What’s at Stake?

The panel majority held that exclusion orders under § 337 may not issue based on a theory of induced infringement where the direct infringement does not occur until after the articles are imported. The Federal Circuit also relied on the Commission’s Opinion in 337-TA-724, which held that there can be no Section 337 violation based on the direct infringement of a method claim rather the complainant must show indirect infringement. In both cases the Federal Circuit and the Commission relied on Section 337’s prohibition of “the importation … of articles that infringe.” The immediate impact is significant: when asserting method claims under 19 U.S.C. § 1337(a)(1)(B)(i), the only viable theory of infringement is contributory infringement. Method-of manufacture claims may still be asserted under 19 U.S.C. § 1337(a)(1)(B)(ii) and are not affected by this decision.

Summary of the Opinion -

Suprema v. ITC is an appeal of the Commission’s decision in 337-TA-720, based on a complaint filed by Cross Match Technologies, Inc. naming Suprema, Inc. and Mentalix, Inc. as respondents. Suprema imported optical scanners used for capturing and recognizing fingerprints and sold them to many customers, including Mentalix. After receiving the scanners in the U.S., Mentalix loaded them with its own software. The Commission found that Mentalix’s use of the combination of the software and the scanners directly infringed the patent, and that Suprema induced that infringement when importing the scanners to Mentalix.