TAKEAWAY:  Though induced infringement remains a viable basis for enforcement at the ITC, patent prosecutors should pursue claims of varying type and scope.

Last year, Jameson Ma and I discussed the importance of patent prosecutors focusing on enforcement trends. At the time, we discussed how the ITC can be a powerful enforcement venue for patent holders seeking to stop the importation of infringing goods. We also discussed a Federal Circuit decision, Suprema Inc. v. ITC,  and the resultant value (or lack of value) of method claims at the ITC. In the underlying ITC investigation, a foreign company was accused of inducing a domestic importer to infringe a U.S. patent. The Complainant asserted that the patent was infringed after the foreign company’s software was imported into the U.S. and then used in combination with the domestic importer’s product. The Commission found that the domestic importer’s operation of software after importation directly infringed the asserted patent and that the foreign company induced the domestic importer’s direct infringement by actively encouraging incorporation of the software. In a 2013 panel decision, however, the Federal Circuit construed Section 337 such that the Commission’s authority extended to only “articles that — infringe” a U.S. patent, and that “[t]he focus is on the infringing nature of the articles at the time of importation, not on the intent of the parties with respect to the imported goods.” (Emphasis added.) That Federal Circuit panel held that if direct infringement occurred after importation, the ITC could not issue an injunction based on induced infringement. This decision (in combination with other contemporaneous decisions) appeared to limit the application of method claims at the ITC and, as a result, we suggested that patent prosecutors advise clients to pursue apparatus claims when possible.

This past August, an en banc panel of the Federal Circuit overturned the 2013 panel decision and held that the ITC hasjurisdiction over allegations of induced infringement of method claims. The Federal Circuit determined that the Commission was correct in determining that goods qualify as “articles that infringe” where they were used after importation and in combination with other goods to directly infringe. Although this decision appears to reopen the ITC as an avenue for induced infringement of method claims, it’s possible that by the time currently-prosecuted applications are enforced at the ITC, the ITC, a federal district court, the Court of Appeals for the Federal Circuit, or new legislation by Congress may clarify or change the law in a manner that affects patent enforcement and, as a result, prosecution claim strategy. Claims of varying types (including method, apparatus, and system claims) and scope (narrow and broad) may help your currently-pending patent portfolio navigate future decisions and legislation. This case highlights why patents prosecuted with only current patent enforcement law in mind may lack categories of claims (e.g., method claims) that could have been enforced. Drafting and prosecuting a variety of claims may ensure that your application and its claims remain enforceable through expected and unexpected changes to the law.