NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

KOKI HOLDINGS AMERICA LTD.,

Appellant

v.

INTERNATIONAL TRADE COMMISSION,

Appellee

KYOCERA SENCO INDUSTRIAL TOOLS INC.,

Intervenor

______________________ 

2022-2006

______________________ 

Appeal from the United States International Trade 

Commission in Investigation No. 337-TA-1082.

______________________ 

Decided: August 28, 2024

______________________ 

AMOL A. PARIKH, McDermott Will & Emery, Chicago, 

IL, argued for appellant. Also represented by PAUL 

DEVINSKY, ALEXANDER OTT, JAY REIZISS, Washington, DC. 

 BENJAMIN S. RICHARDS, Office of the General Counsel, 

United States International Trade Commission, Washington, DC, argued for appellee. Also represented by DOMINIC 

L. BIANCHI, WAYNE W. HERRINGTON, PANYIN HUGHES,

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2 KOKI HOLDINGS AMERICA LTD. v. ITC

HOUDA MORAD, SIDNEY A. ROSENZWEIG. 

 DANIEL SHULMAN, Vedder Price PC, Chicago, IL, argued for intervenor. Also represented by JOHN K. BURKE,

ROBERT STEPHAN RIGG. 

______________________ 

Before MOORE, Chief Judge, CUNNINGHAM, Circuit Judge,

and MAZZANT, District Judge.1

MOORE, Chief Judge. 

Koki Holdings America Ltd. (Koki) appeals the decision 

of the United States International Trade Commission 

(Commission) terminating its investigation based on the 

withdrawal of the complaint by the complainant, Kyocera 

Senco Industrial Tools Inc. (Kyocera). Because Koki has 

failed to establish an injury in fact sufficient to confer 

standing to appeal, we dismiss.

BACKGROUND

In 2017, Kyocera filed a complaint with the Commission alleging Koki was violating 19 U.S.C. § 1337 (Section 

337) by importing gas spring nailer products that infringe, 

or were made using methods that infringe, certain claims 

across five Kyocera patents. The Commission instituted an 

investigation to determine whether Koki was violating Section 337. In re Certain Gas Spring Nailer Prods. & Components Thereof, 82 Fed. Reg. 55118–19 (Nov. 20, 2017). In 

March 2020, the Commission found a violation of Section 

337 based on infringement of the asserted claims of one patent. The Commission issued an exclusion order prohibiting the entry of the infringing products and a cease and 

desist order prohibiting certain conduct ancillary to the 

1 Honorable Amos L. Mazzant, III, District Judge, 

United States District Court for the Eastern District of 

Texas, sitting by designation.

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KOKI HOLDINGS AMERICA LTD. v. ITC 3

importation of the infringing products. J.A. 331–34. Both 

parties appealed the determination. 

While the appeal was pending, Koki requested a ruling 

that the redesigned version of its products do not infringe. 

In June 2020, United States Customs and Border Protection (Customs) found the redesigned products do not infringe and allowed them entry into the United States. J.A. 

4107–08. Kyocera disagreed with the determination and 

sought a decision from the Commission. The Commission 

instituted a modification proceeding on the redesigned 

products2 and reached the same conclusion as Customs. 

J.A. 480–81. Kyocera did not appeal that determination. 

In January 2022, we vacated and remanded the Commission’s March 2020 determination on the original products. Kyocera Senco Indus. Tools Inc. v. Int’l Trade 

Comm’n, 22 F.4th 1369 (Fed. Cir. 2022). We reversed two 

claim constructions and concluded the Commission’s Administrative Law Judge (ALJ) abused his discretion by admitting unqualified expert testimony for issues analyzed 

through the lens of an ordinarily skilled artisan. Id. at 

1377–78, 1380–83.

On remand, the Commission sought briefing from the 

parties to determine the appropriate proceedings in view of 

the vacatur and remand. The parties agreed the Commission’s remedial orders had to be rescinded. Kyocera voluntarily moved to terminate the investigation by 

withdrawing its complaint. J.A. 498–503, 505–08. Koki 

argued the Commission should continue proceedings to 

2 Koki petitioned this court for mandamus, arguing 

the Commission lacked authority to institute a modification proceeding over the redesigned products. In re Koki 

Holdings Am. Ltd., 830 F. App’x 320 (Fed. Cir. Nov. 25, 

2020). We denied the petition for mandamus. Id. at 322–

23.

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4 KOKI HOLDINGS AMERICA LTD. v. ITC

make findings of noninfringement based on the record. 

J.A. 512–17. Koki opposed Kyocera’s motion to terminate 

the proceedings. J.A. 529–32. The Commission granted 

Kyocera’s motion to terminate based on the withdrawal of 

the complaint. J.A. 1–3.

Koki appeals, challenging the Commission’s statutory 

authority to terminate the investigation without determining whether there was a violation of Section 337.

DISCUSSION

Article III of the U.S. Constitution limits our jurisdiction to “Cases” or “Controversies.” U.S. Const. art. III, § 2, 

cl. 1. To establish a case or controversy, a party invoking 

federal jurisdiction must meet “the irreducible constitutional minimum of standing.” Lujan v. Defs. of Wildlife, 

504 U.S. 555, 560 (1992). An appellant must have “(1) suffered an injury in fact, (2) that is fairly traceable to the 

challenged conduct of the defendant, and (3) that is likely 

to be redressed by a favorable judicial decision.” Spokeo, 

Inc. v. Robins, 578 U.S. 330, 338 (2016). To establish injury 

in fact, an appellant must show it has “suffered ‘an invasion of a legally protected interest’ that is ‘concrete and particularized’ and ‘actual or imminent, not conjectural or 

hypothetical.’” Id. at 339 (quoting Lujan, 504 U.S. at 560).

“Article III standing is not necessarily a requirement 

to appeal before an administrative agency.” Consumer 

Watchdog v. Wis. Alumni Rsch. Found., 753 F.3d 1258, 

1261 (Fed. Cir. 2014). “[A]n appellant must nevertheless 

supply the requisite proof of an injury in fact when it seeks 

review of an agency’s final action in federal court.” Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1171–72 (Fed. 

Cir. 2017). As the party seeking judicial review, Koki bears 

the burden of establishing standing. Id. at 1171.

Koki asserts it has standing to appeal because of the 

alleged harm caused by the Commission’s decision terminating the investigation. Appellant Br. 6. Specifically, 

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KOKI HOLDINGS AMERICA LTD. v. ITC 5

Koki argues it suffered an injury in fact when the Commission did not reach a determination on whether Koki violated Section 337. Appellant Br. 9–10. Koki contends a 

determination would have had preclusive effect in future 

investigations at the Commission. Without a preclusive 

determination, Koki argues Kyocera is free to seek, and the 

Commission is free to institute, a second investigation 

based on the same allegations.

Koki’s alleged injury is based on its concerns of a future 

litigation. But these concerns are unfounded. In an email 

exchange between the parties, Kyocera expressly stated: 

“Kyocera Senco reserves the right to bring a further ITC 

action against future products that Koki may attempt to 

import, but is not now, or ever, going to bring an action in 

the ITC again on either the original products accused in 

337-TA-1082 or the modified tools that were subject of the 

modification proceeding.” Commission Reply Brief in support of its Motion to Dismiss, Dkt. No. 16, Ex. 1 (emphasis 

original). Kyocera characterizes this representation as a 

covenant not to sue. Intervenor Br. 5–7. Kyocera reiterated its covenant not to sue in an email to Koki after the 

opening brief was filed and in its intervenor brief. J.A. 

4110; Intervenor Br. at 5–7, 21–24. 

At oral argument, Koki suggested the covenant is ambiguous as to whether it covers the original product or the 

original product design. Oral Arg. at 1:45–2:35, available 

at https://oralarguments.cafc.uscourts.gov/default.aspx?fl=

22-2006_07092024.mp3. Referencing the parties’ prior 

email exchange, Koki explained that it understood the covenant to only cover prior shipments of the original products, but not ongoing or future shipments of the original 

products. Id. at 4:16–5:53 (citing J.A. 4109 (“[W]e understand you to be saying that Kyocera does not plan to file a 

Section 337 complaint premised on prior shipments of the 

original products, but reserves the right to file a Section 337 complaint premised on ongoing and future shipments of the original products.”)). In response, Kyocera 

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6 KOKI HOLDINGS AMERICA LTD. v. ITC

made clear that its covenant covers any new shipments of 

products with the original product design. Oral Arg. at 

19:33–21:01. Kyocera reserved the right to enforce its patents for any future products that are different from the 

original product design. Id. 

Kyocera made a clear, unequivocal statement that it 

will not sue Koki for its original or modified products,

which divests us of jurisdiction. Dow Jones & Co. v. Ablaise 

Ltd., 606 F.3d 1338, 1348 (Fed. Cir. 2010) (“The covenant 

[not to sue] therefore extinguished any current or future 

case or controversy between the parties, and divested the 

[federal] court of subject matter jurisdiction.”). Kyocera’s 

covenant not to sue renders moot any controversy between 

the parties. Already, LLC v. Nike, Inc., 568 U.S. 85, 100 

(2013) (holding trademark holder’s covenant not to sue the 

alleged infringer defeated declaratory judgment jurisdiction). The threat of future litigation for the original or modified products no longer exists, and thus there is no case or 

controversy between the parties with respect to the Commission’s investigation.

Koki did not otherwise submit any evidence to demonstrate an injury in fact. We therefore conclude Koki has

failed to meet its burden to establish standing.

CONCLUSION

For these reasons, we conclude Koki has failed to establish an injury in fact sufficient to confer Article III 

standing. We dismiss the appeal. 

DISMISSED

COSTS

No costs.

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