United States: Is A Respondent's Own Post-Importation Infringement A Violation Of Section 337?

Before 2011, the ITC routinely found violations of Section 337 based on the infringement of method claims through a respondent's own use of an article post-importation.  This changed when the ITC issued its Opinion in Certain Electronic Devices with Image Processing Systems, Components Thereof and Associated, Inv. No. 337-TA-724 ("Electronic Devices").  In that case the ITC held that post-importation direct infringement of a method claim, without a showing of indirect infringement, could not substantiate a violation of Section 337.  But the ITC has recently indicated that it is rethinking its Electronics Devices precedent.

In Certain Radiotherapy Systems and Treatment Planning Software, and Components Thereof, Inv. No. 337-TA-968, ALJ Shaw relied on Electronic Devices in holding that the respondent's own testing of imported devices in the United States did not violate Section 337 even if the testing directly infringed asserted method claims.

Complainant filed a petition for review of this holding, asking the Commission to revisit its Electronics Devices decision.  In response to complainant's petition, the Staff argued that the facts of the case did not necessitate overturning Electronic Devices, but also noted that "the Commission may need to revisit its decision in the 724 Opinion in an appropriate investigation" because "the 724 Opinion has led to the problematic result that persons who import articles that they themselves later use to infringe are not covered by the statute, but persons who import articles that others use to infringe are in violation of the statute."

The Commission determined to review ALJ Shaw's interpretation and application of Electronic Devices.  Unfortunately, the parties settled the case and the investigation was terminated this week before the ITC could weigh in on this issue.

Similarly, in Certain Network Devices, Related Software and Components Thereof (II), Inv. No. 337-TA-945, ALJ McNamara held that complainant's own direct infringement of asserted method claims through post-importation testing of accused products cannot form the basis of a Section 337 violation.  Based on complainant's petition, the Commission issued a notice determining to review this holding.  On May 4, the Commission determined that a violation of Section 337 had occurred, but the opinion detailing the Commission's decision is not yet publicly available.  It is not clear from the Commission's notice whether the ITC specifically addressed the Electronic Devices issue.

Takeaway

As the Staff noted in the 968 Investigation, the ITC's decision in Electronic Devices that a respondent's own post-importation direct infringement of a method claim cannot form the basis of a Section 337 violation has led to potentially problematic results.  Given the ITC's recent indications that it is willing to revisit its Electronic Devices holding, if a respondent directly infringes a method claim post importation, complainants should ensure that they preserve arguments that such conduct is a violation of Section 337.

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