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

Northern District of Illinois, ilnd-1:2016-cv-06097

MOTION by Counter Defendants The Chamberlain Group, Inc., The Chamberlain Group, Inc., Plaintiff The Chamberlain Group, Inc. for judgment As A Matter of Law

Interested in this case?

Current View

Full Text

Case: 1:16-cv-06097 Document #: 577 Filed: 08/29/17 Page 1 of 10 PageID #:21472 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION THE CHAMBERLAIN GROUP, INC., Civil Action No.: 1:16-cv-06097 Plaintiff, v. Judge Harry D. Leinenweber TECHTRONIC INDUSTRIES CO. LTD., TECHTRONIC INDUSTRIES NORTH AMERICA, Jury Trial Demanded INC., ONE WORLD TECHNOLOGIES INC., OWT INDUSTRIES, INC., ET TECHNOLOGY PUBLIC, REDACTED (WUXI) CO. LTD., AND RYOBI TECHNOLOGIES, INC. Defendants. PLAINTIFF'S MOTION FOR JUDGMENT AS A MATTER OF LAW Plaintiff, The Chamberlain Group, Inc., moves for judgment as a matter of law ("JMOL") under Federal Rule of Civil Procedure 50. JMOL is appropriate where "a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue." Fed. R. Civ. P. 50(a)(1). Here, when the evidence is viewed in the light most favorable to OWT Industries, Inc.; One World Technologies, Inc.; Ryobi Technologies, Inc.; Techtronic Industries Co., Ltd.; and Techtronic Industries North America, Inc. (collectively, "TTI"), and TTI is given the benefit of all reasonable inferences, there is insufficient evidence of record to support a jury verdict in favor of TTI on the issue of infringement. I. Direct Infringement A reasonable jury would not have a legally sufficient evidentiary basis to find that TTI did not infringe claims 1, 5, and 15 of the '275 patent and claims 14, 17, and 18 of the '966 patent. 1 Case: 1:16-cv-06097 Document #: 577 Filed: 08/29/17 Page 2 of 10 PageID #:21473 A. The '275 Patent There is no dispute that TTI offered, sold, used, and imported into the United States the Ryobi GD200, and that TTI offers, sells, uses, and imports the Ryobi GD200A. Tr. at 266:7-17, 387:17-21 (Rhyne); Tr. at 519:14-24, 545:22-546:5, 570:1-3 (Farrah); Tr. at 611:25-612:2, 644:7-645:25 (Huggins); Tr. at 438:18-22, 450:16-24, 493:20-494:19 (Hansen); Tr. at 183:17-21, 190:25-191:2 (Sorice); Ely Dep. Tr. at 46:9-14; 86:14-87:16 (played via video); Tr. at 1058:15- 20, 1059:1-6, 1060:1-8 (McNabb); see also Tr. (8/21/17) at 8:6 ("The defendants may collectively be referred to as TTI."). The Ryobi GD200 and Ryobi GD200A meet all of the limitations of claim 1, 5, and 15, as illustrated below. The parties' dispute centers on a single issue—whether the GD200A, which transmits status information as defined by TTI specifications (PTX-239), "transmits a status condition signal that corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states"—a purely legal issue of claim construction that is not to be left to the jury under O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). Element-by-element analysis of Claim 1: Preamble: A movable barrier operator  Images from Ryobi GDO Manual showing door comprising in closed and open positions. PTX-625 at 93; Tr. 267:24-268:8 (Rhyne). Element 1: a controller having a  TTI's disclosures to the FCC showed a plurality of potential operational status microcontroller. PTX-218; see also Tr. 271:9- conditions defined, at least in part, by a 272:1 (Rhyne). plurality of operating states;  TTI's GDO design specification shows 2+ operational status conditions—door state and light state—defined by 2+ operating states. PTX-239; see also Tr. 275:4-276:19; 277:7-17 (Rhyne). Element 2: movable barrier interface  Ryobi GDO Manual shows a movable barrier that is operably coupled to the interface ("MBI"). PTX-625 at 9; see also Tr. controller 277:18-278:7 (Rhyne). 2 Case: 1:16-cv-06097 Document #: 577 Filed: 08/29/17 Page 3 of 10 PageID #:21474  TTI's disclosures to the FCC show the MBI coupled to the controller. PTX-218; Tr. 278:8- 16 (Rhyne). Element 3: a wireless status condition  Ryobi GDO Manual shows that the GD200 and data transmitter that is operably GD200A has a WiFi antenna. PTX-625 at 10. coupled to the controller, wherein the  TTI's disclosures to the FCC showed that the wireless status condition data Ryobi GDO has a controller labeled "WiFi transmitter transmits a status condition Mode." PTX-218. signal that:  GDO design specification showed WiFi Board/Module. PTX-239 at 7.  See also Tr. 278:17-281:10, 283:12-284:285:14 (Rhyne). Element 4: corresponds to a present  Claims require sending signal corresponding to operational status condition defined, at "a" present operational status condition, which least in part, by at least two operating is defined by at least two states – and therefore states from the plurality of operating only requires sending a single status condition at states; a time. PTX-0239 at 38; Tr. 287:24-289:16 (Rhyne). Element 5: comprises an identifier that  Dr. Rhyne showed using wireshark that the is at least relatively unique to the Ryobi GDO transmits a unique identifier, movable barrier operator, such that the specifically, MAC addresses. PTX-626; 295:7- status condition signal substantially 296:3 (Rhyne). uniquely identifies the movable barrier operator. Element-by-element analysis of Claim 5: Claim 5: The movable barrier operator of claim 1 TTI's GD200 and GD200 specification wherein the plurality of operating states includes includes a light state, door state, and at least one of: operation mode. PTX-0239 at 38;  moving a movable barrier in a first direction; 296:17-297:4.  moving the movable barrier in a second direction;  a lighting status change;  a vacation mode status change; Element-by-element analysis of Claim 15 (which depends on claim 14): Claim 14: A method comprising: Same reasons as claim 1 at a movable barrier operator: Element 1: detecting at least one Same reasons as claim 1 predetermined condition as corresponds to a present operational status defined, at least in part, by at least two operating states, of the movable barrier operator 3 Case: 1:16-cv-06097 Document #: 577 Filed: 08/29/17 Page 4 of 10 PageID #:21475 Element 2: in response to detecting the at TTI software showed that when you have a least one predetermined condition, new state, you call a " " automatically wirelessly transmitting a status subroutine. Tr. at 299:20-300:9 (Rhyne). condition signal that: Element 3: represents the present operational Same reasons as claim 1 status defined, at least in part, by the at least two operating states; and Element 4: comprises an identifier that is at Same reasons as claim 1 least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator. Claim 15: The method of claim 14 wherein Same reasons as claim 5 detecting at least one predetermined condition includes detecting at least one of:  moving a movable barrier in a first direction;  moving the movable barrier in a second direction;  a lighting status change;  a vacation mode status change; B. The '966 Patent There is no dispute that TTI offers, sells, uses, and imports into the United States the Ryobi garage door openers alone and in conjunction with the Ryobi ONE+ battery (the "Ryobi system"). See supra at 2; see also Tr. at 387:17-21 (Rhyne); 453:5-13, 468:24-469:1 (Hansen). The Ryobi system meets all of the limitations of claims 14, 17, and 18, as illustrated below. Again, the parties' main dispute centers on a legal issue—namely, whether direct infringement requires that all components be sold in a single box. Indeed, this Court has noted that "TTI sells the battery alongside the system, and this coupled with the design of a rechargeable station integrate into the Ryobi GDO could constitute potential direct infringement." ECF No. 104 at 12. A jury may find direct infringement where a party sells components separately, but those components are designed to be used together as a complete and 4 Case: 1:16-cv-06097 Document #: 577 Filed: 08/29/17 Page 5 of 10 PageID #:21476 operable system. See, e.g., St. Clair Intellectual Prop. Consultants, Inc. v. Toshiba Corp., No. 09-354-LPS, 2014 WL 4253259, *3 (D. Del. Aug. 27, 2014) ("direct infringement may be found where one sells or offers to sell all of the components of a claimed system, even if the components are sold separately and are required to be assembled by the customer"); Immersion Corp. v. Sony Comput. Entm't Am., Inc., 4:02-CV-00710-CW, Dkt. No. 1481, at 11 (N.D. Cal. Jan. 10, 2005) ("the jury could reasonably have found that [Defendant] sells a complete and operable system or apparatus rather than mere constituent parts, despite the fact that most of the consoles, controllers and games are sold separately") (slip op.); EBS Auto. Servs. v. Ill. Tool Works, Inc., No. 09-CV-996 JLS MDD, 2011 WL 4021323, at *9 (S.D. Cal. Sept. 12, 2011) ("a reasonable jury could conclude that [Defendant] sells a complete and operable apparatus, as opposed to mere components, even if the BrakeTech and the fresh and waste fluid containers are sold separately"). Element-by-element analysis of Claim 14 (which depends on claim 9): Claim 9: A battery charging apparatus, The Ryobi GD200 and GD200A has a flip out comprising: door with a socket that the ONE+ battery can plug into. PTX-625 at 36; Tr. 319:2-8 (Rhyne). Element 1: battery charging station in Ryobi GD200 and GD200A has a station, electrical communication with a rechargeable where you can put the ONE+ battery in and battery and in electrical communication with charge it. Tr. 319:23-320:11 (Rhyne). a head unit of a barrier movement operator for supplying power to at least one rechargeable battery Element 2: at least one rechargeable battery  Ryobi GD200 and GD200A has snap-in being removably connectable to electrically latches, so the ONE+ battery can be powered equipment other than and physically snapped in and removed. Tr. 320:13-24 separate or separable from the barrier (Rhyne). movement operator to provide power to the electrically powered equipment;  The ONE+ battery is designed to, and can, also be used in other Ryobi tools. Tr. 321:1-14 (Rhyne). Element 3: circuitry electrically connected to When the ONE+ battery is plugged in, it the battery charging station to supply power powers the GDO if the power is out. Tr. 5 Case: 1:16-cv-06097 Document #: 577 Filed: 08/29/17 Page 6 of 10 PageID #:21477 from the at least one rechargeable battery to 321:15-322:3 (Rhyne). the head unit Claim 14: The battery charging apparatus of The ONE+ battery can plug into the Ryobi claim 9, wherein the electrically powered high-powered drill, which is a tool. Tr. equipment comprises a tool. 322:20-323:2 (Rhyne). Element-by-element analysis of Claim 17 (which depends on claim 15 and 16): Claim 15: A method of power flow between See claim 9; Tr. 324:23-25 (Rhyne). at least one rechargeable battery, a barrier movement operator, electrically powered equipment other than and physically separate or separable from the barrier movement operator, the method comprising: Element 1: detecting whether the at least one Ryobi smartphone app displays whether rechargeable battery is in electrical ONE+ battery is plugged in, fully charged, or communication with a battery charging partially charged. PTX-0087; Tr. 325:1-16 station; (Rhyne). Element 2: providing power from a power Ryobi smartphone app demonstrates that the source to the at least one rechargeable battery ONE+ battery goes from partially charged to via the battery charging station; fully charged. PTX-0087; Tr. 325:17-25 (Rhyne). Element 3: providing stored power from the Dr. Rhyne unplugged the head unit and the at least one rechargeable battery to the head ONE+ battery could provide power to the unit via the battery charging station to head unit. Tr. 326:1-8 (Rhyne). perform movable barrier functions; and Element 4: providing power from the at least Dr. Rhyne used the ONE+ battery with drills, one rechargeable battery to the electrically saws, and flashlights. Tr. 326:9-14 (Rhyne). powered equipment in response to the at least one rechargeable battery being electrically connected to the electrically powered equipment. Claim 16: The method of claim 15, further The Ryobi GDO WiFi board will send a comprising notifying a user in response to at particular message (value of -1) if there is no least one of: ONE+ battery. PTX-87; Tr. 326:17-327:5 the at least one rechargeable battery (Rhyne). being removed from the battery charging station, and the stored power of the at least one rechargeable battery being below the threshold amount. Claim 17: The method of claim 16, wherein The notification that the ONE+ battery has 6 Case: 1:16-cv-06097 Document #: 577 Filed: 08/29/17 Page 7 of 10 PageID #:21478 notifying comprises generating at least one of been removed is visual. PTX-87; Tr. 327:9- an audible indication and a visual indication. 15 (Rhyne). Element-by-Element Analysis of Claim 18 (which depends on claim 15): Claim 18: The method of claim 15, wherein  See supra, at 6 (analysis of claim 15). the electrically powered equipment  The ONE+ battery can plug into the comprises a tool. Ryobi high-powered drill, which is a tool. Tr. 327:23-328:1 (Rhyne). II. Indirect Infringement A. The '966 Patent There is not sufficient evidence of record to support a jury verdict that the TTI Defendants did not indirectly infringe the claims of the '966 patent by inducing others to use and/or sell the Ryobi system in the United States. "To prove inducement of infringement, the patentee must show that the accused inducer took an affirmative act to encourage infringement with the knowledge that the induced acts constitute patent infringement." Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 843 F.3d 1315, 1332 (Fed. Cir. 2016) (citations and alterations omitted). TTI admits that its knowledge of the '966 patent dates back to 2010—well before it began work on the infringing Ryobi GDO system. PTX-308 at 15-16. Further, TTI explains how to charge the battery pack in its packaging, advertisements, and marketing, demonstrating that it intends customers to infringe the patents. PTX-625 at 36; Tr. 328:12- 329:13 (Rhyne). Lastly, % of TTI's customers use the ONE+ battery pack, showing direct infringement. DX-255 at 15; Tr. 468:24-469:1 (Hansen); Tr. at 1057:8-17 (McNabb). 7 Case: 1:16-cv-06097 Document #: 577 Filed: 08/29/17 Page 8 of 10 PageID #:21479 Dated: August 28, 2017 By: /s/ Katherine Vidal George C. Lombardi glombard@winston.com WINSTON & STRAWN LLP 35 W. Wacker Drive Chicago, IL 60601-9703 Telephone: (312) 558-5600 Facsimile: (312) 558-5700 Katherine Vidal KVidal@winston.com Michael Rueckheim MRueckheim@winston.com Matthew R. McCullough MRMcCullough@winston.com WINSTON & STRAWN LLP 275 Middlefield Road, Suite 205 Menlo Park, CA 94025 Telephone: (650) 858-6500 Facsimile: (650) 858-6550 Aldo A. Badini (pro hac vice) abadini@winston.com Shanna A. Lehrman (pro hac vice) slehrman@winston.com WINSTON & STRAWN LLP 200 Park Avenue New York, NY 10166 Telephone: (212) 294-4601 Facsimile: (212) 294-4700 Benjamin Elacqua (pro hac vice) elacqua@fr.com FISH & RICHARDSON PC 1221 McKinney Street, Suite 2800 Houston, Texas 77010 Telephone: 713-654-5300 Facsimile: 713-652-0109 Maria Elena Stiteler (pro hac vice) stiteler@fr.com FISH & RICHARDSON P.C. 60 South Sixth Street Minneapolis, MN 55402 Telephone: (612) 335-5070 8 Case: 1:16-cv-06097 Document #: 577 Filed: 08/29/17 Page 9 of 10 PageID #:21480 Facsimile: (612) 288-9696 Nicole L. Little (IL 6297047) nlittle@fitcheven.com FITCH, EVEN, TABIN & FLANNERY LLP 120 South LaSalle Street, Suite 1600 Chicago, Illinois 60603 Telephone: (312) 577-7000 Facsimile: (312) 577-7007 ATTORNEYS FOR PLAINTIFF THE CHAMBERLAIN GROUP, INC. 9 Case: 1:16-cv-06097 Document #: 577 Filed: 08/29/17 Page 10 of 10 PageID #:21481 CERTIFICATE OF SERVICE I certify that a copy of the foregoing document was served on opposing counsel via CM/ECF on August 28, 2017. /s/ Katherine Vidal Katherine Vidal ATTORNEY FOR PLAINTIFF THE CHAMBERLAIN GROUP, INC. 10