Day 1 - Wednesday, June 26, 2019

7:30
Registration and Continental Breakfast
8:30
Co-Chairs’ Opening Remarks

Deanna Tanner Okun
Partner
Adduci, Mastriani & Schaumberg LLP

Jeffrey M. Telep
Partner
King & Spalding LLP (Washington, DC)

8:45

LIVE POLLING

Year in Review: Assessing and Counting Down the Top 10 ITC Developments

Paul M. Bartkowski
Partner
Adduci, Mastriani & Schaumberg LLP

Yar Chaikovsky
Partner, Litigation Department
Paul Hastings LLP (Palo Alto, CA)

Libbie A. DiMarco
Attorney
Wolf, Greenfield & Sacks, P.C. (Boston, MA)

Cast your anonymous ballot for the most important section 337 developments of the last year as we discuss and analyze their overall impact on ITC practice and procedure.  

  • Analyzing the application of the public interest exception in Apple v. Qualcomm
  • Exploring developments in the Notice of Rulemaking for CBP inter partes proceedings
  • Examining recent ITC rulings on the domestic industry prong
  • Reviewing application of IPR estoppel in 337 proceedings: Certain Hybrid Electric Vehicles and Components Thereof, Inv. No. 337-TA-1042, Magnetic Tape Cartridges and Components Thereof, Investigation 337-TA-1058
  • Addressing the implications of Amarin Pharma v ITC

10:00
Morning Coffee Break
10:30
Satisfying the Intricacies of the Domestic Industry Prongs

Samuel Brenner
Counsel
Ropes & Gray (Boston, MA)

Phil Ou
Partner, Litigation Department
Paul Hastings LLP (Palo Alto, CA)

Join us for several mock case studies evaluating the unique challenges that arise in satisfying the domestic industry requirement and best strategic maneuvers to overcome them.  

  • Analyzing the timeframe necessary to fulfill the articles requirement
  • Establishing sufficient levels of research and development costs
  • Examining the role of licensees and nexus between licensing and revenues in creation of a DI
  • Evaluating the effects of ceasing of DI

11:30
Inside Intricacies of Mediating Section 337 Cases

G. Brian Busey
Senior Counsel
Morrison & Foerster LLP (Washington, D.C.)

Harrie Samaras
President
ADR Office of Harrie Samaras (Philadelphia, PA)
(Chair, Section of Dispute Resolution American Bar Association)

Sandra A. Sellers
President
Technology Mediation Services, LLC (McLean, VA)

In this session, our expert faculty will provide insights into successful mediation strategies and best practices.   Topics of discussion include:

  • Scheduling aspect of mediation: Addressing the importance of allowing enough time and not trying to cram everything during one day
  • Best practices for preparation: Addressing the importance of being clear on issues and viable options
  • Addressing the importance of thinking from a business perspective and not regurgitate legal arguments that have already been made
  • Examining the differences from non-ITC mediations
    • Multiple parties, fast schedule, international customs implications, transnational settlement agreements and enforcement

12:30
Networking Luncheon
1:45
In-House Roundtable: Perspectives on Managing ITC Actions, Controlling Costs, and Maximizing Relationships with Outside Counsel

Keith Askoff
Vice President, Associate General Counsel
Varian Medical Systems

Daniel Foster
Senior Attorney
Litigation Group, Corporate, External, and Legal Affairs Department

Microsoft Corporation (Redmond, WA)

John A. Scott
Vice President & Legal Counsel
Qualcomm Incorporated

Peter C. Toto
Senior Vice President, IP Counsel
Sony Corporation of America

Moderator:

Michael Sandonato
Partner
Venable LLP (New York, NY)

Hear from our stellar group of in-house representatives as they share their strategies and insights on managing ITC proceedings from start to finish while simultaneously tracking litigation costs and maintaining proper relationships both within and outside of the company.  

  • Putting your best foot forward: how to impress in-house counsel and secure the project
  • Controlling litigation costs: working together with outside counsel
  • Incorporating analytics and other unique processes in firm selection and expense management
  • Understanding the internal decision process on initiating or responding to an ITC action
  • Getting your house in order: processes for organizing teams, witnesses, and required materials under the short timeframe
  • Overcoming the unique challenges of 3rd party affirmative testimony

3:00
Refreshments Break
3:15
Commissioners’ Insights: Chat with Former ITC Commissioners on the Ins and Outs of ITC Proceedings

F. Scott Kieff
Founder
Kieff Strategies LLC (Washington, D.C.) (ITC Commissioner from 2013 to 2017)

Dean Pinkert
Partner
Hughes Hubbard & Reed LLP (Washington, D.C.) (ITC Commissioner from 2007 to 2017, and ITC Vice-Chairman from 2014 to 2016)

Join our esteemed panel members as they discuss the most-challenging matters that arise in ITC litigation proceedings. Take advantage of this opportunity to receive insights into avoiding common mistakes, their fundamental philosophies, and best tools for success.

4:15
Beyond Patents: U.S. Steel and the Next Wave of Section 337 Cases

Ryan N. Herrington
Managing Director
FTI Consulting, Inc. (Dallas, TX)

Sean Trainor
Partner
O’Melveny & Myers LLP (Washington, DC)

David C. Vondle
Partner
Akin Gump Strauss Hauer & Feld LLP (Washington, D.C.)

Focusing on Inv. No. 337-TA-1002, In the Matter of Certain Carbon and Alloy Steel Products, this panel will illustrate to dos and don’ts for bringing and defending against non-traditional-IP unfair competition cases.  

  • Examining the increase in non-traditional-IP 337 proceedings and its significance
  • Exploring the asserted facts underlying each cause of action
  • Understanding the reasoning as to why the claims did not succeed
  • Lessons learned and recommendations for asserting similar claims

5:15
Conference Adjourns to Day Two

Day 2 - Thursday, June 27, 2019

8:00
Continental Breakfast
9:00
Co-Chairs’ Remarks and Recap of Day One
9:15
Public Interest Delegation Then and Now: Expectations vs. Reality

Bryan S. Conley
Counsel
Wolf, Greenfield & Sacks, P.C. (Boston, MA)

Drew D. Mooney
Managing Director
FTI Consulting, Inc. (Dallas, TX)

Karin Norton
Director and Senior Counsel
Samsung Electronics America Inc.

  • Exploring the findings and significance of public interest factors as per the Commission’s 2010 initiation of the public interest exception
  • Analyzing the extent to which public interest decisions align with the Commission’s original rulemaking goals
  • Comparing and contrasting facts that have historically satisfied the public interest prongs
  • Understanding impacts of public interest delegation on scope of discovery requirements
  • Managing costs for complainant, respondent, and third parties

10:15
Morning Coffee Break
10:30
Understanding the Internal Procedures and Decision-Making Process at the Office of Unfair Import Investigations

Matthew Bathon
Of Counsel
Steptoe & Johnson LLP (Washington, DC)
(Former Senior Investigative Attorney at the ITC Office of Unfair Import Investigations)

Lisa M. Kattan
Partner, Section Chair – ITC Patent Litigation
Baker Botts (Washington, D.C.)

  • Deciding when (and who) participates in an investigation
  • Maximizing the benefits of OUII pre-filing and pre-institution review
  • Utilizing new techniques for streamlining cases — reducing claims and prior art references
  • Joining 100-day proceedings
  • Analyzing public interest concerns

11:15
Gaining an Inside Perspective into Exclusion Order Enforcement

Matthew Satchwell
Partner, Co-Chair, Chicago Intellectual Property Practice
DLA Piper LLP (Chicago, IL)

Grace Wang
In-House Counsel
Hytera America, Inc. (Miramar, FL)

Jessica Wu
Attorney Advisor, Intellectual Property Rights Branch Regulations and Rulings, Office of Trade
U.S. Customs and Border Protection (Washington, DC)

  • Understanding how to best prepare for enforcement of an exclusion order
  • Mastering the ins and outs of enforcement proceedings and meeting CBP’s expectations
  • Enforcing partial exclusion orders and rectifying when products are improperly seized
  • Status of the proposed Notice of Rulemaking for the use of inter partes proceedings to assess design-arounds
  • Adjusting company practices and minimizing disruptions caused by supplier-related exclusion orders
  • Evaluating the impact of NAFTA 2.0 on imported goods

12:15
Networking Luncheon
1:30
Investigating the Interplay Between ITC and PTAB

Cono A. Carrano
Partner
Akin Gump Strauss Hauer & Feld LLP (Washington, D.C.)

Bryan Moore
Administrative Patent Judge Patent Trial and Appeals Board
U.S. Patent and Trademark Office (Alexandria, VA)

Nimit Patel
Senior Director, IP Counsel
Sony Corporation of America (Paramus, NJ)

Kevin J. Post
Partner
Ropes & Gray LLP (New York)

James A. Worth
Administrative Patent Judge Patent Trial and Appeal Board
U.S. Patent and Trademark Office (Alexandria, VA)

This interactive panel will cover the nuts and bolts of successfully conducting simultaneous inter partes reviews and section 337 investigations and will provide you with best practices and strategies to successfully navigate these actions. Our mock co-pending proceedings will tackle such conundrums as:  

  • Evaluating best timing for IPR filings with a co-pending section 337 case
  • Analyzing when stays might apply to ITC proceedings and potential due process concerns
    • Maximizing benefits of filing IPRs without a stay
  • Using concessions from one venue at the other
  • Understanding what estoppel from an IPR applies at the ITC

3:00
Afternoon Networking Break
3:15

Mock Hearing

Section 337 Exclusion Orders for New Technology: Examining Public Interest Concerns Potentially Arising from Exclusion Orders – Case Study on Biologics

Michael K. Milani
Managing Director
Ocean Tomo (Chicago, IL)

Tony V. Pezzano
Partner
DLA Piper LLP (New York, NY)

Jeffrey M. Telep
Partner
King & Spalding LLP (Washington, DC)

Cleve B. Tyler
Managing Director
Berkeley Research Group (Washington, DC)

CASE STUDY ON BIOLOGICS  

  • Exploring the unique public interest issues that arise for different technologies, such as 5G mobile phone technology and biologics products
  • Understanding how the Commission has been adapting to new technologies through an increase in the issuance of tailored remedies to address unique public interest concerns
  • Examining whether the same public interest issues that could arise in cases involving biologics could be raised in cases involving biosimilars

4:30
Conference Adjourns