Alert
Alert
By Evan Finkel
10.01.11
A recent case decided by the Federal Circuit related to the "domestic industry" requirement for maintaining a patent infringement action at the International Trade Commission was not directed at Non-Practicing Entities (NPEs; aka, "patent trolls"). However, the decision in John Mezzalingua Associates, Inc. v. International Trade Commission, -- F.3d – (Fed. Cir. Oct. 4, 2011) does have important implications as to NPEs that resort to district court litigation against a few test subjects to establish a "domestic industry" that might open the doorway at the ITC to sue dozens of companies.
The ITC is available to sue for unlawful importation into the United States of articles that infringe a valid and enforceable United States patent or an article made by a process covered by the claims of a valid and enforceable United States patent (19 USC 1337(a)(1)(B)) only if the so-called "domestic industry" requirement is met.
The domestic industry requirement is that an industry in the United States relating to the articles protected by the patent exists or is in the process of being established (19 USC 1337(a)(2)). The domestic industry requirement can be met in one of three ways: "[A]n industry in the United States is considered to exist only if there is in the United States, with respect to the articles protected by the patent ... concerned - (A) significant investment in plant and equipment; [or] (B) significant employment of labor or capital; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing." (19 USC 1337(a)(3)).1
1 The terminology often used is that there is an "economic prong" and a "technical prong" of the domestic industry requirement. The economic prong of the domestic industry requirement is that there must be the "significant investment" or "significant employment" as provided for in subdivisions (A), (B), and (C). The technical prong is that those activities are "with respect to the articles protected by the patent" as provided for in the preamble to those subdivisions.
Download: Federal Circuit Provides Roadmap for Patent Actions at the ITC by 'Non-Practicing Entities'