The Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd
935 F.3d 1341
| Fed. Cir. | 2019Background
- TTI appealed a district court judgment finding infringement of two Chamberlain patents (the ’275 and ’966 patents), and the court’s denial of TTI’s JMOL on § 101, while the district court awarded enhanced damages and attorneys’ fees to Chamberlain.
- The ’275 patent claims a movable-barrier operator (e.g., garage-door opener) that wirelessly transmits status-condition signals that identify operational status and a substantially unique identifier.
- The ’966 patent claims a rechargeable battery-backup system for a barrier operator that can charge a portable rechargeable battery usable with other devices.
- The jury found infringement/validity issues, and found the asserted claims of the ’966 patent not anticipated by prior art (Weik); TTI sought JMOL on anticipation and a new trial on venue and the admission of a PTAB non-institution decision.
- The Federal Circuit reviewed § 101 eligibility de novo, affirmed the jury’s no-anticipation verdict for the ’966 patent, rejected TTI’s new-trial arguments, reversed the district court as to the ’275 patent under § 101, and vacated/remanded the enhanced-damages and fees awards for reconsideration limited to the ’966 patent.
Issues
| Issue | Plaintiff's Argument (TTI or party challenging) | Defendant's Argument (Chamberlain/CGI) | Held |
|---|---|---|---|
| Whether asserted claims of the ’275 patent are patent-eligible under 35 U.S.C. § 101 | The claims are directed to a conventional abstract idea (wirelessly communicating status) and lack an inventive concept. | Claims recite a specific improved movable-barrier operator that wirelessly transmits status and thus are not abstract. | Court: Claims are directed to the abstract idea of wirelessly communicating status; no inventive concept present → § 101 invalidity; reversed JMOL denial. |
| Whether the asserted claims contain an inventive concept at Alice step two | The claimed elements are conventional components and their ordered combination adds nothing inventive beyond wireless communication. | The claimed combination (integrated controller + wireless transmitter for status) is novel and not shown to be routine/conventional. | Court: No inventive concept; wireless transmission is both the abstract idea and the only allegedly inventive feature → fails Alice step two. |
| Whether Weik anticipates asserted claims of the ’966 patent | TTI: Combining two Weik embodiments (portable battery + charger) anticipates the claims. | CGI: Weik’s embodiments are discrete; combining them for anticipation is improper; jury verdict supported. | Court: Substantial-evidence standard; combination in Weik is not clearly disclosed such that a skilled artisan would "at once envisage" it; affirmed jury verdict of no anticipation. |
| Whether district court erred in denying new trial on venue and admitting PTAB non-institution decision | TTI: Venue transfer motion untimely after TC Heartland; PTAB non-institution ruling was prejudicial and confusing. | CGI/District Court: Venue objection forfeited given timing; PTAB non-institution evidence admissible with limiting instruction; no abuse of discretion. | Court: No abuse of discretion on either point; denial of new trial affirmed. |
Key Cases Cited
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (Sup. Ct. 2014) (two-step framework for assessing patent-eligibility under § 101).
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (Sup. Ct. 2012) (limits on patenting laws of nature and framework for inventive concept).
- DIRECTV, Inc. v. Imburgia, 838 F.3d 1253 (Fed. Cir. 2016) (claims directed to wirelessly communicating content found abstract).
- Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018) (claims to improved user-interface held not abstract where they recited a specific technological improvement).
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (fact questions about whether claim elements are routine/conventional can defeat summary § 101 decisions).
- Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015) (anticipation can arise from a single reference if a skilled artisan would "at once envisage" the claimed combination).
- Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (Sup. Ct. 2011) (permitting jury instructions to consider differences between PTO proceedings and district-court adjudication).