Digest of Suprema, Inc. v. Int’l Trade Comm’n., No. 2012-1170 (Fed. Cir. Sept. 14, 2015) (non-precedential). On appeal from ITC. Before Prost, O’Malley, and Reyna.

Procedural Posture: On remand from an en banc consideration by the CAFC of an appeal taken from a limited exclusion order of the ITC directed to scanners imported into the United States by Appellant Suprema, the original panel of the CAFC reinstated its prior holdings with regard to the ‘562 and ‘993 patents (i.e., affirming the ITC’s non-infringement ruling with regard to the ‘562 patent, and affirming the ITC’s infringement and validity rulings with regard to the ‘993 patent), and affirmed the ITC’s infringement and willful blindness findings as to the ‘344 patent.

  • Direct Infringement: In holding the ‘344 patent directly infringed, the CAFC ruled that there was substantial evidence that the claimed steps in dispute were met by the operation of the accused scanners because the scanner operation was consistent with an example given by the ‘344 patent specification for implementing the claimed steps.
  • Prosecution Disclaimer: The CAFC rejected Appellant Suprema’s argument that patentee Cross Match limited the scope of a claimed step during prosecution to specifically require detection of “oval-like shapes.” Cross Match never mentioned “oval-like shapes” in its remarks to the examiner.
  • Induced Infringement – Willful Blindness: A party is liable for induced infringement under 35 U.S.C. § 271(b) if it has actual knowledge of the direct infringement, or if it is willfully blind to it. Willful blindness requires (1) subjective belief of a high probability that a fact exists, and (2) the taking of deliberate actions to avoid learning of such a fact. Based on the totality of the circumstances, the ITC properly found Suprema liable for induced infringement because of Suprema’s willful blindness to the existence of the ‘344 patent and to Mentalix’s direct infringement involving the combination of Suprema’s scanners with Mentalix’s own software. Substantial evidence supported the ITC’s conclusions that: Suprema was well-aware of Cross Match’s activities in the scanner field, particularly through its study of the ‘562 patent, which incorporates by reference the ‘344 patent; Suprema would have undoubtedly discovered that the ‘344 patent had issued had Suprema checked for this issuance when it reviewed the ‘562 patent; Suprema specifically targeted Cross Match’s market when developing its own products; Suprema subjectively believed in the high probability that Cross Match’s scanner technology was patented and took deliberate actions to avoid learning of that fact; and Suprema aided and abetted Mentalix to adapt its software to work with Suprema’s accused scanners.Suprema and amicus Google, Inc. argued that a requirement to seek out every reference referred to a competitor’s patent would place too high a burden on manufacturers to avoid a finding of willful blindness. The CAFC explained that it does not hold that an exhaustive patent search is required in every instance. Rather, based on the totality of the circumstances, the ITC had adequate evidence to conclude that Suprema’s actions constituted willful blindness.
  • Opinion of Counsel: It was not error for the ITC to consider Suprema’s failure to obtain an opinion of counsel as a factor in their inducement analysis. The failure to obtain an opinion is merely one fact of many that may be considered in the assessment of willful blindness. However, an opinion of counsel is not required to avoid a finding of induced infringement.