Written by Mark Terry 

This Friday, the U.S. International Trade Commission (ITC) issued a notice stating that Mitsubishi does not infringe GE’s wind turbine patent, thereby ending a long-running legal dispute between the two companies at the ITC. The patent infringement dispute dates back to early 2008 when GE claimed that Mitsubishi infringed upon GE’s wind turbine patents in a complaint filed with the ITC, in an effort to block the importation of Mitsubishi’s wind turbine products into the U.S. The effort, however, backfired and exposed the weaknesses of using the ITC as a forum for a patent infringement dispute.

As a Florida patent attorney that handles patent infringement disputes, I’m often confronted with the question of where a patent infringement dispute should be heard. As I wrote on Jan. 2, 2010, the ITC is becoming a more popular route for patent owners attempting to halt infringers of their patents, due to: 1) lower litigation costs and 2) the reduced waiting time compared to litigation in a federal court. The biggest drawback of the ITC, however, is that theITC only has the power to stop the importation of infringing goods into the U.S. The ITC does not have the power to award damages, stop the selling of U.S. manufactured goods or force a royalty upon the infringing party.

The recent Mitsubishi-GE case, however, illustrates how a dispute at the ITC can actually take an extended period of time to resolve – more than 2 years in this case and it did not even go to trial. There has also been speculation as to expenses in this case. Due to the extended period of time and the amount of wrangling in this case, the fees may have been rather high. Again, this goes against the conventional thinking that the ITC is a less-expensive forum. Thus, this case challenges the assumption that the ITC is a cheaper, faster forum. As a patent practitioner, the practice pointer I’ve taken from this story is that the choice of forum for every patent dispute should be taken on a case-by-case basis. One should not rush to one forum or another based on assumptions. The case should be carefully reviewed and a practitioner who knows the forum well should be consulted on how that particular forum would fit the instant case.