Article by Charles H. Sanders

Offering speedy trials before IP-savvy judges and the powerful remedy of an exclusion order to stop infringing goods at the border, the U.S. International Trade Commission (ITC) has become an increasingly popular forum for enforcing IP rights. The Supreme Court's eBay decision reducing the availability of injunctive relief in federal district court patent cases has also contributed to the rise of the ITC. Acting similarly to a district court, the ITC most often hears claims of patent or trademark infringement but can also address unfair competition due to infringement of registered copyrights, misappropriation of trade secrets or trade dress, passing off, false advertising, or antitrust violations.

The ITC's new prominence demands attention to developments at the agency. Here are the top 10 to date this year.

1. The ITC Is More Popular Than Ever

The ITC has already instituted over 40 new IP cases this year, a record number. (Goodwin Procter has been involved in five ITC cases over the past year and two trials.) By comparison, the ITC instituted about 25 cases in 2004 and 2005, and 30 to 35 cases in 2006 and 2007. The ITC's fast-growing docket shows that IP rights holders are increasingly choosing to enforce their rights in the ITC due to its unique advantages.

2. The ITC Names A Fifth Judge And Plans To Add A Sixth Judge

For many years, the ITC had four judges, but to handle its burgeoning docket the ITC named a fifth administrative law judge, Robert K. Rogers, and plans to add a sixth judge in December. Like retired Judge Terrill, Judge Rogers comes to the ITC from the Federal Energy Regulatory Commission (FERC). The ITC must hire new judges from those at other federal agencies, such as the Environmental Protection Agency and FERC, so they generally do not have IP-related experience upon arrival at the ITC. New ITC judges quickly acquire such experience, however. Since being appointed in July, Judge Rogers has presided over two trials.

3. The ITC Names Judge Luckern As Chief Judge

The ITC named Judge Luckern as Chief Administrative Law Judge after many years without one. Judge Luckern has served as ITC judge for over 20 years and is the only current judge who came from a background in IP law. As Chief Judge, Judge Luckern will preside over all motions made during the time between institution of a case and its assignment to a judge, and will provide leadership in handling the caseload in a thorough yet expeditious manner. Judge Luckern is known for his dedication to his work at the ITC, exhibiting a strong work ethic and expecting the same of others.

4. Commission Gives Itself More Time To Reach Final Determinations

Partly to address its increased caseload, the ITC issued new rules. The higher workload has put more pressure on the ITC in reaching final determinations. In the ITC, the judge issues an initial determination which is then often reviewed, in whole or in part, by the Commission before it issues a final determination. Previously, a target date for the final determination was typically set 15 months from institution of the case, and the judge had to issue his initial determination three months before the target date. Under the new rules, a target date is likely to be set 16 months after institution, and the judge will need to issue his initial determination four months before that date. This gives the Commission another month to conduct its review, which may allow for higher quality opinions and help the ITC to preserve its historically high success rate on appeal. While the new rules lengthen the time to a final ruling by a month, they keep the typical time from institution to an initial ruling at 12 months and should not affect the time from filing to trial.
To continue reading this article click here.