NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
NAVICO INC., NAVICO HOLDING AS,
Appellants
v.
INTERNATIONAL TRADE COMMISSION,
Appellee
GARMIN INTERNATIONAL, INC., GARMIN USA,
INC., GARMIN CORPORATION,
Intervenors
______________________
2016-1533
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-921.
______________________
Decided: June 13, 2017
______________________
MATTHEW S. STEVENS, Alston & Bird LLP, Charlotte,
NC, argued for appellants. Also represented by KIRK T.
BRADLEY, CHRISTOPHER CHARLES ZIEGLER.
LUCY GRACE D. NOYOLA, Office of the General Coun-
sel, United States International Trade Commission,
2 NAVICO INC. v. ITC
Washington, DC, argued for appellee. Also represented
by WAYNE W. HERRINGTON, DOMINIC L. BIANCHI.
NICHOLAS P. GROOMBRIDGE, Paul, Weiss, Rifkind,
Wharton & Garrison LLP, New York, NY, argued for
intervenors. Also represented by JENNIFER DIANE
CIELUCH, JENNIFER H. WU; DAVID J. BALL, JR., DAVID K.
STARK, Washington, DC.
______________________
Before PROST, Chief Judge, DYK, and REYNA, Circuit
Judges.
REYNA, Circuit Judge.
Navico Inc. and Navico Holding AS appeal from a Fi-
nal Determination of the United States International
Trade Commission that resulted in an exclusionary order
prohibiting importation of certain sonar imaging devices.
The Final Determination includes a finding of infringe-
ment of U.S. Patent Nos. 8,305,840 and 8,605,550, a
determination of invalidity for some of the asserted
claims, and a finding of noninfringement of U.S. Patent
No. 8,300,499. On appeal, Navico raises several challeng-
es to the Commission’s Final Determination. We affirm
the Commission’s decision in these challenged aspects.
BACKGROUND
1. Procedural History
On June 9, 2014, Navico filed a Section 337 petition
with the Commission alleging that Garmin’s importation
and sale of its DownVü marine sonar imaging products
infringed three Navico patents. 1 19 U.S.C. § 1337. On
1 Generally, section 337 establishes an administra-
tive investigation on whether the importation of certain
goods constitute an unfair trade act, i.e. infringement.
NAVICO INC. v. ITC 3
July 7, 2014, the Commission initiated a Section 337
investigation on imports of Garmin’s DownVü products. 2
An Administrative Law Judge (“ALJ”) conducted an
evidentiary hearing in March 2015. On July 2, 2015, the
ALJ issued a Final Initial Determination, finding no
violation of Section 337. The ALJ upheld the validity of
all asserted claims, but found no infringement. J.A. 98.
The ALJ contingently found direct and contributory
infringement in the event the Commission did not adopt
Garmin’s claim construction. Navico, Garmin, and the
Office of Unfair Import Investigations each petitioned the
Commission for review of the Initial Determination. On
September 3, 2015, the Commission agreed to review the
Initial Determination and invited further briefing.
On December 1, 2015, the Commission issued its Fi-
nal Determination reversing the Initial Determination in
part and finding that Garmin’s DownVü products in-
fringed the ’840 and ’550 patents. The Final Determina-
tion reversed the Initial Determination’s primary claim
construction for those two patents and adopted the Initial
Determination’s contingent finding of direct infringement.
The Final Determination also reversed the Initial Deter-
mination’s finding of validity as to claims 1, 7, 12, 13, and
57 of the ’550 patent. This appeal followed.
2. U.S. Patent No. 8,305,840
The ’840 patent is entitled “Downscan imaging sonar.”
It discloses sonar systems for providing images of the sea
floor beneath a vessel.
The remedy provided in Section 337 is the issuance of an
exclusionary order that prohibits the importation of the
goods deemed infringing.
2 Certain Marine Sonar Imaging Devices, Inv. No.
337-TA-921, 79 Fed. Reg. 40778–79 (July 14, 2014).
4 NAVICO INC. v. ITC
The ’840 patent discloses a sonar imaging device for
generating images of objects beneath a watercraft. The
patent discloses that the sonar images are generated via
transducers. A linear transducer directed downward
(“downscan transducer”) provides images of the water
column and bottom features directly below the vessel,
while transducers pointed toward the sides (“sidescan
transducers”) can be used to map the sea floor on the
sides of a vessel. ’840 patent col. 2 l. 65–col. 3 l. 13.
Instead of linear transducers, conventional circular
transducers with conical beams can also be used, alt-
hough these are said to “provide poor quality images for
sonar data relating to the structure on the bottom or in
the water column directly below the vessel.” Id. at col. 2
ll. 52–59.
Figure 15B illustrates the beam patterns formed by
downscan transducers. Circular transducers produce a
NAVICO INC. v. ITC 5
conical beam pattern with the same beamwidth (184) in
each dimension, whereas linear transducers produce a
fan-shaped beam which is wide in one dimension (beam-
width 188) and narrow in another (beamwidth 186).
Figure 12B shows example images produces by linear
(on the left) and circular (on the right) downscan trans-
ducers. The displays scroll across the horizontal axis as
the boat moves and plot the sonar data by depth on the
vertical axis. The patent describes the data from the
linear downscan transducers as unexpectedly more de-
tailed than that from the circular transducers, providing
detailed images of the water column below the vessel as
well as details of the bottom or structures resting on the
bottom. ’840 patent col. 14 ll. 5–12.
Although various embodiments are disclosed, the ’840
patent claims a sonar assembly with a single linear
downscan transducer that creates fan-shaped sonar
beams. Some of the asserted claims, such as claim 39,
additionally recite a circular transducer element.
6 NAVICO INC. v. ITC
3. U.S. Patent No. 8,605,550
The ’550 patent, also entitled “Downscan imaging so-
nar,” issued from a continuation application of the ’840
patent and contains the same specification. Instead of a
single linear downscan transducer, it claims three trans-
ducers, two of which are linear sidescan transducers and
one of which is a linear downscan transducer.
Figure 6 of the patent illustrates a top view of a
transducer array containing two linear sidescan trans-
ducers (labeled 60, on the left and right) and one linear
downscan transducer (also labeled 60, in the middle).
Figure 9A shows an example beam pattern of such a
system, with one beam directed downward from the
downscan transducer and one beam directed to each side
from the sidescan transducers.
The Commission’s decision found claims 1, 7, 12, 13,
and 57 obvious over a combination of the Betts and Tuck-
NAVICO INC. v. ITC 7
er references. Claim 1 is representative for the purposes
of this appeal. It claims:
1. A sonar transducer assembly, comprising:
a plurality of transducer elements, each one of the
plurality of transducer elements having a sub-
stantially rectangular shape configured to pro-
duce 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 direc-
tion 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 sub-
stantially parallel to each other, and
wherein the plurality of transducer elements in-
clude at least:
a first linear transducer element positioned with-
in a housing and configured to project sonar
pulses from a first side of the housing in a di-
rection substantially perpendicular to a center-
line 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 substan-
tially in a plane with the first linear transducer
element and is configured to project sonar puls-
es 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
8 NAVICO INC. v. ITC
a third linear transducer element positioned with-
in the housing and configured to project sonar
pulses in a direction substantially perpendicu-
lar to the plane defined by the first and second
linear transducer elements.
’550 patent col. 17 l. 39–col. 18 l. 3.
4. U.S. Patent No. 8,300,499
The ’499 patent is entitled “Linear and circular
downscan imaging sonar.” This patent is directed to
software that receives sonar data from different types of
transducers and combines that data into a single display.
’499 patent col. 3 ll. 12–15. This allows the sonar system
to receive high quality images relative to the water col-
umn and bottom features directly beneath the linear
transducer and the vessel on which the linear transducer
is employed and also employ a circular transducer to
provide greater sensitivity with respect to detecting small
objects in the water column. Id. at col. 3 ll. 4–9.
Claim 1 is representative for the purposes of this ap-
peal. It claims:
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 dif-
ferent fan-shaped regions of an underwater en-
vironment 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
NAVICO INC. v. ITC 9
longitudinal length of the linear downscan
transducer;
combining the linear downscan sonar data and the
conical downscan sonar data to produce com-
bined 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 water-
craft.
Id. at col. 17 ll. 34–55.
5. Tucker Prior Art
The Commission’s decision found some, but not all,
claims of the ’550 patent invalid over a combination of two
references. The first reference is a 1960 article by Tucker
entitled “Narrow-beam echo-ranger for fishery and geolog-
ical investigations.”
Tucker describes an “echo-ranger” designed to be usa-
ble both as a horizontal fish finder and a sea floor map-
per. J.A. 5323. This is because its transducer can be
adjusted to point either to the side (for the fish finder) or
downward (to map the sea bed). J.A. 5330. The article
provides a complete circuit diagram for Tucker’s echo
ranger. J.A. 5326–27. In particular, Figure 8 shows the
circuit diagram of the transmitter. The output stage
portion is reproduced below:
10 NAVICO INC. v. ITC
`
J.A. 5326. This diagram shows how transmitted pulses
enter through the connections labeled “X” and “Y” (which
come from the earlier stages of the transmitter), are
amplified by pentode vacuum tubes V5 and V6, and travel
through transformer TR3 to the transducer. Similarly,
echoes received through the transducer travel back
through transformer TR3, pass through resistor R27, and
are sent on to the receiver.
The receiver then takes the “input from transmitter,”
amplifies it using multiple amplifiers, and sends to “to
[the] recorder unit.” This circuitry is shown in Figure 9 of
Tucker.
NAVICO INC. v. ITC 11
J.A. 5327.
The recorder unit Tucker describes is a system for
producing a printed image of the collected data.
J.A. 5328. The picture is printed onto paper using a
“Mufax picture receiver,” a primitive form of printer that
reproduces analog data onto a sheet of paper. Tucker
shows example images of topography of various sea floors.
J.A. 5329.
6. Betts Prior Art
The second prior art reference cited by the Commis-
sion is U.S. Patent No. 7,652,952 to Betts, entitled “Sonar
imaging system for mounting to watercraft.” Betts dis-
closes a sonar system with side scanning and bottom
scanning elements. Betts describes two linear transduc-
ers that scan the water to the sides of a boat and two
circular transducers that scan the water below the boat.
12 NAVICO INC. v. ITC
The return signals received by the elements can be pro-
cessed through a software filter to remove noise.
Betts Fig. 8 (showing downscan circular transducers 54
and sidescan linear transducers 26).
DISCUSSION
1. Standard of Review
Under the Administrative Procedure Act, 5 U.S.C.
§ 706(2), we review the Commission’s factual findings for
substantial evidence, and the Commission’s legal deter-
minations de novo. See Spansion, Inc. v. Int’l Trade
Comm’n, 629 F.3d 1331, 1343–44, 1349 (Fed. Cir. 2010).
Under the substantial evidence standard, the court “must
affirm a Commission determination if it is reasonable and
supported by the record as a whole, even if some evidence
detracts from the Commission’s conclusion.” Spansion,
NAVICO INC. v. ITC 13
629 F.3d at 1344. This court may set aside the Commis-
sion’s choice of remedy only if it is legally erroneous,
arbitrary and capricious, or constitutes an abuse of discre-
tion. Fuji Photo Film Co. v. Int’l Trade Comm’n, 386 F.3d
1095, 1106 (Fed. Cir. 2004).
2. Contributory Infringement and Prospective Relief
In addition to Navico’s allegations of direct infringe-
ment by Garmin’s complete sonar systems, Navico also
alleged that Garmin contributorily infringed through its
sale of standalone transducers because it knew they were
specially made to be used in an infringing manner. The
Commission found there was no contributory infringe-
ment of various claims of the ’840 patent by Garmin’s
standalone transducers. J.A. 34. On this basis, the
Commission did not award Navico prospective relief for
future contributory infringement. Navico challenges
these findings of no contributory infringement.
Our decision today in a related case, Garmin Interna-
tional, Inc. v. International Trade Commission, No. 16-
1572, reverses the Commission’s finding of validity and
finds these patent claims invalid as obvious over the prior
art. Because the claims are invalid, there can be no
contributory infringement. Accordingly, we affirm the
Commission’s finding of no contributory infringement.
3. Obviousness
The Commission found claims 1, 7, 12, 13, and 57 of
the ’550 patent obvious. These claims are directed to
three linear transducer elements, two of which scan to the
sides and one of which scans downwards. The Commis-
sion, reversing the Initial Determination, found these
claims obvious based on a combination of the Betts and
Tucker references. J.A. 51–57. Betts describes two linear
transducers that scan the water to the sides of a boat and
two circular (not linear) transducers that scan the water
below the boat. J.A. 3674. Tucker describes a linear
14 NAVICO INC. v. ITC
transducer which can be adjusted to point “vertically
downwards.” J.A. 5323, 5330. By swapping Betts’ two
downward circular transducers for Tucker’s single down-
ward linear transducer, the Commission found that a
person of ordinary skill in the art would arrive at the ’550
patent’s invention.
The obviousness inquiry must “guard against slipping
into use of hindsight and . . . resist the temptation to read
into the prior art the teachings of the invention in issue.”
Graham v. John Deere Co., 383 U.S. 1, 36 (1966). Fur-
ther, “when a patent claims a structure already known in
the prior art that is altered by the mere substitution of
one element for another known in the field, the combina-
tion must do more than yield a predictable result.” KSR,
550 U.S. at 416. Similarly, § 103 usually bars patentabil-
ity when the improvement is nothing more than the
predictable use of prior art elements according to their
established functions. Id. at 417.
Obviousness is a question of law based on subsidiary
findings of fact relating to “the scope and content of the
prior art, differences between the prior art and the claims
at issue, the level of ordinary skill in the pertinent art,
and any objective indicia of non-obviousness.” Randall
Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)).
Whether there would have been a motivation to combine
multiple references is also a question of fact. S. Ala. Med.
Sci. Found. v. Gnosis S.p.A., 808 F.3d 823, 826 (Fed. Cir.
2015). If all elements of the claims are found in a combi-
nation of prior art references, as is the case here, the
factfinder should further consider whether a person of
ordinary skill in the art would be motivated to combine
those references, and whether in making that combina-
tion, a person of ordinary skill would have a reasonable
expectation of success. Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1164 (Fed. Cir. 2006).
NAVICO INC. v. ITC 15
Navico argues for reversal of the Commission’s find-
ing of obviousness on four grounds. First, Navico argues
that Tucker discloses sidescan, not downscan, sonar.
Thus, Navico argues, the Commission should not have
used Tucker as prior art for the downscan linear trans-
ducer component. However, the Commission found that
even though Tucker was largely a sidescan unit, Tucker
disclosed turning the unit vertically downwards into a
downscan unit. J.A. 39. In support of this finding, the
Commission cited Tucker’s statement that “when turned
vertically downwards it forms a powerful tool” and that
“[i]n some circumstances, the high resolution obtained
when used as a vertical sounder can be useful for study-
ing the topography of the sea bed.” J.A. 39, 5330. Tucker
even provides images of sea beds. J.A. 5329–30. Further,
the Commission repeatedly cited Dr. Vincent’s expert
testimony in support of obviousness. J.A. 40–42. The
statements in Tucker and Dr. Vincent’s testimony are
substantial evidence supporting the Commission’s finding
that Tucker discloses downscan sonar.
Second, Navico argues that the combination of Tucker
and Betts renders both references inoperable for their
intended purposes. See In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984) (finding that a modification which ren-
ders the invention inoperable for its intended purpose is
not obvious because it teaches away from the invention).
The Commission rejected this argument, noting that
configuring the transducer elements of Tucker as claimed
does not render it inoperable but rather is indicative of
the adjustability of the Tucker system. J.A. 44.
Navico argues that Tucker disclosed an adjustable
system, whereas Betts disclosed a system of simple, fixed
transducers. In Navico’s view, modifying either of the
Betts transducer elements, which are not configurable, to
be like the Tucker transducer would be a fundamental
redesign. The Commission’s finding, however, is support-
ed by substantial evidence. Tucker explicitly discusses
16 NAVICO INC. v. ITC
the value of pointing a transducer vertically downward, so
fixing a transducer in that position would have been
obvious. J.A. 5330. Nothing suggests that combining
Betts and Tucker would produce a system unable to
produce sidescan or downscan images. On the contrary,
the evidence suggests the combined system would be
capable of producing both images.
Third, Navico argues that there was no motivation to
combine the Tucker and Betts references. Navico sug-
gests that because Betts was a simple, fixed system and
Tucker was a complex, customizable system, there would
be no motivation to combine them. It “can be important
to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the ele-
ments in the way the claimed new invention does.” KSR,
550 U.S. at 418.
Here, the Commission correctly found that Tucker
provides a motivation to modify Betts to incorporate a
linear downscan transducer. J.A. 44. This motivation is
to obtain a high resolution image for studying the layers
in the sea and the topography of the sea bed. J.A. 5330.
There was substantial evidence to find such a motivation.
Tucker suggests that a transducer be pointed downwards
to obtain high resolution images of the sea bed. Id.
Fourth, Navico argues that the Commission consid-
ered the objective indicia of non-obviousness as a mere
afterthought after making a prima facie case. We have
held that such an analysis is improper, and a fact finder
must “consider all evidence relating to obviousness before
finding a patent invalid on those grounds.” In re Cyclo-
benzaprine, 676 F.3d 1063, 1075 (Fed. Cir. 2012). Objec-
tive indicia of non-obviousness are vital to an obviousness
determination and must be considered, not ignored as a
mere afterthought. See, e.g., Leo Pharm. Prods., Ltd. v.
Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“Whether
before the Board or a court, this court has emphasized
NAVICO INC. v. ITC 17
that consideration of the objective indicia is part of the
whole obviousness analysis, not just an afterthought.”); In
re Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011) (“[W]hen
secondary considerations are present, though they are not
always dispositive, it is error not to consider them.”);
Stratoflex v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed.
Cir. 1983); In re Depomed, Inc., No. 2016-1378, 2017 WL
676604, at *5 (Fed. Cir. Feb. 21, 2017) (Reyna, J., concur-
ring).
While the Commission’s Final Determination did dis-
cuss the objective indicia last, it devotes four pages to
their discussion and concluded that there was both posi-
tive and negative evidence in the objective indicia.
J.A. 54–57. The Commission stated that “these secondary
considerations do not overcome the strong prima facie
showing,” indicating that it properly conducted a two-part
test rather than ignoring the secondary considerations
altogether. We find the Commission properly considered
all relevant evidence. See In re Cyclobenzaprine, 676 F.3d
at 1075.
Because the Commission’s factual findings with re-
spect to obviousness are supported by substantial evi-
dence, and because its ultimate legal conclusion of
obviousness is correct, we affirm the Commission’s deter-
mination that claims 1, 7, 12, 13, and 57 of the ’550 patent
are obvious.
4. Claim Construction
Claim 1 of the ’499 patent recites in part “combining
the linear downscan sonar data and the conical downscan
sonar data to produce combined downscan sonar data.”
Other claims include similar limitations. The Commis-
sion’s Final Determination construed “combining” as “to
merge or to bring into union.” J.A. 74.
Claim construction is a question of law that may be
based on underlying factual determinations. Teva Pharm.
18 NAVICO INC. v. ITC
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 834 (2015).
Claim terms are generally given their ordinary and
customary meaning, which is the meaning a term would
have to a person of ordinary skill in the art after review-
ing the intrinsic record at the time of the invention.
Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d
1340, 1346 (Fed. Cir. 2008) (citing Phillips v. AWH Corp.,
415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)). The
specification is the single best guide to the meaning of a
disputed term, but “there is sometimes a fine line between
reading a claim in light of the specification, and reading a
limitation into the claim from the specification.” Id. at
1346–47. In some cases, the ordinary meaning may be
apparent, but in other cases, the meaning as understood
by a person of skill in the art is not readily apparent.
Phillips, 415 F.3d at 1314; see O2 Micro Int’l Ltd. v.
Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed.
Cir. 2008).
Navico argues that the meaning of “combining” is
broader, and that putting both types of data next to each
other constitutes “combining” for the purposes of the
claim. Under Navico’s interpretation, there is no need to
merge both types of data into a single composite image.
Navico contends that the plain meaning of “combin-
ing” includes using two things for a common purpose,
such as a combo meal at a restaurant which contains two
separate items. Navico further argues that the Commis-
sion’s construction of “combine” reads a disclosed embod-
iment out of the patent and renders a claim meaningless.
Figure 10 of the ’499 patent shows a screen with separate
display windows for each type of transducer data, dis-
played next to each other rather than merged. J.A. 524 at
col. 4, ll. 51–54; J.A. 524 at col. 12 ll. 28–41; J.A. 515.
Dependent claim 21 provides for the linear downscan
image data to be displayed in one window and conical
downscan image data to be displayed in another. J.A. 532
at col. 19, ll. 49–52. Because claim 21 depends from claim
NAVICO INC. v. ITC 19
1, which reads “rendering the combined downscan sonar
data,” and because it provides for the uncombined data to
be separately rendered, Navico argues that “combined”
sonar data must encompass this separately rendered
data.
J.A. 515 (’499 patent Fig. 10).
Reading the claims and specification as a whole, how-
ever, we find it clear that the claims refer to a system
where multiple display formats can be selected, some of
which include the “combined downscan sonar data,” and
some of which display individual sonar data separately.
Claim 19 makes this clear by setting forth a number of
display formats. Because all claims depend ultimately
from claim 1, all must be capable of rendering combined
downscan sonar data. But for claim 21, it must also be
possible to render separate, individual data. Just because
the claim comprises rendering data in one format does not
mean that another part of the claim cannot also require
20 NAVICO INC. v. ITC
the data to be rendered in another format. Accordingly,
we find claim 21 is consistent with the Commission’s
construction.
As for the embodiment of Figure 10, which provides
for side-by-side display, the specification does not describe
this display as a “combined” display. Rather, the specifi-
cation explicitly distinguishes the display shown in Figure
10 from a combined display. The specification notes that
the separate display windows of Figure 10 “may not
always be preferable or desirable” and that “a combina-
tion of the circular downscan transducer data and the
linear downscan transducer data into a single display
window” is a preferred alternative. J.A. 528 at col. 12, ll.
36–41 (emphasis added). Thus, by suggesting that side-
by-side data is not a combination, Figure 10 supports the
Commission’s construction. Accordingly, we agree with
the Commission’s view that “combine” means “to merge or
to bring into union,” and that Garmin did not infringe the
’499 patent.
CONCLUSION
Because there is no contributory infringement and the
Commission was correct in finding claims 1, 7, 12, 13, and
57 of the ’550 patent obvious, and in its construction of
“combine,” we affirm the Commission’s Final Determina-
tion.
AFFIRMED
COSTS
No costs.