A patent infringement dispute that Navico Holdings initiated against Garmin’s DownVü scanning sonar products continues to unfold, with the International Trade Commission issuing a limited exclusion order last week modifying the 2015 ruling blocking the sale of the Garmin sonar devices.
The order stemmed from an ITC order in December 2015 ruling that Garmin’s DownVü scanning sonar product violated Navico’s patent for DownScan imaging technology. The commission prohibited its sale and distribution in the United States.
The new order still prohibits “the unlicensed entry of covered marine sonar imaging devices, including downscan and sidescan devices, products containing the same, and components thereof manufactured abroad or on behalf of, or imported by or on behalf of, respondents or any of their affiliated companies, parents, subsidiaries, or other related business entities.”
A modification of the order allows U.S. Customs and Border Protection to ensure that those seeking to import marine sonar imaging devices — including Garmin’s downscan and sidescan devices — are familiar with the terms of the order, and should be able to attest that the items being imported are not prohibited from entry and sale in the United States.
It also specifies that the order does not apply to certain components, such as standalone transducer products, that weren’t found to infringe on Navico’s sonar patents — language that has led each company to offer a different interpretation of the ruling.
Garmin says the new order excludes the DownVü scanning sonar transducer design, while Navico says it specifically blocks the import, sale and promotion of current DownVü products, including the Striker, echoMAP and GPSMAP products sold with their respective transducers.
A public opinion by the ITC should help clarify the language.
“The commission’s public opinion hasn’t been released yet, but hopefully it will be in the next week or two,” Megan Valentine, who is with the office of the general counsel for the U.S. International Trade Commission, told Trade Only Today this morning.
Navico says the limited exclusion order bolstered the ban on the Garmin DownVü product despite Garmin having built in a “design around” solution with its new tilted transducer design. Garmin was ordered to seek a review of any design around, but had not done so, Navico said.
“We are pleased that the ITC once again has ruled in our favor. It’s clear from the rulings that Garmin’s DownVü products from the start have infringed our patents, and it surprises me that a company claiming to respect other companies’ intellectual property would improperly circumvent the ITC’s orders by importing and selling these products in the U.S. market,” Navico CEO Leif Ottosson said in a statement.
“We have offered a license for DownScan Imaging technology to all major manufacturers in the market, but in this and every other matter of patent infringement, we will continue to vigorously defend our intellectual property and innovations.”
Garmin maintained that the new ITC ruling does not address the new tilted DownVü scanning sonar transducer design, “which Garmin strongly asserts does not infringe — that Garmin has been shipping since last December when the previous decision was made by the ITC.”
The 2015 ruling prohibited Garmin from “importing, selling, advertising and aiding or assisting distributors or retailers” in selling all of its infringing DownVü products, including the echo, echoMAP and GPSMAP products, with their respective transducers. Navico said at the time that Garmin had the opportunity to license its patented sonar technology — as did Humminbird, Raymarine and Furuno — but declined.
The 91-page public opinion of the 2015 ruling states that “if Garmin intends to import its [new] products into the United States, it should use established procedures at the commission or U.S. Customs and Border Protection to obtain a ruling as to whether such products infringe the relevant patents.”
Garmin appealed the ruling, and the appeals courts will hear oral arguments later this year, Garmin spokeswoman Carly Hysell told Trade Only Today. A decision is expected in early 2017.
Ottosson contended in an emailed statement to Trade Onlythat Garmin’s new tilted design infringes Navico’s patents.
“The commission also noted that, despite Garmin’s obligation, ‘Garmin has not submitted a petition for modification or a request for advisory opinion seeking adjudication of its alleged redesigns,’ ” Ottosson said. “Thus, Garmin clearly has known since Dec. 1, 2015, that it is up to Garmin to seek approval of the tilted design. Garmin has elected not to do so for reasons that we can only speculate.”
“We think that in the next couple of months it will become even clearer that our statement from Aug. 25 is correct,” Ottosson said. “The commission has now twice ruled in Navico’s favor, and there is no doubt that Garmin has infringed Navico’s patents for DownScan Imaging technology. We view Garmin’s latest statement the same as its press release from August 2015, where Garmin made assertions that our claims were baseless and unfounded. Everyone but Garmin realizes that they are infringing and that Garmin’s infringement and the exclusion of its products will affect distributors, dealers and retailers.”
“The modified ITC order applies only to Garmin and has no impact on any existing distributor, dealer, or retailer inventory or any products already purchased by our customers,” Hysell countered.
In July 2015, Humminbird won a ruling in a patent lawsuit regarding Garmin’s unlicensed use of its side scan sonar technology. In May of this year, Garmin agreed to license the patents from Humminbird parent company Johnson Outdoors.
Read more about the Navico-Garmin case in the October issue of Soundings Trade Only.