Suprema v. ITC: En Banc Federal Circuit Overturns Panel Decision

The full Federal Circuit (6–4) reversed an earlier panel decision.

• It confirmed that the International Trade Commission (ITC) has authority over induced infringement of method claims.

• This is especially important for software and high-tech industries, where induced infringement claims are common.

Background of the Case

• Cross Match accused:

  • Mentalix (U.S. importer) of infringing a fingerprint scanner patent.

  • Suprema (Korean manufacturer) of inducing that infringement.

• The alleged infringement occurred after importation, when software was combined with the scanners.

• The ITC found:

  • Direct infringement by Mentalix.

  • Induced infringement by Suprema.

• The ITC issued an exclusion order blocking importation of the scanners.

The Earlier Panel Decision (Overturned)

• A Federal Circuit panel had ruled:

  • The ITC only had authority over products that infringe at the time of importation.

  • If infringement occurs after importation, the ITC lacked jurisdiction.

• This significantly limited ITC authority in method claim cases.

• It created uncertainty around indirect infringement claims at the ITC.

The En Banc Federal Circuit Ruling

• The court applied the Chevron framework (agency deference test).

Step 1:

• Congress did not clearly define whether “articles that infringe” includes induced or post-importation infringement.

• The statute was ambiguous.

Step 2:

• The ITC’s interpretation was found reasonable.

• The court held:

  • Section 337 allows findings of infringement even if it occurs after importation.

  • The ruling aligns with statutory text, policy, and legislative history.

  • The ITC historically had authority over induced infringement.

• Result: The ITC’s decision was reinstated.

Why This Matters

• Closes a potential loophole:

  • Companies cannot avoid ITC jurisdiction by performing most patented steps overseas and completing final steps in the U.S.

• Reaffirms broad ITC authority over indirect infringement.

• Restores certainty for patent holders relying on ITC enforcement.

Broader Implications

• The opinion signals that the Federal Circuit views ITC jurisdiction broadly.

• May affect future cases involving:

  • Digital imports

  • Pirated movies

  • Books

  • Software