On December 13th, 2014, the Federal Circuit affirmed the US International Trade Commission’s (ITC) determination that Suprema of South Korea and its reseller Mentalix of Plano, Texas infringe Cross Match Technologies’ US Patent No 5,900,993 (“the ’993 patent”). The Federal Circuit also affirmed the ITC’s finding that the ’993 patent is valid. Further, the ITC’s determination that Cross Match’s US Patent No 7,203,344 (“the ’344 patent”) and US Patent No 7,277,562 (“the ’562 patent”) are valid and enforceable patents remains unchanged.
“We are very pleased that the Federal Circuit agreed with the ITC that Suprema and Mentalix infringe Cross Match’s patent,” said Cross Match General Counsel, Kathryn Hutton. ”While Suprema claims it no longer sells the infringing RealScan-10 product in the United States, the fact remains that any scanners which infringe the ’993 patent are still barred from importation. There has been no adjudication that Suprema has successfully designed around our patent.”
The Federal Circuit noted that the evidence lead the ITC to conclude Suprema (1) “was willfully blind to the ’344 patent, (2) studied and emulated Cross Match’s products before willfully blinding itself to the infringing nature of Mentalix’s activities, and (3) actively encouraged those activities.” Op 10. While the Federal Circuit determined that the ITC did not have authority to ban from importation certain Suprema products that the ITC found infringed the ’344 patent because the direct infringement occurs after the products are imported, it did “not address the Commission’s other findings on the ’344 patent.” Op 26. The Federal Circuit indicated that such post-importation infringement issues should be brought before “the applicable federal court forum.” To that end, Cross Match has an infringement suit against Suprema and Mentalix pending in the U.S. District Court for the Eastern District of Texas.
The Federal Circuit affirmed the ITC’s determination that integrated biometric capture devices with computer processing functionality, such as Cross Match’s SEEK, practice the ’562 patent.
Ms Hutton added, “This decision upholds important intellectual property rights and provides Cross Match with the basis for future enforcement activities where necessary.”