Hyosung TNS Inc. v. Int'l Trade Comm'n

Summary

The Federal Circuit held that an appeal from an ITC exclusion order became moot after the patent expired, dismissing that portion and vacating the ITC's decision due to the lack of collateral consequences or claim preclusive effect in co-pending district court litigation. The court affirmed the ITC's finding that the asserted claims of the remaining patent were not obvious, as the accused infringer failed to show that the prior art combination taught reading MICR data regardless of the check’s facing position. Additionally, the court upheld the ITC's determination that the domestic industry requirement was satisfied, ruling that past multi-million-dollar R&D investments may support the economic prong when connected to ongoing qualifying expenditures, and rejecting a bright-line temporal limit on such investments.

Holdings

1. The appeal as to the '616 patent is moot because the patent expired and there is no evidence of past violations or plausible future enforcement.
2. Substantial evidence supports the ITC's conclusion that the prior art combination did not satisfy the 'regardless of facing position' limitation, and Hyosung failed to show obviousness.
3. The ITC did not err; past R&D investments connected to ongoing expenses can satisfy the economic prong, and substantial evidence supports the finding.

Questions Presented

1. Whether the appeal as to the '616 patent is moot due to patent expiration.
2. Whether the ITC erred in finding that Hyosung failed to show the '631 patent claims were invalid as obvious.
3. Whether the ITC erred in finding that the domestic industry requirement was satisfied for the '631 patent.

Disposition

affirmed in part, vacated in part, dismissed in part, and remanded