Introduction

On December 17, 2019, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made a decision in The Chamberlain Group, INC. v. One World Technologies, INC. The Chamberlain Group, INC (“CG”) is the owner of U.S. Patent No. 7,196,611 (“the ‘611 patent”), titled “Barrier Movement Operator Human Interface Method and Apparatus.”

The ‘611 patent “relates to barrier movement operators and particularly to human interface methods and apparatus for such systems.” More specifically, the use of “a motor for moving a barrier between open and closed positions and a controller,” which may be used for such things as garage doors. “One World Technologies, Inc. petitioned for inter partes review (“IPR”) of claims 18–25 of the ’611 patent. One World’s petition asserted that claims 18–25 are anticipated under 35 U.S.C. § 102(b) by U.S. Patent No. 4,638,433 (Schindler), and that claims 23 and 24 are obvious under 35 U.S.C. § 103(a) over the combination of Schindler and an owner’s manual for an industrial duty door operator (LiftMaster).” Chamberlain appealed the United States Patent and Trademark Office Patent Trial and Appeal Board’s (the “Board”) decision. The Federal Circuit affirmed that claims 18–25 of the ’611 patent was anticipated by U.S. Patent No. 4,638,433 (“Schindler”).

Decision

Per the standard, “[they] review[ed] the Board’s ultimate claim construction de novo and any underlying factual determinations involving extrinsic evidence for substantial evidence.” The Board addressed Chamberlain’s “responsive to” argument and the anticipation of claim 18 of the ‘611 patent considering the “responsive to” argument.

First, “Chamberlain argues the Board’s waiver finding was erroneous because (1) its “responsive to” argument responded to new arguments made in One World’s reply; and (2) its “responsive to” argument was consistent with its position throughout the IPR and was merely a clarification.” The Federal Circuit agrees that Chamberlain was clarifying their position and not raising a new issue, which means the “waiver [was] inappropriate in this situation.” It was concluded that “the Board erred in finding Chamberlain waived its “responsive to” argument.”

Second, the Federal Circuit addressed the anticipation of claim 18 of the ‘611 patent considering the “responsive to” argument. The Federal Circuit “agree[d] with the Board that nothing in claim 18 ‘requires the activities to be identified together or at the same time.’” With the evidence of “Chamberlain’s own expert, Dr. Davis, testif[ying] that claim 18 ‘requires identifying multiple activities by the controller and is silent on any timing requirement,’” anticipation may be concluded. Thus, with Chamberlain’s lack of timing mentioned and “Schindler’s disclosure of transmitting the signals in sequence” there is sufficient evidence of anticipation.

For the reasons above, the Federal Circuit affirms the Board’s judgement.

Conclusion

This decision determines that a new argument may be raised during the Board’s oral hearings, if it is a clarification of the position held during the trial.

Full Chamberlain Group, INC. v. One World Technologies, INC. decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2112.Opinion.12-17-2019.pdf

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