1 Patent Infringement Litigation Before the U.S. International Trade Commission By Timothy DeWitt 24IP Law Group USA 12 E. Lake Dr. Annapolis, MD

2 Comparison to District Court Litigation Jurisdiction Jurisdiction Remedies Remedies Timing Timing Decision makers Decision makers Parties Parties Procedure Procedure Appeal Appeal

3 Why file in the ITC? Speed? Speed? Inconvenience to foreign competitor? Inconvenience to foreign competitor? Judges with patent experience? Judges with patent experience? Presence of ITC Staff Attorney as party? Presence of ITC Staff Attorney as party?

4 Jurisdiction ITC Section 337 of the Tariff Act of 1930 Section 337 of the Tariff Act of U.S. C. § U.S. C. §1337 District Court Patent Statute 35 U.S.C. §271 Declaratory Judgment Act

5 Remedies ITC Exclusion Order Exclusion Order District Court Compensatory Damages Treble Damages for Willful Infringement Attorneys Fees in Exceptional case Injunction

6 Timing ITC ALJ sets target date ALJ sets target date Less than 15 months after institution of investigation Less than 15 months after institution of investigation May be extended for good cause May be extended for good cause District Court Local Rules

7 Decision Makers ITC Administrative Law Judge (ALJ) Administrative Law Judge (ALJ) preliminary matters preliminary matters Summary determination Summary determination trial trial Initial Determination Initial Determination Commission Commission Renders final decision Renders final decision District Court District Judge preliminary matters trial summary judgment bench trial Jury Magistrate Judge Special Master

8 Parties ITC Complainant (patentee) Complainant (patentee) Respondent (accused infringer) Respondent (accused infringer) Commission Investigative Staff Commission Investigative Staff Intervenor Intervenor District Court Plaintiff Defendant

9 Procedure ITC 19 C.F.R. § C.F.R. §210 District Court Federal Rules of Civil Procedure

10 Institution of Suit ITC Complaint Complaint 19 C.F.R. § C.F.R. §210.8 Preinstitution Proceeding Preinstitution Proceeding 19 C.F.R. § C.F.R. §210.9 Institution of Investigation (30 days) Institution of Investigation (30 days) 19 C.F.R. § C.F.R. § Response (20 days) Response (20 days) District Court Complaint Answer 30 days (US) Rule 26(f) Conference

11 Contents of ITC Complaint Statement of facts Statement of facts Specific instances of unlawful importation Specific instances of unlawful importation Relevant domestic industry Relevant domestic industry Complainants interest in domestic industry Complainants interest in domestic industry Detailed Patent Information Detailed Patent Information

12 Detailed Patent Information Identification of licensees Identification of licensees List of foreign corresponding patents and status List of foreign corresponding patents and status Nontechnical description of the invention Nontechnical description of the invention Infringement Claim Chart Infringement Claim Chart

13 Contents of Response Showing of non-coverage Showing of non-coverage Non-infringement claim chart Non-infringement claim chart Showing of invalidity Showing of invalidity Invalidity claim chart Invalidity claim chart

14 Discovery ITC Depositions (23/10) Depositions (23/10) Interrogatories (145/53) Interrogatories (145/53) Request for Production (128/85) Request for Production (128/85) Requests for Admission (224/180) Requests for Admission (224/180) District Court Depositions (1/3) Interrogatories (12/25) Requests for Production (49/65) Requests for Admission (0/25)

15 Judgment as a Matter of Law ITC Summary Determination Summary Determination 10 days to respond 10 days to respond No reply without permission No reply without permission District Court Summary Judgment (Rule 56) Timing Local Rules Scheduling Order Page Limitations Local rules Standing orders

16 Trial ITC Depositions Depositions Witness statements Witness statements Live cross-examination Live cross-examination Live re-direct Live re-direct District Court Jury Trial Depositions by video or read Live direct, cross, re- direct Bench Trial Depositions submitted Live direct, cross, re- direct

17 Post-Trial ITC Proposed Findings of Fact and Conclusions of Law Proposed Findings of Fact and Conclusions of Law Post-Trial Brief Post-Trial Brief District Court Jury Trial JMOL New Trial Bench Trial Proposed findings of fact and conclusions of law Post-Trial Brief

18 Decision ITC Initial Determination Initial Determination District Court Jury Trial Bench Trial

19 Appeal ITC Losing party appeals agency decision Losing party appeals agency decision Winning party may intervene Winning party may intervene District Court Either party may appeal/cross-appeal