Navico Inc. v. International Trade Commission
696 F. App'x 989
| Fed. Cir. | 2017Background
- Navico filed a Section 337 complaint alleging Garmin’s DownVü sonar products infringed three Navico patents (’840, ’550, ’499); the ITC investigation followed and an ALJ initially found no violation.
- The Commission reversed in part, finding Garmin’s DownVü products directly infringed claims of the ’840 and ’550 patents, but found certain claims of the ’550 patent invalid as obvious and found no infringement of the ’499 patent.
- The Commission issued an exclusionary order prohibiting importation of the infringing sonar imaging devices; Navico appealed aspects of the Final Determination.
- The ’840 and ’550 patents claim sonar assemblies using linear (fan-shaped) transducers for higher-resolution downscan and sidescan imaging; the ’499 patent claims software that combines linear (fan-shaped) and conical (circular) downscan data into displays.
- The Commission found claims 1, 7, 12, 13, and 57 of the ’550 patent obvious based on Betts (sonar system with linear sidescan and circular downscan transducers) combined with Tucker (adjustable narrow-beam transducer that can be used downwards); it construed “combining” in the ’499 patent to mean merging data into a single unified display.
Issues
| Issue | Navico’s Argument | Garmin’s Argument | Held |
|---|---|---|---|
| Contributory infringement for standalone transducers | Navico: Garmin’s standalone transducers were sold knowing they were specially made for infringing use, so contributory infringement and prospective relief should apply | Garmin: No contributory infringement (and lower court later found claims invalid) | Affirmed: No contributory infringement; related decision found claims invalid so contributory infringement cannot stand |
| Obviousness of certain ’550 claims | Navico: Betts + Tucker should not render claimed combination obvious; Tucker is sidescan not downscan; combination teaches away or lacks motivation to combine; objective indicia not adequately considered | Garmin/Commission: Tucker discloses using its transducer pointed downward; a person of skill would be motivated to substitute Tucker’s linear downscan for Betts’ circular downscan to obtain higher resolution; objective indicia were considered and do not overcome prima facie case | Affirmed: Claims 1, 7, 12, 13, 57 of the ’550 patent are obvious over Betts + Tucker; Commission’s factual findings supported by substantial evidence |
| Whether combining in ’499 requires merging into a single image | Navico: “Combining” is broader; side-by-side displays (as in Fig.10) are within “combine”; dependent claim allowing separate windows shows combined can mean merely used together | Garmin/Commission: Spec. distinguishes side-by-side displays from a combined single display and prefers merging; “combine” means merge/bring into union | Affirmed: “Combine” construed as “to merge or to bring into union”; Garmin did not infringe the ’499 patent |
| Consideration of secondary (objective) indicia in obviousness analysis | Navico: Commission treated objective indicia as an afterthought and failed to give them proper weight | Commission: Considered both positive and negative indicia and concluded they do not overcome strong prima facie showing of obviousness | Affirmed: Commission adequately considered objective indicia and properly concluded they did not overcome obviousness finding |
Key Cases Cited
- Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331 (Fed. Cir.) (standard: substantial evidence for ITC factual findings)
- Fuji Photo Film Co. v. Int’l Trade Comm’n, 386 F.3d 1095 (Fed. Cir.) (remedy review standard for ITC orders)
- Graham v. John Deere Co., 383 U.S. 1 (U.S.) (framework for obviousness analysis)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S.) (obviousness when combination yields predictable result)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S.) (claim construction may involve factual findings)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim construction principles; specification as primary guide)
- In re Gordon, 733 F.2d 900 (Fed. Cir.) (modification that renders prior art inoperable teaches away)
- In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir.) (objective indicia must be considered in obviousness analysis)
- Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157 (Fed. Cir.) (motivation to combine and reasonable expectation of success are factual inquiries in obviousness)
- Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir.) (secondary considerations are part of whole obviousness analysis)