Case: 1:16-cv-06097 Document #: 136 Filed: 10/12/16 Page 1 of 7 PageID #:6709
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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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`The Honorable Harry D. Leinenweber
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`Magistrate Judge Sidney Schenkier
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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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`Plaintiff,
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`Defendants.
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`PLAINTIFF’S OPPOSITION TO DEFENDANTS’ MOTION TO RECONSIDER
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`Consistent with its discussion at the October 12, 2016 hearing, The Chamberlain Group,
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`Inc. (“CGI”) submits this opposition to Defendants’ (collectively “TTI”) Motion to Reconsider
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`Order Modifying the Preliminary Injunction Order. See Dkt. No. 130 (“Motion”).
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`The parties agreed to the process of the Court entering the preliminary injunction order
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`without the explicit “directly or indirectly” language and agreed that the Court could amend the
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`preliminary injunction order after the parties briefed this issue. See the September 20, 2016
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`Status Hrg. Tr. at pages 9 to 11. TTI should be estopped from challenging that agreement now.
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`Had CGI known that TTI would later challenge this agreement, CGI would have suggested that
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`the court not issue the preliminary injunction until all issues were resolved. CGI has relied upon
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`this agreement and TTI’s attempt to circumvent this process now is unduly prejudicial.
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`Additionally, the Court has the power to clarify the preliminary injunction order for at
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`least the reasons set forth below.
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`

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`Case: 1:16-cv-06097 Document #: 136 Filed: 10/12/16 Page 2 of 7 PageID #:6710
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`I.
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`THE COURT MAY ENJOIN INDIRECT INFRINGEMENT
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`TTI’s argument that the Court was required to “issue findings regarding induced or
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`contributory infringement” (Motion at 4) is misplaced. The Court has broad equitable powers to
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`enjoin infringement. See 35 U.S.C. § 283 (courts “may grant injunctions in accordance with the
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`principles of equity to prevent the violation of any right secured by patent, on such terms as the
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`court deems reasonable”); H-D Mich., LLC v. Hellenic Duty Free Shops S.A., 694 F.3d 827, 843
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`(7th Cir. 2012) (“The appropriate scope of the injunction is best left to the district court’s sound
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`discretion, because the district court is in the best position to weigh these interests.”). As such,
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`courts may broadly enjoin any infringing act regardless of whether the specific act was explicitly
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`discussed in the preliminary injunction opinion. See, e.g., Motorola, Inc. v. Comput. Displays
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`Int’l, Inc., 739 F.2d 1149, 1156 (7th Cir. 1984) (allowing court to enjoin additional products
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`under the patent law doctrine of equivalents concept, even when the consent decree injunction
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`only referenced enjoining the specific product model discussed at the hearing). Indeed, TTI’s
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`argument ignores that the Court has enjoined “products that are not colorably different” from the
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`Ryobi GD200—even though there are no specific findings of fact relating to these unnamed
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`products. See also Brown v. Plata, 563 U.S. 493, 538 (2011) (“Once invoked, the scope of a
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`district court’s equitable powers is broad, for breadth and flexibility are inherent in equitable
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`remedies”) (internal quotations omitted).
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`II.
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`THE COURT IS PERMITTED TO CLARIFY THAT THE INJUNCTION
`ENJOINS INDIRECT INFRINGEMENT
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`The Court has “considerable discretion” in determining whether an injunction should be
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`modified pursuant to Rule 62(c) in order to maintain the status quo of the parties pending the
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`outcome of the appeal. Duthie v. Matria Healthcare, Inc., 543 F. Supp. 2d 958, 960 (N.D. Ill.
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`2008); see also John M. ex rel Christine M. v. Bd. of Educ. of Evanston Twp. High Sch. Dist.
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`2
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`Case: 1:16-cv-06097 Document #: 136 Filed: 10/12/16 Page 3 of 7 PageID #:6711
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`202, No. 05 C 6720, 2006 WL 2796420 at *4 (N.D. Ill. Sept. 26, 2006) (under Rule 62(c), courts
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`may “modify injunctive relief with regard to the status quo during the pendency of the appeal”
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`but may not “reconsider and thus modify the substantive opinion granting injunctive relief).
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`Additionally, the Federal Circuit has held that an injunction is not even modified where the Court
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`“only clarified, and did not modify, the original injunction.” Aevoe Corp. v. AE Tech Co., 727
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`F.3d 1375, 1384 (Fed. Cir. 2013) (noting that the clarification “did not substantially alter the
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`legal relationship between the parties”).
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`The Court was therefore permitted under Rule 62(c) to clarify that the preliminary
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`injunction should prohibit TTI from indirectly infringing the ’275 Patent. This clarification
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`preserves the status quo of the parties by ensuring that the parties remain in the same situation
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`they were in prior to TTI’s infringement. The Court did not reconsider or modify the substantive
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`opinion granting relief, it merely clarified that it “intended to craft the injunction broadly and to
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`enjoin the potential for direct and indirect infringement.” Dkt. No. 129 at 5. This falls squarely
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`within Aevoe and does not substantially alter the legal relationship of the parties.
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`Further, the Court’s clarification is allowable because it retains jurisdiction over
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`“collateral issue[s] … which would not affect the issues currently being considered by the Court
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`of Appeals.” See Thomas & Betts Corp. v. Panduit Corp., No. 94 C 2656, 1995 WL 103309 at
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`*2 (N.D. Ill. Feb. 28, 1995). Here, the Court did not alter any of its factual findings or
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`conclusions of law that would be under consideration during the appeal. Instead, the Court
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`merely clarified that TTI has been enjoined broadly in order to preserve the status quo that
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`existed prior to TTI’s infringement. Though the proposed modification in Thomas & Betts would
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`have effectively dissolved the entire injunctive order and was therefore impermissible, the court
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`distinguished it from other cases in which the modification was permissible because it could
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`“never result in the dissolution of the very issues on appeal before the Appellate Court.” Id. So
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`3
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`Case: 1:16-cv-06097 Document #: 136 Filed: 10/12/16 Page 4 of 7 PageID #:6712
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`too here, the clarification regarding indirect infringement will not dissolve the appeal nor will it
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`in any way impede the Federal Circuit’s ability to review the Court’s opinion granting a
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`preliminary injunction.
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`As such, TTI’s argument that “this Court ‘adjudicate[d] . . . substantial rights directly
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`involved in the appeal,’ namely the scope of the injunction itself” (Motion at 4) is misplaced.
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`Indeed, TTI filed its appeal brief yesterday (Federal Circuit Case No. 16-2713, Dkt. No. 29) and
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`did not argue any error with respect to the Court’s finding of a likelihood of showing
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`infringement. See, e.g., Exhibit 1 (Table of Contents). Further, the case law, including all of the
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`cases cited by TTI, acknowledge that some modifications are permissible. TTI has completely
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`failed to show that the Court’s clarification runs afoul of Rule 62(c), nor has TTI shown that the
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`Court’s clarification does anything more than preserve the status quo. Indeed, each of the cases
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`that TTI cites are inapposite or merely stand for the proposition that, unlike here, courts cannot
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`modify an injunction when it would require hearing new evidence or modifying the findings
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`supporting an injunction:
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`
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`Schwinn Bicycle Co. v. Ross Bicycles, Inc. held that modification was
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`inappropriate because it would “require the court to examine new evidence,” including various
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`affidavits and exhibits submitted by the parties in connection with the motion to reconsider. No.
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`87 C 0914, 1988 WL 48329 at *1 & n. 2 (N.D. Ill. May 9, 1998);
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`
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`Griggs v. Provident Consumer Discount Co., cited in Schwinn, is inapposite as it
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`has nothing to do with a preliminary injunction, but decides the question of the effect of
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`prematurely-filed notice of appeal. 459 U.S. 56 (1982);
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`
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`Power Controls Corp. v. Hybrinetics, Inc. explained that a court was not
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`permitted to “amend its findings of fact and conclusions of law after a notice of appeal has been
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`filed.” 806 F.2d 234, 237 (Fed. Cir. 1986). The district court had issued new factual findings
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`4
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`Case: 1:16-cv-06097 Document #: 136 Filed: 10/12/16 Page 5 of 7 PageID #:6713
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`while the case was on appeal, which made the modification improper. Id. at 238; also compare
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`id. at 236 (original factual findings) with id. at 237 (modified factual findings);
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`
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`Chemlawn Servs. Corp v. GNC Pumps, Inc. explained that a district court’s
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`attempt to provide all of its factual findings after an appeal had been filed was an improper
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`modification. 823 F.2d 515, 516-18 (Fed. Cir. 1987);
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`
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`Fairchild Semiconductor Corp. v. Third Dimension (3D) Semiconductor, Inc.
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`does not relate to any modification of an injunction, but instead states general rules regarding
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`what a district court may do while a preliminary injunction is appealed. No. 2009-1168, 2009
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`WL 790105 at *1 (Fed. Cir. Mar. 25, 2009);
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`
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`Duthie v. Matria Healthcare, Inc. considered a proposed modification to
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`injunction and rejected it because the plaintiff failed to show harm. 543 F. Supp. 2d 958, 961
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`(N.D. Ill. 2008). The Court did not specifically address whether the proposed modification would
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`have been permissible if the plaintiff had shown a likelihood of irreparable harm; and
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`
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`John M. ex rel. Christine M. v. Board of Education of Evanston Township High
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`School District 202 relates only to when a district court should stay a preliminary injunction
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`pending appeal, and did not analyze any specific modification or clarification of an injunction on
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`appeal. No. 05 C 6720, 2006 WL 2796420 at * 4 (N.D. Ill. Sept. 26, 2006).
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`Thus, none of TTI’s cases consider any situation similar to the instant matter. The only
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`modifications struck down in TTI’s cases were modifications that required considering new
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`evidence or making new factual findings or conclusions of law. As this Court did not consider
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`new evidence, nor make new factual findings or conclusions of law, TTI’s cases do not forbid
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`the Court from entering the proposed clarification regarding indirect infringement.
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`5
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`Case: 1:16-cv-06097 Document #: 136 Filed: 10/12/16 Page 6 of 7 PageID #:6714
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`III. THE COURT SHOULD DENY TTI’S MOTION BECAUSE IT WOULD
`PREJUDICE CGI BY ALLOWING INDIRECT INFRINGEMENT DESPITE CGI
`RAISING THIS ARGUMENT PRIOR TO TTI FILING ITS APPEAL
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`The Court should use its “considerable discretion,” Duthie, 543 F. Supp. 2d at 960, to
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`deny TTI’s motion because allowing indirect infringement would unfairly prejudice CGI given
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`that the Court had ordered the parties to brief the issue of indirect infringement on September 20,
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`2016, one week before TTI filed its appeal. Dkt. No. 105.1
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`Allowing TTI to entirely circumvent the parties’ agreement to brief the direct/indirect
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`infringement issue would be extremely prejudicial to CGI. TTI continues to advertise the
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`infringing product on its website today, and provides a link to potential customers where they
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`can buy this product at the Home Depot. See Dkt. No. 128 at 2. CGI proposed that the
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`preliminary injunction forbid indirect infringement immediately after the Court issued its opinion
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`granting a preliminary injunction, pursuant to the Court’s instructions to the parties to confer and
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`present a proposed preliminary injunction order. The Court should not allow TTI to take
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`advantage of the Court’s request for supplemental briefing – which occurred a week prior to TTI
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`filing its appeal – to continue infringing the ’275 Patent. Allowing TTI to indirectly infringe the
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`’275 Patent would continue to harm CGI by continuing to reduce its sales and continuing to
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`erode prices, as well as continuing all of the other harms the Court has already determined to be
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`irreparable in granting CGI’s motion for preliminary injunction. See Dkt. No. 107. The Court
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`should therefore exercise its discretion to deny this Motion and avoid that unjust result.
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`1 TTI alleges that reconsideration is appropriate because TTI had not filed its appeal when the
`parties briefed the potential scope of the injunction. Motion at 2 (“Reconsideration is appropriate
`here because the facts have changed”). This is incorrect: TTI filed its Notice of Appeal (Dkt. No.
`113) prior to filing its briefing on the scope of the injunction (Dkt. No. 115), but included no
`discussion of the alleged jurisdictional defect in its briefing on the scope of the injunction. As
`such, the appeal was not “new evidence” and the Court should also deny TTI’s motion under the
`general standard underlying motions for reconsideration.
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`6
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`Case: 1:16-cv-06097 Document #: 136 Filed: 10/12/16 Page 7 of 7 PageID #:6715
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`IV. CONCLUSION
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`CGI therefore respectfully requests the Court deny TTI’s Motion to Reconsider Order
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`Modifying the Preliminary Injunction Order.
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`Dated: October 12, 2016
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`By:
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`7
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`/s/ Michael Rueckheim
`Katherine Vidal (pro hac vice)
`vidal@fr.com
`Matthew McCullough
`mccullough@fr.com
`FISH & RICHARDSON P.C.
`500 Arguello Street., Suite 500
`Redwood City, California 94063
`Telephone: (650) 839-5070
`Facsimile: (650) 839-5071
`
`Benjamin C. Elacqua (pro hac vice)
`elacqua@fr.com
`Michael Rueckheim
`rueckheim@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 S. Sixth Street
`Minneapolis, MN 55402
`Telephone: (612) 335-5070
`Facsimile: (612) 288-9696
`
`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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`