How should a business approach a patent dispute with a competitor?
Define what is at stake for products, customers, and market position. Map the relevant products, patent claims, evidence, and commercial deadlines.
Consider counterclaims, licenses, design alternatives, confidentiality, and the operating consequences of the relief sought.
A federal court may award infringement damages; an injunction requires its own legal showing. For qualifying import disputes, the ITC can offer exclusion-based relief.
Revisit the business objective as the evidence develops, including opportunities to narrow or resolve the dispute.
Further reading: Patent damages · 35 U.S.C. § 284; Patent injunctions · 35 U.S.C. § 283 (PDF); Available Section 337 remedies · USITC.
When should a company consider the ITC rather than federal district court?
The first question is what relief the business needs. In a patent-based Section 337 investigation, the U.S. International Trade Commission addresses specified unfair practices involving imported articles. Its remedies can include exclusion orders and cease-and-desist orders. It does not award money damages.
Federal district courts can award patent infringement damages and may grant injunctions when the applicable legal requirements are met. An ITC investigation and a district-court case therefore serve different remedial purposes.
For an ITC assessment, counsel should examine the importation facts, infringement and validity issues, and the domestic-industry requirement. A patent complainant must establish the required U.S. industry relating to articles protected by the patent, or one in the process of being established.
Assess the affected products and supply channels, the evidence needed, and the investigation’s actual procedural schedule.
Choose the forum based on the facts and desired relief, without assuming one is always faster, cheaper, or better.
Further reading: Available Section 337 remedies · USITC; Patent damages · 35 U.S.C. § 284; Patent injunctions · 35 U.S.C. § 283 (PDF); About Section 337 · USITC; Understanding Section 337 investigations · USITC.
Related reading: Talbot Hansum and Peter M. Hillegas on economic domestic industry at the ITC.