Patently Strategic Podcast: ITC Proofing Portfolios

For inventors, the promise of the patent system is the right to exclude others from making, using, importing, and selling their patented innovations for a limited period. But how do patent holders actually enforce those rights, particularly when the infringing product is being manufactured outside of the United States? In an otherwise challenging time for rights assertion, the ITC – or International Trade Commission – can be one of the most impactful long-range weapons an inventor has in their arsenal for stopping patent pirates.

But how can you access the ITC? What are its requirements? How can you afford it? And what should you be thinking about now to help future-proof your patent portfolio for the most effective use later at the ITC? We’re answering all of these questions in an episode that is part of our ongoing series on patent quality – aimed at not just getting a granted patent but in having one that will hopefully be valuable and stand the test of time.

Using the ITC to Block Import of Infringing Products

The ITC is an administrative agency tasked by Congress with protecting domestic industries from unfair trade practices, such as patent, trademark, and copyright infringement connected with foreign imports. Born under Section 337 of the Tariff Act of 1930, the ITC has the authority to grant exclusion orders, which are enforced by U.S. Customs and Border Protection to block the importation of infringing products at U.S. ports of entry. Given that so many products in today’s economy are manufactured abroad and then imported into the United States, the ITC can be an incredibly effective venue for patent owners to stop knockoffs from entering the world’s largest marketplace.

Much like its executive branch sister agencies at the Patent Trial and Appeal Board (PTAB), Federal Trade Commission (FTC), and Securities and Exchange Commission (SEC), the ITC is a quasi-judicial, non-Article III entity with court-like functions that resemble judicial proceedings. Powers include the ability to conduct hearings, issue rulings, and provide legal remedies in resolving disputes to carry out laws passed by Congress.

Unlike its evil sibling at the PTAB, however, the ITC has been a champion for innovation and property rights. The exclusion order remedy that the ITC can apply upon a finding of infringement is a form of injunctive relief. As regular listeners of the podcast and anyone who’s tried it themselves will know, this is immensely useful to inventors and patent owners because it can provide what courts no longer can provide in the wake of eBay, which is to physically stop infringers from performing the infringing activity – in other words, provide injunctive relief. And it’s really fast! Whereas court-based patent infringement disputes can take several years to resolve, ITC investigations take about 12 months to reach an initial decision, finish in 16-18 months, and will not be stayed due to an IPR at the PTAB.

Guest Host: Evan Langdon

Because experience is the best teacher, we’ve enlisted the help of Evan Langdon to guest host this month’s episode. Evan is a partner at Fabricant LLP and the Chair of its ITC practice. Evan has been focused on ITC litigation for the past 15 years, both offensively and defensively, having represented clients in more than forty Section 337 investigations at the ITC. Evan is recognized among the nation’s top ITC practitioners by Chambers USA and Chambers Global.

Episode Overview: Quality Patents Part 4

In addition to answering the fundamental ITC questions mentioned above, Evan will also be breaking down the recent Lashify case and what it means for smaller startups, as well as unpacking the related domestic industry requirement and what it critically translates to for your business in terms of domestic and offshore spending and asset allocation, should you someday need to assert your rights at the ITC.

Whether you’re a solo inventor, small startup, licensing university, or even a giant in the making, the ITC is an approachable venue, and the insights shared in terms of how you draft your claims, how you manage your portfolio, and even in how you structure your business today could make all the difference in your ability to someday successfully use the ITC to block the import of products that infringe on your patent-protected innovations. Along the way, Evan and the panel discuss:

• ITC basics and advantages over court-based litigation to stop infringers
• Requirements for filing an ITC Action
• Offensive and defensive strategies at the ITC
• Patent drafting and portfolio strategy tips for increasing your odds at the ITC
• Masimo v. Apple and the ITC’s import ban of the Apple Watch
• Why the eBay four-factor test doesn’t apply at the ITC
• Litigation financing options for the ITC

Discussion Panel

Evan is joined today by our always exceptional group of patent experts, including:

• Ashley Sloat, President and Director of Patent Strategy at Aurora
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP

ITC, Injunctions, and the RESTORE Act

For this month’s Mossoff Minute, we’re resharing a prior installment because some things are worth repeating, this one is SO VERY on point for today’s topic, and if there’s something we can do to help address one of the major plagues of the patent industry, that’s a drum we’ll keep beating. This amazing tool of injunctive relief that we discuss today is fortunately available to some patent owners via the ITC but is no longer available to most patent holders in courts since the eBay decision. The proposed RESTORE Act is a potent new patent reform bill that aims to reverse this outcome in courts by restoring the rebuttable presumption that patent holders are entitled to injunctive relief upon a finding of infringement.

The ITC is still a favorable venue for patent holders to obtain injunctive relief via exclusion orders in the post-eBay world, partially because the Section 337 statute that governs it essentially says that patent holders are entitled to the presumption of the injunctive relief of an exclusion order, provided that blocking the import of the infringing product wouldn’t cause public harm. In other words, the default framework for the ITC is a rebuttable presumption of injunctive relief. As a model, this rebuttable presumption has worked very well for inventors at the ITC and RESTORE would be a very close analog for Article III courts. So, for anyone who says RESTORE won’t work because the presumption is not enough, all you have to do is look to the ITC for a functioning example of why it will.

Related Listening and Reading

To further explore the topics discussed, see the following past episodes and resources:

• Crafting Quality Patents. Part One in our patent quality series, focused especially on drafting.
• PTAB Survival Guide. Part Two in our patent quality series, focused on making your patents more resilient to IPR challenges at the Patent Trial and Appeal Board.
• Continuation Practice. Part Three in our patent quality series, focused on creating more robust and valuable patent families using continuations.
• Patent Wars: Innovators, Revolutionaries, and the Race to Reform. A deep dive into the problems plaguing the patent world. Topics include eligibility, enablement, injunctions, and the patent troll myth.
• Patent Anatomy: What’s in a patent? Deep dive guide into the parts of a patent and how they connect.
• Big Tech’s Attack on the ITC. A prior Mossoff Minute, in which Professor Adam Mossoff discusses some terrible legislation aimed at closing the doors of the ITC to American patent owners.
• RESTORING Injunctive Relief. Injunctions-related research, the RESTORE Act, and everything you need to know about one of the biggest problems plaguing patenting.