IP Law Daily Claims for sea-floor sonar-imaging devices were invalid as obvious
Tuesday, June 13, 2017

Claims for sea-floor sonar-imaging devices were invalid as obvious

By Thomas Long, J.D.

The International Trade Commission (ITC) incorrectly determined that certain claims of two patents related to sonar imaging devices used to provide images of the sea floor were not invalid as obvious over prior art, the U.S. Court of Appeals for the Federal Circuit has held. The ITC made the determination after the patent holder accused marine sonar imaging products imported and sold by Garmin International, Inc.; Garmin USA, Inc.; and Garmin Corporation of infringing the patents. The ITC had issued an exclusion order prohibiting entry of the accused products and their components into the United States. Because the Federal Circuit found that all patent claims referenced in the exclusion order were invalid for obviousness, Garmin’s appeal from the exclusion order was dismissed as moot (Garmin International, Inc. v. International Trade Commission, June 13, 2017, Reyna, J.).

On June 9, 2014, Navico filed a petition with the ITC alleging that Garmin’s importation and sale of its DownVu marine sonar imaging products infringed three Navico patents. The ITC initiated an investigation under 19 U.S.C. §1337, and an administrative law judge (ALJ) upheld the validity of the asserted patent claims but found no infringement. On December 1, 2015, the ITC issued a final determination, reversing the ALJ’s initial determination in part and finding that the DownVu products infringed two of Navico’s patents, U.S. Patent Nos. 8,305,840 ("the ’840 patent") and 8,605,550 ("the ’550 patent"). The final determination also reversed the initial determination’s finding of validity as to five claims of the ’550 patent. Garmin appealed to the Federal Circuit.

Patents at issue. The ’840 patent was entitled "Downscan imaging sonar" and disclosed sonar systems for providing images of the sea floor beneath a vessel. The patented invention was a sonar imaging device for generating images of objects beneath a watercraft. The sonar images were generated by a linear downscan transducer. The ’550 patent, also entitled "Downscan imaging sonar," issued from a continuation application of the ’840 patent and contained the same specification. Whereas the ’840 patent disclosed a single linear downscan transducer, the ’840 patent claimed three transducers, two of which were linear sidescan transducers and one of which was a linear downscan transducer.

Prior art. The ITC found some, but not all, claims of the ’550 patent invalid over a combination of two references. The first reference was a 1960 article by Tucker entitled "Narrow-beam echo-ranger for fishery and geological investigations." Tucker described an "echo-ranger" that could be used both as a horizontal fish finder and a sea floor mapper. This dual functionality was possible because its transducer was adjustable to point either to the side (for the fish finder) or downward (to map the sea bed).

The second prior art reference was U.S. Patent No. 7,652,952 ("Betts"), entitled "Sonar imaging system for mounting to watercraft." Betts disclosed a sonar system with side scanning and bottom scanning elements. Betts described two linear transducers that scanned the water to the sides of a boat and two circular transducers that scanned the water below the boat.

Obviousness. The ITC found that the Garmin failed to show that the Tucker prior art reference disclosed the "sonar signal processor" limitations of independent claims 1 and 23 of the ’840 patent and claims 32 and 44 of the ’550 patent. According to the ITC, Tucker provided circuit diagrams of the receiver and detailed specifications of the receiver and the recorder, but it did 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 ITC also stated that Garmin did not identify the specific disclosures in Tucker that supported its position.

Garmin had argued to the ITC that Tucker described "the receiver" for receiving the bounce-back sonar echo and "the recorder" for processing the data received and displaying the information on a chart or a cathode-ray tube. Despite Garmin’s reference to details from Tucker, the ITC contended on appeal that Tucker did not disclose receiving input from the transducer. The Federal Circuit disagreed. A figure in Tucker—which was cited by Garmin—showed in great detail how the receiver was connected to the transducer, the court said. Further, it defied logic to conclude that the receiver was getting its information from any source other than echoes received through the transducer. "How else could a sonar system work?" queried the court.

In addition, Betts disclosed a sonar system signal processor. That reference taught "an electronic control head" to collect and process data and feed those processed signals to an LCD display screen. The control head filtered the signals, sorted sonar target returns from the bottom and fish, calculated display range parameters, and fed the processed signals to the LCD screen. In the court’s opinion, the ITC’s conclusion that Tucker and Betts did not process sonar signals from a transducer was not supported by substantial evidence.

Since all elements of the asserted claims were present in the combination of Tucker and Betts, and because there was a motivation to combine those elements, the claims were rendered obvious, the court concluded. The invention in this case was "no more than the predictable use of the prior art elements according to their established functions." Therefore, the ITC’s finding of no-invalidity was reversed.

Exclusion order. The ITC issued an exclusion order based on its infringement determination, prohibiting entry into the United States of products and components infringing the asserted patent claims. Garmin appealed from the order. Because the court had found that all of the asserted claims were obvious over prior art, the court dismissed this appeal as moot.

The case is No. 2016-1572.

Attorneys: Nicholas P. Groombridge (Paul, Weiss, Rifkind, Wharton & Garrison LLP) for Garmin International, Inc.; Garmin USA, Inc.; and Garmin Corp. Lucy Grace D. Noyola for the International Trade Commission.

Companies: Garmin International, Inc.; Garmin USA, Inc.; Garmin Corp.

MainStory: TopStory Patent FedCirNews

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