In a recent decision in Certain Three-Dimensional Cinema Systems and Components Thereof, Inv. No. 337-TA-939 (2016), the ITC has for the first time suspended enforcement of remedial orders in view of a Patent Trial and Appeal Board Final Written Decision of patent invalidity after inter partes review.

Not surprisingly, the suspension is only effective as to the patent that was the subject of the IPR proceeding at the Patent Office.  Because two other patents were found by the ITC to be valid and infringed, the suspension appears to have no practical effect on the exclusion of the accused products in this case.  However, the decision is still significant, because the ITC rarely suspends enforcement of its remedies for any reason, let alone pending review of decisions of another agency.  In Certain Composite Wear Components, Inv. No. 337-TA-644 (2009), the ITC temporarily suspended its remedies after an invalidity ruling, but that ruling had been made by a district court.

Because the Commission’s full opinion has not yet issued, and the Commission’s reasoning is not provided in the Notice, it is difficult to gauge the potential impact of the ruling.  Nevertheless, the decision seems likely to lead to suspension requests by litigants in other ITC cases presenting similar circumstances.  In light of the popularity and speed of post-grant review proceedings and their high rate of invalidity findings, the decision’s ultimate impact on Section 337 litigation is potentially significant.