Federal Circuit Agrees to Rehear Dispute over ITC Powers

May 15, 2014

Fenwick litigation partner Darryl Woo spoke to The American Lawyer about the Federal Circuit’s decision to grant an en banc rehearing in Suprema v. ITC – a case in which Woo won the earlier decision preventing the International Trade Commission from imposing a ban on importation of a limited category of fingerprint scanners produced by his South Korean client, Suprema Inc.

"We don't read anything into the rehearing," Woo told the publication. He added that he welcomes the opportunity to poke holes in the underlying patent infringement theory posited by Cross Match Technologies Inc., the U.S. biometrics company that requested the ITC ban.

Woo also said any purported backlash against the earlier ruling was overblown, as the decision was based on a straightforward reading of the Tariff Act on the alleged inducement of infringement.

The American Lawyer reported that the Federal Court ruling had caused “something of a stir in patent circles” because it restricted the ITC's power to issue import bans in certain cases.

The ITC had earlier rejected most of the relief requested by Cross Match in 2011, granting an import ban on only a narrow category of products.  The three-judge Federal Circuit panel subsequently vacated the limited ban in a 2-1 decision issued in 2013.

Observing that the Fenwick team’s statutory authority argument was one that “ha[d] never [before] been presented to or decided,” the Federal Circuit panel held that in cases alleging “induced infringement,” the ITC can only ban products that are infringing U.S. patents at the time of importation, which isn't the case with Suprema's scanners.

The full article is available through The American Lawyer website.