Suprema, Inc. v. International Trade Commission

United States Court of Appeals
for the Federal Circuit
______________________

SUPREMA, INC. AND MENTALIX, INC.,
Appellants,

v.

INTERNATIONAL TRADE COMMISSION,
Appellee,

AND

CROSS MATCH TECHNOLOGIES, INC.,
Intervenor.
______________________

2012-1170
______________________

On appeal from the United States International Trade
Commission in Investigation No. 337-TA-720.
-----------------------

CROSS MATCH TECHNOLOGIES, INC.,
Appellant,

v.

INTERNATIONAL TRADE COMMISSION,
Appellee,

AND
2 SUPREMA v. ITC

SUPREMA, INC. AND MENTALIX, INC.,
Intervenors.
_____________________

2012-1026, -1124
______________________

On appeal from the United States International Trade
Commission in Investigation No. 337-TA-720.
______________________

Decided: December 13, 2013
______________________

DARRYL M. WOO, Fenwick & West, LLP, of San Fran-
cisco, California, argued for appellants Suprema, Inc., et
al. With him on the brief were HEATHER N. MEWES, JAE
WON SONG, ILANA S. RUBEL, BRYAN A. KOHM, DAVID M.
LACY KUSTERS and ERIN SIMON.

CLINT A. GERDINE, Attorney, Office of General Coun-
sel, United States International Trade Commission, of
Washington, DC, argued for appellee. With him on the
brief were DOMINIC L. BIANCHI, Acting General Counsel,
and ANDREA C. CASSON, Assistant General Counsel for
Litigation.

MAXIMILIAN A. GRANT, Latham & Watkins LLP, of
Washington, DC, argued for intervenor Cross Match
Technologies, Inc. With her on the brief were GABRIEL K.
BELL, MICHAEL A. DAVID and GREGORY K. SOBOLSKI. Of
counsel on the brief was CLEMENT J. NAPLES, of New York,
New York.
SUPREMA v. ITC 3

DARYL JOSEFFER, King & Spalding LLP, of Washing-
ton, DC, for amicus curiae. With him on the brief was
ADAM CONRAD.
______________________

MAXIMILIAN A. GRANT, Latham & Watkins LLP, of
Washington, DC, argued for appellant Cross Match Tech-
nologies, Inc. With her on the brief were MICHAEL A.
DAVID and GABRIEL K. BELL. Of counsel on the brief was
CLEMENT J. NAPLES, of New York, New York.

CLINT A. GERDINE, Attorney, Office of General Coun-
sel, United States International Trade Commission, of
Washington, DC, argued for appellee. With him on the
brief were DOMINIC L. BIANCHI, Acting General Counsel,
and ANDREA C. CASSON, Assistant General Counsel for
Litigation.

DARRYL M. WOO, Fenwick & West, LLP, of San Fran-
cisco, California, argued for intervenors Suprema, Inc., et
al. With him on the brief were JAE WON SONG, ILANA S.
RUBEL, BRYAN A. KOHM, DAVID M. LACY KUSTERS. Of
counsel was HEATHER N. MEWES.
______________________

Before PROST, O’MALLEY, and REYNA, Circuit Judges.
Opinion for the court filed by Circuit Judge O’MALLEY.
Opinion concurring in part and dissenting in part filed by
Circuit Judge REYNA.
O’MALLEY, Circuit Judge.
We address related appeals from rulings of the U.S.
International Trade Commission (“the Commission”).
First, we consider the propriety of the Commission’s
limited exclusion order barring importation of optical
4 SUPREMA v. ITC

scanning devices and a related cease and desist order. We
vacate the cease and desist order, vacate the limited
exclusion order in part, and remand so that the order can
be revised to bar only a subset of the scanners at issue.
Resolution of this appeal turns in part on our conclusion
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 under 35 U.S.C. § 271(b) where
direct infringement does not occur until after importation
of the articles the exclusion order would bar. The Com-
mission’s authority under § 1337(a)(1)(B)(i) reaches
“articles that . . . infringe a valid and enforceable United
States patent” at the time of importation. Because there
can be no induced infringement unless there has been an
act of direct infringement, however, there are no “arti-
cles . . . that infringe” at the time of importation when
direct infringement has yet to occur. The Commission’s
exclusion order must be revised, accordingly, to bar only
those articles that infringe a claim or claims of an assert-
ed patent at the time of importation.
Next, we consider a Commission order refusing to find
a violation of § 337 with respect to some of the same
optical scanners. The proceeding giving rise to that
appeal was premised on alleged infringement of U.S.
Patent No. 7,277,562 (“the ’562 patent”), a different
patent than the two patents at issue in the first appeal we
address today. The Commission concluded that the
scanners at issue did not infringe the asserted claims of
the ’562 patent when properly construed. Because we
agree with the Commission’s claim construction and non-
infringement finding, we affirm the Commission’s ruling
in this related appeal.
SUPREMA v. ITC 5

I.
A.
The Commission rulings before us arise from proceed-
ings in which Cross Match Technologies, Inc. (“Cross
Match”) asserts that Suprema, Inc. and Mentalix, Inc.
violated 19 U.S.C. § 1337(a)(1)(B)(i) by importing articles
that infringe or are used to infringe U.S. Patent Nos.
7,203,344 (“the ’344 patent”), 7,277,562 (“the ’562 pa-
tent”), and 5,900,993 (“the ’993 patent”). The Commission
found that Mentalix directly infringed method claim 19 of
the ’344 patent by using its own software with imported
Suprema scanners and found that Suprema induced that
infringement. The Commission also found that certain of
Suprema’s imported optical scanners directly infringe
claims 10, 12, and 15 of the ’993 patent. But the Commis-
sion found no infringement of the ’562 patent. The Com-
mission then held that Suprema and Mentalix failed to
prove that the ’993 patent was invalid as obvious over two
prior art patents: U.S. Patent No. 3,619,060 (“the ’060
patent”) and U.S. Patent No. 5,615,051 (“the ’051 patent”).
Based on these findings, on October 24, 2011, the Com-
mission issued a limited exclusion order directed to cer-
tain scanning devices imported “by or on behalf of
Suprema or Mentalix” and issued a cease and desist order
directed to Mentalix only.
Suprema and Mentalix premised their appeal of the
exclusion and cease and desist orders on their belief that
the Commission erred because: (1) a § 337(a)(1)(B)(i)
violation may not be predicated on a theory of induced
infringement under the facts of this case; (2) Suprema
was not willfully blind to the existence of the ’344 patent
and, thus, did not induce infringement of that patent; (3)
Mentalix did not directly infringe the ’344 patent; (4)
Suprema’s scanners do not infringe the ’993 patent under
the correct claim construction; and (5) the asserted claims
6 SUPREMA v. ITC

of the ’993 patent were invalid as obvious. Cross Match,
in turn, appeals the Commission’s non-infringement
ruling with respect to the ’562 patent, challenging the
claim construction upon which that ruling was based.
We vacate the infringement finding on the ’344 patent
because we hold that an exclusion order based on a viola-
tion of § 337(a)(1)(B)(i) may not be predicated on a theory
of induced infringement where no direct infringement
occurs until post-importation. Given this conclusion, we
do not reach the merits of the Commission’s willful blind-
ness or direct infringement findings on the ’344 patent.
Regarding the ’993 patent, we affirm the Commission’s
finding of infringement and conclusion that Suprema
failed to prove that the asserted claims were invalid as
obvious. Finally, we affirm the Commission’s non-
infringement ruling regarding the ’562 patent.
B.
The technology at issue pertains to biometrics (i.e.,
the science of analyzing biological characteristics) and the
scanning of biometric objects. This case specifically
involves fingerprint scanners. Fingerprint capture and
recognition, probably the most common form of biomet-
rics, is important technology because many industries and
law enforcement increasingly rely on fingerprints as
biometrics to store, recognize, or verify identity.
C.
As explained above, these appeals concern three pa-
tents. Two are method patents, the ’344 patent and the
’562 patent. The ’344 patent is at issue in the appeal by
Suprema and Mentalix; the ’562 patent is at issue in
Cross Match’s appeal. They relate to particular imple-
mentations of fingerprint image capture and processing.
The third patent, the ’993 patent, contains apparatus
SUPREMA v. ITC 7

claims (over an “optical system”) and is at issue in Su-
prema’s appeal.
The ’344 patent contains claims drawn to methods
used by an optical scanning system to detect fingerprint
images based on shape and area, and to determine finger-
print quality based on the detected shape and area. ’344
patent col. 19 ll. 24–38. Claim 19 (the only claim of the
’344 patent found infringed) recites such a process:
A method for capturing and processing a finger-
print image, the method comprising:
(a) scanning one or more fingers;
(b) capturing data representing a corre-
sponding fingerprint area;
(c) filtering the fingerprint image;
(d) binarizing the filtered fingerprint im-
age;
(e) detecting a fingerprint area based on a
concentration of black pixels in the bina-
rized fingerprint image;
(f) detecting a fingerprint shape based on
an arrangement of the concentrated black
pixels in an oval-like shape in the bina-
rized fingerprint image; and
(g) determining whether the detected fin-
gerprint area and shape are of acceptable
quality.
Id. col. 19 ll. 24–37.
The ’993 patent claims an optical system for forming a
real image of a biometric object that corrects for field
curvature using a three-lens system. Claims 10, 12, and
8 SUPREMA v. ITC

15 were found infringed. Claims 12 and 15 depend from
claim 10. The three claims read:
10. An optical system having an optical axis, said
system forming an image of an object and com-
prising:
a) a prism having a first surface for con-
tacting the object and a second surface,
said first surface being oriented with re-
spect to the optical axis at an angle great-
er than the angle of total internal
reflection of the surface;
b) an aperture stop;
c) a first lens unit having a positive power
between the aperture stop and the prism
for forming a telecentric entrance pupil;
d) a second lens unit having a positive
power for forming a real image of the ob-
ject, said second lens unit being on the
image side of the first lens unit; and
e) a third lens unit for correcting the field
curvature of the image contributed by the
first and second lens units.
12. The optical system of claim 10 wherein the
first lens units consist of a single lens element.
15. The optical system of claim 10 wherein the
third lens unit has a negative power.
’993 patent col. 10 ll. 18–45. The debate over the ’993
patent centers on whether the optical system described in
claim 10 can include within it non-lens elements, such as
the mirrors that are included in the lens units of the
Suprema scanners. While Suprema says claim 10 and
those claims that depend therefrom exclude the use of
SUPREMA v. ITC 9

such mirrors, the ALJ and the Commission found they did
not.
The ’562 patent claims methods aimed at “reliably
capturing print images.” The parties’ dispute regarding
the ’562 patent centers on an issue of claim construction—
in particular, the determination by the ALJ and Commis-
sion that “capture,” within the meaning of the asserted
claims, cannot occur until after the print quality and
number of prints have been determined and detected.
D.
Cross Match, the complainant and intervenor, is a
global provider of fingerprint acquisition technology. It is
a domestic company headquartered in Florida, and it
develops and manufactures a variety of biometric identifi-
cation products for verifying a person’s identity, such as
fingerprint and palm print scanners. It supplies products
to the U.S. government and private industry. Cross
Match is the sole assignee of the three patents-in-suit.
The respondents below are Suprema, a Korean com-
pany that manufactures and imports hardware and
software for scanning fingerprints, and Mentalix, a do-
mestic importer of Suprema scanners. Specifically at
issue are Suprema scanners marketed under the trade-
name RealScan and software development kits (“SDKs”)
packaged along with those scanners. Mentalix imports
Suprema’s scanners and integrates them with its own
software in the United States. The specific Mentalix
software involved in this case is called FedSubmit. Men-
talix’s accused software can be used with fingerprint
scanners sold by other companies, including Cross Match.
In the Commission investigation, Cross Match contended
that its system claims are infringed by Suprema optical
systems and that the method claims at issue are infringed
when Suprema’s scanners are used in combination with
10 SUPREMA v. ITC

both respondents’ software (i.e., Suprema’s SDKs and
FedSubmit).
E.
Suprema appeals the Commission’s finding that it vio-
lated § 337(a)(1)(B)(i) by infringement of the ’344 and ’993
patents, and asks that the related exclusion orders be
vacated. The ALJ found that a number of Suprema’s
scanners (RealScan-10, RealScan-D, RealScan-10F, and
RealScan-DF), when used with Mentalix’s FedSubmit
software, directly infringe claim 19 of the ’344 patent and
recommended an exclusion order relating to those scan-
ners on that ground. The Commission agreed that the
’344 patent was infringed, but clarified the controlling
infringement theories—it concluded that Mentalix direct-
ly infringes method claim 19 of the ’344 patent when it
combines Suprema products with its own software and
that Suprema induces that infringement.
While the ALJ had not considered inducement and
made no factual finding on its elements, the Commission
nevertheless concluded that the record evidence support-
ed a finding that Suprema (1) was willfully blind to the
’344 patent, (2) studied and emulated Cross Match’s
products before willfully blinding itself to the infringing
nature of Mentalix’s activities, and (3) actively encour-
aged those activities. Therefore, it found that Suprema
had induced infringement of the patented method under
35 U.S.C. § 271(b), and that this inducement formed the
basis for a § 337(a)(1)(B)(i) violation.
Regarding the underlying direct infringement, the
Commission found that Mentalix’s FedSubmit software,
when integrated with the imported Suprema scanners,
and upon execution of the software, practiced method
claim 19 of the ’344 patent under the ALJ’s claim con-
SUPREMA v. ITC 11

structions. 1 The Commission adopted those constructions
and the subsequent infringement findings.
With respect to the ’993 patent, the Commission fully
adopted the ALJ’s infringement analysis. Specifically, the
Commission found that the claimed optical systems need
not exclude non-lens elements (such as distortion correct-
ing prisms or holographic optical elements) or off-axis
optics. The Commission then concluded that all the
recited elements of claims 10, 12, and 15 were met by the
accused scanners.
The Commission also found that the asserted prior
art, the ’060 and ’051 patents, did not render the asserted
claims of the ’993 patent obvious. Based on the eviden-
tiary record, the ALJ determined that the respondents
failed to offer clear and convincing evidence that the
combination of the ’060 and ’051 patents renders asserted
independent claim 10, as well as asserted dependent
claims 11–12, 15, and 17–18, obvious under § 103(a). The
ALJ concluded that the ’060 patent did not disclose ele-
ment 10(c) (a first lens unit having a positive power
between the aperture stop and the prism for forming a
telecentric entrance pupil), element 10(d) (a second lens
unit having a positive power for forming a real image of
the object), or element 10(e) (a third lens unit for correct-
ing field curvature). The ALJ also noted that, although

1 Although the Commission says that Mentalix con-
ceded that it directly infringed claim 19, Mentalix con-
tests that statement and points to places in the record
where it denied that it practiced the asserted method. We
see no support in the record for the Commission’s charac-
terization of Mentalix’s position, but need not address it
further since we vacate the only Commission order di-
rected to Mentalix on other grounds.
12 SUPREMA v. ITC

the ’051 patent disclosed a triplet lens that was well
suited for use with photographic cameras, the patent did
not pertain to fingerprint scanners and did not disclose a
telecentric condition. The ALJ also found no motivation
to combine the two references. The Commission adopted
each of these findings.
F.
In its separate appeal, Cross Match challenges the
Commission’s determination that claims 1, 5–7, 12, and
30 of the ’562 patent are not infringed by either Su-
prema’s scanners or use of those scanners in conjunction
with the FedSubmit software. The ALJ adopted Cross
Match’s proposed construction of “capture” as it appears
in step (f) of the asserted independent claims, namely,
that “capture” means “acquiring, by the scanner, for
processing or storage.” The Commission adopted that
construction and, based on it, also adopted the ALJ’s
finding that the accused products do not infringe the
asserted claims.
Specifically, the Commission found that the “capture”
limitation was not met because the record evidence
showed that the accused scanners do not perform the
steps of claim 1 in the required order. The Commission
found that Claim 1 requires that the scanned fingerprint
image be captured after both a determination of the
expected number of prints under step (e) and a determi-
nation of the quality of the prints under step (d) have
been made. But the accused products capture the finger-
print image before software determines the number of
prints as required by step (e) and before assessing their
quality as required by step (d). The Commission also
found the accused products do not perform step (f) of
claim 30, since that step is substantially the same as step
(f) of claim 1.
SUPREMA v. ITC 13

II.
We turn first to Suprema’s appeal regarding the ’344
patent and the threshold issue it raises—specifically,
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. We conclude that § 337(a)(1)(B)(i),
by tying the Commission’s authority to the importation,
sale for importation, or sale within the U.S. after importa-
tion of articles that infringe a valid and enforceable U.S.
patent, leaves the Commission powerless to remedy acts
of induced infringement in these circumstances. Accord-
ingly, we vacate the Commission’s rulings regarding the
’344 patent. 2
A.
On appeal, Suprema contends it does not import “arti-
cles that infringe,” as required under § 337(a)(1)(B)(i).
The accused devices are imported scanners which Cross
Match concedes do not directly infringe the method of
claim 19 of the ’344 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. Cross Match

2 Our ruling is not a jurisdictional one. The ques-
tion we address is not whether the Commission may
initiate an investigation where theories of induced in-
fringement are implicated; we simply conclude that a
§ 337(a)(1)(B)(i) violation may not be predicated on a
theory of induced infringement in these circumstances.
See Amgen, Inc. v. U.S. Int’l Trade Comm’n, 902 F.2d
1532, 1535 (Fed. Cir. 1990) (noting that the Commission
is correct to first assume jurisdiction and then determine
merits of claim where patent claims are asserted).
14 SUPREMA v. ITC

does not dispute that the scanners have substantial non-
infringing uses, and Suprema contends its other custom-
ers have put them to such uses. On these facts, Suprema
contends that no infringing articles were ever imported.
Accordingly, Suprema asserts that the Commission’s
decision with respect to the ’344 patent must be vacated.
Suprema argues that allegations of induced infringe-
ment do not adequately connect the fact of importation to
the ultimate infringement. Suprema concedes that, if an
article is capable of no non-infringing uses, its importa-
tion may constitute contributory infringement and there-
by violate § 337. But, Suprema asserts that the imported
scanners at issue here are capable of multiple non-
infringing uses. It is only when they are combined with
Mentalix’s specific software program that they purported-
ly infringe the method described in claim 19. Suprema
believes that § 337(a)(1)(B)(i) does not reach the conduct
in which Cross Match alleges it engaged.
Cross Match defends the Commission’s ruling that, by
inducing Mentalix to commit direct infringement, Su-
prema violated § 337(a)(1)(B)(i). Cross Match argues that
In the Matter of Certain Electronic Devices, Inv. No. 337-
TA-724, 2012 WL 3246515, at *8–9 (ITC Dec. 21, 2011), a
recent Commission ruling, makes clear that a § 337
violation can be predicated on the theory of induced
infringement the Commission employed here. Cross
Match also relies on our rulings in Kyocera Wireless Corp.
v. International Trade Commission 545 F.3d 1340 (Fed.
Cir. 2008), and Alloc, Inc. v. International Trade Commis-
sion, 342 F.3d 1361 (Fed. Cir. 2003).
The Commission disputes Suprema’s argument re-
garding the scope of its authority under § 337(a)(1)(B)(i).
According to the Commission, “articles that . . . infringe”
can involve any type of infringement, be it direct, contrib-
utory, or induced. The Commission asserts that Suprema
SUPREMA v. ITC 15

began encouraging and aiding and abetting Mentalix’s
infringement well before importation, indicating that
Suprema already was indirectly infringing at the time of
importation. The Commission also cites Certain Electron-
ic Devices, which, in its view, did not change the law and
simply reiterated that all forms of indirect infringement
can lead to a violation of § 337(a)(1)(B)(i).
B.
The Commission’s authority to issue exclusion orders
in this case must find a basis in statute. See Kyocera, 545
F.3d at 1355 (“The ITC is a creature of statute, and must
find authority for its actions in its enabling statute.”).
The question presented is, thus, one of statutory construc-
tion. When interpreting a statute which an agency ad-
ministers, we conduct our statutory analysis under the
framework established in Chevron U.S.A. Inc. v. Natural
Resources Defense Council, Inc., 467 U.S. 837 (1984).
Under that framework, “a reviewing court must first ask
‘whether Congress has directly spoken to the precise
question at issue.’” FDA v. Brown & Williamson Tobacco
Corp., 529 U.S. 120, 132 (2000) (quoting Chevron, 467
U.S. at 842). “If Congress has done so, the inquiry is at
an end; the court ‘must give effect to the unambiguously
expressed intent of Congress.’” Id. (quoting Chevron, 467
U.S. at 843). If, however, “the statute in question is
ambiguous and the agency’s interpretation is reasonable,”
“a court must defer to an agency’s construction of a stat-
ute governing agency conduct.” Cathedral Candle Co. v.
U.S. Int’l Trade Comm’n, 400 F.3d 1352, 1361 (Fed. Cir.
2005).
All matters of statutory construction, of course, begin
with the language of the statute in question. See Hughes
Aircraft Co. v. Jacobson, 525 U.S. 432, 438 (1999) (“As in
any case of statutory construction, our analysis begins
16 SUPREMA v. ITC

with the language of the statute.”) (internal quotation
marks omitted). Section 337 states:
(1) Subject to paragraph (2), the following are un-
lawful, and when found by the Commission to ex-
ist 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 Unit-
ed States patent or a valid and enforceable
United States copyright registered under
Title 17; or
19 U.S.C. § 1337(a) (emphases added). The Commission’s
mandate to deal with matters of patent infringement
under § 337(a)(1)(B)(i) is thus premised on the “importa-
tion,” “sale for importation,” or “sale within the United
States after importation” of “articles that . . . infringe.”
Id. Thus, the Commission’s authority extends to “articles
that . . . infringe a valid and enforceable United States
patent.” The 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.
The same focus is evident also from the main remedy
it can grant, exclusion orders on the imported articles:
(d) Exclusion of articles from entry
(1) If the Commission determines, as a result of an
investigation under this section, that there is a vi-
olation of this section, it shall direct that the arti-
cles concerned, imported by any person violating
SUPREMA v. ITC 17

the provision of this section, be excluded from en-
try into the United States, unless, after consider-
ing the effect of such exclusion upon the public
health and welfare, competitive conditions in the
United States economy, the production of like or
directly competitive articles in the United States,
and United States consumers, it finds that such
articles should not be excluded from entry. The
Commission shall notify the Secretary of the
Treasury of its action under this subsection direct-
ing such exclusion from entry, and upon receipt of
such notice, the Secretary shall, through the prop-
er officers, refuse such entry.
19 U.S.C. § 1337 (emphasis added). In the context of this
dispute, the “articles concerned” would be, of course, the
aforementioned “articles that . . . infringe a valid and
enforceable United States patent,” 19 U.S.C.
§ 1337(a)(1)(B)(i). Exclusion orders based on violations of
§ 337(a)(1)(B)(i) thus pertain only to the imported goods
and are necessarily based on the infringing nature of
those goods when imported. 3

3 Certain provisions of § 337 do mention “any per-
son violating the provision of this section,” 19 U.S.C.
§ 1337(d), and the Commission can issue cease and desist
orders to “any person violating this section,” § 1337(f).
This language, limits the remedies authorized by those
provisions to reach only certain persons. See Kyocera, 545
F.3d at 1357. But it does not broaden the Commission’s
authority beyond the scope of § 337(a)(1)(B)(i), which
prohibits only specified acts involving “articles that . . .
infringe.” Section 337(a)(1)(B)(i) does not reach parties’
general culpable conduct that is not specified in the
18 SUPREMA v. ITC

The Commission has recognized this limitation on its
jurisdiction by refusing to investigate complaints prem-
ised on allegations of direct infringement of method
claims under § 271(a) because patented methods are not
infringed until “use” in the United States occurs. See In
the Matter of Certain Electronic Devices, Inv. No. 337-TA-
724, 2012 WL 3246515, at *12–13 (ITC Dec. 21, 2011).
C.
To determine if imported goods are “articles that . . .
infringe,” we turn to the patent laws, specifically, § 271 of
Title 35 of the U.S. Code. That provision defines unlawful
patent infringement—i.e., the basis for the unfair trade
practice regulated in 19 U.S.C. § 1337(a)(1)(B). Section
271 states:
(a) Except as otherwise provided in this title,
whoever without authority makes, uses, offers to
sell, or sells any patented invention, within the
United States or imports into the United States
any patented invention during the term of the pa-
tent therefor, infringes the patent.
(b) Whoever actively induces infringement of a
patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the Unit-
ed States or imports into the United States a
component of a patented machine, manufacture,
combination or composition, or a material or ap-
paratus for use in practicing a patented process,
constituting a material part of the invention,
knowing the same to be especially made or espe-
cially adapted for use in an infringement of such

section, even if that conduct eventually is related to acts
of patent infringement following importation.
SUPREMA v. ITC 19

patent, and not a staple article or commodity of
commerce suitable for substantial noninfringing
use, shall be liable as a contributory infringer.
35 U.S.C. § 271.
Section 271(a) defines direct patent infringement and
makes unlawful conduct tied to an article, namely, the
making, using, offering for sale, and selling of a “patented
invention.” Section 271(c) defines contributory patent
infringement, which again prohibits conduct tied to an
article, but here, “a component of a patented machine,
manufacture, combination or composition, or a material or
apparatuses for use in practicing a patented process,
constituting a material part of the invention.” Section
271(b) defines induced patent infringement, and this
provision, unlike the other two, declares unlawful conduct
which is untied to an article—“actively induc[ing] in-
fringement of a patent.”
Precedent from our court makes evident the nature of
§ 271(b) and its focus on the conduct of the inducer. See,
e.g., DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306
(Fed. Cir. 2006) (en banc) (“[I]nducement requires evi-
dence of culpable conduct, directed to encouraging anoth-
er’s infringement, not merely that the inducer had
knowledge of the direct infringer’s activities.” (emphasis
added)). We have stated, additionally, that “[t]o succeed
[on a theory of induced infringement], a plaintiff must
prove that the defendants’ actions induced infringing acts
and that they knew or should have known their actions
would induce actual infringement.” Warner-Lambert Co.
v. Apotex Corp., 316 F.3d 1348, 1363 (Fed. Cir. 2003)
(emphasis added) (internal quotation marks and altera-
tions omitted). For this reason, a large part of the in-
ducement analysis and our case law dealing with the
theory focuses on the intent of the inducer in performing
the proscribed act. See DSU, 471 F.3d at 1304–06. Our
20 SUPREMA v. ITC

most recent en banc decision dealing with induced in-
fringement likewise makes clear the nature of the offense:
“[S]ection 271(b) extends liability to a party who advises,
encourages, or otherwise induces others to engage in
infringing conduct. . . .” Akamai Techs., Inc. v. Limelight
Networks, Inc., 692 F.3d 1301, 1307–08 (Fed. Cir. 2012)
(en banc).
But the focus of the inducement analysis is not on the
conduct of the alleged inducer alone. “To prevail on
inducement, ‘the patentee must show, first that there has
been direct infringement . . . .’” Kyocera, 545 F.3d at
1353–54 (quoting Minn. Mining & Mfg. Co. v. Chemque,
Inc., 303 F.3d 1294, 1304–05 (Fed. Cir. 2002)). Under
that longstanding law, while the inducing act must of
course precede the infringement it induces, it is not a
completed inducement under § 271(b) until there has been
a direct infringement.
D.
Given the nature of the conduct proscribed in § 271(b)
and the nature of the authority granted to the Commis-
sion in § 337, we hold that the statutory grant of authori-
ty 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 in-
fringing when imported. Section 271(b) makes unlawful
certain conduct (inducing infringement) that becomes tied
to an article only through the underlying direct infringe-
SUPREMA v. ITC 21

ment. Prior to the commission of any direct infringement,
for purposes of inducement of infringement, there are no
“articles that . . . infringe”—a prerequisite to the Commis-
sion’s exercise of authority based on § 337(a)(1)(B)(i).
Consequently, we hold that the Commission lacked the
authority to enter an exclusion order directed to Su-
prema’s scanners premised on Suprema’s purported
induced infringement of the method claimed in the ’344
patent. 4
E.
Cross Match points to a number of cases from our
court and the Commission to argue that the Commission
has the authority to entertain induced infringement
claims. But the cases on which Cross Match relies do not
squarely address the issue or are distinguishable. In
Kyocera Wireless Corp. v. International Trade Commis-
sion, we reversed a finding of induced infringement by the
Commission—because it failed to apply the “specific
intent” requirement which, subsequent to the Commis-
sion’s determination, we clarified in DSU—and remanded
for reassessment under the correct legal standard. 545
F.3d at 1354. We assumed without deciding that the
Commission had the authority to predicate a § 337 exclu-
sion order on its finding of induced infringement by
Qualcomm. There was no challenge to the Commission’s

4 We do not agree with the dissent that today’s
holding will materially impact the ITC’s ability to carry
out its mandate. Our holding is far narrower than the
dissent asserts; as we explain, virtually all of the mischief
the dissent fears can be addressed by the ITC via resort to
§ 271(a) or § 271(c), or even to § 271(b) where the direct
infringement occurs pre-importation.
22 SUPREMA v. ITC

authority to predicate a violation on the theories urged.
Our holding was limited to the following:
Because the Commission based its finding on an
approach overruled by DSU, this court vacates
and remands the ITC’s determination of induced
infringement. On remand, the ITC will have the
opportunity to examine whether Qualcomm’s con-
duct satisfies the specific intent requirement set
forth in DSU.
Id. at 1354. It is understandable, moreover, that the
parties and court in Kyocera did not focus on the Commis-
sion’s authority to address inducement in the circum-
stances presented here (i.e., where no direct infringement
occurs until after the articles are imported). The facts in
Kyocera were very different.
In Kyocera, the Commission prohibited the importa-
tion of wireless communication devices “which when
programmed to enable certain battery-saving features
infringe the ’983 patent,” but the Commission only did so
with respect to manufacturers who “purchase[d] and
incorporate[d] Qualcomm chips into their mobile wireless
devices outside the United States, and then imported
them into the United States for sale.” Id. at 1346. Thus,
while the infringement theory the Commission relied
upon in Kyocera was one of induced infringement, the
Commission’s exclusion order was directed to articles
which, when imported, directly infringed the patents at
issue. Thus, this case differs significantly from Kyocera.
Alloc, Inc. v. International Trade Commission, 342
F.3d 1361 (Fed. Cir. 2003), also does not compel us to
reach a different conclusion here. In Alloc, in a brief
discussion we affirmed a Commission finding of no in-
duced infringement. But there was no challenge in that
case to the Commission’s authority over inducement
SUPREMA v. ITC 23

claims, and we premised our holding on the fact that
there simply was no evidence of either direct infringe-
ment—by anyone—or of an intent to induce by the im-
porters:
Here, the administrative judge found no evidence
that the Intervenors intended to induce others to
infringe the asserted patents. More importantly,
the administrative judge found no evidence of di-
rect infringement, which is a prerequisite to indi-
rect infringement. Moba, B.V. v. Diamond
Automation, Inc., 325 F.3d 1306, 1318 (Fed. Cir.
2003) (“Because this court upholds the verdict
that claim 28 of the ’494 patent is not directly in-
fringed, the trial court correctly determined that
FPS does not indirectly infringe that claim.”);
Met–Coil Sys. Corp. v. Korners Unlimited, Inc.,
803 F.2d 684, 687 (Fed. Cir. 1986) (“[T]here can be
no inducement of infringement without direct in-
fringement by some party.”). This court finds no
reason to disturb the administrative judge’s con-
clusion on inducement.
Alloc, 342 F.3d at 1374. Thus, Alloc is uninformative with
respect to the question presented here.
Simply put, the issue we address today has never
been presented to or decided by us. We are unpersuaded
by either Cross Match’s or the Commission’s efforts to
read more into Kyocera and Alloc than is there. See
United States v. L.A. Tucker Truck Lines, Inc., 344 U.S.
33, 38 (1952) (“[T]his Court is not bound by a prior exer-
cise of jurisdiction in a case where it was not questioned
and it was passed sub silentio.”); Beacon Oil Co. v.
O’Leary, 71 F.3d 391, 395 (Fed. Cir. 1995) (“Stare decisis
applies only to legal issues that were actually decided in a
prior action.”)
24 SUPREMA v. ITC

The parties also focus on a recent Commission ruling,
In the Matter of Certain Electronic Devices, Inv. No. 337-
TA-724 2012 WL 3246515, at *8–9 (ITC Dec. 21, 2011).
There, the pertinent issue was raised. The Commission
analyzed the statutory provisions we discussed above and
concluded it has the authority generally to entertain
indirect infringement claims:
The plain language of [19 U.S.C. § 1337(a)(1)(B)]
first identifies three specific acts that may form
the basis of a violation of section 337: importation,
selling for importation, and selling after importa-
tion. The statute then specifies, in list form, cate-
gories of articles that must be involved in the
proscribed acts. First on the list are “articles that
– infringe” a U.S. patent. Id. § 1337(a)(1)(B)(i).
Because the statute specifies that the articles in
question must “infringe,” an importation analysis
that ignores the question of infringement would
be incomplete.
The word “infringe” in section 337 derives its legal
meaning from 35 U.S.C. § 271, the section of the
Patent Act that defines patent infringement. Sec-
tion 271 defines infringement to include direct in-
fringement (35 U.S.C. § 271(a)) and the two
varieties of indirect infringement, active induce-
ment of infringement and contributory infringe-
ment (35 U.S.C. § 271(b), (c)). Thus, section
337(a)(1)(B)(i) covers imported articles that direct-
ly or indirectly infringe when it refers to “articles
that – infringe.” We also interpret the phrase “ar-
ticles that – infringe” to reference the status of the
articles at the time of importation. Thus, in-
fringement, direct or indirect, must be based on
the articles as imported to satisfy the require-
ments of section 337.
SUPREMA v. ITC 25

Certain Electronic Devices, 2012 WL 3246515, at *8–9.
Despite this general discussion, on the merits, the Com-
mission ultimately found no infringement:
Thus, S3G might have proved a violation of sec-
tion 337 if it had proved indirect infringement of
method claim 16. S3G failed to do so, however,
and we adopt the ALJ’s findings to that effect.
Because S3G has not shown importation, sale for
importation, or sale after importation of articles
that infringe method claim 16, directly or indirect-
ly, S3G has not shown a violation of section 337
based on infringement of method claim 16.
Id. at *12–13; see also id. at *16 (“Because S3G has failed
to prove indirect infringement of any asserted method
claim, we reiterate that S3G has not shown a violation of
section 337 with respect to claim 16 of the ’146 patent.”).
We are not persuaded that the decision in Certain Elec-
tronic Devices counsels against the conclusion we reach
today.
First, while the Commission spoke in terms of its au-
thority to ban articles that infringe either directly or
indirectly, it emphasized that the “articles” must infringe
“at the time of importation.” Id. at *9. For inducement,
the only pertinent articles are those which directly in-
fringe—at the time of importation. Hence, while the
Commission may ban articles imported by an “inducer”
where the article itself directly infringes when imported
(as it attempted to do in Kyocera), it may not invoke
inducement to ban importation of articles which may or
may not later give rise to direct infringement of Cross
Match’s patented method based solely on the alleged
intent of the importer. Second, the Commission’s discus-
sion of its authority to predicate a § 337 finding on an
inducement claim in Certain Electronic Devices was dicta;
ultimately, it did not resort to its purported authority
26 SUPREMA v. ITC

over such claims to fashion a remedy. And, the Commis-
sion’s ruling, even if not dicta, would not be binding on us.
Instead, we are bound by congressional intent, which is
evident from the statutory language. 5
F.
Because we find the Commission had no authority to
premise an exclusion order addressed to Suprema’s scan-
ners on the infringement theory it employed, we do not
address the Commission’s other findings on the ’344
patent. Whether Mentalix directly infringes claim 19 of
the ’344 patent and whether Suprema induces that in-
fringement are issues to be addressed by the only tribunal
with authority to do so—the applicable federal court
forum.
III.
We turn next to Suprema’s challenge to the Commis-
sion’s finding that certain products Suprema imports
(RealScan-10 and RealScan-10F) infringe claims 10, 12,
and 15 of the ’993 patent. The Commission adopted the
ALJ’s initial determination on these claims as its own.
On appeal, Suprema challenges the ALJ’s claim construc-
tion of a term appearing in the asserted claims, the in-
fringement finding based on that claim interpretation,
and the holding that Suprema failed to prove that the ’993
patent would have been obvious.
A.
The claim construction dispute involves the phrase
“said second lens unit being on the image side of the first

5 Because we find congressional intent unambigu-
ous, we decline to afford deference to the Commission’s
views on the precise question presented.
SUPREMA v. ITC 27

lens unit,” as it appears in step (d) of claim 10 of the ’993
patent, and the two other asserted claims, which both
depend from claim 10. Specifically, Suprema argues that
the claimed lens system 6 excludes “non-lens elements”
and “off-axis optics” because those were disavowed in the
written description of the ’993 patent. So there can be no
non-lens elements between the “lens units,” Suprema
believes, and the ALJ erred by not limiting the claims in
this manner.
The ALJ did not separately analyze the language of
step (d) but did construe the term “optical system,” which
appears in the preamble of claim 10 and the dependent
claims. In its analysis of “optical system,” the ALJ first
found the preamble of claim 10 to be a limitation, In the
Matter of Certain Biometric Scanning Devices, Compo-
nents Thereof, Associated Software, and Products Contain-
ing the Same, Final Initial and Recommended
Determinations, Inv. No. 337-TA-720, USITC Pub. 4366,
at 24 (June 17, 2011) [hereinafter “Initial Determina-
tion”], and then held that “optical system” “could include
non-lens elements, distortion correction prisms, holo-
graphic optical elements and off-axis optics,” id. at 25.
The ALJ looked to the written description for a disavowal
related to the presence of non-lens elements in the “opti-
cal system,” ultimately finding none. Id. at 26. Then, he
stated the following:
Based on said construction of “optical system” su-
pra, the administrative law judge rejects respond-
ents’ arguments regarding the disavowal of non-
lens elements and off-axis optics with respect to
the other elements of claim 10 of the ’993 patent.

6 Suprema uses “lens system” to refer to the three
lens units and aperture stop recited in claim 10.
28 SUPREMA v. ITC

(RBr at 195-196.) Thus, he finds that the claim
terms “first lens unit having a positive power,”
“between the aperture stop and the prism,” “said
second lens unit being on the image side of the
first lens unit,” and “third lens unit” are not pre-
cluded from containing non-lens elements, distor-
tion correcting prisms, holographic optical ele-
elements, or off-axis optics.
Id. at 27. The ALJ again rejected Suprema’s arguments
for disclaimer, first distinguishing case law which Su-
prema cited and then rejecting its arguments based on
the written description. Id. at 28–32. The ALJ relied on,
among other things, Suprema’s concession that the “opti-
cal system” could include the purportedly excluded items
and only the lens system could not; Suprema stands by
that concession here. Ultimately, Suprema seeks a limi-
tation excluding non-lens elements within the lens system
because its products contain mirrors (i.e., non-lens ele-
ments) along with the lenses, so such a construction
would lead to a finding of non-infringement.
Thus, Suprema concedes that non-lens elements can
be included in the “optical system,” as long as they are not
located within the lens system. Suprema also seems to
concede that the claim language does not exclude non-lens
elements from being present in the lens system, i.e.,
between the first and second “lens units.” Instead, Su-
prema relies on two passages in the written description to
argue that non-lens elements cannot be present at that
location. First, Suprema points to the patent’s statements
regarding the objects of the invention:
In view of the foregoing, it is an object of the in-
vention to provide improved lens systems for use
in fingerprint detection. In particular, it is an ob-
ject of the invention to provide lens systems which
employ only lens elements and do not employ dis-
SUPREMA v. ITC 29

tortion correcting prisms, holographic optical ele-
ments, or off-axis optics.
A further object of the invention is to provide in-
expensive lens systems for use in fingerprint de-
tection systems. In particular, it is an object of
the invention to provide lens systems for use in
fingerprint detection which comprise molded lens
elements which can be produced in large quanti-
ties at low cost.
’993 patent col. 1 ll. 46–57. The “foregoing” language
referred to is the “BACKGROUND OF THE INVENTION
SECTION,” on which Suprema also relies. That passage
states:
A description of some of the problems involved
in fingerprint detection using frustrated total in-
ternal refection can be found in Stoltzmann et al.,
“Versatile anamorphic electronic fingerprinting:
design and manufacturing considerations,” SPIE,
Vol. 2537, pages 105–116, August 1995. These
authors conclude that the optical system used to
form the image of the fingerprint ridges should in-
clude prisms for correcting optical distortion. In
practice, an optical system employing prisms is
expensive to manufacture compared to an optical
system employing only lens elements, both be-
cause prisms themselves are expensive and be-
cause collimating optics are required to avoid
introducing aberrations.
Significantly with regard to the present inven-
tion, Stoltzmann et al. specifically teach away
from the use of an optical system employing only
lens elements to produce an image of fingerprint
ridges. In particular, they state that a system
employing cylindrical lenses cannot successfully
30 SUPREMA v. ITC

correct for high levels of horizontal/vertical com-
pression.
As an alternative to distortion correcting
prisms, Bahuguna et al., “Prism fingerprint sen-
sor that uses a holographic optical element,” Ap-
plied Optics, Vol. 35, pages 5242–5245, September
1996, describes using a holographic optical ele-
ment to achieve total internal reflection without
tilting the object (fingerprint ridges), thus allow-
ing a rectilinear image of the object to be produced
using only lens elements. The use of a holograph-
ic optical element, of course, increases the cost
and complexity of the optical system.
Hebert, Robert T., “Off-axis optical elements
in integrated, injection-molded assemblies,” SPIE,
Vol. 2600, pages 129–134, December 1995, de-
scribes another approach to the fingerprint detec-
tion problem, namely, the use of off-axis optics to
avoid tilting the object. This approach requires
the use of complex optical surfaces which are diffi-
cult to manufacture economically.
Id. col. 1 ll. 10–44.
Reading both passages together, it becomes evident
that the concern which the patented invention addresses,
and which is described in the first quoted passage above,
is the use of costly means for correcting optical distortion.
The prior art, according to the patent, achieves this
correction with three alternatives, all of which are costly:
prisms, holographic optical elements, and off-axis optics.
The stated purpose of the invention, which forms the
strongest basis for Suprema’s arguments, says “it is an
object of the invention to provide lens systems which
employ only lens elements and do not employ distortion
correcting prisms, holographic optical elements, or off-axis
SUPREMA v. ITC 31

optics.” Id. col. 1 ll. 48–51. If anything is disclaimed by
this statement, it is prisms, holographic optical elements,
and off-axis optics, when either is used as the means to
correct distortion.
We need not decide if this statement amounts to a
clear disavowal of claim scope with respect to distortion
correcting optics, however, a result that would require
holding Suprema to a high burden. See Bell Atl. Network
Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258,
1268 (Fed. Cir. 2001) (“We have previously held that, in
redefining the meaning of particular claim terms away
from the ordinary meaning, the intrinsic evidence must
clearly set forth or clearly redefine a claim term so as to
put one reasonably skilled in the art on notice that the
patentee intended to so redefine the claim term. We have
also stated that the specification must exhibit an express
intent to impart a novel meaning to claim terms.”) (cita-
tions and internal quotation marks omitted). Suprema’s
only non-infringement argument based on the disputed
claim term is its assertion that mirrors between the lens
elements in its products preclude a finding of infringe-
ment. But Suprema never contends that the mirrors
correct distortion and it is unlikely that they serve this
purpose; the mirrors seem instead to fold the optical axis
to make the systems fit within their cases.
Accordingly, we conclude that the ALJ’s infringement
finding was supported by substantial evidence, as was the
Commission’s adoption thereof. Even assuming certain
costly distortion-correcting devices were disclaimed and
cannot be present in between “lens units,” mirrors that do
not correct distortion were not clearly disclaimed.
B.
Suprema also challenges the ALJ’s holding on its ob-
viousness defense to the asserted claims of the ’993 pa-
32 SUPREMA v. ITC

tent. Suprema argues that, in light of prior art U.S.
Patent No. 3,619,060 (“the ’060 patent”) combined with
prior art U.S. Patent No. 5,615,051 (“the ’051 patent”), the
asserted claims of the ’993 patent would have been obvi-
ous to a person of skill in the art. The ALJ rejected this
argument, first finding the ’061 patent failed to disclose a
three-lens unit as required by claim 10 of the ’993 patent
or a telecentric condition “in a lens located between the
prism and the aperture stop as required by element c) of
claim 10 of the ’993 patent.” Initial Determination at 116.
The ALJ also rejected Suprema’s argument that it would
have been obvious to combine the triplet lens disclosed in
the ’051 patent into the device disclosed in the ’060 pa-
tent, in order to render the asserted claims obvious,
because the ’051 patent, in the ALJ’s view, also failed to
disclose the required telecentric condition and Suprema
adduced insufficient evidence regarding motivation to
combine. Id. at 117–18. Accordingly, the ALJ found,
among other things, that Suprema “failed to prove, by
clear and convincing evidence, . . . that one of ordinary
skill in the art would have been motivated to combine the
asserted references.” Id. at 118. That finding, we hold,
was supported by substantial evidence. Accordingly, we
affirm the ALJ’s legal conclusion that Suprema “failed to
establish, by clear and convincing evidence, that claim 10
of the ’993 patent is obvious in view of the ’060 patent in
combination with the ’051 patent.” Id.
The ’060 patent, entitled “Identification Device,” is-
sued on November 9, 1971. It generally discloses “identi-
fication devices and more particularly . . . a device which
employs optical apparatus for comparing an object to be
identified with a preselected image.” ’060 patent col. 1 ll.
3–5. One disclosed embodiment of the “identification
device” is a finger print scanner comprising a light source,
a prism, two lenses, a diaphragm, and a focal plane. Id.
SUPREMA v. ITC 33

col. 2 l. 74 – col. 3 l. 31. This device is depicted in Figure
1 of the patent:

Id.
Fig.
1.

The device is described as follows:
The object to be identified, which may be a human
finger on the hand of a person to be identified is
positioned on the second face 22, as at 26. The
light beams 16 pass into the prism 18 perpendicu-
larly to the face 20, and an image is formed of the
fingerprint because the light is reflected between
points of contact between the finger and the sec-
ond face. The reflected light comes out through
face 24 of the prism and is focused with an
achromatic lens 28 through a diaphragm 30 onto
an inclined focal plane 32.
Id. col. 3 ll. 32–40.
“Acromatic lens 28” is the focus of the parties’ argu-
ment, and the above-quoted passage is the only descrip-
tion of that lens contained in the ’060 patent. That is, no
details regarding the “achromatic lens 28” are given, such
as its structure or makeup. This failure to provide “con-
structional data” for the achromatic lens, Suprema ar-
34 SUPREMA v. ITC

gues, provides motivation to combine the ’060 patent with
the lens system disclosed in the ’051 patent.
Turning to that second reference, the ’051 patent is
entitled “Bright Triplet” and was issued on July 20, 1997.
It discloses a novel “triplet,” a three-lens triplet lens unit:
“The present invention relates to a bright triplet and,
more particularly, to a behind-the-stop type triple that
has a wide field angle and is bright, so that it is well
suited for use on photographic cameras.” ’051 patent col.
1 ll. 5–8. The structure of the disclosed triplet is de-
scribed in detail. See, e.g., id. col. 1 l. 63 – col. 2 l. 7
(“According to one aspect of the invention, there is provid-
ed a bright triplet which comprises, in order from the
object side, a first lens consisting of a positive single lens
of glass in a meniscus form convex on the object side, a
second lens located with an air separation between it and
said first lens and consisting of a negative single lens of
glass, a third lens located with an air separation between
it and said second lens and consisting of a positive single
lens of glass in a double-convex form, and an aperture
stop located on the image side of said third lens, and in
which at least two of said first to third lenses are provided
with aspherical surfaces.”).
We agree with the ALJ that the absence of “construc-
tional data” regarding the achromatic lens disclosed in
the ’060 patent provides insufficient motivation for a
person of skill in the art to seek out that data from the
’051 patent, and that Suprema has shown insufficient
evidence to substitute the triplet lens disclosed in the ’051
patent for the “achromatic lens 28” of the ’060 patent. As
the ALJ noted, the only pertinent expert testimony pro-
vided by Suprema was that of its expert, Dr. Jose Manuel
Sasian Alvarado, in which he stated:
Q. Why would they be motivated to do so [com-
bine the ’060 patent with the ’051 patent]?
SUPREMA v. ITC 35

A. Because of the need to, to create a finger print
system. The ’060 patent doesn’t disclose the con-
structional data for the achromatic lens 28. So a
person of ordinary skill would have the need to
find what the achromatic lens that could be the
triple of the ’051 patent.
Q. Can you explain for me why the lens 28 would
need to be replaced in the ’060 patent?
A. Because, again, the ’060 patent does not dis-
close the construction of that, so a person needs to
put a lens and then that person could very well
use the triplet of the ’051 patent, because they are
well-known lenses.
(Tr. at 1280-81).
That a person of skill in the art “could very well” use
the triplet of the ’051 patent is insufficient reason for the
skilled artisan to specifically seek out the unique lens
disclosed in that reference. Moreover, the ALJ found that
the ’051 patent discloses a lens system that is well suited
for “photographic cameras,” not fingerprint scanners.
That finding, we hold, was supported by substantial
evidence. The ’051 patent itself indicates that the lens it
discloses “is well suited for use on photographic cameras.”
’051 patent col. 1. ll. 7–8. Thus, Suprema adduced insuffi-
cient evidence of motivation to substitute the photograph-
ic camera triplet lens of the ’051 patent for the fingerprint
scanner achromatic lens of the ’060 patent. Moreover,
since it gives no description of the achromatic lens’ struc-
ture, there is no indication that the achromatic lens of the
’060 patent is a triplet lens or that a triplet lens would be
suitable in its place.
Accordingly, we affirm the Commission’s holding that
Suprema failed to adduce clear and convincing evidence
36 SUPREMA v. ITC

that the asserted claims of the ’993 patent would have
been obvious to a person of skill in the art.
IV.
For the reasons explained, we vacate the Commis-
sion’s judgment regarding infringement of the ’344 patent
and vacate the limited exclusion order to the extent it was
predicated on that finding. We affirm the Commission’s
holding that Suprema directly infringes the ’993 patent,
however, and leave intact the exclusion order regarding
the RealScan-10 and RealScan-10F optical systems.
The scope of the exclusion order must thus be adjust-
ed accordingly—it appears that only two of the previously
identified products may be subject to the order. 7 Accord-
ingly, we vacate the limited exclusion order and remand
for proceedings in accordance with this decision.
V.
We turn now to Cross Match’s appeal regarding the
’562 patent. The Commission fully adopted the ALJ’s
initial determination regarding this patent; the ALJ
found that Cross Match failed to prove by a preponder-
ance of the evidence that any Suprema accused product
infringed the asserted claims of that patent. On appeal,
Cross Match challenges the ALJ’s interpretation of the
term “capture” as it appears in the asserted claims of this
patent and claims that the ALJ’s improper construction of
that term led to an incorrect non-infringement finding.

7 The products found to infringe the ’993 patent ap-
pear to be only RealScan-10 and RealScan-10F. Initial
Determination at 168. But the products found to infringe
the ’344 patent are RealScan-10, RealScan-10F, Re-
alScan-D, and RealScan-DF, when used with Mentalix’s
FedSubmit software.
SUPREMA v. ITC 37

Claim 1 is representative of the asserted claims and
states:
A method for reliably capturing print images,
comprising:
(a) initiating camera operation with a
scanner
(b) scanning a biometric object to obtain a
scanned image;
(c) processing the scanned image;
(d) determining print quality of individual
print images in the scanned image;
(e) detecting prints in the scanned image;
and
(f) determining whether the scanned im-
age is ready for capture based on an ex-
pected number of print images detected in
step (e) and the quality of the print images
determined in step (d).
’562 patent col. 10 l. 59 – col. 11 l. 4.
Cross Match proposed to the ALJ that “capture” as
used in the preamble to and step (f) of claim 1 means
“acquiring, by the scanner, for processing or storage.”
Initial Determination at 59. The ALJ adopted this con-
struction. Id. at 60. And, based on this construction, the
ALJ concluded that Suprema’s products do not infringe
the asserted claims because they do not perform steps (d)
and (e) before the image is “acquired . . . for processing or
storage”—i.e., before it is deemed “ready for capture” and,
ultimately, “captured.”
Cross Match now suggests that the ALJ’s construction
of capture was wrong; it claims that “acquiring, by the
38 SUPREMA v. ITC

scanner, for processing or storage” does not require that
the scanner perform all steps of the claimed “capturing”
process. Instead, Cross Match argues that the scanner
only need be involved in that process. Cross Match also
contends that the scanner need only “keep” or “save” the
image and that any “processing” thereof can be done by a
computer. Based on these interpretations of what it
means to “capture” an image, Cross Match contends the
ALJ and Commission were wrong to conclude that all
steps of claim 1 must be performed by a scanner for
infringement to occur, and were wrong to conclude that
step (f) of claim 1—the “determining whether the scanned
image is ready for capture”—must occur after steps (e)
and (d) have been performed.
In making these arguments, Cross Match puts itself
in the difficult position of challenging a claim construction
it proposed. See Tessera Inc. v. Int’l Trade Comm’n, 646
F.3d 1357, 1364 (Fed. Cir. 2011); Key Pharma. v. Hercon
Labs. Corp., 161 F.3d 709, 714–15 (Fed. Cir. 1998) (“We
find highly questionable Hercon’s assertion on appeal that
the trial court erred when it adopted the very construction
Hercon urged upon the court through the testimony of Dr.
Guy. In essence, Hercon asserts that the trial court erred
by adopting the position it advocated at trial. Although
the function of an appellate court is to correct errors
committed at trial, we look with extreme disfavor on
Hercon’s assertion that the trial court committed error in
its claim construction. Ordinarily, doctrines of estoppel,
waiver, invited error, or the like would prohibit a party
from asserting as ‘error’ a position that it had advocated
at the trial.”). And, Cross Match is in the peculiar situa-
tion of asking for a construction of “capture” in the ’562
patent which differs from that which it advocates for the
same term in the ’344 patent, even though the ’562 patent
incorporates by reference the ’344 patent. Indeed, Su-
prema and the Commission ask that we resolve Cross
SUPREMA v. ITC 39

Match’s appeal on these grounds, finding that it either
waived any right to seek a different construction of the
term “capture” before this court, or at least is estopped
from doing so.
Cross Match contends it did not waive its right to
make the arguments it develops here because it is not
really asking for a new construction; it is simply debating
how that construction should itself be construed. While
Cross Match’s position is a stretch—it really seems to be
unhappy with the construction it proposed and to be
asking for something directly at odds with that original
construction—we need not rely on waiver to affirm the
Commission’s non-infringement finding on the ’562 patent
because we conclude that the Commission’s finding on the
merits was correct.
Specifically, we conclude that the ALJ’s construction
of the term “capture” is correct and that the ALJ was
correct to conclude that the “capture” itself, and the
preceding determination of whether the image is “ready
for capture,” in the claims of the ’562 patent must occur
before the scanned image is transferred to a computer.
We also hold that the ALJ’s infringement finding is
supported by substantial evidence. The computer of the
accused products performs the checks, i.e., steps (e) and
(d), with software at some point after the computer re-
ceives the image from the scanner. So, in the accused
products, those checks necessarily occur sometime after
the scanner determines whether the image is “ready for
capture.”
There is no real dispute regarding the construction of
“capture” since the ALJ adopted Cross Match’s proposed
construction. We adopt that construction as well: “cap-
ture” means “acquiring, by the scanner, for processing or
storage.” We also conclude that the ALJ was correct to
conclude that, under this construction, step (f) necessarily
40 SUPREMA v. ITC

requires a determination of whether the “scanned image”
is ready for “acquiring, by the scanner,” based on the
number and quality checks of steps (e) and (d). Given
that claim language, as a matter of logic, those quality
checks must precede the determination made under step
(f), since that step is based on the results from the checks,
and, since the scanner ultimately performs the capture,
the preceding checks must be performed by the scanner or
one of its components. See Altiris, Inc. v. Symantec Corp.,
318 F.3d 1363, 1369 (Fed. Cir. 2003) (“We look to the
claim language to determine if, as a matter of logic or
grammar, [the steps of a method claim] must be per-
formed in the order written.”).
The claim language here plainly requires this con-
struction. See, e.g., ’562 patent col. 11 ll. 1–4 (“determin-
ing whether the scanned image is ready for capture based
on the number of prints detected in step (e) and the
quality of the print image determined in step (d).” (em-
phasis added)); id. col. 11 ll. 24–36 (claim 4 adding to
claim 1 steps of “(g) capturing the scanned image to
obtain a captured image” and “(i) forwarding the captured
image to a computer.”). The written description of the
patent also supports the view that “capture” is performed
by the scanner and not by a separate computer. Id. col. 2
ll. 18–20 (“The method includes capturing the scanned
image, processing the captured image, and forwarding the
captured image to a computer.”). A component of the
scanner, such as software residing on a computer coupled
to the scanner—which computer is part of the scanner—
can perform the scanner’s functionality, including the step
(f) determination step. See id. col. 6 ll. 37–57 (“In an
embodiment of the present invention, scanner 104 in-
cludes . . . a controller 116 [which] includes print capture
manager 117. . . . Control functionality . . . of print cap-
SUPREMA v. ITC 41

ture manager 117 [] can be carried out by . . . a computer
coupled to the scanner.”). 8
Because it is undisputed that, in the accused prod-
ucts, the scanner has already transmitted the image to a
computer when the purported number and quality checks
are performed, the accused products cannot perform the
method as claimed. Accordingly, we hold that the ALJ’s
non-infringement finding as to the ’562 patent was prem-
ised on its correct construction of the term capture and
understanding of the scope of claim 1. We affirm the
Commission’s ruling finding no violation of § 337 on
grounds that no imported articles infringe the asserted
claims of the ’562 patent.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED IN PART

8 Cross Match makes a number of other arguments
in support of its infringement claim. While we do not
address each, we have considered them all and find them
unpersuasive.
 United States Court of Appeals
for the Federal Circuit
______________________

SUPREMA, INC. AND MENTALIX, INC.,
Appellants,

v.

INTERNATIONAL TRADE COMMISSION,
Appellee,

AND

CROSS MATCH TECHNOLOGIES, INC.,
Intervenor.
______________________

2012-1170
______________________

On appeal from the United States International Trade
Commission in Investigation No. 337-TA-720.
-----------------------

CROSS MATCH TECHNOLOGIES, INC.,
Appellant,

v.

INTERNATIONAL TRADE COMMISSION,
Appellee,

AND
2 SUPREMA v. ITC

SUPREMA, INC. AND MENTALIX, INC.,
Intervenors.
_____________________

2012-1026, -1124
______________________

On appeal from the United States International Trade
Commission in Investigation No. 337-TA-720.
______________________
REYNA, Circuit Judge, concurring-in-part, dissenting-in-
part.
The majority concludes that the International Trade
Commission lacks authority to find a violation of 19
U.S.C. § 1337 (“Section 337”) that is premised on induced
infringement where “the acts of underlying direct in-
fringement occur post-importation.” Maj. Op. at 20.
While I agree with the majority’s disposition of this case
in all other respects, I cannot join my colleagues’ decision
to negate the Commission’s statutory authority to stop
induced infringement at the border. Accordingly, I re-
spectfully concur-in-part and dissent-in-part.
I
This appeal arises out of an investigation into alleged
violations of Section 337 by Suprema (a Korean company)
and Mentalix (located in Plano, Texas). Suprema manu-
factures fingerprint scanners that it imports and sells for
importation 1 into the United States. To function, Su-

1 The parties stipulated that Suprema imported
and sold for importation at least one unit of each accused
scanner, and that Mentalix imported and sold after im-
portation at least one unit of each accused scanner. See
Certain Biometric Scanning Devices, Components Thereof,
SUPREMA v. ITC 3

prema’s scanners must be connected to a separate com-
puter running special software. Suprema does not make
or sell this software, but provides Software Development
Kits (SDKs) that allow its customers to create their own
software to operate the scanners. The SDKs include
utilities that operate various functionalities of the scan-
ners, and also include manuals instructing customers on
how to use the SDKs. Mentalix, one of Suprema’s cus-
tomers in the United States, imports Suprema’s finger-
print scanners and sells the scanners after importation,
along with software to operate the scanners. Mentalix’s
software uses some of the functions included in Suprema’s
SDKs.
As relevant here, the Commission found that Su-
prema’s scanners, when used with Mentalix’s software,
practice a patented method for capturing and processing
fingerprints. The Commission found Mentalix liable for
direct infringement for integrating its software with
Suprema’s scanners and using the integrated scanners in
the United States. The Commission also found that
Suprema actively aided and abetted Mentalix’s infringe-
ment by collaborating with Mentalix to import the scan-
ners and helping Mentalix adapt its software to work with
the imported scanners to practice the patented method.
Finding that Suprema willfully blinded itself to the exist-
ence of the patent and the infringing nature of the activi-
ties it encouraged, the Commission held Suprema liable
for induced infringement under 35 U.S.C. § 271(b). Ac-
cordingly, the Commission issued a limited exclusion
order banning from entry into the United States articles
imported by Suprema or Mentalix that infringe the pa-
tented method. See Certain Biometric Scanning Devices,

Associated Software, and Products Containing Same,
USITC Inv. No. 337-TA-720, Order No. 11 (Sep. 16, 2010).
4 SUPREMA v. ITC

Components Thereof, Associated Software, and Products
Containing Same, USITC Inv. No. 337-TA-720, Pub. No.
4366, Limited Exclusion Order ¶ 1 (Feb. 2013).
II
Instead of addressing the merits of the Commission’s
determination of induced infringement, the majority takes
the unnecessary step of addressing the legality of the
Commission’s authority to conduct a Section 337 investi-
gation that is based on allegations of induced infringe-
ment. The majority concludes that the Commission did
not have authority to issue an exclusion order in this case
because “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.” Maj. Op. at 20. According to the majority,
the phrase “articles that – infringe” in Section 337 re-
quires infringement at the time of importation, and
because inducement is not “completed” until there has
been direct infringement, the Commission may not invoke
inducement to ban the importation of articles that are not
already in an infringing state at the time of importation.
See id. at 20, 25.
My problem with the majority’s opinion is that it ig-
nores that Section 337 is a trade statute designed to
provide relief from specific acts of unfair trade, including
acts that lead to the importation of articles that will
result in harm to a domestic industry by virtue of in-
fringement of a valid and enforceable patent. To negate
both a statutory trade remedy and its intended relief, the
majority overlooks the Congressional purpose of Section
337, the long established agency practice by the Commis-
sion of conducting unfair trade investigations based on
induced patent infringement, and related precedent by
this Court confirming this practice. In the end, the major-
ity has created a fissure in the dam of the U.S. border
SUPREMA v. ITC 5

through which circumvention of Section 337 will ensue,
thereby harming holders of U.S. patents.
A
For decades, the Commission has entertained com-
plaints and found Section 337 violations where respond-
ents actively induced direct infringement in the United
States, infringement that did not occur until after impor-
tation of the articles involved. 2 This Court has affirmed

2 See, e.g., Certain Inkjet Ink Cartridges with Print-
heads and Components Thereof, USITC Inv. No. 337-TA-
723, Pub. No. 4373 (Feb. 2013), Comm’n Notice at 3 (Oct.
24, 2011), Initial Determination at 79, 2011 WL 3489151,
at *49 (Jun. 10, 2011); Certain Digital Set-Top Boxes and
Components Thereof, USITC Inv. No. 337-TA-712, Pub.
No. 4332 (Jun. 2012), Initial Determination at 132, 146,
2011 WL 2567284, at *76, *82 (May 20, 2011) (reconsider-
ation granted on other grounds); Certain Optoelectronic
Devices, Components Thereof, and Prods. Containing
Same, USITC Inv. No. 337-TA-669, Pub. No. 4284 (Nov.
2011), Initial Determination at 51, 2011 WL 7628061, at
*45 (March 12, 2010), aff’d sub nom. Emcore Corp. v. Int’l
Trade Comm’n, 449 F. App’x 918 (Fed. Cir. 2011) (non-
precedential); Certain Voltage Regulators, Components
Thereof and Prods. Containing Same, USITC Inv. No.
337-TA-564, Pub. No. 4261 (Oct. 2011), Enforcement
Initial Determination at 38, 2011 WL 6980817, at *31
(Mar. 18, 2010) (violation of limited exclusion order based
on inducement); Certain Semiconductor Chips Having
Synchronous Dynamic Random Access Memory Control-
lers and Prods. Containing Same, USITC Inv. No. 337-
TA-661, Pub. No. 4266 (Oct. 2011), Initial Determination
at 42, 2011 WL 6017982, at *85 (Jan. 22, 2010); Certain
Digital Television Prods. and Certain Prods. Containing
Same, USITC Inv. No. 337-TA-617, Comm’n Op. at 10,
6 SUPREMA v. ITC

2009 WL 1124461, at *5 (Apr. 23, 2009), aff’d in relevant
part sub nom. Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d
1330 (Fed. Cir. 2010); Certain Baseband Processor Chips
and Chipsets, Transmitter and Receiver (Radio) Chips,
Power Control Chips, and Prods. Containing Same,
USITC Inv. No. 337-TA-543, Pub. No. 4258 (Oct. 2011),
Initial Determination at 151, 2011 WL 6175074, at *83
(Oct. 10, 2006); Certain Foam Masking Tape, USITC Inv.
No. 337-TA-528, Pub. No. 3968 (Aug. 2007), Initial De-
termination at 14-15, 2007 WL 4824257, at *20 (Jun. 21,
2005); Certain Automated Mechanical Transmission Sys.
for Medium-Duty and Heavy-Duty Trucks and Compo-
nents Thereof, USITC Inv. No. 337-TA-503, Pub. No. 3934
(Jul. 2007), Initial Determination at 154, 2007 WL
4473082, at *101 (Jan. 7, 2005); Certain Display Control-
lers and Prods. Containing Same, USITC Inv. No. 337-
TA-491, Initial Determination, 2004 WL 1184745, at *116
(Apr. 14, 2004); Certain Hardware Logic Emulation
Systems and Components Thereof, USITC Inv. No. 337-
TA-383, Pub. No. 3154 (Jan. 1999), Comm’n Notice at 2
(Mar. 6, 1998), Initial Determination at 179, 1997 WL
665006, at *101 (Jul. 31, 1997); Certain Concealed Cabi-
net Hinges and Mounting Plates, USITC Inv. No. 337-TA-
289, Initial Determination, 1989 WL 608804, at *48, *52
(Sep. 28, 1989); Certain Minoxidil Powder, Salts and
Compositions for Use in Hair Treatment, USITC Inv. No.
337-TA-267, 1988 WL 582867, at *6-7 (Feb. 16, 1988);
Certain Molded-In Sandwich Panel Inserts and Methods
for Their Installation, USITC Inv. No. 337-TA-99, Pub.
No. 1246 (May 1982), Comm’n Op. at 8 (Apr. 9, 1982),
aff’d sub nom. Young Eng’rs, Inc. v. Int’l Trade Comm’n,
721 F.2d 1305 (Fed. Cir. 1983); Certain Surveying Devices,
USITC Inv. No. 337-TA-68, Pub. No. 1085 (Jul. 1980),
Comm’n Determination at 19, 0080 WL 594364, at *10
(Jul. 7, 1980).
SUPREMA v. ITC 7

Commission determinations of Section 337 violations that
are premised on induced infringement. 3 Other decisions
of this Court, while not affirming an exclusion order,
recognized the Commission’s authority to premise a
Section 337 violation on a finding of induced infringe-
ment. 4 This rich history of longstanding agency practice
and legal precedent is fruit borne of law enacted by Con-
gress precisely to address importation of infringing arti-
cles by establishing relief at the point of importation, the
border.
This Court has long recognized the Congressional
purpose of Section 337 is to provide “meaningful relief
available to patentees by enabling the ITC to issue exclu-
sion orders to stop infringement at the border.” John
Mezzalingua Assoc., Inc. v. Int’l Trade Comm’n, 660 F.3d
1322, 1340 (Fed. Cir. 2011) (emphasis added). As origi-
nally enacted, Section 337 authorized the Commission to
investigate unfair acts or practices in the importation of
articles, including those related to infringement of U.S.

3 See Vizio, 605 F.3d 1330 (affirming violation in
Inv. No. 337-TA-617 based on induced infringement of
method claim); Emcore, 449 F. App’x 918 (affirming
without opinion violation in Inv. No. 337-TA-669 based on
induced infringement of apparatus claim); Young Eng’rs,
721 F.2d 1305 (affirming violation in Inv. No. 337-TA-99
based on contributory and induced infringement of pro-
cess patents).
4 See ERBE Elektromedizin GmbH v. Int’l Trade
Comm’n, 566 F.3d 1028 (Fed. Cir. 2009) (affirming finding
of no direct infringement underlying inducement claims);
Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d
1340 (Fed. Cir. 2008) (reversing violation ruling after
finding no intent to induce); Alloc, Inc. v. Int’l Trade
Comm’n, 342 F.3d 1361 (Fed. Cir. 2003) (affirming finding
of no intent to induce).
8 SUPREMA v. ITC

patents, and placed on the President the authority to
exclude such articles at the border. See Tariff Act of 1930,
ch. 497, Title III, § 337, 46 Stat. 703 (1930). 5 In 1974,
Congress expanded the Commission’s authority by
amending Section 337 to allow the Commission, itself, to
order the exclusion of articles involved in unfair acts and
practices. See Trade Act of 1974, ch. 4, Title III, § 341, 88
Stat. 1978 (1975). In 1988, with the intention to provide a
“more effective remedy for the protection of U.S. intellec-
tual property rights,” Congress eliminated, with respect to
investigations involving certain intellectual property
rights, the domestic injury requirement contained in the
prior version of Section 337. See S. Rep. No. 100-71, at
127-29 (1987); H.R. Rep. No. 100-40, pt. 1, at 154-56
(1987). Congress thus strengthened the role of the Com-
mission in preventing unfair foreign competition by
providing a more effective enforcement mechanism at the
border. At no point in the Congressional development of
Section 337 was the Commission’s authority limited to
only certain acts or practices that constitute infringement.
Stated differently, the statute on its face authorizes the
Commission to investigate all unfair acts or practices
related to importation that are harmful to U.S. trade via
infringement of a U.S. patent. There is no indication that
Congress intended to prohibit the Commission from
investigating acts of inducement leading to infringement.
Had Congress intended such limitation, it would have
amended Section 337 to so require. See generally Whit-
field v. United States, 534 U.S. 209, 214 (2005) (“[I]f
Congress had intended to create the scheme petitioners
envision, it would have done so in clearer terms.”).

5 The provenance of Section 337 dates back as early
as 1922. See Tariff Act of 1922, ch. 356, Title II, § 316, 42
Stat. 943 (1922).
SUPREMA v. ITC 9

The Commission’s broad authority derives from the
nature of the relief it is intended to provide. Exclusion at
the border (and, in some cases, a cease and desist order
directed at infringing articles already imported) is the
only form of relief available in a Section 337 investigation.
In this manner, Section 337 not only supplements the
patent infringement remedies available in federal courts,
it also provides a unique form of relief in patent law:
preventing unfairly traded articles from entering the U.S.
customs territory. Congress provided this broad remedy
because it recognized that “[t]he importation of any in-
fringing merchandise derogates from the statutory right,
diminishes the value of the intellectual property, and thus
indirectly harms the public interest.” H.R. Rep. No. 100-
40, at 154, 156. In other words, imported articles in-
volved in unfair acts of infringement inflict injury on the
U.S. industry and patent holders simply by virtue of
importation, apart from any acts occurring after importa-
tion. Under Section 337, once the unfairly traded article
is imported, the harm is done.
B
The majority justifies a narrow reading of Section 337
by finding that proceedings at the Commission are fo-
cused “on the infringing nature of the articles at the time
of importation, not on the intent of the parties with re-
spect to the imported goods.” Maj. Op. at 16. The majori-
ty misunderstands the in rem nature of proceedings at the
Commission. Because the Commission has in rem juris-
diction over articles sold for importation, imported or sold
after importation into the United States, it has the au-
thority to exclude products intended to be sold or imported
in the future by virtue of Congress’s delegation of its
power to regulate commerce with foreign nations and
exclude unfairly traded merchandise from entry into the
United States. See Buttfield v. Stranahan, 192 U.S. 470,
10 SUPREMA v. ITC

492 (1903). Thus, at least one instance of sale for impor-
tation, importation or sale after importation is required,
and sufficient, to trigger the Commission’s jurisdiction to
investigate an alleged violation of Section 337. See, e.g.,
Certain Trolley Wheel Assemblies, USITC Inv. No. 337-
TA-161, Pub. No. 1605 (Nov. 1984), Comm’n Op. at 8,
0084 WL 951859, at *4 (Aug. 29, 1984). But the Commis-
sion’s authority to issue an exclusion order is more than
in rem in nature because it incorporates an “in personam
element,” see Kyocera Wireless Corp. v. Int’l Trade
Comm’n, 545 F.3d 1340, 1357 (Fed. Cir. 2008), and is
directed at future imported articles. Hence, the Commis-
sion’s “focus” on articles is perfectly consistent with
exclusion orders preventing future importation (and, in
the case of inducement, future direct infringement) based
on demonstrated instances of inducement and direct
infringement in the United States.
Thus, while the Commission examines articles as they
are imported to determine which infringement theory
applies, it is not constrained by a requirement that the
articles be in an infringing state when imported. Section
337 expressly applies not only to the moment of importa-
tion, but also, in the alternative, to sales occurring before
and after importation that can give rise to infringement
liability. An 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.
The majority engages in protracted analysis to arrive
at the view that 35 U.S.C. §§ 271(a) and (c) essentially
define “articles that infringe” for purposes of Section 337
liability. See Maj. Op. at 20. According to the majority,
inducing conduct does not “become tied” to an article until
the underlying direct infringement happens. See id. I
disagree. To the extent that the induced direct infringe-
SUPREMA v. ITC 11

ment involves an article, the inducing acts are tied to
such an article at the time each act of inducement occurs.
For purposes of Section 337, 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” and the Commission has authority to
investigate such conduct.
Contrary to the majority’s holding, the reference in
Section 337 to “articles – that infringe” does nothing to
exclude induced infringement from the type of unfair acts
Section 337 was designed to remedy. Section 337 is
defined, much like § 271, in terms of conduct that may
occur before and after the precise moment of importation.
Because Section 337 is not by its terms confined to a
specific time when the imported articles must “infringe,”
the majority errs in using § 271(a) and (c) to introduce a
strict temporal limitation on the moment on which in-
fringement liability must be “complete” for purposes of
the Commission’s authority to remedy violations of Sec-
tion 337.
III
I perceive the majority’s holding in this case as ena-
bling circumvention of the legitimate legislative objective
of Section 337 to stop, at the border, articles involved in
unfair trade. First, the majority’s holding allows import-
ers to circumvent Section 337 liability for indirect in-
fringement. For example, an importer could import
disassembled components of a patented machine, or
import an article capable of performing almost all of the
steps of a patented method, but reserve final assembly of
the last part or performance of the last step for the end-
user in the United States and, under the majority’s hold-
ing, fall outside the Commission’s statutory reach because
direct infringement would not have occurred until after
12 SUPREMA v. ITC

importation. Yet, this Court has recently recognized that
“there is no reason to immunize the inducer from liability
for indirect infringement simply because the parties have
structured their conduct so that no single defendant has
committed all the acts necessary to give rise to liability.”
Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d
1301, 1309 (Fed. Cir. 2012) (en banc). Likewise, an im-
porter inducing infringement should not be able to escape
liability by delaying direct infringement until after impor-
tation. The fact remains that “one who aids and abets an
infringement is likewise an infringer.” H.R. Rep. No. 82-
1923, at 9 (1952). Section 337 should not be interpreted
in a manner that enables this form of circumvention.
Second, the majority’s holding allows importers to cir-
cumvent Section 337 liability for almost all forms of
method patent infringement not involving product-by-
process claims. 6 The Commission already declines to
entertain complaints based on allegations of direct in-
fringement of method claims under § 271(a), recognizing
that a patented method is only infringed by “use” in the
United States, which is not one of the types of conduct
proscribed in Section 337. See Certain Electronic Devices,
Inv. No. 337-TA-724, Comm’n Op. at 18-19, 2012 WL
3246515, at *12-13 (Dec. 21, 2011); 19 U.S.C.
§ 1337(a)(1)(B)(i) (making unlawful only the “importa-
tion,” “sale for importation,” and “sale within the United
States after importation” of infringing articles). Given
this existing limitation, the ability to file a Section 337
complaint based on theories of indirect infringement
becomes even more important for owners of patented
processes. But the majority now eliminates § 271(b) as a
basis for finding a Section 337 violation, leaving only the

6 Violations based on importation of articles manu-
factured abroad according to a patented process are
separately codified in § 337(a)(1)(B)(ii), not at issue here.
SUPREMA v. ITC 13

possibility of enforcing method patents at the Commission
under § 271(c) to the extent that the imported articles are
especially made or adapted for use in practicing a patent-
ed method and are not capable of substantial noninfring-
ing uses. Whether obtaining a remedy for this form of
method patent infringement continues to be viable at the
Commission remains to be seen, in light of the majority’s
broad holding that “there are no ‘articles . . . that infringe’
at the time of importation when direct infringement has
yet to occur.” Maj. Op. at 4. 7
The majority’s view also overlooks the practical reali-
ties of international trade. A common threat to trade
relief in general is the modification of articles to place
them outside the scope of relief orders, e.g., exclusion or
antidumping orders. These circumvention practices can
be sophisticated and elaborate. Here, the majority legal-
izes the most common and least sophisticated form of
circumvention, importation of the article in a disassem-
bled state. The idea is that assembly within the United
States removes the article from scrutiny and enforcement
at the border. With regard to importation of articles
whose assembly in the United States creates “articles –
that infringe,” while it is true that the patent holder may
be able to sue in district court, it would likely face person-

7 Although the majority indicates that the § 271(c)
“standards for infringement” can be met at the time of
importation, it also holds that inducement is not “com-
pleted” until there has been direct infringement. See Maj.
Op. at 20. Like inducement, liability for contributory
infringement under § 271(c) requires a showing of direct
infringement, which in the case of method claims will not
occur until after importation. See, e.g., ERBE, 566 F.3d at
1037 (affirming Commission’s finding of no contributory
or induced infringement where there was no evidence of
direct infringement of method claim in the United States).
14 SUPREMA v. ITC

al jurisdiction and enforcement of judgment hurdles, and
would certainly not be able to stop importation of the
disassembled articles at the border. If anything, the
majority’s holding creates a new threat for U.S. patent
holders. 8
In my view, Section 337 was intended to provide dis-
tinct relief at the border to stop imports of articles that
are used in unfair trade. I see no rational reason why this
form of relief to U.S. patent holders should be eliminated
when acts of inducement are involved. For purposes of
Section 337 liability, I see no distinction between import-
ing an article that meets all limitations of an apparatus
claim as it crosses the border, and actively inducing
infringement by importing an article and encouraging
another to use that article to practice a patented method.
In both cases, a patented invention is practiced within the
country without authority as a result of importation. The
majority is apparently concerned with the possibility that
this interpretation could result in overbroad remedial
orders that exclude articles that may or may not later
give rise to direct infringement depending on the intent of
the importer. See Maj. Op. at 25. But the Commission
regularly includes a “certification provision” in its exclu-
sion orders by which importers may certify that the
articles they seek to import do not infringe and are there-

8 The majority believes that its holding will not
have adverse effects on the Commission’s statutory man-
date to provide specific relief from unfair trade practices,
and points to § 271(a) and § 271(c) as obviating any need
for relief, at the border, from induced infringement. See
Maj. Op. at 21, n.4. As this dissent demonstrates, that is
not the case. But even if it were so, it is up to Congress,
not this Court, to repeal the Commission’s mandate on
grounds that sufficient relief is afforded elsewhere in the
law.
SUPREMA v. ITC 15

fore not covered by the order. For example, the limited
exclusion order issued against Suprema and Mentalix
provides that “persons seeking to import biometric scan-
ning devices . . . potentially subject to this Order may be
required to certify that . . . to the best of their knowledge
and belief, the products being imported are not excluded
from entry under paragraph 1 of this Order.” Certain
Biometric Scanning Devices, Limited Exclusion Order ¶ 3.
I view the Commission as an international trade agency
with the expertise and experience to fashion exclusion
orders of appropriate scope.
In an appeal involving trade secret misappropriation,
we recently held that the Commission may consider
conduct abroad in determining whether imports related to
that conduct violate Section 337. See TianRui Grp. Co. v.
Int’l Trade Comm’n, 661 F.3d 1322, 1331-32 (Fed. Cir.
2011). Just as the panel in TianRui deemed it highly
unlikely that Congress intended Section 337 not to reach
instances in which the accused party was careful to
ensure that the actual act of conveying the trade secret
occurred outside the United States, I believe it is equally
unlikely that Congress intended that Section 337 would
not reach instances in which a respondent is careful to
ensure that the actual act of direct infringement does not
occur until the imports have entered the customs territory
of the United States. The majority errs in concluding
otherwise. Therefore, I must dissent-in-part.