Masterclass: You Don’t Have to be a US Company to be Sued at the US ITC – What You Need to Know, and How to Minimize Your Risk

Directors Uma N. Everett and Ryan C. Richardson presented the virtual masterclass “You Don’t Have to be a US Company to be Sued at the US ITC – What You Need to Know, and How to Minimize Your Risk” on Tuesday, October 24, 2023. This complimentary masterclass was hosted by IAM and Lexology.

The presenters gave an overview of the US International Trade Commission (“ITC”) and focused on litigation risk factors, ITC timing and statistics, redesign, public interest factors, and how to minimize your risk of being sued at the ITC.

Key takeaways included:

1. Keep your eyes open—litigation rarely happens out of the blue. Regularly monitor what is happening in your industry and among your competitors. Are competitors the subject of district court litigation or ITC investigations? Has there been a change in your competitors’ behavior, such as new marketing strategies, new manufacturing locations, or the introduction of a new generation of products? Any changes in these activities may indicate that litigation is on the horizon.
2. Be prepared with a strategy and be ready to move quickly. Typically, a Section 337 investigation is completed 15-18 months from the institution of a complaint. Speed is of the essence in these cases, and understanding your risk factors early and developing a potential strategy before you are the subject of a complaint will put you in a much better position during litigation. For example, if you are involved in an investigation, consider quickly filing post-grant review proceedings at the Patent Trial and Appeal Board (PTAB). Although a stay is unlikely, there are still benefits, and your chances of success on invalidity may be higher at the PTAB.
3. Consider the location of your (or your suppliers’) manufacturing sites. Consider sourcing your components from multiple vendors, which can make proving infringement over an entire product line more difficult for a complainant.
4. Develop a strong patent portfolio. Work with experienced patent counsel to develop a litigation-ready patent portfolio that can withstand a challenge. Consider using continuation and reissue practice at the U.S. Patent and Trademark Office as a way to develop your own portfolio directed to your opposing party’s products.
5. Explore early exit programs to resolve a case quickly, such as the ITC’s “100-day” program. Under this program, early rulings can be made on certain dispositive issues in some Section 337 investigations, such as domestic industry or patents directed to patent ineligible subject matter under 35 U.S.C. § 101. Early resolution can avoid unnecessary litigation and save you time and money.

If you are interested in learning more about the ITC, register for our upcoming virtual IAM Boardroom, “Redesign and Remedy” on November 7, 2023. You can also view our recent ITC webinar series here.