In an opinion made public just prior to the Labor Day weekend, the ITC has granted the complainant’s request to modify its order excluding marine sonar imaging devices to cover components that are intended to be included in a fully-assembled (also referred to as fully “kitted”) infringing product after importation. Certain Marine Sonar Imaging Devices, Inv. No. 337-TA-921 (Modification Proceeding) (Comm’n Op., Aug. 29, 2016). The ITC rejected respondent’s arguments that the exclusion order covers only marine sonar devices and components that directly infringe the asserted claims, reasoning that respondent’s position was contrary to established ITC precedent of fashioning exclusion orders “that cover not only the specific device or product found to be infringing, but also infringing redesigns and components of the infringing product where importation of such components might enable a respondent to circumvent the order.” According to the ITC, its prior finding of no indirect infringement applied only to accused components that were to be sold individually as standalone products, and not to components imported “for the purpose of kitting an infringing device.”
The ITC’s decision is interesting in a number of respects. First, exclusion order modifications are rare. Second, the ITC issued its ruling despite a pending appeal in the Federal Circuit, which the ITC noted “typically divests the Commission of jurisdiction” but not its “jurisdiction to ensure that the remedial orders it has issued are properly executed.” Finally, the decision to exclude components that the ITC found to be non-infringing when sold as standalone products appears to raise questions concerning the scope of the ITC’s enforcement authority similar to those that are currently the subject of a cert petition to the U.S. Supreme Court in Delorme Publ’g Co. v. ITC, 805 F.3d 1328 (Fed. Cir. 2015). In that case, the Federal Circuit affirmed the ITC’s enforcement of a consent order and imposed $6 million in penalties against a respondent that had imported components for use in the infringing products even though an ITC administrative law judge found the components to be non-infringing. At a minimum, the decision will likely add to the drumbeat of criticism over the ITC’s jurisdiction and remedial powers that the divided en banc ruling in Suprema v. ITC, 796 F.3d 1338 (Fed. Cir. 2015) (affirming the ITC’s jurisdiction over induced infringement) has done little to quiet.