January 3, 2020
Multiple companies (collectively “Techtronic Industries” or “TTI”) appealed from a final determination of the United States International Trade Commission (the “Commission”) that their imported product (garage door opener products) infringed the claims of U.S. Patent 7,161,319 (the “319 patent”).
Intervenor Chamberlain Group Inc. (“Chamberlain”) develops and markets garage door opener technology and owns the ’319 patent, which discloses improved “movable barrier operators,” such as garage door openers. The ’319 patent explains that passive infrared detectors had been used in prior art garage door openers “for the detection of a person in a particular vicinity” and for automatically controlling lights or the motion of the garage door. Passive infrared detectors were often associated with the head unit of the garage door opener, an approach the ’319 patent describes as “expensive,” “fragile,” “deficient,” and even potentially unsafe. The patent describes that there was a need for “a passive infrared detector for controlling illumination from a garage door operator which could be quickly and easily retrofitted to existing garage door operators.”
The ’319 patent discloses as its invention “a passive infrared detector for a garage door operator,” where the infrared detector is contained in a wall control unit, along with an ambient light comparator and a microcontroller. The preferred embodiment contains “a wall control unit embodying the present invention,” “includ[ing] a passive infrared sensor,” and a microcontroller programmed to command a counterpart microcontroller in the head unit using known digital signaling techniques. Claim 1 reads:
1. An improved garage door opener comprising
a motor drive unit for opening and closing a garage door, said motor drive unit having a microcontroller
and a wall console, said wall console having a microcontroller,
said microcontroller of said motor drive unit being connected to the microcontroller of the wall console by means of a digital data bus.
In July 2016, Chamberlain filed a complaint at the Commission, alleging that TTI violated Section 337(a)(1)(B) by the “importation into the United States, the sale for importation, and the sale within the United States after importation” of Ryobi Garage Door Opener models that infringed the ’319 patent.
The Administrative Law Judge (ALJ) issued a claim construction order. The only disputed term of the ’319 patent was “wall console.” The ALJ decided that Chamberlain had disavowed wall consoles lacking a passive infrared detector. The ALJ determined that the ’319 patent sets forth its invention as a passive infrared detector superior to those of the prior art by virtue of its location in the wall console, rather than in the head unit, and that the only embodiment in the ’319 patent placed the passive infrared detector in the wall console as well. Thus, the ALJ construed “wall console,” as “a wall-mounted control unit including a passive infrared detector.”
The ALJ then granted TTI’s unopposed motion for summary determination of non-infringement of the ’319 patent. The Commission later issued a decision reversing the ALJ’s construction of “wall console” and vacating the initial determination of noninfringement. The Commission concluded that, while “the [’319] specification describes the ‘principal aspect of the present invention’ as providing an improved [passive infrared detector] for a garage door operator,” the specification disclosed other aspects of the invention, and a patentee is not required to recite in each claim all features described as important in the written description. Under the Commission’s construction, the ALJ found that TTI infringed the ’319 patent.
On appeal, TTI argued that the Commission erred in reversing the ALJ’s claim construction, because Chamberlain disavowed coverage of garage door openers with wall consoles lacking a passive infrared detector. Thus, at issue before the Federal Circuit (“the Court”) was whether the claim term “wall console” also read on wall-mounted garage door control units without passive infrared detectors.
TTI pointed to the ’319 patent’s consistent description of the invention as a wall console with a passive infrared detector—a feature included in the sole embodiment—and the patent’s disparagement of prior art garage door openers that placed the detector in the head unit. TTI maintained that such a description of the invention as a whole constituted a disavowal of claim scope. Chamberlain argued in response that locating the passive infrared detector in the wall console was only one aspect of the invention, referring to the portions of the specification that describe the invention more broadly.
The Court agreed with TTI that Chamberlain disavowed coverage of wall consoles without a passive infrared detector. “We conclude that the ’319 patent disavows coverage of wall consoles lacking a passive infrared detector because the specification, in each of its sections, discloses as the invention a garage door opener improved by moving the passive infrared detector from the head unit to the wall console. It is axiomatic that, where the specification ‘describes’ ‘the present invention’ as having [a] feature,” that representation may disavow contrary embodiments. The ’319 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 pointed out that according to the background section, the prior art taught the use of passive infrared detectors in the head unit of the garage door opener to control the garage’s lighting, but that locating the detector in the head unit was expensive, complicated, and unreliable. The ’319 patent therefore sets out to solve the need for “a passive infrared detector for controlling illumination from a garage door operator which could be quickly and easily retrofitted to existing garage door operators with a minimum of trouble and without voiding the warranty.” The remaining sections of the patent disclose a straightforward solution: moving the detector to the wall console. Thus, the Court found that the specification described placing the detector in the wall console as the sole solution to the problem, and that the “entire specification focuses on enabling placement of the passive infrared detector in the wall console.”
The Commission maintained that the ‘319 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, fall short of disavowal because “[n]owhere does the ’319 patent state that it is impossible or even infeasible to locate a passive infrared detector at some other location.” The Court disagreed with the Commission. The Court explained that “where, as here, the specification plainly represents the scope of the invention to the exclusion of some embodiments, it is unnecessary that it also concede that those embodiments are “infeasible” or even “impossible” by reference to its teachings.” The Court rejected arguments that the disclosure does not amount to a disavowal when the specification does not state that it is “impossible” or “infeasible” to place the detector elsewhere. “Here, 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 ’319 patent identifies and repeatedly set forth as the objective of the invention.” Disavowal must be clear, but it does not have to be explicit. Thus, the ’319 patent disavows locating the detector elsewhere, even without an express concession to that effect.
Finally, the Court rejected the arguments of Chamberlain and the Commission that the ’319 patent’s prosecution history was inconsistent with disavowal. “The prosecution history lacks any indication that Chamberlain defined ‘wall console’ differently there than in the specification, which discloses a wall console with a passive infrared detector as the critical and inventive feature.” The Court concluded that the ’319 patent disavowed wall consoles lacking a passive infrared detector and reversed the Commission’s claim construction order and held that the term “wall console” in each of the ’319 patent claims was properly construed as “wall-mounted control unit including a passive infrared detector.” Thus, the Court reversed the Commission’s construction of “wall console” and final determination of infringement.
When drafting an application, use the term “the present invention” with care, describe multiple embodiments and “combinations thereof,” think about broader and narrower claims and provide supporting descriptions for multiple embodiments and scope variations, carefully balance the background section and what has been known in the field and the description, goals, and embodiments disclosed in the patent application at hand.
TECHTRONIC INDUSTRIES CO. LTD. v. ITC, No. 2018-2191 (Fed. Cir. Dec. 12, 2019)