throbber
Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 1 of 110 PageID #:27222
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`
`
`
`
`
` Plaintiff,
`
`v.
`
`Case No. 16 C 6097
`
`
`
`
`
`
`
`
`
`Judge Harry D. Leinenweber
`
`
`
`
`
`
`
`
`
`
`THE CHAMBERLAIN GROUP, INC.,
`
`
`
`
`
`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.
`
`
`
`
`Plaintiff Chamberlain Group, Inc. (“Chamberlain”) won a
`
`MEMORANDUM OPINION AND ORDER
`
`jury verdict against 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, “TTI”), in which
`
`the jury found that TTI willfully infringed two of Chamberlain’s
`
`patents, U.S. Patent Nos. 7,224,275 (“the ‘275 patent”) and
`
`7,635,966 (“the ‘966 patent”). Both parties have filed post-
`
`trial motions. This opinion presumes familiarity with the
`
`case’s background, as described in this Court’s previous
`
`rulings. (See, e.g., Dkt. 104 (preliminary injunction opinion);
`
`Chamberlain Grp., Inc. v. Techtronic Indus. Co., No. 16 C 6097,
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`

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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 2 of 110 PageID #:27223
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`2017 WL 368027 (N.D. Ill. Jan. 23, 2017) (contempt opinion);
`
`Chamberlain Grp., Inc. v. Techtronic Indus. Co., No. 16 C 6097,
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`2017 WL 1304559 (N.D. Ill. Apr. 7, 2017) (claim construction
`
`opinion); Chamberlain Grp., Inc. v. Techtronic Indus. Co.,
`
`No. 16 C 6097, 2017 WL 3205772 (N.D. Ill. June 28, 2017) (order
`
`denying motion to transfer venue).)
`
`I. TTI’s Renewed Motion for Judgment as a Matter of Law
`
`The Court “should render judgment as a matter of law when a
`
`
`
`party has been fully heard on an issue and there is no legally
`
`sufficient evidentiary basis for a reasonable jury to find for
`
`that party on that issue.” Reeves v. Sanderson Plumbing Prods.,
`
`530 U.S. 133, 149 (2000) (quoting FED. R. CIV. P. 50(a)). This is
`
`a stringent standard under which the Court “construe[s] the
`
`facts strictly in favor of the party that prevailed at trial.”
`
`Schandelmeier-Bartels v. Chi. Park Dist., 634 F.3d 372, 376 (7th
`
`Cir. 2011) (citations omitted). On a motion for JMOL, “the
`
`court does not make credibility determinations or weigh the
`
`evidence,” id., though the Court must “disregard all evidence
`
`favorable to the moving party that the jury is not required to
`
`believe.” Reeves, 530 U.S. at 151. The court leaves the jury’s
`
`factual findings “undisturbed as long as they are supported by
`
`substantial evidence,” i.e., “such relevant evidence as a
`
`reasonable mind might accept as adequate to support a
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 3 of 110 PageID #:27224
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`conclusion.” Akamai Techs., Inc. v. Cable & Wireless Internet
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`Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003) (quoting
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`Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938)).
`
`
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`In its renewed Motion for JMOL, TTI argues it is entitled
`
`to judgment because: (1) the asserted ‘275 patent claims are
`
`directed to ineligible subject matter under Alice Corp. Pty. v.
`
`CLS Bank Int’l, 134 S. Ct. 2347 (2014); (2) the ‘275 patent was
`
`anticipated or rendered obvious by prior art; (3) TTI’s products
`
`do not literally infringe the ‘275 patent; (4) the doctrine of
`
`equivalents does not apply here, and the jury should not have
`
`considered it; (5) TTI does not induce infringement of the ‘275
`
`patent, (6) TTI does not willfully infringe the ‘275 patent; (7)
`
`the ‘966 patent was anticipated or rendered obvious by prior
`
`art; (8) TTI does not literally infringe the ‘966 patent; (9)
`
`TTI does not induce infringement of the ‘966 patent; (10) TTI
`
`does not willfully infringe the ‘966 patent; and (11)
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`Chamberlain failed to prove damages. The Court takes each
`
`argument in turn.
`
`A. Ineligibility of Asserted ‘275 Patent Claims
`
`
`
`Anyone who “invents or discovers any new and useful
`
`process, machine, manufacture, or composition of matter, or any
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`new and useful improvement thereof” may obtain a patent. 35
`
`U.S.C. § 101. But because patent protection does not extend to
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 4 of 110 PageID #:27225
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`claims that monopolize the “building blocks of human ingenuity,”
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`claims directed to laws of nature, natural phenomena, and
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`abstract ideas are not patent eligible. Alice, 134 S. Ct. at
`
`2354. The Supreme Court instructs courts to distinguish between
`
`those claims directed to patent-ineligible subject matter and
`
`those that “integrate the building blocks into something more.”
`
`Id. To do so, courts follow the two-step Alice framework. Id.
`
`First, a court must “determine whether the claims at issue are
`
`directed to a patent-ineligible concept.” Id. at 2355. If they
`
`are not so directed, the claims satisfy § 101, and the inquiry
`
`ends. Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262
`
`(Fed. Cir. 2017). But if the claims are so directed, the court
`
`proceeds to step two and “examine[s] the elements of the claim
`
`to determine whether it contains an ‘inventive concept’
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`sufficient to ‘transform’ the claimed abstract idea into a
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`patent-eligible application.” Core Wireless Licensing S.A.R.L.
`
`v. LG Elecs., Inc., 880 F.3d 1356, 1361 (Fed. Cir. 2018)
`
`(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`
`566 U.S. 66, 72, 79 (2012)).
`
`
`
`To begin the Alice analysis, the court must “articulate
`
`what the claims are directed to with enough specificity to
`
`ensure the step one inquiry is meaningful.” Id. (quoting Thales
`
`Visionix Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir.
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 5 of 110 PageID #:27226
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`2017)). Further, “claims are considered in their entirety to
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`ascertain whether their character as a whole is directed to
`
`excluded subject matter.” Internet Patents Corp. v. Active
`
`Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). The court
`
`“look[s] to whether the claims . . . focus on a specific means
`
`or method that improves the relevant technology or are instead
`
`directed to a result or effect that itself is the abstract idea
`
`and merely invoke generic processes and machinery.” Smart Sys.
`
`Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1371
`
`(Fed. Cir. 2017) (quoting McRO, Inc. v. Bandai Namco Games Am.
`
`Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016)).
`
`
`
`Here, TTI claims that wireless transmission of content is
`
`an abstract idea, and that the asserted ‘275 patent claims are
`
`directed to nothing more. First off, the cases TTI cites in
`
`support of this proposition do not hold that wireless
`
`transmission is an abstract idea. Affinity Labs of Tex., LLC v.
`
`DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (holding that
`
`the concept of providing out-of-region access to regional
`
`broadcast content is an abstract idea), cert. denied sub nom.
`
`Affinity Labs of Tex., LLC v. DIRECTTV, LLC, 137 S. Ct. 1596
`
`(2017); Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d
`
`1266, 1271-72 (Fed. Cir. 2016) (holding that the concept of
`
`delivering user-selected media content to portable devices is an
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 6 of 110 PageID #:27227
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`abstract idea), cert. denied, 137 S. Ct. 1596 (2017). And
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`second, the Federal Circuit has warned against the dangers of
`
`over-abstraction, Core Wireless, 880 F.3d at 1361 (“[W]e must be
`
`mindful that ‘all inventions at some level embody, use, reflect,
`
`rest upon, or apply laws of nature, natural phenomena, or
`
`abstract ideas.’” (quoting Mayo, 566 U.S. at 71)), and
`
`disapproved of parties’ efforts to render abstract objects that
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`are not, id. at 1362 (“The asserted claims in this case are
`
`directed to an improved user interface for computing devices,
`
`not to the abstract idea of an index, as argued by LG on
`
`appeal.”). Here, the ‘275 patent claims are not directed to the
`
`transmission of data, but “to garage door openers that
`
`wirelessly transmit status information.” The Chamberlain Grp.,
`
`Inc. v. Techtronic Indus. Co., 676 F. App’x 980, 982 (Fed. Cir.
`
`2017) (appeal from this Court’s initial claim construction).
`
`Having identified what the ‘275 patent claims are directed to,
`
`the Court must now determine whether this object is an abstract
`
`idea.
`
`
`
`“The Supreme Court has not established a definitive rule to
`
`determine what constitutes an ‘abstract idea’ sufficient to
`
`satisfy the first step of the [Alice] inquiry,” and as such the
`
`appropriate analysis “compare[s] claims at issue to those claims
`
`already found to be directed to an abstract idea in previous
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 7 of 110 PageID #:27228
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`cases.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334
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`(Fed. Cir. 2016). Post-Alice decisions have found ineligible:
`
`paying for mass transit rides with a credit card, Smart Sys.
`
`Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1371
`
`(Fed. Cir. 2017); “the abstract idea of testing operators of any
`
`kind of moving equipment for any kind of physical or mental
`
`impairment,” Vehicle Intelligence & Safety LLC v. Mercedes-Benz
`
`USA, LLC, 635 F. App’x 914, 917 (Fed. Cir. 2015); the “abstract
`
`idea for increasing sales implemented via ‘some unspecified,
`
`generic computer,’” DDR Holdings, LLC v. Hotels.com, L.P., 773
`
`F.3d 1245, 1266 (Fed. Cir. 2015); creating a “transaction
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`performance guaranty” over an unspecified network, buySAFE, Inc.
`
`v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); “offering
`
`media content in exchange for viewing an advertisement,”
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`Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir.
`
`2014); the abstract idea of a conversion chart, Tech. Dev. &
`
`Licensing, LLC v. Comcast Corp., 258 F. Supp. 3d 884, 887 (N.D.
`
`Ill. 2017); and the routine and conventional activity of making
`
`and storing lists on a microprocessor, Tech. Dev. &, Licensing,
`
`LLC v. Gen. Instrument Corp., 225 F. Supp. 3d 729, 735 (N.D.
`
`Ill. 2016).
`
`
`
`Chamberlain, of course, argues the ‘275 patent claims are
`
`not directed to abstract ideas as in the cases above and should
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 8 of 110 PageID #:27229
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`pass muster under § 101. In doing so, Chamberlain relies in
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`large part on Chamberlain Group, Inc. v. Linear LLC, 114 F.
`
`Supp. 3d 614 (N.D. Ill. 2015). In Linear, Chamberlain claimed
`
`the defendant infringed its GDO patents (though not the patents
`
`asserted here), and the defendant moved to dismiss on the
`
`grounds that the claims were not directed to patent-eligible
`
`subject matter. Id. at 621. The court described the relevant
`
`patent claims as directed to “opening and closing a movable
`
`barrier, (e.g., garage door) using a computer network for
`
`communication between the monitor or operator (including a
`
`controller), and movable barrier,” id. at 626, and held this to
`
`be eligible subject matter in part because the claims “ha[d]
`
`physical and tangible components that are directed to more than
`
`performance of an abstract idea,” id. at 625. The court also
`
`held that the asserted claims were directed to a technological
`
`improvement because they integrated a GDO and a network. Id. at
`
`626-27.
`
`
`
`Both of these rationales have met with disagreement,
`
`however. First, another court in this district observed that
`
`Linear did not benefit from the guidance of the Federal
`
`Circuit’s later decision in Vehicle Intelligence & Safety LLC v.
`
`Mercedes-Benz USA, LLC, 635 F. App’x 914, 920 (Fed. Cir. 2015),
`
`which demonstrated that “the mere presence of a ‘real-world,
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 9 of 110 PageID #:27230
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`physical’ purpose, such as controlling equipment, does not show
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`that the claims do not preempt an abstract idea.” Joao Control
`
`& Monitoring Sys., LLC v. Telular Corp., 173 F. Supp. 3d 717,
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`729 (N.D. Ill. 2016) (characterizing Vehicle Intelligence).
`
`Second, an out-of-circuit district court opined that “[t]he
`
`alleged technological improvement in [Linear] amounts to nothing
`
`more than operating an existing device from a remote location
`
`over a network,” which cannot suffice for a “technological
`
`improvement.” ChargePoint, Inc. v. SemaConnect, Inc., No. CV 17
`
`3717, 2018 WL 1471685, at *11 (D. Md. Mar. 23, 2018).
`
`
`
`Neither of these critiques compels the Court to find
`
`patent-ineligible subject matter, however. The Vehicle
`
`Intelligence decision does not cite Linear nor express any
`
`opinion on it. And TTI itself points out that Linear “involved
`
`a different Chamberlain patent . . . that solved a different
`
`problem and recited limitations different from those in the
`
`claims asserted here.” (TTI’s Reply in Supp. of Summary
`
`Judgment at 1, Dkt. 546.) Unlike Joao’s characterization of the
`
`claims in Linear, the claims asserted here are not directed to
`
`an abstract idea that merely happens to make use of physical
`
`equipment. And as for the Chargepoint critique, the
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`technological improvements of the asserted ‘275 patent claims
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`are not limited to the introduction of network connectivity.
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 10 of 110 PageID #:27231
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`Rather, the asserted ‘275 claims are directed to a particular
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`improvement over prior art which uses a particular manner of
`
`sending and experiencing data. This particularity distinction
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`matters. In Core Wireless, the Federal Circuit affirmed the
`
`district court’s patent-eligibility finding for claims directed
`
`to “an improved user interface for computing devices.” 880 F.3d
`
`at 1362. The court explained: “Although the generic idea of
`
`summarizing information certainly existed prior to the
`
`invention, these claims are directed to a particular manner of
`
`summarizing and presenting information in electronic devices.”
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`Id. at 1362 (emphasis added). Concerning this “particular
`
`manner,” the court noted that the claims stated specific
`
`limitations which “disclose[d] a specific manner of displaying a
`
`limited set of information to the user, rather than using
`
`conventional user interface methods to display a generic index
`
`on a computer. . . . [T]hese claims recite a specific
`
`improvement over prior systems.” Id. at 1363. Indeed, the
`
`Federal Circuit has repeatedly found claims directed to patent-
`
`eligible subject matter when those claims “focused on various
`
`improvements of systems.” Id. at 1362; see, e.g., Enfish, LLC
`
`v. Microsoft Corp., 822 F.3d 1327, 1336, 1338 (Fed. Cir. 2016)
`
`(claims reciting a self-referential table for a computer
`
`database directed to a particular improvement in the computer’s
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 11 of 110 PageID #:27232
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`functionality); Thales Visionix Inc. v. United States, 850 F.3d
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`1343, 1345, 1349 (Fed. Cir. 2017) (claims reciting an improved
`
`method of utilizing particularly configured sensors to determine
`
`position and orientation of an object on a moving platform,
`
`which relied on a particular method of utilizing raw data which
`
`eliminated complications inherent in conventional methods);
`
`Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258-59 (Fed.
`
`Cir.
`
`2017)
`
`(claims
`
`reciting
`
`programmable
`
`operational
`
`characteristics that provided flexibility not possessed by the
`
`prior art).
`
`
`
`Thus, the Federal Circuit’s case law suggests that
`
`particular and unconventional improvements to prior art are
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`§ 101-eligible. Such guideposts protect against overbroad
`
`patents preempting “the use of the underlying [abstract] ideas.”
`
`See, Alice, 134 S. Ct. at 2354; Accenture Global Servs., GmbH v.
`
`Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013)
`
`(expressing in pre-Alice opinion that “[i]n the case of
`
`abstractness, the court must determine whether the claim poses
`
`any risk of preempting an abstract idea.”) (citation and
`
`internal quotation omitted); accord Joao, 173 F. Supp. 3d at 728
`
`(expressing same).
`
`
`
`Chamberlain’s ‘256 patent claims recite such particular and
`
`unconventional improvements. The moveable barrier operator
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 12 of 110 PageID #:27233
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`(“MBO,” often used interchangeably in the briefing with garage
`
`door opener, or “GDO”) taught by the ‘275 patent does not merely
`
`receive transmissions, as did MBOs in the prior art; instead,
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`Chamberlain’s MBO experiences—via an onboard controller —status
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`conditions and then transmits them to other devices. This
`
`improvement eliminated the need for a “physical interface . . .
`
`to support numerous potentially utilized peripheral devices,”
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`thus cutting out “undesired additional cost when part of the
`
`[otherwise, necessarily installed] interface goes unused in a
`
`given installation.” (‘275 Patent 1:55-63, Dkt. 1-2).) In
`
`addition, the improvements taught by the ‘275 patent brought new
`
`compatibility to the MBO; the prior art, by contrast, “fail[ed]
`
`to permit compatible support of a given peripheral,” and
`
`precluded users from coupling their prior-art MBO with a new
`
`function “not specifically supported by a given [MBO].” (Id. at
`
`2:4-16.)
`
`
`
`Thus, contrary to TTI’s assertions, the ‘275 patent claims
`
`are unlike the ones in Vehicle Intelligence, which merely
`
`specified the abstract idea of testing operators of moving
`
`equipment for impairment and indicated that such testing could
`
`be conducted more quickly, accurately, and reliably by using an
`
`“expert system” that the claims failed to define. Vehicle
`
`Intelligence, 635 F. App’x at 917. Rather, the ‘275 patent
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 13 of 110 PageID #:27234
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`claims better fit the mold in Visual Memory LLC v. NVIDIA Corp.,
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`867 F.3d 1253, 1259 (Fed. Cir. 2017), where the Federal Circuit
`
`held claims patent-eligible which were directed to an improved
`
`computer
`
`memory
`
`system
`
`with
`
`programmable
`
`operational
`
`characteristics, which “provided flexibility that prior art
`
`processors did not possess, and obviated the need to design a
`
`separate memory system for each type of processor.” Core
`
`Wireless, 880 F.3d at 1362 (characterizing the findings in
`
`Visual Memory) (emphasis added). The ‘275 patent provides
`
`exactly this enhanced flexibility, which transcends prior art
`
`conventions. Finally, the particularity of the claims—
`
`specifically, that the controller must experience the status
`
`conditions—diminishes the preemption concerns that undergird the
`
`Alice inquiry. 134 S. Ct. at 2354.
`
`
`
`The asserted claims are directed to patent-eligible subject
`
`matter under § 101, so the Alice analysis ends before we reach
`
`step two. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
`
`1353 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2355). TTI’s
`
`JMOL Motion on § 101 ineligibility is denied.
`
`B. Invalidity of the ‘275 Patent
`
`1. Anticipation
`
`
`
`Under 35 U.S.C. § 102, a patent is invalid if a prior art
`
`reference discloses, either explicitly or inherently, every
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 14 of 110 PageID #:27235
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`limitation of the claimed invention. Liebel-Flarsheim Co. v.
`
`Medrad, Inc., 481 F.3d 1371, 1381 (Fed. Cir. 2007) (citation
`
`omitted). Judgment as a matter of law is appropriate if no
`
`reasonable jury could find, as the one here did, that the prior
`
`art did not anticipate, and thus invalidate, the patent. See,
`
`Krippelz v. Ford Motor Co., 667 F.3d 1261, 1268 (Fed. Cir. 2012)
`
`(applying Seventh Circuit JMOL standard). As it argued at
`
`trial, TTI contends that the Menard PCT prior art anticipated
`
`claims 1, 5, and 15 of the ‘275 patent.
`
`These claims recite:
`
`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.
`
`5. The movable barrier operator of claim 1 wherein the
`plurality of operating states includes at least one of:
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 15 of 110 PageID #:27236
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`
`moving a movable barrier in a first direction;
`
`moving the movable barrier in a second direction;
`
`reversing movement of the movable barrier;
`
`halting movement of the movable barrier;
`
`detecting a likely presence of an obstacle to movement
`of the movable barrier;
`
`detecting a likely proximal presence of a human;
`
`receiving a wireless remote control signal;
`
`receiving a wireline remote control signal;
`
`receiving a learning mode initiation signal;
`
` a
`
` a
`
` lighting status change;
`
` vacation mode status change;
`
`
`detecting a likely proximal presence of a vehicle;
`
`detecting the identification of a proximal vehicle;
`and
`
`receiving an operating parameter alteration signal.
`
`15. The method of claim 14 wherein detecting at least one
`predetermined condition includes detecting at least one of:
`
`
`moving a movable barrier in a first direction;
`
`moving the movable barrier in a second direction
`
`reversing movement of the movable barrier;
`
`halting movement of the movable barrier;
`
`detecting a likely presence of an obstacle to movement of
`the movable barrier;
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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 16 of 110 PageID #:27237
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`detecting a likely proximal presence of a human;
`
`receiving a wireless remote control signal;
`
`receiving a wireline remote control signal;
`
`receiving a learning mode initiation signal;
`
` a
`
` a
`
` lighting status change;
`
` vacation mode status change;
`
`
`detecting a likely proximal presence of a vehicle; and
`
`receiving an operating parameter alternation signal.
`
`(‘275 Patent 8:5-21, 8:30-46, 9:39-55, Dkt. 1-2.) Claim 1
`
`identifies a movable barrier operator comprising both a
`
`controller and a transmitter. (Id. at 8:5-21.) But TTI did not
`
`present any evidence that the Menard GDO 1000—as opposed to an
`
`add-on module to that GDO—contained a controller or wireless
`
`transmitter. Indeed, Chamberlain’s technical expert, Dr. Rhyne,
`
`presented evidence showing that the Menard GDO 1000 and the
`
`system 10000 (the aforementioned module) each have their own,
`
`separate controllers and power supplies. (Id. 1297:16-1299:8.)
`
`In response to this, TTI emphasizes that the Chamberlain claims
`
`do not require the controller to be housed in the GDO’s head
`
`unit. (See, Chamberlain’s Resp. to JMOL Mot. at 9, Dkt. 651
`
`(Chamberlain admitting its asserted claims do not require “the
`
`controller, the movable barrier interface, and the wireless
`
`status condition transmitter to be located in a single
`
`
`- 16 -
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`

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`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 17 of 110 PageID #:27238
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`housing.”).) But Chamberlain explains that the key limitation
`
`in its claims is not whether the controller and transmitter
`
`share a housing, but instead whether they are part of the GDO at
`
`all, instead of—as in Menard’s system 10000—part of a separate
`
`module that can send signals to the GDO. Chamberlain presented
`
`evidence of this distinction through Dr. Rhyne’s testimony:
`
`A: [T]he . . . Menard module . . . has a separate
`module that you add on top of the garage door and, as
`a result, the controller in the module is what sends
`out the state signal, not the controller in the GDO.
`
`
`. . .
`
`
`Q: Dr. Rhyne, you were asked a couple questions about
`whether the Menard module, that modular system we
`discussed, system 10000, can send control signals to
`the GDO 1000. In your opinion, is that -- does that
`make the module in Menard a movable barrier operator
`under the Court’s constructions?
`
`A: No. It’s not the movable barrier operator in Figure
`37. That movable barrier operator is the GDO 1000 down
`in the bottom. The top guy is not a movable barrier
`operator.
`
`Q: And can a smartphone also send control signals to
`open and close a door on a garage door opener?
`
`A: Yes.
`
`Q: And is a smartphone a movable barrier operator?
`
`A: Not in that sense, no, any more than the pushbutton
`switch, the 6500 is a movable barrier operator.
`
`(Rhyne Tr. 1310:18-21, 1374:9-22.) This is substantial evidence
`
`that Chamberlain’s asserted claim 1 claims limitations not
`
`
`- 17 -
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`

`

`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 18 of 110 PageID #:27239
`
`present in the prior art, so JMOL is not appropriate as to TTI’s
`
`anticipation argument as to claim 1.
`
`
`
`As for claims 5 and 15, Chamberlain contends that JMOL is
`
`not appropriate because both claims recite a limitation that is
`
`not disclosed in the Menard prior art. Specifically, claim 5
`
`depends from claim 1’s recitation of “a controller having a
`
`plurality of potential operational status conditions defined, at
`
`least in part, by a plurality of operating states,” and claim 15
`
`depends from claim 14’s recitation of “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[.]” (See, Rhyne Tr.
`
`1309:21-22; Foley Tr. 871:5-8 (both citations describing
`
`dependent relationships of claims).) In contrast, the Menard
`
`prior art does not explain how its signals are defined:
`
`Q. Do [Dr. Foley’s slides concerning the Menard prior
`art] show a condition defined by a plurality of states
`as claimed?
`
`A. They show things that the Menard module can report
`like whether the door is open, closed, or partially
`closing, freezing, normal, overheating on the
`temperature of the unit, but it doesn’t – there’s no
`disclosure of how those things are defined, and there
`are other ways to do it than having states that would
`define those conditions.
`
`Q. Can you provide us one example?
`
`
`
`- 18 -
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`
`

`

`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 19 of 110 PageID #:27240
`
`A. A good one would be door position. You can report
`the number of times the motor has turned, so the
`rotations. And every rotation incrementally pulls the
`door up or, if it’s going the other way, it lets it
`down a little bit. And then you can leave it up to the
`receiver at the other end to decide how many rotations
`is it going to take to get the door open, how many is
`it going to take to get the door to close. And if it
`sees the rotations coming at a different speed, it
`knows that it’s partially closing. Those are not
`reporting specific states in the message itself.
`
`(Rhyne Tr. 1307:16-1308:9.) Simply put, the jury heard
`
`substantial evidence that while the Menard PCT status conditions
`
`could be defined in a number of ways, Chamberlain’s ‘275 claims
`
`limit its status conditions to one type of definition. Because
`
`that limitation appears only in the asserted claims, the Menard
`
`prior art does not anticipate them. See, Liebel-Flarsheim Co.,
`
`481 F.3d at 1381.
`
`2. Obviousness
`
`
`
`TTI also contends that the Cohen prior art renders the
`
`asserted claims obvious. Under 35 U.S.C. § 103, “[o]bviousness
`
`is a question of law based on underlying findings of fact.”
`
`Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010)
`
`(citation omitted). The underlying factual inquiries include:
`
`(1) the scope and content of the prior art, (2) the differences
`
`between the prior art and the claims at issue, (3) the level of
`
`ordinary skill in the art, and (4) any relevant secondary
`
`considerations, such as commercial success, long felt but
`
`
`- 19 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 20 of 110 PageID #:27241
`
`unsolved needs, and the failure of others. Id. (citing Graham
`
`v. John Deere Co., 383 U.S. 1, 17-18 (1966)).
`
`
`
`TTI contends that a person of ordinary skill in the art
`
`would have been motivated to combine the Menard PCT door-
`
`position prior art discussed earlier with the Cohen prior art,
`
`which TTI maintains teaches the signal format recited in the
`
`‘275 patent. But at trial, Chamberlain presented evidence
`
`showing that the Cohen prior art does not claim sending status
`
`conditions defined by two or more states. (Rhyne Tr. 1312:3-9
`
`(“All [the Cohen reference] does is it talks about a state
`
`signal that indicates in a way that is not described that the
`
`door is opening, closing, opening, or closing. And as I said,
`
`there are certainly ways to do it that doesn’t involve sending a
`
`state -- a status condition signal that gives you two states as,
`
`for example, that rotational information as an alternative.”).)
`
`Further, Dr. Rhyne explained that just like the Menard prior
`
`art, the Cohen reference teaches an add-on modular device,
`
`meaning that once again a controller in the module sends out the
`
`signal—not the controller in the GDO itself. (Rhyne Tr.
`
`1310:11-21.) Because, according to Dr. Rhyne’s testimony, this
`
`combination does not teach the limitations of the ‘275 patent
`
`claims, the jury heard substantial evidence supporting a finding
`
`of nonobviousness. See, Hearing Components, Inc. v. Shure Inc.,
`
`
`- 20 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 21 of 110 PageID #:27242
`
`600 F.3d 1357, 1374 (Fed. Cir. 2010), abrogated on other grounds
`
`by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120
`
`(2014).
`
`C. Literal Infringement of the ‘275 Patent
`
`
`
`This argument is nothing new. TTI moved for pre-trial
`
`summary judgment of non-infringement of the ‘275 patent, and the
`
`Court denied that motion. (June 21, 2017, Order, Dkt. 397.)
`
`TTI posits once more that the Ryobi signal does not
`
`“correspond[] to a present operational status condition defined,
`
`at least in part, by at least two from the two or more
`
`operational conditions being experienced by the controller,” as
`
`recited in claims 1 and 24. Chamberlain, 2017 WL 1304559
`
`(emphasis added). According to TTI, this is so because the
`
`Ryobi
`
`controller
`
`cannot
`
`simultaneously
`
`experience
`
`two
`
`operational conditions given that—in TTI’s reading—such
`
`conditions are mutually exclusive, e.g., “[t]he controller
`
`cannot simultaneously be experiencing door open, closed,
`
`opening, closing, or fault.” (Mem. in Supp. at 18, Dkt. 618.)
`
`But as the Court has already noted, this contention misses the
`
`mark: “[M]any (if not all) GDO components contain multiple
`
`potential but mutually exclusive positions or states, making it
`
`unclear how a transmitter as [TTI] conceive[s] [is recited by
`
`the ‘275 patent] would even be operative.” (June 21, 2017,
`
`
`- 21 -
`
`
`

`

`Case: 1:16-cv-06097 Document #: 740 Filed: 05/23/18 Page 22 of 110 PageID #:27243
`
`Order at 4, Dkt. 397.) In short, TTI’s renewed argument depends
`
`upon a narrow reading of “operational status condition” which
`
`does not square with this Court’s earlier construction of the
`
`term as encompassing status conditions of other categories of
`
`information the controller may experience (for example, light
`
`on/off, vacation mode on, etc.). (See, id. at 5-6 (“[a present]
`
`status condition [may] be defined (or determined, or its meaning
`
`clarified) by multiple operational conditions being experienced
`
`by the controller (for example, lights on in tandem with, as a
`
`result of, or in response to the garage door’s opening, a
`
`sensor’s detection of a proximal vehicle, or a user’s flipping
`
`the vacation mode switch).”).)
`
`
`
`Claim 1 recites a transmitter that 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

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