When asked to identify the major differences between patent litigation in the ITC and in federal district court, most practitioners would likely identify 1) the domestic industry requirement and 2) the form of relief (injunctive relief but no money damages).  Another difference is that certain defenses to infringement are not available to respondents in the ITC.

In Certain Abrasive Products Made Using a Process for Making Powder Preforms, and Products Containing Same (Inv. No. 337-TA-449), the ITC determined that with respect to the offshore practice of a patented product, the defenses to infringement under 35 U.S.C. § 271(g) are not available to respondents in infringement actions before the ITC.  Respondent Kinik asserted a defense to infringement under § 271(g) because even if its process were found to include all of the steps of the patent claims, it asserted that the product of those steps was “materially changed by subsequent processes” and thus placed Kinik within the exception of § 271(g)(1).

In rendering its decision, the ITC relied primarily upon the legislative history of the Process Patent Amendments Act of 1988 which states, in adding § 271(g), that “the amendments made by this subtitle shall not deprive a patent owner of any remedies available . . . under section 337 of the Tariff Act of 1930, or under any other provision of the law.”  The ITC also cited legislative history in which it was stated that the statute was intended to provide patent owners with a new right to sue for damages “in Federal district court when someone, without authorization, uses or sells in the United States, or imports into the United States a product made by their patented process.”  The ITC further relied upon the Senate Report which provided that there was no “intention for these provisions to limit in any way the ability of process patent owners to obtain relief from the U.S. International Trade Commission.”

On appeal to the Federal Circuit, Kinik argued that the defenses of § 271(g) should apply in Section 337 actions because Section 337(c) states that all legal and equitable defenses may be presented in ITC actions.  Kinik also argued that it was anomalous to create a legislative distinction in the defenses available in different tribunals.  As set forth in Kinik Co. v. ITC, 362 F.3d 1359 (Fed. Cir. 2004), the Federal Circuit disagreed with Kinik, and affirmed the ITC’s ruling.  It found that the ITC’s interpretation of the statute was supported by the text, the legislative history, and by precedent.  It also noted that, to the extent there was any uncertainty or ambiguity in the interpretation of the statute, deference should be given to the view of the agency that is charged with its administration.