As a Florida patent attorney, I am frequently faced with situations where a company is infringing upon the intellectual property rights of a client. As I explore different approaches for enforcement with my client, we often discuss the various forums in which an intellectual property owner can have his grievances heard. A formerly little-known, but now an increasingly popular, venue is the U.S. International Trade Commission (ITC) in Washington, D.C. Faced with the duty to protect the rights of intellectual property owners in the course of international trade in the U.S., the ITC provides a forum for U.S. patent and trademark owners to stop copiers from importing their copies into the U.S. Yesterday's announcement by the ITC illustrates this process.
On the first day of 2010, the U.S. ITC decided to investigate claims of patent infringement by both Sharp and RIM. The complaint (click here) against Sharp was made by Samsung and alleges that certain televisions sold by Sharp in the U.S. infringe on Samsung's U.S. Patent Nos. 5,844,533, 6,888,585 and 7,436,479.
Interestingly, back in Nov. 2009, the ITC ruled on a similar television-related dispute between Sharp and Samsung. In that case, Sharp alleged Samsung infringed on Sharp television patents and the ITC ruled in favor of Sharp. Perhaps seeing they had curried favor with the ITC, Sharp filed the current complaint against Samsung last month.
The complaint (click here) against RIM was made by Prism Technologies of Nebraska and alleges that certain smart phones sold by RIM in the U.S. infringe on Prism's U.S. Patent No. 7,290,288). Prism, by the way, has been branded by some as a patent troll, seeing as they 1) do not actually manufacture any of the technologies covered by their patents and 2) their revenue comes solely from licensing their patents.
These two investigations illustrate how the ITC is becoming a more popular route for patent owners attempting to halt infringers of their patents. The main reason for this recent popularity is financial, since: 1) litigation before the ITC is less costly and 2) the amount of time necessary to achieve a final decision in an ITC case is highly reduced compared to litigation in a federal court. The biggest drawback of the ITC forum, however, is the reduced scope of power of the forum. The ITC only has the power to stop the importation of infringing goods into the U.S. The ITC does not have the power to award damages, stop the selling of U.S. manufactured goods or force a royalty upon the infringing party. If your client, however, is only interested in stopping the infringement, not a big damage award, and the infringer imports the accused products, then the ITC is a less-expensive and expedient avenue for having his case heard.
