United States Court of Appeals for the Federal Circuit

                                       2007-1014

                                     AMGEN, INC.,

                                                     Appellant,

                                           v.

                       INTERNATIONAL TRADE COMMISSION,

                                                     Appellee,

                                          and

          ROCHE HOLDING LTD., F. HOFFMANN-LA ROCHE LTD., ROCHE
             DIAGNOSTICS GMBH, and HOFFMAN-LA ROCHE INC.,

                                                     Intervenors.



       Linda A. Sasaki-Baxley, Day Casebeer Madrid & Batchelder LLP, of Cupertino,
California, argued for appellant. On the brief was Lloyd R. Day, Jr. Of counsel were
David M. Madrid and Katie J.L. Scott. Of counsel on the brief were Cecilia H. Gonzalez
and Margaret D. Macdonald, Howrey LLP, of Washington, DC.

       Christal A. Sheppard, Attorney, Office of the General Counsel, United States
International Trade Commission, of Washington, DC, argued for appellee. With her on
the brief were James M. Lyons, General Counsel, and Wayne W. Herrington, Assistant
General Counsel.

      Michael P. Dougherty, Morgan & Finnegan, LLP, of New York, New York,
argued for intervenors. With him on the brief were Bartholomew Verdirame, Tony V.
Pezzano, and John C. Vassil, of New York, New York; and Kent R. Stevens, of
Washington, DC. Of counsel on the brief were Leora Ben-Ami, Patricia A. Carson,
Thomas F. Fleming, Howard S. Suh, and Manvin Mayell, Kaye Scholer LLP, of New
York, New York; and V. James Adduci II, Adduci, Mastriani & Schaumberg, LLP, of
Washington, DC. Of counsel were Tom M. Schaumberg and Maureen F. Browne, of
Washington, DC.

Appealed from: United States International Trade Commission
 United States Court of Appeals for the Federal Circuit

                                       2007-1014

                                     AMGEN, INC.,

                                                              Appellant,

                                            v.

                       INTERNATIONAL TRADE COMMISSION,

                                                              Appellee,

                                           and

             ROCHE HOLDING LTD., F. HOFFMANN-LA ROCHE LTD.,
          ROCHE DIAGNOSTICS GMBH, and HOFFMANN-LA ROCHE INC.,

                                                              Intervenors.


Appeal from the United States International Trade Commission in Investigation
No. 337-TA-568.

                            __________________________

                               DECIDED: April 30, 2009
                            __________________________


Before NEWMAN, LOURIE, and LINN, Circuit Judges.

PER CURIAM. 1 Dissenting opinion filed by Circuit Judge LINN as to Section I.A.

      By complaint to the International Trade Commission under Section 337 of the

Tariff Act of 1930 as amended, 19 U.S.C. '1337, Amgen, Inc. charged that certain

importations of recombinant human erythropoietin and derivatives thereof (collectively


      1
              A petition for rehearing en banc was granted for the limited purpose of
authorizing the panel to revise part II of its previous opinion, reported at 519 F.3d 1343
and now withdrawn.
"EPO") are in violation of Section 337. Amgen charged that the imported EPO and the

process by which it is produced in Europe are covered by one or more claims of the

following Amgen United States patents: Patent No. 5,411,868 (claims 1 and 2); Patent

No. 5,547,933 (claims 3, 4, 5, and 11); Patent No. 5,618,698 (claims 4-9) 2 ; Patent No.

5,621,080 (claims 4 and 6); Patent No. 5,756,349 (claim 7); and Patent No. 5,955,422

(claim 1). The Intervenors Roche Holding Ltd., F. Hoffmann-La Roche, Ltd., Roche

Diagnostics GmbH, and Hoffmann-La Roche, Inc. (collectively "Roche") are producers

and importers of the accused EPO.

       Roche moved for summary determination of noninfringement as to all claims, on

the ground that the imported EPO is exempt from infringement by operation of 35

U.S.C. '271(e)(1), the "safe harbor" statute, because the imported EPO is used only for

the statutorily exempt purpose of the development and submission of information under

a federal law regulating the manufacture, sale, and use of drugs. The Commission

granted the motion for noninfringement, holding that all of Roche's activities are within

the safe harbor, including the foreign production of the imported product.         Amgen

appeals this ruling, on the principal ground that the safe harbor statute does not apply to

Tariff Act violations based on foreign practice of patented processes, and also on the

ground that not all of the imported EPO was used for the statute's exempt purposes.

       We affirm the Commission's ruling that the safe harbor provided by '271(e)(1)

applies in proceedings under the Tariff Act relating to process patents as well as

product patents, for imported product that is used for exempt purposes. In part II, we

reverse the Commission’s ruling that Roche was entitled to summary determination,


       2
              Claims 4 and 5 of Patent No. 5,618,698 were removed from the case



2007-1014                                   2
because there was a genuine dispute of material fact concerning whether all of Roche’s

activities fell within this safe harbor. Accordingly, we affirm in part, reverse in part, and

remand.

                                              I

       The Commission's statutory interpretations and rulings of law receive plenary

review, applying the standards of the Administrative Procedure Act. See 19 U.S.C.

'1337(c); 5 U.S.C. '706; e.g., Jazz Photo Corp. v. United States Int'l Trade Comm'n,

264 F.3d 1094, 1099 (Fed. Cir. 2001). Plenary review is given to the Commission's

summary determinations, which are governed by the criteria of summary judgment and

are reviewed accordingly.         See 19 C.F.R. '210.18(b) (authorizing summary

determination by the Commission if there is no genuine issue of material fact and the

moving party is entitled to prevail as a matter of law); Hazani v. United States Int'l Trade

Comm'n, 126 F.3d 1473, 1476 (Fed. Cir. 1997) (reviewing the Commission's summary

determinations in accordance with the standards for summary judgment).

                                             A

       Section 337 assigns to the Commission the authority and obligation to investigate

and prohibit importation based on unfair competition derived from patent, trademark,

and copyright infringement, including:

19 U.S.C. '1337(a)(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--


during the pendency of this appeal.



2007-1014                                    3
                     (i) infringe a valid and enforceable United States patent or
              a valid and enforceable United States copyright under title 17,
              United States Code; 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. . . .

                                           ***
       (b)(1) The Commission shall investigate any alleged violation of this
       section on complaint under oath or upon its initiative. . . . The
       Commission shall conclude any such investigation and make its
       determination under this section at the earliest practicable time . . . .

The issues on this appeal center on the safe harbor statute for drug products, on

application to the imported EPO of the following provisions of Title 35:

       35 U.S.C. '271(e)(1) It shall not be an act of infringement to make, use,
       offer to sell, or sell within the United States or import into the United States
       a patented invention . . . solely for uses reasonably related to the
       development and submission of information under a Federal law which
       regulates the manufacture, use, or sale of drugs or veterinary biological
       products.

                                            ***
       '271(e)(3) In any action for patent infringement brought under this
       section, no injunctive or other relief may be granted which would prohibit
       the making, using, offering to sell, or selling within the United States or
       importing into the United States of a patented invention under paragraph
       (1).

The Commission held that the safe harbor statute applies to products produced offshore

by a process patented in the United States. Amgen argues that this statute does not bar

the exclusion of such importation, reasoning that the '271(e)(1) reference to importing "a

patented invention" is necessarily limited to importation of product, for a process cannot

be imported. Amgen states that it is incorrect to assume that Congress, by silence,

changed the long-standing Section 337 right and obligation of the Commission to reach

importation based on offshore practice of a United States patented process. Amgen

argues that the 1988 enactment of 35 U.S.C. '271(g), whereby the Patent Act provided



2007-1014                                     4
remedy in the district courts for offshore practice of a patented process but explicitly

applied the safe harbor to '271(g), shows congressional intent to limit the safe harbor to

process patents that would be enforced under '271(g):

      35 U.S.C. '271(g) Whoever without authority imports into the United States
      or offers to sell, sells, or uses within the United States a product which is
      made by a process patented in the United States shall be liable as an
      infringer, if the importation, offer to sell, sale, or use of the product occurs
      during the term of such process patent. . . . A product which is made by a
      patented process will, for purposes of this title, not be considered to be so
      made after--
             (1) it is materially changed by subsequent processes; or
             (2) it becomes a trivial and nonessential component of another
             product.

Amgen states that the enactment of '271(g) makes clear that the Commission's

authority under Section 337 was not changed by enactment of '271(g), because in

adding '271(g) to Title 35 when Congress enacted the Process Patent Amendments of

1988, Congress stated that "[t]he amendments made by this subtitle shall not deprive a

patent owner of any remedies available under subsections (a) through (f) of section 271

of title 35, United States Code, under Section 337 of the Tariff Act of 1930, or under any

other provision of law." Pub. L. 100-48, §9006(c) (1988). That is, Congress preserved

both the safe harbor, 35 U.S.C. '271(e)(1), and the Tariff Act's Section 337, in enacting

'271(g). Amgen states that this means that process patent infringement would give

way to the safe harbor when enforced in the district courts under '271(g), while remedy

is retained for process patent infringement enforced under Section 337.             Amgen

stresses that Section 337 was enacted several decades before '271(g) was added to

the Patent Act, and that the legislative record is clear that the Tariff Act remedy was

intended to continue undiminished.




2007-1014                                   5
       The Commission rejected these arguments, and held that the safe harbor statute

fully applies to process patent liability under the Tariff Act. In support the Commission

cited Glaxo Inc. v. Novopharm Ltd., 110 F.3d 1562 (Fed. Cir. 1997) and Bio-Technology

General Corp. v. Genentech, Inc., 80 F.3d 1553 (Fed. Cir. 1996). Novopharm related to

determinations of infringement based on the filing of an ANDA for product produced

offshore; and this court remarked that the "artificial" acts of infringement that are created

by '271(e)(2) – concerning the conditions under which the patentee can sue for

infringement during the pendency of the ANDA – relate only to "a drug claimed in a

patent or the use of which is claimed in a patent" but not to the process for making the

drug. However, the issues in that case did not relate to exclusion under the Tariff Act,

but to the right to sue when the charged infringements arose under sections 271(e)(2)

and 271(g). In Bio-Technology General this court held that the safe harbor statute

applied in the district court as to product produced offshore after '271(g) was enacted;

the district court did not rule on the safe harbor for process patents under the Tariff Act,

although the court apparently assumed that the safe harbor would apply on the same

terms. 80 F.3d at 1563-64 (explaining that although the ITC dismissed the patentee’s

Section 337 complaint with prejudice for violation of discovery orders, this ruling cannot

have claim preclusive effect on the case at bar involving the same transactional facts

because “the ITC does not have the power to award damages for patent infringement”

which was the form of relief sought by the patentee).

       In Kinik v. United States International Trade Commission, 362 F.3d 1359 (Fed.

Cir. 2004) this court explained that '271(g) provided a new right and remedy in the

district court, but held that the Tariff Act remedy of exclusion based on practice of a




2007-1014                                    6
patented process was unchanged, and that the exceptions set forth in '271(g)(1) and

(2), shown supra, did not apply in Section 337 cases. Id. at 1362. Amgen argues that

Kinik confirmed that no change whatsoever was made in the Commission's authority

under the Tariff Act to exclude products made offshore by an infringing process, and

that this was not changed by the enactment of either '271(g) or '271(e)(1). Amgen

also argues that Congress intentionally included only product patents when enacting

'271(e)(1), for the reference therein to "importation" and "patented invention" tracks the

language of '271(a), which does not concern processes practiced abroad. Thus Amgen

argues that an importation that is exempt under '271(e)(1) of the Patent Act may

nonetheless be unlawful under Section 337 of the Tariff Act.

       The Commission did not accept Amgen's distinction, and ruled that the safe

harbor statute insulates the Roche EPO from Section 337 exclusion not only as to

infringement of Amgen's product patents but also as to Amgen's process patents. We

conclude that the Commission's ruling is in consonance with congressional policy as set

forth in enactment of '271(g), and as elaborated by the Supreme Court in its

applications of the safe harbor statute.

       In enacting '271(g) the legislative history included the policy statement that:

       Specifically, the Committee does not intend that it shall be an act of
       infringement to import a product which is made by a process patented in
       the United States “solely for uses reasonably related to the development
       and submission of information under a Federal law which regulates the
       manufacture, use, or sale of drugs.” See 271(e)(1) of title 35, United
       States Code. Congress previously decided that certain actions do not
       constitute patent infringements and this Act does not change that prior
       policy decision.

S. Rep. No. 100-83, 48 (1987). Implementing in other contexts this broadly stated

congressional policy, in Merck KgaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005)



2007-1014                                    7
the Court explained that Congress intended that the immunity of regulatory activity not

be inhibited, stating that "'271(e)(1)'s exemption from infringement extends to all uses

of patented inventions that are reasonably related to the development and submission

of any information under the FDCA." Id. at 202 (emphasis in original). And in Eli Lilly &

Co. v. Medtronic, Inc., 496 U.S. 661 (1990) the Court held that '271(e)(1) includes

medical devices, although the statute mentions only drugs and veterinary products; the

Court stated that "[t]he phrase 'patented invention' in '271(e)(1) is defined to include all

inventions, not drug-related inventions alone." Id. at 665. In both Merck and Eli Lilly the

Court stressed the congressional purpose of removing patent-based barriers to

proceeding with federal regulatory approval of medical products. This purpose and its

application in precedent weigh heavily against selectively withholding the '271(e)(1)

exemption depending on whether the infringement action is in the district court or the

International Trade Commission. We thus affirm the Commission's ruling that the safe

harbor statute applies to process patents in actions under Section 337, when the

imported product is used for the exempt purposes of '271(e)(1).



                                             B

       Amgen argues that even on the Commission's interpretation of the safe harbor

statute, at least some of the imported Roche EPO is not exempt because its actual use

was not "reasonably related to the development and submission of information under

[the FDCA]," §271(e)(1). Amgen points out that while '271(e)(1) is directed to the

development of information for submission to the FDA, Amgen did not bring this action

for exclusion of imports until after Roche had completed its submission to the FDA.




2007-1014                                    8
Amgen states that Roche had entered the "post-BLA" (Biologics License Application)

stage, which is the stage at which complete data have been obtained, analyzed, and

presented to the FDA. See 21 C.F.R. '601.2(a) (requiring that the BLA contain "data

derived from nonclinical laboratory and clinical studies which demonstrate that the

manufactured product meets prescribed requirements of safety, purity and potency”).

       Amgen states that by the time this action was brought Roche had shifted its

attention in the United States to infringement analysis experiments, market-seeding

trials, and litigation-related activity. Amgen states that these activities are not shielded

by the safe harbor, for they do not "contribute, relatively directly, to the generation of the

kinds of information that are likely to be relevant to the processes by which the FDA

would decide whether to approve the product in question," a general definition of

exempt activity endorsed by the Court in Merck as "consistent with, if less detailed than,

the construction of '271(e)(1) that we adopt today." 545 U.S. at 208. Amgen argues

that Roche's post-BLA activities are not exempt from infringement of either product or

process patents.

       The Commission appears to have assumed that all otherwise infringing activities

are exempt if conducted during the period before regulatory approval is granted. That

assumption is incorrect, for the Court in Merck confirmed that "[e]ach of the accused

activities must be evaluated separately to determine whether the exemption applies."

Id. at 200. The studies at issue in Merck were presented as scientific studies, and it is

apparent that commercial and marketing studies are more clearly subject to separate

evaluation for application of the exemption.




2007-1014                                      9
      The ALJ denied most of Amgen's requests for discovery of Roche's post-BLA

activities, with the exception of the experiments conducted by Dr. Veng-Pedersen, and

perhaps some others - the briefs dispute what was disclosed in discovery. However, as

to Dr. Veng-Pederson's work, Amgen asserts that these experiments were conducted

for marketing purposes, with the objective of trying to distinguish Roche's EPO from that

of Amgen. The evidence on this aspect was conflicting and required closer analysis

than it received, in light of the distinctions drawn by the Court in Merck. For example,

an email from Roche's Program Director for Oncology asked Dr. Veng-Pedersen to

"explore the metabolism (uptake in the bone marrow vs. liver uptake) and to see if there

are differences between CERA and EPO," a communication that Amgen states is

directed to future marketing plans to distinguish the Roche and Amgen products,

whereas the Roche position was that it contacted Dr. Veng-Pedersen because Roche

was "currently studying CERA and EPO in terms of receptor interaction by using an in-

vitro cellular model system only and would need to move into a more physiological

situation." The Amgen position is that since this study was conducted after the BLA

information had been submitted to the FDA, by definition this study was not directed to

obtaining information for submission for federal approval of the Roche product, as

required for exemption under '271(e)(1).

      The ALJ held that all of the imported EPO, including that used after the

application for federal approval was completed, is exempt. However, the Court in Merck

set careful boundaries to the exemption, requiring separate review of all studies for

which the exemption was claimed.       Roche does not appear to dispute that some

imported product was used to conduct Roche's marketing department's recommended




2007-1014                                  10
studies for purposes of brand recognition and not for FDA approval, and the record

does not discuss whether any of the post-BLA work was supplemental to the BLA and

intended for submission to the FDA, thereby subject to exemption. See 21 C.F.R.

§601.12 (entitled “Changes to an approved application” and requiring an applicant to

inform the FDA “about each change in the product, production process, quality controls,

equipment, facilities, responsible personnel, or labeling established in the approved

license application(s)”).

          To the extent that the Commission held all importation and all uses exempt while

FDA approval was pending, the safe harbor statute does not so provide. The factual

questions of the purposes of the post-BLA and other challenged activities were

improperly summarily decided adversely to Amgen. On remand the Commission shall

consider the exempt status of each study for which question has reasonably been

raised.

                                              II

          On appeal, the parties dispute whether, under 19 U.S.C. § 1337, the Commission

has jurisdiction to address “imminent importations” in the absence of a contract for sale.

The Commission argues that it has jurisdiction “only when there is an importation, sale

for importation, or sale within the United States after importation.” Br. of Appellee Int’l

Trade Comm’n at 18; see also Combined Pet. for Reh’g & Reh’g En Banc of Appellee

Int’l Trace Comm’n at 5 (“Nothing in the statute suggests that the ITC may investigate

an alleged violation when the particular accused article has not been imported or sold or

even when infringing acts are reasonably likely to occur.”).       Amgen responds that,

pursuant to the ITC’s own precedent, “an imminent importation will violate Section 337.”




2007-1014                                    11
Appellant’s Reply Br. at 5; see also Appellant Amgen Inc.’s Response to Combined Pet.

for Panel Reh’g and Reh’g En Banc at 8 (“[T]he ITC has jurisdiction to prevent imminent

irreparable damage to a patentee.”).

       It is not necessary for us to resolve the parties’ dispute concerning “imminent

importations” to decide this case. In this case, Amgen asserted that Roche imported

EPO into the United States. See Amended Complaint of Amgen Inc. ¶ 7.1, In re Certain

Prods. & Pharm. Compositions Containing Recombinant Human Erythropoietin, No.

337-TA-568 (Int’l Trade Comm’n Apr. 27, 2006) (“On information and belief, Roche is

currently importing for use and imminent sale in the United States pharmaceutical

compositions containing PEG-EPO.”) (emphasis added); id. ¶ 7.2 (“On information and

belief, Roche is offering for sale or imminently preparing to sell in the United States after

importation pharmaceutical compositions containing PEG-EPO.”) (emphasis added); id.

¶ 7.16 (“On information and belief, Roche has imported and is importing products

containing   glycosylated    human     EPO    manufactured     in   Europe,   as   well   as

pharmaceutical compositions containing glycosylated human EPO, into the United

States.   In addition, Roche has used and is using the imported PEG-EPO and

pharmaceutical compositions containing PEG-EPO in the United States to treat anemic

patients under the auspices of clinical trials.”) (emphasis added). On Roche’s motion

for summary determination, the Commission in fact found that “CERA has been

imported into the United States”—albeit for purposes that, in the view of the

Commission, broadly fell within the safe harbor of § 271(e)(1). In re Certain Prods. &

Pharm. Compositions Containing Recombinant Human Erythropoietin, No. 337-TA-568

(Int’l Trade Comm’n July 7, 2006).




2007-1014                                    12
      There is no dispute that Roche has imported EPO. The parties’ main disputes

are whether the safe harbor of § 271(e)(1) applies as a matter of law, and whether all of

the EPO that Roche imported was entitled to the protection of the safe harbor. That

dispute goes to the merits of Amgen’s complaint, not to the Commission’s jurisdiction to

hear it. As we have stated (in a case nearly twenty years ago involving the same

complainant):

      As is very common in situations where a tribunal’s subject matter
      jurisdiction is based on the same statute which gives rise to the federal
      right, the jurisdictional requirements of section 1337 mesh with the factual
      requirements necessary to prevail on the merits. In such a situation, the
      Supreme Court has held that the tribunal should assume jurisdiction and
      treat (and dismiss on, if necessary) the merits of the case.

                                     *      *     *

      Amgen’s complaint alleged that Chugai was importing rEPO and that the
      rEPO was made by a process covered by the ’008 patent; thus, on its face
      the complaint came within the jurisdiction of the Commission. The fact
      that Amgen was later unable to sustain these allegations is not material to
      the issue of jurisdiction. We hold that the Commission should have
      assumed jurisdiction, and, if the facts indicate that Amgen cannot obtain
      relief under section 1337(a)(1)(B)(ii), the Commission should have
      dismissed on the merits.

Amgen Inc. v. Int’l Trade Comm’n, 902 F.2d 1532, 1536 (Fed. Cir. 1990) (citing Bell v.

Hood, 327 U.S. 678, 682 (1946) and Jackson Transit Auth. v. Local Div. 1285,

Amalgamated Transit Union, AFL-CIO-CLC, 457 U.S. 15, 21 (1982)) (footnotes

omitted).

      In this case, the Commission had jurisdiction as a result of Amgen’s allegation

that Roche imported an article made by a process covered by the claims of a valid and

enforceable United States patent. See 19 U.S.C. § 1337(a)(1)(B)(ii). The Commission

therefore was correct to reach the merits of Amgen’s claim. We need not and do not

address whether the Commission would have had jurisdiction if Amgen had not


2007-1014                                  13
asserted actual importation and relied instead entirely on its “imminent importation”

theory.

                                     SUMMARY

      Applying the safe harbor exemption of 35 U.S.C. '271(e)(1), the imported EPO is

not subject to exclusion based on infringement of either product or process patents, to

the extent that the imported EPO is used to develop information that is reasonably

related to the development and submission of information to the federal regulatory

authority. The Commission's holding to this effect is affirmed. However, Roche's uses

of imported EPO unrelated to obtaining FDA approval are not shielded by the

exemption. We therefore reverse the Commission's summary determination in favor of

Roche and remand for further proceedings consistent with this opinion.


               AFFIRMED IN PART, REVERSED IN PART, AND REMANDED




2007-1014                                 14
 United States Court of Appeals for the Federal Circuit

                                       2007-1014

                                     AMGEN INC.,

                                                       Appellant,

                                            v.

                       INTERNATIONAL TRADE COMMISSION,

                                                       Appellee,

                                           and

             ROCHE HOLDING LTD., F. HOFFMANN-LA ROCHE LTD.,
          ROCHE DIAGNOSTICS GMBH, and HOFFMANN-LA ROCHE INC.,

                                                       Intervenors.


Appeal from the United States International Trade Commission in Investigation
No. 337-TA-568.


LINN, Circuit Judge, concurring-in-part and dissenting-in-part.

      I am pleased to join Parts I.B and II of the majority opinion insofar as they relate

to the asserted product claims, but I respectfully dissent from Part I.A, which holds that

the safe harbor from infringement liability provided by 35 U.S.C. § 271(e) extends to the

exclusion by the Commission of pharmaceutical products produced abroad by means of

a patented process. Like the majority, I do not find persuasive Amgen’s arguments that

the term “patented invention” in § 271(e)(1) was intended to exclude process patents.

See Majority Op. at 7-8. Nor do I disagree that § 271(e)(1) is to be construed broadly.

See id. at 8. My conclusion, rather, follows from the fact that § 271(e)(1) declares that

certain activities “shall not be an act of infringement,” while the plain language of the
statute governing process claims before the Commission, 19 U.S.C. § 1337(a)(1)(B)(ii),

does not require an act of infringement for the Commission to issue an exclusion order.

       Specifically, § 1337(a)(1)(B)(ii) declares unlawful the importation, inter alia, of

articles that “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.”

Assuming, arguendo, that Amgen prevails as to its infringement and validity contentions

on the merits, the EPO at issue in this case would be “produced . . . by means of[] a

process covered by the claims of a valid and enforceable United States patent”—

regardless of whether the use to which the EPO is put is shielded from liability for

infringement by § 271(e)(1).     The thrust of the majority’s position is that Congress

probably intended § 271(e)(1) to apply in section 337 proceedings the same way it

applies in patent infringement litigation under Title 35. While I agree that it would make

sense for section 337 to apply that way, the problem remains that if that is what

Congress intended, it is not what Congress unambiguously said.

       The   language     of   § 1337(a)(1)(B)(ii)   contrasts   with   the   language   of

§ 1337(a)(1)(B)(i), the corresponding provision governing proceedings regarding

patented products. Section 1337(a)(1)(B)(i) declares unlawful the importation of articles

that “infringe a valid and enforceable United States patent.” Thus, there is no dispute

that the safe harbor of § 271(e) applies to product claims before the Commission; the

unlawfulness under section 337 of the importation of a patented product hinges on

whether the importation is itself an act of infringement.

       It appears that this difference in language is not accidental. Although Title 35

and section 337 are ordinarily coextensive, their scope has differed with respect to




2007-1014                                 2
imported goods made by patented processes for almost seventy years.               In 1940,

Congress enacted § 1337a—the predecessor to today’s § 1337(a)(1)(B)(ii) and the

origin of its “covered by the claims” language—in response to a decision by our

predecessor court that the importation of an article produced abroad by a process

covered by a U.S. patent was not an unfair trade practice forbidden by section 337.

See In re Amtorg, 75 F.2d 826 (CCPA 1935) (observing that it was not the “purpose of

the Congress in enacting section 337 of the Tariff Act of 1930 to broaden the field of

substantive patent rights”).    Such importations were not acts of infringement until

Congress enacted 35 U.S.C. § 271(g) in 1988.           Even under the present statutory

scheme, as the majority acknowledges, we have held that the defenses enumerated in

§ 271(g) do not apply in actions under § 1337(a)(1)(B)(ii). See Kinik v. Int’l Trade

Comm’n, 362 F.3d 1359, 1362–63 (Fed. Cir. 2004). This is because the language of

the two provisions differs and because the legislative history of § 271(g) indicates that

Congress did not intend for it to narrow the scope of pre-existing remedies before the

Commission.

       It is important to recognize that the former § 1337a was recodified into

§ 1337(a)(1)(B)(ii) as part of the same statute that created 35 U.S.C. § 271(g).

Omnibus Trade and Competitiveness Act of 1988, Pub. L. 100-418.                In enacting

§ 1337(a)(1)(B)(ii), Congress reaffirmed its choice of language that required only that a

process be “covered by the claims of a valid and enforceable United States patent,”

even though § 271(e) had by this time been enacted. Congress easily could have

referred to the newly-created § 271(g), which for the first time extended “liab[ility] as an

infringer” to those who import products made abroad by processes patented in the




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United States, or it could have used the same language in § 1337(a)(1)(B)(ii) as in

§ 1337(a)(1)(B)(i) if it intended those sections to correspond exactly to § 271(g) and

§ 271(a), respectively.   Instead, it chose to recodify language that had deliberately

broadened the scope of section 337 proceedings beyond the scope of infringement

liability under § 271.    Thus, with respect, I do not find persuasive the majority’s

conclusion that we should ignore the language of § 1337(a)(1)(B)(ii) based on

“congressional policy as set forth in enactment of § 271(g).” Majority Op. at 7. Whether

deliberately or through oversight, when Congress passed § 271(g), it enacted statutory

text that is not consistent with the majority’s interpretation of congressional policy.

       In short, I see no basis for concluding that Congress did not intend what it said. I

do not disagree with the majority’s policy judgment that § 1337 and § 271 should be

brought into synchrony. But that is not a decision for a court to make, particularly in

light of the legislative history. “[I]t is not our function to eliminate clearly expressed

inconsistency of policy and to treat alike subjects that different Congresses have chosen

to treat differently.” W. Va. Univ. Hosps., Inc. v. Casey, 499 U.S. 83, 101 (1991).

Indeed, it is worth noting that there are also potential policy arguments in support of the

textual reading of the statute. Congress may not have intended to extend the same

benefits of § 271(e)(1) to foreign pharmaceutical companies as it extended to domestic

ones, or it may have intended to discourage the importation of pharmaceuticals that

have not yet been approved by the FDA. But “[i]t is not our job to speculate upon

congressional motives.” Riegel v. Medtronic, Inc., No. 06-179 (U.S. Feb. 20, 2008).

       Accordingly, I would reverse and remand to the Commission for consideration of

the merits of Amgen’s complaint with respect to the process claims, without regard to




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the use to which the imported EPO is put. I join the majority’s disposition as to the

product claims.




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