Comments on IPEC’s 2016–19 Strategic Plan Include Focus on Improved Enforcement of ITC Exclusion Orders

The U.S. Office of the Intellectual Property Enforcement Coordinator (IPEC) is currently preparing its 2016–19 Joint Strategic Plan on Intellectual Property Enforcement.  To assist in its development of the plan, IPEC issued a notice in 2015 requesting the views of the public on the IP challenges facing the nation.  80 Fed. Reg. 52800 (Sept. 1, 2015).  In October 2015, dozens of major companies and non‑profit organizations submitted comments in response.  A number of those comments are directed to the ITC and enforcement of its exclusion orders, including the procedures used by U.S. Customs and Border Protection (CBP).

Several organizations expressed concerns regarding the difficulty of enforcing exclusion orders.  For example, the Innovation Alliance (IA) wrote:  “It is no secret that successful ITC complainants have struggled to obtain effective enforcement of the exclusion orders issued on their behalf.”  The International AntiCounterfeiting Agency Coalition (IAAC) argued that enforcement of exclusion orders “faces a number of strategic impediments.”  The ITC Trial Lawyers Association (ITCTLA) “strongly encourage[d] IPEC to channel much-needed attention and resources to strengthening the ITC exclusion order enforcement process.”

These organizations and others argued that CBP should adopt improved procedures to permit IP owners to participate in enforcement proceedings and provide input to assist CBP in its determination of whether imported products are within the scope of exclusion orders.  The Imaging Supplies Coalition (ISC) explained:  “CBP should have the option to notify the rights owner of a detention of imports and to request a rights owner’s assistance in determining whether the imports are covered by an exclusion order.”  The ISC further argued that CBP should solicit the input of IP rights owners before allowing importers to enter goods by certifying such goods do not violate an exclusion order.  In a similar vein, the ITCTLA and the IA encouraged IPEC to promulgate its long-anticipated Notice of Proposed Rulemaking proposing a new inter partes procedure for interpretation and enforcement of exclusion orders.

The American Bar Association (ABA) raised different concerns in its submission to IPEC.  Those concerns relate to the Federal Circuit’s recent en banc decision in Suprema v. ITC, 796 F.3d 1338 (Fed. Cir. 2015) (en banc), which holds that the ITC is authorized to issue exclusion orders barring the importation of products that directly infringe only when used after importation.  The ABA commented that such exclusion orders will make CBP’s job of determining whether an imported product should be excluded more difficult and could create a “cloud of suspicion” that impedes the importation of lawful products.

Finally, several organizations expressed concerns regarding the ITC’s ruling in Digital Models, Inv. No. 337-TA-833 (Apr. 9, 2014), that it has the authority to block downloads of infringing designs and other data transmitted electronically over the Internet or otherwise.  That ruling was recently reversed by the Federal Circuit in its ClearCorrect v. ITC (Nov. 10, 2015) decision.  (See our blog post here.)