Motiva, LLC v. International Trade Commission and Nintendo Company, Ltd. and Nintendo of America, Inc., Intervenors

Motiva, LLC (plaintiff) owned the ’151 and ’268 patents. The ’151 patent related to a system for training a user to manipulate transponders through interactive and sensory feedback for exercise and physical-rehabilitation purposes. The ’268 patent related to the same system. Over the course of four years, Motiva made substantial investments in commercializing the patents but ended the activities before producing a final product. Motiva had one prototype of its system, but the device had exposed circuit boards, wiring, and sensors. The devices also required contracts, beta and compliance testing, and final product and packaging design. One year after ending its significant commercialization efforts, Motiva filed suit against the Nintendo Company, Ltd., and Nintendo of America, Inc. (collectively, Nintendo) (defendants) for allegedly infringing the ’151 and ’268 patents with the Wii video-game system. Internal emails indicated that the lawsuit was motivated by financial gain. A district court stayed the case pending a reexamination of the patents by the United States Patent and Trademark Office. Motiva also submitted a complaint with the International Trade Commission (commission) (defendant) stating that the Wii infringed the ’151 and ’268 patents and that Nintendo’s importation and sale of the Wii in the United States violated § 337 of the Tariff Act of 1930. Nintendo filed for summary determination with the administrative-law judge (ALJ), arguing that Motiva did not satisfy the domestic-industry requirement of § 337. The ALJ agreed, finding that Motiva’s only current activity related to commercializing the patents was the Nintendo litigation and that absent other activity, Motiva did not satisfy the requirement. Nintendo appealed to the commission, which vacated the ALJ’s summary determination and remanded the case for additional fact-finding. The ALJ ruled in favor of Nintendo, and the commission did the same on appeal. Motiva appealed the commission’s final decision to the United States Court of Appeals for the Federal Circuit.