As discussed in an earlier post, the en banc Federal Circuit issued an opinion on August 11 holding that Section 337 permits an exclusion order to issue against an induced infringer where the direct infringement does not occur until after importation. However, that opinion did not address the merits of the Respondents’ appeal of the Commission’s exclusion order, but instead “return[ed] the case to the panel for further proceedings consistent with that opinion.” On September 14, the panel issued a decision resolving the remaining issues in the Suprema appeal and affirming the Commission’s final determination in the underlying investigation.

The same Federal Circuit panel (consisting of Chief Judge Prost and Judges O’Malley and Reyna) that issued the original, now-vacated panel opinion, also issued the new opinion on remand from the en banc decision.

The first issues addressed by the panel were the two patents not addressed in the en banc decision – the ’562 and ’993 patents. The original panel decision had affirmed the Commission’s holding that the ’562 patent was not infringed, and that the ’993 patent was infringed by Suprema and was not invalid. After noting that “[t]he en banc Court neither considered nor questioned either the conclusions the panel reached as to [these patents], nor the rationale for those conclusions,” the panel reinstated its original conclusion as to those patents.

The panel also addressed the remaining issues regarding the ’344 patent, which had not been reached in the original panel decision – specifically, Respondents’ arguments that the ’344 patent was not directly infringed after importation, and that there could be no inducement because Suprema was not willfully blind to any infringement.

The panel rejected Respondents’ arguments on both points. The panel held that the Commission’s conclusions on direct infringement were supported by substantial evidence. The panel also affirmed the Commission’s conclusion that Suprema was willfully blind to this direct infringement, finding substantial evidence for that conclusion in the record. This included evidence that Suprema had studied a patent that was related to the ’344 patent, that Suprema was aware of the patented product, and that Suprema helped Mentalix adapt its products in a way that infringed. The panel also found that Suprema’s failure to obtain an opinion of counsel was a factor weighing in favor of a finding of willful blindness.

The Commission’s final determination, issued October 24, 2011, now stands affirmed in all respects by the Federal Circuit.