7/15/2020
`
`ITC Refuses to Stay Investigation Pending Inter Partes Review | Insights | Jones Day
`
`INSIGHTS
`
`ITC Refuses to Stay Investigation Pending Inter Partes Review
`
`MARCH 2016 |
`
` ALERTS
`
`The International Trade Commission ("ITC") has never granted a stay of a Section 337
`investigation in favor of an American Invents Act inter partes review("IPR") at the U.S. Patent
`and Trademark Oce ("USPTO"). That trend continued last week when Administrative Law
`Judge Shaw refused to stay an investigation even though the USPTO instituted an IPR
`proceeding on two of the three asserted patents before the Section 337 complaint was led at
`the ITC.[1] The ALJ's Order conrms that it is highly unlikely that a Section 337 proceeding will
`be stayed pending the completion of an IPR.
`
`The Case
`
`On December 15, 2015, complainant Energetiq Technology, Inc. led a complaint at the ITC
`alleging that respondents ASML Netherlands B.V., ASML US, Inc., and Qioptiq Photonics GmbH
`& Co. KG violate Section 337 by importing products that infringe three of Energetiq's patents:
`U.S. Patent Nos. 8,969,841, 9,048,000, and 9,185,786. Fifteen days prior to Energetiq's ling, on
`November 30, 2015, the Patent Trial and Appeal Board ("PTAB") held that there is a reasonable
`likelihood that the '841 Patent and the '000 Patent are invalid and instituted IPR proceedings.[2]
`The third asserted patent, the '786 Patent, is a continuation of the '000 Patent and did not issue
`until November 10, 2015—seven months after the IPR petitions were led against the '841 and
`'000 Patents.
`
`Immediately after institution of the Section 337 investigation, the respondents moved for a stay
`pending completion of the IPR proceedings. Citing the Commission's statutory mandate that it
`
`https://www.jonesday.com/en/insights/2016/03/itc-refuses-to-stay-investigation-pending-iinter-partesi-review
`
`1/5
`
`Neodron Ltd.
`Exhibit 2003
`IPR2020-00779
`
`Page 1 of 5
`
`

`

`7/15/2020
`
`ITC Refuses to Stay Investigation Pending Inter Partes Review | Insights | Jones Day
`conclude Section 337 investigations "at the earliest practicable time,"[3] the ALJ analyzed the
`facts under the ITC's ve-factor test for determining whether to grant a stay: (i) the state of
`discovery and the hearing date; (ii) whether a stay will simplify the issues and hearing of the
`case; (iii) the undue prejudice or clear tactical disadvantage to any party; (iv) the stage of the
`PTO proceedings; and (v) the ecient use of Commission resources.[4]
`
`With regard to the state of discovery and the hearing date, while acknowledging that the
`investigation was in the earliest stage of discovery and that the IPR proceeding would conclude
`before the target date, the ALJ held that the IPR proceedings provide no reason to stay the ITC
`investigation. The ALJ reasoned that the evidentiary hearing in the ITC case would occur prior
`to the nal determinations in the IPR proceedings and that any insight gleaned from the IPR
`proceedings could be integrated into the investigation after the hearing.[5] Citing to the different
`claim construction standard in an IPR versus the ITC[6] and the inability to address in an IPR
`questions of indeniteness under 35 U.S.C. § 112 or to consider prior art devices that are not
`printed publications, the ALJ similarly held that a stay would not simplify the issues and hearing
`of the ITC case.[7] This was especially true where one of the asserted patents was not in an
`active IPR proceeding.[8] The ALJ also held that a stay would be prejudicial to the complainant
`as it would allow the respondents to continue to import possibly infringing products and that
`"any importation of infringing merchandise derogates from the statutory right, diminishes the
`value of the intellectual property, and thus indirectly harms the public interest."[9] Finally, the
`ALJ stated that the stage of the IPR proceeding and use of Commission resources weighed
`against granting a stay, reasoning that "[t]he IPR proceedings will be far enough along such that
`any insights that emerge can be incorporated into this investigation," and that the most ecient
`uses of Commission resources are to adjudicate the issues that will not be heard in the IPR
`proceeding.[10]
`
`Key Takeaway
`
`The ITC remains an attractive venue to obtain swift adjudication of intellectual property rights,
`especially when contrasted with district courts' willingness to grant stays pending the
`completion of IPRs. Given ALJ Shaw's reasoning that the ITC can adjudicate more issues using
`a different standard than can be addressed in an IPR, and the fact that the IPR was instituted
`prior to the ling of the ITC complaint, it appears unlikely that the ITC will grant a stay of a
`Section 337 investigation in favor of IPR proceedings.
`
`Lawyer Contacts
`
`For further information, please contact your principal Firm representative or one of the lawyers
`listed below. General email messages may be sent using our "Contact Us" form, which can be
`found at www.jonesday.com/contactus/.
`
`https://www.jonesday.com/en/insights/2016/03/itc-refuses-to-stay-investigation-pending-iinter-partesi-review
`
`2/5
`
`Neodron Ltd.
`Exhibit 2003
`IPR2020-00779
`
`Page 2 of 5
`
`

`

`7/15/2020
`
`ITC Refuses to Stay Investigation Pending Inter Partes Review | Insights | Jones Day
`
`Blaney Harper
`Washington
`+1.202.879.7623
`bharper@jonesday.com
`
`Vishal V. Khatri
`Washington
`+1.202.879.3607
`vkhatri@jonesday.com
`
`David M. Maiorana
`Cleveland
`+1.216.586.7499
`dmaiorana@jonesday.com
`
`Richard Fieman
`Washington
`+1.202.879.3856
`reman@jonesday.com
`
`Jones Day publications should not be construed as legal advice on any specic facts or
`circumstances. The contents are intended for general information purposes only and may not
`be quoted or referred to in any other publication or proceeding without the prior written consent
`of the Firm, to be given or withheld at our discretion. To request reprint permission for any of
`our publications, please use our "Contact Us" form, which can be found on our website at
`www.jonesday.com. The mailing of this publication is not intended to create, and receipt of it
`does not constitute, an attorney-client relationship. The views set forth herein are the personal
`views of the authors and do not necessarily reect those of the Firm.
`
`[1] Certain Laser-Driven Light Sources, Subsystems Containing Laser-Driven Light Sources, and
`Products Containing Same, Inv. No. 337-TA-983, Order No. 8 (March 3, 2016) ("Certain Laser-
`Driven Light Sources").
`[2] See ASML Netherlands B.V. vs. Energetiq Technology, Inc., Docket No. IPR2015-01362,
`Decision on Institution, (P.T.A.B. Nov. 30, 2015); ASML Netherlands B.V. vs. Energetiq Technology,
`Inc., Docket No. IPR2016-01375, Decision on Institution, (P.T.A.B. Nov. 30, 2015).
`[3] 19 U.S.C. § 1337(b)(1).
`[4] Certain Laser-Driven Light Sources at 5, citing Certain Semiconductor Chips with Minimized
`Chip Package Size and Products Containing Same, Inv. No. 337-TA-605, Comm'n Op., 2008 WL
`
`https://www.jonesday.com/en/insights/2016/03/itc-refuses-to-stay-investigation-pending-iinter-partesi-review
`
`3/5
`
`Neodron Ltd.
`Exhibit 2003
`IPR2020-00779
`
`Page 3 of 5
`
`

`

`7/15/2020
`
`ITC Refuses to Stay Investigation Pending Inter Partes Review | Insights | Jones Day
`2223426, at *2 (U.S.I.T.C. May 27, 2008).
`[5] Id.
`[6] See 37 C.F.R. § 42.100(b) (IPR claim construction standard is "broadest reasonable
`interpretation"). Section 337 investigations adjudicate investigations with the same Phillips
`standard used in federal courts.
`[7] Certain Laser-Driven Light Sources at 6-7.
`[8] Id.
`[9] Id. at 7-8.
`[10] Id. at 8-9.
`
`BLANEY HARPER
`Partner
`Washington | + 1.202.879.7623
`bharper@jonesday.com
`Practice: Intellectual Property
`
`VISHAL V. KHATRI
`Partner
`Washington | + 1.202.879.3607
`vkhatri@jonesday.com
`Practice: Intellectual Property
`
`DAVID M. MAIORANA
`Partner
`Cleveland | + 1.216.586.7499
`dmaiorana@jonesday.com
`Practice: Intellectual Property
`
`YOU MAY ALSO BE INTERESTED IN
`
`JULY 30, 2020 | WEBINARS
`
`Trade Secrets 2020—Combating New Threats
`
`JULY 2020 | BLOGS
`
`LEAP: Additional PTAB Argument Time Offered For Junior Attorneys
`
`JULY 2020 | BLOGS
`
`Section 315(a) Calls At Institution Cannot Be Reviewed, PTAB LitigationBlog
`
`JULY 2020 | BLOGS
`
`Redesign Cleared Following Adverse Initial Determination, ITC Blog
`
`https://www.jonesday.com/en/insights/2016/03/itc-refuses-to-stay-investigation-pending-iinter-partesi-review
`
`4/5
`
`Neodron Ltd.
`Exhibit 2003
`IPR2020-00779
`
`Page 4 of 5
`
`

`

`7/15/2020
`
`ITC Refuses to Stay Investigation Pending Inter Partes Review | Insights | Jones Day
`
`PRACTICES
`
`Intellectual Property
`
`LOCATIONS
`
`Cleveland
`
`Washington
`
`Beijing
`
`Shanghai
`
`https://www.jonesday.com/en/insights/2016/03/itc-refuses-to-stay-investigation-pending-iinter-partesi-review
`
`5/5
`
`Neodron Ltd.
`Exhibit 2003
`IPR2020-00779
`
`Page 5 of 5
`
`