On May 26, 2009, the Federal Circuit issued its opinion in Norgren Inc. v. ITC (2008-1415) which reversed-in-part, vacated-in-part, and remanded the ITC’s final determination of no violation in this case.  Please note that Oblon Spivak represents SMC Corporation and SMC Corporation of America (“SMC”) in this matter.

By way of background, on October 6, 2006, Norgren Inc. (“Norgren”) filed a complaint with the ITC against SMC alleging violation of Section 337 by SMC’s importation and sale of certain connecting devices or clamps that connect together modular filters, regulators, and lubricators (“FRLs”) used for conditioning compressed air in pneumatic systems.  On February 13, 2008, ALJ Carl C. Charneski issued an initial determination (“ID”) in which he found no violation of Section 337 because SMC’s accused connectors did not receive generally rectangular ported flanges of the FRLs as required by the patent-in-suit.  Norgren petitioned for review, and the Commission rendered a final decision on April 14, 2008 adopting the ALJ’s ID.

In its opinion, the Federal Circuit agreed with Norgren’s position that the ITC incorrectly construed the term “generally rectangular ported flange” to require the flanges to have projections on all four sides.  According to the Federal Circuit, “[n]othing in the claims, written description or prosecution history requires four projecting rims.”  Citing Phillips, the Federal Circuit determined that the “generally rectangular ported flange” of the asserted claims of the ‘392 patent is not limited to a flange having four projecting rims.  Rather, according to the Federal Circuit, the “generally rectangular” language pertains to the overall shape of the flange.  The Federal Circuit further determined that          “[a]lthough it is possible for a four-sided, generally rectangular clamp to engage each generally rectangular flange on all four sides, nothing in the claims or the rest of the specification requires that every side contain a rim.”

The Federal Circuit reversed the ITC’s noninfringement determination because it found that SMC’s accused connectors are ported and generally rectangular and they have two “mounting ears,’ i.e., two projecting rims.”.

Intervenor SMC asserted that the Federal Circuit could affirm the ITC determination of no violation by concluding that the ITC erred in finding that the ‘392 patent is nonobvious.  The Federal Circuit determined, however, “that the ALJ should evaluate obviousness in the first instance under the correct construction of ‘generally rectangular ported flange’ – i.e., a construction that does not require a flange having projections on all four sides.”