Licensing Entities and the U.S. International Trade Commission: Establishing a ‘Domestic Industry’ Sufficient to Enforce IP Rights

Finnegan partners Smith R. Brittingham, VI and Jeffrey C. Totten coauthored an article on developments at the U.S. International Trade Commission (ITC) concerning the domestic-industry requirement. In this article, the authors discuss the recent decision in InterDigital Communications, LLC v. ITC where the U.S. Court of Appeals for the Federal Circuit “confirmed that companies may rely on substantial licensing activities to establish to ‘domestic industry’” requirement.

The authors explain that parties wishing to enforce their patents at the ITC typically meet the domestic industry requirement by demonstrating “significant U.S. investment in manufacturing activities.” In Interdigital, the court considered if a patent owner’s licensing investment can also satisfy the domestic-industry requirement.

In its decision, the Federal Circuit confirmed “the ITC’s relatively consistent holdings permitting entities engaged in patent licensing, but not manufacturing, to seek exclusion of infringing goods from the U.S. market.” Brittingham and Totten continue by outlining three limitations that remain and how companies should consider them.

The authors conclude that “while the doors to the ITC are open to licensing entities, success is not guaranteed.” Parties must demonstrate the “size, scope, and purposes of its licensing expenditures” if they plan to rely on licensing activities to meet the domestic-industry requirement.