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

United States District Court, N.D. Illinois, Eastern Division

January 23, 2017



          Harry D. Leinenweber, Judge

         Before the Court is Plaintiff's Motion to Enforce the Court's Preliminary Injunction and for an Order to Show Cause Why Defendants Should Not Be Held in Contempt (“the Motion”) [ECF No. 211]. The parties engaged in extensive briefing and offered testimony on the Motion, including at a hearing before the Court. For the reasons stated herein, the Court grants the Motion in part.

         I. BACKGROUND

         This litigation involves Plaintiff's claim of infringement with respect to patents it holds on a certain type of garage door opener (“GDO”). This Court granted Plaintiff's request for a preliminary injunction and, on September 20, 2016, entered an order (the “PI order”) prohibiting Defendants from further making, using, selling or offering to sell in the United States or importing into the United States any of their Ryobi GD200 garage door openers likely to infringe claims 1 and 5 of U.S. Patent No. 7, 224, 275 (“the '275 patent”). Independent claim 1 of the '275 patent claims a movable barrier operator comprising, as relevant, “a wireless status condition data transmitter [that] 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.” Dependent claim 5 recites the movable barrier operator of claim 1 “wherein the plurality of operating states includes at least one of” various different GDO operations, such as “moving a movable barrier in a first direction, ” “moving the movable barrier in a second direction, ” and “a lighting status change.” In the memorandum opinion accompanying its PI order, the Court held that Plaintiff demonstrated a likelihood of success on the issue of whether Defendants' Ryobi GD200 infringes Claim 1 of the '275 patent. Specifically, the Court noted that “the crux of the issue is the '275 patent's description of a self-aware controller in Claim 1.” (ECF No. 107, Mem. Op., at 9.) Whereas Plaintiff's technical expert “purchased a Ryobi GDO and dismantled it and, with the assistance of CGI engineers, conducted extensive testing, ” Defendants' infringement expert “did not examine the Ryobi GDO.” (Id. at 7.) Plaintiff's expert testified that the Ryobi GDO “did not rely upon any external sensors to obtain the status conditions of the GDO, ” including “garage door open/shut, and garage lights on/off, ” which it was then “able to transmit . . . upon request.” (Id.) Thus, both the Ryobi GDO and the patented invention “obtained and transmitted similar data without the aid of external sensors.” (Id.) As the precise wording of the Court's ruling suggests, the finding of “similar data” transmission as between the original Ryobi GDO and the patented invention focuses on the substance of the data transmitted, not the number of signals required for transmission or, more broadly, the message format.

         On December 6, 2016, Defendants filed a Notice of Redesign [ECF No. 203] in which they asserted that they successfully designed around the '275 patent. Their only change to the design of the original Ryobi GDO concerned the communication of GDO information to smart phone applications. As with the original, the redesigned Ryobi GDO's wireless status condition data transmitter is capable of signaling to the end user whether, for example, the garage door is open or closed, the lights on or off. Rather than transmitting, in a single signal, information corresponding to multiple changes in the status of the GDO, the redesigned Ryobi GDO transmits a signal that contains information corresponding only to one such change. For example, if both door position and lighting have changed, then the redesigned product transmits one signal indicating the door change and a second successive signal, milliseconds later, communicating the lighting change. Vitally, the data transmitted still corresponds to the same set of characteristics drawn from the same defined set of operating states of the same GDO. Only the transmission format has changed.

         Defendants have imported the redesigned Ryobi GDO into the United States for sale at Home Depot. Following the notice of redesign and discovery of Defendants' importation of the redesigned Ryobi GDO, Plaintiff filed the Motion. Both parties submitted briefs, and the hearing on the Motion followed.


         The primary question in a contempt proceeding is “whether the newly accused product is so different from the product previously found to infringe that it raises a fair ground of doubt as to the wrongfulness of the defendant's conduct.” TiVo Inc. v. EchoStar Corp., 646 F.3d 869, 882-883 (Fed. Cir. 2011). The analysis centers on “those aspects of the accused product that were previously alleged to be, and were a basis for, the prior finding of infringement.” Id. “[A] contempt proceeding does not open to reconsideration the legal or factual basis of the order alleged to have been disobeyed and thus become a retrial of the original controversy.” Maggio v. Zeitz, 333 U.S. 56, 69 (1948).

         Where two products are functionally identical, a redesigned product is not colorably different. Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1371 (Fed. Cir. 2014). The moving party bears the burden of proving by clear and convincing evidence both that the newly accused product is not more than colorably different from the product previously found to infringe and that the newly accused product actually infringes. See, Tivo Inc., 646 F.3d at 882; Stotler & Co. v. Able, 870 F.2d 1158, 1163 (7th Cir. 1989).

         Judicial estoppel precludes a party who “successfully urges a particular position in a legal proceeding . . . from taking a contrary position in a subsequent proceeding where its interests have changed.” Cardpool, Inc. v. Plastic Jungle, Inc., 817 F.3d 1316, 1323 (Fed. Cir. 2016). In particular, prosecution history estoppel can prevent a patentee from relying on the doctrine of equivalents when the patentee relinquishes subject matter during the prosecution of the patent, either by amendment or argument. AquaTex Indus. v. Techniche Sol'ns, 419 F.3d 1374, 1382 (Fed. Cir. 2005).


         A. The Redesigned Ryobi GDO Is Not More Than Colorably Different from the Ryobi GDO Subject to the Court's Preliminary Injunction Order.

         Although the parties dispute their legal significance, certain facts are uncontested. For one, the only feature of the original Ryobi GDO that was redesigned relates to the status condition signals sent by the wireless status condition data transmitter. To the extent that multiple status conditions of the GDO change (i.e., the garage door opens and the lights turn on), the redesigned transmitter sends signals to the user's smart phone application seriatim (i.e., one signal communicating an open garage door, and another signal the status of the lights). On the other hand, the wireless status condition data transmitter of the original Ryobi GDO sent one signal to a user's cell phone application that was capable of communicating multiple status changes.

         For another, as between the original and redesigned Ryobi GDO, both the universe of data transmitted and end-user functionality remain unchanged. (See, e.g., ECF No. 255, Hr. Tr., at 55:5-8.) Additionally, both the original and redesigned Ryobi GDOs employ what have been termed “Hall effect sensors, ” external to the GDO controller, to determine the position of the garage door. (Id. at 133:4-7.) Although the parties dispute whether the presence of these Hall effect sensors obviates the “self-awareness” of a GDO ...

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