In INVT SPE LLC v. International Trade Commission, No. 2020-1903 (Fed. Cir. Aug. 31, 2022), the Federal Circuit affirmed the International Trade Commission’s (“ITC”) determination that the respondents did not violate 19 U.S.C. § 1337.

INVT alleged that the importation and sale of LTE-compliant personal electronic devices infringed U.S. Patent Nos. 6,760,590 (“the ’590 patent”) and 7,848,439 (“the ’439 patent”). The ITC determined that the asserted claims were not essential to the LTE standard and that the accused products did not infringe the asserted claims.

The Federal Circuit affirmed the ITC’s determination with respect to the ’439 patent. First, the Court found that INVT had failed to establish infringement of the asserted claims. The Court acknowledged that the asserted claims only required that a device be capable of performing the claimed functions but found that INVT had failed to show the accused devices performed the claimed functions when put into operation. Second, the Court found that the asserted claims were not standard essential because not every LTE-compliant compliant device performed the claimed functions. With respect to the ’590 patent, the Federal Circuit held that the appeal was moot because the ’590 patent had expired, and the ITC can only grant prospective relief.