Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Hyosung TNS Inc. v. International Trade Commission

ITC “Economic Prong” Analysis May Rely on Investments Years Before Complaint

Hyosung TNS Inc. v. International Trade Commission, __ F.3d __, 2019 WL 2495499 (Fed. Cir. June 17, 2019) (DYK, Clevenger, O’Malley) (ITC) (3 of 5 stars)

Fed Cir affirms finding of section 337 violation as to one patent, vacates for mootness as to a second. Complainant Diebold Nixdorf, Inc.’s patents are directed to automatic teller machines (“ATMs”). One of these patents expired while the case was on appeal, and Hyosong’s appeal is to that extent moot. The opinion rejects Diebold’s argument that there is no mootness because Hyosung imported redesigned products during the pre-expiration period, for which Diebold might pursue “future enforcement proceedings.” Because Diebold had not pursued such proceedings in the two+ years since Customs ruled Hyosung’s redesign noninfringing, the opinion finds Diebold’s argument for non-mootness “overly speculative” and rejects it per Clapper, 568 U.S. 398 (2013), and United Transportation Union, 891 F.2d 908 (D.C. Cir. 1989). It notes that ITC determinations do not have claim or issue preclusive effect even if affirmed.

As to Diebold’s second patent, the ITC did not commit reversible error in rejecting Hysosung’s invalidity attack. The opinion is “skeptical that the ITC applied the correct motivation to combine analysis,” Op. at 11, but does not reach that issue because it finds no error in the ITC’s determination that the combination rendered the claims obvious, and describes how the record supported the ITC. The evidence also supported the ITC’s determination that Diebold had satisfied the economic prong of section 337’s domestic industry requirement. The ITC did not err in relying “primarily on multi-million-dollar investments between 2005 and 2010” (Diebold’s ITC complaint was in 2015) as “a substantial investment with a nexus to ongoing field expenses in field service and assembly for the ATM’s containing [a key module] . . . .” Op. at 14. “We see no legal error in the ITC’s conclusion that a past investment may, by virtue of its connection to ongoing field service and assembly expenses, support a finding that the economic prong of the domestic industry requirement has been met.” Id. at 14–15.

KEYWORDS: INTERNATIONAL TRADE COMMISSION; ECONOMIC PRONG; DOMESTIC INDUSTRY