Federal Circuit Closes the Door on CGI Preliminary Injunction

garagedoorThe Chamberlain Group (CGI) v. TechTronic Indus. (Fed. Cir. 2017) (non-precedential opinion)

Following on the heel of the Federal Circuit’s approval of preliminary relief in the water balloon case, the court here has reversed a lower court’s preliminary injunction – finding its claim construction error led the district court to incorrectly conclude that the patentee (CGI) was likely to prevail on the merits.

Since a preliminary injunction is ordinarily awarded well before any final judgment on the merits, nobody actually knows which side will win the case.  Because of the powerful nature of injunctive relief, the courts have long required that the party seeking relief to at least prove that it will likely win the case.  Although termed a “factor” in the four factor analysis, it is actually a necessary element that must be proven before relief will be granted.  “The movant must establish both “likelihood of success on the merits and irreparable harm” for the court to grant a preliminary injunction.”

The CGI patent here covers a garage door opener that transmits status-information. Whereas most garage doors are operated by a single “go” trigger, the improvement here might have one button for “up” and another for “down.”   The patent claims are broad enough to include any sort of status-information (light on, auxiliary power on, etc.).  U.S. Patent 7,224,275.  Claim 1:

1. A movable barrier operator comprising:

a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states;

a movable barrier interface that is operably coupled to the controller;

a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that: corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.

Although a preliminary injunction determination is reviewed with deference, any underlying claim construction is reviewed de novo on appeal.  Here, the appellate panel found that the lower court had too narrowly construed the term “controller” by requiring that it be a “self-aware controller.”  Easy decision by the court since the specification was clear that the controller need not be self-aware:

Depending upon the needs of the setting, the controller can be self-aware of such operational status conditions (as when, for example, the controller is aware that it has switched a given ambient light fixture on or off) or the controller can be provided with externally developed information regarding the condition.

In addition, at least one of the dependent claims required that the controller be provided its ‘state’ information from an external sensor.

With the broader construction, the Federal Circuit remanded to consider whether the presented prior art creates an invalidity problem.  Reminder here – it was the patentee who wanted the narrow claim construction in order to avoid prior art problems and the broad claim language (permitted by the PTO) that created trouble.

Depending upon what happens below, the patentee may instead try to narrow these claims as part of a reissue application.

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A sideline issue in the case involved the Federal Circuit’s aggressive undermining of Teva v. Sandoz.  That Supreme Court decision requires that the Federal Circuit give deference to lower court’s factual findings on appeal. “Federal Circuit judges lack the tools that district courts have available to resolve factual disputes fairly and accurately such as questioning the experts.” Teva quoting Judge O’Malley.

In their briefs, both parties agreed that the district court relied upon factual evidence in the form of expert testimony (from both sides) for its claim construction conclusions.  However, the order apparently does not follow Fed.R.Civ.Pro. 52(a), by separately finding facts and stating conclusions of law butu instead “mingled factual and legal conclusions with no distinction between the two.” (patentee brief).

Contradicting both parties, the Federal Circuit on appeal held that it need not give any deference to any of the district court conclusions since “there is no indication that the district court made any factual findings that underlie its construction.”

Unfortunately, the district court order is under seal and therefore not available. As such, we cannot know who is right in this instance. Update: I found a redacted version of the district court opinion in the appendix filed to the Federal Circuit. [cgi_appendix]  In its claim construction, the court repeatedly refers to and relies upon competing expert testimony, but doesn’t appear to make any straight-up factual findings.  I have to think about my – conclusion here, but I have crossed-out the “aggressive” undermining from above.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

49 thoughts on “Federal Circuit Closes the Door on CGI Preliminary Injunction

      1. “Wireless America has received an alert that the status of your garage door may have changed. If you would like to know the current status, please click “yes”. Information about the current status will be provided to you after the presentation of a short advertisement.”

        Promote the progress! This is totally different from that caveman technology that wirelessly provided you with other kinds of information. A million “do it on a computer” PTO applicants said so! And they’re the most important people ever.

      2. As MM says, the principle involved here is notoriously old. Now if the claim had set forth a specific circuit or method for either retaining state information, obtaining the state information, or transmitting state information that was new and nonobvious, perhaps we could begin consider discussions about invention.

        1. The principle involved in pickin’ stuff outta cotton was notoriously old too, as were boxes, combs, crank handles and hoppers.

          Does Wireless America and its alleged service predate the application or does Wireless America own or license the technology in question…or is their sudden and rapid deployment of embodiments of it ,after the fact, constitute evidence of long felt need and non-obviousness?

          1. Les, but Whitney did not patent mechanical ginning. He patented a specific machine.

            Les, I know that many of us have made this point to you numbers of times, but you never seem to agree with us. But do you at least understand what we are trying to say?

            From at least Le Roy v. Tatham, we could not patent any machine that could achieve a new and unknown result.

            Now, do not come back and start talking about combinations of old elements, old machines, etc. Yes these could define new inventions. But if the invention is alone in the one element, the rule of Le Roy v. Tatham applies.

            1. Ed the Ned again you comments are ridiculous. You constantly want to overlay on top of a claim some bizarre abstraction in your head as a way to invalidate or hold a claim ineligible.

              Try real patent law. And, try intellectually honesty. The fact is that information processing cannot be principled treated any differently than any other invention. And, again, you try to remove the structure just because something is functionally described. You know as well as I do that a functionally described invention does define a set of structures that can perform the function by one skilled in the art.

              The fact is Ed the Ned that you are unethical, intellectually dishonest and a disgrace to the profession.

            2. “Les, but Whitney did not patent mechanical ginning. He patented a specific machine. ”

              Ned, the claim in question is not a patent on status information. It is a claim to a specific machine, on with a controller, a barrier and a transmitter (particular types of each).

              1. Les, but a machine as old as the hills without any details on the particulars.

                Again, the light switch on the wall or the panel showing status of a circuit comes to mind.

                1. Old as the hills? Then why was it granted? Please show me a movable barrier operator that includes THESE PARTICULARS: a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that: corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.

                2. Might? No, that was pretty much guaranteed.

                  What you might have done was cite some prior art….but, alas, you did not…

          1. It appears that Malcolm is more interested in accusing others of “defending claims” when those others are not defending claims than to actually address different people who are actually defending claims when those others present inconvenient facts.

  1. This claim is beyond ridiculous.

    These guys think they invented “status condition identifiers”? Or that they deserve a patent because nobody had ever contemplated that the “status condition” could be “open or closed”?

    What an incredible waste of time and money.

    1. “These guys think they invented “status condition identifiers”? ”

      No, they think they invented a movable barrier operator that transmits status information (if you must have a distillation).

      However, for a precise recitation of what these guys think they invented, please see first the claim and then they amendment they are apparently trying to have entered.

      1. a movable barrier operator that transmits status information

        Oh, wowee zowee! That’s, like, totally different from what I just said … if you’re a b0ttom-grubbing lawyer willing to convince yourself of anything.

      1. Yes, but not patentable…. as 2001 A Space Odyssey is prior art.

        “Open the pod bay doors HAL”

        “I’m Sorry Dave. I can’t do that.”

  2. 100% of today’s opinions are non-precedential. This is really shameful. I have no objection to a lot of Rule 36s, but if they are going to write an opinion, it ought to mean something to future cases. It undermines stare decisis to say that a court is so rarely bound by its past decisions.

      1. Out of mere curiosity, why so? I confess I am indifferent to Rule 36s (except, of course, when I am representing an appellant who receives one).

        It seems to me that no one would consider it a “problem” if only ~10% of decisions from a lower tribunal (D. Ct. or PTAB) were appealed at all. Obviously that would mean far fewer appellate decisions, but that is not problem, per se. Rule 36 decisions simply mean that, for precedent purposes, it is as if you never appealed. In other words, a lot of Rule 36s is functionally the same as far fewer appeals. It does no good to the functioning of the system overall, but it does no harm either.

        By contrast, non-precedential decisions pose a problem if they become anything more than a rare event. Stare decisis, at its foundation, is built on the idea that like circumstances should give rise to like outcomes. If the court is free to say “I know we decided those cases—with analogous facts to yours—one way, but we are going to decide your case a different way, and you have no ground to complain because we designated those cases as non-binding,” then that really undermines the basic justice logic underlying our common-law system.

        1. I don’t follow the distinction you’re trying to make between Rule 36 judgments and non-precedential decisions.

          If you follow the cases closely, you would understand that the Rule 36 judgments undermine the “basic justice logic” of a lot of the loudmouths who tr 0ll here about “the pendulum swinging back” and similar such nonsense.

          The problem — and it’s a big one — is that it’s quite a bit more work to follow the Rule 36 judgments closely because the judgments say *nothing* about the claims or issues in the underlying case. That’s a problem that it would literally take five minutes of a clerk’s time to fix, if the CAFC was interested in fixing it.

          The reason that the CAFC isn’t interested in fixing it is two-fold: (1) they’re lazy and (2) they’d prefer to keep a lid on what’s going on, lest the natives get too restless.

    1. Well at the EPO it is the very fact that no Technical Board of Appeal Decisions are precedential that has produced over the last 40 years (of 1000 or so decisions per year) by Darwinian survival of the fittest legal logic a body of caselaw that is robust, coherent and delivers a higher level of legal certainty than any other patent jurisdiction.

      Perhaps the patent judges in the USA have taken note?

      1. Your continued oddity of not understanding stare decisis continues…

        There simply in NO Darwinian force if tomorrow’s decision is uncoupled to today’s decision.

      2. Two responses:

        (1) Most of the EP jurisdictions do not pretend to be common-law jurisdictions. Nor does the EPO. Where the underlying ethos of the system is civil law instead of common law, there are other groundings in place to establish the underlying justice of the system. In other words, the comparison is apples to oranges.

        (2) In any event, for an example in the U.S. context of an adjudicatory body without controlling precedent, see the NLRB. No one would ever say of the USNLRB that it “delivers a higher level of legal certainty than any other [labor law] jurisdiction.” Labor law here in the U.S. whips around almost as quickly as the wind changes in Washington D.C.

        That is not a model that the CAFC should want to emulate.

        1. Fair enough Greg. It is the Court Of justice of the EU that lays down (in its civil law way) the law of trademarks in the EU. And what a pig’s ear it has made of it.

          So perhaps the two main reasons why the law of patentability for all of Europe is so clear is because i) it is made by an international bunch of judges who are out and out patent law specialists and ii) those judges throw out more than a thousand Decisions each year, free from the blind alleys and wrong turns imposed on them by a well-meaning but clueless generalist Supreme Court.

          I continue to see the USPTO, in many little ways, borrowing from the well-tried and by now proven procedures at the EPO.

          1. [P]erhaps the two main reasons why the law of patentability for all of Europe is so clear is because i) it is made by… patent law specialists and ii) those judges… [are] free from the blind alleys and wrong turns imposed on them by a well-meaning but clueless generalist Supreme Court.

            I think that both of those hypotheses are very plausible, but especially #2.

            I continue to see the USPTO, in many little ways, borrowing from the well-tried and by now proven procedures at the EPO.

            I agree. I think that the USPTO is trying to borrow the best elements that it can from EPO procedures, and that is all to the good.

            I would say, however, that the real difference between the PTO and the EPO is cost. The EPO (with its maintenance annuities) is much more expensive, so it is no surprise that it can provide a higher quality prosecution experience. I am not sure how much more we can make our U.S. experience like the EPO experience without corresponding fee increases.

          2. Judges?

            Not every clerk who decides an administrative issue is a judge.

            It seems that part of the problem of Europe is that it does not have a really clear idea if what an independent judiciary is.

            1. How does that manifest as a “problem”? That is to ask, what is the discernible evidence that the EPO operates with less justice or competence than does the USPTO?

              I do not know of any such evidence.

              1. Greg, good comparison there, EPO to USPTO. I would hope the EPO is better than that.

                I was complaining, Greg, about Max’s idea that EPO clerks are judges.

                An independent judiciary is a constitutional position, appointed and confirmed, lifetime, with no reduction in salary. True independence (save from corruption as might be imposed by the likes of the baseball-bat-wielding Capone or the Walking Dead’s Negal) is not the stuff of the USPTO or the EPO.

                1. Comparative jurisprudence has its place – just as does recognizing – and respecting – the differences in sovereigns.

                  Something that especially you three should pay close attention to.

                  (there is NO “one world [socialistic] order” out there)

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