Cross Match strikes back
17 December 2013 20:23 GMT

Cross Match to fight on in patent case with Suprema

As with any patent ruling there are always two sides to the story. Cross Match Technologies has come out with a riposte to Suprema’s claimed victory earlier this week on a patent case that stretches back many years.

On 13 December, 2013, CAFC issued its decision regarding the appeal from the decision of the USITC (U.S. International Trade Commission) in the patent infringement action between Suprema and Cross Match Technologies.

Cross Match Technologies said that the decision confirmed the U.S. International Trade Commission’s (ITC) determination that Suprema, of South Korea, and its reseller Mentalix, of Plano, Texas infringed Cross Match’s U.S. Patent No. 5,900,993 (“the ’993 patent”). 

“We are very pleased that the Federal Circuit agreed with the ITC that Suprema and Mentalix infringe Cross Match’s patent,” said Cross Match General Counsel, Kathryn Hutton. “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 Federal Circuit confirmed the ITC’s finding that the ’993 patent is valid. Further, the ITC’s determination that Cross Match’s U.S. Patent No. 7,203,344 (“the ’344 patent”) and U.S. Patent No. 7,277,562 (“the ’562 patent”) are valid and enforceable patents remains unchanged.

The Federal Circuit determined that the ITC did not have authority to ban from importation certain Suprema products that the ITC found infringed the ’344 patent because the direct infringement occurred after the products are imported. The Federal Circuit indicated that such post-importation infringement issues should be brought before “the applicable federal court forum”. To that end, Cross Match has an infringement suit against Suprema and Mentalix pending in the U.S. District Court for the Eastern District of Texas.

Meanwhile, Cross Match noted that the Federal Circuit affirmed the ITC’s determination that integrated biometric capture devices with computer processing functionality, such as Cross Match’s SEEK, practice the ’562 patent. 

Hutton added: “This decision upholds important intellectual property rights and provides Cross Match with the basis for future enforcement activities where necessary.”