By Tom Fisher
Section 337(c) states that “all legal and equitable defenses may be presented in all cases” before the ITC.  The Federal Circuit has explained that the Commission recognizes the same defenses and applies the same burdens of proof in patent cases as do the district courts.  Lannom Mfg. Co. v. United States Int’l Trade Comm’n, 799 F.2d 1572, 1578 (Fed. Cir. 1986).  Nevertheless, due to the remedies available in the ITC and the legislative history behind amendments to U.S. patent law, not all defenses that are available to defendants in district court are available to respondents in the ITC.

If the Commission finds a violation of Section 337, then it is authorized to issue two types of remedial orders:  exclusion orders and cease and desist orders.  19 U.S.C. § 1337(d)-(f).  An award of money damages is not available as a remedy in the ITC.  The available remedies in the ITC are therefore prospective in nature.  The defense of laches in patent cases, on the other hand, is retrospective in nature:  if the defendant proves by a preponderance of the evidence that the patentee delayed filing suit for an unreasonable length of time from when it new or should have known of the claim against the defendant, and that the defendant suffered either economic or evidentiary prejudice as a result of the delay, then the patentee is barred from recovering pre-filing monetary damages.  Thus, “laches as it pertains to patent-based cases does not, as a matter of law, work to curtail the type of prospective relief sought in 337 cases.”  Certain Personal Watercraft and Components Thereof, Inv. No. 337-TA-452, Order No. 54 at 2, Initial Determination (Sept. 19, 2007) (citing Certain EPROM, EEPROM, Flash Memory and Flash Microcontroller Semiconductor Devices and Products Containing Same, Inv. No. 337-TA-395, Comm’n Op., Suppl. Views of Chairman Bragg at 11, n.65 (July 9, 1998)).

It should be noted that while “ordinary” laches is not an available as a defense, respondents in the ITC may assert prosecution laches.  See Certain Data Storage Systems and Components Thereof, Inv. No. 337-TA-471, Order No. 42 (Jan. 4, 2003).  The two-prong test for prosecution laches requires (1) an unreasonable and inexcusable delay by the patentee in prosecuting the patent, and (2) material prejudice to the defendant attributable to the delay.  If prosecution laches applies, then the patent is rendered unenforceable.  Thus, unlike a laches defense to limit damages, a prosecution laches defense is not retrospective and will impact the type of prospective relief sought by patentees in the ITC.

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