Issue 248 | October 20, 2004
ITC General Exclusion Order Enforcement Authority Upheld, But Must Allow New Invalidity Defenses

In Vastfame Camera, LTD., et al. v. International Trade Commission, et al. (October 7, 2004) the Federal Circuit upheld the ITC's authority to conduct enforcement proceedings for exclusion orders against parties that were not named as respondents in the original investigation.

"While no statutory provision of § 1337 expressly refers to enforcement proceedings, § 1337(b) gives the Commission general authority to investigate violations of the statute. Section 1337(b)(1) provides, "The Commission shall investigate any alleged violation of this section on complaint under oath or upon its initiative." Section 1337(b), by its language, is not limited to initial complaints and authorizes the Commission to conduct proceedings, including proceedings for the enforcement of general exclusion orders, to "investigate any alleged violation of this section on complaint under oath. . . ." In this case, the Commission began its investigation as a result of Fuji's complaint. The statute further provides that "the Commission shall publish notice thereof in the Federal Register," 19 U.S.C. § 1337(b)(1). Consistent with this requirement, the Commission, in this case, published notice of its investigation in the Federal Register. Although the Commission seeks to avoid basing its enforcement proceeding on § 1337(b), we hold that the Commission has authority to conduct proceedings to enforce general exclusion orders, and that its authority to conduct such proceedings arises under and is subject to the provisions of § 1337(b). Those paries must also be allowed to present their own defense, including challenges to the validity of the patent.

However, unlike district court injunctions that are generally limited to the parties entering appearances before the court, a general exclusion order broadly prohibits entry of articles that infringe the relevant claims of a patent without regard to whether the persons importing the articles were parties to the investigation that led to issuance of the exclusion order. Furthermore, the court concluded, the statute provides that "All legal and equitable defenses may be presented in all cases," not just new investigations under § 1337(b). The court therefore concluded that non-respondent participants in an enforcement proceeding under § 1337(c) must be permitted to raise defenses, including invalidity of the patent.

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