On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 26 (dated March 26, 2009) in Certain Video Games and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied complainant Hillcrest Laboratories, Inc.’s (“Hillcrest”) motion for summary determination that Hillcrest’s licensing activities in the United States satisfy the domestic industry (economic prong) requirement of 19 U.S.C.§ 1337(a)(3)(C).

Section 337(a)(3)(C) provides for a domestic industry based on “substantial investment” in certain activities, including licensing of a patent.  Hillcrest sought summary determination that its licensing activities satisfied the domestic industry requirement because of its investments in negotiating licenses.  Hillcrest relied on the assertions of one of its own officers in an attempt to prove its contentions.

Respondents Nintendo Co., Ltd. and Nintendo of America, Inc. (“Respondents”) argued that the motion should be denied, as did the Commission Investigative Staff.  The Staff argued that there were genuine issues of fact as to whether all of Hillcrest’s investments in negotiating licenses could be used to satisfy the domestic industry requirement, as section 337(a)(3)(C) requires that “the activities of engineering, research and development and licensing are actually related to the asserted intellectual property right.”

Viewing the evidence in the light most favorable to Respondents, ALJ Luckern determined that there were genuine issues of fact as to whether Hillcrest’s licensing activities satisfied the domestic industry requirement, and denied Hillcrest’s motion.