Zircon Corp. v. Int’l Trade Comm’n
Authored by: Jeremy J. Gustrowsky
A recent decision highlights the importance of how patent owners present evidence when seeking relief at the International Trade Commission (ITC). In a dispute over electronic stud finders, Zircon Corp. accused Stanley Black & Decker and Black & Decker (U.S.) Inc. of importing products that infringed three of its patents: U.S. Patent No. 6,989,662, U.S. Patent No. 8,604,771, and U.S. Patent No. 9,475,185. To win at the ITC, however, it’s not enough to simply prove infringement—patent owners must also show that there is a significant domestic industry in the United States that relates to the specific patented articles.
Zircon tried to meet this requirement by adding up all its investments in plant, equipment, labor, and research across 53 different stud finder products, even though not all of those products were covered by all three patents. The ITC and the Federal Circuit found this approach lacking. The law requires that a patent owner show its investments are tied to the products protected by each specific patent being asserted. By lumping together investments for products that practiced different patents, Zircon made it impossible for the ITC to determine whether there was a significant domestic industry for any one patent.
The court explained that while it’s sometimes acceptable to group products together if they all practice the same patent, when products only partially overlap in patent coverage, the patent owner must break down its investments by patent or by groups of products that share the same patent coverage. In this case, Zircon failed to do so, and the court affirmed the ITC’s decision that Zircon had not met its burden. The court also rejected Zircon’s attempt to rely on a company executive’s unsubstantiated estimate of research spending, noting that such testimony needs to be supported by documentation or a clear explanation.
This decision serves as a reminder: when bringing a patent case at the ITC, it’s crucial to present clear, well-supported evidence that ties your U.S. investments directly to the specific patents you’re asserting. Generalized or aggregated numbers won’t suffice if your products don’t all practice the same patents.