An exclusion order from the ITC based on a violation of 19 U.S.C. § 1337(a)(1)(B)(i) may not be predicated on a theory of induced infringement under 35 U.S.C. § 271(b) where direct infringement does not occur until after importation of the articles the exclusion order would bar. This reinforces the need for drafting claims that target actions of (i) a single entity that (ii) directly infringes.
Background / Facts: The patent here at the center of a limited exclusion order from the U.S. International Trade Commission (“the Commission”) relates to biometric fingerprint scanners. The accused devices are imported scanners which the patentee concedes do not directly infringe the method claims of the patent at the time of importation. The alleged infringement only takes place when the scanners are combined with domestically developed software after the scanners are imported. The patentee does not dispute that the scanners have substantial non-infringing uses, and the accused infringer contends its other customers have put them to such uses.
Issue(s): Whether a § 337(a)(1)(B)(i) violation may be predicated on a claim of induced infringement where the attendant direct infringement of the claimed method does not occur until post-importation.
Holding(s): No. “Given the nature of the conduct proscribed in § 271(b) and the nature of the authority granted to the Commission in § 337, we hold that the statutory grant of authority in § 337 cannot extend to the conduct proscribed in § 271(b) where the acts of underlying direct infringement occur post-importation. Section 337(a)(1)(B)(i) grants the Commission authority to deal with the ‘importation,’ ‘sale for importation,’ or ‘sale within the United States after importation’ of ‘articles that … infringe a valid and enforceable U.S patent.’ The patent laws essentially define articles that infringe in § 271(a) and (c), and those provisions’ standards for infringement (aside from the ‘United States’ requirements, of course) must be met at or before importation in order for the articles to be infringing when imported. Section 271(b) makes unlawful certain conduct (inducing infringement) that becomes tied to an article only through the underlying direct infringement. Prior to the commission of any direct infringement, for purposes of inducement of infringement, there are no ‘articles that … infringe’ – a prerequisite to the Commission’s exercise of authority based on § 337(a)(1)(B)(i).”
SUBSEQUENT TREATMENT: SUPREMA, INC. v. ITC (Fed. Cir. 2015) (P, En Banc)