By Eric Schweibenz
On July 27, 2009, Chief ALJ Paul J. Luckern issued the heavily redacted public version of Order No. 42 (dated March 10, 2009) granting Complainants InterDigital Communications, LLC and InterDigital Technology Corp.’s (“InterDigital”) motion for summary determination that InterDigital’s U.S. licensing activities satisfy the domestic industry requirements of 19 U.S.C. § 1337(a)(3)(C) in Certain 3G Mobile Handsets and Components Thereof (Inv. No. 337-TA-613).

Respondents Nokia Inc. and Nokia Corporation (“Nokia”) opposed InterDigital’s summary determination motion on the basis that (1) the technical prong requires the existence of an article protected by the asserted patents; (2) InterDigital failed to demonstrate a nexus between the asserted patents and its licensing program; (3) a broad licensing program cannot satisfy the nexus requirement; (4) InterDigital failed to show that the asserted patents were important to its licensing program; (5) genuine issues of material fact existed as to whether InterDigital’s investments are substantial as required by section 337; and (6) InterDigital’s purported investment total includes activities beyond the asserted patents, such as licensing of other technology and activities prior to the issuance of the asserted patents.  According to the Order, the Commission Investigative Staff did not oppose InterDigital’s summary determination motion in view of ALJ Luckern’s Order No. 20 in Certain 3G Wideband Code Division Multiple Access (WCDMA) Handsets (Inv. No. 337-TA-601), which was adopted by the Commission, granting a motion for summary determination that a domestic industry can be established based solely on licensing activities. 

In the Order, ALJ Luckern rejected Nokia’s arguments and determined that “a complainant is not required to show that it or one of its licensees practices a patent-in-suit in order to find that a domestic industry exists [under section 337].”  ALJ Luckern also held that InterDigital’s broad licensing program was sufficiently connected to the asserted patents in order to satisfy the domestic industry requirement.  Regarding Nokia’s argument that InterDigital was required to demonstrate that the asserted patents were important to its licensing program in order to establish a domestic industry, ALJ Luckern noted that this argument stemmed from language in a footnote in Order No. 13 in Certain Semiconductor Chips with Minimized Chip Package Size (Inv. No. 337-TA-432).  ALJ Luckern determined, however, that nothing in the footnote “suggests that showing ‘importance’ is the only way to satisfy the domestic industry requirement when portfolio licensing activities are involved, or that there was any particular way to demonstrate ‘importance.’”  ALJ Luckern further determined that there is “no Commission precedent that requires a complainant to establish that each of the asserted patents is more ‘important’ than any others in the portfolio, so long as the licensing activities are substantial and connected to the asserted patents.”