Crucible Materials Corp. v. U.S. Intern. Trade Com'n

• Decision Date: 30 September 1997
• Docket Number: Nos. 97-1409,97-1411,s. 97-1409
• Citation: 127 F.3d 1057
• Parties: CRUCIBLE MATERIALS CORPORATION, Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and San Huan New Materials High Tech, Inc., Ningbo Konit Industries, Inc., and Tridus International, Inc., Intervenors. SAN HUAN NEW MATERIALS HIGH TECH, INC., Ningbo Konit Industries, Inc., and Tridus International, Inc., Appellants, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Crucible Materials Corporation, Intervenor.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1057

127 F.3d 1057

19 ITRD 1609

CRUCIBLE MATERIALS CORPORATION, Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and San Huan New Materials High Tech, Inc., Ningbo Konit

Industries, Inc., and Tridus International, Inc.,

Intervenors.

SAN HUAN NEW MATERIALS HIGH TECH, INC., Ningbo Konit

Industries, Inc., and Tridus International, Inc., Appellants, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Appellee, and Crucible Materials Corporation, Intervenor.

Nos. 97-1409, 97-1411.

United States Court of Appeals Federal Circuit.

Sept. 30, 1997.

Ford F. Farabow, Jr., Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C., for appellant and intervenor Crucible Materials Corporation. Of counsel was Darrel C. Karl, Wayne W. Herrington, and Michael J. Flibbert.

Gary M. Hnath, Venable, Baetjer, Howard & Civiletti, LLP, Washington, D.C., for appellants and intervenors San Huan New Materials High Tech, Inc., et al. Of counsel was E. Brendan Magrab.

Jay H. Reiziss, Attorney, Office of General Counsel, U.S. International Trade Commission, Washington, D.C., for appellee. Of counsel were Lyn M. Schlitt, General Counsel, and James A. Toupin, Deputy General Counsel.

Before MICHEL, LOURIE, and BRYSON, Circuit Judges.

ORDER

LOURIE, Circuit Judge.

On July 25, 1997, this court asked the parties whether Crucible Materials Corporation's appeal no. 97-1409 and San Huan New Materials High Tech, Inc., Ningbo Konit Industries, Inc., and Tridus International, Inc.'s (collectively San Huan's) appeal no. 97-1411 should be dismissed as having been taken from a nonfinal determination. The International Trade Commission and San Huan respond that the appeals should be dismissed as having been taken from a nonfinal determination. Crucible responds that its appeal no. 97-1409 is from a final determination and should go forward, but that San Huan's appeal no. 97-1411 should be dismissed as premature. We conclude that Crucible's appeal no. 97-1409 should be heard, but we dismiss San Huan's appeal no. 97-1411.

BACKGROUND

These appeals relate to an investigation initiated by the Commission in March 1995 under section 337 of the Tariff Act of 1930 as amended, 19 U.S.C. § 1337 (1994), based on a complaint filed by Crucible. In the Matter of Certain Neodymium-Iron-Boron Magnets, Magnet Alloys, and Articles Containing Same, Investigation No. 337-TA-372. Crucible's complaint alleged that San Huan and other respondents were improperly importing and selling certain magnets that infringed certain claims of Crucible's United States Patent 4,588,439. Just before a scheduled hearing on the merits, San Huan moved to be terminated from the investigation based on a proposed consent order. On October 11, 1995, the Commission issued the consent order (1) directing that San Huan not sell for importation, import into the United States, sell in the United States after importation, or Meanwhile, the Administrative Law Judge (ALJ) to whom the remainder of the investigation was referred issued an initial determination finding that certain other respondents violated § 1337(a) by importing and selling magnets that infringed Crucible's patents both literally and under the doctrine of equivalents. On March 29, 1996, the Commission determined not to review the ALJ's decision, issued a general exclusion order and a cease and desist order directed to only one other respondent, and thus completed the original investigation.

knowingly aid in the sale for importation of certain neodymium-iron-boron permanent magnets and magnet alloys and (2) terminating the proceedings with respect to San Huan. The consent order provided that if San Huan violated the consent order, San Huan would be subject to an enforcement proceeding. In addition, San Huan waived "all rights to seek judicial review or otherwise challenge or contest the validity of the Consent Order."

Soon thereafter, Crucible filed an enforcement complaint alleging that San Huan violated and was continuing to violate the consent order. On May 16, 1996, the Commission initiated a formal enforcement proceeding to determine whether San Huan violated the consent order. San Huan filed a separate petition and argued that the Commission should consider the applicability of this court's intervening decision in Maxwell v. J. Baker, Inc., 86 F.3d 1098, 39 USPQ2d 1001 (Fed.Cir.1996), cert. denied, --- U.S. ----, 117 S.Ct. 1244, 137 L.Ed.2d 327 (1997). San Huan argued that Maxwell altered the law of infringement under the doctrine of equivalents in a manner that directly conflicted with the Commission's infringement analysis. The Commission denied San Huan's petition but stated that the ALJ should address San Huan's arguments concerning Maxwell within the context of the ongoing enforcement proceeding.

On December 24, 1996, the ALJ issued a "recommended determination" in which he determined that San Huan violated the consent order and recommended that monetary sanctions be imposed. The ALJ determined that under Maxwell, San Huan did not infringe the claims of Crucible's patent under the doctrine of equivalents. However, the ALJ concluded that because Maxwell conflicted with Supreme Court and other Federal Circuit precedent, the decision was not binding precedent. He thus upheld his earlier determination that San Huan infringed the claims of Crucible's patent under the doctrine of equivalents.

On April 8, 1997, the Commission issued its determination that San Huan violated the consent order. On May 7, 1997, the Commission followed up that determination with an opinion formally adopting the ALJ's recommendation that San Huan violated the consent order. However, the Commission did not adopt, inter alia, the ALJ's evaluation of the applicability of Maxwell. It declined to adopt the ALJ's recommendation that neither the enforcement proceeding nor the existing remedial orders should be affected by Maxwell with respect to infringement under the doctrine of equivalents. Accordingly, the Commission prospectively modified the general exclusion order, cease and desist order, and the consent order based on its conclusion that there was no infringement under the doctrine of equivalents: "All outstanding orders in this investigation therefore no longer prohibit the importation and sale of such magnets" with an oxygen content of below 6,000 ppm. Because the Commission's opinion had the effect of allowing more magnets to be imported and sold in the United States, Crucible appealed the determination modifying the outstanding orders. ¹ San Huan followed with its own "protective" appeal. In the meantime, the enforcement proceeding

with respect to remedy, public interest, and bonding relating to San Huan's violation of the consent order is continuing.

DISCUSSION

This court has exclusive jurisdiction over "final determinations of the United States International Trade Commission relating to unfair practices in import trade, made under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337)." 28 U.S.C. § 1295(a)(6) (1994). Final determinations appealable under § 1295(a)(6) are specified in § 1337(c), which provides in part that "[a]ny person adversely affected by a final determination of the Commission under subsection (d), (e), (f), or (g) of this section may appeal such determination, within 60 days after the determination becomes final, to the United States Court of Appeals for the Federal Circuit for review in accordance with chapter 7 of Title 5." 19 U.S.C. § 1337(c) (1994). The subsections relevant here, (d) and (f), govern permanent exclusion orders and cease and desist orders.

San Huan's Appeal

San Huan acknowledges that the Commission has not issued a final determination with regard to the enforcement of the modified consent order and states that it filed an appeal merely as a protective measure. The Commission concurs that San Huan's appeal is premature because the Commission has not disposed of the issues concerning remedy under § 1337(f)(2) (1994). We agree with San Huan and the Commission. "A final determination is 'a final administrative decision on the merits, excluding or refusing to exclude articles from entry' " under 19 U.S.C. § 1337(d), (e), (f), or (g) (1994). Block v. United States Int'l Trade Comm'n, 777 F.2d 1568, 1571, 228 USPQ 37, 38 (Fed.Cir.1985) (quoting Import Motors, Ltd. v. United States Int'l Trade Comm'n, 63 C.C.P.A. 56, 530 F.2d 940, 944, 188 USPQ 490, 494 (1976)). Because formal enforcement proceedings are ongoing, San Huan's appeal no. 97-1411 is not an appeal from a final determination. See 19 U.S.C. § 1337(c); 28 U.S.C. § 1295(a)(6). San Huan purported to appeal from the Commission's determination modifying the outstanding orders. However, San Huan has not been adversely affected by the modified orders. In determining that there was no infringement under the doctrine of equivalents, the Commission's decision had the effect of allowing San Huan to import and sell products that it was formerly enjoined from selling and importing. Thus, the Commission's determination with respect to the modification of the outstanding orders is not adverse to San Huan. Finally, San Huan does not purport to seek review of the modification of these orders. For all of these reasons, we therefore conclude that San Huan's appeal must be dismissed.

Crucible's Appeal

Crucible argues nevertheless that the Commission's determination modifying the exclusion order, cease and desist order, and consent order is immediately appealable under § 1337(c) and that the issues remaining to be...