Align Technology, Inc. v. International Trade Commission , 771 F.3d 1317 ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
ALIGN TECHNOLOGY, INC.,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
AND
CLEARCORRECT OPERATING, LLC,
Intervenor,
AND
CLEARCORRECT PAKISTAN (Private), LTD., MR.
MUDASSAR RATHORE, DR. WAQAS WAHAB, DR.
NADEEM ARIF, AND DR. ASIM WAHEED,
Intervenors.
______________________
2013-1240, -1363
______________________
Appeals from the United States International Trade
Commission in Investigation No. 337-TA-562.
______________________
Decided: July 18, 2014
______________________
2 ALIGN TECHNOLOGY, INC. v. ITC
IGOR V. TIMOFEYEV, Paul Hastings LLP, of Washing-
ton, DC, argued for appellant. With him on the brief were
STEPHEN B. KINNAIRD, and THOMAS A. COUNTS, of San
Francisco, California.
JAMES A. WORTH, Attorney, Office of General Counsel,
United States International Trade Commission, of Wash-
ington, DC, argued for appellee. With him on the brief
were DOMINIC L. BIANCHI, General Counsel, and WAYNE
W. HERRINGTON, Assistant General Counsel.
MICHAEL D. MYERS, McClanahan Myers Espey, LLP,
of Houston, Texas, argued for intervenors. With him on
the brief for ClearCorrect Operating, LLC were RANDY
MCCLANAHAN and ROBERT H. ESPEY, II. Of counsel on the
brief was GARY M. HNATH, Mayer Brown LLP, of Wash-
ington, DC. On the brief for ClearCorrect Pakistan (Pri-
vate), Ltd., et al, were LEI MEI and REECE NIENSTADT, Mei
& Mark LLP, of Washington, DC.
______________________
Before PROST, Chief Judge, and CHEN, Circuit Judge. *
CHEN, Circuit Judge.
The International Trade Commission’s regulations
authorize the Commission to review a decision of an
administrative law judge (ALJ) when that decision is
designated as an “initial determination.” Other ALJ
decisions, such as an “order,” are not reviewable. Here,
the ALJ denied a motion via an order. This case requires
us to consider whether the Commission’s review of that
order was procedurally sound. For the reasons set forth
below, we hold that it was not.
* Randall R. Rader, who retired from the position of
Circuit Judge on June 30, 2014, did not participate in this
decision.
ALIGN TECHNOLOGY, INC. v. ITC 3
I. BACKGROUND
This case arises out of a proceeding before the Com-
mission to enforce a Consent Order entered into by Align
Technology, Inc. (Align), the complainant of an original,
underlying investigation, and respondents to that investi-
gation, OrthoClear, Inc., OrthoClear Holdings, Inc., and
OrthoClear Pakistan Pvt, Ltd. (collectively, OrthoClear).
Align develops, manufactures, and markets clear
aligners to treat malocclusion—i.e., teeth misalignment.
Conventionally, dental professionals treated misalign-
ment with metal archwires and brackets, commonly
known as braces. Braces, however, have a number of
disadvantages, including tooth discoloration, oral discom-
fort, and, for some, embarrassment.
To overcome these problems, Align conceived of and
developed its clear aligners, marketed as the Invisalign
System. The Invisalign System, which is based on Align’s
patented technology, uses a series of clear dental align-
ers—“incremental positioning adjustment appliances”—
that are worn sequentially over a fixed time period to
adjust the position of a patient’s teeth. Because each
patient’s teeth are unique, the aligners must be custom-
designed. To design these aligners, dental professionals
generate and obtain data to determine the positioning of a
patient’s teeth and create complex three-dimensional
digital models of each incremental configuration for each
aligner. The three-dimensional digital model of each
configuration is manipulated to create a “digital data set,”
which is used to manufacture a series of successive align-
ers to be worn by a patient that incrementally move the
teeth to the desired alignment. In general, Align’s assert-
ed patents are directed to various methods and orthodon-
tic treatment plans using these digital data sets.
In 2005, Align’s founder and former Chief Executive
Officer, Muhammad Chisti, founded OrthoClear and used
former Align employees in Pakistan and the United
4 ALIGN TECHNOLOGY, INC. v. ITC
States to manufacture and sell dental aligners. Believing
OrthoClear to be infringing its patents and using its trade
secrets, Align filed a complaint with the Commission in
2006 (hereinafter, the underlying investigation).
A. The Underlying Investigation
Align’s complaint alleged that OrthoClear violated 19
U.S.C. § 1337 by importing, selling for importation, or
selling within the United States after importation align-
ers that infringe Align’s asserted patents, 1 and also by
misappropriating Align’s trade secrets. Notice of Investi-
gation, 71 Fed. Reg. 7995, 7995–96 (Feb. 15, 2006).
In August 2006, OrthoClear negotiated a global set-
tlement with Align that required OrthoClear to assign its
entire intellectual property portfolio to Align, to agree to
entry of the Consent Order, and to file a joint motion to
terminate the investigation. The ALJ granted the joint
motion, and the Commission entered the Consent Order
and terminated the underlying investigation. See Certain
Incremental Dental Positioning Adjustment Appliances
and Methods of Producing Same, Inv. No. 337-TA-562,
2006 WL 3462199 (U.S.I.T.C. Nov. 13, 2006).
The Consent Order provided, in relevant part:
The incremental dental positioning adjustment
appliances manufactured by or for OrthoClear
referenced in the complaint and any other articles
manufactured in violation of the patents or trade
secrets described therein (the “Articles”) are here-
by prohibited from importation into the United
States until the expiration of the last to expire of
the following patents . . . U.S. Patent No.
1 U.S. Patent Nos. 6,685,469; 6,450,807; 6,394,801;
6,398,548; 6,722,880; 6,629,840; 6,699,037; 6,318,994;
6,729,876; 6,602,070; 6,471,511; and 6,227,850.
ALIGN TECHNOLOGY, INC. v. ITC 5
6,722,880 (“the ’880 patent”) [and] U.S. Patent No.
6,471,511 (“the ’511 patent”) . . . , except under li-
cense of the patent owner or as provided by law.
J.A. 69; id. at 7974–75 ¶ 2. The Consent Order also
included successor and aiding-and-abetting provisions
that extended the importation prohibition beyond Ortho-
Clear. See J.A. 7675 ¶ 2 (mandating that OrthoClear
shall not “knowingly aid, abet, encourage, participate in,
or induce the sale for importation into the United States
or sale in the United States after importation of the
Articles”); id. ¶ 3 (providing that the Consent Order “shall
be applicable and binding upon OrthoClear, its officers,
directors, agents, servants, employees, successors and
assigns, and all persons, firms, or corporations acting or
claiming to act on its behalf or under its direction or
authority”).
B. The Enforcement Proceeding
After suspecting that OrthoClear and others were vio-
lating the Consent Order, Align filed a new complaint,
this time for an enforcement proceeding under 19 C.F.R.
§ 210.75 (hereinafter, the enforcement proceeding). 2 The
2 Align contemporaneously filed another separate
complaint against ClearCorrect Pakistan (Private), Ltd.
and ClearCorrect Operating, LLC, alleging that they
violated 19 U.S.C. § 1337. J.A. 7684 n.2. The Commis-
sion instituted this investigation (the ’833 Investigation)
and has since found a violation of Section 337. Certain
Digital Models, Digital Data, and Treatment Plans for
Use in Making Incremental Dental Positioning Adjust-
ment Appliances, the Appliances Made Therefrom, and
Methods of Making Same, Inv. No. 337-TA-833, USITC
Pub. No. 531073 (Apr. 3, 2014). We take no position on
the merits of the Commission’s opinion in the ’833 Inves-
tigation.
6 ALIGN TECHNOLOGY, INC. v. ITC
Commission then instituted an investigation against six
respondents (hereinafter, Intervenors): ClearCorrect
Operating, LLC (hereinafter, ClearCorrect USA),
ClearCorrect Pakistan (Private), Ltd. (hereinafter,
ClearCorrect Pakistan), Mudassar Rathore, Waqas
Wahab, Nadeem Arif, and Asim Waheed. 77 Fed. Reg.
25747 (May 1, 2012).
ClearCorrect USA is the successor of ClearCorrect
Systems, LLC—a company formed by one of OrthoClear’s
customers shortly after OrthoClear ceased its operations
and transferred its intellectual property and customers’
patients to Align. The new complaint alleged that
ClearCorrect USA works with ClearCorrect Pakistan to
provide infringing dental aligners: specifically, that
ClearCorrect Pakistan creates in Pakistan the digital
data sets used to create the molds on which the aligners
are formed, while ClearCorrect USA manufactures and
sells aligners in the United States. The complaint also
alleged that ClearCorrect Pakistan imports the digital
data sets by electronic transmission to ClearCorrect USA.
J.A. 7699 ¶¶ 94–95. 3
According to Align, Intervenors had violated the Con-
sent Order by importing into the United States, offering
for sale, or selling for importation digital data sets used to
manufacture dental aligners in the United States, and
that those acts (1) used Align’s trade secrets and (2)
induced or contributed to the infringement of certain
3 Align maintains that “‘digital data sets’ are repre-
sentative of and include all types of relevant data and
information, including digital models, digital data and/or
treatment paths.” J.A. 7683. According to Align, “[e]ach
of the initial, incremental, and final tooth positions, is
stored as a digital data set.” Id. at 7691.
ALIGN TECHNOLOGY, INC. v. ITC 7
claims of Align’s patents. 4 Id. at 7698–99 ¶¶ 90–91.
Align also alleged that Intervenors should be liable for
aiding and abetting the same acts, id. at 7700–01 ¶ 102,
and that ClearCorrect USA and ClearCorrect Pakistan
were each a “successor, assign, or agent” of the original
OrthoClear respondents, id. at 7686 ¶ 24, 7687 ¶ 31. The
named individuals were allegedly “former ‘officers, direc-
tors, agents, servants, [or] employees’ of various Ortho-
Clear entities.” Id. at 7684.
The Commission instituted the investigation and, in
its Notice of Institution (Notice), recommended that the
ALJ “may wish to consider” a threshold issue: “whether
the accused digital datasets identified in the enforcement
complaint . . . are within the scope of the articles covered
by the consent order.” Certain Incremental Dental Posi-
tioning Adjustment Appliances and Methods of Producing
Same (“Dental Appliances”), Inv. No. 337-TA-562, 77 Fed.
Reg. 25747 (May 1, 2012). The Notice also stated that the
ALJ’s decision “should be issued in the form of an initial
determination (‘ID’) under Commission Rule 210.42(c), 19
C.F.R. § 210.42(c).” Id. Following the Commission’s
Notice, the ALJ ordered initial briefing of the issue identi-
fied by the Commission. J.A. 16173.
In response to the ALJ’s order, Intervenors filed a mo-
tion to terminate the enforcement proceeding, arguing
that the accused conduct did not fall within the scope of
the Consent Order. Align and the Commission’s investi-
4 Asserted claim 1 of the ’511 patent is directed to a
“computer-implemented method for segmenting an ortho-
dontic treatment path into segments,” and asserted
claims 1 and 3 of the ’880 patent are directed to a “method
for making a predetermined series of dental incremental
position adjustment appliances” using “digital data
set[s].”
8 ALIGN TECHNOLOGY, INC. v. ITC
gative attorney each filed briefs disagreeing with Interve-
nors’ position.
Rather than issuing an “initial determination,” the
ALJ issued Order No. 57, finding that “[t]he accused
digital datasets identified in the enforcement complaint
are . . . within the scope of the term ‘articles manufac-
tured’ as that term appears in the Consent Order.” J.A.
27024; id. at 66. The ALJ therefore denied Intervenors’
motion to terminate and scheduled the trial to begin on
January 7, 2013. Id. at 28575.
Intervenors sought the Commission’s review of Order
No. 57, and Align and the Office of Unfair Import Investi-
gations (“OUII”) Staff opposed the petition for review. Id.
at 66. Both Align and OUII Staff argued that the ALJ
correctly interpreted the Consent Order. Id. at 27280–87,
27538. But, in addition, Align argued that the Commis-
sion should also deny review because Order No. 57 was a
non-final order, not subject to review by the Commission
unless Intervenors moved for interlocutory appeal, which
they did not. Id. at 27275–79. Specifically, Align identi-
fied two reasons why Order No. 57 was non-reviewable:
(1) it did not have the elements of an initial determination
required by 19 C.F.R. § 210.42(d); and (2) it did not ter-
minate the investigation but merely denied Intervenors’
motion for termination, which was an interlocutory deci-
sion under 19 C.F.R. § 210.42(c). See J.A. at 27275–79.
The Commission ultimately concluded that Order No.
57 constituted an “initial determination,” and thus was
subject to its review. Id. at 87–90. Noting that its initial
Notice had indicated that the ALJ’s resolution of this
threshold issue “should be issued in the form of an initial
determination,” the Commission treated Order No. 57 as
such. Id. at 88.
In January 2013, the Commission reversed Order No.
57 and terminated the enforcement proceeding. Dental
Appliances, 78 Fed. Reg. 2282, 2282–83 (Jan. 10, 2013).
ALIGN TECHNOLOGY, INC. v. ITC 9
It concluded that the accused digital data sets were not
covered by the scope of the Consent Order “because the
subject consent order did not contain an express provision
prohibiting the electronic transmission of data.” Id. at
2283.
The Commission’s opinion confirmed that “it has ju-
risdiction and authority to reach digital data that are
electronically transmitted to a recipient in the United
States.” Id. at 69. But it reasoned that when it exercised
this authority in the past, its remedial orders specifically
covered digital data. Id. at 70. The opinion identified two
instances where the remedial order expressly referred to
electronically transmitted data, both involving cease-and-
desist orders: Certain Hardware Logic Emulation Systems
and Components Thereof (“Hardware Logic”), Inv. No.
337-TA-383, USITC Pub. No. 46647 at 3 (Dec. 3, 1997),
and Certain Systems for Detecting and Removing Viruses
or Worms, Components Thereof, and Products Containing
Same (“Viruses”), Inv. No. 337-TA-510, USTIC Pub. No.
236092 at 3 (Aug. 8, 2005). The Commission remarked
that “[t]he inclusion of electronic transmissions in the
cease and desist orders was a purposeful choice,” and,
because consent orders are enforced like cease-and-desist
orders, the “absence of such language in this specific
context indicates that electronic transmissions are not
covered.” J.A. 72. Consequently, the Commission held
that “in cases in which electronic transmissions are at
issue, if an order does not specifically reference electronic
transmissions, then the order does not cover such impor-
tations.” Id.
Reviewing the Consent Order at issue in this case, the
Commission observed that it “does not contain any such
explicit provision” and “never mentions electronic trans-
mission.” Id. Accordingly, it held that the Consent Order
“does not prohibit such transmissions” and, thus, that
Intervenors’ importation of digital data sets into the
United States did not violate the Consent Order. Id. at
10 ALIGN TECHNOLOGY, INC. v. ITC
72–73. The Commission declined to reach the question of
whether the term “articles manufactured,” as used in the
Consent Order, “include[d] digital datasets.” Id. at 72.
Align appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(6) and 19 U.S.C. § 1337(c).
II. DISCUSSION
A. Commission’s Review of Order No. 57
Our review of the Commission’s determinations is
governed by the Administrative Procedure Act. See 19
U.S.C. § 1337(c); see also John Mezzalingua Assocs., Inc.
v. Int’l Trade Comm’n, 660 F.3d 1322, 1334 (Fed. Cir.
2011). We must set aside any findings or conclusions of
the Commission that are “arbitrary, capricious, an abuse
of discretion, or otherwise not in accordance with law.”
5 U.S.C. § 706(2)(A). The Commission has broad authori-
ty to issue rules and regulations governing administration
of its cases, but “[i]t is a familiar rule of administrative
law that an agency must abide by its own regulations.”
Ford Stewart Sch. v. Fed. Labor Relations Auth., 495 U.S.
641, 654 (1990) (citations omitted). Because the Commis-
sion circumvented its own rules without waiving, sus-
pending, or amending them, we find that its review of
Order No. 57 was “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law.”
At the time of the orders in question, the Commis-
sion’s Rules of Practice and Procedure, 19 C.F.R. § 210.1,
et seq., explicitly distinguished between rulings by the
ALJ that must be issued as “initial determinations” and
those that must be issued as “orders.” The rules stated
that the ALJ’s rulings on motions “may not be appealed to
the Commission prior to the administrative law judge’s
issuance of an initial determination,” unless the require-
ments for interlocutory review are satisfied. See 19 C.F.R.
§ 210.24 (emphasis added). Rule 210.42(c) requires that
the ALJ “shall grant the following types of motions by
issuing an initial determination or shall deny them by
ALIGN TECHNOLOGY, INC. v. ITC 11
issuing an order.” 19 C.F.R. § 210.42(c) (2011) (emphasis
added).
One of the types of motions covered by Rule 210.42(c)
is a motion for termination. 5 See id. Because Intervenors
filed a motion for termination under 19 C.F.R. § 210.21,
which the ALJ denied, the ALJ properly denied that
motion via an order required by Rule 210.42(c), not as an
initial determination.
Whether an ALJ’s ruling issues as an initial determi-
nation or an order is important because it determines
whether the Commission may review the ALJ’s decision.
The ITC’s regulatory regime contemplates that an ALJ’s
grant of certain kinds of relief, such as to terminate a
proceeding or permit a party to intervene, justifies imme-
diate Commission review. But, at the same time, the
regulations treat the denial of such requests for relief as
not warranting immediate review. Moreover, the regula-
tions provide a mechanism for interlocutory review of
Order No. 57 that Intervenors could have used, but did
not. 6 Therefore, the rules clearly prohibited the Commis-
sion from reviewing orders like this one.
5 Among the other types of motions listed in Rule
210.42(c) are: a motion to amend the complaint or notice
of investigation; a motion for a finding of default; a motion
for summary determination; a motion for intervention; a
motion to suspend an investigation; a motion for forfei-
ture or return of respondents’ bonds; and a motion to set a
target date exceeding 15 months. 19 C.F.R. § 210.42(c)
(2011).
6 The interlocutory review process permits appeals
to the Commission with leave of the ALJ, if the ALJ
determines, “in writing, with justification in support
thereof, that the ruling involves a controlling question of
law or policy as to which there is substantial ground for
12 ALIGN TECHNOLOGY, INC. v. ITC
The Commission exceeded its authority by reviewing
the order below. The ALJ issued an order (not an initial
determination) denying (not granting) Intervenors’ motion
to terminate the investigation. This order was not subject
to Commission review under Rule 210.24.
On appeal, the Commission contends that it has dis-
cretion to construe the order as an initial determination,
but this is not so: the rules expressly state that denials of
motions to terminate must be issued as non-reviewable
orders. The Commission’s regulations explicitly define
which ALJ decisions should be considered orders, and
decisions denying motions to terminate fall in the latter
category.
The Commission is certainly capable of identifying
particular types of ALJ decisions that constitute an initial
determination for purposes of Commission review. See,
e.g., 19 C.F.R. § 210.51(a) (providing that an order setting
a target date for completion of the investigation will be
considered an order unless the target date exceeds 16
months from when the investigation was instituted, in
which case it will be considered an initial determination).
By contrast, Rule 210.42(c)—the rule the Commission
invoked in its Notice—allows no such distinction.
The 2013 amendments to Rule 210.42(c), which do not
apply to the present proceeding, further support this
interpretation. New Rule 210.42(c)(1) is similar to the
2011 version with both versions mandating that the
difference of opinion, and that either an immediate appeal
from the ruling may materially advance the ultimate
completion of the investigation or subsequent review will
be an inadequate remedy.” 19 C.F.R. § 210.24(b)(1). The
Commission also has discretion to entertain an interlocu-
tory appeal without leave of the ALJ in limited circum-
stances not applicable here. Id. § 210.24(a)(1)–(2).
ALIGN TECHNOLOGY, INC. v. ITC 13
denial of motions to terminate an investigation shall be
accomplished by an order, not an initial determination.
19 C.F.R. § 210.42(c)(1) (effective May 20, 2013); see also
78 Fed. Reg. 23474, 23484 (Apr. 19, 2013). Notably, the
2013 amendments designated the denial of certain types
of motions—but not motions for termination of an investi-
gation—as an initial determination. See 19 C.F.R.
§ 210.42(c)(2) (effective May 20, 2013) (allowing an ALJ to
grant or deny by initial determination motions for forfei-
ture or return of respondents’ bonds, or motions for forfei-
ture or return of complainants’ temporary relief bonds).
The amendments left unchanged, however, the manner in
which the ALJ must resolve motions to terminate an
investigation.
Commission precedent also reflects that the Commis-
sion has historically declined to treat orders denying
motions for summary determinations as initial determi-
nations. See, e.g., Certain Integrated Circuits, Chipsets,
and Prods. Containing Same Including Television (“Inte-
grated Circuits”), Inv. No. 337-TA-786, USITC Pub. No.
461450 at 2–3 (Oct. 13, 2011) (reviewing only portion of
ALJ’s decision granting motion and refusing to review
portion denying motion, observing that “the portion of
[the ALJ’s] Order No. 7 denying the motion to terminate
is not part of the subject ID,” because Rule 210.42(c)
mandates that “the ALJ shall issue a grant of summary
determination as an ID”); Certain Probe Card Assemblies,
Components Thereof and Certain Tested Dram and Nand
Flash Memory Devices and Prods. Containing Same, Inv.
No. 337-TA-621, USITC Pub. No. 316370 at 2 (Dec. 22,
2008) (admonishing ALJ’s order, purporting to be an
initial determination, because order “is not properly
designated as an ID since it relates exclusively to the
issue of remedy” and that “Rule 210.42(a) provides that
the question of remedy shall be addressed in a recom-
mended determination”); Certain Mobile Telephone Hand-
sets, Wireless Comm’n Devices, and Components Thereof,
14 ALIGN TECHNOLOGY, INC. v. ITC
Inv. No. 337-TA-578, 2010 WL 1436458, at *16 (U.S.I.T.C.
Dec. 12, 2007) (recognizing that one portion of the ALJ’s
decision “was not reviewed by the Commission since [it]
stemmed from a denial of summary determination and
therefore was not an initial determination”).
Despite the clear language of its rules and its prece-
dent enforcing those rules, the Commission argues that
the Notice superseded its rules by redefining initial
determinations for purposes of this proceeding to include
a denial of a motion to terminate the proceeding. The
Commission may supersede its rules only by waiver,
suspension, or amendment of the regulation. 19 C.F.R.
§ 201.4(b) (“Rules in this chapter may be amended,
waived, suspended, or revoked by the Commission only.”).
Waiver or suspension can be invoked only “when in the
judgment of the Commission there is good and sufficient
reason therefor.” 19 C.F.R. § 201.4(b).
The Commission maintains that identifying and re-
solving threshold issues is “good and sufficient reason” for
waiving Rule 210.42(c). But the Commission did not
articulate below any reason, let alone “good and sufficient
reason,” to waive the regulation. In fact, there is no
evidence in the record that the Commission intended to
invoke its waiver rule. Cf. Changzhou Wujin Fine Chem.
Factory Co. v. United States, 701 F.3d 1367, 1377 (Fed.
Cir. 2012) (“The grounds upon which an administrative
order must be judged are those upon which the record
discloses that its action was based.”) (quoting SEC v.
Chenery Corp., 318 U.S. 80, 87 (1943)). The reasoning
offered by the Commission on appeal appears to be im-
proper post hoc rationalization. See Burlington Truck
Lines, Inc. v. United States, 371 U.S. 156, 168 (1962)
(“The courts may not accept appellate counsel’s post hoc
rationalizations for agency action; . . .”); Action on Smok-
ing & Health v. C.A.B., 713 F.2d 795, 799 n.2 (D.C. Cir.
1983) (“When the required explanation of the agency’s
action is totally absent, or ‘palpably inadequate,’ it is
ALIGN TECHNOLOGY, INC. v. ITC 15
difficult to see how a subsequent explanation by the
agency on remand could be characterized as anything
other than a wholly post hoc rationalization.”). The
Commission had two chances to invoke waiver or suspen-
sion under Rule 201.4(b)—first, in its Notice, second,
after Align argued that Order No. 57 was not an initial
determination—but did not do so.
When the Commission deemed Order No. 57 to be an
initial determination, it did not explain why it had good
cause to waive Rule 210.42(c) or cite Rule 201.4(b)’s
waiver provisions. The Commission cited only Part 210,
(not Part 201), as “the authority for the Commission’s
determination.” J.A. 89, 62. Indeed, the Commission
itself has rejected the argument that identical language in
another Notice operated to waive Rule 210.42(c). Inte-
grated Circuits, USITS Pub. No. 461450 at 2–3 (observing
that “since the portion of [the ALJ’s] Order No. 7 denying
the motion to terminate is not part of the subject ID, the
Commission declines to consider” the petition for review,
citing Rule 210.42(c), which provides that “the ALJ shall
issue a grant of summary determination as an ID” and,
citing 19 C.F.R. § 210.43(a), “a party may request review
of an ID,” but not of an interlocutory non-final order)
(emphasis added).
Alternatively, the Commission alleges that the ALJ
“mistakenly issued” its decision as an order. Appellee’s
Br. 21. We disagree. Nothing in the record suggests that
the ALJ made a mistake. This is not a case of merely
mislabeling the title as an order because Order No. 57
does not bear any of the hallmarks of an initial determi-
nation. Rule 210.42(d) requires that initial determina-
tions include specific information, including “a statement
that, pursuant to § 210.42(h), the initial determination
shall become the determination of the Commission unless
a party files a petition for review of the initial determina-
tion pursuant to § 210.43(a) or the Commission, pursuant
to § 210.44, orders on its own motion a review of the
16 ALIGN TECHNOLOGY, INC. v. ITC
initial determination or certain issues therein.” Order
No. 57 contains no such statement.
We also do not read Order No. 57 as being incon-
sistent with the Commission’s Notice. Rather, it appears
to us that the ALJ complied with the Notice, which mere-
ly stated that the ALJ “may wish to address” this thresh-
old issue and that its decision “should be issued in the
form of an initial determination (‘ID’) under Commission
rule 210.42(c).” 77 Fed. Reg. at 25747. The ALJ complied
with “Commission rule 210.42(c)” by denying the motion
to terminate the investigation via an order. So it also
complied with the Commission’s Notice.
While we are cognizant that resolving potentially dis-
positive issues at the outset of the investigation may be
advantageous, that goal cannot trump the need for the
Commission to follow its own rules and regulations,
absent identifying sufficient grounds for waiver or sus-
pension of those rules. Had the ALJ granted Intervenors’
motion to terminate the investigation, that decision would
have been issued as an initial determination under Rule
210.42(c), and the Commission could have properly re-
viewed that initial determination under Rule 210.24,
thereby resolving the threshold issue early, as it desired.
Or, had Intervenors properly sought interlocutory review,
the Commission could have reviewed Order No. 57.
But under these circumstances, the Commission can-
not circumvent its own rules. If it desires to do so, Rule
201.4(b) gives it broad authority to waive, suspend, or
even amend its rules, none of which happened here. Until
it does, its rules are binding and the Commission must
follow them. See United States v. Nixon, 418 U.S. 683,
696 (1974) (noting that even when an agency could
“amend or revoke the regulation defining [its] authority,”
ALIGN TECHNOLOGY, INC. v. ITC 17
so long as the rule “remains in force the [agency] is bound
by it” and a court “is bound to respect and to enforce it”). 7
B. Interpretation of Consent Order
Because the Commission erred in reviewing Order No.
57, addressing Align’s arguments on the Commission’s
interpretation of the Consent Order may be premature.
But the Commission may invoke waiver of Rule 210.42(c)
properly on remand, propelling this case back to us with-
out the errant procedural flaw but otherwise substantially
unchanged. The interests of judicial efficiency, therefore,
compel us to note that, should the Commission again rely
on its allegedly established practice of requiring remedial
orders to explicitly mention digital data for it to be cov-
ered, we do not find that reasoning persuasive. 8
The Commission here concluded that even though it
has jurisdiction and authority, as a general matter, over
the importation of digital data through electronic trans-
missions, it has a historic practice of requiring that cease-
and-desist orders explicitly reference digital data, and
this practice both logically extended to consent orders and
7 Because the Commission did not exercise its au-
thority to waive or suspend Rule 210.42(c), we need not
consider whether Align was substantially prejudiced. See
Am. Farm Lines v. Black Ball Freight Serv., 397 U.S. 532,
539 (1970).
8 We assume, for purposes of this opinion, that the
Commission has statutory authority to exclude the impor-
tation of digital data that enters the United States
through electronic transmission. Indeed, the Commission
believed that it would have had such authority in this
case had the Consent Order expressly referenced it. Id. at
69. But we take no position on whether Section 337
permits the Commission to exclude such importations.
18 ALIGN TECHNOLOGY, INC. v. ITC
put the public on notice as to this requirement. J.A. 69–
72.
Based on the authority cited by the Commission, we
do not see that any established practice exists, and that
whatever practice did exist is not sufficient to place the
public on notice. The only two cease-and-desist orders
that the Commission can point to included simply a brief
parenthetical notation prohibiting electronic transmis-
sions, without any representation that the notation was
required or was somehow necessary for consent orders as
well. See Hardware Logic, USITC Pub. No. 46647 at 3
(Dec. 3, 1997) (prohibiting “transfer (including electroni-
cally)”); Viruses, USITC Pub. No. 236092 at 3 (Aug. 8,
2005) (prohibiting “import (including electronically)”). 9
While the two orders do refer to electronic transfers or
imports, neither indicates that it was critical to do so.
Therefore, we do not find that these cases somehow
created an established practice sufficient to put the public
on notice.
CONCLUSION
For these reasons, we vacate the Commission’s deci-
sion and remand for further proceedings, consistent with
this opinion. 10
VACATED AND REMANDED
9 In fact, the Commission’s own staff did not under-
stand Hardware Logic and Viruses to articulate such a
rule. See J.A. 27725.
10 We do not address whether “any other articles
manufactured” in the Consent Order covers the accused
digital data sets. The Commission took no position on
this issue, J.A. 72, and we do not sit to review what the
Commission has not decided, Beloit Corp. v. Valmet Oy,
742 F.2d 1421, 1423 (Fed. Cir. 1984).