• HQ H344639
• Feb 20, 2026

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

OT:RR:BSTC:EOE H344639 ACC

Joseph P. Reid
Perkins Cole LLP
11452 El Camino Real
Suite 300
San Diego, CA 92130

VIA EMAIL: [email protected]

RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1118; Certain Movable Barrier Operator Systems and Components Thereof

Dear Mr. Reid:

Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch, Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this administrative ruling, based on a request from Nortek, Inc., Nice North America LLC f/k/a Nortek Security & Control LLC and GTO Access Systems, LLC (“Nice” or “Nortek”), regarding (i) certain modified garage door operators (“GDOs”), as described below, and (ii) other GDOs that Nice argues have the same functionality as a legacy product found not to infringe during the underlying investigation at the U.S. International Trade Commission (“ITC” or “Commission”), ITC Investigation No. 337-TA- 1118 (“the 1118 investigation”), resulting in the limited exclusion order (“LEO”) under Section 337 of the Tariff of 1930, as amended, 19 U.S.C. § 1337 (“Section 337”).

We further note that determinations of the Commission resulting from the underlying investigation or a related proceeding under 19 C.F.R. Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision pertaining to Section 337 exclusion orders.  This ruling is the result of a request for an administrative ruling (“Ruling Request”) under 19 C.F.R. Part 177 that was conducted on an inter partes basis. The proceeding involved the two parties with a direct and demonstrable interest in the question presented by the Ruling Request: (1) your client, Nice, the ruling requester and respondent in the 1118 investigation; and (2) The Chamberlain Group, Inc. (“Chamberlain”), the patent owner and complainant in the 1118 investigation. See, e.g., 19 C.F.R. § 177.1(c).

The parties were asked to identify in their submissions confidential information, including information subject to the administrative protective order in the underlying investigation, with [[red brackets]]. See 19 C.F.R. §§ 177.2, 177.8. Consistent with the above, the parties are directed to identify information in this ruling that should be bracketed because it constitutes confidential information, as defined below, and therefore should be redacted from the public version of the ruling that will be published in accordance with 19 C.F.R. § 177.10. The parties are to contact the EOE Branch within ten (10) business days of the date of this ruling to identify such information with the brackets referenced above. See, e.g., 19 C.F.R. § 177.8(a)(3).

Please note that disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and 19 C.F.R. § 177.8(a)(3). See, e.g., 19 C.F.R. § 177.10(a). In addition, CBP is guided by the laws relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974, as amended (5 U.S.C. § 552a). 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. See, e.g., 19 C.F.R. § 177.8(a)(3). The person seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing that: the information in question is customarily kept private or closely-held and either that the government provided an express or implied assurance of confidentiality when the information was shared with the government or there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See Food Marketing Institute v. Argus Leader Media, 139 S. Ct. 2356, 2366 (2019) (concluding that “[a]t least where commercial or financial information is both customarily and actually treated as private by its owner and provided to the government under an assurance of privacy, the information is ‘confidential’ within the meaning of exemption 4.”); see also U.S. Department of Justice, Office of Information Policy (OIP): Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (updated 10/7/2019); see also OIP Guidance: Exemption 4 after the Supreme Court’s Ruling in Food Marketing Institute v. Argus Leader Media (updated 10/4/2019).

I. BACKGROUND

A. ITC Investigation No. 337-TA-1118

1. Procedural History At The ITC

The Commission instituted Investigation No. 337-TA-1118 on June 11, 2018, based on a complaint filed by Chamberlain. Certain Movable Barrier Operator Systems and Components

2 Thereof, Inv. No. 337-TA-1118 (Remand), EDIS Doc. ID 839790, Commission Opinion (Public) (Dec. 20, 2024) (“Remand Comm’n Op.”) at 2 (citing 83 Fed. Reg. 27020-21 (June 11, 2018)). The complaint, as supplemented, alleged a violation of Section 337 by reason of infringement of certain claims of U.S. Patent Nos. 8,587,404 (“the ʼ404 patent”), 7,755,223 (“the ʼ223 patent”) and 6,741,052 (“the ʼ052 patent”). Remand Comm’n Op. at 2. The notice of investigation named Nortek as the sole respondent. Certain Movable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1118, EDIS Doc. ID 646899, Institution of Investigation (Public) (June 6, 2018). The Commission’s Office of Unfair Import Investigations (“OUII”) was not named as a party in the investigation. Remand Comm’n Op. at 2.

On November 25, 2019, the presiding Administrative Law Judge (“ALJ”) issued two initial determinations. Certain Movable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1118, EDIS Doc. ID 697391, Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond (Public) (Nov. 25, 2025) (“FID”); see also Certain Movable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1118, EDIS Doc. ID 697386, Initial Determination Granting Chamberlain Group, Inc.’s Motion for Summary Determination That It Has Satisfied the Economic Prong of the Domestic Industry Requirement (Public) (Nov. 25, 2025) (“Order No. 38”). First, the ALJ issued Order No. 38, granting Chamberlain’s motion for summary determination that it satisfied the economic prong of the domestic industry (“DI”) requirement for all three asserted patents. See Order No. 38 at 23. Second, the ALJ issued a final initial determination finding no violation of Section 337. See FID at 287. Specifically, the ALJ determined that no violation of Section 337 occurred because “(i) Nortek did not infringe claim 11 of the ʼ404 patent; (ii) Nortek did not infringe the ’223 patent and Chamberlain did not satisfy the technical prong of the domestic industry requirement for that patent; and (iii) claim 1 of the ʼ052 patent is invalid as obvious.” Remand Comm’n Op. at 2.

On April 22, 2020, the Commission, in reviewing the FID, adopted the FID’s no-violation finding for the ʼ404 patent and took no position on the FID’s finding that Nortek failed to prove by clear and convincing evidence that claim 11 of the ʼ404 patent is abstract and patent ineligible under section 101. Remand Comm’n Op. at 3; see also Certain Movable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1118, EDIS Doc. ID 708681, Commission Final Determination Finding No Violation of Section 337 as Two Patents, Remanding for Further Proceedings as to One Patent (Public) (April 22, 2020) (“Comm’n Notice”) at 3. However, the Commission vacated Order No. 38 and remanded the DI economic prong to the ALJ for further proceedings regarding the ’223 patent, while keeping under review the FID’s other findings with respect to that patent. Remand Comm’n Op. at 3.

On July 10, 2020, the ALJ issued a Remand Initial Determination (“First RID”). Id. In the First RID, the ALJ found that that Chamberlain satisfied the DI economic prong for the ʼ223 patent under Section 337(a)(3)(A) and (B), 19 U.S.C. § 1337(a)(3)(A) and (B), by making significant investments in plant and equipment, and labor and capital, respectively with respect to articles protected by that patent. Id. The First RID, however, made no findings regarding the ʼ404 patent because it was no longer at issue after the Commission adopted the FID’s no-violation finding based on non-infringement of the ʼ404 patent. Id.

3  On December 3, 2020, the Commission, in its review of the First RID, found a violation of Section 337 solely as to the ’223 patent and determined that the appropriate remedy was a limited exclusion order directed to Nortek. Remand Comm’n Op. at 3-4. Specifically, the Commission determined that Nortek infringed the ʼ223 patent, that Chamberlain satisfied the DI technical prong for the ʼ223 patent, and to adopt the First RID’s findings that Chamberlain satisfied the DI economic prong for the ’223 patent. Id.

For confirmation, during the underlying investigation, Complainant accused the following products1 of infringing the asserted patents:

Accused Product Name Asserted Patents LDCO800 including private label versions The ’223 patent and the ’052 patent. (i.e., 800N, Megacode, DC Operator; 800N, Mega, DC Oper, Pvt, Lbl; 800N, Mega, DC Oper, Pvt Lbl; 800N, MEGA, DC OPER “ASSA ABLOY”; 800N, Megacode, DC Operator, Pvt; GD DEPOT LOCO; and DGD Private Label DC Opener) LDCO850 including private label versions The ’404 patent; the ’223 patent; and the ’052 (i.e., Smart DC Megacode Oper 1 Led Light; patent. AFS LDCO850 PVT; and DGD LDCO850) LDCO852 including private label versions The ’404 patent; the ’223 patent; and the ’052 (i.e., DGD LDCO852; and Smart DC patent. LDCO852 No Batt) Amarr840 including private label versions The ’404 patent; the ’223 patent; and the ’052 (i.e., Ent840 1 Led GDO) patent. Amarr860 including private label versions The ’404 patent; the ’223 patent; and the ’052 (i.e., Ent860 3 Led GDO; and PDS Ultra 900) patent. MM9434K The ’404 patent; the ’223 patent; and the ’052 patent. MM9545M The ’404 patent; the ’223 patent; and the ’052 patent. MM9333H The ’404 patent; the ’223 patent; and the ’052 patent. LDCO800A The ’223 patent and the ’052 patent. LDCO850A The ’404 patent; the ’223 patent; and the ’052 patent. LDCO852A The ’404 patent; the ’223 patent; and the ’052 patent.

1 During the underlying investigation, Chamberlain also accused the following “Original Gate Operator Products” of only infringing the now expired ’052 patent (and for which the Commission found no violation): BGU, BGU-D, BGUS, BGUS-D, SG, SG-D, VS-GSLG, GSLG-A, HSLG, SLR, SLC, SLD, SWG, SWR, SWC, SWD, TYM-VS2, TYM 1000, TYM 2000, BGUA, BGU-DA, BGUSA, BGUS-DA, SGA, SGDA, VS-GSLGA, GLSG-AA, HSLGA, SLRA, SLCA, SLDA, SWGA, SWRA, SWCA, SWDA, TYM-VS2A, TYM-l000A, TYM-2000A, MM371 W, MM372W, MM571 W, MM572W, TS571W. FID at 19-20.

4  Amarr840A The ’404 patent; the ’223 patent; and the ’052 patent. Amarr860A The ’404 patent; the ’223 patent; and the ’052 patent. MM9434KA The ’404 patent; the ’223 patent; and the ’052 patent. MM9545MA The ’404 patent; the ’223 patent; and the ’052 patent. MM9333HA The ’404 patent; the ’223 patent; and the ’052 patent.

FID at 17-20.

Accordingly, in the limited exclusion order issued on December 3, 2020, the Commission ordered that “Movable barrier operator systems and components thereof that infringe one or more of claims 1 and 21 of the ’223 patent and are manufactured abroad by, or on behalf of, or imported by or on behalf of [Nortek] or any of their affiliated companies, parents, subsidiaries, agents, or other related business entities, or its successors or assigns, 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, for the remaining terms of the Asserted Patents, except under license from, or with the permission of, the patent owner or as provided by law.” Certain Movable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1118, EDIS Doc. ID 727094, Limited Exclusion Order (Public) (Dec. 3, 2020) at ¶ 1 (“1118 LEO”). The 1118 LEO as originally issued expired on April 22, 2024, given the expiration of the ’223 patent. Certain Movable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1118, EDIS Doc. ID 727095, Letter to CBP Regarding Issuance of a Limited Exclusion Order (Public) (Dec. 3, 2020) at 1 (“The expiration date of the subject patent is April 22, 2024.”).

2. Federal Circuit Appeal And Remand

On June 16, 2020, Chamberlain appealed the Commission’s determination of no violation with respect to the ’404 patent and the ʼ052 patent2 -- the latter of which expired while the appeal was pending -- to the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”). Remand Comm’n Op. at 4. On April 1, 2021, Nortek cross-appealed the Commission’s violation determination for the ʼ223 patent. Id. On April 27, 2023, the Federal Circuit issued a decision that (i) affirmed the Commission’s violation determination for the ʼ223 patent; (ii) with respect to the ’404 patent, reversed the Commission’s construction of the term “movable barrier operator,” vacated the Commission’s non-infringement, waiver, and no violation determination, and remanded with instructions for the Commission to re-evaluate infringement of the ʼ404 patent under the Federal Circuit’s construction of “movable barrier operator”; and (iii) vacated the Commission’s determinations for the expired ʼ052 patent and remanded with instructions for the Commission to dismiss the action with respect to that patent as moot. Id. at 4.

2 Regarding the ’052 patent, in the final initial determination issued on November 25, 2019, the ALJ found that claim 1 of the ’052 patent was infringed by Nortek’s original door operator products but found no violation of Section 337 because the asserted claim was found to be invalid. FID at 286-287. On April 22, 2020, the Commission affirmed the FID’s findings that there was no violation of Section 337 with respect to the ’052 patent. Comm’n Notice at 3.

5  On October 4, 2023, the Commission determined not to reopen the record with respect to the issues of infringement and patent eligibility of the ’404 patent and remanded the investigation to the ALJ for the sole purpose of determining whether Chamberlain has satisfied the DI economic prong for the ʼ404 patent. Remand Comm’n Op. at 5. On May 8, 2024, the ALJ issued a Remand Initial Determination (“Second RID”) finding that Chamberlain has satisfied the DI economic prong for the ʼ404 patent under subsections 337(a)(3)(A), (B), and (C), 19 U.S.C. § 1337(a)(3)(A), (B), (C). Id. Additionally, the Second RID also found that Nortek infringed claim 11 of the ʼ404 patent under the Federal Circuit’s construction of “movable barrier operator” and that the Nortek products accused of infringing the ʼ404 patent are the same as those found to infringe the ʼ223 patent even though the Commission did not ask the ALJ to make any findings on infringement or the DI technical prong. Id. at 5-6. On June 25, 2024, the Commission determined to review the Second RID and requested briefing on remedy, bond, and the public interest. Id. at 6.

On November 21, 2024, the Commission, in its review of the Second RID, found a violation of Section 337 based on infringement of claim 11 of the ʼ404 patent and determined to issue a limited exclusion order directed to Nice (“Remand 1118 LEO”). Remand Comm’n Op. at 47. In this remand limited exclusion order, the Commission ordered that “Movable barrier operator systems and components thereof that infringe claim 11 of the ʼ404 patent and are manufactured abroad by, or on behalf of, or imported by or on behalf of Respondents or any of their affiliated companies, parents, subsidiaries, agents, or other related business entities, or its successors or assigns, 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, for the remaining terms of the Asserted Patents, except under license from, or with the permission of, the patent owner or as provided by law.” Certain Movable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1118, EDIS Doc. ID 837795, Limited Exclusion Order (Public) (Nov. 21, 2024) at ¶ 1.

3. The Patent Claims In The Remand 1118 LEO

As noted above, the Remand 1118 LEO prohibits the unlicensed entry for consumption of movable barrier operator systems and components thereof that infringe claim 11 of the ʼ404 patent. Remand 1118 LEO at ¶ 1. The asserted patent at issue covers features of movable barrier systems such as automatic garage door openers. During the appeal referenced above, the Federal Circuit provided the following description concerning the ’404 patent:

The ’404 patent, entitled “Movable Barrier Operator and Transmitter with Imminent Barrier Moving Notification,” teaches a movable barrier operator that plays a sound — for instance, an alarm — indicating that a barrier is imminently about to move, but only does so when the barrier is operated remotely. The sound is not played when the movable barrier operator is operated locally. The system determines whether to sound the imminent barrier warning by distinguishing between whether it received a signal from a remote source, such as a smartphone, or from a local source, such as a button on a garage wall.

Figure 1 from the ’404 patent depicts a garage door opener practicing the invention:

6  Item 12 in the figure is a “head unit” and item 40 is a “wall station.” The head unit is connected to the wall station by a wire, item 41.

Chamberlain Grp., Inc. v. Int’l Trade Comm’n, 2023 U.S. App. LEXIS 10273 at *3 (Fed. Cir. 2023).

a. Claim 11 of the ’404 Patent

Independent claim 11 of the ’404 patent is reproduced below:

11. [preamble] A movable barrier system with a moving-barrier imminent motion notification, the system comprising:

[a] a movable barrier operator connected to control movement of a movable barrier between a first position and a second position;

[b] the movable barrier operator comprising: a communication connection comprising at least one of the group consisting of: a direct wireless connection to a transmitter, a local wired connection, a system wired connection, a network connection, and a wireless communication system connection; and

7  [c] a processor configured to determine whether a received command for closing the movable barrier was received from at least one of the system wired connection, the network connection, and the wireless communication system connection;

[d] the processor configured to effect the closing of the movable barrier in combination with operating a moving barrier imminent motion notification in response to determining that the received command for the closing was received from at least one of the system wired connection, the network connection, and the wireless communication system connection;

[e] the processor configured to determine whether the received command for the closing was received from at least one of the direct wireless connection to the transmitter and the local wired connection;

[f] the processor configured to effect the closing of the movable barrier without operating the moving-barrier imminent motion notification in response to determining that the received command for the closing was received from at least one of the direct wireless connection to the transmitter and the local wired connection.

Remand Comm’n Op at 8-9; see also ’404 patent, col. 14:1-33 (emphasis added).

In the 1118 investigation, “[t]he Commission originally construed the claim term “movable barrier operator” as including the head unit 12 but excluding the wall station 40.” Remand Comm’n Op. at 9. On appeal, “the Federal Circuit reversed [the Commission’s] construction, finding not only that the ‘movable barrier operator’ may comprise ‘multiple discrete components functioning together,’ but also that the plain and ordinary meaning of the term ‘is not limited to a single, discrete physical assembly or housing, and is not limited to just a head unit.’” Id. at 9-10. Under the Federal Circuit’s construction, the Commission noted that “the claimed ‘processor’ may be either in the head unit or the wall station.” Id. at 10.

4. The Legacy Products From The Underlying Investigation And Remand Proceedings

After the Federal Circuit reversed the Commission’s findings with respect to the ’404 patent , Chamberlain accused the same three sets of products of infringing the ’404 patent: “(i) the so-called ‘original’ accused Nortek products [(“Legacy Products”)], including their private label counterparts; (ii) the ‘alternative’ Nortek products, which Nortek redesigned during the course of the investigation [(“First Attempted Redesign”)]; and (iii) the Mighty Mule MM9333H and MM9333HA products (the ‘Mighty Mule products’).” Remand Comm’n Op. at 10. Notably, Chamberlain did not accuse the LDCO800 and its private label versions (i.e., 800N, Megacode, DC Operator; 800N, Mega, DC Oper, Pvt, Lbl; 800N, Mega, DC Oper, Pvt Lbl; 800N, MEGA, DC OPER “ASSA ABLOY”; 800N, Megacode, DC Operator, Pvt; GD DEPOT LOCO; and DGD Private Label DC Opener) or the LDCO800A of infringing the ’404 patent in the underlying investigation. FID at 18; see also Remand Comm’n Op. at 10.

8  As for the three sets of products referenced above, first, the Legacy Products included the following Nortek and private label counterpart garage door openers: LDCO850; LDCO852; Amarr840; Amarr860; MM9434K; MM9545M; Smart DC Megacode Oper 1 LED Light; AFS LDCO850 PVT and DGD LDCO850 (private labels of the LDCO850); DCD LDCO852; Smart DC LDCO852 No Batt (private label of the LDCO852); and Ent840 1 Led GDO (private label version of the Amarr840). See Remand Comm’n Op. at 10, fn 10. All of the Legacy Products “include: (i) a head unit, which contains a processor and a motor to control movement of the garage door; (ii) a wall station with a push button that is hard-wired to the head unit for sending commands to open and close the garage door; and (iii) a Wi-Fi receiver in the wall station that can receive commands sent remotely (e.g., via an application on a smart phone) to open or close the garage door.” Id. at 11. Further, the Legacy Products “sound an alarm when the close-door command is received by the Wi-Fi receiver but not when it is from a push of the local wall station button.” Id. at 11. The Commission found that the Legacy Products “infringed the ’404 patent.” Remand Comm’n Op. at 29.

Second, the First Attempted Redesign included “LDCO850A, LDCO852A, Amarr840A, Amarr860A, MM9434KA, [and] MM9545MA.” Remand Comm’n Op. at 10, fn 11. The First Attempted Redesign is “nearly identical in structure and differ[s] only with respect to some changes in the software” for these products. Id. Specifically, the software for the First Attempted Redesign has two differences: (1) “software code that differentiates remote and local commands and determines whether to sound the alarm or not from the head unit processor to the wall station processor” and (2) “Nortek replaced the original single command from the wall station to the head unit that triggered the alarm in response to a remote close-door command with a sequence of two commands.” Remand Comm’n Op. at 15. The Commission also found that the First Attempted Redesign “infringe[d] the ’404 patent.” Remand Comm’n Op. at 32.

Third, the Mighty Mule products included the Mighty Mule MM9333H and the Mighty Mule MM9333HA. Remand Comm’n Op. at 10, fn 12. The Mighty Mule products “do not have a Wi-Fi capability or a smart wall station with a processor contained therein.” Remand Comm’n Op. at 17. Instead, “the Mighty Mule products have a simple analog design with a push button but no processor.” Id. The Commission found that “Chamberlain failed to prove that the Mighty Mule MM9333H and MM9333HA infringe claim 11 [of the ’404 patent.]” Remand Comm’n Op. at 33.

B. 19 C.F.R. Part 177 Ruling Request

1. Procedural History Regarding The Ruling Request

On December 23, 2024, Nice submitted a request for an administrative ruling pursuant to 19 C.F.R. Part 177, which included exhibits 1-24 and a declaration of Nice employee John Frost. Nice Email to EOE Branch (dated December 23, 2024). Nice sought a ruling that its new redesigned garage door operators (“Redesigned GDOs”) and certain other garage door operators that it argues have the same functionality as an accused product from the underlying investigation that the Commission found to be non-infringing (“Other GDOs”), both as described in greater detail below (collectively, “articles at issue”), are not subject to the Remand 1118 LEO and, as such, should not be excluded from entry for consumption in the United States. Ruling Request at 1. Nice primarily argues that the Redesigned GDOs “have been redesigned to eliminate two

9 required claim elements of U.S. Patent No. 8,587,404 (‘the ’404 Patent’) covered by the Limited Exclusion Order[.]” Id. On December 30, 2024, the EOE Branch sent an email to Nice, confirming receipt of its Ruling Request. EOE Branch Email to Nice (dated December 30, 2024). On December 30, 2024, Nice confirmed that a redacted copy of the Ruling Request was sent to Chamberlain. Nice Email to EOE Branch (dated December 30, 2024). On January 6, 2025, the parties provided the EOE Branch with a copy of the parties’ executed non-disclosure agreement. Parties Email to EOE Branch (dated January 6, 2025). On January, 6, 2025, the EOE Branch had an initial conference call with Nice and Chamberlain, during which both parties agreed to conduct this proceeding on an inter partes basis as administered by the EOE Branch. EOE Branch Email to Parties (dated January 6, 2025). The EOE Branch and parties also discussed the procedural schedule, with the EOE Branch requesting that the parties submit a joint proposed schedule on January 10, 2025, and if the parties were unable to agree on such a schedule to submit a status update that day. Id. On January 10, 2025, the parties sent the EOE Branch an update indicating that the parties were unable to reach a joint procedural schedule and each party provided the EOE Branch its respective proposed procedural schedule. Parties Email to EOE Branch (dated January 10, 2025). Chamberlain also indicated that it may need “additional discovery” involving “source code and, potentially, physical samples of the allegedly redesigned products.” Id. On January 13, 2025, the EOE Branch established the procedural schedule for this inter partes proceeding.

Additionally, when establishing the procedural schedule on January 13, 2025, the EOE Branch included the following response to Chamberlain’s discovery-related point:

While the EOE Branch will not order a party to produce specific information in this proceeding, the burden of proving non-infringement remains on the party seeking to import the articles at issue, and failure to meet that burden through the information and evidence proffered would result in a finding that those articles are subject to exclusion from entry. Based on our review of the submissions, the sense of the EOE Branch at this time on the issues above, as raised in this inter partes proceeding, is the following:

• If Chamberlain requests additional source code, samples, or other information that are relevant to addressing the admissibility of the articles at issue in this ruling request, Nice should make a good faith effort to provide the requested source code, samples, or other information to Chamberlain in a timely manner. • Notwithstanding the above, if Nice elects not to provide certain materials, it still can make any arguments to the EOE Branch in this inter partes proceeding why producing such a sample, source code, or other information is not necessary to carry its burden to establish admissibility of the articles at issue in this ruling request. • Notwithstanding the above, Chamberlain still can make any arguments to the EOE Branch in this inter partes proceeding why, by not providing certain source code, samples, or other information, Nice has failed to carry its burden to establish admissibility of the articles at issue in this ruling request.

EOE Branch Email to Parties (dated January 13, 2025).

10  On February 3, 2025, Chamberlain provided its response to the Ruling Request, which included attachment A (collectively, “Chamberlain Response”). On February 11, 2025, Nice provided its reply to Chamberlain’s response, which included Exhibit 25 (collectively, “Nice Reply”). On February 17, 2025, Chamberlain provided its sur-reply (“Chamberlain Sur-Reply”) to the Nice Reply. On February 27, 2025, the EOE Branch conducted an oral discussion with the parties, with each party providing a presentation (“Nice Oral Discussion Presentation” and “Chamberlain Oral Discussion Presentation,” respectively). Lastly, on March 6, 2025, the parties submitted post-oral discussion submissions (“Nice Post Oral Discussion Submission” and “Chamberlain Post Oral Discussion Submission,” respectively).

2. The Articles At Issue In This Inter Partes Proceeding

The articles at issue in the Ruling Request consist of Redesigned GDOs that were not developed at the time of the underlying investigation at the Commission and Other GDOs that Nice argues have the same functionality as products the Commission found to be non-infringing. Specifically, the articles at issue (five in total) for which Nice has requested a ruling are the (1) Linear 661; (2) Nice 1461j; (3) LDCO801; (4) PRO1461j; and (5) Linear 621. Ruling Request at 9-10, 13-14. The first two articles at issue listed above are the Redesigned GDOs. The remaining three articles at issue are the Other GDOs that Nice argues have the same non-infringing functionality as certain products that the Commission found to be non-infringing during the underlying investigation. Nice describes the Linear 661 and Nice 1461j as devices that are “capable of connecting to a wi-fi network via a receiver in the wall station” but do[] not infringe claim 11 of the ’404 patent due to “re-designed [] software[.]” Id. at 9-10. Nice describes the LDCO801, Nice PRO1461j, and Linear 621 as devices that “entirely lack the feature accused of infringing the ’404 Patent” because these other products are “sold with [] analog wall station[s] with no wi-fi capability, and thus no remote alarm capability.” Ruling Request 13-14.

a. Description of Functionality for the Redesigned GDOs (Linear 661 and Nice 1461j)

The Linear 661 and Nice 1461j are “capable of connecting to a wi-fi network via a receiver in the wall station.” Ruling Request at 9, 10. As discussed in greater detail below, the Redesigned GDOs have modified software that “operates by setting flags in both the wall station and head unit when both are first powered up to indicate that the wall station has not yet been connected to wi- fi.” Ruling Request at 9 (citing Frost Decl. at ¶ 9).

If a user presses the button on the wall station of the Linear 661 before the wall station has been connected to wi-fi, the wall station will send a close command to the head unit. Id. Specifically, “the software in the head unit [[ ]] the head unit will close the door without alarming.” Id. (citing Frost Decl. at ¶ 11). If the wall station of the Linear 661 has been connected to wi-fi, “it [[ ]] Id. at 10 (citing Frost Decl. at ¶¶ 10, 12); see also Chamberlain Response at 11. [[ ]] any closing command from the wall station or the RF transmitter will result in the head unit alarming before it closes, including

11 commands from the wall station or the RF transmitter.” Id. (citing Frost Decl. at ¶¶ 13-14) (emphasis added). The RF transmitter is a short-range radio frequency (RF) transmitter, often carried in a vehicle and used when in the line of sight of the door, to send a radio frequency (i.e., a local source) to the head unit, as indicated as 30 in the figure below from the ’404 Patent:

’404 Patent at 9:8-19 (“For instance, communications received from a direct wireless transmitter, for example, a wireless transmitter 30 located in a car 250 communicating directly to the movable barrier operator 210 via its antenna 217 and/or a transceiver (not shown), or from a direct wired connection 220 via a wall mounted wire transmitter 40 located in the garage 16, indicate that the user is likely in visual contact with the movable barrier 24. Therefore, the movable barrier operator 210 operates the movable barrier 24 between the open or closed position without operating the moving-barrier imminent motion notification to reduce user annoyance.”); see also Ruling Request at 3.

If a user turns off the power for the head unit, it will reset to its original configuration where there is no Wi-Fi connection. Chamberlain Response at 11. Ultimately, due to the redesigned software, Nice argues this means “[[

]]” Id. at 9; see also Frost Decl. at ¶¶ 11-13, 26-29.

The redesigned software for the Nice 1461j is materially the same as the redesigned software for the Linear 661, but the technical operation of the source code is different. See Ruling Request at 10-11; see also Chamberlain Response at 11 (“The redesigned Nice 1461j products are configured to operate in the same way as the redesigned Linear 661 products in all ways material to this proceeding”). As explained by Nice, [[

]] if the head unit receives a close command, it will close the door without alarming.” Ruling Request at 10. If a “user connects the wall station to Wi-Fi, [[ 12  ]] any closing command from the wall station or the RF transmitter will result in the head unit alarming before it closes, including commands from the wall station or the RF transmitter.” Ruling Request 10-11 (citing Frost Decl. at ¶¶ 23-29). A user can power off and power on the head unit to reset it to its original configuration where there is no Wi-Fi connection, and [[ ]] Chamberlain Response at 12.

The following chart describes the operation of the wi-fi flags in both of the Redesigned GDOs:

[[ ]]

13 Chamberlain Response at 15; see also Frost Decl. at ¶ 6.

Additionally, Chamberlain provided the chart depicted below to show how the pre- movement alarm operates in response to various input sources based on whether the Redesigned GDOs are connected to a wi-fi network:

[[ ]]

Chamberlain Response at 16.

However, Nice repurposed the chart above, as depicted below.

[[ ]]

14 Nice Reply at 6 (“Chamberlain’s own chart ([Response] at 16) illustrates the flaw in its argument.”).

Notably, both Redesigned GDOs have two versions: an H1 version and an H2 version.3 For both redesigns, once the wall station has been connected to wi-fi, the pre-movement alarm will go off for five seconds in response to the head unit receiving any command.” Ruling Request at 10-11 (citing Frost Decl. at ¶¶ 15-19). In the H1 version, “the door will begin to move 0.5 seconds after the alarm begins in response to a push of the button on the wall station, but 5 seconds after the alarm begins after command received over wi-fi.” Id. In the H2 version, “the door will begin to move 5 seconds after the start of the alarm in all cases.” Id. (citing Frost Decl. at ¶¶ 30-31).

b. Description of Functionality for LDCO801, PRO1461j, and Linear 621

According to Nice, it “also currently manufactures, or plans to introduce, GDOs which entirely lack the feature accused of infringing the ’404 Patent.” Ruling Request at 13. The Ruling Request addresses three specific products that fall into this category, as identified previously. First, Nice identifies “the LDCO801 [as] a [Garage Door Operator] with no alarm capability [and that] includes an analog wall station with no wi-fi capability.” Ruling Request at 13. Notably, “[t]he LDCO801 is a successor product to the LDCO800, which was known during the time of the original investigation but never accused by Chamberlain of infringing the ’404 Patent[.]” Id. As the second and third products in this category, Nice identifies the Nice PRO 1461j and Linear 621 as non-wifi counterparts to its other garage operators that are “sold with an analog wall station with no wi-fi capability, and thus no remote alarm capability.” Ruling Request at 14 (citing Frost Decl. at ¶¶ 39-40).

II. ISSUE

Whether Nice has carried its burden, as detailed below, to show that the articles at issue do not infringe the relevant claim of the asserted patent and are not subject to the Commission’s limited exclusion order. Specifically, the issues to address are whether Nice has established that Redesigned GDOs and Other GDOs do not infringe claim 11 of ’404 patent literally or under the doctrine of equivalents as applied by CBP. Nice’s arguments that the articles at issue are not infringing or fall outside the scope of the limited exclusion order are addressed below.

III. LEGAL FRAMEWORK

A. Section 337 Exclusion Order Administration

The Commission shall investigate any alleged violation of Section 337 to determine, with respect to each investigation conducted by it under this section, whether there is a violation of this section. See 19 U.S.C. § 1337(b)(1) and (c). If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by

3 Although a description for the operation of the H1 and H2 versions of the Redesigned GDOs is included in this ruling, the parties’ infringement arguments in this inter partes proceeding were unrelated to the timing functionality that is relevant to the H1 and H2 versions of the Redesigned GDOs. See Chamberlain Response at 11 (“The difference in timing for the alarms does not alter the infringement analysis[.]”).

15 any person violating the provision of this section, be excluded from entry into the United States unless the Commission finds based on consideration of the public interest that such articles should not be excluded from entry. See 19 U.S.C. § 1337(d)(1).

When the Commission determines that there is 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. ITC, 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. ITC, 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. ITC, 545 F.3d 1340, 1356 (Fed. Cir. 2008). 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).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that violate Section 337 of the Tariff Act of 1930 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. ITC, 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

16 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).”).

Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist.” See Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine importation and [violation], the Commission's jurisdiction extends to all models of [violative] 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.” 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).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee [or plaintiff],” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (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 the U.S. Court of Appeals for the Federal Circuit (“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 patentee to prove, by a preponderance of the evidence, that a given article does infringe[.]” 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. ITC, 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. ITC, 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).

B. 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

17 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, “claim construction is a matter of law.” SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). 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).4 “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.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.” Id. at 1314. In others, courts look to public sources such as “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.

“To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). The context in which a claim term is used also includes the full chain of dependence as well as the remaining suite of claims and the written description. See Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of claim differentiation.”).

The second step to establish infringement involves a comparison of the claims, as properly construed, 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).

IV. LAW AND ANALYSIS

A. Admissibility Of The Redesigned GDOs For Purposes Of Section 337

4 Although claim construction is a question of law, the consideration of extrinsic evidence may constitute a subsidiary finding of fact. Teva, 135 S. Ct. at 841, 190 L. Ed. 2d at 733.

18  1. The Federal Circuit and Commission’s Understanding of the Scope of the ’404 Patent and The Direct Infringement Question Presented

As an initial point, the Federal Circuit’s understanding and description of the ’404 patent from above is instructive on the question whether the Redesigned GDOs are covered by claim 11. To repeat, the Federal Circuit described the invention in the ’404 patent as follows:

The ’404 patent, entitled “Movable Barrier Operator and Transmitter with Imminent Barrier Moving Notification,” teaches a movable barrier operator that plays a sound — for instance, an alarm — indicating that a barrier is imminently about to move, but only does so when the barrier is operated remotely. The sound is not played when the movable barrier operator is operated locally. The system determines whether to sound the imminent barrier warning by distinguishing between whether it received a signal from a remote source, such as a smartphone, or from a local source, such as a button on a garage wall.

Chamberlain Grp., Inc. v. Int’l Trade Comm’n, 2023 U.S. App. LEXIS 10273 at *3 (Fed. Cir. 2023) (emphasis and annotations added).

Significantly, the Federal Circuit has made clear in the passage above that the ’404 patent is directed to “a movable barrier operator that plays a sound [when the] barrier is imminently about to move, but only … when the barrier is operated remotely.” Id. (emphasis added). Additionally, for a barrier claimed by the ’404 patent, “the sound is not played when the movable barrier operator is operated locally” because, as noted above, a system that practices the claimed invention “only does so when the barrier is operated remotely.” Id. (emphasis added). Accordingly, under the Federal Circuit’s understanding of the claimed invention, a system that plays a sound when the barrier is “operated remotely” and when the barrier is “operated locally” would fall outside the ’404 patent’s scope. The reason is that, for a system where a sound is played in both modes of operation, it cannot be said that the system is “distinguishing” between the signals received from a remote source and those received from a local source when it comes to “determin[ing] whether to sound the imminent barrier warning.” Id. In other words, if a sound is played in both instances, irrespective of the signal’s origination, there is no distinguishing a remote source signal from a local source signal for purposes of playing the sound (i.e., operating the alarm) and, therefore, no “closing of the movable barrier without operating the [alarm] in response to determining that the received command for the closing was received from” a local source, as required by limitation 11[f] of the ’404 patent.

The Federal Circuit’s understanding above regarding the ’404 patent is reinforced by the Commission’s description below, which both parties quoted in their respective submissions during this inter partes proceeding.

The ʼ404 patent is directed to a “movable barrier system,” such as a garage door opener or gate operator, that can activate an alarm (an “imminent motion notification” in claim 11, which may comprise sounds, lights, or a delay) to warn persons nearby that the barrier is about to close. See ʼ404 patent at Abstract, 1:14-

19  24. To reduce user annoyance, the system will activate the alarm only when the command to close the door is sent from a remote source (e.g., a command sent from a smart phone application via Wi-Fi), to notify any persons near the door that a close-door command has been sent. See id. at 1:25-43, 2:42-47. The system will not activate the alarm when the command is received from a local source (e.g., pushing the button on the wall station) when the user is likely to be nearby and an alarm is not needed. Id. at 1:43-53.

Remand Comm. Op. at 6 (emphasis added) (quoted in Chamberlain Response at 3 and Nice Reply at 2). Therefore, as a legal matter, claim 11 of the ’404 patent has consistently been understood to cover a system where the alarm is activated only in response to a close command from a remote source and not activated in response to a close command from a local source.

Additionally, the Commission provided the following with respect to the “processor” recited in claim 11 and the activation of the alarm only when it determines a closed command was from a received from a remote source but not when the source of the closed command is local.

Claim 11 requires the “processor” in the movable barrier operator to be configured to determine whether a close-door command was received from one of the remote connections (limitation 11[c], below) or one of the local connections (limitation 11[e], below). Id. at 14:12-16 (limitation 11[c]), 14:17-23 (limitation 11[e]). The processor will activate the alarm when a command is received from one of the listed remote sources, but not from one of the listed local sources, as set forth in limitations 11[d] and 11[f], respectively.

***

Limitations 11[c] and 11[e] are referred to here as the “determining” limitations because the processor is configured to determine whether a close-door command was received from a remote or a local source, respectively. Id. at 14:12-16, 14:24- 27. Limitations 11[d] and 11[f] are referred to as the “effecting” limitations because the processor is configured to “effect closure” of the door with or without activating the alarm, depending on whether the close door command was received from a remote or local source, respectively. Id. at 14:17-23, 14:28-33.

Remand Comm’n Op. at 8-9; see also Chamberlain Response at 5.

In light of the above, an operator that activates the alarm when the close-door command is received from a remote source and activates the alarm when the close-door command is received from a local source is not covered by claim 11 of the ’404 patent. Moreover, as a factual matter, it is undisputed in this inter partes proceeding that the Redesigned GDOs play a sound not only “when the barrier is operated remotely” but also “when the movable barrier operator is operated locally.” This is most immediately apparent from the parties’ respective charts depicted above (and included below) that, while color-coded differently, confirm their mutual understanding that, when connected to Wi-Fi, the Redesigned GDOs will activate an alarm when a close-door command is received both from a remote source and from a local source.

20  [[ ]]

[[ ]]

Chamberlain Response at 16; see also Nice Reply at 6.

Therefore, it is not the case that the Redesigned GDOs, once connected to Wi-Fi, only play a sound when the barrier is operated remotely and not when the barrier is operated locally. Instead,

21 the Redesigned GDOs will play a sound when operated remotely and when operated locally, meaning the sound will play regardless of the signal’s source. Moreover, when not connected to Wi-Fi, the Redesigned GDOs will not play a sound when operated locally. Nice Reply at 6. Accordingly, since the Redesigned GDOs do not play a sound unless connected to Wi-Fi, and then will play the sound in both modes of operation, in line with the Federal Circuit’s description of the ’404 patent above, it cannot be said that such a system is “distinguishing” between the signals received from a remote source and those received from a local source to “determine” whether to sound a warning. Instead, the Redesigned GDOs when connected to Wi-Fi will “operat[e] a moving barrier imminent motion notification” (such as an alarm) in every instance and regardless of any “determination” that the “command for the closing was received from” a remote source or from a local source for purposes of sounding that alarm. On this basis, the EOE Branch finds that claim 11 of the ’404 patent, as understood by the Federal Circuit and the Commission to require a determination by the system that distinguishes between the source of a signal for purposes of sounding the alarm (and not sounding the alarm), does not cover the Redesigned GDOs and, therefore, they are outside of the scope of the 1118 LEO.

This finding is further confirmed with additional reference to and examination of the relevant claim limitations from the ’404 patent. As the relevant limitations from claim 11 make clear, it is not enough for the claimed “processor” to be “configured to determine whether a received command for closing the movable barrier was received from” a remote source, as recited in limitation 11[c]. ’404 Patent at 14:12-16. Instead, as limitation [d] provides, the processor must be “configured to effect the closing of the movable barrier in combination with operating a moving barrier imminent motion notification in response to determining that the received command for the closing was received from” a remote source. ’404 Patent at 14:17-23 (emphasis added). This means the claimed “processor” must be configured first to determine a command was received from a remote source (by distinguishing it from those commands received from a local source) and second to operate a moving barrier imminent motion notification (i.e., sound an alarm) in response to that determination while effecting the closing of the movable barrier.

But most importantly, that same “processor” responsible for distinguishing between remote and local sources must be “configured to effect the closing of the movable barrier without operating the moving-barrier imminent motion notification in response to determining that the received command for the closing was received from” a local source. ’404 Patent at 14:28- 33(emphasis added). Therefore, consistent with the description above from the Federal Circuit and the Commission, a processor in a movable barrier operator that, in response to determining a command was received from a local source, but nevertheless sounds an alarm, cannot satisfy limitation 11[f]. Such a processor, to the extent it is capable of distinguishing between the source of different signals, still would not “effect the closing of the movable barrier without operating the moving-barrier imminent motion notification” since it will sound the alarm regardless. Returning to the Redesigned GDOs, as noted above, they do not sound an alarm when not connected to Wi- Fi and, once connected, will sound the alarm regardless of whether the source of a signal is remote or local. Because a processor that sounds an alarm when the source of a signal is remote and likewise sounds an alarm when the source of a signal is local cannot be said to “effect” a closing “without” operating an imminent motion notification, given that the processor operates such a notification in both instances, this claim limitation is not satisfied, claim 11 of the ’404 patent is not infringed, and the Redesigned GDOs are not subject to the exclusion order.

22  Notwithstanding the above, Chamberlain argues that the Redesigned GDOs are infringing. Specifically, Chamberlain makes three arguments. First, that “there is no requirement in claim 11 that the alarm decision be ‘based on the source of the command’” and, in particular, focuses on the phrase “at least one of” that is recited in the claim. By “source of the command” Chamberlain means “‘at least one of’ a remote source (element 11[d]) or a local source (element 11[f]).” Chamberlain Post-Oral Discussion Submission at 4. In other words, Chamberlain is making the point that “claim 11 does not require a [] more specific determination of which specific one of a ‘system wired connection,’ versus a ‘network connection,’ versus a ‘wireless communication system connection’ was used.” Id. Second, Chamberlain argues that there is no “restriction in claim 11 on how the processor makes this determination—whether [[ ]] or otherwise. Id. And third, Chamberlain argues that claim 11 does not “care whether the processor’s programming makes this determination in an overly-inclusive, and thus extra risk-averse, manner” such that “the ’404 patent is concerned with ensuring that an alarm sounds when the claimed processor determines that there is unacceptable risk or likelihood that the user is not in visual contact with the movable barrier[.]” Id. at 2.

As a preliminary matter, Chamberlain devotes a significant amount of analysis in its post oral discussion submission to the third argument above. Id. at 1-2, 7-10. However, Chamberlain did not raise this argument in a submission prior to the oral discussion. Instead, it raised this argument for the first time at the oral discussion and in its post oral discussion submission. Under the EOE Branch’s rules for this inter partes proceeding, raising new arguments at the oral discussion or in a post oral discussion is not permitted. See EOE Branch email to Parties (dated January 3, 2025); see also EOE Branch Email to Parties (dated February 19, 2025). Moreover, this was not only conveyed to the parties in this inter partes proceeding but it represents the binding position of the agency as established in a previous ruling from the EOE Branch in a different inter partes proceeding. See 19 C.F.R. § 177.9(a) (“A ruling letter issued by the Customs Service under the provisions of this part represents the official position of the Customs Service with respect to the particular transaction or issue described therein and is binding on all Customs Service personnel in accordance with the provisions of this section until modified or revoked.”); see also CBP HQ Ruling H351038 (dated August 1, 2025) at 18 (“[G]iven that a Customs ruling [] represents the official position of the agency under 19 C.F.R. § 177.9(a) with respect to the particular transaction or issue described therein, it is binding on all CBP officials and must be applied until modified or revoked.”); see also Int’l Custom Prods. v. United States, 748 F.3d 1182, 1185-86, 1187 (Fed. Cir. 2014) (“Once Customs issued the Ruling Letter, [the plaintiff] and other importers were entitled ‘to expect certainty’ that Customs ‘w[ould] not unilaterally change’ [its position] ‘without providing proper notice and an opportunity for comment.’”) (internal citations omitted).

To confirm, the previous EOE Branch ruling established the following with regard to arguments not timely raised:

As a starting point, the ground rules for this inter partes proceeding that the EOE Branch communicated to the parties envisioned this to an extent. Specifically, the ground rules noted that “the oral discussion is not an opportunity to submit new or additional evidence or arguments to the EOE Branch. Instead, it is an opportunity

23  for the parties to explain the positions previously taken in their submissions and clarify the support for those positions as to the relevant questions of law and fact.” EOE Branch Email to Parties (dated July 13, 2022) (emphasis added). Under these ground rules, the parties are not permitted to raise new arguments or submit new evidence for the first time at the oral discussion and only can respond to arguments that have been raised previously, including those for the first time in a sur-reply. As such, any arguments – whether new or an expansion on previously raised arguments – could be made in a submission prior to the oral discussion. Importantly, permitting new arguments in a submission prior to an oral discussion does not foreclose a party’s ability, under the procedural schedule, to respond to such arguments because the oral discussion itself and, most importantly, the post- oral discussion submissions provide a vehicle to make such rebuttal arguments, just as they did in this inter partes proceeding.

Finally, this approach does not conflict with the weight of Federal Circuit precedent. In Rembrandt Diagnostics, the Federal Circuit held that the Patent Trial and Appeal Board “did not abuse its discretion by relying on [petitioner’s] theories and evidence.” Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1382 (Fed. Cir. 2023). Under the regulations governing the Board’s proceedings in that case, and unlike those discussed above for this inter partes proceeding, “in [a] sur- reply, the patent owner ‘may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.’” Id. at 1383 (quoting 37 C.F.R. § 42.23(b)). Notwithstanding the differences in the specific rules underlying these respective proceedings, the Federal Circuit recognized that “[i]n other circumstances, … a reply may be proper if it is responsive and simply expands on previously raised arguments” and cautioned agencies “not to parse ‘arguments on reply with too fine of a filter.’” Id. at 1384 (quoting Ericsson Inc. v. Intell. Ventures I LLC, 901 F.3d 1374, 1380 (Fed. Cir. 2018); see also Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081-82 (Fed. Cir. 2015) (rebuttal evidence should be responsive such that it is offered “to explain, repel, counteract, or disprove the evidence of the adverse party”).

Therefore, under the ground rules established for an inter partes proceeding under 19 C.F.R. Part 177, it is not improper for a party to raise new arguments or submit additional evidence in any submission prior to the oral discussion. Moreover, while the oral discussion is not for new arguments or evidence that were not submitted prior to that time, it does provide the parties an opportunity to expand upon or reply to an argument previously raised (such as in a sur-reply). Finally, the post-oral discussion submissions are the culmination of the parties’ briefing schedule whereby they may further articulate or crystalize positions taken previously or respond to any questions specifically directed to them by the EOE Branch.

CBP HQ Ruling H325435 (dated November 30, 2023) at 21.

24 Accordingly, for this inter partes proceeding, the EOE Branch will consider any “arguments raised in the[] respective submissions before the oral discussion, for which each [side] had an opportunity to respond and attempt to rebut in the post-oral discussion submission” but not any arguments raised for the first time at the oral discussion or in a post-oral discussion submission. Id. at 21. For this reason, Chamberlain’s “risk or likelihood” argument will not be taking into considered in this inter partes proceeding.

Turning to the first and second arguments from Chamberlain, as an initial point, neither undermines the non-infringement finding above that is consistent with the understanding from Federal Circuit and the Commission of the ’404 patent and, in particular, that an operator covered by claim 11 must alarm when the close-command is from a remote source and must not alarm when the close-command is from a local source. And it seems that even Chamberlain understands this, as reflected in its post oral discussion submission when acknowledging that “it is the fact of being configured to make this categorical determination [regarding where the received command came from], and then act differently based on that determination, that matters to claim 11.” Chamberlain Post Oral Discussion at 2 (emphasis added). In other words, the operator’s processor must “distinguish” between remote commands and local commands and alarm when determining it is the former and not alarm when determining it is the latter. This is entirely consistent with the non-infringement finding above where the Redesigned GDOs alarm in the case of a remote command and alarm in the case of a local command.

Furthermore, with respect to the first argument, Chamberlain’s central premise is that “[t]here is no requirement in claim 11 that the alarm decision be ‘based on the source of the command,’ as Respondents would now have the EOE Branch rewrite this claim.” Chamberlain Post-Oral Discussion Submission at 4 (citing Nice Reply at 1-2, 7, 10). As noted above, Chamberlain’s view is that Nice believes the claims require a “specific determination of which specific” remote command (i.e., “the system wired connection,” “the network connection,” or “the wireless communication system connection”) is at issue. Chamberlain Sur-Reply at 3. If Nice’s non-infringement includes this level of precision, the EOE Branch finds that such a position is not consistent with the Federal Circuit and Commission’s understanding of the ’404 patent from above but this nevertheless does not disturb the non-infringement finding above because it is undisputed that, whatever distinguishing the Redesigned GDOs make between remote and local commands as general categories, the processor nevertheless sounds an alarm for when the former is received and sounds an alarm for when the latter is received. On these grounds, there is no infringement under Chamberlain’s first argument. Similarly, for Chamberlain’s second argument, while there may be no limitation on how the processor goes about making the claimed determination, once the determination is made it must alarm only for commands from a remote source and not alarm for commands from a local source. Therefore, as the articles at issue, when connected to Wi-Fi, will alarm when they receive a remote command and when they receive a local command, limitation 11[f] is not satisfied and there is no infringement of the ’404 patent, as the EOE Branch found above consistent with the Federal Circuit and the Commission’s understanding.

2. The Redesigned GDOs and Infringement Question Presented Under The Doctrine Of Equivalents As Applied By CBP

25  As a preliminary matter, Chamberlain argues that Nice is “attempt[ing] to back-fill [] evidentiary gaps [in the Ruling Request] by submitting in [its] Reply brief a much lengthier analysis and an expert declaration on doctrine of equivalents.” Chamberlain Sur-Reply at 14. According to Chamberlain, “parties cannot wait until Reply to present for the first time evidence on an issue on which they bear the burden of proof.” Id. (citing Qiagen N. Am. Holdings, Inc. v. HandyLab, Inc., No. 2020-2249, 2021 WL 5024387, at *4 (Fed. Cir. Oct. 29, 2021). For this reason, Chamber urges the EOE Branch to “exercise its discretion and disregard Respondents’ new, lengthy doctrine of equivalents arguments in their Reply for failing to raise them in their opening submission.” Id. However, the EOE Branch has held that:

a respondent in an inter partes proceeding under 19 C.F.R. Part 177 does not immediately waive its ability to present non-infringement arguments under the doctrine of equivalents by failing to present them in the first instance as part of the initial ruling request. While a respondent is encouraged to raises all legal and factual arguments or defenses that support its noninfringement position, a respondent can raise its arguments related to the doctrine of equivalents in a subsequent submission, before any oral discussion, in reply to the complainant’s theory of infringement under the doctrine. That said, the EOE Branch may, in its discretion, consider a complainant, as the other interested party participating in an inter partes proceeding under 19 C.F.R. Part 177, to have waived its ability to present a theory of infringement under the doctrine if it is not raised in the first submission responding to the ruling request.

CBP HQ Ruling H338254 (dated January 7, 2025) at 52.

As noted above, this represents the binding position of the agency established in a previous ruling from the EOE Branch and governs the issue in this proceeding. See 19 C.F.R. § 177.9(a) (“A ruling letter issued by the Customs Service under the provisions of this part represents the official position of the Customs Service with respect to the particular transaction or issue described therein and is binding on all Customs Service personnel in accordance with the provisions of this section until modified or revoked.”); see also Int’l Custom Prods. v. United States, 748 F.3d 1182, 1185-86, 1187 (Fed. Cir. 2014) (“Once Customs issued the Ruling Letter, [the plaintiff] and other importers were entitled ‘to expect certainty’ that Customs ‘w[ould] not unilaterally change’ [its position] ‘without providing proper notice and an opportunity for comment.’”) (internal citations omitted).

Turning to the merits, Chamberlain argues that the Redesigned GDOs “infringe claim 11 of the ’404 patent under the doctrine of equivalents” because “Respondents have failed to demonstrate that the redesigns’ checking the state of a Wi-Fi flag is in any way different from claim 11, much less a substantial difference sufficient to bring these redesigns beyond the scope of equivalence.” Chamberlain Response at 16. Further, Chamberlain argues that “whether considered under the Federal Circuit’s function-way-result test or its insubstantial difference test, the processor in the Second Attempted Redesign products is equivalent to the claimed processor because both determine whether to sound a pre-movement alarm based on whether [there is a risk that] the close command originates from a remote or local source.” Chamberlain Response at 16-

26 17. Nice disagrees and argues that the “redesigned GDOs [do not] infringe claim 11 under the doctrine of equivalents (DOE).” Ruling Request at 13.

In CBP HQ Ruling H284032 (dated April 4, 2017), CBP established the standard for applying the doctrine of equivalents when administering an exclusion order under Section 337:

CBP will not extend the doctrine of equivalents when administering an exclusion order pursuant to section 337 except in two instances. The first is where the Commission found a violation of section 337, during the underlying investigation, through infringement under the doctrine. The second is, in those cases when the Commission has found only literal infringement of the asserted patents, where a respondent identified in an exclusion order fails to show a prima facie case that the doctrine does not apply to its new or modified article under the “function-way-result” or “insubstantial differences” test based on the administrative record before CBP.

CBP HQ Ruling H284032 at 26 (emphasis added). Accordingly, as confirmed above, the default rule is that CBP will not extend the doctrine of equivalents except in limited circumstances and then only when a respondent fails to make a prima facie showing. This approach not only furthers the sound administration of the Customs law but is consistent with the Federal Circuit’s recognition that “[t]he doctrine of equivalents provides a limited exception to the principle that claim meaning defines the scope of the exclusivity right in our patent system[.]” VLSI Tech. LLC v. Intel. Corp., 87 F.4th 1332, 1341 (Fed. Cir. 2023) (emphasis added); see also CBP HQ Ruling H338254 (dated January 7, 2025) at 53. Moreover, the Federal Circuit has “explained that liability under the doctrine is ‘exceptional’ [and] ‘emphasized . . . that the doctrine of equivalents is the exception, however, not the rule[.]’” Id. at 1342 (quoting Honeywell International, Inc. v. Hamilton Sundstrand Corp., 523 F.3d 1304, 1313 (Fed. Cir. 2008) for the former point and quoting Eli Lilly & Co. v. Hospira, Inc., 933 F.3d 1320, 1330 (Fed. Cir. 2019) for the latter) (emphasis added).

As such, “[t]he exceptional character of the doctrine’s use is maintained by closely related demands that restrict the availability of liability under the doctrine.” VLSI, 87 F.4th at 1342 (emphasis added). These demands that restrict extension of the doctrine include the following:

First, proof of equivalents must be limitation specific, not focused only on the claim as a whole, though the limitation-specific inquiry of equivalence may be informed by the “role played by each element in the context of the specific patent claim.” Warner-Jenkinson, 520 U.S. at 40; see DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1017 (Fed. Cir. 2006); Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998); Dawn Equipment Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1015 (Fed. Cir. 1998).

Second, for the determination of whether a substitute element is only insubstantially different from a claimed element and hence an equivalent, a traditional formulation . . . asks “whether a substitute element matches the function,

27  way, and result of the claimed element.” Warner-Jenkinson, 520 U.S. at 40. Such matching requires that each of function, way, and result be “substantially the same,” see Spectrum Pharmaceuticals, Inc. v. Sandoz Inc., 802 F.3d 1326, 1337 (Fed. Cir. 2015), with the “way” requirement of particular importance, as a practical matter, in keeping the doctrine properly limited. See Warner-Jenkinson, 520 U.S. at 35, 39; Union Paper-Bag Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L. Ed. 935, 1878 Dec. Comm’r Pat. 199 (1877) (stressing the crucial importance of “way”); Advanced Steel Recovery, LLC v. X-Body Equipment, Inc., 808 F.3d 1313, 1320 (Fed. Cir. 2015) (similar); Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1569 (Fed. Cir. 1996) (similar); Slimfold Manufacturing Co. v. Kinkead Industries, Inc., 932 F.2d 1453, 1457-58 (Fed. Cir. 1991) (similar).

Third, we have long demanded specificity and completeness of proof as crucial to enforcing the limits on the doctrine: The patentee must provide “particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device.” Akzo Nobel Coatings, Inc. v. Dow Chemical Co., 811 F.3d 1334, 1342 (Fed. Cir. 2016) (internal quotation marks omitted); see Gemalto S.A. v. HTC Corp., 754 F.3d 1364, 1374 (Fed. Cir. 2014); Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1566-67 (Fed. Cir. 1996); Lear Siegler, Inc. v. Sealy Mattress Co. of Michigan, 873 F.2d 1422, 1426 (Fed. Cir. 1989).

VLSI Tech. LLC, 87 F.4th at 1342 (emphasis added). Accordingly, the Federal Circuit has placed special emphasis on the “way” requirement in the function-way-result test.

Additionally, “both the Supreme Court and [the Federal Circuit] have made clear that the evidence of equivalents must be from the perspective of someone skilled in the art, for example through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art.” Nexstep, Inc. v. Comcast Cable Commc’ns, LLC, 119 F.4th 1355, 1371 (Fed. Cir. 2024) (quoting AquaTex Indus., Inc. v. Techniche Sols., 479 F.3d 1320, 1329 (Fed. Cir. 2007) (cleaned up)). “‘[W]hen the patent holder relies on the doctrine of equivalents,’ [the Federal Circuit] ‘require[s] that evidence be presented to the jury or other fact-finder through the particularized testimony of a person of ordinary skill in the art, typically a qualified expert.” Id. (emphasis added).

And finally, the Federal Circuit has “‘long demanded specificity and completeness of proof as crucial to enforcing the limits on the doctrine: The patentee must provide particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device.” Nexstep, 119 F.4th at 1371 (quoting VLSI, 87 F.4th at 1343) (emphasis added). “Generalized testimony as to the overall similarity between the claims and the accused infringer’s product or process will not suffice.” Id. (quoting Texas Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996)). “Rather, the patentee must provide a ‘meaningful explanation of why’ the element or elements from the accused product or process are equivalent to the claimed limitation.” Id. (quoting VLSI, 87 F.4th at 1344). However, for purposes of Section 337, as the burden to establish admissibility based on noninfringement is shifted to the would-be importer, it is that party that must provide the “particularized testimony”

28 and “meaningful explanation” described above. As such, Nice is required to provide “the evidence to establish what the function, way, and result of both the claimed device and the accused device are, and why those functions, ways, and results are [not] substantially the same.” Nexstep, 119 F.4th at 1371 (quoting Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1327 n.5 (Fed. Cir. 1991)).

For a respondent to make a prima facie showing in this context to defeat the “limited exception” when CBP will extend the doctrine of equivalents, it is not required to reach “a conclusion on the ultimate issue.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1348 (Fed. Cir. 2012); see also CBP HQ Ruling H326593 (dated September 30, 2022) at 38. Instead, the party with such a burden must simply “present evidence ‘sufficient to establish a fact or raise a presumption [regarding the relevant issue].’” Transocean Offshore Deepwater Drilling Inc., 669 F.3d at 1348 (quoting Black’s Law Dictionary (9th ed 2009)). Sufficient evidence in this context includes that which the EOE Branch may rely upon to determine that no reasonable factfinder “could conclude that an element of an accused device is equivalent to an element called for in the claim, or that the theory of equivalence to support the conclusion of infringement otherwise lacks legal sufficiency.” CBP HQ Ruling H329729 (dated December 1, 2023) at 13-14 (quoting U.S. Philips Corp. v. Iwasaki Elec. Co., 505 F.3d 1371, 1378-79 (Fed. Cir. 2007)).

During the underlying investigation, including the remand, the Commission found only literal infringement of the asserted patents. Nice Reply at 8 (“the ITC did not originally rule on infringement under the theory of doctrine of equivalents; the commission only found literal infringement.”); see also Remand Comm. Op. at 29, 32. Thus, the EOE Branch will address the second of the limited instances in which the doctrine may be extended in CBP’s administration of Section 337, namely, whether Nice has failed to make a prima facie showing that the doctrine does not apply to the Redesigned GDOs under the function-way-result or insubstantial differences test, taking into consideration the framework outlined above.

a. The Function-Way-Result Test

The function-way-result test asks “whether the substitute element matches the function, way, and result of the claimed element.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998) (quoting Warner-Jenkinson v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997)). For the function-way-result test, analysis should be provided “on an element-by-element basis” to determine whether “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 product.” Intendis GmbH, 822 F.3d 1355, 1360 (Fed. Cir. 2016) (quoting Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009)). Furthermore, “[e]ach prong of the function-way-result test is a factual determination.” Id.

The Federal Circuit has held that discussion of the doctrine of equivalents under either the function-way-result test or the insubstantial differences test should not be based in broad, conclusory statements. See Akzo Nobel Coatings Inc. v. Dow Chem. Co., 811 F.3d 1334 (Fed. Cir. 2016). In Akzo, for example, the Federal Circuit found the following function-way-result test argument to be “broad and scant:”

29  Dow’s and Michelman’s piping and heat exchangers perform the same function (maintain the pressure) and achieve the same result (maintaining sufficient pressure to prevent boiling of the aqueous medium) in substantially the same way (by collecting the dispersed material in a contained volume) as the vessel used by the inventors in Examples 2 and 3 of the patent.

Id. at 1343. The Federal Circuit determined that “[s]uch ambiguity and generality cannot create a genuine issue of material fact,” noting the statement’s “failure to articulate how Dow’s accused process operates in substantially the same way” or “how the differences between the two processes are insubstantial.” Id.

Nice provides the following main arguments for noninfringement under the function-way- result test:

Function: First, the function performed by the Redesigned Products and the functions required by elements 11[d] and 11[f] are completely different. The function performed by element 11[d] is to alarm in response to determining that a given command came from one of a defined set of connections, while the function performed by 11[f] is to close without alarming in response to determining that a given command came from a different set of defined connections. In each case, the function is making a determination based on the source of a given command. Checking the Wi-Fi flag does not perform the same function as making a determination based on the source of a given command. It cannot, because the Wi- Fi flag is already set one way or another before any given command is received, and the actual source of the command makes no difference to whether or not the head unit alarms.

***

Way: [] The “way” both claim elements are performed is that the processor decides whether to alarm in combination with closing the door in response to determining whether the command was received from one of a defined set of communication connections. The Redesigned Products do not perform this function at all, let alone in substantially the same way as the claim dictates. Deciding whether to alarm based on the status of a flag which is set before a command is received, without regard to the connection that the command was received from, is an entirely different way of accomplishing a different function than making such a determination based on the connection over which a command was received.

***

Result: Finally, the result is completely different, and Chamberlain fails to show otherwise. The result accomplished by claim elements 11[d] and 11[f] is that when the MBO receives a command, the MBO will distinguish between the sources of commands so that it alarms if it receives a command from the one of the

30  connections listed in element 11[d] (e.g., from a network) but not if it receives a command from one of the connections listed in element 11[f] (e.g. from the wall station). The Redesigned Products never determine whether to alarm before closing based on the source of a command. The alarm will either never activate when the door closes (before Wi-Fi is connected) or always activate when the door closes (after Wi-Fi is connected) without regard to the source of the command. The difference in result is particularly notable when pressing the wall station button after Wi-Fi has been connected. This results in an alarm precisely where practicing claim 11[f] would result in no alarm. This is hardly a trivial difference; it is the entire purpose of the claim. Saying that all commands (including commands from the wall station) are “treated” as remote once Wi-Fi is connected is a fiction that ignores the substantial difference in the actual result. Once a user of the Redesigned Products connects the Wi-Fi, that user would always see and hear the alarm activating every time the door closes, including after pressing the wall station button to close the door. The fact that a hired expert has a theory that the wall station button press is now “treated” as remote does not change the very notable difference in experience from the perspective of the user.

Nice Reply at 9-14 (citations omitted).

As confirmed above, Nice has the burden to “present evidence ‘sufficient to establish a fact or raise a presumption [regarding the relevant issue].’” Transocean Offshore Deepwater Drilling, Inc., 699 F.3d at 1348 (quoting Black’s Law Dictionary (9th ed 2009)). Nice has provided a sufficient basis given that, as discussed above, the Redesigned GDOs differ from the claimed invention because the activation of the moving barrier imminent motion notification is based on the Wi-Fi flag, which is set based on whether the wall station is connected to Wi-Fi. Notably, the difference in operation between the Redesigned GDOs and the claimed invention addresses the “way” requirement in the function-way-result test. Specifically, the EOE Branch agrees with Nice that “[d]eciding whether to alarm based on the status of a [Wi-Fi] flag which is set before a command is received, without regard to the connection that the command was received from, is an entirely different way of accomplishing a different function than making such a determination based on the connection over which a command was received.” Nice Reply at 9-14. Consequently, we find that Nice, the party with the burden under the standard established in H284032, has presented a prima facie case that the doctrine of equivalents does not apply to the Redesigned GDOs.

b. The Insubstantial Differences Test

With respect to the interplay between the function-way-result and insubstantial differences tests, the Federal Circuit has “recognized that the function, way, result test [has] often sufficed to show the substantiality of the differences.” Texas Instruments, 90 F.3d at 1566 (internal citation omitted). Accordingly, the EOE Branch underscores that, for CBP’s administration of Section 337 as it relates to the doctrine of equivalents, if either the function-way-result test or the insubstantial differences test is not met, it is unlikely that the Redesigned GDOs would be covered under the other. The same would be true in the case where a party has not carried its burden to show that one of the tests does not apply to the Redesigned GDOs. “‘Different linguistic frameworks may

31 be more suitable to different cases, depending on their particular facts,’ but these formulations all aim to investigate the same ‘essential inquiry.’” Nexstep, 119 F.4th at 1370 (quoting Warner- Jenkinson, 520 U.S. at 40).

Regarding the insubstantial differences test, the analysis asks whether “the substitution . . . is a change of such substance as to make the doctrine of equivalents inapplicable.” Graver Tank v. Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 610 (1950). For this test, “an important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.” Id. at 609.

Despite Chamberlain’s arguments regarding insubstantial differences, we find that Nice has presented at least a prima facie case that the Redesigned GDOs do not satisfy this test. For example, “The ways that the status of the flag is changed (i.e., connecting Wi-Fi and resetting the head unit) are not close commands at all, and the status of the flag accordingly indicates nothing about the source of any command.”. See Nice Reply at 15. Further, “[f]rom the user’s perspective, the user can only turn the alarm on or off; their garage door operator will never make that decision automatically based on how the user tried to close their garage door.” Id.

Thus, Nice’s arguments regarding the function-way-result and insubstantial differences tests present a prima facie case that the articles at issue do not satisfy the relevant claim limitations when viewed on an element-by-element basis.

B. Admissibility Of The Other GDOs For Purposes Of Section 337

Nice argues that the Other GDOs (i.e., LDCO801, Nice PRO1461j, and Linear 621) do not infringe claim 11 of the ’404 Patent. See Ruling Request 13-14. Specifically, Nice argues that the Other GDOs do not have the claimed “processor” required to “determine[e] that the received command for the closing was received from at least one of the system wired connection, the network connection, and the wireless communication system connection[,]” as required by limitation 11[d], because the Other GDOs have “no Wi-Fi connection or any of the other connections recited by elements 11[c] and 11[d], [and] no alarm[.]” Nice Reply at 16. Specifically, Nice argues that “[the] testimony, product samples, and corroborating technical documentation [it provided] show[s] that” the Other GDOs do not have wi-fi connection and no alarm that sounds in response to receiving a command from a remote source. Post-Oral Discussion Submission at 15.

In response to Nice’s position, Chamberlain argues that “Respondents have still failed to satisfy their burden of identifying sufficient evidence that demonstrates that [Other GDOs] do not infringe claim 11 of the ’404 patent.” Chamberlain Sur-Reply at 18. Specifically, Chamberlin argues that Dr. Frost declaration is unsubstantiated because he fails to “explain the technical operation of any Unadjudicated Product[,] … any of the very few technical documents[,] provide an explanation of any source code[, or] compare that source code or any other technical document to any element of claim 11.” Chamberlain Post-Oral Discussion Submission at 20. Further, Chamberlain argues that Nice never provide it with “any source code or other detailed technical evidence” for the Other GDOs. Chamberlain Sur-Reply at 20.

1. Burden to Establish Admissibility Under Section 337 and Standard of Proof

32  As noted above, the issuance of an exclusion order under Section 337 “effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. Hyundai Elecs. Indus. Co. v. ITC, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (emphasis added). The underlying “rationale” of “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 [to a limited exclusion order] with increased force.” Id. (emphasis added). As such, Commission remedial orders “effectively shift[] 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 patentee to prove, by a preponderance of the evidence, that a given article does infringe[.]” 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. ITC, 645 F.2d 976, 988-89 (C.C.P.A. 1981)). In other words, the allocation regarding burden of proof for Section 337 purposes differs from that applied in district court patent actions. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 6-11 (confirming that the principle in district court cases where “the burden of proving infringement generally rests upon the patentee [or plaintiff],” as held in Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014), is not controlling precedent for Section 337 purposes and does not overturn the Commission’s longstanding practice of placing the burden of proof on the party seeking to enter the articles in question).

Additionally, the Federal Circuit has noted that, as “two distinct burdens of proof” for a party to carry, “the burden of persuasion is the ultimate burden assigned to a party who must prove something to a specified degree of certainty, such as by a preponderance of the evidence or by clear and convincing evidence” and the distinct “burden of production may entail producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (internal quotations and citations omitted). Therefore, when Hyundai places the “burden” on the “would-be importer,” it is understood to encompass both the “burden of persuasion” and the “burden of production” such that Nice “must produce sufficient record evidence that proves to the requisite degree of certainty the relevant question of fact.” See CBP HQ Ruling H338254 (dated January 7, 2025) at 47.

Taking the above into consideration, for Section 337-based inter partes proceedings under 19 C.F.R. Part 177, the party with the burden to establish admissibility generally must provide a sample of the article at issue for examination and testing by the other party, as well as other information or evidence needed to establish non-infringement, and therefore admissibility, of that article. And specifically, in the computer/software context, the party with the burden generally must provide the relevant source code for the articles in question. While the Federal Circuit has noted “that source code is not necessary in every case,” Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283, 1301-02 (Fed. Cir. 2016) (citing Cochran Consulting, Inc. v. Uwatec USA, Inc., 102 F.3d 1224, 1231 (Fed. Cir. 1996)) (emphasis added), this nonetheless recognizes that in certain cases production of source code is necessary to address the (non)infringement question presented while not releasing a complainant in a Part 177 inter partes proceeding from having to defend its view

33 why the source code in question is relevant. Moreover, it is notable as a distinguishing aspect that, in Drone Techs, the Federal Circuit was primarily focused on the Federal Rules of Civil Procedure and, in particular, the district court’s local patent rules. Id. at 1298 (citing W.D. Pa. Local Patent Rule 3.1 (“LPR 3.1”). Specifically, the appellant contended that the district court abused its discretion when imposing a default judgment for failure to comply with discovery orders when, according to appellant, LPR 3.1 does not require defendants to produce all source code, or even any source code, and does not require production but rather only requires materials sufficient to show how each accused product operates. Id. And most importantly, Drone Techs is a district court action that, as established above, has a different allocation of burden from the unique rules, both substantive and procedural, governing the administration and enforcement of exclusion order under Section 337.

Accordingly, when a party does not produce the relevant source code in a Section 337- based inter partes proceeding as generally required above, there is a presumption that the party in question has not carried its burden unless rebutted by clear and convincing evidence. “The validity [for such] an evidentiary presumption turns on its rationality.” Jilin Forest Indus. Jinqiao Flooring Grp. Co., Ltd. v. United States, 145 F.4th 1308, 1315 (Fed. Cir. 2025) (citing Republic Aviation Corp. v. NLRB, 324 U.S. 793, 804-05 (1945)) (“Like a statutory presumption or one established by regulation, the validity [of the Board's presumption], perhaps in a varying degree, depends upon the rationality between what is proved and what is inferred.”); see also NLRB v. Baptist Hosp., 442 U.S. 773, 787, (1979) (“It is, of course, settled law that a presumption adopted and applied by the Board must rest on a sound factual connection between the proved and inferred facts.”); see also Nat'l Min. Ass'n v. Babbitt, 172 F.3d 906, 912 (D.C. Cir. 1999) (“[A]n evidentiary presumption is only permissible if there is a sound and rational connection between the proved and inferred facts[.]”).

Moreover, “[t]he ‘clear and convincing’ standard of proof of facts is an intermediate standard which lies somewhere between ‘beyond a reasonable doubt’ and a ‘preponderance of the evidence.’” Buildex, Inc. v. Kason Industries, Inc., 849 F.2d 1461, 1463 (Fed. Cir. 1988) (quoting Addington v. Texas, 441 U.S. 418, 425, (1979)). “Although not susceptible to precise definition, ‘clear and convincing’ evidence has been described as evidence which produces in the mind of the trier of fact ‘an abiding conviction that the truth of [the] factual contentions are highly probable.’” Id. (quoting Colorado v. New Mexico, 467 U.S. 310, 316, (1984)) (emphasis added).

Furthermore, when evaluating whether a party in such cases has rebutted the presumption by clear and convincing evidence, the EOE Branch will use a proportional approach that takes into consideration the complexity of the factual representations that the party is looking to establish and the quantum of record evidence required to carry that burden, among other considerations (such as whether a complainant has specifically requested production of the source code in its response to the ruling request and the other party has refused to provide it). In other words, how complicated or technical the underlying factual matter is will correspond directly to the quantitative or qualitative degree that the evidence must possess. In this way, a somewhat weaker showing may be sufficient based on a showing that the underlying factual matter is not especially complicated.

2. Application of the Standard Above to the Other GDOs

34  In this case, it is undisputed that source code for the Other GDOs was not provided. Accordingly, the presumption that Nice has not carried its burden applies unless rebutted by clear and convincing evidence. However, consistent with the above, the factual representations are not overly complicated. The question is whether the Other GDOs have any Wi-Fi capabilities [or] any feature that provides an audible or visual warning prior to moving the door. As an initial consideration, the administrative record does not reflect a direct request from Chamberlain prior to or included with its response to the Ruling Request. As indicated above, the EOE Branch provided the following when establishing the procedural schedule for this inter partes proceeding:

• If Chamberlain requests additional source code, samples, or other information that are relevant to addressing the admissibility of the articles at issue in this ruling request, Nice should make a good faith effort to provide the requested source code, samples, or other information to Chamberlain in a timely manner. • Notwithstanding the above, if Nice elects not to provide certain materials, it still can make any arguments to the EOE Branch in this inter partes proceeding why producing such a sample, source code, or other information is not necessary to carry its burden to establish admissibility of the articles at issue in this ruling request. • Notwithstanding the above, Chamberlain still can make any arguments to the EOE Branch in this inter partes proceeding why, by not providing certain source code, samples, or other information, Nice has failed to carry its burden to establish admissibility of the articles at issue in this ruling request.

EOE Branch Email to Parties (dated January 13, 2025).

Accordingly, while the parties were permitted to make arguments in their respective submissions regarding whether the relevant source code is necessary to the infringement question in this proceeding, the framework set out above envisioned a specific request from Chamberlain for additional production that Nice refused to provide. As the administrative record does not reflect such a request from Chamberlain prior to and included with its response to the ruling request, the EOE Branch will take this into account when weighing whether Nice has rebutted the above- referenced presumption.

To establish the fact that the Other GDOs lack Wi-Fi functionality and the ability to sound an alarm prior to moving the door, Nice provides “a declaration from a Nice Vice President of Engineering, Mr. Frost, who testified … that [the Other GDOs] lack any capability to operate an audible or visual warning prior to moving the door.” Nice Reply at 16. Specifically, Mr. Frost declares the following regarding the Other GDOs:

[T]he LDCO801 “does not have any Wi-Fi capabilities, nor any feature that provides an audible or visual warning prior to moving the door.” To avoid any doubt, there is absolutely no feature of any kind on the LDCO801 (or its private label variants) that provides any capability to provide any type of warning or alarm, audio or visual, prior to closing the garage door (which I understand that the ’404 Patent refers to as a “moving barrier imminent motion notification”) in any

35  circumstance. As I previously explained, the LDCO801 has no remote connectivity of any kind, much less the capability to provide a warning or alarm prior to door closure in response to receiving a command to close over a remote connection. There are only three ways to command the door to close in an LDCO801: pressing the button on the wall station, via the RF transmitter or RF keypad, and by holding a combination of buttons on the head unit itself (normally used only in setup) that can also close the door. None of these ways ever results in the LDCO801 providing a “moving barrier imminent motion notification” in combination with closing the door.

***

[T]he Linear 621 has an analog wall station without Wi-Fi capability, and that this product “cannot receive remote commands, nor provide an alarm prior to door movement in response to receiving a remote command.” Again, to avoid any doubt, there is absolutely no feature of any kind on the Linear 621 that provides any capability to provide any type of warning or alarm, audio or visual, prior to closing the garage door (“moving barrier imminent motion notification”) in any circumstance. As with the LDCO801, there are only three ways to command the door to close in a Linear 621: pressing the button on the wall station, via the RF transmitter or RF keypad, and by holding a combination of buttons on the head unit itself (normally used only in setup) that can also close the door. None of these ways ever results in the Linear 621 providing a “moving barrier imminent motion notification” in combination with closing the door.

***

[T]he Nice PRO1461j includes an analog wall station and “cannot receive remote commands, nor provide an alarm prior to door movement in response to receiving a remote command.” Again, to avoid any doubt, there is absolutely no feature of any kind on the Nice PRO1461j that provides any capability to provide any type of warning or alarm, audio or visual, prior to closing the garage door (“moving barrier imminent motion notification”) in any circumstance. The only ways to close the garage door using a Nice PRO1461j are; pressing the button on the wall station which is typically wired into either the ‘close’ or ‘SbS’ terminals, the RF transmitter or RF keypad, by pressing the close button on the head unit itself (normally used only in setup), or by using a BusT4 device (which is used only as a diagnostic tool in North American market). None of these ways ever result in the Nice PRO1461j providing a “moving barrier imminent motion notification” in combination with closing the door.

Frost Reply Decl. at ¶¶ 6-8 (emphasis added).

According to Nice, Mr. Frost’s declarations are “supported by the entire source code directory for each of these products, as well as schematics (for both head unit and wall station), Bills of Materials, and manuals which omit any indication of any alarm feature.” Nice Reply at

36 16 (citing Exhibits 11-16, 24 to Ruling Request). Nice also argues that the functionality of the Other GDOs is established by samples that were provided to Chamberlain and technical documents from the Ruling Request including “technical documentation including Bills of Materials for all three products (Exs. 16-18), the LDCO801 head unit schematic (Ex. 20), wall station schematics for the LDCO801 and Linear 621 (Exs. 20 and 21), and the Installation Guide for the Nice PRO- 1461j (Ex. 24).” Nice Post-Oral Discussion Submission at 18.

Nice also provides a declaration from Dr. Toliyat who is a professor of electrical engineering at Texas A&M University. Dr. Toliyat’s declaration discusses how Mr. Frost’s declaration and the other technical documentation, including wall station schematics and bills of materials, support a factual finding that the Other GDOs have the same non-infringing functionality as the Mighty Mule products:

[T]he technical documentation concerning the LDCO801, Linear 621, and Nice PRO1461j is consistent with Mr. Frost’s testimony. I understand that the Commission’s infringement finding for certain Nice products was based on the operation of GDO units that included a Wi-Fi receiver in the wall station. Exs. 20 and 21 [to the Ruling Request] are the wall station schematics for these products, and indicate a very simple analog circuit without any Wi-Fi receiver. The Bills of Materials do not mention any Wi-Fi receiver or any other component that would enable a user to operate the device remotely.

Dr. Toliyat Decl. at ¶ 99; see also Nice Post Oral Discussion Submission at 18. Notably, Dr. Toliyat declares that the following two schematics for the LDCO 801 (below left) and Linear 621 (below right) show that the Other GDOs have “a very simple analog circuit without any Wi-Fi receiver[.]”

[[ ]]

See Exhibit 20 to Ruling Request (“LDCO801 Wall Station Schematic”); see also Exhibit 21 to Ruling Request (“Linear 621 Wall Station Schematic”).

37  Further, although Nice did not provide Chamberlain with the source code for the Other GDOs, it did provide Chamberlain with physical samples for the Other GDOs. Chamberlain’s Post-Oral Discussion Submission at 17 (“[T]he fact that Respondents produced samples for the [Other GDOs] is also insufficient”). Despite having access to the physical samples for each of the Other GDOs and certain technical documents for the Other GDOs, Chamberlain does not present a single theory of infringement or factual dispute regarding the operation of the Other GDOs other than suggesting that the materials and evidence provided by Nice are insufficient to show that the Other GDOs lack Wi-Fi connectivity.

In light of Mr. Frost’s and Dr. Toliyat’s unrebutted declarations, the technical documents regarding the Other GDOs, and considering the fact that Chamberlain does not contest the operation of the Other GDOs despite having the opportunity to test samples for all of the Other GDOs and review certain technical documents, we find that Nice has established “an abiding conviction” that its factual contentions regarding the lack of any Wi-Fi connectivity are “highly probable.”

V. HOLDING

We find that Nice has met it burden to establish that the Redesigned GDOs and Other GDOs do not infringe the relevant claim of the asserted patent. Accordingly, we find that the articles at issue are not subject to the limited exclusion order issued as a result of Inv. No. 337- TA-1118.

The decision is limited to the specific facts set forth herein. If articles differ in any material way from the articles 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. §§ 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2).

Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

CC: Mr. James M. Dowd
WilmerHale
350 South Grand Avenue, Suite 2400
Los Angeles, CA 90071
[email protected]

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