We understand that the legal jargon of the ITC’s initial determination regarding Standard Innovation® Corporation’s patent can be confusing. Here are the most frequently asked questions and concerns—answered and clarified.
Q1. What does the January 8, 2013, United States International Trade Commission (ITC) initial determination made in its investigation related to Standard Innovation® Corporation’s patent on the C-shaped device that is worn while making love mean for retailers and distributors?
A1. The ITC initial determination is a finding by the ITC’s Administrative Law Judge (ALJ) that Standard Innovation’s patent is valid, and that Lelo Inc.’s Tiani, Tiani 2 and Mahana products infringe Standard Innovation’s U.S. Patent No. 7,931,605. Retailers and distributors who sell any infringing product leave themselves open to a claim for patent infringement and associated remedies, including damages and an injunction.
Q2. Why did Standard Innovation start this legal action?
A2. Standard Innovation started this legal action in December 2011, shortly after Standard Innovation became aware that Lelo was selling products that Standard Innovation considered to be infringing its patent. It was necessary for Standard Innovation to pursue this course of action to protect the company’s valuable intellectual property.
Q3. What does Standard Innovation’s patent for the We-Vibe® device cover?
A3. As a strict legal matter, the claims of the patent describe exactly what the patent covers. As a general matter, Standard Innovation’s U.S. Patent No. 7,931,605 relates to sexual stimulation devices worn by a woman during intercourse that are C-shaped. Specifically, the patent is directed to a device dimensioned to be worn by a female during intercourse that includes an inner arm dimensioned for placement inside a vagina, an outer arm dimensioned for placement against a clitoral area, and a connecting portion that connects the inner and outer arms.
Q4. If I sell Lelo’s Tiani, Tiani 2 or Mahana products, will I have to pay damages to Standard Innovation?
A4. Retailers and distributors who sell Lelo’s Tiani, Tiani 2 or Mahana products do risk facing legal actions from SIC, which is committed to using all means available through courts and administrative agencies, such as the ITC, in the U.S., Canada and elsewhere around the world to protect its valuable intellectual property rights.
Q5. What is the amount of damages that I would have to pay
A5. A court of law decides the damages, which can be increased if the patent is willfully violated.
Q6. Is the ITC decision final?
A6. No, this is an interim decision by the ALJ. The final determination by the full Commission is expected by May 2013.
Q7. What should I do with my inventory of Tiani, Tiani 2 and Mahana?
A7. Standard Innovation suggests that you contact Lelo.
Q8. What countries could be affected by the ITC’s decision? How could they be affected?
A8. While the ITC has jurisdiction only to prevent importation and sale of infringing products in the United States, patents have been granted that cover the We-Vibe® device in Canada, Australia, China, Hong Kong, and Mexico, in addition to the United States, and patent applications are pending in Europe, Brazil, India and Korea. Legal actions are also underway in the Federal courts of the United States and Canada.
Q9. This is an initial determination. Will the outcome change with a later ruling?
A9. Both parties have exercised the option to petition the ITC to change its ruling.
Q10. When will the “final” determination be made by the ITC?
A10. Barring any extensions by the ITC, Standard Innovation expects the final determination from the ITC in May 2013.
Q11. What happens next?
A11. Standard Innovation will consider legal actions against any companies, including distributors and retailers, that market and sell products that infringe our patents or that otherwise violate Standard Innovation’s intellectual property rights, including the sale of counterfeit products, in the US and abroad.
In addition to the ITC proceeding, Standard Innovation has ongoing and separate patent infringement actions in the Federal Courts of the United States and Canada against Lelo’s allegedly infringing devices. In these actions, Standard Innovation seeks monetary damages as well as other available relief. Furthermore, in the United States, Standard Innovation asserts a claim of willful infringement, a finding of which can result in treble damages and payment of attorneys fees. Anyone selling devices in view of the public infringement finding of the ITC’s ALJ may be subject to a willful infringement claim.