Claims to Wireless Transmission of Status Data Held Abstract
Chamberlain Group v. Techtronic Industries Co., __ F.3d __, 2019 WL ___ (Fed. Cir. Aug. 21, 2019) (Lourie, O’Malley, CHEN) (N.D. Ill.: Leinenweber) (3 of 5 stars)
Fed Cir reverses liability judgment as to one Chamberlain patent, affirms liability as to another, and vacates damages enhancement and fee award.
Subject-matter eligibility: Chamberlain’s first patent related to the wireless communication of information within a garage door opener setup about the door’s status. The claims are patent-ineligible under § 101, and the district court erred in denying JMOL. At Alice step one, “the broad concept of communicating information wirelessly, without more, is an abstract idea,” Op. at 6, and the opinion cites Affinity Labs v. DIRECTV, 838 F.3d 1253 (Fed. Cir. 2016), and Affinity Labs v. Amazon.com, 838 F.3d 1266 (Fed. Cir. 2016). The opinion reasons that the claims do not focus on a specific improvement to relevant technology (as in McRO, 837 F.3d 1299 (Fed. Cir. 2016), and DDR Holdings, 773 F.3d 1245 (Fed. Cir. 2014)). “[T]he claims merely recite a system that communicates status information in the same ‘well understood’ manner that wireless transmissions have always occurred.” Op. at 8. That the claims were limited to a particular technological environment did not make them less abstract, nor did the physical nature of the garage door opener at issue.
At Alice step two, the claims lacked an inventive concept sufficient to confer patent eligibility. That the claimed system as a whole might have been novel was not on point. “The appropriate question is not whether the entire claim as a whole was ‘well-understood, routine and conventional’ to a skilled artisan . . . , but rather, there are two distinct questions: (1) whether each of ‘the elements in the claimed product . . . involve well-understood, routine, conventional activity previously engaged in by researchers in the field,’ and (2) whether all of the steps ‘as an ordered combination add nothing to the laws of nature that is not already present when the steps are considered separately.’” Op. at 9–10 (quoting Mayo, 566 U.S. 66, 73 & 79). Merely incorporating wireless transmission ‘cannot be an inventive concept here, because it is the abstract idea that the claims are directed to.” Op. at 10.
Confirmation of novelty: Chamberlain’s second patent related to a rechargeable battery backup system for a garage door opener. The record contained sufficient support for the jury’s determination that TTI had not proved the patent’s claims anticipated.
Procedural items: Applying 7th Circuit standards, the district court did not abuse its discretion in denying TTI’s post-TC Heartland motion to transfer venue, and the opinion notes, “TTI waited almost thirty days after TC Heartland and two months before trial to file a motion to transfer venue.” Op. at 13–14. The district court also did not abuse its discretion in admitting into evidence the PTAB’s decision not to institute IPR on the second Chamberlain patent. The district court’s limiting instruction (requested by TTI) comported with Supreme Court guidance in Microsoft v. i4i, 564 U.S. 91 (2011). The opinion notes, however, the limited probative value and possibility of confusion and prejudice associated with admission of such decisions into evidence.
Enhanced damages/attorney fees: These are vacated because they rested principally on activities relating to Chamberlain’s first patent. On remand the district court should consider whether the award is warranted with respect to only the second patent.
KEYWORDS: SUBJECT-MATTER ELIGIBILITY (NO); INVALIDITY (NO); VENUE; TRANSFER; ADMISSIBILITY; EVIDENCE