Venue of Patent Dispute: United States District Court v United States International Trade Commission | BakerHotelier

There are two options when it comes to enforcing a patent against an accused infringer: (1) a US District Court or (2) the US International Trade Commission (ITC). This raises the inevitable question of which venue is better. There are several factors to consider when deciding what is best for them.

What is the allegedly infringing act?

Generally speaking, to commit an act of counterfeiting within the jurisdiction of the ITC, an accused counterfeiter must either (1) import counterfeit items into the United States or (2) sell counterfeit items, the threat of which or the effect at least substantially injures an industry in the United States, prevents the establishment of such an industry, or restricts or monopolizes trade and commerce in the United States To see 19 USC § 1337.

By comparison, an infringer charged in a district court may commit direct infringement in a variety of ways, including making, selling, offering to sell, or importing (into the United States) a patented invention. 35 USC § 271(a). Additional acts of infringement include claims under the Federal Food, Drug, and Cosmetic Act (35 USC § 271(e)) and the act of supplying into or from the United States all or part substantial components outside of the United States (35 USC § 271(F)). As you can see, there are more patent infringement actions in the jurisdiction of a US district court than in the ITC.

What result do you want?

One of the most notable differences between the ITC and a district court is the remedy a patentee can obtain. At the ITC, the remedy sought is an exclusion order directing United States Customs and Border Protection to prevent infringing imports from entering the United States 19 USC § 337(d). Conversely, a district court is not so limited. In addition to injunctive relief, it can order a range of awards, ranging from reasonable royalties to treble damages. 35 USC § 284.

How soon will there be a result?

Generally, an ITC litigant will receive an initial decision within 12 months and a final commission decision four months later, followed by a nine-week presidential review period. Conversely, a lawsuit takes much longer. On average, it takes two years and six months to get to a jury trial and three years and 10 months to get to a trial in the U.S. District Court for the Eastern District of Texas. To see “Time to Milestones Search”, Docket Navigator.

Which limits the accused infringer?

At the ITC, at least one administrative law judge found that a defendant had no opportunity to plead the defense of ordinary laches. Certain personal watercraft and their components, Inv. No. 337-TA-452, Order No. 54 at 2, Initial Determination (September 19, 2007).

Who is most likely to win in which venue?

Case results

folder browser, Comparison report of courts and judges.


[1] If the patentee succeeds in establishing liability (infringement of a valid and enforceable patent), this is considered a gain for the patentee. “Case Results”, File Navigator. [2] If the patent challenger succeeds in establishing that a patent is invalid, unenforceable, or not infringed, this is considered a victory for the patent challenger. “Case Results”, File Navigator. [View source.]

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