Izf / Shutterstock.com
Litigators should pay close attention to a recent decision from the US International Trade Commission, Smith Brittingham of Finnegan writes.
Litigators sometimes question whether post-grant procedures at the US Patent and Trademark Office (USPTO) can help companies facing patent infringement allegations in the US International Trade Commission (ITC).
The ITC does not typically stay cases in deference to USPTO proceedings, and the ITC usually reaches a decision before the USPTO can declare the patent invalid. So, why file a post-grant or inter partes review (IPR) petition when facing an ITC case? The ITC provided one answer: in the event that the USPTO invalidates the patent before the ITC case ends, your products will probably not be excluded—even if the ITC decides against you.
In Certain Unmanned Aerial Vehicles and Components Thereof, Inv. no. 337-TA-1133 (UAVs), the ITC issued orders preventing infringing imports and sales, but then suspended enforcement of those orders because the patent claims on which the orders rested were previously found unpatentable in an IPR final written decision from the Patent Trial and Appeal Board (PTAB). As a result, although the ITC found a violation of section 337, no products are being excluded.
The rest of this article is locked for subscribers only. Please login to continue reading.
If you don't have a login, you will need to purchase a subscription to gain access to this article, including all our online content. Please use this link and follow the steps.
For multi-user price options, or to check if your company has an existing subscription to us that we can add you to for FREE, please email Atif Choudhury at achoudhury@worldipreview.com
ITC, patent, PTAB, USPTO, finnegan, unpatentable, petitions, post-grant, proceedings, exclusion, Certain, Unmanned, Aerial, Vehicles Magnetic, Tape, UAVs