The Federal Circuit Court of Appeals overturned a previous ruling limiting the role of the international Trade Commission (ITC) in blocking imports of products that could potentially induce infringement of US patents.

Under section 337 of the Tariff Act of 1930, the ITC can prohibit the importation into the United States of “articles that . . . infringe a valid and enforceable United States patent.”

The ITC has interpreted this law to allow it to exclude “goods that, after importation, are used by the importer to directly infringe at the inducement of the goods’ seller.”

However, in 2013 a panel of the Federal Circuit found that the law only applied to goods that infringed at the time that they were imported, and not to situations where infringement happened sometime after importation.

The Federal Circuit has now granted a rehearing en banc of that earlier decision.


The case deals with the importation of fingerprint scanning technology manufactured by a South Korean company called Suprema. The ITC found that these scanners infringed US patents owned by a US company called Cross Match when the scanners were used with specific software.

The scanners were imported into the US by both Suprema and another US company called Mentalix. Mentalix combined the scanners with the software.

The ITC found that Suprema induced infringement because of a showing of “willful blindness” with respect to the infringement.

Willful Blindness

Willful blindness is shown by:

  • a defendant’s subjective belief in the high probability that a fact exists
  • the defendant’s taking of deliberate steps to avoid learning of that fact

The ITC concluded that:

Suprema “‘willfully blinded’ itself to the infringing nature of Mentalix’s activities,” which Suprema “had actively encouraged.”

The case is Suprema Inc. et al. v. International Trade Commission.


This is a positive development that can help US patent owners protect their US markets from unfair foreign competition.

About Us

Leech Tishman’s Intellectual Property Group is based in Pasadena, California with a team of highly-regarded legal professionals with prosecution and litigation expertise in the fields of patent, trademark, copyright, and trade secrets.

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Photo Attribution: “Fingerprint scanner in Tel Aviv” by David Shankbone. Licensed under CC BY 3.0 via Wikimedia Commons.

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