United States: En Banc Federal Circuit Affirms ITC's Authority To Issue Exclusion Orders For Induced Infringement Of Method Claims

Reversing an earlier panel decision, the en banc Federal Circuit confirmed that the ITC has the authority to issue exclusion orders against imported products that ultimately are used to infringe method claims, even if those claims are not infringed until after the product has been imported into the U.S. In the matter of Suprema, Inc. v. ITC, the Federal Circuit held that "the Commission's interpretation that the phrase 'articles that infringe' covers goods that were used by an importer to directly infringe post-importation as a result of the seller's inducement is reasonable." This decision clarifies and confirms the ITC's ability to issue exclusion orders for infringement of method claims, a point that had been suddenly thrown into grave doubt by the earlier, now-vacated panel decision.

The products at issue in the case were fingerprint scanning devices manufactured in South Korea and imported into the U.S. by Suprema, Inc. The Suprema hardware did not infringe the asserted patent until software was added by another entity, Mentalix, Inc, in the U.S. after importation. The Commission had found that Suprema had induced infringement of method claims by encouraging Mentalix to add specific kinds of software to its hardware, and that Suprema knowingly blinded itself to the likelihood that it was inducing infringement of the asserted method claims. The Commission therefore determined that Suprema had induced infringement and issued an exclusion order preventing the importation of Suprema's hardware.

The earlier panel decision in this case – now vacated – had overturned the Commission's exclusion order. The divided panel had held that, because the claimed methods were not used until after the product was in the United States, there were no "articles that infringe" at the time of importation. Because the ITC's authority to issue exclusion orders is limited to "articles that infringe" U.S. patent claims, the panel decision had held that the ITC lacked the authority to issue an exclusion order against Suprema's hardware. Judge Reyna had vigorously dissented to the earlier panel decision, noting, among other things, that the panel's interpretation of the 337 statute would allow potential infringers to easily evade ITC jurisdiction. As the en banc decision notes, the panel decision would have "effectively eliminated trade relief under Section 337 for induced infringement and potentially for all types of infringement of method claims."

The en banc Federal Circuit framed the question presented as whether the importation of goods that are used to directly infringe a U.S. patent, at the inducement of the importer, qualifies as an unfair trade act under Section 337. That question turned on whether the Commission's interpretation of Section 337 – that such importation was prohibited by Section 337 – was owed any deference. As the en banc decision noted, under the Chevron doctrine,  the Commission has the authority to interpret any ambiguous statutory language in Section 337, and the Federal Circuit will defer to any reasonable interpretation of such ambiguous language. The question, then, was whether Section 337's reference to "articles that infringe" was ambiguous, and whether the ITC's interpretation of that Section was entitled to deference.

The Federal Circuit held that the phrase "articles that infringe" was indeed ambiguous. The court held that by not limiting the scope of Section 337 to "infringement," the language used in the Patent Act, and instead referring to "articles that infringe," Congress had "introduce[d] textual uncertainty." The Federal Circuit further held that the Commission's interpretation of Section 337 was consistent with the statutory text, policy, and legislative history.

The 6-4 decision was written by Judge Reyna and joined by Judges Newman, Wallach, Taranto, Chen, and Hughes. Judge O'Malley wrote a dissent that was joined by Judges Prost, Lourie, and Dyk, and Judge Dyk also separately dissented.

This decision eliminates substantial uncertainty for parties considering bringing complaints before the ITC. After the panel decision vacating the Commission's exclusion order in Suprema, parties had struggled to identify ways to enforce method claims before the ITC. In the 949 Investigation, for example, the Complainant had originally asked the Commission to institute an investigation based on the induced infringement of audio processing hardware and software, which it alleged was a violation of subsection (a)(1)(B) prohibition of articles that infringe – the standard, pre-Suprema theory of ITC complainants. In light of the Suprema panel decision, the Complainant withdrew its original complaint and filed a new complaint that advanced an additional, novel theory that the Respondents' induced infringement was a violation of subsection (a)(1)(A) of Section 337, which prohibits "unfair acts in the importation of articles...to destroy or substantially injure an industry in the United States [or] prevent the establishment of such an industry." The Commission did not accept this alternative approach, instituting the 949 investigation solely to determine if there had been a violation of subsection (a)(1)(B) without discussing the (a)(1)(A) theory. Numerous practitioners and patent holders had expressed concern that if the panel's decision were upheld, it would potentially limit the ITC's jurisdiction over certain types of patent cases, particularly cases involving electronic devices that have, in recent years, often involved method claims. However, based on the decision confirming that the ITC has the authority to issue exclusion orders if it finds that an importer is inducing infringement, there is no longer any need to identify these kinds of novel approaches; parties presumably can continue to rely on pre-Suprema standards and authorities.

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

G. Brian Busey
Similar Articles
Relevancy Powered by MondaqAI
Morrison & Foerster LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Morrison & Foerster LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions