Suprema, Inc. v. Itc , 626 F. App'x 273 ( 2015 )

NOTE: This disposition is nonprecedential.
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: September 14, 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.
2 SUPREMA, INC. v. ITC
CLARK S. CHENEY, Office of the General Counsel,
United States International Trade Commission, Washing-
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
SUPREMA, INC. v. ITC 3
Inc., Adobe Systems, Inc., Ford Motor Co., Hewlett Pack-
ard Co., LG Display Co., Ltd., LG Electronics, Inc., Net-
flix, Inc., Samsung Electronics Co., Ltd., SAP America,
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, O’MALLEY and REYNA,
Circuit Judges.
O’MALLEY, Circuit Judge.
This appeal, which arises from rulings of the Interna-
tional Trade Commission (“the Commission”), returns to
this panel after en banc consideration. We reinstate in its
entirety the panel’s rulings, dated December 13, 2013, as
to U.S. Patent Nos. 7,277,562 (“the ’562 patent”) and
5,900,993 (“the ’993 patent”). See Suprema, Inc. v. ITC,
742 F.3d 1350, 1363-71 (Fed. Cir. 2013) (“Suprema I”)
(Parts III.A, III.B, and V). The en banc Court neither
considered nor questioned either the conclusions the
panel reached as to those patents, nor the rationale for
those conclusions. As to U.S. Patent No. 7,203,344 (“the
’344 patent”), we affirm the Commission’s finding of a
4 SUPREMA, INC. v. ITC
violation of 19 U.S.C. § 1337 (“section 337”) and the
exclusion order predicated thereon.
BACKGROUND
This Court previously set forth at length the factual
background of the present controversy. See generally
Suprema I, 742 F.3d at 1352-56; Suprema, Inc. v. ITC,
2015 U.S. App. LEXIS 13929, *4-13 (Fed. Cir. Aug. 10,
2015) (en banc) (“Suprema II”). Briefly, Appellee Cross
Match Technologies, Inc. (“Cross Match”) asserted that
Appellants Suprema, Inc. and Mentalix, Inc. violated
section 337 by infringing the ’344 patent, the ’562 patent,
and the ’993 patent. The Commission found claim 19 of
the ’344 patent infringed by the combination of certain of
Suprema’s scanners (RealScan-10, RealScan-D, RealScan-
10F, and RealScan-DF (collectively, the “accused prod-
ucts”)) and Software Development Kit (“SDK”) with the
“segmentation” feature of Mentalix Inc.’s FedSubmit
software. The Commission concluded that Mentalix
directly infringed claim 19 of the ’344 patent and that
Suprema had induced that infringement. The Commis-
sion determined that the asserted claims of the ’562
patent were not infringed, however. The Commission
further found that Suprema’s RealScan-10 and RealScan-
10F scanners directly infringe claims 10, 12, and 15 of the
’993 patent, and that Appellants failed to prove the as-
serted claims of the ’993 patent invalid as obvious. Su-
prema I, 742 F.3d at 1353. Based on these findings, on
October 24, 2011, the Commission issued a limited exclu-
sion order directed to certain scanning devices imported
“by or on behalf of Suprema or Mentalix” and issued a
cease and desist order directed to Mentalix only. 1 See
Certain Biometric Scanning Devices, Components Thereof,
Associated Software, and Products Containing Same,
1 The cease and desist order is not at issue on ap-
peal; we address only the propriety of the exclusion order.
SUPREMA, INC. v. ITC 5
USITC Inv. No. 337-TA-720, Pub. No. 4366, Limited
Exclusion Order ¶ 1 (Feb. 2013).
On appeal, a panel of this Court affirmed the Com-
mission’s non-infringement ruling regarding the ’562
patent. Suprema I, 742 F.3d at 1353. The panel also
affirmed the Commission’s finding of infringement with
regard to the ’993 patent, and affirmed the Commission’s
conclusion that Appellants failed to prove the asserted
’993 patent claims were invalid as obvious. Id. The panel
vacated the Commission’s infringement finding on the
’344 patent, however, holding that “an exclusion order
based on a violation of § 1337(a)(1)(B)(i) may not be
predicated on a theory of induced infringement where no
direct infringement occurs until post-importation.” Id.
Accordingly, the original panel did not reach the merits of
the Commission’s willful blindness or direct infringement
findings on the ’344 patent. Id.
After reaching these conclusions, this Court granted
en banc rehearing and vacated the panel decision. Su-
prema, Inc. v. ITC, 2014 U.S. App. LEXIS 10124, at *1-2.
The en banc Court reversed the panel’s holding as it
relates to the ’344 patent, and upheld the Commission’s
interpretation that 19 U.S.C. § 1337 covers “importation
of goods that, after importation, are used by the importer
to directly infringe at the inducement of the goods’ seller.”
Suprema II, at *3-4 (Fed. Cir. Aug. 10, 2015). The en
banc Court then remanded “for further proceedings
consistent with this opinion.” Id. at *34-35.
The en banc Court’s holding did not relate to the pan-
el’s judgments with respect to the ’562 and ’993 patents.
Because all aspects of the panel opinion were vacated
when en banc review was granted, however, having now
received the appeal on remand, we must address the
Commission’s findings with respect to all three patents at
issue. For the reasons explained in the original panel
opinion, we reinstate the original panel’s holdings with
6 SUPREMA, INC. v. ITC
respect to the ’562 and ’993 patents. To be clear, we
affirm the Commission’s finding of no infringement of the
’562 patent. See Suprema I, 742 F.3d at 1368-71(Part V of
the panel opinion). We further affirm the Commission’s
conclusions that Suprema infringes the ’993 patent, and
that Appellants failed to prove invalidity of the ’993
patent. Id. at 1363-68 (Parts III.A and III.B of the panel
opinion).
DISCUSSION
We now reach the merits of the Commission’s direct
infringement and willful blindness findings on the ’344
patent. As noted, the Commission found that Mentalix
directly infringes claim 19 of the ’344 patent, and that
Suprema was liable for induced infringement of that
claim due to Suprema’s willful blindness toward Men-
talix’s infringement. The Commission found that Su-
prema performed market research on its competitors’
patents and products, then actively encouraged Mentalix’s
activities while willfully blinding itself to the infringing
nature of those activities. Suprema argues that the
Commission erred in two ways. First, Suprema argued
that Mentalix does not directly infringe the ’344 patent.
Second, Suprema argues that the Commission’s findings
regarding willful blindness were erroneous. As set forth
below, because there is substantial evidence in the record
to support the Commission’s findings on both points, we
affirm the Commission’s conclusions.
A. Standard of Review
“[T]he ultimate issue of the proper construction of a
claim should be treated as a question of law.” Teva
Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 838
(U.S. 2015). We review any factual determinations made
in support of a claim construction with deference. Id. at
838-39.
SUPREMA, INC. v. ITC 7
Patent infringement, whether direct or indirect, is a
question of fact. i4i Ltd. P’ship v. Microsoft Corp., 598
F.3d 831, 850 (Fed. Cir. 2010); Schindler Elevator Corp. v.
Otis Elevator Co., 593 F.3d 1275, 1281 (Fed. Cir. 2010).
On appeal, we review the Commission’s factual findings
for substantial evidence, and the Commission’s legal
determinations de novo. 19 U.S.C. § 1337(c); 5 U.S.C. §
706(2)(E); Intel Corp. v. U.S. Int’l Trade Comm’n, 946
F.2d 821,832 (Fed. Cir. 1991).
B. Background on Claim 19 of the ’344 Patent
The ’344 patent contains claims drawn to methods
used by an optical scanning system to detect fingerprint
images based on shape and area, and to determine finger-
print quality based on the detected shape and area. ’344
patent col. 19 ll. 24-38. Claim 19 (the only claim of
the ’344 patent found infringed) recites such a process:
A method for capturing and processing a finger-
print image, the method comprising:
(a) scanning one or more fingers;
(b) capturing data representing a corresponding
fingerprint area;
(c) filtering the fingerprint image;
(d) binarizing the filtered fingerprint image;
(e) detecting a fingerprint area based on a concen-
tration of black pixels in the binarized fingerprint
image;
(f) detecting a fingerprint shape based on an ar-
rangement of the concentrated black pixels in an
oval-like shape in the binarized fingerprint image;
and
(g) determining whether the detected fingerprint
area and shape are of acceptable quality.
8 SUPREMA, INC. v. ITC
Id. col. 19 ll. 24-37.
The operation of the accused products is undisputed.
The accused products allow for scanning of a fingerprint.
Then, the accused products perform a pixel-level analysis
to determine height and width of a fingerprint to draw a
bounding box. Suprema’s expert admitted that the
bounding box determines how fat, thin or short the fin-
gerprint is.
The parties also do not dispute that Mentalix provid-
ed training and demonstrations to the U.S. Census Bu-
reau regarding how to use the accused products.
C. Whether Mentalix Directly Infringes Claim 19 of the
’344 Patent
Appellants contend that the Commission’s findings
regarding direct infringement of steps (e) and (f) of claim
19 of the ’344 patent were erroneous. For the reasons
below, we agree with the Commission’s claim construction
with respect to claim 19. We further find that the Com-
mission’s rulings as to direct and induced infringement
are supported by substantial evidence.
The Commission found step (e) infringed because the
accused products detect a fingerprint area by identifying
the fingerprint image in a bounding box. The Commission
further found step (f) infringed because the accused
products identify the height and width of the finger print,
which constitutes detection of characteristics of finger-
print shape.
Notably, neither Appellant asked that the Commis-
sion construe steps (e) and (f). Despite their failure to
request claim construction, Appellants argue that the
Commission’s non-infringement finding effectively con-
strued the claims in a way that ignores any distinction
between steps (e) and (f) of claim 19 of the ’344 patent.
With respect to step (e), Appellants argue that the Com-
mission’s claim construction required no actual detection
SUPREMA, INC. v. ITC 9
of “a fingerprint area.” Appellants argue that drawing a
box around the fingerprint does not detect its area, and
that therefore the Commission’s interpretation reads out
“finger print area” from the claim.
Regarding step (f), Appellants argue that the Com-
mission conflated it with step (e) and thus required no
detection of “a fingerprint shape” under step (f). Appel-
lants argue that the Commission’s interpretation fails to
give effect to all the terms in the claim. Drawing a box
around the fingerprint area does not detect the finger-
print’s shape, Suprema argues, since any shape can be
contained inside the rectangular bounding box. Suprema
argues that, to practice step (f), the contours of the image
must be identified to be an “oval-like shape,” according to
the claim’s terms. The shape of the pixel arrangement,
Appellants argue, must play a role in detecting the shape,
since step (f) specifies that the oval-like shape exists while
step (e) does not.
Step (e) requires “detecting a fingerprint area based
on a concentration of black pixels in the binarized finger-
print image.” The Commission found that this limitation
was practiced based on the accused products’ source code,
and based on expert testimony regarding the accused
products. The evidence demonstrates that the functions
find concentrations of black pixels in a fingerprint image,
and then put a ‘bounding box’ around it. By drawing a
box around the fingerprints, the Commission concluded
that the accused functions detect a fingerprint area. The
Commission’s conclusions were consistent with the teach-
ings of the ’344 patent, which instruct that a common
method of detecting fingerprint area is by drawing a
bounding box around the fingerprints. See ’344 patent
col.15 ll.43-46 (“In step 708, a fingerprint area is detected.
Usually, the black areas of the image are concentrated
around the fingerprints. Thus, the detection step detects
the areas concentrated by black pixels.”). We thus con-
10 SUPREMA, INC. v. ITC
clude that the Commission’s findings with respect to step
(e) are supported by substantial evidence.
We also agree with the Commission’s finding that
Mentalix directly infringes step (f) of claim 19. Step (f)
requires “detecting a fingerprint shape based on an ar-
rangement of the concentrated black pixels in an oval-like
shape in the binarized fingerprint image.” The Commis-
sion construed step (f) to mean “identifying concentrations
of black pixels, which have oval-like shapes, to determine
individual fingerprint areas and shapes.” The Commis-
sion found that claim 19 covers products that detect
fingerprint shape through detecting concentrations of
black pixels within the identified bounded area. We find
that substantial evidence supports the Commission’s
finding that step (f) is infringed by the accused products’
detection of concentrations of black pixels, whether or not
the system defines the outlines of an oval. This reading
finds support in the patent specification, which states
that “[i]n step 710, fingerprint shapes are detected. The
fingerprint shapes can be oval-like shapes. The finger-
print shape detection step detects the areas concentrated
by black pixels that are comprised of oval-like shapes.”
’344 patent col.15 ll.46-49 (emphases added). Thus, by
drawing a box around a fingerprint and detecting concen-
trations of black pixels, the accused products detect the
fingerprint’s shape. The shape of the bounding box is
dictated by the shape of the fingerprint; i.e., it corre-
sponds to the height and width of the fingerprint. The
teachings of the patent do not require a calculation or
determination of whether anything is oval-like. Given
inherent limitations in the process of fingerprint capture,
fingerprints are rarely in the form of a perfect oval. While
the fingerprint shapes can be “oval-like,” the patent
specification notes that they need not be oval-shaped.
’344 patent col.15 ll.46-49. The Commission thus had
sufficient support for its conclusion that step (f) can be
SUPREMA, INC. v. ITC 11
satisfied by detecting the concentrations of black pixels
using a box bounding the black pixels.
Appellants’ argument that Cross Match limited the
scope of step (f) during prosecution to specifically require
detection of “oval-like shapes,” is also without merit. “A
disclaimer must be ‘clear and unmistakable,’ and unclear
prosecution history cannot be used to limit claims.”
Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329
(Fed. Cir. 2009) (citation omitted). Here, nothing in the
prosecution history limits the claimed invention to detec-
tion of only fingerprints that are of oval-like shape or
mandates calculation of an oval. The patentee never
mentioned “oval-like shape” in its remarks to the examin-
er. The additional calculation and precision that Appel-
lants advocate is simply not required by the patent. The
specification places no limits on steps (e) or (f) beyond the
bounding box used in the accused products. And the
specification indicates that the concentration of black
pixels can be used to determine both characteristics of
fingerprint area and fingerprint shape. Therefore, we
reject Appellants’ argument regarding prosecution dis-
claimer.
In sum, we hold that the Commissioner’s findings that
the accused products directly infringe claim 19 are sup-
ported by substantial evidence.
D. Whether Suprema was Willfully Blind to Mentalix’s
Infringement
Appellants next dispute the Commission’s finding
that Suprema is liable for induced infringement because
Suprema was willfully blind to the fact that Mentalix
would infringe of claim 19 of the ’344 patent when it
received and employed Suprema’s scanners.
A party who “actively induces infringement of a pa-
tent” under 35 U.S.C. § 271(b) is liable for patent in-
fringement if the party knows that the induced acts
12 SUPREMA, INC. v. ITC
constitute patent infringement. Global-Tech Appliances,
Inc. v. SEB S.A., 131 S. Ct. 2060, 2063 (2011). A defend-
ant can be found liable for induced infringement if it has
actual knowledge of the infringement, or if it is willfully
blind to the infringement. Id. The doctrine of willful
blindness requires that “(1) the defendant must subjec-
tively believe that there is a high probability that a fact
exists and (2) the defendant must take deliberate actions
to avoid learning of that fact.” Id. at 2070.
“The requisite intent to induce infringement may be
inferred from all of the circumstances,” and may be estab-
lished through circumstantial evidence.” Broadcom Corp.
v. Qualcomm, Inc., 543 F.3d 683, 699 (Fed. Cir. 2008).
The question of whether Suprema was willfully blind to
Mentalix’s infringement is a question of fact. National
Presto Indus. v. West Bend Co., 76 F.3d 1185, 1192 (Fed.
Cir. 1996). The Commission’s findings of fact should be
set aside only if they are not supported by substantial
evidence. Intel Corp., 946 F.2d at 832.
The Commission found Suprema liable for induced in-
fringement based on the totality of the facts the Commis-
sion believed evidenced Suprema’s willful blindness. See
Joint Appendix (“J.A.”) A221-25. From the entirety of the
record before us, we hold that the Commission’s conclu-
sion regarding induced infringement is supported by
substantial evidence.
The Commission observed that, when Suprema devel-
oped the accused products, it admitted to engaging in
extensive market research on its competitors. Suprema
also admitted to researching and identifying Cross
Match’s patents, including the ’993 and ’562 patents.
Suprema specifically studied the ’562 patent, which
incorporates by reference in four portions of its specifica-
tion the patent application (U.S. Patent Ser. No.
10/345,420) that led to the ’344 patent. ’562 patent col
1:11-14 (“The present application is related to . . . U.S.
SUPREMA, INC. v. ITC 13
patent application Ser. No. 10/345,366 . . . which [is]
incorporated by reference in [its] entiret[y].”); id. col. 5:30-
34, 39-42, 65-67. Following its extensive research, Su-
prema successfully developed its scanners into the auto-
capture, image quality checking, and automatic
segmentation processes that are covered by claim 19 of
the ’344 patent. The Commission noted that, because the
’562 and ’344 patents have overlapping inventors and
share the same assignee, Cross Match, “a word search
likely would have identified both patents.” J.A. A223.
The Commission also found that, in developing the ac-
cused products, Suprema was well-aware of competitor
products, of Cross Match’s prominence in the fingerprint
scanner market, and of Cross Match’s relevant ’562
patent. The Commission found that Suprema’s market
analysis was similar in scope to that performed by the
accused infringer in Global-Tech, who was found liable for
induced infringement based on a theory of willful blind-
ness. See Global-Tech, 131 S. Ct. at 2071-72 (noting that
the accused infringer performed “market research” and
“gather[ed] information as much as possible.”). Suprema
asserts that during its extensive market research it failed
to check to see if the related patent application referenced
in the ’562 patent proceeded to mature into an issued
patent. The Commission discounted this testimony. The
Commission found it notable that the ’344 patent issued
in April 2007, six months prior to the October 2007 issue
date of the ’562 patent. Thus, had Suprema checked for
the issuance of the ’344 patent at the time it was review-
ing the ’562 patent, Suprema would have undoubtedly
discovered that the ’344 patent had issued.
Suprema and amicus Google, Inc. (“Google”) argue
that a requirement to seek out every reference referred to
in a competitor’s patent would place too high a burden on
manufacturers to avoid a finding of willful blindness. We
do not hold that such an exhaustive patent search is
required in every instance. Nor do we find that the Com-
14 SUPREMA, INC. v. ITC
mission predicated its willful blindness finding only upon
such an obligation. Rather, given the similarities in
content, inventorship, and ownership between the ’344
and ’562 patents, and the facts that Suprema studied the
’562 patent during its extensive market analysis, was
aware of Cross Match’s activities in the scanner field, and
specifically targeted the market Cross Match serviced
when developing its own products, we find, based on the
totality of the circumstances, that the Commission had
adequate evidence upon which to conclude that Suprema’s
actions constituted willful blindness.
Notably, the Commission found that “the record is re-
plete” with evidence of Suprema’s efforts in aiding and
abetting Mentalix to adapt Mentalix’s FedSubmit soft-
ware to work with Suprema’s imported scanners and SDK
to practice claim 19 of the ’344 patent. The Commission
then concluded that the totality of Suprema’s actions
evidenced its subjective belief of the high probability that
Cross Match’s scanner technology was patented, and
further evidenced its deliberate actions to avoid learning
of that fact. The Commission also found that Suprema
deliberately avoided learning of the fact that Suprema’s
own accused products would likely infringe Cross Match’s
patents. The Commission’s findings are supported by
substantial record evidence, and the Commission correctly
concluded that those factual findings are sufficient to
support a finding of willful blindness. See Global-Tech,
131 S. Ct. at 2070-71.
The Commission also found that Suprema’s failure to
obtain an opinion of counsel constituted an additional fact
evidencing Suprema’s willful blindness. The Commission
noted that, had an opinion of counsel been sought, it
would have “undoubtedly uncovered the ’344 patent, the
fact that both the ’344 and ’562 patents are assigned to
Cross Match, and would have analyzed whether Suprema
infringed any of the Cross Match patents.” J.A. 224.
Thus, the Commission found that Suprema was willfully
SUPREMA, INC. v. ITC 15
blind to the existence of the ’344 patent and the nature of
the infringing activities it actively encouraged Mentalix to
perform. We do not find these findings to be without
adequate support, as Suprema claims.
The failure to obtain counsel opinion goes to the “state
of mind” inducement requirement, and “such evidence
remains relevant to the . . . intent analysis” for induce-
ment. 2 Broadcom, 543 F.3d at 699. Thus, it was not error
for the Commission to consider Suprema’s failure to
obtain an opinion of counsel as a factor in their analysis of
inducement. We do not hold that an opinion of counsel is
required to avoid a finding of induced infringement. The
failure to obtain an opinion of counsel is merely one fact of
many that may be considered in the assessment of willful
blindness. Broadcom, 543 F.3d at 698-701. Like the
Commission, we do not place dispositive weight on Su-
prema’s failure to obtain an opinion of counsel. While
Global-Tech changed the standard of intent for establish-
ing induced infringement, Global-Tech did not displace
this Court’s holding in Broadcom that failure to obtain an
opinion of counsel can be considered in determining
whether the intent standard for induced infringement has
been met. See Global-Tech, 131 S. Ct. at 2069-70. We
thus reject Suprema’s argument that its failure to seek
the opinion of counsel could not be considered as part of
2 The America Invents Act (AIA) provides that
“[t]he failure of an infringer to obtain the advice of coun-
sel with respect to any allegedly infringed patent, or the
failure of the infringer to present such advice to the court
or jury, may not be used to prove that the accused infring-
er willfully infringed the patent or that the infringer
intended to induce infringement of the patent.” 35 U.S.C.
§ 298. Because the AIA only applies to patents issued on
or after September 16, 2012, and the ’344 and ’562 pa-
tents issued in 2007, this provision does not control here.
16 SUPREMA, INC. v. ITC
the totality of circumstances indicating its willful blind-
ness to Mentalix’s infringement.
In its amicus brief, Google argues that the Commis-
sion’s willful blindness ruling imposes too onerous a duty
on innovators to ensure that its customers will not poten-
tially infringe a patent. Google asserts that the Commis-
sion’s ruling upsets the balance struck in Global-Tech. It
is nearly impossible, Google argues, for a technology
company to identify “all patents that are potentially
implicated” by customers’ potential infringement of pa-
tents. While we are not unmindful of these concerns, we
do not find them sufficiently implicated in this present
controversy to warrant a different outcome. We note,
moreover, our deferential standard of review, which
requires us to defer to the Commission’s factual findings if
supported by substantial evidence. Our holding is limited
to the facts in the case before us. None of the facts upon
which the Commission relied, in isolation, would support
a finding of willful blindness. Yet, while no single factor
is dispositive here, we are satisfied that there is substan-
tial evidence on this record to support the Commission’s
findings.
CONCLUSION
For the foregoing reasons, we affirm the Commission’s
findings with respect to the ’344 patent. We further
reinstate the original panel’s opinion with respect to the
’562 and ’993 patents (Parts III.A, III.B, and V of the
panel opinion). See Suprema I, 742 F.3d at 1363-71.
Accordingly, we affirm.
AFFIRMED