Patexia Insight 101: ITC Trends and Expansions in DC

Tomorrow we are releasing our second annual ITC Intelligence Report. This popular report, reviews 335 ITC investigations filed between January 1, 2015 and December 31, 2020 (All rankings are available on the site today and if your firm is a Concierge Member, you can check them now).

Aside from the performance and activity rankings of attorneys and law firms, this year we have also covered 70 ITC-related lateral moves that took place between late 2019 and early 2021.

In addition, for the first time, we have included the top three ITC clients for all attorneys and law firms as well as the top three ITC firms for all complainants and respondents in the report. This helped us discover the new trends and identify those firms that are expanding their ITC practice and the reasons for their expansions (e.g., type of clients, size of the firms, growth potential, etc.). The expansion of some firms and formation of new firms is bad news for some other firms as we will explain here.

Out of the 335 ITC investigations filed during this period, 309 were violation investigations. The report focused on these 309 cases to calculate the activity of attorneys, law firms and companies.

As of March 4, 2021, a total of 270 investigations out of 335, had been terminated. The terminated cases were used as the basis for the performance evaluation of attorneys, law firms and companies.

We used the violation investigations for the period of our study to evaluate all parties involved. This includes the review and evaluation of:

• 335 ITC Section 337 Investigations
              309 Violation Investigations
              253 Terminated Violation Investigations
• 969 Unique US patents
               206 IPC Codes
• 371 Law Firms
              199 firms represented complainants
              284 firms represented respondents
• 5,650 ITC attorneys
              2,906 attorneys represented complainants
              3,792 attorneys represented respondents
• 1,784 companies
              317 complainants
              1,531 respondents
• 8 Administrative Law Judges (ALJ)

The report covers all ITC law firms, complainants, respondents and the top 1000 most active ITC attorneys.

We also evaluated the top 1000 most active ITC attorneys and compared them with our last year’s report to see who had moved. We identified a total of 70 lateral moves during this period (between late 2019 to early 2021). This is significant because of the following reasons:

1. It shows that about 7 percent of the ITC attorneys changed firms within approximately one year.
2. It indicates that firms are competing to add and expand their ITC practice
3. It shows that while the ITC market is growing (Patexia Insight 96), and that means firms will have a bigger overall market to share, for some, their pie may shrink as they lose their ITC talents to other firms.
4. It also reveals a very important trend that is forming and we first explained in Patexia Insight 99: with the legal cost pressure imposed by larger corporations on Am Law 100 firms, some smaller firms are positioning themselves to take large corporate clients and as result, take more market share from larger firms.

To further explain No. 4, we covered in Patexia Insight 99 that more recently, companies such as Apple prefer to work with smaller but good brand firms to better control their litigation cost. For example, according to our latest Patent Litigation Report published in January, Desmarais LLP is one of the top 3 choices for Apple when it comes to patent litigation. The firm just expanded in DC and added ITC practice by bringing Goutam Patnaik who was leading the ITC group at Pepper Hamilton. This means companies such as Apple, Cisco, Samsung, and Intel will now have another good option for ITC.

In other words, this is bad news for top brands such as Quinn Emanuel or Kirkland & Ellis that used to be the preferred choice for these large tech companies.

Other than Desmarais LLP, there were several other smaller firms such as Russ August & Kabat that expanded their ITC practice in DC over the last year or so. Our recruiting division at Patexia works closely with several small and large firms and leverages its massive IP data to identify the best talent. The 100-plus page report also highlights the net loss/gain for each of the active ITC firms.

In the following weeks, we will continue our coverage of ITC and District Court Patent Litigation. We will also be expanding our IP Insight reports to cover Court of Appeals for the Federal Circuit (CAFC) soon. Stay tuned.