In November seven complainants filed four Section 337 complaints with the International Trade Commission (ITC):
- Dometic Corporation and Dometic Sweden, AB filed a complaint against Shanghai Hopewell Industrial Co., Ltd., Shanghai Hehe Industrial Co., Ltd., CityMarine, LLC and Mapru Power Systems, Inc. Certain marine air conditioning systems, components thereof and similar products, Dr. Number 3564;
- AGIS Software Development, LLC and Advanced Ground Information Systems, Inc. Certain location-sharing systems, related software, components thereof, and similar products, Dr. Number 3655; And
- KUB Technologies, Inc. filed a complaint against CompAI Healthcare (Shenzen) Co., Ltd., CompAI Healthcare (Suzhou) Co., Ltd., Kangpai Medical Technology (Changchun) Co., Ltd., Kangpai (Beijing) Medical Equipment. Co., Ltd., and Dillon Technologies, Inc., In Cabinet X-ray and optical camera systems and components, Dr. No. 3656.
- Johnson Controls, Inc., and Johnson Controls Technology Co. Complaint filed against Price Industries, Ltd. and Price Industries, Inc.
The commission conducted five inquiries this November:
- Certain electronic devices, semiconductor devices and components thereof, Inv. No. 337-TA-1340 (assigned to ALJ Elliott);
- Some video processing devices and products are similar, Inv. No. 337-TA-1341 (assigned to ALJ Bhattacharya);
- Some semiconductor devices layer dummy fill, electronic devices and components thereof, Inv. No. 337-TA-1342 (assigned to Presiding ALJ Cheney);
- Certain video processing devices and components thereof, Inv. No. 337-TA-1343 (assigned to ALJ Moore); And
- Some bio-layer interferometers and components thereof, Inv. No. 337-TA-1344 (assigned to Presiding ALJ Cheney).
This month’s ITC Wrap-Up reviews a recent Commission opinion examining the evidence required to file a complaint to meet the domestic industry requirements of Section 337. Certain televisions, remote controls and components thereof, Inv. No. 337-TA-1263, Comm’n Op. (Nov. 30, 2022). In April 2022, Roku asserted two patents against respondents who manufacture televisions and remote controls. That is., LG, Samsung and UEI. The hearing was assigned to ALJ McNamara. This wrap-up focuses on only one of the patents addressed in the Commission’s opinion.
Complainants to the Commission must show that they have met the domestic industry requirement of section 337. 19 USC § 1337(a)(2), (a)(3). To satisfy the technology requirement of domestic industry, complainants must show that (1) an article implementing the asserted patent actually “exists” or (2) they are “in the process” of producing an article embodying the asserted patent. Id. at § 1337(a)(2). Complainants must show that they have made or are in the process of making significant or substantial investments in the industry related to the articles that satisfy the technical capability. Id. § 1337(a)(3) at (That is., economic node).
In the 1263 hearing, Roku alleged that its new remote control, the Gazelle, satisfied the technology standard. Roku was developing the Gazelle when the complaint was filed, and Roku wanted to install an integrated TV IR code on the remote. Roku has argued that a new remote actually exists, and that Roku is in the process of developing a replacement remote. However, the finding shows that the Gazelle remote did not exist when the complaint was filed, and that Roku had no firm timeline for developing the TV IR code-enabled remote that Roku relied on.
In ruling on the technology issue, the ALJ considered Roku’s post-complaint activity and ultimately found that Roku did not practice the asserted patent. The ALJ also found that Roku was not “in the process” of enforcing the asserted patent because it had not taken concrete steps to show that it would enforce the asserted patent in the future. Specifically, the ALJ faulted Roku for not creating a “physical manifestation of an article imitating the patent at issue” before the conclusion of fact finding. Thus, the ALJ found that Roku did not satisfy the technical prong.
Roku filed a review petition. On review, the Commission found that the ALJ erred in considering post-complaint activity. Com’n Op. At 21. As to whether Roku had shown that a domestic industry article actually existed, the Commission agreed with the ALJ and found that Roku had not satisfied this aspect of the technical terminal because Roku had failed to show that a physical embodiment of the Gazelle remote existed. When the complaint is filed. Id. At 22. With respect to Roku’s “in process” argument, the Commission declined to accept the ALJ’s declaration that complainants must provide an authentic article to satisfy the in process standard. Id. In 24. In providing guidance to future litigants, the Commission noted that a sufficient active showing “will depend on many factors, including the type of article and the patent claims at issue.” Id. At 25. The Commission later found Roku’s “mere assertion that it will practice the Gazelle Remote Patent” insufficient. Id.
The Commission’s opinion highlights the challenges potential complainants face in relying on products that did not exist at the time of the complaint, but also the options for establishing domestic industry based on precedents. While complainants may not be required to reduce their prototypes to physical form “depending on the type of article and the patent claims at issue,” one thing seems certain – complainants must make promises that they will enforce their patents in the future.