As indicated in our March 2 post, on February 26, 2009, ALJ Theodore R. Essex issued his initial determination in the matter of Certain Refrigerators and Components Thereof (Inv. No. 337-TA-632).  On April 6, ALJ Essex issued the public version of his Initial Determination.

In the ID, ALJ Essex determined that Respondents LG Electronics Corp., Inc., LG Electronics, USA, Inc., and LG Electronics Monterrey, Mexico S.A. de C.V. (collectively “LG”) did not violate section 337 through their admitted importation, sale for importation, and sale after importation of certain refrigerators because the refrigerators do not infringe Complainants Whirlpool Corp., Whirlpool Manufacturing Corp., Whirlpool Patent Corp., and Maytag Corp.’s (collectively “Whirlpool’s”) U.S. Patent No. 6,082,130.

The ‘130 patent is directed to a refrigerator with a cabinet defining a freezer compartment having an access opening and a closure member for closing the access opening.  The freezer compartment includes an ice maker and an ice storage bin, which is removably mounted to the closure member below the ice maker.

Two types of LG refrigerators were accused of infringement:  its “side-by-side” refrigerators and its “French door” refrigerators.  The “side-by-side” refrigerators have an ice maker mounted on the freezer door and an ice bin mounted on the fresh food door, while the “French door” refrigerators have both the ice maker and the ice bin mounted on the fresh food door.

The most critical issue in the investigation was the construction of the claim term “freezer compartment.” LG argued that the term should be limited to the actual freezer area – not including the freezer door – while Whirlpool argued that the freezer door was part of the “freezer compartment.”  This was critical because LG’s accused side-by-side refrigerators have an ice maker mounted on the freezer door.  Thus, if the ‘130 patent were construed to encompass refrigerators having ice makers mounted on the freezer door (and not only those with ice makers inside the freezer area itself), LG’s side-by-side refrigerators might be found to infringe.  Conversely, if the patent were construed to require that the ice maker be inside the freezer area and not mounted on the door, then the LG refrigerators could not be found to infringe.

ALJ Essex construed the term in LG’s favor and found that the accused side-by-side refrigerators do not infringe the ‘130 patent.  According to ALJ Essex, the main reason for this was simply that the patent itself consistently described the “closure member” – i.e., the freezer door – as a separate and distinct structure from the “freezer compartment.”  Thus, the intrinsic evidence inevitably led to the conclusion that the “freezer compartment” did not encompass the door.  And since the ice makers in LG’s accused side-by-side refrigerators were mounted on the door, those refrigerators could not literally infringe the ‘130 patent.

Moreover, the accused “French door” refrigerators could not literally infringe regardless of how the “freezer compartment” term was construed because their ice makers are mounted on the fresh food door.  Even if the freezer compartment were construed to include the freezer door (which, as discussed above, it was not), the ‘130 patent claims would still not have literally read on the “French door” refrigerators.

In addition to its literal infringement argument, Whirlpool also accused LG’s “French door” refrigerators of infringement under the doctrine of equivalents.  This argument did not get far, though, because, according to ALJ Essex, Whirlpool’s doctrine of equivalents argument was fatally limited by prosecution history estoppel.  ALJ Essex found that during the prosecution of the ‘130 patent, Whirlpool had differentiated its invention from prior art refrigerators that had an ice bin mounted anywhere other than on the freezer door.  Since LG’s refrigerators have their ice bin mounted on the door to the fresh food compartment and not on the freezer door, the ALJ found that prosecution history estoppel prevents the accused refrigerators from infringing the ‘130 patent under the doctrine of equivalents.

As to the other issues in the investigation, ALJ Essex determined that all of the asserted claims were valid and enforceable, that an industry does exist in the U.S. that exploits the asserted patent, and that that there has been an importation of the accused refrigerators.  Nevertheless, since LG’s accused refrigerators were found not to infringe the ‘130 patent either literally or under the doctrine of equivalents, there was no violation of section 337.