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ARTICLE · 22 JUNE 2020

PTAB Institutes Despite ITC Investigation

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In 3Shape A/S v. Align Tech., Inc., IPR2020-00223, Paper 12 (May 26, 2020), the PTAB declined to deny institution of an inter partes review involving a patent challenged in a pending ITC investigation.

United StatesIntellectual Property
Marlee Hartenstein
Marlee Hartenstein
Matthew Johnson
Matthew Johnson
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In 3Shape A/S v. Align Tech., Inc., IPR2020-00223, Paper 12 (May 26, 2020), the PTAB declined to deny institution of an inter partes review involving a patent challenged in a pending ITC investigation.  Despite the advanced stage of the ITC investigation, the PTAB found no "concerns with efficiency, fairness, and the merits that would support exercising [its] authority to deny institution."

Patent Owner urged the PTAB to use its discretion under 35 U.S.C. § 314(a) to deny the petition.  Patent Owner argued that the ITC investigation, where the validity of the patent at issue is also being challenged, "will reach resolution well-before proceedings are underway before the Board."  Therefore, moving forward with an IPR "would be an inefficient use of Board resources."

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