Agenda
Day 1
March 31, 2025
Registration & Breakfast
Co-Chairs Opening Remarks
YEAR IN REVIEW
Analyzing ITC Developments: Section 337 Filings and Appeals – The Notable Investigations and Consequential Decisions of the Past Year
Join us as we discuss key developments at the ITC over the last twelve months, and forecast refinements to anticipate in 2025. We will also look at potential changes at the Federal Circuit and explore other notable considerations, such as:
- Recent ITC rulings on Standard Essential Patents
- Effectiveness of the ITC when medical use products are to be considered
- New industries that are turning to the ITC for relief
- Developments affecting ITC practice preparation and procedure
- Changes and trends in the numbers of investigations that are instituted, settled, resolved with exclusion orders, appealed and reversed on appeal
- New trade policies under the Trump Administration that may influence the ITC
Extended Networking Break
Public Interest Considerations In 337 Investigations and Decisions: Examining the Effect of Relief on the “Public Health and Welfare”
Leaders of corporate IP departments may be tempted to neglect the public interest argument in an ITC investigation, considering that the ITC has only issued remedial orders due to public interest concerns in just three investigations. However, while the grant or denial of exclusionary relief in a Section 337 case rarely turns solely on public interest factors, the Commission and ALJs do take them into consideration.
In this session our panelists will assess the impact of public interest factors in ITC investigations and provide insights on:
- Factors that could lead the ITC to delay a remedial order
- Scenarios where products are “grandfathered” to prevent disruption to customers that already have violative products in the United States
- Facts that have historically satisfied the public interest prongs
- How remedies have been used to tailor exclusion orders
- Recent cases that involve public interest considerations, such as Apple v. Masimo and Certain Microfluidic Devices
Standard Essential Patent (SEP) policies continue to evolve, with recent policy statements providing inconsistent guidance on whether — and when — SEP owners should obtain injunctive relief against prospective licensees. The Trump Administration issued a policy statement asserting that injunctive relief and exclusion orders from the ITC should be “equally available” for SEP owners, but the Biden Administration withdrew this policy statement.
Despite this injunction-related uncertainty in US litigation, recent high-profile cases indicate that the ITC remains an attractive forum for SEP owners. In this session we will examine the approach and strategic role of the ITC in SEP litigation. Topics of discussion include:
- The willingness of US District Courts to issue injunctions in patent cases
- The need to be prepared to point to public interest concerns based on SEP owners’ FRAND (fair, reasonable, and nondiscriminatory) Commitments
- Analyzing recent SEP case developments and understanding recent policy statement
- The effects of the fast-paced and frequently expensive discovery
- The prospects for future exclusion orders on SEPs
Networking Luncheon
Fireside Chat with the ITC
Third party litigation funding (TPLF) for 337 matters is on the rise and is the subject of increased discussion and scrutiny. The increase in TPLF has also created challenges for practitioners and Judges and raises concerns about corrupting the legal system by prioritizing profit over public interest. In this session we will examine:
- Judicial efforts to disclose TPLF agreements in the discovery phase
- Policymaker proposals and legislation aimed at increasing transparency and addressing concerns about foreign involvement in United States legal proceedings
- The potential for conflicts of interest and weakening of attorney-client privilege that can be created by TPLF
- Inappropriate influence on case strategies, settlement decisions, and other crucial elements that can undermine the integrity of legal advocacy
Networking Break
IN-HOUSE ROUNDTABLE SERIES – Champagne Toast
PART I: Strategies for Initiating and Defending 337 Actions
Litigation in the ITC is fast and highly technical and requires a specialized knowledge of the forum. Respondents are often at a significant disadvantage at the beginning of an investigation because the complainant has had months to prepare its case. As such, it is critical to work productively within the condensed timeframe of a 337 investigation to optimize the outcome.
In this informative and interactive session our panel of in-house and outside counsel will examine effective strategies for initiating and defending 337 actions, such as:
- Managing the relationships between in-house and outside counsel
- Exploring scenarios that justify a cease-and-desist order
- Post-remedy enforcement
- Appellate procedures and tips for filing an appeal at the Federal Circuit
- Considering a Public Interest Submission
- Identifying and Filing Strategic Motions for Summary Determination
End of Day One / Networking Cocktail Reception
Day 2
April 1, 2025
Co-Chairs’ Opening Remarks
IN-HOUSE ROUNDTABLE SERIES – Breakfast and Pastries
PART II: Respondents Subject to an ITC Exclusion Order: Options Available to Parties Seeking to Import Goods That May be Subject to an ITC Exclusion Order
After receiving an adverse ruling from the ITC, there are some options available to parties looking to reverse, narrow or work around the ITC’s exclusion order. Join Part II of our In-House Roundtable Series for this unique opportunity to interact and benchmark with in-house counsel, while reviewing real-world examples of how to overcome exclusion orders. Our panel will provide a summary of these options, including:
- Appeals to the Federal Circuit
- ITC advisory opinions
- ITC Revocation and Modification Proceedings
- Interaction with U.S. Customs and Border Protection
Navigating Parallel Proceedings and Concurrent Investigations: Strategies for Maneuvering Through the ITC, PTAB and District Courts
The Commission and its ALJs have long had the authority to stay an investigation under “appropriate circumstances,” including those involving Patent Office proceedings. In addition, the ITC favors speed and demands certainty before crediting PTAB invalidity rulings.
The “need for speed” can have its drawbacks however, particularly when addressing complicated issues of patent validity. When a PTAB final written decision becomes available before the Commission issues its Final Determination, the PTAB invalidity ruling could meaningfully assist the ITC in accurately carrying out its mandate. Join us in this session as we examine:
- Parallel records before the agency, corresponding motions to stay, and pitfalls to avoid
- Recent case law and developments on discretionary denials
- Guidelines to work within the timelines of an ITC proceeding alongside a concurrent PTAB action
- The interplay between ITC and PTAB and how they are intersecting at an increasing pace
Networking Break
After a difficult and costly ITC investigation leads to an exclusion order, both the patent owner and accused patent infringer may think that the matter is finally over. However, the parties’ dispute will likely move to a new forum: the U.S. Bureau of Customs and Border Patrol. Once the exclusion order issues, there are specific guidelines that Customs puts in place to identify infringing goods and enforce the order.
Join us in this session as we examine the variety of options available to parties after an exclusion order issues, such as:
- Certification to CBP that goods may not be subject to the exclusion order
- Pursuit a Rule 177 ruling – for goods that are beyond the scope of the ITC exclusion order
- Importing a redesigned good “at-risk” and file a protest challenging exclusion of the good
- Petitions to obtain advisory opinions or modifications of the order
- Attempts to secure additional remedial orders and civil penalties
Networking Luncheon
The landmark Loper Bright decision marks the end of Chevron deference, the doctrine of deferring to an agency’s interpretation of allegedly ambiguous statutory language. This ruling will increase the opportunities for regulated industries to challenge agency rules, including in proceedings before the Patent Trial and Appeal Board (PTAB) and the International Trade Commission (ITC). It also calls into question the powers courts will have to make judgments in the fields of science and tech (including A.I.).
Join us for this critical and interactive session as we delve into the far-reaching implications of this ruling. Topics of discussion will include:
- Understanding how the decision will affect Section 337 Filings and Appeals
- Examining the new legal landscape and its demand on outside counsel
- Predicting the potential for new and renewed legal challenges to longstanding federal regulations
- Analyzing the likelihood and scope of increased ITC litigation as a result of the ruling
Networking Break
Audience Polling
The Big Debate
Jurisdiction or Not: When Should the ITC Have Jurisdiction Over IP Disputes?
The ITC quickly investigates whether imports are harming U.S. businesses or violating intellectual property rights and can also determine if there has been trade secret misappropriation. After such investigations and examinations, the ITC can impose robust exclusion orders barring the importation of foreign-manufactured goods into the U.S.
However, critics feel that the ITC undertakes an analysis of asserted patents that are often in parallel with district courts adjudicating the same disputes, with no estoppel. There are some that feel the ITC’s authority to issue exclusion orders enforced by Customs and Border Protection could be handed over to federal courts, as could the ITC’s in rem jurisdiction over infringing articles.
Join us for an exciting and interactive debate, where our panelists will determine when – and under what circumstances – the ITC should gain jurisdiction over IP disputes.
ITC Town Hall and Wine Toast
Illuminating the Scope of the Domestic Industry Requirement: Examining the New and Proposed Revisions and Their Effect on Future ITC Practice
To access the ITC, Section 337 requires a complainant to show that it maintains the required level of economic activity within the United States, and prove that this economic activity is devoted to exploiting the intellectual property right at issue. To adequately satisfy these requirements, complainants must show that they belong to a “domestic industry” that needs protection.
Be sure to join us in this closing session as we look at recent decisions and the effects of proposed revisions to these requirements, by:
- Evaluating the increasing role of the economic prong requirement
- Obtaining insight into how much investment is considered to be “significant” and “substantial”
- Dissecting the takeaways from Zircon Corp. v. ITC
- Examining the status of proposed legislation that impacts the domestic industry test
- Reviewing the application of the “mere importer” test used to determine if requirements are met