Elysium Assists at the ITC: A Strategic Venue for Patent Disputes

IP Litigation

Technology Strategy & Analysis

January 10, 2012

Elysium's intellectual-property practice encompasses software code and device analysis (and expert testimony) for patent and copyright cases. Increasingly, this means we practice in front of the U.S. International Trade Commission (ITC).

The ITC, a panel of six Presidential appointees, has existed for decades, but only recently became a highly active venue for patent disputes. Most patent litigation is performed in the Federal court system, so it may surprise some to find the ITC, an administrative federal agency in the executive branch, involved in ruling on patent infringement and validity. However, since section 337 of the Tariff Act of 1930 gives the ITC power to prevent the importation of articles that would infringe a valid patent, many firms are turning to this alternate venue in a bid to enforce their patent rights.

The ITC offers patent holders a number of potential advantages over Federal court litigation. While both types of case involve the familiar process of protective orders, scheduling, discovery, and expert reports, at the ITC the case is heard by an Administrative Law Judge (or ALJ) well-versed in patent law, rather than in front of a jury. Second, matters in front of the ITC, while not quite at rocket docket speeds, tend to move along quickly and can reach final disposition in fifteen months. Finally, instead of damages, a successful action in the ITC can result in a complete ban of importation, a strategically powerful result.

Despite the advantages cited above, other differences from Federal courts make navigating the ITC challenging for those unfamiliar with its practices. First is the so-called “Domestic Industry” requirement. Unlike Federal litigation under Title 35, to bring an ITC action a patent holder must show that they practice the patent, either by manufacturing or licensing. Second is the presence of the law staff. A lawyer working for the ITC, representing the public interest, participates in the matter as an independent third party. The staff can (and will) submit motions and briefs, participate in depositions, and cross-examine witnesses. While the ALJ is under no obligation to follow the findings of the staff, this representative of the public interest can play a powerful role in determining the outcome.

The process culminates in a hearing – essentially the same as a trial, but without a jury – in which the parties present their direct and responsive cases on infringement, validity, and domestic industry. However, unlike a trial in the Federal system, the hearing does not conclude with a ruling. Instead, the parties (including the ITC law staff) submit post-trial motions and proposed findings of fact. Only after the ALJ reviews these findings does he issue his Initial Determination, which can be appealed to the full Commission. The entire process from the launch of investigation to the final determination often takes fewer than fifteen months.

Elysium Digital has recently assisted a number of clients with matters in front of the ITC. Our services have included providing strategic advice, assisting in claim construction, analyzing source code produced by foreign defendants, preparing attorneys to take depositions of fact and expert witnesses in overseas venues, and serving as experts and preparing expert reports. Our experience has been that the ITC's process can offer some patent-holders a good alternate venue for securing their rights, but that the differences can surprise attorneys more comfortable in Federal Court. For more information about how Elysium can assist you or your clients in an ITC investigation, please contact us.