Practitioners' Think Tank on ITC Litigation and Enforcement

Opening Remarks from the Conference Co-Chairs

Veronica Ascarrunz
Of Counsel
Morrison & Foerster LLP (Washington, DC) / President-Elect ITC TLA (Washington, DC)

Mareesa A. Frederick
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC)
Former Member Executive Committee, ITC TLA

ITC State of the Union: Predictions for the Future

With a return to normalcy, new U.S. administration, new ALJ, and changes at the Federal Circuit we will explore what changes to expect at the ITC.

ITC Year in Review: Assess the Top 10 ITC Developments for 2021 and Forecasts for 2022

Philip Ou
Partner, Litigation Department
Paul Hastings LLP

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

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

Mike Schwartz
Senior Vice President, IP Litigation
Xperi (San Jose, CA)

Moderator:

Mareesa A. Frederick
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC)
Former Member Executive Committee, ITC TLA

Analyze the most important section 337 developments of the past year and impact on ITC practice and procedure. Then, cast your anonymous ballot for what you view as the most important.

• Review notable investigations and decisions from 2020
• Examine numbers and percentages of cases in which an investigation was instituted, settled, resulted in exclusion orders, appealed, and reversed on appeal
• Identify new industries turning to the ITC for relief—including pharma, medical devices, lighting and semiconductors
• Analyze frequency of disputes over jurisdiction in industries primarily regulated through other administrative bodies e.g., FDA, PTO
• Understand the differences between ITC and district court proceedings; ensure strict adherence with ITC procedures and develop effective trial strategies considering each judge’s courtroom practice
• Analyze the judges’ individual rules on filing, motion practice, discovery, settlement, evidentiary hearings, etc.
• Examine the uptick in ALJ scrutiny of case filings and party counsel behavior, as well increased issuance of sanctions orders in the past year
• Learn about recent changes to Secretary’s Office rules relating to administrative protective orders and pre-institution submissions
• Examine changes to the ITC selection process for ALJ’s and how this may open opportunities

Keynote Address

Honorable Rhonda K. Schmidtlein
Commissioner
US International Trade Commission (Washington, DC)

Break

Part I

Evaluating the Implications of Trade Secret Jurisprudence at the ITC

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

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

Pallavi Seth
Principal
The Brattle Group (Washington, DC)

James Pooley
Trade Secrets Litigator and Expert Witness
James Pooley PLC (Menlo Park, CA)

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

Moderator:

Mareesa A. Frederick
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC)
Former Member Executive Committee, ITC TLA

• Explore growing trends in and implications of trade secret investigations at the ITC under 337
• Understand the significance of LG Chem case for future trade secret matters at the ITC
• Examine the consequences of spoliation of evidence in this case
• Assess the LG Energy Solutions and SK Innovation settlement
• Compare trade secret findings and implications of the ITC decision in the Botox (Botulinum Toxin Products) (Inv. 1145)
• Understand how to analyze injury in emerging industries

1:1 Networking

Make new connections, face-to-face through a series of random 1:1 meet-ups. Expand your network and exchange contact details.

Lunch Break

Part II

Examining Novel Public Interest Considerations in 337 Investigations

Karin J. Norton
Vice President and Senior Counsel
Samsung Electronics America Inc. (Ridgefield Park, NJ)

Matthew Bathon
Partner
Steptoe & Johnson LLP (Washington, DC)

Erin P. Gibson
Partner
DLA Piper LLP (San Diego, CA)

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

Moderator:

Veronica Ascarrunz
Of Counsel
Morrison & Foerster LLP (Washington, DC) / President-Elect ITC TLA (Washington, DC)

• Assess the significance of public interest considerations by the Commission in LG Chem
• Do public interest considerations for trade secret violation differ from those of traditional 337 patent infringement investigations?
• Comparing and contrasting facts that have historically satisfied the public interest prongs

Exploring the Exercise of Discretionary Denial and Other New Developments in Parallel Proceedings at the ITC and PTAB

Hon. James A. Worth
Administrative Patent Judge
PTAB, U.S. Patent and Trademark Office (Alexandria, VA)

James L. Davis
Partner
Ropes & Gray LLP (Silicon Valley, CA)

• Explore the recent development in which the ITC suspended enforcement pending resolution of Inter Partes Review (case #)
• Discuss recent case law and developments on discretionary denials
• Examine the Federal Circuit’s decision to affirm the ITC’s decision
• 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

Break

How to Satisfy Domestic Industry Requirements: Addressing New Intricacies

Coleman Bazelon
Principal
The Brattle Group (Washington, DC)

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

• Evaluate the unique challenges that arise in satisfying domestic industry requirements
• Obtain insight into how much investment is considered to be “significant” and “substantial” under the statute
• Explore the latest domestic industry case law and related decisions
• Examine status of proposed legislation impacting domestic industry test

Investigating New NPE 337 Tactics: What Every ITC Practitioner Needs to Know in 2021

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

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

• Explore new ITC 337 strategies used by NPEs in recent filings
• Assess satisfaction of domestic industry requirements in recent NPE cases
• Address novel questions surrounding NPE litigation funding
• Examine the consequences of litigation funding with NPEs

Closing Remarks from the Co-Chairs and Conference Adjourns to Day 2

Opening Remarks from the Conference Co-Chairs

Veronica Ascarrunz
Of Counsel
Morrison & Foerster LLP (Washington, DC) / President-Elect ITC TLA (Washington, DC)

Mareesa A. Frederick
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC)
Former Member Executive Committee, ITC TLA

Perspectives from In-House Counsel: Insights and Best Practices to Effectively Manage ITC Actions

Gemma Suh
Managing Counsel, Patent Litigation
Intel Corporation (Santa Clara, CA)

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

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

Rodger Sadler
Senior Counsel, Legal Department
Mercedes-Benz Research & Development North America, Inc, (New York, NY)

Moderator:

Chad Peterman
Partner, Litigation Department
Paul Hastings LLP (New York, NY)

• Learn how to best manage relationships with external counsel to secure the project
• Work with outside counsel to control the significant 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

Keynote Address

Honorable Timothy C. Stanceu
Senior Judge
US Court of International Trade

Understand the role of the Court of International Trade in patent disputes and the relationship between the ITC, CIT and US Customs and Border Protection.

Break

Developing Winning Strategies for Successful Exclusion Order Enforcement

Sarah E. Hamblin
Attorney Advisor, Exclusion Order Enforcement Branch, Regulations and Rulings, Office of Trade
U.S. Customs and Border Protection

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

• Hear selected highlights about the new branch now dedicated to exclusion order enforcement
• Understand how to best prepare for enforcement of an exclusion order
• Master the requirements of enforcement proceedings to meet CBP’s expectations
• Identify selected best practices for the 19 C.F.R Part 177 rulings process to meet CBP’s expectations
• Analyze the increasing issuance of general exclusion orders (GEOs)
• Explore recent cases

1:1 Networking

Make new connections, face-to-face through a series of random 1:1 meet-ups. Expand your network and exchange contact details.

Lunch Break

FIRESIDE CHAT

Interview with ALJ: Insights on Procedures and Effective Trial Strategies

Honorable Mary Joan McNamara
Administrative Law Judge
U.S. International Trade Commission (Washington, DC)

Deanna Tanner Okun
Managing Partner
Adduci, Mastriani & Schaumberg LLP (Washington, DC)
Former ITC Commissioner and Chairman

Join ITC ALJ McNamara for insight from the bench, the “ins and outs” of 337 Practice, differences between ITC and Federal District Court and more.

Winning Expert Strategies at the ITC

Michael Connelly
Vice President, Operations
WIT Legal LLC (New York, NY)

Daniel A. Tishman
Principal
Fish & Richardson P.C. (Washington, DC)

• Does experience matter?
• Diversity in the hearing
• Early Case Management: Short timelines and the importance of immediately identifying experts
• Expert testimony and the Ground Rules issued by the ALJ
• The Daubert Standard and the ITC
• Preparing experts for live direct and cross-examination testimony

Closing Remarks and Conference Concludes