NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

GARMIN INTERNATIONAL, INC., GARMIN USA, 

INC., GARMIN CORPORATION,

Appellants

v.

INTERNATIONAL TRADE COMMISSION,

Appellee

NAVICO INC., NAVICO HOLDING AS,

Intervenors

______________________ 

2016-1572

______________________ 

Appeal from the United States International Trade 

Commission in Investigation No. 337-TA-921.

______________________ 

Decided: June 13, 2017

______________________ 

NICHOLAS P. GROOMBRIDGE, Paul, Weiss, Rifkind, 

Wharton & Garrison LLP, New York, NY, argued for 

appellants. Also represented by JENNIFER H. WU,

JENNIFER DIANE CIELUCH; DAVID J. BALL, JR., DAVID K.

STARK, Washington, DC.
2 GARMIN INTERNATIONAL, INC. v. ITC

LUCY GRACE D. NOYOLA, Office of General Counsel, 

United States International Trade Commission, Washington, DC, argued for appellee. Also represented by DOMINIC 

L. BIANCHI, WAYNE W. HERRINGTON. 

KIRK T. BRADLEY, Alston & Bird LLP, Charlotte, NC, 

argued for intervenors. Also represented by MATTHEW S.

STEVENS, CHRISTOPHER CHARLES ZIEGLER. 

______________________ 

Before PROST, Chief Judge, DYK, and REYNA, Circuit 

Judges.

REYNA, Circuit Judge. 

Garmin International, Inc., Garmin USA, Inc., and 

Garmin Corporation appeal from a Final 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 infringement 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. Because the 

Commission’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 Commission’s Final Determination in part.

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 
GARMIN INTERNATIONAL, INC. v. ITC 3

infringed three Navico patents.1 19 U.S.C. § 1337. On 

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. 96. 

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 Final Determination reversing the Initial Determination in 

part and finding that Garmin’s DownVü products infringed the ’840 and ’550 patents. The Final Determination 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 Determination’s finding of validity as to claims 1, 7, 12, 13, and 

57 of the ’550 patent. This appeal followed. 

 

1 Generally, section 337 establishes an administrative investigation on whether the importation of certain 

goods constitute an unfair trade act, i.e. infringement. 

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 GARMIN INTERNATIONAL, INC. v. ITC

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 ’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, although 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.
GARMIN INTERNATIONAL, INC. v. ITC 5

Figure 15B illustrates the beam patterns formed by 

downscan transducers. Circular transducers produce a 

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 (beamwidth 188) and narrow in another (beamwidth 186).
6 GARMIN INTERNATIONAL, INC. v. ITC

Figure 12B shows example images produces by linear 

(on the left) and circular (on the right) downscan transducers. 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 detailed 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.

Claim 1 is representative for the purposes of this appeal. It claims:

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:
GARMIN INTERNATIONAL, INC. v. ITC 7

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 fanshaped 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 fanshaped 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.

Id. at col. 17 ll. 34–62.
8 GARMIN INTERNATIONAL, INC. v. ITC

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

The ’550 patent, also entitled “Downscan imaging sonar,” issued from a continuation application of the ’840 

patent and contains the same specification. Instead of a 

single linear downscan transducer, it claims three transducers, 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 transducers (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.

Claim 32 is representative for the purposes of this appeal. It claims:
GARMIN INTERNATIONAL, INC. v. ITC 9

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:

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 
10 GARMIN INTERNATIONAL, INC. v. ITC

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.

’550 patent col. 19 l. 41–col. 20 l. 15.

4. 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 geological investigations.”

Tucker describes an “echo-ranger” designed to be usable both as a horizontal fish finder and a sea floor mapper. J.A. 11652. 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. 11659. The article 

provides a complete circuit diagram for Tucker’s echo 

ranger. J.A. 11655-56. In particular, Figure 8 shows the

circuit diagram of the transmitter. The output stage 

portion is reproduced below:
GARMIN INTERNATIONAL, INC. v. ITC 11

J.A. 11655. 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.
12 GARMIN INTERNATIONAL, INC. v. ITC

J.A. 11656.

The recorder unit Tucker describes is a system for 

producing a printed image of the collected data. J.A. 

11657. 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. 

11658.

5. Betts Prior Art

The second prior art reference cited by the Commission is U.S. Patent No. 7,652,952 to Betts, entitled “Sonar 

imaging system for mounting to watercraft.” Betts discloses a sonar system with side scanning and bottom 

scanning elements. Betts describes two linear transducers that scan the water to the sides of a boat and two 

circular transducers that scan the water below the boat. 
GARMIN INTERNATIONAL, INC. v. ITC 13

The return signals received by the elements can be processed 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 determinations de novo. See Spansion, Inc. v. Int’l Trade 

Comm’n, 629 F.3d 1331, 1343–44, 1349 (Fed. Cir. 2010). 

Claim construction is a question of law that may be based 

on underlying factual determinations. Teva Pharm. USA, 

Inc. v. Sandoz, Inc., 135 S. Ct. 831, 834 (2015). Obviousness is a question of law based on subsidiary findings of 
14 GARMIN INTERNATIONAL, INC. v. ITC

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); Graham 

v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18

(1966)).

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, 629 F.3d at 1344.

2. Sonar Signal Processor

The Commission found that Garmin failed to show 

that the Tucker prior art reference discloses the “sonar 

signal processor” limitation of independent claims 1 and 

23 of the ’840 patent and claims 32 and 44 of the ’550 

patent.3 The Commission found that “[a]lthough 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.” The Commission also stated that Garmin did not 

 

3 Navico argues that Garmin’s brief fails to address 

the dependent claims and that Garmin therefore waived 

its arguments with respect to those claims. However, the 

Commission’s decision for the dependent claims turned on 

the same “sonar signal processor” limitation. Because 

Garmin’s “sonar signal processor” arguments are sufficient to address the Commission’s decision as to the 

dependent claims, we find no waiver here.
GARMIN INTERNATIONAL, INC. v. ITC 15

identify the specific disclosures in Tucker that support its 

position. 

As part of an invalidity claim chart, Garmin argued to 

the Commission that Tucker described a “sonar signal 

processor:”

Tucker describes “the receiver” for receiving the 

bounce-back sonar echo, id. at 106, and “the recorder” for processing the data received and displaying the information on a chart or a cathoderay tube, id. at 108.

J.A. 12413. Garmin reiterates this argument on appeal.

Despite Garmin’s reference to details from Tucker, 

the Commission argues on appeal that Tucker does not 

disclose receiving input from the transducer. The Commission argues that because the circuit diagram of the 

receiver has an input labeled “input from transmitter” 

rather than “input from transducer,” it is not clear that 

the received signals are sonar signals from the transducer. We disagree.

Figure 8 of Tucker shows in great detail how the receiver is connected to the transducer: through resistor 

R27 and transformer TR3. This figure is shown on page 

106 of Tucker, one of the two pages cited by Garmin.

Further, it defies logic to conclude that the receiver is 

getting its information from any source other than echoes 

received through the transducer. Tucker does not disclose 

any other sonar sensor, and the Commission provides no 

evidence of any alternative explanation. How else could a 

sonar system work?

Betts too discloses a sonar signal processor. It teaches 

“an electronic control head” to collect and process data 

and feed those processed signals to an LCD display 

screen. U.S. Patent No. 7,652,952 at col. 13 ll. 1–7; col. 8 

l. 28–col. 9 l. 20. This control head “filters the signals, 
16 GARMIN INTERNATIONAL, INC. v. ITC

sorts sonar target returns from the bottom and fish, 

calculates display range parameters and then feeds the 

processed signals to the LCD display screen.” Id. at col. 8 

l. 67–col. 9 l. 4.

Notably, the Commission does not argue that “sonar 

signal processor” is a narrow term that differs from the 

sonar signal processors in Tucker and Betts in some 

specific way. Rather, the Commission simply argues that 

Tucker and Betts do not process sonar signals from a 

transducer at all. That position is not supported by 

substantial evidence.

“[F]amiliar items may have obvious uses beyond their 

primary purposes, and in many cases a person of ordinary 

skill will be able to fit the teachings of multiple patents 

together like pieces of a puzzle.” KSR Int’l Co. v. Teleflex 

Inc., 550 U.S. 398, 402 (2007). “[I]f a technique has been 

used to improve one device, and a person of ordinary skill 

in the art would recognize that it would improve similar 

devices in the same way, using the technique is obvious 

unless its actual application is beyond his or her skill.” 

Id. at 417. A court must ask whether the improvement is 

more than the predictable use of prior art elements according to their established functions. Id. 

The Commission found that the “sonar signal processor” was the single element that distinguished these 

claims from Tucker. The only other distinction asserted 

by Navico was that Tucker failed to disclose a “single 

linear downscan transducer element,” but the Commission found that it did. J.A. 37, 41. The Commission also 

found a motivation to combine the teachings of Tucker 

and Betts. J.A. 43. 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. Here, as in 

KSR, the invention is no more than the predictable use of 
GARMIN INTERNATIONAL, INC. v. ITC 17

the prior art elements according to their established 

functions.

Accordingly, we reverse the Commission’s finding 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 valid over Tucker and Betts.

3. Construction of “Single Linear Downscan Transducer 

Element” 

Garmin argues that the Commission incorrectly construed the term “single linear downscan transducer 

element” and thus incorrectly found infringement. Because today we find all asserted claims invalid, and 

because Garmin’s proposed claim construction affects only

the issue of infringement and not validity, we do not reach 

this issue. 

CONCLUSION

Because the Commission’s factual findings regarding 

nonobviousness are not supported by substantial evidence, we reverse on the issue of obviousness and hold 

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. 

REVERSED 

COSTS

No costs.