Full Commission Considers Impact of IPR FWD in Ongoing 337 Investigation

Back in December of 2014, the International Trade Commission (ITC) instituted an investigation at the behest of RealD. The complaint alleged violations of section 337 based upon the importation of certain three-dimensional cinema systems, and components thereof, that infringe certain claims of U.S. Patent Nos. 7,905,602 (“the '602 patent”), 7,857,455 (“the '455 patent”), 7,959,296 (“the '296 patent”), and 8,220,934 (“the '934 patent”).  MasterImage 3D, Inc. was the named respondent.

In October of 2014, MasterImage filed seven (7) IPRs against the asserted patents.  Five of these IPRs were denied institution, but two proceeded, one on the '934 and the other on the '455. Readers may be familiar with "MasterImage" based upon the informative decision on amendment practice.

Thereafter, on December 16, 2015, the presiding ALJ issued a final ID finding a violation of section 337 with respect to all but the '602 patent. The ALJ found that the asserted claims of each patent are infringed and not invalid or unenforceable. These findings were appealed to the full Commission. On February 16, 2016, the Commission determined to review the final ID in part and requested additional briefing from the parties on certain issues.  On April 14, 2016, MasterImage filed a letter, notifying the Commission that, on that same day, the USPTO's Patent Trial and Appeal Board (PTAB) issued a Final Written Decision finding claims 1, 6-10, and 18-20 of the '934 patent unpatentable. 

So, now what?

The Commission has extended the target due date to June 1, 2016 for completion of the investigation, and has requested a response to the following question only (initial submissions were due 4/26, replies by 5/3)

1. What is the effect of the PTAB's Final Written Decision on the Commission's final determination, including any underlying findings, in this investigation? Please include in your response any effect on the issuance of remedial orders with respect to the asserted claims of the '455 and '296 patents and claim 11 of the '934 patent.

(The scope of the investigation initially included claims 1, 6, 8, 10-12, 15, and 17 of the '934 patent) (here)  Claim 11 made it to the ITC's final ID.

In considering the impact, it is noteworthy that inter partes reexamination estoppel did not extend to the ITC. The IPR statutes were designed to improve the former reexamination system.  As such, the IPR estoppel statutes extend to the ITC; this creates an interesting inference of legislative intent. (While estoppel itself is irrelevant here given the win and claim 11 being denied IPR from the start,  there is still the story that Congress seemingly designed PTAB statutes to impact ITC practice.)

Of course, given that claim 11 of the '934 is uncovered by the IPR and included in the final ID, the ITC may side-step a sticky issue here.  That said, this is a situation likely to appear with greater frequency at the ITC going forward.