Wednesday, February 24, 2010
8:00 Registration & Continental Breakfast
8:45 Chairs’ Opening Remarks
Juliana M. Cofrancesco
Past President, ITCTLA
Partner, Howrey LLP
Thomas L. Jarvis
Past President, ITCTLA
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Tony V. Pezzano
President, ITCTLA
Partner
Cadwalader, Wickersham & Taft LLP
9:00 Evaluating Where to Litigate International IP Disputes
Alice Kipel
Partner
Steptoe & Johnson LLP
Kent R. Stevens
Special Counsel
Cadwalader, Wickersham & Taft LLP
- Comparing substantive and procedural differences between District Court and ITC actions
- Jurisdiction
- Elements of the action
- Procedural schedule, time to trial
- Discovery limitations
- Admissibility of evidence
- Judge’s initial determination and Commission final determination
- Remedies
- Public interest considerations throughout the proceeding
- Selecting venue: how to assess the benefits of District Court vs. ITC action
- Identifying the potential legal and business advantages
- Weighing client goals
- Calculating cost benefits and time for each type of action
- Assessing what may pass the domestic industry test
- Injury to economically and efficiently operated industries for non-statutory cases
- Treatment of licensing-based domestic industry complainants
- Presumption of injury for patent, registered trademark and copyright cases
- Technical prong proofs for domestic industry claims
- Economic prong proofs for domestic industry claims
- Understanding the nexus between investments and the IP rights-in-suit
10:00 Positioning Complainants, Respondents and Intervenors in Section 337 Cases
G. Brian Busey
Partner
Morrison & Foerster LLP
Linda C. Odom
Counsel
Bryan Cave LLP
- Strategy and substance of a well-formulated ITC complaint
- Fact pleading vs. notice pleading
- Rule 210.12 requirements
- How many and which respondents to name
- Pre-filing due diligence and case preparation
- How many patents and claims to assert
- Jurisdictional allegations required for particular remedies
- Identifying appropriate remedies
- Structuring complaints to obtain effective remedies
- Anticipating defaulting respondents
- Defensive and intervention strategies
- Recognizing the due diligence advantage of complainants
- Deploying IP, ITC, and technical personnel
- Meeting Section 210.13 requirements for responses
- Strategies for shifting the complainant’s advantage during discovery
- Addressing downstream customer issues
- Intervention by real party in interest
- Limited purpose intervention
- Implications for discovery obligations
- Considering potential for post-order assertion of defenses
11:00 Morning Coffee Break
11:15 Successfully Working the Logistics of Section 337 Litigation
Lynn I. Levine
Director, Office of Unfair Import Investigations
United States International Trade Commission
James C. Otteson
Partner
Wilson Sonsini Goodrich & Rosati
- Examining OUII pre-filing reviews, filing of complaints, and institution of investigations
- Understanding the multiple roles of OUII
- Identifying, correcting, or screening faulty complaints
- Procedure and logistics for filing complaints
- Supplementation and amendment of the complaint
- Advising the Commission on whether to institute an investigation
- Navigating the infrastructure for expedited procedures
- Expedited response times
- Understanding the evolution from a beltway to international practice
- EDIS opportunities for electronic filing
- Use of imaging systems for rapid document review
- Washington satellite office vs. local counsel
12:15 Networking Lunch and Keynote Address
Special Address by:
Paul R. Michel
Chief Circuit Judge
U.S. Court of Appeals for the Federal Circuit
“A View from the Court of Appeals for the Federal Circuit regarding Appeals from the ITC in Section 337 Investigations”
With a Special Introduction by:
Randall R. Rader
Circuit Judge
U.S. Court of Appeals for the Federal Circuit
1:30 Coordinating Related Parties & Proceedings
Stephen J. Rosenman
Partner
Dechert LLP
Marcia H. Sundeen
Partner
Kenyon & Kenyon LLP
- Analyzing joint defense groups and the requirements for coordinated defenses
- Exploring use of joint defense agreements
- Manufacturers and distribution chain respondents
- Multiple manufacturers of same or similar products
- Opportunity and risk for riding coattails of other respondents
- Consolidated positions and briefs by multiple respondents
- Managing conflicts among multiple respondents
- Trial coordination and presentation strategies
- Pros and cons of joint experts
- Interaction with related district court and foreign proceedings
- 28 U.S.C. § 1659 stays of counterpart district court actions
- Stays of Section 337 patent cases pending reexamination
- District court cases in lieu of counterclaims
- Foreign actions targeting manufacturing & distribution chains
- Management and use of discovery obtained in one or more actions
2:30 Managing Litigation through Discovery, Claim Construction, Summary Determination and Trial
Eric J. Fues
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Tony V. Pezzano
President, ITCTLA
Partner, Cadwalader, Wickersham & Taft LLP
- Meeting the particular demands of ITC discovery practices
- Assessing the applicability of Federal Rules limitations on discovery
- No delays in initiating discovery
- Identifying the function and role of the discovery committee
- Addressing protective order issues
- Understanding foreign deposition practice
- Handling source code discovery
- Plant inspections
- Contention interrogatories
- E-discovery
- Strategy and procedures for ITC claim interpretation and narrowing issues for trial by summary determination
- Utilizing effective techniques for discovery, briefings and hearings for ITC claim construction
- Addressing claim interpretation in expert discovery
- Claim interpretation at trial: avoiding trial on multiple or unknown claim interpretation positions
- Understanding ITC summary determination practice
- Strategies for narrowing issues by summary determination
3:30 Afternoon Refreshment Break
3:45 Meeting the Challenge of the ITC’s Unique Trial Procedures
Thomas L. Jarvis
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- Elements and strategy for pre-hearing briefs
- Exchanging proposed exhibits
- Motions in limine
- Development and use of tutorials on background technology
- Pre-hearing conferences
- Considerations for opening arguments
- Use of live vs. written direct testimony
- Employing effective cross examination
- Expert report limitations on testimony
- Formulating closing arguments
- Post-hearing briefing and findings of fact
4:15 View from the Bench
Hon. Paul J. Luckern
Chief Administrative Law Judge
United States International Trade Commission
Hon. Theodore R. Essex
Administrative Law Judge
United States International Trade Commission
Hon. Robert K. Rogers
Administrative Law Judge
United States International Trade Commission
Expedited and Efficient Procedures in ITC Proceedings: How Judges Expect Discovery, Summary Determination Motions, and Trial to Position an Investigation for Decision
Moderator:
Tony V. Pezzano
President, ITCTLA
Partner, Cadwalader, Wickersham & Taft LLP
5:15 Conference Adjourns to Day 2
Thursday, February 25, 2010
8:15 Continental Breakfast
8:45 Chairs’ Remarks
9:00 Seeking Commission Review and Modification of ALJ Decisions
Juliana M. Cofrancesco
Partner
Howrey LLP
- Understanding the difference between ALJ orders vs. initial determinations
- Requesting interlocutory review
- Pursuing ITC modification, reversal, or remand of ALJ initial determinations
- Standards for petitions for review
- Waiver of issues not raised on review
- Single vote requirement
- De novo review
- Beloit practice
- Making effective oral arguments before the Commission
- Effective reconsideration practice
- Remands
- Petitioning for mandamus
9:30 The Year in Review — Commission and Federal Circuit Decisions in Section 337 Cases
James B. Altman
Member
Miller & Chevalier
- Recent decisions modifying the reach of the ITC
- Clarifications from the Federal Circuit
- Emerging issues and hot topics
10:00 Understanding and Maximizing the Available Remedies in Section 337 ITC Cases
Bert C. Reiser
Partner
Howrey LLP
- Assessing how a violation finding will lead to an exclusion order
- Exercising discretion on whether to exclude downstream products of named respondents
- Discretionary considerations in the issuance of cease and desist orders
- Assessing the scope of remedial orders
- Public hearings before the Commission on remedies
- Evaluating ITC public interest issues
- Requiring bond for importation and sales during presidential review
10:30 Morning Coffee Break
10:45 Seeking Enforcement of Exclusion Orders
Charles Steuart
Chief, Intellectual Property Rights and Restricted
Merchandise Branch
United States Customs and Border Protection
- Understanding Customs enforcement of exclusion orders
- Examining the role of the IPR Branch in Washington
- Understanding the role of the ports in enforcement of ITC exclusion orders
- Rulings under 19 C.F.R. Part 177
- Improved processes for transmitting documents from the ITC to Customs
- Hearing from the parties and the public
- Dealing with redesigns
11:15 Successfully Appealing Section 337 Determinations
Carter G. Phillips
Partner
Sidley Austin LLP
- Meeting the challenges raised by appeals
- Navigating the provisions for time periods and filing of notices
- Evaluating the impact of having the ITC as an appellee
- Coordinating a joint appendix
- Seeking a stay of ITC remedial orders
- Developing appellate briefs
- Engaging in effective oral argument
- Technical aspects of ITC appeals involving patents
11:45 A View from the ITC General Counsel’s Office
James M. Lyons
General Counsel
United States International Trade Commission
- Understanding the functions of the ITC GC’s Office
- Procedure in the GC’s Office for handling motions directed to the Commission while a matter is pending before the ALJ
- intervention, motions to terminate, consent orders, addition of parties, amendments to notice of institution
- Role of the GC’s Office in advising on disposition of final initial determinations
- How the GC’s Office manages the appellate process in Section 337 matters
- Intergovernmental consultation process
- Presidential review
- Enforcement matters involving CBP
12:15 Networking Lunch and Keynote Address
Special Address by:
Shara Aranoff
Chairman
International Trade Commission
“A View from the Commission Regarding the Increasing Section 337 caseload, and How the Addition of New Judges, Personnel and Case Volume are Impacting the ITC’s Section 337 Investigations”
1:30 Handling ITC Ancillary Proceedings and Parties
Alexander D. Chinoy
Attorney
Covington & Burling LLP
Thomas J. Friel, Jr.
Partner
Cooley Godward Kronish LLP
- Understanding the scope and significance of ancillary proceedings
- Enforcement of exclusion orders
- Enforcement of cease & desist orders
- Modification and rescission of remedial orders after issuance
- Advisory opinions regarding new and redesigned products
- Sanctions: when things go wrong
- Navigating third party issues
- Subpoena defenses and enforcement
- Third party submissions to the ITC
- remedy, public interest, bonding
2:15 Addressing Downstream Remedy Strategies Post-Kyocera
F. David Foster
Member
Miller & Chevalier
Susan H. Manning. Ph.D.
Senior Vice President
Compass Lexicon
- Comprehending the origin & evolution of downstream remedies
- The story behind the Kyocera decision
- Analyzing current requirements for downstream relief
- Examining recent proposals for a legislative “fix”
- Consideration of proposed rules for improved notice to third parties
- Evaluating who constitutes downstream manufacturers and distributors
- Incorporating economic welfare considerations into downstream remedy strategies
- Should EPROMs factors be reinstituted?
- Determining how to deal with infringing components that are only imported as part of a finished good
3:00 Coffee Break
3:15 Meeting the Challenges Faced by In-House Counsel in Section 337 Cases
Rachel A. Adams
Vice President, Assistant General Counsel
Lenovo
Hanifa Baporia
Assistant General Counsel
Sun Microsystems, Inc.
Hildy Bowbeer
Assistant Chief Intellectual Property Counsel
3M
Buckmaster De Wolf
Senior Counsel Litigation & Legal Policy
General Electric
Charles Krikorian
V.P., Intellectual Property & Legal Counsel
Lundbeck Inc.
Alex Rogers
Senior Vice President & Legal Counsel
Qualcomm
Moderator:
Juliana M. Cofrancesco
Partner
Howrey LLP
- Understanding the views and concerns held by in-house counsel relating to ITC cases
- Weighing costs and goals in ITC litigations
- Determining whether the ITC is the best forum for resolving IP disputes
- Considering the demands related to timing and accelerated motion practice
- Views on understanding the substance of the parties’ positions and the ITC’s determinations given APO restrictions
- Identifying issues and concerns relating to trial procedures
- How in-house counsel assess available remedies
4:30 Meeting the Challenges Raised when Assisting Foreign Companies in the ITC with Focus on Asian Companies
Ping Gu
Attorney
Unitalen Attorneys at Law, Beijing
Dr. C.K. Ko
Vice President, IP Center
LG Electronics, Inc. (Seoul, Korea)
Anthony Kahng
Senior Patent Counsel, Director
Samsung Electronics America, Inc.
Peter C. Toto
Vice President, Intellectual Property Counsel
Sony Corporation of America (New York, NY)
Prof. Andy Sun
National Chengchi University (NCCU)
(Taipei, Taiwan)
Moderator:
Thomas L. Jarvis
Past President, ITCTLA
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- ITC experience of Japanese, Korean, and Taiwanese companies is new territory for Chinese companies
- Hague Convention procedures
- Differences in advising Asian companies who do, or do not, have in-house counsel
- Providing Asian clients with the big picture and specific issues for informed decisions
- Common discovery issues
- Expedited schedules with penalties for delay
- Coordination of district court actions
- Identifying and preparing key corporate personnel for deposition and trial testimony
- Accommodating cultural and language differences
- Complying with foreign legal restrictions
- Protecting trade secrets during an ITC investigation
- Protective orders that exclude opposing parties
- Limitations on “fishing expeditions”
- Disclosing new designs
- Logistics of attending trials that exclude company representatives during confidential sessions
- Methods for keeping the clients fully advised
- Coordinating District Court and foreign proceedings in response to ITC investigations
- Initiating ITC actions on behalf of Asian companies
- Recognizing disputes amenable to resolution in the ITC
- Increasing number and success of ITC complaints by Asian companies
- Infrastructure necessary for an Asian company to advance an ITC case and satisfy its burdens of proof
- Resources necessary to compete with American companies who budget for IP litigation
- Asian objections to 337 procedures
5:15 Conference Concludes
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