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Archived updates for Tuesday, August 29, 2006

ITC Exclusion Order Did not Divest Divest Court of Jurisdiction to Issue Importation Injunction

In Fuji Photo Film Co., LTD. v. Benun, et al. (August 23, 2006), the Federal Circuit affirmed the jurisdiction of a federal district court to issue an injunction against the importation of patent infringing goods after the U.S. International Trade Commission had issued an exclusion order.

According to the opinion by Judge Rader,

The parties and remedies associated with a general exclusion order differ markedly from a civil action seeking a preliminary injunction to remedy patent
infringement. A general exclusion order merely excludes goods from entry. In
some cases the Commission can order seizure of the goods, for example if an
importer twice attempts to import the same goods. 19 U.S.C. § 1337(i) (2000); 19
C.F.R. § 12.39(c) (2006). Where the importer ultimately challenges such a
seizure in the Court of International Trade, the action is against the United
States. See 28 U.S.C. § 1581 (2000) (Civil actions against the United States and
agencies and officers thereof). The Government is, of course, not involved in a
normal patent infringement action like the one before the district court in this
case. Moreover, a finding of infringement by a district court can give rise to
damages and attorney fees remedies. Finally, the violation of a preliminary
injunction may trigger a contempt proceeding against the infringing importer
with a potential of both civil and criminal sanctions. . . .

Finally, 28 U.S.C. § 1659 (2000), entitled "Stay of certain actions pending disposition of related proceedings before the United States International Trade Commission," supports the district court’s proper exercise of jurisdiction in this case. That section states:

(a) Stay.—In a civil action involving parties that are also parties to a proceeding before the United States International Trade Commission under section 337 of the Tariff Act of 1930, at the request of a party to the civil action that is also a respondent in the proceeding before the Commission, the district court shall stay, until the determination of the Commission becomes final, proceed-ings in the civil action with respect to any claim that involves the same issues involved in the proceedings before the Commission, but only if such request is made within [a specified time].

By requiring the district court to stay the proceedings "until the determination of the Commission becomes final," section 1659 necessarily suggests that after a final determination by the Commission, the district court may resume its consideration of the civil action. Thus, section 1659 places limits on the timing of parallel actions involving the Commission and a district court. Specifically, the district court must await a final decision from the Commission before proceeding with its action. Section 1659 does not state, or even suggest, that the results of the Commission’s final decision might alter the jurisdiction of the district court. Thus, a final decision to issue a general exclusion order does not alter the district court’s authority to proceed with remedies that may affect the same goods.

Because the district court possessed jurisdiction under 28 U.S.C. § 1338(a), and because Ribi Tech has raised only a jurisdictional challenge, this court affirms the district court’s decision.

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April 07, 2009 2:36 AM  

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