Day 1 - Wednesday, February 22, 2017

In-Depth Case Review of Domestic Industry and Induced Infringement, and the Future of Section 337 Enforcement

Feb 22, 2017 7:45am – 9:30am

Speakers

Erin Gibson
Partner
DLA Piper (San Diego, CA)

Juliana Cofrancesco
Attorney Advisor
U.S. International Trade Commission

8:30
Continental Breakfast & Registration Begins
9:30
Introductory Remarks from Forum Co-Chairs
9:35
ITC Chairman’s Keynote Address
10:00
Dialogue with CBP Customs Center of Excellence and Expertise (CEE) on Enforcement of Exclusion Orders
11:15
Networking Break
11:30
Interactive Discussion: Can Recent Rule Changes Facilitate Efficient Resolution of Section 337 cases?
12:15
The Latest on How to Establish Domestic Industry: What to Change in Your Arguments Based on Current Standards and Recent Cases
1:15
Networking Lunch
2:30
Perspectives from the ITC Bench
3:45
Networking Break
4:00
How Section 101 is Successfully Being Argued at the ITC and How the Commission is Treating Subject-Matter Eligibility
5:00
What the Increase in Medical Device and Pharma Cases Being Lodged Means for the Future of the ITC Litigation Landscape
6:00
Cocktail Reception

Day 2 - Thursday, February 23, 2017

8:00
Continental Breakfast
8:25
Co-Chairs’ Opening Remarks
8:30
Office of Unfair Import Investigations (OUII) Q&A Session
9:30
In-House Counsel Roundtable on Arguing Standard Essential Patents (SEPs) and Other Issues
10:30
Networking Break
10:45
Leading Federal Circuit Cases of 2016 and What They Mean for the Future of ITC Litigation
11:30
Upgrading your Global Patent Litigation Strategy: How Practitioners Are Successfully Incorporating Section 337 Filings as Part of a Wider Strategy for Global Patent Litigation
12:30
Networking Lunch
1:45
Q&A Session with the Office of the General Counsel (OGC)
2:45
Networking Break
3:00
How to Resolve the Challenging Interplay Between Inter Partes Reviews (IPRs) and ITC Litigation
4:00
What US Steel and Other Decisions Reveal about the Landscape for Non-Patent Litigation at the ITC
5:00
Co-Chairs’ Closing Remarks and Conference Ends

Day 1 - Wednesday, February 22, 2017

8:30
Continental Breakfast & Registration Begins
9:30
Introductory Remarks from Forum Co-Chairs

Vaishali Udupa
Vice President and Associate General Counsel, IP Litigation and Policy
Hewlett-Packard Enterprise

Stefani Shanberg
Partner
Wilson Sonsini Goodrich & Rosati
President Elect, International Trade Commission Trial Lawyers Association (ITCTLA)

9:35
ITC Chairman’s Keynote Address

Rhonda Schmidtlein
Chairman
US International Trade Commission (Washington, DC)

10:00
Dialogue with CBP Customs Center of Excellence and Expertise (CEE) on Enforcement of Exclusion Orders

Dax Terrill
Senior Attorney-Advisor, Intellectual Property Rights Branch Office of International Trade
U.S. Customs and Border Protection (Washington, DC)

Juan Porras
Assistant Center Director, Validation & Compliance, Machinery CEE
US Customs & Border Protection (Laredo, TX)

Matt Barkley
Worldwide IP & Brand Protection Program Manager
HP Inc. (Portland, OR)

Moderator:

Michael Sandonato
Partner
Fitzpatrick, Cella, Harper & Scinto LLP (New York, NY)

  • Practicalities of enforcement of Exclusion Orders and what CBP expects from companies
  •  Foundation of Centers of Excellence and Expertise (CEEs) and how this changes the parameters for enforcement
    • How to work with the CEEs in order to ensure best enforcement of Exclusion Orders
  •  What CBP can and cannot do with respect of enforcement
  •  New CBP Rule on Redesigned Products/How to Handle Importer
  •  Getting a Ruling from Customs allowing CBP to create an inter partes proceeding
  •  In-House Counsel experience with working alongside with CBP and the steps companies can take before, during and after an ITC trial to be ready for GEO enforcement with CBP

11:15
Networking Break
11:30
Interactive Discussion: Can Recent Rule Changes Facilitate Efficient Resolution of Section 337 cases?

Stefani Shanberg
Partner
Wilson Sonsini Goodrich & Rosati
President Elect, International Trade Commission Trial Lawyers Association (ITCTLA)

Kevin Post
Partner
Ropes & Gray

Joe Rafetto
Partner
Hogan Lovells

Patrick Weston
Senior Litigation Counsel
Google Inc. (Mountain View, CA)

  • Delegation of Public Interest: To what extent has this been a success and implications for settlements?
  • 100-day Pilot Program: Can early rulings on case-dispositive issues such as Economic DI Standing, the Commission declining SEPs, Section 101 subject-matter eligibility and licensing limit costly litigation?
  • Pending rule changes of advisory opinions of exclusion orders

12:15
The Latest on How to Establish Domestic Industry: What to Change in Your Arguments Based on Current Standards and Recent Cases

Juliana Cofrancesco
Attorney Advisor
U.S. International Trade Commission

Louis Mastriani
Partner
Adduci Mastriani & Schaumberg LLP (Washington, DC)

Ryan Herrington
Managing Director
FTI Consulting (Dallas, TX)

  • Case law developments
  • Establishing DI using Quantitative Analysis: Under Lelo, what benchmarks can be employed in order to demonstrate quantitative significance?
  • What effect does the introduction of the 100-Day Pilot Program have on establishing the economic prong for DI?

1:15
Networking Lunch
2:30
Perspectives from the ITC Bench

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

The Hon. David P. Shaw
Administrative Law Judge
U.S. International Trade Commission

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

Hon. Sandra (Dee) Lord
Administrative Law Judge
US International Trade Commission (Washington, DC)

Moderator:

Sean C. Cunningham
Partner
DLA Piper LLP (San Diego, CA)

3:45
Networking Break
4:00
How Section 101 is Successfully Being Argued at the ITC and How the Commission is Treating Subject-Matter Eligibility

James Altman
Member
Foster, Murphy, Altman & Nickel, PC (Washington, DC)

Michael Rader
Shareholder, Litigation at Wolf, Greenfield & Sacks, P.C.
Litigation at Wolf, Greenfield & Sacks, P.C.

Stuart Weiser
Counsel to Commissioner Irving Williamson
US International Trade Commission (Washington, DC)

  • Arguing ineligible subject-matter post-Alice: What recent decisions and current pending cases reveal
  • Comparison of how ITC treats this issue vs. District Courts
  • Does the Commission’s expansion of the 100-day Pilot Program to early determinations of patent-eligible subject matter (in the Portable Devices Investigation No. 994) signal a sea change into their approach to Section 101?
  • The appropriateness of handling Section 101 through summary determination motions
  • How to successfully navigate procedural issues with running a Section 101 defense

5:00
What the Increase in Medical Device and Pharma Cases Being Lodged Means for the Future of the ITC Litigation Landscape

Tony V. Pezzano
Partner
Hogan Lovells LLP (New York, NY)

Drew Mooney
Managing Director
FTI Consulting (Dallas, TX)

  • Now 25% of docket: What’s behind the increase in the percentage?
  • What is the future for Biosimilar Litigation at the ITC?
  • How to navigate potential issues and challenges to establishing a domestic industry and whether relief would harm the public interest
  • What are the public interest issues relating to bio and life sciences cases?

6:00
Cocktail Reception

Sponsored by:

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Day 2 - Thursday, February 23, 2017

8:00
Continental Breakfast
8:25
Co-Chairs’ Opening Remarks

Vaishali Udupa
Vice President and Associate General Counsel, IP Litigation and Policy
Hewlett-Packard Enterprise

Stefani Shanberg
Partner
Wilson Sonsini Goodrich & Rosati
President Elect, International Trade Commission Trial Lawyers Association (ITCTLA)

8:30
Office of Unfair Import Investigations (OUII) Q&A Session

Margaret Macdonald
Director
Office of Unfair Import Investigations

U.S. International Trade Commission

Jeffrey Hsu
Supervisory Attorney
Office of Unfair Import Investigations

U.S. International Trade Commission

Moderator:

Marcia Sundeen
Partner
Goodwin Procter LLP (Washington, DC)

  • What types of issues are appropriate for the Early Disposition program?
  • What you need to know about the Redesigned Products program (process, procedures and suggestions)
  • What is OUII’s role in discovery disputes?
  • What is OUII’s role in assessing the Public Interest issues raised by a complaint?
  • What types of trends, if any, are there in the types of products at issue?
  • What are some of the most common issues involving defaults?
  • Are there any recent trends in the use of dispositive motions?

9:30
In-House Counsel Roundtable on Arguing Standard Essential Patents (SEPs) and Other Issues

Karin Norton
Director and Senior Counsel
Samsung Electronics America

Peter Toto
Senior Vice President, IP Counsel
Sony Corporation of America (Park Ridge, NJ)

John Kuo
Senior Vice President and General Counsel
Varian Medical Systems (Palo Alto, CA)

Vaishali Udupa
Vice President and Associate General Counsel, IP Litigation and Policy
Hewlett-Packard Enterprise

John Scott
Vice President, Legal Counsel
Qualcomm Inc. (San Diego, CA)

Moderator:

Greg Corbett
Shareholder, Litigation
Wolf Greenfield & Sacks P.C. (Boston, MA)

  • Perspectives on process and timing of ITC filings with proceedings in the District Courts
  • How to manage outside counsel and performing cost benefit analysis
  • Working with corporate colleagues to prepare for deposition and testimonies
  • Issues with Discovery Timelines: Overcoming challenges collecting, reviewing and producing for multinational companies
  • Dealing with short timelines and confidential business information redactions
  • In-House perspectives on arguing SEPs

10:30
Networking Break
10:45
Leading Federal Circuit Cases of 2016 and What They Mean for the Future of ITC Litigation

Deanna Tanner Okun
Partner
Adduci, Mastriani & Schaumberg LLP

Shara Aranoff
Of Counsel
Covington & Burling LLP

  • Discussion of restricted sales and foreign sales in the context of exhausting patent rights in light of Lexmark v Impression
  • Rejection of petition for rehearing Clear Correct: Now that importation of data confirmed as not in the jurisdiction of the ITC, what are the implications for exclusion order concerning electronic imports?
  • Samy Heavy Industry v ITC: What does the Federal Circuit’s affirmation of the Exclusion Order mean for the future of the ITC as a forum for trade secrets?

11:30
Upgrading your Global Patent Litigation Strategy: How Practitioners Are Successfully Incorporating Section 337 Filings as Part of a Wider Strategy for Global Patent Litigation

Martin Köhler
Partner
Hoyng Rokh Monegier (Düsseldorf, Germany)

David Killough
Assistant General Counsel, Patent Litigation
Microsoft

Thomas Jarvis
Partner & Chair, ITC Practice
Winston Strawn LLP (Washington, DC)

Chris Thornham
Partner
Taylor Wessing LLP (London, UK)

  • Assessing your ITC filings in the context of your Global Litigation strategy
  • Implications for the EU Unified Patent Court post-Brexit
  • Opportunities to invalidate UK counterparts (a US patent where the claims are substantially similar to a UK patent)
  • Chinese anti-trust claims to offset US patent infringement claims
  • In Germany, what are the advantages to using a bifurcated invalidity and infringement case?

12:30
Networking Lunch
1:45
Q&A Session with the Office of the General Counsel (OGC)

Dominic Bianchi
General Counsel
U.S. International Trade Commission (Washington, DC)

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

Hear directly from the OGC about their expected considerations at the Commission review level of ITC litigation and how to work effectively with them.

2:45
Networking Break

Special announcements to follow.

3:00
How to Resolve the Challenging Interplay Between Inter Partes Reviews (IPRs) and ITC Litigation

Brian Busey
Partner
Morrison & Foerster LLP

Steven Purdy
Counsel, Corporate Litigation
IBM Corp.

Matthew Rizzolo
Counsel
Ropes & Gray LLP (Washington, DC)

Buddy Toliver
Senior Corporate Counsel
Cisco Systems (Lawrenceville, GA)

  • Comparison of treatment of IPRs by ITC and District Courts
  • Factors the ITC weighs in considering stays, including timing of parallel IPR proceedings vis-à-vis ITC proceedings
  • Are there benefits of filing an IPR in light of ITC proceedings if a stay is unlikely?
  • Does the Commission’s suspension of part of an exclusion order based on a PTAB ruling in Three-Dimensional Cinema Systems, Inv. 337-TA-939 (August 23, 2016) signal any change in ITC practice?
  • Should the ITC give greater weight to parallel IPRs?
  • Issues in the settlement of concurrent IPR and ITC proceedings

4:00
What US Steel and Other Decisions Reveal about the Landscape for Non-Patent Litigation at the ITC

David Hickerson
Partner
Foley & Lardner LLP (Washington, DC)

Alan Price
Partner
Wiley Rein LLP (Washington, DC)

  • How broad are the “unfair acts” and “unfair methods of competition” predicates for ITC jurisdiction?
  • Background to sparing use of ITC for antitrust claims
  • US Steel: what does the ALJ’s decision dismissing the anti-trust claims mean for the future of non-Patent litigation, and analysis of the ruling and likelihood of success on appeal
  • What are the repercussions for ITC jurisdiction if the certiorari petition in Sino Legend is granted and overturns the determination that a Section 337 violation can be based on acts of trade secret misappropriation that occur overseas
  •  Trade Secrets Act: will there be an uptick in section 337 filings to accompany TSA litigation?
  • Other non-statutory “unfair acts” claims: claims based on the Lanham Act, False Designation of Origin, Customs Circumvention, and counterfeiting

5:00
Co-Chairs’ Closing Remarks and Conference Ends

In-Depth Case Review of Domestic Industry and Induced Infringement, and the Future of Section 337 Enforcement

Feb 22, 2017 7:45am – 9:30am

Erin Gibson
Partner
DLA Piper (San Diego, CA)

Juliana Cofrancesco
Attorney Advisor
U.S. International Trade Commission

What is it about?

7:15 A.M. Registration opens for the Early Riser Pre-Conference Working Group 7:45 A.M. In-Depth Case Review of Domestic Industry and Induced Infringement, and the Future of Section 337 Enforcement   This specially designed workshop has been uniquely tailored to bring delegates entirely up-to-speed on the workings of the ITC and will provide an overview of all the key developments over the past year. Topics to be covered include:  
  •  Year-in-Review overview of what is going on at the ITC
  •  Practical Impact of the Latest Key Cases, including:
    •  Analysis of Apple/Samsung design patent case, and other SCOTUS IP rulings and their effect on the ITC
    •  Supreme Court Challenge to ITC’s Jurisdiction in DBN (formerly DeLorme) v. US International Trade Commission challenging the holding of Suprema that USITC can block importation based upon inducement
  •  Guidance on Current and Proposed Rules
  •  How these Trends will Impact your Litigation Strategies both at the ITC and District Courts
    9:30 A.M. Pre-Conference Workshop ends