Case: 1:16-cv-06097 Document #: 226 Filed: 12/29/16 Page 1 of 25 PageID #:9142
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`
`
`Civil Action No.: 1:16-cv-06097
`
`The Honorable Harry D. Leinenweber
`
`Magistrate Judge Sidney Schenkier
`
`PUBLIC, REDACTED VERSION
`
`
`Plaintiff,
`
`THE CHAMBERLAIN GROUP, INC.,
`
`
`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.
`
`PLAINTIFF’S BRIEF IN SUPPORT OF ITS MOTION TO ENFORCE
`PRELIMINARY INJUNCTION
`
`
`
`
`

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`Case: 1:16-cv-06097 Document #: 226 Filed: 12/29/16 Page 2 of 25 PageID #:9143
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`
`
`TABLE OF CONTENTS
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` 
`INTRODUCTION ................................................................................................................... 1
`I.
`II. BACKGROUND ..................................................................................................................... 3
`A. Procedural History ............................................................................................................... 3
`B. Claim 1 of the ’275 Patent ................................................................................................... 4
`III. ARGUMENT ....................................................................................................................... 7
`A. Under The Proper Claim Construction: Limitation 1[D][1] Only Requires
`Transmission of a Signal That Corresponds to A (i.e., one or more)
`“Operational Status Condition” ........................................................................................... 8
`B. Both Sides’ Experts Agree that Limitation 1[D][1] Only Requires
`Transmission of a Signal That Corresponds to a (i.e., Single) “Operational Status
`Condition” .......................................................................................................................... 10
`C. Defendants Rely Upon Misquotes of the Preliminary Injunction Transcript to
`Support Its New Claim Construction Position ................................................................... 11
`D. The Redesigned Ryobi GDO Infringes Under the Proper Claim Construction
`of Element 1[D][1] ............................................................................................................. 13
`E. The Redesigned Ryobi GDO Infringes Even Under Defendants’
`Multiple Constructions....................................................................................................... 15
`F. The Redesigned Ryobi GDO Infringes Under the Doctrine of Equivalents ...................... 16
`G. The Redesigned Ryobi GDO is Not Colorably Different from the Product at
`Issue During the Preliminary Injunction ........................................................................... 19
`IV. CONCLUSION .................................................................................................................. 20
`
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`i
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`Case: 1:16-cv-06097 Document #: 226 Filed: 12/29/16 Page 3 of 25 PageID #:9144
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`AquaTex Indus. v. Techniche Solutions,
`419 F.3d 1374 (Fed. Cir. 2005)....................................................................................17, 18, 19
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008)..................................................................................................8
`
`CAE Screenplates Inc. v. Heinrich Fiedler GMBH & Co.,
`224 F.3d 1308 (Fed. Cir. 2000)..................................................................................................9
`
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341 (Fed. Cir. 2013)..................................................................................................5
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`535 U.S. 722, 152 L. Ed. 2d 944, 122 S. Ct. 1831 (2002) .......................................................17
`
`Graver Tank & Mfg. Co. v. Linde Air Products Co.,
`339 U.S. 605 (U.S. 1950) .........................................................................................................16
`
`KCJ Corp. v. Kinetic Concepts, Inc.,
`223 F.3d 1351 (Fed. Cir. 2000)..................................................................................................8
`
`Regents of the Univ. of Cal. v. DakoCytomation Cal., Inc.,
`517 F.3d 1364 (Fed. Cir. 2008)................................................................................................18
`
`Spectrum Int’l, Inc. v. Sterilite Corp.,
`164 F.3d 1372 (Fed. Cir. 1998)..................................................................................................8
`
`TiVo, Inc. v. EchoStar Corp.,
`646 F.3d 869 (Fed. Cir. 2011)..................................................................................................19
`
`
`
`ii
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`Case: 1:16-cv-06097 Document #: 226 Filed: 12/29/16 Page 4 of 25 PageID #:9145
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`I.
`
`INTRODUCTION
`
`Plaintiff The Chamberlain Group, Inc. (“CGI”) submits this brief in support of its Motion
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`to Enforce Preliminary Injunction and for Order to Show Cause Why Defendants Should Not Be
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`Held in Contempt of This Court’s Order of September 27, 2016 (ECF No. 211).
`
`Defendants admit
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`
`
`
`
`. Though Defendants represent to this Court that they
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`“designed around” the ’275 patent, the fact that they try to mislead this Court with inapposite
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`testimony taken out of context, and the fact that they misrepresented the issues on appeal,
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`highlights that the “redesign” does nothing to avoid the actual claim limitations of the ’275 patent.
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`The claims require (i) “a controller having a plurality [i.e. two or more] of potential
`
`operational status conditions” and (ii) transmitting a signal that “corresponds to a [i.e., one]
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`present operation status condition.” 1 The claim construction issue during the Preliminary
`
`Injunction hearing and on appeal relates to the former –what it means for a controller to “have” a
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`plurality of operational status conditions: must the controller be “self aware” and “have” the
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`conditions itself (as this Court concluded) or may it merely be a pass-through device passing along
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`status conditions of external sensors. This Court never addressed, and the Appellate court is not
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`positioned to address, what information must be “transmitted.”
`
`Defendants’ “transmit” argument is a new one that lacks merit. Defendants are using this
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`argument to buy themselves yet another window to sell product into Home Depot.
`
`
`1 The claims further recite that the status condition signals are “defined … by a plurality of
`operating states.” An example would be transmitting a signal relating to the status of a light,
`where the message format is defined by the “on” and “off” operating states.
`1
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`Defendants now proffer that the claims require transmitting, in a single signal, information
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`about “a plurality” of states relating to a plurality of status conditions. See ECF 203 at 3 (noting
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`that the redesigned product does not include state information about the status of both the door and
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`the light). Defendants’ position is belied by the claims themselves, the specification as well as by
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`Defendants’ own testimony. See ECF 72-2 at ¶ 34 (“Defendants’ expert testifying that the “status
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`condition signal corresponds to at least one of the potential operational status conditions of the
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`movable barrier operator”). In fact, Defendants’ “redesigned product” is exactly what was
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`envisioned by the patent and covered by the claims. Compare ECF 203 at 3 (“if a door position
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`has changed, the redesigned product would transmit a single signal including only information
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`about the change in door position”) with ’275 patent at 4:67-5:5 (“In a preferred embodiment, this
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`transmission occurs automatically in response to when the controller 11 detects at least one
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`predetermined condition, which predetermined condition preferably, but not necessarily,
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`corresponds to the present operational status being reported via the transmission.”) (emphasis
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`added); id. at 3:16-18 (“a given movable barrier operator can be set to wirelessly transmit a wide
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`variety of simple messages regarding its operational states”); id. at 2:64-67 (“In a preferred
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`embodiment, the wireless status condition data transmitter transmits a status condition signal that
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`corresponds to at least one of the potential operational status conditions.”).
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`Given this fact, Defendants try to obfuscate the issue by citing to testimony and arguments
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`relating to the “plurality of potential operating status conditions” that the controller has and
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`suggesting to this Court that that those statements were made in the context of what the controller
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`transmits in a single transmission. All the testimony and arguments cited by defendants are taken
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`completely out of context. Defendants’ violation of the Court’s Preliminary Injunction Order and
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`intentional misuse of the record in this case is egregious and sanctionable.
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`2
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`II.
`
`BACKGROUND
`A.
`
`Procedural History
`
`The Court’s Order granting a preliminary injunction (“PI Order,” ECF No. 111) is dated
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`September 20, 2016. The PI Order barred Defendants from importing the Ryobi GD200 into the
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`United States, and from making, using, selling, or offering to sell the Ryobi GD200 in a
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`configuration that infringes claims 1 and 5 of the ’275 Patent or products that are not colorably
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`different therefrom within the United States. ECF No. 111 at 2. This Order was based on a finding
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`that the Ryobi GD200 likely infringes claims 1 and 5 of U.S. Patent No. 7,224,275 (“the ’275
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`Patent”). Id.
`
`Defendants made minor software changes unrelated to the ’275 claims to the Ryobi GD200
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`and, in October, unilaterally and secretly decided to resume sales.
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`Plaintiff took the deposition of Defendants’ VP of Sales, Mr. Kevin Cameron, on
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`December 6, 2016.
`
` See ECF 211 at 4. That same day,
`
`
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`Defendants filed a notice of redesign. ECF 203. The notice stated that the “redesigned product no
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`longer transmits information about multiple operating states in one signal.” Id. at 3. Instead, the
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`notice claimed that “the redesigned product would transmit one signal that includes information
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`about the change in the position of the door, and separately, transmit a second signal that includes
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`information about the change in the status of the light.” Id. The notice misrepresented the record
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`before this Court in arguing that the redesign was an appropriate work around.
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`On the very next day, Plaintiff filed a motion to enforce the PI Order and for an order to
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`show cause why Defendants should not be held in contempt. ECF 211. Plaintiff’s motion noted
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`Defendants’ continued efforts to avoid this Court’s order.
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`3
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`B.
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`Claim 1 of the ’275 Patent
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`Claim 1 of the ’275 patent is reproduced below with alphanumeric identifiers and color
`
`coding addedto the claim elements forease of reference:
`
`1[pre] A movable barrier operator comprising:
`
`Ifa] a controller having a plurality of pofential operational
`status conditions defined, at least in part, by a plurality of
`operating states;
`
`1[b] a movable barrier interface that is operably coupled to the
`controller;
`
`1[c] a wireless status condition data transmitter that is operably
`coupled to the controller,
`
`1[d] wherein the wireless status condition data transmitter
`transmits a status condition signal that:
`
`to a present operational status
`1[d][1] corresponds
`condition defined, at least in part, by at least two operating
`states from the plurality of operating states; and
`
`1[d][2] 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.
`
`
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`

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`As notedin 1[a], the controller of the invention has a plurality (two or more)’ porential
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`operational status conditions. For example, the status of a lightis a potential operational status
`
`condition. See ’275 at 4:52-55 (“the controller 11 can be self-aware of such operational status
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`conditions (as when, for example, the controller 11 is aware that it has switched a given ambient
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`light fixture on or off) ...”). The status of a door position is a second potential operational status
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`condition. See PI Hrg. Tr. at 113:5-12.
`
`1[a] further recites that the plurality ofpofential operational status conditions are defined
`
`by two or more operating states. For example, the status of a light can be defined by the operating
`
`states ofstate 0 (“on’’) orstate 1 (“off”). See PI Hrg. Tr. at 123:5-9(
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`ee): °275 patent at 5:30-34 (describing a “peripheral
`
`lighting unit” that “receiv[es] a status condition signal from the movable barrier operator 10
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`indicating that the movable barrier operator 10 has switched on its own lights”) (emphasis added).
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`1[a] further recites a transmitter that transmits a status condition signal that reflects the
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`present operational status condition. For example, if the controller turns on a light, the status
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`condition signal can communicate that changein state (off to on) of the light status. See ’275
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`patent at 5:30-34 (discussing a status condition signal containing information abouta light being
`
`switched on or off). Similarly, if the controller directs the door to move inafirst or second
`
`direction (i.e., opening or closing) the status condition signal can communicate that change in
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`3 See Cheese Sys. v. Tetra Pak Cheese & PowderSys., 725 F.3d 1341, 1348 (Fed. Cir. 2013)
`(“The district court correctly assessed that a
`plurality
`sumply means two or more.”).
`4 See PI Hrg. Tr. at 115:22-25
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`

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`state (open to closed) of the door status. See PI Hrg. Tr. at 113:5-12 (Dr. Rhyne testifying: “I
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`identified two operational status conditions, one being the status of the door. Is it up or down, or
`
`is it moving up or down? And then I also identified to a second operational status condition
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`associated with the light of the Ryobi device, and that would be is it -- as far as the controller is
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`concerned, has the controller decided that it’s on or has the controller decided that it’s off”). The
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`present operational status condition is also “defined” “by at least two operating states from the
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`plurality of operating states” that were recited with respect to the potential operational status
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`condition. For example, transmission of a present light status condition is defined by the
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`potential light operating states of “on” and “off.”
`
`The patent explains that the transmission of signal representing a status condition can
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`occur upon detecting a predetermined condition, or alternatively, signals can be transmitted
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`periodically upon the expiration of a predetermined period of time:
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`the wireless status condition data transmitter 15 serves to transmit a status condition signal
`that represents a present operational status condition of the controller 11. In a preferred
`embodiment, this transmission occurs automatically in response to when the controller 11
`detects at least one predetermined condition, which predetermined condition preferably, but
`not necessarily, corresponds to the present operational status being reported via the
`transmission. . . . An illustrative (but not all-inclusive) listing of potentially useful
`predetermined conditions might include:
`
` moving the 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;
`
`…
`
` expiration of a predetermined duration of time . . . .
`
`’275 Patent at 4:65-5:22. As the patent notes, “a given movable barrier operator can be set to
`
`wirelessly transmit a wide variety of simple messages regarding its operational states.” Id. at 3:16-
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`18. “In a preferred embodiment, the wireless status condition data transmitter transmits a status
`
`6
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`condition signal that corresponds to at least one of the potential operational status conditions.”
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`Id. at 2:64-67.
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`In other words, the controller itself has a plurality of potential operational status
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`conditions (e.g., a lighting status change, door state, etc.) and, in the preferred embodiment, the
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`wireless status condition data transmitter transmits a status condition signal that corresponds to
`
`at least one of the potential operational status conditions (for example, the lighting status
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`change). The controller transmits a status condition signal that reflects the present state (out of
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`two or more potential states, here “on” or “off”) of the at least one present operational status
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`condition. In a preferred embodiment, the transmission of the status condition signal that
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`corresponds to the present operational status condition (e.g., “a lighting status change”) “occurs
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`automatically in response to when the controller 11 detects at least one predetermined condition”
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`(e.g., “expiration of a predetermined duration of time”). Therefore, in the preferred embodiment,
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`when the controller detects that a time period has expired and it has turned off the light, it transmits
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`a status condition signal indicating that the light is off.
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`III. ARGUMENT
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`Defendants’ redesign argument, when stripped to its core, is that the claims should be read
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`to require transmitting a signal that includes a plurality of states (by transmitting the states of a
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`plurality of status conditions that includes, for example, both the state of the door position status
`
`and the state of the light status). See ECF 203 at 3. This argument is unsupportable under a plain
`
`reading of the claims and under the Federal Circuit’s canons for proper claim construction. Indeed,
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`both sides’ experts have testified that the claim only requires transmitting a signal that corresponds
`
`to a single status condition. Further, as shown below, Defendants’ Notice of Redesign relies
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`heavily on quotations that only relate to claim limitation 1[a] (a controller having a plurality of
`
`potential status conditions), and do not address claim 1imitation 1[d][1] (transmitting a status
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`7
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`condition). Finally, even if Defendants’ claim construction position was correct—and it isn’t—
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`the redesigned Ryobi GDO still infringes under the doctrine of equivalents and is not colorably
`
`different than the previous version of the Ryobi GDO.
`
`A.
`
`Under The Proper Claim Construction: Limitation 1[D][1] Only Requires
`Transmission of a Signal That Corresponds to A (i.e., one or more)
`“Operational Status Condition”
`
`The proper construction of limitation 1[d][1] does not require the transmission of multiple
`
`operational status conditions at a single time, as Defendants now argue. Element 1[d][1] only
`
`requires transmission of a signal that corresponds to a single operational status condition.5
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`It is a fundamental rule of patent law that the indefinite article “a” indicates that only one
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`of the specified object needs to be present for the claim to be infringed. See KCJ Corp. v. Kinetic
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`Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that
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`an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-
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`ended claims containing the transitional phrase ‘comprising.’”); Baldwin Graphic Sys., Inc. v.
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`Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) (“That ‘a’ or ‘an’ can mean ‘one or more’ is
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`best described as a rule, rather than merely as a presumption or even a convention.”) The plain
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`language of the present claims is a prime example: the signal transmitted need only correspond to
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`“a present operational status condition.” Though one need not resort to extrinsic evidence when
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`the intrinsic evidence is so clear,6 one of ordinary skill in the art would understand that this claim
`
`
`5 As CGI explained during the claim construction briefing, if the Court believes additional
`clarification is necessary, the Court could construe the full claim term as “a signal relating to a
`condition of the controller that contains information reflecting a current condition of the
`controller, where the current condition is determined by at least two states.” ECF No. 191 at 3.
`6 See Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998) (“if upon
`examination of this intrinsic evidence the meaning of the claim language is sufficiently clear,
`resort to extrinsic evidence, such as treatises and technical references, as well as expert testimony
`when appropriate, should not be necessary”).
`
`
`
`8
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`

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`limitation only requires the transmitted signal correspond to a single present operational status
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`condition. Rhyne Decl. (submitted herewith) at ¶ 36.
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`The surrounding claim language further supports this conclusion. Element 1[a] requires
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`the that controller have “a plurality of potential operational status conditions,” but element 1[d][1]
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`only requires the transmission of a signal that corresponds to “a present operational status
`
`condition.” The use of different terminology reinforces that the limitations have different
`
`meanings. CAE Screenplates Inc. v. Heinrich Fiedler GMBH & Co., 224 F.3d 1308, 1317 (Fed.
`
`Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these
`
`different terms in the claims connotes different meanings.”); see also Rhyne Decl. at ¶ 37
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`(explaining that one of ordinary skill in the art would understand that element 1[a] requires the
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`controller have two or more potential operational status conditions, but element 1[d][1] only
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`requires transmission of a signal that corresponds to a single operational status condition).
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`Furthermore, the specification confirms that the invention includes sending signals relating
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`to only a single operational status condition. The ’275 patent repeatedly and explicitly states that
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`the transmitter may send a signal relating only to a single condition. See, e.g., ’275 patent at 6:4-
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`6 (movable barrier operator 11 provides wireless signals that represent one or more status
`
`conditions”); id. at 6:42-48 (“such a message 40 . . . also includes one or more additional data
`
`fields. A single data field can be used . . .”); id. at 5:30-34 (discussing a status condition signal
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`containing information about a light being switched on or off); id. at 5:59-65 (describing a
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`“peripheral lighting unit” that “receiv[es] a status condition signal from the movable barrier
`
`operator 10 indicating that the movable barrier operator 10 has switched on its own lights”). Dr.
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`Rhyne explains that one of ordinary skill in the art would understand from the ’275 specification
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`that the ’275 patent clearly encompasses transmitting a message relating to only a single status
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`condition. Rhyne Decl. at ¶¶ 38-41.
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`9
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`That a single status condition is defined by at least two states simply means that the
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`condition can assume two or more potential operating states. That does not change the fact that
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`only one condition (and the current state of that condition) is required by the claims. Rhyne Decl.
`
`¶ 37; see also id. at 5:30-34 (describing a “peripheral lighting unit” that “receiv[es] a status
`
`condition signal from the movable barrier operator 10 indicating that the movable barrier operator
`
`10 has switched on its own lights” thus communicating one state of one status condition).
`
`Defendants are effectively asking the Court to rewrite the claims as follows:
`
`… wherein the wireless status condition data transmitter transmits a status
`condition signal that:
`
`corresponds to a plurality of present operational status conditions defined, at
`least in part, by at least two operating states from the plurality of operating states;
`
`There is no support for this drastic rewrite of the claims.
`
`The plain language and the intrinsic evidence are clear: limitation 1[d][1] of claim 1 of the
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`’275 patent only requires transmitting a signal that corresponds to a single operational status
`
`condition. The Court should therefore reject Defendants’ arguments to the contrary.
`
`B.
`
`Both Sides’ Experts Agree that Limitation 1[D][1] Only Requires
`Transmission of a Signal That Corresponds to a (i.e., Single) “Operational
`Status Condition”
`
`Prior statements by Defendants’ own experts confirm that the claims only require
`
`transmitting a signal that corresponds to a single status condition (e.g., door position status or light
`
`status). For example, Defendants inter partes review (IPR) expert Dr. Lipoff confirmed the
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`meaning of “operational status condition defined, at least in part, by at least two operating states”
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`to one of ordinary skill in the art is exactly what CGI has always contended it to be:
`
`A person having ordinary skill in the art would understand that such
`an “operational status condition” simply provides the status of an
`operation that has two or more potential operating states. For
`example, “moving the moveable barrier” is simply the status of a
`door moving operation that has the operating states of (1) moving
`
`10
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`

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`the barrier in a first direction or (2) moving the barrier in a second
`direction. Likewise, “a lighting status change” is a condition that has
`the operating states of (1) light on and (2) light off.
`
`Ex. A at ¶ 51. Notably, Dr. Lipoff provided an example of two statuses (door and light) that are
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`each defined by two operating states (for the door: moving in a first and second directions; for the
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`light: on and off). These are exactly the same statuses and operating states that CGI identified in
`
`seeking the preliminary injunction. Dr. Lipoff continued by attempting to prove invalidity by
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`pointing to allege prior art disclosure of transmitting a signal that corresponds to a single
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`“operational status condition regarding the door’s position [that] is defined by at least two
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`operating states (e.g., door open state and a door closed state).” Ex. A ¶ 96; see also PI Hearing
`
`Tr. at 116:25-117:18 (
`
`).
`
`
`
`
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`Similarly, Defendants’ preliminary injunction expert, Dr. Madisetti, previously testified
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`that the “status condition signal corresponds to at least one of the potential operational status
`
`conditions of the movable barrier operator.” ECF No. 72-2 at ¶ 34. Thus, Dr. Madisetti agreed
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`that transmitting a signal corresponding to a single operational status condition would still infringe
`
`the ’275 patent.
`
`C.
`
`Defendants Rely Upon Misquotes of the Preliminary Injunction Transcript
`to Support Its New Claim Construction Position
`
`Defendants attempt to support their argument by misquoting selective portions of the
`
`preliminary injunction hearing transcript. First, Defendants argued that the inventor, Mr.
`
`Fitzgibbon, testified that the claim requires transmission of “a single status condition signal that
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`contains information on at least two operating states.” ECF No. 203 at 2. However, the testimony
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`cited therein does not support Defendants’ characterization of it. Mr. Fitzgibbon was only
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`11
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`Case: 1:16-cv-06097 Document #: 226 Filed: 12/29/16 Page 15 of 25 PageID #:9156
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`discussing a “wireless status data transmitter which sends out the information of the two statuses.”
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`PI Hrg. Tr. at 77:9-11. Mr. Fitzgibbon did not say anything about a single message at all, and
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`nowhere stated that the claims require transmitting a single message that includes two operational
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`status conditions.
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`Defendants next misquote the Court’s discussion with Ms. Vidal. See ECF No. 203 at 2,
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`quoting PI Hearing Tr. at 604:21-23, 605:12-20, and 606:1-5, 14-16. The transcript makes clear
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`that CGI’s counsel was responding to the first limitation 1[a]: “a controller having a plurality of
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`potential operational status conditions defined, at least in part, by a plurality of operating states.”
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`The Court’s question at 604:21-23 explicitly references the “plurality” language which only
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`applies to the “operational status condition” in that first controller limitation. There is no dispute
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`that the controller must have a plurality (i.e., two or more) potential operational status conditions.
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`Defendants’ new redesign argument, however, relates only to what information is transmitted.
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`The transmission limitation does not include the “plurality” of operational status conditions
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`language and thus CGI’s argument at the hearing about the controller limitation is inapplicable to
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`TTI’s alleged design-around.
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`Defendants further selectively quote testimony from Dr. Rhyne as supporting the new
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`redesign argument. The selected testimony, however, only discusses the operation of the Ryobi
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`GD200—which did transmit a signal that included two operational status conditions. None of that
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`testimony characterized the claims as requiring transmission of multiple operational status
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`conditions at the same time as Defendants now argue. Dr. Rhyne’s factual statements about the
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`operation of the Ryobi GD200 cannot be used to support Defendants’ argument that its redesign
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`is non-infringing. The plain claim language makes clear that it is not.
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`Case: 1:16-cv-06097 Document #: 226 Filed: 12/29/16 Page 16 of 25 PageID #:9157
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`D.
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`The Redesigned Ryobi GDO Infringes Under the Proper Claim Construction
`of Element 1[D][1]
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`The redesigned GDO infringes under the proper claim construction. The Notice of
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`Redesign admits that the GDO transmits a signal that corresponds to a present operational status
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`condition as claimed. ECF No. 203 at 3 (admitting that the redesigned GDO “transmits
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`information for operating states that have changed, and even then, transmits a separate signal for
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`each change in an operating state”).
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`In fact, the operation of Defendants’ redesigned product as described in their brief is
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`exactly the type of operation envisioned by the preferred embodiment of Claim 1. As noted above,
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`“[i]n a preferred embodiment, th[e] transmission occurs automatically in response to when the
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`controller 11 detects at least one predetermined condition, which predetermined condition
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`preferably, but not necessarily, corresponds to the present operational status being reported via the
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`transmission.” ’275 Patent at 4:67-5:5 (emphasis added). This is exactly how Defendants describe
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`the operation of their product. See ECF 203 at 3 (“if a door position has changed, the redesigned
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`product would transmit a single signal including only information about the change in door
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`position”). The patent contrasts the preferred embodiment of sending a single signal for each status
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`change with another embodiment whereby statuses are reported periodically. See ‘275 Patent at
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`5:5-7 (“Another option would be to have such information transmitted on a substantially regular
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`periodic basis.”).
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`Defendants have changed nothing
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`in
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`their product except breaking apart
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`the
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`communication of the status into multiple chunks instead of sending in a single signal. Rhyne
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`Decl. ¶ 50
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`They are sending the same content broken into multiple signals. Id. They haven’t changed
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`Case: 1:16-cv-06097 Document #: 226 Filed: 12/29/16 Page 17 of 25 PageID #:9158
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`anything else about the device – no hardware has been changed and no functionality has been
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`removed. Rhyne Decl. ¶ 75. They have simply changed from practicing one embodiment of the
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`claim to another—both of which were expressly discussed in the patent. Rhyne Decl. ¶ 41.