United States Court of Appeals for the Federal Circuit
05-1445
FUJI PHOTO FILM CO., LTD.,
Plaintiff-Appellee,
v.
JACK C. BENUN,
Defendant,
and
RIBI TECH PRODUCTS LLC,
Defendant-Appellant,
and
POLYTECH ENTERPRISES LTD.
and POLYTECH (SHENZHEN) CAMERA CO. LTD.,
Defendants.
Lawrence Rosenthal, Stroock & Stroock & Lavan LLP, of New York, New York,
argued for plaintiff-appellee. With him on the brief were Matthew W. Siegal and Angie M.
Hankins. Of counsel was Robert J. Rohrberger, Fox and Fox L.L.P., of Livingston, New
Jersey.
John M. Peterson, Neville Peterson LLP, of New York, New York, argued for
defendant-appellant. With him on the brief were Maria E. Celis; and George W.
Thompson, of Washington, DC. Of counsel on the brief was Jerry P. Wiskin, Simons &
Wiskin, of South Amboy, New Jersey. Of counsel were Catherine Chess Chen, Neville
Peterson LLP, of Washington, DC; and Curtis W. Knauss, of New York, New York.
Appealed from: United States District Court for the District of New Jersey
Judge Katharine S. Hayden
United States Court of Appeals for the Federal Circuit
05-1445
FUJI PHOTO FILM CO., LTD.,
Plaintiff-Appellee,
v.
JACK C. BENUN,
Defendant,
and
RIBI TECH PRODUCTS LLC,
Defendant-Appellant,
and
POLYTECH ENTERPRISES LTD.
and POLYTECH (SHENZHEN) CAMERA CO. LTD.,
Defendants.
___________________________
DECIDED: August 23, 2006
___________________________
Before RADER, Circuit Judge, CLEVENGER, Senior Circuit Judge, and DYK, Circuit
Judge.
RADER, Circuit Judge.
The United States District Court for the District of New Jersey preliminarily
enjoined Ribi Tech Products LLC (Ribi Tech) and other defendants from, inter alia,
importing certain lens fitted film packages (LFFPs). Fuji Photo Film Co. v. Benun, No.
2:05-CV-1863-KSH-PS (D.N.J. June 16, 2005) (Preliminary Injunction Order). Ribi
Tech challenges that preliminary injunction on the sole ground that the district court
lacked jurisdiction to enjoin the importation of any LFFPs that are subject to a general
exclusion order issued by the International Trade Commission (ITC or Commission) in
1999. In re Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406 (Int’l Trade
Comm’n June 28, 1999) (Exclusion Order); see also Jazz Photo Corp. v. Int’l Trade
Comm’n,
264 F.3d 1094, 1110-11 (Fed. Cir. 2001) (affirming the Exclusion Order for
those LFFPs that were not previously sold in the United States or that were
manufactured by procedures exceeding permissible repair) (Jazz I). Because the
district court properly asserted jurisdiction under
38 U.S.C. § 1338(a), and because no
other statute operates to divest the district court of that jurisdiction, this court affirms.
I.
The history of litigation involving the LFFPs, sometimes called “disposable” or
“single use” cameras, is well-documented. In addition to Jazz I, other decisions of this
court, the district court, the Commission, and the United States Court of International
Trade have described that litigation in detail. See, e.g., Jazz Photo Corp. v. United
States,
439 F.3d 1344, 1346-47 (Fed. Cir. 2006) (Jazz IV) (outlining the history of the
litigation surrounding the LFFPs). The various opinions identified in Jazz IV fit along
two parallel lines of litigation. The first group of cases began at the Commission in 1998
when Fuji Photo Film Co. (Fuji) sought to bar the import of LFFPs that, according to
Fuji, infringed one or more of its patents. The other group of cases began at the district
court in 1999 when Fuji sued Jazz Photo Corp. (Jazz) for infringement of those same
patents. See
id. As a result of proceedings before the Commission, Jazz had many of
its LFFPs seized under the Exclusion Order and was also forced to pay a $13,675,000
05-1445 2
civil penalty for violating the Exclusion Order.
Id. at 1347. The related district court
proceedings found Jazz liable for willful infringement and awarded Fuji damages
exceeding $29,000,000.
Id. Both lines of litigation continue to evolve, largely due to
ongoing disputes about whether various LFFPs fit within the permissible repair category
identified in Jazz I.
In 2003, Jazz sought bankruptcy protection, and ultimately was liquidated in early
2005. As a part of that liquidation, Jazz sold its interest in about 1.4 million LFFPs,
many of which had already been seized under the Exclusion Order, to Ribi Tech.
Id. at
1348. Like Jazz, Ribi Tech is managed by Jack C. Benun and owned by his family. In
April 2005, Fuji sued Ribi Tech, Benun, Polytech Enterprises Ltd., and Polytech
(Shenzhen) Camera Co. Ltd (collectively, Defendants), alleging infringement of the
same Fuji LFFP patents earlier asserted against Jazz. In their answer to Fuji’s
complaint, defendants argued that they intended to import only LFFPs “of a kind” that
would not infringe Fuji’s patents. In response, Fuji requested the court to allow it to
sample some of the 1.4 million LFFPs to verify Ribi Tech’s defense. Persuaded by
Fuji’s arguments, the district court granted Fuji’s motions for an emergency order and
for a preliminary injunction. Thus, the district court prohibited Ribi Tech and Benun
“from transferring, removing or otherwise disposing of any LFFPs from the Jazz
inventory.” Fuji Photo Film Co. v. Benun, No. 2:05-CV-1863-KSH-PS, slip op. at 4
(D.N.J. June 9, 2005) (granting Fuji’s motion for an emergency order). Further, the trial
court enjoined Benun and Ribi Tech from “importing, manufacturing, selling, offering for
sale or otherwise transferring in any manner” LFFPs that did not originate from shells of
LFFPs first sold in the United States, or which were made according to a specific
05-1445 3
identified process. Preliminary Injunction Order at 5. Ribi Tech appeals the district
court’s grant of the preliminary injunction. Ribi Tech challenges only the jurisdiction of
the district court to enjoin any importation that is already the subject of the Exclusion
Order.
II.
This court reviews the district court’s jurisdiction without deference. Vanguard
Research, Inc. v. PEAT, Inc.,
304 F.3d 1249, 1254 (Fed. Cir. 2002). Further,
28 U.S.C.
§ 1338(a) (2000) provides, in part: “The district courts shall have original jurisdiction of
any civil action arising under any Act of Congress relating to patents . . . .” Additionally,
35 U.S.C. § 283 (2000), provides: “The several courts having jurisdiction of cases
under this title may grant injunctions in accordance with the principles of equity to
prevent the violation of any right secured by patent, on such terms as the court deems
reasonable.” Thus, these statutes, working together, supply the district court with
jurisdiction and authority to issue the challenged injunction in this case.
Ribi Tech does not contest that a patentee can bring actions before both the
federal district court and the Commission challenging an alleged infringer’s imports.
See Tex. Instruments, Inc. v. Tessera, Inc.,
231 F.3d 1325, 1330 (Fed. Cir. 2000) (“For
alleged infringement through importation, a patentee can . . . file an action in a district
court or in the ITC. See
19 U.S.C. § 1337 (2000). In fact, a patentee can bring suit
both in a district court and in the ITC against an alleged infringer who is importing an
allegedly infringing product.” Nor does Ribi Tech question the authority of a federal
district court to prohibit importation of infringing goods after the Commission has refused
to issue a section 1337 general exclusion order. See Tex. Instruments, Inc. v. Cypress
05-1445 4
Semiconductor Corp.,
90 F.3d 1558, 1569 (Fed. Cir. 1996) (explaining that decisions of
the Commission involving patent issues have no preclusive effect in other forums—
including district courts). Apart from those two situations, Ribi Tech urges this court to
acknowledge a distinction for situations where the Commission has issued a general
exclusion order. According to Ribi Tech, once the Commission issues a general
exclusion order, the statutory scheme that allows an importer to challenge a seizure of
its goods under such an order also prevents a district court from considering importation
issues involving those same goods.
By filing a protest, an importer may challenge Customs’ seizure of goods under a
general exclusion order. See
19 U.S.C. §§ 1514 (2000) (Protests against decisions of
Customs Service), 1515 (2000) (Review of protests). If Customs denies that protest,
the importer may challenge that denial, or partial denial, only in the Court of
International Trade. See
28 U.S.C. § 1581(a) (2000). Thus, section 1581(a) states:
The Court of International Trade shall have exclusive
jurisdiction of any civil action commenced to contest the
denial of a protest, in whole or in part, under section 515 of
the Tariff Act of 1930 [
19 U.S.C. § 1515].
Id. Read alone or in context with the related provisions of Title 19, section 1581(a)
means exactly what it says: the Court of International Trade possesses exclusive
jurisdiction over denials of protests arising under
19 U.S.C. § 1515. The language of
section 1581(a) says nothing about district court jurisdiction over patent infringement
claims under
35 U.S.C. § 271 or injunctions under
35 U.S.C. § 283. Nothing in these
relevant statutes even vaguely suggests that the statutory scheme for protesting a
seizure, including the exclusive jurisdiction of the Court of International Trade to review
unsuccessful protests, divests a district court of jurisdiction to consider an injunction on
05-1445 5
goods subject to a general exclusion order. Section 1581(a) says that a district court
does not have jurisdiction to consider a seizure protest, but that statute does not even
mention, let alone limit, a district court’s jurisdiction to enjoin importation under
35
U.S.C. § 283. Protested actions of the Customs Service are different jurisdictional
subject matter than remedies for patent infringement.
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.
Contrary to Ribi Tech’s arguments, Orleans International, Inc. v. United States,
334 F.3d 1375 (Fed. Cir. 2003) does not compel a different result in this case. Orleans
resolved a jurisdictional question in the context of a constitutional challenge to import
assessments mandated by the Beef Promotion and Research Act of 1985 (the Beef
Act),
7 U.S.C. §§ 2901-2911. This court concluded that the Court of International Trade
05-1445 6
Commission erred in dismissing the case for lack of
28 U.S.C. § 1581(i) exclusive
subject matter jurisdiction. Orleans,
334 F.3d at 1380. This court explained: “The
correct approach . . . is to focus on whether the ‘civil action’ at issue falls within the
language of
28 U.S.C. § 1581(i). If the action does fall within that language, the Court
of International Trade has exclusive jurisdiction. That is the jurisdictional scheme
established by Congress.”
Id. at 1378. In Orleans, this court concluded that the Beef
assessments did fall within section 1581(i), meaning that the Court of International
Trade had exclusive jurisdiction over that action.
Id. at 1378-79.
Returning to this case,
28 U.S.C. § 1581(a) only provides the Court of
International Trade exclusive jurisdiction for actions “commenced to contest the denial
of a protest.” Fuji’s complaint in the district court is not such an action. Moreover, while
Ribi Tech has expressed frustration at the possibility that it will have to confront similar
issues in both the Court of International Trade and the district court, Orleans makes
clear that such duplication of litigation efforts is simply not relevant to the jurisdictional
inquiry.
Id. at 1379 (“The district courts and the [Court of International Trade] can both
have jurisdiction over actions arising out of the same act—it simply does not matter that
there will be similar legal issues litigated in different courts.”).
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
05-1445 7
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.
CONCLUSION
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.
COSTS
Each party shall bear its own costs.
AFFIRMED
05-1445 8
