International Trade Commission Clarifies The Requirements For Standing In A Patent Infringement Investigation At The ITC

The International Trade Commission (ITC) recently issued an opinion clarifying the requirements for standing in patent infringement suits at the ITC. On January 7, 2015, the Commission issued the public version of its opinion reviewing Administrative Law Judge ( ALJ) Dee Lord's initial determination ("ID") terminating Investigation No. 337-TA-897 (the "897 Investigation") based on Complainant's lack of prudential standing. In short, the opinion states that a complainant has standing to bring suit for infringement of a patent if it owns substantially all legal rights in the patent, or holds some rights in the patent and joins the patent owner in the ITC action.

Background of the 897 Investigation

The 897 Investigation, captioned Certain Optical Disc Drives, Components Thereof, and Products Containing the Same, was instituted by the Commission on October 25, 2013 after Optical Devices, LLC filed a complaint alleging that Respondents1 violated section 337 by importing into the U.S., selling for importation, and selling in the U.S. after importation certain optical disc drives, components thereof, and products containing the same that infringe certain U.S. patents.2 On May 6, 2014, Respondents filed a motion to terminate the investigation arguing that Optical Devices lacked prudential standing to bring an infringement action with respect to the asserted patents. ALJ Lord granted the motion and terminated the investigation, finding that Optical Devices did not hold all substantial rights to the patents and thus lacked prudential standing to maintain an action for infringement without joinder of other necessary parties.3 As will be discussed in more detail below, the Commission's opinion vacated the ALJ's finding that Optical Devices lacked standing with respect to the Kadlec Patents, remanding to the ALJ for further proceedings, and upheld, based on modified reasoning, ALJ Lord's determination that Optical Devices lacked standing with respect to the Wild Patents.4

Requirements for Standing in ITC Patent Actions

The Commission's opinion begins with a thorough examination of the standing requirement for complainants in patent actions before the ITC. Commission Rule 210.12 requires that complaints alleging patent infringement "include a showing that at least one complainant is the owner or exclusive licensee of the subject intellectual property."5 To determine whether this requirement is met, the Commission applies the same constitutional standing requirement used by U.S. district courts, which requires "that a plaintiff (1) suffer an injury in fact, (2) show a proximate causal connection between the injury and the defendant's conduct, and (3) show that the injury would be redressable by a favorable court decision."6 Causes of action for patent infringement are based in the Patent Act, which grants the legal right to prevent others from making, using, selling, or importing...