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On Demand Audio

Choosing a Venue for Patent Litigation: District Court - USPTO - ITC

(273 reviews)

Produced on October 01, 2014

Taught by
$ 59 Intellectual Property and Patent In Stock

Course Information

Time 60 minutes
Difficulty Intermediate

Course Description

Today, especially with the options AIA provides, both the patent owner and accused infringer in patent litigation have choices of where to litigate: District Court vs. USPTO Post Grant procedures vs. the ITC. This seminar, presented by Calton Fields Jorden Burt partner Ethan Horwitz, explores the advantages and disadvantages of each venue and how they affect both parties. Such issues include the availability of discovery, testimony by live witnesses, limitations on discovery, cost, stays of pending litigation, Markman standards and the burden of proof. The seminar not only points out the issues to consider in making the decision of which venue to use but also how to weigh those issues to come to a decision.


Learning Objectives:

I.   Understand the different venue choices for district court vs. USPTO vs. ITC

II.  Recognize major issues in each venue such as discovery, testimony, costs and stays

III. Identify the Markman standards and burden of proofs




Ethan Horwitz

Carlton Fields Jorden Burt

Ethan Horwitz has more than 25 years of experience as a first chair litigator across the full range of intellectual property law. He litigates and advises clients in patent, trademark, trade dress, copyright and false advertising cases in the United States and internationally. His practice also includes worldwide acquisition and enforcement of intellectual property, and counseling clients on the enforcement of their intellectual property.


Mr. Horwitz has represented clients in various electronic, chemical, and mechanical patent litigations, including a case in which he obtained the first-ever preliminary injunction on a design patent on behalf of Oscar Mayer, defending its Lunchables product against Sara Lee. Mr. Horwitz has also represented Miller and Molson, who were accused of violating Labatt’s patent on the process for making ice beer. Mr. Horwitz also represented Spansion, a flash memory fabricator in one of the largest International Trade Commission cases in history. It involved a two-week trial on two patents, one on the construction of a flash chip and the other on the programming of a flash chip. He has litigated and advised clients in a variety of technologies including computer software, telephone logging, Voice-over-Internet Protocol, computer vision, video compression, brewing, pharmaceuticals, food chemistry, chemical processes, skin transplants, antioxidants, and simple mechanical products. Mr. Horwitz is listed in Euromoney’s Guide to the World’s Leading Experts in Patent Law, and authored the three-volume treatise Patent Litigation: Procedure and Tactics.


Mr. Horwitz has also litigated various trademark, trade dress, and dilution actions. These include representing Pepperidge Farm in a landmark case that resulted in a preliminary injunction based on Pepperidge Farm’s rights to the shape of its Goldfish cracker. This case was among the first to issue a preliminary injunction based solely on a dilution claim. In other trademark and trade dress cases, he defended Lotus’s mark “Notes” against an attack by Borland; Kraft’s trade dress for its Singles product against infringement by Borden; and Kraft’s trade dress and trademark for its Philadelphia Cream Cheese product from infringement by Bongrain. He also defended Cosmair (L’Oreal) and Ralph Lauren in an action brought by Calvin Klein to enjoin their new fragrance, Ralph Lauren Romance. He defended JPMorgan Chase's adoption of its name after its merger against a claim of infringement by the owner of the mark Morgan Chase. Additionally, he defended JPMorgan Chase's use of Freedom Card from a claim of infringement by former executives of the Freedom National Bank of Harlem; the case was affirmed by the Third Circuit. Mr. Horwitz is listed in Euromoney’s Guide to the World’s Leading Experts in Trademark Law, and authored the five-volume treatise World Trademark Law & Practice.


In false advertising cases, Mr. Horwitz represented Kraft’s Jell-O gelatin and stopped Del Monte from calling its product “Gelatin Snacks.” The snacks were actually made of carrageenan, which is commonly described as gelatin though it fails to meet the technical definition. In addition to many court actions involving false advertising, he has brought and defended cases before the National Advertising Division of the Better Business Bureau and its Canadian and German equivalents.


In copyright cases, Mr. Horwitz represented Joe Simon, a co-author of the comic character Captain America, against Marvel Comics and won a landmark Second Circuit case holding that Mr. Simon could sue to recover his copyright from Marvel. In another case, Mr. Horwitz’s client, Colgate, was accused of copying Procter & Gamble’s advertising for Crest toothpaste. The respective ads were used by both companies in many countries around the world. Mr. Horwitz argued the case before the National Copyright Administration in Beijing, and then tried to a verdict for Colgate, which was affirmed by the Second Circuit. In another copyright case, J. Walter Thompson and Northwest Mutual Life were accused of copying Chase Manhattan’s advertising. Mr. Horwitz resisted a preliminary injunction in that case and created new law that a preliminary injunction could be refused based on delay alone. In addition, he has extensive experience in computer program-related copyrights.


Mr. Horwitz has also advised clients on establishing worldwide protection for their intellectual property, and has set up and implemented anti-counterfeiting programs for clients including Timberland and David Yurman. Mr. Horwitz has also advised clients regarding the launch of products and/or advertisements to ensure that they do not violate the intellectual property rights of others and to ensure that all claims are substantiated.



Author, "Horwitz on Patent Litigation," Vol. 1-3, LexisNexis Matthew Bender.

Author, "World Trademark Law and Practice," Vol. 1-5, LexisNexis Matthew Bender.

Editor, “Intellectual Property Counseling and Litigation,” Vol. 1-7, LexisNexis Matthew Bender.

Co-Author, “Patent Office Rules and Practice,” Vol. 1-13, LexisNexis Matthew Bender.


William M.


Tara C.

very informative

Jonathan K.

good comparison of pro's and con's of each; particularly good on ITC

James S.

Covered a lot of material very well. Speaker very knowleknowledgeable.

F. Chad C.


Craig C.

Very good program.

Michael O.

Good volume, good technical information.

Karen T.

Good information and easy to follow.

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