ITC Section 337: Tips For Avoiding Discretionary Denials At The PTAB

We previously wrote that a co-pending ITC Section 337 investigation virtually guarantees that the Patent Trial and Appeal Board (PTAB) will exercise its discretionary power to deny institution under 35 U.S.C. §§ 314(a) and 324(a) when considering a petition for inter partes review (IPR) or post-grant review (PGR). See  ITC Section 337: Kiss of Death for PTAB Proceedings. Below, we provide several tips for petitioners faced with a real or imminent parallel proceeding at the ITC to avoid a discretionary denial at the PTAB.

1. File a PTAB petition preemptively. By filing a petition for IPR or PGR before an ITC investigation commences, a petitioner increases its chances of undercutting the uniquely fast and compressed nature of an ITC Section 337 investigation, which favors the PTAB exercising its discretionary authority to deny institution of a post-grant proceeding on a patent involved in a parallel ITC investigation. To effectively preempt an ITC investigation and