On July 6, 2012, the Federal Circuit issued an order in General Electric Co.  v. ITC, (2010-1223) granting the ITC’s petition for panel rehearing for the “limited purpose of withdrawing Part III of the opinion.”  This was originally an appeal from the Commission’s decision finding no violation under Section 337 in Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641).  See our October 29, 2009 and March 5, 2010 posts for more details.

By way of background, the Complainant in this investigation is General Electric Co. (“GE”) and the Respondents are Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power System, Inc. (collectively, “MHI”).  GE alleged a violation of Section 337 with respect to U.S. Patent Nos. 7,321,221 (the ‘221 patent), 5,083,039 (the ‘039 patent) and 6,921,985 (the ‘985 patent) and MHI’s variable speed wind turbines and the specialized power circuits that allow them to safely adapt to modern power grids.

The Federal Circuit previously issued a precedential opinion in this case affirming the determination of no infringement in relation to the ’221 patent, but reversing the Commission’s finding that GE had not established a domestic industry with respect to the ‘985 patent.  The Federal Circuit remanded the case to the ITC for further proceedings with respect to the ‘985 patent.  The ‘039 patent issues were deemed moot due to its expiration.  See our March 1, 2012 post for more details.

In its earlier opinion, the Federal Circuit discussed the Commission’s practice of noticing certain issues of an ALJ’s initial determination for review, but taking no position on these issues in its final determination (as it did in this case with respect to the ‘985 patent).  According to the earlier opinion, it was the Commission’s position that these other issues decided by the ALJ “are not subject to judicial review because they are not a Commission determination.”  The implication of the Commission’s position being “that when the full Commission does not review an issue that it noticed for review, that issue is removed from access to judicial review.”

In the now withdrawn Part III of its earlier opinion, the Federal Circuit had dismissed the Commission’s argument as conflicting with statutory and regulatory provisions and as an improper reading of the law established by Beloit Corp. v. Valment Oy, 742 F.3d 1421, 1423 (Fed. Cir. 1984).  To summarize, the Court concluded that all items are subject to judicial review, even those noticed and not determined by the Commission.  See our April 23, 2012 post for a more detailed discussion of Beloit and the implications of the Court’s earlier opinion.

In its July 6, 2012 order, the Federal Circuit has reissued its earlier opinion removing all discussion of judicial review of noticed but not determined issues.  Although the order states “the panel offers no decision on the questions raised in Part III” and that these issues “may arise in a future case,” the dissent by Judge Newman considers the opinion withdrawal as “ratif[ication] of the Commission’s authority to negate the finality of these final decisions” and removing any chance of judicial review.  According to Judge Newman, it is this approach that will substantially lengthen proceedings at the ITC and on appeal, rather than the Commission’s requirement to decide every issue noticed.  In her dissent, Judge Newman elaborates on the content of the now-withdrawn Part III of the Court’s earlier opinion, and concludes that by not addressing the issue “the disservice to the parties and the public looms large, and the benefit to the Commission is elusive.”  Judge Newman ends her dissent by urging the Court to take the case en banc to resolve the question of whether judicial review is available for issues noticed but not determined by the Commission.