01 October 2008

How trolls can circumvent eBay

The Supreme Court's eBay decision made it harder for patent trolls to obtain injunctions. Bas de Blank and Fabio Marino explain why the ITC may give them an escape route

One-minute read

Patent trolls were dealt a blow in 2006 when the Supreme Court ruled in eBay v MercExchange that permanent injunctions should not be issued automatically in patent infringement cases. But at the International Trade Commission, injunctions are still standard, and this disparity – coupled with the expansion in 1988 of the ITC's jurisdiction to include "universities and other intellectual property owners who engage in extensive licensing of their rights to manufacturers" – may cause trolls to increasingly turn to the ITC. This could ironically lead to practices such as forum shopping and other results not contemplated or intended by the Supreme Court's decision. To avoid this situation and to ensure fairness, ITC proceedings should be brought in line with the district courts.

While patent owners who do not practise their own patents – the so-called patent trolls – have traditionally shied away from litigation before the US International Trade Commission (ITC), the increasing difficulty in obtaining injunctions in district court in the wake of the Supreme Court's eBay decision may ultimately lead patent trolls to turn to the ITC to seek that remedy.

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How trolls can circumvent eBay

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