## Facts

- Texas Instruments, Inc. (TI) owned U.S. Patent No. 3,819,921, directed to a miniature electronic calculator with a keyboard input, an “integrated semiconductor array” implementing calculator functions, and a pocket-sized housing.
- TI filed a complaint at the U.S. International Trade Commission (ITC) under § 337 of the Tariff Act of 1930, alleging that imported portable electronic calculators infringed multiple claims of the ’921 patent and constituted unfair acts injuring a domestic industry.
- The ITC instituted an investigation naming numerous respondents; some settled, while others participated through a hearing before an administrative law judge (ALJ).
- The ALJ rejected respondents’ invalidity challenges under 35 U.S.C. §§ 103 and 112, concluding the presumption of validity was not rebutted.
- The ALJ nonetheless found no infringement of the asserted claims and recommended a finding of no § 337 violation.
- In assessing infringement and equivalents, the ALJ relied on differences including: (1) the accused calculators’ scanning-matrix keyboard detection approach versus the patent’s input arrangement; (2) the accused calculators’ use of a single MOS-based integrated circuit versus the patent’s bipolar-transistor-based implementation described in the specification; and (3) the accused calculators’ much smaller size and different physical arrangement.
- The Commission adopted the ALJ’s conclusions, determining there was no infringement and also finding no domestic industry practicing an invention covered by any claim of the ’921 patent.
- TI appealed to the U.S. Court of Appeals for the Federal Circuit.

## Issues

1. Whether substantial evidence supported the ITC’s determination that the accused imported calculators did not infringe the asserted claims of the ’921 patent, either literally or under the doctrine of equivalents.
2. Whether the court should review the ITC’s additional finding that no domestic industry practiced an invention of the ’921 patent for purposes of § 337.

## Decision

- The Federal Circuit affirmed the ITC’s determination of noninfringement.
- The court held that the ITC’s infringement and equivalence findings were supported by substantial evidence and would not be reweighed on appeal.
- The court agreed that material technological and structural differences—including MOS single-chip circuitry versus the patent’s bipolar-based design and differences in keyboard operation and packaging/size—supported findings of neither literal infringement nor equivalence.
- Because infringement is required for a patent-based § 337 violation, the court did not reach the domestic-industry question.

## Legal Principles

- In § 337 appeals, the ITC’s factual findings on infringement and equivalence are reviewed for substantial evidence, and supported findings receive deference.
- Patent claims are construed in light of the invention as disclosed; functional claim language does not justify expanding claim scope to cover materially different technologies and structures not fairly within the claimed invention.
- The doctrine of equivalents is a fact-intensive inquiry; substantial differences in circuit technology, architecture, and packaging can support a finding of no equivalence even when products compete in the same commercial category.
- Where noninfringement is affirmed, issues concerning domestic industry and injury under § 337 need not be decided.

## Conclusion

The Federal Circuit upheld the ITC’s conclusion that imported calculators using different keyboard detection and MOS single-chip technology did not infringe TI’s ’921 patent, either literally or under the doctrine of equivalents; absent infringement, there was no patent-based § 337 violation and no need to address domestic industry.


Texas Instruments, Inc. v. U.S. Int'l Trade Comm'n, 805 F.2d 1558 (Fed. Cir. 1986)