Recently the Federal Circuit, sitting en banc, upheld the International Trade Commission’s (ITC) interpretation of 19 U.S.C. § 1337 to allow the ITC to prevent goods from being imported into the United States when the infringement does not occur until after importation. Although the panel was split 6-4, the primary practical justification for the majority’s decision stemmed from the determination that if the decision came out the other way, it would effectively make § 1337, and thus ITC cases, inapplicable to any induced infringement claims, as well as potentially all method claims. The case involved the importation of fingerprint scanning devices by the Korean company Suprema, Inc., which were then combined with software by Suprema’s American business partner Mentalix, Inc., before the scanners were actually sold in the U.S. The sole claim of the plaintiff Cross Match Technologies, Inc. that was at issue in the en banc appeal (claim 19) was directed to a method for capturing and processing a fingerprint image.

One further interesting point of note came from a nonprecedential opinion of the Federal Circuit that issued subsequent to the Federal Circuit’s en banc ruling. On remand, a panel of the Federal Circuit reinstated the entirety of its rulings related to the ITC’s findings, and thus affirmed the Commission’s issuance of a limited exclusion order after finding that a violation of § 1337 occurred. Of note is the fact that the Federal Circuit was willing to accept as evidence of willful blindness that Suprema failed to obtain an opinion of counsel. Thus, once again post-Seagate, despite the enactment of 35 U.S.C. § 298 by the Leahy-Smith America Invents Act (AIA), there are still very good reasons to obtain opinions of counsel.