You Say ITC; I Say IPR: Let’s Stay the Whole Thing Off

January 28, 2021

Ask almost any U.S. International Trade Commission (ITC) lawyer about the odds of a stay of the ITC investigation in favor of an inter partes review (IPR), and you’ll get a familiar response full of certainty: Not happening. But is that about to change?

Recently, the Patent Trial and Appeal Board (PTAB) has refused to institute IPR proceedings where there was a pending ITC investigation, citing at least in part the fact that the requester/respondent in the ITC matter had failed to seek a stay of the ITC investigation.

Perhaps anticipating such an issue, one ITC respondent group has now eliminated that issue by seeking a stay of an ITC investigation because all of the asserted claims are subject to IPR petitions. In its motion, the ITC respondent group acknowledged that stays of ITC investigations in favor of IPRs are “rarely” granted. The respondents also acknowledged that, but for a stay, the IPRs almost never outrun the ITC investigation. Finally, the respondents noted the PTAB’s observation in previous IPRs that the petitioner had failed to seek a stay of the ITC investigation, which factored into the PTAB’s decision to deny institution of an IPR proceeding.

Takeaway: It remains to be seen whether this respondent group’s request will be sufficient to stay the ITC investigation or, perhaps more immediately, whether it will be enough to secure institution of the subject IPR proceedings. Regardless, as a company weighs its options in either enforcing its intellectual property rights or responding to accusations from a competitor, it should carefully consider the interplay between the ITC and IPR proceedings.

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