There are two options when it comes to enforcing a patent against an accused infringer: (1) a U.S. district court or (2) the U.S. International Trade Commission (ITC). This begs the inevitable question of which venue is better. There are several factors that one should consider when it comes to deciding which is best for them.
What is the allegedly infringing act?
Generally speaking, in order to commit an act of infringement within the jurisdiction of the ITC, an accused infringer must either (1) import infringing articles into the U.S. or (2) sell infringing articles, the threat or effect of which at least substantially injures an industry in the U.S., prevents the establishment of such an industry, or restrains or monopolizes trade and commerce in the U.S. See 19 U.S.C. § 1337.
Comparatively, an infringer accused before a district court can commit direct infringement in a variety of ways, including making, selling, offering to sell or importing (into the U.S.) a patented invention. 35 U.S.C. § 271(a). Additional infringing acts include applications under the Federal Food, Drug, and Cosmetic Act (35 U.S.C. § 271(e)) and the act of supplying in or from the U.S. all or a substantial portion of the components outside the U.S. (35 U.S.C. § 271(f)). As you can see, there are more actions of patent infringement within the jurisdiction of a U.S. district court than within the ITC.
What result do you want?
One of the most notable differences between the ITC and a district court is the remedy a patentee can obtain. At the ITC, the remedy sought is an exclusion order directing U.S. Customs and Border Protection to stop the infringing imports from entering the U.S. 19 U.S.C. § 337(d). Conversely, a district court is not so limited. In addition to injunctive relief, it can order a ranger of awards, ranging from reasonable royalties to treble damages. 35 U.S.C. § 284.
How quickly will there be a result?
Generally, an ITC litigant will receive an initial determination within 12 months and a final commission determination four months later, followed by a nine-week presidential review period. Conversely, a district court action takes much longer. On average, it takes two years and six months to get to a jury trial and three years and 10 months to get to a bench trial in the U.S. District Court for the Eastern District of Texas. See “Time to Milestones Search,” Docket Navigator.
Which one limits the accused infringer?
At the ITC, at least one administrative law judge found that a respondent is not afforded the ability to argue the defense of ordinary laches. Certain Personal Watercraft and Components Thereof, Inv. No. 337-TA-452, Order No. 54 at 2, Initial Determination (Sept. 19, 2007).
Who is more likely to win in which venue?
Case Outcomes
Docket Navigator, Court & Judge Comparison Report.
[1] If the patentee succeeds in establishing liability (infringement of a valid, enforceable patent), this is considered a win for the patentee. “Case Outcomes,” Docket Navigator.
[2] If the patent challenger succeeds in establishing that a patent is invalid, unenforceable or not infringed, this is considered a win for the patent challenger. “Case Outcomes,” Docket Navigator.
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