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In a Rare Move, ITC Applies Public Interest Factors to Exempt Research-Related Microfluidic Devices from Exclusion Order

The U.S. International Trade Commission (“ITC”) has become a popular venue for patent infringement actions, as it provides for fast and powerful exclusionary remedies against infringers in the form of exclusion and cease-and-desist orders, through which the ITC can bar importation of infringing products into the United States. Importantly, the ITC does not apply the equitable “eBay factors” before issuing such relief—instead, it must consider the so-called “public interest factors”: the effect of the orders upon (1) the public health and welfare, (2) competitive conditions in the United States economy, (3) the production of like or directly competitive articles in the United States, and (4) United States consumers.

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The Federal Circuit Reverses Long Standing PTAB Precedent on the IPR Time Bar Exception

Practices: Intellectual Property Litigation, Patent Trial & Appeal Board (PTAB) Proceedings

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On August 16, 2018, the Federal Circuit overruled the Patent Trial and Appeal Board’s (“PTAB”) long-standing practice of accepting certain inter partes review (“IPR”) petitions outside of the one-year time bar window prescribed by Section 315(b) of Title 35. The PTAB has consistently held that, where the underlying district court action was dismissed without prejudice, service of the complaint does not trigger the one-year time bar. The Federal Circuit in Click-to-Call Techs., LP v. Ingenio, Inc. (opinion here) reversed and found that service of the complaint does trigger the one-year time bar, even if the action is later dismissed voluntarily without prejudice. Petitioners now have one year to file IPR petitions even if the underlying district court action is eventually voluntarily dismissed without prejudice.

We will continue to monitor further developments regarding the impact of these decisions. If you have any questions about this Alert, please contact Scott McKeown.

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