Section 337 (19 U.S.C. §1337) provides for review of ITC final determinations by the Federal Circuit pursuant to Section 706 of the Administrative Procedure Act (“APA”), chapter 7 of title 5 of the U.S. Code. Section 706 of the APA in turn sets forth the scope of review of an agency decision as follows:

To the extent necessary to decision and when presented, the reviewing court shall decide all relevant questions of law, interpret constitutional and statutory provisions, and determine the meaning of applicability of the terms of an agency action.

In two recent cases, the ITC has argued to the Federal Circuit in petitions for panel rehearing or rehearing en banc that the Court should not decide Section 337 appeals on issues not presented by the parties. The first case involved the Federal Circuit’s decision in Vizio, Inc. v. International Trade Commission, 605 F.3d 1330, 1339-40 (Fed. Cir. 2010). In that case the Federal Circuit panel majority was said to have sua sponte raised and decided a claim construction issue abandoned by Appellants and not presented on appeal. The ITC argued that in so doing, the panel majority overlooked the express language of 5 U.S.C. §706 that restricts appellate review to issues “when presented” to the court.

The ITC described in its petition how in the proceedings before the ITC, the ALJ had determined that the term “suitable for use” in the claim at issue (claim 23 of U.S. Patent No. 6,115,074) should be given its ordinary meaning, and rejected Appellants’ contention that “suitable for use” should be construed to require actual use of the channel map. The ALJ then found that the claim reads on Appellants’ work-around products. The ITC argued that Appellants did not appeal this claim construction. Instead, Appellants framed the work-around issue for the Court as strictly a factual infringement question and did not argue to the Court that the Commission incorrectly construed “suitable for use.”

In its petition, the Commission observed that nevertheless, the Court decided, as a matter of claim construction, that “suitable for use” should not be given its ordinary meaning, but instead requires infringing digital televisions (DTVs) to be capable of using (i.e., programmed to use) all the information in a “Virtual Channel Table” (VCT), thereby exceeding the scope of the appeal.

The ITC argued that under the proper standard of APA review, the ITC’s infringement ruling should have been reviewed under the substantial evidence test, citing Finnegan Corp. v. USITC, 180 F.3d 1354, 1361 (Fed. Cir. 1999). By transforming an argument to which the ITC would be afforded deference (infringement) into one to which no deference is owed (claim construction), the ITC asserted that the panel overlooked the ITC’s fact-finding authority. The Court, however, rejected this argument, declining to undertake a panel rehearing or a rehearing en banc in the case.

A similar issue has surfaced again in General Protecht Group, Inc. et al., v. ITC, Appeal Nos. 2009-1378, -1387, -1434. In this case, the Court’s majority panel reversed the ITC’s holding of infringement and held that certain accused devices did not satisfy the claim limitation requiring that the device contain a circuit configured to generate a predetermined signal in response to detecting a proper wiring condition. The dissent (Circuit Judge Newman) noted that neither the construction of “generate” nor the effect of that term on infringement was raised on appeal (not in briefing or oral argument) or below (not before the ALJ or Commission). The Appellee in the case (Complainant in the ITC case) thereafter submitted a petition for panel rehearing or rehearing en banc, arguing that the Court improperly decided the case on grounds not raised on appeal – particularly asserting that the claim term “generate” was neither contested nor asserted as a basis of non-infringement. The ITC has been requested by the Federal Circuit to submit a brief in response to Appellee’s request for rehearing. It is expected that the ITC will once again assert that the Court should refrain from deciding Section 337 appeals on issues “not presented” by the parties on appeal.