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Suprema, Inc. v. International Trade Commission
742 F.3d 1350
Fed. Cir.
2013
Check Treatment
Docket

*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 545 F.3d 1340 imported. dispute Cross Match does not Cir.2008), Alloc, Inc. v. International the scanners have substantial non- Commission, (Fed. 342 F.3d 1361 Trade uses, infringing Suprema contends .2003). Cir put other customers have them to such facts, ar- disputes Suprema’s uses. On these contends The Commission *8 authori- infringing gument regarding scope that no articles were ever im- of its 337(a)(1)(B)®. According § ported. Accordingly, Suprema ty asserts under Amgen, ruling jurisdictional U.S. 2. Our not a one. The these circumstances. See Inc. v. is 1532, Comm’n, question we is not whether the Com address Trade 902 F.2d 1535 nt'l may investigation an where (Fed.Cir.1990) mission initiate (noting that the Commission is implicat theories of induced are jurisdiction and then correct to first assume ed; simply we conclude determine merits of claim where 337(a)(l)(B)(i) may predi § violation not be asserted). are claims theory cated on a of induced 1358 Commission, Comm’n, 1352, (Fed. “articles that ... in- Trade 400 F.3d 1361 Cir.2005).

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. 142 L.Ed.2d 881 indirectly infringing at the time of construction, any case statutory our importation. The Commission also cites analysis begins language with the Devices, which, Certain Electronic in its statute.”) (internal quotation marks omit view, change the simply did not law and ted). Section 337 states: that all forms of reiterated indirect (1) Subject (2), paragraph fringement can to a the follow- lead violation of 3S7(a)(l)(B)(i). ing unlawful, and when found with,

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. 81 L.Ed.2d 694 The Commission’s mandate to deal with (1984). framework, Under that “a review matters of patent infringement under ing court must first Congress ask ‘whether 337(a)(1)(B)® premised is thus on the directly spoken has precise question “importation,” importation,” “sale for ” FDA issue.’ v. Brown & Williamson “sale within the impor- United States after Corp., 120, 132, Tobacco 529 U.S. 120 S.Ct. tation” of ... infringe.” “articles Id. (2000) L.Ed.2d (quoting Thus, the Commission’s extends Chevron, 2778). 467 U.S. at 104 S.Ct. to “articles that ... a valid and so, “If Congress has inquiry done is at patent.” enforceable United States end; the court ‘must give effect to the is on infringing focus nature of the unambiguously expressed intent of Con at the importation, articles time of not on ” gress.’ Chevron, (quoting Id. 467 U.S. at parties intent of the to the 2778). If, however, 104 S.Ct. “the imported goods. in question ambiguous statute and the The same focus is evident also from the agency’s reasonable,” interpretation is “a main remedy grant, it can exclusion orders court must agency’s defer to an construc *9 imported on the articles: tion of a statute governing agency con (d) duct.” Cathedral Candle v.Co. U.S. Int’l entry Exclusion of articles from (1) determines, a If the Commission United States occurs. See In the Mat- Devices, investigation result of an under this sec- ter Certain Electronic USITC of tion, 337-TA724, there is a violation of this Inv. No. 2012 WL (ITC section, 2011). it shall direct that the articles *12-13 Dec.

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 545 F.3d at 1357. But it importation. does not broaden Commission’s *10 1360 clear the nature of the

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), 342 F.3d 1361 also by Qualcomm. challenge There was no to compel does not us to reach different authority predicate Commission’s Alloc, In in a conclusion here. brief dis- urged. violation on the theories Our hold- cussion we affirmed a Commission following: to the ing was limited infringement. no But there induced in that to the Com- challenge Because the Commission based its find- was no case DSU, inducement ing approach by on an overruled mission’s over claims, premised holding court vacates remands and we our this infringe- simply fact that there was no evidence ITC’s determination of induced agree the ITC via 4. We do not with the dissent to- dissent fears can be addressed holding impact day's materially 271(a) 271(c), will the ITC's resort or even ability carry holding out its mandate. Our 271(b) direct oc- where the asserts; is far narrower than the dissent pre-importation. curs explain, virtually all we mischief 2011). infringement by any- There, of either direct Dec. pertinent issue — one—or of an intent to induce the im- was raised. analyzed The Commission porters: statutory provisions we discussed above

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, 342 F.3d at 1374. Alloc is defines infringement. Section uninformative with question 271 defines infringement to include di- presented here. (35 271(a)) rect U.S.C. Simply put, the issue today we address and the two varieties of in- indirect has never presented been to or decided fringement, active inducement of in- unpersuaded by us. We are either Cross fringement contributory infringe- Match’s or the Commission’s efforts to (35 (c)). 271(b), ment Thus, U.S.C. Kyocera read more into and Alloc than is 337(a)(l)(B)(i) section covers imported there. See United States v. L.A. Tucker articles directly or indirectly Lines, Inc., 33, 38, Truck 344 U.S. 73 S.Ct. fringe when it refers to “articles that— 67, (1952) (“[T]his 97 L.Ed. 54 Court is not infringe.” interpret phrase We also by prior bound jurisdiction exercise of infringe” “articles to reference the that — a case where it questioned was not status of the articles at the time of im- silentio.”); passed sub Beacon Oil Co. Thus, portation. infringement, direct or (Fed.Cir.1995) O’Leary, 391, v. 71 F.3d indirect, must be based on the articles (“Stare applies only decisis to legal issues imported to satisfy requirements that were actually decided in a prior ac- of section 337. tion.”) parties Devices, also focus aon recent Com- Certain Electronic 2012 WL ruling, mission In the Matter Certain at Despite general *8-9. this Devices, Electronic discussion, USITC Inv. No. merits, 337- on the the Commission (ITC TA-724 2012 WL ultimately *8-9 infringement: found no Thus, dicta, proved ruling, have a violation Commission’s if not might even S3G Instead, if it had indirect proved binding of section 337 would not be on us. we infringement of method claim 16. S3G intent, by congressional are bound which so, however, adopt and we failed do evident from statutory language.5 findings to that effect. Be- the ALJ’s importation, cause S3G has shown F. impor- after importation, sale for or sale Because we find Commission had no

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 605 F.3d 1330 3. See (Radio) Chips, Chips, Receiver Power Control induced No. 337-TA-617 based on in Inv. Same, Inv. No. Containing USITC Prods. and claim); Emcore, 449 infringement of method 337-TA-543, (Oct.2011), Pub. No. Initial 4258 (affirming opinion vio- Fed.Appx. 918 without 151, 6175074, at at WL Determination 2011 on in- in Inv. No. 337-TA-669 based lation 10, 2006); (Oct. Masking *83 Foam Certain claim); apparatus duced 337-TA-528, No. Inv. No. Pub. USITC Tape, (affirming Young Eng’rs, 721 viola- F.2d 1305 (Dec.2007), 14- Initial Determination at 3968 No. based on contribu- tion in Inv. 337-TA-99 4824257, 21, 15, (Jun. 2005); WL *20 2007 at pat- process tory infringement of and induced Transmission Certain Automated Mechanical ents). Medium-Duty Heavy-Duty Trucks Sys. and for No. USITC Inv. Thereof, Components v. Int'l 4. See ERBE GmbH Elektromedizin 337-TA-503, (Aug.2007), Ini Pub. No. 3934 (Fed.Cir.2009) Comm’n, 566 F.3d 1028 4473082, Trade 154, Determination at 2007 WL tial finding (affirming of no direct 7, 2005); (Jan. Display Con at *101 Certain claims); Kyocera underlying inducement Same, USITC Containing trollers and Prods. Comm’n, 545 F.3d 337-TA-491, Determination, Corp. v. Int’l Trade Wireless Inv. No. Initial (Fed.Cir.2008) (reversing rul- 1184745, 14, 2004); violation 1340 (Apr. WL *116 induce); Alloc, ing finding no to after intent Logic Systems Certain Hardware Emulation Comm'n, 342 F.3d Trade Inv. No. Inc. v. Int’l USITC Components Thereof, 337-TA-383, 1999), (Fed.Cir.2003) (Jan. no intent (affirming Pub. No. 3154 induce). (Mar. 6, 1998), Notice at 2 Initial Comm’n authority exclude such articles at The Commission’s broad de- 1930, from the rives nature of relief it is See Tariff Act of ch. border. (1930).5 provide. intended to Exclusion at the bor- III, 337, 497, Title 46 Stat. 703 (and, cases, cease der some and desist 1974, Congress expanded In the Commis- infringing directed at al- order articles authority by amending sioris Section 337 imported) only form ready is the of relief Commission, itself, to order allow the investigation. in a In available Section 337 of articles involved unfair the exclusion manner, supple- this Section 337 1974, acts See Trade Act practices. ments remedies (1975). III, ch. 88 Stat.1978 Title courts, provides available federal also provide In with intention to unique form of pre- relief law: remedy protection “more effective venting unfairly traded articles from en- property Con- rights,” U.S. intellectual tering territory. U.S. customs Con- eliminated, gress investiga- provided gress remedy this broad because *23 involving property tions certain intellectual recognized importation that any “[t]he of requirement rights, injury the domestic infringing derogates from merchandise the prior in the of Section contained version statutory right, diminishes the value of the 100-71, S.Rep. No. at See 127-29 property, indirectly intellectual and thus (1987); 1, 100-40, H.R.Rep. pt. No. at 154- public H.R.Rep. harms the interest.” No. (1987). Congress strengthened 56 thus 100-40, 154, words, at other 156. In im- the role of the Commission in preventing ported articles in unfair involved acts of competition unfair foreign by providing a injury inflict on the in- U.S. more effective enforcement at mechanism dustry simply by holders virtue point Congres- the At no border. the any of importation, apart from acts occur- development sional of Section was the 337 ring importation. after Under Section authority Commission’s limited to cer- 337, the unfairly once traded article is practices tain acts or constitute the harm imported, is done. fringement. differently, Stated the statute on its face authorizes the Commission to B unfair investigate practices all acts or re- majority justifies reading a narrow lated to importation that are harmful to of 337 proceedings Section pat- U.S. trade via of a U.S. at the Commission focused “on are the ent. no Congress There is indication that infringing nature of the articles at the time prohibit intended to the from importation, not on the intent of the investigating leading acts of to inducement parties imported with the to infringement. Congress Had intended goods.” Maj. Op. majority at 1358. The limitation, such it would have amended misunderstands the nature pro- in rem Section so require. generally 337 to See at ceedings the Because Commission. States, 209, v. United U.S. 543 jurisdiction Commission has in rem Whitfield over 214, 687, (2005) 125 160 611 S.Ct. L.Ed.2d importation, imported articles sold for or (“[I]f had create Congress intended to importation sold after into the United envision, petitioners scheme States, it would have authority it has to exclude terms.”). so in products imported done clearer intended or to be sold 356, II, 316, (1922). provenance 5. The dates back 943 Section 337 Tide 42 Stat. 1922, early as See as 1922. Tariff Act of ch. 271(a) (c) essentially U.S.C. define Congress’s dele future virtue in the infringe” purposes for of Sec- to commerce “articles power regulate of its gation at liability. Maj. Op. tion See 1360-61. unfairly foreign nations exclude majority, inducing con- entry According from into the to merchandise traded to article v. Strana duct does not “become tied” an States. See United Buttfield 349, 492, han, 470, underlying until direct 24 S.Ct. 192 U.S. (1903). Thus, happens. disagree. one in id. I To at least See L.Ed. 525 infringe- extent direct importation, importation induced of sale for stance article, inducing ment an acts required, and involves importation sale after is or sufficient, to an at the each ju tied such article time trigger Commission’s act of occurs. For investigate alleged purposes viola inducement risdiction 337, See, inducing acts e.g., long Certain Section as of Section 337. tion Assemblies, importation, Inv. include Trolley USITC sale Wheel (Nov. 887-TA-161, importation of articles Pub. No. 1605 sale after involved No. in the 1984), at direct United Op. Comm’n 0084 WL 1984). States, inducing conduct tied to “ar- (Aug. *4 But the Commis infringe” and the Commission issue an exclusion order ticles—that authority sion’s investigate has such conduct. than rem in nature because it is more element,” personam incorporates an “in Contrary majority’s holding, to the Int’l Trade Kyocera Corp. Wireless v. see reference in Section 337 to “articles —that *24 (Fed.Cir. Comm’n, 1340, 545 F.3d 1357 infringe” nothing does to exclude induced 2008), imported at future and is directed of acts infringement type from the unfair Hence, “focus” articles. the Commission’s designed remedy. to Sec- Section 337 with ex perfectly on articles is consistent 271, defined, § like in tion is much 337 importa preventing orders future clusion may that occur before terms of conduct inducement, (and, in case of future tion the precise importa- moment of and after the infringement) based on demonstrat direct its by tion. Section 337 is not Because direct in instances of inducement and ed to a time when the specific terms confined fringement in the United States. “infringe,” the ma- imported articles must 271(a) (c) § to in and Thus, jority using errs while the Commission examines temporal introduce a strict limitation they imported as are to determine articles liability infringement which theory it is not the moment on infringement applies, which “complete” purposes for of requirement that the arti- must be constrained a remedy viola- import- authority to infringing in an state when Commission’s cles be tions of expressly applies only not Section ed. Section 337 also, importation, but in to the moment of Ill alternative, occurring to sales before give to importation and after that can rise in perceive majority’s holding I this liability. An that is

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.

Case Details

Case Name: Suprema, Inc. v. International Trade Commission
Court Name: Court of Appeals for the Federal Circuit
Date Published: Dec 13, 2013
Citation: 742 F.3d 1350
Docket Number: 19-1564
Court Abbreviation: Fed. Cir.
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