The Patent Law Institute live blog continues with the panel entitled, “Litigating in the International Trade Commission”. This panel features Asim Bhansali, Partner at Keker & Van Nest LLP. Asim’s discussion focuses on the increasing popularity of the ITC forum for domestic and foreign litigants and the remedies the ITC provides. Asim also discusses parallel district court litigation. Here are some of the highlights

• The key players in an ITC investigation include the Administrative Law Judge, the Office of Unfair Import Investigators  (they represent the public interest as a full party), as well as the Commission Office of General Counsel.
• Recognize for your client that filing with the ITC is public, so you have to hit the ground running when your suit begins. When the commission institutes the investigation they set the target date, which it the date the final ITC order should issue. Your hearing will likely last 2-3 weeks. The post-hearing briefing has a 1-2 month turn around.
• The pre-hearing phase includes fact discovery. There is a very fast turn around; about 10 days for responses on motions and written discovery. There are no numerical discovery limits.
• Client expectations need to be set regarding confidentiality and the broad standard protective order; there’s no in-house counsel access to CBI.
• At the hearing, you’re strictly bound to what is in the reports. The bias you will suffer is not against the part but rather a bias for meeting deadlines.
• It’s important to find out what direct or indirect suppliers you need to go to to establish non-infringement. The same thing applies to prior art. There is no escape valve for prior art deadlines.
• Remember, the ALJ is the fact finder. So if you resist discovery on something, that’s fine, but you may look like you’re hiding something from the judge – which is less compelling than in other forums.
• Pre-hearing briefs are critical because if you miss an argument you’ved waived it. It’s not really a due process concern but rather making sure the administrative process is followed.
• Unlike a district court, the claimant in the ITC has to establish a significant invesment in a plant, labor, and capital in a domestic industry to which the patent applies. You have to prove a domestic industry around a product that you also prove asserts the patent. This can be done through the patent itself.

Tags: Asim Bhansali, International Trade Commission, ITC, Patent Law Institute 2012, PLI

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