On June 13, 2017, the U.S. Court of Appeals for the Federal Circuit issued its non-precedential opinion in Navico Inc. v. ITC, 2016-1533. This was an appeal from the U.S. International Trade Commission’s (“the Commission”) final determination in Certain Marine Sonar Imaging Devices, Including Downscan and Sidescan Devices, Products Containing the Same, and Components Thereof (Inv. No. 337-TA-921).
By way of background, the underlying investigation is based on a June 9, 2014 complaint filed by Navico, Inc. and Navico Holding AS (collectively, “Navico”) alleging violation of Section 337 in the importation into the U.S. and sale of certain marine sonar imaging devices that allegedly infringe one or more claims of U.S. Patent Nos. 8,305,840 (the ’840 patent), 8,300,499 (the ’499 patent), and 8,605,550 (the ‘550 patent). See our July 11, 2014 post for more details on the underlying investigation. On December 1, 2015, the Commission issued its final determination reversing the Initial Determination’s primary claim construction and finding a violation of Section 337 by Garmin International, Inc. and Garmin USA, Inc. (collectively, “Garmin”) and others based on infringement of certain claims of the ’840 and ’550 patents. The Commission issued a limited exclusion order and CDOs directed at Garmin. On August 18, 2016, the Commission issued a modified limited exclusion order clarifying that certain components being imported by Garmin are covered by the original limited exclusion order. On appeal, the Federal Circuit affirmed the Commission’s Final Determination on the issues of (1) contributory infringement, (2) invalidity of the ’550 patent, and (3) claim construction in the ’499 patent.
First, the Federal Circuit affirmed the Commission’s finding of no contributory infringement of the ’840 patent. Navico had alleged that Garmin contributorily infringed through its sale of standalone transducers because it knew they were specially made to be used in an infringing manner. The Court found no contributory infringement based on the outcome of a related decision (Garmin Int'l, Inc. v. ITC, No. 16-1572) in which the Court reversed the Commission’s finding of validity and found the same patent claims invalid as obvious over the prior art.
The Court also affirmed the Commission’s finding that the ’550 patent was invalid on grounds of obviousness as there was substantial evidence that the patented technology was an obvious modification of the prior art. Specifically, the need to obtain a high resolution image for studying the layers in the sea and the topography of the sea bed provided the motivation to modify the prior part to incorporate a linear downscan transducer. The Court further found that the Commission properly considered the objective indicia of non-obviousness.
At issue in the claim construction of the ’499 patent was the term “combining,” which the Commission had construed as “to merge or to bring into union.” The Court rejected Navico’s argument for a broader interpretation and agreed with the Commission’s construction.