Wednesday,
9:00 Opening Remarks from the Co-Chairs: ITC State of the Union
Our esteemed co-chairs will kick off this year’s event with an exploration of the recent surge in Section 337 cases and an assessment of why cases are trending upward as we enter 2024. They will set the stage for the main conference with an examination of case filing trends in the last year, as well as statistics on how many cases resulted in investigations, settlements, exclusion orders, appeals and reversals on appeal.
David Hollander Special Counsel Mintz President-Elect | ITC TLA
9:30 Analyzing the Most Significant ITC Cases of 2023: Exploring Key Takeaways and Implications for Your Future Section 337 Practice
• Examining critical developments, significant rulings and key takeaways from the year’s biggest ITC cases:
» Apple v Masimo
» Ericsson v Lenovo & Motorola
» Nokia v HP & Amazon
• Assessing each of these cases’ macro issues, distinctive nuances, and litigation approaches
• Insights on how developments in these cases may impact future ITC actions and procedures
Michael Connelly President WIT Legal
Aarti Shah Partner Kilpatrick Townsend & Stockton Vice President | ITC TLA
10:30 Fireside Chat
Honorable Clark S. Cheney
Administrative Law Judge U.S. International Trade Commission
Honorable Dori Johnson Hines
Administrative Law Judge U.S. International Trade Commission
Honorable MaryJoan McNamara Administrative Law Judge U.S. International Trade Commission
Our panel will delve into the ongoing legislative initiatives outlined in The Advancing America’s Interests Act (AAIA) bill. Discover what revisions to ITC standards the industry can anticipate.
• Assessing potential amendments to domestic industry requirements
• Emphasizing the ITC's public interest obligation under AAIA
• Analyzing the implications of proposed changes on international trade relations
• Examining best practices for exclusion order enforcement: developing strategies to master the requirements of enforcement proceedings
• Mastering the requirements of enforcement proceedings to meet CBP’s expectations
• Exploring scenarios that may justify a cease-and-desist order
» Understanding the standards applicable to enforcement of a cease-and-desist orders and how these have evolved over time
• Finding the balance between exclusion order timelines and the feasibility of design alternatives in alignment with business practicalities
Dennis McMahon Partner Venable LLP
Dax Terrill Exclusion Order Enforcement Branch Chief
U.S. Customs and Border Protection (CBP)
In this interactive session, a panel of esteemed in-house counsel will share insights and strategies for managing ITC proceedings from start to finish. Topics to be discussed include:
• Learning how to best manage relationships with external counsel to secure the project
• Recognizing the significance of collaborating with other teams, including engineers, at an early stage
• Efficiently managing budgets for ITC proceedings by tracking litigation costs and working with outside counsel
• Uncovering successful strategies to defend a 337 action
• Working productively within the timeframe of a 337 investigation to optimize your outcome
• Understanding the process on initiating of responding to an ITC action
• Reviewing processes for organizing teams, witnesses and required materials under the short time frame
• Understanding post-enforcement strategies particularly on online marketplaces
Arvind Iyengar
Senior Legal Counsel
Samsung Electronics
Shawnna Yashar Director of Global IP Litigation Lenovo
• Assessing recent cases at the ITC, involving public interest considerations:
» Apple v Masimo
• Exploring whether public interest considerations for trade secret violations differ from those of traditional 337 patent infringement investigations?
• Comparing and contrasting facts that have historically satisfied the public interest prongs
• Strategies and considerations for pre-institution filings in 337 investigations
• Analyzing the influence of public interest factors in decisions on ITC exclusion order enforcement
5:30 Closing Remarks and Conference Adjourns to Day 2
Cocktail Reception Sponsored by:
9:00 Opening Remarks from the Co-Chairs
David Hollander Special Counsel Mintz President-Elect | ITC TLA
Aarti Shah Partner
Kilpatrick Townsend & Stockton Vice President | ITC TLA
9:15 Critical Considerations for Parallel Proceedings and Concurrent Investigations: Exploring the Interplay Between the ITC and Other Agencies Including PTAB and FDA
• Evaluating strategies for navigating the timelines of an ITC proceeding while concurrently dealing with a PTAB action
• Understanding the interplay between ITC and PTAB and the challenges of managing concurrent investigations, discovery, motion practice and more
• Examining the dynamic between the ITC and FDA and how these agencies collaborate in handling investigations concerning unfair trade imports
» Analyzing Eli Lily’s claim regarding unfair import and distribution of tirzepatide
10:15 Networking Refreshment Break
James Worth Administrative Patent Judge USPTO Patent Trial and Appeal Board
• Analyzing possible congressional revisions to domestic industry requirements, under The Advancing America’s Interests Act (AAIA)
» Examining the new provisions, the policy behind the proposed revisions and implications of the revisions on future ITC practice and procedure
• Dissecting the latest domestic industry changes over recent years, related case law and important decisions rendered
» Reviewing takeaways from Ericsson v Lenovo
• Insight into the Commission’s opinions on individual assessments, distribution, R&D and other elements in the decision-making process
» Understanding the ‘mere importer’ test
• Assessing how much investment is “significant” and “substantial” under the statute
• Understanding the significance of re-designs when filing at the ITC
• Reviewing new developments in SEPs at the ITC and globally
• Analyzing recent SEP case developments and understanding whether injunctive type relief can be granted
» Ericsson v Lenovo
» Nokia v HP & Amazon
• Explore prospects for future exclusion orders on standard-essential patents (SEPs) 12:30
An estimated one-third of total patent litigation is now funded by third parties, which is increasing instances of “patent troll” litigation at the ITC, creating challenges for practitioners and negatively impacting innovation. This panel will examine the actions that ITC practitioners can take to mitigate the challenges created by TPLF in the ITC arena. Discussion points will include:
• Current challenges being created by TPLF
• Proactive measures that companies can take to push back on the effects of TPLF
• Recent judicial strides towards requiring disclosure of TPLF agreements in discovery
Accreditation will be sought in those jurisdictions requested by the registrants which have continuing education requirements. This course is identified as nontransitional for the purposes of CLE accreditation.
ACI certifies this activity has been approved for CLE credit by the State Bar of California.
ACI certifies this activity has been approved for CLE credit by the New York State Continuing Legal Education Board.
ACI has a dedicated team which processes requests for state approval. Please note that event accreditation varies by state and ACI will make every effort to process your request.
Questions about CLE credits for your state? Visit our online CLE Help Center at www.americanconference.com/accreditation/cle/
