November saw seven complainants file four Section 337 complaints with the International Trade Commission (ITC):
The Commission also instituted five investigations this November: Rotating Envelope X Ray Tube
This month’s ITC wrap-up reviews a recent Commission opinion that examines the evidence a complaint needs to proffer to satisfy Section 337’s domestic industry requirement. 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 that manufacture televisions and remote controls, i.e., LG, Samsung, and UEI. The investigation was assigned to ALJ McNamara. This wrap-up focuses on just one of the patents that the Commission’s opinion addressed.
Complainants at the Commission must show that they have satisfied Section 337’s domestic industry requirement. 19 U.S.C. § 1337(a)(2), (a)(3). To satisfy the domestic industry requirement’s technical prong, complainants must show (1) that an article that practices the asserted patent actually “exists” or (2) that they are “in the process” of producing an article that practices the asserted patent. Id. at § 1337(a)(2). Complainants must also show that they have made, or are in the process of making, significant or substantial investments in an industry related to the articles that satisfy the technical prong. Id. at § 1337(a)(3) (i.e., the economic prong).
In the 1263 investigation, Roku alleged that its new remote control, the Gazelle, satisfied the technical prong. Roku was developing the Gazelle when it filed the complaint, and Roku intended to install a unified TV IR code on the remote. Roku argued that the new remote actually existed, and alternatively, that Roku was “in the process” of developing the remote. However, discovery showed that the Gazelle remote did not exist when the complaint was filed, and that Roku had no definitive timeline for creating a remote that would implement the TV IR code Roku relied on.
When ruling on the technical prong, the ALJ considered Roku activity that post-dated the complaint and ultimately found that Roku did not practice the asserted patent. The ALJ also found that Roku was not “in the process” of practicing the asserted patent because it had not taken tangible steps to show that it would practice the asserted patent in the future. In particular, the ALJ faulted Roku for not producing “a physical manifestation of an article that practices that patent at issue” before the close of fact discovery. Thus, the ALJ found that Roku had not satisfied the technical prong.
Roku petitioned for review. On review, the Commission found that the ALJ erred in considering post-complaint activity. Comm’n Op. at 21. As to whether Roku had shown that a domestic industry article actually exists, the Commission agreed with the ALJ and found that Roku did not satisfy this aspect of the technical prong because Roku failed to show that a physical embodiment of the Gazelle remote existed when the complaint was filed. Id. at 22. As to Roku’s “in the process” argument, the Commission declined to adopt the ALJ’s pronouncement that complainants must proffer an actual article to satisfy the in-the-process standard. Id. at 24. In providing guidance to future litigants, the Commission noted that a sufficient in-the-process showing “will depend on a number of factors, including the type of article and the patent claims at issue.” Id. at 25. The Commission then found that Roku’s “mere assertion that the Gazelle Remote will practice the patent” was insufficient. Id.
The Commission’s opinion here highlights the challenges potential complainants face in relying on products that do not exist at the time of the complaint, but also highlights options for establishing domestic industry based on prototypes. Although complainants may not need 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 bring more than promises that they will practice their patents in the future.
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.
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