United States: Split Federal Circuit Panel Curtails ITC's Ability To Regulate Electronic Transmission of Data

On November 10, 2015, a split panel of the Federal Circuit issued a decision in ClearCorrect Operating, LLC v. Int'l Trade Comm'n (No. 2014-1527), curtailing the jurisdiction of the U.S. International Trade Commission ("ITC") in investigations under Section 1337 of the Tariff Act of 1930, as amended, ("Section 337"). In an opinion authored by Chief Judge Prost, the court held that Section 337 does not vest the ITC with authority to investigate unfair acts or unfair methods of competition in situations involving only electronic transmissions of data, as opposed to those involving the importation of "material things." This ruling is likely to be well received by many companies who heavily rely on cross-border electronic transmissions in today's information-age economy; however, because a petition for en banc review is expected, caution is still warranted.  

In the underlying ITC investigation that was at issue on appeal, the ITC found that respondent ClearCorrect violated Section 337 through the electronic transmission of certain digital models of teeth sent from servers in Pakistan into the United States, where the digital models were subsequently used in the United States to create physical models of teeth and to form dental appliances. The ITC found that ClearCorrect's U.S. subsidiary infringed certain claims of complainant Align Technology's patents relating to methods of forming dental appliances, but that this activity was not a violation of Section 337 because it occurred only within the United States. The ITC also found that ClearCorrect's Pakistan subsidiary violated Section 337 because it contributed to the infringement of the patents relating to methods of forming dental appliances, as well as directly infringing patents covering methods of producing digital data sets. But because an exclusion order would be ineffective in prohibiting the electronic transmission of digital models, the Commission instead imposed a cease-and-desist order prohibiting ClearCorrect from certain activities relating to the importation of digital models. Recognizing the uncertain state of the law concerning the ITC's jurisdictional authority over electronically imported data, however, the ITC took the rare step of staying the enforcement of the cease-and-desist order until the issue was resolved on appeal.

The principal issue before the Federal Circuit on appeal was whether the term "articles" in the context of Section 337 must mean "material things," or whether—as the ITC concluded—"articles" could also include electronically transmitted data. Chief Judge Prost's majority opinion held that articles must in fact be material things, and reversed the ITC's finding of a violation of Section 337 and its imposition of a cease-and-desist order. Echoing the Federal Circuit's recent evaluation of the term "articles . . . that infringe" in Suprema v. Int'l Trade Comm'n, the majority opinion first applied the two-step framework of Chevron U.S.A. Inc. v.  Natural Resources Defense Council, Inc., 467 U.S. 837 (1984), to determine whether the ITC's interpretation of articles was owed deference. But contrary to its conclusion in Suprema that "articles . . . that infringe" was ambiguous, the court here concluded that the term "articles" is not ambiguous in the context of Section 337—because neither the statutes at the time of the Tariff Act's passing nor contemporary dictionaries defined "articles" as anything other than "material things." Therefore, the court held that Congress had unambiguously intended that the ITC's jurisdiction relates to only material things, and that the ITC's interpretation that electronic transmissions should also be included within the definition of articles was owed no deference. Judge Prost also in the alternative applied Chevron step two and determined that the ITC's interpretation was unreasonable.          

Judge O'Malley (who argued in dissent in Suprema for more jurisdictional restrictions on the ITC) concurred with the conclusion that the ITC lacked jurisdiction over the case, but authored a separate opinion expressing her view that applying the two-step Chevron test was unnecessary. Judge O'Malley opined that the Internet is "arguably the most important innovation in communications in a generation" and that there is no indication whatsoever that Congress has or would have delegated regulation of the Internet to the ITC, noting that (1) the last major amendment to Section 337 came one year before the advent of the World Wide Web and (2) none of the recent debates over Internet-related legislation have raised the issue that the ITC may already be regulating the Internet.  

Judge Newman, writing in dissent, vehemently disagreed with the conclusion that the ITC lacks jurisdiction over electronic transmissions of data. Judge Newman argued that the term article should mean "articles of commerce," including electronic data, and that, given its broad terms, the Tariff Act "did not lock Section 337 into the technology in existence in 1922 or 1930." Judge Newman also recounted the various ways in which other entities, such as the Bureau of Customs and Border Protection, the Court of International Trade, and the Department of Labor, viewed the cross-border transfers of data as the importation of articles, regardless of whether that data was transmitted electronically or in a tangible medium. Finally, Judge Newman argued that the mere difficulty in enforcing exclusionary remedies against electronic transmissions of data is not grounds for discarding the ITC's jurisdiction over those transmissions.  

The case is now reversed and remanded to the ITC for dismissal for lack of jurisdiction, although a petition for en banc review or certiorari is likely to be filed. The Federal Circuit's decision may also have an impact on pending patent reform discussions, as stakeholders may seek to overturn the decision through an amendment of Section 337.  

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions