ITC Litigation & Enforcement

Opening Remarks from the Conference Co-Chairs

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

Eric S. Namrow
Partner
Morgan Lewis LLP (Washington, DC)
President-Elect ITC TLA

Keynote Address

Honorable Rhonda K. Schmidtlein
Commissioner
US International Trade Commission

Year in Review: Notable ITC Developments and What to Expect for the Future

Kathryn L. Clune
Partner
Crowell & Moring LLP (Washington, DC)

Kecia Reynolds
Partner
Paul Hastings LLP (Washington, DC)

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

Join us as we assess the most important section 337 developments of the past year and their impact on ITC practice and procedure. We will also explore forecasts for 2023 and changes at the Federal Circuit.

• Reviewing notable investigations and potentially consequential ITC decisions of the past 12 months
• Exploring the latest Domestic Industry decisions and the increasing difficulty of proving the economic prong – has there been a shift in analysis and is there a different threshold than in the past?
• Public Interest considerations and their increasing import; Inv 337-TA-1204 Certain Chemical Mechanical Planarization Slurries and Components
• Analyzing recent ITC rulings on Standard Essential Patents (SEP)
• Examining simultaneous IPR’s over the year and assessing if there will be a shift in the interplay between the ITC and PTAB
• Highlighting the Interim Initial Determination (ID) pilot program to allow ALJ’s a mechanism to initiate expedited proceedings

Networking Refreshment Break

Evaluating Trends in Filings and Dispositions of 337 Proceedings

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

Libbie A. DiMarco
Shareholder
Wolf, Greenfield & Sacks, P.C.

• Gather intelligence on key decisions rendered and precedents set in the past year in order to discern likelihood of success of your own case
• Assess actions in which no remedy was granted to the complainant and no reasons given by the Commission
• Analyze the Commission’s increased scrutiny towards complaints by deciding not to institute or demand amendments prior to instituting an investigation

Insights into Recent Domestic Industry Decisions and the Increasing Role of the Economic Prong Requirement

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

Christina Ondrick
Partner
McKool, Smith (Washington, DC)

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

• Evaluate the unique challenges that arise in satisfying domestic industry requirements
• Dissect the latest domestic industry related case law and important decisions rendered
• Assessing the increasing role of the economic prong of domestic industry
• Obtain insight into how much investment is considered to be “significant” and “substantial” under the statute
• Insight into the Commission’s opinion on Certain Percussive Massage Devices, Inv. No. 337-TA-1206, Hyperice Inc. and discussion around the “mere importer” issue
• Examine status of proposed legislation impacting domestic industry test

Networking Luncheon

In-House Round Table: Insights and Best Practices to Effectively Manage ITC Actions and Maintain Relationships with Outside Counsel

Panel:

David T. Beck
Chief Intellectual Property Counsel/Vice President
VIAVI Solutions Inc./Viavi Solutions Licensing LLC

Mike Schwartz
Senior Vice President, IP Litigation
Adeia (an Xperi Company)

Rodger Sadler
Senior Counsel, Legal Department
Mercedes-Benz Research & Development North America, Inc.

Craig Murray
Senior IP Litigation Counsel
Hewlett Packard Enterprise

Scott Jacobson
General Counsel and Chief Intellectual Property Counsel
RAB Lighting

Moderator:

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

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
• Tracking 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

Navigating New Developments in Parallel Proceedings with the ITC and PTAB

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

Matthew R. Shapiro
Associate, Intellectual Property Litigation
Ropes & Gray 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

Exploring New Focus on Public Interest Considerations in 337 Investigations

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

• Assess the significance of public interest considerations by the Commission
• 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
• Public Interest considerations and their increasing import; Inv 337-TA-1204 Certain Chemical Mechanical Planarization Slurries and Components

Closing Remarks and Conference Adjourns to Day 2

Opening Remarks from the Co-Chairs

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

Eric S. Namrow
Partner
Morgan Lewis LLP (Washington, DC)
President-Elect ITC TLA

Insights on Exclusion Order Enforcement: Developing Strategies to Master the Requirements of Enforcement Proceedings

Flynn K. Madden
Attorney-Advisor, Exclusion Order Enforcement Branch
Regulations and Rulings, Office of Trade, U.S. Customs and Border Protection

Sidney Rosenzweig
Attorney Advisor, Office of the General Counsel
US International Trade Commission

• 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

Networking Refreshment Break

Addressing Challenges Around Standard Essential Patents and FRAND Licensing Disputes

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

Coleman D. Bazelon
Principal and Practice Co-Leader: Intellectual Property
The Brattle Group Inc.

• Analyze recent SEP case developments and understanding the recent draft policy statement
• Identify the restrictions on remedy that stem from SEP owners’ F/RAND (fair, reasonable and non-discriminatory) commitments)
• 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
• Understand the Burden of Proof for a F/RAND defense and what evidence can satisfy that burden
• Explore prospects for future exclusion orders on standard-essential patents (SEPs) FRAND challenges at the ITC: Aftermath of the request for public comment

Exploring the Use of the ITC by Non-Practicing Entities (NPEs): What ITC Practitioners Need to Know

Jonathan Stroud
General Counsel
Unified Patents

Allan Soobert
Partner
Paul Hastings LLP (Washington, DC)

• Address the trend of NPEs relying on their US licensees to satisfy the domestic industry requirements
• Explore new ITC 337 strategies used by NPEs in recent filings
• Address novel questions surrounding NPE litigation funding
• Examine the consequences of litigation funding with NPEs
• Assess how to meet the DI requirements from the perspective of the NPE

Networking Luncheon

Fireside Chat

Honorable Clark S. Cheney
Chief Administrative Law Judge
U.S International Trade Commission

Moderator:

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

Understanding the Unique Role and Importance of the Office of Unfair Import Investigations (OUII) in Section 337 Investigations

Stephen Smith
Partner
Cooley LLP

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

• Deciding when and who participates in an investigation
• What is OUII’s role in discovery disputes?
• What is OUII’s role in assessing the Public Interest challenges 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?
• Assessing the merits of the 100 Day early disposition program and the types of issues that are appropriate
• How can respondents illustrate the issue is not too complex to decide within 100 days of institution?

Networking Refreshment Break

Overview of Changes in Docket Services at the ITC

Lisa R. Barton
Secretary to the Commission, Office of the Secretary
U.S. International Trade Commission

Joel Moeller
Software Engineering Division Chief, CIO
U.S. International Trade Commission

Katherine Hiner
Supervisory Attorney, Docket Services, Office of the Secretary
U.S. International Trade Commission

• Overview of a new investigation database and recent changes to EDIS (Electronic Docket Information System)
• Best practices and procedural updates for filers

Best Practices and Lessons Learned from Remote Proceedings

Megan S. Woodworth
Partner
Venable LLP (Washington, DC)

Brian P. Johnson
Partner
Steptoe & Johnson LLP (Washington DC)

The pandemic made remote proceedings mainstream. What have we learned and what best practices will continue?

• Insight into the ITC’s special procedures during COVID-19
• Examine how ALJs have approached case management and remote hearings during COVID-19
• Assess the impacts on scheduling and timelines
• Weigh the benefits and disadvantages of remote hearings and opportunities for the future

Closing Remarks and Conference Concludes