Patent Claims Directed To Wireless Transmission of Content Are Abstract and Patent Ineligible

THE CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO.

Before Lourie, O’Malley, and Chen. Appeal from the United States District Court for the Northern District of Illinois

Summary: A system or method for communicating status information wirelessly is not patent eligible subject matter. A PTAB decision not to institute an IPR may be admissible at trial with a limiting jury instruction.

The Chamberlain Group sued several companies for patent infringement, resulting in, among other things, a jury verdict finding infringement and validity of the asserted patents, an injunction, and awards of enhanced damages and attorney fees. The district court denied Techtronic’s JMOL motion for patent ineligibility under § 101.  The challenged patent claimed an apparatus and method for communicating information about the status of a movable barrier (e.g., a garage door). The district court also denied Techtronic’s motions for a new trial, finding no error in (1) denying Techtronic’s motion to transfer venue and (2) admitting into evidence the PTAB’s decision not to institute an IPR.

The Federal Circuit reversed-in-part, finding the challenged patent invalid under § 101.  Under step one in the Alice/Mayo test, the challenged claims merely recited the abstract idea of communicating status information wirelessly. The challenged patent also failed under step two in the Alice/Mayo test because the claims were directed to the abstract idea itself, and the ordered combination added nothing more when the steps were considered separately. The district court did not abuse its discretion in finding that the venue objection was forfeited, where the objection came thirty days after TC Heartland and just two months before trial.  The district court also did not abuse its discretion in admitting the PTAB’s non-institution decision because the district court gave a limiting jury instruction explaining the different legal standard used by the PTAB.  But, the Federal Circuit warned that generally, “denials of institution provide limited probative value that is likely to be outweighed by the prejudice to the opposing party, and limiting instructions to the jury do not necessarily cure the prejudice.”