Allied Corp. v. U.S. Intern. Trade Com'n
| Decision Date | 29 June 1988 |
| Docket Number | 87-1616,Nos. 87-1455,s. 87-1455 |
| Parties | , 57 USLW 2083, 7 U.S.P.Q.2d 1303, 6 Fed. Cir. (T) 138 ALLIED CORPORATION, Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Hitachi Metals, Ltd., et al., Vacuumschmelze GmbH, Nippon Steel Corporation, et al., and Siemens Capital Corp., Intervenors/Appellees. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
David W. Plant, Fish & Neave, New York City, argued for appellant Allied. With him on the brief were David J. Lee, Eric M. Lee, Christopher B. Garvey and Robert A. Musicant. Also on the brief were Brian D. Forrow and David M. McConoughey, Allied Corp., Morristown, N.J., of counsel.
Jean H. Jackson, Office of the Gen. Counsel, U.S. Intern. Trade Com'n, Washington, D.C., argued for appellee ITC. With her on the brief were Lyn M. Schlitt, Gen. Counsel and James A. Toupin, Asst. Gen. Counsel.
Thomas J. Macpeak, Sughrue, Mion, Zinn, Macpeak & Seas, Washington, D.C., argued for intervenor Hitachi. With him on the brief were Waddell A. Biggart and Sheldon I. Landsman. Also on the brief were Alan J. Neuwirth, Michael Doherty and Richard Mescon, Webster & Sheffield, New York City, of counsel.
John D. Simpson, Hill, Van Santen, Steadman & Simpson, Chicago, Ill., argued for intervenor Vacuumschmelze. With him on the brief was Steven H. Noll. Also on the brief was Tom Schaumberg and Alice Kipel, Howrey & Simon, Washington, D.C., of counsel.
Thomas L. Creel, Kenyon & Kenyon, of New York City, argued for intervenor Nippon. With him on the brief were Edward W. Greason, Robert T. Tobin, Philip J. McCabe, John J. Kelly, Jr. and Richard M. Rosati.
Before MARKEY, Chief Judge, DAVIS * and ARCHER, Circuit Judges.
Consolidated appeals from an Advisory Opinion of the United States International Trade Commission (ITC), Investigation No. 337-TA-143 (May 28, 1987) (Appeal No.
87-1455), and from a Modified General Exclusion Order, Id. (June 17, 1987) (Appeal No. 87-1616). We dismiss the appeal from ITC's Advisory Opinion for lack of jurisdiction and affirm the Modified General Exclusion Order. 1
These appeals arise out of further developments in the 1983-84 ITC Investigation No. 337-TA-143, In the Matter of Certain Amorphous Metals and Amorphous Metal Articles. See USITC Publication 1664 (Nov. 1984); 49 Fed.Reg. 42803 (October 24, 1984).
On March 11, 1983, ITC commenced Section 337 proceedings (19 U.S.C. Sec. 1337 (1982 & Supp.1984)) against several importers of steel products, including parties to this action Hitachi Metals Ltd. (HML), Nippon Steel Corporation (NSC), Vacuumschmelze GmbH (VAC) and Siemens Capital Corp. (Siemens). In part, ITC investigated whether the processes used to make the imported products would infringe Allied Corporation's (Allied's) U.S. Patent No. 4,271,257 (the '257 patent) on a "method of forming continuous strip of amorphous metal" if such processes were carried out in the United States. ITC referred the investigation to an administrative law judge (ALJ) to conduct an evidentiary hearing and to issue an initial determination (ID).
The ID issued May 14, 1984. The ALJ construed the claims and determined that all respondents except HML had violated Sec. 337 and Sec. 337(a) by importing amorphous metal articles made by processes which would infringe the '257 patent if such processes were practiced in the United States.
Before the ALJ, respondents argued that the '257 claims were "fatally indefinite and ambiguous" (35 U.S.C. Sec. 112) and that the invention recited in those claims would have been obvious in light of the prior art (35 U.S.C. Sec. 103). Both arguments were rejected, however, because the ALJ interpreted the word "nozzle" as including the feature of wide lips.
It is found that the word 'nozzle' as used in the '257 patent claims is ambiguous as to the structure of the nozzle, and that the specification can be used to construe this word. The '257 claims are construed as including the critical feature of the wide lips on the nozzle.
Inv. No. 337-TA-143, Initial Determination 44 (May 14, 1984) [hereinafter 1984 ID].
The ALJ left no doubt as to her interpretation of the scope of the '257 patent's claims:
If the claims of the '257 patent are valid, it is only because the critical limitation relating to the width of the lips was read into the claims. If a respondent used a nozzle without wide lips, infringement could not be found.
Respondents and Allied petitioned the Commission for review. Respondents contended that the ALJ erroneously "preserved" the validity of the '257 patent by "reading in the limitation concerning wide lips." In response, Allied took the position that no review of the ALJ's claim construction and validity holdings was necessary.
The ALJ found the word "nozzle" to be ambiguous and used the patent specification to construe this word to include "wide lips." The fault is not with the decision of the ALJ, but with the obvious mischaracterization of that holding by Respondents. No review of this issue is necessary. (Emphasis in original)
Allied went so far as to urge that the ALJ correctly construed "nozzle" to include the wide lips limitation.
[T]he ALJ has correctly found that "[t]he '257 claims are construed as including the critical feature of the wide lips on the nozzle." The ALJ did not read Dr. Narasimhan's melt constraint or support theory into the '257 process claims.
In its petition for review, and in its response to respondents' petition for review, Allied argued that "the holding by the ALJ concerning the validity of the '257 claims when read literally is in error." At no point did Allied contend that the claim construction pertaining to "wide lips" was error.
ITC declined to review the ID, making it final. 19 C.F.R. Sec. 210.53(h) (1988). 2 On August 1, 1985, ITC issued this Amorphous Metal Exclusion Order:
Amorphous metal articles manufactured abroad in accordance with the process set forth in claims 1, 2, 3, 5, 8, and/or 12 of U.S. Letters Patent 4,221,257 are excluded from entry into the United States for the remaining term of said patent....
In early 1985 ITC granted petitions for advisory opinion proceedings filed by HML and VAC who sought advice that the importation of amorphous metal products made by their "newly developed" processes would not violate the Amorphous Metal Exclusion Order or section 337. See 19 C.F.R. Sec. 211.54(b) (1988). ITC sua sponte initiated exclusion order modification proceedings, see 19 U.S.C. Sec. 337(h); 19 C.F.R. Sec. 211.57, with HML, VAC, NSC and Siemens as parties. The advisory opinion and exclusion order modification proceedings were consolidated for hearing.
On March 3, 1986, the ALJ issued an initial advisory opinion (IAO) and recommended determination (RD) on modification of the exclusion order. In the IAO and RD, the ALJ determined that the "new" HML and VAC processes did not infringe the '257 patent claims as interpreted by ITC in the original investigation, and recommended modification, accordingly, of the exclusion order. Allied petitioned ITC to review the ALJ's IAO and RD.
On May 28, 1987, ITC issued its advisory opinion, which supplemented and modified the ALJ's IAO, but did not change its result. In particular, ITC stated:
We reject Allied's arguments for redetermining the scope and validity of the '257 patent claims. Under the doctrine of law of the case ... that decision should continue to govern the same issues in subsequent stages in the same case.
....
Apart from the application of law of the case to these proceedings, we note that Allied agreed not to litigate the issue of claim interpretation in the advisory opinion proceedings. Indeed, at the end of the original investigation, Allied embraced the claim interpretation necessary to preserve the '257 patent's validity in the original investigation.
Investigation No. 337-TA-143, Advisory Opinion Proceeding, Views of the Commission at 11-12 (May 28, 1987) (footnotes omitted).
Citing the earlier claim construction of "nozzle" to include a "wide lips" limitation as recited in the specification, ITC "construe[d] the wide nozzle lips to be of the dimensions set forth in the 'Summary of the Invention' set forth in the '257 patent specification." Id. at 15. 3 ITC concluded that: "in order for respondents' processes to literally infringe the claims of the '257 patent, they must utilize a front casting nozzle lip that is at least 1.45 times as wide as the width of the casting nozzle's slot." Id. at 15-16. 4 ITC expressly refrained
from determining the upper range of nozzle lips that would fall within the scope of the claims. Id. at 15. ITC also found that there was no infringement under the doctrine of equivalents.
On June 17, 1987, ITC issued an order modifying its Amorphous Metal Exclusion Order of August 1, 1985. In the Modified Order, paragraph 1 repeated the claim construction set out in the advisory opinion, and paragraphs 3 and 4 set out procedures to be followed by those desiring to import articles "covered" by the order:
3. Persons desiring to import amorphous metal articles covered by paragraph 1 of this Order may petition the Commission to institute such further proceedings as may be appropriate in order to determine whether the amorphous metal articles sought to be imported fall outside the scope of paragraph 1 of this Order, and therefore should be allowed entry into the United States.
4. Persons desiring to import amorphous metal articles covered by this Order shall certify to the U.S. Customs Service that the amorphous metal articles sought to be imported were manufactured by a process that the U.S. International Trade Commission has determined to be outside the scope of paragraph 1 of this Order.... 5
Allied appealed from the Advisory...
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