When One Door Closes, Another Opens: Court Of International Trade Issues A Preliminary Injunction Of Customs' Exclusion Of Redesigned Garage Door Openers

Author:Mr Yury Kalish Ph.D. and Ryan B. McCrum
Profession:Jones Day
 
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In a recent opinion, the Court of International Trade granted a request for preliminary injunction to One World Technologies ("One World"). One World Techs., Inc. v. United States, No. 18-00200, 2018 WL 7049792 (Ct. Int'l Trade Dec. 14, 2018). One World's request challenged a decision by U.S. Customs and Border Protection ("Customs") excluding an entry of One World's redesigned Garage Door Opener. The Customs decision was an enforcement of a Limited Exclusion Order issued by the ITC in Investigation No. 337-TA-1016, where One World's original Garage Door Opener was found to infringe U.S. Patent No. 7,161,319 ("the '319 patent").

Procedural History

In response to the Limited Exclusion Order from the ITC, One World redesigned its garage door openers by replacing a wire that was connecting the wall console and a head unit with a wireless connection. One World then submitted a letter to Customs seeking a ruling allowing importation of the redesigned Garage Door Openers, and attempted to import the redesigned models. However, Customs' Intellectual Property Rights Branch ("IPRB") determined that the redesigned models were included in the ITC's final determination and subject to the Limited Exclusion Order. Customs concluded the redesigned models still infringe because they have wires connecting a wireless receiver on the head unit to the head unit itself, and that these wires satisfy the "digital data bus" element of the claims. Customs excluded the entry of the redesigned products at the Port of Charleston, and denied One World's protest of the exclusion. One World appealed Customs' ruling and denial of protest to the Court of International Trade ("CIT"), and filed a motion for preliminary injunction.

Analysis

The CIT "consider[ed] four factors when evaluating whether to grant a temporary restraining order or preliminary injunction: (1) whether the party will incur irreparable harm in the absence of such injunction; (2) whether the party is likely to succeed on the merits of the action; (3) whether the balance of hardships favors the imposition of the injunction; and (4) whether the injunction is in the public interest." One World, 2018 WL 7049792, at *6 (citing Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008)).

The CIT first found that One World, who has only one exclusive distributor in the United States (Home Depot) will "suffer a permanent loss of business," and "will lose its market share and innovative advantage" without...

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