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Filing a complaint with the ITC of the U.S. Federal Government is another route of patent protection.
time) because any patent infringing product that is stopped is considered a success. International Trade Commission Complaints Once a complaint is filed with the ITC, a Section 337 investigation will usually be instituted within 30 days. Decisions that do not institute an investigation are rare. Investigations can be terminated if one or more of the respondents agree to a Consent Order, a licensing, or other settlement agreement. Within 45 days after publication of a notice of investigation, the presiding Administrative Law Judge sets a target date for completion of the investigation. The Commission strives to complete most investigations in less than 15 months. The Commission is authorized under Section 337 to issue two types of remedial orders—exclusion orders as well as cease and desist orders. Both types of orders may be issued in the same case. A cease and desist order directs a respondent in the Commission investigation to cease its unfair acts; including selling infringing imported articles out of U.S. inventory. Consent Orders are granted when a defendant gives up and agrees on its own to cease importation, and violation of these orders can also result in serious penalties. Exclusion orders are enforced by the U.S. Customs and Border Protection, and cease and desist orders are enforced by the Commission. Exclusion orders are general exclusion orders (GEOs) or limited exclusion orders (LEOs), which are explained in the Table below. An award of monetary damages is not available as a remedy for violation of Section 337. This is usually left to the courts to decide. The Federal Circuit courts
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will sustain the Commission’s determination unless in rare circumstances. In addition, if there are court cases in conjunction with the ITC investigation, the courts will typically wait until the ITC investigation is closed before settling the court cases. According to the industry, GEOs and LEOs can be very effective against the specific parties and the products accused in the ITC action. U.S. Customs actively enforces both orders to bar importation of infringing products. GEOs and LEOs are also accompanied by a Cease and Desist Order, which is an order directly from the ITC to the infringer to cease importation of the products. If a party violates the Cease and Desist Order, the ITC can levy substantial monetary penalties (e.g., the case of Epson against Ninestar). (See Table 1) Table 1: GEOs vs. LEOs General Exclusion Order (GEO) Prevent products from any company that infringe the specified patents in the complaint from being imported into the U.S. GEOs are issued when it is difficult to identify the source of the infringing products.
Limited Exclusion Order (LEO) Limited Exclusion Orders prohibit products imported from the companies specified in the complaint
First Sale Doctrine In many cases, in matters regarding imaging supplies, the First Sale Doctrine comes into play and is having a growing impact on the imaging supplies aftermarket. The issue is patent exhaustion. Remanufacturers can remanufacture/repair a patented product because once the cartridge is sold in the U.S., the patents are “exhausted.” The owner of the product can use it as the owner wishes. When the remanufacturer collects empties from across the world, they need to be able to prove that the remanufactured cartridges had their first sale in the country if they intend to sell into the United States. The following Table highlights some recent cases with patent implications. (See table 2) Protecting patents for supplies is going to remain a key