By George Basharis, J.D.
The Federal Circuit reversed a determination by the International Trade Commission that the importation and sale of Ryobi garage door openers infringed a patent belonging to Chamberlain Group, Inc.
The Federal Circuit has determined that wall-mounted control units used by Ryobi garage door openers did not infringe on a Chamberlain Group patent for wall consoles because the Chamberlain patent was properly construed as a wall-mounted control unit using a passive infrared detector, a feature that was missing from the Ryobi openers. The Chamberlain patent disavowed wall consoles lacking a passive infrared detector because the specification repeatedly identified the placement of an infrared detector in the wall unit as the critical and inventive feature of the patent (Techtronic Industries Co. Ltd. v. ITC, December 12, 2019, Lourie, A.).
Chamberlain owns U.S. Patent 7,161,319 (the ’319 patent) for "connected" garage door openers that use microcontrollers and a passive infrared sensor within the opener’s wall-mounted control unit to operate the opener’s lights. According to the ’319 patent, a passive infrared sensor that is located within the wall-mounted unit was an improvement over the prior art of using sensors located in the garage door’s head unit.
Chamberlain filed a complaint with the International Trade Commission (ITC) claiming that Techtronic Industries Co. Ltd., Techtronic Industries North America Inc., One World Technologies Inc., OWT Industries Inc., and ET Technology Co. Ltd. (collectively, TTI) violated the Tariff Act of 1930 by importing and selling in the U.S. Ryobi "connected" garage door openers that infringed on Chamberlain’s ’319 patent. The ITC started an investigation, and an Administrative Law Judge determined that Chamberlain had disavowed coverage of wall-mounted control units, like the Ryobi openers, that did not use a passive infrared detector located in the wall console. The ALJ’s determination was based on the construction of the claim term "wall console." According to the ALJ, the term "wall console" as used in the ’319 patent was limited to a "wall-mounted control unit including a passive infrared detector." The ALJ rejected Chamberlain’s argument that the claim term should be construed simply as a "wall-mounted control unit."
The ITC reversed the ALJ, agreeing with Chamberlain that locating the infrared detector within the wall console was only one aspect of the ’319 patent. The ITC then entered exclusion and cease and desist orders against TTI.
On appeal, the Federal Circuit found that Chamberlain’s patent had disavowed wall consoles without an infrared detector. The ’319 patent consistently described the invention as a wall console with a passive infrared detector and disparaged prior art garage door openers that placed the detector in the head unit, the court noted. The specification was responsive to the prior art deficiency identified in the patent. Also, it repeatedly set forth as its objective the movement of the detector from the head unit to the wall console. Consequently, the ’319 patent disavowed wall consoles such as the ones used by Ryobi that lacked a passive infrared detector, the court said. The patent’s recitation of another invention related to microcontrollers did not undermine the court’s conclusion that the infrared detector must be in the wall unit. Finally, although the prosecution history of the ’319 patent did not reiterate the specification’s disavowal, it also did not contain statements that were contradictory to disavowal, the court said. There was no indication that Chamberlain defined "wall console" differently in the prosecution history than in the specification such that would make disavowal unlikely.
This case is No. 2018-2191.
Attorneys: Jason C. White (Morgan, Lewis & Bockius LLP) for Techtronic Industries Co. Ltd., Techtronic Industries North America, Inc. and One World Technologies, Inc. Carl Paul Bretscher for the ITC.
Companies: Techtronic Industries Co. Ltd.; Techtronic Industries North America, Inc.; One World Technologies, Inc.
MainStory: TopStory Patent FedCirNews
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