Suprema, Inc. v. ITC

Suprema, Inc. v. ITC

Opinion

 [*1352]  [***1008]   O'Malley, Circuit Judge.

We address related appeals from rulings of the U.S. International Trade Commission ("the Commission").

First, we consider the propriety of the Commission's limited exclusion order barring importation of optical scanning devices and a related cease and desist order. We vacate the cease and desist order, vacate the limited exclusion order in part, and remand so that the order can  [**3] be revised to bar only a subset of the scanners at issue. Resolution of this appeal turns in part on our conclusion that ] an exclusion order based on a violation of 19 U.S.C. § 1337(a)(1)(B)(i) may not be predicated on a theory of induced infringement under 35 U.S.C. § 271(b) where direct infringement does not occur until after importation of the articles the exclusion order would bar. The Commission's authority under § 1337(a)(1)(B)(i) reaches "articles that . . . infringe a valid and enforceable United States patent" at the time of importation. Because there can be no induced infringement unless there has been an act of direct infringement, however, there are no "articles . . . that infringe" at the time of importation when direct infringement has yet to occur. The Commission's exclusion order must be revised, accordingly, to bar only those articles that infringe a claim or claims of an asserted patent at the time of importation.

Next, we consider a Commission order refusing to find a violation of § 1337 with respect to some of the same optical scanners. The proceeding giving rise to that appeal was premised on alleged infringement of U.S. Patent No. 7,277,562 ("the '562 patent"), a  [**4] different patent than the two patents at issue in the first appeal we  [*1353]  address today. The Commission concluded that the scanners at issue did not infringe the asserted claims of the '562 patent when properly construed. Because we agree with the Commission's claim construction and non-infringement finding, we affirm the Commission's ruling in this related appeal.

The Commission rulings before us arise from proceedings in which Cross Match Technologies, Inc. ("Cross Match") asserts that Suprema, Inc. and Mentalix, Inc. violated 19 U.S.C. § 1337(a)(1)(B)(i) by importing articles that infringe or are used to infringe U.S. Patent Nos. 7,203,344 ("the '344 patent"), [***1009]  7,277,562 ("the '562 patent"), and 5,900,993 ("the '993 patent"). The Commission found that Mentalix directly infringed method claim 19 of the '344 patent by using its own software with imported Suprema scanners and found that Suprema induced that infringement. The Commission also found that certain of Suprema's imported optical scanners directly infringe claims 10, 12, and 15 of the '993 patent. But the Commission found no infringement of the '562 patent. The Commission then held that Suprema and Mentalix failed to prove that  [**5] the '993 patent was invalid as obvious over two prior art patents: U.S. Patent No. 3,619,060 ("the '060 patent") and U.S. Patent No. 5,615,051 ("the '051 patent"). Based on these findings, on October 24, 2011, the Commission issued a limited exclusion order directed to certain scanning devices imported "by or on behalf of Suprema or Mentalix" and issued a cease and desist order directed to Mentalix only.

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