Fuji Photo Film v. Benun (Fed. Cir. 2006).
Fuji’s disposable camera patent litigation against Jazz Photo and Benun (Jazz’s owner) is ongoing. (See, e.g., here and here). The lower court granted a preliminary injunction stopping Benun from importing any otherwise infringing disposable cameras that did not originate from camera shells that were first sold in the U.S. Because the ITC has an ongoing Exclusion Order for these products, the defendants challenged the district court’s jurisdiction to enjoin the activity.
Benun tied its jurisdiction argument to the ITC’s grant of jurisdiction. Under 28 U.S.C., 1581(a), the ITC has “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.” As the CAFC aptly found, however, the statute does not “even vaguely suggest that the statutory scheme for protesting a seizure . . . divests a district court of jurisdiction to consider an injunction on goods subject to a general exclusion order.”
According to the CAFC, this distinction makes sense because of the major differences between a general exclusion order and a preliminary injunction to stop patent infringement. Specifically, a general exclusion order is a government action that merely excludes goods from entry. The district court infringement case, however, can lead to damages and attorney fees as well as potential contempt proceedings for violation of a preliminary injunction.