Last week, the ITC received two new Section 337 complaints and released a public version of a Commission Opinion in which the agency chose for the first time ever to suspend enforcement of an import ban in deference to the Patent Office’s determination that the asserted patent is invalid.

New Complaint: Artificial Eyelash Extension Systems, Products, and Components Thereof (Dkt. No. 3488)

This complaint was filed on September 9 by Lashify asserting two utility patents and two design patents.  Respondents include six competing eyelash extension brands and three retail chains (CVS, Ulta, and Walmart).  Lashify is seeking a general exclusion order from the ITC and has also sued some of the respondents in federal district court and in China.

New Complaint: Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (Dkt. No. 3489)

On September 10, DivX filed a Section 337 complaint asserting four video coding software patents against smart TV makers LG, Samsung, and TCL along with chipmakers MediaTek and Realtek.  DivX (which is owned by SoftBank’s Fortress Investment Group and appears to be primarily in the business of licensing its patent portfolio) is relying exclusively on the investments of a third-party licensee to satisfy the domestic industry requirement.  That licensee is Element, a company that assembles some of its televisions in the United States.

Commission Opinion:  Unmanned Aerial Vehicles and Components Thereof (Inv. No. 1133)

The ITC published a public version of the Commission Opinion in Unmanned Aerial Vehicles (Inv. No. 1133) explaining the Commission’s decision to suspend enforcement of an exclusion order based on infringement of a patent found by the Patent Trial and Appeal Board to be invalid.  The suspension marks a complete reversal of the ITC’s consistent (until now) practice of ignoring PTAB decisions still under appeal.

In an attempt to argue that the suspension is consistent with past practice, the opinion makes a distinction between cases depending on whether the PTAB’s decision was issued before or after an ITC exclusion.  But the Commission also adopts a deferential stance toward PTAB that would surely apply in both scenarios:

[S]uspension of remedial orders in the current context recognizes the PTO’s role as the lead agency in assessing the patentability, or validity, of proposed or issued claims. . . . The Commission’s invalidity determinations in patent cases, in contrast, are for purposes of adjudicating whether or not a Section 337 violation has occurred, and are not binding on the PTO, federal courts, or other tribunals, even if affirmed by the Federal Circuit.

. . .

In addition, the Commission’s decision to suspend enforcement is guided by the goal of the inter partes review (“IPR”) procedure under the America Invents Act (“AIA”) to provide “a quick, inexpensive, and reliable alternative to district court litigation to resolve questions of patent validity.” . . . Suspending enforcement of the remedial orders when the PTAB’s Final Written Decision on unpatentability issues before the Commission’s determination gives effect to the Congressional goal.

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