Requests To Stay ITC Investigations Pending Reexamination Of The Patents-In-Suit

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Requests To Stay ITC Investigations Pending Reexamination Of The Patents-In-Suit

Pursuant to 19 U.S.C. § 1337(b)(1), "[t]he Commission

shall investigate any alleged violation of this section" and

"conclude any such investigation and make its determination

under this section at the earliest practicable time after the date

of publication of notice of investigation." The Commission,

however, has authority to stay an investigation and has done so on

a case-by-case basis.1 Nonetheless, this authority is

expected to be used sparingly and only "in the most compelling

and appropriate circumstances."2

Invoking such authority, respondents have sought often to

suspend Section 337 investigations by filing motions to stay based

on parallel patent reexaminations at the U.S. Patent and Trademark

Office ("PTO"). Indeed, as one administrative law judge

("ALJ") has noted, "[w]hether to stay an

investigation pending reexamination by the USPTO is a thorny issue

that lately has become an all too familiar practice before the

[Commission]."3 Like cases in district

court,4 Section 337 investigations may proceed, despite

concurrent reexamination of the patents at issue.5 This

article surveys the Commission's treatment of requests to stay

Section 337 investigations pending the PTO's reexamination of

the patents-in-suit. More particularly, it identifies factors that

led to decisions to stay or not to stay recent investigations based

on concurrent reexami...

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