United States Court of Appeals
for the Federal Circuit
__________________________
PASS & SEYMOUR, INC.,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
AND
GENERAL PROTECHT GROUP, INC.,
Intervenor,
AND
WENZHOU TRIMONE SCIENCE & TECHNOLOGY
ELECTRIC CO., LTD.,
Intervenor,
AND
SHANGHAI ELE MANUFACTURING
CORPORATION,
Intervenor.
__________________________
2009-1338, -1369
__________________________
On appeal from the United States International Trade
Commission in Investigation No. 337-TA-615.
PASS & SEYMOUR v. ITC 2
__________________________
DECIDED: August 27, 2010
__________________________
MARK J. ABATE, Goodwin Procter LLP, of New York,
New York, argued for appellant. Of counsel were ANKUR
P. PAREKH, ANDREW N. STEIN, CALVIN E. WINGFIELD, JR.;
JENNIFER A. ALBERT of Washington, DC; and CHARLES H.
SANDERS, of Boston, Massachusetts. Of counsel on the
brief were GEORGE R. MCGUIRE and DAVID L. NOCILLY,
Bond, Schoeneck & King, PLLC, of Syracuse, New York.
PAUL M. BARTKOWSKI, Attorney, Office of the General
Counsel, United States International Trade Commission,
of Washington, DC, argued for appellee. With him on the
brief were JAMES M. LYONS, General Counsel, and WAYNE
W. HERRINGTON, Assistant General Counsel.
WILLIAM F. LONG, Sutherland Asbill & Brennan LLP,
of Atlanta, Georgia, argued for intervenor General Pro-
techt Group, Inc. With him on the brief were ANN G.
FORT and JOSHUA D. CURRY.
REECE W. NIENSTADT, Mei & Mark LLP, of Washing-
ton, DC, argued for intervenor Wenzhou Trimone Science
& Technology Electric Co., Ltd. With him on the brief
was LEI MEI.
TONY D. CHEN, Caywin Law Group, of Los Angeles,
California, argued for intervenor Shanghai Ele Manufac-
turing Corporation.
__________________________
3 PASS & SEYMOUR v. ITC
Before NEWMAN, DYK, and PROST, Circuit Judges.
Opinion for the court filed by Circuit Judge PROST.
Opinion concurring in the judgment filed by Circuit Judge
NEWMAN.
PROST, Circuit Judge.
This appeal challenges a holding by the International
Trade Commission (“Commission”) that certain accused
products produced by General Protecht Group, Inc. (“Gen-
eral Protecht” or “GPG”), Wenzhou Trimone Science and
Technology Electric Co., Ltd. (“Trimone”), and Shanghai
ELE Manufacturing Corporation (“ELE” and collectively
“defendants”) do not infringe certain asserted patents
held by Pass and Seymour, Inc. (“P&S”). The Commission
found that the asserted patents at issue here were not
infringed, and accordingly it found no violation of section
337 of the Tariff Act of 1930, as amended. See 19 U.S.C.
§ 1337. We agree with the claim construction and in-
fringement analysis of the Commission pertinent here,
and thus affirm the judgment.
BACKGROUND
The asserted patents and accused products at issue
here relate to circuit interrupters for use with household
electrical appliances. Such circuit interrupters are typi-
cally recognized by the characteristic “test” and “reset”
buttons on household electrical outlets. The asserted
patents, U.S. Patents Nos. 5,594,398 (“’398 patent”) and
7,212,386 (“’386 patent”), are directed to improved safety
features for circuit interrupters to protect users from
electrical shock and protect appliances from electrical
damage. As relevant here, the products accused of in-
fringing the ’398 patent are General Protecht’s 2003
devices and Trimone’s 2006 devices. The products at
PASS & SEYMOUR v. ITC 4
issue here accused of infringing the ’386 patent are ELE’s
2003 and 2006 devices, General Protecht’s 2003 and 2006
devices, and Trimone’s 2006 devices.
The ’398 patent relates to improved ground fault cir-
cuit interrupters (“GFCIs”). GFCIs are common devices
that protect users from electrical shocks when they are
operating appliances plugged into household electrical
outlets. Such electrical shocks are caused by ground
faults, in which current from the electrical outlet escapes
the appliance and travels through the body of the user to
the ground. GFCIs operate by detecting a difference in
electrical current flowing into and out of the connected
appliance, then opening the circuit to disrupt the flow of
electrical current from the service panel to the appliance.
The asserted independent claim of the ’398 patent
reads, in relevant part:
1. A ground fault interrupter (gfi) wiring device
for connection in an electrical circuit, said device
comprising:
a) housing means defining the enclosed space;
b) at least one pair of electrical terminals fixedly
supported in spaced relation with said enclosed
space;
c) a unitary, electrically conducting member carry-
ing a pair of spaced electrical contacts;
d) mounting means for said conducting member to
permit movement thereof between a first position,
wherein said pair of contacts are in respective, cir-
cuit making engagement with said pair of termi-
nals, and a second position, wherein both of said
5 PASS & SEYMOUR v. ITC
pair of contacts are in spaced, circuit-breaking re-
lation to said pair of terminals;
e) biasing means urging said conducting member
toward movement to said second position;
f) latching means releasably retaining said con-
ducting member in said first position; and
g) actuating means for releasing said latching
means to permit said biasing means to move said
conducting member to said second position in re-
sponse to a predetermined fault condition in said
electrical circuit.
’398 patent col.13 ll.24-46 (emphases added).
The other asserted patent, the ’386 patent, relates to
a device that protects users and appliances from damage
caused by miswiring. The device generates different
types of signals in response to different operating condi-
tions. For example, the device generates a “wiring state
detection signal” signal when at least one line is con-
nected to a source of AC power. The device generates a
“fault detection signal” in response to electrical current
escaping the appliance.
The asserted claim of the ’386 patent, reads in rele-
vant part:
1. An electrical wiring protection device compris-
ing:
a housing assembly including at least one line
terminal and at least one load terminal partially
disposed therein;
PASS & SEYMOUR v. ITC 6
a first conductive path electrically coupled to the
at least one load terminal, the second conductive
path being connected to the first conductive path
in a reset state.
a fault detection circuit coupled to the first con-
ductive path; the fault detection circuit being con-
figured to generate a fault detection signal in
response to detecting at least one fault condition;
[e] a wiring state detection circuit coupled to the
first conductive path, the wiring state detection cir-
cuit selectively providing a wiring state detection
signal when the at least one line terminal is cou-
pled to a source of AC power;
[f] an actuator assembly configured to provide an
actuator signal in response to the fault detection
signal or the wiring state detection signal; and
[g] a circuit interrupter coupled to the actuator as-
sembly, the circuit interrupter being configured to
disconnect the first conductive path from the sec-
ond conductive path in response to the actuator
signal in the reset state.
’386 patent col.14 ll.43-67 (emphases added).
The asserted claims were initially construed and com-
pared to the accused devices at issue here by an adminis-
trative law judge. The administrative law judge adopted
P&S’s proposed claim constructions of the disputed claim
terms, and found that the defendant’s products at issue
here infringed the claims as construed. On review, the
Commission modified the administrative law judge’s
constructions of certain terms and found that the accused
devices did not infringe the construed claims as modified.
7 PASS & SEYMOUR v. ITC
See In re Certain Ground Fault Circuit Interrupters and
Products Containing Same (“Commission Op.”), Inv. No.
337-TA-615 (Int’l Trade Comm’n Mar. 9, 2009). P&S
timely appealed to this court, challenging the Commis-
sion’s claim constructions and resultant findings of nonin-
fringement for the asserted claims of both the ’398 and
’386 patents. 1 We have jurisdiction under 19 U.S.C. §
1337.
DISCUSSION
We review the Commission’s final determination of a
violation of § 337 under the standards of the Administra-
tive Procedure Act. See 19 U.S.C. § 1337(c). This court
reviews the Commission’s legal determinations de novo
and its factual findings for substantial evidence. 5 U.S.C.
§ 706(2)(A), (E); see also Honeywell Int’l, Inc. v. Int’l Trade
Comm’n, 341 F.3d 1332, 1338 (Fed. Cir. 2003). The
Commission’s claim construction is reviewed de novo. See
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979
(1995) (en banc). Our review of the Commission’s findings
of fact with respect to the structure and functionality of
the accused products is deferential. See Bose Corp. v.
Consumers Union of United States, 466 U.S. 485, 498, 501
(1984).
The ’398 Patent
In its initial decision, the administrative law judge
adopted P&S’s proposed claim construction for the dis-
puted term, “mounting means for said conducting member
to permit movement thereof between a first position,
1 GPG, Trimone, and ELE also appealed. In a
separate opinion released today, General Protecht Group,
Inc. v. Int’l Trade Comm’n, Nos. 2009-1378, -1387, -1434,
we address that appeal.
PASS & SEYMOUR v. ITC 8
wherein said pair of contacts are in respective, circuit
making engagement with said pair of terminals, and a
second position, wherein both of said pair of contacts are
in spaced, circuit-breaking relation to said pair of termi-
nals.” The administrative law judge found that the claim
was satisfied if either of the two contacts was moved into
a spaced, circuit-breaking second position, because collec-
tively, “both” contacts would be in a position that resulted
in the circuit breaking.
The administrative law judge also adopted P&S’s pro-
posed construction of the disputed term, “a unitary,
electrically conducting member carrying a pair of spaced
electrical contacts.” The term was construed to mean “a
member that provides an electrical current carrying path
between two or more spaced contacts.” The administra-
tive law judge found that this construction was consistent
with the specification and rejected defendants’ argument
that the structure be limited to a “buss bar.” A buss bar
is an I-shaped component known in the electrical engi-
neering field and depicted in the patent as an embodi-
ment of the claimed member.
On review, the Commission found that the adminis-
trative law judge’s constructions did not give meaning to
the claim limitations that “both” contacts be in a spaced,
circuit-breaking second position and that the electrically
conducting member be “unitary” and “carry” the pair of
spaced contacts. The Commission found that the plain
language of the claim required a construction of “both”
that was not satisfied by the movement of only one con-
tact. See Commission Op. at 9. It also found that the
specification required construing “unitary” to mean that
the member was a single, continuous piece and that both
contacts are disposed on the same member. See id. at 5-6.
9 PASS & SEYMOUR v. ITC
Based on its modifications to the administrative law
judge’s claim constructions, the Commission reversed the
administrative law judge’s initial decision and held that
the products did not infringe the ’398 patent. The Com-
mission noted that only one of the contacts in the accused
devices moves into a spaced, circuit breaking second
position, and that the electrical contacts for some of the
accused products are carried on separate metal plates
connected by a braided wire.
We agree with the Commission that the proper con-
struction of the term “mounting means for said conduct-
ing member to permit movement thereof between a first
position, wherein said pair of contacts are in respective,
circuit making engagement with said pair of terminals,
and a second position, wherein both of said pair of con-
tacts are in spaced, circuit-breaking relation to said pair
of terminals” requires that each of the contacts moves
from its first position into a spaced, circuit breaking
relation with respect to each of its respective terminals.
P&S argues that the claim should be interpreted to
simply require that the contacts in the second position be
spaced such that the circuit is broken. According to P&S,
this limitation would be satisfied as long as either one of
the contacts was moved into spaced, circuit-breaking
position, since “both” contacts collectively would be in a
“second position” that results in the circuit breaking.
We reject this argument. The plain language of the
claim requires that both of the pair of contacts move into
spaced, circuit-breaking relation to the terminals. If P&S
wanted its claim to read on devices where only one con-
tact moved into spaced, circuit-breaking relation to the
terminals, then it could have written its claim to read,
PASS & SEYMOUR v. ITC 10
“wherein at least one of said pair of contacts is in spaced,
circuit-breaking relation to said pair of terminals.”
The Commission found that the corresponding con-
tacts in the defendants products at issue here do not both
move into a spaced second position. Id. at 10. It therefore
concluded that the accused products did not meet the
literal claim requirements or perform the stated function
of the “mounting means” limitation. See 35 U.S.C. § 112,
¶ 6. We see no error in this factual finding.
We also agree with the Commission that the proper
construction of the limitation “a unitary, electrically
conducting member carrying a pair of spaced electrical
contacts” must give meaning to “unitary.” The plain
meaning of the term “unitary,” which modifies “electri-
cally conducting member,” denotes a single, continuous
structure. The specification and prosecution history
confirm that this plain meaning is appropriate in the
context of this claim limitation. See Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc).
For example, the specification teaches that “unitary”
refers to the nature of the member’s physical structure,
not just its electrical relationship with the two contacts.
Similarly, the Summary of the Invention describes the
member as being “rigid” and “in the nature of [a] buss
bar.” ’398 patent col.1 ll.56-61. Both descriptions refer to
the member’s physical characteristics; both imply a single
structural unit. Additional description in the summary,
which explains how the member moves and interacts with
other parts of the device, also reveals that the inventor
only contemplated a single structural unit. See e.g., id.
col.1 l.62-col.2 l.13.
11 PASS & SEYMOUR v. ITC
Contrary to P&S’s arguments, this requirement of a
unitary structure does not improperly confine the claim
scope to a buss bar, or a member cast from a single die or
molded from a single piece of metal. A unitary structure
may contain layers or be formed by an additive process, so
long as the resulting product has the physical character of
a single unit. Since the claim language requires that a
unitary member carries the pair of electrical contacts, the
Commission correctly construed the term to require that
both electrical contacts are disposed on the same unitary
member.
We also agree with the Commission that General Pro-
techt’s 2003 devices do not meet the properly construed
claim limitation of “a unitary, electrically conducting
member.” The electrical contacts on these devices are
supported on separate plates of metal, connected only by a
braided wire. It is not enough that the wire is perma-
nently welded to each of the two plates, such that the
configuration of units creates a conductive path between
the two contacts that carries current as though it were a
single conducting unit. The claim language requires that
the conducting member carrying the pair of contacts
actually be a single conducting unit.
Because the accused products at issue here do not
meet the “mounting means” limitation as properly con-
strued, and thus do not meet every limitation of the
asserted claims, there can be no infringement. See War-
ner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 15,
29 (1997). That some of the accused products also fail to
meet the “a unitary, electrically conducting member”
limitation as properly construed provides additional
reason why those accused products do not infringe. See
id.
PASS & SEYMOUR v. ITC 12
The ’386 Patent
The administrative law judge held that the claim
term, “circuit interrupter coupled to the actuator assem-
bly, the circuit interrupter being configured to disconnect
the first conductive path from the second conductive path
in response to the actuator signal in the reset state” did
not require construction and could be analyzed according
to its plain meaning. The administrative law judge noted,
however, that the circuit interrupter need only trip in
response to an actuator signal generated by a fault in the
reset state; it need not trip in response to a wiring state
detection signal in the reset state.
On review, the Commission mostly agreed with the
administrative law judge, though it noted that the
claimed circuit interrupter had to be configured to trip in
response to the actuator signal in the reset state. Since
the asserted claim requires the actuator assembly to
generate an actuator signal in response to the wiring
state detection signal, it follows that generation of a
wiring state detection signal ultimately causes the circuit
interrupter to trip when in the reset state. Commission
Op. at 18. The specification teaches that a wiring state
detection signal is generated when the device is properly
wired. Accordingly, under the Commission’s interpreta-
tion of the claim the patented device must be configured
to trip in response to a signal that the device is properly
wired. Id. In so holding, the Commission acknowledged
that such a claim requirement was not perfectly logical,
and may have been the result of a claim drafting error.
Id. Under the Commission’s construction, the devices at
issue were found not to infringe.
On appeal, P&S challenges the Commission’s inter-
pretation by arguing that the claim does not require the
13 PASS & SEYMOUR v. ITC
device be configured to provide a wiring state detection
signal in both the tripped and reset states. According to
P&S, the relevant claim limitations are satisfied by a
device configured to provide a fault detection signal in the
reset state, even if it is not configured to provide a wiring
state detection signal in the reset state. As P&S admits,
a device configured in this way would never trip in re-
sponse to a wiring state detection signal in the reset state,
because no such triggering signal would be generated in
that state. Rather, it would only trip in response to a
fault detection signal in the reset state. P&S argues that
the claim as drafted is perfectly logical, and that the
Commission’s reinterpretation and characterization to the
contrary merely betray a misunderstanding of the claim
language.
We disagree. The plain language of claim 1 of the
’386 patent requires that the circuit interrupter be con-
figured to trip in response to an actuator signal in the
reset state. The wiring state detection circuit and the
actuator assembly claim elements do not contain limita-
tions as to the circuit state. These components of the
device must therefore generate their respective signals at
least once, without regard to the state of the device (i.e.,
reset or tripped). Construing this limitation to require
generation of an actuator signal without respect to the
state of the device does not conflict with any other limita-
tions of the claim. For instance, if a wiring state detec-
tion signal is generated in the reset state, then it will
trigger an actuator signal, which will then trip the device.
If such a signal is generated in the tripped state, it will
again trigger the actuator signal. The actuator signal will
not engage the circuit interrupter, of course, because the
device is already tripped.
PASS & SEYMOUR v. ITC 14
P&S’s objection to the Commission’s construction
primarily relies on a statement in the specification that
the wiring state detection circuit operates when the line
terminal is powered and the appliance is properly wired,
and not when it is improperly wired. See ’386 patent
col.12 ll.27-30. P&S argues that it makes no sense to
require a miswiring protection device be configured to trip
a properly wired appliance and not an improperly wired
appliance. The plain language of the claims, however,
does not allow for an exception to this consequence, and
the intrinsic evidence of record supports the Commission’s
construction. The specification contemplates embodi-
ments in which the wiring state detection signal trips the
device in the reset state only once, until a fuse or resistor
is burned out. See id. col.7 l.59-col.8 l.15.
P&S’s claim differentiation argument, which relies on
a comparison to claim 9, is also unavailing. Claim 9
requires that the device generate a wiring state detection
signal during the transition between the tripped state and
the reset state, in response to the user pressing the reset
button. Id. col.15 ll.29-62. Under the plain language of
claim 9, this signal may be generated while the device is
completing the transition between states, and thus before
it has entered the reset state. This limitation in claim 9
is not present in the claim asserted here, claim 1. Claim
1 is broader. It reads on a device configured to generate a
wiring state detection signal in both the tripped and reset
states. Moreover, just like asserted claim 1, claim 9
requires the device to trip in response to a wiring state
detection signal in the reset state. See id. col.15 ll.45-60.
The problem of the device tripping when properly wired
therefore affects claim 9 and claim 1 alike.
The argument that the transition term of the claim is
open-ended likewise does P&S no good. Even though the
15 PASS & SEYMOUR v. ITC
device may include additional wiring state detection
circuits that generate signals only in the tripped state, it
must still contain at least one wiring state protection
circuit that generates a signal at least once when power is
applied, without respect to the state of the device. If the
accused products do not contain such a circuit, as the
Commission found, then they do not infringe. See War-
ner-Jenkinson Co., 520 U.S. at 29. We see no error in the
Commission’s findings on this point.
Accordingly, the claim construction and noninfringe-
ment findings of the Commission are affirmed, as is the
Commission’s resultant determination that the importa-
tion and sale of the defendant’s products into the United
States do not violate § 337 of the Tariff Act.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
__________________________
PASS & SEYMOUR, INC.,
Appellant,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
AND
GENERAL PROTECHT GROUP, INC.,
Intervenor,
AND
WENZHOU TRIMONE SCIENCE & TECHNOLOGY
ELECTRIC CO., LTD.,
Intervenor,
AND
SHANGHAI ELE MANUFACTURING
CORPORATION,
Intervenor.
__________________________
2009-1338,-1369
__________________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-615.
__________________________
PASS & SEYMOUR v. ITC 2
NEWMAN, Circuit Judge, concurring in the judgment.
I agree that infringement has not been shown as to the
’386 and the ’398 patents. For the ’398 patent, the Commis-
sion’s constructions of the “unitary member” and the
“mounting means” terms are correct; and since the accused
devices do not embody these limitations as construed in
light of the specification, I agree that infringement was
properly not found.
For the ’386 patent, the court has strayed from the
Commission’s correct rulings, although reaching the same
result of non-infringement. The court errs in construction
and application of the clause “circuit interrupter” in interac-
tion with the “actuator assembly,” for, as patentee P&S
points out, it makes no sense to interpret the claims as
requiring a miswiring protection device to trip a properly
wired device but not an improperly wired device. However,
I agree that the accused devices do not embody these limita-
tions as correctly construed by the Commission, and on this
basis I concur in the conclusion of non-infringement.
Claim construction requires conformity with the de-
scription of the invention in the specification. See Phillips
v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en
banc) (“[C]laims must be read in view of the specification, of
which they are a part.” (internal quotation omitted)); Multi-
form Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478
(Fed. Cir. 1998) (“The best source for understanding a
technical term is the specification from which it arose,
informed, as needed, by the prosecution history.”). The
claim clauses at issue are:
an actuator assembly configured to provide
an actuator signal in response to the fault
3 PASS & SEYMOUR v. ITC
detection signal or the wiring state detec-
tion signal; and
a circuit interrupter coupled to the actuator
assembly, the circuit interrupter being con-
figured to disconnect the first conductive
path from the second conductive path in re-
sponse to the actuator signal in the reset
state.
’386 patent claim 1, col.14 ll.61–67. The court holds that
these clauses require the circuit interrupter to trip in re-
sponse to a signal provided only when the device is properly
wired. See Maj. Op. at 13 (“As P&S admits, a device config-
ured in this way would never trip in response to a wiring
state detection signal in the reset state, because no such
triggering signal would be generated in that state.”); id. at
14 (“Moreover, just like asserted claim 1, claim 9 requires
the device to trip in response to a wiring state detection
signal in the reset state.”). The court’s understanding of the
claims as requiring tripping of the circuit whenever the
device is wired properly, is contrary to the purpose, func-
tion, and operation of the claimed device. 1 It is not the
claim that is not “logical,” Maj. Op. at 13; it is the claim
construction that defies the specification.
The Commission correctly concluded that “a device ‘con-
figured to disconnect’ in response to an actuator signal
1 In one embodiment described in the patent, the de-
vice will initially trip on installation whether it is properly
wired or miswired. See ’386 patent col.7 l.43–col.8 l.15. It is
not the “wiring state detection signal” – indicating proper
wiring – that causes the device to trip. Rather the wiring
state detection signal clears a resistor or fuse that disables
that part of the circuit, thus allowing the device to be reset
if properly wired.
PASS & SEYMOUR v. ITC 4
received in response to a wiring state detection signal in the
reset state need not actually generate a wiring state detec-
tion signal in the reset state, and therefore need not actu-
ally trip when properly wired (although it must be
configured to do so).” In re Certain Ground Fault Circuit
Interrupters and Prods. Containing Same, Inv. No. 337-TA-
615, slip op. at 18 (Int’l Trade Comm’n Mar. 9, 2009). The
majority’s construction is in conflict with this conclusion.
The specification describes embodiments in which, consis-
tent with the Commission’s construction, the wiring state
detection signal is not generated when the device is in the
reset state. See ’386 patent Figures 8–11 & col.13 l.50–
col.14 l.23. However, if the wiring state detection signal
were provided when the device is in the reset state, the
device would trip. 2 Claim 1 includes these embodiments.
I would adhere to the Commission’s construction, and
affirm the finding of non-infringement based on the sub-
stantial evidence relied upon by the Commission.
2 This is because, as seen for example in Figures 4
and 8 of the patent, there is only one solenoid to both move
the reset lockout mechanism (if the device is in the tripped
state) and trip the device (if it is in the reset state).