En Banc Federal Circuit to Review ITC’s Power over Induced Infringement

By Dennis Crouch

Suprema, Inc. and Mentalix v. US International Trade Commission and Cross Match Tech (Fed. Cir. 2013/2014)

Although the USITC handles plenty of patent cases, it actually derives its power from the Tariff Act, 19 U.S.C. § 1337(a)(1)(B). That provision indicates that the government agency can prohibit the import or sale-after-import of “articles . . . that (i) infringe a valid and enforceable United States patent” The Tariff Act does not further define patent infringement and so the ITC has generally referred to Section 271 of the Patent Act for guidance.  As with district court patent litigation, ITC merits decisions are also appealed to the Court of Appeals for the Federal Circuit.

Here, Cross Match’s asserted patent covers a fingerprint-scan methodology that includes both hardware and software components. The hardware is manufactured abroad and imported by Suprema and then, once in the US, combined by Mentalix with the software to make a product used to infringe. Of importance, the imported hardware does not – by itself – directly infringe the patent. However, the USITC found that Suprema was liable for inducing infringement under 35 U.S.C. 271(b).

On appeal, the Federal Circuit reversed that judgment — holding instead that the USITC’s power only extends to block articles that are themselves infringing at the point of importation. The result for this case is that the inducement theory of infringement could not stand because it requires both additional steps to complete the infringement as well as a particular mens rea. Oddly, however, the majority did find that the USITC may still have power when the cause of action is contributory infringement rather than inducement. This distinction was based upon the notion that inducement is focused on the “conduct of the inducer” and “is untied to an article.” Judge O’Malley penned the Federal Circuit opinion and was joined by Judge Prost. Judge Reyna wrote in dissent.

The ITC and Patentee both filed petitions for re hearing en banc and the Federal Circuit has now granted those petitions. The questions presented are as follows

Cross Match asks:

Whether the United States International Trade Commission (“ITC”) has authority to find a Section 337 violation—and issue an exclusion or cease and desist order—where it finds that an importer actively induced infringement of a patented invention using its imported articles but the direct infringement occurred post-importation.

Cross Match argues that the question is largely answered by Young Eng’rs, Inc. v. ITC, 721 F.2d 1305 (Fed. Cir. 1983); Vizio, Inc. v. ITC, 605 F.3d 1330 (Fed. Cir. 2010); and Disabled Am. Veterans v. Sec’y of Veterans Affairs, 419 F.3d 1317 (Fed. Cir. 2005).

The USITC asks:

(1) Did the panel contradict Supreme Court precedent in Grokster and precedents of this Court when it held that infringement under 35 U.S.C. § 271(b) “is untied to an article”?

(2) Did the panel contradict Supreme Court precedent in Grokster and this Court’s precedent in Standard Oil when it held that there can be no liability for induced infringement under 35 U.S.C. § 271(b) at the time a product is imported because direct infringement does not occur until a later time?

(3) When the panel determined the phrase “articles that . . . infringe” in 19 U.S.C. § 1337(a)(1)(B)(i) does not extend to articles that infringe under 35 U.S.C. § 271(b), did the panel err by contradicting decades of precedent and by failing to give required deference to the U.S. International Trade Commission (“the Commission”) in its interpretation of its own statute?

(4) Did the panel misinterpret the Commission’s order as a “ban [on the] importation of articles which may or may not later give rise to direct infringement” when the order was issued to remedy inducement of infringement and when the order permits U.S. Customs and Border Protection to allow importation upon certification that the articles are not covered by the order?

The USITC argues that these questions are fully answered (in its favor) by Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 940 n.13 (2005); Standard Oil Co. v. Nippon Shokubai Kagaku Kogyo Co., 754 F.2d 345, 348 (Fed. Cir. 1985) (Rich, J.); Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1351 (Fed. Cir. 2001); Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330, 1343-44 (Fed. Cir. 2010); The Young Engineers, Inc. v. U.S. Int’l Trade Comm’n, 721 F.2d 1305, 1310, 1317 (Fed. Cir. 1983); Chevron U.S.A., Inc. v. Natural Resources Defense Council, 467 U.S. 837, 843 (1984); and Enercon GmbH v. Int’l Trade Comm’n, 151 F.3d 1376, 1381 (Fed. Cir. 1998).

The accused infringers here argued that the fingerprint scanning hardware they are importing are simple staple goods that cannot themselves infringe even if their intended use is infringing.

Documents:

In many ways, this is another divided infringement inducement case. The Supreme Court is currently deciding that issue in Akamai and a decision is expected within the next four weeks.  The Federal Circuit may do well to delay its briefing in this case until Akamai is decided.

= = = = =

Parallel Process: Despite its “international” name, the USITC is actually a branch of the U.S. government charged with protecting U.S. industry and U.S. goals in international trade.  The USITC’s jurisdiction focuses solely on border-crossing issues and, in the patent context, investigates infringing imports.  It turns out that district courts can also block the importation of infringing goods.  There are some differences in remedy and process, but the basic patent policy question is whether the additional parallel procedure offered by the USITC fills an important gap in district court adjudication. And, if so, why does that gap exist?

Administrative Law: Moving from patent policy, the issues here also focus on a continued power struggle between the various branches of government. One question here is the level of deference that should be given to the USITC in carrying out its mandate.

– Dennis

58 thoughts on “En Banc Federal Circuit to Review ITC’s Power over Induced Infringement

  1. Hmmm. Not sure if this is covered in any of the arguments, but the ITC mandate includes more than just coverage of articles being imported. The focus on section (B) perhaps prematurely jumps past (A)…

    To wit, see link to law.cornell.edu

    19 U.S.C. § 1337 (a)(1)(A): Unfair methods of competition and unfair acts in the importation of articles

    Can an argument be made that trying to step around the importation ban by knowingly adding the software component after importation is an unfair method of competition? Would not inducement then be reached (assuming for the moment that Akamai and Alice do not make this case moot)?

    Further, sections (B) through (E) appear to include after-importation activities: “or the sale within the United States after importation ,” so is it really a stretch to include inducement as part of patent infringement?

    .

    6,

    As to “why” you might want to check out the notes tab of the link I provided – particularly the section titled “Congressional Findings and Purposes Respecting Part 3 of Pub. L. 100–418″ which is about 4/5’s of the way down the page.

      1. Ned,

        I fully agree that generally speaking and without more, a staple product should not be blocked.

        However, the combined petition for panel rehearing and rehearing en banc of appellee International Trade Commission in this case seems to make a very strong legal point that this case is not about blocking staples – per se.

        In other words, the problem you want to focus on is not the problem that is the focal point of the case.

        But make no, um, bones about it, the CAFC has plenty of good reasons to wait for clarity (if such shall emerge) from the Supreme Court.

      2. Ned,

        For argument’s sake, let’s focus for a moment on pure import of staples.

        Are you saying that somehow Congress cannot make laws affecting even the import of staples?

        I do not think that would be correct. Importation of anything into this country is clearly within the police power of the state.

        .

        So if we are to proceed – again, just for argument’s sake that Congress can legislate in this area – and then recognize that Congress has legislated in this area, what then, are we to make of the stated intent of Congress, specifically as captured in the record, of:

        the existing protection under section 337 of the Tariff Act of 1930 [this section] against unfair trade practices is cumbersome and costly and has not provided United States owners of intellectual property rights with adequate protection against foreign companies violating such rights

        Even if the en banc court finds that the ITC has gone beyond a strict “article” only view, does not the intent of Congress indicate a grant of broader power to the ITC; and combined with the section (A) view that there is a power beyond merely looking at an imported article on its own? How can inducement not fall within the (existing) statutory power of the ITC?

        The law in question here seems more nuanced than a first glance reveals.

        1. anon, I agree that congress can ban the import of anything for the purpose of supporting American industry.

          But the testimony in this case is that the direct infringer’s software works with any fingerprint scanner. The problem I see is that the direct infringer’s software, not the fingerprint scanner, is the proximate cause of the infringement. That software was not imported, but made by the direct infringer.

          Why should the American people be made to suffer by banning the importation of fingerprint scanners that are not otherwise infringing in order to protect a patent that essentially covers software?

          1. anon, if the ITC has the jurisdiction you say it does, then it could ban the importation of all computers because they might be used with patented software/methods to infringe software are method patents, or programmed computer patents.

            Now the ITC were to issue session exclusion order, I have no doubt that the president would veto that exclusion order. But the mere fact that they would issue such an order would make national news and would once again raise the question of the sanity of the ITC, and of the Federal Circuit, its master, that would authorize such an exclusion order.

            At times I really do question the sanity of the government lawyers involved in these issues. What they ask for is simply outrageous.

            1. Ned,

              First -I have two different posts now awaiting moderation – both should be released.

              Second – Be aware that a naked ban would not likely be attempted. In fact, if you read the ITC petition, they do distinguish the fact pattern here to the specifics of a working together of the importer (staple item or not) and the foreign exporter.

              You are most probably correct (albeit sometimes I wonder) that the president would act as you indicate.

              But none of that matters as is quite beside the legal point that should be the focus – given the acceptance for argument’s sake that Congress has the power to pass laws on the importation of even staple goods.

              Once you accept that, the tenor of the discussion necessarily changes, and we then look to whether or not the ITC has been granted certain powers. As the intent of Congress indicates, this too necessarily must be accepted.

              Try not to obfuscate with emotional rhetoric. Reply with a certain level of professional detachment. Your falling into the “take umbrage” rhetoric is just not that helpful.

            2. Ned,

              Do you think that the law as written:

              19 U.S.C. § 1337 (a)(1)(A): Unfair methods of competition and unfair acts in the importation of articles

              Should have been written::

              19 U.S.C. § 1337 (a)(1)(A): Unfair methods of competition and unfair acts in the importation of infringing articles

              Do you recognize the difference, given your own statement (at 6.1.2.1) of:

              I agree that congress can ban the import of anything for the purpose of supporting American industry.

              I would also point out that congress could choose to control the import of anything through a spectrum of actions, and a wholesale and indiscriminate ban, while possible is not probable. That you (and Malcolm) insist on the extreme view only tends to kick up dust, and that I am still waiting for your views on what the intent of Congress was in the augmentation of the ITC authority, given that Congress felt that the initial plain authority was not enough and that “existing protection under section 337 of the Tariff Act of 1930… against unfair trade practices is cumbersome and costly and has not provided United States owners of intellectual property rights with adequate protection.”

              What does this mean to you?

              Do you have thoughts on this, or are you riding shiny ponies with Malcolm?

            3. Ned,

              I would further point out that the law (as written) appears to be written not to mirror patent law, but to be an additive law to patent law:

              To wit:

              19 U.S. Code § 1337(a)(1) Subject to paragraph (2) [the industry designation], the following are unlawful, and when found by the Commission to exist shall be dealt with, in addition to any other provision of law, as provided in this section:

              Many here are operating under the assumption that the law as written by Congress only works as a subset of patent law ( a lesser included law, if you will).

              I am asking: Is that a valid assumption?

              Given both the plain and unambiguous language of the statute AND the written intent of Congress, (plus your prior admission that Congress is free to legislate and control the importation of any and all goods), what is the objective view of the augmentation given to the ITC?

              (and please try to provide a response that has some merit unlike the glib and vapid “new pony” response of Malcolm)

            4. A follow up lesson in statutory construction for Ned and related to how Ned appears to want to re-write the actual words of Congress for 19 U.S.C. § 1337 (a)(1)(A) at post 6.1.2.1.1.2:

              Let’s look at 19 U.S. Code § 1337 (a)(1)(A):

              (A) Unfair methods of competition and unfair acts in the importation of articles

              (other than articles provided for in subparagraphs (B), (C), (D), and (E))

              into the United States, or

              in the sale of such articles by the owner, importer, or consignee…

              Two Items to note, with the first playing on the comments already on the thread, and the second providing a different nuance to the law (not yet discussed here):

              1) Take a closer look: (A) is a catchphrase and catches ANY articles other than the articles provided in subparagraphs (B), (C), (D) and (E).

              And what do the subparagraphs cover? Well, they cover
              – articles that infringe patents or copyrights
              – articles that infringe trademarks (which articles themselves may be staple goods)
              – articles that infringe maskworks, and
              – articles that infringe vessel designs

              SO even if (B) is not covered, the law – as written – permits the ITC the very power that several here think only exist with brand new shiny ponies.

              2) The “or” reveals that the power is not just at the border, or at the state of goods at the border, but includes actions, that is, sale, after the “importation into” of articles has been completed. The words of Congress create two actions governing the importation of articles, one of which is the traditional view of importing an article into the states (the border crossing aspect) and another is what happens after the crossing the border (the further selling aspect).

              Perhaps this differentiation was meant to distinguish the individual “importation” of goods for personal use and consumption (and not importing those personal items for later reintroduction into the stream of commerce (hmm, Kirtsaeng textbooks anyone?).

            5. anon, OK, just how does importation of a generic article that does not infringe any intellectual property right, and which is fairly priced, etc., and which is later used by a third party, not before the ITC, to infringe by using the generic article in an infringing method, possibly be an act of unfair competition by the importer?

              Are importers of generic articles now supposed to not sell to people who they know infringe? Is “abet” required as well?

              If the Federal Circuit reverses, it might be on this last grounds.

            6. Your question is a valid question, and one that (I would think or at least hope) would need to be addressed by the ITC in their ruling.

              Have you read their petition yet?

              They answer your question in the petition (albeit, perhaps not with the arguments I have made today concerning the statutory construction, the catch-all nature of (A), and the apparent augmentation of authority), but they DO distinguish this particular set of facts.

              I do not know if the argument I have made is before the court (or will be made before the court), so I do not know if the court is aware of this – by party argument or sua sponte.

              Of course, I humbly submit that this not only carries the day, but fully provides the legal support for – and alternative desire to use – the power of the ITC, in addition to or along side of any normal path of judicial remedy (that intent of Congress is clearly more powerful than what may have been traditionally assumed).

          2. Focusing too closely on proximate cause misses the point of what the ITC may be empowered – under law – to do.

            R-read my posts (one is still awaiting moderation, but should be released) and note the larger context of the power and authority afforded the ITC.

            When you ask the question of “Why should the American people be made to suffer… you inject an emotion-laden smokescreen over the question of law at hand. That you conflate this with your anti-software view only muddles your legal position more (and makes your credibility less).

            I would suggest that you attempt to be more objective and sharpen your focus on the legal principles involved. Do not kick up dust.

            1. anon, but the ITC can only affect importations of articles. Even if the articles were used in an infringement, I think there still has to be a nexus between the infringement and the exclusion order that is narrowly effective.

              Now you might rejoin that using a nuclear weapon to kill a fly in New York City is effective. But I would suggest to you that Congress had no intention of authorizing the use of Nuclear Weapons if it authorized the killing of flies in New York City.

              It is simply a matter of “necessary and reasonable.”

            2. You are not paying attention to the legal argument Ned.

              1) Can Congress pass a law concerning importation of staple goods?

              (we seem to agree that the answer here is yes)

              2) Is the scope of the ITC beyond mere goods that infringe?

              (here, based on 1) and based on the intent of congress as ON THE RECORD, the answer may be yes.

              Note that an affirmative answer to 2) above moots the question about whether or not the goods blocked by the ITC are strictly staple goods or not.

              We can see as well (as I pointed out) that some of the ITC’s powers stem from after-importation activities. Combining 1), 2) and this after-importation activity related power – for argument’s sake – how do you propose to eliminate patent infringement by inducement from within the ITC’s proper realm?

              Your nuclear option is simply not in line with what I have presented to you – in the Congressional record as their intent with the power grant to the ITC.

              I suggest that you seek first to understand each of the simple things that I have presented here, then read the ITC petition, and THEN think about what is at issue.

              You may realize that whether or not the incoming goods are staple goods has less to do with the outcome then you might think (if you place weight on 1) and 2) above).

              One of my posts still waiting moderation does agree with the general principle that staple goods should not be blocked – if those staple goods have no other fact patterns attached to them. But unfair trade practices very well may include the use of importation of staple goods. This is to be distinguished from a strict patent law application, in which (as I previously stressed to you) the question of substantial non infringing uses is critical.

              I am trying to get you to open your eyes to the possibility that the OFFICIAL congressional mandate for the ITC may be broader than previously thought.

              Feel free to let me know what you think of the intent of Congress (you have not yet addressed that point). Is that intent an “Atom Bomb?” I don’t think so. Is it more than a firecracker? Most assuredly yes. Read the words again – the intent of congress was clearly to AUGMENT the power of the ITC given the fact that in the view of Congress, the existing measures simply were not effective enough.

              There can be no doubt that the change was MORE power to the ITC. Do you doubt that? If so, why? If not, what was this more power?

            3. Criminy – another post awaiting moderation….

              It might be nice to list somewhere any “keep out words” that trip the moderation filter.

        2. does not the intent of Congress indicate a grant of broader power to the ITC

          No, because foreign companies are not violating any IP rights when staple non-infringing articles are imported.

          Importation of anything into this country is clearly within the police power of the state.

          That’s nice. If someone really really cares, they can convince Congress to pass a law to ban the import of unpatented fingerprint scanning hardware.

          1. That’s nice. If someone really really cares, they can convince Congress to pass a law to ban the import of…

            You quite miss the point that Congress may have already done so.

            But such may not need to be an outright ban, nor would they be constrained to actually strictly follow patent law’s “substantial non infringing use.”

            Pay attention.

            1. Congress may have already done so.

              And they may have given everybody a shiny new pony.

              Everything is possible, I suppose.

              As for me, I’ll gladly continue to import staple non-infringing goods without worries. But you have fun in fantasy land!

            2. Wrong (again) Malcolm. Clearly, if you had been given a shiny new pony you would have known about it.

              (law works just a little bit different)

            3. Clearly, if you had been given a shiny new pony you would have known about it.

              Maybe, maybe not. <— deep analysis of the kind TB loves to dish out

  2. The Supreme Court is currently deciding that issue in Akamai and a decision is expected within the next four weeks. The Federal Circuit may do well to delay its briefing in this case until Akamai is decided.

    Not just Akamai, but the CAFC would do well to wait for Alice as well.

  3. Re: “One [administrative law] question here is the level of deference that should be given to the USITC in carrying out its mandate.”

    Yes, but could that be expressed in this case as: “what deference should be given by a Court of Appeal to a pure statutory interpretation issue in the case of a de novo expanded interpretation by an agency of its statutory jurisdiction?

    1. in the case of a de novo expanded interpretation by an agency of its statutory jurisdiction?

      paul, to you, what indicates the expanded interpretation of statutory jurisdiction?

        1. Have they been asked to? In this particular fact pattern? In a fact pattern that might indicate that the imported product has no substantial non-infringing uses?

          Just because they may have not been asked to prior, does not mean that they have expanded their scope. Their scope may have been the same throughout…

    2. Paul, I don’t know the answer to your question, but there does seem to be a difference between giving an agency deference for interpreting the statues to make rules and giving an agency deference in interpreting the scope of its jurisdiction.

      You have a Supreme Court case on this point?

      1. Ned,

        Do you care to comment on the link that I provided (See post 6 and post 6.1.1) that seems to imply that the ITC has not sough to enlarge their scope of jurisdiction?

  4. Can there be contributory infringement if the thing sold does not embody all the essential features of the patented invention such that its sale would exhaust the invention under Quanta and Univis Lens?

    There was a real and substantial debate about this in the Aro cases where it was argued that the soft top fabric was the heart of the invention.

    Thus, I claim a picture frame assembled from four conventional pieces of wood and a particular kind of screw.

    The accused is selling packages of four wood pieces, sized for assembly into a picture frame. After sizing, the wood pieces have no substantial non infringing use. But sizing has nothing to do with the invention, where the real novelty is in the particular kind of screw.

    It the sale of the wood contributory infringement?

    1. It is to be observed here that the seller of the packages of wood are not cooperating with seller of the particular screw. It should be further observed that purchasers of the packages of wood can use other than the particular screw.

    2. It the sale of the wood contributory infringement?

      No.

      Under what theory could it be contributory infringement? The wood isn’t infringing. It has other uses. There’s no mastermind.

      Learn how to claim your new screw or whatever so people who make or use your invention infringe your claim. When you become so desperate that you need to sue a guy who is doing nothing more than selling old unpatented wood, you or your attorney probably made a big mistake somewhere along the line.

    3. Your strawman is leaking…

      After sizing, the wood pieces have no substantial non infringing use” seems to be a problem point, given that you then contradict yourself with “It should be further observed that purchasers of the packages of wood can use other than the particular screw.” which on its face IS a substantial non infringing use.

      1. Absolutely anon.

        But this is true, in the ordinary case, if what is sold embraces all of the essential novel features such that when the combination is completed, it will infringe.

        Aro was a special case of repairing completed combinations. There too the entire combination was present.

        1. But this is true, in the ordinary case, if what is sold embraces all of the essential novel features such that when the combination is completed, it will infringe.

          Ned, that is a non sequitur to the problem that I point out for you.

          Clearly your initial point was one of not embracing all the essential [novel] features AND that there was no substantial non-infringing use of those items so provided (albeit provided with the sense of lacking/no direct infringement.

          You then changed the hypo and contradicted yourself by allowing the wood to be put to a non-infringing substantial use.

          What do you want your hypo to be?

          1. Sure, anon. Change the facts so that the seller is selling the novel screw, and three out of the four properly sized pieces of wood.

            Here, the only substantial use for the thing sold is an infringement, because the buyer only has to purchase the last piece of wood to complete the combination.

            And there would be inducement in my view if the package included instructions to buy that additional piece of wood and complete the patented picture frame.

            1. Ned,

              You still have not resolved your conflicting statements in your hypo, so I do not know what you are looking for.

              Let me use your new hypo at 3.3.2.1.1 to illustrate:

              Are you saying that your hypo is about:

              A) the last remaining piece of wood has no substantial non infringing uses,

              or

              B) the last remaining piece of wood has substantial non infringing uses.

              Let me know if you are talking about A) or B).

              It appears that you want to focus on a slightly different angle, no doubt to draw parallel to the Univis Lens case. But that Univis Lens case is not a good fit for this hypo, as that case was not about a missing piece, as it was about a missing process step.

              If you want to force the use of the parallel, you do have to supply the A) or B) in order to reach a viable decision.

              It also appears that you want to have your hypo highlight whether or not some parsed “Point of Novelty” is contained in a first set of sold goods or is only available in a second set (or perhaps, only when the two sets are finally combined).

              Perhaps you are attempting to modify Aro to include a notion of “Point of Novelty,” and thus Aro might be a better starting case to speak to this than Univis Lens.

              Actual Aro: “The patent covered only the combination of several unpatented components

              Your hypo: “The patent covered not only the combination of several unpatented components, but also a novel – and possible separably patentable – screw.”

              I would point out that you risk severe conflation in your attempted hypo.

              On a slightly tangential note, and somewhat interestingly, your hypo highlights one of the weaknesses in Malcolm’s pet theory.

              That weakness comes from the possibility that perfectly patent eligible and patentable (yes, these are two distinct concepts) claims may come with NO new precise “Point of Novelty” element, with, as in the Aro case, all elements existing in the prior art.

              Any “pet theory” needs to be broad enough to be applicable to both the PON and non-specific element PON. Any “pet theory” needs to be broad enough to capture the fact that less-than-whole-claims-mental-step-elements can be found in fully patent eligible and patentable claims, and that such claims are not equivalent to merely reading the claims as if the mental step elements of the claims are not present (or treating those elements as “old in the art.”

            2. Anon, the last remaining piece of wood is purchased by the end user from someone else that the party accused of contributory infringement. It really makes no difference to this analysis whether that last remaining piece has other uses.

              Regarding Aro, the soft top fabric was being sold as replacement items for worn-out fabric to owners of cars that had no license. Thus, it was certain that the buyer would complete the patented combination.

              Now take a different case, that the accused infringer was selling soft tops on the open market without knowing where they were going, with the assumption that 95% of the buyers were licensed. Therefore there be 95% no infringement and 5% infringement. I think the statute would exclude contributory infringement in this circumstance because there was a substantial noninfringing use.

              I have to review the Grokster case just a bit more on this issue. It seems that the Supreme Court may have held that the noninfringing use was irrelevant provided that the seller knew that some of the uses were infringements. But I might be wrong, because that seems to be in conflict with the Sony v. Betamax case.

            3. It really makes no difference to this analysis whether that last remaining piece has other uses.

              Sorry Ned, that is simply not true. It remains a critical element in the fact pattern.

            4. Be careful not to over-read the Grokster case.

              The party that was slammed there came to the table with some rather unclean hands and that case is not the best case to take at face value.

            5. Anon, you contend that it makes a difference whether the remaining piece of wood that is purchased by the end user/maker to complete the patented combination can be a staple.

              Let me ask you in the context of the sale of computer software, does it make any difference for contributory infringement purposes whether the computers the end user uses to make the final combination are staples? Must they be adapted so that they have no use except with the infringing software?

            6. Ned,

              I have not ignored your questions of:

              Let me ask you in the context of the sale of computer software, does it make any difference for contributory infringement purposes whether the computers the end user uses to make the final combination are staples? Must they be adapted so that they have no use except with the infringing software?

              without reason.

              As you can see by the content of my posts, I think the case has a radically different focal point than the point to which your questions go to.

              Now then, if you are asking those questions strictly under patent law (assuming for argument’s sake that the power granted to the ITC is a lesser law and that the phrase “In addition to any other provision of law” means nothing (yes, that requires a very odd statutory construction…), well then, I would answer your questions by telling you that I have already answered your first question as to staples status.

              See my post at 3.3.2.1.1.3.

              As to your second question, you appear to be trying to change the understood phrase used in law.

              What exactly is the change in meaning that you are attempting in going from “no substantial non infringing uses” (which appears to be explicitly NOT all-encompassing) to “Must they be adapted so that they have no use except” (which appears to be explicitly all-encompassing)?

              It appears that you are moving the goalposts and creating some heightened requirement. Are you moving goalposts or did you just not ask the question you wanted to ask?

          2. anon, and let me throw you a bone, if the claim is to a programmed computer when the novelty is in the software, and any computer to execute software is all that is necessary to infringe at least by using, then the sale of the software in the form of an article of manufacture probably should be considered contributory infringement.

            1. Nice bone, Ned.

              All that I have been after you since the Nazomi case came out is for you to understand the legal significance of the bone that you now want to give me.

              Do you understand the depth of that legal significance?

              Do you understand what “software as a manufacture” means?

              This may be your very own “come to Jesus moment”. See link to urbandictionary.com

              We shall see if you are ready to accept the full meaning here.

            2. …and I would add my old reminder that you cannot “use” a computer (as you attempt to use the word “use”), until you first change that computer by configuring the ‘oldbox’ with the software – thus creating the new machine.

              A quick thought experiment: place the article of manufacture that has the software merely on top of the computer, eliminating the required change of configuring ‘oldbox’ and thus avoiding changing ‘oldbox.’

              Without changing ‘oldbox,’ do you really have the new capability that the manufacture provides?

              Can you “use” ‘oldbox’ without the change?

              When “use” itself involves invention, one must allow that invention has taken place.

  5. “3) When the panel determined the phrase “articles that . . . infringe” in 19 U.S.C. § 1337(a)(1)(B)(i) does not extend to articles that infringe under 35 U.S.C. § 271(b), ”

    Can articles that do not infringe under 271(c) infringe under 271(b)?

    1. This goes to the crux of one of my pet peeves about the majority opinion — the hoops it jumps through with respect to “articles that infringe” and Section 271(a)’s definition of infringement.

      Under Section 271(a), articles don’t infringe — people do.

      1. Matt, doubly excellent observation there.

        The nature of an exclusion order is directed against articles. They have to have particular characteristics that customs can identify in order to exclude. If an article itself does not embody the essential features of the invention, the invention lies elsewhere. There would be no exhaustion upon sale.

        I think Supreme Court had the same problem in Mercoid. The invention was in locating a thermocouple (stoker switch) above the combustion chamber so that the furnace could be kept going when temperature of the furnace fell below a particular point.

        There was nothing special about the stoker switch. Even though the particular switches sold by the alleged infringer were adapted for the infringing furnaces, the invention did not lie in the switches.

        The real novelty was the location of the switch above the combustion chamber and setting it to trigger when the temperature reached a particular point. I think that this is why Mercoid was decided the way it was.

  6. Just based on the claims, it seems that the fingerprint scanners themselves are likely capable of substantial noninfringing uses. (From poking around on Google, apparently, Cross Match never disputed this.) All of the claims include software implementation details that could be designed around. If Mentalix failed to design around them after Suprema imported the scanners, well, that’s a matter for an infringement suit, not an ITC complaint.

    1. Right, this case is different from Akamai because the court is not denying the patentee relief – but only saying that the ITC is not the proper place to seek that relief.

    2. I agree completely with “plurality.” Why is the ITC involved here when the imported product is non-infringing and has a billion non-infringing uses?

      Does the plaintiff believe it owns all software (or hardware) for “processing” data obtained from a fingerprint scanning machine, including software it never wrote? That’s absurd.

      1. The only thing I can think of is that the imported item is used in an infringement even though it itself is not infringing or without more, has a substantial non infringing use.

        I think there is inducement, that the articles are used in an inducement, but I find the ITC jurisdiction limited to infringing articles.

        1. but I find the ITC jurisdiction limited to infringing articles.

          See my post at 6.1.2.1.1.2. (May 18, 2014 @ 8:19 am)

    3. It appears that both the fingerprint scanners can be used with other software that does not infringe, and the accused direct infringer’s software works with fingerprint scanners made by other manufacturers.

      In other words, this case is like attempting to enforce a programmed computer patent in the ITC by prohibiting the import of computers.

      1. …given that the imported computers have substantial non infringing uses, we can see that that particular item is a staple of commerce.

        …but now switch the fact pattern to be the importation of articles of goods with the software, which will not have substantial non infringing uses…

        Anyone looking at this objectively and with intellectual honesty can see the clear difference.

        This clear difference comes from the fact (and not just a fact because I say so – a fact that is a fact regardless of because I say so) that software is a manufacture and machine component and that software is equivalent to firmware and is equivalent to hardware.

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