USPTO Director Vacates PTAB Final Decision, Deferring to ITC Ruling
The USPTO Director vacated a final PTAB unpatentability decision, finding the board failed to justify its conflicting outcome with a prior ITC validity ruling on the same patent claims and evidence.
In a significant move for patent litigation strategy, the Director of the U.S. Patent and Trademark Office (USPTO) vacated a final written decision from the Patent Trial and Appeal Board (PTAB) that had found patent claims invalid. The vacatur was based on a conflicting prior determination by the International Trade Commission (ITC), which had upheld the patent's validity based on nearly identical claims, evidence, and arguments. Following the Director's action, the ITC lifted a suspension on its remedial orders, allowing an import ban on the infringing product to take effect.
This decision demonstrates the USPTO's commitment to a "one collective bite" approach to validity challenges, even without formal rules in place. The Director reasoned that inter partes review (IPR) is an alternative to, not an additional venue for, litigation. The ruling places a heavy burden on the PTAB to justify any outcome that contradicts a prior finding from a co-pending ITC or district court proceeding. For patent litigants, this elevates the strategic importance of forum selection and timing, as an unfavorable outcome in one venue now poses a direct and immediate threat to a parallel challenge, even after a final PTAB decision has been rendered.