Lear Automotive Dearborn v. Johnson Controls

• Decision Date: 02 November 2007
• Docket Number: No. 04-73461.,04-73461.
• Citation: 528 F.Supp.2d 654
• Parties: LEAR AUTOMOTIVE DEARBORN, INC. and Lear Corporation, Plaintiffs, v. JOHNSON CONTROLS, INC. and Johnson Controls Interiors LLC, Defendants.
• Court: U.S. District Court — Eastern District of Michigan

528 F.Supp.2d 654

LEAR AUTOMOTIVE DEARBORN, INC. and Lear Corporation, Plaintiffs, v. JOHNSON CONTROLS, INC. and Johnson Controls Interiors LLC, Defendants.

No. 04-73461.

United States District Court, E.D. Michigan, Southern Division.

November 2, 2007.

COPYRIGHT MATERIAL OMITTED

David M. Hayes, Edward J. Hood, Clark Hill, Detroit, MI, Kimball R. Anderson, Winston & Strawn, Paul C. Gibbons, Robert P. Greenspoon, Sally Wiggins, Timothy J. Haller, Niro, Scavone, Chicago, IL, Ernie L. Brooks, Frank A. Angileri, John M. Halan, Brooks & Kushman, Southfield, MI, for Plaintiffs.

Deborah J. Swedlow, J. Michael Huget, James E. Stewart, Butzel Long, Ann Arbor, MI, Jason D. Menges, John A. Vanophem, Foley & Lardner, Philip J. Kessler, David F. Dumouchel, Butzel Long, Detroit, MI, Jeffrey N. Costakos, John C. Cooper, III, Foley & Lardner, Milwaukee, WI, for Defendants.

OPINION AND ORDER REGARDING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT REGARDING RODDY PATENT

GERALD E. ROSEN, District Judge.

I. INTRODUCTION

Plaintiffs Lear Automotive Dearborn, Inc. and Lear Corporation (collectively "Lear") commenced this suit in this Court on September 7, 2004, alleging that the "HomeLink" remote-control garage door opener product manufactured and sold by Defendants Johnson Controls, Inc. and Johnson Controls Interiors LLC (collectively "JCI") infringes several patents owned by Lear. JCI, in turn, has asserted counterclaims of non-infringement and patent invalidity and/or unenforceability against Lear. This Court's jurisdiction rests upon the parties' assertion of claims and counterclaims under the federal patent laws, 35 U.S.C. § 1 et seq. See 28 U.S.C. § 1338(a).

Through a pair of motions filed on February 1, 2006, JCI now seeks summary judgment in its favor as to (i) its noninfringement of one of the patents-in-suit, U.S. Patent No. 5,731,756 (the "Roddy patent"), as well as the invalidity' and unenforceability of this patent, and (ii) its noninfringement of the remaining two patentsin-suit, U.S. Patent No. RE 36,181 and U.S. Patent No. RE 36,752 (collectively, the "Koopman patents"). In support of its claims of non-infringement, JCI contends that the patent claims asserted by Lear in this case, if properly construed, do not encompass the features found in JCI's HomeLink product. JCI further contends that the Roddy patent is anticipated by the prior art, and hence is invalid, and that this patent also is unenforceable by virtue of the alleged failure to disclose material prior art during patent prosecution.

These motions have been fully briefed by the parties, and the Court heard oral argument limited to the first of these motions on October 26, 2006.¹ Having reviewed the parties' written submissions and the record as a whole, and having considered the arguments of counsel at the October 26 hearing, the Court now is prepared to rule on JCI's motion regarding the Roddy patent. This Opinion and Order sets forth the Court's rulings on this motion.

II. FACTUAL BACKGROUND

A. The Technology at Issue in This Case

Although the specific patent claims and products involved in this suit are discussed in greater detail below, as pertinent to the particular issues raised by the parties, it is helpful at the outset to describe the general nature and contours of the technology at issue here. In particular, this case concerns remote-control technology for opening garage doors, as well as for related purposes such as remote keyless entry into a vehicle.

In the past, garage door opener ("GDO") systems, as well as remote keyless entry ("RKE") systems for `locking and unlocking vehicle doors, used so-called "fixed code" technology, meaning that a transmitter always sent precisely the same radio frequency ("RF") signal to a receiver that was hard-wired to recognize only this signal and perform the appropriate function (e.g., open a garage door). Among the various limitations of these systems, their use of fixed-code technology enabled their signals to be intercepted by thieves and retransmitted to gain access to the owner's garage or vehicle.

By the early 1990s, several companies developed technology for encrypting the signals sent from the transmitter to the receiver in GDO and RKE systems. Encryption is a process of translating a message (often referred to as the "plaintext") into an encoded message (the "ciphertext") so as to disguise its contents from would be interceptors. Decryption, in contrast, is a process through which ciphertext is translated back into plaintext.

The fixed-code systems of the past did not use encryption or decryption, but simply transmitted the same unencrypted signal time after time. The incorporation of encryption improved the security of RKE and GDO systems to some extent, but still left them vulnerable to interception and re-transmission of their encrypted signals. Eventually, however, manufacturers of RKE and GDO systems began to develop. sophisticated methods of encryption that did not simply transmit the same encrypted signal time after time, but rather gen erated a different encrypted signal each time the user pushed the button on the transmitter. This technology, whereby the transmitter and receiver are able to generate and authenticate, respectively, a different encrypted signal for each successive push of a button, typically is referred to as "rolling-code" or "code-hopping" encryption.

B. The General Nature of the Patents-in-Suit

In this case, Plaintiffs Lear Automotive Dearborn, Inc. and Lear Corporation (collectively "Lear") allege that Defendants Johnson Controls, Inc. and Johnson Controls Interiors LLC (collectively "JCI") have infringed three patents owned by Lear. These three patents, broadly speaking fall within two discrete categories of technology used in GDO and RKE systems.

The first patent-in-suit is U.S. Patent No. 5,731,756 (the "Roddy patent"), which was issued to inventor Timothy Roddy on March 24, 1998, and assigned to his employer (and Lear's predecessor-in-interest), United Technologies Automotive, Inc. The claims of this patent describe, as a general matter, methods for allowing a user to remotely actuate various systems in and around a home, including garage door openers, home security systems, and lights, by means of a universal control device that incorporates rolling-code encryption technology.

The remaining two patents-in-suit are U.S. Patent No. RE 36,181 and U.S. Patent No. RE 36,752 (the '181 and '752 patents or, collectively, the "Koopman patents"), which again were assigned to Lear's predecessor-in-interest, United Technologies Automotive. These two patents, generally speaking, disclose methods of cryptographically encoding and authenticating RF signals sent from transmitters to receivers in RKE systems. These inventions, according to Lear, significantly improved the security of the remote control systems that incorporated them, making it far more difficult to breach these systems. These patents—or, at a minimum, the claims at issue in this case— utilize a "rolling-code" encryption methodology. In addition, the '752 patent addresses the need to ensure that the key "fob" in a RKE system remains synchronized with the receiver unit mounted in the automobile, even when, for example, the vehicle owner presses a button on the fob when it is beyond the range of the car.

C. JCI's "HomeLink" Remote-Control Garage Door Opener

Beginning in the early 1990s, a predecessor-in-interest of JCI, the Prince Corporation, developed the "HomeLink" system that Lear accuses of infringement in this case. HomeLink features a remote-control transmitter that typically is built into a vehicle's overhead console, mirror, or visor, allowing the vehicle owner to press a button and transmit a RF signal to a receiver that responds by opening or closing a garage door. According to JCI, the principal advantage of its HomeLink system is that it can be trained to activate virtually any GDO on the market, regardless of manufacturer. The system typically includes multiple buttons, permitting a single built-in transmitter to communicate with several GDOs (or other systems).

III. ANALYSIS

A. The Standards Governing JCI's Motion

Through the motion presently under consideration, JCI seeks summary judgment in its favor as to the issues of (i) noninfringement of the Roddy patent, and (ii) invalidity and/or unenforceability of this patent. Under the pertinent Federal Rule, summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the `Diving party is entitled to judgment as a matter of law." Fed. R.Civ.P. 56(c).

Three 1986 Supreme Court cases—Matsushita Electrical Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986), Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), and Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)—ushered in a "new era" in the federal courts' review of motions for summary judgment. These cases, in the aggregate, lowered the movant's burden in seeking summary judgment. As stated in Celotex:

In our view, the plain language of Rule 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof.

Celotex, 477 U.S. at 322, 106 S.Ct. 2548.

After reviewing the above trilogy of cases, the Sixth Circuit adopted a series of principles governing motions for summary judgment. These principles include:

* The movant must meet the initial burden of showing "the absence of a genuine issue of material fact" as to an essential element of the non-movant's case. This burden may be met by pointing out to the court that the...