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Federal Circuit: ITC Did Not Err In Finding Violation of Section 337
On Jan. 19, 2024, a Federal Circuit panel of Judges Dyk, Hughes, and Stoll found in an opinion authored by Judge Hughes that the International Trade Commission did not err in affirming the administrative law judge's finding that Roku, Inc. violated 19 U.S.C. §1337 (Section 337). Roku, Inc., v. ITC, Case No. 22-1386. The case was initiated when Universal Electronics Inc. filed a complaint with the ITC alleging that Roku imported TV products that infringed Universal's U.S. Patent No. 10,593,196 (the '196 patent). The Commission upheld the administrative law judge's finding that Roku violated Section 337 by importing infringing TV products, specifically finding that: 1) Universal had ownership rights over the '196 patent; 2) Universal satisfied the economic prong of the domestic industry requirement under Section 337; and 3) Roku failed to show that the '196 was obvious. Slip Op. at 1. The Federal Circuit reviewed these three findings.
First, the Federal Circuit affirmed the Commission's finding that an agreement made in 2012 conveyed rights to the '196 patent to Universal. Id. at 10. This finding was not challenged by Roku. Id.
Second, the Federal Circuit affirmed that Universal met the domestic industry requirement of Section 337. In order to satisfy the economic prong of the domestic industry requirement of Section 337, a complainant must show they have an economic domestic industry under one of 19 U.S.C. §1337(a)(3)(A)–(C). Universal asserted economic domestic industry under paragraph (C), which states there is an industry in the United States if there is substantial investment in the intellectual property at issue. Universal asserted that it satisfied this requirement through research and development of its technology "Quickset," which they alleged practiced the '196 patent. Id.at 5. The '196 patent claims a device that connects different types of media devices, such as a DVD player and a television. The Commission affirmed the administrative judge's finding that because QuickSet involves software that results in practicing '196 patent and because Universal's R&D in QuickSet was directed to enabling it to practice the '196 patent, Universal satisfied the domestic industry requirement. Id. at 11. The Federal Circuit affirmed this finding. Id.
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