The United States Patent and Trademark Office (“PTO”) is quickly becoming a popular forum for parties who have been accused of patent infringement.  A defendant can challenge the validity of an asserted patent by filing a petition for inter partes review (“IPR”) with the PTO while the infringement suit is pending in another forum.  After filing an IPR, the potential infringer can move to stay the co-pending infringement suit pending a decision in the IPR.  To evaluate whether a stay will be granted, is necessary to consider in what forum the patent litigation suit is taking place.  Different forums use different approaches and may reach different results when determining whether to grant a stay.

Patent infringement suits are most often brought in the federal district courts under Section 281 of the US Patent Laws (35 U.S.C. § 281).  However, the United States International Trade Commission (“USITC”) also has limited jurisdiction to hear allegations of infringement.  Under Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337), the USITC has jurisdiction to conduct investigations into allegations of certain unfair practices in import trade.  These practices include infringement of certain statutory intellectual property rights, including patent rights.  However, differences between federal court practice and ITC regulations lead to judges taking different approaches when considering whether to grant a motion to stay pending an IPR, potentially leading to different results.
Continue Reading Differing Approaches to Stays of Co-Pending Litigation