Garage Door Opener Dispute Highlights Importance of Disavowal

By on January 8, 2020
Posted In Patents

In a pair of opinions, the US Court of Appeals for the Federal Circuit addressed appeals arising out of the Chamberlain Group and One World Technologies’ patent infringement dispute concerning garage door opener technology. In the first appeal of a limited exclusion order issued by the USITC, the Federal Circuit reversed and vacated the USITC’s determination of infringement after finding that it was premised on an incorrect claim construction. Techtronic Industries Co. Ltd. v. Int’l Trade Comm’n, Case No. 18-2191 (Fed. Cir., Dec. 12, 2019) (Lourie, J.). In the second appeal, the Court held the PTAB’s finding that the challenged claims were anticipated was supported by substantial evidence. Chamberlain Group, Inc. v. One World Techs., Inc., Case No. 18-2112 (Fed. Cir., Dec. 17, 2019) (Hughes, J.).

The Chamberlain Group asserted various garage door opener technology patents against One World, including a patent directed to “an interactive learn mode” that assists users in installation and operation of a garage door opener.

The Federal Circuit’s review of the USITC’s determination of infringement focused on the construction of the term “wall console,” and more specifically whether the patentee had disavowed garage door openers with wall consoles that did not include passive infrared detectors under Poly-America. The Commission had determined “that the … patent’s criticism of prior art garage door openers that located the detector in the head unit, and its disclosure of a solution to that problem in the form of locating the detector in the wall console, f[e]ll short of disavowal.” One World appealed.

The Federal Circuit “conclude[d] that the … patent disavows coverage of wall consoles lacking a passive infrared detector.” The Court explained that “the … patent, by consistently representing the invention as the placement of the detector in the wall console, has thus effected a disavowal of alternative locations.” The Court also cited the background’s discussion of the prior art and its criticism of “passive infrared detectors in the head unit of the garage door opener” as “expensive, complicated, and unreliable.” Further, “[t]he remaining sections of the patent—even the abstract—disclose a straightforward solution: moving the detector to the wall console.” Because “the entire specification focuses on enabling placement of the passive infrared detector in the wall console, which is both responsive to the prior art deficiency the … patent identifies and repeatedly set forth as the objective of the invention,” “the … patent disavows locating the detector elsewhere, even without an express concession to that effect.” Having found that the patent disavowed wall consoles lacking a passive infrared detector, the Court reversed the Commission’s claim construction and construed the term “wall console” as “wall-mounted control unit including a passive infrared detector,” and accordingly, overturned the USITC’s finding of infringement.

The PTAB’s finding of anticipation hinged on whether the prior art disclosed a particular “second identifying step.” The Chamberlain Group had argued that the second identifying step should be construed to require identifying multiple activities. In addition, the PTAB determined that the Chamberlain Group had waived a specific argument related to the second identifying step because it was raised for the first time at oral argument.

The Federal Circuit first addressed the waiver issue. The Court held that the PTAB should have considered the “new” argument because the patentee had offered that argument in response to positions first raised in One World’s reply, and the argument “merely clarified [the Chamberlain Group’s] prior position,” rather than asserting a new issue.

Turning to the merits, the Court “agree[d]with the Board that nothing . . . requires the activities to be identified together or at the same time.” Indeed, the Chamberlain Group’s own expert had testified that the challenged claims were “silent on any timing requirement.” “Given the absence of any timing limitation,” the Court affirmed the PTAB’s determination that the prior art anticipated the challenged claims.

Practice Note: A patent’s consistent disclosure of a particular solution to a problem identified in the prior art may form the basis for a finding of disavowal of prior art solutions under Poly-America. Additionally, arguments may be raised during oral argument before the PTAB when they can be fairly characterized as clarifications of earlier arguments, and are responsive to arguments that were raised for the first time in the reply.