Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 1 of 22 PageID #:9193
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`Case No.: 1:16-cv-06097
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`JURY TRIAL DEMANDED
`
`Hon. Harry D. Leinenweber Magistrate
`
`Judge Sydney Schenkier
`
`REDACTED PUBLIC VERSION
`
`)))))))))))))))
`
`THE CHAMBERLAIN GROUP, INC.,
`
`Plaintiff,
`
`v.
`
`TECHTRONIC INDUSTRIES CO. LTD.,
`TECHTRONIC INDUSTRIES NORTH
`AMERICA,
`INC., ONE WORLD
`TECHNOLOGIES,
`INC.,
`OWT
`INDUSTRIES,
`INC.,
`ET
`TECHNOLOGY (WUXI) CO. LTD., and
`RYOBI TECHNOLOGIES, INC.
`
`Defendants.
`
`DEFENDANTS’ RESPONSE TO MOTION TO
`ENFORCE PRELIMINARY INJUNCTION
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 2 of 22 PageID #:9194
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`TABLE OF CONTENTS
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`I.
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`TTI’s Redesigned Product Does Not Transmit an “Operational Status
`Condition Defined . . . by at Least Two Operating States” .................................................3
`
`A.
`
`Under the interpretation argued by Chamberlain and adopted by this
`Court at the preliminary injunction hearing, TTI’s redesigned product
`does not infringe the ’275 Patent because it does not transmit multiple
`operating states in a single status condition signal ..................................................3
`
`1.
`
`2.
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`3.
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`4.
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`This Court adopted this construction at the hearing ....................................4
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`Judicial estoppel bars Chamberlain from arguing for a new
`ruling ............................................................................................................6
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`Chamberlain argued this interpretation before the Federal
`Circuit ..........................................................................................................7
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`Chamberlain’s new construction is incorrect ...............................................8
`
`B.
`
`C.
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`Chamberlain cannot rely on the doctrine of equivalents because it
`narrowed the claims during prosecution to overcome prior art similar
`to TTI’s redesign ....................................................................................................10
`
`At a minimum TTI’s redesigned product is colorably different from
`the enjoined product ...............................................................................................11
`
`TTI’s redesigned product does not infringe the ’275 Patent (under this Court’s
`construction) because it relies on external sensors ............................................................15
`
`Chamberlain Has Suffered No Losses From Products that TTI Unavoidably
`Imported After the Deadline, Which TTI Has Quarantined ..............................................16
`
`II.
`
`III.
`
`i
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 3 of 22 PageID #:9195
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`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`AquaTex Indus. v. Techniche Solutions,
`419 F.3d 1374 (Fed. Cir. 2005)................................................................................................11
`
`Arbek Mfg., Inc. v. Moazzam,
`55 F.3d 1567 (Fed. Cir. 1995)..............................................................................................3, 12
`
`Cal. Artificial Stone Paving Co. v. Molitor,
`113 U.S. 609 (1885) .............................................................................................................2, 12
`
`Cardpool, Inc. v. Plastic Jungle, Inc.,
`817 F.3d 1316 (Fed. Cir. 2016)..................................................................................................7
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .............................................................................................................10
`
`ePlus Inc. v. Lawson Software, Inc.,
`946 F. Supp. 2d 472 (E.D. Va. 2013), vacated on other grounds,
`789 F.3d 1349 (Fed. Cir. 2015)................................................................................................14
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
`535 U.S. 722 (2002) .............................................................................................................1, 11
`
`Novozymes A/S v. C T E Glob., Inc.,
`No. 11 C 4276, 2015 WL 4934563 (N.D. Ill. Aug. 18, 2015) .....................................12, 14, 15
`
`Stotler & Co. v. Able,
`870 F.2d 1158 (7th Cir. 1989) ...................................................................................................2
`
`TiVo Inc. v. EchoStar Corp.,
`646 F.3d 869 (Fed. Cir. 2011) (en banc)........................................................2, 3, 12, 14, 15, 16
`
`Transclean Corp. v. Jiffy Lube Int’l, Inc.,
`474 F.3d 1298 (Fed. Cir. 2007)..................................................................................................7
`
`Union Paper-Bag Mach. Co. v. Murphy,
`97 U.S. 120 (1877) ...................................................................................................................14
`
`United States v. United Mine Workers of Am.,
`330 U.S. 258 (1947) .......................................................................................................2, 17, 18
`
`
`
`ii
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 4 of 22 PageID #:9196
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`On September 27, 2016, this Court entered a preliminary injunction prohibiting
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`Techtronic Industries North America, Inc.; One World Technologies Inc.; OWT Industries, Inc.;
`
`and Ryobi Technologies (collectively, “TTI”) from “making, using, selling or offering to sell . . .
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`the Ryobi GD200 garage door opener in a configuration that infringes claims 1 and 5 of the ’275
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`Patent under the Court’s Memorandum Opinion or products that are not colorably different
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`therefrom.” (ECF 111 at 2).
`
`This Court based the Preliminary Injunction Order on the record established at the
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`preliminary injunction hearing conducted from August 29-30, 2016. In reliance on this Court’s
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`ruling and statements by Chamberlain’s expert and Chamberlain’s lead counsel, TTI has now
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`redesigned its product to avoid infringing the asserted claims of the ’275 patent based on the
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`evidence and arguments presented at the hearing. Nonetheless, Chamberlain has now filed a
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`motion asking this Court to hold TTI in contempt for selling the redesigned product.
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`In its latest brief, filed on December 28, Chamberlain tries to take several new bites at the
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`preliminary injunction apple. Now that TTI has designed around Chamberlain’s earlier
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`construction, Chamberlain offers new claim construction arguments. But judicial estoppel
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`prevents Chamberlain from offering different interpretations at this stage of the proceedings.
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`Chamberlain also argues that the redesigned product infringes under the doctrine of
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`equivalents. But Chamberlain cannot rely upon infringement by equivalents because it narrowed
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`the claims during prosecution to overcome prior art similar to TTI’s redesign. E.g., Festo Corp.
`
`v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002).
`
`When Chamberlain’s improper arguments are stripped away, the only issues properly
`
`before this Court are whether TTI’s redesigned product is not colorably different from the
`
`enjoined product and whether TTI’s product infringes under this Court’s earlier findings.
`
`Chamberlain must prove both and can prove neither. TTI has redesigned its product to transmit
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 5 of 22 PageID #:9197
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`information in a manner that avoids infringement, even under the Court’s interpretation of the
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`asserted claims. At a minimum, TTI’s redesigned product is “colorably different” from the
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`enjoined product, and Chamberlain’s motion should be denied.
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`Legal Standard
`“Contempt ‘is a severe remedy, and should not be resorted to where there is a fair ground
`
`of doubt as to the wrongfulness of the defendant's conduct.’” TiVo Inc. v. EchoStar Corp., 646
`
`F.3d 869, 881–82 (Fed. Cir. 2011) (en banc) (quoting Cal. Artificial Stone Paving Co. v. Molitor,
`
`113 U.S. 609, 618 (1885)). To enforce the injunction, Chamberlain bears the burden to “prove
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`both that the newly accused product is not more than colorably different from the product found
`
`to infringe and that the newly accused product actually infringes.” Id. at 882; see also Stotler &
`
`Co. v. Able, 870 F.2d 1158, 1163 (7th Cir. 1989) (“A complaining party must prove that the
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`order was violated by ‘clear and convincing’ evidence.”).
`
`Civil contempt serves two possible purposes: “to coerce the defendant into compliance
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`with the court’s order, and to compensate the complainant for losses sustained.” United States v.
`
`United Mine Workers of Am., 330 U.S. 258, 303–04 (1947). Compensation “must of course be
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`based upon evidence of complainant’s actual loss.” Id. at 304.
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`2
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 6 of 22 PageID #:9198
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`I.
`
`TTI’s Redesigned Product Does Not Transmit an “Operational Status Condition
`Defined . . . by at Least Two Operating States”
`TTI’s sales of its redesigned product do not provide a basis for contempt. “[L]egitimate
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`design-around efforts should always be encouraged as a path to spur further innovation.” TiVo,
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`646 F.3d at 881–82. “Contempt . . . is not a sword for wounding a former infringer who has
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`made a good-faith effort to modify a previously adjudged or admitted infringing device to remain
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`in the marketplace.” Arbek Mfg., Inc. v. Moazzam, 55 F.3d 1567, 1570 (Fed. Cir. 1995)
`
`As discussed in its Notice of Redesign,1 TTI has redesigned its product
`
`
`
` Because TTI
`
`has significantly modified an element found to infringe, its new product is colorably different
`
`from the enjoined product, and contempt may not issue.
`
`A.
`
`Under the interpretation argued by Chamberlain and adopted by this Court
`at the preliminary injunction hearing, TTI’s redesigned product does not
`infringe the ’275 Patent because it does not transmit multiple operating
`states in a single status condition signal
`The redesigned product does not infringe the ’275 Patent. The preliminary injunction
`
`rests on Claim 1s and 5 of the ’275 Patent. Claim 5 depends from Claim 1, which requires:
`
`a wireless status condition data transmitter . . . , 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;
`
`’275 Patent, Claim 1 (emphases added). This claim requires the transmitter to transmit a single
`
`status condition signal that contains information on at least two operating states.
`
`
`1 Chamberlain incorrectly suggests that TTI filed this Notice only after Chamberlain learned of
`the redesigned product. The record shows that TTI filed the Notice of Redesign at 9:12 a.m. on
`December 6, before Chamberlain was aware of the redesigned product.
`
`3
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 7 of 22 PageID #:9199
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`This Court adopted this construction at the hearing
`1.
`At the preliminary injunction hearing, this Court confirmed this understanding of the
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`claims with both Chamberlain’s counsel and TTI’s counsel. Chamberlain’s counsel agreed that
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`“you’d have to have both the lights and the status of the door”:
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`THE COURT: [O]pen and close is -- at least at a specific point in time, can only
`be one status, right? It’s either open or it’s closed?
`
`MS. VIDAL: It’s one state. That’s correct.
`
`THE COURT: So it would require then the on and off of lights?
`
`MS. VIDAL: Correct.
`
`THE COURT: In other words, you’d have to have both lights and the status of
`the door?
`
`MS. VIDAL: Correct.
`Hearing Tr. 606:6-16 (emphasis added).2 That is, whether the garage door is open or closed “[i]s
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`one state.” Transmitting a signal about the operating state of the garage door transmits only a
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`single state. But Claim 1 requires that the transmitted signal must be “defined . . . by at least two
`
`operating states.” Thus, to satisfy Claim 1, “you’d have to have both the light and the status of
`
`the door” in a single signal.
`
`
`2 Chamberlain is wrong to claim that because this exchange uses the word “plurality,” it must be
`about “a plurality of potential operational status conditions.” Mot. Enforce PI at 6; Br. in
`Support at 12. The exchange actually concerns the requirement that an operational status
`condition be “defined, at least in part, by a plurality of operating states.” ’275 Patent, Claim 1
`(emphasis added). An operational status condition is not “defined . . . by a plurality of operating
`states” if it only concerns whether the door is open or closed, which is “one state.” Thus, to be
`“defined . . . by a plurality of operating states,” “you’d have to have both lights and the status of
`the door.”
`
`4
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 8 of 22 PageID #:9200
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`This Court confirmed this understanding of the claim language with TTI’s counsel:
`
`THE COURT: I understood that the basis of the claim is that there is a plurality of
`states--
`
`MR. WHITE: Correct.
`
`THE COURT: -- that the controller tells the owner, I guess, or whoever, the
`possessor of the --
`
`MR. WHITE: Yes.
`
`THE COURT: And Ms. Vidal just said that open and shut is one and lights on
`and off is the second one.
`
`MR. WHITE: And I guess in that theory, you’d have to synthesize those things
`together into a single message that’s transmitted.
`
`. . .
`
`MR. WHITE: Whatever information you’re relying upon for the status condition,
`the two pieces of information that you’re putting into that signal, he says you
`have to get that information without using any sensors.
`
`THE COURT: I thought only if it was -- it has to be a plurality. It can’t be a
`single one, but two would satisfy it. And then if it gets information from the
`sensor on a third or fourth, that would not --
`
`MR. WHITE: I think that’s what he’s saying, but the key, and you hit on it, is
`that the first two pieces of information, the plurality --
`
`THE COURT: There has to be two pieces of information statuses --
`
`MR. WHITE: And that has to come without a sensor. You have to get those
`without a sensor.
`
`Hearing Tr. 630:1-11 (emphasis added), 632:11-25 (emphasis added).
`
`This Court fully understood the limitation. There must be “a plurality of states . . . that
`
`the controller tells the owner,” and this Court found this to require that the transmission must
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`contain “two pieces of information statuses.”
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`5
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 9 of 22 PageID #:9201
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`
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`TTI based its redesign on the understanding of the limitation expressed by Chamberlain’s
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`counsel and this Court at the preliminary injunction hearing. Chamberlain, during the contempt
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`process, now asks this Court to revisit its earlier understanding of the claim language. This is
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`improper. The purpose of contempt is to enforce earlier rulings of the court, not to reconsider
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`previously-settled questions. Chamberlain cannot expand the scope of the injunction (by arguing
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`for a broader claim construction) during the contempt process.
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`Judicial estoppel bars Chamberlain from arguing for a new ruling
`2.
`Judicial estoppel prevents Chamberlain from advocating for its current position, which
`
`conflicts with its earlier arguments. In addition to the exchange with Chamberlain’s counsel
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`quoted above (supra pp. 4-5), Chamberlain has previously recognized (correctly) that “door
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`position” is an “operating state,” not an “operational status condition.” Dr. Rhyne’s declaration
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`in support of Chamberlain’s motion for a preliminary injunction explains that
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`6
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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 10 of 22 PageID #:9202
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`Based on the arguments of its counsel and this evidence from Dr. Rhyne, Chamberlain
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`obtained a preliminary injunction. Judicial estoppel now precludes Chamberlain from adopting a
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`contrary position. E.g., Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d 1316, 1323 (Fed. Cir.
`
`2016) (“The doctrine of judicial estoppel is that where a party successfully urges a particular
`
`position in a legal proceeding, it is estopped from taking a contrary position in a subsequent
`
`proceeding where its interests have changed.”); Transclean Corp. v. Jiffy Lube Int’l, Inc., 474
`
`F.3d 1298, 1307 (Fed. Cir. 2007) (“The doctrine of judicial estoppel prohibits a party from
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`taking inconsistent positions in the same or related litigation.”).
`
`Chamberlain argued this interpretation before the Federal Circuit
`3.
`Indeed, Chamberlain is currently relying on its earlier arguments in briefing to the
`
`Federal Circuit. In discussing the Menard reference (which TTI contends invalidates the asserted
`
`claims), Chamberlain acknowledges that Menard teaches transmitting door position but argues
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`that Menard “does not describe the message format” or otherwise disclose transmission of a
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`signal defined by at least two operating states. Chamberlain Br. 39; see also id. (acknowledging
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`that “position information is transmitted” by Menard). Chamberlain embraces the testimony of
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`TTI’s expert that “some types of signals, e.g., sending information about a single door position,
`
`do not meet claim 1.” Chamberlain Br. 40 (citing Hearing Tr. 452:17-21).
`
`
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`These signals “do not
`
`meet claim 1.” Chamberlain Br. 40.
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`Before this Court, Chamberlain runs from its Federal Circuit brief, now asserting that
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`“the Appellate court is not positioned to address, what information must be ‘transmitted.’” Br. in
`
`Support at 2. But Chamberlain’s brief, as quoted above, expressly argued that Menard did not
`
`7
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 11 of 22 PageID #:9203
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`anticipate the assert claims because of Menard’s transmission. Chamberlain is playing games,
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`making one set of arguments to this Court and a different set to the Federal Circuit.
`
`Chamberlain’s new construction is incorrect
`4.
`Even if this Court were willing to entertain Chamberlain’s new claim construction
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`argument (despite its earlier ruling and despite the bar of judicial estoppel), Chamberlain’s new
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`claim construction is incorrect. Chamberlain now suggests that transmitting a single piece of
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`information—such as door position—somehow constitutes transmission of a signal “defined by
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`at least two operating states.”
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`Chamberlain first attacks a strawman, accusing TTI of interpreting the claim to “requir[e]
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`the transmission of multiple operational status conditions at the same time.” Mot. Enforce PI
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`at 5 (emphasis modified); see also Br. in Support at 7 (same). Chamberlain mischaracterizes
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`TTI’s position. As TTI explained in its Notice of Redesign, “the transmitter must transmit a
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`single status condition signal that contains information on at least two operating states.”
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`Notice of Redesign at 2. TTI agrees that Claim 1 requires the transmission of a single
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`operational status condition, but this single status condition must be “defined by . . . at least two
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`operating states.” TTI’s construction adheres to this plain language: transmitting a single state
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`(such as the door state) does not infringe this limitation.
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`In contrast, Chamberlain’s construction makes the phrase “defined by at least two
`
`operating states” meaningless. According to Chamberlain, an operational status condition is
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`“defined by” any potential value that is might hold. See Mot. Enforce PI at 6 (arguing that “door
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`state” is defined by at least two operating states because it “can take on two or more possible
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`operating states (e.g., Open or Closed)”).
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`Chamberlain’s view renders this limitation meaningless because transmitting any status
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`information will satisfy it. A signal that the door is open will satisfy the limitation because the
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`8
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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 12 of 22 PageID #:9204
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`door might be closed. A signal that the light is on will satisfy the limitation because the light
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`might off. In Chamberlain’s view, any operational status condition will necessarily be “defined
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`by at least two operating states” because the condition might either be present or absent. This
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`construction cannot be correct.
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`Chamberlain argues that Claim 1 is infringed if a “message format is defined by the ‘on’
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`and ‘off’ operating states.” Br. in Support at 1. But Claim 1 says nothing about defining “a
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`message format.” Instead, Claim 1 requires that the “present operational status condition” be
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`“defined by” multiple operating states.
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`It is Chamberlain, not TTI, that seeks to rewrite the claim language. Chamberlain revises
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`Claim 1 to read:
`
`a wireless status condition data transmitter . . . , 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 one of at least two potential operating states from
`the plurality of operating states;
`
`’275 Patent, Claim 1 (modified to reflect Chamberlain’s revision). Chamberlain is transparent
`
`about this proposition: “[A] present light status condition is defined by the potential light
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`operating states of ‘on’ and ‘off.’” Br. in Support at 6 ((emphasis added). But Claim 1 requires
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`the operational status condition to be “defined by” “two operating states,” not “potential
`
`operating states.”
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`Reading the word “potential” into this limitation would be particularly improper, given
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`that the word “potential” is used earlier in the claim, when it requires that the controller “hav[e] a
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`plurality of potential operational status conditions.” ’275 Patent, Claim 1. If, as Chamberlain
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`now contends, the Applicant merely wanted the operational status condition to “have a plurality
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`of potential operating states,” then the word “potential” would have used expressly, as it was
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`earlier in the claim.
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`9
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 13 of 22 PageID #:9205
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`Chamberlain faults TTI for arguing a broader construction in the IPR proceeding. See
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`Mot. Enforce PI at 8-9. But the IPR proceeding involves a different, broader standard of claim
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`construction than the standard applied by this Court. See Cuozzo Speed Techs., LLC v. Lee, 136
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`S. Ct. 2131, 2139 (2016) (explaining that the Patent Trial & Appeal Board applied a different
`
`standard than courts).
`
`B.
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`Chamberlain cannot rely on the doctrine of equivalents because it narrowed
`the claims during prosecution to overcome prior art similar to TTI’s
`redesign
`Chamberlain also attempts to argue that the redesigned product infringes under the
`
`doctrine of equivalents. But Chamberlain cannot rely on infringement by equivalence because
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`the application was amended to relinquish the subject matter of the redesigned product.
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`During the prosecution of the ‘275 patent, the examiner rejected Claim 1 for anticipation
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`by the Doyle reference (U.S. Patent No. 5,402,105), which taught transmitting a single door
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`position that could potentially have one of two different values:
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`[T]he RF transmitter 36 is capable of transmitting two different RF signals . . . .
`A first one of the two RF signals is transmitted when the garage door 22 is
`oriented in the vertical position, and a second one of the two RF signals is
`transmitted when the door 22 is oriented at an angle to the vertical position. The
`RF receiver 38 is capable of receiving and distinguishing between the two RF
`signals such that the system indicates the absolute position of the door.
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`’105 Patent, 4:65-5:6.
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`Chamberlain mischaracterizes Doyle when it claims that Doyle “could only send a signal
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`when the door was in a single tilted position.” Br. in Support at 19 & n.8. The excerpt quoted
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`above proves that Doyle taught transmitting two different door positions.
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`10
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`

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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 14 of 22 PageID #:9206
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`In response to the rejection, the Applicant amended Claim 1 to add the “defined, at least
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`in part, by at least two operating states” limitation.3 Based on this amendment, the Applicant
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`distinguished the Doyle reference, in which “the transmitted RF signal . . . provides a single
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`position of the garage door,” from the claims of the ’275 Patent.
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` Chamberlain’s current argument—in which transmitting “a single position of the garage
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`door” constitutes transmission of a status condition defined by at least two operating states—is
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`refuted by the prosecution history.
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`Thus, as Chamberlain predicted, not only does the prosecution history defeat
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`Chamberlain’s new interpretation, but prosecution history estoppel bars Chamberlain’s doctrine-
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`of-equivalents argument. See AquaTex Indus. v. Techniche Solutions, 419 F.3d 1374, 1382 (Fed.
`
`Cir. 2005) (“Prosecution history estoppel can prevent a patentee from relying on the doctrine of
`
`equivalents when the patentee relinquishes subject matter during the prosecution of the patent,
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`either by amendment or argument.”); see also Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki
`
`Co., 535 U.S. 722 (2002).
`
`Because the redesigned product does not infringe, contempt must be denied.
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`C.
`
`At a minimum TTI’s redesigned product is colorably different from the
`enjoined product
`This hotly contested issue of claim construction confirms that TTI cannot be held in
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`contempt because of grave doubts about the wrongfulness of TTI’s conduct. “The primary
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`question on contempt should be whether the newly accused product is so different from the
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`3 The Applicant also cancelled a dependent claim which recited “wherein the wireless status
`condition data transmitter transmits data that corresponds to at least one of the plurality of
`operating states.”
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`11
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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 15 of 22 PageID #:9207
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`product previously found to infringe that it raises ‘a fair ground of doubt as to the wrongfulness
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`of the defendant’s conduct.’” TiVo, 646 F.3d at 882 (quoting Cal. Artificial Stone Paving Co. v.
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`Molitor, 113 U.S. 609, 618 (1885)). A court “should focus on those elements of the adjudged
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`infringing products that the patentee previously contended, and proved, satisfy specific
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`limitations of the asserted claims.” TiVo, 646 F.3d at 882 “Where one or more of those
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`elements previously found to infringe has been modified, or removed, the court must make an
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`inquiry into whether that modification is significant.” Id. “If those differences between the old
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`and new elements are significant, the newly accused product as a whole shall be deemed more
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`than colorably different from the adjudged infringing one, and the inquiry into whether the newly
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`accused product actually infringes is irrelevant.” Id.; see also Novozymes A/S v. C T E Glob.,
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`Inc., No. 11 C 4276, 2015 WL 4934563, at *2 (N.D. Ill. Aug. 18, 2015) (Leinenweber, J.)
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`(same).
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`When a modified product is colorably different from a product subject to a permanent
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`injunction, “the modifying party generally deserves the opportunity to litigate the infringement
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`questions at a new trial.” Arbek Mfg., Inc. v. Moazzam, 55 F.3d 1567, 1570 (Fed. Cir. 1995).
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`Similarly, when a modified product is colorably different from a product subject to a preliminary
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`injunction, a new preliminary injunction must be sought.
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`12
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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 16 of 22 PageID #:9208
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`Chamberlain nowcalls this a “minor feature” that “has no relation to the claim language
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`of the transmitter element.” Mot. Enforce PI at 9. Not so—Claim 1 specifically requires
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`transmission of a status condition signal
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`that corresponds to an operating status condition
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`13
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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 17 of 22 PageID #:9209
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`“defined by at least two operating states.” And Chamberlain submitted evidence that the
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`“frame” of data transmitted by TTI’s product included both a “light state” and “door state.” The
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`data being transmitted is a critical element of the asserted claims of the ’275 Patent.
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`In light of the significant modifications to the transmissions sent by the redesigned
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`product, there is “a fair ground of doubt as to the wrongfulness of [TTI’s] conduct.” TiVo, 646
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`F.3d at 882. For this reason alone, this Court should deny Chamberlain’s motion to hold TTI in
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`contempt.
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`* * *
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`TTI understands this Court to have resolved this issue of claim construction at the
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`preliminary injunction hearing. In the Court’s words, “there is a plurality of states . . . that the
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`controller tells the owner,” and “open and shut is one [state] and lights on and off is the second
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`one.” Hearing Tr. 630:1-4, 7-8; see also Hearing Tr. 606:14-15 (“you’d have to have both lights
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`and the status of the door”). Merely transmitting whether the door is opened or closed—“one
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`state”—does not suffice. Hearing Tr. 606:10.
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`Even if the Court permits Chamberlain to argue now for a different construction, this
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`hotly contested issue of claim construction raises “a fair ground of doubt as to the wrongfulness
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`of the [TTI’s] conduct.” TiVo, 646 F.3d at 882.
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`This is not a case “where the new products are virtually no different and the defendant
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`has simply ignored the Court’s judgment.” Novozymes, 2015 WL 4934563 at *3. The
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`redesigned product does not simply “perform[] substantially the same function in substantially
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`the same way to obtain the same result.” ePlus Inc. v. Lawson Software, Inc., 946 F. Supp. 2d
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`472, 488 (E.D. Va. 2013), vacated on other grounds, 789 F.3d 1349 (Fed. Cir. 2015) (quoting
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`Union Paper-Bag Mach. Co. v. Murphy, 97 U.S. 120, 125 (1877)). To the contrary, to design
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`around the asserted claims of ’275 Patent, TTI created a new method of communication;
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`14
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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 18 of 22 PageID #:9210
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`reprogrammed multiple elements; and increased the product’s bandwidth and power usage. See
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`Novozymes, 2015 WL 4934563 at *3 (finding modified product “colorably different” where
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`defendant “appears to have taken some steps to change its products”).
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`Given these differences, TTI’s redesigned product is so different from the enjoined
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`product that it “raises ‘a fair ground of doubt as to the wrongfulness of the defendant’s
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`conduct.’” TiVo, 646 F.3d at 882. TTI strongly believes that its redesigned product does not
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`infringe under the construction adopted by this Court at the hearing. But at a minimum, since the
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`redesigned product is colorably different from the enjoined product, TTI does not violate the
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`preliminary injunction by making, using, selling, or offering to sell the redesigned product.
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`II.
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`TTI’s redesigned product does not infringe the ’275 Patent (under this Court’s
`construction) because it relies on external sensors
`There is a second reason that the redesigned product does not infringe the asserted claims
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`of the ’275 Patent:
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`In its opinion supporting the preliminary injunction, this Court construed Claim 1 to be
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`limited to “a controller that does not rely on external sensors.” Mem. Op. at 8. Based on this
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`construction, this Court concluded that TTI had not raised substantial questions of invalidity.
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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 19 of 22 PageID #:9211
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`—Il.
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`Chamberlain Has Suffered No Losses From Products that TTI Unavoidably
`Imported After the Deadline, Which TTI Has Quarantined
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`Chamberlain also complains that TTI unavoidably imported several shipments after the
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`entry of the injunction. TTI fully informed Chamberlain about the details, quantity, and location
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`of these shipments. TTI has quarantined them in a separate warehouse, and Chamberlain has
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`suffered no injuries. Contempt is not warranted.
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`—_ oO
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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 20 of 22 PageID #:9212
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`unnecessary either to coerce TTI into compliance or to compensate Chamberlain for losses,
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`judicial sanctions for contempt are unavailable. United Mine Workers, 330 U.S. at 303–04.
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`Because contempt is
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`17
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`Case: 1:16-cv-06097 Document #: 227 Filed: 01/03/17 Page 21 of 22 PageID #:9213
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`Conclusion
`For the foregoing reasons, TTI respectfully requests that this Court deny Chamberlain’s
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`motion to enfo