  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




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