Appealed from: U.S. International Trade Commission.
Archer, Circuit Judge, Cowen, Senior Circuit Judge, and Mayer, Circuit Judge.
Hyundai Electronics Industries Co., Ltd. (Hyundai) appeals from the decision and exclusion order of the United States International Trade Commission (Commission) (1) prohibiting Hyundai from importing to the United States erasable programmable read only memories (EPROMs) that the Commission determined to infringe one or more United States patents, and (2) requiring Hyundai to certify, as a condition of entry, that certain of its secondary products which require EPROMs to function do not contain the infringing EPROMs. Certain Erasable Programmable Read Only Memories, Components Thereof, Products Containing Such Memories, And Processes For Making Such Memories, Inv. No. 337-TA-276, USITC Pub. No. 2196 (Mar. 16, 1989) (EPROM Order). We affirm.
This appeal and three others presently before the court*fn1 stem from an investigation instituted by the Commission on September 16, 1987, in response to a complaint filed by Intel Corporation (Intel) of Santa Clara, California. The complaint alleged that Hyundai and six other named respondents had engaged in unfair trade practices in violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (1982 & Supp. II 1984), by either manufacturing EPROMs according to a process covered by, or selling and importing EPROMs that themselves infringed, one or more Intel patents.*fn2 As required under the version of section 337 then in force, Intel also alleged that the effect or tendency of the unfair methods of competition and unfair acts was to destroy or substantially injure an industry in the United States that was efficiently and economically operated. See 19 U.S.C. § 1337(a) (1982).
On August 4, 1988, after the parties had completed discovery and for nine and one-half weeks presented evidence to the presiding administrative law judge, the Senate passed a bill (previously approved by the House of Representatives) amending section 337 to eliminate the complainant's burden of proving domestic economic injury. Anticipating that the President would endorse Congress' action, the administrative law judge decided to admit at the hearing on the economic issues, scheduled to begin August 8, 1988, only evidence pertinent under the amended section 337.
Eleven days after completion of the trial on the economic issues, the President signed the Omnibus Trade and Competitiveness Act of 1988. Pub. L. No. 100-418, 102 Stat. 1107 (Aug. 23, 1988) (OTCA). Section 1342 of the OTCA amended the relevant portions of section 337 to provide:
§ 1337. Unfair Practices in import trade
(a) Unlawful activities; covered industries; definitions
(1) Subject to paragraph (2), the following are unlawful, and when found by the Commission to exist shall be dealt with, in addition to any other provision of law, as provided in this section:
(B) The importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, of articles that--
(i) infringe a valid and enforceable United States patent . . .; or (ii) are made, produced, processed, or mined under, or by means of, a process covered by the claims of a valid and enforceable United States patent.
(2) Subparagraph (B) . . . of paragraph (1) appl[ies] only if an industry in the United States, relating to the articles protected by the patent . . . concerned, ...