USITC suspends import ban until IPR is resolved
The US International Trade Commission (ITC) is suspending an import ban on patent-infringing drones pending the resolution of a Patent Trial and Appeal Board (PTAB) decision.
It is the first time the ITC has fully suspended an enforcement order pending resolution of a PTAB final written decision.
In an opinion made public yesterday, September 8, the ITC said the case was unusual because it reached its decision after the PTAB concluded invalidation proceedings involving the same patent.
According to the ITC, this approach reflects the US Patent and Trademark Office’s role as the “lead agency in assessing the patentability, or validity, of proposed or issued claims”.
The decision stems back to a complaint made by Autel Robotics in 2018, which accused SZ DJI Technology of importing unmanned aerial vehicles which infringe Autel’s patent (US number 9,260,184).
After a section 337 investigation, the ITC found that DJI’s goods infringed the ‘184 patent and issued an exclusion order barring them from being imported into the US.
But parallel to the ITC investigation, DJI challenged the‘184 patent at the PTAB, which found it was invalid and unenforceable.
The ITC decision to suspend its enforcement order means DJI can continue selling the drones in the US pending the result of an appeal launched by Autel.
The decision could motivate respondents faced with a section 337 complaint at the ITC to move more quickly to challenge the asserted patent at the PTAB.
“In the past, most respondents would not bother with looking to invalidate a patent asserted at the ITC,” said Mark Whitaker, partner at Morrison & Foerster.
“Now, there is more of an impetus to bring an inter partes review as soon as they possibly can,” Whitaker added.
DJI was represented in the case by Finnegan. The law firm has said that DJI’s sales will remain “intact” thanks to the ITC’s approach.
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