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IPR Cases and the International Trade Commission

A case-by-case analysis of the extraterritorial reach of U.S. IP Laws. IPR Cases and the International Trade Commission. Outline. Overview Legislation Landmark cases Executive Summary & Proposal Links. 1.1 The principle of Territoriality in IP law.

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IPR Cases and the International Trade Commission

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  1. A case-by-case analysis of the extraterritorial reach of U.S. IP Laws IPR Cases and the International Trade Commission Vaishnavi Venkatesh

  2. Outline • Overview • Legislation • Landmark cases • Executive Summary & Proposal • Links Vaishnavi Venkatesh

  3. 1.1 The principle of Territoriality in IP law Main impact on national law and international conventions within IP is the conflicting nature of patent, trade and property rights and the interference on sovereign decisions of nations to grant or deny IP protection. Vaishnavi Venkatesh

  4. 2.1 Section 337 (Tariff Act of 1930) • Section 337 of Tariff Act of 1930 (19 U.S.C. § 1337) • The infringement of certain statutory IPR and other forms of unfair competition in import trade are unlawful practices (generally w/r patent or registered trademark infringement) Vaishnavi Venkatesh

  5. 2.1 International Provisions of the Patent Act • “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent” • 35 U.S.C. § 271(a) • Section 271(f) • Section 271(g) bans the import into the United States of products made with a process or method covered by a U.S. patent Vaishnavi Venkatesh

  6. 3.1 TianRui Group Co. v. ITC • The ITC found that TianRui, Amsted Industries Inc (American manufacturer) hired employees from Amsted’s Chinese foundries and disclosed Amsted’s trade secrets to TianRui • Outcome • ITC issued a limited exclusion order against TianRui’s products • Under Section 337, majority of the Federal Circuit panel found “a single federal standard" governs trade secret misappropriation • Established that Section 337 is not subject to the extraterritoriality presumption, yet "there is no statutory basis for limiting the [ITC's] flexible authority" in trade secret misappropriation cases • Ruling set conditions under which products may be imported into the U.S, one of those conditions being compliance with “federal trade secret law,” which allows American businesses to block access to the U.S. market for conduct that may be legal in the country where it occurred Vaishnavi Venkatesh

  7. 3.2 Amtorg Trading Corp • 80 year precedence • U.S. Court of Customs and Patent Appeals faced a scenario where "[m]erchandise not itself patented, manufactured in Russia by a process patented in the United States, but not in Russia, was imported into, and entered the commerce of, the United States" • Outcome • U.S. Tariff Commission (predecessor of the ITC) held that the importation of a product made overseas by infringing a U.S. process patent is an unfair method of competition in violation of Section 337 • CCPA overturned the outcome concluding that Section 337 lacks extraterritorial application under the Patent Act • The Amtorg dissent has appeared to be the catalyst for the majority ruling in TianRui Vaishnavi Venkatesh

  8. 3.3 Microsoft Corp v AT&T (patent law case) • Outcome • Supreme Court held that U.S. patent law does not apply to any extraterritorial activity, and thus, Microsoft was not liable under 35 U.S.C. 271(f) • “The absence of anything addressing copying in the statutory text weighs against a judicial determination that replication abroad of a master dispatched from the United States 'supplies' the foreign-made copies from the United States within the intendment of § 271(f)." Supreme Court ruled that loopholes in this particular section are to be left for Congress to consider and close Vaishnavi Venkatesh

  9. 4.1 Executive Summary & Proposal • With respect to primarily patent and trademark infringement cases, how may ITC rulings be upheld without authorizing such broad extraterritorial applications of U.S. law? • Can legislation be reformed such that such applications are subject to more stringent, unilateral jurisdictional guidelines, rather than assessed on an “ad hoc” basis with respect to the impact of the ruling on importation of products? • With the outcomes of previously mentioned cases, it is no longer possible to remedy the legislative weaknesses by applying national IP laws on a case-by-case basis (despite the extraterritorial provisions under the U.S. Patent laws) of occurrences in foreign countries or by foreign subsidiaries within the U.S. • Paper proposes a systemic analysis of possible responses to the conflict between transnational commerce and territorial intellectual property rights in order to adapt and harmonize global IP systems. Vaishnavi Venkatesh

  10. 5.1 Research Links • http://www.usitc.gov/publications/332/working_papers/wp_id_05.pdf • http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=c56dfede-6d78-4884-8752-2581d68ab24e • http://www.usitc.gov/intellectual_property/documents/337_faqs.pdf • http://www.worldipreview.com/article/beyond-tianrui-v-itc-how-far-will-the-us-courts-go • http://scholarship.law.wm.edu/cgi/viewcontent.cgi?article=1163&context=wmlr Vaishnavi Venkatesh

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