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14 June 2017Patents

Federal Circuit overturns ITC order on Garmin import ban

The US Court of Appeals for the Federal Circuit has overturned an order by the US International Trade Commission (ITC) that barred the import and sale of certain sonar products made by technology company Garmin International.

Yesterday, June 13, the Federal Circuit  reversed in part a final determination by the ITC which had led to an import ban.

In a final determination, the ITC found that Garmin had infringed US patent numbers 8,305,840 and 8,605,550, that some of the asserted claims were invalid, and that US patent number 8,300,499 was not infringed.

Navico, a developer of marine electronics, owns the patents.

The ‘840 patent is called “Downscan imaging sonar” and discloses sonar systems for providing images of the sea floor beneath a vessel, while the ‘550 patent of the same name is issued from a continuation application of the ‘840 patent and contains the same specification.

Navico filed a section 337 petition with the ITC in June 2014, alleging that Garmin’s importation and sale of its DownVü marine sonar imaging products infringed the three patents.

The investigation was initiated in July 2014, and, in December 2015, the ITC issued its final determination, finding that Garmin’s DownVü products infringed the ‘840 and ‘550 patents, but not the ‘499 patent.

The final determination also reversed an initial finding that claims 1, 7, 12, 13 and 57 of the ‘550 patent were valid.

“Because the ITC’s findings with respect to validity and infringement of certain claims of the ‘840 and ‘550 patents were not supported by substantial evidence, we reverse the ITC’s final determination in part,” said  Circuit Judge Jimmie Reyna, on behalf of the court.

According to the Federal Circuit, all of the patents’ disputed claims would have been obvious in light of prior art, which comprised a 1960 article by Tucker called “Narrow-beam echo-ranger for fishery and geological investigations” and US patent number 7,652,952 (Betts), titled “Sonar imaging system for mounting to watercraft”.

Reyna said: “Since every element of the asserted claims is present in the combination of Tucker and Betts, and because there was a motivation to combine these elements, these claims are rendered obvious.”

The Federal Circuit held that claims 1, 5, 7, 9, 11, 16–19, 23, 32, 39–41, 63, and 70–72 of the ‘840 patent and claims 32 and 44 of the ‘550 patent are rendered obvious by the combination of Tucker and Betts, and reversed the decision.

“The court’s sweeping decision, finding that Navico’s downscan technology was an obvious modification of old sonar systems, puts an end to Navico’s unfounded and vicious patent war against Garmin,” said Andrew Etkind, Garmin’s vice president and general counsel.

He added that the decision eliminates the ongoing disputes at the ITC, and “renders Navico’s other lawsuits in Oklahoma and Texas without merit”.

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