By Eric Schweibenz
On June 11, 2009, the Federal Circuit is scheduled to hear oral arguments in Pass & Seymour v. ITC, (2009-1338, -1369), and General Protecht Group v. ITC, (2009-1378, -1387, -1434).

Both appeals originate from the ITC’s March 9, 2009 final determination in Certain Ground Fault Circuit Interrupters and Products Containing Same (Inv. No. 337-TA-615).  See our March 11, 2009 post for more details.  Pass & Seymour (“P&S”) initiated the investigation against a number of respondents in connection with the importation and sales of products containing Ground Fault Circuit Interrupters (GFCI) that allegedly infringed certain of P&S’s U.S. patents.   The U.S. patents involved in the appeals are U.S. Patent Nos. 7,212,386 (the ‘386 patent), 5,594,398 (the ‘398 patent), 7,283,340 (the ‘340 patent), and 7,165,564 (the ‘564 patent).  Only three of the original respondents are involved in the appeals:  General Protecht Group, Inc. (“GPG”), Shanghai ELE Manufacturing Corporation (“ELE”), and Wenzhou Trimone Company (“Trimone”) (collectively, the “Respondents”).

Pass & Seymour Appeal

In Pass & Seymour v. ITC, P&S appeals from the ITC’s final determination that none of the Respondents’ products infringe the ‘386 patent, and certain of their products did not infringe the ‘398 patent.  The ITC’s final determination modified the ALJ’s initial determination that these products infringed the ‘386 and ‘398 patents.  With respect to the ‘398 patent, P&S argues in its opening and reply briefs against the ITC’s constructions of two claim limitations on claim 1:  “mounting means” and “unitary electrically conducting member carrying a pair of spaced electrical contacts.”  With respect to the ‘386 patent, P&S argues against the ITC’s constructions of three claim limitations on claim 1: “wiring state detection circuit, “actuator assembly,” and “circuit interrupter.”

In its response brief, the ITC likens P&S’s positions on appeal to “straw-man arguments” that “attempt[ ] to create a different case through assumptions and misrepresentations” rather than challenge the ITC’s conclusions directly.  Further, the ITC argues it correctly construed the disputed claim limitations as mandated by the plain language of the claim, the specification, and the prosecution history of the patent.  The ITC also argues that its construction of disputed claim limitations in the ‘386 patent is consistent with certain extrinsic evidence, including expert testimony.

Each of the intervenor briefs of GPG, ELE and Trimone seek affirmation of the ITC’s finding that none of their products infringe the ‘386 patent.  GPG and Trimone additionally seek the affirmation of the ITC’s determination that certain of their products did not infringe the ‘398 patent.

General Protecht Group Appeal

In General Protecht Group v. ITC, ELE, GPG and Trimone filed separate opening and reply briefs seeking reversal of the ITC’s determination that some of their products infringed certain claims in the ‘340, ‘398, and ‘564 patents.

With respect to the ‘340 patent, the three appellants raise issues on claim construction, literal infringement, and invalidity of the asserted claims in the patent.  Regarding claim construction, Trimone argues that the ITC erred in the claim construction of the claimed “load terminal” limitation, and GPG argued that the ITC erred in the claim construction of the claimed “detecting circuit” limitation.

Regarding literal infringement, all three appellants argue that claims 14 and 18 require “four sets of interrupting contacts providing electrical continuity” instead of “two sets of interrupting contacts” present in their products.  ELE and GPG challenged the ITC’s application of the claim construction for “detection circuit” and “circuit interpreter” to reach the conclusion of infringement.  ELE further challenged the ITC’s conclusion of infringement by arguing that there is no substantial evidence that ELE products (1) “detect” their wiring condition, (2) provide a “predetermined” signal, and (3) can be “permanently disabled” as required by claim 30 in the ‘340 patent.

Additionally, ELE and GPG raise invalidity arguments in connection with the ‘340 patent.  More particularly, they argue that the asserted claims in the ‘340 patent would have been obvious in view of U.S. Patent No. 6,246,558 (the “DiSalvo patent”) alone, or the combination of the DiSalvo patent and U.S. Patent No. 5,600,524 (the “Neiger patent”).

In their response briefs, the ITC and P&S argued that the ITC’s claim constructions are proper and supported by substantial evidence, and even if they were not, it should not change the ITC’s ultimate determination on infringement.  In defense of its original validity finding of the ‘340 patent,  the ITC argues that substantial evidence supports its finding that the Neiger patent failed to disclose two limitations in the claims of the ‘340 patent.  Lastly, the ITC rejected GPG’s argument of obviousness based on the DiSalvo patent alone.

With respect to the ‘398 patent, ELE and GPG argue that (1) the ITC erred in interpreting two claim limitations: the “unitary, electrically conducting member” and the function of the “mounting means,” (2) the asserted claims would have been invalid under the ITC’s broad construction because they were obvious in view of the combination of U.S. Patent Nos. 4,595,894 (the “Doyle patent”), 4,421,959 (the “Chen patent”) and 4,616,117 (the “Kleine patent”).

The ITC replies that the Chen and Kleine patents are in the “contactor” field and thus are not analogous to the problems addressed by the ‘398 patent.  Furthermore, the “contactor” patents taught away from making the asserted combination of references.  Lastly, the ITC argues that, by relying on the combination of Doyle and the “contactor” patents, appellants are admitting that the Doyle patent by itself is not obvious to the ‘398 patent.

With respect to the ‘564 patent, ELE, the lone appellant on this issue, argued the ITC misconstrued the claim element “device parameter”, which should have included a limitation regarding the “end-of-life indicator.”  ELE also argued that under the ITC’s broad construction, the claims of the ‘564 patent would have been invalid for anticipation by U.S. Patent No 4,051,544, and for obviousness over prior art such as the Neiger patent or U.S. Patent No. 5,546,266.

The ITC rebuffed both of ELE’s arguments.  With respect to ELE’s claim construction argument, the ITC replies that ELE can not read device parameters enumerated in the specification into the claim, which explicitly recognize that various device parameters could be used to characterize a device.   With respect to the invalidity argument, the ITC dismisses it as “cursory.”  Specifically, the ITC points out that ELE’s invalidity argument “did not contain element-by-element analyses of the claims to the prior art.”

GPG’s brief also includes a challenge to the validity of the ‘386 patent.  The ITC replies that GPG’s appeal on the ‘386 patent is improper because GPG is not adversely affected by the Commission’s determination.  The ITC further suggests that the invalidity argument against the ‘386 patent would be better suited for GPG’s reply brief in the Pass & Seymour appeal, where P&S seeks to reverse the ITC’s determination of non-infringement on the ‘386 patent.

Oral arguments are scheduled for June 11 at 10:00 a.m.

* Joe Yang is a summer associate at Oblon Spivak