American Conference Institute's 7th Annual Forum on ITC Litigation and Enforcement

ITC State of the Union: Case Developments in Domestic Industry and Induced Infringement, the Suprema Aftermath and What They Reveal about the Future of 337 Enforcement

With the smartphone wars coming to an end and recent ITC decisions, it has become more diffi cult for NPEs to bring successful complaints at the ITC. Join this comprehensive preforum working group that will get you up to speed on what is going on at the ITC, the practical impact of the latest cases, current and proposed rules, and how these trends will impact your litigation strategies at the ITC and Federal Circuit.

• Standing at the ITC — showing domestic industry at the ITC
• 859 Investigation — domestic industry analysis under Subsection (c) research and development activities
• 897 Investigation based on domestic industry relying on activities of complainant’s licensees
• Treatment of production vs. revenue-driven activities under prongs A, B and C of the statute
• 833 Investigation on electronic transmissions/digital Imports
• What is the remedy and how to bring a case involving electronic transmissions
• The future of cases involving electronic transmissions at the ITC
• Where is Customs on regulating electronic imports?
• Joint infringement and method claims cases
• Suprema
• Akamai
• Latest activity on the Hill
• Update on “non-traditional” cases at the ITC

8:00 am – 10:00 am (Registration Begins at 7:30 am)

Registration Begins

Introductory Remarks from Conference Co-Chairs

ITC Chairman’s Keynote Address

MOCK PRE-TRIAL — ITC Pre-Trial Strategies and Procedures: How to Work with Opposing Counsel, Review Objections, and Tailor your Approach to Specific ALJ Procedures

Set up as a mock pre-trial conference, this session will dive into the most effective ways to get your case through the ITC. Accelerated schedules for pretrial and evidentiary hearings create a sense of urgency and the need to have an efficient pretrial strategy. Gain crucial insights from seasoned ITC veterans at this unique session that will take you through a number of scenarios based on real-life challenges:

• How to deal with an ITC evidentiary hearing that is commonly one week — getting everything in
• Pre-filed direct testimony, witness statements, deposition designations
• Knowing the rules of exhibits and when to limit them
• Now that you have discovery, what do you do?
• When and how many motions to file
• Strategies on making high priority and regular objections
• How to streamline the conduct of the trial to benefit both sides — addressing specific procedures associated with the ALJs
• Crafting responses to objections, responses, replies, etc.
• What do you need to do to preserve your appeal rights?

Hypothetical and Breakout Discussions: An Interactive Debate on How to Prove Domestic Industry in the Current Landscape

Using recent and current cases as a guide for the discussion, session leaders will go through the ins and outs of proving DI based on recent case law. Attendees will be broken up into smaller groups to foster an active discussion on the most current, debatable issues.

• Economic v. technical prong issues
• When to prove the connection between economic expenses and IP at stake
• Proving DI in trade secret cases v. patent cases: Proving actual economic injury
• When to bring in an economic expert to prove DI and to help prove injury
• Understanding what types of proof are necessary to prove DI

Networking Luncheon for Attendees and Speakers Sponsored By:

ITC Alumni Panel Q & A: The Inner Workings of the ITC and Common Misconceptions

Hear from former ITC decision-makers, who will share their unique perspectives on how the ITC works, evaluates a case and decides to investigate, and the thought process behind certain rulings. Bring your questions as ample time will be left for Q & A.

Networking Break Sponsored By:

Third Party Discovery and Subpoena Practice at the ITC: Clarifying the Impact and Rights of Third Parties Brought into an ITC Case

• Costs and challenges associated with being a third party subject to a subpoena
• Understanding the subpoena process at the ITC
• Strategies for conducting discovery of a third party based overseas

Understanding What is at Stake at the ITC: Quantifying Strategic Risk/Rewards and Modeling the Financial Impact of ITC Exclusion Orders

• If you lose a case at the ITC, what is the resulting exposure? If you win, what do you get?
• Best practices on getting the ALJ involved in the management of the case at an early stage — impact of Rule 210.27 (d)
• When to move for a protective order and limit discovery
• What should outside counsel do to help companies handle impact on stock price after an Initial Determination
• Understanding the limitations on claims that can be asserted and construed
• Ensuring the subpoena is not overbroad
• Understanding the financial impact on motion practices
• ALJ rules on motion practice and how this impacts your business decisions to proceed
• What is the “right” ITC case today?

Conference Adjourns to Day Two

Cocktail Reception Sponsored by:

Co-Chairs’ Opening Remarks

KEYNOTE: What Federal Circuit Judges Expect for Oral Arguments, Briefs and Other Issues on Appeal

IN-HOUSE COUNSEL EXECUTIVE ROUNDTABLE: How Corporations Select and Work with their Outside ITC Counsel

• Relevant considerations when selecting outside counsel
• Deciding whether or not to see resolution at the ITC:
  What in-house counsel want to know about initiating a case
• How to protect trade secrets during a case
• Identifying and preparing key corporate personnel for deposition and trial testimony
• Understanding how in-house counsel assess available remedies

Networking Break Sponsored By:

Conducting Effective Discovery in Asia: A Unique Perspective on Data Collection in China, Japan and Korea

• How data privacy issues impact discovery in China, Japan and Korea
• Strategies in document collection when dealing with sensitive information
• Dealing with issues when exporting data back to the US
• E-discovery
• Understanding local laws to best get your information and take your depositions
• Dealing with language barriers during discovery
• Plant inspections — getting approvals for and conducting plant inspections in a timely, efficient manner

Interplay of the ITC, PTO and District Courts

• How is the growth in IPRs affecting ITC practice?
• How IPR’s will cause uptick at ITC — understanding the relationship and timing of IPRs, ITC and District Court cases
• How are the records from ITC investigations used in subsequent district court cases?

Networking Luncheon

OUII Involvement in 337 Investigations

The Role of Patent Aggregation in ITC Litigation

• Recent case studies
• What is the role and the consequences of insurance in ITC litigation
• How active are they, how they work and how they can help

Networking Break

View from the ITC Commissioners, Judges and Staff

This interactive session will begin with a panel discussion between ALJs, Commissioners, and other ITC personnel. Gain first-hand perspectives on what the ITC Judges and Commissioners are thinking, and how to effectively establish your case.

Following the panel discussion, there will be time for questions — please submit any prior questions to ITCquestions@americanconference.com. Benefit from this unique opportunity to engage with the ITC community in a more intimate setting.

Co-Chairs’ Closing Remarks and Conference Ends