Co-Pending ITC Action Less of an Equitable Concern for PTAB?

General Plastic Factors & Follow-on Petitions

Last September, the Patent Trial & Appeal Board (PTAB) held that the advanced state of a district court proceeding militated in favor of denying a petition for IPR in accordance with the General Plastic factors (NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc). Given this holding, Patent Owners may now consider speedier forums, such as the International Trade Commission (ITC) as providing incremental protection from a PTAB challenge.

Last week, the Board clarified that consideration of late stage parallel proceedings is done only in the context of assessing discretionary institution of “follow-on” petitions under 35 U.S.C. § 314(a).  In doing so, the Board also highlighted that an advancing ITC action (even in a follow-on petition scenario) may be of a lesser concern than a district court proceeding given its unique nature.

In Wirtgen America, Inc. v. Caterpillar Paving Products Inc., IPR2018-01201 (here), the Patent Owner identified a concurrent ITC proceeding where the ALJ’s Initial Determination is set to issue months before the PTAB’s institution decision, and where the invalidity arguments presented at the ITC are identical to the grounds in the PTAB proceeding. Citing to NHK Spring, Patent Owner argued that General Plastic Factor (6) “the finite resources of the Board,” and (7) “the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review,” favored denying institution “because instituting inter partes review would be inefficient and would waste the Board’s resources.”

Despite the advanced ITC action, the Board rejected Patent Owner’s argument, explaining:

" [T]he petitions at issue in General Plastics were follow-on petitions. Further, as noted by Petitioner, the ITC does not have the authority to invalidate a patent and ITC decisions do not necessarily pertain to the issues raised in an inter partes review petition . . .

(emphasis added)

While the General Plastic Factors were deemed inapplicable in this scenario, the lack of ITC invalidation authority as compared to the PTAB may result in advanced stage district court proceedings being given more weight in follow-on petition scenarios akin to NHK Spring.

Scott A. McKeown is an author of the Patents Post Grant