1. Appropriately staff the outside litigation team.
A leanly staffed team possesses concentrated case knowledge, which will improve the quality of the representation and the result of the litigation. In contrast, an overly staffed team possesses diluted case knowledge, which will detrimentally affect the quality of the representation and the result of the litigation.
2. Prepare for trial throughout the case.
In that regard, periodically synthesize the evidence into a comprehensive, understandable and, ultimately, succinct presentation. Unlike in a district or state court trial that may last weeks or months, each party will usually have a week or less to present its case to the ITC administrative law judge.
3. Include an in-house “point person,” such as in-house counsel, as part of the litigation team.
The pre-suit investigation and discovery will be time-consuming and fast-paced and will involve, for example, (a) collecting, reviewing, and producing a significant body of documents and information and (b) identifying and meeting with multiple knowledgeable persons, including employees of the IP owner.
Accordingly, the pre-suit investigation and discovery can be conducted more efficiently and effectively where there is a point person with whom outside counsel can directly interface. Alternatively, having topic-specific point persons may be appropriate.
4. Determine which IP to assert.
Pre-suit, a trade secret owner will determine which trade secret(s) to assert. That determination often will involve, for example, (a) reviewing trade secret source documents, (b) compiling a list of trade secrets to potentially assert, and (c) modifying that list as appropriate.
A trade secret owner should not disclose the asserted trade secret(s) in the ITC complaint because an ITC complaint is typically a publicly available document and a trade secret is to be kept secret.
Similarly, pre-suit, a patent owner will determine which patent(s) to assert. The patent owner must reference the asserted patent claim(s) in the ITC complaint. ITC Rule 210.12(a)(9)(vii).
Where “practicable,” the ITC complaint also is to include a chart comparing each asserted independent patent claim to a representative accused product or process of each accused party, i.e., respondent. ITC Rule 210.12(a)(9)(viii).
5. As part of the pre-suit investigation, investigate as thoroughly as possible other underlying facts and circumstances.
In that regard, ITC litigation is “front-loaded” for an IP owner, i.e., complainant, because: (a) a complainant must have good-faith bases for the allegations in the complaint, (b) the complaint must “[i]nclude a statement of the facts constituting the alleged unfair methods of competition and unfair acts[,]” (c) in a trade secret case, the complaint must “state a specific theory and provide corroborating data to support the allegation(s) in the complaint concerning[, for example,] the existence of a threat or effect to destroy or substantially injure a domestic industry,” and (d) a complainant needs to hit the ground running once the litigation commences. ITC Rules 201.8(e) and 210.12(a)(1), (2), (8).
As to point (d), a complainant knowledgeable about underlying facts and circumstances will more efficiently and effectively engage in discovery and develop its case during the condensed ITC litigation schedule.
[continued] Law.com – 10 Steps to Exclude Illegal Imports.
