While 2016 saw numerous changes at the International Trade Commission (ITC), the number of asserted patents in an investigation was not one of them. In 2016, the vast majority of Complainants continued the trend of asserting five or fewer patents.
As discussed earlier this month, sixty (60) new Section 337 related complaints were filed at the ITC in 2016. This was a 50% increase over the number of filings in 2015. Of these sixty (60) investigations, fifty (50) were new violation proceedings involving at least one patent.
As illustrated in the chart above, 82% of the fifty (50) new violation investigations in 2016 involve 5 or fewer patents. These numbers are consistent with data from previous years in which at least 60% of investigations involved between one and four patents in each year between 2009 and 2015. (https://www.usitc.gov/intellectual_property/337_statistics_range_number_patents_asserted_new.htm).
One of the primary reasons to limit the number of asserted patents in an ITC investigation is the speed at which such an investigations proceed to trial. While recent developments explain the increase in popularity of the ITC, these developments do not impact the accelerated schedules at the ITC – one of the fastest jurisdictions for resolving complex patent disputes in the country. Accordingly, it seems the accelerated nature of the ITC schedule is still a relevant guidepost for selecting patents for assertion.
Complainants already understand that Section 337 proceedings at the ITC are a strong alternative to district court because of the ITC’s advantages with respect to a potential stay based on pending IPR proceedings and its ability to issue an order excluding the offending imports from the U.S. market. Complainants should also be aware that although the ITC schedule can be adjusted, it is likely that increasing the number of asserted patents will not affect the time for final resolution of an investigation.
Prior to filing, complainants at the ITC should evaluate the number of patents being asserted and understand that judges at the ITC generally will not extend deadlines based solely on the number of patents asserted in the investigation. If Complainants wish to assert several patents, it may be advantageous if the patents are related in some way so as to streamline necessary discovery requirements. Proceeding with too many unrelated patents or patent claims could impact a complainant’s ability to meet its burden for proving infringement at trial. Furthermore, at least one ALJ requires that complainants submit regular declarations attesting to efforts to reduce the asserted patents to five or fewer and the asserted claims to 30 or fewer.