Chamberlain Grp., Inc. v. Techtronic Indus. Co.

• Decision Date: 21 August 2019
• Docket Number: 2018-2228,2018-2103
• Citation: 935 F.3d 1341
• Parties: The CHAMBERLAIN GROUP, INC., Plaintiff-Appellee v. TECHTRONIC INDUSTRIES CO., Techtronic Industries North America, Inc., One World Technologies, Inc., OWT Industries, Inc., Ryobi Technologies, Inc., Defendants-Appellants ET Technology (Wuxi) Co., Defendant
• Court: U.S. Court of Appeals — Federal Circuit

935 F.3d 1341

The CHAMBERLAIN GROUP, INC., Plaintiff-Appellee

v. TECHTRONIC INDUSTRIES CO., Techtronic Industries North America, Inc., One World Technologies, Inc., OWT Industries, Inc., Ryobi Technologies, Inc., Defendants-AppellantsET Technology (Wuxi) Co., Defendant

2018-2103

2018-2228

United States Court of Appeals, Federal Circuit.

Decided: August 21, 2019

Juanita Rose Brooks, Fish & Richardson, PC, San Diego, CA, argued for plaintiff-appellee. Also represented by Maria Elena Stiteler, Minneapolis, MN; Benjamin Elacqua, Houston, TX; Steffen Nathanael Johnson, Wilson Sonsini Goodrich & Rosati, Washington, DC; Katherine Vidal, Matthew R. McCullough, Michael Rueckheim, Winston & Strawn LLP, Menlo Park, CA.

Jason C. White, Morgan, Lewis & Bockius LLP, Chicago, IL, argued for defendants-appellants. Also represented by Michael J. Abernathy, Sanjay K. Murthy, Nicholas A. Restauri ; Julie S. Goldemberg, Philadelphia, PA; William R. Peterson, Houston, TX; Sean C. Cunningham, Erin Gibson, Stanley Joseph Panikowski, III, DLA Piper LLP (US), San Diego, CA.

Before Lourie, O'Malley, and Chen, Circuit Judges.

Chen, Circuit Judge.

Techtronic Industries Co. Ltd., Techtronic Industries North America, Inc., One World Technologies, Inc., OWT Industries, Inc., and Ryobi Technologies, Inc. (collectively, TTI) appeal from the opinion and order of the United States District Court for the Northern District of Illinois denying TTI's motion for judgment as a matter of law (JMOL) and granting Chamberlain Group, Inc.'s (CGI) motions for enhanced damages and attorney fees. TTI also appeals the jury's verdict with respect to infringement and validity. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Because we conclude that claims 1, 5, and 15 of CGI's U.S. Patent No. 7,224,275 (’275 patent) are directed to an abstract idea and therefore patent-ineligible, we reverse the district court's JMOL decision with respect to the ’275 patent on 35 U.S.C. § 101 grounds. We affirm the jury's verdict with respect to its finding of no anticipation of claims 14, 17, and 18 of CGI's U.S. Patent No. 7,635,966 (’966 patent) by U.S. Patent No. 6,484,784 (Weik). Accordingly, we vacate the district court's injunction and its awards of enhanced damages and attorney fees, and remand to the district court for reconsideration of enhanced damages and attorney fees with respect to only the ’966 patent.

A. THE ’275 PATENT

The ’275 patent relates to an apparatus and method for communicating information about the status of a movable barrier, for example, a garage door. The ’275 patent explains that, "[o]ver time, the capabilities of and features supported by ... movable barrier operators ... expanded to include actions other than merely opening and closing a corresponding movable barrier." ’275 patent at col. 1, ll. 31–34. Some movable barrier operators could provide ambient lighting, for example, or sense the presence of an obstacle in the path of the movable barrier and take an appropriate action. Id. at col. 1, ll. 34–38. The ’275 patent explains that the movable barrier operator may communicate information relating to the movable barrier's status with respect to these actions with various peripheral devices, including sensors, alarms, displays, lights, and so forth. Id. at col. 1, ll. 54–61. Rather than communicating this information over a physical signaling path, the asserted claims recite communicating it wirelessly. Id. at col. 1, l. 64 – col. 2, l. 16. The specification describes wireless transmitters as being "well understood in the art." Id. at col. 3, l. 54 – col. 4, l. 4.

The parties do not contest the district court's treatment of claim 1 as representative. Claim 1 recites:

1. A movable barrier operator comprising:

a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states;

a movable barrier interface that is operably coupled to the controller;

a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that:

corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and

comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.

Id. at claim 1.

TTI moved for JMOL that the asserted claims of the ’275 patent are directed to patent-ineligible subject matter under § 101. The district court denied TTI's motion, disagreeing with TTI's allegation that the asserted claims are directed to the abstract idea of wireless transmission of content. See J.A. 98. The district court determined that, "[h]ere, the ’275 patent claims are not directed to the transmission of data, but to garage door openers that wirelessly transmit status information." J.A. 99 (internal quotation marks omitted). The district court further determined that the asserted claims are directed to "a particular improvement over prior art which uses a particular manner of sending and experiencing data," which it deemed patent-eligible in light of this court's decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. , 880 F.3d 1356, 1361 (Fed. Cir. 2018), and various other decisions. J.A. 103–05. Because it concluded that the asserted claims were not directed to any abstract idea, the court did not reach step two of Alice Corp. Pty. Ltd. v. CLS Bank Int'l , 573 U.S. 208, 218, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014). J.A. 106.

Patent eligibility under § 101 is a question of law that may contain underlying issues of fact. Interval Licensing LLC v. AOL, Inc. , 896 F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc. , 881 F.3d 1360, 1365 (Fed. Cir. 2018) ). We review an ultimate conclusion on patent eligibility de novo. See id.

The Supreme Court has deemed certain categories of subject matter, including abstract ideas, ineligible for patent protection under § 101. Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 566 U.S. 66, 70, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012). "The ‘abstract ideas’ category embodies the longstanding rule that an idea of itself is not patentable." Alice Corp. , 573 U.S. at 218, 134 S.Ct. 2347 (internal brackets and quotation marks omitted). To determine whether claimed subject matter is patent-eligible, we apply the two-step framework set forth in Alice . Id. First, we "determine whether the claims at issue are directed to a patent-ineligible concept," such as an abstract idea. Id. Second, if so, we "examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application." Id. at 221, 134 S.Ct. 2347 (quoting Mayo , 566 U.S. at 72, 80, 132 S.Ct. 1289 ).

1. Step One

At step one, we "look at the focus of the claimed advance over the prior art to determine if the claim's character as a whole is directed to excluded subject matter." Affinity Labs of Tex., LLC v. DIRECTV, LLC , 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal quotation marks omitted). "[T]he specification [is] helpful in illuminating what a claim is ‘directed to.’ " ChargePoint, Inc. v. SemaConnect, Inc. , 920 F.3d 759, 766 (Fed. Cir. 2019). "But while the specification may help illuminate the true focus of a claim, when analyzing patent eligibility, reliance on the specification must always yield to the claim language in identifying that focus." Id.

We conclude that claim 1 is directed to wirelessly communicating status information about a system. See, e.g. , ’275 patent at claim 1 (reciting that "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"). The specification supports this conclusion. The only described difference between the prior art movable barrier operator systems and the claimed movable barrier operator system is that the status information about the system is communicated wirelessly, in order to overcome certain undesirable disadvantages of systems using physical signal paths—additional cost, exposed wiring, and increased installation time. See id. at col. 1, l. 49 – col. 2, l. 16, col. 3, ll. 16–26.

Wirelessly communicating status information about a system is similar to abstract ideas we have found in our previous cases. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc. , 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that courts typically "examine earlier cases in which a similar or parallel descriptive nature can be seen" as part of their abstract idea analysis). In DIRECTV , we found claims reciting the function of wirelessly communicating regional broadcast content to an out-of-region recipient to be directed to the abstract idea of "providing out-of-region access to regional broadcast content." DIRECTV , 838 F.3d at 1258. In Affinity Labs of Texas, LLC v. Amazon.com Inc. , 838 F.3d 1266 (Fed. Cir. 2016), we found claims reciting media systems that deliver streaming content to a handheld wireless electronic device to be directed to the abstract idea of "delivering user-selected media content to portable devices." Id. at 1269. As such, the broad concept of communicating information wirelessly, without more, is an abstract idea.

This case is unlike those in which we have determined that the claims were not directed to abstract ideas. In Thales Visionix Inc. v. United States , 850 F.3d 1343, 1344–45 (Fed. Cir. 2017), to which CGI likens the asserted claims, the claimed advance over the prior art related to a new, specific way in which sensors measured inertial changes. See id. at 1345. In the prior art, the measurement occurred with respect to the earth, but, in the asserted claims, "[w]hen the moving platform...