ITC Litigation & Enforcement

Monday, February 27 to Tuesday, February 28, 2012

Westin Washington DC City Center, Washington, DC

A. INTERACTIVE WORKING GROUP 7:30 am – 9:30 am
(Registration Opens at 7:00 am)​

ITC Case Law Year in Review: A Hands-On Examination of the Key Cases of 2011, What They Mean for ITC Practice and Their Impact on IP Litigation

Jim Adduci
PartnerAdduci, Mastriani & Schaumberg, L.L.P.
(Washington, DC)

Juliana Cofrancesco
Attorney Advisor
U.S. International Trade Commission
(Washington, DC)

This new pre-conference working group is designed to provide you with a comprehensive review of the year’s most important ITC cases. Follow along as counsel well versed in the new developments in case law over the past year engage you in an in-depth examination of the real-life impact of each case on ITC practice. Participants will learn what these cases reveal about trends in ITC litigation as well as recommendations for how in-house counsel and ITC practitioners can update their litigation strategies in response to recent developments going forward. Cases to be addressed will include:

• ITC Determinations:

o Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same, Inv. No. 337-TA-694
o Certain Video Game Systems and Controllers, Inv. No. 337-TA-743
o Certain Printing and Imaging Devices and Components Thereof, Inv. No. 337-TA-690
o Certain Personal Data and Mobile Communications Devices and Related Software, Inv. No. 337-TA-724

• Federal Circuit Court Decisions:
o Tessera v. ITC, on appeal from Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-630
o John Mezzalingua Associates v. ITC, on appeal from Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same, Inv. No. 337- TA-650
o Spansion v. ITC, on appeal from Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-605
o Tianrui Group v. ITC, on appeal from Certain Cast Steel Railway Wheels, Certain Processes for Manufacturing Or Relating to Same and Certain Products Containing Same, Inv. No. 337- TA-655

Whether you are new to the practice of ITC litigation or a senior IP practitioner in need of a refresher, you will find this session invaluable for getting up to speed on the latest cases, while maximizing your opportunity to engage in the advanced discussion that will be the hallmark of the main conference.

Please note that the cases covered during this session will be updated to include all high profile cases resolved by February 2012.8:45 Registration for the Main Conference Begins

9:45 Conference Co-Chairs’ Opening Remarks

Alexander D. Chinoy
Of Counse
lCovington & Burling LLP (Washington, DC)
President, ITCTLA

10:00 The State of the Commission Address: A View from the Chairman’s Office

Deanna Tanner Okun
Chairman
U.S. International Trade Commission (Washington, DC)

10:30 Domestic Industry Update –Addressing Licensing-Based Domestic Industry and the Evolving Nexus Requirement

Melissa Finocchio
Chief Litigation Counsel
Intellectual Ventures (Bellevue, WA)

Marta Beckwith
Senior Director, Legal Services
Cisco Systems, Inc. (San Jose, CA)

Alexander D. Chinoy – Panel Moderator
Of Counsel
Covington & Burling LLP (Washington, DC)
President, ITCTLA

• Evaluating the standard set out by the Commission in Certain Multimedia Display and Navigation Devices and Systems addressing the suffi ciency of licensing activity required to meet the domestic industry requirement

o establishing the nexus between the asserted patent and the licensing activity
- relevant factors in evaluating the strength of the nexus – is the asserted patent(s) part of portfolio licensing activity?
- evidence of practicing the patent and infringement in the US
o how investment in a patent portfolio will be weighed
– is it “substantial”

11:40 Morning Coffee Break11:55 Strategy Panel – Assessing the Strength of the Patent and Claims: A Strategic Dissection of Successful Theories Behind ITC Cases

Hon. Charles E. Bullock
Chief Administrative Law Judge
U.S. International Trade Commission (Washington, DC)

William F. LeeCo-Managing
Partner
Wilmer, Cutler, Pickering, Hale and Dorr LLP (Boston, MA)

Larry L. Shatzer
Partner
Wilson Sonsini Goodrich & Rosati (Washington, DC)

• Making the decision regarding what patents and claims to attack
• Deciding what issues can be litigated within the constraints of the 337 process
• Identifying relevant parties and how to address defaulting respondents – other available venues for pursuing patent infringement
• Evaluating the strength of the IP at issue – patents, claims• Assessing available defenses based on the theories alleged
• Flagging faulty complaints
• Pursuing dismissal or withdrawal of complaints
• Anticipating post-order assertion of defenses

12:55 A Commissioner’s View on the Review of Initial Determinations

Shara L. Aranoff
Commissioner
U.S. International Trade Commission (Washington, DC)

1:15 Networking Luncheon2:30 Effectively Managing the ITC Pre-Hearing Process

Barbara A. Murphy
Member
Foster, Murphy, Altman & Nickel, PC (Washington, DC)

Thomas Fusco
Supervisory Attorney
Office of Unfair Import Investigations
U.S. International Trade Commission (Washington, DC)

• Developing a plan of attack for pre-hearing briefs – knowing what to argue for, when and how
• Drafting effective motions in limine
• How to successfully navigate ITC summary determination practice
• Preparing for Markman Hearings and conducting a claims analysis
• Pre-hearing conferences and exchanging proposed exhibits
• Considerations for opening arguments – key theories
• Handling expert reports3:15 Ensuring the Success of Foreign Discovery at the ITC: Cost-Effective Strategies for Conducting Fact-Finding Discovery of Foreign Parties

Ping Gu
Partne
rUnitalen (Beijing, China)

Alex An
CEOJK Sucralose Inc. (Beijing, China)

Paul Brinkman
Partner
Quinn Emanuel (Washington, DC)

• How to address, prepare for and accommodate cultural and language differences
• Responding to foreign objections to 337 procedures
• Knowing when and how depositions of foreign witnesses can be taken – complying with foreign legal restrictions on where depositions of foreign parties can be taken
• Obtaining information from key foreign corporate personnel
• Coordinating discovery in ITC, District Court and other foreign proceedings – cross-use, protective orders

4:00 Afternoon Refreshment Break

4:15 The View from the ITC Bench

Hon. Charles E. Bulloc
kChief Administrative Law Judge
U.S. International Trade Commission (Washington, DC)

Hon. E. James Gildea
Administrative Law Judge
U.S. International Trade Commission (Washington, DC)

Hon. Robert K. Rogers
Administrative Law Judge
U.S. International Trade Commission (Washington, DC)

Hon. Theodore R. Essex
Administrative Law Judge
U.S. International Trade Commission (Washington, DC)

Hon. Thomas Bernard Pender
Administrative Law Judge
U.S. International Trade Commission (Washington, DC)

Hon. David P. Shaw*
Administrative Law Judge
U.S. International Trade Commission (Washington, DC)

Laura Beth Miller – Panel Moderato
rShareholder & Chair, ITC Litigation Practice Group
Brinks Hofer Gilson & Lione (Chicago, IL)

A rare opportunity to hear exactly what the Judges are really looking for when evaluating and assessing the theories asserted by parties during a Section 337 case, take note during this exclusive panel as all of the current, sitting Administrative Law Judges share and discuss with you their thoughts on how they interpret and analyze your case. Learn what the most common mistakes are that are made by Section 337 litigators as well as trial tactics practitioners may consider using which would more positively impact the presentation of a case. Come prepared with your most pressing questions. Topics of discussion during this session will include:

• What judges prefer and dislike in terms of trial tactics utilized by counsel on both sides – 5 most common mistakes made by counsel during a Section 337 hearing
• What you could be doing to more effectively try and resolve your case – addressing settlement
• Discussing judge’s expectations concerning timelines and discovery
• Judges current thinking on:o the use of live testimony vs. witness statementso Markman Hearings as a tool for narrowing issues by summary determinationo Mediation – compulsory vs. voluntaryo NPE litigation at the ITC
• How is the Offi ce of Administrative Law Judges responding to the uptick in Section 337 investigations – scheduling, hearings, workload

Attendees will be provided with the opportunity to pose questions during a moderated Q&A segment at the conclusion of the panel.

6:00 Conference Adjourns to Day Two

6:00 – 7:00  Cocktail Reception Hosted by: DLA PIPER


9:00 Co-Chairs’ Remarks

Alexander D. Chinoy
Of Counse
lCovington & Burling LLP (Washington, DC)
President, ITCTLA

9:15 Corporate Approaches to ITC Litigation – In-House Counsel Views on the Costs and Benefits of Pursuing a Section 337 Investigation

Vaishali Udupa
IP Litigation Manager
Hewlett-Packard (Washington, DC)

Hildy Bowbeer
Assistant Chief Intellectual Property Counsel
3M (St. Paul, MN)

Vincent Lam
Senior Director, Patent Litigation Counsel
HTC America, Inc. (San Diego, CA)

Renee DuBord Brown
Vice President, Litigation
Tessera Technologies, Inc. (San Jose, CA)

Sean Cunningham – Panel Moderato
rPartner
DLA Piper (San Diego, CA)

• Discussing which types of IP are most ripe for litigation at the ITC
• Why the ITC – weighing the costs and benefits of engaging in litigation at the ITC
• Protecting the IP – addressing the protection of trade secrets during an ITC investigation
• Timing – when is it optimal to initiate (or join) a Section 337 investigation
• Trial procedures and discoveryo identifying issues and concerns for in-house counsel relating to the unique demands of discovery and accelerated motion practice – how to limit business interruption during the discovery processo identifying and preparing key corporate personnel for deposition and trial testimony
• Remedies – understanding how in-house counsel assess available remedies
• Representative counsel – how in-house counsel evaluate and select counsel to represent the company at the ITC – relevant considerations

10:30 General Counsel’s Office Address – The Impact of the Consideration of the Public Interest on the Issuance of Relief

Jean Jackson
Assistant General Counsel
U.S. International Trade Commission (Washington, DC)

Hear from Ms. Jackson as she provides an update on how the Commission makes the decision on whether or not to delegate the issue of the public interest to the ALJ, as well as what the impact, if any, has been over the last year of the consideration of the public interest on the issuance of relief.

10:50 Morning Break

FOCUS ON CUSTOMS ENFORCEMENT

11:05 Spotlight Address – Update on Proposed Initiatives Relevant to the Enforcement of ITC Exclusion Orders at Customs

Dax Terrill
Attorney-Advisor, Intellectual Property Rights and Restricted Merchandise Branch
U.S. Customs and Border Protection (Washington, DC)

11:25 How to Successfully Seek Enforcement of ITC Exclusion Orders and Address Re-Designs and Work Arounds

Vanessa P. Bailey
Senior Legal IPR Counsel – Litigation
Nokia Siemens Networks US LLC (Herndon, VA)

Alice Alexandra Kipel
Partner
Steptoe & Johnson LLP (Washington, DC)

• Evaluating who constitutes a downstream manufacturer or distributor
• Exercising discretion on whether to exclude downstream products of named respondents
• How to deal with infringing components that are only imported as part of a finished good
• Update on recent cases that have addressed the application of limited and general exclusion orders to downstream products
• Emerging theories concerning the use of re-designs or work arounds to side-step downstream product classifi cation
• How to get the most out of the hearing process
• Ensuring the order is effectively enforced at local ports

12:10 Networking Luncheon

1:25 OUII Address – Investigative Attorney Involvement in the Adjudicatory Process

Lynn I. Levine
Director, Office of Unfair Import Investigations
U.S. International Trade Commission (Washington, DC)

Hear from Ms. Levine as she shares with you how the new staffing models that have been tested within OUII have been working and implemented in practice. Attendees will be provided with the opportunity to pose questions at the conclusion of the panel.

1:45 Planning for Remedies: Anticipating Upfront the Operational and Financial Cost of an Exclusion Order and What You Can Do to Minimize the Impact on the Products at Issue

Alex Rogers
Senior Vice President & Legal Counsel
Qualcomm (San Diego, CA)

Brian Busey
Partner
Morrison & Foerster LLP (Washington, DC)
Immediate Past President, ITCTLA

• Anticipating the potential impact of a Limited Exclusion Order (or General Exclusion Order) on current products as well as products in development and next generation innovations
• Responding to inquiries from business partners questioning the impact of an Order on components being litigated that are the part of another product
• Evaluating the viability of pursuing a design around
• Making the decision of whether or not to pursue adjudication of a design around – understanding the downstream impact on customs enforcement

2:30 Going to Trial at the ITC: 5 “Litigator’s Golden Rules” for Achieving Success at the ITC

Hon. Carl C. Charneski
Counsel
Brinks Hofer Gilson & Lione LLP (Washington, DC)
Former Administrative Law Judge, U.S. ITC

Thomas L. Jarvis
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner LLP (Washington, DC)

• Opening and closing arguments – what to address and how
• Live vs. written direct testimony – understanding the purpose of each witness and the relevancy of the testimony provided and the potential impact on the Judge at tria
l• Cross examination – employing techniques to obtain concessions and help build your case
• Evidence – how to ensure key evidence is admitted• Working with opposing counsel

3:15 Afternoon Refreshment Break

3:30 Interactive Q&A Session – Learning From Experience: Creating Responses to Managing Complex Section 337 Investigations

Hon. Charles E. Bullock
Chief Administrative Law Judge
U.S. International Trade Commission (Washington, DC)

Vincent Lam
Senior Director, Patent Litigation Counsel
HTC America, Inc. (San Diego, CA)

Take this opportunity to pose your most pressing issues and benchmark your concerns with our panel of ITC experts during this live, open-format, Q&A discussion. A great opportunity to gain best practices on how to most efficiently oversee a case, interact with ALJs during the hearing process and stay in-tuned with client objectives, this interactive panel session will provide you with a rare opportunity to get real-time feedback from a senior-level group of your peers experienced in dealing with the day-to-day challenges of engaging in Section 337 litigation.

4:30 Conference Concludes

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Location:
Westin Washington DC City Center
Washington, DC