• HQ H295697
• Jul 20, 2018

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H121519   

OT:RR:BSTC:IPR H295697 CBC/JW/CAB

VIA EMAIL:

Eric S. Namrow
Morgan, Lewis & Bockius LLP
1111 Pennsylvania Avenue, N.W.
Washington, DC 20004
[email protected]

RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1016, Certain Access Control Systems and Components Thereof

Dear Mr. Namrow,

Pursuant to 19 C.F.R. part 177, the Intellectual Property Rights Branch (“IPR Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter. We find that the Ryobi GD126 and GD201 garage door openers (“GDOs at issue”) are subject to the limited exclusion order issued by the International Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1016 pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337.

This ruling letter is the result of an inter partes proceeding administered by CBP. The inter partes proceeding involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your clients, Techtronic Industries Co. Ltd, Techtronic Industries North America Inc., One World Technologies, Inc., OWT Industries, Inc., and Et Technology (Wuxi) Co., Ltd. (collectively, “TTi”); and (2) The Chamberlain Group, Inc. (“Chamberlain”). See, e.g., Ruling Request at 1, 4–5; Commission Opinion Dated March 23, 2018 (“Comm’n Op.”) at 2–3.

The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying ITC investigation, [[with red brackets]] in all of their submissions to the CBP. See CBP Email to the Parties Dated April 18, 2018. Information bracketed in red [[ ]] in this ruling letter will be redacted from the published ruling. See infra Section III.A.

If there is additional information in this ruling letter not currently bracketed in red [[ ]] that either party believes constitutes confidential information and should be redacted from the published ruling, then the parties are asked to contact CBP within five (5) business days of the date of this ruling letter.

Please note that any request for confidential treatment of information must provide a particularized showing of the specific harm that will result if the identified information is disclosed. Broad, unsubstantiated allegations of harm without specific examples articulating reasons for the harm will not suffice. As discussed in greater detail in Section III.A, a request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. part 177 faces a strong presumption in favor of disclosure. The person seeking this treatment must overcome that presumption with a request that is narrowly tailored and supported by evidence establishing a likelihood of substantial harm to a competitive position that outweighs the general history and public policy—embedded in the Freedom of Information Act (“FOIA”) (5 U.S.C. § 552) (“FOIA”), the common law, and the relevant Customs regulations—favoring transparency and disclosure.

BACKGROUND

U.S. Patent No. 7,161,319

As discussed below in Section I.B.1, the limited exclusion order issued in Investigation No. 337-TA-1016 prohibits, inter alia, the unlicensed entry of access control systems and components thereof that infringe one or more of claims 1–4, 7–12, 15, and 16 of U.S. Patent No. 7,161,319 (“the ’319 patent”). See Inv. No. 337-TA-1016 Limited Exclusion Order (March 23, 2018) (“1016 LEO”).

The Chamberlain Group, Inc. is listed as the assignee of U.S. Patent No. 7,161,319. See U.S. Patent No. 7,161,319.

Specification

The specification of the ’319 patent states that “[t]he invention relates in general to movable barrier operators and in particular to movable barrier operators such as garage door operators or gate operators which include passive infrared detectors associated with them for detecting the presence of a person or other high temperature object for controlling a function of the movable barrier operator such as illumination.” The ’319 patent, 1:14–20. The specification of the ’319 patent further states that “[i]t is a principal aspect of the present invention to provide a quickly and easily retrofitted passive infrared detector for controlling the illumination of a garage door operator through conventional signaling channels.” The ’319 patent, 2:64–67 (emphasis added).

Figure 1 of the ’319 patent, reproduced below, depicts a moveable barrier operator embodying the invention. The ’319 patent, 3:42–43.
Figure 1 of the ’319 Patent

Figure 1 shows a garage door operator 10, positioned within a garage 12. The ’319 patent, 3:44–46. The garage door operator 10 is mounted to a ceiling 14 of a garage 12 for operation of a multipanel garage door 16. The ’319 patent, 3:46–49. The garage door operator 10 includes a head unit 24 for providing motion to the garage door 16 via a rail assembly 26. The ’319 patent, 3:47–49.

Figure 2, reproduced below, shows the relationship between major electrical systems of a portion of the garage door operator shown in Figure 1. The ’319 patent, 3:16–18. A wall control unit 60 communicates over a line 62 with a head unit microcontroller 56 to effect control of a garage door operator motor 70 and a light 72 via relay logic 74 connected to the microcontroller 56. The ’319 patent, 3:63–4:9. Figure 4, not reproduced herein, shows the wall control unit 60 includes a wall control microcontroller 110, which provides an output to the line 62, which is connected to the microcontroller 56 in the garage door operator head. The ’319 patent, 4:22–32.
Figure 2 of the ’319 Patent

Prosecution History

The ’319 patent issued from U.S. Patent Application No. 10/717,263 (“the ’263 application”), filed on November 19, 2003. The first office action issued by the U.S. Patent and Trademark Office included a rejection of all of the pending claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. See Office Action of September 22, 2004. The examiner’s enablement rejection was not specific to any particular claim limitation, but was instead a sweeping request for a showing of support for the entirety of the claimed subject matter:

The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The Examiner could not find any thread of support in the Specification for the filed claims.

Office Action of September 22, 2004, at 2.

In response, the applicant submitted the following claim chart mapping the claims to the specification:


Response of March 22, 2005 at Appendix.

The applicant further stated with regard to the term “digital data bus” in application claims 1 and 11 (patent claims 1 and 9) “the applicant includes a definition of ‘digital’ from the Merriam-Webster Online Dictionary. Response of March 22, 2005 at 5. From this definition it is clear that applicant’s line 62 conveys data in accordance with definition 3 that is ‘relating to discrete units’. Id. The transmission of such discrete units is discussed as generating an on-off output code in paragraph 39 of the description.” Id. No amendments were made to application claims 1 or 11 (patent claims 1 and 9).

The examiner subsequently withdrew the enablement rejection and eventually allowed application claims 1 and 11 to pass to issuance as patent claims 1 and 9, without any amendments to either one of these particular claims. See Notice of Allowance of September 1, 2006.

Claims at Issue

The scope of the limited exclusion order issued in Investigation No. 337-TA-1016 extends to claims 1–4, 7–12, 15, and 16 of the ’319 patent. Claims 1 and 9 of the ’319 patent are independent claims. See 1016 LEO.

Independent claim 1 recites:

1. An improved garage door opener comprising a motor drive unit for opening and closing a garage door, said motor drive unit having a microcontroller and a wall console, said wall console having a microcontroller, said microcontroller of said motor drive unit being connected to the microcontroller of the wall console by means of a digital data bus.

Independent claim 9 recites:

9. An improved garage door opener comprising a motor drive unit for opening and closing a garage door, said motor drive unit having a controller and a wall console, said wall console having a controller, said controller of said motor drive unit being connected to the controller of the wall console by means of a digital data bus.

The sole difference between claims 1 and 9 is that claim 9 recites “controller” where claim 1 recites “microcontroller.” On a limitation by limitation basis, claims 1 and 9 can be represented as follows:

Limitation Claim Language  A An improved garage door opener comprising  B a motor drive unit for opening and closing a garage door,  C said motor drive unit having a microcontroller [controller] and  D a wall console,  E said wall console having a microcontroller [controller],  F said microcontroller [controller] of said motor drive unit being connected to the microcontroller [controller] of the wall console by means of a digital data bus.   ITC Investigation No. 337-TA-1016

Procedural History at the ITC

The Commission instituted Investigation No. 337-TA-1016 on August 9, 2016 based on a complaint filed by Chamberlain. 81 Fed. Reg. 52713 (August 9, 2016); Comm’n Op. at 1–3. The complaint alleged violations of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain access control systems and components thereof by reason of infringement of one or more of claims 1–4, 7–12, 15, and 16 of U.S. Patent No. 7,161,319 (“the ’319 patent”); claims 1, 10–12, and 18–25 of U.S. Patent No. 7,196,611 (“the ’611 patent”); and claims 7, 11–13, 15–23, and 34–36 of U.S. Patent No. 7,339,336 (“the ’336 patent”). Id. The notice of investigation named as respondents Ryobi Technologies Inc. of Anderson, South Carolina; Techtronic Industries Company Ltd. of Tsuen Wan, Hong Kong; Techtronic Industries North America Inc. of Hunt Valley, Maryland; One World Technologies, Inc. of Anderson, South Carolina; OWT Industries, Inc. of Pickens, South Carolina; and ET Technology (Wuxi) Co., Ltd., of Zhejiang, China. Id. The Office of Unfair Import Investigations was not a party to the investigation. Id.

On October 27, 2016, the ITC determined not to review the Administrative Law Judge’s (“ALJ”) order (Order No. 4), which granted a motion to amend the Notice of Investigation to include two additional respondents: Techtronic Trading Limited of Kwai Chung, Hong Kong; and Techtronic Industries Factory Outlets Inc., d/b/a Direct Tools Factory Outlet of Anderson, South Carolina. Comm’n Opinion at 3.

On November 7, 2016, the ITC determined not to review the ALJ’s order (Order No. 6) terminating the investigation as to Ryobi Technologies Inc. of Anderson, South Carolina. Comm’n Opinion at 3. Ryobi Technologies was terminated from the investigation because it no longer existed as an independent entity. Id. It was absorbed by Respondent One World Technologies, Inc. of Anderson, South Carolina. Id.

On March 15, 2017, the ITC determined not to review the ALJ’s order (Order No. 15) granting a motion to terminate the investigation as to Techtronic Trading Limited of Kwai Chung, Hong Kong; and Techtronic Industries Factory Outlets Inc., d/b/a Direct Tools Factory Outlet of Anderson, South Carolina. Comm’n Op. at 3–4.

On March 20, 2017, the ITC determined not to review the ALJ’s order (Order No. 18) granting a motion to terminate the investigation as to claims 10, 19–20, and 22 of the ’611 patent and claims 7, 11–13, 15–18, 35, and 36 of the ’336 patent. Comm’n Op. at 4.

On May 3, 2017, the ITC determined to review the ALJ’s order (Order No. 23) granting respondents’ motion for summary determination of non-infringement of the ’319 patent. Comm’n Op. at 4. On review, the ITC construed “wall console” as a “wall-mounted control unit,” vacated Order No. 23, and remanded the investigation as to the ’319 patent to the ALJ for further proceedings. Comm’n Op. at 4 (citing Comm’n Op. (May 5, 2017) at 1–2).

On May 31, 2017, the ITC determined not to review the ALJ’s order (Order No. 28) granting a motion to terminate the investigation as to all the pending claims of the ’611 patent. Comm’n Op. at 4.

On November 9, 2017, the ITC determined not to review the ALJ’s order (order No. 36) granting a motion to terminate the investigation as to certain accused products and claims 19–23 of the ’336 patent. Comm’n Op. at 5.

On October 23, 2017, the ALJ issued his final Initial Determination (“ID”) finding a violation of section 337 by respondents with respect to claims 1–4, 7–12, 15, and 16 of the ’319 patent. 83 Fed. Reg. 13517 (March 29, 2018); Comm’n Op. at 5. The ALJ found that the accused products directly infringe asserted claims 1–4, 7–12, 15 and 16 of the ’319 patent, and that respondents induce infringement of those claims. Comm’n Op. at 5. The ALJ also found that respondents failed to establish that the asserted claims of the ’319 patent were invalid for obviousness. Id.

The parties appealed to the Commission, which determined to review the ID in-part. Id. Specifically, for the ’319 patent the Commission determined to review (1) the ID's finding that a combination of prior art references Doppelt, Jacobs, and Gilbert fail to render the asserted claims obvious; and (2) the ID's finding that a combination of prior art references Matsuoka, Doppelt, and Eckel fail to render the asserted claims obvious. See Notice of Comm’n Op. (March 23, 2018).

On March 23, 2018, the Commission issued their final determination finding a violation of section 337. See Notice of Commission Op. (March 23, 2018). For the ’319 patent the Commission determined to (1) affirm the ALJ’ s finding that a combination of prior art references Doppelt, Jacobs, and Gilbert fail to render the asserted claims obvious and (2) affirm the ALJ's finding that a combination of prior art references Matsuoka, Doppelt, and Eckel fail to render the asserted claims obvious, but reverse the ALJ’s finding that Eckel is analogous art. Id.

Accordingly, having found a violation of section 337 in this investigation, the Commission determined that the appropriate form of relief was, inter alia, a limited exclusion order prohibiting the unlicensed entry of access control systems and components thereof that infringe one or more of claims 1–4, 7–12, 15, and 16 of the ’319 patent that are manufactured by, or on behalf of, or are imported by or on behalf of respondents (i.e., TTi) or any of their affiliated companies, parents, subsidiaries, agents, or other related business entities, or their successors or assigns, for the remaining term of the ’319 patent except under license of the patent owner or as provided by law. See Notice of Comm’n Op. (March 23, 2018); 1016 LEO; Comm’n Op. at 2.

Claim Construction at the ITC

The ITC construed the following claim terms of the ’319 patent:

’319 Patent  Term / Phrase ITC Construction  wall console plain and ordinary meaning: ‘a wall-mounted control unit’ (ID at 120-21).  digital data bus plain and ordinary meaning which is ‘a conductor or group of conductors which conveys digital data’ (ID at 123).  controller plain and ordinary meaning which is ‘any type of control device’ (ID at 124).  motor drive unit unit where a driven motor resides (ID at 128).   The Accused Products at the ITC

During the underlying investigation, Chamberlain accused TTi’s GD200, GD200A, and GD125 garage door openers (“’319 Accused Products”) of infringing the asserted claims of the ’319 patent. Comm’n Op. at 9; ID at 8. The ’319 Accused Products bear the Ryobi® brand. Comm’n Op. at 9; ID at 4. The parties agreed to treat the GD200 as representative of the GD200A and GD125 for purposes of conducting the infringement analysis. ID at 8.

The ITC determined that: (i) the head unit of the ’319 Accused Products includes at least two microcontrollers (or controllers)—a “Motor Control MCU [microcontroller unit]” and a “Wi-Fi MCU [microcontroller unit],” (ii) that the ’319 Accused Products include an indoor keypad (wall console) that has a microcontroller (or controller), and (iii) that the Indoor Keypad’s microcontroller connects to the Wi-Fi MCU and communicates digitally over a wired connection. ID at 135.

Infringement Analysis at the ITC

The ALJ found “that the ’319 Accused Products, represented by the GD200, have been shown to infringe claims 1–4, 7–12, 15, and 16 of the ’319 patent.” ID at 129. The ALJ further noted that “the breadth of these patent claims makes it easy to infringe. Independent claims 1 and 9 simply require microcontrollers [or controllers] in a garage door opener’s ‘motor drive unit’ and wall console, with digital communication between them” and that a “non-infringing product – which avoids infringement by, for example, omitting a microcontroller in either location – would likely have meaningfully reduced functionality.” ID at 129–130 (citing ’319 patent at claims 1, 9).

The ALJ’s limitation-by-limitation analysis of independent claims 1 and 9 is as follows, using the limitation notation set forth above in Section I.A.3, for ease of reference:

“An improved garage door opener comprising”

The ITC found that there was no dispute that the GD200 was a garage door opener. ID at 130 (“CGI [i.e., Chamberlain] argues the GD200 is a garage door opener and this is undisputed.”).

“a motor drive unit for opening and closing a garage door”

The ALJ found “no genuine dispute that the ’319 Accused Products meet this limitation [i.e., “a motor drive unit for opening and closing a garage door”].”  ID at 130-31. The ITC noted that Chamberlain contended that the head unit of the ’319 Accused Products was the motor drive unit “because it contains the motor and other components for opening and closing a garage door, as the claim recites” and that respondents opposition does not dispute this fact. Id. at 130–32 (internal quotations omitted).

“said motor drive unit having a microcontroller [controller]”

Notably, Respondents argued that “the [[ ]] is not a microcontroller of the motor drive unit because it does not control or drive the motor for opening and closing the garage door.” ID at 132. Nevertheless, the ALJ again saw no genuine dispute, explaining “I find the ‘motor drive unit’ is not limited to exactly that structure, subsystem, electrical board, etc. that controls the motor. Rather it is ‘a unit where a driven motor resides’ and it is undisputed that within the head unit of the ’319 Accused Products, there is a microcontroller.” ID at 133. In fact, the ALJ notes, [[ ]] Id. The GD200’s [[ ]] are pictured below (RX-332C at Fig. 3):

[[ ]] Id. at 131–33.

“a wall console”

The ALJ determined that it was undisputed that the GD200 includes “a wall console.” Id. at 133.

“said wall console having a microcontroller [controller]”

The ALJ determined that it was undisputed that the GD200 includes the feature of a wall console having a microcontroller [or controller]. Id. at 133–34.

“said microcontroller [controller] of said motor drive unit being connected to the microcontroller [controller] of the wall console by means of a digital data bus”

With respect to the final limitation, “said microcontroller [or controller] of said motor drive unit being connected to the microcontroller of the wall console by means of a digital data bus” the ALJ concluded that this limitation was met. Id. at 134–35. The ALJ found that this limitation was met because it was “undisputed that [[ ]] and communicates digitally over that wired connection (i.e., a conductor or group of conductors which conveys digital data).” Id. (internal quotations omitted).

Notably, Respondents argued that this limitation was not met because the [[ ]] could not constitute the motor drive unit’s microcontroller. Id. (“the Indoor Keypad’s microcontroller connects only to the Wi-Fi Board’s microcontroller, which . . . is not the motor drive unit’s microcontroller.”). Respondents further argued that even if the ALJ considered “whether there [was] a connection between the Indoor Keypad’s microcontroller and the GDO Board’s microcontroller, the accused products still would not infringe.” Id. (internal quotations omitted). Respondents explained that the [[ ]] along with their products’ use of [[ ]] which “‘cause an intentional ‘break’ in the electrical conduction’ . . . defeat[ed] the ‘conductor’ aspect of ‘digital data bus.’” Id. The ALJ was not persuaded by this line of reasoning, and stated:

Even under Respondents’ interpretation of “motor drive unit,” the limitation is still met. The presence of [[ ]] does not negate the presence of “conductors” also in the [[ ]] which is all the claim requires. It has not been alleged the entire end-to-end link is [[ ]] which would create a colorable argument. The same logic applies for the [[ ]]

Id. at 135 (emphasis added).

In accordance with the above, the ALJ concluded that the ’319 Accused Products infringed independent claims 1 and 9 of the ’319 patent. Id. at 135.

Rule 177 Proceeding before the IPR Branch

Procedural History

On March 30, 2018, TTi submitted a letter requesting an administrative ruling pursuant to 19 C.F.R. part 177, which included exhibits A–R (collectively, “Ruling Request”). The question presented in the Ruling Request was whether “the redesigned models of [TTi’s] Ryobi Ultra-Quiet Garage Door Opener and components thereof”, namely the Ryobi GD126 and GD201 garage door openers, are subject to the limited exclusion order (“1016 LEO”) issued by the U.S. International Trade Commission in Investigation No. 337-TA-1016 (“the underlying investigation”). See Ruling Request at 1, 9.

Subsequently, TTi and Chamberlain entered into a nondisclosure agreement and agreed to a procedural schedule and to service by email. See, e.g., CBP Email to Parties Dated April 18, 2018.

On May 7, 2018, Chamberlain served a response to the Ruling Request, which included exhibits A–K (collectively, “Chamberlain Response”). On May 14, 2018, TTi served a reply to the Chamberlain Response, which included exhibits A–C (collectively, “TTi Reply”). On May 18, 2018, Chamberlain served a sur-reply to the TTi Reply, which included exhibit L (collectively, “Chamberlain Sur-Reply”). Both parties presented arguments to CBP during the inter partes proceeding held on May 25. Both parties subsequently served post-proceeding briefs on June 1, 2018. TTi’s post-proceeding brief included exhibits A–D.

The Products at Issue

The products at issue in TTi’s ruling request are the Ryobi GD126 and GD201 garage door openers (“the GDOs at issue”). Ruling Request at 9. The relevant facts for the purposes of this ruling are identical for both models. Chamberlain notes, and TTi does not appear to dispute, that the Ryobi GD126 and GD201 “are the same in relevant respects.” Oral Arg. Tr. at 106:16–107:3 (Chamberlain); see also Chamberlain Response at 9 n.5 (“All arguments made herein concerning the redesigned GD201 also apply to the redesigned GD126 model.”); Oral Arg. Tr. at 10:11–13 (TTi) (Agreeing that for both the GD201 and GD126 “the head unit itself did not change, it’s only the wall counsel [sic] that changed.”).

The Ryobi GD126 and GD201 garage door openers are based respectively on the Ryobi GD125 and GD200 garage door openers accused and found to infringe certain claims of the ’319 patent at the ITC. See, e.g., Chamberlain Response at 8–10; Exhibits G and K from the Chamberlain Response (pictures of the physical samples of the GDOs at issue provided to Chamberlain showing that the GD201 and GD126 head units have GD200 and GD125 labeling stickers, respectively). The GDOs at issue differ from the garage door openers (“GDOs”) before the ITC, i.e., the ’319 Accused Products, in the way the wall mounted, indoor keypad is connected to the head unit.

Turning first to the ’319 Accused Products, the parties agreed to treat the GD200 as representative of the GD200A and GD125 for purposes of conducting the infringement analysis. ID at 8. As can be seen in the table below, the GD200 includes a pair of wires that extend from the wall-mounted keypad to a wire terminal labeled “Keypad” on the head unit.

GDO Determined to be Infringing at the ITC - GD200 Wall Mounted Keypad with End-to-End Wire Connection to Head Unit  


 See Complaint Ex. 26, at 33.   Turning now to the GDOs at issue in the present ruling, the wall-mounted keypad and pair of wires are replaced with a wireless, wall-mounted keypad, and a wireless receiver, as shown in the table, below.

GDOs at issue before CBP  GD126 Wireless Wall-Mounted Keypad and Wireless Receiver GD201 Wireless Wall-Mounted Keypad and Wireless Receiver  

 See Chamberlain Ex. I See Chamberlain Ex. H  

Notably, the head units in the GDOs at issue are identical to the head units of the ’319 Accused Products, which were found by the ITC to infringe claims 1–4, 7–12, 15, and 16 of the ’319 patent. See Oral Arg. Tr. at 7:9–10:9 (conceding that “[t]he head unit itself did not change, it’s only the wall [console] that changed.”); see also Chamberlain Post-Proceeding Br. at 4–6. As shown in the table below, the wireless receivers of the GDOs at issue include a pair of wires that extend to a wire terminal labeled “Keypad” on the head unit. In this regard, the connection from the wireless receiver to the head unit in the GDOs at issue is identical to the connection from the wall-mounted keypad to the head unit in the ’319 Accused Products—a pair of wires that extends to the wire terminal labeled “Keypad” on the head unit.

GDOs at Issue before CBP  GD201 Wall Mounted Wireless Keypad and Wireless Receiver, with Wireless Receiver Connected to Head Unit by a Pair of Wires  

 See Chamberlain Ex. H  GD126 Wall Mounted Wireless Keypad and Wireless Receiver, with Wireless Receiver Connected to Head Unit by a Pair of Wires  

 See Chamberlain Ex. I   The extent of the redesign is well summarized by Chamberlain, who states “the only noticeable difference between the adjudged infringing GDOs [i.e., the ’319 Accused Products] and the Redesigned GDOs [i.e., the GDOs at issue] is that the path from the Redesigned GDOs’ head unit to the wall console is no longer wired end-to-end.” Chamberlain Response at 10. “Instead, the Redesigned GDOs maintain the wired keypad connection at the head unit, which then passes through a separate transceiver that completes the connection to the wall console using wireless signals.” Id.

ISSUE:

Whether the redesigned models of “[TTi’s] Ryobi Ultra-Quiet Garage Door Opener and components thereof”, namely the Ryobi GD126 and GD201 garage door openers (i.e., the GDOs at issue) are subject to the 1016 LEO because they infringe one or more of claims 1–4, 7–12, 15, and 16 of the ’319 patent. See Ruling Request at 1, 9, 14; Chamberlain Post-Proceeding Br. at 11–12.

LAW AND ANALYSIS

Treatment of Confidential Business Information Submitted under 19 C.F.R. pt. 177

As a preliminary matter, TTi has requested confidential treatment in connection with this ruling request for certain information from its submissions and seeks to have the information in question redacted from any ruling that is published in accordance with 19 U.S.C. § 1625(a). Disclosure of information related to administrative rulings under 19 C.F.R. § 177 is governed by 31 C.F.R. § 1, 19 C.F.R. § 103, and 19 C.F.R. § 177.8(a)(3). See 19 C.F.R. § 177.10(a). Moreover, the determination whether to include or redact information within a published ruling is guided by various federal laws—and the relevant standards for their application—that involve confidentiality and disclosure, to include the Freedom of Information Act (“FOIA”) (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C.§ 1905), and the Privacy Act of 1974 (5 U.S.C. § 552a). See CBP HQ Ruling H121519 at 1 (dated February 8, 2011).

Congress enacted FOIA to overhaul the earlier public-disclosure section of the Administrative Procedure Act that gradually became more “a withholding statute than a disclosure statute.” Milner v. Dep't of the Navy, 562 U.S. 562, 565 (quoting EPA v. Mink, 410 U.S. 73, 79 (1973)). Accordingly, there is a strong presumption in favor of disclosure, which is consistent with the purpose as well as the plain language of the Act. United States Dep't of State v. Ray, 502 U.S. 164, 173 (1991). Thus, FOIA mandates that an agency disclose certain information unless it falls within one of nine exemptions. Milner, 562 U.S. at 565. These exemptions are “explicitly made exclusive,” EPA, 410 U.S. at 79, and must be “narrowly construed,” FBI v. Abramson, 456 U.S. 615, 630 (1982).

Exemption 4 of FOIA, which is especially relevant here, provides that FOIA does not apply to matters that are “trade secrets and commercial or financial information obtained from a person and privileged or confidential.” 5 U.S.C. § 552 (b)(4); see Chrysler Corp. v. Brown, 441 U.S. 281, 291 (1979). Furthermore, it is worth noting that, as a general matter, the proscriptions of the Trade Secrets Act are “at least co-extensive with Exemption 4 of FOIA . . . [such that], unless another statute or a regulation authorizes disclosure of the information, the Trade Secrets Act requires each agency to withhold any information it may withhold under Exemption 4 of the FOIA.” Venetian Casino Resort, LLC v. EEOC, 530 F.3d 925, 932 (D.C. Cir. 2008) (quoting Canadian Comm. Corp. v. Air Force, 514 F.3d 37, 39 (D.C. Cir. 2008)) (emphasis added); see also Dow Chem. Co. v. United States, 476 U.S. 227, 234 n.2 (1986) (“Dow's fear that EPA might disclose trade secrets revealed in these photographs appears adequately addressed by federal law prohibiting such disclosure generally under the Trade Secrets Act, 18 U.S.C. § 1905, and the Freedom of Information Act, 5 U.S.C. § 552(b)(4).”).

That said, “Congress did not design the Freedom of Information Act exemptions to be mandatory bars to disclosure.” Chrysler Corp., 441 U.S. at 293, 294 (“We therefore conclude that Congress did not limit an agency's discretion to disclose information when it enacted the FOIA.”); see GTE Sylvania v. Consumers Union of United States, 445 U.S. 375, 378, n. 2 (1980) (“The theory of the so-called ‘reverse Freedom of Information Act’ suit, that the exemptions to the Act were mandatory bars to disclosure and that therefore submitters of information could sue an agency under the Act in order to enjoin release of material, was squarely rejected in Chrysler Corp.”).

The test, for administrative rulings under 19 C.F.R pt. 177, to determine whether certain information is confidential (and therefore properly redacted from any published ruling) is identical to the federal government-wide standard for disclosure under FOIA Exemption 4 as it relates to the likelihood of substantial harm to the competitive position of the person submitting the information and requesting that it be withheld from publication. As with FOIA, the basic objective of administrative rulings under 19 C.F.R. pt. 177 favors disclosure to provide notice to interested persons of the reasons for the agency’s position and its decision-making process. See Chrysler Corp., 441 U.S. at 290 n. 10 (“We observed in Department of Air Force v. Rose that ‘disclosure, not secrecy, is the dominant objective of the Act.’ The legislative history is replete with references to Congress’ desire to loosen the agency's grip on the data underlying governmental decision making.”) (internal citation omitted). Notably, under 19 C.F.R. § 177.8(a)(3) referenced above, there is a general presumption that “[n]o part of the ruling letter, including names, addresses, or information relating to the business transactions of private parties, shall be deemed to constitute privileged or confidential commercial or financial information or trade secrets exempt from disclosure pursuant to the Freedom of Information Act, as amended (5 U.S.C. 552), unless, as provided in §?177.2(b)(7), the information claimed to be exempt from disclosure is clearly identified and the reasons for the exemption are set forth.”

In turn, 19 C.F.R. § 177.2(b)(7) provides that “[i]nformation which is claimed to constitute trade secrets or privileged or confidential commercial or financial information regarding the business transactions of private parties the disclosure of which would cause substantial harm to the competitive position of the person making the request (or of another interested party), must be identified clearly and the reasons such information should not be disclosed, including, where applicable, the reasons the disclosure of the information would prejudice the competitive position of the person making the request (or of another interested party) must be set forth.”

Significantly, § 177.2(b)(7) was added to this section through rulemaking (T.D. 75-186, 40 Fed. Reg. 31929, July 30, 1975 as amended by T.D. 85-90, 50 FR 21430, May 24, 1985 that promulgated a final rule based on a previous notice of proposed rulemaking (40 Fed. Reg. 2437, January 13, 1975) where the text as proposed did not contain (b)(7) or any other provision addressing the treatment of putative confidential business information. The “substantial harm to a competitive position” standard adopted in § 177.2(b)(7) to handle confidentiality issues is identical to that standard for FOIA Exemption (b)(4) contemporaneously established by the U.S. Court of Appeals for the District of Columbia Circuit (“D.C. Circuit”) in National Parks & Conservation Asso. v. Morton, 498 F.2d 765 (D.C. Cir. 1974). See N.H. Right to Life v. HHS, 136 S. Ct. 383; 193 L. Ed. 2d 412; 2015 U.S. LEXIS 7169 (2015) (Thomas, J., dissenting from denial of the petition for writ of certiorari). In 1974, a year before the promulgation of the Customs final rule, the D.C. Circuit construed the word “confidential” in Exemption 4 and determined that commercial information is “confidential” if disclosure would “cause substantial harm to the competitive position of the person from whom the information was obtained.” National Parks, 498 F.2d at 770; see also N.H. Right to Life, 136 S. Ct. at 384. The D.C. Circuit later elaborated that, when applying this test, there was no need to show actual competitive harm and that actual competition and the likelihood of substantial competitive injury sufficed. See Public Citizen Health Research Group v. FDA, 704 F.2d 1280, 1291 (D.C. Cir. 1983); see also N.H. Right to Life, 136 S. Ct. at 384. Accordingly, to overcome the strong presumption in favor of disclosure, ruling requesters seeking confidential treatment must prove (1) they actually face competition, and that (2) substantial competitive injury would likely result from disclosure. See Gov't Accountability Project v. FDA, 2016 U.S. Dist. LEXIS 114927, at *15 (D.C. Cir. 2016). Conclusory and generalized allegations of substantial competitive harm are unacceptable and will not support a ruling requester’s efforts to withhold certain information from publication. See Public Citizen Health Research Group, 704 F.2d at 1291.

There is no dispute that TTi faces actual competition and therefore the relevant analysis will focus on the second prong above. See Comm’n Op. at 38–40.

As suggested above, the relevant Customs regulations not only mirror the general presumption in favor of disclosure but also place the burden on the person requesting confidentiality to demonstrate that such information qualifies. See generally FCC v. Schreiber, 381 U.S. 279 (1965) (upholding a rule requiring public disclosure except where the proponents of a request for confidential treatment have established their burden to justify that such information should not be disclosed). Moreover, the provisions of the Customs regulations that place the burden on the ruling requester to establish, during the administrative proceeding, that the information at issue constitutes confidential business information is consistent with the burden the government must satisfy in an action brought against it under FOIA challenging the position an agency has taken not to disclose information pursuant to one or more of the exemptions. See 5 U.S.C. § 552(a)(4)(B); see also United States Department of Justice v. Landano, 508 U.S. 165, 171 (1993) (“The Government bears the burden of establishing that the exemption applies.”).

This line of inquiry is further illuminated by the “general right to inspect and copy public records and documents” that courts have historically recognized, including in patent cases involving highly sensitive information. Apple Inc. v. Samsung Elecs. Co., 727 F.3d 1214, 1221 (Fed. Cir. 2013) (quoting Nixon v. Warner Commc’ns, Inc., 435 U.S. 589 (1978)). The nature of this right, rooted in the common law, is not conditioned on a proprietary interest in the information, see Nixon, 435 U.S. at 597, although certainly there are instances where an interest in the information may rise to or approach such a level. Instead, the only interest necessary to compel access to such information is found in the “citizen’s desire to keep a watchful eye on the workings of public agencies.” Nixon, 435 U.S. at 597–98.

Therefore, a determination whether to grant a request for confidential treatment must balance the likelihood of substantial harm to a competitive position against the need to provide the greatest amount of transparency possible to the agency’s decision-making process. In light of the above, a request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. pt. 177 faces a strong presumption in favor of disclosure. The person seeking this treatment must overcome that presumption with a request that is narrowly tailored and supported by evidence establishing a likelihood of substantial harm to a competitive position that outweighs the general history and public policy—embedded in FOIA, the common law, and the relevant Customs regulations—favoring transparency and disclosure. To that end, any request for confidential treatment must provide a particularized showing of the specific harm that will result if certain information is disclosed. Broad, unsubstantiated allegations of harm without specific examples articulating reasons for the harm will not suffice.

Therefore, as noted above, requests for confidential treatment in the context of section 337 exclusion order-based rulings under 19 C.F.R. pt. 177 must be narrowly tailored, fully supported by evidence showing a likelihood of substantial harm to a competitive position, and still permit a description of the device’s operation.

Based on the framework above, the information for which TTi has established a likelihood of substantial harm to its competitive position if disclosed (or consists of information that was redacted from the public version of the agency record at the Commission) has been bracketed in red [[ ]] for redaction from the published ruling. The evidence has otherwise been described or identified to the greatest extent allowed throughout this ruling (including, whenever possible, with citations referencing the confidential agency record at the Commission from Inv. No. 337-TA-1016).

Law of Patent Infringement

Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to establish equivalence is by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function-way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016).

As for the first step above, “the proper construction of a patent's claims is an issue of Federal Circuit law[.]” Comcast IP Holdings I LLC v. Sprint Communs. Co., 2017 U.S. App. LEXIS 3981, at *11 (Fed. Cir. 2017). Moreover, the ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the patent’s intrinsic evidence (the patent claims, specifications, and prosecution history). UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015); see also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1357 (Fed. Cir. 2016) (“Claim construction is a question of law, reviewed de novo, but any extrinsic fact-finding by the district court in the course of claim construction is reviewed for clear error.”). The second step to establish infringement involves the comparison of the claims to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).

The scope and meaning of the asserted claims is determined by looking to the words of the claims themselves, the specification, the prosecution history, and if necessary, any relevant extrinsic evidence. Advanced Steel Recovery, 808 F.3d at 1315–17. Moreover, claim terms are generally given their ordinary and customary meaning, which is the meaning they would have to a person of ordinary skill in the art at the time of the invention. Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)). “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” UltimatePointer, 816 F.3d at 822 (quoting Phillips, 415 F.3d at 1313); see also Retractable Techs., Inc. v. Becton, 653 F.3d 1296, 1305 (Fed. Cir. 2011) (“It is axiomatic that the claim construction process entails more than viewing the claim language in isolation.”). In particular, “the specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips, at 1313 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). However, while claims are read in view of the specification for which they are a part, it is improper to read limitations from the embodiments in the specification into the claims. Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).

Accordingly, the ordinary and customary meaning of the claim language generally controls unless the patentee acts as his own lexicographer and provides a special definition for a particular claim term or the patentee disavows the ordinary scope of a claim term either in the specification or during prosecution. InterDigital Communs., LLC v. U.S. Int’l Trade Comm’n, 690 F.3d 1318, 1324 (Fed. Cir. 2012); see also Hill-Rom Servs., 755 F.3d at 1371 (“There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution.”) (quoting Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).

The standards for finding lexicography and disavowal are “exacting.” Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015). “To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to define the term.’” Id. (quoting Thorner, 669 F.3d at 1365. “Similarly, disavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” Id. (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). For example, disavowal or disclaimer has been found based on “clear and unmistakable statements by the patentee that limit the claims, such as ‘the present invention includes . . .’ or ‘the present invention is . . .’ or ‘all embodiments of the present invention are . . . .’” Id. (citing Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir. 2006); SciMed Life Sys., Inc., 242 F.3d at 1343–44).

Ultimately, “[t]he only meaning that matters in claim construction is the meaning in the context of the patent,” Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016), and “[l]egal error arises when a court relies on extrinsic evidence that contradicts the intrinsic record.” Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, 824 F.3d 999, 1003 (Fed. Cir. 2016) (citing Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 790 F.3d 1329, 1338 (Fed. Cir. 2015), cert. denied by Universal Lighting Techs., Inc. v. Lighting Ballast Control, LLC, 136 S. Ct. 1226; 194 L. Ed. 2d 185; 2016 U.S. LEXIS 1155 (2016). Therefore, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.” Papst Licensing GmbH & Co. KG v. Fujifilm Corp., 778 F.3d 1255, 1261 (Fed. Cir. 2015) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998), adopted by Phillips, 415 F.3d at 1316).

Lastly, only those claim terms that are disputed must be construed and only to the extent necessary to resolve the dispute. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (2008) (“We, however, recognize that district courts are not (and should not be) required to construe every limitation present in a patent’s asserted claims”). Rather, “[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement.” Id. (quoting U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997); see also Vanderlande Indus. Nederland BV v. U.S. Int’l Trade Comm’n, 366 F.3d 1311, 1323 (Fed. Cir. 2004).

C. Section 337 Exclusion Order Administration

Under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, the Commission has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused articles are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f), (i). 19 U.S.C. § 1337(d), in particular, empowers the Commission to direct the exclusion from entry of articles found to infringe the asserted patents. When the Commission determines there is infringement and thus a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007).

Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed. Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the Commission in the investigation. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id. A general exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).

In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id. at (i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).”) (emphasis added); see also ClearCorrect Operating, LLC v. U.S. Int’l Trade Comm’n, 810 F.3d 1283, 1295 (Fed. Cir. 2015) (“This section [1337(i)] permits the Commission to exclude ‘articles’ from importation into the United States; however, it is difficult to see how one could physically stop electronic transmissions at the borders under the current statutory scheme…. A construction of the term ‘articles’ that includes electronically transmitted digital data is also not reasonable when applied to Section 337(i)(3). This section reads, ‘[u]pon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).’ Not only can an electronic transmission not be subject to an ‘attempted entry’ through a ‘port of entry,’ it also cannot be intercepted at a ‘port of entry’ as contemplated in the statute.”) (emphasis added), reh’ng en banc denied by Clearcorrect Operating v. U.S. Int’l Trade Comm’n, 819 F.3d 1334 (Fed. Cir. 2016).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that infringe the relevant claims of an asserted patent without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame Camera, Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n. 6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)–(D) and 19 U.S.C. § 1337(d)(1).”).

However, this is not the only difference between district court injunctions under section 283 of the Patent Act and Commission exclusion orders under section 337 of the Tariff Act. For example, the traditional test for injunctive relief, used by district courts in accordance with the Supreme Court’s eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), opinion “does not apply to Commission remedy determinations under Section 337.” Spansion, Inc. v. U.S. Int’l Trade Comm’n, 629 F.3d 1331, 1359 (Fed. Cir. 2010). This difference between exclusion orders under Section 337 and injunctions under the Patent Act follows “the long-standing principle that importation is treated differently than domestic activity.” Id. at 1360 (citing United States v. 12 200-Ft. Reels of Super 8mm Film, 413 U.S. 123 (1973) (“Import restrictions and searches of persons or packages at the national borders rest on different considerations and different rules of constitutional law from domestic regulations. The Constitution gives Congress broad, comprehensive powers ‘to regulate Commerce with foreign Nations.’ Art. I, § 8, cl. 3.”); see Buttfield v. Stranahan, 192 U.S. 470 (1904) (“As a result of the complete power of Congress over foreign commerce, it necessarily follows that no individual has a vested right to trade with foreign nations, which is so broad in character as to limit and restrict the power of Congress to determine what articles of merchandise may be imported into this country and the terms upon which a right to import may be exercised. This being true, it results that a statute which restrains the introduction of particular goods into the United States from considerations of public policy does not violate the due process clause of the Constitution.”) (emphasis added).

Moreover, in the district courts, the criteria for adjudicating a violation of an injunction against future infringement by a party whose legacy products have already been adjudged to infringe requires application of the colorable differences test. TiVo Inc. v. Echostar Corp., 646 F.3d 869, 876 (Fed. Cir. 2011) (en banc). Under this test, if new or redesigned products are so different from the product previously found to infringe (focusing not on differences randomly chosen between the two but on the specific features of the product found to infringe in the earlier infringement trial), such that they raise a fair ground of doubt as to the wrongfulness of the defendant's conduct, the new or redesigned products are deemed to be more than colorably different from the legacy one adjudged to be infringing and violation of the injunction at this point would not be the appropriate consideration. Instead, a new trial would be required to litigate the infringement question. Id. at 881–83. The initial inquiry under the colorable differences test, therefore, focuses on whether the modification in question is significant. Id.

Exclusion orders, however, apply to any articles—new, modified, or otherwise— that are “covered by” the patent claims included in the exclusion order. See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56–57, USITC Pub. 3935, Doc ID 287263 (July 2007) (“The Commission's long-standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found, rather than limiting its orders only to those specific models selected for the infringement analysis . . . [W]hile individual models may be evaluated to determine importation and infringement, the Commission's jurisdiction extends to all models of infringing products that are imported at the time of the Commission's determination and to all such products that will be imported during the life of the remedial orders.”). The Commission has confirmed that this requires CBP to employ the traditional two-step test for patent infringement, and not the colorable differences test from TiVo, when administering a Commission exclusion order under section 337 to determine whether an imported article, or one at issue in a ruling request, is within the scope of that exclusion order. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 10, n. 2, Doc ID 539875 (Aug. 2014); see also Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (“The Commission has always issued its orders in terms of ‘infringing’ products, and has always intended them, as in this case, to prohibit to future importation or sale of products which were not specifically adjudged infringing in the violation proceeding, but do in fact infringe. The Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist. Thus, in cases where the violation found involves infringement of patent claims, the Commission has consistently ordered the exclusion of articles which infringe the relevant patent claims.”) (emphasis added).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee,” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843; 187 L. Ed. 2d 703; 2014 U.S. LEXIS 788 (2014), the Commission has held that Medtronic is not controlling precedent and does not overturn its longstanding practice of placing the burden of proof on the party who, in light of the issued exclusion order, is seeking to have an article entered for consumption. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 6–11. In particular, the Commission has noted that “[t]he Federal Circuit has upheld a Commission remedy which effectively shifted the burden of proof on infringement issues to require a company seeking to import goods to prove that its product does not infringe, despite the fact that, in general, the burden of proof is on the patent to prove, by a preponderance of the evidence, that a given article does infringe the patent in question.” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993), (emphasis in original) (citing Sealed Air Corp. v. U.S. Int’l Trade Comm’n, 645 F.2d 976, 988–89 (C.C.P.A. 1981)).

This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co. v. U.S. Int’l Trade Comm'n, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does not dispute, that in an appropriate case the Commission can impose a general exclusion order that binds parties and non-parties alike and effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. The rationale underlying the issuance of general exclusion orders—placing the risk of unfairness associated with a prophylactic order upon potential importers rather than American manufacturers that, vis-a-vis at least some foreign manufacturers and importers, have demonstrated their entitlement to protection from unfair trade practices—applies here [in regard to a limited exclusion order] with increased force.”) (emphasis added) (internal citation omitted).

In the underlying investigation, the ITC determined that TTi infringed certain claims of the ’319 patent through the importation of the ’319 Accused Products. ID at 128–42. Accordingly, the burden is on TTi to establish that the GDOs at issue do not infringe any of claims 1–4, 7–12, 15, and 16 of the ’319 patent.

Infringement Analysis

The claims at issue are claims 1–4, 7–12, 15, and 16 of the ’319 patent. Claims 1 and 9 are independent claims. As noted above in Section I.A.3, claims 1 and 9 can be represented on a limitation by limitation basis as follows:

Limitation Claim Language  A An improved garage door opener comprising  B a motor drive unit for opening and closing a garage door,  C said motor drive unit having a microcontroller [controller] and  D a wall console,  E said wall console having a microcontroller [controller],  F said microcontroller [controller] of said motor drive unit being connected to the microcontroller [controller] of the wall console by means of a digital data bus.   Undisputed Claim Limitations A-E

Counsel for TTi conceded that the GDOs at issue meet Limitations A–E of claims 1 and 9 of the ’319 patent. Starting with Limitation A, TTi admitted that the GDOs at issue retain the same head unit as the ’319 Accused Products. See Oral Arg. Tr. at 7:9–10:9; Chamberlain Post-Proceeding Br., at 4–6. Thus, as in the underlying investigation, it is undisputed that the GDOs at issue are garage door openers. See ID at 130–35.

With respect to Limitations B-E, counsel for TTi conceded that each of these limitations is met by the GDOs at issue, as set forth in the claim chart, below:

Limitation Claim Language   B a motor drive unit for opening and closing a garage door, IPR BRANCH: So let's look at it on a limitation-by-limitation basis to fully understand what limitation you would have to say is not met. So here in your redesign articles [i.e., the GDOs at issue] you have a motor drive unit including a motor for opening and closing a garage door, correct?

TTi: We do, yes.

Oral Arg. Tr. at 37:8–14.  C said motor drive unit having a microcontroller [controller] and IPR BRANCH: You have a microcontroller, “said motor drive unit having a microcontroller.” So you have a microcontroller?

TTi: Yes. As the ALJ has interpreted, we do have a microcontroller in the head unit.

Oral Arg. Tr. at 37:15–20.  D a wall console, IPR BRANCH: Very good. And you have a wall console in your redesigned articles?

TTi: We do have a wall console, yes.

Oral Arg. Tr. at 37:21–38:2.  E said wall console having a microcontroller [controller], IPR BRANCH: And the wall console has a microcontroller?

TTi: It does, yes.

Oral Arg. Tr. at 38:3–5.   Accordingly, we find that the GDOs at issue meet Limitations A–E of claims 1 and 9 of the ’319 patent.

Disputed Claim Limitation F: “said microcontroller [controller] of said motor drive unit being connected to the microcontroller [controller] of the wall console by means of a digital data bus”

Claims 1 and 9 of the ’319 patent recite “said microcontroller [controller] of said motor drive unit being connected to the microcontroller [controller] of the wall console by means of a digital data bus.” Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. In the underlying investigation, the AJL determined that the phrase “digital data bus” should have its plain and ordinary meaning which is ‘a conductor or group of conductors which conveys digital data.” ID at 123. Accordingly, Limitation F of claims 1 and 9 of the ’319 patent requires that the microcontroller (or controller) of the motor drive unit be connected to the microcontroller (or controller) of the wall console by means of a conductor or group of conductors which conveys digital data.

In the underlying investigation, the ALJ found that the ’319 Accused Products meet Limitation F because it was undisputed that [[ ]] and communicates digitally over a wired connection (i.e., a conductor or group of conductors which conveys digital data). ID at 134–35. As shown below, that “wired connection” includes a pair of wires that extend from the wall-mounted keypad to a wire terminal labeled “Keypad” on the head unit.

GDO Determined to be Infringing at the ITC - GD200 Wall Mounted Keypad with End-to-End Wire Connection to Head Unit  


 See Complaint Ex. 26, at 33.   The GDOs at issue replace the pair of wires and the wired, wall-mounted keypad of the ’319 Accused Products with a wireless, wall-mounted keypad and a wireless receiver. The head units in the GDOs at issue are identical to the head units of the ’319 Accused Product, which were found by the ITC to infringe claims 1–4, 7–12, 15, and 16 of the ’319 patent. See Oral Arg. Tr. at 7:9–10:9 (conceding that “[t]he head unit itself did not change, it’s only the wall [console] that changed.”); see also Chamberlain Post-Proceeding Br., at 4–6. As shown in the table below, the wireless receivers of the GDOs at issue include a pair of wires that extend to a wire terminal labeled “Keypad” on the head unit. Thus, the connection from the wireless receiver to the head unit in the GDOs at issue is identical to the connection from the wall-mounted keypad to the head unit in the ’319 Accused Products—a pair of wires that extends to the wire terminal labeled “Keypad” on the head unit.

GDOs at Issue before CBP  GD201 Wall Mounted Wireless Keypad and Wireless Receiver, with Wireless Receiver Connected to Head Unit by a Pair of Wires  

 See Chamberlain Ex. H  GD126 Wall Mounted Wireless Keypad and Wireless Receiver, with Wireless Receiver Connected to Head Unit by a Pair of Wires  

 See Chamberlain Ex. I   During the oral argument before the IPR Branch, TTi conceded that the pair of wires connecting the wire terminal labeled “Keypad” on the head unit to the wireless receiver is a digital data bus that connects the wireless receiver to the controller in the head unit. See Oral Arg. Tr. at 36:9–37:7, 38:6–10, 40:7–15. Indeed, given that: (i) the head unit of the GDOs at issue remains unchanged from the ’319 Accused Products, and (ii) a pair of wires connects the head unit of the GDOs at issue to the wireless receiver in the same manner as a pair of wires connected the head unit to the wired, wall-mounted keypad of the GDOs before the ITC, it follows that the microcontroller (or controller) of the motor drive unit of the GDOs at issue is connected to wireless receiver by means of a digital data bus (i.e., a conductor or group of conductors which conveys digital data).

TTi also conceded that that the wireless receiver’s antenna, itself is “a conductor that conveys digital signals.” See id. at 46:20–47:15. TTi further conceded that the microcontroller in the wall console (wireless, wall-mounted keypad) is connected to and conveys digital data to the wireless receiver via wireless communication of the wireless, wall-mounted keypad. See id. at 53:12–54:10.

Accordingly, the combination of the pair of wires connecting the wire terminal labeled “Keypad” on the head unit to the wireless receiver, the wireless receiver, and the wireless, wall-mounted keypad are a group of conductors which connects and conveys digital data between the microcontroller in the wireless, wall-mounted keypad, and the microcontroller in the head unit. As such, the GDOs at issue meet Limitation F: “said microcontroller [controller] of said motor drive unit being connected to the microcontroller [controller] of the wall console by means of a digital data bus” recited in claims 1 and 9 of the ’319 patent.

In view of the foregoing, the GDOs at issue appear to meet all of the limitations of at least independent claims 1 and 9 of the ’319 patent.

TTi’s Arguments

In the underlying investigation, the ITC determined that TTi infringed claims 1–4, 7–12, 15, and 16 of the ’319 patent through importation of the accused products, i.e., the ’319 Accused Products. ID at 128–42. Accordingly, the burden is on TTi to establish that the GDOs at issue do not infringe any of claims 1–4, 7–12, 15, and 16 of the ’319 patent.

TTi alleges that the GDOs at issue do not meet the requirements of the ’319 patent’s claims “because the indoor keypad and the head unit are no longer connected by wired means.” Ruling Request at 17. TTi alleges that because this connection is no longer wired, the new design fails to infringe the independent claims of the ’319 patent, and thus, “none of the claims are infringed by the new design” and the GDOs at issue should not be subject to exclusion pursuant to the 1016 LEO. Id. (emphasis in the original).

In the course of the inter partes proceeding, TTi raised several bases for finding that claims 1 and 9 of the ’319 patent should not be interpreted to encompass a configuration that includes a wireless connection in the communication path between microcontroller (or controller) of the head unit and the microcontroller (or controller) of the wall console. Specifically: (1) CBP should not rely on what TTI characterizes as dicta from the Initial Determination (“ID”) in the underlying investigation in reaching its determination, (2) Chamberlain is bound by arguments and evidence that it previously submitted to the U.S. Patent and Trademark Office and the ITC that preclude the claims from encompassing the GDOs at issue, (3) the phrase “digital data bus” should be interpreted to exclude wireless connectivity in order to preserve the validity of the claims at issue, and (4) the specification of the ’319 patent lacks written support for construing the claims to encompass the GDOs at issue. See TTi Post Proceeding Br. at 1–2. We now address each of these arguments in turn.

The basis for CBP’s determination.

TTi argues that we should disregard certain statements by the ALJ in the ID about the presence of [[ ]] in a communications path as “dicta that do not apply here.” See TTi Post-Proceeding Br. at 2–4. Our determination is not based on the ALJ’s comments regarding [[ ]].

As a general matter, we treat all determinations of the Commission, including any conclusion of law or finding of fact, that arise from an investigation or related proceeding, as binding authority, and we apply these determinations with preclusive effect. While the Commission made several conclusions of law that are relevant to our analysis, the facts before us in the present ruling are different from those that were before the ITC in the underlying investigation. This ruling is the first instance in which either the ITC or CBP has had an opportunity to adjudicate whether the GDOs at issue infringe any of the claims at issue in the 1016 LEO. Indeed, if the GDOs at issue were before the ITC in the underlying investigation there would be no need for the present ruling. As such, while CBP is bound by the conclusions of law reached by the Commission, including those relating to claim construction, CBP makes its own, independent determinations as to how to apply those conclusions of law to the distinct set of facts before CBP as part of the ruling request.

Specifically, while we have applied the Commission’s conclusion of law as to the construction of the term “digital data bus,” we do not engage in a mechanical application of that conclusion of law to the new set of facts that are now before us in this ruling. Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. With respect to the first step, we follow the ITC’s construction of the phrase “digital data bus” as “a conductor or group of conductors which conveys digital data” and note above that Limitation F of Claims 1 and 9 of the ’319 patent therefore requires that the microcontroller (or controller) of the motor drive unit be connected to the microcontroller (or controller) of the wall console by means of a conductor or group of conductors which conveys digital data. With respect to the second step, we have compared this properly construed claim limitation to the GDOs at issue, and concluded that the combination of the pair of wires connecting the wire terminal labeled “Keypad” on the head unit to the wireless receiver, the wireless receiver, and the wireless, wall-mounted keypad are a group of conductors which connects and conveys digital data between the microcontroller in the wireless, wall-mounted keypad, and the microcontroller in the head unit. Thus, our determination that the GDOs at issue meet Limitation F of claims 1 and 9 of the ’319 patent is based on resolving the mixed question of law and fact that patent infringement presents by way of the long standing, well established two-step process. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc) (Setting forth that infringement analysis is a two-step process: (1) determine the scope and meaning of the patent claims asserted; and (2) compare the properly construed claims to the allegedly infringing device.).

Although the ALJ’s comments in the underlying ITC investigation with respect to [[ ]] are not necessarily binding on us, they do demonstrate that our conclusions are not inconsistent with the record in the underlying ITC investigation. In the underlying investigation, TTi argued that Limitation F was not met because “their products’ use of [[ ]] which ‘cause an intentional ‘break’ in the electrical conduction’ and argue this defeats the “conductor” aspect of ‘digital data bus.’” ID at 135. An [[ ]] is a component that transfers electrical signals between two circuits using light. TTi Post-Proceeding Br. at 2, n.1. This argument became irrelevant, as it depended on an interpretation of the phrase “motor drive unit” that was not adopted by the ALJ. ID at 135. Nevertheless, with respect to Limitation F, the ALJ stated:

Even under Respondents’ interpretation of “motor drive unit,” the limitation is still met. The presence of [[ ]] does not negate the presence of “conductors” also in the [[ ]] which is all the claim requires. It has not been alleged the entire end-to-end link is [[ ]] which would create a colorable argument. The same logic applies for the [[ ]]

Id. at 135 (emphasis added).

While not the basis for our determination, we note that the communication link between the microcontroller (or controller) in the head unit and the microcontroller (or controller) in the wireless, wall-mounted keypad includes numerous “conductors,” such as the pair of wires connecting the wire terminal labeled “Keypad” on the head unit to the wireless receiver and the antennae in the wireless receiver, itself. See Oral Arg. Tr. at 46:20–47:15. As such, our determination that the GDOs at issue meet Limitation F are not inconsistent with what may well be a non-binding statement by the ALJ.

Disclaimer or disavowal of claim scope.

TTi advances several theories that the scope of the claims at issue should be limited based on statements Chamberlain made before the U.S. Patent and Trademark Office during original prosecution of the application that issued as the ’319 patent, before the Patent Trial and Appeal Board, and before the ITC. The statements before each one of these forums is addressed in turn.

Original prosecution before the U.S. Patent and Trademark Office.

TTi argues that the “digital data bus” recited in claims 1 and 9 of the ’319 patent should not be interpreted to encompass wireless communication links, but should instead be limited to wire connections. Specifically, TTi argues that “Chamberlain’s interchangeable use of the terms ‘line’ and ‘bus’ during prosecution signified to the world that the terms are one in the same.” TTi Post-Proceeding Br. at 14.

In the underlying investigation, the AJL determined that the phrase “digital data bus” should have its plain and ordinary meaning which is “a conductor or group of conductors which conveys digital data.” ID at 123. The ordinary and customary meaning of the claim language generally controls unless the patentee acts as his own lexicographer and provides a special definition for a particular claim term or the patentee disavows the ordinary scope of a claim term either in the specification or during prosecution. InterDigital Communs LLC v. U.S. Int’l Trade Comm’n, 690 F.3d 1318, 1324 (Fed. Cir. 2012); see also Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1371 (“There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution.”) (quoting Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).

During prosecution of the application that issued as the ’319 patent, the examiner rejected all of the pending claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Specifically, the examiner’s enablement rejection was not specific to any particular claim limitation, but was instead a sweeping request for a showing of support for the entirety of the claimed subject matter, with the examiner noting that he “could not find any thread of support in the Specification for the filed claims.” See Office Action of September 22, 2004, at 2. In response, the applicant submitted a claim chart mapping the claims to the specification. Response of March 22, 2005 at 5. The claim chart refers to an element identified in the specification as “line 62” is referred as “bus 62.” See the ’319 patent, 4:29–32; Response of March 22, 2005 at 5.

However, merely using words interchangeably as part of a chart that directs an examiner’s attention to one example embodiment in the written description that provides support for the claimed subject matter in response to a non-specific, sweeping request relating to the entirety of the claimed subject matter is not same as making a clear and unmistakable disclaimer or disavowal of claim scope for anything that extends beyond that example. “When the prosecution history is used solely to support a conclusion of patentee disclaimer, the standard for justifying the conclusion is a high one.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045–1046 (Fed. Cir. 2016) citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) (“[F]or prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.”); Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 833 (Fed. Cir. 2003) (“We therefore do not consider the applicants’ statement to be a clear and unambiguous disavowal of claim scope as required to depart from the meaning of the term provided by the written description.”). In this case, the applicant made no statements whatsoever disavowing wireless technology or limiting the term “digital data bus” solely to wires. Further, neither of application claims 1 or 11 (patent claims 1 and 9) were amended to replace or otherwise limit the phrase “digital data bus” to a “line” or “wired” connection, much less limit the claims solely to configurations in which a continuous, wired connection connects the microcontroller of the motor drive unit to the microcontroller of the wall console.

Rather than limiting the scope of the claims, the specification of the ’319 patent supports a broader interpretation of the claims than TTi now advances. The ’319 patent states that “[i]t is a principal aspect of the present invention to provide a quickly and easily retrofitted passive infrared detector for controlling the illumination of a garage door operator through conventional signaling channels.” The ’319 patent at 2:64–67 (emphasis added). By TTi’s own admission, wireless communication “was something that was known in the prior art.” Oral Arg. Tr. at 21:15–22:5.

As the portion of the prosecution history cited by TTi does not rise to the level of a clear and unmistakable disavowal or disclaimer required to limit the scope of the claims, we decline to adopt a more narrow interpretation of the claims than the ordinary and customary meaning adopted by the ITC.

Proceeding before the Patent Trial and Appeal Board

TTi also asserts Chamberlain should be estopped from contradicting positions it has taken before the Patent Trial and Appeal Board (“PTAB”) to preserve validity. A statement made in an inter partes review before the PTAB may limit claim scope if it amounts to a “clear and unmistakable” disclaimer. Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1361 (Fed. Cir. 2017). The following quotes an exchange from the October 12, 2017, deposition of Chamberlain’s expert, Dr. Nathaniel Davis IV, in IPR2017-00126:

Q: So within the confines of the ’319 patent, would sending signals, digital signals using radio frequency or other wireless means, be conveying digital signals over a digital data bus?

A: In my opinion, no.

Ruling Request at Ex. P, 10:38:24–48.

Dr. Davis’s statement does not amount to a clear disclaimer because it can be read consistently with the ITC’s interpretation. Specifically, Dr. Davis explained that a digital data bus was a conductor and that it could transmit data wirelessly, but that the bus would be distinct from any such radio frequency channel. Id. at 10:37:17–10:38:22. Dr. Davis’s disclaimer, if any, does not negate our finding of infringement, which is based on the conductors conveying digital data and not the radio waves themselves.

As the portion of the record from the proceeding before the PTAB cited by TTi does not rise to the level of a clear and unmistakable disclaimer required to limit the scope of the claims, we decline to adopt a more narrow interpretation of the claims than the plain and ordinary meaning adopted by the ITC.

Underlying investigation before the ITC.

TTi also argues that statements made before the ITC in the underlying investigation should limit the scope of the term “digital data bus” in the claims so as to not encompass the GDOs at issue. TTi Reply at 8–10; TTi Post-Proceeding Br. at 5–8. To the extent Chamberlain argued that the claims required an end-to-end wired connection before the ITC, that fact does not advance TTi’s position because the ITC found otherwise after considering such arguments. Chamberlain Post-Proceeding Br. at 9; cf. ID at 122 (noting the Commission’s independent obligation to construe the claims) (citing Bancorp Servs, L.L.C. v. Sun Life Assur. Co. of Canada (US.), 687 F.3d 1266, 1274 (Fed. Cir. 2012)). Accordingly, we decline to adopt a more narrow interpretation of the claims than the plain and ordinary meaning adopted by the ITC.

Interpreting the claims to preserve validity.

TTi further argues that the phrase “digital data bus” should be interpreted to exclude a wireless connection in the communication path between microcontroller (or controller) of the head unit and the microcontroller (or controller) of the wall console in order to preserve the validity of the claims at issue in view of certain prior art and the written description requirement. TTi Reply at 2–3, 10–14; TTi Post-Proceeding Br. at 8–15.

TTi argues that the claims should be interpreted to avoid the prior art Doppelt reference (“Doppelt,” GB 2,312,540 A). TTi Post-Proceeding Br. at 8–15. Notably, this proceeding is the first instance in which Doppelt has been asserted as anticipatory prior art reference that could, as a single reference, invalidate claims 1 and 9 of the ’319 patent. Doppelt was not cited by the examiner as an anticipatory prior art reference in a rejection of the claims during original prosecution of the application that resulted in the ’319 patent—despite the fact the teachings of Doppelt were before the examiner during prosecution. TTi Post-Proceeding Br. at 15 (citing Oral Arg. Tr. at 63:21–64:8) (“U.S. Doppelt Patent which contains the same disclosure [as the Doppelt UK patent application] was considered by the examiner, and that patent appears on the front page of the ’319 patent.”) and Ex. D, U.S. Patent No. 5,969,637 to Doppelt et al. at 4:20-21 (disclosing the same “keypad type door frame mount transmitter 34” as the UK Doppelt).

Before both the PTAB and the ITC, TTi presented Doppelt in combination with other references, noting that Doppelt lacks all of the features to meet the all of the elements of the claims. See Comm’n Op. (determining to (1) affirm the ALJ’ s finding that a combination of prior art references Doppelt, Jacobs, and Gilbert fail to render the asserted claims obvious and (2) affirm the ALJ's finding that a combination of prior art references Matsuoka, Doppelt, and Eckel fail to render the asserted claims obvious); See also Petition for Inter Partes Review, IPR2017-00126, 55–59 (October 25, 2016) (TTi argues the “wall control 39” corresponds to the wall console recited in claims 1 and 9 of the ’319 patent, but acknowledges that “Doppelt does not expressly disclose that its ‘wall control 39’ has a microcontroller [or controller]”). It is not surprising that Chamberlain’s response to these prior art assertions have focused on the combinations of references as presented by TTi, such as the absence of a microcontroller in the ‘wall control 39’ in Doppelt. See Patent Owner Response, IPR2017-00126, 4–15 (August 4, 2017). As such, this is not an instance in which Chamberlain was presented with a prior art rejection or invalidity assertion based solely on Doppelt, and responded with arguments to preserve validity that can be considered a clear and unmistakable disavowal of claim scope relating to the “digital data bus.” Indeed, such a situation, would, at most, place a limit on the application of the doctrine of equivalents, which we have not applied in this case—the GDOs at issue literally infringe claims 1 and 9. See Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999) (a limitation on the doctrine of equivalents arises when an applicant during prosecution either makes an argument evincing a ‘clear and unmistakable surrender’ of subject matter); see also Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 30-31 (1997)( a limitation on the doctrine of equivalents arises when an applicant narrows a claim “to avoid the prior art, or otherwise to address a specific concern . . . that arguably would have rendered the claimed subject matter unpatentable,”); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734 (2002) (an applicant is estopped from later invoking the doctrine of equivalents to recapture subject matter surrendered through amendments and arguments). Instead, it is an instance in which Doppelt was considered by the examiner and not applied in a prior art rejection, and, when it was applied by TTi, Doppelt was not applied in the manner it is now presented, for the first time, in this proceeding. As such, TTi’s efforts to limit the scope of the claims based on the disclosure in the Doppelt that TTi, itself, did not rely on in multiple attempts to invalidate the claims of the ’319 patent are not persuasive.

Further, the Federal Circuit has limited the maxim that claims should be construed to preserve their validity “to cases in which ‘the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.’” Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc) quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004); citing Generation II Orthotics, Inc. v. Medical Tech., Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001) (“Claims can only be construed to preserve their validity where the proposed claim construction is ‘practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1309 (Fed. Cir. 2000) (“having concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity”); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434 (Fed. Cir. 1988) (rejecting argument that limitations should be added to claims to preserve the validity of the claims).

TTi did not present arguments before the ITC that the claims, themselves, or the phrase “digital data bus,” itself, is ambiguous. TTi now argues that “at a minimum there’s got to be at least ambiguity whether or not these claims cover this new partially wired/partially wireless system,” and that “Chamberlain’s statements to the ITC and PTAB create ambiguity about whether the claims can be interpreted as broadly as Chamberlain is now proposing…” Oral Arg. Tr. at 123:19–21; TTi Post-Proceeding Br., at 8, 15. However, uncertainty as to whether properly construed claims cover a new article or whether statements in other forums by a patent owner will be considered a clear and unmistakable disavowal in claim scope do not relate to whether there exists ambiguity in the language of the claims, themselves. Accordingly, we need not construe the claims with an eye to preserving their validity, but instead employ the plain and ordinary meaning of the phrase “digital data bus” adopted by the ITC.

Written description support.

TTi argues that “the ’319 patent never describes or even suggests use of wireless communications between the microcontroller of the wall console and the microcontroller of the motor drive unit . . . [r]ather, the patent describes and claims a specific configuration.” See TTi Post Proceeding Br. at 16. TTi states that “to adopt Chamberlain’s new construction would evade the statutory requirement that a patent’s specification must provide a ‘written description of the invention.’” Id. at 15.

There is no dispute that the specification of the ’319 patent describes and depicts an embodiment where a wire extends all the way from the motor drive unit to the wall console. See Fig. 1 of the ’319 patent; Chamberlain Post Proceeding Br. at 8. However, we agree with Chamberlain that “this is merely an exemplary embodiment.” Id.

The Federal Circuit has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment. See ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1091 (Fed. Cir. 2013); Apex Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1377 (Fed. Cir. 2003); Altiris, Inc. v. Symanetc Corp., 318 F.3d 1363, 1373 (Fed. Cir. 2003); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002); SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 n.14 (Fed. Cir. 1985) (en banc). Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using “words or expressions of manifest exclusion or restriction.” Teleflex, 299 F.3d at 1327.

And, as noted by Chamberlain, “the specification contains no language limiting the connection to a solely wired one, and TTi has not identified any such language” and “the claims do not recite an end-to-end or direct wired connection.” Chamberlain Post Proceeding Br. at 8.

Finally, TTi cites Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1348 (Fed. Cir. 1998) in support of their argument that it is the “narrow construction that is clearly supported by the written description,” i.e., that given the lack of support in the specification, the ’319 patent’s claims cannot be interpreted to suddenly encompass a wireless connection between the wall console and motor drive unit. TTi Post Proceeding Br. at 15–16. However, as we discussed above in Section III.E.2.a, rather than limiting the scope of the claims, the specification of the ’319 patent supports a broader interpretation of the claims than TTi now advances. The ’319 patent states that “[i]t is a principal aspect of the present invention to provide a quickly and easily retrofitted passive infrared detector for controlling the illumination of a garage door operator through conventional signaling channels.” The ’319 patent at 2:64–67 (emphasis added). By TTi’s own admission, wireless communication “was something that was known in the prior art.” Oral Arg. Tr. at 21:15–22:5.

Accordingly, we are not persuaded that the claims lack written description support as presently applied. Further, as noted above, TTi has failed to present arguments that the claims, themselves, are ambiguous, and should thus be construed in a manner that preserves their validity.

HOLDING:

We find that TTi has not met its burden to establish that the Ryobi GD126 and GD201 garage door openers, the GDOs at issue, do not infringe the intellectual property at issue in the 1016 LEO (i.e., any of claims 1–4, 7–12, 15, and 16 of U.S. Patent No. 7,161,319). Specifically, the GDOs at issue appear to meet all of the limitations of at least independent claims 1 and 9 of the ’319 patent, and TTi has not met its burden to establish that the GDOs at issue do not infringe these claims. Accordingly, we hold that the GDOs at issue are subject to the 1016 LEO.

Accordingly, they are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption except as provided by law.

The decision is limited to the specific facts set forth herein. If the Ryobi GD201 or GD126 garage door openers differ in any material way from the GDOs at issue described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. Part 177.2(b)(1), (2), and (4), Part 177.9(b)(1) and (2).

Sincerely,

Charles R. Steuart
Chief, Intellectual Property Rights Branch


cc: Joseph V. Colaianni Jr.
Fish & Richardson P.C.
1000 Maine Avenue, S.W.
Suite 1000
Washington, DC 20024
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