Firms Seek ‘Burst of Sunshine’ at ITC After Gloomy Year

ITC filings were down in 2022, however, some attorneys believe that a recent ruling against Apple shows that the entity may still have its perks. In October, the ITC issued a limited exclusion order against Apple which could ban the tech company from importing Apple Watches into the US due to the possible infringement of two patents from the medical device company Masimo.

Finnegan partner Smith Brittingham told Managing Intellectual Property that owners may feel that the forum is less patent-friendly than it was.

He notes that this is partly down to the number of cases filed by non-practicing entities (NPEs). NPEs often struggle to establish domestic industry, which is one of the requirements for bringing an ITC complaint.

“This case shows that a complainant can still run that gauntlet and get a result, which may encourage people to take a second look at the ITC as a potential venue.”

Smith points out that the patent dispute wasn’t only fought at the ITC but also in court. Masimo has also filed a separate trade secrets suit against Apple related to the same technology.

“This fits within our view that many of the modern large-scale IP disputes are not single forum cases. There needs to be a comprehensive strategy of ITC, district court, and perhaps European litigation,” he said.

“Being able to investigate and work on a range of matters is very important in today’s patent litigation world.”

Smith adds that Finnegan has flexible subject matter expertise among partners. For example, in addition to ITC matters, he also works on district court cases and trade secrets disputes.

“If you get the client in the door, we’ll put together a team that’s able to handle the entire variety of claims and forums, and it wouldn’t feel like separate teams,” he said.

Smith said that Masimo’s relevant commercial product hadn’t come out when it filed its complaint. This raised questions about relying on investments in domestic industry that were in the process of being established.

He notes, however, that this is an open question because there’s not yet a public version of the ITC’s opinion.

Apple and Masimo will be given time to make proposed redactions, a process that could take several weeks.

“They asked a lot of questions that practitioners would love to know the answer to. When we see the public version, we may get a lot of answers,” he said.

Smith notes that Apple tried to argue that the Apple Watches were being used in various studies and had health benefits for consumers. Masimo pushed back on these arguments.

“Those issues will also be discussed, and it will be helpful to understand where the commission’s coming from where there’s a big public interest fight,” said Smith.

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