On July 27, 2016, the U.S. International Trade Commission issued its Final Determination in Certain Three-Dimensional Systems and Components Thereof, Inv. No. 337-TA-939. The Administrative Law Judge ("ALJ") issued an Initial Determination ("ID"), finding a violation of three patents and recommending that a limited exclusion order and cease and desist order be issued. Notably, one of the patents was also involved in an inter partes review ("IPR") before the U.S. Patent & Trademark Office's Patent Trial and Appeal Board ("PTAB"). While the Commission was reviewing the ID, the PTAB issued its Final Written Decision, invalidating claims of the patent-at-issue. As a result, the Commission, in its Final Determination, suspended enforcement of the limited exclusion order and cease and desist order for the patent:
In view of the PTAB's Final Written Decision finding certain claims of the '934 patent unpatentable, the Commission has determined to suspend the enforcement of the limited exclusion order and cease and desist orders as to claims 1, 6, and 11 of the '934 patent pending final resolution of the PTAB's Final Written Decision.
With respect to the other two patents, the Commission issued a limited exclusion order and cease and desist order, and thus, the Commission's decision to suspend with respect to one patent did not impact the ultimate result. However, this determination is nonetheless important, as it indicates the Commission's willingness to defer to the PTAB, at least with respect to Final Written Decisions invalidating claims. This is in contrast to ALJs universally refusing to stay investigations while IPRs are pending but not yet finally decided. It remains to be seen whether the Commission's decision here will alter ALJs' treatment of stay motions going forward. The Commission Opinion itself has not been publicly released, so the Commission's specific reasoning is unknown, but it may shed additional light on this issue.
What is clear now, however, is the key takeaway: Respondents faced with an ITC investigation should consider filing post-grant proceedings before the PTAB against all asserted patents as soon as possible. PTAB proceedings take 18 months, which is often about the same time as an ITC investigation takes to reach Final Determination. Thus, even if the ITC rules against a Respondent, a favorable PTAB decision may save the Respondent from adverse ITC decisions.
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