By Siew Chong
A recent Federal Circuit decision in The Chamberlain Group, Inc v. One World Technologies, Inc. (Fed. Cir. December 17, 2019), is notable in that it clarifies what a patent owner may permissibly raise for the first time at an oral hearing. Despite acknowledging that Chamberlain argued a claim limitation for the first time at oral argument before the Patent Trial and Appeal Board (PTAB), the Federal Circuit panel still found that the argument acceptable because the new citation merely clarified Chamberlain’s previously articulated position.

Nonetheless, the Federal Circuit panel affirmed a Patent Trial and Appeal Board’s final written decision that found claims 8-15 of U.S. Patent No. 7,196,611 (the ’611 patent) – directed to garage door and gate operator systems – unpatentable as anticipated by U.S. Patent No. 4,638,422 (Schindler). The challenged claims were directed to methods of “teaching” barrier movement systems, e.g., garage door systems, to set various limits for operating the systems. One World Technologies, Inc. successfully petitioned for the inter partes review of claims 8-15 in the ’611 patent for being anticipated by Schindler, and claims 23 and 25 for being obvious over the combination of Schindler and “Liftmaster,” an owner’s manual for a door operator system. One World Technologies asserted that Schindler disclosed a method that sets the upper and lower limits for door positions, and thus anticipates the challenged claims. Chamberlain disagreed, and stated in its patent owner’s response that contrary to Schindler, which taught programming a “single” activity at a time, the ’611 patent was directed to a system that required identifying and guiding “multiple activities.”

At the oral hearing, Chamberlain argued for the first time that the claim limitation for the final step of the learning mode, “responsive to the first and second identifying step,” required identifying multiple activities before transmitting any guidance responsive to the identifying step. That limitation, according to Chamberlain, was not anticipated by Schindler, which disclosed transmitting a guidance signal after identifying a single activity. In its final written decision, the Board found that Chamberlain waived this argument because it was raised for the first time at the oral hearing. The Board, however, went on to address the merits of the argument and ultimately found it unpersuasive.

In its appeal, Chamberlain asserted that the Board’s finding of waiver was erroneous because Chamberlain’s argument was responsive to new arguments made in One World’s petitioner reply, and the argument was merely a clarification of its position, which had been consistent throughout the IPR. The Federal Circuit panel agreed with Chamberlain, explaining Federal Circuit case law allows parties to “elaborate” their arguments on previously raised issues.   The panel found that Chamberlain did not raise new issues or evidence, but instead tracked its previous argument and “merely pointed to different portions of the claim language” to clarify its previously stated position in response to One World’s reply. Continue reading →