The key to success as an ITC complainant is thorough preparation, well before the complaint is filed. Nowhere is this more important than in the preparation and planning of a complainant’s domestic industry argument. The so-called “technical component” of the domestic industry requirement is a far more common point of failure for ITC complainants than the “economic component”. The “technical part” requirement is essentially the same as for infringement: an ITC plaintiff must “show that there is a product of the domestic industry that actually enforces” at least one claim of the claimed patent . Microsoft, 731 F.3d 1354-1361. (Fed. Cir. 2013). It is unfortunately not uncommon at the ITC for plaintiffs to prepare meticulous infringement evidence for the accused products, but then fail to show that the domestic industry products practice a claim of the claimed patents.
Good planning and proactive thinking are essential to avoid major unforced errors when it comes to the “technical side”. The “technical part” cannot be an afterthought. A Complainant and its experts must carefully select and prepare their “infringement” evidence for the domestic industry’s products well in advance of filing the Complaint. If additional “technical” type information needs to be provided upon discovery, especially from third parties, a “point list” of missing pieces and a game plan for obtaining it should be top priorities from the start.
Provide evidence of specific instances of infringement
Lack of evidence regarding specific instances of “infringement” by domestic industry devices continues to lead to adverse outcomes for complainants at the Commission. More recently, the Federal Circuit Court of Appeals (“CAFC”) upheld the Commission’s final decision in Certain infotainment systems, their components and the automobiles containing them, Inv. No. 337-TA-1119 (May 28, 2020). In that case, the CAFC upheld the Board’s finding that Broadcom failed to demonstrate that there was an actual item of domestic industry that practiced a claim of the claimed patents. The CAFC, noting that “[w]We have previously concluded that, in order to satisfy the technical requirement of Section 337, a complainant must “show that there is a product of the domestic industry which actually applies ‘at least one claim of the claimed patent'”. concluded that:
Broadcom did not identify any specific integration of the domestic industry SoC and “clock tree driver” firmware, or a specific location where the firmware was stored… Because Broadcom did not identify one actual article that practices claim 25, the Board found that Broadcom’s failure to satisfy the domestic industry requirement of Section 337 was supported by substantial evidence.
Broadcom Corporation v ITC, [2022 U.S. App. LEXIS 5951] (March 8, 2022)
The facts and circumstances of the Broadcom cases are broadly similar to an earlier ITC investigation involving Microsoft in which the ITC also found that the technical component of the domestic industry requirement was unproven. To see Certain mobile devices, associated software and their components, Inv. No. 337-TA-744, ID at 196-206 (December 20, 2011). In this case, the domestic industry item was a third-party smartphone that allegedly implemented the counterfeit functionality. Microsoft’s expert relied on source code that had been provided by Microsoft to OEMs to show that the domestic industry article necessarily implemented the alleged technology ID claim. The expert, however, did not present any direct evidence regarding a specific item from the domestic industry, but rather advanced his arguments by deduction.
In this case, the Commission, confirmed by the CAFC, found that Microsoft had failed to meet the technical identification requirement because it had not demonstrated real example of direct infringement: “infringement ability has not even been proven here because Microsoft has provided no evidence that anyone implements the sample code on any device. Thus, the ALJ has only ‘a hypothetical device, which is insufficient.’ Id. CAFC agreed, finding that “Microsoft failed to show, however, that such client applications were actually implemented on a third-party mobile device.” Microsoft Corp. against ITC, 731 F.3d 1354 (Fed. Cir. 2013). Microsoft “just hasn’t identified any phones with the required components working as required.” Identifier. at 1362.
Similarly, in the recent Broadcom case, the Commission found that “Broadcom’s expert admitted . . . that he could not identify any specific source code in the accused products where this sequence of events actually occurred or could occur. To see Certain infotainment systems, their components and the automobiles containing them, Inv. No. 337-TA-1119, opinion of the Commission at p. 26 (28 May 2020). The Board held that “this lack of evidence is fatal to Broadcom’s infringement theory for claims 25 and 26” and that Broadcom had therefore “failed to discharge its burden of showing breach of this limitation”. Id. The Board also rejected Broadcom’s argument that the system’s claims have been satisfied by testing, based on the lack of specific test evidence. See Comm’n Op at pp. testing of SoCs, such as what the testing entails or when it occurs in the development process.”)
Provide evidence of infringement under other claim constructions
Complainants, by supporting the technical aspect, must also ensure that they provide direct evidence of infringement under alternative claim constructions. In the recent Some mobile devices with some multi-function emulators investigation, the plaintiff was unable to satisfy the technical part because he did not provide direct evidence of infringement for the interpretation of the claim finally adopted by the ALJ. Inv. 337-TA-1170, Initial Decision (March 16, 2021). The ALJ in the original determination reluctantly noted that “unlike infringement, where the case was clear and unchallenged, for the technical side of the domestic industry, Dynamics offers only evidence consistent with its proposal to build wrong claim. [record citations omitted] He does not report any evidence in his post-hearing memoirs regarding the shape of the alleged waveforms.” Id. at 61-62. The ALJ observed that although there was circumstantial evidence “that the technical branch of domestic industry could have been proven, had Dynamics simply presented its case differently,” the record unfortunately lacked the direct evidence necessary to support such a conclusion. Id.
While the discrepancy in the evidence of these highlighted rulings may seem minor, it was not possible to demonstrate violation of the domestic industry’s protected article. These shortcomings can be fatal to the patentee’s case. The best solution is to include in your pre-filing checklist and domestic industry evidence a thorough review of potential evidence carefully compared to each element of the relevant claims. Including your technical expert in this validation is also a good practice. A deliberate, targeted approach will minimize the risk of such a critical failure on the fundamental evidence of domestic industry.
Checklist prior to submission of technical sections
Key items for your technical pre-filing checklist:
The definition of “article of the domestic industry.” The definition must be broad enough to ensure that the article implements a claim of the claimed patent. This could mean, for example, that the “article” should comprise a complete system, and not just discrete components.
- Identify the actual physical product of the domestic industry. While it doesn’t have to be an item that is currently on sale, there is no way around the requirement of an actual physical copyrighted item. Identify it early and often and make sure respondents have access to it in fact-finding.
- Discovery by a third party. If evidence of domestic industry infringement requires information from third parties – such as chipset vendors – prior preparation of subpoenas and a third-party enforcement strategy is essential. When third parties do not cooperate with ITC subpoenas, district courts — and even foreign courts — must be enlisted to enforce that discovery. It takes time and diligence.
- Tests and documentation. The Commission will require direct evidence of “counterfeiting” by domestic industry products. Expert testimony and inference alone will almost certainly be insufficient. Proving technical “infringement” may require third-party product testing, source code, and other extrinsic evidence. It is essential to work early with your expert to identify and generate precisely the evidence you will need.
- Review the evidence after building the claim. Make sure you have direct evidence to prove your technical case even if the ALJ adopts the respondents’ constructions. It can be a moving target. But it’s too late to fix a hole in your technical evidence once the fact-finding is complete.
In summary, the key predicate for a Complainant to prove a Technical DI to the Commission, in short, is to (1) demonstrate the infringement by a specific item of the domestic industry (2) supported by direct evidence such as source code, test data and other detailed evidence. The Commission requires direct evidence of infringement: the agency’s factual determinations are reviewed by the Court of Appeals for the Federal Circuit on a “substantial evidence” standard. Expert testimony about the operation of the source code or the operation of a domestic industry device cannot compensate for the absence of direct evidence of actual infringement against an industry device. national production. It is critical that plaintiffs begin their case laser-focused on their technical evidence and maintain that focus until the end.
©1994-2022 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC All rights reserved.National Law Review, Volume XII, Number 71