It avoids court clog

For patent owners, the ability to obtain an injunction often provides a great deal of leverage in license negotiations. Historically, the grant of an injunction was seen as a foregone conclusion following a finding of infringement.  But the Supreme Court’s decision in eBay v. MercExchange altered that equation by making injunctions more difficult to obtain, particularly for non-practicing patent owners, who do not make and sell products covered by the patents. As a result, many patent owners have turned to the U.S. International Trade Commission (“ITC”) as an alternative to U.S. District Courts for prosecuting infringement suits.

The ITC permits a patent owner to enforce its rights against an entity that imports allegedly infringing products in the United States. And like a U.S. District Court, the ITC also has the power to issue injunctions, called “exclusion orders,” to stop infringing products from being imported into the U.S.

There was a question as to whether the standard for injunctive relief at the ITC is the same as that for a U.S. District Court. And in Spansion v. Int’l Trade Comm’n, Nos. 2009-1460, 1461, 1462, 1465 (Fed. Cir. Dec. 21, 2010),1 the Federal Circuit recently answered this question in the negative. Specifically, the court held that the statutes applicable to the ITC’s grant of an exclusion order do not require the application of the same standard used by U.S. District Courts to enter injunctions. Moreover, while the ITC is required to consider certain “public interest” factors, those factors are not the same as those considered by a U.S. District Court.