A tech company stops a patent troll from blocking its products
The Client — A US-headquartered technology company whose flagship product line accounts for substantially all of its North American hardware revenue, with manufacturing partners and import routes that depend on continuous access to the US market.
The Situation — A non-practicing entity filed a Section 337 complaint at the US International Trade Commission seeking an exclusion order against the client's flagship product line — a remedy that would have blocked imports of the entire commercial book.
The Challenge — ITC schedules move on a fixed calendar and rarely yield to ordinary motion practice. By the time most defendants engage on domestic industry, the dispute has narrowed to infringement and validity, where the complainant has the structural advantage.
What We Did — The team challenged the complainant's domestic-industry showing on a parallel track to substantive non-infringement and invalidity defenses. By pressing licensing-based DI at the Markman stage, the defense forced an early evidentiary record that the complainant could not sustain. Inter partes review at the Patent Trial and Appeal Board was filed in parallel for redundancy.
The Results — The Administrative Law Judge issued a final initial determination of no violation, finding the domestic-industry requirement unmet. The Commission declined to review. The parties reached a cross-license on commercial terms that recognized the client's existing portfolio.
“Most ITC defendants spend nine months waiting to be cornered on infringement. We were litigating domestic industry by month two — and that changed the entire commercial conversation.”
