By: Vishal Khatri and David Maiorana  The ITC recently indicated that 19 U.S.C. 1337(a)(2) does not require that a domestic industry product be sold before a complaint is filed for a domestic industry to exist. See Certain Road Construction Machines and Components Thereof, Inv. No. 337-TA-1088, Order 32 (August 28, 2018).

In this investigation, Caterpillar Inc. and Caterpillar Paving Products Inc. (“Caterpillar”) filed a complaint against a number of Wirtgen companies (“Wirtgen”) alleging that Wirtgen infringed certain patents and alleging the existence of a domestic industry based on a new line of cold planer products. To support its domestic industry claim, Caterpillar claimed significant investments in R&D, display of the product at a tradeshow, demonstration of the product, and use of the product by potential customers for soliciting feedback. Notably, the product had not been sold in the U.S. and was not yet available for sale when Caterpillar filed its complaint.

Based on the lack of any sales, Wirtgen moved for summary determination alleging that “Caterpillar cannot satisfy the domestic industry requirement because no domestic industry products had been sold by the time the complaint was filed.” Caterpillar argued that the statute did not include such a requirement. ALJ Lord agreed with Caterpillar.

According to ALJ Lord, prior ITC precedence “does not impose requirements on how or when [domestic industry products] must be sold.” She indicated that respondent’s reliance on Certain Non-Volatile Memory Devices and Products Containing the Same, Inv. No. 337-TA-1046 was misplaced because, in that investigation, the article “was only used for research and was not likely to ever be sold.” In contrast, ALJ Lord indicated that in this investigation “[a]lthough no specific product was sold by the time of the complaint, Caterpillar has placed its PM300 series cold planers in the marketplace, making the existence of these machines public and declaring that these products would be sold.” She further indicated that “[t]his interpretation of the term “article” in section 337(a)(2) is consistent with the use of the term “article” in other parts of the statute.”

Takeaway

This decision highlights that complainants do not need to wait until domestic industry products are sold before filing a complaint at the ITC. In some circumstances, it may be appropriate to file a complaint even before any sales have occurred. Respondents should note that, while ALJ Lord’s decision did not require an actual sale, it did require certain activities that indicated a sale was forthcoming.

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Dave Maiorana is a trial lawyer with a notable combination of significant experience as a USPTO examiner along with 20 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the ITC. Dave has experience in diverse technology areas, including teeth whitening, diapers, fem care products, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.