This year’s ACI ITC Litigation and Enforcement Conference did not disappoint, delivering keynotes and panels on critical issues impacting the ITC. WIT was proud to sponsor the event once again and is pleased to share a few key takeaways.
Let’s recap a couple of the event’s most insightful sessions.
Examining Prominent ITC Investigations of 2024
2024’s ITC Investigation Activity
WIT’s President, Michael Connelly, kicked off the event with a panel discussing ITC activity from this past year and its implication on litigating at the venue alongside Kecia Reynolds, Partner at Paul Hastings, and Christina Ondrick, Partner at Spencer Fane. Their panel covered key ITC developments over the past year, forecasted significant changes for 2025, and explored topics such as recent rulings on Standard Essential Patents, the ITC’s role in medical use product cases, emerging industries seeking ITC relief, and shifts in ITC practice, investigation trends, and new trade policies under the Trump Administration.
Instituted investigations rose by 41%, from 37 in 2023 to 52 in 2024, reversing the slowdown of the previous year and bringing filing levels back to pre-2023 figures. Of the 52 investigations filed in 2024, 30 (58%) were classified as “new,” meaning they involved intellectual property that had not been previously litigated at the ITC, showing a slight increase from the 27 new matters in 2023. This year’s cases also reflect a growing focus on PTAB activity, especially given the Commission’s alignment with the 16-18 month target for case resolutions.
To examine the technologies at issue in these investigations, WIT created proprietary categorizations that offer a more nuanced look at ITC matters when compared to the ITC’s broader classifications in IDS. Considering this, the panelists mentioned that there has been an uptick of life sciences disputes litigated before the Commission, specifically in the medical devices and medical aesthetic sectors. This statement was reinforced by WIT’s categorization of 2024’s investigations compared to 2023’s, seen below.
For a full look at this data, download our 2024 year-end ITC report, which offers key insights into technology trends, YoY statistics, patents at issue, judge assignments, and more.
Notable Cases
A notable case discussed in this panel is that of INV 1313. This case underscored the importance of clear, evidence-based arguments as Medytox failed to prove the violation of Section 337, with the judge rejecting the “can of beans” theory and ruling that there was insufficient evidence to support a conversion claim. The case highlighted the need for clarity and strong, substantiated claims to succeed in ITC investigations.
The panelists also examined INV 1352 as this investigation highlights important issues related to Standard Essential Patents (SEPs) and the Commission’s stance on unwilling licensees. Here, Lenovo’s refusal to license its SEPs led to significant discussions about the balance of power between SEP holders and implementers. The investigation underlined the ITC’s potential to issue exclusion orders when an implementer is unwilling to negotiate, which reinforces the Commission’s role in promoting fair licensing practices. Additionally, INV 1352 raised questions about public interest considerations during the institution phase, making it a key case in understanding how the ITC approaches SEPs and their implications on the broader industry.
ALJ Perspectives on Investigation Preferences
This year, ACI welcomed two of the ITC’s distinguished Administrative Law Judges (ALJs) on stage for two panels to offer insights into their preferences when presiding over investigations. Let’s take a look at some thoughts from Judge Doris Johnson Hines and Judge Bryan Moore on streamlining cases, brief structure, the use of experts, good vs bad advocacy, and more.
Fireside Chat with ALJ Johnson Hines
Following the morning’s first panel, Wilhelm Rao, shareholder at McAndrews, Held & Malloy, hosted a fireside chat with ALJ Johnson Hines to discuss her background and her investigation strategies, offering the audience insights from the Bench.
ALJ Johnson Hines originally hailed from Massapequa, New York and pursued a degree in electrical engineering from Rensselaer Polytechnic Institute, which led her to a career that she describes as very serendipitous. During her time at RPI, one of her professors highlighted the importance of effective written communication, which is a concept that has stayed with her throughout her career and is extremely prevalent in her time as an ALJ.
Prior to joining the Commission, she began her career as a patent examiner at the U.S. Patent and Trademark Office and served as a law clerk to Judge Giles S. Rich at the Federal Circuit, and considers this to be a pivotal point in her career. She then joined Finnegan, Henderson, Farabow, Garrett & Dunner LLP in 1990, where she litigated intellectual property cases before the Commission and district courts, and argued over a dozen appeals at the U.S. Court of Appeals for the Federal Circuit.
Following her time at Finnegan, Johnson Hines took advantage of the switch in ALJ requirements that happened in the first Trump administration, which opened the door to candidates with little to no previous judge experience. She has held the position for just over two years and finds one of the most fulfilling aspects of her role to be witnessing advocacy and how different people approach difficult issues. She finds it fascinating to see how different teams brief, argue, and present complex matters.
Understanding that each team approaches an investigation differently, she shared valuable insights into managing cases before her at the ITC highlighting two major tips about doing so:
- Read the Ground Rules: According to Judge Johnson Hines, parties often fail to read the ground rules thoroughly, which leads to avoidable issues during case management conferences. The key to a smoother process, she stressed, is having those involved in the case review these rules in detail.
- Have Authorities Argue the Issues: It’s crucial that the lawyers who know the issues best present them. This is particularly important at case management conferences, where discovery issues are discussed in detail.
For respondents, Judge Hines recommended early submission of technical documentation, source code, and design information to avoid delays later in the process. She also noted that redesigns could be advantageous when handled early, suggesting that respondents should allocate engineering resources to address any design changes during the investigation stage. This proactive approach can be beneficial in securing favorable outcomes.
During pretrial conferences, she recommends follow-up meetings to resolve or refine issues, and while she defers to the parties on scheduling, she will push back if there’s insufficient time for review. Pre-hearing briefs should be focused and concise, and visual aids are appreciated, especially when experts are involved. She feels that having some discrimination in the volume of exhibits that are put out in case management conferences can be very helpful. She also highlighted the value of an oral argument in presentations, encouraging parties to ask for it if they think it would be useful as she is typically inclined to grant it.
Regarding discovery, she prefers parties resolve email discovery independently, but mandates monthly video conferences to address disputes. In trial, she values opening statements and prefers demonstratives that clarify expert arguments. While post-hearing briefs are often strong, she encourages more focused pre-hearing briefs to ensure clarity. While she doesn’t currently have word limits on her pre-hearing briefs, she plans to implement them in the future as she wants to encourage legal teams to focus on the issues at the center of the dispute and reinforce her preference for images in these documents.
When it comes to experts, she feels that they should be used to explain the evidence and make sure they’re all aligned – most cases have many experts, so they need to work together so that arguments are concise.
Judge Moore on Navigating Parallel Proceedings and Expert Testimony
Regarding parallel proceedings, ALJ Moore expects to be notified if there’s a summary determination or related matter. While there is a perception that the PTAB is more open to invalidity, he believes that both the ITC and PTAB operate under the same rules. He stresses the need for careful consideration of the rules and a strategic approach when presenting cases before the ITC. His fellow panelists noted that the ITC is becoming an increasingly attractive forum due to the declining likelihood of IPR filings, and this shift has prompted many respondents to opt for ITC investigations as a more favorable alternative.
How WIT’s Experts Can Assist in ITC Investigations
At WIT, 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. Our ITC Practice features sector-specific teams of technical experts, knowledgeable industry veterans, and skilled specialists in code review and analysis. These experts 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.