On May 13, 2014, the Federal Circuit granted a petition for rehearing en banc and vacated the panel opinion in Suprema v. ITC, a case that will decide whether the ITC is empowered to exclude articles on an induced infringement theory that do not directly infringe at the time they are imported to the U.S.
The panel opinion of December 13, 2013, restricted the ITC from excluding imported articles that allegedly induce infringement of a United States patent, but do not yet directly infringe at the time of importation. Respondent Suprema imported fingerprint scanners that allegedly directly infringed a U.S. patent only after they were imported into the U.S. and combined with software. The court held that the ITC may exercise its power only against articles that are “already in an infringing state at the time of importation,” which Suprema’s scanners were not. The court left open the possibility that such articles could still be excluded on a contributory infringement theory. The dissent noted that the decision may make it difficult to enforce method patents in the ITC, which are often directly infringed only by end-users of an imported article. The panel decision would also have created a loophole for importers to avoid ITC exclusion orders by importing disassembled components of a patented machine or reserving performance of a step of a patented method until after the article has been imported.