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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

New Post Grant Patent Trials To Derail Parallel ITC Actions?

Posted On: Jun. 7, 2012   By: Scott A. McKeown
stay-ITCCongress Mandates Speed, Extends Stautory Estoppel to ITC

The new post grant patent trials of the America Invents Act (AIA) are designed to provide a true alternative to patent litigation. That is to say, current patent reexamination proceedings are typically pending 4-5 years through appeal, if not longer. As a result, patent reexamination is primarily utilized as an additional litigation tool rather than the alternative to patent litigation intended by Congress. Conversely, the new AIA trial proceedings are designed to conclude, by statute, within 12-18 months of initiation.

Whether, choosing Post Grant Review (PGR), Transitional Program for Covered Business Method Patents (TPCBMP), or Inter Partes Review (IPR), the new proceedings will conclude relatively promptly, and estoppel will attach upon a written determination of the Patent Trial and Appeal Board (PTAB). Based on the increased speed, and estoppel result, it is expected that the new proceedings will provide a compelling basis to stay parallel infringement actions.

However, the International Trade Commission (ITC) also has a statutory mandate for expeditiously processing their docket (typically within 15 months). For this reason, the ITC is currently an “anti-stay” forum. Given the likelihood of future parallel tracks of the USPTO and ITC, will the ITC change their “anti-stay” practice to account for the post-AIA world?

To date, the ITC has refused to stay their actions pending the much slower USPTO reexamination proceedings. Likewise, while the estoppel provisions of inter partes patent reexamination have the potential to “simplify” district court actions, militating in favor of a stay of the court proceeding, this estoppel does not extend to the ITC. As the ITC almost never stays 337 actions pending patent reexamination, some non-practicing entitities are beginning to seek out the ITC for this added benefit.

But,the status quo is set to change on September 16, 2012. As of this date, the new post grant patent proceedings of the AIA become available to the public.

The estoppel provisions of the new post grant patent proceedings, namely, IPR, PGR and TPCBMP will extend to the ITC for the first time. Likewise, the new post grant proceedings must, by statute conclude within 12-18 months. In mandating the tight schedule on the PTO Congress hoped to discontinue the current parallel tracks and force patentability disputes to the lower cost forum. One could also argue that by extending the estoppel to the ITC that Congress was sending a special message to that forum with respect to the new mechanisms.

So, assuming an ITC action is filed this coming September, substantially concurrently with a petition for IPR, both would be scheduled to conclude (if allowed to continue independently) at roughly the same time. In the battle of these administrative agencies, who wins?

The estoppel of the USPTO written decision would extend to the ITC, but, the ITC ruling would not disrupt the IPR proceeding in kind. Thus, for example, should the ITC expend resources on an invalidity determination and arrive at a favorable Patentee determination, the USPTO, operating under much more challenger friendly standards could then pull the rug out from under the ITC.

Will the ITC defer to the USPTO on validity and move forward on infringement only, in the interests of their statutory mandate?

My guess would be that the ITC will take a wait and see approach in the short term based on historical practices. However, once it becomes clear that the USPTO is actually concluding trials within the mandated 12-18 month time frame, motions to stay an ITC action pending a post grant proceeding of the USPTO will likely gain significant traction.

For more background into ITC practices see the ITCblog

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