HomeWebcastSignificant Trends and Updates in the ITC Section 337 Investigations
Online CLE ITC Section 337 CLE

Significant Trends and Updates in the ITC Section 337 Investigations

Live Webcast Date: Tuesday, July 09, 2019 from 3:00 pm to 4:00 pm (ET)
Intellectual Property Law (CLE)Recording

Online CLE ITC Section 337

Join us for this Knowledge Group Online CLE ITC Section 337 Webinar. With 74 new complaints filed in fiscal year 2018, the International Trade Commission (ITC) remains to be an attractive forum for intellectual property (IP) litigation. However, in recent years, Section 337 investigations on non-patent claims have also significantly increased. These non-statutory complaints include trade secret theft, antitrust, unfair competition, and false advertising claims. Complainants recognize the perceived effectiveness of Section 337 remedies which make the ITC a favorable venue for both statutory and non-statutory claims.

Join a panel of key thought leaders and professionals assembled by The Knowledge Group as they bring the audience to a road beyond the basics of prosecuting and/or defending against ITC claims and as they delve into the depth-analysis of the current trends and recent investigations. Speakers will also provide the audience with practical strategies in bringing out the best in these disputes in a rapidly evolving legal climate.

Key topics include:

  • The Federal Circuit and ITC: Recent Issues
  • Recent Trends in Non-Statutory Section 337 Investigations: Notable Cases
  • Asserting Claims Between Statutory and Non-Statutory Section 337 Investigations
  • Next Wave of Non-Statutory Section 337 Investigations
  • Economic Experts in Non-statutory Section 337 Investigations

Agenda

SEGMENT 1:
Blaney Harper, Partner
Jones Day
  • The Federal Circuit confirmed on May 1, 2019, that the Court has jurisdiction to review the ITC’s decision not to institute an investigation.  Amarin Pharma, Inc. v. Int’l Trade Comm’n, No. 2018-114, 2019 WL 1925649 (Fed. Cir. May 1, 2019). 
  • The Federal Circuit has created confusion (circuit split) by holding that, like patent decisions, ITC decisions pertaining to trademark infringement and validity are not entitled to preclusive effect.  Swagway v ITC, No. 2018-1672 (May 9, 2019).  The Court reached its conclusion because it saw “no reason to differentiate between the effect of the Commission’s patent-based decisions and the Commission’s decisions regarding trademarks.”  However, other circuits have reached a different conclusion.
  • The recent trend of IPR institution denials in view of upcoming trial dates in related district court cases suggests IPRs may be even less important for ITC cases.
  • The recent government shutdown do not seem to have any lasting effects at the ITC – it is business as usual.
  • The  ITC continues to expand 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, 3rdparty expenses, etc.).

SEGMENT 2:
Ryan N. Herrington, Managing Director
FTI Consulting
  • Recent Trends regarding Non-statutory Section 337 investigations
    • Types (common law trademark, trade secret, trade dress, unfair competition, false advertising)
    • Filings
    • Decisions
      • Swagway, LLC v. ITC , No. 2018-1672 (Fed. Cir. May 9, 2019) – Federal Circuits extends non-preclusion rule to ITC’s findings in trademark cases
      • Certain Carbon and Alloy Steel Products, Inv. No. 337-TA-1002, Comm’n Op. (Mar. 19, 2018) – antitrust injury must be alleged along with price-fixing as an unfair act at ITC (first alleged antitrust violation in more than 25 years at ITC)
  • Similarities & Differences in Asserting Claims between Statutory and Non-statutory Section 337 investigations
    • Unfair Competition or Unfair Act
    • Importation, Sale for Importation, or Sale after Importation
    • Existence of a Domestic Industry
      • Technical & Economic Prong
      • Nexus to Accused Product / IP
    • Injury to Domestic Industry
      • Actual substantial injury
      • Threat of substantial injury
  • Next Wave of Non-statutory Section 337 investigations
    • Trade Secret (post TianRui)
      • Recent decisions
      • Active investigations / relevant first-hand experience
    • False Advertising
      • Recent decisions
      • Active investigation / relevant first-hand experience
    • Unfair Competition/Tortious Interference (Gray Market)
      • Recent decisions
      • Active investigations / relevant first-hand experience
  • Considerations regarding need for Economic Expert in Non-statutory Section 337 Investigations

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
  • Other Related and Interested Professionals

Preview Podcast

Please click the podcast below to hear the speakers discuss the key topics for this webcast.

Online CLE ITC Section 337

SEGMENT 1:
Blaney Harper, Partner
Jones Day
  • The Federal Circuit confirmed on May 1, 2019, that the Court has jurisdiction to review the ITC’s decision not to institute an investigation.  Amarin Pharma, Inc. v. Int’l Trade Comm’n, No. 2018-114, 2019 WL 1925649 (Fed. Cir. May 1, 2019). 
  • The Federal Circuit has created confusion (circuit split) by holding that, like patent decisions, ITC decisions pertaining to trademark infringement and validity are not entitled to preclusive effect.  Swagway v ITC, No. 2018-1672 (May 9, 2019).  The Court reached its conclusion because it saw “no reason to differentiate between the effect of the Commission’s patent-based decisions and the Commission’s decisions regarding trademarks.”  However, other circuits have reached a different conclusion.
  • The recent trend of IPR institution denials in view of upcoming trial dates in related district court cases suggests IPRs may be even less important for ITC cases.
  • The recent government shutdown do not seem to have any lasting effects at the ITC – it is business as usual.
  • The  ITC continues to expand 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, 3rdparty expenses, etc.).

SEGMENT 2:
Ryan N. Herrington, Managing Director
FTI Consulting
  • Recent Trends regarding Non-statutory Section 337 investigations
    • Types (common law trademark, trade secret, trade dress, unfair competition, false advertising)
    • Filings
    • Decisions
      • Swagway, LLC v. ITC , No. 2018-1672 (Fed. Cir. May 9, 2019) – Federal Circuits extends non-preclusion rule to ITC’s findings in trademark cases
      • Certain Carbon and Alloy Steel Products, Inv. No. 337-TA-1002, Comm’n Op. (Mar. 19, 2018) – antitrust injury must be alleged along with price-fixing as an unfair act at ITC (first alleged antitrust violation in more than 25 years at ITC)
  • Similarities & Differences in Asserting Claims between Statutory and Non-statutory Section 337 investigations
    • Unfair Competition or Unfair Act
    • Importation, Sale for Importation, or Sale after Importation
    • Existence of a Domestic Industry
      • Technical & Economic Prong
      • Nexus to Accused Product / IP
    • Injury to Domestic Industry
      • Actual substantial injury
      • Threat of substantial injury
  • Next Wave of Non-statutory Section 337 investigations
    • Trade Secret (post TianRui)
      • Recent decisions
      • Active investigations / relevant first-hand experience
    • False Advertising
      • Recent decisions
      • Active investigation / relevant first-hand experience
    • Unfair Competition/Tortious Interference (Gray Market)
      • Recent decisions
      • Active investigations / relevant first-hand experience
  • Considerations regarding need for Economic Expert in Non-statutory Section 337 Investigations

Online CLE ITC Section 337

Online CLE ITC Section 337

Blaney HarperPartnerJones Day

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."

Online CLE ITC Section 337

Ryan N. HerringtonManaging DirectorFTI Consulting

Mr. Herrington’s intellectual property experience includes matters involving patent, trademark and copyright infringement as well as trade secret misappropriation. He has experience in evaluating damages associated with lost profits, reasonable royalties, unjust enrichment, and disgorgement of profits. Mr. Herrington’s experience with ITC investigations includes evaluating the existence of a domestic industry, the appropriateness and scope of a Cease and Desist Order, the amount of a bond to protect the complainant from injury, the EPROMs factors, the current business conditions associated with a general exclusion order, the impact on the public interest if an exclusion order is issued, and the commercial success of products practicing the patents. Mr. Herrington has also participated in ITC enforcement proceedings. Mr. Herrington co-authored a chapter in the Litigation Services Handbook on the role of financial experts in ITC investigations.

Mr. Herrington has assisted clients in a variety of industries including telecommunications, technology, banking, health care and entertainment, among others. Mr. Herrington has presented to various law firms and groups and has also authored articles for inclusion in multiple trade journals.

Engagements that Mr. Herrington has directed or assisted on have centered on disputes in areas such as antitrust; breach of contract; breach of fiduciary duty; intellectual property; lost profits / earnings; false advertising; and wage and hour. In addition, Mr. Herrington has been involved in forensic accounting and fraud investigations. Mr. Herrington’s experience encompasses the entire litigation cycle including but not limited to discovery; damage analysis; preparation of expert reports; critique of analyses propounded by opposing experts; preparation for deposition and/or trial testimony; and preparation of demonstrative exhibits.

Prior to joining FTI Consulting, Mr. Herrington provided litigation consulting services at Analysis Group as well as dispute analysis and investigation services at PricewaterhouseCoopers.

Mr. Herrington holds an M.B.A. from the University of Texas at Dallas. Mr. Herrington also received a B.B.A. in finance from Texas A&M University. Mr. Herrington is a Certified Fraud Examiner and a member of the Association of Certified Fraud Examiners. Mr. Herrington is also a member of the Licensing Executives Society.


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Online CLE ITC Section 337

Course Level:
   Intermediate

Advance Preparation:
   Print and review course materials

Method Of Presentation:
   On-demand Webcast

Prerequisite:
   General knowledge of international trade laws

Course Code:
   148102

NY Category of CLE Credit:
   Areas of Professional Practice

Total Credit:
    1.0 CLE

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About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

About the Knowledge Group

The Knowledge Group

The Knowledge Group has been a leading global provider of Continuing Education (CLE, CPE) for over 13 Years. We produce over 450 LIVE webcasts annually and have a catalog of over 4,000 on-demand courses.

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.

Website: https://www.jonesday.com/

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 at the ITC.

Website: https://www.fticonsulting.com/

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."

Mr. Herrington’s intellectual property experience includes matters involving patent, trademark and copyright infringement as well as trade secret misappropriation. He has experience in evaluating damages associated with lost profits, reasonable royalties, unjust enrichment, and disgorgement of profits. Mr. Herrington’s experience with ITC investigations includes evaluating the existence of a domestic industry, the appropriateness and scope of a Cease and Desist Order, the amount of a bond to protect the complainant from injury, the EPROMs factors, the current business conditions associated with a general exclusion order, the impact on the public interest if an exclusion order is issued, and the commercial success of products practicing the patents. Mr. Herrington has also participated in ITC enforcement proceedings. Mr. Herrington co-authored a chapter in the Litigation Services Handbook on the role of financial experts in ITC investigations.

Mr. Herrington has assisted clients in a variety of industries including telecommunications, technology, banking, health care and entertainment, among others. Mr. Herrington has presented to various law firms and groups and has also authored articles for inclusion in multiple trade journals.

Engagements that Mr. Herrington has directed or assisted on have centered on disputes in areas such as antitrust; breach of contract; breach of fiduciary duty; intellectual property; lost profits / earnings; false advertising; and wage and hour. In addition, Mr. Herrington has been involved in forensic accounting and fraud investigations. Mr. Herrington’s experience encompasses the entire litigation cycle including but not limited to discovery; damage analysis; preparation of expert reports; critique of analyses propounded by opposing experts; preparation for deposition and/or trial testimony; and preparation of demonstrative exhibits.

Prior to joining FTI Consulting, Mr. Herrington provided litigation consulting services at Analysis Group as well as dispute analysis and investigation services at PricewaterhouseCoopers.

Mr. Herrington holds an M.B.A. from the University of Texas at Dallas. Mr. Herrington also received a B.B.A. in finance from Texas A&M University. Mr. Herrington is a Certified Fraud Examiner and a member of the Association of Certified Fraud Examiners. Mr. Herrington is also a member of the Licensing Executives Society.

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