Buzz off: ITC victory for Canadian vibrator maker
A panel at the US International Trade Commission (ITC) has found that 22 vibrator makers, including Lelo Inc, infringed Canadian company Standard Innovation Corporation’s patent related to a two-armed vibrator.
Standard Innovation filed a complaint against Lelo both at the ITC and the US District Court for the Southern District of Texas on the same day in November 2011. It claimed Lelo’s products infringed a patent relating to its ‘We-Vibe’ family of vibrators.
The commission issued a general exclusion and cease and desist order on June 17, which bans the sale, marketing and distribution of all infringing Lelo products, including the Tiani and Tiani 2 vibrators. The order is now subject to a 60-day presidential review process.
The ruling overturns an earlier decision made by an ITC judge, who found that although Lelo and the other businesses had infringed Standard Innovation’s patent , Standard Innovation could not demonstrate enough commercial activity in the US to pursue proceedings at the ITC.
Standard Innovation has ongoing patent infringement suits in the Canadian Federal Court and the Texas court, where it is seeking damages.
Christine Lehman, a partner at Finnegan Henderson Farabow Garrett & Dunner LLP in Washington DC, said that it is fairly common for companies to file simultaneous complaints at the ITC and the district court.
Though this particular case had some unique aspects, she said, including the issuance of the general exclusion order, which she described as a “very powerful weapon.”
She added that while the ruling will not directly affect the live district court case – “actions taken by the ITC are not binding in district courts,” – the general exclusion order may cause the parties to settle.
“Unless they can design around this patent, they’re facing a long wait of having products blocked,” she said.
She explained that the ITC’s domestic industry statute requires that complainants have significant investments in the US to make a case. Standard Innovation initially provided evidence that they had purchased US-manufactured components which are essential in its devices, though this was deemed by the original judge to be insufficient.
Lehman said she is curious to see the ITC’s opinion on this case, amid debate that the ITC has loosened the requirement for domestic industry too much.
“This decision seems to make it easier to prove a domestic industry, but I think it also reflects the nature of global manufacturing,” she said, as complex components are manufactured and sold by the US, and products are assembled cheaply in other countries.
“It could be that this decision recognises that the concept of domestic industry is shifting, and the global realities of that,” she added.
