The Chamberlain Group, Inc. v. Techtronic Industries Co., et al. (“TTI”)
Docket No. 2018-2103, -2228
LOURIE, O’MALLEY, CHEN
August 21, 2019
Brief Summary: DC finding of no invalidity under section 101 reversed; anticipation finding affirmed.
Summary: TTI appealed DC grant of judgment as a matter of law (JMOL) for enhanced damages and attorney fees, its denial of TTI’s motion for JMOL of invalidity under section 101 (patent-eligible subject matter), and the jury’s infringement and validity verdicts. The disputed patent, Chamberlain’s US 7,224,275 is directed to a “movable barrier” (e.g., garage door) linked to a wireless controller. The FC panel opinion is focused on the section 101 issue. The DC determined that the ‘275 claims are not “directed to the abstract idea of wireless transmission of content” as TTI alleged, but to “a particular improvement over prior art which uses a particular manner of sending and experiencing data” (Core Wireless, FC 2018). The FC panel reviewed the DC decision de novo (Interval Licensing, FC 2018), determining “‘whether the claims at issue are directed to a patent-ineligible concept’, such as an abstract idea” (step one of Alice, US 2014; DIRECTV, FC 2016 (“determine if the claim’s character as a whole is directed to excluded subject matter”), and then examining “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” (step two under Alice). Under step one, the FC panel concluded “that claim 1 is directed to wirelessly communicating status information about a system” (“[t]he specification supports this conclusion” (ChargePoint, FC 2019)), “the broad concept of communicating information wirelessly”, “similar to abstract ideas we have found in our previous cases”, “not limited to a specific implementation of a technological improvement to communication systems” (Amdocs, FC 2016; DIRECTV, FC 2016; Affinity Labs., FC 2016; In re Marco Guldenaar (FC 2018) (“using off-the-shelf technology for its intended purpose”); unlike Thales Visionix (FC 2017) (not abstract, “new, specific way in which sensors measured inertial changes”), McRO (FC 2016), DDR Holdings (FC 2014), or Core Wireless (FC 2018) (“Unlike Core Wireless, no specific manner of performing the abstract idea is recited in these claims.”)). Under Alice step two, the FC panel did not find an “inventive concept”, explaining that “[t]he specification describes each individual element of the asserted claims…as ‘well understood in the art’” (“conventional components, all recited in a generic way”; Alice, US 2014; Content Extraction, FC 2014). The FC panel also explained that “all of the steps ‘as an ordered combination add nothing to the laws of nature that is not already present when the steps are considered separately” (here, nothing “beyond that act of wireless communication”). The FC panel therefore reversed the DC’s decision and found the ‘275 claims patent ineligible under section 101. The FC panel affirmed the DC’s decision that claims of Chamberlain’s US 7,635,966 were not invalid for anticipation (e.g., “Weik’s disclosure as to the possible combinability of the embodiments in the way TTI urges is less than clear” (Kennametal, FC 2015 (anticipation “even if ‘d[oes] not expressly spell out’ all the limitations…if a person of skill in the art would ‘at once envisage’ the claimed arrangement or combination”)). The FC panel also affirmed the DC’s denial of TTI’s motion for a new trial regarding venue and for not entering the PTO’s IPR non-institution decision, and vacated the DC’s enhanced damages and attorney fees award regarding the ‘275 patent.