One increasingly popular venue for big patent fights in the Unites States is
the U.S. International Trade Commission (ITC). The ITC is not a
court, but it has the power to bar imports of infringing goods into
the U.S., so it can impose a serious remedy. Patent litigation
before the ITC (sometimes called "Section 337" litigation
as the cause of action arises from Section 337 of the Tariff Act)
differs from district court litigation in a few important
ways. First, it moves quickly. An ITC case will have a trial
about 9 months after it is instituted. Second, it is not on hold
until service on respondents is achieved. Discovery can begin
before a party is served (although, in fact, parties virtually
always have actual notice long before official service). Third, the
remedy is an exclusion order to be enforced by United States
Customs rather than money damages.
If you are accused of patent infringement at the ITC, the first
thing to do is make a business decision as to whether it makes
sense to defend against the complainant's allegations. It will
cost several million dollars to mount a credible defense so this is
an important decision. If the U.S. market for the accused product
is significant, and defending against the allegations makes sense,
you should take the following steps.
First, retain experienced counsel. This should include U.S.
counsel with experience practicing before the ITC. It may also be
prudent to involve Canadian counsel with whom respondent has a long
term relationship to help interface with US counsel. Retention of
counsel should be done sooner rather than later. Indeed, the first
deadline, regarding whether the Commission will take evidence on
public interest (which may affect whether any remedy is
appropriate) will come about ten days after the complaint is
Second, begin collecting relevant documents. You won't know
the exact contours of complainant's document requests until you
see them, but can be confident that they will ask for technical
documents concerning the accused products, documents concerning the
complainant or its patents, and any documents that support a legal
defense. Here, Canadian counsel with whom you have a long-term
relationship can be invaluable. It should be noted that, under U.S.
law, a litigant has a duty to refrain from destroying relevant
documents as soon as it is aware of a legal action.
Early collection of documents will let you respond to
Complainant's discovery requests timely and prevent them from
filing a motion to compel.
Search for Prior Art
Third, an accused infringer should begin searching for prior art
immediately. In most cases, you will have to take a position as to
the meaning of the claims about three months after the
investigation begins. So it is important to vet out your invalidity
(based on prior art) and noninfringement arguments as early as
possible. A prior art search should not be limited to a single
country or language.
Hire Technical Experts
Fourth, hire technical experts early. There are two types of
technical experts, testifying experts and consulting experts. You
want to reach the best testifying experts before the other side
does. Also, consulting experts can assist with searching for and
evaluating the prior art.
Given the expedited nature of ITC proceedings, it is important
to hit the ground running. Retaining counsel, collecting documents,
searching for prior art and hiring experts early will neutralize
the complainant's "first mover" advantage and
optimize your chances for success at the ITC.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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