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The Intellectual Property StrategistFeaturesIntellectual PropertyPatent LitigationRegulation

Litigating Redesigns At the ITC

By Frank Liu, Dustin Ferzacca and Gwen Tawresey
March 01, 2022

Patent owners that prevail in an International Trade Commission (ITC) investigation can significantly disrupt the business of the opposing party. On a finding for the patent owner, the ITC issues an exclusion order, preventing the opposing party from importing the infringing products into the United States. But as shown in the recent ITC determination in Certain Audio Players and Controllers (Inv. No. 337-TA-1191), proving non-infringing redesigns can mitigate the disruptive effects of such an exclusion order. This article provides an overview of redesigns at the ITC, a discussion of the ITC's recent determination in Certain Audio Players and Controllers, and identifies some considerations to keep in mind when litigating redesigns at the ITC.

Overview of Remedies and Redesigns At the ITC

The ITC provides powerful relief for patent owners that establish a violation of Section 337 of the Tariff Act of 1930 (Section 337), which prohibits unfair trade practices, including importation of "articles that infringe." Unlike in Federal District Court where injunctive relief may be difficult to obtain, the ITC's sole remedy is preventing infringing products from crossing U.S. borders. 19 U.S.C. §1337(a)(1)(d).

The ITC can exclude products found to infringe a valid and enforceable patent by way of a limited exclusion order (LEO) or a general exclusion order (GEO). LEOs exclude the infringing products of a named respondent and are the default remedy for violations of Section 337. 19 U.S.C. §1337(a)(1)(d)(2). The ITC also can issue a GEO, excluding all infringing products, regardless of whether the importer is a named respondent, where such an order is necessary to prevent circumvention of a LEO or where there is a pattern of violation of Section 337 and identifying the source of infringing products is difficult. Id. The ITC also may issue a cease-and-desist order (CDO), preventing respondents who already have "commercially significant inventories of infringing products" in the U.S. from selling those inventories. Integrated Repeaters, Inv. No. 337-TA-435, Comm'n Op. at 27 (Aug. 16, 2002). Accordingly, the ITC's remedies can disrupt or halt entirely the business of any party subject to such orders.

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