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

Filing 740

MEMORANDUM OPINION AND ORDER: For the reasons stated in the Court's opinion: (1) TTI's Motion for Judgment as a Matter of Law is denied (Dkt. 573); (2) TTI's Motion for a New Trial is denied (Dkt. 619); (3) Chamberlain's Motio n for a Permanent Injunction is granted (Dkt. 622); (4) Chamberlain's Motion for Enhanced Damages is granted (Dkt. 624, 625), and the Court accordingly awards Chamberlain $11.4 million in treble damages; (5) Chamberlain's Motion for Pr ejudgment Interest and Supplemental Damages is granted in part (Dkt. 630), and the Court awards the following: (a) prejudgment interest of $42,347, calculated by using the 52-week treasury bill rate, compounded monthly; (b) for the '275 pat ent, $900,793 in GDO lost profits; $54,672 in royalties; and $134,496 in accessory lost profits, unless TTI has some repurchased GDO stock still on hand, in which case TTI may move the Court within fourteen (14) days to reduce the acce ssory lost profits damages accordingly and; (c) for the '966 patent, $18,224 in royalties; (6) Chamberlain's Motion for Attorneys' Fees is granted in part (Dkt. 703, 704), though the Court will not order any fees until the parties submit, within fourteen (14) days, a joint report as described in the opinion; (7) Chamberlains Bill of Costs is granted in part (Dkt. 634), though the Court will not order any costs until Chamberlain submits, within fourteen (14) days, a revised bi ll of costs in accordance with the opinion. Status hearing set for 6/19/18 at 9:00 a.m., at which time Defendants will explain whether they still require a ruling on their motion to seal (ECF No. 699). Chamberlain shall respond to Defendants' motion for an ongoing royalty (ECF No. 727) by 6/7/18. Signed by the Honorable Harry D. Leinenweber on 5/23/2018: Mailed notice (maf)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
THE CHAMBERLAIN GROUP, INC.,
Plaintiff,
v.
Case No.
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.,

16 C 6097

Judge Harry D. Leinenweber

Defendants.
MEMORANDUM OPINION AND ORDER
Plaintiff

Chamberlain

Group,

Inc.

(“Chamberlain”)

won

a

jury verdict against Defendants Techtronic Industries Co., Ltd.,
Techtronic

Industries

North

America,

Inc.,

One

World

Technologies, Inc., OWT Industries, Inc., Et Technology (WUXI)
Co. Ltd., and Ryobi Technologies (collectively, “TTI”), in which
the jury found that TTI willfully infringed two of Chamberlain’s
patents,

U.S.

Patent

Nos.

7,224,275

7,635,966 (“the ‘966 patent”).
trial

motions.

case’s
rulings.

This

background,

as

opinion

(“the

‘275

patent”)

and

Both parties have filed postpresumes

described

in

familiarity
this

Court’s

with

the

previous

(See, e.g., Dkt. 104 (preliminary injunction opinion);

Chamberlain Grp., Inc. v. Techtronic Indus. Co., No. 16 C 6097,

2017 WL 368027 (N.D. Ill. Jan. 23, 2017) (contempt opinion);
Chamberlain Grp., Inc. v. Techtronic Indus. Co., No. 16 C 6097,
2017 WL 1304559 (N.D. Ill. Apr. 7, 2017) (claim construction
opinion);

Chamberlain

Grp.,

Inc.

v.

Techtronic

Indus.

Co.,

No. 16 C 6097, 2017 WL 3205772 (N.D. Ill. June 28, 2017) (order
denying motion to transfer venue).)
I.

TTI’s Renewed Motion for Judgment as a Matter of Law

The Court “should render judgment as a matter of law when a
party has been fully heard on an issue and there is no legally
sufficient evidentiary basis for a reasonable jury to find for
that party on that issue.”

Reeves v. Sanderson Plumbing Prods.,

530 U.S. 133, 149 (2000) (quoting FED. R. CIV. P. 50(a)).
a

stringent

standard

under

which

the

Court

This is

“construe[s]

the

facts strictly in favor of the party that prevailed at trial.”
Schandelmeier-Bartels v. Chi. Park Dist., 634 F.3d 372, 376 (7th
Cir. 2011) (citations omitted).

On a motion for JMOL, “the

court

determinations

does

not

make

credibility

or

weigh

the

evidence,” id., though the Court must “disregard all evidence
favorable to the moving party that the jury is not required to
believe.”

Reeves, 530 U.S. at 151.

The court leaves the jury’s

factual findings “undisturbed as long as they are supported by
substantial
reasonable

evidence,”
mind

might

i.e.,

“such

accept
- 2 -

as

relevant

evidence

as

a

adequate

to

support

a

conclusion.”

Akamai Techs., Inc. v. Cable & Wireless Internet

Servs., Inc.,

344 F.3d 1186, 1192 (Fed. Cir. 2003) (quoting

Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938)).
In its renewed Motion for JMOL, TTI argues it is entitled
to judgment because: (1) the asserted ‘275 patent claims are
directed to ineligible subject matter under Alice Corp. Pty. v.
CLS Bank Int’l, 134 S. Ct. 2347 (2014); (2) the ‘275 patent was
anticipated or rendered obvious by prior art; (3) TTI’s products
do not literally infringe the ‘275 patent; (4) the doctrine of
equivalents does not apply here, and the jury should not have
considered it; (5) TTI does not induce infringement of the ‘275
patent, (6) TTI does not willfully infringe the ‘275 patent; (7)
the ‘966 patent was anticipated or rendered obvious by prior
art; (8) TTI does not literally infringe the ‘966 patent; (9)
TTI does not induce infringement of the ‘966 patent; (10) TTI
does

not

Chamberlain

willfully
failed

to

infringe
prove

the

‘966

damages.

patent;

and

(11)

Court

takes

each

The

argument in turn.
A.
Anyone

Ineligibility of Asserted ‘275 Patent Claims
who

“invents

or

discovers

any

new

and

useful

process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof” may obtain a patent. 35
U.S.C. § 101.

But because patent protection does not extend to
- 3 -

claims that monopolize the “building blocks of human ingenuity,”
claims

directed

to

laws

of

nature,

natural

abstract ideas are not patent eligible.

phenomena,

and

Alice, 134 S. Ct. at

2354. The Supreme Court instructs courts to distinguish between
those claims directed to patent-ineligible subject matter and
those that “integrate the building blocks into something more.”
Id.

To do so, courts follow the two-step Alice framework.

Id.

First, a court must “determine whether the claims at issue are
directed to a patent-ineligible concept.”

Id. at 2355.

If they

are not so directed, the claims satisfy § 101, and the inquiry
ends.

Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262

(Fed. Cir. 2017).

But if the claims are so directed, the court

proceeds to step two and “examine[s] the elements of the claim
to

determine

sufficient

to

whether

it

‘transform’

contains
the

patent-eligible application.”
v.

LG

Elecs.,

Inc.,

880

an

claimed

‘inventive
abstract

concept’

idea

into

a

Core Wireless Licensing S.A.R.L.

F.3d

1356,

1361

(Fed.

Cir.

2018)

(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 79 (2012)).
To begin the Alice analysis, the court must “articulate
what

the

claims

are

directed

to

with

enough

ensure the step one inquiry is meaningful.”

specificity

to

Id. (quoting Thales

Visionix Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir.
- 4 -

2017)).

Further, “claims are considered in their entirety to

ascertain whether their character as a whole is directed to
excluded

subject

matter.”

Internet

Patents

Corp.

v.

Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).

Active

The court

“look[s] to whether the claims . . . focus on a specific means
or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.”
Innovations, LLC v. Chi. Transit Auth.,

Smart Sys.

873 F.3d 1364, 1371

(Fed. Cir. 2017) (quoting McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016)).
Here, TTI claims that wireless transmission of content is
an abstract idea, and that the asserted ‘275 patent claims are
directed to nothing more.
support

of

this

First off, the cases TTI cites in

proposition

do

transmission is an abstract idea.

not

hold

that

wireless

Affinity Labs of Tex., LLC v.

DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (holding that
the

concept

of

providing

out-of-region

access

to

regional

broadcast content is an abstract idea), cert. denied sub nom.
Affinity Labs of Tex., LLC v. DIRECTTV, LLC, 137 S. Ct. 1596
(2017); Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d
1266, 1271-72 (Fed. Cir. 2016) (holding that the concept of
delivering user-selected media content to portable devices is an
- 5 -

abstract

idea),

cert.

denied,

137

S.

Ct.

1596

(2017).

And

second, the Federal Circuit has warned against the dangers of
over-abstraction, Core Wireless, 880 F.3d at 1361 (“[W]e must be
mindful that ‘all inventions at some level embody, use, reflect,
rest

upon,

abstract

or

apply

ideas.’”

laws

of

(quoting

nature,

Mayo,

natural

566

U.S.

phenomena,
at

71)),

or
and

disapproved of parties’ efforts to render abstract objects that
are not, id. at 1362 (“The asserted claims in this case are
directed to an improved user interface for computing devices,
not

to

the

appeal.”).

abstract

idea

of

an

index,

as

argued

by

LG

on

Here, the ‘275 patent claims are not directed to the

transmission

of

data,

but

“to

garage

wirelessly transmit status information.”

door

openers

that

The Chamberlain Grp.,

Inc. v. Techtronic Indus. Co., 676 F. App’x 980, 982 (Fed. Cir.
2017)

(appeal

from

this

Court’s

initial

claim

construction).

Having identified what the ‘275 patent claims are directed to,
the Court must now determine whether this object is an abstract
idea.
“The Supreme Court has not established a definitive rule to
determine

what

constitutes

an

‘abstract

idea’

sufficient

to

satisfy the first step of the [Alice] inquiry,” and as such the
appropriate analysis “compare[s] claims at issue to those claims
already found to be directed to an abstract idea in previous
- 6 -

cases.”

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334

(Fed. Cir. 2016).

Post-Alice decisions have found ineligible:

paying for mass transit rides with a credit card, Smart Sys.
Innovations, LLC v. Chi. Transit Auth.,

873 F.3d 1364, 1371

(Fed. Cir. 2017); “the abstract idea of testing operators of any
kind of moving equipment for any kind of physical or mental
impairment,” Vehicle Intelligence & Safety LLC v. Mercedes-Benz
USA, LLC, 635 F. App’x 914, 917 (Fed. Cir. 2015); the “abstract
idea

for

increasing

sales

implemented

via

‘some

unspecified,

generic computer,’” DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d

1245,

1266

(Fed.

Cir.

2015);

creating

a

“transaction

performance guaranty” over an unspecified network, buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); “offering
media

content

in

exchange

for

viewing

an

advertisement,”

Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir.
2014); the abstract idea of a conversion chart, Tech. Dev. &
Licensing, LLC v. Comcast Corp., 258 F. Supp. 3d 884, 887 (N.D.
Ill. 2017); and the routine and conventional activity of making
and storing lists on a microprocessor, Tech. Dev. &, Licensing,
LLC v. Gen. Instrument Corp., 225 F. Supp. 3d 729, 735 (N.D.
Ill. 2016).
Chamberlain, of course, argues the ‘275 patent claims are
not directed to abstract ideas as in the cases above and should
- 7 -

pass muster under § 101.

In doing so, Chamberlain relies in

large part on Chamberlain Group, Inc. v. Linear LLC, 114 F.
Supp. 3d 614 (N.D. Ill. 2015).

In Linear, Chamberlain claimed

the defendant infringed its GDO patents (though not the patents
asserted

here),

and

the

defendant

moved

to

dismiss

on

the

grounds that the claims were not directed to patent-eligible
subject matter.

Id. at 621.

The court described the relevant

patent claims as directed to “opening and closing a movable
barrier,

(e.g.,

communication

garage

between

door)

the

using

monitor

a

or

computer
operator

network
(including

for
a

controller), and movable barrier,” id. at 626, and held this to
be eligible subject matter in part because the claims “ha[d]
physical and tangible components that are directed to more than
performance of an abstract idea,” id. at 625.

The court also

held that the asserted claims were directed to a technological
improvement because they integrated a GDO and a network.

Id. at

626-27.
Both
however.
Linear

of

these

rationales

have

met

with

disagreement,

First, another court in this district observed that
did

not

benefit

from

the

guidance

of

the

Federal

Circuit’s later decision in Vehicle Intelligence & Safety LLC v.
Mercedes-Benz USA, LLC, 635 F. App’x 914, 920 (Fed. Cir. 2015),
which demonstrated that “the mere presence of a ‘real-world,
- 8 -

physical’ purpose, such as controlling equipment, does not show
that the claims do not preempt an abstract idea.”

Joao Control

& Monitoring Sys., LLC v. Telular Corp., 173 F. Supp. 3d 717,
729

(N.D.

Second,

Ill.

an

2016)

(characterizing

out-of-circuit

district

Vehicle

court

Intelligence).

opined

that

“[t]he

alleged technological improvement in [Linear] amounts to nothing
more than operating an existing device from a remote location
over

a

network,”

improvement.”

which

cannot

suffice

for

a

“technological

ChargePoint, Inc. v. SemaConnect, Inc., No. CV 17

3717, 2018 WL 1471685, at *11 (D. Md. Mar. 23, 2018).
Neither

of

these

patent-ineligible
Intelligence

subject

decision

opinion on it.

critiques

compels

matter,

does

not

the

Court

however.

cite

The

Linear

nor

to

find

Vehicle

express

any

And TTI itself points out that Linear “involved

a different Chamberlain patent . . . that solved a different
problem
claims

and

recited

asserted

limitations

here.”

Judgment at 1, Dkt. 546.)

(TTI’s

different
Reply

in

from

those

Supp.

of

in

the

Summary

Unlike Joao’s characterization of the

claims in Linear, the claims asserted here are not directed to
an abstract idea that merely happens to make use of physical
equipment.

And

as

for

the

Chargepoint

critique,

the

technological improvements of the asserted ‘275 patent claims
are not limited to the introduction of network connectivity.
- 9 -

Rather, the asserted ‘275 claims are directed to a particular
improvement over prior art which uses a particular manner of
sending and experiencing data.
matters.

This particularity distinction

In Core Wireless, the Federal Circuit affirmed the

district court’s patent-eligibility finding for claims directed
to “an improved user interface for computing devices.”
at 1362.

880 F.3d

The court explained: “Although the generic idea of

summarizing

information

certainly

existed

prior

to

the

invention, these claims are directed to a particular manner of
summarizing and presenting information in electronic devices.”
Id.

at

1362

manner,”

the

(emphasis
court

added).

noted

Concerning

that

the

claims

this

“particular

stated

specific

limitations which “disclose[d] a specific manner of displaying a
limited

set

of

information

to

the

user,

rather

than

using

conventional user interface methods to display a generic index
on

a

computer.

.

.

.

[T]hese

improvement over prior systems.”

claims

recite

Id. at 1363.

a

specific

Indeed, the

Federal Circuit has repeatedly found claims directed to patenteligible subject matter when those claims “focused on various
improvements of systems.”

Id. at 1362; see, e.g., Enfish, LLC

v. Microsoft Corp., 822 F.3d 1327, 1336, 1338 (Fed. Cir. 2016)
(claims

reciting

a

self-referential

table

for

a

computer

database directed to a particular improvement in the computer’s
- 10 -

functionality); Thales Visionix Inc. v. United States, 850 F.3d
1343, 1345, 1349 (Fed. Cir. 2017) (claims reciting an improved
method of utilizing particularly configured sensors to determine
position and orientation of an object on a moving platform,
which relied on a particular method of utilizing raw data which
eliminated

complications

inherent

in

conventional

methods);

Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258-59 (Fed.
Cir.

2017)

(claims

reciting

programmable

operational

characteristics that provided flexibility not possessed by the
prior art).
Thus,
particular

the
and

Federal

Circuit’s

unconventional

§ 101-eligible.

Such

case

law

improvements

guideposts

protect

to

suggests
prior

against

art

that
are

overbroad

patents preempting “the use of the underlying [abstract] ideas.”
See, Alice, 134 S. Ct. at 2354; Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013)
(expressing

in

pre-Alice

opinion

that

“[i]n

the

case

of

abstractness, the court must determine whether the claim poses
any

risk

of

preempting

an

abstract

idea.”)

(citation

and

internal quotation omitted); accord Joao, 173 F. Supp. 3d at 728
(expressing same).
Chamberlain’s ‘256 patent claims recite such particular and
unconventional

improvements.

The
- 11 -

moveable

barrier

operator

(“MBO,” often used interchangeably in the briefing with garage
door opener, or “GDO”) taught by the ‘275 patent does not merely
receive transmissions, as did MBOs in the prior art; instead,
Chamberlain’s MBO experiences—via an onboard controller —status
conditions

and

then

transmits

them

to

other

devices.

This

improvement eliminated the need for a “physical interface . . .
to support numerous potentially utilized peripheral devices,”
thus cutting out “undesired additional cost when part of the
[otherwise, necessarily installed] interface goes unused in a
given installation.”

(‘275 Patent 1:55-63, Dkt. 1-2).)

In

addition, the improvements taught by the ‘275 patent brought new
compatibility to the MBO; the prior art, by contrast, “fail[ed]
to

permit

compatible

support

of

a

given

peripheral,”

and

precluded users from coupling their prior-art MBO with a new
function “not specifically supported by a given [MBO].”

(Id. at

2:4-16.)
Thus, contrary to TTI’s assertions, the ‘275 patent claims
are

unlike

specified

the

the

ones

in

abstract

Vehicle

idea

of

Intelligence,
testing

which

operators

of

merely
moving

equipment for impairment and indicated that such testing could
be conducted more quickly, accurately, and reliably by using an
“expert

system”

that

the

claims

failed

Intelligence, 635 F. App’x at 917.
- 12 -

to

define.

Vehicle

Rather, the ‘275 patent

claims better fit the mold in Visual Memory LLC v. NVIDIA Corp.,
867 F.3d 1253, 1259 (Fed. Cir. 2017), where the Federal Circuit
held claims patent-eligible which were directed to an improved
computer

memory

characteristics,

system
which

with

“provided

programmable
flexibility

operational

that

prior

art

processors did not possess, and obviated the need to design a
separate
Wireless,
Visual

memory
880

system

F.3d

Memory)

at

for

each

1362

(emphasis

type

of

processor.”

(characterizing

added).

The

the

‘275

Core

findings

patent

in

provides

exactly this enhanced flexibility, which transcends prior art
conventions.
specifically,

Finally,
that

the

the

particularity

controller

must

of

the

experience

the

claims—
status

conditions—diminishes the preemption concerns that undergird the
Alice inquiry.

134 S. Ct. at 2354.

The asserted claims are directed to patent-eligible subject
matter under § 101, so the Alice analysis ends before we reach
step two.

Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,

1353 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2355).

TTI’s

JMOL Motion on § 101 ineligibility is denied.
B.

Invalidity of the ‘275 Patent
1. Anticipation

Under 35 U.S.C. § 102, a patent is invalid if a prior art
reference

discloses,

either

explicitly
- 13 -

or

inherently,

every

limitation of the claimed invention.

Liebel-Flarsheim Co. v.

Medrad, Inc., 481 F.3d 1371, 1381 (Fed. Cir. 2007) (citation
omitted).

Judgment as a matter of law is appropriate if no

reasonable jury could find, as the one here did, that the prior
art did not anticipate, and thus invalidate, the patent.

See,

Krippelz v. Ford Motor Co., 667 F.3d 1261, 1268 (Fed. Cir. 2012)
(applying

Seventh

Circuit

JMOL

standard).

As

it

argued

at

trial, TTI contends that the Menard PCT prior art anticipated
claims 1, 5, and 15 of the ‘275 patent.
These claims recite:
1. A movable barrier operator comprising:
a
controller
having
a
plurality
of
operational status conditions defined, at
part, by a plurality of operating states;

potential
least in

a movable barrier interface that is operably coupled
to the controller;
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:
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
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.
5. The movable barrier operator of claim 1 wherein the
plurality of operating states includes at least one of:
- 14 -

moving a movable barrier in a first direction;
moving the movable barrier in a second direction;
reversing movement of the movable barrier;
halting movement of the movable barrier;
detecting a likely presence of an obstacle to movement
of the movable barrier;
detecting a likely proximal presence of a human;
receiving a wireless remote control signal;
receiving a wireline remote control signal;
receiving a learning mode initiation signal;
a lighting status change;
a vacation mode status change;
detecting a likely proximal presence of a vehicle;
detecting the identification of a proximal vehicle;
and
receiving an operating parameter alteration signal.
15. The method of claim 14 wherein 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
reversing movement of the movable barrier;
halting movement of the movable barrier;
detecting a likely presence of an obstacle to movement of
the movable barrier;

- 15 -

detecting a likely proximal presence of a human;
receiving a wireless remote control signal;
receiving a wireline remote control signal;
receiving a learning mode initiation signal;
a lighting status change;
a vacation mode status change;
detecting a likely proximal presence of a vehicle; and
receiving an operating parameter alternation signal.
(‘275

Patent

identifies

8:5-21,

a

8:30-46,

movable

9:39-55,

barrier

controller and a transmitter.

Dkt.

operator

1-2.)

Claim
both

comprising

(Id. at 8:5-21.)

1
a

But TTI did not

present any evidence that the Menard GDO 1000—as opposed to an
add-on module to that GDO—contained a controller or wireless
transmitter.

Indeed, Chamberlain’s technical expert, Dr. Rhyne,

presented evidence showing that the Menard GDO 1000 and the
system 10000 (the aforementioned module) each have their own,
separate controllers and power supplies.

(Id. 1297:16-1299:8.)

In response to this, TTI emphasizes that the Chamberlain claims
do not require the controller to be housed in the GDO’s head
unit.

(See, Chamberlain’s Resp. to JMOL Mot. at 9, Dkt. 651

(Chamberlain admitting its asserted claims do not require “the
controller,
status

the

condition

movable

barrier

transmitter

to

- 16 -

interface,
be

and

located

the
in

wireless
a

single

housing.”).)

But Chamberlain explains that the key limitation

in its claims is not whether the controller and transmitter
share a housing, but instead whether they are part of the GDO at
all, instead of—as in Menard’s system 10000—part of a separate
module that can send signals to the GDO.

Chamberlain presented

evidence of this distinction through Dr. Rhyne’s testimony:
A: [T]he . . . Menard module . . . has a separate
module that you add on top of the garage door and, as
a result, the controller in the module is what sends
out the state signal, not the controller in the GDO.
. . .
Q: Dr. Rhyne, you were asked a couple questions about
whether the Menard module, that modular system we
discussed, system 10000, can send control signals to
the GDO 1000. In your opinion, is that -- does that
make the module in Menard a movable barrier operator
under the Court’s constructions?
A: No. It’s not the movable barrier operator in Figure
37. That movable barrier operator is the GDO 1000 down
in the bottom. The top guy is not a movable barrier
operator.
Q: And can a smartphone also send control signals to
open and close a door on a garage door opener?
A: Yes.
Q: And is a smartphone a movable barrier operator?
A: Not in that sense, no, any more than the pushbutton
switch, the 6500 is a movable barrier operator.
(Rhyne Tr. 1310:18-21, 1374:9-22.)
that

Chamberlain’s

asserted

claim

- 17 -

This is substantial evidence
1

claims

limitations

not

present in the prior art, so JMOL is not appropriate as to TTI’s
anticipation argument as to claim 1.
As for claims 5 and 15, Chamberlain contends that JMOL is
not appropriate because both claims recite a limitation that is
not disclosed in the Menard prior art.

Specifically, claim 5

depends from claim 1’s recitation of “a controller having a
plurality of potential operational status conditions defined, at
least in part, by a plurality of operating states,” and claim 15
depends
operator

from

claim

detecting

14’s
at

recitation

least

one

of

“a

movable

predetermined

barrier

condition

as

corresponds to a present operational status defined, at least in
part, by at least two operating states[.]”
1309:21-22;

Foley

Tr.

871:5-8

(both

dependent relationships of claims).)

(See, Rhyne Tr.

citations

describing

In contrast, the Menard

prior art does not explain how its signals are defined:
Q. Do [Dr. Foley’s slides concerning the Menard prior
art] show a condition defined by a plurality of states
as claimed?
A. They show things that the Menard module can report
like whether the door is open, closed, or partially
closing,
freezing,
normal,
overheating
on
the
temperature of the unit, but it doesn’t – there’s no
disclosure of how those things are defined, and there
are other ways to do it than having states that would
define those conditions.
Q. Can you provide us one example?

- 18 -

A. A good one would be door position. You can report
the number of times the motor has turned, so the
rotations. And every rotation incrementally pulls the
door up or, if it’s going the other way, it lets it
down a little bit. And then you can leave it up to the
receiver at the other end to decide how many rotations
is it going to take to get the door open, how many is
it going to take to get the door to close. And if it
sees the rotations coming at a different speed, it
knows that it’s partially closing. Those are not
reporting specific states in the message itself.
(Rhyne

Tr.

1307:16-1308:9.)

Simply

put,

the

jury

heard

substantial evidence that while the Menard PCT status conditions
could be defined in a number of ways, Chamberlain’s ‘275 claims
limit its status conditions to one type of definition. Because
that limitation appears only in the asserted claims, the Menard
prior art does not anticipate them.

See, Liebel-Flarsheim Co.,

481 F.3d at 1381.
2.

Obviousness

TTI also contends that the Cohen prior art renders the
asserted claims obvious.

Under 35 U.S.C. § 103, “[o]bviousness

is a question of law based on underlying findings of fact.”
Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010)
(citation omitted).

The underlying factual inquiries include:

(1) the scope and content of the prior art, (2) the differences
between the prior art and the claims at issue, (3) the level of
ordinary

skill

considerations,

in

the

such

as

art,

and

(4)

commercial
- 19 -

any

relevant

success,

long

secondary
felt

but

unsolved needs, and the failure of others.

Id. (citing Graham

v. John Deere Co., 383 U.S. 1, 17-18 (1966)).
TTI contends that a person of ordinary skill in the art
would

have

been

motivated

to

combine

the

Menard

PCT

door-

position prior art discussed earlier with the Cohen prior art,
which TTI maintains teaches the signal format recited in the
‘275

patent.

But

at

trial,

Chamberlain

presented

evidence

showing that the Cohen prior art does not claim sending status
conditions defined by two or more states.
(“All

[the

Cohen

reference]

does

is

it

(Rhyne Tr. 1312:3-9
talks

about

a

state

signal that indicates in a way that is not described that the
door is opening, closing, opening, or closing.

And as I said,

there are certainly ways to do it that doesn’t involve sending a
state -- a status condition signal that gives you two states as,
for example, that rotational information as an alternative.”).)
Further, Dr. Rhyne explained that just like the Menard prior
art,

the

Cohen

reference

teaches

an

add-on

modular

device,

meaning that once again a controller in the module sends out the
signal—not

the

1310:11-21.)

controller

in

the

GDO

itself.

(Rhyne

Tr.

Because, according to Dr. Rhyne’s testimony, this

combination does not teach the limitations of the ‘275 patent
claims, the jury heard substantial evidence supporting a finding
of nonobviousness.

See, Hearing Components, Inc. v. Shure Inc.,
- 20 -

600 F.3d 1357, 1374 (Fed. Cir. 2010), abrogated on other grounds
by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120
(2014).
C.

Literal Infringement of the ‘275 Patent

This argument is nothing new.

TTI moved for pre-trial

summary judgment of non-infringement of the ‘275 patent, and the
Court denied that motion.
TTI

posits

once

more

(June 21, 2017, Order, Dkt. 397.)
that

the

Ryobi

signal

does

not

“correspond[] to a present operational status condition defined,
at

least

in

part,

by

at

least

two

from

the

two

or

more

operational conditions being experienced by the controller,” as
recited

in

claims

(emphasis added).
Ryobi

controller

operational
conditions
cannot

1

and

24.

2017

WL

1304559

According to TTI, this is so because the
cannot

conditions
are

Chamberlain,

given

mutually

simultaneously

simultaneously
that—in

exclusive,

be

opening, closing, or fault.”

TTI’s

e.g.,

experiencing

experience

reading—such

“[t]he

door

two

controller

open,

closed,

(Mem. in Supp. at 18, Dkt. 618.)

But as the Court has already noted, this contention misses the
mark:

“[M]any

(if

not

all)

GDO

components

contain

multiple

potential but mutually exclusive positions or states, making it
unclear how a transmitter as [TTI] conceive[s] [is recited by
the ‘275 patent] would even be operative.”
- 21 -

(June 21, 2017,

Order at 4, Dkt. 397.)

In short, TTI’s renewed argument depends

upon a narrow reading of “operational status condition” which
does not square with this Court’s earlier construction of the
term as encompassing status conditions of other categories of
information the controller may experience (for example, light
on/off, vacation mode on, etc.).

(See, id. at 5-6 (“[a present]

status condition [may] be defined (or determined, or its meaning
clarified) by multiple operational conditions being experienced
by the controller (for example, lights on in tandem with, as a
result

of,

or

in

response

to

the

garage

door’s

opening,

a

sensor’s detection of a proximal vehicle, or a user’s flipping
the vacation mode switch).”).)
Claim
condition

1

recites

signal

a

that:

transmitter

that

corresponds

to

a

transmits
present

“a

status

operational

status condition defined, at least in part, by at least two
operating states from the plurality of operating states . . .”
(‘275

Patent

8:13-17,

Dkt.

1-2.)

At

trial,

Chamberlain’s

evidence demonstrated that the Ryobi GDOs (both the GD200 and
the revised, GD200A) do exactly that.

Dr. Rhyne explained that

in both versions of the Ryobi GDO, the device “send[s] a signal
corresponding

to

a

(Rhyne Tr. 288:4-5.)
defined

both

by

the

present

operational

status

condition.”

Such a signal (for example, “light on”) is
status

condition

- 22 -

it

carries

and

the

potential,

but

not

present,

condition(s)

precludes (in this example, “light off”).

it

necessarily

(See, June 21, 2017,

Order at 4, Dkt. 397 (indicating that Court’s Markman order did
not limit the operational conditions that are “experienced by
the controller and capable of defining its operational status
condition(s)”

to

only

potential

or

to

only

present

conditions).)

status

Dr. Rhyne explained as much to the jury:

[N]otice this light state [in the Ryobi electronic
system architecture and design specifications]. This
is the status condition on the light, and it’s got two
states. Remember, we had to have a plurality of
states, two or more: Off and on. This is the status
condition for the door. It’s got five states: Closed,
open, closing, opening, or a fault. . . . [Y]ou can
see here are those five states that are available. So
I’ve got a status for the door defined by five
possible states, the same words [as in the ‘275
patent].
(Rhyne

Tr.

275:15-20,

277:14-17.)

Chamberlain

presented

the

jury with substantial evidence that accorded with the Court’s
claim constructions showing that the device taught by the ‘275
patent and the Ryobi GDOs send signals defined in the same way.
A

reasonable

jury

hearing

this

testimony

could

find

literal

infringement, so the Court will not grant TTI’s JMOL and vacate
that finding.
D.

Doctrine of Equivalents Infringement of the ‘275 Patent

“The doctrine of equivalents allows the patentee to claim
those

insubstantial

alterations
- 23 -

that

were

not

captured

in

drafting the original patent claim but which could be created
through trivial changes.”

AquaTex Indus., Inc. v. Techniche

Sols., 419 F.3d 1374, 1382 (Fed. Cir. 2005) (quoting Festo Corp.
v.

Shoketsu

(2002)).

Kinzoku

Kogyo

Kabushiki

Co.,

535

U.S.

722,

733

Here, TTI marshals two arguments against the jury’s

finding that TTI infringed the ‘275 patent under the doctrine of
equivalents.
narrowed

its

First,
claims

TTI
during

contends

that

prosecution,

arguing the doctrine of equivalents.

because
it

is

Chamberlain

estopped

from

Second, TTI argues that

even if Chamberlain is not so estopped, Chamberlain nevertheless
failed to present the jury with substantial evidence on the
equivalents theory.
1.

Neither argument is persuasive.
Prosecution History Estoppel

We have seen TTI’s first argument before, in rebuttal to
Chamberlain’s pretrial motion to enforce the Court’s preliminary
injunction.
like

this:

(Dkt. 228 at 10-11.)
Under

Festo

Corp.

Once more, the argument runs
v.

Shoketsu

Kinzoku

Kogyo

Kabushiki Co., 535 U.S. 722, 736, 740 (2002), once a patent
applicant

narrows

his

application

via

amendment

and

thus

relinquishes subject matter, the applicant cannot later rely on
the doctrine of equivalents to claim infringement by a device
that falls between the broader and the narrower language, unless
the applicant can show the amendment does not surrender the
- 24 -

particular equivalent.

See,

Festo,

535 U.S. at 740;

accord

Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1344 (Fed. Cir.
2005) (“The doctrine of prosecution history estoppel serves to
limit the doctrine of equivalents when an applicant makes a
narrowing amendment for purposes of patentability, or clearly
and unmistakably surrenders subject matter by arguments made to
an examiner.”).

According to TTI, Chamberlain interjected such

a limitation during the prosecution of ‘275 patent to overcome
the Examiner’s initial rejection of independent claim 1 based on
the

Doyle

reference.

The

Court

previously

summarized

the

pertinent prosecution history as follows:
In the relevant amendment and remarks, the Applicant
traversed Doyle by citing to Figure 2 of the Doyle and
its associated text, which disclose a mercury switch
oriented within a radio frequency (“RF”) transmitter
where the mercury bead only causes transmission of the
RF signal when the garage door is in an intermediate
position. The Application contrasted this facet of
Doyle, in which the transmitted RF signal is keyed to
a single position or state of Doyle’s garage door,
with its amended claims, which “require a wireless
status condition data transmitter to transmit a status
condition signal that corresponds to a present
operational status condition defined, at least in
part, by at least two operating states from the
plurality of operating states.”
Chamberlain, 2017 WL 368027, at *5 (citing File History, App.
No. 10/477,633, June 15, 2005, Amendment at 12 (emphasis in
original)).
operating

Thus, “Doyle could only ever be defined by one

state:

a

single

intermediate
- 25 -

position

of

a

garage

door, as opposed to the dual operating states of open/closed.”
(Id. at 14-15.)
The

problem

with

TTI’s

argument

is

that

even

if

Chamberlain’s prosecution amendments narrowed the ‘275 patent,
TTI’s Ryobi GD200A does not fall “between the broader and the
narrower

language.”

Festo,

535

U.S.

at

740.

As

discussed

above, Dr. Rhyne explained that both the Ryobi and Chamberlain
GDOs use status conditions defined by a plurality of states
(e.g., two states—on and off—define the status condition of the
light; five states—closed, open, closing, opening, and fault—
define the status of the door, etc.).
20, 277:14-17.)

(See, Rhyne Tr. 275:15-

TTI now makes much of another part of Dr.

Rhyne’s testimony, which TTI takes as proof that Dr. Rhyne later
reversed

his

position

and

agreed

that

the

Ryobi

conditions are defined by only one state at a time.
TTI’s

selection

of

that

testimony

leaves

clarification and is not representative.

out

Dr.

status
However,
Rhyne’s

The full selection is

this:
Q: So I asked you this question [in your deposition],
Dr. Rhyne. “So if we’re talking about the present
operational status condition,” present operational
status condition, “of the door, at any point in time,
it is only defined by one of the states that the door
can be in, correct?” And you asked me, “One of the
operating states?” I said, “Correct.” And your answer
was, “Yes,” correct?

- 26 -

A: I interpreted what you asked me to mean as I did
the previous one, what’s in that transmitted status
condition that’s sent out by the data transmitter.
There’s always only one in the message. There’s not
two.
Q: That’s right, because the signal is defined by the
one state that the door can be in, as your answer said
here, correct?
A: When you transmit the present operational status
condition, you transmit only one of the states.
Q: And that’s what defines that signal, correct?
A. At that time, you send out that one.
(Rhyne Tr. 354:4-22.)

As Dr. Rhyne’s clarification makes clear,

he did not opine that the Ryobi devices operated based on status
conditions defined at a given time by only one state; rather,
Dr.

Rhyne

device,

simply

which

described

sends

several

the

signal

discrete

format

pings

of

of

the

data

GD200A

seriatim

rather than sending a single batch, as does the pre-revision
GD200.

To the extent Chamberlain narrowed its claims during

prosecution, TTI has not shown that its Ryobi GDOs fall between
the broader and narrower language.
(holding

that

applicants

only

See, Festo, 535 U.S. at 740

surrender

equivalents

falling

between the broader and narrower, post-amendment language).

As

such, TTI has failed to show that prosecution estoppel should
have

precluded

Chamberlain

from

theory to the jury.

- 27 -

presenting

its

equivalents

2.

Substantial Evidence of Equivalents

Next, TTI argues that Chamberlain failed to present the
jury with substantial evidence on the doctrine of equivalents
theory.

Such

evidence

must

establish

“equivalency

on

a

limitation-by-limitation basis by particularized testimony and
linking argument as to the insubstantiality of the differences
between

the

process.”
1334,

1342

claimed

invention

and

the

accused

device

or

Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d
(Fed.

Cir.

2016)

(internal

quotations

omitted)

(quoting Tex. Instruments Inc. v. Cypress Semiconductor Corp.,
90 F.3d 1558, 1566 (Fed. Cir. 1996)).
Here,

TTI

argues

that

Chamberlain

failed

generally

to

provide evidence showing equivalents for claims 5 and 14 and
failed

specifically

to

provide

equivalency

evidence

unique identifier limitation required in claims 1 and 14.

of

the

These

assertions do not accurately describe the evidence presented as
trial.

Dr. Rhyne clearly articulated the basis for his belief

concerning
(concluding

equivalency
with

“[w]e

for
have

claim
[now

1.

(Rhyne

discussed

Tr.
every

267:16-296:9
element

of

claim 1], and I’ve explained why in my opinion each and every
element is met either literally under the way I think the claim
ought to be interpreted or under the doctrine of equivalents
under the way TTI thinks it should be interpreted.”).)
- 28 -

Claim 5

incorporates all of the limitations of claim 1, which Dr. Rhyne
explained at trial: “[Claim 5] basically is what’s called a
dependent claim. So it starts out by saying ‘the movable barrier
operator of Claim 1.’ So to infringe claim 5, you’ve got to meet
all the limitations of claim 1.” (Rhyne Tr. 296:13-16.)

At

trial,

of

then,

infringement

Chamberlain
under

the

needed

to

present

evidence

doctrine

of

equivalents

for

all

limitations of claim 1—which, as discussed, it did—as well as
for the limitation unique to claim 5.

That remaining limitation

concerns the ‘275 patent’s reliance on a “plurality of operating
states [that] includes at least one of” any of the fourteen
listed states, including, for example, “moving a movable barrier
in a first direction; moving the movable barrier in a second
direction; . . . halting movement of the movable barrier; . . .
receiving
lighting

a

wireless

status

remote

change.”

control

(‘275

signal;

Patent

. . .

8:30-36,

[and]

Dkt.

a

1-2.)

There was no shortage of evidence at trial concerning the Ryobi
GDO’s

equivalent

use

of

a

“plurality

of

operating

states.”

(See, e.g., Rhyne Tr. 275:15-20 (reciting operating states in
Ryobi GDO, including light states and door position states),
354:4-22

(discussing

plurality

of

GDO).)

- 29 -

operating

states

in

Ryobi

As to claim 14: Dr. Rhyne testified that claim 15 depends
from

claim

14.

He

also

testified

that

the

Ryobi

devices

infringe on all of the elements in claim 14, including the two
elements that do not also appear in claim 1.
299:24.)
present

TTI’s
evidence

final

argument—that

concerning

the

(Rhyne Tr. 298:23-

Chamberlain

unique

identifier

failed

to

limitation

required in claims 1 and 14—similarly ignores testimony and thus
fails.

(Rhyne

Tr.

294:15-295:3

(explaining

the

unique

identifier recited in claim 1 and describing a similar unique
identifier

employed

characterizations
accurate.

of

by

the

the

Ryobi

evidence

devices).)

In

produced

trial

at

sum,

TTI’s

are

not

Through Dr. Rhyne, Chamberlain produced substantial

evidence in support of its doctrine of equivalents theory on a
limitation-by-limitation basis.
1342.

See, Akzo Nobel, 811 F.3d at

TTI’s JMOL Motion on this ground is denied.
E.

TTI Induces Infringement of the ‘275 Patent

TTI has no argument here. “Inducement can be found where
there is ‘[e]vidence of active steps taken to encourage direct
infringement,’ which can in turn be found in ‘advertising an
infringing use or instructing how to engage in an infringing
use.’”

Takeda Pharm. U.S.A., Inc. v. W.-Ward Pharm. Corp., 785

F.3d 625, 630-31 (Fed. Cir. 2015) (quoting Metro-Goldwyn-Mayer
Studios

Inc.

v.

Grokster,

Ltd.,
- 30 -

545

U.S.

913,

936

(2005)).

“Such

instructions

need

to

evidence

‘intent

to

encourage

infringement.’”

Id. (quoting Vita-Mix Corp. v. Basic Holding,

Inc.,

1317,

581

testified

F.3d
about

1329

(Fed.

advertising

Cir.

language

2009)).

appearing

Dr.
on

Rhyne

the

Ryobi

website and Ryobi’s GDO packaging that showcases the capability
to “[m]ake your garage smart.
your garage door remotely.”

Control, monitor, and personalize
(Rhyne Tr. 306:12-307:24.)

And the

jury found that the Ryobi devices infringe the ‘275 patent.
reasonable

jury

find

Ryobi’s

that

having

made

that

advertisements

determination
encouraging

could

users

A

further

to

deploy

Ryobi GDOs for an infringing use constitute inducement.

TTI’s

JMOL Motion is denied on this ground.
F.

Willful Infringement of the ‘275 Patent

The Court will not overturn the jury’s finding that TTI
willfully infringed the ‘275 patent.

As set forth in greater

detail below, the jury heard evidence that TTI knew before it
developed the Ryobi GD200 that: (1) Chamberlain had a broad GDOrelated patent portfolio, (2) as such, development in the GDO
space would be hazardous, and (3) the ‘275 patent existed and
covered Chamberlain’s GDO.
repeated

assertion

that

its

(See, infra at Part IV.)
engineers

who

TTI’s

deconstructed

the

Chamberlain GDO “did not see” the ‘275 patent marking on the
device is at this point feckless.
- 31 -

(Mem. in Supp. of JMOL at 26,

Dkt. 618.)

The jury heard this, too, and apparently found it

incredible or at least not exculpating in light of the many
other ways TTI was put on notice of the ‘275 patent and the
general dangers of possibly treading on Chamberlain’s GDO IP.
(See, infra at Part IV.)

TTI’s JMOL Motion is denied as to the

jury’s willfulness determination.
G.

Invalidity of ‘966 Patent Based on Prior Art
1.

Craftsman Prior Art – Anticipation

At trial, the parties’ experts debated whether a Craftsman
GDO in prior art anticipated the ‘966 patent.

Through related

testimony, the jury heard substantial evidence of a limitation
recited

by

the

‘966

Craftsman prior art.
F.3d

at

1381

anticipated

by

claims

is

not

disclosed

by

the

35 U.S.C. § 102; Liebel-Flarsheim Co., 481

(reciting
prior

that

art

that
only

patent
if

claims

that

art

are

invalid

discloses

every

limitation of the claimed invention).
Claim 9 recites:
9. A battery charging apparatus, comprising:
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, the at least one rechargeable
battery being removably connectable to electrically
powered equipment other than and physically separate
or separable from the barrier movement operator to

- 32 -

as

provide power to the electrically powered equipment;
and
circuitry
electrically
connected
to
the
battery
charging station to supply power from the at least one
rechargeable battery to the head unit.
(‘966 Patent 8:8-22, Dkt. 1-1.)

Although claim 9 recites a

“removably connectable” battery, the Craftsman GDO recites no
such limitation.

The Court construed “removably connectable” as

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

Chamberlain, 2017 WL 1304559, at

*24; accord Rhyne Tr. 1317:9-12 (reciting same).

The Ryobi GDOs

have batteries that “just snap[] out,” but the Craftsman GDO
battery is attached by screws to either the top of the GDO or to
the

ceiling

above

the

GDO.

(Rhyne

Tr.

1316:17-1318:6.)

According to Dr. Rhyne, the Craftsman battery must be screwed in
one way or another, because otherwise the battery could fall off
the unit when it vibrates while raising or lowering the door.
(Id. at 1316:17-21.)

In contrast, TTI’s technical expert, Dr.

Foley, maintained that a user’s ability to remove those screws
rendered the Craftsman battery removably connectable, but Dr.
Rhyne rebutted that interpretation:
I think [that in explaining his position as to why the
Craftsman battery is removable connectable, Dr. Foley]
said, ‘Well, I could go up there and undo the screws
or something.’ That certainly isn’t something that the
typical garage door user - think about it for
yourself. Are you going to go up there, back your car
- 33 -

out, get up on a ladder, and go up and unscrew it just
so you can move it to another garage door, maybe if
you have a two-car garage, especially when that other
door already has a battery bolted on top of it to
start with. That’s just not – that’s not a reasonable
interpretation of the claim.
(Rhyne

Tr.

The

jury

interpretation,

Rhyne’s

1317:16-24.)

which

apparently

the

Court

credited

agrees

Dr.

provided

substantial evidence from which the jury reasonably could have
concluded that the Craftsman prior art did not anticipate the
‘966

patent.

See,

Akamai

Techs.,

Inc.

v.

Cable

&

Wireless

Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003).
But there is more.

There is another limitation in claim 9

which the parties debate at length.

That claim discloses a

battery removably connectable “to electrically powered equipment
other than and physically separate or separable from the barrier
movement operator.”

(‘966 Patent 8:15-17, Dkt. 1-1.)

At trial,

Dr. Foley opined that the other electrically powered equipment
disclosed

here

could

be

a

second

GDO,

and

that

such

an

arrangement is possible under the Craftsman prior art.

Dr.

Rhyne

his

disagreed,

and

relied

on

the

specification

for

conclusion that the other equipment cannot simply be a second
GDO, and thus the ‘966 patent discloses a limitation not present
in Craftsman.

(Rhyne Tr. 1315:10-1316:11.)

“[W]hen there is

conflicting testimony at trial, and the evidence overall does

- 34 -

not make only one finding on the point reasonable, the jury is
permitted

to

make

credibility

determinations

witness it considers more trustworthy.”

and

believe

the

MobileMedia Ideas, LLC

v. Apple Inc., 780 F.3d 1159, 1168 (Fed. Cir. 2015) (citation
omitted).

The evidence did not make only one of the witnesses’

interpretations reasonable, so the Court will not disturb the
jury’s

finding

that

Craftsman

did

not

anticipate

the

‘966

patent.
2.

Crusius Prior Art – Anticipation and Obviousness

Parallel
Crusius

problems

prior

art.

doom
As

TTI’s

with

JMOL

Motion

Craftsman,

Crusius anticipates the ‘966 patent.

TTI

concerning
maintains

the
that

But Dr. Rhyne testified

that Crusius does not invalidate any of the ‘966 claims because
the Crusius patent “covers essentially the same thing as the
Craftsman battery.”
Crusius

patent

(Rhyne Tr. 1324:7-19.)

does

not

disclose

a

He added that the

“removably

connectable”

battery nor any separate equipment that could be powered by the
battery.

(Id.)

Dr. Foley contradicted this latter finding in

much the same way as he did Dr. Rhyne’s opinions on Craftsman,
that is, by explaining that the Crusius battery could be plugged
into a second GDO and thereby satisfy the “powered equipment
other

than

limitation.

and
Again,

physically
Dr.

separate

Rhyne
- 35 -

or

explained

separable
that

the

from”
‘966

specification required “separate” equipment other than a second
GDO, and the jury was entitled to credit his interpretation over
Dr. Foley’s competing one.
As

for

MobileMedia Ideas, 780 F.3d at 1168.

obviousness,

TTI

does

not

articulate

any

justification for its belief that no reasonable jury could have
failed to find that the Crusius prior art renders obvious the
asserted claims.
Dr.

Rhyne

And to any extent, Chamberlain points out that

testified

regarding

secondary

considerations

of

nonobviousness which the jury may, and apparently did, choose to
credit.

See, Transocean Offshore Deepwater Drilling, Inc. v.

Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012)
(considering

commercial

success,

industry

praise,

unexpected

results, copying, industry skepticism, licensing, and long-felt
but unsolved need in the court’s analysis of secondary indicia
of

nonobviousness).

internal

patent

Specifically,

disclosure

filled

Dr.
out

Rhyne
by

described
TTI

employees

describing an idea similar to the ‘966 patent claims:
Q: Okay. And then the last topic for you, Dr. Rhyne,
secondary considerations with respect to the ‘966
patent. Have you seen any secondary considerations to
show that the ‘966 claims are not obvious?
A: Yes.
. . .
[Introducing the internal patent disclosure]

- 36 -

an

. . .
A. [Reading from the disclosure:] “Our idea is to
power the garage door opener from one or more
removable
battery
packs
such
as
a
power
tool
battery. . . . Another facet of this invention is the
ability to potentially charge the battery packs while
inserted into the garage door.” They’re saying they
thought that this was something, evidence of a longfelt need. Unfortunately, it was. It’s just that the
need had already been met by Chamberlain.
Q. Exactly. And just for clarity, this is a form by
TTI that was filled out, I guess, before or after the
‘966 patent?
A. After.
(Rhyne Tr. 1324:20-1326:2 (emphasis added).)

According to Dr.

Rhyne,

demonstrated

TTI’s

internal

patent

disclosure

an

industry-perceived, long-felt need for a GDO using a removably
connectable,

rechargeable

‘966 patent teaches.
nexus

between

the

battery,

which

is

exactly

what

the

Chamberlain thus presented the jury with a
evidence

and

the

merits

of

the

claimed

invention as required for the jury to accord these secondary
considerations of nonobviousness substantial weight.

FastShip,

LLC v. United States, 131 Fed. Cl. 592, 620 (2017) (quoting
Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)).
In sum, because the jury heard substantial evidence that
the Crusius prior art neither anticipated nor rendered obvious
the

‘966

patent

claims,

TTI

has

stemming from Crusius.
- 37 -

no

basis

for

JMOL

relief

3.

Weik Prior Art – Anticipation and Obviousness

TTI’s contentions concerning the Weik prior art ultimately
meet with the same outcome as the other prior art arguments
considered

above.

The

Weik

patent

teaches

a

motor-operated

door, and discloses “two different embodiments, one of which has
a portable battery and no charger and one of which has a nonportable battery but does have a charger.”
1323:3.)

(Rhyne Tr. 1322:2-

TTI does not argue that either embodiment, on its own,

anticipates or renders obvious the ‘966 patent.

Instead, TTI

argues these problems arise for the ‘966 patent once the two
Weik embodiments are combined.

Neither of these arguments meets

the high bar required to merit JMOL.
First, to obviousness: “Combining two embodiments disclosed
adjacent to each other in a prior art patent does not require a
leap

of

inventiveness”;

accordingly,

render an asserted patent obvious.

such

combinations

can

Boston Sci. Scimed, Inc. v.

Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).

However,

“[o]bviousness may be defeated if the prior art indicates that
the invention would not have worked for its intended purpose or
otherwise

teaches

away

from

the

invention.”

Meiresonne

v.

Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (citing DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
1326

(Fed.

Cir.

2009)).

“A

reference

- 38 -

teaches

away

‘when

a

person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken’ in the claim.”

Id. (quoting Galderma Labs., L.P. v.

Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)).
explained

at

trial

that

the

Weik

patent

Dr. Rhyne

teaches

away

from

combining the two embodiments: The integrated charger embodiment
offers the benefit of not requiring service personnel to bring a
rechargeable

battery

with

them

when

they

service

the

motor-

operated door taught by Weik, and, further, if service personnel
brought

a

rechargeable

battery

to

such

a

door,

the

trickle

charger—which is designed to keep the plugged-in battery always
charged—would

take

installed battery.

“a

couple

of

hours”

to

(Rhyne 1321:23-1324:6.)

charge

the

newly

Dr. Foley expressed

a competing opinion, noting that the Weik patent teaches that
“there are many ways to interconnect various electrical elements
to achieve the functions [of the Weik invention],” which Dr.
Foley took as “teaching . . . to take the trickle charger from
[the integrated embodiment] and drop it [into the non-integrated
embodiment].”

(Foley Tr. 940:20-941:4.)

But once more, because

Dr. Foley’s is not the only reasonable interpretation on this
point, the Court will not overrule the jury’s apparent credit

- 39 -

for Dr. Rhyne’s testimony over his counterpart’s.

MobileMedia

Ideas, 780 F.3d at 1168.
Next,

to

anticipation:

TTI

correctly

points

out

in

its

reply that whether prior art “teaches away” from combinations is
only a part of the obviousness analysis and “is not relevant to
an anticipation analysis.”

Krippelz v. Ford Motor Co., 667 F.3d

1261, 1269 (Fed. Cir. 2012) (citation omitted) (emphasis added).
As

such,

teaching

Dr.

Rhyne’s

testimony

from

combining

away

substantial

evidence

against

concerning
its

the

Weik

embodiments

anticipation.

patent’s

cannot

be

this,

TTI

Given

suggests that combining the embodiments covers every limitation
in the ‘966 patent, and so the Weik combination anticipates, and
thus invalidates, the patent.
combinations

of

adjacently

TTI’s argument is faulty.
disclosed

embodiments

Though
may

be

considered under the obviousness analysis, the same is not true
for anticipation.
F.3d

1052,

1069

See, Microsoft Corp. v. Biscotti, Inc., 878
(Fed.

Cir.

2017)

(citations

omitted)

(“[A]nticipation is not proven by ‘multiple, distinct teachings
that the artisan might somehow combine to achieve the claimed
invention.’”).

TTI suggests that Dr. Foley testified that “it

is

to

appropriate

use

anticipation analysis.”

elements

from

the

two

figures

in

his

(Resp. at 36, Dkt. 618 (citing Foley

Tr. 940:3-15, 1023:18-19).)

If this was Dr. Foley’s method, it
- 40 -

was improper as a matter of law.
that

no

one

Weik

embodiment

And because Dr. Foley conceded
anticipates

all

of

claim

9’s

limitations, the jury was entitled to find that the Weik patent
did not anticipate that claim.

(See, Foley Tr. 1023:14-19 (“Q:

[Y]ou couldn’t get all the elements of the claim here from one
of the embodiments, you needed to mix and match from the two
embodiments; is that right? A: I pulled from both as Weik very
clearly says modifications are expected.”).)

TTI’s JMOL Motion

is denied on these grounds.
H.

Literal Infringement of ‘966 Patent

Dr. Rhyne walked through each element of each of claims 9,
14, and 15-18 of the ‘966 patent and explained that the Ryobi
GDO infringes each one.

(Rhyne Tr. 318:11-328:1.)

Against this

evidentiary backdrop, TTI argues that a reasonable jury still
could not find TTI literally infringed because the ‘966 patent
recites “a battery charging station in electrical communication
with a rechargeable battery” and “a method of power flow between
at least one rechargeable battery, a barrier movement operator,
[and] electrically powered equipment other than and physically
separate

or

separable

from

the

barrier

movement

operator.”

(‘966 Patent 8:10-11, 40-44, Dkt. 1-1 (emphasis added).)

TTI

maintains, not for the first time, that because it does not sell
the

Ryobi

GDOs

with

rechargeable
- 41 -

batteries

or

any

other,

separate

electrical

equipment,

they

cannot

be

found

to

have

infringed the ‘966 patent.
While

“one

may

not

be

held

liable

under

§

271(a)

for

‘making’ or ‘selling’ less than a complete invention,” Rotec
Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1252 (Fed. Cir.
2000), several courts have found that where an alleged infringer
sells “all of the elements of the patented combination as a
single, albeit disassembled, unit,” reasonable juries may find
that the defendant sells a complete system and thus infringes.
EBS Auto. Servs. v. Ill. Tool Works, Inc., No. 09 CV 996, 2011
WL 4021323, at *8 (S.D. Cal. Sept. 12, 2011); see also, St.
Clair

Intellectual

Prop.

Consultants,

Inc.

v.

Toshiba

Corp.,

No. CV 09-354, 2014 WL 4253259, at *3 (D. Del. Aug. 27, 2014)
(denying

defendant’s

motion

for

summary

judgment

on

non-

infringement where defendant sold “separate components that, if
attached together, may infringe the patent”); Immersion Corp. v.
Sony Computer Entm’t Am., Inc., 2005 U.S. Dist. LEXIS 4777, at
*16-17 (N.D. Cal. Jan. 10, 2005) (denying JMOL where defendant
advertised and sold the accused products as part of a “system,”
frequently

highlighted

compatibility

between

those

separately

sold elements, and end-users needed only perform “a few simple
steps” to connect the elements, even though end-users could use
combined system in non-infringing manner if they so chose).
- 42 -

Here, Chamberlain presented evidence that the Ryobi GDOs
and

the

Ryobi

battery

are

configured

to

fit

and

operate

together, and that both the GDOs’ packaging and a video on the
Ryobi website suggest coupling the GDO and the battery.
Tr. 407:10-408:21.)

(Rhyne

Dr. Rhyne further testified that “[This is]

the way Ryobi advertises.
features of this system.

It’s part of all of the benefits and
It’s important to have that battery in

there to give you backup in case the AC power goes out.”
408:18-21.)

(Id.

In addition, Dr. Rhyne testified that at some point

(though no longer) Ryobi gave consumers a free battery when they
purchased

a

GDO.

(Id.

328:18-24.)

From

this

testimony,

a

reasonable jury could conclude that TTI’s sale of its GDO and
battery

comprise

a

complete

system

which

infringes

the

‘966

patent.
Finally, TTI’s argument that Chamberlain failed to produce
substantial

evidence

showing

the

Ryobi

GDOs

infringe

the

limitation in claims 15-18 concerning a method of power flow
between a rechargeable battery, a barrier movement operator, and
“electrically

powered

equipment

other

than

and

physically

separate or separable from the barrier movement operator” fairs
no better.

Dr. Rhyne testified that the Ryobi system provided

power from the battery to other electrically powered equipment
such as “drills, saws, and flashlights.”
- 43 -

(Rhyne Tr. 326:14;

accord id. at 327:23-328:1.)

TTI’s Motion for JMOL on literal

infringement of the ‘966 patent is denied.
I.

Induced Infringement of ‘966 patent

To win a claim for induced infringement, a plaintiff must
prove

specific

intent

and

action

to

induce

infringement.

Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d
1352,

1364

(Fed.

Cir.

2017).

TTI

points

to

evidence

that

approximately eighty percent of Ryobi GDO purchasers do not use
rechargeable,

Ryobi

One+

batteries

in

conjunction

with

their

GDO, and that “where a product has substantial noninfringing
uses, intent to induce infringement cannot be inferred even when
the [alleged inducer] has actual knowledge that some users of
its product may be infringing the patent.”

Warner-Lambert Co.

v. Apotex Corp., 316 F.3d 1348, 1365 (Fed. Cir. 2003).

However,

“liability for active inducement may be found ‘where evidence
goes beyond a product’s characteristics or the knowledge that it
may be put to infringing uses, and shows statements or actions
directed to promoting infringement.’” AstraZeneca LP v. Apotex,
Inc., 633 F.3d 1042, 1059 (Fed. Cir. 2010) (quoting Grokster,
545 U.S. at 935) (citation omitted).
. . .

taken

to

encourage

direct

“Evidence of active steps
infringement,

such

as

advertising an infringing use or instructing how to engage in an

- 44 -

infringing use, show an affirmative intent that the product be
used to infringe.”

Id. (quoting Grokster, 545 U.S. at 936).

Here, Dr. Rhyne testified that TTI encourages consumers to
use a Ryobi One+ battery with the Ryobi GDO.

Specifically, Dr.

Rhyne described how TTI advertised, including on the Ryobi GDO
packaging, that the GDO was battery compatible and that the two
should be combined. (Rhyne Tr. 328:2-330:15.)

This suffices for

substantial evidence from which a reasonable jury could conclude
that TTI took action directed to promoting infringement.
AstraZeneca, 633 F.3d at 1059.

See,

In light of that, the Court will

not disturb the jury’s findings by granting JMOL.
J.

Willful Infringement of the ‘966 Patent

As with the ‘275 patent, the Court declines to overturn the
jury’s finding that TTI willfully infringed the ‘966 patent.
The

jury

heard

evidence

that

TTI

investigated

possible

IP

pitfalls and learned about the ‘966 patent as far back as 2010.
(See, e.g., Huggins Tr. 609:23-611:10.)

And yet, as described

more fully below, the jury heard very little, if any, evidence
of TTI taking steps to avoid infringing the ‘966 patent, even
though TTI was well aware of it.

(See, infra at Part IV.)

A

reasonable jury could well conclude from this evidence that TTI
willfully infringed the ‘966 patent, so the Court will not grant
JMOL on this ground.
- 45 -

K.

Damages Verdict

At last, TTI challenges the jury’s finding that Chamberlain
is

entitled

to

lost

profits

damages.

One

useful,

but

non-

exclusive method to establish a patentee’s entitlement to lost
profits is the Panduit test, which requires four showings: (1)
“demand for the patented product”; (2) “absence of acceptable
noninfringing

substitutes”;

(3) “manufacturing

and

marketing

capability to exploit the demand”; and (4) “the amount of profit
that . . . would have [been] made.”

Georgetown Rail Equip. Co.

v. Holland L.P., 867 F.3d 1229, 1241 (Fed. Cir. 2017) (quoting
Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.2d 1152, 1156
(6th Cir. 1978)) (alternations in original).
TTI argues that Chamberlain could not satisfy the second
Panduit

factor

acceptable,

because

noninfringing

the

Genie

Aladdin

substitute

during the relevant timeframe.

available

Connect
on

was

the

an

market

True, the evidence at trial

demonstrated that the Aladdin Connect was available, (Hansen Tr.
491:7-11),

and

non-infringing,

(Rhyne

Tr.

392:18-22),

but

it

does not necessarily follow that it was also an “acceptable
substitute.”
testimony
Shortly

TTI puts a lot of stock in one selection from

given

after

by

Chamberlain’s

Hansen

acknowledged

- 46 -

damages
that

expert,
Home

Mr.

Depot

Hansen.

sold

the

Aladdin

Connect

during

the

relevant

timeframe,

the

following

exchange occurred:
Q. And so at least as far as Home Depot is concerned,
that system is acceptable?
A. It’s – it’s an alternative. It’s an alternative
that they make available for their customers, provide
an additional choice.
Q. It’s an acceptable alternative to Home Depot?
A. I would agree that it’s acceptable to Home Depot. I
wouldn’t expect them to sell products that they don’t
think are acceptable at some level.
(Hansen Tr. 492:2-10.)

But all Hansen says here is that Home

Depot finds the Aladdin Connect to be an acceptable product to
stock and sell.

Absent from this selection is any indication

that this product, beyond being an acceptable “alternative,” is
an acceptable substitute for the infringing Ryobi GDOs.
“[m]ere

existence

of

a

competing

device an acceptable substitute.”

device

does

not

The

make

that

TWM Mfg. Co. v. Dura Corp.,

789 F.2d 895, 901 (Fed. Cir. 1986).

Further, a “product lacking

the

can

advantages

substitute

Aladdin

infringing

that

‘acceptable’

advantages.”
The

of

patented
to

the

hardly

customer

who

be

termed

wants

a

those

Id. (quoting Panduit Corp., 575 F.2d at 1162).
Connect

Ryobi

GDOs

acceptable substitute.

does
and

not
so

share
TTI

the

cannot

advantages
hold

it

out

of
as

the
an

For one, the Aladdin Connect employs a

- 47 -

separate, powered wall control and a door sensor, which require
additional setup, providing a greater chance for “frustration
and/or failure.”
lacks

the

(Sorice Tr. 182:5.)

out-of-the-box

connectivity

The Aladdin Connect thus
that,

according

to

the

record, makes the Chamberlain and Ryobi GDOs uniquely attractive
to

vendors

and

customers

alike.

(See,

Farrah

Tr.

519:4-8;

accord Hansen Tr. 483:2-484:12, 497:6-498:12.)
On the basis of this evidence, a reasonable jury could find
“a reasonable probability” that the Ryobi GDO sales would not
have

been

made

but

for

the

infringement.

See,

Presidio

Components, Inc. v. Am. Tech. Ceramics Corp., 702 F.3d 1351,
1361 (Fed. Cir. 2012) (citation omitted).

The jury’s damages

finding will thus stand.
II.

TTI’s Motion for a New Trial

Under Federal Rule of Civil Procedure 59, a new trial may
be

granted

where

“the

verdict

is

against

the

weight

of

the

evidence, the damages are excessive, or if for other reasons the
trial was not fair to the moving party.”

Mid-Am. Tablewares,

Inc. v. Mogi Trading Co., 100 F.3d 1353, 1367 (7th Cir. 1996)
(citations and internal quotations omitted).

The trial court

may assess the credibility of the witnesses and the comparative
strength of the facts put forth at trial, but should maintain
certain deference to the jury’s conclusions.
- 48 -

Galvan v. Norberg,

678 F.3d 581, 588 (7th Cir. 2012) (citation omitted). TTI argues
that

there

are

four,

independently

sufficient

reasons

it

is

entitled to a new trial: (1) the Court erroneously permitted the
jury to determine the scope of the claims; (2) prejudicial and
erroneous evidentiary rulings; (3) inconsistent verdicts given
the

Court’s

doctrine-of-equivalents

instruction;

and

(4)

the

Court should have granted TTI’s pre-trial motion to transfer
venue.
A.

Whether the Jury Determined the Scope of the Claims

This marks the latest instantiation of TTI’s argument that
the

‘275

patent

claims

require

transmitting

conditions/states occurring at the same time.

two

The heart of the

matter is the meaning behind this language, from claim 1: “a
present operational status condition defined, at least in part,
by at least two operating states from the plurality of operating
states.”

(‘275 Patent, 8:15-17, Dkt. 1-2.)

TTI points to the

Court’s end-of-trial statement that “there was a clear dispute
between the experts on what ‘defined’ means” (Tr. 1391:1-3) to
argue that there was thus a “fundamental dispute regarding the
scope of a claim term,” which must be resolved by the Court and
not the jury.

O2 Micro Int’l Ltd. v. Beyond Innovation Tech.

Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).

TTI argues the

situation at bar mirrors the Federal Circuit decisions in O2
- 49 -

Micro and NobelBiz, Inc. v. Global Connect, L.L.C., 701 F. App’x
994, 998 (Fed. Cir. 2017), in which the Federal Circuit vacated
jury verdicts after the respective district courts permitted the
jury to determine the scope of the asserted claims.
The Court does not see the parallel between those cases and
this one.

In both of those cases, the parties “presented a

clear dispute regarding the proper scope of the claims” during
pre-trial claim construction.

NobelBiz, 701 F. App’x at 997;

cf. O2 Micro, 521 F.3d at 1359 (noting that parties argued over
at-issue

construction

during

Markman

hearing).

In

both

instances, the district court failed to provide any construction
for the contested element, choosing instead to allow the “plain
and ordinary meaning” to prevail.
997;

O2

Micro,

521

F.3d

at

1361

NobelBiz, 701 F. App’x at
(reciting

district

court’s

refusal to “construe claim terms that have a well-understood
meaning”).

The Federal Circuit took issue with both district

court determinations, opining that the respective trial courts
“failed to resolve the parties’ dispute[s] because the parties
disputed not the meaning of the words themselves, but the scope
that should be encompassed by th[e] claim language.”

O2 Micro,

521 F.3d at 1361 (emphasis in original); cf. NobelBiz, 701 F.
App’x at 997.

- 50 -

But the pattern present in NobelBiz and O2 Micro is not
present

here.

“defined”;

TTI

rather,

did

the

not

press

parties

for

sought

a

a

construction

construction

of

of
the

encapsulating claim language “a controller having a plurality of
potential

operational

status

part,

a

of

by

provided,
example,

plurality

to
a

wit:

“a

conditions

operating

states.”

programmable

microprocessor,

a

defined,

at

This

platform

least
the

(such

microcontroller,

a

in

Court

as,

for

programmable

logic or gate array, or the like), that can obtain, though selfawareness
from

or

through

sensors),

two

externally
or

more

developed
potential

information
operational

(e.g.,
status

conditions defined, at least in part, by two or more operational
conditions
platform].”

being

experienced

by

the

controller

[programmable

Chamberlain, 2017 WL 1304559, at *8 (brackets in

original) (emphasis added).

While it is true that TTI initially

suggested in its opening Markman briefs that “defined by” should
be should be construed as “determined by” (Dkt. 151 at 10-11,
14; Dkt. 188 at 7-8), TTI apparently abandoned that suggestion
before the Court ruled.

As Chamberlain observes, TTI ended up

proposing a construction that mimics the “defined by” language
TTI now claims spawned a grave legal error.

(TTI’s Supp. Claim

Constr. at 11, Dkt. 286 (proposing construction: “ . . . where
each

potential

status

condition

is

- 51 -

defined

by

at

least

two

actions that can be performed by the controller at a particular
time”).)
Markman

Indeed, the Court went so far as to note in its
decision

that

“[n]either

side

proposes

to

construe

‘defined,’” Chamberlain, 2017 WL 1304559, at *10—an observation
that TTI never took issue with until after the close the trial.
Ultimately,

TTI’s

complaint

is

not

directed

to

some

purported failure by the Court to define the scope of these
claims.

Rather, TTI is simply relitigating its already-defeated

grievance that the Court’s construction of claim 1 was different
than what TTI urged.
construe

the

recited

As described, TTI urged the Court to
status

condition

performed by the controller.
light

of

states’

the

uniformly
consulting
claim

or

in

as

the

dependent

broadly”

prosecution

construction

ruling

defined

by

actions

But the Court declined to do so in

specification,

recited

as

as

observing
claim
TTI

history
in

this

that

5

the

[cannot]

suggested.
and

the

case,

“‘operating
be

read

Id.

After

Federal

the

Court

as

Circuit’s
construed

“operating states” not as actions taken by the controller, but
rather

as

“operational

controller.”
this

Id. at *13.

litigation

that

conditions

being

experienced

by

the

Further, the Court made clear during
the

“operational

conditions

being

experienced” are not limited, in the Court’s construction, to

- 52 -

only potential or only present conditions.

(See, e.g., June 21,

2017, Summary Judgment Order at 4, Dkt. 397.)
In its new trial Motion, TTI basically argues that even
though the parties did not propose or seek a construction of
“define,” the Court’s construction of the encapsulating claim
language

did

not

scope of claims.

provide

sufficient

clarification

as

to

the

(Mem. in Supp. of New Trial at 5, Dkt. 620

(“The Court provided little guidance. . . .”).)

This is odd.

If TTI believed the Court’s constructions were not sufficient,
TTI should have requested further construction.

Yet this TTI

never did, even as discovery progressed and the parties’ experts
began tendering their reports.

Now TTI maintains that these

experts testified not to the meaning of the construed language,
but rather to the claim scope, and that the Court then submitted
those

competing

interpretations

of

law

to

the

jury

for

deliberation.
There is problem with TTI’s argument.

Put simply, beyond

TTI’s initial, and quickly abandoned, suggestion that the Court
construe “defined by” as “determined by,” TTI never requested
that

the

Court

construe

this

now-challenged

phrase,

nor

suggested that some allegedly lacking construction could open
the door to legal error.
experts

testified—TTI

TTI did not object while Chamberlain’s
would
- 53 -

now

presumably

argue

inappropriately—concerning the meaning of “experienced by,” nor
when the Court instructed the jury and placed this question in
their hands.

“[L]itigants waive their right to present new

claim construction disputes if they are raised for the first
time after trial.”

Broadcom Corp. v. Qualcomm Inc., 543 F.3d

683, 694 (Fed. Cir. 2008) (quoting Conoco, Inc. v. Energy &
Envtl. Int’l, L.C., 460 F.3d 1349, 1358-59 (Fed. Cir. 2006)).
And that is what TTI is attempting to do.

TTI leans on the

Court’s close-of-trial (but pre-jury-deliberation) comment that
a “clear dispute” existed between the experts on what “defined”
means, but in making that remark, the Court was thinking only of
the factual dispute between experts concerning the meaning of
the claim term.

If a misapprehension of this comment struck TTI

like a lightning bolt and for the first time caused TTI to see
some legal deficiency in the Court’s constructions, TTI should
have said so.

Because TTI did not, TTI has waived this claim

construction argument.
court

construe

the

TTI never requested that the district

complained-of

term

and

did

not

offer

a

construction; instead, TTI waited until “after the presentation
of all of the evidence to the jury [to] even suggest that claim
construction might be helpful to determine the proper scope of
the

claimed

Corporation,

invention.”
376

F.3d

Eli

1352,

Lilly

1360
- 54 -

&

(Fed.

Company
Cir.

v.

2004)

Aradigm
(finding

defendant had waived its right to request claim construction).
TTI’s request comes too late.
B.
Before

trial,

TTI

It has waived the argument.

Evidentiary Rulings.
moved

in

limine

to

exclude

that

the

Patent Trial and Appeal Board (“PTAB”) declined to institute
inter partes

reviews (“IPRs”) of the asserted patents.

The

Court denied that motion, and TTI now argues that permitting
this evidence to go to the jury created prejudice and juror
confusion that necessitates a new trial.
different

claim

constructions

than

did

The PTAB relied on
this

Court,

and

TTI

argues that allowing this evidence risks that the jury could
have improperly substituted the PTAB decisions—or Chamberlain’s
characterization of those decisions—for the jury’s own findings.
The

Court

disagrees.

Partnership,

564

U.S.

In
91,

Microsoft
111

(2011),

Corp.
the

v.

i4i

Supreme

Ltd.
Court

explained that improper effects on juries of introducing PTO
determinations

can

be

mitigated

with

a

limiting

instruction:

“When warranted, the jury may be instructed to consider that it
has heard evidence that the PTO had no opportunity to evaluate
before granting the patent.

When it is disputed whether the

evidence presented to the jury differs from that evaluated by
the PTO, the jury may be instructed to consider that question.”
TTI requested, and the Court gave, such an instruction in this
- 55 -

case: “The ‘275 and ‘966 patents were the subject of proceedings
at the Patent Office called inter partes reviews (“IPR”).

The

legal standards applied by the Patent Office differ from the
legal standards that you must apply. For example, Patent Office
proceedings may have involved different claim constructions than
this Court’s claim constructions.”
Dkt. 606.)

Allowing the PTAB history was not an evidentiary

error warranting a new trial.
Universal

(Jury Instruction No. 33,

Remote

Control,

Cf. Universal Elecs., Inc. v.

Inc.,

No.

CV 12-00329,

2014

WL

8096334, at *7 (C.D. Cal. Apr. 21, 2014) (denying motion in
limine seeking to exclude evidence of PTO’s rejection of IPR
petition).
TTI also argues that the Court erred by applying Local
Patent Rule 3.4’s good cause standard in barring the tardilydisclosed Kikuya reference and the Weik device.

But the Federal

Circuit has explained that the use of local patent rules falls
within a district court’s “broad power to control its docket and
enforce its order.”

Keranos, LLC v. Silicon Storage Tech.,

Inc., 797 F.3d 1025, 1035 (Fed. Cir. 2015) (citations omitted).
TTI failed to show good cause for its late amendments to its
invalidity contentions, and this Court permissibly barred the
prior art.

See, United States v. Calabrese, 572 F.3d 362, 368

(7th Cir. 2009) (district courts have “broad latitude to control
- 56 -

the admission of evidence”).

TTI’s assertion that this excluded

prior art would have been relevant to the case does not change
the fact of its proscriptively tardy disclosure.
C.

Doctrine of Equivalents Grounds

TTI argues a new trial is warranted if the Court agrees, as
TTI sets out in its JMOL Motion, that the theory of equivalents
should not have gone to the jury. As described above, however,
the Court does not agree, so this first argument fails.
TTI

next

argues

doctrine-of-equivalents

that

because

infringement

literal
were

infringement

mutually

and

exclusive

options for the jury, the jury’s finding of liability on both
theories

suggests

a

new-trial-worthy

inconsistency.

True,

infringement under the doctrine of equivalents is an equitable
doctrine intended to apply ‘in situations where there is no
literal

infringement[,]

appropriate.”

but

liability

is

nevertheless

Hormone Research Found., Inc. v. Genentech, Inc.,

904 F.2d 1558, 1564 (Fed. Cir. 1990) (citation omitted).

Still,

the differences between these two theories of liability are not
“fatally inconsistent,” Adv. Display Sys., Inc. v. Kent State
Univ., No. 3-96 CV 1480, 2002 WL 1489555, at *5 (N.D. Tex.
July 10,

2002)

(collecting

cases

demonstrating

the

Federal

Circuit’s tacit approval of “the common practice of submitting
patent cases under both theories”), and the jury’s twin verdicts
- 57 -

do not mandate a new trial, see, id. (refusing to disturb the
verdict “merely because the jury found both literal infringement
and infringement under the doctrine of equivalents,” and instead
reforming the verdict and entering judgment only on the literal
infringement finding).

Beyond this, TTI waived the objection it

raises now by failing to object before the Court discharged the
jury.

See, Strauss v. Stratojac Corp., 810 F.2d 679, 683 (7th

Cir. 1987) (holding that counsel’s failure to object to alleged
inconsistencies in special interrogatories before the jury had
been discharged constituted waiver).

The Court will not on this

basis order a new trial.
D.

The Court’s Refusal to Transfer Venue

Once more, TTI raises a venue argument predicated upon the
Supreme Court’s recent decision in TC Heartland LLC v. Kraft
Foods Group Brands LLC, 137 S. Ct. 1514 (2017).
Trans. Venue, Dkt. 392.)

(Cf. TTI’s Mot.

But TTI’s argument is not identical to

the one it advanced in its pretrial motion to transfer venue;
this new version has a twist.

At issue here is the patent venue

statute, 28 U.S.C. § 1400(b), and the recently evolved case law
contrasting its scope with that of the general venue statute, 28
U.S.C.

§ 1391(c).

In

1988

and

then

2011,

Congress

amended

§ 1391 to make it broader, creating venue not only for corporate
defendants incorporated within a court’s forum, but also for
- 58 -

corporate

defendants

subject

to

that

court’s

personal

jurisdiction.

See, In re Micro Tech., Inc., 875 F.3d 1091,

1098-99

Cir.

(Fed.

2017).

Congressionally-broadened
governed
amended

by
the

§ 1400,

Courts

scope

even

of

though

patent-specific

then

began

§ 1391

Congress

statute.

See,

to
had

applying
patent
not

e.g.,

the

cases

similarly
VE

Holding

Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1582 (Fed.
Cir. 1990) (holding that the expansion of § 1391 applied to
§ 1400 as well), abrogated by TC Heartland, 137 S. Ct. 1514.
With TC Heartland, the Supreme Court put a stop to this.

The

Court held that under the patent venue statute, a corporation
only “resides” in its state of incorporation—and nowhere else.
TC Heartland, 137 S. Ct. at 1517.
This ruling raised eyebrows for parties like TTI, who by
the time of the TC Heartland decision were deeply enmeshed in
patent

litigation

in

a

forum

where

none

corporate defendants were incorporated.

of

the

domestic,

A month after the TC

Heartland opinion came out and two months before this trial was
set to begin, TTI moved this Court to transfer the case to South
Carolina.

The Court denied that motion, finding that because TC

Heartland did not represent a change in the law, TTI had waived
objections
answer

and

to

venue

(2)

by

twice

(1)

failing

admitting

that

- 59 -

to

contest

venue

was

venue
proper

in

its

here.

Chamberlain, 2017 WL 3205772, at *2 (citing Cobalt Boats, LLC v.
Sea Ray Boats, Inc., 254 F. Supp. 3d 836, 840 (E.D. Va. 2017)).
The Court also remarked upon the extensive judicial resources
already expended on this matter that would need to be spent once
more if the case were transferred.

Id.

That might have been the end of it.

But since the Court’s

ruling, the Federal Circuit published In re Micron Technology,
Inc., 875 F.3d 1091, 1093 (Fed. Cir. 2017) in which the court of
appeals made clear that TC Heartland changed the controlling law
and

rendered

least

in

the

waiver

certain

of

venue

instances.
be

objections

Now,

by

venue

given

those

objections

were

authority.

But TTI ignores half of Micron’s holding, and that

available

other half undermines TTI’s position.

waiver

its

cannot

even

away

argues

objections

not

stripped

TTI

inapplicable—at

under

then-controlling

Simply put, Micron drew a

line between two classes of waiver: waiver under Federal Rule of
Civil Procedure 12(g)(2) and (h)(1)(A), and waiver under the
“less

bright-line,

more

discretionary

trial court’s “inherent powers.”
omitted).

framework”

extant

in

a

Id. at 1094, 1100 (citation

Micron thus held that district courts have authority

to find forfeiture of a venue objection separate and apart from
a

Rule

12

shortcoming.

Id.

at

1101;

accord

Neirbo

Co.

v.

Bethlehem Shipbuilding Corp., 308 U.S. 165, 168 (1939) (“Being a
- 60 -

privilege, [venue] may be lost. It may be lost by failure to
assert it seasonably, by formal submission in a cause, or by
submission through conduct.”).
Finding

waiver

is

appropriate

here.

By

the

time

the

Supreme Court announced TC Heartland, the Chamberlain/TTI trial
date was only three months away.
month

before

(Dkt. 392.)
reasons.

filing
This

First,

its

TC

Heartland

unnecessary
with

the

Still, TTI waited another

delay

trial

motion

is

date

to

transfer.

problematic
fast

for

two

approaching,

the

parties continued to burn resources in discovery and pre-trial
motion

practice,

and

the

Court

expended

mediating

these

disputes.

The

submitted

expert

reports,

answered

attended two in-court hearings.

parties
one

its

own

exchanged
another’s

energies
discovery,

claims,

and

Second, TTI’s counsel chose not

to delay in raising a TC Heartland argument in another matter.
During

the

month-long

interregnum

in

the

instant

litigation,

TTI’s counsel moved—a mere eight days after the Supreme Court
published TC Heartland—to transfer venue in another case pending
in the Eastern District of Virginia.
Supp. 3d at 839-40.

See, Cobalt Boats, 254 F.

The Virginia district court denied that

motion, id., and counsel sought a writ of mandamus from the
Federal Circuit, which was denied, In re Sea Ray Boats, Inc.,
695 F. App’x 543 (Fed. Cir. 2017).
- 61 -

Only then did counsel file

the TC Heartland motion to transfer venue in the instant case.
Chamberlain

suggests

this

behavior

has

the

hallmarks

of

a

“tactical wait-and-see” approach which enabled TTI’s counsel to
reshape their TC Heartland argument as necessary in the instant
case depending on the relative success of their first attempt in
Virginia.

The

Federal

Circuit

took

care

to

suggest

the

potentially problematic nature of such gamesmanship: “We also
note a scenario that presents at least an obvious starting point
for

a

claim

of

forfeiture,

whether

based

on

timeliness

or

consent or distinct grounds: a defendant’s tactical wait-and-see
bypassing of an opportunity to declare a desire for a different
forum, where the course of proceedings might well have been
altered by such a declaration.”
finally,

though

the

Federal

Micron, 875 F.3d at 1102.

Circuit

chose

not

to

And

provide

a

specific framework for when courts may find waiver by means
other than noncompliance with Rule 12, the court of appeals
approvingly recited its past denials of mandamus “in several
cases involving venue objections based on TC Heartland that were
presented close to trial.”

Id. at 1102.

denials was the one in this case.

One of the recounted

Id. at 1102 n.4 (citing In re

Techtronic Indus. N. Am., Inc., No. 17-125, 2017 WL 4685333, at
*1 (Fed. Cir. July 25, 2017) (denying TTI writ of mandamus)).
The framework for finding such waivers is not yet defined, but
- 62 -

two things are clear: One, this Court has the inherent power to
find TTI waived its venue objection, and two, because, with only
two months to go before trial, TTI engaged in the wait-and-see
tactics highlighted by the Federal Circuit, the Court does not
abuse its discretion by finding waiver here.

TTI’s Motion for a

new trial is denied to the extent it relies upon TC Heartland
and TTI’s efforts to transfer venue.
III.
To

Chamberlain’s Motion for a Permanent Injunction

obtain

a

permanent

injunction,

a

plaintiff

must

demonstrate: (1) that it has suffered an irreparable injury; (2)
that remedies available at law, such as monetary damages, are
inadequate to compensate for that injury; (3) that, considering
the balance of hardships between the plaintiff and defendant, a
remedy in equity is warranted; and (4) that the public interest
would not be disserved by a permanent injunction.
MercExchange,

L.L.C.,

omitted).

Under

injunction

must

547

Federal
prohibit

U.S.
Rule

388,
of

“only

391

Civil
those

eBay Inc. v.

(2006)

Procedure
acts

(citations
65(d),

sought

to

an
be

restrained,” namely, “infringement of the patent by the devices
adjudged to infringe and infringement by devices no more than
colorably different therefrom.”

Black & Decker Inc. v. Robert

Bosch Tool Corp., No. 04 C 7955, 2006 WL 3446144, at *2 (N.D.

- 63 -

Ill.

Nov.

29,

2006)

(quoting

Int’l

Rectifier

Corp.

v.

IXYS

Corp., 383 F.3d 1312, 1317 (Fed. Cir. 2004)).
A.

Irreparable Injury and Remedies Available at Law

Much

of

TTI’s

rebuttal

to

Chamberlain’s

sought-after

injunctive relief turns upon TTI’s promise that it has abandoned
the production of infringing GDOs and has pulled all remaining
units from Home Depot’s shelves.

Although TTI intends to sell

off its remaining stock of infringing units, TTI claims it will
soon sell only non-infringing GDOs.

But TTI’s “cessation of the

production and sales of the [GDOs] is not—in and of itself—a
sufficient
there

reason

deny

also

must

to
be

some

a

permanent

persuasive

infringement will not take place.”

injunction.
evidence

Instead,

that

further

Black & Decker, 2006 WL

3446144, at *4 (citing W.L. Gore & Assocs. v. Garlock, Inc., 842
F.2d 1275, 1282 (Fed. Cir. 1988), abrogated on other grounds as
recognized in Zoltek Corp. v. United States, 672 F.3d 1309, 1319
(Fed. Cir. 2012)).

That is not the case here, where TTI has

both admitted its intention to continue selling infringing GDOs
(at least in the short-term) and nowhere suggests it is bound to
its

promise

(granting

to

cease

permanent

quickly

that

injunction

sales

where

activity.

plaintiff

evidence that future infringement “might” take place).

- 64 -

Cf.
set

id.

forth

So

long

as

TTI

continues

to

sell

infringing

GDOs,

Chamberlain will suffer injury without an available, adequate
remedy.

Chamberlain has and will continue to suffer harm to its

market share, especially given the relatively inelastic nature
of GDOs.

The evidence bears this out: From April 2016–April

2017,

sold

TTI

more

than

62,000

GDOs,

about

a

quarter

of

Chamberlain’s total sales over a two year period, April 2015–
April 2017. (Hanson Tr. 438:5-439:2.)
participant

prior

competition

in

to

the

its

same

TTI was not a GDO-market

‘275-infringing
market

is

sales.

certainly

one

“Direct
factor

suggesting strongly the potential for irreparable harm without
enforcement of the right to exclude.”

Presidio Components, Inc.

v. Am. Tech. Ceramics Corp., 702 F.3d 1351, 1363 (Fed. Cir.
2012) (citing Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 703
(Fed. Cir. 2008)); cf. Douglas Dynamics, LLC v. Buyers Prod.
Co.,

717

district

F.3d

1336,

court’s

1338,

denial

1345
of

(Fed.

Cir.

permanent

2013)

(reversing

injunction

where

infringer’s market share grew from 0% to 5% over three years of
infringement).
Further, continuing infringing sales may cause Chamberlain
to suffer “ecosystem” effects, whereby Ryobi GDO purchasers will
continue to buy Ryobi products and recommend them to others.
Apple Inc. v. Samsung Elecs. Co., 809 F.3d 633, 641 (Fed. Cir.
- 65 -

2015); accord Hansen Tr. 462:15-17 (describing purchasers of one
Chamberlain product more likely to purchase further Chamberlain
products

and

recommend

same).

These

derivative

sales

are

significant here, where the participating GDO sellers seek to
profit

from

sales

Designations

of

GDO

accessories.

154:4-154:12,

Dkt.

(See,

611-2

A.

Ely

(describing

Dep.

Ryobi’s

intention that customers will buy Ryobi-branded accessories that
“go with” their Ryobi GDOs); TTI Internal Email at 2, Dkt. 623-6
(“You must make money in the accessories!!”).)

On this record,

“mere damages will not compensate for a competitor’s increasing
share

of

Under

such

“cannot
“because

the

be

market.”

Douglas

circumstances,
compensated

it

is

a

patent

through

impossible

Dynamics,

to

717

owner’s

monetary
determine

F.3d

right

damages,”
the

at

to

1345.

exclude

especially

portions

of

the

market the patent owner would have secured but for the infringer
or

how

much

damage

was

done

to

the

patent

owner’s

recognition or good will due to the infringement.”

brand

z4 Tech.,

Inc. v. Microsoft Corp., 434 F. Supp. 2d 437, 441 (E.D. Tex.
2006).
Finally, Chamberlain’s unwillingness to license the patent
also

weighs

in

favor

of

finding

irreparable

injury.

See,

Presidio Components, 702 F.3d at 1363; cf. Acumed LLC v. Stryker
Corp., 551 F.3d 1323, 1328 (Fed. Cir. 2008) (“[That] a patentee
- 66 -

has previously chosen to license the patent may indicate that a
reasonable royalty does compensate for an infringement”); Hansen
Tr. 459:13-460:24 (explaining that Chamberlain has not licensed
the asserted patents); Tate Tr. 1265:2-1266:1 (same).
Beyond

showing

irreparable

harm

and

the

absence

of

an

adequate remedy, Chamberlain must also show that the harm bears
a

causal

nexus

to

the

infringing

activity.

Apple

Inc.

Samsung Elecs. Co., 809 F.3d 633, 640 (Fed. Cir. 2015).

v.

This

showing requires only that the patented features “were related
to infringement and were important to customers.”

Id. at 644.

As the Court previously observed in its preliminary injunction
order, both companies “target[] customers who want ‘connected’
GDOs, i.e., those connected by the controller to smart phones
through wireless transmissions.”
Chamberlain

produced

evidence

(Dkt. 107 at 15.)
demonstrating

that

At trial,
the

status

monitoring and data transmission disclosed by the ‘275 patent
are important to consumers.

(Hansen Tr. 443:15-18 (“Q: Does TTI

believe that the capability of the Ryobi garage door opener to
transmit

status

updates

is

an

important

feature

for

driving

sales? A: Yes.”); A. Ely Dep. Designations 232:3-10, Dkt. 611-2
(agreeing that “[t]he ability or the function of a Ryobi garage
door opener that allows a customer to monitor the status of the
garage door, that’s something that would incentivize customers
- 67 -

to

buy

the

Ryobi

required nexus.

product.”).)

This

suffices

to

show

the

Genband US LLC v. Metaswitch Networks, Corp.,

861 F.3d 1378, 1382 (Fed. Cir. 2017) (stating that patentee must
show

that

the

patent

features

are

“a

driver”

for

demand

as

opposed to “the driver” (emphasis in original)).
B.

Balance of Hardships

The balance weighs in favor of granting the injunction.
TTI

is

relatively

new

to

the

GDO

market,

and

TTI’s

damages

expert testified that TTI has not earned any gross or operating
profit

from

the

sale

of

the

Ryobi

GDO

as

of

July

(Corrected Supp. Expert Rpt. at 49, Dkt. 468-2.)

2017.

Aside from

their GDO sales, TTI maintains a multibillion dollar business.
In

contrast,

business.

GDO

sales

make

up

the

core

of

Chamberlain’s

(Sept. 15, 2016, Mem. Op. and Order at 17, Dkt. 107.)

Beyond this, TTI is “not entitled to continue infringing simply
because it successfully exploited its infringement.”

i4i Ltd.

P’ship v. Microsoft Corp., 598 F.3d 831, 863 (Fed. Cir. 2010),
aff’d, 564 U.S. 91 (2011) (citations omitted).

The balance of

hardships favors injunction.
C.

Public Interest

“In general, public policy favors the enforcement of patent
rights.”

Black & Decker, 2006 WL 3446144, at *5 (citing Abbott

Labs. v. Andrx Pharms., Inc., 452 F.3d 1331, 1348 (Fed. Cir.
- 68 -

2006); PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558,
1567 (Fed. Cir. 1996)).

The jury in this case found that TTI

willfully infringed the ‘275 patent.

Hence, it will serve the

public interest to protect Chamberlain’s property rights against
further infringement.

See, Apple Inc. v. Samsung Elecs. Co.,

809 F.3d 633, 647 (Fed. Cir. 2015).
D.

Breadth of the Injunction

The Court finds a permanent injunction is appropriate, and
now

permanently

enjoins

TTI

from

infringing

or

inducing

infringement of claims 1, 5, or 15 of the ‘275 patent by making,
using, selling, or offering to sell in the United States, or
importing into the United States the Ryobi GD200, GD200A, and
any device no more than colorably different therefrom, until the
expiration
adjustments
requests

a

of

the

and

‘275

patent,

extensions.

Court-approval

including

Beyond

condition,

any

patent

term

this,

Chamberlain

also

under

which

TTI

cannot

introduce any WiFi-capable GDO without prior permission from the
Court.

TTI responds that this proposed condition is overbroad

and impermissibly deters legitimate design-around efforts.

See,

TiVo, Inc. v. EchoStar Corp., 646 F.3d 869, 883 (Fed. Cir. 2011)
(“[L]egitimate design-around efforts should always be encouraged
as a path to spur further innovation.”).
“to

voluntarily

provide

[Chamberlain’s]
- 69 -

TTI instead proposes
outside

counsel

with

seven days’ notice of its intended launch date of any new GDO at
The Home Depot,” and to meet and confer regarding the same.
Finally, Chamberlain replies that if the Court is inclined to
impose

such

a

notice

condition

as

TTI

suggests,

period should be two months, not seven days.

the

notice

To any extent, the

Court will not impose any of these additional conditions.

TTI

is enjoined from further infringing the ‘275 patent as set forth
above;

if

TTI

Chamberlain

disregards

still

that

further

sanctioned by the Court.

mandate,

damages

TTI

and

will

possibly

likely
find

owe

itself

This is specific enough under Federal

Rule of Civil Procedure 65 and should serve as an appropriate
disincentive

for

further

infringing

activity.

No

more

is

needed.
IV.

Chamberlain’s Motion for Enhanced Damages

When there is a finding of infringement, the Court
increase

the

assessed.

damages

up

to

three

35 U.S.C. § 284.

times

the

amount

found

may
or

“The subjective willfulness of a

patent infringer, intentional or knowing, may warrant enhanced
damages,

without

regard

objectively reckless.”

“egregious,”

deliberate,

or

whether

his

infringement

was

Halo Elecs., Inc. v. Pulse Elecs., Inc.,

136 S. Ct. 1923, 1933.
is

to

Behavior deserving of enhanced damages

“willful,

consciously

wanton,

wrongful,
- 70 -

malicious,
flagrant,

bad-faith,
or—indeed—

characteristic of a pirate.”
motion

seeking

enhanced

Id. at 1932.

damages,

a

To prevail on a

patent-owner

must

show

enhancement is warranted by a preponderance of the evidence.
Id. at 1934.
Though not a required part of the analysis, the nine socalled Read factors provide useful guideposts for the Court’s
consideration.

Presidio Components, Inc. v. Am. Tech. Ceramics

Corp., 875 F.3d 1369, 1382 (Fed. Cir. 2017) (citing Read Corp.
v. Portec, Inc., 970 F.2d 816 (Fed Cir. 1992)); accord Styrker
Corp. v. Zimmer, Inc., No. 10 cv 1223, 2017 WL 4286412, at *3
(W.D.

Mich.

July

12,

2017)

(applying

Read

factors).

Those

factors are:
(1)
(2)

(3)
(4)
(5)
(6)
(7)
(8)
(9)

whether the infringer deliberately copied
ideas or design of another;
whether the infringer, when he knew of
other’s
patent
protection,
investigated
patent and formed a good-faith belief that it
invalid or that it was not infringed;
the infringer’s behavior as a party to
litigation;
the infringer’s size and financial condition;
the closeness of the case;
the duration of the misconduct;
the remedial action by the infringer;
the infringer’s motivation for harm; and
whether the infringer attempted to conceal
misconduct.

See, Read Corp., 970 F.2d at 827.

the
the
the
was
the

its

The Court need not find that

every Read factor favors enhancement to order it.

See, e.g.,

Arctic Cat Inc. v. Bombardier Recreational Prod., Inc., 198 F.
- 71 -

Supp. 3d 1343, 1354 (S.D. Fla. 2016) (awarding enhanced damages
even where not all factors favored enhancement), aff’d, 876 F.3d
1350 (Fed. Cir. 2017).
Here,
course,

Chamberlain

disputes

the

says

TTI

acted

egregiously.

characterization,

claiming

TTI,

instead

of

that

this litigation arose from a simple business dispute and that
its attorneys permissibly litigated with zeal.

Before the Court

takes up the Read factors, it notes the relevant background:
First, during the time that TTI developed the Ryobi GDO 200, TTI
was

acutely

aware

that

the

enterprise

rights if TTI were not careful.

could

trespass

on

IP

TTI’s primary customer, Home

Depot, acknowledged as much (Dkt. 642-5 at 2 (Trial Ex. No. PTX188) (describing IP research as “the main area of concern” with
the

Ryobi

described

GDO

development)),

possible

IP

problems

and
as

TTI’s
high

internal

risk,

documents

meaning

“[t]he

project is going to be adversely impacted by th[e] issue if it
is not addressed. Multiple risk reduction plans are necessary.”
(Dkt. 642-7 at 35, 37 (Trial Ex. No. PTX-67).)
But TTI’s awareness of possible IP issues was not limited
to the abstract.

Several events put TTI on notice of both the

‘275 and the ‘966 patents specifically.
engineers

acquired

Chamberlain

GDOs

As to the former: TTI

which

practice

the

‘275

patent; these engineers disassembled the devices and used the
- 72 -

internal parts to make a demo of the Ryobi device that TTI
presented to Home Depot.

(Huggins Tr. 601:17-603:2.)

At the

time the TTI engineers took apart Chamberlain’s GDO, it was
marked,

in

a

place

plainly

visible

upon

device, as practicing the ‘275 patent.
606:12.)

deconstructing

the

(Huggins Tr. 605:9-

Despite admitting both the visibility of this marking

and the fact that TTI took apart the Chamberlain unit (see,
id.), TTI’s employees testified that they never saw the ‘275
patent marking. (TTI’s Resp. to Mot. for Enhanced Damages at 14,
Dkt. 645 (collecting citations to trial transcript).)

This is

not the only example of TTI being put on notice of the ‘275
patent, however.

During the Ryobi GDO development phase, TTI

hired a consultant who had previously worked at Overhead Door,
another market competitor.

This consultant had been aware of

the ‘275 patent while at Overhead Door and advised TTI that it
would need to be careful of the intellectual property rights
around

“wireless

devices

and

[GDOs].”

(Carlson

Dep.

Designations 37:13-15, 37:17-38:8, 56:4-7, 70:7-11, Dkt. 610-1.)
TTI was also on notice during this time—and indeed, long before—
of the ‘966 patent.

TTI filed a PCT application back in 2009,

and international search reports indicated that it faced novelty
and obviousness problems in light of the ‘966 patent.
623-9 at 27 (Trial Ex. No. PTX-630).)
- 73 -

(Dkt.

TTI learned of the patent

again

in

February

Supp.

Answers

to

2015

during

GDO

Chamberlain’s

development.

First

Set

of

(TTI’s

Fifth

Interrogatories

at 9, Dkt. 624-9.)
A.
Deliberate Copying.
was

aware

product

of

with

Read Factors

Here, “the evidence show[s] that [TTI]

[Chamberlain’s
similar

GDO]

and

capabilities.”

intended
Polara

to

develop

Eng’g,

Inc.

a
v.

Campbell Co., 237 F. Supp. 3d 956, 992 (C.D. Cal. 2017) (finding
circumstantial

evidence

compelling”).

Further,

of

deliberate

TTI’s

copying

purported

“nonetheless

attempts

to

design

around the ‘275 patent only came six months after Chamberlain
filed this suit (see, Notice of Redesign, Dkt. 203), and even
then

the

Court

judged

that

redesign

to

be

not

different, Chamberlain, 2017 WL 368027, at *3-4.

colorably

This conduct

suggests faith worse than the defendant’s in Westvaco Corp. v.
International Paper Co., 991 F.2d 735 (Fed. Cir. 1993), where
the defendant took pains to design around an existing patent in
the

first

instance.

enhancement).
Good

Id.

at

738-40,

746

(reversing

damages

This factor weighs in favor of enhanced damages.

Faith

Belief

of

Invalidity

Predicated upon Investigation of Patent.

of

Noninfringement

As set forth above,

TTI not only knew that development in the wireless/WiFi-capable
GDO space could raise IP problems, TTI also knew of ‘275 and the
- 74 -

‘966 patents specifically.
risk

of

infringement,

And yet, despite being aware of the

there

is

no

suggestion

anything to avoid colliding with it head-on.

that

TTI

did

Cf. Apple Inc. v.

Samsung Elecs. Co., 258 F. Supp. 3d 1013, 1032 (N.D. Cal. 2017)
(“The absence of evidence of an adequate investigation and of
Samsung’s reliance on its defenses weighs in favor of enhanced
damages.”).

This factor weighs in favor of enhanced damages.

TTI’s Litigation Behavior.

Both parties make much of this

factor and spend many pages contesting whether and when TTI
misbehaved in litigation.

The Court will not nitpick each of

these contests now, though it will note one moment in which TTI
behaved

less

than

admirably.

Chamberlain

moved

for

a

preliminary injunction and the Court granted it on September 15,
2016.

(Mem. Op. and Order, Dkt. 104.)

But the Court did not

actually enter that injunction until five days later.
Dkt. 111.)

(Order,

In that brief interim, TTI sold off approximately

6,000 of the original GD200s to Home Depot.
Enhanced Damages Mot., Dkt. 624-11.)
determined-to-be)

infringing

stock

(See, Ex. J to

TTI thus unloaded (sincedespite

the

Court’s

announcement that it intended to halt all such sales imminently.
That

the

injunction

Federal
is

no

Circuit
defense;

later
possible

- 75 -

vacated
vacatur

the
on

preliminary
appeal

is

no

excuse for disregarding a court order.

This factor also weighs

in favor of enhanced damages.
TTI’s Size and Financial Condition.

TTI is a multibillion

dollar company with the means to absorb $11.4 million in treble
damages.

See,

Metabolite

Labs.,

Inc.

v.

Lab.

Corp.

of

Am.

Holdings, 370 F.3d 1354, 1371 (Fed. Cir. 2004) (affirming award
of enhanced damages based in part on fact that defendant “is a
large company with extensive financial means”).

This factor

weighs in favor of—or at least does not weigh against—enhanced
damages.
Closeness of the Case.
on

every

issue

deliberation.

at

trial

This case was not close.
after

less

than

two

TTI lost

hours

of

jury

See, SRI Int’l, Inc. v. Cisco Sys., Inc., 254 F.

Supp. 3d 680, 723 (D. Del. 2017) (enhancing damages in part
because defendants “lost on all issues during summary judgment
and trial”); cf. Engineered Prod. Co. v. Donaldson Co., 147 F.
App’x

979,

992

(Fed.

Cir.

2005)

(affirming

award

of

treble

damages where “this was not a close case of infringement, as
evidenced by the strong showing of willful infringement”).

The

fact that some of TTI’s positions had merit does not turn the
tables.

See, Styrker Corp., 2017 WL 4286412, at *3 (“[T]he

objective reasonableness the Federal Circuit found for a handful
of [defendant’s] litigation positions in no way detracts from
- 76 -

the

lopsided

issues[.]”).

victory

[plaintiff]

garnered

on

the

core

This factor weighs in favor of enhanced damages.

Duration

of

Misconduct.

TTI’s

infringing

behavior

has

spanned the whole of TTI’s participation in the GDO marketplace
to date.

(TTI’s Resp. to Enhanced Damages Mot. at 13 n.10, Dkt.

645 (admitting that TTI continues to sell infringing Ryobi GDOs
to date, and adding that TTI intends to account for said sales
and compensate Chamberlain accordingly).)

This factor weighs in

favor of enhanced damages.
TTI’s
continuing

Remedial
to

infringement

sell
and

enhancement.”

Actions.
the

during
Polara,

“Courts

infringing
the
237

products

course
F.

have

Supp.

of
3d

concluded
after

litigation
at

993

that

notice

of

supports
(citation

omitted). Here, TTI has continued to sell its GDOs, although
directly, and not through Home Depot, since the return of the
jury verdict.

(See, M. Preus Decl. ¶ 9, Dkt. 645-1.)

to TTI’s infringement instead of reducing it.

This adds

As such, this

factor weighs in favor of enhanced damages.
TTI’s Motivation for Harm.

The evidence suggests that TTI

recognized the peril of infringement and yet moved forward with
its GD200s anyway.

TTI’s actions during the development and

release of both the GD200 and the GD200A suggest that TTI wanted
to

enter

the

market

quickly

and,

- 77 -

if

possible,

displace

Chamberlain’s

hold

on

it.

This

preference

for

risk

of

infringement over the more labor-intensive creation of a noninfringing design weighs in favor of enhancing damages.

Funai

Elec. Co., Ltd. v. Daewoo Elecs. Corp., 593 F. Supp. 2d 1088,
1116-17 (N.D. Cal. 2009) (agreeing that “where, as here, the
infringer engages in infringing conduct to gain an edge over the
patentee in a competitive market, this factor favors an award of
enhanced damages.”)
Attempts

by

described

above,

unloading

its

TTI

foretelling

to

TTI

GDOs

the

to

Conceal

evaded
Home

injunction

Its

the

Misconduct.

preliminary

Depot

after

against

the

the
same.

First,

as

injunction

by

Court’s

opinion

Second,

TTI

contacted Home Depot in October 2016, a month after the Court
entered the preliminary injunction but three months before the
Federal Circuit vacated it, offering to sell Ryobi GDOs despite
the Court’s command not to do so.
209:21-210:25, Dkt. 625-10.)
enhanced damages.
patented

(Cameron Dep. Designations

This factor weighs in favor of

See, 35 U.S.C. § 271(a) (offering to sell a

invention

constitutes

Representatives, Inc. v. Minemyer,

infringement);
233

F. Supp. 3d

R-BOC
647, 689

(N.D. Ill. 2017) (ordering treble damages where defendants not
only

failed

to

follow

the

injunction,

it”).
- 78 -

but

“silently

avoided

In

sum,

factors,

the

preponderance

considering
Court
of

appropriate here.

the

finds

the

jury’s

that

verdict

Chamberlain

evidence

that

and

has

the

Read

shown

enhanced

by

damages

Halo Elecs., 136 S. Ct. at 1934.

a
are

The Court

accordingly orders treble damages.
V.

Chamberlain’s Motion for Prejudgment Interest
and Supplemental Damages
A.

Given
owners

Congress’

complete

Prejudgment Interest
overriding

compensation,

purpose

of

affording
interest

prejudgment

ordinarily be awarded in patent cases.

patent
should

Gen. Motors Corp. v.

Devex Corp., 461 U.S. 648, 655 (1983) (citing 35 U.S.C. § 284).
“Generally, prejudgment interest should be awarded from the date
of infringement to the date of judgment.”

Nickson Indus., Inc.

v. Rol Mfg. Co., 847 F.2d 795, 800 (Fed. Cir. 1988) (citations
omitted).

Both the rate and whether the interest should be

compounded “are matters left largely to the discretion of the
district

court.”

Bio-Rad

Labs.,

Inc.

v.

Nicolet

Instrument

Corp., 807 F.2d 964, 969 (Fed. Cir. 1986) (citations omitted).
The

parties

dispute

which

rate

the

Court

should

apply.

Chamberlain argues for the prime rate (between 3.5 and 4.25% in
this

case),

(approximately

and

TTI

0.62%).

argues
“The

for
prime

- 79 -

the

treasury

rate

of

bill

interest

is

rate
the

benchmark rate for the banks’ most credit-worthy customers, but
even blue-chip debtors are more likely to default than is the
United States government, so the prime rate exceeds the T-Bill
rate . . . [b]ecause the prime rate includes some compensation
for the risk of non-payment. . . .”

Koopmans v. Farm Credit

Servs. of Mid-America, ACA, 102 F.3d 874, 875 (7th Cir. 1996)
(citation omitted).

As Judge Amy St. Eve explained in Black &

Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL
3359349 (N.D. Ill. Nov. 20, 2006), vacated on other grounds, 260
F. App’x 284 (Fed. Cir. 2008), “if the Court were to use the
prime rate, [the plaintiff] would be compensated for the risk of
non-repayment—a

risk

that

circumstances.

Here,

the

does
T-Bill

not
rate

exist
is

more

under

the

appropriate

because it will adequately compensate [the Plaintiff] for its
‘foregone use of the money between the time of infringement and
the date of the judgment’ without additional compensation.”

Id.

at *11 (citing Laitram Corp. v. NEC Corp., 115 F.3d 947, 955
(Fed. Cir. 1997) (affirming district court’s award of interest
at T-Bill rate to “adequately compensate plaintiff for the lost
use

of

its

appropriate
period

of

royalties”)).
rate,

courts

infringement,

Further,

have
the

“[i]n

considered
plaintiff

determining

whether,

‘borrowed

the

during
money

the

at

a

higher rate, what that rate was, or [whether] there was a causal
- 80 -

connection between any borrowing and the loss of the use of the
money awarded as a result of [the defendant’s] infringement.’”
Apple, Inc. v. Samsung Elecs. Co., 67 F. Supp. 3d 1100, 1121-22
(N.D. Cal. 2014), aff’d, 816 F.3d 788 (Fed. Cir. 2016), vacated
in part and aff’d in part on reh’g en banc, 839 F.3d 1034 (Fed.
Cir.);

accord

Laitram,

115

F.3d

at

955

(upholding

district

court’s decision to use the treasury bill rate in case where
district court found no evidence of “a causal connection between
any borrowing and the loss of the use of the money awarded as a
result of the infringement.”).
here.

Chamberlain made no such showing

The Court agrees the T-Bill rate is appropriate.

Next, courts “have recognized that compounding is necessary
to fully compensate the patentee.”

Sealant Sys. Int’l, Inc. v.

TEK Global S.R.L., No. 11 CV 00774, 2014 WL 1008183, at *6 (N.D.
Cal. Mar. 7, 2014) (citation omitted), aff’d in part, vacated in
part,

rev’d

in

part,

616

F.

App’x

987

(Fed.

Cir.

2015).

“Because a patentee’s damages include the foregone use of money,
compounding is needed to account for the time value of money.”
Id.

(citation

compounding

omitted).

and

even

Thus,
daily

“courts

have

compounding.”

approved
Id.

annual

(citation

omitted).

TTI has not articulated any objection to compounding.

The

believes

Court

that

monthly

requests, is appropriate here.
- 81 -

compounding,

as

Chamberlain

B. Supplemental Damages
Chamberlain asks the Court to amend the judgment pursuant
to Federal Rule of Civil Procedure 59(e) to account for new
information not available at trial concerning TTI’s sales of
infringing products between May 1, 2017 and September 5, 2017.
Courts may account for such pre-verdict sales not presented at
trial.

See, e.g., Finjan, Inc. v. Secure Computing Corp., 626

F.3d 1197, 1212 (Fed. Cir. 2010) (affirming supplemental damages
for infringing sales never considered by the jury); accord 35
U.S.C. § 284 (“When damages are not found by a jury, the court
shall assess them”).

These supplemental damages derive from the

same three sources as the original damages determined by the
jury: (1) lost profits for sales of infringing GDOs; (2) future
accessories for those infringing GDOs; (3) royalties for sales
of

infringing

GDOs

not

accounted

for

in

Chamberlain’s

lost

profits, as determined by Chamberlain’s market share.
TTI contends that none of these supplemental damages is
appropriate because TTI has begun and intends to complete buying
back from Home Depot all remaining stock of infringing Ryobi
GDOs.

But

TTI

cites

no

legal

authority

explaining

why

its

repurchasing plan erases the harm done to Chamberlain or annuls
damages

TTI

would

otherwise

owe.

As

Chamberlain

correctly

notes, Chamberlain suffered lost profits at the time TTI made
- 82 -

the initial, infringing sales to Home Depot; a later-implemented
buy-back plan does not undo that harm.

Beyond this, TTI states

that its intent in repurchasing the infringing GDOs is simply to
sell those GDOs directly to consumers, rather than use Home
Depot as a middle man.

Chamberlain is entitled to supplemental

damages for both lost profits and royalties for TTI’s infringing
sales occurring from May 1, 2017 to September 5, 2017.
However,

the

calculus

might

not

be

so

simple

for

the

supplemental damages for lost future sales of GDO accessories.
By

using

an

“accessory

attach

rate”

of

0.75,

Chamberlain’s

damages expert concluded that Chamberlain “lost or is likely to
lose in the future sales of 11,442 accessory units associated
with the lost GDOs, resulting in additional lost profits of
$134,496 for accessories.”

(J. Hansen Decl. ¶ 2, Dkt. 630-1.)

So unlike the supplemental damages for lost profits or royalties
associated

with

GDO

sales,

these

accessory-sales

damages

predicated upon downstream purchases by consumers.
extent

TTI’s

buy-back

strategy

removes

are

Thus, to the

infringing

Ryobi

GDOs

from the market, Chamberlain may not recover for now-prevented,
would-have-been purchases of accessories.

But again, TTI has

announced its intention to re-sell the repurchased GDOs directly
to consumers.
Home

Depot’s

If TTI has already repurchased and resold all of
remaining

stock,

this

- 83 -

digression

is

moot

and

Chamberlain is entitled to supplemental damages for accessory
lost profits.
Dkt.

645

(See TTI’s Opp. to Enhanced Damages at 13 n.10,

(acknowledging

TTI’s

intent

to

sell

its

remaining

inventory of infringing Ryobi GDOs and predicting selling out
all on-hand stock within six months of October 18, 2017).)

But

as discussed above, the Court now grants Chamberlain’s Motion
for a permanent injunction.

As such, any repurchased product

on-hand at TTI may not be sold to future consumers.

Thus, it is

only that stock—stock which no consumer will ever use—that may
decrease the supplemental accessory damages TTI must pay.
Given the above, the Court grants Chamberlain’s Motion for
supplemental damages in part and awards the following:
1. Prejudgment interest of $42,347.00, calculated by using the
52-week treasury bill rate, compounded monthly;
2.

For

the

‘275

patent,

$900,793.00

in

GDO

lost

profits;

$54,672.00 in royalties; and $134,496.00 in accessory lost profits,
unless TTI has some repurchased GDO stock still on hand, in which case
TTI may move the Court within fourteen days to reduce the accessory
lost profits damages accordingly;
3. For the ‘966 patent, $18,224.00 in royalties.

VI. Chamberlain’s Motion for Attorneys’ Fees
A.

Whether to Award Fees

- 84 -

“The

court

in

exceptional

cases

attorney fees to the prevailing party.”

may

award

reasonable

35 U.S.C. § 285.

In

2014, the Supreme Court clarified the standard for finding a
case “exceptional”: “[A]n ‘exceptional’ case is simply one that
stands out from others with respect to the substantive strength
of a party’s litigating position (considering both the governing
law and the facts of the case) or the unreasonable manner in
which the case was litigated.

District courts may determine

whether a case is ‘exceptional’ in the case-by-case exercise of
their

discretion,

circumstances.”

considering

the

totality

of

the

Octane Fitness, LLC v. ICON Health & Fitness,

Inc., 134 S. Ct. 1749, 1756 (2014).

In determining whether to

award attorneys’ fees, the trial judge considers “the closeness
of the case, the tactics of counsel, the conduct of the parties,
and any other factors that may contribute to a fair allocation
of the burdens of litigation as between winner and loser.”

S.C.

Johnson & Son, Inc. v. Carter-Wallace, Inc., 781 F.2d 198, 201
(Fed.

Cir.

1986).

“The

determination

whether

a

case

is

‘exceptional’ is indisputably committed to the discretion of the
district court.”

Lumen View Tech. LLC v. Findthebest.com, Inc.,

811 F.3d 479, 482 (Fed. Cir. 2016) (citing Highmark Inc. v.
Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744, 1748 (2014)).

- 85 -

Before Octane Fitness, the Federal Circuit remarked that
“[w]hile a finding of willful infringement does not require a
finding that a case is exceptional, our cases uniformly indicate
that

the

willfulness

of

the

infringement

by

the

accused

infringer may be a sufficient basis in a particular case for
finding the case exceptional for purposes of awarding attorney
fees to the prevailing patent owner.”

Golight, Inc. v. Wal-Mart

Stores, Inc., 355 F.3d 1327, 1340 (Fed. Cir. 2004) (quoting Avia
Group Int’l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1567
(Fed. Cir. 1988)) (citation, alternations, and quotation marks
omitted).

The Federal Circuit has had the opportunity, post-

Octane Fitness, to do away with that formulation and yet has
declined to do so.

In Stryker Corp. v. Zimmer, Inc., 837 F.3d

1268, 1279 (Fed. Cir. 2016), the court of appeals noted only
that

post-Octane

necessarily”

make

Fitness,
a

case

a

willfulness
exceptional.

finding
That

“does

not

observation

seemingly leaves open the possibility that, under the Octane
totality-of-the-circumstances test, a willfulness finding alone
may suffice for the “exceptional” designation.

See, Stryker

Corp. v. Zimmer, Inc., No. 10 CV 1223, 2017 WL 4286412, at *2
(W.D. Mich. July 12, 2017) (holding that the jury’s “subjective
willfulness” finding was sufficient for an “exceptional” case
finding under the rigid, pre-Octane Fitness framework, and is it
- 86 -

“certainly
flexible,

sufficient

for

such

a

finding

totality-of-the-circumstances

Octane Fitness”);

see also,

Inc.,

1105,

No.

13

CV

under

standard

the

more

enunciated

by

Rawcar Grp., LLC v. Grace Med.,

2014

WL

12577590,

at

*3

(S.D.

Cal.

Dec. 16, 2014) (approvingly reciting, after Octane Fitness, that
a willfulness finding may be a sufficient basis for finding a
case “exceptional”); Comaper Corp. v. Antec, Inc., No. CV 051103, 2014 WL 12613394, at *1 (E.D. Pa. June 11, 2014) (same);
but cf.

Arthrex, Inc. v. Smith & Nephew, Inc., No. 15 CV 01047,

2017 WL 365239, at *1 (E.D. Tex. Jan. 25, 2017) (“Since Octane
Fitness, the Federal Circuit has acknowledged that a finding a
[sic]

willfulness

does

not

necessarily

make

a

case

exceptional.”).
Here, the jury found TTI willfully infringed both asserted
patents.

And,

though

appears

permissible

finding

that

this

reliance

under
case

on

this

controlling

is

finding

authority,

exceptional

is

the

bolstered

conduct of TTI and its counsel, as described above.
at Part IV.A.)

alone

still

Court’s
by

the

(See, supra

Most prominent in the Court’s eyes are TTI’s

efforts to circumvent the preliminary injunction.

(See, id.)

Under the totality of the circumstances, the Court believes an
exercise of its discretion is appropriate here: It finds this

- 87 -

case exceptional and accordingly awards Chamberlain reasonable
attorneys’ fees.

35 U.S.C. § 285.

- 88 -

B. What Fees to Award
Chamberlain and TTI tussle over whether TTI’s objections to
the sought-after fees were untimely under Local Rule 54.3 and
thus waived.

The shortest version of the dispute is this: The

Court required the parties to file their Joint Statement by
November 21, 2017.

Chamberlain produced 562 pages of invoices

to TTI about two months in advance of that deadline, but did not
provide any further breakdown or summary of those fees until the
November 21st due date.

In the Joint Statement, TTI maintains

that because Chamberlain tardily produced this breakdown, TTI
lacked the information necessary to provide specific objections
to Chamberlain’s invoices, which “contained numerous categories
of fees and costs that [are] not compensable.”
at 10, Dkt. 690.)

(Joint Statement

Still, TTI then waited until January 3, 2018

to articulate its objections in its response to Chamberlain’s
motion for fees.

Though both parties make much of this quarrel,

Local Rule 54.3 does not mandate waiver in such circumstances,
and

here

Court’s

TTI’s

ability

delayed
to

articulation

settle

the

fee

has

not

dispute.

prejudiced
The

Court

the
will

accordingly consider TTI’s objections as it weighs which fees to
award in this case.
Chamberlain

requests

$8,033,942.73

in

attorneys’

fees

(Reply at 13, Dkt. 717 (explaining that since Chamberlain filed
- 89 -

its

Motion

received

for

fees

updated

requesting

information

$8,286,135.93,

regarding

its

Chamberlain

legal

this case and adjusted its request accordingly).)

expenses

in

In support of

its request, Chamberlain provides a breakdown of the billing
rates for each attorney who worked on this matter.
Decl. at 5-6, Dkt. 704-2.)

(M. Brody

The Seventh Circuit has “defined a

reasonable hourly rate as one that is ‘derived from the market
rate

for

the

services

rendered.’

[Further,

the

court

of

appeals] presume[s] that an attorney’s actual billing rate for
similar litigation is appropriate to use as the market rate.”
Pickett v. Sheridan Health Care Ctr., 664 F.3d 632, 640 (7th
Cir. 2011) (quoting Denius v. Dunlap, 330 F.3d 919, 930 (7th
Cir.

2003)).

Here,

Chamberlain

provides

the

affidavit

of

Michael Brody, the Co-Chair of Winston & Strawn’s IP Practice.
Mr.

Brody

attests

to

extensive

litigation

and

intellectual

property experience and has been a member of this district’s
trial bar since 1985.

He regularly handles litigation budgeting

matters at his law firm, and he has applied that experience to
his review of Chamberlain’s billing invoices in this matter.
also

reviewed

the

backgrounds

of

Chamberlain’s

attorneys

He
and

ultimately agreed that Chamberlain’s proposed fees in this case
are

competitive

nationwide

firms

with

those

handling

incurred
patent
- 90 -

by

other

litigation

Chicago
of

and

similar

complexity. (See, Brody Decl., Dkt. 704-2.)

Further, the Court

compared the hourly rates for Chamberlain’s and TTI’s respective
counsel.

(Compare id. (reciting hourly rates for Chamberlain’s

counsel),

with

counsel).)

Dkt.

711-9

(reciting

hourly

rates

for

TTI’s

When, as often occurs in Mr. Brody’s declaration,

Chamberlain lists an individual timekeeper’s rates as a range
rather than a single figure, the Court used the median of the
range presented for the purposes of this comparison.
the

results:

Chamberlain’s

attorneys

charged

an

These are
average

of

$753.57/hour per partner and $453.31/hour per associate; TTI’s
attorneys charged an average of $747.35/hour per partner and
$410.80/hour per associate.

These rates are not far apart —

TTI’s rates are within 10% of Chamberlain’s—suggesting that the
rates charged by Chamberlain’s counsel do not much deviate from
the market rate for services rendered.
at 640.

See, Pickett, 664 F.3d

Because of this and Mr. Brody’s declaration to the same

effect, the Court agrees with Chamberlain that its counsels’
recited hourly rates are reasonable.
Having determined that the rates are reasonable, the Court
must

decide

Chamberlain’s

whether
requested

it

should
total.

subtract

Chamberlain

following breakdown of its attorneys’ fees:

- 91 -

any

sums

provides

from
the

Firm

Total Paid
(-6097 Related
IPRs)
$0

(Reply,

Dkt.

Chamberlain

$1,737,490.30

Total Paid
(-6097
Litigation &
Related IPRs)
$1,737,490.30

$870,437.82

Winston &
Strawn
Fish &
Richardson

$5,426,014.61

$6,296,452.43

717
the

proceedings.
be recovered.

at

13.)

Total Paid
(-6097
Litigation)

First,

$870,437.82

it

the

Court

spent

on

will

not

counsel

award

for

IPR

Fees related to a separate legal proceeding cannot
See, e.g., Hickory Farms, Inc. v. Snackmasters,

Inc., No. 05 C 4541, 2008 WL 4542961, at *6 (N.D. Ill. Apr. 2,
2008).

Chamberlain argues that other courts have permitted such

recovery, see, PPG Indus., Inc. v. Celanese Polymer Specialties
Co., 840 F.2d 1565, 1568 (Fed. Cir. 1988); Deep Sky Software,
Inc.

v.

Southwest

Airlines

Co.,

No.

10

cv

1234,

2015

WL

10844231, at *2-3 (S.D. Cal. Aug. 19, 2015), but as TTI points
out, both of the cases Chamberlain cites involved a stay of
litigation
those

pending

cases,

intended

to

the

“[t]he
replace

Patent

parties
the

Office
and

district

[Patent Office] proceedings.”

the

proceedings.
district

court

Thus,

court

litigation

in

clearly

with

the

PPG Indus., 840 F.2d at 1568; cf.

Deep Sky, 2015 WL 10844231, at *1.

No such replacement occurred

here, where the Patent Office proceedings ran concurrently with
this litigation.
- 92 -

Nor

can

ultimately

Chamberlain

failed.

recover

Prime

among

fees
these

for
is

efforts

TTI’s

that

ultimately

victorious appeal to the Federal Circuit from this Court’s Order
instituting the preliminary injunction.
that

appeal,

district

and

courts

proceedings.

the

Federal

awarding

Chamberlain did not win

Circuit

fees

has

related

taken

to

issue

with

court-of-appeals

Phonometrics, Inc. v. Choice Hotels Int’l, Inc.,

65 F. App’x 284, 285-86 (Fed. Cir. 2003) (vacating award of
interlocutory-appeal-related attorney fees).

The Court will not

award Chamberlain the $250,289.69 in fees and costs related to
that appeal.
True, Chamberlain won fleeting victories on its motions for
a

preliminary

injunction

and

for

contempt.

But

the

aforementioned Federal Circuit decision vacated those victories.
The

Court

will

not

award

Chamberlain

for

these

unsuccessful

motions, even if this Court at first agreed with Chamberlain’s
arguments.

Cf. Eli Lilly & Co. v. Zenith Goldline Pharm., Inc.,

264 F. Supp. 2d 753, 771 (S.D. Ind. 2003) (denying fees for
unsuccessful

motions

to

compel

and

for

summary

judgment).

However, calculating how much Chamberlain spent in fees pursuing
these motions has not been simple.

TTI helpfully provided a

breakdown of the 2,289.90 total purported hours related to these
motions

and

to

the

Federal

Circuit
- 93 -

appeal

(see,

Ex.

E

to

Response, Dkt. 711-5), but there are limits to that breakdown’s
usefulness: TTI did not break out which of these 2,000-plus
hours relate to the appeal, as opposed to the motions; though
TTI split up these total hours between individual timekeepers,
TTI did not import the hourly fees for these timekeepers from
the joint status report (Dkt. 690); and TTI lists one attorney
twice,

without

breakdown

of

explanation.

its

own.

Chamberlain

To

clear

this

did

up

not

provide

swiftly

and

a

avoid

further unnecessary briefing, the parties shall submit a joint
report within fourteen (14) days providing a billing rate for
each timekeeper appearing in TTI’s list, and the report shall
identify

which

motions.

hours

relate

to

the

appeal

and

which

to

the

For those timekeepers that Mr. Brody’s declaration

lists not a single hourly rate by a range, the parties shall use
the median of that range.
To the remaining, sought-after attorneys’ fees: TTI levies
two objections the Court finds somewhat meritorious.

In some

instances, partners could have kept fees lower by delegating
tasks
simple

such

as

motions

attorneys.

responding
to

more

to

discovery

junior,

and

requests
thus

and

less

drafting

expensive,

Prather v. Sun Life & Health Ins. Co., 852 F.3d 697,

699-700 (7th Cir. 2017) (reducing fee award for hours that could
have

been

delegated

to

less

pricey

- 94 -

counsel).

In

other

instances, Chamberlain’s counsel undertook clerical tasks for
which compensation at attorney rates is not appropriate.

See,

Delgado v. Vill. of Rosemont, No. 03 C 7050, 2006 WL 3147695, at
*2 (N.D. Ill. Oct. 31, 2006) (“A court should disallow time
spent on ‘clerical’ or ‘secretarial’ tasks.”).

Still, having

reviewed the time records kept by Chamberlain’s counsel, the
Court found such problems in no more than 5% of the entries.
The

Court

accordingly

imposes

Chamberlain’s attorneys’ fees.

a

5%

blanket

reduction

of

Montanez v. Simon, 755 F.3d 547,

552 (7th Cir. 2014) (observing that district courts have broad
discretion “to adjust bloated bills for attorney’s fees”).
As

described

calculation

the

above,

the

parties

final

must

fee

make

award

turns

concerning

upon

what

a

fees

Chamberlain expensed in litigating its preliminary injunction
and contempt motions.

Once the parties submit a joint status

report

sum,

detailing

that

Chamberlain’s

fee

award

will

be

calculated and ordered as follows: $8,033,942.73 (Chamberlain’s
amended
Office
Circuit

fee

request),

proceedings),
appeal),

less
less

less

$870,437.82
$250,289.69

(incurred
(incurred

sum-to-be-determined

via
via

Patent
Federal

(incurred

via

ultimately unsuccessful motions), less a 5% overall reduction of
the resulting figure.

- 95 -

Finally,

Chamberlain

seeks

$1,221,021.74

in

“non-taxable

expenses,” which includes “all costs claimed on its Bill of
Costs.”

(Mot. for Attorney’s Fees at 11-12, Dkt. 704.)

The

Court addresses these expenses below and will not award on this
motion any amounts beyond those allowed from the bill of costs.
(See, infra at Part VII.)
VII.

Chamberlain’s Bill of Costs

Federal Rule of Civil Procedure 54(d)(1) provides that a
prevailing party may obtain reimbursement for certain litigation
costs at the conclusion of a lawsuit.

The Rule establishes a

“presumption that the prevailing party will recover costs, and
the losing party bears the burden of an affirmative showing that
taxed costs are not appropriate.”

Beamon v. Marshall & Ilsley

Trust Co., 411 F.3d 854, 864 (7th Cir. 2005) (citing M.T. Bonk
Co. v. Milton Bradley Co., 945 F.2d 1404, 1409 (7th Cir. 1991)).
In evaluating an application for costs, the Court must first
determine

whether

the

claimed

expenses

are

recoverable

second, whether the costs requested are reasonable.

and,

Majeske v.

City of Chicago, 218 F.3d 816, 824 (7th Cir. 2000) (citation
omitted).
award.

The Court has “wide latitude” in fixing a reasonable

Deimer v. Cincinnati Sub-Zero Prods., Inc., 58 F.3d 341,

345 (7th Cir. 1995) (citations omitted).

- 96 -

Here, Chamberlain’s bill of costs and associated exhibits
often fall short of a portrait of clarity.

The Court will make

calculations where possible and, where figures were missing or
were not sufficiently itemized in Chamberlain’s materials, the
Court

will

rule

performed.
within

how

the

remaining

calculations

are

to

be

Chamberlain shall submit a revised bill of costs

fourteen

calculations.

(14)
No

days

further

including
briefing

those
from

still-required

either

side

is

necessary.
A.

Fees Paid to the Clerk and for Service of Process

Chamberlain requests $1,463.00 under 28 U.S.C. § 1920(1),
comprising: $400.00 in fees paid to the clerk and $1,063.00 in
fees for service of process.

The latter includes one hour of

service at a $65/hour rate for each witness served and three
witness fee advances ranging from $64 to $87.

All of these

costs are recoverable under § 1920(1) and are reasonable.
Clarendon

Nat.

Ins.

Co.

v.

Medina,

No.

8

C

4245,

2010

See
WL

3526515, at *1 (N.D. Ill. Sept. 1, 2010) (reasonable rates for
service of process);

Dishman v. Cleary,

279 F.R.D. 460, 466

(N.D. Ill. 2012) (“Where service on a witness is reasonable at
the time, witness fees advanced will be awarded.”).
TTI does not object to this request.
$1,463.00 in costs.
- 97 -

Further,

The Court allows the

B.

Transcript Copies, Expedited Transcripts, and Realtime
Services for Evidentiary Hearings and Trial

Chamberlain seeks costs for transcript copies, all ordered
on a daily, hourly, or expedited basis, for all status hearings
and motion presentments in the case, as well as for Realtime
services and laptop rentals.

Where the party seeking costs does

not provide “any explanation as to why [it] obtained a copy of a
daily transcript,” it “may only recover costs at the ordinary
transcript rates.”
Grp.,

Inc.,

873

Se-Kure Controls, Inc. v. Vanguard Prod.
F.

Supp.

939,

945

First, Chamberlain notes generally that it and TTI
transcripts

to

use

its

2012).

expediting.

these

for

Ill.

provides

put

justifications

(N.D.

Chamberlain

actually

two

2d

throughout

constant

litigation.

Second, Chamberlain points out that not only were several stages
of

this

case

particularly

fast-moving—e.g.,

the

preliminary

injunction and TTI’s Federal Circuit petition for a writ of
mandamus after this Court’s denial of TTI’s motion to transfer
venue—but also that hearing transcripts were often cited before
the Court throughout this litigation only days or weeks after
they were ordered.

(Chamberlain’s Reply at 6, Dkt. 683 (citing

three

Further,

examples).)

expedited

trial

transcripts

have

been found to be reasonable and necessary where, as here, “the
case involved expert witnesses whose cross-examination required

- 98 -

knowledge of the exact wording of their previous testimony or
that of any other witnesses.”

Hillmann v. City of Chicago, No.

04 C 6671, 2017 WL 3521098, at *8 (N.D. Ill. Aug. 16, 2017)
(reciting

this

and

four

other

factors

courts

consider

weighing whether to award daily trial transcripts).

when

The Court

agrees that often, the circumstances in this case reasonably
demanded expedited transcripts.

The same is true for Realtime

and the associated laptop rentals, given that this trial was at
times

technical

and

complicated,

and

these

services

were

reasonably necessary to ensure accurate and precise recording of
expert testimony.

Cf. Martinez v. City of Chicago, No. 14 CV

369, 2017 WL 1178233, at *23 (N.D. Ill. Mar. 30, 2017) (denying
expedited transcript and Realtime costs where trial “was not
particularly

lengthy

or

complicated,

and

did

not

involve

a

significant number of witnesses speaking a language other than
English”).
every

However, these circumstances were not present at

moment

of

this

litigation,

and

Chamberlain’s

routine

expediting and use of Realtime must have frequently been an
untaxable

convenience.

Chamberlain’s

costs

for

Accordingly,
expedited

the

Court

transcripts,

reduces
Realtime

services, and laptop rentals related to hearings and trial by
15%.

- 99 -

C.
Chamberlain

Deposition-Related Fees

seeks

$9,469.27

for

Realtime

and

associated

computer rentals, as well as $6,798.74 for rough, condensed,
computer-based, and expedited transcripts, all related to nearly
30 pretrial depositions.

Though TTI correctly points out that

both types of expenses are generally considered to be obtained
for

convenience

rather

than

out

of

necessity,

see,

Cascades

Computer Innovation, LLC v. Samsung Elecs. Co., No. 11 C 4574,
2016

WL

612792,

at

*4

(N.D.

Ill.

Feb.

16,

2016)

(Realtime

services); DSM Desotech, Inc. v. 3D Sys. Corp., No. 08 CV 1531,
2013 WL 3168730, at *4 (N.D. Ill. June 20, 2013) (condensed and
electronic

transcripts),

here

Chamberlain

explains

that

both

were reasonably necessary given tight timelines in this case,
namely: (1) transcripts from July and August 2016 depositions
needed to prepare for a preliminary injunction hearing set for
August 30, 2016; (2) transcripts from December 2016 and January
2017

depositions

needed

to

prepare

expert

reports

due

on

December 14, 2016 and January 23, 2017, respectively, as well as
for the contempt hearing on January 5-6, 2017; (3) transcripts
from

July

2017

depositions

necessary

to

prepare

for

Daubert

motions, due July 21, 2017, and motions in limine, due July 28,
2017.

The Realtime services and expedited transcripts were thus

reasonably necessary for Chamberlain and its experts to prepare
- 100 -

in advance of Court-scheduled hearings and deadlines.

The Court

will allow the $16,268.01 in costs under this category.
D.

Video

Chamberlain seeks costs for video depositions of all of its
own

and

TTI’s

witnesses.

But

generally,

“[c]ourts

in

this

circuit will not award costs for videotaping depositions where a
transcript was also purchased.”

Martinez v. City of Chicago,

No. 14 CV 369, 2017 WL 1178233, at *20 (N.D. Ill. Mar. 30, 2017)
(quotation

omitted)

explained,

Chamberlain

transcripts
Chamberlain’s

for

(brackets

in

original).

purchased

each

explanation

daily,

of

many

of

hourly,

as

already

or

expedited

depositions.

these

that

And

Further,

these

witnesses

were

outside the Court’s subpoena power is insufficient to entitle it
to these costs.

See, Clearlamp, LLC v. LKQ Corp., No. 12 C

2533, 2016 WL 7013478, at *3 (N.D. Ill. Nov. 30, 2016).
Court

declines

to

award

these

costs,

save

for

those

The
costs

related to those videotaped depositions played at trial, namely
Carlson, Cameron, Butler, and Ely.

See, LG Elecs. U.S.A., Inc.

v. Whirlpool Corp., No. 08 C 0242, 2011 WL 5008425, at *3 (N.D.
Ill. Oct. 20, 2011) (awarding costs for video depositions played
in court).

- 101 -

E.
Chamberlain

Digitization and Synchronization
also

seeks

costs

for

the

synchronization of several video depositions.

digitation

and

These costs will

be taxed for those four videotaped depositions mentioned above
that were played at trial.

Id. (synchronization fees may be

taxed when necessarily obtained for use in the case).

But as

the other video recordings were not reasonably necessary for the
case, the Court will not award fees for their digitization and
synchronization.
F.
Chamberlain

seeks

Fees for Witnesses
$6,443.13

for

attendance

fees,

travel

costs and lodging for its expert witnesses, of which TTI objects
to

$853.30

in

first

class

and

duplicative

$2,268.00 for unnecessary lodging charges.

airfare

and

to

28 U.S.C. § 1920(3)

authorizes the award of costs to reimburse witnesses for their
reasonable travel and lodging expenses, and 28 U.S.C. § 1821
provides for a per diem of $40.00 per day for attendance at
court hearings or deposition.

See,

28 U.S.C. § 1920(3); 28

U.S.C. § 1821(a)-(b); accord Olivarius v. Tharaldson Prop. Mgmt.
Inc., No. 08 C 463, 2012 WL 1117468, at *5 (N.D. Ill. Apr. 3,
2012).

Further, a witness’s travel costs are taxable, but only

“at the most economical rate reasonably available.”
§ 1821(c)(1).

28 U.S.C.

Concerning the airfare: Chamberlain arranged for
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two first-class flights for its expert, Dr. Rhyne, even though
the doctor apparently only took one of these flights—the other
seems to have been booked as an alternative.

The Court declines

these costs, which do not represent travel booked “at the most
economical

rate

reasonably

available.”

Id.

Chamberlain

now

concedes that it cannot recover the costs of lodging for its
experts for those days spent preparing, as opposed to days spent
testifying.

DSM

Desotech,

2013

WL

3168730,

at

*1-2.

The

balance of Chamberlain’s lodging and attendance fees, however,
is recoverable.

See, Olivarius, 2012 WL 1117468, at *5.

After

subtracting the $853.30 in first class/duplicative airfare and
the $2,268.00 for unnecessary lodging charges, the Court allows
$3,321.83 in witness costs.
G.
Chamberlain
including

time

seeks
billed

Exemplification
$77,394.53

by

Michael

in
Ko,

exemplification
the

on-site

costs,

technician

Chamberlain used at trial, and Joshua Rider, a Winston & Strawn
employee,
support.

who

created

demonstratives

and

provided

technical

As an initial matter, the costs of preparing exhibits

may be recovered, Trading Techs. Int’l, Inc. v. eSpeed, Inc.,
750 F. Supp. 2d 962, 981 (N.D. Ill. 2010) (citing Cefalu v.
Vill. of Elk Grove, 211 F.3d 416, 428-29 (7th Cir. 2000)), but
only for exemplification that was reasonably necessary “to the
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presentation of one’s case to the court,” Cefalu, 211 F.3d at
429 (citing 18 U.S.C. § 1920(4)).

“When a prevailing party does

not identify the exhibits for which it claims costs, the court
should

deny

awarding

costs

for

the

exhibits

because

it

is

impossible to determine whether the costs were necessary for use
in the case.”

Trading Techs., 750 F. Supp. 2d at 981 (citations

and internal quotations omitted).
Chamberlain

submits

a

summary

sheet

and

three

invoices

describing its exemplification expenses. (See, Dkt. 638-4.)
the

entries

are

generic

determine

whether

reasonably

necessary.

specific-enough

item

and

the

provide

the

labored-over
When

that

the

might

Court

basis

demonstratives

invoices
be

no

actually

taxable

But

were
list

(e.g.,

to

a

“rhyne

slides,” referring to demonstratives used during the testimony
of Chamberlain’s technical expert, Dr. Rhyne), those items are
lumped together with other either non-taxable or else underdetailed

items,

thus

making

it

determine appropriate costs.

impossible

for

the

Court

to

See, Fox v. Will Cty., No. 04 C

7309, 2009 WL 723385, at *3 (N.D. Ill. Mar. 11, 2009) (refusing
costs

where

taxable”

as

invoice
well

as

included
“others

information been provided”).

“items
that

that

might

be

are

clearly

taxable

had

not
more

Chamberlain has failed to justify

its exemplification expenses, so the Court will not award them.
- 104 -

See,

id.

(finding

unjustified

expenses

not

reasonably

necessary).
H.

Copying

Copying costs are recoverable but must be reasonable and
“necessarily

obtained

for

§ 1920(4).

Chamberlain

use

in

must

the

case.”

“identify

the

See,

28

nature

U.S.C.

of

each

document copied, the number of copies of each document prepared,
the

copying

cost

per

page,

and

the

total

copying

cost.”

Druckzentrum Harry Jung GmbH & Co. KG v. Motorola, Inc., No. 09
CV

7231,

2013

WL

147014,

at

*7

(N.D.

Ill.

Jan.

(citation and internal quotation marks omitted).

11,

2013)

Beyond this,

however, Chamberlain need not “submit a bill of costs containing
a description so detailed as to make it impossible economically
to recover photocopying costs.”

Northbrook Excess & Surplus

Ins. Co. v. Procter & Gamble Co., 924 F.2d 633, 643 (7th Cir.
1991).

Through an attorney affidavit (Dkt. 636), Chamberlain

represents that the copies reflected in its summary and invoices
(Dkt.

638-5)

statements,
directs,

as

were
well

crosses,

used
as
and

to
in

support

examination

depositions.

opening

and
for

binders
Neither

closing
sixteen

Chamberlain’s

affidavit nor its invoices state the number of copies made of
each

document,

although

Chamberlain’s

memorandum

in

support

explains that while the answer is seven of each, Chamberlain
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only seeks costs for three copies a piece given this Court’s
recognition that “district courts have usually limited recovery
to three sets of copies, as a prevailing party may not recover
copies made for its personal use, but may recover for copies
submitted to the court and opposing counsel.”

Menasha Corp. v.

News Am. Mktg. Instore, Inc., No. 00 C 1895, 2003 WL 21788989,
at

*4

(N.D.

quotations

Ill.

omitted).

July
As

31,
to

2003)
the

(citations

cost

per

and

page:

internal

Chamberlain

explains that the in-house copying rate at Winston & Strawn is
$0.10/page; this rate appears to be the same for black and white
copies at Ricoh, one of Chamberlain’s external vendors.

(See,

Dkt. 638-5 at 5.)
These invoices also include non-recoverable expenses such
as “general pickup and delivery” (Dkt. 638-5 at 6) and “delivery
charge” (id. at 9; see, Chi. Bd. Options Exch., Inc. v. Int’l
Sec. Exch., LLC, No. 07 CV 623, 2014 WL 125937, at *3 (N.D. Ill.
Jan. 14, 2014) (costs of courier, postage, and delivery charges
are typically considered overhead and not allowable as costs)),
as well as binders and tabs, Berry Plastics Corp. v. Intertape
Polymer Corp., No. 310 CV 00076, 2017 WL 167829, at *8 (S.D.
Ind. Jan. 17, 2017) (“tabs, hole drilling, binders, and document
scanning [. . .] are not compensable”).

- 106 -

Given the above, the Court awards copying costs as follows:
Chamberlain is entitled to costs for three copies of each of the
deposition and trial documents described in its exhibits.

If

the invoices submitted do not already reflect this reduction —
from

seven

copies

to

three—Chamberlain

shall

make

appropriate calculation in its revised bill of costs.

the
Costs

shall be calculated on a $0.10/page rate for black and white
copies,

and

apparently

$0.60/page

the

Chamberlain

going

shall

rate

rate

not

at

be

for

color

Ricoh,

awarded

copies

see,

costs

Dkt.
for

(the

latter

638-5
the

at

3).

remaining,

untaxable or otherwise under-explained, miscellaneous items in
these invoices, including delivery charges, binders, and tabs.
I.

E-Discovery Fees

Chamberlain seeks $61,680.65 in costs for optical character
recognition
scanning.
expenses
costs

(“OCR”),

Bates

stamping,

and

general

document

(See, E-Disc. Expenses Summary, Dkt. 639-1.)
are

under

“typically
28

U.S.C.

not

recoverable

§ 1920(4),

because

as

OCR

prevailing-party

they

are

incurred

purely to make a document searchable (as opposed to readable).”
Midwest Fence Corp. v. U.S. Dep’t of Transportation, No. 10 C
5627,

2018

WL

1535081,

(citations omitted).

at

*3

(N.D.

Ill.

Mar.

29,

2018)

Costs for Bates labeling, however, have

been found to be taxable.

Id. (citing DSM Desotech, Inc. v. 3D
- 107 -

Sys. Corp., No. 08 CV 1531, 2013 WL 3168730, at *2 (N.D. Ill.
June

20,

2013)

(collecting

cases)).

However,

Chamberlain’s

papers lump together costs for OCR, Bates, and scanning without
providing a clear breakdown.
Dkt. 639-1.)

(See, E-Discovery Cost Summary,

In the absence of a breakdown of these costs, the

Court exercises its discretion to award 25% of the sought-after
e-discovery expenses so that TTI will not be taxed for costs not
recoverable under Section 1920(4).

See, e.g., Allen v. City of

Chicago, No. 10 C 3183, 2016 WL 1070828, at *9 (N.D. Ill. Mar.
16, 2016) (noting that where “the prevailing party has not met
its burden of showing that the requested costs were necessarily
incurred
either

and

reasonable

reduced

copying

. . .
costs

courts
by

a

in

this

substantial

district

have

percentage

or

denied copying costs entirely” and awarding 25% of the requested
e-discovery costs given the absence of a breakdown of the fees
charged); Intercontinental Great Brands LLC v. Kellogg N. Am.
Co., No. 13 C 321, 2016 WL 316865, at *2 (N.D. Ill. Jan. 26,
2016) (awarding 25% of requested processing fees in absence of a
breakdown).

The Court thus awards $15,420.16 in e-discovery

costs to Chamberlain.
VIII.
For

the

reasons

CONCLUSION

stated

herein,

following:
- 108 -

the

Court

orders

the

1.

TTI’s Motion for Judgment as a Matter of Law is denied

(Dkt. 573);
2.

TTI’s Motion for a New Trial is denied (Dkt. 619);

3.

Chamberlain’s

Motion

for

a

Permanent

Injunction

is

granted (Dkt. 622);
4.

Chamberlain’s Motion for Enhanced Damages is granted

(Dkt. 624, 625), and the Court accordingly awards Chamberlain
$11.4 million in treble damages;
5.

Chamberlain’s

Motion

for

Prejudgment

Interest

and

Supplemental Damages is granted in part (Dkt. 630), and the Court
awards the following:

a.
by

using

Prejudgment
the

52-week

interest
treasury

of

$42,347,

bill

rate,

calculated
compounded

monthly;
b.

For the ‘275 patent, $900,793 in GDO lost profits;

$54,672 in royalties; and $134,496 in accessory lost profits,
unless TTI has some repurchased GDO stock still on hand, in
which case TTI may move the Court within fourteen (14) days
to reduce the accessory lost profits damages accordingly;
c.
6.

For the ‘966 patent, $18,224 in royalties.

Chamberlain’s Motion for Attorneys’ Fees is granted in part

(Dkt. 703, 704), though the Court will not order any fees until the
parties submit, within fourteen (14) days, a joint report as described
in this ruling;
- 109 -

7.

Chamberlain’s Bill of Costs is granted in part (Dkt. 634),

though the Court will not order any costs until Chamberlain submits,
within fourteen (14) days, a revised bill of costs in accordance with
this ruling.

IT IS SO ORDERED.

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

5/23/2018

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