Fuji Photo v. ITC (Fed. Cir. 2007).
In its fifth appellate decision of this 1998 case . . .
Fuji owns the patent on certain disposable cameras. Jazz and others take the discarded cameras, repair them, then sell them. Earlier, the court decided that cameras first sold by Fuji in the US were no longer protectable under the first-sale doctrine. However, the court held that those that the first-sale doctrine did not apply to products originally sold abroad.
Here, Fuji appealed the ITC’s calculation of the percentage of already imported cameras that were infringing. The problem was the difficulty of determining which cameras were originally sold in the US.
Standing: On appeal, the CAFC first determined that Fuji had no right to appeal. Unlike in normal infringement cases, ITC actions give the patentee no right to collect damages — rather, any past damages go to the coffers of the US Government.
Private plaintiffs, unlike the Federal Government, may not sue to assess [civil] penalties for wholly past violations. (quoting 528 U.S. 167 (2000).
It is clear here that any violations are wholly in the past because Jazz Photo no longer conducts business and is in the liquidation process.
Injunction against Officer: Jack Benun, former owner of Jazz, also appealed — arguing that the ITC had no power to issue an injunction against him personally simply because of Jazz’s infringement.
The CAFC agreed with the ITC order — finding that "the Commission could legitimately issue a cease and desist order against him." In their decision, the CAFC followed the Supreme Court’s 1937 Standard Education case which held that an administrative agency could bind officers of a corporation after issuing an order against the corporation itself.