In a de novo review of claim construction, the Federal Circuit rejected the District Court’s (ILND) claim construction of the patent claim term “controller” in The Chamberlain Group, Inc. v. Techtronic Industries Co. LTD (Fed. Cir. 2017). The District Court had granted the plaintiff-appellee’s motion for a preliminary injunction. The Federal Circuit disagreed with the District Court’s claim construction, and thus vacated the preliminary injunction because the preliminary injunction was granted on the basis of incorrect claim construction.
The patent at issue, U.S. 7,224,275 is directed toward a garage door opener. The language at issue from independent claim 1 reads, “a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states.” In addition, claim 2 claims “at least one condition status sensor that is operably coupled to the controller.”
The District Court construed the term “controller” to be a “self-aware [controller], i.e., that it did not rely upon any external sensors to obtain the status conditions of the [garage door opener], and which it was able to transmit upon request.” In addition, since dependent claim 2 claims a sensor, the District Court reasoned that “[c]laim 1 eschews condition sensors in favor of a controller that does not rely on external sensors.” The District Court also held that the defendant-appellant did not present prior art that teaches a “self-aware controller,” so a substantial question as to invalidity was not raised.
In construing “controller,” the CAFC noted that the written description of the patent states that “the controller 11 can be self-aware of such operational status conditions…or the controller 11 can be provided with externally developed information regarding the condition.” Further, the CAFC noted that, “[t]he inclusion of a particular limitation in a dependent claim does not suggest that the limitation is eschewed by the claim from which it depends…[r]ather, it compels the opposite conclusion.”
As a side note, the CAFC reviewed the claim construction de novo because the district court did not make factual findings that underlie its construction, and the proper construction relied on the intrinsic evidence alone, citing David Netzer Consulting Eng’r LLC v. Shell Oil Co., 824 F.3d 989 (Fed. Cir. 2016), and Shire Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359 (Fed. Cir. 2015).
Lessons for Practice
This case highlights that claim construction can turn on a thorough description of claim terms in the written description. In this case, the patent applicant not only described what a “controller” is, but also provided two examples. The CAFC used those examples to specifically undercut a theory that the claim only covered one of those examples. Consistency throughout the application and the dependent claims further supported the conclusion by the CAFC.