Two of the biggest players in marine electronics are in a legal battle over technology patents that could force one manufacturer to pull product from store shelves.
On Dec. 1 the U.S. International Trade Commission ruled that Garmin’s DownVü scanning sonar products violate Navico’s patents for DownScan imaging technology.
The final ruling prohibits 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.
“It has been a matter that we have pursued now for a year,” Navico CEO Leif Ottosson said the day after the ITC ruling. “As of today, any sale of Garmin DownVu products is an infringement of our patents.”
Beyond a cease-and-desist order, the ITC issued an exclusion order directing U.S. Customs and Border Protection to reject importation of the Garmin products in question, according to Navico.
Hours after the ITC ruling and Navico’s announcement, Garmin vowed to appeal the decision.
“Garmin intentionally designed its products to prevent infringement of Navico’s patents,” Garmin vice president and general counsel Andrew Etkind said in a statement. “We disagree with the ITC and plan to appeal.”
“The ruling will have no impact on Garmin products already purchased by Garmin customers and dealers, or any products purchased going forward,” the company said. “Garmin will continue to vigorously defend the non-infringing configuration of these first-generation DownVü scanning sonar products through appeals and an ongoing litigation in Oklahoma. The ITC ruling applies only to Garmin and has no impact on any existing dealer inventory or any products already purchased by our customers.”
Navico says Garmin had the opportunity to license its patented sonar technology — as did Humminbird, Raymarine and Furuno — but declined.
“While all ITC orders have a 60-day period before taking full effect, effective immediately resellers of Garmin DownVü products risk willfully infringing Navico’s patents if they continue to sell Garmin DownVü products, and they could be subject to an infringement suit,” reads a Navico statement. “Therefore, Navico advises against any distributor, dealer or retailer continuing marketing or selling these products and recommends that resellers seek independent legal advice if they have any questions. It’s important to remember that although the cease-and-desist order takes 60 days before going into effect, anyone that sells the products after the Dec. 1 ruling by the ITC is still infringing on Navico’s patents.”
Ottosson says his company does not plan to pursue legal action against individual retailers during the 60-day period.
“We hope they have codes of conduct and standards that stop them from acting in ways that are not commensurate with U.S. law,” he says.
Ottosson says he expects the appeal will take 12 to 18 months to be ruled upon, “but in the meantime the ITC ruling will be in effect. We also believe that Navico has a strong case and will prevail in the appeal.”
The ITC ruling reverses an initial determination that an ITC administrative law judge issued in July. It concluded that Garmin’s DownVü technology does not infringe upon “any patented aspect” of Navico’s DownScan technology.
The Dec. 1 ruling was the ITC’s second in two weeks that found Garmin was violating sonar patents.
Johnson Outdoors said Nov. 18 that the ITC affirmed the determination of an administrative law judge that Garmin violated section 337 of the Tariff Act of 1930 by importing and selling SideVü sonars, which the ITC affirmed infringe a Johnson Outdoors side scan sonar patent used in some Humminbird fishfinders.
As the legal process plays out for Navico and Garmin, Ottosson says his company will work with retailers that the decision affects.
“We will try and help the channels that are in a difficult situation because these products will now be off the market,” he says. “We will also monitor Garmin’s claims that they have a ‘design around’ and make sure that it goes through proper review procedures before potentially being allowed onto the market. In their communications, Garmin is making it sound easy to come up with solutions that will help them get DownVü out on the market again. We know for a fact that this won’t be the case and believe that this will be much more difficult than Garmin is claiming. If it was simple, they would have done it in the first place.”
This article originally appeared in the January 2016 issue.