United States: Digital Files Imported via Internet Are Not Articles Under 19 U.S.C. 1337(a) At ITC

Under 19 U.S.C. § 1337 ("Section 337"), the International Trade Commission has the power to stop the importation of "articles that infringe" a valid United States patent, trademark or copyright. Recently, in ClearCorrect Operating, LLC v. ITC, a Federal Circuit panel ruled that the International Trade Commission ("ITC") does not have jurisdiction to prevent the importation of electronically transmitted digital data because it does not constitute an "article" within the meaning of Section 337.


Align Technology, Inc. – the company behind "Invisalign" braces – is the owner of several patents relating to the formation, production and use of orthodontic appliances known as aligners, which incrementally reposition a patient's teeth from an initial arrangement to a final arrangement. ClearCorrect US and ClearCorrect Pakistan collectively produce these types of aligners, and do so through a multi-step process. ClearCorrect US first creates a digital recreation of a patient's initial tooth arrangement by scanning a physical model of the patient's teeth, and electronically transmits the digital recreation to ClearCorrect Pakistan. ClearCorrect Pakistan in turn manipulates the position of each tooth to create a final tooth arrangement, and creates digital data models for a series of intermediate tooth positions. These digital models are transmitted electronically back to ClearCorrect US, which manufactures the physical aligners for each of the digital models.

Align filed a complaint with the ITC alleging a violation of Section 337 based on ClearCorrect's infringement of its patents, in particular, those covering methods for making and fabricating the incremental aligners. The ITC instituted an investigation, and following an evidentiary hearing, the ALJ issued an Initial Determination finding several of the method claims infringed. The ALJ also recommended that the Commission issue a cease and desist order prohibiting ClearCorrect from electronically importing the digital models into the United States. On review, the Commission confirmed that it had jurisdiction over electronically imported data under Section 337, and found that ClearCorrect Pakistan was in violation of Section 337 based on its importation of the digital data models.

In a 2-1 decision, a panel of the Federal Circuit reversed the Commission's decision and ruled that the ITC did not have jurisdiction to prevent the importation of the digital models, holding that electronically transmitted digital data is not an imported "article" within the meaning of Section 337.

The Majority Decision

The majority opinion, authored by Chief Judge Prost, concluded that the term "articles," as used in Section 337, means "material things," which is fundamentally different from electronic transmissions. In reaching this conclusion, the court applied the framework from Chevron, Inc. v. Natural Resources Defense Council, Inc., to determine whether Congress had addressed the specific question at issue (i.e., the meaning of the term "articles") and, if not, whether the ITC's interpretation was reasonable and could be upheld.

Under the first step of the Chevron framework, the court looked at the text of the statute to give it its plain meaning. Since the term "articles" was not defined in the Tariff Act, the court consulted contemporaneous dictionaries of the time to ascertain its ordinary and natural meaning, ultimately concluding that "articles" was limited to "material things" and, thus, could not include digital data. The court went on to look at the language within the broader context of Section 337, and found that this too supported the court's position. The court, for example, found that the forfeiture subsection of Section 337 (19 U.S.C. § 1337(i)) would be rendered meaningless if "articles" was defined to include electronic transmissions since they can neither be "seized" nor "forfeited." The court continued its analysis by looking at the "overall statutory scheme," and noted that the remedies for violation of Section 337, namely exclusion and cease and desist orders, could only have an impact on "material things." Finally, the court examined the legislative history behind Section 337 and found that while the term "goods" was used synonymously with "articles," it too was limited to "material things."

Even though the court found its analysis under Chevron step one to be conclusive, it still addressed whether the ITC's position was based on a permissible construction of the statute, as would be required by Chevron step two. In that regard, the majority concluded that the Commission's interpretation of the term "articles" was unreasonable and therefore not entitled to deference because the Commission failed to properly analyze the statute's legislative history and improperly relied on Congressional debates, which the Court deemed inconsistent with Chevron.

Concurring and Dissenting Opinions

Judge O'Malley filed a concurring opinion stating that the Chevron analysis was unnecessary because the case could not survive the initial threshold inquiry into whether Chevron applied at all (i.e., Chevron "step zero"). However, assuming that the Chevron framework did apply, she agreed with the majority's ruling.

In a strong dissent, Judge Newman argued that the congressional intent was to enact a provision "broad enough to prevent every type and form of unfair practice." S. Rep. No. 67-595. Citing Suprema, Inc. v. ITC, the dissent argued that "'the legislative history consistently evidences Congressional intent to vest the Commission with broad enforcement authority to remedy unfair acts.'" The dissent argued, among other things, that Section 337 was not intended to be limited to the technology existing in 1922 or 1930, and that the term "articles" was intended to be all-encompassing, covering all infringing imported "articles of commerce." The dissent also took issue with the majority's characterization of the data files as "intangible," invoking wave theory and quantum mechanics and noting that "particles and waveforms of electronics and photonics and electro-magnetism are not intangible."

Practical Implications

While the majority opinion may seem to provide a sweeping pronouncement regarding the jurisdiction of the ITC, the decision is limited by the facts of the case and its practical effect may be quite limited. Narrowly viewed, the decision simply stands for the proposition that where the only imported item is an electronic transmission from outside the U.S., the ITC does not have jurisdiction because the electronic transmission is not an "article" for purposes of Section 337. The Commission, however, may still rely on electronic transmissions from abroad in its infringement analysis.

Furthermore, it should be noted that the two judges forming the majority on this panel (Chief Judge Prost and Judge O'Malley) also formed the majority of the Suprema panel, which was overturned on en banc review. Given the similar nature of the current decision to that of Suprema – namely that they both relate to the ITC's jurisdictional reach and involve similar analysis (i.e.,Chevron analysis) of common statutory terms – it would not be surprising if the court reviewed the current decision en banc.

Originally published on November 11, 2015

This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.

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.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.