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Specializing for Speed

By Jeanne Deprincen | Oct. 2, 2006

Law Office Management

Oct. 2, 2006

Specializing for Speed

A growing number of IP firms are turning to the International Trade Commission to stop patent-infringing imports. By Steve Seidenberg

By Steve Seidenberg
      Edited By Martin Lasden
      The ITC takes on a growing load of patent-infringement cases.
      For years Juliana Cofrancesco worked in a tiny, specialized, and unheralded area of the law. Now, however, her expertise has become a hot commodity.
      As companies increasingly turn to the Washington, D.C.based International Trade Commission to stop patent-infringing imports, law firms around the nation are scrambling to find attorneys with expertise in the ITC's section 337 proceedings. Section 337 of the Tariff Act of 1930 authorizes the ITC, a federal agency, to bar all imports that infringe a company's IP rights.
      Last year the number of section 337 cases the ITC saw hit an all-time high, with 57 active proceedings. This year promises to be another record breaker. And though the numbers are still just a fraction of the infringement cases that district courts handle, the ones that go to the ITC tend to be larger and more complicated.
      "A lot of IP firms are recognizing they need to have a section 337 practice if they want to offer full services to their clients," says Cofrancesco, a partner in the Washington, D.C., office of Howrey and president of the ITC Trial Lawyers Association. "This is creating a greater demand for attorneys in this area--if I judge by the number of recruiting phone calls I'm getting lately."
      For clients, the primary advantage of choosing the ITC route over district court litigation is speed. "People go to the ITC to get injunctive relief in 12 to 13 months, whereas that might take 24 months in district court," points out Larry Shatzer, a partner at Foley & Lardner in Washington, D.C. "That's faster than many rocket dockets." And even when one of the parties wishes to appeal to the six commissioners who head the ITC or go on to the U.S. Federal Circuit, the process still can end up taking only half as long as going through a district court.
      The ITC also is in a better position to get jurisdiction over foreign companies that export infringing products into the United States. And once the ITC issues an order, the U.S. Customs Service is there to enforce it.
      Most ITC attorneys are in Washington, but similar work is also being done in other parts of the country, including California. To get a piece of this action, though, attorneys and law firms must confront a steep learning curve. For starters, the ITC doesn't follow the district courts' rules on civil procedure. "ITC rules are patterned on the Federal Rules of Civil Procedure, but they are also different," notes Alice A. Kipel, an ITC expert at Steptoe & Johnson in Washington. "And each ITC administrative law judge has ground rules as well, which can run up to ten pages."
      ITC proceedings are far more secretive than civil proceedings. In fact, much of the discovery is produced under a protective order. How do you handle a client when you can't communicate what is going on? Kipel says you have to make clear that the protective order is for the client's own interest and that it prevents a lot of time-consuming arguments over what material should remain confidential.
      For lawyers who want to master the process, taking any of a number of ITC practice courses can help. But, of course, there's nothing like hands-on experience. "A newbie attorney would want to partner with or co-counsel with an experienced ITC practitioner," says Cofrancesco. "It would take at least a couple of years before an attorney could go it alone."
      Delbert "Chip" Terrill Jr., who used to be an ITC judge and is now an ITC attorney with White and Case in Washington, D.C., offers one more bit of advice: "If you're going to do an ITC case, go on vacation first," because the process in effect compresses years of litigation into ten to twelve months. "I've had two attorneys who argued before me get sick and collapse in the courtroom from sheer exhaustion," he says.

Jeanne Deprincen

Daily Journal Staff Writer

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