PTAB trials are nearly always (~ 4 out of 5) driven by some concurrent litigation need, either a district court complaint of infringement filed against the petitioner or an International Trade Commission (ITC) investigation initiated by the patent owner.  The effect of PTAB trials on concurrent district court litigation has been significant and apparent.  District court trials are often stayed (over 50% of the time when requested) pending the PTAB’s determination of patentability of the relevant claims.  District court claim constructions are also informed by claim construction proceedings at the PTAB.  There, patent owner arguments and PTAB findings under the broadest reasonable interpretation standard are often used as ammunition for limiting attempts for by patent owners for broad constructions back at district court.

The interplay between PTAB trials and ITC investigations has been less clear.  District court patent trials progress at a leisurely pace compared to PTAB trials.  ITC investigations, on the other hand, are required to progress at a fast pace that rivals PTAB action.  This limits the ability of ITC administrative law judges to keep abreast of PTAB developments and consider them during the investigation.  The ability of ITC judges to consider PTAB trial happenings was discussed at length at the PTAB Bar Associations Inaugural conference in March.  There, two experienced ITC judges were asked what weight they would give to various PTAB events in performing their ITC investigations.  In every case, their answer was: None.

Judge McNamara’s ruling In the Matter of Certain Composite Aerogel Insulation Materials (Investigation No. 337-TA-1003) provides a counterexample.  In that case, Aspen Aerogels had requested ITC investigation of Gunangdong Alison’s importation of aerogel insulation into the United States.  Guangdong Alison countered by challenging the patents at issue at the PTAB.  The ITC investigation closed in the interim between filing of the PTAB petitions and the institution decisions.

When institution was denied, Aspen requested that the investigation be reopened to take official notice of the institution decisions that were unfavorable to Guangdong Alison and to enter them into evidence.  Judge McNamara found reopening to be appropriate because the institution decisions could not have been submitted before the investigation was closed and because the institution decisions were deemed relevant to Guangdong Alison’s validity challenge at the ITC.

Takeaway

This decision evidences that the ITC’s aversion to considering PTAB trial proceedings is not a hard and fast rule, but is instead a reality of the ITC trial timeline.  When the timing of concurrent PTAB and ITC matters is aligned, it is proper to try to capitalize favorable PTAB happenings by attempting to enter positive decisions into the ITC investigation.