UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN INDUSTRIAL AUTOMATION
`SYSTEMS AND COMPONENTS THEREOF
`INCLUDING CONTROL SYSTEMS,
`CONTROLLERS, VISUALIZATION
`HARDWARE, MOTION CONTROL
`SYSTEMS, NETWORKING EQUIPMENT,
`SAFETY DEVICES, AND POWER
`SUPPLIES
`
`Inv. No. 337-TA-1074
`
`ORDER NO. 27:
`
`DENYING RADWELL'S MOTION FOR SUMMARY
`DETERMINATION ON CLAIM OF GRAY MARKET
`INFRINGEMENT
`
`I. BACKGROUND
`
`(May 30, 2018)
`
`On April 29, 2018, Respondent Radwell International Inc. ("Radwell") filed a motion for
`
`summary determination that Complainant Rockwell Automation, Inc. ("Rockwell") cannot
`
`prevail as a matter of law on its claim of gray market trademark infringement (the "motion").
`
`Motion Docket No. 1074-017, On May 10, 2018, Rockwell filed its opposition ("Opp."). Also
`
`on May 10, 2018, Commission Staff filed a response. On May 15, 2018, Radwell filed a reply
`
`brief. On May 16, 2018, Staff filed a motion for leave to file a "suiTeply" to the motion. Motion
`
`Docket No. 1074-019.1
`
`Radwell maintains that, under recent Supreme Court precedent, the first sale bar,
`
`otherwise known as the exhaustion doctrine, precludes Rockwell's claim of gray market
`
`1 No party objected to Staffs motion, which is hereby GRANTED.
`
`
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN INDUSTRIAL AUTOMATION
`SYSTEMS AND COMPONENTS THEREOF
`INCLUDING CONTROL SYSTEMS,
`CONTROLLERS, VISUALIZATION
`HARDWARE, MOTION CONTROL
`SYSTEMS, NETWORKING EQUIPMENT,
`SAFETY DEVICES, AND POWER
`SUPPLIES
`
`Inv. No. 337-TA-1074
`
`ORDER NO. 27:
`
`DENYING RADWELL'S MOTION FOR SUMMARY
`DETERMINATION ON CLAIM OF GRAY MARKET
`INFRINGEMENT
`
`I. BACKGROUND
`
`(May 30, 2018)
`
`On April 29, 2018, Respondent Radwell International Inc. ("Radwell") filed a motion for
`
`summary determination that Complainant Rockwell Automation, Inc. ("Rockwell") cannot
`
`prevail as a matter of law on its claim of gray market trademark infringement (the "motion").
`
`Motion Docket No. 1074-017, On May 10, 2018, Rockwell filed its opposition ("Opp."). Also
`
`on May 10, 2018, Commission Staff filed a response. On May 15, 2018, Radwell filed a reply
`
`brief. On May 16, 2018, Staff filed a motion for leave to file a "suiTeply" to the motion. Motion
`
`Docket No. 1074-019.1
`
`Radwell maintains that, under recent Supreme Court precedent, the first sale bar,
`
`otherwise known as the exhaustion doctrine, precludes Rockwell's claim of gray market
`
`1 No party objected to Staffs motion, which is hereby GRANTED.
`
`
`
`trademark infringement under the Lanham Act. Rockwell's claim of trademark infringement,
`
`according to Radwell, depends on material differences between the products Rockwell sold and
`
`the products Radwell imported. Radwell maintains that there is no explicit exception in the
`
`Lanham Act to the first sale bar based on material differences in products that are re-sold after
`
`the authorized first sale. Radwell asserts that without the exception for material differences,
`
`Rockwell's first sale of its products exhausted its rights under the Lanham Act.
`
`In its opposition, Rockwell argues that under its gray market theory, the material
`
`differences between the products Rockwell sells and the products Radwell sells support a finding
`
`of infringement. Rockwell argues further that Radwell's motion fails to set forth facts that
`
`demonstrate any authorized first sale, and that Radwell's sales actually "were sourced through
`
`tortious conduct, fraud and deception," and counterfeiting. Opp. at 7-8.
`
`Staff says that the first sale bar applies under trademark law but that the judicial
`
`exception for material differences is well-established in the circuits, including in the Federal
`
`Circuit,
`
`II. DISCUSSION
`
`Radwell relies on Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519, 538 (2013) and
`
`Impression Prods. v. Lexmark Intl, Inc., 137 S.Ct. 1523, 1536 (2017). Neither of those
`
`decisions involve trademark infringement, and neither case mentions the material differences
`
`exception to the exhaustion doctrine. Radwell has not demonstrated that these decisions defeat
`
`Rockwell's gray market allegations as a matter of law.
`
`Further, the motion raises pertinent factual issues that would need to be addressed at
`
`hearing, including the precise conduct that led to Rockwell's allegations of unauthorized use of
`
`its trademark. Developing a complete factual record will be important to any decision.
`
`2
`
`
`
`Accordingly, Motion Docket No. 1074-017 is hereby DENIED.
`
`SO ORDERED.
`
`Ift/
`
`Dee Lord Lord
`Administrative Law Judge
`
`3
`
`
`
`CERTAIN INDUSTRIAL AUTOMATION SYSTEMS AND
`COMPONENTS THEREOF INCLUDING CONTROL
`SYSTEMS, CONTROLLERS, VISUALIZATION
`HARDWARE, MOTION CONTROL SYSTEMS,
`NETWORKING EQUIPMENT, SAFETY DEVICES, AND
`POWER SUPPLIES
`
`PUBLIC CERTIFICATE OF SERVICE
`
`Inv. No. 337-TA-1074
`
`I, Lisa R. Barton, hereby certify that the attached ORDER has been served by hand upon
`the Commission Investigative Attorney, Brian Koo, Esq., and the following parties as indicated,
`on 5/30/2018
`
`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`On Behalf of Complainants Rockwell Automation, Inc.:
`
`Adam D. Swain
`ALSTON & BIRD LLP
`950 F Street NW
`Washington, DC 20004
`
`On Behalf of Respondent Radwell International
`d/b/a PLC Center:
`
`Deanna Tanner Okun
`ADDUCI, MASTR1ANI & SCHAUMBERG LLP
`1133 Connecticut Ave., NW
`Washington, DC 20036
`
`Respondents:
`
`Can Electric Limited
`No. 2 Danan Rd, Yueziu District
`Guangzhou, Guangdong, 510115
`China
`
`Capnil (HK) Company Limited
`Unit 603 6/F Koon Wah Mirrow
`Factory 3 Ind Bldg 5-9 Ka Hing
`Rd Kln Hk
`Hong Kong
`
`El Via Hand Delivery
`10 Via Express Delivery
`EAa First Class Mail
`111 Other:
`
`O Via Hand Delivery
`▪ Via Express Delivery
`[ "Via First Class Mail
`LI Other:
`
`El Via Hand Delivery
`El/Via Express Delivery
`PI Via First Class Mail
`LI Other:
`
`LI Via Hand Delivery
`10)Tia Express Delivery
`Via First Class Mail
`O Other:
`
`
`
`CERTAIN INDUSTRIAL AUTOMATION SYSTEMS AND
`COMPONENTS THEREOF INCLUDING CONTROL
`SYSTEMS, CONTROLLERS, VISUALIZATION
`HARDWARE, MOTION CONTROL SYSTEMS,
`NETWORKING EQUIPMENT, SAFETY DEVICES, AND
`POWER SUPPLIES
`Certificate of Service — Page 2
`
`Inv. No. 337-TA-1074
`
`Fujian Dahong Trade Co., Ltd.
`A15-2303 Taihongyu Pushang Road
`Cangshan Fuzhou Fujian
`Fujian 350008
`China
`
`Huang Wei Feng d/b/a A-0-M Industry
`Room 201 No. 55 2 Qu,
`Tdngshuiwei, Minzhi,
`Longhua, Boa'An, Shenzhen 511700
`China
`
`PLC-VIP Shop d/b/a VIP Tech Limited
`95 Fuk Wing Street,
`Cheung Sha Wan, Kowloon
`Hong Kong
`
`Wenzhou Sparker Group Co. Ltd.
`d/b/a Sparker Instruments
`Room 503, Oujiang Masion, Wenzhou Road,
`Wenzhou, 325000, China
`
`Yaspro Electronics (Shanghai) Co., Ltd.
`Room 1808E„No. 488, Vaohua Road
`Pudong New District
`Shanghai, China
`
`LI Via Hand Delivery
`III Via Express Delivery
`Via First Class Mail
`O Other:
`
`O Via Hand Delivery
`LI Via Express Delivery
`12/Via First Class Mail
`LI Other:
`
`O Via Hand Delivery
`LI Via Express Delivery
`RI/Via First Class Mail
`0 Other:
`
`O Via Hand Delivery
`O Via Express Delivery
`10/Via First Class Mail
`El Other:
`
`El Via Hand Delivery
`LI Via Express Delivery
`EI/Via First Class Mail
`111 Other:
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
