Technical Findings of PTAB Increasingly Leveraged in Parallel Court Proceedings
Patent challenge proceedings of the USPTO’s Patent Trial & Appeal Board (PTAB) are designed to provide a low cost, expedited option to district court litigation. Of course, if a patent challenger is unsuccessful at the PTAB, the district court or International Trade Commission (ITC) is left to make the ultimate resolution on validity. Yet, as I discussed last year, closed AIA trial records are being leveraged by the courts to aid in resolving a number of disputed issues — from claim construction to summary judgement invalidity determinations.
More recently, the International Trade Commission (ITC) has followed suit.
In Certain Composite Aerogel Insulation Materials & Methods for Manufacturing the Same (here), a complaint filed by Aspen Aerogels, Inc. (“Aspen”) alleging violation of Section 337 of certain composite aerogel insulation materials that infringe one or more claims of U.S. Patent Nos. 7,078,359; 7,399,439; 6,989,123; 7,780,890; and 9,181,486 by Nano Tech Co., Ltd. (“Nano”) and Guangdong Alison Hi-Tech Co., Ltd. (“Alison”).
But, the differences here actually hurt the respondents.
Where prior art does not satisfy the PTAB’s preponderance of the evidence standard for demonstrating unpatentability, by definition, the same art should fail to meet the heightened clear and convincing standard of the courts. Indeed, some courts have dismissed such art on summary judgement for this same rationale.