• ITC Issues Public Version of Opinion in Certain Adjustable Keyboard Support Systems (337-TA-670)
  • August 27, 2010 | Author: Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On August 13, 2010, the International Trade Commission issued the public version of its opinion reversing Chief ALJ Paul J. Luckern’s February 23, 2010 Final Initial Determination (“ID”) in Certain Adjustable Keyboard Support Systems and Components Thereof (Inv. No. 337-TA-670).  The ITC terminated the investigation, finding that the asserted claims were invalid and not infringed.

    By way of background, the Complainant in this investigation was Humanscale Corporation (“Humanscale”) and the Respondents were CompX International, Inc. and Waterloo Furniture Components Limited d/b/a CompX Waterloo (collectively, “CompX” or “Respondents”).  ALJ Luckern issued the ID finding a violation of Section 337 in connection with the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain adjustable keyboard support systems and components thereof.  According to the ID, ALJ Luckern determined that CompX did not violate Section 337 with respect to its “Wedge-Brake” products because they did not infringe asserted claims 7 and 34 of U.S. Patent No. 5,292,097 (the ‘097 patent).  However, ALJ Luckern determined that CompX did violate Section 337 with respect to its “Brake-Shoe” products because they infringed claim 34 of the ‘097 patent, and claim 34 was not invalid.  The ALJ also found that there was no violation with respect to claim 7 because CompX had established by clear and convincing evidence that claim 7 was invalid as obvious under 35 U.S.C. § 103.  ALJ Luckern determined that CompX had not established any intervening rights.  Finally, the ALJ determined that Humanscale proved the existence of a domestic industry with respect to the ‘097 patent. 

    On March 9, 2010, Humanscale, CompX, and the Commission Investigative Staff each filed a petition for review of the ID, and on April 26, 2010, the ITC issued a notice determining to review in part the ID, namely: (i) the claim construction of the term “frictionally interengagable” recited in claim 34; (ii) infringement of claim 34 by the Brake-Shoe products; (iii) the priority date of claim 34; (iv) invalidity for anticipation and obviousness of claims 7 and 34; and (v) the defense of intervening rights. 

    On July 9, 2010, the ITC issued a notice determining to reverse the ID, finding that the asserted claims were not infringed and were invalid. 

    Claim Construction

    The ITC agreed with the ID that the term “frictionally interengagable” from claim 34 means “capable of locking engagement by application of only a frictional force sufficient to maintain a locked position during normal use.”  The ITC additionally clarified, however, that this construction did not limit the “frictionally interengagable” locking means of claim 34 to the V-shaped profiles and grooves of the ninth embodiment within the specification of the ‘097 patent.  The ITC further agreed with the ID that “frictionally interengagable” locking members are distinct from locking members having a serration arrangement.  Finally, the ITC determined that a plain reading of dependent claim 34 indicates that all locking members must be frictionally interengagable to meet the limitation, and therefore the frictionally interengagable locking members of claim 34 must include at least the first and second locking members of independent claim 7, from which claim 34 depends.

    Infringement

    Based on the above construction, the ITC determined that the brake shoe and the lower link arm of the accused Brake-Shoe device would constitute the “first” and “second locking members” of claim 7.  To be “frictional interengaged” under claim 34, these two elements would need to be “capable of locking engagement by application of only a frictional force sufficient to maintain a locked position during normal use.”  However, the ITC relied upon expert testimony to determine that the brake shoe does not actually stop relative to the lower link arm but rather slides against the lower link arm, and expert testimony from both parties showed that any frictional force between the brake shoe and the lower link arm is insufficient to maintain the Brake-Shoe device in a locked position during normal use.  The ITC therefore determined that the Brake-Shoe products did not meet the “frictionally interengagable” limitation of claim 34 and did not infringe that claim.

    Intervening Rights

    The ID found that Respondents had “not established, by clear and convincing evidence, that products substantially identical to the accused products were made, purchased, used, or imported into the United States prior to the issuance of a reexamination certificate of the ‘097 patent.”  Although the ITC determined not to reach the issue of this defense because it disposed of the investigation on other grounds, it vacated this portion of the ID, noting that all parties and the Investigative Attorney agree that the appropriate evidentiary standard for the affirmative defense of intervening rights is preponderance of the evidence.

    Invalidity

    The ITC vacated the ID’s effective filing date of claim 34, since it applied an improper claim construction of “frictionally interengagable” by assuming the term was limited to V-shaped locking members.  However, the ITC took no position on the effective filing date of claim 34 or whether a grandparent provisional Australian application was prior art to claim 34 because neither the ID nor the ITC relied on the Australian application in determining anticipation or obviousness of claim 34.

    The ITC agreed with the ID that the Kompauer reference did not anticipate claim 7 under 35 U.S.C. § 102, on the grounds that Kompauer did not disclose a support platform movable between a first position below the fixed base and a second position in front of the fixed base.  The ITC further agreed with the ID that claim 7 was rendered obvious under 35 U.S.C. § 103, by the combination of Kompauer with Adam, Holtz, or Hood ¿ each of which disclosed a support platform movable to positions below the fixed base and in front of the fixed base.

    As to claim 34 the ITC disagreed with the ID and held that based on the construction of “frictionally interengagable” not being limited to V-shaped profile and groove structures, a person of ordinary skill in the art would know to use frictional engagement surfaces, such as non-serrated frictional pawls or toothless ratchets in place of the serrated locking members of the Kompauer reference.   The ITC therefore determined that at the time of the ‘097 patent, “it would have been obvious to a person of ordinary skill in the art to apply such knowledge to the combination of Kompauer and Adam, Holtz, or Hood, to arrive at the claimed invention of dependent claim 34.”  The ITC also determined that secondary considerations did not exhibit a sufficient nexus with claims 7 or 34 of the ‘097 patent, and a weak showing of secondary considerations does not overcome a strong prima facie showing of obviousness.