Patent Infringement Remedies Before Itc
I. Jurisdiction of the ITC in Patent Infringement
The ITC does not award monetary damages. Its power is trade-based, not compensatory. Patent infringement becomes actionable before the ITC when:
There is importation, sale for importation, or sale after importation of articles,
The imported articles infringe a valid U.S. patent, and
There exists a domestic industry related to the patent.
Proceedings are conducted under Section 337, and cases move much faster than federal district court litigation.
II. Types of Remedies Available Before the ITC
1. Exclusion Orders (Primary Remedy)
Exclusion orders are enforced by U.S. Customs and Border Protection.
(a) Limited Exclusion Order (LEO)
Applies only to named respondents
Most commonly issued remedy
Prevents infringing products from entering the U.S.
(b) General Exclusion Order (GEO)
Applies to all infringing products, regardless of source
Granted only when:
Widespread circumvention is likely, or
Respondents are difficult to identify
2. Cease and Desist Orders (CDO)
Issued against domestic entities
Prevents sale, marketing, or distribution of infringing goods already imported
Violation may result in civil penalties up to the greater of $100,000 per day or twice the value of goods
3. Temporary Remedies
Temporary Exclusion Orders
Temporary Cease and Desist Orders
Rare and granted only upon strong showing of likelihood of success and irreparable harm
4. Presidential Review
Remedies are subject to a 60-day Presidential review
President may disapprove remedies for public interest reasons
During review period, imports may continue upon posting a bond
III. Public Interest Factors Considered by ITC
Under Section 337(d), the ITC considers:
Public health and welfare
Competitive conditions in the U.S. economy
Production of like or directly competitive articles in the U.S.
U.S. consumers
However, public interest rarely blocks exclusion orders, except in extraordinary circumstances.
IV. Detailed Case Laws
1. eBay Inc. v. MercExchange (2006) – Contrast with ITC Remedies
Background:
Although a Supreme Court case concerning district courts, it is critical to understand why ITC remedies differ.
Holding:
Injunctions in district courts are not automatic
Four-factor equitable test must be satisfied
Importance for ITC:
The ITC is not bound by eBay
Exclusion orders are statutory remedies, not equitable ones
This explains why patentees often prefer the ITC for fast and powerful relief
Principle Established:
👉 Infringement + domestic industry = presumptive exclusion
2. Spansion, Inc. v. ITC (2010)
Facts:
Spansion alleged that Samsung imported flash memory chips infringing its patents
ITC found infringement and issued an exclusion order
Key Legal Issues:
Whether exclusion orders violate public interest
Whether the ITC has authority to issue exclusion orders without applying eBay
Federal Circuit Holding:
ITC exclusion orders are mandatory upon finding violation
eBay does not apply to ITC proceedings
Public interest must be exceptional to deny exclusion
Remedy:
Limited Exclusion Order issued
Significance:
👉 Confirmed the automatic nature of ITC exclusion remedies
3. Apple Inc. v. Samsung Electronics (ITC Investigation No. 337-TA-794)
Facts:
Apple accused Samsung of importing smartphones infringing Apple patents
ITC found infringement of one patent and ordered exclusion
Presidential Review:
President Obama vetoed the exclusion order
Reason: concern over standard-essential patents (SEPs) and potential harm to competition
Importance:
First Presidential veto of an ITC exclusion order in decades
Highlighted limits of ITC power where SEPs and FRAND obligations are involved
Principle:
👉 Public interest can override patent enforcement in exceptional circumstances
4. Certain Baseband Processor Chips (337-TA-543) – Qualcomm Case
Facts:
Qualcomm alleged Broadcom infringed patents related to baseband processor chips
ITC found infringement and ordered exclusion
Public Interest Analysis:
Exclusion would affect cell phone availability and emergency services
ITC tailored remedy by:
Allowing import of legacy products
Carving out exceptions for public interest
Remedy:
Modified exclusion order
Significance:
👉 ITC may tailor remedies, not just issue blanket bans
5. Kyocera Wireless Corp. v. ITC (2008)
Facts:
ITC issued a General Exclusion Order
Kyocera challenged its breadth
Federal Circuit Holding:
GEOs are extraordinary remedies
ITC must provide strong evidence of:
Difficulty identifying infringers, or
Likelihood of circumvention
Outcome:
GEO vacated due to insufficient justification
Principle:
👉 GEOs require heightened scrutiny
6. Certain Digital Models (337-TA-833) – Domestic Industry Clarification
Facts:
Respondent challenged existence of domestic industry
Alleged patent holder was a non-practicing entity
ITC Holding:
Domestic industry can be:
Technical (practicing patent)
Economic (licensing, R&D, engineering)
Remedy:
Exclusion order upheld
Significance:
👉 ITC is accessible even to licensing-based patentees
7. Amgen v. ITC (2018) – Biologics Context
Facts:
Amgen alleged biosimilar imports infringed biologic patents
ITC found infringement and issued exclusion
Holding:
ITC jurisdiction extends to biologic and pharmaceutical patents
Hatch-Waxman Act does not preclude ITC remedies
Remedy:
Exclusion Order
Principle:
👉 ITC remedies coexist with FDA regulatory regimes
V. Comparison with District Court Remedies
| Feature | ITC | District Court |
|---|---|---|
| Monetary Damages | ❌ No | ✅ Yes |
| Injunction | Statutory | Equitable |
| Speed | Fast (12–18 months) | Slow |
| Jurisdiction | Importation | All acts |
| Public Interest Review | Mandatory | Limited |
VI. Conclusion
Patent infringement remedies before the ITC are:
Powerful
Fast
Trade-oriented
Often decisive in high-tech and pharmaceutical disputes
The ITC has become a preferred forum for patentees seeking immediate market exclusion rather than monetary compensation.
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