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CHAMBERLAIN GROUP, INC. v. LYNX INDUSTRIES

March 31, 2003

THE CHAMBERLAIN GROUP, INC., A CONNECTICUT CORPORATION, PLAINTIFF,
v.
LYNX INDUSTRIES, INC., A CANADIAN CORPORATION, AND NAPOLEON SPRING WORKS, INC., AN OHIO CORPORATION, DEFENDANTS



The opinion of the court was delivered by: Rebecca R. Pallmeyer, District Judge.

MEMORANDUM OPINION AND ORDER

The patent at issue in this case addresses a concern for families who own two, three or even more cars: How does each driver get into the multiple-car family garage? The parties are competitors in the market for electronic garage door openers which open automatically in response to a coded signal from a transmitter. Defendants market remote garage door openers that recognize up to six different codes and permit users to program up to six separate transmitters. Plaintiff Chamberlain Group ("Chamberlain") claims Defendants' product infringes Plaintiff's own patented system for storing multiple transmitter codes.

Chamberlain originally filed this action on January 24, 2000, charging Defendant Lynx Industries and Napoleon Spring Works (collectively "Lynx") with infringing two of Chamberlain's patents: Patent Number Re. 35,364 ("the 364 Patent") and Patent Number Re. 36,703 ("the 703 Patent"). Plaintiff later withdrew the count related to the 703 Patent, however, and for the purposes of this opinion, the court will only consider the parties' arguments related to the 364 Patent. (See Chamberlain v. Lynx, 00 C 0454, Minute Order of August 15, 2002.)

Both the 364 Patent, issued to Chamberlain on October 29, 1996 and the 703 patent, issued on May 16, 2000, are reissues of Patent Number 4,750,118 ("the 118 Patent"), which issued on June 7, 1988. All three patents describe a "Coding System for Multiple Transmitters and a Single Receiver for a Garage Door Opener." The inventions described in the 364 and 703 Patents provide for a garage door opener that is able to store multiple transmitter codes in one receiver, thereby allowing the same garage door opener to be activated by a number of different transmitters. Although claims 1-4 of the 364 Patent and the 703 Patent are identical, the remaining claims of the two patents vary. In addition, the scope of the 703 patent is much broader; the 703 patent contains 30 claims, while the 364 Patent has only eight claims.

Chamberlain claims that the Lynx garage door openers store codes in a manner that either literally infringes the patented invention or operates as its equivalent. Lynx contends it does not infringe because (1) the Lynx garage door opener stores transmitter codes in a substantially different manner than the patented invention and (2) unlike the patented invention, the Lynx garage door opener does not require a "decoder" device. Both sides have moved for summary judgment on the infringement issues and, for reasons explained here, both motions are denied.

FACTUAL BACKGROUND

The court compiled the facts for this section from the parties' Local Rule 56.1(a)(3) and (b)(3) Statements of Material Facts and attached exhibits.*fn1 As described below, these statements reflect a number of factual disputes. The court notes, further, that the Federal Circuit has previously addressed claims 1 and 5 of the 364 Patent in Overhead Door Corp. v. The Chamberlain Group, Inc.,194 F.3d 1261 (Fed. Cir. 1999), a declaratory judgment action filed by another alleged infringer. The court presumes the reader's familiarity with that decision.

A. The Parties

Plaintiff Chamberlain is a Connecticut corporation with its principal place of business in Elmhurst, Illinois. (Defendants' Local Rule 56.1(a)(3) Statement of Undisputed Material Facts in Support of their Motion for Summary Judgment of Non-Infringement ¶¶ 1-2) (hereinafter, "Lynx 56.1").) Chamberlain is in the business of manufacturing and selling garage door openers that are designed for both the commercial and residential markets. (Id.) Lynx Industries is a Canadian corporation with its principal place of business in Archbold, Ohio. (Id. ¶ 4.) Co-defendant, Napoleon Spring Works, is a subsidiary of Lynx Industries and is an Ohio corporation that also has its principal place of business in Archbold, Ohio. (Id. ¶ 5.) Lynx claims that it is primarily engaged in the business of selling residential and commercial garage door hardware, a claim disputed by Chamberlain for unspecified reasons. It is undisputed, however, that Lynx markets and sells electronic garage door openers that have the capability of storing multiple transmitter codes in a single garage door opener. (Id. ¶ 115; Chamberlain's Statement of Additional Facts, (hereinafter, "Chamberlain's 56.1"), ¶¶ 25-27.)

B. Disputed Claims

As described in the 364 Patent, the patented invention is capable of storing and remembering a number of different transmitter codes, thus allowing the same garage door opener to be activated by different transmitters, each with a unique code. (The 364 Patent, Abstract, LX 0001.) In claims 1 and 5, the 364 Patent describes a specific process for storing these codes. The issue before the court is whether the Lynx garage door opener, which is also capable of storing and remembering a number of different transmitter codes, uses a process to store codes that infringes the 364 Patent.

Although the 364 Patent includes eight claims, the parties' dispute focuses on whether the Lynx accused garage door opener infringes independent claims 1 and 5 of the 364 Patent, which detail the process by which multiple transmitter codes are stored in the memory of a single garage door opener. Specifically, claim 1 states:

A garage door operator for a garage door comprising, a garage door operation mechanism with an output shaft connected to said garage door to open and close it, a radio receiver, a decoder connected to receive the output of said radio receiver, a microprocessor connected to receive the output of said decoder and to said garage door operation mechanism to energize it, a switch moveable between program and operate positions connected to said microprocessor to place said microprocessor in the operate or program mode, a memory means for storing a plurality of addresses connected to said microprocessor when said switch is in the program position, a memory selection switch connected to said microprocessor, a plurality of radio transmitters with different codes, said memory selection switch setable in a first position at a time when a first one of said radio transmitters is energized so that the code of said first transmitter will be stored in said memory means and said memory selection switch set in a second position at a time when a second one of said radio transmitters is energized so that the code of said second transmitter will be stored in said memory means, and said microprocessor placed in the operate mode when said switch is in the operate position so that either or both of said first and second radio transmitters when energized cause said microprocessor to energize said garage door operator mechanism.
(The 364 Patent, col. 5, lines 11-35) (emphasis added).

Lynx maintains that the accused device does not infringe claim 1 because Lynx's garage door opener does not utilize a "memory selection switch" or a "decoder" device in storing transmitter codes. (Lynx Memorandum in Support of Motion for Summary Judgment of Non-Infringement, (hereinafter, "Lynx Memo"), at 33.) As will be explained in more detail below, the memory selection switch in claim 1 describes a mechanical switch for storing transmitter codes in different memory locations. Although Chamberlain acknowledges that the Lynx garage door opener utilizes a software program rather than a mechanical switch to store codes, it maintains that the accused device stores transmitter codes into the memory of the garage door opener in an equivalent fashion to that set out in claim 1. (Chamberlain Memorandum in Opposition to Lynx's Motion for Summary Judgment of Non-Infringement and in Support of Summary Judgment of Infringement, (hereinafter, "Chamberlain's Memo"), at 15.)

The parties also dispute the proper construction of two terms in claim 1: "code" and "decoder." Lynx claims that the term "code" refers only to a newly received code that is to be stored in a memory location rather than to any previously stored code. (Lynx Memo, at 9.) Lynx maintains that the accused product stores newly received codes in the same memory location each time, while the patented invention operates to store new codes in different memory locations. Chamberlain disputes Lynx's construction of the claim terms and argues that, as properly construed, the term "code" means simply "the identity code of the transmitter"; an identity code, according to Chamberlain, is a "numerical value used to identify a transmitter." (Chamberlain's Memo, at 20-21.)

Lynx also claims that its accused device does not utilize a "decoder" device as contemplated by the 364 Patent. According to Lynx, the decoder device described in the 364 Patent is a "stand-alone" device that converts codes from quaternary format to binary format before sending this converted code to the microprocessor. (Lynx Memo, at 22.) Lynx points out that quaternary code format allows for far more unique codes than binary format, rendering quaternary format superior to binary. (Id. at 25.) Lynx maintains that the accused device does not have a "stand-alone" decoder, nor does the device convert a quaternary signal into binary format. (Lynx Memo, at 45.) Instead, according to Lynx, the accused device only utilizes binary format and sends a received code directly to the central processing unit, without going through a separate "stand-alone" decoder. (Id.)

Chamberlain disputes this construction of "decoder" and contends that the term is properly understood as a "subsystem which can receive the output of the radio receiver and convert it into a form wherein the data contained in the received transmissions can be interpreted by the microprocessor." (Chamberlain Memo, at 29.) Chamberlain claims further that the Lynx garage door opener does utilize a "decoder" device or its equivalent to convert an analog signal into a digital format. (Id. at 32.) According to Chamberlain, the analog signal is transmitted by a transmitter, and at some point after this analog signal is received by the Lynx garage door opener, it is converted into a digital signal by a device Chamberlain refers to as an "operational amplifier," which allows the device to store codes and operate the garage door. (Chamberlain Memo, at 32-33; Supplemental Declaration of Dr. Thomas Rhyne, (hereinafter, "Rhyne Suppl. Decl."), 15-16.) Chamberlain has not argued that the "decoder" device in the 364 Patent converts an analog signal into a digital signal, but nevertheless maintains that the "operational amplifier" performs the same function as the "decoder" device in the 364 Patent.

The parties also dispute whether the accused device infringes claim 5 of the 364 Patent. Claim 5, similar to claim 1, describes a procedure for storing transmitter codes into the memory of the garage door opener. Claim 5, however, encompasses a software embodiment of the memory selection switch. Specifically, claim 5 of the 364 Patent states:

An operator for controlling operation of equipment comprising: a radio receiver, a decoder connected to receive the output of said radio receiver, a microprocessor connected to receive the output of said decoder and to said equipment to energize it, first switch means for selection between program and operate positions connected to said microprocessor to place said microprocessor in the operate or the program mode, a memory means for storing a plurality of addresses connected to said microprocessor when said first switch means is in the program position, a memory selection second switch means connected to said microprocessor, a plurality of radio transmitters with different codes, said memory selection second switch means being adapted to select a first position at a time when a first one of said radio transmitters is energized so that the code of said first transmitter will be stored in said memory means and said memory selection second switch means being adapted to select a second position at a time when a second one of said radio transmitters is energized so that the code of said second transmitter will be stored in said memory means, and said microprocessor placed in the operate mode when said first switch means is in the operate position so that either or both of said first and second radio transmitters, when energized cause said microprocessor to energize said equipment.
(The 364 Patent, col. 6, lines 7-30) (emphasis added). The parties' dispute regarding the construction of "code" and "decoder" is the same here as in claim 1. In claim 5, the parties also dispute the proper construction of the claim term "memory selection second switch means," which represents the software embodiment of the memory selection switch. Lynx asserts that its accused device does not infringe claim 5 because it lacks a "decoder" device and because it lacks a structure that infringes the "memory selection second switch means" claim element. Chamberlain maintains that the structure utilized by the Lynx garage door opener is the same or equivalent to that described in claim 5.

The issue of infringement related to the "memory selection second switch means" is more complicated than the "memory selection switch" element in claim 1. Both sides agree that this term is drafted as a means-plus-function element, under 35 U.S.C. § 112, ¶ 6.*fn2 Once established that a term is written as a means-plus-function limitation, the court must interpret this limitation by deciding what the claimed function is, and next, what structures disclosed in the specifications correspond to the "means" for performing the function. Cardiac Pacemakers Inc. v. St. Jude Medical, Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). The parties agree that the function of this claim element is "to select different memory locations, thereby enabling the microprocessor to store transmitter identifiers in the memory locations." Overhead Door Corp., 194 F.3d at 1273. The parties, however, dispute the proper corresponding structure. Their contrasting views will be described in more detail in the discussion section of this opinion.

C. Prior Litigation Involving the 364 Patent

In August 1995, Overhead Door Corporation and GMI Holdings, Inc. (collectively, "Overhead") brought a declaratory judgment action in the United States District Court for the Northern District of Texas, alleging non-infringement of Chamberlain's original patent, the 118 Patent. Chamberlain counterclaimed for a declaration of infringement. (Overhead Door Corp. v. The Chamberlain Group, Inc., 3:95 CV 1648-D, at 1 (April 30, 1998 N.D. Tex.), Ex. 4 to Chamberlain's 56.1.) When the 364 Patent reissued, during the litigation, it was added to the litigation. (Id.)

On April 30, 1998, the district court concluded that Overhead's software system used to store transmitter codes into memory literally infringed the "different code" limitations of independent claims 1 and 5, but granted Overhead's motion for summary judgment on the software infringement claim, concluding that the "memory selection switch" of claim 1 and the "memory selection second switch means" of claim 5 do not cover a software embodiment. (Id. at 2-3; Special Master's First Report and Recommendation on Overhead's Motion for Summary Judgment of Non-Infringement and Chamberlain's Cross-Motion for Summary Judgment of Infringement, Ex. 2 to Chamberlain's 56.1, at 1; Special Master's Second Report and Recommendation on Overhead's Motion for Summary Judgment of Non-Infringement and Chamberlain's Cross-Motion for Summary Judgment of Infringement, Ex. 3 to Chamberlain's 56.1.)

On October 13, 1999, in Overhead Door Corp., 194 F.3d at 1275, the Federal Circuit Court of Appeals vacated that order. (Chamberlain's 56.1 ¶ 14.) The Federal Circuit concluded that the 364 patent must be construed to disclose a software embodiment. (Overhead Door Corp., 194 F.3d at 1272-73.) The Court of Appeals affirmed the district court's ruling that as a matter of law, the accused garage door opener did not literally infringe as to claim 1, as it did not have a mechanical switch. The Federal Circuit concluded, however, that the district court erred in granting summary judgment for plaintiff because there was a genuine issue of fact regarding whether Overhead's accused garage door opener did infringe the "memory selection switch" of claim 1 of the 364 Patent pursuant to the doctrine of equivalents; and whether the accused garage door opener was equivalent to the "memory selection second switch means" of claim 5 under 35 U.S.C. § 112, ¶ 6. (Id. at 1271-73.) Because there was an issue of fact to resolve, the court did not grant Chamberlain's cross-motion for summary judgment. (Id.) The court did, however, affirm the district court's finding that as a matter of law the accused garage door opener literally infringed the"different codes" limitations of claims 1 and 5. (Id. at 1275.)

After the Federal Circuit issued its opinion and before the trial, Overhead and Chamberlain entered an agreement, which became effective on January 1, 2001, granting Overhead a license to the 364 Patent. (Settlement and License Agreement, Ex. ¶ to Chamberlain's 56.1.)

D. How Does the Patented Invention Operate?

The patented invention is comprised of several components, including a transmitter, receiver, decoder, and microprocessor. (The 364 Patent, col. 3, lines 1-7; Figure 2, LX 0003.) The transmitter is a small box-like device that users typically keep in their car. (The 364 Patent, Figure 2, LX 0003.) Each transmitter contains a unique code that is transmitted via radio frequency to the garage door opener when the user presses the button located on the transmitter. (The 364 Patent, col. 1, lines 44-49; col. 3, lines 1-4.) This unique code is then received by the receiver, which supplies an input to a decoder, which in turn sends an output to the microprocessor of the garage door opener. (The 364 Patent, col. 3, lines 1-5.) The microprocessor is also connected to the motor that enables the garage door to move up and down. (The 364 Patent, col. 3, lines 5-10.) Each of these components function to allow the patented invention to store codes into memory and to move the garage door up or down. (The 364 Patent, col. 3, lines 40-59.)

Both sides agree that the patented invention has two different modes: program and operate. (Chamberlain's 56.1 ¶ 19.) The program mode allows the patented invention to store up to five transmitter codes into the memory of the patented invention, while the operate mode allows the patented invention to verify that a received code matches one of the previously stored codes, prior to moving the garage door up or down. (Id.) To alternate between these two modes, the patented invention includes a mechanical switch, depicted in Figure 2 of the 364 Patent, which allows a user to shift between the program and operate modes. (Id.; The 364 Patent, Figure 2, at LX 0003.) At least one transmitter must be stored into the memory of the patented invention before the garage door can be remotely activated. (The 364 Patent, col. 3, lines 40-50.)

In order to store transmitter codes in the five different memory locations, the patented invention includes a mechanical "memory selection switch," described in claim 1 and depicted in Figure 2, capable of selecting one of the five different memory locations.*fn3 (The 364 Patent, col. 4, lines 56-62.) In claim 5, the 364 patent also encompasses a software embodiment of the memory selection switch. (Chamberlain's 56.1 ¶ 20.)

The 364 Patent specifications describe in detail how the mechanical memory selection switch operates to store codes into its five different memory locations. (The 364 Patent, col. 3, lines 41-59.) Once the device is in the program mode, the user stores a code into the memory by pressing the transmitter button, which transmits a unique code to the receiver of the patented invention. (The 364 Patent, col. 3, lines 40-49.) This code is then "received by the receiver [of the patented invention] and decoded by the decoder . . . and supplied to the microprocessor unit. . . ." (Id.) At this point, if the mechanical memory selection switch is set to position one, the code will be stored in the corresponding first memory location. (Id.) An additional four codes can be stored in this manner by following the same procedure and alternating the mechanical memory selection switch between positions two through five. (Id.) In the event all five memory locations are occupied, while a new code is being stored, "all old codes" are erased when this new code is stored. (The 364 Patent, col. 4, line 65 — col. 5, line 5.) Thus all five previously stored codes would be erased, when a user stores a sixth code.

The court notes that the language contained in the specifications of the 364 Patent does not expressly describe the software memory selection switch. As stated above, however, the Federal Circuit has examined the 364 Patent and determined that Claim 5 encompasses a software memory selection switch as evidenced by Figure 3 of the 364 Patent. Overhead Door Corp., 194 F.3d 1261 at 1273. This court is similarly persuaded that Figure 3 depicts a software embodiment. Significantly, both sides agree that the 364 Patent includes a software embodiment that is, in some manner, depicted in Figure 3.*fn4 (Lynx Memo, at 15-16; Chamberlain Memo, at 22-23.)

According to the specifications of the 364 Patent, Figures 3 and 4 illustrate a flow chart that depicts the operation of the patented invention while in the program and operate modes. (The 364 Patent, col. 4, lines 23-25.) Lynx disputes that Figure 3 depicts the operation mode of the patented invention and instead claims that Figure 3 as a whole serves as the corresponding structure for the "memory selection second switch means" element contained in claim 5. (Lynx Memo, at 15-16.)

Although the parties disagree over the significance of Figure 3, both sides agree that the flow chart depicts a six-step process followed by the patented invention to store codes. (Lynx Memo, at 17; Chamberlain Memo, at 27-28.) These steps are followed when the garage door opener is in the program mode and a transmitter button has been pressed. (The 364 Patent, col. 4, lines 56-62.) Specifically, the six steps depicted in Figure 3 are: (1) validating newly received transmitter codes four times and incrementing a counter; (2) checking each newly received code against previously stored codes; (3) selecting a memory location for the newly received code; (4) incrementing a code location pointer; (5) checking the value of the incremented code location pointer; and (6) resetting the value of the incremented code location pointer. (Lynx Memo, at 17; Chamberlain Memo, at 27-28.)

The court notes that the parties do not provide any further explanation regarding the six steps, nor do the specifications of the invention explain the various steps as they appear in the flow chart. To the extent the court understands the steps included in Figure 3, the court believes that in the first two steps, the patented invention compares an incoming transmitter code against all previously stored codes to insure that only different codes are stored into the memory of patented invention. In fact, these codes are checked four times to insure that the new code has not been previously stored into memory. In step three, as this court understands it, the software of the patented invention operates to select one of the five memory locations in which to store the transmitter code. The software then moves, in step four, to the next memory location in sequential order. Although the parties do not explain the term "increment" in relation to the patented invention, the court believes that incrementing the code location pointer means moving the pointer to the next memory location. The final steps relate to the operation of the software when all five memory locations are full. If the software discerns that it has filled the final memory location, it will reset and prepare to store a new transmitter code in the first location.

Lynx claims that all six steps included in Figure 3 make up the structure of the software memory selection switch, referred to in claim 5 as the "memory selection second switch means." (Lynx Memo, at 17.) Chamberlain denies this assertion and claims that only functions 3 and 4 serve as the corresponding structure for the "memory selection second switch means." (Declaration of Dr. V. Thomas Rhyne, Ex. 8 to Chamberlain's 56.1 ¶ 27 n. 3) (hereinafter "Rhyne Decl.") The dispute between the parties is highly relevant to the issue of infringement. Lynx asserts that many of the steps listed in Figure 3 are not performed by the accused device and thus it does not infringe the patented invention. (Declaration of Thomas A. Gafford, Ex. O to Lynx's 56.1 ¶ 2) (hereinafter "Gafford Decl.").) Chamberlain does not claim that the Lynx garage door opener performs all six steps in storing codes into memory, but does allege that the Lynx software used to store codes performs steps 3 and 4. (Rhyne Decl. ¶ 29.)

Once the code is stored, both sides agree as to how the patented invention operates to remotely open or close a garage door. (Chamberlain's 56.1 ¶ 17.) When a transmitter button is pressed, a radio frequency containing the code is transmitted. (Id. ¶ 18.) This transmitted signal is received by the receiver of the patented invention, which in turn supplies an input to a decoder. (Id.) If the code matches a code previously stored in the patented invention, the decoder sends an output directed to the microprocessor unit, which then activates the motor to move the garage door. (The 364 Patent, col. 3, lines 5-8.) When in the operate mode, the garage door opener will compare a received code four times against the previously stored codes to insure a match before moving the garage door. (The 364 Patent, col. 4, lines 25-28.)

As explained above, the parties also dispute the nature of the "decoder" device as described in claims 1 and 5. The decoder device, in conjunction with the receiver and microprocessor, plays a role in both the program and operate modes of the patented invention. (The 364 Patent, col. 3, lines 40-59.) When the patented invention is in the program mode, a code is decoded prior to being stored in the microprocessor of the patented invention. (The 364 Patent, col. 3, lines 44-49.) On the other hand, when the patented invention is in the operate mode, the receiver, decoder and microprocessor all function to determine whether a newly received code matches a stored code, prior to activating the garage door. (The 364 Patent, col. 3, lines 50-55.) The court notes that the specifications do not explain how the decoder functions to decode a newly received code, nor do the specifications dictate what format the received code is decoded into or from prior to being sent to the microprocessor.

The components of the patented invention, including the decoder, are depicted in "block form" in Figure 2 of the 364 Patent. (The 364 Patent, col. 2, line 42; Figure 2, at LX 0003.)*fn5 As depicted in Figure 2, the receiver, decoder and microprocessor unit are all stand-alone or separate devices, connected to one another. (Id.) Specifically, Figure 2 depicts the decoder as connected to both the receiver and the microprocessor. (Id.)

Figure 2 also identifies each component with a number that is later used, along with the name of component, in the written specifications to reference that component. The decoder device is provided the number 43 in Figure 2 and in many instances throughout the specifications, the decoder is referred to specifically as "decoder 43," referring to the component as depicted in Figure 2. (The 364 Patent, col. 3, lines 3-5; col. 3, lines 44-46.) Based on Figure 2 and the references to "decoder 43" throughout the specifications, Lynx maintains that Chamberlain intended the decoder to be a stand-alone device. The court notes, however, that the specifications also state that "[i]n the present invention the decoder module in the receiver will ...


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