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UNITED STATES INTERNATIONAL T R A D E COMMISSION Washington, D.C.

In the Matter of

C E R T A I N MARINE SONAR IMAGING D E V I C E S , INCLUDING DOWNSCAN AND SIDESCAN D E V I C E S , PRODUCTS CONTAINING T H E SAME, AND COMPONENTS T H E R E O F

Investigation No. 337-TA-921

COMMISSION OPINION

On July 2, 2015, the presiding administrative lawjudge ("ALJ") issued a final initial

determination ("ID") finding no violation of section 337 of the Tariff Act of 1930, as amended,

19 U.S.C. § 1337, as to U.S. Patent Nos. 8,305,840 ("the '840 patent"), 8,300,499 ("the '499

patent"), and 8,605,550 ("the '550 patent"). The Commission determined to review-in-part the

final ID and requested briefing on certain issues under review. 80 Fed. Reg. 54592 (Sept. 10,

2015).

Having considered the final ID, the parties' written submissions, and the record in this

investigation, the Commission has determined to affirm-in-part and reverse-in-part the final ID

and to terminate the investigation with a finding of a violation of section 337 as to the '840 and

'550 patents and no violation as to the '499 patent.

I . BACKGROUND

The Commission instituted this investigation on July 14, 2014, based on a complaint filed

by Navico, Inc. of Tulsa, Oklahoma, and Navico Holding AS, of Egersund, Norway

(collectively, "Navico"). 79 Fed. Reg. 40778 (July 14, 2014). The complaint alleged violations

of section 337 in the importation into the United States, the sale for importation, and the sale

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within the United States after importation of certain marine sonar imaging devices, including

downscan and sidescan devices, products containing the same, and components thereof by reason

of infringement of certain claims of the '840, '499, and '550 patents. Id. The notice of

investigation named Garmin International, Inc. and Garmin USA, Inc., each of Olathe, Kansas,

Garmin (Asia) Coiporation of New Taipei City, Taiwan (collectively, "Garmin"), and Garmin

North America, Inc. as respondents. Id. The Office of Unfair Import Investigations ("OUII")

was also named as a party. Id.

On December 31, 2014, the Commission terminated the investigation as to claims 2, 6, 8,

10,12-14, 22, 25, 26, 30, 33-36, 38, 43, 52, 56-59, 66, and 69 ofthe '840 patent; claims 5-7,16,

28-30, 39, 47-49, 58, 63, 69, 71, 73, and 76-78 ofthe '499 patent; and claims 2, 3, 17, 19-23, 25,

34-36, 40, 41, 47-50, and 52 ofthe '550 patent. Notice (Dec. 31, 2014) (determining not to

review Order No. 10 (Dec. 2, 2014)).

On January 9, 2015, the Commission terminated the investigation as to Garmin North

America, Inc. Notice (Jan. 9, 2015) (determining not to review Order No. 11 (Dec. 11, 2014)).

On January 13, 2015, the Commission terminated the investigation as to claims 3, 4, 15,

20, 24, 27, 29, 31, 37, 42, 44-46, 49-51, 53-55, 61, 62, 68, and 73 ofthe '840 patent; claims 4,

23, 27, 46, 64, 65, 70, 72, 74, 75, and 81 ofthe '499 patent; and claims 4, 5, 14, 15, 24, 33, 38,

39, 42, 45, and 51 ofthe '550 patent. Notice (Jan. 13, 2015) (determining not to review Order

No. 13 (Dec. 17, 2014)).

On March 3, 2015, the Commission determined on summary determination that Navico

satisfied the economic prong of the domestic industry requirement for the ' 840 and '499 patents

and the technical prong of the domestic industry requirement for the '840 and '550 patents.

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Notice (Mar. 3, 2015) (determining not to review Order No. 14 (Jan. 29, 2015) and Order No. 15

(Jan. 30, 2015)).

On March 18-24, 2015, the parties participated in an evidentiary hearing held before the

ALJ. The ALJ thereafter received posthearing briefing from the parties.1

On July 2, 2015, the ALJ issued a final ID finding no violation of section 337 with

respect to all three asserted patents. Specifically, the ID found that the asserted claims of each

patent are not infringed and were not shown to be invalid for anticipation or obviousness. The

ID found that the economic prong of the domestic industry requirement was not satisfied with

respect to the '550 patent. The ALJ also issued a recommended determination ("RD") on

remedy and bonding, recommending, i f the Commission finds a section 337 violation, that a

limited exclusion order and a cease and desist order should issue and that a bond should be

imposed at a reasonable royalty rate of eight percent for each infringing device imported during

the period of presidential review.

On July 20, 2015, Navico and OUII filed petitions for review challenging various

findings in the final ID, and Garmin filed a contingent petition for review.2 Navico petitioned

the Commission for review of the ID's construction of the limitation "single linear downscan

transducer element" in the '840 patent (and its variants in the other two patents), the ID's

1 Complainants' Initial Post-Hearing Brief ("Navico Posthearing Br."); Garmin Respondents' Posthearing Brief ("Garmin Posthearing Br."); Commission Investigative Staffs Posthearing Brief ("OUII Posthearing Br."); Complainants' Post-Hearing Reply Brief; Garmin Respondents' Reply Post-Hearing Brief ("Garmin Posthearing Reply"); Commission Investigative Staffs Post-Hearing Reply Brief.

Complainants Navico Inc. and Navico Holding AS's Petition for Review of the Final Initial Determination ("Navico Pet."); Petition of the Office of Unfair Import Investigations for Review in Part of the Initial Determination on Violation ("OUII Pet."); Garmin Respondents' Contingent Petition for Review of the Final Initial Determination ("Garmin Pet.").

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construction of the limitation "combine" (and its variants) in the '499 patent, the ID's findings of

noninfringement of the three asserted patents, and the ID's finding that the economic prong of

the domestic industry requirement is not satisfied for the '550 patent. OUII sought review of the

ID's construction of the limitation "single linear downscan transducer element" in the '840

patent (and its variants in the other two patents) and application of this term in finding no

infringement of all three patents. Gamiin requested review, only i f the Commission adopted

Navico's proposed claim constructions, of the ID's construction ofthe limitation "single linear

downscan transducer element" in the '840 patent (and its variants in the other two patents), the

ID's finding of validity of the asserted patents, certain findings relating to infringement, and the

RD relating to a limited exclusion order. On July 28, 2015, the parties filed responses to the

various petitions.3

On August 5, 2015, Navico and Gamiin filed public interest statements under

Commission Rule 210.50(a)(4).4 The Commission did not receive any public interest statements

from the public in response to the Commission notice issued on July 10, 2015. 80 Fed. Reg.

39799 (July 10,2015).

On September 3, 2015, the Commission detemiined to review the final ID in part and

requested additional briefing from the parties on certain issues. 80 Fed, Reg. at 54592.

Specifically, the Commission determined to review (1) the ID's construction of the limitation

3 Complainants Navico Inc. and Navico Holding AS's Response to Garmin's Contingent Petition for Review of the Final Initial Determination; Garmin Respondents' Reply to Complainants' and Staffs Petitions for Review of the Final Initial Determination ("Garmin Pet. Resp."); Response of the Office of Unfair Import Investigations to the Private Parties' Petitions for Review of the Initial Determination on Violation ("OUII Pet. Resp."). Navico subsequently filed a corrected response, which was accepted on July 29, 2015 ("Navico Pet. Resp.").

4 Complainants Navico Inc. and Navico Holding AS's Rule 210.50(a)(4) Statement Regarding the Public Interest; Respondents' Public Interest Statement ("Garmin Statement").

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"single linear downscan transducer element" recited in claims 1 and 23 of the '840 patent (and its

variants in the '499 and '550 patents); (2) the ID's construction of the limitation "combine" (and

its variants) recited in claims 1, 24, and 43 of the '499 patent; (3) the ID's findings of

noninfringement with respect to the three asserted patents; (4) the ID's findings of validity with

respect to the three asserted patents; and (5) the ID's finding regarding the economic prong of the

domestic industry requirement with respect to the '550 patent. Id. The Commission also

solicited briefing from the parties and the public on the issues of remedy, bonding, and the public

interest. M a t 54593.

On September 14, 2015, the parties filed initial written submissions addressing the

Commission's questions and the issues of remedy, bonding, and the public interest.5 On

September 21, 2015, the parties filed response briefs.6 No comments were received from the

public.

II . STANDARD ON R E V I E W

The Commission's review is conducted de novo. Certain Polyethylene Terephthalate

Yarn and Products Containing Same, Inv. No. 337-TA-457, USITC Pub. No. 3550, Comm'n Op.

at 9 (June 18, 2002). Upon review, "the Commission has 'all the powers which it would have in

5 Complainants Navico Inc. and Navico Holding AS's Initial Written Submission in Response to Commission's September 3, 2015 Notice ("Navico Br."); Garmin's Written Submission on the Issues Under Review Identified in the Notice of Commission Determination to Review the Final Initial Determination in Part ("Garmin Br."); Brief of the Office of Unfair Import Investigations on the Issues Under Review and on Remedy, Bonding, and Public Interest ("OUII Br."). 6 Complainants Navico Inc. and Navico Holdings AS's Response to Garmin's Submission Addressing the Commission's September 3, 2015 Notice ("Navico Resp."); Gamiin's Responsive Written Submission on the Issues Under Review Identified in the Notice of Commission Determination to Review the Final Initial Determination in Part ("Garmin Resp."); Reply Brief of the Office of Unfair Import Investigations on the Issues Under Review and on Remedy, Bonding, and Public Interest ("OUII Resp.").

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making the initial determination,' except where the issues are limited on notice or by rule."

Certain Flash Memory Circuits and Products Containing Same, Inv. No. 337-TA-382, USITC

Pub. No. 3046, Comm'n Op. at 9-10 (June 26, 1997) (quoting Certain Acid-Washed Denim

Garments and Accessories, Inv. No. 337-TA-324, USITC Pub. No. 2576, Comm'n Op. at 5

(Aug. 28, 1992)). Upon review, "the Commission may affirm, reverse, modify, set aside or

remand for further proceedings, in whole or in part, the initial determination of the administrative

lawjudge." 19 C.F.R. § 210.45(c). "The Commission may also make any findings or

conclusions that in its judgment are proper based on the record in the proceeding." Id.

I I I . ANALYSIS

A. U.S. Patent No. 8,305,840

The '840 patent is titled "Downscan Imaging Sonar," and issued on November 6, 2012.

JX-1 ('840 patent). The '840 patent describes a downscan imaging sonar using a linear

transducer element to provide improved images of a sea floor and other objects in the water

column beneath a vessel. Id., Abstract.

Navico asserts claims 1, 5, 7, 9,11, 16-19, 23, 32, 39-41, 63, and 70-72 ofthe '840

patent. ID at 54-55, 95-96. The asserted independent claims of the '840 patent recite:

1. A sonar assembly for imaging an underwater environment beneath a watercraft traveling on a surface of a body of water, the sonar assembly comprising:

a housing mountable to the watercraft;

a single linear downscan transducer element positioned within the housing, the linear downscan transducer element having a substantially rectangular shape configured to produce a fan-shaped sonar beam having a relatively narrow beamwidth in a direction parallel to a longitudinal length of the linear downscan transducer element and a relatively wide beamwidth in a direction perpendicular to the longitudinal length of the transducer element, the linear downscan transducer element being positioned with the longitudinal length thereof extending in a fore-to-aft direction of the housing;

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wherein the linear downscan transducer element is positioned within the housing to project fan-shaped sonar beams in a direction substantially perpendicular to a plane corresponding to the surface of the body of water, said sonar beams being repeatedly emitted so as to sequentially insonify different fan-shaped regions of the underwater environment as the watercraft travels; and

a sonar signal processor receiving signals representative of sonar returns resulting from each of the fan-shaped sonar beams and processing the signals to produce sonar image data for each fan-shaped region and to create an image of the underwater environment as a composite of images of the fan-shaped regions arranged in a progressive order corresponding to the travel of the watercraft.

23. A sonar system for imaging an underwater environment beneath a watercraft traveling on a surface of a body of water, the sonar system comprising:

a single linear downscan transducer element positioned within a housing that is mountable to the watercraft, the linear downscan transducer element having a substantially rectangular shape configured to produce a fan-shaped sonar beam having a relatively narrow beamwidth in a direction parallel to longitudinal length of the linear downscan transducer element and a relatively wide beamwidth in a direction perpendicular to the longitudinal length of the transducer element, the linear downscan transducer element being positioned with the longitudinal length thereof extending in a fore-to-aft direction of the housing;

wherein the linear downscan transducer element is positioned to project fan-shaped sonar beams in a direction substantially perpendicular to a plane corresponding to the surface of the body of water, said sonar beams being repeatedly emitted so as to sequentially insonify different fan-shaped regions of the underwater environment as the watercraft travels;

a sonar module configured to enable operable communication with the linear downscan transducer element, the sonar module including:

a sonar signal processor to process sonar return signals, and

at least one transceiver configured to provide communication between the linear downscan transducer element and the sonar signal processor;

the sonar signal processor receiving signals representative of sonar returns resulting from each of the fan-shaped sonar beams and processing the signals to produce sonar image data for each fan-shaped region and to create an image of the underwater environment as a composite of images of the fan-shaped regions arranged in a progressive order corresponding to the travel of the watercraft.

JX-1, claims 1, 23 (emphasis added to disputed terms).

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1. Claim Construction

Al l of the asserted claims of the '840 patent require a "single linear downscan transducer

element." The ID construed the term as recited in independent claims 1 and 23 to mean "a single

rectangular element, or a plurality of connected rectangular elements operating as a single

substantially rectangular element, pointed downwardly." ID at 34.

The Commission detemiined to review the ID's construction and requested briefing on

whether the limitation "single linear downscan transducer element" should be construed as "a

single downwardly pointed transducer that is formed from a single element or a plurality of

elements that act together as i f they were a single element," where the phrase "act together"

means act simultaneously or in phase. 80 Fed. Reg. at 54593. After considering the parties'

arguments and the record, the Commission adopts the following construction: "a single

downwardly pointed transducer that is formed from a single crystal or a plurality of crystals that

act simultaneously and in phase as i f they were a single crystal."7

In their petitions for review, Navico and OUII challenged the ID's construction, arguing

that the claimed transducer must communicate (or be driven) via a single channel. Navico Pet. at

23, 49; OUII Pet. at 6. The ID found that the disputed claim term does not require a single

channel to communicate with a transceiver. ID at 42. The Commission agrees the term is not so

limited. Nothing in the claims, specification, or the prosecution history mentions channels, much

less precludes multiple channels between the transducer and the transceiver.

7 The parties and the ID use the terms "element" and "crystal" interchangeably to describe the components of the claimed transducer. The Commission uses the word "crystal" to avoid confusion with the term "element" in the disputed claim term.

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The parties do not dispute the aspects of the ID's construction that require a transducer

that is pointed downwardly and that cover a transducer formed of a single crystal or a plurality of

crystals. See Navico Br. at 3-4; Garmin Br. at 4; OUII Br. at 7-8; ID at 32. The parties,

however, dispute the extent to which multi-crystal transducers are covered by the limitation.

Navico and OUII argue that when the transducer is formed of multiple crystals, the crystals must

act together as i f they were a single crystal, such that the crystals act simultaneously and in

phase, in contrast to phased arrays that were distinguished in the prosecution history. Navico

Br. at 4; OUII Br. at 9. Garmin disagrees, arguing that the crystals "must act as i f they were one

single substantially rectangular monolithic crystal." Garmin Br. at 1.

Nothing in the '840 patent precludes a multi-crystal transducer, or limits the claimed

transducer to a plurality of crystals acting as a single crystal. The asserted independent claims

and the specification of the '840 patent are silent as to the number of crystals in the claimed

transducer.

Moreover, the prosecution history expressly encompasses certain multi-crystal

transducers. During the original prosecution of the '550 patent, the Examiner rejected the

independent claims at issue as obvious in view of U.S. Patent No. 5,805,428 to Hamada et al.

("Hamada") and other prior art. JX-4 ('840 patent file histoiy) at 3733-34 (Dec. 20, 2011 Office

Action). The applicant responded in part as follows:

The ID found that a phased array is "a particular type of multi-element array in which the produced sonar beam can be changed by adjusting the timing, frequency, and phasing of the array." ID at 39-40 n.14 (citing CX-95C (Vincent WS) at Q/A 25).

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It wi l l be understood, of course, that the recitation of a "single linear downscan transducer element" does not require the single element to be a monolithic structure formed of a single crystal of material. It is well known in the transducer field that a plurality of such crystals can be arranged (e.g., end-to-end) and can be electrically connected to circuitry such that the plurality of crystals act together as i f they were a single crystal or element. Claims 57 and 76 [issued patent claims 1 and 23] encompass any 'single downscan transducer element' (whether monolithic or not) as distinct from a multi-element phased array-type transducer.

JX-4 at 3778 (Feb. 21, 2012 Amendment). The parties' construction dispute centers on the

meaning of the phrase "act together as i f they were a single crystal or element" from this portion

of the prosecution history.

Focusing solely on the second sentence quoted above, the ID stated that "the key point

was whether the electrical circuitry connected to the plurality of crystals makes them act like a

single crystal, not whether the electrical circuitry was internal or external or limited to a

particular number of wires." ID at 49-50. The ID's analysis, however, focuses on the internal

wiring: "Indeed, the reference to circuitry in that portion [of the prosecution history] is to

internal wiring between the crystals and not in and out of the transducer." Id. at 50. Citing only

expert testimony, the ID concluded: "A construction that ignores the internal wiring also fails

because it is undisputed that the internal wiring of a transducer can affect its operation, i.e., its

beam pattern." Id. at 51. Although the ID's final construction did not expressly refer to internal

wiring or beam patterns, its discussion strongly suggested that the ID's construction implicates

the internal wiring and the resulting beam pattern. Indeed, as discussed infra at 18-19, those

conclusions affected the ID's infringement analysis with respect to this claim tenn by requiring a

beam pattern that is similar to that produced by a single-crystal transducer. The Commission

finds that the ID's analysis is not supported by the intrinsic evidence.

In particular, the Commission finds the prosecution histoiy as a whole shows that the

applicant defined the claims to cover any multi-crystal downscan transducer except a multi-

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crystal phased array-type transducer. In the statement quoted above, the applicant clarified what

was well known in the art.9

The applicant also explained in the same response the distinction between the claimed

transducer and a multi-crystal phased array-type transducer, thus providing context to the phrase

"act together as i f they were a single crystal or element." Specifically, the applicant contrasted

Hamada's phased-array type transducer, in which "adjacent transducer elements . . . of the array

are successively given constant time delays or phase differences," from his invention, which

emits a "single-transmission fan-shaped beam" and receives sonar returns in a "single receipt."

See JX-4 at 3781-82 (Feb. 21, 2012 Amendment). In discussing the claimed transducer, the

applicant did not refer to, much less clearly disavow, the emission of sonar beams that were

different than that produced by a single-crystal transducer. The applicant disavowed only

phased-array type transducer in which the crystals act "successively" to emit a sonar beam.

Moreover, the applicant's description of his invention indicates that, when the transducer is

formed of multiple crystals, the crystals must act together similar to a single crystal such that the

crystals act simultaneously and in phase in emitting a fan-shaped sonar beam.

The Commission's construction is also consistent with the inter partes review

proceedings of the '840 patent. The applicant confirmed that his disclaimer was limited to an

9 Navico notes persons of skill in the art, including Garmin's expert, Navico's expert, and the sole inventor, testified that, consistent with the prosecution history, it was common and well understood that a single transducer element could be formed from multiple components. Navico Resp. at 4 (citing RX-1724C (Calder RWS) at Q/A 87 ("Fundamentally, larger transducer elements required to achieve narrow beamwidths are also difficult to manufacture, fragile, and expensive to procure. It is therefore common to build sonar systems by using two or more elements that are designed to operate together " ) ; CX-95C (Vincent DWS) at Q/A 63 ("[I]t was often the case that one would use multiple components wired together . . . . " ) ; Hr'g Tr. 548:11-549:2 (Maguire) (testifying that transducer element could be either monolithic or formed from multiple pieces)).

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"array-type transducer having multiple elements arranged in some type of array for use in

phased-array beam steering" and that the "single linear downscan transducer element" limitation

"does not cover a 'multi-element phased array-type transducer[]."' RX-355 ('840 IPR2013-

00355) at 194-95 (Patent Owner's Preliminary Response). The applicant also stated that he used

the term "single linear downscan transducer element" to distinguish the claimed invention from

the "multi-element array" disclosed in Hamada. Id. at 195. The Patent Trial and Appeal Board

("PTAB") declined to exclude all multi-crystal arrays and construed the limitation under a

broadest reasonable interpretation standard to mean "a downwardly directed or pointed

transducer that is substantially rectangular in shape, which may be formed from a single

monolithic element, or a plurality of elements arranged to function as a single transducer." RX-

355 at 11 (Institution Decision).

Despite proposing a construction that covers certain multi-crystal transducers, Garmin

makes a number of arguments suggesting that the "single linear downscan transducer element"

limitation is limited to a single crystal. In an apparent attempt to build support for a requirement

that the crystals in a multi-crystal transducer must act like a single crystal, Garmin argues that

the specification discloses only single-crystal transducers. Garmin Br. at 6, 9. 1 0 To the contrary,

Garmin argues in a footnote to its brief that, because multi-crystal transducers are not disclosed in the specification of the '840 patent and Navico cannot properly use the prosecution history to broaden the claims beyond the specification's disclosures, the asserted claims are invalid for lack of a written description under 35 U.S.C. § 112. Garmin Br. at 9 n.2. Garmin states, however, that it is not arguing invalidity under § 112, but that it is "providing this footnote to make clear that Garmin is not waiving it ." Id. Garmin did not raise invalidity under § 112 in its prehearing brief. Therefore, any § 112 invalidity argument has been waived. See Order No. 2 ( M y 16, 2014) at 7(c); Ajinomoto Co. v. Int'l Trade Comm'n, 597 F.3d 1267, 1277-78 (Fed. Cir. 2010).

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the specification broadly describes the claimed transducer and does not expressly limit its

composition to a single crystal:

Each ofthe transducer elements 60 may be a linear transducer element. Thus, for example, each of the transducer elements 60 may be substantially rectangular in shape and made from a piezoelectric material such as a piezoelectric ceramic material, as is well known in the art and may include appropriate shielding (not shown) as is well loiown in the art. The piezoelectric material being disposed in a rectangular arrangement provides for an approximation of a linear array having beamwidth characteristics that are a function of the length and width of the rectangular face ofthe transducer elements and the frequency of operation.

JX-1, col. 9, lines 36-46.

Garmin argues the asserted claims cannot cover multi-crystal arrays in view of expert

testimony that "the internal wiring [of a multi-crystal array] changes the beam pattern in ways

that cannot be predicted from the length and width of the rectangular face of the transducer" as

described in the specification. Garmin Br. at 7. Garmin's expert, Dr. Calder, testified that

"having beamwidth characteristics that are only a function of only [sic] the length and width of

the rectangular face of the transducer elements and the frequency of operation necessarily

excludes Garmin's shaded array transducers which do not have beamwidth characteristics that

are a function of the length and width of the rectangular face of the transducer elements and the

frequency of operation."11 RX-1724C (Calder RWS) at Q/A 171.

Not only does Garmin rely on evidence with reference to the accused products for

purposes of claim construction, Gaimin misreads the specification as limiting the factors that can

affect the beam pattern produced by the claimed transducer. The specification simply identifies

the length and width of the transducer face as two factors that produce the "fan-shaped sonar

1 1 Some of the accused products use a three-piece shaded array transducer. ID at 66. The shaded array is internally wired in a series-parallel configuration, which results in more power being applied to the center crystal. Id. at 72-73.

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beam" required by the claims. The specification does not preclude other factors affecting the

sonar beam. The testimony of both Navico's and Garmin's experts is consistent with this

reading. Hr'g Tr. 250:11-16 (Vincent) ("As I said, the length and the width are going—are some

of—they're not the only thing that are going to determine the beam that's going to be

produced."); id. 944:22-945:16 (Calder) (acknowledging that specification does not necessarily

mean the beam patterns of two monolithic crystals must be the same simply because they both

produce beam patterns that are a function of their length, width, and frequency of operation).

Garmin also cites the figures in the '840 patent to argue that the specification discloses

only single-crystal or monolithic bar transducers. As Garmin notes, the figures in the '840 patent

all appear to depict linear transducers that are monolithic bars. Garmin Br. at 6. However, "[ i] t

is improper to read limitations from a preferred embodiment described in the specification—even

i f it is the only embodiment—into the claims absent a clear indication in the intrinsic record that

the patentee intended the claims to be so limited." Liebel-Flarsheim Co. v. Medrad, Inc., 358

F.3d 898, 913 (Fed. Cir. 2004). As discussed above, the intrinsic evidence expressly confirms

that the limitation is not limited to a single crystal or a monolithic bar.

Garmin notes the figures in the '840 patent are different from those in the '499 patent,

arguing that "[u]nlike the '840 patent, the '499 patent specification describes a linear downscan

transducer that contains multiple pieces of crystal." Garmin Br. at 7. However, the specification

of the '499 patent does not describe multiple pieces or elements of a single transducer. Instead,

it describes one embodiment as including "multiple linear downscan transducers," and illustrates

that embodiment in Figure 8 as two linear downscan transducers. JX-3 ('499 patent), col. 9, lines

39-43. That disclosure is wholly consistent with the '499 patent claims, which do not require a

single linear downscan transducer element. Garmin provides no legal authority to discern a

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single-crystal requirement from the differences between the '840 and '499 patents, which

notably incorporate each other by reference. See id., col. 6, lines 51-56; JX-1, col. 8, lines 43-48.

Repeating the same arguments it made before the ALJ, Gamiin takes a number of

statements in the prosecution history out of context to argue that the applicant's disclaimer was

not limited to phased arrays. See Garmin Br. at 15-17. As the ID summarized in its analysis of

the intrinsic record: "[W]hen the prosecution history and inter-partes review [sic] are considered

in their ful l context, it cannot be shown that the patentee clearly and deliberately disavowed all

multi-element arrays, especially in light of the patentee's comments indicating that the '840

patent claim scope encompassed any transducer elements except phased arrays." ID at 41.

Further, Garmin extensively relies on extrinsic evidence to argue for a disclaimer that

extends beyond phased array-type transducers and, moreover, contradicts the intrinsic record.

First, Gaimin argues that, based on expert testimony, the internal wiring ofthe transducer can

affect the beam pattern and that certain wiring schemes can produce a different beam pattern

than that produced by a single crystal. Garmin Br. at 10-11 (citing ID at 50-52). According to

Gaimin, the "electrically connected" language used by the applicant means the "electrical

connections which result in the multiple elements performing differently from a single crystal are

outside the scope of the claims." Garmin Br. at 11. Thus, under Garmin's construction, any

multi-crystal transducer using a wiring scheme that does not produce a beam pattern that "closely

resembles" or "effectively mimics" that of a monolithic crystal is excluded from the claim scope.

See id. at 10. Garmin's position goes far beyond the phased array-type transducers that the

applicant had specifically distinguished and disclaimed during the prosecution ofthe '840 patent.

Second, Gaimin relies on the testimony of the inventor, Brian Maguire, on what he

personally considered within and outside of the claim scope. Gaimin Br. at 12-13. Mr. Maguire

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testified that he considered a linear transducer element to mean that the voltage across each of

the claimed linear transducer crystals is the same, resulting in a constant amplitude for each

linear transducer. Id. (citing RX-1723C (Maguire RWS) at Q/A 16-17). In response to a

question asking what he "would consider . . . within the scope of [his] patents," he testified that,

when he wrote the patent, he did not consider the shaded array and did not "recall fully

understanding exactly how a shaded array worked." RX-1723C at Q/A 18. Mr. Maguire's

testimony admitting unfamiliarity with a shaded array fails to support a construction that

excludes a shaded array. In any event, the Commission gives little weight to Mr. Maguire's

views on what the claims cover. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 983

(Fed. Cir. 1995) (en banc), a f f d , 517 U.S. 370 (1996) ("The subjective intent ofthe inventor

when he used a particular term is of little or no probative weight in determining the scope of a

claim (except as documented in the prosecution history).").

Third, Garmin relies on testimonial evidence of multi-crystal arrays, such as shaded

arrays and stepped arrays, that act simultaneously or in phase but do not act as i f they were a

single element because they produce a different beam pattern than a single element. Garmin Br.

at 13-14. Garmin cites the testimony of its transducer design engineer, Dr. Simonton, that a

"shaded array contains multiple elements to which different voltages are applied and which

therefore produce a sonar beam pattern that differs from what would be obtained by applying

voltage to a monolithic rectangular element ofthe same overall dimensions." Id. at 13. Garmin

also relies on Dr. Calder's testimony of a hypothetical "shaded array" in "reverse" to argue that

the Commission's proposed construction does not sufficiently exclude phased arrays because it is

"entirely possible" to design a system in which all crystals are triggered at the same time but

behave different differently than a single crystal. Id. at 13-15. These arguments are based on

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configurations that are not mentioned anywhere in the intrinsic evidence. As OUII notes,

Garmin's arguments refer to the accused products and thus "inappropriately attempt[] to

establish a construction based on characteristics of the accused device that would not lead to a

finding of infringement." OUII Resp. at 11 (citing NeoMagic Corp. v. Trident Microsystems,

Inc., 287 F.3d 1062,1074 (Fed. Cir. 2002)). In addition, evidence of hypothetical or possible

configurations, like all extrinsic evidence, cannot be used to vary or contradict the claim

language or the specification. See Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584

(Fed. Cir. 1996).

Thus, the Commission finds the "single linear downscan transducer element" may be

formed of multiple crystals so long as the plurality of crystals in the claimed transducer act

simultaneously and in phase as i f they were a single crystal. Further, the Commission notes the

asserted independent claims separately specify that the "single linear downscan transducer

element" has a "substantially rectangular shape." JX-1, claims 1, 23. Including a rectangular

requirement in the construction of the former term thus is unnecessary. Accordingly, the

Commission construes the limitation "single linear downscan transducer element" as "a single

downwardly pointed transducer that is formed from a single crystal or a plurality of crystals that

act simultaneously and in phase as i f they were a single crystal."

2. Infringement

Navico asserts that Garmin's echo products, echoMAP products, and GPSMAP products

with their respective transducers directly infringe claims 1, 5, 7, 9,11, 16-19, 23, 32, 39-41, and

70-72 ofthe '840 patent; that the echoMAP products and GPSMAP products also directly

infringe claim 63 of the '840 patent; and that Garmin's GCV10 and GSD25 sonar modules with

their respective transducers directly infringe claims 1, 5, 9, 11, 23, and 32 of the '840 patent. ID

at 54-55. Navico asserts that Garmin's importation and sale of the DownVu transducer (GT20)

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separately from a head unit contributorily infringes all but claim 63 of the '840 patent, and that

Garmin's importation and sale of the DownVii/SideVti transducer (GT30) separately from the

GCV10 sonar module contributorily infringes claims 1, 5, 9,11, 23, and 32 of the '840 patent.

Id. at 95, 99. Navico also asserts that Gaimin induces the infringement of claims 1, 5, 7, 9, 11,

16-19, 23, 32, 39-41, and 70-72 with respect to the echo products, echoMAP products, and

GPSMAP products with their respective GT20 transducers; claim 63 with respect to the

echoMAP products and GPSMAP products; and claims 1, 5, 9, 11, 23, and 32 with respect to the

GCV10 sonar module and GT30 transducer. Id. at 95-96.

The ID found that the accused products do not infringe the asserted claims of the '840

patent. The Commission determined to review the ID's infringement findings and requested

briefing on infringement under its proposed modified construction. 80 Fed, Reg. at 54592-93.

a) "single linear downscan transducer element"

Each of the accused products uses Garmin's DownVii transducer, which consists of either

a three-piece shaded array or a four-piece stepped array. See ID at 66, 71. The shaded array and

the stepped array are internally wired in a series-parallel configuration, which results in more

power being applied to the center crystal. See id. at 72-73, 114.

The ID found that, under its construction, the accused products do not have a "single

linear downscan transducer element" and thus do not directly infringe the asserted independent

claims of the '840 patent. Id. at 70, 89. The ID found that "the plurality of elements in Garmin's

transducers . . . do not operate as i f they were a single element, and the beam pattern produced by

the accused shaded and stepped arrays are different from the beam pattern generated by a single

rectangular element (a monolithic rectangular bar)." Id. at 70. The ID found that "the internal

wiring arrangement in Gaimin's shaded arrays (series-parallel configuration) and the mechanical

configuration of the stepped arrays causes the transducers not to act as a 'single linear

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rectangular element' or crystal." Id, at 73. The ID also found that, "[f]or the same reasons as

explained above with respect to direct infringement. . ., Garmin's products do not infringe under

a doctrine of equivalents." Id. at 114.

As noted above, the ID's construction of the limitation "single linear downscan

transducer element" does not expressly refer to beam patterns, but the ID applied its claim

construction so as to import a limitation requiring a beam pattern similar to that produced by a

single crystal or monolithic bar:

The correct claim construction of the claim phrase "single linear downscan transducer element" contemplates a comparison of the functionality of the accused products versus a monolithic bar because the function of a sonar transducer is its beam pattern, or the acoustic energy it emits.. . . This analysis looks at all the energy or sound generated by the transducer, including both the main lobe and the side lobes, and not just the main lobe or the -3dB portion of the main lobe.

Id. at 71. Addressing concerns that side lobes are not mentioned anywhere in the intrinsic

record, the ID stated that its claim construction "does not import side lobes into the meaning of

the claim"; rather Garmin's products "do not operate as i f they are a single element" because

"the differences in the energy produced by Gamiin's accused transducer and that produced by a

monolithic bar is evident in the sidelobes [sic]." Id. at 87-88. This explanation, however, shows

that the ID's construction effectively requires the same or similar energy—as represented by the

beam pattern—produced by a single crystal or a monolithic bar. See also id. at 70.

Navico and OUII argue that the DownVii transducer satisfies the "single linear downscan

transducer element" limitation under the Commission's construction. Navico Br. at 15; OUII Br.

at 16. They argue the DownVii transducer is a "single" transducer that is "downwardly pointed"

and "formed from . . . a plurality of elements." Navico Br. at 16; OUII Br. at 16. Navico and

OUII also argue the evidence shows that the ceramic pieces in the DownVii transducer are wired

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together and electrically connected to a transceiver such that they "act together as i f they were a

single element" and operate "in phase."12 Navico Br. at 16-18; see OUII Br. at 16-20.

Garmin does not rebut Navico's and OUII's infringement arguments under a construction

in which the crystals in a multi-crystal transducer are required merely to act simultaneously and

in phase as i f they were a single crystal. Instead it argues that the ID's factual findings fully

apply under the Commission's proposed construction—as Garmin interprets the construction—

and that infringement thus has not been established. Garmin Br. at 21. Garmin argues that "the

function of a sonar transducer is precisely to emit a sonar beam" and that the accused transducers

do not "act like" a single crystal because they produce beam patterns, including side lobes, that

are different than that produced by a monolithic bar. Id. at 22-24, 26-27. Garmin disagrees that

it is reading a beam pattern requirement into the construction of the term; "rather, beam patterns

provide evidence of whether Garmin's transducers act like a single crystal." Id. at 22. Garmin

also relies on evidence that it "deliberately designed" its products "to have different beam

patterns than a monolithic rectangular bar." Id. at 25.

The Commission is not persuaded by Garmin's arguments. Garmin essentially asks the

Commission to find noninfringement on grounds that go beyond what the construction requires.

Evidence that the accused transducers do not "act like" a single crystal in ways not required by

the asserted claims does not avoid infringement. Garmin also asks the Commission to

improperly consider intent where "intent is irrelevant" to finding direct infringement. See

Global-Tech Appliances, Inc. v. SEB SA, 131 S. Ct. 2060, 2065-66 n.2 (2011).

Navico also argues that, should Garmin's construction (which the ID adopted) apply, the accused products infringe the asserted claims literally and under the doctrine of equivalents. Navico Resp. at 10. The Commission does not reach those alternative arguments.

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The undisputed evidence shows that the ceramic pieces of the DownVii transducer act

simultaneously and in phase in producing sonar beams, similar to a single crystal. Garmin's

expert, Dr. Calder, testified that, in the accused product, the transceiver sends one electrical pulse

to the DownVii transducer, all three ceramics of the DownVii transducer vibrate at the same

time, [ ] :

Q. And there's only one electrical channel that connects that transceiver to the—to the transducer; right, sir?

A. Yes, that's correct. There's only one pair of wires that go to it.

Q. So when it's time for a DownVii ping, the transceiver sends one electrical pulse to the DownVii transducer; is that right, sir?

A. It—yes, it sends one pulse to the array, that's correct.

Q. And when that happens, all three ceramics are energized at the same time; correct?

A. They are energized at the same time at different voltages, yes.

Q. The actual units sold by Garmin have no ability to fire one of the three ceramics individually; correct?

A. That is correct, all three fire at the same time.

***

]

Hr'g Tr. 850:4-21, 853:13-17 (Calder). Garaiin's transducer design engineer, Dr. Simonton, and

Navico's expert, Dr. Vincent, similarly testified that all three components of the DownVii

transducer vibrate together in response to a single pulse to produce a sonar beam. Id. 404:7-

405:3 (Vincent), 420:11-423:15 (Simonton). [

]

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PUBLIC VERSION

] . The expert testimony also shows that the DownVii transducer

operates "in phase" and "is not a phased array." Hr'g Tr. 861:5-10 (Calder); see also id. 404:7-

405:3 (Vincent); CX-95C (Vincent DWS) at Q/A 185; Hr'g Tr. 432:24-433:9 (Simonton).

Accordingly, the Commission finds that the accused DownVii transducer (including the

shaded array and the stepped array) literally satisfies the "single linear downscan transducer

element" limitation. The Commission vacates the ID's noninfringement findings under the

doctrine of equivalents with respect to this limitation.

b) "sonar beams being repeatedly emitted," "sonar signal processor receiving signals representative of sonar returns," and "sonar signal processor . . . processing the signals to produce sonar image data"

The ID appeared to find that the accused products meet the following limitations of the

asserted independent claims of the '840 patent: "sonar beams being repeatedly emitted," "sonar

signal processor receiving signals representative of sonar returns," and "sonar signal processor

. . . processing the signals to produce sonar image data." ID at 90-92 ("The evidence shows that

the accused products are structures that perform the recited functions.").

Garmin argues its products do not directly infringe the asserted claims because they do

include the aforementioned limitations at the time of importation. Garmin Pet. at 28. Garmin

argues that, at the time of importation, its transducers are neither connected to a head unit nor

tied to a watercraft; without such connections, sonar beams are not being repeatedly emitted and

the sonar signal processor is not receiving or processing signals. Id. at 28-29.

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PUBLIC VERSION

Navico argues the undisputed evidence shows that the accused products have DownVii

functionality and software built into them and that modification is not necessary to practice these

claim limitations. Navico Pet. Resp. at 37. OUII does not address this issue.

Garmin misreads the claims as not covering merely the capability of the claimed device

to perform these functions. Contrary to Garmin's arguments, claims need not use the words

"configured to" to cover the capability of the claimed device to perform the recited functions.

See, e.g., Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367,1371-

72, 1375 (Fed. Cir. 2008) (finding that apparatus claim reciting "performing," "enabling," and

"disabling" used permissible functional language and thus covered system "possessing the

recited structure and capable of performing the recited functions"); Intel Corp. v. Int'l Trade

Comm 'n, 946 F.2d 821, 832 (Fed. Cir. 1991) ("Because the language of claim 1 refers to

'programma/We selection means' . . ., the accused device, to be infringing, need only be capable

of operating in the page mode."). The independent claims specify that the linear downscan

transducer element is "positioned within the housing to project fan-shaped sonar beams . . . , said

sonar beams being repeatedly emitted." E.g., JX-1, claim 1 (emphasis added). The presence of

the word "to" reflects a requirement that the linear transducer element be positioned so that it can

project fan-shaped sonar beams. The additional limitation of the sonar beams "being repeatedly

emitted" are tied to that capability.

This reading of the claims is supported by the specification. The specification states that

hardware or software may be used to "configure[e] the device or circuitry to perform the

corresponding functions of the sonar signal processor 32 as described herein." Id., col. 8, lines

4-13. For example, the sonar signal processor "may be configured to analyze electrical signals

communicated thereto by the transceiver 34 to provide sonar data indicative of the size, location,

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shape, etc. of objects detected by the sonar system 30," thereby receiving and processing sonar

return signals to produce sonar image data. Id., col. 8, lines 14-18.

As Navico argues, the claims here are similar to those in Microprocessor Enhancement

Corp. See Navico Pet. Resp. at 39. Because claim 1 requires merely that the accused product

have the capability to perform the recited functions and the accused products are so configured,

the Commission rejects Garmin's temporal noninfringement arguments. See Typhoon Touch

Techs., Inc. v. Dell, Inc., 659 F. 3d 1376, 1380 (Fed. Cir. 2011) (affirming infringement where

specification described invention as requiring actual adaptation, by program or configuration, for

facilitated data collection and recordation and accused device was specifically so programmed or

configured).

Accordingly, the Commission finds that the accused products satisfy the "sonar beams

being repeatedly emitted," "sonar signal processor receiving signals representative of sonar

returns," and "sonar signal processor . . . processing the signals to produce sonar image data"

limitations of the asserted independent claims of the '840 patent.

c) "substantially rectangular"

The ID found that Garmin's stepped array transducers do not literally meet the

"substantially rectangular" limitation of the asserted claims of the '840 patent because the

stepped array transducer has a cruciform shape. See ID at 93-94. The ID found that Navico's

infringement argument "reads out the word 'rectangular' out of the claims and purports to

expand the scope of the claims to cover all shapes, not just rectangular ones." Id. at 94. The ID

also found that the stepped array transducer does not meet the claim term under the doctrine of

equivalents "for the same reasons discussed . . . with respect to direct infringement." Id. at 118.

The ID stated that "[fjinding infringement under the doctrine of equivalents would vitiate the

'substantially rectangular' claim limitation." Id.

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Navico argues that the ID completely disregarded the word "substantially" in the claim

language. Navico Pet. at 56. Navico also argues that the ID did not squarely address its

arguments under the doctrine of equivalents. Id. at 57 (citing Navico Posthearing Br. at 130-31).

Garmin and OUII do not respond to these arguments in their briefs to the Commission.

The Commission finds no clear error in the ID's findings of no literal infringement by the

stepped array transducers. However, the ID erred in (1) relying on its literal infringement

analysis to find that the "substantially rectangular" limitation is not met under the doctrine of

equivalents and (2) finding equivalence would vitiate the claim limitation.

The Federal Circuit has held that a claim element is not vitiated merely because it does

not literally exist in the accused device—"such an interpretation of the 'all elements' rule would

swallow the doctrine of equivalents entirely." DePuy Spine, Inc. v. Medtronic Sofamor Danek,

Inc., 469 F.3d 1005, 1018 (Fed. Cir. 2006).1 3 Nor can a court avoid applying the doctrine of

equivalents solely on vitiation grounds. Deere & Co. v. Bush Hog LLC, 703 F.3d 1349,1356-57

(Fed. Cir. 2012) ("[T]he vitiation test cannot be satisfied by simply noting that an element is

missing from the claimed structure or process because the doctrine of equivalents, by definition,

recognizes that an element is missing that must be supplied by the equivalent substitute.").

Rather, the "proper inquiry for the court is to apply the doctrine of equivalents, asking whether

an asserted equivalent represents an 'insubstantial difference' from the claimed element, or

1 3 In DePuy Spine, the Federal Circuit held that the district court erred in concluding that no reasonable jury could find the conically-shaped element in the accused product to be an equivalent to a "spherically-shaped" limitation, where the patentee provided particularized expert testimony on the insubstantial differences between the shape of the accused product and that of the claim limitation. 469 F.3d at 1019-20; see also Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1337 (Fed. Cir. 2000) (rejecting argument that a claim limitation describing a specific shape of a claimed structure cannot be infringed under the doctrine of equivalents by a differently shaped structure).

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'whether the substitute element matches the function, way, and result ofthe claimed element.'"

Id. at 1356. This the ID did not do.

Navico argued in its posthearing brief with respect to the "substantially rectangular"

limitation that the stepped array design performs substantially the same function as the claimed

transducer in substantially the same way to produce substantially the same result. Navico

Posthearing Br. at 130. The independent asserted claims recite that the transducer be

"configured to produce a fan-shaped sonar beam having a relatively narrow beamwidth in a

direction parallel to a longitudinal length of the linear downscan transducer element and a

relatively wide beamwidth in a direction perpendicular to the longitudinal length of the

transducer element." JX-1, claims 1, 23. Dr. Simonton, the primary design engineer at Garmin

responsible for developing the DownVii transducers, testified as to the stepped array's function,

operation, and the [ ] :

Q. They all fire together; right?

A. On this one, yes.

Q. They all fire in phase, same frequency; right?

A. Yep, yep.

[

]

Hr'g Tr. 458:21-459:7; see cdso id. 463:25-464:8; CX-95C (Vincent DWS) at Q/A 285.

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PUBLIC VERSION

Gamiin has neither disputed this evidence nor specifically addressed Navico's function-

way-result arguments as to the "substantially rectangular" limitation. Garmin instead argues that

finding infringement under the doctrine of equivalents would vitiate the "substantially

rectangular" limitation and improperly expand the scope of the patent beyond what Navico

disclaimed during prosecution. See Garmin Posthearing Reply at 52. In making these

arguments, Garmin respectively refers to its arguments against literal infringement as to the

"substantially rectangular" limitation and to its non-infringement and claim construction

arguments as to the "single linear downscan transducer element" limitation. Id. (citing Garmin

Posthearing Reply at 36-40 (citing Garmin Posthearing Br. at 30-39)). These arguments do not

adequately rebut Navico's arguments under the doctrine of equivalents as to the limitation at

14

issue.

Accordingly, based on Navico's arguments and the record evidence, the Commission

finds that Garmin's stepped array transducers satisfy the "substantially rectangular" limitation of

the asserted claims of the '840 patent under the doctrine of equivalents.

The ID did not make any findings as to whether Garmin's shaded array transducers

satisfy the "substantially rectangular" limitation ofthe asserted claims of the '840 patent. In its

posthearing brief, Navico argued and presented substantial evidence that certain accused

products, including the shaded array transducer, satisfy this limitation. Navico Posthearing Br. at

104-05. Garmin and OUII did not dispute that argument before the ALJ. Accordingly, for the

reasons argued by Navico and based on the record evidence, the Commission finds that Garmin's

1 4 It is unclear to what extent, i f at all, Garmin's prosecution history estoppel argument applies to the "substantially rectangular" limitation. Garmin failed to identify any narrowing amendment or surrender of subject matter during prosecution relating to this limitation, as required to establish prosecution history estoppel. See AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374, 1382 (Fed. Cir. 2005).

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PUBLIC VERSION

shaded array transducers satisfy the "substantially rectangular" limitation of the asserted claims.

See id.

d) Other Limitations in the Asserted Independent Claims

The ID did not make any findings as to the other limitations of the asserted independent

claims of the '840 patent. The parties do not dispute infringement as to the limitations not

already addressed herein. In its posthearing brief, Navico argued and presented substantial

evidence that certain accused products satisfy those limitations of claims 1 and 23 of the '840

patent. Navico Posthearing Br. at 104-07; see also Navico Br. at 15 n.6. Garmin and OUII did

not dispute those arguments before the ALJ. Accordingly, based on the record evidence and for

the reasons argued by Navico, the Commission finds that the accused products satisfy the

limitations of the asserted independent claims not already addressed herein. See Navico

Posthearing Br. at 104-07.

e) Other Limitations in the Asserted Dependent Claims

The ID found that, in the event that the Commission disagrees with the ID's construction

of "single linear downscan transducer element," the evidence shows that the accused products

satisfy the additional limitations recited in the asserted dependent claims of the '840 patent. See

ID at 90 (citing Navico Posthearing Br. at 108-11; OUII Posthearing Br. at 75-81). No party

petitioned for review of this finding. The Commission adopts this finding.

f) Indirect Infringement

The ID found that Navico has not shown that Garmin contributorily infringes or induces

the infringement of the asserted claims of the '840 patent. ID at 104, 109. Specifically, the ID

found that (1) Garmin's importation of transducers without head units or the GCV10 sonar

module does not contributorily infringe the asserted claims because Navico has not proven direct

infringement {id. at 100); (2) Garmin's importation of head units without transducers does not

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P U B L I C VERSION

contributorily infringe the asserted claims because Navico has neither proven direct infringement

nor rebutted the evidence showing substantial noninfringing uses of the head units (id. at 96,

100-04); and (3) Navico failed to show that Garmin had the requisite intent for induced

infringement based on evidence that Garmin believed that its transducer design did not infringe

the '840 patent (id. at 97, 106-09). The ID rejected Garmin's arguments that indirect

infringement could not be found where the underlying acts of direct infringement occur post-

importation. Id. at 111-12.

Navico challenges the ID's finding of no contributory infringement by Garmin's

standalone transducers because, according to Navico, it was based solely on the ID's finding that

those products do not satisfy the "single linear downscan transducer element" limitation. See

Navico Pet. at 55 n. 10. Navico's challenge appears solely in a footnote in its petition for review

and provides no analysis or evidence to support its claim of contributory infringement.

Navico does not challenge the ID's findings of no indirect infringement that are

independent of the ID's finding of no direct infringement, including the findings relating to

Garmin's intent and belief of non-infringement as to the transducers and substantial

noninfringing uses of the head units. The Commission, therefore, adopt those findings.1 5

In its contingent petition, Garmin challenges the ID's contingent determination that Garmin indirectly infringes at the time of importation. Garmin Pet. at 31-32. Specifically, Garmin argues that direct infringement after importation cannot support a finding of indirect infringement. Id, (citing Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, Comm'n Op. at 13-14 (Dec. 21, 2011); Suprema, Inc. v. Int'l Trade Comm 'n, 742 F.3d 1350, 1358 (Fed. Cir. 2013), vacated by 2014 WL 3036241 (Fed. Cir. May 13, 2014)). Garmin argues that " i f the Commission were to determine that the Garmin accused products infringe the Asserted Patents, then the Garmin accused products sold without transducers would still not infringe at the time of importation." Garmin Pet. at 32. The ID appropriately rejected Garmin's post-importation arguments. ID at 111. Moreover, Garmin's arguments were recently rejected by the Federal (continued on next page)

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Under 35 U.S.C. § 271(c), to prevail on a claim of contributory infringement, the

complainant must prove that the respondent "sells . . . a component of a patented [invention] . . . ,

constituting a material part of the invention, knowing the same to be especially made or

especially adapted for use in an infringement of such patent, and not a staple article or

commodity of commerce suitable for substantial noninfringing use, shall be liable as a

contributory infringer." (Emphasis added.) Thus, "a violator of § 271(c) must know 'that the

combination for which his component was especially designed was both patented and

infringing."' Global-Tech Appliances, Inc. v. SEBS.A., 131 S. Ct. 2060, 2067 (2011) (quoting

Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964)). Knowledge of

the patent infringement is also required for induced infringement under § 271(b). Id, at 2067-68.

"Like induced infringement, contributory infringement requires knowledge of the patent in suit

and loiowiedge of patent infringement." Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920,

1926 (2015).

In Commil, the U.S. Supreme Court clarified the knowledge requirement for both

inducement and contributory infringement:

Qualifying or limiting [Global-Tech's] holding, as the Government and Commil seek to do, would lead to the conclusion, both in inducement and contributory infringement cases, that a person, or entity, could be liable even though he did not know the acts were infringing. In other words, even i f the defendant reads the patent's claims differently from the plaintiff, and that reading is reasonable, he would still be liable because he knew the acts might infringe. Global-Tech requires more. It requires proof the defendant knew the acts were infringing.

Id. at 1928 (emphasis added).

Circuit. See Suprema, Inc. v. Int'l Trade Comm'n, 796 F.3d 1338, 1340-41 (Fed. Cir. 2015) (en banc).

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PUBLIC VERSION

Contrary to Navico's argument, a finding of contributory infringement does not

"necessarily follow" a finding of direct infringement. See Navico Pet. at 55 & n. 10. Navico has

not made the necessary showing to prove that Garmin contributorily infringes by importing

standalone transducers. In particular, Navico points to no evidence that Garmin knew that its

transducers were infringing. Rather, as the ID found, Garmin obtained advice of counsel and,

acting on that advice, "purposely designed around what Garmin believed was the scope of the

Navico patents, and believed that its [transducer] design did not infringe the '840 patent." ID at

97; see also id, at 106-07. As the ID also found, the evidence shows that Garmin lacked the

intent to infringe the '840 patent. Id, at 97. These findings similarly show that Garmin lacked

knowledge of patent infringement and thus preclude Navico from prevailing on its claim of

contributory infringement by Garmin's standalone transducers.16

In sum, the Commission finds that (i) the accused Garmin echo products, echoMAP

products, and GPSMAP products with their respective transducers directly infringe claims 1, 5,

7, 9, 11, 16-19, 23, 32, 39-41, and 70-72 ofthe '840 patent; (ii) the accused Garmin echoMAP

products and GPSMAP products with their respective transducers also directly infringe claim 63

of the '840 patent; and (iii) the accused Garmin GCV10 and GSD25 sonar modules with their

respective transducers directly infringe claims 1, 5, 9, 11, 23, and 32 of the '840 patent. The

Commission also affirms the ID's finding that Navico has failed to prove contributory

infringement or induced infringement of the asserted claims of the '840 patent.

1 6 The ID's findings as to Garmin's belief and intent appeared in the context of indirect infringement generally (see ID at 97) and in discussing the details ofthe evidence in the context of induced infringement (see id, at 106). These findings apply equally to both contributory and induced infringement because the requisite mental state is similar. See Commil, 135 S. Ct. at 1927 ("The Global-Tech Court deemed that rules concerning contributory infringement were relevant to induced infringement, because the mental state imposed in each instance is similar.").

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3. Validity

The ID found Garmin did not show by clear and convincing evidence that the asserted

prior art anticipates or renders obvious the asserted claims of the '840 patent. ID at 123. In

particular, the ID found that the Wesmar 700SS system ("Wesmar") (RX-1919), either alone or

in combination with the Wesmar 500SS system (RX-4; RX-5; RX-7), does not disclose or

suggest the limitations "single downscan transducer element," "sonar signal processor" for

processing sonar returns from a downscan transducer, or "a housing mountable to the

watercraft." ID at 127-35. The ID further found that U.S. Patent No. 7,652,952 to Betts et al.

("Betts") (JX-358), either alone or in combination with a 1961 paper authored by Tucker and

Stubbs ("Tucker") (RX-17), a 1984 paper by Mazel ("Mazel") (RX-16), a 1982 report by

Clausner and Pope ("Clausner") (RX-15), or the Wesmar 700SS system, do not disclose or

suggest the limitations "single downscan transducer element" or "sonar signal processor" for

processing sonar returns from a downscan transducer. ID at 142-48. The ID also found evidence

of certain secondary considerations that tends to support non-obviousness of the asserted claims.

Id, at 151-62. The Commission determined to review the ID's validity findings and requested

briefing on validity under its proposed modified claim construction. 80 Fed. Reg. at 54592-93.

The Commission adopts the ID's findings with respect to the Wesmar 700SS system,

alone or in combination with the Wesmar 500SS system, or Betts, alone or in combination with

Mazel, Clausner, or the Wesmar 700SS system. The ID cited substantial evidence in support of

its findings that those references and combinations thereof do not disclose or suggest several

claim limitations in the asserted claims ofthe '840 patent

Garmin argues, however, that, under the Commission's construction of "single linear

downscan transducer element," Tucker anticipates or, in combination with Betts, renders obvious

the asserted claims of the '840 patent. Garmin Br. at 30, 36. Specifically, Garmin argues that

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Tucker discloses a downscan transducer with multiple elements that act simultaneously and in

phase and that the ID's obviousness analysis as to the combination of Betts and Tucker no longer

applies under the Commission's construction. Id. at 31-33, 37.

a) Anticipation

Navico and OUII contend that Garmin argues for the first time that Tucker anticipates an

asserted claim and that the argument is waived. Navico Resp. at 11-12; OUII Resp. at 16-17.

They argue, in any event, Garmin has not shown by clear and convincing evidence that Tucker

anticipates the asserted independent claims of the '840 patent. Id.

The Commission does not find that Garmin waived its anticipation argument based on

Tucker. The Commission proposed a modified construction and expressly asked the parties to

brief the issue of validity under that construction. 80 Fed, Reg. at 54593. This was the first

opportunity the parties had to do so.

Turning to the merits, Garmin identifies the disclosures in Tucker corresponding to each

limitation of the asserted independent claims. Garmin Br. at 31-35. Navico contests Tucker's

disclosures only as to two limitations recited in claims 1 and 23: "single linear downscan

transducer element" and "sonar signal processor." Navico Resp. at 12, 16 n.12. OUII addresses

only the first of these limitations. OUII Resp. at 17-18.

(1) "single linear downscan transducer element"

Garmin argues Tucker discloses a transducer with a rotation range of+25 and -115

degrees such that it can be positioned to point at -90 degrees or directly downwards. Garmin Br.

at 31. Garmin argues that, similar to the specification of the '840 patent, Tucker expressly

teaches the benefit of turning the transducer "vertically downwards" to obtain a high resolution

image. Id. Garmin notes that the transducer uses a "suitable series-parallel arrangement" to

provide different sensitivities to different sections of the overall array. Id. at 33. Garmin argues

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Tucker discloses a "1-1-1" aiTangement in which all three rows of the transducer are given equal

sensitivity such that they act together and operate "the same as i f the sections were simply wired

together in parallel and triggered through a single point of wires." Id.

Navico argues that Tucker does not anticipate the asserted claims because Tucker

(1) concerns only sidescan transducers, (2) makes clear that the maximum depression angle for

the transducer is 30 degrees down, (3) discloses only sidescan images, and (4) contrary to the

multibeam system distinguished by the '840 patent, is a complex and highly adjustable system

with twenty-seven wire pairs controlling different sections of the transducer. Navico Resp. at 12.

OUII also makes the first two arguments. OUII Resp. at 17-18.

Tucker describes a transducer for applications where "it was required that the vertical and

horizontal beam patterns should be adjustable." RX-17 at 2. To achieve this adjustability, the

transducer in Tucker is made up of three rows of nine sections, with separate wires for each

section. Id. at 1. Tucker discloses various "sensitivity arrangements" in which "a suitable series-

parallel arrangement of the sections" is used to obtain certain beam patterns. Id. at 2-3. One of

the sensitivity arrangements is referred to as a "1-1-1" arrangement, in which all three rows of

the transducer have the same sensitivity. Id.

The transducer can be rotated "between +25 and -115° (zero being taken as horizontal)."

Id. at 2. Tucker also describes benefits of a transducer turned downwards:

When turned vertically downwards it forms a powerful tool for studying the sound-scattering layers in the sea, since owing to its high resolution, it gives a great deal more information than a wide-beam sounder.... In some circumstances, the high resolution obtained when used as a vertical sounder can be useful for studying the topography of the sea bed, but the range is too short for most deep-sea work.

Id. at 8.

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Contrary to this "vertically downwards" disclosure, Navico and OUII argue that Tucker

teaches to rotate the transducer at angles much closer to the horizon. Navico Resp. at 13; OUII

Resp. at 17-18. They point to Figure 4 showing the "vertical beam pattern usually adopted."

^^^^m^m^^^^K0^M§^^m 3 1 * 1 i f ddlwd tm ft i f I fm f4*j ^^^mwWi^^^^^^^^^^^^S^ ^S^^BSmMs^^^^s^m^mM^S^W^^m I t ff l i s i # M W-1 1111 11 11 f 1 1 % Vl t^^^l^ii^^^^^l^^^^^P^^^^^-^^^S'

li 1 'l \ \ *' /' / /

I ' l l : ' . . . „ ,

Uf. 4, Disgiafttrruiii nir.>npnn5/il of vvilkil beam rultcin.

RX-17 at 2 (annotated). Garmin's and Navico's experts agreed that Figure 4 represents a

transducer orientation of 15-20 degrees from horizontal. CX-97C (Vincent RWS) at Q/A 113;

Hr'g Tr. 662:11-663:10 (Tyce).

The evidence shows that this figure and the accompanying text do not foreclose the

downwards orientation disclosed by Tucker. Navico's expert, Dr. Vincent, testified the vertical

beam pattern description "doesn't mean that the main lobe is necessarily pointed in any

direction." Hr'g Tr. 755:10-15 (Vincent). Dr. Vincent also acknowledged "[t]here's no

indication in Tucker that the vertical beam pattern wi l l change i f you rotate the transducer

assembly" either "upwards" or "straight down." Id. 757:17-758:5.

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PUBLIC VERSION

Navico and OUII also rely on Dr. Vincent's testimony that Tucker teaches "you never

rotate [the transducer] below 30 degrees." Navico Resp. at 13-14 (citing Hr'g Tr. 762:19-765:12

(Vincent)); OUII Resp. at 17-18. Tucker provides, in relevant part:

To obtain the most efficient use of the chart width, the angle of depression of the beam below the horizontal has been found to be rather critical, and usually this is set at a value given by 1 lA° per ten fathoms of water depth. This puts the centre of the main beam on the sea floor at about the maximum range of the instrument.

RX-17 at 3. Based on these specifications, Dr. Vincent calculated a maximum depression angle

of 30 degrees from horizontal. CX-97C at Q/A 115.

When asked about this maximum depression angle and Tucker's teachings of a rotation

up to -115 degrees, Dr. Vincent explained that the transducer was a "roll stabilized system, so

[the authors] were always wanting to keep the beam at a constant depression angle relative to the

sea surface as the ship rolled through various degrees of roll." Hr'g Tr. 766:13-21 (Vincent).

Dr. Vincent's testimony is consistent with Tucker in that Tucker twice describes the rotation

range together with roll stabilization. See RX-17 at 1, 2.

But Tucker also expressly teaches a vertical downwards orientation for another puipose:

to obtain a "high resolution" image for the specific applications of "studying the sound-scattering

layers in the sea" and "the topography ofthe sea bed." Id, at 8. Significantly, these disclosures

are similar to the stated benefits of a downscan transducer described by the '840 patent. See JX-

1, col. 2, lines 57-62("[Cylindrical transducers provide poor quality images for sonar data

relating to the structure on the bottom or in the water column directly below the vessel. . .

.Accordingly, it may be desirable to develop a sonar system that is capable of providing an

improved downscan imaging sonar.").

Navico also relies on testimony by Garmin's expert, Dr. Tyce, explaining that Tucker

uses "three sidescan transducers," to argue that Tucker does not disclose a "single" downscan

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transducer. Navico Resp. at 13. Yet Navico fails to note Dr. Vincent disagreed with that

characterization, testifying that Tucker discloses a transducer with multiple sections. CX-97C at

Q/A 117. The Commission does not credit Dr. Tyce's testimony because Dr. Vincent's

testimony in this regard is better supported by Tucker's express disclosures. See RX-17 at 2.

In response to Navico's argument that Tucker discloses only sidescan images (Navico

Resp. at 14), Garmin argues that, "where a reference teaches a specific approach, there is no need

for that approach actually to have been performed." Garmin Resp. at 13-14 (citing Kennametal,

Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1383 (Fed. Cir. 2013)). The Commission

agrees with Garmin. As long as the reference discloses all of the claim limitations and enables

the "subject matter that falls within the scope of the claims at issue," the reference anticipates—

no "actual creation or reduction to practice" is required. Schering Corp. v. Geneva Pharms.,

Inc., 339 F.3d 1373, 1380-81 (Fed. Cir. 2003).

Finally, the complexity and adjustability disclosed in the Tucker system does not relate to

any feature recited in the asserted claims and is therefore irrelevant to the question of

anticipation. See SSIHEquip. S.A. v. Int'l Trade Comm'n, 718 F.2d 365, 378 (Fed. Cir. 1983)

("That difference [between the prior art disclosures and the asserted patent], however, does not

appear in claim 10, and we cannot alter what the patentee has chosen to claim as his invention.").

The "single linear downscan transducer element" limitation merely requires that the elements in

a multi-element transducer point downwardly and act simultaneously and in phase. Navico does

not challenge Garmin's assertions that Tucker's 1-1-1 aiTangement satisfies this requirement.

Accordingly, the Commission finds that Tucker discloses a "single linear downscan

transducer element" as recited in independent claims 1 and 23 of the '840 patent.

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(2) "sonar signal processor"

Garmin argues that Tucker discloses the limitation "sonar signal processor receiving

signals representative of sonar returns resulting from each of the fan-shaped sonar beams and

processing the signals to produce sonar image data for each fan-shaped region and to create an

image of the underwater environment as a composite of images of the fan-shaped regions

arranged in a progressive order corresponding to the travel of the watercraft" recited in

independent claims 1 and 23 of the '840 patent. Garmin Br. at 35. Garmin argues that Tucker

describes a "receiver" for "receiving the bounce-back sonar echo" and a "recorder" for

"processing the data received and displaying the information on a chart or a cathode-ray tube."

Id, Navico does not address these disclosures except to argue that Tucker "does not disclose a

'sonar signal processor' configured to process return signals from a 'downscan' transducer 'to

produce sonar image data.'" Navico Resp. at 16 n.12. OUII does not address this issue at all.

Garmin's description of the receiver and recorder is not clearly found in Tucker.

Although 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. Moreover, Garmin does not identify the specific disclosures in

Tucker or provide any expert testimony to support its position. Garmin thus has failed to show

that Tucker discloses the "sonar signal processor" limitation.

Accordingly, the Commission finds Gannin has not shown by clear and convincing

evidence that Tucker anticipates claim 1 and 23 of the '840 patent,

b) Obviousness

Garmin argues that the asserted claims of the '840 patent are obvious in view of the

combination of Betts and Tucker. Garmin Br. at 36.

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Navico argues that a person of ordinary skill in the art would not have been motivated to

combine Betts with Tucker and that the two references rather teach away from the combination.

Navico Resp. at 18-19. Navico contends the combination of Betts and Tucker changes the

principles under which those references were designed to operate. See id.

As an initial matter, the Commission rejects Navico's arguments. Betts discloses a sonar

system using two side scan linear elements to scan the underwater environment to the sides of a

watercraft and a downward scan element having a cylindrical shape to scan below the watercraft.

JX-358, col. 5, lines 59-62, col. 7, lines 12-26; see also ID at 142-43. These disclosures do not

amount to teaching away from using a linear transducer for downwards imaging. Although Betts

discloses a transducer with a cylindrical shape for scanning below a boat, Tucker provides a

motivation to modify Betts to incorporate a linear downscan transducer instead: to obtain a high

resolution image for studying the layers in the sea and the topography of the sea bed. RX-17 at

8. This modification does not change the principles of operation of Betts as the sidescan

transducers would still operate to image the sides of the watercraft. Also, configuring the

transducer elements of Tucker as the claimed "single linear downscan transducer element" (such

as in the 1-1-1 arrangement) does not render it inoperable for its intended puipose but rather

makes use of the adjustability of the Tucker system.17 Further, Navico's argument that Tucker's

discussion of distortion teaches away from orienting the transducer downward is found nowhere

in Tucker. Tucker states only that distortion results from the slant range to a target being greater

than the horizontal range, not from turning the transducer straight down. Id. at 3.

In addition, Navico's contention is based on the premise that the limitation "single linear downscan transducer element" requires a "single-channel" design, which the Commission rejects as required by the limitation. See supra at 8.

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However, the Commission does not find that the asserted claims are obvious. Garmin

argues that the sole difference between the claimed subject matter and Betts is the downwards

orientation of a linear transducer. Garmin Br. at 36. To the contrary, the ID also found that

Betts does not disclose a "sonar signal processor" as required by claims 1 and 23. ID at 142.

Garmin neither challenges that finding, nor presents any evidence that Betts, alone or in

combination with Tucker (or even the knowledge of one of ordinary skill in the art), teaches or

suggests the claimed sonar signal processor beyond what it argued in the context of anticipation.

Accordingly, the Commission finds Garmin has not shown by clear and convincing

evidence that the asserted claims of the '840 patent are obvious.18 The Commission adopts the

ID's findings regarding non-obviousness of the asserted dependent claims of the '840 patent that

are not inconsistent with the Commission's findings as to Tucker's teachings. See id. at 148-51.

B. U.S. Patent No. 8,605,550

The '550 patent is titled "Downscan Imaging Sonar," and issued on December 10, 2013.

JX-2 ('550 patent). The '550 patent application is a continuation of the application for the '840

patent. Id, The claims of the '550 patent are directed to the combination of a linear transducer

element with linear sidescan elements. Id., claims 1-57.

Navico asserts claims 1, 7, 12, 13, 32, 44, and 57 ofthe '550 patent. ID at 174. The

asserted independent claims of the '550 patent recite:

The Commission also considered Navico's evidence of secondary considerations of non-obviousness. See supra at 49-52.

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1. A sonar transducer assembly, comprising:

a plurality of transducer elements, each one of the plurality of transducer elements having a substantially rectangular shape configured to produce a sonar beam having a beamwidth in a direction parallel to a longitudinal length of the transducer element that is significantly less than a beamwidth of the sonar beam in a direction perpendicular to the longitudinal length of the transducer element,

wherein the plurality of transducer elements are positioned such that the longitudinal lengths of the plurality of transducer elements are substantially parallel to each other, and

wherein the plurality of transducer elements include at least:

a first linear transducer element positioned within a housing and configured to project sonar pulses from a first side of the housing in a direction substantially perpendicular to a centerline of the housing,

a second linear transducer element positioned within the housing and spaced laterally from the first linear transducer element, wherein the second linear transducer element lies substantially in a plane with the first linear transducer element and is configured to project sonar pulses from a second side of the housing that is generally opposite of the first side, and is also in a direction substantially perpendicular to the centerline of the housing, and

a third linear transducer element positioned within the housing and configured to project sonar pulses in a direction substantially perpendicular to the plane defined by the first and second linear transducer elements.

32. A sonar system comprising:

a sonar transducer assembly, including:

a plurality of transducer elements, each one of the plurality of transducer elements having a substantially rectangular shape configured to produce a sonar beam having a beamwidth in a direction parallel to a longitudinal length of the transducer element that is significantly less than a beamwidth of the sonar beam in a direction perpendicular to the longitudinal length of the transducer element,

wherein the plurality of transducer elements are positioned such that the longitudinal lengths of the plurality of transducer elements are substantially parallel to each other, and

wherein the plurality of transducer elements include at least:

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a first linear transducer element positioned within a housing and configured to project sonar pulses from a first side of the housing in a direction substantially perpendicular to a centerline of the housing,

a second linear transducer element positioned within the housing and spaced laterally from the first linear transducer element,

wherein the second linear transducer element lies substantially in a plane with the first linear transducer element and is configured to project sonar pulses from a second side of the housing that is generally opposite of the first side, and is also in a direction substantially perpendicular to the centerline of the housing, and

a third linear transducer element positioned within the housing and configured to project sonar pulses in a direction substantially perpendicular to the plane defined by the first and second linear transducer elements; and

a sonar module configured to enable operable communication with the transducer assembly, the sonar module including:

a sonar signal processor to process sonar return signals received via the transducer assembly, and

a transceiver configured to provide communication between the transducer assembly and the sonar signal processor.

57. A sonar transducer assembly for imaging an underwater environment beneath a watercraft traveling on a surface of a body of water, the sonar transducer assembly comprising:

a housing mountable to the watercraft; a linear downscan transducer element positioned within the housing, the linear downscan transducer element having a substantially rectangular shape configured to produce a fan-shaped sonar beam having a relatively narrow beamwidth in a direction parallel to a longitudinal length of the linear downscan transducer element and a relatively wide beamwidth in a direction perpendicular to the longitudinal length of the transducer element, the linear downscan transducer element being positioned with the longitudinal length thereof extending in a fore-to-aft direction of the housing,

wherein the linear downscan transducer element is positioned within the housing to project fan-shaped sonar beams in a direction substantially perpendicular to a plane corresponding to the surface of the body of water, said sonar beams being repeatedly emitted so as to sequentially insonify different fan-shaped regions ofthe underwater environment as the watercraft travels;

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a first linear sidescan transducer element and a second linear sidescan transducer element positioned within the housing, each of the first and second linear sidescan transducer elements having a substantially rectangular shape, extending in the fore-to-aft direction of the housing, and each configured to produce a fan-shaped sonar beam having a relatively narrow beamwidth in a direction parallel to a longitudinal length of the linear downscan transducer element and a relatively wide beamwidth in a direction perpendicular to the longitudinal length of the transducer element, and being oriented in the housing so as to insonify respective fan-shaped regions differing from the fan-shaped regions insonified by the linear downscan transducer element.

JX-2, claims 1, 32, 57 (emphasis added to disputed terms).

1. Claim Construction

A l l ofthe asserted claims of the '550 patent require either a "linear transducer element"

or a "linear downscan transducer element." Referring to his reasons discussed in the context of

"single linear downscan transducer element" of the '840 patent, the ID construed the term "linear

transducer element" recited in independent claims 1 and 32 of the '550 patent to mean "a single

rectangular element, or a plurality of connected rectangular elements operating as a single

substantially rectangular element" and "linear downscan transducer element" recited in

independent claim 57 of the '550 patent to mean "a single rectangular element, or a plurality of

connected rectangular elements operating as a single substantially rectangular element, pointed

downwardly." ID at 171.

Navico and OUII challenged the constructions of these terms in the '550 patent, relying

on the same grounds as those asserted for the "single linear downscan transducer element" term

of the '840 patent. Navico Pet. at 23; see OUII Pet. at 1 n . l . The Commission detemiined to

review this issue and requested briefing on any differences in the constructions of the variant

terms. 80 Fed. Reg. at 54593.

The parties agree the same construction should apply to the variants of the limitation

"single linear downscan transducer element" in the asserted patents, but with one modification:

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because the claim language of the '550 patent does not require a "single" transducer, the

construction of the "linear transducer element" and "linear downscan transducer element"

limitations should omit the first occuiTence of the word "single." Navico Br. at 5; Garmin Br. at

4; Garmin Resp. at 10-11; see OUII Br. at 7 n.3.

The Commission notes the '840 and '550 patents share the same parent application,

suggesting similar constructions for similar terms. SeeAbtox, Inc. v. Exitron Corp., 131 F.3d

1009, 1010 (Fed. Cir. 1997) ("Although these claims have since issued in separate patents, it

would be improper to construe this term differently in one patent than another, given their

common ancestry."). Similar to the independent claims of the '840 patent, independent claim 57

of the '550 patent recites a "linear downscan transducer element." JX-2, claim 57. By contrast,

independent claims 1 and 32 of the '550 patent recite a "linear transducer element" without

reference to "downscan" or a downwards orientation. Id., claims 1, 32.

Accordingly, for similar reasons discussed in the context of "single linear downscan

transducer element" of the '840 patent (see supra at 8-17), the Commission construes the "linear

transducer element" limitation as "a transducer that is formed from a single crystal or a plurality

of crystals that act simultaneously and in phase as i f they were a single crystal" and the "linear

downscan transducer element" limitation as "a downwardly pointed transducer that is formed

from a single crystal or a plurality of elements that act simultaneously and in phase as i f they

were a single crystal."

2. Infringement

Navico asserts that Garmin's GT30 transducer (and thus the GCV10 sonar module, which

comes with the GT30 transducer) directly infringes claims 1, 7,12, 13, and 57 of the '550 patent,

that Garmin's GCV10 sonar system (including both the sonar module and the GT30 transducer)

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directly infringes claims 32 and 44 ofthe '550 patent, and that Garmin's GT30 transducer

indirectly infringes claims 32 and 44 of the '550 patent.19 Navico Pet. at 55.

The ID found that the accused products do not directly or indirectly infringe the asserted

claims of the '550 patent for the same reasons discussed in the context of the '840 patent. ID at

177,179. The ID also found that Garmin's modified GCV10 sonar module and GT30

DownVti/SideVii transducer do not infringe the asserted claims of the '550 patent because the

sidescan transducers are not "configured to project sonar pulses." Id. at 178. The ID did not

make any findings as to the remaining limitations ofthe asserted claims of the '550 patent.

The parties' arguments with respect to direct infringement of the '550 patent were largely

the same as those made with respect to direct infringement of the ' 840 patent. Navico also

argued that, i f the Commission finds direct infringement of the asserted claims of either patent,

Garmin's GT30 DownVii/SideVu transducer indirectly infringes claims 32 and 44 of the '550

patent. Navico Pet. at 55 & n. 10. Neither Garmin nor OUII responded to this argument. Navico

did not challenge the ID's infringement findings with respect to Garmin's modified. GCV10

sonar module and GT30 transducer.

The Commission determined to review the ID's infringement findings and requested

briefing on infringement under its proposed modified construction of "single linear downscan

transducer element." 80 Fed. Reg. at 54592-93.

Navico also asserts that Garmin's new 2015 transducers, namely the GT40, GT41, GT50, and GT51 transducers, directly infringe claims 1, 7, 12, 13, and 57 of the '550 patent and indirectly infringe claims 32 and 44 of the '550 patent. Navico Pet. at 55 & n.10. Because the ID made no finding as to the importation of Garmin's GT40, GT41, GT50, and GT51 transducers (ID at 11-12) and the record does not contain any evidence of importation as to those transducers (see id. at 7), the Commission does not reach Navico's infringement arguments as to those transducers.

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For the same reasons discussed in the context of the '840 patent (see supra at 18-22), the

Commission finds that the accused products satisfy the "linear transducer element" recited in

independent claims 1 and 32 of the '550 patent and the "linear downscan transducer element"

limitation recited in independent claim 57 of the '550 patent.

The parties do not dispute infringement as to the remaining limitations of the asserted

claims of the '550 patent. Navico argued and presented evidence in its posthearing brief that

Gaimin's GT30 transducer and GCVIO sonar module satisfy those limitations. Navico's

Posthearing Brief at 138-45. Garmin did not rebut those arguments. Based on the record

evidence and for the reasons argued by Navico, the Commission finds that Garmin's GT30

transducer and GCVIO sonar module satisfy the limitations of the asserted independent claims.

See id.

The Commission therefore finds Navico has proven that Garmin's GT30 transducer,

which comes with the GCVIO sonar module, directly infringes claims 1, 7, 12, 13, and 57 of the

'550 patent and that the GT30 transducer, in conjunction with the GCV10 sonar module, directly

infringes claims 32 and 44. The Commission adopts the ID's finding of noninfringement by

Garmin's modified GCV10 sonar module with the GT30 transducer.

With respect to Navico's indirect infringement claim, for at least the same reasons

discussed supra at 29-31, the Commission finds that Garmin's standalone GT30 transducers do

not contributorily infringe claims 32 and 44 of the '550 patent.

3. Validity

The ID found that, for reasons similar to those discussed with respect to validity of the

'840 patent, Garmin failed to show by clear and convincing evidence that Wesmar and Betts

render obvious the asserted claims of the '550 patent. ID at 182-83. The Commission

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determined to review the ID's validity findings and requested briefing on validity under its

proposed modified construction. 80 Fed. Reg. at 54592-93.

For the reasons stated supra at 32, the Commission adopts the ID's findings with respect

to the Wesmar 700SS system, alone or in combination with the Wesmar 500SS system, or Betts,

alone or in combination with Mazel, Clausner, or the Wesmar 700SS system, as they pertain to

the asserted claims of the '550 patent.

Garmin argues that the asserted claims of the '550 patent are rendered obvious by Betts

and Tucker. Garmin Br. at 30, 36. The parties' arguments as to obviousness of the claims of the

'550 patent are largely similar to those with respect to the '840 patent. Navico points out that

Garmin did not challenge the validity of the asserted dependent claims of the '550 patent in its

petition for review. Navico Reply at 17.

Independent claim 1 of the '550 patent recites a "first," "second," and "third linear

transducer element." JX-2, claim 1. Independent claim 57 recites a "linear downscan transducer

element," a "first linear sidescan transducer element," and a "second linear sidescan transducer

element." Id., claim 57. Significantly, neither claim 1 nor claim 57 recite a "sonar signal

processor." As discussed above supra at 34-37, Tucker, alone or in combination with Betts,

discloses a linear transducer element that is turned "vertically downwards" and is formed of

multiple elements that act simultaneously and in phase. Tucker also provides a motivation to

modify Betts to use or add a linear downscan transducer for the pmpose of obtaining a high

resolution image for studying the layers in the sea and the topography of the sea bed. Garmin

argued and presented evidence in its posthearing brief that Betts discloses the remaining

limitation of claims 1 and 57. Garmin Posthearing Br. at 200-02, 207-10. Navico did not rebut

those arguments. Based on the record evidence, and for the reasons argued by Garmin (see id.)

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and stated here, the Commission finds that Tucker, in combination with Betts, discloses each of

the limitations ofthe independent claims 1 and 57 of the '550 patent.

Because the ID's validity findings as to claims 7, 12, and 13, which depend from claim 1,

were based in part on the finding that the prior art did not disclose the claimed transducer, the

Commission conducts further analysis. Garmin argued and presented evidence in its posthearing

brief that Betts discloses each limitation of claims 7, 12, and 13. Id. at 203-04. Navico argued

that Betts does not disclose or suggest a configuration in which the "respective sonar beams

produced by each of the first, second, and third transducer elements provide substantially

continuous sonar coverage from one side of a vessel on which the housing is mounted to an

opposite side of the vessel" as recited by claim 13. Navico Posthearing Br. at 317-18. Navico

argued "Betts teaches away from this configuration because Betts shows that the area under the

boat should be insonified by a circular transducer element and not a linear transducer element."

Id. at 318. Navico did not rebut Garmin's arguments as to any other limitation required by claim

7 or 12. Betts discloses continuous sonar coverage from one side of a watercraft to the other.

JX-358, Fig. 1; RX-1 (Tyce DWS) at Q/A 414. Betts's disclosure of using a circular transducer

for scanning the area under a boat does not amount to teaching away from using a linear

transducer instead. Based on the record evidence, and for the reasons argued by Garmin (see

Garmin Posthearing Br. at 203-04) and stated here, the Commission finds that Tucker, in

combination with Betts, discloses each of the limitations of claims 7, 12, and 13 of the '550

patent.

Independent claim 32 of the '550 patent recites a "sonar signal processor" in addition to a

"linear transducer element." JX-2, claim 32. Claim 44 depends from claim 32. Id., claim 44.

For the reasons discussed in the context of the validity of the '840 patent (supra at 38-40), the

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Commission finds Garmin has not shown by clear and convincing evidence that claims 32 and

44 of the '550 patent are invalid.

Navico presented evidence of secondary considerations of non-obviousness. ID at 183;

Navico Posthearing Br. at 234-87. The ID made various findings regarding secondary

considerations (ID at 151-62, 183-84), and no party challenged those findings. Except where

noted, the Commission adopts the ID's findings.

Commercial Success. Navico and OUII provided evidence of commercial success. Id,

at 153-54. Since the introduction of Navico's downscan technology in 2009, four major market

participants, including Navico, Johnson Outdoors, Garmin, and Raymarine, have increased their

sales of products that include downscan technology and practice the asserted patents. Id. at 153-

55. Although Garmin argues that Navico cannot establish a nexus between the evidence of

commercial success and the patented invention, the Federal Circuit has held that " i f the marketed

product embodies the claimed features, and is coextensive with them, then a nexus is presumed

and the burden shifts to the party asserting obviousness to present evidence to rebut the

presumed nexus." See Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d

1120, 1130 (Fed. Cir. 2000); JTEaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571

(Fed. Cir. 1997). Here, the evidence shows that at least Navico's domestic industry products

embody the claims of the asserted patents. Navico also presented unrebutted evidence that its

competitor's products also practice the claims of the asserted patent. CX-97C (Vincent RWS) at

Q/A 254-55, 262-73, 277-78, 283-86, 291. Garmin argues that a myriad of other factors, such as

brand reputation, marketing efforts, and other features not claimed by the asserted patents (such

as GPS, touch screen displays, way points, maps, and multimedia capabilities), cause consumers

to purchase certain products (Garmin Posthearing Br. at 157-59), but does not "make a

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P U B L I C VERSION

convincing case that those market forces indeed were the likely cause of the success" of Navico's

downscan technology. See Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294, 1311 (Fed. Cir.

2010) (emphasis added). Thus, there is some evidence of commercial success to support a

finding of non-obviousness.

Praise by Others. Navico argued that Garmin, [ ]

internally and externally expressed immense praise for the technology claimed in the asserted

patents and the need to adopt that technology. ID at 156. Garmin argued that Navico's evidence

of praise should be considered in context of certain critical reviews of the products. Id. For

example, consumers criticize downscan for poorly displaying fish—a main reason a consumer

buys a fish finder. Id. Additionally, the testimony of Alan Proctor, Navico's research and

development technology manager, confirms that users wanted both traditional sonar technology

and downscan sonar technology because downscan sonar did not easily display actual fish. Id. at

156, 232. In view of these criticisms of downscan products, the evidence of praise by others

does not support a finding of non-obviousness.

Copying. Navico argued that several of its competitors quickly adopted downscan

technology after it was introduced by Navico and that Gamiin said it needed downscan

technology to compete in the freshwater fishfinder market. ID at 156-57. Garmin argued that it

did not copy the asserted patents, but instead designed around them by using a shaded array and

a stepped array. Id. at 157. OUII argued that the evidence of copying is inconclusive. Id. The

Commission finds the evidence does not show that Garmin or other competitors copied Navico's

design and thus does not support a finding of non-obviousness.

Licensing. Navico argued that it entered into licenses for the asserted patents with two

major players in the market, [ ] and Raymarine. ID at 158. Garmin argued, and

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PUBLIC VERSION

the evidence shows, that both licenses were the result of settlement agreements for patent

litigation. Jc/.; Hr'g Tr. (Chemi) 124:4-18, 132:7-19, 135:13-136:9. Thus, the Commission

accords little weight to the evidence concerning licensing. See In re GPAC Inc., 57 F.3d 1573,

1580 (Fed. Cir. 1995) ("Licenses taken under the patent in suit may constitute evidence of

nonobviousness; however, only little weight can be attributed to such evidence i f the patentee

does not demonstrate a nexus between the merits of the invention and the licenses of record."

(internal quotations and citations omitted)); EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,

907-08 (Fed. Cir. 1985) ("[Licensing programs] sometimes succeed because they are mutually

beneficial to the licensed group or because of business judgments that it is cheaper to take

licenses than to defend infringement suits, or for other reasons unrelated to the unobviousness of

the licensed subject matter. Such a 'secondary consideration' must be carefully appraised as to

its evidentiary value . . . . " ) .

Teaching Away. Mazel teaches that sonar data from underneath a sidescan transducer

would be "severely compressed" and thus not useful. ID at 147; RX-16 (Mazel) at 3-4. Mazel,

however, does not discuss imaging the bottom of a lake or sea. ID at 147. Thus, there is some

evidence of teaching away to support a finding of non-obviousness.

Unexpected Results. Navico and OUII provided evidence that downscan technology

produced unexpected results. ID at 160-61. Navico argued that the prevailing thought at the

time of the invention was that orienting a linear transducer at a greater depression angle would

provide low resolution images and that many were surprised by the quality of the downscan

2 0 The ID also found that Clausner teaches away from the asserted claims similar to Mazel (ID at 148,160), but neither Navico nor the ID identified the disclosure in Clausner that supports teaching away. The Commission, thus, does not find that Clausner provides evidence of teaching away.

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PUBLIC VERSION

images of the invention. Id, Gamiin argued to the contrary. Id, at 160. As discussed supra at

34-36, Tucker taught that turning a transducer vertically downwards would produce a high

resolution image. RX-17 at 8. Thus, the evidence is mixed, but some evidence indicates that

downscan technology would produce unexpected results, thus supporting a finding of non-

obviousness.

Long-Felt Need. Navico and OUII argue that there has been a long-felt need for clearer

images and better resolution of the environment underneath a boat and that downscan technology

satisfied this need. ID at 162-63. The evidence shows that there was a long-felt need, supporting

a finding of non-obviousness.

Although Navico presented evidence of secondary considerations, the record also

contains evidence that weighs against some of those considerations. The Commission finds that

there is some evidence of secondary considerations of commercial success, licensing, teaching

away, unexpected results, and long-felt need, but that these secondary considerations do not

overcome the strong prima facie showing of obviousness of claims 1,7, 12, 13, and 57 of the

'550 patent.

Accordingly, the Commission finds that Tucker, in combination with Betts, renders

obvious claims 1, 7, 12, 13, and 57 of the '550 patent.

4. Domestic Industry

Sections 337(a)(2) and (3) set forth the requirements for determining the existence of a

domestic industry in investigations instituted under section 337(a)(l)(B)-(E):

(2) Subparagraphs (B), (C), (D), and (E) of paragraph (1) apply only i f an industry in the United States, relating to the articles protected by the patent, copyright, trademark, mask work, or design concerned, exists or is in the process of being established.

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PUBLIC VERSION

(3) For puiposes of paragraph (2), an industry in the United States shall be considered to exist i f there is in the United States, with respect to the articles protected by the patent, copyright, trademark, mask work, or design concerned—

(A) significant investment in plant and equipment;

(B) significant employment of labor or capital; or

(C) substantial investment in its exploitation, including engineering, research and development, or licensing.

19 U.S.C. §§ 1337(a)(2), (3). In general, a complainant must establish that a domestic industry

relating to the articles protected by the patent exists or is in the process of being established in

the United States at the time of the filing of the complaint. Motiva, LLC v. Int'l Trade Comm 'n,

716 F.3d 596, 601 n.6 (Fed. Cir. 2013).

The domestic industry requirement of section 337 consists of an "economic prong" and a

"technicalprong." See, e.g., Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1375 (Fed. Cir.

2003). To satisfy the technical prong, the complainant must establish that it practices at least one

claim of the asserted patent. See Certain Microsphere Adhesives, Process for Making Same, and

Products Containing Same, Including Self Stick Repositionable Notes, Inv. No. 337-TA-366,

USITC Pub. No. 2949, Comm'n Op. at 13-16 (Jan. 16, 1996). To meet the economic prong, the

complainant must establish at least one ofthe criteria listed in subparagraph (a)(3) "with respect

to the articles protected by the patent." 19 U.S.C. § 1337(a)(3); Certain Variable Speed Wind

Turbines and Components Thereof ("Wind Turbines"), Inv. No. 337-TA-376, USITC Pub. No.

3003 (Nov. 1996), Comm'n Op. at 21 (Sept. 23, 1996), remanded on other grounds, Enercon

GmbHv. Int'l Trade Comm'n, 113 F.3d 1256 (Fed. Cir. 1997).

Navico alleges a domestic industry under subparagraphs (A), (B), and (C). ID at 276-77,

285. Navico alleges that, from 2009 through the filing of the complaint, it invested [

] domestically in the design, development, service, repair, and support of products

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PUBLIC VERSION

protected by the '550 patent, namely the LSS-1 products. Id. at 246. Although Navico

discontinued sales of the LSS-1 product in February 2012, Navico asserts that its investment in

the LSS-1 product continued well after 2012 in the form of technical customer support, warranty

and repair work, research and development of software updates, and the sale and support of

components for replacing damaged or defective parts of the LSS-1 product. Id. at 246-47;

Navico Pet. at 76.

The ID found that Navico failed to satisfy the economic prong of the domestic industry

requirement for the '550 patent. ID at 251. The ID found that Navico stopped investing in the

LSS-1 products—the only products that the ALJ found to practice the claims of the patent —m

2012 when it discontinued the products. Id. at 270. The ID, thus, did not credit any of Navico's

expenditures from 2009 to 2012. See id. The ID rejected the remaining alleged expenditures

from 2013 and 2014, finding that Navico's allocation methodology as to its technical consumer

support, warranty program, and facilities expenditures was not sound and that its post-2012

expenditures were not significant. See id. at 279-80, 282, 284.

As discussed below, the Commission finds Navico has satisfied the economic prong of

the domestic industry requirement for the '550 patent under section 337 (a)(3)(B) and (C).

a) Consideration of Navico's 2009-2012 Investments

Navico argues that the ID erred in refusing to count [ ] of attributable and

properly allocated domestic investments from 2009 to 2012 and considering only investments

from January 2013 through the filing of the complaint in June 2014. Navico Pet. at 72, 75-76.

2 1 The ALJ found on summary determination that Navico's LSS-1 StructureScan, including its transducer and all HDS and HDS Gen 2 bundles with LSS-1 StructureScan, practices at least one claim ofthe '550 patent. Order No. 15 (Jan. 30, 2015) at 3-4 (citing Statement of Undisputed Facts, 7) (not reviewed, Notice (Mar. 3, 2015)).

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PUBLIC VERSION

Garmin argues that the ALJ undertook a fact-intensive inquiry to arrive at the ID's findings and

that Navico failed to meet its burden to tie its prior investments to a present-day analysis.

Garmin Pet. Resp. at 38-39, 42. Although OUII agrees with Navico, OUII does not believe that

the ID's findings on domestic industry constitute reversible error. OUII Pet. Resp. at 15.

Because the ID's rejection of Navico's 2009-2012 expenditures cuts across all the alleged

investments under subparagraphs (A), (B), and (C), the Commission addresses this issue at the

outset. The ID erred to the extent that it held that Navico's 2009-2012 investments in protected

articles cannot be credited toward its domestic industry on the sole ground that Navico

discontinued sales ofthe domestic industry product in 2012 and replaced it with a product that

does not practice the claims of the '550 patent. "Past expenditures may be considered to support

a domestic industry claim so long as those investments pertain to the complainant's industry with

respect to the articles protected by the asserted IP rights and the complainant is continuing to

make qualifying investments at the time the complaint is filed." Certain Television Sets,

Television Receivers, Television Tuners, and Components Thereof ^Television Sets"), Inv. No.

337-TA-910, Comm'n Op. at 68 (Oct. 30, 2015).2 2 The Commission, thus, has found, in various

investigations, a domestic industry based on a complainant's past activities relating to a

discontinued product where the complainant has shown continuing qualifying investments. E.g.,

Certain Battery-Powered Ride-On Toy Vehicles and Components Thereof ("Toy Vehicles"), Inv.

In Commissioner Schmidtlein's opinion, as explained in her statement of Separate Views in Television Sets, ongoing activities other than "qualifying investments," such as sales of domestic industry articles, allow the Commission to consider past expenditures when assessing the domestic industry requirement. See Television Sets, Separate Views of Commissioner Rhonda K. Schmidtlein; e.g., Toy Vehicles, Order No. 6, at 18-21 (finding domestic industry based on fact that there were continuing but limited sales of toys from inventory that allowed "all the prior costs relating to the development and exploitation of the patent" to be considered).

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PUBLIC VERSION

No. 337-TA-314, USITC Pub. No. 2420, Order No. 6, at 18-21 (Dec. 5, 1990) (finding domestic

industry to exist based on substantial past investments in equipment, labor and capital in

development and exploitation of the patent combined with continued activities supplying

patented replacement units, which are a safety feature of the vehicles, even though

manufacturing of protected articles had ceased in favor of an improved model before the

complaint was filed) (not reviewed in relevant part); Wind Turbines, Comm'n Op. at 24-26

(considering complainant's past manufacturing activities that ceased during bankruptcy where

complainant continued to operate and maintain wind turbines); Certain Kinesiotherapy Devices

and Components Thereof'("Kinesiotherapy Devices"), Inv. No. 337-TA-823, Comm'n Op. at 30

(July 12, 2013) (finding expenses relating to discontinued product relevant where complainant

transitioned to other products with new features), rev 'd on other grounds, Lelo Inc. v. Int'l Trade

Comm 'n, 786 F.3d 879 (Fed. Cir. 2015); Certain Electronic Digital Media Devices and

Components Thereof ^Electronic Digital Media Devices"), Inv. No. 337-TA-796, Comm'n Op.

at 99-100 (Sept. 6, 2013) (considering engineering and research and development investment in

discontinued products where complainant further developed its existing products).

For the reasons discussed below, the Commission finds Navico's proven domestic

investments from 2009 to 2012 that pertain to the articles protected by the '550 patent should be

2 3 Garmin cites to a number of investigations involving discontinued products in support of arguments that the asserted domestic activities cannot be "too remote in time to the filing of the [cjomplaint" and that "a domestic industry does not exist where the product was discontinued prior to the filing of the complaint." Garmin Pet. Resp. at 41-42 (citing Certain Video Game Systems and Controllers, Inv. No. 337-TA-743, USITC Pub. No. 4377, ID at 167 (Dec. 8, 2011) (not reviewed in relevant part); Electronic Digital Media Devices, Comm'n Op. at 100-02; Certain Printing and Imaging Devices and Components Thereof, Inv. No. 337-TA-690, USITC Pub. No. 4289, Comm'n Op. at 31-32 (Feb. 17, 2011)). None ofthe domestic industry findings in those investigations depended solely on the timing of the past activities or the discontinued nature of a product before the filing of the complaint.

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credited toward Navico's domestic industry claim in view of Navico's continuing qualifying

investments, such as in warranty, technical customer service, and software development, at the

time the complaint was f i l ed . 2 4 ' 2 5

b) Plant and Equipment

With respect to subparagraph (A), Navico asserts that it has two primary locations in the

United States. ID at 276. Its headquarters are located in Tulsa, Oklahoma, and is the epicenter

of Navico's research and development, consumer technical service, and distribution and logistics

related to Navico's U.S. products, including the LSS-1 products. Id. Navico also has a facility

in Merrimack, New Hampshire, that houses parts of Navico's research and development team, as

well as parts of Navico's distribution and logistics operation. Id. Navico asserts that, from 2009

through the filing of the complaint, it invested [ ] in domestic plant and

equipment attributable to the LSS-1 products: approximately [ ] for the Tulsa facility;

[ ] for the Merrimack facility; and [ ] in capital for research and development. Id,;

CX-96C (Prowse DWS) at Q/A 71, 77-79.

Because the Commission concludes that a domestic industry exists under subparagraphs

(B) and (C), the Commission takes no position on whether a domestic industry exists under

subparagraph (A). See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1422-23 (Fed. Cir. 1984).

2 4 The facts here are thus different than those in Television Sets, where the complainant changed its business model to patent monetization and the complainant's credible evidence of domestic industry concerning its legacy products was based strictly on sales (as opposed to a cognizable domestic industry activity). See Comm'n Op. at 73-75. 2 5 Commissioner Schmidtlein does not join footnote 24 because she did not join the aspect of Television Sets referenced in the footnote. In her opinion, as explained in her statement of Separate Views, the complainant's decision to change its business model in Television Sets was iiTelevant to assessing the domestic industry requirement. See Television Sets, Separate Views of Commissioner Rhonda K. Schmidtlein at 4. Moreover, the activities asserted to be taking place at the time of the complaint included more than sales of domestic industry products. Id, at 2-3.

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c) Labor and Capital

With respect to subparagraph (B), Navico asserts that, at the time of the filing of the

complaint, it employed approximately 190 employees in the United States, many of whom work

in the areas of technical customer service and consumer support, distribution and logistics, and

research and development. ID at 277; CX-96C (Prowse DWS) at Q/A 81. Navico asserts that,

from 2009 through the filing of the complaint, it spent the following approximate labor and

capital expenditures attributable to the LSS-1 products: [ ] for consumer technical

service; [ ] on warranty activities;26 [ ] in facilities; [ ] in distribution and

logistics activities;27 and [ ] in research and development.28 ID at 278, 281, 283; CX-

96C at Q/A 36. In sum, Navico asserts it spent approximately [ ] in domestic labor and

Navico's technical customer service and consumer support teams provide customer support, including handling technical calls and facilitating the repair or replacement of any defective product or component under its warranty program. CX-96C at Q/A 42, 82; CX-91C (Chemi DWS) at Q/A 123-146. In 2013 and 2014, Navico's warranty and service team [

] requiring repair or replacement of an LSS-1 black box unit under Navico's warranty programs. CX-91 at Q/A 157; CX-599C (Navico LSS-1 Warranty Replacements). 2 7 Navico's distribution and logistics team performs a variety of activities, including: warehousing; shipping and receiving; flashing and re-flashing and packaging of Navico's products, when necessary, prior to shipment to customers; ensuring that when a customer orders a cartography package from Navico, a proper Micro SD card is included with those maps; and other logistics activities. CX-91C at Q/A 169-170.

2 8 Navico's research and development investment includes the costs in labor, capital, and other expenses it takes to conceive and bring to market a marine sonar device, in addition to the costs of refining products that are in the market and updating the operating software so that the sonar units run optimally and provide the users with the best possible user experience. CX-91C at Q/A 116; see also CX-92 (Proctor WS) at Q/A 118-123. In 2014, Navico employed approximately [ ] U.S.-based employees who worked in research and development, many of whom were heavily involved in the development and testing of the LSS-1 Products. CX-91C at Q/A 118-119. From 2009 to 2014, Navico invested in various projects attributable to the '550 patent. CX-96C at Q/A 106 (citing CDX-7C.6 listing nine projects). The projects relating to software updates [ ] , as Navico spent over [ ] on version 2.0 and over[ ] on version 3.0. CX-91C at Q/A 109-114, 121. Since the complaint was filed, Navico has been developing versions 3.5 and 4.0. Id. at Q/A 152; CX-96C at Q/A 40.

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capital investments attributable to the LSS-1 products. Id. The Commission notes, however,

only [ ] of Navico's alleged expenditures under subparagraph (B) actually pertain to

labor and capital, as the [ ] expenditures in facilities represent Navico's leasing

expenditures. See supra at 57.

Most of Navico's asserted post-2012 labor and capital expenditures relate to the

employment of personnel engaged in research and development for software updates to the

operating system used in Navico's head units. The parties do not dispute that the head units,

when combined with the LSS-1 transducer and sonar module containing the sonar signal

90

processor, come within certain dependent claims of the '550 patent.

The ID, however, rejected Navico's post-2012 research and development expenditures,

concluding that "[investment in general that is not directly attributable to the LSS-1 (the

domestic industry product) caimot be used to satisfy the economic prong of the domestic industry

requirement." ID at 259. The ID made this finding based on evidence that the software updates

can be used with the LSS-1 and other products, such as the LSS-2, and the fact that the head

units do not on their own practice any claim of the '550 patent. Id. at 257, 259-62. Garmin

agrees with the ID, but none of the cases it cites in support of the ID's finding requires a

complainant to show that its investments are "directly attributable" to the patented product. See

Garmin Pet. Resp. at 47-48.30

Dependent claims 36 and 47-52 of the '550 patent require a display or a sonar signal processor configured to display images of sonar data. JX-2, claims 36, 47-52. 3 0 The Commission notes that Garmin's citations include findings that the Commission vacated or took no position on. E.g., Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof, Inv. No. 337-TA-868, ID at 169 (June 26, 2014), vacated in relevant part by Comm'n Op. at 6, 13 (Aug. 28, 2014) (reviewing and taking no position on the economic prong issue).

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PUBLIC VERSION

In Certain Integrated Circuit Chips and Products Containing the Same ("Integrated

Circuit Chips"), the Commission explained that, under subparagraphs (a)(3)(A) and (B), it

generally "would only examine whether [complainant's] 'investment in plant and equipment' or

'employment of labor or capital' relates to protected articles." Inv. 337-TA-859, Comm'n Op. at

48 (Aug. 11, 2014). The Commission also explained evidence that the complainant's domestic

investment related to other chips in addition to the alleged domestic industry product did "not

diminish [the fact] that [complainant's] investment is also with respect to the domestic-industry

articles." Id. Here, Navico has made the necessary showing that its post-2012 labor and capital

costs are related to the LSS-1 products.31

Moreover, the Commission finds no basis to wholly exclude Navico's post-2012

warranty expenditures. The ID disregarded Navico's warranty expenditures principally based on

evidence that the warranty services result in an LSS-2 product that does not practice the claims

of the '550 patent. See, e.g., ID at 265. The evidence shows that the LSS-1 products sold to

customers before 2012, after they are repaired by Navico, no longer practice the claims ofthe

patent.32 However, this does not diminish the fact that Navico's activities in replacing broken or

The ID appeared to deviate from this analysis by requiring Navico to show that its domestic investment related to only the patented product. See ID at 271-72 (citing Lelo). The Commission disagrees. The ID's citation of Lelo is primarily ofthe Federal Circuit's recounting of the ALJ's findings, which were reviewed and reversed by the Commission. See Kinesiotherapy Devices, Comm'n Op. at 27 ("[T]here is no requirement that the components must be developed or produced specifically for the domestic industry products."), rev'd on other grounds, Lelo, 786 F.3d 879. Further, the Federal Circuit in that case addressed facts not present here, faulting the complainant for relying only on the generic purchase prices it paid for off-the-shelf components and failing to show the share of labor and capital costs attributable solely to purchases made by the complainant. Lelo, 786 F.3d at 884.

3 2 Navico relies solely on Dr. Vincent's testimony to show that the repaired products practice the claims of the '550 patent. See Navico Pet. at 74, 77. The Commission finds Dr. Vincent's testimony conclusory. Dr. Vincent does not refer to claim charts or any other evidence showing (continued on next page)

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PUBLIC VERSION

defective LSS-1 products are an investment with respect to the articles protected by the patent,

the LSS-1 product.33

The ID rejected Navico's post-2012 warranty and technical customer service

expenditures because they were calculated using a weighted sales-based allocation that the ID

concluded was "not sound economic analysis." ID at 276, 279-80. The ID's analysis appears to

have misunderstood Navico's methodology as "counting" past sales for current investments. See

id. at 275, 279-80. The evidence shows that Navico's allocation methodology used past sales

figures to approximate the number of LSS-1 products that correspond to its total amount of post-

sale investments that related to the LSS-1 product. Navico Pet. at 79 ("This approximates the

actual products that would be handled by Navico's two-year standard warranty program, which

runs for two years."). As the ID notes, Navico does not track all warranty and technical customer

support on a per-product basis. ID at 274; Hr'g Tr. 150:11-151:8 (Chemi). Navico's expert,

thus, used a weighted sales-based allocation to determine what percentage of Navico's labor and

capital expenditures for technical customer support should be attributed to the LSS-1 product.

CX-96C at Q/A 59, 86. Navico's allocation methodology reasonably approximates the warranty

and technical customer support expenditures relating to the LSS-1 product.34 See Certain

how each claim limitation reads on the repaired product. See CX-95C (Vincent DWS) at Q/A 304-311. 3 3 The Commission notes Navico continued to sell to its customers adapter cables that allow the LSS-1 product to be used with the LSS-2 product. CX-96C at Q/A 50. 3 4 Navico also argues that the ID did not consider the [ ] products still covered by the five-year Advantage warranty. See Navico Pet. at 78-79 & n.22. The ID did not credit Navico's testimonial evidence due to lack of corroborating documentary evidence. See ID at 267-68. Navico essentially asks the Commission to re-weigh the evidence and re-assess witness credibility. Navico has not presented a sufficient reason for the Commission to do so, especially where Navico's expert, Dr. Prowse, did not rely on the five-year warranty program in his analysis. See id, at 267.

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Ground Fault Circuit Interrupters and Products Containing Same, Inv. No. 337-TA-739,

Comm'n Op. at 74-75, 79-81 (June 8, 2012) (finding domestic industry where complainant

allocated each of its domestic investments proportional to sales of covered products).

The ID suggested that a more appropriate method would be to allocate warranty and

customer service expenditures solely based on sales in that same year. ID at 279. But such a

methodology would eliminate all warranty and technical customer service expenditures in 2013

and 2014 related to the LSS-1 products, despite evidence these products were still under

warranty and covered for such services after being sold one or two years before.

The remaining issue for resolution under subparagraph (B) is whether Navico's

investment in labor and capital is "significant." The parties dispute whether Navico met its

burden under the standard set forth by the Federal Circuit in Lelo. Navico Pet. at 83; Garmin

Pet. Resp. at 43. The ID found that Navico's expenditures were not significant:

Complainants' post-2012 activities are insufficient to satisfy the requirement that their investment in the LSS-1 domestic industry products are quantitatively significant as measured by "an increase in quantity," or in comparison "to a benchmark in numbers." Lelo Inc., 2015 WL 2166246, at *3. Indeed, complainants never compare their post-2012 LSS-1 investments to their overall investments, and thus cannot show any increase in quantity[,] or to a benchmark in numbers[,] in domestic industry due to the claimed activities.

ID at 271; see also id. at 280, 282, 284. Garmin agrees with the ID's analysis, arguing that

Navico was "actively decreasing the domestic industry" in the '550 patent after February 2012.

Garmin Pet. Resp. at 43.

Lelo addressed a single question: whether qualitative factors alone are sufficient to

satisfy the "significant investment" and "significant employment" requirements of section

337(a)(3)(A) and (B). 786 F.3d at 883. The Federal Circuit answered in the negative, holding

that "[qualitative factors cannot compensate for quantitative data that indicate insignificant

investment and employment." Id, at 885. As part of its analysis, the Federal Circuit discussed

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the plain text of the statute. Id. at 883. Addressing a number of terms in subparagraphs (A) and

(B), the court stated that that "the terms 'significant' and 'substantial' refer to an increase in

quantity, or to a benchmark in numbers" and concluded that the statutory text "requires a

quantitative analysis in order to determine whether there is a 'significant' increase or attribution

by virtue of the claimant's asserted commercial activity in the United States." Id. Nothing in

that discussion or elsewhere in Lelo requires, as the ID and Garmin suggest, that the

complainant's domestic industry investment at the time of the filing of the complaint be

increasing compared to past years.

Moreover, unlike the facts in Lelo, where the complainant relied on expenditures on

component purchases that represented a "relatively modest proportion of domestic content," all

of the expenditures relied upon by Navico are attributable to Navico's domestic labor and capital

investment. See id. at 882-84 (finding "no evidence of any investment made in capital or labor

as a result of the purchased components" where complainant's pricing data did "not reflect the

magnitude of labor expended to produce the components, or the amount the suppliers invested in

their equipment to fu l f i l l [complainant]'s orders"). As discussed above, the record evidence

shows that Navico's expenditures in warranty and teclinical customer service, distribution and

logistics, and research and development are significant investments in labor and capital.

Further, Navico's expert, Dr. Prowse, testified that Navico's expenditures on labor and

capital, including the research and development performed on products practicing each of the

asserted patents, resulted in the creation of a new product category that consumers found

valuable, as evidenced by Navico's sales of the LSS-1 products. CX-96C at Q/A 127. For

example, Navico's investment resulted in revenues based on the LSS-1 products of [

]. Id. at Q/A 127-128. The record also shows that Navico

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conducts the vast majority of its research and development in the United States. Id. at 130; CX-

91CatQ/A21.

Accordingly, the record evidence shows that Navico's expenditures from 2009 to 2014 of

approximately [ ] in the domestic design, development, service, repair, and support of

the LSS-1 products constitute a significant employment of labor and capital under section 337

(a)(3)(B).

d) Engineering and Research and Development

With respect to subparagraph (C), Navico asserts [ ] in domestic investments in

engineering and research and development attributable to the LSS-1 products. ID at 285. The

ID rejected Navico's expenditures relating to engineering and research and development

"inasmuch as the investment was already attributed under section 337(a)(3)(B), and the same

investment cannot be counted twice." Id. The Commission notes at the outset that only [

] of Navico's alleged expenditures under subparagraph (C) actually pertain to engineering

and research and development. See supra at 58.

The Commission held in Integrated Circuit Chips that subparagraph (C) additionally

requires that the domestic investment constitute an exploitation of the asserted patent. Comm'n

Op. at 48. The Commission also held that "a qualitative discussion of the relationship" between

the patented invention and the domestic investment can suffice to show how the activities

corresponding to the investment are in the exploitation of the patent and that it was "not seeking

precise numerical allocation." Id. at 49-50. The Commission found that the complainant in that

investigation did not satisfy the requirements under subparagraph (C) because the evidence did

not establish any relationship between the complainant's domestic investment and the patent. Id.

at 45, 50. As Garmin notes, the investment in Integrated Circuit Chips was extensively used in

other products that lacked the patented technology, "negating] a possible inference that the

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R&D was in exploitation of the patented invention." Id. at 46. The Commission noted,

however, that, had the asserted patent claims included a limitation concerning the structures in

which the complainant invested, its outcome may have been different. Id, at 45 & n.20.

Here, Navico argues that the research and development of software updates are

"necessary for the functionality and usability of the [head] unit, which is necessary for the

operation of the LSS-1 unit," and are further directed to head units, which are limitations of

certain dependent claims of the '550 patent. ID at 258, 262; see also CX-92C (Proctor DWS) at

Q/A 118, 121. Thus, the evidence shows that Navico's research and development expenditures

are closely related to and enable exploitation of the patented technology. See Integrated Circuit

Chips, Comm'n Op. at 40; Certain Video Game Systems and Wireless Controllers and

Components Thereof, Inv. No. 337-TA-770, Comm'n Op. at 70 (Oct. 28, 2013) (considering

expenses relating to main server software coordinating certain effects that are central to enabling

complainant to exploit technology of claimed toy wands); Certain Digital Set-Top Boxes and

Components and Thereof, Inv. No. 337-TA-712, Order No. 33, at 15-16 (Jan. 28, 2011)

(considering investment in development of software that exploits the asserted patents), affirmed

in part, Notice (July 21, 2011).

The Commission finds that Navico's expenditures of [ ] in research and

development and engineering is substantial. The entirety of those expenditures is attributable to

Navico's domestic investment in research and development and engineering. In addition,

substantially all ofthe research and development and engineering for the LSS-1 products was

conducted in the United States. CX-91C (Chemi DWS) at Q/A 21; CX-96C (Prowse DWS) at

Q/A 130. This is a "classic case" for the application of subparagraph (C) in which the

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complainant is engaged in substantial research and development involving the asserted patent.

See InterDigitial Commc 'ns v. Int'l Trade Comm 'n, 707 F.3d 1295, 1298-99 (Fed. Cir. 2013).

For the reasons stated here and supra at 58-64, Navico's expenditures from 2009 to 2014

of [ ] in the domestic design and development of LSS-1 products separately constitute

a substantial investment in engineering and research and development under section 337

(a)(3)(C).

C. U.S. Patent No. 8,300,499

The '499 patent is titled "Linear and Circular Downscan Imaging Sonar," and issued on

October 30, 2012. JX-3 ('499 patent). The '499 patent describes a method for providing a

combined linear and circular downscan sonar display. Id., Abstract.

Navico asserts claims 1, 2, 19-21, 24, 25, 42-44, 62, 66, 79, and 80 ofthe '499 patent. ID

at 184. The asserted independent claims of the '499 patent recite:

1. A method comprising:

receiving linear downscan sonar data based on sonar returns from a series of fan-shaped beams produced sequentially by a linear downscan transducer mounted on a watercraft, the series of fan-shaped beams insonifying different fan-shaped regions of an underwater environment beneath the watercraft as the watercraft travels;

receiving conical downscan sonar data based on sonar returns from a generally conical beam produced by a second downscan transducer, wherein the conical beam is wider than each fan-shaped beam in a direction parallel to a longitudinal length of the linear downscan transducer;

combining the linear downscan sonar data and the conical downscan sonar data to produce combined downscan sonar data; and

rendering the combined downscan sonar data as at least one image on a display, the at least one image including a composite of images of the fan-shaped regions arranged in a progressive order corresponding to the travel of the watercraft.

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24. A computer program product comprising at least one non-transitory computer-readable storage medium having computer-executable program code portions stored therein, the computer-executable program code portions comprising:

program code instructions for receiving linear downscan sonar data based on sonar returns from a series of fan-shaped beams produced sequentially by a linear downscan transducer mounted on a watercraft, the series of fan-shaped beams insonifying different fan-shaped regions of an underwater environment beneath the watercraft as the watercraft travels;

program code instructions for receiving conical downscan sonar data based on sonar returns from a generally conical beam produced by a second downscan transducer, wherein the conical beam is wider than each fan-shaped beam in a direction parallel to a longitudinal length of the linear downscan transducer;

program code instructions for combining the linear downscan sonar data and the conical downscan sonar data to produce combined downscan sonar data; and

program code instructions for rendering the combined downscan sonar data as at least one image on a display, the at least one image including a composite of images ofthe fan-shaped regions arranged in a progressive order corresponding to the travel of the watercraft.

43. An apparatus comprising a sonar signal processor configured to:

receive linear downscan sonar data based on sonar returns from a series of fan-shaped beams produced sequentially by a linear downscan transducer mounted on a watercraft, the series of fan-shaped beams insonifying different fan-shaped regions of an underwater environment beneath the watercraft as the watercraft travels;

receive conical downscan sonar data based on sonar returns from a generally conical beam produced by a second downscan transducer, wherein the conical beam is wider than each fan-shaped beam in a direction parallel to a longitudinal length of the linear downscan transducer;

combine the linear downscan sonar data and the conical downscan sonar data to produce combined downscan sonar data; and

render the combined downscan sonar data as at least one image on a display, the at least one image including a composite of images of the fan-shaped regions arranged in a progressive order corresponding to the travel ofthe watercraft.

JX-3, claims 1, 24, 43 (emphasis added to disputed terms).

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1. Claim Construction

a) "linear downscan transducer"

A l l of the asserted claims of the '499 patent require a "linear downscan transducer." The

ID did not construe the "linear downscan transducer" limitation as recited in the independent

claims 1, 24, and 43 of the'499 patent. However, presumably because the limitation is a variant

of "single linear downscan transducer element" recited in the ' 840 patent, the ID applied the

same claim construction, referred to the infringement analysis of the '840 patent, and found no

infringement as to the asserted claims of the '499 patent. See ID at 223. The Commission

determined to review this issue and requested briefing on any differences in the constructions of

the variant terms. 80 Fed. Reg. at 54593.

As noted supra at 43-44, the parties agree that the same construction should apply to all

variants of the limitation "single linear downscan transducer element" recited in the asserted

patents. However, Navico notes that no party has ever asked for the independent construction of

i t

the "linear downscan transducer" term. Navico Br. at 5 n.2. Similar to the '550 patent, Navico

argues that the construction of the "linear downscan transducer" limitation recited in the '499

patent should be modified to omit the first occuiTence of the word "single." Id. at 5. Garmin

does not dispute the modification proposed by Navico. Garmin Resp. at 10-11.

Accordingly, for the same reasons discussed in the context of "single linear downscan

transducer element" of the '840 patent (see supra at 8-17), the Commission construes the "linear

downscan transducer" limitation as "a downwardly pointed transducer that is formed from a

OUII appears to agree that the construction of this term is not disputed. See OUII Br. at 7 n.3 ("The '499 Patent is not at issue in this dispute.").

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single crystal or a plurality of crystals that act simultaneously and in phase as i f they were a

single crystal."

b) "combining"

Al l of the asserted method claims of the '499 patent require "combining the linear

downscan sonar data and the conical downscan sonar data to produce combined downscan sonar

data" and "rendering the combined downscan sonar data as at least one image on a display, the at

least one image including a composite of images of the fan-shaped regions arranged in a

progressive order corresponding to the travel of the watercraft." See, e.g., JX-3, claims 1, 24.

The only asserted independent apparatus claim ofthe '499 patent recites variants of these

limitations. Id., claim 43. The ID concluded that the term "combining" (and its variants) recited

in independent claims 1, 24, and 43 of the '499 patent should be given its plain and ordinary

meaning, namely, "to merge or to bring into union." ID at 194.

Navico challenged the ID's construction, arguing that the ID erred in adopting Garmin's

and OUII's proposed constructions and that the term should be accorded its " fu l l " plain and

ordinary meaning: "to work or act together; to possess or exhibit in union; to unite for a

common purpose." Navico Pet. at 87. Garmin argued before the ALJ that the construction

dispute centers on "whether the storage of linear sonar data and conical sonar data in a memory

block without actually merging or uniting of the data is 'combining' within the meaning of the

patent." ID at 193. According to Garmin, the data must be merged or united in some fashion; it

cannot stay separated in the memory buffer and then displayed separately. Id. OUII argued that

the ID's construction is fully supported by the intrinsic and extrinsic record. OUII Pet. Resp. at

7-14.

The Commission finds that the ID's analysis of the claims, specification, prosecution

history, and extrinsic record is thorough, addressing and appropriately rejecting some of the

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same arguments that Navico raises in its petition for review. See ID at 192-216; compare Navico

Pet. at 89-92 with ID at 207-09, 215. The Commission therefore affirms, with modification, the

ID's findings.

Navico argues that the ID's construction of "combining" improperly imports a "merging"

limitation from certain dependent claims into the independent claims, and erroneously equates

"combining" and "merging" despite the patent's different use of the terms. Navico Pet. at 87-89.

As Navico notes, dependent claims 14, 15, 37, 38, 56, and 57 specify that the process of

"merging" can be accomplished by selecting the largest value or averaging the values from a

segment of linear downscan sonar data. E.g., JX-3, claims 14, 15; see also id. col. 14, lines 6-14.

Also, as noted by Navico, the '499 patent discusses the merging of linear data only (as opposed

to merging linear and conical data). Id. Navico, however, misunderstands the ID's construction

as limited to the specific ways of merging recited in those dependent claims. As the ID

explained, it adopted Garmin's proposed construction with the understanding that Garmin had

proposed "merging" in the sense that "the data must be united or joined in some fashion, as flour

and sugar are combined in a mixing bowl but not combined when they are sitting next to each

other in a cupboard." ID at 201-02. The ID also adopted OUII's construction of "to bring into

union" (see id. at 194), which expressly broadens the meaning of "combining" beyond merging

as proposed by Garmin and covers the specific ways of merging claimed in the dependent claims

and disclosed by the '499 patent.

The Commission finds that the ID's construction is not inconsistent with dependent

claims 13,14,15, 36, 37, 38, 55, 56, and 57 or the specification's use of the word "merging."

The Commission also finds the ID's construction consistent with certain dependent claims, such

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as dependent claims 10 and 12, that specify combining by blending or rendering overlay data

over base data.

Navico similarly argues that the ID's construction renders dependent claims 20 and 21

meaningless. Navico Pet. at 89. Navico argues that these claims, the latter of which Navico

contends "specifically claims a split-screen embodiment (with linear sonar data displayed side-

by-side with conical sonar data in separate windows)," cannot be reconciled with the ID's

construction of the "combine" limitation. Id. at 90-91. Navico argues that data sets that are

combined according to the ID's construction are "inextricably merged" and cannot be

individually rendered as required by claims 20 and 21. Id.

Claims 20 and 21 recite:

20. The method of claim 1, wherein the rendering step comprises creating linear downscan image data based on the linear downscan sonar data, creating conical downscan image data based on the conical downscan sonar data, and displaying both the linear downscan image data and the conical downscan sonar data for a same region beneath the watercraft.

21. The method of claim 20, wherein the linear downscan image data for said same region is displayed in a first window on a display and the conical downscan sonar data for said same region is displayed in a second window on the display.

JX-3, claims 20, 21 (emphasis added).

The Commission rejects Navico's arguments for several reasons. First, and as Navico

acknowledges (Navico Pet. at 90-91 n.30), simply because data sets are combined does not

necessarily mean that the constituent data sets are discarded. Indeed, other claims, such as

dependent claim 19, simultaneously refer to the combined data, the conical sonar data, and the

linear sonar data. E.g., JX-3, claim 19 ("The method of claim 1, further comprising enabling

user selection of a rendering option corresponding to one of: . . . rendering the conical downscan

sonar data, the linear downscan sonar data and the combined downscan sonar data each in

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respective different display windows . . . ."). This claim language strongly suggests that the

combined data and the constituent data sets can co-exist.

Second, claim 20, which further describes the rendering step of claim 1, uses open-ended

language. Id., claim 20. Claim 20's use of the word "comprises" indicates that the steps

specified in that claim are merely additional limitations of the rendering step recited in claim 1.

Also, the open-ended language in claim 20 indicates that the specified steps do not necessarily

make up the complete rendering step. See Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d

1364,1368 (Fed. Cir. 2003) ("The transition 'comprising' in a method claim indicates that the

claim is open-ended and allows for additional steps.").

Third, the Commission disagrees with Navico's premise that claims 20 and 21 require

rendering the combined data in a split-screen display.36 Claims 20 and 21 add more steps to the

rendering step in claim 1. Those additional steps require the creation and display of an entirely

new data set—linear downscan image data—along with corresponding conical downscan sonar

data to complete the rendering step recited in claim 1. 3 7 Thus, what is displayed by claims 20

and 21 is not, contrary to Navico's arguments, the combined data recited in claim 1. Claims 20

and 21 do not even refer to the combined data recited in claim 1, much less specify the display of

the combined data.

Navico Pet. at 90-91 n.30 ("[E]ach of the claims requires that the 'combined' data be rendered, not some other legacy data. Thus—applying the ALJ's claim construction—it is simply not possible to 'merge' the linear and conical data, and then render that 'merged' data in a split-screen orientation."); see also id, at 91 ("Claim 21 requires that combined data to be displayed together in a split-screen format."). 3 7 The ID mistakenly states that claims 20 and 21 require displaying both linear image data and conical image data. See ID at 206. Instead, those claims require displaying linear image data and conical sonar data. JX-3, claims 20, 21.

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Navico also argues that the ID erred in adopting a narrow construction of the term

"combine" because there is no evidence of a clear disavowal of claim scope or a clear intention

to limit claim scope using words of manifest exclusion or restriction. Navico Pet. at 92. This

argument is premised on Navico's mistaken belief that the specification's statements regarding

the "flexibility" in "useful output of combined data to the user" and Figure 10's illustration of

one display configuration apply to the "combining" step and somehow support a broader

meaning of that term. See id, at 93 (citing JX-3, col. 5, lines 34-38, Fig. 10). This argument is

misplaced because it is based on the patent's teachings relating to the display of combined data.

As the independent claims specify, the combining step recited in the independent claims is

separate from the step of rendering the combined data. See, e.g., JX-3, claim 1. Also, as the ID

noted, simply showing linear and circular data in separate display windows is "not the same" as

combining the sonar data and rendering the combined sonar data. ID at 208.

Although not raised by any party, part of the ID's analysis of dependent claim 8 warrants

correction. Claim 8, like claims 20 and 21, is an open-ended claim and relates to the rendering

step of claim 1. JX-3, claim 8. As shown in the table below, the language of claim 8 contains

overlay language similar to that of claim 12. See id., claim 12.

Claim 8 Claim 12 8. The method of claim 1, wherein the rendering step comprises rendering base data corresponding to one of the linear downscan sonar data or the conical downscan sonar data and rendering overlay data corresponding to the other ofthe linear downscan sonar data or the conical downscan sonar data over the base data.

12. The method of claim 1, wherein combining the linear downscan sonar data and the conical downscan sonar data comprises:

forming first data columns of the conical downscan sonar data;

forming second data columns of the linear downscan sonar data corresponding to each of the first data columns; and

rendering base data from one of the first data columns or the second data columns and rendering at least a portion of overlay data from the other of the first data columns or the second data columns over the base data.

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But, whereas claim 12 recites rendering overlay data over base data as part of the combining

step, claim 8 recites rendering overlay data over base data as part of the rendering step. Id.,

claims 8, 12.

The ID appeared to confuse the two claims. The ID stated that "the overlay method of

claim 8 is used to achieve the superposition" of the linear and conical data and that "overlay is

one form of superposition that creates the combined data." ID at 203 (emphasis added); see also

id. at 205. The implication of these statements is that the overlay method in claim 8 creates the

combined data. Because claim 8 depends on claim 1, which requires that combining take place

before rendering, the overlay method in claim 8 camiot create the combined data. Rather, claim

8 describes how the combined data is rendered, namely by rendering the constituents of the

combined data in overlay fashion.

The ID's construction of "combining" is supported by the intrinsic record and aligns with

what the inventors actually invented. As the Federal Circuit has noted:

Ultimately, the interpretation to be given a term can only be determined and confirmed with a ful l understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.

Phillips v. AWH Corp., 415 F.3d 1303,1316 (Fed. Cir. 2005) (en banc) (quoting Renishaw PLC

v. Marposs Societa'per Azioni, 158 F.3d 1243, 1250 (Fed.Cir.1998)). Navico cites nothing in

the intrinsic record that suggests that the inventors contemplated that "combining" means more

than merging or bringing into union. Accordingly, the Commission affirms, with the modified

analysis discussed above, the ID's construction of "combine."

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2. Infringement

a) "linear downscan transducer"

Referring to his infringement analysis of the '840 patent, the ID found that the accused

products do not satisfy the "linear downscan transducer" limitation as recited in the asserted

independent claims of the'499 patent. ID at 223. Navico challenged those findings. Navico

Pet. at 94, 99. The Commission determined to review the ID's infringement findings and

requested briefing on infringement under its proposed modified construction. 80 Fed. Reg. at

54592-93.

Because a similar limitation is being compared to the same accused products, the

infringement analysis is the same for the '499 patent as for the other patents with respect to this

claim limitation. Therefore, for the reasons discussed in the context of the '840 patent (see supra

at 18-22), the Commission finds that Garmin's accused products satisfy this limitation with

respect to the '499 patent.

b) "combining" and "rendering the combined . . . data"

The ID found that the accused products do not satisfy the limitations "combining the

linear downscan sonar data and the conical downscan sonar data to produce combined downscan

sonar data" or "rendering the combined downscan sonar data as at least one image on a display"

as required by the asserted claims of the '499 patent. ID at 224, 235.

Navico argues that, under its proposed construction of the "combining" term, the ID

incorrectly found noninfringement. Navico Pet. at 94-99. Garmin notes that Navico does not

challenge the ID's finding of noninfringement under the ID's construction of "combine."

Garmin Pet. Resp. at 38. OUII argues the record evidence shows that the accused products do

not perform the combining step under the ID's construction. OUII Pet. Resp. at 14.

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The ID addressed and rejected many of the same arguments Navico raises in its petition

for review and found no infringement under his construction. Compare Navico Pet. at 95-99

with ID at 219-37. The ID found that Garmin's products keep the linear downscan sonar data

and the conical downscan sonar data separate at all times, and that finding is supported by the

record evidence. ID at 226-30. Navico does not challenge those critical findings by the ID.

Furthermore, Navico fails to provide sufficient evidence to show that the accused products merge

or bring into union the linear and conical sonar data.

As to the arguments Navico raises in its petition that the ID did not expressly address, the

Commission finds them unpersuasive. [

] . Navico Pet. at 96-97. Claim 12 indeed refers to the forming of first

and second data columns coiTesponding to conical and linear data, respectively, for the puiposes

of combining. JX-3, claim 12. But claim 12 also requires rendering base data from one column

set and rendering overlay data from the other column set over the base data to complete the

combining step. Id. Navico fails to show how forming first and second data columns alone

constitutes "combining" as specifically recited in claim 12 or as required by the independent

claims under the ID's construction.

Second, Navico argues that the accused products "correlate" the linear and conical sonar

data to create combined data. Navico Pet. at 95, 97. Navico cites the direct witness statement of

its expert, Dr. Vincent, in support. E.g., id, at 95. Nowhere in that statement, however, does Dr.

Vincent mention, much less explain, the correlation taking place in the accused products.

[ ]

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[

] Navico Pet. at 95. That testimony, however, also does not mention correlation.

Instead, Mr. Feller explains that the accused products [

] . CX-133C (Feller Dep. Tr.) at 103:16-106:7. Such evidence of [ ] fails to

show that the accused products "merge" or "bring into union" the linear and conical data as

required by the proper construction of the limitation "combine." Notably, the '499 patent

describes a synchronization process that is separate from the combining step recited in in the

independent claims. See, e.g., JX-3, col. 13, lines 1-24, claims 4-7.

Third, Navico argues the accused products "combine" the linear and conical sonar data in

the same manner as Navico's domestic industry products, which the ID found practice the

asserted claims of the '499 patent. Navico Pet. at 98; ID at 215. This argument improperly asks

the Commission to perform an infringement analysis by comparing the accused product to the

domestic industry product, instead of to the asserted claims. Even on the merits, Navico's

argument fails. [

] Navico

Pet. at 98. To the contrary, the record evidence shows that Navico's products combine the linear

and conical sonar data in a packet of information or message format such that the sonar signal

processor or a black box performing the signal processing can recognize the source of each set of

data. RX-1525C (Proctor Dep. Tr.) at 161:19-163:23. Navico fails to show how this process is

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analogous to [

-j 38

Accordingly, the Commission finds no infringement as to the '499 patent. The

Commission adopts the ID's findings regarding non-infringement ofthe asserted claims of the

'499 patent that are not inconsistent with the Commission's opinion.

3. Validity

Because the Commission affirms, with modification, the ID's construction of the

"combining" limitation, the Commission does not reach Garmin's contingent arguments

concerning infringement as to the "combining" limitation under Navico's construction.

Accordingly, the Commission affirms the ID's finding that Garmin did not show by clear and

convincing evidence that the asserted claims ofthe '499 patent are invalid.

D. Remedy, Public Interest, and Bonding

1. Limited Exclusion Order

The RD recommended that, in the event the Commission determines a violation of

section 337 has occurred and i f consideration of the statutory public interest factors does not

require that remedies be set aside or modified, the Commission should issue a limited exclusion

order covering all of the infringing articles imported, sold for importation, or sold after

importation by Gaimin, its affiliated companies, parents, subsidiaries or other related business

entities, or their successors or assigns. ID at 296-97. In view of the ID's rejection of Garmin's

"importation" argument (see supra at 29 n.15), the RD denied Garmin's request for a limited

exclusion order covering specific combinations of the accused head units and transducers. ID at

] . ID at 227-30, 232.

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296 n.52. The RD also determined that the limited exclusion order should include a provision

that allows Garmin to certify, pursuant to procedures to be specified by U.S. Customs and Border

Protection, that they are familiar with the terms of the order, that they have made appropriate

inquiry, and that, to the best of their knowledge and belief, the products being imported are not

excluded from entry under the order. Id. at 297.

Al l parties agree with the recommendation that the Commission issue a limited exclusion

order should it find that a violation of section 337 has occurred. Navico Br. at 28; Garmin

Posthearing Br. at 296 3 9; OUII Br. at 27.

Garmin, however, argues the limited exclusion order should not include head units

imported without transducers because the head units do not infringe at the time of importation.

Gaimin Posthearing Br. at 296. Navico argues the Commission has broad discretion in

fashioning a remedy, citing Certain Automated Mechanical Transmissions for Medium-Duty and

Heavy-Duty Trucks and Components Thereof ^Mechanical Transmissions"), Inv. No. 337-TA-

503, USITC Pub. No. 3937, Comm'n Op. at 4 (May 5, 2005), in support of a limited exclusion

order that covers "not only all of Garmin's infringing products but also components thereof."

Navico Br. at 30. OUII agrees with the RD as to the scope of the limited exclusion order, but

does not directly address whether the order should cover components. OUII Br. at 27.

Navico argues that a certification provision is not necessary or appropriate because

(1) the accused products can be easily identified without opening the product packaging, and

(2) Garmin should not be permitted to use the certification provision to make its own decision as

In its response to the Commission's notice requesting briefing on remedy, public interest, and bonding, Gaimin refers solely to its posthearing briefing on the issues of remedy and bonding and its public interest statement on the issue of bonding. Garmin Br. at 1.

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to whether subsequent designs infringe or not. Navico Br. at 31-32. Navico points to new

evidence that Garmin fded a public brief in parallel district court litigation stating that "in the last

few months Garmin has developed a second design around that will go into production next

month and is different from the pre-suit design around." Navico Resp. at 20. Navico argues that

Garmin could circumvent the exclusion order by erroneously certifying that the new design is not

excluded. Id. Garmin argues that a certification provision is consistent with Commission

practice and necessary to prevent exclusion of non-infringing components such as the standalone

head units. Garmin Resp. at 17. OUII agrees that the exclusion order should include a

certification provision. OUII Br. at 27.

The limited exclusion order in the RD covers all of the "infringing articles" imported,

sold for importation, or sold after importation by Garmin. See ID at 296. In view of the

Commission's finding that Garmin's importation of head units without transducers do not

contributorily infringe the asserted patents, the limited exclusion order does not cover head units

imported without transducers. See supra at 28-31. Navico's reliance on Mechanical

Transmissions is misplaced. That case dealt with the issue of whether the scope of the remedial

orders should cover transmission systems that were outside the scope of the investigation, and

thus did not address whether remedial orders can cover components that were determined to be

non-infringing. Mechanical Transmissions, Comm'n Op. at 4.

As to the certification provision, the language in the RD is standard and consistent with

Commission practice, and Navico does not raise any specific reasons to depart from that practice.

The Commission notes that the certification procedure of U.S. Customs and Border Protection

does not apply to redesigns that have not been adjudicated as non-infringing. Moreover, any

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party may request the Commission to institute an ancillary proceeding to determine whether a

redesign is covered by the scope ofthe Commission's remedial orders.

Accordingly, the Commission adopts the recommendation regarding a limited exclusion

order.

In addition, the Commission notes that the record contains no evidence of importation as

to Garmin's 2015 products (see ID at 11-12 (citing CX-1238; Garmin Posthearing Br. at 23-24)),

and as such the Commission has not adjudicated infringement as to those products. Thus, i f

Garmin intends to import its 2015 products into the United States, it should use established

procedures at the Commission or U.S. Customs and Border Protection to obtain a ruling as to

whether such products infringe the relevant patents.

2. Cease and Desist Orders

The RD recommended that the Commission issue a cease and desist order against

Garmin. ID at 299. This recommendation was based on (1) Garmin's stipulation that, as of July

22, 2014, it maintained a commercially significant inventory of 20,748 units ofthe accused

products in the United States and (2) Garmin's updated records showing that, as of November

2014, Garmin's inventory of the accused products in the United States had increased to 32,527

units. Id.

Navico and OUII agree with the recommendation of a cease and desist order. Navico Br.

at 33; OUII Br. at 28. Garmin disputes that its stipulation identifies whether the accused

products were imported with an accused transducer. Garmin Posthearing Br. at 299. Gaimin

also disputes that a cease and desist order is appropriate for its 2015 products or for any pre-2015

products for which Garmin no longer maintains commercially significant levels of inventory. Id.

Garmin expressly stipulated that its inventory of the accused products in the United

States as of July 22, 2014 was commercially significant. CX-123 8C (Stipulation Relating to

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Importation and Inventory of Garmin) at Iflj 4, 6. Garmin did not limit its stipulation to certain

configurations ofthe accused product or model year. Based on Garmin's stipulation, which

placed no limitations on its admission of significant inventory of the accused products, and

evidence that Garmin's inventory has subsequently increased, Navico has established that

Garmin maintains commercially significant inventories of the infringing products in the United

States.

The Commission adopts the recommendation regarding issuance of cease and desist

orders.

3. The Public Interest

Sections 337(d) and (f) of the Tariff Act of 1930, as amended, direct the Commission to

consider certain public interest factors before issuing a remedy. These public interest factors

include the effect of any remedial order on the "public health and welfare, competitive

conditions in the United States economy, the production of like or directly competitive articles in

the United States, and United States consumers." 19 U.S.C. §§ 1337(d), (f).

The Commission did not instruct the ALJ to issue a recommended determination

concerning the public interest in this investigation. See 19 C.F.R. § 210.50(b)(1).

Navico and OUII argue that the public interest factors do not preclude issuance of

remedial orders in this investigation. Navico Br. at 36; OUII Br. at 28-29. Garmin similarly

argues that an exclusion remedy would have little to no impact to consumers and the market

because Garmin would be able to redesign products to avoid infringement. Garmin Statement at

4/to

Garmin also argues in its public interest statement that the RD's remedy is too broad because it would exclude head units that are imported without transducers and thus cannot, at the time of (continued on next page)

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P U B L I C VERSION

The Commission did not receive any post-RD public interest comments from the public.

The Commission finds no evidence in the record that a limited exclusion order and cease

and desist orders would have an adverse impact on the public health and welfare, competitive

conditions in the United States economy, the production of like or directly competitive articles in

the United States, or United States consumers. Accordingly, the Commission finds that the

statutory public interest factors do not preclude issuance of its remedial orders.

4. Bonding

I f the Commission enters an exclusion order, a respondent may continue to import and

sell its products during the 60-day period of Presidential review under a bond in an amount

determined by the Commission to be "sufficient to protect the complainant from any injury."

19 U.S.C. § 1337(j)(3); see also 19 C.F.R. 210.50(a)(3). When reliable price information is

available in the record, the Commission has often set the bond in an amount that would eliminate

the price differential between the domestic product and the imported, infringing product. See

Certain Microsphere Adhesives, Processes for Making Same, and Products Containing Same,

Including Self-stick Repositionable Notes, Inv. No. 337-TA-366, USITC Pub. 2949, Comm'n

Op. at 24 (Jan. 16, 1996). The Commission also has used a reasonable royalty rate to set the

bond amount where a reasonable royalty rate could be ascertained from the evidence in the

record. See, e.g., Certain Audio Digital-to-Analog Converters and Products Containing Same,

Inv. No. 337-TA-499, Comm'n Op. at 25 (Mar. 3, 2005). Where there is insufficient evidence in

the record to determine a reasonable royalty and the record establishes that the calculation of a

importation, infringe the asserted patents. Garmin Statement at 1-2. Garmin's argument does not explain how this assertion relates to the public interest factors enumerated in section 337(d) and (f). The Commission, thus, has not considered this argument in assessing the public interest in its analysis.

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P U B L I C VERSION

price differential is impractical, the Commission has imposed a 100 percent bond. See, e.g.,

Certain Liquid Crystal Display Modules, Products Containing Same, and Methods Using the

Same ("Liquid Crystal Display Modules"), Inv. No. 337-TA-634, Comm'n Op. at 6-7 (Nov. 24,

2009). The complainant bears the burden of establishing the need for a bond. Certain Rubber

Antidegradants, Components Thereof, and Products Containing Same, Inv. No. 337-TA-533,

USITC Pub. No. 3975, Comm'n Op. at 40 (July 21, 2006).

The RD recommended that the Commission impose a bond at a reasonable royalty of

eight percent for each infringing device imported during the period of presidential review. ID at

311. The RD concluded that a bond based on a price differential is not feasible because several

of Garmin's accused products are not comparable to Navico's products due to several feature

differences, such as internal GSP antennas, display content, screen size, and touch screen

capability. Id. at 309-10. The RD noted that the substantial price difference between some

products supports a finding that Garmin's accused products are not comparable to Navico's

products. Id. at 311. The RD stated that some of Garmin's and Navico's products appear to be

comparable, but noted that U.S. Customs and Border Protection prefers a single bond rate for all

accused products. Id, at 309-10 n.53. The RD thus recommended the imposition of a bond

based on a reasonably royalty, namely, eight percent for each infringing device, [

] . M a t 3 1 1 .

The RD further found that the smallest patent-practicing unit is "a multi-component product, for

example, the sonar assembly including the transducer and the claimed 'sonar signal processor'

located inside of the GPSMAP 1040xs" and therefore concluded that the bond rate should not be

applied to only the transducer. Id.

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P U B L I C VERSION

Before the ALJ, Navico proposed various bond amounts based on the evidence presented.

Based on a comparison of pricing data for the accused products and the "closest competing"

Navico's domestic industry products, Navico proposed a bond of 28.5 percent of the imported

product value of each of the accused products or, alternatively, an amount of $50 per unit for the

echo and echoMap products and 36.3 percent of the imported value of each of the GPSMAP

products. Id. at 301-03. With respect to Garmin's standalone sonar modules or transducers,

Navico proposed a bond of 100 percent. Id. at 301-02. Navico argued that a bond of eight

percent should be implemented only i f its proposed price comparisons are not feasible. Id. at

303. Finally, Navico argued that, i f any of this information is contested or not sufficient to

determine a bond rate, a bond rate of 100 percent is appropriate. Id. at 303-04.

Contrary to its initial arguments, Navico now argues that, i f calculating a price

differential is not feasible, "the floor should not be the ALJ's recommended 8% bond." Navico

Br. at 35. [

].41 Id. Navico thus argues that

the appropriate bond rate is 100 percent. Id.

Before the ALJ, Garmin did not challenge the reliability of Navico's pricing data, but

instead argued that a bond based on a pricing differential theory is not warranted because

Navico's and Garmin's products are not comparable due to different features. ID at 304-05.

Garmin noted that certain of the accused products are "potentially comparable" to Navico's

products but that those products are priced the same or higher than Navico's products. Id. at 304.

Garmin argued that the appropriate bond is eight percent of the sale price of each of Garmin's

4 1 Navico does not appear to have presented this argument previously and also does not cite any supporting authority.

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PUBLIC VERSION

three imported transducers. Id. Garmin argued that an eight percent bond, i f adopted, should not

be applied to the accused head units imported and sold with or without a transducer. Id. at 305.

Garmin argued that the bond rate should be applied to "smallest salable patent-practicing unit

[/. e., the imported transducers] or[,] for multi-component products containing non-infringing

features (like the bundled display and transducer products), the portion of the value of that

product that is attributable to the patented technology." Id. at 305-06. Garmin argued that a

bond of 100 percent is not appropriate for Garmin's transducers and blackbox products because

an effective alternative for calculating the bond is available and because a 100 percent bond

would effectively prevent importation during the period of Presidential review. Id, at 308.

Before the Commission, [

] . Garmin Resp. at 19. According to Garmin, i f a

reasonable royalty analysis were conducted, apportionment as required by patent damages law

would result in a royalty rate that is far less than eight percent for the imported system as a

whole. Id. Garmin argues that: "No such analysis has been made and thus there is no basis to

say than an 8% bond applied to the transducers alone would not adequately protect

Complainants; certainly, any royalty would . . . have to be adjusted downward to reflect the

numerous other non-accused functionalities present in the Garmin chartplotters and other head

units " Id, at 20.

OUII agrees with the recommendation that the bond should be eight percent and that the

bond rate should not be applied to only the transducer. OUII Br. at 29-30.

The Commission agrees with the RD that a bond based on a pricing differential is not

feasible. A meaningful price comparison would be difficult to perform because Garmin's and

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P U B L I C VERSION

Navico's products have different features. See, e.g., Liquid Crystal Display Modules, Comm'n

Op. at 6-7 (finding calculation of a price differential impractical due to number of products sold

by the parties and variety of product features).

As for a reasonable royalty, the Commission finds the record evidence lacking. [

] Neither do the parties cite the actual license in

any of the posthearing briefs or briefs to the Commission, or otherwise provide the Cornmission

any means to review the license's provisions.

Without the license in the record, the Commission cannot determine whether there is an

established royalty rate for the products at issue based on a comparable license. In Certain High-

Brightness Light Emitting Diodes and Products Containing Same, the Commission declined to

set a bond based on a royalty rate in a prior license agreement between the complainant and the

respondent in part because the RD had found a significant difference between the licensed

products and the products at issue in the investigation. Inv. No. 337-TA-556, USITC Pub. No.

4011, Comm'n Op. at 30-31 (May 30, 2007). Finding no effective alternative, the Commission

RX-871C is not part of the record evidence. See Filed Joint Exhibit List. Navico's October 8, 2014 objections and response to Garmin's interrogatory numbers 21-29 instead is listed as RX-803C.

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P U B L I C VERSION

set a bond of 100 percent. Id. at 32. The Commission is faced with similar circumstances here.

The Commission notes Garmin and OUII do not challenge, but rather request, setting a bond

based [ ] . In doing so,

they essentially ask the Commission to apply a royalty rate [

] not comparable to the imported

Garmin products.

Also, without the license, the Commission cannot determine whether the eight percent

royalty rate should be applied to the value of the transducer alone for all accused products, as

argued by Garmin, or the value of the entire multi-component product including the transducer

and sonar signal processor, as argued by OUII and recommended by the RD. 4 3 Because Navico

sells both standalone components and multi-component products similar to Garmin, the license

might or might not have addressed the very issues that Garmin and OUII raise.

Garmin notes that apportionment is required, but acknowledges that such analysis has not

been done in this investigation. Nor does Garmin provide evidence of similar apportionment in

the Navico license. Even i f the eight percent royalty rate were applied to the "smallest salable

patent-practicing unit" and apportioned accordingly to the entire product, none of the standalone

transducers practice the asserted patents. Of the three asserted patents, the claims of only the

'550 patent cover standalone transducers. E.g., JX-2, claim 1. Although the Commission found

infringement of certain claims of the '550 patent by Garmin's GT30 DownVii/SideVu

Neither the RD nor OUII stated what bond should apply to the components that Garmin imports.

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PUBLIC VERSION

transducer, that transducer is imported with the GCVIO sonar module. See supra at 44. The

Commission has not found infringement as to the '550 patent by any standalone transducer.44

The RD appeared to acknowledge that apportionment as to the infringing features is

generally required, but recommended against apportionment and the imposition of a different

bond for the multi-component product solely on the basis of U.S. Customs and Border

Protection's preference for a single bond. ID at 311-12 n.54. The RD's reason against requiring

apportionment is contrary to Commission practice as the Commission has set different bond

amounts for different infringing products where warranted by the record evidence. See, e.g.,

Certain Protective Cases and Components Thereof, Inv. No. 337-TA-780, USITC Pub. No.

4405, Comm'n Op. at 31-33 (Nov. 19, 2012) (settings bonds for various products at zero percent

to 331.80 percent of entered value based on price differential between complainant's and

respondent's products); Certain Baseband Processor Chips and Chipsets, Transmitter and

Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, Including

Cellular Telephone Handsets, Inv. No. 337-TA-543, Comm'n Op. at 159-60 (June 19, 2007)

(setting bond at 100 percent of entered value of chips and 5 percent of entered value of handheld

devices incorporating chips).

The record establishes that the calculation of a price differential is impractical and that

there is insufficient evidence in the record to determine a reasonable royalty. Accordingly,

consistent with Commission practice, the Commission sets a bond in the amount of 100 percent

of the entered value of the respondents' infringing products during the period of Presidential

review. See Liquia1 Crystal Display Modules, Comm'n Op. at 6-7.

The accused products include standalone transducers. ID at 5; see supra at 29, 45 n.19.

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P U B L I C VERSION

IV. CONCLUSION

The Commission finds a violation of section 337 with respect to the '840 and '550

patents and finds no violation with respect to the '499 patent. The Commission adopts all

findings and conclusions in the final ID that are not inconsistent with this opinion.

By order of the Commission.

Lisa R. Barton Secretary to the Commission

Issued: January 6, 2016

90

CERTAIN MARINE SONAR IMAGING D E V I C E S , Inv. No. 337-TA-921 INCLUDING DOWNSCAN AND SIDESCAN D E V I C E S , PRODUCTS CONTAINING T H E SAME, AND COMPONENTS T H E R E O F

PUBLIC C E R T I F I C A T E OF S E R V I C E

I , Lisa R. Barton, hereby certify that the attached COMMISSION OPINION has been served by hand upon the Commission Investigative Attorney, Peter J. Sawert, Esq., and the following parties as indicated, on January 7, 2016.

Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436

On Behalf of Complainants Navico, Inc. and Navico Holding AS:

M. Scott Stevens, Esq. ALSTON & BIRD L L P 950 F Street, NW Washington, DC 20004

On Behalf of Respondents Garmin International, Inc., Gai min USA, Inc., and Garmin Corporation:

Nicholas Groombridge, Esq. PAUL, WEISS, RIFKIND, WHARTON & GARRISON L L P 1285 Avenue of the Americas New York, NY 10019

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