News & Analysis as of

Litigation Strategies International Trade Commission (ITC)

Proskauer - The Patent Playbook

Litigating Patents in the ITC: When and Why Companies Take the Section 337 Route

Formerly a niche venue for trade-related matters, the International Trade Commission (“ITC”) has emerged as a battleground for many high stakes intellectual property disputes, particularly in the technology, life sciences,...more

Mayer Brown

Examining New Guidance from the USPTO on Discretionary Denials in AIA Post-Grant Proceedings

Mayer Brown on

Recent changes at the US Patent and Trademark Office (USPTO) concerning the Patent Trial and Appeal Board's (PTAB) discretion to deny institution of inter partes reviews (IPRs) or post-grant reviews (PGRs) based on parallel...more

Holland & Knight LLP

New Guidance Regarding Fintiv Discretionary Denial at the PTAB

Holland & Knight LLP on

Two recent memoranda from the Patent Trial and Appeal Board (PTAB or Board) have sought to clarify the factors by which boards will evaluate discretionary denial under Fintiv. This guidance follows the U.S. Patent and...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: Amended Rules at the ITC

The U.S. International Trade Commission (“ITC”) recently amended its Rules and Regulations, making a number of changes to its discovery and complaint-filing procedures. The new rules went into effect on February 3, 2025. The...more

American Conference Institute (ACI)

[Event] 17th Annual Practitioners' Think Tank on ITC Litigation & Enforcement - March 31st - April 1st, Washington, DC

Examine real-world strategies for tackling the most pressing challenges in ITC practice at ACI’s 17th Annual Practitioners' Think Tank on ITC Litigation & Enforcement. Be in the same room with leading in-house counsel,...more

Wolf, Greenfield & Sacks, P.C.

Meet Meaghan Luster: Patent Litigation Associate at Wolf Greenfield

Meaghan Luster focuses her practice at Wolf Greenfield on patent litigation. Meaghan’s experience includes conducting pre-suit diligence, fact and expert discovery, claim construction, and motion practice in US district...more

American Conference Institute (ACI)

[Event] 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement - May 29th - 30th, Washington, DC

Returning to Washington in May, ACI’s 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement is your opportunity to learn from and network with key members of the ITC Bench, senior ITC Attorneys and leading...more

Wolf, Greenfield & Sacks, P.C.

[Hybrid Event] Damage Control: Mitigating ITC Remedial Orders with Effective Redesign and Parallel Litigation Strategies -...

Join litigation shareholder Libbie DiMarco as she breaks down the latest developments for mitigating ITC remedial orders with effective litigation strategies ranging from product redesigns (and when to introduce them) to PTAB...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Redesign and Remedy at the ITC - October 4th, 1:00 pm - 2:00 pm EDT

During the webinar, our presenters will discuss how to introduce redesigned products and use of the public interest factors in connection with remedy. Key takeaways will include: - Best practices to introduce a redesigned...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Strategic Use of the ITC as a Complainant - September 13th, 1:00 pm - 2:00 pm EDT

Directors Daniel E. Yonan, Uma N. Everett, and Josephine Kim will present the webinar "Strategic Use of the ITC as a Complainant" on Wednesday, September 13, 2023, at 1:00 PM (EDT). During the webinar, our presenters will...more

American Conference Institute (ACI)

[Event] 13th Summit on Biosimilars & Innovator Biologics - June 28th - 29th, Boston, MA

This June, join the “who’s who” of the biosimilars and innovator biologics industries as they gather in Boston for ACI’s 13th Annual Summit on Biosimilars & Innovator Biologics....more

Fish & Richardson

ITC Litigation: Domestic Industry Requirement

Fish & Richardson on

One aspect of ITC litigation that is unique to Section 337 actions and not present in typical IP litigation is the “domestic industry” requirement. This often taken-for-granted part of ITC litigation can be minor speedbump or...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 PTAB Year in Review: Analysis & Trends: PTAB Operation Under Phillips: Business as Usual with New Strategic Implications

One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more

Jones Day

ITC Excludes Expert Testimony for Violation of Ground Rules

Jones Day on

In a recently issued order, ALJ Lord granted-in-part and denied-in-part Respondents’ motion in limine to exclude certain testimony of Complainants’ expert. Certain Radio Frequency Microneedle Dermatological Treatment Devices...more

Jones Day

ITC Does Not Strictly Enforce the Daubert Standard for Expert Testimony

Jones Day on

In a recently issued pair of orders, ALJ Lord denied both Respondents’ and Complainants’ motions in limine to exclude certain expert testimony. Certain Radio Frequency Microneedle Dermatological Treatment Devices and...more

American Conference Institute (ACI)

[Event] Biosimilars Summit – Legal, Regulatory, and Commercial Strategies – June 24th-25th, New York City, NY

2019 marks the 9th anniversary of the Biologics Price Competition and Innovation Act (BPCIA). ACI has been with you from the introduction of the first House and Senate bills through to the actual signing of the law. As we...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - September 2018: Best Strategies for ITC Respondents When Considering a PTAB Action

When faced with allegations of patent infringement at the International Trade Commission (ITC), a respondent must quickly evaluate whether or not to request an AIA review (hereinafter, inter partes review for convenience) at...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - September 2018

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Mintz - Intellectual Property Viewpoints

International Trade Commission Clarifies the Intersection Between Litigation Funding Agreements and Standing

On April 18, 2018, the International Trade Commission (“Commission”) reversed an Administrative Law Judge’s (“ALJ”) finding that a litigation funding agreement destroyed standing for a complainant at the ITC. In Certain Audio...more

Jones Day

Owning the Patent Isn’t Always Enough for Standing

Jones Day on

In a recent Initial Determination (“ID”), Administrative Law Judge Lord ruled that a patent owner did not have standing to sue without joining a third party to which certain rights had been transferred. Certain Audio...more

Foley & Lardner LLP

Advancing New Claims Under the Lanham Act

Foley & Lardner LLP on

Implementing unique litigation tactics, on June 15, 2016, Foley & Larder LLP filed a complaint under Section 337 of the Tariff Act at the International Trade Commission (“ITC”) on behalf of Par Pharmaceutical and related...more

WilmerHale

Strategic Considerations of Estoppel for IPRs After Shaw Industries Group v. Automated Creel Systems

WilmerHale on

When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and...more

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