Latest Development in the DJI-Autel Disputes

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 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. Autel subsequently appealed the PTAB’s decisions to Federal Circuit.

On August 20, 2020, the ITC issued its final determination.  Although the Commission found that certain DJI products infringe some claims of the ’184 patent and issued limited exclusion and cease-and-desist orders, the enforcement of such remedial orders will be suspended pending Federal Circuit’s ruling on PTAB’s decisions. Thus, DJI’s sales in the U.S. will remain intact.