By: Daniel Kazhdan, Ph.D. and David Maiorana While patent decisions from the ITC do not have collateral estoppel effects on later district court cases, other ITC decisions may create collateral estoppel. In a case of first impression, a district court recently ruled that an earlier trade-secret misappropriation decision from the ITC created collateral estoppel in the district court. Manitowoc Cranes LLC v. Sany Am. Inc., No. 13-c-677, 2018 WL 582334 (E.D. Wis. Dec. 11, 2017).
In the underlying investigation, the ITC found that Sany misappropriated Manitowoc’s trade secrets relating to crawler-crane technology under federal common law. Certain Crawler Cranes & Components Thereof, Inv. No. 337-TA-887 (ITC May 6, 2015). The Federal Circuit affirmed. Sany Heavy Indus. Co. v. ITC, 669 F. App’x 569 (Fed. Cir. 2016). After prevailing at the ITC and the Federal Circuit, Manitowoc resumed its previously stayed suit in district court. Sany tried to dispute that any secrets were misappropriated but the district court held that the ITC’s decision was a final decision that created collateral estoppel. Manitowoc, No. 13-c-677, 2017 WL 6327551, at *2 (citing Union Mfg., 763 F.2d at 46). Sany sought certification for interlocutory appeal. The district court denied certification finding no substantial ground for difference of opinion. Manitowoc Cranes LLC v. Sany Am. Inc., No. 13-c-677, 2018 WL 582334 (E.D. Wis. Jan. 29, 2018).
The Federal Circuit has held that “decisions of the ITC involving patent issues have no preclusive effect in other forums.” Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996). According to the Federal Circuit, the legislative history of Section 337 is clear – Congress did not intend for the ITC’s patent decisions to “‘have res judicata or collateral estoppel effect’” in district courts. Id (quoting S. REP. No. 1298, 93d Cong., 2d Sess. 196 (1974)).
Other circuits have also addressed the issue. The Second Circuit, for example, concluded that ITC decisions on “unfair trade practice and trademark infringement causes of action are entitled to res judicata effect” because estoppel only applies to questions of “patent validity.” Union Mfg. Co. v. Han Baek Trading Co., 763 F.2d 42, 45-46 (2d Cir. 1985), abrogated on other grounds, Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). The First and Fourth Circuits both agree. Aunyx Corp. v. Canon U.S.A., Inc., 978 F.2d 3, 7 (1st Cir. 1992); Baltimore Luggage Co. v. Samsonite Corp., 977 F.2d 571 (4th Cir. 1992) (both citing Han Baek, 763 F.2d at 45-46). But see Trade Assocs. v. Makita, No. C88-1028C, 1990 WL 10848940, at *1 (W.D. Wash. Mar. 2, 1990) (expressly disagreeing with Han Baek and holding that “res judicata does not apply to trademark decisions by the ITC”).
This difference in collateral estoppel effect at the ITC can influence whether to bring a case to the ITC. It can also impact the strategy employed by complainants and respondents already involved at the ITC. Losing at the ITC can create estoppel effects in later district court proceedings.