The ITC has issued a Final Determination in Unmanned Aerial Vehicles and Components Thereof (Inv. 1133) finding that DJI violated Section 337, issuing an exclusion order against drones that infringe a patent owned by Autel, but suspending enforcement of that remedy pending appellate review of a decision by the Patent Trial and Appeal Board declaring the asserted patent invalid.

The decision to suspend enforcement was very surprising considering that it represents a complete reversal of the agency’s previous policy of ignoring conflicting PTAB decisions.  It is well known that, unlike federal district court, the ITC does not stay proceedings during PTAB review and does not delay or rescind enforcement of exclusion orders after a patent has been deemed invalid by PTAB.

The justification for the ITC’s position was most recently articulated in Road Construction Machines and Components Thereof (Inv. 1088), where the Commission stated that “final written decisions of the PTAB are neither final nor binding.”  That is, the ITC will continue to give effect to the patent claims until they have been literally cancelled, which doesn’t occur until after the cancellation decision has survived an appeal to the Federal Circuit.

The ITC did agree to honor a PTAB decision in two previous cases where, like in Unmanned Aerial Vehicles, a patent was deemed invalid before the completion of the ITC investigation. In both of those cases, however, the violation was based on infringement of multiple patents.  In suspending the exclusion orders only as to the newly invalidated patent, the Commission stressed in each case that the suspension would have no practical effect, as the accused products were still excluded.  The complainant in Unmanned Aerial Vehicles highlighted this distinction, while the respondent pointed out how it makes no sense to have a rule where the Commission suspends enforcement based on invalidation only when doing so would have no practical effect.

Because we don’t yet have a public version of the Commission Opinion, we don’t know yet how the Commission justified its change in policy or otherwise reconciled its past practice with the current decision.  Hopefully, though, this signals a change for future cases and a willingness from the ITC to be a less disruptive force in the patent system.

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