Suprema, Inc. v. Int'l Trade Comm'n, 2012-1170
| Decision Date | 14 September 2015 |
| Docket Number | 2012-1170 |
| Parties | SUPREMA, INC., MENTALIX INCORPORATED, Appellants v. INTERNATIONAL TRADE COMMISSION, Appellee CROSS MATCH TECHNOLOGIES, INC., Intervenor |
| Court | U.S. Court of Appeals — Federal Circuit |
NOTE: This disposition is nonprecedential.
Appeal from the United States International Trade Commission in Investigation No. 337-TA-720.
DARRYL MICHAEL WOO, Vinson & Elkins LLP, San Francisco, CA, argued for appellants. Also represented by ILANA RUBEL, BRYAN ALEXANDER KOHM, DAVID MICHAEL LACY KUSTERS, HEATHER N. MEWES, ERIN SIMON, Fenwick & West, LLP, San Francisco, CA; JAE WON SONG, Mountain View, CA; BRADLEY THOMAS MEISSNER, Seattle, WA.CLARK S. CHENEY, Office of the General Counsel, United States International Trade Commission, Washington, DC, argued for appellee. Also represented by DOMINIC L. BIANCHI, ANDREA C. CASSON, CLINT A. GERDINE, WAYNE W. HERRINGTON.
MAXIMILIAN A. GRANT, Latham & Watkins LLP, Washington, DC, argued for intervenor. Also represented by CLEMENT J. NAPLES, New York, NY; GABRIEL BELL, BERT C. REISER, JENNIFER HALBLEIB, Washington, DC.
MARK R. FREEMAN, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC, argued for amicus curiae United States. Also represented by JOYCE R. BRANDA, SCOTT R. MCINTOSH.
JAMES ALTMAN, Foster, Murphy, Altman & Nickel, PC, Washington, DC, for amicus curiae American Intellectual Property Law Association. Also represented by F. DAVID FOSTER.
J. MICHAEL JAKES, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington DC, for amicus curiae Intellectual Property Owners Association. Also represented by HERBERT CLARE WAMSLEY, JR., Intellectual Property Owners Association, Washington, DC; PHILIP STATON JOHNSON, Johnson & Johnson, New Brunswick, NJ; KEVIN H. RHODES, 3M Innovative Properties Company, St. Paul, MN.
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chicago, IL, for amicus curiae Microsoft Corporation. Also represented by RICHARD ALAN CEDEROTH, DAVID T. PRITIKIN, Chicago, IL; BRIAN R. NESTER, RYAN C. MORRIS, Washington, DC; THOMAS ANDREW CULBERT, DAVID E. KILLOUGH, Microsoft Corporation, Redmond, WA.
JOHN THORNE, Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC, Washington, DC, for amici curiae DellInc., Adobe Systems, Inc., Ford Motor Co., Hewlett Packard Co., LG Display Co., Ltd., LG Electronics, Inc., Netflix, Inc., Samsung Electronics Co., Ltd., SAP America, Inc. Also represented by AARON M. PANNER, MELANIE L. BOSTWICK.
DARYL JOSEFFER, King & Spalding LLP, Washington, DC, for amicus curiae Google Inc. Also represented by ADAM CONRAD, Charlotte, NC; SUZANNE MICHEL, Google Inc., Washington, DC.
ERIC JAY FUES, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, for amicus curiae International Trade Commission Trial Lawyers Association. Also represented by T. CY WALKER, Kenyon & Kenyon LLP, Washington, DC.
JOHN D. HAYNES, Alston & Bird LLP, Atlanta, GA, for amici curiae Nokia Corporation, Nokia USA, Inc. Also represented by ADAM DAVID SWAIN, Washington, DC.
Before PROST, Chief Judge, O'MALLEY and REYNA, Circuit Judges.
This appeal, which arises from rulings of the International Trade Commission ("the Commission"), returns to this panel after en banc consideration. We reinstate in its entirety the panel's rulings, dated December 13, 2013, as to U.S. Patent Nos. 7,277,562 ("the '562 patent") and 5,900,993 ("the '993 patent"). See Suprema, Inc. v. ITC, 742 F.3d 1350, 1363-71 (Fed. Cir. 2013) ("Suprema I") (Parts III.A, III.B, and V). The en banc Court neither considered nor questioned either the conclusions the panel reached as to those patents, nor the rationale for those conclusions. As to U.S. Patent No. 7,203,344 ("the '344 patent"), we affirm the Commission's finding of aviolation of 19 U.S.C. § 1337 ("section 337") and the exclusion order predicated thereon.
This Court previously set forth at length the factual background of the present controversy. See generally Suprema I, 742 F.3d at 1352-56; Suprema, Inc. v. ITC, 2015 U.S. App. LEXIS 13929, *4-13 (Fed. Cir. Aug. 10, 2015) (en banc) ("Suprema II"). Briefly, Appellee Cross Match Technologies, Inc. ("Cross Match") asserted that Appellants Suprema, Inc. and Mentalix, Inc. violated section 337 by infringing the '344 patent, the '562 patent, and the '993 patent. The Commission found claim 19 of the '344 patent infringed by the combination of certain of Suprema's scanners (RealScan-10, RealScan-D, RealScan-10F, and RealScan-DF (collectively, the "accused products")) and Software Development Kit ("SDK") with the "segmentation" feature of Mentalix Inc.'s FedSubmit software. The Commission concluded that Mentalix directly infringed claim 19 of the '344 patent and that Suprema had induced that infringement. The Commission determined that the asserted claims of the '562 patent were not infringed, however. The Commission further found that Suprema's RealScan-10 and RealScan-10F scanners directly infringe claims 10, 12, and 15 of the '993 patent, and that Appellants failed to prove the asserted claims of the '993 patent invalid as obvious. Suprema I, 742 F.3d at 1353. 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.1 See Certain Biometric Scanning Devices, Components Thereof, Associated Software, and Products Containing Same,USITC Inv. No. 337-TA-720, Pub. No. 4366, Limited Exclusion Order ¶ 1 (Feb. 2013).
On appeal, a panel of this Court affirmed the Commission's non-infringement ruling regarding the '562 patent. Suprema I, 742 F.3d at 1353. The panel also affirmed the Commission's finding of infringement with regard to the '993 patent, and affirmed the Commission's conclusion that Appellants failed to prove the asserted '993 patent claims were invalid as obvious. Id. The panel vacated the Commission's infringement finding on the '344 patent, however, holding that "an exclusion order based on a violation of § 1337(a)(1)(B)(i) may not be predicated on a theory of induced infringement where no direct infringement occurs until post-importation." Id. Accordingly, the original panel did not reach the merits of the Commission's willful blindness or direct infringement findings on the '344 patent. Id.
After reaching these conclusions, this Court granted en banc rehearing and vacated the panel decision. Suprema, Inc. v. ITC, 2014 U.S. App. LEXIS 10124, at *1-2. The en banc Court reversed the panel's holding as it relates to the '344 patent, and upheld the Commission's interpretation that 19 U.S.C. § 1337 covers "importation of goods that, after importation, are used by the importer to directly infringe at the inducement of the goods' seller." Suprema II, at *3-4 (Fed. Cir. Aug. 10, 2015). The en banc Court then remanded "for further proceedings consistent with this opinion." Id. at *34-35.
The en banc Court's holding did not relate to the panel's judgments with respect to the '562 and '993 patents. Because all aspects of the panel opinion were vacated when en banc review was granted, however, having now received the appeal on remand, we must address the Commission's findings with respect to all three patents at issue. For the reasons explained in the original panel opinion, we reinstate the original panel's holdings withrespect to the '562 and '993 patents. To be clear, we affirm the Commission's finding of no infringement of the '562 patent. See Suprema I, 742 F.3d at 1368-71(Part V of the panel opinion). We further affirm the Commission's conclusions that Suprema infringes the '993 patent, and that Appellants failed to prove invalidity of the '993 patent. Id. at 1363-68 ().
We now reach the merits of the Commission's direct infringement and willful blindness findings on the '344 patent. As noted, the Commission found that Mentalix directly infringes claim 19 of the '344 patent, and that Suprema was liable for induced infringement of that claim due to Suprema's willful blindness toward Mentalix's infringement. The Commission found that Suprema performed market research on its competitors' patents and products, then actively encouraged Mentalix's activities while willfully blinding itself to the infringing nature of those activities. Suprema argues that the Commission erred in two ways. First, Suprema argued that Mentalix does not directly infringe the '344 patent. Second, Suprema argues that the Commission's findings regarding willful blindness were erroneous. As set forth below, because there is substantial evidence in the record to support the Commission's findings on both points, we affirm the Commission's conclusions.
"[T]he ultimate issue of the proper construction of a claim should be treated as a question of law." Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 838 (U.S. 2015). We review any factual determinations made in support of a claim construction with deference. Id. at 838-39.
Patent infringement, whether direct or indirect, is a question of fact. i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831, 850 (Fed. Cir. 2010); Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1281 (Fed. Cir. 2010). On appeal, we review the Commission's factual findings for substantial evidence, and the Commission's legal determinations de novo. 19 U.S.C. § 1337(c); 5 U.S.C. § 706(2)(E); Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821,832 (Fed. Cir. 1991).
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 fingerprint 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:
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