ITC Litigation: Current Trends, Developments, and Strategies for Litigants

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Patent
- event Date
Tuesday, June 7, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will examine recent trends and developments, as well as who should use the International Trade Commission (ITC) and how to prepare for ITC litigation. The panel will also discuss some of the practical aspects of litigating at the ITC, including fact discovery, expert reports and examination, and pre-hearing motions. The panel will offer best practices and strategies for ITC litigation.
Faculty

Mr. Gramenopoulos has more than 20 years of experience in the field of intellectual property law. He handles patent matters for emerging and high-technology companies in various electrical sciences, including computer hardware/architecture, software, communication networks, and digital signal processing and control systems. Mr. Gramenopoulos counsels both domestic and foreign clients. A significant portion of his current practice is devoted to strategic counseling on patent procurement and pre-litigation activities, opinion preparation on issues relating to infringement and validity, and patent infringement litigation. He has a significant base of European clientele, gained in part through his five-year tenure in the firm’s European office in Brussels. Through his knowledge of both U.S. and foreign patent systems, Mr. Gramenopoulos applies a unique global perspective to advise clients on worldwide filing and licensing strategies. He has also successfully represented clients in U.S. district court and multi-national patent infringement suits. Mr. Gramenopoulos has overseen the drafting and prosecution of hundreds of patent applications, and assisted clients with strategically building and managing their portfolios. He has also assisted clients with extracting value from their portfolios through licensing and other strategies. A frequent lecturer on U.S. IP law, Mr. Gramenopoulos has spoken before numerous Fortune 500 companies and organizations in the U.S., as well as various multi-national companies and law firms throughout the world and served as leader of the firm’s electrical and computer technology practice group.

Mr. Skoyles focuses on patent litigation in district and appellate courts and at the U.S. International Trade Commission (ITC). His experience includes many areas of pre-trial preparation, such as conducting infringement and validity analyses, responding to discovery requests, drafting motions, and working with expert witnesses. He has handled all aspects of patent litigation, including assisting experts in the preparation of expert reports and conducting expert depositions. He also represents clients involved in patent challenges in post-grant proceedings before the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO). He has particular technical experience with electrical engineering and information technology, including semiconductor design and processing, computer software, video game controllers, optical filters, medical devices, and database design. While a graduate student, he researched and developed micro-scale manipulators for a broad range of applications using semiconductor processing techniques. He is involved in the preparation and prosecution of patent applications, and has handled multiple applications at different stages of prosecution.
Description
The ITC is an increasingly popular venue for enforcing patents and other IP rights. Because most IP disputes involve complex issues, it is critical for litigation counsel to have a thorough understanding of ITC practice and procedure. Litigation counsel also need to consider the potential impact of parallel litigation or patent validity challenges.
ITC proceedings are fast-tracked and leave little room for error. To achieve success, ITC complainants must thoroughly prepare their case in advance of filing the complaint. Further, validity challenges must be weighed and considered. Pending ITC investigations can increase the potential of the Patent Trial and Appeal Board (PTAB) denying institution of an IPR under its Fintiv decision. Will this continue going forward?
Listen as our authoritative panel of patent attorneys examines ITC litigation. The panel will discuss recent trends and developments, who should use the ITC, and how to prepare for ITC litigation. The panel will also discuss litigating at the ITC, including discovery, expert reports, pre-hearing motions, and appeals. The panel will offer best practices for ITC litigation.
Outline
- Introduction
- What is the ITC and how are investigations conducted?
- How does it differ from district court litigation?
- Who should use the ITC?
- Basic requirements for filing a complaint based on patent infringement
- Establishing a domestic industry
- Filing trends and litigation statistics
- How to prepare for an ITC litigation?
- Mapping your strategy
- Gathering evidence and identifying the accused articles
- Drafting the complaint and outlining your discovery needs
- Assembling your experts and positions
- Litigating at the ITC
- What to expect after the complaint is filed
- How to manage discovery?
- Can IPRs and parallel litigations influence an ITC investigation?
- Expert reports and pre-hearing motions
- ITC hearing and appeals
Benefits
The panel will review these and other noteworthy issues:
- What are the main differences between litigating in the federal district courts and the ITC?
- What steps should counsel take to prepare for an ITC litigation?
- How best to gather evidence and prepare the complaint?
- What impact could a pending ITC investigation have on IPR institution?
- Key considerations for ITC hearings and appeals
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