Co-authors: Michael G. McManus and Rodney R. Sweetland | Duane Morris LLP, Washington DC
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.
Retain Counsel
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 filed.
Collect Documents
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.
Conclusion
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.
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.
