Facts: In early 2018, the U.S. International Trade Commission (ITC) completed an investigation of certain imports pursuant to Section 337, finding that such imports infringed, inter alia, U.S. Patent No. 7,161,319 (the “’319 Patent”). The ITC, in turn, issued an exclusion order barring the entry of infringing products.
One World Technologies, Inc. subsequently redesigned one of its products, a garage-door opener, that had purportedly infringed the ’319 Patent. Prior to importation, One World submitted a letter to U.S. Customs & Border Protection requesting a ruling that the redesigned product does not fall within the terms of the ITC’s exclusion order and does not otherwise infringe the ’319 Patent. Customs later issued a ruling in which it concluded that One World’s redesigned product meets the terms of the exclusion order and otherwise infringes the ’319 Patent.
While awaiting a ruling from Customs, One World attempted to import one entry of its redesigned product. Customs excluded that entry. One World subsequently filed an administrative protest, arguing that Customs erred in excluding the entry. Customs denied the protest, citing its ruling that One World’s redesigned product infringes the ’319 Patent. One World appealed the denial of its protest to the CIT, which has exclusive jurisdiction over import issues, such as the denial of a protest by Customs.
Opinion: Judge Choe-Groves’s opinion answers a wide variety of procedural and substantive issues. Let’s start with the procedural questions. As an initial matter, Judge Choe-Groves determined that the CIT had subject-matter jurisdiction over the appeal pursuant to 28 U.S.C. § 1581(a), which confers the CIT with the authority to address disputes concerning the denial of protests. Slip Op. 18-173 at 8–11. Next, she struck One World’s request for a jury trial, noting that precedent bars jury trials in § 1581(a) actions. Id. at 11. Finally, she denied motions to intervene filed by the ITC and the patent holder (The Chamberlain Group, Inc.), explaining that the relevant statute prohibits intervention in a § 1581(a) suit. Id. at 11–12.
With the procedural matters resolved, Judge Choe-Groves next addressed One World’s request for injunctive relief, addressing several substantive patent law questions along the way. (Prior to joining the bench, Judge Choe-Groves handled patent matters.) Ultimately, she concluded that One World warranted injunctive relief for two reasons: (1) One World will suffer irreparable harm in the absence of an injunction; and (2) One World likely will succeed on the merits because Customs’ ruling misconstrued a material limitation in the ’319 Patent, and One World’s redesigned product does not infringe the ’319 Patent when properly construed. Id. at 12–21. In assessing the likelihood of success, Judge Choe-Groves reviewed and adopted the ITC’s construction of certain disputed claims of the ’319 Patent, as well as conducted her own construction of another claim term (“conductor”). Id. Finally, Judge Choe-Groves found that neither the balance of the hardships nor the public interest favors either party. Id. at 21–23.
Bottom Line: In recent years, the U.S. government and domestic patent holders have stepped up their efforts to safeguard intellectual property rights at the border. One World teaches us three lessons. First, it shows us how enforcement efforts can evolve into litigation. Second, it shows us how a company may obtain court-ordered injunctive relief if Customs excludes its merchandise. Finally, the decision demonstrates the potential for, and likely growth in, overlap in the international trade and patent practice areas.