In August 2018, Taiwanese memory-maker Macronix appealed the U.S. International Trade Commission’s (ITC) final determinations of Japanese company, Toshiba’s, non-infringement on two of Macronix’s three asserted patents relating to flash memory products and Macronix’s lack of a U.S. domestic industry.

Even though neither company is based in the United States, the ITC has jurisdiction over all goods imported into the U.S. The ITC offers expedited discovery and can prohibit the importation or the domestic use of imported goods in the U.S. However, the ITC only hears cases relating to a “domestic industry” in the U.S., which means that in relation to the articles protected by the asserted IP (or trade secret), there is (A) significant investment in plant and equipment in the U.S.; (B) significant employment of labor or capital in the U.S.; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing in the U.S. See 19 U.S.C. § 1337(a)(3). Unfortunately for Macronix, the Administrative Law Judge determined, among other things, that Macronix did not have a U.S. domestic industry.

Macronix will still be able to pursue its patent infringement case, which is pending in the Southern District of California, given that federal cases typically take longer to reach a final resolution than cases in federal court.

TIP: The ITC is a potent and swift alternative or concurrent venue for victims of intellectual property infringement, as well as trade secret theft, and is available to foreign companies that can establish a domestic industry in the U.S.