After the America Invents Act was enacted in September 2011, the possibility existed that the Act’s inter partes review process would result in more frequent stays of ITC proceedings than historically with motions to stay pending resolution of USPTO patent reexaminations. Three years after the statute’s enactment, that has not been the case. There have been no stays granted pending inter partes review, and the sole opinion to address the issue, ALJ Gildea’s May 21, 2013 Order in Certain Microelectromechanical Systems, Inv. No. 337-TA-876, denied a motion to stay pending the reexamination of three patents that were “in advanced stages” and anticipated petitions for inter partes review of the remaining two asserted patents. While the ALJ denied the motion to stay based on the anticipated petitions as premature because it was unclear whether the USPTO would reexamine the patents, his analysis may pose a hurdle for future stay requests. In particular, the ALJ noted that while a district court plaintiff has a remedy for past damages once a stay is lifted, no relief is available to a complainant until an exclusion or cease and desist order is issued, effectively depriving a complainant of the ability to “assert its patent rights against alleged infringers” during the “dead zone” the stay is in effect. The ALJ went on to state that “if it were possible to create such a lengthy dead zone, reexamination petitions would become part of every respondent’s tactical playbook in every single ITC investigation.” Although the dead zone of two to three (or more) years referenced in the Order is longer than the statutorily mandated 12 to 18 month time-frame for a final determination of the inter partes review process, that may not be a meaningful difference in the ALJ’s view.
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America Invents Act’s inter partes review process has not resulted in ITC stays
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