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

Filing 339

MEMORANDUM OPINION AND ORDER on claim construction Signed by the Honorable Harry D. Leinenweber on 4/7/2017: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
Plaintiff Chamberlain Group, Inc. (“Chamberlain”) alleges
in this suit that Defendants Techtronic Industries Co., Ltd.,
Techtronic

Industries

North

America,

Inc.,

One

World

Technologies, Inc., OWT Industries, Inc., Et Technology (WUXI)
Co.

Ltd.,

and

“Defendants”)

Ryobi

infringe

Technologies

U.S.

Patent

Nos.

(collectively,
7,224,275

(“the

the
‘275

patent”) and 7,635,966 (“the ‘966 patent”), both of which it
owns.

The parties dispute the construction of eleven terms that

appear throughout the claims of the asserted patents; they have
briefed those disputes pursuant to Local Rule 4.2.
sets

forth

language.

the

Court’s

construction

of

the

This opinion

contested

claim

I.
A.

BACKGROUND

The ‘275 Patent

1. The Invention, Disputed Terms, and Asserted Claims
The ‘275 patent, titled “Movable Barrier Operators Status
Condition Transception Apparatus and Method,” recites a moveable
barrier

operator,

featuring
wirelessly

a

such

wireless
relays

remote devices.

as

a

status

status

garage

door

condition

data

condition

messages

opener

(“GDO”),

transmitter

that

to

more

one

or

The asserted claims of the ‘275 patent, with

the six disputed terms in italics, are produced in full below.
(Chamberlain

is

no

longer

asserting

claims

2

or

21

against

Defendants. (See, ECF No. 172 (“Pl.’s Opp. Br.”) at 21; ECF
No. 156; ECF No. 191 at 4.))
Claim

Term

Text

1

1

A movable barrier operator comprising:

1[a]

2

a controller having a plurality of potential
operational status conditions defined, at
least in part, by a plurality of operating
states;

1[b]

-

a movable barrier interface that is operably
coupled to the controller;

1[c]

3

a wireless status condition data transmitter
that is operably coupled to the controller,
wherein the wireless status condition data
transmitter transmits a status condition
signal that:

1[c.i]

3

corresponds to a present operational status
condition defined, at least in part, by at
least two operating states from the plurality
of operating states;

- 2 -

Claim

Term

Text

1[c.ii]

4

and comprises an identifier that is at least
relatively unique to the movable barrier
operator, such that the status condition
signal substantially uniquely identifies the
movable barrier operator.

14

-

A method comprising:

14[a]

-

at a movable barrier operator:

14[a.i]

5

detecting at least one predetermined condition
as corresponds to a present operational status
defined, at least in part, by at least two
operating states, of the movable barrier
operator;

14[a.ii]

3

in response to detecting the at least one
predetermined condition, automatically
wirelessly transmitting a status condition
signal that:

14[a.ii.1]

3

represents the present operational status
defined, at least in part, by the at least two
operating states; and

14[a.ii.2]

-

comprises an identifier that is at least
relatively unique to the movable barrier
operator, such that the status condition
signal substantially uniquely identifies the
movable barrier operator.

24

-

An apparatus comprising:

24[a]

-

a movable barrier operator having:

24[a.i]

2

a controller having a plurality of potential
operational status conditions defined, at
least in part, by a plurality of operating
states; and

24[a.ii]

3

a wireless status condition transmitter
operably coupled to the controller, wherein
the wireless status condition data transmitter
transmits a status condition signal that:

24[a.ii.1]

3

corresponds to a present operational status
condition defined, at least in part, by at
least two operating states from the plurality
of operating states; and

- 3 -

Claim

Term

Text

24[a.ii.2]

-

comprises an identifier that is at least
relatively unique to the movable barrier
operator, such that the status condition
signal substantially uniquely identifies the
movable barrier operator;

24[b]

6

a remote peripheral having:

24[b.i]

-

a wireless receiver that is communicatively
compatible with the wireless transmitter;

24[b.ii]

-

a peripheral controller that is operably
coupled to the wireless receiver.

The

specification

technology

with

mechanism”

to

controlled
1:21-25.)

by

providing
move

a

of

a

“movable

the
“a

‘275

motor

barrier,
barrier

patent
or

other

which

credits

motion-imparting

motor

operator.”

existing

is

(‘275

typically
patent

at

Users control these operators either “by indicating a

selection via one or more control surfaces that are physically
associated

with

the

movable

barrier

operator”

or

“by

the

transmission of a wireless remote control signal to the movable
barrier operator.” (Id. at 1:25-30.)

At the time of the ‘275

patent application, the capabilities of commercially available
operators had expanded “to include actions other than merely
opening and closing a corresponding movable barrier,” including
providing ambient lighting, sensing the presence of an obstacle
in the path of the barrier, and facilitating different control
strategies (such as vacation mode). (Id. at 1:31-47.)

- 4 -

The specification notes, however, that prior art movable
barrier operators are often partially or wholly inadequate to
suit present or developing needs of a given user or setting.
For

example,

ability

to

physical

movable

support

a

interface

peripheral
control

devices

and

so

physical

interface

part

the

of

wide

to

operators

range

support

alarms,

interface

functionality

the

require

a

utilized

but

limited

sensors,

not

(‘275

entail
goes

with

potentially

displays,

forth).”
can

of

manufactured

“numerous

(including

surfaces,

lighting,

barrier

ambient

patent

undesired

unused

in

at

to

and/or
1:48-60.)

additional
a

given

cost

spot
This
when

installation.

Furthermore, even if all potentially supported peripherals are
used,

the

physical

installation

itself

often

includes

“a

physical signaling path to couple the movable barrier operator
to

the

exposed

various
wiring

peripherals,”
and/or

an

time.” (Id. at 1:64-2:3.)

which

undesired

can

“result

increase

in

in

undesired

installation

The specification ascribes a final

shortcoming to existing devices:

a tendency to “fail to permit

compatible support of a given peripheral,” which can thwart a
user

who

wishes,

for

example,

to

support

a

relatively

new

function “not specifically supported by a given movable barrier
operator.” (Id. at 2:4-16.)

- 5 -

The ‘275 patent (says that it) solves these problems by
incorporating

into

extant

technology

“a

controller

having

a

plurality of potential operational status conditions, a movable
barrier interface that operably couples to the controller, and a
wireless

status

condition

data

transmitter

that

is

operably

coupled to the controller as well.” (‘275 patent at 2:56-61.)
In the preferred embodiment, the wireless status condition data
transmitter relays a status condition signal corresponding to at
least one of the potential operational status conditions, and a
remote peripheral (such as a display, an alarm, or a lighting
control

unit)

can

receive

and

process

information. (Id. at 2:56-3:9.)

this

status

condition

First, this invention gives a

user the ability to set a movable barrier operator to transmit a
wide variety of wireless messages containing information that
“can then be utilized to compatibly support a wide range of
presently

desired

and

later-developed

functionality.” (Id. at 3:16-20.)

features

and

Second, “the overall cost of

a given platform can be reduced as the need to over-design a
physical peripheral interface becomes diminished.” (Id. at 3:2023.)
remain

Finally, this platform “has an improved opportunity to
compatible

regulatory

with

requirements

evolving
to

features

thereby

service life.” (Id. at 3:23-26.)

- 6 -

promote

and

legal

and/or

a

longer

useful

2.

Procedural Background

After an extensive hearing, the Court granted Chamberlain’s
Motion 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 the ‘275 patent.
Federal
claim

Circuit,
1

to

controller
obtain

status

arguing

require

that

Defendants appealed this decision to the

does

a

that

the

Court

self-aware

not

rely

conditions.

upon

The

improperly

controller
any

Federal

–

external
Circuit

construed

that

is,

sensors
agreed

a
to

with

Defendants and vacated the PI order, holding in relevant part:
Claim 1 neither recites nor requires a ‘self-aware
controller.’ The written description of the ‘275
patent makes clear that the controller can obtain the
operational status conditions through self-awareness
or through externally-developed information, e.g.,
sensors.
The

Chamberlain

Group,

Inc.

v.

Techtronic

Industries

North

America et al., No. 2016-2713, slip op. at 9 (Fed. Cir. Jan. 25,
2017).

Both the language of claims 1 and 2 as well as the

written description of the ‘275 patent contemplate self-aware
controllers and controllers that rely on sensors. Id. at 10.
The Federal Circuit rejected Chamberlain’s argument that “the
use of the terms ‘having’ and ‘potential’ in claim 1 demonstrate

- 7 -

[sic] that the claim is directed to a self-aware controller.”
Id. at 11.

It also found that the prosecution history of the

‘275 patent does not support Chamberlain’s argument that sensorbased prior art was overcome during prosecution. Id. at 11.

The

Federal Circuit’s findings are binding on this Court.
With the Federal Circuit decision in hand, the Patent Trial
and Appeal Board (the “PTAB”) denied Defendants’ two petitions
to institute inter partes review of the ‘275 patent.

In those

two decisions, the PTAB construed several of the claims at issue
here.

First,

programmable

the

PTAB

construed

platform,

“controller”

such

as

a

to

mean

“any

microprocessor,

microcontroller, programmable logic or gate array, or the like.”
One World Techs., Inc., et al. v. The Chamberlain Grp., Inc.,
IPR2016-01772, Paper 9, at 8 (P.T.A.B. Feb. 21, 2017); One World
Techs., Inc., et al. v. The Chamberlain Grp., Inc., IPR201601774,

Paper

construed

the

8,

at

7

(P.T.A.B.

limitation

Feb.

“controller

21,

2017).

having

a

It

then

plurality

of

potential operational status conditions” in light of its “plain
and

ordinary

meaning,”

which

does

not

“require

that

the

controller be ‘self-aware’ or [] prohibit the controller from
‘rely[ing]

upon

conditions.’”
Finally,

the

any

external

IPR2016-01772
PTAB

at

construed

“a

- 8 -

sensors
8-12;

to

obtain

IPR2016-01774

present

status
at

operational

8-11.
status

condition”

to

mean

“a

controller’s operation.”
at

11-14.

In

so

present

status

condition

of

the

IPR2016-01772 at 12-14; IPR2016-01774

doing,

it

noted

that

the

specification

“discloses that the status condition signal ‘simply reflects the
actions

being

taken

by

the

controller

11

and/or

the

other

operational conditions being experienced by the controller 11.”
IPR2016-01772 at 14; IPR2016-01774 at 13 (citing ‘275 patent at
5:33-36).
B.

The ‘966 Patent

The ‘966 patent, titled “Barrier Movement Operator Battery
Backup and Power Equipment Battery Charging Center,” covers a
GDO with a rechargeable, removable battery that can be used to
power other equipment physically separate from the GDO.

Unlike

the ‘275 patent, Chamberlain does not practice the ‘966 patent.
The asserted claims of the ‘966 patent, with the five disputed
terms

in

italics,

are

produced

below.

(Chamberlain

has

indicated that it no longer intends to assert claim 19 against
Defendants.

(See, Pl.’s Op. Br. at 25 n.9.))

Claim

Term

Text

1

2

A system for providing a rechargeable battery
backup for a barrier movement operator,
comprising:

1[a]

2

a barrier movement operator for controlling the
movement of a moveable barrier,

1[a.i]

2

the barrier movement operator having a head
unit to command the moveable barrier to perform

- 9 -

Claim

Term

Text
moveable barrier functions,

1[a.i.1]

-

wherein the head unit is supplied power by a
power source;

1[b]

1

a battery charging station in electrical
communication with at least one rechargeable
battery and in electrical communication with
the head unit to supply power to the at least
one rechargeable battery;

1[c]

-

circuitry electrically connected to the battery
charging station to supply power from the at
least one rechargeable battery to the head
unit; and

1[d]

1

electrically powered equipment other than and
physically separate or separable from the
barrier movement operator comprising

1[d.i]

3

an apparatus for receiving the at least one
rechargeable battery and to be powered by the
at least one rechargeable battery to perform a
predetermined function.

2

-

The system of claim 1,

2[a]

4

wherein the rechargeable battery is removably
connectable to the electrically powered
equipment.

3

-

The system of claim 1,

3[a]

1

wherein the head unit is in communication with
the battery charging station via a cord.

4

-

The system of claim 1, further comprising

4[a]

-

an indication element to notify a user in
response to at least one of:

4[a.i]

1

the at least one rechargeable battery being
removed from the battery charging station, and

4[a.ii]

-

the stored power of the at least one
rechargeable battery being below a threshold
amount.

6

-

The system of claim 1,

6[a]

2

wherein the barrier movement operator is
selected from the group consisting of: a garage

- 10 -

Claim

Term

Text
door operator, a gate operator, and a
commercial door operator.

9

-

A battery charging apparatus, comprising:

9[a]

1,2

a battery charging station in electrical
communication with a rechargeable battery and
in electrical communication with a head unit of
a barrier movement operator for supplying power
to at least one rechargeable battery,

9[a.i]

4,2

the at least one rechargeable battery being
removably connectable to electrically powered
equipment other than and separate or separable
from the barrier movement operator to provide
power to the electrically powered equipment;
and

9[b]

1

circuitry electrically connected to the battery
charging station to supply power from the at
least one rechargeable battery to the head
unit.

10

-

The battery charging apparatus of claim 9,

10[a]

1

wherein the head unit is in communication with
the battery charging station via a cord.

11

-

The battery charging apparatus of claim 9,
further comprising

11[a]

-

an indication element to notify a user in
response to at least one of:

11[a.i]

1

the at least one rechargeable battery being
removed from the battery charging station;

11[a.ii]

-

and the stored power of the at least one
rechargeable battery being below the threshold
amount.

15

5

A method of power flow between at least one
rechargeable battery, a barrier movement
operator, electrically powered equipment other
than and physically separate or separable from
the barrier movement operator, the method
comprising:

15[a]

1

detecting whether the at least one rechargeable
battery is in electrical communication with a

- 11 -

Claim

Term

Text
battery charging station;

15[b]

1

providing power from a power source to the at
least one rechargeable battery via the battery
charging station;

15[c]

1

providing stored power from the at least one
rechargeable battery to the head unit via the
battery charging station to perform movable
barrier functions; and

15[d]

-

providing power from the at least one
rechargeable battery to the electrically
powered equipment in response to the at least
one rechargeable battery being electrically
connected to the electrically powered
equipment.

16

-

The method of claim 15, further comprising

16[a]

-

notifying a user in response to at least one
of:

16[a.i]

1

the at least one rechargeable battery being
removed from the battery charging station, and

16[a.ii]

-

the stored power of the at least one
rechargeable battery being below the threshold
amount.

22

-

The kit of claim 19, further comprising

22[a]

2

the electrically powered equipment other than
and physically separate or separable from the
barrier movement operator.

Surveying existing technology, the ‘966 patent notes the
availability of “[v]arious remotely controllable access control
mechanisms,”

including

barrier

movement

operators

for

garage

doors, which “are often powered via an electrical outlet.” (‘966
patent

at

1:15-25.)

In

the

event

of

a

power

outage,

such

devices are unable to open or close a garage door, and a user

- 12 -

must manually open or close it. (Id. at 1:25-30.)

While “[s]ome

current barrier movement operators can be powered via a backup
battery,”

they

independent

receive

power

from

items . . . typically

“battery

used

only

backups
for

barrier movement operator.” (Id. at 1:31-39.)

that

are

operating

the

The background

section then briefly surveys cordless power tools, which also
require batteries and charging systems. (Id. at 1:42-44.)
batteries

are

often

plug-in

devices

that

are

charged

Such
in

a

separate cradle capable only of recharging that battery. (See,
id. at

1:44-47.)

According

to

the

specification,

then,

the

chief shortcoming in prior art devices is the inconvenience and
expense

they

leave

intact:

a

user

must

charge

her

barrier

movement operator backup battery and cordless power tool battery
pack separately in separate charging cradles, and the two are
not interchangeable.
Seeking to remedy the problem, the ‘966 patent invention
provides a rechargeable battery backup for use with a barrier
movement operator which, in the event of a power outage, may
provide power to the barrier movement operator to permit opening
or closing of the barrier.

A battery charging station connected

to the head unit of the movable barrier operator charges the
rechargeable battery backup, which may be removed and inserted
into

other

equipment

–

such

as

- 13 -

garden

tools,

saws,

drills,

lights, and the like - to supply electric power.

Because the

battery charging station is connected via circuitry to the head
unit (which is itself connected to a power supply), the battery
backup may supply power to the head unit or vice versa. (See,
‘966 patent at 3:19-56, 6:46-7:15.)

Thus, a user can conserve

cost and space by minimizing the number of batteries needed on
hand, and can use a single battery charging station “instead of
two separate battery charging stations or cradles as is required
according to current system.” (Id. at 7:16-25.)
II.

LEGAL STANDARD

“A court hearing a patent infringement suit must construe
the patent’s claims, both to settle disputes about their scope
and to translate technical terms into concise definitions that
jurors can understand.”

Cascades Streaming Techs., LLC v. Big

Ten Network, LLC, No. 13 C 1455, 2016 WL 2344578, at *6 (N.D.
Ill. May 4, 2016) (citations omitted).

A district court is not

required

present

to

construe

every

limitation

in

a

patent’s

asserted claims, only those terms “that are in controversy, and
only to the extent necessary to resolve the controversy.”

Vivid

Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
Cir. 1999); see also, O2 Micro Int’l Ltd. v. Beyond Innovation
Tech.

Co.,

521

F.3d

1351,

1362

(Fed.

Cir.

2008).

Claim

construction is a question of law that involves “determining the

- 14 -

meaning

and

infringed.”

scope

of

the

patent

claims

asserted

to

be

Markman v. Westview Instruments, Inc., 52 F.3d 967,

970 (Fed. Cir. 1995).
Claim construction begins with the language of the claims
themselves.

Imaginal Systematic, LLC v. Leggett & Platt, Inc.,

805 F.3d 1102, 1008 (Fed. Cir. 2015).

The words of a claim “are

generally given their ordinary and customary meaning, which is
the meaning that the term would have to a person of ordinary
skill in the art at the time of the invention.” Id. at 1108-09.
Sometimes, “the ordinary meaning of claim language as understood
by a person of skill in the art may be readily apparent even to
lay judges, and claim construction in such cases involves little
more

than

the

application

of

commonly understood words.”

the

widely

accepted

meaning

of

Phillips v. AWH Corp., 415 F.3d

1303, 1314 (Fed. Cir. 2005) (en banc); see also, Brown v. 3M,
265 F.3d 1349, 1352 (Fed. Cir. 2001) (noting that “elaborate
interpretation” is generally unnecessary for terms that “are not
technical terms of art”).
A person of ordinary skill in the art “is deemed to read
the

claim

term

.

.

.

in

the

including the specification.”
this

reason,

a

court

context

of

the

entire

patent,

Phillips, 415 F.3d at 1314.

interpreting

the

claim

language

For
also

considers the intrinsic record, including the specification and

- 15 -

prosecution history.

Kaneka Corp. v. Xiamen Kingdomway Grp.

Co., 790 F.3d 1298, 1304 (Fed. Cir. 2015).

Intrinsic evidence

is the most important evidence of a term’s ordinary meaning.
See, e.g.,

Power-One,

Inc.

v.

Artesyn

Techs.,

In.,

599

F.3d

1343, 1348 (Fed. Cir. 2010) (“When construing claims . . . the
intrinsic evidence and particularly the claim language are the
primary resources.”); MBO Labs., Inc. v. Becton, Dickinson &
Co.,

474

F.3d

1323,

1329

(Fed.

Cir.

2007)

(“Extrinsic

evidence . . . may be helpful but is less significant than the
intrinsic record in determining the legally operative meaning of
claim language.”) (internal quotation marks omitted).

Within

the intrinsic record, the specification is more important than
the

prosecution

history.

See,

Ethicon

Endo-Surgery,

Inc.

v.

Covidien, Inc., 796 F.3d 1312, 1324 (Fed. Cir. 2015) (“Claim
language must be viewed in light of the specification, which is
the

single

(internal

best

guide

quotation

to

marks

the

meaning

omitted).

of

a

Courts

disputed
must

term.”)

take

care,

however, to avoid importing limitations from the specification
into the claim.

Phillips, 415 F.3d at 1323; Hill-Rom Servs.,

Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014)
(“While we read claims in view of the specification, of which
they are a part, we do not read limitations from the embodiments
in the specification into the claims.”).

- 16 -

Extrinsic evidence, on the other hand, derives from outside
the

intrinsic

record

and

includes

“expert

and

testimony, dictionaries, and learned treatises.”
F.3d

at

1317

significant

(noting

than

the

that

extrinsic

intrinsic

inventor

Phillips, 415

evidence
(internal

record”)

is

“less

quotation

marks omitted); see also, Netcraft Corp. v. eBay, Inc., 549 F.3d
1394, 1396 (Fed. Cir. 2008).

The Federal Circuit frames the

order

“[a]fter

of

operations

evidence,

a

court

evidence. . . .”

thusly:
may

also

seek

may

need

guidance

from

intrinsic
extrinsic

H-W Tech., L.C. v. Overstock.com, Inc., 758

F.3d 1329, 1332 (Fed. Cir. 2014).
evidence

considering

to

decide,

for

A court relying on extrinsic
example,

what

a

person

of

ordinary skill in the art would have understood a term of art to
mean at the time of the invention.

Teva Pharms. USA, Inc. v.

Sandoz, Inc., 135 S.Ct. 831, 841 (2015) (discussing “subsidiary
factual findings”).

Once a court makes such a determination of

fact, however, it must decide the further legal question of what
the term means “in the context of the specific patent claim
under review.”

Ibid. (emphasis in original).

Finally, if the plain and ordinary meaning of a claim term
is evident on its face, there are two exceptions to construing
it as such.
a

manner

First, the specification may define a claim term in

that

conflicts

with

the

- 17 -

meaning

it

would

otherwise

possess.

Phillips, 415 F.3d at 1316.

Known as “lexicography,”

this exception to the general plain meaning rule reflects the
fact that a patentee is entitled to redefine terms.
755

F.3d

at

lexicography

1371.

must

In

govern

this

situation,

the

Hill-Rom,
patentee’s

construction

claim

“the

analysis.”

Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1356
(Fed. Cir. 2014).
history

may

Applicant

Second, the specification or the prosecution

evidence

disclaims

“disavowal”
the

or

patent’s

“disclaimer”

application

if

to

the

certain

technology - even if the claim limitations would, if interpreted
consonant with their ordinary meaning, cover that technology.
See, e.g., Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d
1021,

1025

disavowal

(Fed.
in

Cir.

the

2015)

(finding

specification);

GE

clear

and

Lighting

unmistakable

Sol’ns,

LLC

v.

AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“There are
certainly

cases

where

we

have

found

disavowal

or

disclaimer

based on clear and unmistakable statements by the patentee that
limit the claims.”); Computer Docking Station Corp. v. Dell,
Inc., 519 F.3d 1366, 1379 (Fed. Cir. 2008) (“[T]he sum of the
patentees’ statements during prosecution would lead a competitor
to

believe

laptops.”).
demonstrates

that
A

the

patentee

statement

“clear

and

only

had

disavowed

constitutes

unambiguous”

- 18 -

intent

a

coverage

disavowal
to

disavow

if

of
it

claim

scope.

Saffran v. Johnson & Johnson, 712 F.3d 549, 559 (Fed.

Cir. 2013) (internal quotation marks omitted).
III.
A.
1.

ANALYSIS

The ‘275 Patent

“A movable barrier operator comprising” (Claim 1)

The Court construes “a movable barrier operator comprising”
to

mean

“an

operator

that

controls

movement

of

the

movable

barrier and may contain additional functionality, comprising.”
First,

the

Court

notes

that

this

preamble

requires

construction to the same extent as the balance of the claim.
claim

preamble

constitutes

a

limitation

“when

the

A

claim(s)

depend on it for antecedent basis, or when it is essential to
understand

limitations

or

terms

in

the

claim

body.”

C.W.

Zumbiel Co. v. Kappos, 702 F.3d 1371, 1385 (Fed. Cir. 2012).

A

preamble limits its claim if it is “necessary to give life,
meaning, and vitality” to the claim.

Am. Medical Sys., Inc. and

Laserscope v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir.
2010) (internal quotation marks omitted).
necessary

to

limitations;

give
it

“is

life
not

and

meaning

merely

invention’s intended field of use.”

a

Here, the preamble is
to

claim

statement

1

and

its

describing

the

Metraflex Co. v. Flex-Hose

Co., Inc., No. 10 C 302, 2011 WL 4001144, at *3 (N.D. Ill.
Sept. 8, 2011).

Absent the preamble, the ensuing limitations

- 19 -

recite

mere

components

without

situating

them

within

the

operator. Further, language in the body of claim 1 relies upon
the preamble for antecedent basis.
8:11-19

(“[T]he

wireless

status

(See, e.g., ‘275 patent at
condition

data

transmitter

transmits a status condition signal that: . . . comprises an
identifier that is at least relatively unique to the movable
barrier operator”) (emphasis added).)

Thus, the preamble must

be construed as if in the balance of the claim.
Chamberlain

argues

that

the

preamble

is

readily

understandable on the basis of its plain and ordinary meaning
and that, if a construction is necessary, the preamble should be
construed as:

“An operator that controls the movement of a

moveable barrier and may have other functionality.”
counter by proposing the construction:

Defendants

“A set of components

that controls the movement of a movable barrier.”

The Court

finds fault with both proposed constructions to the extent they
implicitly cabin a movable barrier operator’s function to moving
the

barrier.

controls

the

While

true

that

motion-imparting

a

movable

mechanism

of

barrier
the

operator

barrier,

the

specification unequivocally discloses greater capabilities than
just barrier motion control.

Replacing “operator” with “a set

of components that controls the movement” defines the operator
solely with reference to controlling the barrier’s movement and

- 20 -

gives the impression that the operator’s function is limited to
moving the barrier.
The same rationale also undergirds the Court’s rejection of
Chamberlain’s

construction

functionality.”

that

the

operator

“may

have

other

From the plain language of the term, a movable

barrier operator must be capable of operating (i.e., moving) the
moveable barrier.
movable
movement

barrier
can

And the specification makes clear that even
operators

nonetheless

capable
still

of

move

more
the

than

mere

barrier.

barrier

(See,

‘275

patent at 1:31-34 (“Over time, the capabilities of and features
supported by such movable barrier operators has [sic] expanded
to

include

actions

other

than

merely

opening

and

corresponding movable barrier.” (emphasis added).)

closing

a

On its own,

Chamberlain’s proposed “other functionality” - instead of, for
example, “additional functionality” – is ambiguous as to whether
a movable barrier operator could, instead of moving the barrier,
do something else entirely and still remain within claim 1.
Finally, the parties agree that a movable barrier operator
does not include “remote components,” such as smart phones.

The

specification is in accord, contrasting movable barrier operator
uses

involving

physical

association

separate “remote” control strategies.
at

1:25-30

(“In

some

cases

a

user

- 21 -

with

other,

physically

(See, e.g., ‘275 patent
may

control

the

movable

barrier

operator

by

indicating

a

selection

via

one

or

more

control surfaces that are physically associated with the movable
barrier operator.

In other cases such control can be effected

by the transmission of a wireless remote control signal to the
movable barrier operator.”); id. at FIG. 2 (depicting “remote
components”

as

physically

operator).)

This

Chamberlain’s

separate

proposed

functionality”

in

functionality,”

the

the

construction

favor

of

moveable

Court’s

“may

have

contain

which

more

clearly

indicates

from

architecture

barrier

rejection

“may

derives

functionality
itself.

explains

from

other

additional

that

within

of

any

the

added

operator

(In addition, construing “operator” to mean “a set of

components” merely replaces what Defendants allege is an unclear
term, “operator,” with an equally nebulous epithet, “a set of
components.”
it

Separately, adopting this construction also makes

conceptually

more

difficult

for

a

jury

to

exclude

remote

components.)
2.

The
platform

“a controller having a plurality of potential
operational status conditions defined, at
least in part, by a plurality of operating
states” (Claims 1 & 24)

Court

construes

(such

microcontroller,
like),

that

can

as,
a

this

for

example,

programmable
obtain,

term

logic

though

- 22 -

to

mean
a

or

“a

programmable

microprocessor,
gate

array,

self-awareness

or

or

a
the

through

externally developed information (e.g., from sensors), two or
more potential operational status conditions defined, at least
in part, by two or more operational conditions being experienced
by the controller [programmable platform].”
The chief disputes over this term are threefold.

First,

Chamberlain and Defendants dispute how best to incorporate the
Federal Circuit’s guidance.
proper

construction

conditions.”

Second, the parties disagree on the

of

“potential

operational

status

Third, they dispute whether “defined, at least in

part, by a plurality of operating states” should be construed to
require two actions performed at a single time.
a.

“a controller having”

As an initial matter, the Court finds that the term “a
controller” should be construed beyond its plain language to
mean

“a

programmable

platform

(such

as,

for

example,

a

microprocessor, a microcontroller, a programmable logic or gate
array,

or

construction
preferably
example,

a

the
by

like).”

The

disclosing

comprise

a

specification

that

“the

programmable

microprocessor,

a

supports

controller

platform

(such

microcontroller,

a

11
as,

this
will
for

programmable

logic or gate array, or the like).” (‘275 patent at 3:31-33.)
Although this disclosure is worded in the nature of a preferred
embodiment,

none

of

the

intrinsic

- 23 -

evidence

suggests

an

embodiment comprising a different controller.

Presumably, it

was for this reason that the PTAB also construed the term this
way.

See, e.g., IPR2016-01772 at 8; IPR2016-01774 at 7.
With respect to the first bone of contention, there is no

dispute

that

preliminary
claim 1:

Federal

injunction

Circuit’s

spoke

directly

that

conditions

at

to

this

vacating

the

limitation

of

The written description of the ‘275 patent makes
the

controller

through

can

obtain

self-awareness

9

(citing

‘275

patent

at

the

or

developed information, e.g., sensors.
op.

opinion

“Claim 1 neither recites nor requires a ‘self-aware

controller.’
clear

the

operational

through

status

externally-

Chamberlain Grp., slip

2:56-64,

4:52-59,

6:33-36).

Both parties therefore agree that the controller itself need not
be

“self-aware”

Defendants

seek

of
to

its

construe

operational
the

word

status

“having”

conditions.
as

“that

can

obtain, through self-awareness or through externally-developed
information, e.g., sensors.”
contends

that

no

Chamberlain, on the other hand,

construction

of

“having”

is

necessary

and

instead addresses the Federal Circuit’s opinion by adding to the
end of its construction of the entire limitation the following
language:

“where

the

controller

can

be

self-aware

of

such

operational status conditions or the controller can be provided
with externally developed information regarding the condition.”

- 24 -

In keeping with Defendants’ proposal, the Court construes
“having”

to

mean

“that

can

obtain,

though

self-awareness

or

through externally developed information (e.g., from sensors).”
The

Court

will

not

depart

from

the

Federal

Circuit’s

construction by replacing that court’s language, as Chamberlain
advocates, with a corresponding quote from the specification.
The Court acknowledges the concern that the status conditions
are

associated

with

the

controller

itself,

as

the

PTAB

emphasized when it adopted the plain language of “having” over
Defendants’

proposed

construction

of

“having”

as

See, IPR2016-01772 at 8-12; IPR2016-01774 at 8-11.
is

this

distinction

construction,

because

that
its

militates
use

of

against

passive

“knowing.”
In fact, it

Chamberlain’s

language

from

the

specification – namely, its retention of “having” and addition
of “the controller can be provided with externally developed
information regarding the condition” – raises the specter of
confusion

regarding

whether

the

status

condition

is

of

the

controller itself.
Besides a clarifying punctuation edit, the only change the
Court makes to Defendants’ construction is the addition of the
word “from.”

This is intended to avoid any confusion attending

Defendants’ (and the Federal Circuit’s) apparently inadvertent
equation of “sensors” with “externally developed information.”

- 25 -

Rather than constituting the externally developed information,
the external sensors are the media through which this external
information is detected and provided to the controller.
b.

“a plurality of potential operational
status conditions”

The parties’ second point of dispute concerns “a plurality
of potential operational status conditions.”

(The parties do

not appear to dispute construction of the word “plurality,” and
the Court notes that a patent’s usage of the term “plurality” is
routinely determined to mean “two or more.”

See, e.g., Dayco

Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327-28
(Fed. Cir. 2001).
to

mean

“two

operational

As such, the Court construes “a plurality of”
or

more.”)

status

Defendants

conditions”

to

construe

mean

“potential

“potential

status

conditions of the controller’s operation,” whereas Chamberlain
argues that the term requires no construction because its plain
meaning conveys as much.
Because
that

the

an

operational

controller

has”

status
and

condition

because

it

“is
did

a
not

condition
believe

“operational status condition” was clear on its face, the PTAB
construed
present

“present
status

operational

condition

of

status
the

condition”

controller’s

to

mean

“a

operation.”

IPR2016-01772 at 14 (emphasis added); IPR2016-01774 at 13-14.
(Neither

“present”

nor

“potential”

- 26 -

requires

construction,

and

the other claim terms are identical.
Inc.

v.

Raytek

Corp.,

334

F.3d

See, e.g., Omega Eng’g,

1314,

1334

(Fed.

Cir.

2003)

(“[T]he same claim term in the same patent . . . carries the
same construed meaning.”).)

Similarly, the claim language and

the specification make clear that “operational status condition”
refers to a status condition of the controller’s operation.
specification

explains

that

the

controller

sources

a

The

status

condition signal to “reflect[] the actions being taken by the
controller

11

and/or

the

other

operational

conditions

being

experienced by the controller 11.” (‘275 patent at 5:27-36.)

It

further defines an operational status condition to be “of the
controller 11.” (Id. at 4:64-67.)
“the

controller

11

will

have

In addition, it notes that
a

plurality

of

potential

operational status conditions” and, for example, “might have two
or

more

of

conditions,”

the
each

following
one

potential

representing

operational

an

action

status

taken

or

a

condition experienced by the controller. (Id. at 4:6-45.)
However,
because

the

the

Court

parties

do

does
not

not

need

appear

to

to

construe

dispute

this

its

term

meaning.

Chamberlain claims that the plain meaning of the term refers to
operational

status

claim

the

that

meaning.

conditions

term

needs

to

of
be

the

controller.

construed

to

Defendants

give

it

this

The Court is confident that its full construction of

- 27 -

Term 2 and its other claim constructions establish in context
that the status condition is of the controller’s operation.

It

thus

be

declines

to

construe

this

sub-term,

finding

it

to

redundant in the context of its construction of “having,” supra,
and

its

construction

of

“defined,

at

least

in

part,

by

a

plurality of operating states,” infra.
c.

The

final

“defined, at least in part, by a
plurality of operating states”

dispute

over

Term

2

concerns

how

to

construe

“defined, at least in part, by a plurality of operating states.”
Defendants propose “defined by at least two actions that can be
performed by the controller at a particular time.”

Chamberlain

counters that Defendants’ construction is an ill-founded attempt
to rewrite “operating states” and that the plain meaning of the
words

should

govern.

Neither

side

proposes

to

construe

“defined.”
Claim 5, for example, recites “the movable barrier operator
of claim 1 wherein the plurality of operating states includes at
least one of” certain enumerated actions, which Defendants argue
are necessarily actions of the controller.
decisions supports this interpretation.
20; IPR2016-01774 at 20.)

Language in the PTAB

(See, IPR2016-01772 at

In addition, the PTAB held that the

specification “discloses that a status condition signal reflects
‘the

actions

being

taken

by

the

- 28 -

controller

and/or

the

other

operational

conditions

being

experienced

by

the

(Id. at 20 (quoting ‘275 patent at 5:33-36).)

controller.’”
It also noted

that “the door’s position (e.g., open or closed) indicates the
status of the door.

By contrast, moving the door towards an

open or closed position identifies an action being taken by the
controller.”

(Id.

at

19-20

(emphases

in

original).)

Hence

Defendants’ construction of “operating states” as “actions that
can be performed by the controller at a particular time.”

In

contrast to the PTAB, this Court has been asked explicitly to
construe “operating states” with respect to the first limitation
of claim 1 and to do so in the face of proposed constructions
that were not before the PTAB.

(See, e.g., IPR2016-01772 at 19

(opting to construe “present operational status condition” as a
“present

status

condition

of

the

controller’s

operation”;

rejecting Defendants’ construction of the wireless transmitter
status condition limitation as the “status of any operation that
has

two

or

more

potential

operating

states”)

(emphasis

in

original).)
The

Court

does

not

believe

that

the

“operating

states”

recited in dependent claim 5 can be read as uniformly or as
broadly

as

Defendants

specification.

suggest,

particularly

in

view

of

the

The Court does not credit the facile statement

that all the limitations of claim 5 are actions the controller

- 29 -

takes, even if the PTAB indicated as much when it construed a
separate limitation of claim 1.

For example, the only example

the specification gives of “a vacation mode status change” is
“when a user effects this change via a switch provided for this
purpose.” (‘275 patent at 4:36-37.)
user-initiated.

This “operating state” is

Similarly, “detecting the identification of a

proximal vehicle,” although taking gerund form, is not something
the

specification

controller.”
detecting

defines

Rather,

occurs

corresponding

the

“when,

agent

as

“an

being

specification

for

device

action

example,

transmits

notes

the

an

taken

by

that

vehicle

or

identifying

the
such
some

signal.”

(‘275 patent at 4:39-41.) (Indeed, as mentioned with respect to
Term

5,

infra,

the

plain

meaning

of

“detecting”

brooks

no

causation but instead is silent as to the underlying action.)
Similarly, three of the other operating states recited in claim 5
involve the controller passively “receiving” signals from remote
components.

Read in light of the specification, claim 5 does

not unambiguously define “operating states” as actions taken by
the controller.
Other

disclosures

in

the

specification

should

not

be

ignored either. Notwithstanding the indeterminacy of “actions”
in claim 5, the ‘275 patent did not craft the term “operating
states” from whole cloth.

For example, the background of the

- 30 -

patent

includes

the

following

description:

“[S]ome

movable

barrier[] [operators] have a plurality of operating modes to
facilitate

differing

control

strategies

(for

example,

many

movable barrier operators have a so-called vacation mode that
prompts use of a differing set of operational states when the
user leaves the movable barrier operator for an extended period
of time. . . .” (‘275 patent at 1:38-47.)

As understood in the

background section, prior art “vacation mode” was an “operating
mode”

of

prompted

a
a

movable
different

barrier
set

of

operator

that,

“operational

when

selected,

states.”

Although

“plurality of operating modes” and “operational states” may not
precisely mirror “plurality of operating states,” the Applicant
chose in claim 5 to recite “a vacation mode status change” as
among its plurality of operating states.

Reading the claims in

light of the specification thus casts doubt on whether claim 5’s
“plurality

of

operating

states”

is

even

an

instance

of

lexicography at all.
Because the proper construction of “operating states” is
nebulous on the basis of the specification and the claims, the
Court

avails

“operating

itself

states”

of

the

appears

prosecution

throughout

the

history.
‘275

The

term

patent’s

file

history in ways that suggest indebtedness not to actions taken
by the controller but provided to the controller:

- 31 -

•

Examiner’s initial rejection of the application:
“The operating states and the predetermined action as
defined in these claims would not involve patentable
invention in view of the teachings of Suman, see
figures 4, 7, 9, and 10, and columns 5 and 6.
It
would have been obvious to one having ordinary skill
in the art to provide the conventional operating
states and the predetermined actions in the movable
barrier system of Doyle because the specific use and
advantage of such is suggested by Suman.” (JA 0189
(Mar. 16, 2005 Office Action at 3) (emphases added).)

•

Applicant’s response to the Suman/Doyle rejection:
“As shown, the transmitted RF signal from the RF
transmitter unit 20 of Doyle, at its most reasonable
broadest interpretation, provides a single position
of the garage door 22. In contrast, claims 1 and 25
require a wireless 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 and claim 15
requires automatically wirelessly transmitting a
status condition signal that represents the present
operational status defined, at least in part, by the
at least two operating states in response to
detecting the at least one predetermined condition.”
(JA 0183 (June 15, 2005 Office Action Response at 12)
(emphases in original).)

•

Examiner’s subsequent rejection:
“Morris shows the
movable
barrier
operator
112
that
includes
a
controller
18 having
a
plurality
of
potential
operational status conditions, defined at least in
part by a plurality of operating states 12, 14, 16,
48; . . . Chang shows the movable barrier operator
comprising a controller having plural operating
states as defined by the movable barrier interface
sensor 20 wherein a wireless transmitter 51 transmits
the status signals to a remotely located receiver,
see figure 5. Plural operating states are defined by
angle sensor 20, see col. 2, lines 53-65.” (JA 0122
(Feb. 15, 2006 Office Action at 3).)

- 32 -

•

Applicant’s response: “The operating states of Chang
(i.e., door ¼ open, door ½ open, etc.) do not also
contain a substantially unique identifier with at
least one, but not all of the operating states that
identifies
[sic]
the
unit
it
is
transmitted
from. . . . Chang utilizes an electronic angle sensor
20 that is attached to the door and outputs signals
to the controller that transmits the door’s position,
but does not serve to cause the door to move.
Applicant’s movable barrier interface is controlled
by the controller and operates to open the door; the
electronic sensor 20 does not serve such a function.”
(JA at 0112 (Apr. 20, 2006 Office Action Response at
12).)

•

Examiner’s
final
rejection
of
the
application:
“Morris shows the identifier (status condition signal
that corresponds to at least one of the two operating
states) as a unique identifier that identifies the
state (open/close) of the garage door, col. 3, lines
1-14, 45-49, col. 4, lines 5-44). . . . Chang further
discloses an identifier (status condition signal that
corresponds to at least one of the two operating
states) as a unique indicator that identifies the
position of the garage door, col. 1, lines 50-65,
col. 2, lines 1-10, table in col. 4. . . . Morris and
Chang
clearly
shows
[sic]
a
controller
that
interfaces a movable barrier in the form of a garage
door and monitors the operational status (open or
close of garage door) as well as another parameter
such as battery in Chang and smoke in Morris, wherein
the controller in response to an operational status
signal of the movable barrier (garage door) operates
a radio transmitter to wirelessly transmit the status
signal to a receiver which receiver clearly indicates
at least one of two operating states (open and close
position of the garage door) from the plurality of
operating states, the plurality of operating states
shown as 12, 14, 48 in figure 1 of Morris and the
plural operating states as defined by the angle
sensor 20 of Chang.” (JA 0082 July 10, 2006 Office
Action Response at 6) (emphases added).)
These excerpts show that the Applicant distinguished over

the

“operating

states”

disclosed

- 33 -

by

the

asserted

prior

art,

including Chang and Doyle, based on the understanding that these
states could relate to other components (such as the door) so
long as they were provided to the controller (for example, via
sensors).

The clear understanding during prosecution was that

the Morris prior art reference disclosed “a controller 18 having
a plurality of potential operational status conditions, defined
at least in part by a plurality of operating states” and that
the Chang prior art reference disclosed “a controller having
plural operating states.”
issue here.
by

those

Such is precisely the language at

That the controller has status conditions defined

operating

states

does

not

mean

that

the

operating

states themselves are actions solely within the purview of the
controller.
understanding

The

Court

with

notes

the

the

Federal

consistency
Circuit’s

of

rejection

this
of

Chamberlain’s argument that claim 1’s controller, by virtue of
“having” operational status conditions, could not obtain them by
externally-developed information from sensors.

See, slip op.

at 9-10.
Chamberlain

made

no

argument

during

prosecution

to

distinguish the operating states recited in the ‘275 patent from
the sensor-based operating states attributed to the prior art.
(See, e.g., JA 0112 (Apr. 20, 2006 Office Action Response at 12)
(“Chang utilizes an electronic angle sensor 20 that is attached

- 34 -

to the door and outputs signals to the controller that transmits
[sic] the door’s position, but does not serve to cause the door
to move.

Applicant’s movable barrier interface is controlled by

the controller and operates to open the door; the electronic
sensor

20

does

original).)

not

serve

such

a

function.”)

(emphasis

in

Indeed, in Defendants’ words, the Federal Circuit

“rejected CGI and Dr. Rhyne’s argument that CGI overcame sensorbased

prior

art

during

Suppl. Br.”) at 4.)

prosecution.”

claim

rejections

transmission

No.

286

(“Defs.’

Nor did Chamberlain make any statement

disavowing relevant claim scope.
the

(ECF

by

limitation

Rather, Chamberlain traversed

amending

the

claim

(and

of

1

“unique
the

identifier”

patent’s

other

similar independent claims) and arguing that Chang and Morris
operate “wholly apart and independent of any movable barrier
operator” without any suggestion that their teachings “might be
usefully

applied

operator.”
Response

in

conjunction

with

such

a

movable

barrier

(See, e.g., JA 0066-69 (Oct. 24, 2006 Office Action
at

January 19,

11-14).)
2007,

communication

filed

The

notice

of

allowance

that

it

was

(JA

0032

indicating
10-24-06.”

issued

on

“responsive

to

(Not.

of

Allow.).)

Thus, the file history clearly indicates that a controller’s
having

status

conditions

does

not

mean

that

the

controller

itself is responsible for performing an action corresponding to

- 35 -

each underlying operating state.

That the status conditions are

of the controller does not mean that they correspond only to
actions taken by the controller.
The

Court

considers

reasoning

to

the

contrary

to

come

dangerously close to flouting the Federal Circuit’s opinion in
this

case.

For

Chamberlain’s
controller

example,

argument

the

Federal

by

the

having,”

that,

dint

of

“potential

Circuit
the

claim

rejected
term

operational

“a

status

conditions” are internal conditions of the controller itself.
See, slip op. at 8-10.
force

to

attempts

to

This would seem to apply with equal
construe

the

claims

to

mandate

that

operating states and/or operational status conditions can only
be actions of the controller itself (and not actions executed or
states detected by other components in communication with the
controller).
persistent

This is all the more so in light of the Examiner’s

citations

of

prior

art

sensors

against

the

‘275

patent application’s claims to a controller having operational
status conditions defined by a plurality of operating states.
Put

simply,

the

Federal

Circuit

abjured

interpretations

of

claim 1’s “a controller having . . . status conditions” that
require a controller to be self-aware of these status conditions
without input from external sensors.

The Court believes this

directive has purchase here, where Defendants seek to construe

- 36 -

the “operating states” defining the status conditions as actions
only

the

controller

itself

takes

(i.e.,

without

the

aid

of

remote components, such as sensors).
Looking to the prosecution history reveals that “operating
states” defining status conditions “of the controller” can refer
to states of or actions taken by non-controller components of
the system, so long as the controller assimilates them by selfawareness or is provided them by, for example, external sensors.
Thus,

the

Court

“operating

states”

rejects
as

Defendants’

“actions

that

controller at a particular time.”
“operating

states”

experienced

by

the

to

mean

attempt

can

be

construe

performed

by

the

Instead, the Court construes

“operational

controller,”

to

which

is

conditions
a

phrase

being

from

the

specification (‘275 patent at 5:27-36) broad enough to capture a
person

of

ordinary

“operating states.”
would

have

skill

in

the

art’s

understanding

of

Such a person at the time of the invention

understood

the

term

to

encompass:

actions

the

controller directly takes, actions the controller itself may not
take

but

of

which

it

is

made

aware,

and

states

of

system

components that are provided to the controller (either through
self-awareness or external sensors).

This construction seeks to

harmonize the specification’s and claims’ predominantly (but not
exclusively)

active-voice

descriptions

- 37 -

of

“operating

states”

with the prevailing contemporaneous understanding of the term –
an understanding that the Applicant did not clearly disclaim or
redefine.
Even if Chamberlain itself is estopped from advocating for
this

position

successfully

because

took

in

it

the

is
IPR

contrary

to

proceedings,

the
the

position

Court

it

“has

an

independent obligation to determine the meaning of the claims,
notwithstanding the views asserted by the adversary parties.”
Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555
(Fed. Cir. 1995); see also, Praxair, Inc. v. ATMI, Inc., 543
F.3d 1306, 1323-24 (Fed. Cir. 2008) (“Because the court has an
independent obligation to construe the terms of a patent, we
need not accept the constructions proposed by either party.”).
(The

Court

notes

that

Chamberlain

has

not

proposed

this

construction of “operating states” and has instead maintained
that the term should be given its plain meaning.)
3. “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” (Claims 1 & 24)
“a status condition signal that: represents the present
operational status defined, at least in part, by the
at least two operating states” (Claim 14)
The

Court

construes

“a

status

condition

signal

that:

corresponds to a present operational status condition defined,
at least in part, by two operating states from the plurality of

- 38 -

operating

states”

to

mean

“a

status

condition

signal

that:

corresponds to a present operational status condition defined,
at

least

in

operational

part,

by

at

conditions

[programmable
signal that:

least

being

platform].”

two

from

experienced

It

construes

the
by

“a

two

the

or

more

controller

status

condition

represents the present operational status defined,

at least in part, by the at least two operating states” to mean
“a

status

condition

signal

that:

represents

the

present

operational status condition defined, at least in part, by the
at least two operational conditions being experienced by the
controller [programmable platform].”
Advancing virtually the same arguments as with respect to
Term

2,

Term 3:
reflecting

Defendants
“a
a

propose

status

the

following

condition

present

signal

status

condition

construction

containing
of

for

information

the

controller’s

operation, where the present status condition is defined by at
least

two

actions

present time.”

being

performed

by

the

controller

at

the

Chamberlain, on the other hand, argues that no

construction beyond the plan language of the term is necessary.
(The parties both seek to clarify that claim 14 involves the
movable barrier operator instead of the controller.

The Court

notes that its construction of Term 5, which is an antecedent
limitation

of

claim

14,

makes

clear

- 39 -

that

claim

14’s

present

operational status – and thus the transmitted status condition
signal of Term 3 - is of the movable barrier operator.)
In addition to the considerations explored with respect to
Term

2,

the

Court

notes

that

additional

Defendants’ construction of Term 3.
explain

why

relevant

punctuation

problems

infect

First, Defendants do not
(the

semicolon

following

“that”) should be done away with, nor why “corresponds to” or
“represents”

should

reflecting.”

The

relationship

be

construed

omission

between

“containing

of

punctuation

various

the

risks jury confusion.

as

limitations

information

obfuscates
of

claim

1

the
and

Similarly, Defendants have not argued

that “corresponds to” or “represents” are amenable to multiple
reasonable

constructions,

different

construction

or

pinpointed

(i.e.,

how

their

“containing

radically
information

reflecting”) is supported by intrinsic evidence.
Second,

Defendants

do

not

account

for

embodiments

that

their construction would clearly preclude.

For example, the

specification

the

describes

an

embodiment

where

GDO

sends

a

status condition signal to a lighting peripheral to identify
that the GDO performed the single action of turning its lights
on or the single action of turning them off.
at 5:59-6:3.)

(See, ‘275 patent

It also describes an embodiment using a “single

data field” to provide information about a single “monitored

- 40 -

condition.”

(See,

id.

at

6:46-51.)

It

is

unclear

how

such

embodiments could meet the claims as Defendants construe them –
that is, if a present operational status condition signal must
contain

information

reflecting

multiple

actions

taken

by

the

controller at the same time.
4.

“a status condition signal that: . . . comprises
an identifier that is at least relatively unique
to the movable barrier operator, such that the
status condition signal substantially uniquely
identifies the movable barrier operator (Claim 1)

The Court construes this term to mean “a status condition
signal that:

. . . comprises an identifier that is sufficiently

unique to allow identification of the movable barrier operator
[operator that controls movement of the movable barrier and may
contain additional functionality] that sent the signal.”
Although they propose different constructions, the parties
appear

to

information

agree

in

the

representing

main
an

that

the

identifier

signal
that

is

must

contain

“sufficiently

unique” to identify as a recognized operator the movable barrier
operator that sent the signal.
construction:
barrier

Defendants propose the following

“a signal relating to a condition of the movable

operator

that

contains

information

representing

an

identifier that is sufficiently unique to allow identification
of

the

movable

Chamberlain

barrier

advocates

for

operator
the

that

plain

- 41 -

sent

meaning,

the

signal.”

maintains

the

original punctuation, and does not add the words “information
representing.”
Because

the

claims

provide

no

further

guidance,

the

specification is the best resource for construing Term 4.

It

discloses a status condition signal that identifies “the movable
barrier operator.”

(See, e.g., ‘275 patent at 6:39-46 (“[T]his

message can be formed to include an identifier for the movable
barrier operator. . . . [S]uch a message 40 can include a first
field 41 that includes a specific identification number that is
at

least

relatively

unique

to

a

given

movable

barrier

operator. . . .”) (emphasis added).)

The specification goes on

to

peripheral,

upon

identifying

information

note

that

a

message,

“can

use

whether

the

remote
the

received

information

receipt

corresponds

of

to

to

such

a

determine

a

relevant

movable barrier operator (i.e., to a movable barrier operator
with

which

associated).”

the
(Id.

remote
at

peripheral

6:58-63.)

has

When

been

previously

information

“from

an

unrecognized movable barrier operator is received for whatever
reason or due to whatever circumstance, the remote peripheral
can choose to simply ignore the information and thereby avoid
taking a potentially inappropriate action.” (Id. at 6:63-67.)
Based

on

peripheral

an

identifier

must

be

able

included
at

least

- 42 -

in
to

the

signal,

distinguish

the
the

remote
movable

barrier operator that sent the signal from other movable barrier
operators that could have potentially sent the signal.
The prosecution history bears out this understanding of the
“identifier”

and

also

confirms

the

specification’s

disclosure

that the identifier must occupy its own data field within the
message

packet.

First,

the

“at

least

relatively

unique”

identifier of the specification is included within the wireless
status condition signal as a separate data field.

(See, e.g.,

‘275 patent at FIG. 4 & 2:35-37 (“FIG. 4 comprises a schematic
view

of

a

various

message

embodiments

packet
of

as

the

configured

in

accordance

invention[.]”);

id.

at

with

6:41-48

(“[S]uch a message 40 can include a first field 41 that includes
a specific identification number that is at least relatively
unique

to

a

given

movable

barrier

operator

and

includes one or more additional data fields.
field

can

be

used

corresponds

to

wrinkle

whether

is

something

the

the

if

desired

specified
the

status

claims

specification

to

contain

that

A single data
information

condition.”).)

require

introduces

such

an

The

that
only

approach

uncertainty

describing it as “optional.” (Id. at 6:40.)

also

about

–
by

However, the Court

finds that the Applicant amended the claims in relevant part and
unequivocally disavowed any other approach during prosecution.
Despite

these

amendments,

this

“optional”

- 43 -

language

from

the

application was never changed in the specification.

(Compare,

JA 0233, line 14 (‘275 patent application at 10:14); with ‘275
patent at 6:40.)
The

Examiner

issued

multiple

anticipation

rejections

of

claims reciting a prior incarnation of claim 1’s “identifier”
limitation: that “at least one, but not all, of the at least two
operating states,” which define the present operational status
condition

transmitted

via

signal,

identifies the movable barrier.”

“substantially

uniquely

In particular, the Examiner

read the Morris and Chang references’ disclosure of a “status
condition signal that corresponds to at least one of the two
operating

states”

“as

a

unique

identifier”

that

permitted

“unique identification (visual) of the position (open/close) of
the garage door.”
7.).)

(JA 0082-83 (July 6, 2006 Office Action at 6-

The Applicant amended the claims to recite as a separate

limitation

that

the

status

condition

signal

“comprises

an

identifier that is at least relatively unique to the movable
barrier

operator,

such

that

the

status

condition

signal

substantially uniquely identifies the movable barrier operator.”
(JA 0057, 0060, 0063 (Oct. 24, 2006 Office Action Response at 2,
5, 8).)

In the Applicant’s words, Morris and Chang made “no

teachings or suggestion regarding the provision of an identifier
of any kind to accompany [their] transmissions,” meaning that “a

- 44 -

receiver

that

receives

information

from

two

such

monitoring

systems will be unable to differentiate between them.” (JA 006768

(emphasis

added).)

As

the

Applicant

noted,

the

amended

claims teach “a substantially unique identifier that the movable
barrier

operator

information

to

information

for

provides
permit

in

conjunction

receiver

other

[sic]

a

similar

to

with

its

status

differentiate

information

as

this

might

be

received by another such movable barrier operator (as when, for
example,

a

separate

given

garage

movable

added).)

has

barrier

Chamberlain

two

garage

operators).”

thus

disavowed

doors
(JA

during

controlled
0069

by

(emphasis

prosecution

any

claim to identifying the movable barrier operator based on the
transmitted
identifier
transmitted

status
is
in

a

condition
separate

information.

data

“conjunction

packet

with,”

the

Rather,

“accompanying,”
status

the
or

condition

information.
Separately, the intrinsic evidence confirms that “unique”
and “uniquely” are directed to identifying the movable barrier
operator from which the status condition signal issued.

The

identifier need not permit absolute identification of a movable
barrier operator, particularly if it is an unrecognized one.
Instead, the identifier must permit the remote peripheral to
determine, first, whether it recognizes the transmitting movable

- 45 -

barrier operator and, if so, which operator among the recognized
ones

sent

the

signal

(“differentiation,”

in

the

Applicant’s

words during prosecution).
The
meaning

Court
of

the

does

not

awkward

believe
claim

that

language

the

plain

imparts

and

ordinary

this

meaning.

Indeed, the claim’s phrasing - “an identifier that is at least
relatively unique . . . such that the status condition signal
substantially uniquely identifies” – invites jury confusion.

So

too does deletion of the original punctuation and addition of
the words “contains information representing.”

As such, the

Court adopts Defendants’ construction in part but maintains the
original punctuation of the claim limitation and declines to add
the proposed “contains information representing.”
5.

“detecting at least one predetermined condition
as corresponds to a present operational status
defined, at least in part, by at least two operating
states, of the movable barrier operator” (Claim 14)
The Court construes this term to mean “detecting at least
one

predetermined

operational

status

condition
of

the

as

movable

corresponds
barrier

to

operator

a

present
[operator

that controls movement of the movable barrier and may contain
additional functionality], which status is defined, at least in
part, by at least two operational conditions being experienced
by the controller [programmable platform].”

- 46 -

This disputed term contains two constituent parts:

first,

“detecting at least one predetermined condition as corresponds
to”;

and

second,

“a

present

operational

status

condition

defined, at least in part, by at least two operating states, of
the

movable

construction

barrier

operator.”

of

second

the

Defendants

part

should

contend

that

the

correspond

with

the

construction of similar language in Term 3.

Chamberlain argues

that this sub-included phrase from Term 3 is wrong for the same
reasons already explored. (There is consensus that no meaningful
distinction exists between “operational status” and “operational
status condition.”)

The Court finds agreement among the parties

and in the case law that the construction of Term 3 should be
replicated here, the key difference being the modification of
present

operational

barrier operator.”

status

(condition)

by

“of

the

movable

The placement of the comma after “operating

states” and before “of the movable barrier operator” indicates
that

the

latter

modifies

“present

operational

status.”

See,

e.g., BorgWarner, Inc. v. New Venture Gear, Inc., 237 F.Supp.2d
919, 944-45 (N.D. Ill. 2002) (construing elements of the same
limitation separated by a comma “as separate items” that do not
modify one another; “It would certainly have been simple enough
to

suggest

otherwise,

by

claiming

[them]

without

a

comma

separating the elements.”); cf., 3form, Inc. v. Lumicor, Inc.,

- 47 -

No. 2016-1535, 2017 WL 443652, at *3 (Fed. Cir. Feb. 2, 2017)
(“Because

there

‘compresses,’

is

those

no

comma

terms

separating

must

be

taken

‘otherwise’
together.”).

and
This

inference is bolstered by further contrasts between claim 1 and
claim

14,

such

as

the

former’s

recitation

of

“a

controller

having a plurality of potential operational status conditions”
and

the

latter’s

method

predetermined condition.”
part as follows:

step

of

“detecting

at

least

one

Thus, the Court construes the second

“a present operational status of the movable

barrier operator, which status is defined, at least in part, by
at least two operational conditions being experienced by the
controller.”
What

remains

is

proper

construction

of

the

first

part,

“detecting at least one predetermined condition as corresponds
to.”

Defendants

propose

the

following

construction:

“determining when stored information representing a condition of
the movable barrier operator matches information reflecting a
present

status

Chamberlain

of

the

believes

movable

that

no

barrier

operator’s

construction

beyond

operation.”
the

plain

meaning of the claim’s words is necessary.
First, the Court rejects substitution of “determining when”
for “detecting.”

The content of these words is quite different:

unlike the active word “determining,” there is no definition of

- 48 -

“detecting” that implicates causation.
act

of

discerning

and

identifying.

Rather, it describes the
And

the

Court

has

been

directed to nothing in the claims, specification, or prosecution
history

that

supports

an

equivalence

between

the

two

words.

Because replacing “detecting” with “determining” impermissibly
changes the scope of the claimed method without justification in
the intrinsic record, the Court declines to do so.
Second, the claim language does not require any sort of
“match,”

only

condition

that

the

at

“correspond[]

least

to”

a

one

detected

present

predetermined

operational

status.

Because the claim does not use “match” and because “matching” is
a subset of the much broader term “corresponding,”

Defendants

bear a heavy burden to justify construing this term so narrowly.
They fail to carry it.
“corresponds”
controller

11

at

First, the specification uses the word

relevant

detects

at

times

when

least

one

making

clear

predetermined

that

“the

condition,

which predetermined condition preferably, but not necessarily,
corresponds to the present operational status being reported via
the transmission.” (‘275 patent at 5:2-5.)
against

narrowing

“[u]pon

detecting

“corresponds”
such

a

to

Second, it militates

“matches,”

[predetermined

noting

operational

that

status]

condition, the process 30 then forms 32 a message that includes
content

to

relate,

reflect,

or

- 49 -

otherwise

correspond

to

the

detected status condition.” (Id. at 6:37-39.)

Thus, while the

specification

construing

provides

some

support

for

“as

corresponds to” to mean “as relates to” or “as reflects,” it
does not contemplate the narrower “matches.”

The claim language

as written is thus consistent with the specification, and the
Court declines to re-write “as corresponds to” in the narrower
form Defendants propose (“matches information reflecting”).
Third, the claim language does not support limiting “at
least

one

predetermined

condition”

representing a condition.”
makes

clear

that

predetermined
preferably,

“the

not

“stored

information

Nor does the specification, which

controller

condition,

but

to

which

necessarily,

11

detects

at

least

predetermined
corresponds

to

one

condition
the

present

operational status being reported via the transmission.” (‘275
patent at 5:2-5.)

While the movable barrier operator may as a

definitional matter need to rely on some stored data for it to
“know” what conditions are predetermined, it does not follow
that the predetermined condition is otherwise equivalent to the
stored

information.

On

a

final

note,

Defendants’

proposed

construction does away with the words “at least,” significantly
and without justification narrowing the scope of the limitation.

- 50 -

6.

“remote peripheral” (Claim 24)

The Court construes “remote peripheral” to mean “a device
that is separate from the movable barrier operator [operator
that controls movement of the movable barrier and may contain
additional

functionality]

and

receives

and

processes

transmissions from the movable barrier operator [same].”
The specification discloses that a remote peripheral is a
device that receives the wireless signals transmitted by the
movable

barrier

transmitter.

operator’s

wireless

status

condition

(See, e.g., ‘275 patent at 5:39-43.)

data

It is a

broad term that refers to a number of different types of devices
and

platforms,

informational

“including
display,

a

but

certainly

remote

access

not

limited

interface,

to

a

an

light

fixture, a timer apparatus, an alarm unit, and so forth.” (Id.
at 5:43-47.)

Defendants, however, seek to add language that the

remote peripheral “receives transmissions . . . and performs
actions,

based

on

the

transmissions”

and

that

the

remote

peripheral operates “without user input.”
The specification explains that a remote peripheral may,
but need not, “perform actions” based on the transmissions it
receives.

(See,

e.g.,

‘275

patent

at

3:9-15

(“If

desired,

although the status condition information does not comprise a
control

signal

as

such

(meaning

- 51 -

that

the

status

condition

information does not comprise an instructional signal but rather
presents only informational content) the remote peripheral can
be

configured

to

process

the

data

content

to

thereby

nevertheless effect a desired corresponding action.”) (emphases
added).)

While

the

specification

contains

numerous

such

statements about the ability of a remote peripheral to perform
an

action

related

to

the

movable

barrier

operator,

it

never

requires that the remote peripheral perform such actions based
on received transmissions.

In addition, Figure 5 of the patent,

in which a remote peripheral is shown via flow diagram to effect
a corresponding predetermined action, is expressly described as
“an embodiment of the invention.” (Id. at 2:33-40.)
will

not

read

peripheral
See,

e.g.,

into

“perform

claim

24

actions”

Decisioning.com,

a

requirement

based
Inc.

on
v.

that

The Court
its

transmissions
Federated

remote

received.

Dept.

Stores,

Inc., 527 F.3d 1300, 1313-14 (Fed. Cir. 2008) (“The description
of a preferred embodiment, in the absence of clear intention to
limit claim scope, is an insufficient basis on which to narrow
the claims.”) (citation omitted).
Similarly,

the

specification

appears

to

contemplate

user

input where a remote peripheral is used to effect actions.

One

illuminating passage from the specification reads as follows:
So
configured,
the
remote
receiving
status
condition

- 52 -

peripheral
information

20,
upon
from
the

movable
barrier
operator
10
via
the
wireless
transmissions being sourced by the latter, can process
that information in accord with a desired end result.
For example, the remote peripheral 20 can serve to
simply further communicate such status information via
a display such as an alphanumeric display, a graphic
images display, one or more signal lights and/or
corresponding indicative audible sounds, and so forth.
As another example, the remote peripheral 20 can
process
such
status
information
to
then
itself
ascertain a particular resultant course of activity.
To illustrate,. . . . [u]pon receiving a status
condition signal from the movable barrier operator 10
indicating that the movable barrier operator 10 has
switched on its own lights, the remote peripheral 20
can then itself determine to also switch on its own
lights.
(‘275 patent at 5:47-56 (emphases added).)
contemplates

the

peripheral’s

action,

then

there

to

status

“a

desired

But if a user does not interact with the peripheral’s
some

further

the

result.”

take

user

of

information

or

the

display

condition

display

to

mere

The specification

is

result” – only the mere display of information.

no

“desired

end

end

The immediately

subsequent “example” of processing information “in accord with a
desired end result” involves the peripheral “ascertain[ing] a
particular resultant course of activity” and then, for example,
“switch[ing] on its own lights.”
that

the

remote

peripheral

can

The inescapable conclusion is
display

the

status

condition

information to a user for subsequent user action, or it can
itself

effect

information.

an

end

result

based

on

the

status

condition

It is thus capable of receiving user input to

- 53 -

effect

an

action,

of

simply

processing

and

displaying

information without an end result or action, or of itself taking
an action without user input.

Defendants’ construction that

forecloses user input and vaguely requires that the peripheral
“perform actions” is inappropriate.
invention

a

disclosed

embodiment

It either reads out of the
in

which

the

user

actively

participates or opens the door to jury confusion about whether
“performing actions” embraces only end results or includes, for
example, mere repetition or display of information.
The Court agrees, however, that the remote peripheral is in
every

disclosure

separate

from

the

movable

barrier

operator.

The Court also agrees that the remote peripheral (at least) must
receive

transmissions

process

them

in

some

from

the

movable

fashion.

As

barrier

such,

the

operator
Court

and

adopts

Defendants’ proposed construction in part, adding the further
capability of “processing” to accord with the specification’s
disclosures.

(See,

e.g.,

‘275

patent

at

3:3-15

(“Such

an

identifier can serve to permit a receiving device to process as
appropriate
condition

the

status

information

can

condition
be

information.

received

and

Such

processed,

status
in

a

preferred embodiment, by a remote peripheral device (such as,
but not limited to, a display, an alarm, a lighting control
unit, and so forth).”) (emphases added).)

- 54 -

The Court notes that

claim

24

precisely

“identifier”
peripheral

mirrors

limitation
limitation.

this

disclosure,

immediately
If

prior

Defendants’

reciting

to

the

desired

the

remote

addition

to

Term 6 of “perform actions” is meant to impart a narrower sense
of “actions” – that is, to require only some internal function
besides mere receipt of a transmission – the Court believes that
“processes”

imparts

such

functionality

to

the

extent

contemplated by the specification.
B.

The ‘966 Patent

1. “battery charging station”
(Claims 1, 3, 4, 9-11, 15, 16)
The Court finds that no construction of “battery charging
station” is necessary beyond its plain and ordinary meaning.
The claims of the patent will not be read restrictively
unless the patentee has demonstrated a clear intention to limit
the

claim

exclusion

scope
or

using

“words

restriction.”

or

expressions

Liebel-Flarsheim

of

Co.

v.

manifest
Medrad,

Inc., 358 F.3d 898, 906 (Fed. Cir. 2004).

Disavowal applies

when

as

the

invention

patentee
requires,”

makes
“the

statements
present

such

invention

embodiments of the present invention are.”
F.3d at 1372 (internal quotations omitted).

“the
is,”

present
or

“all

Hill-Rom Servs., 755
It can also apply

when the patent repeatedly disparages an embodiment or if, in
describing a preferred embodiment, the specification disparages

- 55 -

alternatives to that feature.

See, e.g., Chicago Bd. Options

Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed.
Cir. 2012); Inpro II Licensing, SARL v. T-Mobile USA Inc., 450
F.3d 1350, 1354-55 (Fed. Cir. 2006).
Here, Defendants claim that several words or indicia in the
intrinsic record amount to a “manifest exclusion or restriction”
of

the

battery

charging

station

to

a

apart from the barrier movement operator.

component

separate

These are:

•

“The battery charging station 82 may be utilized to
recharge one removable rechargeable battery, or
multiple removable rechargeable batteries, depending
on the application. . . . Alternatively, the
removable rechargeable battery may be charged by the
head unit 24, which itself is powered by the power
supply 76.” (‘966 patent at 4:38-44.)

•

A statement describing Figure 3 that “circuitry 84
may control the flow of power . . . between the
battery charging station 82 and the head unit 24 of
the barrier movement operator.” (‘966 patent at 4:6165.)

•

A statement in the background of the invention
describing methods for recharging that are “either
built into the operator” or employ “an additional
power supply for battery charging,” which Defendants
interpret as a battery charging station.

•

Depictions in Figures 1 and 3 of the battery charging
station as a component separate from the head unit
and other operator components.

•

Exclusion of the battery charging station from the
“major
electrical systems”
of the
operator in
Figure 2.

- 56 -

and

•

Depiction in Figure 7 of the battery charging station
as a separate component when incorporated into the
kit of claim 19, which recites a “set of instructions
for the connecting of the circuitry and the battery
charging
station”
and
“may
include
assembly
instructions regarding how to connect the barrier
movement
operator
184,
the
battery
charging
station 186, and the circuitry 190.” (‘966 patent at
claim 19.)

•

Statements in the prosecution history discussing the
claimed battery charging station separately from the
head unit and the other components of the barrier
movement operator. (See, e.g., JA0300-02 (Nov. 4,
2008 Office Action Response at 7-9).)
The

Court

not

exclusion

“manifest

does

or

Defendants’ construction.

find

that

any

restriction”

of
that

these

indicate

would

a

support

With respect to the first statement

from the written description, Defendants omit the intervening
sentence disclosing that “[t]he battery charging station 82 may
receive

power

to

charge

directly

from

the

power

the

removable

supply

76,

rechargeable

which

electrical outlet.” (‘966 patent at 4:38-41.)
indicating

disclaimer

of

a

physically

may

battery

comprise

an

Thus, rather than

integrated

battery

charging station, the specification merely discloses that the
claims

equally

encapsulate

rechargeable battery:

two

means

of

recharging

the

through power supplied directly by the

electrical power supply, or through power supplied from the head
unit.

That the rechargeable battery may receive power from the

head unit through circuitry means only that the battery charging

- 57 -

station

is

wired

architecture

of

separately

the

head

from

unit,

the
that

not

power-transmitting
it

is

physically

separate from, external to, or unintegrated with the barrier
movement operator (i.e., located on a wall, as Defendants seem
to

suggest).

The

second

proffered

statement

from

the

specification is merely in accord:

the circuitry is such that

it

from

may

control

station,

power

whether

flow

the

to

power

and

originates

the

from

battery
the

charging

power

supply

directly or indirectly (i.e., from the head unit).
Defendants saddle the statement in the background section
of the ‘966 patent with more weight than it can bear.

While the

patent might disparage or expressly depart from certain features
of the prior art – i.e., the need for manual opening or closing
of

prior

backups

art
are

garage

doors

independent

in

items

a

power

capable

outage,
of

use

that
only

battery
for

the

operator, the expense and inconvenience of maintaining separate
batteries and charging cradles for power tools – it does not
disparage or expressly depart from prior art systems’ need for a
recharging method “built into the operator or as an additional
power supply for battery charging.”

The same is true for many

other statements in the background section that are consistent
with the invention. (See, e.g., ‘966 patent at 1:24-25 (“Barrier
movement

operators,

such

as

garage

- 58 -

door

openers,

are

often

powered via an electrical outlet.”); id. at 1:31-36 (“[Current]
barrier movement operators receive power from the backup battery
in the event of a power disruption from the electrical outlet
and

can

be

operated

as

long

as

the

backup

battery

sufficient amount of electrical power stored.”).)

has

a

Nothing in

the written description indicates that the invention seeks to
improve
(See,

upon

this

e.g.,

id.

invention’s

particular
at

6:47-7:25

improvements

Section II.B.)
“conserv[ing]

If

feature

anything,

available

over
the

space”

of

prior

art
the

(summarizing
the

prior

at

present

art);

specification’s

(id.

devices.

7:23-25)

supra

emphasis

on

suggests

an

implicit preference for a battery charging station physically
integrated with a movable barrier operator.
Next, the Court rejects Defendants’ attempt to read into
the claims illustrations in certain figures of the ‘966 patent;
they represent mere embodiments of the invention. Figures 3 and
7, for example, expressly state that they illustrate “at least
one

embodiment,”

not

requirements

of

embodiments of the present invention.”

the

invention

or

“all

Hill-Rom Servs., 755

F.3d at 1372 (internal quotation marks omitted).

The embodiment

illustrated in Figure 7, in which the battery charging station
is a separate part of claim 19’s kit, would not be rendered
inoperable

by

a

physically

integrated

- 59 -

charging

station.

As

Chamberlain argues, the “set of instructions” in the kit could
instruct

the

user

battery

charging

assembly

methods

to

connect

station
are

hardly

circuitry

the

to

the

head

required

for

and

unit.

attach

the

User-friendly

patentability

–

as

anyone who has forayed into home improvement can attest.
With

respect

relationship

between

to

Figure

major

2,

its

electrical

depiction

systems”

is

of

“the

limited

to

those systems “of a portion of the garage door operator shown in
FIG. 1.” (‘966 patent at 2:58-60.)

Figure 1, while depicting

the battery charging station on a wall separate from the head
unit, is not sufficient by itself to limit claims whose language
otherwise sweeps more broadly.
illustrate

the

full

scope

of

Drawings in a patent need not
the

invention.

See,

e.g.,

MBO

Labs., Inc. v. Boston, Dickinson & Co., 474 F.3d 1323, 1333
(Fed. Cir. 2007) (“[P]atent coverage is not necessarily limited
to inventions that look like the ones in the figures.”); Gart v.
Logitech, Inc., 254 F.3d 1334, 1342 (Fed. Cir. 2001) (“These
drawings are not meant to represent ‘the’ invention or to limit
the scope of coverage defined by the words used in the claims
themselves.”).

Absent is language explicitly limiting the claim

scope, which absence is felt all the more profoundly where the
patentee clearly knew how to claim a battery charging station
separate

from

the

movable

barrier

- 60 -

operator.

Indeed,

as

a

separate

limitation

appears,

the

in

patentee

several
claimed

of

the

claims

“electrically

where

powered

Term

1

equipment

other than and physically separate or separable from the barrier
movement operator.” (‘966 patent at 7:48-53.)

Use of a disputed

limitation elsewhere in the specification – let alone in the
claims themselves – “suggests that the patentees knew how to
restrict their claim coverage” such that “a different term that
implies a broader scope” was a conscious choice.
Stryker

Corp.,

483

F.3d

800,

807-08

(Fed.

Acumed LLC v.

Cir.

2007).

If

anything, the written description permits “a wide variety of
modifications. . . . [that] are to be viewed as being within the
ambit of the inventive concept.” (‘966 patent at 7:26-31.)
Finally,

the

challenged

statements

from

the

prosecution

history do not amount to disavowal of a battery charging station
integrated with the barrier movement operator.

The Applicant

distinguished the Wojciak reference, as relevant, on the grounds
that it “does not disclose a battery charging station.” (JA 0301
(Nov. 4, 2008 Office Action Response at 8) (“Wojciak fails to
teach or suggest that elements 70, 72, and 74 have anything to
do

with

a

battery.”).)

Wojciak

disclosed

station,

because

a
the

There

was

physically
reference

charging station at all:

no

discussion

separate
did

not

of

battery
disclose

whether
charging

a

battery

there was no need to argue at such a

- 61 -

granular

level

reference,

the

of

generality.

Applicant

With

argued

respect

that

it

to

did

the
not

Kirkland
teach

“a

rechargeable battery or a battery used to power an operator head
unit.”

(JA

0302

(id.

at

9).)

The

Applicant

distinguished

Kirkland by arguing that its inclusion of a battery internal to
a “receiver” made it incapable of powering the barrier movement
operator, not based on its lack of a battery charging station
“separate” from the operator. (See, id. (“[T]hat a battery in a
receiver is a self-contained battery power supply . . . and that
the

battery

battery

is

is
not

an

internal

battery

rechargeable.

.

Also,

.

.

suggest

because

the

that

battery

the
of

Kirkland is disposed in a receiver, it cannot provide power to a
barrier movement operator head unit.”).)
The Court finds that “battery charging station” should be
construed consistent with its plain and ordinary meaning.
is

no

specter

sufficiently

of

jury

demonstrated

term more narrowly.

confusion,
disavowal

and
to

Defendants

justify

There

have

not

construing

the

Nothing in the intrinsic evidence requires

that the claimed battery charging station be physically separate
from or unintegrated with the barrier movement operator.
2.

“barrier movement operator” (Claims 1, 6, 9, 15, 22)

In keeping with its construction of the equivalent term in
the ‘275 patent, the Court construes “barrier movement operator”

- 62 -

to

mean

“an

operator

that

controls

movement

of

the

movable

barrier and may contain additional functionality.”
As with the ‘275 patent, the ‘966 patent expressly defines
both the prior art’s and its own barrier movement operator as
capable of controlling movement of the barrier.
‘966

patent

at

1:19-25

(“In

general,

each

(See, e.g.,

[access

control]

system includes a primary barrier control mechanism. The latter
couples in an appropriate way to a corresponding barrier and
causes the barrier to move (typically between closed and opened
positions).

Barrier movement operators, such as garage door

openers, are often powered via an electrical outlet.”); id. at
claim

1

(“a

barrier

movement

operator

for

controlling

the

movement of a movable barrier”).)
Similarly, the ‘966 patent contemplates added functionality
of

the

barrier.

barrier
(See,

movement
e.g.,

operator

‘966

patent

beyond
at

merely

4:1-15

moving

the

(disclosing

the

ability of the radio frequency receiver within the head unit to
“receiv[e] coded radio frequency transmissions”); id. at 4:24-27
(“[T]he garage door operator 10 includes an obstacle detector 78
which optically or via an infrared pulsed beam detects when the
garage

door

opening

22

is

blocked

microcontroller 56 of the blockage.”).)

- 63 -

and

signals

the

While construing movable barrier operator in the singular
may not eradicate the specter of “misidentify[ing] the barrier
movement operator as a single component, e.g., just the head
unit”

(ECF

No.

151

(“Defs.’

Op.

Br.”)

at

26),

Defendants’

proposed construction has at least a comparable potential to
mislead the jury. (See, Section III.A.2 supra.)

And it is not

clear that adopting Defendants’ proposed construction would even
solve

the

“barrier

problem;
movement

indeed,
operator”

Defendants
as

“head

appear
unit”

to
when

have

read

construing

Term 1 of the ‘966 patent. (See, e.g., Pl.’s Op. Br. at 24.)

It

suffices to note that the balance of each independent claim at
issue conceptually separates barrier movement operator from head
unit. (See, e.g., claim 1 (“the barrier movement operator having
a head unit”); claim 9 (“a head unit of a barrier movement
operator”); claim 15 (reciting “a barrier movement operator” in
the preamble and “providing stored power from the at least one
rechargeable

battery

to

the

head

unit”

in

the

third

limitation).)
3.

“apparatus for receiving the at least
one rechargeable battery” (Claim 1)

The Court construes this term as a means-plus-function term
subject to 35 U.S.C. § 112, ¶ 6.

The function is “receiving the

at least one rechargeable battery.” The corresponding structure

- 64 -

is “battery receptacle 142” at col. 5, line 51 through col. 6,
line 3 and at Figure 5.
Means-plus-function claiming occurs when a claim term is
drafted in a manner that invokes 35 U.S.C. § 112, ¶ 6 (now 35
U.S.C. § 112(f)):
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of structure,
material, or acts in support thereof, and such claim
shall
be
construed
to
cover
the
corresponding
structure,
material,
or
acts
described
in
the
specification and equivalents thereof.
In making the assessment of whether the limitation in question
is a means-plus-function term, “the essential inquiry is not
merely the presence or absence of the word ‘means’ but whether
the words of the claim are understood by persons of ordinary
skill in the art to have a sufficiently definite meaning as the
name for structure.”

Williamson v. Citrix Online, LLC, 792 F.3d

1339, 1348 (Fed. Cir. 2015) (en banc) (citation omitted).

When

a claim term lacks the word “means,” § 112, ¶ 6 will apply if
the challenger demonstrates that the claim term fails to “recite
sufficiently
without

definite

reciting

function.”

Id.

at

structure”

sufficient
1349

or

else

structure

(internal

recites

for

quotation

“function

performing
marks

that

omitted).

Although it is no longer a “strong” presumption, there is a
rebuttable presumption that a limitation absent the word “means”

- 65 -

does not invoke § 112, ¶ 6.

See, Williamson, 792 F.3d at 1348-

49.
First, “apparatus” is a nonce word that can operate as a
substitute for “means” in the context of § 112, ¶ 6.

Such a

word, tantamount to other words such as “mechanism,” “element,”
“device,”

and

“module,”

reflects

nothing

more

than

a

verbal

construct and typically does not connote sufficiently definite
structure.
Bearing

See,

Co.,

v.

e.g.,
PHD,

Williamson,
Inc., 550

792

F.3d

F.3d

1090,

at

1350;

1096

Welker

(Fed.

Cir.

2008); Massachusetts Inst. of Tech. v. Abacus Software, 462 F.3d
1344, 1354 (Fed. Cir. 2006); Personalized Media Comm’ns, LLC v.
ITC, 161 F.3d 696, 704 (Fed. Cir. 1998); Mas-Hamilton Group v.
LaGard, Inc., 156 F.3d 1206, 1214-1215, (Fed. Cir. 1998).

The

word “apparatus” does not provide any indication of structure
“because

it

sets

forth

the

same

black

box

recitation

of

structure for providing the same specified function as if the
term ‘means’ had been used.”

Williamson, 792 F.3d at 1350.

is it preceded by any structural modifier.

Nor

See, e.g., Greenberg

v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir.
1996).
Second,

the

term

“apparatus”

language within the same limitation.

is

modified

by

functional

The suffix “for receiving

the at least one rechargeable battery” does not impart structure

- 66 -

into

the

term

“apparatus.”

Instead,

it

modifies

the

term

“apparatus” with purely functional language, linking it to a
specific

desired

(“Typically,

the

function.
claim

See,

limitation

e.g.,

will

MPEP

use

the

§ 2181.I.B
linking

word

‘for’ to associate ‘means’ or a generic placeholder with the
function.”);

cf.

York

Prod.,

Inc.

v.

Central

Tractor

Farm

&

Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996) (holding that a
claim limitation does not invoke § 112, ¶6 if it does not link
the generic term to a specific function).
Third, the term “apparatus” is not modified by sufficient
structure,

material,

function.

or

acts

for

achieving

the

specified

The surrounding claim language (“and to be powered by

the at least one rechargeable battery to perform a predetermined
function”)

merely

recites

intended

use

of

the

electrically

powered equipment once the receiving function is consummated.
It

does

not

achieving

the

recite

any

function

rechargeable battery.”

structure,
of

material,

“receiving

the

or
at

acts

for

least

one

Recitations of intended use “do[] not

impact or clarify the claim’s meaning.”

IP Innovation LLC v.

Lexmark Int’l, Inc., 424 F.Supp.2d 1078, 1084 (N.D. Ill. 2006)
(citing
1298,

Pitney

1305

Bowes,

(Fed.

Cir.

Inc.

v.

1999)

Hewlett-Packard
(explaining

that

Co.,

182

F.3d

statements

of

intended use “cannot be said to constitute or explain a claim

- 67 -

limitation”)); see also, In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997).
claim

language

instead

to

Indeed, the Court notes that this surrounding

is

the

not

even

antecedent

directed

to

“electrically

the

“apparatus,”

powered

but

equipment.”

Both the claim language and the specification make clear that
the

rechargeable

battery

does

not

power

the

“apparatus

for

receiving the at least one rechargeable battery,” but instead
the equipment, to perform a predetermined function.

(See, e.g.,

‘966 patent at 2:1-3 (“The electrically powered equipment is
adapted to be powered by the at least one rechargeable battery
to perform a predetermined function.”).)
Chamberlain

introduces

extrinsic

evidence

that

one

of

ordinary skill in the art would understand Term 3 to connote
sufficiently

definite

structure.

According

to

Chamberlain’s

expert, the prevalence of devices, such as garage door opener
remotes,

that

are

capable

of

being

powered

by

rechargeable

batteries means that a person of ordinary skill in the art at
the time would have been familiar with the claimed apparatus for
receiving at least one rechargeable battery.

This extrinsic

evidence is insufficient to avoid § 112, ¶6 treatment because it
merely

relates

to

recited function.
describe

how

the

familiarity

with

devices

that

perform

the

As in Williamson, this testimony “fails to
[apparatus],

by

- 68 -

its

interaction

with

other

components in the [claimed system], is understood as the name
for structure.”

Williamson, 792 F.3d at 1351 (emphasis added).

The fact that one of skill in the art, such as Dr. Rhyne, would
have known how to achieve “the recited functions cannot create
structure where none otherwise is disclosed.”

Function Media,

LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013).

In

the absence of other evidence that Term 3 denotes structure, the
Court finds that means-plus-function treatment is appropriate.
Because

the

Court

has

identified

the

claimed

function

associated with the “apparatus,” the question becomes whether
the

written

description

contains

sufficient

corresponds to this claimed function.

structure

that

See, e.g., Williamson,

792 F.3d at 1351-52 (citing Noah Sys., Inc. v. Inuit Inc., 675
F.3d 1302, 1311 (Fed. Cir. 2012)).
specification

qualifies

as

Structure disclosed in the

“corresponding

structure”

if

the

intrinsic evidence clearly links or associates that structure to
the

function

recited

in

the

claim.

Id.

(citation

omitted).

“[I]f a person of ordinary skill in the art would be unable to
recognize the structure in the specification and associate it
with

the

corresponding

function

in

the

claim,

a

means-plus-

function clause is indefinite.” Id. at 1352 (citations omitted).
The Court finds that the specification discloses sufficient
structure corresponding to the claimed function, and thus that

- 69 -

the limitation in question is not indefinite.
corresponding

to

the

claimed

“receiving”

The structure

function

is

battery

receptacle 142, as depicted in Figure 5 and described in col. 5,
line

51

through

col.

6,

line

3.

That

portion

of

the

specification discloses that “the electrically powered equipment
140 includes a battery receptacle 142 for receiving a removable
rechargeable

battery

144,

such

as

the

first

removable

rechargeable battery 104 or the second removable rechargeable
battery 108.” (‘966 patent at 5:55-60.)
that

the

user,

once

finished

with

the

It further provides
electrically

powered

equipment, “may remove the removable rechargeable battery 144
from

the

battery

structure

is

receptacle

clearly

(“apparatus

for

battery”).

As

linked

(Id.

at

with

the

the

at

least

depicted

in

Figure

receiving
further

142.”

5:66-6:3.)
claimed
one

5,

This

function

rechargeable

this

structure

actually performs the claimed function and is not, for example,
a bare statement that known techniques or methods can be used.
See, e.g., Biomedino, LLC v. Waters Tech. Corp., 490 F.3d 946,
952 (Fed. Cir. 2007); Cardiac Pacemakers, Inc. v. St. Jude Med.,
Inc., 296 F.3d 1106, 115-18 (Fed. Cir. 2002).
Defendants spill considerable ink reserving their right to
challenge

the

definiteness

of

this

means-plus-function

term.

Should Defendants wish to do so at summary judgment or via a

- 70 -

motion

to

reconsider,

they

may.

See,

e.g.,

ePlus,

Inc.

v.

Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012) (“To
begin with, indefiniteness is a question of law and in effect
part of claim construction.”); Saso Golf, Inc. v. Nike, Inc.,
No. 08 C 1110, 2013 WL 4804835, at *3 (N.D. Ill. Sept. 9, 2013)
(“In

the

context

of

claim

construction,

a

motion

for

reconsideration may be raised at any stage of the case.”).
4.

“removably connectable” (Claims 2, 9)

The Court construes this term to mean “configured to allow
a user to insert, plug in, or otherwise manually attach and
detach.”
The

primary

point

of

dispute

concerns

whether

the

term

“removably connectable” should be construed to allow for manual
attachment and detachment, as Chamberlain argues, or for “nonpermanent

electrical

connection,”

as

Defendants

maintain.

Because the words themselves and the claims do not read on this
dispute,

other

intrinsic

evidence

must

be

consulted.

Chamberlain points to several disclosures in the specification
that

support

“configured

to

its

construction

allow

a

user

manually attach and detach.”

to

of

“removably

insert,

connectable”

plug-in

or

as

otherwise

The background states that, in the

context of power tools (“electrically powered equipment” in the
parlance of the patent), “[u]sually the battery is a plug-in

- 71 -

device.” (‘966 patent at 1:44-46.)

In addition, “the user may

remove a removable rechargeable battery 144 from the battery
charging station 82 and insert it into the battery receptacle
142.” (Id. at 5:62-66.)
powered

equipment,

Once finished using the electrically

“the

user

may

remove

the

removable

rechargeable battery 144 from the battery receptacle 142 and
place

it

back

in

the

battery

recharged.” (Id. at 5:66-6:3.)

charging

station

82

to

be

Thus, against the backdrop of

power tools with plug-in batteries, the specification discloses
that a rechargeable battery, readily connectable and removable,
can be used with a barrier movement operator and electrically
powered equipment.
On the other hand, Defendants hone in on Figure 6 of the
‘966 patent, which depicts a decision tree.
tree

reads,

“Is

removable

rechargeable

Prompt 168 of the

battery

in

electrical

communication with an electrically powered equipment?” If the
answer is “Yes,” then the battery “provide[s] stored power to
the electrically powered equipment.”
then

the

very

rechargeable

first

battery

charging station?”

prompt
in

is

electrical

If the answer is “No,”

triggered:
communication

“Is

removable

with

battery

According to the written description, “[t]he

method illustrated in Figure 6 may be implemented by logic or
the processor within the circuitry 84.” (‘966 patent at 6:29-

- 72 -

31.)

Thus,

manually

Defendants

attached

foreclosed:

and

argue

that,

detached,

if

then

the

an

battery

could

be

embodiment

would

be

the circuitry 84 would be unable to execute the

logic at prompt 168 “because it would have no way of determining
the battery status after the battery had been disconnected.”
(Defs.’ Op Br. at 29.)
The

Court

does

not

believe

that

Figure

6

and

its

corresponding written description can fairly be read, consistent
with

the

written

description,

to

require

that

the

logic

or

processor within the circuitry implement every step through some
form of electrical communication with the battery.

Rather, the

fairer implication is that the logic or processor performs many
of the recited steps but “decides” prompt 168 based purely on
whether

the

removable

rechargeable

battery

is

communication with the battery charging station.

in

electrical

If not, then

processing restarts at prompt 160 and proceeds through prompt
166;

if

so,

operation

170

(“provide

stored

power

to

the

electrically powered equipment”) is performed by the battery.
(It is worth noting that, if Defendants’ reading of Figure 6
were credited, then the logic or circuitry within the processor
would presumably also control operation 170, “provid[ing] stored
power” to “electrically powered equipment physically separate or
separable from the barrier movement operator.”)

- 73 -

More

fundamentally,

Defendants’
construction,

reading

of

given

the

the

Court

Figure

6

cannot

supports

specification’s

conceive
their

how

preferred

disclosures.

If

the

argument is that the logic or processor within the circuitry
must be able to determine whether the battery is supplying power
to

the

electrically

disconnected

from

electrically

powered

the

powered

equipment

battery

when

charging

equipment

must

the

battery

station,

possess

then

some

is
the

special

architecture that facilitates a reporting relationship vis-à-vis
the logic or processor.

But nothing in the patent attributes to

the prior art or purports to claim such equipment.
electrically

powered

equipment

is

repeatedly

In fact, the

described

as

“a

saw, drill, light, garden tool, or any other equipment or tool
which is capable of being powered by a battery.” (‘966 patent at
5:52-55, 7:6-9.) (And Defendants’ construction cannot rely on
the

battery

itself

supplying

this

“smart”

functionality.

Without even connecting to the electrically powered equipment,
such

a

battery

could

nonetheless

indicate

to

the

logic

or

processor that it is not supplying power.)
Defendants

might

object

that

the

Court’s

construction

concedes some degree of sloppy drafting and renders superfluous
prompt 168 of Figure 5.

If the answer to prompt 160 is “No,”

then why would Figure 6 not simply proceed straight to operation

- 74 -

170?

While

not

an

illegitimate

gripe,

it

would

have

more

purchase if the claim language itself was sloppy or rested on
nothing

but

sloppy

written

description.

See,

e.g.,

3M

Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1335-36
(Fed.

Cir.

2013)

(Plager,

J.,

concurring)

(construing

an

ambiguous claim term against the drafter where the ambiguity was
“the

result

of

sloppy

drafting”

and

construction

required

a

“crystal ball”); Cannon Rubber Ltd. v. First Years, Inc., No. 03
C

4918,

2004

WL

(“[Plaintiff]

2095669,

explains

at

*5
the

that

(N.D.
word

Ill.

Sept.

‘valve’

17,

was

2004)

a

mere

‘vestigal’ remnant of a prior version of the claim that had an
entirely different meaning and was ‘inadvertently’ left in the
claim

during

prosecution.

[Plaintiff’s]

sloppy

.

.

.

claim

The

Court

drafting

will

not

reward

by

disregarding

their

construction

‘inadvertent’ claim language.”).
The

problem

for

sacrifices

other

description

at

summarizing

all

Defendants

(well-drafted)

the

altar

the

of

is

that

portions

Figure

patent’s

of

6.

“various

the

For

written

example,

embodiments,”

in
the

specification discloses that “[t]he rechargeable battery backup
may be manually removed from the battery charging station and
inserted into the electrically powered equipment.
electrically

powered

equipment

- 75 -

has

been

After the

utilized,

the

rechargeable battery backup may be removed from the electrically
powered

equipment

and

reinserted

into

the

battery

backup

station.” (‘966 patent at 6:47, 7:9-15 (emphases added).)

No

mention is made of any analogous electrical connection divorced
from a mechanical remove/insert connection.
more

cogent,

without

more,

is

not

a

Making Figure 6
compelling

enough

justification to depart from these disclosures that contemplate
only

manual/mechanical

attachment

and

detachment

of

the

rechargeable battery - both with respect to the battery charging
station and the electrically powered equipment.
permanent

electrical

connection”

might

While “non-

conceptually

encompass

manual removal and insertion of the battery, and therefore not
exclude

disclosed

embodiments,

it

generates

confusion

and

ambiguity where the specification is otherwise clear.
5. “A method of power flow between at least one
rechargeable battery, a barrier movement operator,
electrically powered equipment other than and
physically separate or separable from the
barrier movement operator” (Claim 15)
The Court finds that this term is readily understandable on
the basis of its plain meaning (although, to be consistent with
the Court’s earlier constructions, “a barrier movement operator”
should be construed as “an operator that controls movement of
the movable barrier and may contain additional functionality”).

- 76 -

First, Term 5 is the preamble to claim 15 but, because it
is limiting, it must be construed as if it were in the balance
of the claim.

As explored above with respect to Term 1 of the

‘275 patent, the preamble here gives life and meaning to the
limitations of claim 15.

What is more, subsequent limitations

depend on it for antecedent basis, including “the at least one
rechargeable battery” and “the electrically powered equipment.”
See, e.g., Zumbiel, 702 F.3d at 1385.
Defendants seek to construe “a method of” as “automatically
controlling” based on Figure 6 and the corresponding disclosure
that its method “may be implemented by logic or the processor
within

the

discussed

circuitry

above

84.”

with

This

respect

to

is

Term

improper
4,

because,

while

many

as

of

the

method’s steps are amenable to such implementation, nothing in
the specification supports the notion that provision of power
from

the

rechargeable

electrically

powered

processor.

battery

to

the

(physically

equipment

is

executed

by

separate)

the

logic

or

In any event, Defendants conceded when construing

Term 4 that Figure 6’s logic- or processor-based control was
just

one

embodiment

embodiments
battery

and

disclosing

of
a

electrically

the

invention

physical
powered

(“Defs.’ Reply Br.”) at 16.)

“along

interconnection
equipment.”

with

some

between

the

(ECF

No.

188

The specification is in accord,

- 77 -

classifying Figure 6 as “a method of utilizing the removable
rechargeable

battery

144

according

to

an

embodiment

invention.” (‘966 patent at 6:4-6 (emphasis added).)
at

the

very

least,

“automatically

a

construction

controlling”

of

Term

impermissibly

5

the

Therefore,

that

limits

of

the

requires
claim

one disclosed embodiment and reads out other embodiments.

to

See,

e.g., Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358-59
(Fed. Cir. 2016) (“We do not read the specification as clearly
and

unmistakably

requiring

that

voice

exclusively over voice channels.

signals

be

transmitted

And we will thus not import

any such limitation into the claims at issue.”).
The plain meanings of the words “method” and “power flow,”
on

the

other

referring

to

hand,
a

are

readily

understandable.

method

of

electrical

rechargeable

battery,

a

barrier

electrically

powered

equipment

power

flowing

movement

other

Term

operator,

than

and

no

prospect

of

jury

restriction of the claims:
processor-based

“automatic

confusion

and

no

is

between

a

and

physically

separate or separable from a barrier movement operator.
is

5

There

impermissible

this construction permits logic- or
control”

of

the

first

prompts

and

operations of the method as well as “manual” implementation of
the

final

step

rechargeable

of

battery

“providing
to

the

power

from

electrically

- 78 -

the

at

powered

least

one

equipment”

(i.e., the battery, once connected to the equipment, transmits
its

stored

charge

without

involvement

of

the

logic

or

processor.)
IV.

CONCLUSION

For the reasons stated herein, the Court construes the six
disputed terms of the ‘275 patent to mean the following:
1.

The

Court

construes

“A

movable

barrier

operator

comprising” to mean “An operator that controls movement of the
movable

barrier

and

may

contain

additional

functionality,

comprising.”
2.

The Court construes “a controller having a plurality

of potential operational status conditions defined, at least in
part,

by

a

plurality

of

operating

states”

to

mean

“a

programmable platform (such as, for example, a microprocessor, a
microcontroller,
like),

that

can

a

programmable
obtain,

logic

though

or

gate

array,

self-awareness

or

or

the

through

externally developed information (e.g., from sensors), two or
more potential operational status conditions defined, at least
in part, by two or more operational conditions being experienced
by the controller [programmable platform].”
3.

The Court construes “a status condition signal that:

corresponds to a present operational status condition defined,
at least in part, by two operating states from the plurality of

- 79 -

operating

states”

to

mean

“a

status

condition

signal

that:

corresponds to a present operational status condition defined,
at

least

in

part,

operational

by

conditions

[programmable
signal that:

at

least

being

platform].”

It

two

from

experienced
construes

the
by

“a

two

the

or

more

controller

status

condition

represents the present operational status defined,

at least in part, by the at least two operating states” to mean
“a

status

condition

signal

that:

represents

the

present

operational status condition defined, at least in part, by the
at least two operational conditions being experienced by the
controller [programmable platform].”
4.
that:

The

Court

construes

“a

status

condition

signal

. . . comprises an identifier that is at least relatively

unique to the movable barrier operator, such that the status
condition signal substantially uniquely identifies the movable
barrier operator” to mean “a status condition signal that: . . .
comprises an identifier that is sufficiently unique to allow
identification of the movable barrier operator [operator that
controls

movement

of

the

movable

barrier

and

may

contain

additional functionality] that sent the signal.”
5.

The

Court

construes

“detecting

at

least

one

predetermined condition as corresponds to a present operational
status defined, at least in part, by at least two operating

- 80 -

states, of the movable barrier operator” to mean “detecting at
least one predetermined condition as corresponds to a present
operational

status

of

the

movable

barrier

operator

[operator

that controls movement of the movable barrier and may contain
additional functionality], which status is defined, at least in
part, by at least two operational conditions being experienced
by the controller [programmable platform].”
6.
device

The
that

Court
is

construes

separate

“remote

from

the

peripheral”

movable

to

mean

barrier

“a

operator

[operator that controls movement of the movable barrier and may
contain

additional

functionality]

and

receives

and

processes

transmissions from the movable barrier operator [same].”
For the above reasons stated herein, the Court construes
the

five

disputed

terms

of

the

‘966

patent

to

mean

the

following:
1.

The

Court

finds

that

no

construction

of

“battery

charging station” is necessary beyond its plain and ordinary
meaning.
2.

The

Court

construes

“barrier

movement

operator”

to

mean “an operator that controls movement of the movable barrier
and may contain additional functionality.”
3.

The Court construes “apparatus for receiving the at

least one rechargeable battery” as a means-plus-function term

- 81 -

subject to 35 U.S.C. § 112, ¶ 6.

The function is “receiving the

at least one rechargeable battery.”

The corresponding structure

is “battery receptacle 142” at col. 5, line 51 through col. 6,
line 3 and at Figure 5, and its equivalents.
4.

The

Court

construes

“removably

connectable”

to

mean

“configured to allow a user to insert, plug in, or otherwise
manually attach and detach.”
5.
least

The Court construes “A method of power flow between at

one

rechargeable

electrically

powered

battery,

a

equipment

barrier

other

movement

than

and

operator,
physically

separate or separable from the barrier movement operator” in
line with its plain and ordinary meaning, with the caveat that
“a

barrier

movement

operator”

should

be

construed

as

“an

operator that controls movement of the movable barrier and may
contain additional functionality.”

IT IS SO ORDERED.

Harry D. Leinenweber, Judge
United States District Court

Dated: April 7, 2017

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