On June 13, 2017, the U.S. Court of Appeals for the Federal Circuit issued its nonprecedential opinion in Garmin Int’l., Inc. v. ITC (2016-1572). This was an appeal from the U.S. International Trade Commission’s (“the Commission”) final determination finding, inter alia, that Garmin International, Inc., Garmin USA, Inc., and Garmin Corp. (collectively, “Garmin”) infringe certain claims of U.S. Patent Nos. 8,305,840 (the ’840 patent) and 8,605,550 (the ’550 patent) and that such claims are not invalid. The underlying investigation is Certain Marine Sonar Imaging Devices, Including Downscan and Sidescan Devices, Products Containing the Same, and Components Thereof (Inv. No. 337-TA-921). See our July 11, 2014 post for more details on the underlying investigation.
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 the ’840 patent, the ’550 patent, and U.S. Patent No. 8,300,499. On December 1, 2015, the Commission issued its final determination finding that Garmin’s DownVü products infringe certain claims of the ’840 and ’550 patents. The Commission further found that many of the asserted claims of the ’840 and ’550 patents are not invalid as obvious over a 1960 article by Tucker entitled “Narrow-beam echo-ranger for fishery and geological investigations” (“Tucker”) and U.S. Patent No. 7,652,952 to Betts (“Betts”).
Garmin appealed, inter alia, the Commission’s finding that not all of the asserted claims of the ’840 and ’550 patents are invalid as obvious over Tucker and Betts. In particular, the Commission had found that Garmin had failed to show that Tucker discloses the “sonar signal processor” limitation of claims 1 and 23 of the ’840 patent and claims 32 and 44 of the ’550 patent. Specifically, the Commission had found that “[a]lthough Tucker provides circuit diagrams of the receiver and detailed specifications of the receiver and the recorder, Tucker does not expressly recite a processor or the processor’s functions of receiving signals representative of sonar returns and processing the signals to produce sonar image data.”
On appeal, the Federal Circuit reversed the Commission’s finding that not all of the asserted claims of the ’840 and ’550 patents are invalid as obvious over Tucker and Betts. In particular, the Court held that the Commission’s finding that Tucker did not disclose the claimed “sonar signal processor” was not supported by substantial evidence and thus needed to be reversed. The Court held that Garmin had in fact amply shown that Tucker discloses the claimed “sonar signal processor,” and that Betts also discloses a “sonar signal processor.” And since the alleged lack of a “sonar signal processor” was the only distinction that the Commission had found over the combination of Tucker and Betts, the Federal Circuit reversed the Commission and held that all asserted claims of Navico’s ’840 and ’550 patents are invalid as obvious over Tucker and Betts.