The Chamberlain Group, Inc. v. Techtronic Industries Co., Ltd. et al

Filing 263

MEMORANDUM OPINION AND ORDER Signed by the Honorable Harry D. Leinenweber on 1/23/2017:Mailed notice(wp, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHER DISTRICT OF ILLINOIS
EASTERN DIVISION

THE CHAMBERLAIN GROUP, INC.,
Plaintiff,
v.
TECHTRONIC INDUSTRIES CO.,
LTD., TECHTRONIC INDUSTRIES
NORTH AMERICA, INC., ONE
WORLD TECHNOLOGIES, INC.,
OWT INDUSTRIES, INC., ET
TECHNOLOGY (WUXI) CO. LTD.,
and RYOBI TECHNOLOGIES, INC.,

Case No.

16 C 6097

Judge Harry D. Leinenweber

Defendants.

MEMORANDUM OPINION AND ORDER
Before

the

Court

is

Plaintiff’s

Motion

to

Enforce

the

Court’s Preliminary Injunction and for an Order to Show Cause
Why Defendants Should Not Be Held in Contempt (“the Motion”)
[ECF No. 211].

The parties engaged in extensive briefing and

offered testimony on the Motion, including at a hearing before
the Court.

For the reasons stated herein, the Court grants the

Motion in part.
I.

BACKGROUND

This litigation involves Plaintiff’s claim of infringement
with respect to patents it holds on a certain type of garage
door opener (“GDO”).

This Court granted Plaintiff’s request for

a preliminary injunction and, on September 20, 2016, entered an

order

(the

“PI

order”)

prohibiting

Defendants

from

further

making, using, selling or offering to sell in the United States
or importing into the United States any of their Ryobi GD200
garage door openers likely to infringe claims 1 and 5 of U.S.
Patent No. 7,224,275 (“the ’275 patent”).

Independent claim 1

of the ’275 patent claims a movable barrier operator comprising,
as

relevant,

“a

wireless

status

condition

data

transmitter

[that] transmits a status condition signal that: corresponds to
a

present

operational

status

condition

defined,

at

least

in

part, by at least two operating states from the plurality of
operating

states.”

Dependent

claim

5

recites

the

movable

barrier operator of claim 1 “wherein the plurality of operating
states

includes

operations,

such

at

least

one

as

“moving

a

of”

various

movable

different

barrier

in

a

GDO
first

direction,” “moving the movable barrier in a second direction,”
and “a lighting status change.”
In the memorandum opinion accompanying its PI order, the
Court held that Plaintiff demonstrated a likelihood of success
on

the

issue

of

whether

Claim 1 of the ’275 patent.

Defendants’

Ryobi

GD200

infringes

Specifically, the Court noted that

“the crux of the issue is the ’275 patent’s description of a
self-aware controller in Claim 1.”
9.)

(ECF No. 107, Mem. Op., at

Whereas Plaintiff’s technical expert “purchased a Ryobi GDO

and dismantled it and, with the assistance of CGI engineers,
- 2 -

conducted

extensive

testing,”

Defendants’

“did not examine the Ryobi GDO.”
expert

testified

that

the

Ryobi

infringement

(Id. at 7.)
GDO

“did

not

expert

Plaintiff’s

rely

upon

any

external sensors to obtain the status conditions of the GDO,”
including

“garage

door

open/shut,

and

garage

lights

on/off,”

which it was then “able to transmit . . . upon request.”

(Id.)

Thus, both the Ryobi GDO and the patented invention “obtained
and

transmitted

sensors.”

similar

(Id.)

data

without

the

aid

of

external

As the precise wording of the Court’s ruling

suggests, the finding of “similar data” transmission as between
the original Ryobi GDO and the patented invention focuses on the
substance of the data transmitted, not the number of signals
required for transmission or, more broadly, the message format.
On December 6, 2016, Defendants filed a Notice of Redesign
[ECF

No.

designed

203]

in

around

which

the

they

’275

asserted

patent.

that

Their

they

only

successfully

change

to

the

design of the original Ryobi GDO concerned the communication of
GDO

information

to

smart

phone

applications.

As

with

the

original, the redesigned Ryobi GDO’s wireless status condition
data

transmitter

is

capable

of

signaling

to

the

end

user

whether, for example, the garage door is open or closed, the
lights on or off.

Rather than transmitting, in a single signal,

information corresponding to multiple changes in the status of
the

GDO,

the

redesigned

Ryobi

GDO

- 3 -

transmits

a

signal

that

contains information corresponding only to one such change.

For

example, if both door position and lighting have changed, then
the redesigned product transmits one signal indicating the door
change

and

a

communicating

second
the

successive

lighting

signal,

change.

milliseconds
Vitally,

later,

the

data

transmitted still corresponds to the same set of characteristics
drawn from the same defined set of operating states of the same
GDO.

Only the transmission format has changed.
Defendants have imported the redesigned Ryobi GDO into the

United States for sale at Home Depot.
redesign

and

discovery

of

Following the notice of

Defendants’

importation

redesigned Ryobi GDO, Plaintiff filed the Motion.

of

the

Both parties

submitted briefs, and the hearing on the Motion followed.
II.

APPLICABLE STANDARDS

The primary question in a contempt proceeding is “whether
the

newly

accused

product

is

so

different

from

the

product

previously found to infringe that it raises a fair ground of
doubt as to the wrongfulness of the defendant’s conduct.”

TiVo

Inc. v. EchoStar Corp., 646 F.3d 869, 882–883 (Fed. Cir. 2011).
The analysis centers on “those aspects of the accused product
that were previously alleged to be, and were a basis for, the
prior finding of infringement.”

Id.

“[A] contempt proceeding

does not open to reconsideration the legal or factual basis of
the

order

alleged

to

have

been
- 4 -

disobeyed

and

thus

become

a

retrial of the original controversy.”

Maggio v. Zeitz, 333 U.S.

56, 69 (1948).
Where two products are functionally identical, a redesigned
product

is

not

colorably

different.

Proveris

Sci.

Corp.

Innovasystems, Inc., 739 F.3d 1367, 1371 (Fed. Cir. 2014).

v.
The

moving party bears the burden of proving by clear and convincing
evidence both that the newly accused product is not more than
colorably

different

from

the

product

previously

found

to

infringe and that the newly accused product actually infringes.
See, Tivo Inc., 646 F.3d at 882; Stotler & Co. v. Able, 870 F.2d
1158, 1163 (7th Cir. 1989).
Judicial estoppel precludes a party who “successfully urges
a particular position in a legal proceeding . . . from taking a
contrary position in a subsequent proceeding where its interests
have changed.”

Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d

1316, 1323 (Fed. Cir. 2016).

In particular, prosecution history

estoppel can prevent a patentee from relying on the doctrine of
equivalents when the patentee relinquishes subject matter during
the prosecution of the patent, either by amendment or argument.
AquaTex Indus. v. Techniche Sol’ns, 419 F.3d 1374, 1382 (Fed.
Cir. 2005).

- 5 -

III.
A.

DISCUSSION

The Redesigned Ryobi GDO Is Not More Than Colorably
Different from the Ryobi GDO Subject to the
Court’s Preliminary Injunction Order.

Although

the

parties

dispute

certain facts are uncontested.

their

legal

significance,

For one, the only feature of the

original Ryobi GDO that was redesigned relates to the status
condition signals sent by the wireless status condition data
transmitter.

To the extent that multiple status conditions of

the GDO change (i.e., the garage door opens and the lights turn
on),

the

redesigned

transmitter

sends

signals

to

the

user’s

smart phone application seriatim (i.e., one signal communicating
an

open

garage

lights).

door,

and

another

signal

the

status

of

the

On the other hand, the wireless status condition data

transmitter

of

the

original

Ryobi

GDO

sent

one

signal

to

a

user’s cell phone application that was capable of communicating
multiple status changes.
For another, as between the original and redesigned Ryobi
GDO,

both

the

universe

of

data

functionality remain unchanged.
Tr., at 55:5–8.)

transmitted

and

end-user

(See, e.g., ECF No. 255, Hr.

Additionally, both the original and redesigned

Ryobi GDOs employ what have been termed “Hall effect sensors,”
external to the GDO controller, to determine the position of the
garage door.

(Id. at 133:4–7.)

Although the parties dispute

whether the presence of these Hall effect sensors obviates the
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“self-awareness” of a GDO controller, this facet of the original
Ryobi GDO played no part in the Court’s PI analysis; indeed,
Defendants did not argue it.
In

arguing

that

the

(Id. at 59:25-61:21.)
redesigned

Ryobi

GDO

is

more

than

colorably different from the original Ryobi GDO subject to the
Court’s PI, Defendants face an insurmountable legal obstacle:
they redesigned an aspect of the accused product that played no
role in the Court’s PI infringement analysis.
law

mandates

redesigned

that

product

the

Court

relate

consider

to

a

feature

Federal Circuit

whether
that

changes

was

in

a

“previously

alleged to be, and [was] a basis for, the prior finding of
infringement.”

TiVo Inc., 646 F.3d at 882; see, Proveris, 739

F.3d at 1371 n.1 (applying the TiVo analysis in light of whether
the parties asserted that the claim “require[s] a particular
feature”).
analysis

Plaintiff

did

opinion

cannot

and

not

assert,

fairly

be

and
read

the
to

Court’s
find,

PI

likely

infringement based on the original Ryobi GDO’s transmission of a
status

condition

signal

communicating

multiple

fields

of

information about the GDO or relaying to plural changes in the
GDO’s operating states.
On

the

contrary,

the

Court’s

opinion

repeatedly

characterized the concept of a “self-aware” controller as the
“crux” of the Plaintiff’s infringement case.
Op. at 7, 9.)

(See, e.g., Mem.

Admittedly, the Court could have more clearly
- 7 -

described status conditions in the PI opinion as “garage door
position” or “lighting mode” instead of “garage door open/shut[]
and

garage

lights

on/off”;

the

latter

formulations

more

accurately describe the operating states that define what status
condition

is

transmitted.

However,

any

resulting

confusion

appears minimal in light of the admission by Defendants’ expert
that the Court also “mentioned [these] as status conditions.”
(ECF No. 256 at 220:20-221:12.)
By contrast, the Court heard no substantive argument at the
PI

hearing

on

whether

the

asserted

claims

require

multiple

fields of GDO information or plural changes in operating states
to be transmitted in the status condition signal.

Indeed, the

’275

opposite

patent’s

specification

says

precisely

the

–

namely, that “[a] single data field can be used if desired to
contain

information

condition.”

that

to

the

specified

status

No.

(ECF

corresponds
1,

2,

at

6:46-48.)

The

Exhibit

specification goes on describe “another approach” involving “a
plurality of fields (From field 1 41 to field N 43),” with “each
field

corresponding

condition.”

(Id.

to,
at

for

example,

6:48-51.)

a

particular

Thus,

the

monitored

specification

contemplates both the original and redesigned Ryobi GDOs.
Had

the

Court

effectively

construed

“a

plurality

of

operating states” to connote the data that the status condition
signal actually transmits, then Defendants’ arguments would have
- 8 -

more purchase.

But the Court repeatedly maintained that, far

from encapsulating the granular packet of data transmitted, the
plurality of operating states defines the GDO in a much broader
sense.

(See, e.g., Mem. Op. at 9 (“[The Ryobi GDO] piggybacked

on the ’275’s description of a self-aware controller defined by
a plurality of operating states.”).)

To the extent any language

in the extensive PI hearing transcript can be read to furnish an
ounce of support for Defendants’ redesign, two ounces of support
evaporate.
(CGI

(See, e.g., ECF No. 120, PI Hearing Tr., at 606:6-16

counsel

noting

that,

“for

the

status

condition

of

what

stage your garage door is in, those are two states”), 605:17-18
(“So the status condition for that is the garage door, and open
and close are the two states of that.”).)
As noted, no one disputes that the original and redesigned
Ryobi GDOs are functionally equivalent:

they transmit the same

substance and types of data and, crucially, function identically
from the perspective of the end user.

(See, infra, Section II.)

This brings the Ryobi GDO within the ambit of the Court’s PI
order.
did

See, e.g., Proveris, 739 F.3d at 1371 (“[E]ven if Innova

make

comparison

some
of

small
the

changes

User

to

Manuals

the

product’s

demonstrates

products are functionally identical.

software,

that

the

a

two

Thus, we agree with the

district court that the ADSA product is not more than colorably
different

from

the

infringing

OSA

- 9 -

product.”).

Defendants’

reading of Ncube Corp. v. SeaChange Int’l Inc., 2013 WL 230358
(Fed. Cir. Jan. 8, 2013), does not compel a different result.
As described above and unlike the situation in Ncube, the PI
infringement analysis in this case did not turn on the feature
of the product that was redesigned – that is, whether the status
condition

signal

of

the

original

Ryobi

GDO

corresponded

to

information about one or multiple status changes.
Nor is the redesigned Ryobi GDO colorably different because
it

engenders

“data

loss,”

“compromised

performance,”

or

otherwise represents a “product inferior to what [Defendants]
previously had.”
financial

TiVo Inc., 646 F.3d at 880.

capital

Defendants

aforementioned

change

transmitter

whatever

—

to

the

expended
wireless

inefficiencies,

Whatever human or

to

status

implement

the

condition

data

bandwidth

strains,

or

additional data costs the redesigned GDO engenders — both GDOs
transmit the same data in status condition signals, and data
transmission is functionally identical from the perspective of
the end user.
Therefore, for all the above reasons, Plaintiff has shown
by clear and convincing evidence that the redesigned Ryobi GDO
is not more than colorably different from the Ryobi GDO subject
to the Court’s PI order.

- 10 -

B.

Under the Framework of the Court’s PI Order,
the Redesigned Ryobi GDO Likely Infringes
at least Claims 1 and 5 of the ’275 Patent.

1.

The Redesigned Ryobi GDO Directly Infringes

As Plaintiff has shown and the above analysis makes clear,
the redesigned Ryobi GDO infringes under the terms of the PI
because the redesign does not take the Ryobi GDO outside the
asserted claims as understood and construed in the court’s PI
opinion.

Because the redesigned Ryobi GDO still sends a signal

that contains an operational status condition, which condition
is defined by two or more operating states, it still literally
infringes the claim.
Only the Plaintiff offered infringement testimony consonant
with the construction and framework of the Court’s PI opinion.
Defendants’ expert, on the other hand, admitted that his claim
constructions

differed

from

those

used

in

his

report.

(See, Hr. Tr. at 187:15, 276:1-23.)

counsel

argued,

Defendants’

new

prior

expert

As Plaintiff’s

construction

improperly

construes the claims in light of the accused device.

(See, ECF

No. 257 at 17-18 (citing SRI Int’l v. Matsushita Elec. Corp. of
Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985) (en banc)).)
of

the

postponement

of

all

Markman-related

In view

activities,

which

Defendants advocated (see, ECF Nos. 168, 193), the Court need
not engage Defendants’ claim construction briefings to decide
this contempt proceeding.
- 11 -

2.

Although

The Redesigned Ryobi GDO Infringes via
the Doctrine of Equivalents
it

finds

that

Plaintiff

has

clearly

and

convincingly shown literal infringement of the redesigned Ryobi
GDO under the terms of the PI order, the Court finds it prudent,
in light of the pending Federal Circuit appeal of the PI order,
to

explore

an

alternative

infringement

analysis

of

redesigned Ryobi GDO under the doctrine of equivalents.

the

To the

extent the appeals court’s opinion may cast doubt on whether the
redesigned Ryobi GDO implicates a literal difference from the
language of the asserted claims, Plaintiff has still clearly and
convincingly

shown

claims

construed

are

that

it
as

infringes.
Defendants

Even
would

if

the

have

asserted

them,

the

redesigned Ryobi GDO performs substantially the same function in
substantially

the

same

way

to

yield

result as the original Ryobi GDO.

substantially

the

same

See, Graver Tank & Mfg. Co.

v. Linde Air Prods. Co., 339 U.S. 605 (1950); Warner-Jenkinson
Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) (defining the
doctrine to require that any difference between the feature in
the accused product and the limitation literally recited in the
patent claim must be “insubstantial”).
During

the

hearing

on

the

Motion,

Plaintiff’s

expert

convincingly testified that the redesigned GDO infringed via the
doctrine of equivalents and differed only insubstantially from

- 12 -

the asserted claims.

He noted that it took Defendants’ engineer

less than one day to develop the code to implement the redesign,
that the end-user software was simply updated via now-ubiquitous
“over-the-air
hardware

of

includes

update[s]”
the

the

GDO,

same

without

that

number

the
of

any

corresponding

status
message

condition

signal

fields,

and

redesigned GDO still employs the same components.
at 98:2-100:23.)

changes

to

still

that

the

(See, Hr. Tr.

Even Defendants’ engineer conceded that the

redesign did not alter end-user functionality and indeed was
intended

to

152:19.)
and

preserve

the

status

quo.

(See,

id.

at

151:17-

The Court finds Dr. Rhyne’s testimony both convincing

consistent

precisely

the

with
same

his

seminal

conclusion

1973

in

the

textbook,
apposite

which

draws

scenario

of

“sending two statuses in one message versus sending two messages
sequentially.”
Rather

(Id. at 100:24-102:4.)

than

attacking

the

sufficiency

of

this

evidence,

Defendants strenuously object that, because of arguments made
during

prosecution,

Plaintiff

is

judicially

estopped

from

arguing that the redesigned GDO infringes the asserted claims of
the ’275 patent via the doctrine of equivalents.

Defendants

hone in on the Doyle reference, over which the Examiner issued a
rejection of independent claim 1 along with various dependent
claims on March 16, 2005.
discloses

transmitting

a

That reference, Defendants contend,
single

operating

- 13 -

state

in

the

same

manner as the redesigned Ryobi GDO, and Plaintiff argued the
same to overcome the rejection based on Doyle or, alternatively,
relinquished

relevant

subject

matter

by

canceling

application

dependent claim 4.
In

the

traversed

relevant

Doyle

by

amendment
citing

to

and
Figure

remarks,
2

of

the
Doyle

Applicant
and

its

associated text, which disclose a mercury switch oriented within
a radio frequency (“RF”) transmitter where the mercury bead only
causes transmission of the RF signal when the garage door is in
an intermediate position.

The Applicant contrasted this facet

of Doyle, in which the transmitted RF signal is keyed to a
single

position

or

state

of

Doyle’s

garage

door,

with

its

amended claims, which “require a wireless status condition data
transmitter

to

transmit

a

status

condition

signal

that

corresponds to a present operational status condition defined,
at least in part, by at least two operating states from the
plurality of operating states.”
10/447,663,

June

15,

2005

See, File History, App. No.

Amendment,

page

12

(emphasis

in

original).
Therefore, the Applicant did not distinguish over Doyle by
claiming

transmission

of

multiple

fields

of

information

or

multiple status changes via the status condition signal, but
instead

by

arguing

that

the

information

transmitted

in

(the

cited embodiment of) Doyle could only ever be defined by one
- 14 -

operating state:

a single intermediate position of a garage

door, as opposed to the dual operating states of open/closed.
Similarly,

Applicant’s

cancelation

of

application

dependent

claim 4 and simultaneous amendment of claim 1 is more fairly
read

as

an

“potential

attempt

to

operational

clarify

status

that

conditions”

operating states” relate to each other.
286:22.)

(The

prior

separate elements.

made

not

of

the

already-claimed

and

“plurality

of

(See, Hr. Tr. at 285:3claims

recited

these

as

See, ’275 Patent File History, June 15, 2005

Amendment, page 2.)
was

versions

the

This helps explain why a conforming change

just

to

the

wireless

status

condition

data

transmitter limitation of claim 1, but also to the controller
limitation.

Because

the

Applicant’s

arguments

limit

the

contours of judicial estoppel, other embodiments in Doyle — to
the

extent

they

might

relate,

as

Defendants

argue,

to

determining the absolute position of the garage door based on
two different RF signals – are irrelevant to whether Plaintiff
has

recourse

to

the

doctrine

of

equivalents

on

the

facts

presented to the Court.
Plaintiff offered persuasive testimony with respect to the
doctrine of equivalents, and Defendants, without challenging the
substance of this evidence, erroneously argued that Plaintiffs
were

judicially

estopped

from

invoking

the

doctrine.

Thus,

Plaintiff has shown by clear and convincing evidence that the
- 15 -

redesigned Ryobi GDO infringes claims 1 and 5 of the ’275 patent
under the doctrine of equivalents.
3.

Defendants Have Waived their “Self-Aware” Argument

During
technical

the

PI

expert,

phase

Dr.

of

this

Madisetti,

litigation,

devoted

the

Defendants’
bulk

of

his

testimony to arguing that self-awareness is not a limitation of
claim 1.

For example, Dr. Madisetti argued that, because many

of the activities set forth in dependent claim 5 must implicate
the

use

of

external

sensors,

independent

require a self-aware controller.

claim

1

could

(See, Mem. Op. at 8.)

not
Far

from contesting infringement on the grounds that the original
Ryobi

GDO

controller

was

not

self-aware,

this

focus

on

invalidity throughout the PI phase suggested a tacit acceptance
that the original Ryobi GDO contained a self-aware controller.
The Court’s PI Opinion states as much.

(See, e.g., Mem. Op.

at 8 (“This contention by Dr. Madisetti is more material to the
issue of invalidity rather than the issue of infringement.”).)
Defendants seek to persuade the Court of non-infringement
by arguing that neither the redesigned nor the original Ryobi
GDO controller is self-aware.
first

time

in

this

contempt

This argument, presented for the
proceeding,

has

been

waived

and

amounts to an improper request for reconsideration of the merits
of the Court’s PI order.

Especially in light of their arguments

against

PI

modifying

the

order
- 16 -

to

encapsulate

indirect

infringement while the PI order is pending on appeal (see, ECF
No. 115 at 2, 7; ECF No. 130 at 3-4; ECF No. 137 at 3-5),
Defendants’ attempt here to shoehorn into the limited scope of
this

proceeding

new

substantive

issues

is

unconvincing.

Defendants must live with the strategic choices they have made
throughout this litigation.
IV.

CONCLUSION

For the reasons stated herein, the Court grants the Motion
to Enforce the Court’s Preliminary Injunction [ECF No. 211] in
part and will issue an Order to Show Cause why Defendants should
not be held in contempt for violating the PI order.

The Order

(a) requires Defendants to notify Home Depot that all shipments
after September 27, 2016, were in violation of the PI order and
should be recalled; and (b) enjoins Defendants from inviting or
accepting any further GDO purchase orders while the PI order is
in

effect.

The

Court

directs

the

parties

to

brief

the

appropriate additional sanctions for Defendants’ contempt of the
PI order.
IT IS SO ORDERED.

Harry D. Leinenweber, Judge
United States District Court
Dated:1/23/2017
- 17 -