On October 30, 2019, Michael Sandonato and Andrew Kutas published "Perfecting Your ITC Strategy" in Intellectual Asset Management. The following is an excerpt:
Recent decisions by the Commission and an administrative law judge (ALJ) have explored the extent to which parallel proceedings before the Patent Trial and Appeal Board (PTAB) may affect a Section 337 Investigation.
In Certain Memory Modules and Components Thereof, Inv No 337-TA-1089, Order No 51 (26th June 2019), an ALJ determined that the estoppel provisions of 35 USC § 315(e)(2) barred respondents’ invalidity defences because they were the same as challenges those respondents made in a parallel inter partes review (IPR) - even though the respondents prevailed in the IPR and secured a final written decision of unpatentability. Noting the lack of guidance from the Court of Appeals for the Federal Circuit (CAFC) on the question, Chief ALJ Bullock entertained competing arguments of preventing serial attacks on patents v facilitating enforcement of invalid patents. In the end, he focused on the statute’s plain language and found it to compel his striking of the respondents’ defenses, irrespective of their success in the IPR.