716 F.3d 596
Fed. Cir.2013Background
- Motiva owns the ’151 and ’268 patents relating to a movement-measurement system for testing and rehabilitation.
- Motiva sued Nintendo in district court for Wii infringement of the ’151 patent; the case was stayed pending PTO reexamination.
- Motiva filed a § 337 complaint with the Commission seeking to prohibit Nintendo’s importation and sale of the Wii.
- The ALJ first found Motiva’s activities insufficient to establish a domestic industry; the Commission remanded for further fact-finding on Motiva’s licensing-related efforts.
- The ALJ again found no domestic industry, concluding Motiva’s pre-litigation development was too remote and litigation was not aimed at licensing; the Commission adopted this finding; Motiva appeals.
- The key issue is whether Motiva’s litigation against Nintendo could establish an economic prong of domestic industry, and whether the Commission correctly used the complaint filing date to assess existence of the domestic industry.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Motiva’s litigation sufficed for the economic prong. | Motiva argues litigation was a substantial licensing-related investment. | Nintendo contends litigation was not targeted at licensing or production-ready commercialization. | No; litigation did not constitute a substantial licensing-driven investment. |
| Whether the filing date of Motiva’s complaint was the correct reference point for domestic industry analysis. | Motiva relied on ongoing development through 2007 to show industry existence. | Date of filing determines domestic industry existence. | Yes; filing date was properly used to determine domestic industry existence. |
Key Cases Cited
- InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 707 F.3d 1295 (Fed. Cir. 2013) (licensing efforts can satisfy the domestic industry prong when they would yield products practicing the patents)
- John Mezzalingua Assocs. v. Int’l Trade Comm’n, 660 F.3d 1322 (Fed. Cir. 2011) (litigation aimed at preventing manufacture does not satisfy the domestic industry prong; trade forum role emphasized)
- Bally/Midway Mfg. v. U.S. Int’l Trade Comm’n, 714 F.2d 117 (Fed. Cir. 1983) (date-of-complaint analysis for domestic industry)