and Standard of Review
Previously, the Federal Circuit
required that a judge must decide
Seagate’s “objective recklessness”
prong, whereas the second prong,
regarding subjective knowledge, was
reserved for a jury. See Bard Periph-
eral Vascular, Inc. v. W.L. Gore &
Assocs., 682 F.3d 1003, 1006-1007
(Fed. Cir. 2012). Although Halo did
not address whether a jury’s willful
determination alone could support
a finding of willfulness, at least one
district court has found that Halo left
the issue of willfulness as solely a
factual issue that could be decided
by a jury. See Sociedad Espanola
De Electromedicina Y Calidad, S.A.
et al v. Blue Ridge X-Ray Company,
Inc. et al, 1-10-cv-00159 (W.D.N.C.)
(July 8, 2016 Order) (ordering a
judgment of willfulness based on the
jury’s verdict but reserving the question
of an award of enhanced damages).
Halo also changed the standard
of appellate review for an award of
enhanced damages. Prior to Halo,
enhanced damages awards were
reviewed in a trifurcated manner:
(1) the objective recklessness prong
of the Seagate test was reviewed de
novo; (2) the second Seagate prong,
regarding subjective knowledge, was
reviewed for substantial evidence; and
(3) the ultimate decision of whether
to award enhanced damages was
reviewed for abuse of discretion.
Slip op. at 5-6. Going forward, a
district court’s decision on enhanced
damages will now be reviewed only
for abuse of discretion. Id. at 13.
Looking Forward
With increased discretion given to
the district courts to award enhanced
damages, it is expected that more find-
ings of enhanced damages will likely
occur. Additionally, for pending cases,
practitioners should be aware that mo-
tions for reconsiderations may be filed
in light of Halo. See e.g. Transdata,
Inc. v. Centerpoint Energy Houston
Electric LLC et al., 6-10-cv-00557
(E.D. Texas) (June 29, 2016 Order).
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3. 3
2016 Bench & Bar Conference
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You can see an example of this process with step-by-
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The Federal Circuit Bar Association held its annual Bench & Bar Conference in Nash-
ville, Tennesse, June 22-25, 2016. We look forward to seeing you next year at:
The Coeur d’Alene Resort
Coeur d’Alene, ID
June 21-24, 2017

4. 4
Proving Injury to the Domestic Industry Will Be Key to the
Investigation
In order to prevail in this Section 337 investigation, U.S.
Steel must prove that the alleged unfair trade practices are
being used in the importation of the specified products into the
United States and that a domestic industry exists in the United
States that is being injured.6
While it likely will be possible for
U.S. Steel to show that the alleged unfair trade practices exist
and have been used in connection with the importation of the
specified products into the United States, demonstrating that a
domestic industry exists that is being injured may prove to be
complicated and will be closely analyzed in this investigation.
In Section 337 cases not involving the infringement of
statutorily protected intellectual property rights (e.g., patent
infringement), the statute requires that a complainant show
that a domestic industry is being destroyed or substantially
injured or is being prevented from being established as
a result of respondents’ unfair acts.7
In order to make
such a showing, a complainant can provide evidence
relating to such things as the volume of imports and
their penetration, lost sales, underselling by respondents,
reduction in complainant’s profits and employment levels,
and declining production, profitability, and sales. It
will be interesting to see whether U.S. Steel can provide
such evidence during the course of the investigation.
Comprehensive Remedies Could Be Issued if
U.S. Steel Prevails
Under the statute, the ITC can grant any one or
more of the three following kinds of relief following the
6 19 U.S.C. § 1337(a)(1)(A).
7 Id.
ITC from page 1
finding of a violation of Section 337: (1) a limited exclusion
order (“LEO”); (2) a general exclusion order (“GEO”); and/
or (3) a cease and desist order (“CDO”). In its Section 337
complaint, U.S. Steel has requested all three forms of relief.8
The LEO is most the common form of remedy that is issued
by the ITC; such an order will direct U.S. Customs and Border
Protection (“CBP”) to bar infringing products that originate
from a specific source (e.g., the Chinese respondents named
in U.S. Steel’s Section 337 complaint). In instances where the
complainant demonstrates that it is difficult to identify all of
the sources of infringing products, the ITC may issue a GEO,
which applies to all infringing goods regardless of source. The
third kind of remedy is the CDO, by which named domestic
respondents can be prohibited from selling infringing products
in their inventory and/or ordered to cease specific practices or
types of anticompetitive conduct. So, if U.S. Steel prevails on the
merits, and the ITC issues all three of these forms of relief, the ITC
could effectively prohibit many kinds of Chinese-origin carbon
and alloy steel products from being imported into or sold in the
United States. If such relief is granted and is not blocked by the
U.S. Trade Representative during the Presidential Review period,
it is likely that some or all of the respondents would appeal the
ITC’s decision to the U.S. Court of Appeals for the Federal Circuit.
In summary, this new Section 337 investigation could have
profound implications for Section 337 practice and for U.S. imports
of a wide range of Chinese-origin carbon and alloy steel products.
Accordingly, international trade practitioners should closely monitor
this case, which may take until October 2017 to be decided.
8 Investigation Institution Notice, 81 Fed. Reg. at 35,381.
Click HERE for more information about the
PTO Pro Bono Program
Pro Bono Program
and the inventor in any way. A Case
Closing Form is attached for the at-
torneys to be completed at the end
of the representation and returned to
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neys use their own or use their firms.
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see the FAQs regarding our
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cerns about the pro bono programs,
please contact Hee Kim at kim@
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with Invention Information form and
Inventor Profile form, which will be
directly forwarded to an attorney who
will assist the inventor. The inventor
will then return the completed forms,
and meet the knowledge requirement
either completing a USPTO certifica-
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This applicant is ready to be prof-
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Once an attorney shows interest
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bono program works. Here is a sum-
mary of the PTO pro bono program’s
proffering process. When applicants
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bar.org website, this office retrieves
applications on Fridays. Then the
pro bono coordinator screens for
income (that the applicant’s income
level is not greater than 300% of the
poverty guideline), and ensure that
the request involves an invention.
Qualifying applicants are contacted

5. of the Eastern District of Missouri.
In his testimony, Duff noted that
federal court caseloads have in-
creased nearly four-fold in the last
50 years, while judgeships only
doubled. “The fact that our judges
and courts are meeting many of
the challenges of increasing casel-
oads is a testament to the efficien-
cies in our court system,” Duff said.
Duff cited several initiatives to deliver
justice efficiently and cost effectively,
while also enhancing public access.
•Effective case management, includ-
ing the use of visiting judges, helps
courts with heavy caseloads, while
magistrate judges and senior judges
help manage caseloads in all courts.
•Shared Administrative Services and
work measurement analyses have
reduced total court staffing require-
ments by nearly 3,900 full-time
equivalent positions since 2011.
•Refined budget formulations, and an
aggressive auditing program and oth-
er fiscal controls, have led to savings.
•Court space reduction by 3 per-
cent by the end of fiscal year 2018.
•Information technology improve-
ments, including centralized host-
ing services and a national vid-
eoconferencing service, have
reduced individual court costs.
•Electronic case filing and Public
Access to Court Electronic Records
(PACER) have made court documents
readily available to the public, while
the Government Printing Office pro-
vides free access to court opinions.
•EJuror provides electronic reg-
istration for jurors, while Debt-
or Electronic Bankruptcy Notic-
ing, has reduced notification costs.
•James C. Duff, director of
the Administrative Office of
the U.S. Courts, is sworn in.
•AO Director James C. Duff testi-
fied in front of a House Judiciary
subcommittee on July 6, 2016.
•Subcommittee chair, Rep. Dar-
rell Issa (R-CA), questions
AO Director James C. Duff.
•Rep. Robert Goodlatte (R-VA),
chair of the House Judiciary
Committee, makes a statement
•AO Director James C. Duff stressed
the Judiciary’s commitment to be-
ing “good stewards” of federal funds.
Following Duff’s testimony, panel mem-
bers, including subcommittee chair
Darrell Issa (R-CA), asked a series of
questions, focusing on issues related to
transparency and the federal Judiciary.
Sippel, who is chair of the Judicial Con-
ference’s Committee on the Judicial
Branch, focused his written testimony
on relations between the three branch-
es of government and efforts to improve
the public’s knowledge of the Judiciary.
“The Judiciary has a longstanding inter-
est in developing and maintaining rela-
tions with the executive and legislative
branches of government,” Sippel wrote.
“The Constitution established three co-
equal branches of government as inte-
gral to keeping our democracy healthy
and vital to preserving the rule of law.”
Sippel noted that the Judiciary partici-
pates in several programs and initiatives
to strengthen its relationship with
Congress and the Executive Branch.
Sippel also cited a national effort by
federal judges to directly educate
the public. These efforts include
public tours of courts; courthouse-
based learning centers; having
judges lead educational programs
in community settings; and holding
naturalization ceremonies across
the country on Constitution Day
and Citizenship Day, in September.
“The Judiciary feels so strongly that
greater civic education will help im-
prove the public’s understanding of
and trust in the courts that enhanc-
ing civic education is one of its pri-
mary strategic goals,” Sippel wrote.
In his testimony, Duff said that the
Judiciary needs help from Congress
in order to continue to provide ef-
ficient administration to justice.
The Judicial Conference is seeking
19 new judgeships in 11 districts
that have particularly high casel-
oads. Duff also asked that Con-
gress account for resource impacts
on the courts that could be caused
by legislative proposals. He cited
bills on sentencing reform and
immigration reform as examples.
“We ask that as Congress con-
siders new legislation that it also
considers the impact of new laws
on the federal courts and the fed-
eral indigent defense system,”
Duff said, “and ensures the Judi-
ciary has the resources needed
to address increased workload.”
Bridging the IP Gap Between the U.S., Europe, and Asia
The Global Fellows Series promotes a higher level of international IP practice among the next generation of leaders in the
global legal community. The intent of the Global Fellows Series is to bring together a small group of future leaders in the
global legal community for an intensive learning program taught by leading judges and practitioners from both countries.
The Fellows will convene for two sessions, tentatively scheduled for first in Washing-
ton, DC, from October 4-7, 2016, and then in Munich from March 7-10, 2016.
Those who are interested in participating should submit an application by August 29, 2016. An application form
can be filled out online here. If you or your organization has an interest in participating, or wish to obtain more in-
formation, please contact Mr. James Brookshire, Executive Director, FCBA, globalfellows2016@fedcirbar.org.
The Global Fellows Series
judiciary from page 1
5

6. 6
ON Committees
Increasing Committee Member
Involvement
Association Committees reflect the commitment, energy,
and insight of the community through the engagement
of their leaders and members. Committees contribute
professional insight and host relevant programs throughout
the member-year. Have yet to join a Committee? Check out
the Committees home page on the Association website to
learn more! Already a Committee member and want to get
more involved? Contact your Committee leaders to find out
ways you can contribute! If you have any questions, please
feel free to contact Hee Kim, Committee Coordinator, at
kim@fedcirbar.org or via phone at (202) 536-4160.
Committees are an excellent way to get involved,
providing opportunities to network with members
and take on leadership roles. Join up to three:
l Amicus Committee
l Bench & Bar Planning Committee
l Corporate Counsel Committee
l Dispute Resolution Committee
l Diversity Committee
l Federal Circuit Bar Association
Journal Committee
l Friedman Memorial Committee
l Global Fellows Committee
l Global Series Committee
l Government Contracts Committee
l Government Employees
Pro Bono Committee
l Hutchinson Writing
Contest Committee
l International Trade Committee
l Law Clerks & Students Committee
l Legislation Committee
l Membership Committee
l MSPB Appeals Committee
l Patent Litigation Committee
l Patent & Trademark Office
Committee
l Patent Trial and Appeal Board Committee
l PTO Pro Bono Committee
l Regional Programs Committee
l Rules Committee
l Scholarship Committee
l Veterans Appeals
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PTAB and TTAB Committee
Committee Chairs
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Rick Neifeld, Neifeld IP Law PC
Committee Vice-Chair
Erika Arner, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
Phil Hirschhorn, Buchanan Ingersoll & Rooney PC
Megan F. Raymond, Ropes & Gray LLP
Launched in July 2016, the PTAB and TTAB Commit-
tee addresses the impact of PTO PTAB and TTAB proceed-
ings, decisions, and practice in the Federal Circuit com-
munity and implications for court management and best
practices in view of AIA post-grant, inter partes review and
covered business method proceedings. It also provides
information to the FCBA community regarding issues af-
fecting PTO PTAB and TTAB appeals at the Federal Circuit.
The PTAB and TTAB committee holds monthly committee
member calls on the second Thursdays of each month at
3PM,unlessnotifiedotherwise.DiscussionofrecentPTABand
TTAB cases and planning of webcast and other programming
occur during the call. Interested members should join the
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7. FederalCircuitBarAssociationCharitableandEducationalFundExpressesAppreciation
totheFollowingContributorsfortheirGenerousSupportoftheFund’sOutreachtotheCircuitCommunity
2016LEADERSCIRCLE
7

8. 2016 GLOBAL SERIES SPONSORS
The Federal Circuit Bar Association Charitable and Educational Fund
Expresses its Appreciation to the Following Organizations for their Generous Contributions
8

9. 9
Thank You
The members of the Association and supporters of the
Charitable and Educational Fund encourage a broad
variety of activities in support of the legal community of the
United States Court of Appeals for the Federal Circuit. Our
membership creates scholarly articles, analyzing the legal
impact of the court’s decisions, as well as current legal
educational programs. They plan and attend our regional
and national conferences, including the Bench & Bar. Thank
you for this ongoing support.
A number of sponsors have chosen to participate on
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For additional information on sponsorship, please contact
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