Keeping Patent Pirates at Bay: ITC Portfolio Proofing Strategies

​​Patently Strategic - Patent Strategy for Startups

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For inventors, the promise of the patent system is the right to exclude others from making, using, importing, and selling their patented innovations for a limited period. But how do patent holders actually enforce those rights, particularly when the copycat product is being manufactured outside of domestic jurisdiction? In an otherwise challenging time for rights assertion, the ITC – or International Trade Commission – can be one of the most impactful long-range weapons an inventor has in their arsenal for stopping patent pirates.
The ITC has the authority to grant exclusion orders, which are enforced by U.S. Customs and Border Protection to block the importation of infringing products at U.S. ports of entry.
But how can you access the ITC, what are its requirements, how can you afford it, and what should you be thinking about now to help future proof your patent portfolio for the most effective use later at the ITC? We’re answering all of these questions in an episode that is part of our ongoing series on patent quality – aimed at not just getting a granted patent but in having one that will hopefully be valuable and stand the test of time.
** Guest Host: Evan Langdon **
Because experience is the best teacher, we’ve enlisted the help of Evan Langdon to guest host this month’s episode. Evan is a partner at Fabricant LLP and the Chair of its ITC practice. Evan has been focused on ITC litigation for the past 15 years, both offensively and defensively, having represented clients in more than thirty Section 337 cases at the ITC. Evan is recognized among the nation’s top ITC practitioners by Chambers USA and Chambers Global.
** Episode Overview **
⦿ What is the ITC and what are its advantages over court-based litigation to stop infringers?
⦿ Requirements for filing an ITC Action
⦿ Litigation financing options for the ITC
⦿ Offensive and defensive strategies at the ITC
⦿ Patent drafting and portfolio strategy tips for increasing your odds at the ITC
⦿ Masimo v. Apple and the ITC's import ban of the Apple Watch
⦿ The recent Lashify case and what it means for the domestic industry requirement
** Discussed Links **
⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Quality Patents Part 2: https://www.aurorapatents.com/blog/ptab-survival-guide
⦿ Quality Patents Part 3: https://www.aurorapatents.com/blog/continuation-practice
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ RESTORE Act: https://www.aurorapatents.com/blog/restoring-injunctive-relief
** Follow Aurora Patents **
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Kapitel

1. Intro (00:00:00)

2. Mossoff Minute: Restore Act (00:06:12)

3. Guest Host: Evan Langdon (00:08:20)

4. Masimo v. Apple (00:09:12)

5. ITC proofing overview (00:09:47)

6. ITC background (00:10:27)

7. Coordinating ITC practice with court litigation (00:13:51)

8. ITC advantages (00:16:19)

9. Why eBay v. MercExchange doesn't apply at the ITC (00:20:29)

10. Defensive strategies at the ITC (00:23:25)

11. Requirements for filing an action at the ITC (00:30:12)

12. Domestic industry requirement (00:33:54)

13. Claim drafting tips for the ITC (00:35:29)

14. Lashify, Inc ITC case (00:37:53)

15. Licensing implications (00:50:48)

16. Litigation financing options (00:55:20)

17. Future proofing tips for your patent portfolio (01:03:07)

18. Outro (01:06:56)