N OTE : This disposition is nonprecedential.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. 3 37

- TA

- 921.

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Decided: June 13, 2017

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N ICHOLAS P. G ROOMBRIDGE , Paul, Weiss, Rifkind, Wharton & Garrison LLP, New York, NY, argued for appellants. Also represented by J ENNIFER H. W U , J ENNIFER D IANE C IELUCH ; D AVID J. B ALL , J R ., D AVID K. S TARK , Washington, DC.GARMIN INTERNATIONAL , INC

. v. ITC 2

L UCY G RACE D. N OYOLA , Office of General Counsel, United States International Trade Commission , Washin gton, DC, argued for appellee. Also represented by D OMINIC L. B IANCHI , W AYNE W. H ERRINGTON

.

K IRK T. B RADLEY , Alston & Bird LLP , Charlotte, NC, argued for intervenors. Also represented by M ATTHEW S. S TEVENS , C HRISTOPHER C HARLES Z IEGLER

.

______________________

Before P ROST , Chief Judge, D YK , and R EYNA , Circuit Judges.

R EYNA , Circuit Judge

.
Garmin Internat ional, 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 De t ermin ation 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 noni nfringement of U.S. Patent No. 8,300,499. Because t he Commission’s findings with respect to validity and i nfringement of certain claims of the ‘840 and ‘550 patents were not supported by substantial evidence, we reverse the Commission’s Final Determination in part.

B ACKGROUND 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 productsGARMIN INTERNATIONAL , INC

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infringed three Navico patents. 1 19 U.S.C. § 1337. On July 7, 2014 , the Commission initiated a Section 337 invest iga t ion on imports of Garmin’s DownV ü 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 valid ity of all asserted claims, but found no infringement. J.A. 9 6. T he 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 Investi gations 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 F inal Determinatio n reversing the Initial Determination in part and finding that Garmin’s DownVü products i nfringed the ’840 and ’550 patents. The Final Determin ation reversed the Initial Determination ’s primary claim construction for those two patents and adopted the Initi al Determination ’s contingent finding of direct infringement. The Final Determination also reversed the Initial Dete rmination ’s finding of validity as to c laims 1, 7, 12, 13, and 57 of the ’550 patent. This appeal followed.

1 Generally, section 337 establishes an administr ative 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).GARMIN INTERNATIONAL , INC

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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 t he 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, al though these are s aid 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

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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 li near transducers produce a fan

- shaped beam which is wide in one dimension (bea mwidth 188) and narrow in another (beamwidth 186).GARMIN INTERNATIONAL , INC

. v. ITC 6

Figure 12B shows example i mages produces by linear (on the left) and circular (on the right) downscan tran sducers. 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 d etailed 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 ele ment. Claim 1 is representative for the purposes of this a ppeal. It claims:
1. A sonar assembly for imaging an underwater

env i ronment beneath a watercraft traveling on

a su r face 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 pos itioned within the housing, the linear downscan transducer element having a substantially re cta n gular shape configured to produce a fan

shaped s o nar beam having a relatively narrow beamwidth in a direction parallel to a longit udinal length of the linear downscan transducer element and a relativ e ly wide beamwidth in a direction perpendicular to the longitudinal length of the transducer element, the linear downscan transducer element being pos itioned with the longitudinal length thereof exten d ing 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

perpe n dicular to a plane corresponding to the surface of the body of water, said sonar beams being repea ted ly emitted so as to sequentially insonify different fan

- shaped regions of the u nderwater environment as the watercraft tra vels; and
a sonar signal processor receiving sign als repr esent a tive 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 r e gion and to create an image of the underwater e n vironment as a composite of images of the fan

- shaped regions arranged in a progressive order co r responding to the travel of the watercraft.

Id . at col. 17 ll. 34

– 62.GARMIN INTERNATIONAL , INC

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

The ’550 patent, also entitled “Downscan imaging s onar,” issued from a continuation application of the ’840 patent and contains the same specification . Instead of a single linear downscan transducer, it claims three tran sducers, two of which are linear sidescan transducers and one of which is a linear downscan transducer.

Figure 6 of the patent illustra tes a top view of a transducer array containing two linear sidescan tran sducers (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 bea m 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 a ppeal. It claims:GARMIN INTERNATIONAL , INC

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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 su bsta n tially rectangular shape configured to pr oduce a sonar beam having a beamwidth in a direction pa r allel to a longitudinal length of the transduce r el e ment that is significantly less than a beamwidth of the sonar beam in a dire ction perpendicular to the longitudinal length of the transducer element,
wherein the plurality of transducer elements are

pos i tioned such that the longitudinal lengths of the plurality of transducer elements are su bstantially parallel to each other, and
wherein the plurality of transducer elements i nclude at least:
a first linear transducer element positioned wit hin a housing and configured to project sonar pulses from a first side of the housing in a d irection substantia l ly perpendicular to a cente rline of the housing,
a second linear transducer element positioned within the housing and spaced laterally from the first li n ear transducer element,

wherein the second linear transd ucer element lies substantially in a plane with the first linear
tran s ducer 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 perpendic ular to the cente r line of the housing, and
a third linear transducer element positioned wit hin the housing and configured to project sonarGARMIN INTERNATIONAL , INC

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pulses in a direction substantially perpendic ular to the plane defined by the first and second linear tran s ducer elem ents; and
a sonar module configured to enable operable

comm u nication with the transducer assembly, the sonar module including:
a sonar signal processor to process sonar return si g nals received via the transducer assembly, and
a transceiver configured to pr ovide communic ation b e tween the transducer assembly and the sonar si g nal 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 geolo gical investigations.”

Tucker describes an “echo

- ranger” designed to be us able both as a horizontal fish finder and a sea floor ma pper. 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 particu lar, 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 th rough 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.GARMIN INTERNATIONAL , INC

. v. ITC 12

J.A. 11656.

The recorder unit Tucker describes is a system for produc ing 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 repr oduces analog data onto a sheet of pa per. 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 Commi ssion is U.S. Patent No. 7,652,952 to Betts, entitled “Sonar imaging system for mounting to watercraft.” Betts di scloses a sonar system with side scanning and bottom scanning elements. Betts describes two linear transdu cers that scan the water to the sides of a boat and two circular transducers that scan the water below the boat.GARMIN INTERNATIONAL , INC

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The return signals receiv ed by the elements can be pr ocessed through a software filter to remove noise.

Betts Fig. 8 (showing downscan circular transducers 54 and sidescan linear transducers 26).

D ISCUSSION

1. Standard of Review
Under the Administrative Procedure Act, 5 U.S.C. § 70 6(2), we review the Commission’s factual findings for substantial evidence, and the Commission’s legal dete rminations 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). Obviou sness is a question of law based on subsidiary findings ofGARMIN INTERNATIONAL , INC

. v. ITC 14

fact relating to “the scop e 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 K SR 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 c ourt “must affirm a Commission determination if it is reason able 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 process or” 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 th at Garmin therefore waived its arguments with respect to those claims. However, the Commission’s decision for the dependent claims turned on the sa me “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, an d “the r ecor d er” for processing the data received and di splaying the information on a chart or a cathode

ray 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 Co mmission 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 transdu cer. We disagree.
Figure 8 of Tucker shows in great detail how the r eceiver is connected to the transducer: through resistor R27 and transformer TR3. This figure is shown on page 106 of Tucker, one of t he 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,GARMIN INTERNATIONAL , INC

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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 arg ues 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 wi ll 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 recogn ize 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 elemen ts a ccording to their established functions. Id

. The Commission found that the “sonar signal proce ssor” 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 t he Commi ssion 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 ofGARMIN INTERNATIONAL , INC

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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 co nstrued the term “single linear downscan transducer element” and thus incorrectly found infringement. B ecause today we find all asserted claims invalid, and because Garmin’s proposed clai m construction affects only the issue of infringement and not validity

, we do not reach this issue

. C ONCLUSION

Because the Commission’s factual findings regarding nonobviousness are not supported by substantial ev idence, we reverse on the issue of obviousn ess 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

C OSTS

No costs.