The Chamberlain Group Inc. v. Lear Corp..

756 F.Supp.2d 938

The CHAMBERLAIN GROUP, INC. and Johnson Controls Interiors L.L.C., Plaintiffs,

v.LEAR CORPORATION, Defendant.

No. 05 CV 3449.

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

Nov. 24, 2010.

Karl Regan Fink, Allen E. Hoover, John F. Flannery, Joseph Frank Marinelli, Rudy I. Kratz, Karl Regan Fink, Fitch, Even, Tabin & Flannery, Frederic R. Klein, Goldberg Kohn Ltd., Jeremy Matthew Downs, Goldberg, Kohn, Bell, Black, Rosenbloom & Moritz, Ltd., Martin J. Bishop, Thomas Kelly Anderson, Foley & Lardner, Roger Andrew Lewis, Goldberg Kohn Ltd., Chicago, IL, Steven C. Becker, David G. Luettgen, Jeffery N. Costakos, John C. Cooper, III, Steven C. Becker, Foley & Lardner LLP, Milwaukee, WI, J. Michael Huget, Deborah J. Swedlow, John C. Blattner, Butzel Long P.C., Ann Arbor, MI, Edward Alexander Eaton–Salners, Fish & Richardson P.C., San Diego, CA, Katherine Kelly Lutton, Katherine D. Prescott, Scott A. Penner, Tamara D. Fraizer, Fish & Richardson P.C., Redwood City, CA, Phillip J. Kessler, Butzel Long, Detroit, MI, Raymond N. Scott, Jr., Fish & Richardson P.C., Wilmington, DE, Rebecca L. Barbisch, Ruffin B. Cordell, Fish And Richardson P.C., Washington, DC, for Plaintiffs.Ernie L. Brooks, Frank A. Angileri, Thomas A. Lewry, Brooks Kushman P.C., Southfield, MI, Kimball Richard Anderson, Imron T. Aly, Ivan Michael Poullaos, John Reynolds McNair, Kathleen B. Barry, Kevin John O'Shea, Samuel Mendenhall, Winston & Strawn LLP, Chicago, IL, for Defendant.

MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Judge:

In 2005, patentee The Chamberlain Group, Inc. (“Chamberlain”), and its exclusive licensee Johnson Controls Interiors, L.L.C. (“JCI”), filed suit against Lear Corporation, alleging that Lear's Car2U® product infringed U.S. Patent Nos. 6,154,544 and 6,810,123. Plaintiffs subsequently amended their complaint to allege that Lear also had infringed U.S. Patent No. 7,412,056. Following the close of discovery, the parties filed a number of dispositive motions. Lear seeks summary judgment as to its asserted noninfringement of the '544, '123, and '056 patents. (R. 406; R. 407.) Lear also requests summary judgment of invalidity of all three asserted patents under 35 U.S.C. § 101. (R. 637.) In addition to opposing the preceding motions, Chamberlain and JCI urge the Court to grant summary judgment in their favor as to Defendant's alleged infringement of all three patents. (R. 418; R. 428; R. 431.) Plaintiffs also move for summary judgment on Lear's invalidity defense that the asserted claims are directed to unpatentable subject matter. (R. 652.) Plaintiffs further seek summary judgment on Defendant's inequitable-conduct claim. (R. 665.) They also move for summary judgment on Defendant's invalidity defenses based on alleged lack of definiteness, enablement, and written description. (R. 659.)

The Court rules as follows on these motions: Lear's motion for summary judgment as to its noninfringement of the '544 and '123 patents is granted in part and denied in part; Lear's summary-judgment motion of noninfringement of the '056 patent is denied; Plaintiffs' motions for summary judgment of Lear's alleged infringement of the '544, '123, and '056 patents are denied; Lear's motion for summary judgment of invalidity under 35 U.S.C. § 101 of the '544, '123, and '056 patents is denied; Plaintiffs' motion for summary judgment on Lear's invalidity defense that the asserted claims are directed to unpatentable subject matter is granted; Plaintiffs' motion for summary judgment on Lear's inequitable-conduct claim is granted in part and denied in part; and Plaintiffs' motion for summary judgment on Lear's invalidity defenses based on alleged lack of definiteness, enablement, and written description is granted in part and denied in part.

BACKGROUND

I. The Parties and the Lawsuit

Plaintiff, The Chamberlain Group, Inc., a manufacturer and purveyor of garage-door openers, is incorporated in Connecticut and has its principal place of business in Illinois. (R. 270 at ¶ 1; R. 410 at ¶ 2.) On November 28, 2000, Chamberlain acquired the rights to U.S. Patent No. 6,154,544 (“the '544 patent”), entitled “Rolling Code Security System.” (R. 270 at ¶ 9.) Almost four years later, Chamberlain also acquired U.S. Patent No. 6,810,123 (“the '123 patent”), which bears the same title as the '544 patent. (R. 270 at ¶ 15.) The '544 and '123 patents disclose a remote-control, garage-door opening system, which includes a transmitter and a receiver. (R. 342 at ¶ 3.) The '544 and '123 patents are in the same patent family (the '123 patent is a continuation of the '544 patent) and the two share the same specification. (R. 410 at ¶ 9.) The similarity between the two patents led Chamberlain to file a “terminal disclaimer” to the '123 patent. ( Id.)

On June 13, 2005, Chamberlain, owner of the '544 and '123 patents, sued Lear Corporation for infringement of those intellectual-property rights. (R. 410 at ¶ 5.) Lear is a manufacturer and seller of vehicle interior systems and components. (R. 342 at ¶ 1.) Chamberlain filed an Amended Complaint on October 5, 2005. (R. 43.) JCI, Chamberlain's exclusive licensee of the '544 and '123 patents, joined in the Amended Complaint as a named Plaintiff. ( Id.) On August 19, 2008, Plaintiffs again amended their complaint to add a count of infringement of the subsequently issued U.S. Patent No. 7,412,056 (“the '056 patent”). (R. 270.) Chamberlain and JCI allege that Lear's transmitters, which are installed in automobiles made by OEM for actuating garage-door operators made by Chamberlain, infringe the '544, '123, and '056 patents. ( Id.)

The allegedly infringing product is a universal transmitter used to open garage doors. (R. 434 at 26–27.) In opening those doors, the product's transmitter acts as a remote-control device that encrypts a coded signal each time the transmitter is actuated by the user and communicates that signal on a radio frequency carrier to the receiver, which is usually attached to a mechanical device that operates the garage door. Id. The receiver recognizes the coded signal sent from the transmitter, and then causes the mechanical device to operate the garage door. Id. The accused device is interoperable with Plaintiffs' garage-opening product, which incorporates the allegedly infringed patented technology. (R. 410–6 at 12; R. 455 at 14.)

II. The District Court's Grant of a Preliminary Injunction and Defendant's Successful Appeal to the Federal Circuit

Having held a Markman hearing, the district court ¹ entered a claim-construction order in which it defined “binary code” as a “code in which each code element may be either of two distinct kinds of values, which code may represent various kinds of letters and numbers including, but not limited to, a representation of a base 2 number.” (R. 148 at 8.) Construing “binary code” to encompass more than a binary number, the district court rejected Lear's proposed construction of “binary code generator.” ( Id. at 8–9.) Judge Moran reached the same conclusion with respect to “trinary code generator,” observing that the claims did not limit the initial binary code to a binary number, but instead left “the term open to encompass other numerical and character languages, including trinary code.” ( Id. at 9.)

Shortly thereafter, the district court issued a preliminary injunction in Plaintiffs' favor. (R. 166.) Defendant contended that its Car2U® product used only trinary numbers and algorithms, and Plaintiffs argued that the distinction was irrelevant because the Car2U® device relied on binary language to communicate trinary numbers.² Since Defendant conceded (as it had to) that the trinary numbers used by its Car2U® product were necessarily represented by 0s and 1s in the product's computer, the district court held that the accused product's “binary-coded trinary numbers” necessarily use binary code, and so the Car2U® product would likely fall within the '544's “binary-code” limitation. Id. This ruling formed the basis of the district court's decision preliminarily to enjoin Defendant.

On appeal, the Federal Circuit vacated the preliminary injunction and reversed the claim construction on which the district court had relied. The Chamberlain Group, Inc., et al. v. Lear Corp., 516 F.3d 1331 (Fed.Cir.2008). Judge Rader for the panel noted that, “for the district court, Lear's ‘binary-coded trinary numbers' were binary code, not trinary code.” Id. at 1336. Examining the '544 patent's specification, the Federal Circuit found that the disclosure restricts the term “binary code” to a narrower meaning than the ordinary or customary reading of the term. Id. at 1337. The Federal Circuit construed “code” as it is used in the claims and concluded that “the ' 544 patent's term ‘trinary code’ is relevant to construing ‘binary code’ because the term ‘code’ presumptively should carry the same meaning throughout the patent.” Id. at 1337. Specifically, the Federal Circuit agreed with Lear that the '544 patent uses the term “binary code” “to represent the meaning of the message,” or content, and “not its mere form.” Id. In other words, the '544 limits “binary code” to binary, or base 2, numbers and “trinary code” to trinary, or base 3, numbers, even though the trinary numbers may be still expressed in the binary “0s and 1s” language of the transmitter's microcontroller. Id. at 1139.

Observing that its reversal of the district court's claim construction “fundamentally influence[d] the likelihood of success in proving infringement,” the Federal Circuit vacated the preliminary injunction. Id. at 1340.

III. Post–Remand Developments

On remand, Defendant moved for summary judgment, arguing that the Federal Circuit's construction made it impossible for Plaintiffs to prove infringement of the '544 and '123 patents. (R. 236.) The district court ordered discovery to close on August 15, 2008, and entered a briefing schedule. (R. 258.) Two days before discovery was...