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From Intellectual Property Law Daily, January 3, 2019

Manufacturer of garage door openers sold at Home Depot granted preliminary injunction to halt exclusion order enforcement

By Brian Craig, J.D.

Concluding that One World Technology, Inc., a manufacturer of garage door openers sold exclusively at The Home Depot, would suffer irreparable harm without an injunction and that the manufacturer is likely to succeed on the merits of its action claiming non-infringement of an existing patent, the U.S. Court of International of Trade has granted a preliminary injunction that U.S. Customs and Border Protection ("Customs") may not exclude One World’s redesigned garage door opener. The court found that One World’s redesigned garage door opener with a wireless connection sold under the Ryobi brand does not infringe a patent that is limited to wired connections only. The court also found that Customs’ Intellectual Property Rights Branch improperly construed the patent claims (One World Technologies, Inc. v. U.S., January 2, 2019, Choe-Groves, J.).

The International Trade Commission ("ITC") initiated an investigation after receiving a complaint filed by The Chamberlain Group, Inc. Chamberlain alleged that several companies sold products that infringed Chamberlain’s patents, including U.S. Patent No. 7,161,319 ("’319 Patent"). One World redesigned its products after the ITC’s final determination of infringement. One World’s redesigned garage door opener replaced the wired connection between the wall console and the head unit with a wireless connection. One World commenced an action to obtain judicial review of a decision by Customs excluding an entry of One World’s Ryobi Ultra-Quiet Garage Door Opener ("Redesigned GDO") pursuant to a Limited Exclusion Order issued by the ITC. One World claimed that Customs denied its protest regarding the entry of the Redesigned GDO based on a flawed interpretation of the registered patent and that its product is not included in the scope of the Limited Exclusion Order.

Subject matter jurisdiction. The court first examined whether it has proper subject matter jurisdiction over the case. The court concluded that subject matter jurisdiction over the action does not exist under 28 U.S.C. § 1581(h). The court exercised subject matter jurisdiction solely under 28 U.S.C. § 1581(a). Because jury trials are not permitted for cases brought under 28 U.S.C. § 1581(a), the court granted the government’s motion to strike the request for a jury trial.

Preliminary injunction. After concluding that the court has subject matter jurisdiction, the court analyzed whether One World is entitled to a preliminary injunction. The court considers four factors when evaluating whether to grant a 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.

Irreparable harm includes a viable threat of serious harm which cannot be undone. One World argued that, absent injunctive relief, it would be unable to supply The Home Depot with enough inventory to meet customer demands. The Home Depot is the sole distributor of One World’s Ryobi-branded products. The court found that One World proffered sufficient evidence of irreparable harm based on credible witness testimony that its relationship with its exclusive distributor, The Home Depot, will be permanently damaged absent a preliminary injunction. The court found that One World demonstrated irreparable harm through the credible testimony and declarations of its witnesses.

The court then turned to whether One World would likely succeed on the merits of the action seeking non-infringement. As a threshold question, the court found that letters from Customs’ Intellectual Property Rights Branch ("IPRB") do not merit deference because the letters do not show thoroughness, logic, and expertness. The court then applied the two-step patent infringement analysis to determine whether the Redesigned GDO infringes the ’319 Patent. First, the court construed the contested claim terms. Second, the court turned to whether the product at issue contains each limitation of the patent’s claim.

Here, the court construed one limitation in the ’319 Patent as encompassing only wired connections between the motor drive unit’s controller and the wall controller. To the extent that the IPRB found otherwise, the court concluded that the IPRB’s determination was incorrect. The court found that the Redesigned GDO does not contain all limitations of the ’319 Patent. Specifically, the head unit’s controller does not communicate with the wall console by means of a "digital data bus," or wired connection. The court concluded that One World’s Redesigned GDO does not infringe the ’319 Patent because the ’319 Patent is limited to wired connections only. The court found that the IPRB’s determination that the ’319 Patent encompasses a part wired and part-wireless connection was incorrect. Because the Redesigned GDO does not infringe the ’319 Patent, One World demonstrated likelihood of success on the merits.

The court further concluded that the balance of hardships and public interest factors are neutral. Because One World showed credible irreparable harm and a likelihood of success on the merits, the court granted the motion for a preliminary injunction.

This case is No. 1:18-cv-00200-JCG.

Attorneys: Stephen E. Ruscus (Morgan, Lewis & Bockius, LLP) for One World Technologies, Inc. Guy R. Eddon, U.S. Department of Justice, for the United States, United States Department of Homeland Security and United States Customs and Border Protection.

Companies: One World Technologies, Inc.; United States Department of Homeland Security; United States Customs and Border Protection

MainStory: TopStory Patent

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