ITC Litigation & Enforcement

Opening Remarks from the Co-Chairs

Veronica Ascarrunz
Partner
Perkins Coie LLP
Immediate Past President, ITC TLA

Eric S. Namrow
Partner
Morgan Lewis LLP
President, ITC TLA

Year in Review: Analyzing Notable Section 337 Developments and Assessing Impacts on ITC Practice and Procedure

Helena Kiepura
Partner and Vice Chair, International Trade Commission Practice
DLA Piper LLP

Veronica Ascarrunz
Partner
Perkins Coie LLP
Immediate Past President, ITC TLA

• Review notable investigations and potentially consequential ITC decisions of the past 12 months
• Explore forecasts for 2023-24 and changes at the Federal Circuit
• Identify new industries turning to the ITC for relief—including pharma, medical devices, lighting and semiconductors
• Examine numbers and percentages of cases in which an investigation was instituted, settled, resulted in exclusion orders, appealed, and reversed on appeal

ALJ Fireside Chat

Honorable Bryan F. Moore
Administrative Law Judge
US International Trade Commission

Moderator:

Scott P. McBride
Attorney at Law/Shareholder
McAndrews Held & Malloy Ltd. (Chicago, IL)

Networking Refreshment Break

Evaluating the Unique Challenges of Satisfying Domestic Industry Requirements

Evan Langdon
Partner, Chair ITC Practice
Fabricant LLP

Drew D. Mooney
Senior Managing Director
FTI Consulting

• Dissect the latest domestic industry changes over recent years, related case law and important decisions rendered
• Insight into Commission’s opinions and discussion around the “mere importer” issue
• Assess the increasing role of the economic prong of domestic industry
• Obtain insight into how much investment is “significant” and “substantial” under the statute
• The significance of re-designs when filing at the ITC

Networking Luncheon

Inside Perspectives on Exclusion Order Enforcement: Developing Strategies to Master Section 177 Process

Dax Terrill
Chief, Exclusion Order Enforcement Branch, Regulations and Rulings - Office of Trade
U.S. Customs and Border Protection

• Understand how to best prepare for enforcement of an exclusion order
• Master the requirements of enforcement proceedings to meet CBP’s expectations
• Analyze recent cases
• What to do after initial determination

IN-HOUSE ROUNDTABLE

Strategies and Insight on Effectively Managing ITC Proceedings and Considerations for Outside Counsel

Matthew Bathon
Principal Legal Counsel, Legal Management, Washington IP Office
Samsung Electronics

Mike Schwartz
Senior Vice President - IP Litigation
Adeia

Moderator:

Wilhelm L. Rao
Attorney at Law/Shareholder
McAndrews, Held & Malloy Ltd. (Chicago, IL)

In-house representatives share strategies and insight on managing ITC proceedings from start to finish:

• Learn how to best manage relationships with external counsel to secure the project
• Track litigation costs and working with outside counsel to control the costs of an ITC proceeding
• Uncover successful strategies to defend a 337 action
• Learn how to work productively within the timeframe of a 337 investigation to optimize your outcome
• Understand the process on initiating of responding to an ITC action
• Processes for organizing teams, witnesses and required materials under the short time frame

Networking Refreshment Break

Assessing the Significance of Increasing Attention to Public Interest Considerations in 337 Investigations

Christina A. Ondrick
Partner
McKool Smith LLP

Bryan Conley
Shareholder
Wolf Greenfield & Sacks PC

Rachel Leos
Senior Director
FTI Consulting

• Gain insights into recent considerations of public interest in semi-conductor cases given supply chain issues
• Do public interest considerations for trade secret violation differ from those of traditional 337 patent infringement investigations?
• Compare and contrast facts that have historically satisfied the public interest prongs
• Strategies to limit or reduce costs
• How have remedies been tailored to public interest? How it’s been used to tailor exclusion orders

Cocktail Reception

Sponsored by

Opening Remarks from the Co-Chairs

Veronica Ascarrunz
Partner
Perkins Coie LLP
Immediate Past President, ITC TLA

Eric S. Namrow
Partner
Morgan Lewis LLP
President, ITC TLA

Parallel Proceedings with the ITC and PTAB and New Guidance for Discretionary Denials

Megan F. Raymond
Partner
Groombridge, Wu, Baughman & Stone LLP

Honorable James A. Worth
Administrative Patent Judge, PTAB
US Patent and Trademark Office  

Michael R. Franzinger
Partner
Sidley Austin LLP

• Leveraging parallel records before the agency, motions to stay, pitfalls to avoid
• Discuss recent case law and developments on discretionary denials
• Examine recent Federal Circuit decisions to affirm ITC decisions
• Assess guidelines to work within the timelines of an ITC proceeding alongside a concurrent PTAB action
• Probe the interplay between ITC and PTAB and how they are intersecting at an increasing pace
• Implications of changes to Fintiv guidance

Networking Refreshment Break

Insight into the ITCs Approach to Standard Essential Patents

Blair M. Jacobs
Principal
McKool Smith LLP (Washington, DC)

Michael Connelly
President
WIT Legal

• New developments in SEPs at the ITC and globally
• Analyze recent SEP case developments and understanding recent policy statement
• Evaluate when the ITC might order the exclusion of articles infringing SEPs, and the types of restrictions on remedy that could stem from F/RAND commitments
• Explore prospects for future exclusion orders on standard-essential patents (SEPs)

Networking Luncheon

Assessing the Trend of Non-Practicing Entities (NPEs) at the ITC: What ITC Practitioners Need to Know

Timothy Carroll
Partner
Venable LLP

Gregory F. Corbett
Chair, Litigation Practice Group
Wolf, Greenfield & Sacks, P.C.

Jonathan Stroud
General Counsel
Unified Patents

Moderator:

Matthew J. Rizzolo
Partner
Ropes & Gray LLP (Washington, DC)

• Addressing the trend of NPEs relying on their US licensees to satisfy the domestic industry requirements
• Exploring new ITC 337 strategies used by NPEs in recent filings
• Addressing novel questions and consequences surrounding NPE litigation funding in Section 337 investigations
• Proposed legislation addressing NPEs at the ITC
• Assessing how to meet the DI requirements from the perspective of the NPE

Networking Refreshment Break

Gauging the Importance and Use of the NEXT Advocates Program for Less Experienced Attorneys

Veronica Ascarrunz
Partner
Perkins Coie LLP
Immediate Past President, ITC TLA

Honorable Monica Bhattacharyya
Administrative Law Judge
US International Trade Commission

Michael A. Morales
Associate
Ropes & Gray LLP

Moderator:

Matthew J. Rizzolo
Partner
Ropes & Gray LLP (Washington, DC)

• How has the NEXT Advocates program been used and what ground rules have been allowed?
• Experiences and tips from attorneys who have argued at the ITC though the NEXT Advocates program
• How does this program differ from the USPTO LEAP program?

Closing Remarks and Conference Concludes