By: Daniel Kazhdan, Ph.D. and Vishal Khatri  In a recent order, ALJ Lord highlighted that standing requirements at the ITC differ from those in federal courts. At the ITC, only one complainant needs to demonstrate standing. See Certain Road Construction Machines & Components Thereof, Inv. No. 337-TA-1088.

In this investigation, Caterpillar Paving Products Inc. (“CPPI”), a subsidiary of Caterpillar Inc. (“Caterpillar”), together filed a complaint against a number of Wirtgen companies (“Wirtgen”) alleging that Wirtgen infringed certain patents. The patents, related to road-construction machines such as asphalt pavers, were owned by CPPI. Because the patents were owned by CPPI and not Caterpillar, Wirtgen moved to dismiss Caterpillar for lack of standing. If successful, Wirtgen hoped to preclude CPPI from relying on Caterpillar’s activities as a basis for domestic industry.

Relying on 19 C.F.R. 210.7(a)(7), ALJ Lord concluded that the ITC “requires that at least one complainant demonstrate standing consistent with federal case law, it never has required all complainants to do so.” She further concluded that “Wirtgen’s additional arguments rest on faulty premises regarding the necessity of tying particular complainants to particular domestic industry activities.” In fact, the ITC has long recognized the ability of non-exclusive licenses and related corporate entities to be co-complainants with a party that does have standing.

But this raises an interesting question concerning the extent to which domestic industry can be based on activities of complainants that do not have standing. While domestic industry at the ITC can be based on third-party activities, including activities attributable to licensees, there may be strategic reasons to include the appropriate third-party as a complainant in certain instances. For example, addition of the third-party as a complainant may streamline discovery issues related to domestic industry or may itself provide evidence that the activities are related to domestic industry.

Takeaway

Complainants and respondents should be familiar with the difference between standing requirements at the ITC and in federal court. While issues such as domestic industry may not turn on whether a particular complainant is named as a party, there may be strategic reasons to include related corporate entities or licensees as complainants. Respondents should recognize these issues and be prepared to challenge such attempts by complainants when appropriate.

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Vishal Khatri is an intellectual property lawyer with more than 15 years of experience representing clients in high stakes, bet-the-company patent litigation and procurement matters around the world. He routinely represents clients in matters before U.S. district courts, the United States International Trade Commission (ITC), and the United States Patent and Trademark Office (USPTO), including Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).