The Usefulness of the International Trade Commission as a Patent Forum in the Wake of Certain Personal Data and Mobile Communications Devices and Related Software (Apple v. HTC)

By: Stephen Burke

Introduction:  The United States International Trade Commission (hereinafter the “ITC”) is a government agency with statutory power to control matters of trade. As a part of this power, the ITC may investigate claims of patent infringement and ban infringing products from being imported into and/or sold in the country. The patent investigation power of the ITC was seldom utilized by litigants before the turn of the 21st century, who instead preferred to file complaints in federal court. With the technology boom of the 1990s and the mounting international competition into the new millennium, the ITC has seen a steadily increasing volume of patent claims.

In 2010, the now deceased Apple co-founder Steve Jobs, released an aggressive intellectual property policy statement:

“We can sit by and watch competitors steal our patented inventions, or we can do something about it. We’ve decided to do something about it. We think competition is healthy, but competitors should create their own original technology, not steal ours.”

Following this statement, Apple filed suit against High Tech Computer Corporation (hereinafter “HTC”) in both the ITC and federal district court. The complaint alleged that HTC smartphones such as the Nexis 1 and the Droid Eris contained software that infringed Apple patents. The ITC has regularly stopped the importation of such products even when the infringement concerns only a tiny aspect of the imported product. After just over a year of investigation, the ITC found many HTC smartphones infringed the Apple patents and issued an unusual order. Instead of immediately barring importation of the HTC products, the ITC gave HTC four months to design around the patent before enjoining importation. Business and patent experts are concerned that this unusual determination is the beginning of a more lenient approach by the ITC that would significantly weaken patentees’ ability to stop competitors from getting their products into the U.S. market.

This note examines the reasons behind the ITC’s unusual holding and also looks at ITC investigations before and after Apple v. HTC to determine whether this type of holding is becoming commonplace or was simply an outlier.

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