By: Vishal Khatri and  Blaney Harper  The ITC permits a domestic industry to be based on any claim of an asserted patent even if the claim defines an article that is different from the investigated article of commerce. In a recent order, ALJ Cheney reiterated that “[t]he Commission has long held that in order to satisfy the technical prong of the domestic industry requirement, it is sufficient to show that a domestic industry practices any claim of the asserted patent.” Certain Batteries and Electrochemical Devices Containing Composite Separators, Components Thereof, and Products Containing the Same, Inv. No. 337-TA-1087, Order No. 32 at 8 (emphasis in original).

In this investigation, Complainants LG Chem, Ltd., LG Chem Michigan, Inc., and Toray Industries, Inc. (collectively “LGC”) asserted three patents against Respondents Amperex Technology Ltd., DJI Technology Co., Ltd., DJI Technology, Inc., Guangdong OPPO Mobile Telecommunications Corp., Ltd., and OPPO Digital, Inc. (collectively “ATL”). Each of the three asserted patents included claims directed to a “separator” and claims directed to an “electrochemical device” comprising a separator. The electrochemical device is a battery and there was no dispute that the basic elements of a lithium-ion battery are an anode, a cathode, and a separator. Id at 1.

In a motion for summary determination that it satisfies the domestic industry requirement of 19 U.S.C. § 1337, LGC contended that they had significant expenditures related to the manufacture of batteries protected by the “electrochemical device” claims of the asserted patents. In response, ATL did not dispute that LGC has expenditures related to batteries, rather ATL argued that the “only patented article of commerce at issue in this investigation is a separator” which LGC does not have a domestic industry for since it imports the separators. Id at 2. ATL further argued that “summary determination cannot be granted based on LGC’s investments related to batteries because LGC’s batteries are unpatented downstream products made from patented separators.” Id at 7.

In his order, ALJ Cheney concluded that the “Commission has long held that in order to satisfy the technical prong of the domestic industry requirement, it is sufficient to show that a domestic industry practices any claim of the asserted patent.” Id at 8 (emphasis in original). With respect to ATL’s arguments that the “batteries are the kind of downstream products that prior Commission opinions have excluded from an economic prong analysis,” ALJ Cheney indicated that this investigation can be distinguished from the earlier cases cited by ATL because, the “asserted patents [in this investigation] include claims that recite essential battery elements, namely an anode, a cathode, and a separator.” Id.

Takeaway

This Order emphasizes the flexibility Complainants at the ITC have when deciding how to establish the existence of a domestic industry. Complainants can rely on any claim of the asserted patent to satisfy the domestic industry requirement, even if the claim defines an article of commerce that is different than the article of commerce accused of infringement.

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Blaney Harper's practice focuses on strategic patent litigation representing electronics, software, and information technology companies in matters such as patent enforcement in United States District Courts and the International Trade Commission (ITC). Blaney also represents and counsels clients concerning patent portfolio development and patent prosecution and appeal, including Inter Partes Review, in the USPTO. Blaney co-chairs the Firm's ITC practice and is the IP Practice Coordinator for the Washington Office.