A Chicago district court erred in granting The Chamberlain Group, Inc. (CGI) a preliminary injunction in an infringement suit against competitor Techtronic Industries Co. Ltd. (TTI), according to the U.S. Court of Appeals for the Federal Circuit. The court found that the injunction was based on an erroneous claim construction, which led the district court to rule in error that TTI did not raise a question of validity of the patent-in-suit. The injunction was vacated and the case remanded (The Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd., January 25, 2017, Lourie, A.).
U.S. Patent 7,224,275 (the ’275 patent), which is directed to garage door openers that wirelessly transmit status information, covers garage door openers sold by CGI in several stores, including Home Depot. Claim 1 of the ’275 patent covers 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. TTI, which manufactures and sells power tools and accessories under the brand name Ryobi, sells the Ryobi GD200 garage door opener exclusively through Home Depot.
A district court granted CGI an injunction with respect to claims 1 and 5 of the ’275 patent in its infringement suit against TTI because none of the prior art cited by TTI taught the concept of the "selfaware" controller. Thus, the district court issued an order enjoining TTI from "making, using, selling, or offering to sell in the United States or importing into the United States the Ryobi GD200 garage door opener in a configuration that infringes claims 1 and 5 of the ’275 [p]atent." TTI appealed.
Based on the written description and prosecution history, the court rejected the district court’s construction of "controller." The district court construed "controller" in claim 1 to be a "self-aware [controller], i.e., that it did not rely upon any external sensors to obtain the status conditions of the [garage door opener], and which it was able to transmit upon request." TTI argued that the court improperly read a "self-aware controller" limitation into the claims. The written description made clear the controller did not need to be self-aware, and contemplates both self-aware controllers and controllers that rely on sensors. The prosecution history contradicted the conclusion that "the only way to distinguish the ’275 patent from the prior art was for the examiner to conclude that the ’275 patent does not rely on external sensors."
The district court abused its discretion in granting the preliminary injunction and finding that TTI did not raise a question of validity, according to the court. The incorrect construction of "controller" was the court’s sole basis for determining that TTI had not raised a substantial question of invalidity. Thus, the injunction was vacated.
CGI’s alternative bases for affirmance were not considered by the court because they involved factual issues not addressed by the district court’s opinion.
The cases are Nos. 2016-2713 and 2017-1220.
Attorneys: Katherine Vidal Benjamin Elacqua, Michael Rueckheim, Maria Elena Stiteler (Fish & Richardson, PC) for The Chamberlain Group, Inc. Jason C. White, Michael J. Abernathy, Sanjay K. Murthy, Nicholas A. Restauri, William R. Peterson, Nicholaus E. Floyd, and Julie S. Goldemberg (Morgan, Lewis & Bockius LLP) for Techtronic Industries Co. Ltd., Techtronic Industries North America, Inc., One World Technologies, Inc., OWT Industries, Inc., and Ryobi Technologies, Inc.
Companies: The Chamberlain Group, Inc.; Techtronic Industries Co. Ltd.
MainStory: TopStory Patent FedCirNews
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