ITC patent litigation on a budget

December 13, 2011

Michael N. Rader

(as published in Inside Counsel)

The usual rules for cost control in patent litigation (about which I have recently written) must be supplemented for cases before the International Trade Commission (ITC).

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 complainants and respondents—to litigate efficiently. Some lawyers have suggested (and some clients have thrown up their hands and accepted) that efficient case management simply is not possible at the ITC. Strategies are available, however, for controlling ITC litigation expense while maximizing the chances of success.

Get a head start

The short time to trial at the ITC is an obvious advantage for complainants, who can catch respondents by surprise. A complainant can gain even more of an edge by secretly going beyond the requirements for what must be included in an ITC complaint. A successful complainant should plan to select its technical experts and work up the entire infringement case including reverse-engineering of the respondents’ products, with them prior to filing, though it need not tell the respondents that it has done so. While additional documents relating to the accused products (e.g., confidential technical specifications) will be uncovered during discovery, the meat of the infringement case can usually be prepared even without that information. Preparation of expert reports and direct testimony submitted in written form at the ITC should not be a scramble for complainants. That work should be in progress and in some cases largely complete, before the complaint is even filed. Doing so will help ameliorate the chaotic nature of ITC litigation and will reduce overall expense.

Respondents should take full advantage of the 30-day window between the filing of the complaint and institution of the investigation by the ITC. It is not uncommon for much of that period to be spent grappling with the shock of being sued and selecting counsel. Smart companies will be prepared to take full advantage of those 30 days by getting to work immediately. Even if outside litigation counsel are not selected right away, a lawyer (whether outside or in-house) should begin working on the merits without delay. That lawyer may ultimately hand off work product to someone else, but the company will be ahead of the game. Every day of effort counts to quickly focus the defense on the right arguments. As I have previously written, success in a patent case almost always hinges on a limited number of issues. Identifying those key issues early increases the chance of winning and helps control overall cost by reducing the amount of time spent on subsidiary arguments that will not affect the outcome of the case.

Insulate the merits team

Given the fast pace of ITC actions, counsel should be split into separate teams for discovery and the merits. Simply put, the attorneys responsible for winning the case cannot afford to be bogged down in document production or discovery disputes. Their energy must be focused on developing the key arguments for trial and preparing the cross-examination of opposing experts. Like any other case, an ITC trial is won or lost on cross. The merits team should be working on cross as early as possible and certainly not later than the day expert reports are served.

In multiple-respondent cases, it is also important for respondents’ counsel to efficiently manage their interactions with the joint defense group. One attorney should be designated to participate in joint defense calls. Cooperation is important, but counsel should proceed to develop winning arguments without waiting for other members of the group to be convinced. Inevitably some members of the group get off to a slower start because they do not follow the suggestions above, but eventually, they will appreciate and support winning arguments.

Take advantage of the judge’s expertise

Finally, efficiencies can be gained from the deep experience of the ITC’s Administrative Law Judges with patent issues and in many cases with the technology as well, because similar technologies repeatedly come before the ALJs. There is no jury, so while case themes should not be overlooked, they require less reiteration. The role of fact witnesses is limited. Parties can cut to the chase in briefing and at trial, and the judges greatly appreciate when parties do so. In a recent ITC investigation involving multiple respondents, the complainant filed a nearly 1,000-page pretrial brief. After trial, the judge limited the complainant’s opening post-trial brief to 200 pages and its reply to just 100 pages. Focusing the briefs and the presentation at trial keeps the judge’s attention focused on the important points; it avoids boring or annoying the judge and also reduces legal expense.