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

Filing 549

MEMORANDUM OPINION AND ORDER Signed by the Honorable Harry D. Leinenweber on 8/14/2017:Mailed notice(wp, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN 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 CV 6097

Judge Harry D. Leinenweber

Defendants.

MEMORANDUM OPINION AND ORDER
Plaintiff The Chamberlain Group, Inc. (“Chamberlain”) filed
this lawsuit alleging that certain models of Defendants’ Ryobibranded garage door openers (“GDOs”) infringe two patents it
holds on GDO technology.

On March 22, 2017, the Court granted

Defendants leave to amend their Answer with respect to one of
these patents - U.S. Patent No. 7,635,966 (“the ’966 patent”) –
and Defendants added associated factual allegations along with
an inequitable conduct affirmative defense and counterclaim, an
unclean hands affirmative defense, and monopoly counterclaims.
The ’966 patent is directed to a GDO system including a battery
charging station in electrical communication with at least one

rechargeable battery and with the head unit of a GDO to supply
power to the head unit in the event of power failure, along with
physically

separate

electrically

powered

equipment

capable

of

being powered by the at least one rechargeable battery.
Before the Court is Plaintiff The Chamberlain Group, Inc.’s
Motion for Summary Judgment on Defendants’ Inequitable Conduct
and Antitrust Claims [ECF No. 415].
herein, the Court grants the Motion.

For the reasons stated
As such, the testimony of

Defendants’ antitrust expert will prove irrelevant at trial, and
so

the

Court

grants

Plaintiff’s

Motion

to

Exclude

Dr.

Anne

Layne-Farrar’s Expert Opinions and Testimony [ECF No. 417].
I.

BACKGROUND

The Court assumes familiarity with its decision granting
Defendants leave to amend.

The following facts are undisputed

unless otherwise noted.
Mr. James J. Fitzgibbon (“Fitzgibbon”) is an engineer who
holds and at all relevant times held the position of “Director
of Intellectual Capital” at Chamberlain.
Resp.”) ¶¶ 1-3.)

(ECF No. 511-1 (“Pl.’s

His responsibilities include(d) maintaining

the company’s patent portfolio, reviewing office actions issued
by the United States Patent Office (“PTO”), and working with
inventors

and

attorneys

at

patent
the

counsel

Chicago-based

Flannery (“Fitch Even”).

during
law

(Id. ¶ 6.)
- 2 -

prosecution,

firm

Fitch

Even

including
Tabin

&

Instead of exploiting a

physical database of files or prior art, Fitzgibbon uses his
knowledge

and

determining

his

what

prosecution.

(Id.

“large
to

memory

send
¶

to

5.)

of

different

Fitch

During

Even

the

patents”
during

relevant

when

patent

2003-2010

timeframe, Fitzgibbon was the only person at Chamberlain who
received copies of the PTO’s office actions.

(Id. ¶ 4.)

As a

general practice, Fitzgibbon looks up any prior art references
cited therein.
Fitzgibbon

(Id. ¶ 9.)
is

a

listed

inventor

of

U.S.

Patent

No.

7,786,619 to Crusius (“the ’619 patent”), the original assignee
of which was Chamberlain.

(Pl.’s Resp. ¶ 7.)

The ’619 patent

is directed to a backup source of DC power for a movable barrier
operator (such as a GDO) in which a battery “in circuit at all
times with the barrier movement operator power supply” utilizes
“in

part,

the

AC/DC

conversion

capability

of

the

barrier

movement system” to power the operator in the event of an AC
outage.

(’619 patent at 1:35-40 & Abstract.)

According to

Fitzgibbon, Chamberlain made a product called the “EverCharge”
battery that embodied the ’619 patent invention, which Sears
also sold under its “Craftsman” brand as a “DieHard” battery
(“Craftsman”).

(Pl.’s Resp. ¶ 8.)

Fitzgibbon was also involved

in prosecuting Chamberlain’s U.S. Patent App. No. 2003/0063715
(“Peplinski”), which is directed to a GDO system that uses one
or more batteries (maintained by one or more battery chargers)
- 3 -

to provide GDO backup power in case of electrical power outage.
The system monitors backup batteries and other components and
initiates a stored service call to a dealer or other individual
when batteries or other components require replacement.

(See,

Peplinski at Abstract.)
From approximately 1990 until his retirement in 2007, Mr.
Kenneth

Samples

(“Samples”)

was

prosecution counsel at Fitch Even.

Chamberlain’s

outside

(Pl.’s Resp. ¶ 12.)

His

primary contact at Chamberlain was Fitzgibbon, and “from time to
time” the two discussed whether Chamberlain needed to conduct
prior

art

searches.

(Ibid.)

Samples

prepared

and

filed

Peplinski, the application leading to the ’619 patent, and the
application leading to the ’966 patent.

(Id. ¶¶ 13-15.)

On

April 7, 2006, the PTO issued an office action rejecting certain
claims

of

the

’619

patent

application

as

anticipated

by

Peplinski’s disclosure of a battery backup apparatus for use
with a barrier movement operator.
and

June

14,

2006,

Samples

(Id. ¶ 16.)

billed

time

to

Between April 19
Chamberlain

for

prosecution work on the ’966 patent on five occasions and for
prosecution work on the ’619 patent on three occasions.
18-19.)

(Id. ¶¶

Specifically, on April 26, 2006, Samples billed time to

the ’966 patent prosecution matter; one day later, he billed
time to the ’619 patent prosecution matter.

(Id. ¶ 20.)

On

October 10, 2006, Samples filed a response to the office action,
- 4 -

traversing the Examiner’s rejection of the ’619 patent claims by
distinguishing the technology taught by Peplinski.
Whereas

Samples

signed

the

communications

(Id. ¶ 17.)
with

the

PTO

regarding the ’619 patent, Mr. Nicholas Peters (“Peters”) was
the Fitch Even attorney in charge of submitting Chamberlain’s
responses
patent.

to

office

actions

during

prosecution

of

the

’966

Fitch Even billing records indicate that he performed

no prosecution work on the ’619 patent prior the ’966 patent’s
issuance on December 22, 2009, but as early as April 2009 he
received emails concerning prosecution of a Canadian application
related to the ’619 patent.

(Compare, Pl.’s SOF ¶ 6; with,

Defs.’

ECF

Resp.

¶

6;

Resp.”) ¶ 23.)

see

also,

No.

487

at

Ex.

1

(“Defs.’

Although he could not recall considering whether

any art other than that cited by the Examiner was material to
the ’966 patent application, Peters testified to his general
practice of submitting “references that I know are material to a
patent application.”

(Defs.’ Resp. ¶ 7.)

During prosecution of the ’966 patent, neither Fitzgibbon
nor

the

Fitch

Even

attorneys

disclosed

Craftsman, or Peplinski to the PTO.
not

file

an

information

disclose any prior art.)

the

’619

patent,

(Indeed, Chamberlain did

disclosure

statement

or

otherwise

As a rationale for withholding these

references, Fitzgibbon characterized the following sentences in
the

background

section

of

the
- 5 -

’966

patent

as

“[f]ully

describ[ing]

the

important

part

of

the

operation

of

the

product”:
Some current barrier movement operators can be powered
via a backup battery.
These 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 has
a sufficient amount of electrical power stored. These
battery backups are independent items which are
typically used only for operating the barrier movement
operator.
These systems require some method to
recharge the batteries either built into the operator
or as an additional power supply for battery charging.
(Pl.’s Resp. ¶ 11; ’966 patent at 1:31-42; see also, Defs.’
Resp.

¶¶

1-2,

17.)

Chamberlain’s

infringement

expert,

Dr.

Rhyne, admitted during his deposition that the disclosures in
Peplinski and the ’619 patent are more extensive than this terse
summary of prior art backup battery systems, but opined that “in
the ’966, the – the basic GDO is pretty much a given, and the
point of novelty is the point that you have a battery that’s
removably connectable to other electrical equipment.”

(Pl.’s

Resp. ¶¶ 26-27.)
At his deposition, Samples had no recollection of any of
the three references at issue, of any steps he may have taken to
comply with his duty of candor to the PTO, or of his intent in
2006 regarding prosecution of the ’966 patent.
21-25.)

(Pl.’s Resp. ¶¶

However, he testified that he never knowingly withheld

references from the PTO or did “nefarious things”; that, as a
general matter, he and Fitzgibbon “submitted what we should”;
- 6 -

and

that

he

had

no

knowledge

of

Fitzgibbon

or

Chamberlain

seeking to withhold references or saying “anything dishonest in
connection

with

the

prosecution

of

Chamberlain

patents.”

(Defs.’ Resp. ¶¶ 8-11.)
Finally,

the

factual

predicates

for

counterclaims warrant a brief mention.

Defendants’

monopoly

Chamberlain does not

practice and has never practiced the ’966 patent.

(Defs.’ Resp.

¶

claims

25.)

Perhaps

as

a

consequence,

Defendants’

under

Section 2 of the Sherman Act and under the Illinois Antitrust
Act charge Chamberlain with monopolizing the U.S. market for
residential

GDOs

by

asserting

litigation.

(Id. ¶¶ 27-28.)

the

’966

patent

in

this

According to Defendants’ antitrust

expert, Dr. Layne-Farrar, Defendants’ alleged antitrust injury
consists

solely

Chamberlain’s
million.

of

litigation

infringement

expenses

suit

–

incurred

costs

she

in

defending

pegs

at

$1.4

(Id. ¶ 48.)
II.

LEGAL STANDARD

Summary judgment is proper “if the movant shows that there
is no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.”
A

genuine

dispute

exists

if

“the

FED. R. CIV. P. 56(a).

evidence

is

such

that

a

reasonable jury could return a verdict for the nonmoving party.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

In

evaluating summary judgment motions, courts must view the facts
- 7 -

and draw reasonable inferences in the light most favorable to
the nonmovant.

Scott v. Harris, 550 U.S. 372, 378 (2007).

The

Court may not weigh conflicting evidence or make credibility
determinations.

Omnicare, Inc. v. UnitedHealth Group, Inc., 629

F.3d 697, 704 (7th Cir. 2011).
III. DISCUSSION
Defendants assert inequitable conduct and unclean hands as
affirmative

defenses

incorporating
inequitable

the

to

infringement

allegations

conduct

and

of

fully

monopoly

the

set

’966

forth

patent,

in

counterclaims.

The

their
Court’s

treatment of Chamberlain’s Motion thus proceeds in two parts –
first,

an

analysis

of

whether

Chamberlain

is

entitled

to

judgment as a matter of law on the inequitable conduct issues,
and then an examination of Defendants’ monopoly counterclaims
charging

Chamberlain

with

asserting

a

fraudulently

obtained

patent to anticompetitive effect.
A.
“Patent

Inequitable Conduct

applicants

have

a

duty

to

prosecute

patent

applications in the PTO with candor, good faith, and honesty.”
Advanced Magnetic Closures, Inc. v. Rome Fastener Corp., 607
F.3d 817, 829 (Fed. Cir. 2010) (internal quotation marks and
alteration omitted); see also, 37 C.F.R. § 1.56(a).
this

duty

material

–

facts,

“including
failure

to

affirmative
disclose
- 8 -

Breach of

misrepresentations

material

information,

of
or

submission

of

false

material

information

–

coupled

intent to deceive, constitutes inequitable conduct.”

with

an

Honeywell

Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 999
(Fed. Cir. 2007).
For a defendant to succeed in proving inequitable conduct,
it

must

adduce

clear

and

convincing

evidence

that

(1)

“the

patentee acted with the specific intent to deceive the PTO”; and
(2)

the

undisclosed

patentability.

reference(s)

were

but-for

material

to

Therasense, Inc. v. Becton, Dickinson & Co., 649

F.3d 1276, 1290 (Fed. Cir. 2011) (en banc).

To show that the

patentee acted with the specific intent to deceive the PTO, a
defendant must prove “that the applicant knew of the reference,
knew that it was material, and made a deliberate decision to
withhold it.”
precludes

a

Id. at 1290.
finding

of

A failure of proof on any element

inequitable

conduct,

plaintiff to judgment as a matter of law.

entitling

the

See, ibid. (“Proving

that the applicant knew of a reference, should have known of its
materiality, and decided not to submit it to the PTO does not
prove specific intent to deceive.”) (emphasis added).

To meet

the “clear and convincing” standard, specific intent to deceive
must be “the single most reasonable inference able to be drawn
from the evidence.”
R.J.

Reynolds

2008)).

If

Ibid. (quoting Star Scientific, Inc. v.

Tobacco
more

than

Co.,
one

537

F.3d

reasonable
- 9 -

1357,

1366

inference

(Fed.
is

Cir.

possible,

“intent to deceive cannot be found.”

Therasense, 649 F.3d at

1290-91.
Clearing
Defendants

away

have

some

residue,

adduced

no

the

evidence

Court

first

concerning

notes

the

that

role

of

ancillary Fitch Even figures mentioned in their amended answer,
such

as

Timothy

They also

Levstik,

appear

to

Steven

abandon

inequitable conduct.

Parmelee,

any

claim

and

that

Joshua

Peters

Smith.

committed

Indeed, in their brief opposing summary

judgment, Defendants expressly limit their arguments to “Messrs.
Fitzgibbon and Samples.”
such,

the

relevant

Court

part

and

(ECF No. 415 (“Defs.’ Br.”) at 4.)

grants

summary

restricts

the

judgment
ensuing

to

Chamberlain

analysis

to

the

As
in
key

players – Fitzgibbon and Samples.
It is unclear whether Chamberlain disputes the materiality
of

the

three

withheld

references,

sought leave to amend their answer.

as

it

did

when

Defendants

But no matter: The Court

need not engage in a detailed analysis of whether Peplinski, the
’619

patent,

and

Craftsman

were

but-for

material,

because

Defendants have failed to adduce evidence from which specific
intent to deceive is the single most reasonable inference.
1.

Knowledge of the References

With respect to the first Therasense prong, Defendants have
adduced evidence sufficient to show that, during the crucial
timeframe,

Fitzgibbon

knew

of

the

- 10 -

three

references

and

that

Samples knew of Peplinski and the ’619 patent.

As a named

inventor of the ’619 patent, Fitzgibbon was surely aware of that
reference and testified that he was aware of the later Craftsman
device

embodying

the

patent.

Through

his

position

on

Chamberlain’s Intellectual Capital Committee and involvement in
reviewing office actions, Fitzgibbon also seems to have known of
Peplinski

and

was

involved

in

its

prosecution.

Similarly,

Samples prosecuted the ’619 patent and Peplinski applications,
making

it

clear

references.
a

matter

of

and

convincing

that

he

knew

of

these

two

As such, Chamberlain is not entitled to judgment as
law

that

its

agents

were

unaware

of

the

three

withheld references.
2.

Knowledge of the References’ Materiality

Moving to the second prong, things become more problematic
for Defendants because they have not shown that Fitzgibbon or
Samples knew the references were material to the ’966 patent.
Instead,

they

adduce

evidence

only

that,

by

virtue

of

Fitzgibbon’s role as an inventor and in prosecution as well as
the proximity of Samples’s ’619 patent prosecution work to his
’966 patent prosecution work, the two men knew of the references
and were likely familiar with their disclosures.

The case law

mandates proof of something more than knowledge of and working
familiarity

with

the

subject

references

for

a

defendant

survive summary judgment on the second Therasense prong.
- 11 -

to
For

example, none of the deposition testimony Defendants obtained
suggests

either

individual’s

actual

recognition

importance of the undisclosed information.

of

the

Cf., Am. Calcar,

Inc. v. Am. Honda Motor Co., 768 F.3d 1185, 1191 (Fed. Cir.
2014) (finding that an inventor who helped develop the patent
application
himself

the

acknowledged

possessed”).
that

“knew

information
the

was

importance

material

of

the

because

he

information

he

What is more, Defendants adduce nothing to suggest

Fitzgibbon

or

Samples

learned

of

key

invention from the undisclosed references.

features

of

the

See, Aventis Pharma

S.A. v. Hospira, Inc., 675 F.3d 1324, 1335 (Fed. Cir. 2012).
Failing

circumstantial

evidence

suggesting

knowledge

of

materiality, might the references nevertheless so clearly and
convincingly bear on the patentabilty of the ’966 patent that
mere familiarity with them supports an inference of knowledge of
their materiality? It is clear enough that Peplinski, the ’619
patent, and Craftsman disclose GDOs with backup batteries that
can be charged by the GDO power supply and used to power the GDO
in the event of power failure.

As an initial matter, the Court

is not willing to countenance Defendants’ assertion that all
“prior art related to ‘movable barrier operator’ batteries and
battery

charging

apparatus

would

patentability of the ’966 patent.”

have

been

material

(Defs.’ Br. at 9.)

to

the

Rather,

there must be some nexus between the disclosures of the prior
- 12 -

art

and

the

technology

(claimed)

-

use

of

point

such

a

of

novelty

GDO

battery

separate electrically powered equipment.
nexus,

Defendants

point

to

an

of

the

backup

patented

with

other

With regard to such a

implicit

teaching

of

the

references and a structural feature of one of the ’966 patent’s
independent claims, but it is difficult to conceive how either
makes an inference of contemporaneous knowledge tenable.
First,

Defendants

contend

that

the

GDO-only

backup

batteries of the three undisclosed references could be removed
and inserted into a second, separate GDO, thus rendering the
references

material

electrically

to

powered

the

’966

equipment

patent’s

other

separate or separable from” the GDO.

than

claimed
and

“other

physically

(’966 patent at 7:48-50.)

Although they furnish no evidence that Fitzgibbon or Samples
subscribed

to

this

contorted

reading,

Defendants

offer

the

following testimony of Dr. Rhyne in support of this theory:
Q.
Do you agree that a garage door opener qualifies
as electrically powered equipment?
A.
I can’t – yes, I – that’s simply put, yes, that’s
electrically powered equipment.
(Rhyne Dep. Tr. at 153:24-154:2.)

To the extent this testimony

– given in a vacuum without regard to the full wording of the
limitation

–

supports

Defendants’

argument

at

all,

it

comes

nowhere close to establishing what they need to overcome their
lack of evidence suggesting Fitzgibbon’s or Samples’s knowledge
- 13 -

of

materiality:

that

the

technology

disclosed

in

the

three

references at issue was so clearly and convincingly material to
a fair reading of the ’966 patent that familiarity with the
references alone should suffice under Therasense.

In this vein,

Chamberlain notes that Defendants’ first expert conceded that
Peplinski

does

not

disclose

“electrically

powered

equipment

other than and physically separate or separable from” the GDO;
it

was

only

posited

upon

this

Moreover,

retaining

second-GDO

the

Court

a

second

reading

wonders

what

expert

that

Defendants

the

claim

language.

of

benefit

would

inhere

in

removing the ’619 patent’s, Peplinski’s, or Craftsman’s backup
battery from one GDO and using it in a second, separate GDO.
Each compatible

other

GDO

would

already

battery with coextensive capabilities.

have

its

own

backup

Perhaps, in the event

that a power outage affecting GDO-2 follows on the heels of a
malfunction in GDO-2’s charging capabilities, the backup battery
of GDO-1 could be removed and used to power GDO-2.

But this

far-fetched

charging

scenario

presupposes

both

misfiring

technology – a situation on which the ’966 patent specification
is mute - and a contiguous power outage that only selectively
affects a user’s multiple GDOs.

And, as the Patent Trial and

Appeal Board indicated in declining to institute inter partes
review of the ’966 patent, “removing the back-up battery from
the first garage door opener to power the second garage door
- 14 -

opener

likewise

would

defeat

the

principal

purpose

of

Peplinski’s system for the first garage door opener and cause
unwanted service calls from the first garage door opener.”

One

World Technologies, Inc. d/b/a Techtronic Indus. Power Equip. v.
The

Chamberlain

Group,

Inc.,

(P.T.A.B. Mar. 24, 2017).

IPR2016-01846,

Paper

8,

at

15

The mere potential for using the

undisclosed references’ backup battery with a second, separate
GDO does not clearly and convincingly establish an inference of
contemporaneous

knowledge

of

materiality

vis-à-vis

the

“electrically powered equipment” limitation pervading the ’966
patent claims.
The
inference

second
of

argument

knowledge

Defendants

of

marshal

materiality

to

invokes

support

the

an

technical

structure of claim 9, which does not recite the “electrically
powered equipment” construction as an express limitation (but
nonetheless

includes

rechargeable

battery

limitation).

it

as

a
in

claimed

functional
the

condition

battery

charging

of

the

station

Absent that limitation, claim 9 only requires a

battery charging apparatus comprising a battery charging station
in

communication

unit,

and

charging

with

circuitry
station

–

a

rechargeable

electrically
features

references indisputably teach.

battery

connected

that

the

and
to

three

a
the

GDO

head

battery

undisclosed

The Court feels that this facet

of claim 9 bears more on the materiality of the references than
- 15 -

it

does

Fitzgibbon

on

the

or

separate

Samples

and

had

distinct

knowledge

inquiry

of

their

of

whether

materiality.

Indeed, it seems a stretch to prioritize this distinction in the
language of one claim over other evidence suggesting with at
least equal force that the two men would have regarded as the
inflection

point

of

patentability

the

GDO

backup

capability to power separate electrical equipment.

battery’s

For example,

the first words of the specification disclose that the invention
relates “particularly to a rechargeable battery backup for use
with both a barrier movement operator and electrically powered
equipment

such

as

(emphasis added).)
that

the

point

of

a

power

tool.”

(’966

patent

at

1:8-11

Recall also Dr. Rhyne’s similar proposal
novelty

of

the

’966

patent

is

a

battery

removably connectable to other electrical equipment.

Neither

alone nor in tandem with Defendants’ first argument does claim
9’s technical structure furnish clear and convincing evidence of
Fitzgibbon’s or Samples’s knowledge of materiality.
3.

Deliberate Decision to Withhold the References

But even if Defendants sufficiently establish the first two
Therasense
concerning

prongs,
a

there

deliberate

references from the PTO.

is

a

profound

decision

to

dearth
withhold

of

evidence

the

three

To the extent Defendants fault Samples

for forgetfulness, this is legally insufficient: Courts cannot
rely on a witness’s “inability to offer a good faith explanation
- 16 -

as a basis to infer a deliberate decision to withhold.”

1st

Media, LLC v. Elec. Arts, Inc., 694 F.3d 1367, 1375-76 (Fed.
Cir.

2012).

Casting

aspersions

on

Fitzgibbon’s

failure

to

maintain paper files does not advance the ball either.

Allowing

experience

and

best

equivocal

factor

memory
in

to

the

drive

disclosure

is

at

an

deliberate-decision-to-withhold-known-

material-information calculus.

In any event, Defendants fail to

cite any case law for the proposition that a patent applicant
must run detailed prior art searches or maintain physical files
prior to responding to office actions.
the

fact

explanation

that

Fitzgibbon

unless

the

“need

accused

not

What is more, despite
offer

infringer

any

first

good
carried

faith
his

burden to prove a threshold level of intent to deceive by clear
and convincing evidence,” Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1368 (Fed. Cir. 2008), Fitzgibbon
testified

concerning

his

subjective

good

faith

that

the

background section of the ’966 patent discloses the relevant
teachings of the prior art.
Defendants

make

much

of

the

fact

that

the

prior

art

contains richer and more extensive treatment of certain claimed
limitations than does the background section’s terse summary.
In particular, they urge that the summary’s silence on the prior
art’s disclosure of a charging circuit, removable battery, and
use

with

other

electrically

powered

- 17 -

equipment

inculpates

Chamberlain.

(See, Defs.’ Br. at 14.)

Yet there is at least a

colorable case for inherent disclosure of a prior art charging
circuit and removable battery, respectively, given the summary’s
acknowledgment

that

existing

“systems

require

some

method

to

recharge the batteries either built into the operator or as an
additional power supply for battery charging.”
1:39-41 (emphasis added).)

(’966 patent at

And recall also the absence of any

compelling reason to think Fitzgibbon or Samples knew that the
three references disclose the “electrically powered equipment”
limitation.

The Court is therefore unconvinced that the two men

were “intentionally selective” in their disclosures or that the
detail

otherwise

material

to

absent

from

’966

Am.

patentability.

the

patent

Calcar,

768

background
F.3d

at

was
1190

(“Partial disclosure of material information about the prior art
to the PTO cannot absolve a patentee of intent if the disclosure
is

intentionally

selective.”)

(citations

omitted).

There

is

nothing in the record to elevate the inference that Fitzgibbon
or Samples intentionally limited the background discussion at
the expense of material information above any other inference of
permissible conduct.

Cf., Apotex, Inc. v. UCB, Inc., 763 F.3d

1354, 1362 (Fed. Cir. 2014) (finding an inference of intent to
deceive appropriate where the inventor testified that he “never
performed the experiments described in the patent, and yet he
drafted the examples in the specification entirely in past-tense
- 18 -

language”

and

directed

misrepresentations”).
“gross

negligence

standard,”

which

or

counsel

Such

permissible

negligence

“does

to

not

under

satisfy

“bolster

conduct
a

includes

‘should

the

intent

those

have

even

known’

requirement.”

Therasense, 649 F.3d at 1290; see also, 1st Media, 694 F.3d at
1374-75 (holding that it is “not enough to argue carelessness,
lack

of

attention,

poor

docketing

or

cross-referencing,

or

anything else that might be considered negligent or even grossly
negligent”).
Defendants

will

undoubtedly

protest

that

the

Court

in

granting them leave to assert inequitable conduct rejected the
sufficiency of the disclosure in the ’966 patent’s background
summary.

But the Court’s holding at that stage was uniquely

indebted to the case’s procedural posture – an Exergen appraisal
of Defendants’ proposed allegations against Chamberlain’s Rule
12(b)(6) futility challenge.

See, The Chamberlain Group, Inc.

v. Techtronic Indus. Co., Ltd., No. 16 C 6097, 2017 WL 1101092,
at *9 (N.D. Ill. Mar. 22, 2017) (noting that the cases cited by
Chamberlain were “inapposite because they all concern[ed] proof
of

inequitable

conduct

Whereas deceptive

after

intent

at

the
the

presentation
pleading

stage

of

evidence”).

need

only

be

plausible, proving it on the merits requires that it be the
“single most reasonable” inference.

- 19 -

Id. at *10 (citing Itex,

Inc. v. Westex, Inc., 2010 WL 2901793, at *2 (N.D. Ill. July 21,
2010)).
Similarly,

while

the

Court

at

that

stage

drew

the

“reasonable inference that non-disclosure of the references was
accompanied by deceptive intent” based on the fact that “no one
from Chamberlain or Fitch Even filed an information disclosure
statement

or

submitted

any

prior

art

whatsoever

during

prosecution,” it did so based on a case from a sister court
decided on a motion to dismiss.

See, id. at *13 (citing Weber-

Stephen Prods. LLC v. Sears Holding Corp., No. 13 C 1686, 2014
WL 656753, at *5 (N.D. Ill. Feb. 20, 2014)).

In fact, when it

comes to deciding inequitable conduct on the merits, wholesale
failure to bring prior art to the PTO’s attention appears to
forestall the sort of “affirmative conduct by the applicants
showing not only specific awareness of materiality, but careful
and selective manipulation of where, when, and how much of the
most material information to disclose.”

1st Media, 694 F.3d at

1375 (citing Aventis, 675 F.3d at 1335-36).
In any event, the Court need not even reach the argument
concerning the ’966 patent’s background section here, because
Chamberlain has offered it as intent evidence concerning good
faith and “the accused infringer has [not] first carried [its]
burden to prove a threshold level of intent to deceive by clear
and convincing evidence.”

Star Scientific, 537 F.3d at 1368.
- 20 -

But it is worth mentioning that even a more granular review does
not convince the Court that its prior analysis matters here.
For example, in crediting Defendants’ allegations of materiality
over Chamberlain’s assertion of cumulativeness, the Court noted
that

the

allegedly

withheld

references

contained

disclosures

that appeared to contradict those in the ’966 patent’s summary.
But it could only find one such disclosure: a mention in U.S.
Patent

No.

6,923,676

(“the

’676

patent”)

of

using

its

rechargeable backup battery to power “any number of electronic
devices,”

which

seemed

to

fly

in

the

face

of

the

summary’s

statement that prior art “battery backups are independent items
which are typically used only for operating the barrier movement
operator.”

Ibid.

However, the Court went on to deny leave to

amend with respect to the ’676 patent because of the lack of any
allegations

plausibly

suggesting

withheld with deceptive intent.

that

it

was

deliberately

See, id. at *12 (“The Court

finds, however, that Defendants’ intent allegations with respect
to the ’676 patent are too weak to meet Exergen’s demands.”).
As

such,

any

contradiction

background

summary

references

at

must

issue.

now

of

the

’966

flow

from

Defendants

have

patent’s

the

three

pointed

to

prior

art

undisclosed
no

similar

contradiction in Peplinski, Craftsman, or the ’619 patent, and
the Court could find none on its own.

- 21 -

To Defendants’ final salvo that credibility determinations
preclude summary judgment, the Court ripostes that this case
presents no need to resolve conflicting testimony.

Instead, the

testimony and evidence adduced is basically in accord; it simply
falls short of yielding a single, most reasonable inference of
specific intent to deceive.

See, e.g., 1st Media, 694 F.3d at

1376 (“That Lewis’s and Sawyer’s testimony was not credited by
the

district

Appellees’
(“Although

court

does

proof.”);
the

court

not

overcome

the

cf.,

Am.

Calcar,

found

[the

inventor’s]

shortcomings

651

F.3d

at

testimony

in
1335

to

be

lacking in credibility, and we give considerable deference to
that finding, . . . that alone is insufficient to find specific
intent to deceive under the knowing and deliberate standard.”);
Intellect Wireless, Inc. v. HTC Corp., 732 F.3d 1339, 1344 (Fed.
Cir. 2013) (“Submission of an affidavit containing fabricated
examples of actual reduction to practice in order to overcome a
prior

art

deceive.
decided

reference
. . . The

not

to

raises
district

credit

Mr.

a

strong

court

inference

also

did

Henderson’s

not

of

intent

err

explanations

when
for

to
it
the

repeated submission of false affidavits.”).
*

*

*

In sum, Defendants rest their inequitable conduct case on
the inventor status and general role of Fitzgibbon along with
Samples’s concurrent prosecution of the ’619 and ’966 patents;
- 22 -

Fitzgibbon’s

failure

to

forgetfulness

of

interpretation

bringing

“electrically

the

maintain
now

powered

a

paper

files;

70-year-old
second

Samples;

GDO

within

other

equipment

the

than

general
a

the

claim

ambit

and

of

physically

separate from the GDO” that there is little reason to think
either

Fitzgibbon

or

Samples

contemplated;

a

technical

and

fastidious reading of claim 9 that speaks more to materiality
than intent; and Chamberlain’s failure to direct the Examiner to
any prior art during prosecution of the ’966 patent.
these

features

of

the

actors

and

the

patent’s

However,

prosecution

suffice only to show “[k]knowledge of the reference[s]” coupled
with,

at

little

best,

about

“knowledge
a

of

deliberate

materiality”;
decision

to

alone,

these

say

withhold

and

are

“insufficient after Therasense to show an intent to deceive.”
1st Media, 694 F.3d at 1374-75.

There is simply no basis on

which

the

a

jury

could

find

that

single

most

reasonable

inference from the undisputed facts surrounding nondisclosure of
the ’619 patent, Craftsman, and Peplinski – even viewed in the
light most favorable to Defendants – is an intent to deceive the
PTO.

The

Court

Defendants’
counterclaim.

grants

inequitable

summary
conduct

judgment

to

affirmative

Chamberlain

on

defense

and

Consequently, Defendants’ affirmative defense of

unclean hands meets its end here as well.

See, e.g., Consol.

Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804, 810 (Fed.
- 23 -

Cir. 1990); Collaboration Props., Inc. v. Tandberg ASA, No. 05 C
1940, 2007 WL 205065, at *7 (N.D. Ill. Jan. 25, 2007) (noting
that

an

accused

infringer’s

unclean

hands

defense

based

on

alleged acts of inequitable conduct rises and falls based on
those allegations).
As such, the Court grants summary judgment to Chamberlain
on Defendants’ inequitable conduct and unclean hands affirmative
defenses as well as their inequitable conduct counterclaim.
B.
Defendants’

monopoly

Monopoly
claims

against

Chamberlain

invoke

Section 2 of the Sherman Act and the Illinois Antitrust Act.
Both Defendants’ counterclaims rest on the assertion that “[b]y
withholding material information that it was aware of from the
PTO, CGI fraudulently obtained the ’966 Patent.

With knowledge

of that fraud, CGI then unlawfully attempted to enforce the ’966
Patent against TTI” with the “intention of restraining trade and
commerce

and

restricting

competition

for

the

(ECF No. 365 (“Am. Ans.”) at Ctrclm. ¶ 124.)

sale

of

GDOs.”

(Defendants’ state

antitrust counterclaim either substantially tracks the federal
paradigm, see, e.g., Laughlin v. Evanston Hosp., 550 N.E.2d 986,
990 (Ill. 1990), or is preempted.

See, e.g., Farag v. Health

Care Service Corp., No. 17 C 2547, 2017 WL 2868999, at *3 (N.D.
Ill.

July

5,

2017)

(Leinenweber,

J.);

In

re

Ciprofloxacin

Hydrochloride Antitrust Litig., 363 F.Supp.2d 514, 543 (E.D.N.Y.
- 24 -

2005)

(finding

that

“federal

patent

law

preempts

any

state

antitrust cause of action premised on” a “showing of misconduct
before the PTO”); see also, Semiconductor Energy Lab. Co., Ltd.
v. Samsung Elec. Co., Ltd., 204 F.3d 1368, 1382 (Fed. Cir. 2000)
(finding preemption where “the wrong alleged and for which state
tort

damages

[were]

sought

[was]

no

more

than

bad

faith

misconduct before the PTO”).)
Defendants bring “a species of monopolization claim that
targets the use of a fraudulently obtained patent to obtain or
maintain a monopoly.”

Walker Process Equip., Inc. v. Food Mach.

& Chem. Corp., 382 U.S. 172, 176 (1965).
dispute

that

their

causes of action.

monopoly

counterclaims

Defendants do not
are

Walker

Process

(See, e.g., Defs.’ Br. at 16 (“Since TTI’s

claims for inequitable conduct should survive summary judgment,
so too should TTI’s Walker Process counterclaims pursuant to
Section 2 of the Sherman act and the Illinois Antitrust Act.”).)
District

courts

must

apply

Federal

Circuit

law

to

the

“fraudulently obtained” element of a Walker Process claim and
their own regional Circuit law to the monopolization element.
See, Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059,
1068 (Fed. Cir. 1998).
Here

is

a

rare

disposed of quickly.
conduct

cannot

statement:

The

antitrust

claims

can

be

A party that fails to prove inequitable

establish

a

Walker
- 25 -

Process

violation

that

is

premised on such conduct.

See, e.g., FMC Corp. v. Manitowoc

Co., 835 F.2d 1411, 1417 (Fed. Cir. 1987) (“FMC’s failure to
establish inequitable conduct precludes a determination that it
had borne its greater burden of establishing the fraud required
to support its Walker Process claim.”); accord, Avery Dennison
Corp. v. Continental Datalabel, Inc., No. 10 C 2744, 2010 WL
4932666, at *4 (N.D. Ill. Nov. 30, 2010).
is

entitled

conduct

to

summary

counterclaim,

judgment

so

too

is

on

Because Chamberlain

Defendants’

summary

inequitable

judgment

proper

on

Defendants’ Walker Process and state monopoly counterclaims.
As such, the Court grants summary judgment to Chamberlain
on Defendants’ Walker Process/monopoly counterclaims.
C.
Defendants’

Motion to Exclude

antitrust

expert,

Dr.

Layne-Farrar,

offers

testimony only on the antitrust implications of the ’966 patent.
In light of the ejection of Defendants’ antitrust counterclaims
from this case, her testimony will neither meet the threshold
level of relevance nor “assist the trier of fact to understand
the evidence or determine a fact in issue.”

FED. R. EVID. 702;

Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 591 (1993).
As such, Plaintiff’s Daubert Motion is granted.
III. CONCLUSION
For the reasons stated herein, the Court grants Plaintiff’s
Motion for Partial Summary Judgment [ECF No. 415].
- 26 -

As a result,

the

testimony

of

Defendants’

antitrust

expert

is

no

longer

relevant, and so the Court grants Plaintiff’s Motion to Exclude
Dr. Anne Layne-Farrar’s Expert Opinions and Testimony [ECF No.
417].

IT IS SO ORDERED.

Harry D. Leinenweber, Judge
United States District Court
Dated: August 14, 2017

- 27 -