The Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd
Opinion
Techtronic Industries Co. Ltd., Techtronic Industries North America, Inc., One World Technologies, Inc., OWT Industries, Inc., and Ryobi Technologies, Inc. (collectively, TTI) appeal from the opinion and order of the United States District Court for the Northern District of Illinois denying TTI's motion for judgment as a matter of law (JMOL) and granting Chamberlain Group, Inc.'s (CGI) motions for enhanced damages and attorney fees. TTI also appeals the jury's verdict with respect to infringement and validity. We have jurisdiction under
Because we conclude that claims 1, 5, and 15 of CGI's
A. THE '275 PATENT
The '275 patent relates to an apparatus and method for communicating information about the status of a movable barrier, for example, a garage door. The '275 patent explains that, "[o]ver time, the capabilities of and features supported by ... movable barrier operators ... expanded to include actions other than merely opening and closing a corresponding movable barrier." '275 patent at col. 1, ll. 31-34. Some movable barrier operators could provide ambient lighting, for example, or sense the presence of an obstacle in the path of the movable barrier and take an appropriate action.
The parties do not contest the district court's treatment of claim 1 as representative. Claim 1 recites:
1. A movable barrier operator comprising:
a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states;
a movable barrier interface that is operably coupled to the controller;
a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that:
corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and
comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.
TTI moved for JMOL that the asserted claims of the '275 patent are directed to patent-ineligible subject matter under § 101. The district court denied TTI's motion, disagreeing with TTI's allegation that the asserted claims are directed to the abstract idea of wireless transmission of content.
See
J.A. 98. The district court determined that, "[h]ere, the '275 patent claims are not directed to the transmission of data, but to garage door openers that wirelessly transmit status information." J.A. 99 (internal quotation marks omitted). The district court further determined that the asserted claims are directed to "a particular improvement over prior art which uses a particular manner of sending and
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experiencing data," which it deemed patent-eligible in light of this court's decision in
Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.
,
Patent eligibility under § 101 is a question of law that may contain underlying issues of fact.
Interval Licensing LLC v. AOL, Inc.
,
The Supreme Court has deemed certain categories of subject matter, including abstract ideas, ineligible for patent protection under § 101.
Mayo Collaborative Servs. v. Prometheus Labs., Inc.
,
1. Step One
At step one, we "look at the focus of the claimed advance over the prior art to determine if the claim's character as a whole is directed to excluded subject matter."
Affinity Labs of Tex., LLC v. DIRECTV, LLC
,
We conclude that claim 1 is directed to wirelessly communicating status information about a system.
See, e.g.
, '275 patent at claim 1 (reciting that "the wireless status condition data transmitter transmits a status condition signal that: corresponds to a present operational status condition defined, at least in part, by at least two operating states"). The specification supports this conclusion. The only described difference between the prior art movable barrier operator systems and the claimed movable barrier operator system is that the status information about the system is communicated wirelessly, in order to overcome certain undesirable disadvantages of systems using physical signal paths-additional cost, exposed wiring, and increased installation time.
See
Wirelessly communicating status information about a system is similar to abstract ideas we have found in our previous cases.
See
Amdocs (Israel) Ltd. v. Openet Telecom, Inc.
,
This case is unlike those in which we have determined that the claims were not directed to abstract ideas. In
Thales Visionix Inc. v. United States
,
Nor do the asserted claims "focus on a specific means or method that improves the relevant technology,"
McRO, Inc. v. Bandai Namco Games Am. Inc.
,
The district court likened this case to
Core Wireless
. In
Core Wireless
, we determined that claims drawn to improved interfaces for electronic devices with small screens that allowed users to more quickly access desired data stored in, and functions of applications included in, the electronic devices were not drawn to the abstract idea of an index.
Core Wireless
,
CGI alleges that its claims are not directed to an abstract idea, but instead to a novel combination of its prior art movable barrier operator with a transmitter that is wireless. The district court's analysis mirrored CGI's approach. See J.A. 99-105. But "[t]he Supreme Court and this court have repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract." DIRECTV , 838 F.3d at 1259.
Last, CGI's reliance on the asserted claims being directed to "physical real world manifestation[s] of an improved machine" is misplaced.
See
Appellee's Op. Br. at 22. Without more, the mere physical nature of CGI's claim elements (
e.g.
, controller, interface, and wireless data transmitter) is not enough to save the claims from abstractness, where the claimed advance is directed to the wireless communication of status information using off-the-shelf technology for its intended purpose.
See
In re Marco Guldenaar Holding B.V.
,
Because we find that the asserted claims are drawn to the abstract idea of wirelessly communicating status information about a system, we proceed to step two of the analysis.
2. Step Two
"The 'inventive concept' step requires us to look with more specificity at what the claim elements add, in order to determine whether they identify an 'inventive concept' in the application of the ineligible subject matter to which the claim is directed."
DIRECTV
, 838 F.3d at 1258 (internal quotation marks omitted). "Simply appending conventional steps, specified at a high level of generality, [i]s not enough to supply an inventive concept."
Alice
,
The specification describes each individual element of the asserted claims-including the controller, the interface, and the wireless data transmitter-as "well understood in the art." '275 patent at col. 3, l. 27 - col. 4, l. 4. These conventional components, all recited in a generic way, are no better equipped to save the claim from abstractness than were, for example, the conventional computer used in
Alice
or the scanner used in
Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass'n
,
CGI argues that the ordered combination of the asserted claims' elements provides the inventive concept because "there is no evidence in the record" that "a new type of movable barrier operator that includes an integrated controller and a wireless transmitter to transmit a status signal" was "well-understood, routine and conventional to a skilled artisan." Appellee's Op. Br. at 28 (citing
Berkheimer
,
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to a skilled artisan (
i.e.
, whether it lacks novelty), but rather, there are two distinct questions: (1) whether each of "the [elements] in the claimed [product] (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field,"
Mayo
,
As we explained above, the specification makes clear that transmitting information wirelessly was conventional at the time the patent was filed and could be performed with off-the-shelf technology. '275 patent at col. 3, l. 54 - col. 4, l. 4. Yet wireless transmission is the only aspect of the claims that CGI points to as allegedly inventive over the prior art.
See, e.g.
, Appellee's Op. Br. at 31 ("[T]he '275's claims, like Bascom's, are patent-eligible because they 'carve out' a specific implementation (a specific type of operator with an integrated controller and wireless transmitter to transmit status information) that provide [sic] greater flexibility than the prior art physical interfaces approach."). Wireless communication cannot be an inventive concept here, because it is the abstract idea that the claims are directed to.
See
Interval Licensing
,
We therefore reverse the district court's opinion and order to the extent that it found the asserted claims of the '275 patent eligible for patent protection under § 101.
B. '966 PATENT
The '966 patent relates to a rechargeable battery backup system for a barrier movement operator. In the event of a power outage, many garage door openers that are powered via electrical outlet cannot open and close the garage door, so, consequently, the garage door must be opened and closed manually. '966 patent at col. 1, ll. 25-27. It is therefore useful for the barrier movement operator to have a rechargeable battery to be used as a backup, but it is also inefficient to use separate, distinct rechargeable batteries for multiple devices, for example, with cordless power tools.
The jury found, inter alia , that the asserted claims of the '966 patent were not anticipated by Weik. J.A. 90. TTI moved for JMOL that Weik anticipates the asserted claims, which the district court denied.
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J.A. 134. The district court explained, quoting CGI's expert, that Weik "teaches a motor-operated door and discloses two different embodiments, one of which has a portable battery and no charger and one of which has a nonportable battery but does have a charger." J.A. 131 (internal quotation marks omitted). TTI argued that a particular combination of these two embodiments (a portable battery with a charger) anticipates the asserted claims of the '966 patent.
To the extent the district court suggested a blanket rule that two embodiments disclosed in a reference can never be considered in combination to make a finding of anticipation, this was incorrect. In
Kennametal, Inc. v. Ingersoll Cutting Tool Co.
,
"Anticipation is a factual question, and a jury verdict regarding anticipation is reviewed after trial for substantial evidence."
Eaton Corp. v. Rockwell Int'l Corp.
,
C. TTI'S REQUESTS FOR A NEW TRIAL
TTI moved at the district court for a new trial based on two grounds: (1) because the district court allegedly erred in denying TTI's motion to transfer venue after the Supreme Court's
TC Heartland LLC v. Kraft Foods Group Brands LLC, --- U.S. ----,
"In reviewing a district court's disposition of ... a new trial motion, this court applies the law of the regional circuit where the district court sits," here, the Seventh Circuit.
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Bettcher Indus., Inc. v. Bunzl USA, Inc.
,
We do not find that the district court abused its discretion on either ground. As we explained in
In re Micron Technology, Inc.
,
Nor did the district court abuse its discretion in admitting the Board's non-institution decision. TTI requested and the district court gave a limiting instruction to the jury explaining that the legal standards applied by the Patent Office and the legal standards the jury must apply may differ, for example the application of different claim constructions.
See
J.A. 148-49. The Supreme Court has previously approved of limiting instructions that direct juries to consider differences between proceedings at the Patent Office and in front of the district court.
See, e.g.
,
Microsoft Corp. v. I4I Ltd. P'ship
,
D. ENHANCED DAMAGES AND ATTORNEY FEES
Much of the district court's analysis awarding TTI enhanced damages and attorney fees was focused on activities relating to the '275 patent. Because we conclude that the asserted claims of the '275 patent are invalid under § 101 but affirm the jury's verdict with respect to the '966 patent, we vacate the district court's enhanced damages and attorney fees award and remand for the court to reconsider whether the award is warranted with respect to only the '966 patent.
CONCLUSION
For the reasons stated above, we reverse the district court's judgment as a matter of law with respect to the asserted claims of the '275 patent. We affirm the jury's verdict on anticipation with respect to the asserted claims of the '966 patent and the district court's determinations on TTI's motion for a new trial. We vacate the district court's injunction and its awards of enhanced damages and attorney fees, and we remand for reconsideration of enhanced damages and attorney fees consistent with this opinion. We have considered the parties' remaining arguments and find them unpersuasive.
REVERSED-IN-PART, AFFIRMED-IN-PART, AND VACATED-AND-REMANDED-IN-PART
No costs.
Reference
- Full Case Name
- The CHAMBERLAIN GROUP, INC., Plaintiff-Appellee v. TECHTRONIC INDUSTRIES CO., Techtronic Industries North America, Inc., One World Technologies, Inc., OWT Industries, Inc., Ryobi Technologies, Inc., Defendants-Appellants ET Technology (Wuxi) Co., Defendant
- Cited By
- 67 cases
- Status
- Published