CAFC Reverses ITC, Vacates Exclusion Orders Against Garage Door Opener Products

By Steve Brachmann
December 16, 2019

“Where the inventor has clearly set forth a different definition of a claim term, or has manifested that the invention does or does not include a particular aspect, that intention ‘is regarded as dispositive.’” – Federal Circuit decision

https://depositphotos.com/10042948/stock-illustration-red-boxing-glove-conceptual-vector.htmlOn Thursday, December 12, the U.S. Court of Appeals for the Federal Circuit issued a decision in Techtronic Industries Co. Ltd. v. International Trade Commission in which the appellate court reversed a final determination from the International Trade Commission (ITC) that garage door opener products sold by Techtronic violated a patent owned by The Chamberlain Group. The Federal Circuit found that the ITC erred in its construction of a claim term during its Section 337 investigation of Techtronic. Judge Lourie authored the opinion for the court.

This appeal stems back to a final determination issued by the ITC in March 2018  where the agency found that Techtronic infringed upon multiple claims of U.S. Patent No. 7,161,319, Movable Barrier Operator Having Serial Data Communication. It covers an improved garage door opener having a motor drive unit and a wall console for closing and opening a door. Both the motor drive unit and the wall console have microcontrollers that are connected via a digital data bus. The invention makes use of passive infrared detectors to detect heat from humans in the vicinity to determine when to illuminate the wall console for better sight of the garage door switches.

ITC Analysis

The ITC instituted its Section 337 investigation back in August 2016 based on a complaint by The Chamberlain Group, which owns the ‘319 patent. One World Technologies, OWT Industries and ET Technology (Wuxi) Co. were other respondents in the ITC action who appealed the ITC’s final determination along with Techtronic. In March 2017, the ITC granted the respondents’ motion for summary determination of non-infringement on the asserted claims of the ‘319 patent after an ITC administrative law judge (ALJ) construed the claim term “wall console” to mean “a wall-mounted control unit including a passive infrared detector.” This construction was then amended by the ITC in May 2017 to mean “wall-mounted control unit” and the matter remanded to the ALJ, who issued an initial determination in October 2017 finding a violation of Section 337 through the respondents’ infringement of the ‘319 patent. The ALJ recommended a limited exclusion order against respondents’ importation of infringing devices and a cease-and-desist order based on their significant U.S. inventory of infringing devices. These recommendations were adopted in the March 2018 final determination issued by the ITC, which also found that respondents were unable to prove that the ‘319 patent was invalid as obvious.

In the Federal Circuit’s decision last week, the appellate court noted that the ITC, in vacating the ALJ’s “wall console” construction and finding of non-infringement, had concluded that a patentee isn’t required to recite within the patent claims all of the important features of an invention as laid out by the written description portion of the patent. So, while the specification of the ‘319 patent acknowledged that the principal aspect of the claimed invention was the use of the passive infrared detector, the ITC found that such an acknowledgment wasn’t a limitation to the claim term. Further, the ITC also found claims from other patents sharing a parent application with the ‘319 patent, which indicated the patentee’s intent to claim wall control units both with and without the passive infrared detector elements.

On appeal, Techtronics and the other respondents had argued that The Chamberlain Group had disavowed any patent coverage of garage door openers that didn’t involve the use of passive infrared detectors. That particular feature was included in the sole embodiment of the invention included in the patent. The respondents contended that such a finding would comport with the Federal Circuit’s 2016 decision in Poly-America, L.P. v. API Industries, Inc., in which the court found that a patent’s specification and prosecution history included “clear and unequivocal statements” that a patentee actually intended to limit a claimed invention to a particular embodiment that wasn’t expressly identified by the patent’s claims. In the ITC’s determination, while the specification may have included such a disavowal, there was no clear disclaimer evident from the ‘319 patent’s prosecution history and thus Poly-America didn’t apply.

In response to these arguments, The Chamberlain Group said that the locating of the passive infrared detector in the wall console only constitutes a single aspect of the invention. Further, Chamberlain cited language in the ‘319 patent’s specification that referred to garage door openers more generally, arguing that the more general “characterization of the invention does not rise to the level of a disavowal of claim scope.” The ITC also reiterated its argument based upon the claims of the ‘319 patent’s parent application which don’t specify the location of the passive infrared detectors.

Disavowal Must Be Clear, But Not Necessarily Explicit

Although the Federal Circuit noted that claim terms are typically given their ordinary and customary meaning under the Phillips standard, it held that “where the inventor has clearly set forth a different definition of a claim term, or has manifested that the invention does or does not include a particular aspect, that intention ‘is regarded as dispositive,’” citing to language found in SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc. (2001) While a disavowal must be clear, it doesn’t need to be explicit. Citing to Poly-America, the appellate court concluded that the express statements within the ‘319 patent’s specification regarding the embodiment of the invention was a disavowal of any other embodiment that didn’t involve the placement of the passive infrared detection within the wall console. The ‘319 patent references a need in the art for the use of a passive infrared detector to control the garage door operator’s illumination in a way that easily retrofits an existing operator, and the Federal Circuit found that even the patent’s abstract identified that the solution to this problem was to move the detector to the wall console.

While The Chamberlain Group and the ITC had argued that portions of the patent specification recited a different invention related to programming the microcontroller, the Federal Circuit found that the purpose of that description was to enable the placement of the detector within the wall console. Further, the ‘319 patent’s prosecution history included no clear indication that it conflicted with the disavowal of wall consoles without the passive infrared detector. Along with reversing the claim construction finding from the ITC, the Federal Circuit also reversed the ITC’s finding that the ‘319 patent had been infringed.

Redesigned Products Don’t Infringe

This decision comes about a month after the ITC released the public version of another opinion in the Section 337 investigation  between The Chamberlain Group and Techtronic. There, the ITC found that redesigned garage door openers from Techtronic, OWT and Wuxi did not infringe upon the asserted claims of the ‘319 patent. Therefore, the ITC had already modified the limited exclusion and cease-and-desist orders originally awarded to Chamberlain well before the Federal Circuit issued its decision in this case.

Image Source: Deposit Photos
Vector ID: 10042948
Copyright: almoond 

The Author

Steve Brachmann

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 13 Comments comments.

  1. TFCFM December 17, 2019 10:18 am

    Slip op. at 10: “It is axiomatic that, where the specification “describes ‘the present invention’ as having [a] feature,” that representation may disavow contrary embodiments

    Another patentee tripped up by needlessly describing “the invention” in its specification.

    Practice Tip: Refrain from using the words “the invention,” “my invention,” “this invention,” etc. in your specification — even in the section headings specified in the regs. As this case and others demonstrate, when you talk about “the invention,” courts will take you strictly at your word (at least when your words can be used against you).

    “The subject matter described herein” or similar language nearly always can be used in place of “the invention.”

  2. Anon December 17, 2019 5:31 pm

    As noted elsewhere, this is (yet another) case of patent profanity.

    First, recognize that patent profanity is real (note: many elsewhere appear to NOT do so).

    Second, recognize that patent profanity has at its base an anti-patent judicial over-reach element.

    Third, Congress needs to become more involved and more pro-patent.

    In essence, patent profanity is a trap for the unwary and an erosion against strong patent rights.

  3. TFCFM December 18, 2019 10:17 am

    Anon: “As noted elsewhere, this is (yet another) case of patent profanity.

    OK, I’ll bite.

    What do you mean by “patent profanity”? It’s a tad difficult to opine as to its reality/basis/relevance without an understanding of what you’re attempting to say.

  4. Jam December 18, 2019 2:52 pm

    So how do I “disavow” abstract ideas to get my novel and non-obvious claim to a statutory machine allowed?

    I.e., disavow the ineligible embodiments so that the eligible embodiments may be allowed.

  5. TFCFM December 19, 2019 10:55 am

    Jam: “So how do I “disavow” abstract ideas to get my novel and non-obvious claim to a statutory machine allowed?

    I’m not sure that I fully understand your question, but I believe the answer is to claim what the machine is, rather than (abstractly) what the machine does.

    (Not knowing the particular facts of your situation, I don’t think I can answer more specifically. I hope this is helpful.)

  6. Jam December 19, 2019 12:31 pm

    E.g., for Chamberlain v. Techtronic, 935 F. 3d 1341 (Fed. Cir. 2019), why can’t the patentee disavow the ineligible embodiments so that the novel and non-obvious garage door opener be allowed?

    Same with American Axle v. Neapco, 2018-1763 slip. op. (Fed. Cir. Oct. 3, 2019). Why can’t the patentee disavow that which is ineligible to allow that which is eligible?

    The answer of “patentees should have done a better job claiming so as to not have any scope to ineligible embodiments” is diminished by the fact that the courts have refused to draw the line that distinguishes a claim to an eligible machine and a claim to an ineligible abstract idea. For example, in McRO the court said the claims were eligible (the claimed novel and non-obvious rules are “significantly more” than an abstract idea); however, the courts could have easily said the alternative (i.e., that the claimed novel and non-obvious rules are NOT “significantly more” because they ARE the abstract idea). By allowing judges to rule either way, this becomes a subjective decision that is prone to bias (if not also abuse).

    The disavowal of ineligible subject matter would allow patentees to sidestep this threat of bias and abuse, to which the cynic would argue is why the courts would not allow such disavowal to have any meaning. I.e., a judge would come up with some sophistry about how 101 can’t be disavowed (but the lines between abstract ideas and machines can be erased so that any claim anywhere can be invalidated).

    A claim to a garage door opener performing a novel and non-obvious action should be patent eligible. This supports to the progress of science and the useful arts by making new things or improvements to things.

    If you want to argue that the claim in Chamberlain (see 935 F.3d 1345) merely recited a garage door opener capable of performing a novel and non-obvious function instead of a garage door opener performing a novel and non-obvious action (which is a 112f issue), then that’s fine. But show a way, “any” way, to eligibility for novel and non-obvious claims that even a biased judge would be forced to accept. The courts refuse to do so and continue to play hide the ball with 101.

  7. Anon December 19, 2019 2:39 pm

    TFCFM,

    Now I know that you do not have a USPTO registration number.

  8. TFCFM December 23, 2019 10:36 am

    Jam@#6: “Why can’t the patentee disavow that which is ineligible to allow that which is eligible?

    One reason, certainly is 35 USC 112(b) (a.k.a. “the notice function of patents), which reads: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention (emphasis added).”

    Folks are entitled to know where a patent starts and stops (WITHOUT having to get sued and potentially held liable for infringement). Requiring patentees (who, surely, know their own inventions better than anyone else) to tell all of us where their invention begins and ends seems to make eminent sense — all the more so given that patentees are permitted to include dependent claims which can specifically set out “backup” positions in case their broadest definitions for their inventions (i.e., claims) turn out to include subject matter to which they are not entitled to claim.

  9. Anon December 23, 2019 5:29 pm

    I have to chuckle at TFCFM, giving advice on 35 USC 112(b) without even recognizing the damage that the Court (and courts) have done to that very same provision of power/responsibility.

    He seems to have no trouble when the Court rips that power away and states what a claim IS “directed to,” but at the bare hint that a patentee may choose to disavow ineligible (and that would be ineligible interpretations, while leaving eligible material present.

    What’s that about “notice function?” Another chuckle, given that LAW WRITING also has a notice function (and one “conveniently” absent from discussions of the wreck of patent law that the Court has written).

  10. TFCFM December 24, 2019 10:11 am

    Chuckling is not substantive commentary. (Instead, it is “avoiding the issue” and “tiresome.”)

    Would you contend that our patent statutes do not require inventors to clearly identify their inventions?

    (“My invention is somewhere in this area, and I ‘disavow’ anything that is not patentable, whatever that might be,” is not such a clear identification.”)

  11. Anon December 25, 2019 7:52 am

    TFCFM,

    Merry Christmas. I have avoided no issue and whether something is “tiresome” is entirely (as you use the term) subjective and personal.

    A such, your retort is itself tiresome, as you clearly avoid the issue I presented in post 9 as to which branch of the government has been the bigger violator of what Congress wrote in 35 USC 112, and FAIL to grasp the point that I provided that YOU are perfectly willing to ignore harm to patent law depending on your own desired outcomes (and apparent lack of understanding of patent law history).

    It does NOT take too much effort to see that I am not taking issue with what you said at post 8 as to what inventors following 35 USC 112 must comply with (and that you seem to want to make that the thrust of my post is not substantive commentary on your part – instead, that’s called moving the goalposts or simply ignoring the point presented).

  12. TFCFM December 26, 2019 10:25 am

    Commenter Jam’s question inquired about why patent applicants cannot pursue a certain strategy. The requirements of section 112 are among the reasons, which is why I mentioned them.

    Your views as to whether the federal government “violates” that section is simply irrelevant to the question asked and the answer provided. Why you choose to gripe about such a non-sequitur is beyond me, but feel free to explain the perceived relevance, if you believe there is any.

  13. Anon December 27, 2019 11:19 am

    My comment is not irrelevant at all.

    If YOU want to rely on a section of law — but you do not apply that section of law (or recognize how its application is errant), then your view is suspect.

    I suggest that you READ my comments at 9 and 11. I answer your thrusts and ADD to the conversation. You seem unwilling (unable?) to see anything except what you want to say. That’s not good trait to have – especially if you also want to be giving advice to other people.

    This (again) appears to be a pattern with you: non-engagement on anything that does not support your viewpoint. Denigration and dismissal of anything that may provide light to why your viewpoint is insufficient.

    Maybe you are still having trouble understanding the word “subsume”….