By: Yury Kalish and Vishal Khatri – Since their inception as part of the AIA, inter partes reviews (IPRs) have been a favorite tool in the arsenal of patent challengers. Their statutorily mandated 18-month schedule oftentimes allows the PTAB to resolve a question of patent validity faster than a court can in a parallel district court litigation. In view of this procedural reality, many district courts have been amenable to staying the district court litigation while waiting for the PTAB’s decision. The alignment of the claim construction standard between the PTAB and the district courts has served to reinforce this trend.
This strategy has not been as successful when the underlying infringement challenge is brought in the International Trade Commission (ITC). The ITC has its own expedited schedule so the ITC has never stayed an investigation in view of a pending IPR. Sometimes, the ITC may dispose with a matter on the merits, including a patent validity determination, before a final written decision in the parallel IPR proceeding.
The PTAB recently faced a similar situation when deciding whether to institute an IPR filed by Emerson Electric Co. (“Emerson”)…
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