sub-header

The ITC Can Exclude Products That Do Not Infringe At The Time of Importation | Firm Alert

On March 2, 2020, the Federal Circuit issued Comcast v. ITC and held that the International Trade Commission (ITC) can block the importation of products that do not infringe a U.S. patent at the time of importation.

The case concerns imported television set-top boxes that are used in a system for remote access to TV programs.  The patent owner alleged that Comcast’s customers used the set-top boxes in an infringing manner after the set-top boxes had been imported into the United States.  The ITC found that Comcast’s customers directly infringed the patents and that Comcast induced that infringement.  It issued a limited exclusion order blocking importation of the infringing set-top boxes by Comcast and by companies who manufactured and imported the set-top boxes on Comcast’s behalf.  

On appeal, the companies who imported the set-top boxes argued that the ITC did not have the authority to issue an import ban because the set-top boxes were not infringing at the time of importation.  Comcast, who took title to the set-top boxes after importation, additionally argued that the exclusion order should not apply to Comcast because it did not import the set-top boxes and because Comcast’s inducement of infringing conduct occurred entirely after importation, when the set-top boxes were combined with Comcast’s servers and its customers’ mobile devices. 

The Federal Circuit affirmed the ITC, holding that the exclusion order properly applied to Comcast’s set-top boxes that infringed only after importation.  The Court also agreed that the companies who imported the set-top boxes were subject to the exclusion order.  Although the set-top boxes did not infringe when imported and could be used in non-infringing ways, the exclusion order was limited to importations on behalf of Comcast, whose intended use was to induce infringement of the asserted patents.  Finally, the Court affirmed the ITC’s determination that Comcast was sufficiently involved in the design, manufacture, and importation of the set-top boxes to be considered an importer under the ITC’s statutory framework. 

The appealing parties had additionally moved to dismiss the appeal due to expiration of the asserted patents.  The Federal Circuit declined to dismiss, as the judgment could impact other ongoing ITC investigations.

This case confirms the enforcement powers of the ITC and demonstrates the applicability of exclusion orders to products that do not infringe a U.S. patent at the time of importation, but are subsequently used in a manner that does infringe.