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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.
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