Anticipate This!™ | Patent and Trademark Law Blog

Fuji Photo Film Co., LTD. v. Benun, et al.

Posted in Opinion Commentary by Jake Ward on August 27, 2006

General Exclusion Order by the ITC Does Not Alter a District Court’s Authority to Enjoin Importation of Products Subject to the Order.

(Fed. Cir. 2006, 05-1445)

On appeal from the District Court (D.N.J) where a preliminary injunction was issued, Ribi Tech challenged the issuance on the theory that the district court lacks jurisdiction to enjoin importation of products already subject to a general exclusion order by the International Trade Commission (ITC).  Specifically, Ribi Tech argued that the International Trade Court has exclusive jurisdiction over matters relating to such goods. 

The allegedly infringing products were LFFPs or disposable cameras.  Benun et al. produced and imported a large number of LFFPs, many of which were seized under a general exclusion order by the ITC and barred from import at the request of Fuji Film.

The CAFC noted that 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.  With respect to ITC suits, 28 U.S.C. Section 1581(a) further states that “[t]he Court of International Trade shall have exclusive jurisdiction of any civil action commenced to contest the denial of a protest [of seizure of goods under general exclusion order].”  However, the CAFC states that even though this section provides exclusive jurisdiction for actions commenced to contest the denial of a protest, Fuji’s complaint is not such an action.  Also, “duplication of litigation efforts is simply not relevant to the jurisdictional inquiry.”

Accordingly, the CAFC held that the district court properly asserted jurisdiction and affirmed the preliminary injunction.

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