Introduction

The United States International Trade Commission (ITC) is a federal agency that investigates and adjudicates matters related to unfair trade practices, including patent infringement cases involving imported goods. Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) authorizes the ITC to investigate allegations of patent infringement and issue remedies, such as exclusion orders and cease-and-desist orders. This article will provide a comprehensive guide to defending against patent infringement allegations at the ITC, outlining the key aspects of ITC proceedings, strategies for defense, and considerations for successfully navigating this unique litigation forum.

Understanding ITC Proceedings

ITC proceedings differ significantly from district court litigation in several ways. Some key distinctions include:

1. Speed: ITC investigations are typically faster than district court cases, with a target completion time of 16 to 18 months (19 C.F.R. § 210.51(a)).
2. Remedies: The ITC does not award monetary damages; instead, it can issue exclusion orders, which bar the importation of infringing products, and cease-and-desist orders, which prohibit certain activities related to infringing products already in the United States (19 U.S.C. § 1337(d)-(f)).
3. Public Interest: The ITC must consider the public interest when determining whether to issue a remedy, taking into account factors such as public health and welfare, competitive conditions, and consumer interests (19 U.S.C. § 1337(d)(1), (f)(1)).
4. Administrative Law Judges (ALJs): ITC proceedings are presided over by ALJs, who oversee the investigation and issue an initial determination, which can be reviewed and adopted, modified, or reversed by the Commission (19 C.F.R. § 210.42, 210.45).

Developing a Comprehensive Defense Strategy

When defending against patent infringement allegations at the ITC, it is crucial to develop a comprehensive defense strategy that addresses both the merits of the case and the unique procedural aspects of ITC proceedings. Key elements of an effective defense strategy may include:

1. Challenging patent validity: Asserting invalidity defenses based on prior art or other grounds can be an effective way to counter infringement allegations (35 U.S.C. §§ 101, 102, 103, and 112).
2. Arguing non-infringement: Demonstrating that the accused products do not infringe the asserted patent claims can help undermine the complainant’s case (35 U.S.C. § 271).
3. Contesting domestic industry requirement: The ITC requires complainants to establish a domestic industry related to the asserted patents (19 U.S.C. § 1337(a)(2), (a)(3)). Challenging the complainant’s satisfaction of this requirement can be a powerful defense tactic.
4. Addressing public interest considerations: Presenting evidence and arguments related to the potential impact of an exclusion order on public interest factors can influence the ITC’s decision on remedies (19 U.S.C. § 1337(d)(1), (f)(1)).

Engaging Experts and Counsel

Defending against patent infringement allegations at the ITC often requires the assistance of experienced counsel and expert witnesses. Retaining counsel with ITC-specific expertise and a strong technical background can be crucial for navigating the unique procedural aspects of ITC proceedings and presenting a compelling defense. Additionally, engaging expert witnesses to provide testimony on technical issues, such as patent validity and infringement, can bolster the defense case.

Leveraging Inter Partes Review (IPR)

Filing an IPR with the United States Patent and Trademark Office (USPTO) can be an effective parallel strategy for challenging the validity of the asserted patents (35 U.S.C. §§ 311-319). While the ITC does not automatically stay its proceedings pending the outcome of an IPR, a successful IPR outcome can impact the ITC case and potentially invalidate the asserted patent claims.

Considering Settlement and Licensing Opportunities

Throughout the course of ITC proceedings, it may be prudent to explore settlement and licensing opportunities to resolve the dispute. Settlement negotiations can be influenced by factors such as the strength of the defense case, the potential impact of an exclusion order, and the costs associated with ongoing litigation.

Conclusion

Defending against patent infringement allegations at the ITC requires a thorough understanding of the unique aspects of ITC proceedings and the development of a comprehensive defense strategy. By engaging experienced counsel, leveraging parallel proceedings such as IPRs, and considering settlement and licensing opportunities, companies can effectively navigate ITC investigations and protect their business interests.

Successfully defending patent infringement cases at the ITC also requires a proactive approach, including early assessment of potential risks, thorough preparation, and the ability to adapt strategies as the case progresses. By addressing the key elements of an effective defense strategy, including challenging patent validity, arguing non-infringement, contesting the domestic industry requirement, and addressing public interest considerations, companies can enhance their chances of success in this high-stakes litigation forum.

As international trade and intellectual property continue to intersect, the ITC remains a critical venue for resolving patent disputes involving imported products. By understanding the unique challenges and opportunities associated with ITC proceedings (19 U.S.C. § 1337, 19 C.F.R. Part 210), companies can effectively defend their business interests and minimize the potential negative consequences of patent infringement allegations.