Among the interesting things happening at the International Trade Commission so far this month, there were three new Section 337 complaints, another challenge to post-importation inducement liability, and clarification on domestic R&D expenses.

New Complaints

Since August 1, three new complaints have been filed at the ITC.

Importation and Inducement Challenge

On August 8, FUJIFILM submitted a petition for the Commission to review a Final Initial Determination in X-Ray Breast Imaging Devices, 337-TA-1063.  The petition argues that Section 337 should not apply when infringement requires a post-importation combination of the accused products and other domestically-sourced components.  A public version of the Final Initial Determination has not yet been released, but it appears FUJIFILM and the ALJ disagreed about the scope of the holding in Suprema, Inc. v. ITC, in which the Federal Circuit permitted the ITC to exclude articles under Section 337 based on post-importation conduct in the United States that induced infringement.  The question of how far that authority extends is also currently under review at the Federal Circuit in Comcast v. ITC.

Domestic Industry R&D

The Commission issued an opinion on August 1 in Robotic Vacuum Cleaning Devices, 337-TA-1057, that clarified how complainants can use research and development expenses to satisfy the domestic industry requirement.

According to 19 U.S.C. §1337(a)(3), a domestic industry can be shown through evidence of “investment in plant and equipment” ((a)(3)(A)) or “employment of labor or capital” ((a)(3)(B)) related to articles protected by the patent.  It can also be shown through investment in the exploitation of the patent through “engineering, research and development, or licensing.” ((a)(3)(C))

Respondents had argued a complainant relying on research and development activity to demonstrate a domestic industry needed to tie that investment specifically to the patented technology and not merely to a product using that technology.

The ITC rejected that argument as contrary to long-standing practice at the Commission and the legislative intent behind the domestic industry requirement.  The ITC held that “expenditures on plant and equipment and labor and capital employed in engineering and research and development activities [may be used] to support a domestic industry under subsections (A) and (B).”

The decision doesn’t change standard practice at the Commission, but it does clarify that Section 337’s remedies are not reserved for domestic manufacturers but may also be enjoyed by patent owners with other sorts of domestic operations supporting foreign manufacturing activities.

Featured Publications