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

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

Appellee International Trade Commission’s brief and Intervenor Cross Match Technologies, Inc.’s brief argue that inducement of infringement may be tied to an article, citing the legislative history for the Patent Act, and Supreme Court and Federal Circuit precedent. The ITC and Cross Match defend the Commission’s interpretation of § 337 as allowing for a finding of inducement of infringement of a method claim which is directly infringed post importation by recounting the long history of construing § 337 as such, and arguing that the Commission’s interpretation is the only one consistent with the overriding purpose of the Tariff Act as a trade remedy.

The United States, as amicus curiae, similarly argues that the ITC’s interpretation of §337 is appropriate in light of the history and purpose of the Tariff Act and is entitled to deference, also emphasizing that the Commission construes § 337 in pari materia to provide remedies against the same forms of infringement at the border that district courts are empowered to redress through infringement actions within the United States. For a more in depth analysis of the underlying Federal Circuit panel opinion in Suprema, Inc. v. ITC, and the parties’ and United States’ en banc briefs, click here. We will provide additional updates summarizing oral argument and reporting on the en banc opinion once it issues.