On May 1, 2015, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Soft-Edged Trampolines and Components Thereof (Inv. No. 337-TA-908) affirming ALJ Pender's Final Initial Determination ("ID") of no violation of Section 337 by respondent Vuly Trampolines Pty. Ltd. ("Vuly").
By way of background, the investigation is based on a December 24, 2013 complaint filed by Springfree Trampoline, Inc., Springfree Trampoline USA Inc., and Springfree Limited Partnership (collectively, "Springfree") alleging violation of Section 337 in the importation into the U.S. and sale of certain soft-edged trampolines and components thereof that infringe certain claims of U.S. Patent No. 6,319,174 ("the '174 patent"). Seeour December 31, 2013 and January 27, 2014 posts for more details on the Complaint and Notice of Investigation, respectively.
On December 5, 2015, ALJ Pender determined that no violation of Section 337 has occurred in this investigation. ALJ Pender found, inter alia, that Vuly's Thunder Trampolines infringed claims 1 and 13 of the '174 patent; that claim 13 of the '174 patent is invalid as anticipated pursuant to 35 U.S.C. § 102; and that the domestic industry requirement has not been met. See our December 8, 2014 post for more details.
The Commission determined to review the ALJ's construction of the terms "flexible mat," "first retaining means," and "flexible elongated rod." Regarding the term "flexible mat," the Commission determined that the plain and ordinary meaning of the term in the context of the entire patent is "a mat that is capable of being flexed." Principally in view of the doctrine of claim differentiation, the Commission rejected Vuly's argument that the proper construction of the term required the mat to be "larger in area than the support element," as this limitation also appears in dependent claims. The Commission also rejected Vuly's argument that because the specification describes the "present invention" as having a mat "larger in area than the support element," Springfree disclaimed a broader construction.
Regarding the term "first retaining means," the parties agreed that this term should be construed as a means-plus-function element. The Commission agreed with the ALJ that the function of the "first retaining means" is "to retain a first end of a flexible elongated rod" as explicitly recited in the claim, and rejected Vuly's attempt to read additional functionality into the term. With respect to the corresponding structure in the specification, the Commission modified the ALJ's identification of three alternative structures. In particular, the Commission rejected ALJ Pender's identification of "a pouch sewn into the fabric of the mat with an aperture on the non-contact (a.k.a., lower surface) of the flexible mat" as an alternative structure to carry out the claimed function because the sewn pouch is described as working in combination with an end-piece to retain the rod within the pouch, and is not its own distinct structure. The Commission also reversed the ALJ's determination that Springfree disclaimed a ball-and-socket structure as corresponding structure based upon statements made after the '174 patent issued in an unrelated application.
Concerning the term "flexible elongated rod," the Commission affirmed ALJ Pender's finding that the term should be given its plain and ordinary meaning and that there is no requirement that the rod must be cylindrical. The Commission determined that "absent lexicography or disavowal, a claim term should not be interpreted more narrowly than its ordinary meaning," and that there was no such lexicography or disavowal in this case. More specifically, the Commission found that "[a]n intent to limit the rod to a cylindrical shape is not expressed anywhere in the specification."
In the Initial Determination, ALJ Pender found that Vuly's Thunder trampolines infringe claims 1 and 13 of the '174 patent. The Commission affirmed, on modified grounds, the determination that Vuly's Thunder trampolines infringe claim 13, but reversed the ALJ's finding as to claim 1. Specifically, claim 1 of the '174 patent includes the term "first retaining means." Although the Commission agreed with ALJ Pender that the accused structure performed the function recited by the first retaining means, the Commission reversed the ALJ's finding that the trampolines contain an equivalent structure for performing the recited function. In particular, the Commission found that ALJ Pender focused his inquiry on a different function than that specifically recited by the claim and, even considering the proper function, the accused structure performed a different function than that claimed. Accordingly, the Commission reversed ALJ Pender's finding of infringement as to claim 1 of the '174 patent.
Regarding claim 13, the Commission affirmed the ALJ's finding that the accused Vuly Thunder trampolines include a "plurality of flexible elongated rods," but did so under a modified rationale. Interestingly, while the Commission affirmed the ALJ's finding that the accused product contains a "plurality of flexible elongated rods" under the doctrine of equivalents, the Commission sua sponte determined that ALJ Pender erred in finding that Vuly's trampolines did not literally infringe claim 13. Because the term "flexible elongated rod" is not limited to a straight cylindrical bar or to any specific shape or cross-section, the Commission determined that the proper construction of the term included a leaf spring as found in the accused product.
The Commission affirmed the ALJ's finding that U.S. Patent No. 5,336,135 does not anticipate claim 1 of the '174 patent, but that the reference does anticipate claim 13. The Commission also affirmed the ALJ's finding that the '174 patent is not invalid for enablement because ball-and-socket joints (alleged equivalent structures to the claimed "first retaining means") were well known to those of ordinary skill, and that it would have been a matter of routine experimentation to implement a ball-and-socket joint in the invention disclosed by '174 patent.
With respect to the technical prong, the Commission reversed the ALJ's determination that Springfree did not satisfy this element of the domestic industry requirement. Based primarily on its earlier determination that Springfree did not disclaim ball-and-socket arrangements of the "first retaining means," the Commission determined that Springfree's products practice claim 1. Regarding claim 13, the Commission determined that it was inappropriate for ALJ Pender to tie the technical prong of the domestic industry requirement to validity and hold that Springfree's products do not meet the technical prong because claim 13 was found invalid. Rather, the Commission reiterated its prevailing practice that a determination of invalidity does not preclude a finding that the complainant has met the technical prong of domestic industry. "[A] complainant need only show that it practices one claim of an asserted patent (not necessarily an asserted claim) to meet the technical prong of the domestic industry requirement."
Regarding the economic prong, the Commission agreed with ALJ Pender that Springfree failed to meet its burden of proof in establishing the significance of the amount of its investments in labor and capital. The ALJ and the Commission rejected Vuly's argument that Vuly's trampoline installation services are qualitatively significant for purposes of domestic industry because there was no credible evidence that Vuly's installation services are critical to safety and, therefore, a necessary domestic activity after trampoline sales. ALJ Pender also determined that there was insufficient evidence to find that Springfree's labor expenses during installation were significant, or that its investment in plant and equipment was significant.