Patents

Suprema v. ITC: How Induced Infringement Became an Import Violation

Sitting en banc, the Federal Circuit held that the ITC may bar imports used to induce infringement of a method claim performed only after the goods cross the border.

February 17, 2025
A fingerprint scanner reading a thumbprint at a security checkpoint
The scanners at issue were non-infringing on arrival; the patented method was performed only after Mentalix loaded its software in the United States. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

Suprema, Inc. v. International Trade Commission, No. 2012-1170 (Fed. Cir. Aug. 10, 2015) (en banc), answered a question that had quietly destabilized U.S. International Trade Commission practice: can the Commission bar an imported product when that product infringes nothing at the moment it enters the country, and becomes part of an infringement only later, on domestic soil, at the importer’s inducement? By a 6-4 vote, the en banc court said yes. Writing for the majority, Judge Reyna held that Section 337’s operative phrase — “articles that infringe” — is ambiguous as applied to induced infringement, and that the Commission’s reading, which reaches articles imported to induce a later direct infringement, is a reasonable construction entitled to deference. The decision arose from ITC Investigation No. 337-TA-720, Certain Biometric Scanning Devices, and turned on a single method claim of a single patent.

At a glance

  • Case: Suprema, Inc. v. International Trade Commission, No. 2012-1170 (Fed. Cir. Aug. 10, 2015) (en banc)
  • Vote: 6-4; Reyna (author), joined by Newman, Wallach, Taranto, Chen, and Hughes; O’Malley dissenting, joined by Prost, Lourie, and Dyk
  • Tribunal below: U.S. International Trade Commission, Inv. No. 337-TA-720, Certain Biometric Scanning Devices, Components Thereof, Associated Software, and Products Containing Same
  • Parties: Complainant Cross Match Technologies, Inc.; respondents Suprema, Inc. (a Korean manufacturer of fingerprint scanners) and Mentalix, Inc. (a U.S. importer that combined the scanners with its own software)
  • Patent at issue en banc: U.S. Patent No. 7,203,344, method claim 19
  • Statute: Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, in conjunction with the induced-infringement provision, 35 U.S.C. § 271(b)
  • Holding: The phrase “articles that infringe” is ambiguous as to induced infringement; the Commission may issue an exclusion order predicated on induced infringement even though the underlying direct infringement of the method claim occurs after importation
  • Subsequent history: The Supreme Court denied certiorari; the Commission’s authority was later reaffirmed in Comcast Corp. v. ITC

The problem: a method claim that no border can catch

The factual posture made the legal question unavoidable. Suprema built optical fingerprint scanners in Korea and shipped them to the United States. The scanners themselves did not perform the patented method on arrival. Only after Mentalix imported them and combined them with its own software did the resulting systems carry out the steps of claim 19 of the ‘344 patent — a method for capturing and processing a fingerprint image. Cross Match’s theory was therefore one of induced infringement under 35 U.S.C. § 271(b): Suprema sold scanners knowing and intending that Mentalix would use them to practice the patented method domestically.

That theory collided with the temporal logic of customs enforcement. A method claim is infringed only when its steps are performed. At the instant of importation — the moment Section 337 nominally polices — no method had yet been performed, so the imported scanners, examined in isolation at the port, “infringed” nothing. The original Federal Circuit panel seized on exactly this point in 2013, holding that an exclusion order cannot rest on induced infringement of a method claim because there is no direct infringement, and hence no “article that infringes,” until after the article has already entered the country. On that reading, a whole category of method-patent enforcement was effectively read out of the ITC.

The en banc majority: ambiguity, then deference

The full court reversed by going back to the statutory text and finding it genuinely unclear. Section 337 reaches “articles that infringe a valid and enforceable United States patent.” The majority observed that “infringe” is a defined concept in the Patent Act that expressly includes induced infringement under § 271(b), and that nothing in the grammar of “articles that infringe” tells you when the infringement must occur or whether the phrase contemplates only direct infringement. The text could plausibly describe articles that are themselves infringing on arrival, or articles whose importation contributes to an infringement completed later — the language does not choose.

Having found ambiguity, the majority applied Chevron deference. The Commission, charged with administering Section 337, had long construed the statute to reach articles imported to induce a later direct infringement, and the majority held that construction reasonable. Three considerations drove the conclusion. First, induced infringement is a unitary tort: liability under § 271(b) requires an act of inducement plus an underlying direct infringement, and the two need not be simultaneous. Second, Section 337 is a trade statute aimed at unfair acts in the importation of articles; a reading that lets infringers escape simply by deferring the final infringing step until after the goods clear customs would gut the provision’s purpose and invite easy circumvention. Third, the Commission’s interpretation harmonized Section 337 with the substantive patent law it incorporates, rather than carving method claims out of the agency’s reach. The exclusion order against the Suprema scanners therefore stood.

The dissent: “articles that infringe” means at the border

Judge O’Malley’s dissent pressed the temporal point the original panel had made. In her view the statute is not ambiguous at all: “articles that infringe” describes a present condition of the goods at importation, and an article that infringes nothing when it enters the country is not an “article that infringes.” Because induced infringement has no completed existence until the direct infringement occurs, and that direct infringement here happened only after importation, the dissent saw the Commission as reaching beyond its statutory mandate and into conduct — domestic inducement — that is the province of the district courts. The disagreement was thus fundamentally about whether Section 337 looks at the article frozen at the moment of entry or at the article in the stream of conduct the importer sets in motion.

Open questions

Suprema settled the headline issue but rested its result on Chevron deference, and that foundation has since shifted. In Loper Bright Enterprises v. Raimondo (2024) the Supreme Court overruled Chevron, instructing courts to determine the best reading of a statute themselves rather than defer to an agency’s reasonable one. Whether Suprema’s outcome survives a de novo reading of “articles that infringe” is now a live academic question — though the Federal Circuit’s later, deference-light reasoning in Comcast suggests the result is durable on the statutory merits, not merely on deference. Open, too, is how far the inducement theory stretches: Suprema involved an importer (Mentalix) who both imported and induced, while later cases test scenarios where the inducing party neither manufactures nor imports the article at all. And the decision does not resolve how the requisite knowledge and intent for inducement must be proved in the Commission’s investigatory setting, where discovery and timing differ from district-court litigation.

Implications

  • Method patents are enforceable at the ITC. Complainants can predicate Section 337 violations on induced infringement even when the patented steps are performed only after the accused articles are imported.
  • Deferring the infringing step is not a loophole. Importers cannot defeat ITC jurisdiction merely by arranging for the final infringing act to occur on domestic soil after customs clearance.
  • Knowledge and intent become central. Because inducement requires scienter, ITC respondents should scrutinize what the importer knew and intended; complainants must build that record.
  • The deference rationale is dated. Post-Loper Bright, practitioners should brief the best reading of “articles that infringe” directly rather than leaning on Chevron, even though the practical holding remains good law.
  • The ITC’s reach over conduct is broad. Suprema set the stage for Comcast, confirming that Section 337 polices a course of conduct surrounding importation, not just the static condition of goods at the border.

Frequently asked questions

Did the imported scanners infringe anything when they arrived? No. That was the crux. The scanners alone did not perform the patented method on arrival; the method was carried out only after Mentalix combined them with its software in the United States. The en banc court held that the resulting induced infringement still made them “articles that infringe” for Section 337 purposes.

Why did the vote come out 6-4? The fracture was over statutory clarity. The majority found “articles that infringe” ambiguous and deferred to the Commission’s reasonable reading; the four dissenters found the phrase unambiguous, fixing infringement at the moment of importation and viewing post-importation inducement as outside the agency’s mandate.

Does the overruling of Chevron undo Suprema? Not as a matter of current law. Suprema remains binding, and its result was reaffirmed in Comcast on reasoning that does not depend on deference. But Loper Bright means a future challenger would frame the question as the single best reading of the statute, so litigants should no longer rely on deference as the load-bearing argument.

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