By Eric Schweibenz
On October 24, 2011, the International Trade Commission (the “Commission”) issued a notice determining to modify the final initial determination (“ID”) issued by former Chief ALJ Paul J. Luckern on June 17, 2011, finding a violation of Section 337 in Certain Biometric Scanning Devices, Components Thereof, Associated Software, and Products Containing the Same (Inv. No. 337-TA-720).

By way of background, the Complainant in this investigation is Cross Match Technologies, Inc. (“Cross Match”) and the Respondents are Suprema, Inc. (“Suprema”) and Mentalix, Inc. (“Mentalix”) (collectively, the “Respondents”).  In the ID, ALJ Luckern determined that a violation of Section 337 had occurred by Suprema through its infringement of one or more of claims 10, 12, and 15 of U.S. Patent No. 5,900,993.  ALJ Luckern also found a violation of Section 337 by reason of infringement of claim 19 of U.S. Patent No. 7,203,344 (the ‘344 patent).  The ALJ found no violation of Section 337 with respect to U.S. Patent No. 7,277,562.  See our June 21, 2011 post for more details.  Cross Match, the Respondents, and the Commission Investigative Staff each filed a petition for review of the ID.  On August 18, 2011 the Commission determined to review the ID with respect to it’s finding of a violation of Section 337 based on infringement of claim 19 of the ‘344 patent and requested briefing on certain issues.  See our August 24, 2011 post for more details.

According to the October 24 notice, after examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to modify the ID in-part and issue an opinion supplementing its finding regarding the infringement of claim 19 of the ‘344 patent.  Specifically, the Commission determined that Mentalix directly infringes claim 19 and that Suprema infringes claim 19 by induced infringement, but not by contributory infringement.

In addition, the Commission determined that the appropriate remedy for the violation was a limited exclusion order prohibiting the unlicensed entry of biometric scanning devices, components thereof, associated software and products containing the same that infringe one or more of claims 10, 12, and 15 of the ‘993 patent and claim 19 of the ‘344 patent. The Commission also determined to issue a cease and desist order prohibiting Mentalix from importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for exportation), and soliciting U.S. agents or distributors for such infringing devices, components, software, and products.  Finally, the Commission determined that the public interest factors did not preclude this relief and that a 100% bond should be required during the period of Presidential review.