Judge McNamara determined to reopen the record after the hearing and take judicial notice of two PTAB decisions denying institution of IPR challenges of the asserted patents in Certain Composite Aerogel Insulation Materials and Methods for Manufacturing the Same, Inv. No. 337-TA-1003.  The ALJ’s decision raises interesting issues with respect to the effect of PTAB decisions on Section 337 investigations.

Respondent Guangdong Alison Hi-Tech Co., Ltd. filed two petition for inter partes review of two asserted patents in September and October of last year.  On March 21, 2017 and March 23, 2017, the PTAB issued decisions denying both of Respondent Alison’s petitions.

On March 24, 2017, one month after the completion of the evidentiary hearing, pursuant to ITC Rule 210.42(g), Complainant Aspen Aerogels, Inc. filed a motion to reopen proceedings for receipt of the two PTAB decisions into evidence or in the alternative for the ALJ to take judicial notice of the decisions.  Aspen argued that “[t]he PTAB’s decisions that Alison failed to meet the minimal institution standard are clearly relevant to whether Alison can meet the higher burden it faces in this investigation, particularly where Alison relied on many of the same prior art references and arguments, and the same expert, in its petitions as it did during this investigation.”

Respondents opposed the motion noting that the PTAB decisions have little relevance in the ITC given the PTAB’s different standard for invalidity and limited evidentiary record.

Judge McNamara sided with Complainant and determined to reopen the record for receipt of the decisions.  She also took judicial notice of both decisions.  The ALJ noted that the PTAB decisions “are relevant and may inform the issues in this Investigation” but also recognized that they “are not final decisions and are based on a different evidentiary standard and record.”

The ALJ’s initial determination on violation of Section 337 is due on June 8, 2017.


To date, the ITC has shown little deference to PTAB IPR decisions.  The ITC has not stayed an investigation pending an instituted IPR, and the ITC has even found a patent not invalid that was previously found unpatentable in an IPR proceeding.  But the ITC has not weighed in on whether a PTAB decision not to institute an IPR can rebut a respondent’s invalidity case.  Judge McNamara’s order finds that such decisions are at least relevant in a Section 337 Investigation.  We’ll have to wait for her initial determination to see how much persuasive value they actually have.

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Vishal Khatri is an intellectual property lawyer with more than 15 years of experience representing clients in high stakes, bet-the-company patent litigation and procurement matters around the world. He routinely represents clients in matters before U.S. district courts, the United States International Trade Commission (ITC), and the United States Patent and Trademark Office (USPTO), including Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).