On February 20, 2015, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Multiple Mode Outdoor Grills and Parts Thereof (Inv. No. 337-TA-895).

By way of background, this investigation is based on a complaint filed by A&J Manufacturing, LLC and A&J Manufacturing, Inc. (collectively, "A&J") alleging violation of Section 337 by over 20 proposed respondents in the importation and sale of certain multiple mode outdoor grills and parts thereof that infringe one or more claims of U.S. Patent Nos. 8,381,712 (the '712 patent), D660,646 and D662,773.  See our August 22, 2013 and September 23, 2013 posts for more details on the complaint and notice of investigation, respectively. 

Only A&J's allegations pertaining to the '712 patent remain.  As summarized in our October 2, 2014 post, ALJ Shaw "determined that a violation of [S]ection 337 has occurred with respect to some but not all respondents because certain accused products infringe at least one asserted claim of U.S. Patent No. 8,381,712, while certain accused products do not infringe any asserted claim."  According to the opinion, the Commission affirmed, with modified reasoning, ALJ Shaw's final initial determination ("ID") finding that there was a violation of Section 337.

Claim Construction

The Commission first reviewed the ID's construction of "exhaust" and "exhaust means" found in claims 10 and 16 and the related findings on infringement of claims 10-16.  In its pre-hearing brief, A&J argued that claims 10 and its dependent claims should be construed as means-plus-function claims under 35 U.S.C. § 112(f), however the Commission found that A&J failed to argue any construction for "exhaust means" different from the proposed construction for "exhaust."  After reviewing the parties' submissions and record evidence, the Commission determined that 35 U.S.C. § 112, ¶ 6 applies to the "exhaust" and "exhaust means" limitations because the intrinsic evidence showed that the patentee clearly intended them to be means-plus-function limitations.

Looking first to the claim language, the Commission found that the term "exhaust means" failed to convey sufficient structure to rebut the presumption that means-plus-function language applies.  Looking next to the prosecution history, the Commission found that the patentee deliberately chose to draft the "exhaust means" as a means-plus-function limitation.  In particular, the patentee requested that the examiner interpret issued claims 10-15 in accordance with 35 U.S.C. § 112, ¶ 6 and identified two smokestacks on the first cooking mode unit and second cooking mode unit as corresponding to the recited "at least one exhaust means" of the first cover and the second cover.  While the Commission reviewed expert testimony regarding the term "exhaust means" it found that the testimony was unhelpful and in direct conflict with the intrinsic evidence.  Accordingly, the Commission gave no weight to the expert testimony and found that the "exhaust means" limitations were governed by 35 U.S.C. § 112, ¶ 6.

The Commission also found that it was appropriate to interpret the "exhaust" limitation in claim 10 under 35 U.S.C. § 112, ¶ 6 because the claim language indicated that the patentee inadvertently omitted the word "means" after the word "exhaust" in the first cover means clause.  The Commission found that the error was apparent on the face of the patent and that even A&J conceded that "means" was inadvertently omitted during prosecution.

Because the Commission determined that both the "exhaust means" and "exhaust" limitations in claims 10 and 16 invoked 35 U.S.C. § 112, ¶ 6, the Commission construed the limitations by identifying the claimed function and corresponding structure described in the specification that performs the function.  The Commission Investigative Staff and remaining Respondents asserted that the function is "carrying smoke outside of the [first/second] means for cooking" and A&J asserted that it should be "to permit smoke, waste gases and/or cooking vapors to pass out of each respective means for cooking food."  The Commission adopted A&J's proposed function, which was consistent with the ID's construction of "exhaust" in claims 1 and 17.  All parties agreed that the corresponding structure that performs the function is met by the smokestacks.

Infringement

The Commission further determined that when claims 10 and 16 are properly construed, the evidence showed that Brinkmann's 3821 grill and the Academy/Huige grills satisfied the "exhaust" and "exhaust means" limitations in claims 10 and 16.  The Commission also determined that Brinkmann's 3800 and 3802 grills, the OLP/Kingsun Redesigned Grills, the OLP/Kingsun Original Grills, and the Char-Broil Fudeer grills did not satisfy the "exhaust" and "exhaust means" limitations in claims 10 and 16.  The Commission found that these products did not infringe because A&J failed to show that the alleged exhaust means in the accused grills were identical to or structurally equivalent to the smokestacks described in the '712 patent.

A&J also argued that Brinkmann's 3820 grill should be found to infringe because it employs smokestacks on both covers.  The ID, however, found no violation because A&J offered no evidence that it was imported, sold, or offered for sale at any time during the term of the '712 patent.  As A&J failed to identify any evidence of importation or sale of this product, the Commission affirmed the ID's finding that Brinkmann's 3820 grill does not infringe claims 10-16.  The Commission also affirmed, with modified reasoning, the ID's finding that the Char-Broil/Fudeer grills and the OLP/Kingsun Redesigned Grills do not infringe any claims of the '712 patent.  The Commission additionally affirmed, with modified reasoning, the ID's finding that Brinkmann's 3821 grill infringes claims 10, 11, 13, 15, and 16 and that the Academy/Huige grills infringe claims 10-13, 14, and 16 of the '712 patent.  The Commission also reversed the ID's finding that Brinkmann's 3800 and 3802 grills infringe claims 10, 13, 15, and 16, and the ID's finding that the OLP/Kingsun Original Grills infringe claims 10-16 of the '712 patent.

With respect to the Char-Broil 463724512 grill, the Commission noted that all of the asserted claims of the '712 patent require a "first cover" or "first cover means" that "includes at least one exhaust" or "exhaust means."  In his summary determination order ("SD"), ALJ Shaw construed "includes" to require that the "at least one exhaust" be located "on" the openable cover.  The SD also found that the patentee's narrowing amendments made during prosecution precluded A&J from asserting infringement under the doctrine of equivalents.  The Commission subsequently adopted the SD's construction of "includes."

After hearing all of the evidence, and applying the Commission's construction of "includes," ALJ Shaw found that the Char-Broil 463724512 grill does not infringe because it "does not have an exhaust on its openable cover."  Specifically, the ID found that Dr. Stevick's testimony regarding the location of the gap as being adjacent to and below the openable cover to be more credible than A&J's expert, Mr. Thuma.  On review, the Commission found no error, much less clear error, with these findings.  The Commission noted that the undisputed evidence showed that the Char-Broil 463724512 grill has an opening surrounded on the top and sides by the openable cover and the bottom by the grill body and that such opening was not sufficient to satisfy the "includes" limitation.  The Commission also found that it would be improper to change the interpretation of the term "includes."  Accordingly, the Commission affirmed, with modified reasoning, the ID's finding that the Char-Broil 463724512 grill does not infringe any claims of the '712 patent.

With respect to the GHP Grills, the Commission noted that the ID found that the GHP Grills should not be subject to an exclusion order in light of the settlement and license agreement between A&J and GHP.  Nevertheless, the ID determined that both grills did not infringe any of the asserted claims.  The Commission stated that GHP was terminated from the investigation based on a settlement agreement, license, and consent order that includes the GHP Grills as licensed products.  A&J argued, however, that respondent Keesung, who manufactured a GHP Grill (DGB730SNB-D), was not a party to the agreement with GHP and that, therefore, A&J had no assurance that Keesung could not and would not begin selling the grill for importation through a party not authorized under the GHP agreement.  Based on the facts alleged in the complaint, the Commission vacated the ID's finding that the DGB730SNB-D grill does not infringe the asserted claims of the '712 patent.  The Commission also reversed the ID's finding that the other GHP Grill, DGJ810CSB-D, does not infringe the asserted claims of the '712 patent, finding that the exhausts are located on the openable cover.  Due to the license agreement, however, the Commission found that GHP is permitted "to make, have made by others, use, sell, distribute, offer to sell, import and have imported by others" this product.

Invalidity

Respondents contended that the asserted claims of the '712 patent were invalid as obvious under 35 U.S.C. § 103 over certain prior art references.  The ID noted that one reference ("Koziol") was not before the Examiner during prosecution, but ALJ Shaw found that Koziol was cumulative of a different prior art reference ("Oliver"), which was considered by the Examiner during prosecution.  The ID found that Koziol disclose all of the limitations in the '712 patent and that Respondents had not shown that a person of ordinary skill in the art would have modified Koziol into the multimode grill disclosed in the '712 patent.  The ID also rejected Respondents' obviousness arguments to combine the smokestacks disclosed in certain prior art references with the cooking apparatus taught in Koziol because the Respondents applied their construction of "exhaust" as opposed to the ID's construction.

The Commission determined to affirm, with modified reasoning, the ID's finding that the asserted claims of the '712 patent are not obvious over Koziol.  The Commission found that Koziol, even when combined with other prior art references, "fails to teach a first cooking unit [or means for cooking food] and a second cooking unit [or means for cooking food] that are simultaneously operable to cook food using gas and solid cooking fuels respectively, and openable covers [or openable cover means] including at least one exhaust [or exhaust means]."  The Commission found that a person of ordinary skill in the art would understand Koziol to disclose a gas cooking unit and a charcoal cooking unit attached to a common support structure.  Despite disclosing this cooking combination, the ID found the following four limitations to be absent from Koziol: (1) "openable [] cover" and "openable [] cover means"; (2) "exhaust" and "exhaust means"; (3) cooking simultaneously with two different fuels; and (4) cooking grate or grill. The Commission affirmed the ID with respect to the first three limitations, but vacated the ID with respect to the fourth limitation.

Specifically, the Commission found that the remaining Respondents failed to show that Koziol discloses "openable [] cover" and "openable [] cover means" because there was no support that Koziol showed an openable cover, and even if it did, there is no indication that the cover was attached to a common support cover.  The Commission also found that the remaining Respondents had not shown that Koziol discloses simultaneous operating of two cooking grills using different fuels because it does not disclose simultaneous multimode cooking, the use of the grills, or any details of the cooking units.

The Commission also found that the ID erred in interpreting the independent claims of the '712 patent to require that the first and second cooking units be "capable of independent operation."  The Commission also agreed with the remaining Respondents that the specification and prosecution history of the '712 patent does not support the ID's conclusion that Oliver lacks two separate cooking units.  Nevertheless, the Commission found that the asserted claims are not obvious over Oliver because the asserted claims require that the gas cooking unit includes a grill but Oliver shows a griddle and teaches away from using a grill with gas.

The Commission also found that the ID's rationale for rejecting Respondents' obviousness argument was incorrect but agreed that the remaining Respondents failed to present clear and convincing evidence that one of ordinary skill would have modified Oliver to include the smokestacks disclosed in the prior art because it would defeat one of the objectives of Oliver, which is a cooking system that can be broken down, stored flat, and easily transported and would conflict with Oliver's purpose of reflecting and holding in radiant heat.  The Commission further found that the remaining Respondents failed to show that Oliver alone satisfies the "exhaust" or "exhaust means" limitations in the asserted claims.  The Commission also affirmed the ID's finding that the dependent claims of the '712 patent have not been proven invalid for the reasons discussed above.

Remedy, Public Interest, and Bond

A&J argued that a General Exclusion Order ("GEO") is necessary to prevent circumvention of a Limited Exclusion Order ("LEO") because (1) there is an established demand for multiple mode grills in the U.S. market and the demand is growing; (2) multiple mode grills are sole through well-established marketing and distribution networks, including brick-and-mortar retail establishments and the online market; and (3) there are many non-respondent Chinese manufacturers that produce multiple mode grills and there is no significant barrier to the expansion of their foreign production.  A&J also asserted that there is a widespread pattern of violation and that a GEO is appropriate because it is difficult to identify the source of infringing products when grills are not typically branded with the manufacturer's name.

ALJ Shaw declined to recommend a GEO because (1) A&J failed to name the importer Blue Rhino during the course of the investigation; (2) none of the Respondents are likely to circumvent an LEO; and (3) the Commission has already determined that certain design-around products do not infringe.

The Commission found that the evidence did not support a conclusion that a GEO is necessary and that A&J's evidence consisted of unsupported attorney arguments and speculative assumptions that potential non-respondent manufacturers and importers may circumvent an LEO.  Accordingly, the Commission found that the factual requirements for the issuance of a GEO had not been met.

The Commission did find that a LEO preventing entry of the infringing products of Brinkmann, OLP, Kingsun, Academy, and Huige was appropriate.  The Commission also found that the LEO should be issued against the accused products of defaulting party Keesung but should reflect the fact that the DGB730SNB-D grill may be sold to GHP under license.

The remaining Respondents requested that any remedial order identify with specificity what grills are not infringing.  The Commission had previously stated that because A&J admits that the following redesigned products do not infringe, those products will be exempted from any remedy that issued in the investigation.  The redesigned products are (1) Rankam Model No. GR2034205-SC (Ver 2); (2) Rankam Model No. GR207100l -MM (Ver 2); and (3) Chant Red Stone Model 104676.  The remedial orders also exempt all other products that have been found not to infringe.  The Commission, however, rejected the suggestion to explicitly identify the models of grills found to infringe.  The Commission also included a certification provision with the LEO, allowing Respondents' to certify that the products being imported are not excluded from entry under the LEO.

The remaining Respondents also contended that consumers who legally purchased accused grills should be permitted to continue to purchase parts to maintain those grills in a safe and working manner.  Additionally, they argued that A&J did not present any evidence establishing which parts are unique to the accused grills and which are standard parts used in non-accused single-mode grills.  Respondents stated that customers need to be able to purchase replacement parts to keep their grills in safe operable condition.  Accordingly, the remedial orders provide for an exemption for the importation of parts for use in the service, repair and maintenance of accused products previously sold in the U.S.

ALJ Shaw also recommended that cease and desist orders ("CDOs") issue as to Respondents Brinkmann, OLP, Academy, and Char-Broil if a violation is found as to those Respondents.  Brinkmann and Academy did not challenge the finding that they maintain commercially significant inventories of infringing grills in the U.S. and the Commission thus found that CDOs against Brinkmann and Academy are warranted.  The Commission stated that because Char-Broil was not in violation of Section 337 a CDO was not warranted against them.  As to OLP, the Commission noted that the parties were disputing whether the number of units stored in OLP's Neosho facility constitutes a commercially significant inventory.  After reviewing the evidence, the Commission found that they do constitute a commercially significant inventory.

The Commission also analyzed the effect that remedial orders will have on four public interest factors.  After reviewing the evidence, the Commission found that the remedial orders would not adversely impact the public health and welfare, competitive conditions in the U.S. economy, the production of like or competitive articles in the United States, or U.S. consumers.

With respect to bond, A&J argued that the bond rate should be set based on the lost profits for each grill.  ALJ Shaw rejected this calculation because it did not account for non-infringing alternatives and did not address whether A&J would have the manufacturing and marketing capability to exploit excess demand in the absence of excluded products.  ALJ Shaw also rejected A&J's late argument that the bond should be set at 100% of the entered value of Respondents' products.  Accordingly, ALJ Shaw recommended that no bond be imposed.  Based on its analysis of these facts, the Commission found that the bond should be set in an amount of zero percent during the period for presidential review.  With respect to Keesung, however, the Commision imposed a bond of 100% of the entered value of the imported infringing product.