Certain Gas Spring Nailer Products and Components Thereof, Inv. 337-TA-1082

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In the Matter of

CERTAIN GAS SPRING NAILER
PRODUCTS AND COMPONENTS THEREOF

337-TA-1082

Publication 5075 June 2020

U.S. International Trade Commission

Washington, DC 20436

U.S. International Trade Commission
COMMISSIONERS
David S. Johanson, Chairman
Rhonda K. Schmidtlein, Commissioner
Jason E. Kearns, Commissioner
Amy A. Karpel, Commissioner
Address all communications to
Secretary to the Commission
United States International Trade Commission
Washington, DC 20436

U.S. International Trade Commission
Washington, DC 20436
www.usitc.gov
Publication 5075 	June 2020
In the Matter of
337-TA-1082
CERTAIN GAS SPRING NAILER
PRODUCTS AND COMPONENTS THEREOF

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN GAS SPRING NAILER 	Investigation No. 337-TA-1082
PRODUCTS AND COMPONENTS
THEREOF 	’
NOTICE OF COMMISSION DETERMINATION FINDING A VIOLATION OF
SECTION 337; ISSUANCE OF LIMITED EXCLUSION ORDER AND CEASE AND I
DESIST ORDER; TERMINATION OF THE INVESTIGATION
AGENCY: U.S. lntemational Trade Commission.
ACTION: Notice. 	.
SUMMARY: Notice is hereby given that the U.S. International Trade Commission (“the
Commission”) has determined to find a violation of section 337. Specifically, the Commission
has determined to affinn in part, reverse in part, and modify in part both an initial detennination
(“ID”) and a remand initial detennination (“RID”) of the presiding administrative law judge
(“ALJ”). The Commission has issued a limited exclusion order (“LEO”) directed against
infringing gas spring nailer products and components thereof of respondent Hitachi Koki U.S.A.,
Ltd. (“Hitachi”) of Braselton, Georgia and a cease and desist order (“CDO”) directed against
Hitachi. The investigation is tenninated. 	"
FOR FURTHER INFORMATION CONTACT: Clint Gerdine, Esq., Office of the General
Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, D.C. 20436,
telephone (202) 708-2310. Copies of non-confidential documents filed in connection with this
investigation are or will be available for inspection during official business hours (8:45 a.m. to
5:15 p.m.) in the Office of the Secretary, U.S. Intemational Trade Commission, 500 E Street,
SW., Washington, D.C. 20436, telephone (202) 205-2000. General information concerning the
Commission may also be obtained by accessing its Internet server at httgs://www.usitc.gov. The
public record for this investigation may be viewed on the Commission’s electronic docket
(EDIS) at hltgs://edis.usilc. gov. Hearing-impaired persons are advised that information on this
matter can be obtained by contacting the Commission‘s TDD terminal on (202) 205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on
November 20, 2017, based on a complaint filed on behalf of Kyocera Seneo Brands Inc.
(“Kyocera”) of Cincinnati, Ohio. 82 Fed. Reg. 55118-19 (Nov. 20, 2017). The complaint, as
amended and supplemented, alleges violations of section 337 of the Tariff Act of 1930, as
amended, 19 U.S.C. 1337 (“section 337”), based upon the importation into the United States, the

sale for importation, and the sale within the United States after importation of certain gas spring
nailer products and components thereof by reason of infringement of certain claims of U.S.
Patent Nos. 8,011,547 (“the ’547 patent”); 8,267,296 (“the ’296 patent”); 8,27,297 (“the ’297
patent”); 8,387,718 (“the ’718 patent”); 8,286,722 (“the ’722 patent”); and 8,602,282 (“the ’282
patent”). The complaint further alleges the existence of a domestic industry. The
Commission’s notice of investigation named Hitachi as a respondent. The Office of Unfair
Import Investigations is not participating in the investigation. The ’547 patent has been
terminated from the investigation and the notice of investigation was amended to add claim 30 of
the ’297 patent to the investigation. Order No. 13 (June 4, 2018), unreviewed by Comm’n
Notice (June 22, 2018); Order No. 15 (June 19, 2018), unreviewed by Cornm’n Notice (July 9,
2018), 83 Fed. Reg. 32685-66 (July 15, 2018). Prior to the evidentiary hearing, the parties
stipulated that the ’718 patent is the only remaining patent at issue because no violation could be
shown as to the ’296, ’297, ’722, and ’282 patents based on an evidentiary ruling limiting the
Kyocera’s expert’s testimony. See ID at 1-2.“ At the hearing, Kyocera asserted claims 1, 10,
and 16 (the “asserted claims”) of the ’718 patent. Id. at 2, 21.
On June 7, 2019, the ALJ issued a final ID finding no violation of section 337 as to the '
’718 patent based on non-infringement and the failure of Kyocera to establish the existence of a
domestic industry (“DI”) that practices the ’718 patent. Specifically, the ID finds that Kyocera
failed to show that the accused products or the domestic industry products practice the asserted ;
claims. The ID also finds that Kyocera satisfied the economic prong of the DI requirement
under section 337(a)(3)(B). The ID also includes a recommended determination on remedy and
bonding (“RD”) during the period of Presidential review. The RD recommends an LEO ,
directed to gas spring nailer products and components thereof that infringe the asserted claims of
the ’718 patent, and recormnends a CDO directed against Hitachi. The RD does not recommend
imposing a bond. 	,
On August 14, 2019, the Commission determined to review the ID in part and remand in
part. See Comm’n Notice (Aug. 14, 2019). Specifically, the Commission detennined to review
the ID’s finding that Kyocera did not establish: (1) either direct or induced infringement of the
asserted claims of the ’718 patent, and (2) practice of the asserted claims by the DI products to
satisfy the DI requirement. The Commission also determined toreview the ID’s finding that
Kyocera has satisfied the economic prong of the DI requirement. Id. The Commission
remanded the issues of whether Kyocera has established, by a preponderance of the evidence,
that: (1) the remaining limitations (irrespective of the “system controller” limitation, i.e., “a
circuit configured to control operation based on received input signals”) of the asserted claims of
the ’718 patent are met by the accused products; (2) the remaining limitations of the asserted
claims are practiced by the Dl products (“the DI products”); and (3) Hitachi induced
infringement of the asserted claims. Id.
2

On October 28, 2019, the ALJ issued an RID finding no violation of section 337 as to the
’718 patent based on non-infringement and the failure of Kyocera to establish the existence of a
domestic industry that practices the ’7l8 patent. Specifically, the RID finds that: (1) neither
the accused products nor the DI products satisfy the “displacement volume” limitation (i.e., “ (A)
a hollow cylinder comprising a cylindrical wall with’a movable piston therewith, said hollow
cylinder containing a displacement volume created by a stroke of said piston”) and the “initiating
a driving cycle” limitation (i.e., .“initiating a driving cycle by pressing said exit end against a
workpiece and actuating said trigger, thereby causing said fastener driving mechanism to force
the driver member to move toward said exit end and drive a fastener into said workpiece”) of the
asserted claims; and (2) Kyocera failed to establish that Hitachi possesses the requisite specific
intent to induce infringement of the claims. 	.
On November 12, 2019, Kyocera petitioned, and Hitachi contingently petitioned, for
review of the RID. On November 20, 2019, Kyocera and Hitachi each filed a response in
opposition to the other party’s petition for review. 	'
On December 12, 2019, the Commission determined to review the RID in part.
Specifically, the Commission detemiined to review the RID’s finding that Kyoceradid not
establish: (l) direct infringement of the asserted claims with respect to the “displacement
volume” and “initiating a driving cycle” limitations; (2) practice of the asserted claims by the DI
products with respect to these limitations; and (3) induced infringement of the asserted claims.
84 Fed. Reg. 69391-92 (Dec. 18, 2019). The Commission determined not to review the
remainder of the RID. Id. The Commission also requested the parties to respond to certain
questions concerning the issues under review with respect to the ID and RID, and requested
written submissions on the issues o/fremedy, the public interest, and bonding from the parties
and interested non-parties. Id.
On January 3 and 10, 2020, Kyocera and Hitachi each filed a brief and a reply brief,
respectively, on all issues for which the Commission requested written submissions. Having
reviewed the record in this investigation, including the final ID, the RID, and the parties’ written
submissions, the Commission has determined to find a violation of section 337. Specifically,
the Commission has determined that: (1) the accused and DI products meet the “system
controller,” “displacement volume,” and “initiating a driving cycle” limitations of the asserted
claims 1, 10, and 16 of the ’7l8 patent, and therefore the accused products infringe these claims;
(2) the DI products practice these claims and therefore Kyocera has satisfied the technical prong
of the DI requirement; (3) Hitachi has induced infringement of the asserted claims; and (4)
Kyocera has satisfied the economic prong of the DI requirement under section 337(a)(3)(C).
The Commission reverses the ID’s and RID’s findings to the contrary and takes no position on
the ID’s finding that Kyocera has satisfied the economic prong of the DI requirement under
section 337(a)(3)(B). Accordingly, the Commission finds a violation based on Hitachi’s
induced infringement of the asserted claims. The Commission has issued an opinion explaining
the basis for the Commission’s determination. 	_
3

Having found a violation of section 337 as to the ’7l 8 patent, the Commission has
determined that the appropriate form of relief is an LEO prohibiting the entry of unlicensed gas
spring nailer products and components thereof that infringe one or more of claims 1, 10, and 16
of the ’7l8 patent, and that are manufactured abroad by or on behalf of, or imported by or on
behalf of Hitachi, or any of its affiliated companies, parents, subsidiaries, or other related
business entities, or their successors or assigns. Appropriate relief also includes a CDO
prohibiting Hitachi from conducting any of the following activities in the United States:
importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for
exportation), and soliciting U.S. agents or distributors for gas spring nailer products and
components thereof that infringe one or more of claims 1, 10, and 16 of the ’718 patent.
The Commission has further determined that the public interest factors enumerated in
sections 337(d)(1) and 337(t)(1) (19 U.S.C. 1337(d)(l) and 1337(f)(l)) do not warrant denying
relief. Finally, the Commission has determined that no bond is required during the period of
Presidential review (19 U.S.C. 1337(j)). The Commission’s order was delivered to the President
and to the United States Trade Representative on the day of its issuance.
The Commission has terminated this investigation. The authority for the Commission’s
determination is contained in section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337,
and in part 210 of the Cormn_ission’sRules of Practice and Procedure, 19 CFR part 210.
Lisa R. Barton
Secretary to the Commission
By order of the Commission.
Issued: March 5, 2020
4

CERTAIN GAS SPRING NAILER PRODUCTS AND 	Inv. No. 337-TA-1082
COMPONENTS THEREOF
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served upon the
following parties as indicated, on March 5, 2020.
67%?->
Lisa R. Barton, Secretary
U.S. Intemational Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Kvoeera Senco Brands. Inc.:
Robert S. Riggs, Esq.
VEDDER PRICE PC
222 North LaSalle Street, Suite 2600
Chicago, ID60601-1003
II] Via Hand Delivery
IXIVia Express Delivery
II] Via First Class Mail
II] Other:
On Behalf of Respondents Hitachi Koki U.S. A.. Limited:
Paul Devinsky, Esq.
McDERMOTT WILL & EMERY LLP
500 North Capitol Street, NW
Washington, DC 20001 ‘
\
El Via Hand Delivery
Via Express Delivery
III Via First Class Mail
El Other:

UNITED STATES INTERNATIONAL TRADE COMMISSION _
Washington, D.C.
In the Matter of 	.
CERTAIN GAS SPRING NAILER PRODUCTS 	Investigation No. 337-TA-1082
AND COMPONENTS THEREOF 	i
' 	LIMITED EXCLUSION ORDER
The United States lntemational Trade Commission (“Commission”) has determined that
there is a violation of Section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § I337), in the
unlawful importation, sale for importation, and sale after importation by respondent Hitachi Koki
U.S.A., Ltd., now known as Koki Holdings America Ltd., (“Respondent”) of certain gas spring
nailer products and components thereof that infringe one or more of claims 1, 10, and 16 of U.S.
Patent No. 8,387,718.
Having reviewed the record of this investigation, including the written submissions of the
parties, the Commission has made its determination on the issues of remedy, the public interest,
and bonding. The Commission has determined that the appropriate form of relief is a limited
exclusion order prohibiting the unlicensed entry of certain gas spring nailer products and
components thereof that are manufactured abroad by or on behalf of, or imported by or on behalf
of, Respondent or any of its affiliated companies, parents, subsidiaries, licensees, or other related
business entities, or their successors or assigns.
The Commission has also determined that the public interest factors enumerated in 19
U.S.C; § l337(d)(l) do not preclude the issuance of the limited exclusion order, and that there is
no bond during the period of Presidential review.
Accordingly, the Commission hereby ORDERS that:
i l. Gas spring nailer products and components thereof that infringe one or more of

claims 1, 10, and 16 of U.S. Patent No. 8,387,718 (“the ’7l8 Patent”) and that are
manufactured abroad by or on behalf of, or imported by or on behalf of, Respondent
or any of its affiliated companies, parents, subsidiaries, licensees, or other related
business entities, or their successors or assigns (“covered articles”), are excluded
from entry for consumption into the United States, entry for consumption from a
foreign trade zone, or withdrawal from a warehouse for consumption, for the
remaining term of the ‘718patent, except under license of the patent owner or as
provided by law.
Notwithstanding paragraph 1 of this Order, covered articles are entitled to entry into
the United States for consumption, entry for consumption from a foreign-trade Zone,
or withdrawal from a warehouse for consumption withoutbond,pursuant to subsection
(j) of Section 337 ofthe TariffAct of 1930, as amended (19 U.S.C. § 1337(i)) and
the Presidential Memorandum for the United States Trade Representative of July
21, 2005 (70 Fed. Reg. 43,251), from the day after this Order is received by the
United States Trade Representative until such time as the United States Trade
Representative notifies the Commission that this Order is approved or disapproved
but, in any event, not later than sixty (60) days after the date of receipt of this Order.
At the discretion of CBP and pursuant to the procedures it establishes, persons
seeking to import gas spring nailer products and components thereof that are
potentially subject to this Order may be required to certify that they are familiar
with the terms of this Order, that they have made appropriate inquiry, and thereupon
state that, to the best of their knowledge and belief, the products being imported are
not excluded from entry under paragraphs 1-2 of this Order. At its discretion, CBP
may require persons who have provided the certification described in this paragraph
to fumish such records or analyses as are necessary to substantiate the certification.

4. In accordance with 19 U.S.C. § 1337(l), the provisions of this Order shall not apply
to gas spring nailer products and components thereof that are imported by and for
the use of the United States, or imported for, and to be used for, the United States
with the authorization or consent of the Govemment.
5. The Commission may modify this Order in accordance with the procedures
described in Section 210.76 of the Commission’s Rules of Practice and Procedure
(19 C.F.R. § 210.76).
6. The Secretary shall serve copies of this Order upon each party of record in this
investigation and upon CBP.
» 7. Notice of this Order shall be published in the Federal Register.
By order of the Commission.
W@@Lisa R. Barton
V 	Secretary to the Commission
Issued: March 5,2020
J

CERTAIN GAS SPRING NAILER PRODUCTS AND 	Inv. N0. 337-TA-1082
COMPONENTS THEREOF
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Order, Commission has been served
upon the following parties as indicated, on March 5, 2020.
Lisa Barton, Secretary
U.S. International Trade Cormnission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Kvoeera Senco Brands. Inc.:
Robert S. Riggs, Esq.
VEDDER PRICE PC
222 North LaSalle Street, Suite 2600
Chicago, IL 60601-1003
U Via Hand Delivery
El Via Express Delivery
El Via First Class Mail
El Other:
On Behalf of Respondents Hitachi Koki U.S. A., Limited: 	'
Paul Devinsky, Esq.
McDERMOTT WILL & EMERY LLP
500 North Capitol Street, NW
Washington, DC 20001
III Via Hand Delivery
E1Via Express Delivery
U Via First Class Mail
El Other:

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C. V
In the Matter of t 	I
CERTAIN GAS SPRING NAILER PRODUCTS 	Investigation N0. 337-TA-1082 _
AND COMPONENTS THEREOF '
CEASE AND DESIST ORDER
IT IS HEREBY ORDERED THAT Respondent Hitachi Koki U.S.A., Ltd.,
now known as Koki Holdings America Ltd. (“Respondent”), cease and desist from conducting any
of the following activities in the United States: importing, selling, offering for sale, marketing,
advertising, distributing, transferring (except for exportation), and soliciting U.S. agents or
distributors for, and aiding and abetting other entities in the importation, sale for importation, sale
after importation, transfer (except for exportation), or distribution of gas spring nailer products and
components thereof that infringe one or more of claims 1, 10, and 16 of U.S. Patent No. 8,387,718,
in violation of Section 337 ofthe TariffAct of 1930, as amended (19 U.S.C. §r1337).
I. ‘
Definitions
As used in this Order:
(A) “Commission” shall mean the United States International Trade Commission.
(B) “Complainant” shall mean Kyocera Senco Brands, Inc. ‘
(C) “Respondent” shall mean Hitachi Koki U.S.A., Ltd., now known as Koki Holdings
America Ltd., whose address is represented to be ll 11 Broadway Avenue, Braselton,
Georgia 38517.

(D) “Person” shall mean an individual, or any non-govermnental partnership, firm,
association, corporation, or other legal or business entity other than Respondent or its
majority owned or controlled subsidiaries, successors, or assigns.
(E) “United States” shall mean the fifty States, the District of Columbia, and Puerto Rico.
(F) The tenns “import” and “importation” refer to importation forientry for consumption
under the Customs laws of the United States.
(G) The term “covered products” shall mean gas spring nailer products and components
thereof covered by one or more of claims 1, 10, and 16 of the ’7l8 patent. Covered
products shall not include articles for which a provision of law or license avoids
liability for infringement.
II.
Applicability
The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
principals, stockholders, officers, directors, employees, agents, distributors, controlled (whether
by stock ownership or otherwise) and majority-owned business entities, successors, and assigns,
and to each of them insofar as they are engaging in conduct prohibited by Section III, infia, for,
with, or otherwise on behalf of, Respondent.
III.
Conduct Prohibited
The following conduct of Respondent in the United States is prohibited by this Order.
For the remainingterm of PatentNo. 8,387,718,Respondentshallnot:
(A) import or sell for importation into the United States covered products;
(B) market, distribute, sell, offer to sell, or otherwise transfer (except for exportation), in
the United States imported covered products;
(C) advertise imported covered products;
2

(D) solicit U.S. agents or distributors for imported covered products; or
(E) aid or abet other entities in the importation, sale for importation, sale afier importation,
transfer, or distribution of covered products. 	'
IV.
Conduct Permitted
Notwithstanding any other provision of this Order, specific conduct otherwise prohibited.
by the terms of this Order shall be permitted if:
(A) in a written instrtunent, the owner of the ’>7l8patent licenses or authorizes such
specific conduct; or 	t
(B) such specific conduct is related to the importation or sale of covered products by or for
the United States.
V.
Reporting 	'
For purposes of this requirement, the reporting periods shall commence on January 1 of
each year and shall end on the subsequent December 31. The first report required under this
section shall cover the period from the date of issuance of this order through December 31, 2020.
This reporting requirement shall continue in force until such time as Respondent has truthfully
reported, in two consecutive timely filed reports, that it has no inventory (whether held in
warehouses or at customer sites) of covered products in the United States.
Within thirty (30) days of the last day of the reporting period, Respondent shall report to
the Commission: (a) the quantity in units and the value in dollars of covered products that it has
imported and/or sold in the United States after importation during the reporting period, and (b)
the quantity in units and value in dollars of reported covered products that remain in inventory in
the United States at the end of the reporting period.
When filing written submissions, Respondent must file the original document
3

electronically on or before the deadlines stated above and submit eight (8) true paper copies to
the Office of the Secretary by noon the next day pursuant to Section 2l0.4(f) of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.4(f)). Submissions should
refer to the investigation number (“Inv. No. 337-TA-1082”) in aprominent place on the cover
pages and/or the first page. (See Handbook for Electronic Filing Procedures,
https://www.usitc.gov/documents/handbool<_on__filing_procedures.pdf). Persons with
questions regarding filing should contact the Office of the Secretary (202-205-2000). If
Respondent desires to submit a document to the Commission in confidence, it must file the
original and a public version of the original with the Office of the Secretary and must serve a
copy of the confidential version on Comp1ainant’s counsel.‘ 2
Any failure to make the required report or the filing of any false or inaccurate report shall
constitute a violation of this Order, and the submission of a false or inaccurate report may be
referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
VI.
Recordkeeping and Inspection 	_
(A) For the purpose of securing compliance with this Order, Respondent shall retain any
, 	_
and all records relating to the sale, offer for sale, marketing, or distribution in the United
States of covered products, made and received in the usual and ordinary course of
business, whether in detail or in summary form, for a period of three (3) years from the
close of the fiscal year to which they pertain.
(B) For the purposes of determining or seeming compliance with this Order and for no
other purpose, subject to any privilege recognized by the federal courts of the United
States, and upon reasonable written notice by the Commission or its staff, duly
' Complainant must file a letter with the Secretary identifying the attorney to receive reports
associated with this Order. The designated attomey must be on the protective order entered in the
investigation. 	_
4

authorized representatives of the Commission shall be pennitted access and the
right to inspect and copy, in Respondent’s principals offices dming office hours,
and in the presence of counsel or other representatives if Respondent so chooses, all
books, ledgers, accounts, correspondence, memoranda, and other records and
documents, in detail and in summary form, that must be retained under subparagraph
VI(A) of this Order.
VII.
1 Service of Cease and Desist Order
Respondent is ordered and direct to:
(A) Serve, within fifteen days after the effective date of this Order, a copy of this Order
upon each of its respective officers, directors, managing agents, agents, and employees
who have any responsibility for the importation, marketing, distribution, sale, lease, or
rent of imported covered products in the United States;
(B) serve, within fifteen days after the succession of any persons referred to in
subparagraph VII(A) of this Order, a copy of the Order upon each successor; and
(C) maintain such records as will show the name, title, and address of each person upon
whom the Order has been served, as described in subparagraphs VII(A) and VII(B) of
this Order, together with the date on which service was made.
The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
the ’7l8 patent expires.
VIII.
Confidentiality
Any request for confidential treatment of infonnation obtained by the Commission
pursuant to Section V or VI of this Order should be made in accordance with Section 201.6 ofthe
Cormnission’s Rules of Practice and Procedure (l9 C.F.R. § 201.6). For all reports for which
confidential treatment is sought, Respondent must provide a public version of such report with
Q 	5

confidential infonnation redacted.
IX.
Enforcement
Violation of this Order may result in any of the actions specified in Section 210.75 of the
Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil
penalties under Section 337(i) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any other
action that the Commission deems appropriate. In determining whether Respondent is in violation
of this order, the Commission may infer facts adverse to Respondent if it fails to provide adequate
or timely information. 	’
X.
Modification 	.
The Commission may amend this order on its own motion or in accordance with the
procedure described in Section 210.76 of the Corrunission’s Rules of Practice and Procedure (19
C.F.R. § 210.76). 	- ‘
XI.
Bonding 	.
The conduct prohibited by Section III of this Order may be continued during the sixty-day
period in which this Order is under review by the United States Trade Representative, as delegated
by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), with no bond required. This bond provision
does not apply to conduct that is otherwise permitted by section IV of this Order. Covered products
imported on or afier the date of issuance of this Order are entitled to entry without bond as set forth
in the exclusion order issued by the Commission, and are not subject to this bond provision.
6

By order of the Commission.

GiE>
Lisa R. Barton

Secretary to the Commission
Issued: March 5, 2020

CERTAIN GAS SPRING NAILER PRODUCTS AND 	Inv. No. 337-TA-1082
COMPONENTS THEREOF
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Order, Commission has been served
upon the following parties as indicated, on March 5, 2020.
W:/2%
Lisa R. Barton, Secretary
U.S. lntemational Trade Cominission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Kvocera Senco Brands. Inc.:
Robert S. Riggs, Esq.
VEDDER PRICE PC
222 North LaSalle Street, Suite 2600
Chicago, IL 60601-1003
III Via Hand Delivery
Via Express Delivery
III Via First Class Mail
U Other:
On Behalf of Respondents Hitachi Koki U.S. A.. Limited:
Paul Devinsky, Esq.
McDERMOTT WILL & EMERY LLP
500 North Capitol Street, NW
Washington, DC 20001
\ El Via Hand Delivery
IE Via Express Delivery
U Via First Class Mail
III Other:

PUBLIC VERSION
1
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN GAS SPRING NAILER
PRODUCTS AND COMPONENTS
THEREOF
Investigation No. 337-TA-1082
COMMISSION OPINION
On June 7 and October 28, 2019, the presiding administrative law judge (“ALJ”) issued a
final initial determination (“ID”) and a remand ID (“RID”), respectively, both of which find no
violation of section 337 of the Tariff Act of 1930, as amended 19 U.S.C. § 1337 (“section 337”).
The ID and RID find that the sole respondent’s accused products do not directly infringe claims
1, 10, and 16 (“the asserted claims”) of U.S. Patent No. 8,387,718 (“the ’718 patent”); that the
respondent does not induce infringement of the asserted claims; and that the complainant’s
domestic industry (“DI”) products do not practice the asserted claims. 	The Commission
determined to review both the ID and RID in part. 	On review, the Commission finds a violation
of section 337 because the accused products directly infringe the asserted claims, the respondent
induces infringement of the asserted claims, the complainant’s DI products practice the asserted
claims, and the complainant has satisfied the economic prong of the domestic industry
requirement. 	The Commission has determined to issue a limited exclusion order (“LEO”)
directed to infringing gas spring nailer products and components thereof, and a cease and desist
order (“CDO”) directed to the respondent. 	This Opinion sets forth the Commission’s reasoning
in support of its violation and remedy determinations.

PUBLIC VERSION
2
I. 	BACKGROUND
A. 	Procedural History
The Commission instituted this investigation on November 20, 2017, based on a
complaint filed on behalf of Kyocera Senco Brands Inc.1 (“Kyocera”) of Cincinnati, Ohio. 	82
Fed. Reg. 55118-19 (Nov. 20, 2017). 	The complaint, as amended and supplemented, alleges
violations of section 337, based upon the importation into the United States, the sale for
importation, and the sale within the United States after importation of certain gas spring nailer
products and components thereof by reason of infringement of certain claims of the ’718 patent
and U.S. Patent Nos. 8,011,547 (“the ’547 patent”); 8,267,296 (“the ’296 patent”); 8,27,297 (“the
’297 patent”); 8,286,722 (“the ’722 patent”); and 8,602,282 (“the ’282 patent”).2 	The patents
share largely identical specifications. 	The complaint further alleges the existence of a domestic
industry. 	The Commission’s notice of investigation names as a respondent Hitachi Koki
U.S.A., Ltd.3 (“Hitachi”) of Braselton, Georgia. 	The Office of Unfair Import Investigations is
not participating in the investigation.
On May 3, 2018, the ALJ issued a Markman Order construing the relevant terms of the
asserted patents. 	See Order No. 9 (May 3, 2018) (the “Markman Order”). 	Prior to the
evidentiary hearing, the parties stipulated that the ’718 patent is the only patent at issue since no
1 During the investigation, Kyocera Senco Brands Inc. changed its name to Kyocera Senco
Industrial Tools, Inc. 	See ID at 3 n.3 (citing Kyocera’s Initial Post-Hearing Br. at 4 n.3).
2 The Commission terminated the ’547 patent from the investigation in June 2018. 	See Order
No. 13 (June 4, 2018), unreviewed by Comm’n Notice (June 22, 2018).
3 During the investigation, Hitachi Koki U.S.A., Ltd. changed its name to Koki Holdings
America Ltd. 	See Hitachi’s Initial Post-Hearing Br. at 3.

PUBLIC VERSION
3
violation could be shown as to the ’296, ’297, ’722, and ’282 patents.4
On June 7, 2019, the ALJ issued the final ID finding no violation of section 337 as to the
’718 patent. 	The ID finds that the accused products do not directly infringe or induce
infringement of claims 1, 10, and 16 of this patent, and that Kyocera has not satisfied the
technical prong of the DI requirement with respect to this patent. 	Specifically, the ID finds that
neither the accused products nor the DI products meet the “system controller” limitation of the
asserted claims. 	The ID also finds that Kyocera has satisfied the economic prong of the
domestic industry requirement. 	The ID also includes a recommended determination (“RD”) on
remedy and bonding. 	The RD recommends that, to the extent that the Commission finds a
violation of section 337, the Commission issue an LEO directed to gas spring nailer products and
components thereof that infringe the asserted claims of the ’718 patent and a CDO directed
against Hitachi. 	The RD recommends the imposition of no bond during the period of
Presidential review.
On June 24, 2019, Kyocera petitioned and Hitachi contingently petitioned for review of
the final ID.5 	On July 2, 2019, Kyocera and Hitachi each filed a response in opposition to the
other party’s petition for review.6
4 In Order No. 28, the ALJ found that Kyocera’s technical expert, Dr. Pratt, did not qualify as a
person of ordinary skill in the art (“POSA”). 	Order No. 28 at 3. 	The ALJ then precluded Dr.
Pratt from offering testimony concerning infringement under the doctrine of equivalents. 	Id. at
6. 	In response to Order No. 28, the parties stated that “as to the asserted claims of
[the ’296, ’297, ’722, and ’282 patents], the parties agree that the hearing should not move
forward with respect to the claims in these patents.” 	See Joint Stipulation Regarding Order No.
28 (Oct. 26, 2018).
5 See Complainant’s Petition for Review of the Initial Determination of No Violation
(“Kyocera’s Pet.”); Respondent’s Contingent Petition for Commission Review (“Hitachi’s Pet.”).
6 See Respondents’ Response to Complainant’s Petition for Commission Review (“Hitachi’s

PUBLIC VERSION
4
On August 14, 2019, the Commission determined to review the ID’s findings concerning
the “system controller” limitation and remanded in part for the ALJ to make further findings.
See Comm’n Notice (Aug. 14, 2019). 	Specifically, the Commission determined to review the
ID’s finding that Kyocera did not establish: 	(1) either direct or induced infringement of the
asserted claims of the ’718 patent and (2) that the DI products practice the asserted claims. 	The
Commission also determined to review the ID’s finding that Kyocera has satisfied the economic
prong of the DI requirement. 	The Commission remanded the issues of whether Kyocera has
established, by a preponderance of the evidence, that: 	(1) the remaining limitations (irrespective
of the “system controller” limitation) of the asserted claims of the ’718 patent are met by the
accused products; (2) the remaining limitations of the asserted claims are practiced by the DI
products; and (3) Hitachi induced infringement of the asserted claims. 	Id.
On October 28, 2019, the ALJ issued the RID finding no violation of section 337 as to
the ’718 patent based on non-infringement and the failure of Kyocera to establish the existence
of a domestic industry that practices the ’718 patent. 	Specifically, the RID finds that:
(1) neither the accused products nor the DI products satisfy the “displacement volume” and
“initiating a driving cycle” limitations of the asserted claims, and (2) Kyocera failed to establish
that Hitachi possesses the requisite specific intent to induce infringement.
On November 12, 2019, Kyocera petitioned, and Hitachi contingently petitioned, for
review of the RID.7 	On November 20, 2019, Kyocera and Hitachi each filed a response in
Resp.”); Complainant’s Response to Respondent’s Contingent Petition for Commission Review.
7 See Complainant’s Petition for Review of the Remand Initial Determination of Section 337
(“Kyocera’s Pet. (RID)”); Respondent’s Contingent Petition for Commission Review of Remand
Initial Determination.

PUBLIC VERSION
5
opposition to the other party’s petition for review.8
On December 12, 2019, the Commission determined to review the RID in part and
requested written submissions from the parties on certain issues. 	84 Fed. Reg. 69391-92 (Dec.
18, 2019). 	Specifically, the Commission determined to review the RID’s finding that Kyocera
did not establish: 	(1) direct infringement of the asserted claims with respect to the
“displacement volume” and “initiating a driving cycle” limitations; (2) practice of the asserted
claims by its DI products with respect to these limitations; and (3) induced infringement of the
asserted claims. 	Id. 	The Commission also requested written submissions on the issues of
remedy, the public interest, and bonding. 	Id. 	The Commission determined not to review the
remainder of the RID. 	Id. 	On January 3 and 10, 2020, Kyocera and Hitachi each filed a brief
and a reply brief, respectively, on all issues for which the Commission requested written
submissions.9
Having reviewed the record in this investigation, including the ID, the RID, and the
parties’ briefing, on review the Commission has determined, as described infra, to: (1) reverse
the final ID’s and RID’s findings that neither the accused products nor the DI products meet the
“system controller,” “displacement volume,” and “initiating a driving cycle” limitations of the
asserted claims of the ’718 patent, and accordingly, find that the accused products infringe
8 See Respondents’ Response to Complainant’s Petition for Commission Review of the Remand
Initial Determination of Section 337 (“Hitachi’s Resp. (RID)”); Complainant’s Response to
Respondent’s Contingent Petition for Commission Review.
9 See Complainant’s Response to Commission Request for Additional Briefing (Jan. 3, 2020)
(“Kyocera’s Sub.”); Complainant’s Brief to the Commission on Remedy, Bond, and the Public
Interest (Jan. 3, 2020) (“Kyocera’s Sub. on Remedy”); Respondent’s Response to Notice of
Commission Determination to Review in Part a Remand Initial Determination (Jan. 3, 2020)
(“Hitachi’s Sub.”); Complainant’s Response to Respondent’s Brief to the Commission (Jan. 10,
2020) (“Kyocera’s Reply”); Respondent’s Reply to Complainant’s Response to Notice of
Commission Determination to Review in Part a Remand Initial Determination (Jan. 10, 2020).

PUBLIC VERSION
6
claims 1, 10, and 16 of the ’718 patent; (2) reverse the RID’s finding that Hitachi does not induce
infringement of the asserted claims; and (3) affirm, with modification as discussed infra, the ID’s
finding that Kyocera has satisfied the economic prong of the domestic industry requirement.
Also, for the reasons set forth below, the Commission determines that the appropriate relief is an
LEO directed to Hitachi’s infringing products and a CDO directed to Hitachi.
B. 	Overview of the Technology and the ’718 Patent
The technology in this investigation relates to cordless (i.e., portable) gas spring nailers.
Kyocera’s Initial Post-Hearing Br. at 4. 	Gas spring nailers are used to drive fasteners (e.g.,
staples, nails, etc.) into workpieces such as wood, at a much higher rate than can be done with a
simple hammer by providing an enclosed pressurized gas source that can be reused for multiple
fastener driving actuations. 	Id. (citing CX-110C (Pratt) at QQ. 12, 23).
The ’718 patent (JX-4), entitled “Method for Controlling a Fastener Driving Tool Using a
Gas Spring,” was issued by the U.S. Patent and Trademark Office on March 5, 2013. 	Kyocera
asserts independent claims 1, 10, and 16 against Hitachi in this investigation. 	Kyocera’s Initial
Post-Hearing Br. at 5, 14; see also ID at 21.
The ’718 patent is directed to portable linear fastener driving tools (or nailers) that can
drive staples, nails, or other linearly driven fasteners into a workpiece. 	JX-4 at 1:17-19.
Specifically, the disclosed invention is directed to driving tools that use a “gas spring” concept,
which utilize pressurized air to quickly and powerfully force a piston through a driving stroke
movement, while a driver also drives a fastener into a workpiece. 	Id. at 1:19-23; see also
Kyocera’s Initial Post-Hearing Br. at 5; JX-4 at Abstract. 	Prior art gas spring nailers suffer from
various issues, including too many moving parts, requiring regular replenishment of pressurized
gas during normal operation of the device, and requiring combustion of gas. 	Id. at 1:57-62; see

PUBLIC VERSION
7
also Kyocera’s Initial Post-Hearing Br. at 5.
Asserted claim 1 of the ’718 patent, representative of all asserted claims, reads:
1. 	A method for controlling a fastener driving tool, said method comprising:
(a) providing a fastener driving tool that includes: 	(i) a housing; (ii) a system controller;
(iii) a safety contact element; (iv) a user-actuated trigger; (v) a fastener; (vi) a prime
mover that moves a lifter member which moves a driver member away from an exit
end of the mechanism; and (vii) a fastener driving mechanism that moves said driving
member toward said exit end of the mechanism, said fastener driving mechanism
including:
(A) a hollow cylinder comprising a cylindrical wall with a movable piston
therewithin, said hollow cylinder containing a displacement volume created
by a stroke of said piston, and
(B) a main storage chamber that is in fluidic communication with said
displacement volume of the cylinder, wherein said main storage chamber and
said displacement volume are initially charged with a pressurized gas;
(b) selecting, by a user, an operating mode of said driving cycle to be one of: 	a “bottom
firing mode,” and a “restrictive firing mode;” wherein
(i) if said restrictive firing mode is selected, said tool will operate if said safety
contact element has been actuated before said trigger actuator has been
operated; and
(ii) if said bottom firing mode is selected, said tool will operate if both:
(A) said trigger actuator has been operated, and
(B) said safety contact element has been actuated, in either sequence;
(c) initiating a driving cycle by pressing said exit end against a workpiece and actuating
said trigger, thereby causing said fastener driving mechanism to force the driver
member to move toward said exit end and drive a fastener into said workpiece; and
(d) actuating said prime mover, thereby moving said lifter member and causing said
driver member to move away from said exit end toward a ready position.
JX-4 at 37:52-38:25 (emphasis added to portions relevant to petitioned issues).
Fig. 1 (shown below) of the ’718 patent illustrates a fastener driving tool 10 which is the
first embodiment of the invention. 	Id. at 7:27-32.

PUBLIC VERSION
8
JX-4 at FIG. 1.
The first embodiment fastener driving tool 10 is mainly designed to linearly drive
fasteners such as nails and staples. 	Id. at 7:29-30. 	The tool 10 includes a handle portion
12, a fastener driving portion 14, a fastener magazine portion 16, and a fastener exit
portion 18. 	Id. at 7:30-32. 	The driving tool 10 also includes a motor 40 which acts as a

PUBLIC VERSION
9
prime mover for the tool, and which has an output that drives a gearbox 42. 	The handle
portion 12 includes a printed circuit board 50 that contains a controller. 	Id. at 8:1-3, 10-
12. 	A trigger switch 52 is activated by a trigger actuator 54. 	As shown in FIG. 1
(above), the handle portion 12 is designed for gripping by a human hand, and the trigger
actuator 54 is designed for linear actuation by a person’s finger while gripping the handle
portion 12. 	Trigger switch 52 provides an input to the control system 50. 	Id. at 8:12-20
(emphasis added). 	There are also other input devices for the controller, however those
input devices are not seen in FIG. 1. 	Id.
Further, as shown above in FIG. 1, “[t]he area of the first embodiment [of the
fastener driving] tool 10 in which a fastener is released is indicated approximately by the
reference numeral 30, which is the ‘bottom’ of the fastener exit portion of tool 10.” 	Id.
at 7:44-47. 	Before the tool is actuated, a safety contact element 32 extends beyond the
bottom 30 of the fastener exit, and this extension of the safety contact element is depicted
at 34, which is the bottom or “front” portion of the safety contact element. 	Id. at 7:47-
51.
As shown in Fig. 2 below, the fastener driver portion 14 includes a working
cylinder 71 that has a cylinder wall 70, and within the wall 70 is a piston 80
interconnected to a driver 90. 	Id. at 8:29-33, 44-49.

PUBLIC VERSION

JX-4 at FIG. 2.

10

PUBLIC VERSION
11
Surrounding the cylinder wall is a main storage chamber 74. 	Id. at 8:37-41. 	In
operation, the piston 80 moves up and down in the chamber 74 to deliver a driving stroke,
via the driver 90, to drive a fastener into a workpiece, i.e., a solid object. 	Id. at 8:44-49,
9:57-10:3. 	Each driving, i.e., downward, stroke of the piston 80 creates a displacement
volume 76 in the chamber 74, where this displacement volume is at maximum when the
piston 80 is in its bottom-most travel position, i.e., “the driven position,” as shown in Fig.
3 below.

PUBLIC VERSION

110.
10g (tf shi) 27
120
114
106
122
102
100 © 36
104
90
10 36 © ©

90

Fig. 3

JX-4 at FIG. 3.

12

PUBLIC VERSION
13
The ’718 specification discloses various types of firing (or driving) modes for using the
tool 10 to drive fasteners into a workpiece. 	Id. at 14:43-61. 	For one driving mode, i.e., a
“trigger fire” mode, the user of the tool first presses the tool nose 34 against a work surface, and
then depresses the trigger actuator 54 (shown in Fig. 1 above), which causes the drive stroke to
occur. 	Id. 	Alternatively, for another driving mode, i.e., a “bottom fire” mode, the trigger 54 is
actuated first, and then user of the tool presses the tool nose 34 against a work surface, and it is
the work surface contact that initiates the drive stroke. 	Id.
C. 	Accused Products
Kyocera accuses Hitachi’s five gas spring nailers that it imports and sells within the
United States: 	the NT1850DE, NT1865DM, NT1865DMA, NR1890DC, and NR1890DR
nailers (collectively, the “accused products” – see FIGs. A and B below for the representative
accused product). 	Kyocera’s Initial Post-Hearing Br. at 6; see also ID at 10.

PUBLIC VERSION
FIG. A

Top cover
Handle Lock lever
Battery
Trigger
Hook
LED Light
Firing head (outlet)
Magazine
Nail feeder (B)
Push lever Nail feeder (A)
JX-19C.0013.
14

PUBLIC VERSION
15
FIG. B
CDX-1C.0054; see also JX-19C; JX-21C; JX-22C; JX-23C; JPX-6; JPX-7.
The Instruction and Safety Manual for the accused products discloses two modes of
operation for the Hitachi nailer, Full Sequential Actuation Mechanism and Contact Actuation
Mechanism, which can be user-selected via a switch. 	See JX-19C.0004, 0013, 0025-26. 	The
Full Sequential Mechanism requires a specific sequence to be followed, e.g., pressing of push
lever against wood followed by pulling the trigger, to activate the nailer for driving fasteners.
Id. 	The Contact Actuation Mechanism requires specific contact of the push lever with the wood
(or workpiece) to activate the nailer for driving fasteners. 	Id. 	The Instruction and Safety
Manual specifically discloses:
(1) Full Sequential Actuation Mechanism – first, press the push lever against
the wood; next, pull the trigger to drive the fastener. 	Follow the same
sequence to continue driving fasteners;

PUBLIC VERSION
16
(2) Contact Actuation Mechanism – first, press the push lever against the wood;
next pull the trigger to driver the fastener. 	Or, first pull the trigger; next,
press the push lever against the wood to drive the fastener. 	If the trigger is
held back, a fastener will be driven each time the push lever is pressed against
the wood.
See JX-19C.0004. 	The exit end of the mechanism, i.e., the end of the safety contact
element, is pressed against the workpiece to allow a driving cycle to begin. 	Id.; see also
CX-110C at Q. 203.
In connection with these two operating modes, the Service Manual for the
accused products provides a Connecting Diagram (shown below in Fig. C) which
illustrates the connections between multiple sensors and a main printed circuit board
(“PCB”) to carry out the two modes of operation. 	See JX-23C.0027.

PUBLIC VERSION
17
FIG. C
[[
]]
JX-23.0027.
The Service Manual also contains a parts list that includes [[
]]. 	See JX-23C.0029-31 (Item Nos. 58, 63, and 75). 	The Service
Manual further includes a photograph of the [[ 	]] (and an
accompanying connecting diagram) as shown below in FIGs. D and E. 	See JX-
23C.0021; CX-13; CDX-1C.0043.

PUBLIC VERSION
FIG. D
[[
JX-23.0021.
18

PUBLIC VERSION
19
FIG. E
[[
]]
CDX-1C.0043; see also JX-19C; JX-21C; JX-22C; JX-23C; JPX-6; JPX-7.
D. 	Domestic Industry Products
Kyocera presents four of its cordless gas spring nailers as its DI products: 	the FUSION
F-18, F-16S, F-16A, and F-15 finish nailers (collectively, the “Finishing Nailers” – see FIGs. F,
G, and H below for a representative DI product of these models from its Operating Instructions
Manual). 	Kyocera’s Initial Post-Hearing Br. at 6 (citing CX-110C at Q. 241; CX-112C (Klein)
at Q. 19); see also ID at 15.

PUBLIC VERSION

FIG. F (DI Product Fusion Cordless Finish Nailer)

Straight Tool

CX-14C.0015.

Oooo © O© 6

On/Off and Selective Actuation
Button

Depth of drive control
Waorkpiece Illumination!
Status Indicator

Workpiece contact (safety)
element

Magazine Latch
Trigger/On Switch

Belt Hook

Battery Pack

o
12)
13
14)
15
6
o
3]

Selector

Control de profundidad de pen-
etracion

llluminador de la pieza de trabajo
f

Indicador de estado

Elemento de contacto (seguro)
de la pieza de trabajo

Pestillo del la Revisto

Gatillo / Interruptor de encendido
Gancho para cinturén

Conjunto de baterias

Selecteur/

Bouton d'activation sélective
Contrdle de profondeur
d'enfoncement

Iluminateur Piece /
Indicateur k'etat

Elément de contact (dispositif de
sécurité)

Le Loquet du Changeur
Gachette / Détente

Boucle de ceinture

Bloc de batterie

20

PUBLIC VERSION
21
FIG. G (Image of DI Product Fusion Nailer Showing Multiple Claimed Elements)
CDX-2C.0047; see also CX-14C; CX-15C; CX-23C; CX-28C.

PUBLIC VERSION
22
FIG. H (Image of DI Product Fusion Nailer Showing Claimed Safety Contact Element)
CDX-2C.0044; see also CX-14C; CX-15C; CX-23C; CX-28C.
Similar to the accused products, the Operating Instructions Manual for the DI products
discloses two modes of operation, Sequential Actuation and Contact Actuation, which are
selected via a switch (now shown). 	See CX-14C.00016-17. 	The Sequential Actuation mode
requires a specific sequence to be followed, e.g., pressing the push lever against wood followed
by pulling the trigger, to activate the nailer for driving fasteners. 	Id. 	The Contact Actuation
mode requires specific contact of the push lever with the wood (or workpiece) to activate the
nailer for driving fasteners. 	Id. 	The Operating Instructions Manual specifically discloses:
In the “contact-actuation” mode, nails can be driven in two ways:
(1) The first way:
(a) Press the TTT side of the selector switch. 	This will be indicated by the
flashing green LED on the selector switch.
(b) Press the workpiece contact (safety) element against the work surface.
(c) Pull the trigger and the fastener is driven.
(2) The second way:
(a) Press TTT side of the selector switch for 0.5 seconds. 	This will be
indicated by the flashing green LED on the selector switch.
(b) Pull trigger.
(c) Depress workpiece contact element against work surface and drive a
fastener.

PUBLIC VERSION
23
In the “sequential-activation” mode, nails can only be driven one way:
(1) Press the T side of the selector switch. 	This will be indicated by the solid
green LED on the selector switch.
(2) Position workpiece contact (safety) element against work surface and depress
the safety.
(3) Pull trigger to turn on the motor and drive a fastener.
Id. 	The exit end of the mechanism, i.e., the end of the safety contact element, is pressed
against the workpiece to allow a driving cycle to begin. 	Id.; see also CX-110C at Q.
391.
In connection with these two operating modes, Kyocera provides a Tool Function
Flow Chart (shown below as FIGs. I, J) that discloses the operation of the two modes as
followed by the logic of the Kyocera nailer. 	See CX-21C.

PUBLIC VERSION
24
FIG. I (Part I of Tool Function Flow Chart for DI Product Fusion Nailer)
[[
]]
CX-21C; see also CX-14C.

PUBLIC VERSION
25
FIG. J (Part II of Tool Function Flow Chart for DI Product Fusion Nailer)
[[
]]
CX-21C; see also CX-14C.

PUBLIC VERSION
26
Photographs of the PCB interconnected to multiple sensors for performing the two modes
of operation is shown below in FIGs. J and K. 	See CDX-2C.0038, 0045.
FIG. J (Image of DI Product Fusion Nailer Showing Claimed System Controller)
CDX-2C.0038; see also CX-14C; CX-15C; CX-23C; CX-28C.

PUBLIC VERSION
27
FIG. K (Image of DI Product Fusion Nailer Showing Claimed Trigger Element)
CDX-2C.0045; see also CX-14C; CX-15C; CX-23C; CX-28C.
In connection with the economic prong of the domestic industry requirement,
Kyocera has also alleged that its forthcoming [[
]], also practice the asserted claims. 	See CX-110C (Pratt) at QQ. 18, 232,
253-60. 	According to Dr. Pratt, Kyocera’s technical expert, the “[[
]].” 	Id. at Q. 254.10
10 A finishing nailer is typically used “in a finishing process for areas around doors, windows,
and edgings and to secure the bottom of drawers, cases, and cabinets.” 	See RX-266C (Vallee)
at Q. 46 (discussing typical uses of the accused finishing nailers). 	A framing nailer, which
dispenses relatively larger fasteners, is typically used for heavy-duty projects, such as “floor and
wall framing, housing and building construction, truss build-up, window build-up, wall
sheathing, subflooring, and roof decking.” 	Id. (discussing typical uses of the accused framing
nailers); CX-112C (Klein) at Q.36 (“. . . The main difference between the finishing and framing
nailers is one of scale. 	Essentially, framing nailers, since they drive larger sized fasteners, need
to be bigger and stronger to handle the increased forces and these features need to be designed
and tested. 	However, the actual concept of how the framing nailers work in comparison to the
finishing nailers remains essentially the same.”).

PUBLIC VERSION
28
II. 	DISCUSSION AND FINDINGS
For the reasons set forth below, the Commission has determined to modify in part and
reverse in part certain portions of the ID’s and RID’s analysis. 	Specifically, the Commission
modifies the ID’s and RID’s analyses concerning whether the accused products and the DI
products practice the “system controller,” “displacement volume,” and “initiating a driving
cycle” limitations and, under this modified analysis, reverses the ID’s and RID’s findings of non-
infringement and non-satisfaction of the technical prong of the domestic industry requirement.
The Commission also supplements the ID’s analysis of the economic prong of the domestic
industry requirement and, under this supplemented analysis, finds that Kyocera has satisfied this
requirement. 	The Commission adopts and affirms the portions of the ID and RID that are not
inconsistent with this opinion.
A. 	Applicable Legal Standards
1. 	Claim Construction
Claim construction “begin[s] with and remain[s] centered on the language of the claims
themselves.” 	Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 830 (Fed. Cir. 2003);
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). 	The language used in a
claim bears a “heavy presumption” that it has the ordinary and customary meaning that would be
attributed to the words used by persons skilled in the relevant art. 	CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); Phillips, 415 F.3d at 1312-13.
Moreover, the language is read in the context of the entire patent, including the specification.
Phillips, 415 F.3d at 1313-14; see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996) (“[T]he specification is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”).

PUBLIC VERSION
29
To help inform the court of the ordinary meaning of the words, a court may consult the intrinsic
evidence, including the claims themselves, the specification, and the prosecution history, as well
as extrinsic evidence, such as dictionaries and treatises and inventor and expert testimony.
Phillips, 415 F.3d at 1314.
2. 	Infringement
a. 	Direct Infringement
After properly construing the claims, a factual inquiry is conducted to compare the claims
with the accused device or process to determine infringement. 	See MBO Labs., Inc v. Becton
Dickinson & Co., 474 F.3d 1323, 1329 (Fed. Cir. 2007). 	The patentee bears the burden of
demonstrating infringement by a preponderance of the evidence. 	Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2005). 	The “preponderance of
the evidence” standard “simply requires proving that infringement was more likely than not to
have occurred.” 	Warner-Lambert Co. v. Teva Pharmaceuticals USA, Inc., 418 F.3d 1326, 1341
n.15 (Fed. Cir. 2005); see also LNP Eng’g Plastics, Inc. v. Miller Waste Mills, Inc., 275 F.3d
1347, 1357 (Fed. Cir. 2001) (upholding grant of judgment as a matter of law where “the record
before the jury contained no evidence to rebut the substantial evidence of infringement”
presented by the plaintiff). 	To prove literal infringement, the patentee must show that an
accused product contains every limitation in the asserted claims. 	WMS Gaming Inc. v. Int’l
Game Tech., 184 F.3d 1339, 1350 (Fed. Cir. 1999).
b. 	Induced Infringement
Section 271(b) of the Patent Act provides: 	“Whoever actively induces infringement of a
patent shall be liable as an infringer.” 	35 U.S.C. § 271(b). 	To establish liability, the patent
holder must prove that “once the defendants knew of the patent, they ‘actively and knowingly

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aid[ed] and abet[ted] another’s direct infringement.’” 	DSU Med. Corp. v. JMS Co., Ltd., 471
F.3d 1293, 1305 (Fed. Cir. 2006) (en banc). 	A finding of induced infringement requires
“evidence of culpable conduct, directed to encouraging another’s infringement, not merely that
the inducer had knowledge of the direct infringer’s activities.” 	Id. at 1306. 	The burden is on
the complainant to prove that the respondent had the specific intent and took action to induce
infringement, and intent may be proven by circumstantial evidence. 	Id. at 1305-06; Lucent
Tech., Inc. v. Gateway, Inc., 580 F.3d 1301, 1322 (Fed. Cir. 2009).
3. 	Technical Prong of the Domestic Industry Requirement
The technical prong of the domestic industry requirement is satisfied when the
complainant in a patent-based section 337 investigation establishes that it is practicing or
exploiting the patent at issue. 	See 19 U.S.C. 1337(a)(2), (3); Certain Microsphere Adhesives,
Process for Making Same and Products Containing Same, Including Self-Stick Repositionable
Notes, Inv. No. 337-TA-366, Comm’n Op. at 8, 1996 WL 1056095 (U.S.I.T.C. Jan. 16, 1996)
(“Microsphere Adhesives”). 	“The test for satisfying the ‘technical prong’ of the industry
requirement is essentially [the] same as that for infringement, i.e., a comparison of domestic
products to the asserted claims.” 	Alloc, Inc. v. ITC, 342 F.3d 1361, 1375 (Fed. Cir. 2003); see
also Certain Polymide Films, Products Containing Same, and Related Methods, Inv. No. 337-
TA-772, 2012 WL 13171648, Comm’n Op. at *10 (Nov. 21, 2012) (citing Alloc, 342 F.3d at
1375). 	It is sufficient to show that the domestic products practice any claim of that patent, not
necessarily an asserted claim of that patent. 	Microsphere Adhesives, Comm’n Op. at 7-16.
4. 	Economic Prong of the Domestic Industry Requirement
Section 337(a)(3) sets forth the following economic criteria for determining the existence
of a domestic industry in this investigation:

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(3) For purposes of paragraph (2), an industry in the United States
shall be considered to exist if there is in the United States, with respect
to the articles protected by the patent, copyright, trademark, mask
work, or design concerned –
(A) significant investment in plant and equipment;
(B) significant employment of labor or capital; or
(C) substantial investment in its exploitation, including
engineering, research and development, or licensing.
19 U.S.C. § 1337(a).
Satisfaction of any one of these sub-paragraphs is sufficient to meet the economic prong
of the domestic industry requirement. 	Certain Integrated Circuit Chipsets and Prods.
Containing Same, Inv. No. 337-TA-428, Order No. 10, Initial Determination at 3 (unreviewed)
(May 4, 2000) (citing Certain Variable Speed Wind Turbines and Components Thereof, Inv. No.
337-TA-376, Comm’n Opinion at 15, USITC Pub. 3003 (Nov. 1996)). 	Also, Commission
precedent recognizes that “‘the magnitude of the investment cannot be assessed without
consideration of the nature and importance of the complainant’s activities to the patented
products in the context of the marketplace or industry in question.’” 	Certain Carburetors and
Products Containing Such Carburetors, Inv. No. 337-TA-1123, Comm’n Op. at 18 (Oct. 28,
2019) (quoting Certain Printing & Imaging Devices & Components Thereof, Inv. No. 337-TA-
690, Comm’n Op. at 31 (Feb. 17, 2011)) (“Carburetors”).
B. 	Infringement Regarding “System Controller”
1. 	The Final ID
The Markman Order adopted the parties’ proposed construction for the “system
controller” term to mean “a circuit configured to control operation based on received input

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signals.” 	ID at 22 (citing Markman Order at 17).11 	Based on this construction, the ID finds
that the accused products do not meet the “system controller” limitation of the asserted claims.
Id. at 26-29. 	Kyocera relied primarily on the testimony of its expert, Dr. Pratt, to prove that this
limitation is met. 	Id. at 26 (citing Kyocera’s Initial Post-Hearing Br. at 17-18; Kyocera’s Post-
Hearing Reply Br. at 5-6). 	The ID, however, finds that Dr. Pratt’s testimony relies on an
infringement analysis related to other asserted patents and does not sufficiently explain how the
sensors of the accused products provide inputs to the system controller. 	Id. at 26-27 (citing CX-
110C at QQ. 115-118, 152, 160, 191). 	The ID further notes that Dr. Pratt cites two
demonstrative exhibits (i.e., CDX-1C.0042-0043) as proof that the “system controller” limitation
is present in the accused products, but finds that these demonstratives “show a spaghetti mess of
wires” and therefore do not support the presence of this limitation. 	Id. at 27. 	Moreover, the ID
finds that Dr. Pratt does not identify any sensors on these demonstratives. 	Id.
The ID further notes that Dr. Pratt cited a Connecting Diagram from the Service Manual
of a representative member of the accused products (i.e., JX-23.0027). 	Id. at 28. 	The ID finds,
however, that there is a significant distinction between a “connecting diagram” and a “circuit
diagram” that could be relied on to show that the accused products satisfy the relevant
construction of the “system controller” limitation, i.e., “a circuit configured to control operation
based on received input signals.” 	Id. 	Specifically, the ID finds the following testimony from
11 The ALJ previously determined that one of ordinary skill in the art with respect to the asserted
’718 patent would have at least: 	(i) a Master’s Degree in mechanical engineering with at least
two years experience in power nailer design; (ii) a Bachelor’s Degree in mechanical engineering
with at least five years experience in powered nailer design; or (iii) ten or more years of
experience in powered nailer design. 	ID at 5 (citing Order No. 9 at 5-6 (May 3, 2018))
(emphasis added to provisions relevant to the ALJ’s finding that Kyocera’s technical expert, Dr.
Pratt, is not one of ordinary skill in the art).

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Hitachi’s expert, Dr. Vallee, significant in explaining the distinction:
This distinction is important because a connecting diagram illustrates how
to connect various components together. 	It does not show the details of
the circuitry, all of the components of the circuit, or the operation or
identification of information transmitted and received by any of the
various components . . . At most, the connecting diagram shows that there
are sensors connected to a [printed circuit board], but this does not mean
that the sensors are connected to a controller or provide any information to
a controller.”
Id. (citing RX-266C at QQ. 190, 204) (emphasis supplied by Hitachi).
The ID also finds that Dr. Pratt does not identify a “programmed computer,” as required
by the construction of the “predetermined conditions” terms of claim 11 of the ’296 patent. 	Id.
Before the ALJ, Kyocera also relied on Dr. Pratt’s testimony regarding these terms, i.e., by
equating them to the “system controller” limitation, to demonstrate infringement of the ’718
patent.12 	Further, the ID finds that even if Dr. Pratt had identified a “programmed computer,”
12 The Markman Order adopted the parties’ agreed-upon construction for “first predetermined
conditions” to mean “two or more conditions determined by a programmed computer,” and
“second predetermined conditions” to mean “two or more conditions determined by a
programmed computer and that are different than the first predetermined conditions.” 	Markman
Order at 17.
Claim 11 of the ’296 patent reads:
11. A fastener driving tool, comprising:
(a) a guide body that has a receiving end, an exit end, and a passageway
therebetween, said guide body being configured to receive a fastener that is to be
driven from said exit end;
(b) a driver actuation device having a movable member that creates a displacement
volume;
(c) an elongated driver member that that is in mechanical communication with said
movable member of the driver actuation device at a first end of said driver
member:

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(i) said driver member having a second, opposite end that is sized and
shaped to push a fastener from said exit end of the guide body,
wherein said passageway of the guide body allows said driver member
to pass therethrough toward said exit end during a driving stroke of an
operating cycle and toward said receiving end during a return stroke of
said operating cycle, said driver member, when at a driven position,
protruding toward said exit end of the guide body, and said driver
member, when at a ready position, being withdrawn into said guide
body, and
(ii) said driver member having at least one longitudinal edge with at least
one plurality of spaced-apart protrusions;
(d) a lifter member that exhibits a contact surface that, at predetermined locations
along said contact surface, makes contact with said at least one plurality of
spaced-apart protrusions of said driver member such that, if said lifter member is
moved in a first direction, it causes said driver member to be moved from said
driven position toward said ready position;
(e) 	a main storage chamber that, during said operating cycle, is always in fluidic
communication with said displacement volume of the driver actuation device,
wherein said main storage chamber and said displacement volume are both
charged with pressurized gas;
(f) a housing that substantially contain said driver actuation device, said elongated
driver member, said lifter member, and said main storage chamber; and
(g) a fastener magazine for holding a plurality of fasteners, and for serially supplying
said plurality of fasteners through an opening of the guide body to a position that
is coincident with a path of said driver member during said driving stroke;
wherein:
(h) said lifter member, under first predetermined conditions, forces said driver
member to undergo said return stroke and move toward said ready position, and
then holds said driver member at said ready position by use of a holding contact
between said lifter member and said driver member;
(i) said lifter member, under second predetermined conditions, moves in said first
direction until it releases said driver member from said holding contact; and said
driver actuation device, under said second predetermined conditions, forces said
driver member to undergo said driving stroke and move toward said driven
position; and

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this mere identification of a programmed computer (or a system controller in the case of the ’718
patent) would not tell a POSA anything about the operation of the computer, without a source
code analysis. 	Id. (citing RX-266C at Q. 201). 	Accordingly, the ID finds that, to determine
whether the system controller identified in the accused products is actually “configured to
control operation based on received input signals,” a POSA would need to understand the logical
operations carried out by the accused controller, which necessarily requires an analysis of the
source code, which Dr. Pratt did not perform. 	Id. (citing RX-266C at Q. 206).
Based on the foregoing, the ID finds that Kyocera did not show by a preponderance of
the evidence that the accused products meet the “system controller” limitation. 	Id. at 29.
Accordingly, the ID finds that the accused products do not directly infringe claims 1, 10, or 16 of
the ’718 patent.13 	Id.
2. 	The Parties’ Arguments
Kyocera submits that the parties’ agreed upon construction of “system controller”
(adopted by the Markman Order and the ID) does not require a source code analysis as the
Markman Order construes this limitation to mean simply “a circuit configured to control
operation based on received input signals.” 	Kyocera’s Pet. at 21 (emphasis in original).
Rather, Kyocera submits, as construed, the claims of the ’718 patent require only a “system
controller” without any additional functional or structural limitations associated with this term.
Id. (citing ID at 22; Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 834 (Fed. Cir. 2003)
(j) said pressurized gas is not exhausted to atmosphere after a driving stroke, but
instead it is re-used for a plurality of said operating cycles.
JX-1 (the ’296 patent) at 42:23-43:15 (emphasis added to portions relevant to petitioned issues).
13 Because the ID finds no direct infringement, it finds that Hitachi has not indirectly infringed
the asserted claims of the ’718 patent. 	Id.

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(vacating grant of summary judgment because the district court misapplied its own claim
construction)).
Kyocera submits that, contrary to the ID’s determination, its expert, Dr. Pratt, provided
sufficient explanation as to how the sensors of the accused products provide inputs to the system
controller to meet this limitation. 	Id. at 26. 	Specifically, Kyocera submits that Dr. Pratt
explained how the various sensors of the accused products worked with the system controller to
control operation of these products with respect to the first of the “predetermined conditions”
limitations of claim 11 of the’296 patent with reference to FIG. C (shown supra). 	Id. (citing
CDX-1C.0029 (reproducing and annotating JX-23C.0029)). 	Kyocera submits that, with respect
to this diagram and the sensors identified on it, Dr. Pratt explained the operation of the “system
controller” of the accused products and thus: 	(1) identified multiple sensors connected to the
system controller and (2) provided an explanation as how these sensors provided inputs to the
system controller – the very evidence that the ID believed was missing. 	Id. at 28 (citing ID at
27).
Kyocera further submits that, contrary to the ID’s determination, Dr. Pratt testified that he
arrived at his conclusions (referring to the “predetermined conditions” limitations) by testing and
inspecting the accused products and reviewing documentation, including the Instruction and
Safety Manual (JX-19C) for the accused products. 	Id. at 28 (citing CX-110C at Q. 112).
Kyocera also submits that Dr. Pratt provided similar testimony on how the “system controller” of
the accused products is “configured to control operation based on received input signals” with
respect to the second of the “predetermined conditions” claim limitation of the ’296 patent by
referencing the same annotated circuit chart shown above in FIG. C (shown supra). 	Id. at 29-30
(citing CDX-1C.0029; CX-110C at QQ. 115-18).

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Based on the foregoing, Kyocera submits that it has shown by a preponderance of the
evidence that the accused products meet the “system controller” limitation. 	Id. at 30. 	In
addition, Kyocera submits that, when contrasted to the minimal non-infringement testimony
provided by Hitachi’s expert, Dr. Vallee, Kyocera has established by a preponderance of the
evidence that infringement of the asserted claims of the ’718 patent has more likely than not
occurred. 	Id. at 26 (citing RX-266C at QQ. 300-01; Warner-Lambert, 418 F.3d at 1341 n.15;
LNP Eng’g Plastics, 275 F.3d at 1357).
Hitachi submits that the ID correctly finds that: 	(1) source code analysis is necessary to
determine whether the accused products meet the “system controller” limitation of the ’718
patent and (2) the ID did not ignore the testimony of Kyocera’s expert (Dr. Pratt) in finding that
this limitation is not met. 	Hitachi’s Resp. at 2-15. 	Hitachi submits that because Dr. Pratt, in his
infringement testimony, analogized the “system controller” limitation of the ’718 patent to the
“predetermined conditions” limitations of the ’296 patent, which the parties agree are construed
to require conditions determined by a “programmed computer,” Kyocera admits that the claims
require the “system controller” to run on software, which the ID correctly determines
necessitates an analysis of the source code. 	Id. at 5-8 (citing CX-110C at Q. 110, 160, 191).
Accordingly, Hitachi submits that its own expert, Dr. Vallee, persuasively testified that, given
that Kyocera requires a “programmed computer” to satisfy the “system controller” limitation,
source code analysis is necessary to determine whether this limitation is met by the accused
products. 	Id. at 7 (citing RX-266C at 186, 206). 	Hitachi submits that because Dr. Vallee
explained that Dr. Pratt had not conducted such a necessary analysis of the source code for the
accused products to confirm how various operations take place within the Hitachi nailer, the ID
correctly finds non-infringement under Kyocera’s theory of infringement, since a POSA would

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not understand the logical operations carried by the “system controller” without such required
source code analysis. 	Id.
Hitachi further submits that, regardless of whether a source code analysis is required, the
evidence relied on by Kyocera, e.g., the Connecting Diagram and Dr. Pratt’s testimony, does not
demonstrate that the accused products meet the “system controller” limitation by a
preponderance of the evidence. 	Id. 	Hitachi submits that the ID correctly determines that Dr.
Pratt’s infringement testimony is conclusory as it: 	(1) relies on a connecting diagram, rather
than a circuit diagram that details the circuitry and operation or identification of information
transmitted and received by interconnected components; and (2) does not provide any detailed
analysis of the sensors allegedly interconnected to a “system controller.” 	Id. at 11.
3. 	Analysis
The Commission finds that the ID errs by requiring an analysis of source code to
determine whether the accused products satisfy the “system controller” limitation of the ’718
patent. 	The evidence presented by Kyocera shows that the accused products meet the “system
controller” limitation recited in the asserted claims, as construed. 	See ID at 22 (citing Markman
Order at 17) (adopting the parties’ proposed construction). 	In particular, we rely on the
following evidence:
• 	Hitachi Instruction and Safety Manual, JX-19C
• 	Hitachi Service Manual and Parts List, JX-17C, JX-23C
• 	Physical Hitachi Accused Product and Photographs, JPX-6, JPX-7, CX-13
• 	Kyocera’s Expert Testimony of Dr. Pratt as a supplement, CX-110C at QQ. 110-19, 152,
160, 191 (citing to CDX-1).
The Commission finds that the “system controller” limitation refers to a structural,

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standard electrical component that is “a circuit configured to control operation based on received
input signals,” and the asserted claims of the ’718 patent do not require any additional structure
or functionality with respect to the “system controller.” 	We find that the above-recited record
evidence, supplemented by the testimony of Dr. Pratt, including circumstantial evidence, in the
form of Dr. Pratt’s trial-and-error testing of the accused products and his review of Hitachi’s
documents, provide sufficient evidence to determine that the accused products meet the “system
controller” limitation.
Primarily, Dr. Pratt provides evidence of infringement of these claims in reference to the
“predetermined conditions” limitations of claim 11 of the ’296 patent, which is analogous in
scope to the “system controller” limitation of the asserted claims of the ’718 patent.14 	See CX-
110C at Q. 191. 	Dr. Pratt provided several examples of how the system controller of the ’718
patent is “configured to control operation based on received input signals,” as the controller
determines whether certain predetermined conditions are met, in response to sensor inputs, in
operating the accused tool. 	See, e.g., JX-23C.0027 (FIG. C above); CX-110C at Q. 110 (“[[
]]”)). 	With respect to the
Connecting Diagram shown in the Hitachi Service Manual (JX-23C.0027) and the sensors
14 It is undisputed that the asserted patents in the investigation are part of the same family and
have largely identical specifications. 	See Markman Order at 18 n.4; see also NTP, Inc. v.
Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (“Because [the asserted] patents
all derive from the same parent application and share many common terms, we must interpret the
claims consistently across all asserted patents.”); Nystrom v. TREX Co., Inc., 424 F.3d 1136,
1143 (Fed. Cir. 2005) (“Different terms or phrases in separate claims may be construed to cover
the same subject matter where the written description and prosecution history indicate that such a
reading of the terms or phrases is proper.”). 	Accordingly, the Markman Order consistently
applies the same meaning to common claim terms found across several of the asserted patents.
Id. at 16-18, 21 (holding that the term “ready position” has the same meaning across all asserted
patents).

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identified on it, Dr. Pratt: 	(1) identified multiple sensors connected to the system controller and
(2) provided an explanation as to how these sensors provided inputs to the system controller –
the very evidence that the ID believed was missing. 	See ID at 27. 	Specifically, with respect to
this diagram and the sensors identified on it, Dr. Pratt explained the operation of the “system
controller” of the accused products as follows:
[[
]].
Id. at 27-28 (citing CX-110C at Q. 110) (emphasis added). 	Contrary to the ID’s determination,
Dr. Pratt testified that he arrived at his conclusions (referring to the “predetermined conditions”
limitations) by testing and inspecting the accused products and reviewing documentation,
including the Instruction and Safety Manual (JX-19C) for the accused products, as follows:
Yes, the Instruction and Safety Manual for the Accused Products, JX-
0019C, confirmed the results of my analysis. 	[[
]]. 	For example, JX-0019C describes the sequential mode at page
4, explaining that the safety contact element must first be depressed and
then the trigger pulled in that order, otherwise the controller will not
initiate the lifting movement. 	[[

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]].
CX-110C at Q. 112 (emphasis added).
Dr. Pratt provided further testimony on how the “system controller” of the accused
products is “configured to control operation based on received input signals” by referencing the
same annotated circuit chart shown supra in Fig. C. 	CX-110C at QQ. 115-19 (citing CDX-
1C.0029). 	Dr. Pratt stated:
[[

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]]
* 	* 	*
Yes, I did. 	I essentially utilized the same testing. 	I tried different
scenarios and different conditions to determine which conditions must be
met before the controller energizes the motor to begin the driving stroke.
Also, as previously mentioned, the Instruction and Safety Manual for the
Accused Products, JX-0019C, confirmed the results of my testing.
* 	* 	*
[[

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]].
CX-110C at QQ. 115-18 (emphasis added); see also CX-110C at Q. 119. 	Based on the Hitachi
documents, as explained in Dr. Pratt’s testimony, the Commission finds that Kyocera has shown
it is more likely than not that the accused products satisfy the “system controller” limitation.
The ID errs by requiring an analysis of source code in order to determine whether the
accused products satisfy the “system controller” limitation of the asserted claims of the ’718
patent. 	Consistent with the parties’ agreed upon construction, the accused system controller
merely has to be “configured to control operation based on received input signals,” which has
been shown without an analysis of source code. 	See, e.g., Warner-Lambert, 418 F.3d at 1341
n.15 (The “preponderance of the evidence” standard “simply requires proving that infringement
was more likely than not to have occurred.”); LNP Eng’g Plastics, 275 F.3d at 1357; see also
Garmin v. ITC, 697 Fed.Appx. 1007, 1014-16 (Fed. Cir. 2017) (finding that the prior art
disclosed a key element where, among other things, logic and the absence “of any alternative
explanation” supported the conclusion).
As shown above in the figures of the manuals for the accused products as well as the
parts list and the physical exhibits and consistent with the Federal Circuit case law, the main
PCB (or controller) of the accused products receives input signals from the multiple sensors that

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are interconnected. 	See JX-19C; JX-23C. 	That evidence supplemented by Dr. Pratt’s
testimony and the modes of operation described in the Instruction and Safety Manual
demonstrates that the PCB uses these received input signals from the connected sensors to
control the multiple modes of operation (i.e., Sequential and Contact Actuation) of the accused
products. 	See JX-19C; CX-13; CDX-1C.0029-30. 	Dr. Pratt, with reference to the manuals,
drawings, and physical structure of the accused nailers, provides sufficient supplemental detail of
the operation, as a POSA would understand, of the [[ 	]] interconnected sensors (i.e., [[
]]) to the PCB. 	See CDX-1C.0029-30; CX-13. 	Dr. Pratt, via
this documentary record evidence, also sufficiently described how the accused nailers detect the
sequence of the push lever and trigger actuation or contact of the push lever to the workpiece,
together with detection of whether the driver member is in the “hold” or “ready” positions, in
order to operate in either the Sequential or Contact Actuation mode of operation. 	See CX-110C
at QQ. 112-19; CX-13; CDX-1C.0029-30; JX-19C. 	Accordingly, the Commission finds that Dr.
Pratt has shown by a preponderance of the evidence how these sensors provide inputs to the
system controller of the accused products.
Based on the foregoing, the Commission determines that the accused products meet the
“system controller” limitation and reverses the ID’s finding to the contrary.
C. 	Infringement Regarding “Displacement Volume”
1. 	The RID
The RID finds, according to the record evidence, that the accused products include a
hollow cylinder, with a cylindrical wall and a piston that moves within the cylinder. 	RID at 13-
14 (citing CX-110C at QQ. 123, 199; CDX-1C.0032; Tr. (Pratt) at 136:19-137:4, 138:6-15; Tr.
(Vallee) at 180:21-24). 	The RID finds that, although a visual inspection is sufficient to

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determine satisfaction of the “hollow cylinder” portion of this limitation, it is insufficient proof
that the stroke of the accused piston creates a displacement volume. 	Id. at 14. 	The RID finds
that Kyocera does not provide any explanation or discussion in its post-hearing briefing
regarding the displacement volume. 	Id. (citing Kyocera’s Initial Post-Hearing Br. at 21;
Kyocera’s Reply Post-Hearing Br. at 8-9). 	The RID also finds that Kyocera’s expert for the
’718 patent, Dr. Pratt, did not testify regarding the displacement volume. 	Id. (citing CX-110C at
Q. 199). 	Dr. Pratt testified as follows:
Q. 	What is your opinion regarding whether the Accused Products
include a “hollow cylinder comprising a cylindrical wall with a
movable piston therewithin, said hollow cylinder containing a
displacement volume created by a stroke of said piston,” as in
claim 1 of the ’718 Patent?
A. 	The Accused Products meet this limitation, as I explained
previously with respect to the similar “hollow cylinder” limitation
found in claim 1 of the ’297 Patent and as shown, from example,
on page 32 of CDX-0001C.
CX-110C at Q. 199. 	The RID further finds that Dr. Pratt’s testimony regarding the ’297 patent
is similarly devoid of any mention of the displacement volume. 	RID at 14 (citing CX-110C at
Q. 123). 	Dr. Pratt testified as follows:
Q. 	What is your opinion regarding whether the Accused Products
meet the claim limitation “a hollow cylinder comprising a
cylindrical wall and having a movable piston therewithin, said
hollow cylinder having a first end and a second, opposite end, said
hollow cylinder containing a displacement volume created by a
stroke of said piston,” as in claim 1 of the ’297 Patent?
A. 	The Accused Products meet this limitation. 	Referring to page 32
of CDX-0001C, I created labeled images of the NT1850DE Nailer
showing how the Accused Products include each limitation of this
claim element.
CX-110C at Q. 123.
The RID notes that, although Kyocera’s expert discusses a displacement volume in Q. 65,

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46
the discussion is in the context of only the ’296 patent and is for an entirely different limitation.
Id. at 14-15 (citing CX-110C at Q. 65 (testifying regarding “a driver actuation device,” not a
“hollow cylinder”)) (emphasis in RID). 	The RID further notes that Kyocera cites to some
additional exhibits (e.g., CX-13 and RX-218C), but finds that there is no testimony from its
expert or any other witness regarding these documents and how they prove that the
“displacement volume” limitation is met. 	Id. at 15. 	Based on the foregoing, the RID finds that
Kyocera has not presented sufficient evidence to show that the stroke of the accused piston
creates a displacement volume, and therefore has failed to prove by a preponderance of the
evidence that the accused products satisfy this limitation. 	Id.
2. 	The Parties’ Arguments
Kyocera submits that several of the undisputed limitations require the same
“displacement volume” that complainant submits the RID mistakenly believes is absent in the
accused products, e.g., “a main storage chamber that is in fluidic communication with said
displacement volume of the cylinder” and “wherein said main storage chamber and said
displacement volume are initially charged with a pressurized gas.” 	Kyocera’s Pet. (RID) at 12
(emphasis added by Kyocera). 	Kyocera submits that the RID recognizes these concessions in
determining that these claim limitations are met by the accused products – i.e., the accused
products include a displacement volume charged with a pressurized gas. 	Id. (citing RID at 15
(“Respondent does not dispute that the limitation is met”; “Thus, the undersigned finds that the
Accused Products meet this limitation.”)). 	Thus, Kyocera submits, given that both Hitachi and
the RID agree that the “displacement volume charged with a pressurized gas” limitation is met,
the RID errs in finding that complainant fails to prove the presence of the “displacement
volume” in the accused products. 	Id.

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Hitachi submits that Kyocera’s expert testimony is brief and conclusory, and that neither
Kyocera nor its expert ever explains why the alleged “displacement volume” in the alleged
“drive actuation device” of the ’296 patent is relevant to (let alone the same as) the alleged
“displacement volume” in the alleged hollow cylinder of the ’718 patent. 	Hitachi’s Resp. (RID)
at 4-5, 7 (citing Kyocera’s Initial Post-Hearing Br. at 21). 	Hitachi thus submits that Kyocera’s
reliance on the proposition that the same claim terms in related patents carry the same meaning is
misplaced. 	Id. at 7 (citing Innova/Pure Water, Inc. v. Safari Water Filtration System, Inc., 381
F.3d 1111, 1120 (Fed. Cir. 2004) (“[W]hen an applicant uses different terms in a claim it is
permissible to infer that he intended his choice of different terms to reflect a differentiation in
meaning of those terms.”)).
3. 	Analysis
The Commission finds that the “displacement volume” limitation in the claim phrase
“said hollow cylinder containing a displacement volume created by a stroke of said piston” reads
on the accused products. 	At the outset, the Commission notes that the RID found that two
limitations that contain the words “displacement volume”—i.e., the “a main storage chamber that
is in fluidic communication with said displacement volume of the cylinder” and “wherein said
main storage chamber and said displacement volume are initially charged with a pressurized gas”
limitations—read on the accused products. 	See RID at 15. 	The evidence that supports finding
that these limitations are met also supports finding that the accused products include a
“displacement volume.”
The “preponderance of the evidence” standard “simply requires proving that infringement
was more likely than not to have occurred.” 	Warner-Lambert, 418 F.3d at 1341 n.15. 	The
record evidence includes the testimony of Kyocera’s expert, Dr. Pratt, explaining the claimed

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displacement volume in the accused products as follows:
• 	“The displacement volume is the product of the piston’s stroke and the
cross-section area of the hollow cylinder’s bore. 	For example, a stroke of
2 3/4 inches and a bore diameter of 1 3/16 inches results in a displacement
volume of approximately 3.1 cubic inches.” 	CX-110C (Dr. Pratt) at Q.
65.
• 	“The piston moves up and down within the cylinder, which respectively
increases and decreases the pressure of the gas housed within the main
storage chamber and cylinder.” 	Id. at Q. 26.
Dr. Pratt’s testimony is consistent with the ’718 specification, which expressly discloses that a
“displacement volume” is “created by the stroke of the piston 80.” 	See JX-4 at 9:63-65.
Kyocera has presented evidence of upward and downward strokes of the piston in the accused
products, which the patent explains “creates” the displacement volume, i.e., the empty space
through which the piston moves. 	Hitachi’s expert, Dr. Vallee, agreed that such piston
movement creates a displacement volume. 	RX-1 at Q. 50 (“a drive piston which serves as a
movable wall to adjust the volume of the chamber”); see also Tr. at 180:23-24 (Dr. Vallee) (“the
accused products have a piston that moves within inside the cylinder, that is correct.”).
The Commission finds it to be inconsistent that the RID finds that the immediately
preceding limitation, “a hollow cylinder comprising a cylindrical wall with a movable piston
therewith,” is met by the accused products, but not “a displacement volume created by a stroke
of said piston” when the record evidence was sufficient to prove that a “movable piston” within a
“hollow cylinder” necessarily creates a “displacement volume” upon such movement within such
a cylinder. 	See RID at 13-14 (citing CX-110C at QQ. 123, 199; CDX-1C.0032; Tr. (Pratt) at
136:19-137:4, 138:6-15; Tr. (Vallee) at 180:21-24)).
Based on the foregoing, the Commission determines that the accused products meet the
“displacement volume” limitation and reverses the RID’s finding to the contrary.

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D. 	Infringement Regarding “Initiating a Driving Cycle”
1. 	The RID
The Markman Order did not find that construction of the “initiating a driving cycle”
limitation was in dispute by the parties. 	See Markman Order at 18-48. 	Accordingly, the ALJ
construed the term in accordance with its plain and ordinary meaning. 	Id. at 1-2; see also
Phillips, 415 F.3d at 1312-13. 	However, the RID finds that the accused products do not meet
this limitation recited in asserted claims 1, 10, and 16 of the ’718 patent, as properly construed.15
RID at 20-22.
The asserted claims recite “a prime mover that moves a lifter member which moves a
driver member away from an exit end of the mechanism” and “initiating a driving cycle by
pressing said exit end against a workpiece.” 	JX-4 at claim 1. 	The RID finds that Hitachi’s
Instruction and Safety Manual for its accused products explains that to drive the fastener, a user
must “press the push level against the wood” and “pull the trigger.” 	Id. at 21 (citing JX-
19C.0004). 	The RID finds, however, that the intrinsic evidence indicates that the “exit end” of
the fastener driving mechanism and the end of the “safety contact element” are separate
components. 	Id.
The RID also finds that, in a conclusory manner, Kyocera’s expert, Dr. Pratt, equates the
push lever in the accused products with both the exit end of the fastener driving mechanism and
the end of the safety contact element. 	Id. (citing CX-110C at Q. 203; JX-19C.0004). 	The RID,
however, finds that neither Kyocera nor its expert provide any evidentiary support for this
position. 	Id.
15 The RID notes that Dr. Vallee’s (Hitachi’s expert) testimony regarding this limitation was
stricken by Order No. 18 (Oct. 23, 2018), but still finds Hitachi’s non-infringement argument
relevant because it does not rely on this stricken testimony. 	ID at 20 n.9.

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The RID notes that the term “mechanism” was previously construed to mean “fastener
driving mechanism.” 	RID at 21 (citing Markman Order at 17). 	The RID also notes that the
term “exit end” appears multiple times in claim 1 of the ’718 patent: 	“an exit end of the
mechanism,” “said exit end of the mechanism,” and “said exit end.” 	Id. (citing JX-4 at claim 1).
The RID therefore finds that the antecedent basis for “said exit end” of the current claim
limitation is “an exit end of the mechanism,” i.e., an exit end of the “fastener driving
mechanism.” 	Id.
The RID further finds that the ’718 specification distinguishes the exit end of the fastener
from the end of the safety contact element. 	Id. at 22 (citing Vitronics, 90 F.3d at 1582; Becton,
Dickinson & Co. v. Tyco Healthcare Grp., 616 F.3d 1249, 1254-55 (Fed. Cir. 2010) (“Where a
claim lists elements separately, the clear implication of the claim language” is that those
elements are “distinct component[s] of the patented invention.”) (citation omitted)).
Specifically, the RID finds that the specification discloses the following:
• 	Safety contact element 32 extends beyond the bottom 30 of the fastener exit, and
this extension of the safety contact element is depicted at 34, which is the bottom
or ‘front’ portion of the safety contact element (Id. (citing JX-4 at 7:47-51)).
• 	The exit end of the tool 10 [is] essentially at the bottom portion 30 of the tool’s
exit area. 	(Id. (citing JX-4 at 7:64-67)).
The RID thus finds that the specification discloses “fastener driving mechanism” and
“safety contact element” as two distinct elements and, without some explanation from Kyocera
or its expert as to why those elements are the same, it declines to so find. 	Id. 	Based on the
foregoing, the RID therefore finds that Kyocera has failed to meet its burden to prove that the
accused products satisfy the “initiating a driving cycle” limitation. 	Id.
2. 	The Parties’ Arguments
Kyocera submits that the RID’s interpretation and application of the “initiating a driving

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cycle” limitation excludes the embodiments depicted in Figures 1 and 16 of the ’718 patent.
Kyocera’s Sub. at 5.
Kyocera submits that Figure 1 of the ’718 patent (shown supra at p. 10) shows a safety
contact element 32. 	Id. 	Kyocera also submits that the ’718 specification discloses with respect
to the Figure 1 embodiment that, when it is time to drive a fastener, a user takes two actions to
initiate a driving cycle: 	(1) “pressing the nose 34 of the safety contact element 32 against a
solid surface”; and (2) “depressing the trigger actuator 54.” 	Id. (citing JX-4 at 11:60-12:2).
Kyocera further submits that the specification discloses that “[w]hen both of these actions are
occurring simultaneously, current is delivered to the motor 40,” thereby initiating a driving cycle.
Id. (citing JX-4 at 12:-8-18). 	Kyocera thus submits that the Figure 1 embodiment clearly
discloses pressing the end of the safety contact element 32 against a workpiece and actuating the
trigger to initiate a driving cycle, which is commensurate in scope with the asserted claims of the
’718 patent. 	Id. (citing JX-4 at claim 1 (“initiating a driving cycle by pressing said exit end
against a workpiece and actuating said trigger”)).
Also, Kyocera submits that, similarly, Figure 16 of the ’718 patent (shown below) shows
a safety contact element 418. 	Id. at 6.

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Kyocera submits that the ’718 specification discloses, with respect to the Figure 16 embodiment,
that when it is time to drive a fastener, a user takes two actions to initiate a driving cycle: 	(1)
“pressing the nose 419 of the safety contact element 418 against a solid surface”; and (2)
“depressing the trigger actuator 439.” 	Id. (citing JX-4 at 26:10-20). 	Kyocera further submits

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that the specification discloses that “[w]hen both of these actions are occurring simultaneously,
current is delivered to the motor 427,” thereby initiating a driving cycle. 	Id. (citing JX-4 at
26:28-39). 	Kyocera thus submits that the Figure 16 embodiment clearly discloses pressing the
end of the safety contact element 418 against a workpiece and actuating the trigger to initiate a
driving cycle which is commensurate in scope with the asserted claims of the ’718 patent. 	Id. at
6-7 (citing JX-4 at claim 1 (“initiating a driving cycle by pressing said exit end against a
workpiece and actuating said trigger”)).
Based on the foregoing, Kyocera submits that the RID’s interpretation of the “initiating a
driving cycle” limitation would exclude these two embodiments. 	Id. at 7. 	Specifically,
Kyocera asserts that the RID erroneously concludes that the “initiating a driving cycle”
limitation requires that the “exit end of the fastener driving mechanism and the end of the safety
contact [be] separate components.” 	Id. (citing RID at 21). 	Kyocera asserts that, under this
interpretation, an “exit end” of the “fastener driving mechanism” separate and distinct from the
“safety contact element” must be pressed against a workpiece to initiate a driving cycle. 	Id. at
7-8. 	Kyocera contends, however, that the only embodiments disclosed in the ’718 specification
clearly require pressing the exit end of the safety contact element against a workpiece. 	Id. at 8.
Kyocera thus argues that there is no disclosure nor contemplation in the specification of any
other potential way to initiate a driving cycle and therefore the RID’s interpretation lacks any
support from the intrinsic record. 	Id. (citing Accent Packaging, Inc. v. Leggett & Platt, Inc., 707
F.3d 1318, 1326 (Fed. Cir. 2013) (“[A] claim interpretation that excludes a preferred
embodiment from the scope of the claims is rarely, if ever, correct.”)).
Kyocera also submits that Hitachi misinterprets the ’718 specification, as the two
portions of the specification (i.e., JX-4 at 11:67-12:2, 17:9-14) respondent argues are two

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separate embodiments for “initiating a driving cycle” actually describe the same embodiment, the
first embodiment depicted in Figure 1. 	Kyocera’s Reply at 5 (emphasis added by Kyocera).
Specifically, Kyocera submits that the following portions of the specification (which encompass
or relate to those cited by Hitachi) disprove Hitachi’s argument because they all refer to the “first
embodiment” of Figure 1: 	“When it is time to drive a fastener, the next action in the illustrated
first embodiment is to cause the motor 40 to become energized once again (id.; citing JX-4 at
11:60-12:2) (emphasis added by Kyocera)”; “The illustrated first embodiment of the present
invention . . . (id.; citing the same at 13:5-6) (emphasis added by Kyocera)”; “FIG. 13 . . . is a
first portion of a flow chart showing some of the important logical steps performed by the
controller of the first embodiment fastener driving tool of FIG. 1 (id.; citing the same at 5:45-48)
(emphasis added by Kyocera)”; “FIG. 1 is a side view in a particular cross-section of a first
embodiment of a fastener driving tool (id.; citing the same at 4:65-66) (emphasis added by
Kyocera).” 	Kyocera thus submits that the RID’s interpretation excludes the embodiments
depicted in Figures 1 and 16 for the “initiating a driving cycle” limitation, which requires, for all
embodiments, pressing the safety contact element against the workpiece.
Accordingly, Kyocera submits that the “initiating a driving cycle” limitation only has one
reasonable interpretation – the end of the safety contact element is the exit end of the fastener
driving mechanism. 	Kyocera’s Sub. at 8 (citing CX-110C (Pratt) at Q. 203 (Dr. Pratt testified
that “the exit end of the fastener driving mechanism is the end of the safety contact element,
which when pressed against a workpiece, allows a driving stroke to begin.”)).
Hitachi submits that the RID’s interpretation of “initiating a driving cycle” limitation
does not exclude embodiments disclosed in Figure 1 and Figure 16. 	Hitachi’s Sub. at 3.
Specifically, Hitachi submits that the ’718 specification discloses two separate embodiments for

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“initiating a driving cycle” in accordance with the claimed invention. 	Id. at 4-9. 	Hitachi
submits that, in one embodiment, the safety contact element is pressed against a workpiece “to
the extent” that the exit end of the tool, i.e., the bottom 30, 417 of the fastener exit portion of the
tool 10, 401, is “now” also pressed into the workpiece (i.e., the safety contact element and the
bottom are co-planar) to actuate the sensor (i.e., limit switch 132, 432) to initiate the driving
cycle consistent with the Figure 1 and 16 embodiments. 	Id. (citing JX-4 at 17:8-14, 33:42-47).
Hitachi notes that, in describing the “initiating a driving cycle” feature, the specification
discloses (similar for both Figure 1 and 16 embodiments):
This step determines whether or not the safety contact element 32 has been
pressed against a solid object to an extent that actuates the sensor (e.g.,
limit switch 132), which means that the tool is now pressed against a
surface where the user intends to place a fastener.
Id. (citing JX-4 at 17:9-14); see also JX-4 at 33:42-47. 	Hitachi submits that, in accordance with
these portions of the specification, the safety contact element includes an interior hole into which
the exit end (i.e., the bottom of the fastener exit portion) can enter, or is sufficiently depressable,
so that the bottom of the exit end can press against the workpiece when it is co-planar with the
bottom of the safety contact element. 	Id. at 6 (citing Figs. 1, 16, 18). 	Hitachi submits that this
interaction of the two separate elements – the safety contact element and the bottom of the
fastener exit portion – satisfy the RID’s construction and application of the “initiating a driving
cycle” limitation. 	Id. at 5.
Hitachi further submits that, alternatively, the ’718 specification supports another,
unclaimed embodiment for Figures 1 and 16 where the nose of the safety contact element is
depressed, without depressing the exit end (i.e., the bottom of the fastener exit portion), to
initiate the driving cycle. 	Id. at 8-9 (citing JX-4 at 11:67-12:2 (explaining that the driving cycle
can be initiated by pressing the nose 34 of the safety contact element 32 against the workpiece)).

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Hitachi submits that the specification’s description of pressing the safety contact element against
a workpiece shows that the patentee knew how to articulate that alternative embodiment and yet
expressly chose to claim the embodiment where the “initiating a driving cycle” limitation
requires “pressing said exit end of the fastener driving mechanism against a workpiece.” 	Id. at 9
(emphasis added by Hitachi) (citing TIP Systems, LLC v. Phillips & Brooks/Gladwin, Inc., 529
F.3d 1364, 1373 (Fed. Cir. 2008) (“[T]he mere fact that there is an alternative embodiment
disclosed in the [asserted] patent that is not encompassed by [sic] district court’s claim
construction does not outweigh the language of the claim, especially when the court’s
construction is supported by the intrinsic evidence)).
3. 	Analysis
Hitachi’s main argument is unsupported by the record evidence because the ALJ struck
the supporting testimony of Hitachi’s expert due to waiver. 	The ALJ’s Ground Rules expressly
provide that “[a] party may not introduce evidence at the hearing that is outside of the scope of
its response to contention interrogatories.” 	Order No. 2 at Ground Rule 4.4.3. 	Accordingly,
when Hitachi’s expert rebuttal testimony went beyond mere rebuttal to introduce a new non-
infringement theory regarding this limitation, i.e., that the “fastener driving mechanism” and “the
safety contact element” cannot be part of the same element, the ALJ properly struck this
testimony because it went further than Hitachi’s original non-infringement contentions. 	See
Order No. 18 at 10. 	The Commission thus rejects this argument because no record evidence
supports it.
The Commission finds that in keeping with the intrinsic evidence, the asserted claims
must be read such that the “safety contact element” is part of the “fastener driving mechanism.”
Specifically, for example, the ’718 patent discloses the following with respect to “initiating a

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driving cycle”:
When it is time to drive the fastener, the next action in the
illustrated first embodiment is to cause the motor 40 to become energized
once again. 	This occurs by two independent actions by the user: 	in
some modes of the invention, these two independent actions can occur in
either order . . . These two actions are pressing the nose 34 of the safety
contact element 32 against a solid surface, and depressing the trigger
actuator 54.
* 	* 	*
With respect to various types of firing (or driving) modes, a
“trigger fire” mode is where the user first presses the tool nose against a
working surface, and then depresses the trigger actuator 54. 	It is the
trigger being depressed that causes the drive stroke to occur in this
situation. 	With respect to a “bottom fire” mode, the trigger is actuated
first, and then the user presses the nose against a work surface, and it is the
work surface contact that causes the drive stroke to occur.
JX-4 at 11:60-12:2; 14:43-50. 	The ’718 patent thus teaches that pressing the nose of the
fastener driving tool, i.e., the nose of the safety contact element, against the workpiece to initiate
a driving cycle and not pressing the bottom portion of the fastener release exit against the
workpiece. 	Accordingly, the “exit end” recited in the asserted claims must be read to refer to
the general “fastener exit” portion 18 (shown above in FIG. 1), which encompasses both the
safety contact element 32, its nose 34, and the release end 30 of the fastener driving mechanism.
Pressing this “exit end,” which encompasses the nose of the safety contact element, against a
workpiece initiates a driving cycle according to the disclosed embodiments of the present
invention.
The Commission disagrees with Hitachi’s interpretation that the ’718 patent somehow
discloses two separate embodiments for “initiating a driving cycle,” as the patent only discloses
pressing the nose of the safety contact element against a workpiece to perform this claim
limitation. 	The portions of the specification cited by Hitachi actually support this determination

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because they all reference only the safety contact element, not the exit end of the fastener driving
mechanism, as triggering the driving cycle, i.e., upon its nose being depressed into a work
surface and its upper arm moving to actuate the limit switch. 	See JX-4 at 12:4-9, 13:37-41. 	In
fact, the phrases “nose of the safety contact element,” “nose of the tool,” “nose of the fastener
driving tool,” “tool nose,” or “extension of the safety contact element” are mentioned dozens of
times in the ’718 specification, all with respect to actuating the tool; this further supports the
equivalence between the safety contact element and the tool, i.e., that the safety element is part
of the tool’s fastener driving mechanism. 	See, e.g., JX-4 at 7:47-51; 11:7-12:11; 13:16-22, 37-
41; 14:47-50; 20:10-14; 26:13-27.
As shown and described in the Instruction and Safety Manual for the accused products,
the end portion of the driving tool, indicated as the push lever, is depressed against the workpiece
to initiate a driving cycle for the tool. 	See JX-19C.004, .0025-26. 	The push lever thus
functions as a “safety contact element,” consistent with the agreed-upon construction for that
limitation, because the tool does not operate unless this lever is depressed. 	Id. at .0025. 	This
description is further consistent with the testimony of Dr. Pratt, who explained that “the exit end
of the fastener driving mechanism is the end of the safety contact element, which when pressed
against a workpiece, allows a driving stroke to begin.” 	See CX-110C at Q. 203.
Accordingly, the Commission finds that the accused products satisfy the “initiating a
driving cycle” limitation and reverses the RID’s finding to the contrary. 	Based upon the
preceding discussion, the Commission finds that Hitatchi’s accused products infringe the
asserted claims of the ’718 patent.

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E. 	Induced Infringement
1. 	The RID
Before the ALJ, Kyocera submitted that Hitachi has had actual knowledge of the ’718
patent since at least shortly after January 25, 2017, when Kyocera filed a district court complaint
accusing Hitachi of infringing the ’718 patent. 	RID at 24 (citing Kyocera’s Initial Post-Hearing
Br. at 14-15 (citing Senco Brands, Inc. v. Hitachi Koki U.S.A., Ltd., No. 17-cv-00061-TSB)).
Kyocera also asserted that Hitachi “encourages end users to use the Accused Products in a
manner that directly infringes claims, 1, 10, and 16 of the ’718 Patent” and that Hitachi “has had
the specific intent to encourage this infringement by, among other things, distributing, marketing
materials, instructions, and similar materials with instructions on using the Accused Products in
an infringing manner.” 	Id. (citing Kyocera’s Initial Post-Hearing Br. at 14-15 (citing CPX-2C;
JPX-10C)).
The RID notes that “[i]nducement can be found where there is ‘[e]vidence of active steps
taken to encourage direct infringement,’ which can in turn be found in ‘advertising an infringing
use or instructing how to engage in an infringing use.’” 	Id. at 25 (citing Takeda Pharms. U.S.A.,
Inc. v. West-Ward Pharm. Corp., 785 F.3d 625, 630-31 (Fed. Cir. 2015)). 	The RID further
notes, however, that “such instructions need to evidence ‘intent to encourage infringement.’”
Id. (citing Takeda, 785 F.3d at 631). 	The RID finds that “[t]he question is not, however,
whether a user following the instructions may end up using the device in an infringing way.
Rather, it is whether [defendant’s] instructions teach an infringing use of the device such that we
are willing to infer from those instructions an affirmative intent to infringe the patent.” 	Id. at
25-26 (citing Vita-Mix Corp. v. Basic Holding, 581 F.3d 1317, 1329 n.2)).
Turning to the record evidence, the RID finds that Hitachi’s Instruction and Safety

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Manual explains that to drive the fastener, a user must “press the push lever against the wood”
and “pull the trigger.” 	Id. at 26 (citing JX-19C.0004). 	The RID, however, referring to its non-
infringement finding regarding the “initiating a driving cycle” limitation (see supra at II.D.1),
notes its finding that Kyocera and its expert did not provide sufficient evidentiary support to
conclude that the accused push lever of the accused products is the same as “said exit end” in
asserted claim 1. 	Id. 	Accordingly, the RID finds that Kyocera fails to show that Hitachi’s
instructions teach an infringing use of the accused tool and therefore failed to show that Hitachi
induced infringement of claims 1, 10, and 16 of the ’718 patent.
2. 	The Parties’ Arguments
Kyocera submits that the RID errs in relying on its previous erroneous determination that
the accused products do not satisfy the “initiating a driving cycle” limitation. 	Kyocera’s Pet.
(RID) at 29-30. 	Kyocera further submits that the RID makes several important findings of fact
that establish the requisite specific intent for induced infringement, which is found in Hitachi’s
Instruction and Safety Manuals for its accused products that are included with every purchase.
Id. at 30 (citing JX-19C-20C; CX-106C (Lefler) at 96-105). 	Kyocera submits that, for example,
the RID finds that “Respondent’s Instruction and Safety Manuals clearly show that Respondent
designed the Accused Products to be used with fasteners and specifically instructs end users to
use the Accused Products with fasteners” and “Respondent has not provided any evidence that
the Accused Products are used with anything other than fasteners.” 	Id. at 31 (citing RID at 7-8).
Kyocera submits that the RID makes similar findings with respect to the “selecting, by a user, an
operating mode” and “actuating said prime mover” limitations. 	Id. (citing RID at 18
(“Respondent’s Instruction and Safety Manuals specifically instruct users to” select one of two
operating modes), 22 (“The evidence shows that end users are instructed to perform” the

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“actuating said prime mover” step)). 	Kyocera submits that these findings further support a
holding that Hitachi had the requisite intent to encourage infringement. 	Id.
In addition, Kyocera submits that Hitachi’s specific intent to encourage infringement is
established by, among other things, its distribution of marketing materials and instructions on
using its accused products in an infringing manner. 	Id. (citing CPX-2C (Hitachi advertisement
on YouTube demonstrating direct infringement and directing end users to use the accused
products to drive fasteners and use bump fire and sequential fire modes of operation); JPX-1C
(same)). 	Kyocera further submits that specific intent is established by Hitachi’s inclusion of its
Instruction and Safety Manual with every purchase of the accused product – where the manuals
describe and instruct users to operate the accused products in an infringing manner. 	Id. (citing
JX-19C (manual sold with accused models NT1865DMA, NT1865DM, and NT1850DE); JX-
20C (sold with accused models NR1890DC and NR1890DR); CX-106C at 96-105)).
Hitachi submits that, as to the “intent” prong of induced infringement, Kyocera did not
show that Hitachi knew that its actions would lead to infringement or that it actively and
knowingly aided and abetted another’s direct infringement. 	Hitachi’s Resp. (RID) at 18-19
(citing DSU, 471 F.3d at 1305).
3. 	Analysis
The RID erroneously finds that Hitachi does not possess the requisite specific intent to
establish induced infringement. 	First, as discussed supra (see II.D.3), we find the RID’s
determination that the “initiating a driving cycle” limitation is not met by the accused products to
be in error because the ’718 specification supports the “safety contact element” being part of the
“fastener mechanism.” 	Second, it is clear from the record evidence that: 	(1) Hitachi has had
actual knowledge of the ’718 patent since at least January 25, 2017, with the filing of Kyocera’s

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complaint in District Court; and (2) Hitachi’s Instruction and Safety Manual (included with
every purchase of the accused product) instructs users on how to use the accused spring nailers in
an infringing manner as they all include the “Full Sequential” and “Contact” Actuation
Mechanisms that require pushing the end part of the device, i.e., the safety contact element,
against the workpiece to initiate a driving cycle, which infringes the asserted claims of the ’718
patent. 	See JX-19C. 	Accordingly, we can infer from those instructions, along with Hitachi’s
knowledge of the ’718 patent, “an affirmative intent to infringe the patent.” 	See Takeda
Pharms., 785 F.3d at 630-31; see also Vita-Mix Corp. v. Basic Holding, 581 F.3d 1317, 1329
n.2. 	The Commission therefore determines that Hitachi has induced infringement of the
asserted claims of the ’718 patent and reverses the RID’s finding to the contrary.
F. 	Technical Prong of the Domestic Industry Requirement Regarding the
“System Controller” Limitation
1. 	The Final ID
The ID finds that Kyocera has not satisfied the technical prong of the domestic
requirement because the “system controller” limitation is not met for reasons similar to those
discussed above with respect to infringement. 	ID at 30-34. 	When questioned about whether
the DI products practice the “system controller” limitation, Kyocera’s expert, Dr. Pratt, testified
that the “Domestic Industry Products meet this limitation, as I explained previously with respect
to the similar ‘system controller’ limitation found in claim 1 of the ’722 Patent and as shown, for
example, on page 38 of CDX-0002C.” 	Id. at 32 (citing CX-110C at QQ. 191, 379). 	Dr. Pratt’s
testimony relating to the ’722 patent states:
Q. 	What is your opinion regarding whether the Domestic Industry
Products meet the claim limitation “a housing that contains a prime mover,
and a system controller,” as in claim 1 of the ’722 Patent?
A. 	The Domestic Industry Products meet this limitation. 	Referring to

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page 38 of CDX-0002C, I created labeled images of the FUSION F-15
Nailer showing how the Domestic Industry Products include every
element of this claim limitation. 	I understand that “system controller”
means “a circuit configured to control operation based on received input
signals.” 	I believe it makes sense to discuss the “system controller”
limitation in more detail with respect to another limitation of this claim,
but the Domestic Industry Products do meet this limitation. 	I also
discussed how the controller in the Domestic Industry Products work [sic]
with respect to the “predetermined conditions” limitations in claim 11 of
the ’296 Patent.
CX-110C at Q. 341; see also CX-110C at Q. 152.
The ID notes that, similar to his infringement testimony, the other limitation Dr. Pratt
refers to in this testimony above is “said lifter member movable, under command of said system
controller, by said prime mover.” 	ID at 32 (citing CX-110C at Q. 349) (emphasis added). 	The
ID finds, however, that, when discussing this other limitation from claim 1 of the ’722 patent,
Dr. Pratt makes only a cursory reference to the system controller. 	Id. 	Specifically, the ID notes
that Dr. Pratt states: 	“The controller determines when, and for how long, current is fed from the
energy source to the prime mover after receiving inputs from sensors on the tool.” 	Id. at 27
(citing CX-110C at Q. 160). 	The ID finds, however, that beyond this conclusory sentence, Dr.
Pratt does not provide any evidence that this “current-sourcing” feature actually exists in the DI
products since Dr. Pratt did not provide any explanation as to how these sensors provide inputs
to the system controller or show that any of these sensors are actually connected to a controller.
Id. 	The ID further finds that Dr. Pratt again cites to a demonstrative (i.e., CDX-2C.0038) as
proof that the “system controller” limitation is present in the DI products, but does not identify
any sensors in this demonstrative. 	Id. at 32-33. 	The ID also finds that Dr. Pratt does not
provide any evidence showing that the circuitry on the printed circuit board from the
representative DI product is “configured to control operation based on received input signals.”
Id. at 33; see also ID at 15-20 (finding the F-15 to be representative).

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The ID further finds that, even if Dr. Pratt identified a system controller (i.e., a
microprocessor) or a programmed computer on the printed circuit board of the DI products,
merely identifying this physical element “tells you nothing about the operation of the [system
controller].” 	Id. at 34 (quoting RX-266C at Q. 377). 	Specifically, the ID finds the following
testimony from Hitachi’s expert, Dr. Vallee, significant in explaining the distinction:
Even if Dr. Pratt (or someone else) were able to identify a programmed
computer (e.g., microprocessor or microcomputer) on the printed circuit
board of any of the Alleged Domestic Industry Products, it would not
establish that a programmed computer, as opposed to other components
(e.g., switches, transistors, etc.) elsewhere in the tool, determine the
conditions, if any, under which the lifter moves the driver from the alleged
“driven position” to the alleged “ready position.”
Id. (citing RX-266C at Q. 377). 	The ID finds that even if Dr. Pratt had identified a “system
controller” (or a “programmed computer” as recited in the asserted claims of the ’296 patent) in
the DI products, this mere identification of a controller would not tell a POSA anything about the
operation of the controller. 	Id. (citing RX-266C at Q. 201). 	Accordingly, the ID finds that to
determine whether the system controller identified in the DI products is actually configured to
control operation based on received input signals, a POSA would need to understand the logical
operations carried out by the controller, which necessarily requires an analysis of the source code
(that Dr. Pratt did not perform). 	Id. (citing RX-266C at Q. 384).
Based on the foregoing, the ID finds that Kyocera did not meet its burden of showing by
a preponderance of the evidence that the “system controller” limitation is practiced by the DI
products. 	Id. 	Accordingly, the ID finds that the domestic industry products do not practice
claims 1, 10, or 16 of the ’718 patent and therefore the technical prong of the domestic industry
requirement is not satisfied.

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2. 	The Parties’ Arguments
Because of the similarities between the accused products and the DI products, Kyocera
asserts similar arguments regarding how the ID errs in determining that complainant’s domestic
industry products do not practice the “system controller” limitation of claims 1, 10, or 16 of the
’718 patent. 	See Kyocera’s Pet. at 39-53. 	Specifically, Kyocera: 	(1) reiterates that the ID
erred in requiring that an analysis of source code was necessary to determine whether the
“system controller” limitation was practiced by its DI products; and (2) asserts that the ID erred
as it overlooked and failed to consider the significant evidence provided by its expert, Dr. Pratt,
concerning how this limitation is practiced. 	Id. at 40. 	Kyocera’s discussion regarding point (1)
can be found supra at Section II.B.2 in its discussion regarding infringement.
Regarding point (2), Kyocera submits that the ID erred in finding that “Dr. Pratt has not
demonstrated that the ‘system controller’ is actually configured to control operation based on
received input signals.” 	Id. at 46. 	Kyocera submits that this erroneous conclusion overlooks
the significant evidence provided in the form of Dr. Pratt’s testimony that established that the DI
products practice this limitation. 	Id. at 47. 	Kyocera submits that, contrary to the ID’s
determination, its expert, Dr. Pratt, provided sufficient explanation as to how the sensors of the
DI products provide inputs to the system controller to practice this limitation. 	Id. 	Specifically,
Kyocera submits that Dr. Pratt explained how the various sensors of the DI products worked with
the system controller to control operation of these products with respect to the first of the
“predetermined conditions” limitations of claim 11 of the ’296 patent, with reference to Figure F
shown supra at pages 20-21. 	Id. at 47-48 (citing CDX-2C.0026 (reproducing and annotating
CX-21C)). 	Kyocera submits that, with respect to this software flow chart and the sensors’
operation identified therein for performing the “predetermined conditions,” Dr. Pratt explained

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the operation of the “system controller” of the DI products. 	Id. at 48-51 (citing CX-110C at
QQ. 301, 303, 306-10).
Because of the similarities between the accused products and the DI products, Hitachi
reiterates its argument, supra at Section II.B.2, that because Dr. Pratt analogized the “system
controller” limitation of the ’718 patent to the “predetermined conditions” limitations of the ’296
patent with his infringement testimony, Kyocera admits that the claims require the “system
controller” to run on software, which the ID correctly determines necessitates an analysis of the
source code. 	Hitachi’s Resp. at 21-26 (citing CX-110C at Q. 301, 349, 379; RX-266C at 186,
384). 	Hitachi also submits that the ID correctly determines that Dr. Pratt’s technical prong
testimony is conclusory as it: 	(1) relies on a software flow chart rather than a circuit diagram
that details the circuitry and operation or identification of information transmitted and received
by any interconnected components; and (2) does not provide any detailed analysis of the sensors
allegedly interconnected to a “system controller.” 	Id. at 29-31.
3. 	Analysis
Based on reasoning similar to that discussed supra at Section II.B.3, the Commission
finds that the ID errs by requiring an analysis of source code in order to determine whether the
DI products practice the “system controller” limitation of the ’718 patent. 	Rather, the record
evidence, including the DI products’ Operating Instructions Manual and Dr. Pratt’s expert
testimony, establish that the DI products practice the “system controller” limitation recited in
claims 1, 10, and 16 of the ’718 patent. 	See, e.g., Warner-Lambert, 418 F.3d at 1341 n.15; LNP
Eng’g Plastics, 275 F.3d at 1357; Garmin, 697 Fed.Appx. at 1014-16.
As shown supra in the Operating Instructions Manual for the DI products and the
photographs of the physical components and consistent with the Federal Circuit case law, the

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main PCB (or controller) of the DI products receives input signals from the multiple sensors that
are interconnected. 	See JX-14C; CDX-2C.0038, 0043-47. 	That evidence, supplemented by Dr.
Pratt’s testimony and the modes of operation described in the Operating Instructions Manual,
demonstrates that the PCB uses these received input signals from the interconnected sensors to
control the multiple modes of operation (i.e., Sequential and Contact Actuation) of the DI nailers.
See JX-14C.0016-17; CDX-2C.0038, 0043-47; CX-110C at QQ. 301, 303, 306-10. 	Dr. Pratt,
with reference to the manual, software flow chart, and physical structure of the DI nailers,
provides sufficient detail of the operation, as a POSA would understand, of the three
interconnected sensors (i.e., trigger switch, push lever switch, and lifter member position sensor)
to the PCB. 	See CDX-2C.0026-27; CX-110C at QQ. 301, 303, 306-10. 	Dr. Pratt, via this
documentary record evidence, sufficiently described how the DI nailers detect the sequence of
the push lever and trigger actuation, or contact of the push lever to the workpiece, together with
detection of whether the driver member is in the “hold” or “ready” positions in order to operate
in either the Sequential or Contact Actuation mode of operation. 	See CX-110C at QQ. 301, 303,
306-10; CDX-2C.0026-27; JX-14C. 	Accordingly, the Commission finds that the documentary
evidence as explained by Dr. Pratt’s testimony suffices to show how the sensors provide inputs
to the system controller of the DI products, and thus that the DI products satisfy the “system
controller” limitation.
Based on the foregoing, the Commission determines that the DI products meet the
“system controller” limitation and reverses the ID’s finding to the contrary.
G. 	Technical Prong of the Domestic Industry Requirement Regarding the
“Displacement Volume” Limitation
1. 	The RID
The RID finds that Kyocera has not satisfied the technical prong of the domestic industry

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requirement because the “displacement volume” limitation is not met, for reasons similar to
those discussed above with respect to infringement. 	RID at 33-34. 	The RID finds that the
record evidence shows that the DI products include a hollow cylinder, with a cylindrical wall and
a piston that moves within the cylinder. 	Id. at 33 (citing CX-110C at QQ. 314, 387; CDX-
2C.0029). 	The RID finds that, although a visual inspection is sufficient to determine
satisfaction of the “hollow cylinder” portion of this limitation, it is insufficient proof that the
stroke of the DI piston creates a displacement volume. 	Id. at 33. 	The RID finds that Kyocera
does not provide any explanation, discussion, or corroborating testimony in its post-hearing
briefing regarding the displacement volume. 	Id. (citing Kyocera’s Initial Post-Hearing Br. at
31; Kyocera’s Reply Post-Hearing Br. at 15-16). 	The RID also finds that Kyocera’s expert for
the ’718 patent, Dr. Pratt, did not testify regarding the displacement volume. 	Id. at 33-34 (citing
CX-110C at Q. 387). 	Dr. Pratt testified as follows:
Q. 	What is your opinion regarding whether the Domestic Industry
Products include a “hollow cylinder comprising a cylindrical wall
with a movable piston therewithin, said hollow cylinder containing
a displacement volume created by a stroke of said piston,” as in
claim 1 of the ’718 Patent?
A. 	The Domestic Industry Products meet this limitation, as I
explained previously with respect to the similar “hollow cylinder”
limitation found in claim 1 of the ’297 Patent and as shown, from
example, on page 32 of CDX-0001C.
CX-110C at Q. 387. 	The RID further finds that a review of the expert’s testimony regarding the
’297 patent is similarly devoid of any mention of the displacement volume. 	RID at 34 (citing
CX-110C at Q. 314). 	Dr. Pratt testified as follows:
Q. 	What is your opinion regarding whether the Domestic Industry
Products meet the claim limitation “a hollow cylinder comprising a
cylindrical wall and having a movable piston therewithin, said
hollow cylinder having a first end and a second, opposite end, said
hollow cylinder containing a displacement volume created by a

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stroke of said piston,” as in claim 1 of the ’297 Patent?
A. 	The Domestic Industry Products meet this limitation. 	Referring to
page 29 of CDX-0002C, I created labeled images of the FUSION
F-15 Nailer showing how the Domestic Industry Products include
each limitation of this claim element.
CX-110C at Q. 314.
The RID also notes that, although Kyocera does cite to a couple of additional exhibits,
there is no record testimony regarding how these exhibits demonstrate that a displacement
volume is created by a stroke of the DI piston. 	RID at 34. 	Based on the foregoing, the RID
finds that Kyocera has not presented sufficient evidence to show that the stroke of the DI piston
creates a displacement volume, and therefore has failed to prove by a preponderance of the
evidence that the DI products satisfy this limitation. 	Id.
2. 	The Parties’ Arguments
Because of the similarities between the accused products and the DI products, Kyocera
asserts similar arguments regarding how the RID errs in determining that complainant’s domestic
industry products do not practice the “displacement volume” limitation of claims 1, 10, or 16 of
the ’718 patent. 	See Kyocera’s Pet. (RID) at 32-36. 	Specifically, Kyocera reiterates that: 	(1)
the RID and Hitachi concede that the DI products include the claimed “displacement volume”;
and (2) the RID improperly disregards the evidence that establishes the presence of the
“displacement volume” limitation in the DI products. 	Id. at 32. 	Kyocera’s discussion
regarding point (1) can be found supra at Section II.C.2 in its discussion regarding infringement.
Regarding point (2), Kyocera submits that its expert, Dr. Pratt, testified that the below
labeled images from his demonstrative (CDX-2C.0017) show the results of his visual inspection
of the DI products, including his identification of the recited “displacement volume.” 	Id. at 35
(citing CX-110C at Q. 388).

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[[
]]
Kyocera submits that the RID errs in finding that this analysis of its DI products by its expert
was “insufficient proof that the stroke of the piston creates a displacement volume.” 	Id. (citing
RID at 33). 	Kyocera submits that the RID already holds that its expert’s visual inspection
established “that the DI Products include a hollow cylinder, with a cylindrical wall and a piston
that moves within the cylinder.” 	Id. (citing RID at 33). 	Kyocera thus submits that it logically
follows that if a visual inspection is sufficient to establish the presence of a hollow cylinder and a
piston that moves within the cylinder, then a visual inspection would also be sufficient to
establish the presence of the empty space within the hollow cylinder through which the piston

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moves. 	Id. at 36 (emphasis added by Kyocera).
Because of the similarities between the accused products and the DI products, Hitachi
submits substantially the same arguments it presents with respect to infringement (see supra at
II.C.2). 	Hitachi’s Resp. (RID) at 20-27. 	Hitachi reiterates its argument that: 	(1) it never
conceded that the “displacement volume” limitation was met because the other limitations
Kyocera refers to are entirely different; and (2) Kyocera presented conclusory analysis regarding
this limitation and cannot rely on expert testimony directed to the ’296 patent because it is
directed to a different limitation, i.e., “a driver actuation device.” 	Id. (citing Kyocera’s Initial
Post-Hearing Br. at 31; CX-110C at QQ. 387-88, 314, 264).
3. 	Analysis
The Commission finds that the displacement volume limitation reads on the DI products
based on the same reasoning articulated above (see II.C.3). 	Additionally, the record evidence
includes the testimony of Kyocera’s expert that:
• 	“The displacement volume is the product of the piston’s stroke and the
cross-section area of the hollow cylinder’s bore.” 	CX-110C (Dr. Pratt) at
Q. 264.
• 	“The piston moves up and down within the cylinder, which respectively
increases and decreases the pressure of the gas housed within the main
storage chamber and cylinder.” 	Id. at Q. 26.
And the ’718 specification expressly discloses that a “displacement volume” is “created by the
stroke of the piston 80.” 	See JX-4 at 9:63-65. 	Therefore, we find that Kyocera has presented
evidence of upward and downward strokes of the piston in the DI products, as well as the
displacement volume, and the patent explains that such piston movement “creates” the
displacement volume, i.e., the empty space through which the piston moves. 	See Warner-
Lambert, 418 F.3d at 1341 n.15 (The “preponderance of the evidence” standard “simply requires

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proving that infringement was more likely than not to have occurred.”).
The Commission therefore determines that the DI products satisfy the “displacement
volume” limitation and reverses the RID’s finding to the contrary.
H. 	Technical Prong of the Domestic Industry Requirement Regarding the
“Initiating a Driving Cycle” Limitation
1. 	The RID
The RID finds that Kyocera has not satisfied the technical prong of the domestic
requirement because the “initiating a driving cycle” limitation is not met for reasons similar to
those discussed above with respect to infringement. 	RID at 36-38.
The RID finds that the antecedent basis for “said exit end” of the current claim limitation
is “an exit end of the mechanism,” i.e., the exit end of the fastener driving mechanism. 	Id. at 37.
The RID finds that Kyocera’s expert, Dr. Pratt, testifies that, according to Kyocera’s Operating
Instructions, “when the exit end of the fastener driving mechanism is pressed against a
workpiece and the trigger is actuated, a driving stroke will begin.” 	Id. (citing CX-110C at Q.
391). 	The RID finds, however, that these Operating Instructions direct the user to “[p]ress the
workpiece contact (safety) element against the work surface.” 	Id. (citing CX-14C.0017). 	The
RID thus finds that Kyocera’s expert is equating the workpiece contact (safety) element in the DI
products with the exit end of the fastener driving mechanism. 	Id.
The RID finds, however, that neither Kyocera nor its expert provides sufficient
evidentiary support for this position, particularly when viewed in the context of the intrinsic
record. 	Id. 	Specifically, the RID finds that neither party cited to detailed pictures or
schematics of the DI products showing that the workpiece contact (safety) element is the same as
an exit end of the fastener driving mechanism. 	Id. at 37-38 (citing CX-110C at Q. 391; CX-
14C.0017). 	The RID further finds that although one of Dr. Pratt’s demonstrative exhibits labels

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a part of the DI products as the exit end of the mechanism, the demonstrative does not provide a
detailed view of that portion of the DI products and seems to point to the same portion of the tool
that is labeled as the safety contact element. 	Id. at 38 (citing CDX-2C.0044, .0047). 	Based on
the foregoing, the RID concludes that Kyocera has failed to meet its burden to prove that its DI
products practice the “initiating a driving cycle” limitation. 	Id. at 38.
2. 	The Parties’ Arguments
Because of the similarities between the accused products and the DI products, Kyocera
asserts similar arguments regarding how the RID errs in determining that complainant’s domestic
industry products do not practice the “initiating a driving cycle” limitation of claims 1, 10, or 16
of the ’718 patent. 	See Kyocera’s Pet. (RID) at 37-49. 	Specifically, Kyocera reiterates that the
RID: 	(1) errs in considering and basing its lack of the technical prong of the domestic industry
requirement with respect to this limitation on Hitachi’s waived non-infringement argument; and
(2) improperly disregards the evidence that established the presence of the “initiating a driving
cycle” limitation in the DI products because the “safety contact element” may be part of the
“fastener driving mechanism.” 	Id. at 37-42.
Kyocera’s discussion regarding point (1) can be found supra at Section II.D.2 in its
discussion regarding infringement. 	Kyocera further submits that Hitachi first raised this
argument in its pre-hearing brief, well after fact and expert discovery had closed and all direct
evidence, including witness statement, had been finalized. 	Id. at 37 n.17. 	Regarding point (2),
Kyocera submits that its expert, Dr. Pratt, explained that the DI products’ Operating Instructions
describe “that when the exit end of the fastener driving mechanism is pressed against a
workpiece and the trigger is actuated, a driving stroke will begin.” 	Id. at 43 (citing CX-110C at
Q. 391). 	Kyocera also notes that its expert’s testimony points to his demonstrative, which

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consistently labels the “exit end of the mechanism” as the end of the “safety contact element,” as
shown supra in FIGs. G and H (CDX-2C.0047, .0044). 	Id. (citing CX-110C at QQ. 377, 380).
Kyocera submits that, given that “a single element, feature, or mechanism can ordinarily
satisfy multiple claim limitations,” its expert’s testimony that the exit end of the fastener driving
mechanism is the end of the safety contact element is legally proper, and thus there is no basis
for the RID to dismiss this evidence as insufficient. 	Id. at 44 (citing Google, 743 Fed. Appx. at
985; NTP, 418 F.3d at 1310). 	Kyocera also reiterates its arguments from the infringement
section (see supra at II.D.2) regarding how the ’718 specification supports the “safety contact
element” being part of the “fastener mechanism” and how Becton is distinguishable from the
facts here. 	Id. at 45-49 (citing Becton, 616 F.3d at 1254-55). 	Kyocera therefore submits that
the Commission should find that its DI products meet the “initiating a driving cycle” limitation.
Hitachi submits that the RID correctly finds that the “initiating a driving cycle” limitation
is not met by the DI products with substantially the same arguments it presents with respect to
infringement (see supra at II.D.2). 	Hitachi’s Resp. (RID) at 28-37. 	Hitachi reiterates its
argument that: 	(1) it cannot waive its argument that Kyocera failed to satisfy its burden of proof
since that burden remains with complainant throughout the infringement on DI analysis; and (2)
neither the claims nor the ’718 specification supports interpreting the “safety contact element” as
part of the “fastener driving mechanism.” 	Id. (citing Welker Bearing, 550 F.3d at 1095; JX-4 at
7:64-67; 3:47-51). 	Hitachi thus submits that the Commission should affirm the RID’s finding
that the DI products do not “initiat[e] a driving cycle.” 	Id. at 37.
3. 	Analysis
As discussed supra at II.D.3, Hitachi’s argument that the DI products do not practice the
“initiating a driving cycle” limitation is unsupported by the record evidence because the ALJ

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struck the supporting testimony of Hitachi’s expert due to waiver. 	See, e.g., Order No. 2 at
Ground Rule 4.4.3; Order No. 18 at 10. 	The Commission thus rejects this argument because no
record evidence supports it.
Consistent with the infringement discussion supra at II.D.3, the Commission finds that,
as shown and described in the Operating Instructions for the DI products, the end portion of the
driving tool, indicated as the workpiece (safety) contact, is depressed against the workpiece to
“initiate a driving cycle” for the tool which is also consistent with the agreed-upon construction
for the safety contact element. 	See CX-14C at 14-17. 	This description is consistent with
Kyocera’s expert’s testimony, which explained “that when the exit end of the fastener driving
mechanism is pressed against a workpiece and the trigger is actuated, a driving stroke will
begin.” 	See CX-110C at Q. 391. 	The Commission therefore determines that the DI products
satisfy this limitation and reverses the RID’s finding to the contrary.
I. 	Economic Prong of the Domestic Industry Requirement
1. 	The Final ID
Before the ALJ, Kyocera submitted that it has made and continues to make significant
investments in labor or capital in support of its DI products to satisfy the economic prong of the
domestic industry requirement under both section 337(a)(3)(B) and section 337(a)(3)(C). 	ID at
51. 	Specifically, Kyocera submitted that its investments total $[[ 	]] for the period from
[[ 	]], consisting of $[[ 	]] for its Finishing Nailers product and
$[[ 	]] product (which Kyocera views, collectively, as a single
product line). 	Id. (citing Kyocera’s Initial Post-Hearing Br. at 46, 52-53). 	Kyocera submitted
that its labor or capital expenditures can be divided into four areas: 	(1) Broadwell facility
(located in Cincinnati, Ohio) investments; (2) engineering and research & development

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(“R&D”); (3) technical marketing; and (4) warranty and repair. 	Id. (citing the same at 52).
Kyocera also submitted that it manufactures [[ ]] percent of its fasteners at its Broadwell facility,
including the fasteners used with the DI products. 	Id. (citing the same at 53). 	Kyocera further
emphasized the importance of using its branded fasteners in its DI products, and submitted that
from [[ 	]], complainant accrued $[[ 	]] in revenue from its fastener products that were
intended for use in its DI products. 	Id. (citing the same).
The ID, contrary to Kyocera’s argument, finds that a reasonable time period for analyzing
Kyocera’s domestic industry is from 2015 to March 31, 2018, because this time period,
consistent with the testimony of Hitachi’s witness, Dr. Vander Veen, reflects labor and capital
expenses incurred closer to the date of the filing of the complaint, October 12, 2017. 	Id. at 52
(citing RX-256C at QQ. 41-43; RDX-0003C.1). 	The ID also finds that expenses related to
Kyocera’s manufactured “fasteners” are properly included in complainant’s DI calculation
because: 	(1) the asserted claims of the ’718 patent clearly recite this term; and (2) Kyocera’s
operating manual for its FS-15 Finishing Nailers, consistent with the testimony of Dr. Prowse,
states that only genuine SENCO fasteners should be used with complainant’s DI products since a
failure to do so may void the warranty. 	Id. at 52-53 (citing JX-4 at claims 1, 10, and 16; CX-
111C (Prowse WS) at QQ. 89-90; CX-112C (Klein WS) at QQ. 48-50).16 	The ID did not
include technical marketing expenses in its calculations. 	Id. at 53.
Based on the foregoing, the ID finds that Kyocera’s labor or capital expenditures for the
2015-2018 time period is $[[ 	]]. 	Id. at 54 (citing CX-111C at QQ. 41, 46, 50-60, 73, 87-
90, 94; CX-112C at QQ. 93-103). 	The ID also finds that this amount is significant because,
among other things, all of Kyocera’s warranty and repair activities occur in the United States and
16 Dr. Prowse is Kyocera’s economic expert.

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97 percent of the costs associated with the Broadwell facility are related to the manufacture of
complainant’s fasteners. 	Id. (citing CX-112C at 45-49; Certain Stringed Musical Instruments,
Inv. No. 337-TA-586, Comm’n Op. at 25-26 (“We emphasize that there is no minimum
monetary expenditure that a complainant must demonstrate to qualify as a domestic industry
under the ‘substantial investment’ requirement of this section. 	We agree with the parties that
the requirement for showing the existence of a domestic industry will depend on the industry in
question, and the complainant’s relative size . . .”)).
The ID thus finds that Kyocera has satisfied the economic prong of the domestic industry
requirement under section 337(a)(3)(B). 	Because the ID finds that section 337(a)(3)(B) is
satisfied, it does not decide whether Kyocera has satisfied the economic prong under section
337(a)(3)(C).
2. 	The Parties’ Arguments
In its notice setting forth review of the RID in part, the Commission requested additional
briefing with respect to the economic prong. 	See 84 FR at 69392. 	Kyocera submits that the ID
properly addresses the contextual analysis required by Commission precedent in determining that
Kyocera’s investments are significant. 	Kyocera’s Sub. at 1. 	Kyocera submits that, as
explained by the Federal Circuit, “the word ‘significant’ denote[s] ‘an assessment of the relative
importance of the domestic activities’” of a complainant. 	Id. (citing Lelo Inc. v. ITC, 786 F.3d
879, 883-84 (Fed. Cir. 2015) (citation omitted)). 	Kyocera submits that, here, the ID finds that
its labor and capital expenditures under section 337(a)(3)(B) are substantial “because, among
other things, all of Complainant’s warranty and repair activities occur in the United States. 	In
addition, 97% of the costs associated with the Broadwell facility are related to the manufacture
of Complainant’s fasteners.” 	Id. (citing ID at 54). 	Kyocera thus submits that because 100

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percent of its warranty and repair activities occur domestically and 97 percent of the costs for its
Broadwell facility are related to the manufacture of complainant’s fasteners, the ID performs a
sufficient contextual analysis. 	Id. at 2. 	Kyocera also notes that the ID included expenses
related to fasteners in part because “the asserted claims clearly include the term ‘fasteners.’” 	Id.
(citing ID at 52 (citing JX-4 at claims 1, 10, and 16)).
Kyocera further submits that additional record evidence on which the ID does not rely
supports a finding that complainant’s labor and capital expenditures under section 337(a)(3)(B)
are contextually significant. 	Id. at 2. 	Kyocera submits that all of its engineering and R&D
activities related to its Fusion line of nailers, its DI products, is performed in the United States.
Id. (citing Kyocera’s Initial Post-Hearing Br. at 52). 	Kyocera submits that its Vice-President of
Engineering, Christopher Klein, testified that “the Fusion Finishing Nailers were entirely
developed in the United States at our design center within the Broadwell facility in Cincinnati,
Ohio” and “[a]ll of Senco’s research and development activities related to the [[
]] occurs in the United States at our Broadwell facility.” 	Id. at 2-3 (citing CX-112C (Klein)
at QQ. 21, 30). 	Kyocera also submits that, from 2006 to March 2018, [[ 	]] percent
per year of complainant’s engineering and R&D labor was directed towards its DI products. 	Id.
(citing CX-111C (Prowse) at Q. 88). 	Kyocera thus submits that, in the context of its Fusion
line, complainant’s DI investments for labor and capital are quantitatively significant. 	Id. at 3
(citing CX-111C (Prowse) at Q. 88; Carburetors, Comm’n Op. at 19 (“The Commission has also
assessed the relative domestic contribution to the protected article by comparing complainant’s
product-related domestic activities to its product-related foreign activities.”)).
Kyocera also submits that Hitachi did not present any arguments concerning contextual
analysis in its petition for review. 	Id. at 4. 	Kyocera submits that Hitachi’s only mention of

PUBLIC VERSION
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“significance” was in its final, conclusory sentence of its argument: 	“[t]his figure is not
significant by any measure.” 	Id. (citing Hitachi’s Pet. at 44). 	Kyocera thus submits that
Hitachi’s petition for review contains no “petition pages, evidence, [or] authorities cited on the
issue” and therefore any argument on this issue has been waived by Hitachi. 	Id.
Hitachi submits, however, that the ID does not address the contextual analysis as required
by Commission precedent to determine if Kyocera’s investments are significant. 	Hitachi’s Sub.
at 2 (citing Carburetors, Comm’n Op. at 17-19). 	Hitachi submits that the ID’s only “contextual
analysis” (see ID at 54) falls well short of the requirement as set forth in Carburetors, and that
the record evidence does not support a finding that Kyocera satisfies this requirement. 	Id.
Hitachi also submits that it presented arguments concerning the contextual analysis in its
petition for review. 	Id. (citing Hitachi’s Pet. at 43). 	Hitachi points to its argument that
Kyocera “cannot establish . . . that its expenditures in the United States are significant in view of
those outside the United States.” 	Id. (citing the same) (emphasis added by Hitachi). 	Hitachi
therefore submits that this portion of its petition for review does refer to a proper contextual
analysis, inasmuch as it relates to a comparison of Kyocera’s U.S. investments with its foreign
investments in its alleged DI products. 	Id. at 3.
3. 	Analysis
The Commission finds that Kyocera has made substantial investments in the exploitation
of the ’718 patent that are contextually significant as required by our precedent, and therefore has
satisfied the economic prong of the domestic industry requirement under section 337(a)(3)(C).17
17 Commissioner Schmidtlein notes that all of the investments the Commission now credits and
finds substantial under section 337(a)(3)(C) also provide a basis for finding that Kyocera has
satisfied section 337(a)(3)(B). The Commission’s decision in this investigation does not change
the Commission’s precedent, which recognizes R&D-related labor expenses under section

PUBLIC VERSION
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See Carburetors, Comm’n Op. at 18.
The requisite nexus between Kyocera’s exploitation activities and the ’718 patent is met
here because the activities here go toward developing DI products that embody and practice the
asserted claims. 	See generally CX-110C at QQ. 375-92; CX-112C at QQ. 21, 27-41; CX-111C
at QQ. 36, 39-40, 51, 69; Tr. (Prowse) at 161:6-14, 162:2-11; Certain Digital Video Receivers
and Hardware and Software Components Thereof, Inv. No. 337-TA-1001, Initial Determination
at 582-84 (May 26, 2017) (relevant portions unreviewed) (finding that the requisite nexus
between complainant’s R&D and the asserted patents was met because the DI products “practice
certain of the asserted patents”); Certain Integrated Circuit Chips and Products Containing the
Same, Inv. No. 337-TA-859, Comm’n Op. at 38-40 (Aug. 22, 2014) (explaining “to the extent
that there was any question, under subparagraph (C), the complainant must establish that there is
a nexus between the claimed investment and the asserted patent, regardless of whether the
domestic-industry showing is based on licensing, engineering, or research and development” and
noting that a “nexus may readily be inferred based on evidence that the claimed investment is in
the domestic industry article, which itself is the physical embodiment of the asserted patent.”).
Kyocera maintains its global headquarters in Cincinnati, Ohio, which includes the
500,000-square-foot Broadwell facility where complainant conducts its R&D, engineering, and
quality management related to the DI products. 	See CX-111C (Prowse) at Q. 38; CX-112C
337(a)(3)(B). 	See Certain Solid State Storage Drives, Stacked Electronics Components, and
Products Containing Same, Inv. No. 337-TA-1097, Comm’n Op. at 8 (June 20, 2018) (“even
though subsection (C) expressly identifies ‘engineering’ and ‘research and development’ as
exemplary investments in the ‘exploitation’ of the patent, that language does not unambiguously
narrow subsections (A) and (B) to exclude those same types of investments.”). 	And, further, the
Commission’s decision does not indicate a difference in meaning between the terms
“substantial” and “significant.”

PUBLIC VERSION
81
(Klein) at QQ. 10, 12. 	Kyocera developed the Fusion Finishing Nailer entirely at the Broadwell
facility. 	See CX-112C at QQ. 14-21; CX-111C at QQ. 34-40. 	While Kyocera developed and
first released the Fusion Finishing Nailer more than five years ago, the current [[
]] is an ordinary commercial expansion of the DI products and incorporates
the technology claimed in the ’718 patent. 	See CX-112C at QQ. 21, 27-41; CX-111C at QQ.
36, 39-40, 51, 69; Tr. (Prowse) at 161:6-14, 162:2-11; Certain Non-Volatile Memory Devices &
Prods. Containing the Same, Inv. No. 337-TA-1046, Comm’n Op. at 41-42 (Oct. 26, 2018)
(“The term ‘article’ on its own is sufficiently capacious to embrace pre-commercial or non-
commercial items.”) (citing Certain Computers and Computer Peripheral Devices, and
Components Thereof, and Products Containing Same, Inv. No. 337-TA-841, Comm’n Op. at 37,
39 (Jan. 9, 2014)); Certain Television Sets, Television Receivers, Television Tuners, and
Components Thereof, Inv. No. 337-TA-910, Comm’n Op. at 68 (Oct. 30, 2015) (“Past
expenditures may be considered to support a domestic industry claim so long as those
investments pertain to the complainant’s industry with respect to the articles protected by the
asserted IP rights and the complainant is continuing to make qualifying investments at the time
the complaint is filed.”).
The Commission finds that Kyocera’s R&D for all of its products occurs in the United
States, and that the R&D for all of its Fusion Nailers occurs at the Broadwell facility. 	See CX-
111C at QQ. 65; CX-112C at QQ. 12-13, 21, 30, 52. 	The Commission also finds that the ’718
patent relates to fundamental technology embedded in the DI products. 	See CX-111C at QQ.
68-69; CX-112C at QQ. 23, 74; CX-110C (Pratt) at Q. 27; see also Certain Male Prophylactic
Devices, Inv. No. 337-TA-546, Comm’n Op. at 42-43 (June 29, 2007) (finding that the addition
of an additive “added in the United States is directed to the practice of certain patent claims” and

PUBLIC VERSION
82
noting that whether the activity is directed to the practice of a claim is “an additional factor
relevant to [the] domestic industry analysis”) (citing Certain Plastic Encapsulated Integrated
Circuits, Inv. No. 337-TA-315, Initial Determination at 90, USITC Pub. 2574 (Nov. 1992) for
the proposition that the “nature and significance inquiry [considers] whether domestic activities
relate to something covered by the patent”). 	The Commission further finds that Kyocera’s
engineering and R&D efforts all went towards developing, testing, and maintaining the
functionality of the DI products, which practice the ’718 patent during routine operations. 	See
CX-111C at Q. 69; CX-112C at QQ. 21-30.
Kyocera’s expert, Dr. Prowse, and its witness, Mr. Klein, testified and provided
allocations regarding complainant’s domestic engineering and R&D expenditures for the DI
products. 	See CX-111C at QQ. 71, 73-74, 77-82; CX-112C at QQ. 60, 67, 69-70, 75-76, 81;
JX-42C; JX-43C; JX-52C; CDX-8C. 	Accordingly, the Commission finds that Kyocera’s U.S.
R&D and engineering expenditures directed to the DI products that exploit the invention of the
’718 patent, for the period 2014 to October 12, 201718 (the filing date of the amended
complaint), total $[[ 	]] (approximately $[[ 	]] for the Finishing Nailer, and
18 The Commission finds that this time frame is reasonable because those past expenditures
relate to Kyocera’s investments in R&D and engineering of the DI products and because
complainant continued to make such investments until the complaint was filed. 	See, e.g.,
Certain Kinesiotherapy Devices and Components Thereof, Inv. No. 337-TA-823, Comm’n Op. at
30 (July 12, 2013) (finding expenses related to a predecessor product “relevant to domestic
industry” even though they were incurred more than two years prior to the day the complaint was
filed); Certain Electronic Digital Media Devices and Components Thereof, Inv. No. 337-TA-
796, Comm’n Op. at 100-02 (Sep. 6, 2013) (crediting expenses incurred over a six-year period
(from 2006 through the first quarter of 2012)); Certain Variable Speed Wind Turbines &
Components Thereof, Inv. No. 337-TA-376, Comm’n Op. at 24-26 (Sep. 23, 1996) (finding that
the continued investments associated with operating and maintaining 19 wind plants supported
finding that complainant was exploiting the asserted patent, despite a recent bankruptcy filing).

PUBLIC VERSION
83
approximately $1,176,020 for the Framing Nailer)19, when technical marketing expenditures are
not included.20 	See CDX-8C.0005; CDX-7C.0004; CX-111C at Q. 61; CX-112C at QQ. 21, 30;
ID at 53.
The Commission finds that Kyocera’s investments in the exploitation of the ’718 patent
are quantitatively substantial in the context of the marketplace and Kyocera’s industry. 	In
particular, as mentioned supra, all, i.e., 100 percent, of Kyocera’s R&D and engineering
expenditures relating to complainant’s Fusion Nailers occurs in the United States. 	See CX-
111C at Q. 95; CX-112C at QQ. 21, 30. 	Thus, unlike the situation in some investigations, there
is no issue regarding whether, in light of the alleged industry’s foreign activities related to the
asserted economic prong provision, the domestic activities rise to the level of significance. 	This
evidence establishes the “nature and importance of the complainant’s activities to the patented
products in the context of the marketplace or industry in question,” in accordance with
Commission precedent. 	See Carburetors, Comm’n Op. at 18.
19 See CDX-8C.0005 (the sum of the “Total Fusion Engineering and R&D” line is $1,967,626);
CDX-7C.0004 [[
]]. 	See CDX-7C.0004.
20 We note that Kyocera’s “technical marketing” expenses are incorporated into the same line
item, [[ 	]], as its marketing expenses. 	For example, Mr. Klein, Kyocera’s
Vice President of Engineering, explained that the “[[ 	]]” costs refer to “the
cost center dedicated to Fusion related marketing expenditures, including technical marketing
expenditures.” 	CX-112C (Klein) at Q. 61. 	See Certain Kinesiotherapy Devices and
Components Thereof, Inv. No. 337-TA-823, Comm’n Op. at 29 n.8 (July 12, 2013) (noting that
“sales and marketing and are not the sort of expenditures” that the Commission has credited
under the economic prong). 	The Commission need not, and does not, reach the issue here of if
and when it would be appropriate to include “technical marketing” expenses in an economic
prong analysis.

PUBLIC VERSION
84
Based on the foregoing, the Commission finds that Kyocera has satisfied the economic
prong of the domestic industry requirement under section 337(a)(3)(C), and takes no position on
the ID’s finding that Kyocera has satisfied this requirement under section 337(a)(3)(B). 	We
adopt the ID’s findings that are not inconsistent with this determination.
III. 	CONCLUSION ON VIOLATION
Based on the exposition above, the Commission determines that a violation of section
337 has occurred with respect to the sale within the United States after importation of Hitachi’s
gas nailer products that induce infringement of claims 1, 10, and 16 of the ’718 patent. 	See
Suprema, Inc. v. ITC, 796 F.3d 1338 (Fed. Cir. 2015) (en banc).
IV. 	REMEDY, THE PUBLIC INTEREST, AND BONDING
A. 	Remedy
In a section 337 proceeding, the Commission has “broad discretion in selecting the form,
scope, and extent of the remedy.” 	Viscofan, S.A. v. ITC, 787 F.2d 544, 548 (Fed. Cir. 1986).
Under section 337(d)(1), the statute authorizes the Commission to issue an LEO directed to a
respondent’s infringing products. 	19 U.S.C. § 1337(d)(1). 	An LEO instructs the U.S. Customs
and Border Protection to exclude from entry all articles that are covered by the patent at issue
that originate from a named respondent in the investigation. 	Fuji Photo Film Co. Ltd. v. ITC,
474 F.3d 1281, 1286 (Fed. Cir. 2007). 	The RD recommends issuance of an LEO and CDO if
the Commission finds a violation of section 337. 	RD at 56-58.
Kyocera requests issuance of an LEO. 	See Kyocera’s Sub. on Remedy at 1-2. 	Based
on the record in this investigation, the Commission has determined to issue an LEO prohibiting
the unlicensed importation of gas spring nailer products and components thereof that infringe
one or more of claims 1, 10, and 16 of the ’718 patent.

PUBLIC VERSION
85
Before the ALJ, Hitachi requested, should an LEO issue, that it “(i) exempt products
imported into the United States prior to the effective date of the order; (ii) exclude components;
(iii) allow Respondent to import components for service and repair of Accused Products already
in the United States; and (iv) include a certification provision.” 	RD at 56 (citing Hitachi’s
Initial Post-Hearing Br. at 25; Hitachi’s Post-Hearing Reply Br. at 58-59). 	With respect to an
exemption for the service and repair of products imported before the effective date of an
exclusion order, the Commission has granted such exemptions when unopposed, in view of the
public interest, or upon some showing of a need for service and repair. 	See, e.g., Certain
Electronic Digital Media Devices and Components Thereof, Inv. No. 337-TA-796, Comm’n Op.
at 121-22 (Sept. 6, 2013) (granting exemption for two years where complainant did not object to
exemption limited to two years); Certain Automated Teller Machines, ATM Modules,
Components Thereof and Products Containing the Same, Inv. No. 337-TA-972, Comm’n Op. at
26-27 (June 12, 2017) (exempting importation of replacement parts for service and repair of
ATMs imported before date of remedial orders “in view of the interests of U.S. consumers”
where numerous customers submitted letters citing harm without exemption); 	Certain Magnetic
Data Storage Tapes and Cartridge Containing the Same, Inv. No. 337-TA-1012, Comm’n Op. at
126-27 (Apr. 2, 2018) (exempting replacement cartridges “which [respondents] certif[y] are
necessary for replacement under its warranty agreements” and where respondents’ public interest
submissions described their warranty obligations). 	However, unlike these cases, Hitachi here
has made no showing or argument as to why such an exemption is necessary, and there is no
record evidence, much less argument, of harm to U.S. consumers or adverse effect on other

PUBLIC VERSION
86
public interest factors that would warrant an exemption.21 	The Commission therefore does not
include any such exemption regarding replacement parts for previously-imported products in the
issued LEO.
Section 337 also provides that in addition to, or in lieu of, the issuance of an exclusion
order, the Commission may issue a CDO as a remedy for violation of section 337. 	See 19
U.S.C. § 1337(f)(1). 	The Commission generally issues a CDO directed to a domestic
respondent when there is a “commercially significant” amount of infringing, imported product in
the United States that could be sold or significant business operations in the United States so as
to undercut the remedy provided by an exclusion order. 	See Certain Condensers, Parts Thereof
and Products Containing Same, Including Air Conditioners for Automobiles, Inv. No. 337-TA-
334, Comm’n Op. at 26-28 (Aug. 27, 1997); Certain Crystalline Cefadroxil Monohydrate, Inv.
No. 337-TA-293, USITC Pub. 2391, Comm’n Op. at 37-42 (June 1991); see also Certain Table
Saws Incorporating Active Injury Mitigation Technology and Components Thereof, Inv. No. 337-
TA-965, Comm’n Op. at 6-7, n.2 (Feb. 1, 2017).22 	Complainants bear the burden of proving
that a respondent has commercially significant inventory or business operations in the United
States. 	Certain Integrated Repeaters, Switches, Transceivers & Products Containing Same, Inv.
No. 337-TA-435, Comm’n Op., 2002 WL 31359028 (Aug. 16, 2002).
21 Hitachi makes no arguments before the Commission regarding the public interest. 	See
Hitachi’s Sub. at 10-12.
22 When the presence of infringing domestic inventory or domestic operations is asserted as the
basis for a CDO under section 337(f)(1), Commissioner Schmidtlein does not adopt the view that
the inventory or domestic operations needs to be “commercially significant” in order to issue the
CDO. 	See, e.g., Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-
1058, Comm’n Op. at 65, n.24 (Mar. 25, 2019); Table Saws, Comm’n Op. at at 6-7, n.2 (Feb. 1,
2017). 	In Commissioner Schmidtlein’s view, the presence of some infringing domestic inventory
or domestic operations, regardless of its commercial significance, provides a basis to issue a CDO.
Id.

PUBLIC VERSION
87
Kyocera requests issuance of a CDO against Hitachi. 	See Kyocera’s Sub. on Remedy at
2-3. 	Hitachi makes no arguments before the Commission regarding a CDO. 	See Hitachi’s Sub.
at 10-12. 	The Commission finds that issuance of a CDO is warranted here because the record
supports the presence of a “commercially significant” inventory maintained by Hitachi. 	RD at
57-58 (citing CX-109C.0021, .0023; Kyocera’s Initial Post-Hearing Br. at 59).
B. 	Public Interest
Before issuing a remedy for a violation of section 337, the Commission must consider the
effect of the remedy on certain public interest considerations: 	(1) the public health and welfare,
(2) competitive conditions in the U.S. economy, (3) the U.S. production of articles that are like
or directly competitive with those which are the subject of the investigation, and (4) U.S.
consumers. 	19 U.S.C. §§ 1337(d)(1), (f)(1).
Kyocera submits that the public interest factors do not weigh against the proposed
remedy in this investigation. 	Kyocera’s Sub. on Remedy at 3-5. 	Kyocera submits that
excluding infringing gas spring nailer products and components thereof raises no public interest
concerns because: 	(1) the infringing products do not fulfill any essential public health or
welfare objective; (2) complainant and others already provide a sufficient supply of competitive
articles in the United States; and (3) the remedial orders would affect only one of the many
suppliers of powered nailer products and components in the domestic market. 	Id. at 3.
Specifically, Kyocera submits that powered nailers using technologies other than gas spring, e.g.,
combustion, pneumatic, and flywheel powered nailers, are all practical alternatives to the gas
spring nailers protected by the ’718 patent. 	Id. at 4. 	Kyocera submits that these alternative
powered nailers are freely available from a variety of sources including Hitachi. 	Id. (citing
respondent’s website selling these alternative powered nailer products).

PUBLIC VERSION
88
After considering the public interest factors, the Commission finds that issuing an LEO or
CDO will not adversely affect the public interest. 	Specifically, based on the record before the
Commission, there is no indication that excluding the infringing products will negatively affect
the public health and welfare, competitive conditions in the U.S. economy, the production of
articles in the United States that are like or directly competitive with the subject articles, or U.S.
consumers of these products. 	Accordingly, the Commission has determined to issue an LEO
and a CDO.
C. 	Bond
Upon the entry of a remedial order, a respondent may continue to import and sell its
products during the sixty (60) day period of Presidential review subject to posting a bond. 	19
U.S.C. § 1337(j)(3). 	The amount of the bond is determined by the Commission and must be
sufficient to protect a complainant from any injury. 	Id.; 19 C.F.R. § 210.50(a)(3).
The Commission finds that no bond is required during the period of Presidential review
because Kyocera has failed to provide a sufficient explanation or evidence to support its bond
request. 	RD at 59-60.
V. 	CONCLUSION
The Commission has determined that there has been a violation of section 337. 	The
Commission has determined to issue: 	(1) an LEO prohibiting the unlicensed entry of gas spring
nailer products and components thereof that infringe one or more of claims 1, 10, and 16 of the
’718 patent; and (2) a CDO directed to Hitachi. 	The Commission has further determined that
the public interest factors do not weigh against issuing these remedial orders. 	Finally, the
Commission has determined to impose no bond during the period of Presidential review.

PUBLIC VERSION
89
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: 	April 28, 2020

CERTAIN GAS SPRING NAILER PRODUCTS AND
COMPONENTS THEREOF
Inv. No. 337-TA-1082
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Opinion, Commission has been served
via EDIS upon the following parties as indicated, on April 28, 2020.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Kyocera Senco Brands, Inc.:
Robert S. Riggs, Esq.
VEDDER PRICE PC
222 North LaSalle Street, Suite 2600
Chicago, IL 60601-1003
Email: rrigg@vedderprice.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download
On Behalf of Respondents On Behalf of Respondents Hitachi Koki
U.S. A., Limited:
Paul Devinsky, Esq.
McDERMOTT WILL & EMERY LLP
500 North Capitol Street, NW Washington, DC 20001
Email: pdevinsky@mwe.com
☐ Via Hand Delivery
☐ Via Express Delivery
☐ Via First Class Mail
☒ Other: Email Notification of
Availability for Download

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington,D.C.
In the Matter of
CERTAIN GAS SPRING NAILER
PRODUCTS AND COMPONENTS
THEREOF
Investigation No.337-TA-1082
NOTICE OF COMMISSION DETERMINATION TO REVIEW IN PART A REMAND
INITIAL DETERMINATION FINDING NO VIOLATION OF SECTION 337; REQUEST
FOR WRITTEN SUBMISSIONS ON REMEDY,BONDING,AND THE PUBLIC
INTEREST
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that the U.S. International Trade Commission ("the
Commission")has determined to review in part a remand initial determination("RID")ofthe
presiding administrative law judge("AU")finding no violation of section 337. The
Commission is also requesting written submissions on remedy, bonding, and the public interest.
FOR FURTHER INFORMATION CONTACT: Clint Gerdine, Esq., Office ofthe General
Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, D.C. 20436,
telephone(202)708-2310. Copies of non-confidential documents filed in connection with this
investigation are or will be available for inspection during official business hours(8:45 a.m. to
5:15 p.m.)in the Office ofthe Secretary, U.S. International Trade Commission, 500 E Street,
SW., Washington, D.C. 20436,telephone(202)205-2000. General information concerning the
Commission may also be obtained by accessing its Internet server at https;//www.usitc.gov. The
public record for this investigation may be viewed on the Commission's electronic docket
(EDIS)at https://edis.usitc.gov. Hearing-impaired persons are advised that information on this
matter can be obtained by contacting the Commission's TDD terminal on(202)205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on
November 20,2017, based on a complaint filed on behalf of Kyocera Senco Brands Inc.
("Kyocera")of Cincinnati, Ohio. 82 Fed. Reg. 55118-19(Nov. 20, 2017). The complaint, as
amended and supplemented, alleges violations of section 337 ofthe Tariff Act of 1930, as
amended, 19 U.S.C. 1337, based upon the importation into the United States, the sale for
importation, and the sale within the United States after importation of certain gas spring nailer
products and components thereof by reason of infringement of certain claims of U.S. Patent Nos.

8,011,547("the '547 patent"); 8,267,296("the '296 patent"); 8,27,297("the '297 patent");
8,387,718 ("the '718 patent"); 8,286,722("the '722 patent"); and 8,602,282("the '282 patent").
The complaint further alleges the existence of a domestic industry. The Commission's notice of
investigation named as a respondent Hitachi Koki U.S.A., Ltd.("Hitachi") of Braselton, Georgia.
The Office of Unfair Import Investigations is not participating in the investigation. The '547
patent has been terminated from the investigation and the notice ofinvestigation was amended to
add claim 30 ofthe '297 patent to the investigation. Order No. 13(June 4, 2018), unreviewed
by Comm'n Notice (June 22, 2018); Order No. 15 (June 19, 2018), unreviewed by Comm'n
Notice (July 9, 2018), 83 Fed. Reg. 32685-66 (July 15, 2018). Prior to the evidentiary hearing,
the parties stipulated that the '718 patent is the only remaining patent at issue since no violation
could be shown as to the '296,'297,'722, and '282 patents based on an evidentiary ruling
limiting the scope oftestimony of Kyocera's expert. See ID at 1-2.
On June 7, 2019, the AUJ issued a final ID finding no violation of section 337 as to the
'718 patent based on non-infringement and the failure of Kyocera to establish the existence of a
domestic industry that practices the '718 patent. Specifically, the ID finds that neither Hitachi's
accused products nor Kyocera's domestic products satisfy the "system controller" limitation of
the asserted claims.
On August 14, 2019,the Commission determined to review the ID and remand in part.
See Comm'n Notice(Aug. 14, 2019). Specifically, the Commission determined to review the
ID's finding that Kyocera did not establish: (1)either direct or induced infringement ofthe
asserted claims ofthe '718 patent; and(2)practice ofthe asserted claims by Kyocera's DI
products to satisfy the domestic industry requirement. The Commission also determined to
review the ID's finding that Kyocera demonstrated sufficient activities and investments relating
to the articles protected by the '718 patent to satisfy the domestic industry requirement. Id
Also, the Commission remanded the issues of whether Kyocera has established, by a
preponderance ofthe evidence, that: (1)the remaining limitations (irrespective ofthe "system
controller" limitation) of the asserted claims ofthe '718 patent are met by Hitachi's accused
products;(2)the remaining limitations ofthe asserted claims are practiced by Kyocera's
domestic industry products; and (3)Hitachi induced infringement ofthe asserted claims. Id.
On October 28,2019,the AUJ issued the subject RID finding no violation ofsection 337
as to the '718 patent based on non-infringement and the failure of Kyocera to establish the
existence of a domestic industry that practices the '718 patent. Specifically, the RID finds that:
(1)neither Hitachi's accused products nor Kyocera's domestic industry("DI")products satisfy
the "displacement volume" limitation(Le.,"(A)a hollow cylinder comprising a cylindrical wall
with a movable piston therewith, said hollow cylinder containing a displacement volume created
by a stroke of said piston") and the "initiating a driving cycle" limitation (i.e., "initiating a
driving cycle by pressing said exit end against a workpiece and actuating said trigger, thereby
causing said fastener driving mechanism to force the driver member to move toward said exit
end and drive a fastener into said workpiece")ofthe asserted claims and(2)Kyocera fails to
establish that Hitachi possesses the requisite specific intent to induce infringement ofthe claims.
2

On November 12, 2019, Kyocera petitioned, and Hitachi contingently petitioned, for
review ofthe RID. On November 20,2019, Kyocera and Hitachi each filed a response in
opposition to the other party's petition for review.
Having reviewed the record ofthe investigation, including the parties' briefing, the
Commission has determined to review the subject RID in part. Specifically, the Commission
has determined to review the RID's finding that Kyocera did not establish: (1)direct
infringement ofthe asserted claims with respect to the "displacement volume" and "initiating a
driving cycle" limitations;(2)practice of the asserted claims by its DI products with respect to
these limitations; and(3)induced infringement ofthe asserted claims. The Commission has
determined not to review the remainder ofthe RID.
The Commission also requests that the parties brief the following questions on review:
1. With respect to the economic prong ofthe domestic industry requirement, did the
ID address the contextual analysis required by our precedent to determine if
Kyocera's investments are significant? See, e.g., Certain Carburetors and
Products Containing Such Carburetors, Inv. No. 337-TA-1123, Comm'n Op. at
17-19(Oct. 28, 2019). If not, does the record evidence support a finding that
Kyocera satisfies this requirement?
2. Did Hitachi present any argument(s) concerning contextual analysis in its petition
for review? If so, please identify the argument(s) and the relevant petition pages,
evidence, and authorities cited on the issue.
3. Does the RID's interpretation and application ofthe "initiating a driving cycle"
limitation exclude the embodiments depicted in Figures 1 and 16 ofthe '718
patent?
Responses or replies to the briefing questions should not exceed 30 pages.
In connection with the final disposition ofthis investigation, the Commission may(1)
issue an order that results in the exclusion ofthe subject articles from entry into the United
States, and/or(2)issue one or more cease and desist orders that could result in the respective
respondent being required to cease and desist from engaging in unfair acts in the importation and
sale of such articles. Accordingly, the Commission is interested in receiving written
submissions that address the form of remedy, if any, that should be ordered. If a party seeks
exclusion of an article from entry into the United States for purposes other than entry for
consumption, the party should so indicate and provide information establishing that activities
involving other types of entry either are adversely affecting it or likely to do so. For
background,see Certain Devicesfor Connecting Computers via Telephone Lines, Inv. No. 337-
TA-360, USITC Pub. No. 2843(December 1994)(Commission Opinion).
3

When the Commission contemplates some form ofremedy, it must consider the effects of
that remedy upon the public interest. The factors the Commission will consider include the
effect that an exclusion order and/or cease and desist orders would have on(1)the public health
and welfare,(2)competitive conditions in the U.S. economy,(3)U.S. production of articles that
are like or directly competitive with those that are subject to investigation, and(4)U.S.
consumers. The Commission is therefore interested in receiving written submissions that
address the aforementioned public interest factors in the context ofthis investigation.
When the Commission orders some form ofremedy, the U.S. Trade Representative, as
delegated by the President, has 60 days to approve or disapprove the Commission's action. See
section 337(j), 19 U.S.C. § 1337(j) and the Presidential Memorandum of July 21,2005. 70 Fed.
Reg. 43251 (July 26, 2005). During this period, the subject articles would be entitled to enter
the United States under bond, in an amount determined by the Commission. The Commission is
therefore interested in receiving submissions concerning the amount ofthe bond that should be
imposed if a remedy is ordered.
WRITTEN SUBMISSIONS: The parties to the investigation are requested to file written
submissions on the issues under review that specifically address the Commission's questions set
forth in this notice. The submissions should be concise and thoroughly referenced to the record
in this investigation. Parties to the investigation, interested government agencies, and any other
interested parties are encouraged to file written submissions on the issues of remedy, bonding,
and the public interest. Such submissions should address the recommended determination by
the AUJ on remedy and bonding.
Complainant is also requested to submit proposed remedial orders for the Commission's
consideration. Complainant is also requested to state the date that the asserted patent expires,
the HTSUS numbers under which the accused products are imported, and to supply the names of
known importers ofthe products at issue in this investigation. The responses to the questions on
review, written submissions, and proposed remedial orders must be filed no later than close of
business on January 3, 2020. Reply submissions must be filed no later than the close of
business on January 10, 2020. No further submissions on these issues will be permitted unless
otherwise ordered by the Commission.
Persons filing written submissions must file the original document electronically on or
before the deadlines stated above and submit eight true paper copies to the Office ofthe
Secretary pursuant to Section 210.4(0 ofthe Commission's Rules of Practice and Procedure(19
CFR 210.4(0). Submissions should refer to the investigation number ("Inv. No. 337-TA-1082")
in a prominent place on the cover page and/or the first page. (See Handbook on Filing
Procedures, hups://www.usitc.gov/documents/handbook on_filing_procedures.x16. Persons
with questions regarding filing should contact the Secretary at(202)205-2000.
Any person desiring to submit a document to the Commission in confidence must request
confidential treatment unless the information has already been granted such treatment during the
proceedings. All such requests should be directed to the Secretary ofthe Commission and must
4

include a full statement ofthe reasons why the Commission should grant such treatment. See 19
CFR 210.6. Documents for which confidential treatment by the Commission is sought will be
treated accordingly. A redacted non-confidential version ofthe document must also be filed
simultaneously with any confidential filing. All information, including confidential business
information and documents for which confidential treatment is properly sought, submitted to the
Commission for purposes ofthis Investigation may be disclosed to and used: (i) by the
Commission, its employees and Offices, and contract personnel(a)for developing or
maintaining the records ofthis or a related proceeding, or(b)in internal investigations, audits,
reviews, and evaluations relating to the programs, personnel, and operations ofthe Commission
including under 5 U.S.C. Appendix 3; or (ii) by U.S. government employees and contract
personnel', solely for cybersecurity purposes. All non-confidential written submissions will be
available for public inspection at the Office ofthe Secretary and on EDIS.
The authority for the Commission's determination is contained in section 337 ofthe
Tariff Act of 1930, as amended, 19 U.S.C. 1337, and in part 210 ofthe Commission's Rules of
Practice and Procedure, 19 CFR part 210.
By order ofthe Commission.
Lisa R. Barton
Secretary to the Commission
Issued: December 12, 2019
All contract personnel will sign appropriate nondisclosure agreements.
5

CERTAIN GAS SPRING NAILER PRODUCTS AND Inv. No.337-TA-1082
COMPONENTS THEREOF
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served upon the
following parties as indicated, on December 12,2019.
$:	r2el	a:	)
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW,Room 112
Washington, DC 20436
On Behalf of Complainants Kyocera Senco Brands,Inc.:
Robert S. Riggs, Esq.
VEDDER PRICE PC
222 North LaSalle Street, Suite 2600
Chicago, IL 60601-1003
On Behalf of Respondents Hitachi Koki U.S. A. Limited:
Paul Devinsky, Esq.
McDERMOTT WILL & EMERY LLP
500 North Capitol Street, NW
Washington, DC 20001
1=1 Via Hand Delivery
1=1 Via Express Delivery
El Via First Class Mail
El Other:
1=1 Via Hand Delivery
1=1 Via Express Delivery
CE) Via First Class Mail
1=1 Other:

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
Inv. N0. 337-TA-1082
CERTAIN GAS SPRING NAILER PRODUCTS 	(Remand)AND COMPONENTS THEREOF
REMAND INITIAL DETERMINATION ON VIOLATION OF SECTION 337
Chief Administrative Law Judge Charles E. Bullock
(October 28, 2019)
Pursuant to the Notice of Investigation, this is the Remand Initial Determination in the
Matter of Certain Gas Spring Nailer Products and Components Thereof, Investigation No. 337
TA-1082.

TABLE OF CONTENTS
INTRODUCTION ................. ..
A. Procedural History .......
B. Products at Issue ..........
1. The Accused Products ..............
2. The Domestic Industry Products .......................................................... ..
RELEVANT LAW ................ ..
A. Infringement ............... ..
l.i 	LiteralInfringement
2. Indirect Infringement ........
a) Induced Infringement..........
B. Domestic Industry .......
1. Technical Prong .................................................................................. ..
U.S. PATENT NO. 8,387,71 8
A. Direct Infringement ......
1. Claim 1........... ..
.......-.. 	.........
.................................................................................... ..5
.................................................................................... ..5
.................................................................................... ..5
a) “A method for controlling a fastener driving tool, said method
comprisingz”............................................................................ ..
b) “providing a fastener driving tool that includes:”......
ii.
iii.
iv.
v.
vi.
vii.
viii.
ix.
1 	E6 (i) a h0using;” ............................................................ ..
“(ii) a system controller;” ......................................... ..
“(iii) a safety contact element;”
“(iv) a user-actuated triggerg”
“v) a fastenerg” ......................................................... ..
“(vi) a prime mover that moves a lifter member
which moves a driver member away from an exit end
ofthe mechanism; and” ....
(a) “aliftermember”
(b) “a driver member”...................................l1
(c) “a prime mover”......................................ll
“(vii) a fastener driving mechanism that moves
said driver member toward said exit end of the
mechanism,” ...........................................................l2
“said fastener driving mechanism including: (A) a
hollow cylinder comprising a cylindrical wall
with a movable piston therewithin, said hollow
cylinder containing a displacement volume created
by a stroke of said piston, and” ............................ ..13
“(B) a main storage chamber that is in fluidic
communication with said displacement volume
of the cylinder, wherein said main storage chamber
and said displacement volume are initially charged
with a pressurized gas;” ....................................... ..15
i

X.
xi.
xii.
xiii.
“(b) selecting, by a user, an operating mode of said
driving cycle to be one of: a “bottom firing mode,”
and a “restrictive firing mode;” wherein:” ............. 16
“(i) if said restrictive firing mode is selected,
said tool will operate if said safety contact element
has been actuated before said trigger actuator has
been operated; and (ii) if said bottom firing mode is
selected, said tool will operate if both: (A) said
trigger actuator has been operated, and (B) said
safety contact element has been actuated, in either
sequence;” ............................................................ ..19
(c) initiating a driving cycle by pressing said
exit end against a workpiece and actuating
said trigger, thereby causing said fastener driving
mechanism to force the driver member to move
toward said exit end and drive a fastener into said
workpiece; and” ................................................... ..20
“(d) actuating said prime mover, thereby moving
said lifter member and causing said driver member
to move away from said exit end toward a ready
position.” .............................................................. ..22
c) Conclusion ............................................... ..
Claims l0 and 16 ...................................................... ..
Indirect Infringement ..........
Induced Infringement .................................................. ..
Domestic Industry - Technical Prong .......................................
Claim 1................................................. ......... ......
a) “A methodfor controlling a fastener driving tool, said method
comprising:” .................................................... ..
b) “providing a fastener driving tool that includes
111.
IV.
V.
VI.
vii.
1. “(i) a housing,” ........................................................ ..
11 	5‘ 	,7	(ii) a system controller; ....
“(iii) a safety contact element;”
(iv) a user-actuated trigger;
“v) a fastener;” .........................................................28
“(vi) a prime mover that moves a lifler member
which moves a driver member away from an exit end
ofthe mechanism; and” ........... ........... ......29
(d) “aliftermember”
(e) “a driver member” .... 	.........30
(f) “a prime mover” .................................... ..31
“(vii) a fastener driving mechanism that moves
said driver member toward said exit end of the
mechanism,” ......................................................... ..32
viii. “said fastener driving mechanism including: (A) a
hollow cylinder comprising a cylindrical wall
ii

IX.
X.
xi.
xii.
x111.
xiv.
CONCLUSIONS OP LAW
with a movable piston therewithin, said hollow
cylinder containing a displacement volume created
by a stroke of said piston, and” ..............................33
“(B) a main storage chamber that is in fluidic
communication with said displacement volume
of the cylinder, wherein said main storage chamber
and said displacement volume are initially charged
with a pressurized gas;” ....................................... ..34
“(b) selecting, by a user, an operating mode of said
driving cycle to be one of: a “bottom firing mode,”
and a “restrictive firing mode;” wherein:” .............35
“(i) if said restrictive firing mode is selected,
said tool will operate if said safety contact element
has been actuated before said trigger actuator has
been operated; and”.............................................. ..35
(ii) if said bottom firing mode is selected, said tool
will operate if both: (A) said trigger actuator has
been operated, and (B) said safety contact element
has been actuated, in either sequencef’ ..................36
(0) initiating a driving cycle by pressing said
exit end against a workpiece and actuating
said trigger, thereby causing said fastener driving
mechanism to force the driver member to move
toward said exit end and drive a fastener into said
workpiece; and” ................................................... ..36
“(d) actuating said prime mover, thereby moving
said lifter member and causing said driver member
to move away from said exit end toward a ready
position.” .............................................................. ..38
c) Conclusion ....................................................................... ..38
Claims 10 and 16. .............................................................................. ..39
.............................................................................. ..39
INITIAL DETERMINATION ............................................................................. ..39
iii

PUBLIC VERSION
I. INTRODUCTION
A. Procedural History
On June 7, 2019, the undersigned issued a final initial determination (“ID”) finding no
violation of section 337 on the basis of noninfringement and the failure of Complainant to establish
the existence of a domestic industry that practices the asserted patent.
On August l4, 2019, the Commission detennined to review the ID and remand the ID in
part. (Notice of Comm’n Determination to Review In Part and Remand in Part a Final ID Finding
No Violation of Section 337; see also Comm’n Order: Remand of ID in Part (Aug. 15, 2019)
(“Remand Order”).) Specifically, the Commission determined “to review‘the ID’s finding that
Kyocera did not establish: (1) either direct or induced infringement of the asserted claims; and (2)
practice of the asserted claims by Kyocera’s domestic industry products to satisfy the domestic
industry requirement.” (Remand Order at 3.) The Commission also determined “to review the ID’s
finding that Kyocera demonstrated sufficient activities and investments relating to the articles
protected by the ‘7l8 patent to satisfy the domestic industry requirement.” (Id.) In view of the
Cormnission’s determination to review these issues, the Commission stated that certain “factual
and legal findings are necessary” and remanded the Investigation on the issues of whether Kyocera
has established, by a preponderance of the evidence, that: “(1) the remaining limitations
(irrespective of the ‘system controller’ limitation) of the asserted claims are met by Hitachi’s
accused products;' (2) the remaining limitations of the asserted claims are practiced by Kyocera’s
domestic industry products; and (3) Hitachi induced infringement of the asserted claims. (Id.)2
The Commission determined not to review the remainder of the ID. (Id.)
' In the ID, the undersigned noted that there were several undisputed limitations. (ID at 25 n.9) The Commission has
nevertheless directed the undersigned to make findings regarding all limitations, not just those in dispute.
2The Cornrnission specifically ordered the undersigned to “issue his RID expeditiously based on the existing record.”
(Remand Order at 3.) Accordingly, the undersigned did not request additional briefing from the parties.
-1

PUBLIC VERSION
B. Products at Issue
1. The Accused Products
Complainant has accused five gas spring nailers of infringing the ’718 patent: the
NT1850DE, NT1865DM, NT1865DMA, NR1890DC, and NR1890DR nailers (collectively, the
“Accused Products”). (ID at 3.)
~ 	2. The Domestic Industry Products
Complainant has asserted that its FUSION F-18, F-16S, F-16A, and F-15 finish nailers
(collectively, the “Finishing Nailers”), as Well as
(collectively, the “DI Products”), practice at least one claim of the asserted patent. (Id.)
II. RELEVANT LAW
A. Infringement
In a section 337 investigation, the complainant bears the burden of proving infringement
of the asserted patent claims by a preponderance of the evidence. Spansion, Inc. v. Int’l Trade
Comm’n, 629 F.3d 1331, 1349 (Fed. Cir. 2010). This standard “requires proving that infringement
was more likely than not to have occurred.” Warner-Lambert C0. v. Teva Pharm. USA,lnc., 418
F.3d 1326, 1341 n.15 (Fed. Cir. 2005).
1. Literal Infringement
Literal infringement is a question of fact. Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d
1323, 1332 (Fed. Cir. 2008). Literal infringement requires the patentee to prove that the accused
device contains each limitation of the asserted c1aim(s). If any claim limitation is absent, there is
no literal infringement of that claim as a matter of law. BayerAG v. Elan Pharm. Research Corp.,
212 F.3d 1241, 1247 (Fed. Cir. 2000).
_2_

PUBLIC VERSION
2. Indirect Infringement
Indirect infringement may be either induced or contributory. Direct infringement must first
be established in order for a claim of indirect infringement to prevail. BMC Res. v. Paymentech,
498 F.3d 1373, 1379 (Fed. Cir. 2007).
a) Induced Infringement
Section 271(b) of the Patent Act provides: “Whoever actively induces infringement of a
patent shall be liable as an infringer.” 35 U.S.C. §271(b) (2008). To establish liability, the patent
holder must prove that “once the defendants knew of the patent, they ‘actively and knowingly
aid[ed] and abett[ed] another’s direct infringement.’” DSU Med. Corp. v. JMS C0., Ltd. 471 F.3d
1293, 1305 (Fed. Cir. 2006) (en banc) (citations omitted). A finding of induced infringement
requires “evidence of culpable conduct, directed to encouraging another’s infringement, not
merely that the inducer had knowledge of the direct infringer’s activities.” Id. at 1306. Although
§271(b) requires knowledge that the induced acts constitute patent infringement, the Supreme
Comt has held that liability will also attach when the defendant is willfully blind. Global-Tech
Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068-2069 (2011). The burden is on the complainant
to prove that the respondent had the specific intent and took action to induce infringement. DSU,
471 F.3d at 1305~06. Intent may be proven by circumstantial evidence. Lucent Tech., Inc. v.
Gateway, Inc., 580 F.3d 1301, 1322 (Fed. Cir. 2009).
B. Domestic Industry
In a patent-based complaint, a violation of section 337 can be found “only if an industry in
the United States, relating to the articles protected by the patent . . . concerned, exists or is in the
process of being established.” 19 U.S.C. § 1337(a)(2). Under Commission precedent, this
“domestic industry requirement” of section 337 consists of an economic prong and a technical
_3_

PUBLIC VERSION
prong. Certain Stringed Musical Instruments and Components Thereofi Inv. N0. 337-TA-586,
Comm’n Op. at 12-14, 2009 WL 5134139 (U.S.I.T.C. Dec. 2009). The complainant bears the
burden of establishing that the domestic industry requirement is satisfied. See Certain Set-Top
Boxes and Components Thereo)’,Inv. No. 337-TA-454, Final Initial Determination at 294, 2002
WL 31556392 (U.S.I.T.C. June 21, 2002) (unreviewed by Commission in relevant part).
1. Technical Prong
The technical prong of the domestic industry requirement is satisfied when the complainant
in a patent-based section 337 investigation establishes that it is practicing or exploiting the patents
at issue. See 19 U.S.C. § 1337(a)(2) and (3); Certain Jllicrosphere Adhesives, Process for Making
Same and Prods. Containing Same, Including Self-Stick Reposilionable Notes, Inv. No. 337-TA
366, Comm’n Op. at 8, 1996 WL 1056095 (U.S.I.T.C. Jan. 16, 1996). “The test for satisfying the
‘technical prong’ of the industry requirement is essentially [the] same as that for infringement, i.e.,
a comparison of domestic products to the asserted claims/’All'0c, Inc. v. Int’! Trade Comm’n, 342
F.3d 1361, 1375 (Fed. Cir. 2003). To prevail, the patentee must establish by a preponderance of
the evidence that the domestic product practices one or more claims of the patent, either literally
or under the doctrine of equivalents. Bayer, 212 F.3d at 1247. It is sufficient to show that the
products practice any claim of that patent, not necessarily an asserted claim of that patent. Certain
Mcrosphere Adhesives, Comm’n Op. at 7-16.
_4_

PUBLIC VERSION
III. U.S. PATENT NO. 8,387,718
Complainant is asserting claims 1, 10, and 16 against Respondents. (ID at 21.) Complainant
is relying on those same claims for the technical prong of the domestic industry requirement. (CIB
at 26.)
A. Direct Infringement
1. Claim 1
a) “A method for controlling a fastener driving tool, said method
comprising:”
Neither party contends that the preamble is limiting.3 (See CPHB at 283; RIB at 17-25.)
Thus, it is not necessary to address whether the Accused Products disclose this limitation.
b) “providing a fastener driving tool that includes:”
i. “(i) a housing;” »
Complainant argues that the Accused Products meet this limitation. (CIB at 17.)
Respondent does not dispute that the limitation is met. (See generally RIB at 17-25 (“Respondent
is not disputing the presence of any elements of the Asserted Claims not specifically addressed
beloW.”).)
The evidence shows that the Accused Products include two housing shells. (CDX
0OO1C.0O23;CX-0110C at Q/As 90, 190.) Thus, the undersigned finds that the Accused Products
meet this limitation.
“(ii) a system controller;”
The undersigned previously determined that the Accused Products do not practice this
limitation. (See ID at 25-29.)
3 It is well established law that the preamble generally does not limit the claims. Georgetown Rail Equipment C0. v.
H0llandL.P., 867 F.3d 1229, 1236 (Fed. Cir. 2017)
-5

PUBLIC VERSION
iii. “(iii) a safety contact element;”
Complainant argues that the Accused Products meet this limitation. (CIB at 18.)
Respondents do not dispute that the limitation is met. (See generally RIB at 17-25 (“Respondent
is not disputing the presence of any elements of the Asserted Claims not specifically addressed
below.”).)
The evidence shows that the Accused Products include a device that when engaged allows
operation of the fastener driving tool. (JX-O0l9C.OO22(explaining that the Accused Products will
not operate unless the safety contact element is engaged); see also CX—0l10C at Q/As 163, 192.)
The undersigned therefore finds that the Accused Products meet this limitation.
iv. “(iv) a user-actuated trigger;”
Complainant argues that the Accused Products meet this limitation. (CIB at 18.)
Respondent does not dispute that the limitation is met. (See generally RIB at l7-25 (“Respondent
is not disputing the presence of any elements of the Asserted Claims not specifically addressed
below.”).)
The evidence shows that the Accused Products include a trigger. (CDX-0O0lC.0052,
.0054; CX-0110C at Q/As 164, 193, 216.) The Instruction and Safety Manualifor the Accused
Products explains that a user must “pull the trigger” to begin a driving stroke. (JX-00l9C.0O22.)
Thus, the undersigned finds that the Accused Products meet this limitation.
v. “v) a fastener;”
Complainant argues that Respondent’s Instruction and Safety Manuals direct end users to
use the Accused Products with fasteners. (CIB at 18 (citing JX-0Ol9C.00l4; CX-0110C at Q/A
198; CDX-0001C.0055; RX-0266C at Q/A 45).) Complainant contends that direct infringement
necessarily exists here because Respondent’s Instruction and Safety Manuals and marketing videos
_ 6 _

PUBLIC VERSION
instruct end users to use the Accused Products in a manner that necessarily performs this step.
(CRB at 6 (citing CIB at 14-16, 18).)
Respondent asserts that Complainant must prove that a user actually performed the step of
“providing . . . a fastener” to show infringement of claim 1. (RIB at 18 (citing DSU Med. Corp. v.
JMS C0., 471 F.3d 1293, 1306 (Fed. Cir. 2006); ePlus, Inc. v. Lawson Software, Inc., 789 F.3d
1349, 1360 (Fed. Cir. 2015); Joy Techs, Inc. v. Flakz‘,Inc., 6 F.3d 770, 775 (Fed. Cir. 1993)).)
Thus, according to Respondent, “[b]y simply asserting that the Accused Products are designed to
fire fasteners and that the Instruction and Safety Manual ‘instruc[s] users to use the Accused
Products with fasteners,’ [Complainant] did not meet its burden to show that a person actually
practiced this step in conjunction with the other steps of the claimed method.” (Id.; see also RRB
at 9.)
The undersigned finds Respondent’s argument unpersuasive. According to the Federal
Circuit, “[d]irect infringement can be proven by circumstantial evidence.” Toshiba C0rp., 681 F.3d
at 1364 (citing Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1326 (Fed. Cir. 2009)).
Moreover, “where an alleged infringer designs a product for use in an infringing way and instructs
users to use the product in an infringing way, there is sufficient evidence for a jury to find direct
infringement.” Id. at 1365. Indeed, the Federal Circuit has fO1.1.I1d	product instructions to be at least
circumstantial evidence of infringement for any claim elements taught by the instructions. See
Tinnus Enterprises, LLC v. Telebrands C0rp., 846 F.3d 1190, 1204-05 (Fed. Cir. 2017) (“We are
aware of no case law prohibiting a court from relying on product instructions to find direct
infiingement.”). 	'
Here, the undersigned finds that Respondent’s Instruction and Safety Manuals clearly show
that Respondent designed the Accused Products to be used with fasteners and specifically instructs
_'7_

PUBLIC VERSION
end users to use the Accused Products with fasteners. For example, Respondent’s Instruction and
Safety Manuals state what action to take to “drive the fastener” and specify the applicable nail,
applicable nail length, and nail loading capacity. (See JX-00l9C.004, .0014-16; see also CX
0110C at Q/A 198; RX-0266C at Q/A 45.) In addition, Respondent has not provided any evidence
that the Accused Products are used with anything other than fasteners. The undersigned therefore
finds that Complainant has provided sufficient circumstantial evidence to prove direct
infringement of this claim element by a preponderance of the evidence.
vi. “(vi) a prime mover that moves a lifter member which
moves a driver member away from an exit end of the
mechanism; and”
(a) “a lifter member”
Complainant argues that the Accused Products include this element. (CIB at 18-19; CRB
at 7.) Complainant dismisses Dr. Vallee’s attempts to distinguish between a pin Wheel and a pin
Wheel assembly as “a logically inconsistent distinction,” as well as “inconsistent with his prior
testimony.” (Id. at 19 (citing Vallee, Tr. at 172:16-22,. 177:3-11; RX-0266C at Q/As 84-85, 94;
RX-0222C; RX-0221C; CX-0110C at Q/A 71).) According to Complainant, Dr. Vallee admitted
in his deposition that the pin wheel on the Accused Products includes all of the required elements
of the claimed “lifter member.” (CIB at 18-19 (citing Vallee, Tr. at 173:1-17712).)
Respondent disputes that Complainant has shown that this element is met. First,
Respondent argues that the only evidence provided by Complainant was a conclusory statement
from Dr. Pratt and a reference to a demonstrative exhibit. (RIB at 18-19 (citing CX-0110C at Q/As
67, 194).) Respondent also argues that the Accused Products do not meet this element because the
lifting pins are not “on” and do not “extend from” or “extend through” any “face surface.” (Id. at
l9-2,0.) Respondent explains that the “pin Wheelassembly of the Accused Products has lifting pins
_ 3 _

PUBLIC VERSION
disposed between the U-shaped outer perimeter surface and as a consequence do not extend from
any ‘face surface’ of the pin wheel assembly.” (Id. at 21.) Respondent further explains that the
pins only make contact at the outer perimeter of the roller pinion. (Id. (citing RX-0266C at Q/As
97-99; RDX-0002033).) According to Respondent, while Complainant asserts that the pin wheel
assembly is the claimed “lifter member,” what Dr. Pratt points to is not a “face surface” because
it is an “interior surface that is not outwardly facing or exposed.” (Id. at 20 (citing RX-0266C at
Q/A 94; Vallee, Tr. at 177:3-11, 189:4-10; RDX-0002033).)
The term “a lifter member” was detennined to mean a “rotatable component having lifting
pins on its face surface component having multiple teeth that is designed to drive a fastener into a
Workpiece.” (See Order No. 9 at 42.) The undersigned also clarified that “on its face surface”
includes “extend from” and “extend through.” (See Order No. 19 at 4 (Sept. 5, 2018).) Neither
Complainant nor Respondent disputes that the pin wheel4 in the Accused Products is a “rotatable
component having lifting pins.” (See RX-0266C at Q/As 85-99; CX-0110C at Q/As 67-71; Vallee,
Tr. at 173:1-12.) Thus, the crux of the dispute is whether the “lifting pins” of the pin wheel in the
Accused Products are “on its face surface.”
The evidence showslthat the “lifting pins” of the pin wheel are indeed “on its face surface.”
Dr. Pratt testified that “the lifter member of the Accused Products has four face surfaces, two inner
and two outer face surfaces.” (CX-01 10C at Q/A 71.) Dr. Pratt explained that the pins extend from
the inner face surface and “[t]here is no requirement that the face surface be an outer face surface.”
(Id.) The picture set forth below confirms that the lifting pins of the pin wheel in the Accused
Products are “on [the pin wheel’s] face surface.”
4 Respondent appears to refer to this component as both the “pin wheel” and “pin wheel assembly.” (See, e.g_.,RX
ozasc at Q/As ss-99.)
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PUBLIC VERSION
Face Surface
Lifting Pins
on Face
Surface
Lifter Member
(CDX-0001C.0010; see also CX-0110C at Q/As 67-71, 194; RDX-0002.030, .033, .036; RX
0214C.)
The undersigned is not persuaded by Dr. Vallee’s assertion that the face surface Dr. Pratt
identifies is not a “face surface” because “it is an interior surface that is not outward facing.” (RX
0266C at Q/A 94.) Neither Dr. Vallee nor Respondent identify anything in the claim construction
for this tenn or the ’7l 8 patent that would require the face surface to be outward facing. The
undersigned is also not persuaded by Dr. Vallee’s attempts to distinguish the Accused Products
from the ’7l 8 patent. Dr. Vallee asserts that the Accused Products “have a pinion gear that rotates
pmgl to the plane of the driver teeth and make contact at their outer penmeter” while the ’7l8
patent has lifting members that “rotate perpendicular to the plane of the driver teeth and make
contact at their face surface.” (See RX-0266C at Q/A 99.) Yet again, neither Dr. Vallee nor
Respondent identifies any requirement in the claim construction for this term or the ’7l8 patent
that requires the lifting members to make contact at their face surface rather than at their outer
perimeter.5 The undersigned therefore finds that the Accused Products meet this limitation.
5 The tmdersigned notes that the ’296 patent, not the ’7l8 patent, includes a limitation for a “lifter member which
exhibits a contact surface.” (Compare JX-0001, cl. l, with JX-0004, cl. 1.)
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PUBLIC VERSION
(b) “a driver member”
Complainant argues that the Accused Products include this element. (CLBat 20.)
Respondent asserts that Complainant has failed to prove this element is met. (RIB at 21
22.) According to Respondent, “[t]he only evidence provided by Senco in support of the presence
of this element is a conclusory statement from Dr. Pratt . . . and a reference, without explanation,
to certain pages of a demonstrative exhibit with labeled images.” (Id.) Respondent maintains:
“[D]emonstrative exhibits are not substantive evidence and a reference to them without
corresponding testimony explaining them is not sufficient to prove that this element is met.” (Id.
at 22.)
The term “a driver member” was determined to mean “component having multiple teeth
that is designed to drive a fastener into a workpiece.” (See Order No. 9 at 45.) The evidence shows
that the Accused Products include a component having multiple teeth that is designed to drive a
fastener into a workpiece. (CX-Oll0C at Q/As 66, 195; CDX-()O0lC.OO08-.0009.)Dr. Vallee,
Respondent’s expert, agrees. On cross-examination, he testified that the driver in the Accused
Products has multiple teeth and “contacts a fastener to drive it into a work piece.” (Vallee, Tr. at
180-1O-20;see also RX-0266C at Q/A 45 (confinning that the Accused Products include a “driver”
and are professional-grade cordless powered nailers used to drive nails into wood and other types
of material) .) The undersigned therefore finds that the Accused Products meet this limitation.
l 	(c) “a prime mover”
Complainant argues that the Accused Products include this limitation. (CIB at 20.)
Respondent does not dispute that the limitation is met. (See generally RIB at 17-25
(“Respondent is not disputing the presence of any elements of the Asserted Claims not specifically
addressed below.”).)
_]1_

PUBLIC VERSION
The evidence shows that the Accused Products meet this limitation. For example, CDX
0001C shows the connection between the claimed lifter member and the claimed prime mover via
a gearbox. (See id. at .0049; see also CX—0110Cat Q/As 160, 196; Pratt, Tr. at 138:16-25.)
vii. “(vii) a fastener driving mechanism that moves said
driver member toward said exit end of the mechanism,”
Complainant argues that the Accused Products meet this limitation. (CIB at 20.) According
to Complainant, “[a]s part of the driving stroke, the fastener driving mechanism forces the driver
member to move toward said exit end and drive a fastener into said workpiece.” (Id. (citing CX—
0110C at Q/A 203).) Complainant also contends that marketing materials and the instruction
manual sold with each Accused Product confirm that the Accused Products are “fastener driving
tools, which necessarily requires that they include a fastener driving mechanism.” (Id. at 21.)
Respondent asserts that the only evidence Complainant has provided to prove this
limitation is met is a conclusory statement from Dr. Pratt and a reference, without explanation, to
a page of a demonstrative exhibit. (RIB at 31.) Respondent argues that Dr. Pratt’s “naked and
conclusory” statement cannot carry Complainant’s burden. (Id. at 31-32 (arguing that “claim of
the claim 1 of the ’296 patent does not include a ‘fastener driving mechanism’ limitation and thus
there was no prior explanation for that limitation in Dr. Pratt’s testimony about claim 1 of the ’296
patent).) Respondent reiterates that “[d]emonstrative exhibits are not substantive evidence and a
reference to them without corresponding testimony explaining them is not sufficient to prove that
this element is met.” (Id. at 31.)
The undersigned finds that Complainant has presented sufficient circumstantial evidence
to prove direct infringement of this claim element by a preponderance of the evidences
6The undersigned notes that Complainant relies primarily on Dr. Pratt’s testimony and his “visual inspection” as proof
that this limitation is present in the Accused Products. (See CIB at 20; CRB at 8.) When questioned about this
limitation, Dr. Pratt refers to his previous testimony “with respect to the similar ‘fastener driving mechanism.” (CX
_12_

PUBLIC VERSION
Respondent’s lnstruction and Safety Manuals explain that the Accused Products are fastener
driving tools. (IX-0019C; IX-0020C.) They therefore require a fastener driving mechanism to
operate. (JX-00l9C.00O4 (instructing the end user to “pull the trigger to drive the fastener.”); see
also RX-0266C at Q/A 45 (describing the Accused Products as “professional-grade cordless
powered nailers used to drive nails into Wood and other types of material.”).) Moreover,
Respondent does not appear to dispute that the Accused Products necessarily include a fastener
diiving mechanism, given that they are designed to fire fasteners.
viii. “said fastener driving mechanism including: (A) a hollow
cylinder comprising a cylindrical wall with a movable
piston therewithin, said hollow cylinder containing a
displacement volume created by a stroke of said piston,
and” 	‘
Complainant argues that the Accused Products meet this limitation. (CIB at 21.)
Respondent disputes that Complainant has shown this limitation is present. Respondent
states: “The only evidence provided by Senco in support of the presence of this element is a
conclusory statement from Dr. Pratt stating that ‘[t]he Accused Products meet this limitation’
and a reference, without explanation, to a page of a demonstrative exhibit with labeled images.”
(RIB at 22-23.) Respondent asserts: “[D]ernonstrative exhibits are not substantive evidence and a
reference to them without corresponding testimony explaining them is not sufficient to prove that
this element is met.” (Id. at 23.)
The evidence shows that the Accused Products include a hollow cylinder, with a cylindrical
wall and a piston that moves within the cylinder. (CX-0110C at Q/As 123, 199; CDX-0001C
Ol10C at Q/A 197.) However, claim l of the ’296 patent does not include a “fastener driving mechanism” limitation.
(See IX-0001, cl. 1.) Rather, claim l of the ’296 patent refers to a “driver actuation device.” (1d.) Thus, Respondent
is correct there was no prior explanation for the “fastener driving mechanism” in Dr. Pratt’s testimony about the ‘296
patent.
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PUBLIC VERSION
.0032; Pratt, Tr. at l36:l9-137:4, 138:6-15; Vallee, Tr. at 180221-24.)While a visual inspection
may suffice for the “hollow cylinder” portion of this limitation7, the undersigned finds a visual
inspection to be insufficient proof that the stroke of the piston creates a displacement volume.
Complainant does not provide any explanation or discussion in its post-hearing briefing regarding
the displacement volume. (See CIB at 21; CRB at 8-9.) Dr. Pratt’s testimony for the ’7l8 patent is
also silent regarding the displacement volume:
Q. What is your opinion regarding whether the Accused Products include a
“hollow cylinder comprising a cylindrical wall with a movable piston
therewithin, said hollow cylinder containing a displacement volume created
by a stroke of said piston,” as in claim l of the ’718 Patent’?
A. The Accused Products meet this limitation, as I explained previously with
respect to the similar “hollow cylinder” limitation found in claim 1 of the
’297 Patent and as shown, from example, on page 32 of CDX-0001C.
(CX-0110C at Q/A 199.) A review of his testimony for the ’297 patent reveals that it is similarly
devoid of any mention of the displacement volume.
Q. What is your opinion regarding whether the Accused Products meet the
claim limitation “a hollow cylinder comprising a cylindrical wall and
having a movable piston therewithin, said hollow cylinder having a first end
and a second, opposite end, said hollow cylinder containing a displacement
volume created by a stroke of said piston,” as in claim l of the ’297 Patent?
A. The Accused Products meet this limitation. Referring to page 32 of CDX-0001C, I
created labeled images of the NTl850DE Nailer showing how the Accused
Products include each limitation of this claim element.
(Id. at Q/A 123.) The undersigned notes that Dr. Pratt does discuss a displacement volume in Q/A
65. (Id. at Q/A 65.) However, not only is this in the context of the ’296 patent, but it is for an
7 During post-hearing briefing, Complainant argued that for simple claim limitations, such as those in the asserted
patent, “a visual inspection alone is sufficient to show infiingement, oflen even without expert testimony." (CIB at
16.) While the undersigned agreed with Complainant that a visual inspection will suffice for certain claim limitations
in the ’7l 8 patent —such as “a housing” or “a user-actuated trigger,” the undersigned found that the asserted claims
are comprised of more than just “simple” limitations. (ID at 24 (“In the instant matter, the technology is complex. It
is not easily understandable to laypersons; a fact confirmed by the level of ordinary skill set in the Markman Order.”).)
The undersigned therefore found that for those limitations in dispute, explanatory expert testimony —beyond that of a
visual inspection —is necessary in this Investigation to demonstrate infringement of the asserted patent. (Id.)
~ 	-14

PUBLIC VERSION
entirely different limitation. (Id. (testifying regarding “a driver actuation device,” g a “hollow
cylinder”).) The undersigned further notes that Complainant cites to some additional exhibits (e.g.,
CX-0013 and RX-0218C), but there is no testimony from Dr. Pratt or any other Witnessregarding
these documents and how they prove this limitation is met. The undersigned therefore finds that
Complainant has not presented sufficient evidence to show that the stroke of the piston creates a
displacement volume.
Accordingly, for the reasons set forth above, Complainant has failed to prove by a
preponderance of the evidence that this limitation is present in the Accused Products.
ix. “(B) a main storage chamber that is in fluidic
communication with said displacement volume of the
cylinder, wherein said main storage chamber and said
displacement volume are initially charged with a
pressurized gas;”
Complainant argues that the Accused Products meet this limitation. (CIB at 21.)
Respondent does not dispute that the limitation is met. (See generally RIB at l7-25 (“Respondent
is not disputing the presence of any elements of the Asserted Claims not specifically addressed
below.”).)
The evidence shows that the Accused Products include a main storage chamber that is
distinct from the volume of the working cylinder. (CX-01 l0C at Q/As 83, 200; CDX-0O01C.0Ol9
.0020.) The evidence also shows that the Accused Products are charged with a pressurized gas.
(CX-0ll0C at Q/As 84-85, 200; CX-OOllC.) Thus, the undersigned finds that the Accused
Products meet this limitation.
_ 15 _

PUBLIC VERSION
x. “(b) selecting, by a user, an operating mode of said
driving cycle to be one of: a “bottom firing mode,” and a
“restrictive firing m0de;” whereinz”
Complainant argues that Respondent’s Instruction and Safety Manuals direct end users to
use the Accused Products to practice this limitation. (CIB at 22 (citing CX-0110C at Q/A 201; JX
0O19C.0026; CDX-00OlC.0056).) Complainant contends that Respondent ignores Federal Circuit
precedent that “when ‘an alleged infiinger designs a product for use in an infringing way and
instructs users to use the product in an infringing way,’ there is necessarily direct infringement.”
(CRB at 9 (citing Toshiba, 681 F.3d at 1365).) Complainant argues that direct infringement
necessarily exists here because Respondent’s Instruction and Safety Manuals and marketing videos
instruct end users to use the Accused Products in a manner that necessarily performs this step. (Id.
(citing CIB at 14-16, 22).)
Complainant asserts that Respondent’s argument that an end user could use an Accused
Product without changing the operating mode should be struck because it was not raised in
Respondent’s pre-hearing brief. (Id. (citing Ground Rule 9.2; RPHB at 4Q7).)_In addition,
Complainant contends that “Respondent’s argument lacks merit because an end user necessarily
selects an operating mode when the end user turns on the Accused Products.” (Id. (citing Pratt, Tr.
at 90:5-7).) According to Complainant, there is no requirement in the claim to change the mode;
rather, the end user merely has to select one of the available operating modes. (Id. at 9-10.)
Complainant further argues that the Instruction and Safety Manuals instruct the end user to change
the operating mode of the Accused Products and thus, an end user necessarily performs this step.
(Id. at 10 (citing JX-0O19C.0025-26; CX-0110C at Q/A 201; CIB at 14-16, 22; Toshiba, 681 F.3d
at 1365).)
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PUBLIC VERSION
Respondent argues that Complainant did not prove that an end user actually practiced this
step in combination with the other steps of the claimed method. (RIB at 23.) Respondent claims
that Dr. Pratt conceded “that the ‘selecting’ step may never be carried out by a user, admitting that
the tool can be used for its intended purpose as soon as it is turned on and that a user could use the
tool without ever pressing the Nailing Operating Switch to change the operating mode.” (Id. at 23
24 (citing Pratt, Tr. at 89:15-90: 1, 90:5-18).) Respondent also argues that the instructions do not
require an end user to press the Nailing Operation Switch on the control panel of the tool to select
an operating mode. (RRB at 6.) Instead, Respondent claims that pressing the Nailing Operation
Switch is optional and the tool can be used for driving nails without ever pressing the switch to
select the operating mode. (Id. (citing Pratt, Tr. at 90:5 - 18; RIB at 23-24; Acco Brands, Inc. v. ABA
Locks Mfi. C0., 501 F.3d 1307, 1313 (Fed. Cir. 2007)).) Respondent therefore asserts that
Complainant’s failure to show specific instances of direct infringement or that the Accused
Products necessarily infringe is fatal because the Accused Products are capable of being used
without using the claimed method. (RIB at 24 (citing Acco Brands, 501 F.3d at 1313; E-Pass
Techs., 473 F.3d at 1221); RRB at 11.)
As an initial matter, Respondent’s argument that an end user could use the Accused
Products without changing the operating mode was not raised in Respondent’s pre-hearing brief.
(See RPHB at 407.) Thus, pursuant to Ground Rule 9.2, the undersigned finds that Respondent has
abandoned that argument. (See Ground Rule 9.2.) The only argument that remains for Respondent
is: “[T]o show infringement of claim l, Senco must prove that a user actually performed the step
of ‘selecting . . . an operating mode.”’ (See RIB at 23.) However, as previously explained, direct
infringement can be proven by circumstantial evidences Toshiba C0rp., 681 F.3d at 1364.
8 Respondent argues that Co1nplainant’s reliance on Toshiba Corp. v. Imalion Corp. is misplaced because unlike the
facts in that case, “selecting a different operating mode in the Accused Products is not required to comply with any
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PUBLIC VERSION
The term “bottom firing mode” was detennined to mean “mode in which the tool operates
if the trigger actuator is first operated and then the safety contact element is actuated and also
operates if the safety contact element is first actuated and then the trigger actuator is operated” and
the term “restrictive firing mode” was determined to mean “a mode in which the tool operates if
the safety contact element is first actuated and then the trigger actuator is operated.” (Order No. 9
at l7.) Respondent’s Instruction and Safety Manuals describe two operating modes: (i) “contact
actuation mechanism,” which is the “bottom firing mode” and (ii) “full sequential actuation
mechanism,” which is the “restrictive fning mode.” (IX-0019C at_.0004, .0025-26; see also CX
0110C at Q/A 202.)
The evidence shows that the Accused Products practice this limitation. Respondent’s
Instruction and Safety Manuals specifically instruct users to “[s]et the nailing operation switch” to
either mode. (JX-00l9C.OO25-.0026; see also CX-0110C at Q/A 201.) In reference to using the
tool in “restrictive firing mode,” Respondent’s Instruction and Safety Manuals state:
Set the nailing operation switch to FULL SEQUENTIAL ACTUATION
MECHANISM
(Nailing operation indicator is light in blue.)
(to set to FULL SEQUANTLAL ACTUATION MECHANISM).
(Set the switching device to the nailing operation indicator light in blue
mode completely as shown in the diagram. Otherwise, it will be set to
CONTACT ACTUATION MECHANISM.)
(JX-001 9C.OO25.)In reference to using the tool in “bottom firing mode,” Respondent’s Instruction
and Safety Manuals state:
Set the nailing operation switch to CONTACT ACTUATION
MECHANISM M ailing operation indicator is blink in blue.)
industry standard and Respondent does not recommend against using the accused tools in a non-infringing manner.”
(RRB at 6-7 (citing Toshiba, 681 F.3d at 1366).) The undersigned finds this argument unpersuasive. The holding in
Toshiba does not require compliance with an industry standard or a recommendation against using the accused
products in a non-infringing manner. See Toshiba C0rp., 681 F.3d at 1366. Rather, the Federal Circuit in Toshiba
viewed those factors as sufficient evidence to find that it was more likely than not that someone directly infringed the
asserted claims. Id. Similarly, the undersigned finds that the evidence presented here is sufficient circumstantial
evidence of direct infringement. I
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PUBLIC VERSION
(to set to CONTACT ACTUATION MECHANISM).
(Set the switching device to the nailing operation indicator blink in blue
completely as shown in the diagram. Otherwise, it will not operate
properly.)
(Id. at .0026) Thus, upon turning on the tool, it will be set to either “restrictive firing mode,”
“bottom firing mode,” or will not operate properly. (Id. at .0025-.0026.) If a user turns on the tool
and the tool operates properly, the tool will have been set to either “restrictive firing mode” or
“bottom firing mode,” and the user will have necessarily selected either “restrictive firing mode”
or “bottom firing mode.”
For these reasons, the undersigned finds that Complainant has provided sufficient
circumstantial evidence to prove direct infringement of this limitation.
xi. “(i) if said restrictive firing mode is selected, said tool Will
operate if said safety contact element has been actuated
before said trigger actuator has been operated; and (ii) if
said bottom firing mode is selected, said tool will operate
if both: (A) said trigger actuator has been operated, and
(B) said safety contact element has been actuated, in
either sequence;”
Complainant argues that Respondent’s Instruction and Safety Manuals direct end users to
use the Accused Products to practice this limitation. (CIB at 22 (citing CX-0110C at Q/A 202;
CX-00130028; JX-0019C.0004, .0025; CDX-000lC.0O57).) Respondent does not dispute that the
limitation is met. (See generally RIB at l7~25 (“Respondent is not disputing the presence of any
elements of the Asserted Claims not specifically addressed bel0w.”).)
The evidence shows that the Respondent’s Instruction and Safety Manuals instruct end
users to operate the Accused Products in one of two modes: “full sequential actuation mechanism”
(i.e., the claimed “restrictive firing mode”) and “contact actuation mechanism” (i.e., the claimed
“bottom firing mode”). (See IX-0019C at .0004, .0025-.0026; see also CX-0110C at Q/A 202.)
Thus, the undersigned finds that the Accused Products meet this limitation.
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PUBLIC VERSION
xii. (c) initiating a driving cycle by pressing said exit end
against a workpiece and actuating said trigger, thereby
causing said fastener driving mechanism to force the
driver member to move toward said exit end and drive a
fastener into said workpiece; and”
Complainant argues that Respondent’s Instruction and Safety Manuals direct end users to
use the Accused Products to practice this limitation. (CIB at 22 (citing CX-0ll0C at Q/A 203;
CPX-0003C; JX-00l9C.0004).) Complainant explains that “[a]s part of this driving stroke, the
fastener driving mechanism forces the driver member to move toward said exit end and drive a
fastener into said workpiece.” (Id. (citing CX-0110C at Q/A 203).)
Complainant objects to Respondent’s argument “that the drive cycle is initiated by
‘pressing said exit end of the fastener driving mechanism against a w0rkpiece’.” According to
Complainant, Respondent’s argument is based on testimony from Dr. Vallee that was previously
struck and Respondent’s argument should likewise be struck.9 (CRB at 10 (citing RIB at 24-25;
Order No. 18 at 10).) Complainant also contends that Respondent’s argument fails on its merits.
First, Complainantargues that it is conclusory attorney argument unsupported by evidence. (Id.)
Next, Complainant submits that Dr. Pratt is the only expert to opine on this matter and he
explained: “[T]he exit end of the fastener driving mechanism is the end of the safety contact
element.” (Id. (citing CX-0110C at Q/A 203).) Lastly, Complainant asserts that the case law
Respondent cites is irrelevant. (Id. (arguing that the case law deals with the construction of two
claims elements that were “connected to” each other and as result, the Federal Circuit determined
that they must be construed as separate and distinct components).)
9 The undersigned does not find Complainanfs argument persuasive. While Order N0. 18 struck portions of Dr.
Vallee’s expert report, Respondent does not cite to that report or to Dr. Vallee’s witness statement in its post-hearing
briefing. (See Order No. 18 at l0; RIB at 24-25; RRB at ll-12.) Thus, rather than striking Respondent’s argument,
the undersigned will view it as being relevant to the weight of Rcspondent’s argument.
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PUBLIC VERSION
Respondent claims the only “exit end” recited in claim 1 is the “exit end of the mechanism”
and the “mechanism” is the “fastener driving mechanism.” (RIB at 24 (citing Order No. 9 at 18).)
Respondent contends that this limitation “thus requires that the drive cycle is initiated by ‘pressing
said exit end of the fastener driving mechanism against a Workpiece.”’ (Id.) Respondent further
contends that contrary to Dr. Pratt’s testimony, the “fastener driving mechanism” and “safety
contact element” are separate elements. (Id. at 24-25.) Respondent therefore asserts that this step
cannot be met by pressing the “safety contact element” against a workpiece, as Dr. Pratt alleges.
(Id. at 25.) Rather, according to Respondent, Complainant must show that the exit end of the
fastener driving mechanism is pressed against a workpiece to initiate a drive cycle. (RIB at 25;
RRB at 11-12.) Respondent submits that because Complainant made no such showing, it failed to
prove that the Accused Products infringe this limitation.
The term “mechanism” was determined to mean “fastener driving mechanism.” (See Order
N0. 9 at 17.) The term “exit end” appears multiple times in claim 1 of the ’718 patent: “an exit end
of the mechanism,” “said exit end of the mechanism,” and “said exit end.” (JX-0004, cl. 1.) Thus,
the antecedent basis for “said exit end” of the current claim limitation is “an exit end of the
mechanism,” i.e., an exit end of the fastener driving mechanism. (Id.)
Respondent’s Instruction and Safety Manuals explain that to drive the fastener, a user must
“press the push lever against the wood” and “pull the trigger.” (See LIX-0019C.0O04.)In a
conclusory manner, Dr. Pratt equates the push lever in the Accused Products with both the exit
end of the fastener driving mechanism and the end of the safety contact element. (See CX-0110C
at Q/A 203; JX-0O19C.0004.) Neither Dr. Pratt nor Complainant, however, provides any
evidentiary support for this position. The intrinsic evidence, however, indicates that the exit end
of the fastener driving mechanism and the end of the safety contact are separate components. More
-21

PUBLIC VERSION
specifically, the specification of the ’718 patent, which is “the single best guide to the meaning of
a disputed term” distinguishes the exit end of the fastener from the end of the safety contact
element. See Vilronics Corp. v. Conceptronic, lnc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). For
example, the specification states that the “safety contact element 32 extends beyond the bottom 30
of the fastener exit, and this extension of the safety contact element is depicted at 34, which is the
bottom or ‘front’ portion of the safety contact element.” (JX-0004 at 7:47-51; see also Becton,
Dickinson & C0. v. Tyco Healthcare Grp., 616 Fl3d 1249, 1255 (Fed. Cir. 2010).) The
specification also states that “the exit end of the tool 10” is “essentially at the bottom portion 30
of the tool’s exit area.” (Id. at 7:64-67.) In addition, claim 1 of the ’718 patent lists “fastener driving
mechanism” and “safety contact element” as two distinct elements and without some explanation
from Complainant or Dr. Pratt as to why these elements are the same, the undersigned declines to
so find. (Id. at cl. 1.) The undersigned therefore finds that Complainant has failed to meet its burden
to prove direct infringement of this limitation.
xiii. “(d) actuating said prime mover, thereby moving said
lifter member and causing said driver member to move
away from said exit end toward a ready position.”
Complainant argues that the Accused Products meet this limitation. (CIB at 23.)
Respondent does not dispute that the limitation is met. (See generally RIB at 17-25 (“Respondent
is not disputing the presence of any elements of the Asserted Claims not specifically addressed
below.”).)
The evidence shows that end users are instructed to perform this step of claim 1. (JX—
00l9C.0004, .0025; see also CX-0110C at Q/As 160, 204, 222.) For example, Respondent’s
Instruction and Safety Manuals state: “First, press the push lever against the wood: next, pull the
trigger to drive the fastener.” (JX-00190004, .0025.) This indicates preparation for a driving stroke
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PUBLIC VERSION
to being. (CX-0110C at Q/A 204.) Thus, the undersigned finds that the Accused Products practice
this limitation.
c) Conclusion
Accordingly, for the reasons set forth above, the undersigned finds that the Accused
Products do not infringe claim 1.
2. Claims 10 and 16
Independent claims 10 and 16 both contain the “(A) a hollow cylinder comprising a
cylindrical wall with a movable piston therewithin, said hollow cylinder containing a displacement
volume created by a stroke of said piston,” and “(c) initiating a driving cycle by pressing said exit
end against a workpiece and actuating said trigger, thereby causing said fastener driving
mechanism to force the driver member to move toward said exit end and drive a fastener into said
workpiece” limitations. However, as discussed above in Sections III.A.l.viii and A.l.>_<ii,these
limitations are not present in the Accused Products. Thus, even if the Commission determines that
the claimed “system controller” limitation is met, the Accused Products still do not infiinge claims
10 and l6 ofthe ’718 patent.
B. Indirect Infringement
Because the undersigned has found hereinabove that Complainant has not proven direct
infringement, Complainant cannot, as a matter of law, prove induced infringement. Accordingly,
the undersigned finds that Complainant has failed to show that Respondent indirectly infringes the
asserted claims of the ’7l8 patent. See BMC Res., 498 F.3d at 1379 (direct infringement must first
be established in order for a claim of indirect infringement to prevail); see also Novartis Pharm.
Corp. v. Eon Labs Mfg. Inc., 363 F.3d 1306, 1308 (Fed. Cir. 2004) (“When indirect infringement
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PUBLIC VERSION
is at issue, it is well settled that there can be no inducement or contributory infringement absent an
underlying direct infringement”). 	»
Notwithstanding the above, the Commission specifically ordered the undersigned to
determine “whether Kyocera has established, by a preponderance of the evidence, that: . . . Hitachi
induced infringement of the asserted claims.” (Remand Order at 3.) The undersigned has therefore
included an analysis of induced infringement, should the Commission detennine on review that
Complainant has satisfied its burden and shown direct infringement of the asserted claims.
1. Induced Infringement
Complainant contends that Respondent has had actual knowledge of the ’7l8 patent since
at least shortly after Complainant filed a complaint on January 25, 2017 accusing Respondent of
infringing the patent. (CIB at 14-15 (citing Senco Brands, Inc. v. Hitachi Koki U.S.A.,Ltd., No.
17-cv-00061-TSB).) Complainant asserts that Respondent “encourages end users to use the
Accused Products in a manner that directly infringes claims 1, 10, and 16 of the ’7l8 Patent.” (Id.
at 15.) According to Complainant, “Respondent has had the specific intent to encourage this
infringement by, among other things, distributing marketing materials, instructions, and similar
materials with instructions on using the Accused Products in an infringing manner.” (Id. (citing
CPX-0002C; JPX-0010(1).) For example, Complainant contends that Respondent’ s Instruction and
Safety Manuals, which are included with each purchase of the Accused Products, describe and
instruct users to operate the Accused Products in an infringing manner. (Id. (citing JX-0019C; JX
0020C; CX-0106C at 96-105).) When an end user operates the Accused Products in accordance
with those instructions, the end user performs the recited steps and directly infringes claims 1, 10,
and 16 of the ’7l8 patent. (Id. at 15.) Complainant also asserts that based on the way the
instructions are written, Respondent clearly intends for the end user to operate the Accused
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PUBLIC VERSION
Products in a manner that directly infringes claims 1, 10, and 16 of the ’7l8 patent. (Id. (citing
Toshiba Corp. v. Imation Corgi, 681 F.3d 1358, 1365 (Fed. Cir. 20l2)).) Complainant insists that
“Respondent knew or should have known that the induced acts constituted, and continue to
constitute, direct infringement.” (Id. at 16.)
Respondent contends that Complainant did not establish liability for indirect infringement
because neither Complainant nor its expert identified a single instance of direct infringement or
showed that the Accused Products necessarily infringe. (RIB at 26 (citing Wordtech Sys. I/.
Integrated Networks Solutions, Inc., 609 F.3d 1308, 1317 (Fed. Cir. 2010); Acco Brands, 501 F.3d
at 1313).) In addition, Respondent argues that Complainant failed to prove induced infringement
because it “did not show that the Respondent knew that its actions would lead to infringement of
any of the asserted claims of the ’718 patent.” (Id. (citing Global-Tech Appliances, Inc. v. SEB
S.A., 5631U.S. 754, 765-66 (2011); DSU, 471 F.3d at 1306).)
The undersigned finds that Complainant has failed to prove that Respondent had the
requisite intent to induce infringement. “lnducement can be found where there is ‘[e]vidence of
active steps taken to encourage direct infringement,’ which can in turn be found in ‘advertising an
infringing use or instructing how to engage in an infringing use.’” Takeda Pharmaceuticals US.A.,
Inc. v. West-Ward Pharmaceutical Corp, 785 F.3d 625, 630-31 (Fed. Cir. 2015) (citing Metro
Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936 (2005)); see also Vanda
Pharmaceuticals Inc. v. West-Ward Pharmaceuticals Int’l Ltd., 887 F.3d 1117, 1129 (Fed. Cir.
2018). “But such instructions need to evidence ‘intent to encourage infringement.”’ Takeda, 785
F.3d 625 at 631 (citing Vita-Mix Corp. v. Basic Holding Inc., 581 F.3d 1317, 1329 (Fed. Cir.
2009)). “The question is not, however, whether a user following the instructions may end up using
the device in an infringing way. Rather, it is whether [defendant’s] instructions teach an infiinging
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PUBLIC VERSION
use of the device such that we are willing to infer from those instructions an affirmative intent to
infringe the patent.” Vita-Mix, 581 F.3d at 1329 n.2.
Respondent’s Instruction and Safety Manuals explain that to drive the fastener, a user must
“press the push lever against the Wood”and “pull the trigger.” (See JX-00l9C.0004.) As discussed
in further detail in Section III.A.1.xii above, neither Dr. Pratt nor Complainant provides
evidentiary support to conclude that the push lever mentioned in Respondent’s Instruction and
Safety Manuals is the same as “said exit end” in claim 1.
Accordingly, the undersigned finds that Complainant failed to prove that Respondent’s
instructions teach an infringing use of the tool and have therefore failed to show that Respondent
induced infringement of claim 1'of the ’718 patent. Because claims 10 and 16 of the ’7l8 patent
include the same limitation, Complainant has also failed to prove that Respondent induced
infringement of those claims.
C. Domestic Industry —Technical Prong
Complainant asserts that the DI Products practice claims 1, 10, and 16 of the ’7l8 patent.
(CIB at 26.)
1. Claim 1
a) “A method for controlling a fastener driving tool, said method
comprisingz”
As noted supra, neither party has alleged that the preamble is limiting. (See Section
III.A.1.a, it is not necessary to address Whether the DI Products disclose this limitation.
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PUBLIC VERSION
b) “providing a fastener driving tool that includesz”
i. “(i) a housing;”
Complainant argues that the DI Products meet this limitation. (CIB at 27.) Respondent does
not dispute that the limitation is met. (See generally RIB at 27-33 (“Respondent is not disputing
the presence of any elements of the Asserted Claims not specifically addressed below.”).)
The evidence shows that the DI Products include two housing shells. (CDX-O002C.0020;
CX-0110C at Q/As 281, 378; CX-00240026.) Thus, the undersigned finds that the DI Products
practice this limitation.
ii. “(ii) a system contr0ller;”
The undersigned previously detennined that the DI Products do not practice this limitation.
(See ID at 31-34.)
iii. “(iii) a safety contact element;”
_ Complainant argues that the DI Products meet this limitation. (CIB at 28.)
Respondent contends that “[t]he only evidence provided by [Complainant] in support of
this element being met is a conclusory statement from Dr. Pratt stating that ‘[t]he Domestic
Industry Products meet this limitation,’ a reference to certain pages of a demonstrative exhibit with
labeled images and an unidentified statement in the Operating Instructions for the Alleged
Domestic Industry Products.” (RIB at 30.) Respondent argues that demonstrative exhibits are not
substantive evidence. (Id.) Thus, a reference to them without corresponding testimony is
insufficient to prove that this element is met. (Id.)
The evidence shows that the DI Products include a device that when engaged allows
operation of the fastener driving tool. (CX-O014C.00l5-.0018.) As Dr. Pratt testified, the DI
Products “will not operate unless the safety contact element is engaged in the actuated position.”
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PUBLIC VERSION
(CX-O110C at Q/A 352; id. at QlA 380.) The undersigned therefore finds that the DI Products
practice this limitation.
iv. “(iv) a user-actuated trigger;”
Complainant argues that the DI Products meet this limitation. (CIB at 28.) Respondent does
not dispute that the limitation is met. (See generally RIB at 27-33 (“Respondent is not disputing
the presence of any elements of the Asserted Claims not specifically addressed bel0w.”).)
The evidence shows that the Accused Products include a trigger. (CDX-0O02C.0045,
.0054; CX-0110C at Q/As 353, 381.) The Operating Instructions for the DI Products state that a
user must “pull the trigger” to begin a driving stroke. (CX-00l4C.00l7; see also id. at .0014
(identifying no. 6 as a “trigger/on sWitch”).) Thus, the undersigned finds that the DI Products
practice this limitation.
v. “(v) a fastener;”
Complainant argues that the DI Products meet this,limitation. (CIB at 29.) Respondent does
not dispute that the limitation is met. (See generally RIB at 27-33 (“Respondent is not disputing
the presence of any elements of the Asserted Claims not specifically addressed below.”).)
The evidence shows that the DI Products are designed to fire fasteners. (CX-00l4C.0025;
see also CX-0110C at Q/A 386.) Thus, the undersigned finds that the DI Products practice this
limitation.
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PUBLIC VERSION
vi. “(vi) a prime mover that moves a lifter member which
moves a driver member away from an exit end of the
mechanism; and”
(a) “a lifter member”
Complainant argues that the DI Products meet this limitation. (CIB at 29.) Complainant
contends that Dr. Pratt visually inspected the DI Products to confirm the presence of the claimed
“lifter member.” (Id. (citing CX-Ol 10C at Q/As 238, 266).) Complainant also claims that
Respondent’s technical expert agrees that the DI Products practice this limitation. (Id. (citing
Vallee, Tr..at 180125-181:4,l8l:l3-l82:l3).)
Respondent asserts that Complainant has failed to prove that this element is practiced by
any of the DI Products. (RIB at 30.) Respondent contends that “[t]he only evidence provided by
[Complainant] in support of the presence of this element is a conclnsory statement from Dr. Pratt
stating that ‘[t]he Domestic Industry Products meet this limitation” and a reference to certain pages
of a demonstrative exhibit with labeled images. (Id. (citing CX-0110C at Q/As 266, 382).)
Respondent maintains that demonstrative exhibits are not substantive evidence and thus, a
reference to them without corresponding testimony is insufficient to prove that these elements are
met. (Id.)
The term “a lifter member” was determined to mean a “rotatable component having lifting
pins on its face surface” and the tenn “lifter member which exhibits a contact surface” was
detennined to mean a “rotabable component having lifting pins on its face surface which exhibits
a contact surface.” (Order No. 9 at 42.) The evidence shows that the DI Products include rotatable
component having lifting pins on its face surface. (CX-00l5C.00l6; CDX-OOl2C.00l0; CX
0110C at Q/As 266, 382; Pratt, Tr. at l43:l7-23, 144114-22.)Despite Respondent’s arguments to
the contrary, its own expert, Dr. Vallee, conceded that the DI products "doindeed include a “lifter
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g PUBLIC VERSION
member.” (Vallee, Tr. at l8O:25-181:4, l8l:l3-l82:l3.) Theundersigned therefore finds that the
DI Products practice this limitation.
(b) “a driver member”
Complainant argues that the DI Products meet this limitation. (CIB at 29.) Complainant
contends that Dr. Pratt visually inspected the DI products to confirm the presence of the claimed
“driver member.” (Id. (citing CX-0110C at Q/As 238, 265).) Complainant also claims that
Respondent’s technical expert agrees that the DI products practice this limitation. (Id. (citing
Vallee, Tr. at l82:l4-l83:6).)
Respondent asserts that Complainant has failed to prove that this element is practiced by
any of the DI Products. (RIB at 30-31.) Respondent contends that “[t]he only evidence provided
by [Complainant] in support of the presence of this element is a conclusory statement from Dr.
Pratt stating that ‘[t]he Domestic Industry Products meet this limitation” and a reference to certain
pages of a demonstrative exhibit with labeled images. (Id. at 31 (citing CX-0110C at Q/As 265,
383).) Respondent maintains that demonstrative exhibits are not substantive evidence and thus, a
reference to them Without corresponding testimony is insufficient to prove that these elements are
met. (1d.)
The tenn “a driver member” was determined to mean “component having multiple teeth
that is designed to drive a fastener into a workpiece.” (See Order No. 9 at 45.) The evidence shows
that the DI Products include a component having multiple teeth that is designed to drive a fastener
into a workpiece. (CX-01 l0C at Q/As 265, 383; CDX-0002C.O008-0009.) Dr. Vallee,
Respondent’s expert, agrees. On cross-examination, Dr. Vallee confirmed that the DI Products
have a driver with multiple teeth that “is designed to contact a fastener to drive it into a Work
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PUBLIC VERSION
piece.” (Vallee, Tr. at 182114-183:6.) The undersigned therefore finds that the DI Products meet
this limitation.
" 	(c) “a prime mover”
Complainant argues that the DI Products meet this limitation. (CIB at 29-30.) Complainant
explains: “[T]he prime mover is connected to the system controller via Wires and to the lifter
member via a gearbox. As part of the operating cycle, the prime mover is actuated to move the
lifter member and cause the driver member to move away fiom the exit end of the fastener driving
mechanism toward a ready position.” (Id. at 30 (internal citations omitted).) Complainant also
contends that Dr. Pratt visually inspected the DI products to confirm the presence of the claimed
“prime mover.” (Id. (citing CX-0110C at Q/As 238, 349).)
Respondent asserts that Complainant has failed to prove that this element is practiced by
any of the DI Products. (RIB at 31.) Respondent contends that “[t]he only evidence provided by
[Complainant] in support of the presence of this element is a conclusory statement from Dr. Pratt
stating that ‘[t]he Domestic Industry Products meet this limitation” and a reference to certain pages
of a demonstrative exhibit with labeled images. (Id. (citing CX-0110C at Q/As 341, 384).)
Respondent maintains that demonstrative exhibits are not substantive evidence and thus, a
reference to them without corresponding testimony is insufficient to prove that these elements are
met. <14.) 4
The evidence shows that the DI Products practice this limitation. For example, CDX
0002C shows the connection between the claimed lifter member and the claimed prime mover via
a gearbox. (See id. at .0038, .0043; see also CX-01 l0C at Q/As 341, 349, 384.) Dr. Pratt explained:
“[T]he prime mover’s rotor drives a gear assembly in the gearbox to reduce the rotational speed,
and the gearbox’s hexagonal output shaft is connected directly to the lifter member, which is
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PUBLIC VERSION
secured to the output shaft with a nut.” (CX-01 10C at Q/A 349.) Dr. Pratt further explained that
as part of the operating cycle of the DI Products, “the prime mover is actuated to move the lifter
member and cause the driver member to move away from the exit end of the fastener driving
mechanism toward a ready position.” (Id. at Q/A 392.)
vii. “(vii) a fastener driving mechanism that moves said
driver member toward said exit end of the mechanism,”
Complainant argues that the DI Products include this limitation. (CIB at 30-31.)
Respondent contends that the only evidence provided by Complainant in support of this
element is a conclusory statement from Dr. Pratt and a reference, without explanation, to a page
of a demonstrative exhibit. (RIB at 31-32.) Respondent asserts that “[n]one of this proves that this
limitation is met.” (Id. at 31.)
The undersigned finds that Complainant has presented sufficient circumstantial evidence
to prove that the DI Products include this limitation. 1° Complainant’s Operating histructions
explain that the DI Products are fastener driving tools. (CX-0014.) They therefore require a
fastener driving mechanism to operate. (Id. at CX-OO14C.00l 7 (instructing the end user to “depress
workpiece contact element against work surface and drive a fastener” and to “[p]ull trigger to tum
the motor and drive a fastener.”).) Moreover, Respondent does not appear to dispute that the DI
Products necessarily include a fastener driving mechanism, given that they are designed to fire
fasteners. 	‘
1° The undersigned notes that Complainant, as it did for infringement purposes, relies primarily on Dr. Pratt’s
testimony and his “visual inspection” as proof that the DI Products practice this limitation. (See CIB at 30; CRB at
14-15.) When questioned about this limitation, Dr. Pratt refers to his previous testimony “with respect to the similar
‘fastener driving mechanism." (CX-0110C at Q/A 385.) However, claim 1 of the ‘Z96 patent does not include a
“fastener driving mechanism” limitation. (See JX-0001, cl. 1.) Rather, claim 1 of the ’296 patent refers to a “driver
actuation device.” (1d.) Thus, Respondent is correct there was no prior explanation for the “fastener driving
mechanism” in Dr. Pratt’s testimony about the ’296 patent.
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PUBLIC VERSION
viii. “said fastener driving mechanism including: (A) a hollow
cylinder comprising a cylindrical wall with a movable
piston therewithin, said hollow cylinder containing a
displacement volume created by a stroke of said piston,
and”
Complainant argues that the DI Products include this limitation. (CIB at 31.)
Respondent asserts that Complainant has failed to prove that this element is practiced by
the DI Products. (RIB at 32.) Respondent contends that the only evidence Complainant has put
forth in support of this element is a conclusory statement from Dr. Pratt and a reference to certain
pages of a demonstrative exhibit. (1d.) Respondent maintains that demonstrative exhibits are not
substantive evidence. (Ia/.) Thus, a reference to them without corresponding testimony is
insufficient to prove that these elements are met. (ld.)
The evidence shows that the DI Products include a hollow cylinder, with a cylindrical wall
and a piston that moves within the cylinder. (CX-Ol l0C at Q/As 314, 387; CDX-0002C.0029.) As
discussed above, a visual inspection may suffice for the “hollow cylinder” portion of this
limitation; however, a visual inspection alone is insufficient to prove that the stroke of the piston
creates a displacement volume.“ Complainant does not provide any explanation, discussion, or
corroborating testimony in its post-hearing briefing regarding the displacement volume. (See CIB
at 31; CRB at 15-16.) For example, Dr. Pratt’s testimony for the ’7l8 patent is silent regarding the
displacement volume:
Q. What is your opinion regarding whether the Domestic Industry Products
include a “hollow cylinder comprising a cylindrical wall with a movable
piston therewithin, said hollow cylinder containing a displacement volume
created by a stroke of said piston,” as in claim l of the ’7l8 Patent?
A. The Domestic Industry Products meet this limitation, as I explained
previously with respect to the similar “hollow cylinder” limitation found in
H The same holds true for Cornplainant’s reliance on CDX-0002C.0029 as proof that the “displacement volume”
portion of the limitation is met. Demonstrative exhibits have no intrinsic evidentiary value and are only as reliable as
that evidence upon which they rely.
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PUBLIC VERSION
claim l of the ’297 Patent and as shown, from example, on page 32 of CDX
00O2C. 	‘
(CX~(]ll0C at Q/A 387.) A review of his testimony for the ’297 patent reveals that it too omits
any reference to the displacement volume.
Q. \Vhat is your opinion regarding Whether the Domestic Industry Products
meet the claim limitation “a hollow cylinder comprising a cylindrical wall
and having a movable piston therewithin, said hollow cylinder having a first
end and a second, opposite end, said hollow cylinder containing a
displacement volume created by a stroke of said piston,” as in claim l of
the ’297 Patent?
A. The Domestic Industry Products meet this limitation. Referring to page 29 of
CDX-0002C, I created labeled images of the FUSION F~l5 Nailer showing
how the Domestic Industry Products include each limitation of this claim
element.
(Id. at Q/A 314.) Although Complainant does cite to a couple of additional exhibits, there is no
testimony in the record regarding how these exhibits show demonstrate that a displacement volume
created by a stroke of said piston. The undersigned therefore finds that Complainant has not
presented sufficient evidence to show that the stroke of the piston creates a displacement volume.
Accordingly, for the reasons set forth above, Complainant has failed to prove by a
preponderance of the evidence that this limitation is present in the DI Products.
ix. “(B) a main storage chamber that is in fluidic
communication with said displacement volume of the
cylinder, wherein said main storage chamber and said
displacement volume are initially charged with a
pressurized gas;”
Complainant argues that the DI Products include this limitation. (CIB at 3l.) Respondent
does not dispute that the limitation is met. (See generally RIB at 27-33 (“Respondent is not
disputing the presence of any elements of the Asserted Claims not specifically addressedbelow.”).)
The evidence show that the DI Products include a main storage chamber that is distinct
from the volume of the working cylinder. (CX~OllOC at Q/As 276, 388; CDX-0OO2C.0Ol6.)The
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PUBLIC VERSION
evidence also shows that the DI Products are charged with a pressurized gas. (CX-0110C at Q/A
277; CDX-00O2C.(]Ol 7; CX~OOl 5C.OO()6,.0016.) Thus, the undersigned finds that the DI Products
meet this limitation.
x. “(b) selecting, by a user, an operating mode of said
driving cycle to be one of: a “bottom firing mode,” and a
“restrictive firing mode;” whereinz”
Complainant argues that the DI Products include this limitation. (CIB at 3l.) Respondent
does not dispute that the limitation is met. (See generally RIB at 27-33 (“Respondent is not
disputing the presence of any elements of the Asserted Claims not specifically addressedbelow.”).)
The evidence shows that the Operating Instructions instruct end users to operate the DI
Products in one of two modes: [1] “sequential-actuation”; and [2] “contact-actuation.” (CX
00l4C.00l7.) As Dr. Pratt explained: “Sequential-actuation is the claimed ‘restrictive firing
mode,’ while contact-actuation is the claimed ‘bottom firing mode’.” (CX-0110C at Q/A7390.)
End users use the buttons on the DI Products to select either the “bottom firing mode” or the
“restrictive firing mode.” (CX-00l4C.O0l6; see also CX-0llOC at Q/A 389; CDX-002C.0049.)
Thus, the undersigned finds that the DI Products practice this limitation.
xi. “(i) if said restrictive firing mode is selected, said tool will
operate if said safety contact element has been actuated
before said trigger actuator has been operated; and”
Complainant argues that the DI Products meet this limitation. (CIB at 32.) Respondent does
not dispute that the limitation is met. (See generally RIB at 27-33 (“Respondent is not disputing
the presence of any elements of the Asserted Claims not specifically addressed below.”).)
The evidence shows that when the DI Products are in the sequential actuation or “restrictive
firing” mode, the products will only operate if the safety contact element has been actuated before
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PUBLIC VERSION
the trigger has been actuated. (CX-001400017; CX-0110C at Q/A 390.) Thus, the undersigned
finds that the DI Products practice this limitation.
x11. “(ii) if said bottom firing mode is selected, said tool will
operate if both: (A) said trigger actuator has been
operated, and (B) said safety contact element has been
actuated, in either sequence;”
Complainant argues that the DI Products meet this limitation. (CIB at 32.) Respondent does
not dispute that the limitation is met. (See generally RIB at 27-33 (“Respondent is not disputing
the presence of any elements of the Asserted Claims not specifically addressed bel0W.”).)
The evidence shows that when the DI Products are in contact actuation or “bottom firing”
mode, the products “will operate if both the trigger actuator has been operated and the safety
contact element has been actuated, in either sequence.” (CX-0110C at Q/A 390; see also CX
OOl4C.00l7.) Thus, the undersigned finds that the DI Products practice this limitation.
xiii. “(c) initiating a driving cycle by pressing said exit end
against a workpiece and actuating said trigger, thereby
causing said fastener driving mechanism to force the
driver member to move toward said exit end and drive a
fastener into said workpiece; and”
Complainant argues that its Operating Instructions instruct end users to use the DI Products
to practice this limitation. (CIB at 32 (citing CX~01lOC at Q/A 391; CPX-0004C; CX
0O14C.OOl7).) Complainant attacks Respondent’s argument on a number of grounds. First,
Complainant contends that Respondent did not provide any evidence supporting its position,
instead relying on attorney argument. (CRB at 16.) Second, Complainant asserts that Dr. Pratt was
the only expert to opine on this matter and he explained that this claim limitation was met. (Id.)
Finally, Complainant submits that the case law Respondent cites to is irrelevant. (Id. (citing CX
OIIOC at Q/A 391).) 	.
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PUBLIC VERSION
Similar to its infringement position, Respondent argues that the only “exit end” in claim 1
of the ’7l8 patent is the “exit end of the mechanism” and the “mechanism” refers to “the fastener
driving mechanism.” (RIB at 24 (citing Order No. 9 at 18).) Respondent therefore contends that
this limitation “requires that the drive cycle is initiated by ‘pressing said exit end of the fastener
driving mechanism against a workpiece.” (Id.) According to Respondent, claim l recites “a
fastener driving mechanism” and “a safety contact element” as separate elements and thus, this
limitation cannot be met by pressing the “safety contact element” against a workpiece, as
Complainant alleges. (Id. at 24-25 (citing JX-0004, cl. 1); RRB at 16.) Respondent asserts that
Complainant did not show that the exit end of the fastener driving mechanism is pressed against a
workpiece to initiate the drive cycle and consequently, Complainant has failed to prove this
limitation is met. (RIB at 25 (citing CX-0110C at Q/A 197; CDX-0O01.0007).)
As previously explained in Section III.A.l.xii, the antecedent basis for “said exit end” of
this claim limitation is “an exit end of the mechanism,” i.e., an exit end of the fastener driving
mechanism. (See Order No. 9 at 17; JX-0004, cl. 1.) Dr. Pratt testifies that according to
Complainant’s Operating Instructions, “when the exit end of the fastener driving mechanism is
pressed against a workpiece and the trigger is actuated, a driving stroke will begin.” (CX-0110C
at Q/A 391.) However, Cornplainant’s Operating Instructions direct the user to “[p]ress the
workpiece contact (safety) element against the work surface.” (CX-00l4C.O0l7.) Dr. Pratt
therefore equates the workpiece contact (safety) element in the DI Products with the exit end of
the fastener driving mechanism. (See id.) Yet, neither Dr. Pratt nor Complainant provides sufficient
evidentiary support for this position, particularly when viewed in the context of the intrinsic
evidence. (See Section I1I.A.l.xii.) For example, neither Dr. Pratt nor Complainant cite to detailed
pictures or schematics of the DI Products showing that the workpiece contact (safety) element is
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PUBLIC VERSION
the same as an exit end of the fastener driving mechanism. (See CX-Ol lOC at Q/A 391; CX
O0l4C.O0l7.) While one of Dr. Pratt’s demonstrative exhibits labels a part of the DI Products as
the exit end of the mechanism, the demonstrative does not provide a detailed view of that portion
of the DI Products and seems to point to the same portion of the tool that is labeled as the safety
contact element. (See CDX-0002C.0044, .0047.)
For these reasons, the undersigned finds that Complainant has failed to meet its burden to
prove that the DI Products practice this limitation.
xiv. “(d) actuating said prime mover, thereby moving said
lifter member and causing said driver member to move
away from said exit end toward a ready position.”
Complainant argues that the DI Products meet this limitation. (CIB at 28.) Respondent does
not dispute that the limitation is met. (See generally RIB at 27-33 (“Respondent is not disputing
the presence of any elements of the Asserted Claims not specifically addressed below.”).) '
The evidence shows that Whenthe DI Products are in contact actuation or “bottom firing”
mode, the products “will operate if both the trigger actuator has been operated and the safety
contact element has been actuated, in either sequence.” (CX-0110C at Q/A 390; see also CX
OO14C.0017.)Thus, the undersigned finds that the DI Products practice this limitation.
c) Conclusion
Accordingly, for the reasons set forth above, the undersigned finds that the DI Products do
not practice claim l.
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4‘ 	PUBLIC VERSION
2. Claims 10 and 16
Claims 10 and 16 both contain the “(A) a hollow cylinder comprising a cylindrical wall
with a movable piston therewithin, said hollow cylinder containing a displacement volume created
by a stroke of said piston,” and “(c) initiating a driving cycle by pressing said exit end against a
workpiece and actuating said trigger, thereby causing said fastener driving mechanism to force the
driver member to move toward said exit end and drive a fastener into said workpiece” limitations.
However, as discussed above in Sections IIl.C.l.viii and C.l.xiii, these limitations are not present
in the DI Products. The undersigned therefore finds that the D1Products do not practice claims 10
and 16 of the ’718 patent.
IV. CONCLUSIONS OF LAW
1. Complainant has not established, by a preponderance of the evidence, that the
Accused Products infringe the asserted claims of U.S. Patent No. 8,387,718.
2. Respondent has not induced infringement of the asserted claims of U.S. Patent No.
8,3 87,7 18.
3. Complainant has not established, by a preponderance of the evidence, that the
Domestic Industry Products practice the asserted claims of U.S. Patent No.
8,387,718.
V. INITIAL DETERMINATION
The undersigned hereby CERTIFIES to the Commission this Remand Initial
Determination.
The Secretary shall serve the confidential version of this Remand Initial Detennination
upon counsel who are signatories to the Protective Order (Order No. 1) issued in this Investigation.
A public version Willbe served at a later date upon all parties of record.
Pursuant to 19 C.F.R. § 21O.42(h), this Remand Initial Determination shall become the
determination of the Commission unless a party files a petition for review pursuant to 19 C.F.R.
_ 39 _

PUBLIC VERSION
§ 210.43(a) or the Commission, pursuant to l9 C.F.R. § 210.44, orders on its own motion a review
of the Initial Determination or certain issues therein.
Within ten days of the date of this document, the parties shall submit to the Office of
Administrative Law Judges a joint statement regarding whether or not they seek to have any
portion of this document deleted from the public version. The parties’ submission shall be made
by hard copy and must include a copy of this Initial Determination with red brackets indicating
any portion asserted to contain confidential business information to be deleted from the public
version.” The parties’ submission shall include an index identifying the pages of this document
where proposed redactions are located. The parties’ submission concerning the public version of
this document need not be filed Withthe Commission Secretary.
SO ORDERED.
arles E. Bullock
Chief Administrative Law.Judge
12If the parties submit excessive redactions, they may be required to provide an additional written statement, supported
by declarations fiom individuals with personal knowledge, justifying each proposed redaction and specifically
explaining why the information sought to be redacted meets the definition for confidential business information set
forth in Cormnission Rule 201.6(a). 19 C.F.R. § 201.6(a).
-40

CERTAIN GAS SPRING NAILER PRODUCTS AND 	Inv. N0. 337-TA-1082
COMPONENTS THEREOF 	Remand
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that PUBLIC VERSION REMAND INITIAL
DETERIVIINATION ON VIOLATION OF SECTION 337 has been served upon the
following parties as indicated, on 11/8/2019. 	V
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Lisa R. Barton, Secietary
U.S. Intemational Trade Commission
500 E Street SW, Room 112
Washington, DC 20436
On Behalf of Complainant Kyocera SencoBrands Inc.:
Robert S. Riggs, Esq. 	E] ia Hand Delivery
VEDDER PRICE PC 	U/Via Express Delivery
NOIThLaSalle StI‘B6'[,Sllltfi 	U First Class
Chicago, IL 60601-1003 	U other
Respondent Hitachi Koki U.S.A.. Limited:
Paul Devinsky, Esq. 	[I ia Hand Delivery
MCDERMOTT WILL & EMERY LLP 	ia ExpressDelivery
500 North Capitol Street, NW 	D V- Fi C1 M -1	_ 	1a rst ass a1
Washington, DC 20001 	D Other:
‘J

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN GAS SPRING NAILER 	Investigation N0. 337-TA-1082
PRODUCTS AND COMPONENTS
THEREOF
NOTICE OF COMMISSION DETERMINATION TO REVIEW IN PART AND
REMAND IN PART A FINAL INITIAL DETERMINATION FINDING NO VIOLATION
» 	OF SECTION 337
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
SUMMARY: Notice is hereby given that the U.S. Intemational Trade Commission (“the
Commission”) has determined to review in part and remand in part a final initial determination
(“ID”) of the presiding administrative law judge (“ALJ”) finding no violation of section 337.
FOR FURTHER INFORMATION CONTACT: Clint Gerdine, Esq., Office of the General
Counsel, U.S. Intemational Trade Commission, 500 E Street, SW., Washington, D.C. 20436,
telephone (202) 708-2310. Copies of non-confidential documents filed in connection with this
investigation are or will be available for inspection during official business hours (8:45 a.m. to
5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street,
SW., Washington, D.C. 20436, telephone (202) 205-2000. General information conceming the
Commission may also be obtained by accessing its Internet server at httgs://www.usitc. gov. The
public record for this investigation may be viewed on the Commission's electronic docket (EDIS)
at https.edis.usitc.gov. Hearing-impaired persons are advised that information on this matter can
be obtained by contacting the Commission’s TDD tenninal on (202) 205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on
November 20, 2017, based on a complaint filed on behalf of Kyocera Senco Brands Inc.
(“Kyocera”) of Cincinnati, Ohio. 82 Fed. Reg. 55118-19 (Nov. 20, 2017). The complaint, as
amended and supplemented, alleges violations of section 337 of the Tariff Act of 1930, as
amended, 19 U.S.C. 1337, based upon the importation i_ntothe United States, the sale for
importation, and the sale within the United States after importation of certain gas spring nailer
products and components thereof by reason of infringement of certain claims of U.S. Patent Nos.
8,011,547 (“the ’547 patent”); 8,267,296 (“the ’296 patent”); 8,27,297 (“the ’297 patent”);
8,387,718 (“the ’7l8 patent”); 8,286,722 (“the ’722 patent”); and 8,602,282 (“the ’282 patent”).

The complaint further alleges the existence of a domestic industry. The Commission’s notice of
investigation named as a respondent Hitachi Koki U.S.A., Ltd. (“Hitachi”) of Braselton, Georgia.
The Office of Unfair Import Investigations is not participating in the investigation. The ’547
patent has been terminated from the investigation and the notice of investigation was amended to
add claim 30 of the ’297 patent to the investigation. Order N0. 13 (June 4, 2018), unreviewed
by Comm’n Notice (June 22, 2018); Order No. 15 (June 19, 2018), unreviewed by Comm’n
Notice (July 9, 2018). Prior to the evidentiary hearing, the parties stipulated that the ’7l 8 patent
is the only remaining patent at issue since no violation could be shown as to the ’296, ’297, ’722,
and ’282 patents based on an evidentiary ruling limiting the scope of testimony of Kyocera’s
expert. See ID at 1-2.
On Jime 7, 2019, the ALJ issued his final ID finding no violation of section 337 as to the
’718 patent. The ID finds that Hitachi’s accused products do not infringe asserted claims 1, 10,
and 16 (the “asserted claims”) of the ’718 patent, and that Kyocera has not satisfied the technical
prong of the domestic industry requirement with respect to this patent. Specifically, the ID finds
that the “system controller” limitation of these claims is not met by Hitachi’s accused products or
practiced by Kyocera’s domestic industry products. The ID also finds that the asserted claims
are not invalid under 35 U.S.C. 103, 112 for obviousness or indefiniteness, respectively, and that
Kyocera has satisfied the economic prong of the domestic industry requirement with respect to
the ’7l 8 patent. In the same document, the ALJ recommended that if the Commission finds a
violation it should issue a limited exclusion order directed to Hitachi’s infringing products and a
cease and desist order directed to Hitachi.
On June 24, 2019, Kyocera petitioned, and Hitachi contingently petitioned, for review of
the final ID. On July 2, 2019, Kyocera and Hitachi each filed a response in opposition to the
other party’s petition for review.
Having reviewed the record of the investigation, including the parties’ briefing, the
Commission has detennined to review and remand the subject ID in part. Specifically, the
Commission has detennined to review the ID’s finding that Kyocera did not establish: (1) either
direct or induced infringement of the asserted claims; and (2) practice of the asserted claims by
Kyocera’s domestic industry products to satisfy the domestic industry requirement. The
Commission has also detennined to review the ID’s fmding that Kyocera demonstrated sufficient
activities and investments relating to the articles protected by the ‘718 patent to satisfy the
domestic industry requirement. The Commission has also detennined to remand to the ALJ, as
set forth in the Com1nission’s Order accompanying this notice, the issues of whether Kyocera
has established, by a preponderance of the evidence, that: (1) the remaining limitations
(irrespective of the “system controller” limitation) of the asserted claims are met by Hitachi’s
accused products; (2) the remaining limitations of the asserted claims are practiced by Kyocera’s
domestic industry products; and (3) Hitachi induced infringement of the asserted claims. The
Commission has determined not to review the remainder of the ID.
_2

The authority for the Comrnission’s detennination is contained in section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. 1337, and in part 210 of the Commission’s Rules of
Practice and Procedure, 19 CFR part 210.
By order of the Commission.
Lisa R. Barton
Secretary to the Commission
Issued: August 14, 2019
3

CERTAIN GAS SPRING NAILER PRODUCTS AND 	Inv. No. 337-TA-1082
COMPONENTS THEREOF .
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached NOTICE has been served upon the
following parties as indicated, on August 14, 2019.
@§%§I>
Lisa R. Barton, Secretary
U.S. Intemational Trade Commission
500 E Street, SW, Room 112
Washington, DC 20436
On Behalf of Complainants Kvocera Senco Brands. Inc.:
Robert S. Riggs, Esq.
VEDDER PRICE PC
222 North LaSalle Street, Suite 2600
Chicago, IL 60601-1003
CI Via Hand Delivery
U Via Express Delivery
Via First Class Mail
U Other:
On Behalf of Respondents Hitachi Koki U.S. A.. Limited:
Paul Devinsky, Esq.
McDERMOTT WILL & EMERY LLP
500 North Capitol Street, NW
Washington, DC 20001
El Via Hand Delivery
El Via Express Delivery
Via First Class Mail
El Other:

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington,D.C.
In the Matter of
CERTAIN GAS SPRING NAILER
PRODUCTS AND COMPONENTS
THEREOF
Investigation No.337-TA-1082
ORDER: REMAND OF INITIAL DETERMINATION IN PART
The Commission instituted this investigation on November 20,2017, based on a
complaint filed on behalf of Kyocera Senco Brands Inc.("Kyocera")of Cincinnati, Ohio. 82
Fed. Reg. 55118-19(Nov. 20, 2017). The complaint, as amended and supplemented, alleges
violations of section 337 ofthe Tariff Act of 1930, as amended, 19 U.S.C. § 1337("section
337"), based upon the importation into the United States, the sale for importation, and the sale
within the United States after importation of certain gas spring nailer products and components
thereof by reason of infringement of certain claims of U.S. Patent Nos. 8,011,547("the '547
patent"); 8,267,296("the '296 patent"); 8,27,297("the '297 patent"); 8,387,718 ("the '718
patent"); 8,286,722("the '722 patent"); and 8,602,282("the '282 patent"). The complaint
further alleges the existence of a domestic industry. The Commission's notice ofinvestigation
named as a respondent Hitachi Koki U.S.A., Ltd.("Hitachi") of Braselton, Georgia. The Office
of Unfair Import Investigations is not participating in the investigation. The '547 patent has
been terminated from the investigation and claim 30 ofthe '297 patent was added to the
investigation. See Order No. 13(June 4, 2018), unreviewed by Comm'n Notice(June 22, 2018);
Order No. 15 (June 19, 2018), unreviewed by Comm'n Notice (July 9,2018).

Prior to the evidentiary hearing, the parties stipulated that the '718 patent is the only
remaining patent at issue because Kyocera could not show infringement ofthe '296,'297,'722,
and '282 patents as a result of Order No. 28. See Joint Stipulation Regarding Order No. 28
(Oct. 26, 2018). In Order No. 28, the presiding administrative law judge("ALP)found that
Kyocera's technical expert did not qualify as a person of ordinary skill in the art. Order No. 28
at 2. The AU then determined that Kyocera's expert could not testify regarding infringement
under the doctrine of equivalents. Id. at 6; see also ID at 1-2.
On June 7, 2019, the AU issued his final initial determination("ID")finding no violation
ofsection 337. The ID finds that Hitachi's accused products do not directly infringe or induce
infringement ofclaims 1, 10, and 16(the "asserted claims") ofthe '718 patent, and that Kyocera
has not satisfied the technical prong ofthe domestic industry requirement with respect to the
'718 patent. Specifically, the ID finds that Kyocera failed to show that Hitachi's accused
products and Kyocera's domestic industry products satisfy the "system controller" limitation.
The ID also finds that the asserted claims are not invalid under 35 U.S.C. 103, 112 for
obviousness or indefiniteness; respectively, and that Kyocera has satisfied the economic prong of
the domestic industry requirement with respect to the '718 patent. In the same document, the
AUJ recommended that if the Commission finds a violation, it should issue a limited exclusion
order directed to Hitachi's infringing products and a cease and desist order directed to Hitachi.
On June 24, 2019, Kyocera petitioned, and Hitachi contingently petitioned, for review of
the final ID. On July 2, 2019, Kyocera and Hitachi each filed a response to the other party's
petition for review.
Having reviewed the record ofthe investigation, including the parties' briefing, the
Commission has determined to review the subject ID in part. Specifically, the Commission has

determined to review the ID's finding that Kyocera did not establish: (1)either direct or
induced infringement of the asserted claims; and(2)practice ofthe asserted claims by Kyocera's
domestic industry products to satisfy the domestic industry requirement. The Commission has
also determined to review the ID's finding that Kyocera demonstrated sufficient activities and
investments relating to the articles protected by the '718 patent to satisfy the domestic industry
requirement. The Commission has determined not to review the remainder ofthe ID.
In view ofthe Commission's determination to review the issues mentioned above, factual
and legal findings are necessary in order for the Commission to have a full record to determine
whether Kyocera has demonstrated a violation of section 337. Accordingly, remand to the AUJ
is necessary on the issues of whether Kyocera has established, by a preponderance ofthe
evidence, that: (1)the remaining limitations (irrespective ofthe "system controller" limitation)
ofthe asserted claims are met by Hitachi's accused products;(2)the remaining limitations ofthe
asserted claims are practiced by Kyocera's domestic industry products; and (3)Hitachi induced
infringement of the asserted claims.
Upon consideration ofthis matter, the Commission hereby ORDERS that:
1. The following issues are remanded to the All for a remand initial
determination ("RID"), i.e., whether Kyocera has established, by a
preponderance ofthe evidence that: (a)the remaining limitations ofthe
asserted claims are met by Hitachi's accused products;(b)the remaining
limitations ofthe asserted claims are practiced by Kyocera's domestic
industry products; and (c) Hitachi has induced infringement ofthe asserted
claims.
2. The RID shall become final 45 days after issuance absent Commission review.
3. The All shall issue his RID expeditiously based on the existing record, and
shall extend the target date for termination ofthe investigation to four months
after the date ofthe RID.
4. Kyocera or Hitachi may petition for review ofthe AL's RID pursuant to

Commission Rule 210.43(a)(treating the RID as an ID issued under
Commission Rule 210.42(a)(1)).
5. The Secretary to the Commission shall serve a copy ofthis Order upon each
party to this investigation.
By order ofthe Commission.
Lisa R. Barton
Secretary to the Commission
Issued: August 14, 2019

CERTAIN GAS SPRING NAILER PRODUCTS AND Inv. No.337-TA-1082
COMPONENTS THEREOF
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that the attached Order, Commission has been served
upon the following parties as indicated, on August 15,2019.
0	°6	0	1
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street, SW,Room 112
Washington, DC 20436
On Behalf of Complainants Kyocera Senco Brands,Inc.:
Robert S. Riggs, Esq.
VEDDER PRICE PC
222 North LaSalle Street, Suite 2600
Chicago, IL 60601-1003
On Behalf of Respondents Hitachi Koki U.S. A., Limited:
Paul Devinsky, Esq.
McDERMOTT WILL & EMERY LLP
500 North Capitol Street, NW
Washington, DC 20001
El Via Hand Delivery
E4ia Express Delivery
Via First Class Mail
1:1 Other:
yia Hand Delivery
'Via Express Delivery
Via First Class Mail
Other:

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington,D.C.
In the Matter of
CERTAIN GAS SPRING NAILER PRODUCTS
AND COMPONENTS THEREOF
Inv. No.337-TA-1082
INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND
RECOMMENDED DETERMINATION ON REMEDY AND BOND
Chief Administrative Law Judge Charles E. Bullock
(June 7, 2019)
Appearances:
For Complainant Kyocera Senco Brands, Inc.
Robert S. Rigg, Esq.; David Bernard, Esq.; and John K. Burke, Esq. of Vedder Price from
Chicago, IL
For Respondent Hitachi Koki US.A. Limited
Paul Devinsky, Esq.; Alexander Ott, Esq.; and Jay H. Reiziss, Esq. of McDermott Will & Emery
LLP from Washington, DC
Amol Parikh, Esq. of McDermott Will & Emery LLP from Chicago, IL
Joseph H. Paquin, Jr., Esq. of Barnes & Thornburg LLP from Chicago,IL

TABLE OF CONTENTS
I. INTRODUCTION 1
A. Procedural History 1
B. The Private Parties 3
1. Complainant Kyocera Senco Brands Inc. 3
2. Respondent Hitachi Koki U.S.A., Ltd. 3
C. Products at Issue 3
1. The Accused Products 3
2. The Domestic Industry Products 3
II. THE '296,'297,'722, AND '282 PATENTS 4
III. JURISDICTION AND IMPORTATION 4
A. Subject Matter Jurisdiction 4
B. Personal Jurisdiction 4
C. In Rem Jurisdiction 4
IV. ORDINARY SKILL IN THE ART 5
V. RELEVANT LAW 5
A. Infringement 5
1. Literal Infringement 5
2. Indirect Infringement 5
a) Induced Infringement 6
B. Validity 6
1. Obviousness(35 U.S.C. § 103) 7
2. Indefiniteness(35 U.S.C. § 112) 8
C. Domestic Industry 9
1. Economic Prong 9
2. Technical Prong 10
VI. REPRESENTATIVENESS OF THE NT1850DE ACCUSED PRODUCT AND
THE F-15 DOMESTIC INDUSTRY PRODUCT 10
A. The Accused Products 10
B. The Domestic Industry Products 15
VII. U.S. PATENT NO. 8,387,718 20
A. Overview 20
1. Asserted Claims 21
2. Claim Construction 22
B. Infringement 23
1. Direct Infringement 25
a) Claim 1 25
i) "system controller" — limitation (a)(ii) 25
b) Claims 10 and 16 29
2. Indirect Infringement 29
1

C. Domestic Industry — Technical Prong 29
1. Claim 1 30
a) "system controller" — limitation (a)(ii) 31
2. Claims 10 and 16 35
D. Invalidity 35
1. Obviousness 35
a) Haley in view of Kondo and Forster, Shima, or
the Senco 41 Nailer 35
i) "lifter member" 35
b) Haley in view of Pedicini and Ellingham, and
Forster, Shima, or the Senco 41 Nailer 39
i) "lifter member" 39
c) Pedicini in view of Ellingham and Forster, Shima,
or the Senco 41 Nailer 41
i) "main storage chamber" 41
d) Secondary Considerations 46
2. Indefiniteness 47
VIII. DOMESTIC INDUSTRY — ECONOMIC PRONG 51
A. Significant Employment of Labor or Capital 51
IX. CONCLUSIONS OF LAW 54
X. RECOMMENDED DETERMINATION ON REMEDY AND BOND 55
A. Limited Exclusion Order 55
B. Cease and Desist Order 56
C. Bond During Presidential Review Period 59
XI. INITIAL DETERMINATION 60
11

LIST OF ABBREVIATIONS
The following abbreviations may be used in this Initial Determination:
CDX Complainant's demonstrative exhibit
CPX Complainant's physical exhibit
CX Complainant's exhibit
CIB Complainant's initial post-hearing brief
CRB Complainant's reply post-hearing brief
CPHB Complainant's pre-hearing brief
Dep Deposition
JX Joint Exhibit
RDX Respondent's demonstrative exhibit
RPX Respondent's physical exhibit
RX Respondent's exhibit
RIB Respondent's initial post-hearing brief
RRB Respondent's reply post-hearing brief
RPHB Respondent's pre-hearing brief
RX Respondent's exhibit
RIB Respondent's initial post-hearing brief
RRB Respondent's reply post-hearing brief
Tr. Transcript
PHB Pre-hearing brief

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington,D.C.
In the Matter of
Inv. No.337-TA-1082
CERTAIN GAS SPRING NAILER PRODUCTS
AND COMPONENTS THEREOF
[CORRECTED]INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND
RECOMMENDED DETERMINATION ON REMEDY AND BOND
Chief Administrative Law Judge Charles E. Bullock
(June 7, 2019)
Pursuant to the Notice of Investigation, this is the Initial Determination in the Matter of
Certain Gas Spring Nailer Products and Components Thereof, Investigation No. 337-TA-1082.
For the reasons stated herein, the undersigned has determined that no violation of section
337 ofthe TariffAct of 1930,as amended,has been found in the importation into the United States,
the sale for importation, or the sale within the United States after importation of certain gas spring
nailer products and components thereof with respect to U.S. Patent No. 8,387,718.

I. INTRODUCTION
A. Procedural History
Complainant Kyocera Senco Brands Inc.("Complainant")filed a complaint on September
26, 2017. An amended complaint was filed on October 17, 2017. The amended complaint, as
supplemented, alleges violations of section 337 based on the importation and sale of certain gas
spring nailer products and components thereof that purportedly infringe U.S. Patent Nos.
8,011,547 ("the '547 patent"), 8,267,296 ("the '296 patent"), 8,267,297 ("the '297 patent")1,
8,387,718("the '718 patent"), 8,286,722("the '722 patent), and 8,602,282("the '282 patent"). 82
Fed. Reg. 55,118-119(Nov. 20, 2017). The Investigation was instituted on November 20, 2017.
Id. The Notice of Institution named Hitachi Koki U.S.A. Limited ("Respondent") as the
respondent. Id. The Office of Unfair Import Investigations is not a party to the Investigation. Id.
On June 4, 2018, the '547 patent was terminated from the Investigation, based on the
withdrawal of the allegations pertaining to that patent. (See Order No. 13; see also Notice of
Comm'n Decision Not to Review an Initial Determination Granting a Joint Mot. for Partial
Termination of the Investigation as to one of the Asserted Patents(June 22, 2018).)
On October 24, 2018, the undersigned granted-in-part Respondent's motion in limine no.
1 to exclude testimony and evidence regarding Senco's technical expert, Dr. John D. Pratt.(See
Order No. 28, attached hereto as Exhibit 1.) Specifically, the undersigned found that Dr. Pratt did
not qualify as a person of ordinary skill in the art under the standard set forth in the Markman
order. The undersigned stated:
While Dr. Pratt meets the educational requirement, he lacks the requisite
experience. The undersigned found that a person of ordinary skill in the art is
'on June 19, 2018, claim 30 ofthe '297 patent was added to the Investigation.(See Order No. 15; see also Notice of
Comm'n Decision Not to Review an Initial Determination Granting Complainant's Mot. to Amend the Notice of
Investigation to Add Claim 30 of U.S. Patent No. 8,267,297(July 9, 2018).)

required to have some degree ofexperience in power nailer design.(Order No.9 at
5-6.)Dr. Pratt has extensive experience in fastener driving tools, but does not purport
to have any experience in power nailer design. (See Opp. at 2 (noting that
experience in fastener driving tools "overlaps" with the requisite experience, but
never asserting that Dr. Pratt does,in fact, have such experience);see also Mot. Ex.
1 at 48:19-21 (deposition testimony in which Dr. Pratt admits that he does not have
any experience designing powered nailers).) As such, Dr. Pratt does not qualify as
a person of ordinary skill in the art as that level has been defined.
Id. at 2. The undersigned further noted:
Complainant had the opportunity to argue for a different finding, but chose not to
do so. Permitting Complainant to re-litigate this issue would be unfair to
Respondent and would also undermine the finality of such rulings in future
investigations. The undersigned cannot accept a practice in which litigants are free
to make additional arguments that they had the opportunity to make previously, but
neglected to do so.
Id. at 2-3. Based on this finding, the undersigned determined that Dr. Pratt would not be allowed
to testify regarding the doctrine of equivalents, stating: "Complainant will not be able to establish
infringement as to these claims2 and all of Dr. Pratt's testimony related to the doctrine of
equivalents should be struck." Id. at 6. On that basis, the parties stipulated that the hearing would
only address the '718 patent.(See Joint Statement Re: Order No. 28, Doc ID 659964, at 1 (Oct.
26, 2018)("Complainant and Respondent agree that the hearing should move forward only with
respect to claims 1, 10, and 16 of U.S. Patent 8,387,718.")
The evidentiary hearing was held November 13 — 16, 2018.
2 This includes claims 1 and 16 ofthe '296 patent, claims 1, 30, and 32 ofthe '297 patent, claims 1 and 16 ofthe '722
patent, and claim 1 ofthe '282 patent.
- 2 -

B. The Private Parties
1. Complainant Kyocera Senco Brands Inc.3
Complainant is a company organized and existing under the laws of Delaware, with its
principal place of business in Cincinnati, Ohio. (Am. Compl. at 411 5; see also CIB at 4.)
Complainant develops, designs, engineers, and sells gas spring nailer products, pneumatic nailers,
staplers, and fasteners for the commercial and residential markets.(Id.)
2. Respondent Hitachi Koki U.S.A., Ltd.
Respondent is a Delaware corporation, with its principal place of business in Braselton,
Georgia.(Am. Compl. at ¶10; see also RIB at 3.)
C. Products at Issue
1. The Accused Products
Complainant accuses five gas spring nailers ofinfringing the '718 patent: the NT1850DE,
NT1865DM, NT1865DMA, NR1890DC, and NR1890DR nailers (collectively, the "Accused
Products").(CIB at 6; RIB at 9.)
2. The Domestic Industry Products
Complainant asserts that its FUSION F-18, F-16S, F-16A, and F-15 finish nailers
(collectively, the "Finishing Nailers"), as well as
(collectively, the "Domestic Industry products"), practice at least one
claim of the asserted patent.(Id.)
3 Complainant notes that it has since changed its name to "Kyocera Senco Industrial Tools,Inc."(CIB at 4 n.3.)
- 3 -

THE '296,'297,'722, AND '282 PATENTS
For the reasons discussed in Section I.A.supra,Complainant cannot establish infringement
of claims 1 and 16 of the '296 patent, claims 1, 30, and 32 of the '297 patent, claims 1 and 16 of
the '722 patent, and claim 1 of the '282 patent.
Accordingly, the undersigned finds that there is no violation as to U.S. Patent Nos.
8,267,296; 8,267,297; 8,286,722; and 8,602,282.
III. JURISDICTION AND IMPORTATION
A. Subject Matter Jurisdiction
Section 337 confers subject matter jurisdiction on the Commission to investigate, and if
appropriate, to provide a remedy for, unfair acts and unfair methods of competition in the
importation,the sale for importation, or the sale after importation ofarticles into the United States.
See 19 U.S.C. §§ 1337(a)(1)(B) and (a)(2). Complainant filed a complaint alleging a violation of
this subsection. Accordingly, the Commission has subject matter jurisdiction over this
Investigation under section 337 ofthe Tariff Act of 1930. Amgen,Inc. v. U.S. Intl Trade Comm 'n,
902 F.2d 1532, 1536(Fed. Cir. 1990).
B. Personal Jurisdiction
Respondent has appeared and participated in this Investigation. The Commission therefore
has personal jurisdiction over Respondent. See, e.g., Certain Optical Disk Controller Chips &
Chipsets & Prods. Containing Same,Including DVD Players & PC Optical Storage Devices, Inv.
No. 337-TA-506, Initial Determination at 4-5(May 16, 2005)(unreviewed in relevant part).
C. In Rem Jurisdiction
Respondent does not dispute that the Commission has in rem jurisdiction. (RIB at 11
(admitting that it has sold the Accused Products in the United States after importation))
4

IV. ORDINARY SKILL IN THE ART
The undersigned has previously determined that one of ordinary skill in the art with respect
to the asserted patent would have had at least(i)a Master's Degree in mechanical engineering with
at least two years of experience in power nailer design; (ii) a Bachelor's Degree in mechanical
engineering with at least five years of experience in powered nailer design; or (iii) ten or more
years of experience in powered nailer design.(Order No.9 at 5-6(May 3, 2018).)
V. RELEVANT LAW
A. Infringement
In a section 337 investigation, the complainant bears the burden of proving infringement
of the asserted patent claims by a preponderance of the evidence. Spansion, Inc. v. Intl Trade
Comm 'n,629 F.3d 1331, 1349(Fed. Cir. 2010). This standard "requires proving that infringement
was more likely than not to have occurred." Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418
F.3d 1326, 1341 n.15 (Fed. Cir. 2005).
1. Literal Infringement
Literal infringement is a question of fact. Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d
1323, 1332(Fed. Cir. 2008). Literal infringement requires the patentee to prove that the accused
device contains each limitation of the asserted claim(s). If any claim limitation is absent, there is
no literal infringement ofthat claim as a matter oflaw. Bayer AG v. Elan Pharm. Research Corp.,
212 F.3d 1241, 1247(Fed. Cir. 2000).
2. Indirect Infringement
Indirect infringement may be either induced or contributory. Direct infringement must first
be established in order for a claim of indirect infringement to prevail. BMC Res. v. Paymentech,
498 F.3d 1373, 1379(Fed. Cir. 2007).
5

a) Induced Infringement
Section 271(b) of the Patent Act provides: "Whoever actively induces infringement of a
patent shall be liable as an infringer." 35 U.S.C. §271(b)(2008). To establish liability, the patent
holder must prove that "once the defendants knew of the patent, they 'actively and knowingly
aid[ed] and abett[ed] another's direct infringement." DSU Med. Corp. v. JMS Co., Ltd. 471 F.3d
1293, 1305 (Fed. Cir. 2006)(en banc) (citations omitted). A finding of induced infringement
requires "evidence of culpable conduct, directed to encouraging another's infringement, not
merely that the inducer had knowledge of the direct infringer's activities." Id. at 1306. Although
§271(b) requires knowledge that the induced acts constitute patent infringement, the Supreme
Court has held that liability will also attach when the defendant is willfully blind. Global-Tech
Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060,2068-2069(2011). The burden is on the complainant
to prove that the respondent had the specific intent and took action to induce infringement. DSU,
471 F.3d at 1305-06. Intent may be proven by circumstantial evidence. Lucent Tech., Inc. v.
Gateway, Inc., 580 F.3d 1301, 1322(Fed. Cir. 2009).
B. Validity
A patent is presumed valid. 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct.
2238, 2242 (2011). A respondent who has raised patent invalidity as an affirmative defense has
the burden of overcoming this presumption by clear and convincing evidence. Microsoft,131 S.
Ct. at 2242. As with an infringement analysis, an analysis of invalidity involves two steps:
determining the scope of the claim and comparing the properly construed claim with the prior art
to determine whether the claimed invention is anticipated and/or rendered obvious.
6

1. Obviousness(35 U.S.C.§ 103)
Under 35 U.S.C. §103, a patent may be found invalid for obviousness if"the differences
between the subject matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains." 35 U.S.C. §103(a). Because obviousness is
determined at the time of invention, rather than the date of application or litigation, "[t]he great
challenge of the obviousness judgment is proceeding without any hint of hindsight." Star
Scientific, Inc. v. RI Reynolds Tobacco Co.,655 F.3d 1364, 1375 (Fed. Cir. 2011)("Star II").
When a patent is challenged as obvious, the critical inquiry in determining the differences
between the claimed invention and the prior art is whether there is an apparent reason to combine
the known elements in the fashion claimed by the patent at issue. KSR Int? Co. v. Teleflex, Inc.,
550 U.S. 398,417-418(2007). The Federal Circuit has since held that when a patent is challenged
as obvious, based on a combination of several prior art references,"the burden falls on the patent
challenger to show by clear and convincing evidence that a person of ordinary skill in the art would
have had reason to attempt to make the composition or device, or carry out the claimed process,
and would have had a reasonable expectation of success in doing so."PharmaStem Therapeutics,
Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360(Fed. Cir. 2007)(citations omitted).
Obviousness is a determination of law based on underlying determinations of fact. Star II,
655 F.3d at 1374. The factual determinations behind a finding of obviousness include: (1) the
scope and content of the prior art,(2) the level and content of the prior art,(3) the differences
between the claimed invention and the prior art, and (4) secondary considerations of non-
obviousness. KSR, 550 U.S. at 399 (citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)).
These factual determinations are referred to collectively as the "Graham factors." Secondary
7

considerations ofnon-obviousness include commercial success, long felt but unresolved need, and
the failure of others. Id. When present, secondary considerations "give light to the circumstances
surrounding the origin of the subject matter sought to be patented," but they are not dispositive on
the issue of obviousness. Geo. M Martin Co. v. Alliance Mach. Sys. Intl, 618 F.3d 1294, 1304-
06 (Fed. Cir. 2010). A court must consider all of the evidence from the Graham factors before
reaching a decision on obviousness. For evidence of secondary considerations to be given
substantial weight in the obviousness determination, its proponent must establish a nexus between
the evidence and the merits of the claimed invention. W. Union Co. v. MoneyGram Payment Sys.
Inc., 626 F.3d 1361, 1372-73 (Fed. Cir. 2010)(citing In re GPAC Inc., 57 F.3d 1573, 1580(Fed.
Cir. 1995)).
2. Indefiniteness(35 U.S.C.§ 112)
A claim must also be definite. Pursuant to 35 U.S.C. § 112, second paragraph:"The
specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112,¶ 2. In
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), the Supreme Court held that §
112,¶ 2 requires "that a patent's claims, viewed in light ofthe specification and prosecution history
inform those skilled in the art about the scope of the invention with reasonable certainty." (Id. at
2129.) A claim is required to "provide objective boundaries for those of skill in the art," and a
claim term is indefinite if it "might mean several different things and no informed and confident
choice is among the contending definitions."Interval Licensing LLC v. AOL,Inc., 766 F.3d 1364,
1371 (Fed. Cir. 2014). A patent claim that is indefinite is invalid. 35 U.S.C. § 282(b)(3)(A).
8

C. Domestic Industry
In a patent-based complaint, a violation ofsection 337 can be found "only if an industry in
the United States, relating to the articles protected by the patent. .. concerned, exists or is in the
process of being established." 19 U.S.C. § 1337(a)(2). Under Commission precedent, this
"domestic industry requirement" of section 337 consists of an economic prong and a technical
prong. Certain Stringed Musical Instruments and Components Thereof Inv. No. 337-TA-586,
Comm'n Op. at 12-14, 2009 WL 5134139 (U.S.I.T.C. Dec. 2009). The complainant bears the
burden of establishing that the domestic industry requirement is satisfied. See Certain Set-Top
Boxes and Components Thereof Inv. No. 337-TA-454, Final Initial Determination at 294, 2002
WL 31556392(U.S.I.T.C. June 21, 2002)(unreviewed by Commission in relevant part).
1. Economic Prong
Section 337(a)(3) sets forth the following economic criteria for determining the existence
of a domestic industry in such investigations:
(3) For purposes of paragraph (2), an industry in the United States
shall be considered to exist if there is in the United States, with
respect to the articles protected by the patent, copyright, trademark,
mask work, or design concerned —
(A) significant investment in plant and equipment;
(B) significant employment of labor or capital; or
(C) substantial investment in its exploitation, including engineering,
research and development, or licensing.
Given that these criteria are listed in the disjunctive, satisfaction of any one of them will be
sufficient to meet the economic prong of the domestic industry requirement. Certain Integrated
Circuit Chipsets and Prods. Containing Same, Inv. No. 337-TA-428, Order No. 10, Initial
Determination (unreviewed)(May 4, 2000).
9

2. Technical Prong
The technical prong ofthe domestic industry requirement is satisfied when the complainant
in a patent-based section 337 investigation establishes that it is practicing or exploiting the patents
at issue. See 19 U.S.C. § 1337(a)(2) and (3); Certain Microsphere Adhesives, Processfor Making
Same and Prods. Containing Same, Including Self-Stick Repositionable Notes, Inv. No. 337-TA-
366, Comm'n Op. at 8, 1996 WL 1056095 (U.S.I.T.C. Jan. 16, 1996)."The test for satisfying the
'technical prong' ofthe industry requirement is essentially[the] same as that for infringement, i.e.,
a comparison of domestic products to the asserted claims."Alloc, Inc. v. Int'1 Trade Comm 'n, 342
F.3d 1361, 1375 (Fed. Cir. 2003). To prevail, the patentee must establish by a preponderance of
the evidence that the domestic product practices one or more claims of the patent, either literally
or under the doctrine of equivalents. Bayer, 212 F.3d at 1247. It is sufficient to show that the
products practice any claim ofthat patent, not necessarily an asserted claim ofthat patent. Certain
Microsphere Adhesives, Comm'n Op. at 7-16.
VI. REPRESENTATIVENESS OF THE NT1850DE ACCUSED PRODUCT AND THE
F-15 DOMESTIC INDUSTRY PRODUCT
A. The Accused Products
Complainant asserts that the "NT1850DE Nailer is representative of the NT1865DM,
NT1865DMA,NR1890DC,and NR1890DR Nailers for the purposes ofinfringement."(CIB at 11
(citing CX-0110C at Q/As 48-59; Pratt Tr. at 134:22-135:22, 136:19-139:9).) To support its
assertion, Complainant relies on the testimony of its expert, Dr. Pratt, who inspected and tested
the Accused Products.4 (Id. (citing CX-0110C at Q/As 48-59; CDX-0001C at 3).) Complainant
also relies on Respondent's parts lists, which it claims"shows that the Accused Products are nearly
4 As discussed supra, Dr. Pratt does not qualify as person of ordinary skill in the art.(See Section I.A.) However,the
undersigned finds that one does not need to be a person of ordinary skill in the art to opine on representativeness of
the products.
- 10 -

identical in structure, save for minor differences to accommodate different-sized fasteners, which
have no impact on infringement of the '718 Patent."(Id. at 11-12 (citing CX-0110C at Q/As 48-
59; JX-0016C; JX-0017C; JX-0018C; CX-0008C; CX-0010C).) Complainant similarly relies on
Respondent's marketing materials.(Id. at 11 (citing JX-0019C; JX-0020C; JX-0021C; JX-0022C;
JX-0023C; CX-0012C).)
Respondent disagrees that Complainant has met its burden to show that the NT1850DE is
representative of the other Accused Products.(RIB at 12.) Respondent points out that Dr. Pratt
"acknowledged differences among the Accused Products" and claims that he failed to "take them
into account in his infringement analysis."(Id.) Specifically, Respondent asserts that "the NR and
NT products have different lifting gears, piston cylinders, and air chambers, and every Accused
Product has a different piston and driver (the 'movable member / piston with driver assembly')."
(Id. (citing CDX-0001 at 3).) Respondent faults Dr. Pratt for "not perform[ing] any analysis
showing that the different components among the Accused Products have identical
characteristics." (Id. at 13.) To corroborate its claim, Respondent refers to Dr. Pratt's cross-
examination testimony in which he admitted that he "was not able to see certain relevant
components, such as the piston" during his inspection of the accused products other than the
NT1850DE.(Id. (citing Pratt Tr. at 76:15-77:4).)
Respondent does not dispute that "there is nothing improper about an expert testifying in
detail about a particular device and then stating that the same analysis applies to other allegedly
infringing devices that operate similarly, without discussing each type of device in detail." See
TiVo,Inc. v. Echostar Commc'ns Corp.,516 F.3d 1290, 1308(Fed. Cir. 2008). Respondent argues,
however, that the expert"cannot simply 'assume' that all ofthe[accused] products are like the one
[the expert] tested and thereby shift to [the Respondent] the burden to show that is not the case."

(RIB at 12 (quoting L& W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1318 (Fed. Cir. 2006)).)
Respondent points out that the Complainant "must point to evidence that supports the proposition
that[the] accused products are identical for purposes ofthe[asserted] patent."(Id.(quoting Certain
Bulk Welding Wire Containers and Components Thereof, Inv. No. 337-TA-686, ID, 2011 WL
7464368, at *155 (July 29, 2010)); see id. (citing Certain Bulk Welding Wire Containers and
Components Thereof, Inv. No. 337-TA-686, ID, 2011 WL 7464368, at *155 (July 29, 2010)
(Complainant must"show by a preponderance of the evidence that the representative products are
indeed 'representative' of all of[the] accused products.").)
The evidence, including Dr. Pratt's testimony at the hearing, is sufficient to establish that
the NT1850DE product is representative of the NT1865DM, NT1865DMA, NR1890DC, and
NR1890DR products "at least for purposes of[the]infringement analysis."(See CX-0110C at Q/A
at 50.) Dr. Pratt first reviewed the parts lists[,] . .. operating instructions, technical and service
manuals, and other literature. (Id. at Q/A 52 (citing JX-0016C (parts list for NT1850DE); JX-
0017C(parts list for NT1865DM); JX-0018C (parts list for NR1890DC); CX-0008C(parts list for
NT1865DMA);CX-0010C(parts list for NR1890DR);see Tr. at 134:8-16.)From this information,
he created a demonstrative "showing how common claim elements from the Asserted Patents are
found in each ofthe Accused Products" to support his "conclusion that the Accused Products have
substantially similar designs."(CX-0110C at Q/A 53(referring to CDX-0001C at 3); see Pratt Tr.
at 134:8-16 (same).) The table from this demonstrative, set forth below, shows that the
NT1865DM,NT1865DMA,NR1890DC, and NR1890DR products share some of the same parts
as the NT1850DE product, which is strong evidence that those parts are the same for purposes of
infringement.
- 12 -

CI AIM EltMENI N118500F
Part No.
N11865DIVI
PutNo
N 186SDMA
Pan
NR1890DC NR1890DR
lifter Member 371026 372321
Main Storar,e Chamber 371035 372337
371036 1172388
Hollow Cylinder 371041 372335
372336
Driver Member 371049 371050 372387
(Housing)
Driver Member (Front 371055 371056 371057 372309 371804
Plate)
Movable Member / 371043 371044 371045 372318 371110
Piston with Driver
Assembty
Prime Mover Rotor 361054 361071
Energy Source(Battery)
Gear box Assembly 371025 372341
Respondent argues that Dr. Pratt's table is evidence that "components in the Accused
Products indisputably relevant to the Asserted Claims are different among the Accused Products"
because not all parts are identical between the products.(RRB at 2.) Although Dr. Pratt agreed
with Respondent that the products have some differences, he testified that "any differences
between the Accused Products concern adaptations to install different sized fasteners and have no
impact on my conclusions reached regarding infringement of the Asserted Patents."(CX-0110C
at Q/A 51.) For example, the demonstrative above shows that the NR1890DC and NR1890DR
products have a different part number than the NT1850DE product for the component identified
as the "main storage chamber." (CDX-0001C at 3.) But Dr. Pratt testified that there are no
"differences with respect to the claims of the '718 patent between the parts identified by part
number in that row"because "[t]hey're pressurized chambers separate and distinct from the hollow
cylinder" that have slightly different configurations because "the NR framing nailers require a
larger volume[,][b]ut other than that, it's just a matter of scale."(Pratt Tr. at 135:11-22.) Dr. Pratt
provided similar testimony for the other components that he matched to claim limitations. (Id. at
134:22-135:22, 136:19-139:9.)
- 13 -

Dr. Pratt corroborated his testimony by referring to documents and his own physical
inspection of the accused products.(CX-0110C at Q/As 54-59.) Respondent criticizes Dr. Pratt's
physical inspection, but even if Respondent is correct that Dr. Pratt's physical inspection
"reveal[ed] nothing about the interior body... because those key components are located deeper
inside those products," Respondent failed to dispute the other evidence that Dr. Pratt relied upon.
(See RIB at 13 (citing Tr. at 76:15-77:4) and RRB at 2-3.) For example, Dr. Pratt relied on
Respondent's instruction and safety manuals, technical data manuals, and service manuals to
confirm that the products only have "minimal differences" with no "effect on the analysis of the
asserted claims ofthe Asserted Patents."(CX-0110C at Q/As 54-55 (citing JX-0019C (instruction
and safety manual for NT1850DE, NT1865DM, and NT1865DMA); JX-0020C (instruction and
safety manual for NR1890DC and NR1890DR); JX-0021C (technical sales document for
NT1850DE, NT1865DM, and NT1865DMA); JX-0022C (technical sales document for
NR1890DC and NR1890DR); JX-0023C (service manual for NT1850DE, NT1865DM, and
NT1865DMA); CX-0012C (service manual for NR1890DC and NR1890DR);see CDX-0001C at
4.)Dr. Pratt also relied on Respondent's marketing literature that "describe[s] the design, structure,
and operation of each Accused Product as being based on the same technology and drive system."
(CX-0010C at Q/As 56-57 (citing CX-0005C (marketing literature for NT1850DE, NT1865DM,
and NT1865DMA); CX-0006C (same); CX-0007C (presentation slides for NT1850DE,
NT1865DM, and NT1865DMA); JX-0013C (marketing literature for NR1890DC and
NR1890DR); JX-0014C (marketing literature for NT1850DE, NT1865DM, NT1865DMA,
NR1890DC,and NR1890DR)).)
Respondent does not assert that the NT1850DE product is not actually representative of
the NT1865DM, NT1865DMA, NR1890DC, and NR1890DR products, nor does it present any
- 14 -

such evidence. It only argues that Complainant has not met its burden of showing
representativeness. Thus, for the reasons discussed above, the documentary evidence in
combination with Dr. Pratt's testimony is sufficient to establish that the NT1850DE product is
representative of the NT1865DM, NT1865DMA, NR1890DC, and NR1890DR products for the
purposes of infringement.
B. The Domestic Industry Products
Complainant asserts that the "F-15 Nailer is representative ofthe other[Domestic Industry]
Products, namely, Complainant's F-16A, F-16S, and F-18 Nailers, as well as
for purposes of[domestic industry]."(CIB at 12 (citing CX-0110C at Q/As 232-
60; Pratt Tr. at 139:16-147:3).) For its assertion, Complainant relies on the testimony ofits expert,
Dr.Pratt, who inspected and tested the Domestic Industry products. (Id.(citing CX-0110C at Q/As
232-60; CDX-0002C).) Complainant also relies on its parts lists, engineering drawings, and
advertising materials, which it claims show "some minor differences among the DI Products,[but
the] differences concern adaptations to install different-sized fasteners and have no impact on
practice ofthe '718 Patent." (Id. at 12-13 (citing CX-0015C; CX-0016C; CX-0017C; CX-0018C;
CX-0019C; CX-0024; CPX-0005C; CPX-0007C; JPX-0001; JPX-0002; JPX-0003; JPX-0004).)
Complainant further asserts that its F-15 finish nailer is representative of its
among other reasons. (Id. at 13-14 (citing CX-0112C at Q/As 26-41; CX-0025C; CX-
0026C; CX-0027C; CX-0028C; RX-0259C at 260:1-2).)
Respondent disagrees that Complainant has met its burden to show that the F-15 is
representative ofthe other finish nailer domestic industry products.(RIB at 13.)Respondent points
out that Dr. Pratt"confirmed at the hearing that there is no evidence in the record about the specific
- 15 -

piston, hollow cylinder, lifter member, and main storage chamber used in the Alleged Domestic
Industry Products or evidence that the piston, cylinder, lifter member, and main storage chamber
in the FUSION F-15 are representative of any such components in the other Alleged Domestic
Industry Products."(Id. at 13-14 (citing Pratt Tr. at 92:4-94:8).) Respondent also points out that,
with respect to the parts list, "Dr. Pratt admitted that the driver assembly—which contains the
piston, lifter member, and main storage chamber—is different in each of the Alleged Domestic
Industry Products... and that he never fully saw these components during his inspection."(Id. at
14 (citing Pratt Tr. at 99:1-105:16).) Regarding the engineering drawings, Respondent complains
that "[t]here is no testimony by any fact witness . .. that they accurately reflect the components
used in the FUSION tools."(Id. at 15(citing Pratt Tr. at 106:7-24,108:7-110:16,113:7-23,116:21-
118:13).) Finally, as to the operating instructions and advertising materials, Respondent points
out that these documents do not provide part numbers for any of the components. (Id. at 15-16
(citing Pratt Tr. at 119:8-121:20).)
Respondent also disagrees that Complainant has met its burden to show that the F-15 is
representative of (Id. at 16.) Respondent reasons that
(Id. (citing RX-0259C at 243:17-244:17;
Pratt Tr. at 131:12-132:24).)
As with the Accused Products, Dr. Pratt reviewed parts lists, operating instructions,
technical and services manuals, engineering drawings, and advertising materials for the domestic
industry products. (CX-0110C at Q/As 245-247 (citing CX-0015C (collection of engineering
drawings); CX-0016C (parts reference guide for F-15); CX-0017C (parts reference guide for F-
- 16 -

16A); CX-0018C (parts reference guide for F-16S); CX-0019C (parts reference guide for F-118);
CX-0024 (collection of photographs); CX-0025C
; CX-0027C
; CX-0028C
; CX-0026C
)From this information, he created a demonstrative "summarizing the
correlation between the parts found in each ofthe Domestic Industry Products and several common
claim limitations from the Asserted Patents" to support his "conclusion that the Domestic Industry
Products have substantially similar designs."(Id. (referring to CDX-0002C at 2); see Pratt Tr. at
97:4-25.) The table in this demonstrative, set forth below, shows that the F-15, F-15A,F-16S, and
F-18 products have the same part number for the components identified for all the limitations
except for the "driver member front plate (1)" and "prime mover(2)" limitations.
lifter Member
Main l Storage(!Limber
liolinWCYfinriet —
lintret Membet
'lousing
Dove. Member flout
Plate (1)
Movable Member /
Piston
Prime Mover (2)
I nergy Source (Battery)
((ern box Assembly
FUSION F IS I LIMON F 164
Part No.
FC0694
I USION F 165 FUSION F 18
Part No. Part No
VA0066
Vt80050
SCOW
BC01131
F03693
FC0702
EC0475
V201413
V4C0111
FC0729
VA0079
Respondent attacks the data in Dr. Pratt's demonstrative. Respondent specifically refers to
Dr. Pratt's admissions on cross-examination that the parts lists he relies on (CX-0016C, CX-
0017C,CX-0018C,and CX-0019C)do not identify the specific part number for the lifter member,
- 17 -

piston, storage chamber,or cylinder. (RIB at 14(citing Pratt Tr. at 99:24-100:13, 101:2-18; 103:6-
104:6, 104:18-105:16).)
On redirect examination, Dr. Pratt explained that the parts numbers listed in his
demonstrative are shown in the engineering drawings (CX-0015). (Pratt Tr. at 143:4-147:3.) He
testified that he compared the engineering drawings with the physical products during his manual
inspection of the products to verify that the parts were the same as depicted "by, for example,
taking measurements with the cover off"(Id.)
Respondent contends that Dr. Pratt's manual inspection of the products was not sufficient
because, although he "fully disassembled the F-15" product, he only he took off"the housing and
examin[ed] the components inside" for the F-16A, F-16S, and F-18 products. (Pratt Tr. at 93:7-
17.) From this inspection of the F-16A, F-16S, and F-18 products, he could not see the piston
inside the drive assembly, the piston stop inside the drive assembly, or the internal portion of the
main storage chamber or cylinder inside the drive assembly because "it's buried up inside" and
"it's all sealed and pressurized."(Id. at 93:18-94:8;see id. at 140:3-141:15("[T]o take these things
apart on the Fusion, you have to drill a hole to relieve the pressurized gas inside the pressurized
chamber. Otherwise, it could ... injure you, which is one of the reasons I didn't drill holes in all
of the exemplar parts.").) Respondent also points out that the parts lists (CX-0016C, CX-0017C,
CX-0018C, and CX-0019C)show a different driver assembly for each product.(RIB at 14; RRB
at 4.) Because the driver assembly"contains the piston,lifter member,and main storage chamber,"
Respondent contends that Dr. Pratt's table is not supported by evidence.(RIB at 14-15.)
Dr. Pratt disagreed that the different part numbers for the driver assemblies established that
the separate piston, lifter member, and main storage chamber components were different between
the products. Dr. Pratt explained that the driver assembly differences concern adaptations to drive
- 18 -

different-sized fasteners and have no impact on his technical domestic industry analysis. (CX-
0110C at Q/A 245; Pratt Tr. at 140:3-141:15 (testifying that the "slight differences in, say, the
guide hole or the guide bore in the... guide body [is] to accommodate a different size driver for
the different size nails" and that he was "able to confirm that all ofthe Senco Fusion tools had this
same configuration and similar parts.").) He further explained that the"common sense" conclusion
in view of the "drawings and the similarity of everything else" in combination with his inspection
was that the products were the same for the purposes of the asserted claims. (Pratt Tr. at 140:3-
141:15.)
Although Complainant's evidence in some aspects is circumstantial instead of direct, it is
more than sufficient to satisfy its burden to prove that the F-15 is identical in relevant respects to
the F-16A, F-16S, and F-18 products. See Metabolite Labs., Inc. v. Lab. Corp. ofAm. Holdings,
370 F.3d 1354, 1365 (Fed. Cir. 2004)("It is hornbook law that direct evidence of a fact is not
necessary.'Circumstantial evidence is not only sufficient, but may also be more certain, satisfying
and persuasive than direct evidence.'"); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261,
1272(Fed. Cir. 1986)(citing Michalic v. Cleveland Tankers, Inc., 364 U.S. 325, 330(1960). The
evidence and Dr. Pratt's testimony establishes that the products are very similar, and the main
differences allow for different size nails which does not concern the asserted claims.
Finally, Respondent takes issue with Complainant's contention that the F-15 products is
representative of . Respondent focuses on the status of the
(RIB at 15
(quoting RX-0259C at 243:17-244:17).) Respondent does not otherwise dispute Complainant's
evidence or contention. Respondent sets up a red herring by arguing that there is no evidence that
the F-15 is representative of (See RRB at 4-5.) But
- 19 -

Complainant only argues that the F-15 is representative of
(CIB at 13.) The preponderance of the evidence, set forth above, shows that it is.(See CX-0110C
at Q/As 253-260; CX-0025C; CX-0026C; CX-0027C; CX-0028C.)
Accordingly, the undersigned finds that Complainant has shown that the F-15 product is
representative of the F-16A, F-16S, and F-18 products, as well as
for purposes ofthe technical domestic industry analysis.
VII. U.S.PATENT NO.8,387,7185
A. Overview
The '718 patent, entitled "Method for Controlling a Fastener Driving Tool Using a Gas
Spring," issued on March 5, 2013 to Richard L. Leimbach, Shane Adams, Thomas W. Clark,
Michael V. Petrocelli, and Teresa Petrocelli. The '718 patent is assigned to Senco Brands, Inc.6
The '718 patent generally relates to "linear fastener driving tools, and, more particularly, [is]
directed to portable tools that drive staples, nails, or other linearly driven fasteners."('718 patent
at 1:15-17.) The invention is "specifically disclosed as a gas spring linear fastener driving tool, in
which a cylinder filled with compressed gas is used to quickly force a piston through a driving
stroke movement, while also driving a fastener into a workpiece."(Id at 18-21; see also Am.
Compl. at Irif 41-43.)
5 The parties note that many of their arguments and evidence concerning infringement, domestic industry, and
invalidity, are made with reference to arguments and evidence proffered with respect to the other patents that are no
longer at issue. The parties therefore stipulate that such arguments and evidence shall only be relied upon for issues
relating to the '718 patent.(See Doc ID 659964 at 1.)
6 Complainant owns by assignment the entire right, title, and interest in the asserted patent.(See Am. Compl. Ex. 16.)
- 20 -

1. Asserted Claims
Complainant is asserting claims 1, 10, and 16 against Respondent. These claims read as
follows:
1. A method for controlling a fastener driving tool, said method comprising:(a) providing a
fastener driving tool that includes: (i) a housing; (ii) a system controller; (iii) a safety
contact element;(iv) a user-actuated trigger;(v)a fastener;(vi) a prime mover that moves
a lifter member which moves a driver member away from an exit end of the mechanism;
and (vii) a fastener driving mechanism that moves said driver member toward said exit end
of the mechanism, said fastener driving mechanism including: (A) a hollow cylinder
comprising a cylindrical wall with a movable piston therewithin, said hollow cylinder
containing a displacement volume created by a stroke ofsaid piston, and(B)a main storage
chamber that is in fluidic communication with said displacement volume of the cylinder,
wherein said main storage chamber and said displacement volume are initially charged
with a pressurized gas;(b)selecting, by a user, an operating mode of said driving cycle to
be one of: a "bottom firing mode," and a "restrictive firing mode;" wherein: (i) if said
restrictive firing mode is selected, said tool will operate if said safety contact element has
been actuated before said trigger actuator has been operated; and (ii) if said bottom firing
mode is selected, said tool will operate if both:(A)said trigger actuator has been operated,
and (B)said safety contact element has been actuated, in either sequence;(c) initiating a
driving cycle by pressing said exit end against a workpiece and actuating said trigger,
thereby causing said fastener driving mechanism to force the driver member to move
toward said exit end and drive a fastener into said workpiece; and(d)actuating said prime
mover, thereby moving said lifter member and causing said driver member to move away
from said exit end toward a ready position.
10. A method for controlling a fastener driving tool, said method comprising:(a) providing a
fastener driving tool that includes: (i) a housing; (ii) a system controller; (iii) a safety
contact element;(iv) a user-actuated trigger;(v)a fastener;(vi) a prime mover that moves
a lifter member which moves a driver member away from an exit end of the mechanism;
and (vii)a fastener driving mechanism that moves said driver member toward said exit end
of the mechanism, said fastener driving mechanism including: (A) a hollow cylinder
comprising a cylindrical wall with a movable piston therewithin, said hollow cylinder
containing a displacement volume created by a stroke ofsaid piston, and(B)a main storage
chamber that is in fluidic communication with said displacement volume of the cylinder,
wherein said main storage chamber and said displacement volume are charged with a
pressurized gas during all portions of an operating cycle; (b) selecting, by a user, an
operating mode ofsaid driving cycle to be one of: a "bottom firing mode," and a "restrictive
firing mode;" wherein:(i) if said restrictive firing mode is selected, said tool will operate
if said safety contact element has been actuated before said trigger actuator has been
operated; and (ii) if said bottom firing mode is selected, said tool will operate if both:(A)
said trigger actuator has been operated, and (B) said safety contact element has been
actuated,(c) initiating a driving cycle by pressing said exit end against a workpiece and
actuating said trigger, thereby causing said fastener driving mechanism to force the driver
- 21 -

member to move toward said exit end and drive a fastener into said workpiece; and (d)
actuating said prime mover, thereby moving said lifter member and causing said driver
member to move away from said exit end toward a ready position.
16. A method for controlling a fastener driving tool, said method comprising:(a) providing a
fastener driving tool that includes: (i) a housing; (ii) a system controller; (iii) a safety
contact element;(iv) a user-actuated trigger;(v)a fastener;(vi) a prime mover that moves
a lifter member which moves a driver member away from an exit end of the mechanism;
and (vii) a fastener driving mechanism that moves said driver member toward said exit end
of the mechanism, said fastener driving mechanism including: (A) a hollow cylinder
comprising a cylindrical wall with a movable piston therewithin, said hollow cylinder
containing a displacement volume created by a stroke ofsaid piston, and(B)a main storage
chamber that is in fluidic communication with said displacement volume of the cylinder,
wherein said main storage chamber and said displacement volume are charged with a
pressurized gas during all portions of an operating cycle; (b) selecting, by a user, an
operating mode ofsaid driving cycle to be one of: a "bottom firing mode," and a "restrictive
firing mode;" wherein:(i) if said restrictive firing mode is selected, said tool will operate
if said safety contact element has been actuated before said trigger actuator has been
operated; and (ii) if said bottom firing mode is selected, said tool will operate if both:(A)
said safety contact element has been actuated, and (B) said trigger actuator has been
operated,(c) initiating a driving cycle by pressing said exit end against a workpiece and
actuating said trigger, thereby causing said fastener driving mechanism to force the driver
member to move toward said exit end and drive a fastener into said workpiece; and (d)
actuating said prime mover, thereby moving said lifter member and causing said driver
member to move away from said exit end toward a ready position.
2. Claim Construction
The undersigned construed the following terms from the asserted claims as follows:
TERM CLAIM CoNSTRUCTION
"charged with a pressurized
gas"
containing gas at a pressure higher than atmospheric pressure
"safety contact element" a device that when engaged allows operation of the fastener
driving tool
"main storage chamber" a chamber that is distinct from the volume of the cylinder and
contains part of the working air volume during operation
"system controller" a circuit configured to control operation based on received
input signals
"bottom firing mode" a mode in which the tool operates if the trigger actuator is
first operated and then the safety contact element is actuated
and also operates if the safety contact element is first actuated
and then the trigger actuator is operated
- 22 -

TERM CLAIM CONSTRUCTION
"restrictive firing mode" a mode in which the tool operates if the safety contact element
is first actuated and then the trigger actuator is operated
"initially charged with
pressurized gas"
a containing gas at a pressure higher than atmospheric pressure
before operation
"mechanism" fastener driving mechanism
"ready position" at or proximal to the uppermost travel position
"lifter member" rotatable component having lifting pins on its face surface
"driver member" component having multiple teeth that is designed to drive a
fastener into a workpiece
(Order No.9 at 17-21, 32-45(May 3,2018).)
B. Infringement
Complainant alleges that the Accused Products infringe claims 1, 10, and 16 of the '718
patent.(CIB at 9.) Complainant asserts that in determining that each element was met,"Dr. Pratt
physically inspected the Accused Products, reviewed parts lists, manufacturing drawings, and
other literature for the Accused Products, and tested the Accused Products." (Id. at 16.)
Complainant further contends that for simple claim limitations, such as those in the asserted patent,
"a visual inspection alone is sufficient to show infringement, often even without expert testimony."
(Id. at n.7(citing K-TEC,Inc. v. Vita-Mix Corp.,696 F.3d 1364, 1371, 1374(Fed. Cir. 2012)("K-
TEC"); Canon Comput. Sys., Inc. v. Nu-Kote Int?, Inc., 134 F.3d 1085, 1089 (Fed. Cir. 1998)
("Canon"))
Respondent insists that it does not infringe the asserted claims.(RIB at 17.) Respondent
also objects to Complainant's reliance on K-TEC and Canon. First, Respondent argues that the
technology in K-TEC was simple.(RRB at 7.) According to Respondent, this is evidenced by the
relatively low level of ordinary skill in the art, namely an associate's degree in mechanical
engineering with two to four years of experience in the design or manufacture of blender jars or
equivalent containers. (Id. (citing K-TEC,Inc. v. Vita-Mix Corp., 729 F.Supp.2d 1312, 1320(D.
- 23 -

Utah 2010),aff'd,K-TEC, 696 F.3d 1364(Fed. Cir. 2012).)Respondent asserts that unlike K-TEC,
"this case involve [sic] far more complex technology as evidenced by the high level of ordinary
skill in the art, which requires either an advanced engineering degree or a lesser degree buttressed
with several years of power tool design experience."(Id. at 7-8 (citing Order No. 9).) Respondent
further asserts that in complex technology cases such as this Investigation, "particularized
testimony showing how each limitation ofthe Asserted Claims is present in the Accused Products
is required."(Id. at 8(citing AquaTex Indus., Inc. v. Techniche Solutions,479 F.3d 1320, 1329 n.7
(Fed. Cir. 2007); Centricut, LLV v. Esab Group,Inc., 390 F.3d 1361, 1369(Fed. Cir. 2004)(expert
testimony typically necessary in cases involving complex technology).) Second, Respondent
contends that while the expert in Canon may have relied on a visual inspection, he still compared
the accused product to the asserted claims, prepared a claim chart, and explained his findings,
which is unlike Dr. Pratt's conclusory testimony.
While the undersigned agrees with Complainant that a visual inspection will suffice for
certain claim limitations in the '718 patent — such as "a housing,""a fastener," or "a user-actuated
trigger," the asserted claims are comprised of more than just "simple" limitations. In the instant
matter, the technology is complex. It is not easily understandable to laypersons; a fact confirmed
by the level of ordinary skill set in the Markman Order. (Section IV, supra.)7 The undersigned
therefore finds that explanatory expert testimony — beyond that ofa visual inspection — is necessary
in this Investigation to demonstrate infringement ofthe asserted patent.8
7 Notably, Complainant's own expert, Dr. Pratt, does not qualify as a person of ordinary skill in the art because he
lacks the requisite experience.(See Order No. 28.)
8 The exception being those few claim limitations present in the '718 patent that even a layperson is capable of
understanding — e.g.,"a housing,""a fastener," or "a user-actuated trigger."
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1. Direct Infringement
a) Claim 19
For the reasons set forth infra, the undersigned finds that Complainant has not satisfied
its burden to prove that the Accused Products, at a minimum, practice the "system controller"
limitation.I°
i) "system controller" — limitation (a)(ii)11, 12
Complainant contends that the Accused Products include this limitation. Complainant
explains that "the controller determines when, and for how long, current is fed from the energy
source to the prime mover after receiving inputs from sensors on the tool."(CIB at 17(citing CX-
0110C at Q/A 160).)
9 Respondent does not dispute that the following elements are present in the Accused Products: (a)(i) "a housing";
(a)(iii) "a safety contact element"; (a)(iv) "a user-actuated trigger"; (a)(vii)(B) "a main storage chamber that is in
fluidic communication with said displacement volume of the cylinder, wherein said main storage chamber and said
displacement volume are initially charged with a pressurized gas";(b)(i) "if said restrictive firing mode is selected,
said tool will operate if said safety contact element has been actuated before said trigger actuator has been operated;
and";(b)(ii)"if said bottom firing mode is selected, said tool will operate if both:;(b)(ii)(A)"said trigger actuator has
been operated, and";(b)(ii)(B)"said safety contact element has been actuated, in either sequence;" and(d)"actuating
said prime mover, thereby moving said lifter member and causing said driver member to move away from said exit
end toward a ready position."(RIB at 17("Respondent is not disputing the presence of any elements ofthe Asserted
Claims not specifically addressed below.").)
10 As the parties are aware,"[t]o prove infringement, the patentee must show that the accused device meets each
claim limitation." Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys., 347 F.3d. 1314, 1324(Fed. Cir.
2003)(emphasis added).
"Should the Commission find that the Accused Products do indeed practice this limitation, Respondent's expert has
conceded that except for the "system controller" and "a lifter member" limitations, all of the other limitations from
claim 1 of the '718 patent are present in the Accused Products. (See RX-0266C at Q/As 317-320; see also RDX-
0002.008; Vallee Tr. at 180:7-24.)
12 The undersigned notes that Complainant's infringement arguments in its post-hearing briefing are cursory and
conclusory in nature.(See, e.g., CIB at 17-18 ("The Accused Products practice [the system controller] limitation."),
20(the extent of Complainant's argument for "selection, by a user, an operating mode of said driving cycle to be one
of: a 'bottom firing mode,'and a 'restrictive firing mode'is one sentence, stating that Respondent's instruction manual
direct end users to "use the Accused Products to practice this limitation.").) In more than one instance, Complainant
cites to various exhibits or questions and answers in Dr. Pratt's testimony without any real explanation. While this is
not a violation ofthe Ground Rules per se, this is — in essence — "incorporating by reference" an expert's testimony in
an attempt to circumvent the page limits on post-hearing briefing, and is not the caliber of briefing expected from the
parties.
- 25 -

Respondent asserts that Complainant has failed to show that this element is met.(RIB at
17.) Respondent states: "Dr. Pratt stated that this limitation is met for the reasons he discussed
with respect to the 'system controller' limitation found in claim 1 ofthe '722 patent.... However,
Dr. Pratt provided no analysis or evidence showing that the circuitry on the printed circuit board
is 'configured to control operation based on received input signals.'(Id.)
The term "system controller" was determined to mean "a circuit configured to control
operation based on received input signals."(See Order No.9 at 17.) Complainant relies primarily
on Dr. Pratt's testimony as proof that this limitation is present in the Accused Products.(See CIB
at 17-18; CRB at 5-6.)When questioned about the "system controller" limitation in the '718 patent,
Dr. Pratt testified:
The Accused Products meet this limitation, as I explained previously with respect
to the similar "system controller" limitation found in claim 1 ofthe '722 Patent and
as shown,for example, on pages 42 and 43 of CDX-0001C.
(CX-0110C at Q/A 191.) His testimony relating to the '722 patent is set forth below:
Q. What is your opinion regarding whether the Accused Products meet the
claim limitation "a housing that contains a prime mover, and a system
controller," as in claim 1 ofthe '722 Patent?
A. The Accused Products meet this limitation. Referring to pages 42 and 43 of
CDX-0001C, I created labeled images of the NT1850DE Nailer showing
how the Accused Products include every element of this claim limitation. I
understand that "system controller" means "a circuit configured to control
operation based on received input signals." I believe it makes sense to
discuss the "system controller" limitation in more detail with respect to
another limitation of this claim, but the Accused Products do meet this
limitation. I also discussed how the controller in the Accused Products work
with respect to the "predetermined conditions" limitations in claim 11 ofthe
'296 Patent.
(Id. at Q/A 152.) The other limitation Dr. Pratt refers to in his testimony above is "said lifter
member being movable, under command of said system controller, by said prime mover." When
discussing this limitation from claim 1 ofthe '722 patent, Dr. Pratt only makes a cursory reference
- 26 -

to the controller. He states:"The controller determines when,and for how long, current is fed from
the energy source to the prime mover after receiving inputs from sensors on the tool."(Id. at Q/A
160.) But, beyond this one conclusory sentence, Dr. Pratt does not provide any evidence that this
actually occurs. A review of his testimony above reveals that Dr. Pratt did not provide any
explanation as to how these sensors provide inputs to the system controller nor did he explain how
he arrived at his conclusion. Dr. Pratt cites to two demonstratives (i.e., CDX.0001C.0042-0043)
as proofthat the "system controller" limitation is present.(See id. at Q/A 191.) But, as Respondent
noted, these demonstratives "show a spaghetti mess of wires."(RRB at 8.) Notably, nowhere on
either of these demonstratives did Dr. Pratt identify any sensors.(See CDX.0001C.0042-0043.)
While Complainant contends that Dr. Pratt provides examples of how the claimed system
controller is "a circuit configured to control operation based on received input signals,"
Complainant does not substantively discuss what those examples are; rather, Complainant merely
cites to certain questions and answers from Dr. Pratt's testimony and two pages from a
demonstrative exhibit. (See, e.g., CIB at 17 (citing CX-0110C at Q/As 191, 103-19; CDX-
0001C.0029-30).)In particular, Complainant cites to Q/As 103-119 from Dr. Pratt's testimony. A
review of the cited testimony, however, reveals that the majority of these Q/As have been struck,
namely Q/As 103-108, 111, 113, and 114.(See CX-0110C at Q/As 103-119.)
The remaining testimony relates to"how the Accused Products meet the said lifter member,
under first predetermined conditions, forces said driver member to undergo said return stroke and
move toward said ready position, and then holds said driver member at said ready position by use
of a holding contact between said lifter member and said driver member" and more specifically,
the "predetermined conditions" limitations ofthe '296 patent.(Id. at 0110C at Q/A 109-110, 112,
115, and 119.) Yet, as Dr. Vallee testified, Dr. Pratt's analysis with respect to the "predetermined
- 27 -

conditions" limitations in the '296 patent suffers from numerous deficiencies.13(See RX-0266C at
Q/A 185; see also Q/As 186-208.) For example, Dr. Pratt does not identify "a programmed
computer," as required by the construction of"first predetermined conditions."14(Id. at Q/As 185,
188.) Dr. Pratt relies on what he calls a "circuit diagram" from the Service Manual for the
NT1865DMA.(See JX-0023.0027.) But, the diagram relied upon by Dr. Pratt is — in fact — called
a "Connecting Diagram."(Id.) As Dr. Vallee explains, there is a distinction between a "connecting
diagram" and a "circuit diagram":
This distinction is important because a connecting diagram illustrates how to
connect various components together. It does not show the details of the circuitry,
all ofthe components ofthe circuit, or the operation or identification ofinformation
transmitted and received by any of the various components.
(RX-00266C at Q/A 190 (emphasis added).)"At most, the connecting diagram shows that there
are sensors connected a [printed circuit board], but this does not mean that the sensors are
connected to a controller or provide any information to a controller." (Id. at 204.) Furthermore,
even if Dr. Pratt had identified "a programmed computer," merely identifying a programed
computer(or system controller in the case ofthe '718 patent)"tells you nothing about the operation
of the programmed computer." (Id. at Q/A 201.) To determine whether the claimed system
controller is configured to control operation based on received input signals, a personal ofordinary
skill in the art would need to understand the logical operations carried out by the controller.(Id. at
Q/A 206.) This would necessarily require an analysis of source code. (Id.) Yet, Dr. Pratt did not
conduct any analysis of source code for the Accused Products.
13 The "predetermined conditions" limitations are not present in any ofthe asserted claims ofthe '718 patent.
14 "First predetermined conditions" has been construed to mean"two or more conditions determined by a programmed
computer."(See Order No. 9 at 17.)"Second predetermined conditions" has been construed to mean "two or more
conditions determined by a programmed computer and that are different than the first predetermined conditions."(Id.)
- 28 -

For the reasons set forth above, the undersigned finds that Dr. Pratt has not demonstrated
that the "system controller" is actually configured to control operation based on received input
signals as required by this claim element. Complainant therefore has not shown by a preponderance
ofthe evidence that the Accused Products meet this limitation. Accordingly,the Accused Products
do not infringe claim 1 ofthe '718 patent.
b) Claims 10 and 16
Independent claims 10 and 16 both contain the "system controller" limitation. However, as
discussed above in Section VII.B.1.a, the claimed "system controller" is not present in the Accused
Products. The undersigned therefore finds that the Accused Products do not infringe claims 10 and
16 ofthe '718 patent.
2. Indirect Infringement
Because the undersigned has found hereinabove that Complainant has not proven direct
infringement, Complainant cannot prove induced infringement.15 Accordingly, Complainant has
failed to show that Respondent indirectly infringes the asserted claims ofthe '718 patent. See BMC
Res., 498 F.3d at 1379(direct infringement must first be established in order for a claim ofindirect
infringement to prevail); see also Novartis Pharm. Corp. v. Eon Labs Mfg. Inc., 363 F.3d 1306,
1308(Fed. Cir. 2004)("When indirect infringement is at issue, it is well settled that there can be
no inducement or contributory infringement absent an underlying direct infringement.").
C. Domestic Industry — Technical Prong
Complainant asserts that the Domestic Industry products practice claim 1 of the '718
patent. (CIB at 27 (citing CX-0110C at Q/As 375-92).) According to Complainant, Dr. Pratt
physically inspected the Domestic Industry products, reviewed parts lists, manufacturing
15 While Complainant alleged contributory infringement in its pre-hearing brief, it makes no such allegation in its
post-hearing brief. Thus, per Ground Rule 13.1, this argument has been waived.
- 29 -

drawings,and other literature for the Domestic Industry products,and tested the Domestic Industry
products. (Id. (citing CX-110C at 245-252).) Complainant explains that Dr. Pratt then created a
demonstrative of how the Domestic Industry products meet each limitation of the asserted claims
of the '718 patent.(Id. (citing CDX-0002C).)
Although Respondent is not disputing the presence of certain elements of the asserted
claims16, Respondent maintains that Complainant failed to establish that the Domestic Industry
products practice claims 1, 10, and 16 of the '718 patent.17(RIB at 27-29.)
1. Claim!
For the reasons set forth infra, the undersigned finds that Complainant has not satisfied its
burden to prove that the Domestic Industry products, at a minimum, practice the "system
controller" limitation.18
16 Respondent does not dispute that the following elements are present in the Domestic Industry products: (a)(i)"a
housing";(a)(iii)"a safety contact element";(a)(iv)"a user-actuated trigger";(a)(vii)(B)"a main storage chamber that
is in fluidic communication with said displacement volume of the cylinder, wherein said main storage chamber and
said displacement volume are initially charged with a pressurized gas";(b)(i)"ifsaid restrictive firing mode is selected,
said tool will operate if said safety contact element has been actuated before said trigger actuator has been operated;
and";(b)(ii)"if said bottom firing mode is selected, said tool will operate if both:;(b)(ii)(A)"said trigger actuator has
been operated, and";(b)(ii)(B)"said safety contact element has been actuated, in either sequence;" and(d)"actuating
said prime mover, thereby moving said lifter member and causing said driver member to move away from said exit
end toward a ready position."(RIB at 27("Respondent is not disputing the presence of any elements ofthe Asserted
Claims not specifically addressed below.").)
17 Respondent objects to Dr. Pratt's analysis, arguing that he relies on a "mish-mash of components from different
Alleged Domestic Industry Products."(RIB at 27; RRB at 12-13.) The undersigned has already determined that the
F-15 is representative ofComplainant's Domestic Industry products — i.e., they have substantially identical design and
construction.(See Section VI,supra.)Thus, parts found in the F-15 are found in the other Domestic Industry Products
and vice versa. The undersigned therefore finds that there is nothing inherently wrong with relying on different
Domestic Industry products to demonstrate practice ofthe claims, so long as the products contain the same parts. The
undersigned further notes that the only limitation that Respondent alleges may be affected by Dr. Pratt's "improper"
Domestic Industry analysis is not even being disputed by Respondent — namely, the "pressurized gas" limitation.(See
generally RIB at 29-33.)
18 In the event the Commission finds that this element is present in the Domestic Industry products, the undersigned
notes that Respondent's expert does not dispute that the remaining limitations from claim 1 ofthe '718 patent are met.
(See RX-0266C at Q/A 432;see also RDX-0002.0019.)
- 30 -

a) "system controller" — limitation (a)(ii)
Complainant argues that the Domestic Industry products practice this limitation.(CIB at
28 (citing CX-0110C at Q/As 379, 341, 349; CDX-0002C.0038, .0043; CX-0024.0030, .0050;
CX-0015C.0005).) Complainant states: "The controller determines when, and for how long,
current is fed from the energy source to the prime mover after receiving inputs from sensors on
the tool."(Id. (citing CX-0110C at Q/A 349); see also CRB at 12-13.) Complainant also claims
that Dr. Pratt provides examples of how the system controller is "a circuit configured to control
operation based on received input signals" with respect to various operations of the Domestic
Industry products.(Id.(CX-0110C at Q/As 379,293-310; CDX-0002C.0026-27).)
Respondent submits that Complainant failed to prove the Domestic Industry products
include the claimed "system controller."(RIB at 27(arguing that Dr. Pratt provided no analysis or
evidence showing that the circuitry on the printed circuit board is "configured to control operation
based on received input signals.").) Respondent asserts that Complainant "merely points to a
conclusory statement from Dr. Pratt that some unidentified 'controller' in the Alleged DI Products
'determines when, and for how long, current is fed from the energy source to the prime mover
after receiving inputs from sensors on the tool."(RRB at 13.) Respondent further asserts that Dr.
Pratt provides no supporting evidence,"rendering his conclusory statement nothing more than pure
speculation."(Id.)
As can be ascertained from the summaries above, Complainant's and Respondent's
arguments with respect to this limitation mirror that oftheir infringement arguments.(See Section
VII.B.1, supra.) Even Dr. Pratt's testimony on whether the Domestic Industry products practice
the claimed "system controller" is nearly verbatim to his testimony relating to infringement of the
-31 -

asserted patent. For example, when questioned about whether the Domestic Industry products
practice the "system controller" limitation, Dr. Pratt testified:
The Domestic Industry Products meet this limitation, as I explained previously with
respect to the similar "system controller" limitation found in claim 1 of the '722
Patent and as shown, for example, on page 38 of CDX-0002C.
(CX-0110C at Q/A 379; see also id. at Q/A 191.) His testimony relating to the '722 patent is set
forth below:
Q. What is your opinion regarding whether the Domestic Industry Products
meet the claim limitation "a housing that contains a prime mover, and a
system controller," as in claim 1 ofthe '722 Patent?
A. The Domestic Industry Products meet this limitation. Referring to page 38
of CDX-0002C,I created labeled images ofthe FUSION F-15 Nailer
showing how the Domestic Industry Products include every element of
this claim limitation. I understand that "system controller" means "a
circuit configured to control operation based on received input signals." I
believe it makes sense to discuss the "system controller" limitation in
more detail with respect to another limitation of this claim, but the
Domestic Industry Products do meet this limitation. I also discussed how
the controller in the Domestic Industry Products work with respect to the
"predetermined conditions" limitations in claim 11 of the '296 Patent.
(Id. at Q/A 341; see also id. at Q/A 152.) Like in his infringement testimony, the other limitation
Dr. Pratt refers to in his testimony above is "said lifter member being movable, under command
of said system controller, by said prime mover."(Id. at Q/A 349.) When discussing this limitation
from claim 1 ofthe '722 patent, Dr. Pratt — yet again — makes a cursory reference to the controller.
He states:"The controller determines when,and for how long,current is fed from the energy source
to the prime mover after receiving inputs from sensors on the tool." (Id.) But, beyond this one
conclusory sentence, Dr. Pratt does not provide any evidence that this actually occurs. A review
of his testimony above reveals that Dr. Pratt did not provide any explanation as to how these
sensors provide inputs to the system controller or show that any of these sensors are actually
connected to a controller. Dr. Pratt again cites to a demonstrative (i.e., page 38 of CDX-0002C)as
- 32 -

proof that the "system controller" limitation is present.(See id. at Q/A 379.)But, nowhere on this
demonstrative did Dr. Pratt identify any sensors. (See CDX.0002C.0038; see also id. at .0043.)
Nor did he provide any evidence showing that the circuitry on the printed circuit board from the
F-15 Domestic Industry product is "configured to control operation based on received input
signals."
While Complainant contends that Dr. Pratt provides examples of how the claimed system
controller is "a circuit configured to control operation based on received input signals,"
Complainant does not substantively discuss what those examples are; rather, Complainant again
merely cites to certain questions and answers from Dr. Pratt's testimony and two pages from a
demonstrative exhibit. (See, e.g., CIB at 28 (citing CX-0110C at Q/As 379, 293-310; CDX-
0002C.0026-27).) In particular, Complainant cites to Q/As 293-310 from Dr. Pratt's testimony.
Yet, the majority ofthese Q/As have been struck. Specifically, the entirety of Q/As 293-299, 302,
304,305,and 307 have been struck and portions ofthe answers from Q/As 300,303,and 310 were
also struck.(See CX-0110C at Q/As 293-310.)
The remaining testimony relates to"how the Accused Products meet the said lifter member,
under first predetermined conditions, forces said driver member to undergo said return stroke and
move toward said ready position, and then holds said driver member at said ready position by use
of a holding contact between said lifter member and said driver member" and more specifically,
the "predetermined conditions" limitations of the '296 patent.(Id. at 0110C at Q/A 300-301, 303,
306, 308-310.) Yet, as Dr. Vallee testified, Dr. Pratt's analysis with respect to the "predetermined
conditions" limitations in the '296 patent suffers from numerous deficiencies.(See RX-0266C at
Q/A 376-377; see also Q/As 378-393, 395-398.) For example, Dr. Pratt does not identify "a
programmed computer," as required by the construction of"first predetermined conditions."(Id.
- 33 -

at Q/As 377("As I noted with respect to my testimony to non-infringement, a person of skill in
the art would understand that a programmed computer is a device that carries out sequences of
logical operations according to a set of instructions, and that these instructions are programmed
into the computer using source code. Nowhere in his Initial Report does Dr. Pratt identify a
'programmed computer' in any ofthe Alleged Domestic Industry Products.").) Furthermore, even
if Dr. Pratt had identified "a programmed computer," merely identifying a programed computer
(or system controller in the case of the '718 patent)"tells you nothing about the operation of the
programmed computer."(Id. at Q/A 377.) As Dr. Vallee explains:
Even if Dr. Pratt (or someone else) were able to identify a programmed computer
(e.g., microprocessor or microcomputer) on the printed circuit board of any of the
Alleged Domestic Industry Products, it would not establish that a programmed
computer, as opposed to other components (e.g., switches, transistors, etc.)
elsewhere in the tool, determine the conditions, if any, under which the lifter moves
the driver from the alleged "driven position" to the alleged
"ready position."
To determine whether the claimed system controller is configured to control operation
based on received input signals, a person of ordinary skill in the art would need to understand the
logical operations carried out by the controller.(Id. at Q/A 384)This would necessarily require an
analysis of source code.(Id.) However, Dr. Pratt did not conduct any analysis of source code for
the Domestic Industry products to confirm how various operations take place within the tool.
Thus, for the reasons set forth above, the undersigned the undersigned finds that Dr. Pratt
has not demonstrated that the "system controller" is actually configured to control operation based
on received input signals as required by this claim element. Accordingly, Complainant has failed
to show by a preponderance of the evidence that the Domestic Industry products practice this
limitation.
- 34 -

2. Claims 10 and 16
Claims 10 and 16 both contain the "system controller" limitation. However, as discussed
above in Section VII.C.1, the claimed "system controller" is not present in the Domestic Industry
products. The undersigned therefore finds that the Domestic Industry products do not practice
claims 10 and 16 of the '718 patent.
D. Invalidity19
1. Obviousness
Respondent asserts that the '718 patent is obvious under 35 U.S.C. § 103 based on three
prior art combinations: (a) U.S. Patent No. 3,150,488 ("Haley") in view of U.S. Patent No.
5,720,423("Kondo") and U.S. Patent App. Pub. No. 2005/50217875 ("Forster"), U.S. Patent No.
7,494,036 ("Shima"), or the Operating Instructions that accompanied Complainant's Cordless
Finish 41 Nailer ("Senco 41 Nailer"); (b) Haley in view of U.S. Patent App. Pub. No.
2006/0180631 ("Pedicini") and U.S. Patent No. 860,536("Ellingham"), and Forster, Shima, or the
Senco 41 Nailer; and(c)Pedicini in view ofEllingham, and Forster, Shima,or the Senco 41 Nailer.
(RIB at 34; RRB at 17-22.)
a) Haley in view of Kondo and Forster, Shima,or the Senco 41
Nailer
i) "lifter member"
Respondent argues that Kondo discloses the claimed "lifter member" and teaches that it is
a "rotatable component having lifting pins on its face surface." (RIB at 38.) According to
Respondent, Kondo discloses drive gear 7 that is a rotatable component and crank pins 7a and 7b
that are lifting pins.(Id. at 38-39(citing JX-0028 at Figs. 4A-4E, 3:26-31, 3:39-4:32; RX-0001 at
19 The '718 patent was filed on October 27, 2010. As such, invalidity issues are analyzed under the pre-Leahy-Smith
America Invents Act law.
- 35 -

Q/A 101; RDX-0001.025).) Respondent contends that one of ordinary skill in the art would have
been motivated to incorporate Kondo because it does not require a connection to an external power
source.(Id. at 39(citing JX-0028 at 1:52-54; RX-0001 at Q/A 102).) Respondent further contends
that one ofordinary skill in the art would have been specifically motivated to incorporate the lifting
structure of Kondo because it"would allow the lifting mechanism to take up less space, leading to
a less bulky tool."(Id.(citing JX-0028 at 4:23-25; RX-0001 at Q/A 102); RRB at 18.) According
to Respondent, this motivation would be strong for Haley because Haley's own lifting mechanism
"takes up an inordinate proportion of the space on the nailer." (RIB at 39(citing JX-0028 at Fig.
1; RX-0001 at Q/A 102; RDX-0001.027); RRB at 18.) Respondent asserts that one of ordinary
skill in the art could have pursued each of the limited number of well-known lifting mechanisms,
like that of Kondo's drive gear and crank pins, with a reasonable expectation of success.(RIB at
40(citing RX-0001 at Q/A 115).)
Complainant contends that one of ordinary skill in the art would not have been motivated
to combine Haley with Kondo because doing so would "completely change the mode ofoperation
of Haley."(CIB at 37-38 (CX-0114 at Q/A 43-45, 50-52).) According to Complainant, Haley
operates as a hydraulic spring, which uses pressurized incompressible fluid to cause the drive
piston to push a fastener into a workpiece.(Id. at 38 (citing CX-0114 at Q/A 43, 50; JX-0027 at
5:32-70).) Complainant asserts that this mode of operation changes completely if modified, as
Respondent suggests. (Id. at 38.) Complainant disputes Respondent's contention that one of
ordinary skill in the art would have been motivated to combine Haley with Kondo because of
Kondo's ability to not require an external power source.(Id. at 38-39.) Complainant contends that
this supposed motivation has nothing to do with replacing Haley's lifting mechanism with Kondo's
lifting mechanism and at most, it simply refers to a motivation to provide a more powerful energy
- 36 -

source, not to completely redesign the lifting mechanism.(Id. at 39(citing CX-0114 at Q/A 45).)
Moreover, Complainant claims there would be no specific motivation to incorporate Kondo's
lifting mechanism because it also takes up a significant amount of space and requires multiple
components, including a motor, lifting gear, gearbox, and other intermediate components.'(Id.)
Aside from whether the combination of Haley and Kondo describes the claimed "lifter
member," the undersigned finds that Respondent has failed to provide clear and convincing
evidence that one of ordinary skill in the art would have been motivated to combine Haley and
Kondo to achieve the claimed invention. A "motivation to combine may be found explicitly or
implicitly in market forces; design incentives; the 'interrelated teachings of multiple patents';'any
need or problem known in the field of endeavor at the time of invention and addressed by the
patent'; and the background knowledge, creativity, and common sense of the person of ordinary
skill." Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)(citing Perfect Web
Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009)(quoting KSR, 127 S. Ct. at
1727)). Respondent first argues that one of ordinary skill in the art would be motivated to
incorporate Kondo because it provides for a cordless nailer. (RIB at 39 (citing JX-0028 at 1:52-
54; RX-0001 at Q/A 102).) The undersigned notes that this is a generic motivation. Nonetheless,
Respondent does not provide clear and convincing evidence for why a generic motivation for a
cordless nailer would prompt one of ordinary skill in the art to combine the particular prior art
elements to replace Haley's lifting mechanism with Kondo's lifting mechanism. See KSR, 127 S.
Ct. at 1731 ("[I]t can be important to identify a reason that would have prompted a person of
ordinary skill in the art to combine the elements as the new invention does."); see also Forest
Labs., LLC v. Sigmapharm Labs., LLC,918 F.3d 928,935(Fed. Cir. 2019)(finding that the district
20 Complainant submits that additional moving mechanical parts increases wear and tear incurred during use of the
device.(CIB at 39(citing CX-0114 at Q/A 45).)
- 37 -

court did not err in concluding that a generic need for more antipsychotic treatment options did
not provide a motivation to combine the particular prior art elements).
The undersigned also finds Respondent's argument that one of ordinary skill would have
been specifically motivated to incorporate the lifting structure of Kondo because it would lead to
a less bulky tool unpersuasive. Respondent claims that Haley's lifting mechanism "takes up an
inordinate proportion of the space on the nailer," but does not provide clear and convincing
evidence of that or that Kondo's lifting mechanism would lead to a less bulky device.(See RX-
0001 at Q/As 101-102.) Because patent drawings are not necessarily drawn to scale and do not
define the precise proportions of the elements, Respondent fails to provide clear and convincing
evidence that substituting Haley's lifting mechanism with Kondo's lifting mechanism would allow
it to take up less space where Respondent only compares the patent figures of Kondo and Haley.
(See RX-0001 at Q/As 101-102; Hockerson-Halberstadt, Inc. v. Avia Grp. Intern., Inc., 222 F.3d
951, 956 (Fed. Cir. 2000).) Lastly, while it may be true that there are a limited number of well-
known lifting mechanisms, Respondent fails to provide clear and convincing evidence of a design
need or market pressure to solve a problem with the Haley lifting mechanism. See KSR, 127 S. Ct.
at 1732("When there is a design need or market pressure to solve a problem and there are a finite
number ofidentified, predictable solutions, a person of ordinary skill in the art has good reason to
pursue the known options within his or her technical grasp."); cf Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1073(Fed. Cir. 2015)("[O]bviousness concerns whether a skilled artisan not only
could have made but would have been motivated to make the combinations or modifications of
prior art to arrive at the claimed invention.")(emphasis in original). Without clearly identifying a
design need or market pressure to cure a deficiency with Haley's lifting mechanism, Respondent
- 38 -

does not provide a reason why one ofordinary skill in the art would pursue the well-known lifting
mechanisms.
Accordingly, the undersigned finds that Respondent has failed to establish, by clear and
convincing evidence, that the asserted claims of the '718 patent are rendered obvious by this
combination.
b) Haley in view of Pedicini and Ellingham, and Forster, Shima,
or the Senco 41 Nailer
i) "lifter member"
According to Respondent, Pedicini discloses a pinion gear 31 that engages a rack 4 by
making contact with spaced-apart protrusions on the driver member to move it from its driven
positon to its ready position.(RIB at 41 (citing JX-0033 at 71 [0077]-[0078], Fig. 3; RX-0001 at
Q/A 107; RDX-0001.030).) Respondent asserts that one of ordinary skill in the art would have
been motivated to incorporate the teachings of Pedicini because it provides a robust, simple, and
inexpensive design, as well as because it reduces wear and increases efficiency.(Id. at 41-42; see
also RRB at 18-19. According to Respondent, one of ordinary skill in the art would have
"understood the need to modify Haley's drive piston 18 to mate with the mechanical lifter by
providing teeth corresponding to those of Pedicini's rack 4 that are engaged by the rollers on the
roller pinion. (RIB at 43 (citing RX-0001 at Q/A 112).) In addition, Respondent argues that it
would have been obvious to one of ordinary skill in the art to use the well-known roller
modification to pinion gears, as shown in Ellingham.(Id. at 41 (citing RX-0001 at Q/As 109-110;
JX-0032 at 1:8-14, Figs. 1-2; RDX-0001.031).) Respondent explains that rollers better handle
friction and have a lower risk of wearing down over time and thus, one of ordinary skill would
have been motivated to use the roller pinion ofEllingham as the pinion.(Id. at 42(citing RX-0001
at Q/A 109, 111; JX-0032 at 1:8-14).) Respondent argues that one of ordinary skill in the art would
- 39 -

have pursued these well-known lifting mechanisms, would have known that they would work in
powered nailers, and that they would be an improvement over the hydraulic lifter of Haley.(Id.
(citing RX-0001 at Q/A 115).)
Complainant contends that one of ordinary skill in the art would not have been motivated
to combine Haley with Pedicini because it would completely change the mode of operation of
Haley, would result in a reduction in speed of the driven member, and the resulting device would
be subject to excessive wear.(CIB at 37-38; CX-0114 at Q/As 47, 50.) Complainant claims that
Respondent's expert merely provides a conclusory reason for why one would be motivated to
modify Haley and provides no evidence that the proposed combination would result in increased
efficiency.(Id.)
Similar to the Haley and Kondo combination addressed above, the undersigned finds that
Respondent has failed to provide clear and convincing evidence that one of ordinary skill in the
art would have been motivated to combine Haley, Pedicini, and Ellingham to achieve the claimed
invention. Respondent claims that one of ordinary skill in the art would have been motivated to
combine these references because Pedicini "touts its ability to provide a robust, simple, and
inexpensive design" and because "it reduces wear and increase efficiency."(RX-0001 at Q/A 108.)
First, Respondent does not provide clear and convincing evidence why one ofordinary skill would
be motivated to combine the particular prior art elements to replace Haley's lifting mechanism
with Pedicini's lifting mechanism.(See id. (citing JX-0033 at [0024]-[0030]); see also KSR, 127
S. Ct. at 1731; Forest Labs., 918 F.3d at 935.) Second, while Pedicini may disclose that it reduces
wear and increases efficiency, Respondent has not provided clear and convincing evidence,
beyond conclusory statements, that Pedicini provides those benefits as compared to the system of
Haley — or, in other words, why one of ordinary skill in the art would have understood that
-40 -

Pedicini's lifting mechanism is more efficient and resistant to wear than Haley's lifting
mechanism. Third, even though Respondent claims that the needs in the art relate to durability
against wear and tear and portability by way of smaller component sizes, Respondent does not
provide clear and convincing evidence ofa design need or market pressure to solve a problem with
Haley's lifting mechanism. See KSR, 127 S. Ct. at 1732; cf. Belden Inc., 805 F.3d at 1073. In fact,
Respondent does not provide any explanation, let alone clear and convincing evidence, that there
is a durability or portability issue with Haley or its lifting mechanism. Finally, while the addition
of a roller pinion may be better at handling friction and reducing wear, that still does not provide
motivation for why one of ordinary skill in the art would replace the Haley lifting mechanism. If
anything, it only provides a reason why one of ordinary skill in the art would replace the pinion
mechanism in Pedicini with a roller pinion, not why one of ordinary skill would replace Haley's
lifting mechanism with Pedicini's lifting mechanism as modified by Ellingham.
The undersigned therefore finds that Respondent has failed to establish, by clear and
convincing evidence, that the asserted claims of the '718 patent are rendered obvious by this
combination.
c) Pedicini in view of Ellingham and Forster, Shima,or the Senco
41 Nailer
i) "main storage chamber"
Respondent asserts that Pedicini discloses a main storage chamber that is in fluidic
communication with the displacement volume of the driver actuation device and that is directly
adjacent to the displacement volume of the cylinder 14.(RIB at 45 (citing JX-0033 at Fig. 1; RX-
0001 at Q/A 298; RDX-0001.062).) Respondent disagrees with Complainant's contention that
Pedicini's main storage chamber is "just a portion ofthe hollow cylinder."(Id. at 45-46(citing JX-
0004 at cl. 1; JX-0033 at Fig. 2; Pratt Tr. at 261:12-21; 262:19-263:1, 263:11-13).) Respondent
-41-

claims that Complainant's expert conceded that the region Respondent identifies as the main
storage chamber is not part of the displacement volume because it is beyond the retracted position
of the piston. (Id. at 46 (citing Pratt Tr. at 262:23-263/:1, 261:15-21); RRB at 19.) Respondent
therefore argues that Pedicini has both a displacement volume and a distinct main storage chamber.
(RRB at 19.)
In response, Complainant argues that the main storage chamber in Pedicini (as identified
by Respondent) is a region ofthe hollow cylinder that does not get occupied when the piston is at
its uppermost travel position and this region is not distinct from the rest ofthe cylinder.(CIB at 40
(citing CX-0114 at Q/A 57).) Complainant notes that Pedicini does not even label that region
separately. (Id. (citing CX-0114 at Q/A 57; Pratt Tr. at 265:23-266:22).) Complainant further
argues that even Respondent's expert labels the area Respondent alleges is the main storage area
as the air chamber 13, i.e., the alleged hollow cylinder, which shows that it is not separate and
distinct from the hollow cylinder.(Id.(citing RDX-0001.0068; CX-0114 at Q/A 57).)Complainant
also submits that the main storage chamber must be distinct from the volume of the cylinder, not
the displacement volume and thus, the area identified by Respondent cannot be the main storage
chamber because it is part ofthe hollow cylinder.(CRB at 19.)
The parties agree that the term "main storage chamber" means "a chamber that is distinct
from the volume of the cylinder and contains part of the working air volume during operation."
(Order No. 9 at 17.) As depicted in Respondent's expert's annotation of Figure 1 of Pedicini
(reproduced below), Respondent contends that the light blue portion is the claimed main storage
chamber, which Respondent submits is adjacent to the displacement volume of cylinder 14 (i.e.,
the yellow portion).(RX-0001 at Q/A 298; RDX-0001.225.)
- 42 -

23
PATENT FIGURE I Is
3 17
.aamm. is. solgiiivw
I IVIL. 11
.111.
00
(RDX-0001.225.)
As seen in Respondent's annotation of Figure 1 above, Pedicini discloses piston 5, which
moves in cylinder 14 compressing the air in air chamber 13.(JX-0033 at Fig. 1, ¶ [0078].) The
light blue region identified by Respondent is part ofair chamber 13.(Id.; see also RDX-0001.225.)
While Respondent attempts to make a distinction between the light blue portion and the yellow
portion in annotated Figure 1, there is no support for such a distinction and Respondent has not
cited any evidence, let alone clear and convincing evidence, that Pedicini teaches that the light
blue portion and yellow portion are distinct. Indeed, as shown in unannotated Figure 1 ofPedicini
(reproduced below), Pedicini discloses that both the light blue portion and the yellow portion
identified by Respondent are part of one component — air chamber 13. (JX-0033 at Fig. 1, If
[0078].)
-43 -

!incumismpeN_ALMONINtiniNpm..1111,
111-1"wa."min all	.
411raWilIIIr
:gm•
ErlIF
(JX-0033 at Fig. 1.)
In addition, Respondent maintains that Pedicini teaches "both a displacement volume and
a distinct main storage chamber."(RRB at 19.) However, the agreed-upon claim construction for
this term states that the "main storage chamber" is "distinct from the volume of the cylinder," not
the displacement volume.(Order No. 9 at 17.) Respondent does not explain why it equates the
displacement volume with the volume of the cylinder. Indeed, the asserted claims recite separate
elements for "main storage chamber," "displacement volume of the cylinder," and "hollow
cylinder."(JX-0004 at cl. 1, 10, 16.)Respondent therefore has failed to provide sufficient evidence
to show that the light blue portion is "a chamber that is distinct from the volume ofthe cylinder."
Moreover, the '718 patent discloses main storage chamber 74 and displacement volume
76, which is the gas pressure chamber.(See, e.g., JX-0004 at Fig. 2(reproduced below), Fig. 3,
9:57-10:3).
-44 -

With respect to gas pressure chamber 76, the '718 patent notes that "this chamber will vary in
volume as the piston 80 moves up and down."(Id. at 9:65-67.) Thus, if anything, Respondent's
light blue portion in Pedicini would be akin to the gas pressure chamber 76 of the '718 patent,
which is the area beyond the top-most position.(See RIB at 46.)For example,in comparing Figure
5 of the '718 patent, where the driver and piston are near their top-most position, and Figure 2 of
Pedicini, where the tool is in the retracted position, the light blue portion identified by Respondent
is most similar to gas pressure chamber 76 of the '718 patent, not main storage chamber 74.(JX-
0004 at Fig. 5(reproduced below), 5:17-22; JX-0033 at Fig. 2(reproduced below),¶[0034].)
- 45 -

23
26
PATENT FIGURE 2
17
6
i!a3MMMMMMMNHiirllTEI-
d
-I.iib
IA
1
in' up=j 1=IIII
. 11.1111.01arlI I %Ow.
ill ES:1111101111
IILIIIMIRIFim..iii Um i ill
iuramairlasi mogiolia II 111111 NMI
..1111i1 'III
IP' il it IilIII
NM
1 Nevi
I 'Wiiiiikl"
I
EMI
A19
Accordingly, the undersigned finds that Respondent has failed to establish, by clear and
convincing evidence, that the asserted claims of the '718 patent are rendered obvious by this
combination.
ii) Secondary Considerations
Respondent contends that there are no secondary considerations that overcome its
assertions ofobviousness.(RRB at 19-22.)Secondary considerations ofnonobviousness may rebut
a primafacie case of obviousness. Here, where Respondent has not made out a primafacie case
of obviousness, there is no showing to rebut. Accordingly, the undersigned need not consider any
secondary considerations of nonobviousness.
-46 -

2. Indefiniteness
Respondent argues that the asserted claims ofthe '718 patent are invalid as indefinite under
35 U.S.C. § 112(b) due to the "ready position" limitation. (RIB at 46-48; RRB at 22-23.)
According to Respondent,"a person of ordinary skill in the art would find no objective guidance
in the '718 patent as to what it means to be proximal to the uppermost travel position" and thus,
would not be able to translate the definition into a meaningfully precise claim scope.(RIB at 47-
48 (citing RX-0001 at Q/A 219; Halliburton Energy Servs., Inc. v. M-ILLC,514 F.3d 1244, 1251
(Fed. Cir. 2008)).) Respondent asserts that although the specification states that there might be a
small upward movement ofthe driver and piston when the trigger is pulled, the specification does
not quantify the amount of upward movement. (Id. at 47 (citing RX-0001 at Q/A 219).)
Respondent further argues that Complainant's expert, Dr. Pratt, could not identify any objective
standard for determining the "ready position" as he interpreted it to mean "near the top,""a small
amount away from the top," or "almost at the top," each of which were neither objective nor
supported by quantitative measures in the specification. (Id. at 47-48 (citing Pratt Tr. at 263:14-
20,264:4-265:4).)Respondent claims that Dr. Pratt opined that"proximal" means closer to the top
than the bottom, but also conceded that the ready position is actually a lot closer and does not
quantify how much closer it has to be. (Id. at 48 (citing Pratt Tr. at 265:5-18).) Respondent
therefore contends that without objective criteria to determine what "proximal to the uppermost
travel position" means, the claims are indefinite. (Id. (citing Halliburton, 514 F.3d at 1251;
Berkheimer v. HPInc.,881 F.3d 1360, 1363(Fed. Cir. 2018); GE Lighting Solutions, LLC v. Lights
ofAm., Inc., 663 Fed. Appx. 938,941 (Fed. Cir. 2016)).)
In its reply brief, Respondent claims that Complainant conceded the '718 patent does not
provide guidance for the definition of the term. (RRB at 22.) According to Respondent,
-47 -

Complainant acknowledged that Dr. Valle relied on information outside of the intrinsic record.
(Id.) Respondent also asserts that Complainant (and its expert) disagreed with Dr. Vallee's
determination, but failed to specify how much further away the ready position could be from the
uppermost travel position. (Id.) Respondent therefore contends that this lack of objective criteria
renders the claims indefinite.(Id.)
Complainant asserts that the '718 patent provides sufficient written description to enable
one of ordinary skill in the art to practice the invention.(CIB at 43 (citing CX-0114 at Q/A 99).)
For example, Complainant claims that the '718 patent describes "ready position" when it states
that "the piston 80 is at its 'ready' position, which is when it is at (or proximal to) its uppermost
travel position as illustrated in FIGS. 2-5."(Id. (citing JX-0001 at 17:43-45, 32:25-27; CX-0114
at Q/A 99).) Complainant contends that one of ordinary skill in the art would read this and
understand that"ready position" is a position that is at the uppermost travel position or near it. (Id.
(citing CX-0114 at Q/A 99).) Complainant also argues that Respondent's expert presented
inconsistent positions by testifying that there is nothing in the written description that "provides a
standard for measuring when the driver is proximal the uppermost travel position, and when it is
not proximal" and also testifying that "a person of skill in the art would determine that if the stop
position is more than 1/8th of an inch away from the uppermost travel position, the stop position
is not proximal the uppermost travel position." (Id. at 43-44 (citing RX-0001 at Q/A 219; RX-
0266C at Q/A 131).) According to Complainant, the use of the words "proximal to" in the
construction ofthe term "ready position" does not render the term indefinite.(Id. at 44(citing CX-
0114 at Q/A 100).)
In its reply brief, Complainant reiterates that Respondent's expert provided inconsistent
testimony regarding infringement and invalidity since he was able to apply a definition for "ready
- 48 -

position" for the purposes of his infringement analysis.(CRB at 19-20 (citing RX-0266C at Q/A
131).) Complainant therefore argues that Respondent has not established invalidity by clear and
convincing evidence.(Id. at 20.)
Under the Supreme Court's Nautilus standard,"a patent is invalid for indefiniteness if its
claims, read in light of the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of the invention."
Nautilus, Inc., 134 S. Ct. at 2124. This requirement "mandates clarity, while recognizing that
absolute precision is unattainable." Id. at 2129. Indeed,"[a]s long as claim terms satisfy this test,
relative terms and words of degree do not render patent claims invalid." One-E- Way, Inc. v. Intl
Trade Comm 'n, 859 F.3d 1059, 1063(Fed. Cir. 2017)(citing Interval Licensing LLC v. AOL,Inc.,
766 F.3d 1364, 1370 (Fed. Cir. 2014)); see also BASF Corp. v. Johnson Matthey Inc., 875 F.3d
1360, 1365 (Fed. Cir. 2017)("Reasonable certainty' does not require 'absolute or mathematical
precision.")(quoting Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1381 (Fed. Cir.
2015)).
In each ofthe asserted claims ofthe '718 patent,the limitation that includes the term "ready
position" recites "actuating said prime mover,thereby moving said lifter member and causing said
driver member to move away from said exit end toward a ready position."(JX-0004 at cl. 1, 10,
16.)The undersigned construed the term "ready position" to mean "at or proximal to the uppermost
travel position."(Order No.9 at 21.)While Respondent's expert states that"nothing in the intrinsic
evidence provides a standard for measuring when the driver is proximal the uppermost travel
position, and when it is not proximal," that inquiry is misdirected. (See RX-0001 at Q/As 219,
345.) As the term "ready position" is read in the context ofthe asserted claims, the question is not
whether a person of ordinary skill in the art can understand what it means for the driver member
- 49 -

to be proximal to the uppermost travel position, but rather, whether a person of ordinary skill in
the art can understand what it means for the driver member to move away from the exit end toward
a position at or proximal to the uppermost travel position. That distinction highlights a reason why
absolute or mathematical precision is unnecessary in this instance since the asserted claims
describe that the driver member is not at or proximal to the uppermost travel position, but rather
is moving toward a position at or proximal to the uppermost travel position. Considered in the
context ofthe '718 patent, one of ordinary skill in the art would understand this to mean that once
the fastener driving tool has been used to drive a fastener, the driver member is lifted upward back
toward its top-most position, i.e., ready position, for a new driving stroke.(See JX-0004 at 10:43-
53, 24:31-42, 11:7-10, 24:60-63.)
In addition,"the level ofordinary skill in the art plays an important role in an indefiniteness
analysis." Tinnus Enters., LLC v. Telebrands Corp., 846 F.3d 1190, 1206 (Fed. Cir. 2017). The
undersigned previously determined that "one of ordinary skill in the art would have at least (i) a
Master's Degree in mechanical engineering with at least two years of experience in power nailer
design;(ii) a Bachelor's Degree in mechanical engineering with at least five years of experience
in powered nailer design; or (iii) ten or more years of experience in powered nailer design."(See
Section IV,supra.)It is difficult to believe that a person with that level ofeducation and experience
in engineering and/or powered nailer design would read the '718 patent and be unable to determine
with reasonable certainty when the driver member is moving toward a position that is "at or
proximal to the uppermost travel position" as recited in claims 1, 10, and 16.21
21 The undersigned notes that with respect to infringement, Respondent does not dispute the presence ofthe element
including the "ready position" term in the Accused Products and Respondent's expert was able to apply the
undersigned's claim construction for that term.(See RIB at 17-25; RRB at 5-12; RX-0226C at Q/As 34, 317, 321,
325.) Additionally, in rebutting Complainant's infringement allegations, Respondent's expert testified that"a person
of skill in the art would determine that if the stop position is more than 1/8th of an inch away from the uppermost
travel position, the stop position is not proximal the uppermost travel position."(RX-0266C at Q/A 131.) Considering
this testimony in the context of the '718 patent, it is hard to believe that one of ordinary skill in the art would not be
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Accordingly, the undersigned finds that Respondent has failed to show, by clear and
convincing evidence, that the asserted claims of the '718 patent are invalid as indefinite under 35
U.S.C. § 112(b).
VIII. DOMESTIC INDUSTRY — ECONOMIC PRONG22
Complainant asserts that it has satisfied the economic prong of the domestic industry
requirement under 19 U.S.C. § 1337(a)(3)(B), and (C).(CIB at 53-59; CRB at 25 ("Complainant
is not relying on significant expenditures on plant and equipment (subsection (A)) to establish a
domestic industry.") Respondent disagrees.(RIB at 44-58.)
A. Significant Employment of Labor or Capital
Complainant argues that it has made and continues to make significant investments in labor
or capital in support of its Domestic Industry products. The amount Complainant is proposing is a
total of for the period from 2009 to March 31, 2018, consisting of for the
Finishing Nailers and (CIB at 46.) Complainant states that
while Respondent attempts to separate these expenses into these two categories, Complainant
views these products as a single product line. (Id. at 52-53.) Complainant contends that its labor
or capital expenditures can be divided into four areas: (1) Broadwell facility investments; (2)
engineering and research & development;(3) technical marketing; and (4) warranty and repair.
(Id. at 52.)
Complainant also asserts that it manufactures of its fasteners at its Broadwell facility
in Cincinnati, Ohio, including the fasteners used with the Domestic Industry products.(Id. at 53.)
Complainant emphasizes the importance of using its branded fasteners in the Domestic Industry
able to determine with reasonable certainty when the "driver member" is moving toward a position that is "at or
proximal to the uppermost travel position."
22 For purposes of this section, the analysis contained herein presumed that the Domestic Industry products practice
the '718 patent.
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products. (Id.) Complainant also points to the fact that from 2012-2016 it earned in
revenue from its fastener products that were intended for use in the Domestic Industry products.
(Id.)
Respondent argues that Complainant improperly includes expenses going back to 2009 in
order to capture a full nine years of data.(RIB at 49-50.) Respondent asserts that expenses related
to fasteners should be excluded because the fasteners can be used with any tool, do not practice
the patent, and thus constitute separate items ofcommerce that do not form part of Complainant's
domestic industry. (RRB at 24.) Respondent also criticizes the bases Complainant used for
allocating certain costs, arguing that they are not based on provable facts.(RIB at 53-55.)
As an initial matter, the undersigned does not find Complainant's proposal that domestic
industry be analyzed from 2009 thru March 31, 2018(see CX-0111C at Q/A 60)to be based on a
reasonable time period. Respondent's witness, Dr. Vander Veen, testified that the period of
approximately three years leading up to the filing ofthe Complaint(i.e., calendar years 2015,2016,
and 2017) plus the period after the complaint was filed thru March 31, 2018 is the appropriate
period to determine the amount oflabor and capital.(RX-256C at Q/As 41-42.)Dr. Vander Veen's
time period of 2015 thru March 31, 2018 is adopted because this time period reflects expenses
incurred closer to the date of the filing of the complaint — October 12, 2017.(Id. at Q/As 41-43;
RDX-0003C.1; see also Certain Kinesiotherapy Devices and Components Thereof Inv. No. 337-
TA-823 at 30 n.11 (July 12, 2013).)
With respect to the question of whether expenses related to "fasteners" should be included
in Complainant's domestic industry calculation, the asserted claims clearly include the term
"fasteners." (See JX-0004 at 37:51-56, 39:34-36, and 40:62-66.) Dr. Prowse also testified that
Complainant's operating manual for its FS-15 Finishing Nailers states that only genuine SENCO
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fasteners should be used with Complainant's Domestic Industry products, and that failure to do so
may void Complainant's warranty.(CX-0111C at Q/As at 89-90; CX-01112C at Q/As 48-50.)The
undersigned will therefore include these "fasteners" expenses in Complainant's labor or capital
expenses. However, with respect to Complainant's request to include technical marketing
expenditures, Commission precedent directs that these expenditures not be included. See Certain
Kisneotherapy Devices, 337-TA-832, Comm'n Op. at 29 n.8. Complainant's labor or capital
expenditures are therefore reduced by (CDX-0007C.002.)
Respondent proposes a further reduction of in Complainant's labor and capital
expenditures for cordless tools and related items that Respondent alleges are not domestic industry
expenses. The undersigned declines to reduce Complainant's labor and capital expenditures by the
proposed amount. It is not clear whether Respondent's proposed amount is for the 9-year domestic
industry period proposed by Complainant or the more limited period adopted hereinabove.(RX-
256C at Q/A at 53.) Similarly, the undersigned declines to adopt Respondent's proposed reduction
for and patent
expenses.(Id.) Respondent's proposal again does not reflect the time period is used.
In addition, the undersigned is not persuaded by Respondent's criticisms of the methods
used by Complainant for assigning certain costs. A review of Mr. Klein's allocation methods
shows that they are reasonable. Specifically, Mr. Klein's allocation method is based upon his
knowledge as Vice President ofEngineering at Senco,as well as his knowledge ofequipment used
at the Broadwell facility to manufacture fasteners. (CX-0112C at Q/As 93-103, 110.) The
Commission has approved analyses that, which, while not always specifically quantifiable, are
reasonable. See Certain Stringed Musical Instruments, Inv. No. 337-TA-586, Comm'n Op. at 25-
26(Dec. 1, 2009.)
- 53 -

For the reasons discussed above, the undersigned has determined that is the
proper amount for Complainant's labor or capital expenditures.(See CX-0111C at Q/As 41, 46,
50-60, 73, 87-90, 94; CX-0112 at Q/As 93-103.) The undersigned further finds that this amount is
substantial because, among other things, all of Complainant's warranty and repair activities occur
in the United States. In addition, ofthe costs associated with the Broadwell facility are related
to the manufacture of Complainant's fasteners. (CX-0112C at Q/As at 45-49; see also Certain
Stringed Musical Instruments, Inv. No. 337-TA-586, Comm'n Op. at 25-26("We emphasize that
there is no minimum monetary expenditure that a complainant must demonstrate to qualify as a
domestic industry under the 'substantial investment' requirement of this section. We agree with
the parties that the requirement for showing the existence of a domestic industry will depend on
the industry in question, and the complainant's relative size. Moreover, we agree with the parties
that there is no need to define or quantify the industry itself in absolute mathematical terms.").)
Accordingly, the undersigned finds that Complainant satisfies the economic prong of the
domestic industry requirement under § 337(a)(3)(B).23
IX. CONCLUSIONS OF LAW
1. The Commission has personal jurisdiction over the parties, and subject-matter
jurisdiction over the accused products.
2. The Accused Products do not infringe claims 1, 10, and 16 of U.S. Patent No.
8,387,718.
3. The technical prong of the domestic industry requirement for U.S. Patent No.
8,387,718 has not been satisfied.
4. The economic prong of the domestic industry requirement has been satisfied.
5. Claim 1, 10, and 16 of U.S. Patent No. 8,387,718 are not invalid under 35 U.S.C. §
112 for indefiniteness.
23 The undersigned has already determined that Complainant has met the economic prong under section 337(a)(3)(B.)
Accordingly, the undersigned need not decide whether Complainant meets the economic prong under section
337(a)(3)(C).
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6. Claims 1, 10, and 16 of U.S. Patent No. 8,387,718 are not invalid under 35 U.S.C.
§ 103 for obviousness.
X. RECOMMENDED DETERMINATION ON REMEDY AND BOND
The Commission's Rules provide that subsequent to an initial determination on the
question of violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, the
administrative law judge shall issue a recommended determination concerning the appropriate
remedy in the event that the Commission finds a violation ofsection 337, and the amount of bond
to be posted by respondent during Presidential review of the Commission action under section
337(j). See 19 C.F.R. § 210.42(a)(1)(ii).
The Commission has broad discretion in selecting the form,scope and extent ofthe remedy
in a section 337 proceeding. Viscofan, S.A. v. Intl Trade Comm 'n, 787 F.2d 544, 548 (Fed. Cir.
1986). Under Section 337(d)(1), if the Commission determines as a result of an investigation that
there is a violation of section 337, the Commission is authorized to enter either a limited or a
general exclusion order. 19 U.S.C. § 1337(d)(1). A limited exclusion order instructs the U.S.
Customs and Border Protection to exclude from entry all articles that are covered by the patent at
issue and that originate from a named respondent in the investigation. A general exclusion order
instructs the CBP to exclude from entry all articles that are covered by the patent at issue, without
regard to source. Certain Purple Protective Gloves, Inv. No.337-TA-500, Comm'n. Op. at 5(Dec.
22, 2004).
A. Limited Exclusion Order
Under section 337(d), the Commission may issue a limited exclusion order directed to a
respondent's infringing products. 19 U.S.C. § 1337(d). A limited exclusion order instructs the U.S.
Customs Service to exclude from entry all articles that are covered by the patent at issue that
- 55 -

originate from a named respondent in the investigation. Fuji Photo Film Co. Ltd. v. Intl Trade
Comm 'n,474 F.3d 1281, 1286(2007).
Complainant requests that a limited exclusion order issue as to products that infringe the
asserted claims of the '718 patent.(CIB at 59.) Complainant submits that "[i]f the Commission
determines that Respondent has violated Section 337, the issuance of a permanent limited
exclusion order is routine."(Id.(citing 19 U.S.C. § 1337(d)).)
Should a limited exclusion order issue, Respondent requests that it "(i) exempt products
imported into the United States prior to the effective date of the order; (ii) exclude components,
(iii) allow Respondent to import components for service and repair of Accused Products already
in the United States, and (iv) include a certification provision."(RRB at 25; see also RIB at 58-
59.)
To the extent the Commission determines that Respondent infringes claims 1, 10, and 16
of the '718 patent, the undersigned recommends the issuance of a limited exclusion order.
Respondent requests that the limited exclusion order include certain exemptions and provisions.
However, beyond attorney argument, Respondent did not cite to any evidence or provide
information to support its request. The undersigned therefore declines to include the requested
exemptions and provisions.
B. Cease and Desist Order
Under section 337(0(1), the Commission may issue a cease and desist order in addition to,
or instead of, an exclusion order. 19 U.S.C.§ 1337(0(1). The Commission generally issues a cease
and desist order directed to a domestic respondent when there is a "commercially significant"
amount of infringing, imported product in the United States that could be sold, thereby
undercutting the remedy provided by an exclusion order. See Certain Crystalline Cefadroxil
- 56 -

Monohydrate, Inv. No. 337-TA-293 USITC Pub. 2391, Comm'n Op. on Remedy, the Public
Interest and Bonding at 37-42 (June 1991); Certain Condensers, Parts Thereof and Prods.
Containing Same, Including Air Conditionersfor Automobiles, Inv. No. 337-TA-334 (Remand),
Comm'n Op. at 26-28, 1997 WL 817767, at *11-12(U.S.I.T.C. Sept. 10, 1997).
Complainant asserts a cease and desist order is an appropriate and necessary remedy here.
(CIB at 59-60.) According to Complainant, Respondent's domestic inventory of the Accused
Products is valued at $ 4,696,570,65. (Id. at 60 (citing CX-0109C.0021, .0023).) Complainant
submits that this is "clearly a commercially significant value of inventory in the United States."
(Id.)
Respondent asserts that Complainant bears the burden of proving that it has a
"commercially significant" inventory in the United States.(RIB at 59-60(citing Certain Integrated
Repeaters, Switches, Transceivers and Prods. Containing Same, Inv. No. 337-TA-435, Comm'n
Op. at 27 (Aug. 16, 2002)).) According to Respondent, "[Complainant] simply provides a
threadbare allegation "that Respondent maintains a significant inventory" and therefore a cease
and desist order is necessary.(Id. at 60(citing RX-0260C at 91.)
The undersigned recommends that a cease and desist orders issue, if Respondent is found
to infringe by the Commission. The evidence adduced at the hearing shows that Respondent does
maintain "commercially significant" inventory of the accused products in the United States.
Specifically, as of November 16, 2017, Respondent had the following inventory in the United
States:
- 57 -

(CX-0109C.0021.)The suggested retail price of the Accused Products is as follows:
Model
NR1890DR
NR1890DC
NT1850DE
NT1865DM
NT1865DMA
Suggested Retail Price
I
I
I
I
I
Unit Cost Wholesale Price(s)
(Id. at .0023.) Based on the information above, the value of Respondent's domestic inventory is
"commercially significant."(See CIB at 59(chart reproduced below).)
- 58 -

C. Bond During Presidential Review Period
Pursuant to section 337(j)(3), the Administrative Law Judge and the Commission must
determine the amount ofbond to be required ofa respondent during the 60-day Presidential review
period following the issuance of permanent relief, in the event that the Commission determines to
issue a remedy. 19 U.S.C. § 1337(j)(3). The purpose ofthe bond is to protect the complainant from
any injury. 19 C.F.R. § 210.42(a)(1)(ii), § 210.50(a)(3).
When reliable price information is available, the Commission has often set the bond by
eliminating the differential between the domestic product and the imported, infringing product.
See Microsphere Adhesives, Processesfor Making Same, and Prods. Containing Same,Including
Self-Stick Repositionable Notes,Inv. No.337-TA-366, USITC Pub.2949,Comm'n Op.at 24(Dec.
8, 1995). In other cases, the Commission has turned to alternative approaches, especially when the
level of a reasonable royalty rate could be ascertained. See, e.g., Certain Integrated Circuit
Telecomm. Chips and Prods. Containing Same, Including Dialing Apparatus, Inv. No. 337-TA-
337, Comm'n Op. at 41, 1993 WL 13033517, at *24 (U.S.I.T.C. June 22, 1993). A 100 percent
bond has been required when no effective alternative existed. See, e.g., Certain Flash Memory
Circuits and Prods. Containing Same,Inv. No. 337-TA-382, USITC Pub. No. 3046, Comm'n Op.
at 26-27(July 1997)(imposing a 100% bond when price comparison was not practical because the
parties sold products at different levels of commerce, and the proposed royalty rate appeared to be
de minimus and without adequate support in the record).
Complainant writes: "A bond is necessary here to protect Complainant from harm due to
Respondent's continued infringement."(CIB at 60.)
Respondent submits that "[a] bond of zero is appropriate in this Investigation, as
[Complainant] failed to meet its burden to show the need for a bond."(RIB at 60.) Respondent
- 59 -

explains that Complainant failed to provide any explanation as to why a bond is necessary in this
Investigation, other than a boilerplate response that"a bond was necessary to protect Complainant
from harm."(Id.; see also RRB at 25.)
The undersigned agrees with Respondent. Complainant's entire argument consists of one
conclusory sentence. Complainant has proffered no evidence or justification for its request for a
bond. Accordingly, the undersigned recommends that no bond be set.
XI. INITIAL DETERMINATION
Based on the foregoing, it is the Initial Determination of the undersigned that Respondent
Hitachi Koki U.S.A. Limited does not infringe the asserted claims of U.S. Patent No. 8,387,718.
The undersigned further determines that the asserted patent is not invalid and that the domestic
industry requirement has not been satisfied.24
The undersigned hereby CERTIFIES to the Commission this Initial Determination, the
Recommended Determination, and Exhibit 1. The parties' briefs, which include the final exhibits
lists, are not certified as they are already in the Commission's possession in accordance with
Commission rules. 19 C.F.R. § 210.38(a).
The Secretary shall serve the confidential version of this Initial Determination upon
counsel who are signatories to the Protective Order (Order No. 1) issued in this Investigation. A
public version will be served at a later date upon all parties ofrecord.
Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the
determination of the Commission unless a party files a petition for review pursuant to 19 C.F.R.
24 Any arguments from the parties' pre-hearing briefs incorporated by reference into the parties' post-hearing briefs
are stricken, unless otherwise discussed herein, as an improper attempt to circumvent the page limits imposed for post-
hearing briefing.
- 60 -

§ 210.43(a)or the Commission,pursuant to 19 C.F.R.§ 210.44, orders on its own motion a review
ofthe Initial Determination or certain issues therein.
Within ten days of the date of this document, the parties shall submit to the Office of
Administrative Law Judges a joint statement regarding whether or not they seek to have any
portion ofthis document deleted from the public version. The parties' submission shall be made
by hard copy and must include a copy of this Initial Determination with red brackets indicating
any portion asserted to contain confidential business information to be deleted from the public
version.25 The parties' submission shall include an index identifying the pages of this document
where proposed redactions are located. The parties' submission concerning the public version of
this document need not be filed with the Commission Secretary.
SO ORDERED.
Charles E. Bullock
Chief Administrative Law Judge
25 Ifthe parties submit excessive redactions,they may be required to provide an additional written statement,supported
by declarations from individuals with personal knowledge, justifying each proposed redaction and specifically
explaining why the information sought to be redacted meets the definition for confidential business information set
forth in Commission Rule 201.6(a). 19 C.F.R. § 201.6(a).
- 61 -

.
EXHIBIT 1

PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington,D.C.
In the Matter of
CERTAIN GAS SPRING NAILER
PRODUCTS AND COMPONENTS
THEREOF
Inv. No.337-TA-1082
ORDER NO.28: GRANTING-IN-PART RESPONDENT'S MOTION IN LIMINE NO. 1
TO EXCLUDE TESTIMONY AND EVIDENCE REGARDING
COMPLAINANT'S TECHNICAL EXPERT DR.JOHN D.PRATT
(October 24,2018)
On October 9, 2018, Respondent Hitachi Koki USA, Limited ("Respondent") moved
(1082-015) to exclude the testimony of Complainant Kyocera Senco Brands Inc.'s
("Complainant")technical expert, Dr. John D. Pratt. On October 19, 2018, Complainant opposed
the motion.
Respondent argues that "Dr. Pratt has no experience whatsoever in the field of powered
nailers and is therefore not capable of analyzing the issues of infringement or invalidity from the
perspective ofa person of ordinary skill in the art."(Mem. at 1 (emphasis in original).)
Complainant argues that Dr. Pratt has "significant experience in handheld power tools and
fastener driving systems" and that "Respondent attempts to unduly narrow the scope of the
'pertinent art." (Opp. at 1.) Complainant further argues that "Respondent mischaracterizes the
standard for determining whether a witness may testify as a technical expert in patent cases."(Id)
A. Whether Dr. Pratt Qualifies as a Person of Ordinary Skill in the Art
Complainant writes that "the level ofordinary skill in the art is disputed."(Opp. at 4.) This
is incorrect. In the Markman Order, the undersigned found "that one of ordinary skill in the art
would have at least (i) a Master's Degree in mechanical engineering with at least two years of
experience in power nailer design;(ii) a Bachelor's Degree in mechanical engineering with at least

five years of experience in powered nailer design; or (iii) ten or more years of experience in
powered nailer design."(Order No.9 at 5-6(May 3, 2018).)
Complainant dismisses this ruling by calling it "preliminary" and complaining that it "did
not agree that this was the proper level of ordinary skill in the art."(Opp. at 4). This ruling is not
preliminary. The undersigned will not revisit issues decided in the Markman Order, unless there
are grounds for reconsideration of the order. Here, not only did Complainant fail to seek
reconsideration of the order, but it was silent as to its disagreement about the level of skill in the
art in the over five months since the Markman order issued.
Nor can Complainant assert that it was unaware that the undersigned would make findings
related to a person of ordinary skill in the art during the Markman phase of the Investigation. In
Investigations such as this one where a Markman hearing and order occur, the undersigned always
addresses the level of ordinary skill of art in Markman.orders. See, e.g., Certain Electrochemical
Glucose Monitoring Systems & Components Thereof Inv. No. 337-TA-1075, Order No. 27 at 5-6
(May 17, 2017); Certain Electrical Connectors, Components Thereof & Prods. Containing the
Same, Inv. No. 337-TA-1043, Order No. 23 at 5-6 (Sept, 28, 2017); Certain Integrated Circuits
with Voltage Regulators & Prods. Containing Same,Inv. No. 337-TA-1024, Order No. 36, at 5-6
(July 7, 2017); Certain Mobile & Portable Elec. Devices Incorporating Haptics (Including
Smartphones & Laptops) & Components Thereof Inv. No. 337-TA-1004, Order No. 27 at 5-6
(Feb. 2, 2017); Certain Motorized Self-Balancing Vehicles, Inv. No. 337-TA-1000, Order No. 25
at 5-6 (Nov. 1, 2016); Certain Air Mattress Sys., Components Thereof & Methods of Using the
Same, Inv. No. 337-TA-971, Order No. 19 at 4-5 (May 11, 2016); Certain Automated Teller
Machines & Point ofSale Devices & Assoc. Software Thereof Inv. No. 337-TA-957, Order No.
15 at 5-6(Dec. 22, 2015); Certain Hemostatic Prods. & Components Thereof Inv. No. 337-TA-
913, Order No. 9 at 5-6(Aug. 26, 2014); Certain Antivenom Compositions & Prods. Containing
- 2 -

Same, Inv. No. 337-TA-903, Order No. 23 at 5-6 (May 21, 2014); Certain Vision-Based Drier
Assistance Sys. Cameras & Components Thereof, Inv. No. 337-TA-899, Order No. 13 at 5 (Oct.
9,2014).! Despite this, Complainant chose not to address the level ofskill in its Markman briefing.
Additionally, in his declaration submitted as part of the Markman briefing, Dr. Pratt applied the
level of ordinary skill in the art proposed by Respondent in reaching his opinions.(See Order No.
9 at 5 (citing CMIB Ex. B at ¶f 24-25).) Such an action implied that Complainant and its expert
agreed with Respondent's proposed definition.
The undersigned finds that Dr. Pratt does not qualify as a person ofordinary skill in the art
under the standard set forth in the Markman order. While Dr. Pratt meets the educational
requirement, he lacks the requisite experience. The undersigned found that a person of ordinary
skill in the art is required to have some degree of experience in power nailer design.(Order No.9
at 5-6.) Dr. Pratt has extensive experience in fastener driving tools, but does not purport to have
any experience in power nailer design.(See Opp. at 2(noting that experience in fastener driving
tools "overlaps" with the requisite experience, but never asserting that Dr. Pratt does,in fact, have
such experience); see also Mot. Ex. 1 at 48:19-21 (deposition testimony in which Dr. Pratt admits
that he does not have any experience designing powered nailers).) As such, Dr. Pratt does not
qualify as a person of ordinary skill in the art as that level has been defined.
As noted above, the issue of the level of ordinary skill has already been ruled upon.
Complainant had the opportunity to argue for a different finding, but chose not to do so. Permitting
Complainant to re-litigate this issue would be unfair to Respondent and would also undermine the
finality ofsuch rulings in future investigations. The undersigned cannot accept a practice in which
'Additionally, Respondent included its argument with respect to the level of skill in the art in its initial Markman
brief.(RMIB at 10.) As such, it should have been clear that this issue was ripe for adjudication in the Markman Order.
- 3 -

litigants are free to make additional arguments that they had the opportunity to make previously,
but neglected to do so.
B. Whether Dr. Pratt's Testimony Should Be Excluded
Complainant argues that Dr. Pratt should still be permitted to testify, even if he does not
qualify as a person of ordinary skill in the art. Federal Circuit law does not appear to be definitive
on this point. Respondent cites Sundance Inc. v. Demonte Fabricating, Ltd, 550 F.3d 1356(Fed.
Cir. 2008)in support of the proposition that an expert witness must meet the level of skill in the
art in order for his testimony to be admissible.(See Opp. at 1.)Sundance held that "it is an abuse
of discretion to permit a witness to testify as an expert on the issues of noninfringement or
invalidity unless that witness is qualified as an expert in the pertinent art." Id. at 1363. The
Sundance Court did not, however, explicitly require that an expert must meet the level ofordinary
skill in the art. In theory, at least, a witness could qualify as an expert in the "pertinent art," without
meeting the specific requirements of one of ordinary skill in the art.
Nor, however, do the cases cited by Complainant squarely address the issue. In SEB S.A.
v. Montgomery Ward & Co., 594 F.3d 1360 (Fed. Cir. 2010), the Federal Circuit found that the
district court did not abuse its discretion when it permitted the testimony of an expert who had
technical expertise, but lacked specific expertise in the technology of the patent. Id at 1373
(explaining that the expert did not have skill in designing deep fryers). The SEB court determined
that the district court was in the best place to judge whether the proposed expert witness had the
"knowledge, skill, experience, training,[and] education" of a "specialized" nature that was likely
to "assist the trier of fact to understand the evidence or to determine" infringement. Id. The court
did not, however, discuss whether the district court had already determined the level of ordinary
skill in the art. Thus, it is unclear if the Federal Circuit would reach the same conclusion if the
4

district court had specifically required that a person of ordinary skill in the art have experience in
designing deep fryers.2
Because there is no case directly on point, the undersigned errs in favor of Complainant
and finds that Dr. Pratt's testimony should be admitted, as conditioned below. In doing so, the
undersigned notes that "courts enjoy 'wide latitude' to determine admissibility and 'the mode and
order' of evidentiary presentations." Id; see also Sundance, 550 F.3d at 1360 ("We note that
admission ofexpert testimony is within the discretion ofthe trial court.").
This ruling does not completely resolve Respondent's concern, however. Although Dr.
Pratt may provide testimony, the fact remains that he is not qualified as a person of ordinary skill
in the art. As such, reliance on his testimony is likely to be problematic. The undersigned cannot,
for example, rely on Dr. Pratt's testimony to support a finding of infringement based on the
doctrine ofequivalents. Doing so would constitute reversible error, as the Federal Circuit has been
very clear that the testimony of a person of ordinary skill in the art is required for infringement
under the doctrine ofequivalents. In AquaTex Indus., Inc. v. Techniche Sols.,479 F.3d 1320(Fed.
Cir. 2007),for example,the Federal Circuit wrote:
Both the Supreme Court and this court have made clear that the evidence of
equivalents must be from the perspective ofsomeone skill in the art...[W]hile many
different forms of evidence may be pertinent, when the patent holder relies on the
doctrine of equivalents, as opposed to literal infringement, the difficulties and
complexities of the doctrine require that evidence be presented to the jury or other
fact-finder through the particularized testimony of a person of
ordinary skill in the art, typically a qualified expert, who (on a limitation-by-
limitation basis) describes the claim limitations and establishes that those skilled in
the art would recognize the equivalents.
2 Complainant also cites to several district court cases.(See Opp. at 4.) The undersigned is not required to follow the
rulings ofthose cases.
- 5 -

Id at 1329.3 Complainant relies on the doctrine of eq~ivalents for limitations relating to "driven
position." (See, e.g., CIB at 54 ("Dr. Pratt explains that while the Accused Products do not meet
this claim limitation literally, this limitation is met by the Accused Products under the doctrine of
equivalents insubstantial differences test.").) ,~s such, Complai;nant will not be able to establish
infringement as to these claims and all of Dr. Pratt's testimony related to the doctrine of
equivalents should be struck.
For the· above stated reasons, Respondent's motion in limine no. 1 (1082-015) is hereby
granted-in-part. The undersigned strikes Dr. 'Pratt's testimony with respect to the doctrine of
equivalents (for infringement and for the technical prong of the domestic industry requirement).
The undersigned further orders the parties to submit a Joint Statement by noon on October 26,
2018 indicating what portions of the case they expect to go forward, using the table of contents in
the pre-hearing briefs as a guide. (i.e., whether infringement and/or invalidity of claim 1 of the
U.S. Patent No. 8,26.7,296 should continue to be part of the Investigation). The parties should
attempt to reach agreement, but, if they cannot, should each provide a brief argument on the issue.
3 In AquaTex, the Federal Circuit also stated: "Even where literal infringement is involved, expert infringement
testimony is generally required in cases involving complex technology." 479 F.3d at 1329 n.7; see also Centricut,
LLCv. Esab Grp., Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004) (explaining that expert testimony is not necessary when
the technology is "easily understandable without the need for expert explanatory testimony," but is necessary if the
technology involved is complex). That decision will be made in the Initial Determination.
- 6 -

Within seven days of the date ofthis document, the parties shall submit to the Office of
the Administrative Law Judges ajoint statement as to whether or not they seek to have any portion
of this document deleted from the public version. Ifthe parties do seek to have portions of this
document deleted from the public version,they must submitto this office a copy ofthis document
with red brackets indicating the portion or portions asserted to contain confidential business
information. The submission may be made by email and/or hard copy by the aforementioned date
and need not be filed with the Commission Secretary.
SO ORDERED.
7
,44,Z UV
Charles E.Bullock
Chief Administrative Law Judge

CERTAIN GAS SPRING NAILER PRODUCTS AND Inv. No.337-TA-1082
COMPONENTS THEREOF
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that PUBLIC VERSION INITIAL
DETERMINATION ON VIOLATION OF SECTION 337 AND RECOMMENDED
DETERMINATION OF REMEDY AND BOND has been served upon the following parties
as indicated, on 7/1/2019.
Lisa R. Barton, Se retary
U.S. International Trade Commission
500 E Street SW,Room 112
Washington, DC 20436
On Behalf of Complainant Kyocera Senco Brands Inc.:
Robert S. Riggs, Esq.
VEDDER PRICE PC
222 North LaSalle Street, Suite 2600
Chicago, IL 60601-1003
Respondent Hitachi Koki U.S.A., Limited:
Paul Devinsky
MCDERMOTT WILL & EMERY LLP
500 North Capitol Street, NW
Washington, DC 20001
Viaa Hand Delivery
Express Delivery
El Via First Class Mail
CI Other:
Viaa Hand Delivery
Express Delivery
o Via First Class Mail
0 Other:

UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN GAS SPRING NAILER PRODUCTS
AND COMPONENTS THEREOF
Inv. No. 337-TA-1082
ORDER 9: CONSTRUING THE TERMS OF THE ASSERTED CLAIMS OF
THE PATENTS AT ISSUE
(May 3, 2018)

TABLE OF CONTENTS
I. INTRODUCTION 1
II. IN GENERAL 1
III. RELEVANT LAW 2
IV. LEVEL OF ORDINARY SKILL IN THE ART 5
V. THE ASSERTED PATENTS 6
A. The '547 Patent 6
B. The '296 Patent 7
C. The '297 Patent 9
D. The '722 Patent 11
E. The '718 Patent 13
F. The '282 Patent 15
VI. CLAIM CONSTRUCTION 16
A. Construction of the Agreed-Upon Claim Terms 16
B. Construction of the Disputed Claim Terms 18
1. "ready position" 18
2. "driven position" 21
3. "a main storage chamber that substantially surrounds at least a
portion of said cylinder" 24
4. "protruding toward said exit end of the guide body" 27
5. "maximum pneumatic force of said pressurized gas" 30
6. "lifter member" 33
7. "lifter member [which/that] exhibits a contact surface 42
8. "driver member" 43
9. "gas replenishment system" 45
1

I. INTRODUCTION
This Investigation was instituted by the Commission on November 20, 2017 to determine
whether certain gas spring nailer products and components thereof infringe U.S. Patent Nos.
8,233,250 (the "'250 patent"); 8,267,296 (the '296 patent"); 8,267,297 (the '297 patent")';
8,387,718 (the "718 patent"); 8,286,722 (the '722 patent"); and 8,602,282 (the "282 patent").
See 82 Fed. Reg. 55,118-119 (Nov. 20, 2017). The respondent is Hitachi Koki U.S.A., Limited.
Pursuant to Ground Rule 6, a Markman hearing was held February 22, 2018 regarding the
interpretation of certain terms of the patents at issue. Prior to the hearing, Complainant Kyocera
Senco Brands Inc. ("Complainant") and Respondent met and conferred in an effort to reduce the
number of disputed claim terms to a minimum. The parties also filed initial and reply claim
construction briefs, wherein each party offered its construction for the claim terms in dispute,
along with support for its proposed interpretation. After the hearing and pursuant to Order No. 5,
the parties submitted an updated Joint Claim Construction Chart.2
IN GENERAL
The claim terms construed in this Order are done so for the purposes of this section 337
Investigation. Those terms not in dispute need not be construed. See Vanderlande Indus.
1 In its initial Markman brief, Complainant states that it is asserting claims 1, 30, and 32 of this patent. (CMIB at 1
n.1.) However, the Notice of Investigation, as well as the Amended Complaint, only list claims 1 and 32 as asserted
claims. See 82 Fed. Reg. 55,118-119 (Nov. 20, 2017); Am. Compl. at IT 2. As the parties are well aware, the Notice
of Investigation defines the scope of the investigation. See 19 C.F.R. § 210.10(b). To date, Complainant has not
moved to amend its Complaint or the Notice of Investigation to bring claim 30 within the scope of this Investigation.
Thus, any references to claim 30 will not be considered.
2 For convenience, the briefs and chart submitted by the parties are referred to hereafter as:
CMIB Complainant's Initial Markman Brief
CMRB Complainant's Reply Markman Brief
RMIB Respondent's Initial Markman Brief
RMRB Respondent's Reply Markman Brief
JC Updated Joint Proposed Claim Construction Chart

Nederland BV v. Intl Trade Comm 'n, 366 F.3d 1311, 1323 (Fed. Cir. 2004) (noting that the
administrative law judge need only construe disputed claim terms).
HI. RELEVANT LAW
"An infringement analysis entails two steps. The first step is determining the meaning
and scope of the patent claims asserted to be infringed. The second step is comparing the
properly construed claims to the device accused of infringing." Markman v. Westvieiv
Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en bane) (internal citations omitted), aff'd,
517 U.S. 370 (1996). Claim construction is a "matter of law exclusively for the court." Id. at
970-71. "The construction of claims is simply a way of elaborating the normally terse claim
language in order to understand and explain, but not to change, the scope of the claims."
Embrex, Inc. V. Serv. Eng'g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000).
Claim construction focuses on the intrinsic evidence, which consists of the claims
themselves, the specification, and the prosecution history. See Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005) (en banc); see also Markman, 52 F.3d at 979. As the Federal Circuit
in Phillips explained, courts must analyze each of these components to determine the "ordinary
and customary meaning of a claim term" as understood by a person of ordinary skill in the art at
the time of the invention. 415 F.3d at 1313. "Such intrinsic evidence is the most significant
source of the legally operative meaning of disputed claim language." Bell Atl. Network Servs.,
Inc. v. Covad Commc 'ns Grp,, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001).
"It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention
to which the patentee is entitled the right to exclude." Phillips, 415 F.3d at 1312 (quoting
Innova/Pure Water, Inc. V. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
2004)). "Quite apart from the written description and the prosecution history, the claims
2

themselves provide substantial guidance as to the meaning of particular claims terms." Id. at
1314; see also Interactive Gift Express, Inc. v. Cornpuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir.
2001) ("In construing claims, the analytical focus must begin and remain centered on the
language of the claims themselves, for it is that language that the patentee chose to use to
'particularly point[ ] out and distinctly claim[ ] the subject matter which the patentee regards as
his invention.'). The context in which a term is used in an asserted claim can be "highly
instructive." Phillips, 415 F.3d at 1314. Additionally, other claims in the same patent, asserted
or unasserted, may also provide guidance as to the meaning of a claim term. Id.
The specification "is always highly relevant to the claim construction analysis. Usually, it
is dispositive; it is the single best guide to the meaning of a disputed term." Id. at 1315 (quoting
Vitronics Corp. V. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "[T]he specification
may reveal a special definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Id. at
1316. "In other cases, the specification may reveal an intentional disclaimer, or disavowal, of
claim scope by the inventor." Id. As a general rule, however, the particular examples or
embodiments discussed in the specification are not to be read into the claims as limitations. Id. at
1323. In the end, "[t]he construction that stays true to the claim language and most naturally
aligns with the patent's description of the invention will be . . . the correct construction." Id. at
1316 (quoting Renishaw PLC v. Marposs Societar per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998)).
In addition to the claims and the specification, the prosecution history should be
examined, if in evidence. Id. at 1317; see also Liebel-Flarsheini Co. v. Medrad, Inc., 358 F.3d
898, 913 (Fed. Cir. 2004). The prosecution history can "often inform the meaning of the claim
3

language by demonstrating how the inventor understood the invention and whether the inventor
limited the invention in the course of prosecution, making the claim scope narrower than it
would otherwise be." Phillips, 415 F.3d at 1317; see also Chimie v. PPG Indus. Inc., 402 F.3d
1371, 1384 (Fed. Cir. 2005) ("The purpose of consulting the prosecution history in construing a
claim is to 'exclude any interpretation that was disclaimed during prosecution.").
When the intrinsic evidence does not establish the meaning of a claim, then extrinsic
evidence (i.e., all evidence external to the patent and the prosecution history, including
dictionaries, inventor testimony, expert testimony, and learned treatises) may be considered.
Phillips, 415 F.3d at 1317. Extrinsic evidence is generally viewed as less reliable than the patent
itself and its prosecution history in determining how to define claim terms. Id. at 1317. "The
court may receive extrinsic evidence to educate itself about the invention and the relevant
technology, but the court may not use extrinsic evidence to arrive at a claim construction that is
clearly at odds with the construction mandated by the intrinsic evidence." Elkay Mfg. Co. v. Ebco
Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999).
If, after a review of the intrinsic and extrinsic evidence, a claim term remains ambiguous,
the claim should be construed so as to maintain its validity. Phillips, 415 F.3d at 1327. Claims,
however, cannot be judicially rewritten in order to fulfill the axiom of preserving their validity.
See Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). Thus, "if the only claim
construction that is consistent with the claim's language and the written description renders the
claim invalid, then the axiom does not apply and the claim is simply invalid." Id.
A claim must also be definite. Pursuant to 35 U.S.C. § 112, second paragraph: "The
specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, II 2.
4

In Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), the Supreme Court held that
§ 112, If 2 requires "that a patent's claims, viewed in light of the specification and prosecution
history inform those skilled in the art about the scope of the invention with reasonable certainty."
(Id at 2129.) A claim is required to "provide objective boundaries for those of skill in the art,"
and a claim term is indefinite if it "might mean several different things and no informed and
confident choice is among the contending definitions." Interval Licensing LLC v. AOL, Inc., 766
F.3d 1364, 1371 (Fed. Cir. 2014). A patent claim that is indefinite is invalid. 35 U.S.C. §
282(b)(3)(A).
IV. LEVEL OF ORDINARY SKILL IN THE ART
Respondent submits that "[a] person of ordinary skill in the art relevant to the Asserted
Patents would have either (i) a Master's Degree in mechanical engineering with at least two
years of experience in power nailer design; (ii) a Bachelor's Degree in mechanical engineering
with at least five years of experience in powered nailer design; or, (iii) ten or more years of
experience in powered nailer design. This experience in powered nailer design would include
mechanical design, tool design, manufacturing, mechanics of materials, stress analysis,
ergonomics, and human factors." (RMIB at 10 (citing Ex. 7, Vallee Decl. at It 22).)
While Complainant did not address the level of ordinary skill in the art in its briefs, its
expert, Dr. John Pratt, did opine on the issue in his declaration. (See CMIB Ex. B at TT 24-25.)
He noted that in reaching his conclusions, he applied the level of ordinary skill in the art
proposed by Respondent. (Id. at If 25.)
The undersigned therefore finds Respondent's proposal to best reflect the level of skill in
the art at the time of the asserted patents. Accordingly, the undersigned finds that one of ordinary
skill in the art would have at least (i) a Master's Degree in mechanical engineering with at least

two years of experience in power nailer design; (ii) a Bachelor's Degree in mechanical
engineering with at least five years of experience in powered nailer design; or (iii) ten or more
years of experience in powered nailer design.
V. THE ASSERTED PATENTS
A. The '547 Patent
The '547 patent, entitled "Fastener Driving Tool Using a Gas Spring," issued on
September 6, 2011 to Richard L. Leimbach, Thomas A. McCardle, Danny L. Bolender, Steve
Dickinson, Joseph R. Knueven, Robert L. Lance, Dan Stolz, Michael V. Petrocelli, and Teresa
Petrocelli. The '547 patent is assigned on its face to Senco Brands, Inc.3 The '547 patent
generally relates to "linear fastener driving tools, and, more particularly, [is] directed to portable
tools that drive staples, nails, or other linearly driven fasteners." ('547 patent at 1:15-17.) The
invention is "specifically disclosed as a gas spring linear fastener driving tool, in which a
cylinder filled with compressed gas is used to quickly force a piston through a driving stroke
movement, while also driving a fastener into a workpiece." (Id. at 18-21; see also Am. Compl. at
11¶ 20-22.)
The '547 patent has 39 claims. Only claim 30 has been asserted in this Investigation. The
asserted claim reads as follows (with the first instance of the agreed-upon terms in italics and the
first instance of the disputed terms highlighted in bold):
30. A driving mechanism for use in a fastener driving tool, said driving mechanism
comprising: (a) a hollow cylinder comprising a cylindrical wall and having a movable
piston therewithin, said hollow cylinder having a first end and a second, opposite end,
said hollow cylinder containing a displacement volume created by a stroke of said piston;
(b) a guide body that is substantially adjacent to the second end of said cylinder, said
guide body having a receiving end, an exit end, and a passageway therebetween, said
receiving end being proximal to said second end of the cylinder, said guide body being
3 On August 7, 2017, Senco Brands, Inc. legally changed its name to Kyocera Senco Brands Inc. (Am. Compl. at
5.) All rights to the patents-in-suit previously held in the name of Senco Brands, Inc. are now vested in Complainant.
(Id)
- 6 -

configured to receive a fastener that is to be driven from said exit end; (c) a driver
member that is in mechanical communication with said piston at a third end of said driver
member, said driver member having a fourth, opposite end that is sized and shaped to
push said fastener from said exit end of the guide body, wherein said passageway of the
guide body allows said driver member to pass therethrough toward said exit end during a
driving stroke and toward said receiving end during a return stroke, said driver member,
when at a driven position, protruding toward said exit end of the guide body after
said piston moves toward the second end of said cylinder, and said driver member, when
at a ready position, being withdrawn into said guide body after said piston moves toward
the first end of said cylinder; (d) a main storage chamber that substantially surrounds
at least a portion of said cylinder and is in fluidic communication with said
displacement volume of the cylinder, wherein said main storage chamber and said
displacement volume are initially charged with a pressurized gas, which is to be re-used
for multiple fastener driving actuations; and (e) a lifter member that, under first
predetermined conditions, moves said driver member from its driven position toward its
ready position, wherein when said driver member is at its ready position, said lifter
member thereby holds said movable piston in a "stop" position that is located proximal to
said first end of said hollow cylinder, while said movable piston is under a maximum
pneumatic force of said pressurized gas; wherein said cylinder and piston act as a gas
spring, under second predetermined conditions, to move said driver member from its
ready position toward its driven position, using said pressurized gas of both said main
storage chamber and said displacement volume acting on said piston, while said driver
member's fourth end contacts said fastener and moves the fastener from said exit end of
said guide body.
B. The '296 Patent
The '296 patent, entitled "Fastener Driving Tool Using a Gas Spring," issued on
September 18, 2012 to Richard L. Leimbach, Thomas A. McCardle, Danny L. Bolender, Steve
Dickinson, Joseph R. Knueven, Robert L. Lance, Dan Stolz, Michael V. Petrocelli, and Teresa
Petrocelli. The '296 patent is assigned to Senco Brands, Inc. The '296 patent generally relates to
"linear fastener driving tools, and, more particularly, [is] directed to portable tools that drive
staples, nails, or other linearly driven fasteners." ('296 patent at 1:15-17.) The invention is
"specifically disclosed as a gas spring linear fastener driving tool, in which a cylinder filled with
compressed gas is used to quickly force a piston through a driving stroke movement, while also
driving a fastener into a workpiece." (Id at 18-21; see also Am. Compl. at Tif 27-29.)
7

The '296 patent has 20 claims. Claims 1 and 11 are at issue in this Investigation. The
asserted claims read as follows (with the first instance of the agreed-upon terms in italics and the
first instance of the disputed terms highlighted in bold):
1. A fastener driving tool, comprising: (a) a guide body that has a receiving end, an exit end,
and a passageway therebetween, said guide body being configured to receive a fastener
that is to be driven from said exit end; (b) a driver actuation device having a movable
member that creates a displacement volume; (c) an elongated driver member having a
first end and a second end, said first end being in mechanical communication with said
movable member of the driver actuation device, said second end being sized and shaped
to push a fastener from said exit end of the guide body through at least a portion of said
passageway of the guide body, and said driver member having at least one longitudinal
edge with a plurality of spaced-apart protrusions; (d) a lifter member which exhibits a
contact surface that, at predetermined locations along said contact surface, makes
contact with said plurality of spaced-apart protrusions of said driver member such that,
when said lifter member is moved in a first direction, it causes a return stroke of an
operating cycle and moves said driver member from a driven position toward a ready
position, and when said lifter member is moved to a holding position, it temporarily
holds said driver member at said ready position by use of a holding contact between said
lifter member and said driver member; and (e) a main storage chamber that is in fluidic
communication with said displacement volume of the driver actuation device, wherein:
(i) said main storage chamber and said displacement volume are charged with a
pressurized gas, (ii) when actuated for a driving stroke of said operating cycle, said lifter
member moves in said first direction from said holding position and releases said driver
member from said holding contact, and said movable member of the driver actuation
device is moved by said pressurized gas and moves said driver member from said ready
position to said driven position, and (iii) said pressurized gas is not exhausted to
atmosphere after said driving stroke, but instead is re-used for a plurality of said
operating cycles; (f) an energy source used for causing movement of said lifter member;
and (g) a housing that substantially contains said driver actuation device, said elongated
driver member, said lifter member, and said main storage chamber, with no external
energy source cable and no external hose.
11. A fastener driving tool, comprising: (a) a guide body that has a receiving end, an exit end,
and a passageway therebetween, said guide body being configured to receive a fastener
that is to be driven from said exit end; (b) a driver actuation device having a movable
member that creates a displacement volume; (c) an elongated driver member that is in
mechanical communication with said movable member of the driver actuation device at a
first end of said driver member: (i) said driver member having a second, opposite end that
is sized and shaped to push a fastener from said exit end of the guide body, wherein said
passageway of the guide body allows said driver member to pass therethrough toward
said exit end during a driving stroke of an operating cycle and toward said receiving end
during a return stroke of said operating cycle, said driver member, when at a driven
position, protruding toward said exit end of the guide body, and said driver member,
8

when at a ready position, being withdrawn into said guide body, and (ii) said driver
member having at least one longitudinal edge with at least one plurality of spaced-apart
protrusions; (d) a lifter member that exhibits a contact surface that, at predetermined
locations along said contact surface, makes contact with said at least one plurality of
spaced-apart protrusions of said driver member such that, if said lifter member is moved
in a first direction, it causes said driver member to be moved from said driven position
toward said ready position; (e) a main storage chamber that, during said operating cycle,
is always in fluidic communication with said displacement volume of the driver actuation
device, wherein said main storage chamber and said displacement volume are both
charged with a pressurized gas; (f) a housing that substantially contains said driver
actuation device, said elongated driver member, said lifter member, and said main storage
chamber; and (g) a fastener magazine for holding a plurality of fasteners, and for serially
supplying said plurality of fasteners through an opening of the guide body to a position
that is coincident with a path of said driver member during said driving stroke; wherein:
(h) said lifter member, under first predetermined conditions, forces said driver member to
undergo said return stroke and move toward said ready position, and then holds said
driver member at said ready position by use of a holding contact between said lifter
member and said driver member; (i) said lifter member, under second predetermined
conditions, moves in said first direction until it releases said driver member from said
holding contact; and said driver actuation device, under said second predetermined
conditions, forces said driver member to undergo said driving stroke and move toward
said driven position; and (j) said pressurized gas is not exhausted to atmosphere after a
driving stroke, but instead it is re-used for a plurality of said operating cycles.
C. The '297 Patent
The '297 patent, entitled "Fastener Driving Tool Using a Gas Spring," issued on
September 18, 2012 to Richard L. Leimbach, Thomas A. McCardle, Danny L. Bolender, Steve
Dickinson, Joseph R. Knueven, Robert L. Lance, Dan Stolz, Michael V. Petrocelli, and Teresa
Petrocelli. The '297 patent is assigned to Senco Brands, Inc.
The '297 patent generally relates to "linear fastener driving tools, and, more particularly,
[is] directed to portable tools that drive staples, nails, or other linearly driven fasteners." ('297
patent at 1:15-17.) The invention is "specifically disclosed as a gas spring linear fastener driving
tool, in which a cylinder filled with compressed gas is used to quickly force a piston through a
driving stroke movement, while also driving a fastener into a workpiece." (Id. at 18-21; see also
Am. Compl. at Tif 34-36.)
9

The '297 patent has 35 claims. Claims 1 and 32 are at issue in this Investigation. The
asserted claims read as follows (with the first instance of the agreed-upon terms in italics and the
first instance of the disputed terms highlighted in bold):
1. A driving mechanism for use in a fastener driving tool, said driving mechanism
comprising: (a) a hollow cylinder comprising a cylindrical wall and having a movable
piston therewithin, said hollow cylinder having a first end and a second, opposite end,
said hollow cylinder containing a displacement volume created by a stroke of said piston;
(b) a guide body that is substantially adjacent to the second end of said cylinder, said
guide body having a receiving end, an exit end, and a passageway therebetween, said
receiving end being proximal to said second end of the cylinder, said guide body being
configured to receive a fastener that is to be driven from said exit end; (c) a driver
member that is in mechanical communication with said piston at a third end of said driver
member, said driver member having a fourth, opposite end that is sized and shaped to
push said fastener from said exit end of the guide body, wherein said passageway of the
guide body allows said driver member to pass therethrough toward said exit end during a
driving stroke and toward said receiving end during a return stroke, said driver member,
when at a driven position, protruding toward said exit end of the guide body after
said piston moves toward the second end of said cylinder, and said driver member, when
at a ready position, being withdrawn into said guide body after said piston moves toward
the first end of said cylinder; (d) a main storage chamber that substantially surrounds
at least a portion of said cylinder and always is in fluidic communication with said
displacement volume of the cylinder, wherein said main storage chamber and said
displacement volume are charged with a pressurized gas during all portions of an
operating cycle, with no gas replenishment system on-board said tool; and (e) a lifter
member that, under first predetermined conditions, moves said driver member from its
driven position toward its ready position; wherein said•cylinder and piston act as a gas
spring, under second predetermined conditions, to move said driver member from its
ready position toward its driven position, using said pressurized gas of both said main
storage chamber and said displacement volume acting on said piston, while said driver
member's fourth end contacts said fastener and moves the fastener from said exit end of
said guide body.
32. A driving mechanism for use in a fastener driving tool, said driving mechanism
comprising: (a) a guide body that has a receiving end, an exit end, and a passageway
therebetween, said guide body being configured to receive a fastener that is to be driven
from said exit end; (b) a movable driver actuation device; (c) an elongated driver member
that is in mechanical communication with said movable driver actuation device at a first
end of said driver member, said driver member having a second, opposite end that is
sized and shaped to push a fastener from said exit end of the guide body, said driver
member having a substantially linear direction of movement between a driven position
and a ready position, said driver member having a longitudinal edge, said driver member
having a plurality of spaced-apart protrusions along said longitudinal edge, wherein said
plurality of protrusions are substantially elongated along their outer perimeter, having
- 10 -

two substantially straight parallel outer edges that are substantially parallel to said
longitudinal edge of the driver member; and (d) a lifter member that exhibits a
discontinuous contact surface that, at predetermined locations along said discontinuous
contact surface, makes contact with said plurality of 'spaced-apart protrusions of said
driver member such that, as said lifter member is moved in a first rotational direction,
said lifter member causes said driver member to be moved from its driven position
toward its ready position, said discontinuous contact surface comprising a plurality of
spaced-apart extensions having a substantially circular outer perimeter.
D. The '722 Patent
The '722 patent, entitled "Method for Controlling a Fastemer Driving Tool Using a Gas
Spring," issued on October 16, 2012 to Richard L. Leimbach, Shane Adams, Thomas W. Clark,
Michael V. Petrocelli, and Teresa Petrocelli. The '722 patent is assigned to Senco Brands, Inc.
The '722 patent generally relates to "linear fastener driving tools, and, more particularly, [is]
directed to portable tools that drive staples, nails, or other linearly driven fasteners." ('722 patent
at 1:15-17.) The invention is "specifically disclosed as a gas spring linear fastener driving tool, in
which a cylinder filled with compressed gas is used to quickly force a piston through a driving
stroke movement, while also driving a fastener into a workpiece." (Id. at 18-21; see also Am.
Compl. at TT 48-50.)
The '722 patent has 20 claims. Claims 1 and 16 are at issue in this Investigation. The
asserted claims read as follows (with the first instance of the agreed-upon terms in italics and the
first instance of the disputed terms highlighted in bold):
1. A fastener driving tool, comprising: (a) a housing that contains a prime mover, and a
system controller; (b) a fastener driving mechanism that includes: (i) a hollow cylinder
having a movable piston therewithin, said hollow cylinder having a first end and a
second, opposite end, said hollow cylinder containing a displacement volume created by
a stroke of said piston, said displacement volume being initially charged with a
pressurized gas; (ii) a guide body that is substantially adjacent to the second end of said
cylinder, said guide body having a receiving end, an exit end, and a passageway
therebetween, said receiving end being proximal to said second end of the cylinder, said
guide body being configured to receive a fastener that is to be driven from said exit end;
(iii) an elongated driver member that is in mechanical communication with said piston,
said driver member having a driving surface that is sized and shaped to push a fastener

into an external workpiece, wherein said passageway of the guide body allows said driver
member to pass therethrough toward said exit end during a driving stroke, and allows
said driver member to pass therethrough away from said exit end during a lifting interval;
(A) said driver member having a first longitudinal edge; (B) said driver member having a
first plurality of spaced-apart protrusions along said first longitudinal edge; and (iv) a
lifter member that exhibits an outer shape that defines a perimeter of said lifter member's
surface: (A) said lifter member being movable, under command of said system controller,
by said prime mover; (B) said lifter member having a discontinuous contact surface that,
at predetermined locations along said discontinuous contact surface, makes contact with
said first plurality of spaced-apart protrusions of said driver member such that, underfirst
predetermined conditions, said lifter member is moved in a first direction and thereby
causes said driver member to be moved from its driven position toward its ready
position; and (C) said lifter member being positionable by said prime mover, under
second predetermined conditions, such that said discontinuous contact surface of the
lifter member does not mechanically interfere with said first plurality of spaced-apart
protrusions along said first longitudinal edge of the driver member during said driving
stroke, in which said driver member moves from its ready position toward its driven
position; (c) a safety contact element that extends to said exit end of the guide body, and
which is movable between an actuated position when said safety contact element is
pressed against said external workpiece, and a non-actuated position when said safety
contact element is not pressed against said external workpiece; (d) a trigger actuator that
is user-actuated; (e) a trigger position sensor; and (f) a safety contact element position
sensor; wherein said cylinder and piston act as a gas spring, under said second
predetermined conditions, to move said driver member from its ready position toward its
driven position, using said pressurized gas acting on said piston, while said driver
member's driving surface contacts a fastener and moves the fastener toward said exit end
of said guide body.
16. A fastener driving tool, comprising: (a) a housing that.contains a prime mover, and a
system controller; (b) a fastener driving mechanism that includes: (i) a hollow cylinder
having a movable piston therewithin, said hollow cylinder having a first end and a
second, opposite end, said hollow cylinder containing a displacement volume created by
a stroke of said piston, said displacement volume being. charged with a pressurized gas
during all portions of an operating cycle; (ii) a guide body that is substantially adjacent to
the second end of said cylinder, said guide body having a receiving end, an exit end, and
a passageway therebetween, said receiving end being proximal to said second end of the
cylinder, said guide body being configured to receive a fastener that is to be driven from
said exit end; (iii) an elongated driver member that is in mechanical communication with
said piston, said driver member having a driving surface that is sized and shaped to push
a fastener into an external workpiece, wherein said passageway of the guide body allows
said driver member to pass therethrough toward said exit end during a driving stroke, and
allows said driver member to pass therethrough away from said exit end during a lifting
interval; (A) said driver member having a first longitudinal edge; (B) said driver member
having a first plurality of spaced-apart protrusions along said first longitudinal edge; and
(iv) a lifter member that exhibits an outer shape that defines a perimeter of said lifter
member's surface: (A) said lifter member being movable, under command of said system
- 12-

controller, by said prime mover; (B) said lifter member having a discontinuous contact
surface that, at predetermined locations along said discontinuous contact surface, makes
contact with said first plurality of spaced-apart protrusions of said driver member such
that, under first predetermined conditions, said lifter member is moved in a first direction
and thereby causes said driver member to be moved from its driven position toward its
ready position; and (C) said lifter member being positionable by said prime mover, under
second predetermined conditions, such that said discontinuous contact surface of the lifter
member does not mechanically interfere with said first plurality of spaced-apart
protrusions along said first longitudinal edge of the driver member during said driving
stroke, in which said driver member moves from its ready position toward its driven
position; (c) a safety contact element that extends to said exit end of the guide body, and
which is movable between an actuated position when said safety contact element is
pressed against said external workpiece, and a non-actuated position when said safety
contact element is not pressed against said external workpiece; (d) a trigger actuator that
is user-actuated; (e) a trigger position sensor; and (f) a safety contact element position
sensor; wherein said cylinder and piston act as a gas spring, under said second
predetermined conditions, to move said driver member from its ready position toward its
driven position, using said pressurized gas acting on said piston, while said driver
member's driving surface contacts a fastener and moves the fastener toward said exit end
of said guide body.
E. The '718 Patent
The '718 patent, entitled "Method for Controlling a Fastener Driving Tool Using a Gas
Spring," issued on March 5, 2013 to Richard L. Leimbach, Shane Adams, Thomas W. Clark,
Michael V. Petrocelli, and Teresa Petrocelli. The '718 patent is assigned to Senco Brands, Inc.
The '718 patent generally relates to "linear fastener driving tools, and, more particularly, [is]
directed to portable tools that drive staples, nails, or other linearly driven fasteners." ('718 patent
at 1:15-17.) The invention is "specifically disclosed as a gas spring linear fastener driving tool, in
which a cylinder filled with compressed gas is used to quickly force a piston through a driving
stroke movement, while also driving a fastener into a workpiece." (Id at 18-21; see also Am.
Compl. at im 41-43.)
The '718 patent has 21 claims. Claims 1, 10, and 16 are at issue in this Investigation. The
asserted claims read as follows (with the first instance of the agreed-upon terms in italics and the
first instance of the disputed terms highlighted in bold):
- 13 -

1. A method for controlling a fastener driving tool, said method comprising: (a) providing a
fastener driving tool that includes: (i) a housing; (ii) a system controller; (iii) a safety
contact element; (iv) a user-actuated trigger; (v) a fastener; (vi) a prime mover that moves
a lifter member which moves a driver member away from an exit end of the
mechanism; and (vii) a fastener driving mechanism that moves said driver member
toward said exit end of the mechanism, said fastener driving mechanism including: (A) a
hollow cylinder comprising a cylindrical wall with a movable piston therewithin, said
hollow cylinder containing a displacement volume created by a stroke of said piston, and
(B) a main storage chamber that is in fluidic communication with said displacement
volume of the cylinder, wherein said main storage chamber and said displacement
volume are initially charged with a pressurized gas; (b) selecting, by a user, an operating
mode of said driving cycle to be one of: a "bottom firing mode," and a "restrictive firing
mode;" wherein: (i) if said restrictive firing mode is selected, said tool will operate if said
safety contact element has been actuated before said trigger actuator has been operated;
and (ii) if said bottom firing mode is selected, said tool will operate if both: (A) said
trigger actuator has been operated, and (B) said safety contact element has been actuated,
in either sequence; (c) initiating a driving cycle by pressing said exit end against a
workpiece and actuating said trigger, thereby causing said fastener driving mechanism to
force the driver member to move toward said exit end and drive a fastener into said
workpiece; and (d) actuating said prime mover, thereby moving said lifter member and
causing said driver member to move away from said exit end toward a ready position.
10. A method for controlling a fastener driving tool, said method comprising: (a) providing a
fastener driving tool that includes: (i) a housing; (ii) a system controller; (iii) a safety
contact element; (iv) a user-actuated trigger; (v) a fastener; (vi) a prime mover that moves
a lifter member which moves a driver member away from an exit end of the mechanism;
and (vii) a fastener driving mechanism that moves said driver member toward said exit
end of the mechanism, said fastener driving mechanism including: (A) a hollow cylinder
comprising a cylindrical wall with a movable piston therewithin, said hollow cylinder
containing a displacement volume created by a stroke of said piston, and (B) a main
storage chamber that is in fluidic communication with said displacement volume of the
cylinder, wherein said main storage chamber and said displacement volume are charged
with a pressurized gas during all portions of an operating cycle; (b) selecting, by a user,
an operating mode of said driving cycle to be one of: a "bottom firing mode," and a
"restrictive firing mode;" wherein: (i) if said restrictive firing mode is selected, said tool
will operate if said safety contact element has been actuated before said trigger actuator
has been operated; and (ii) if said bottom firing mode is selected, said tool will operate if
both: (A) said trigger actuator has been operated, and (B) said safety contact element has
been actuated, (c) initiating a driving cycle by pressing said exit end against a workpiece
and actuating said trigger, thereby causing said fastener driving mechanism to force the
driver member to move toward said exit end and drive a fastener into said workpiece; and
(d) actuating said prime mover, thereby moving said lifter member and causing said
driver member to move away from said exit end toward a ready position.
- 14 -

16. A method for controlling a fastener driving tool, said method comprising: (a) providing a
fastener driving tool that includes: (i) a housing; (ii) a system controller; (iii) a safety
contact element; (iv) a user-actuated trigger; (v) a fastener; (vi) a prime mover that moves
a lifter member which moves a driver member away from an exit end of the mechanism;
and (vii) a fastener driving mechanism that moves said driver member toward said exit
end of the mechanism, said fastener driving mechanism including: (A) a hollow cylinder
comprising a cylindrical wall with a movable piston therewithin, said hollow cylinder
containing a displacement volume created by a stroke of said piston, and (B) a main
storage chamber that is in fluidic communication with said displacement volume of the
cylinder, wherein said main storage chamber and said displacement volume are charged
with a pressurized gas during all portions of an operating cycle; (b) selecting, by a user,
an operating mode of said driving cycle to be one of: a "bottom firing mode," and a
"restrictive firing mode;" wherein: (i) if said restrictive firing mode is selected, said tool
will operate if said safety contact element has been actuated before said trigger actuator
has been operated; and (ii) if said bottom firing mode is selected, said tool will operate if
both: (A) said safety contact element has been actuated, and (B) said trigger actuator has
been operated, (c) initiating a driving cycle by pressing said exit end against a workpiece
and actuating said trigger, thereby causing said fastener driving mechanism to force the
driver member to move toward said exit end and drive a fastener into said workpiece; and
(d) actuating said prime mover, thereby moving said lifter member and causing said
driver member to move away from said exit end toward a ready position.
F. The '282 Patent
The '282 patent, entitled "Fastener Driving Tool Using a Gas Spring," issued on
December 10, 2013 to Richard L. Leimbach, Thomas A. McCardle, Danny L. Bolender, Steve
Dickinson, Joseph R. Knueven, Robert L. Lance, Dan Stolz, and Michael V. Petrocelli. It is
assigned to Senco Brands, Inc. The '282 patent generally relates to "linear fastener driving tools,
and, more particularly, [is] directed to portable tools that drive staples, nails, or other linearly
driven fasteners." ('282 patent at 1:15-17.) The invention is "specifically disclosed as a gas
spring linear fastener driving tool, in which a cylinder filled with compressed gas is used to
quickly force a piston through a driving stroke movement, while also driving a fastener into a
workpiece." (Id. at 18-21; see also Am. Compl. at ¶ 55-57.)
- 15 -

The '282 patent has 5 claims. Only claim 1 is at issue in this Investigation. The asserted
claim reads as follows (with the first instance of the agreed-upon terms in italics and the first
instance of the disputed terms highlighted in bold):
1. A driving mechanism adapted for use in a fastener driving tool, said driving mechanism
comprising: (a) a hollow cylinder having a movable piston therewithin, said hollow
cylinder containing a displacement volume created by a stroke of said piston; (b) a guide
body that is configured to receive a fastener that is to be driven; (c) a driver member that
is in mechanical communication with said piston, said driver member being sized and
shaped to push said fastener from said guide body; (d) a main storage chamber that is in
fluidic communication at all times with said displacement volume of the cylinder,
wherein (i) said main storage chamber and said displacement volume are initially
charged with a pressurized gas and remain above atmospheric pressure during all
portions of an operating cycle, with no gas replenishment system on-board said tool;
and (e) a lifter member that, under first predetermined conditions, moves said driver
member from a driven position toward a ready position; wherein: said cylinder and
piston act as a gas spring, under second predetermined conditions, to move said driver
member from its ready position toward its driven position, using said pressurized gas of
both said main storage chamber and said displacement volume acting on said piston.
VI. CLAIM CONSTRUCTION
A. Construction of the Agreed-Upon Claim Terms
The parties have agreed to the following constructions:
CLAIM TERM RELEVANT CLAIMS PARTIES' AGREED CONSTRUCTION
"guide body" 8,011,547: claim 30
8,267,296: claims 1, 11
8,267,297: claims 1, 32
8,286,722: claims 1, 16
8,602,282: claim 1
one or more components that forms a
passageway that guides the driving member
through a driving stroke
"a guide body that is
substantially adjacent to
the second end of said
cylinder"
8,011,547: claim 30
8,267,297: claim 1
8,286,722: claims 1, 16
a guide body that is next to or nearly next to
the second end of said cylinder
"charged with a
pressurized gas"
8,011,547: claim 30
8,267,296: claims 1, 11
8,267,297: claim 1
8,286,722: claims 1, 16
8,387,718: claims 1, 10, 16
8,602,282: claim 1
containing gas at a pressure higher than
atmospheric pressure
- 16-

CLAIM TERM RELEVANT CLAIMS PARTIES' AGREED CONSTRUCTION
"a housing that
substantially contains
said driver actuation
device, said elongated
driver member, said
lifter member, and said
main storage chamber"
8,267,296: claims 1, 11 one or more components that encloses
nearly all of said driver actuation device,
said elongated driver member, said lifter
member, and said main storage chamber
"safety contact
element"
8,286,722: claims 1, 16
8,387,718: claims 1, 10, 16
a device that when engaged allows
operation of the fastener driving tool
"main storage
chamber"
8,011,547: claim 30
8,267,296: claims 1, 11
8,267,297: claim 1
8,602,282: claim 1
8,387,718: claims 1, 10, 16
a chamber that is distinct from the volume
of the cylinder and contains part of the
working air volume during operation
"system controller" 8,286,722: claims 1, 16
8,387,718: claims 1, 10, 16
a circuit configured to control operation
based on received input signals
"bottom firing mode" 8,387,718: claims 1, 10, 16 a mode in which the tool operates if the
trigger actuator is first operated and then the
safety contact element is actuated and also
operates if the safety contact element is first
actuated and then the trigger actuator is
operated
"restrictive firing
mode"
8,387,718: claims 1, 10, 16 a mode in which the tool operates if the
safety contact element is first actuated and
then the trigger actuator is operated
"trigger position
sensor"
8,286,722: claims 1, 16 a sensor configured to detect an operation of
the trigger actuator
"holds" 8,011,547: claim 30
8,267,296: claims 1, 11
to maintain in a specified position
"first predetermined
conditions"
8,011,547: claim 30
8,267,297: claim 1
8,286,722: claims 1, 16
8,602,282: claim 1
two or more conditions determined by a
programmed computer
"second predetermined
conditions"
8,011,547: claim 30
8,267,297: claim 1
8,286,722: claims 1, 16
8,602,282: claim 1
two or more conditions determined by a
programmed computer and that are different
than the first predetermined conditions
"initially charged with a
pressurized gas"
8,011,547: claim 30
8,286,722: claim 1
8,387,718: claim 1
8,602,282: claim 1
containing gas at a pressure higher than
atmospheric pressure before operation
- 17-

CLAIM TERM RELEVANT CLAIMS PARTIES' AGREED CONSTRUCTION
"mechanism" 8,387,718: claims 1, 10, 16 fastener driving mechanism
(JC at 1-3.) The undersigned hereby adopts the parties' proposed constructions and shall construe
the terms set forth above according to their agreed-to definitions.
B. Construction of the Disputed Claim Terms4
1. "ready position"
The parties disagree on the proper claim construction and have proposed the following
constructions:
RELEVANT CLAIMS COMPLAINANT RESPONDENT
'547 patent: claim 30 at or proximal to the uppermost at or proximal to the top-most
'296 patent: claims 1, 11 travel position position and where a downward
'297 patent: claims 1, 32 fastener driving movement is
'718 patent: claims 1, 10, 16 imminent, i.e., where
'722 patent: claims 1,
'282 patent: claim 1
16 essentially no further lifting
movement is required before
the driving movement
(JC at 3.)
Complainant asserts that the specification clearly defines this term, stating: "the piston 80
is at its 'ready' position, which is when it is at (or proximal to) its uppermost travel position."
(CMIB at 17 (citing '547 patent at 17:40-42).) Complainant contends that its proposed
construction is consistent with this definition. (Id.)
Complainant objects to Respondent's proposal, arguing that it is an improper attempt to
add additional limitations to the claims. (Id. at 16.) According to Complainant, nothing in the
claims or specification supports Respondent's proposal. (CMIB at 17 ("Nothing in the claims
require or even suggest that in the "ready position" downward fastener driving movement is
4 Because the specifications of the asserted patents are largely identical unless otherwise noted, the undersigned has
only included citations to the '547 patent for ease of reference.
- 18 -

imminent or that essentially no further lifting movement is required before the driving
movement."). Complainant also contends that Respondent's construction, if adopted, will add
ambiguity to the claims because it is unclear what Respondent means by "downward fastener
driving movement is imminent." (CMIB at 17-18 (arguing that Respondent's proposal "would
only lead to further disputes down the road.").)
Respondent asserts that its proposed construction is consistent with the definition set
forth by the applicant in the specification and during prosecution. (RMIB at 13.) According to
Respondent, the '547 patent explains that the ready position is where the piston is "at (or
proximal to) its uppermost travel position." (Id. (citing '547 patent at 17:40-42).) Respondent
also contends that during prosecution of the '547 patent, Thomas McCardle, one of the named
inventors of the Asserted Patents, submitted an affidavit discussing the prior art and the claimed
invention. (Id.) In the affidavit, Respondent claims that Mr. McCardle repeatedly defined the
ready position "as one where (i) the driving movement is imminent; (ii) the piston is capable of
being released virtually immediately; and, (iii) the piston is in its proper position to initiate
driving a fastener." (Id.)
Respondent submits that Complainant's proposal ignores the clear and unambiguous
statements made during prosecution to define the "ready position." (Id. at 14.) It also insists that
Complainant's construction fails to provide an objective boundary as to what it means to be
proximal and what it means to be proximal to the top-most position. (RMRB at 3-4.)
In response, Complainant argues that Mr. McCardle's affidavit did not set forth a
definition of "ready position." (CMRB at 4.) Complainant explains that Mr. McCardle "merely
clarified how the present invention's 'ready position' (i.e., 'at or proximal to the uppermost
travel position') is vastly different from the alleged 'ready position' in prior art Sollberger (U.S.
- 19-

Patent No. 4,215,808)." (Id.)
The parties' dispute is whether the "ready position" requires that downward fastener
driving movement to be imminent. Respondent contends that, during prosecution, Mr. McCardle
acted as his own lexicographer in defining what was meant by the term "ready position." The
undersigned disagrees. The standard for finding lexicography is exacting. GE Lighting Sols.,
LLC v. Agilight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014); Thorner v. Sony Computer
Entertainment America LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing CCS Fitness, Inc. V.
Brunswick Coip., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). To act as its own lexicographer, a
patentee must "clearly set forth a definition of the disputed claim term," and "clearly express
intent to define the term." GE Lighting, 750 F.3d at 1309. Contrary to Respondent's assertion,
Mr. McCardle's affidavit did not clearly set forth a definition of the term "ready position."
Rather, Mr. McCardle clarified how "ready position" in the '547 patent differed from "ready
position" in the Sollberger prior art reference. (See RMIB Ex. 11 at 4 (in the claimed "ready
position," the piston is at or proximal to the uppermost travel position whereas in Sollberger's
"ready position," the piston is at its bottom-most travel position.); U.S. Patent No. 4,215,808 at
5:29-32.)
As the Federal Circuit has explained, "the specification always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of
a disputed term." Phillips, 415 F.3d at 1315 (quoting Vitronics, 90 F.3d at 1582); see also
Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1325-1326. Here, the specification is
indeed dispositive as it defines the term "ready position":
0 "the piston 80 is at its "ready" position, which is when it is at (or proximal to) its
uppermost travel position as illustrated in FIGS. 2-5
- 20 -

* "the piston 458 is at its "ready" position, which is when it is at (or proximal to) its
uppermost travel position.
('547 patent at 17:40-42, 32:19-21.)5 Complainant's construction comports with this definition.
In addition, Respondent has provided no support for the second part of its proposed
construction — "where essentially no further lifting movement is required before the driving
movement." As described in the specification, the rotary motion of the lifter 100 will cause a
small upward movement to the driver. ('547 patent at 14:49-52 (explaining that further lifting
movement from the "ready position" is required to begin the driving stroke).) In other words, just
before firing, there is a slight movement from the "ready position." Thus, were Respondent's
construction adopted, it would exclude a preferred embodiment, which is "rarely, if ever,
correct." On-Line Techs., Inc. v. Bodensweewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138
(Fed. Cir. 2004).
Accordingly, for the reasons stated above, the undersigned hereby construes the term
"ready position" to mean "at or proximal to the uppermost travel position."
2. "driven position"
The parties disagree on the proper claim construction and have proposed the following
constructions:
RELEVANT CLAIMS COMPLAINANT RESPONDENT
'547 patent: claim 30
'296 patent: claims 1, 11
'297 patent: claim 1
'722 patent: claims 1, 16
'282 patent: claim 1
near or at the bottom-most
travel position
at the bottom-most travel
position
(JC at 3.)
5 Respondent does not dispute that the specification provides a definition for this term. (See Tr. at 7:12-16 ("Both
parties agree that at column 17, lines 40 to 42 of Exhibit 1, which is the '547 patent, the applicant exclusively
defined the 'ready position' to be at or proximal to the piston's uppermost travel position.")
-21-

Complainant asserts that its construction is consistent with the specification and the claim
language. (CMIB at 18-19.) Specifically, Complainant contends that the specification defines
"driven position" consistent with its proposal — i.e., "near or at the bottom-most travel position."
(Id. at 18 (citing '547 patent at 26:38-44 ("Referring again to FIG. 20, the piston 458 is depicted
near or at its bottom-most travel position . . . . This bottom position is also sometimes referred to
herein as the 'driven position' •)6 Complainant further contends that nothing in the claims
requires or suggests that the "driven position" must be exactly at the bottom-most travel position,
as Respondent has proposed. (Id. at 19 (explaining that the claims describe "driven position" in
conjunction with a "ready position" to describe movement of a "driver member" between these
two positions).)
Respondent claims that the specification of the '547 patent explicitly defines the driven
position as the bottom-most travel position. (RMIB at 14 (citing '547 patent at 12:51-62; Ex. 7,
Vallee Decl. at TT 47-48).) Respondent submits that its proposed construction comports with this
definition. (Id.) According to Respondent, if Complainant's construction were adopted, "the
claim will be impermissibly broader than the supporting disclosure which explicitly defines the
driven position as the bottom-most travel position." (Id. at 15.)
The parties' dispute centers on whether the driven position is at its bottom-most travel
position, as proposed by Respondent, or just near its bottom-most travel position, as proposed by
Complainant. The undersigned agrees with Respondent that the specification defines this term:
Referring now to FIG. 3, the piston is depicted at its bottom-most travel
position, and in this configuration, the displacement volume 76 and the main
storage chamber 74 are at their largest combined volumes, while the cylinder
6 Complainant acknowledges that there may be an exemplary embodiment that describes "driven position" as "at its
bottom-most travel position," as proposed by Respondent. (CMIB at 19.) Complainant, however, asserts that "there
is no basis to limit the claims to this embodiment, especially considering that another embodiment explains that the
'driven position' is not so absolute," (Id.)
- 22 -

venting chamber 94 is at its minimum volume. This bottom position is also
sometimes referred to herein as the "driven position." In FIG. 3, the movable
piston stop 82 is now in contact with the stationary piston stop 84, which is why
the cylinder venting chamber 94 is at its minimum (or zero) volume. In FIG. 3,
the driver 90 is also at its bottom-most travel position, and its lower-most tip
can be seen extending out the exit port at the bottom of the guide body 36.
('547 patent at 12:51-62; see also id. at 26:38-49, Fig. 3 (emphasis added).)
Complainant also claims that another portion of the specification defines this term. In
support, Complainant cites to the following excerpt from the specification:
Referring again to FIG. 20, the piston 458 is depicted near or at its bottom-
most travel position, and in this configuration, the displacement volume 457 and
the main storage chamber 454 are at their largest combined volumes, while the
cylinder venting chamber 492 is at its minimum volume. This bottom position is
also sometimes referred to herein as the "driven position." In FIG. 20,
movable piston 458 is now in contact with the stationary piston stop 463, which is
why the cylinder venting chamber 492 is at its minimum (zero) volume. In FIG.
20, the driver 490 is also at its bottom-most travel position, and its lower-most tip
can be seen extending out the exit port at the bottom of a lower guide body 425.
('547 patent at 26:38-49 (emphasis added).) The undersigned finds that the natural reading of the
above passage is consistent with Respondent's proposal — not Complainant's. In fact, nowhere
does the specification describe the driven position as being near the bottom. Rather, even with
reference to FIG. 20, the specification explains that only the bottom-most travel position is the
"driven position." (Id at 7:39-43, 8:30-34, 12:51-62, 26:38-49, Figs. 3, 20.)
Accordingly, the undersigned hereby construes "driven position" to mean "at the bottom-
most travel position."
- 23 -

3. 44a main storage chamber that substantially surrounds at least a
portion of said cylinder"
The parties disagree on the proper claim construction and have proposed the following
constructions:
RELEVANT CLAIMS COMPLAINANT RESPONDENT
'547 patent: claim 30
'297 patent: claim 1
a main storage chamber that
significantly surrounds at least
a portion of the cylinder
a main storage chamber that is
nearly all around the surface of
the cylinder
(JC at 3.)
Complainant explains that "Nile fundamental dispute here is whether the main storage
chamber must extend 'nearly all around the surface of the cylinder' (as Respondent proposes) or
whether the main storage chamber merely needs to surround only 'a portion of the cylinder' (as
Complainant proposes)." (CMIB at 20.) According to Complainant, "Nile claim language here is
plain and ambiguous." (Id.) Complainant asserts that its construction simply seeks to "clarify one
word of the disputed terms: 'substantially.' (Id.) Complainant explains "[s]ubstantially' has a
commonly understood meaning in patent law, and is generally used as a term of approximation
(i.e., 'significantly')." (Id. (citing Fisher-Price, Inc. V. Evenflo Co., No. 05-CV-280S, 2006 WL
1740263, at *6-8 (W.D.N.Y. June 26, 2006).)
Complainant argues that, "kin contrast, Respondent's proposed construction[] run[s]
afoul of the clear language by attempting to read 'at least a portion of out of the claims." (Id. at
21.) According to Complainant, Respondent suggests that "substantially surrounds" and
"substantially surrounds at least a portion of said cylinder" "both mean the same thing: 'nearly
all around the surface of the cylinder." (Id.) Complainant asserts that "Respondent's proposed
construction cannot be correct, otherwise 'at least a portion of would be unnecessary and
superfluous as the patentee could have easily used the term 'substantially surrounds' alone." (Id.)
- 24 -

Respondent contends that its interpretation is consistent with the specification. (RMIB at
15.) In support, Respondent points to Figure 3 of the '547 patent, which shows that "the main
storage chamber 74 is nearly all around the surface of the cylinder 71." (Id. at 15-16.)
Respondent argues that Complainant's construction is "contradicted by the specification"
and "would inappropriately broaden this term to cover a main storage chamber that is simply
nearby the cylinder" such as the one depicted in FIG. 34. (Id. at 16.) Respondent also argues that
"[i]f Complainant's proposed construction [was] adopted, claim 30 of the '547 patent would be
indefinite because nothing in the intrinsic evidence provides a standard for measuring when the
main storage chamber 'significantly' surrounds the cylinder, and when it does not." (RMRB at
7.)
The undersigned finds that Respondent's proposal cannot be the correct construction as it
reads out the phrase "at least a portion" from the claim term. "In the absence of any evidence to
the contrary, we must presume that the use of [] different terms in the claims connotes different
meanings." CAE Screenplates Inc. V. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317
(Fed. Cir. 2000). Respondent does not cite to anything in the 'intrinsic evidence that supports
ignoring the phrase "at least a portion." Instead, Respondent relies on Figure 34 and argues that it
demonstrates that "at least a portion" is inconsistent with the specification. Figure 34 depicts a
configuration in which the "[main] storage chamber 774 does not substantially surround the
working cylinder 771, and instead is located off to one side of this working cylinder." ('547
patent at 26:12-14.) Thus, Figure 34 is an example of when the main storage chamber does not
surround any portion of said cylinder — and not an example of it surrounding a portion of said
cylinder. As such, Figure 34 is not inconsistent with the "at least a portion" language.
- 25 -

Respondent also argues that its proposal must be adopted to avoid a finding that the claim
term is indefinite. (RMRB at 7.) Respondent asserts that the "word 'substantially' is a term of
degree" and without "some standard of measuring that degree," claim 30 is indefinite. (Id. at 5.)
According to Respondent, "nothing in the intrinsic evidence provides a standard for measuring
when the main storage chamber 'significantly' surrounds the cylinder, and when it does not." (Id.
at 7.) Respondent argues that the only guidance can be found in Figure 3 and that "any
construction of substantially surrounding that's not co-extensive with figure 3 of the asserted
patents would render claim 30 of the '547 indefinite." (Tr. at 35:10-15.) However, the
undersigned finds that this concern does not specifically relate to the "at least a portion"
language. Nowhere does Respondent argue that the word "portion" is unclear such that a person
of ordinary skill in the art would not be able to understand what it meant to substantially
surround "a portion of said cylinder" rather than the cylinder as a whole. The same issue would
arise if the claim term to be construed was "a main storage chamber that substantially surrounds
said cylinder." Thus, this argument likewise does not provide a reason for why the phrase "at
least a portion" should be ignored.
Nor can the undersigned find that the word "substantially" renders the claim term
indefinite. While it is true that the specification provides little guidance as to the meaning of
"substantially", Respondent's own expert submits that a person of ordinary skill in the art would
understand the claim if the words "nearly all around the surface of the cylinder" were substituted
for "substantially." (RMIB Ex. 7 at IT 52 ("Vallee Decl.").) Because all parties agree7 that
7 During the Markman hearing, Complainant indicated that the precise word choice is irrelevant. (Tr. at 26:9-11 ("It
is a main storage chamber that significantly surrounds — substantially, significantly, nearly all, I think those words
are not at issue."); see also id at 36:6-9 ("Neither party has had any trouble, contrary to what Respondents just
talked about, defining the term substantially surrounds. They call it nearly all. We call it significant. They're similar.
Okay?")
- 26 -

"substantially" is understandable when "nearly all" is used, the undersigned finds that it is
appropriate to use this phrase in the definition.
Accordingly, the undersigned hereby construes the term "a main storage chamber that
substantially surrounds at least a portion of said cylinder" to mean "a main storage chamber
that is nearly all around at least a portion of the cylinder."
4. "protruding toward said exit end of the guide body"8
The parties disagree on the proper claim construction and have proposed the following
constructions:
RELEVANT CLAIMS COMPLAINANT RESPONDENT
'547 patent: claim 30
'296 patent: claim 11
'297 patent: claim 1
extending out of said exit end
of the guide body
the driver member extends from
the cylinder and has a lower
end located within the guide
body
(JC at 3.)
Complainant asserts that "protruding" has a commonly understood meaning, which is "to
cause to stick out: PROJECT" or "to jut out from the surroundings." (CMIB at 14 (citing Ex. A
(Webster's New Explorer College Dictionary, New Edition) at 776).) Complainant also asserts
that the claims and specification support this plain and ordinary meaning. Complainant notes, for
example, that the specification discloses two preferred embodiments and that each has a driver
member that "extends out of said exit end of the guide body" while in their driven positions.
Complainant further contends that the relevant claims describe that, in the "driven position," the
driver member "protrud[es] toward said exit end of the guide body," whereas in the "ready
position," the driver member is "withdrawn into said guide body." (Id at 15.) Thus, according to
Because the specifications of the asserted patents are largely identical, the undersigned has only included citations
to the '547 patent for ease of reference.
-27 -

Complainant, its construction captures the distinction between these two claimed positions. (Id.
at 14.)
Complainant criticizes Respondent's proposed construction for reading out the preferred
embodiments. Complainant argues that "if the driver member does not extend out of the guide
member, the nail or fastener being driven can never be driven all the way into the workpiece,
defeating the very point of the claimed invention." (Id. at 15.) In addition, Complainant contends
that Respondent's arguments focus on the meaning of "toward," while ignoring the plain
meaning of "protruding." (CMRB at 2.) Complainant notes that "nothing in Respondent's
dictionary definitions of 'toward' prohibits the lower end of the driver member from extending
out of the exit end of the guide body." (Id. (emphasis in original).)
Respondent explains that "Wife dispute here concerns the straightforward meaning of the
words 'protruding toward.' (RMIB at 25.) It contends that the word "toward" is an ordinary,
non-technical word that means "in the direction of," "along a course leading to," or "at a point in
the direction of." (Id. (citing RMIB Ex. 13, WEBSTER'S COLLEGIATE DICTIONARY at 1322 (11th
ed. 2007)). Respondent therefore asserts that "a skilled artisan would understand this term to
mean "that the driver member must extend in the direction of—but not reach or extend out
beyond—the exit end of the guide body. That is, the driver member's lower end must still be
within the guide body." (Id. at 25-26.)
Respondent argues that Complainant's construction does nothing more than replace the
words "protruding toward" with "extending out of" and is a "forbidden redrafting of the claims."
(Id. at 26.) According to Respondent, "[t]his position appears to arise from specification
embodiments where the driver member does indeed extend out beyond the exit end of the guide
body. But the written description of those embodiments does not say that the driver member is
-28-

'protruding toward' the exit end." (Id. (internal citations omitted).) Respondent insists "the claim
language is clear and the words 'protruding toward' were never redefined to mean 'extending out
of.' (Id.)
The crux of the parties' dispute is whether "protruding toward" means that a portion of
the driver member "extend[s] out of said exit end of the guide body" (as Complainant proposes)
or whether the driver member, including its lower end, remains entirely "within the guide body"
(as Respondent proposes). When construing claim terms, "[w]e generally give words of a claim
their ordinary meaning in the context of the claim and the whole patent document." World Class
Tech. Corp. v. Ormco Corp., 769 F.3d 1120, 1123 (Fed. Cir. 2014); see also Phillips, 415 F.3d at
131247. This meaning controls unless the intrinsic evidence clearly indicates that the patentee
meant to assign the term a different meaning. See Bell Atl. Network Servs., 262 F.3d at 1268. In
the instant case, the intrinsic evidence does not justify departing from the plain and ordinary
meaning of the word "protruding," which is "to cause to stick out" or "to jut out from the
surroundings." (CMIB Ex. A at 776.) Respondent does not disagree with this definition; rather,
Respondent focuses — incorrectly so — on the word "toward" as opposed to "protruding".
The specification also supports this interpretation and thus, Complainant's construction.
All of the exemplary embodiments describe a driver member that is extending out of the exit end
of the guide body while in the driven position.9 (See '547 patent at 12:59-62 ("In FIG. 3, the
driver 90 is also at its bottom-most travel position, and its lowermost tip can be seen extending
out the exit port at the bottom of the guide body 36"), 26:46-49 (In FIG. 20, the driver 490 is
also at its bottom-most travel position, and its lower-most tip can be seen extending out the exit
port at the bottom of a lower guide body 425") (emphasis added).) Respondent's proposal, on
9 Respondent concedes that the embodiments show the driver member extending out of the exit end of the guide
body. (RMRB at 11.)
- 29 -

the other hand, reads out these embodiments.1° "[A] claim interpretation that excludes a
preferred embodiment from the scope of the claim is rarely, if ever, correct." Accent Packaging,
707 F.3d at 1326 (citation omitted).
Accordingly, the undersigned hereby construes the term "protruding toward said exit end
of the guide body" to mean "extending out of said exit end of the guide body."
5. " maximum pneumatic force of said pressurized gas"
The parties disagree on the proper claim construction and have proposed the following
constructions:
RELEVANT CLAIMS COMPLAINANT RESPONDENT
'547 patent: claim 30 force of said pressurized gas
just prior to firing
force when piston is at top most
position
(JC at 4.)
In Complainant's view, the parties' dispute "centers on whether in the 'stop position' the
piston must be at its top most position (as Respondent proposes) or positioned just prior to firing
a fastener into a workpiece (as Complainant proposes)." (CMIB at 28.) According to
Complainant, "claim 30 of the '547 patent explains that when the 'movable piston is under a
maximum pneumatic force of said pressurized gas,' the claimed device is in a position just prior
to firing a fastener into a workpiece." (Id) As discussed in its argument with respect to "ready
position," Complainant asserts that the position just prior to firing does not have to be the "top
most position," and thus its construction — which does not include this limitation — should prevail
over Respondent's. (Id. at 29.)
1° The undersigned further notes that Respondent's reliance on Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d
1371 (Fed. Cir. 2004), is misplaced. Complainant is not asking the undersigned to redraft the claim to preserve its
validity or to make it operable. Unlike in Chef America, where the only possible interpretation led to a nonsensical
result, the claim term at issue here can be interpreted as written without yielding a nonsensical result.
- 30 -

Respondent argues that "[t]he common meaning of the word 'maximum' is 'the greatest
quantity or value attainable or attained." (RMIB at 29 (citing Ex. 13 at 767).) Respondent
explains that "[i]n order for the pneumatic force of the air above the piston to be at its maximum
(i.e., greatest quantity of force), the piston must be fully raised. . . . And, in order for the piston to
be fully raised, it must be at its top-most position." (Id. (citing Vallee Decl. at 80-81).)
Respondent asserts that Complainant's proposed construction "allows the pressure above
the piston just before firing to be less than the maximum pressure that is ultimately exerted on
the piston when driving the fastener." (Id. at 30.) Respondent also asserts that Complainant's
definition would give no meaning to the word "maximum." (Id.) Respondent notes that
"Complainant improperly equates the term 'maximum pneumatic force of said pressurized gas'
with the term 'ready position.' These terms are not the same." (RMRB at 14.) Respondent argues
that "[t]here are numerous independent claims in the Asserted Patents . . . that include the term
'ready position' without requiring the piston be under maximum force. . . For these claims, the
piston can be held at either the top-most position or proximal the top-most position." (Id.)
Respondent argues that the applicant decided only to claim the situation "where the piston is
under a maximum pneumatic force." (Id.)
There is a "heavy presumption that a claim term carries its ordinary and customary
meaning." CCS Fitness, 288 F.3d at 1359. The evidence shows that the definition of "maximum"
is "the greatest quantity or value attainable or attained." (RMIB Ex. 13 at 767.) In the context of
the invention, the maximum would be achieved only when the piston is in its top-most position.
(Vallee Decl. at 80-83.) Thus, the presumption weighs in favor of Respondent's proposed
definition.
-31 -

Complainant asserts that the specification rebuts this presumption and indicates that
"maximum" must mean something else. The specification provides that the driver and piston
can be "near" the top-most position when the mechanism is ready for firing. ('547 patent at 7:50-
55.) It further explains that the piston moves upward from the ready position when the device is
fired. (Id. at 14:49-52 ("It should be noted that the rotary motion of the lifter 100 will cause a
small upward movement of the driver 90 [and piston 80] so that the latch 120 can easily
disengage from the 'last' tooth 126 of the driver 90.'") According to Complainant, this shows
that pressure need not be at its maximum when the piston is in the ready position. These portions
of the specification do not, however, specifically provide guidance as to the meaning of the word
"maximum," but instead relate to the ready position. It is possible for the piston to be in its ready
position, but the "maximum pneumatic force" to have not been reached. The claim term
"maximum pneumatic force" is in addition to "ready position" and is presumed to provide an
additional limitation. CAE Screenphites, 224 F.3d at 1317. Thus, for it to have meaning, the term
"maximum" cannot be coextensive with "ready position."
Likewise, Complainant's fear that "Respondent's proposed construction would read the
preferred embodiments out of the claims" is unfounded. (CMRB at 13.) There are some claims in
the Asserted Patents that only claim that the piston be at its ready position. ('547 patent at claims
1, 12, 16, 17, 24, 28, 33.) These claims would cover an embodiment in which the pressurized gas
was not at its "maximum pneumatic force." Other claims — such as claim 30 — require both that
the piston be at its ready position and that there be "maximum pneumatic force of said
pressurized gas."11 Claim 30, therefore, recites only one of the multiple embodiments described
in the specification.
Complainant also attempts to argue against this plain meaning by asserting that "maximum" does not mean
"absolute maximum." (CMRB at 13 (noting that "the claim states 'a maximum pneumatic force," not the absolute
- 32 -

Accordingly, for the reasons stated above and for the previous term, the undersigned
hereby construes the term "maximum pneumatic force of said pressurized gas" to mean 'force
when piston is at top most position."
6. "lifter member"
The disputed term "lifter member" appears in claim 30 of the '547 patent, claims 1 and
30 of the '297 patent, claims 1, 10, and 16 of the '718 patent, and claim 1 of the '282 patent. The
disputed term "lifter member [which/that] exhibits a contact surface" appears in claims 1 and 11
of the '296 patent. Because the parties' arguments for the term "lifter member [which/that]
exhibits a contact surface" inform the construction of the term "lifter member," the undersigned
will consider those arguments here. The parties disagree on the proper claim construction for
these terms and have proposed the following constructions:
RELEVANT CLAIMS COMPLAINANT RESPONDENT
'547 patent: claim 30
'297 patent: claim 1
'718 patent: claims 1,
'282 patent: claim 1
10, 16
member that assists in lifting the
driver back to its top-most
position for a new firing or
driving stroke
Means-plus-function claim term
subject to 35 U.S.C. § 112, I 6.
Corresponding Structure:
Rotary-to-linear lifter 100, 400,
460, 465, 470, or 480.
Corresponding Functions:
'547 patent, claim 30; '297
patent, claims 1, 30; '282
patent, claim 1: Moves said
driver member from its driven
position toward its ready
position under first
predetermined conditions.
'547 patent, claim 30: Holds
said movable piston in a "stop"
position that is located proximal
to said first end of said hollow
maximum force")) Complainant does not, however, provide support for the position that a person of ordinary skill
in the art would understand that "maximum" does not mean "maximum" unless preceded by "absolute."
- 33 -

RELEVANT CLAIMS COMPLAINANT RESPONDENT
cylinder, while said movable
piston is under a maximum
pneumatic force of said
pressurized gas, when the driver
member is at its ready position.
'718 patent, claims 1, 10, 16:
Moves a drive member away
from an exit end of the
mechanism.
(JC at 5.)
Respondent argues that "lifter member" is drafted in a means-plus-function format
because it is a "generic" term that does not connote sufficiently definite structure and the related
claim limitations do not provide any structure for the term. (RMIB at 19-20.) Respondent asserts
that a person of ordinary skill in the art would not assign any particular structure to "lifter
member," and instead would understand the term to refer to all structures that can perform the
claimed functions. (Id. at 21-22 (citing RMIB Ex. 7 ("Vallee Decl.") at ¶J 55-56).)
Complainant's expert provides examples of "a wide range of dissimilar structures, with little or
no overlapping features, any of which could perform" the claimed functions as evidence that the
term "refers only to a general category of whatever may perform specified functions." (Vallee
Decl. at in 58-61).)
Complainant notes that it is presumed that "lifter member" is not drafted in means-plus-
function format because the word "means" does not appear in the claim. (CMIB at 38 (citing
Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014)) Complainant argues
that the presumption is not overcome here because the intrinsic record provides structure for the
term. (Id. at 38-39.) Complainant explains that the claim limitations that require the lifter
member to "moven a driver member away from an exit end of the mechanism" and "hold[] said
movable piston in a 'stop' position" are structural limitations because they describe the position
- 34 -

and configuration of the "lifter member" relative to the other elements of the claim. (Id. at 39
(citing Finjan, Inc. v. Proofpoint, Inc., No. 13-cv-05808-HSG, 2015 WL 7770208, at *11 (N.D.
Cal. Dec. 3, 2015)).) Complainant further explains that the structure of "lifter member" is
described through six "exemplary embodiments," and the specification describes the term as "a
specific structure that is designed to contact the driver (at its teeth, for example) so as to either
hold the drive in place, or to 'lift' the driver back to its top-most position for a new firing or
driving stroke." (Id. at 39-40 (citing '574 patent at 11:14-16 (lifter 100), 23:55-58 (lifter 400),
33:29-34:25 (lifters 460, 465, 470, 480)).)
If a claim does not use the word "means," there is a rebuttable presumption that § 112, It
6 does not apply. Williamson v. Citrix Online, 792 F.3d 1339, 1348-49 (Fed. Cir. 2015) (en bane
in relevant part to "abandon characterizing as 'strong' the presumption that a limitation lacking
the word 'means' is not subject to § 112, para. 6"). The claim is still subject to § 112, I 6,
however, if "the claim term fails to 'recite[ ] sufficiently definite structure' or else recites
'function without reciting sufficient structure for performing that function.' Id. (quoting Watts
v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
The undersigned finds that "lifter member" is not subject to § 112, if 6. Although "lifter
member"12 does not have a plain and ordinary meaning, the intrinsic record provides that a
person of ordinary skill in the art would understand the term to recite a sufficiently definite
12 The term "member" may or may not be a nonce word, depending on the context of the claim. Section 2181 of the
USPTO's Manual of Patent Examining Procedure ("MPEP"), which was cited by the en banc court in Williamson,
792 F.3d at 1350, provides examples of claim terms using the word "member" that were construed as a means-plus-
function limitation, as well as counter examples where "member" was construed as a structural limitation. Compare
MPEP § 2181(0(A) ("The following is a list of non-structural generic placeholders that may invoke [§ 112, ¶ 6]: . . .
'member for' . . . .") and id. § 2181(I)(C) ("[A] generic placeholder (e.g., . . . 'member') coupled with a function
may invoke [§ 112, ¶ 6] when it is preceded by a non-structural modifier that does not have any generally
understood structural meaning in the art (e.g., . . . 'movable link member').") with id. § 2181(I)(A) ("The following
are examples of structural terms that have been found not to invoke [§ 112, It 6]: . • . 'reciprocating member,' . . .
'eyeglass hanger member.").
- 35 -

structure. Respondent's expert declared that, based on the intrinsic record, the lifter member is a
rotating element where contact is made at the face surface:
Based on the claims, drawings, and the specification passage above, skilled
artisans would have understood that "lifter member" means a rotating element
where contact is made at the face surface and not at the outer perimeter. The outer
shape would have been "understood" as unimportant, because no lifting contact is
made at the outer perimeter. Furthermore, because the outer shape is unimportant
to the function recited, skilled artisans would have understood that the rotating
element (that carries the contact surface on its face surface) can take the form of a
gear (i.e., a rotatable body with a round outer shape) or a cam (i.e., any rotatable
body with an eccentric outer shape).
(Vallee Decl. at If 91.) Similarly, Complainant's expert declared that the specification provides
sufficient structure for the lifter member: "the specification explains to a person of ordinary skill
in the art that the claimed 'lifter member' has structural characteristics — it is designed to contact
the driver (at its teeth, for example) so as to either hold the driver in place, or to 'lift' the driver
back to its top-most position for a new firing or driving stroke." (CMRB Ex. B. ("Pratt Decl.") at
4ft 43.)
Although the term "lifter member" is not subject to § 112, ¶ 6, it is still a disputed term in
need of construction. Complainant proposed that the term "lifter member" be construed as
"member that assists in lifting the driver back to its top-most position for a new firing or driving
stroke," and Respondent did not propose a construction beyond the means-plus-function
structure. (JC at 5.) The undersigned rejects Complainant's proposed construction for "lifter
member," as it does not provide any structure for the term. Claim 30 of the '547 patent, for
example, requires that the lifter member "moves said driver member from its driven position
toward its ready position." ('547 patent at 51:42-44.) As set forth above, this limitation does not
provide a person of ordinary skill in the art with the structure of the lifter member for performing
the moving function. Complainant's proposed construction similarly requires that the lifter
- 36 -

member "assists in lifting the driver to its top-most position," but does not provide the structure
for performing the "assists in lifting" function.
According to Respondent, a person of ordinary skill in the art would look to the intrinsic
record for insight into the term because it does not have a plain and ordinary meaning. (RMIB at
32 (citing Vallee Decl. at IT 87).) Respondent points out that the claims distinguish the "contact
surface" of the lifter member from the outer perimeter, and every embodiment in the
specification describes pins extending from the face surface which makes contact with the teeth
of the driver. (Id. at 32-33.) Respondent's expert, Dr. Vallee, explains that, in view of the
specification, "skilled artisans would have understood that the 'lifter member' is a rotating
element where contact is made at the face surface and not at the outer perimeter." (Id. at 33
(citing Vallee Decl. at if 91).) Dr. Vallee further explains that, because the specification describes
the shape of the outer perimeter as "not important," such a person would have understood that it
can take the form of a gear or a cam. (Id at 33-34 (citing Vallee Decl. at 11 91).) Respondent
clarifies that the "gear or cam" in its proposed construction "include[s] almost any imaginable
rotating body of the type claimed in the Asserted Patents." (RMRB at 16 (citing RMRB Ex. 18 at
35).)
Complainant argues that a lifter member can be any "body" rather than a "gear or a cam"
as there is no basis in the intrinsic record to limit the term in this manner. (CMIB at 33-34.)
Complainant also argues that the lifter member should be allowed to make "continuous or
discontinuous contact" with the driver member, rather than "make contact at its face surface."
(Id. at 34-35.) In support of its construction, Complainant asserts that the claim language is broad
enough to include continuous contact and discontinuous contact "(where the lifter member is
only sometimes in contact with the driver member)." (Id. at 34.) Complainant rebuts
- 37-

Respondent's construction by asserting that "face surface" is not used in the claims or
specification, and that the claims do not limit the contact to any particular surface of the lifter
member. (Id. at 34-35.)
The parties do not argue that the term "lifter member" in isolation, or in the context of the
claims, is sufficiently understood by a person of ordinary skill in the art. "[W]e [then] turn to the
remaining intrinsic evidence, including the written description, to aid in our construction of that
term." Power Integrations, Inc. v. Fairchild Semiconductor Intl, Inc., 711 F.3d 1348, 1361 (Fed.
Cir. 2013) (citation omitted). "The construction that stays true to the claim language and most
naturally aligns with the patent's description of the invention will be, in the end, the correct
construction." Id. (citation omitted).
First, the specification makes clear that the "lifter member" is a rotating element. The
specification defines "lifter member" as a "rotary-to-lifter" component. (See '547 patent at
11:13-16 ("[T]he rotary-to-lifter 100 is also sometimes referred to herein as a 'lifter member,' or
simply as a `lifter.'"), 23:55-58 (referring to "rotary-to-lifter 400").) The specification further
explains that a "feature of the present invention is that a variable'stroke is possible by causing the
rotary-to-linear lifter 400 to be rotated a multiple number of times to create a shorter or longer
firing (driving) stroke, if desired." (Id at 32:37-46.) See Verizon Servs. Corp. v. Vonage
Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) ("When a patent thus describes the
features of the 'present invention' as a whole, this description limits the scope of the
invention."). Accordingly, the undersigned rejects Complainant's proposed construction as it
does not include the "rotatable" requirement. The undersigned also rejects Respondent's
proposal that a "lifter member" be a "gear or cam." Respondent posits that "gear or cam"
"include[s] almost any imaginable rotating body of the type claimed in the Asserted Patents."
- 38 -

406
416
400
116
404
408 410
Fig, 29
Fig. 12
108 106
110 104
472
474
100 464
Fig. 31
467
(RMRB at 16 (citing RMRB Ex. 18 at IT 35); see also '547 patent at 24:35-37 ("the lifter's exact
outer shape is not important").) Requiring the lifter member to be rotatable, therefore, is in line
with Respondent's proposed construction without introducing the "gear" or "cam" terms into the
definition.
Second, the specification consistently describes the lifter member as having pins (singular
or plural) that extend from its face surface to lift the driver by rotating through the teeth of the
driver. Every embodiment is described as a rotatable component with pins on the face surface
(illustrated in yellow), not the outer perimeter (illustrated in green), that contact the teeth of the
driver to lift the driver.
(Vallee Decl. at I 89 (annotating the patent figures in color, as shown above); see '547 patent at
11:40-12:10 (Fig. 12, lifter 100), 24:25-25:13 (Fig. 29, lifter 400), 33:29-44 (Fig. 30, lifter 460),
33:45-59 (Fig. 31, lifter 465), 33:60-34:8 (Fig. 32, lifter 470), 34:9-25 (Fig. 33, lifter 480).)
"[W]hen a patent 'repeatedly and consistently' characterizes a claim term in a particular way, it
is proper to construe the claim term in accordance with that characterization." GPNE Coip. V.
Apple Inc., 830 F.3d 1365, 1370 (Fed. Cir. 2016). The specification does not state that the lifter
member or the pins have to make continuous contact with the driver member in order to lift the
- 39 -

vamisiam;
57 60,a,
7L
,-94 .3".9 Timpq0#'4‘1,41r—s "la
rr,
f
It
'
vAA
1
62
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‘I
66
driver. Nor does Respondent argue as much. The undersigned therefore finds it unnecessary to
define the lifter member as making "continuous or discontinuous contact" with the driver
member, as Complainant proposes.
Third, the specification describes the prior art in a manner that reinforces that the pins
extend from the face surface of the lifting member. The specification distinguishes two
embodiments, described in the Sollberger and Pedicini references, at least in part on the basis
that those references teach a "rack and pinion" gear that moves the piston back to its driving
position. ('547 patent at 1:36-39, 1:48-51.) These gears have the "pins" on the outer perimeter of
the lifting member, as opposed to the face surface. (See Vallee Decl. at if 92 (excerpting and
illustrating figures from the references, reproduced below, to show the lifting pins in green,
extending from the outer perimeter).)
Sollberger
rack and pinion gears
Pedicini '631
rack and pinion gears
In comparison, the inventors do not distinguish their lifting member from a third lifting member
that existed at the time of the invention, which is described in the Kondo reference. This third
lifting member has lifting pins extending from its face surface. (See Vallee Dee!. at If 93
- 40 -

Kondo
crank mechanism
22 20 15a 10b
21 20a
—10
	7"
IL
12a
18 -
16
23
23a
11c -
15
20b
10c -
10a 6k
Ilb
3
loa
10b
7a
7
- - 7b
(excerpting and illustrating a figure from the reference, reproduced below, to show the lifting
pins in yellow and outer perimeter in green).)
The inventors' comments therefore distinguishing lifter members in the prior art that do not have
lifting pins on the face surface, but do not distinguish lifter members in the prior art with lifting
pins on the face surface. This is further support that a person of ordinary skill in the art would
understand the lifter member of the invention to have lifting pins on its face surface.
Complainant argues that the scope of "lifter member" should not be restricted because the
specification contains the following non-limiting statement:
Any examples described or• illustrated herein are intended as non-limiting
examples, and many modifications or variations of the examples, or of the
preferred embodiment(s), are possible in light of the above teachings, without
departing from the spirit and scope of the present invention.
('547 patent at 39:57-62.) This boilerplate language, however, does not provide a person of
ordinary skill in the art with an understanding of "lifter member" that expands the term beyond
what the specification teaches such a person. The specification teaches that the lifter member can
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have many different shapes and sizes, but it is consistent in its description that the lifter member
is always rotatable with lifting pins on the face surface. A rotatable lifter member with lifting
pins on its face surface "is not just the preferred embodiment of the invention; it is the only one
disclosed." Regents of University of Minnesota v. AGA Medical Corp., 717 F.3d 929, 937 (Fed.
Cir. 2013) (citation omitted).
Accordingly, the undersigned hereby construes the term "lifter member" as a "rotatable
component having lifting pins on its face smface."
7. "lifter member [which/that] exhibits a contact surface"
The parties disagree on the proper claim construction for the term and have proposed the
following constructions:
RELEVANT CLAIMS COMPLAINANT RESPONDENT
'296 patent: claims 1, 11 a body configured to make
continuous or discontinuous
contact with the driver member
a gear or cam configured to
make contact at its face surface
with the driver member
(JC at 4.)
The undersigned construed the term "lifter member" as .a "rotatable component having
lifting pins on its face smface," taking into account the arguments made by the parties for the
construction of the term "lifter member [which/that] exhibits a contact surface." The parties do
not make any arguments regarding the last portion of the term ("[which/that] exhibits a contact
surface") that were not addressed in the construction of the term "lifter member." The last
portion of the term therefore does not need further construction. Accordingly, the undersigned
hereby construes the term "lifter member [which/that] exhibits a contact surface" as a "rotatable
component having lifting pins on its face smface [which/thatl exhibits a contact surface."
- 42 -

8. "driver member"
The parties disagree on the proper claim construction and have proposed the following
constructions13:
RELEVANT CLAIMS COMPLAINANT RESPONDENT
'718 patent: claims 1, 10, 16 a member that drives a fastener Means-plus-function claim term
into said workpiece subject to 35 U.S.C. § 112, 1 6.
Corresponding Structure:
Driver 90, 490, or 790.
Corresponding Function:
Move toward the exit end of the
mechanism and drive a fastener
into a workpiece.
Move away from said exit end
toward a ready position.
(JC at 4.)
Respondent argues that "driver member" is a means-plus-function term for many of the
same reasons that it argues "lifter member" is a means-plus-function term. As with "lifter
member," Respondent asserts that a person of ordinary skill in the art would not assign any
particular structure to "driver member," and instead would understand the term to refer to all
structures that can perform the claimed functions. (RMIB at 46-47 (citing Vallee Decl. at in 113-
117)) Respondent's expert, Dr. Vallee, provides examples of various structures that can carry
out the driving function, and explains that these structures will vary based on the type of fastener
being driven. (Vallee Decl. at ¶J 115-117 ("The structure for driving a staple tends to be wide
and thin, whereas structures for driving nails are typically round but can vary widely in diameter
based on the size of the nail.")) Dr. Vallee also explains that some of these structures only
13 According to Respondent, the term "driver member" appears in every asserted claim, but the other claims include
at least some recitation of structure to avoid § 112, ¶ 6. (RMIB at 45.)
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perform the driving function, while other structures may also include structure for the lifting
function. (Id. at II 116.)
Complainant also repeats many of the arguments it made in relation to the term "lifter
member" to argue that "driver member" is not a means-plus-function term. It asserts that the
claim limitations that require the driver member to "move[] towards and away from an exit end"
are structural limitations because they describe the position and configuration of the "driver
member" relative to the other elements of the claim. (CMIB at 36.) It further asserts that the
structure of the "driver member" is described through "exemplary embodiments" in the
specification that make clear that the term "is a specific structure — it is elongated with multiple
teeth and designed to drive a fastener into a workpiece." (Id. at 36-37.)
For the reasons that parallel the analysis in the "lifter member" section, the undersigned
finds that "driver member" is not subject to § 112, ¶ 6 because the intrinsic record provides a
person of ordinary skill in the art with a sufficiently definite structure for the term. Specifically,
the specification states that the driver member of the "present invention" "is attached to the
piston, and has protrusions along its edges that are used to contact the lifter member, which lifts
the driver during a return stroke." ('547 patent at 1:27-19; cf. 8:49-50 ("The driver 90 is also
sometimes referred to herein as a 'driver member' . . . .").) In the "Summary of the Invention"
section, the specification further states that an "advantage of the present invention" is that a
movable latch "engage[s] the teeth of the driver element as a safety interlock" and "disengage[s]
from multiple teeth of the driver element during a driving stroke." (Id. at 2:33-41.) The
specification goes on to describe the driver as "rather elongated" with multiple teeth, but "the
precise positions for the teeth 92 could be different from those illustrated for the driver 90
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without departing from the principles of the present invention." (Id. at 8:52-54.) See Verizon
Servs., 503 F.3d at 1308.
Although the term "driver member" is not subject to § 112, If 6, it is still a disputed term
in need of construction. Complainant proposes that "driver member" be construed as "a member
that drives a fastener into said workpiece." (JC at 5.) Respondent does not propose a construction
for the term.
The undersigned rejects Complainant's proposed construction—"a member that drives a
fastener into said workpiece" as it does not provide any structure to remove "driver member"
from "a general category of whatever may perform [the] specified functions." Robert Bosch, 769
F.3d at 1099. Based on the portions of the specification cited above, the undersigned instead
agrees with Complainant's expert that "the specification explains to a person of ordinary skill in
the art that the claimed 'driver member' has specific structural characteristics — it is designed to
drive a fastener into a work piece and is elongated with multiple teeth that engage a lifter
member." (Pratt Decl. at ¶ 36.)
Accordingly, the undersigned hereby construes the term "driver member" as a
"component having multiple teeth that is designed to drive a fastener into a workpiece."
9. "gas replenishment system"
The parties disagree on the proper claim construction and have proposed the following
constructions:
RELEVANT CLAIIVIS COMPLAINANT RESPONDENT
'297 patent: claim 1
'282 patent: claim 1
system used to regularly
replenish pressurized gas during
normal operation of the device
one or more components that
allow replenishment of charge
gas to the storage volume
(JC at 4.)
-45-

Complainant asserts that its proposal is consistent with the intrinsic evidence. (CMIB at
27.) According to Complainant, "Mlle specification explains that the inventors were concerned
with solving portability issues with prior art gas spring nailers, which utilized cumbersome
systems, such as supply tanks, air pumps, and disposable pressurized air cartridges, that regularly
replenished the pressurized gas used to drive fasteners." (Id. (citing '282 Patent at 1:44-46.)
Complainant explains that "the specification makes clear that the claimed invention eliminates
any need to regularly replenish pressurized gas during normal operation of the device." (Id)
Complainant argues that Respondent's proposal is incorrect for two reasons. First,
Complainant contends that Respondent attempts to improperly construe "system" to include a
single component, in contrast to the plain and ordinary meaning of the word. (Id. at 26.)
Complainant explains that the claim language covers "a system that replenishes gases, not simply
a component (such as a valve) that allows replenishment of charge gases but cannot actually
replenish the gases on its own without additional components (such as a hose or supply tank).
(Id. at 27.) Second, Complainant takes issue with the word "allow" in Respondent's construction.
(CMRB at 10.) According to Complainant, Respondent's proposal "stems from its belief that a
simple valve on each accused device is a gas replenishment system, even though it cannot
replenish gas on its own and instead requires additional components not on-board the device
(such as an air pump) to actually recharge the gas." (Id at 10 n. 8.)
Respondent explains that the specification provides that "one advantage of the claimed
fastener driving tool is that there is 'no gas replenishment system on-board the tool for allowing
a user to replenish the charge gases of the tool's working storage volume, thereby reducing
opportunities for gas leaks." (RMIB at 39 (quoting '297 Patent at 2:23-26).)
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Respondent asserts that Complainant's proposal includes "an unsupported temporal
limitation that allows gas to be regularly replenished during normal operation of the tool." (Id
(emphasis in original.) According to Respondent, "nothing in the intrinsic evidence indicates that
the gas replenishment system is limited to only regular replenishment of gas during normal
operation of the device . . . Even if gas was not replenished regularly during normal operation, a
fastening tool that included a component that allows charge gas to be replenished . . . would
disregard the stated advantage of eliminating leaks." (Id.)
The undersigned shares Complainant's concern regarding the word "system." As noted
supra, there is a "heavy presumption that a claim term carries its ordinary and customary
meaning." CCS Fitness, 288 F.3d at 1366. As Complainant notes, "system' is a commonly
understood term meaning 'a group of objects or units so combined as to form a whole and work,
function, or move interdependently and harmoniously." (CMIB Ex. A at 1005.) Respondent does
not disagree with this definition, nor does it suggest that the patentee acted as its own
lexicographer with respect to this term.
Respondent instead notes that a system can be limited to a single component. (RMRB at
18-19.) The undersigned agrees, but this fact does not require adoption of Respondent's
proposal. While a component may be a system, it is not true. that all individual components
constitute a system. As Respondent acknowledges, a system can be made up of one or more
components. (Id .) In the case of a multi-component system, it is certainly true that only one
component of such a system would not be considered a "system," as the single component
cannot perform the function without additional components. Yet, such a component could meet
Respondent's definition of "gas replenishment system." Thus, the undersigned concludes that
Respondent's proposal cannot be correct.
-47 -

The first part of Complainant's construction is essentially the plain and ordinary meaning
of "gas replenishment system": "system used to regularly replenish pressurized gas." Respondent
does not dispute that the system is used to replenish pressurized gas, but objects to the inclusion
of the word "regularly." (RMIB at 39.) The undersigned agrees that the word "regularly" injects
ambiguity into the definition. Additionally, Complainant does not point to any intrinsic evidence
that explains the parameters of this term. The undersigned therefore declines to include the word
"regularly" in the definition.
Respondent also objects to the phrase "normal operation of the device." (Id.) Again,
Complainant does not point to any intrinsic evidence that specifically supports including this
limitation. The undersigned likewise declines to include this phrase in the definition as well.
Accordingly, the undersigned hereby construes the term "gas replenishment system" to
mean "system used to replenish pressurized gas."
SO ORDERED.
arles E. Bullock
Chief Administrative Law Judge
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CERTAIN GAS SPRING NAILER PRODUCTS AND Inv. No. 337-TA-1082
COMPONENTS THEREOF
PUBLIC CERTIFICATE OF SERVICE
I, Lisa R. Barton, hereby certify that ORDER NO. 9 has been served upon the following
parties as indicated, on 5/3/2018.
Lisa R. Barton, Secretary
U.S. International Trade Commission
500 E Street SW, Room 112
Washington, DC 20436
On Behalf of Complainant Kyocera Senco Brands Inc.:
Robert S. Riggs, Esq.
VEDDER PRICE PC
222 North LaSalle Street, Suite 2600
Chicago, IL 60601-1003
Respondent Hitachi Koki U.S.A., Limited:
Paul Devinsky
MCDERMOTT WILL & EMERY LLP
500 North Capitol Street, NW
Washington, DC 20001
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