Case: 1:16-cv-06097 Document #: 585 Filed: 08/30/17 Page 1 of 10 PageID #:21544
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`Civil Action No.: 1:16-cv-06097
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`Judge Harry D. Leinenweber
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`Jury Trial Demanded
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`PUBLIC, REDACTED
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`THE CHAMBERLAIN GROUP, INC.,
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`v.
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`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.
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`
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`Plaintiff,
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`Defendants.
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`PLAINTIFF’S MOTION FOR JUDGMENT AS A MATTER OF LAW
`AS TO VALIDITY AND RENEWED MOTION FOR JUDGMENT
`AS A MATTER OF LAW AS TO INFRINGEMENT
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`Plaintiff, The Chamberlain Group, Inc., moves for judgment as a matter of law (“JMOL”)
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`under Federal Rule of Civil Procedure 50 and renews its prior motion for JMOL (ECF Nos. 577,
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`578). JMOL is appropriate where “a reasonable jury would not have a legally sufficient
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`evidentiary basis to find for the party on that issue.” Fed. R. Civ. P. 50(a)(1). Here, when the
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`evidence is viewed in the light most favorable to OWT Industries, Inc.; One World
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`Technologies, Inc.; Ryobi Technologies, Inc.; Techtronic Industries Co., Ltd.; and Techtronic
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`Industries North America, Inc. (collectively, “TTI”), and TTI is given the benefit of all
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`reasonable inferences, there is not sufficient evidence of record to support a jury verdict in favor
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`of TTI on the issue of invalidity.
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`I.
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`Legal Standard
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`The claims of an issued patent, like the ’275 patent and the ’966 patent, are presumed to
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`be valid. 35 U.S.C.A. § 282 (2012); Microsoft Corp. v. i4i Ltd P’ship, 131 S. Ct. 2238, 2243
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`Case: 1:16-cv-06097 Document #: 585 Filed: 08/30/17 Page 2 of 10 PageID #:21545
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`(2011). This presumption can only be overcome if Defendants demonstrate that the claims of the
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`patent are invalid by clear and convincing evidence of facts to the contrary. See, e.g., ProBatter
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`Sports, LLC v. Sports Tutor, Inc., 680 F. App'x 972, 974 (Fed. Cir. 2017); Dana Corp. v. Am.
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`Axle & Mfg., Inc., 279 F.3d 1372, 1375 (Fed. Cir. 2002).
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`Anticipation requires disclosure “within the four corners of the documents not only all of
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`the limitations claimed but also all of the limitations arranged or combined in the same way as
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`recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
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`A theory of an “inherent” disclosure “may not be established by probabilities or possibilities.
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`The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”
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`U.S. Water Servs., Inc. v. Novozymes A/S, 843 F.3d 1345, 1350 (Fed. Cir. 2016) (citation
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`omitted). Instead, inherency is “appropriate only when the reference discloses prior art that must
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`necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290
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`F.3d 1364, 1373 (Fed. Cir. 2002) (emphasis in original) (citation omitted).
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`A patent is valid unless the differences between the claimed invention and the prior art
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`are “such that the subject matter as a whole would have been obvious at the time the invention
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`was made to a person having ordinary skill in the art to which said subject matter pertains.” 35
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`U.S.C. § 103(a). The Supreme Court in Graham v. John Deere Co. provided a four-pronged test
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`for obviousness: (1) the scope and content of the prior art; (2) differences between the prior art
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`and the claims; (3) the level of ordinary skill in the pertinent art; and (4) secondary
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`considerations. 383 U.S. 1, 17 (1966). The finder of fact must “consider all evidence relating to
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`obviousness before finding a patent invalid on those grounds.” In re Cyclobenzaprine
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`Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1075 (Fed. Cir. 2012)
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`Case: 1:16-cv-06097 Document #: 585 Filed: 08/30/17 Page 3 of 10 PageID #:21546
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`(reversing where the district court improperly placed the burden on the patentee with respect to
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`secondary considerations).
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`II.
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`The ’275 Patent
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`A reasonable jury would not have a legally sufficient evidentiary basis to find that the
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`asserted claims of the ’275 patent were invalid.
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`A.
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`Anticipation
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`No reasonable jury could find that claims 1, 5, or 15 of the ’275 patent are anticipated by
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`the Menard PCT reference. The ’275 patent claims a movable barrier operator and methods for
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`use at a movable barrier operator with the controller and wireless transmitter on-board, not part
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`of a separate module. PTX-1 at 1:49-2:3. By contrast, Menard PCT discloses a modular system
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`that does not include a controller and wireless transmitter as part of the movable barrier operator.
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`DX-35 at 1 (“A module with a sensor to indicate the position of a door coupled to a door
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`opener.”), 2, 3, 34, 41, 47, Figs. 30, 31; see also Trial Tr. at 760:6-10, 16-20, 761:20-762:2
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`(Menard); Trial Tr. at 970:9-13, 1029:7-17 (Foley); Trial Tr. at 1309:9-18; 1338:8-12 (Rhyne).
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`In this way, the Menard PCT application is similar to the Genie Aladdin Connect modular
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`system which all parties agree is non-infringing. Trial Tr. at 1310:22-1311:24 (Rhyne); Trial Tr.
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`at 1264:2-11 (Madisetti).
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`Further, the ’275 patent recites that the claimed status conditions must be defined, at least
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`in part, by two or more operating states. PTX-1 at claim 1, 14. The ’275 patent provides
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`examples of how such a definition may be accomplished. PTX-1 at 6:46-53; Fig. 4. By contrast,
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`Menard PCT does not clearly disclose any condition defined by a plurality of states. See, e.g.,
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`DX-35 at 34, 39; Trial Tr. at 986:6-10 (Foley); Trial Tr. at 1307:10-1308:9 (Rhyne).
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`Additionally, the Patent Office has already considered and rejected TTI’s invalidity
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`theory relating to a substantially similar Menard US patent application. Trial Tr. at 964:25-
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`965:3, 1029:2-6 (Foley); Trial Tr. at 1287:18-1288:1, 1309:1- 8 1309:1- 8 (Rhyne); PTX-499.
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`B.
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`Obviousness
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`No reasonable jury could find that claims 1, 5, or 15 of the ’275 patent are rendered
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`obvious by the Menard PCT reference in combination with Cohen.
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`Initially, TTI has failed to adduce any evidence supporting that one of ordinary skill in
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`the art would combine the Cohen and Menard PCT references. Indeed, TTI’s own expert
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`admitted that he did not believe one would need to combine the references, and that his only
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`reason for doing so was to obtain four specific states, a motivation derived entirely from
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`improper hindsight. Trial Tr. at 877:11-17 (Foley). Thus, one of ordinary skill in the art would
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`not make such a combination.
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`The combination likewise fails to disclose the ’275 patent inventions. Cohen is very
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`similar to Menard in that it recites a separate module 110 which is entirely separate from the
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`conventional garage door opener 130. DX-181 at 8; Trial Tr. at 1310:4-21 (Rhyne). In this way,
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`both Menard and Cohen are like the Genie Aladdin Connect system, which all parties agree is
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`non-infringing. Trial Tr. at 1310:22-1311:24 (Rhyne); Trial Tr. at 1150:5-13, 1152:19-24
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`(Madisetti). The combination of Cohen and Menard therefore fails to disclose the claimed
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`movable barrier operator and method of the ’275 patent.
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`Furthermore, Cohen – like Menard – fails to disclose the claimed operational status
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`condition defined by a plurality of operating states. DX-181 at 8; Trial Tr. at 1311:25-1312:9
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`(Rhyne). Thus, the combination of Cohen and Menard fails to disclose the claimed operational
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`status conditions of the ’275 patent.
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`Moreover, as discussed above, the Patent Office recently rejected TTI’s IPR petition filed
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`on a substantially similar Menard PCT application. TTI has failed to adduce sufficient evidence
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`for a reasonable jury to conclude that the addition of Cohen would remedy any of the
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`deficiencies of Menard identified by the Patent Office.
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`Finally, secondary considerations exist that support finding that the ’275 patent is non-
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`obvious. First, the invention has been praised by others.
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` This praise strongly supports a finding that the ’275 patent inventions were not obvious.
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`Trial Tr. at 1312:22-1313:15 (Rhyne). Additionally, CGI’s MyQ system, which uses the ’275
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`invention, has been commercially successful. Trial Tr. at 170:10-173:21 (Sorice); Trial Tr. at
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`497:14-498:22 (Hansen); Trial Tr. at 1313:23-1314:5 (Rhyne). TTI likewise believes that
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`transmitting status updates has driven sales of the Ryobi GDO. Trial Tr. at 1314:6-1315:5
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`(Rhyne). This success supports that the ’275 patent inventions were not obvious.
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`III. The ’966 Patent
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`A reasonable jury would not have a legally sufficient evidentiary basis to find that the
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`asserted claims of the ’966 patent were invalid.
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`A.
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`Anticipation
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`1.
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`Craftsman 139.53919 GDO/Manual
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`The Craftsman 139.53919 GDO/Manual (“Craftsman”) does not anticipate for several
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`reasons. First, the ‘966 patent limits the electrically powered equipment to something other than
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`a garage door opener—namely, “equipment other than and physically separate or separable
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`from the barrier movement operator.” (Cls. 9, 15 (emphasis added)). The ’966 patent
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`emphasizes that the garage door opener is different from other electrically powered equipment.
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`See PTX-2 (’966 patent) at 7:16-20 (“By providing a rechargeable battery backup that can be
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`used with both a barrier movement operator and an electrically powered equipment, instead
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`of having to have separate batteries for both of these, a user can minimize the number of batteries
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`needed to keep on hand.” (emphasis added)).
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`Additionally, the Craftsman battery is not removably connectable, which this Court
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`defined as “configured to allow a user to insert, plug-in or otherwise manually attach and
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`detach.” ECF No. 339 at 71; see also DX-134 at Figs. 1, 2 (illustrating that battery is attached to
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`structural supports using 1-1/2” lag screws). The inventor Mr. Butler’s testimony confirmed this.
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`Exhibit A, Butler Dep. Tr. at 81:13-82:3 (“Replaceable battery needs to be done by a qualified
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`service person. Removable battery can be done by the consumer.”).
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`Further, a garage door opener is not a tool as required by claims 14 and 18. Trial Tr. at
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`1320:7-23 (Rhyne).
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`2.
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`Crusius (U.S. Patent No. 7,786,619)
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`Crusius does not disclose a removable battery or “electrically powered equipment other
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`than and physically separate or separable from the barrier movement operator.” PTX-2 (’966
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`patent) at 7:48:50; DX-23 at TTI00012178 (“The battery is in circuit at all times with the barrier
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`movement operator power supply.”) Crusius is similar to the Craftsman GDO system, and thus
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`fails to invalidate the claims for the reasons identified above. Trial Tr. at 1324:7-19 (Rhyne).
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`Further, a garage door opener is not a tool as required by claims 14 and 18. Trial Tr. at
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`1320:7-23 (Rhyne).
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`3. Weik (U.S. Patent No. 6,484,784)
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`Weik describes a fire door operator having two embodiments: one with a fixed, internal,
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`non-removable battery that can be recharged by the system; and a second embodiment with a
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`portable battery which is not rechargeable by the system. DX-93 at Fig. 7, Fig. 9, 11:1-25; Trial
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`Tr. at 830:1-831:7 (Weik); Trial Tr. at 1321:23-1323:12 (Rhyne). Weik never teaches that the
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`embodiments may be combined and in fact teaches not to combine the inventions because it
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`would be time consuming and expensive. DX-93 at Fig. 1, 2:1-10; Trial Tr. at 1323:13-1324:6
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`(Rhyne). Thus, Weik does not disclose the claimed 966 patent inventions.
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`B.
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`Obviousness
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`1.
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`Crusius (U.S. Patent No. 7,786,619)
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`Crusius fails to disclose any of the claims of the ’966 patent for the reasons described
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`above regarding TTI’s anticipation theory, all of which are incorporated herein. Furthermore,
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`TTI has failed to adduce sufficient evidence from which a jury could conclude that one of
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`ordinary skill in the art would make any modification to Crusius. Indeed, TTI’s expert did not
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`offer any justification at all for this obviousness theory and failed to identify any proposed
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`alteration to Crusius for this obviousness theory. Trial Tr. at 951:22-952:1 (Foley).
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`Additionally, secondary considerations exist that support finding that the ’966 patent
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`inventions are not obvious. Specifically, TTI itself produced an invention disclosure form that
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`identified the problem addressed by the ’966 patent as a long-felt need. PTX-57; Trial Tr. at
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`1324:20-1327:1 (Rhyne); Trial Tr. at 618:14-627:3 (Huggins). This form touted the advantages
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`of the ’966 patent invention regarding saving the user from having to keep multiple batteries.
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`PTX-2; PTX-57; Trial Tr. at 1324:20-1327:1 (Rhyne); Trial Tr. at 612:10-618:25. Additionally,
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`TTI not only filed an internal invention disclosure, they filed a patent application which was
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`ultimately abandoned after the ’966 patent had been identified to TTI. PTX-57; PTX-629; PTX-
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`630 (TTI application); Trial Tr. at 618:14-627:3 (Huggins).
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`2. Weik (U.S. Patent No. 6,484,784)
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`Weik fails to disclose any of the claims of the ’966 patent for the reasons described above
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`regarding TTI’s anticipation theory, all of which are incorporated herein. Furthermore, TTI has
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`Case: 1:16-cv-06097 Document #: 585 Filed: 08/30/17 Page 8 of 10 PageID #:21551
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`failed to adduce sufficient evidence from which a jury could conclude that one of ordinary skill
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`in the art would make the proposed modification to Weik, and instead improperly relies on
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`hindsight. Trial Tr. at 947:18-948:5 (Foley).
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`Additionally, secondary considerations exist that support finding that the ’966 patent
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`inventions are not obvious. Specifically, TTI itself produced an invention disclosure form that
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`identified the problem addressed by the ’966 patent as a long-felt need. PTX-57; Trial Tr. at
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`1324:20-1327:1 (Rhyne); Trial Tr. at 618:14-627:3 (Huggins). This form touted the advantages
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`of the ’966 patent invention regarding saving the user from having to keep multiple batteries.
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`PTX-2; PTX-57; Trial Tr. at 1324:20-1327:1 (Rhyne); Trial Tr. at 612:10-618:25. Additionally,
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`TTI not only filed an internal invention disclosure, they filed a patent application which was
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`ultimately abandoned after the ’966 patent had been identified to TTI. PTX-57; PTX-629; PTX-
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`630 (TTI application); Trial Tr. at 618:14-627:3 (Huggins).
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`IV.
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`Infringement
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`Following the close of TTI’s case in chief, CGI renews its motion for JMOL on the issue
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`of infringement. ECF No. 578. The testimony and evidence presented as part of TTI’s case
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`further illustrate that there is insufficient evidence of record to support a jury verdict in favor of
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`TTI on the issue of infringement. See, e.g., Trial Tr. at 1201:2-1202:21.
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`Dated: August 30, 2017
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`By:
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`/s/ Katherine Vidal
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`
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`George C. Lombardi
`glombard@winston.com
`WINSTON & STRAWN LLP
`35 W. Wacker Drive
`Chicago, IL 60601-9703
`Telephone: (312) 558-5600
`Facsimile: (312) 558-5700
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`Katherine Vidal
`KVidal@winston.com
`Michael Rueckheim
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`8
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`Case: 1:16-cv-06097 Document #: 585 Filed: 08/30/17 Page 9 of 10 PageID #:21552
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`MRueckheim@winston.com
`Matthew R. McCullough
`MRMcCullough@winston.com
`WINSTON & STRAWN LLP
`275 Middlefield Road, Suite 205
`Menlo Park, CA 94025
`Telephone: (650) 858-6500
`Facsimile: (650) 858-6550
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`Aldo A. Badini (pro hac vice)
`abadini@winston.com
`Shanna A. Lehrman (pro hac vice)
`slehrman@winston.com
`WINSTON & STRAWN LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 294-4601
`Facsimile: (212) 294-4700
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`Benjamin Elacqua (pro hac vice)
`elacqua@fr.com
`FISH & RICHARDSON PC
`1221 McKinney Street, Suite 2800
`Houston, Texas 77010
`Telephone: 713-654-5300
`Facsimile: 713-652-0109
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`Maria Elena Stiteler (pro hac vice)
`stiteler@fr.com
`FISH & RICHARDSON P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`Telephone: (612) 335-5070
`Facsimile: (612) 288-9696
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`Nicole L. Little (IL 6297047)
`nlittle@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`Telephone: (312) 577-7000
`Facsimile: (312) 577-7007
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`ATTORNEYS FOR PLAINTIFF
`THE CHAMBERLAIN GROUP, INC.
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`Case: 1:16-cv-06097 Document #: 585 Filed: 08/30/17 Page 10 of 10 PageID #:21553
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing document was served on opposing counsel via
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`CM/ECF on August 30, 2017.
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`/s/ Katherine Vidal
`Katherine Vidal
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`ATTORNEY FOR PLAINTIFF
`THE CHAMBERLAIN GROUP,
`INC.
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