The patent tug of war between U.S. drone manufacturer Autel Robotics (hereinafter referred to as Autel) and Chinese drone giant DJI Innovation and Technology Co., Ltd. (hereinafter referred to as DJI) since 2018 may make the United States threaten to close DJI imports of high-tech products from the United States. Recently, the two parties' patent litigation is facing new changes. Autel won a small victory in March this year and obtained a preliminary ruling in favor of it, but the case is not over yet.

On March 2 this year, the US International Trade Commission (ITC) determined that DJI products did not infringe the patent of Autel Robotics patent number US7979174. At the same time, it determined that the US10044013 patent claim was invalid, but it was determined that some products of DJI infringed the US9260184 patent. The Chief Administrative Judge of ITC supported Autel’s request and recommended that most models of DJI drones (including Mavic Pro, Mavic Pro Platinum, Mavic 2 Pro, Mavic 2 Zoom, Mavic Air and Spark) be delisted and prevent imports. Autel also filed a motion to exclude DJI's Phantom and Inspire series drones from being imported. The ruling is still in the court's 60-day review period, but if the ruling is finally enforced, DJI will undoubtedly be hit hard.

But last week there have been new changes in the situation. It is understood that DJI's law firm Finnegan has reported several wins in the latest round. Finnegan referred the case to the Patent Trial and Appeal Board (PTAB). On May 21, the committee ruled that DJI did not infringe Patent No. 174. The technology in Patent No. 184 was not actually patentable. It also determined that Patent Claim No. 013 was invalid based on various reasons.

• US Patent No. 7,979,174, involving obstacle avoidance technology

• US Patent No. 10,044,013, concerning how to open and close the battery

• US Patent No. 9,260,184, which relates to the installation mode of UAV propellers

         Autel's drone patent

Finnegan's lawyers declared victory in the latest round of lawsuits. Citing Finnegan's attorney, “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.”

Case review

On August 30, 2018, Autel Robotics, headquartered in Washington State, infringed three US patents in the US District Court for the District of Delaware, the US District Court for the Western District of Washington, and the US District Court for the Southern District of New York (US Patent No. 9,260,18 , US Patent No. 7,979,174, US Patent No. 10,044,013), filed a lawsuit against DJI and requested the US International Trade Commission (ITC) to initiate a 337 investigation against DJI’s drones. On October 2 of the same year, ITC launched an investigation based on the three patents claimed by Autel.

337 Investigation

337 investigation refers to the investigation carried out by the United States International Trade Commission (USITC) in accordance with Section 337 of the US Tariff Act of 1930 (referred to as "Article 337") and related amendments , What is prohibited is any unfair competition behavior or any unfair trade behavior in the export of products to the United States. The targets of the 337 investigation were import products that violated US intellectual property rights and other unfair competition in import trade.

In recent years, more and more Chinese enterprises export products have encountered the "337 Investigation" in the United States, and Chinese companies have gradually become the main targets of the "337 Investigation".

On June 19 last year, the Trade Relief Investigation Bureau of the Ministry of Commerce stated at its 2019 China-U.S. "337 Investigation" Technical Seminar that in recent years, with the rise of Chinese products in the international market, China has replaced Japan and South Korea , Becoming the country that suffered the most from the "337 investigation". In 2018, there were 19 "337 investigations" involving Chinese companies, accounting for 38% of the cases in the whole year, including the 337 investigations initiated by Autel against DJI.

 Summary of the number and ratio of China's 337 investigations involving China from 2001 to 2018

According to China IP, there are more than 20 "337 investigations" involving Chinese companies in 2019. As of now, just halfway through 2020, five U.S. companies have submitted 337 investigation applications against Chinese companies, and All investigations have been initiated by the US International Trade Commission (ITC).

The "337 investigation" was dubbed the "gold swallowing beast" in the patent litigation industry by the industry. Therefore, in the face of expensive litigation fees, some Chinese companies have adopted a passive avoidance and non-responsibility attitude, which may lead the US ITC to believe in the prosecutor’s statement and rule the Chinese companies lost the lawsuit, thus hindering the entry of Chinese products into the US market. However, according to the Trade Remedy and Investigation Bureau of the Ministry of Commerce last year, a total of 84 Chinese companies were sued to ITC in 2018, 39 of them chose to respond. From 2015 to 2018, the proportion of Chinese companies responding to complaints has increased year by year.