InterDigital Communications, LLC v. International Trade Commission
707 F.3d 1295
Fed. Cir.2013Background
- InterDigital sought ITC relief under 19 U.S.C. § 1337(a)(3) based on licensing activities related to its patents in wireless technology.
- Nokia (InterDigital’s opponent on rehearing) argued that licensing alone cannot satisfy the domestic industry requirement without domestic manufacture.
- The panel denied panel rehearing and rehearing en banc; the opinion discusses whether the ‘licensing’ prong (337(a)(3)(C)) suffices to establish a domestic industry.
- The majority endorses a view that licensing activities can constitute a domestic industry if they pertain to exploitation of the asserted patents in the United States.
- The dissent (Newman, J.) argues that the domestic industry requirement still requires domestic production or preparation to produce the patented articles in the United States.
- The opinion surveys legislative history from 1988 amendments showing Congress intended to broaden protection to licensees and licensing activities, not to eliminate domestic manufacture.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether 337(a)(3)(C) allows licensing alone to satisfy the domestic industry requirement | Nokia: licensing alone suffices | InterDigital: licensing with exploitation can satisfy | Licensing can satisfy if tied to exploitation of the patent |
| Whether the licensing amendment eliminated the domestic manufacture requirement | Nokia: amendment removed manufacture requirement | InterDigital: amendment preserves domestic industry with licensing | Amendment preserves domestic industry with licensing without requiring domestic manufacture |
| What the legislative history shows about the licensing amendment’s purpose | Nokia: history supports broad licensing scope | InterDigital: history confirms aim to protect U.S. industries via licensing | Legislative history supports expansion to licensing for domestic exploitation, not elimination of domestic manufacture |
| Consistency of ITC and circuit precedents regarding licensing-based domestic industries | Nokia: prior cases require domestic production | InterDigital: practice shows licensing alone can suffice | There are inconsistencies; this decision aligns with broader interpretation that licensing may satisfy |
Key Cases Cited
- Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361 (Fed. Cir. 2003) (considers whether the domestic industry relates to protected articles)
- Osram GmbH v. Int’l Trade Comm’n, 505 F.3d 1351 (Fed. Cir. 2007) (requires a domestic product to satisfy the domestic industry requirement)
- Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010) (domestic industry must produce articles covered by asserted claims)
- John Mezzalingua Assocs. v. Int’l Trade Comm’n, 660 F.3d 1322 (Fed. Cir. 2011) (licensing activities insufficient to constitute domestic industry under §1337(a)(3)(C) in that record)
- Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same, USITC Pub. 4292 (2011) (licensing-related investment must relate to exploitation and be substantial)