ITC Shows Interest in PTAB Record

Technical Findings of PTAB Increasingly Leveraged in Parallel Court Proceedings

Patent challenge proceedings of the USPTO's Patent Trial & Appeal Board (PTAB) are designed to provide a low cost, expedited option to district court litigation. Of course, if a patent challenger is unsuccessful at the PTAB, the district court or International Trade Commission (ITC) is left to make the ultimate resolution on validity. Yet, as I discussed last year, closed AIA trial records are being leveraged by the courts to aid in resolving a number of disputed issues — from claim construction to summary judgement invalidity determinations.

More recently, the International Trade Commission (ITC) has followed suit.

In Certain Composite Aerogel Insulation Materials & Methods for Manufacturing the Same (here), a complaint filed by Aspen Aerogels, Inc. (“Aspen”) alleging violation of Section 337 of certain composite aerogel insulation materials that infringe one or more claims of U.S. Patent Nos. 7,078,359; 7,399,439; 6,989,123; 7,780,890; and 9,181,486 by Nano Tech Co., Ltd. (“Nano”) and Guangdong Alison Hi-Tech Co., Ltd. (“Alison”).

During the ITC investigation, Alison filed two IPRs: one against four claims of U.S. 6,989,123 and one against eight claims of U.S. 7,780,890.  The claims challenged in the IPRs are a subset of the claims Alison and Nano are asserting to be invalid in the ITC investigation.

After the ITC proceedings closed, the PTAB issued decisions denying institution in each of the IPRs. Because the Initial Determination in the ITC investigation had not yet been issued, Aspen filed a motion to reopen the proceedings for receipt of these decisions as evidence, or in the alternative, a request for the administrative law judge (“ALJ”) at the ITC to take judicial notice of these decisions. Not surprisingly, Alison and Nano opposed the motion.

The ALJ granted the motion, and also took judicial notice of the decisions, noting that “the PTAB decisions discuss at length multiple pieces of prior art that Respondents have relied upon in this Investigation” and that therefore “these decisions are relevant and may inform the issues in this Investigation.”  That being said, the ALJ also recognized that the PTAB decisions are based on a different evidentiary standard, and stated that these differences would be considered accordingly.

But, the differences here actually hurt the respondents. 

Where prior art does not satisfy the PTAB's preponderance of the evidence standard for demonstrating unpatentability, by definition, the same art should fail to meet the heightened clear and convincing standard of the courts. Indeed, some courts have dismissed such art on summary judgement for this same rationale.

This case was brought to my attention by the great Docket Navigator.

Scott A. McKeown is an author of the Patents Post Grant.