How to Avoid a Disaster at the ITC

Orrick’s Bas de Blank, Michael Chow and Tammy Su have co-authored an article in Managing IP discussing the issues and risks surrounding redesigning a product that is accused of infringement and provide practical suggestions for each step of an ITC litigation. The authors suggest disclosing the existence of the redesign during fact discovery, importing the redesign, and producing evidence of the importation so that it’s clear the redesign should be considered. They also recommend pressing the patent owner to accuse the redesigned product of infringement or else concede that it does not infringe and seek a determination from the Administrative Law Judge. “If you follow these steps, you maximize your chances that the redesign can be imported even if the original design was found to infringe,” the authors note.