ITC Suspends Enforcement Of Remedial Orders Pending Appeal Of IPR Final Written Decision
On September 8, 2020, the United States International Trade Commission (“ITC”) issued an opinion suspending enforcement of remedial orders pending appeal of the Patent Trial and Appeals Board’s (“PTAB”) final written decision (“FWD”) of unpatentability in a parallel inter partes review (“IPR”) proceeding. Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Comm’n Op. (Sept. 8, 2020); Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Final Determination (Aug. 20, 2020). In its opinion, the ITC relied on its broad discretion in selecting a remedy, its recognition of the PTAB’s leading role in assessing the validity of patent claims, and Congress’s goal for IPRs to be a substitute for litigation on patent validity issues.
Generally, the Commission has declined to stay remedial orders in light of PTAB unpatentability decisions. See, e.g., Certain Road Construction Machines, Inv. No. 337-TA-1088 (January 31, 2020). The Commission has previously suspended enforcement of remedial orders in light of PTAB proceedings in cases where the remedial orders suspended were superfluous, that is, where other remedial orders in the same investigation served to bar the accused products independently of the suspended orders. See Certain Magnetic Tape Cartridges, Inv. No. 337-TA-1058 (April 9, 2019); Certain Three-Dimensional Cinema Systems, Inv. No. 337-TA-939 (July 21, 2016). In this case, there were no such other remedial orders.
On August 30, 2018, Autel Robotics USA, Inc. filed a complaint in the ITC accusing SZ DJI Technology Co., Ltd. (“DJI”) of infringing three patents relating to drone technology. The ITC instituted an investigation on October 2, 2018. In November 2018, DJI filed petitions for IPR of all three accused patents before the PTAB, which were instituted in May 2019.
On March 2, 2020, Chief Administrative Law Judge Charles E. Bullock issued an Initial Determination recommending issuance of a limited exclusion order and a cease and desist order covering infringing products. The parties filed petitions for review shortly thereafter. On May 29, 2020, while the parties’ respective petitions for review were still pending, DJI informed the ITC that the PTAB had issued final written decisions finding all asserted claims of the asserted patents to be unpatentable. On June 9, 2020, the ITC determined that it would partially review the Initial Determination—including the impact, if any, of the PTAB decisions.
On August 20, 2020, the ITC issued a Final Determination finding remedial orders to be appropriate. However, the ITC suspended enforcement of the remedial orders pending appeal of the PTAB’s unpatentability decision. The ITC’s September 8, 2020 public opinion set forth its reasoning.
The ITC found that it has broad discretion in selecting the form, scope, and extent of the reme
dy in an investigation. The ITC gave deference to the advanced posture of the PTAB proceeding and the potential cancellation of the asserted claims.
The ITC also recognized the PTAB’s role as the lead agency in assessing the patentability or validity of patent claims. Specifically, the PTAB has the power to cancel patent claims after its unpatentability decision is finally resolved. In contrast, the ITC’s patentability determinations are only for the purpose of adjudicating whether a violation has occurred and are not binding on other tribunals even if affirmed by the Federal Circuit. The ITC further noted that suspending remedial orders comported with its statutory directive to complete its investigation quickly, while still deferring to the PTAB.
Finally, the ITC found that suspending enforcement of remedial orders when the PTAB’s final written decision issues before the Commission’s own determination furthers the goal of Congress that the IPR proceedings be a substitute for district court litigations on patent-validity issues.
It is always significant when the ITC uses its discretion to suspend, or not to enter, remedial orders. However, it is important to note that a PTAB decision issued after an ITC remedial order apparently will not cause the Commission to suspend that order (“This circumstance also differs significantly from other investigations in which the Commission issued its remedial orders before the PTAB issued its final decision of unpatentability. . . . Suspending enforcement of the remedial orders when the [PTAB unpatentability decision] issues before the Commission’s determination gives effect to the Congressional goal.” (Emphasis in original.) Thus, it is critical to move very quickly indeed to seek IPR if one is hoping for a PTAB final written decision to come in time to suspend a Commission remedial order.