2011 ITC LEXIS 2884
United States International Trade Commission
August 8, 2011
Investigation No. 337-TA-694
CORRECTED PUBLIC VERSION
On December 16, 2010, the presiding administrative law judge ("ALJ") issued a final initial determination ("ID") finding no violation of section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, in the above-captioned investigation by respondents Garmin International, Inc. of Olathe, Kansas and Garmin Corporation of Taiwan (collectively, "Garmin"). On February 23, 2011, we determined to review the ALJ's ID in part. Having reviewed the record of this investigation, we affirm, on modified grounds, the ALJ's finding that Garmin has not violated section 337. In particular, we affirm the ALJ's finding that Garmin's products do not infringe U.S. Patent No. 6,122,592 ("the '592 patent"), but reverse his finding that Garmin's products do not infringe U.S. Patent No. 5,424,951 ("the '951 patent"). We reverse the ALJ's finding that the economic prong of the domestic industry requirement is satisfied for the asserted patents. Finally, we find the asserted claims of the '592 patent are invalid for lack of written description [*2] under 35 U.S.C. § 112, P 1. This opinion sets forth our reasoning for this final determination. We adopt all findings and conclusions in the ID that are not inconsistent with this opinion.
A. Procedural History
The Commission instituted this investigation on December 16, 2009, based on a complaint filed by Pioneer Corporation of Tokyo, Japan and Pioneer Electronics (USA) Inc. of Long Beach, California (collectively, "Pioneer"). 74 Fed. Reg. 66676 (Dec. 16, 2009). The complaint alleges violations of section 337 in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain multimedia display and navigation devices and systems, components thereof, and products containing the same by reason of infringement of claims 1 and 2 of U.S. Patent No. 5,365,448 ("the '448 patent"), claims 1 and 2 of the '951 patent, and claims 1 and 2 of the '592 patent. The complaint named Honeywell International Inc. of Morristown, New Jersey ("Honeywell") and Garmin as respondents. [*3] On February 16, 2010, Honeywell was terminated from the investigation based on a settlement agreement.
The ALJ held an evidentiary hearing from September 13, 2010, through September 21, 2010, and received post-hearing briefs from the parties thereafter. On December 16, 2010, the ALJ issued a final ID finding no violation of section 337 by Garmin. On January 5, 2011, Pioneer, Garmin, and the Commission investigative attorney ("IA") each filed petitions for review. On January 13, 2011, Pioneer, Garmin, and the IA each filed responses to each other's petitions. On February 23, 2011, the Commission determined to review the ALJ's ID in part. In particular, the Commission determined to review: (1) the ALJ's construction and related infringement findings for "second memory means" of the '951 patent; (2) the ALJ's construction and related infringement findings for "extracting means" of the '592 patent; (3) the ALJ's findings relating to the validity of the '592 patent under the written description requirement of 35 U.S.C. § 112; and (4) the ALJ's finding that the economic prong [*4] of the domestic industry requirement is satisfied. On March 9, 2011, Pioneer, Garmin, and the IA filed their initial submissions addressing the issues that the Commission determined to review. On March 21, 2011, Pioneer, Garmin, and the IA each filed their reply submissions. On April 18, 2011, the Commission extended the target date and requested supplemental briefing from the parties and the public. The Commission's supplemental briefing questions were directed to the domestic industry requirement of section 337(a)(3)(C). On May 17, 2011, Pioneer, Garmin, and the IA each filed their initial submissions and, on May 23 and 24, 2011, these parties filed their reply submissions. On May 24, 2011, the Commission also received submissions from various members of the public. Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.
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2011 ITC LEXIS 2884 *
In the Matter of CERTAIN MULTIMEDIA DISPLAY AND NAVIGATION DEVICES AND SYSTEMS, COMPONENTS THEREOF, AND PRODUCTS CONTAINING SAME
patent, Pioneer, REDACTED, licensing, display, portfolio, memory, nexus, infringement, products, navigation, domestic industry, in-house, user, outside counsel, specification, licensees, calculating, exploitation, expenses, stored, extracting, technology, invention, selecting, written description, license agreement, point-of-interest, substantial investment, coordinate