A recent decision by the full Federal Circuit, Suprema vs. ITC, overturned an earlier decision and confirmed that the ITC can hear cases involving claims of method patent and indirect infringement. While Suprema is very important in itself – because it confirms that software and high tech industries, among others, can still use the ITC to protect their rights – Suprema is also important for its signals regarding another case that could dramatically expand ITC jurisdiction. If the Federal Circuit upholds the ClearCorrect decision – which would be in line with its Suprema opinion – it will mean that the ITC has jurisdiction to remedy patent, copyright and trademark infringement committed by intangible items which enter the US via the internet – such as pirated music, movies and software and designs for 3D printing.

Cross Match filed an ITC complaint accusing Suprema, a Korean developer of fingerprint scanners, of inducing the infringement of Mentalix, a domestic importer of fingerprint scanners which infringed the patent by adding Mentalix software to the scanners post-importation. Though the ITC found that Mentalix and Suprema infringed, the decision was reversed by the US Court of Appeals for the Federal Circuit on appeal. In finding no infringement the Federal Circuit panel ruled that the ITC could not find infringement where the patented method was used only after the product was imported.

This greatly curtailed the Commission’s authority to find induced infringement in cases involving method claims, because such claims are generally infringed post-importation. The software, high tech, pharmaceutical and cosmetics industries rely heavily on patented methods and allegations of indirect infringement. In addition, the ITC’s unique advantages – fast resolution of disputes, expert judges and the absence of juries, and the potential to obtain an order barring all imports of infringing products – are particularly important to those in high tech and software areas, who cannot wait the many years it may take to obtain a district court verdict. By decreasing the ability to sue for indirect infringement of method patents at the ITC, the court struck a blow against the ability of the software, high tech, pharmaceutical and cosmetic industries to use the ITC, and harmed them.

Oct-Dec 2015 issue

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.