American Conference Institute's 3rd Expert Forum on

ITC Litigation & Enforcement

Monday, February 27 to Tuesday, February 28, 2012
Westin Washington DC City Center, Washington, DC
Monday, February 27, 2012

Interactive Working Group Session A: ITC Case Law Year in Review – 7:30 am – 9:30 am

A Hands-On Examination of the Key Cases of 2011, What They Mean for ITC Practice and Their Impact on IP Litigation

Jim Adduci
Partner
Adduci, 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   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.


February 29, 2012 – Advanced Litigation Working Groups

B – ITC E-Discovery Working Group: Cost Effective Strategies for Successful Fact Finding and Obtaining the Information You Need from Discovery during Litigation at the ITC - 9:00 am – 12:30 pm

Hon. Randall R. Rader
Chief Judge
U.S. Court of Appeals for the Federal Circuit (Washington, DC)

Tony V. Pezzano
Partner
Cadwalader, Wickersham & Taft LLP (New York, NY) 

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

Edward R. Reines
Partner
Weil, Gotshal & Manges LLP (Redwood Shores, CA)
Chair, Federal Circuit Advisory Council

The fast-paced timeline allotted for the discovery process at the ITC can be one of the most intimidating aspects of a Section 337 investigation. In direct response to the great expense and practical litigation challenges that are often presented by discovery during a Section 337 investigation, the ITC bar is now working to outline a set of proposals that could be used as a procedural guideline for cost-effectively managing this arduous process.

A rare opportunity to gain and share best practices, this interactive and practical session will provide attendees with an in-depth overview of how to operate under specific ALJ Ground Rules, address interrogatories and respond to document requests as well as requests for admissions and depositions, all while operating within your client’s budget.

An added benefit of this session, Ed Reines, Chair of the Federal Circuit Advisory Council, will deliver a special presentation during the Working Group that will outline the practices that were put into place in federal district court and are currently being considering by the ITC as benchmarks. Take note as you are provided with discovery strategies that have worked in federal district court that can be applied to more efficiently manage the discovery process at the ITC. Topics to be discussed during this session will include:

  • Complying with limitations on discovery under ITC practice and Federal Rules
  •  Understanding the function and role of the discovery committee
  •  Sophisticated case budgeting for ITC cases – tips for conducting effective discovery without expounding your client’s entire litigation budget

o   how to keep your outside counsel on track and pursue only what’s needed

o   focusing your budget on patents that are most relevant to the case and critical to your business

  •  Limiting “fishing expeditions” during ITC discovery
  • Dealing with the unique challenges posed by foreign deposition practice
  • Addressing protective order issues
  •  Conducting contentious interrogatories
  •  Preparing your client for a deposition

 

C – Counsel’s Guide to NPE Litigation: Everything You Need to Know about How to Effectively Engage in Litigation with NPEs and PAEs at the ITC and Federal District Court - 1:30 pm – 5:00 pm

William D. Belanger
Partner
Pepper Hamilton LLP (Boston, MA)

Ruffin Cordell
Principal
Fish & Richardson P.C. (Washington, DC)

After years of asserting high-profile patent infringement claims in federal district courts throughout the country, NPEs and PAEs have now set their sights on the ITC as the forum of choice for high-stakes IP litigation. Often engaging several companies in one investigation, counsel who are tasked with initiating and defending against these complex actions must be armed with their best litigation strategies in order to achieve success – on both sides.

During this practical and interactive session, here from litigators experienced in litigation involving NPEs and PAEs at both the ITC and federal district court as they share proven litigation strategies for obtaining the results you need. Topics to be discussed during this exclusive session will include:

  • Tips for evaluating the sufficiency of licensing activity required to meet the domestic industry standard
  • Making a convincing public interest argument in the context of an NPE case
  • How to respond to the threat of litigation
  • Managing parallel actions – ITC and federal district court
  • When and how to approach settlement – addressing licensing and royalty agreement terms
  • Seeking a protective order to shield non-settling parties from receiving the financial details of the settlement