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ALJ Shaw Confirms ITC’s Post-Suprema Authority to Exclude Articles That Infringe After Importation Based on Contributory Infringement

The International Trade Commission has recently released the public version of the Administrative Law Judge’s Final Initial Determination in Certain Marine Sonar Imaging Devices, Including Downscan and Sidescan Devices, Products Containing the Same, and Components Thereof, Inv. No. 337-TA-921, Init Det. (July 2, 2015).  In the Investigation, complainants Navico, Inc. of Tulsa, Oklahoma and Navico Holding AS of Egersund, Norway, one of the largest manufacturers of marine sonar equipment, alleged that respondent Garmin (comprising Garmin International, Inc. and related entities) imported a series of downscan sonar products that infringe three of Navico’s patents.  Id. at 3-5, 9-10.  The accused products provide visual representations of underwater objects (such as fish or wreckage) and consist of head units, black boxes, and transducers, though some head units are imported without transducers.  Id. at 7.

In his Final Initial Determination, after  completing claim construction, ALJ Shaw held that the accused Garmin products did not infringe any of the three asserted patents, either directly, indirectly, literally, or under the doctrine of equivalents.  Id. at 89, 94, 114, 121, 177, 179, 223, 242. Regarding indirect infringement, Respondent Garmin argued that because many accused products were without the relevant ‘transducer’ component in the box at the time of importation, under the Suprema decision, Suprema, Inc. v. Int'l Trade Comm’n, 742 F.3d 1350, 1358 (Fed. Cir. 2013), vacated pending reh’g en banc, 2014 U.S. App. LEXIS 10124 (Fed. Cir. May 13, 2014), the Commission lacked the authority to exclude those products, as they infringed only after importation.  Id. at 110-11, 238.

The ALJ rejected Garmin’s argument in his analysis of indirect infringement, highlighting a distinction at the International Trade Commission between the two kinds of indirect infringement: induced and contributory.  Id. at 110-11, 239.  The ALJ stated that the Commission does have the authority to exclude articles that infringe after importation.  Id. at 111, 239.  ALJ Shaw noted that the Federal Circuit’s panel decision in Suprema has been vacated, and further, “although the Federal Circuit originally held in Suprema . . . that the Commission lacks authority to exclude articles premised on a claim of induced infringement, the panel did not hold that the Commission lacks authority to exclude articles premised on a claim of contributory infringement, even when the acts of underlying infringement occur post-importation.” Id. at 111 (citing Suprema,  742 F.3d at 1358 (“Our holding is far narrower than the dissent asserts; as we explain, virtually all of the mischief the dissent fears can be addressed by the ITC via resort to . . . § 271(c) [contributory infringement]. . .”)).

As shown by ALJ Shaw’s discussion of Suprema, this Final Initial Determination further confirms the International Trade Commission’s authority to exclude articles that infringe after importation based on a theory of contributory infringement.  See id. at 111, 239.


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Matthew A. Karambelas practices with Mintz's Intellectual Property Litigation group, serving clients in a diverse range of subject matter and technologies in both the International Trade Commission and US District Courts. Matthew’s experience is focused on patent litigation.