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PTAB's Decision Not To Institute IPR Is Relevant In A Co-Pending ITC Investigation
April 25, 2017

ITC complainant Aspen Aerogels, Inc. (“Aspen”) filed on March 24, 2017 a motion and supporting memorandum to reopen proceedings for receipt of additional evidence.  In the Matter of: Certain Composite Aerogel Insulation Materials and Methods For Manufacturing The Same, Investigation No. 337-TA-1003.  Specifically, Aspen sought to introduce decisions denying institution of inter partes review of U.S. patents Nos. 6,989,123 and 7,780,890 by the Patent Trial and Appeal Board (“PTAB”) pursuant to Commission Rule 19 C.F.R. § 210.42(g).  Under 19 C.F.R. § 210.42(g), “[a]t any time prior to the filing of the initial determination, the administrative law judge may reopen the proceedings for the reception of additional evidence.”  Respondents and Commission Investigative Staff opposed Aspen’s motion.  Despite the opposition, the administrative law judge (“ALJ”) granted Aspen’s motion to reopen proceedings.  Investigation No. 337-TA-1003, Order No. 37 (April 6, 2017).    

The ALJ noted that the PTAB decisions discussed “at length multiple pieces of prior art” that Respondents have relied upon in the investigation, including “Respondents’ primary reference” and other prior art references that were discussed during the evidentiary hearing.  Then the ALJ found that “these [PTAB] decisions are relevant and may inform the issues in this Investigation,” although the ALJ recognized that the PTAB decisions are not final decisions and are based on different evidentiary standards and records.     

This case demonstrates how the PTAB’s decisions denying the patents in suit may be considered in a co-pending ITC investigation, where the same set of prior art is relied upon by respondents/petitioners in the PTAB and the ITC.   If there are relevant PTAB decisions, practitioners should consider timely informing a decision-maker in a different forum (such as the ITC) of those decisions.  

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