The ITC: Patent Forum Remains Red Hot

The July issue of Corporate Counsel reveals the results of the magazine’s annual International Trade Commission (ITC) Survey, noting that the ITC remains a “hot forum” for patent disputes, especially for the IP boutiques holding the top spots in the ranking.  V. James Adduci II, co-founder of Adduci, Mastriani & Schaum­berg, the top-ranked firm on the list, agrees.  “The last four to five years, things have taken off like a skyrocket,” said Adduci, when interviewed by The National Law Journal earlier this year. “The ITC has become the hottest forum for litigating IP rights of U.S. and foreign companies.”  The survey ranks law firms by the number of ITC intellectual property infringement cases filed that they were involved in, a number that hit a record in 2011.

The ITC’s own statistics reported that the Commission’s caseload under section 337 of the Tariff Act of 1930 grew to 70 new investigations in FY 2011.  That’s up from 51 new investigations begun in FY 2010 and is a record for the number of new investigations instituted.

Two reasons are most frequently cited for the increase in filings. The first is that the ITC is able to issue automatic injunctions in the form of exclusion orders, a form of relief against infringing imports that is not available through the federal district courts.  The second is the speed with which the investigations have been completed at the agency. 

While the Commission’s workload has been increasing, the average time it takes the agency to complete a case has dropped significantly.  For investigations concluded during FY 2011, the average completion time from institution to a decision was 13.7 months. That is down from 18.4 months in FY 2010 and 17.9 months in FY 2009, according to ITC statistics.  And compared to the federal district courts, where patent cases can take years to be decided, the ITC moves with almost lightning-like speed. 

The Commission also instituted a number of other improvements in 2011 according to ITC 337 Law Blog.

[T]he ITC increased the number of attorneys in its Office of the Administrative Law Judges and Office of the General Counsel, hired two new administrative law judges to replace two that had retired, and allocated funds to build a third courtroom and related work areas.

Other firms at the top of the ITC Survey in addition to Adduci, Mastriani & Schaumberg are Kenyon & Kenyon in second place; Finnegan, Henderson, Farabow, Garrett & Dunner in third; Fish & Richardson in fourth; and Foster, Murphy, Altman & Nickel (a new ITC boutique formed in May 2011 by attorneys who were formerly with Miller & Chevalier) in fifth.  The top general practice firms on the list include Quinn Emanuel Urquhart & Sullivan, Steptoe & Johnson LLP, Alston & Bird and Mayer Brown.

With a venue so popular, could the Commission’s caseload expand even further?  Yes, writes Jan Wolfe in Corporate Counsel:

In fact, the ITC’s caseload may even get higher. While the agency is best known for patent cases, its enabling statute grants it broad investigative responsibilities in matters of trade, so it can also hear claims of false advertising, trade secrets theft, copyright infringement, and trademark infringement. Now that the ITC is getting so much mainstream attention, experts say we could see more of those cases.

As more companies turn to the ITC for speedy results and relief against infringing imports, there appears to be no shortage of work for lawyers with ITC experience. And that’s good news for lawyers at boutiques and general practice firms alike.

Posted by Marianne Purzycki