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Digital transmissions and the ITC

David Foster of Foster Murphy Altman & Nickel gave an overview yesterday of how the Federal Circuit's Suprema and ClearCorrect decisions last year have affected the International Trade Commission (ITC)

Both cases involve how the ITC interprets the statutory language "articles that infringe." In Suprema the issue was whether the ITC has jurisdiction over indirect infringement while in ClearCorrect the issue was whether the definition of an "article" includes digitally transmitted products.

The Federal Circuit en banc decision in Suprema reversed the finding that the infringing nature of the articles is determined at the time of importation. The court said the ITC can stop imports of articles that do not infringe until after the articles have entered the US.

Foster said this leaves some unanswered questions. "One question I find particularly interesting – that will have to be considered probably case by case – is whether there is any sort of minimum level of importance that you have to have with respect to the imported product entering the United States. How important does it need to be to the infringing device? Another issue left open by Suprema en banc relates to the software – the CAFC did not address whether, if the only importation was software, the Commission would be able to reach the importation infringement under Section 337."

In ClearCorrect, the Federal Circuit found the ITC's jurisdiction did not include the ability to bar digital imports and was limited to "material things." En banc rehearing of the case was denied in March this year, and the ITC did not seek cert. "This is a growing and important area of commerce," said Foster. "This is an area where issues of potential infringement will be increasingly litigated. He was asked by an audience member why the case was not petitioned to the Supreme Court. "The Solicitor General is rather careful with respect to what he brings up, and the issue could have been seen as important for the Commission but not in the grand scheme of things," he speculated.

In the same session, moderated by Russ Emerson of Haynes & Boone, Mansi Shah of Merchant & Gould gave an overview of the development of obviousness case law and Jerry Selinger of Patterson & Sheridan gave an update on the on-sale bar.

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