Tyson Winarski of Steptoe & Johnson and Kristen Carden, a Harvard Law School student, reported in the Intellectual Property Strategist that "In the first 6 months of 2004, the International Trade Commission (“ITC” or “Commission”) has received more complaints to uphold patent rights than in any previous year except for 2001."
Filings by Year
1990 - 1999 6-11
2004 (1st half) 18
"Two key factors are helping to fuel an expansion of patent litigation at the ITC:
- The ability to pursue parallel actions before both the ITC and Federal District Court; and
- The fast track investigation of the ITC with final decisions typically issuing within 12 to 18 months."
In summary, Mr. Winarski and Ms. Carden state:
Seeking to enforce patent rights through a 337 action before the ITC represents a powerful companion to conventional patent litigation in Federal District Court. While seeking damages in federal court, patent owners can simultaneously pursue a parallel in rem action before the ITC to prevent the importation of infringing articles. While the action seeking monetary damages in federal court may take time, the ITC generally concludes its investigation in a fraction of the time necessary to conclude a conventional Federal District Court patent action. Moreover, the unique nature of the exclusion order remedy at the ITC and the benefits to a domestic patent holder of only having to file one suit before the ITC to avail itself of substantial prospective relief against numerous foreign infringers, favorably complements a parallel federal district court action. Accordingly, the speed of the Section 337 investigation and the unique and powerful remedies available before the ITC provide a striking tactic for patent right holders, giving those who wield the proceeding great leverage in negotiations.
I conducted an investigation in the semiconductor industry that supported the filing of an ITC complaint and a patent infringement filing in Federal District Court. The ITC complaint was filed in the summer of 2004 and by January of 2005, very early in discovery, the case settled very favorably for my client. So this strategy can work. It will be interesting to see if the ITC filings continue to increase.
Read the full article here.