THE 337 LITIGATION SUMMIT - Brinks Gilson · event webinars —all included in ... To this point, it is our goal to process all CLE/CPD/CPE accreditation certificates within 4 weeks

THE 337 LITIGATION SUMMITThe Premier Litigation Summit for ITC Practitioners and In-House Counsel

June 27-28, 2013 | Hotel Monaco | Washington, DC

Join the Leaders of the 337 Litigation Community this June and meet With senior staff and Judges from the u.s. internationaL trade

Commission and Customs and Border ProteCtion—

Irving A. Williamson Chairman

Shara AranoffCommissioner

Hon. Charles E. Bullock Chief Administrative Law Judge

Hon. Theodore R. Essex Administrative Law Judge

Hon. Thomas B. Pender Administrative Law Judge

Hon. David P. Shaw Administrative Law Judge

Anne Goalwin Acting Director, OUII

Jean Jackson Assistant General Counsel

Erin D.E. Joffre Counsel

Juliana CofrancescoAttorney-Advisor

Sid RosenzweigAttorney-Advisor

Charles Steuart Chief, IPR & Restricted Merchandise Branch

attend the 337 Litigation summit and…• Gain up-to-date information on the status of revisions to the ITC rules of practice and procedure• Hear from the ITC Bench as they share with you trial tactics and recommendations on how to most effectively present your case• Learn how to best work with OUII and the General Counsel’s Office throughout a 337 investigation

BenChmark your 337 Litigation strategies With your in-house Peers– Vincent Castiglione General Counsel, Coby ElectronicsJerry Huang, Vice President, Legal Affairs, VizioDavid Killough Assistant General Counsel, MicrosoftPeter M. Roossien Chief Litigation Officer and Director of Legal Services–Europe, FreescaleJ. Ray Wood Chief Patent Officer, ZTE USAVanessa P. Bailey Senior Legal IPR Counsel–Litigation, Nokia Siemens NetworksRodger A. Sadler Patent Litigation Counsel, Intellectual Property Division, Canon U.S.A., Inc.

Join us for interactive workshops and up to three post event webinars—all included in the attendance fee. See page 5 for more details on how this summit differs from other industry events.

www.momentumevents.co/337litigationOfficial ReseaRch PaRtneR MeDia PaRtneRs

C RDCommercial Dispute Resolution

GLGGlobal Legal Group

Learning and netWork eVentsdesigned With your oBJeCtiVes in mind

Attend Momentum’s 337 Litigation Summit and gain behind-the- scenes secrets to achieving success in your next 337 investigation while meeting with senior staff and Judges from the U.S. International Trade Commission, your in-house peers and the leaders of the 337 bar.Particularly known for its speedy docket and powerful remedies, the U.S. International Trade Commission offers a double-edged sword to parties on both sides. Cited as the fastest venue for resolving high-stakes patent infringement claims, the U.S. ITC offers a remedy unlike any other venue in the U.S. – the power to exclude the importation of infringing products. A death knell to some manufacturers, an ITC exclusion order can spell disaster for a small business and millions of dollars in lost profits for large and mid-size corporate operations. Given the high risk, price tag and exposure associated with an ITC investigation, it is imperative that counsel come to the ITC well-equipped and best prepared to obtain successful results.

Specifically designed to provide counsel with a comprehensive overview of the unique nuances associated with practice before the Commission, the 337 Litigation Summit will provide attendees with proven litigation strategies and caselaw updates on current litigation challenges facing ITC practitioners, including:

• Third party subpoenas and international discovery–cost-effective strategies and practical strategies for obtaining the information you want

• Practice tips on how to successfully negotiate protective orders to shield key CBI in 337 investigations

• How to effectively manage parallel proceedings at the ITC, federal district court and international venues

• Successful strategies for approaching Commission review and appeal–how to best position your case for Commission review and preserve key issues for appeal to the Federal Circuit

Gain answers to and pose your most pressing questions directly to the ITC Bench and senior Commission staff during the following keynote addresses and panel discussions:

• View from the ITC Bench • View from the 7th floor • ITC Rules Update • How to Work Best with OUII Throughout a 337 Investigation • Commission and Judicial Review of the Initial Determination

Benchmark with your in-house peers during the Roundtable Discussion on Making the Decision to Go to the ITC: A Discussion of Key Factors and Considerations for In-House Counsel.

Don’t miss this opportunity to gain specific information on a quickly-evolving, niche area of IP law. Register now to reserve your space at this unique 337 litigation event and join your colleagues in the industry for two days of networking, benchmarking and learning as you gain practical and proven strategies for a achieving success the next time you go to the ITC.

To register visit us online at momentumevents.co/337litigation

Included as part of the Summit, select from one of the following practical working group sessions and gain in-depth information on specific ITC litigation issues:

•CBPEnforcementofITCExclusionOrders— How to Ensure Your Patent Rights Are Properly Enforced Post-337 Investigation

•337LitigationStrategiesforComplainants,RespondentsandIntervenors— How to Best Position Your Theory of the Case in the Complaint, Response or Counterclaim

aBout the Venue

Who you WiLL meet at the 337 Litigation summit

HOTEL MONACO 700 f st nW, Washington, dC 20004, Phone: 202.628.7177The premier litigation summit for ITC practitioners and in-house counsel, the 337 Litigation Summit will take place at the renowned Hotel Monaco, the original site of the Tariff Commission, later named what we now know as the U.S. International Trade Commission.

Located within walking distance of our nation’s capitol and in the lively heart of Chinatown and the Penn Quarter, attendees of the 337 Litigation Summit will be provided with complimentary Wi-Fi access both in the meeting room and hotel room. Stay connected to the office without missing out on the valuable information sharing, benchmarking and networking that will take place!

An ideal downtown location, this boutique hotel puts you within walking distance of our capitol’s countless attractions. Matched by luxury amenities and signature Kimpton Hotel hospitality—from soaring ceilings to eclectic, colorful furnishings, the Hotel Monaco offers something extraordinary for an unforgettable stay in Washington DC.

In-houseleaders from within the computer,technology,consumergoodsandelectronics,telecommunicationsand lifesciencesindustries for:

• Intellectual property • Litigation • International IP litigation • Litigation management• IP licensing • Patents • Patent portfolio management • International trade • Customs

“Who’sWho”ofthe337litigationbar, including counsel from top-ranked practices who have been directly involved with recent, high profile investigations and Customs enforcement

SeniorofficialsfromtheU.S.InternationalTradeCommission and U.S.CustomsandBorderProtection, including representatives from the following offices:

• The Office of the Chairman • The Office of the Commissioners • Intellectual Property Rights• Unfair Import Investigations • Administrative Law Judges and Restricted Merchandise • General Counsel Branch

momentumevents.co/337litigation


aBout momentum

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POST EVENT ACTIVATION WEBINARSWe offer up to three free post-event webinars to help maintain your connection with fellow attendees and continue your learning months after the conference concludes.

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We understand that there is just too much information provided at our events for just one person to capture it all. Even more importantly, as Momentum remains conscious of the budget challenges that most businesses still face in today’s economy, we believe that it doesn’t take 3 or more to be a group—bring just one colleague along with you to an event and the pair receive a discount.

Bring one colleague (group of 2 in total)Both receive 10% off registration.

Bring two colleagues (group of 3 in total) All three receive 15% off registration.

Bring three colleagues or more (group of 4 or more) All four receive 25% off registration.

ATTENDEEDISCOUNTS

thursday, June 27, 2013 7:45 AM Registration

8:30 AM Workshops

Working grouP sessions

Workshops are included in the cost of registration. Please indicate which session you plan on attending upon registration.

WORksHOp A

CBP enforCement of itC exCLusion orders: hoW to ensure your Patent rights are ProPerLy enforCed Post-337 inVestigation• Overview of CBP’s jurisdiction and enforcement authority pursuant to ITC exclusion orders– LEOs, GEOs, seizure and forfeiture orders, downstream products• Understanding how the CBP enforcement process works– ° Scope and limits ° The hearing process ° Interaction between the Office of Regulations and Rulings, IPR Branch and the Office of Field Operations • Addressing the impact that product improvements can have on the enforcement of an exclusion order• Defining “downstream” as applicable to a manufacturer or distributor–addressing current legal theories concern re-designs and work arounds• Parts and components–distinguishing and analyzing when part of an infringing product• Addressing lessons learned from recent cases featuring Customs enforcement of ITC exclusion orders

WORksHOp B

337 Litigation strategies for ComPLainants, resPondents and interVenors: hoW to Best Position your theory of the Case in the ComPLaint, resPonse or CounterCLaim• Assessing the who and what of the complaint– deciding who to sue and what IP to challenge• Discussing the most common theories of infringement asserted in 337 investigations– selecting the best theory based on the strength of your IP • When to file a motion for temporary relief• Termination and withdrawal of the complaint– under that circumstances it can be done and considering the impact on the case• Raising relevant jurisdiction challenges before or after an investigation has been instituted– standing, domestic industry• Asserting your position as a respondent pre-institution during the public interest comment period• Overview of common responses, counterclaims and available defenses in 337 investigations



10:00 AM Coffee Break

CLE AccreditationIn our effort to ensure that the accreditation process is smooth and that each attendee who applies for credit receives his/her certification promptly after attending an event, Momentum works closely with each state in which CLE accreditation is sought. To this point, it is our goal to process all CLE/CPD/CPE accreditation certificates within 4 weeks of attending a Momentum event. For questions regarding the status of your CLE/CPD/CPE application or to obtain a copy of your certificate please contact our CLE Coordinator at [email protected] can also download our Uniform Certificate of Attendance directly from our website by visiting: momentumevents.co/cle-accreditation

Bert C. Reiser Partner Latham & Watkins LLP

J. Ray Wood Chief Patent Officer ZTE USA

Brian Busey, Partner Morrison & Foerster

Charles Steuart, Chief IPR & Restricted Merchandise Branch, U.S. Customs and Border Protection

thursday, June 27, 2013 10:15 AM Summit Welcome and Chairs’ Introductions

10:30 AM ITC Judge’s Roundtable

the VieW from the itC BenCh and PraCtiCe reCommendations for CounseLDuring this session hear directly from the Office of Administrative Law Judges as they share with you their thoughts on emerging trends in 337 litigation as well as practice recommendations for counsel on how to most effectively present your case to the bench. Key topics to be addressed by the panel include: • Ediscovery, evidence and witnesses • Claims and theories of infringement • Working with opposing counsel – communication, negotiation and settlement • Practices and procedures of the court and individual judges

Time will be reserved at the conclusion of the panel for Q&A

12:00 pM ITC Keynote Address

the VieW from the Chairman’s offiCe

12:30 pM Networking Luncheon

1:45 pM Panel Discussion

Patent hoLd-uP and standard essentiaL Patents at the itC: an examination of key issues for smartPhone manufaCturers engaged in Litigation at the itC • Overview of the FTC-Google consent order– ° Guidance for manufacturers ° Addressing the impact of this order on the enforcement/licensing of non-standard essential patents • Assessing the correlation between royalty rates paid for standard essential patents and injunctions as part of an overall litigation strategy • How to use the standard setting process to ensure fair, reasonable and non-discriminatory (FRAND) terms are negotiated in settlement agreement involving a standards essential patent • Evaluating the precedential value of a litigated FRAND license and the impact on settlement negotiations in an ITC action • Exclusion orders and standards essential patents – under what circumstances should they be granted at the ITC • Contrasting the treatment of standards essential patents at the ITC vs. federal district court

main ConferenCe agenda



Vanessa P. Bailey, Senior Legal IPR Counsel–Litigation Nokia Siemens Networks US LLC

Eric J. Fues, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP President, ITC Trial Lawyers Association

Hon. Charles E. Bullock, Chief Administrative Law Judge, U.S. International Trade Commission

Hon. Theodore R. Essex, Administrative Law Judge, U.S. International Trade Commission

Hon. Thomas B. Pender, Administrative Law Judge, U.S. International Trade Commission

Hon. David P. Shaw, Administrative Law Judge, U.S. International Trade Commission

Moderator: Barbara Murphy, Member, Foster, Murphy, Altman & Nickel, PC.

David Killough, Assistant General Counsel, Microsoft Corporation

John D. Harkrider, Partner, Axin Veltrop Harkrider LLP

Benjamin Levi, Principal, McKool Smith

Irving A. Williamson, Chairman, U.S. International Trade Commission

main ConferenCe agenda (Continued)

thursday, June 27, 20132:30 pM Case Study

oVerVieW of the year’s toP 5 inVestigations addressing the eVoLution of the domestiC industry requirement: deBating the eConomiC and teChniCaL ProngsDuring this session take part in an interactive discussion of the year’s top five 337 investigations exploring the domestic industry requirement. Take note as you are provided with a comprehensive overview of the most prominent investigations that have litigated this issue over the past year. Learn how key terms within the scope of the economic and technical prongs are being interpreted by the Bench as well as arguments that can be made by parties on either side in proving satisfaction of this contentious requirement. Topics to be discussed during the session include: • A dissection of key domestic industry terms and requirements– ° Economic prong– • “Substantial Investment”– understanding what form of licensing activity and/or R&D spend qualifies to meet the standard • Domestic activities vs. worldwide activities ° Technical prong– • “Nexus”– establishing a sufficient connection between the IP at issue in the investigation and the licensing/R&D activity (examining the financial investment) • Sufficiency of licensing activity involving the IP at stake in the investigation– portfolio vs. product licensing • Overview of recent cases litigating the domestic industry requirement • Examination of prominent corporate positions on both sides

3:00 pM Coffee Break3:15 pM Panel DiscussionhoW to Best Work With ouii throughout a 337 inVestigation: from Pre-institution examination through initiaL determination and reVieW A unique feature of Section 337 investigations is the Office of Unfair Import Investigations (“OUII”). OUII is an independent party in the investigation and effective litigation at the ITC requires a full appreciation of its role. During this session, take note as Ms. Goalwin and Mr. Fusco address the following topics: • Understanding the purpose, role and function of OUII in Section 337 investigations • Pre-filing review of your complaint by OUII–what it is, what it isn’t, and how to benefit from it • OUII’s participation in a Markman hearing and how it is relevant to your case • How OUII can help when it comes to settlement and resolving discovery disputes • Understanding OUII’s role in the proceedings following the Initial Determination


a VieW from the 7th fLoorShara Aranoff, Commissioner, U.S. International Trade Commission Jean Jackson, Assistant General, Counsel, U.S. International, Trade Commission Juliana Cofrancesco, Attorney-Advisor, U.S. International Trade Commission

5:00 pM Summit Summary and Adjourn to Day Two



Marcia H. Sundeen, Partner, Kenyon & Kenyon LLP

Anne Goalwin, Acting Director, Office of Unfair Import Investigations, U.S. International Trade Commission

Thomas Fusco, Of Counsel, Fish & Richardson


friday, June 28, 2013 8:30 AM Chair’s Remarks

8:45 AM ITC Rules Update

add ressing neW and ProPosed amendments to the ruLes of PraCtiCe and ProCedureimPaCting on itC inVestigations, adJudiCation and enforCementUndertaken to “make certain technical corrections, clarify certain provisions, harmonize different parts of theCommission’s rules, and address concerns that have arisen in Commission practice,” the proposed amendmentsto the current rules governing ITC practice at CFR Parts 201 and 210 address several key areas of 337 practiceincluding pleadings, motions and most importantly, discovery. Initially published at the end of 2012, it isanticipated that the proposed rulemakings will have been finalized by the date of this event. Take note duringthis session as you are brought up to speed regarding the current status of the proposed rulemakings while alsogaining firsthand insight from the Commission on what impact the changes in final form will have on 337 practice.

Erin D.E. Joffre, Counsel to Commissioner David S. Johanson, U.S. International Trade CommissionEric S. Namrow, Partner, Morgan, Lewis & Bockius

9:30 AM Panel Discussion

hoW to effeCtiVeLy resPond to and seek third Party suBPoenas and Pursue internationaL disCoVery in 337 inVestigations • Distinguishing the types of subpoenas that can be issued to third parties to obtain discovery and the information that can be requested by each–subpoena ad testificandum vs. subpoena duces tecum • Discussing when the circumstances are ripe for filing a motion to limit or quash a subpoena • How to effectively assert an objection to a nonparty discovery subpoena • Delineating when a company has control over a sister or parent company’s documents so as to be included under the reach of a subpoena • How to prepare for unique challenges created by international discovery at the ITC–cultural and language differences, special procedural requirements, foreign legal restrictions • How to deal with foreign objections to 337 discovery procedures • Practical tips for arranging for and taking the deposition of foreign witnesses including foreign corporate personnel

10:30 AM Coffee Break

10:45 AM Panel Discussion

PraCtiCe tiPs for suCCessfuLLy negotiating ProteCtiVe orders to shieLd key CBi in 337 inVestigations • Distinguishing protective orders sought to limit or prevent discovery vs. those issued by an ALJ to protect CBI • How to effectively seek protection of key CBI including source code and other important and sensitive information in your protective order • Tips for clearly delineating prohibited individuals in the protective order • Discussing expert access to information covered by a protective order • When and how to seek declassification of documents that have been designated as confidential • Overview of sanctions for violations of a protective order • Retention and destruction of CBI–when and how to retain certain information without being in violation of a protective order



Peter M. Roossien, Chief Litigation Officer and Director of Legal Services–Europe Freescale Semiconductor

Paul F. Brinkman, Partner Quinn Emanuel Urquhart & Sullivan LLP

J. Ray Wood, Chief Patent Officer, ZTE USA Jamie D. Underwood, Partner, Alston & Bird LLP


friday, June 28, 2013 11:30 AM Panel Discussion

settLement strategies for 337 inVestigations: hoW to Bring your Case to a CLose WhiLe negotiating LiCensing terms that WiLL minimize doWnstream Litigation exPosure • Knowing when and how to approach settlement–tips for balancing competing interests to facilitate the outcome you want • How to reach a deal with a licensor who commands a large market share • Addressing special settlement challenges created by standards essential patents • Negotiating royalty rates and licensing terms – how to identify a “fair” rate • How to work effectively with Commission staff during the settlement negotiation process • Making your case to the court–how to convince the Judge that the proposed settlement agreement poses no objectionable public interest issue • How to protect the behind-the-scene financial details of your settlement agreement–addressing disclosure to non-parties

12:30 pM Networking Luncheon

1:45 pM In-House Roundtable Discussion

making the deCision to go to the itC: a disCussion of key faCtors and Considerations for CorPorate CounseL During this session hear from senior IP litigation counsel as they discuss with you what factors weigh in favor of and against utilizing the ITC as the forum for asserting key patent rights. Learn how in-house counsel assess the strength of the IP at stake as well as the claims and theories that will be asserted in the case to make an ultimate decision regarding venue.

Time will be reserved for Q&A with the panel at the conclusion of the session.


strategiC ProCeduraL Considerations for effeCtiVeLy managing ParaLLeL ProCeedings: itC, federaL distriCt Court, reexamination, internationaL Venues • Timing–deciding when to pursue an ITC investigation vs. federal district court, patent reexamination or international action • Discovery–understanding the challenges of discovery across venues, including motion practice, timing of and responses to discovery requests, witnesses, depositions, foreign parties • Contrasting remedies available in each jurisdiction and the pros and cons of each depending on your litigation objective • Understanding the impact on district court litigation of key terms in the AIA

3:30 pM Coffee Break



Vanessa P. Bailey, Senior Legal IPR Counsel – Litigation, Nokia Siemens Networks US LLC

Vincent Castiglione, General Counsel, Coby Electronics Corporation

Lyle Vander Schaaf, Managing Partner, Washington, D.C. Office, Brinks Hofer Gilson & Lione

Rodger A. Sadler, Patent Litigation Counsel, Intellectual Property Division, Canon U.S.A., Inc.

Stefani E. Shanberg, Partner,Wilson Sonsini Goodrich & Rosati

Tony V. Pezzano, Partner, King & Spalding

Jerry Huang, Vice President, Legal Affairs, Vizio, Inc.


friday, June 28, 2013 3:45 pM Panel Discussion

Commission and JudiCiaL reVieW of the initiaL determination: suCCessfuL strategies for aPProaChing reVieW and aPPeaL During this session hear from seasoned ITC counsel as they provide an overview of how to effectively petition for review of an ID through the use of temporary and permanent relief proceedings. Gain proven strategies for asserting your position on specific issues and patent claims as well as tips for preserving key issues for further appeal to the Federal Circuit.


foCus on key Changes and emerging trends in the itC Litigation LandsCaPe and hoW to PrePare for What’s next

5:15 pM Open Q&A and Chairs’ Closing Remarks

5:30 pM Summit Concludes


Sid Rosenzweig, Attorney-Advisor, U.S. International Trade Commission

Jamie Beaber, Partner, Steptoe & Johnson LLP

Jonathan Engler, Partner, Adduci, Mastriani & Schaumberg, LLP

Vanessa P. Bailey, Senior Legal IPR Counsel– Litigation, Nokia Siemens Networks US LLC

Eric J. Fues, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, President, ITC Trial Lawyers Association

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THE 337 LITIGATION SUMMIT - Brinks Gilson · event webinars —all included in ... To this point, it is our goal to process all CLE/CPD/CPE accreditation certificates within 4 weeks