Chamberlain Group, Inc. v. Lear Corp.
2010 U.S. Dist. LEXIS 124566
N.D. Ill.2010Background
- The Chamberlain Group, Inc. and Johnson Controls Interiors, L.L.C. (JCI) sue Lear Corp. for infringement of the '544 and '123 patents, later adding the '056 patent.
- The district court previously construed “binary code” to encompass binary code and issued a preliminary injunction, which the Federal Circuit later reversed on claim construction.
- On remand, discovery closed; Lear moved for summary judgment of noninfringement of all three patents and invalidity under §101; plaintiffs cross-moved for infringement and other rulings.
- The case also involves disagreements over whether Lear’s Car2U® transmitter uses binary or trinary codes and whether binary code must be stored.
- The court addresses motions on infringement, invalidity (including §101), enablement, definiteness, written description, and inequitable conduct.
- The court ultimately grants in part and denies in part the parties’ cross-motions, upholds a patentable subject-matter finding for the asserted claims, and rules on inequitable conduct and other defenses.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Lear’s Car2U® infringes the '544 and '123 patents. | JCI contends Lear performs the claimed method. | Lear argues Car2U® does not use binary code as construed. | Genuine issues exist; literal noninfringement is not established; however, storage-based binary-code limitation leads to partial noninfringement. |
| Whether the '056 patent is infringed given the meanings of 'variable code' and 'code based on the fixed code'. | JCI argues the terms encompass more than a fixed, nonbinary variable. | Lear contends variable code is nonbinary and the code-based-on-fixed-code concept does not require fixedness. | Issue of infringement remains; court adopts construction that variable code is nonbinary, but factual issues on infringement survive. |
| Whether the asserted claims are directed to unpatentable subject matter under § 101. | Patents are directed to a tangible machine, not abstract laws. | Claims are abstract algorithms needing invalidation. | Plaintiffs granted summary judgment that claims are directed to patentable subject matter. |
| Whether there is inequitable conduct in prosecuting the patents. | Chamberlain allegedly withheld Miyake reference to mislead the PTO. | Withholding may be explained by non-cumulative importance and examiner review. | Partial denial of summary judgment; disputed facts require trial on inequitable conduct. |
| Whether the claims are invalid for lack of definiteness, enablement, or written description (especially '056). | Some claims lack definite structure; enablement and written description contested for '056. | Certain terms are means-plus-function or lack enabling/written description. | Court grants summary judgment on lack of definiteness; denies summary judgment on enablement and written description for '056. |
Key Cases Cited
- Chamberlain Group, Inc. v. Lear Corp., 516 F.3d 1331 (Fed. Cir. 2008) (reverses district court claim construction; law of the case governs construction)
- Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009) (summary judgment standards in infringement cases; use of Anderson framework)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (material-fact standard for summary judgment; reaffirms need for genuine disputes)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (intrinsic evidence controls claim construction; avoid reliance on extrinsic sources)
- Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784 (Fed. Cir. 2010) (limits on importing specification into claim scope)
- In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (patent-eligibility analysis framework under §101)
- Bilski v. Kappos, 561 U.S. 593 (2010) (Supreme Court on patent-eligibility; not restricted to MOT test)
- Gottschalk v. Benson, 409 U.S. 63 (U.S. 1972) (precedent on abstract algorithms and patentability)