On August 30, 2018, Autel Robotics USA (“Autel”) requested the ITC to commence an investigation pursuant to Section 337, against SZ DJI Technology Co. Ltd. and several related entities (collectively, “DJI”). The ITC instituted the investigation, Inv. No. 337-TA-1133, on October 2, 2018, based on Autel’s assertion of three patents: U.S. Patent Nos. 7,979,174 (“the ’174 patent”), 9,260,184 (“the ’184 patent”), and 10,044,013 (“the ’013 patent”). With these three patents, Autel has attempted to stop DJI from selling drones with intelligent operations such as obstacle avoidance (’174 patent), with rotor blades (’184 patent), or with batteries that clamp onto the drones (’013 patent).
During the investigation, DJI identified many issues with Autel’s case. On March 2, 2020, Chief Administrative Law Judge (CALJ) Bullock issued a favorable initial determination (ID) for DJI. In the ID, the CALJ found that the ’174 patent claims were not infringed, were not practiced by any domestic industry product, were anticipated or rendered obvious by prior art, and were directed to an abstract idea and therefore invalid under 35 U.S.C. § 101. He found many of the accused DJI products did not infringe the ’184 patent claims. He further found the ’013 patent claims invalid on multiple grounds.
At the same time, DJI’s efforts with the Patent Trial and Appeals Board (PTAB) have met with unqualified success. DJI filed inter partes review petitions challenging the asserted claims from all three patents involved in the ITC proceeding. On May 13, 2020, the PTAB declared all the claims of the ’174 patent unpatentable. On May 14, 2020, the PTAB found the asserted ’013 patent claims unpatentable. Then, on May 21, 2020, the PTAB found all challenged claims of the ’184 patent unpatentable, delivering DJI yet another win.
The Commission is currently deciding whether to review the CALJ’s ID. Ultimately the Commission may decide that Autel deserves no remedy at all, but at a minimum, the Commission is unlikely to enforce any exclusion order or cease-and-desist order based on the three invalid patents. DJI’s sales in the U.S., therefore, will not be affected by Autel’s claims.
Finnegan attorneys Qingyu Yin, Smith Brittingham, Cecilia Sanabria, Mike Kudravetz, Kelly Lu, Yi Yu, and Simon Lu represented DJI in the ITC investigation.
Finnegan attorneys Qingyu Yin, Josh Goldberg, and Kelly Lu represented DJI in the IPRs on the ’174 patent.
King & Spalding attorney Lori Gordon represented DJI in the IPRs on the ’184 and ’013 patents.