*1 SUPREMA, Mentalix, INC.
Inc., Appellants,
v.
INTERNATIONAL TRADE
COMMISSION,
Appellee, Technologies,
Cross Match
Inc., Intervenor. Technologies,
Cross Match
Inc., Appellant,
v. Commission, Trade
International
Appellee,
Suprema, Mentalix, Inc. and
Inc., Intervenors. 2012-1170, 2012-1026,
Nos. 2012-1124. Appeals,
United States Court of
Federal Circuit.
Dec. *2 Woo, West, LLP,
Darryl M. Fenwick & Francisco, CA, argued appel- of San Inc., Suprema, lants et al. him on With Mewes, the brief were Heather N. Jae Rubel, Bryan Opinion llana S. A. for the court filed Circuit Song, Won O’MALLEY; Kohm, Lacy Judge Opinion concurring Erin David M. Kusters and part dissenting part filed Circuit Simon. Judge REYNA. Gerdine, Attorney, Clint A. Office *3 O’MALLEY, Judge. Circuit Counsel, United States Interna- General Commission, Washington, tional Trade of appeals rulings We address related from DC, appellee. for him on the argued With of the U.S. International Trade Commis- Bianchi, Acting Dominic L. brief were (“the Commission”). sion Counsel, Casson, and Andrea C. General First, propriety we consider the of Litigation. General Counsel for Assistant limited exclusion order bar- Commission’s ring importation optical scanning of de- Grant, A. Latham Maximilian & Watkins vices and a related cease and desist order. DC, LLP, Washington, argued of for inter- order, We vacate the cease and desist va- Technologies, Match Inc. venor Cross cate the limited exclusion in part, order Bell, her on the brief were K. With Gabriel and remand so the order can be re- Gregory A. David and K. Michael Sobolski. only vised bar a subset of the scanners counsel on the brief Clement J. Of was appeal at issue. Resolution of this turns York, New NY. Naples, of part on our conclusion that an exclusion Joseffer, LLP, Daryl King Spalding & of order based on a violation of 19 U.S.C. DC, Washington, for amicus curiae. With 1337(a)(l)(B)(i) § may predicated not be him the was Adam on brief Conrad. theory on a of induced under 271(b) § infringe- U.S.C. where direct Grant, A. Latham & Maximilian Watkins ment does not occur until after LLP, DC, Washington, argued for ap- of of the articles the exclusion order would Match Inc. pellant Technologies, Cross bar. The Commission’s under her on the brief were A. With Michael 1337(a)(1)(B)® reaches “articles that David and Gabriel K. Bell. Of counsel on ... infringe valid and enforceable United Naples, the brief was Clement J. of New patent” importation. States at the time of York, NY. Because there can no infringe- be induced Gerdine, Attorney, A. Clint Office ment unless there has been act of direct Counsel, United States Interna- General however, infringement, there are no “arti- Commission, Washington, tional Trade infringe” cles ... at the im- time of DC, appellee. him argued for With on the portation yet when direct has Bianchi, Acting were Dominie L. brief to occur. The Commission’s exclusion or- Counsel, Casson, General and Andrea C. revised, accordingly, der must to bar be Litigation. Assistant General Counsel for infringe a those articles that claim or patent claims of an asserted at the time of Woo, West, LLP, Darryl M. Fenwick & importation. Francisco, CA, argued San interve- Next, Inc., Suprema, nors et al. him on we consider Commission order With refusing to find a violation of with Song, the brief were Jae Won llana S. Rubel, Kohm, optical to some of the same scan- Bryan Lacy A. M. David proceeding giving ners. The rise to that Kusters. Of counsel was Heather N. appeal alleged premised infringe- Mewes. (“the 7,277,562
ment of U.S. Patent No. PROST, O’MALLEY, Before patent”), patent '562 a different than the REYNA, Judges. patents appeal Circuit two at issue in the first we (1) conclud- mission erred because: today. address 337(a)(1)(B)® at issue did not in- may pred- ed that the scanners violation not be pat- '562 fringe theory the asserted claims icated on a induced (2) properly case; when construed. Because we ent under the facts of this the Commission’s claim con- agree willfully was not blind to the existence of non-infringement finding, and, thus, we struction the '344 did not induce (3) ruling affirm the Commission’s in this re- patent; of that Mentalix appeal. lated directly infringe did not patent;
(4) Suprema’s scanners do not under the correct claim con- I. struction; (5) the asserted claims of A. *4 the '993 patent were invalid as obvious. Match, turn, appeals Cross the Commis- rulings The Commission before us arise non-infringement ruling sion’s proceedings from which Cross Match patent, challenging to the '562 the claim (“Cross Match”) Technologies, Inc. asserts upon construction which that ruling was Mentalix, Suprema, Inc. and Inc. vio- based. 1387(a)(l)(B)(i) im- lated 19 U.S.C. porting articles that or are used to infringement finding We vacate the on (“the 7,203,344 infringe U.S. Patent Nos. the '344 patent because we hold that an (“the 7,277,562 patent”), patent”), '344 '562 exclusion order based on a violation of (“the 5,900,993 patent”). and '993 The 337(a)(1)(B)® may predicated not be on directly Commission found that Mentalix theory of infringement induced where no infringed pat- method claim 19 of the '344 direct infringement post-im- occurs until by using import- ent its own software with conclusion, portation. Given this we do Suprema ed scanners and found that not reach the merits the Commission’s Suprema infringement. induced that The willful blindness or direct also found that certain of findings patent. Regarding on the '344 Suprema’s imported optical scanners di- patent, the '993 we affirm the Commis- rectly infringe claims and 15 of the and conclu- sion’s But patent. '993 the Commission found no Suprema prove sion that failed to that the patent. of the '562 The asserted claims invalid as were obvious. Suprema Commission then held that and non- Finally, we affirm the Commission’s Mentalix failed to that the prove pat- '993 ruling regarding the '562 prior ent was invalid as obvious over two patent. 3,619,060 patents: art U.S. Patent No. (“the patent”) '060 and U.S. Patent No. B. (“the 5,615,051 patent”). Based on 24, 2011, findings, these on October technology pertains at issue to bio- Commission issued limited exclusion or- (i.e., analyzing bio- metrics the science scanning der directed to certain devices characteristics) logical scanning and the imported “by Suprema or on behalf of or objects. specifically biometric This case Mentalix” and issued a cease and desist fingerprint Fingerprint involves scanners. only. order directed to Mentalix most capture recognition, probably and biometrics, Suprema premised important and Mentalix their common form of is technology many of the exclusion industries and appeal and cease and de- because increasingly rely on fin- sist orders their belief that the Com- law enforcement store, gerprints recognize, (g)determining as biometrics to whether the detected fingerprint shape area and ac- verify identity.
ceptable quality. Id. col. 19 11.24-37.
C. patent optical system The '993 claims an above, these con- explained appeals As forming image real of a biometric patents. pat- cern three Two are method object that corrects for field curvature us- ents, patent patent. the '344 and the '562 10, 12, ing system. a three-lens Claims patent appeal by The '344 is at issue in the and 15 were infringed. found Claims 12 Mentalix; depend and 15 from claim 10. The three appeal. They at issue Cross Match’s claims read: particular implementations relate to of fin- 10. An optical system having optical an capture gerprint image processing. axis, system forming image said an of an patent, The third the '993 patent, contains object comprising: (over apparatus “optical sys- claims a) prisma having a first surface for tem”) at issue in Suprema’s appeal. and is contacting object and a second surface, said first surface being ori- The '344 contains claims drawn *5 ented with respect optical to the axis by methods used an optical scanning angle greater at an than angle the system fingerprint images to detect based surface; total internal reflection of the area, fin- shape on and and to determine b) an aperture stop; quality based ger-print on the detected c) a first unit having positive lens a shape patent and area. '344 11.24- col. 19 power aperture stop between the and (the only claim of the 38. Claim '344 prism for forming a telecentric infringed) patent pro- found recites such a pupil; entrance cess: d) having a second lens unit a positive A capturing processing method for and a power forming image for a real of the finger-print image, compris- the method object, said unit being second lens on ing: image unit; side of the first lens (a) scanning fingers; one or more e) a third lens unit for correcting (b) capturing data representing a cor- image field curvature of the contribut- area;
responding fingerprint ed the first and second lens units. (c) filtering fingerprint image; 12. The optical system of claim 10 wherein the first lens units consist of a (d) binarizing the fingerprint filtered single lens element. image; optical system 15. The of claim 10 (e) detecting a fingerprint area based wherein the third lens unit has a nega- on a concentration of in pixels black power. tive fingerprint binarized image; patent col. 10 11.18-45. The debate (f) detecting fingerprint shape a patent over the '993 centers whether arrangement based on an of the con- optical system in described claim 10 pixels centrated black in an oval-like elements, can include within it non-lens shape in the fingerprint binarized im- such as the mirrors that are included age; and the lens units of the Suprema scanners. that the claims at says claim 10 and those method issue are Suprema While infringed Suprema’s when scanners are depend therefrom exclude claims that mirrors, respon- and the used combination with both of such ALJ use (i.e., Suprema’s dents’ software SDKs and they found did not. FedSubmit). claims methods aimed patent The '562 images.” The “reliably capturing print dispute regarding patent the '562
parties’ E. on an issue of claim construction— centers appeals Commission’s find- the determination particular, 337(a)(1)(B)© by that it ing violated “capture,” ALJ and Commission with- fringement patents, of thé '344 and '993 claims, asserted meaning in the and asks that the related exclusion orders print quality cannot occur until after the be vacated. The found that a ALJ number prints have deter- and number been (RealSean-10, Suprema’s scanners Real- mined and detected. Scan-D, RealScan-lOF, and RealSean- DF), when Mentalix’s used with FedSub- D. software, directly infringe mit claim 19 of Match, and inter- complainant Cross patent the '344 and recommended ex- venor, global provider fingerprint is a relating clusion order to those scanners on acquisition technology. It is domestic ground. agreed The Commission Florida, and it company headquartered infringed, but clarified variety develops and manufactures controlling theories —it products verify- biometric identification directly infringes concluded that Mentalix identity, ing person’s fingerprint such as method claim 19 of the '344 when it It palm print supplies prod- scanners. Suprema products combines with its own *6 government private ucts to the and U.S. Suprema software and that induces that industry. assign- Match the Cross sole infringement. patents-in-suit. the three ee of in- While the ALJ had not considered Suprema, are respondents The below finding no factual ducement and made company Korean that manufactures and elements, its the nevertheless Commission imports hardware and software for scan- sup- concluded that the record evidence Mentalix, a ning fingerprints, and domestic (1) ported finding Suprema importer Suprema Specifical- scanners. (2) willfully patent, to the '344 stud- blind ly at are market- Suprema issue scanners products ied and emulated Cross Match’s and ed under trade-name RealScan willfully the in- blinding before itself to (“SDKs”) development pack- kits software activities, fringing nature of Mentalix’s aged along with those scanners. Mentalix (3) actively encouraged those activities. imports Suprema’s scanners and inte- Therefore, in- it found that had grates them with its own software patented duced of the meth- specific United States. The Mentalix soft- 271(b), and that this od under U.S.C. involved in this case is called Fed- ware for a inducement formed the basis can Submit. Mentalix’s accused software 337(a)(1)(B)© violation. fingerprint by used with scanners sold be in- Regarding underlying direct companies, including other Cross Match. found that investigation, fringement, In the Cross Commission Commission software, when inte- system its claims Mentalix’s FedSubmit Match contended imported Suprema scan- infringed by Suprema optical systems grated ners, software, upon execution of the disclose a teleeentrie condition. The ALJ practiced pat- method claim 19 of the '344 also found no motivation combine the ent under the ALJ’s claim constructions.1 two adopted references. The Commission adopted construc- findings. Commission those each of these the subsequent tions and F.
findings. patent, to the With '993 In separate appeal, Cross Match fully adopted the ALJ’s challenges the Commission’s determination fringement analysis. Specifically, 5-7, 12, that claims and 30 of the '562 Commission found that the claimed optical patent by are not infringed Supre- either systems need not exclude non-lens ele- ma’s scanners or use of those scanners (such as distortion correcting conjunction ments with the FedSubmit software. elements) prisms holographic optical or adopted The ALJ Cross proposed Match’s optics. off-axis The Commission then con- construction “capture” appears as it (f) cluded that all the recited elements of step claims, of the independent asserted 10, 12, claims and 15 were met namely, “capture” “acquiring, means accused scanner, scanners. processing or storage.” The Commission adopted construction The Commission also found that the as- and, it, based on adopted also the ALJ’s art, prior serted patents, '060 and '051 products that the accused do not did not render the asserted claims of the infringe the asserted claims. obvious. Based on the eviden- record, tiary the ALJ determined that the Specifically, the Commission found that respondents failed offer clear and con- the “capture” limitation was not met be- vincing evidence that the combination of cause the record evidence showed that the the '060 patents and '051 renders asserted accused scanners do not perform steps independent claim as well as required asserted claim 1 in the order. The 11-12, 15, 17-18, dependent claims Commission found that Claim 1 requires 103(a). obvious under The ALJ conclud- that the fingerprint image scanned cap- be ed that did not disclose tured after both a determination of the 10(c) (a (e) element first having lens unit expected prints number of step under positive power aperture between the stop and a determination of quality *7 (d) prism and the for forming prints a teleeentrie step under have been made. 10(d) (a pupil), entrance element second But the products capture accused fin- unit having positive power lens gerprint for form- image before software determines ing a real image object), or element of prints required by number as step (a 10(e) (e) correcting third lens unit for field and before assessing quality their as curvature). that, (d). The ALJ also noted al- required by step The Commission though patent the '051 triplet disclosed a products also found the accused do not (f) that lens was well perform suited for use with step of claim since that step cameras, (f) photographic patent substantially did not step the same as pertain to fingerprint scanners and did not claim 1. Although says
1. support the Commission that Menta- no in the record for the Commission's directly infringed lix conceded that it claim position, characterization of Mentalix’s but 19, Mentalix contests that statement and need not address it further since we vacate points places only in the record where it denied Commission order directed to Menta- practiced that grounds. it the asserted We method. see lix on other
II. that the Commission’s decision with re- spect patent to the '344 must be vacated. Suprema’s appeal turn first to We Suprema argues allegations that and the thresh regarding the '344 adequately induced do not specifically, issue it whether old raises — importation connect the fact of ulti 337(a)(l)(B)(i) may predicat § violation be infringement. mate Suprema concedes on a claim of induced ed that, if an capable article is of no non- where the attendant direct uses, infringing importation may its consti claimed method does not occur until contributory tute infringement and there post-importation. We conclude But, § Suprema violate asserts 337(a)(1)(B)®, § by tying the Commis imported that the scanners at issue here importation, to the sale for sion’s capable multiple non-infringing uses. importation, or sale within the U.S. after they It is when are combined with of articles that a valid specific program Mentalix’s software patent, leaves the enforceable U.S. they purportedly infringe the method de powerless remedy Commission acts of Suprema scribed claim 19. believes circum induced these 337(a)(1)(B)® § does not reach the Accordingly, stances. we vacate the Com Match alleges conduct which Cross rulings regarding pate mission’s engaged. nt.2
Cross Match defends the Commission’s
that,
ruling
by inducing Mentalix to com
A.
infringement, Suprema
mit direct
violated
337(a)(1)(B)®.
argues
Cross Match
Suprema
appeal,
On
contends it does not
that In the Matter
Certain Electronic
import
infringe,”
required
“articles that
Devices,
337-TA-724,
USITC Inv. No.
337(a)(1)(B)®.
under
The accused de-
(ITC
Dec.
WL
*8-9
imported
vices are
scanners which Cross
2011),
ruling,
a recent Commission
makes
directly infringe
Match concedes do not
predi
clear that a
violation can be
the method of claim 19 of the '344
theory
infringe
cated on the
of induced
importation.
alleged
at the time of
employed
ment
here.
infringement only takes
when the
place
rulings
on our
Cross Match also relies
domestically
scanners are combined with
Kyocera
Corp.
Wireless
v. International
developed software after the scanners are
(Fed.
Trade Commission
fringe”
any type
infringe-
can involve
ment,
direct, contributory,
be it
or induced.
All
statutory
matters of
construc
The
asserts that
be-
tion,
course, begin
with the language of
gan encouraging
aiding
abetting
in question.
Hughes
the statute
See
Air
impor-
Mentalix’s
well before
Jacobson,
432, 438,
v.Co.
525 U.S.
craft
tation,
indicating
Suprema already
(1999) (“As
755,
119 S.Ct.
Commission to exist shall be dealt law, in addition any provision other B. provided in this section: authority The Commission’s to is sue exclusion orders in this case must find (B) The importation into the United Kyocera, basis statute. See 545 F.3d States, the importation, sale for or the (“The statute,
at 1355
ITC is a creature of
sale within the United States after im-
authority
and must find
for its actions in
owner,
portation by
importer,
or
statute.”).
enabling
question pre
The
consignee, of articles that—
thus,
is,
statutory
sented
one of
construc
tion.
interpreting
When
statute which
(i) infringe a valid and enforceable
administers,
an agency
we conduct our
United States
or a valid and
statutory analysis
under
framework
enforceable United States copyright
established
Chevron
Inc. v.
U.S.A.
Nat
17;
registered under Title
or
Council, Inc.,
ural Resources
467
Defense
1337(a)
added).
(emphases
U.S.C.
837,
2778,
U.S.
104 S.Ct.
concerned, imported by any person vio- section, lating provision of this be C. entry excluded from into the United States, unless, considering after the ef- To determine if imported goods are “ar- upon public fect of such exclusion ticles that ... infringe,” we turn to the welfare, competitive health and condi- laws, § patent specifically, 271 of Title 35 economy, in the United tions States provision of the U.S.Code. That defines production directly competitive of like patent infringement i.e., unlawful the ba- — States, articles the United and United sis for the unfair practice regulated trade consumers, States it finds that such arti- 1337(a)(1)(B). § in 19 U.S.C. Section 271 entry. cles should not be excluded from states: notify shall The Commission Secre- (a) Except provided as otherwise in this tary Treasury of its action under title, makes, whoever without authority directing this subsection such exclusion uses, sell, any patented offers to or sells entry, upon receipt from of such invention, within the States or United notice, shall, Secretary through the imports any pat- into the United States officers, proper entry. refuse such during ented invention the term of the added). § In (emphasis U.S.C. therefor, infringes patent. dispute,
the context of this
the “articles
(a)
actively
infringe-
induces
Whoever
be,
course,
concerned” would
the afore-
ment of a
shall be
liable as
mentioned
that ...
“articles
val-
infringer.
patent,”
id and enforceable United States
1337(a)(l)(B)(i).
§
19 U.S.C.
Exclusion or-
(c) Whoever offers to sell or sells within
ders
based
on
violations
or imports
United States
into the
337(a)(l)(B)(i)
§
only
thus
pertain
component
patented
United States a
of a
imported goods
necessarily
and are
based
machine, manufacture, combination or
infringing
goods
on the
nature of those
composition,
apparatus
or a material or
imported.3
when
in practicing
patented process,
for use
recognized
The Commission has
constituting
part
this
material
of the inven-
jurisdiction
tion,
by refusing
knowing
limitation on its
the same to
especially
be
investigate complaints premised
allega-
especially adapted
made or
in an
use
tions
patent,
of direct
of method
not a
such
271(a)
§
patented
staple
commodity
claims under
because
article or
of commerce
infringed
noninfringing
methods are not
until “use” in
suitable for substantial
337(a)(l)(B)(i),
§
provisions
beyond
scope
3. Certain
337 do mention
which
person violating
"any
provision
of this
prohibits only specified
involving
acts
"arti-
section,”
1337(d),
19 U.S.C.
and the Com-
infringe.”
cles
...
Section
mission can issue cease and desist orders to
337(a)(l)(B)(i)
parties’ general
does not reach
section,”
1337(f).
“any
violating
person
this
culpable
specified
conduct
in the
language,
This
limits the remedies authorized
section,
eventually
even if that conduct
is re-
provisions
per-
those
to reach
certain
patent infringement
following
lated to acts of
Kyocera,
sons. See
use, contributory a likewise makes be liable as shall 271(b) liability extends “[S]ection offense: infringer. advises, encourages, or party to a who § 271. 35 U.S.C. engage others to in in otherwise induces 271(a) defines direct Section Techs., Inc. fringing conduct....” Akamai conduct and makes unlawful fringement Networks, Inc., Limelight 692 F.3d v. article, namely, making, tied to an (Fed.Cir.2012) (en banc). 1301, 1307-08 sale, selling of a offering for using, 271(c) de- invention.” Section “patented But focus of the inducement contributory patent infringement, fines not on the of the al analysis is conduct tied to an prohibits conduct again which in leged prevail inducer alone. “To here, article, component patent- “a of a but ducement, show, first patentee ‘the must manufacture, machine, combination or ed infringe that there has been direct apparatuses a material or composition, or ...’” at Kyocera, ment. 545 F.3d 1353-54 process, practicing patented in a for use Mining Mfg. & v. (quoting Minn. Co. the inven- constituting part a material Inc., 1294, 303 F.3d 1304-05 Chemque, 271(b) pat- tion.” Section defines induced (Fed.Cir.2002)). longstanding that Under provision, and this unlike infringement, ent law, inducing while the act must of course two, declares unlawful conduct the other induces, it precede “actively in- untied to an which is completed a inducement under article — ducting] infringement patent.” of a 271(b) § until a in there has been direct fringement.
Precedent from our court makes evident 271(b) § and its focus on the the nature of D. See, e.g., inducer. conduct of the DSU Co., pro- of the conduct v. JMS 471 F.3d Given the nature Corp. Med. (Fed.Cir.2006) (en banc) (“[I]nduce 271(b) §in and the nature of the scribed in authority granted to the Commission requires culpable ment evidence con duct, statutory grant in hold that the encouraging directed to another’s we merely that the inducer 337 cannot extend to the fringement, not 271(b) §in knowledge infringer’s proscribed conduct where the had direct added)). (emphasis underlying have acts of direct oc- activities.” We stated, additionally, post-importation. cur Section succeed “[t]o [on 337(a)(l)(B)(i) plain grants the Commission au- theory infringement], of induced thority “importation,” tiff ac to deal with the prove- must defendants’ they infringing importation,” tions induced acts and that “sale for or “sale within importation” after of “arti- knew or should have known their actions United States infringe ... a valid and enforce- infringement.” would induce actual War cles Apotex Corp., patent.” v. able laws essen- ner-Lambert Co. F.3d U.S. (Fed.Cir.2003) (emphasis tially add define articles ed) (internal 271(a) (c), provisions’ those quotation marks and altera omitted). (aside reason, from the large tions For this standards course) requirements, of part analysis of the inducement and our “United States” theory before dealing case law with the focuses on must be met infringing for the articles to when performing the intent of the inducer order be 271(b) DSU, makes unlawful proscribed imported. act. See 471 F.3d at Section (inducing infringement) conduct 1304-06. Our most recent en banc deci certain dealing that becomes tied to an article sion induced *11 remand, ment. the underlying infringe- direct On ITC will have through the any opportunity the to examine whether Prior to the commission ment. Qualcomm’s specific conduct satisfies the for of in- infringement, purposes direct requirement intent set forth in there are no DSU. infringement, ducement infringe” prerequisite ... “articles understandable, —a Id. at 1354. It is more- authority exercise of to the Commission’s over, parties Kyocera that the and court in 337(a)(l)(B)(i). § Consequently, on based did not focus on the authori- Commission’s the Commission lacked we hold ty to address inducement in the circum- authority to enter an exclusion order di- (i.e., presented stances here where no di- Suprema’s premised scanners on rected to infringement until rect occurs after the infringement induced Suprema’s purported imported). Kyoc- articles are The facts in patent.4 of the method claimed very era were different. Kyocera, prohibit- In the Commission
E. ed the of wireless communi- programmed cation devices “which when a points Cross Match to number cases battery-saving to enable certain features from our court and the Commission to infringe the patent,” but the Com- that the has the author- argue mission did so with to man- ity to entertain induced “purchase® incorpo- ufacturers who claims. But the cases on which Cross Qualcomm chips into their mobile rate® squarely Match relies do not address the devices outside wireless United distinguishable. Kyocera issue or are In States, imported and then them into the Corp. v. International Trade Wireless United States for sale.” Id. at 1346. Commission, of in- finding we reversed a Thus, theory while the infringement by duced the Commission— Kyocera upon Commission relied “specific to apply because failed infringement, one of induced the Com- which, requirement subsequent tent” to mission’s exclusion order was directed to determination, clari- the Commission’s we which, directly imported, articles when fied DSU—and remanded reassess- Thus, infringed patents issue. legal ment under the correct standard. significantly Kyoc- this case differs from at 1354. assumed without F.3d We era. deciding that the Commission had the au- §
thority
predicate
to
337 exclusion or-
Alloc, Inc. v. International Trade Com-
finding
der on its
of induced
mission,
(Fed.Cir.2003),
Here, authority general- and concluded it has the judge the administrative found no ly to entertain indirect evidence that the Intervenors intended claims: infringe to induce others to the asserted patents. importantly, More the admin The plain language of [19 U.S.C. judge istrative found no evidence of di 1337(a)(1)(B)] § first identifies three infringement, rect a prerequi which is specific may acts that form the basis of a Moba, infringement. site to indirect violation of section importation, 337: Automation, Inc., B.V. v. Diamond 325 selling for importation, and selling after (Fed.Cir.2003) (“Be 1306, F.3d 1318 importation. The statute specifies, then upholds cause this court the verdict that form, in list categories of articles that claim directly 28 of the '494 is not must proscribed be involved in the acts. infringed, trial correctly court deter First on the list are “articles that— mined that indirectly FPS does not in infringe” patent. U.S. Id. claim.”); fringe that Sys. Met — Coil 1337(a)(l)(B)(i). § Because the statute Unlimited, Inc., Corp. v. Komers 803 specifies that question the articles in 684, (Fed.Cir.1986) (“[T]here F.2d must “infringe,” analysis can be no inducement of ignores question of infringe-
without direct
by some
ment
incomplete.
would be
party”). This court finds no reason to
The word “infringe”
disturb the
in section
judge’s
administrative
con
337 de-
legal
clusion on
rives its
meaning
inducement.
from 35 U.S.C.
271,
the section of the Patent Act that
Alloc,
Thus,
tation of articles that method premise an exclusion order indirectly, has directly claim S3G Suprema’s addressed to scanners on the *13 a violation of section 337 not shown infringement theory employed, it we do based on of method claim not address the Commission’s other find- 16. ings patent. on the '344 Menta- Whether (“Because *12-13; at *16 Id. at see also id. lix directly infringes claim 19 of the '344 prove infringe- has failed to indirect S3G patent and whether Suprema induces that claim, any ment of asserted method we by are issues to be addressed reiterate that S3G has not shown a viola- only authority the tribunal with so—do tion of section 337 with to claim 16 applicable the federal court forum. patent.”). persuad- of the '146 are not We in ed that the decision Certain Electronic III. against
Devices counsels the conclusion we today. reach Suprema’s We turn next to chal First, spoke while the Commission lenge finding to the Commission’s that cer in terms of its to ban articles (RealScan products imports tain Suprema infringe directly indirectly, either or it RealScan-lOF) claims emphasized that the “articles” must in 12, and 15 of the patent. '993 Com fringe importation.” “at the time of Id. at adopted mission the ALJ’s initial determi inducement, only pertinent *9. For the nation on these claims as its own. On directly infringe— articles are those which appeal, Suprema challenges the ALJ’s Hence, importation. at the time of while claim of a in appearing construction term may imported the Commission ban articles claims, the find asserted by an “inducer” where the article itself ing interpretation, based on that claim (as infringes it directly imported when at Suprema prove failed to holding in tempted Kyocera), may to do it not that the '993 have been obvi would invoke inducement ban ous. may may give or not later articles which rise to direct of Cross A. patented solely Match’s method based on dispute The claim construction involves alleged importer. intent Sec being lens unit ond, phrase “said second the Commission’s discussion of its au unit,” image side of the first lens thority predicate on an (d) appears step in of claim 10 of the '993 inducement claim Certain Electronic claims, dicta; patent, and the two other asserted ultimately, Devices was it did not depend Specifi- from claim 10. purported authority resort to its over such which both And, cally, Suprema argues the claimed remedy. claims to fashion congressional precise question we find unam- views on the Because intent Commission’s biguous, presented. we decline to afford deference to the system6 elements, lens excludes “non-lens elements” correcting non-lens distortion optics” and “off-axis because elements, those were prisms, holographic optical description disavowed the written optics. off-axis patent. So there can be no non-lens Id. at 27. again rejected The ALJ Supre- units,” Supre- elements between the “lens arguments disclaimer, ma’s first distin- believes, ma and the ALJ erred guishing Suprema case law which cited limiting the claims this manner. and then rejecting arguments based on separately analyze The ALJ did not description. the written Id. at 28-32. The (d) language of step but did construe the on, among ALJ relied things, Supre- other “optical system,” appears term which system” ma’s concession that “optical preamble of claim 10 and depen could purportedly include the excluded analysis dent claims. In its of “optical not; items and system lens could system,” the preamble ALJ first found the stands that concession here. limitation, of claim 10 to be a In the Mat Ultimately, Suprema seeks a limitation ex- ter Scanning Certain Biometric De cluding non-lens elements within the lens vices, Thereof, Components Associated *14 system because its products contain mir- Software, and Containing Products elements) (i.e., rors non-lens along with the Same, Final Initial and De Recommended lenses, so such a construction would lead terminations, 337-TA-720, Inv. No. to a of non-infringement. (June 4366, 2011) USITC Pub. at Thus, Suprema concedes non-lens Determination”], [hereinafter “Initial elements can “optical be included in the “optical system” then held that “could in system,” long they as are not located elements, clude non-lens distortion correc within system. the lens Suprema also prisms, tion holographic optical elements seems to concede that language the claim optics,” and off-axis id. at 25. The ALJ does not exclude non-lens elements from looked to the description written for a being present i.e., in system, the lens be- presence disavowal related to the of non- tween the first and second “lens units.” “optical system,” lens elements in the ulti Instead, Suprema relies on passages two mately Then, finding none. Id. at 26. he in the description argue written to following: stated the non-lens present elements cannot be at on Based said construction of “optical First, location. Suprema points to system” supra, the administrative law patent’s statements regarding the ob- rejects judge respondents’ arguments jects of the invention: regarding the disavowal of nonlens ele- optics
ments and off-axis to In view of the foregoing, object is an the other elements of claim 10 of the of the invention provide improved (RBr 195-196.) patent. Thus, '993 systems lens for use in fingerprint de- he finds that the claim terms “first lens particular, tection. In object it is an having unit a positive power,” “between provide systems invention to lens aperture stop prism,” and the employ only “said which lens elements and do being second lens unit image side not employ distortion correcting prisms, unit,” of the first lens elements, and “third holographic optical lens or off-axis unit” are not precluded from containing optics. system" uses "lens to refer to the claim 10. aperture stop three lens units and recited in invention is to ment to achieve total internal reflection object further of the
A tilting object without systems (fingerprint for use inexpensive lens provide ridges), allowing image thus a rectilinear systems. In fingerprint in detection object produced using only to be object of the invention it is an particular, lens elements. The use of a holographic finger- for use in systems lens provide element, course, optical increases comprise molded detection which print complexity optical sys- cost and produced which can be lens elements tem. at low cost. large quantities Hebert, T., optical Robert “Off-axis “forego- patent col. 11.46-57. The integrated, injection-molded elements language referred to is the “BACK-
ing” SPIE, assemblies,” 2600, pages Vol. THE INVENTION SEC- GROUND OF 129-134, an- December describes TION,” Suprema also relies. on which approach fingerprint other to the detec- passage That states: problem, namely, tion the use of off-axis problems A of some of the description optics tilting object. This avoid using detection fingerprint involved approach requires complex the use of frustrated total internal refection can be optical surfaces which are difficult al., et ‘Versatile found Stoltzmann economically. manufacture anamorphic fingerprinting: electronic Id. col. 1 II.10-44. design manufacturing consider- SPIE, ations,” 105-116, pages Reading passages together, both it be Vol. conclude that the concern which the August 1995. These authors comes evident addresses, optical system patented that the used to form the invention and which is *15 quoted image fingerprint ridges passage of the should described the first above, correcting costly is the use of means for cor prisms optical include dis- art, practice, optical system recting optical prior In an distortion. The tortion. prisms expensive according patent, is to manu- to the achieves this cor employing alternatives, optical system to an rection with three all of which compared facture elements, employing only costly: prisms, holographic optical lens both be- ele ments, optics. and off-axis The stated prisms expensive cause themselves are invention, collimating optics purpose are re- which forms the and because quired introducing strongest Suprema’s arguments, basis for avoid aberrations. says object “it is an of the invention to
Significantly regard pres- with to the employ only provide systems lens which invention, specifi- et al. ent Stoltzmann employ lens elements and do not distortion an cally away teach from the use of holographic optical ele correcting prisms, system employing only lens ele- optical ments, optics.” Id. col. 1 II. or off-axis image finger- produce ments anything disclaimed this state 48-51.If is ridges. particular, they In state print ment, prisms, holographic optical ele system employing cylindrical that a lens- ments, optics, when either is off-axis successfully high es cannot correct for correct distortion. used as the means to compression. levels horizontal/vertical not decide if this statement As an to distortion correct- We need alternative al., fin- to a clear disavowal of claim ing prisms, Bahuguna et “Prism amounts correcting holographic scope that a to distortion gerprint sensor uses however, element,” a that would re- Optics, optics, result optical Applied Vol. 5242-5245, high to a burden. September quire holding Suprema de- pages Servs., Inc. v. Covad ele- Bell Atl. Network using holographic optical scribes See Inc., patent 1268 the '061 failed to Grp., Commc’ns 262 F.3d disclose three- (Fed.Cir.2001) (“We previously have held required by lens unit as claim 10 of the that, redefining meaning particu- or a telecentric “in a condition away ordinary lar claim terms from the prism located lens between the and the clear- meaning, the intrinsic evidence must c) aperture stop required by element ly clearly redefine a claim set forth patent.” claim 10 of the '993 Initial Deter- put reasonably term so as to one skilled in rejected mination at 116. The ALJ also patentee the art on notice that the intend- Suprema’s argument that it would have ed to so redefine the claim term. We have been obvious to combine the triplet lens that specification also stated must ex- disclosed into the device express impart hibit an intent to a novel patent, disclosed in the '060 in order to (citations terms.”) meaning to claim obvious, render the asserted claims be- omitted). quotation internal Supre- marks view, patent, cause the '051 in the ALJ’s only non-infringement argument ma’s also required failed disclose the telecen- disputed on the claim term based is its tric Suprema condition and adduced insuf- that assertion mirrors between the lens ficient regarding evidence motivation to products preclude finding elements Accordingly, combine. Id. at 117-18. infringement. Suprema But never con- found, among things, ALJ other that tends the mirrors correct distortion Suprema prove, by “failed to clear and unlikely they and it is pur- serve this evidence, pose; the mirrors seem instead to fold the convincing ... that one of ordi- optical systems axis to make the fit within nary skill in the art would have been moti- their cases. vated to combine the asserted references.” hold, finding, Id. 118. That we was Accordingly, we conclude the ALJ’s supported by substantial evidence. Ac- supported by cordingly, we affirm legal the ALJ’s con- evidence, substantial as was the Commis- establish, clusion that “failed sion’s adoption assuming thereof. Even evidence, clear and convincing costly distortion-correcting certain devices *16 claim 10 of patent the '993 is obvious in present were disclaimed and cannot be in patent view of the '060 in combination units,” between “lens mirrors that do not patent.” the '051 Id. correct distortion clearly were not dis- claimed. patent, The '060 “Identification entitled
Device,” issued on November 1971. It B. generally discloses “identification devices and more ... particularly a device which challenges also the ALJ’s employs optical apparatus for comparing holding on its obviousness defense object an to be preselect identified with a patent. asserted claims of the '993 Supre image.” ed patent '060 col. 1 II. 3-5. One that, argues ma in light prior art U.S. disclosed embodiment of the “identification (“the 3,619,060 Patent No. patent”) '060 finger print compris device” is a scanner prior combined with art Patent U.S. No. source, lenses, ing light prism, a a two a (“the 5,615,051 patent”), '051 the asserted diaphragm, plane. and a focal Id. col. 2 1. claims of the '993 would have been depicted 74—col. 3 1.31. This device is person obvious to a of skill in the art. The rejected argument, ALJ this finding Figure patent: first 1 of the a present The is described as follows: unit: “The invention relates to device and, bright more a triplet particularly, to identified, object may The to be which behind-the-stop type triple that has a wide a finger be a human on the hand of angle bright, and so that it is well field is person positioned to be identified is photographic for use on cameras.” suited light as at 26. The the second face col. 111. 5-8. The structure of prism perpen- pass beams 16 into the triplet the disclosed is described detail. image an dicularly to the face and (“Ac- See, e.g., id. col. 1 1. 63—col. 1. 7 fingerprint formed of the because the invention, light points cording aspect is reflected between of con- to one of the finger tact and second bright triplet between there is a which provided light side, comes out object face. reflected comprises, in order from the prism face 24 of the and is through single consisting positive first lens focused with an achromatic lens 28 glass lens of a meniscus form convex on onto an inclined through diaphragm 30 side, a lens located with object second plane focal separation an air between it and said first consisting negative single of a lens and Id. col. 3 11.32-40. a third lens located with an glass, lens of is the “Acromatic lens 28” focus separation air between and said second argument, above-quoted parties’ consisting positive single of a lens lens only description of that passage is the lens form, glass in a double-convex is, That no patent. contained image side of aperture stop located on *17 the “achromatic lens 28” regarding details lens, in least two of said third and which at makeup. as its structure or given, such provided lenses are said first third provide This failure to “constructional surfaces.”). aspherical lens, Suprema for the achromatic data” argues, provides motivation to combine the that the absence agree with the ALJ We system patent '060 with the lens disclosed regarding data” the ach- of “constructional patent. in the '051 patent in the '060 romatic lens disclosed per- for a insufficient motivation reference, provides to that the
Turning second in art to seek out that data son of skill the Triplet” and patent “Bright '051 is entitled Suprema that patent, from '051 July on 1997. It discloses a the was issued to substi- has insufficient evidence “triplet,” triplet novel a three-lens lens shown in triplet tographic triplet tute the lens disclosed camera lens of '051 the patent patent fingerprint for the “achromatic lens 28” of the for the scanner achro- noted, only Moreover, '060 the ALJ the patent. As patent. matic lens of the '060 testimony pertinent expert provided gives description since it no of the achro- Dr. Suprema expert, was that of its Jose structure, matic lens’ there is no indication Alvarado, in Manuel which he stat- Sasian that the achromatic lens of the patent '060 ed: triplet triplet is a lens that a lens would
Q. Why they be would motivated to do place. be suitable patent so '060 with the [combine the Accordingly, affirm the we Commission’s patent]? '051 holding failed to adduce to, A. the need to create Because of convincing clear and evidence that the as- finger print system. patent The '060 patent serted claims of the '993 would doesn’t the constructional data disclose person have been to a obvious of skill for the lens 28. a person achromatic So the art. of ordinary skill would have the need to find what achromatic the lens that could IV. be triple patent. the of the '051 Q. you explain why Can for me explained, For the reasons we vacate the replaced lens 28 to be would need judgment regarding Commission’s patent? '060 fringement patent '344 and vacate Because, A. again, the patent '060 does the limited order to the exclusion extent that, not disclose construction so predicated was that finding. We affirm person a lens put needs and then that holding that Suprema Commission’s person very well triplet could use the however, directly infringes patent, '993 patent, they '051 because are well- leave intact exclusion order re- known lenses. garding the RealScan-10 and RealSean- 10F (Tr. optical systems. 1280-81). person That a skill in the art “could scope of the exclusion must order very triplet well” patent use the of the '051 adjusted thus accordingly be appears —it is insufficient for the reason skilled artisan the previously two of identified out specifically unique seek lens products may subject be to the order.7 Moreover, disclosed in that reference. the Accordingly, we vacate limited exclu-
ALJ patent found that the '051 discloses sion order proceedings and remand for system lens “photo- is well suited for accordance with this decision. graphic cameras,” fingerprint scan- hold, ners. That we finding, sup- V. ported by substantial evidence. The '051 ap itself We turn now to Cross indicates the lens it dis- Match’s peal closes photo- regarding patent. “is well suited for use on The Com graphic fully adopted cameras.” '051 col. mission the ALJ’s de 1.11.7- initial Thus, Suprema adduced insufficient regarding patent; ev- termination this idence of motivation to substitute ALJ pho- found that Cross Match failed *18 RealScan-10, RealScan-10F, products 7. The infringe to found the '993 Real- patent appear only Scan-D, RealScan-DF, to be RealScan-10 and and when used with RealScan-10F. Initial Determination at 168. Mentalix's software. FedSubmit products But the to found
1369 scanner, “acquiring, it claims that evidence of the preponderance prove storage” require or does not infring- processing for product any Suprema accused that perform steps scanner all that the patent. that On claims of the asserted ed Instead, process. “capturing” claimed challenges the ALJ’s Match appeal, Cross argues Match that the scanner it Cross “capture” as of the term interpretation process. be involved in that Cross need pat- of this in asserted claims appears that the scanner need Match also contends improper the ALJ’s and claims ent image and that only “keep” or “save” the incor- term led to an of that construction by a any “processing” thereof can be done finding. non-infringement rect computer. interpretations Based on these 1 of the asserted representative is Claim “capture” image, an of what it means claims and states: contends the ALJ and Com- Cross Match reliably capturing print A method for wrong to conclude that all mission were images, comprising: performed by steps of claim must be (a) operation with a initiating camera occur, scanner for scanner (f) step wrong were to conclude of (b) object to ob- scanning a biometric “determining claim 1—the whether image; tain a scanned capture”— for image ready scanned is (c) image; the scanned processing (e) (d) have steps must occur after (d) of indi- determining print quality performed. been images in the scanned print vidual making arguments, Cross In these image; position in the difficult of puts Match itself (e) im- prints in the scanned detecting pro a claim construction it challenging age; and Trade Inc. v. Int’l posed. See Tessera (f) determining whether the scanned (Fed.Cir. Comm’n, F.3d ready capture for based on image is Pharma, 2011); Labs. v. Hereon Key print images expected number (Fed.Cir.1998) 161 F.3d 714-15 Corp., (e) quality and the step detected (“We as Hercon’s highly questionable find step print images determined court erred appeal that the trial sertion (d). very construction adopted it when 111. 4. col. 101. 59—col. through the upon the court urged Hereon proposed to the ALJ that Cross Match essence, Hereon testimony Guy. of Dr. In preamble used in the “capture” as by adopt that the trial court erred asserts (f) by the “acquiring, claim 1 means step Al at trial. ing position it advocated scanner, Ini- storage.” or processing for court is appellate the function of an though at 59. The ALJ tial Determination trial, at we correct errors committed And, this construction. Id. at 60. adopted on Hercon’s look with extreme disfavor construction, the con- on this ALJ based the trial court committed assertion products do not Suprema’s cluded that Ordinarily, claim construction. error they claims because do fringe the asserted error, waiver, invited estoppel, doctrines of (e) (d) and before the perform steps party from prohibit like would or the processing ... for image “acquired that it had position ‘error’ a asserting as “ready it is deemed storage” i.e., before trial.”). — And, Cross advocated and, capture” ultimately, “captured.” asking peculiar situation Match is in the '562 “capture” for a construction suggests Match now Cross from that which patent which differs capture wrong; ALJ’s construction of *19 1370 ner, for the processing
advocates same term the '344 for or storage.” We also though patent, patent even incor- conclude that the ALJ was correct to con- porates by patent. that, (f) reference the In- construction, '344 step clude under this deed, Suprema and the Commission ask necessarily requires a determination of that we appeal resolve Cross Match’s on whether the “scanned image” ready is for grounds, finding these that it either waived “acquiring, by scanner,” the based on the any right to seek a different construction (e) quality number and checks of steps and court, “capture” of the term (d). before this or Given that language, claim as a mat- at least is estopped doing from so. logic, quality ter of those checks must precede the determination made under
Cross Match contends it did not waive (f), step step since that is based on the right arguments to make the it devel- checks, and, results from the since the ops here because it really asking is not for ultimately performs capture, scanner construction; a new simply it is debating the preceding performed checks must be how that construction should itself be con- by the components. scanner or one of its strued. position While Cross Match’s is a Altiris, Symantec See Inc. v. Corp., 318 really stretch —it seems to unhappy be (Fed.Cir.2003) (“We F.3d 1369 look proposed the construction it and to be if, to the language claim to determine as a asking something for directly at odds with matter logic grammar, steps of a [the that original construction —we need not method performed in rely claim] must be on waiver to affirm the Commission’s written.”). order non-infringement finding on the pat- '562 ent because we conclude that the Commis- The claim language plainly requires here sion’s on the merits was correct. See, this construction. e.g., patent '562 Specifically, we conclude that the ALJ’s 11 col. 11.1-4 (“determining whether the construction “capture” of the term is cor- image ready scanned capture is for based rect and that the ALJ was correct to con- on prints the number of in step detected itself, “capture” clude that and the (e) and quality of the print image preceding determination of whether (d).” in step (emphasis added)); determined image “ready capture,” is for in the claims (claim id. col. 11 11. adding 24-36 4 to claim of the must occur before the steps “(g) capturing the scanned im- image scanned is comput- transferred to a age “(i) captured image” obtain a er. We also hold that infringe- the ALJ’s forwarding the captured image to a com- ment finding supported by is substantial puter.”). The description written evidence. computer of the accused supports also the view that “cap- products performs checks, i.e., steps performed by ture” is the scanner and not (e) (d), point with software at some by a separate computer. Id. col. 11. 18- computer receives the image after (“The method capturing includes So, from the scanner. in the accused scanned image, processing captured products, those checks necessarily occur image, forwarding captured image sometime after the scanner determines computer.”). to a A component of the image whether the “ready capture.” is scanner, such as residing software on a
There is dispute no real regarding computer coupled to the scanner —which “capture” construction of since the computer part ALJ per- of the scanner—can adopted Cross Match’s proposed construc- form functionality, the scanner’s including (f) tion. adopt We that construction as well: step step. determination See id. “capture” (“In means “acquiring, by the scan- col. 6 11. 37-57 an embodiment of the
1371 invention, respectfully concur-in-part 104 includes I and dissent- scanner present print in-part. includes 116 [which] ... a controller func- manager 117.... Control
capture
117
I
manager
tionality
print capture
... of
computer
out
... a
can be carried
[ ]
appeal
investigation
This
arises out of an
scanner.”).8
to the
coupled
violations
alleged
into
of Section 337
(a
Suprema
company)
Korean
and Menta-
that,
in the
it is undisputed
Because
(located
Plano, Texas).
lix
Suprema
already
has
products,
accused
scanner
fingerprint
manufactures
scanners that
image
when
computer
to a
transmitted
imports and sells for
into the
importation1
quality
number and
checks
purported
function,
To
Suprema’s
United States.
can-
performed,
products
accused
separate
scanners must be connected to a
claimed. Ac-
perform
the method as
running
computer
special
software.
hold
non-
cordingly, we
the ALJ’s
Suprema does not make or sell this soft-
infringement finding
as to the '562
ware,
provides
Development
but
Software
premised on its correct construction
(SDKs)
Kits
that allow
customers to
its
capture
understanding
the term
and
operate
create their own
software
claim 1. We affirm the Commis-
scope of
The
utilities that
scanners.
SDKs include
ruling finding
337
sion’s
no violation
scan-
operate various functionalities of the
in-
that no
articles
grounds
imported
on
ners,
instructing
include
and also
manuals
pat-
fringe the asserted claims of the '562
Men-
customers on how use the SDKs.
ent.
talix,
in the
Suprema’s
one of
customers
PART,
AFFIRMED IN
VACATED IN
States, imports
finger-
Suprema’s
United
PART, AND REMANDED IN PART
after
print scanners
sells the scanners
importation, along
oper-
with software to
REYNA,
concurring-in-
Judge,
Circuit
the scanners. Mentalix’s software
ate
dissenting-in-part.
part,
included
uses some
functions
Suprema’s SDKs.
majority
the Interna-
concludes that
here,
authority to
As
relevant
the Commission
tional Trade Commission lacks
(“Sec-
scanners,
Suprema’s
when
find a violation of 19
1337
found that
U.S.C.
337”)
software,
premised
practice
induced
with Mentalix’s
tion
used
underlying
capturing
pro-
method for
patented
where “the acts of
fingerprints.
The Commission
post-importa-
cessing
direct
occur
infringe-
Maj. Op.
agree
at
I
Mentalix liable for direct
tion.”
1360. While
found
majority’s
integrating
of this case
its software
disposition
with the
ment
join my
using
scanners
the inte-
respects,
Suprema’s
in all other
I cannot
scanners
States.
colleagues’
negate
grated
decision
the Commis-
United
statutory
stop
Suprema
induced
also found that
sion’s
The Commission
Accordingly,
actively
at the
aided and abetted Mentalix’s
border.
argu-
importation at least
imported
and sold after
8. Cross Match makes
number of other
support
claim.
ments
See Cer-
unit of each accused scanner.
one
each,
con-
While we do not
we have
address
Devices, Components
Scanning
tain Biometric
unpersuasive.
them all and
them
sidered
find
Thereof,
Software, and Products
Associated
Same,
Containing
337-TA-
Inv. No.
USITC
import-
parties stipulated
1. The
(Sep.
No.
WL 4790344
Order
and sold for
at least one unit
ed
16, 2010).
scanner,
Mentalix
of each accused
and that
by collaborating
requires infringement
with Mentalix
fringement
Section
*21
helping
importation,
the scanners and
Men-
time of
import
to
and because induce-
with
adapt
“completed”
talix
to work
the
is not
software
ment
until there has
practice
patent-
infringement,
to
the
imported scanners
been direct
the Commission
Finding
Suprema
that
may
ed method.
will-
not invoke inducement
to ban the
the
of
fully blinded itself to
existence
the
importation
already
of articles that are not
infringing
of
patent and the
nature
the
of
infringing
impor-
in an
state at the time
encouraged,
1360-61,1362-63.
it
the
activities
Commission tation. See id. at
infringe-
held
liable
induced
My problem
majority’s opinion
the
with
271(b).
under
Accord-
ment
35 U.S.C.
ignores
that
337
Section
is a
ingly, the
issued a limited ex-
Commission
designed
provide
trade statute
to
relief
banning
entry
order
from
into the
clusion
trade,
specific
including
from
acts of unfair
imported
Supre-
United States articles
importation
acts that lead to the
of articles
ma or Mentalix that
the patented
will
harm to a domestic
result
See
method.
Certain Biometric Scan-
industry by
virtue of
of a
Devices,
Thereof,
ning
Components
Asso-
patent.
negate
valid and enforceable
To
Software,
Containing
ciated
and Products
a statutory
remedy
both
trade
and its in-
Same,
337-TA-720,
No.
USITC Inv.
Pub.
relief,
majority
tended
the
overlooks the
¶
4366,
1
No.
Limited Exclusion Order
Congressional
337,
of
purpose
Section
(Feb.2013).
long
agency practice by
established
conducting
Commission of
unfair trade in-
II
vestigations
based on
in-
induced
of addressing
Instead
the merits of the
fringement,
precedent
and related
this
in-
Commission’s determination of induced
practice.
Court
this
In
confirming
fringement,
majority
takes
unnec-
end, the majority has created a fissure in
essary step
addressing
of
legality
through
the dam of the U.S. border
which
authority
the Commission’s
to
conduct
ensue,
circumvention of Section
will
337
337 investigation
Section
that is
based
thereby harming
patents.
holders of U.S.
allegations
infringement.
induced
majority
concludes
the Commission
A
authority
did not have
to
exclu-
issue an
decades,
sion order
this case
statu-
because “the
For
has
en-
tory grant of
cannot
complaints
337
tertained
and found Section
proscribed
extend
the conduct
respondents actively
337 violations where
271(b)
underlying
where
acts of
di-
induced direct
in the Unit-
States,
rect
occur post-importation.”
ed
not
did
oc-
Maj. Op. at
According
major-
1360.
until
cur
after
of the articles
phrase
ity,
infringe”
“articles
in involved.2 This Court has affirmed Com-
that —
See,
132, 146,
2567284,
e.g.,
Inkjet
Cartridges
Certain
Ink
mination at
2011 WL
at
*76,
20, 2011)
(reconsideration
Components Thereof,
Printheads and
(May
USITC
*82
337-TA723,
(Feb.
granted
grounds);
Optoelec
Inv. No.
Pub. No. 4373
on other
Certain
2013),
3,
Devices, Components Thereof,
Comm'n
at
WL
Notice
2011
tronic
(Oct. 24, 2011),
Same,
Containing
8883648
Initial Determina
Prods.
USITC Inv. No. 337-
79,
3489151,
(Jun. 10,
TA-669,
(Nov.2011),
tion at
2011 WL
at *49
Pub. No. 4284
Initial
2011);
7628061,
Digital Set-Top
Certain
Boxes
Determination at
2011 WL
at
nom.,
(March 12, 2010),
Thereof,
Components
USITC Inv. No. 337-TA-
*45
'd sub
Emcore
aff
Comm'n,
(Jun.2012),
Corp.
Fed.Appx.
Pub. No. 4332
Initial Deter
v. Int’l Trade
449
long
has
the Con-
recognized
vi-
This Court
of Section
mission determinations
337 is to
gressional purpose
Section
premised on induced
that are
olations
provide “meaningful
pat-
available to
this
relief
Other
decisions
fringement.3
by enabling the
to issue exclu-
entees
ITC
Court,
affirming
an exclusion
while
stop infringement
au-
order,
sion orders
recognized
Commission’s
Assoc.,
v.
Mezzalingua
Inc.
337 violation
border.” John
thority
premise
Section
Comm’n,
Trade
660 F.3d
infringement.4
Int’l
on a
induced
*22
added).
(Fed.Cir.2011)
orig-
(emphasis
As
history
longstanding agency
of
This rich
enacted,
inally
fruit
Section
authorized the
legal precedent
337
practice
and
acts or
pre-
investigate
to
unfair
by Congress
law enacted
borne of
articles,
importation
in the
of
infring-
practices
of
cisely to address
including
those
of
relief at
related to
establishing
articles
ing
placed
and
on the President
point
importation,
patents,
the border.
U.S.
179,
665006,
(Fed.Cir.2011)
at
(non-precedential); Cer
Determination at
1997 WL
918
31,
(Jul.
1997);
Voltage Regulators, Components
Cabi
*101
Certain Concealed
tain
Thereof
Same,
Inv. No.
Containing
Plates,
USITC
Inv.
USITC
Prods.
Hinges
Mounting
and
and
net
337-TA-564,
(Oct.2011),
337-TA289,
Determination,
No.
En
Pub.
4261
Initial
1989
No.
38,
*48,
at
2011
608804,
28, 1989);
forcement Initial Determination
(Sep.
at
*52
Cer
WL
6980817,
(Mar. 18, 2010) (violation
at *31
WL
Powder,
Composi
and
tain Minoxidil
Salts
exclusion
based on induce
of limited
order
Treatment,
Inv.
USITC
in Hair
tions
Use
for
ment);
Having
Chips
Certain Semiconductor
337-TA-267,
582867,
*6-7
WL
at
No.
1988
Dynamic
Memo
Synchronous
Access
Random
16, 1988);
(Feb.
Sandwich
Certain Molded-In
Same,
Containing
ry
and Prods.
Controllers
and
Their Installa
Panel Inserts
Methods for
337-TA-661,
4266
No.
Pub. No.
USITC Inv.
337-TA-99,
tion,
No.
Inv. No.
Pub.
USITC
42,
(Oct.2011), Initial Determination at
2011
9,
1982),
Op.
(Apr.
(May
at 8
1246
Comm’n
6017982,
(Jan. 22, 2010);
at *85
WL
Certain
nom.,
1982),
Young Eng’rs, Inc. v.
sub
aff'd
Digital
and
Contain
Televisions
Certain Prods.
(Fed.Cir.
Comm'n,
F.2d 1305
721
Trade
Int’l
337-TA-617,
Same,
USITC Inv. No.
ing
Devices,
1983);
Inv.
USITC
Surveying
Certain
1124461,
10,
Op. at
2009 WL
at *5
Comm’n
337-TA-68,
(Jul.1980),
Pub. No. 1085
No.
23, 2009),
(Apr.
part
in relevant
sub
aff'd
19,
WL
at
0080
Comm'n Determination
Comm'n,
nom., Vizio,
605
Inc. v. Int’l Trade
7,
594364,
(Jul.
1980).
at *10
(Fed.Cir.2010); Certain Baseband
F.3d 1330
Chipsets,
Chips and
and
Processor
Transmitter
Vizio,
(affirming violation
infringement article legit- of enabling case circumvention infringing in an state at the moment of not objective to imate of Section 337 legislative still form the basis of a importation can border, articles involved stop, at the if 337 violation Section First, holding majority’s unfair trade. infringement giving tied to conduct rise Section 337 importers allows circumvent liability. ex- infringement. For liability for indirect import ample, importer could disassem- engages protracted an majority machine, or components patented bled a at the view that 35 analysis arrive 1376 capable performing
import types article one of the conduct proscribed steps all of of a patented almost meth- Section 337. See Certain Electronic De- od, vices, 337-TA-724, assembly but reserve final Inv. Comm’n Op. last No. 18-19, part performance of the last at step for 2012 at WL *12-13 (Dec. and, 2011); the end-user the United States U.S.C. 1337(a)(l)(B)(i) fall majority’s holding, under the outside (making unlawful statutory “importation,” the Commission’s reach because “sale importation,” for infringement direct would not have within oc- “sale the United States after articles). Yet, importation. until importation” infringing curred after this Given limitation, recently recognized Court has that existing ability “there this to file a is no reason immunize the inducer from Section 337 complaint based on theories of liability infringement for indirect simply infringement indirect even becomes more parties important because have structured for patented process- their owners of single conduct so that no majority defendant has es. But now eliminates 271(b) all necessary committed the acts to give as a for basis Section Techs., liability.” violation, rise to Akamai leaving only Inc. v. 337 possibility Networks, Inc., Limelight enforcing 692 F.3d patents method at the Commis- (en (Fed.Cir.2012) banc). Likewise, 271(c) sion under to the extent that the inducing an importer imported especially should articles are made or escape able to liability adapted be for delaying patented use in practicing importation. direct until after capable method are not of substantial The fact remains “one who aids noninfringing uses. Whether obtaining a abets an is likewise an in- remedy this form of method 82-1923, fringer.” H.R.Rep. No. continues to be viable at the (1952). seen, Section 337 should not be inter- Commission remains to be in light of preted in manner enables this form majority’s broad holding “there of circumvention. infringe’ no ‘articles ... at the *25 importation time of when direct infringe- Second, majority’s holding the allows im- yet Maj. Op. ment has to occur.” at 1352.7 porters to circumvent Section 337 liability all patent for almost of majority’s forms method also view overlooks the fringement involving not product-by-pro- practical realities of international trade. A cess claims.6 The already Commission de- common threat general to trade relief in is complaints clines to entertain based on the place modification of articles to them allegations of direct of orders, meth- the scope outside relief e.g., 271(a), § od claims under recognizing that or antidumping exclusion orders. These patented a only infringed method is by practices sophisticat- circumvention can be States, “use” in the Here, United which not ed and elaborate. majority the le- inducement, importation 6. Violations based Op. liability articles at 1360-61. Like according patented 271(c) manufactured abroad to a contributory under process separately are requires codified showing infringement, of direct 337(a)(l)(B)(ii), at issue not here. which in the case of method claims will not See, importation. e.g., occur until after ERBE, Although majority the (affirming indicates that F.3d at 1037 Commis- 271(c) infringement” “standards for can contributory be sion's no induced importation, met time of it also holds there where was no evidence of that inducement "completed” is not until direct of method claim in the States). infringement. there has been Maj. direct See United sophis- ly provision” includes a “certification in its common and least the most galizes circumvention, importation form of importers may ticated exclusion orders which in a state. The the article disassembled certify they seek im- that articles to within the assembly is that United idea port not and are not do therefore scrutiny article from removes the States example, the order. For covered at the border. With re- and enforcement against limited exclusion order issued as- to of articles whose gard provides that “per- and Mentalix “arti- sembly in the United States creates seeking scanning sons to biometric import it infringe,” while is true that cles—that potentially subject ... to Or- devices this may be able to sue in holder required that ... may certify der be to to court, likely personal it face district would belief, knowledge the best of their judgment jurisdiction and enforcement of being not products imported are excluded hurdles, certainly not be able to and would 1 of entry paragraph from under this Or- importation of the arti- stop disassembled Scanning De- der.” Certain Biometric major- anything, cles at border. If ¶ vices, 3. I view Limited Exclusion Order ity’s creates a new threat for U.S. holding an trade the Commission as international patent holders.8 experience agency expertise with the view, my In 337 was intended to Section appropriate to fashion exclusion orders of to stop at the border provide distinct relief scope. articles in unfair imports of that used why no this trade. I see rational reason involving In secret mis- appeal trade form of relief U.S. holders appropriation, recently we held be eliminated when acts of induce- should may consider conduct abroad For of Sec- purposes ment are involved. determining imports whether related liability, I no distinction be- tion see See Ti- conduct violate Section 337. an article that meets all importing tween Comm’n, Int’l Grp. anRui Co. v. Trade apparatus of an claim limitations (Fed.Cir.2011). 1322, 1331-32 661 F.3d border, actively inducing crosses the panel in deemed it Just as the TianRui infringement by an article and importing unlikely highly Congress intended encouraging another to use that article to reach which Section 337 instances In both practice patented method. party was careful ensure accused cases, practiced invention is patented conveying actual trade act country authority as a within the without States, *26 secret occurred outside the United is importation. majority ap- result of The equally unlikely I it is Con- believe possibility parently concerned with the Section 337 would not gress intended that interpretation could result this respondent in which reach instances remedial orders that exclude overbroad actual act of careful to ensure may give may not later articles not occur until direct does depending on rise direct the customs ter- imports have entered Maj. Op. the importer. the intent of See majority The regular- ritory the United States. But at 1362-63. the Commission Op. holding Maj. 4. As majority fringement. See n. believes that will 8. demonstrates, that is not the case. this dissent not have adverse effects the Commission's so, Congress, up it is provide But even if it were statutory specific mandate to relief Court, points repeal the Commission’s man- practices, trade this from unfair 271(a) 271(c) grounds is afford- obviating any that sufficient relief need date on border, relief, ed in the law. at the from induced in- elsewhere concluding Therefore, errs in otherwise. I dissent-in-part.
must AG,
DEUTSCHE BANK
Plaintiff-Appellant,
v. STATES, Defendant-Appellee.
UNITED
No. 2013-5062.
United of Appeals, States Court
Federal Circuit.
Feb.
