throbber
Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 1 of 82 PageID #:12717
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHER DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`
`Case No. 16 C 6097
`
`Judge Harry D. Leinenweber
`
`
`
`
`THE CHAMBERLAIN GROUP, INC.,
`
`
` Plaintiff,
`
`v.
`
`TECHTRONIC INDUSTRIES CO.,
`LTD., TECHTRONIC INDUSTRIES
`NORTH AMERICA, INC., ONE
`WORLD TECHNOLOGIES, INC.,
`OWT INDUSTRIES, INC., ET
`TECHNOLOGY (WUXI) CO. LTD.,
`and RYOBI TECHNOLOGIES, INC.,
`
`
` Defendants.
`
`
`
`
`
`
`
`
`
`
`MEMORANDUM OPINION AND ORDER
` Plaintiff Chamberlain Group, Inc. (“Chamberlain”) alleges
`in this suit that Defendants Techtronic Industries Co., Ltd.,
`Techtronic
`Industries
`North
`America,
`Inc.,
`One
`World
`Technologies, Inc., OWT Industries, Inc., Et Technology (WUXI)
`Co.
`Ltd.,
`and
`Ryobi
`Technologies
`(collectively,
`the
`“Defendants”) infringe U.S. Patent Nos. 7,224,275 (“the ‘275
`patent”) and 7,635,966 (“the ‘966 patent”), both of which it
`owns. The parties dispute the construction of eleven terms that
`appear throughout the claims of the asserted patents; they have
`briefed those disputes pursuant to Local Rule 4.2. This opinion
`sets forth the Court’s construction of the contested claim
`language.
`
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 2 of 82 PageID #:12718
`
`I. BACKGROUND
`
`A. The ‘275 Patent
`1. The Invention, Disputed Terms, and Asserted Claims
`
`The ‘275 patent, titled “Movable Barrier Operators Status
`
`Condition Transception Apparatus and Method,” recites a moveable
`barrier operator, such as a garage door opener (“GDO”),
`featuring a wireless status condition data transmitter that
`wirelessly relays status condition messages to one or more
`remote devices. The asserted claims of the ‘275 patent, with
`the six disputed terms in italics, are produced in full below.
`(Chamberlain is no longer asserting claims 2 or 21 against
`Defendants. (See, ECF No. 172 (“Pl.’s Opp. Br.”) at 21; ECF
`No. 156; ECF No. 191 at 4.))
`Claim
`Term
`1
`1
`1[a]
`2
`
`Text
`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;
`
`1[b]
`
`1[c]
`
`-
`
`3
`
`1[c.i]
`
`3
`
`
`
`- 2 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 3 of 82 PageID #:12719
`
`Claim
`1[c.ii]
`
`Term
`4
`
`14
`14[a]
`14[a.i]
`
`-
`-
`5
`
`14[a.ii]
`
`3
`
`14[a.ii.1]
`
`3
`
`14[a.ii.2]
`
`-
`
`24
`24[a]
`24[a.i]
`
`-
`-
`2
`
`24[a.ii]
`
`3
`
`24[a.ii.1]
`
`3
`
`Text
`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.
`A method comprising:
`at a movable barrier operator:
`detecting at least one predetermined condition
`as corresponds to a present operational status
`defined, at least in part, by at least two
`operating states, of the movable barrier
`operator;
`in response to detecting the at least one
`predetermined condition, automatically
`wirelessly transmitting a status condition
`signal that:
`represents the present operational status
`defined, at least in part, by the at least two
`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.
`An apparatus comprising:
`a movable barrier operator having:
`a controller having a plurality of potential
`operational status conditions defined, at
`least in part, by a plurality of operating
`states; and
`a wireless status condition transmitter
`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
`
`
`
`- 3 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 4 of 82 PageID #:12720
`
`Claim
`24[a.ii.2]
`
`Term
`-
`
`24[b]
`24[b.i]
`
`24[b.ii]
`
`6
`-
`
`-
`
`Text
`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;
`a remote peripheral having:
`a wireless receiver that is communicatively
`compatible with the wireless transmitter;
`a peripheral controller that is operably
`coupled to the wireless receiver.
`
`
`
`The specification of the ‘275 patent credits existing
`technology with providing “a motor or other motion-imparting
`mechanism” to move a barrier, which motor is typically
`controlled by a “movable barrier operator.” (‘275 patent at
`1:21-25.) Users control these operators either “by indicating a
`selection via one or more control surfaces that are physically
`associated with the movable barrier operator” or “by the
`transmission of a wireless remote control signal to the movable
`barrier operator.” (Id. at 1:25-30.) At the time of the ‘275
`patent application, the capabilities of commercially available
`operators had expanded “to include actions other than merely
`opening and closing a corresponding movable barrier,” including
`providing ambient lighting, sensing the presence of an obstacle
`in the path of the barrier, and facilitating different control
`strategies (such as vacation mode). (Id. at 1:31-47.)
`
`
`
`- 4 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 5 of 82 PageID #:12721
`
`The specification notes, however, that prior art movable
`
`barrier operators are often partially or wholly inadequate to
`suit present or developing needs of a given user or setting.
`For example, movable barrier operators manufactured with the
`ability to support a wide range of functionality require a
`physical interface to support “numerous potentially utilized
`peripheral devices (including but not limited to sensors,
`control surfaces, alarms, displays, ambient and/or spot
`lighting, and so forth).” (‘275 patent at 1:48-60.) This
`physical interface can entail undesired additional cost when
`part of the interface goes unused in a given installation.
`Furthermore, even if all potentially supported peripherals are
`used, the physical installation itself often includes “a
`physical signaling path to couple the movable barrier operator
`to the various peripherals,” which can “result in undesired
`exposed wiring and/or an undesired increase in installation
`time.” (Id. at 1:64-2:3.) The specification ascribes a final
`shortcoming to existing devices: a tendency to “fail to permit
`compatible support of a given peripheral,” which can thwart a
`user who wishes, for example, to support a relatively new
`function “not specifically supported by a given movable barrier
`operator.” (Id. at 2:4-16.)
`
`
`
`- 5 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 6 of 82 PageID #:12722
`
`The ‘275 patent (says that it) solves these problems by
`
`incorporating into extant technology “a controller having a
`plurality of potential operational status conditions, a movable
`barrier interface that operably couples to the controller, and a
`wireless status condition data transmitter that is operably
`coupled to the controller as well.” (‘275 patent at 2:56-61.)
`In the preferred embodiment, the wireless status condition data
`transmitter relays a status condition signal corresponding to at
`least one of the potential operational status conditions, and a
`remote peripheral (such as a display, an alarm, or a lighting
`control unit) can receive and process this status condition
`information. (Id. at 2:56-3:9.) First, this invention gives a
`user the ability to set a movable barrier operator to transmit a
`wide variety of wireless messages containing information that
`“can then be utilized to compatibly support a wide range of
`presently
`desired
`and
`later-developed
`features
`and
`functionality.” (Id. at 3:16-20.) Second, “the overall cost of
`a given platform can be reduced as the need to over-design a
`physical peripheral interface becomes diminished.” (Id. at 3:20-
`23.) Finally, this platform “has an improved opportunity to
`remain compatible with evolving features and legal and/or
`regulatory requirements to thereby promote a longer useful
`service life.” (Id. at 3:23-26.)
`
`
`
`- 6 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 7 of 82 PageID #:12723
`
`2. Procedural Background
`After an extensive hearing, the Court granted Chamberlain’s
`
`Motion for a Preliminary Injunction and, on September 20, 2016,
`entered an order (the “PI Order”) prohibiting Defendants from
`further making, using, selling, or offering to sell in the
`United States or importing into the United States any of their
`Ryobi GD200 garage door openers likely to infringe claims 1 and
`5 of the ‘275 patent. Defendants appealed this decision to the
`Federal Circuit, arguing that the Court improperly construed
`claim 1 to require a self-aware controller – that is, a
`controller that does not rely upon any external sensors to
`obtain status conditions. The Federal Circuit agreed with
`Defendants and vacated the PI order, holding in relevant part:
`Claim 1 neither recites nor requires a ‘self-aware
`controller.’ The written description of the ‘275
`patent makes clear that the controller can obtain the
`operational status conditions through self-awareness
`or through externally-developed information, e.g.,
`sensors.
`
`The Chamberlain Group, Inc. v. Techtronic Industries North
`
`America et al., No. 2016-2713, slip op. at 9 (Fed. Cir. Jan. 25,
`2017). Both the language of claims 1 and 2 as well as the
`written description of the ‘275 patent contemplate self-aware
`controllers and controllers that rely on sensors. Id. at 10.
`The Federal Circuit rejected Chamberlain’s argument that “the
`use of the terms ‘having’ and ‘potential’ in claim 1 demonstrate
`
`
`
`- 7 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 8 of 82 PageID #:12724
`
`[sic] that the claim is directed to a self-aware controller.”
`Id. at 11. It also found that the prosecution history of the
`‘275 patent does not support Chamberlain’s argument that sensor-
`based prior art was overcome during prosecution. Id. at 11. The
`Federal Circuit’s findings are binding on this Court.
`
`With the Federal Circuit decision in hand, the Patent Trial
`and Appeal Board (the “PTAB”) denied Defendants’ two petitions
`to institute inter partes review of the ‘275 patent. In those
`two decisions, the PTAB construed several of the claims at issue
`here. First, the PTAB construed “controller” to mean “any
`programmable
`platform,
`such
`as
`a
`microprocessor,
`microcontroller, programmable logic or gate array, or the like.”
`One World Techs., Inc., et al. v. The Chamberlain Grp., Inc.,
`IPR2016-01772, Paper 9, at 8 (P.T.A.B. Feb. 21, 2017); One World
`Techs., Inc., et al. v. The Chamberlain Grp., Inc., IPR2016-
`01774, Paper 8, at 7 (P.T.A.B. Feb. 21, 2017). It then
`construed the limitation “controller having a plurality of
`potential operational status conditions” in light of its “plain
`and ordinary meaning,” which does not “require that the
`controller be ‘self-aware’ or [] prohibit the controller from
`‘rely[ing] upon any external sensors to obtain status
`conditions.’” IPR2016-01772 at 8-12; IPR2016-01774 at 8-11.
`Finally, the PTAB construed “a present operational status
`
`
`
`- 8 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 9 of 82 PageID #:12725
`
`condition” to mean “a present status condition of the
`controller’s operation.” IPR2016-01772 at 12-14; IPR2016-01774
`at 11-14. In so doing, it noted that the specification
`“discloses that the status condition signal ‘simply reflects the
`actions being taken by the controller 11 and/or the other
`operational conditions being experienced by the controller 11.”
`IPR2016-01772 at 14; IPR2016-01774 at 13 (citing ‘275 patent at
`5:33-36).
`
`B. The ‘966 Patent
`The ‘966 patent, titled “Barrier Movement Operator Battery
`
`Backup and Power Equipment Battery Charging Center,” covers a
`GDO with a rechargeable, removable battery that can be used to
`power other equipment physically separate from the GDO. Unlike
`the ‘275 patent, Chamberlain does not practice the ‘966 patent.
`The asserted claims of the ‘966 patent, with the five disputed
`terms in italics, are produced below. (Chamberlain has
`indicated that it no longer intends to assert claim 19 against
`Defendants. (See, Pl.’s Op. Br. at 25 n.9.))
`Claim
`Term
`Text
`1
`2
`A system for providing a rechargeable battery
`backup for a barrier movement operator,
`comprising:
`a barrier movement operator for controlling the
`movement of a moveable barrier,
`the barrier movement operator having a head
`unit to command the moveable barrier to perform
`
`1[a]
`
`1[a.i]
`
`
`
`- 9 -
`
`
`2
`
`2
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 10 of 82 PageID #:12726
`
`Claim
`
`Term
`
`1[a.i.1]
`
`1[b]
`
`1[c]
`
`1[d]
`
`1[d.i]
`
`2
`2[a]
`
`3
`3[a]
`
`4
`4[a]
`
`4[a.i]
`
`4[a.ii]
`
`6
`6[a]
`
`-
`
`1
`
`-
`
`1
`
`3
`
`-
`4
`
`-
`1
`
`-
`-
`
`1
`
`-
`
`-
`2
`
`Text
`moveable barrier functions,
`wherein the head unit is supplied power by a
`power source;
`a battery charging station in electrical
`communication with at least one rechargeable
`battery and in electrical communication with
`the head unit to supply power to the at least
`one rechargeable battery;
`circuitry electrically connected to the battery
`charging station to supply power from the at
`least one rechargeable battery to the head
`unit; and
`electrically powered equipment other than and
`physically separate or separable from the
`barrier movement operator comprising
`an apparatus for receiving the at least one
`rechargeable battery and to be powered by the
`at least one rechargeable battery to perform a
`predetermined function.
`The system of claim 1,
`wherein the rechargeable battery is removably
`connectable to the electrically powered
`equipment.
`The system of claim 1,
`wherein the head unit is in communication with
`the battery charging station via a cord.
`The system of claim 1, further comprising
`an indication element to notify a user in
`response to at least one of:
`the at least one rechargeable battery being
`removed from the battery charging station, and
`the stored power of the at least one
`rechargeable battery being below a threshold
`amount.
`The system of claim 1,
`wherein the barrier movement operator is
`selected from the group consisting of: a garage
`
`
`
`- 10 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 11 of 82 PageID #:12727
`
`Claim
`
`Term
`
`9
`9[a]
`
`-
`1,2
`
`9[a.i]
`
`4,2
`
`9[b]
`
`10
`10[a]
`
`11
`
`11[a]
`
`11[a.i]
`
`11[a.ii]
`
`15
`
`1
`
`-
`1
`
`-
`
`-
`
`1
`
`-
`
`5
`
`15[a]
`
`1
`
`Text
`door operator, a gate operator, and a
`commercial door operator.
`A battery charging apparatus, comprising:
`a battery charging station in electrical
`communication with a rechargeable battery and
`in electrical communication with a head unit of
`a barrier movement operator for supplying power
`to at least one rechargeable battery,
`the at least one rechargeable battery being
`removably connectable to electrically powered
`equipment other than and separate or separable
`from the barrier movement operator to provide
`power to the electrically powered equipment;
`and
`circuitry electrically connected to the battery
`charging station to supply power from the at
`least one rechargeable battery to the head
`unit.
`The battery charging apparatus of claim 9,
`wherein the head unit is in communication with
`the battery charging station via a cord.
`The battery charging apparatus of claim 9,
`further comprising
`an indication element to notify a user in
`response to at least one of:
`the at least one rechargeable battery being
`removed from the battery charging station;
`and the stored power of the at least one
`rechargeable battery being below the threshold
`amount.
`A method of power flow between at least one
`rechargeable battery, a barrier movement
`operator, electrically powered equipment other
`than and physically separate or separable from
`the barrier movement operator, the method
`comprising:
`detecting whether the at least one rechargeable
`battery is in electrical communication with a
`
`
`
`- 11 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 12 of 82 PageID #:12728
`
`Claim
`
`Term
`
`15[b]
`
`15[c]
`
`15[d]
`
`16
`16[a]
`
`16[a.i]
`
`16[a.ii]
`
`22
`22[a]
`
`1
`
`1
`
`-
`
`-
`-
`
`1
`
`-
`
`-
`2
`
`Text
`battery charging station;
`providing power from a power source to the at
`least one rechargeable battery via the battery
`charging station;
`providing stored power from the at least one
`rechargeable battery to the head unit via the
`battery charging station to perform movable
`barrier functions; and
`providing power from the at least one
`rechargeable battery to the electrically
`powered equipment in response to the at least
`one rechargeable battery being electrically
`connected to the electrically powered
`equipment.
`The method of claim 15, further comprising
`notifying a user in response to at least one
`of:
`the at least one rechargeable battery being
`removed from the battery charging station, and
`the stored power of the at least one
`rechargeable battery being below the threshold
`amount.
`The kit of claim 19, further comprising
`the electrically powered equipment other than
`and physically separate or separable from the
`barrier movement operator.
`
`
`
`Surveying existing technology, the ‘966 patent notes the
`availability of “[v]arious remotely controllable access control
`mechanisms,” including barrier movement operators for garage
`doors, which “are often powered via an electrical outlet.” (‘966
`patent at 1:15-25.) In the event of a power outage, such
`devices are unable to open or close a garage door, and a user
`
`
`
`- 12 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 13 of 82 PageID #:12729
`
`must manually open or close it. (Id. at 1:25-30.) While “[s]ome
`current barrier movement operators can be powered via a backup
`battery,” they receive power from “battery backups that are
`independent items . . . typically used only for operating the
`barrier movement operator.” (Id. at 1:31-39.) The background
`section then briefly surveys cordless power tools, which also
`require batteries and charging systems. (Id. at 1:42-44.) Such
`batteries are often plug-in devices that are charged in a
`separate cradle capable only of recharging that battery. (See,
`id. at 1:44-47.) According to the specification, then, the
`chief shortcoming in prior art devices is the inconvenience and
`expense they leave intact: a user must charge her barrier
`movement operator backup battery and cordless power tool battery
`pack separately in separate charging cradles, and the two are
`not interchangeable.
`
`Seeking to remedy the problem, the ‘966 patent invention
`provides a rechargeable battery backup for use with a barrier
`movement operator which, in the event of a power outage, may
`provide power to the barrier movement operator to permit opening
`or closing of the barrier. A battery charging station connected
`to the head unit of the movable barrier operator charges the
`rechargeable battery backup, which may be removed and inserted
`into other equipment – such as garden tools, saws, drills,
`
`
`
`- 13 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 14 of 82 PageID #:12730
`
`lights, and the like - to supply electric power. Because the
`battery charging station is connected via circuitry to the head
`unit (which is itself connected to a power supply), the battery
`backup may supply power to the head unit or vice versa. (See,
`‘966 patent at 3:19-56, 6:46-7:15.) Thus, a user can conserve
`cost and space by minimizing the number of batteries needed on
`hand, and can use a single battery charging station “instead of
`two separate battery charging stations or cradles as is required
`according to current system.” (Id. at 7:16-25.)
`II. LEGAL STANDARD
`“A court hearing a patent infringement suit must construe
`
`the patent’s claims, both to settle disputes about their scope
`and to translate technical terms into concise definitions that
`jurors can understand.” Cascades Streaming Techs., LLC v. Big
`Ten Network, LLC, No. 13 C 1455, 2016 WL 2344578, at *6 (N.D.
`Ill. May 4, 2016) (citations omitted). A district court is not
`required to construe every limitation present in a patent’s
`asserted claims, only those terms “that are in controversy, and
`only to the extent necessary to resolve the controversy.” Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999); see also, O2 Micro Int’l Ltd. v. Beyond Innovation
`Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). Claim
`construction is a question of law that involves “determining the
`
`
`
`- 14 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 15 of 82 PageID #:12731
`
`meaning and scope of the patent claims asserted to be
`infringed.” Markman v. Westview Instruments, Inc., 52 F.3d 967,
`970 (Fed. Cir. 1995).
`
`Claim construction begins with the language of the claims
`themselves. Imaginal Systematic, LLC v. Leggett & Platt, Inc.,
`805 F.3d 1102, 1008 (Fed. Cir. 2015). The words of a claim “are
`generally given their ordinary and customary meaning, which is
`the meaning that the term would have to a person of ordinary
`skill in the art at the time of the invention.” Id. at 1108-09.
`Sometimes, “the ordinary meaning of claim language as understood
`by a person of skill in the art may be readily apparent even to
`lay judges, and claim construction in such cases involves little
`more than the application of the widely accepted meaning of
`commonly understood words.” Phillips v. AWH Corp., 415 F.3d
`1303, 1314 (Fed. Cir. 2005) (en banc); see also, Brown v. 3M,
`265 F.3d 1349, 1352 (Fed. Cir. 2001) (noting that “elaborate
`interpretation” is generally unnecessary for terms that “are not
`technical terms of art”).
`
`A person of ordinary skill in the art “is deemed to read
`the claim term . . . in the context of the entire patent,
`including the specification.” Phillips, 415 F.3d at 1314. For
`this reason, a court interpreting the claim language also
`considers the intrinsic record, including the specification and
`
`
`
`- 15 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 16 of 82 PageID #:12732
`
`prosecution history. Kaneka Corp. v. Xiamen Kingdomway Grp.
`Co., 790 F.3d 1298, 1304 (Fed. Cir. 2015). Intrinsic evidence
`is the most important evidence of a term’s ordinary meaning.
`See, e.g., Power-One, Inc. v. Artesyn Techs., In., 599 F.3d
`1343, 1348 (Fed. Cir. 2010) (“When construing claims . . . the
`intrinsic evidence and particularly the claim language are the
`primary resources.”); MBO Labs., Inc. v. Becton, Dickinson &
`Co., 474 F.3d 1323, 1329 (Fed. Cir. 2007) (“Extrinsic
`evidence . . . may be helpful but is less significant than the
`intrinsic record in determining the legally operative meaning of
`claim language.”) (internal quotation marks omitted). Within
`the intrinsic record, the specification is more important than
`the prosecution history. See, Ethicon Endo-Surgery, Inc. v.
`Covidien, Inc., 796 F.3d 1312, 1324 (Fed. Cir. 2015) (“Claim
`language must be viewed in light of the specification, which is
`the single best guide to the meaning of a disputed term.”)
`(internal quotation marks omitted). Courts must take care,
`however, to avoid importing limitations from the specification
`into the claim. Phillips, 415 F.3d at 1323; Hill-Rom Servs.,
`Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014)
`(“While we read claims in view of the specification, of which
`they are a part, we do not read limitations from the embodiments
`in the specification into the claims.”).
`
`
`
`- 16 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 17 of 82 PageID #:12733
`
`Extrinsic evidence, on the other hand, derives from outside
`
`the intrinsic record and includes “expert and inventor
`testimony, dictionaries, and learned treatises.” Phillips, 415
`F.3d at 1317 (noting that extrinsic evidence is “less
`significant than the intrinsic record”) (internal quotation
`marks omitted); see also, Netcraft Corp. v. eBay, Inc., 549 F.3d
`1394, 1396 (Fed. Cir. 2008). The Federal Circuit frames the
`order of operations thusly: “[a]fter considering intrinsic
`evidence, a court may also seek guidance from extrinsic
`evidence. . . .” H-W Tech., L.C. v. Overstock.com, Inc., 758
`F.3d 1329, 1332 (Fed. Cir. 2014). A court relying on extrinsic
`evidence may need to decide, for example, what a person of
`ordinary skill in the art would have understood a term of art to
`mean at the time of the invention. Teva Pharms. USA, Inc. v.
`Sandoz, Inc., 135 S.Ct. 831, 841 (2015) (discussing “subsidiary
`factual findings”). Once a court makes such a determination of
`fact, however, it must decide the further legal question of what
`the term means “in the context of the specific patent claim
`under review.” Ibid. (emphasis in original).
`
`Finally, if the plain and ordinary meaning of a claim term
`is evident on its face, there are two exceptions to construing
`it as such. First, the specification may define a claim term in
`a manner that conflicts with the meaning it would otherwise
`
`
`
`- 17 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 18 of 82 PageID #:12734
`
`possess. Phillips, 415 F.3d at 1316. Known as “lexicography,”
`this exception to the general plain meaning rule reflects the
`fact that a patentee is entitled to redefine terms. Hill-Rom,
`755 F.3d at 1371. In this situation, “the patentee’s
`lexicography must govern the claim construction analysis.”
`Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1356
`(Fed. Cir. 2014). Second, the specification or the prosecution
`history may evidence “disavowal” or “disclaimer” if the
`Applicant disclaims the patent’s application to certain
`technology - even if the claim limitations would, if interpreted
`consonant with their ordinary meaning, cover that technology.
`See, e.g., Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d
`1021, 1025 (Fed. Cir. 2015) (finding clear and unmistakable
`disavowal in the specification); GE Lighting Sol’ns, LLC v.
`AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“There are
`certainly cases where we have found disavowal or disclaimer
`based on clear and unmistakable statements by the patentee that
`limit the claims.”); Computer Docking Station Corp. v. Dell,
`Inc., 519 F.3d 1366, 1379 (Fed. Cir. 2008) (“[T]he sum of the
`patentees’ statements during prosecution would lead a competitor
`to believe that the patentee had disavowed coverage of
`laptops.”). A statement only constitutes a disavowal if it
`demonstrates “clear and unambiguous” intent to disavow claim
`
`
`
`- 18 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 19 of 82 PageID #:12735
`
`scope. Saffran v. Johnson & Johnson, 712 F.3d 549, 559 (Fed.
`Cir. 2013) (internal quotation marks omitted).
`III. ANALYSIS
`A. The ‘275 Patent
`1. “A movable barrier operator comprising” (Claim 1)
`
`
`The Court construes “a movable barrier operator comprising”
`to mean “an operator that controls movement of the movable
`barrier and may contain additional functionality, comprising.”
`
`First, the Court notes that this preamble requires
`construction to the same extent as the balance of the claim. A
`claim preamble constitutes a limitation “when the claim(s)
`depend on it for antecedent basis, or when it is essential to
`understand limitations or terms in the claim body.” C.W.
`Zumbiel Co. v. Kappos, 702 F.3d 1371, 1385 (Fed. Cir. 2012). A
`preamble limits its claim if it is “necessary to give life,
`meaning, and vitality” to the claim. Am. Medical Sys., Inc. and
`Laserscope v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir.
`2010) (internal quotation marks omitted). Here, the preamble is
`necessary to give life and meaning to claim 1 and its
`limitations; it “is not merely a statement describing the
`invention’s intended field of use.” Metraflex Co. v. Flex-Hose
`Co., Inc., No. 10 C 302, 2011 WL 4001144, at *3 (N.D. Ill.
`Sept. 8, 2011). Absent the preamble, the ensuing limitations
`
`
`
`- 19 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 20 of 82 PageID #:12736
`
`recite mere components without situating them within the
`operator. Further, language in the body of claim 1 relies upon
`the preamble for antecedent basis. (See, e.g., ‘275 patent at
`8:11-19 (“[T]he wireless status condition data transmitter
`transmits a status condition signal that: . . . comprises an
`identifier that is at least relatively unique to the movable
`barrier operator”) (emphasis added).) Thus, the preamble must
`be construed as if in the balance of the claim.
`readily
`is
`
`Chamberlain
`argues
`that
`the
`preamble
`understandable on the basis of its plain and ordinary meaning
`and that, if a construction is necessary, the preamble should be
`construed as: “An operator that controls the movement of a
`moveable barrier and may have other functionality.” Defendants
`counter by proposing the construction: “A set of components
`that controls the movement of a movable barrier.” The Court
`finds fault with both proposed constructions to the extent they
`implicitly cabin a movable barrier operator’s function to moving
`the barrier. While true that a movable barrier operator
`controls the motion-imparting mechanism of the barrier, the
`specification unequivocally discloses greater capabilities than
`just barrier motion control. Replacing “operator” with “a set
`of components that controls the movement” defines the operator
`solely with reference to controlling the barrier’s movement and
`
`
`
`- 20 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 21 of 82 PageID #:12737
`
`gives the impression that the operator’s function is limited to
`moving the barrier.
`
`The same rationale also undergirds the Court’s rejection of
`Chamberlain’s construction that the operator “may have other
`functionality.” From the plain language of the term, a movable
`barrier operator must be capable of operating (i.e., moving) the
`moveable barrier. And the specification makes clear that even
`movable barrier operators capable of more than mere barrier
`movement can nonetheless still move the barrier. (See, ‘275
`patent at 1:31-34 (“Over time, the capabilities of and features
`supported by such movable barrier operators has [sic] expanded
`to include actions other than merely opening and closing a
`
`corresponding movable barrier.” (emphasis added).) On its own,
`Chamberlain’s proposed “other functionality” - instead of, for
`example, “additional functionality” – is ambiguous as to whether
`a movable barrier operator could, instead of moving the barrier,
`do something else entirely and still remain within claim 1.
`
`Finally, the parties agree that a movable barrier operator
`does not include “remote components,” such as smart phones. The
`specification is in accord, contrasting movable barrier operator
`uses involving physical association with other, physically
`separate “remote” control strategies. (See, e.g., ‘275 patent
`at 1:25-30 (“In some cases a user may control the movable
`
`
`
`- 21 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 339 Filed: 04/07/17 Page 22 of 82 PageID #:12738
`
`barrier operator by indicating a selection via one or more
`control surfaces that are physically associated with the movable
`barrier operator. In other cases such control can be effected
`by the transmission of a wireless remote control signal to the
`movable barrier operator.”); id. at FIG. 2 (depicting “remote
`components” as physically separate from the moveable barrier
`operator).)
`
`This
`explains
`the Court’s
`rejection of
`Chamberlain’s
`proposed
`construction
`“may
`have
`other
`functionality”
`in
`favor
`of
`“may
`additional
`contain
`functionality,” which more clearly indicates that any added
`functionality derives f

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket