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The Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Nov. 24, 2010) (St. Eve, J.).
Judge St. Eve ruled on the parties’ numerous summary judgment motions in this patent case involving garage door opener remote control technology.* The Court first addressed the controlling claim constructions. Judge Moran previously construed the claim terms, but on appeal those constructions were amended by the Federal Circuit. Plaintiffs argued that the Federal Circuit’s constructions were not binding and were open to further construction. But the Court held that the Federal Circuit’s constructions were the law of the case and were binding upon the parties. Because plaintiffs’ arguments for summary judgment of infringement were premised upon its own claim constructions, and not the Federal Circuit’s constructions, those motions were denied.
Next the Court considered whether there was a question of fact that the accused devices used “binary code” as required by the patents. The parties agreed that an absence of binary code would require a finding of noninfringement. But the parties disputed whether defendant Lear’s accused products used binary code. Ultimately the battle of the parties’ experts created a question of material fact precluding summary judgment of either infringement or noninfringement.
The Court granted plaintiffs summary judgment as to Lear’s argument that the asserted claims were not directed to patentable subject matter. Lear argued that plaintiffs’ claims simply covered algorithms, but the cases were directed to devices that were by definition not just algorithms.
Plaintiffs were also granted summary judgment as to Lear’s claim that plaintiff’s committed inequitable conduct by failing to disclose a particular patent to the Patent Office as prior art. Plaintiffs had provided the art to a prior examiner, in a parent application. Once a patent applicant submits prior art in a parent application, that art is considered disclosed in any progeny applications.
* Click here for much more on the case in the Blog’s archives.
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Continue Reading Federal Circuit’s Claim Constructions Control in Remanded Patent Case

Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Nov. 8, 2010) (Denlow, Mag. J.).
Judge Denlow granted in part defendant Lear’s motion for sanctions in this patent case regarding universal garage door openers. Plaintiff Johnson Controls (“JCI”) received an anonymous email from someone calling themselves “Kova Kova,” offering documents regarding Lear’s development of the accused garage door opener. JCI questioned the anonymous emailer as to the confidentiality and ethical obligations that might surround the offered documents. But despite not receiving a direct answer, JCI eventually met with Kova Kova and received emailed documents from Kova Kova. JCI, however, testified that it never opened the documents, sent as email attachments. JCI also suggested by email that it would consider offering Kova Kova an engineering position and tuition reimbursement, but in a later email made clear it would not pay Kova Kova for testimony or documents, although it would retain Kova Kova counsel.
While JCI’s offers of a job and tuition were close, they were not a bribe. Chamberlain never explicitly offered any remuneration for testimony or documents. And immediately after mentioning an engineering position and tuition, JCI sent an email making clear that it would not pay for testimony or documents. JCI did, however, violate its duties by waiting more than nine months to produce Kova Kova’s emails and documents. While that violation did not warrant dismissing the case as Lear requested, it did warrant exclusion of any evidence from or related to Kova Kova, including his testimony, and JCI’s payment of Lear’s attorney’s fees related to the motion.
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Continue Reading Failure to Timely Disclose Third Party Witness Contacts Prevents Testimony

Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, Slip Op. (N.D. Ill. Jul. 12, 2010) (St. Eve, J.).
Judge St. Eve denied plaintiffs’ motion for a letter of request to India’s Ministry of Law and Justice seeking a deposition of an individual third party that previously was a software programmer for defendant’s software vendor Wipro. Despite identifying the witness in July 2009, Plaintiffs did not file their motion until June 2010, two weeks before the close of discovery.
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Continue Reading Court Refuses Late Motion for International Deposition

Chamberlain Group, Inc. v. Johnson Controls Interiors LLC, No. 2007-1314-1467, Slip Op. (Fed. Cir. Feb. 19, 2008).
The Federal Circuit reversed Judge Moran’s construction of “binary code” and, therefore, reversed the limited preliminary injunction entered by the Northern District – click here and here for the Blog’s posts regarding the injunction. The Northern District construed “binary code” as a code represented by two values, but not necessarily a binary number – click here and here for the Blog’s posts regarding the Northern District’s claim and construction opinions. The Federal Circuit praised the Northern District’s claim construction analysis, but reversed the construction:
The district court commendably strove to follow this court’s rules for claim construction. See Phillips, 415 F.3d at 1318-19. In this regard, the trial court weighed the intrinsic evidence along with the extrinsic evidence and properly sought to avoid importing a limitation from the specification into the claims. See id. Nonetheless, this court discerns that the ‘544 patent specification gives particular limiting meanings to the language in the claims.
The Federal Circuit held that “binary code” required a binary (or base two) number. Otherwise, any values would meet the limitation because all values, whether in base two, three, the more standard ten or any other, are represented by computers using two values – 1 and 0. Because the revised claim construction called into question the Northern District’s likelihood of success analysis, the Federal Circuit reversed the preliminary injunction.
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Continue Reading Construction Reversed Despite “Commendable” Analysis

Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1238908 (N.D. Ill. Apr. 25, 2007) (Moran, J.).

Judge Moran denied defendant Lear’s motion to stay the Court’s preliminary injunction pending appeal to the Federal Circuit,* but did allow third party General Motors ("GM") to intervene of right and modified the PI to limit harm to defendant and GM.  In a March 30, 2007 opinion and order, the Court granted plaintiffs’ motion for a preliminary injunction, preventing defendant from marketing and selling its garage door opener transmitters based upon the Court’s prior claim constructions (these opinions are available in the Blog’s archives).  The Court held that Lear could not show a likelihood of success on the merits, in part because the Court’s "Markman decision and subsequent reconsideration dealt an enormous blow to [Lear’s] case."  The Court acknowledged that while plaintiff would suffer irreparable harm without the PI, both Lear and GM could suffer irreparable harm because of the PI.  In order to resolve the irreparable harm issue, the Court revised the PI to exempt Lear’s sales to GM.  Because GM was Lear’s only client and because the exemption allowed GM to continue sourcing Lear’s product  the revised PI would remove harm to GM and substantially reduce Lear’s harm.  While Lear would not be able to add new customers, it would not have to idle its related workers and factories because Lear would not lose any customers.  Because the removal of GM sales from the PI substantially limits Lear’s potential harm, the Court denied Lear’s motion, supported by GM, to increase the bond from $10,000,000 to $50,000,000.Continue Reading Exemption of Sales to Defendant’s Sole Customer Limits PI Harm

Chamberlain Group, Inc. v. Lear Corp., No. 05 C 3449, 2007 WL 1017751 (N.D. Ill. Mar. 30, 2007) (Moran, J.).

Judge Moran granted plaintiffs’ motion for a preliminary injunction, preventing defendant from marketing and selling its garage door opener transmitters.  Relying upon its two prior claim construction decisions (which can be found in the Blog’s archives), the Court first determined that plaintiffs had proven a likelihood of success on its infringement claims.  Then the Court considered plaintiffs’ irreparable harm claims.  The Court denied plaintiffs’ argument that its showing of a strong likelihood of success creates a presumption of irreparable harm.  Citing eBay, Inc.  v. Merc Exchange, L.L.C., 126 S. Ct. 1837 (2006), the Court held that the Supreme Court limited the automatic presumption of irreparable harm based upon infringement.  Instead, the Court determined that plaintiffs’ had shown that they were irreparably harmed because defendant’s sales had eroded its prices and strained its customer relations.Continue Reading eBay Decision Negates Presumption of Irreparable Harm for PI’s