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Techtronic Industries Co. Ltd. v. International Trade Commission

United States Court of Appeals, Federal Circuit

December 12, 2019


          Appeal from the United States International Trade Commission in Investigation No. 337-TA-1016.

          Jason C. White, Morgan, Lewis & Bockius LLP, Chicago, IL, argued for appellants. Also represented by William R. Peterson, Houston, TX; Julie S. Goldemberg, Philadelphia, PA; Susan Baker Manning, Eric S. Namrow, Washington, DC.

          Carl Paul Bretscher, Office of the General Counsel, United States International Trade Commission, Washington, DC, argued for appellee. Also represented by Dominic L. Bianchi, Wayne W. Herrington, Sidney A. Rosenzweig.

          Katherine Vidal, Winston & Strawn LLP, Menlo Park, CA, argued for intervenor. Also represented by Matthew R. McCullough, Michael Rueckheim; Robert P. Courtney, Fish & Richardson P.C., Minneapolis, MN; Joseph V. Colaianni, Jr., Washington, DC; Benjamin Elacqua, Houston, TX.

          Before Lourie, Dyk, and Wallach, Circuit Judges.


         Techtronic Industries Co. Ltd. and Techtronic Industries North America Inc. ("TTI"), One World Technologies Inc. and OWT Industries Inc. ("One World"), and ET Technology (Wuxi) Co. Ltd. ("ET") (collectively, "Appellants") appeal from a final determination of the United States International Trade Commission (the "Commission"), rendered under Section 337 of the Tariff Act of 1930, codified as amended at 19 U.S.C. § 1337 (2018). Following an investigation, the Commission determined that each of the Appellants violated Section 337(a)(1)(B) through the importation of garage door opener products that infringe claims 1-4, 7-12, 15, and 16 of U.S. Patent 7, 161, 319 (the "'319 patent"). Certain Access Control Systems and Components Thereof, Inv. No. 337-TA-1016, USITC Pub. 4957, 2018 WL 8519593, at *1 ("Commission Determination") (Mar. 23, 2018); Notice of Final Determination in USITC Inv. No. 337-TA-1016, 83 Fed. Reg. 13, 517 (Mar. 29, 2018). The Commission then entered limited exclusion orders against each of the Appellants and cease and desist orders against TTI and One World (collectively, the "Remedial Orders"). See Commission Determination, 2018 WL 8519593, at *22-24; 83 Fed. Reg. 13, 517.

         We conclude that the Commission erred in its construction of "wall console," a term in each of the '319 patent claims. Accordingly, we reverse its construction and its final determination of infringement, and we vacate the Remedial Orders.


         Intervenor Chamberlain Group Inc. ("Chamberlain") develops and markets garage door opener technology. It owns the '319 patent, which discloses improved "movable barrier operators," such as garage door openers. '319 patent col. 1 ll. 14-20. The '319 patent explains that passive infrared detectors had been used in prior art garage door openers "for the detection of a person in a particular vicinity" and for automatically controlling functionality-such as lights or the motion of the garage door-accordingly. Id. col. 1 ll. 21-50. Passive infrared detectors were often associated with the head unit of the garage door opener, an approach the '319 patent describes as "expensive," "fragile," "deficient," and even potentially unsafe. Id. col. 1 l. 51-col. 2 l. 3. The patent describes that there was a need for "a passive infrared detector for controlling illumination from a garage door operator which could be quickly and easily retrofitted to existing garage door operators." Id. col. 2 ll. 4-7.

         The '319 patent discloses as its invention "a passive infrared detector for a garage door operator," '319 patent col. 2 l. 13, where "the infrared detector . . . [is] contained in a wall control unit," along with an ambient light comparator and a microcontroller. Id. col. 2 ll. 17-19. The comparator provides a signal to the microcontroller indicating the status of the lights in the garage, and the microcontroller "communicates over the lines carrying the normal wall control switch signals with a microcontroller in a head unit of the garage door" opener, id. col. 2 ll. 36-38, using "conventional signaling channels," id. col. 2 ll. 66-67. The '319 patent proposes methods of programming the wall control unit's microcontroller to control the head unit. The patent also discloses a preferred embodiment, which is illustrated in the figures. The preferred embodiment contains "a wall control unit embodying the present invention," id. col. 4 l. 5, "includ[ing] a passive infrared sensor," id. col. 4 ll. 22-23, and a microcontroller programmed to command a counterpart microcontroller in the head unit using known digital signaling techniques, like pulse width modulation. Claim 1, recited below, is representative:

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 ...

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