Out Of The ITC In 100 Days

• Published date: 27 June 2022
• Subject Matter: Intellectual Property, International Law, Patent, International Trade & Investment
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Alexander Harding, Mareesa Frederick, Erika Arner and Daniel Cooley

A few months ago, we explored ideas for defendants who wished to quickly dispense with lawsuits involving patents directed to patent ineligible subject matter like abstract ideas or laws of nature.¹ With this edition, we turn to specialized strategies for defendants to fend off patent disputes involving these patents in the US International Trade Commission (ITC).

It is no secret that the ITC has seen an explosion in patent litigation in recent years. The ITC provides advantages over district courts that make it desirable for patentees, including an accelerated procedure for investigating complaints and unique remedies in the form of exclusion orders.² Known as "Section 337" investigations, these proceedings at the ITC involve allegations that goods imported into the US constitute an unfair act such as infringing a US patent, trademark, or copyright (whether registered or common law).³ For those who find themselves defending an ITC investigation, the "100-day" program provides one possible route to quickly end investigations involving patents to ineligible subject matter under 35 U.S.C ' 101.

The ITC's "100-Day" Program for Quickly Terminating Investigations on Dispositive Issues'Including Subject Matter Eligibility

The Commission launched its "100-day" program as a pilot program in 2013.⁴ This program authorizes the Commission to identify investigations for early resolution in view of potentially dispositive issues such as standing and the economic prong of the domestic industry requirement. When the Commission identifies such a case, it will order the presiding administrative law judge (ALJ) to issue an initial determination within 100 days of the investigation being instituted. Thus far, the 100-day program has been seldom invoked and is typically used to resolve an investigation early on dispositive domestic industry issues.⁵ But thanks to the program's rapid timeline, defendants who might invoke it for dispositive subject matter eligibility issues stand to save millions in legal fees.

One Successful Request for Entry into the 100-Day Program: Certain Portable Electronic Devices

The first successful use of the 100-day program to dismiss a patent suit on subject matter eligibility came in August 2016. In Certain Portable Electronic Devices and Components Thereof, ALJ Shaw found that all asserted claims brought against Sony, Samsung, and others covered patent-ineligible abstract ideas.⁶ Explaining his decision, ALJ Shaw found that the patent to a "user...