Summary: CAFC vacates Section 337 violation based on finding of indirect infringement where the underlying direct infringement does not occur until after importation.
Case: Suprema, Inc. v. Int’l Trade Comm’n, No. 2012-1170, -1026, -1124 (Fed. Cir. Dec. 13, 2013) (precedential). On appeal from U.S. International Trade Commission (“ITC”). Before Prost, O’Malley, and Reyna.
Procedural Posture: Related appeals from the ITC’s findings of infringement on certain asserted patents and nonobviousness and noninfringement as to others. CAFC affirmed in part, vacated in part, and remanded.
- ITC (337 Cases)/Inducement: The Federal Circuit vacated an infringement finding and held that an “exclusion order based on a violation of 19 U.S.C. § 1337(a)(1)(B)(i) may not be predicated on a theory of induced infringement under 35 U.S.C. § 271(b) where direct infringement does not occur until after importation of the articles the exclusion order would bar.” As a matter of statutory construction, the Federal Circuit explained that Commission’s mandate to deal with matters of patent infringement should be focused on the infringing nature of the articles at the time of importation, not on the intent of the parties with respect to the imported goods. The majority largely premised its decision on the construction of the “articles that . . . infringe” phrase of 19 U.S.C. § 1337(a) and the fact that inducement is not “completed” as a matter of law until there has been direct infringement.
- Claim Construction: The Commission correctly found that “non-lens elements” and “off-axis optics” were not clearly disavowed in the written description of the asserted patent where the statements pertained to these elements as the means to correct distortion, and the use of mirrors that do not correct distortion was not clearly disclaimed.
- Obviousness: The Federal Circuit affirmed the finding of nonobviousness where the challenger adduced insufficient evidence of motivation to substitute the photographic camera triplet lens of the first prior art reference for the fingerprint scanner achromatic lens of the second prior art reference.
- Infringement: The Federal Circuit affirmed the finding of noninfringement based on the Commission’s correct construction of the term “capture” to mean “acquiring, by the scanner, for processing or storage.”
Reyna, concurring-in-part, dissenting-in-part:
- ITC (337 Cases)/Inducement: Dissenting from the portion of the majority opinion concerning the Commission’s authority under 19 U.S.C. § 1337 as applied to induced infringement. According to the dissent, there is no indication that Congress intended to prohibit the Commission from investigating acts of inducement leading to infringement.