Section 337 Investigations and the ITC in the 2019 Landscape: Significant Trends and Developments Explored!
On June 7, 2018, the International Trade Commission (ITC) amendments which changed the rules of practice and procedures for Section 337 Investigations, have taken effect. These changes are aimed to improve ITC investigations’ speed and efficiency.
Although some of these new and revised rules are only minor updates, the severance of a complaint into multiple investigations and the “100-day program” are some of the most notable changes. ITC practitioners have to make sure that they are in-the-know to ensure compliance and to be able to formulate new strategies and avoid potential risks and pitfalls that come with the new and amended rules. They also have to be prepared and be able to cope with what’s to come in the 2019 landscape.
In this LIVE Webcast, a panel of distinguished professionals and thought leaders will help ITC practitioners and Trade Compliance professionals understand the important aspects of this significant topic. They will provide an in-depth discussion of ITC’s section 337 updates and the future of section 337 investigations in the year to come. Speakers will also offer best practices in developing and implementing case strategies and ensure compliance with the Commission’s requirements.
Key issues that will be covered in this course are:
- Section 337 Overview
- Trends, Developments and Updates in 2018
- Best Practices in Developing and Implementing Case Strategies
- Compliance Issues and How to Overcome Them
- What’s to Come in 2019
Eric E. Schweibenz, Partner
Oblon, McClelland, Maier & Neustadt, L.L.P.
- Pleading strategies for complainants and respondents;
- Considerations relating to the ITC’s 100-day pilot program;
- Lack of standing defenses on the rise at the ITC; and
- Trends and considerations regarding use of IPRs in response to Section 337 complaint
Blaney Harper, Partner
- The ITC expanded the activities (economic and technical) that satisfy domestic industry – but only for practicing entities (e.g., declining domestic investments, R&D prototypes, no product sales, product based on any claim of the patent, future products, 3rd party expenses, etc.).
- ITC continues to maximize its impact over IPRs (e.g., still no stay has been issued in view of IPR and staff is able to argue invalidity to avoid estoppel issues).
- Defaulting and consent orders continue to be a dangerous strategies at the ITC (e.g., Laerdal medical Fed. Cir. case and several cases related to penalties for violating consent orders).
- The ITC continues to be a patent owner friendly venue (e.g., win rates continue to be 60% and higher).
- The ITC continues to be a popular forum (filings remain relatively high).
Dr. Pallavi Seth, Principal
The Brattle Group, Inc.
- I have been a part of some very interesting cases this past year and was thinking of discussing the results as they pertain to domestic industry in the following two matters ‘1097 and ‘1109 (which also was a false advertising matter so I will address some economic issues related to that as well). Eric and I worked on ‘1073 together so could also discuss public interest economic issues and take aways from case.
Rachel Leos, Senior Director
- Recent Developments in Economic Domestic Industry
- Domestic Industry Product
- Recent Developments regarding an Article of Commerce (337-TA-1046)
- Complainant Economic Domestic Industry Activities
- Recent Trends regarding Manufacturing Activities
- Recent Developments regarding claiming engineering, research and development activities under Subsections (A) and (B) (337-TA-1057)
- Domestic Industry Product
- Recent Developments in Remedies
- EPROMS Factors
- Recent Developments regarding the EPROMS Factors (337-TA-1044)
- EPROMS Factors
John Peterson, Partner
Neville Peterson LLP
Section 337 Investigations and Enforcement – Moving IP Protection to New Fora
- A party seeking 337 protection from the ITC commits enforcement of its IP rights to agencies and courts that might not otherwise be involved.
- Example – One World Technologies, Inc. v. United States, (December 2018).
- Patent holder brings 337 action at ITC, secures Limited Exclusion Order against Competitor.
- Competitor asks Customs to rule that a new design gets around the patent claims; Customs rules no.
- Customs excludes shipment of allegedly infringing garage door openers; importer protests and proceeds to CIT.
- CIT on preliminary injunction motion, holds that redesigned products avoid the patents and allows them to enter the country.
- Patent holder is by law prohibited from intervening in the protest action that resolves interpretation of its patent claims.
- ITC is prevented from intervening as a party in protest action which concerns its Section 337 order.
- Review history of Section 337 litigants in CIT.
- Does a party consent to have its intellectual property determined by Customs and the CIT when it looks to the ITC for relief?
- Why is the CIT to hostile to patent holder participation?
- Review of prior CIT cases involving Section 337 orders
Blaney Harper's practice focuses on strategic patent litigation representing electronics, software, and information technology companies in matters such as patent enforcement in United States District Courts and the International Trade Commission (ITC). Blaney also represents and counsels clients concerning patent portfolio development and patent prosecution and appeal, including Inter Partes Review, in the USPTO. Blaney co-chairs the Firm's ITC practice and is the IP Practice Coordinator for the Washington Office.
Blaney's experience covers a broad cross-section of technology, including semiconductor structures, microprocessor architecture, memory, application-specific integrated circuits, and related hardware and software for applications such as wireless communications, fiber-optic networks, distributed computing, digital image processing, computational linguistics, computer controlled radiology, computer peripherals, accelerometers, and other electronic sensors. Blaney's engineering experience gives him keen insight into many technology issues.
Blaney has been the lead lawyer concerning infringement allegations on multiple patents on behalf of Cree Inc. (concerning LEDs), Imagination Technologies (concerning Graphic Processors), Vizio (TVs), Nexteer (auto parts), Qualcomm (communication circuits), Freescale (packaged semiconductors), Eastman Kodak Company (digital cameras), Sercel I/O (MEMs accelerometers), Lucent (internet infrastructure), and others.
Blaney has been recognized in Intellectual Asset Management (IAM) 1000 (2014-2017) ("a man of action who really knows how to drive a matter towards the right outcome for his client.") and in Managing Intellectual Property "2015 USIP Stars."
Blaney Harper's practice focuses on strategic patent litigation representing electronics, software, and information technology companies in matters such as patent …
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 …
Dr. Pallavi Seth has extensive experience in the areas of intellectual property and economic policy. She has assisted counsel for leading technology companies; trade associations; and government agencies.
Dr. Seth is an expert in Section 337 investigations at the ITC. Recently, in Clidinium Bromide (337-TA-1109), she assisted counsel for Virtus Pharmaceuticals and ECI Pharmaceuticals testifying on economic domestic industry. She recently also testified in Thermoplastic-Encapsulated Electric Motors (337-TA-1073) on public interest, assisting counsel for Denso, Aisin Seiki, Mitsuba, and Nidec. She has assisted in numerous other high-profile cases, including in Multimedia Display (337-TA-694) and Microprocessors (337-TA-781).
Her industry expertise includes high-tech and consumer products; commercial machinery and heavy equipment; financial institutions; and gaming industries.
Dr. Seth has assisted leading companies in over two dozen Section 337 investigations. She is Chair of the ABA-IPL ITC Committee and a frequent speaker at CLE events.
Dr. Pallavi Seth has extensive experience in the areas of intellectual property and economic policy. She has assisted counsel for …
John Peterson has practiced international trade and Customs law since 1977, and has enjoyed every minute of it. His practice embraces all phases of trade law, from counseling and import planning, to representation of clients before government agencies, and litigation in United States and foreign courts. Each new engagement allows him to learn about different industries, products, technologies and people. Whether the practice of law takes him to a high rise office tower in Asia, a factory on a Caribbean Island, or the control room of the Trans-Alaska pipeline, he relishes the opportunity to help clients solve problems and improve their operation.
John regularly represents foreign and domestic clients before United States Customs and Border Protection, the United States International Trade Commission, the United States Department of Commerce, the Foreign Trade Zones Board the Office of United States Trade Representative, the Bureau of Industry and Security, and the Departments of State and Treasury. He also assists clients with issues arising before foreign Customs authorities and international organizations, including the World Trade Organization and the World Customs Organization.
John Peterson has practiced international trade and Customs law since 1977, and has enjoyed every minute of it. His practice …
Rachel Leos is a Senior Director at FTI Consulting and is based in Dallas. Mrs. Leos has more than eleven years of professional experience in providing economic and financial analysis in complex business disputes over a variety of engagements. Mrs. Leos has extensive experience in disputes involving intellectual property, including matters brought before the United States International Trade Commission (“ITC”).
Mrs. Leos’ intellectual property experience includes matters involving patent, trademark and copyright infringement. She has experience in evaluating damages associated with lost profits, reasonable royalties and unjust enrichment. Her experience with ITC investigations includes performing financial and economic analysis to evaluate the existence of a domestic industry, the appropriate bond rate to protect the complainant from injury, the existence of commercially significant inventories, the appropriateness of limited and general exclusion orders, the EPROMs factors, the impact on the public interest if an exclusion order is issued, and the commercial success of products covered by asserted patents. Mrs. Leos has also performed analysis relevant to assessing civil penalties in ITC enforcement actions.
Mrs. Leos has directed or assisted clients in a variety of industries including telecommunications, automotive, technology, health care and entertainment, and consumer products, among others. Mrs. Leos has created and led CLE presentations and other training courses to various groups.
Prior to joining FTI Consulting, Mrs. Leos obtained a Bachelor of Science in Finance and International Business from the University of Maryland, College Park and went on to earn her J.D at Southern Methodist University School of Law. She has been licensed to practice Law in the State of Texas since November 2007.
Rachel Leos is a Senior Director at FTI Consulting and is based in Dallas. Mrs. Leos has more than eleven …
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Method Of Presentation:
General knowledge of international trade laws
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About Jones Day
Jones Day is a global law firm with more than 2,500 lawyers in 43 offices across five continents. The Firm is distinguished by: a singular tradition of client service; the mutual commitment to, and the seamless collaboration of, a true partnership; formidable legal talent across multiple disciplines and jurisdictions; and shared professional values that focus on client needs.
About Oblon, McClelland, Maier & Neustadt, L.L.P.
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 The Brattle Group, Inc.
Brattle 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 these 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.
We have assisted counsel for leading technology companies, including Samsung, Apple, Intel, Hewlett Packard, Nokia, Sony, Macronix, and Garmin.
About Neville Peterson LLP
Neville Peterson LLP is a law firm concentrating in international and domestic trade regulation matters. For more than 25 years, the firm has provided legal counsel and representation to foreign and domestic corporations and industries, governments, Customhouse brokers, freight forwarders, carriers and individuals in the areas of international trade, Customs law, export controls, intellectual property, antitrust, shipping, product safety, and related Federal regulatory disciplines.
The firm’s practice spans administrative representation, litigation and counseling before United States and foreign agencies, courts and international organizations.
About FTI Consulting
FTI Consulting, Inc. is a global business advisory firm dedicated to helping organizations manage change, mitigate risk and resolve disputes: financial, legal, operational, political & regulatory, reputational and transactional. With more than 4,600 employees located in 28 countries, FTI Consulting professionals work closely with clients to anticipate, illuminate and overcome complex business challenges and make the most of opportunities.
FTI Consulting’s Intellectual Property practice consists of seasoned professionals across multiple academic disciplines possessing a wealth of specialized knowledge allowing for in-depth consulting and expert witness assistance. FTI Consulting has worked on behalf of both Complainants and Respondents in performing a wide variety of economic, financial, accounting and quantitative analyses and have testified numerous times on such issues at the ITC. FTI Consulting Intellectual Property professionals are also familiar with the complex documents and information that are often relied upon in ITC Section 337 investigations as well as the accelerated schedule requirements of an ITC matter.