ARTICLE
22 March 2016

The Dangers Of Consent Orders At The U.S. International Trade Commission

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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is a law firm dedicated to advancing ideas, discoveries, and innovations that drive businesses around the world. From offices in the United States, Europe, and Asia, Finnegan works with leading innovators to protect, advocate, and leverage their most important intellectual property (IP) assets.
These agreements have real teeth, and respondents should proceed with caution when considering this approach in view of two recent decisions from the U.S. Court of Appeals for the Federal Circuit.
United States Intellectual Property

Respondents before the U.S. International Trade Commission have historically viewed consent orders as a graceful way to exit an investigation by forgoing activities that may result in U.S. sales or importation of products that infringe a valid patent. But these agreements have real teeth, and respondents should proceed with caution when considering this approach in view of two recent decisions from the U.S. Court of Appeals for the Federal Circuit.

In light of uPI Semiconductor Corp. v. International Trade Commission, 767 F.3d 1372 (Fed. Cir. 2014), respondents should be aware that a consent order may impose greater liability than an adverse decision on the merits or a default judgment.

Following DeLorme Publishing Co. v. International Trade Commission, 805 F.3d 1328 (Fed. Cir. 2015), respondents should understand that they may be held liable for consent order violations based on a later-invalidated patent.

In this article, Finnegan attorneys  Maximilienne Giannelli and  Eric J. Fues discuss consent orders at the U.S. International Trade Commission.

Previously published in Westlaw IP Journal

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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