Conflict Between International Trade and Patent Law: One World Techs., Inc.'s Legal Battle with the United States (Decision by Choe-Groves, J., Court of International Trade, 2018)
In a significant ruling, Judge Choe-Groves of the Court of International Trade (CIT) has granted One World Technologies, Inc. an injunction, overturning a decision by U.S. Customs & Border Protection (CBP) to exclude a redesigned garage-door opener from importation.
The saga began in early 2018 when the U.S. International Trade Commission (ITC) completed an investigation of certain imports and found that they infringed U.S. Patent No. 7,161,319 (the '319 Patent). One World Technologies, Inc. subsequently redesigned one of its products to avoid infringing the patent, but CBP denied the company's request for a ruling that the redesigned product does not fall within the terms of the ITC's exclusion order and does not infringe the '319 Patent.
One World subsequently filed an administrative protest arguing that Customs erred in excluding the entry. However, Customs denied the protest, citing its ruling that One World's redesigned product infringes the '319 Patent.
One World then 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. In her ruling, Judge Choe-Groves determined that the CIT has subject-motion jurisdiction over One World's appeal.
During the proceedings, Judge Choe-Groves reviewed and adopted the ITC's construction of certain disputed claims of the '319 Patent, and conducted her own construction of another claim term ("conductor"). She concluded that One World's redesigned product does not infringe the '319 Patent when properly construed.
Judge Choe-Groves granted One World injunctive relief for two reasons: One World will suffer irreparable harm in the absence of an injunction, and One World likely will succeed on the merits. The judge denied One World's request for a jury trial in the appeal.
The decision in One World demonstrates the potential for, and likely growth in, overlap in the international trade and patent practice areas. The case shows how a company may obtain court-ordered injunctive relief if Customs excludes its merchandise.
It is important to note that motions to intervene by the ITC and patent holder The Chamberlain Group, Inc. were denied by Judge Choe-Groves. The information from the search results does not specify which person or institution filed an appeal against the rejection of a protest by the customs service, nor which jurisdiction has the appeal.
This ruling is a significant victory for One World Technologies, Inc., allowing the company to import its redesigned garage-door opener without the barrier imposed by Customs' exclusion order. The case serves as a reminder of the complexities involved in international trade and patent law, and the importance of careful crafting of products to avoid infringing existing patents.
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