An Ill Wind Blows UpdateGeneral Electric v. Int’l Trade Comm’n, No. 2012-1223 (Fed. Cir. Jul. 6, 2012) (Judges Rader, Newman and Linn) (revised opinion)

General Electric v. Int’l Trade Comm’n, No. 2012-1223 (Fed. Cir. Jul. 6, 2012) (Judges Rader, Newman and Linn) (order on petition for rehearing)

A few months ago, Matt Levy blogged about this case and explained that the Federal Circuit had changed International Trade Commission (ITC) practice. The original opinion held that when the Commission notices an issue for review in a Section 337 case but doesn’t decide it, the Administrative Law Judge’s initial determination on that issue is considered adopted and appealable to the Federal Circuit. In that post, Matt wondered how the ITC would respond.

Well, the ITC wasn’t thrilled. It asked the Federal Circuit for a panel rehearing and a rehearing en banc. This time, Chief Judge Rader and Judge Linn from the original panel granted the ITC’s petition, but only to withdraw Part III of the original opinion—the section in which the court changed the rules about appealable issues. The court issued a revised opinion omitting that section.

Judge Newman, the other judge on the panel and the author of the original opinion, dissented from the order. Judge Newman’s dissent reiterated the points raised in Part III. Her main concerns were that “Beloiting” an issue—the shorthand for this “no appealable issue” situation (named after the case from which the approach stems)—deprives parties of an opportunity for full resolution of patent validity and infringement issues, and it unnecessarily draws out the litigation because multiple appeals might be required to address all the issues. To her, the costs outweigh the benefits: “The disservice to the parties and the public looms large, and the benefit to the Commission is elusive.” (See Judge Newman’s dissent at page 10.)

She concluded that the court should at least take the case en banc and get input from players in ITC practice. Although the court’s order did note that “the panel offers no decision on the questions raised in Part III,” and acknowledges that they may come up again in a future case, Judge Newman didn’t want to leave this question blowing in the wind any longer.

Was this decision an ill wind or a cooling breeze? We’d love to hear your thoughts!

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