December 26, 2019

Points of Difference from Prior Art Did Not Make it to the Claims; Claims were Anticipated

In Chamberlain Group, Inc. v. One World Technologies, Inc., [2018-2112] (December 17, 2019), the Federal Circuit affirmed the PTAB’s decision that claims 18 – 25 of U.S. Patent No. 7,196,611 were anticipated.

Claims 18 – 25 of the ’611 patent are directed to an “interactive learn mode” that guides a user through installation and learn mode actions of a garage door system. One World challenged the patent based on a prior Chamberlain patent that allows the user to program the upper and lower limits for the garage door’s movement. Chamberlain tried to distinguish its earlier patent, arguing that the prior patent taught setting limits in sequence rather than at the same time. The Board rejected this argument finding that nothing in the claims of the ‘611 patent required setting limits at the same time.

The Federal Circuit agreed with the Board that nothing in the claims requires the activities to be identified together or at the same time. The Federal Circuit noted that Chamberlain’s own expert testified that claims were “silent on any timing requirement.” Given the absence of any timing limitation, the Board reasonably found that the prior patents disclosure of transmitting the signals in sequence, one after the other in response to the previously-completed steps of identifying the garage door operator’s present status and activities to be completed taught the “responsive to” step. Thus, the Federal Circuit held that Board’s finding that Schindler anticipates claims of the ’611 patent is supported by substantial evidence, and affirmed.