The opinion of the court was delivered by: Hon. Michael M. Anello United States District Judge
ORDER DENYING PLAINTIFF'S EX PARTE MOTION TO AMEND TEMPORARY RESTRAINING [Doc. No. 23]
ORDER; RESTRAINING ORDER ISSUED ON SEPTEMBER 12, 2011
Currently pending before the Court is Plaintiff's ex parte motion to amend the temporary restraining order issued on September 12, 2011. For the reasons set forth below, the Court DENIES Plaintiff's ex parte request.
On August 31, 2011, Plaintiff Acolyte Technologies Corporation filed a complaint for patent infringement and unfair competition against corporate Defendant Jeja International Corporation, Ltd. ("Jeja") and individual Defendants Evelyn Kim, Inho Kim, Choong Bin Lim, Sook Ja Lim, and Ceong Lim-doing business as La Bonita-collectively, "Individual Defendants." [Doc. No. 1.] Plaintiff is in the business of developing and designing innovative LED lighting products to adorn and lighten decor and floral arrangements. [Id. ¶¶17-18.] Plaintiff owns the two patents in suit-U.S. Patent No. D633,232 ("'232 Patent") and U.S. Patent No. D642,299 ("'299 Patent")-which teach an "ornamental design for lighting device." [Id. ¶¶27-28.] Plaintiff asserts Defendants are manufacturing, marketing, advertising, importing and selling lighting devices that infringe the '232 and '299 Patents.
On September 2, 2011, Plaintiff filed an ex parte application for a temporary restraining order ("TRO") and order to show cause why a preliminary injunction should not issue to enjoin Defendants' allegedly infringing conduct. [Doc. No. 4.] Plaintiff's ex parte application also requested expedited discovery to determine the identities of certain Doe Defendants whom Plaintiff believed were "responsible for a large shipment of infringing LED lighting devices scheduled to arrive in the U.S. in or around September 2011." [Id. ¶4.]
On September 12, 2011, the Court granted Plaintiff's ex parte application for a TRO and expedited discovery. [Doc. No. 13.] The Court temporarily enjoined and restrained the named Defendants, including their officers, agents, servants, and employees from making, using, selling, or offering to sell the following six products: (i) "9 led submersible;" (ii) "9 led submersible LD901_M;" (iii) "full color 9 led submersible;" (iv) "waterproof 9 led lights for floral design;" (v) "14 led submersible LD14_M;" and (vi) "sub-14." [Id. at p.7-8.] In accordance with Federal Rule of Civil Procedure 65(c), the Court also instructed Plaintiff to post a bond in the amount of $5,000 within seven days of entry of the Order. [Id.]
The record suggests Plaintiff deposed Defendant Inho Kim on September 20, 2011 and obtained the shipment information it sought. [Doc. No. 20.] On October 5, 2011, Plaintiff filed the pending ex parte motion to amend the TRO to further restrain Defendants' conduct by enjoining them from importing allegedly infringing products into the United States. [Doc. No. 23.]
Plaintiff asserts the September 12, 2011 TRO should be amended because it "recently discovered that shipments of potentially infringing goods were stopped at a United States port of entry in Oakland, California." [Doc. No. 23-1, p.1.] However, U.S. Customs and Border Protection ultimately released the shipment because the TRO does not explicitly prohibit the products from being imported to the United States, but rather, only restricts the manufacture and sale of the infringing items. [Id.] Plaintiff therefore requests the Court amend its TRO to enjoin Defendants from importing the specified LED devices. [Id.] Plaintiff suggests this additional restriction is consistent with the existing TRO, and it is necessary to enforce the TRO in "the manner intended by the Court." The Court disagrees.
(A) The Terms of the Existing TRO Should Not be Expanded
First, the Court concluded the record supported only a "narrowly tailored order restraining certain limited conduct by the named Defendants." [Doc. No. 13, p.7.] At the time Plaintiff filed its original motion for a TRO on September 2, Plaintiff had not served any of the named Defendants. Four days later on September 6, Plaintiff served the complaint on two Defendants-Inho Kim and Evelyn Kim-and provided them notice of the TRO. [Doc. Nos. 5-10.] Defendants' opposition to Plaintiff's TRO was due the following day, September 7, but no opposition was filed. More than one month has passed since Plaintiff initiated this action, and still only those two Defendants have been served. The Court is disinclined to further restrict all of the Defendants' conduct, absent proper service and actual notice of the claims and relief sought against them.
Second, the arrival of the shipment in Oakland does not warrant amending the TRO for several reasons. First, the purported customs record for Defendant Jeja is not properly authenticated and therefore inadmissible. Fed. R. Evid., 801-804, 901. Second, even if considered, the record indicates the shipment was sent to "Asian Imp. Store Inc." located in San Carlos, California. Asian Imp. Store Inc. was not named in the original complaint and therefore was not subject to the existing TRO. Third, although Plaintiff indicates it believes the shipper, Zega International Inc., is merely an alter ego of Defendant Jeja because the address for Zega is the same as that for Jeja, Plaintiff's mere suspicion is inadequate. While the record provided in Exhibit D to Mr. Stern's declaration appears to be labeled "Customs Record for Jeja International Corporation Ltd.," the heading on this otherwise inadmissible document is inapposite to the issue before the Court. [Doc. No. 23-1, Declaration of Steven Stern ¶8, Exh. D.] Even assuming Defendant Jeja is responsible for the September 19 shipment from Hong Kong to California, the existing TRO is sufficiently broad to cover Jeja's alleged conduct. The TRO prohibits Jeja from manufacturing or selling the infringing devices, conditions which precede importation. The ...