Monday, July 24, 2017

Did Heartland open the floodgates to the ITC? Not really.

In a post at The Hill titled Supreme Court fails to close key avenue for patent trolls , MATT TANIELIAN states:

The ITC is unaffected by the TC Heartland case. This matters because, in recent years, the ITC has become a popular venue
to bring patent cases because of its powerful remedies, quick process and perception of having patent-holder-friendly practice
and procedures. As lawyers looking to monetize patents, they will seek the venue that maximizes their leverage post-TC Heartland.
The ITC today is no doubt a more attractive venue than before.

In 2011, long before Heartland, two Finnegan attorneys posted an article on the advantages of the ITC over
district courts, Patent Owners Can More Easily Enjoin Infringers by Using the ITC Rather Than Federal District Courts.

They correctly noted that the rules are different:

The ITC permits a patent owner to enforce its rights against an entity that imports allegedly infringing products in the United States.
And like a U.S. District Court, the ITC also has the power to issue injunctions, called "exclusion orders," to stop infringing products from being imported into the U.S.

There was a question as to whether the standard for injunctive relief at the ITC is the same as that for a U.S. District Court.
And in Spansion v. Int'l Trade Comm'n, Nos. 2009-1460, 1461, 1462, 1465 (Fed. Cir. Dec. 21, 2010),1 the Federal Circuit recently
answered this question in the negative. Specifically, the court held that the statutes applicable to the ITC's grant of an exclusion order
do not require the application of the same standard used by U.S. District Courts to enter injunctions. Moreover, while the ITC is required
to consider certain "public interest" factors, those factors are not the same as those considered by a U.S. District Court.

Patent owners who wish to assert rights against manufacturers or distributors that either import infringing products or
import infringing components to use in products should consider the benefits of filing a complaint in the ITC.
This is especially important for non-practicing entities that do not make or sell products covered by the patents.
There is a lower hurdle to receive injunctive relief because the patent owner need not show irreparable harm and
the public interest inquiry is limited to four enumerated factors. The ITC has found the public interest outweighed
the need for injunctive relief in only three patent investigations. For that reason, patent owners are more likely
to obtain injunctive relief in the ITC, giving them more leverage for license negotiations with potential licensees and infringers.

The advantages, and disadvantages, of the ITC venue existed before Heartland, and were not changed by Heartland.

Link to Finnegan article


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