On July 21, 2016, the Commission issued remedial orders in the 939 Investigation, but suspended those orders with respect to certain claims that had been found unpatentable by the Patent Trial and Appeal Board (PTAB). Enforcement of the ITC’s remedial orders will remain suspended pending final appellate resolution of the PTAB’s final written decision. This is the first time that the ITC has suspended enforcement of remedial orders pending appeal of a PTAB decision in an inter partes review (IPR).

As we previously reported, the Administrative Law Judge in Certain Three-Dimensional Cinema Systems and Components Thereof, Inv. No. 337-TA-939, found a violation of Section 337 based on infringement of claims in three asserted patents. While the Commission was reviewing the ALJ’s final Initial Determination (ID), the PTAB of the U.S. Patent and Trademark Office issued a final written decision in an IPR of one of the asserted patents (U.S. Patent 8,220,934), finding certain claims unpatentable for obviousness. The Commission asked for briefing as to the effect of the PTAB’s decision on the ITC’s investigation and potential remedial orders.

In its final determination of July 21, the Commission affirmed the ALJ’s finding of a Section 337 violation based on infringement of the three asserted patents, and issued a limited exclusion order as well as cease-and-desist orders against respondents. However, the Commission suspended enforcement of those orders with respect to the claims found unpatentable by the PTAB, pending final appellate resolution of the PTAB’s final written decision. Although the Commission’s Notice of Termination is public, the Commission has not yet issued a public version of its opinion.