David Whips Goliath within the USITC (What’s that?)


The USA Worldwide Commerce Fee (USITC) will not be a Federal court docket – in some ways, it’s higher than a Federal court docket the place U.S. patents are involved.  

The USITC is a U.S. administrative company charged with, amongst different issues, dealing with claims by a U.S. patent proprietor that imported merchandise infringe a U.S. patent.  To set off USITC evaluate, the patent proprietor will file a criticism with the six-member USITC.  If the USITC votes to research, it assigns an administrative regulation choose.  The executive regulation choose holds a full trial with proof, witnesses, a cross examination, and points an preliminary willpower.  The USITC can settle for or reject the executive regulation choose’s preliminary willpower as its ultimate willpower.  The President can reverse the USITC’s ultimate willpower if she or he so chooses.  The shedding celebration can enchantment the USITC’s ultimate willpower to Federal court docket.

The USITC’s ultimate willpower is analogous to a Federal choose’s ultimate resolution in a patent case.  What units patent infringement earlier than the USITC other than Federal court docket patent infringement are the cures that the USITC might order.  In patent infringement litigation in Federal court docket, the Federal choose might order that an infringer pay cash damages, however usually, Federal judges don’t order infringers to cease infringing.   

The scenario is reversed earlier than the USITC.  The USITC can difficulty orders prohibiting importation of infringing items, can difficulty ‘stop and desist’ orders and may require the infringer to put up a bond to make sure that it complies with the order.   When the whole lot is made abroad, that’s pretty much as good as a court docket order prohibiting infringement.  The USITC can’t impose cash damages for infringement.

This brings us to the case of Sonos and Google. In January, 2020, Sonos filed a criticism with the USITC that Google infringed Sonos patents regarding good audio system.  The infringing options relate to digital assistants and to controlling quantity throughout a number of audio system concurrently.  The USITC licensed an investigation and, after a trial, issued a ultimate willpower that Google infringed the Sonos patents.  The USITC went on to ban Google from importing the infringing merchandise, issued a ‘stop and desist’ order and required Google to put up a cash bond.  

In response to the USITC motion, Google disabled the offending options of its good audio system, stopping the infringement.   Google clients are reportedly sad with the change, with some asking for refunds.

A court docket order stopping infringement might do no higher and infringement is stopped.  This isn’t a case of a U.S. firm vs a overseas evildoer.  Each Sonos and Google are U.S. firms primarily based within the U.S., so it’s a U.S. firm vs. a U.S. evildoer.   Sono’s journey earlier than the USITC additionally doesn’t preclude it from going to Federal court docket for infringement damages.  In actual fact, Sonos and Google are litigating in Federal court docket proper now.  

Briefly, for imported merchandise, the USITC supplies an avenue for a U.S. patent proprietor to close down infringement.

— Robert Yarbrough, Esq.


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