Trade Court Orders CBP to Stop Section 337 Exclusion of Ryobi Garage Door Openers
An importer of garage door openers recently won a court order barring CBP from excluding its products for patent infringement despite a redesign. In a decision released to the public Jan. 2, the Court of International Trade found CBP probably ruled incorrectly when it said a Section 337 exclusion order still applied to One World Technologies’ redesigned cordless garage door openers, issuing a preliminary injunction that stops CBP from blocking any entries under the ruling.
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The International Trade Commission had issued the limited exclusion order banning One World Technologies’ products in March (see 1803280024), based on allegations that they infringed a patent held by Chamberlain. One World Technologies subsequently redesigned the garage door openers so they worked with a wireless remote, instead of a controller attached by a cord. The importer requested a CBP ruling on whether the redesign removed the product from the scope of the exclusion order. In HQ H295697, CBP found in a July ruling that the wireless garage door openers still infringed Chamberlain’s patent.
Before the ruling was issued, One World Technologies attempted to import the redesigned garage door openers. CBP excluded the entry. The importer filed a protest, which CBP denied based on its by-then issued ruling letter.
One World Technologies attempted to challenge the ruling under CIT’s 28 USC 1581(h) jurisdiction provision, which allows CIT to rule on the treatment of future entries. But that provision may only be used in limited circumstances, before a product is imported and when the normal entry-protest-lawsuit route under 28 USC 1581(a) would cause irreparable harm. One World Technologies wasn’t eligible because it imported the garage door openers before filing its lawsuit and would not be irreparably harmed by having CIT rule instead on its denied protest, CIT said.
Nonetheless, CIT still found fault with the ruling as the reason for denying One World Technologies’ protest. The patent says it covers garage door openers connected to a controller on a wall “by means of a digital data bus.” That means a physical set of wires, the court said. One World Technologies got rid of those wires in its redesign, and its wireless controller no longer falls within the scope of the patent, CIT said.
CIT also found One World Technologies would be irreparably harmed if the court didn’t issue an injunction. While simple financial harm is not enough to get an injunction, CIT accepted One World Technologies’ argument that it would not be able to enter the garage door market at all if it was temporarily unable to import garage door openers. Home Depot, its only distributor, would likely find a different supplier if One World Technologies was unable to meet its demand, the importer had said.
(One World Techs., Inc. v. U.S., Slip Op. 18-173, CIT # 18-00200, dated 12/14/18, public version 01/02/19, Judge Choe-Groves)
(Attorneys: Stephen Ruscus of Morgan Lewis for plaintiff One World Technologies; Guy Eddon for defendant U.S. government)