Suprema, Inc. v. International Trade Commission

United States Court of Appeals
for the Federal Circuit
______________________
SUPREMA, INC.,
MENTALIX INCORPORATED,
Appellants
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
CROSS MATCH TECHNOLOGIES, INC.,
Intervenor
______________________
2012-1170
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-720.
______________________
Decided: August 10, 2015
______________________
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, Moun-
tain View, CA; BRADLEY THOMAS MEISSNER, Seattle, WA.
CLARK S. CHENEY, Office of the General Counsel,
United States International Trade Commission, Washing-
2 SUPREMA, INC. v. ITC
ton, 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 Intel-
lectual 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., Intellectu-
al Property Owners Association, Washington, DC; PHILIP
STATON JOHNSON, Johnson & Johnson, New Brunswick,
NJ; KEVIN H. RHODES, 3M Innovative Properties Compa-
ny, St. Paul, MN.
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
cago, 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 Dell
Inc., Adobe Systems, Inc., Ford Motor Co., Hewlett-
SUPREMA, INC. v. ITC 3
Packard Co., LG Display Co., Ltd., LG Electronics, Inc.,
Netflix, Inc., Samsung Electronics Co., Ltd., SAP Ameri-
ca, 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, Gar-
rett & Dunner, LLP, Washington, DC, for amicus curiae
International Trade Commission Trial Lawyers Associa-
tion. Also represented by T. CY WALKER, Kenyon & Ken-
yon 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, NEWMAN, LOURIE, DYK,
O’MALLEY, REYNA, WALLACH, TARANTO, CHEN, and
HUGHES, Circuit Judges. ∗
Opinion for the court filed by Circuit Judge REYNA.
Dissenting opinion filed by Circuit Judge DYK.
Dissenting opinion filed by Circuit Judge O’MALLEY, with
whom PROST, Chief Judge, LOURIE and DYK, Circuit
Judges, join.
∗
Circuit Judges Moore and Stoll did not partici-
pate.
4 SUPREMA, INC. v. ITC
REYNA, Circuit Judge.
Section 337 of the Tariff Act of 1930, codified at 19
U.S.C. § 1337 (“Section 337”), declares certain acts unlaw-
ful. Among them is importing “articles that . . . infringe a
valid and enforceable United States patent.” 19 U.S.C.
§ 1337(a)(1)(B)(i). The International Trade Commission
(“Commission”) interpreted this provision to cover impor-
tation of goods that, after importation, are used by the
importer to directly infringe at the inducement of the
goods’ seller. A majority panel of this court disagreed,
reasoning that there are no “articles that infringe” at the
time of importation when direct infringement does not
occur until after importation. Suprema, Inc. v. Int’l Trade
Comm’n, 742 F.3d 1350, 1352 (Fed. Cir. 2013). In doing
so, the panel effectively eliminated trade relief under
Section 337 for induced infringement and potentially for
all types of infringement of method claims.
We granted en banc rehearing and vacated the panel
decision, 2014 WL 3036241, and we now uphold the
Commission’s position. We conclude that because Section
337 does not answer the question before us, the Commis-
sion’s interpretation of Section 337 is entitled to Chevron
deference. We hold that the Commission’s interpretation
is reasonable because it is consistent with Section 337 and
Congress’ mandate to the Commission to safeguard Unit-
ed States commercial interests at the border. According-
ly, we return the case to the panel for further proceedings
consistent with this opinion.
I. BACKGROUND
This case comes before us on appeal from a final de-
termination by the Commission, finding a violation of
Section 337 by Suprema, Inc., and Mentalix, Inc., in
Certain Biometric Scanning Devices, Components Thereof,
Associated Software, and Products Containing the Same,
Inv. No. 337-TA-720. Section 337 authorizes the Commis-
sion to investigate allegations of unfair trade acts in the
SUPREMA, INC. v. ITC 5
importation of articles that infringe a valid United States
patent. 19 U.S.C. § 1337(b)(1). If a violation of the stat-
ute is found, the Commission issues an exclusion order
that bars the importation of some or all of the infringing
products and may issue a related cease and desist order
unless the Commission finds that certain public interest
factors militate against such remedy. Id. § 1337(d).
In May 2010, Cross Match Technologies, Inc. (“Cross
Match”) filed a complaint with the Commission, alleging
infringement of four patents owned by Cross Match
involving certain fingerprint scanning devices. The
Commission found the scanners to be manufactured by
Suprema abroad, and imported into the United States by
both Suprema and Mentalix. Mentalix subsequently
combined the scanners with software, and used and sold
the scanners in the United States.
Cross Match is the assignee of several patents cover-
ing technology used in biometric imaging scanners includ-
ing U.S. Patent Nos. 7,203,344 (“the ’344 patent”), the
only patent relevant to this appeal. The claims of the ’344
patent are drawn to fingerprint scanning systems and
methods that generate a fingerprint image, process that
image to identify key regions, and determine image
quality. Claim 19, the sole claim remaining in this ap-
peal, recites:
19. A method for capturing and processing a fin-
gerprint image, the method comprising:
(a) scanning one or more fingers;
(b) capturing data representing a corre-
sponding fingerprint image;
(c) filtering the fingerprint image;
(d) binarizing the filtered fingerprint im-
age;
6 SUPREMA, INC. v. ITC
(e) detecting a fingerprint area based on a
concentration of black pixels in the bina-
rized fingerprint image;
(f) detecting a fingerprint shape based on
an arrangement of the concentrated black
pixels in an oval-like shape in the bina-
rized fingerprint image; and
(g) determining whether the detected fin-
gerprint area and shape are of an accepta-
ble quality.
’344 patent col. 19 ll. 24–37.
Suprema, Inc., is a Korean company that makes
hardware for scanning fingerprints, including its Re-
alScan line of fingerprint scanners. Suprema sells the
scanners to Mentalix, Inc. 1 The scanners are not stand-
alone products. To function, they must be connected to a
computer, and that computer must have custom-
developed software installed and running. Suprema does
not make or sell this software. Instead, it ships each
scanner with a “software development kit” (“SDK”) that is
used for developing custom programs that control the
functions of its scanners. The SDK comes with an in-
struction manual that explains how programs can be
written to take advantage of scanner functionality.
Mentalix, Inc., is an American company that purchas-
es Suprema’s scanners and imports those scanners into
1 Suprema separately imports scanners into the
United States. Suprema displays these scanners at trade
shows and uses them to obtain a certification under the
United States Federal Bureau of Investigation’s Integrat-
ed Fingerprint Identification standard. Suprema Answer
at 13. Those importations are not relevant to the issue
before us.
SUPREMA, INC. v. ITC 7
the United States. It writes custom software, called
FedSubmit, which uses Suprema’s SDK to control and
operate the scanners. Mentalix then bundles its software
with the scanners and resells the bundle within the
United States.
The Commission instituted an investigation of Su-
prema’s accused scanners in June 2010 pursuant to 19
U.S.C. § 1337(a)(1)(B)(i). 75 Fed. Reg. 34482–83 (June 17,
2010). Section 337(a)(1)(B)(i) declares unlawful the
importation, sale for importation, or sale within the
United States after importation of articles that infringe a
valid and enforceable United States patent. An adminis-
trative law judge (“ALJ”) construed certain terms of claim
19 of the ’344 patent and then conducted a thorough
infringement analysis, expressly finding that each of the
limitations of claim 19 was practiced by the accused
products. See J.A. 123–32. On the basis of that finding,
the ALJ determined that several Suprema scanners, the
RealScan-10, RealScan-D, RealScan-10F, and RealScan-
DF, directly infringe claim 19 of the ’344 patent when
used with the SDK kits and Mentalix’s FedSubmit soft-
ware. J.A. 133.
Based on the finding that the ’344 patent was in-
fringed, the ALJ issued a Final Initial Determination that
there had been “a violation of section 337 in the importa-
tion into the United States, sale for importation, and sale
within the United States after importation of certain
biometric scanning devices” and “associated software.”
J.A. 205. The ALJ recommended that a limited exclusion
order issue that would bar Suprema’s infringing scanners
from entering the United States. 2 Id. The ALJ further
recommended that a cease-and-desist order issue to
2 A limited exclusion order is directed solely to Su-
prema imports and does not affect importations of scan-
ning products manufactured by other foreign entities.
8 SUPREMA, INC. v. ITC
prevent Mentalix from distributing the infringing scan-
ners. Id.In June 2011, the Commission determined to review
the ALJ’s Final Initial Determination of infringement of
claim 19 of the ’344 patent. J.A. 209. The Commission
requested briefing on the issues under review, and “re-
quested written submissions on the issues of remedy, the
public interest, and bonding from the parties and inter-
ested non-parties.” J.A. 210 (citing 76 Fed. Reg. 52970–71
(Aug. 24, 2011)). In addition to considering the issue of
direct infringement, the Commission also considered
whether Suprema induced infringement of claim 19. The
Commission’s comprehensive analysis included a survey
of the relevant law, a summary the ALJ’s decision, and an
extensive discussion of the parties’ arguments.
Regarding direct infringement, the Commission found
that record evidence demonstrated that Mentalix had
already directly infringed claim 19 within the United
States prior to the initiation of the investigation. Men-
talix’s direct infringement arose from its integration of
FedSubmit software with Suprema scanners and SDK
kits, and subsequent use of the combination within the
United States. J.A. 220.
Turning to the issue of indirect infringement, the
Commission examined the elements required to support
an inducement finding, in addition to underlying direct
infringement. In particular, the Commission considered
the inducer’s knowledge regarding patent infringement.
The Commission explained that the knowledge prong is
met by a showing of willful blindness. J.A. 221 (citing
Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060,
2070–71 (2011)). The Commission laid out the require-
ments for willful blindness: (1) the defendant’s subjective
belief in the high probability that a fact exists; and (2) the
defendant’s taking of deliberate steps to avoid learning of
that fact. Id. (citing Global-Tech, 131 S. Ct. at 2070).
SUPREMA, INC. v. ITC 9
The Commission found that Suprema “‘willfully
blinded’ itself to the infringing nature of Mentalix’s activi-
ties,” which Suprema “had actively encouraged.” J.A. 221.
Though much of the relevant evidence is confidential and
cannot be repeated here, the Commission found that
Suprema believed in high probability that its scanners
would infringe the ’344 patent. For instance, the Com-
mission found that Suprema was successful in its at-
tempts to develop various functions covered by the ’344
patent into its products. J.A. 222. Based on these factual
findings, the Commission found that Suprema subjective-
ly believed in the high probability that Cross Match’s
scanner technology was patented and, therefore, that it
was likely that Suprema’s scanner products would be
covered by Cross Match’s patents. J.A. 224.
The Commission also found that Suprema deliberate-
ly avoided acquiring knowledge of the ’344 patent. 3
Among other things, the Commission found that Suprema
failed to obtain opinion of counsel, through which the ’344
patent would have been uncovered since it was owned by
Cross Match, and the search would have included an
analysis of whether Suprema infringed Cross Match
patents. J.A. 224. Accordingly, the Commission found
that Suprema had willfully blinded itself to the existence
of the ’344 patent and “deliberately shielded itself from
the nature of the infringing activities it actively encour-
aged and facilitated Mentalix to make.” J.A. 225.
As to the active encouragement and facilitation re-
quirement, the Commission listed numerous confidential
examples of the collaborative efforts of Suprema and
Mentalix, noting the list was not exhaustive. J.A. 225.
Based on this extensive evidence, the Commission found
that Suprema aided and abetted Mentalix’s infringement
3 The finding was based on confidential evidence
that we do not publicly discuss.
10 SUPREMA, INC. v. ITC
by collaborating “with Mentalix to import the scanners
and to help adapt Mentalix’s FedSubmit software to work
with Suprema’s imported scanners and SDK to practice
claim 19 of the ’344 patent.” J.A. 225. Thus, the Com-
mission found that all the elements of induced infringe-
ment had been met. The Commission modified the ALJ’s
initial determination such that Mentalix was found to
directly infringe claim 19 of the ’344 patent, establishing
the underlying direct infringement, and Suprema was
found to induce infringement of claim 19. J.A. 233.
Upon determining Section 337 was violated, the
Commission considered the appropriate enforcement
action. It agreed with the ALJ that the appropriate relief
included a limited exclusion order covering infringing
scanners, associated software, and products containing
the same that were manufactured overseas by or import-
ed by or on behalf of Suprema or Mentalix, or any entity
affiliated with either company. J.A. 235. Thereupon, the
Commission issued the limited exclusion order and termi-
nated the investigation.
Suprema and Mentalix appealed several of the Com-
mission’s findings to this court, including the findings of
direct and indirect infringement of claim 19 of the ’344
patent. They further requested that the Commission’s
limited exclusion order be vacated.
A divided panel of this court vacated the Commis-
sion’s findings that Mentalix directly infringed the ’344
patent and that Suprema induced infringement of the
’344 patent. Suprema, Inc. v. Int’l Trade Comm’n, 742
F.3d 1350 (Fed. Cir. 2013). The majority reasoned that
Section 337’s language, “articles that infringe,” is a tem-
poral requirement and that infringement must be meas-
ured at the time of importation. Id. at 1363. It concluded
that the Commission lacks authority under Section 337 to
issue an exclusion order predicated on induced infringe-
ment because such imports are not in an infringing state
SUPREMA, INC. v. ITC 11
upon importation. Id. at 1357. Thus, the majority vacat-
ed all of the Commission’s infringement findings as to the
’344 patent and the limited exclusion order based on those
findings. Id.Cross Match and the Commission petitioned for re-
hearing en banc. We granted the petition to consider
whether the Commission correctly concluded that unfair
trade acts covered by Section 337 include the importation
of articles used to infringe by the importer at the induce-
ment of the articles’ seller. The United States Depart-
ment of Justice and numerous Amici filed briefs. Oral
arguments were heard on February 5, 2015.
II. Discussion
United States trade laws have long afforded trade re-
lief to domestic industries from a range of unfair trade
practices. The commercial effect of international trade
acts and practices has been a major congressional concern
since the founding of our nation. In the second Act passed
by the first United States Congress, the Tariff Act of
1789, Congress found that the imposition of duties on
imports was “necessary for . . . the encouragement and
protection of manufactures.” Act of July 4, 1789, ch. 2,
§ 1, 1 Stat. 24, 24. Since 1789, Congress has been vigilant
both to encourage and protect U.S. domestic interests in
connection with unfair commercial activity involving
foreign imports, a vigilance that in 1922 led to the pas-
sage of Section 316, the predecessor of Section 337. See
Tariff Act of 1922, ch. 356, § 316(a), Pub. L. No. 67-318, 42
Stat. 858 (1922). Section 316 declared unlawful “unfair
methods of competition and unfair acts in the importation
of articles into the United States.” Id. at 943.
Section 337, the modern statutory section, is codified
at 19 U.S.C. § 1337. As a trade statute, the purpose of
Section 337 is to regulate international commerce. Id. at
858 (explaining purpose of Act enacting precursor to
Section 337 was “to regulate commerce with foreign
12 SUPREMA, INC. v. ITC
countries”); Pub. L. No. 71-361, 46 Stat. 590, 590 (1930)
(same). Section 337 necessarily focuses on commercial
activity related to cross-border movement of goods. See,
e.g., 19 U.S.C. §§ 1337(a)(1)(B) (imported goods infringing
patents or copyrights), (a)(1)(C) (imported goods infring-
ing a trademark), (a)(1)(D) (imported goods infringing a
mask work), (a)(1)(E) (imported goods infringing design
rights). While Congress has addressed domestic commer-
cial practices under various statutory regimes, such as
antitrust (15 U.S.C. §§ 1–38), patent (35 U.S.C. §§ 1–390),
and copyright (17 U.S.C. §§ 1–1332), it has established a
distinct legal regime in Section 337 aimed at curbing
unfair trade practices that involve the entry of goods into
the U.S. market via importation. In sum, Section 337 is
an enforcement statute enacted by Congress to stop at the
border the entry of goods, i.e., articles, that are involved
in unfair trade practices.
Section 337 declares certain activities related to im-
portation to be unlawful trade acts and directs the Com-
mission generally to grant prospective relief if it has
found an unlawful trade act to have occurred. Subsection
(a) identifies several types of acts as unlawful, one of
which relates to infringement of a U.S. patent. Specifical-
ly, the statute provides:
(a)(1) . . . [T]he following are unlawful, and when
found by the Commission to exist shall be dealt
with . . . as provided in this section:
....
(B) The importation into the United
States, the sale for importation, or the sale
within the United States after importation
by the owner, importer, or consignee, of
articles that—
(i) infringe a valid and enforceable
United States patent or a valid
SUPREMA, INC. v. ITC 13
and enforceable United States
copyright registered under title 17
....
§ 1337(a)(1)(B)(i) (emphases added). Section 337 directs
the Commission to “investigate any alleged violation of
this section on complaint,” including allegations of import-
ing articles that infringe. Id. § 1337(b)(1). After conclud-
ing the investigation, the Commission is required to
“determine . . . whether or not there is a violation of this
section.” Id. § 1337(c). If it finds a violation under sub-
section (a), subsection (d) obligates the Commission to
fashion prospective relief, typically involving the Commis-
sion directing that certain articles be excluded from entry
into the U.S, “unless, after considering the effect of such
exclusion upon the public health and welfare, competitive
conditions in the United States economy, the production
of like or directly competitive articles in the United
States, and United States consumers, it finds that such
articles should not be excluded from entry.” Id.
§ 1337(d)(1). Under the statutory provisions at issue,
proof of quantifiable harm is not an element of liability,
and monetary damages are not available as relief.
We are asked to decide whether goods qualify as “arti-
cles that infringe” when the Commission has found that
such goods were used, after importation, to directly in-
fringe by the importer at the inducement of the goods’
seller. In other words, does the importation of such goods
qualify as an unfair trade act under Section 337? If the
answer is yes, the Commission has authority under
§ 1337(d)(1) to issue an exclusion order to prevent this act
from occurring in the future.
We begin with our standard of review, and what def-
erence, if any, is owed to the Commission’s interpretation
of Section 337. There is no dispute that Congress has
delegated authority to the Commission to resolve ambigu-
ity in Section 337 if the Commission does so through
14 SUPREMA, INC. v. ITC
formal adjudicative procedures. See United States v.
Mead Corp., 533 U.S. 218, 229 (2001); Kinik Co. v. Int’l
Trade Comm’n, 362 F.3d 1359, 1363 (Fed. Cir. 2004) (“To
the extent that there is any uncertainty or ambiguity in
the interpretation of . . . § 1337(a)(1)(B)(ii), deference
must be given to the view of the agency that is charged
with its administration.”); Enercon GmbH v. Int’l Trade
Comm’n, 151 F.3d 1376, 1381–83 (Fed. Cir. 1998). The
Commission’s investigations under Section 337 require
“adequate notice, cross-examination, presentation of
evidence, objection, motion, argument, and all other
rights essential to a fair hearing,” 19 C.F.R. § 210.36(d),
thus satisfying Mead’s formality requirement. According-
ly, we review the Commission’s interpretation pursuant to
Chevron, U.S.A., Inc. v. Natural Resources Defense Coun-
cil, Inc., 467 U.S. 837 (1984).
The Chevron framework is well-established. City of
Arlington, Tex. v. FCC, 133 S. Ct. 1863, 1868 (2013)
(explaining Chevron’s “now-canonical formulation”).
Chevron requires a court reviewing an agency’s construc-
tion of a statute which it administers to answer two
questions. Chevron, 467 U.S. at 842. The first is “wheth-
er Congress has directly spoken to the precise question at
issue.” Id. If the answer is yes, then the inquiry ends,
and we must give effect to Congress’ unambiguous intent.
Id. at 842–43. If the answer is no, the second question is
“whether the agency’s answer [to the precise question at
issue] is based on a permissible construction of the stat-
ute.” Id. at 843. The agency’s “interpretation governs in
the absence of unambiguous statutory language to the
contrary or unreasonable resolution of language that is
ambiguous.” United States v. Eurodif S.A., 555 U.S. 305,
316 (2009) (citing Mead, 533 U.S. at 229–30).
A. Chevron Step One
Chevron’s framework begins with the language of the
statute. DIRECTV Grp., Inc. v. United States, 670 F.3d
SUPREMA, INC. v. ITC 15
1370, 1381 (Fed. Cir. 2012). As explained below, the
shorthand phrase “articles that infringe” does not unam-
biguously exclude inducement of post-importation in-
fringement.
By using the word “infringe,” Section 337 refers to 35
U.S.C. § 271, the statutory provision defining patent
infringement. The word “infringe” does not narrow Sec-
tion 337’s scope to any particular subsections of § 271. As
reflected in § 271 and the case law from before and after
1952, “infringement” is a term that encompasses both
direct and indirect infringement, including infringement
by importation that induces direct infringement of a
method claim. See 35 U.S.C. § 281 (remedy for infringe-
ment); Crystal Semiconductor Corp. v. TriTech Microelec-
tronics Int’l, Inc., 246 F.3d 1336 (Fed. Cir. 2001).
Section 337 refers not just to infringement, but to “ar-
ticles that infringe.” That phrase does not narrow the
provision to exclude inducement of post-importation
infringement. Rather, the phrase introduces textual
uncertainty. Simply put, the phrase “articles that in-
fringe” does not map onto the Patent Act’s definition of
infringement. In its amicus brief to us, the United States
describes the disparity as one arising from the in rem
language of Section 337 and the in personam language of
§ 271. See U.S. Amicus Br. 10–14.
The relevant portions of § 271 define persons’ actions
as infringement. See, e.g., 35 U.S.C. § 271(a) (“[W]hoever
without authority makes, uses, offers to sell, or sells any
patented invention . . . infringes the patent.”); § 271(b)
(“Whoever actively induces infringement of a patent shall
be liable as an infringer.”); § 271(c) (“Whoever offers to
sell or sells . . . a component of a patented ma-
chine . . . shall be liable as an infringer.”). An “article”
cannot infringe under any subsection of § 271. The dis-
parity between the language of Section 337 and the
Patent Act’s definitions of infringement presents uncer-
16 SUPREMA, INC. v. ITC
tainty requiring resolution by the agency charged with
Section 337’s enforcement. Congress has not provided an
unambiguous resolution, much less one that excludes the
inducement at issue here.
Suprema argues that, because Section 337 refers to
articles, the only bases for infringement under Section
337 come from 35 U.S.C. §§ 271(a) and (c), which refer to
“any patented invention” and “a component” of a patented
machine, respectively. Appellant’s Br. at 30–31. Su-
prema’s argument fails to recognize that inducement, like
contributory infringement, is commonly based on the
provision of articles. See Commil USA, LLC v. Cisco Sys.,
Inc., 135 S. Ct. 1920 (2015); Global Tech Appliances, Inc.
v. SEB S.A., 131 S. Ct. 2060 (2011). Still, we need not
decide whether Suprema’s interpretation might be a
reasonable resolution of the textual dilemma presented by
mapping Section 337 onto § 271. We cannot find that
Congress prescribed Suprema’s view, and hence we can-
not adopt such an interpretation at Chevron Step One.
Under §§ 271(a) and (c), it is not articles that infringe, but
actions that infringe.
Moreover, Suprema has not shown that the phrase
“articles that infringe” has a clearly established usage
limited to product claims or to direct or contributory
infringement, much less a usage that excludes induced
infringement of a method claim. To the contrary, various
forms of shorthand references to devices that infringe
have often been used without such narrowed meaning. 4
4 See, e.g., Brain Life, LLC v. Elekta Inc., 746 F.3d
1045, 1049, 1050–51, 1057, 1058, 1059 (Fed. Cir. 2014);
Power Integrations, Inc. v. Fairchild Semiconductor Int’l,
Inc., 711 F.3d 1348, 1374 (Fed. Cir. 2013); LaserDynam-
ics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 65, 71,
78–79, 81 (Fed. Cir. 2012); Fujitsu Ltd. v. Netgear Inc.,
620 F.3d 1321, 1327–30 (Fed. Cir. 2010); Lucent Technol-
SUPREMA, INC. v. ITC 17
We therefore cannot conclude that Congress, in using the
Section 337 phrase, did so with an unambiguous meaning
for how it applies to § 271.
Citing the present-tense use of the verb “infringe” in
the phrase “articles that infringe,” the panel suggested
that Section 337 must exclude inducement of post-
importation infringement because the acts that complete
infringement have not all taken place at the time of
importation. Suprema, 742 F.3d at 1358. It is true that
the direct infringement required for inducement, see
Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct.
2111, 2117 & n.3 (2014), will typically not have taken
place at the time of the importation that induces it. Yet
we cannot conclude that Congress unambiguously exclud-
ed such induced infringement on the basis of the panel’s
reasoning.
For contributory infringement, as for inducement, di-
rect infringement is necessary and will typically take
place later than the accused indirect infringer’s act. See
Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S.
336, 341 (1961). The panel recognized that Section 337
could fairly reach contributory infringement. See, e.g.,
Suprema, 742 F.3d at 1361, n.4. As that recognition
confirms, Section 337’s present-tense language is readily
ogies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1309, 1320–23,
1336, 1338 (Fed. Cir. 2009); Ricoh Co. v. Quanta Comput-
er Inc., 550 F.3d 1325, 1337–42 (Fed. Cir. 2008); DSU
Med. Corp. v. JMS Co., 471 F.3d 1293, 1308–10 (Fed. Cir.
2006); Warner-Lambert Co. v. Apotex Corp., 316 F.3d
1348, 1365–66 (Fed. Cir. 2003); RF Delaware, Inc. v. Pac.
Keystone Technologies, Inc., 326 F.3d 1255, 1268 (Fed.
Cir. 2003); Hilgraeve Corp. v. Symantec Corp., 265 F.3d
1336, 1342 n.2, 1343–44 (Fed. Cir. 2001); Water Techs.
Corp. v. Calco, Ltd., 850 F.2d 660, 666–68 (Fed. Cir.
1988).
18 SUPREMA, INC. v. ITC
susceptible to being read as satisfied by the indirect
infringer’s own acts, including importation that is part of
inducement or contribution. See National Presto Indus.,
Inc. v. West Bend Co., 76 F.3d 1185, 1194–96 (Fed. Cir.
1996) (inducing act must occur after patent issues to
support inducement liability; not enough that induced act
occurs after issuance); Standard Oil Co. v. Nippon Sho-
kubai Kagaku Kogyo Co., Ltd., 754 F.2d 345, 348 (Fed.
Cir. 1985) (“[L]iability [arises] as of the time the [induc-
ing] acts were committed, not at some future date deter-
mined by the acts of others.”) (emphasis omitted).
Reading the statute unambiguously to require that in-
fringement occur at the time of importation would have
produced absurd results under the pre-1994 version of
§ 271(a). Such a reading would mean that Congress,
when it enacted the language at issue in 1988, excluded
even the ordinary case of direct infringement. At that
time (before 1994), § 271(a) did not define importing a
patented invention (or the offer to sell a patented inven-
tion) an infringing act. Section 271(a) only covered mak-
ing, using, and selling, and those actions had to occur in
the United States. 35 U.S.C. § 271(a) (1988). At least for
ordinary importations involving goods that enter the
United States for a later use or sale, none of the activities
encompassed by the former § 271(a) would have occurred
in the United States at the time of importation. If Con-
gress meant to forbid the Commission from looking past
the time of importation in defining Section 337’s reach,
Section 337 would not have reached even garden-variety
direct infringement. Even if Section 337(a)(1)(B)’s clause
covering post-importation sales allowed assessment of
infringement after importation, Section 337 would not
have covered the ordinary case of post-importation use
without post-importation sales. We cannot attribute that
result to Congress.
The panel also reasoned that Section 337’s remedial
provision allowing for an exclusion order demonstrates
SUPREMA, INC. v. ITC 19
that Section 337’s “focus is on the infringing nature of the
articles at the time of importation.” Suprema, 742 F.3d at
1358–59 (emphasis added). Section 337 refers to the
Commission’s authority to issue an exclusion order
against “the articles concerned.” Id. at 1359 (quoting
Section 337(d)(1)). The panel asserted that the “articles
concerned” “would be, of course, the aforementioned
‘articles that . . . infringe a valid and enforceable United
States patent.” Id. (quoting Section 337(a)(1)(B)(i)). The
panel thus interpreted Section 337 subsections (d)(1) and
(a)(1)(B)(i) as referring to the same “articles.”
The panel’s reasoning evidences a misunderstanding
of enforcement statutes like Section 337. The “articles” of
subsections (a) and (d)(1) are not the same. Subsection (a)
defines unfair trade acts. When the Commission deter-
mines that one of these unfair trade acts has occurred, it
provides injunctive relief to prevent future unfair trade
acts according to subsection (d)(1). An exclusion order
issued under subsection (d)(1) does not affect the articles
that gave rise to the unfair trade act, e.g., the “articles
that infringe.” Those articles have already been imported,
and thus cannot be excluded from entry into the U.S.
Rather, like all forms of injunctive relief, an exclusion
order prevents future illegal acts from occurring by, for
example, preventing similar articles from entering the
U.S.
Accordingly, we hold that Congress has not directly
answered whether goods qualify as “articles that infringe”
when the Commission has found that an importer used
such goods, after importation, to directly infringe at the
inducement of the goods’ seller.
B. Chevron Step Two
Because Section 337 does not answer the precise
question before us, we consider whether the Commission’s
interpretation of Section 337 is reasonable. The Commis-
sion’s interpretation “prevails if it is a reasonable con-
20 SUPREMA, INC. v. ITC
struction of the statute, whether or not it is the only
possible interpretation or even the one a court might
think best.” Holder v. Martinez Gutierrez, 132 S. Ct.
2011, 2017 (2012). For the reasons explained below, we
find the Commission’s interpretation consistent with the
statutory text, policy, and legislative history of Section
337. We thus find the Commission’s interpretation rea-
sonable.
1. Statutory Text
The Commission’s interpretation is consistent with
the statutory text, for reasons we have already suggested.
Induced infringement is one kind of infringement, and
when it is accomplished by supplying an article, the
article supplied can be an “article that infringes” if the
other requirements of inducement are met. Liability for
inducement must be predicated on a finding of direct
infringement. Limelight, 134 S. Ct. at 2117. Yet direct
infringement commonly occurs after inducement. Liabil-
ity for inducement nevertheless attaches as of the time of
the inducing activity, provided that direct infringement
eventually occurs. Standard Oil, 754 F.2d at 348. The
Commission’s interpretation recognizes that the acts
necessary for induced infringement, including acts of
direct infringement, may not occur simultaneously at the
time of importation. In many cases, such acts cannot
occur at the time of importation. In that context, the
Commission’s interpretation that Section 337 grants it
authority to prevent importation of articles that have
been part of inducement as an unfair trade act is con-
sistent with the statutory phrase “articles that infringe.”
The Commission’s interpretation is also consistent
with the text of Section 337 as a whole. See Holder, 132
S. Ct. at 2017 (finding an agency’s interpretation con-
sistent with statute’s text, and thus reasonable). Section
337 contemplates that infringement may occur after
importation. The statute defines as unlawful “the sale
SUPREMA, INC. v. ITC 21
within the United States after importation . . . of articles
that—(i) infringe . . . .” § 337(a)(1)(B)(i). The statute thus
distinguishes the unfair trade act of importation from
infringement by defining as unfair the importation of an
article that will infringe, i.e., be sold, “after importation.”
Id. Section 337(a)(1)(B)’s “sale . . . after importation”
language confirms that the Commission is permitted to
focus on post-importation activity to identify the comple-
tion of infringement.
2. Legislative History and Statutory Policy
Nothing in nearly a century of U.S. trade law enact-
ments is inconsistent with the Commission’s interpreta-
tion. The legislative history consistently evidences
Congressional intent to vest the Commission with broad
enforcement authority to remedy unfair trade acts. The
United States Tariff Commission (“Tariff Commission”),
the predecessor to the Commission, was established in
1916. Pub. L. No. 64-271, 39 Stat. 795 (1916). From its
creation, a fundamental purpose of the Tariff Commission
was to prevent a diverse array of unfair methods of com-
petition in the importation of goods. 5 Recognizing the
challenges posed by the wide array of unfair methods of
competition, Congress emphasized the broad scope of the
enforcement powers granted to the Tariff Commission
when it passed the 1922 Tariff Act. With respect to
Section 316 of the 1922 Tariff Act, the precursor to Sec-
tion 337, Congress explained that the “provision relating
to unfair methods of competition in the importation of
goods,” was “broad enough to prevent every type and form
5 Unfair methods of competition have included
dumping, subsidies, safeguards, anticompetitive practices,
and violations of intellectual property rights, all involving
the cross-border movement of goods, i.e., articles. See,
e.g., 42 Stat. 935-36, 943 (1922).
22 SUPREMA, INC. v. ITC
of unfair practice . . . .” S. Rep. No. 67-595, at 3 (1922)
(emphasis added).
In the Tariff Act of 1930, Congress superseded Section
316 with Section 337, but did not alter the Tariff Commis-
sion’s broad authority to address every type and form of
unfair trade practice. See Pub. L. No. 71-361, 46 Stat. 590(1930). Section 337 “provides broadly for action by the
Tariff Commission in cases involving ‘unfair methods of
competition and unfair acts in the importation of articles’
but does not define those terms nor set up a definite
standard.” In re Von Clemm, 229 F.2d 441, 443 (C.C.P.A.
1955). When Congress used the words “unfair methods of
competition and unfair acts in the importation of articles,”
that language is “broad and inclusive and should not be
limited to, or by, technical definitions of those types of
acts.” Id. at 444 (emphasis added).
For nearly 35 years, the Commission has embraced its
Congressional grant as bestowing authority to investigate
and take action under Section 337 based on induced
infringement. At least as early as 1980, the Commission
was making determinations that inducement to infringe a
valid U.S. patent under 35 U.S.C. § 271(b) constituted an
unfair trade act under Section 337 that could be remedied
by an exclusion order. E.g., Certain Surveying Devices,
Inv. No. 337-TA-68, USITC Pub. 1085 (July 1980) (Com-
mission Determination). The Commission has persisted
in its interpretation of Section 337 to the present day. 6
6 See, e.g., Certain Inkjet Ink Cartridges with Print-
heads and Components Thereof, Inv. No. 337-TA-723,
USITC Pub. 4373 (Feb. 2013), 2011 WL 3489151, at *49
(June 10, 2011) (Initial Determination); Certain Semicon-
ductor Chips Having Synchronous Dynamic Random
Access Memory Controllers and Prods. Containing Same,
Inv. No. 337-TA-661, USITC Pub. 4266 (Oct. 2011), Initial
Determination at 42, 2011 WL 6017982, at *85 (Jan. 22,
SUPREMA, INC. v. ITC 23
The Commission’s consistency supports the reasonable-
ness of its interpretation. See, e.g., Astrue v. Capato ex
rel. B.N.C., 132 S. Ct. 2021, 2033 (2012) (noting that
agency’s reasonable interpretation was “adhered to with-
out deviation for many decades”).
Congress has not upset the Commission’s consistent
interpretation of Section 337. Indeed, Congress intro-
duced the current statutory language in 1988, after the
Commission had adopted this interpretation. See note 6,
supra. Congress acted against a backdrop of consistent
agency and judicial interpretation emphasizing the
breadth of the Commission’s authority. See, e.g., Von
Clemm, 229 F.2d at 443–44 (the Commission’s power to
remedy acts of unfair competition is “broad and inclu-
sive”); In re Orion Co., 71 F.2d 458, 467 (C.C.P.A. 1934)
(Section 337’s prohibition on “unfair methods of competi-
2010); Certain Automated Mechanical Transmission Sys.
for Medium–Duty and Heavy-Duty Trucks and Compo-
nents Thereof, Inv. No. 337-TA-503, USITC Pub. 3934
(Aug. 2007), Initial Determination at 154, 2007 WL
4473082, at *101 (Jan. 7, 2005); Certain Hardware Logic
Emulation Systems and Components Thereof, Inv. No.
337-TA-383, USITC Pub. 3154 (Jan. 1999), Comm’n
Notice at 2 (Mar. 6, 1998), Initial Determination at 179,
1997 WL 665006, at *101 (July 31, 1997); Certain Molded-
In Sandwich Panel Inserts and Methods for Their Instal-
lation, Inv. No. 337-TA-99, USITC Pub. 1246 (May 1982),
Comm’n Op. at 8 (Apr. 9, 1982), aff’d sub nom., Young
Eng’rs, Inc. v. Int’l Trade Comm’n, 721 F.2d 1305 (Fed.
Cir. 1983). We note that we provide, here, only a small
portion of the Commission’s induced infringement deter-
minations to show that they were made throughout the
past 35 years. A more comprehensive list of the Commis-
sion’s induced infringement determinations under Section
337 can be found at Suprema, 742 F.3d at 1372 n.2.
24 SUPREMA, INC. v. ITC
tion in the importation of goods is broad enough to pre-
vent every type and form of unfair practice”) (quoting S.
Rep. No. 67-595, at 3 (1922)). There is no indication that
Congress, in 1988, meant to contract the Commission’s
authority regarding patent infringement. To the contra-
ry, Congress said it was expanding Commission authority.
Congress amended Section 337 in 1988, removing the
requirement that a complainant must show injury to
domestic industry before a violation is found. Omnibus
Trade and Competitiveness Act of 1988, Pub. L. No. 100-
418, 102 Stat. 1107 (1988) (codified at Section 337(a)(2)-
(3)). As a part of this effort, the 1988 Act inserted the
phrase “articles that infringe.” Id. Congress declared its
purpose to enhance Commission authority. 7 The “funda-
mental purpose” of the 1988 amendment was to
“strengthen the effectiveness of section 337” against the
“importation of articles which infringe U.S. intellectual
property rights.” H.R. Rep. No. 100-40, pt. 1, at 155
(1987); see also H.R. Rep. No. 100-576, at 112 (1988)
(Congressional finding that the amendments to Section
337 “make it a more effective remedy for the protection of
United States intellectual property rights”). The Com-
7 “(a) FINDINGS. — The Congress finds that — (1)
United States persons that rely on protection of intellec-
tual property rights are among the most advanced and
competitive in the world; and (2) the existing protection
under section 337 of the Tariff Act of 1930 against unfair
trade practices is cumbersome and costly and has not
provided United States owners of intellectual property
rights with adequate protection against foreign companies
violating such rights.
(b) PURPOSE. — The purpose of this part is to amend
section 337 of the Tariff Act of 1930 to make it a more
effective remedy for the protection of United States intel-
lectual property rights.” § 1341, 102 Stat. 1211-1212.
SUPREMA, INC. v. ITC 25
mission’s interpretation is consistent with Congress’
longstanding, broad policy, and with its broadening
purpose in 1988.
This court has consistently affirmed the Commission’s
determination that a violation of Section 337 may arise
from an act of induced infringement. See, e.g., Young
Eng’rs Inc. v. Int’l Trade Comm’n, 721 F.2d 1305 (Fed.
Cir. 1983) (affirming Section 337 violation based on
contributory and induced infringement of process pa-
tents); Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330(Fed. Cir. 2010) (affirming Section 337 violation based on
induced infringement of method claim); Emcore Corp. v.
Int’l Trade Comm’n, 449 F. App’x 918 (Fed. Cir. 2011)
(affirming without opinion Section 337 violation based on
induced infringement of apparatus claim). Prior to this
case, none of our reviews of the Commission’s determina-
tions have questioned the Commission’s authority to
investigate and find a violation of Section 337 predicated
on an act of induced infringement.
The technical interpretation adopted by the panel
weakens the Commission’s overall ability to prevent
unfair trade acts involving infringement of a U.S. patent.
The panel’s interpretation of Section 337 would eliminate
relief for a distinct unfair trade act and induced infringe-
ment. There is no basis for curtailing the Commission’s
gap-filling authority in that way. Indeed, the practical
consequence would be an open invitation to foreign enti-
ties (which might for various reasons not be subject to a
district court injunction) to circumvent Section 337 by
importing articles in a state requiring post-importation
combination or modification before direct infringement
could be shown.
The Commission reasonably determined that its in-
terpretation would further the purpose of the statute. See
Mayo Found. for Med. Educ. & Research v. United States,
562 U.S. 44, 59 (2011) (purpose of a statute is relevant to
26 SUPREMA, INC. v. ITC
Chevron Step Two). Congress enacted a legal regime for
enforcement against unfair trade acts by directing the
Commission to base Section 337 relief on goods and the
issuance of exclusion orders to bar their importation.
Absent unconstitutionality, we must defer to that regime.
See, e.g., Beck v. Sec’y of Dep’t of Health & Human Servs.,
924 F.2d 1029, 1034 (Fed. Cir. 1991) (“Our duty is limited
to interpreting the statute as it was enacted . . . .”). The
Commission adopted a reasonable interpretation under it.
We note that our deference to the Commission’s statu-
tory interpretation in this case is hardly momentous. The
court has consistently deferred to the Commission, recog-
nizing the Commission’s technical expertise in deciding
issues arising under Section 337, a statute Congress has
entrusted the agency to administer. E.g., Farrel Corp. v.
Int’l Trade Comm’n, 949 F.2d 1147, 1151 (Fed. Cir. 1991),
superseded by statute, 19 U.S.C. § 1337(c); Enercon, 151
F.3d at 1381–83. We have concluded on several occasions
that the court may not substitute its own interpretation of
the statute for the agency’s reasonable interpretation.
See, e.g., Wheatland Tube Co. v. United States, 495 F.3d
1355, 1360–61 (Fed. Cir. 2007); Corning Glass Works v.
Int’l Trade Comm’n, 799 F.2d 1559, 1565 (Fed. Cir. 1986).
We have routinely deferred to the agency’s reasonable
interpretation of Section 337. See, e.g., Enercon, 151 F.3d
at 1383 (affirming the Commission’s interpretation of the
term “sale for importation” in Section 337 as reasonable);
Kinik, 362 F.3d at 1363 (deferring to Commission’s inter-
pretation of the interplay between Section 337 and 35
U.S.C. 271(g)); San Huan New Materials High Tech, Inc.
v. Int’l Trade Comm’n, 161 F.3d 1347, 1357 (Fed. Cir.
1998) (affirming Commission’s reasonable interpretation
of § 337(f)(2)).
CONCLUSION
We hold that the Commission’s interpretation that the
phrase “articles that infringe” covers goods that were used
SUPREMA, INC. v. ITC 27
by an importer to directly infringe post-importation as a
result of the seller’s inducement is reasonable. We re-
mand the appeal to the original panel for further proceed-
ings consistent with this opinion.
United States Court of Appeals
for the Federal Circuit
______________________
SUPREMA, INC.,
MENTALIX INCORPORATED,
Appellants
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
CROSS MATCH TECHNOLOGIES, INC.,
Intervenor
______________________
2012-1170
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-720.
______________________
DYK, Circuit Judge, dissenting.
While I fully join Judge O’Malley’s dissent, I write
separately to emphasize the difference between this case
and prior Section 337 cases at the International Trade
Commission (“Commission”), and how starkly the Com-
mission’s theory of induced infringement differs from its
own past practice.
Suprema, Inc. (“Suprema”) imports fingerprint scan-
ners to several customers in the United States, including
2 SUPREMA, INC. v. ITC
Mentalix, Inc. (“Mentalix”). Cross Match Technologies,
Inc. does not dispute the Commission’s finding that
Suprema’s “scanners and [software development kit, or
“SDK”] are capable of substantial non-infringing use.”
J.A. 229. At the time of importation, the scanners neither
directly infringe nor induce infringement of method claim
19 of U.S. Patent No. 7,203,344, the sole remaining claim
in this appeal. Instead, these staple articles may or may
not ultimately be used to infringe claim 19, depending
upon whether and how they are combined with domesti-
cally developed software after importation into the United
States.
The Commission’s Limited Exclusion Order here ex-
cluded all fingerprint scanners imported by Suprema or
Mentalix “that infringe . . . claim 19,” interpreted to mean
all scanners imported by Suprema or Mentalix, regardless
of how those scanners were later used. Supp. App.
400502. The Commission’s theory was that Suprema
induced Mentalix’s post-importation direct infringement
of claim 19. The Commission concedes that “Customs
might not be able to determine whether future shipments
of Supreme scanners presented for entry infringe claim 19
under § 271(b),” but relies on a finding that some of the
imported scanners will ultimately be used by Mentalix to
directly infringe to enter an order excluding all scanners
imported by Suprema or Mentalix. ITC Br. 59.
The government contends that in prior commission
decisions it has relied on an inducement theory, and that
this case plows no new ground. But as the government
conceded at oral argument, in prior cases, the Commis-
sion banned staple articles for importation on an induce-
ment theory only in circumstances where inducing
instructions were imported alongside an article that was
ultimately used to directly infringe in the United States.
The Commission’s theory was that all of the imported
articles infringed because inducing instructions were
SUPREMA, INC. v. ITC 3
included in the importation. Judge O’Malley’s dissent
correctly points out that the vast majority of these prior
Commission cases are distinguishable. But even taking
the government’s description of those prior cases at face
value, there was no such finding of instructions imported
alongside the scanners here. 1 Instead, the Commission
relied solely on Suprema’s alleged intent to induce, citing
evidence that Suprema collaborated with Mentalix to
integrate Mentalix’s software with Suprema’s scanners
after the articles were imported into the United States.
It is a far different matter where, as here, any in-
ducement is separate from the importation, and the
articles as imported may or may not ultimately be used to
directly infringe a method claim when combined with
software post-importation.
The Commission’s notion that it can nevertheless ex-
clude all of the scanners imported by Suprema because
the Exclusion Order allows the importer to certify that
certain of the staple articles will not ultimately be used to
infringe reads the statute exactly backwards. The statute
covers only “articles that—infringe,” 19 U.S.C.
§ 1337(a)(1)(B), and does not allow the Commission to
1 The majority notes that the scanners ship “with
an instruction manual that explains how programs can be
written to take advantage of scanner functionality.” Maj.
Op. at 6. But that is not the same as instructions directed
to infringement of method claim 19, and neither the
administrative law judge nor the Commission found that
these manuals contained instructions that induced in-
fringement of claim 19, nor even mentioned the instruc-
tions in the inducement analysis. See J.A. 212 (“The
SDKs include manuals as well as dynamic link libraries
(‘dlls’) that include functions that operate various features
of the accused fingerprint scanners.”).
4 SUPREMA, INC. v. ITC
enter an exclusion order directed to all of the subject
articles, even those that ultimately may never be used to
infringe, on the theory that some of the articles may be
used in an infringing manner after importation.
United States Court of Appeals
for the Federal Circuit
______________________
SUPREMA, INC.,
MENTALIX INCORPORATED,
Appellants
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
CROSS MATCH TECHNOLOGIES, INC.,
Intervenor
______________________
2012-1170
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-720.
______________________
O’MALLEY, Circuit Judge, dissenting, with whom PROST,
Chief Judge, LOURIE and DYK, Circuit Judges, join.
The majority today authorizes the International
Trade Commission (“Commission”) to bar the importation
of articles of commerce that may or may not be later used
by third parties to infringe a method patent, based only
on the putative intent of the importer. And, it does so in
circumstances in which it is undisputed that the patented
method cannot be practiced unless the imported article is
used in combination with software neither embedded in
the imported article nor sold by the importer. Because 19
2 SUPREMA, INC. v. ITC
U.S.C. § 1337 unambiguously fails to provide the Com-
mission with the authority the majority endows on it, I
respectfully dissent.
The majority justifies its decision on two grounds: (1)
policy concerns regarding the desire to protect United
States patent holders from unfair competition; and (2)
deference to the Executive agency’s view of how best to
fulfill its role in regulating “international commerce”. But
we are not the appropriate audience for policy concerns
except to the extent we are charged with enforcing the
policy articulated in the statutory scheme Congress
actually adopted. When Congress provides us with clear
instructions, we are to follow those instructions regardless
of our own policy preferences. Deference under Chevron
U.S.A. Inc. v. Natural Resources Defense Council, Inc.,
467 U.S. 837 (1984), is not to be used as a substitute for
statutory interpretation. This is especially true when, as
here, the interpretation proffered by the agency “makes
scant sense.” Mellouli v. Lynch, 135 S. Ct. 1980, 1989
(2015).
Like us, the Executive may not expand the limited
powers afforded to it by Congress under the guise of
“deference”. At the Executive’s invitation, the majority
strains to find an ambiguity in the statute where there is
none, just so it may resort to the protective umbrella of
Chevron. Although the majority says it is concerned
about importers taking advantage of an apparent gap in
the statute, any gaps should be filled by Congress, not by
us or the Commission. The patent holder here is well
protected under the patent laws—having the ability to
stop the only entity practicing its patented method from
doing so in an action in district court under 35 U.S.C.
§ 271(a), and the ability to seek damages from any im-
porter acting with an intent to induce that entity to so act.
We should not rewrite the trade laws out of a desire to
enhance that remedy.
SUPREMA, INC. v. ITC 3
I. THE LANGUAGE OF THE STATUTE
Our analysis of the scope of § 1337 must begin with
the language of the statute. Hughes Aircraft Co. v. Jacob-
son, 525 U.S. 432, 438 (1999) (“As in any case of statutory
construction, our analysis begins with the language of the
statute.” (internal quotation marks omitted)) The Com-
mission is itself a creature of statute, and its authority to
issue an exclusion order must emanate from a statutory
grant of power. See Kyocera Wireless Corp. v. Int’l Trade
Comm’n, 545 F.3d 1340, 1355 (Fed. Cir. 2008). Under the
familiar framework of Chevron, as the majority correctly
notes, we only defer to the agency’s construction of the
statute if the statute in question is ambiguous. If “Con-
gress has directly spoken to the precise question at issue,”
our “inquiry is at an end”; we are to “give effect to the
unambiguously expressed intent of Congress.” Chevron,
467 U.S. at 842–43. Here, Congress—not the panel
decision in this case—explicitly chose to exclude liability
under § 1337 for induced infringement of a method claim
that is not directly infringed, if at all, until after importa-
tion. We therefore do not afford the Commission’s con-
struction any deference.
Section 1337(a), in relevant part, states that:
(1) Subject to paragraph (2), the following are un-
lawful, and when found by the Commission to ex-
ist shall be dealt with, in addition to any other
provision of law, as provided in this section:
(A) Unfair methods of competition and un-
fair acts in the importation of articles . . .
into the United States . . .
(B) The importation into the United
States, the sale for importation, or the sale
within the United States after importation
by the owner, importer, or consignee, of
articles that—
4 SUPREMA, INC. v. ITC
(i) infringe a valid and enforceable
United States patent . . .
(ii) are made, produced, processed,
or mined under, or by means of, a
process covered by the claims of a
valid and enforceable United
States patent.
The key language is “articles that—infringe.” Because
the majority finds this language to be ambiguous, it
concludes that we must defer to the Commission’s inter-
pretation. Maj. Op. at 15–18. The majority fails, howev-
er, to identify an actual ambiguity in the statute. The
word “articles” is not ambiguous—it has a well-defined
legal definition. See Black’s Law Dictionary 160 (7th ed.
1990) (defining “article” as “[g]enerally, a particular item
or thing”); see, e.g., also Freeman v. Quicken Loans, Inc.,
132 S. Ct. 2034, 2041–42 (2012) (looking to dictionary
definitions to define the “normal usage” of a statutory
term). The word connotes a physical object. And, Con-
gress itself has defined “infringe” in 35 U.S.C. § 271. See,
e.g., 35 U.S.C. § 271(a) (“[W]hoever without authority
makes, uses, offers to sell, or sells any patented invention,
within the United States or imports into the United
States any patented invention during the term of the
patent therefor, infringes the patent.”).
We thus turn to the surrounding statutory text to de-
termine what forms of infringement outlined in § 271
support liability under § 1337(a)(1)(B)(i). 1 See, e.g., Yates
1 The majority asserts that Suprema failed to
demonstrate a “clearly established usage” of “articles that
—infringe” “limited to product claims or to direct or
contributory infringement.” Maj. Op. at 16–17. The plain
language of the statute is all that is necessary to deter-
SUPREMA, INC. v. ITC 5
v. United States, 135 S. Ct. 1074, 1081–82 (“Whether a
statutory term is unambiguous, however, does not turn
solely on dictionary definitions of its component words.
Rather, ‘[t]he plainness or ambiguity of statutory lan-
guage is determined [not only] by reference to the lan-
guage itself, [but as well by] the specific context in which
that language is used, and the broader context of the
statute as a whole.’” Id. (quoting Robinson v. Shell Oil
Co., 519 U.S. 337, 341 (1997))). Congress specifically
limits § 1337(a)(1)(B)(i) to the “importation into the
United States, the sale for importation, or the sale within
the United States after importation . . . .” It is objects
which are imported or sold, not methods. As the Commis-
sion correctly ascertained in Certain Electronic Devices
with Image Processing Systems, Components Thereof, and
Associated Software, USITC Inv. No. 337-TA-724, 2012
WL 3246515, at *12–13 (Dec. 21, 2011) (Final), moreover,
its focus under the statute must be on the point of impor-
tation, and patented methods generally are not directly
infringed until their use in the United States after impor-
tation. Both “importation into the United States” and
“sale for importation” identify the point of importation as
the cornerstone of liability. Indeed, the use of present
tense verbs in the statutory language, i.e. “importation”
mine its meaning. Indeed, the Commission itself has
limited the scope of “articles that—infringe” with regard
to direct infringement of method claims, relying on the
statute and common parlance, without reference to “clear-
ly established usage” of “articles that—infringe.” See
Certain Electronic Devices with Image Processing Systems,
Components Thereof, and Associated Software, USITC
Inv. No. 337-TA-724, 2012 WL 3246515, at *12–13 (Dec.
21, 2011). Loose phraseology in our prior opinions does
not change the words Congress explicitly chose in
§ 1337(a)(1)(B)(i).
6 SUPREMA, INC. v. ITC
and “sale”, supports a natural reading of the statute—
that infringement is tied, not just to a physical object, but
to the date of importation. Cf. Carr v. United States, 560
U.S. 438, 462 (2010) (Alito, J., dissenting) (“Congress’s
use of the present tense is unambiguous, and the statuto-
ry language accordingly should be the end of the mat-
ter.”).
The exceptions to this importation-centric rule are
specified in § 1337(a)(1)(B)(i) and § 1337(a)(1)(B)(ii).
“[T]he sale within the United States after importation” in
§ 1337(a)(1)(B)(i) raises considerations of post-importation
conduct, but Congress specifically limited this to “sale”,
which does not apply to methods. We have long held that
“use” in § 271(a) covers infringement of method claims.
NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282,
1319 (Fed. Cir. 2005) (“Congress has consistently ex-
pressed the view that it understands infringement of
method claims under section 271(a) to be limited to use.”).
But “use” appears nowhere in § 1337(a)(1)(B)(i). We
expect that Congress speaks in precise terms when defin-
ing liability, and the absence of “use” in § 1337(a)(1)(B)(i)
is highly conspicuous. Section 1337(a)(1)(B)(ii) expressly
covers importation of products made using infringing
processes prior to importation. The need to include
§ 1337(a)(1)(B)(ii) demonstrates that Congress did not
intend for § 1337(a)(1)(B)(i) to extend beyond tangible
“articles” to intangible methods, particularly where future
infringement of such methods is uncertain at the time of
importation. Congress identified the situations where our
focus should leave the point of importation, and the
majority errs in grafting “use” into the language of the
statute where it does not appear.
This makes practical sense; there is no actual harm to
a patentee until an infringing use, and that harm only
occurs after importation for method claims such as the
ones at issue in this appeal. This is especially true for
staple goods like Suprema’s scanners, where a broad
SUPREMA, INC. v. ITC 7
assertion of the Commission’s power could prevent non-
infringing goods from entering the country on the basis of
what a customer may do with that item once it enters
U.S. territory. Such considerations are the purview of the
district courts, and fall outside the limited statutory
jurisdiction of the Commission.
The Commission and the majority instead rely on an
inducement theory under § 271(b). But as the Supreme
Court recently reminded us, “our case law leaves no doubt
that inducement liability may arise ‘if, but only if, [there
is] . . . direct infringement.’” Limelight Networks, Inc. v.
Akamai Techs, Inc., 134 S. Ct. 2111, 2117 (2014) (quoting
Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S.
336 (1961)). Evidence of direct infringement—that all
claimed steps of the method have been performed—is a
predicate for a finding of inducement liability under
§ 271(b). When the Commission attempts to enforce an
exclusion order under § 1337(a)(1)(B)(i) on grounds that
an importer or customer may later complete steps of a
method claim post-importation, a necessary predicate of
§ 1337(a)(1)(B)(i) is missing—there are no “articles that—
infringe” because there is no infringement. Although the
importer’s specific intent to cause infringement may exist
at the time of importation (a point Suprema contests
here), the “articles that—infringe” do not. The Commis-
sion would have the power to institute an exclusion order
under § 271(b) if, at the time of importation, there was
evidence of both specific intent and the existence of an
article that itself directly infringed. See, e.g., Kyocera, 545
F.3d at 1346. But in that situation, the Commission could
also justify the exclusion order on the basis of § 271(a).
As we have described, however, the opposite is not true—
§ 1337(a)(1)(B)(i) does not permit the Commission to
8 SUPREMA, INC. v. ITC
institute an exclusion order solely on § 271(b) when there
is no direct infringement at the time of importation. 2
Congress did not, in either § 1337(a)(1)(B)(i) or § 271,
grant the Commission the power to issue an exclusion
order on the basis of the importer’s intent to induce
possible infringement after importation. If Congress had
sought to grant the Commission the power to issue an
exclusion order based on an importer’s intent to cause
direct infringement at a later time, it would have said so.
Congress could have used language similar to the “unfair
methods of competition and unfair acts” language of
§ 1337(a)(1)(A), broadly sweeping in such an intent to
induce infringement. Instead, in 1988, Congress defined
prohibited acts related to patent infringement in
§ 1337(a)(1)(B)(i) through a categorical approach that does
not include the possibility of post-importation infringe-
ment of method claims. Omnibus Trade & Competitive-
ness Act of 1988, Pub. L. No. 100–418, tit. I, 102 Stat.
1211–12. We are not at liberty to impute power to the
Commission that Congress did not grant.
By permitting indirect infringement liability at the
point of importation when there has been no direct in-
fringement, the majority crafts patent policy where it
believes there is a loophole ripe for abuse. See Maj. Op. at
25–26. As the Supreme Court recently reminded us,
however, “[t]he courts should not create liability for
inducement of non-infringing conduct where Congress has
2 Thus, even though this court has used the term
“infringement” to generically describe any acts under
§ 271, Maj. Op. at 15 (citing Crystal Semiconductor Corp.
v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336 (Fed.
Cir. 2001)), that usage does not somehow alter how we
should interpret “infringe” within the context of the statu-
tory scheme of § 1337.
SUPREMA, INC. v. ITC 9
elected not to extend that concept.” Limelight, 134 S. Ct.
at 2118. As discussed later, moreover, the majority
creates the possibility for an alternative type of abuse—or
at least unnecessary confusion. As the Commission
concedes, its exclusion orders are enforced at the border
by Customs agents. Thus, Customs agents are charged
with deciding which scanners may later be used by some
Suprema customers in an infringing manner and, as to
those, for which customers Suprema has acted with an
improper intent to induce that infringement. Thus,
although the majority states in its first footnote that
scanners going to customers other than Mentalix are not
relevant to the issue before us, Maj. Op. at 6 n.1, that is
not the case.
The language of the statute is unambiguous—the
Commission lacks the power under § 1337(a)(1)(B)(i) to
enter an exclusion order on the basis of infringement of a
method claim when the underlying direct infringement
occurs post-importation.
II. THE MAJORITY’S CONSTRUCTION
The majority, the appellees, and the government read
§ 1337(a)(1)(B)(i) differently. They argue that the in rem
nature of the Tariff Act and the in personam nature of the
Patent Act are inherently incompatible. Maj. Op. at 15–
18. Because, they say, only a person, and not an article,
can infringe, the majority reasons that the combination of
§ 1337(a)(1)(B)(i) and § 271 is necessarily ambiguous, and
we must therefore defer to the Commission’s reasoned
interpretation of the Tariff Act under Chevron. 3 Maj. Op.
3 The majority does not argue that the use of “arti-
cles” in § 1337(a)(1)(B)(i) is so fundamentally incorrect or
creates such unanticipated results as to trigger the ab-
surdity doctrine. See, e.g., United States v. Kirby, 74 U.S.
10 SUPREMA, INC. v. ITC
at 15. The majority also focuses on the history of the
Tariff Act and statements made in the legislative record,
arguing that a 1988 amendment to the Tariff Act ratified
a consistent pre-amendment application of § 271(b) to
method claims under § 1337(a)(1)(B)(i). Neither of these
justifications is compelling.
A. The Lack of Ambiguity
The majority’s presumed ambiguity in the combina-
tion of § 1337(a)(1)(B)(i) and § 271(b) seems to be merely a
means to the end to which it arrives—resort to Chevron
step 2. We should not read statutes to create an ambigui-
ty in light of clear congressional statements, even if that
result may lead to what some parties consider a norma-
tively more fair result. See, e.g., United States v. Thomp-
son/Center Arms Co., 504 U.S. 505, 524 (1992) (White, J.,
dissenting) (“To conclude otherwise is to resort to ‘ingenu-
ity to create ambiguity’ that simply does not exist in this
statute.” (quoting Rothschild v. United States, 179 U.S.
463, 465 (1900))); cf. Antonin Scalia & Bryan A. Garner,
Reading Law § 27 (2012) (“Hence there can be no justifi-
cation for needlessly rendering provisions in conflict if
482, 486–87 (1868). The majority instead appears to be
arguing that § 1337(a)(1)(B)(i) is ambiguous in this par-
ticular situation because the application of § 271(b) to
post-importation conduct does not provide for a clean
analogue under § 1337(a)(1)(B)(i). Maj. Op. at 15 (“Simply
put, the phrase ‘articles that infringe’ does not map onto
the Patent Act’s definition of infringement.”). This pur-
ported inconsistency does not prove that Congress intend-
ed to leave the interpretative decision to the Commission,
it merely demonstrates congressional intent not to include
such conduct under the scope of § 1337(a)(1)(B)(i). FDA v.
Brown & Williamson Tobacco Corp, 529 U.S. 120, 159
(2000).
SUPREMA, INC. v. ITC 11
they can be interpreted harmoniously.”) (hereinafter
Scalia & Garner).
Section 1337(a)(1)(B)(i) speaks in terms of “articles
that—infringe.” The majority says that this is not how we
naturally refer to infringement under § 271—that we
normally think in terms of a person or entity doing the
infringing. The majority claims that this “disparity”
requires that the Commission, and not our court, resolve
the “uncertainty.” Maj. Op. at 15–16. This argument—
newly asserted by the government in this en banc pro-
ceeding—lacks logical grounding. Although it is people
who are liable for infringement under the law, it is the
underlying article or methods that are the focus of an
infringement analysis. It is to the aspects of articles that
are manufactured, sold, or offered for sale or methods that
are “used” that an element-by-element comparison with
the patent claims is made. Multiple subsections of § 271
tie conduct directly to an article. For example, § 271(a)
defines infringement as conduct involving the “mak[ing],
us[ing], offer[ing] to sell, or sell[ing] any patented inven-
tion.” The “patented invention” of § 271(a) is the equiva-
lent to the “article” in § 1337(a)(1)(B)(i). In the one
situation where this analogy breaks down—method
claims—the Commission has not said that the statute is
inexorably ambiguous, it has instead concluded that
§ 1337(a)(1)(B)(i) does not apply to post-importation
conduct that infringes method claims. Certain Electronic
Devices, 2012 WL 3246515, at *12. And, § 271(c) ties
contributory infringement to conduct involving “a compo-
nent of a patented machine, manufacture, combination or
composition.” Similar to § 271(a), this “component” is the
equivalent to the “article” in § 1337(a)(1)(B)(i).
Section 271(b) has no similar analogue. Induced in-
fringement focuses on conduct tied to another infringer,
not to an “article,” “patented invention,” or “component.”
See 35 U.S.C. § 271(b) (“Whoever actively induces in-
fringement of a patent shall be liable as an infringer.”).
12 SUPREMA, INC. v. ITC
We have clarified that, in an induced infringement analy-
sis, we focus on the conduct of the inducer and not the
article itself. See DSU Med. Corp. v. JMS Co., 471 F.3d
1293, 1306 (Fed. Cir. 2006) (en banc) (“[I]nducement
requires evidence of culpable conduct, directed to encour-
aging another's infringement, not merely that the inducer
had knowledge of the direct infringer's activities.”); Warn-
er–Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1363 (Fed.
Cir. 2003) (“To succeed [on a theory of induced infringe-
ment], a plaintiff must prove that the defendants’ actions
induced infringing acts and that they knew or should
have known their actions would induce actual infringe-
ment.” (internal quotation marks and alterations omit-
ted)). Any consideration of the “article” in an inducement
analysis comes only as part of the requisite direct in-
fringement under § 271(a). As discussed above, the
Commission has already concluded that § 1337(a)(1)(B)(i)
does not premise liability on post-importation conduct
found to infringe a method claim.
The fact that Congress spoke in terms of “articles” in-
stead of “infringers” in § 1337(a)(1)(B)(i) is not evidence
that Congress was confused or sought to implicitly dele-
gate the decision of what an “article—that infringes” is to
the Commission. King v. Burwell, 135 S. Ct. 2480, 2488–
89 (2015) (explaining that we should not nonchalantly
defer to an agency’s interpretation for questions of “deep
economic and political significance” (internal citation
omitted)). It, instead, indicates Congress’s determination
that Customs’s decision-making at the border should be
tied to a tangible object—i.e., an “article”—not an intan-
gible consideration—i.e., the importer’s intent. Although
the Commission may be required to consider the import-
er’s intent in its analysis, it will only be as a corollary to a
finding of direct infringement at the point of importation.
Under § 1337(a)(1)(B)(i), intent cannot be divorced from
the direct infringement. See Limelight, 134 S. Ct. at 2118(explaining that separating § 271(b) from § 271(a) “would
SUPREMA, INC. v. ITC 13
require the courts to develop two parallel bodies of in-
fringement law: one for liability for direct infringement,
and one for liability for inducement.”). The majority
continues to “fundamentally misunderstand[] what it
means to infringe a method patent.” Id. at 2117.
The majority counters that an unambiguous construc-
tion of the statute “to require that infringement occur at
the time of importation” would produce “absurd results
under the pre-1994 version of § 271(a),” because, pre-
1994, § 271(a) did not define importing a patented inven-
tion as an infringing act. Maj. Op. at 18. The majority,
however, ignores that § 1337(a)(1)(B)(i) explicitly consid-
ers the “sale within the United States after importation,”
which means that Section 337 would “have reached even
garden-variety direct infringement” that occurs through
infringing sales within the United States. Maj. Op. at 18.
Congress also amended § 271 in 1988 by adding § 271(g)
to cover the importation of an article made by a patented
process as an act of infringement. Omnibus Foreign
Trade & Competitiveness Act of 1988, Pub. L. No. 100–
418, § 9003, 102 Stat. 1107. And, the domestic industry
was not without recourse, as it could still seek to invoke
§ 1337(a)(1)(A) as it had done before the 1988 Amend-
ments because, under the majority’s interpretation, those
articles would not have been “articles that—infringe”
under § 1337(a)(1)(B)(i). The 1994 Amendments to § 271,
as part of the legislation necessary to effectuate the
Uruguay Round Agreements, Uruguay Round Agree-
ments Act, P.L. No. 103–465, 108 Stat 4809 (1994),
demonstrate that Congress recognized the importance of
clearly tying infringement to the point of importation,
strengthening both the power of the district courts and
the Commission explicitly. Even if the majority’s “absurd
result” theory were true, moreover, we would still be
required to give effect to the language Congress chose in
1988 to describe the Commission’s current power to
control imports at the point of importation. See, e.g.,
14 SUPREMA, INC. v. ITC
Stone v. INS, 514 U.S. 386, 397 (1995) (“When Congress
acts to amend a statute, we presume it intends its
amendment to have real and substantial effect.”); Bausch
& Lomb, Inc. v. United States, 148 F.3d 1363, 1367 (Fed.
Cir. 1998) (“A change in the language of a statute is
generally construed to import a change in meaning . . . .”).
“It is . . . our task to determine the correct reading” of
§ 1337(a)(1)(B)(i) in light of § 271, and we cannot pass this
task to the Executive Branch where Congress is unam-
biguous. Burwell, 135 S. Ct. at 2489. Congress provided
the Commission with clear instructions: the Commission
may bar the importation of any articles that could be
found to be infringing under the Patent Act at the time of
importation. See 19 U.S.C. § 1337(a)(1)(B)(i). Claims of
induced infringement predicated on the potential comple-
tion of all steps of a method claim after importing the
article do not meet this requirement under the plain
language of the statute. There is no need to rely on the
Commission’s interpretation in light of the clear statutory
language in § 1337(a)(1)(B)(i).
B. Legislative History
Failing to find a clear statement in the language of
the statute that would support their interpretation of
§ 1337(a)(1)(B)(i), the majority relies on its own reading of
the legislative history. Maj. Op. at 21–25. Putting aside
the extent to which reliance on statements in legislative
history have limited value when engaging in statutory
interpretation, the history of the Tariff Act does not
support the majority’s expansive interpretation of
§ 1337(a)(1)(B)(i).
From its inception in 1916, the Commission adminis-
tered a predecessor to modern § 1337. Section 316 of the
1922 Tariff Act declared that “unfair methods of competi-
tion and unfair acts in the importation of articles into the
United States . . . the effect or tendency of which is to
destroy or substantially injure an industry . . .” were
SUPREMA, INC. v. ITC 15
unlawful. Ch. 386, 42 Stat. 858, 943 (1922). This pre-
sumably included patent infringement as an “unfair
method of competition” or an “unfair act.” See, e.g.,
Frischer & Co. v. Bakelite Corp., 39 F.2d 247, 257
(C.C.P.A. 1930). Congress reenacted § 316 as § 337 in the
Tariff Act of 1930. Pub. L. No. 71–361, § 337, 46 Stat.
590, 703–04 (1930). Similar to § 316, § 337 stated that
“[u]nfair methods of competition and unfair acts in the
importation of articles into the United States . . . the
effect or tendency of which is to destroy or substantially
injure an industry . . .” were unlawful. Id.; see also In re
Orion Co., 71 F.2d 458, 463 (C.C.P.A. 1934) (explaining
that § 316 of the Tariff Act of 1922 “was the prototype of
section 337 of the Tariff Act of 1930, and is, in substance,
the same”). Unsurprisingly, our predecessor court held
that the prohibition on “unfair method[s] of competition”
or “unfair act[s]” in § 337 also applied to patent infringe-
ment. Orion, 71 F.2d at 464–65.
Section 337 remained largely unchanged until 1988,
when Congress substantively amended the Tariff Act to
its present form. Omnibus Foreign Trade & Competitive-
ness Act of 1988, Pub. L. No. 100–418, 102 Stat. 1107. In
§ 1342 of the Act, Congress amended § 337 to split the
analysis of “unfair methods of competition and unfair
acts.” Under § 1337(a)(1)(A), an exclusion order based on
general unfair methods of competition and unfair acts
required a finding of substantial injury to the industry, as
in the 1922 and 1930 Acts, but under § 1337(a)(1)(B), an
exclusion order predicated on the importation of “articles
that—infringe” no longer required a showing of substan-
tial injury to the industry. Id. § 1342, 102 Stat. at 1212.
Thus, in 1988 Congress explicitly created a limited excep-
tion for imports that violated patent rights by removing
the requirement of proving a substantial injury to the
domestic industry. But it did not remove the focus on
“articles” that was present in the 1922 and 1930 Acts; it
reinforced it.
16 SUPREMA, INC. v. ITC
The majority and the government rely too heavily on
very general statements in the legislative history of the
1988 Act when they claim that Congress somehow meant
in that Act to authorize the Commission to base exclusion
orders on any possible injury to domestic industry. In
particular, the majority fails to explain why, if there had
been a consistent Commission practice regarding exclu-
sion orders predicated solely on an intent to induce in-
fringement as they claim, and the only substantive
change to § 1337(a)(1)(B) was removing the domestic
injury requirement, Maj. Op. at 24, Congress adopted the
“articles that—infringe” moniker. Reiter v. Sonotone
Corp., 442 U.S. 330, 339 (1979) (“In construing a statute
we are obliged to give effect, if possible, to every word
Congress used.”).
The majority and the government point to a portion of
the 1988 Amendments discussing congressional fact-
findings in support of their argument that Congress
intended that § 1337(a)(1)(B) maintain a broad scope.
Maj. Op. at 24–25 & n.7 (referring to this language as
“consistent with Congress’ longstanding broad policy, with
its broadening purpose”). Section 1341 of the 1988 Act,
titled “Findings”, states that “the existing protection
under section 337 of the Tariff Act of 1930 . . . is cumber-
some and costly and has not provided United States
owners of intellectual property rights with adequate
protection . . . .” 102 Stat. at 1211–12. And, the majority
references statements in the House Reports explaining
that the purpose of the 1988 amendments was to
strengthen the Tariff Act and make it more effective.
Maj. Op. at 24–25 (citing H.R. Rep. No. 100–40, at 155
(1987) and H.R. Rep. No. 100–576, at 112 (1988)). Simi-
larly, the government cites language from the Senate
Report, to support the argument that the 1988 Amend-
ments were intended to “strengthen” the enforcement of
patent rights. Br. of Int’l Trade Comm’n at 13 (citing S.
Rep. No. 100–71, at 128 (1987)). These statements,
SUPREMA, INC. v. ITC 17
however, do not imply that Congress intended for
§ 1337(a)(1)(B) to cover claims of induced infringement at
the time of importation when the requisite direct in-
fringement would not occur until after importation and
might never occur at all.
Rather, by removing the domestic injury requirement
for exclusion orders based on patent infringement, Con-
gress eliminated one of the most “cumbersome and costly”
aspects of seeking an exclusion order—proof of substan-
tial injury to the domestic industry. 102 Stat. at 1211–12.
Thus, all the statements to which the majority and gov-
ernment point regarding the need to strengthen protec-
tion of domestic patent rights point to the elimination of
the substantial injury to domestic industry requirement;
they do not justify the conclusion that Congress intended
to imbue the Commission with the authority to do what-
ever it thinks will provide the broadest protections to
patentees, regardless of its statutory charge. Statements
in the legislative history should not be used to create
ambiguity in an already clear statute, especially not
legislative history that is as vague as that relied on by the
majority here. See Milner v. Dep’t of Navy, 562 U.S. 562,
572 (2011) (“We will not take the opposite tack of allowing
ambiguous legislative history to muddy clear statutory
language.”). Congress strengthened the power of patent
holders to assert their rights, not by expanding § 271, but
by removing a procedural hurdle under § 1337(a).
C. Historical Commission Practice
The majority and the government also assert that the
statutory and legislative history supports its interpreta-
tion by demonstrating Congress’s intent to continue an
unbroken practice by the Commission of predicating
exclusion orders on acts of induced infringement. Maj.
Op. at 21–23. Specifically, it states that “Congress has
not upset the Commission’s consistent interpretation of
Section 337.” Maj. Op. at 23. There has been no interpre-
18 SUPREMA, INC. v. ITC
tation of § 337 that mirrors that adopted by the majority
today, however, and certainly nothing so clear that Con-
gress should be charged with jumping in to stop it. The
cases the majority cites to support the sweeping state-
ments it makes about the Commission’s unbroken prac-
tices do not bear the weight placed on them. Indeed, the
government conceded as much at oral argument. See Oral
Argument at 1:12–1:13, Suprema, Inc. v. International
Trade Comm’n, No. 12-1170 (en banc), available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
12-1170_252015.mp3.
The majority cites a single pre-1988 case in support of
its “consistency theory”: Young Engineers, Inc. v. U.S.
International Trade Commission, 721 F.2d 1305 (Fed. Cir.
1983). 4 Young Engineers did not involve an exclusion
4 The government relies heavily on Frischer & Co.
v. Bakelite Corp., 39 F.2d 247 (C.C.P.A. 1930), to establish
that the Commission had previously based exclusion
orders on induced infringement. See, e.g., Br. of Int’l
Trade Comm’n at 28–30, 32. Bakelite does not stand for
what the government claims, however. The exclusion
order in Bakelite was predicated on a finding that the
imported articles were “prepared and manufactured in
conformity” with the patented methods before being
imported, which is consistent with the later-enacted
prohibition on goods produced using patented methods
prior to importation in § 1337(a)(1)(B)(ii). Id. at 507; see
also In re Orion, 71 F.2d at 466–67 (finding that the
import of products produced using infringing methods
abroad could be considered an unfair method of competi-
tion or unfair act under the Tariff Act of 1930). Bakelite
simply does not stand for the proposition that an exclu-
sion order can be issued on the basis of induced infringe-
ment where the underlying direct infringement of a
SUPREMA, INC. v. ITC 19
order predicated exclusively on a finding of induced
infringement. The Commission issued an exclusion order
both because of a finding of direct infringement due to the
importation of an infringing product, and induced in-
fringement on the basis of the importer providing “train-
ing and assistance to [ ] customers in the use of the
inserts in accordance with the patented methods.” In re
Certain Molded-In Sandwich Panel Inserts and Methods
for Their Installation, USITC Inv. No. 337–TA–99, 218
U.S.P.Q. 832, at *5 (April 9, 1982), aff’d, Young Eng’rs,
721 F.2d at 1317. The Commission also concluded that
the inserts at issue were not staple goods, and justified
the exclusion order on a finding of contributory infringe-
ment. Id. We affirmed those findings without analysis of
the Commission’s power to justify exclusion orders solely
on a finding of induced infringement. Young Eng’rs, 721
F.2d at 1317. Young Engineers does not evidence that we
have “consistently affirmed the Commission’s determina-
tion that a violation of Section 337 may arise from an act
of induced infringement.” Maj. Op. at 25. At best, Young
Engineers and Bakelite, see supra note 4, stand for the
uncontroversial premise that the Commission can exclude
either: (1) articles made using a patented method over-
seas pre-importation; or (2) non-staple goods imported
into the United States on the basis of a finding of direct
and induced infringement. In either situation, a Customs
agent is not required to divine the importer’s intent to
determine if there would be a potential downstream direct
infringement. The direct infringement either already
occurred prior to importation (and is statutorily covered
under § 1337(a)(1)(B)(ii)) or the good itself could not be
used in a non-infringing manner. This is a far cry from
method claim occurs after importation, and might not
occur at all. Unsurprisingly, the majority does not even
attempt to rely on Bakelite.
20 SUPREMA, INC. v. ITC
establishing a consistent agency practice of which Con-
gress necessarily would have been aware in 1988, as the
majority proclaims. Maj. Op. at 21–23.
Standard Oil Co. v. Nippon Shokubai Kagaku Kogyo
Co., 754 F.2d 345 (Fed. Cir. 1985) does not alter this
analysis. In Standard Oil, we analyzed when the period
for laches would begin to run for claims of induced in-
fringement: at the time of the direct infringement or at
the time of the inducing act. Id. at 348–49. We concluded
that laches barred recovery because the specific intent to
induce existed prior to the six-year period for laches, even
though the subsequent direct infringement occurred
during the laches period. Id. Standard Oil does not
annunciate a rule that induced infringement occurs at the
time of the inducing act, see Maj. Op. at 20—we held
instead that, once the direct infringement occurs, the
liability for induced infringement is traced back to the
inducing act. Id.; see also Nat’l Presto Indus., Inc. v. W.
Bend. Co., 76 F.3d 1185, 1196 (merely holding that there
must be a direct infringement for liability under § 271(b)
to exist). Nothing in Standard Oil alters the fact or
requirement that there must be an underlying direct
infringement for there to be induced infringement. Lime-
light, 134 S. Ct. at 2117.
There is simply no evidence of any pre-1988 Commis-
sion practice equivalent to the Commission’s actions here.
Even if reliance on congressional silence were ever a
strong reed upon which to premise statutory interpreta-
tion, 5 the majority cannot rely on Congress’s purported
5 The Supreme Court has recognized that, absent
circumstances not present here, congressional silence is,
at best, a tenuous ground upon which to justify a particu-
lar statutory construction. See Cmty. for Creative Non-
Violence v. Reid, 490 U.S. 730, 749 (1989) (“Ordinarily,
SUPREMA, INC. v. ITC 21
desire to continue a consistent past agency practice to
bolster its statutory construction when the only consistent
agency practice was the agency’s failure to assert § 337
against importers of staple goods based solely on the
intent to induce infringement of method claims post-
importation.
D. Modern Commission Practice
Our post-1988 case law provides no better support for
the majority’s interpretation. Although it is unclear
which cases the majority believes supports its view, as it
cites only two in passing, the government points to two
cases that they argue demonstrate the Commission’s
reliance on § 271(b) in an exclusion order: Alloc, Inc. v.
International Trade Commission, 342 F.3d 1361 (Fed. Cir.
2003), and Kyocera Wireless Corp. v. International Trade
Commission, 545 F.3d 1340 (Fed. Cir. 2008). Br. of Int’l
Trade Comm’n at 33 n.8. But neither case required us to
determine if an exclusion order could be predicated solely
on an intent to induce infringement.
In Alloc, the Commission found no infringement, ei-
ther direct or indirect, in imported flooring products, and
we affirmed that determination. 342 F.3d at 1366–68,
1375. After construing the claims at issue, we agreed
with the Commission that there was no evidence of direct
infringement. Id. at 1373. As for induced infringement,
we noted that the basis for the allegation of inducement
was installation instructions included in the packaging at
the time of importation. Id. at 1373–74. In a short dis-
cussion of induced infringement, we found “no reason to
‘Congress’ silence is just that — silence.”) (quoting Alaska
Airlines, Inc. v. Brock, 480 U.S. 678, 686 (1987)); Johnson
v. Trans. Agency, 480 U.S. 616, 672 (1987) (Scalia, J.,
dissenting).
22 SUPREMA, INC. v. ITC
disturb the administrative judge’s conclusion on induce-
ment” specifically because “the administrative judge
found no evidence of direct infringement.” Id. at 1374.
Alloc does not demonstrate our approval of the Commis-
sion’s use of induced infringement to justify the exclusion
order in the circumstances here, however; our silence
there was not nearly as deafening as the government
believes. That case did not involve uncertainty as to
future infringement, and there was no challenge to the
Commission’s authority regarding inducement claims. At
best, we merely overlooked this issue in our analysis, and
“I see no reason why [we] should be consciously wrong
today because [we were] unconsciously wrong yesterday.”
Massachusetts v. United States, 333 U.S. 611, 639–40
(1948) (Jackson, J., dissenting); cf. Vizio, 605 F.3d at 1343(declining to analyze the Commission’s authority to base
an exclusion order on induced infringement because
“[a]ppellants do not challenge the Commission’s finding of
infringement”); see also Maj. Op. at 25 (“Prior to this case,
none of our reviews of the Commission’s determinations
have questioned the Commission’s authority to investi-
gate and find a violation of Section 337 predicated on an
act of induced infringement.”).
Kyocera also fails to provide any support for an inter-
pretation of § 1337(a)(1)(B)(i) that would include induced
infringement of method claims for potential post-
importation direct infringement. Similar to Alloc, there
was no challenge to the Commission’s authority regarding
induced infringement allegations; we assumed without
deciding that an exclusion order could be predicated on a
finding of induced infringement under § 1337(a)(1)(B)(i).
Kyocera, 742 F.3d at 1353–54; see also ERBE El-
ektromedizin GmbH v. Int’l Trade Comm., 566 F.3d 1028,
1037 (Fed. Cir. 2009) (affirming Commission’s determina-
tion of no direct infringement, and therefore concluding
there was “no basis for finding induced or contributory
infringement,” without analyzing the Commission’s
SUPREMA, INC. v. ITC 23
authority under § 1337(a)(1)(B)(i) to enter an exclusion
order due to induced infringement). Our only discussion
of induced infringement involved a short statement re-
manding the case to the Commission to perform the
correct analysis under § 271 after we had altered the
specific intent analysis in DSU. Kyocera, 742 F.3d at
1354. Importantly, our appellate review in Kyocera did
not involve allegations of inducement predicated on
potential post-importation direct infringement. See In the
Matter of Certain Baseband Processor Chips and Chipsets,
Transmitter & Receiver (Radio) Chips, Power Control
Chips, & Products Containing Same, USITC Inv. No. 337-
TA-543, 2006 WL 3920334, at *74 (Oct. 10, 2006) (finding
that Qualcomm “induces infringement of the apparatus
claims” of U.S. Patent No. 6,714,983, but that “Broadcom
has not proved that Qualcomm induced infringement of
the method claims of the ’983 patent”).
To the contrary, Kyocera involved the importation of
wireless devices that were programmed to operate in an
infringing manner prior to being imported. Id. at 1346(noting that the Commission only excluded devices from
manufacturers who “purchase[d] and incorporate[d]
Qualcomm chips into their mobile wireless devices outside
the United States, and then imported them into the
United States for sale”). Although the Commission relied
on an induced infringement theory for infringement of
apparatus claims, the imported articles directly infringed
at the time of importation. They were the quintessential
“articles that—infringe.”
Judge Reyna, in his dissent to the panel opinion, high-
lighted a series of Commission decisions allegedly involv-
ing exclusion orders based on an intent to induce direct
infringement after importation. Suprema, Inc. v. Int’l
Trade Comm., 742 F.3d 1350, 1372 n.2 (Fed. Cir. 2013).
The majority, as well, appears to rely on those cases
through incorporation by reference. Maj. Op. at 22 n.6
(listing examples and referencing footnote 2 of the dissent
24 SUPREMA, INC. v. ITC
to the panel decision). But like Kyocera and Alloc, none of
these cases involved a determination by this court that
the Commission had the authority to base an exclusion
order solely on a finding of an intent to induce possible
later infringement. In fact, in each of these cases, the
Commission also found direct or contributory infringe-
ment at the time of importation. 6 None demonstrate a
Commission practice consistent with the majority’s inter-
pretation. The government, the Commission, and the
majority remain unable to point to any example of the
Commission excluding staple goods on the basis of a
theory of inducement of direct infringement of method
claims post-importation prior to this appeal.
Congress did not intend for Customs agents to need to
decipher an importer’s intent to induce infringement at
some later date. It, instead, avoided such an unworkable
construct by requiring the Commission to issue exclusion
orders based on the infringing nature of the article itself.
Prior Commission practice, either pre- or post-1988, lends
6 See, e.g., Certain Semiconductor Chips Having
Synchronous Dynamic Random Access Memory Control-
lers and Prods. Containing Same, Inv. No. 337-TA-661,
USITC Pub. 4266, 2011 WL 6017982, at *80–84 (Jan. 22,
2010) (also finding direct and contributory infringement
at point of importation); Certain Automated Mechanical
Transmission Sys. for Medium–Duty and Heavy-Duty
Trucks and Components Thereof, Inv. No. 337-TA-503,
USITC Pub. 3758, 2007 WL 4473082, at *98–101 (Aug. 1,
2007) (also finding direct infringement at point of impor-
tation); Certain Hardware Logic Emulation Systems and
Components Thereof, USITC Inv. No. 337-TA-383, 1997
WL 665006, at *63–88, 92–99 (July 31, 1997) (also finding
direct and contributory infringement at point of importa-
tion).
SUPREMA, INC. v. ITC 25
no support to a contrary view. Though we need not reach
the legislative history or past Commission practice to
perform our duty of saying what the law is for unambigu-
ous statutory language, I am unconvinced that any of the
“evidence” upon which the majority relies alters a fair
reading of the language that a majority of both houses of
Congress agreed to: “articles that—infringe.” Indeed, I
believe it supports the unambiguous reading that the
panel majority found in that statutory language.
E. Equitable Considerations
The crux of the majority’s holding is equity, and the
industry’s concern that the plain language of the statute
might leave a porous border hospitable to infringers. See,
e.g. Maj. Op. at 11, 25. But that concern is best addressed
to Congress, who chose the words we are interpreting
today. The majority minimizes—or ignores—both the
power already available to the Commission and the
importance of the other source of relief for the domestic
industry: district courts.
Behind the majority’s strained statutory interpreta-
tion is a belief that any construction of § 1337(a)(1)(B)(i)
that reduces the Commission’s authority to institute
exclusion orders would negate the flexibility built into the
Tariff Act for remediating harms against the domestic
industry. See Maj. Op. at 25 (“There is no basis for cur-
tailing the Commission’s gap-filling authority in that
way.”). The majority claims that, under the broad lan-
guage of the Tariff Act, the Commission must have the
necessary authority to halt importation of all even poten-
tially infringing goods in order to effectuate Congress’s
intent in enacting § 1337(a)(1)(B)(i). Id. The amici also
highlight that, in combination with the Commission’s
decision not to entertain complaints of direct infringement
of method claims under § 271(a), Certain Electronic
Devices, 2012 WL 3246515, at *12–13, the dissent’s con-
struction would render the Commission largely toothless
26 SUPREMA, INC. v. ITC
to stop infringement of method patents. See, e.g., Amicus
Br. of Intellectual Prop. Owners Ass’n at 4.
These concerns are overstated. There is little evi-
dence that the Commission would be impotent to stop
such importers. The plain language of the statute would
not prevent the Commission from predicating an exclu-
sion order on, for example, a non-staple item. This con-
struction also would not prevent the Commission from
excluding goods that directly infringe at the point of
importation. The Commission has a rich historical prac-
tice of excluding such goods, and the “articles that—
infringe” language does not diminish the Commission’s
power. The language of the statute only denies the Com-
mission the power to issue an exclusion order solely on
the very limited factual scenario envisioned here—
allegations of induced infringement of a method claim
based on potential post-importation direct infringement.
This interpretation would not open a porous border for all
kinds of nefarious actors. At worst, it would limit the
Commission’s ability to address a situation that has never
arisen prior to the present appeal. Our recency bias
should not force us to depart from our traditional role in
statutory interpretation due to concerns that may or may
not ever present themselves again. It certainly should not
serve as a justification to abdicate to the Executive all
authority over interpretation of § 1337(a)(1)(B)(i).
This desire to give the Commission free rein to pre-
vent potential abuses highlights a more fundamental
concern with the majority’s approach. The Commission is
a creature of statute, with its powers narrowly defined by
Congress. Kyocera, 545 F.3d at 1355. The Commission is
also entirely at the whim of the President (through the
United States Trade Representative), who can choose to
set aside an exclusion order before it is enforced. 19
U.S.C. § 1337(j)(2). The Commission is therefore subject
to the control of the Executive Branch, even though the
Commission is nominally an independent agency with
SUPREMA, INC. v. ITC 27
three commissioners from each political party that are
appointed by the President upon the advice and consent of
the Senate. Congress strictly defines the powers of the
Commission, but the President has veto powers over the
Commission’s assertions of power under § 1337. It is
within this framework that we must ardently guard
Congress’s power to establish the law and our own power
to “say what the law is.” Marbury v. Madison, 5 U.S. (1
Cranch) 137, 177 (1803).
The majority, however, too easily defers to the Com-
mission’s interpretation. By concluding that the statute
is ambiguous, the majority emboldens the Executive at
the expense of both Congress and this court. As long as
we defer to the Commission’s interpretation of § 1337,
that interpretation may change when the Administration
changes. The value and importance of stare decisis in
statutory interpretation is weakened by undue resort to
Chevron. Good Samaritan Hosp. v. Shalala, 508 U.S.
402, 417 (1993) (“[T]he consistency of an agency’s position
is a factor in assessing the weight that position is due.”).
The Commission no longer becomes a “creature of stat-
ute,” but instead a creature of its own making, an ever-
expanding hydra that can sprout new areas of authority
with each new interpretation.
The majority nominally defers to the Commission be-
cause it finds that the statute is ambiguous due to the
interplay of § 1337 and § 271(b), even though the lan-
guage of § 1337 is clear on its face. Maj. Op. at 14–18.
But the majority agrees with the Commission in part
because it believes the Commission’s interpretation will
prevent the narrow set of abuses described above. Maj.
Op. at 24–26. The industry should address its concerns
with potential holes in the statute to Congress, not the
Commission or the courts. By choosing to fix the purport-
ed mistake made by Congress in using “articles that—
infringe”, the majority oversteps its role, and at the same
time weakens that of Congress.
28 SUPREMA, INC. v. ITC
Finally, we must not forget that there is a forum that
can provide an appropriate remedy for allegations of
induced infringement of method claims based on post-
importation direct infringement: district courts. District
courts can enter injunctions preventing downstream
customers from using the article in an infringing manner.
35 U.S.C. § 283 (“The several courts having jurisdiction of
cases under this title may grant injunctions in accordance
with the principles of equity to prevent the violation of
any right secured by patent . . . .”). And, unlike the
Commission, a district court could award damages for
such acts of inducement. Id. § 284.
The Commission is an alternative to district courts
that acts to supplement the powers of district courts, not
a substitute for district courts when the district court is
not as convenient a forum or the remedy sought is more
difficult to obtain. Indeed, as noted previously, the Com-
mission itself has determined that it does not have power
over allegations of direct infringement of method claims
at the point of importation. Certain Electronic Devices,
2012 WL 3246515, at *12–13. This does not mean those
allegations can never be heard, they just must be ad-
dressed before a district court. Similarly here,
§ 1337(a)(1)(B)(i) does not grant the Commission power to
address assertions of induced infringement of method
claims based on post-importation direct infringement.
Those claims are not lost forever, they just must be as-
serted in district court.
Finally, the majority’s interpretation of
§ 1337(a)(1)(B)(i) is not the catholicon it purports to be.
Although it will permit the Commission to premise exclu-
sion orders on claims of induced infringement based on
threats of post-importation direct infringement, it will
also grant the Commission the power to hold up staple
goods. By premising Customs’s power to exclude goods on
the importer’s alleged intent for how the goods may be
used, goods that can be used in both infringing and non-
SUPREMA, INC. v. ITC 29
infringing ways likely will be denied entry based on the
perception that they could be used to infringe a method
claim, especially considering the broad deference given to
Customs agent’s decision-making at the border. See, e.g.,
Amicus Br. of Dell at 22 (citing the deference generally
given to Customs agents in enforcing an exclusion order,
such as the one issued in the present case, at the border).
If those goods are not ultimately used in an infringing
manner, the Commission would be acting beyond its
powers under the Tariff Act. But that determination
cannot be made until the goods have been imported,
absent evidence that the goods are non-staple items or
that the goods are intended to be used only in an infring-
ing manner. A certification statement by the importer
will not solve this problem because any evidence that a
customer uses the goods in an infringing manner later,
even if unexpected, would trigger concerns that could
justify an exclusion order or subject the importer to the
threat of severe sanctions. The weighing of competing
concerns created by the majority’s construction demon-
strates why it is Congress, and not our court and certainly
not the Commission, which is in the best position to
determine the Commission’s powers. Congress has made
that determination, limiting those powers to “articles
that—infringe.” That decision may make the domestic
industry, and some members of this court, uncomfortable,
but that is a debate best left for the branch of our gov-
ernment that should be most amicable to the concerns of
industry: Congress.
III. CONCLUSION
The plain language of § 1337(a)(1)(B)(i) reveals that
Congress did not grant the Commission the power to issue
an exclusion order based solely on a finding of induced
infringement of a method claim and potential post-
importation direct infringement. Neither ambiguous
statements from the legislative history nor vague and
non-determinative prior Commission statements detract
30 SUPREMA, INC. v. ITC
from this analysis. The majority’s attempt to shoehorn
the language of § 1337(a)(1)(B)(i) into a strained interpre-
tation of the statute under the guise of deferring to the
Commission’s interpretation may prevent some rare
potential abuses of our patent system, but the majority
also opens Pandora’s Box. The majority refers to the
original panel interpretation as a “technical interpreta-
tion,” Maj. Op. at 25, but it should more appropriately be
coined “the interpretation mandated by Congress.” Our
system of separation of powers guarantees that Congress
enacts the laws and we interpret those laws. The majori-
ty here harms both of these aims: it diminishes Con-
gress’s power to define the scope of the Commission’s
authority, and it permits the Executive Branch to say
what the law is. For these reasons, I respectfully dissent
from the majority’s interpretation of § 1337(a)(1)(B)(i).