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

Filing 577

MOTION by Counter Defendants The Chamberlain Group, Inc., The Chamberlain Group, Inc., Plaintiff The Chamberlain Group, Inc. for judgment As A Matter of Law (Attachments: # 1 Exhibit A)(Vidal, Katherine)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
THE CHAMBERLAIN GROUP, INC.,
Civil Action No.: 1:16-cv-06097
Plaintiff,
Judge Harry D. Leinenweber

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.

Jury Trial Demanded
PUBLIC, REDACTED

Defendants.

PLAINTIFF’S MOTION FOR JUDGMENT AS A MATTER OF LAW
Plaintiff, The Chamberlain Group, Inc., moves for judgment as a matter of law (“JMOL”)
under Federal Rule of Civil Procedure 50. JMOL is appropriate where “a reasonable jury would
not have a legally sufficient evidentiary basis to find for the party on that issue.” Fed. R. Civ. P.
50(a)(1). Here, when the evidence is viewed in the light most favorable to OWT Industries, Inc.;
One World Technologies, Inc.; Ryobi Technologies, Inc.; Techtronic Industries Co., Ltd.; and
Techtronic Industries North America, Inc. (collectively, “TTI”), and TTI is given the benefit of
all reasonable inferences, there is insufficient evidence of record to support a jury verdict in
favor of TTI on the issue of infringement.
I.

Direct Infringement
A reasonable jury would not have a legally sufficient evidentiary basis to find that TTI

did not infringe claims 1, 5, and 15 of the ’275 patent and claims 14, 17, and 18 of the ’966
patent.

1

A.

The ’275 Patent

There is no dispute that TTI offered, sold, used, and imported into the United States the
Ryobi GD200, and that TTI offers, sells, uses, and imports the Ryobi GD200A. Tr. at 266:7-17,
387:17-21 (Rhyne); Tr. at 519:14-24, 545:22-546:5, 570:1-3 (Farrah); Tr. at 611:25-612:2,
644:7-645:25 (Huggins); Tr. at 438:18-22, 450:16-24, 493:20-494:19 (Hansen); Tr. at 183:17-21,
190:25-191:2 (Sorice); Ely Dep. Tr. at 46:9-14; 86:14-87:16 (played via video); Tr. at 1058:1520, 1059:1-6, 1060:1-8 (McNabb); see also Tr. (8/21/17) at 8:6 (“The defendants may
collectively be referred to as TTI.”).
The Ryobi GD200 and Ryobi GD200A meet all of the limitations of claim 1, 5, and 15,
as illustrated below. The parties’ dispute centers on a single issue—whether the GD200A, which
transmits status information as defined by TTI specifications (PTX-239), “transmits a status
condition signal that corresponds to a present operational status condition defined, at least in
part, by at least two operating states from the plurality of operating states”—a purely legal issue
of claim construction that is not to be left to the jury under O2 Micro Int’l Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008).
Element-by-element analysis of Claim 1:
Preamble: A movable barrier operator 
comprising
Element 1: a controller having a 
plurality of potential operational status
conditions defined, at least in part, by a
plurality of operating states;


Element 2: movable barrier interface 
that is operably coupled to the
controller

Images from Ryobi GDO Manual showing door
in closed and open positions. PTX-625 at 93;
Tr. 267:24-268:8 (Rhyne).
TTI’s disclosures to the FCC showed a
microcontroller. PTX-218; see also Tr. 271:9272:1 (Rhyne).
TTI’s GDO design specification shows 2+
operational status conditions—door state and
light state—defined by 2+ operating states.
PTX-239; see also Tr. 275:4-276:19; 277:7-17
(Rhyne).
Ryobi GDO Manual shows a movable barrier
interface (“MBI”). PTX-625 at 9; see also Tr.
277:18-278:7 (Rhyne).

2



TTI’s disclosures to the FCC show the MBI
coupled to the controller. PTX-218; Tr. 278:816 (Rhyne).

Element 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:


Ryobi GDO Manual shows that the GD200 and
GD200A has a WiFi antenna. PTX-625 at 10.
TTI’s disclosures to the FCC showed that the
Ryobi GDO has a controller labeled “WiFi
Mode.” PTX-218.
GDO design specification showed WiFi
Board/Module. PTX-239 at 7.
See also Tr. 278:17-281:10, 283:12-284:285:14
(Rhyne).
Claims require sending signal corresponding to
“a” present operational status condition, which
is defined by at least two states – and therefore
only requires sending a single status condition at
a time. PTX-0239 at 38; Tr. 287:24-289:16
(Rhyne).
Dr. Rhyne showed using wireshark that the
Ryobi GDO transmits a unique identifier,
specifically, MAC addresses. PTX-626; 295:7296:3 (Rhyne).


Element 4: corresponds to a present 
operational status condition defined, at
least in part, by at least two operating
states from the plurality of operating
states;
Element 5: 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.
Element-by-element analysis of Claim 5:

Claim 5: The movable barrier operator of claim 1
wherein the plurality of operating states includes
at least one of:
 moving a movable barrier in a first direction;
 moving the movable barrier in a second
direction;
 a lighting status change;
 a vacation mode status change;

TTI’s GD200 and GD200 specification
includes a light state, door state, and
operation mode.
PTX-0239 at 38;
296:17-297:4.

Element-by-element analysis of Claim 15 (which depends on claim 14):
Same reasons as claim 1
Claim 14: A method comprising:
at a movable barrier operator:
Element 1: detecting at least one Same reasons as claim 1
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
3

Element 2: in response to detecting the at
least
one
predetermined
condition,
automatically wirelessly transmitting a status
condition signal that:
Element 3: represents the present operational
status defined, at least in part, by the at least
two operating states; and
Element 4: 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.

TTI software showed that when you have a
new state, you call a “
”
subroutine. Tr. at 299:20-300:9 (Rhyne).
Same reasons as claim 1

Same reasons as claim 1

Claim 15: The method of claim 14 wherein Same reasons as claim 5
detecting at least one predetermined
condition includes detecting at least one of:
 moving a movable barrier in a first
direction;
 moving the movable barrier in a second
direction;
 a lighting status change;
 a vacation mode status change;
B.

The ’966 Patent

There is no dispute that TTI offers, sells, uses, and imports into the United States the
Ryobi garage door openers alone and in conjunction with the Ryobi ONE+ battery (the “Ryobi
system”). See supra at 2; see also Tr. at 387:17-21 (Rhyne); 453:5-13, 468:24-469:1 (Hansen).
The Ryobi system meets all of the limitations of claims 14, 17, and 18, as illustrated
below. Again, the parties’ main dispute centers on a legal issue—namely, whether direct
infringement requires that all components be sold in a single box. Indeed, this Court has noted
that “TTI sells the battery alongside the system, and this coupled with the design of a
rechargeable station integrate into the Ryobi GDO could constitute potential direct
infringement.” ECF No. 104 at 12. A jury may find direct infringement where a party sells
components separately, but those components are designed to be used together as a complete and

4

operable system. See, e.g., St. Clair Intellectual Prop. Consultants, Inc. v. Toshiba Corp., No.
09-354-LPS, 2014 WL 4253259, *3 (D. Del. Aug. 27, 2014) (“direct infringement may be found
where one sells or offers to sell all of the components of a claimed system, even if the
components are sold separately and are required to be assembled by the customer”); Immersion
Corp. v. Sony Comput. Entm’t Am., Inc., 4:02-CV-00710-CW, Dkt. No. 1481, at 11 (N.D. Cal.
Jan. 10, 2005) (“the jury could reasonably have found that [Defendant] sells a complete and
operable system or apparatus rather than mere constituent parts, despite the fact that most of the
consoles, controllers and games are sold separately”) (slip op.); EBS Auto. Servs. v. Ill. Tool
Works, Inc., No. 09-CV-996 JLS MDD, 2011 WL 4021323, at *9 (S.D. Cal. Sept. 12, 2011) (“a
reasonable jury could conclude that [Defendant] sells a complete and operable apparatus, as
opposed to mere components, even if the BrakeTech and the fresh and waste fluid containers are
sold separately”).
Element-by-element analysis of Claim 14 (which depends on claim 9):
Claim 9: A battery charging apparatus, The Ryobi GD200 and GD200A has a flip out
comprising:
door with a socket that the ONE+ battery can
plug into. PTX-625 at 36; Tr. 319:2-8
(Rhyne).
Element 1: battery charging station in Ryobi GD200 and GD200A has a station,
electrical communication with a rechargeable where you can put the ONE+ battery in and
battery and in electrical communication with charge it. Tr. 319:23-320:11 (Rhyne).
a head unit of a barrier movement operator for
supplying power to at least one rechargeable
battery
Element 2: at least one rechargeable battery  Ryobi GD200 and GD200A has snap-in
being removably connectable to electrically
latches, so the ONE+ battery can be
powered equipment other than and physically
snapped in and removed. Tr. 320:13-24
separate or separable from the barrier
(Rhyne).
movement operator to provide power to the
electrically powered equipment;
 The ONE+ battery is designed to, and can,
also be used in other Ryobi tools. Tr.
321:1-14 (Rhyne).
Element 3: circuitry electrically connected to When the ONE+ battery is plugged in, it
the battery charging station to supply power powers the GDO if the power is out. Tr.

5

from the at least one rechargeable battery to 321:15-322:3 (Rhyne).
the head unit

Claim 14: The battery charging apparatus of The ONE+ battery can plug into the Ryobi
claim 9, wherein the electrically powered high-powered drill, which is a tool. Tr.
equipment comprises a tool.
322:20-323:2 (Rhyne).
Element-by-element analysis of Claim 17 (which depends on claim 15 and 16):
Claim 15: 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:
Element 1: detecting whether the at least one
rechargeable battery is in electrical
communication with a battery charging
station;
Element 2: providing power from a power
source to the at least one rechargeable battery
via the battery charging station;

See claim 9; Tr. 324:23-25 (Rhyne).

Claim 16: The method of claim 15, further
comprising notifying a user in response to at
least one of:
the at least one rechargeable battery
being removed from the battery
charging station, and
the stored power of the at least one
rechargeable battery being below the
threshold amount.

The Ryobi GDO WiFi board will send a
particular message (value of -1) if there is no
ONE+ battery. PTX-87; Tr. 326:17-327:5
(Rhyne).

Ryobi smartphone app displays whether
ONE+ battery is plugged in, fully charged, or
partially charged. PTX-0087; Tr. 325:1-16
(Rhyne).
Ryobi smartphone app demonstrates that the
ONE+ battery goes from partially charged to
fully charged. PTX-0087; Tr. 325:17-25
(Rhyne).
Element 3: providing stored power from the Dr. Rhyne unplugged the head unit and the
at least one rechargeable battery to the head ONE+ battery could provide power to the
unit via the battery charging station to head unit. Tr. 326:1-8 (Rhyne).
perform movable barrier functions; and
Element 4: providing power from the at least Dr. Rhyne used the ONE+ battery with drills,
one rechargeable battery to the electrically saws, and flashlights. Tr. 326:9-14 (Rhyne).
powered equipment in response to the at least
one rechargeable battery being electrically
connected to the electrically powered
equipment.

Claim 17: The method of claim 16, wherein The notification that the ONE+ battery has

6

notifying comprises generating at least one of been removed is visual. PTX-87; Tr. 327:9an audible indication and a visual indication. 15 (Rhyne).

Element-by-Element Analysis of Claim 18 (which depends on claim 15):



Claim 18: The method of claim 15, wherein
the
electrically
powered
equipment
comprises a tool.

II.

See supra, at 6 (analysis of claim 15).
The ONE+ battery can plug into the
Ryobi high-powered drill, which is a
tool. Tr. 327:23-328:1 (Rhyne).

Indirect Infringement
A.

The ’966 Patent

There is not sufficient evidence of record to support a jury verdict that the TTI
Defendants did not indirectly infringe the claims of the ’966 patent by inducing others to use
and/or sell the Ryobi system in the United States. “To prove inducement of infringement, the
patentee must show that the accused inducer took an affirmative act to encourage infringement
with the knowledge that the induced acts constitute patent infringement.” Power Integrations,
Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315, 1332 (Fed. Cir. 2016) (citations and
alterations omitted). TTI admits that its knowledge of the ’966 patent dates back to 2010—well
before it began work on the infringing Ryobi GDO system. PTX-308 at 15-16. Further, TTI
explains how to charge the battery pack in its packaging, advertisements, and marketing,
demonstrating that it intends customers to infringe the patents. PTX-625 at 36; Tr. 328:12329:13 (Rhyne). Lastly,

% of TTI’s customers use the ONE+ battery pack, showing direct

infringement. DX-255 at 15; Tr. 468:24-469:1 (Hansen); Tr. at 1057:8-17 (McNabb).

7

Dated: August 28, 2017

By:

/s/ Katherine Vidal
George C. Lombardi
[e-mail]
WINSTON & STRAWN LLP
35 W. Wacker Drive
Chicago, IL 60601-9703
Telephone: [phone]
Facsimile: [phone]
Katherine Vidal
[e-mail]
Michael Rueckheim
[e-mail]
Matthew R. McCullough
[e-mail]
WINSTON & STRAWN LLP
275 Middlefield Road, Suite 205
Menlo Park, CA 94025
Telephone: [phone]
Facsimile: [phone]
Aldo A. Badini (pro hac vice)
[e-mail]
Shanna A. Lehrman (pro hac vice)
[e-mail]
WINSTON & STRAWN LLP
200 Park Avenue
New York, NY 10166
Telephone: [phone]
Facsimile: [phone]
Benjamin Elacqua (pro hac vice)
[e-mail]
FISH & RICHARDSON PC
1221 McKinney Street, Suite 2800
Houston, Texas 77010
Telephone: [phone]
Facsimile: 713-652-0109
Maria Elena Stiteler (pro hac vice)
[e-mail]
FISH & RICHARDSON P.C.
60 South Sixth Street
Minneapolis, MN 55402
Telephone: [phone]

8

Facsimile: [phone]
Nicole L. Little (IL 6297047)
[e-mail]
FITCH, EVEN, TABIN & FLANNERY LLP
120 South LaSalle Street, Suite 1600
Chicago, Illinois 60603
Telephone: [phone]
Facsimile: [phone]
ATTORNEYS FOR PLAINTIFF
THE CHAMBERLAIN GROUP, INC.

9

CERTIFICATE OF SERVICE
I certify that a copy of the foregoing document was served on opposing counsel via
CM/ECF on August 28, 2017.

/s/ Katherine Vidal
Katherine Vidal
ATTORNEY FOR PLAINTIFF
THE CHAMBERLAIN GROUP,
INC.

10