An Initial Determination (ID) by Administrative Law Judge Mary Joan McNamara allows patent owner and non-practicing entity (NPE) Silicon Genesis Corporation (“SiGen”) to rely on the domestic activities of its licensee SunEdison Semiconductor Limited (“SunEdison”) to satisfy the economic prong of the ITC’s domestic industry requirement for establishing a violation under Section 337.

The ITC investigation, Certain Silicon-On-Insulator Wafers, Inv. No. 337-TA-1025, was instituted Oct. 19, 2016, based on a complaint filed by SiGen on May 26, 2016. The complainant seeks an injunction against French firm Soitec, S.A., on grounds the company violated Section 337 by importing certain silicon-on-insulator wafers that allegedly infringe one or more claims of U.S. Patent Nos. 6,458,672 and 6,171,965.

ALJ McNamara conducted a hearing under the ITC’s early disposition pilot program to make a quick determination on whether the domestic industry requirement was satisfied. Soitec argued that SunEdison should have been a co-complainant in the investigation because SiGen is an NPE and has no domestic industry of its own. However, ALJ McNamara noted the Commission has held that “the domestic industry inquiry under Section 337 is not limited to the activities of the patent holder, but also involves the activities of any licensees.”

In the ID’s conclusion, ALJ McNamara found that through SunEdison, SiGen “has established contingently by a preponderance of evidence the economic prong of the domestic industry requirement,” which generally requires domestic investments in products protected by the patent. She delayed making findings with respect to the technical prong of the domestic industry requirement, which will require SiGen to prove that its licensee [SunEdison] practices at least one claim of each of the asserted patents. Soitec also countered that SiGen could not claim SunEdison as a licensee because of SunEdison’s acquisition by GlobalWafers Co. Ltd. several months after the ITC complaint was filed, but ALJ McNamara said SiGen still had standing. “The Commission has held that typically, the appropriate date for determining whether a domestic industry exists or is being established is the date of the filing of the complaint.”