United States: ITC Investigations Offer Sports Tech Patent Holders Faster Remedies

Creating intellectual property portfolios can be a useful way for sports companies to protect their innovations and overall brand. But enforcing these IP rights through litigation in federal court can be time-consuming. Cases take an average of two and a half years to reach trial.

Companies can often, however, seek quicker remedy through the International Trade Commission. The ITC administers U.S. trade laws, including Section 337 investigations concerning allegations of unfair competition based on imported goods that infringe IP rights. Over the first three quarters of 2018, the ITC instituted 41 investigations. The ITC can bar importation into the U.S. market by issuing an exclusion order, and unlike federal courts, ITC investigations, on average, are completed within 16 months.

ITC proceedings can also have a ripple effect that helps shape co-pending proceedings. The outcome of Section 337 investigations can place enormous pressure on an alleged infringer, encouraging settlement negotiations in order to avoid the threat of being excluded from the U.S.

In ITC investigation 337-TA-1018, Reebok filed a complaint against three respondents, alleging that they had imported athletic footwear products into the U.S. that infringed Reebok patents. Those patents related to flexible soles made from lightweight materials that absorb impact forces and can conform to the shape of an individual's foot. Within three months, the respondents agreed to a settlement agreement preventing importation of those products without consent or a license from Reebok.

Consumers' access to counterfeit products through online platforms can cause detrimental impact to companies, depriving them of economic gains and damaging brand recognition and consumer confidence. The ITC has become a critical forum for companies seeking to protect their IP rights against unfair imports. In some circumstances, the exclusion of imports can even extend to downstream products or to the products of a company that isn't a party in the litigation.

Companies have also looked toward the ITC for swift remedies against foreign infringers that fail to make an appearance in federal court litigation.  For example, in investigation 337-TA-1108, Jump Rope Systems, LLC filed a district court case against Suzhou Everise Trading Co., Ltd, a Chinese company, for infringement of JRS's patents. The patents at issue were directed towards certain speed jump ropes primarily used to develop quickness, agility, coordination, and conditioning, but Everise never made an appearance in the case, frustrating its process.

So JRS filed an ITC complaint. Five months after institution, the Commission found the foreign respondent in default and granted a limited exclusion order in favor of JRS. The order prohibited the entry of infringing jump rope systems into the U.S. for the remaining term of JRS's patents.

But while the ITC can be an effective and powerful forum for sports companies, the specific ITC practices and procedures vary vastly from federal court patent litigation. These differences can span from how complaints are instituted to the existence of a domestic industry to the type of remedy possible.

Institution of an ITC Complaint  

To begin an ITC investigation, a party must file a complaint at the ITC. Additional requirements for these complaints can put a heavier burden on the complainant. The complaint must substantively show evidence of importation of the accused infringing products and a domestic industry in the U.S. related to the patents. The complaint must also provide detailed infringement claim charts and information regarding the proposed remedy.

The ITC may also arrange a meeting with a staff attorney from its Office of Unfair Import Investigations to ensure the ITC-specific issues of the complaint have been thoroughly considered. The OUII comprises attorneys that function as independent litigants representing the public interest in ITC investigations.

Domestic Industry

While ITC investigations are not subject to the same venue requirements as federal district courts, the ITC requires plaintiffs to show the existence of a domestic industry related to the asserted patents. This includes demonstrating both technical and economical aspects. A complainant can satisfy the technical part by showing that it or its licensees practice at least one claim of the asserted patent, often proved by showing a product covered by the asserted patent.

A complainant can satisfy the economic part by showing a significant and substantial investment in the U.S. related to the articles covered by the asserted patent, such as investment in plants and equipment, employment of labor or capital, or other exploitation that is tied to the patent, such as engineering, research, or development. In some cases, complainants can also rely on licensing activities— its own investments in attempting to license the asserted patents or the domestic activities of its licensees—to establish a domestic industry.

Types of Remedies

Patent owners bringing an action in federal court for patent infringement can seek monetary damages to compensate for the infringement, or an injunction preventing further use or sale of an infringing device. In the ITC, however, a patent owner can only seek injunctive relief. This remedy comes as either an exclusion order, preventing the importation of products infringing the U.S. patent, or a cease-and-desist order, preventing already imported products from being sold or distributed.

While the ITC issues the exclusion order, the U.S. Bureau of Customs and Border Patrol ultimately oversees enforcement. The Intellectual Property Rights Branch is responsible for the interpretation and implementation of ITC limited exclusion orders. It prepares and issues instructions to the Customs ports of entry, which then develop guidelines for identifying infringing products and preventing importation of those.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions