On May 5, 2017, the International Trade Commission (“Commission”) issued its opinion vacating the Initial Determination (“ID”) granting a motion of summary determination of non-infringement in in Certain Access Control Systems and Components Thereof (Inv. No. 337-TA-1016) and remanding the case to ALJ Thomas B. Pender.
By way of background, this investigation is based on a July 5, 2016 complaint filed by The Chamberlain Group, Inc. of Elmhurst, Illinois alleging violation of Section 337 by way of unlawful importation into the U.S., selling for importation, and/or selling within the U.S. after importation certain access control systems and components thereof that infringe one or more claims of U.S. Patent Nos. 7,161,319; 7,196,611; and 7,339,336. See our July 5, 2016 and August 12, 2016 posts for more details on the complaint and Notice of Investigation, respectively.
According to the opinion, all of the asserted claims of U.S. Patent No. 7,161,319 require a “wall console,” which ALJ Pender construed as “a wall-mounted control unit including a passive infrared detector.” Respondents filed a motion for summary determination of non-infringement of this patent based on the ALJ’s construction, and the ALJ issued an ID granting the motion. The Commission determined to review the ID.
In the ALJ’s claim construction order, the parties agreed that the plain and ordinary meaning of “wall console” is a “wall-mounted control unit,” but Respondents argued that the patentee clearly disclaimed wall consoles without passive infrared detectors. Although the ALJ “acknowledged the lack of traditional disavowal language,” he agreed with Respondents and found disavowal, focusing on the ‘319 patent’s explanation that the passive infrared detector is a principal part of the invention, is found in the wall control unit, and is positioned in the wall control unit in all embodiments. Based on this claim construction, the ALJ granted Respondents’ motion for summary determination of non-infringement, as the wall consoles in Respondents’ products do not contain a passive infrared detector.
Contrary to the ALJ’s finding, the Commission determined that the specification and the prosecution history “taken in their entirety” demonstrate that the patentee did not disclaim wall consoles without passive infrared detectors. The Commission noted portions of the specification describing techniques for communication that do not necessarily require a passive infrared detector in the wall console, and determined that the dependent claims illustrate that the patentee intended to claim wall consoles both with and without passive infrared detectors. The Commission also determined that there is no clear prosecution history disclaimer in the intrinsic history, in contrast to the Federal Circuit case law relied upon by the ALJ. In fact, according to the Commission “the prosecution history gives no indication that ‘wall console’ has any meaning other than the plain and ordinary meaning.”
As such, the Commission construed “wall console” to have its plain and ordinary meaning and remanded the Investigation back to the ALJ for further proceedings.