While ALJ McNamara’s recent order suggests that respondents may be permitted to add defenses in the midst of discovery if the complainant is aware of the defense, it remains important for respondents to coordinate with co-respondents so the pleadings reflect all applicable defenses as soon as possible.
A recent Order from ALJ McNamara is a reminder of the complexities in proving domestic industry at the ITC.
ALJ Bullock recently issued an opinion striking portions of Complainant’s expert report related to certain test results not included in Complainant’s responses to contention interrogatories, but made an exception for test results related to alternative designs that were not disclosed by Respondent until the end of fact discovery.
In addition to stopping the importation of infringing articles, ITC remedies can be used to prevent certain domestic activities, including preventing the importation of replacement parts for domestic service and repair activities, and preventing the sale of articles already existing in domestic inventory.
In a recent decision, the Federal Circuit laid out a multifactor test for secondary meaning and clarified that registering a trademark creates a presumption that the mark is valid, which can include a presumption that the mark has achieved secondary meaning, but the presumption only begins from the time of registration.
While limited exclusion orders remain the default remedy, a recent Initial Determination issued by ALJ Bullock is a reminder that the ITC may issue a general exclusion order if it finds a limited exclusion order would be insufficient to protect a complainant’s domestic industry.