SSIH Equipment S.A. v. U.S. Intern. Trade Com'n, No. 82-2

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore RICH, DAVIS, KASHIWA, SMITH and NIES; NIES; KASHIWA; NIES; EDWARD S. SMITH; KASHIWA
Citation218 USPQ 678,718 F.2d 365
Parties, 218 U.S.P.Q. 678, 1 Fed. Cir. (T) 90 SSIH EQUIPMENT S.A., Appellant, v. UNITED STATES INTERNATIONAL TRADE COMMISSION and Stewart-Warner Corporation, Appellees. Appeal
Docket NumberNo. 82-2
Decision Date15 July 1983

Page 365

718 F.2d 365
4 ITRD 2217, 218 U.S.P.Q. 678, 1 Fed.
Cir. (T) 90
SSIH EQUIPMENT S.A., Appellant,
v.
UNITED STATES INTERNATIONAL TRADE COMMISSION and
Stewart-Warner Corporation, Appellees.
Appeal No. 82-2.
United States Court of Appeals,
Federal Circuit.
July 15, 1983.

Page 366

Kevin E. Joyce and Jonathan S. Kahan, Washington, D.C., argued for appellant. With them on the brief were George M. Sirilla, Peter W. Gowdey and Mark A. Sterling, Washington, D.C., Gerard Mandelbaum and Sandor C. Schweiger, New York City, of counsel.

Page 367

Joel Junker, Washington, D.C., argued for appellee. With him on the brief were Michael H. Stein, Gen. Counsel, Washington, D.C., and Catherine R. Field.

Melvin M. Goldenberg, Chicago, Ill., argued for intervenor. With him on the brief were Theodore R. Scott, Thomas C. Elliott, Jr. and Augustus G. Douvas, Chicago, Ill., of counsel.

Before RICH, DAVIS, KASHIWA, SMITH and NIES, Circuit Judges.

NIES, Circuit Judge.

SSIH Equipment S.A. (SSIH) appeals from the final determinations of the United States International Trade Commission (Commission) in Investigation No. 337-TA-75, Certain Large Video Matrix Display Systems and Components Thereof, under section 337 of the Tariff Act of 1930, as amended (19 U.S.C. Sec. 1337 (1976 and Supp. IV. 1980)) (hereafter Sec. 337), which prohibits unfair methods of competition in the importation of articles into the United States.

The Commission determined that there was a violation of Sec. 337 because SSIH had imported and installed a stadium scoreboard for the Milwaukee Brewers Baseball Club, Inc., which infringed certain United States patents owned by Stewart-Warner. USITC Pub. No. 1158, 213 USPQ 475 (1981). An exclusion order currently bars importation of scoreboards which infringe only one of these patents, U.S. Patent No. 3,594,762.

Our jurisdiction over this appeal is found in the Federal Courts Improvement Act of 1982. 28 U.S.C. Sec. 1295(a)(6). We reverse in part, vacate the order, and remand.

I

The subject investigation was instituted on December 17, 1979, by the Commission on the basis of a complaint filed by Stewart-Warner Corporation (S-W). The complaint alleged that SSIH violated Sec. 337 1 by

Page 368

virtue of infringement of certain claims in U.S. Patent Nos. 3,495,762; 3,941,926; and 4,009,335 ('762, '926, and '335 patents, respectively). 2 Specifically, S-W alleged that the following 25 claims were being infringed:

The '762 patent--Claims 10, 12

The '926 patent--Claims 1 through 5

The '335 patent--Claims 1 through 6, 10, 11, 16 through 21 and 27 through 30.

The Commission unanimously determined that there was a violation of Sec. 337 in that the above claims were valid and, as asserted, were infringed by SSIH's imported scoreboard. The Commission entered an exclusion order, in accordance with Sec. 337(d), 3 on June 19, 1981, and forwarded it to the President, as required under Sec. 337(g). 4 This order barred importation of products which infringed "one or more claims" of the three patents.

On July 16 and 17, 1981, the '926 and '335 patents were held invalid in an infringement action to which SSIH was not a party. Stewart-Warner Corp. v. City of Pontiac,

Page 369

213 USPQ 453 (E.D.Mich.1981). 5 That decision is currently on appeal to the Sixth Circuit.

On August 10, 1981, while the exclusion order was before the President, the Commission was made aware of the district court decision and modified its exclusion order to suspend "that portion of the order referring to the '926 and '335 patents, pending resolution of the [question of their] validity ... on appeal." 44 Fed.Reg. 42217 (1981).

The General Counsel of the United States Trade Representative notified the Commission on August 19, 1981, of the President's decision on the exclusion order as modified, stating that:

We have received notice that the President has decided to take no action regarding the Commission's determination in Investigation No. 337-TA-75, Certain, Large Video Matrix Display Systems and Components Thereof.

* * *

* * *

The sixty day period provided for Presidential review of the Commission determination was not extended since the amendment made by the Commission did not alter the nature of the determination or the order materially. The exclusion order issued by the Commission following that investigation, therefore becomes final automatically on August 19, 1981.

SSIH filed a notice of appeal from both the order of June 19, 1981, and the order of August 10, 1981. 6 SSIH asserts, however, that only the order as modified is reviewable, and that the issues on appeal are limited to the findings related to the modified order. SSIH urges that the Commission erred in holding that the '762 patent was valid and enforceable and was infringed by the SSIH imported scoreboard. It further argues that it has not caused any injury to S-W and that the public interest factors statutorily required for a determination of a remedy under Sec. 337(d) preclude issuance of the order.

S-W argues that the original June 19, 1981 order is the only final appealable order and asks that we affirm the conclusions of validity, infringement, and enforceability of all three patents and all other conclusions supporting that order.

The Government endorses the position of SSIH that only the order as modified is reviewable, but opposes SSIH on all other issues with respect to the correctness of the exclusion order based on the '762 patent.

SSIH and the Government both maintain that the '926 and '335 patents remain in the case only for the purpose of evaluating whether S-W was guilty of inequitable conduct.

II

The initial question is what issues are properly before us. S-W urges that the order of June 19, 1981, is the only exclusion order sent to the President and that after 60 days, since the president did not disapprove it, all of the findings and conclusions underlying that order became final for purposes of appeal by SSIH. In S-W's view, the order of August 10, 1981, did not affect the finality of the June 19, 1981 order; rather the later order merely stayed the date when the first will become operative.

SSIH and the Government argue that the August 10, 1981 order in part nullified the order of June 19, 1981, and only the findings and conclusions which support the more limited exclusion order are subject to review by this court at this time. We agree.

In reaching our conclusion, we have first considered the authority of the Commission

Page 370

to modify an exclusion order before Presidential action during the 60 day period provided for such review.

Under the statute, Sec. 337(h), 7 the Commission is specifically authorized to terminate the effectiveness of an exclusion order when the Commission finds that the conditions which led to exclusion no longer exist. S-W argues that this provision does not apply here because the order of June 19, 1981, was not "effective" until after the Presidential review period expired. S-W confuses the "effectiveness" of a determination with its "finality." While Commission determinations are not final for purposes of appeal to this court until the review period has run, they are otherwise "effective upon publication ... in the Federal Register." Section 337(g)(2). During the Presidential review period, products are in fact excluded from entry except under bond. Hence, on June 24, 1981, when the Commission's order was published in the Federal Register (46 Fed.Reg. 32694), the power to terminate arose under Sec. 337(h).

We also conclude that the requisite findings for nullifying the order with respect to the '926 and '335 patents were made. In its August 10, 1981 order, the Commission stated that it had reviewed the "transcript of the decision [in the Pontiac case]" and "determined ... that ... the exclusion order ... should ... operate only with respect to [the '762 patent]." (Emphasis added.) The Commission thus necessarily found that the conditions leading to a determination to exclude imports on the basis of infringement of claims of the '926 and '335 patents "no longer exist".

Such a finding could properly be premised on the holding of the Pontiac case. Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971). Moreover, the law is well settled that the pendency of an appeal has no affect on the finality or binding effect of a trial court's holding. Deposit Bank v. Frankfort, 191 U.S. 499, 24 S.Ct. 154, 48 L.Ed. 276 (1903). See also 18 C. Wright, A. Miller & E. Cooper, Federal Practice and Procedure Sec. 4433 (1981). That rule is applicable to holdings of patent invalidity as well. Alamance Industries, Inc. v. Gold Medal Hosiery Co., 194 F.Supp. 538, 540, 129 USPQ 219, 220 (S.D.N.Y.1961). See also, H. Kaye, R. Lupo, and S. Lipman, The Jurisdictional Paradigm Between the United States International Trade Commission and the Federal Courts, 64 JPOS 118, 132-33 (1982).

The Commission took the action of modifying its exclusion order on its own motion. We agree that such action was appropriate, given the nature of a Sec. 337 investigation, which results in an order operative against goods and which is equally effective against those who participate as those who do not participate in the proceeding. Sealed Air Corp. v. USITC, 645 F.2d 976, 985-86, 209 USPQ 469, 477-78 (CCPA 1981). The Commission cannot assume a passive role once an exclusion order is issued. As stated in SSIH Equipment S.A. v. USTIC, 673 F.2d 1387, 1390, 213 USPQ 529, 531 n. 8 (CCPA 1982):

T]he Commission's obligation [is] to be always concerned with the impact of its orders on the United States economy and consumers as well as its obligation to terminate orders

In view of the foregoing, we conclude that the Commission acted properly in issuing its August 10, 1981 order, 8 and that

Page 371

such action limited the appealable determination under Sec. 337(d) to the validity of an exclusion
...

To continue reading

Request your trial
239 practice notes
  • Akzo N.V. v. U.S. Intern. Trade Com'n, No. 86-877
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • December 22, 1986
    ...is insufficient for this court to overturn the agency's conclusion. See SSIH Equipment S.A. v. U.S. International Trade Commission, 718 F.2d 365, 381, 218 USPQ 678, 691 (Fed.Cir.1983) (additional views of Judge Page 1480 The ALJ concluded, after extensive analysis, that the claimed inventio......
  • Reiffin v. Microsoft Corp., No. C 98-266.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • March 31, 2003
    ...to protect particularly important individual interests Page 1156 in various civil cases." SSIH Equipment SA v. US Intern. Trade Com'n, 718 F.2d 365, 380-81 (Fed.Cir.1983). Although prosecution laches differs from traditional laches with respect to its elements, that difference does not prov......
  • Glen Ridge I Condominiums, Ltd. v. Federal Sav. and Loan Ins. Corp., No. 05-85-00873-CV
    • United States
    • Court of Appeals of Texas
    • December 30, 1986
    ...sustained on less evidence under the substantial evidence standard. SSIH Equipment S.A. v. United States International Trade Commission, 718 F.2d 365, 382 (Fed.Cir.1983). Since it is more difficult for an appellate court to reverse an administrative agency under the substantial evidence sta......
  • Jervis B. Webb Co. v. Southern Systems, Inc., No. 84-568
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • August 16, 1984
    ...USPQ at 875-76; Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 773 n. 3, 218 USPQ 781, 790 n. 3 (Fed.Cir.1983); SSIH Equip. S.A. v. USITC, 718 F.2d 365, 374-75, 218 USPQ 678, 687 5 Section 2201, in pertinent part, states: Sec. 2201. Creation of remedy In a case of actual controversy within i......
  • Request a trial to view additional results
238 cases
  • Akzo N.V. v. U.S. Intern. Trade Com'n, No. 86-877
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • December 22, 1986
    ...is insufficient for this court to overturn the agency's conclusion. See SSIH Equipment S.A. v. U.S. International Trade Commission, 718 F.2d 365, 381, 218 USPQ 678, 691 (Fed.Cir.1983) (additional views of Judge Page 1480 The ALJ concluded, after extensive analysis, that the claimed inventio......
  • Reiffin v. Microsoft Corp., No. C 98-266.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
    • March 31, 2003
    ...to protect particularly important individual interests Page 1156 in various civil cases." SSIH Equipment SA v. US Intern. Trade Com'n, 718 F.2d 365, 380-81 (Fed.Cir.1983). Although prosecution laches differs from traditional laches with respect to its elements, that difference does not prov......
  • Glen Ridge I Condominiums, Ltd. v. Federal Sav. and Loan Ins. Corp., No. 05-85-00873-CV
    • United States
    • Court of Appeals of Texas
    • December 30, 1986
    ...sustained on less evidence under the substantial evidence standard. SSIH Equipment S.A. v. United States International Trade Commission, 718 F.2d 365, 382 (Fed.Cir.1983). Since it is more difficult for an appellate court to reverse an administrative agency under the substantial evidence sta......
  • Jervis B. Webb Co. v. Southern Systems, Inc., No. 84-568
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • August 16, 1984
    ...USPQ at 875-76; Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 773 n. 3, 218 USPQ 781, 790 n. 3 (Fed.Cir.1983); SSIH Equip. S.A. v. USITC, 718 F.2d 365, 374-75, 218 USPQ 678, 687 5 Section 2201, in pertinent part, states: Sec. 2201. Creation of remedy In a case of actual controversy within i......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT