ITC Section 337
Wolf Greenfield's Unique Approach to ITC Litigation
About ITC Litigation
Wolf Greenfield Representative Experience
Wolf Greenfield's recent representative experience at the ITC and before Customs includes:
Inv. No. 337-TA-1012 (Fujifilm v. Sony) and Inv. No. 337-TA-1076 (Fujifilm v. Sony). We successfully represented Sony in a multi-year global patent dispute with Fujifilm related to computer storage technology. The dispute spanned multiple ITC investigations, as well as parallel proceedings at the Patent Trial and Appeal Board (PTAB) and Rule 177 proceedings before Customs. During the ITC investigations, Wolf Greenfield prevailed in preventing any violation based on Sony’s newest generation of accused products and technology.
Inv. No. 337-TA-1012-Enforcement (Fujifilm v. Sony). In this follow-on enforcement proceeding (337-TA-1012-Enforcement), Wolf Greenfield secured on behalf of client Sony an initial determination that rejected nearly every theory pursued by opponent Fujifilm. The ALJ specifically found that client Sony acted entirely in good faith in attempting to comply with the ITC’s orders.
Inv. No. 337-TA-1012-Enforcement (Fujifilm v. Sony). In this follow-on enforcement proceeding (337-TA-1012-Enforcement), Wolf Greenfield secured on behalf of client Sony an initial determination that rejected nearly every theory pursued by opponent Fujifilm. The ALJ specifically found that client Sony acted entirely in good faith in attempting to comply with the ITC’s orders.
Inv. No. 337-TA-1174. We successfully represented Aster Graphics (a printer cartridge manufacturer) in in this ITC investigation launched by Canon concerning replacement printer cartridges. The ALJ granted Aster’s motion for summary determination of non-infringement.
Inv. No. 337-TA-994. We succeeded in obtaining the first-ever victory on unpatentability in a 100-day proceeding for all joint defense respondents major electronics companies (e.g. Sony, HTC, LG, Samsung, etc.), securing a ruling from the ITC that the asserted patent was invalid under 35 U.S.C. § 101. We also led the joint defense group effort to secure a claim construction under which there was no infringement. These successful decisions were affirmed by the Federal Circuit.
Inv. No. 337-TA-994. We succeeded in obtaining the first-ever victory on unpatentability in a 100-day proceeding for all joint defense respondents major electronics companies (e.g. Sony, HTC, LG, Samsung, etc.), securing a ruling from the ITC that the asserted patent was invalid under 35 U.S.C. § 101. We also led the joint defense group effort to secure a claim construction under which there was no infringement. These successful decisions were affirmed by the Federal Circuit.
Inv. No. 337-TA-903. We successfully represented patent owner BTG, as plaintiffs in this ITC investigation against multiple competitors concerning antibody pharmaceutical products against competitors targeting soon-to-be launched products. Our team secured a string of pre-trial victories, including a favorable claim construction decision, compelling critical discovery and defeating several motions for summary determination. These successes positioned BTG to secure a favorable settlement on the eve of trial, securing our client’s high-value market exclusivity for many years.
Inv. No. 337-TA-892. We successfully defended Sony against wide-ranging infringement allegations involving VoIP technology, including claims against the PlayStation 4. Our extensive technical workup of invalidity and product-based prior art led to favorable settlement and the plaintiff dropping its case two weeks before the hearing.Inv. No. 337-TA-935. We successfully represented patent owners Segway and DEKA as plaintiffs in this ITC investigation against multiple competitors concerning Segway-type personal transporter and controller devices. We successfully secured a rarely-granted General Exclusion Order (GEO) to preclude importation by numerous respondents and non-respondents. Critical to our success were our claim construction arguments, which persuaded the ITC staff attorney, and later the ALJ, to adopt our positions, which paved the way for the GEO and forced multiple settlements.
Inv. No. 337-TA-836. We successfully represented Sony in this complex multi-respondent case involving LCD, CPU and GPU technologies, and succeeded in convincing ITC Staff to support our summary determination motion, leading to favorable pre-hearing settlement.
Inv. No. 337-TA-741/749. We successfully represented respondent MStar Semiconductor in these investigations targeting MStar’s semiconductor chips, which were incorporated into numerous LCD products imported into the United States. We took the case through the hearing and secured a complete victory for MStar on the merits of non-infringement.
Wolf Greenfield Webinar: Litigating Redesigns at the ITC
Join Wolf Greenfield on April 28 for a discussion of best practices and strategic considerations when litigating redesigns at the ITC.
Cross-Roads of Patent Litigation and IPR Practice
This article written by Greg Corbett, Chair of the Litigation Practice, and Libbie DiMarco, associate in the Litigation Practice, discusses the latest developments at the cross-roads of traditional patent litigation and IPR trial practice, addressing considerations for litigants in district court and at the ITC.
Recent Developments in the ITC
In this two-part series, Greg Corbett, Chair of the Litigation Practice and Libbie DiMarco, associate in the Litigation Practice, examine the latest ITC developments involving PTAB proceedings as well as decisions from the US Court of Appeals for the Federal Circuit.
ITC Patent Litigation on a Budget
ITC cases can reach trial in as little as seven months. Parties must quickly get to the merits, and discovery deadlines are far more compressed than in district court. The short time frame and fast pace of an ITC action make it challenging for all parties—both complaints and respondents—to litigate efficiently.
Enforcing and Defending Biotech Patents Before the ITC
In this webinar, Wolf Greenfield and the BPLA discuss the unique challenges and opportunities the ITC offers when enforcing biotech patents.
Our Team
Greg Corbett
Chair, Litigation Practice
Greg, Litigation Practice Chair, is a highly-experienced and successful first-chair lead litigation shareholder with extensive ITC experience. Greg has 20 years of experience, including as a partner at Kirkland & Ellis, where he practiced IP litigation for over 10 years. Greg has first-chaired numerous ITC investigations while at Wolf Greenfield, including 903, 935, 1012, 1012e and 1076 Investigations.
Mike Rader
Shareholder
Mike heads the firm's New York Office and is a former co-chair of the firm's Litigation Practice. Mike has been with Wolf Greenfield for his entire career, since the Summer of 1997. He represents the firm’s clients as lead counsel in patent, trademark and copyright litigation matters, and practices frequently before the International Trade Commission and district courts around the country, as well as the Patent Trial and Appeal Board in post-grant matters such as inter partes reviews. His disciplined approach to case management has enabled him to litigate successfully, and with great efficiency for his clients, against some of the largest law firms in the country.
Libbie DiMarco
Shareholder
Libbie, a shareholder in the Litigation Practice, has worked on numerous ITC cases, including the 903, 1012, 1012e and 1076. She was directly responsible for a particularly complex patent on which we were completely successful. She helped the team to develop compelling invalidity defenses based on prior art products—leading the complainant to drop most of its patent laims. Subsequently, the ALJ determined that our client (Sony) had not infringed the remaining claims.
Charlie Steenburg
Shareholder
Charlie is a shareholder in the Litigation Practice and has served as day-to-day lead for numerous ITC investigations—including the 836, 892, 903, 1012e and 1076. Charlie has particular experience as a “case architect” who takes a holistic view of the case and identifies weaknesses in a patent owner’s positions—for example, he regularly exploits tensions between infringement and validity theories.
Bryan Conley
Shareholder
Bryan, shareholder in the Litigation Practice, has significant ITC experience. Prior to joining Wolf Greenfield, Bryan spent 10 years at WilmerHale, where he played critical roles on multiple ITC cases. In one case (Inv. No. 781), Bryan represented Intel, Apple and HP in a six-patent ITC investigation involving integrated circuit packaging layouts.
Anant Saraswat
Counsel
Anant, counsel in the Post-Grant Proceedings Practice, has represented both plaintiffs and defendants in cases involving numerous aspects of LED lighting technology, including epitaxy, phosphors and packaging. He has experience working with expert witnesses and independent testing labs on analysis of LED semiconductors using techniques such as atom probe tomography and transmission electron microscopy. Anant also has experience with all phases of IP litigation at the trial and appellate levels.