Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 1 of 30 PageID #:1159
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`
`
`
`
`Plaintiff,
`
`Case No.: 1:16-cv-06097
`
`JURY TRIAL DEMANDED
`
`The Honorable Harry D. Leinenweber
`
`Magistrate Judge Sydney Schenkier
`
`
`
`
`))
`
`)
`)
`)
`)
`
`))
`
`
`)
`)
`)
`)
`)
`)
`)
`
`
`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.
`
`
`
`DEFENDANTS’ OPPOSITION TO MOTION FOR PRELIMINARY INJUNCTION
`
`
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 2 of 30 PageID #:1160
`
`I. 
`
`TABLE OF CONTENTS
`Factual Background ............................................................................................................... 2 
`A.  TTI Background ............................................................................................................... 2 
`B.  TTI Garage Door Opener Development ........................................................................... 3 
`C.  TTI’s Relationship With Home Depot ............................................................................. 5 
`II.  CGI Has Failed To Establish The Need For Extraordinary Injunctive Relief ....................... 6 
`A.  CGI Cannot Show A Likelihood Of Success On The Merits .......................................... 7 
`1.  A Substantial Question About Infringement Of The ‘275 Patent Exists ................... 7 
`2.  A Substantial Question About The Validity Of The ‘275 Patent Exists .................... 9 
`a.  The ‘275 Patent Claims Well Known Prior Art Features .................................... 9 
`b.  Menard Anticipates The ‘275 Patent ................................................................. 10 
`3.  A Substantial Question About Infringement and Claim Construction Of The ‘966
`Patent Exists ............................................................................................................. 14 
`4.  A Substantial Question About The Validity Of The ‘996 Patent Exists .................. 15 
`a.  The ‘966 Patent Claims Well Known Prior Art Features .................................. 15 
`b.  Peplinski Combined With Weik Render The ‘966 Patent Obvious ................... 15 
`B.  CGI Will Not Likely Suffer Irreparable Harm ............................................................... 18 
`1.  TTI’s Conduct Has Not Irreparably Harmed CGI ................................................... 18 
`2.  CGI Has Failed To Establish That TTI’s Alleged Infringement, And Not Lawful
`Competition, Would Cause Any Irreparable Harm ................................................. 21 
`3.  CGI’s Potential Injury Could Be Remedied By Money Damages .......................... 23 
`C.  The Balance of Harms Weighs Strongly Against A Preliminary Injunction ................. 24 
`D.  The Public Interest Will Be Harmed If TTI Is Enjoined ................................................ 24 
`III.  Conclusion ........................................................................................................................... 25 
`
`
`
`
`
`i
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 3 of 30 PageID #:1161
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Abbott Labs. v. Andrx Pharm., Inc.,
`452 F.3d 1331 (Fed. Cir. 2006)................................................................................................25
`
`Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
`239 F.3d 1343 (Fed. Cir. 2001)............................................................................................7, 15
`
`Apple Inc. v. Samsung Elec. Co., Ltd.,
`695 F.3d 1370 (Fed. Cir. 2012)................................................................................................22
`
`Apple Inc. v. Samsung Elec. Co., Ltd.,
`735 F.3d 1352 (Fed. Cir. 2013.)...............................................................................................21
`
`Apple Inc. v. Samsung Elec. Co., Ltd.,
`809 F.3d 633 (Fed. Cir. 2015.).................................................................................................21
`
`Automated Merch. Sys., Inc. v. Crane Co.,
`357 F. App’x 297 (Fed. Cir. 2009) ....................................................................................21, 23
`
`BRK Brands, Inc. v. Nest Labs, Inc.,
`28 F. Supp. 3d 765 (N.D. Ill. 2014) .........................................................................................25
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009)................................................................................................14
`
`Cummins-Allison Corp. v. Glory Ltd.,
`2003 WL 355470 (N.D. Ill. Feb. 12, 2003) .............................................................................24
`
`eBay Inc. v. MercExchange, LLC,
`547 U.S. 388 (2006) .................................................................................................................19
`
`H. Jay Spiegel & Assocs., P.C. v. Spiegel,
`652 F. Supp. 2d 630 (E.D. Va. 2008) ......................................................................................24
`
`Heidelberg Harris, Inc. v. Mitsubishi Heavy Indus., Ltd.,
`No. 95 C 0673, 1996 WL 189398 (N.D. Ill. Jan. 9, 1996) ........................................................6
`
`Helifix Ltd. v. Block-Lok, Ltd.,
`208 F.3d 1339 (Fed. Cir. 2000)................................................................................................11
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ...................................................................................................................1
`
`LifeScan Scotland, Ltd. v. Shasta Techn., LLC,
`734 F.3d 1361 (Fed. Cir. 2013)..............................................................................................1, 7
`
`ii
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 4 of 30 PageID #:1162
`
`Market Track, LLC v. Efficient Collaborative Retail Mktg., LLC,
`No. 14 C 4957, 2015 WL 3637740 (N.D. Ill. June 12, 2015) ...................................................7
`
`Novo Nordisk A/S v. Sanofi-Aventis U.S. LLC,
`290 F. App’x 334 (Fed. Cir. 2008) ..........................................................................................14
`
`Nutrition 21 v. United States,
`930 F.2d 867 (Fed. Cir. 1991)............................................................................................19, 20
`
`Robert Bosch v. Pylon Mfg. Corp.,
`659 F.3d 1142 (Fed. Cir. 2011)................................................................................................19
`
`Schering Corp. v. Geneva Pharm., Inc.,
`339 F.3d 1373 (Fed. Cir. 2003)................................................................................................11
`
`Stokely-Van Camp, Inc. v. The Coca-Cola Co.,
`No. 86 C 6159, 1987 WL 6300 (Jan. 30, 1987) .......................................................................24
`
`Titan Tire Corp. v. Case New Holland, Inc.,
`566 F.3d 1372 (Fed. Cir. 2009)..................................................................................................7
`
`Trebro Mfg. v. Firefly Equip., LLC,
`748 F.3d 1159 (Fed. Cir. 2014)................................................................................................22
`
`Unique Coupons, Inc. v. Northfield Corp.,
`No. 99 C 7445, 2000 WL 343225 (N.D. Ill. Mar. 30, 2000) (Leinenweber, J.) ........................6
`
`Winter v. Nat. Res. Def. Council, Inc.,
`555 U.S. 7 (2008) .................................................................................................................6, 18
`
`STATUTES
`
`35 U.S.C. § 103(a) .........................................................................................................................15
`
`
`
`iii
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 5 of 30 PageID #:1163
`
`CGI seeks to enjoin TTI from selling its garage door opener because it is allegedly
`
`"ah-eady losing sales and market share" at one customer, The Home Depot ("Home Depot").
`
`(CGI Br. at 15.) But the evidence shows the opposite.
`
`It has not suffered any haim , let alone in eparable han n.
`
`CGI also cannot show there is a reasonable likelihood that it will prevail on the merits of
`
`its infringement claims. CGO has failed to provide evidence establishing that TTI likely
`
`infringes the asse1ied claims of both the '275 and '966 Patents. In paiiicular, its technical expert
`
`conceded that substantial questions exist about both infringement and claim constrnction, which
`
`is a fatal flaw to CGI's request for a preliminaiy injunction. LifeScan Scotland, Ltd. v. Shasta
`
`Techn. , LLC, 734 F.3d 1361, 1366 (Fed. Cir. 2013) ("If the accused infringer raises a substantial
`
`question concerning either infringement or invalidity, then the patentee has not established that it
`
`is likely to succeed on the merits, and a preliminaiy injunction is not appropriate.").
`
`The prior ait also raises substantial questions about the validity of the asse1ied claims of
`
`the '275 Patent. The Menai·d reference discloses a system to wirelessly monitor the status
`
`condition of a gai·age door using a signal with a unique identifier - precisely as CGI alleges the
`
`asse1ied claims of the '275 Patent require. Indeed, Menard inco1porates the use of Bluetooth
`
`technology, which CGI's technical witnesses admit used a unique identifier well before 2003
`
`when it filed the '275 Patent.
`
`The prior aii likewise raises substantial questions about the validity of the '966 Patent.
`
`The asse1ied claims ai·e an obvious combination of previously disclosed conventional
`
`rechai·geable batte1y technologies perfonning their expected functions. KSR Int '/ Co. v. Teleflex,
`
`Inc. , 550 U.S. 398, 415-17 (2007). For example, the Peplinski application (which CGI filed
`
`1
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 6 of 30 PageID #:1164
`
`three years before the ‘966 Patent) details a backup battery system for garage door openers
`
`(Ex. H ¶ [0022].) The Weik patent, which addresses a system for controlling a security door,
`
`describes a portable, rechargeable battery, “the physical characteristics” of which “may be in
`
`accordance with a portable power tool’s rechargeable battery, such as a drill’s battery.” (Ex. I,
`
`12:43-46 (emphasis added).) As Peplinski and Weik both concern movable barrier operators,
`
`one skilled in the art would have been motivated to combine and modify Peplinski’s movable
`
`barrier operator to be used with Weik’s portable, rechargeable battery.
`
`CIG cannot meet the strict standard for granting a preliminary injunction given its
`
` (3) questionable
`
`infringement arguments; and (4) facially invalid patent claims based on conventional, well-
`
`known technology. CGI should never have filed this motion for extraordinary relief, which
`
`should be denied out of hand.
`
`I.
`
`Factual Background
`A.
`TTI Background
`TTI and its affiliates sell products under an extensive portfolio of manufacturing brand
`
`names, including Milwaukee®, AEG®, Empire®, Stiletto®, and Ridgid®.1 (Farrah Decl. ¶ 2.)
`
`In addition to selling products under these brands, TTI also provides products for sale by third
`
`parties, including Craftsman® (“Craftsman”). (Id.)
`
`As a result of this extensive portfolio, TTI has considerable expertise in designing and
`
`selling power tools and power tool accessories. (Id. at ¶ 3.) TTI and its affiliates collectively
`
`own a broad portfolio of intellectual property related to, among other things, lithium-ion battery
`
`
`1 As used herein, “TTI” refers to Techtronic Industries North America, Inc., One World
`Technologies, Inc., OWT Industries, Inc. and Ryobi Technologies, Inc. or their North American
`affiliates. Ryobi Technologies Inc. was created in 2000 and subsequently dissolved and merged
`into TTIPE in 2004. Today, Ryobi® is a brand name licensed for use by TTIPE under a
`trademark license agreement.
`
`2
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 7 of 30 PageID #:1165
`
`technology for portable, rechargeable power tool batteries, and battery charging stations. (Id.)
`
`TTI employs people in various offices throughout the United States. (Id. at ¶ 4.) At the
`
`One World Technologies headquarters in Anderson, South Carolina, One World Technologies
`
`d/b/a Techtronic Industries Power Equipment’s (“TTIPE”) employs approximately 881 people.
`
`(Id.) TTI engineers design and develop many of TTI’s products in the United States. For
`
`example, TTI designed the Ryobi garage door opener (“GDO”) at its Anderson facility and then
`
`worked with its partners in China to manufacture and import the final product. (Id. at ¶ 5.)
`
`TTIPE imports and sells the Ryobi GDO exclusively at Home Depot stores throughout the
`
`United States. (Id. at ¶¶ 5-6.)
`
`B.
`TTI GDO Development
`Contrary to CGI’s assertion that “TTI copied the battery backup feature for its infringing
`
`product from [its] dealings with CGI” (CGI Br. at 18, n.6), TTI began investigating the garage
`
`door market
`
` — well before it had first contact with CGI in late 2008 (see Ex. S; Farrah
`
`Decl. ¶¶ 7-8.). In early 2007, Sears invited TTI to participate in a strategic sourcing initiative
`
`where it asked vendors to pitch new product lines. (Farrah Decl. ¶ 9.) By June 2007, TTI
`
`recognized the opportunity of
`
`
`
`. (Ex. T at 10; Farrah Decl. ¶¶ 9-11.) Thus, almost eighteen
`
`months before it first dealt with CGI, TTI had a preliminary design for a GDO that powered
`
`other devices, including “
`
`,” air compressors, air tools, vacuums, fans, and
`
`work lights, as shown in the following presentation:
`
`3
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 8 of 30 PageID #:1166
`
`(Id. at 11.)
`
`In December 2008, at Sears' request, TTI and CGI began to explore potential joint
`II
`. (ECF No. 009, Brogle Deel.~ 8; Fanah Deel.~ 12) The patties did
`
`development effo1ts concerning
`II
`not disclose any confidential infonnation until they signed a Non-Disclosure Agreement on
`(Ex. M at 96-99; Fatrnh Deel. ~ 13.) Almost two months before, I
`
`(Ex. Z; Fatrnh Deel. ~ 14.)
`
`CGI suggests that TTI based its Provisional Application on CGI proprietaty technology.
`
`(CGI Br. at 6.) But CGI only disclosed the technology in question,
`
`Disclosure Agreement in
`
`, and almost two months after TTI had akeady filed its
`
`, after the patties had entered into the Non-
`
`4
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 9 of 30 PageID #:1167
`
`Provisional Patent Application. (Ex.Mat 99-100; Ex. U; Ex. Z .) In fact, Ron Brogle, Manager
`
`of CGI Advanced Development Group and person in charge of the possible collaboration with
`
`TTI, testified that
`
`
`
`
`
`
`
`
`
`.
`
`
`
`C.
`
`TTl's Relationship With Home Depot
`
`Since 2002, Home Depot has been the exclusive No1th American retailer of Ryobi
`
`branded power tools from TTI. (Fairnh Deel.~~ 15-16.) TTI sells products under many other
`
`brand names, including Milwaukee®, AEG®, Empire®, Stiletto®, and Ridgid®. (Id. at~ 17.)
`
`Overall, TTI sales to Home Depot account for more than -
`
`percent of TTIPE's No1th
`
`American power tool business. (Id. at~ 18; Ex. V.) Home Depot has often recognized TTI and
`
`its affiliates as its Vendor of the Year. (Fan ah Deel.~ 19; Ex. W.) TTI also has received many
`
`awards for the products it sells at Home Depot. (Fanah Deel.~ 19; Ex. W.)
`
`2
`
`
`
`
`
`5
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 10 of 30 PageID #:1168
`
`Throughout 2015, TTI continued to develop a modular-style GDO. (Id. at ¶ 22.) As part
`
`of this effort, TTI consulted one of its manufacturers, ET Technology (Wuxi) Co. Ltd. (“ET
`
`Door”), due to its experience as a long-time GDO manufacturer. (Id. at ¶¶ 23-24.) ET Door’s
`
`involvement allowed TTI to more quickly complete its development of its GDO product. (Id. at
`
`¶ 25.)
`
`TTI’s experience with battery technology also reduced the time needed to develop its
`
`GDO product. For example, TTI incorporated the battery technology used in the Ryobi One+
`
`Battery system into its GDO product, including modular add-ons enabling a Bluetooth speaker,
`
`laser-guided parking assist, and portable fan. (Id. at ¶¶ 25-26.) All told, TTI spent
`
`approximately
`
` to develop its GDO and the associated modules. (Id. at ¶ 27; Ex. Y.)
`
`II.
`
`CGI Has Not Proven The Need For The Extraordinary Injunctive Relief It Seeks
`“Courts have ‘developed a reluctance to resort to preliminary injunctions in patent
`
`infringement cases, and have constructed a rather strict standard for the granting of this form of
`
`equitable relief.’” See Heidelberg Harris, Inc. v. Mitsubishi Heavy Indus., Ltd., No. 95 C 0673,
`
`1996 WL 189398, at *3 (N.D. Ill. Jan. 9, 1996) (quoting Smith Int’l, Inc. v. Hughes Tool Co.,
`
`718 F.2d 1573, 1578 (Fed. Cir. 1983)). Since “[a] preliminary injunction . . . is considered an
`
`extraordinary remedy, . . . the movant bears the full burden of demonstrating entitlement.”
`
`Unique Coupons, Inc. v. Northfield Corp., No. 99 C 7445, 2000 WL 343225, at *1 (N.D. Ill.
`
`Mar. 30, 2000) (Leinenweber, J.).
`
`To obtain a preliminary injunction, CGI must show “(1) that [it] is likely to succeed on
`
`the merits, (2) that [it] is likely to suffer irreparable harm in the absence of preliminary relief, (3)
`
`that the balance of equities tips in [its] favor, and (4) that an injunction is in the public interest.”
`
`Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). CGI has failed to prove any of
`
`these factors weigh in its favor.
`
`6
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 11 of 30 PageID #:1169
`
`A.
`
`CGI Cannot Show A Likelihood Of Success On The Merits
`
`“[T]he patentee seeking a preliminary injunction in a patent infringement suit must show
`
`that it will likely prove infringement, and that it will likely withstand challenges, if any, to the
`
`validity of the patent.” Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1376 (Fed.
`
`Cir. 2009). “If the accused infringer raises a substantial question concerning either infringement
`
`or invalidity, then the patentee has not established that it is likely to succeed on the merits, and a
`
`preliminary injunction is not appropriate.” LifeScan Scotland, 734 F.3d at 1366.3
`
`The clear and convincing standard for establishing validity does not apply at the
`
`preliminary injunction stage. Titan Tire, 566 F.3d at 1379. Instead, the court “must determine
`
`whether it is more likely than not that the challenger will be able to prove at trial, by clear and
`
`convincing evidence, that the patent is invalid.” Id. “Vulnerability is the issue at the preliminary
`
`injunction stage, while validity is the issue at trial. The showing of a substantial question as to
`
`invalidity thus requires less proof than the clear and convincing showing necessary to establish
`
`invalidity itself.” Amazon.com, 239 F.3d at 1359.
`
`Once the defendant raises a substantial question of invalidity or infringement, the burden
`
`shifts to the plaintiff to respond with contrary evidence. See Titan Tire, 566 F.3d at 1377. “[I]t
`
`is the patentee, the movant, who must persuade the court that, despite the challenge presented to
`
`validity, the patentee nevertheless is likely to succeed at trial on the validity issue.” Id.
`
`1.
`A Substantial Question About Infringement Of The ‘275 Patent Exists
`Claim 1 of the ‘275 Patent provides:
`A movable barrier operator comprising:
`
`
`3 See also Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1359 (Fed. Cir. 2001)
`(reversing preliminary injunction because defendant raised issue of obviousness); Market Track,
`LLC v. Efficient Collaborative Retail Mktg., LLC, No. 14 C 4957, 2015 WL 3637740 at *15
`(N.D. Ill. June 12, 2015) (Tharp, J.) (denying preliminary injunction where substantial question
`of validity existed).
`
`7
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 12 of 30 PageID #:1170
`
`a controller having a plurality of potential operational status conditions defined, at
`least in part by a plurality of operating states;
`
`a movable barrier interface that is operably coupled to the controller;
`
`a wireless status condition data transmitter that is operably coupled to the
`controller, wherein the wireless status condition data transmitter transmits a status
`condition signal that:
`
`corresponds to a present operational status condition defined, at least in part, by at
`least two operating states from the plurality of operating states; and
`
`comprises an identifier that is at least relatively unique to the movable barrier
`operator, such that the status conditional signal substantially uniquely identifies
`the movable barrier operator.
`
`(Ex. A at 8:5-21.) Claim 5 depends from Claim 1 and requires that the two operating states
`
`recited in Claim 1 be selected from the list of operating states recited in claim 5. (Id. at 8:30-47.)
`
`CGI has not met its burden of demonstrating a substantial likelihood of success on its
`
`affirmative infringement case. To attempt to show infringement, CGI relies on the declaration of
`
`its technical expert, Dr. Thomas Rhyne. But Dr. Rhyne failed to address all elements of Claims
`
`1 and 5. Although he opines that the Ryobi GDO transmits a “status condition signal” that
`
`contains a “present operational status condition defined, at least in part, by at least two operating
`
`states” (ECF No. 013, Rhyne Decl. ¶¶ 103, 117), Dr. Rhyne nowhere explains how the display of
`
`the garage door in the “open” operating state demonstrates that the Ryobi GDO transmits an
`
`operational status condition “defined by” at least two operating states. (Madisetti Decl. ¶¶ 168-
`
`177.) At his deposition, Dr. Rhyne could not explain how the Ryobi GDO transmits a signal
`
`meeting the elements of Claim 1, and admitted that additional discovery was needed before he
`
`could determine how the Ryobi GDO operates. (Ex. N at 104-105, 112.) Because Dr. Rhyne
`
`failed to address all of the elements of Claims 1 and 5, CGI has not met its burden of
`
`demonstrating a likelihood of success on the merits for infringement of the ‘275 Patent.
`
`8
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 13 of 30 PageID #:1171
`
`2.
`
`A Substantial Question About The Validity Of The ‘275 Patent Exists
`a. The ‘275 Patent Claims Well-Known Prior Art Features
`The ‘275 Patent acknowledges that “controllers,” “movable barrier interfaces,” and
`
`
`
`“transmitters” were “well understood in the art” prior to the purported invention of the ‘275
`
`patent. (Ex. A at 3:49-53, 4:2-4.) It also acknowledges that the prior art included “movable
`
`barrier operators [that] can sense the likely presence of an obstacle in the path of the movable
`
`barrier and take appropriate corresponding action” (id. at 1:36-38) and some movable barriers
`
`“have a plurality of operating modes” (id. at 1:36-38).
`
`Colin Willmott, CGI’s Director of Engineering, confirmed that prior art wireless
`
`transmitters “existed in the garage door field” and that they could send data using the Internet
`
`and cellular networks. (Ex. P. at 69-70.) He likewise admitted that, before the May 29, 2003
`
`priority date of the ‘275 Patent, those in the field knew that (i) a garage door controller “can be
`
`self-aware” of “operational status conditions” (id. at 102); (ii) a controller could store data from a
`
`position sensor and “receive transmissions from a transmitter associated with the garage door
`
`operator” (id. At 107-08); and (iii) a transmitter could send signals containing identification data
`
`of the transmitting device, such as MAC addresses (id. at 83-84).
`
`As the ‘275 Patent file history demonstrates, CGI told the PTO that its invention involved
`
`the transmission of unique identifiers. (Ex. AA at 12.) After receiving several anticipation and
`
`obviousness rejections from the PTO, CGI amended Claim 1 to include the “identifier that is at
`
`least relatively unique to the movable barrier operator” element. (Id. at 2.) CGI told the PTO
`
`that the prior art “made no teachings or suggestions regarding the provision of an identifier of
`
`any kind to accompany his transmissions.” (Id. at 12.) CGI also claimed that its application
`
`“teaches and discloses something quite different,” namely “the provision of a substantially
`
`unique identifier” to “permit the receiver to differentiate” information. (Id. at 13-14.)
`
`9
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 14 of 30 PageID #:1172
`
`To the contrary, unique identifiers were well known in the art. For example, on
`
`December 1, 1999, Bluetooth issued its Bluetooth Specification Version 1.0B, defining a
`
`Bluetooth device address (“BD_ADDR”) as “the 48-bit IEEE address which is unique for each
`
`Bluetooth unit.” (Ex. K at 143.)4
`
`
`
`
`
`Thus, the unique device identifiers of Claim 1 existed well before CGI filed the ‘275 Patent.
`
`Media Access Control (“MAC”) addresses were similarly well known before CGI filed
`
`the ‘275 Patent. According to Dr. Rhyne, “a MAC address is a unique identifier assigned to a
`
`device’s network interface for use during communication on a network.” (Rhyne Decl. ¶ 43, n.
`
`6.)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`One of CGI’s other patents, U.S. Patent No. 4,750,118, which issued on June 7, 1998
`
`and predates the ‘275 patent by several years, teaches remote transmitters in GDOs where “each
`
`transmitter has its own unique and permanent nonuser changeable code” and a receiver being
`
`“capable of storing and remember a number of different codes corresponding to different
`
`transmitters.” (Ex. F at 1:33-43.) Thus, the ‘275 patent’s claimed identifier is not new or
`
`inventive.
`
`b. Menard Anticipates The ‘275 Patent
`“A patent is invalid for anticipation if a single prior art reference discloses each and every
`
`
`4 BD_ADDRs are derived from the Institute of Electrical and Electronic Engineers (“IEEE”)
`Standard IEEE802, version 1.0 of which was originally published in 1999. (Ex. K.)
`
`10
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 15 of 30 PageID #:1173
`
`limitation of the claimed invention. Moreover, a prior art reference may anticipate without
`
`disclosing a feature of the claimed invention if that missing characteristic is necessarily present,
`
`or inherent, in a single anticipating reference.” Schering Corp. v. Geneva Pharm., Inc., 339
`
`F.3d 1373, 1377 (Fed. Cir. 2003). In preliminary injunction cases, the Federal Circuit has held a
`
`defendant raises a substantial question of anticipation even when all elements are not necessarily
`
`disclosed in one reference. Helifix Ltd. v. Block-Lok, Ltd., 208 F.3d 1339, 1352 (Fed. Cir. 2000).
`
`Here, disclosures of the prior art raise substantial questions regarding the validity of the
`
`‘275 Patent. For example, U.S. Patent Application Publication No. 2002/0183008 to Menard
`
`(“Menard”), titled “Power Door Control and Sensor Module for a Wireless System” and
`
`published on December 5, 2002, discloses each element of Claim 1 of the ‘275 patent. (Ex. C.)
`
`To begin with, Menard discloses the movable barrier operator required by the Preamble
`
`of Claim 1. (Id. ¶ [0022]) (“In the figure, GDO 10 represents a garage door opener.”). Figure 2
`
`of Menard also discloses the “controller” or “processor” identified in Claim 1.
`
`(Id.) The Menard “processor” has “a plurality of potential operational status conditions, defined,
`
`
`
`11
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 16 of 30 PageID #:1174
`
`at least in part, by a plurality of operating states” as required by the first limitation of Claim 1.
`
`(Ex. A at 8:6-8; Madisetti Decl. ¶¶ 61-65.) According to Menard, “[a]mong the programming
`
`functions in one embodiment are instructions for causing processor 120 to actuate a particular
`
`control upon receiving a predetermined signal. For example, if a garage door position sensor
`
`indicates that the door is in a raised position and an obstruction in the path of the garage door
`
`travel is detected by an optical sensor, then a signal received by the processor requesting the door
`
`to be closed is met with programming requesting that the obstruction be cleared before the door
`
`will travel.” (Ex. C ¶ [0025] (emphases added).)
`
`Claim 1 also requires a “movable barrier interface.” (Ex. A at 8:9.) Menard’s Figure 2
`
`depicts a movable barrier interface as a line connecting the Processor 120 to the GDO.
`
`(Madisetti Decl. ¶ 68.) Claim 1 requires the “movable barrier interface” be “operably coupled to
`
`the controller.” (Ex. A at 8:9-10.) Menard’s interface is coupled to its Processor 120, its
`
`“controller.”5 (Madisetti Decl. ¶¶ 67-68.)
`
`The next limitation of Claim 1 requires “a wireless status condition data transmitter that
`
`is operably coupled to the controller, wherein the wireless status condition data transmitter
`
`transmits a status condition signal.” (Ex. A at 8:11-14.) Figure 2 of Menard shows Transceiver
`
`130, which is a wireless status condition data transmitter coupled to the controller (i.e., Processor
`
`120 in connection with Programming 150) and transmits a status signal corresponding to the
`
`condition of the door. (Ex. C ¶¶ [0021], [0068].) Menard teaches that “Transceiver 130
`
`represents a wireless receiver and transmitter able to communicate using both a long range
`
`communication protocol and a short range communication protocol.” (Id. ¶ [0026]; Madisetti
`
`Decl. ¶ 70.)
`
`5 In Figure 2, the GDO 10 is pictured outside of the system. But the Menard specification
`explains that “other embodiments of the system are also contemplated, one of which includes the
`garage door opener as part of the system.” (Ex. C ¶ [0022].)
`
`12
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 17 of 30 PageID #:1175
`
`Under Claim 1, the status condition signal “corresponds to a present operational status
`
`condition defined, at least in part, by at least two operating states from the plurality of operating
`
`states.” (Ex. A at 8:15-17.) Menard likewise teaches that the door position is sent to the user
`
`and includes one or a number of positions, such as open, partially closed, or fully closed:
`
`[T]he user receives notification of the door position information. The door
`position may be indicated by a pair of lights on a pager (one light labeled “open”
`and another “close”), by a graphical image on a screen, a recognizable audio tone,
`a recognizable vibration, or any other means of indicating position to a user.
`
`(Ex. C ¶ [0069].) Menard also teaches responding when “a garage door position sensor indicates
`
`that the door is in a raised position and an obstruction in the path of the garage door travel is
`
`detected by an optical sensor” by transmitting a “request[] that the obstruction be cleared.” (Id. ¶
`
`[0025]; Madisetti Decl. ¶¶ 72-74.) Additionally, Menard instructs that “any other information”
`
`may be sent to the user’s device as well (e.g., the described temperature and obstruction
`
`information). (Ex. C ¶ [0066].)
`
`The status condition signal of Claim 1 “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.” (Ex. A at 8:18-21.) Menard describes using
`
`its system to control “several door openers”: “In one embodiment, programming 150 allows a
`
`user having a cellular telephone in communication with system 100 to control and monitor each
`
`of several door openers 10, or other systems coupled to processor 120.” (Ex. C ¶ [0071].) To
`
`differentiate between door openers, Menard would necessarily have to “substantially uniquely
`
`identify” each door. (Madisetti Decl. ¶ 77.)6
`
`
`6 Menard also anticipates dependent Claim 5 of the ‘275 Patent, which depends from Claim 1.
`Claim 5 recites a number of potential operating states for the GDO, including moving the barrier
`in a first or second direction and detecting the presence of an obstacle. Menard describes that
`states for the door “include partially, or fully, closing the door” and recognizing when “a [GDO]
`sensor indicates that the door is in a raised position and an obstruction in the path of the garage
`
`13
`
`

`

`Case: 1:16-cv-06097 Document #: 71 Filed: 08/02/16 Page 18 of 30 PageID #:1176
`
`Moreover,