ITC Continues to Investigate Cases of Domestic Infringement

Surgical Stapler

On June 28, the ITC instituted a new Section 337 investigation—Reload Cartridges for Laparascopic Surgical Staplers (Inv. 1167)—based on a complaint filed by Ethicon, a subsidiary of Johnson & Johnson that sells medical devices known as surgical staplers to doctors who perform bariatric weight-loss surgeries. The respondent is Intuitive Surgical, another U.S. medical device maker that sells a competing product. The complaint asserts five patents all of which describe surgical staplers with specific features. The dispute between the two parties dates back at least to June 2017, when Ethicon filed its first complaint in federal district court. The parties are currently embroiled in multiple lawsuits as well as inter partes review proceedings challenging the validity of the patents at the Patent and Trademark Office.

The case at the ITC quickly got complicated when Ethicon filed an amendment to its complaint that narrowed the accused products to include only "reload cartridges" and not the surgical staplers that use those cartridges. It's not apparent from docket documents why they narrowed the scope of their complaint, but it may be that Intuitive's staplers are assembled in the United States.

The change in scope prompted a response by Intuitive asking the ITC not to institute the investigation as to some of the patents, which describe surgical staplers and so cannot be infringed by reload cartridges. Unsurprisingly, the request was not granted. The ITC has already used Section 337 a number of times to block the importation of non-infringing articles that were used domestically after importation to induce infringement.

In its response to Intuitive's request, Ethicon pointed to the Federal Circuit's holding in Suprema v. ITC that "the phrase ‘articles that infringe’ covers goods that were used by an importer to directly infringe post-importation as a result of the seller’s inducement." Ethicon also cited the Commission Opinion in Digital Video Receivers (Inv. 1001) holding that a Section 337 violation only requires "importation of articles, proof of direct infringement, and proof of inducement." That holding, which appears to require no nexus at all between the inducement and the importation, is currently under appeal.

Whether or not it is currently allowed by law, the fact remains that imposing a trade remedy in response to purely domestic infringement by U.S. companies is completely unnecessary. Patent owners are fully capable of enforcing their patent rights against companies operating in the United States by suing them in federal court.

It's always worth remembering that most patent investigations at the ITC are conducted alongside co-pending lawsuits in federal district court. For the last three years, duplicative investigations have made of about 80% of the ITC's docket. The number is up to 86% for new complaints (19 of 22) filed in the first half of 2019.

The frequency of duplicative litigation shows that the ITC's role in the patent system is mostly to provide some patent owners with an extra bite at the apple. But other than their desire to bypass the procedures and remedies of federal court, there is no policy justification for permitting some patent owners to seek agency adjudication of domestic legal disputes with American companies.