Suprema, Inc. v. Int'l Trade Comm'n

• Decision Date: 13 December 2013
• Docket Number: 2012–1124.,Nos. 2012–1170,2012–1026,s. 2012–1170
• Citation: 742 F.3d 1350
• Parties: SUPREMA, INC. and Mentalix, Inc., Appellants, v. INTERNATIONAL TRADE COMMISSION, Appellee, and Cross Match Technologies, Inc., Intervenor. Cross Match Technologies, Inc., Appellant, v. International Trade Commission, Appellee, and Suprema, Inc. and Mentalix, Inc., Intervenors.
• Court: U.S. Court of Appeals — Federal Circuit

742 F.3d 1350

SUPREMA, INC. and Mentalix, Inc., Appellants,

v.INTERNATIONAL TRADE COMMISSION, Appellee,andCross Match Technologies, Inc., Intervenor.

Cross Match Technologies, Inc., Appellant,

v.International Trade Commission, Appellee,andSuprema, Inc. and Mentalix, Inc., Intervenors.

Nos. 2012–1170, 2012–1026, 2012–1124.

United States Court of Appeals, Federal Circuit.

Dec. 13, 2013.

Darryl M. Woo, Fenwick & West, LLP, of San Francisco, CA, 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 Counsel, 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, NY.

Daryl Joseffer, King & Spalding LLP, of Washington, 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 Technologies, 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, NY.

Clint A. Gerdine, Attorney, Office of General Counsel, 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 Francisco, CA, 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 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 Commission'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 “articles ... 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 asserted 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.

I.

A.

The Commission rulings before us arise from proceedings 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 patent”), 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 Commission found no infringement of the '562 patent. The Commission 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 Commission issued a limited exclusion order directed to certain 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 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 violation 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 blindness 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 biometrics, is important technology because many industries and law enforcement increasingly rely on fingerprintsas biometrics to store, recognize, or verify identity.

C.

As explained above, these appeals concern three patents. 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 implementations of fingerprint image capture and processing. The third patent, the '993 patent, contains apparatus claims (over an “optical system”) and is at issue in Suprema'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 corresponding fingerprint area;

(c) filtering the fingerprint image;

(d) binarizing the filtered fingerprint image;

(e) detecting a fingerprint area based on a concentration of black pixels in the binarized fingerprint image;

(f) detecting a fingerprint shape based on an arrangement of the concentrated black pixels in an oval-like shape in the binarized fingerprint image; and

(g) determining whether the detected fingerprint 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 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 comprising:

a) a prism having a first surface for contacting the object and a second surface, said first surface being oriented with respect to the optical axis at an angle greater 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 object, 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...