Canadian Tarpoly Co. v. US Intern. Trade Com'n

• Decision Date: 05 February 1981
• Docket Number: Appeal No. 81-5.
• Citation: 640 F.2d 1322
• Parties: CANADIAN TARPOLY CO., Petitioner, v. U. S. INTERNATIONAL TRADE COMMISSION, Respondent.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

640 F.2d 1322

CANADIAN TARPOLY CO., Petitioner, v. U. S. INTERNATIONAL TRADE COMMISSION, Respondent.

Appeal No. 81-5.

United States Court of Customs and Patent Appeals.

February 5, 1981.

Fred S. Whisenhunt, Murray & Whisenhunt, Washington, D. C., for Canadian Tarpoly Co.

Christine Bliss, Washington, D. C., for International Trade Commission.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.

MARKEY, Chief Judge.

Petitioner seeks a writ of mandamus against the International Trade Commission (ITC). We deny the petition.

Background

The matter results from an ITC Investigation No. 337-TA-54, "In the Matter of Certain Multicellular Plastic Film", conducted under sections 337 and 337a of the Tariff Act of 1930, as amended (19 U.S.C. §§ 1337 and 1337a). Sealed Air Corporation there alleged unfair methods of competition and unfair acts in the unlicensed importation into the United States of certain multicellular plastic film allegedly manufactured in a foreign country by the process covered in claims 1 and 2 of its U.S. Patent No. 3,416,984 (the '984 patent). Petitioner was not a respondent in that investigation.

Having completed its investigation on June 12, 1979, the ITC determined that: (1) claims 1 and 2 of the '984 patent were not proven invalid; and (2) the unauthorized importation and sale of film made by an infringing process has the effect or tendency to destroy or substantially injure an industry, efficiently and economically operated in the United States.

Accordingly, on June 29, 1979, the ITC ordered that:

1. Multicellular plastic film manufactured abroad in accordance with the process disclosed by claims 1 and 2 of U. S. Letters Patent 3,416,984 is excluded from entry into the United States for the remaining term of said patent ...

. . . . .

3. That persons desiring to import multicellular plastic film into the United States may petition the ITC to institute such further proceedings as may be appropriate in order to determine whether the multicellular plastic film sought to be imported should be allowed entry into the United States;

4. That this order be published in the Federal Register and served upon each party of record in this investigation and upon ... the Secretary of the Treasury.

As of June 29, 1979, the Secretary of the Treasury, acting through the Customs Service, has refused entry of multicellular plastic film into the United States pursuant to the ITC's exclusionary Order. 19 U.S.C. § 1337(d).

Petitioner, a Canadian corporation, manufactures summer swimming pool covers by cutting and sewing multicellular plastic film. Petitioner asserts that the film it uses is manufactured in Canada by a process not covered by claims 1 and 2 of the '984 patent. When the ITC exclusionary Order took effect, petitioner says U. S. dealers and distributors ceased to order its pool covers, causing irreparable harm.

Petitioner asserts that it became aware of the ITC Order in the early part of September, 1980, and that it contacted the ITC in the middle of that month to discuss an expedited proceeding under paragraph 3 of the Order. The ITC proffered an expedited proceeding, to begin in the first week of October. However, believing that it would suffer irreparable harm during the ITC-estimated 4½ months required for the proceeding, petitioner declined to participate in the proffered proceeding.

Instead, on November 7, 1980, petitioner filed a petition with the ITC, challenging the legality of the exclusionary Order. On December 10, 1980, the ITC denied that petition, saying that the Order was within the scope of its statutory authority and that the expedited proceeding provided for in paragraph 3 was the most appropriate way to decide whether the plastic film which petitioner wished to export to the United States was noninfringing. The ITC informed petitioner that "to obtain expedited relief it may file a petition with the ITC requesting the institution of a proceeding pursuant to paragraph 3 of the Order".

Between December 10-17, 1980, petitioner again contacted the ITC, asking whether its pool covers could enter the United States if petitioner manufactured film in the United States, shipped it to Canada for assembly of pool covers, then exported those pool covers into the United States. The ITC suggested that petitioner request an advisory opinion on that question.

Declining an expedited proceeding under paragraph 3 of the Order, petitioner filed this petition for writ of mandamus on December 17, 1980.

Petitioner asserts that the ITC Order in Investigation No. 337-TA-54 "exceeds the statutory authority" of the ITC, illegally "extends the monopoly" of the '984 patent, "is unconstitutional because it results in a taking of Petitioner's property without due process of law", and "is arbitrary and capricious and is a clear abuse of discretion."

Petitioner asks that we issue a writ of mandamus to the ITC, "directing that the said Order be vacated forthwith, at least as it applies to the Petitioner, and that the ITC forthwith order the appropriate Customs Officials to immediately suspend its directives which exclude from entry into the United States the multicellular plastic film of the Petitioner."¹

OPINION

Mandamus is an extraordinary remedy, available only in extraordinary circumstances and when no meaningful alternatives are available. Kerr v. United States District Court, 426 U.S. 394, 403, 96 S.Ct. 2119, 2124, 48 L.Ed.2d 725 (1976); Landis Tool Division v. U. S. International Trade Commission, 614 F.2d 766, 205 USPO 112 (CCPA 1980). This court's power to issue a mandamus under the All Writs Act (28 U.S.C. § 1651(a)) is limited to situations in which such action is necessary or appropriate in aid of its jurisdiction. Margolis v. Banner, 599 F.2d 435, 440, 202 USPO 365, 370 (CCPA 1979).

There are meaningful alternative legal remedies available here. For example, petitioner could have participated, and may still participate, in the expedited proceeding proffered by the ITC pursuant to paragraph 3 of its Order. If adversely affected by a final determination in that proceeding, petitioner could appeal to this court. 19 U.S.C. § 1337(c). Thus, mandamus is not necessary in aid of this court's jurisdiction.²

Petitioner would have us misuse the writ to circumvent normal appeal procedures and permit a collateral attack upon the legality of the ITC's exclusionary Order. The Order having issued more than 60 days before any action was taken by petitioner, a direct appeal of that Order is not open to it. Efforts to obtain a court interpretation of the Order by way of the present petition confuse the nature and purpose of mandamus with the nature and purpose of an appeal.

Petitioner urges that the writ of mandamus is appropriate to prevent "irreparable harm", that is, loss of sales during the time required to complete an expedited paragraph 3 proceeding and a possible appeal to this court. The argument is devoid of merit. As stated by the Supreme Court in Bankers Life & Cas. Co. v. Holland, 346 U.S. 379, 383, 74 S.Ct. 145, 148, 98 L.Ed. 106 (1953):

It is established that the extraordinary writs cannot be used as substitutes for appeals, Ex parte Fahey, 332 U.S. 258, 259-260, 67 S.Ct. 1558, 1559, 91 L.Ed. 2041 (1947), even though hardship may result from delay and perhaps unnecessary trial, United States Alkali Export Assn. v. United States, 325 U.S. 196, 202-203 65 S.Ct. 1120, 1124-1125, 89 L.Ed. 1554 (1945); Roche v. Evaporated Milk Assn. 319 U.S. 21, 31, 63 S.Ct. 938, 944, 87 L.Ed. 1185 (1943); and whatever may be done without the writ may not be done with it. Ex parte Rowland, 104 U.S. 604, 617, 26 L.Ed. 861 (1882).³

The ITC has authority to exclude goods from entry into the United States. Upon determining that a particular act of unfair competition in importation causes an injury to domestic industry, it has authority to devise a remedy. 19 U.S.C. § 1337. In the light of its determination in Investigation No. 337-TA-54, and because the matter involved a patented process, there were at least two remedies available to the ITC: (1) It could exclude multicellular plastic film from importation until the foreign manufacturer's process is shown not to be an infringement; (2) It could permit importation until Sealed Air Corporation proved that the foreign manufacturer's process does infringe.⁴

Remedy (1) would risk unfairness and injury to a foreign manufacturer whose process does not infringe by denying importation during the period necessary to establish non-infringement. Remedy (2) would risk continued unfairness and injury to the domestic industry, at the hands of a foreign manufacturer whose process did infringe, during the period necessary to prove infringement.

Administrative agencies have considerable latitude to shape their remedies within the scope of their statutory authority, SEC v. Chenery Corp., 332 U.S. 194, 207-209, 67 S.Ct. 1575, 1582-1583, 91 L.Ed. 1995 (1947), having wide discretion in dealing with the problems entrusted to them, FTC v. Cement Institute, 333 U.S. 683, 726, 68 S.Ct. 793, 815, 92 L.Ed. 1010 (1948), and in determining the choice of remedy deemed adequate to cope with unlawful practices, Jacob Siegel Co. v. FTC, 327 U.S. 608, 611-613, 66 S.Ct. 758, 759-760, 90 L.Ed. 888 (1946), FTC v. Mandel Bros, Inc., 359 U.S. 385, 392, 79 S.Ct. 818, 824, 3 L.Ed.2d 893 (1959). The relation of remedy to policy is peculiarly for the administrative agency and its special competence, General Protective Committee v. SEC, 346 U.S. 521, 534, 74 S.Ct. 261, 269, 98 L.Ed. 339 (1954). Moreover, as pointed out by the Supreme Court in Buttfield v. Stranahan, 192 U.S. 470, 493, 496, 24 S.Ct. 349, 355, 48 L.Ed. 525 (1904):

As a result of the complete power of Congress over foreign commerce, it necessarily follows that no individual has a vested right to trade with foreign nations, which is so broad in character as to limit and restrict the power of Congress to determine what ar

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