United States: No Stays Of ITC Proceedings Based On IPRs, But Commission Grapples With Effect Of A Final PTAB Decision

Last Updated: May 31 2016
Article by Rose S. Lee and Lynn I. Levine

On March 3, 2016, Administrative Law Judge David Shaw denied a motion to stay Investigation No. 337-TA-983 pending resolution of instituted inter partes reviews (IPR) for two of the three patents asserted in the investigation.  The requested stay was denied even though the two IPRs were scheduled to conclude before the anticipated target date for the ITC investigation's final determination.  This is in keeping with the prevailing practice at the ITC of declining to stay Section 337 investigations based on the pendency of proceedings in other forums.  On a related note, the Commission recently asked for briefing in another investigation regarding the effect of a final written decision by the Patent Trial and Appeal Board (PTAB) on a pending ITC investigation.


Motions to stay Section 337 investigations based on the pendency of proceedings in other forums are rarely granted at the ITC.  Prior to Judge Shaw's ruling in Certain Laser-Driven Light Sources, Subsystems Containing Laser-Driven Light Sources, and Products Containing Same (Inv. No. 337-TA-983) ("Laser-Driven Light Sources"), a request for a stay of a Section 337 investigation based on a pending IPR had been made in only one other investigation and was similarly rejected.  In that instance, the Judge denied a motion to stay the investigation pending completion of post-grant proceedings regarding five asserted patents—three patents for which ex parte reexaminations were in advanced stages and two patents for which IPR petitions had been filed but not yet instituted.  See Certain Microelectromechanical Systems and Products Containing the Same, Inv. No. 337-TA-876, Order No. 6:  Denying Request for Stay (May 21, 2013).  With respect to the patents for which IPR petitions had been filed, the Judge noted that it was not yet clear whether the PTAB would institute the requested IPRs, and, accordingly, any stay as to those patents would be premature.

Denial of Stay in Laser-Driven Light Sources

Respondents moved to stay the 983 investigation until the PTAB) issued final written decisions in IPR proceedings involving two of the three asserted patents.  Fifteen days before the ITC complaint was filed, the PTAB instituted IPRs of seven claims of patents asserted in the ITC case.  Those IPRs were scheduled to conclude by November 2016, before the anticipated May 2017 target date for the ITC investigation and even before the anticipated January 2017 date for issuance of the Initial Determination.  Respondents argued that it would be a waste of resources to proceed with the investigation inasmuch as IPRs were designed "to be faster than any other forum in adjudicating patent claims (including [the ITC] and only 8% of patents for which IPR proceedings are instituted emerge unchanged."  Laser-Driven Lights Sources, Inv. No. 337-TA-983, Order No. 8 at 2 (March 3, 2016).

Judge Shaw denied the motion to stay upon consideration of several factors:  "(1) the state of discovery and the hearing date; (2) whether a stay will simplify the issues and hearing of the case; (3) the undue prejudice or clear tactical disadvantage to any party; (4) the stage of the PTO proceedings; and (5) the efficient use of Commission resources."  Id. at 4-5 (citing Semiconductor Chips, Inv. No. 337-TA-605, Comm'n Op., 2008 WL 2223426, at *2 (U.S.I.T.C. May 27, 2008).

Regarding factors (1) and (4), Judge Shaw reasoned that because the IPRs would conclude six months before the target date for the ITC investigation's final determination, there would be a window for the Commission "to integrate the insights obtained from the IPRs into this investigation."  He concluded that in such circumstances, the status of the IPR proceedings provided no reason to stay the investigation.

With respect to whether a stay would simply the issues, Judge Shaw found that the PTAB could do nothing to simplify the case as to the third patent asserted in the ITC investigation since no IPR petition had been filed regarding claims in that patent.  Judge Shaw also noted that the IPR process uses a different claim construction standard—the "broadest reasonable interpretation"—and that IPRs address only 35 U.S.C. §§ 102 and 103 invalidity issues (e.g., not the question of indefiniteness under 35 U.S.C. § 112) and therefore the IPRs may not simplify the ITC investigation.

With respect to prejudice, Judge Shaw concluded that "[d]elaying a final determination may mean that respondents would have years to import infringing products, where any importation of infringing merchandise derogates from the statutory right, diminishes the value of the intellectual property and thus indirectly harms the public interest."

Finally, with respect to the efficient use of Commission resources, Judge Shaw found that the IPR proceedings and ITC investigation were "not truly parallel because the investigation involves numerous other issues separate from the IPRs."  He concluded that the most efficient use of Commission resources was to proceed with the investigation.

Accordingly, Judge Shaw denied Respondents' motion to stay pending resolution of the IPRs.

Recent Question Raised In Three-Dimensional Cinema Systems Regarding Effect Of A Final Written PTAB Decision Upon Pending ITC Investigation

Interestingly, the Commission recently extended an investigation to consider the potential effect of a final written decision by the PTAB in an IPR proceeding.  See Certain Three-Dimensional Cinema Systems and Componets Thereof, Inv. No. 337-TA-939, Notice of Commission Determination to Extend the Target Date (April 18, 2016) Respondents' Answer to the Complaint in Three-Dimensional Cinema Systems stated that IPR petitions regarding each of the patents asserted in the investigation had been filed in October 2014, a month before the Complaint was filed at the ITC (it does not appear that a motion to stay the ITC investigation was filed based on those petitions).  In his Final Determination, Judge Theodore Essex found a violation of Section 337 based on infringement of the asserted claims in the three remaining patents at issue.  In February 2016, the Commission decided to review various aspects of the Judge's determination relating to the asserted patents.

Four days before the target date for completion of the investigation (and well after final briefing on the merits and remedy, public, interest and bonding had concluded), on April 14, respondents advised the Commission that the PTAB had issued a final written decision finding certain claims of U.S. Patent No. 8,220,934 ("the '934 patent") unpatentable, including two of the three claims asserted in the ITC investigation.  The Commission then extended the target date by approximately two and a half months and asked the parties to brief the following question:

What is the effect of the PTAB's Final Written Decision on the Commission's final determination, including any underlying findings, in this investigation? Please include in your response any effect on the issuance of remedial orders with respect to the asserted claims of the '455 and '296 patents and claim 11 of the '934 patent.

Although no Section 337 investigation has been stayed on the basis of a pending IPR, the outcome in the Three-Dimensional Cinema Systems investigation could potentially impact how future requests for stays based on pending IPRs will be handled at the Commission.  The target date for completion of the investigation is currently set for June 1, 2016.

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Rose S. Lee
Lynn I. Levine
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.