U.S. International Trade Commission Persists with Remedy for PTAB-Invalidated Patent

by Kilpatrick Townsend & Stockton LLP

The U.S. International Trade Commission has declined to rescind remedial orders blocking importation of products found to infringe two patents that were recently found invalid by the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office.

The patents, asserted by Cisco Systems, Inc. in an ITC complaint filed in 2015 against networking devices and software offered by Arista Networks, Inc., were challenged by Arista in Inter Partes Review proceedings instituted by the PTAB during the pendency of the ITC investigation. The Commission nonetheless found that Arista’s products infringed the challenged patents and, on May 4, 2017, issued a limited exclusion order barring their importation and sale in the U.S. Three weeks later on May 25 and June 1, the PTAB issued final written decisions in the IPR proceedings that the asserted patents are invalid. Arista immediately sought relief from the Commission’s exclusion order on the grounds that the PTAB decisions invalidating the patents constituted a “changed circumstance” under 19 C.F.R. § 1337(k) and 19 C.F.R. § 210.76.

The Commission denied Arista’s request for relief from the exclusion order. In holding that the PTAB decisions did not constitute a changed circumstance under § 1337(k), the Commission noted that the legal status of the patents would not change until the USPTO issued a certificate cancelling the claims following the exhaustion of appeals to the U.S. Court of Appeals for the Federal Circuit, then perhaps to the U.S. Supreme Court. The Commission’s decision therefore keeps Arista’s products out of the U.S. market for at least a year while Cisco appeals. Arista thus lamented, as reported by Law360 on August 7, 2017, that it was “deeply disappointed” in the decision, describing it as an “unfortunate departure from precedent and from the core premise of the AIA” legislation that established PTAB proceedings in 2012.

Indeed, the decision deepens the Commission’s precedent against delaying its patent investigations for PTAB validity proceedings. By 2016, a quarter of patents asserted in the ITC were subject to such PTAB challenges, yet no investigation to date has been stayed pending a PTAB validity determination. In Certain Laser-Driven Light Sources (337-TA-983) for example, stay was denied in March 2016 where an IPR ruling was expected after the investigation’s evidentiary hearing, but before its target date.

The closest the Commission has yet come to delaying for a PTAB determination was in Certain Three-Dimensional Cinema Systems (337-TA-939). There the Commission stayed remedial orders, but only as to the single PTAB-invalidated patent; remedial exclusion of products from the U.S. proceeded as to the other two asserted patents.

This most recent Commission decision thus highlights the ITC’s independence in handling patent infringement matters, and stands in stark contrast to litigation in federal district courts, where infringement actions are commonly stayed pending patent office validity proceedings and determination. Unlike the years of delay patent owners often face in district court litigations where IPR proceedings are instituted against their asserted patents, the ITC has demonstrated yet again that it will provide prompt and powerful relief against infringing activity despite challenges to patents at the USPTO, further contributing to the ITC’s popularity as a venue for enforcing patent rights in today’s global economy.

U.S. International Trade Commission Investigation No. 337-TA-945

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Kilpatrick Townsend & Stockton LLP | Attorney Advertising

Written by:

Kilpatrick Townsend & Stockton LLP

Kilpatrick Townsend & Stockton LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.