CAFC To Rehear Suprema: Disposition Could Have Significant Repercussions For ITC Jurisdiction

On February 5, 2015 the en banc Federal Circuit will hear oral argument in the matter of Suprema, Inc. v. ITC., Case No. 2012-1170 (Fed. Cir.). This rehearing reviews the controversial Federal Circuit opinion holding that "an exclusion order based on a violation of 19 U.S.C. § 1337(a)(1)(B)(i) may not be predicated on a theory of induced infringement where no direct infringement occurs until post-importation." Suprema, Inc. v. ITC, 742 F.3d 1350, 1353 (Fed. Cir. 2013). This holding by a Federal Circuit panel essentially precludes the International Trade Commission from finding induced infringement of method claims in most cases. Thus, the disposition of the en banc court will have significant repercussions for how litigants in the ITC frame future complaints of patent infringement, because it will largely determine the viability of claims of inducement of infringement at the ITC.

Based on a review of the parties' and amici's en banc briefing, it appears likely that the en banc decision will turn on (1) the interpretation of the phrase "articles that—infringe" in § 337(a)(1)(B)(i) and specifically whether that language refers to only the article itself or should be interpreted to include accompanying conduct, and (2) the importance of the ITC's longstanding tradition of exclusion under § 337 based on inducement by imported articles. The Appellants', Suprema's and Mentalix's, brief argues that the salient consideration is the status of the article itself at the time of importation and not conduct relating to the article, concluding that because inducement of infringement under § 271(b) is fundamentally in personam, it is only redressable by § 337 where the inducement relates to an article that directly or contributorily infringes at the time of importation.

Appellee International Trade Commission's brief...