Conflict between International Trade Regulations and Patent Law: One World Techs., Inc.'s Legal Battle with the U.S., Decision in Slip Op. 18-173 (Court of International Trade 2018) (Choe-Groves, Judge)
In early 2018, the U.S. International Trade Commission (ITC) completed an investigation of certain imports and found them to infringe U.S. Patent No. 7,161,319 (the '319 Patent). The investigation centred around a garage-door opener redesigned by One World Technologies, Inc.
Following the ITC's ruling, U.S. Customs & Border Protection (CBP) issued an exclusion order barring the entry of infringing products. One World, however, disagreed with the decision and submitted a letter to CBP, requesting a ruling that their redesigned product does not fall within the terms of the ITC's exclusion order and does not infringe the '319 Patent.
Despite this, Customs denied the protest, citing its ruling that One World's redesigned product infringes the '319 Patent. In response, One World appealed the denial of its protest to the Court of International Trade (CIT), which has exclusive jurisdiction over import issues, such as the denial of a protest by Customs.
Judge Timothy J. Kelly, who presided over the case, struck One World's request for a jury trial in the CIT action. He also conducted his own construction of the claim term 'conductor' in the '319 Patent and reviewed and adopted the ITC's construction of certain disputed claims.
In a significant turn of events, Judge Kelly found that One World's redesigned product does not infringe the '319 Patent when properly construed. He further concluded that One World warrants injunctive relief due to irreparable harm and likely success on the merits.
Motions to intervene by the ITC and the patent holder, The Chamberlain Group, Inc., were denied by Judge Kelly. Neither the balance of the hardships nor the public interest favours either party, according to the judge.
While awaiting a ruling from Customs, One World attempted to import one entry of its redesigned product, which was excluded by Customs. Customs later issued a ruling concluding that One World's redesigned product meets the terms of the exclusion order and infringes the '319 Patent.
The decision in One World's case demonstrates the potential for, and likely growth in, overlap in the international trade and patent practice areas. As the use of technology continues to expand, it is expected that such cases will become more common, requiring a nuanced understanding of both patent and trade laws.
%20(Choe-Groves%2C%20Judge)){kind=link}