ITC Section 337 Litigation: Tips & Strategies for Your Firm
Under Section 337 of the Tariff Act of 1930, the U.S. International Trade Commission (ITC) covers IP cases related to imported goods. ITC litigation presents unique challenges to the parties in the lawsuit. It involves litigating technologically complicated lawsuits in a short period of time. Litigating Section 337 cases should not be like litigating a jury case since these are not district court cases.
To ensure effective representation, litigators must be well-versed with the patent prosecution process and must have comprehensive technical or scientific background in order to evaluate and present arguments on the main issues driving the case. Legal strategies should also be developed and executed to maximize opportunities while minimizing disruption to clients’ business.
The Knowledge Group has assembled a panel of key thought leaders and practitioners to discuss ITC Section 337 litigation and to offer tips and strategies that will help litigators overcome the complexities of Section 337 proceedings. Speakers will also provide an in-depth discussion of key Section 337 litigation developments.
Key topics include:
- Overview of Section 337
- ITC Section 337 Investigations Framework
- Notable Cases
- Litigation Challenges
- Litigation Tips and Strategies
- Latest Litigation Trends and Developments
Pleading strategies, e.g.
- Complainants – plead all necessary facts to support a finding of violation in the event of default, e.g., 1008 Comm’n Op.
- Respondents – be cognizant of ALJs’ differing standards for pleading affirmative defenses, especially inequitable conduct
Considerations relating to the ITC’s 100-day pilot program
- Analyzing the economic impact on the public interest
- Recent case developments (‘971)
- Strategies for complainants and respondents
Domestic Industry - Economic Prong
- Establishing a domestic industry
- Recent case developments
- Application of Lelo to econ prong analysis, e.g., 979 ID
- Strategies and challenges for NPEs to prove DI, e.g., 1010 ID
- The injury requirement
Proposed ITC procedural developments (as opposed to recent substantive cases) and how they make impact procedure and strategy in the future
IPR strategies, especially in light of denial of stay of remedial orders in 945; but see stay granted in 939
Strategic use of the ITC’s patent standing requirement
Section 101 arguments on the rise at the ITC
Trends and considerations in connection with obtaining general exclusion orders
Who Should Attend:
- IP and Related Attorneys and Consultants
- International Trade Law Attorneys
- In-house Counsel
- Trade Compliance Administrators and Managers
- Private and Public Companies
- Multinational Companies
Ed Donovan is a partner at Kirkland & Ellis where he focuses on intellectual property and technology-related litigation. His experience includes trials, arbitrations and preliminary injunction proceedings in federal and state courts and before the International Trade Commission. Ed has tried patent infringement cases to verdict in bench and jury trials and has successfully obtained and defeated exclusion orders in Section 337 proceedings. His experience spans a variety of technical subject matters including semiconductors, mobile phones, data storage, pharmaceuticals, and medical devices. Ed has substantial experience in legal and regulatory issues involving standards essential patents, including trying cases involving SEP and FRAND issues as both plaintiff and defendant.
Ed’s work has been recognized by Chambers & Partners and Managing Intellectual Property, among others.
Ed has a B.E. in Mechanical Engineering. He received his J.D. from George Washington University Law School.
Ed Donovan is a partner at Kirkland & Ellis where he focuses on intellectual property and technology-related litigation. His experience …
Section 337 investigations pose an enormous risk. Without proper counsel, the speed, complexity and potential cost can overwhelm companies and drain precious resources. Having handled 30 such investigations, Jordan understands those risks, and how to safely and efficiently guide complainants, respondents and non-parties toward the best possible result.
He’s managed all aspects of Section 337 investigations, including eight trials, from pre-complaint counseling and diligence to Federal Circuit appeals. The investigations have covered technologies including smartphones, tablets, televisions, flash memory, semiconductors, and medical devices.
He also represents plaintiffs and defendants across the country in cases involving claims of patent, trademark and copyright infringement, trade secret misappropriation and violations of the Digital Millennium Copyright Act.
Section 337 investigations pose an enormous risk. Without proper counsel, the speed, complexity and potential cost can overwhelm companies and …
Eric W. Schweibenz is a partner in Oblon’s Litigation and ITC Litigation practice groups focused on patent litigation in the federal courts and before the U.S. International Trade Commission (ITC). With extensive legal experience, Mr. Schweibenz also counsels clients in all fields on a full range of trademark and copyright law issues. As a result of his successes, Mr. Schweibenz has been recognized by independent rankings outlets as a leading patent practitioner in ITC and Patent Litigation.
Mr. Schweibenz’s extensive experience in complex litigation includes representing both domestic and foreign companies and their U.S. affiliates and subsidiaries across a spectrum of diverse technologies, including automotive and hybrid electric vehicles and components thereof, medical devices, semiconductors, gas turbine engines, liquid crystal display innovations, and oil and steel production. Mr. Schweibenz received a Juris Doctor from Roger Williams University School of Law.
Eric W. Schweibenz is a partner in Oblon’s Litigation and ITC Litigation practice groups focused on patent litigation in the …
Carla Mulhern, Managing Principal, Analysis Group; M.Sc., economics, London School of Economics and Political Science; B.S., mathematics, Bucknell University
Ms. Mulhern specializes in the application of economic principles to issues arising in complex business litigation. She has testified on damages issues arising in commercial litigation matters such as intellectual property disputes in a number of district and state Courts. As well, she has provided testimony on economic issues arising in the context of Section 337 investigations at the International Trade Commission (ITC). At the ITC, Ms. Mulhern has testified on a variety of economic issues including domestic industry, remedy, bond, commercial success, and public interest. Her litigation experience spans a variety of industries, including pharmaceuticals, medical devices, automotive, entertainment, consumer products, computer hardware and software, semiconductors, and telecommunications. In non-litigation matters, Ms. Mulhern has assisted clients in valuing intellectual property and other business assets in the context of strategic alliances and joint ventures. She is a member of the American Economic Association and the Licensing Executives Society, and is a frequent writer and speaker on issues related to intellectual property valuation and damages assessment.
Carla Mulhern, Managing Principal, Analysis Group; M.Sc., economics, London School of Economics and Political Science; B.S., mathematics, Bucknell University Ms. …
Pallavi Seth, Principal, The Brattle Group; Ph.D., Economics, Boston College; A.B., Economics and Mathematics, Mount Holyoke College
Dr. Pallavi Seth has extensive experience in the areas of intellectual property and economic policy. She has assisted counsel for leading technology companies, including Broadcom, SanDisk, Intel, Hewlett-Packard, Samsung, Nokia, Macronix, and Garmin; trade associations; and government agencies.
Dr. Seth has testified on a broad range of economic issues in Section 337 investigations at the ITC. Most recently, she assisted counsel for Broadcom, ARRIS, Arista, Netgear, Technicolor, Comcast, and HTC in Semiconductor Devices and Packages (337-TA-1010), testifying at trial on economic issues related to EPROMs, remedy and bonding. She also provided trial testimony in Air Mattress Systems (337-TA-971) on public interest, remedy, and bonding. She has assisted in numerous high-profile cases, including Multimedia Display (337-TA-694), where she assisted counsel for respondent Garmin to evaluate the economic prong of the domestic industry. Her industry expertise includes high-tech and consumer products such as semiconductors, flash memory devices, liquid crystal display panels, smartphones, computers, medical devices; commercial machinery and heavy equipment.
Dr. Seth has assisted leading companies in over two dozen Section 337 investigations. She is the Vice-Chair of the ABA-IPL ITC Committee and a frequent speaker at CLE events.
Pallavi Seth, Principal, The Brattle Group; Ph.D., Economics, Boston College; A.B., Economics and Mathematics, Mount Holyoke College Dr. Pallavi Seth …
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Method of Presentation:
Experience in IP and International Trade Law
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
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About Kirkland & Ellis LLP
Kirkland & Ellis LLP is a 1,900-attorney law firm representing global clients in complex intellectual property and technology matters, private equity, M&A and other complex corporate transactions, litigation and dispute resolution/arbitration, and restructuring matters. The Firm has offices in Beijing, Boston, Chicago, Hong Kong, Houston, London, Los Angeles, Munich, New York, Palo Alto, San Francisco, Shanghai and Washington, D.C.
Kirkland has one of the most respected intellectual property litigation practices in the country, with particular experience in large-scale patent, copyright, trademark, trade secret misappropriation, and advertising matters. The Firm has been handling ITC Section 337 proceedings for more than 30 years and has litigated numerous ITC cases on behalf of complainants and respondents covering a variety of products and technologies. Kirkland was honored by Managing Intellectual Property as the 2016 “International Trade Commission Firm of the Year.”
Founded in San Francisco a century and a half ago, Orrick today is named one of the “Global 20” leading firms by Law360. With approximately 1,100 lawyers across Europe, Asia, the United States and Africa—our platform offers clients a distinctive combination of local insight and consistent global quality. Our firm is known for delivering the highest-quality, commercially oriented legal advice; for our culture of innovation and collaboration; and our focus on the tech, energy and financial sectors.
For nearly 50 years, Oblon has provided a full range of intellectual property services to companies based in Japan, France, Germany, Italy, the United States and other areas of the world. Many of the firm’s culturally aware attorneys speak several languages, including Japanese, French, German, Mandarin and Korean, to enable more efficient communication with the firm’s global clients. Oblon’s team of 130+ attorneys, registered patent agents, and technical advisors include some of the country’s most respected practitioners of intellectual property law.
The Firm is consistently recognized as an industry leader, with annual accolades from reputable publications such as U.S. News & Best Lawyers, Chamber & Partners, and Intellectual Property Today. The Firm has obtained more U.S. utility patents than any other firm in the world for over 27 consecutive years.
About Analysis Group
Analysis Group is one of the largest private economics consulting firms, with more than 700 professionals across 11 offices in the United States, Canada, and China. Since 1981, we have provided expertise in economics, finance, health care analytics, and strategy to top law firms, Fortune 500 companies, and government agencies worldwide. Our internal experts, together with our network of affiliated experts from academia, industry, and government, offer our clients exceptional depth of expertise.
About The Brattle Group
The Brattle Group provides the advantageous combination of deep institutional knowledge and diverse industry experience with rigorous and innovative financial, accounting, and economic analysis. We have extensive experience working on fast-paced, high-stakes cases and have handled the full range of economic issues across a variety of industries.
Economists at Brattle are thought leaders in the area of Section 337 litigation with several publications that apply economic principals to policy objectives to further clarify how the ITC can further its intellectual property policy objectives. As a result of our policy conscious approach, our rigorous and innovative economic analyses have played a key role in numerous high-profile cases and landmark decisions. Learn more at Brattle.com.