On October 3, 2013, in Microsoft v. Int’l Trade Comm’n, 2012-1445,-1535, the Federal Circuit upheld a Commission decision that Microsoft failed to prove a domestic industry existed for products protected by two of its asserted patents, because it did not establish that its substantial domestic industry investments in research and development relate to an actual article protected by the patent. The Federal Circuit noted that “[t]here is no question about the substantiality of Microsoft’s investment in its operating system or about the importance of that operating system to mobile phones on which it runs.” But the Federal Circuit cautioned that “Section 337, though not requiring that an article protected by the patent be produced in the United States, unmistakenly requires that the domestic company’s substantial investments relate to actual ‘articles protected by the patent.’ 19 U.S.C. §§1337(a)(2), (3).” Citing to its earlier decision in InterDigital v. Int’l Trade Comm’n, 707 F.3d 1295, 1299, 1304 (Fed. Cir. 2013), the Federal Circuit emphasized that a company seeking Section 337 protection “must therefore provide evidence that its substantial domestic investment – e.g., in research and development – relates to an actual article that practices the patent regardless of whether or not that article is manufactured domestically or abroad.” Microsoft failed to meet this requirement by not showing that any Microsoft supported products actually practiced the patents.
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