Under the US Patent and Trademark Office’s (USPTO) new guidance on discretionary denial of institution of inter partes and post-grant (IPR and PGR, respectively) proceedings, a pending International Trade Commission (ITC) investigation is no longer a basis for the Patent Trial and Appeals Board (PTAB) to exercise its discretion to deny institution. This is a material change from past PTAB practice, which had previously denied institution of such post-grant proceedings due to an ongoing parallel ITC proceeding. This article discusses three considerations for ITC litigants given the USPTO’s new guidance.
Authors: Frank D. Liu and Andrew P. Zappia, Troutman Pepper Hamilton Sanders LLP
This article was originally published on the website of Troutman Pepper Hamilton Sanders LLP on July 21, 2022.