Clearcorrect Operating, LLC v. Itc , 819 F.3d 1334 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
CLEARCORRECT OPERATING, LLC,
CLEARCORRECT PAKISTAN (PRIVATE), LTD.,
Appellants
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
ALIGN TECHNOLOGY, INC.,
Intervenor
______________________
2014-1527
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-833.
______________________
ON PETITIONS FOR REHEARING EN BANC
______________________
MICHAEL D. MYERS, McClanahan Myers Espey, LLP¸
Houston, TX, for appellants. Also represented by ROBERT
HENRY ESPEY II; GARY HNATH, PAUL WHITFIELD HUGHES,
Mayer Brown LLP, Washington, DC.
SIDNEY A. ROSENZWEIG, Office of the General Counsel,
United States International Trade Commission, Washing-
ton, DC, for appellee. Also represented by WAYNE W.
HERRINGTON, DOMINIC L. BIANCHI.
2 CLEARCORRECT OPERATING, LLC v. ITC
STEPHEN BLAKE KINNAIRD, Paul Hastings LLP, Wash-
ington, DC, for intervenor. Also represented by THOMAS A.
COUNTS, IGOR VICTOR TIMOFEYEV.
STEVEN METALITZ, Mitchell, Silberberg & Knupp,
LLP, Washington, DC, for amicus curiae Association of
American Publishers.
JONATHAN J. ENGLER, Adduci, Mastriani & Schaum-
berg, LLP, Washington, DC, for amici curiae Motion
Picture Association of America, Recording Industry Asso-
ciation of America. Also represented by THOMAS RICHARD
BURNS, JR., TOM M. SCHAUMBERG.
GEOFFREY A. MANNE, International Center for Law &
Economics, Portland, OR, for amicus curiae International
Center for Law & Economics.
ERIC JAY FUES, Finnegan, Henderson, Farabow, Gar-
rett & Dunner, LLP, Washington, DC, for amicus curiae
International Trade Commission Trial Lawyers Associa-
tion. Also represented by MATTHEW BATHON, CHARLES F.
SCHILL, Steptoe & Johnson, LLP, Washington, DC; SARAH
E. HAMBLIN, Adduci, Mastriani & Schaumberg, LLP,
Washington, DC; GOUTAM PATNAIK, GWENDOLYN
TAWRESEY, Pepper Hamilton LLP, Washington, DC.
______________________
Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,
HUGHES, and STOLL, Circuit Judges.
PROST, Chief Judge, and O’MALLEY, Circuit Judge, with
whom WALLACH, Circuit Judge, joins, concur in the denial
of the petitions for rehearing en banc.
NEWMAN, Circuit Judge, dissents from the denial of the
petitions for rehearing en banc.
CLEARCORRECT OPERATING, LLC v. ITC 3
PER CURIAM.
ORDER
Appellee International Trade Commission and inter-
venor Align Technology, Inc. each filed separate petitions
for rehearing en banc. A response to the petitions was
invited by the court and filed by the appellants ClearCor-
rect Operating, LLC and ClearCorrect Pakistan (Private),
Ltd. Several motions for leave to file amici curiae briefs
were also filed and granted by the court.
The petitions, response, and briefs of amici curiae
were referred to the panel that heard the appeal, and
thereafter were referred to the circuit judges who are in
regular active service. A poll was requested, taken, and
failed.
Upon consideration thereof,
IT IS ORDERED THAT:
The petitions for rehearing en banc are denied.
The mandate of the court will be issued on April 7,
2016.
FOR THE COURT
March 31, 2016 /s/ Daniel E. O’Toole
Date Daniel E. O’Toole
Clerk of Court
United States Court of Appeals
for the Federal Circuit
______________________
CLEARCORRECT OPERATING, LLC,
CLEARCORRECT PAKISTAN (PRIVATE), LTD.,
Appellants
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
ALIGN TECHNOLOGY, INC.,
Intervenor
______________________
2014-1527
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-833.
______________________
PROST, Chief Judge, and O’MALLEY, Circuit Judge, with
whom Circuit Judge WALLACH joins, concurring in the
denial of rehearing en banc.
We concur in the court’s denial of the petitions for re-
hearing en banc. We write briefly only to address certain
points newly raised by the dissent, none of which support
its incorrect interpretation of the statute.
First, the dissent cites a hodgepodge of other legisla-
tive enactments: a Customs Bureau duty statute, the
2 CLEARCORRECT OPERATING, LLC v. ITC
Trade Act of 1974, the Arms Export Control Act of 1976,
the Bipartisan Congressional Trade Priorities and Ac-
countability Act of 2015, and the Omnibus Trade and
Competitiveness Act of 1998. Dissent at 8–12. The
dissent’s view is that these laws illustrate Congress’s
intent to account for the advent of things like digital data
and electronic transmissions. But these wholly separate
statutory regimes have no bearing on Congressional
intent regarding Section 337; what Congress has chosen
to do in connection with a completely different statute is
of little relevance here. 1 And even if we were to accept
their relevance to this case, they would prove the opposite
1 For example, the cited decisions by the Court of
International Trade and the Department of Labor, which
interpret the Trade Act of 1974, have nothing to do with
Section 337. Dissent at 8–9. The Trade Act of 1974 was
enacted to provide assistance to domestic producers of
“articles” whose jobs were being moved abroad. The
meaning of the word “article” in this worker-protection
context is irrelevant to the question of the ITC’s jurisdic-
tion to regulate importation of articles that infringe U.S.
patents. Likewise, there can be no question that the cited
district court decision interpreting the word “defense
articles” in the Arms Export Control Act of 1976 has no
bearing on this case. Id. at 9–10. Unlike here, the word
“defense articles” in the arms context is expressly defined
as including “any item or technical data.” 22 C.F.R.
§ 120.6. And the cited decision of the Customs Bureau
was about whether software is merchandise that is statu-
torily subject to import duties. Dissent at 8. That deci-
sion has nothing to do with Section 337’s regulation of
imported articles that infringe U.S. patents; indeed, the
Customs Bureau’s tasks do not even include making
determinations regarding importation of infringing arti-
cles.
CLEARCORRECT OPERATING, LLC v. ITC 3
of the dissent’s point—namely, that when Congress
wanted to bridge the gap between the non-digital world
and the digital world, it did so affirmatively. Congress’s
failure to do so here supports the conclusion drawn by the
panel majority, not the dissent. Moreover, the dissent is
wrong to suggest that it falls on us to change the law in
order to address changing times. Id. at 6–7. Any action
on that front must be taken by Congress, not us. Sony
Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417,
430–31 (1984) (“[A]s new developments have occurred in
this country, it has been the Congress that has fashioned
the new rules that technology made necessary.”); see also
Kimble v. Marvel Entm’t, LLC, 135 S. Ct. 2401, 2414
(2015) (“[T]he choice of what patent policy should be lies
first and foremost with Congress.”).
The dissent also notes that “Section 337 does not de-
pend on the mode of importation; it depends on whether
the imported good infringes a patent or copyright or
trademark or design.” Dissent at 3. The fact that some-
thing might infringe a U.S. patent is separate from the
question of whether it is an “article.” Both of these sepa-
rate statutory requirements must be met in order for the
ITC to exercise jurisdiction. 19 U.S.C. § 1337.
Finally, the dissent lists thirty definitions of “article,”
each having varying degrees of specificity. Dissent at 16
n.2. While the dissent posits that “[a]ll the definitions
define ‘article’ as distinguishing an item from its class as
a whole,” id. at 16, only a handful of its cited definitions
actually do so. And in any event, none of the dissent’s
definitions are inconsistent with defining “article” as a
“material thing.” Thus, even with all the definitions
brought in at this late stage, the dissent fails to support
its overbroad interpretation.
The panel majority was correct in interpreting the
word “articles” in Section 337 to mean “material things.”
That interpretation is the one that is mandated by the
4 CLEARCORRECT OPERATING, LLC v. ITC
plain meaning of the word, the context of 19 U.S.C.
§ 1337(a) and the entire statutory scheme, and the legis-
lative history. This court is correct to deny en banc re-
view.
United States Court of Appeals
for the Federal Circuit
______________________
CLEARCORRECT OPERATING, LLC,
CLEARCORRECT PAKISTAN (PRIVATE), LTD.,
Appellants
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
ALIGN TECHNOLOGY, INC.,
Intervenor
______________________
2014-1527
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-833.
______________________
NEWMAN, Circuit Judge, dissenting from denial of rehear-
ing en banc.
Section 337 of the Tariff Act, 19 U.S.C. § 1337, au-
thorizes the International Trade Commission to exclude
imports that infringe a United States patent, copyright,
trademark, mask work, or design. The Commission
requests rehearing en banc of the court’s ruling that
infringing digital goods that are imported electronically
are not subject to exclusion under Section 337 of the Tariff
Act. Flaws in this ruling were pointed out at ClearCor-
rect, Inc. v. Int’l. Trade Comm’n, 810 F.3d 1283, 1304
2 CLEARCORRECT OPERATING, LLC v. ITC
(Fed. Cir. 2015) (Newman, J., dissenting). I write to
elaborate on the conflicts that have been created, and to
consider the concerns raised by amici curiae. 1
The court’s decision is inconsistent with decisions of
the Supreme Court, the Federal Circuit, the Court of
Customs and Patent Appeals, the Court of International
Trade, the Tariff Commission, the Department of Labor,
the Bureau of Customs and Border Protection, the Arms
Control Export Act, and the Bipartisan Congressional
Trade Priorities and Accountability Act. I respectfully
dissent.
DISCUSSION
This court now holds that the Commission has no “ju-
risdiction” to exclude infringing digital goods that are
imported electronically. The court’s removal of this
jurisdiction conflicts with our recent decision in Suprema,
Inc. v. International Trade Commission, 796 F.3d 1338,
1350 (Fed. Cir. 2015) (en banc), wherein the court reaf-
firmed that “the legislative history [of Section 337] con-
sistently evidences Congressional intent to vest the
Commission with broad enforcement authority to remedy
unfair trade acts.” This conflict requires resolution.
The court now holds that the word “article” in Section
337 of the Tariff Act cannot include digital goods, alt-
hough “article” is the general term used throughout
judicial and agency rulings for goods in trade, including
digital goods. Digital goods are included in the tariff
1 Amicus briefs supporting rehearing were filed by
the International Trade Commission Trial Lawyers
Association, the International Center for Law and Eco-
nomics, the Motion Picture Association of America and
the Recording Industry Association of America, and the
Association of American Publishers.
CLEARCORRECT OPERATING, LLC v. ITC 3
laws; they are imported, bought, and sold; they are sub-
ject to the patent laws, and have been the subject of many
infringement suits. Infringement does not depend on
whether the digital goods are carried on a hard substrate,
or electronically.
Section 337 does not depend on the mode of importa-
tion; it depends on whether the imported goods infringe a
patent or copyright or trademark or design. The amici
curiae point out the consequences of the court’s change of
law, for infringing imports of books, motion pictures, and
other products subject to transmission in digital form.
The disruption that this ruling is already causing war-
rants en banc attention.
I
Section 337 does not distinguish between in-
fringing goods imported electronically and
infringing goods imported on a physical me-
dium
The International Trade Commission applied Section
337 to ClearCorrect’s “digital models, digital data, and
digital information,” produced by ClearCorrect’s Pakistani
affiliate and transmitted into the United States via the
Internet; the Commission found that the patents of the
complainant Align Technology were valid, and infringed
by the imported digital goods. On appeal, this court held
that Section 337 of the Tariff Act of 1930 does not include
digital goods that are electronically imported. However,
Section 337 is not so limited. The statue provides:
19 U.S.C. § 1337. Unfair practices in import
trade
(a) Unlawful activities; covered industries;
definitions.
(1) Subject to paragraph (2), the following are un-
lawful. . . .
4 CLEARCORRECT OPERATING, LLC v. ITC
***
(B) The importation into the United
States, the sale for importation, or the sale
within the United States after importation
by the owner, importer, or consignee, of
articles that—
(i) infringe a valid and enforceable
United States patent or a valid
and enforceable United States
copyright registered under Title
17, United States Code, or
(ii) are made, produced, processed,
or mined under, or by means of, a
process covered by the claims of a
valid and enforceable United
States patent.
***
(2) Subparagraphs (B), (C), (D), and (E) of para-
graph (1) apply only if an industry in the United
States, relating to the articles protected by the pa-
tent, copyright, trademark, mask work, or design
concerned, exists or is in the process of being es-
tablished.
***
Section 337 was first enacted in 1922, to aid in protecting
domestic industry against unfair competition from goods
imported into the United States. The Senate Report
states the purpose:
The provision relating to unfair methods of com-
petition in the importation of goods is broad
enough to prevent every type and form of unfair
practice and is, therefore, a more adequate protec-
tion to American industry than any antidumping
statute the country has ever had.
CLEARCORRECT OPERATING, LLC v. ITC 5
S. REP. NO. 67-595, at 3 (1922).
At the complaint of patentee Align Technologies, the
Commission conducted an investigation, reported at
Certain Digital Models, Digital Data, & Treatment Plans
for Use in Making Incremental Dental Positioning Ad-
justment Appliances, the Appliances Made Therefrom, &
Methods of Making the Same, Inv. No. 337-TA-833 (Com-
mission Opinion, April 10, 2014). The Commission found
the Align patents valid and infringed, and issued a Cease
and Desist Order against
importing (including through electronic transmis-
sion) the digital models, digital data, and ortho-
dontic plans that were found to infringe the Align
patents.
Order (April 3, 2014). On appeal, the Federal Circuit
reversed the Order, reported at ClearCorrect Operating,
LLC v. Int’l Trade Comm’n, 810 F.3d 1283 (Fed. Cir.
2015). This reversal has produced many conflicts and
concerns, warranting en banc rehearing.
The court’s ruling today is the first import distinction
depending on the carrier by which the infringing goods
are imported.
II
Precedent is uniformly at odds with this
court’s position
Our predecessor Court of Customs and Patent Ap-
peals, whose precedent binds the Federal Circuit, recog-
nized the purpose of Section 337 “to give to industries of
the United States, not only the benefit of the favorable
laws and conditions to be found in this country, but also
to protect such industries from being unfairly deprived of
the advantage of the same and permit them to grow and
develop.” Frischer & Co. v. Bakelite Corp., 39 F.2d 247,
259 (CCPA 1930). Over the decades, the International
6 CLEARCORRECT OPERATING, LLC v. ITC
Trade Commission and the CCPA implemented Section
337 “to provide an adequate remedy for domestic indus-
tries against unfair methods of competition and unfair
acts initiated by foreign concerns operating beyond the in
personam jurisdiction of domestic courts.” Sealed Air
Corp. v. Int’l Trade Comm’n, 645 F.2d 976, 985 (CCPA
1981). The Federal Circuit continued this purpose, stat-
ing in Lannom Manufacturing Co. v. International Trade
Commission, 799 F.2d 1572 (Fed. Cir. 1986), that “the
purpose of Section 337 from its inception was to provide
relief to United States industry from unfair acts, includ-
ing infringement of United States patents by goods manu-
factured abroad.” Id. at 1580.
The Supreme Court counsels that statutory law
should be adapted to its legislative purpose, in the context
of advances in technology. In Fortnightly Corp. v. United
Artists Television, Inc., 392 U.S. 390 (1968), the Court
considered “a statute that was drafted long before the
development of the electronic phenomena with which we
deal here,” stating that “[w]e must read the statutory
language . . . in the light of drastic technological change.”
Id. at 395–96.
The Court observed in Twentieth Century Music Corp.
v. Aiken, 422 U.S. 151 (1975), that although Congress did
not revise the Copyright Act of 1909 following the advent
of radio (and television), “copyright law was quick to
adapt to prevent the exploitation of protected works
through the new electronic technology.” Id. at 158. The
Court observed the “ultimate aim” of the copyright law “to
stimulate artistic creativity for the general public good,”
and stated that “[w]hen technological change has ren-
dered its literal terms ambiguous, the Copyright Act must
be construed in light of this basic purpose.” Id. at 156.
The patent laws are not limited to the technologies
that existed when the Patent Act of 1952 (or any other
patent statute) was enacted. And Section 337 is not
CLEARCORRECT OPERATING, LLC v. ITC 7
limited to the technology of 1930. Computer-implemented
digital technology was considered by the Court in Dia-
mond v. Diehr, 450 U.S. 175 (1981); and in Diamond v.
Chakrabarty, 447 U.S. 303 (1980), the Court considered
whether the Patent Act included man-made biologic
products—although neither technology easily fits the
words of any patent statute.
It is now beyond debate that digital goods are subject
to the patent law, and it is beyond debate that digital
goods can be imported; yet this court holds that infringing
digital goods are not subject to the Tariff Act if imported
electronically. The court’s ruling not only defies the
Court’s principles, but conflicts with our own precedent,
including Suprema, supra. In Lucent Technologies, Inc. v.
Gateway, Inc., 580 F.3d 1301, 1321 (Fed. Cir. 2009), this
court rejected the argument that digital goods such as
computer software are not a “material or apparatus” and
therefore not liable for contributory infringement.
The Commission’s ruling in this case is not its first
exclusion of infringing digital goods. In Certain Hardware
Logic Emulation Systems, Inv. No. 337-TA-383, USITC
Pub. 3089 (March 1, 1998) the Commission held that
“[h]aving found that respondents’ software contributorily
infringes the claims in issue, we are of the view that our
remedial orders must reach that software.” Id. at 18. In
Hardware Logic the Commission stated that “it would be
anomalous for the Commission to be able to stop the
transfer of a CD-ROM or diskette containing respondents’
software, but not be able to stop the transfer of that very
same software when transmitted in machine readable
form by electronic means.” Id. at 29.
Section 337 does not determine infringement; its pur-
pose is to regulate unfair competition by infringing im-
ports. The carrier by which the infringing imports arrive
in the United States is irrelevant. Contrary to this court’s
proposition, it is not “regulation of the Internet” to ex-
8 CLEARCORRECT OPERATING, LLC v. ITC
clude infringing digital goods. As the amici curiae point
out, this court’s ruling has consequences beyond patent
infringement, warranting our reconsideration.
The rulings of the International Trade Com-
mission comport with the rulings of the Bu-
reau of Customs and Border Protection
The Customs Bureau held in HQ 114459 (Sept. 17,
1998):
We further find that the transmission of software
modules and products to the United States from a
foreign country via the Internet is an importation
of merchandise into the customs territory of the
United States . . . .
The Customs ruling stated: “The fact that the importation
of the merchandise via the Internet is not effected by a
more ‘traditional vehicle’ (e.g., transported on a vessel)
does not influence our determination.” Id. at 2.
It is established that digital products are “goods” and
“merchandise” and that their transmission via the Inter-
net is an importation into the United States. It is estab-
lished that digital goods are subject to the patent law. No
authority has held that infringing digital goods that are
imported electronically are not subject to the laws of
infringement or of importation.
The Court of International Trade reached
the same conclusion
The Trade Act of 1974 provides Trade Adjustment As-
sistance “to workers involved in the production of an
‘article’ who lose their jobs due to increased competition
from ‘foreign articles’ or due to the shifting of production
abroad.” Former Employees of IBM Corp. v. Chao, 292 F.
App’x 902, 904 (Fed. Cir. 2008).
The Court of International Trade, interpreting the
word “article” in the Trade Act, explicitly rejected the
CLEARCORRECT OPERATING, LLC v. ITC 9
argument that software is not an “article” unless embed-
ded in a tangible medium. The court stated, “[t]he plain
language of the Trade Act does not require that an article
must be tangible.” Former Emps. of Comput. Scis. Corp.
v. U.S. Sec’y of Labor, 30 Ct. Int’l. Trade 124, 130–131,
133 (2006).
The Department of Labor reached the same
conclusion
The Department of Labor, interpreting the Trade Act
for purposes of Trade Adjustment Assistance, stated that
“[s]oftware and similar intangible goods that would have
been considered articles, for the purposes of the Trade
Act, if embodied in a physical medium will now be consid-
ered to be articles regardless of their method of transfer.”
IBM Corporation Global Services Division, Piscataway,
NJ; Middletown, NJ; Notice of Revised Determination on
Remand, 71 FR 29183-01 (May 19, 2006).
The Arms Export Control Act reached the
same conclusion
The Arms Export Control Act (originally enacted as
the Foreign Military Sales Act in 1968) prohibits the sale
or lease of a “defense article or defense service” unless
certain criteria are met. Pub. L. 90-629, § 3(a), 82 Stat.
1320, 1322 (1968) (codified at 22 U.S.C. § 2753(a)). The
President is authorized to “designate those items which
shall be considered as defense articles and defense ser-
vices.” 22 U.S.C. § 2778(a)(1). The Secretary of State,
acting by designation, defined “defense article” as “any
item or technical data designated in § 121.1 of this sub-
chapter.” 22 C.F.R. § 120.6. “Technical data” is defined to
include “[s]oftware . . . directly related to defense articles,”
as well as “information in the form of blueprints, draw-
ings, photographs, plans, instructions or documentation.”
22 C.F.R. § 120.10(a)(1), (a)(4).
10 CLEARCORRECT OPERATING, LLC v. ITC
Applying this statute to the posting to the Internet of
digital plans for 3D printing of gun parts, the court in
Defense Distributed v. U.S. Dep’t of State, 121 F. Supp. 3d
680 (W.D. Tex. 2015) (currently on appeal), observed that
digital information is within the meaning of “defense
articles.”
The Omnibus Trade and Competitiveness Act
of 1988 reached the same conclusion
In 1988 Congress reaffirmed the ITC’s authority for
unfair competition due to imports that infringe patents
and copyrights. Omnibus Trade and Competitiveness Act
of 1988, Pub. L. No. 100-418, § 1342(a), 102 Stat. 1107,
1212. The Senate Report explained:
As indicated by the scope of its language, section
337 was intended to cover a broad range of unfair
acts not then covered by other unfair import laws.
However, over the years, patent, copyright, and
trademark infringement were recognized as un-
fair trade practices within the meaning of section
337, and today section 337 is predominantly used
to enforce U.S. intellectual property rights.
S. REP. NO. 100-71, at 130 (1987). The Omnibus Trade
Act reiterated the purpose to provide “a more effective
remedy for the protection of United States intellectual
property rights” through exclusion of infringing imports.
Omnibus Trade and Competitiveness Act, supra,
§ 1341(b), 102 Stat. at 1212. This statute reinforced
reliance on Section 337 to exclude infringing imports.
The Trade Priorities and Accountability Act
of 2015 reached the same conclusion
In recent trade negotiations, Congress again rejected
a distinction between digital goods and the means by
which they are transported. The Bipartisan Congression-
al Trade Priorities and Accountability Act of 2015 covers
“digital trade in goods and services” and states that “[t]he
CLEARCORRECT OPERATING, LLC v. ITC 11
principal negotiating objectives of the United States . . .
are . . . to ensure that electronically delivered goods and
services receive no less favorable treatment under trade
rules and commitments than like products delivered in
physical form.” Pub L. No. 114-26, § 102(a)(6), (a)(6)(B)(i),
129 Stat. 320, 325 (2015).
If digital imports were intended to be excluded from
Section 337, a statutory change could have been made at
least by the Omnibus Trade and Competitiveness Act of
1988, for the digital world was burgeoning. By 1988,
copyright infringement was well understood to include
electronic transmissions; for example, during considera-
tion of the Copyright Act of 1976, the House Report stat-
ed:
The corresponding definition of “display” covers
any showing of a “copy” of the work, “either direct-
ly or by means of a film, slide, television image, or
any other device or process.” . . . In addition to the
direct showings of a copy of a work, “display”
would include the projection of an image on a
screen or other surface by any method, the trans-
mission of an image by electronic or other means .
...
H.R. REP. NO. 94-1476, at 64 (1976); see id. at 80 (“Unless
[excused under some other provision of the Copyright Act]
. . . transmission of an image to the public over television
or other communication channels, would be an infringe-
ment for the same reasons that reproduction in copies
would be.”).
Congress would not have implicitly excluded known
aspects of copyright law when it enacted the Omnibus
Trade and Competitiveness Act of 1988 without some
statement to that effect. “Congress . . . does not alter the
fundamental details of a regulatory scheme in vague
terms or ancillary provisions—it does not, one might say,
hide elephants in mouseholes.” Whitman v. Am. Trucking
12 CLEARCORRECT OPERATING, LLC v. ITC
Ass’ns, 531 U.S. 457, 468 (2001). It defies logic to suggest
that Congress intended or understood that Section 337, as
amended in 1988, would not address all forms of copyright
infringement and would exclude electronic transmissions.
The amici curiae concerned with copyright state their
concern that this court’s casual elimination of remedy for
Section 337 infringement by goods imported by electronic
transmission will have a powerful impact on the importa-
tion of books and other publications, as well as on infring-
ing digital imports of motion pictures and other
copyrighted material.
III
This entire body of interpretation shows the
understanding that “article” is not limited to
classical technology
The Customs Court, now the Court of International
Trade, explained that “the word ‘article’ is itself a nebu-
lous concept seemingly employed in the Tariff Act for the
very reason that it possesses an indefinite and neutral
meaning.” Close & Stewart v. United States, 268 F. Supp.
466, 468–69 (Cust. Ct. 1967).
Definitions of “article” in the trade context show the
word “article” as a general term for things that are im-
ported. “The word ‘articles’ when used in a tariff law
should be given a broad, liberal meaning . . . .” G.
Hirsch’s Sons v. United States, 167 F. 309, 311 (2d Cir.
1909).
The Court of Customs and Patent Appeals explained
that “the word ‘articles’ is used hundreds of times in most
tariff statutes; that Congress clearly meant it to have a
broad meaning in some provisions and a restricted mean-
ing in others; and that it has meanings varying with the
purposes to be accomplished.” D N & E Walter & Co v.
United States, 44 CCPA 144, 147 (1957). The CCPA
stated in United States v. A. Johnson & Co., 588 F.2d 297,
CLEARCORRECT OPERATING, LLC v. ITC 13
300 (CCPA 1978), that: “In some instances it [‘article’] is
used as a synonym for ‘thing’ and embraces any importa-
tion, and in other contexts it takes on a narrower mean-
ing.”
Section 337 does not define “article,” but other sec-
tions of the same Tariff Act include an express definition.
In Chevron, U.S.A., Inc. v. Natural Resources Defense
Council, Inc., 467 U.S. 837, 860 (1984) the Court looked to
an express definition in another section of the same
statute for guidance on the meaning of an undefined term,
stating: “Although the definition in that section is not
literally applicable to the permit program, it sheds as
much light on the meaning of the word ‘source’ as any-
thing in the statute.” Id. It is highly relevant that Sec-
tion 332 of the Tariff Act of 1930 states: “The term ‘article’
includes any commodity, whether grown, produced, fabri-
cated, manipulated, or manufactured.” This text also
appears in the Tariff Act of 1922, section 318(b).
The Court of Customs and Patent Appeals in 1940,
citing Webster’s New International Dictionary, explained
that, in the Tariff Act of 1930, “Congress said: ‘and paid
upon all articles when imported from any foreign country.’
Unquestionably, Congress meant, by employing that
language, to include under the word ‘articles’ any provid-
ed-for substance, material or thing of whatever kind or
character that was imported into this country.” United
States v. Eimer & Amend, 28 CCPA 10, 12 (1940).
The Supreme Court, in a case to recover duties paid
under protest under an earlier tariff statute, stated, “[i]n
common usage, ‘article’ is applied to almost every sepa-
rate substance or material, whether as a member of a
class, or as a particular substance or commodity.” Junge
v. Hedden, 146 U.S. 233, 238 (1892). The Court, review-
ing the variety of uses of the word “article” in the tariff
statutes, concluded “[w]e agree with the circuit court that
the word must be taken comprehensively.” Id. at 239.
14 CLEARCORRECT OPERATING, LLC v. ITC
The Dictionary of Tariff Information, produced by the
Tariff Commission (now the International Trade Commis-
sion), states that “[t]he word ‘article’ as ordinarily used in
tariff acts embraces commodities generally, whether
manufactured wholly or in part or not at all.” Articles,
DICTIONARY OF TARIFF INFORMATION (1924) (emphasis
added). The same dictionary also states that narrower
meanings must arise from context, not from the use of
“articles” itself: “The restricted use of the word ‘article’
has been recognized by the courts and the rule laid down
that where an intention appears from the text of the law
to give the word ‘article’ a narrower meaning than it
ordinarily has, such meaning shall be applied in the
administration of the law.” Id.
The Commission correctly construed the word
“articles”
The Commission stated that “the statutory construc-
tion of ‘articles’ that hews most closely to the language of
the statute and implements the avowed Congressional
purpose for Section 337 encompasses within its scope the
electronic transmission of the digital data sets at issue in
this investigation.” Comm’n Op. at 36. The Commission
concluded that “articles” encompassed all “articles of
commerce.” The Court defined “articles of commerce” to
include pure information, holding in Reno v. Condon, 528
U.S. 141 (2000), that the Commerce Clause applies to
interstate transmission of information in motor vehicle
records sold or released “into the interstate stream of
business.” Id. at 148.
Digital goods did not exist in 1922 and 1930. Nothing
in the statute shows an intent to omit later-discovered
technologies from Section 337. It cannot have been the
legislative intent to lock the statute into antiquity. Un-
less explicitly provided, statutes are not limited to the
circumstances at the time of enactment. See Diamond v.
Chakrabarty, 447 U.S. at 315 (“This Court frequently has
CLEARCORRECT OPERATING, LLC v. ITC 15
observed that a statute is not to be confined to the ‘partic-
ular application[s] . . . contemplated by the legislators.’”).
Section 337 was written in broad terms, with no exclu-
sions; the Commission reasonably concluded that Con-
gress did not intend to exclude new fields of technology,
and inventions not yet made, from a statute whose pur-
pose is to support invention.
Although digital goods, electronically imported, are
not mentioned in the dictionaries of the 1920s, no reason
has been shown to exclude them from the “articles” of
Section 337. The Commission reasonably and correctly
defined “articles” in Section 337 as encompassing all
articles of commerce, including digital goods and electron-
ic commerce.
This court’s reversal of the Commission based
on selections from chosen dictionaries cannot
be supported
The words and text of the Tariff Act show that Section
337 is directed to unfair trade practices in importation of
articles infringing patents, copyrights, trademarks, mask
works, and designs. Nothing in any provision of the Tariff
Act suggests an intention to limit “articles” to goods that
can be viewed with the human eye or held in the human
hand. Digital goods readily fit the purpose and the text of
the Tariff Act.
The Commission justly criticizes this court’s selection
of dictionaries. We undertook to survey the dictionaries of
the era, and found forty-five dictionaries in the Library of
Congress published between 1900 and 1930, most with
multiple definitions of “article.” We found twenty-five
different entries for the noun form of “article” and thirty
16 CLEARCORRECT OPERATING, LLC v. ITC
different definitions that could apply to the use of the
word “article” in Section 337. 2
All the definitions define “article” as distinguishing an
item from its class as a whole. As expected, the defini-
tions are generally similar; some are nearly identical.
Five of the thirty unique definitions use the word “mate-
rial” or something similar. Three use the phrase “materi-
al thing.” Nine use the word “thing,” but not “material.”
Three use the phrase “particular thing.” Six use the word
“commodity.” Six use the word “substance.” Three use
2 The thirty definitions are: “a particular thing”; “a
separate portion of a material thing”; “any particular
commodity or material substance (most frequently used of
things manufactured, or of things exposed for sale.)”; “a
distinct portion or member”; “a material thing, as one of a
class”; “an item”; “an individual piece or thing of a class
(as, an article of food or of dress)”; “a thing, indefinitely
(as, what is that article?)”; “a commodity”; “a distinct part.
Upon each article of human duty)”; “a particular commod-
ity, or substance; as, an article of merchandise; salt is a
necessary article, in common usage, this word is applied
to almost every separate substance or material”; “a par-
ticular object or substance”; “a material thing or class of
things; as, an article of food”; “something considered by
itself and as apart from other things of the same kind or
from the whole of which it forms a part”; “a thing of a
particular class or kind, as distinct from a thing of anoth-
er class or kind”; “a separate item”; “a particular commod-
ity”; “particular thing, as the next a[rticle]”; “a particular
substance”; “a particular thing or class of things”; “a
distinct part”; “a particular commodity or substance”;
“Separate element or part”; “Something considered by
itself”; “a thing of a particular class or kind”; “A separate
element, member, or part of anything”; “A distinct part or
particular”; “Item”; “a substance or commodity”; “a thing.”
CLEARCORRECT OPERATING, LLC v. ITC 17
the word “item.” Twelve use the adjective “particular” as
part of the definition. A unifying theme of all the defini-
tions is that “article” refers to one of a class of things, and
that the nature of the class is defined by context, not by
the word “article.”
In Section 337(a) the only words modifying “article”
are “importation” (“importation of articles”), “sale” (“sale
of such articles”) and “infringe” (“articles that—infringe”).
None of these words mandates a gross materiality that
would eliminate digital goods. In Section 337 the word
“articles” is unlimited in any manner that might suggest a
narrower meaning, on the customary canons of ejusdem
generis or noscitur a sociis. We can find no suggestion in
the text or context that Congress intended the word
“article” to limit Section 337 to goods or technology that
existed in 1930.
“After all, what word other than ‘articles’ could Con-
gress have used if it did want to include intangible things
within the scope of the Act?” Amicus brief of Int’l. Ctr. for
Law and Econ. at 4. A common sense reading of Section
337, along with the other statutes and regulations report-
ed supra, shows the intended breadth of these infringe-
ment/importation statutes.
The statutory authorization of the cease-and-
desist order in 1975 does not mean that digi-
tal goods are excluded from Section 337
The court states that the word “article” cannot include
digital goods because the Tariff Act’s remedies in 1930
were limited to exclusion orders. In 1975, Congress
amended the Tariff Act to add the remedy of the cease-
and-desist order for infringing imports. The Senate
Report states:
It is clear to your committee that the existing
statute, which provides no remedy other than ex-
clusion of articles from entry, is so extreme or in-
18 CLEARCORRECT OPERATING, LLC v. ITC
appropriate in some cases that it is often likely to
result in the Commission not finding a violation of
this section, thus reducing the effectiveness of sec-
tion 337 for the purposes intended.
S. Rep 93-1298 (1974), reprinted in 1974 U.S.C.C.A.N.
7186, 7331. The Report states that “[t]he power to issue
cease and desist orders would add needed flexibility.” Id.
The Report states that “[n]o change has been made in the
substance of the jurisdiction conferred under Section
337(a) with respect to unfair methods of competition or
unfair acts in the import trade.” Id. at 7327.
Even if it were not practicable to remedy digital im-
portation using the technology of 1930, this cannot mean
that digital importation by Internet is immune from the
Commission’s cease-and-desist authority.
Infringement does not vary with the carrier
into the United States
By its terms, Section 337 is limited to infringing im-
ports. Imports “are the articles themselves which are
brought into the country.” Brown v. State of Maryland, 25
U.S. 419, 437 (1827). Section 337 prohibits “importation .
. . of articles that—infringe.” The mode of importation, or
whether the article passes through a Customs port of
entry, does not matter. The Supreme Court has made
this clear:
Importation . . . consists in bringing an article into
a country from the outside. If there be an actual
bringing in it is importation regardless of the
mode in which it is effected. Entry through a cus-
toms house is not of the essence of the act.
Cunard S.S. Co. v. Mellon, 262 U.S. 100, 122 (1923).
Without doubt, electronically transmitted goods are
imported goods, whether or not exempt from import
duties. See General Note 3(e)(ii), HTSUS (2015) (Rev. 1)
CLEARCORRECT OPERATING, LLC v. ITC 19
(exempting telecommunication transmissions from import
duties); see also Former Emps., 30 Ct. Int’l. Tr. at 131
(“General Note 3(e) supports the conclusion that telecom-
munications transmissions, which would include trans-
missions of software code via the Internet, are exempt
from duty while acknowledging that they are goods enter-
ing into the customs boundaries of the United States.”).
The Customs agency agrees. See HQ 114459 (Sept. 17,
1998) (“We further find that the transmission of software
modules and products to the United States from a foreign
country via the Internet is an importation of merchandise
into the customs territory of the United States”).
Section 337 does not concern the imposition of duties
for imported software code; it concerns whether infringing
digital goods may be imported in violation of valid patents
or other property rights. This case is about international
trade, not Internet regulation.
If there were doubt about the correct inter-
pretation of Section 337, the Commission’s
reasonable interpretation requires deference
It is not disputed that the digital data sets and digital
models for teeth alignment, produced in Pakistan and
imported into the United States, infringe the patents of
Align Technology. If this court remains uncertain as to
the meaning of Section 337, the Commission’s well-
reasoned interpretation is entitled to judicial deference.
“[I]f the statute is silent or ambiguous with respect to the
specific issue, the question for the court is whether the
agency’s answer is based on a permissible construction of
the statute.” Chevron U.S.A. Inc. v. Nat. Res. Def. Coun-
cil, Inc., 467 U.S. 837, 843 (1984).
A permissible construction is one that is “rational and
consistent with the statute.” Sullivan v. Everhart, 494
U.S. 83, 88-89 (1990) (quoting N.L.R.B. v. United Food &
Commercial Workers Union, Local 23, AFL-CIO, 484 U.S.
112, 123 (1987)). “If the agency interpretation is not in
20 CLEARCORRECT OPERATING, LLC v. ITC
conflict with the plain language of the statute, deference
is due.” Nat’l R.R. Passenger Corp. v. Boston & Maine
Corp., 503 U.S. 407, 417 (1992).
The obligation of deference to the Commission’s rea-
sonable statutory interpretation has been recognized by
the Federal Circuit. E.g., TianRui Grp. Co. v. Int’l Trade
Comm’n, 661 F.3d 1322, 1332 (Fed. Cir. 2011) (“We have
held that the Commission’s reasonable interpretations of
section 337 are entitled to deference.”); Kinik Co. v. Int’l
Trade Comm’n, 362 F.3d 1359, 1363 (Fed. Cir. 2004) (“To
the extent that there is any uncertainty or ambiguity in
the interpretation of § 337(a) and its successor
§ 1337(a)(1)(B)(ii), deference must be given to the view of
the agency that is charged with its administration.”);
Enercon GmbH v. Int’l Trade Comm’n, 151 F.3d 1376,
1381 (Fed. Cir. 1998) (“As the agency charged with the
administration of section 337, the ITC is entitled to ap-
propriate deference to its interpretation of the statute.”).
“Congress cannot, and need not, draft a statute which
anticipates and provides for all possible circumstances in
which a general policy must be applied to a specific set of
facts. It properly leaves this task to the authorized agen-
cy.” Micron Tech., Inc. v. United States, 243 F.3d 1301,
1312 (Fed. Cir. 2001). To the extent that new technolo-
gies are involved in these infringing importations, defer-
ence is appropriate to the agency’s reasonable application
of the statute it is charged to administer. See Nat’l Cable
& Telecomms. Ass’n, Inc. v. Gulf Power Co., 534 U.S. 327,
339 (2002) (upholding agency interpretive authority
where the statute involved “technical, complex, and
dynamic” subject matter that “might be expected to evolve
in directions Congress knew it could not anticipate.”).
The court offers no explanation, other than to disa-
gree with the Commission, and with every other authority
that has interpreted any relevant aspect.
CLEARCORRECT OPERATING, LLC v. ITC 21
Judicial rehearing is appropriate
This court limits the Tariff Act on the theory that
Congress was unaware of digital goods in 1922 and 1930;
but the Court “frequently has observed that a statute is
not to be confined to the ‘particular application[s] . . .
contemplated by the legislators.’” Chakrabarty, 447 U.S.
at 315 (quoting Barr v. United States, 324 U.S. 83, 90
(1945)). The Chakrabarty Court explicitly rejected the
argument that because “genetic technology was unfore-
seen when Congress enacted § 101” the Court should
restrict the statute and await action by Congress. Id. at
314. The Court invoked Marbury v. Madison, 1 Cranch
137, 177 (1803), stating that “once Congress has spoken it
is ‘the province and duty of the judicial department to say
what the law is.’” Id. at 315. The Court stated that “our
obligation is to take statutes as we find them, guided, if
ambiguity appears, by the legislative history and statuto-
ry purpose.” Id.
The rehearing protocol allows a court to rethink its
decision. From my colleagues’ denial of the requests for
rehearing en banc, I respectfully dissent.