ITC decision reversed as Chamberlain disavowed openers lacking infrared detectors


Techtronic Industries Co. Ltd. et al. v. Int. Trade Comm., The Chamberlain Group, Inc.

Docket Nos. 2018-2191
LOURIE, DYK, WALLACH
December 12, 2019

Brief Summary: ITC claim construction and final determination of infringement reversed and vacated.

Summary: Techtronic et al. (“Appellants”) appealed final International Trade Commission (ITC) decision finding Appellants violated Section 337(a)(1)(B) through the importation of garage door opener products that infringe” certain claims of Chamberlain’s US 7,161,319 (see FN3 regarding US 7,196,611). FN1 of this opinion indicates litigation is pending in IL but stayed pending the result of the ITC’s investigation. The ITC entered limited exclusion orders against the Appellants and cease and desist orders against two of the Appellants (TTI and One World). The ‘319 patent discloses “a passive infrared detector for a garage door” and claims a garage door opener including “a wall console, said wall console having a microcontroller”. The ITC’s Administrative Law Judge (ALJ) “acknowledged Chamberlain’s argument that the plain and ordinary meaning of ‘wall console’ but decided that, under” the Federal Circuit’s 2016 Poly-America decision “Chamberlain had disavowed wall consoles lacking a passive infrared detector”. The ALJ construed the phrase to cover a “wall-mounted control unit including a passive infrared detector” since, e.g., “the ‘319 patent sets forth its invention as a passive infrared detector superior to those of the prior art” and “the only embodiment in the ‘319 patent” includes a passive infrared detector. Based on this construction, the ALJ made a summary determination of non-infringement. But the ITC subsequently reversed the ALJ’s decision since “a patentee is not required to recite in each claim all features described as important in the written description” (citing Golight, Fed. Cir. 2004), parent patent US 6,737,968 evidenced “the patentee’s intent to claim wall control units with and without [passive infrared dectectors]”), and the prosecution history “lacked ‘the clear prosecution history disclaimer’ present in” Poly-America. The ITC therefore vacated the ALJ’s summary determination. The FC panel, however, concluded that Chamberlain disavowed openers lacking a passive infrared detector “because the specification, in each of its sections, discloses as the invention” openers including it (e.g., in the problem to be solved in the background section, “even the abstract”, Brief Description of the Drawings (“illustrating the preferred embodiment”), Detailed Description (e.g., “as may be best seen in FIG. 4”), the figures (see FN4), and claim 1) (citing, e.g., Aventis (Fed. Cir. 2012 (“Disavowel ‘may be inferred from clear limiting descriptions’”), Ekchian (Fed. Cir. 1997 (“by distinguishing the claimed invention over the prior art”), Phillips (Fed. Cir. 2005) (“in the context of the particular patent”), Poly-America (“where the specification ‘describes ‘the present invention’ as having [a] feature’”), Cont’l Circuits (Fed. Cir. 2019 (“unlikely where the prosecution history contains contradictory statements…but there is also no requirement that [it] reiterate the specification’s disavowel”), and Retractable Techs. (Fed. Cir. 2011 (“more modest claims in its parent patent does not inoculate it from the specification’s disavowel”)). Thus, the FC panel reversed the ITC’s claim construction and final determination of infringement, and therefore vacated the orders.

This entry was posted in Claim Construction, Infringement, Injunction, International Trade Commission, Uncategorized. Bookmark the permalink.

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