Client:

Asian Based Smartphone and Tablet Manufacturer

Issue:

When our client was accused of infringing multiple claims from 10 patents asserted by Apple at the ITC, the company faced the potential exclusion of its entire line of smartphone and tablet products from the U.S. market.   

Challenge: 

It was critical to develop a backup plan to allow the continued importation of our client’s products without disruption of the supply chain in the event of a finding of infringement and the issuance of an ITC exclusion order.  

Solution:

Perkins Coie identified the patents and claims that were at risk of being found infringed by the ITC and developed design around alternatives by modifying the accused features of our client’s products based on Apple’s infringement and invalidity arguments.

We communicated with attorneys at U.S. Customs, which is charged with enforcing exclusion orders issued by the ITC, to determine the type of evidence they find most persuasive when approving design around devices for importation.  U.S. Customs attorneys explained that testimony from the opposing expert was the most persuasive.  At the hearing, we solicited helpful testimony from Apple’s expert relating to the design around devices without disclosing our intentions to Apple.

On a separate track, we successfully argued that the ITC should delay any remedial orders by three months, on public interest grounds, to minimize the harm to third-party cellular carriers and service providers.  This first-ever delay of an ITC exclusion order for our client based on public interest considerations in a decision, Inv. No. 337-710,  is routinely cited by others seeking similar relief.  With the extra time, we were able to obtain approval for our client to import a design around alternative without disrupting its supply chain.

When the ITC found infringement of two Apple patents, we quickly submitted our design around device plan to U.S. Customs for approval, along with the testimony from Apple’s expert, so that our client could import devices containing the design around when the ITC’s remedial orders became effective.  Once the design around was approved by U.S. Customs, there ultimately was no impact on our client’s ability to continue importing phones incorporating the design around to the United States.