Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1016, Certain Access Control Systems and Components Thereof

HQ H295697 July 20, 2018 OT:RR:BSTC:IPR H295697 CBC/JW/CAB CATEGORY: 19 U.S.C. § 1337; Unfair Competition VIA EMAIL: Eric S. Namrow Morgan, Lewis & Bockius LLP 1111 Pennsylvania Avenue, N.W. Washington, DC 20004 Eric.Namrow@MorganLewis.com RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1016, Certain Access Control Systems and Components Thereof Dear Mr. Namrow, Pursuant to 19 C.F.R. part 177, the Intellectual Property Rights Branch (“IPR Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter. We find that the Ryobi GD126 and GD201 garage door openers (“GDOs at issue”) are subject to the limited exclusion order issued by the International Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1016 pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337. This ruling letter is the result of an inter partes proceeding administered by CBP. The inter partes proceeding involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your clients, Techtronic Industries Co. Ltd, Techtronic Industries North America Inc., One World Technologies, Inc., OWT Industries, Inc., and Et Technology (Wuxi) Co., Ltd. (collectively, “TTi”); and (2) The Chamberlain Group, Inc. (“Chamberlain”). See, e.g., Ruling Request at 1, 4–5; Commission Opinion Dated March 23, 2018 (“Comm’n Op.”) at 2–3. The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying ITC investigation, [[with red brackets]] in all of their submissions to the CBP. See CBP Email to the Parties Dated April 18, 2018. Information bracketed in red [[ ]] in this ruling letter will be redacted from the published ruling. See infra Section III.A. If there is additional information in this ruling letter not currently bracketed in red [[ ]] that either party believes constitutes confidential information and should be redacted from the published ruling, then the parties are asked to contact CBP within five (5) business days of the date of this ruling letter. Please note that any request for confidential treatment of information must provide a particularized showing of the specific harm that will result if the identified information is disclosed. Broad, unsubstantiated allegations of harm without specific examples articulating reasons for the harm will not suffice. As discussed in greater detail in Section III.A, a request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. part 177 faces a strong presumption in favor of disclosure. The person seeking this treatment must overcome that presumption with a request that is narrowly tailored and supported by evidence establishing a likelihood of substantial harm to a competitive position that outweighs the general history and public policy—embedded in the Freedom of Information Act (“FOIA”) (5 U.S.C. § 552) (“FOIA”), the common law, and the relevant Customs regulations—favoring transparency and disclosure. BACKGROUND U.S. Patent No. 7,161,319 As discussed below in Section I.B.1, the limited exclusion order issued in Investigation No. 337-TA-1016 prohibits, inter alia, the unlicensed entry of access control systems and components thereof that infringe one or more of claims 1–4, 7–12, 15, and 16 of U.S. Patent No. 7,161,319 (“the ’319 patent”). See Inv. No. 337-TA-1016 Limited Exclusion Order (March 23, 2018) (“1016 LEO”). The Chamberlain Group, Inc. is listed as the assignee of U.S. Patent No. 7,161,319. See U.S. Patent No. 7,161,319. Specification The specification of the ’319 patent states that “[t]he invention relates in general to movable barrier operators and in particular to movable barrier operators such as garage door operators or gate operators which include passive infrared detectors associated with them for detecting the presence of a person or other high temperature object for controlling a function of the movable barrier operator such as illumination.” The ’319 patent, 1:14–20. The specification of the ’319 patent further states that “[i]t is a principal aspect of the present invention to provide a quickly and easily retrofitted passive infrared detector for controlling the illumination of a garage door operator through conventional signaling channels.” The ’319 patent, 2:64–67 (emphasis added). Figure 1 of the ’319 patent, reproduced below, depicts a moveable barrier operator embodying the invention. The ’319 patent, 3:42–43.
Figure 1 of the ’319 Patent Figure 1 shows a garage door operator 10, positioned within a garage 12. The ’319 patent, 3:44–46. The garage door operator 10 is mounted to a ceiling 14 of a garage 12 for operation of a multipanel garage door 16. The ’319 patent, 3:46–49. The garage door operator 10 includes a head unit 24 for providing motion to the garage door 16 via a rail assembly 26. The ’319 patent, 3:47–49. Figure 2, reproduced below, shows the relationship between major electrical systems of a portion of the garage door operator shown in Figure 1. The ’319 patent, 3:16–18. A wall control unit 60 communicates over a line 62 with a head unit microcontroller 56 to effect control of a garage door operator motor 70 and a light 72 via relay logic 74 connected to the microcontroller 56. The ’319 patent, 3:63–4:9. Figure 4, not reproduced herein, shows the wall control unit 60 includes a wall control microcontroller 110, which provides an output to the line 62, which is connected to the microcontroller 56 in the garage door operator head. The ’319 patent, 4:22–32.
Figure 2 of the ’319 Patent Prosecution History The ’319 patent issued from U.S. Patent Application No. 10/717,263 (“the ’263 application”), filed on November 19, 2003. The first office action issued by the U.S. Patent and Trademark Office included a rejection of all of the pending claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. See Office Action of September 22, 2004. The examiner’s enablement rejection was not specific to any particular claim limitation, but was instead a sweeping request for a showing of support for the entirety of the claimed subject matter: The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The Examiner could not find any thread of support in the Specification for the filed claims. Office Action of September 22, 2004, at 2. In response, the applicant submitted the following claim chart mapping the claims to the specification:
Response of March 22, 2005 at Appendix. The applicant further stated with regard to the term “digital data bus” in application claims 1 and 11 (patent claims 1 and 9) “the applicant includes a definition of ‘digital’ from the Merriam-Webster Online Dictionary. Response of March 22, 2005 at 5. From this definition it is clear that applicant’s line 62 conveys data in accordance with definition 3 that is ‘relating to discrete units’. Id. The transmission of such discrete units is discussed as generating an on-off output code in paragraph 39 of the description.” Id. No amendments were made to application claims 1 or 11 (patent claims 1 and 9). The examiner subsequently withdrew the enablement rejection and eventually allowed application claims 1 and 11 to pass to issuance as patent claims 1 and 9, without any amendments to either one of these particular claims. See Notice of Allowance of September 1, 2006. Claims at Issue The scope of the limited exclusion order issued in Investigation No. 337-TA-1016 extends to claims 1–4, 7–12, 15, and 16 of the ’319 patent. Claims 1 and 9 of the ’319 patent are independent claims. See 1016 LEO. Independent claim 1 recites: 1. An improved garage door opener comprising a motor drive unit for opening and closing a garage door, said motor drive unit having a microcontroller and a wall console, said wall console having a microcontroller, said microcontroller of said motor drive unit being connected to the microcontroller of the wall console by means of a digital data bus. Independent claim 9 recites: 9. An improved garage door opener comprising a motor drive unit for opening and closing a garage door, said motor drive unit having a controller and a wall console, said wall console having a controller, said controller of said motor drive unit being connected to the controller of the wall console by means of a digital data bus. The sole difference between claims 1 and 9 is that claim 9 recites “controller” where claim 1 recites “microcontroller.” On a limitation by limitation basis, claims 1 and 9 can be represented as follows: Limitation Claim Language  A An improved garage door opener comprising  B a motor drive unit for opening and closing a garage door,  C said motor drive unit having a microcontroller [controller] and  D a wall console,  E said wall console having a microcontroller [controller],  F said microcontroller [controller] of said motor drive unit being connected to the microcontroller [controller] of the wall console by means of a digital data bus.   ITC Investigation No. 337-TA-1016 Procedural History at the ITC The Commission instituted Investigation No. 337-TA-1016 on August 9, 2016 based on a complaint filed by Chamberlain. 81 Fed. Reg. 52713 (August 9, 2016); Comm’n Op. at 1–3. The complaint alleged violations of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain access control systems and components thereof by reason of infringement of one or more of claims 1–4, 7–12, 15, and 16 of U.S. Patent No. 7,161,319 (“the ’319 patent”); claims 1, 10–12, and 18–25 of U.S. Patent No. 7,196,611 (“the ’611 patent”); and claims 7, 11–13, 15–23, and 34–36 of U.S. Patent No. 7,339,336 (“the ’336 patent”). Id. The notice of investigation named as respondents Ryobi Technologies Inc. of Anderson, South Carolina; Techtronic Industries Company Ltd. of Tsuen Wan, Hong Kong; Techtronic Industries North America Inc. of Hunt Valley, Maryland; One World Technologies, Inc. of Anderson, South Carolina; OWT Industries, Inc. of Pickens, South Carolina; and ET Technology (Wuxi) Co., Ltd., of Zhejiang, China. Id. The Office of Unfair Import Investigations was not a party to the investigation. Id. On October 27, 2016, the ITC determined not to review the Administrative Law Judge’s (“ALJ”) order (Order No. 4), which granted a motion to amend the Notice of Investigation to include two additional respondents: Techtronic Trading Limited of Kwai Chung, Hong Kong; and Techtronic Industries Factory Outlets Inc., d/b/a Direct Tools Factory Outlet of Anderson, South Carolina. Comm’n Opinion at 3. On November 7, 2016, the ITC determined not to review the ALJ’s order (Order No. 6) terminating the investigation as to Ryobi Technologies Inc. of Anderson, South Carolina. Comm’n Opinion at 3. Ryobi Technologies was terminated from the investigation because it no longer existed as an independent entity. Id. It was absorbed by Respondent One World Technologies, Inc. of Anderson, South Carolina. Id. On March 15, 2017, the ITC determined not to review the ALJ’s order (Order No. 15) granting a motion to terminate the investigation as to Techtronic Trading Limited of Kwai Chung, Hong Kong; and Techtronic Industries Factory Outlets Inc., d/b/a Direct Tools Factory Outlet of Anderson, South Carolina. Comm’n Op. at 3–4. On March 20, 2017, the ITC determined not to review the ALJ’s order (Order No. 18) granting a motion to terminate the investigation as to claims 10, 19–20, and 22 of the ’611 patent and claims 7, 11–13, 15–18, 35, and 36 of the ’336 patent. Comm’n Op. at 4. On May 3, 2017, the ITC determined to review the ALJ’s order (Order No. 23) granting respondents’ motion for summary determination of non-infringement of the ’319 patent. Comm’n Op. at 4. On review, the ITC construed “wall console” as a “wall-mounted control unit,” vacated Order No. 23, and remanded the investigation as to the ’319 patent to the ALJ for further proceedings. Comm’n Op. at 4 (citing Comm’n Op. (May 5, 2017) at 1–2). On May 31, 2017, the ITC determined not to review the ALJ’s order (Order No. 28) granting a motion to terminate the investigation as to all the pending claims of the ’611 patent. Comm’n Op. at 4. On November 9, 2017, the ITC determined not to review the ALJ’s order (order No. 36) granting a motion to terminate the investigation as to certain accused products and claims 19–23 of the ’336 patent. Comm’n Op. at 5. On October 23, 2017, the ALJ issued his final Initial Determination (“ID”) finding a violation of section 337 by respondents with respect to claims 1–4, 7–12, 15, and 16 of the ’319 patent. 83 Fed. Reg. 13517 (March 29, 2018); Comm’n Op. at 5. The ALJ found that the accused products directly infringe asserted claims 1–4, 7–12, 15 and 16 of the ’319 patent, and that respondents induce infringement of those claims. Comm’n Op. at 5. The ALJ also found that respondents failed to establish that the asserted claims of the ’319 patent were invalid for obviousness. Id. The parties appealed to the Commission, which determined to review the ID in-part. Id. Specifically, for the ’319 patent the Commission determined to review (1) the ID's finding that a combination of prior art references Doppelt, Jacobs, and Gilbert fail to render the asserted claims obvious; and (2) the ID's finding that a combination of prior art references Matsuoka, Doppelt, and Eckel fail to render the asserted claims obvious. See Notice of Comm’n Op. (March 23, 2018). On March 23, 2018, the Commission issued their final determination finding a violation of section 337. See Notice of Commission Op. (March 23, 2018). For the ’319 patent the Commission determined to (1) affirm the ALJ’ s finding that a combination of prior art references Doppelt, Jacobs, and Gilbert fail to render the asserted claims obvious and (2) affirm the ALJ's finding that a combination of prior art references Matsuoka, Doppelt, and Eckel fail to render the asserted claims obvious, but reverse the ALJ’s finding that Eckel is analogous art. Id. Accordingly, having found a violation of section 337 in this investigation, the Commission determined that the appropriate form of relief was, inter alia, a limited exclusion order prohibiting the unlicensed entry of access control systems and components thereof that infringe one or more of claims 1–4, 7–12, 15, and 16 of the ’319 patent that are manufactured by, or on behalf of, or are imported by or on behalf of respondents (i.e., TTi) or any of their affiliated companies, parents, subsidiaries, agents, or other related business entities, or their successors or assigns, for the remaining term of the ’319 patent except under license of the patent owner or as provided by law. See Notice of Comm’n Op. (March 23, 2018); 1016 LEO; Comm’n Op. at 2. Claim Construction at the ITC The ITC construed the following claim terms of the ’319 patent: ’319 Patent  Term / Phrase ITC Construction  wall console plain and ordinary meaning: ‘a wall-mounted control unit’ (ID at 120-21).  digital data bus plain and ordinary meaning which is ‘a conductor or group of conductors which conveys digital data’ (ID at 123).  controller plain and ordinary meaning which is ‘any type of control device’ (ID at 124).  motor drive unit unit where a driven motor resides (ID at 128).   The Accused Products at the ITC During the underlying investigation, Chamberlain accused TTi’s GD200, GD200A, and GD125 garage door openers (“’319 Accused Products”) of infringing the asserted claims of the ’319 patent. Comm’n Op. at 9; ID at 8. The ’319 Accused Products bear the Ryobi® brand. Comm’n Op. at 9; ID at 4. The parties agreed to treat the GD200 as representative of the GD200A and GD125 for purposes of conducting the infringement analysis. ID at 8. The ITC determined that: (i) the head unit of the ’319 Accused Products includes at least two microcontrollers (or controllers)—a “Motor Control MCU [microcontroller unit]” and a “Wi-Fi MCU [microcontroller unit],” (ii) that the ’319 Accused Products include an indoor keypad (wall console) that has a microcontroller (or controller), and (iii) that the Indoor Keypad’s microcontroller connects to the Wi-Fi MCU and communicates digitally over a wired connection. ID at 135. Infringement Analysis at the ITC The ALJ found “that the ’319 Accused Products, represented by the GD200, have been shown to infringe claims 1–4, 7–12, 15, and 16 of the ’319 patent.” ID at 129. The ALJ further noted that “the breadth of these patent claims makes it easy to infringe. Independent claims 1 and 9 simply require microcontrollers [or controllers] in a garage door opener’s ‘motor drive unit’ and wall console, with digital communication between them” and that a “non-infringing product – which avoids infringement by, for example, omitting a microcontroller in either location – would likely have meaningfully reduced functionality.” ID at 129–130 (citing ’319 patent at claims 1, 9). The ALJ’s limitation-by-limitation analysis of independent claims 1 and 9 is as follows, using the limitation notation set forth above in Section I.A.3, for ease of reference: “An improved garage door opener comprising” The ITC found that there was no dispute that the GD200 was a garage door opener. ID at 130 (“CGI [i.e., Chamberlain] argues the GD200 is a garage door opener and this is undisputed.”). “a motor drive unit for opening and closing a garage door” The ALJ found “no genuine dispute that the ’319 Accused Products meet this limitation [i.e., “a motor drive unit for opening and closing a garage door”].”  ID at 130-31. The ITC noted that Chamberlain contended that the head unit of the ’319 Accused Products was the motor drive unit “because it contains the motor and other components for opening and closing a garage door, as the claim recites” and that respondents opposition does not dispute this fact. Id. at 130–32 (internal quotations omitted). “said motor drive unit having a microcontroller [controller]” Notably, Respondents argued that “the [[ ]] is not a microcontroller of the motor drive unit because it does not control or drive the motor for opening and closing the garage door.” ID at 132. Nevertheless, the ALJ again saw no genuine dispute, explaining “I find the ‘motor drive unit’ is not limited to exactly that structure, subsystem, electrical board, etc. that controls the motor. Rather it is ‘a unit where a driven motor resides’ and it is undisputed that within the head unit of the ’319 Accused Products, there is a microcontroller.” ID at 133. In fact, the ALJ notes, [[ ]] Id. The GD200’s [[ ]] are pictured below (RX-332C at Fig. 3): [[ ]] Id. at 131–33. “a wall console” The ALJ determined that it was undisputed that the GD200 includes “a wall console.” Id. at 133. “said wall console having a microcontroller [controller]” The ALJ determined that it was undisputed that the GD200 includes the feature of a wall console having a microcontroller [or controller]. Id. at 133–34. “said microcontroller [controller] of s