ITC Mandate Provides Safe Haven for Troll Abuse?
With injunctions harder to come by, and some district courts staying proceedings upon the mere filing of a patent reexamination, it is not surprising that non-practicing entities (NPEs) have been heading to the ITC (and, in the process testing the domestic industry requirement). To date, the ITC mandate to expeditiously adjudicate 337 actions has led to relatively few stays pending reexamination. In some cases, stays have been entered and later reversed by the full Commission. (See Tessera Decision here). This is a further benefit for NPEs.
Recently, a motion to stay an ITC proceeding pending patent reexamination was again considered by the agency in Certain Blue Ray Disc Players. The ITC blog has provided a nice summary of the ALJ’s analysis (here). Perhaps not surprisingly, the ITC denied the motion to stay. But the relative advanced stage of the reexamination proceeding (Final rejection) did seem to make the decision a close call. In the end, it seemed that the pendency of the reexamination appeal was too long/speculative for the ITC. In this regard, the agency explained:
the possibility of a significant length of time passing before the reexamination proceeding concludes weighs against granting a stay.
Interestingly, the defendants also pointed out that the ITC action was likely only pursued by the plaintiff as a tactic to avoid the stay of a district court action and/or to force the defendants into a high cost proceeding for settlement leverage. This argument was not a factor in the decision, in this regard, the ITC explained that the motivation behind the filing was irrelevant.
This time next year, when inter partes review (IPR) becomes available to defendants, the pendency will be 12-18 months prior to a CAFC appeal. Going forward, this change in pendency could result in more stays at the ITC pending USPTO proceedings.