Fall 2013
AIPLA Quarterly Journal
Authored by Allen M. Sokal and Joyce Craig
In a decision that appears to drastically curtail the reach of 19 U.S.C. § 1337, the United States Court of Appeals for the Federal Circuit recently held that violations of § 337 are limited to imported articles that infringe "at the time of importation."1 As a result, patent owners will now have a more difficult time obtaining exclusion orders against companies that import articles that are then modified to infringe, or are used in infringing ways, only after importation.
The Federal Circuit's ruling conflicts with Congress's intent to protect holders of United States intellectual property from infringement.2 Indeed, § 337 proscribes importing articles into the United States that infringe a patent, but it does not state that the imported articles must infringe "at the time of importation."3 That language is likely absent because Congress intended to include within the scope of § 337 the importer's post-importation direct infringement with the imported product.4
The Federal Circuit's ruling also conflicts with its view, though dicta, that § 337 violations can result from only certain types of indirect infringement.5 The holding leads to the inconsistent result that an importer's act of contributory infringement with an imported article violates § 337, but the importer's inducing the same act of direct infringement by another or directly infringing itself after importation does not.
The importance of § 337 as a statute affording relief to owners of United States intellectual property rights from unfairly competing imports is compromised by this new reading of § 337(a)(1)(B)(i). As they have in the past, the Federal Circuit and the United States International Trade Commission (ITC) should continue to allow a showing of a nexus between imported articles and alleged acts of infringement as a predicate to determining whether a § 337 violation has occurred. Prohibiting unfair competition incident to importation will ensure that the ITC remains a vital forum for protecting United States intellectual property rights. Unless and until the recent holding is reconsidered en banc and overruled, holders of rights to patents that are infringed only after importation should be sure they have a claim of contributory infringement before requesting an investigation at the ITC,6 and even that may not suffice.
Until 1988, § 337 proscribed "unfair methods of competition and unfair acts in the importation of articles,"7 giving the ITC broad authority to exclude imported articles for, inter alia, patent infringement.8 Under that provision, many cases held that an importer's direct infringement after importation violated § 337.9 Congress amended § 337 in 1988 to strengthen its intellectual property provisions, specifically proscribing the importation of articles that infringe intellectual property rights, and eliminating the previous requirement for substantial injury of a domestic industry in the case of patents and other intellectual property.10 Although the amended § 337 proscribes importing into the United States articles that infringe a patent, it does not state that the imported articles must infringe "at the time of importation."11
B. The Electronic Devices Decision
The Federal Circuit in Suprema adopted the ITC's reasoning in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software.12 In Electronic Devices, the ITC held that, to establish a violation of § 337 based on patent infringement, it was no longer sufficient for there to be a "nexus" between importation and patent infringement.13 Rather, the ITC held that to establish a violation, the accused article must actually infringe—whether directly or indirectly—at the time of importation.14
1. Background and Initial Holding
In Electronic Devices, S3 Graphics Co., Ltd. and S3 Graphics Inc. (collectively, "S3G") asked the ITC to institute an investigation under § 337 based on allegations that respondent Apple Inc. violated § 337 by importation, sale for importation, and sale after importation of electronic devices and software that infringed patents owned by S3G.15 Specifically, S3G alleged that Apple infringed claim 1116 of U.S. Patent No. 6,683,978 (the '978 patent) and claim 1617 of U.S. Patent No. 6,658,146 (the '146 patent).18 According to S3G, Apple was directly infringing claim 11 when it made, used, sold, and imported the accused products, including certain application software containing encoded image data files.19 S3G further alleged that Apple was inducing application software developers and consumers to infringe claim 11.20 S3G alleged that Apple was directly infringing claim 16 of the '146 patent by importing and selling computers such as the MacBook and associated Apple software and by performing the claimed method.21 S3G additionally alleged that Apple was inducing software developers to practice the claimed method.22
In his initial determination, the Administrative Law Judge (ALJ) concluded that Apple violated § 337 by importing its "Mac OS X" laptop computers.23 In his initial determination, the ALJ determined that Apple infringed claim 11 of the '978 patent and claim 16 of the '146 patent when it tested the Mac OS X Devices inside the United States.24 The ALJ found that during those tests Apple made and used data in the format defined by claim 11.25 The ALJ further determined that Apple's testing practiced the data compression steps defined in method claim 16 of the '146 patent.26 Apple argued that no violation of the importation requirement of § 337 could be found because its imported Mac OS X Devices contained no infringing data at the time they entered the United States.27 The ALJ disagreed, determining that "the importation requirement was met when hardware or software that was part of an infringing system was imported."28 Having found importation of articles that were later used to infringe the asserted patent claims, the ALJ recommended that the ITC issue a limited exclusion order to prohibit Apple from importing the accused devices.29
2. The ITC's New Interpretation of § 337
In reviewing the ALJ's decision, the ITC analyzed the language of § 337(a)(l)(B)(i)30 and determined that the statute defines three specific acts that can form the basis of a § 337 violation: (1) importation, (2) selling for importation, and (3) selling after importation.31 The ITC then identified the statutory categories of articles involved in the proscribed acts, including "articles that infringe"32 a "valid and enforceable United States patent."33 The ITC reviewed its historical application of § 337 and disregarded some language in earlier ITC decisions to "clarify" that merely showing a nexus between an imported article and some later act of infringement will not substitute for showing importation or sale of "articles that infringe"34 a "valid and enforceable United States patent."35
The ITC found that the accused Mac OS X Devices, as imported, contained no data in the format defined by claim 11 of the '978 patent, and further found that such data was created only in the United States, during Apple's software testing.36 The ITC adopted the ALJ's finding that when Apple tested the Mac OS X Devices in the United States, Apple loaded certain software and data onto those devices.37 During the tests, the Mac OS X Devices used the domestically installed software and data to create DXT data, a data format that has all of the elements found in claim 11.38
The ITC further adopted the ALJ's determination that S3G did not prove indirect infringement of claim 11.39 Because S3G had not shown importation, sale for importation, or sale after importation of "articles that infringe" claim 11, either directly or indirectly, the ITC determined that S3G had not shown a violation of § 337 based on claim 11.40
Regarding method claim 16 of the '146 patent, the ITC concluded that Apple did not violate § 337, because merely importing or selling a device that might be used to perform a patented method does not constitute direct infringement of a claim to that method.41 The ITC found that "[t]he only record evidence of direct infringement of method claim 16 [was] Apple's internal practice of the method in the United States when it test[ed] Mac OS X Devices,"42 and adopted the ALJ's determination that S3G did not prove indirect infringement of any asserted patent claim, including claim 16.43
Absent evidence of contributory infringement or inducement of infringement, the ITC determined that Apple's purely domestic testing of computers, modified after importation, was not one of the acts prohibited under § 337.44 In summary, the ITC found no violation of § 337 in Electronic Devices, holding instead that it was no longer sufficient to show a "nexus" between importation and patent infringement to establish a violation of § 337 based on patent infringement.45 The ITC held that to establish a violation of § 337 based on patent infringement, the complainant must show that the accused article actually infringes, either indirectly or directly, at the time of importation.46
Although the Federal Circuit never reviewed Electronics Devices because the parties settled after the appeal was filed and fully briefed, the decision has been cited in a number of other investigations, and has been applied by parties, ALJs, and the ITC.47 Indeed, just two days before the Federal Circuit relied on it in Suprema, the ITC appeared to try to limit its Electronic Devices holding. In Certain Products Containing Interactive Program Guide and Parental Control Technology, the ITC explained that the holding in Electronic Devices was that "infringement, direct or indirect, must be based on the article as imported."48 The ITC made no reference to the express language in Electronic Devices that the article must infringe at the time of importation.
Nevertheless, the Federal Circuit relied on Electronic Devices in holding that the statutory grant of authority in § 337 cannot extend to inducement of infringement "where the acts of underlying direct infringement occur post-importation."49
C. ITC and Federal Circuit Interpretation of § 337(a)(1)(B)(i) Before 1988
In Electronic Devices, the ITC based its holding on a new interpretation of the effect of the 1988 amendments to § 337 on post-importation infringement. The ITC reasoned that the "nexus" test arose under the pre-1988 version of § 337, and was rendered "obsolete" by the 1988 amendments.50 The Federal Circuit in Suprema appeared to agree, ruling that "[t]he focus is on the infringing nature of the articles at the time of importation."51
A number of pre-1988 cases found an importer's direct infringement after importation had a sufficient nexus to importation to violate § 337. In Certain Apparatus for the Continuous Production of Copper Rod,52 the ITC found a violation of § 337(a) in, inter alia, the unauthorized importation or subsequent sale of roll stands that were later used to produce copper rod in a manner that infringed U.S. Patent No. 3,317,994 (the '994 patent).53 The '994 patent is directed to a method of conditioning copper for hot forming by hot rolling in a rolling mill to compress a copper bar to reduce its cross-sectional area, using a roll stand between the casting machine and the rolling mill to provide the necessary compression.54 The claims recite compression of the metal to the extent necessary to "substantially completely destroy the columnar dendritic structure of the copper metal," as an initial step in, or prior to, conventional hot forming.55
The respondents included Krupp GmbH, and Krupp International, Inc. (collectively, "Krupp respondents"). The Krupp respondents designed and imported a continuous copper casting and rolling system that used a greater than thirty-six percent reduction at the first roll stand—at least, during the start-up operations for the systems—and subsequently installed the system at a customer's Texas facility.56
The ITC found that Krupp's design and domestic sale of the casting and rolling system and the installation and use of the system by Krupp engineers during start-up operations at the Texas facility constituted direct infringement of the method claims of the '994 patent.57 Thus, the ITC found a violation by the importer based on direct infringement of method claims after importation.58 Specifically, the importer imported an apparatus, sold it to a Texas company, and infringed the method by using the apparatus during start-up operations in Texas.59
In another case, Certain Molded Sandwich Panel Inserts and Methods for Their Installation, the ITC explained that the jurisdiction of the ITC is not limited to acts that occur during the actual physical process of importation.60 In that case, the ITC found a violation of § 337 in the importation and sale of molded-in sandwich panel inserts61 that infringed certain method claims of U.S. Patent Nos. 3,282,015, 3,271,498, and 3,392,225.62 The accused molded-in sandwich panel inserts were manufactured in Japan, imported into the United States by respondent The Young Engineers. Inc. (TYE), and subsequently sold by TYE to California-based respondents Hitco Corporation (Hitco), Aerospace Division of UOP, Inc. (Aerospace), and Weber Aircraft Division of Kidde, Inc. (Weber Aircraft).63
Hitco and Weber Aircraft argued that the ITC lacked power to find them in violation because they were not owners, importers, consignees, or agents within the meaning of § 337(a).64 Rejecting that argument, the ITC stated: "The use of the word 'or' in section 337(a) indicates that the jurisdiction of the Commission is not limited to those acts that occur during the actual physical process of importation. If there is some nexus between the unfair methods or acts and importation, the Commission's jurisdiction is established."65 The ITC explained that, because Hitco, Weber Aircraft, and Aerospace purchased imported inserts from TYE, the firms were involved in the "sale" of the imported articles.66 The ITC issued a general exclusion order, a cease and desist order to prohibit TYE from selling imported inserts for use in methods claimed by the asserted patents, and cease and desist orders directed to Hitco, Weber Aircraft, and Aerospace to prohibit them from using imported panel inserts to practice any of the claimed methods.67
D. ITC and Federal Circuit Interpretation of § 337(a)(1)(B)(i) After 1988
In the Electronic Devices decision, the ITC acknowledged that "language in some prior investigations could be read to support" a violation if there is some nexus between the imported articles and the infringement.68 Indeed, numerous post-1988 ITC and Federal Circuit decisions found a violation when direct infringement occurred only after importation.
For example, in SiRF Technology, Inc. v. ITC,69 the Federal Circuit, echoing the ITC and ALJ's prior opinions, ruled that a respondent's performing the claimed method steps after importation constituted direct infringement violating § 337.70 The underlying litigation involved six patents in the field of GPS technology, which is a satellite navigation system operated by the United States.71 The satellites and their orbits are arranged so that at least four satellites are in a direct line-of-sight to any point on Earth.72 The GPS system itself is not patented, but various aspects of the devices, systems, and methods for processing GPS satellite signals are patented.73 For example, Assisted-GPS (A-GPS) was developed to help ensure that navigational messages reach their destinations.74 In A-GPS systems, the navigational message is collected by a receiving station with an unobstructed view of the sky and transmitted to GPS receivers via computer servers.75 The patents-in-suit were directed to various improvements over conventional A-GPS technology.76
SiRF was accused of both direct and induced infringement of patents in GPS processing signals, because it developed, manufactured, and sold certain GPS chips that, when incorporated into end-user GPS devices, allow the devices to compute absolute position using the GPS system.77 SiRF's software is embedded in SiRF chips and calculates current positional information for the GPS receiver.78 The complaint also accused device manufacturers of direct and induced infringement.79 Those companies both incorporated SiRF chips into end-user, consumer GPS devices and maintained intermediate servers.80 The consumer devices incorporating SiRF chips and software were imported and sold in the United States.81
The ITC issued a limited exclusion order prohibiting the entry into the United States of infringing GPS devices that are manufactured abroad, or imported on behalf of SiRF and other respondents.82 The ITC also issued a cease-and-desist order against those respondents with U.S. operations, including SiRF and two of the device manufacturers, under a theory of joint infringement.83
On appeal, SiRF argued that, because the claims were infringed only when actions were taken by SiRF's customers and by the end users of the GPS devices, SiRF could infringe the patents only if it was a joint infringer together with the customers and the end users.84 SiRF further contended that the requirements for joint infringement were not satisfied, because SiRF did not control or direct the customers or end users.85 The Federal Circuit disagreed, concluding that the method claims could be performed, and were performed, by a single party.86 Indeed, the earlier opinion of the ALJ established that SiRF directly infringed by testing the imported products in the United States after importation.87
Thus, there is ample precedent to show that even after the 1988 amendments to § 337, an importer's direct infringement after importation violates § 337 where the imported product does not infringe at the time of importation.88
In Suprema, the Federal Circuit relied on the Electronic Devices decision in holding that the ITC cannot base a violation of § 337 on inducement of infringement where the underlying direct infringement occurs after importation. The Federal Circuit concluded that the ITC had no authority to issue an exclusion order addressed to Suprema's accused scanners and explained that only a federal court has authority to decide the infringement questions presented.
The ITC had applied the "nexus" test to find that Respondent Suprema induced infringement. In Certain Biometric Scanning Devices, as the case was denominated at the ITC, Complainant Cross Match owned a patent claiming a method used by an optical scanning system for forming and detecting up to four simultaneous fingerprint images by comparing the scanned images with previously scanned images in accordance with an acceptable quality threshold.89 Respondent Suprema manufactures and imports hardware and software for scanning fingerprints.90 Respondent Mentalix directly imports Suprema's scanners for integration with Mentalix's software in the United States.91 Complainant Cross Match contended that Suprema's hardware, when used with Mentalix's software, infringes Cross Match's patent.92
The ALJ found that Suprema's accused products infringe Cross Match's method patent when integrated with Mentalix's software.93 But the ALJ did not identify the infringer, or state whether the infringement was direct, indirect, or both.94 After review, the ITC found a violation of § 337 by the Suprema scanners integrated with Mentalix's software.95 Specifically, the ITC found that Suprema induces infringement of, but does not contributorily infringe, the patent.96 Applying the nexus test, the ITC determined that "the record evidence that shows induced infringement by Suprema also shows the requisite nexus between importation and the unfair acts to find a violation of section 337 by both respondents."97 In other words, the ITC found that Mentalix violated § 337 by directly infringing even though the scanners did not infringe at the time of importation.98 Based on those findings, the ITC issued a limited exclusion order directed to certain scanning devices imported "by or on behalf of Suprema or Mentalix" and issued a cease and desist order directed to Mentalix only.99
Suprema and Mentalix argued to the Federal Circuit that the ITC erred because a violation of § 337(a)(1)(B)(i) may not be predicated on a theory of induced infringement under the facts of the case.100 The Federal Circuit agreed and vacated the ITC's rulings regarding Suprema's and Mentalix's infringement of U.S. Patent No. 7,203,344.101
In reaching its decision, the Federal Circuit first noted that "the alleged infringement only takes place when the scanners are combined with domestically developed software after the scanners are imported."102 The Federal Circuit then reviewed the language of § 337 and concluded that "[t]he focus is on the infringing nature of the articles at the time of importation, not on the intent of the parties with respect to the imported goods."103 Citing Electronic Devices, the Federal Circuit explained that the ITC has recognized a limitation on its jurisdiction "by refusing to investigate complaints premised on allegations of direct infringement of method claims under § 271(a) because patented methods are not infringed until 'use' in the United States occurs."104
Next, the Federal Circuit singled out inducement of infringement for special treatment at the ITC. The Federal Circuit explained that the standards for direct infringement under § 271(a) and contributory infringement under § 271(c) "must be met at or before importation in order for the articles to be infringing when imported."105 The Federal Circuit distinguished inducement of infringement under § 271(b) because inducement "becomes tied to an article only through the underlying direct infringement."106 Thus, in the Court's view, before commission of direct infringement, there are no articles that infringe under a theory of induced infringement for purposes of § 337.107
The Federal Circuit further explained that its ruling in Suprema is consistent with the ITC's in Electronic Devices for at least two reasons. First, the ITC in Electronic Devices asserted that it had authority to exclude articles that infringe either directly or indirectly at the time of importation. In the Federal Circuit's view, the ITC may invoke inducement to exclude articles only when the articles themselves directly infringe at the time of importation, not to exclude articles that may infringe later based on the alleged intent of the importer.108 Second, the Federal Circuit considered the ITC's discussion in Electronic Devices of its authority to predicate a § 337 violation on an inducement claim dicta.109 The Federal Circuit observed that even if the ITC's discussion were not dicta, it would not be binding on the Federal Circuit.110
Thus, the Suprema decision that the ITC lacks authority to find a § 337 violation that is premised on induced infringement where the acts of underlying direct infringement occur post-importation is heavily based on the ITC's unreviewed decision in Electronic Devices that a violation of § 337 must be based on articles that infringe at the time of importation.
Judge Reyna wrote separately to express disagreement with the majority's decision "to negate the Commission's statutory authority to stop induced infringement at the border."111 In Judge Reyna's view, the majority ignored that § 337 is a trade statute designed to provide specific relief from acts of unfair trade, including the importation of articles that will result in harm to a domestic industry by infringing a valid and enforceable patent.112 Judge Reyna also stated that the majority overlooked long-established ITC practice of considering inducement of infringement and the Federal Circuit's confirmation of that practice.113 He disagreed that the 1988 amendments to § 337 require that articles be in an infringing state when imported. Rather, Judge Reyna explained that "as long as the inducing acts include sale for importation, importation or sale after importation of articles involved in direct infringement in the United States," the inducing conduct is tied to articles that infringe under § 337, and the ITC has authority to investigate such conduct.114 That conclusion stems from Judge Reyna's view that "[a]n article that is not in an infringing state at the moment of importation can still form the basis of a Section 337 violation if its importation is tied to conduct giving rise to infringement liability."115 In other words, Judge Reyna would continue to apply the nexus test.
Judge Reyna is concerned that the majority's holding will enable circumvention of § 337 liability for indirect infringement by, for example, allowing importers to "import disassembled components of a patented machine, or import an article capable of performing almost all of the steps of a patented method," but reserving final assembly or performance for the end user in the United States.116 He correctly observed that the majority's holding effectively allows circumvention of § 337 liability for almost all forms of method patent infringement.117 Although the majority left open the possibility of enforcing method patents at the ITC on the basis of contributory infringement, Judge Reyna is skeptical that obtaining a remedy on that basis continues to be viable.118 That is because, like inducement, liability for contributory infringement requires a showing of direct infringement, which in the case of method claims, (and most other claims), will not occur until after importation.119
As Judge Reyna correctly recognized, the holding in Suprema significantly restricts the circumstances in which direct infringement can violate § 337. It also appears to eliminate the circumstances in which indirect infringement can violate § 337 if the imported product does not infringe at the time of importation.
The Federal Circuit's opinion that direct infringement can violate § 337 only if it occurs "at the time of importation" is incorrect for several reasons. First, the statute includes no such limitation and the legislative history demonstrates congressional intent to the contrary.120 Second, the decision is inconsistent with ITC and Federal Circuit precedent.121 Third, the admission by the Federal Circuit and the ITC that indirect, contributory infringement can violate § 337 contradicts the well-established legal doctrine that a finding of indirect infringement depends on a finding of direct infringement after importation.122
The Federal Circuit should continue to hold that a showing of a nexus between imported articles and alleged acts of infringement is sufficient to determine whether a § 337 violation has occurred. Not only would that be consistent with previous case law and legal doctrines, it would also respect congressional intent and avoid significantly contracting the scope of § 337.
A. Section 337(a)(1)(B)(i) Includes an Importer's Direct Infringement After Importation
The Federal Circuit jettisoned the nexus test in favor of a new interpretation of § 337 that conflicts with its plain meaning. Section 337 proscribes importing articles into the United States that infringe a patent, but it does not state that the imported articles must infringe "at the time of importation."123 The reasons provided by the Federal Circuit in Suprema and the ITC in Electronic Devices were insufficient to justify construing § 337 as though it included that limitation.124
Moreover, Congress clearly did not originally intend to exclude from § 337 an importer's direct infringement after importation. An early version of § 337 provided that: "Unfair methods of competition and unfair acts in the importation of articles into the United States or in their sale by the owner, importer, consignee, or agent of either . . . are declared unlawful . . . ."125 The 1988 amendments were not intended to place new restrictions on the scope of § 337 regarding infringement of patent and other intellectual property rights, but to strengthen § 337 regarding enforcement of those rights.126 The report of the Committee on Ways and Means explained, "The fundamental purpose for the amendments . . . is to strengthen the effectiveness of section 337 in addressing the growing problems being faced by U.S. companies from the importation of articles which infringe U.S. intellectual property rights."127 The subsequent conference committee report similarly explained, "The purpose of this part is to amend section 337 . . . to make it a more effective remedy for the protection of United States intellectual property rights."128
Both the Federal Circuit and the ITC have recognized that Congress intended to strengthen the ability of patent owners to enforce their rights against importers.129 The Federal Circuit observed in Enercon:
[T]he 1988 amendments were intended to strengthen the statute's effectiveness in eliminating the problems caused by the importation of goods that infringe U.S. intellectual property rights . . . . Further, we reject Enercon's contention that in the 1988 amendments to section 337 Congress intended to separate accused infringement of intellectual property rights covered by subsections (b), (c) and (d), from the general class of unfair acts covered by subsection (a).130
Indeed, Congress amended the statute in 1988 to add to—not replace—the broad provision to include specific provisions for intellectual property rights such as patents.131 Thus, the statute now specifically prohibits "[t]he importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee of articles that - (i) infringe a valid and enforceable United States patent . . . ."132 Consequently, if an act of patent infringement violated § 337 before 1988, that same act would violate § 337 after 1988.
On appeal to the Federal Circuit in Electronic Devices, the ITC incorrectly argued that, because the language of the statute is clear that it is not unlawful to import articles that do not infringe, the Federal Circuit had no need to consider congressional intent in reaching its decision.133 The statutory language does not support that argument for two reasons. First, although the ITC interpreted the statute as though "at the time of importation" appears before "infringe a valid and enforceable United States patent," that phrase simply does not appear in § 337.134
Second, in its opinion below and on appeal, the ITC in Electronic Devices argued that the term "infringe" in § 337 derives its legal meaning from 35 U.S.C. § 271, the section of the Patent Act that defines direct and indirect patent infringement.135 According to the ITC, it follows that "articles that infringe" under § 337 refers to articles that infringe either directly or indirectly.136 Nevertheless, the plain language of § 337 precludes the ITC's interpretation of "infringe" in § 337 as incorporating 35 U.S.C. § 271 (a), (b), and (c). Although the ITC asserted on that basis that § 337 "covers imported articles that directly or indirectly infringe when it refers to 'articles that – infringe,'"137 § 337 and § 271 do not fit so easily together. Section 337 addresses "articles that . . . infringe,"138 and § 271, unlike § 337, addresses acts and actors who infringe, not articles.139 Indeed, an article standing alone never infringes; it must be made, used, offered for sale, sold, or imported in order to infringe.140 For those reasons, contrary to the ITC's holding, one must look to the legislative history of § 337.
The ITC did offer an alternative to its text-only argument by relying on the legislative history of § 337 and on the Patent Act to show that its Electronic Devices decision is consistent with the intent of Congress.141 According to the ITC, Congress did not intend § 337 to apply to infringing acts within the jurisdiction of the federal district courts.142
To that end, the ITC cited John Mezzalingua Associates v. International Trade Commission143 in support of its argument that the legislative history of § 337 shows that Congress understands the central purpose of the ITC to be the regulation of trade, not enforcement of patents—that the legislative history of § 337 demonstrates that the ITC is fundamentally a trade forum, not an intellectual property forum.144 That argument is flawed. The Federal Circuit's point in Mezzalingua was that the statutory requirement for proof of a domestic industry must be satisfied.145 The ITC did not dispute the existence of a domestic industry in Electronic Devices.146
The ITC next relied on the portion of the Patent Act concerning indirect infringement (i.e., 35 U.S.C. § 271(b) and (c)) to limit the reach of § 337.147 Specifically, the ITC contended that if the complainant in Electronic Devices had proven contributory infringement or inducement of infringement, those doctrines would have adequately addressed "infringement after importation."148 In the ITC's view, "that Congress has provided an express statutory scheme [35 U.S.C. § 271(b) and (c)] for evaluating actions that are related to, but do not constitute, direct infringement counsels against interpreting section 337 to imply that a looser standard should be applied by the Commission."149 But no "express" incorporation of § 271 in § 337 exists. As explained above, § 337 historically extends to domestic infringement that has a nexus to importation.150 Consequently, as the cases have consistently held, an importer's post-importation direct infringement as well as indirect infringement violates § 337 if the requisite nexus exists.
The ITC seemed to further argue in Electronic Devices that because federal district courts exercise jurisdiction over domestic infringement, § 337 does not cover such infringement.151 Similarly, Intervenor Apple argued on appeal that Congress would have used the same language in both sections if Congress intended § 337 to proscribe the same conduct barred by § 271.152 Both of those arguments fail to recognize that indirect infringement, which occurs domestically, can violate § 337.153
Congress has expressly recognized that ITC proceedings and civil actions in federal district court can involve identical issues.154 Furthermore, the INS v. Cardoza-Fonseca case cited by Apple referred to different sections of a single act that Congress amended at the same time, not, like § 271 and § 337, two different acts that Congress addressed at two different times.155 As noted above, Congress has recognized that Sections 337 and 271 undeniably overlap. But they provide different relief for the same prohibited acts, such as importation of infringing articles.
The ITC also argued on appeal in Electronic Devices that Congress's express intent to make § 337 a more effective remedy was limited to eliminating the requirement to prove injury to a domestic industry and expanding the definition of domestic industry.156
That argument overlooks the new provisions of § 337(a)(I)(B)-(E), which specify patent, trademark, mask work,157 and copyright infringement as unfair methods of competition and unfair acts in the importation of articles.158 Before 1988, § 337 broadly outlawed "unfair methods of competition and unfair acts in the importation of articles." As noted above, by adding new provisions regarding importation or sale, Congress did not intend to change the interpretation or implementation of then current law regarding United States intellectual property rights.159 As shown above, before 1988 an importer's direct infringement after importation, if the requisite nexus existed, violated § 337. Yet the ITC argued that when an importer uses the imported articles himself to directly infringe after importation, he does not violate § 337, even though he indirectly infringes in violation of § 337 if he sells the imported articles to enable another to perform the identical act of infringement. Thus, the ITC's use of the language, "articles that . . . infringe," to place new restrictions on the scope of § 337 directly conflicts with the section's clear legislative history.
Section 337 is designed to protect domestic industries from infringement of intellectual property rights and other unfair competition from imported products. Companies were not immune from § 337 actions when their activities had the requisite nexus to importation—until the ITC's decision in Electronic Devices. Before 1988, cases applied the "nexus" test and held that an importer's direct infringement after importation, including by testing the imported products, violated § 337.160 Consistent with the legislative history, after the 1988 amendments the ITC and Federal Circuit continued to hold that an importer's direct infringement after importation violated § 337 when the requisite nexus existed.161
Despite the evident vitality of the nexus test after the 1988 amendments to § 337,162 the ITC in Electronic Devices contended that its narrower interpretation of § 337 was not new.163 Specifically, the ITC on appeal cited two prior determinations relied upon in the opinion below: Certain Chemiluminescent Compositions, and Components Thereof and Methods of Using, and Products Incorporating the Same,164 and Certain Cardiac Pacemakers and Components Thereof.165 Neither determination was reviewed, and neither supports the ITC's position.
In Certain Chemiluminescent Compositions, the complaint alleged violation of § 337 in the importation and sale of chemiluminescent compositions and components,166 including "glow necklaces," which allegedly directly and contributorily infringed, and induced infringement of, several of Cyanamid's U.S. patents.167 The record showed that a French manufacturer sold chemiluminescent necklaces that infringed Cyanamid's U.S. patents for importation to the United States.168 The necklaces were ultimately sold to a U.S. company, Nite Lite.169 The complaint also alleged direct and indirect trademark infringement related to the same conduct.170 Cyanamid moved for summary determination of both patent and trademark infringement.171
Cyanamid showed indirect infringement of its process patents by demonstrating that the accused products contained each of the components of the asserted method claims, and that consumers directly infringed those claims when they flexed and shook the necklaces to activate them.172 The respondents submitted no evidence to the contrary, and the ALJ made a summary determination of indirect patent infringement.173
In reaching his summary determination of trademark infringement, the ALJ found that the French manufacturer falsely represented that the necklaces contained genuine chemicals from Cyanamid, and that those false assurances induced and contributed to Nite Lite's infringement of Cyanamid's trademark in this country.174 In making that determination, the ALJ rejected a narrow reading of § 337(a)(1)(C) that focused on the infringing character of the accused products at the moment of importation.175 Section 337(a)(1)(C) prohibits: "(C) The importation into the United States, the sale for importation, or the sale within the United States after importation, by the owner, importer, or consignee of articles that infringe a valid and enforceable United States trademark registered under the Trademark Act of 1946 [15 U.S.C. 1051 et seq.]."176
The ALJ explained that, because the U.S. Customs Service already had statutory authority to deny entry to goods that bear infringing marks, limiting § 337(a)(1)(C) to products bearing infringing marks at the time of importation would needlessly direct the Customs Service to do what it already could do without adversary proceedings.177 The ALJ stated,
Such a narrow focus exclusively on the infringing character of the articles at the time of importation would ignore the fact that the new § 337 subsection, in the alternative, expressly applies not only to the moment of importation, but also to the sales for importation, and sales after importation within the United States; the alternative provision establishes that the directly infringing character of the sale of the articles under investigation may be established subsequent to their importation.178
Unsurprisingly, in its opinion in Electronic Devices the ITC cited Certain Chemiluminescent Compositions only for finding a violation of section 337 based on indirect infringement of a method claim, and not to support its new "at the time of importation" interpretation of § 337.179 Indeed, the ALJ in Certain Chemiluminescent Compositions did not address whether direct patent infringement by an importer can violate § 337, because the direct infringement was performed by consumers who activated the luminescent necklaces, not the importer.
In Cardiac Pacemakers, another case relied upon by the ITC in Electronic Devices, respondent Cordis purchased all of its components for an allegedly infringing pacemaker domestically, including two minor components, a quartz crystal and a ruby insulator tube, that were manufactured abroad and were staple articles of commerce with substantial non-infringing uses.180 Cordis moved for summary determination on the grounds that the ITC lacked subject matter jurisdiction, and that Cordis had committed no unfair acts in violation of § 337.181 The ALJ concluded that the ITC had subject matter jurisdiction because Cordis manufactured and sold pacemakers that incorporated imported components.182 Nevertheless, he ruled that, because no nexus between the importation of the two components and the alleged infringement had been shown, Cordis had not violated § 337.183
The ITC in the Electronic Devices appeal alleged that (1) the ALJ in Cardiac Pacemakers "analyzed the [quartz and ruby] articles at the time of importation and found that the articles, as imported, '[did] not constitute the entire pacemaker and, therefore, cannot read on all elements of the claims recited in the suit patents,'"184 and (2) the ITC's interpretation of § 337 in Electronic Devices was not new.185 That argument fails for at least two reasons.
First, in granting Cordis's motion for summary determination, the Cardiac Pacemakers Commission never used the words "at the time of importation."186 Instead, the Commission merely noted that the required nexus between importation and direct infringement did not exist because "the two imported components [did] not constitute the entire pacemaker and, therefore, cannot read on all elements of the claims . . . ."187 Indeed, the ITC's opinion in Electronic Devices rejected the concept of a "nexus,"188 a concept that was implicitly endorsed in Cardiac Pacemakers.189
Moreover, in Cardiac Pacemakers, the evidence for the requisite nexus was so weak that even the complainant supported the motion for summary determination.190 By contrast, in Electronic Devices the imported articles were not minor components, and the importer would have likely been found to directly infringe were the analysis conducted under the patent laws, and not § 337.191 Unlike in Cardiac Pacemakers, there was a clear nexus between the importation and the importer's direct infringement by testing.192
Thus, neither determination that the ITC relied on in Electronic Devices supports the argument that the interpretation of § 337 in Electronic Devices is well established and comports with existing case law.
C. The Federal Circuit's Ruling Is Inconsistent with Regard to Finding Violations Based on Indirect Infringement That Occurs After Importation
The law has long required that before imposing liability for indirect infringement, including active inducement under § 271(b), a patentee must show its patent was directly infringed.193 To do that, the patentee must show that someone committed an act of infringement by making, selling, offering to sell, using, or importing into the United States the patented invention without the patentee's permission.194 If the Federal Circuit limits the reach of § 337 to capture direct infringement occurring only at the time of importation, it should also limit any finding of indirect infringement to the time of importation. Otherwise, the ITC will ignore post-importation activity when evaluating direct infringement standing alone, but consider it when evaluating direct infringement for purposes of finding indirect infringement. Regarding method claims, the ITC observed in Electronic Devices that "importation is not an act that practices the steps of the asserted method claim."195 In other words, direct infringement of a method claim cannot violate § 337, because it can occur only after importation.196 To support a violation based on infringement of a method claim, therefore, the evidentiary record must include: (1) proof of direct infringement by some entity practicing the claimed method, and (2) proof that the respondent induces or contributes to that infringement.197 Relying on Electronic Devices to read "at the time of importation" into § 337, the Federal Circuit deems the statute violated by contributory infringement after importation.198 That is inconsistent with the Federal Circuit's new requirement of infringement "at the time of importation."
Specifically, as the dissent in Suprema correctly recognized, there is an inconsistency in the majority's ruling that the ITC has authority to consider contributory infringement where acts of underlying direct infringement occur post-importation, but not induced infringement.199 Both induced and contributory infringement require a showing of direct infringement, and the majority articulated no relevant reason for treating the two theories differently.200
During oral argument in Suprema,201 Judge O'Malley's questions highlighted the struggle to reconcile the Electronic Devices decision with the established legal doctrine that direct infringement after importation must occur for there to be indirect infringement. Judge O'Malley asked: "Well, how can you have inducement pre-importation when there has been no act of infringement as of that point in time? . . . . [I]nducement presupposes that there's direct infringement now. . . . If there is no direct infringement pre-importation how can you have inducement pre-importation?"202 The ITC attorney responded that "inducement starts pre-importation and is completed as of the direct infringement by Mentalix."203 When pressed, the ITC attorney explained that the ITC relied on "pre-importation communication" between the parties to find inducement, but the attorney failed to address the Judge's question about the timing of direct infringement.204
Judge Prost was similarly troubled by the contradiction, asking how indirect infringement can occur after importation when, according to the ITC in Electronic Devices, direct infringement cannot.205 Judge Prost noted that it was inconsistent for the ITC to articulate the "at the time of importation" requirement with regard to direct but not indirect infringement.206 The ITC attorney once again deflected the question, saying that the complainant in Electronic Devices could have shown indirect infringement, but did not.207
Moreover, induced patent infringement was codified as a statutory tort in 35 U.S.C. § 271(b).208 As Judge O'Malley noted, "271(b) says that one who actively induces can be liable as an infringer. It does not say that the act of actively inducing renders the product an infringing product."209 In other words, no inducement of infringement can occur until the induced, direct infringement occurs, both after importation.
For those reasons, the Federal Circuit's new interpretation of § 337 is inconsistent with finding violations of § 337 based on indirect infringement–contributory infringement as well as inducement of infringement–that occurs after importation.
The Federal Circuit's Suprema decision significantly limits the reach of §337, decreases the ITC's effectiveness in protecting U.S. intellectual property rights, and conflicts with the plain text of § 337, its legislative history, prior jurisprudence, and the ITC's own interpretation of § 337 in Suprema. Electronic Devices, which the Federal Circuit followed in Suprema, already incorrectly narrowed the circumstances under which the ITC can find a violation. Conduct that would have violated § 337 based on direct infringement before Suprema and Electronic Devices does not do so now, and a finding of a violation based on indirect infringement will be more difficult or impossible to obtain. Unless and until the Federal Circuit reconsiders en banc the decision in Electronic Devices, if accused products have been imported into the United States but do not necessarily infringe at the time of importation, patent holders should be prepared to prove indirect infringement at the ITC, and even that may not suffice.
Endnotes
1 Suprema, Inc. v. ITC, No. 2012-1170, 2013 WL 6510929, at *7-*9 (Fed. Cir. Dec. 13, 2013) (adopting reasoning in Certain Elec. Devices with Image Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, USITC Pub. 4374, at 13-14 (Nov. 21, 2011) (Comm'n Op.)); see also 19 U.S.C. § 1337 (2012).
2 See infra Part IV.A (discussing the legislative history of § 337).
3 Compare 19 U.S.C. § 1337(a)(1)(B)(i) (omitting any reference to the status of goods at the time of importation), with Certain Elec. Devices, Inv. No. 337-TA-724, USITC Pub. 4374 at 13-14 (holding that infringement analysis under § 337 must "reference the status of the articles at the time of importation.").
4 See infra Part IV.A.
5 See, e.g., Suprema, 2013 WL 6510929, at *9.
6 Namely, the complaint should allege indirect infringement as well as direct infringement, and the complainant should prove the elements of contributory infringement as well as direct infringement at trial.
7 19 U.S.C. § 1337(a) (1982), amended by 19 U.S.C. § 1337(a) (1988).
8 See, e.g., Certain Apparatus for the Continuous Production of Copper Rod, Inv. No. 337-TA-52, USITC Pub. 1017, at 21 (Nov. 23, 1979) (Comm'n Order) (holding that an importer violated § 337 by directly infringing method claims after importing accused articles).
9 See, e.g., id.
10 Compare 19 U.S.C. § 1337(a)(1)(B)(i) (1988), with 19 U.S.C. § 1337(a) (1982).
11 Compare 19 U.S.C. § 1337(a)(1)(B)(i) (2012) (containing no reference to the status of goods at the time of importation), with Certain Elec. Devices with Image Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, USITC Pub. 4374, at 13-14 (Nov. 21, 2011) (Comm'n Op.) (holding that the § 337 infringement analysis must "reference the status of the articles at the time of importation").
12 Suprema, Inc. v. ITC, No. 2012-1170, 2013 WL 6510929, at *7-*9 (Fed. Cir. Dec. 13, 2013)
13 Certain Elec. Devices, Inv. No. 337-TA-724, USITC Pub. 4374 at 17.
14 Id. at 13-14.
15 Id. at 1.
16 Claim 11 of the '978 patent covers a particular image data format. U.S. Patent No. 6,683,978 (filed Nov. 17, 1999).
17 Claim 16 of the '146 patent covers a specific method of compressing image data. U.S. Patent No. 6,658,146 (filed Jul. 12, 1999).
18 Certain Elec. Devices with Image Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, USITC Pub. 4374, at 66-68 (July 1, 2011) (Initial Determination).
19 Id.
20 Id.
21 Id. at 79, 88-91.
22 Id. at 102.
23 Id. at 67-70, 90-91.
24 Id. at 69-70, 90-91, 277-78.
25 Id. at 68-70.
26 Id. at 69, 90-91.
27 Id. at 16.
28 Id. at 17-18.
29 Id. at 287.
30 § 337 reads in pertinent part:
(a) Unlawful activities; covered industries; definitions
(1) Subject to paragraph (2), the following are unlawful, and when found by the Commission to exist shall be dealt with, in addition to any other provision of law, as provided in this section:
. . .
(B) The importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, of articles that—
(i) infringe a valid and enforceable United States patent or a valid and enforceable United States copyright registered under title 17; or
(ii) are made, produced, processed, or mined under, or by means of, a process covered by the claims of a valid and enforceable United States patent.
19 U.S.C. § 1337(a)(1)(B)(i)-(ii) (2012) (emphasis added).
31 Certain Elec. Devices with Image Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, USITC Pub. 4374, at 13 (Nov. 21, 2011) (Comm'n Op.).
32 Id. at 12.
33 Id. at 13, 17.
34 Id. at 12.
35 Id. at 13, 17.
36 Id. at 12-14, 21.
37 Id. at 14.
38 Id.
39 Id. at 15.
40 Id. at 14-15.
41 Id. at 17-18.
42 Id. at 18.
43 Id. at 15, 19.
44 Id. at 19.
45 Id. at 17-18.
46 Id.
47 See, e.g., Certain Products Containing Interactive Program Guide and Parental Control Technology, Inv. No. 337-TA-845, (Dec. 11, 2013) (Comm'n Op.); Certain Kinesiotherapy Devices and Components Thereof, Inv. No. 337-TA-823, 2013 WL 503321, at *8 (Jan. 8, 2013) (Initial Determination) (citing Electronic Devices in importation analysis for the appropriate legal standard for apparatus and method claims); Certain Wireless Commc'n Devices, Portable Music and Data Processing Devices, Computers and Components Thereof, Inv. No. 337-TA-745, at 5-6 (Apr. 24, 2012) (Initial Determination) (finding induced infringement and citing Electronic Devices); Certain Mobile Devices, and Related Software Thereof, Inv. No. 337-TA-750, at 3 (Mar. 16, 2012), http://www.usitc.gov/secretary/fed_reg_notices/337/337_750_notice03162012sgl_1.pdf (Notice of Review) (affirming the ALJ's finding of direct infringement of three patent claims, but finding that the infringement analysis was incomplete for failing to address the Commission's decision in Electronic Devices); Certain Universal Serial Bus ("USB") Portable Storage Devices, Including USB Flash Drives and Components Thereof, Inv. No. 337-TA-788, 2012 ITC LEXIS 537, at 4-5 (I.T.C. Mar. 6, 2012) (Order Denying Motion to Supplement Expert Report) (denying motion to supplement expert reports based on change in law in Electronic Devices).
48 Certain Products Containing Interactive Program Guide and Parental Control Technology, Inv. No. 337-TA-845, (Dec. 11, 2013) (Comm'n Op.)
49 Suprema, Inc. v. ITC, No. 2012-1170, 2013 WL 6510929, at *7-*9 (Fed. Cir. Dec. 13, 2013).
50 Id. at *7.
51 Id.
52 Certain Apparatus for the Continuous Production of Copper Rod, Inv. No. 337-TA-52, USITC Pub. 1017 (Nov. 23, 1979) (Comm'n Op.).
53 Id. at 14-20.
54 Id. at 7. The method allows the cross-sectional area of a copper rod to be compressed by at least thirty-six percent. Id. The patent describes the method as advantageous because it creates resistance to cracking and splitting during the hot forming of copper rod. Id. at 7-8.
55 Id. at 7.
56 Id. at 15-16.
57 Id. at 15.
58 Id. at 14-16, 18.
59 Id. at 15.
60 Certain Molded-In Sandwich Panel Inserts and Methods for Their Installation, Inv. No. 337-TA-99, USITC Pub. 1246 (Apr. 9, 1982) (Comm'n Op.) (finding that respondents, as purchasers who used the imported products in the United States after importation, directly infringed method claims); see also Aktiebolaget Karlstads Mekaniska Werkstad v. ITC, 705 F.2d 1565, 1578-79 (Fed. Cir. 1983) (finding violation based on direct infringement of combination apparatus claims where importer imported components of claimed invention and assembled those components in its papermaking machines after importation).
61 Certain Molded-In Sandwich Panel Inserts and Methods for Their Installation, Inv. No. 337-TA-99, USITC Pub. 1297, at 3 (Sept. 17, 1982) (Comm'n Order). A sandwich panel is a lightweight structure formed by securing a honeycomb core between two skin sheets. Id. at 5. This core is made of light material or resin-impregnated paper forming a cellular honeycomb structure. Id.
62 Id. at 1-2; see U.S. Patent No. 3,282,015 (filed Apr. 20, 1962); U.S. Patent No. 3,271,498 (filed Jan. 27, 1964); U.S. Patent No. 3,392,225 (filed June 21, 1965).
63 Certain Molded-In Sandwich Panel Inserts, Inv. No. 337-TA-99, USITC Pub. 1297 at 3, 15.
64 Certain Molded-In Sandwich Panel Inserts, Inv. No. 337-TA-99, USITC Pub. 1246 at 4.
65 Id.
66 Id. at 4-5.
67 Id. at 21.
68 Certain Elec. Devices with Image Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, USITC Pub. 4374, at 15 (Nov. 21, 2011) (Comm'n Op.).
69 SiRF Technology, Inc. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010).
70 Id. at 1329, 1331.
71 Id. at 1322.
72 Id.
73 Id. at 1323.
74 Id.
75 Id. The navigational message is transmitted to computer servers over a connection such as the Internet or a wireless telephone network. Id.
76 Id.
77 Id.
78 Id.
79 Id.
80 Id. at 1323-24.
81 Id. at 1324.
82 Id. at 1325. This exclusion order covered both products manufactured abroad and imported by SiRF itself and products manufactured abroad and imported on behalf of SiRF. Id.
83 Id. at 1329.
84 Id.
85 Id.
86 Id. at 1329-31.
87 Certain GPS Devices and Prods. Containing Same, Inv. No. 337-TA-602, USITC Pub. 4137, at 202-03 (Aug. 8, 2008) (Initial Determination).
88 For additional cases holding that § 337 liability inheres when infringement occurs after importation, see, e.g., Enercon GmbH v. Int'l Trade Comm'n, 151 F.3d 1376, 1378, 1385-86 (Fed. Cir. 1998) (finding violation based on direct infringement of a method claim); Certain Biometric Scanning Devices, Components Thereof, Associated Software, and Prods. Containing Same, Inv. No. 337-TA-720, USITC Pub. 4366, at 3, 8, 21-22 (Oct. 24, 2011) (Comm'n Order) (finding violation by direct infringement of method claim where, after importation, the importer added its own domestic software to the accused imported scanners and performed the claimed method by testing the combination in the United States); Certain Hardware Logic Emulation Sys. and Common Components Thereof, Inv. No. 337-TA-383, USITC Pub. 3154, at 1-2 (Aug. 21, 1998) (Comm'n Op.) (finding violation by direct infringement of method and system claims where in some instances the domestic respondent imported only components of the system, such as software, and combined them with other components manufactured in the United States to create the infringing combination, and tested the infringing system to perform the patented method).
89 Certain Biometric Scanning Devices, Inv. No. 337-TA-720, USITC Pub. 4366 at 3.
90 Id.
91 Id. at 2.
92 Id. at 3-4.
93 Id. at 7.
94 See id.
95 Id. at 12.
96 Id. at 12, 17.
97 Id. at 12.
98 See id.
99 Suprema, Inc. v. ITC, No. 2012-1170, 2013 WL 6510929, at *1 (Fed. Cir. Dec. 13, 2013).
100 Id. at *2.
101 Id. at *2, *9.
102 Id. at *5.
103 Id. at *6-*7.
104 Id. at *7.
105 Id. at *9.
106 Id. at *8-*9.
107 Id. at *9.
108 Id. at *11.
109 Id.
110 Id.
111 Id. at *19.
112 Id. at *20.
113 Id. at *21.
114 Id. at *23.
115 Id. at *22.
116 Id. at *23.
117 Id. at *24.
118 Id.
119 Id. at n.7.
120 See 19 U.S.C. § 1337 (2012) (omitting the words "at the time of importation"); see also H.R. REP. No. 100-40, at 155 (1987) (observing that the 1988 amendments to the Tariff Act are intended to strengthen the ITC as a forum to vindicate intellectual property rights).
121 See supra Part II.D.
122 See, e.g., Spansion, Inc. v. Int'l Trade Comm'n, 629 F.3d 1331, 1353 (Fed. Cir. 2010) (predicating a finding of contributory infringement on a finding of direct infringement); Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340, 1353-54 (Fed. Cir. 2008) (predicating a finding of inducement infringement on a finding of direct infringement).
123 See 19 U.S.C. § 1337 (lacking the words "at the time of importation").
124 See Certain Elec. Devices with Image Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, USITC Pub. 4374, at 13-14 (Nov. 21, 2011) (Comm'n Op.). The importer's indirect infringement based on downstream direct infringement by another violates section 337. See Spansion, 629 F.3d at 1353 (Fed. Cir. 2010).
125 19 U.S.C. § 1337 (1982).
126 H.R. REP. No. 100-40, at 155 (1987).
127 Id.
128 H.R. REP. No. 100-576, at 112 (1988).
129 See also Certain Hardware Logic Emulation Sys. and Common Components Thereof, Inv. No. 337-TA-383, USITC Pub. 3154, at 28-29 (Aug. 21, 1998) (Comm'n Order) (making similar observations regarding the legislative history of the 1988 amendments to § 337).
130 Enercon GmbH v. Int'l Trade Comm'n, 151 F.3d 1376, 1382-83 (Fed. Cir. 1998).
131 19 U.S.C. § 1337 (2012).
132 Id.
133 Non-Confidential Brief of Appellee at 31-33, S3 Graphics Co. v. Int'l Trade Comm'n, No. 2012-1127 (Fed. Cir. June 12, 2012).
134 See generally 19 U.S.C. § 1337 (lacking the phrase "at the time of importation").
135 Certain Elec. Devices with Image Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, USITC Pub. 4374, at 13-14 (Nov. 21, 2011) (Comm'n Op.); see also Brief of Appellee, supra note 133, at 32-33.
136 Brief of Appellee, supra note 133, at 28-29.
137 Id.
138 19 U.S.C. § 1337.
139 See 35 U.S.C. § 271 (2006 & Supp. V 2011).
140 See Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1366 (Fed. Cir. 1998) ("Mere possession of a product which becomes covered by a subsequently issued patent does not constitute an infringement of that patent until the product is used, sold, or offered for sale . . . .").
141 Brief of Appellee, supra note 133, at 31-33.
142 Id.
143 John Mezzalingua Associates v. Int'l Trade Comm'n, 660 F.3d 1322 (Fed. Cir. 2011).
144 Brief of Appellee, supra note 133, at 31-32 (citing John Mezzalingua, 660 F.3d at 1327-28 ("Congress recognized that the Commission is fundamentally a trade forum, not an intellectual property forum.")); H.R. REP. No. 100-40, at 157 (1987) ("The purpose of the Commission is to adjudicate trade disputes between U.S. industries and those who seek to import goods from abroad.").
145 See John Mezzalingua, 660 F.3d at 1327-28; see also Certain Elec. Devices with Image Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, USITC Pub. 4374 (Nov. 21, 2011) (Comm'n Op.) (omitting an extended discussion of the domestic industry requirement).
146 Brief of Appellee, supra note 133, at 31-33.
147 Id. at 32-33.
148 Id. at 32 (citing Spansion, Inc. v. Int'l Trade Comm'n, 629 F.3d 1331, 1353 (Fed. Cir. 2010)); Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340, 1353-54 (Fed. Cir. 2008).
149 Brief of Appellee, supra note 133, at 32-33.
150 See supra Part II.D.
151 Brief of Appellee, supra note 133, at 31-33.
152 Non-Confidential Brief of Intervenor Apple Inc. at 38-39, S3 Graphics Co. v. Int'l Trade Comm'n, No. 2012-1127 (Fed. Cir. June 12, 2012), 2012 WL 2375049, at *38-39 (citing INS v. Cardoza-Fonseca, 480 U.S. 421, 432 (1987)).
153 See 19 U.S.C. § 1337(d)-(f) (2012).
154 See 28 U.S.C. § 1659 (2012).
155 See Cardoza-Fonseca, 480 U.S. at 432.
156 Brief of Appellee, supra note 133, at 35.
157 See 17 U.S.C. § 901 (2012). "Mask works" are used in producing the circuits on semiconductor chips. See id. A mask work is a series of related images "(A) having or representing the predetermined, three-dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and (B) in which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product." Id.
158 Enercon GmbH v. Int'l Trade Comm'n, 151 F.3d 1376, 1383 (Fed. Cir. 1998) ("[W]e reject Enercon's contention that in the 1988 amendments . . . Congress intended to separate accused infringement of intellectual property rights covered by [§ 337(a)(1)(B)-(D)], from the general class of unfair acts covered by [§ 337(a)(1)(A)].").
159 Id. at 1382-83.
160 See supra Part II.C.
161 See supra Part II.D.
162 See supra Part II.D.
163 Brief of Appellee, supra note 133, at 33.
164 Certain Chemiluminescent Compositions, and Components Thereof and Methods of Using, and Products Incorporating the Same, Inv. No. 337-TA-285, USITC Pub. 2370 (Mar. 22, 1989) (Initial Determination).
165 Certain Cardiac Pacemakers and Components Thereof, Inv. No. 337-TA-162, 1984 WL 273827, at *1 (I.T.C. Mar. 21, 1984) (Initial Determination).
166 Certain Chemiluminescent Compositions, Inv. No. 337-TA-285, at 1 (Initial Determination).
167 Id. at 2.
168 Id. at 29-32.
169 Id. at 30.
170 Id. at 21.
171 Id. at 1.
172 Id. at 35.
173 Id. at 35, 42.
174 Id. at 44-46.
175 Id. at 46 n.13.
176 Id. at 45 (citing 19 U.S.C. § 1337(a)(1)(c) (1988)).
177 Id. at 46 n.13.
178 Id.
179 Certain Elec. Devices with Image Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, USITC Pub. 4374, at 18 n.11 (Nov. 21, 2011) (Comm'n Op.).
180 Certain Cardiac Pacemakers and Components Thereof, Inv. No. 337-TA-162, 1984 WL 273827, at *1-2 (I.T.C. Mar. 21, 1984) (Initial Determination).
181 Id. at *1.
182 Id. at *1-2.
183 Id. at *2.
184 Brief of Appellee, supra note 133, at 34 (citing Certain Cardiac Pacemakers, Inv. No. 337-TA-162, 1984 WL 273827, at *1-2) (emphasis added).
185 Id.
186 See Certain Cardiac Pacemakers, Inv. No. 337-TA-162, 1984 WL 273827 (lacking the phrase "at the time of importation").
187 Id. at *2.
188 Certain Elec. Devices with Image Processing Sys., Components Thereof, and Associated Software, Inv. No. 337-TA-724, USITC Pub. 4374, at 17 (Nov. 21, 2011) (Comm'n Op.).
189 Certain Cardiac Pacemakers, Inv. No. 337-TA-162, 1984 WL 278827, at *2.
190 See id.
191 See Certain Elec. Devices, Inv. No. 337-TA-724, USITC Pub. 4374 at 14.
192 Compare id. at 18, with Certain Cardiac Pacemakers, Inv. No. 337-TA-162, 1984 WL 273827, at *2.
193 Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340, 1353-54 (Fed. Cir. 2008) (predicating a finding of inducement infringement on a finding of direct infringement).
194 See 35 U.S.C. § 271(a) (2006 & Supp. V 2011).
195 Certain Elec. Devices, Inv. No. 337-TA-724, USITC Pub. 4374 at 17.
196 See id. at 17-18.
197 See id.
198 See id. at 18.
199 Suprema, Inc. v. ITC, No. 2012-1170, 2013 WL 6510929, at *24 (Fed. Cir. Dec. 13, 2013).
200 Id. at n.7.
201 Oral Argument at 01:00, Suprema v. Int'l Trade Comm'n, No. 2012-1170 (Fed. Cir. Jan. 10, 2013), available at http://www.cafc.uscourts.gov/oral-argument-recordings/all/suprema.html [hereinafter Suprema Oral Argument].
202 Id. at 31:05.
203 Id.
204 Id. at 32:02.
205 Id. at 29:54.
206 Id. at 30:05, 30:22.
207 Id. at 30:12.
208 35 U.S.C. § 271(b) (2006 & Supp. V 2011).
209 Suprema Oral Argument, supra note 201, at 28:54.
Originally printed in AIPLA Quarterly Journal. Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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