Fenwick’s brief on behalf of Suprema Inc. to the Federal Circuit is featured in the Law360 article “Induced Infringement Outside ITC's Reach, Fed. Circ. Told.”
In December 2013, a Fenwick team led by partner Darryl Woo obtained a landmark victory on behalf of Suprema limiting the statutory authority of the International Trade Commission to remedy indirect patent infringement. In response to infringement allegations by Cross Match Technologies Inc., the ITC had issued an exclusion order barring the importation of certain products by Suprema, based in South Korea, to U.S.-based Mentalix, finding that Suprema induced infringement by importing products into the United States that were thereafter combined with Mentalix's domestically-made software. Observing that the Fenwick team’s statutory authority argument was one that “ha[d] never [before] been presented to or decided,” the Federal Circuit vacated the exclusion order because Suprema's products, which had been found to have substantial non-infringing uses, were not articles that infringed a patent at the time of importation, effectively rendering claims based purely on alleged inducement of infringement beyond the authority of the ITC.
The Law360 article reports that both the ITC and Cross Match Technologies filed petitions asking the Federal Circuit to vacate the December panel decision. With Fenwick again representing Suprema, Law360 reports that “Suprema Inc. urged the Federal Circuit Tuesday not to hold an en banc rehearing of a ruling that effectively barred the U.S. International Trade Commission from hearing induced patent infringement cases, arguing that overturning the ruling would ‘impermissibly expand’ the ITC's authority.”
"The commission is not, and should not be, the default venue for all patent infringement claims with some international connection," the Fenwick team argued in the brief, as reported by Law360. "Where there is no importation of an infringing article, Congress has dictated that the federal courts are the proper venue in which to seek a remedy."
The article adds that the brief further argued that “[t]he interpretation of the law offered by the ITC and Cross Match ‘would impermissibly expand the commission's statutory authority to be nearly coextensive with the courts’” and that concerns of the ruling creating a loophole for foreign importers is “’dramatically overblown’ because even if the ITC lacks authority, patent owners can still sue in district court.”
The Fenwick team representing Suprema includes Fenwick partners Darryl Woo, Jae Won Song and Ilana Rubel and associates Bryan Kohm, David Lacy Kusters and Bradley Meissner.
The full article is available through the Law360 website (subscription required).