US > Intellectual property > Patent litigation: International Trade Commission: National
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Patent litigation: International Trade Commission
Leading lawyers
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- Jim Adduci, Adduci, Mastriani & Schaumberg LLP ‘Fabulous’
- David Foster, Miller & Chevalier Chartered ‘Highly respected for his expertise’
- William Lee, WilmerHale ‘Deep understanding of the matters involved’
- Jeffrey Whieldon, Fish & Richardson P.C. ‘Providing consistent results’
This section ranks the country’s most competent practices for International Trade Commission representation. This table should be read in conjunction with the preceding full coverage table for patent litigation. Firms listed in the full coverage section are considered to be equally competent in the ITC section and they may also offer services beyond this sector.
The International Trade Commission is an independent forum with broad investigative responsibilities on matters of trade with intellectual property holders.
This independent quasi-judicial federal agency consists of six commissioners appointed by a president adjudicating technologically complex cases involving importation of goods infringing intellectual property rights. Under Section 337 of the Tariff Act of 1930, the Commission carries out investigations into allegations of certain unfair practices in import trade. Section 337 declares the infringement of certain statutory IP rights, mostly patent or registered trademark infringements, and other forms of unfair competition in import trade to be unlawful practices.
Once a complaint is filed, the ITC has 30 days to determine whether an investigation should be instituted.
The ITC is becoming an increasingly popular forum for intellectual property cases since International Trade Commission proceedings are not as costly as federal court proceedings. Additionally, they are more time-efficient, which is crucial for those intellectual property owners whose rights are being infringed and for those seeking an immediate relief.
PRACTICE: McDermott Will & Emery LLP has a well-established practice in the ITC arena, with over 20 lawyers having ‘distinguished experience’ with ITC proceedings. The firm has acted as counsel in over 50 Section 337 investigations for over 25 years, covering numerous patent infringement actions.
The intellectual property group has a strong reputation in the hi-tech electronics/IT sections, but is also consolidating its practice in the medical device arena.
Among recent highlights, McDermott Will & Emery LLP obtained a major victory for Qualcomm. In this case, an ITC administrative law judge ruled that Qualcomm did not infringe two patents owned by Tessera, and found that the patents were valid.
CLIENTS: McDermott Will & Emery LLP represents various companies including Panasonic, Honeywell, Hitachi, General Electric, American Express, Logitech, Linear Technology and SanDisk.
INDIVIDUALS: Based in Washington DC, Robert Walters has extensive trial experience and successfully represented clients in numerous state and federal jury trials, as well as in Section 337 actions at the ITC and before appellate courts. Clients regard him as ‘highly experienced and motivated’ in the field of intellectual property litigation, and related antitrust disputes before federal district courts and the ITC.
Wilson Sonsini Goodrich & Rosati
PRACTICE: Headquartered in Palo Alto and with six national offices, Wilson Sonsini Goodrich & Rosati’s ‘strong’ ITC practice has tried some of the country’s largest cases. In 2008, the practice bolstered its capabilities with the recruitment of two of-counsels: Richard Frenkel, who was formerly in-house at Cisco Systems, and Sidney Harris, previously a judge at the ITC.
In a matter relating to certain flash-memory controllers, the practice reached a cross-licensing deal with PNY Technologies to settle claims made before the ITC on behalf of SanDisk. The practice obtained royalties from PNY Technologies for previously unlicensed flash-memory products.
The practice is also currently representing Barracuda Networks in a patent infringement case brought by Trend Micro, the matter involving open-source ClamAV software in spam firewall products.
CLIENTS: In addition to SanDisk and Barracuda Networks, Wilson Sonsini Goodrich & Rosati represents LSI, Crocs, Copart and Just Toys.
INDIVIDUALS: Palo Alto-based James Otteson focuses on patent litigation and is praised by clients for his ‘professionalism’. In the same office, Michael Ladra has litigated more than 50 patent cases and tried more than a dozen, both before federal courts and the ITC.
San Francisco-based former electrical engineer Julie Holloway has tried numerous patent infringement cases in district court and before the ITC.
Adduci, Mastriani & Schaumberg LLP
PRACTICE: ITC is one of the true specialties of 21-attorney intellectual property boutique Adduci, Mastriani & Schaumberg LLP. This Washington DC-based firm recently elected two new partners, and the hired seven new attorneys, including one formerly with the office of unfair import investigations of the ITC. The litigation group is very active in the ITC arena, having been involved in 25 investigations in 2008.
The firm focuses entirely on international trade and regulatory work and has been involved in one-quarter of all Section 337 matters. The practice is currently representing General Electric’s wind turbine division against Mitsubishi Heavy Industries in a patent infringement case.
CLIENTS: In addition to General Electric, the firm also acts for IBM, Roche Pharmaceuticals, Hynix Semiconductor and Nokia.
INDIVIDUALS: Former ITC counsel, ‘fabulous’ James Adduci has over 30 years’ experience dealing with matters of unfair competition, antidumping and countervailing duty actions. Tom Schaumberg was the first president of the ITC trial lawyers’ association and he continues to serve on its executive committee. Clients praise him for his expertise in the International Trade Commission arena, together with Louis Mastriani. All the lawyers are based in Washington DC.
PRACTICE: Dechert LLP has a strong and lengthy record in the ITC, both initiating and responding to investigations. Clients praise the firm’s attorneys for their ability to ‘use their technical knowledge combined with their great litigation skills’.
In 2008, the practice achieved a complete victory in a federal circuit appeal on behalf of client Advanced Analogic Technologies, arising from a Section 337 patent infringement dispute initiated by Linear Technology before the ITC. The lawsuit involved a patent relating to analog semiconductor circuits used in portable electronic devices such as cell phones and MP3 players.
CLIENTS: Dechert LLP represents AMD, Eli Lilly, Fujitsu, Gateway, Intel, Omni Vision, Micron Technology and Acer.
INDIVIDUALS: Clients regard Washington DC-based Stephen Rosenman as a ‘very good attorney, who can handle complex patent litigation matters’.
Based in Silicon Valley, Andrew Thomases focuses on litigating patents in a variety of cutting-edge technical fields and has successfully acted on behalf of several clients before the ITC. Clients admire Austin-based Brian Farney for ‘his excellent litigation skills’.
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
PRACTICE: With a ‘well-rounded’ patent litigation practice Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. excels in International Trade Commission representations. The firm’s litigators have been involved in more than 20 percent of International Trade Commission cases ever filed. This Washington DC-headquartered firm has a busy international network, including numerous clients from Asia.
Among recent highlights, the department was successful in terminating the ITC investigation for Syngenta against alleged violations initiated by Sumitomo.
CLIENTS: Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.’s clients include Philips, Marvell Semiconductor and FedEx.
INDIVIDUALS: Clients praise Washington DC-based Thomas Jarvis for his ‘excellent technical skills’. Jarvis has handled numerous Section 337 cases and actively acts for Asian clients from the computer technology and telecommunications industries.
PRACTICE: DLA Piper provides ‘commitment to communication and thorough knowledge of the law’, underpinned by ‘unparalleled international coverage’. The intellectual property group has tried cases for clients in patent disputes involving a broad range of technologies, including computers and medical devices, and brought five cases to the ITC in 2007.
Among recent highlights, the practice represented Hewlett-Packard against Microjet in a patent dispute relating to ink-jet cartridges with proceedings brought before the ITC and in the district of Nevada. The practice obtained a judgement of infringement from the ITC and the validity of all six asserted patents.
CLIENTS: Allergan and Qualcomm have both sought the firm for legal advice.
INDIVIDUALS: Clients admit being ‘absolutely blown away’ by John Allcock’s presence in the courtroom. Dividing his time between San Diego and East Palo Alto, Allcock chairs the intellectual property group and is regarded as ‘engaging, articulate, without appearing condescending or over-confident’. Also working in San Diego, Richard Mulloy is described as ‘fighting tirelessly for the rights of his clients’.
PRACTICE: Fish & Richardson P.C. has been active before the ITC, fielding 30 ‘professional and highly successful’ attorneys that have collectively handled about 40 investigations to date.
The firm has established a particularly strong presence in the computing and telecommunication sectors, handling patent litigation matters for clients such as Power Integrations, Intel and AVID Identification Systems.
The practice recently won an ITC ruling for client JK Sucralose, in a patent infringement case brought by Tate & Lyle. The practice successfully persuaded the ITC of its client’s own process and product.
CLIENTS: In addition to Intel, Power Integrations, AVID Identification Systems and JK Sucralose, Fish & Richardson P.C. also represents Microsoft, Repligen, the Massachusetts Institute for Technology, LG Electronics, Samsung, OSRAM and Bose.
INDIVIDUALS: Dividing his time between Washington DC and Boston, Jeffrey Whieldon provides ‘consistent results with the levels of responsiveness and quality work product’, say clients. A former senior trial attorney in the civil rights division of US Department of Justice, Whieldon received the ITC’s distinguished service award for his achievements in Section 337 litigation.
PRACTICE: Generally associated with taxation law, Miller & Chevalier Chartered boasts one of the country’s largest ITC practices. Up until now, the firm has litigated approximately 120 Section 337 cases, representing about 20% of all such cases filed.
Among recent highlights, the practice obtained a favorable settlement on behalf of defendant Acer in a major patent dispute against Hewlett-Packard.
CLIENTS: Other clients include Alcatel-Lucent, Tessera, Tate & Lyle and Samsung.
INDIVIDUALS: Barbara Murphy is highly recognized for her vast experience in Section 337 matters. As a former president and executive committee member at the ITC trial lawyers association, Murphy conducts numerous antidumping investigations and is seen by clients as ‘a go-to-attorney’. David Foster is ‘highly respected for his particular expertise in ITC matters’. James Altman is also recommended. All the lawyers are based in Washington DC.
PRACTICE: Keker & Van Nest, L.L.P. numbers 64 ‘well-know and respected IP attorneys, who have met expectations in all respects’, say clients.
From January 2007 to date, the practice has litigated more than 100 patent matters, including a lawsuit brought before the ITC on behalf of Broadcom against Qualcomm in relation to semiconductor chips. The ITC banned certain Qualcomm semiconductor chips and also blocked the importation of cell phones and other wireless devices utilizing infringing chips.
CLIENTS: Representative clients include Comcast, Google, Intel and BlueArc.
INDIVIDUALS: Robert Van Nest and Ragesh Tangri ‘do an excellent job’, say clients. Steven Taylor and Brian Ferrall are also recommended. All the lawyers are based in San Francisco.
PRACTICE: Morrison & Foerster LLP’s attorneys ‘have hands-on-experience’ with Section 337 cases and represent both complainants and respondents before the ITC, particularly in the electronics field.
Among recent highlights, the practice acted for respondents Thomson. and Thomson Consumer Electronics in a patent lawsuit involving removable electronic cards and card-reader devices. In this matter, the ITC found no Section 337 violation by the clients.
CLIENTS: The firm has an impressive track record of appearances in this forum, counseling and representing clients such as EchoStar, Fujitsu, Sharp and Sanyo.
INDIVIDUALS: Formerly serving as lead counsel before the ITC, Washington DC-based Alexander Hadjis ‘always goes the extra mile’, say clients. He has wide experience litigating cases involving technology standards and is ‘full of energy and initiative’.
Also based in Washington DC, Brian Busey has litigated more than a dozen Section 337 cases before the ITC.
PRACTICE: Supported by 140 intellectual property lawyers, many of whom have either a scientific or technical background, WilmerHale has ‘a good reputation’ in the ITC field. So far, the firm has represented clients in seven patent-related investigations before the ITC.
As an illustration of the practice’s success, WilmerHale represented Broadcom in an action against Qualcomm in a case involving numerous patents relating to computer chips for use in cellular phones. The ITC affirmed that Qualcomm had infringed a Broadcom patent and, in subsequent remedial proceedings, the practice obtained an exclusion order barring the importation of all new models of cellular telephones using Qualcomm’s infringing chips.
CLIENTS: WilmerHale’s clients include STMicroelectronics, Nikon and Scottish Wolfson Microelectronics.
INDIVIDUALS: Based in Boston, William Lee is one of the firm’s co-managing partners and has extensive trial experience, having argued cases before the court of appeals for the federal circuit and the ITC. Clients ‘highly recommend’ him for his ‘deep understanding of the matters involved’.