Suprema, Inc. v. Int’l Trade Commission, No. 2012-1170 (Fed. Cir. Dec. 13, 2013).

A complainant accused certain optical scanning devices of infringing its patents. After an investigation, the International Trade Commission issued an exclusion order against an accused infringer. The Commission found that the accused scanners, when used in conjunction with certain software added to the scanners after importation for use in a method of identifying fingerprints, directly infringed one of complainant’s patents, and the accused infringer induced that infringement.

The Federal Circuit reversed, holding that a Section 337 exclusion order could not be based on induced infringement where the accused products would not actually infringe until after importation and use. The court found Section 337 unambiguous and afforded no deference to the Commission. The statute’s ban on importation of “articles that infringe” reached only goods that were infringing when imported. And prior to the commission of any act of direct infringement, there are no “articles that infringe.”

Judge Reyna dissented. He emphasized the remedial purpose of Section 337. The statute, in his view, “was intended to provide distinct relief at the border to stop imports of articles that are used in unfair trade.” He saw no difference between “importing an article that meets all limitations of an apparatus claim as it crosses the border” and “importing an article and encouraging another to use that article to practice a patented method.” Judge Reyna was also concerned that an importer could circumvent Section 337 by importing disassembled components of a patented machine and reserving final assembly for the end-user—which Judge Reyna called “the most common and least sophisticated form of circumvention.”

A copy of the opinion can be found here