Strategies for ITC Success: Insights from the Client Perspective | Sterne, Kessler, Goldstein & Fox P.L.L.C.

Webinar Takeaways

In a recent presentation featuring Uma Everett, Director at Sterne Kessler, and Dallin Glenn, General Counsel at BTL Industries, Inc., we discussed strategies for succeeding in an ITC investigation, focusing primarily on the critical preparation needed before filing a complaint. Here are some highlights on best practices before filing an ITC action.

1. Investigate facts to establish both affirmative and defensive positions.
   • Complainants are called on to produce this information and it should be investigated prior to filing so you are not spending valuable time later trying to identify this information. There is benefit in early preparation with the tight timeline of an ITC investigation. These facts include:
     • Domestic industry
     • R&D – understand how was the product developed
     • Sales – while there are no damages in an ITC action, understand the economics and sales revenue as well as inventory levels which relate to commercial success of the product, a cease-and-desist order, and bond
     • Launch/first sale
     • Operation of product – be prepared to discuss how the product works, what information is provided to consumers, what is included in the marketing materials
2. Identify public v. confidential business information (CBI) and the basis for your claim
   • The Commission wants the public to have as much information as possible in support of its decision in an investigation. Parties need to clearly identify what information is public and what information needs to be kept confidential and the basis. This often requires significant time from the in-house team as well as other key stakeholders in the business. Once information goes public, it cannot be pulled back, so preparing for this prior to filing can save significant time down the road when the investigation is well underway.
3. Identify primary documents and a document vendor
   • In a patent case, identifying source documents that are key to your case before filing is important. Identify lab notebooks, testing documentation, marketing material, instruction manuals, and support documents for domestic industry figures. Also be sure to talk to the employees who are the source of this information.
   • Document review is a major undertaking in these cases. Choosing a vendor capable of handling large volumes of documents, including those that use AI-assisted review, has strategic importance for the case. Once the case is filed, you will need to meet tight deadlines at the Commission and will not be able to spend much time reviewing and flagging issues with the business team. Understanding what documents support your positions in the case ahead of filing can help keep the business informed so counsel can focus on the merits of the case and potential settlement.
4. Third-Party Discovery
   • Be prepared for the time that may be required for third-party discovery in your case to support your analysis of the infringing product, domestic industry, or prior art. Also consider if you will need evidence from a third party outside of the United States, which can take more time. If these issues are not identified before discovery starts, you may risk case delays.
5. Build internal political capital within your organization
   • Given the fast-paced nature of ITC actions, it can be difficult to manage expectations. For in-house counsel, you need to be strategic on spending your “internal political capital” with leadership and business teams. By preparing with outside counsel and setting expectations ahead of time, you can get key stakeholders ready for witness preparation, depositions, discovery, and other case milestones and avoid internal “fatigue” during the life of the case with careful advanced planning.

By following these best practices, companies can effectively navigate the complexities of ITC actions, ensuring a strong case and maximizing the chances of a favorable outcome. For further guidance, contact Uma N. Everett.

This webinar was part of our series, Navigating the Intricacies of 337 Litigation at the International Trade Commission.

Note: CLE is not available for On Demand viewing.

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