*1 pro- further remands for judgment and remand, the court first
ceedings. On val- the loss economic determine
should by Lost Tree Plat suffered
ue to § Corps’ denial
result apply appropriate then
permit, com- whether a to determine
framework determining In taking occurred.
pensable may to Plat court loss value adopted values
revisit impact determining course of on Lost Tree permit Plat 57 denial parcel. of the relevant
under definition Tree, at 487-38. 100 Fed.Cl. Lost
See
IV. above, forth
For reasons set Claims the Court of Federal
judgment of remanded for further reversed and
ceedings. AND REMANDED
REVERSED COMMUNICATIONS,
INTERDIGITAL Technology InterDigital
LLC and
Corporation, Appellants,
v. TRADE
INTERNATIONAL
COMMISSION,
Appellee, Corporation,
Nokia Inc. Nokia
Intervenors.
No. 2010-1093. of Appeals,
United States Court
Federal Circuit. 10, 2013.
Jan.
Megan Valentine, M. Attorney Advisor, Counsel, of Office General United States Commission, International Trade of Wash- DC, ington, filed a response petition appellee. for With on response her Bianchi, were Dominic L. Acting General Counsel, Casson, and Andrea C. Assistant General Counsel for Litigation. Daryl Joseffer, King LLP, Spalding of & Washington, DC, response filed a to the petition for amici curiae Hewlett-Packard Co., al. et With him response on the were Jeffrey Telep and Adam Conrad. RADER, Before Judge, Chief NEWMAN, MAYER, LOURIE, BRYSON, DYK, PROST, O’MALLEY, REYNA, WALLACH, and Circuit Judges.* ORDER Flinn, LLP, Patrick J. Alston & Bird of PER CURIAM. Atlanta, GA, petition filed combined for petition A combined panel panel rehearing rehearing and for rehearing en banc for and for rehearing en by intervenors. With him banc was filed petition on the Intervenors, and Haynes, GA, responses were to the Atlanta, petition John and Barton, by were invited Charlotte, Ross R. the court and filed NC. Of coun- Appellants and Appellee. By sel on petition Clement, was Paul leave of D. court, a PLLC, response petition Bancroft to the Washington, was filed DC. Co., al., et Hewlett-Packard as amici Dunner, Donald R. Finnegan, petition curiae. The rehearing for Henderson, Farabow, Dunner, Garrett & responses were panel considered LLP, DC, of Washington, response filed a that heard the appeal, and thereafter petition for appellants. himWith on petition for en rehearing banc and re- Sokal, the response were Allen M. Don O. sponses were referred to circuit judges Burley, IV, Smith R. Brittingham in regular who are active service. Esfahani, Houtan Khalili Washington, DC, Christopher Isaac, Reston, P. thereof, Upon consideration VA. Of response counsel were Seth It Ordered Is That: McElwain, P. Waxman and William G. Wil- (1) mer Cutler Pickering LLP, Hale Dorr petition panel rehearing is DC, of Washington, denied, and Mark Fleming C. panel and a opinion and dissent are Fletcher, Boston, and Lauren B. MA. attached herewith.
* Judge Bryson assumed participate senior status on Janu- in the vote. ary Judge 2013. Circuit did Moore tion, including engineering, research (2) rehearing en banc petition for licensing.” development, parties denied. “its” clause agree that word the last (3) court shall issue The mandate *3 337(a)(3) intel- refers to the paragraph of 17, January 2013. on lectual at issue. MAYER, NEWMAN, and Before the argues Nokia that International BRYSON,** Judges. Circuit and this court have not Trade Commission by for filed Circuit Opinion the court “relating phrases construed the properly Dissenting filed opinion Judge BRYSON. by patent” protected to the articles the Judge by NEWMAN. Circuit respect protected “with to the and articles appear in two by patent” the those REHEARING PETITION FOR ON The Commission and the subsections. BRYSON, phrases court construed those to define Judge. Circuit subject matter that is within the stat- the and Nokia Intervenors Nokia Inc. protection. respect subpara- to ute’s With “Nokia”) (collectively, have Corporation (A) 337(a)(3), “sig- of the graph paragraph rehearing on of the is one petitioned plant equipment” nificant investment in or In- in this case: whether presented sues a required the of that is to show existence patent licensing activities satis terDigital’s respect exist must “with industry” requirement fied the “domestic by protected patent” to the articles the 1930, 19 Tariff Act of 337 of the of section typically That will question. 1337(a)(3). 1337(a)(2) Be §§ and U.S.C. if investment plant be met the a more de Nokia has made much cause arti- production at equipment directed respect to that issue argument tailed with Similarly, protected by patent. the cles in its rehearing than it did brief on (B) para- respect subparagraph to with merits, response expanded to Nokia’s 337(a)(3), “significant employ- graph is appropriate. submission capital” required labor that is ment of or fo- argument, In its Nokia 1. textual indus- show the existence of domestic to “relating the arti- phrases on the to cuses respect must exist to the articles try “with “with by patent” protected cles by require- That protected patent.” by the protected to the articles respect abymet typically ment will likewise 337(a)(2) paragraphs patent” capital labor showing significant or 337(a)(2) 337(a)(3). provides Paragraph arti- being expended infringing importation the bar to by patent. Applying protected cles applies by established section 337 goods (C) para- analysis subparagraph same States, if an in the United “only 337(a)(3) parallel result graph produces protected by relating articles with is consistent Commission’s process ... or is in the exists statutory construction: court’s 337(a)(3) being Paragraph established.” pat- in [the The “substantial investment in the United then states that including engineering, exploitation, ent’s] if there licensing” “shall exist development, States be considered or research respect with to the articles respect is in the United be “with must by patent” signifi- by which means protected patent,” tected articles ' develop- or research and plant equipment, engineering, investment cant ment, pertain licensing or activities must capital, of labor or significant employment that are covered exploita- products “substantial investment or ** 7, ary Judge Bryson on Janu- senior status assumed Thus, 2007), just 7597610, is being *53-*57; asserted. as the WL Cer-
“plant equipment” referred to in Chips sub- tain Semiconductor with Mini- (A) paragraph respect Package must exist with mized Chip Size and Products protected patent, Same, 337-TA-432, by Containing articles such as Inv. No. (Jan. goods, 24, 2001), producing protected the research Order No. 13 2001 WL *6-*8; and development or activities re- Digital Certain Satel- (C) (DSS) ferred in subparagraph System must lite also Receivers and Compo- 337-TA-392, with respect protected by exist to articles nents Thereof, Inv. No. protected such as USITC Pub. Initial and Final Rec- *4 Determinations, with products. This accords the common ommended (Apr. 8-10 2001); description of the domestic re- Dynamic Sequential Certain Gra- two quirement having “prongs”: as dient Compression Devices Compo- and prong,” requires 337-TA-335, “economic which nent Parts Inv. Thereof, No. there be an in the 2575, Determination, USITC Pub. Initial (Nov.1992); and the “technical prong,” requires which at 58-61 and Certain Micro- that the protect- computer Controllers, relate articles Memory Compo- by patent. ed Stringed See Certain nents Containing and Products Thereof Same, Musical and Components 337-TA-331, Instruments Inv. No. Order No. (Jan. (“Stringed 8, 1992), Musical 811299, Instru- 1992 WL at *3-*4 Thereof ments”), (“Where 337-TA-586, Inv. No. patented products USITC are manu- 4120, (Dec. Op., Pub. Comm’n 13-14 factured is not relevant the subsection 2009); (C) issue.”). Speed Certain Variable Wind Tur- The two Commission deci- and Components Thereof, bines Inv. No. sions from the 1990s cited Nokia are 337-TA-376, 3003, Pub. inapposite, USITC they Comm’n as licensing, do involve (Nov.1996). Op., at 14-18 they and purport do not to interpret sub- (C). paragraph The two Commission deci- As opinion noted in panel in this sions from the cited 1990s the dissent case, the consistently Commission has con- are also inapposite, in involve cases (C) subparagraph strued in that manner. which complainants exploiting were not Certain Display See Multimedia and the asserted patents, contrary para- Navigation Systems, Devices and Compo- 337(a)(2), graph “requires which that the Thereof, nents and Products Containing domestic industry relate to the articles (“.Multimedia Display Same Naviga- and protected by patent.” See In- Certain Devices”), tion 337-TA-694, Inv. No. tegrated Circuit Chips Telecommunication 4292, USITC Pub. Op., Comm’n at 7-8 and Containing Including Products Same (Nov.2011) (to satisfy the domestic indus- Dialing 337-TA-337, Apparatus, Inv. No. try requirement by proof investment in 2670, Determination, USITC Pub. Initial (1) licensing requires showing at 99 n.87 (Aug.1993). that the investment relates to exploita- (2) tion of the asserted it This is a classic case for application (3) relates to licensing, domestic, (C). that it is of subparagraph The evidence before (4) substantial). that it is In addition the Commission showed that InterDigital panel cases in the opinion, (NAS- cited is a large, publicly company traded IDCC). earlier DAQ Commission decisions adopting symbol 1993, ticker Since statutory same interpretation found, include Cer- judge administrative law Inter- Digital tain Processors and Digital Digital engaged research, Pro- “has been de- cessing Systems, Components Thereof, velopment, engineering, and licensing of Same, Containing (CDMA) and Products Inv. Multiple No. Code Division Access 337-TA559, Initial (May Determination technology in the United States which research, it attempt- de- that it has licensed and that into later transitioned work to exclude. engineering, velopment, (WCDMA).” technology CDMA Wideband argues required by that more is Nokia in- technology is proprietary InterDigital’s respect “with articles phrase stan- the communications corporated patent,” notably but protected has InterDigital referred to as 3G. dards exactly about what is. Nokia vague products, some engaged necessary that it is not that the concedes to research principally it is dedicated but question be manufactured “articles” (Pet.9 n.1),1 and it does the United States As the cellphone industry. administrative question the articles in not assert found, InterDigital “licenses judge law produced by pat- licensees of the must be signifi- technology wireless Instead, variously asserts entee. Nokia handset and device manufacturers cant protected by “there must ‘articles ” world.” Between 1993 throughout the (Pet.4), only licensing that the patent’ showed, InterDigital the evidence activity “activity that matters is ‘with re- *5 million approximately a total of vested $7.6 pat- protected by to the articles the spect ” for en- employees in and benefits salaries (Pet.4), activity licensing ent’ that “the activities, and it re- in its gaged tangible good” to a must be tethered in from almost revenues ceived billion $1 (Pet.6), technology and that the covered in (including patents the portfolio licenses “put practical must be into use” the suit) relating cellphone technology, to its (Pet.6). At point, another Nokia asserts million attribut- which includes about $400 337(a)(3)(C) was de- subparagraph that The technology. its 3G able to licenses to take to allow the Commission “to signed (and judge there law found administrative protect who do not them- action to those contrary) the that Inter- argument no to pat- produce goods practicing their selves activities involve “substantial Digital’s ents, who with others to do so” but work licensing.” in ... 19 U.S.C. vestment (Pet.9). very But of that is the definition 1337(a)(3)(C). record reveals § The also time case was licensing, and as of the this in by InterDigital investment tried, substantial InterDigital revenue-produc- had 24 to development that led the research and patents, including to licenses its U.S. only question in The patents issue, major the suit. with manufac- patents the concededly devices, the sub- InterDigital’s including whether of wireless Sam- turers exploitation LG, Matsushita, in of its Apple, investment and RIM. stantial sung, property respect expression is “with the intellectual Nokia means Whatever patent.” produce goods the That protected by “working] with others” to articles why in case be- the it is unclear patents, is satisfied this practicing statutory would protect description the tech- the test the in suit that of cause InterDigi- is, to a such according InterDigital’s apply that to licensor nology case, products found tal.2 theory of develop- engineering, research and Although argument, it ment in disclaims that 1. Nokia ment, sufficiently sub- centerpiece licensing must be or is the dissent. industry. See a domestic stantial to constitute Mezzalingua v. Trade Assocs. Int’l John argument on Nokia’s is based
2. To
extent
Comm'n,
(Fed.Cir.2011) (up-
this case was added section 337 1988. 337 so would for history of the amend- did not legislative American industries that manufac- plain ment supports products engaged engi- to section 337 ture but were reading neering, development, statute set out No- research of the above. or li- together support kia cobble for of the that attempts censing technology others used position portions legislative products. proposals from to make Those ma- history, comprehensive statutory change provid- but a fair and ex- into a tured legislative protection amination of the ed background industries were makes clear cases exploitation amendment based the creation and precisely such as this one were kinds if even did not Congress bring produce of cases that products wanted ultimate embod- within purview technology. section 337. ied that amendment, background
Prior to the 1988
section
statutory
required proof
challenged
that that the
and the
change
contemporaneous explana-
importation
why
of articles into
highly
tions of
was made are
illumi-
States had
effect or
“to
tendency
nating.
de
Because of certain Commission
stroy
substantially injure
industry,
applying
“industry” require-
decisions
efficiently
economically
operated,
pre-1988
ment of the
version
section
prevent
the United
or to
estab
restrictively,
were
proposals
intro-
lishment
an industry.”
Congress modify
of such
19 U.S.C.
duced
or eliminate
1337(a) (1982).
§
requirement.
inter
introducing
Commission
When
his
*6
preted
language
proof
337,
to require
of bill to amend section
Senator Lauten-
(or prospect)
explained
existence
of a domestic berg
legislation
the new
manufacturing
designed
that was
the arti
“keep
was
to
out of the U.S.
protected by
cles
property
products
intellectual
be market
that steal American inno-
vations,”
import
fore the
could
Commission
bar the
and to “strengthen
ability
our
to
See,
of infringing products.
e.g.,
products
infringe
Certain
exclude
patents,
Miniature, Battery-Operated, All-Ter
copyrights, trademarks, and semiconduc-
rain,
Vehicles,
(1986).
Wheeled
Inv.
designs.”
No. 337-TA-
tor
Cong.
99
Rec. 2904
122,
(Oct.1982),
Pub.
aff'd,
USITC
The amendment was directed at “foreign
Schaper Mfg. Co. v. U.S.
Trade
pirate
inventions,
Int’l
firms [that]
American
Comm’n,
(Fed.Cir.1983).
vided evidence leading sufficient of substantial invest- in suit as type ment licensing activity. of described section well as a trade into intellectual remedy: “Today in order from forum as be available court, eliminating property must their exploit inventors get relief industry requirement foreign would allow the United invention bring owners of U.S. exclusion worse, we are more For better or States. actions before the Commission even economy. based more an information though they no substantial con- had U.S. substantial invest- those who make For See Property nections. Intellectual research, there should be a reme- ments in Hearings Trade: Subcomm. dy. those make substantial For who before Courts, Liberties, Civil and the Adminis- in the creation intellectual vestments Comm, H. on the tration Justice licensing, should and then there property (“House Judiciary Judiciary Hearings”), remedy.” be a (1986) (statements 6, 23, Cong. 99th 470-72 to the House of parallel In remarks Chairwoman, Stern, of Paula Int’l Trade Representative Kasten- Representatives, Comm’n); Property Rights: Intellectual objection been noted that an had meier the Subcomm. on Int’l before 337 if it would amending section raised (“Senate Trade the S. Finance Comm. ... to use “foreign holders allow (1986) (state- 57, 65 Hearings”), Cong. 99th their to seek to exclude either the ITC Stern, Chairwoman, Paula Int’l ments of competition from ob- or American foreign Comm’n). Trade Those who favored That access to the market.” taining U.S. proposal administration’s eliminate addressed, ex- would be he objection requirement altogether pointed injury plained, by modifying the domestic industry requirement out that the in then- allowing “by the statute “prevents current law have by persons to be filed who complaints owners such universities and research in facilities made a substantial investment using institutions from the ITC for enforc- exploitation relating or activities patents.” Judiciary their Hear- trademark, mask copyright, (statements Harvey E. ings work, including and development, research Bale, Jr., Represen- Assistant U.S. Trade sales, *7 licensing, marketing.” 132 tative); Legislation: Trade Hear- Reform (1986). adjustment, That Rec. 7119 Cong. the on Trade the ings Subcomm. before of added, he access to “will assure continued Comm, (“1986 Ways H. on and Means universities, entities, including the ITC Ways Hearings”), Means 99th House who have a substantial stake the United (1986) (statement Clayton of Cong. 354 States,” and it avoid result of would the Yeutter, Representative); U.S. Sen- Trade denying “notwithstanding ITC relief the (statement Harvey Hearings at 92 of ate industry of a service ex- larger existence Bale, Jr., Repre- U.S. Trade E. Assistant property right the ploiting intellectual sentative). compromise a Others favored a within the United States.” Id. Such requirement the would in which change would “enable universities to amended cover “U.S. be retained but capi- not the small businesses who do have or or private, universities organizations, actually good tal make the the United to function to do individuals whose it is even fo- States to still have access the ITC and license research whether or their protection rights.” rum for the Ways 1986 actually manufacture.” House (statement of at 670 Hearings and Means legislation hearings At the on President, Witte, Intellec- Richard C. Vice 337, opposition there was amend section Inc.). Owners, Property tual complete elimination of the end, compromise approach on to do so requirement, ground In the by Representative lines along proposed mission convert the Commission’s would 1302 adopted. Congress requirement “a compro-
Kastenmeier was retained industry relating to the or industry require- U.S. articles mise bill retained property right intellectual ‘ex- that it concerned ment but made clear would not be process being ists or is in the estab- necessary complainant prove ” Report 156-57; lished.’ House at Senate patent-protected being were goods Report requirement at be- 129. That was Instead, country. duced the bill retained, ing reports explained, “in provided preclude order to holders of U.S. intellec- could be met even in the absence of do- property tual who have no contact rights there if was substantial owning with the United States other than in engineering, domestic investment re- rights such uti- from search and or development, licensing. 157; lizing Report section 337.” at private parties, including Various indus- Report Senate at 129. While seeking try representatives and the Intellectual by patent bar the use of hold- section Property organization expressed Owners ers with no connection the U.S. other support for the bill. compromise See Sen- ownership than their of a U.S. (statements 175, Hearings ate 179-80 of however, report made clear that it was Swan, Corporate Group Donald H. Vice protect intended to domestic industries President, Co.); Monsanto id. at 193- exploiting patents through were (statements Witte, of Richard C. Vice engineering, means such as research and President, Owners, Property Intellectual development, licensing. Those domestic Inc.); Comprehensive Legislation: Trade industries, if not actually producing even Subcomm. On Trade before goods, would nonetheless beneficiaries Comm, Means, Ways the H. on preserving section thus pur- “[t]he (statement (1987) 100th Cong. 275 of Wil- pose adju- of the Commission is to [which] President, Archey, liam T. Vice U.S. dicate trade between disputes U.S. indus- Commerce).3 Chamber of tries import goods and those who seek to similarly worded House and Senate from abroad. require- Retention reports compromise committee bill ment that the statute be utilized on behalf explained that the amendment to in the United section States [includ- licensing industry] 337 was strengthen intended “to retains that es- effec- 157; sential Report nexus.” House tiveness of section addressing Senate Report at growing problems being faced U.S. companies importation from the of articles case, Importantly for this reports
which infringe intellectual property U.S. explained new statutory provision that the rights.” 100-40, No. H.R.Rep. Pt. at require production “does not actual of the (1987) (“House Report”); 155 S.Rep. No. article in the United States if it can be (“Senate 100-71, (1987) at Report”). 128 significant demonstrated that investment legislation objective The achieved type and activities of the enumerated are eliminating requirement the to show injury taking place in the States.” House (or prevention the of the establishment Report 157; at Report Senate at 129. of) a as a domestic result of statute, added, the reports new the would “en- importation question. Report in House compass at universities and other intellectual 155; Report Nonetheless, Senate at 128. property engage in owners who extensive background 3. history legisla- of the 1988 amendment section 337. See House 497-508; places Judiciary tion is summarized at in detail several at Senate Hear- congressional hearings ings that led to the at 5-20.
1303
products
whether
claimed do-
rights
their
to manufacturers.”
the
the
licensing of
by the
157;
Report
mestic
were covered
at
at
Report
Senate
House
patent claims.
no
asserted
There was
emphasized that
reports again
129.
question
scope
in those cases as to the
did
to see this
not “want
the committees
337(a)(3)(C),
there was
subparagraph
a
to the
loophole
used as
indus-
language
(or
dictum)
certainly
holding
in
no
even
try
but
intended
new
requirement,”
infringement
any
suggesting
of those cases
that a do-
protect
from
language “to
licensing industry
mestic
un-
property
qualify
could
holders of
those
U.S.
337(a)(3)(C) only if
genu-
subparagraph
der
engaged
are
in activities
rights who
goods protected by
their intellectual
or
inely designed
exploit
in
This
period
produced domestically.
a
suit were
within
reasonable
in
which,
Mezzalingua
court’s
John
As-
time,”
statutory
decision
exploitation
v.
definition,
sociates
International
Commis-
included substantial investment
Trade
sion,
(Fed.Cir.2011),
Nokia requests Comm’n, (Fed.Cir. rehearing, again 690 F.3d question 2012) raises the InterDigital whether (majority opinion).1 contrary, To the majority argues now sufficiently that “a Rehearing Op. States. 1303 n. 4. This licensing industry substantial domestic will panel’s previous contrasts with the holding in *10 technology need to license its to a manufac- this case industry" that a "domestic can be somewhere,” turer necessarily but not in the
1305 337(a)(3) error, record of file court to correct legislative the Section its not to rein- clear,” suggest, “make or or even does not force it.
hint, by protected pat- that “articles 337(a)(2), ent,” need not made Section be I country patentee in order for the to in this “licensing” The amendment foreign-made infringing exclusion of obtain products. Section 337 was enacted in the Tariff of the amendments to purpose
The provide Act of an expedited and permit patentees 337 was to Section remedy in- against foreign-made .efficient pat- their do not themselves manufacture fringing products by authorizing exclusion products, ented such as universities products importation, of such from as an perform engineer- research or others remedy additional or alternative for in- ing, to have access Section fringement, but with certain caveats. remedy. The 1988 amendments did Thus the originally required statute pro- remove the that “articles remedy order to obtain the of exclusion patent” produced tected must be only there must not be a domestic States; the amendments were United practicing but also that designed enlarge the incentive for do- “efficiently domestic must be production, not to eliminate it. economically operated,” and must jured by importation. The 1988 panel majority insists that Con-
The amendments facilitated access to exclusion remedy intended to make the gress by eliminating prove injury the need to foreign of exclusion available to exclude operation and efficient and economic manufactures the absence of domestic industry, domestic and 'extended the exclu- although patentee in this production, remedy patentees sion such as universi- foreign case does not want to exclude the ties and research institutions that do not only to for product, but obtain fee goods. themselves manufacture importation. My colleagues that it is hold that no irrelevant domestic is legislative history of the 1988 producing, planning produce, or amendments cannot be read as proposed articles, license, patented directly or under panel majority. The Tariff Act of stating Congress “clearly” intended 1930, in its current codification at 19 purpose to abandon the of Section 337 to amended, § U.S.C. 1337 as declares unlaw- However, production. serve domestic ful: legisla- purpose is the Section 337. “licensing” tive record is clear that 1337(a)(1)(B) § importation
amendment to Section 337 was enacted to into the States, encourage support produc- importation, the sale for patented products. tion of It is time for or the sale within the United States licensing activity viding remedy alone. F.3d at to the ITC’s of exclusion based access majority's foreign 1329. Both of the inconsistent based on manufacture. Indeed, holdings majority's requires are incorrect. The statute “an in the Unit- record, position unsupported by relating protected new ed articles InterDigital pat- process [to] exist[ ] [be] does not assert that these 1337(a)(2). by industry being § are licensed to Nokia for use established.” 19 U.S.C. ents (or any country). purpose protect I United States indus- in Finland other As dis- foreign legislative history try, industry in post, cuss shows no not as an incentive to ratification, contemplation, countries. much less *11 Gremlin, owner, (Sept. Inv. No. 337-TA-201 import- importation after 1985) (Initial Determination), that— er, of articles 1985 WL consignee, or 303620, at *10. The full Commission re- (i) enforceable a valid and infringe versed, and en- activi- holding or a valid that “the States United ...; copyright respect forceable United States to the ties of Warner with ‘Grem- a domestic copyrights’
lin do not constitute industry under section 337.” 1986 ITC (B) (a)(2) and Subparagraphs [patent 313, at LEXIS *158. (D) (C) [trademark], copyright], [mask (E) (1) work], [design] paragraph and of Congressional hearings were held to in only if an the United apply this and other issues that had consider States, protected the articles relating to concerning 337. The record arisen Section trademark, patent, copyright, by the agreement among industry, general shows concerned, work, design or exists mask legislators, they coop- government, process being established. or is provi- adapt erated to the ITC exclusion (a)(3) (2), paragraph purposes For to circumstances such as the Grem- sion industry in shall be the United States case, copyright the owner of the lin where to exist if there is considered prod- was not itself a manufacturer of the respect to the arti- -with copyright. ucts licensed to use the patent, copyright, protected cles legislative purpose was to assist United trademark, work, design con- mask or against protecting States cerned— goods, by fringing foreign-made providing (A) significant plant investment ready remedy against rath- importation, equipment; obliging than the owner of the er (B) significant employment of labor or against infringing to act right wait capital; or marketplace. after reach the goods (C) in its ex- substantial investment Judiciary Subcommittee Chair- including engineering, re- ploitation, Kastenmeier, primary sponsor man development, licensing. search and legislative changes, initiated extensive The 1988 amendments arose from an ITC study hearings. Reported at Intellec- decision in Prod- copyright Certain Property tual and Trade: Be- Depictions, ucts Gremlin Character With Courts, the Subcomm. on Civil Liber- fore 337-TA-201, Pub. 1815 Inv. No. USITC ties, and the Administration Justice (March 1986) (Final Determination), 1986 Comm, Judiciary the House on the complainant ITC LEXIS 313. The War- (“House Judiciary Hearings”), Cong. 99th sought products Brothers exclusion of ner (1986); Cong. Rec. (Apr. H1783 infringed copyrighted Gremlin 10, 1986), legislation he stated was characters. The ALJ held that the domes- needed tic requirement of Section 337 modify industry require- met, stating was that Warner Brothers allowing complaints ment be filed companies “licensed 48 domestic have a substantial by persons who made variety goods containing duce a wide in facilities or activities relat- investment depictions GREMLINS character [includ- exploitation of a [or hats, boxes, ing] painter caps, jer- lunch property], including other ‘Colorforms,’ seys, toy posters, playsets, development, licensing, research and costumes, cars, games, patterns card sales, adjustment blankets, records, marketing. This baby pajamas, sleepers, stickers, just to name a few.” will assure continued access to the ITC puffy *12 entities, universities, pose support who other than to domestic manu- including stake the United have a substantial facture. States. ITC Chair Paula Stern stressed the role would also avoid the unfor- change This property rights of intellectual in produc- occurred in tunate results which have growth: tion and economic cases, Gremlin, such as some recent I proposed legis- am concerned that the pertinent legislative
where —because lation can be read to protec- elevate the history the current explaining law—the tion of property rights —re- notwithstanding has denied relief ITC gardless they ultimately of whether are large a service the existence of commercially exploited other im- —over right exploiting the intellectual all, portant public goals. interest After Finally, within the United States. such society benefits even more from the change will universities and enable fruits of the inventor when intellectual do not have the small businesses who property rights exploited through are capital actually good make the capital entrepre- efforts and States to still have access to the neur. It protection production-related forum for the of their is this activ- ITC rights. ity which in turn spawns economic growth. Society does not benefit direct- Id. ly protecting particular from invention stated that his Chairman Kastenmeier ultimately exploit- unless that idea is not proposal “modest” does “delete the ed.... industry requirement.” Trade Legislation: I therefore believe that to be consistent Reform Before Comm, on Trade the House Subcomm. public-interest with the purpose of sec- (“House Ways Ways on and Means inju- tion (1986). Hearings”), Cong. 99th Means maintained, ry standard should be objected simply removing He the do- require should continue to more than industry requirement from the stat- ownership mere of a U.S. intellectual ute: property right.... are not Universities industry” Without the “domestic re- domestic industries. quirement, this access ITC [to exclusion] 5-6, Judiciary Hearings at 69. any not be predicated would invest- Representative agreed, Moorhead but change ment the United States. This university out pointed the role of inven- attempt cannot be said to in potential activity: tions industrial jobs, quite contrary tect American university really But the does not have a true. very good remedy anyplace at the pres- During hearings, the same Id. 824. them, ent time.... hear but [Courts] Representative Carlos J. Moorhead ex- passes there is so much time that before why plained existing amendment they actually get into court statutory text was needed: profit purpose of the invention and the prevents test ... universi- late reaped has been abroad and is too using ties and research institutions from anything it. to do about enforcing patents, their copyrights and trademarks because you do a new cancer What do about are not in business. treatment in the biotech area like inter- something feron or of that kind? There Representative Moorhead did time, industry yet no at this it is suggest any pur- that Section 337 had that universities and other great clear also
something that there will be industry. *13 property intellectual owners who license rights eligi- to manufacturers are their Id. at 70. relief. ble to obtain process progressed, legislative As the testimony contain hearing Hearings records Property Rights: Intellectual industry, of representatives of statements on Int’l Trade the Subcomm. of Before community, academic government, the (“Senate Hearings”), Comm. S. Finance sampling I a of testi- legislators. present (1986). Cong. 193-94 IPO therefore 99th mony proposal provide specific remedy for do- supported access to ITC exclusionary licensors with access to ITC organizations whose function it is to disputed witness that Sec- procedures; no research, license the use of that do support tion is intended to manufacturing industries in research manufacture, foreign manu- imports not of Id. at 188. the United States. facture. positions presented were on be- Similar Stein, Coming H. Glass Michael many technology-based corpora- half of Industry and the Semiconductor Works E.g., Kiley, D. Presi- tions. Thomas Vice Association, Ways and Means House dent, Genentech, Inc.: Hearings at 655: jurisprudence, current ITC it is Under complainant that a [T]he to a open whether relief available establish that there is a U.S. patentee who does not himself manufac- property intellectual exploiting goods ture and sell the involved. Under purpose remain. The of the ITC should present rights law the of universities adjudicate disputes trade between the In- and individual inventors before U.S. industries and those seek are ternational Trade Commission unre- Moreover, import. the issuance of an solved. exclusion order makes little sense if it Judiciary Hearings not within protect does U.S. House borders. Roy Massengill, H. General Patent Witte, Counsel, Proctor & Richard C. Gamble Signal, Allied Inc.: Co., testifying as Vice President Intel- object having sort of We do some Owners, (IPO), Inc. Property lectual ex- entity type or a business including “licensing” fa- plained that could where there is an investment. Universi- technology: patented cilitate use of the special I a ties think are case would rapidly changing Owners of exception. have to be an high-technology industries should not be Id. at 91. against foreign competition denied relief purpose All witnesses stated that the steps being if are taken to establish an remedy extension of the Section 337 industry in the U.S. industries Some entities such as universities and research technologies may U.S. built new role institutions is to accommodate their if never come into existence own- to au- licensors to domestic
ers cannot fend off free riders. —not foreign-made thorize ITC exclusion of if an We believe industry exists products when no domestic significant owner has made investment process being or is “in the established.” satisfy in the United that should 337(a)(2). Senator Frank Lauten- Section industry requirement. Significant berg, co-sponsor corresponding of the develop- investments in research and bill, It made stated: qualify. ment should should be Senate up law throws barriers that The current trademarks because are not firms, business. range blocked relief for have York inventor of fiber
from the New Ways and Means at 354. waveguide to a Tennessee maker optic explored policy Witnesses the trade as- softballs, to the California movie pects of Section 337. Professor Robert E. that licenses the Gremlin charac- studio University Hudec of the of Minnesota Law ter. School discussed the relation *14 Ways Means at 572. House and posed changes in Section 337 to the GATT (General Trade), Agreement on Tariffs and majority panel states Senator stating prob- his “views of what the GATT that it Lautenberg “explained ap- was not regard lems are with present to the section in propriate require production to 337 and the proposed reforms.” House United States in order for section 337 to Judiciary Hearings at 172-73. remedy.” Rehearing Op. be available as a That incorrect. 1300-01. Senator Lau- Chairman Kastenmeier made clear that tenberg sought provide stated that he to purpose of the licensing amendment protection under Section 337 for “[r]e- was to benefit entities “who have a sub- plowing search-based firms are mil- [that] stantial stake the United States.” Id. development lions of dollars into the of legislative 551. The final reports of both products processes,” compa- new Congress explicit: H.R.Rep. Houses of are spend nies that hundreds of millions of (House (the No. 100-40 Report), at 157 develop bring “to phar- dollars new “encompass amendments universities and to market” or product maceutical create a other property owners who en- family chips.” of “new semiconductor 133 gage in extensive rights of their 1987). Cong. (July manufacturers.”); Rec. S9937 Senator S.Rep. to No. 100-71 (Senate (the Lautenberg propose not of Report), did elimination at 129 amendments production requirement “encompass universities and other intellec- “[fjor 337; property engage Section he stated that those tual owners who in exten- rights who make substantial investments in the sive of their to manufac- turers.”). creation of intellectual and then creations, license their there should be a require- Other amendments deleted the
remedy,” and that domestic industries establishing injury ments of the domes- protected piracy. should be from industry, industry tic and that the must be efficiently and economically shown Representative Clayton U.S. Trade However, operated, post. as I discuss presented posi- Yeutter the Administration requirement that there must be a domestic tion, that be made easier for should industry, in process existence or industry domestic and universities have established, being was not touched. After remedy by to the access Section 337 elimi- deliberation, years hearings, two industry nating the test of “efficient and among interaction the concerned communi- operation”: economic ties, amended to these Section 337 was supports The Administration also elimi- effects. provision nation of the test law, record,
the current another source of need- Despite legislative panel this uncertainty.... less test majority legislative history held prevents also “strongly supports]” universities and research the view that using require- institutions from the ITC for en- eliminated the 1988 amendments forcing patents, copyrights production. InterDigi- their and ment of domestic this lan- majority does not want see tal, panel Committee F.3d at 1329. However, loophole as a guage there is used that error. repeats now at 157 Report requirement.”); for their statement support no (same). depart not from Section 337 does clear that it would not be legislation “made that there be prove necessary complainant articles, patented being pro- produce goods were patent-protected li- Rehearing Op. whether under its own country.” duced manufacture, actual or cense. Domestic established, being explic- process majority plucks out context panel No itly required present statute. the amended statute a statement “made clear” contrary position was require actual “does legislation.2 if it can be article in the United States 337(a)(2) that substantial investment requires that there be demonstrated Section is, are type activities of the enumerated patent,” protected “articles *15 Senate taking place to made the United States.” preparation articles made or be 129; Report at House at 157. The Report The amended stat- in the United States. sentence, ensuing that bring majority an omits the ute authorizes a licensor to ITC action, encompass universi- definition could purpose “[t]he exclusion for the property to and other intellectual owners give is to a licensor access ties amendment engage in extensive of their remedy foreign-made of exclusion of who the rights Report to to manufacturers.” Senate infringing products, as an alternative 129; The Re- Report at 157. litigation importation district court after the licensor does not purpose ports is state that when infringing products.3 the articles, patented licensor’s income and its itself manufacture the protect to manufacturers.” Man- is not to facilitate the licenses are “to purpose licensees. The a ufacture under licensed United States importation foreign-made products. is manufacture the United industry requirement The domestic is States. only proper- if owner of the “[t]he satisfied III, implementation I in Part ty right actively engaged steps lead- As discuss [is] “licensing” of this amendment became er- exploitation of the intellectual court, ratic in the and in this as the including application engineer- property, work, statutory imprecision led to design language or other such activities.” terse ing, (“Because At time of interpretation. this stat- consider- Report Senate major protect holders of ation of these amendments issue ute is not intended only “licensing” aspect, not the which was who have was U.S. uncontroversial, proposals, other but the limited contact with longer 2. panel majority 337 is no concerned with domestic makes statement ground excluding "compromised” away as a for for- manufacture Chairman Kastenmeier eign industry manufacture. No witness commented requirement that a domestic is far-reaching compromise. It would on such intending practice patent- practicing or made, be remarkable indeed if it were silent- Rehearing Op. ed invention. 1301-02. The reportage ly, without comment or intended, majority legislators states that —unknown today. until any by explicit compromise, to eliminate do- requirement. legis- mestic manufacture statutory lative record contains no reference to such 3. amendment in 1994 renders it A stay compromise, proposal compro- obligatory such a a co- no for a district court mise, infringement suggestion compromise pending action until the ITC no that such a achieved, completed. § explanation proceeding is 28 U.S.C. was no that Section
13H particularly long- whether to eliminate the have to demonstrate destruction or sub- standing requirements if injury stantial infringed?” is industry injured by importation, is and Senate at 2. efficiently economically operated.
is I Senator Frank Lautenberg: “The main briefly aspect turn to this of the 1988 problem is this: it isn’t enough prove amendments. piracy. prove One has to it hurts. One prove imports has to destroy
II would injure a U.S. ... “Efficiently Economically Operated” is efficient economically operated.” Industry Domestic Id. at 38. Section 337 as enacted in 1930 contained Senator John C. complainant must “My own Danforth: establish both that the domestic view is that —and I am a cosponsor of the injured by infringing is imports, and bill—if counterfeited being material efficiently shipped into the United States it should be economically operated. proposal very easy get I relief. view that as requirements to eliminate these occasioned really per type se violation of fundamen- views, patent policy diverse interacted tal standards of how we want to do busi- policy competition policy. with trade country, ness and that it should not aspects independent These occasioned dis- a lengthy process of trying prove *16 cussion, unanimity with somewhat less you injured whether are and your whether than for the amendment. Fol- industry operating efficiently is and wheth- lowing is a sampling hearing of the record: your industry Id. at 128. impacted.” er is ITC Chair Paula Stem: “The present Representative Moorhead discussed the operation require- efficient and economic difficulty proving injury: may discovery ment enlarge the record hearing and the record with concomitant very, very It is difficult to prove damage parties additional costs to the and the to an industry you great where have a may It place large Commission. also invention, one that obviously going is amounts of confidential information risk. someplace, going to in- develop great a However, using our trade statutes ... in a dustry, industry where the has not been industry situation where the domestic is developed yet, because there has economically inefficient and will not be via- time, been and before that industry can ble is a waste of resources.” House Judi- here, get off ground they selling are ciary Hearings at 26. Chairman Stern product the same from abroad. proposed modifying, eliminating, but not Judiciary “efficiency” requirement for the do- Repre- at 69. industry. sentative Moorhead stated: “Also an prove ventor would not have to Roth, Senator William V. Jr.: I “As see industry efficiently economically op- is and it, priority for us the committee in high-technology erated. Some small firms this effort to amend section 337 is the may not get have chance to started and injury Right requires issue. now the law to become economical before are chal- infringing imports threaten an effi- lenged pirates. They are unable to economically operated cient and just seek relief before the ITC as universi- industry with ‘destruction substantial injury.’ why But should an ties and individual inventors are unable to owner of seek relief before the ITC.” property right patent intellectual like a at 2. 337, designed for Bale, requirements of section Rep- Trade Assistant U.S. Harvey intend- resentative, originally context antidumping Administration: “[I]n for statute, an effi- make no sense the need to establish ed in the opinion our indus- economically operating arena.” Id. at 246. ciently property intellectual on U.S. intellectual try imposes a burden one establish example, “For how does it harder for which makes property new, industry efficiently owners emerging is time, rights.... them to enforce their at 251. economically operated?” Id. “We owner, money energy, and opposition of little or no are aware are and the Commission respondent, requirement.” Id. at 252. removal of this a real ‘ef- to determine whether expended Witte, support Richard C. IPO: “We for economically operated’ indus- ficiently and completely requirement eliminating at 48. try exists.” Id. industry that the ITC must find the U.S. President, Kiley, D. Gen- Thomas Vice efficiently economically operated. to be necessity demonstrating entech: “The may it be difficult for a example, For economically an efficient and injury to indus- newly technology based established ... a burden is be- operated it efficient.” Senate try to show that in conventional yond present those Hearings at 187-88. shared It is a burden not actions. Archey, T. William for many holders in other process patent sup- Commerce: ‘We States Chamber of foreign And will countries.... that the port eliminating invariably efficiently more and eco- be industry to must find the U.S. forego the nomically operated if it can ‘efficiently economically operated’ as a original research.” expense burden condition for relief Id. at 87. may be difficult particularly cases since Signal: Allied “I Roy Massengill, H. established, newly technology-based requirements think that the that it efficient.” Id. to show *17 injury through showing they establish at 247-48. economically operat- and have an efficient initially ad- Representative Kastenmeier paten- on a industry ed is too burdensome eliminating, the modifying, vocated but not Moreover, there are a lot of research tee. “efficiently economically operated” and re- as universities that cannot projects as well “Third, quirement: transfer the economi- at 93. requirement.” meet that Id. cally efficiently operated criteria from and Stein, Coming H. Glass and Michael complainant’s case being an element of Industry the Semiconductor Association: evaluated public to a interest factor to be should also be amended to “Section 337 only determining whether to the ITC complain- that a requirement eliminate the remedy. change This alone approve a industry that the is ‘effi- prove ant U.S. potential limit the real and discov- should ciently economically operated.’ This can under current ery abuse which occur subjective, and to vague, highly element is Judiciary Hearings law.” House credit, International Trade its U.S. any differ- To the extent that there was relief on this has never denied Commission Hearings, it related opinion ence of basis. This element adds additional need- showing injury requirements to the already high price less cost to the sec- Al- operation. and economical efficient relief, subjects] indus- tion 337 U.S. majority makes much of though panel discovery by to extensive counsel for tries compromise,” they “the do what call at 244. “The foreign respondents.” explain compromised. was injury operation not what and efficient and economic industry, the Monsanto Com- is deemed to be a domestic on behalf of with statement panel majority to illus- pany, cited no need for domestic licensed manufacture. “compromise,” shows purported incorrect, trate the Rehearing Op. 1298. That is that the domestic re- proposal no has often Commission held that licens- H. should be removed. Donald quirement satisfy alone does not Co., Swan, President, Monsanto testi- Vice industry requirement, even as the Com- fied: mission has also reached inconsistent hold- you should retain the
We believe ings. that U.S. In Making Certain Methods Carbon- is, complainant volved. That Products, Candy ated Inv. No. 337-TA- man- has substantial investment U.S. (June 1991), USITC Pub. D, R ufacturing, development & creative then-recently Commission addressed the marketing development or facilities. 337(a)(3). enacted Section complain- pure This would include universities and holder, ants included the its exclu- research facilities. licensee, sive and “a partnership estab- However, Senate at 175. Mon- manufacture, sell, lished to and distribute” eliminating require- supported santo patented candy. carbonated Comm. proving injury and efficient and ment Op. complainants at 1. The argued that operation: economical their commercial of carbonated improve- strongly support proposed We candy practiced the “essential element” of to Section 337 to make it more ments and therefore satisfied the do- bring cases in the practical industry requirement. rejecting In imports infringe pat- exclude which U.S. argument, the Commission ruled that ents, trademarks, copyrights. statutory language respect “with to the of action an type applied When this is protected by patent” articles “reflects case, infringement opposed long-standing practice Commission’s injurious import goods, more usual holding that a domestic does not clearly issues such as whether the com- licensees, exist if the complainant, “efficiently economically plainant is exploiting patent.” not the asserted Id. at operated” “injury” or whether can be “adopt[ed] 34-35. Commission proven Infringement are irrelevant. finding ALJ’s that the domestic injury definition practice” does the asserted id. property rights and whether the innova- *18 31, and denied exclusion under Section efficiently run operation tor’s is is mean- ingless in an intellectual property rights
case, opposed commodity to a manu- suggested Dynamic It is that Certain facturing case. Sequential Compression Gradient Devices My colleagues’ Id. at 179-80. statement Thereof, Component Parts Inv. No. legislators compromised away that the 337-TA-335, (Nov.1992), USITC Pub. 2575 industry requirement domestic is without early an of the example Commission’s foundation. elimination of the re- domestic quirement. Rehearing Op. 1298. While
Ill complainant stated that “a in a ALJ investigation need not manu- Inconsistent Precedent Section 337 by product facture the covered the claims panel majority The states that “the patent in order to establish that a consistently Commission has construed (C)” exists,” subparagraph so that alone domestic ALJ also ALJ, by the full approved protected Apparatus need for “articles stressed Commission, stated: by patent”: judge law has administrative Therefore, [T]he set forth the activities authority for the conclusion 337(a)(3) a do- found no may constitute ] [Section patent, license under a that a mere only if are suffi- mestic has not fabricated where the licensee protected articles ciently related to complainant a con- any product which exploita- as to constitute described tends embodies the invention tion thereof. a adequate to establish in said 15, (May Initial at 59-61 Determination industry. domestic 1992). complain- that the ALJ held 811431, at *11-12 n. 25. This 1992 WL in research and devel- investments ant’s directly apposite. statement is and educational opment, engineering, constitute domestic programs did not However, has been in- the Commission not Licensing at 61. was industry. conflicting deci- consistent. A Commission had complainant discussed because Digital System sion is Certain Satellite licensing under the [as- engaged “not (DSS) Thereof, Components Receivers and n. 30. patent.” Id. 1997). serted] (Oct. 20, Inv. No. 337-TA-392 complainant’s licensing found that the Integrated Circuit Telecom- ALJ In Certain satisfy the do- activities were sufficient to and Products Contain- Chips munication Same, industry requirement because Including Dialing Apparatus, (1) 337-TA-337, people five complainant employed USITC Pub. 2670 Inv. No. ], ], negotiate] rejected “identify! approach[ (Aug.1993), the Commission (2) licensees,” prospective with had “that to the extent that a domes- argument expenditures relating “incurred substantial respect [asserted] tic with patent rights.” Initial complainant’s licensing litigation patents is based 696255, activities, Determination, 1997 at *8. WL development or research and stated that “the statute does not industry requirement is satisfied ALJ require complainant ... to manufacture the complainant if it is found that even that a patented product require nor does it practice patents.” the [asserted] do[es] Determination, product covered complainant LEXIS show that Initial 1993 ITC by com- is made [asserted] at *87 n. 87. The ALJ stated Id., 337(a)(2) The full plainant’s licensees.” at *8. requires that the domes- “Section aspect did not discuss this protected the articles Commission tic relate to the Initial Determination. Certain DSS and that the patent,” 1999) Receivers, (May (vacating Notice production “reflects the Com- of domestic invalidity rulings). holding only the ALJ’s long-standing practice mission’s if industry does not exist that a domestic panel majority states that Section licensees, complainant, or its is not requires the investment in *19 Id. The exploiting patent.” the asserted be “substantial” to constitute domestic “thorough adopted the ALJ’s Commission that is no industry, and therefore there analysis. and well reasoned” 1993 be used to “concern that the statute will 854, n. 2. LEXIS *25-26 remedy any domestic grant a owner, matter the scale of its that no what panel majority states some patent.” in Re- exploiting Rehear- activities “inapposite.” these decisions are However, proposition, n. 2. For this apply hearing Op. all 1299 ing Op. 1298. 337(a)(3). Stringed majority cites Certain Musi- Dialing In interpret Section
1315 A Components Thereof, say party would no. get cal Instruments could relief if 2008) (Final 16, (May significant it has made Inv. No. 337-TA-586 investment in R Determination). D, merely engineering, But this case il- & or licensing. uncertainty engendered by lustrates the (quoting Cong. (Apr. 132 Rec. H1782 statutory inter- majority’s inconsistent 1986)) 10, (emphases original). The Stringed In pretation. Certain Musical “licensing” Commission stated that in Sec denied an in- Instruments Commission only tion “bring 337 covers request inventor’s dependent Section market,” patented technology but also remedy, although spent he had thou- that “take advantage pat activities to manufacture five differ- sands dollars i.e., ent, solely derive revenue” from the prototypes patented tuning ent of his de- Id., patent. at *39. On further determi many years attempting vice and devoted to nation, held that ALJ the domestic patented tuning technology for license his industry requirement had not been met. Op. manufacture. Comm. at 9- domestic Id., 2010).(Commission 12, (July at *5 no held that the 25-27. Commission declining tice to review ALJ’s determina had not “substantial in- inventor shown industry). tion of no domestic This court vestment,” although the context showed affirmed, holding in John Mezzalingua As persistently sought that the inventor had sociates v. International Trade Commis licensees. sion, (Fed.Cir.2011), F.3d 1322 patentee’s investment in licensing and
A recent ITC decision concerned wheth- satisfy enforcement activities did not litiga- er the combination of 1337(a)(3)(C). § tion could meet the expenses domestic dustry might, and held that it requirement, In Mezzalingua appeal its brief on the In depending particular facts. Cer- Circuit, Commission, to the Federal Connectors, tain Coaxial Cable Inv. No. responding argument only to amici’s (Nov.2011) 337-TA-650, 2011 WL “productive” licensing should be consid- “Congress contemplat- the ITC stated that ered relevant to the establishment of a ed that the would cover small industry, stated “there is no companies, startups, such as biotech Congress evidence that ... considered generate license their in order to Practicing [Non NPEs when it Entities] capital product sufficient to manufacture a amended the Commission’s statute Id., in the future.” at *38. The Commis- Indeed, emergence 1988.... of NPEs quoted Lau- sion the statement Senator years too the last 15 recent for Con- tenberg, explained: who had gress have considered when amended twenty
For those who make substantial invest- the Commission’s statute over research, years ago.” ments there should be a Commission Brief at 59-60 (Mar. 2011). remedy. For those make who substan- Commission stated tial legislative history design investments the creation of intel- that “the and the statutory lectual then scheme property and license cre- of the indicates Con- ations, remedy. there should be a Let to cover gress intended section 337 ‘licens- give example, encourages me one there’s a start-up ing’ productive use my product patented technology.” biotech firm in state. Its Id. at 57. This patents. stage agreed, stating It hasn’t reached the that “it is clear that court disposing intention Congress It doesn’t have the had no of manufacture. industry requirement alto- money. point, by But it will reach that *20 licensing patents gether.” Mezzalingua, to others. Should 660 F.3d 1327. deny right panel majority’s ruling we that firm the to exclude The current In- precedent. our own pirates? legislation terDigital the work of Our contradicts 1316 activities, indus- licensing the domestic by my colleagues cited
A recent decision require a try sepa- does not determination “consistency” the Commission’s to show analysis and the com- prong rate technical inconsistency. Certain actually shows that it or one of its need not show plainant Navigation De- Display and Multimedia practices patents-in-suit.” licensees Thereof, Components Systems, vices and However, Id., at the ALJ also held *79. Same, Inv. No. Containing Products licensing was not that the investment 8, 337-TA-694, (Aug. 4292 Pub. USITC meaning of Sec- “substantial” within 2011). majority states that the panel The Id., 10, October tion 337. at *87. On in li- investment holds that Commission 2012, affirmed,4 denying the Commission satisfy the domestic may censing alone access to Section 337 exclusion. Rehearing Op. industry requirement. inaccurate to state that the plainly It is not mention majority does panel 1298. The “consistently” that has held Commission pur- that the the Commission’s statement in licensing alone satisfies the domestic is to ben- licensing amendment pose dustry Rehearing Op. 1298. requirement. patents their “to that license patentees efit conflicting rulings of the Commission “production-related or for manufacturers” for resolution. itself underscore the need activities”: InterDigital interpretation court’s And 337(a)(3)(C) added to bene- was Section weight with the of Section 337 conflicts re- fit entities with limited require which do precedents, this court’s start-up like universities and sources preparation pro production, mestic their inventions companies that license duce, patent. protected articles See manufacturers, large as well as enti- Comm’n, Crocs, 598 Inc. v. Int’l Trade produce ties (Fed.Cir.2010) (domes 1294, F.3d 1306-07 and devel- through design and research “the industry requires tic [to] States, opment activities the United by the produce[ articles covered asserted ] production-related activi- but outsource claims.”); v. Int’l Trade Osram GmbH (Fed.Cir. through licensing. Comm’n, 1351, ties 505 F.3d 1359 2007) (there product” must be a “domestic Op. at 13 n.9. Commission Comm. satisfy industry require the domestic that a do- finding the ALJ’s “reverse[d] Comm’n, ment); Alloc, Inc. v. Int’l Trade exists.” Id. at 25. (Fed.Cir.2003) (consid 1361, F.3d 1375 342 ruling another recent is consis- Yet “industry ering whether the relates to the for domestic tent with articles.”). panel majority’s protected by license. In Certain Inte- manufacture statutory interpretation is a distortion of Circuits, Products, & Inv. grated Chipsets, InterDigital, 337. See 690 F.3d Section 337-TA786, (July (holding InterDigital No. WL satisfies 2012) (Initial Determination), industry may the ALJ § had 337 because a domestic activities.”).5 complainant relying “purely that “where a consist stated Rehearing led in suit.” appeal 4. has been filed as of this date. No Op. While the ALJ 1299. This is inaccurate. "substantially InterDigital reports all InterDigital general made a statement a limited num- revenue was derived from [its] develop- been involved in research and has of the United ber of licensees based outside technology since Inter- ment of wireless Inc., InterDigital, primarily in Asia.” Digital argued "satisfies 10-K), (Feb. 27, (Form Report at 21 Annual industry requirement on its based 2012). majority "[t]he now states that provide InterDigital did not activities alone.” also reveals substantial investment record development related InterDigital development evidence of research and research *21 among by inconsistencies rein- value burgeoning awarding claimants At a the need for resolution. con- force damages. July in gressional hearing 2012 witnesses (statement Kelley). of David B. forum is often pointed out that ITC We offer no view on the role of non- protect domestic manufac- used not practicing advance, in entities innovative tures, importation facilitate of for- but to taking complex positions note of the on all eign manufactures. See International sides. The issue before the court is sim- Disputes: and Patent Trade Commission pler, solely for it relates purpose
Hearings on Intel- Subcomm. Before 337, application of Section whether the Property, Competition lectual and the In- licensor is a research establishment such Comm, ternet the House on the Judicia- InterDigital, any as licensing pat- other (“2012 2012). (July ry Hearings”) ent owner. The larger policy aspects are Rubin, Neal A. Vice President Cisco properly before legislators. It is the Systems, that: testified judicial law, obligation to understand the rely upon assertion entities often enacted, to appreciate purposes unwilling the domestic activities of their apply correctly, implementa- the law in satisfy licensees the domestic indus- [to legislation: tion of the try requirement].... But statutory language, by Congress added in purpose of the Commission is to apply should not to the ‘revenue-driven adjudicate trade disputes between U.S. licensing’ model. industries import and those who seek to (statement goods from abroad. Retention of the of Neal A. Rubin). requirement that the statute be utilized behalf of an in the United
At hearings, Kelley, the same David B. States retains that essential nexus. IP Technologies, Counsel of Ford Global purpose licensing testified of the Report at 157. help jobs amendment was to American adjudicate is to disputes trade production: between U.S. industries and those who permitted in Licensing is import goods seek to from abroad. Re- industry test to allow innovators who tention of the that the stat- products, universities, don’t make like ute be utilized on behalf of an helps use Section 337.... This create United States retains essen- jobs product development American tial nexus. hand, and manufacturing. On the other Senate at 129. Report [patent assertion obtain li- entities] My colleagues depart statutory from the patents product cense their after a has purpose, holding text and that the statu- market, come to and seek to share in the tory requirement of domestic already by value created others.... require does not manufacture. domestic may
While a PAE have a claim in dis- court, Rehearing Op. says, n. 4. The statute trict no place should have twice, ITC, protect protect- which is intended to that there must be “articles U.S. 1337(a)(2), (a)(3), § jobs, industries and not to allocate exist- ed the patent,” suit, patents foreign industry, infringe and the record de- abroad relationship foreign patents. scribes no between research and im- States development ports institutions or research —whether only relationship satisfy suit. The asserted in this Section 337's universities —does items, imported industry requirement. case is that the manufactured *22 or un- patentee, produced whether The do- patentee. from the
der license not met industry requirement That the issue
foreign manufactures. From the attention. judicial
requiring rehearing, petition for denial of the
panel’s respectfully
I dissent. INC., PACKAGING,
ACCENT
Plaintiff-Appellant,
v. PLATT, INC., &
LEGGETT
Defendant-Appellee.
No. 2012-1011. Appeals, Court of
United States
Federal Circuit.
Feb.