UPDATE: Cross Match Disputes Suprema’s Claims of Favorable Ruling in Patent Infringement Appeal

December 17, 2013 – by Peter B. Counter

Legal battles, especially those surrounding intellectual property and patent protection, are fought on a field of technicalities. Copyright law is often referred to as the greyest of the grey areas in the legal world, which makes proper rulings in this realm so simultaneously contentious and important. After all, the very basis of a free market rests on one’s ability to protect one’s proprietary rights.

Yesterday, Suprema claimed a favourable outcome over Cross Match Technologies in the United States Court of Appeals for the Federal Circuit (CAFC), with a ruling in an appealed case of patent infringement originally judged by the US International Trade Commission (ITC). The original ruling dates back to July of 2011 when the ITC issued an initial determination that Suprema and it’s US distributor Mentalix were infringing on patents held by Cross Match and therefore in violation of section 337 of the Tariff Action of 1930.

The celebratory press may have been premature, however, as Cross Match Technologies has distributed official statements alleging that Suprema is still infringing on patents held by the biometric identity management company.

Kathryn Hutton, Cross Match’s general counsel expands on Friday’s ruling: “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 CAFC corroborated the ITC’s initial conclusion that 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.”

The reason that the ruling on Friday was deemed favorable by Suprema seems to have had to do with the fact that even though the Korean company’s  products have been found by the ITC to infringe on Cross Match’s US Patent no. 7,203,344 (the ‘344 patent), the Trade Commission did not have the authority to ban the importation of certain products since direct infringement only technically happens after the offending products are imported.

As it stands currently, Suprema is not yet hindered by importation restrictions on its live scan offerings. This being the case, the CAFC indicated that outstanding issues of post-importation infringement should be brought before what was referred to as “the applicable courtroom forum.”

Cross Match has thusly filed an infringement suit against Suprema and Mentalix pending in the US District Court for the Eastern District of Texas. This is to say that despite the optimistic posturing of Suprema after Friday’s ruling, this war over intellectual property rights is not over.