On April 18, 2016, the International Trade Commission ("ITC") issued a Notice in Certain Three-Dimensional Cinema Systems and Components Thereof, Inv. No. 337-TA-939, requesting briefing from the parties relating to a final inter partes review ("IPR") decision by the Patent Trial and Appeal Board ("PTAB") that certain of the claims asserted in the ITC case are unpatentable. The ITC will have the opportunity to provide guidance on the effect of PTAB final decisions of unpatentability on pending ITC proceedings.

Statutory Framework

35 U.S.C.§ 318 provides that if the PTAB issues an IPR final written decision finding patent claims unpatentable, the Director of the U.S. Patent and Trademark Office will issue and publish a certificate canceling those claims—but only after an appeal to the U.S. Court of Appeals for the Federal Circuit has concluded (or the time for appeal has expired). 35 U.S.C.§ 318(b). Because patent claims found unpatentable by the PTAB may still be enforceable until after the completion of an appeal, there remains uncertainty with respect to the effect of such a final decision on ITC Section 337 proceedings.

The Case

On December 16, 2015, Administrative Law Judge Essex issued a final initial determination ("ID") finding a violation of 19 U.S.C. § 1337 with respect to three asserted U.S. patents (Nos. 8,220,934, 7,857,455, and 7,959,296). On February 16, 2016, the ITC determined to review the ID in part. During the pendency of the ITC's review, on April 14, 2016, the PTAB issued a final written decision finding certain of the claims of one of the asserted patents (the '934 Patent) unpatentable. On April 18, 2016, the ITC issued a Notice requesting that the parties brief the Commission on the effect of the PTAB's final written decision on the ITC's pending final determination. In addition to briefing on the claims found to be unpatentable, the ITC requested that the parties include in their briefs the effect of the PTAB's decision on the other two asserted patents as well as the asserted claims of the '934 Patent not addressed by the PTAB.

Takeaway

In light of the popularity of post grant review proceedings, and the ITC's decision to deny stays pending post grant review, it is important that the ITC provide clear guidance with respect to the effect of PTAB final decisions. Given the current posture of the case, Certain Three-Dimensional Cinema Systems provides a good opportunity for the ITC to provide such clarification. Jones Day will continue to monitor the ITC's position and will provide updates as they develop.