March 2, 2021

Volume XI, Number 61

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March 02, 2021

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March 01, 2021

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ITC Threat for Gaming Companies Grows with PTAB Discretionary Denials

While most patent disputes involving gaming companies are located in district courts, the ITC remains a viable option for at least some gaming disputes, where a patent owner can have the U.S. government bar importation of products found to infringe. While the ITC does not provide monetary damages, it’s extremely fast schedule and willingness to bar importation of infringing products makes it a desirable forum for patent owners.

The desirability of this forum has also increased recently with the PTAB seemingly unwilling to grant IPR challenges for patents being asserted in ITC investigations. Earlier this week, an IPR challenge filed by Nintendo was denied on discretionary grounds. Paper 13, Nintendo Co., Ltd. And Nintendo of America Inc., v. Gamevice, Inc., IPR2020-01197 (January 12, 2021).

Rather than being denied because of deficiencies in prior art or claim construction disputes, the PTAB determined that under 35 U.S.C. ¶314(a), it would be an inefficient use of the Board’s resources to institute the Nintendo IPR as the ITC investigation would be completed long before a Final Written Decision for the IPR would issue. Such logic however, means that any IPR filed for a patent in an ITC investigation will almost necessarily be denied, given the general timelines of ITC investigations.

This decision highlights the risks to gaming companies of ITC investigations and also should be a warning sign for gaming companies to consider preparing (and even filing) IPR challenges before being sued in the ITC to fast track such challenges and reduce the chances of a discretionary denial.

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Copyright © 2020, Sheppard Mullin Richter & Hampton LLP.National Law Review, Volume XI, Number 15
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About this Author

Harper Batts, Sheppard Mullin, Patent lawyer
Partner

Harper Batts is a partner in the Intellectual Property Practice Group in the firm's Silicon Valley office.

Areas of Practice

Harper has more than a decade of experience as an intellectual property litigator and client counselor. Numerous Fortune 50 clients have relied upon his experience to represent them in highly contentious patent litigation disputes in many different venues, including Texas, Delaware, California, New Jersey, Wisconsin, North Carolina, and the Federal Circuit. His experience includes leading several large joint defense groups in complex...

1.650.815.2673
Jeffrey Liang Litigation Lawyer Sheppard Mullin Law Firm Silicon Valley
Associate

Jeffrey Liang is an associate in the Intellectual Property Practice Group in the firm's Silicon Valley office.

Areas of Practice

Jeffrey combines his engineering background and litigation experience to provide clients with an integrated, strategic approach to IP litigation. He has represented companies in all phases of patent disputes, including pre-suit investigation, negotiations, discovery, depositions, oral hearings, and trials. His practice includes district court litigation, IPR proceedings, and Section 337 investigations before the International Trade...

650-815-2685
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