Koki Holdings America Ltd. v. International Trade Commission

N OTE: This disposition is nonprecedential.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. P ARIKH , McDermott Will & Emery, Chicago,
IL, argued for appellant. Also represented by P AUL
D EVINSKY , ALEXANDER O TT , J AY REIZISS , Washington, DC.
BENJAMIN S. RICHARDS , Office of the General Counsel,
United States International Trade Commission, Washing-
ton, DC, argued for appellee. Also represented by D OMINIC
L. BIANCHI, WAYNE W. HERRINGTON, P ANYIN H UGHES ,
Case: 22-2006 Document: 81 Page: 1 Filed: 08/28/2024

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KOKI HOLDINGS AMERICA LTD. v. ITC 2
HOUDA MORAD, SIDNEY A. ROSENZWEIG.
D ANIEL SHULMAN , Vedder Price PC, Chicago, IL, ar-
gued for intervenor. Also represented by J OHN K. B URKE,
ROBERT STEPHAN RIGG.
______________________
Before M OORE, 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 Commis-
sion 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 Sec-
tion 337. In re Certain Gas Spring Nailer Prods. & Com-
ponents 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 pa-
tent. The Commission issued an exclusion order prohibit-
ing 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 Protec-
tion (Customs) found the redesigned products do not in-
fringe 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 Com-
mission’s March 2020 determination on the original prod-
ucts. 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 Ad-
ministrative Law Judge (ALJ) abused his discretion by ad-
mitting 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 Commis-
sion’s remedial orders had to be rescinded. Kyocera volun-
tarily 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 modifica-
tion 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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KOKI HOLDINGS AMERICA LTD. v. ITC 4
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 determin-
ing whether there was a violation of Section 337.
D ISCUSSION
Article III of the U.S. Constitution limits our jurisdic-
tion 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 constitu-
tional minimum of standing.” Lujan v. Defs. of Wildlife,
504 U.S. 555, 560 (1992). An appellant must have “(1) suf-
fered 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 inva-
sion of a legally protected interest’ that is ‘concrete and par-
ticularized’ 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.” Phige-
nix, 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 termi-
nating 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 Commis-
sion did not reach a determination on whether Koki vio-
lated 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 sup-
port 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 reiter-
ated 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 am-
biguous 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 cov-
enant to only cover prior shipments of the original prod-
ucts, but not ongoing or future shipments of the original
products. Id. at 4:16–5:53 (citing J.A. 4109 (“[W]e under-
stand 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 Sec-
tion 337 complaint premised on ongoing and future ship-
ments of the original products.”)). In response, Kyocera
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KOKI HOLDINGS AMERICA LTD. v. ITC 6
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 pa-
tents 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 jurisdic-
tion). The threat of future litigation for the original or mod-
ified products no longer exists, and thus there is no case or
controversy between the parties with respect to the Com-
mission’s investigation.
Koki did not otherwise submit any evidence to demon-
strate 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 es-
tablish an injury in fact sufficient to confer Article III
standing. We dismiss the appeal.
DISMISSED
COSTS
No costs.
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