Commission Awaits PTAB Result – Sometimes

Under Section 337 of the Tariff Act of 1930, the International Trade Commission (ITC) is required to conclude its investigations and make determinations “at the earliest practicable time.” 19 U.S.C. § 1337(b)(1). This mandate for speed in ITC proceedings drives the Commission forward despite parallel Patent Trial & Appeal Board (PTAB) proceedings. The fact that the ITC, unlike district courts, cannot award monetary relief only contributes further to the Commission’s aversion to stays pending PTAB review.

Increasingly, however, PTAB proceedings concluding prior to enforcement, are catching the eye of the Commission. In such scenarios, an adverse PTAB ruling against a subject patent can result in a suspension of enforcement.

Most recently, in Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-1058, Comm’n Notice (Mar. 25, 2019), the Commission affirmed the ALJ’s initial determination (ID) that there was a violation of 337 as to, among other claims, claim 17 of one of the patents-in-suit. However, after the ID, but before the Commission’s review, the PTAB issued a final written decision finding this claim to be unpatentable.

In light of the adverse PTAB decision, the Commission suspended the enforcement of its exclusion and cease and desist orders as to claim 17 “pending final resolution” of the PTAB’s decision (i.e., appellate review) (here). The ITC has treated such circumstances similarly in the past; for example, in Certain Three-Dimensional Cinema Systems & Components Thereof, the Commission also suspended enforcement where the PTAB had – between the ID and the Final Determination (FD) – found the asserted claims to be unpatentable. Inv. No. 337-TA-939, Comm’n Notice (July 21, 2016). However, in Certain Network Devices, Related Software and Components Thereof (II), where the Commission had already issued a FD, it refused to rescind its orders until the Federal Circuit affirmed the PTAB ruling. Inv. No. 337- TA-945, Comm’n Op. (Aug. 16, 2017).

In light of these rulings, in future “race” scenarios between the ITC and PTAB, the ITC is exceedingly unlikely to stay proceedings. But, a timely filed PTAB challenge appears to provide a solution satisfactory to the ITC that, while avoiding inconsistent outcomes, comports with its mandate for speed.