Beloit Corp. v. Valmet OY, 84-1296
| Decision Date | 31 August 1984 |
| Docket Number | No. 84-1296,84-1296 |
| Parties | , 223 U.S.P.Q. 193, 2 Fed. Cir. (T) 126 BELOIT CORPORATION, Complainant-Appellant, v. VALMET OY, TVW Paper Machines, Inc., United States International Trade Commission, Appellees. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
William C. Streeber and Steven H. Noll, Chicago, Ill., Victor M. Wigman and Ralph Elsas-Patrick, Arlington, Va., for complainant-appellant.
Myron Cohen, New York City, for appellee.
Thomas C. Pontani, Lawrence G. Kurkland and Martin Pavane, New York City, of counsel.
Phyllis N. Smithey, Washington, D.C., for Intern. Trade Com'n.
Michael H. Stein and Michael P. Mabile, Washington, D.C., of counsel.
Before MARKEY, Chief Judge, and FRIEDMAN and RICH, Circuit Judges.
Beloit filed this appeal "solely on the issue of non-infringement". On 21 June 1984, in an unpublished order, this court denied Valmet's motion to dismiss the appeal. Beloit and the International Trade Commission (Commission) have moved under this court's Rule 18(a) for publication of the order so that it may have precedential value. The latter motion is granted and the order is, with modification, herewith issued for publication.
Valmet moved for dismissal because Beloit appealed "solely on the issue of non-infringement". Valmet says Beloit should file a new notice of appeal on the issue of "no violation", thereby enabling Valmet to argue error in what it calls the "Commission's findings" that the patent in issue was not anticipated under 35 U.S.C. Sec. 102, that the invention would not have been obvious under 35 U.S.C. Sec. 103, and that Valmet's activities tend to injure a domestic industry.
In arguing that the Commission could only adopt the Presiding Officer's determination in its entirety, Valmet quotes one of the two sentences in the Commission's "Notice of Commission Decision Not to Review Initial Determination". In those sentences the Commission said it "determined not to review" the Presiding Officer's Initial Determination. Valmet cites the Commission's Rule 210.53(h):
[h] Effect. An initial determination should become the determination of the Commission thirty (30) days after the service thereof, unless the Commission, within thirty (30) days after the date of filing of the initial determination, shall have ordered review of the initial determination or certain issues therein pursuant to Sec. 210.54(b) or Sec. 210.55, or by order shall have changed the effective date of the initial determination.
Valmet says the rule makes the Presiding Officer's Initial Determination that of the Commission. Presumably on that premise, Valmet felt comfortable in referring to the Presiding Officer's findings on Secs. 102, 103, and injury as "findings of the Commission". On that premise also, Valmet bases its assertion that Beloit must appeal the basic conclusion of "no violation" and must not be permitted to limit the appeal to the infringement issue.
Valmet's difficulty is three-fold: (1) the Commission's Notice is equivocal; (2) the rule does not say what Valmet wishes it said, and (3) regardless of how an appeal is labeled, neither Beloit nor any other appellant may appeal issues on which it prevailed before the trial tribunal.
(1)
In addition to the statement that it had determined not to review the Initial Determination, the Commission's Notice contained this statement:
The Commission has adopted that portion of the presiding officer's ID relating to the noninfringement of U.S. Letters Patent 3,726,758. The Commission has taken no position on the other issues discussed in the ID, since the findings and conclusions of the presiding officer regarding noninfringement are dispositive of the question of whether there is a violation of section 337.
Whatever had been meant by the "not to review" statement, it can hardly be said that the Commission made "findings" on issues upon which it specifically stated it had "taken no position". Nor is it appropriate to assume that the Commission has adopted all findings of its presiding officer when it specified that it had adopted "that portion" of the Initial Determination relating to non-infringement.
(2)
The Commission's Rule 210.53(h) supra, says that the Initial Determination becomes that of the Commission unless it has ordered review of "certain issues" in that determination. Whether it "ordered" review of the non-infringement issue here is unclear but irrelevant. It clearly did review and decided to adopt that portion of the Initial Determination dealing with that certain issue.
Moreover, the Commission is not incapable of announcing its adoption of an entire Initial Determination when it so intends. See, Certain Amino Acid Formulations; Commission Decision Not to Review Initial Determination, 48 Federal Register 31306 (July 7, 1983). If Valmet's view of the rule were correct, no need for such announcement would exist.
(3)
Most importantly, this court does not sit to review what the Commission has not decided. Nor will it review determinations of presiding officers on which the Commission has not elected to provide the court with its views. The court has not been constituted a "Surrogate Commission" to review portions of a presiding officer's determination on which the Commission has "taken no position".
The Commission, on the other hand, is at perfect liberty to reach a "no violation" determination on a single dispositive issue. That approach may often save the Commission, the parties, and this...
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