Tianrui Group Company Limited and Tianrui Group Foundry Company Limited v. International Trade Commission

United States Court of Appeals
for the Federal Circuit
__________________________
TIANRUI GROUP COMPANY LIMITED AND
TIANRUI GROUP FOUNDRY COMPANY LIMITED,
Appellants,
and
STANDARD CAR TRUCK COMPANY, INC. AND
BARBER TIANRUI RAILWAY SUPPLY, LLC,
Appellants,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
and
AMSTED INDUSTRIES INCORPORATED,
Intervenor.
__________________________
2010-1395
__________________________
On appeal from the United States International Trade
Commission in Investigation No. 337-TA-655.
__________________________
Decided: October 11, 2011
___________________________

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TIANRUI GROUP CO v. ITC 2
TOM M. SCHAUMBERG , Adduci, Mastriani & Schaum-
ber, LLP, of Washington, DC, argued for all appellants.
With him on the brief for TianRui Group Company Lim-
ited, et al., was JONATHAN J. ENGLER. Also on the brief,
were JOEL M. FREED , McDermott Will & Emery, LLP, of
Washington, DC; and RUIXUE RAN , Jun He Law Offices, of
Beijing, P.R. China. Of counsel were S TEVEN H. H OEFT,
McDermott, Will & Emery, LLP, of Washington.
ANDREA C. CASSON , Assistant General Counsel, Office
of the General Counsel, United States International
Trade Commission, of Washington, DC, for Appellee.
With him on the brief were JAMES M. LYONS , General
Counsel, and CLINT A. G ERDINE, Attorney.
D EAN A. PELLETIER, McAndrews, Held & Malloy, Ltd.,
of Chicago, Illionis, for intervenor. With him on the brief
were G REGORY J. VOGLER, WILHELM L. RAO , Y UFENG M A,
and M ICHAEL J. K RAUTNER. Of counsel on the brief were
LYLE B. VANDER SCHAAF and JAY H. REIZISS , Brinks Hofer
Gilson & Lione, of Washington, DC.
__________________________
Before BRYSON , SCHALL, and MOORE, Circuit Judges.
Opinion for the court filed by Circuit Judge BRYSON .
Dissenting opinion filed by Circuit Judge M OORE.
BRYSON , Circuit Judge
This appeal arises from a determination by the Inter-
national Trade Commission that the importation of cer-
tain cast steel railway wheels violated section 337 of the
Tariff Act of 1930, 19 U.S.C. § 1337. The Commission
found that the wheels were manufactured using a process
that was developed in the United States, protected under
domestic trade secret law, and misappropriated abroad.

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TIANRUI GROUP CO v. ITC 3
We are asked to decide whether the Commission’s statu-
tory authority over “[u]nfair methods of competition and
unfair acts in the importation of articles . . . into the
United States,” as provided by section 337(a)(1)(A), allows
the Commission to look to conduct occurring in China in
the course of a trade secret misappropriation investiga-
tion. We conclude that the Commission has authority to
investigate and grant relief based in part on extraterrito-
rial conduct insofar as it is necessary to protect domestic
industries from injuries arising out of unfair competition
in the domestic marketplace.
We are also asked to decide whether the Commission
erred by finding that the imported wheels would injure a
domestic industry when no domestic manufacturer is
currently practicing the protected process. In light of the
evidence before the Commission regarding the market-
place for cast steel railway wheels, we affirm the Com-
mission’s determination that the wheel imports threaten
to destroy or substantially injure an industry in the
United States, in violation of section 337.
I
A
Amsted Industries Inc. is a domestic manufacturer of
cast steel railway wheels. It owns two secret processes for
manufacturing such wheels, the “ABC process” and the
“Griffin process.” Amsted previously practiced the ABC
process at its foundry in Calera, Alabama, but it no longer
uses that process in the United States. Instead, Amsted
uses the Griffin process at three of its domestic foundries.
Amsted has licensed the ABC process to several firms
with foundries in China.

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TIANRUI GROUP CO v. ITC 4
TianRui Group Company Limited and TianRui Group
Foundry Company Limited (collectively, “TianRui”)
manufacture cast steel railway wheels in China. In 2005,
TianRui sought to license Amsted’s wheel manufacturing
technology, but the parties could not agree on the terms of
a license. After the failed negotiations, TianRui hired
nine employees away from one of Amsted’s Chinese
licensees, Datong ABC Castings Company Limited. Some
of those employees had been trained in the ABC process
at the Calera plant in Alabama, and others had received
training in that process at the Datong foundry in China.
Datong had previously notified those employees
through a written employee code of conduct that informa-
tion pertaining to the ABC process was proprietary and
confidential. Each employee had been advised that he
had a duty not to disclose confidential information. Eight
of the nine employees had also signed confidentiality
agreements before leaving Datong to begin working for
TianRui. In the proceedings brought by Amsted before
the International Trade Commission, Amsted alleged that
the former Datong employees disclosed information and
documents to TianRui that revealed the details of the
ABC process and thereby misappropriated Amsted’s trade
secrets.
TianRui partnered with Standard Car Truck Com-
pany, Inc., (“SCT”) to form the joint venture Barber
TianRui Railway Supply, LLC. SCT and Barber have
marketed TianRui wheels to United States customers and
have imported TianRui wheels into the United States.
Other than Amsted, SCT and Barber are the only compa-
nies selling or attempting to sell cast steel railway wheels
in the United States.

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TIANRUI GROUP CO v. ITC 5
B
Amsted filed a complaint with the Commission alleg-
ing a violation of section 337 based on TianRui’s misap-
propriation of trade secrets. Section 337(a)(1)(A)
prohibits “[u]nfair methods of competition and unfair acts
in the importation of articles . . . into the United States, . .
. the threat or effect of which is . . . to destroy or substan-
tially injure an industry in the United States.”
TianRui moved to terminate the proceedings on the
ground that the alleged misappropriation occurred in
China and that Congress did not intend for section 337 to
be applied extraterritorially. An administrative law judge
at the Commission denied that motion based on his view
that section 337 focuses not on where the misappropria-
tion occurs but rather on the nexus between the imported
articles and the unfair methods of competition. The
administrative law judge also rejected TianRui’s argu-
ment that Chinese courts would provide a better forum
for Amsted’s complaint.
At the merits stage, the administrative law judge ana-
lyzed the alleged misappropriation under Illinois trade
secret law. After noting that the Commission has looked
to general principles of tort or commercial law in past
investigations involving trade secret misappropriation,
the administrative law judge cited this court’s statement
in Leggett & Platt, Inc. v. Hickory Springs Manufacturing
Co., 285 F.3d 1353, 1360 (Fed. Cir. 2002), that “[t]rade
secret misappropriation is a matter of state law,” as the
basis for applying state law to this section 337 investiga-
tion. He applied Illinois law because Amsted, SCT, and
Barber all have their principal place of business in Illi-
nois. He noted, however, that “the Illinois law relating to
trade secrets does not differ substantially from the law

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TIANRUI GROUP CO v. ITC 6
applied in previous Commission trade secret investiga-
tions,” and he then applied general principles of trade
secret law, including the six factors defining a trade
secret set forth in the comments to section 757 of the
Restatement (First) of Torts.
Following a 10-day evidentiary hearing, the adminis-
trative law judge found that TianRui had misappropri-
ated 128 trade secrets relating to the ABC process from
Datong. That conclusion was based on evidence that
included an admission by TianRui’s expert that TianRui’s
foundry used the asserted trade secrets; his only conten-
tion was that the trade secrets were not actually secret.
In addition, the administrative law judge compared
TianRui’s manufacturing specifications with secret Da-
tong documents outlining the ABC process and found
them essentially identical. In fact, some of the TianRui
specifications contained the same typographical errors
that were found in the Datong documents. The adminis-
trative law judge also relied on similarities in foundry
layout between the Datong and TianRui plants. The
administrative law judge summarized the evidence as to
the appropriation of the trade secrets by saying that
“there is overwhelming direct and circumstantial evidence
that TianRui obtained its manufacturing process for cast
steel railway wheel[s] through the misappropriation of
[Amsted’s] ABC Trade Secrets.”
Besides contesting the Commission’s authority to ap-
ply section 337 extraterritorially, TianRui contended that
Amsted did not satisfy the domestic industry requirement
of section 337 based on the fact that Amsted no longer
practiced the ABC process in the United States. Because
none of Amsted’s domestic operations used the ABC
process, TianRui argued that there was no “domestic

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TIANRUI GROUP CO v. ITC 7
industry” that could be injured by the misappropriation of
trade secrets relating to that process.
The administrative law judge rejected that argument,
holding that it was not essential that the domestic indus-
try use the proprietary process, as long as the misappro-
priation of that process caused injury to the complainant’s
domestic industry. Applying that standard, the adminis-
trative law judge concluded that Amsted’s domestic
industry would be substantially injured by the importa-
tion of TianRui wheels.
The Commission decided not to review the adminis-
trative law judge’s initial determination and issued a
limited exclusion order. TianRui then appealed to this
court.
II
The main issue in this case is whether section 337 au-
thorizes the Commission to apply domestic trade secret
law to conduct that occurs in part in a foreign country.
Section 337 authorizes the Commission to exclude ar-
ticles from entry into the United States when it has found
“[u]nfair methods of competition [or] unfair acts in the
importation of [those] articles.” 19 U.S.C. § 1337(a)(1)(A).
The Commission has long interpreted section 337 to apply
to trade secret misappropriation. See, e.g., Certain Nut
Jewelry and Parts Thereof, Inv. No. 337-TA-229, USITC
Pub. 1929 (Nov. 1986); Certain Processes for the Manufac-
ture of Skinless Sausage Casings and Resulting Product,
Inv. No. 337-TA-148/169, USITC Pub. 1624 (Dec. 1984)
(“Sausage Casings”); Certain Apparatus for the Continu-
ous Production of Copper Rod, Inv. No. 337-TA-52, USITC
Pub. 1017 (Nov. 1979). TianRui does not challenge that

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TIANRUI GROUP CO v. ITC 8
interpretation. Nor does it dispute the Commission’s
factual finding that proprietary information belonging to
Amsted was disclosed to TianRui in breach of obligations
of confidentiality imposed on the former Datong employ-
ees or the finding that the information was used in manu-
facturing the imported railway wheels. Instead, TianRui
focuses on the fact that the disclosure of the trade secret
information occurred in China. According to TianRui,
section 337 cannot apply to extraterritorial conduct and
therefore does not reach trade secret misappropriation
that occurs outside the United States.
Amsted argues that the Commission did not apply
section 337 extraterritorially, because trade secrets were
misappropriated in the United States as a legal matter
when railway wheels made by exploiting those trade
secrets were imported into the United States and sold to
customers or disclosed to the Association of American
Railroads for certification purposes. Amsted argues that
Illinois law defines trade secret misappropriation very
broadly and that under Illinois law any unauthorized
“use” of an article embodying a trade secret constitutes
misappropriation. That definition of misappropriation,
according to Amsted, is broad enough to encompass any
use of articles produced by the misappropriated process,
not simply the acts that constitute a direct breach of the
duty of confidentiality. Amsted concludes that the admin-
istrative law judge therefore had sufficient evidence to
find trade secret misappropriation based on TianRui’s
importation of the wheels and its disclosure of those
wheels for certification purposes.
Like Amsted, the Commission argues that it applied
section 337 based on TianRui’s conduct in the United
States and did not apply the statute extraterritorially to
conduct occurring in China. In the alternative, the Com-

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TIANRUI GROUP CO v. ITC 9
mission contends that section 337 applies to imported
articles produced with misappropriated trade secrets,
even if the disclosure of the proprietary information
occurred outside the United States.
A
At the outset, we reject Amsted’s argument that Illi-
nois trade secret law governs the section 337 inquiry in
this case. The question of what law applies in a section
337 proceeding involving trade secrets is a matter of first
impression for this court. We hold that a single federal
standard, rather than the law of a particular state, should
determine what constitutes a misappropriation of trade
secrets sufficient to establish an “unfair method of compe-
tition” under section 337.
The administrative law judge acknowledged that in
previous section 337 proceedings involving trade secret
misappropriation, the Commission has applied general
principles of trade secret law, not the law of any particu-
lar state. The administrative judge, however, felt bound
to apply state law because of a statement by this court
that issues of trade secret misappropriation are ordinarily
matters of state law. See Leggett & Platt, 285 F.3d at
1360. That statement is, of course, true as a general
matter and was true of the trade secret issue in the
Leggett & Platt case, which addressed state law trade
secret claims that were before this court under supple-
mental jurisdiction. But where the question is whether
particular conduct constitutes “unfair methods of compe-
tition” and “unfair acts” in importation, in violation of
section 337, the issue is one of federal law and should be
decided under a uniform federal standard, rather than by
reference to a particular state’s tort law.

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TIANRUI GROUP CO v. ITC 10
The question under section 337 is not whether the
policy choices of a particular state’s legislature or those
reflected in a particular state’s common law rules should
be vindicated, but whether goods imported from abroad
should be excluded because of a violation of the congres-
sional policy of protecting domestic industries from unfair
competition, which is a distinctly federal concern as to
which Congress has created a federal remedy. In light of
the fact that section 337 deals with international com-
merce, a field of special federal concern, the case for
applying a federal rule of decision is particularly strong.
In fact, the nonstatutory unfair competition provision of
section 337 falls comfortably into both of the categories
that have been described as calling for the application of
federal common law—instances in which “a federal rule of
decision is ‘necessary to protect uniquely federal inter-
ests,’ . . . and those in which Congress has given the
courts the power to develop substantive law.” Tex. Indus.,
Inc. v. Radcliff Materials, Inc., 451 U.S. 630, 640 (1981);
Textile Workers Union v. Lincoln Mills, 353 U.S. 448, 456-
57 (1957) (federal law provides the substantive law to be
applied in actions for violations of a collective bargaining
agreement under section 301 of the Labor Management
Relations Act of 1947); see also FTC v. R.F. Keppel & Bro.,
Inc., 291 U.S. 304, 314 (1934) (stating that under the
Federal Trade Commission Act federal courts are to
determine what methods of competition are unfair, while
giving weight to the Commission’s determination); cf.
Grp. One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041,
1047-48 (Fed. Cir. 2001) (strong interest in uniform rule
regarding on-sale bar in patent cases justifies reliance on
federal common law generally informed by the Uniform
Commercial Code and the Restatement of Contracts).
Fortunately, trade secret law varies little from state
to state and is generally governed by widely recognized

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TIANRUI GROUP CO v. ITC 11
authorities such as the Restatement of Unfair Competi-
tion and the Uniform Trade Secrets Act. Moreover, the
federal criminal statute governing theft of trade secrets
bases its definition of trade secrets on the Uniform Trade
Secrets Act, so there is no indication of congressional
intent to depart from the general law in that regard. See
18 U.S.C. § 1839(3); H.R. Rep. No. 104-788, at 12 (1996),
reprinted in 1996 U.S.C.C.A.N. 4021, 4031. In any event,
there is no dispute in this case pertaining to the substan-
tive law of trade secrets. The administrative law judge’s
findings establish that TianRui obtained access to Am-
sted’s confidential information through former Datong
employees, who were subject to duties of confidentiality
imposed by the Datong code of employee conduct, and
that TianRui exploited that information in producing the
subject goods. TianRui does not take issue with those
findings, which are sufficient to establish the elements of
trade secret misappropriation under either Illinois law or
the generally understood law of trade secrets, as reflected
in the Restatement, the Uniform Trade Secrets Act, and
previous Commission decisions under section 337.
Therefore, the choice of law issue, although it could be
important in other cases, does not affect the outcome of
this case.
In this case, TianRui argues that section 337 is inap-
plicable because Amsted’s confidential information was
disclosed in China. The legal issue for us to decide is thus
whether section 337 applies to imported goods produced
through the exploitation of trade secrets in which the act
of misappropriation occurs abroad.1 To answer that
1 Amsted argues that the administrative law judge
found that Amsted’s trade secrets were misappropriated
within the United States. The administrative law judge,
however, did not make such findings with respect to all of
Amsted’s trade secrets. In fact, the administrative law

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TIANRUI GROUP CO v. ITC 12
question, we must review the principles that apply to
federal statutes that create causes of action based in part
on conduct that occurs overseas.
B
It is a “longstanding principle of American law ‘that
legislation of Congress, unless a contrary intent appears,
is meant to apply only within the territorial jurisdiction of
the United States.’” EEOC v. Arabian Am. Oil Co., 499
U.S. 244, 248 (1991) (“Aramco”). That presumption
expresses a canon of construction that is rooted in the
“commonsense notion that Congress generally legislates
with domestic concerns in mind.” Smith v. United States,
507 U.S. 197, 204 n.5 (1993). The canon “serves to protect
against unintended clashes between our laws and those of
other nations which could result in international discord,”
judge made only one statement in the initial determina-
tion that hinted at domestic misappropriation. The
administrative law judge implied that TianRui had sub-
mitted specifications containing trade secrets number
105, 237, and 239 to the Association of American Rail-
roads for certification purposes. Because that finding
relates to only three out of 128 trade secrets found to have
been misappropriated, we do not affirm the exclusion
order on that basis. Nor do we affirm the exclusion order
on the ground that the evidence would have justified the
administrative law judge in finding domestic misappro-
priation of all 128 trade secrets. See SEC v. Chenery
Corp., 332 U.S. 194, 196 (1947). Finally, we reject Am-
sted’s argument that TianRui’s marketing and certifica-
tion efforts in this country qualified as acts of “use” of
Amsted’s trade secrets (and thus constituted acts of
misappropriation). That conduct may have exploited the
earlier misappropriation, but it cannot reasonably be
viewed as misappropriative conduct without regard to
whether there has been a breach of a duty of confidential-
ity.

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TIANRUI GROUP CO v. ITC 13
Aramco, 499 U.S. at 248, and “preserv[es] a stable back-
ground against which Congress can legislate with pre-
dictable effects.” Morrison v. Nat’l Austl. Bank Ltd., 130
S. Ct. 2869, 2881 (2010). The presumption is not an end
in itself, but functions as a tool for ascertaining congres-
sional intent.2
The presumption against extraterritoriality does not
govern this case, for three reasons. First, section 337 is
expressly directed at unfair methods of competition and
unfair acts “in the importation of articles” into the United
States. As such, “this is surely not a statute in which
Congress had only ‘domestic concerns in mind.’”
Pasquantino v. United States, 544 U.S. 349, 371-72 (2005)
(holding that the wire fraud statute, 18 U.S.C. § 1343,
applied to a scheme to smuggle liquor into Canada with-
out paying excise taxes because the statute refers to
“communication in interstate or foreign commerce”). The
focus of section 337 is on an inherently international
transaction—importation. In that respect, section 337 is
analogous to immigration statutes that bar the admission
of an alien who has engaged in particular conduct or who
makes false statements in connection with his entry into
this country. See, e.g., 8 U.S.C. §§ 1101(f)(6), 1182(a). In
such cases, the focus is not on punishing the conduct or
the false statements, but on preventing the admission of
the alien, so it is reasonable to assume that Congress was
aware, and intended, that the statute would apply to
conduct (or statements) that may have occurred abroad.
See United States v. Villanueva, 408 F.3d 193, 199 (5th
Cir. 2005) (“Immigration statutes, by their very nature,
2 Even when the presumption against extraterrito-
riality applies, the Supreme Court has not treated the
presumption as a “clear statement rule,” but has noted
that “context can be consulted as well.” Morrison, 130 S.
Ct. at 2883.

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TIANRUI GROUP CO v. ITC 14
pertain to activity at or near international borders. It is
natural to expect that Congress intends for laws that
regulate conduct that occurs near international borders to
apply to some activity that takes place on the foreign side
of those borders.”); United States v. Delgado-Garcia, 374
F.3d 1337, 1345 (D.C. Cir. 2004) (holding that a statute
that “protects the borders of the United States against
illegal immigration” would apply to extraterritorial acts
by foreign nationals despite the lack of a clear statement
of extraterritorial application because “‘the natural infer-
ence from the character of the offense[s]’ is that an extra-
territorial location ‘would be a probable place for [their]
commission,’” quoting United States v. Bowman, 260 U.S.
94, 99 (1922)).
Second, in this case the Commission has not applied
section 337 to sanction purely extraterritorial conduct;
the foreign “unfair” activity at issue in this case is rele-
vant only to the extent that it results in the importation
of goods into this country causing domestic injury. In
light of the statute’s focus on the act of importation and
the resulting domestic injury, the Commission’s order
does not purport to regulate purely foreign conduct. See
Morrison, 130 S. Ct. at 2884 (focusing the extraterritorial-
ity analysis on the “objects of the statute’s solicitude”).
Because foreign conduct is used only to establish an
element of a claim alleging a domestic injury and seeking
a wholly domestic remedy, the presumption against
extraterritorial application does not apply. See Small v.
United States, 544 U.S. 385, 388-89 (2005) (noting that
the presumption against extraterritorial application does
not apply to a prosecution for the domestic possession of a
gun by someone convicted in a foreign court, although it
would apply in considering whether the statute “prohibits
unlawful gun possession abroad as well as domestically”);
id. at 399 (Thomas, J., dissenting) (agreeing with the

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TIANRUI GROUP CO v. ITC 15
majority that the presumption against extraterritorial
application does not apply because “the Government is
enforcing a domestic criminal statute to punish domestic
criminal conduct”).
The dissent disregards the domestic elements of the
cause of action under section 337 and characterizes this
case as involving “conduct which entirely occurs in a
foreign country.” That characterization accurately de-
scribes most of the events constituting the misappropria-
tion, but the determination of misappropriation was
merely a predicate to the charge that TianRui committed
unfair acts in importing its wheels into the United States.
In other words, the Commission’s interpretation of section
337 does not, as the dissent contends, give it the authority
to “police Chinese business practices.”3 It only sets the
conditions under which products may be imported into
the United States.
Under the dissent’s construction of section 337, the
importation of goods produced as a result of trade secret
misappropriation would be immune from scrutiny if the
act of misappropriation occurred overseas. That is, as
3 The dissent’s concern about the possible extension
of section 337 to other foreign business practices, such as
the underpayment (or nonpayment) of employees, is
unwarranted. At oral argument, the Commission explic-
itly disavowed any such authority. Moreover, in the
analogous context of the Federal Trade Commission Act,
the Supreme Court long ago responded to similar con-
cerns by holding that the prohibition on “unfair methods
of competition” does not encompass “practices never
heretofore regarded as opposed to good morals because
characterized by deception, bad faith, fraud or oppression,
or as against public policy because of their dangerous
tendency unduly to hinder competition or create monop-
oly.” FTC v. Gratz, 253 U.S. 421, 427 (1920).

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TIANRUI GROUP CO v. ITC 16
long as the misappropriating party was careful to ensure
that the actual act of conveying the trade secret occurred
outside the United States, the Commission would be
powerless to provide a remedy even if the trade secret
were used to produce products that were subsequently
imported into the United States to the detriment of the
trade secret owner. We think it highly unlikely that
Congress, which clearly intended to create a remedy for
the importation of goods resulting from unfair methods of
competition, would have intended to create such a con-
spicuous loophole for misappropriators.4
4 There is nothing remarkable about concluding
that Congress would have wanted section 337 remedies to
be available for acts of trade secret misappropriation
occurring abroad. In a similar setting, Congress in 1996
enacted the Economic Espionage Act, 18 U.S.C. §§ 1831-
39, to fill a gap in federal protection of trade secrets. That
Act prohibits trade secret theft and applies to foreign
conduct if “an act in furtherance of the offense was com-
mitted in the United States.” 18 U.S.C. § 1837. Congress
thus recognized that misappropriation of U.S. trade
secrets can, and does, occur abroad, and that it is appro-
priate to remedy that overseas misappropriation when it
has a domestic nexus.

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TIANRUI GROUP CO v. ITC 17
Third, the legislative history of section 337 supports
the Commission’s interpretation of the statute as permit-
ting the Commission to consider conduct that occurs
abroad. Congress first enacted a prohibition against
“unfair methods of competition” in the Federal Trade
Commission Act, Pub. L. No. 63-203, § 5, 38 Stat. 717, 719
(1914), codified as amended at 15 U.S.C. § 45. Congress
chose that phrase because it was “broader and more
flexible” than the traditional phrase “unfair competition,”
which had acquired a narrow meaning in its common law
usages. R.F. Keppel, 291 U.S. at 310-12.
Congress intended a similarly broad and flexible
meaning when it used the same language to prohibit
“unfair methods of competition” in importation. That
provision was added to the law in the Tariff Act of 1922,
Pub. L. No. 67-318, § 316(a), 42 Stat. 858, 943, pursuant
to a recommendation of the Tariff Commission (the for-
mer name of the International Trade Commission) in a
1919 report.5 See U.S. Tariff Comm’n, Dumping and
Unfair Foreign Competition in the United States and
Canada’s Anti-dumping Law (1919) (“1919 Report”). In
its report, the Commission identified several deficiencies
in U.S. trade laws, including the absence of any remedy
for unfair competition other than dumping, id. at 11, and
the lack of any adequate “governmental machinery” for
investigating allegations of dumping, “one element of
5 The House Ways and Means Committee requested
the 1919 Report in connection with its work on trade
legislation. 1919 Report at 5, 7. It relied on the Commis-
sion’s analysis in that report in explaining the antidump-
ing provisions from Title II of the Emergency Tariff Act of
1921, Pub. L. No. 67-10, 42 Stat. 9, 11. See H.R. Rep. No.
66-479, at 2 (1919) (noting that investigatory authority
extended to the original books of an overseas shipper or
manufacturer); see also H.R. Rep. No. 67-1, at 23 (1921).

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TIANRUI GROUP CO v. ITC 18
which must be found abroad,” id. at 18. In a subsequent
annual report, issued while the bill that was to become
the 1922 Tariff Act was pending before Congress, the
Commission renewed the recommendations from the 1919
report relating to unfair competition. See U.S. Tariff
Comm’n, Fifth Annual Report 96 (1921).
In section 316 of the Tariff Act of 1922, Congress re-
sponded to the Commission’s recommendation by declar-
ing “unfair methods of competition and unfair acts in the
importation of articles into the United States” to be
unlawful. That Act authorized the Tariff Commission to
investigate allegations of such conduct in accordance with
rules that the Commission would promulgate, and it gave
the President the authority to impose additional duties or
to exclude articles that the Commission found to be in
violation of that provision. The Senate report on the 1922
Act explained that “[t]he provision relating to unfair
methods of competition in the importation of goods is
broad enough to prevent every type and form of unfair
practice and is, therefore, a more adequate protection to
American industry than any antidumping statute the
country has ever had.” S. Rep. No. 67-595, pt. 1, at 3
(1922).
After the enactment of the Tariff Act of 1922, the
Commission advised Congress that the new provisions
“make it possible for the President to prevent unfair
practices, even when engaged in by individuals residing
outside the jurisdiction of the United States.” U.S. Tariff
Comm’n, Sixth Annual Report 4 (1922). When Congress
subsequently enacted the Tariff Act of 1930, section 316 of
the 1922 Act became section 337 of the new Act with some
modifications to the provisions regarding remedies and
judicial review. Congress did not, however, disagree with
the Commission’s characterization of the prohibition on

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TIANRUI GROUP CO v. ITC 19
“unfair methods of competition” in the importation of
articles into the United States, even though opponents
criticized the Commission’s broad authority to investigate
acts of unfair competition with respect to goods imported
into this country. See Tariff Act of 1929, Vol. 17: Special
and Administrative Provisions: Hearing on H.R. 2667
Before the S. Comm. on Finance, 71st Cong. 77-79 (1929)
(statement of James W. Bevans, representing the Na-
tional Council of American Importers & Traders, Inc.). In
light of the legislative background, and in particular in
view of the close working relationship between the Com-
mission and the relevant congressional committees,6 it is
fair to conclude that Congress contemplated that, in
exercising its new authority over unfair competition, the
Commission would consider conduct abroad in determin-
ing whether imports that were the products of, or other-
wise related to, that conduct were unfairly competing in
the domestic market.
6 The House Ways and Means Committee, which
was responsible for drafting the trade legislation, de-
scribed its close collaboration with the Tariff Commission
on the Tariff Act of 1922 in the following way: “[T]he staff
of the Tariff Commission was placed at the disposal of the
committee and has been called upon to work with the
committee in drafting various tariff schedules. Through
these efforts the bill herein recommended proposes many
desirable changes in arrangement and classification.”
H.R. Rep. No. 67-248, at 2 (1921). Due to that close
working relationship and the absence of anything in the
legislative history contradicting the Commission’s de-
scriptions of section 316, we find the Commission’s re-
ports highly probative as to the meaning of that section.
Cf. Symbol Techs., Inc. v. Lemelson Med., 277 F.3d 1361,
1366 (Fed. Cir. 2002) (describing why the Federico com-
mentary on the Patent Act of 1952 provided “an invalu-
able insight into the intentions of the drafters of the Act”).

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TIANRUI GROUP CO v. ITC 20
The Commission’s interpretation of section 337 as
reaching acts of trade secret misappropriation that occur
abroad is consistent with the position it has taken regard-
ing overseas acts of unfair competition since the enact-
ment of section 337’s predecessor. See Sausage Casings,
USITC Pub. 1624, 243-298 (Initial Determination); Tariff
Comm’n, Sixth Annual Report 4. We have held that the
Commission’s reasonable interpretations of section 337
are entitled to deference. See Enercon GmbH v. Int’l
Trade Comm’n, 151 F.3d 1376, 1381 (Fed. Cir. 1998);
Corning Glass Works v. U.S. Int’l Trade Comm’n, 799
F.2d 1559, 1565 (Fed. Cir. 1986). Thus, even if we were to
conclude that section 337 is ambiguous with respect to its
application to trade secret misappropriation occurring
abroad, we would uphold the Commission’s interpretation
of the scope of the statute. As it is, we conclude that the
Commission’s longstanding interpretation is consistent
with the purpose and the legislative background of the
statute, and we therefore hold that it was proper for the
Commission to find a section 337 violation based in part
on acts of trade secret misappropriation occurring over-
seas.
C
TianRui argues that the Commission should not be al-
lowed to apply domestic trade secret law to conduct
occurring in China because doing so would cause im-
proper interference with Chinese law. We disagree. In
the first place, as we have noted, the Commission’s exer-
cise of authority is limited to goods imported into this
country, and thus the Commission has no authority to
regulate conduct that is purely extraterritorial. The
Commission does not purport to enforce principles of
trade secret law in other countries generally, but only as
that conduct affects the U.S. market. That is, the Com-

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TIANRUI GROUP CO v. ITC 21
mission’s investigations, findings, and remedies affect
foreign conduct only insofar as that conduct relates to the
importation of articles into the United States. The Com-
mission’s activities have not hindered TianRui’s ability to
sell its wheels in China or any other country.
Second, TianRui has failed to identify a conflict be-
tween the principles of misappropriation that the Com-
mission applied and Chinese trade secret law. Indeed, in
its forum non conveniens motion TianRui argued that
Chinese trade secret law would provide a “more than
adequate” remedy for any alleged misappropriation. In
addition, China has acceded to the Agreement on Trade-
Related Aspects of Intellectual Property Rights (“TRIPS”),
Apr. 15, 1994, Marrakesh Agreement Establishing the
World Trade Organization, Annex 1C. We cannot discern
any relevant difference between the misappropriation
requirements of TRIPS article 39 and the principles of
trade secret law applied by the administrative law judge
in this case. We therefore detect no conflict between the
Commission’s actions and Chinese law that would counsel
denying relief based on extraterritorial acts of trade
secret misappropriation relating to the importation of
goods affecting a domestic industry.
Finally, even apart from the acts of importation, the
conduct at issue in this case is not the result of the impo-
sition of legal duties created by American law on persons
for whom there was no basis to impose such duties. The
former Datong employees had a duty not to disclose
Amsted’s trade secrets arising from express provisions in
the Datong employee code and, in the case of most of the
employees, from confidentiality agreements that they

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TIANRUI GROUP CO v. ITC 22
signed during their employment with Datong.7 Thus, the
question in this case is whether the disclosure of pro-
tected information in breach of that duty is beyond the
reach of section 337 simply because the breach itself took
place outside the United States. To answer that question
in the affirmative would invite evasion of section 337 and
significantly undermine the effectiveness of the congres-
sionally designed remedy.
D
Our conclusion that section 337 authorized the Com-
mission’s actions in this case is not inconsistent with
court decisions that have accorded a narrow construction
to the extraterritorial application of U.S. patent law, in
particular Microsoft Corp. v. AT&T Corp., 550 U.S. 437
(2007); Amgen, Inc. v. U.S. International Trade Commis-
sion, 902 F.2d 1532 (Fed. Cir. 1990); and In re Amtorg
Trading Corp., 75 F.2d 826 (CCPA 1935). Those decisions
focused on statutory provisions specific to patent law,
especially the territorial limitations in the patent-
granting clause. The import of those decisions is that the
Commission’s broad and flexible authority to exclude from
entry articles produced using “unfair methods of competi-
tion” cannot be used to circumvent express congressional
limitations on the scope of substantive U.S. patent law.
7 TianRui does not argue that those duties were
unenforceable for public policy reasons in any jurisdiction,
and we do not presently address whether policy choices in
a foreign jurisdiction can nullify a contractually imposed
duty for the purposes of section 337. Cf. 3 Roger M.
Milgrim, Milgrim on Trade Secrets § 13.02[3] (2011)
(explaining that such issues are usually resolved by the
conflict rule of the forum); 1 Melvin F. Jager, Trade
Secrets Law § 4:8 (2011) (describing different approaches
to conflicts of law in trade secret actions).

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TIANRUI GROUP CO v. ITC 23
Because there is no parallel federal civil statute regulat-
ing trade secret protection, there is no statutory basis for
limiting the Commission’s flexible authority under section
337(a)(1)(A) with respect to trade secret misappropria-
tion.
In Amtorg, our predecessor court considered whether
the Commission’s authority to investigate “[u]nfair meth-
ods of competition and unfair acts in the importation of
articles into the United States” authorized the Commis-
sion to enjoin imports of products made by a patented
process. It did not, the court concluded, because section
337 did not enlarge the substantive scope of patent law.
At the time, the protections of a United States patent
were expressly limited to United States territories. 75
F.2d at 831, quoting 35 U.S.C. § 40 (1934). And the use or
sale of a product made by a patented process did not
constitute infringement of the process patent. Id. at 832.
The court reasoned that the sale of products made abroad
by a patented process must therefore be lawful unless “it
was the purpose of Congress in enacting section 337 . . . to
broaden the field of substantive patent rights, and create
rights in process patents extending far beyond any point
to which the courts have heretofore gone in construing the
patent statutes.” Id. at 834. After reviewing the legisla-
tive history, the court concluded that Congress did not
intend to expand the scope of substantive patent law
when it enacted section 337.
The court’s analysis in Amtorg primarily addressed
the scope of patent law and only secondarily considered
the Commission’s authority over “unfair methods of
competition.” To the extent Amtorg construed the scope of
the Commission’s jurisdiction over unfair methods of
competition, Congress has subsequently rejected that
construction in response to criticism by the Tariff Com-

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TIANRUI GROUP CO v. ITC 24
mission. In its next annual report to Congress after
Amtorg was decided, the Commission criticized the deci-
sion for holding that “the importation for use or sale of
products made abroad by a process patented in the United
States was not an unfair method of competition.” U.S.
Tariff Comm’n, Nineteenth Annual Report 12-13 (1936).
In response to the Commission’s report, Congress
amended the law to declare that the importation of prod-
ucts made by a process patented in the United States
“shall have the same status for the purposes of section
[337]” as the importation of a patented product. 19 U.S.C.
§ 1337a (1940); see S. Rep. No. 76-1903, at 1-2 (1940); H.
Rep. No. 76-1781, at 1-2 (1940). Amtorg thus has no effect
on the scope of the Commission’s authority to regulate
trade secret misappropriation relating to the production
of goods imported into this country.
Amgen and Microsoft are inapposite for similar rea-
sons. In Amgen, the complainant asserted a product
patent covering recombinant DNA and host cells against a
different imported product, rEPO. 902 F.2d at 1534-35.
Because the imported rEPO was produced abroad using
the patented recombinant DNA and host cells, the com-
plainant argued that the Commission had jurisdiction to
bar its importation under 19 U.S.C. § 1337(a)(1)(B)(ii), the
successor to section 1337a. We rejected that argument
because section 1337(a)(1)(B)(ii) is limited to articles
made abroad by a process patented in the United States,
and the asserted patent covered products instead of
processes. Because that decision did not address the
Commission’s section 337(a)(1)(A) jurisdiction over unfair
practices, it is not relevant to the question in this case.
In Microsoft, the Supreme Court addressed the scope
of an exception to “the general rule under United States
patent law that no infringement occurs when a patented

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TIANRUI GROUP CO v. ITC 25
product is made and sold in another country.” 550 U.S. at
441. That exception, 35 U.S.C. § 271(f), allows infringe-
ment to be found when the “components” of a patented
invention are supplied from the United States and com-
bined abroad. The Court narrowly construed the term
“component” to exclude the “intangible code” of an operat-
ing system because, inter alia, the presumption against
extraterritorial application of United States law “applies
with particular force in patent law.” 550 U.S. at 454-55.
Consequently, the Court held, the substantive patent
right did not reach the sale of computers in foreign coun-
tries.
By contrast, as we have noted, the statutory prohibi-
tion on “unfair methods of competition and unfair acts in
the importation of articles . . . into the United States”
naturally contemplates that the unfair methods of compe-
tition and unfair acts leading to the prohibited importa-
tion will include conduct that takes place abroad.
Because the statute applies to goods that are presented
for importation, it would be a strained reading of the
statute to bar the Commission from considering acts of
trade secret misappropriation that occur abroad. In cases
in which misappropriated trade secrets are used in the
manufacture of the imported goods, the misappropriation
will frequently occur overseas, where the imported goods
are made. To bar the Commission from considering such
acts because they occur outside the United States would
thus be inconsistent with the congressional purpose of
protecting domestic commerce from unfair methods of
competition in importation such as trade secret misap-
propriation.

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TIANRUI GROUP CO v. ITC 26
III
TianRui’s second ground for appeal focuses on the re-
quirement of section 337 that the acts of unfair competi-
tion threaten “to destroy or substantially injure an
industry in the United States.” 19 U.S.C.
§ 1337(a)(1)(A)(i). TianRui contends that in trade secret
cases, the domestic industry must practice the misappro-
priated trade secret in order for the Commission to be
authorized to grant relief. Because Amsted has no do-
mestic operations practicing the misappropriated ABC
process, TianRui argues that its imported wheels cannot
be held to injure or threaten injury to any domestic indus-
try within the meaning of section 337.
Section 337 contains different requirements for statu-
tory intellectual property (such as patents, copyrights,
and registered trademarks) than for other, nonstatutory
unfair practices in importation (such as trade secret
misappropriation). The provisions that apply to statutory
intellectual property require that an industry relating to
the protected articles exists or is in the process of being
established. 19 U.S.C. § 1337(a)(2). Such an industry
will be deemed to exist if there is significant domestic
investment or employment relating to the protected
articles. Id. § 1337(a)(3). In contrast, the general provi-
sion relating to unfair practices is not satisfied by evi-
dence showing only that a domestic industry exists; it
requires that the unfair practices threaten to “destroy or
substantially injure” a domestic industry. Id.
§ 1337(a)(1)(A). On the other hand, there is no express
requirement in the general provision that the domestic
industry relate to the intellectual property involved in the
investigation. Notwithstanding that textual distinction,
TianRui contends that investigations involving intellec-
tual property under the unfair practices provision require

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TIANRUI GROUP CO v. ITC 27
the existence of a domestic industry that relates to the
asserted intellectual property in the same manner that is
required for statutory intellectual property.
In support of its argument, TianRui cites the legisla-
tive history of the Omnibus Trade and Competitiveness
Act of 1988, Pub. L. No. 100-418, § 1342, 102 Stat. 1107,
1212, which created the separate requirements for statu-
tory intellectual property. Before that Act, section 337 of
the Tariff Act of 1930 set forth the same requirements for
all unfair practices in import trade, including the injury
requirement. See 19 U.S.C. § 1337(a) (1982). The 1988
Act removed the injury requirement for statutory intellec-
tual property and instead simply required evidence that
“an industry in the United States, relating to the articles
protected by the [statutory intellectual property], exists or
is in the process of being established.” 19 U.S.C.
§ 1337(a)(2). The Senate report noted that “[a]lthough the
injury test has been eliminated for certain intellectual
property rights cases, a complainant must still establish
that a U.S. industry relating to the articles or intellectual
property right concerned ‘exists or is in the process of
being established.’” S. Rep. No. 100-71, at 129 (1987).
According to TianRui, that legislative history demon-
strates that Congress removed the injury requirement
only for statutory intellectual property, but retained the
requirement that a domestic industry exists that relates
to the asserted rights for all intellectual property, includ-
ing trade secrets.
We disagree with TianRui’s interpretation of the leg-
islative history. Congress recognized that prior to the
1988 Act section 337 did not define “industry.” H.R. Rep.
No. 100-576, at 634 (1988) (Conf. Rep.), reprinted in 1988
U.S.C.C.A.N. 1547, 1667. Both the Senate and the House
of Representatives agreed that an “industry” would exist

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TIANRUI GROUP CO v. ITC 28
for intellectual property investigations if there was sig-
nificant domestic investment or employment relating to
the articles protected by the intellectual property. Id.; see
also 19 U.S.C. § 1337(a)(3). They disagreed, however, as
to whether that definition should apply to common law
trademarks and trade secrets. H.R. Rep. No. 100-576, at
634; S. Rep. No. 100-71, at 347. The Senate proposed that
the definition apply to common law trademarks and trade
secrets, and the language from the Senate report cited by
TianRui is consistent with that proposal. But the Senate
receded from its proposal after conference, and the new
definition of “industry” was limited to statutory intellec-
tual property. Because the Senate’s proposal did not
become law, we cannot rely on the legislative history
discussing that proposal to read a strict definition of
“industry” into section 337(a)(1)(A), when the statute
itself contains no such definition.
TianRui next contends that its construction is re-
quired by the reenactment doctrine. TianRui argues that
the Commission had a longstanding interpretation that
defined “industry” for trade secret investigations as the
portion of “complainant’s domestic operations devoted to
utilization of the confidential and proprietary technology
at issue” in the investigation. See Sausage Casings,
USITC Pub. 1624, at 341 (Initial Determination). Be-
cause Congress substantially reenacted the Commission’s
jurisdiction over unfair practices without disapproving of
that interpretation, according to TianRui, Congress
effectively adopted the Commission’s interpretation.
The Commission disagrees with TianRui’s characteri-
zation of its prior decisions. The Commission contends
that it has applied that definition in some trade secret
investigations, but that in other investigations it has
relied on a more flexible “realities of the marketplace”

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TIANRUI GROUP CO v. ITC 29
test. We have reviewed the investigations cited by the
parties and conclude that there was not a consistent
interpretation, as TianRui contends. See, e.g., Copper
Rod, USITC Pub. 1017, at 53-55, 58 (Commission Memo-
randum Opinion) (rejecting a narrow definition of “domes-
tic industry” based on intellectual property and instead
looking to the “realities of the marketplace”); see also
Certain Floppy Disk Drives and Components, Inv. No.
337-TA-203, USITC Pub. No. 1756, at 44-45 (Initial
Determination) (Sept. 1985) (“The Commission does not
adhere to any rigid formula in determining the scope of
the domestic industry as it is not precisely defined in the
statute, but will examine each case in light of the realities
of the marketplace.”). TianRui’s argument based on the
reenactment doctrine therefore falls with its premise.
In sum, we conclude that the Commission did not err
in defining the domestic industry in this case. The par-
ties submitted evidence indicating that the imported
TianRui wheels could directly compete with wheels do-
mestically produced by the trade secret owner. That type
of competition, the Commission concluded, is sufficiently
related to the investigation to constitute an injury to an
“industry” within the meaning of section 337(a)(1)(A). We
hold that the Commission’s conclusion in that regard is
based on a proper construction of the statute and that its
factual analysis of the effect of TianRui’s imports on the
domestic industry is supported by substantial evidence.
AFFIRMED

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United States Court of Appeals
for the Federal Circuit
__________________________
TIANRUI GROUP COMPANY LIMITED AND
TIANRUI GROUP FOUNDRY COMPANY LIMITED,
Appellants,
and
STANDARD CAR TRUCK COMPANY, INC. AND
BARBER TIANRUI RAILWAY SUPPLY, LLC,
Appellants,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
and
AMSTED INDUSTRIES INCORPORATED,
Intervenor.
__________________________
2010-1395
__________________________
On appeal from the United States International Trade
Commission in Investigation No. 337-TA-655.
__________________________
M OORE, Circuit Judge, dissenting.
The majority in this case expands the reach of both 19
U.S.C. § 1337 (§ 337) and trade secret law to punish
TianRui Group Company Limited (TianRui) for its com-
pletely extraterritorial activities. As a court, however, we

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TIANRUI GROUP CO v. ITC 2
must act within the confines set out by the text of the law.
Here, there is no basis for the extraterritorial application
of our laws to punish TianRui’s bad acts in China. As a
result, I respectfully dissent.
The majority in this case holds that 19 U.S.C.
§ 1337(a)(1)(A), which applies to “unfair acts in the impor-
tation of articles . . . into the United States,” allows the
International Trade Commission (Commission) to bar
imports because of acts of unfair competition occurring
entirely in China. The majority states the issue: “The
main issue in this case is whether § 337 authorizes the
Commission to apply domestic trade secret law to conduct
that occurs in part in a foreign country.” Maj. Op. at 7.
With all due respect, that is not the issue. The issue is
whether § 337 authorizes the Commission to apply do-
mestic trade secret laws to conduct which entirely occurs
in a foreign country.
The facts of this case are not disputed. A Chinese
company, Datong, had a license from a United States
company, Amsted, to use in China a process which Am-
sted kept secret. TianRui, the Chinese company accused
of violating § 337 in this case, hired several employees
from its Chinese competitor, Datong. These employees
disclosed the trade secrets to TianRui in China who used
them in China to make railway wheels in China. The
acts which arguably constitute misappropriation (theft of
a trade secret) all occurred in China.1
1 Amsted does argue that some of TianRui’s acts,
such as TianRui’s marketing and certification efforts,
constitute misappropriation of the trade secret in the
United States. The majority, however, explicitly rejected
these arguments: “we reject Amsted’s argument that
TianRui’s marketing and certification efforts in this
country qualified as acts of ‘use’ of Amsted’s trade secrets
(and thus constituted acts of misappropriation). That

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TIANRUI GROUP CO v. ITC 3
To be clear, I agree that trade secret misappropriation
falls squarely within the terms of § 337: if TianRui car-
ried out its acts of misappropriation in the United States
– namely if TianRui came to the United States and stole
Amsted’s trade secrets here – then § 337 could be used to
bar import of any goods made with the stolen technology.
But, as the majority concedes, these are not the facts of
this case, and to the extent there was a misappropriation
of any Amsted trade secret that misappropriation oc-
curred abroad. Maj. Op. at 11 n.1. In this case, none of
the acts which constitute misappropriation occurred in
the United States. While TianRui is certainly not a
sympathetic litigant – it poached employees to obtain
confidential information – none of the unfair acts occurred
in the United States and, as such, there is no violation of
United States law which amounts to an unfair trade
practice under the statute.
United States trade secret law simply does not extend
to acts occurring entirely in China. We have no right to
police Chinese business practices. Under the majority’s
rule today, if the United States government should decide
that goods were being produced in a foreign country using
what we consider to be unfair business practices, § 337
allows for their exclusion from the United States. The
potential breadth of this holding is staggering. Suppose
that goods were produced by workers who operate under
conditions which would not meet with United States labor
laws or workers who were not paid minimum wage or not
paid at all – certainly United States industry would be
hurt by the importation of goods which can be manufac-
tured at a fraction of the cost abroad because of cheaper
conduct may have exploited the earlier misappropriation
but it cannot reasonably be viewed as misappropriative
conduct without a breach of a duty of confidentiality.”
Maj. Op. at 11 n.1.

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TIANRUI GROUP CO v. ITC 4
or forced labor. Would we consider these business prac-
tices unfair? Absent clear intent by Congress to apply the
law in an extraterritorial manner, I simply do not believe
that we have the right to determine what business prac-
tices, conducted entirely abroad, are unfair. According to
the majority, its interpretation of § 337 does not give the
Commission “the authority ‘to police Chinese business
practices’”, “[i]t only sets the conditions under which
products may be imported into the United States.” Maj.
Op. at 15. This holding could not be clearer – the Com-
mission cannot police Chinese business practice unless
the Chinese wish to import the goods into the United
States. The act of importation opens the door to scrutiny
of all business practices of the importer associated with
the goods including those conducted entirely within
China. Section 337 simply does not authorize this level of
scrutiny of entirely foreign acts.
I.
Section 337 provides that “[u]nfair methods of compe-
tition and unfair acts in the importation of articles . . .
into the United States” which substantially injure a
domestic industry are unlawful. 19 U.S.C.
§ 1337(a)(1)(A). The unfair act alleged to violate the
statute is not the importation of the wheels into the
United States. There is nothing inherently unfair about
the wheels or the process by which they are imported in
this case. Nor is the presence of the wheels in the United
States somehow itself an unlawful act – a stark contrast
to the illegal immigration cases relied on by the majority
where the mere presence of the person in the United
States is the unlawful act. The unfair act in this case is
the alleged trade secret misappropriation. And both the
majority and dissent agree that the conduct related to the
misappropriation occurred entirely in China. Any “unfair
act” in this case is wholly extraterritorial.

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TIANRUI GROUP CO v. ITC 5
The question is thus whether § 337 contains a clear
indication of congressional intent to extend its reach to
wholly extraterritorial unfair acts. Analysis of § 337 must
be carried out in view of the “longstanding principle of
American law ‘that legislation of Congress, unless a
contrary intent appears, is meant to apply only within the
territorial jurisdiction of the United States.’” EEOC v.
Arabian Am. Oil Co., 499 U.S. 244, 248 (1991) (Aramco)
(quoting Foley Bros., Inc. v. Filardo, 336 U.S. 281, 285
(1949)). “Unless there is the affirmative intention of
Congress clearly expressed to give a statute extraterrito-
rial effect, we must presume it is primarily concerned
with domestic conditions.” Morrison v. Nat’l Austl. Bank
Ltd., 130 S. Ct. 2869, 2877 (2010) (internal quotations
omitted). When applying this principle, “we look to see
whether ‘language in the [relevant Act] gives any indica-
tion of a congressional purpose to extend its coverage
beyond places over which the United States has sover-
eignty or has some measure of legislative control.’” Id.
(alteration in original) (quoting Foley Bros., 336 U.S. at
285).
I see nothing in the plain language of the statute that
indicates that Congress intended it to apply to unfair acts
performed entirely abroad. The majority points to no
statutory language that expresses the clear intent for it to
apply to extraterritorial unfair acts. As a result, this is a
simple case: without any indication of a congressional
intent to extend § 337’s coverage beyond places over
which the United States has sovereignty or has some
measure of legislative control, we must limit the reach of
the statute to unfair acts in the United States. Cf. id.
When the statute is silent as to extraterritorial applica-
tion, the law is clear: “it has none.” Id. at 2878. Indeed,
based on this presumption the Supreme Court has re-
jected extraterritorial scope for a number of statutes with

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TIANRUI GROUP CO v. ITC 6
much stronger textual support than § 337. See, e.g.,
Small v. United States, 544 U.S. 385, 394 (2005) (“Given
the reasons for disfavoring an inference of extraterritorial
coverage from a statute’s total silence and our initial
assumption against such coverage . . . we conclude that
the phrase ‘convicted in any court’ refers only to domestic
courts, not to foreign courts.”); Morrison, 130 S. Ct. at
2882 (Even broad references to commerce that expressly
reference foreign commerce do “not defeat the presump-
tion against extraterritoriality.”).
The majority claims that importation “is an inher-
ently international transaction,” and analogizes imports
to illegal immigrants, false statements during entry into
the United States, the failure to pay an excise tax, and
the Economic Espionage Act. Maj. Op. at 13, 16 n.4. In
each of those circumstances, however, the courts were
confronted either with express statutory language indicat-
ing their extraterritorial application, see, e.g.,
Pasquantino v. United States, 544 U.S. 349, 371-72 (2004)
(“the wire fraud statute punishes frauds executed ‘in
interstate or foreign commerce’” (emphasis added)); Eco-
nomic Espionage Act, 18 U.S.C. § 1837 (explicitly stating
it “also applies to conduct occurring outside the United
States”); United States v. Villanueva, 408 F.3d 193, 198
(5th Cir. 2005) (explaining that Congress amended the
immigration statute to overturn an Eleventh Circuit case
which held that the statute did not apply to extraterrito-
rial acts),2 or the Court held their was no extraterritorial
2 The court held that amending the statute
“strongly suggests that Congress intended extraterritorial
application.” Villanueva, 408 F.3d at 198. Moreover, the
illegal immigration cases present a completely different
issue than § 337: an illegal alien’s presence in the United
States is, by definition, the prohibited act. In contrast,
there is nothing illegal about having TianRui’s wheels in
the United States and nothing unfair about TianRui’s acts

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TIANRUI GROUP CO v. ITC 7
application of the statute at issue, see, e.g., Small, 544
U.S. 385.
The proper focus to determine whether there is “an af-
firmative intention of Congress clearly expressed” is the
language of the statute. Section 337 limits the unfair acts
to “unfair acts in the importation of articles” into the
United States. The majority reads this limitation out of
the statute, and claims that Congress “clearly intended to
create a remedy for the importation of goods resulting
from unfair methods of competition,” Maj. Op. at 16.
Our predecessor court rejected essentially the same
argument nearly eighty years ago, and held that § 337
could not be used to exclude from importation goods
produced by a process patented in the United States but
carried out abroad. In re Amtorg Trading Corp., 75 F.2d
826, 834 (CCPA 1935). In Amtorg, foreign mining compa-
nies used processes disclosed and claimed in United
States patents abroad, and then shipped the resulting
products into the United States. Id. at 831. Even though
it would be unfair to use the patented process to produce
the same goods within the United States, we explained
that this was not an unfair act in the importation of
articles since § 337 did not expressly include the authority
to apply our laws to acts carried out abroad. Id. at 831-
32. In other words, because importing the product into
the United States offended no domestic laws,3 it was not
an unfair act in importation and therefore could not be
excluded under § 337. Since there is nothing unfair about
the importation of the wheels in this case (the appropriate
inquiry under § 337) as opposed to their manufacture
in importing them. The only allegedly unfair act was
their manufacture, which occurred entirely in China and
is beyond the reach of our domestic trade secret laws.
3 At the time of Amtorg, 35 U.S.C. § 271(g) did not
exist.

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TIANRUI GROUP CO v. ITC 8
abroad (which is outside the scope of the plain language of
the statute), like Amtorg we must conclude that the
wholly extraterritorial trade secret misappropriation is
not an unfair act in importation.4
After Amtorg, Congress passed an amendment, codi-
fied at 19 U.S.C. § 1337a (1940), which allowed the Com-
mission to prevent the “importation . . . of a product made
. . . by means of a process covered by the claims of any
unexpired valid United States letters patent.” Section
1337a – unlike § 337 – is a clear indication of Congres-
sional intent that the extraterritorial use of processes
claimed in United States patents fall within the scope of
unfair acts. See H.R. Rep. No. 1781, 76th Cong., 3d Sess.
4 (1940) (“Since the Amtorg decision owners of American
process patent [sic] are helpless to prevent the infringe-
ment abroad of their patent rights. This bill will give to
them the same rights which the owners of product patents
have.”). We must be mindful of the Supreme Court’s clear
guidance regarding the limits of extraterritoriality: “when
a statute provides for some extraterritorial application,
4 The majority sidesteps this problematic issue by
declaring that trade secret misappropriation is different
from Amtorg and other cases dealing with patents, which
consistently hold that § 337 cannot be applied extraterri-
torially. The majority argues that “[t]hose decisions
focused on statutory provisions specific to patent law,
especially the territorial limitations in the patent grant-
ing clause.” Maj. Op. at 22. The focus on the express
territoriality of our patent laws, however, turns the
default rule against extraterritoriality on its head: unless
a statute gives a “clear indication of an extraterritorial
application, it has none.” Morrison, 130 S. Ct. at 2878
(emphasis added). Even if our patent laws had no territo-
rial limitations, it would not change the outcome of Am-
torg or any of our other cases involving § 337. Moreover,
our trade secret laws are no less territorial than our
patent laws.

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TIANRUI GROUP CO v. ITC 9
the presumption against extraterritoriality operates to
limit that provision to its terms.” Morrison, 130 S. Ct. at
2883. Congress could have legislated generally to grant
extraterritorial application to any “unfair acts” in § 337,
but did not. Congress only changed the statute to create a
remedy for extraterritorial use of process patents.5 This
delicate legislative touch indicates that Congress intended
to give special treatment solely to process patents, and
not to other categories of “[u]nfair methods of competition
and unfair acts in the importation of articles.”
The majority also suggests that the legislative history
demonstrates that § 337 should be applied to extraterrito-
rial instances of trade secret misappropriation. Maj. Op.
17-19. The legislative history, like the plain language of
the statute, lacks a clear indication that Congress in-
tended § 337 to apply extraterritorially. The legislative
history indicates that Congress intended to give the Tariff
Commission (later the International Trade Commission)
power to exclude goods when there was an unfair act in
importation. For example, it would be unfair for “indi-
viduals residing outside the jurisdiction of the United
States” to engage in “unfair price cutting, full line forcing,
[or] commercial bribery” when importing their products
into the United States. U.S. Tariff Comm’s, Sixth Annual
Report 4 (1922). Nothing in the cited legislative history
suggests that Congress intended to give the Commission
the power to punish individuals for bad acts taking place
entirely outside of the United States.
The majority’s entire analysis hinges on a single sen-
tence from the U.S. Tariff Commission’s Sixth Annual
5 We previously recognized both the limited scope of
§ 337 and the narrow extraterritorial authorization of the
process patent exception enacted in § 1337a. Amgen, Inc.
v. U.S. Int’l Trade Comm’n, 902 F.2d 1532, 1537-40 (Fed.
Cir. 1990).

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TIANRUI GROUP CO v. ITC 10
Report 4 (1922):6 “These provisions make it possible for
the President to prevent unfair practices, even when
engaged in by individuals residing outside the jurisdiction
of the United States.” There are several problems with
the majority’s conclusion. First, this sentence is not even
legislative history – the statement was made after the
enactment of § 316, a predecessor to § 337. The statement
was not made in a Senate Report or House Report or even
during any hearing before Congress. It is made in a 99
page annual report that the Tariff Commission sent to
Congress as part of its annual reporting requirements.
The majority says that this sentence becomes legislative
history because Congress did not “disagree with the
Commission’s characterization” eight years later when
§ 316 became § 337 (in the Tariff Act of 1930). Maj. Op. at
18-19. Even if this sentence was clear on its face, I cannot
conclude that this sentence in this report is sufficient to
overcome the presumption against extraterritorial appli-
cation of the statute.
Second, contrary to the majority’s suggestion, the ref-
erence to “individuals residing outside the jurisdiction of
the United States” in this sentence is not even related to
the scope of the acts contemplated. Our predecessor court
explained that § 337 was necessary because:
manufactured products, produced in a foreign
country where the producer is beyond the control
of the courts of the United States, are imported
into this country. Up until the time when they
are released from customs custody into the com-
6 The majority cites other sentences that indicate
that § 337’s predecessor (§ 316), would “broadly” prevent
unfair competition – but saying it is broad is not the same
thing as saying it applies extraterritorially. The statute
does broadly cover everything from acts of bribery to false
labeling to price fixing to patent infringement.

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TIANRUI GROUP CO v. ITC 11
merce of this country, no opportunity is presented
to the manufacturer of the United States to pro-
tect himself against unfair methods of competition
or unfair acts. After the goods have been so re-
leased into the commerce of the country, the
American manufacturer may assert his rights
against any one who has possession of, or sells,
the goods. However, this method of control must
be, and is, ineffective, because of the multiplicity
of suits which must necessarily be instituted to
enforce the rights of the domestic manufacturer.
This phase of the matter obviously was in the
minds of the Congress at the time of the prepara-
tion of said section 337.
In re Orion Co., 71 F.2d 458, 466-67 (CCPA 1934). Thus,
§ 337 was enacted to solve the problem faced by domestic
industry when individuals outside the United States
imported products which, upon release into the domestic
stream of commerce, gave rise to a domestic cause of
action. Section 337 provided a means to prevent the
unfair act at its source, during the act of importation,
thereby avoiding an impossible multiplicity of suits. See
id. at 467 (“‘The owner of a patent, seeking to protect
himself, is confronted with the necessity of proceeding
against individual wholesalers or retailers. The resulting
multiplicity of suits imposes an impossible burden. Stop-
page of importation of infringing articles through an order
of exclusion from entry is the only effectual remedy.’”).
Hence, it is not clear that the single sentence cited by the
majority even stands for the proposition that the Com-
mission believed § 316 applied to entirely extraterritorial

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TIANRUI GROUP CO v. ITC 12
acts.7 It certainly does not present clear evidence that
Congress did.
In sum, there is no indication in § 337 that Congress
intended it to apply to wholly extraterritorial unfair acts.
In light of the plain language of the statute, the legisla-
tive history, the selective Congressional action to grant
extraterritorial effect to process patents, and the contrast
to other extraterritorial statutes, I conclude § 337 does
not reach the misappropriation and use of trade secrets in
China, even if the product of the misappropriated process
is ultimately imported into the United States.
II.
The problem underlying the majority’s analysis is that
“[f]oreign conduct is generally the domain of foreign law.”
Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 455 (2007)
(internal quotations omitted).8 I sympathize with Amsted
7 The majority claims the single ambiguous sen-
tence from 1922 and the Commission case Certain Proc-
esses for the Manufacture of Skinless Sausage Casings
and Resulting Product, Inv. No. 337-TA-148/169, USITC
Pub. 1624 (Dec. 1984) (Sausage Casings) means that the
Commission has construed § 337 to reach misappropria-
tion that occurs entirely abroad, and suggests that this
interpretation should be given deference. Maj. Op. at 20.
The issue of extraterritoriality, however, was neither
raised by the parties nor analyzed by the commission in
Sausage Casings, which focused on whether the producer
independently developed its process. There is no reason-
able statutory interpretation deserving deference in
Sausage Casing.
8 The majority claims there is no conflict between
trade secret laws in the United States and China, and
concludes that the absence of conflict supports granting
“relief based on extraterritorial acts of trade secret mis-
appropriation relating to the importation of goods affect-
ing a domestic industry.” Maj. Op. at 21. This conclusion,
however, conflicts with the Supreme Court’s explanation

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TIANRUI GROUP CO v. ITC 13
and, if the bad acts were carried out in the United States,
would not hesitate to find for Amsted. My sympathy,
however, is somewhat muted since Amsted had a ready-
made solution to its problem: obtain a process patent.
The statute is clear that the extraterritorial acts in this
case are subject to § 337 if the process is protected by a
patent. In the alternative, Amsted could have also pro-
tected its intellectual property by keeping the various
processes completely secret. Instead, Amsted chose to
deny the public full knowledge of its innovation while
simultaneously exploiting the trade secret by licensing it
to a Chinese corporation for use in China.
By broadening the scope of trade secret misappropria-
tion to the extraterritorial actions in this case, the major-
ity gives additional incentive to inventors to keep their
innovation secret. Of course, this also denies society the
benefits of disclosure stemming from the patent system,
which are anathema to trade secrets. Moreover, while
Amsted (or more likely its Chinese licensee) will benefit
from this decision, the burden of preserving Amsted’s
trade secret now falls squarely on the American consumer
who misses out on the opportunity for increased competi-
tion and concomitant lower prices offered by TianRui’s
products.
that “[t]he canon or presumption applies regardless of
whether there is a risk of conflict between the American
statute and a foreign law.” Morrison, 130 S. Ct. at 2878.
The issue here is the Commission’s authority to punish
TianRui, whose acts in the importation of its wheels give
rise to no cause of action, based on wholly extraterritorial
acts carried out in China. Even if Chinese trade secret
laws were identical to our laws, this does not give the
Commission the power to interpret and apply Chinese
laws to TianRui’s unfair acts in China. If there has been
some violation of Chinese law, any remedy must come
from Chinese courts.

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TIANRUI GROUP CO v. ITC 14
I understand a restrictive approach to extraterritori-
ality is not immediately popular in this case. We must,
however, work within the confines of the statute and the
clear presumption against extraterritoriality. It is not our
role to decide what the law should be but to apply it as we
find it.

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