The International Trade Commission (ITC) made two recent rulings, one in November and one in December, stating that certain Garmin sonar technologies are in violation of patents belonging rival marine electronics manufacturers. As a result, the ITC has issued a Cease and Desist Order barring Garmin and its distributors from selling or aiding others in the sale of infringing products, and has also issued an Exclusion Order directing US Customs and Border Protection to reject their importation. The ruling has no effect in Canada.
The timing of the announcements couldn't be worse for Garmin with the busy holiday shopping season already underway.
Garmin is planning to appeal both determinations. However, the appeals process with the ITC is estimated to take up to 12 to 18 months, during which time its decision banning the import of Garmin units into the US remains in effect. Garmin is seeking work around solutions meanwhile.
In December, the ITC determined that Garmin's sonar products with the DownVÃ¼ transducer were in violation Navico's patents for DownScan Imaging technology. The ruling reverses an initial determination issued by an Administrative Law Judge this past July. According to Garmin, the affected units include the GCV10 and select echo (551dv, 301dv, 201dv and 151dv), echoMAP (94sv, 93sv, 74sv, 73sv, 74dv, 73dv, 54dv, 53dv, 44dv and 43dv)
and GPSMAP (840xs, 1040xs and 1020xs) models that are sold with the transducer as part of the package.
The ITC DownVÃ¼ ruling prohibits Garmin from importing or selling infringing DownVÃ¼ transducers individually or as part of a package. However, Garmin has informed its distributor and retail partners that the ruling does not affect standalone fish finders or chartplotters not bundled with a transducer.
"We are extremely pleased that the ITC has ruled in our favor,' said Leif Ottosson, CEO, Navico. "Our innovative DownScan Imaging provides real benefits to fishermen, and we have invested considerable time, effort and resources to develop and bring it to market. Our patents are designed to protect that investment. We offered our competitors the opportunity to license our technology and incorporate it into their products for the benefit of their customers – and many have. This offer was also made to Garmin, but they declined – putting everyone who sells their products in a difficult position. The situation is unfortunate for many dealers and distributors in the marine electronics marketplace, but we will continue to vigorously defend the intellectual property that protects our innovations and our leading position in the marketplace.'
Additionally, this past November, the ITC also concluded that the first-generation Garmin SideVÃ¼ scanning sonar products infringe on one of three patents belonging to Johnson Outdoors (maker of Humminbird). As a result, Garmin's infringing SideVÃ¼ units are not permitted to be imported into the US.
"Humminbird's pioneering, patented side scan sonar technology, marketed under its Side Imaging brand, is the gold standard in fish finders. This reflects our unique understanding of anglers and our expertise in designing products which provide the best fishing experience on the water,' said Helen Johnson-Leipold, Chairman and CEO, Johnson Outdoors. "We are recognized as an innovation leader…a company that respects the intellectual property of others and protects its own. Obviously, we're very pleased by this final determination by the ITC.'
Garmin says it plans to defend what it calls ‘non-infringing configuration' of its DownVÃ¼ scanning sonar products through appeals and an ongoing litigation in Oklahoma. It also says the ITC ruling applies only to Garmin and has no impact on any existing dealer inventory or any products already purchased by customers.
Navico, the maker of the Lowrance, Simrad, B&G and GoFree brands, says that ITC orders have a 60-day period before taking full effect. Navico says effective immediately US-based resellers of Garmin DownVÃ¼ products risk willfully infringing Navico's patents if they continue to sell the products and could be subject to an infringement suit. As a result, Navico advises against any distributor, dealer or retailer continuing marketing or selling these products and recommends that resellers seek independent legal advice if they have any questions in this matter.
Garmin strenuously denies the danger to retailers and distributors of the transducers in question, arguing that the ITC ruling applies only to itself and has zero impact on its existing retail partners and their inventory.
"Garmin disagrees with the ITC and plans to appeal the determination,' said Andrew Etkind, Garmin's Vice President and General Counsel, in response to the November ITC ruling. "Nevertheless, we do not expect the ruling to have any impact on Garmin customers or products. Garmin has already modified our software to address the ITC's ruling, and we are ready to ship those products. The ruling will have no impact on Garmin products already purchased by our customers and dealers, or any products purchased going forward.'
Later in December, Etkind reacted to the ITC ruling regarding DownVÃ¼'s patent infringement of Navico's intellectual property. "Garmin intentionally designed its products to prevent infringement of Navico's patents. We disagree with the ITC and plan to appeal the determination. However, as with the Johnson Outdoors ITC determination we announced in November, we have already taken steps to ensure that we can continue to provide Garmin DownVÃ¼ scanning sonar products. Garmin has already designed, implemented, and manufactured an alternative design that addresses the issue in this ITC ruling.'
Garmin is working on delivering an approved solution. It says its sonar transducers impacted by the rulings will soon be available with an alternative design solution. The company promises end users and dealers will not notice a change to the user interface, installation or compatibility with existing Garmin products or accessories.
However, Navico says any Garmin products claiming to feature a ‘design around' solution are remain subject to ITC or US Customs approval in order to confirm that such an alternative solution does not likewise violate patents.
The International Trade Commission is an independent governmental agency in Washington, DC responsible for addressing patent infringement disputes relating to goods that are manufactured abroad and imported into the United States.
Garmin's DownVÃ¼ Products are manufactured and imported from Taiwan.