미국 ITC 특허분쟁절차에 대한 기업의 대응방안

Abstract

ITC section 337 investigation has different aspects from patent disputes in a district court. ITC jurisdiction is in rem and is nationwide, as opposed to the limited in personal jurisdiction of a district court. To obtain standing in a district court, merely alleging ownership of patent right and infringement by a defendant is sufficient. However, in order to establish standing in the ITC, the following requirements are needed; A) Importation: a complainant must show that the articles allegedly infringing are imported. B)Domestic industry; domestic industry requires a) Significant investment in plant and equipment; or (b) Significant employment of labor or capital; or (c)Substantial investments in its exploitation, including engineering, research, development or licensing. The ITC has the power to independently initiate an action which the district court does not possess. The ITC action takes a relatively short period of time compare to an action in the district court. In addition, an ITC complaint differs greatly from a district court filing because of the ITC's fact pleading requirement. The ITC requires the substance of the alleged unfair act to be pled with specific facts which form the basis of the allegations. Therefore, a patent owner believing his or her patent has been infringed is required to assert grounds sufficient to cover all the elements of an unfair trade claim at the very beginning of an ITC proceeding. In district court cases, the Federal Rules of Civil Procedure allow broader and more ambiguous "notice" pleading. The remedies in the ITC include a)limited exclusion order(against parties), b)temporary limited exclusion orders (during the investigation and the Presidential review period), c) general exclusion orders (against any person, even non-parties), d) cease and desist orders and e) temporary cease and desist orders. Considering the above-referenced differences, both a complainant and a respondent in the ITC investigation should develop strategies different from a district court action. A complainant in the ITC has to enumerate a pursuing order among the above-mentioned available remedies. A complainant should meet the specified requirements to get the order he needs. Even after the ITC issues its final order, the victorious complainant has to set up a proactive strategy of working with Customs, informing customers and monitoring the market for successful enforcement of remedies. A respondent in the ITC action may use defenses provided by the ITC requirements, a respondent can show no importation, absence of domestic industry and no damages to domestic industry. A respondent can also utilize the defenses based on patent law, non-infringement, invalidation, unenforceability, etc.