OT:RR:BSTC:EOE H315645 SEH
VIA EMAIL: [email protected]
Matthew C. Bernstein
Perkins Coie LLP
11452 El Camino Real
Suite 300
San Diego, CA 92130-2080
RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1118; Certain Moveable Barrier Operator Systems and Components Thereof
Dear Mr. Bernstein:
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 in response to your December 15, 2020 letter (noting accompanying Exhibits 1-14 and the Declarations of Nortek employee David Null and expert witness Prof. Hamid Toliyat) (collectively “ruling request”).
The ruling request was submitted on behalf of your clients Nortek Security & Control LLC, Nortek, Inc., and GTO Access Systems, LLC (collectively, “Nortek” or “Requesters”), in which you requested an administrative ruling, related to the limited exclusion order (“the 1118 LEO”) issued by the U.S. International Trade Commission (“ITC” or “the Commission”) in Investigation No. 337-TA-1118, Certain Movable Barrier Operator Systems and Components Thereof (“the 1118 investigation”).
CBP’s position as set forth more fully below is that Nortek has met its burden to show that certain garage door openers (“GDOs”) do not infringe claims 1 and 21 (“Claims-At-Issue”) of U.S. Patent No. 7,755,223 (“the ’223 Patent”) on which the 1118 LEO is based.
This ruling letter is the result of an inter partes process administered by CBP upon consent of the parties. The inter partes process involved the parties with a direct and demonstrable interest in the question presented by the ruling request: your clients Nortek, and the Chamberlain Group, Inc. (“CGI”), which are, respectively, Respondents and Complainant from the 1118 investigation.
If there is information in this ruling letter not currently bracketed in red [[ ]] that Nortek believes constitutes confidential information, and should be redacted from the published ruling, then Nortek is asked to contact CBP within ten (10) working days of the date of this ruling letter clearly identifying such confidential information with [[red brackets]]. 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 (“TSA”) (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 first that the submitter customarily keeps the information private or closely-held, and either that (a) the government provided an express or implied assurance of confidentiality when the information was shared with the government or (b) there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See, e.g., OIP Guidance: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (posted 10/3/2019).
BACKGROUND
Part 177 Request, Exclusion Order Enforcement Branch
On December 15, 2020, Nortek submitted its Ruling Request seeking an administrative ruling pursuant to 19 C.F.R. Part 177 whether certain GDOs are subject to the 1118 LEO. Specifically, the Ruling Request requested:
Pursuant to 19 C.F.R. § 177, Nortek hereby requests a ruling that certain [GDOs] and components thereof to be imported by or on behalf of Nortek are not subject to exclusion from entry for consumption in the United States because they have been redesigned to eliminate two required claim elements of [the ’223 Patent] covered by the [1118 LEO]. Therefore, the transaction that Nortek seeks approval for is Nortek’s proposed importation of GDOs which are not “covered articles” under the LEO because they do not infringe claims 1 and 21 of the ’223 Patent.
See Ruling Request at 1.
On December 30, 2020, CGI noted that Nortek had transmitted its unredacted request and all exhibits to CGI on December 22, 2020, after execution of a non-disclosure agreement for the ruling request (337-TA-1118). See E-mail from Derek Gosma, Counsel for CGI, to EOE Branch (Dec. 30, 2020).
On January 22, 2021, the date by which the parties had agreed CGI was due to submit a response to Nortek’s ruling request, instead of a submission in opposition, CGI submitted a letter that identified Nortek’s ruling request, as well as the physical samples and additional source code that Nortek provided directly to CGI at CGI’s request, and contained a copy of a Joint Stipulation executed on January 21, 2020, by Nortek and CGI (“Joint Stipulation”). As set forth in CGI’s letter:
Pursuant to the stipulation, Chamberlain agreed not to oppose Nortek’s request contingent upon Nortek’s representation that it has in fact removed the accused feature from its products and that the technical materials and sworn declarations it submitted actually reflect the operation of its products. Accordingly, Chamberlain submits this letter to inform your office that it will not oppose Nortek’s request with respect to . . . Nortek products (which are listed in the parties’ stipulation): . . .; but only to the extent manufactured and imported after November 1, 2020, with the beam always turned on and identified with a neon green sticker on the package (“Nortek Products-At-Issue”).
January 22, 2021, Letter from Dave D. Marcus, Counsel for CGI; See Appendix A hereto (Joint Stipulation.)
On January 27, 2021, Nortek and CGI participated in a call with CBP, wherein the parties confirmed that CGI’s stipulated non-opposition with respect to Nortek’s non-infringement arguments is limited to the specific model numbers set forth in the Joint Stipulation. CGI maintained this position, even as to changes in model numbers, notwithstanding that Section 337 exclusion orders are routinely cast in terms of excluding infringing articles rather than specific models. However, the parties pledged on the call with CBP to work together and to exchange information necessary to reach consensus regarding additional GDO models for which CGI would similarly not oppose a ruling request. The parties could then present any such consensus jointly to CBP in support of a future request for an administrative ruling from CBP pursuant to Part 177 which, if successful, would provide a basis for CBP to exercise its discretion to permit certification for additional model numbers that do not differ in any material way from the Nortek Products-at-Issue.
In addition, CBP notes with respect to concluding statements in the Joint Stipulation, similarly included in CGI’s January 22, 2021, letter, that indirect notice of an exclusion would be available from the Commission’s website via posting on its Electronic Document Information System (EDIS) should any seizure and forfeiture order issue after the conditions in 19 U.S.C. § 1337(i) are met.
Commission Advisory Proceeding, Inv. No. 337-TA-1118
On January 29, 2021, Nortek filed the Joint Stipulation in the ITC advisory opinion proceeding (a proceeding referred to in the Joint Stipulation) that the Commission had instituted regarding its exclusion order following a request filed with the Commission by Nortek on December 18, 2020.
On February 9, 2021, Nortek filed a Confidential “Unopposed Motion of Respondents Nortek Security & Control LLC, Nortek Inc. and GTO Access Systems for Summary Determination That Nortek’s Non-Accused and Redesigned Products Do Not Infringe U.S. Patent No. 7,755,223.”
Investigation No. 337-TA-1118 (Original Violation Phase)
Procedural History
The Commission instituted an investigation on June 11, 2018, based on a complaint, as supplemented, filed by The Chamberlain Group, Inc. (“CGI”) of Oak Brook, Illinois. 83 Fed. Reg. 27020-21 (June 11, 2018). The complaint alleged a violation of Section 337 in the importation, sale for importation, or sale in the United States after importation of certain movable barrier operator (“MBO”) systems (i.e., garage door openers (“GDOs”) and gate operators) that infringe one or more of the asserted claims of CGI’s '223, '404, and '052 patents. Id. The Commission’s notice of investigation named Nortek Security & Control, LLC of Carlsbad, California; Nortek, Inc. of Providence, Rhode Island; and GTO Access Systems, LLC of Tallahassee, Florida (collectively, “Nortek”) as respondents. Id.
On June 5, 2019, the presiding Administrative Law Judge (“ALJ”) issued a Markman order (Order No. 25) construing the claim terms in dispute, including the term “operates,” which is recited in asserted claims 1 and 21 of the '223 patent.
The ALJ held an evidentiary hearing on the issues in dispute on June 10-14, 2019.
On November 25, 2019, the ALJ issued a Final Initial Determination (“Final ID”) finding no violation of Section 337 because the asserted claims of the ‘223 and ‘404 patents are not infringed and the sole asserted claim of the ‘052 patent is invalid. See ID at 286–87.
On February 19, 2020, the Commission determined to review the Final ID. 85 Fed. Reg. 10723-26 (Feb. 25, 2020).
On April 22, 2020, the Commission adopted the Final ID’s findings of no violation for the ’404 and ’052 patents, continued its review of the ’223 patent, and remanded on other issues. Comm’n Notice at 3 (Apr. 22, 2020); Order Vacating and Remanding Order No. 38 (Apr. 22, 2020).
On December 3, 2020, the Commission determined that there has been a violation of Section 337 through the importation, sale for importation, or sale in the United States after importation of certain MBO systems and components thereof that infringe one or more claims of the ’223 patent and determined to issue, inter alia, the 1118 LEO against the respondents. Commission Opinion (Dec. 3, 2020) (“Comm’n Op.”) at 1 (see also Comm’n Op. at 1–5 for a more extensive procedural history of the Commission investigation).
Patent Claims-At-Issue
As set forth in the Commission Opinion, the ’223 patent, entitled “Movable Barrier Operator With Energy Management Control and Corresponding Method,” is directed to a GDO or other MBO system that reduces energy consumption by varying the energy usage of a system component, such as an obstacle detector, as the system’s needs change. See Comm’n Op. at 5 (citing '223 patent, Abstract, 2:44-67, 6:38-55, 10:31-41).
As noted by the Commission, the ’223 patent states that its invention is preferable to a conventional MBO system, which provides full power to the system components at all times, regardless of whether the barrier is open or closed. See Comm’n Op. at 5 (citing generally '223 patent at 1:31-54).
CGI accused Nortek of infringing claims 1 and 21 of the ’223 patent. Independent claim 1 (with claim elements identified by bracketed letters consistent with the Commission Opinion and with “the claim limitations” the ruling request identified as “most relevant” to the request in bold and underline) recites:
1. [preamble] A movable barrier operator apparatus comprising:
[a] a power supply that operably couples to at least one source of alternating current;
[b] an obstacle detector; and
[c] a movable barrier operator which includes a controller, the movable barrier operator operably coupled to the power supply, receives operating power from the power supply and has at least a first and a second mode of energy consumption operation and being further configured and arranged to:
[d] selectively open and close a corresponding movable barrier; and
[e] develop an obstacle detector operating mode control signal from the controller as a function of movable barrier operator system state information that indicates whether the barrier is open or closed, the obstacle detector operating mode control signal being operable to directly control the energy usage of the obstacle detector, the control signal from the controller developed as a result of the state information, the state information selected from the group consisting of motor state information, time information, transmission state information, voltage state information, switch state information and combinations thereof,
[f] the obstacle detector operably coupled to the power supply and to the movable barrier operator, receives operating power from the power supply, and has a plurality of operating modes, wherein at least some of the operating modes have different energy usages, and wherein the obstacle detector is directly responsive to the movable barrier operator obstacle detector operating mode control signal such that:
[g] during the first mode of energy consumption operation, the obstacle detector operates using a first energy usage; and
[h][i] during the second mode of energy consumption operation, the obstacle detector operates using a second energy usage, wherein the operating power used in one of the energy usages is less than the power used by the other energy usage.
Comm’n Op. 5–6 (citing '223 patent at 10:50-11:22); see also Ruling Request at 5–6.
Nortek identifies claim 1 of the ’223 Patent as representative of the claims at issue. Ruling Request at 5. The Commission Opinion notes the difference between claims 1 and 21 did not affect the Commission’s analysis:
Independent claim 21 is similar to claim 1, although element [h][ii] in claim 21 reads, “wherein the second energy usage is lower than the first energy usage.” Id. at 13:26-29 (claim 21). Claim 21 also states that the “control signal” is based on “whether the barrier is travelling,” instead of “whether the barrier is open or closed,” as in claim 1. Compare id. at 13:5-8 (element 21[e]) with id. at 10:62-65 (element 1[e]). Neither difference affects the analysis that follows.
Comm’n Op. at 6.
The Nortek Products-At-Issue before CBP and Arguments Presented
The Nortek Products-At-Issue, defined herein above, are certain GDOs and components thereof described generally in categories of products in the ruling request, and further limited by agreement between Nortek and CGI as to time and specific model numbers. See, e.g., Ruling Request at 18-19; Joint Stipulation at 2; January 22, 2021 Letter from David Marcus.
The ruling request asserts that Nortek has redesigned products to eliminate two required claim elements of the ’223 Patent. Ruling Request at 1. The ruling request states that in finding a violation of Section 337, the Commission held that:
the Accused Nortek products satisfied the claim limitations of an “obstacle detector operating mode control signal” and that “the obstacle detector… has a plurality of operating modes, wherein at least some of the operating modes have different energy usages, and wherein the obstacle detector is directly responsive to the movable barrier operator obstacle detector operating mode control signal such that… during the second mode of energy consumption operation, the obstacle detector operates using a second energy usage, wherein the operating power used in one of the energy usages is less than the power used by the other energy usage.”
Ruling Request at 2. While noting that Nortek continues to appeal the Commission’s underlying determination, Nortek asserts that its ruling request presents a distinct question with respect to “Customs approval of products which leave the beam on continuously.” Ruling Request at 2; see also Ruling Request at 1 (“all Nortek GDOs currently being imported simply leave the infrared safety photobeam on all the time in a single ‘operating mode’ or energy usage, and never reduce or shut off power to operate in a second operating mode or energy usage.”); see also generally Ruling Request at 10 n.4 and 12 (additional statements to distinguish the inquiry here from technical and other disputes regarding infringement of the ’223 patent in the 1118 Investigation).
The Ruling Request asserts that:
None of the products subject to this request have the feature at issue in this Investigation (i.e., a reduced power or “off” state for the photobeam system), either because they never had that feature to begin with or because Nortek has redesigned them to remove the feature. In short, every product that Nortek seeks CBP approval to import with this Request simply leaves the photobeam on all the time, and never places the photobeam in a reduced power or “off” state.
Ruling Request at 12–13. Relating this assertion to the ruling request’s referenced categorization, the ruling request asserts non-infringement with respect to certain GDOs set forth in the Joint Stipulation by model number and correlated to categories as subsequently described therein and used in this ruling letter, here and below:
redesigned versions of products accused during the 1118 Investigation
see also Ruling Request at 16–18; redesigned source code exhibits, Ex. 11, Ex. 12, Ex. 13;
new products
see also Ruling Request at 14; redesigned source code exhibit, Ex. 12; and
previously introduced products not accused of infringement during the 1118 Investigation
see also Ruling Request 13-14; see e.g., source code exhibit, Ex. 10
Joint Stipulation at 2 (correlating categories to Nortek model numbers); see also Null declaration summary chart reproduced below; Null Decl. ¶18; December 16, 2020, Letter from Evan Day, Counsel for Nortek (transmitting listing of exhibits and declarations).
CGI does not oppose the Ruling Request pursuant to the terms of the Joint Stipulation and with respect to Nortek’s GDO models as set forth in CGI’s responsive letter and the Joint Stipulation. See January 22, 2021 Letter from David Marcus.
ISSUE:
Whether Nortek has met its burden to show that the Nortek Products-At-Issue are not subject to the 1118 LEO because they do not infringe the ’223 Patent.
LAW AND ANALYSIS:
Section 337 Exclusion Order Administration
Under Section 337 of the Tariff Act of 1930, as amended, the Commission shall investigate any alleged violation of this section 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 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 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. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007). Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin- Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the Commission in the investigation. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id.
The “Commission has broad discretion in selecting the form, scope and extent of the remedy. Viscofan, S.A. v. United States ITC, 787 F.2d 544, 548 (Fed. Cir. 1986). The 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).
While 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 . . . Moreover, the Commission’s long-standing practice has been to avoid using model numbers in its exclusion orders because such model numbers can be changed, and the exclusion order circumvented.
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); cf. NLRB v. Bell Aerospace Co., 416 U.S. 267, 294 (1974) (An agency “is not precluded from announcing new principles in an adjudicative proceeding and that the choice between rulemaking and adjudication lies in the first instance within the [agency’s] discretion.”) (citing SEC v. Chenery Corp., 332 U.S. 194, 203 (1947)).
After the Commission finds a violation of Section 337 and remedial orders issue, the burden shifts to the adjudged infringer (i.e., the respondent) to demonstrate that similar articles, such as redesigned articles, do not infringe. See, e.g., Hyundai Elecs. Indus. Co. v. USITC, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (stating that the issuance of an exclusion order “effectively shifts to would- be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement.”); see also Sealed Air Corp. v. ITC, 645 F.2d 976, 985–89 (C.C.P.A. 1981). In doing so, the Commission is permitted to place the risk of unfairness on importers, rather than domestic industries. Id.
Pursuant to 19 U.S.C. § 1337(d), and the delegated authority from the Secretary of the Treasury, the Commission directs CBP to exclude from entry into the United States articles that are subject to its exclusion order. See 19 U.S.C. § 1337(d) (“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.”); 19 U.S.C § 1401(i); 6 U.S.C §§ 212 & 215; see 6 U.S.C. § 212; 19 C.F.R. pt. 0; Customs Directive No. 2310-006A (Dec. 16, 1999). Furthermore, except as provided in 337(f) and (j), “any exclusion from entry or order under [Section 337] shall continue in effect until the Commission finds, and in the case of exclusion from entry notifies the Secretary of the Treasury, that the conditions which led to such exclusion from entry no longer exist.” 19 U.S.C § 1337(k). Accordingly, the authority of CBP to refuse entry to articles under Section 337 is dependent on an order from the Commission.
In addition, 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.
Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C § 1337, is a trade statute. See e.g., Ninestar v. International Trade Commission, 667 F.3d 1373, 1384 (Fed. Cir. 2012) (quoting Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1488 (Fed. Cir. 1986) (“[a]lthough it is true that private rights may be affected by section 337 determinations, the thrust of the statute is directed toward the protection of the public interest from unfair trade practices in international commerce.”); see also, Suprema, Inc. v. Int’l Trade Comm’n, 796 F.3d 1338, 1350 (Fed. Cir. 2015) (en banc) (“[t]he legislative history consistently evidences Congressional intent to vest the Commission with broad enforcement authority to remedy unfair trade acts.”).
The source of Section 337’s authority is different from that underlying patent law. Section 337 and its predecessor provisions are a delegation of Congress’s “plenary constitutional power to regulate foreign commerce” under Article I, Sealed Air Corp. v. ITC, 645 F.2d 976, 985–87 (C.C.P.A. 1981)), for the purpose of providing an adequate remedy for domestic industries against unfair practices undertaken abroad. Id. at 985; In re Orion Co., 71 F.2d at 467 (C.C.P.A. 1934). The Commission considers, among other bases, allegations of patent infringement in order to determine whether there has been a violation of Section 337. See S.Rep. No. 1298, 93d Cong., 2d Sess. 196 (“[I]n patent-based cases, the Commission considers, for its own purposes under section 337, the status of imports with respect to the claims of U.S. patents.”); see also Corning Glass Works v. ITC, 799 F.2d 1559, 1565 & n.5 (Fed. Cir. 1986).
Unlike in district court, the Commission’s primary remedy is an exclusion order (and, as appropriate, a cease and desist order): “[t]he legislative history…indicates that Congress intended injunctive relief to be the normal remedy for a Section 337 violation and that a showing of irreparable harm is not required to receive such injunctive relief.” Spansion, Inc. v. U.S. Int’l Trade Comm’n, 629 F.3d 1331, 1359 (Fed. Cir. 2010). This difference between exclusion orders under Section 337 and injunctions under the Patent Act “follows ‘the long-standing principle that importation is treated differently than domestic activity.’” Id. at 1360 (quoting In the Matter of Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, Including Cellular Telephone Handsets, Inv. No. 337-TA-543, 2007 ITC LEXIS 621 *102 n.230 (U.S.I.T.C. June 19, 2007) (citing United States v.12-200-ft. Reels of Film, 413 U.S. 123,125 (1973))).
Treatment of Confidential Information Submitted Under 19 C.F.R. Part 177
The parties have requested confidential treatment in connection with this Part 177 ruling request for the information bracketed in red in their submissions and thereby seek to have the bracketed information redacted from any ruling that is published in accordance with 19 U.S.C. § 1625(a).
Disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by 6 C.F.R. pt. 5; 31 C.F.R. pt. 1; 19 C.F.R. pt. 103; and 19 C.F.R. § 177.8(a)(3). See e.g., 19 C.F.R. § 177.10(a). In addition, the determination as to whether to include or redact information within a published ruling is guided by various federal laws that involve confidentiality and disclosure, including the Freedom of Information Act (“FOIA”) (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974 (5 U.S.C. § 552a). See, e.g., CBP HQ Ruling H121519 at 1 (Feb. 8, 2011).
Congress enacted FOIA to overhaul the public disclosure section of the Administrative Procedure Act that gradually became more “a withholding statute than a disclosure statute.” Milner v. Dep't of the Navy, 562 U.S. 562, 565 (quoting EPA v. Mink, 410 U.S. 73, 79 (1973)). Hence, there is a strong presumption in favor of disclosure, consistent with the purpose and plain language of the Act. U.S. Dep't of State v. Ray, 502 U.S. 164, 173 (1991). FOIA mandates agency disclosure of requested records unless they fall within one of nine exemptions. Milner, 562 U.S. at 565. These exemptions are “explicitly made exclusive,” Mink, 410 U.S. at 79, and must be “narrowly construed,” FBI v. Abramson, 456 U.S. 615, 630 (1982).
Nevertheless, “Congress did not design the Freedom of Information Act exemptions to be mandatory bars to disclosure.” Chrysler Corp. v. Brown, 441 U.S. 281, 293 (1979); see also, GTE Sylvania v. Consumers Union of United States, 445 U.S. 375, 378, n. 2 (1980) (“The theory of the so-called ‘reverse Freedom of Information Act’ suit, that the exemptions to the Act were mandatory bars to disclosure and that therefore submitters of information could sue an agency under the Act in order to enjoin release of material, was squarely rejected in Chrysler Corp.”).
Like FOIA, an objective of administrative rulings under 19 C.F.R. Part 177 is disclosure, providing notice to interested parties of the agency’s decision-making process and position. See id. at 290 n.10. The relevant Customs regulations mirror the general presumption in favor of disclosure and place the burden on the party requesting confidentiality to demonstrate that such information qualifies. See generally FCC v. Schreiber, 381 U.S. 279 (1965). Moreover, the Customs regulations that place the burden on the ruling requester to establish, that the information at issue constitutes confidential business information is consistent with the burden that the government must satisfy in an action challenging an agency position not to disclose information pursuant to a FOIA exemption. See 5 U.S.C. § 552(a)(4)(B); see also United States Department of Justice v. Landano, 508 U.S. 165, 171 (1993).
Exemption 4 of FOIA, provides that FOIA does not apply to matters that are “trade secrets and commercial or financial information obtained from a person and privileged or confidential.” 5 U.S.C. § 552 (b)(4). Under 19 C.F.R. § 177.8(a)(3), there is a general presumption that “[n]o part of the ruling letter, including names, addresses, or information relating to the business transactions of private parties, shall be deemed to constitute privileged or confidential commercial or financial information or trade secrets exempt from disclosure pursuant to the Freedom of Information Act, as amended (5 U.S.C. § 552), unless, as provided in §?177.2(b)(7), the information claimed to be exempt from disclosure is clearly identified and the reasons for the exemption are set forth.” Thus, 19 C.F.R. § 177.2(b)(7) articulates the test for determining whether certain information is confidential in 19 C.F.R Part 177 administrative rulings.
The language of 19 C.F.R. § 177.2(b)(7) provides that, “[i]nformation which is claimed to constitute trade secrets or privileged or confidential commercial or financial information regarding the business transactions of private parties the disclosure of which would cause substantial harm to the competitive position of the person making the request (or of another interested party), must be identified clearly and the reasons such information should not be disclosed, including, where applicable, the reasons the disclosure of the information would prejudice the competitive position of the person making the request (or of another interested party) must be set forth.” The “substantial harm to a competitive position” standard adopted in 19 C.F.R. § 177.2(b)(7) is identical to the standard for FOIA Exemption 4 established by the U.S. Court of Appeals for the District of Columbia Circuit. See Nat’l Parks & Conservation Ass’n. v. Morton, 498 F.2d 765, 770 (D.C. Cir. 1974) (construing information as “confidential” under FOIA Exemption 4 if disclosure would “cause substantial harm to the competitive position of the person from whom the information was obtained.”).
The Supreme Court’s decision in Argus Leader, however, overturned National Parks and the test upon which 19 C.F.R. § 177.2(b)(7) is based. Food Marketing Institute v. Argus Leader Media, 139 S. Ct. 2356 (2019). In this decision, the Court addressed when information provided to a federal agency qualifies as “confidential” under Exemption 4 by analyzing the term’s “ordinary, contemporary, common meaning . . . when Congress enacted FOIA in 1966.” Id. at 2362. The Court found that “[t]he term ‘confidential’ means then, as it does now, ‘private’ or ‘secret.’” Id. at 2363. And, “[n]otably lacking from dictionary definitions, early case law, or any other usual source that might shed light on the statute’s ordinary meaning is any mention of the ‘substantial competitive harm’ requirement” articulated in National Parks. Id. at 2363–65. The Court found “[c]ontemporary dictionaries suggest two conditions that might be required for information communicated to another to be considered confidential”: (1) the information is “customarily kept private, or at least closely held, by the person imparting it;” and (2) the “party receiving [the information] provides some assurance that it will remain secret.” Id. at 2363. For information to be deemed confidential under Exemption 4, the Court held that the first condition must be met, but with respect to the second condition, “there’s no need to resolve that question in this case . . . .” Id. Thus, “[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.” Id. at 2366.
In light of the above, 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 party seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing first that the submitter customarily keeps the information private or closely-held, and either (a) the government provided an express or implied assurance of confidentiality when the information was shared with the government or (b) there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See, e.g., OIP Guidance: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (posted 10/3/2019).
Based on the framework above, any information meeting the criteria discussed above (or information that was redacted from the public version of the agency record at the Commission) will be bracketed in red [[ ]] for redaction from the published ruling.
Law of Patent Infringement
Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to establish equivalence is by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function-way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016).
As for the first step above, “the proper construction of a patent's claims is an issue of Federal Circuit law[.]” Comcast IP Holdings I LLC v. Sprint Communs. Co., 2017 U.S. App. LEXIS 3981, at *11 (Fed. Cir. 2017). Moreover, the ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the patent’s intrinsic evidence (the patent claims, specifications, and prosecution history). UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015); see also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1357 (Fed. Cir. 2016) (“Claim construction is a question of law, reviewed de novo, but any extrinsic fact-finding by the district court in the course of claim construction is reviewed for clear error.”). The second step to establish infringement involves the comparison of the claims to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).
The scope and meaning of the asserted claims is determined by looking to the words of the claims themselves, the specification, the prosecution history, and if necessary, any relevant extrinsic evidence. Advanced Steel Recovery, 808 F.3d at 1315–17. Moreover, claim terms are generally given their ordinary and customary meaning, which is the meaning they would have to a person of ordinary skill in the art at the time of the invention. Poly-America, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)). “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” UltimatePointer, 816 F.3d at 822 (quoting Phillips, 415 F.3d at 1313); see also Retractable Techs., Inc. v. Becton, 653 F.3d 1296, 1305 (Fed. Cir. 2011) (“It is axiomatic that the claim construction process entails more than viewing the claim language in isolation.”). In particular, “the specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Phillips, at 1313 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). However, while claims are read in view of the specification for which they are a part, it is improper to read limitations from the embodiments in the specification into the claims. Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).
Accordingly, the ordinary and customary meaning of the claim language generally controls unless the patentee acts as his own lexicographer and provides a special definition for a particular claim term or the patentee disavows the ordinary scope of a claim term either in the specification or during prosecution. InterDigital Communs., LLC v. U.S. Int’l Trade Comm’n, 690 F.3d 1318, 1324 (Fed. Cir. 2012); see also Hill-Rom Servs., 755 F.3d at 1371 (“There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution.”) (quoting Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)).
The standards for finding lexicography and disavowal are “exacting.” Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015). “To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to define the term.’” Id. (quoting Thorner, 669 F.3d at 1365. “Similarly, disavowal requires that ‘the specification [or prosecution history] make [] clear that the invention does not include a particular feature.’” Id. (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001). For example, disavowal or disclaimer has been found based on “clear and unmistakable statements by the patentee that limit the claims, such as ‘the present invention includes . . .’ or ‘the present invention is . . .’ or ‘all embodiments of the present invention are . . . .’” Id. (citing Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316–19 (Fed. Cir. 2006); SciMed Life Sys., Inc., 242 F.3d at 1343–44).
Ultimately, “[t]he only meaning that matters in claim construction is the meaning in the context of the patent,” Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016), and “[l]egal error arises when a court relies on extrinsic evidence that contradicts the intrinsic record.” Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, 824 F.3d 999, 1003 (Fed. Cir. 2016) (citing Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 790 F.3d 1329, 1338 (Fed. Cir. 2015), cert. denied by Universal Lighting Techs., Inc. v. Lighting Ballast Control, LLC, 136 S. Ct. 1226; 194 L. Ed. 2d 185; 2016 U.S. LEXIS 1155 (2016). Therefore, “[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.” Papst Licensing GmbH & Co. KG v. Fujifilm Corp., 778 F.3d 1255, 1261 (Fed. Cir. 2015) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998), adopted by Phillips, 415 F.3d at 1316).
Lastly, only those claim terms that are disputed must be construed and only to the extent necessary to resolve the dispute. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (2008) (“We, however, recognize that district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims”). Rather, “[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement.” Id. (quoting U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997); see also Vanderlande Indus. Nederland BV v. U.S. Int’l Trade Comm’n, 366 F.3d 1311, 1323 (Fed. Cir. 2004) (noting that “formal construction” of an undisputed term was unnecessary where the factfinder was “plainly attentive to the critical words”).
ANALYSIS
The ruling request notes by way of technical background that over decades GDOs have been designed with various safety mechanisms to prevent injuries related to the moving door. Ruling Request at 3. The ruling request describes one common mechanism, an infrared photobeam system, as “typically consisting an emitter and a detector placed on opposite sides of the door near the ground, so that a blockage of the beam will indicate the presence of an obstruction between the emitter and the detector.” Ruling Request at 3; see also Ruling Request at 3-4 (identifying example from the ’223 Patent at 3:66-4:4, Fig. 2). The ruling request notes further that although the purpose thereof only requires the beam to be active “during or immediately before movement of the door,” since introduction many GDOs left the photobeam safety sensor on all the time. Ruling Request at 4.
The ‘223 Patent
The ruling request asserts further with respect to the ‘223 Patent that:
movable barrier operators such as garage door operators, and their components such as an “obstacle detector” were “well known in the art” at the time the application was filed, but generally were “designed to provide full power at all times to all elements of the system.” ’223 Patent at 1:13-16, 1:31-32. For example, according to the ’223 Patent’s characterization of the prior art, “an obstacle detector (and the circuitry/logic that monitors and responds to the obstacle detector) will frequently be active and fully powered regardless of whether the corresponding barrier is open or closed.” Id. at 1:32-36. The ’223 Patent also notes that “typically” in prior art arrangements of photobeam obstacle detectors with GDOs, “the photobeam sources are energized on a relatively frequent basis and usually or substantially continuously energized.” Id. at 4:7-10.
Ruling Request at 4. The ruling request notes that during the hearing on violation the named inventor characterized the power draw when a GDO is not in use as “vampire power.” Ruling Request at 4-5.
The ruling request asserts, “to remedy these purported deficiencies with the prior art GDOs which left the obstacle detector on at full power continuously” (Ruling Request at 5), the ’223 Patent describes a moveable barrier operator system in which “one or more of the various components of the system is configured to operate selectively in at least either of two operational modes,’ each of which is ‘characterized by a corresponding energy usage profile.’” Ruling Request at 5 (citing ’223 Patent, Abstract).
1118 Infringement Allegations
With respect to the 1118 Investigation, Nortek asserts that, of a list of GDOs CGI previously accused of infringing the ‘223 Patent, only the LDCO800, Amarr860, and MM9545M are currently imported. Ruling Request at 6.
The ruling request characterizes CGI’s prior infringement theory as “turning the safety photobeam off.” Ruling Request at 7. It notes CGI accused Nortek in the 1118 Investigation of infringing the ’223 Patent “based on a feature in the LDCO800 (and other accused GDOs) which turned off the power in the safety photobeams after a period of inactivity.” Ruling Request at 7. Identified as an example is Ex. 1 (marked CX-434C in the 1118 Investigation), a video produced by CGI showing a Chamberlain employee testing the photobeam on a Nortek GDO in which photobeam indicators turn off after approximately 5 minutes. Ruling Request at 7. As further set forth in the ruling request:
Chamberlain alleged that the first, “full power” mode constituted the claimed “first mode of energy consumption operation” with a “first energy usage” and the off state (which Chamberlain referred to as a “low power” mode) as the claimed “second mode of energy consumption operation” with a “second energy usage.” Chamberlain Post-Hearing Brief (CBr.) at 65. Chamberlain asserted that in the “off” or “low power” state, the photobeam emitter and detector were nevertheless in an “operating mode” because the system purportedly used the very small amount of power consumed in that state “to keep the circuitry and logic in the obstacle detectors powered even when the beam is off.” CBr. At 70.
Ruling Request at 7–8 (internal citations omitted). Nortek notes that CGI also relied on testing of the voltage and current supplied to the photobeam system in the accused products. Ruling Request at 8.
With respect to prior arguments regarding firmware, the ruling request notes that in the 1118 Investigation CGI relied on firmware in the LDCO800 related to the LDCO800 programming and relied on Nortek’s LDCO850 (which the ruling request asserts Nortek no longer sells or imports) “as a ‘representative’ product for all of the accused GDOs.” Ruling Request at 8, 11. The ruling request notes further that “[a]lthough the LDCO800 and LDCO850 have different firmware bases, Chamberlain alleged that the firmware in both products operated in a substantially similar manner.” Ruling Request at 11.
Accused Firmware (LDCO800)
The ruling request states CGI’s arguments relied on the LDCO800 firmware to show “the LDCO800 was programed to change the state of the obstacle detector between what it identified as the ‘first’ (full power) and ‘second’ (low power) operating modes,” and that “[s]pecifically Chamberlain pointed to [[ ]] Ruling Request at 8-11. The ruling request further explains:
[[
]][[
]]
Ruling Request at 8-9; see also Ruling Request at 8 n.3 (“[[
]]”).
LDCO850 Firmware
The Ruling Request states that for the LDCO850, “Chamberlain pointed to [[
]] Ruling Request at 11. The ruling request further explains, [[
]][[
]]
Ruling Request at 11-12.
While noting that based on the Commission’s interpretation of “operates,” “the Commission found that the photobeams in the accused products ‘operate[d]’ even when they were off” (Ruling Request at 12 (citing Commission Op. at 15)), the ruling request also points to an earlier statement from the Commission opinion wherein:
The Commission nevertheless noted that “[t]he ’223 patent, however, does not contemplate continuous operation of the obstacle detector to ensure safe operation of the system; rather, it carefully selects when to use the lower-power mode in order to balance safety and energy consumption.”
Ruling Request at 12, 20 (quoting Comm’n Op. at 12); see also Comm’n op. at 12-13 (citing, e.g., ’223 patent at 10:31-42). The ruling request now before CBP seeks “approval to import” various Nortek Products-At-Issue based on arguments that they now all omit the feature at issue in the Investigation (i.e., a reduced power or “off” state for the photobeam system) such that “every product . . . leaves the photobeam on all the time, and never places the photobeam in a reduced power or ‘off’ state.” See Ruling Request at 12-13.
Redesigned Versions of Products Accused
During the 1118 Investigation
With respect to products from the underlying investigation “that Nortek still imports, including the Amarr860 and the Mighty Mule MM9545,” along with the LDCO800, the ruling request asserts that Nortek has redesigned those products to remove the accused feature and removed it by implementing an engineering change order (Ex. 9), such that “the photobeam remains on all the time and will not turn off (or go into any reduced power state) regardless of the duration of inactivity of the GDO.” Ruling Request at 16 (citing Null Decl., ¶¶ 5-6); see also Ruling Request at 6, 7. The ruling request asserts Nortek removed the accused feature by “‘commenting out’ (i.e., removing) the portions of the source code in its GDOs that turned the beam off.” Ruling Request at 16; See also Null Dec. ¶ 10 ([[
]] have been removed by “commenting out” these lines”). The ruling request further explains compilers “ignore any portion of a line of code following the ‘comment’ directive, which is two slashes (//).” Ruling Request at 16 n.6 (citing Null Decl., ¶ 10; Toliyat Decl., ¶ 65).
The ruling request demonstrates that for [[
]]
Ruling Request at 16–17. The ruling request asserts further [[
]] Ruling Request at 17 (citing Null Decl., ¶¶ 9–11). Finally, the ruling request asserts [[
]] Ruling Request at 17.
The ruling request [[
]] Ruling Request at 17. [[
]][[
]] Ruling Request at 17. [[
]]
Ruling Request at 17 [[
]] Ruling Request at 17 (citing Null Decl., ¶¶ 13–15).
Lastly, under this category of prior products being redesigned, the ruling request asserts [[
]] Again, the ruling request notes, “the result of the change to the source code is that the safety photobeam simply remains on, and never turns off or otherwise goes into a second ‘operating mode’ using lower power than in its fully on condition.” Ruling Request at 18 (citing Null Decl., ¶ 17).
As noted further below, based on Nortek’s declaration related to disabling the referenced code and the non-opposition by CGI, CBP finds that Nortek has met its burden with respect to non-infringement for these products.
New Products
The ruling request also identifies two new GDOs, the LDCO841 and LDCO863B, that Nortek has introduced since the hearing in the 1118 Investigation that it asserts “have never had the feature accused of infringing the ’223 Patent, i.e., the ability to turn off the photobeam based on a timer or for any other reason.” Ruling Request at 14; see also Null Decl. ¶ 16. The ruling request explains further the beam staying on all the time “can be verified both by visual observation of the operation of the products (i.e., that the green LED light remains on regardless of the duration of inactivity), and by confirming the voltage and current at the photobeam with a multimeter.” Ruling Request at 14.
As noted further below, based on Nortek’s declaration related to the absence from this group of products of the same or similar code removed from the redesigned products and the non-opposition by CGI, CBP finds that Nortek has met its burden with respect to non-infringement for these products.
Previously Introduced Products Not Accused of Infringement
During the 1118 Investigation
In connection with this ruling request, CBP is also asked to “approve” “GDOs which were known to Chamberlain during the 1118 Investigation but which Chamberlain chose not to accuse,” if IPR Branch (now EOE Branch) disagrees that such products may be imported using the certification procedure in Paragraph 4 of the Limited Exclusion Order. Ruling Request at 14 n.5 (emphasis added). More specifically, with respect to this argument, the ruling request asserts that at the outset of the 1118 investigation Nortek also imported “several long-standing GDO models (some of which Nortek has sold with minimal changes for decades) which simply kept the photo beams on all the time.” Ruling Request at 7, 13–14; see also Null Decl. ¶ 4 (also noting “[t]he firmware directory for these products is attached as Ex. 10”); Null Decl. ¶ 19, Summary Chart.
The Commission’s final determination does not include an express finding of non-infringement with respect to the products that Nortek asserts were not accused on the basis that “they never had the feature accused of infringement at any time because they always simply left the beam on.” Ruling Request at 13; see also Ruling Request at 7. While the ruling request includes description of Nortek’s disclosures regarding these products during the 1118 investigation (apparently not taken up by CGI), that effort does not appear to have resulted in a determination of non-infringement.
However, as noted above, the Commission Opinion provides some guidance regarding the functionality itself (“[t]he ’223 patent, however, does not contemplate continuous operation of the obstacle detector …”) (Ruling Request at 12, 20), which CBP considers herein with respect to arguments regarding non-infringement for the Nortek Products-At-Issue, collectively, including the “long-standing GDO models” as sought by the Ruling Request. Ruling Request at 7, 13–14.
As noted further below, based on Nortek’s declaration related to the absence from this group of products of the same or similar code removed from the redesigned products and the non-opposition by CGI, CBP finds that Nortek has met its burden with respect to non-infringement for these products.
Null Declaration Summary Chart
The ruling request asserts, that “every GDO subject to this Request simply leaves the safety photobeam on all the time, and never turns it off or reduces its power,” and provides a table “that summarizes the products Nortek seeks to import” (reproduced from the Null declaration):
Ruling Request at 18-19; see also Null Decl., ¶¶ 18-19.
Nortek’s Argument the Redesigned GDOs
Do Not Infringe Claims 1 or 21 of the ‘223 Patent
The ruling request argues, relying on declarations from Nortek’s expert and from its engineer, that the redesigned GDOs do not infringe claims 1 or 21 of the ’223 Patent in light of the above referenced firmware changes. Ruling Request at 1, 5, 19–22.
Specifically, the ruling request asserts the redesigned products do not have “a core feature” previously accused “because the photobeams in all of the products at issue in this Request are continuously energized at their full—and only—power level.” Ruling Request at 19 (citing Toliyat Decl., ¶ 65); see also Toliyat Decl., ¶ 67. Thus, the Products-At-Issue would not have “a plurality of operating modes, wherein at least some of the operating modes have different energy usages.” Ruling Request at 19.
The ruling request further asserts that:
The products subject to this request are not configured to produce any signal capable of turning the beam on or off, or otherwise switching between two different operating modes with different energy usages. Because the “beam off” functionality has been removed (in the products that ever had it to begin with) by erasing this function from the source code, there is no “control signal” to which an obstacle detector is “directly responsive” by changing to a lower energy operating mode. Likewise, because the beam stays on constantly, the obstacle detector is never responsive to on [sic] obstacle detector operating mode control signal to turn back on from a lower energy state either.
Ruling Request at 20 (citing Toliyat Decl., ¶ 68-69)
As noted above, the ruling request relies on guidance from the Commissions Opinion that “[t]he ’223 Patent… does not contemplate continuous operation of the obstacle detector to ensure safe operation of the system; rather, it carefully selects when to use the lower-power mode in order to balance safety and energy consumption,” to support the position that products “which maintain continuous operation of the obstacle detector and do not “select[] when to use the lower-power mode” are outside the scope of the LEO and should not be excluded from entry.” See Ruling Request at 20 (citing Comm’n Op. at 12).
The ruling request argues that “because the now-disabled firmware (e.g., ‘beam off’) in the accused products was necessary for the photobeams to change between allegedly different ‘operating modes’ and to develop the alleged ‘signal’ for the beams to do so, removing that software eliminates the alleged infringement.” Ruling Request at 20-21; see, e.g., Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001) (finding that software prevented an article’s otherwise capable hardware from infringing a system claim).
Nortek asserts “the plain language of the claims is far more than enough to confirm that GDOs which leave their photo beam obstacle detectors on all the time are well outside the scope of the claims,” and asserts “[t]he ‘223 Patent itself specifically disclaims GDOs which keep their photobeams on all the time” (again citing its prior examples noted above), and notes testimony from the ’223 inventor and CGI’s expert in further support for its position. Ruling Request at 21–22.
Pursuant to the above referenced Joint Stipulation, GGI does not oppose Nortek’s Ruling Request. January 22, 2021, Letter from Dave D. Marcus; See Appendix A hereto (Joint Stipulation.)
HOLDING:
We find that Nortek has met its burden to establish that certain Nortek garage door operators, identified by model number and time in the Joint Stipulation executed January 21, 2021, by Nortek and CGI, defined herein above as the Nortek Products-At-Issue, do not infringe Claim 1 or 21 of U.S. Patent No. 7,755,223, and are therefore not subject to the 1118 LEO. The Joint Stipulation is attached hereto as Appendix A and incorporated by reference in this administrative ruling. Specifically, because the relevant firmware has either been modified to disable, or never contained, code for a beam-off function such that the beam remains on all the time, the models listed in the referenced Joint Stipulation are missing limitations of independent claims 1 and 21 of U.S. Patent No. 7,755,223.
In addition, with each entry of the Nortek Products-At-Issue, CBP will require from persons importing such products a certification as approved by CBP. See 1118 LEO at ¶ 4.
This 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. Part 177.2(b)(1), (2), and (4), Part 177.9(b)(1) and (2).
Sincerely,
(for) Dax Terrill, Chief, Exclusion Order Enforcement Branch
Regulations and Rulings, Office of Trade
U.S. Customs and Border Protection
Appendix A