Bing Ai, Kevin Patariu, and John Schnurer published an article in the June/July 2015 issue of Today’s General Counsel on the strategic use of inter partes review (IPR) proceedings against patents asserted at the U.S. International Trade Commission (ITC). The article explains that there is a misconception that IPR proceedings are not useful to parties sued for patent infringement at the ITC, perhaps because of the fast pace that is typical of ITC investigations. While it may not be possible to obtain a stay of an ITC investigation during the pendency of an IPR proceeding, the article explains that a party accused of infringement in an ITC investigation should consider filing an IPR petition relatively early in the life cycle of an ITC investigation as a cost effective and beneficial part of an overall strategy for defending against an action at the ITC.

A copy of the article is available here. 

As explained in the article and illustrated in the figure below, an IPR petition filed by the typical Notice of Prior Art deadline in a 17 month ITC investigation can allow Patent Owner’s IPR statements to be used advantageously at the ITC hearing and in various filings throughout the ITC investigation. A similar result can be obtained in a 16 month ITC investigation by filing the IPR slightly before the Notice of Prior Art deadline.