One World Techs., Inc. v. United States
| Decision Date | 09 May 2019 |
| Docket Number | Slip Op. 19-56,Court No. 19-00017 |
| Citation | 378 F.Supp.3d 1355 |
| Parties | ONE WORLD TECHNOLOGIES, INC., Plaintiff, v. UNITED STATES, United States Department of Homeland Security, United States Customs and Border Protection, and Commissioner Kevin K. McAleenan, Defendants, and The Chamberlain Group, Inc. and United States International Trade Commission, Defendant-Intervenors. |
| Court | U.S. Court of International Trade |
Jason C. White, Michael J. Abernathy, and Nicholas A. Restauri, Morgan, Lewis & Bockius, LLP, of Chicago, IL, for Plaintiff One World Technologies, Inc.
Guy R. Eddon, Amy M. Rubin, and Marcella Powell, International Trade Field Office, U.S. Department of Justice, of New York, N.Y., and Edward F. Kenny and Alexander J. Vanderweide, Commercial Litigation Branch, Civil Division, U.S. Department of Justice, of New York, N.Y., for Defendants United States, U.S. Department of Homeland Security, U.S. Customs and Border Protection, and Commissioner Kevin K. McAleenan. With them on the brief was Joseph H. Hunt, Assistant Attorney General. Of counsel was Michael Heydrich, Office of Chief Counsel, International Trade Litigation, U.S. Customs and Border Protection.
Sidney A. Rosenzweig and Carl P. Bretscher, U.S. International Trade Commission, of Washington, D.C., for Defendant-Intervenor U.S. International Trade Commission.
Joseph V. Colaianni, Jr., Benjamin Elacqua, and John T. Johnson, Fish & Richardson, P.C., of Washington, D.C., Houston, TX, and New York, N.Y., for Defendant-Intervenor The Chamberlain Group, Inc.
This opinion concludes the ongoing litigation in the U.S. Court of International Trade between Plaintiff One World Technologies, Inc. ("Plaintiff" or "One World") and the United States, United States Department of Homeland Security, United States Customs and Border Protection, and Commissioner Kevin K. McAleenan (collectively, "Defendants" or "the Government"). Before the court is One World's Joint Motion to Dismiss or to Stay the Case Pending Dismissal of Appeals, May 1, 2019, ECF No. 162 ("Joint Motion to Dismiss"). For the reasons that follow, the court grants Plaintiff's Joint Motion to Dismiss.
One World produces Garage Door Openers ("GDOs") under the brand name Ryobi. Pl. Am. Compl. ¶ 8, Apr. 2, 2019, ECF No. 120 ("Pl. Am. Compl."). One World redesigned its GDOs ("Redesigned GDOs") following proceedings before the U.S. International Trade Commission ("ITC"). Pl. Am. Compl. ¶ 1. On March 30, 2018, One World requested a pre-importation administrative ruling under 19 C.F.R. § 177 ("One World's Ruling Request") from U.S. Customs and Border Protection ("CBP" or "Customs"). Pl. Am. Compl. ¶ 68; Pl. Am. Compl. Ex. V, Apr. 2, 2019, ECF No. 120-22 ( ). One World's Ruling Request asked Customs to determine that Redesigned GDOs fall outside the scope of the Limited Exclusion Order issued by the ITC. Pl. Am. Compl. ¶ 69; Pl. Am. Compl. Ex. V at 2, 11–14.
While awaiting Customs' ruling letter, One World attempted to import a shipment of Redesigned GDOs on or about June 29, 2018 (Entry No. 442-75629994). Pl. Am. Compl. ¶ 77. Customs denied entry of the shipment, One World protested (Protest No. 160118100231), and Customs issued HQ H300129. Id.; see Pl. Am. Compl. Ex. F, at 1, Apr. 2, 2019, ECF No. 120-6 ( ). In HQ H300129, Customs found that the merchandise in the shipment "appears to meet all of the limitations of at least independent claims 1 and 9 of the '319 patent" and One World "has not met its burden to establish that the merchandise at issue does not infringe these claims." Pl. Am. Compl. Ex. F at 38.
Customs responded to One World's Ruling Request and issued a pre-importation ruling, designated HQ H295697, on July 20, 2018. Pl. Am. Compl. ¶ 73; Pl. Am. Compl. Ex. W, Apr. 2, 2019, ECF No. 120-23 ( ) ; see also Defs' Mem. in Supp. of Mot. to Dismiss 2, 6, Apr. 16, 2019, ECF No. 143. In HQ H295697, Customs again found that One World did not meet its burden to establish that the Redesigned GDOs did not infringe the '319 patent. Pl. Am. Compl. Ex. W at 35.
Plaintiff filed suit in the U.S. Court of International Trade to challenge Customs' protest decision and requested a Temporary Restraining Order ("TRO") and Preliminary Injunction ("PI") on September 13, 2018. Summons, One World Techs., Inc. v. United States, No. 18-cv-00200-JCG (CIT Sept. 13, 2018), ECF No. 1; Complaint, One World Techs., Inc. v. United States, No. 18-cv-00200-JCG (CIT Sept. 13, 2018), ECF No. 6 ; Pl. One World Tech.'s Mot. for TRO & Prelim. Inj., One World Techs., Inc. v. United States, No. 18-cv-00200-JCG (CIT Sept. 13, 2018), ECF No. 5. The court issued an opinion in One World Techs., Inc. v. United States, 42 CIT ––––, 357 F.Supp.3d 1278 (2018) (" One World I"), on December 14, 2018, which conducted a claim construction analysis and infringement analysis of the Redesigned GDOs. Id. at ––––, 357 F.Supp.3d at 1289–93. The court concluded that because One World's Redesigned GDOs did not contain all the limitations of the '319 Patent, One World's Redesigned GDOs did not infringe the '319 Patent and Customs determined improperly that One World's Redesigned GDOs fell within the scope of the ITC's Limited Exclusion Order. Id. at 1293. The preliminary injunction directed release of the shipment in that case. Order at 2, One World Techs., Inc. v. United States, No. 18-cv-00200-JCG (CIT Dec. 14, 2018), ECF No. 72.
Plaintiff then attempted to import two shipments of Redesigned GDOs (Entry Nos. 442-75658274 ("First Shipment") and 442-75658266 ("Second Shipment")) on January 2, 2019. See Entry Summary, No. 442-75658274, Jan. 30, 2019, ECF No. 21-1 ; Detention Notice, Entry No. 442-75658274, Pl. Am. Compl. Ex. H, Apr. 2, 2019, ECF No. 120-8 ; Entry Summary, No. 442-75658266, Jan. 30, 2019, ECF No. 21-2. Customs detained the First and Second Shipments on January 15, 2019 and January 17, 2019, respectively. Pl. Am. Compl. ¶¶ 11–16; Pl. Am. Compl. Ex. H, Apr. 2, 2019, ECF No. 120-8 ; Pl. Am. Compl. Ex. I, Apr. 2, 2019, ECF No. 120-9.
Plaintiff attempted to import an additional shipment of Redesigned GDOs on January 22, 2019 (Entry No. 442-75661187 ("Third Shipment")), and filed this suit on January 25, 2019, shortly before another shipment of Redesigned GDOs was imported on January 29, 2019 (Entry No. 442-75661948 ("Fourth Shipment")). Pl. Am. Compl. ¶¶ 17–22; Pl. Am. Compl. Ex. Q, Apr. 2, 2019, ECF No. 120-17 ; Summons, Jan. 25, 2019, ECF No. 1 ; Compl., Jan. 25, 2019, ECF No. 6 ("Compl.") ; Pl. Am. Compl. Ex. R, Apr. 2, 2019, ECF No. 120-18.
The court held a TRO, PI, and Subject Matter Jurisdiction Hearing ("TRO & PI Hr'g") on February 11, 2019. TRO & PI Hr'g, Feb. 11, 2019, ECF No. 50 ; TRO & PI Hr'g Tr., Feb. 11, 2019, ECF No. 60. Following the hearing, the court issued a TRO directing Defendants not to seize the First, Second, Third, and Fourth Shipments. Order, Feb. 11, 2019, ECF No. 51. The court extended the TRO on February 21, 2019. Order, Feb. 21, 2019, ECF No. 70.
Chamberlain filed a writ of mandamus in the U.S. Court of Appeals for the Federal Circuit on February 13, 2019, which was denied on March 7, 2019. Emergency Pet. for a Writ of Mandamus, In Re The Chamberlain Group, Inc., No. 19-111 (Fed. Cir. Feb. 13, 2019), ECF No. 3 ; Order, In Re The Chamberlain Group, Inc., 756 Fed.Appx. 991 (Fed. Cir. 2019), ECF No. 29.
While the motion for the preliminary injunction was pending, Plaintiff attempted to import two additional shipments of Redesigned GDOs (Entry Nos. 442-75662557 ("Fifth Shipment") and 442-75665436 ("Sixth Shipment")). Pl. Am. Compl. ¶¶ 23–28. The Fifth and Sixth Shipments were not subject to the original complaint in this case. See Compl. Customs proffers that the Fifth Shipment was seized on March 8, 2019 and the Sixth Shipment was seized on March 11, 2019. Defs.' Resp. to Pl.'s Mot. for Leave to File Am. Compl. 3, Mar. 29, 2019, ECF No. 113.1
The court issued a preliminary injunction on March 11, 2019. One World Techs., Inc. v. United States, et al., ––– F.Supp.3d ––––, Slip Op. 19-33, 2019 WL 2005746 (CIT Mar. 11, 2019) (" One World II"); Order, Mar. 11, 2019, ECF No. 87. The preliminary injunction granted the requested relief in part, directing that the entries of Redesigned GDOs could not be seized. Order, Mar. 11, 2019, ECF No. 87.
The ITC filed a notice of appeal of the preliminary injunction on March 13, 2019. Notice of Appeal, Mar. 13, 2019, ECF No. 90. The Chamberlain Group, Inc. ("Chamberlain") filed a notice of appeal on March 19, 2019. Chamberlain's Notice of Appeal, Mar. 19, 2019, ECF No. 95. After the ITC filed notice of its appeal to the U.S. Court of Appeals for the Federal Circuit, the ITC filed a motion to stay the preliminary injunction and proceedings in the U.S. Court of International Trade on March 13, 2019. Mot. of the ITC to Stay the Prelim. Inj. & All Further Proceedings, Mar. 13, 2019, ECF No. 91.
The Parties submitted a Scheduling Order on March 20, 2019. Corrected Consent Mot. for Scheduling Order, Mar. 20, 2019, ECF No. 97. The court issued a scheduling order on March 21, 2019. Scheduling Order, Mar. 21, 2019, ECF No. 99.
Defendants moved for rehearing or reconsideration pursuant to USCIT Rule 60 on March 21, 2019. Defendants' Mot. for Reh'g or Recons., Mar. 21, 2019, ECF No. 100. One World, Chamberlain, and the ITC responded. Pl.'s Opp'n to Defs' Mot. to Reconsider, Apr. 3, 2019, ECF No. 122 ; Chamberlain's Resp. to Defs' Mot. for Reh'g or Recons., Apr. 3, 2019, ECF No. 124 ; Resp. of the ITC to U.S. Defs' Mot. for Reh'g or Recons., Mar. 29, 2019, ECF No. 112.
The ITC moved separately for a stay pending appeal in the U.S. Court of Appeals for the Federal Circuit on March 22, 2019. Non-Confidential Emergency Mot. of Appellant ITC to Stay the Trial Ct.'s Prelim. Inj. & Further Proceedings Below Until Subject Matter Jurisdiction is Established, One World Techs., Inc. v. United States, No. 19-1663 (Fed. Cir. Mar....
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