United States Court of Appeals 

for the Federal Circuit ______________________ 

MOTIVA, LLC,

Appellant, 

v.

INTERNATIONAL TRADE COMMISSION,

Appellee, 

AND

NINTENDO CO., LTD., AND

NINTENDO OF AMERICA, INC.,

Intervenors. 

______________________ 

2012-1252

______________________ 

Appeal from the United States International Trade 

Commission in Investigation No. 337-TA-743. 

______________________ 

Decided: May 13, 2013

______________________ 

 CHRISTOPHER D. BANYS, The Lanier Law Firm, of Palo 

Alto, California, argued for appellant. 

 CLARK S. CHENEY, Attorney, Office of General Counsel, United States International Trade Commission, of 

Washington, DC, argued for appellee. With him on the 
2 MOTIVA, LLC v. ITC

brief were DOMINIC BIANCHI, Acting General Counsel, and 

WAYNE W. HERRINGTON, Assistant General Counsel. Of 

counsel was JAMES M. LYONS. 

 MARK S. DAVIES, Orrick, Herrington & Sutcliffe LLP, 

of Washington, DC, argued for intervenors. With him on 

the brief was KATHERINE M. KOPP. Of counsel on the brief 

were E. JOSHUA ROSENKRANZ, PETER A. BICKS and ALEX V.

CHACHKES, of New York, New York, and JOSEPH S.

PRESTA and ROBERT W. FARIS, Nixon & Vanderhye, P.C., 

of Arlington, Virginia. 

______________________ 

Before NEWMAN, PROST, and O'MALLEY, Circuit Judges.

PROST, Circuit Judge.

Motiva, LLC (“Motiva”) appeals the decision of the International Trade Commission (“Commission”) that 

Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively “Nintendo”) did not violate § 337 of the Tariff Act of 

1930 by importing, selling for importation, or selling 

certain video game systems and controllers. Because the 

Commission properly determined that a domestic industry does not exist nor is in the process of being established 

for U.S. Patent Nos. 7,292,151 (“’151 patent”) and 

7,492,268 (“’268 patent”), we affirm. 

I. BACKGROUND

Motiva owns the ’151 and ’268 patents. The ’151 

patent issued in November 2007 and is titled “Human 

Movement Measurement System.” It generally relates to 

a “system for . . . testing and training a user to manipulate the position of . . . transponders while being guided 

by interactive and sensory feedback . . . for the purpose of 

functional movement assessment for exercise and physical 

rehabilitation.” ’151 patent abstract. The ’268 patent 

issued in February 2009 and was a continuation of the 
 MOTIVA, LLC v. ITC 3

application for the ’151. It generally relates to the same 

subject matter as the ’151 patent. 

In 2008, Motiva filed suit against Nintendo in the 

United States District Court for the Eastern District of 

Texas accusing Nintendo’s Wii video game system (“Wii”) 

of infringing the ’151 patent. The case was later transferred to the United States District Court for the Western 

District of Washington. In June 2010, that district court 

stayed the case pending completion of reexamination of 

the ’151 patent by the U.S. Patent and Trademark Office. 

Subsequent to the stay order, in September 2010, 

Motiva filed its complaint with the Commission that gave 

rise to this appeal.1 Motiva asserted that the Wii infringed the ’151 and ’268 patents and, therefore, that

Nintendo’s importation into, selling for importation into, 

and selling of the Wii in the United States violated Section 337 of the Tariff Act of 1930. Based on Motiva’s 

complaint, the Commission initiated an investigation into 

whether Nintendo had violated Section 337. 

Shortly after the Commission began its investigation, 

Nintendo moved for summary determination that the 

domestic industry requirement of Section 337 was not 

satisfied at the time Motiva filed its complaint with the 

Commission. Under Section 337, it is unlawful to import 

articles that infringe a valid and enforceable United 

States patent if “an industry in the United States, relating to the articles protected by the patent . . . exists or is 

in the process of being established.” 19 U.S.C. 

§ 1337(a)(2). Section 337 details how that domestic 

industry requirement can be satisfied. 

1 After the complaint was filed, the district court 

granted a second stay pending resolution of the Commission’s investigation and all appeals.

 
4 MOTIVA, LLC v. ITC

[A]n industry in the United States shall be considered to exist if there is in the United States, 

with respect to the articles protected by the patent, copyright, trademark, mask work, or design 

concerned— 

(A) significant investment in plant and equipment;

(B) significant employment of labor or capital; or

(C) substantial investment in its exploitation, including engineering, research and development, or 

licensing.

19 U.S.C. § 1337(a)(3).

Nintendo argued that Motiva’s domestic activities 

failed to satisfy any of those requirements. According to 

Nintendo, there were no commercialized products incorporating Motiva’s patented technology, and Motiva’s 

activity aimed at developing a domestic industry for 

articles protected by the asserted patents consisted solely 

of the district court litigation against Nintendo. Nintendo 

asserted that litigation was not a significant or substantial investment that could satisfy the domestic industry 

requirement. 

In February 2011, the administrative law judge 

(“ALJ”) granted Nintendo’s motion. The ALJ agreed that 

the patent litigation suit against Nintendo was Motiva’s 

only activity that could be related to commercializing the 

technology covered by the ’151 and ’268 patents at the 

time the complaint was filed. That activity, as the ALJ 

saw it, was insufficient to satisfy the domestic industry 

requirement because it was not adequately directed 

toward licensing activities related to the practical application of the patents’ claimed inventions. The ALJ also 

found that Motiva was not engaged in any licensing 

activities: Motiva never offered to license, never received 
 MOTIVA, LLC v. ITC 5

a request to license, and never in fact licensed either the 

’151 patent or the ’268 patent. 

On appeal, the Commission vacated the ALJ’s summary determination and remanded for additional fact 

finding regarding Motiva’s activities related to developing 

a domestic industry for the technology covered by the 

patents. It found that a genuine issue of material fact 

existed regarding whether Motiva’s litigation efforts 

were—as Motiva claimed—adequate “to facilitate and 

hasten the practical application of the inventions of the 

patents at issue.” J.A. 7866. According to the Commission, litigation could be relevant in a licensing effort 

directed at “encouraging adoption and development of the 

[patented] technology by bringing a product to market” 

and protecting the ability of a patentee to derive revenues 

from patented technology by engaging “potential manufacturers, investors, and licensees who were not already 

involved in existing production.” Id. The Commission 

directed the ALJ to further explore the relationship of the

Wii to Motiva’s licensing efforts, determine how production-ready Motiva’s technology was, and examine how 

Motiva’s litigation related to its commercialization of the 

patented technology. 

In November 2011, after briefing and a five-day 

evidentiary hearing, the ALJ once again ruled that Motiva had not shown that the economic prong of the domestic 

industry requirement of Section 337 was satisfied.2 The 

2 The ALJ also held that the Wii did not infringe either of the asserted patents—a determination that Motiva 

challenges on appeal. Because that decision is not binding precedent and we affirm on other grounds, we need 

not—and decline to—reach its merits. Other decisions of 

the ALJ, including those regarding inequitable conduct, 

the technical prong of the industry requirement, and 

various invalidity defenses are not raised on appeal.

 
6 MOTIVA, LLC v. ITC

ALJ concluded that Motiva likely made substantial investments from 2003 to 2007 to commercialize the patented technology but ended those activities by January 2007 

before a final product was ever produced or ever “close to 

being produced.” Motiva’s old development activities were 

“far too remote to be considered for purposes of demonstrating that a domestic industry exists.” J.A. 7826. 

Thus, the ALJ found that Motiva had to rely on the district court litigation against Nintendo as its only evidence 

of an investment that would satisfy the domestic industry 

requirement. 

According to Motiva, that litigation against Nintendo 

was “a necessary step to preserve and hasten [its] licensing opportunities, which would otherwise remain completely curtailed by the Wii’s infringing presence on the 

market.” J.A. 7830 (internal quotation marks omitted). 

As Motiva saw it, once Nintendo was forced to license its 

patents or leave the market for video-game-based motion 

tracking systems, potential partners would be willing to 

invest in and license Motiva’s patented technology. It 

believed that the costs of litigation against Nintendo

were, therefore, a substantial investment adequate to 

satisfy the economic prong of the domestic industry requirement. However, based on the testimony of witnesses 

and documentary evidence, the ALJ disagreed. 

 The ALJ found that the litigation costs related to the 

district court proceedings were not relevant to the domestic industry analysis because the litigation itself was not 

“in any way related to the exploitation of the patents.”3 

J.A. 7831. The ALJ concluded that the Wii had no effect 

on Motiva’s attempt to create a market for the patented 

technology. Regardless of the Wii, Motiva’s patented 

technology, according to the ALJ, was not even close to 

3 The ALJ also noted that the ’268 patent was never asserted against Nintendo in district court. 

 
 MOTIVA, LLC v. ITC 7

being “production-ready” at any point. J.A. 7820. Motiva’s only remaining prototype of its patented technology 

had “exposed circuit boards, wiring, and sensors.” J.A. 

7819. And in its discovery responses, Motiva stated that, 

before the patented technology could be commercialized, 

contracts had to be obtained, the product had to go 

through final product and packaging design, and the 

product had to undergo beta, safety, and compliance 

testing. J.A. 7820. 

The ALJ further found that testimony of investors 

and potential investors demonstrated that there was no 

interest in Motiva’s technology prior to the release of the 

Wii: Motiva’s last partner withdrew in 2004 and no others 

since that point ever showed enough interest to even 

examine Motiva’s prototypes or patent applications. The 

only potential interest that the ALJ found to exist was 

directed at “excluding Nintendo from the market, not 

utilizing Motiva’s patent technology” in a product. J.A. 

7812. 

Moreover, according to the ALJ, the Wii would not 

even compete with Motiva’s potential products because 

they were in different markets. Motiva’s product was an 

“expensive tool” designed for “exercise, athletic performance training, and physical therapy and research.” J.A. 

7817-19. The Wii, though, was a “relatively inexpensive 

video game system for home consumers” that had games 

for exercising but would not “compete with the expensive 

and sophisticated fitness product envisioned by Motiva.” 

J.A. 7818-19. 

Thus, the ALJ reasoned that the presence of the 

Wii—and the possibility of its removal from the market by 

successful litigation—did not and would not affect Motiva’s attempts to commercialize its patented technology. 

The ALJ concluded that Motiva was not “concerned with 

taking swift actions to remove Nintendo from the market” 

through litigation; it was only interested in “extract[ing] a 
8 MOTIVA, LLC v. ITC

monetary award either through damages or a financial 

settlement.” J.A. 7823. The ALJ found support for this 

conclusion from emails between the inventors of the ’151 

patent discussing financial gains from litigation, Motiva’s 

decision not to seek immediate injunctive relief from the 

district court, and Motiva’s decision to delay filing a 

complaint with the Commission for more than three years

after the allegedly devastating launch of the Wii. The 

ALJ therefore found that Motiva failed to prove that an 

industry for its patented technology existed or was in the 

process of being established: there is “no reason to believe 

that manufacturers of fitness and rehabilitation equipment will suddenly become interested in the [patented] 

technology because Nintendo [is] excluded from the market.” 4 J.A. 7835.

On appeal, the Commission adopted the ALJ’s decision as its final determination on the investigation.5 It 

did not address the domestic industry holding in detail 

but did comment that the reliance on the filing date of the 

complaint to determine whether a domestic industry 

4 The ALJ also found that the size of Motiva’s investments in litigation were not substantial. Because of a 

contingency fee arrangement, Motiva had yet to pay “any 

attorneys’ fees or expenses related to Motiva’s litigation 

against Nintendo” and never had to pay those costs unless 

Motiva obtained a recovery as a result of the litigation. 

J.A. 7831. Because Motiva might never pay any fees for 

the litigation, its investment was too “speculative” according to the ALJ, and the value of the time Motiva employees spent on the litigation—approximately $17,000—was 

insignificant by itself. 

5 The Commission provided some minor clarifications and vacated one portion of the ALJ’s decision regarding invalidity. Those aspects of the Commission’s 

decision are not relevant to our disposition of the case. 

 
 MOTIVA, LLC v. ITC 9

existed under Section 337 was not erroneous “in the 

context of this investigation.” J.A. 7874. 

Motiva filed a timely appeal of the Commission’s 

decision. 

II. DISCUSSION

Although the question of whether the domestic industry requirement is satisfied presents issues of both law 

and fact, this appeal presents only factual issues which 

we review for substantial evidence. See John Mezzalingua Assocs. v. Int’l Trade Comm’n, 660 F.3d 1322, 1327 

(Fed. Cir. 2011). 

The Commission found—and Motiva does not dispute—that Motiva’s investments in developing a domestic 

industry for the ’151 and ’268 patents were limited after 

2007 to the litigation against Nintendo. Indeed, Motiva

argues on appeal that its investment in that litigation

satisfies the economic prong of the domestic industry 

requirement of Section 337. It asserts that removing the 

Wii from the market through litigation was essential to 

developing a successful “product-driven licensing business” that would encourage partners to develop and adopt 

its patented technology, which was “ready for a manufacturer to pick it up and incorporate it into a successful 

product.” Appellant’s Br. 44, 47.

Motiva’s investment in the litigation against Nintendo could indeed satisfy the economic prong of the domestic 

industry requirement if it was substantial and directed 

toward a licensing program that would encourage adoption and development of articles that incorporated Motiva’s patented technology. See InterDigital Commc’ns, 

LLC v. Int’l Trade Comm’n, 707 F.3d 1295, 1299 (Fed. Cir. 

2013) (clarifying that efforts directed toward licensing a 

patent can satisfy the domestic industry requirement 

where they would result in the production of “goods 

practicing the patents”); cf. John Mezzalingua, 660 F.3d 
10 MOTIVA, LLC v. ITC

at 1328-29 (discussing how the “Commission is fundamentally a trade forum, not an intellectual property forum” 

and holding that litigation expenses directed at preventing instead of encouraging manufacture of articles incorporating patented technology does not satisfy the 

domestic industry requirement of Section 337). 

 However, the ALJ found that Motiva’s litigation 

against Nintendo was not directed at developing such a 

licensing program. Relying on extensive documentary 

evidence and witness testimony, the ALJ concluded that 

the presence of the Wii in the market had no impact on 

Motiva’s commercialization efforts or ability to encourage 

partners to invest in and adopt its patented technology. 

And Motiva was never close to launching a product incorporating the patented technology—nor did any partners 

show any interest in doing so, for years before or any time 

after the launch of the Wii. Motiva’s only remaining

prototype was a product far from completion, and a multitude of development and testing steps remained prior to 

finalizing a product for production. Moreover, the evidence demonstrated that Motiva’s litigation was targeted 

at financial gains, not at encouraging adoption of Motiva’s 

patented technology. The inventors looked forward to 

financial gains through Motiva’s litigation, not hopes of 

stimulating investment or partnerships with manufacturers. Motiva also never asked for a preliminary injunction 

from the district court, and it waited three years before 

seeking relief from the Commission—even though the 

importation of the Wii was allegedly the only obstacle to 

adoption of its patented technology in the market.

Thus, on the record here, substantial evidence supports the Commission’s finding that Motiva’s litigation 

against Nintendo was not an investment in commercializing Motiva’s patented technology that would develop a 

licensing program to encourage adoption and development 

of articles that incorporated Motiva’s patented technology. 

See John Mezzalingua, 660 F.3d at 1328 (discussing how 
 MOTIVA, LLC v. ITC 11

litigation expenses should not automatically be considered 

a substantial investment in licensing, even where litigation leads to a license). There is simply no reasonable 

likelihood that, after successful litigation against Nintendo, Motiva’s patented technology would have been licensed by partners who would have incorporated it into 

“goods practicing the patents.” See InterDigital, 707 F.3d 

at 1299. 

III. CONCLUSION

 The ALJ thoroughly reviewed the evidence in this 

case, and the Commission adopted the ALJ’s conclusion 

that Motiva’s litigation activities did not satisfy the 

economic prong of the domestic industry requirement of 

Section 337. Because that determination is supported by 

substantial evidence, we affirm the Commission’s finding 

of no Section 337 violation.6 

6 We also affirm the Commission’s use of the date 

of the filing of Motiva’s complaint in this case as the 

relevant date at which to determine if the domestic industry requirement of Section 337 was satisfied. See Bally/Midway Mfg. v. U.S. Int’l Trade Comm’n, 714 F.2d 

117, 1120 (Fed. Cir. 1983) (holding that the date of filing 

of a complaint with the Commission was the appropriate 

date at which to analyze the existence of a domestic 

industry). Although Motiva may have been fully engaged 

in developing a domestic industry for its patented technology until early 2007, there is no evidence in the record 

relating that development activity to Motiva’s efforts to 

establish a domestic industry at the time Motiva chose to 

file its complaint three years later. As the ALJ reasonably found, Motiva’s old development activities did not 

result in production-ready technology that would have 

been incorporated into domestic goods practicing the 

patents through Motiva’s licensing activities in which it 

was engaged at the time it filed its complaint. Motiva 

 
12 MOTIVA, LLC v. ITC

AFFIRMED

simply has not shown that its old development activities 

contributed to a market that existed or was in the process 

of being created at the time of its complaint.