Navigating the complexities of the International Trade Commission (ITC) requires comprehensive knowledge of both legal principles and the specific challenges brought on by 337 investigations. In order to better understand the activity at the venue and those involved in Commission proceedings, DOAR proudly sponsored and participated in the American Conference Institute’s 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement in Washington, D.C. Held over two days on May 29th and 30th, this conference offered a series of keynote presentations and panel discussions that provided insights into significant issues including public interest considerations, developments impacting domestic industries, and the latest updates in ITC procedures.
Let’s recap some key takeaways from two of the event’s most impactful sessions.
Analyzing the Most Significant ITC Cases of 2023
2023’s ITC Investigation Activity
DOAR participated in a panel along with Mark Hogge, a partner at Dentons US LLP, to discuss ITC activity from this past year and its implications on litigating at the venue. Their panel covered critical developments, significant rulings, and key takeaways from the year’s biggest ITC investigations, examining how these cases were approached and how they may impact future actions and rulings at the ITC.
The discussion kicked off with insights from DOAR’s inaugural ITC report, which offers a look into last year’s ITC filings. 2023 marked a significant downturn in overall numbers as there was a total of 37 filed investigations (down from 54 the prior year), and only 27 truly “new” investigations were filed with IP that had not been previously seen before the Commission.
Diving deeper, we highlighted that despite the low overall number of investigations, DOAR found that the number of non-patent unfair acts that were claimed last year was equal to or higher than the previous year (depending on the specific act). And to further analyze these disputes, DOAR created proprietary categorizations that offer a more nuanced look at ITC matters when compared to the ITC’s broader classifications in IDS and found that the most active areas focused mainly on networking/wireless and life sciences.
Notable ITC Cases
Following an analysis of investigation statistics, the discussion then pivoted to assess the year’s most prominent ITC cases, with a focus on Masimo v Apple. In this case (Investigation No. 337-TA-1276), the dispute centered around pulse oximeters integrated into wearable devices like Apple Watches. Masimo filed a complaint against Apple, claiming infringement of five patents related to this technology. The investigation, which began on August 18, 2021, concluded with the final decision issued in favor of Masimo as the presiding ALJ found a violation of two patent claims on November 14, 2023, after several extensions.
The case is currently at the appeal stage at the Federal Circuit, with the latest significant activity being the filing of Apple’s opening brief on April 5, 2024. Response briefs are due by June 28, 2024, following a granted extension. This ongoing phase follows a series of legal developments, including interim stays and motions for emergency stays, indicating that the case may continue to evolve before a final resolution is reached.
The discussion also touched on the Ericsson v Apple case (Investigation No. 337-TA-1299). This particular dispute was settled in 2023, concluding the investigation before any substantive decision on Standard Essential Patent (SEP) issues could be made. Throughout the investigation, SEP considerations were a focal point, with the presiding ALJ advising that SEP-related arguments be addressed during the public interest phase of the proceedings. Both parties brought in highly credentialed experts to support their case: Apple relied on an ETSI IPR policy expert for their testimony, while Ericsson strengthened their case with a similar expert, alongside a FRAND historian and an expert in telecom industry licensing.
These investigations are crucial for discussion as they emphasize the complexities and strategic importance of patent litigation in the technology sector, showcasing the critical role of expert testimony in 337 investigations. These disputes underline the necessity for highly specialized expertise in fields like SEP policy and FRAND terms, demonstrating how expert insights can crucially impact the outcomes of disputes over technology standards and patent enforcement.
Fireside Chat with the ITC’s Administrative Law Judges (ALJs)
ACI welcomed three of the ITC’s distinguished judges on stage for a fireside chat to offer insights on their preferences when presiding over investigations. Let’s take a quick look at some thoughts from Chief Judge Clark Cheney, Judge Dori Johnson Hines, and Judge MaryJoan McNamara on streamlining cases, brief structure, the use of experts, good vs bad advocacy, and more.
Chief ALJ Cheney on the Use of Experts
When asked how to improve expert processes and procedures in ITC investigations, CALJ Cheney highlighted the essentiality of explaining to your associates what the role of an expert truly entails, including how their testimony fits into the Federal Rules of Evidence. He remarked that the role of the expert is to explain evidence of record and that he sees confusion amongst those in the patent area of the judicial system surrounding what experts are and are not needed. Overall, he feels that a good fact witness can make or break a case, especially in the domestic industry area.
ALJ Johnson Hines on Emphasis in Organizational Brief Structure
When asked how counsel can improve the use of emphasis in organizational briefs, ALJ Johnson Hines passionately spoke about her preferences on fonts, images, and more. Specifically, she prefers photos, bulleted lists, and proper labeling in briefings rather than creating emphasis through bold, italicized, or underlined text. Further, if you can identify what issues are and are not at the center of the dispute and indicate that in the brief, she finds that to be incredibly helpful.
ALJ McNamara on Direct Expert Examinations
When asked about her preferences regarding expert examinations, ALJ McNamara stated that she will always prefer direct, live, and in-person testimonies as they display the expert’s knowledge, proving they aren’t just “hired guns”. In real-time, she feels that experts perform differently than they do when signing off on counsel’s testimony. In her words, she has seen such good in-person expert testimony that it has swayed her opinion on a case.
As part of our ITC report series, we provide a detailed view of each of the judges’ investigations and focus areas while highlighting their behaviors and backgrounds. Most recently, our team examined statistics across numerous categories and compiled insights to create a report that offers an exclusive look at ALJ Monica Bhattacharyya.
How DOAR’s Experts Can Assist in ITC Investigations
At DOAR, we understand that ITC Investigations can be highly nuanced and have engaged with experts who possess a deep understanding of the major industries and technologies at issue before the Commission. We affiliate with technical experts, knowledgeable industry veterans, and skilled specialists in code review and analysis, who are dedicated to achieving the best outcomes for our clients, providing comprehensive support through every stage of the investigation process.
Contact us for more information about our world-class experts and to learn more about our expert teams in our areas of focus within technology.
