ITC Litigation & Enforcement

Opening Remarks from the Co-Chairs

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

Mareesa A. Frederick
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC)

In-House Counsel Perspectives on Initiating and Effectively Managing ITC Actions

Matthew McDonell
Senior Patent Counsel
Zimmer Biomet (Warsaw, IN)

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

Moderator:

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

• Gain insights into successful defense strategies when confronted with a 337 action
• Identify ways of productively working within the short timeline of a 337 investigation in order to optimize your outcome
• Learn how to best manage relationships with external counsel and control the significant costs of an ITC proceeding
• Understand when the ITC’s Mediation Program may be a suitable avenue for resolution of your dispute
  

Case Studies on Developments in Satisfying the Domestic Industry Requirement

Yar R. Chaikovsky
Partner and Global Co-Chair, Intellectual Property Practice
Paul Hastings LLP (Palo Alto, CA)

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

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

• Dissect the latest domestic industry (“DI”)-related case law, including important decisions rendered in:
  • Certain Thermoplastic-Encapsulated Electric Motors, Components Thereof, and Products and Vehicles Containing Same (Inv. No. 337-TA-1073)
  • Certain Carburetors and Products Containing Such Carburetors (Inv. No. 337-TA-1123)
• Examine the Commission’s assessment of sales and marketing expenditures as well as use of licensing and litigation expenditures to establish DI
• Gain insights into what type of evidence is necessary to prove that DI is “in the process of being established” when a complaint is filed, and how much investment is considered to be “significant” and “substantial” under the statute
• Hear how complainants have sought to rely on respondents’ own investments to establish DI in recent actions

Break

Point – Counterpoint on the Use of the ITC by Non-Practicing Entities (NPEs)

Michael Connelly
Vice President, Operations
WIT Legal, LLC

Philip Ou
Partner, Litigation Department
Paul Hastings LLP (Palo Alto, CA)

Pallavi Seth
Principal
The Brattle Group (Washington, DC)

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

• Assess the trend of NPEs with no ties to the United States other than ownership of US patents relying on the activities of their US licensees to satisfy the economic prong of the DI requirement
• Explore recent disputes over whether NPEs can use their customers’ investments to satisfy DI where there is no license agreement, but the customer is an “implied” licensee
• Analyze the evolution of NPE and NPE-adjacent petitioners’ approach towards the ITC in recent years
• Assess the dispositions of recent cases involving NPEs in comparison to practicing entities
• Examine the increasing invocation by respondents of complainants’ NPE status as a basis for a public interest argument against relief
• Hear how, from the NPE perspective, such entities can meet the DI requirement, as well as defensive strategies that work against them and defensive strategies that have little to no impact

Analyzing Trends in Filings and Dispositions of 337 Proceedings

Juliana M. Cofrancesco
Counsel to Commissioner Amy Karpel
U.S. International Trade Commission (Washington, DC)

Tony V. Pezzano
Partner
DLA Piper LLP (New York, NY)

• Examine numbers and percentages of cases in which an investigation was instituted, settled, resulted in exclusion orders, appealed, and reversed on appeal in recent years
• Analyze the Commission’s increased scrutiny towards complaints by deciding not to institute or demanding amendments prior to instituting an investigation
• Gather intelligence on key decisions rendered and precedents set in the past year in order to discern likelihood of success of your own dispute
• Assess actions in which no remedy was granted to the complainant and reasons given by the Commission
• Identify new industries turning to the ITC for relief—including pharma, medical devices, lighting, and semiconductors
• Assess frequency of disputes over jurisdiction in industries primarily regulated through other administrative bodies e.g., FDA, PTO

Break

Assessing the Intricacies of Obtaining General Exclusion Orders

Helena D. Kiepura
Partner
Kirkland & Ellis LLP (Washington, DC)

Bryan J. Vogel
Partner
Robins Kaplan LLP (New York, NY)

Wayne Sobon
Vice President, Intellectual Property
JUUL Labs (San Francisco, CA)

• Analyze the increasing issuance of general exclusion orders (GEOs) • Explore recent cases (such as Certain LED Lighting Devices and Components Thereof, Inv. 337-TA-1107) in which the ITC issued GEOs after defaulting respondents failed to contest evidence
• Learn about the use of GEOs to combat widespread infringement of products sold primarily through online marketplaces, often through untraceable routes as sellers’ identities are masked
• Identify conditions that must be met for issuance of a GEO and how successful complainants demonstrated that they met these conditions
• Assess trends in application of exclusion orders to downstream products post-Kyocera and whether the EPROMs test still applies

Successfully Navigating Enforcement and Modification Proceedings

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

Aarti Shah
Member
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. (Washington, DC)

• Learn what is involved in the administration of GEOs and limited exclusion orders (LEOs) at U.S. Customs and Border Protection (“Customs”)
• Gain insights into steps a license holder should take to ensure the proper enforcement of an exclusion order and to work with authorities in the relevant procedures
• Delve into how jurisdiction over enforcement and modification proceedings is split between the ITC and Customs
• Examine the Commission’s institution on its own initiative of a modification proceeding in Certain Road Construction Machines & Components Thereof (Inv. 337 TA 1088) in January 2020 following the respondent’s plea to Customs to address redesign of the product
• As a respondent, understand how to best time your introduction of a redesign into an ITC proceeding at the investigation stage and how to appropriately navigate modification proceedings
  • Explore how the decision likely to be rendered prior to June in Certain Human Milk Oligosaccharides and Methods of Producing the Same (Inv. No. 337-TA-1120) will bear materiality on the question of redesigns
• Learn how the pending decision in Panjiva, Inc. et al v. United States Customs and Border Protection et al. (No. 19-118), an appellate dispute over whether aircraft manifest data can be made public, is likely to affect future Customs enforcement
• Explore how current policy priorities under the Trump administration have impacted enforcement of exclusion orders
  

Fireside Chat with Former Commissioner and Chairman Deanna Tanner Okun: Insights into the Evolution of the ITC

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

Closing Remarks, Conference Adjourns to Day Two

Opening Remarks from the Co-Chairs

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

Mareesa A. Frederick
Partner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Washington, DC)

Addressing Procedural Challenges and ALJ Approaches to Case Management

James B. Altman
Member
Foster, Murphy, Altman & Nickel, P.C (Washington, DC)

• 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.
• Gain insights into the split between judges with respect to preference for written witness statements versus live direct testimony
• Identify differences among ALJs with respect to limits to number of patent claims that can be tried in a given proceeding and bifurcation of claims that treat different issues
• Examine the uptick in ALJ scrutiny of case filings and party counsel behavior, as well increased issuance of sanctions orders in the past year
• Stay up to date on the administration of the early disposition “100day” program and what is required for an action to be eligible for that process, as an increasing number of respondents request this track and few requests are granted
• Learn about recent changes to Secretary’s Office rules relating to administrative protective orders and pre-institution submissions

Navigating Simultaneous Inter Partes Review (IPR) Proceedings and 337 Investigations

Craig Murray
Senior IP Litigation Counsel
Hewlett Packard Enterprise (Reston, VA)

Michael N. Rader
Shareholder and New York Office Head
Wolf Greenfield & Sacks, P.C. (New York, NY)

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

• Gather best practices on how to appropriately work within the timeline of an ITC proceeding alongside a concurrent Patent Trial and Appeal Board (PTAB) action in order to optimize the outcome of your claim
• Delve into the evolution of the two forums, which traditionally worked in parallel but now intersect at an increasing pace
• Analyze the intersection of Section 337 and Section AIA (America Invents Act) in ITC proceedings
• Examine ALJs’ consideration of PTAB in recent cases, including their willingness to stay cases or defer to the PTAB when adjudicating a patent’s validity
• Explore how ongoing consideration of particular patents at PTAB impacts the enforcement of remedial orders already issued by the ITC
• Learn how the ITC has been responding to PTAB invalidity rulings after having previously granted injunctive relief to claimants in 337 cases

Break

Examining Adjudication of ITC Decisions on Appeal

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

Brian R. Nester
Partner
Sidley Austin LLP (Washington, DC)

• Analyze the nature and disposition of recent appeals of ITC decisions heard by the Court of Appeals for the Federal Circuit (CAFC)
• Assess the significance of the dispute over ITC jurisdiction in the ongoing appellate case Comcast Corporation v. ITC (18-1450)
• Explore questions over circumstances in which an ITC case becomes moot while a related issue is under appeal, as well as when the CAFC is authorized to intervene
• Hear how disputes relating to conflicting ITC and PTAB rulings are being treated and adjudicated on appeal
• Gain insights into Customs’ role in enforcing exclusion orders while the party found by the ITC to be in infringement appeals the decision • Learn how positions taken in district court affect appeal of ITC decisions on related disputes
  

Trends in Use of the ITC for Non-Traditional, Non-Patent Purposes

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

Jeffrey M. Telep
Partner
King & Spalding LLP (Washington, DC)

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

• Assess recent non-patent statutory IP claims—over alleged misappropriation of trade secrets, false advertising, and trademark and copyright infringement—as well as non-IP antitrust infringement
• Learn about the position taken by the Office of Unfair Import Investigations (OUII) in recent cases that US manufacturing is needed to satisfy the DI requirement in trade secret cases
• Delve into the obligation to establish not only DI but also injury to DI in non-patent cases
• Explore how the introduction of the Defend Trade Secrets Act has influenced ITC cases since it became federal law in 2016, including how the legislation likely impacted adjudication of Certain Lithium-Ion Battery Cells, Battery Modules, Battery Packs, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-1181)
• Gain insights into post-Amarin 337 claims over violation of false advertising provisions of the Lanham Act, including Certain Food Processing Equipment and Packaging Materials Thereof (Inv. No. 337-TA-1161)
• Examine the state of play after U.S. Steel and Amarin for complainants to allege unfair acts where there is no private right of action; specifically, are claims alleging unfair acts of importation of unapproved drugs, foreign bribery, customs circumvention, or unfair labor practices viable?
  

Break

Evolving Public Interest Considerations in 337 Investigations and Litigation

Shara L. Aranoff
Partner
Covington & Burling LLP (Washington, DC)
Former ITC Commissioner and Chairman

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

Coleman Bazelon
Principal
The Brattle Group (Washington, DC)

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

• Explore the increasing attention to public interest considerations by the Commission, and recent investigations into whether public benefit outweighs infringement of patent owners’ rights
• Navigate the procedural nuances of public interest inquiry, including the extent of resources that parties should devote to litigating questions of public interest at the trial level
• Examine the OUII’s objection to the absence of a public interest enquiry at the ALJ level in Certain Microfluidic Devices (Inv. No. 337-TA-1068)
• Assess the treatment of public interest questions at the Commission level in cases in which the issue was not initially delegated to the ALJ for consideration, such as in Certain Graphics Systems, Components Thereof and Consumer Products Containing the Same (Inv. No. 337-TA1044), where public interest evidence was required to prove EPROMs for downstream products
• Gain insights into recent consideration of public interest in pharmaceutical and medical device cases, such as in Certain Recombinant Factor VIII (Inv. No. 337-TA-956)
  

Understanding the ITC’s Approach to Standard Essential Patents (SEPs)

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

Kevin J. Post
Partner
Ropes & Gray LLP (New York)

• Analyze recent SEP case developments, notably Certain Memory Modules and Components Thereof (Inv. No. 337-TA-1089), in which the ALJ recommended an exclusion order and which is now under consideration by the Commission
• Identify the restrictions on remedy that stem from SEP owners’ F/RAND (fair, reasonable and non-discriminatory) commitments
• Examine the December 2019 joint statement by the Department of Justice (DOJ)’s Antitrust Division, the US Patent and Trademark Office (USPTO), and the National institute of Standards and Technology (NIST), which states that injunctions and exclusion orders should be applicable to SEPs, and assess the implications for ITC actions
• Gain insights into the Federal Trade Commission (FTC)’s ongoing appellate case against Qualcomm over the latter’s alleged uncompetitive tactics and violation of its SEP obligations by refusing to license its patents on F/RAND terms, and establish how ITC proceedings are likely to be affected
  

Closing Remarks, Conference Adjourns