17
Mar
By Mike McCabe
Further to our February 15, 2010 post, on March 11, 2010, the International Trade Commission issued the public version of its Opinion on Remand in Certain Refrigerators and Components Thereof (Inv. No. 337-TA-632).

By way of background, the Complainants in this investigation were Whirlpool Corp., Whirlpool Manufacturing Corp., Whirlpool Patents Co., and Maytag Corp. (collectively, “Whirlpool”) and the Respondents were LG Electronics Corp., Inc., LG Electronics, USA, Inc., and LG Electronics Monterrey, Mexico S.A. de C.V. (collectively, “LG”).  At issue were two types of refrigerator products imported by LG:  side-by-side refrigerators and French door refrigerators.

The investigation was instituted on February 26, 2008.  On February 26, 2009, ALJ Theodore R. Essex issued his initial determination (“ID”), finding no violation of Section 337 with respect to United States Patent No. 6,082,130 (the ‘130 patent).  Upon review, the Commission modified the ID’s claim construction and remanded the investigation to the ALJ to make findings regarding infringement, validity, and domestic industry consistent with the Commission’s claim constructions.  See our July 8, 2009 post for more details.

On October 9, 2009, ALJ Essex issued his initial determination on remand (“RID”), finding no violation of Section 337.  Specifically, in the RID, ALJ Essex determined that: (1) the accused refrigerators do not infringe the asserted claims of the ‘130 patent literally or under the doctrine of equivalents; (2) claims 1, 2, 4, 6, and 9 of the ‘130 patent are invalid under 35 U.S.C. § 103 for obviousness, but that claim 8 of the ‘130 patent is not invalid under 35 U.S.C. § 103; and (3) a domestic industry exists.  On December 14, 2009, the Commission issued a notice determining to review the RID.  See our December 16, 2009 post for more details.

In its February 12 notice, the Commission affirmed the RID’s determination of no violation of the ‘130 patent and terminated the investigation.  The Commission modified a portion of the ALJ’s implied construction of certain claim terms, reversed-in-part the RID’s determination of non-infringement, and affirmed the RID’s determination of obviousness.  The March 12 opinion  set forth the Commission’s detailed bases for its final determination regarding claim interpretation, infringement, obviousness, and domestic industry.

Claim Construction

In his RID, the ALJ had concluded that independent claim 1 (the sole asserted independent claim of the ‘130 patent) was not infringed because the ice storage bin on the accused LG refrigerators “’does not have an auger that moves ice pieces from the ice storage bin through the bottom opening for dispensing from the ice storage bin’”  According to the final determination, the ALJ impliedly construed claim 1 as requiring that: (1) the ice pieces must “‘always be moving down as a result of the movement of the auger’”; and (2) “gravity may play no part in the passage of the ice pieces through the bottom opening when the auger is in a horizontal orientation as opposed to a vertical orientation.”  In its opinion, the Commission explained that neither of the ALJ’s implied constructions was justified based on the Commission’s previous claim construction rulings.  Furthermore, the Commission found that the ALJ’s implied constructions were contrary to the ordinary meaning of the claim language itself as well as to the specification of the ‘130 patent.  The Commission thus found that the claim limitation “the auger moves ice pieces from the ices storage bin through the bottom opening for dispensing . . .” does not require that the auger move ice from the storage bin in a continually downward direction and does not preclude the assistance of additional force (such as gravity) to effect movement of ice from the storage bin.

In the RID, the ALJ found that “the ice crushing region” in dependent claims 6 and 8 meant “an area defined by the circumference of the rotating ice crushing blades.”  Based on that construction, the ALJ concluded that claims 6 and 8 also were not infringed by the LG accused products.  In its opinion, the Commission concluded that the ALJ’s interpretation of “the ice crushing region” was directly contradictory to the language of claims 6 and 8 of the ‘130 patent, which defines “the ice crushing region” as “the ice storage bin” or “the lower ice bin,” respectively.  The Commission concluded that “the ice crushing region” should be construed as “‘an area defined by the ice storage bin (claim 6) or the lower ice bin member (claim 8) through which ice pieces must pass before being dispensed from the ice storage bin.’”

Infringement

Based on its modified claim construction, the Commission reversed a portion of the ALJ’s determination of non-infringement.  In particular, it found that the accused LG side-by-side models infringe independent claim 1 and dependent claims 2, 4, 6, and 9, of the ‘130 patent.  The Commission found that, in the side-by-side models, the “’auger moves ice pieces from the ice storage bin through the bottom opening for dispensing from the ice storage bin.’”  The Commission observed that the side-by-side LG models operates in similar fashion to the preferred embodiment described in the ‘130 patent.

The Commission affirmed the ALJ’s finding that the accused side-by-side model refrigerators do not infringe claim 8 of the ‘130 patent for at least two reasons: (1) they do not have an ice crushing region that is located “below the ice storage region”; and (2) they do not have “a lower ice bin member connected to the lower edge of the upper ice bin member.”

Regarding the accused French door model, the Commission affirmed the ALJ’s finding that this model did not infringe any of the six asserted claims of the ‘130 patent.  With respect to independent claim 1, the Commission noted that the claim term “freezer compartment” means “a section of a refrigerator cabinet kept at a below-freezing temperature, having an opening that provides access to the interior and a closure member that allows access to the access opening.”  Under this construction, the “freezer compartment” must be a part of the refrigerator cabinet.  The Commission concluded that the ice box of LG’s French Door model is not a part of the refrigerator cabinet, and thus, it does not infringe either literally or under the doctrine of equivalents.  Since independent claim 1 was not infringed by the French Door model, the other asserted claims of the ‘130 patent, each of which depend from claim 1, likewise were determined by the Commission not to infringe.

Invalidity

The Commission affirmed the ALJ’s finding that claims 1, 2, 4, 6, and 9 of the ‘130 patent are invalid for obviousness, and affirmed the ALJ’s finding that claim 8 is not invalid for obviousness.  In his RID, the ALJ concluded that these claims were obvious in light of the Hitachi reference combined with other prior art that was well known prior to the 1998 filing date of the ‘130 patent.  The Commission agreed.

Specifically, the Commission found (and the parties did not dispute) that the Hitachi reference disclosed every element of claim 1 other than an “ice maker mounted in the freezer” or an “ice storage bin below the ice maker.”  The Commission further found that the ALJ properly applied the KSR standard for obviousness.  In relevant part, the Commission concluded that, prior to 1998, automatic ice makers were well known in the art, and that persons of ordinary skill would be motivated to combine such prior art ice makers to improve the Hitachi invention.  Similarly, claim 2 was held to be invalid as obvious over the combination of the Hitachi reference and the Gould reference.  Likewise, claims 4, 6 and 9 were held to be invalid as obvious over the combination of the Hitachi reference with other prior art teachings and knowledge in the industry.  Finally, the Commission concluded that claim 8 was not invalid as obvious over the Hitachi reference.

The Commission rejected Whirlpool’s contention regarding secondary considerations of non-obviousness.  The Commission found that Whirlpool had failed to demonstrate any nexus between the patentable features of  the ‘130 patent claims and any alleged commercial success of its refrigerators.  The Commission also found that there was insufficient evidence of copying, long-felt need, or failure of others.  Accordingly, the Commission concluded that evidence of secondary considerations failed to overcome the ALJ’s finding that claims 1, 2, 4, 6 and 9 are invalid for obviousness.

Domestic Industry

Finally, the Commission affirmed the ALJ’s determination that Whirlpool had satisfied the domestic industry requirement.
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