“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

On 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.

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