The Interplay Between The ITC And The PTAB—More Progress Needed

Introduction

Inter partes review (“IPR”) proceedings have become a mainstay of district court patent litigation. Parties recognize IPRs as a quick and cost effective alternative to patent litigation. District court judges exercise their discretion to stay their cases around sixty percent of the time in favor of parallel IPR proceedings before the PTO’s Patent Trial and Appeal Board (“PTAB”). These stays often remain in place through the pendency of review by the Federal Circuit, eliminating the risk of relief issuing based on invalid patent rights.

In stark contrast, administrative law judges (“ALJ”) at the U.S. International Trade Commission (“ITC” or “Commission”) almost never stay their investigations due to IPR proceedings. And after ALJs have issued Initial Determinations regarding liability matters, the Commission itself has granted injunctive relief, in the form of exclusion orders, over patents considered invalid by the PTAB. These exclusion orders can