United States Court of Appeals 

for the Federal Circuit 

__________________________ 

GENERAL ELECTRIC COMPANY, 

Appellant, 

v. 

INTERNATIONAL TRADE COMMISSION, 

Appellee, 

AND

MITSUBISHI HEAVY INDUSTRIES, LTD., 

 AND MITSUBISHI POWER SYSTEMS AMERICAS, 

INC., 

Intervenors. 

__________________________ 

2010-1223 

__________________________ 

Appeal from the United States International Trade 

Commission in Investigation No. 337-TA-641. 

__________________________ 

ON PETITION FOR PANEL REHEARING 

__________________________ 

 JAMES A. WORTH, Attorney, Office of General Counsel, 

United States International Trade Commission, of Washington, DC, filed a combined petition for rehearing and 

rehearing en banc for appellee. With him on the petition 
GENERAL ELECTRIC v. ITC 2

were JAMES M. LYONS, General Counsel, and WAYNE W.

HERRINGTON, Assistant General Counsel. 

 MARK G. DAVIS, Weil, Gotshal & Manges LLP, of Washington, DC, filed a response to the petition for appellant. 

With him on the response was ANISH R. DESAI. 

__________________________

Before RADER, Chief Judge, NEWMAN AND LINN, Circuit 

Judges. 

Order for the court filed by Chief Judge RADER. Dissent 

filed by Circuit Judge NEWMAN. 

RADER, Chief Judge. 

O R D E R 

A combined petition for panel rehearing and rehearing 

en banc was filed by the International Trade Commission 

(ITC). A response was invited by the panel and filed by 

General Electric Company. The petition for panel rehearing, response, and reply were considered by the panel that 

heard the appeal. 

Upon consideration thereof, 

IT IS ORDERED THAT: 

(1) ITC’s petition for panel rehearing is granted for the 

limited purpose of withdrawing Part III of the opinion. The 

panel offers no decision on the questions raised in Part III, 

which may arise in a future case. 

(2) The previous opinion in this appeal issued February 

29, 2012 and reported at Gen. Elec. Co. v. Int’l Trade 
3 GENERAL ELECTRIC v. ITC

Comm’n, 670 F.3d 1206 (Fed. Cir. 2012), is withdrawn and 

replaced with the revised opinion accompanying this order. 

(3) The petition for rehearing en banc has been circulated to the full court. 

FOR THE COURT

July 6, 2012

Date 

/s/ Jan Horbaly

Jan Horbaly 

Clerk 
United States Court of Appeals for 

the Federal Circuit 

__________________________ 

GENERAL ELECTRIC COMPANY, 

Appellant, 

v. 

INTERNATIONAL TRADE COMMISSION, 

Appellee, 

AND

MITSUBISHI HEAVY INDUSTRIES, LTD., 

AND MITSUBISHI POWER SYSTEMS AMERICAS, 

INC., 

Intervenors. 

__________________________ 

2010-1223 

__________________________ 

Appeal from the United States International Trade 

Commission in Investigation No. 337-TA-641. 

__________________________ 

NEWMAN, Circuit Judge, dissenting from the panel action 

on rehearing. 

In its now withdrawn opinion, the court criticized the action of the International Trade Commission whereby the 

Commission removed the issues of infringement and validity 

of the ’985 patent from judicial review. These issues had 

been fully investigated, fully tried, and finally decided in the 
GENERAL ELECTRIC v. ITC 2

ITC’s Final Initial Determination and were not reviewed by 

the full Commission, thus becoming a final Commission 

decision and appealable to the Federal Circuit. Nonetheless, 

the court now grants the Commission’s request and ratifies 

the Commission’s authority to negate the finality of these 

final decisions, thereby forestalling judicial review and 

impeding the expeditious resolution of ITC proceedings, as 

required by statute and as the Commission represents to the 

public. 

The ’985 patent is one of several patents for whose infringement General Electric sought remedy in the ITC in 

accordance with 19 U.S.C. §1337. The Commission unilaterally, without prior notice, prevented completion of the Section 

337 action, even as the Commission issued the Final Determination that is the subject of this appeal. My colleagues 

now grant the Commission’s request on rehearing, and 

withdraw the court’s expression of concern for the Commission’s short-cut of its statutory obligations. I must, respectfully, dissent. 

Judicial review of ITC decisions 

The validity and infringement of the ’985 patent were 

fully litigated and decided in the proceedings before the 

administrative law judge, whose Final Initial Determination 

included extensive findings of fact and conclusions of law. 

Section 337 provides that the final decision of the ALJ is 

subject to judicial review unless superseded by a decision of 

the full Commission. My colleagues now ratify the Commission’s bar of judicial review of issues decided by the ALJ, by 

declining to “take a position” on such issues after noticing 

them for Commission review. The result is that this action, 

whose complaint was filed in 2008, cannot receive full judicial review and final resolution. We thus remand to the 

Commission for undefined further proceedings, for which one 
3 GENERAL ELECTRIC v. ITC

may be confident only of further delay, cost, and burden to 

the parties, the Commission, and this court. 

Such piecemeal actions are contrary to the purposes of 

Section 337 to provide expeditious resolution of charges of 

unfair competition in importation. Piecemeal litigation is 

also disfavored as a matter of national policy. As the Court 

stated in McLish v. Roff, 141 U.S. 661, 665-66 (1891): 

 From the very foundation of our judicial system 

the object and policy of the acts of congress in relation to appeals and writs of error . . . have been to 

save the expense and delays of repeated appeals in 

the same suit, and to have the whole case and every 

matter in controversy in it decided in a single appeal. 

This policy is manifested in appellate practice requiring 

finality of all contested issues, and the limited procedures for 

partial appeal. See Cobbledick v. United States, 309 U.S. 

323, 325 (1940): 

Since the right to a judgment from more than one 

court is a matter of grace and not a necessary ingredient of justice, Congress from the very beginning 

has, by forbidding piecemeal disposition on appeal of 

what for practical purposes is a single controversy, 

set itself against enfeebling judicial administration. 

Thereby is avoided the obstruction to just claims that 

would come from permitting the harassment and cost 

of a succession of separate appeals from the various 

rulings to which a litigation may give rise, from its 

initiation to entry of judgment. To be effective, judicial administration must not be leaden-footed. Its 

momentum would be arrested by permitting separate 

reviews of the component elements in a unified 

cause. 
GENERAL ELECTRIC v. ITC 4

Here, all of the contested issues concerning the ’985 patent, 

although tried and decided by the ALJ, were not permitted to 

be presented to this court when relevant to final decision. 

This procedure fails the requirement that Section 337 actions 

be expeditiously completed. And since, by 28 U.S.C. §1659, 

the respondent is entitled to a stay of the district court 

proceedings, as here occurred in General Electric Co. v. 

Mitsubishi Heavy Industries, Ltd., No. 2:09-cv-00229, (S.D. 

Tex.), Dkt. No. 10 (Oct. 5, 2009) (stay of proceedings), a 

patent holder with a presumptively valid patent is barred 

from independent resolution and potential remedy in the 

federal courts. The Commission’s removal from appeal of the 

finally decided issues of validity and infringement is a negation of the Commission’s responsibility to provide expeditious 

resolution of importation issues involving intellectual property rights. 

On investigation by the Commission and after full trial, 

the ALJ held that the Mitsubishi turbines infringe the ’985 

patent, that the ’985 patent is valid, and that inequitable 

conduct had not been shown. The Notice of Commission 

Determination to Review a Final Initial Determination of the 

Administrative Law Judge 74 Fed. Reg. 52,975 (Oct. 15, 

2009) stated that the Final Initial Determination would be 

reviewed by the full Commission except for the issues of 

importation and the intent element of inequitable conduct. 

That is the posture in which full Commission received the 

ALJ’s decision for review. 

As elaborated by 19 C.F.R. §210.42, the ALJ’s initial determination is subject to review by the full Commission, and 

becomes the Commission’s determination unless the Commission orders review: 

19 C.F.R. §210.42 Initial determinations. 

. . . 
5 GENERAL ELECTRIC v. ITC

(h)(2) An initial determination under §210.42(a)(1)(i) 

shall become the determination of the Commission 60 

days after the date of service of the initial determination, unless the Commission within 60 days after the 

date of such service shall have ordered review of the 

initial determination or certain issues therein or by 

order has changed the effective date of the initial determination. 

The Commission’s final determination is appealable to the 

Federal Circuit, as set forth in §1337(c): 

19 U.S.C. §1337(c) Determinations; review. 

. . . . Any person adversely affected by a final determination of the Commission under subsection (d), (e), 

(f), or (g) of this section may appeal such determination, within 60 days after the determination becomes 

final, to the United States Court of Appeals for the 

Federal Circuit for review in accordance with chapter 

7 of Title 5. 

In the Commission the “presiding employee” is the ALJ, and 

the ALJ’s decision “becomes the decision of the agency” 

unless it is superseded by an agency decision: 

5 U.S.C. §557 Initial decisions; conclusiveness; review 

by agency; submissions by parties; contents of decisions; record.

. . . 

(b) . . . When the presiding employee makes an initial 

decision, that decision then becomes the decision of 

the agency without further proceedings unless there 

is an appeal to, or review on motion of, the agency 

within time provided by rule. On appeal from or review of the initial decision, the agency has all the 
GENERAL ELECTRIC v. ITC 6

powers which it would have in making the initial decision except as it may limit the issues on notice or by 

rule. 

The Commission does not dispute the applicability of these 

provisions to its proceedings. Yet the Commission insists 

that it can remove finally decided issues from judicial review 

simply by stating that the full Commission “takes no position” on issues that were finally decided by the ALJ. That 

position is in conspicuous tension with the statutes and 

regulations, and with unambiguous precedent. In Darby v. 

Cisneros, 509 U.S. 137, 146 (1993) the Court explained that 

“[w]hen an aggrieved party has exhausted all administrative 

remedies expressly prescribed by statute or agency rule, the 

agency action is ‘final for the purposes of this section’ and 

therefore ‘subject to judicial review.’” (quoting 5 U.S.C. §704). 

 No provision of Section 337 or the Administrative Procedure 

Act authorizes the ITC to bar the routine judicial review of 

issues that were fully tried and finally decided by the ALJ 

and not reviewed by the full Commission. 

Expeditious proceedings in the ITC 

Expeditious adjudication is the hallmark of proceedings 

of the International Trade Commission. This goal pervades 

the statute, which requires the Commission to establish 

target completion dates: 

19 U.S.C. §1337(b) Investigation of violations by 

Commission

(b)(1) . . . The Commission shall conclude any such 

investigation and make its determination under this 

section at the earliest practicable time after the date 

of publication of notice of such investigation. To 

promote expeditious adjudication, the Commission 
7 GENERAL ELECTRIC v. ITC

shall, within 45 days after an investigation is initiated, establish a target date for its final determination. 

Although an earlier statute set a deadline of one year (18 

months for complicated cases) the 1994 replacement with the 

phrase “the earliest practicable time” was accompanied by 

the statement that “the Committee expects that, given its 

experience in administering the law under the deadlines in 

current law, the ITC will nonetheless normally complete its 

investigations in approximately the same amount of time as 

is currently the practice.” S. Rep. 103-412, at 119 (1994). 

Similarly, the legislative record for the 2008 regulatory 

amendments to the Commission’s Rules describes the 

amendments as “procedural rules” promulgated “in order to 

increase the efficiency of its section 337 investigations.” 

Rules of General Application and Adjudication and Enforcement, 73 Fed. Reg. 38,316, 38,316 (July 7, 2008). The discussion and public comment concerned the Commission’s 

proposals to ease the deadlines for completing its proceedings; commentators stated their concern about loss of the 

expedition on which they relied for Section 337 actions. The 

ITC Trial Lawyers Association stressed the advantages of 

“speedy adjudication”: 

[O]ne of the great advantages of Section 337 proceedings is their speedy adjudication. The role that the 

Commission and Section 337 have achieved as one of 

the key forums for protection of valuable U.S. intellectual property rights rests on the speed and high 

quality of its adjudicatory process. 

Comment to Notice of Proposed Rulemaking, ITC Doc. No. 

296282, at 6 (Mar. 31, 2008). The Intellectual Property 

Owners Association also commented on the Commission’s 
GENERAL ELECTRIC v. ITC 8

proposed authority for enlargement of target dates, stating 

that: 

IPO members place much value in the Commission’s 

prompt and effective resolution of Section 337 investigations ‘at the earliest practicable time.’ (quoting 

19 U.S.C. §1337(b)). 

Comment to Notice of Proposed Rulemaking, ITC Doc. No. 

296810, at 2 (Mar. 31, 2008). The Commission’s response 

was to reassure the public that it expected to continue to 

meet the existing deadlines in most investigations. No 

mention was made of the possibility of eliminating finality 

and precluding judicial review of finally decided issues. The 

regulation on which the Commission now relies to preclude 

judicial review is as follows, with emphasis added to the 2008 

amendment: 

19 C.F.R. §210.45 Review of initial determinations 

on matters other than temporary relief. 

. . . 

(c) Determination on review. On review, the Commission may affirm, reverse, modify, set aside or remand for further proceedings, in whole or in part, the 

initial determination of the administrative law judge. 

In addition, the Commission may take no position on 

specific issues or portions of the initial determination 

of the administrative law judge. The Commission 

also may make any findings or conclusions that in its 

judgment are proper based on the record in the proceeding. If the Commission's determination on review terminates the investigation in its entirety, a 

notice will be published in the Federal Register. 

The concerned communities were not told that the Commission intended, by this amendment, to authorize itself to 
9 GENERAL ELECTRIC v. ITC

remove finally decided issues from access to the judicial 

review provided in 19 U.S.C. §1337(c). Such a bombshell 

would surely have occasioned comment. 

The consequences of this practice are manifest in this 

case, for all contested issues concerning the ’985 patent were 

investigated by the Commission, tried to the ALJ, and decided by Final Initial Determination, deciding all of the 

issues raised by General Electric and Mitsubishi and the 

Commission, in the complaint and in defense. In the Matter 

of Certain Variable Speed Wind Turbines and Components 

Thereof, Inv. No. 337-TA-641, USITC Pub. 4202 (Aug. 7, 

2009), 2010 WL 5176683. On appeal, this court reverses the 

Commission’s ruling on the domestic industry requirement 

for the ’985 patent, but by the Commission’s procedure the 

final rulings on validity and infringement are not included in 

this appeal. Thus this proceeding, initiated on March 31, 

2008, must be returned to the Commission, defeating the 

requirement of §1337(b)(1) that “[t]he Commission shall 

conclude any such investigation and make its determination 

under this section at the earliest practicable time.” 

The Commission states that this anomalous procedure 

was approved by this court in Beloit Corp. v. Valmet Oy, 742 

F.2d 1421 (Fed. Cir. 1984). That is incorrect. In Beloit the 

prevailing party before the Commission sought to raise 

certain issues on appeal to the Federal Circuit, and this court 

held that the prevailing party has no standing to appeal, see 

American Telephone & Telegraph Co. v. Int’l Trade Comm’n, 

626 F.2d 841, 842 (CCPA 1980) (“Since the ITC determined 

that there was no §1337 violation by Bell, Bell is without 

standing to appeal.”). The court also observed that the issues 

sought to be appealed had not been reviewed by the full 

Commission. That special situation did not and could not 

negate the finality of final ALJ determinations, and could not 

deprive the losing party of final and full judicial review. The 
GENERAL ELECTRIC v. ITC 10

rhetoric in Beloit does not support the weight with which the 

Commission endows it. 

Issues decided by Final Initial Determination and not reviewed by the full Commission are determinations of the 

Commission in accordance with 19 C.F.R. §210.42(h), and on 

appeal are entitled to judicial review when relevant to final 

resolution. No statutory provision contemplates, or hints at, 

excluding fully litigated and finally decided dispositive issues 

from the judicial review established in 19 U.S.C. §1337(c), 19 

C.F.R. §210.42(h), 19 C.F.R. §210.45(c), the Administrative 

Procedure Act, and other provisions governing ITC proceedings. See Warner Bros., Inc. v. Int’l Trade Comm’n, 787 F.2d 

562, 564 (Fed. Cir. 1986) (the Commission cannot preclude 

“meaningful judicial review”). The disservice to the parties 

and the public looms large, and the benefit to the Commission is elusive. 

The Federal Circuit’s obligation 

Instead of simply ratifying this aberrant procedure and 

accepting its consequences, at a minimum the court should 

take the case en banc and obtain input from the communities 

that Section 337 is designed to serve. The delays in Commission finality and judicial resolution are manifest in this case. 

 Instead of setting the inquiry aside for “a later case,” the 

issue of statutory compliance requires resolution.