• HQ H325116
• May 27, 2022

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H325117; H242025; H323308   

OT:RR:BSTC:EOE H325116 FKM / H325117 JW

Mr. Michael J. McKeon
Fish & Richardson P.C.
1000 Maine Ave., SW
Suite 1000
Washington, DC 20024

VIA EMAIL: [email protected]; [email protected]

RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1209; Certain Moveable Barrier Operator Systems and Components Thereof

Dear Mr. McKeon:

Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter in response to Chamberlain Group, LLC’s (“Chamberlain” or “CGI”) request for an administrative ruling. We find that Chamberlain has met its burden to show that articles implementing the redesigns relating to the multi-frequency patent (“frequency redesign”) or the redesign relating to the low power consumption patents (“power consumption redesign”) (collectively, “the redesigned products”), as described in more detail below, do not infringe claims 1, 4, 16, and 19 of U.S. Patent No. 9,483,935; claims 18 and 24 of U.S. Patent No. 7,956,718; or claim 17 of U.S. Patent No. 8,410,895. Thus, CBP’s position is that these articles are not subject to the modified limited exclusion order the U.S. International Trade Commission (“ITC” or “Commission”) issued on March 30, 2022, in Investigation No. 337-TA-1209 (“the underlying investigation” or “the 1209 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”).

We further note that determinations of the Commission resulting from the underlying investigation or a related proceeding under 19 C.F.R. Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision pertaining to section 337 exclusion orders. This ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177, which was conducted on an inter partes basis, upon agreement of the parties. See, e.g., EOE Branch email to Parties dated February 16, 2022. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Chamberlain, the ruling requester and respondent in the 1209 investigation; and (2) Overhead Door Corporation and GMI Holdings Inc., (collectively, “OHD”), complainants in the 1209 investigation. See, e.g., 19 C.F.R. § 177.1(c).

The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying investigation, with [[red brackets]] in all of their submissions to the CBP. See, e.g., EOE Branch email to Parties dated February 16, 2022; see also 19 C.F.R. §§ 177.2 and 177.8. If there is additional information in this ruling letter not currently bracketed in red [[ ]] that either party believes constitutes confidential information, and should be redacted from the published ruling, then the parties are asked to contact CBP within ten (10) working days of the date of this ruling letter. See, e.g., 19 C.F.R. § 177.8(a)(3).

Please note that disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and 19 C.F.R. § 177.8(a)(3). See, e.g., 19 C.F.R. § 177.10(a). In addition, CBP is guided by the laws relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974, as amended (5 U.S.C. § 552a). A request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. Part 177 faces a strong presumption in favor of disclosure. See, e.g., 19 C.F.R. § 177.8(a)(3). The person seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing that: the information in question is customarily kept private or closely-held and either that the government provided an express or implied assurance of confidentiality when the information was shared with the government or there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See, Food Marketing Institute v. Argus Leader Media, 139 S. Ct. 2356, 2366 (2019) (concluding that “[a]t least where commercial or financial information is both customarily and actually treated as private by its owner and provided to the government under an assurance of privacy, the information is ‘confidential’ within the meaning of exemption 4.”); see also U.S. Department of Justice, Office of Information Policy (OIP): Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (updated 10/7/2019); and OIP Guidance: Exemption 4 after the Supreme Court’s Ruling in Food Marketing Institute v. Argus Leader Media (updated 10/4/2019).

BACKGROUND

ITC Investigation No. 337-TA-1209

Procedural History at the ITC

The Commission instituted Investigation No. 337-TA-1209 on August 10, 2020, based on a complaint filed by Overhead Door Corporation and GMI Holdings Inc. Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209, EDIS Doc. ID 765192, Public Commission Opinion (March 11, 2022) (“Comm’n Op.”) at 1 (citing 85 Fed. Reg. 48264-65 (Aug. 10, 2020)). The complaint, as supplemented, alleged a violation of section 337 based on the importation into the United States, the sale for importation, and the sale within the United States after importation of certain moveable barrier operator systems and components there of that infringe one or more claims 1, 4, 16, and 19 of U.S. Patent No. 9,483,935 (“the ‘935 patent”), claims 1 and 16 of U.S. Patent No. 8,970,345 (“the ‘345 patent”), claims 1-3, 7, and 8 of U.S. Patent No. 7,180,260 (“the ‘260 patent”), claims 18 and 24 of U.S. Patent No. 7,956,718 (“the ‘718 patent”), and claim 17 of U.S. Patent No. 8,410,895 (“the ‘895 patent”) (collectively, “the patents at issue”). Comm’n Op. at 1. U.S. Patent No. 7,173,516 and claims 2 and 17 of the ‘345 patent were initially asserted in this investigation but ultimately were terminated based on the withdrawal of the allegations in the complaint as to the former and withdrawal of the allegations as to those claims regarding the latter. Id. at 1, fn. 1 (citations omitted). The notice of investigation named Chamberlain as the respondent in this investigation. Id. at 1. The Commission’s Office of Unfair Import Investigations was not a party to the investigation. Id.

On September 14, 2021, the Administrative Law Judge (“ALJ”) issued the final initial determination (“FID”) finding a violation of section 337 based on infringement by Chamberlain of the asserted claims of the patents at issue. Comm’n Op. at 1. Specifically, the FID found that (1) the asserted claims of the patents at issue were all infringed by Chamberlain’s accused products and redesigned products; (2) the domestic industry products practiced the asserted claims of the patents at issue; and (2) the asserted claims of the patents at issue are not invalid under 35 U.S.C. §§ 101, 102, or 103. Id. at 1-2. The ALJ’s recommended determination (“RD”) recommended that should the Commission affirm and find a violation of section 337, the Commission should issue (1) a limited exclusion order (“LEO”) against certain moveable barrier operator systems and components thereof that are imported into the United States, sold for importation, and sold within the United States after importation by or on behalf of Chamberlain, and (2) a cease and desist order against Chamberlain. Id. at 2. The ALJ also recommended that the Commission set a bond in an amount of 100 percent of the entered value of the moveable barrier operator systems imported by or on behalf of Chamberlain during the 60-day review period under 19 U.S.C. § 1337(j). Id.

On December 6, 2021, the Commission determined to review the FID in part. Id. at 2 (citing 86 Fed. Reg. 70527-29 (Dec. 10, 2021)). On review, the Commission determined that there was a violation of section 337 based on infringement by Chamberlain of the asserted claims of the ‘935 patent, the ‘718 patent, and the ‘895 patent. Id. at 85. The Commission also determined to reverse the FID’s finding of violation of section 337 based on the infringement of the asserted claims of the ‘345 patent and the ‘260 patent. Id.

Further, the Commission determined the appropriate remedy was a LEO and cease and desist order against Chamberlain; the public interest did not preclude this remedy; and the bond during the 60-day review period was set in the amount of one hundred (100) percent of the entered value of the imported articles. Id. at 85-86. The Commission reached this final determination and issued the remedial orders on February 9, 2022. Id.; see also Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209, EDIS Doc. ID 762896, Limited Exclusion Order (Feb. 9, 2022).

Subsequently, on February 28, 2022, OHD filed an expedited motion to clarify, or in the alternative, a petition for a modification proceeding requesting the Commission to confirm that the remedial orders not only covered moveable barrier operators, such as garage door openers but also gate operators and commercial operators. Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209 (Modification), EDIS Doc. ID 766969, Commission Opinion (March 30, 2022) (“Comm’n Op. (Mod.)”) at 1-2. On March 10, 2022, Chamberlain filed a response in opposition. Id. at 2. On March 17, 2022, OHD filed a notice of supplemental facts, and on March 18, 2022, Chamberlain filed a response to OHD’s notice of supplemental facts. Id.

On March 30, 2022, the Commission (1) found that OHD’s petition for modification of the remedial orders complies with the requirements for institution of modification proceeding under 19 U.S.C. § 1337(k)(1) and 19 C.F.R. § 210.76(a)(1) and sets forth sufficient grounds for a determination that the orders should be modified and thereupon institutes the modification proceeding; (2) clarified that the scope of the investigation includes garage door openers, gate operators, and commercial operators; (3) amended the notice of investigation to explicitly state “garage door openers, gate operators, and commercial operators” are within the scope of the investigation and the definition of the accused produces; and (4) modified the remedial orders to explicitly state “garage door openers, gate operators, and commercial operators” that infringe the patents at issue are within the definition of covered products or articles. Comm’n Op. (Mod.) at 20. The modified limited exclusion order issued on March 30, 2022. Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209 (Modification), EDIS Doc. ID 766970, Modified Limited Exclusion Order (March 30, 2022) (“Modified 1209 LEO”).

On April 12, 2022, Chamberlain filed a “Motion for Stay of the March 30 Orders and Request for Expedited Treatment” and on April 18, 2022, the Commission determined to grant in part Chamberlain’s request for expedited treatment. Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209, EDIS Doc. ID 768528, Commission Order for The Chamberlain Group, Inc. (April 18, 2022) at 2. On May 13, 2022, the Commission denied Chamberlain’s motion to stay the Commission’s modified remedial orders pending appeal. Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209, EDIS Doc. ID 770713, Commission Order (May 13, 2022) at 2.

The Products Accused in the Underlying Investigation of Infringing the Asserted Claims of the ‘935 Patent, the ‘718 Patent, and the ‘895 Patent

For the ‘935 patent, OHD accused certain “barrier operators, including garage door operators, commercial barrier operators, and gate operators.” Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209, EDIS Doc. ID 754096, Final Initial Determination on Violation and Recommended Determination (Oct. 13, 2021) (“FID”) at 6 (citations omitted). Specifically, the products accused of infringement were receivers and transmitters that implement Chamberlain’s “Tri-Band Radio” functionality. Id. As referenced in the FID, “[f]or garage door operator products, the motor operator, opener, and receiver are the portion that sits in a consumer’s garage to open and close the garage door in response to signals from a transmitter, like a handheld remote” and “Tri-Band is configured to enable the motor operators, openers, and receivers to receive data from a compatible transmitter at three frequencies: 310 MHz, 315 MHz, and 390 MHz.” Id. The accused products include garage and barrier operator systems that have both a transmitter and receiver, as well as components thereof such as replacement and universal transmitters. Id. The parties agreed, for purposes of the underlying investigation, that “‘[t]he Chamberlain™ C205 is representative of all accused [Chamberlain] operators, openers, and receivers, including any accessories which include a receiver’” and “‘the Chamberlain™ 953ESTD is representative of all accused [Chamberlain] transmitters.’” Id. at 7 (internal citations omitted) (first alteration in the original).

With respect to the ‘718 and ‘895 patents, OHD accused both garage door operators and gate operators. Id. at 11-14. Specifically, there were “two general categories of accused products: (1) non-WiFi integrated operators installed with a MyQ Hub and (2) WiFi integrated operators. Id. at 12. The parties agreed that: “(1) the Chamberlain™ C205 is representative of all accused CGI garage door openers without integrated WiFi capabilities; (2) the Chamberlain B970 is representative of all accused CGI garage door openers with integrated WiFi capabilities; and (3) the Chamberlain™ MYQ-G0301 Smart Garage Hub is representative of any version of CGI’s accused standalone Smart Garage Hub.” Id. at 13.

The Patents and Claims in the Modified 1209 LEO

Claims 1, 4, 16, and 19 of the ‘935 Patent

The ‘935 patent is titled “Channel-Switching Remote Controlled Barrier Opening System.” FID at 4, 30. The ‘935 patent is a continuation of U.S. Patent No. 8,970,345 and shares the same specification. Id.

Claims 1 and 16 of the ‘935 patent are independent claims and reproduced below:

1. A remote controlled barrier opening system, comprising:

a transmitter configured to:

(a) switch an output frequency to different channels, the switching being performed at a transmitter-switching rate, and

(b) on each of the channels, transmit multiple copies of a message;

a receiver configured to:

(a) switch a reception frequency to the different channels at a receiver scan rate that is different from the transmitter-switching rate, and

(b) on each of the channels, receive data for a period of time greater than a transmission time of one copy of the message; and

a barrier operator configured to operate a device at least in part in response to receipt of a copy of the message on any of the different channels.

See FID at 31; the ‘935 patent, col. 11: lns. 6-24.

16. A method of operation for use with a channel switching remote controlled barrier opening system, the method comprising:

operating a transmitter, including:

(a) switching a transmitter to different channels, the switching being performed at a transmitter-switching rate, and

(b) on each of the channels, transmitting multiple copies of a message;

operating a receiver, including:

(a) switching a receiver to the different channels in a manner that is asynchronous with the switching of the transmitter at a receiver scan rate that is different than the transmitter-switching rate, and

(b) on each of the different channels, receiving data for a period of time greater than a transmission time of one copy of the message; and

operating a device at least in part in response to receipt of a copy of the message on any of the different channels.

See FID at 31-32; the ‘935 patent, col. 13: lns. 6-24.

In the underlying investigation, the parties agreed and stipulated that the term “message” in the asserted claims of the ‘935 patent meant “data sufficient to cause a device to operate.” FID at 34. The ALJ adopted the parties’ proposed construction for this claim term. Id. This was unreviewed and therefore adopted by the Commission. Comm’n Op. at 12.

The ALJ construed the disputed term “on each of the channels, transmit[ting] multiple copies of a message” in claims 1 and 16 of the ‘935 patent to mean “transmitter configured to automatically transmit multiple copies of a message upon actuation of the transmitter.” FID at 36 (alteration in original). The Commission later determined to vacate the FID’s construction of this term and found that the term requires no construction and that its plain and ordinary meaning applies. Comm’n Op. at 8.

The ALJ construed the disputed term “receiver scan rate” in claims 1 and 16 of the ‘935 patent to mean “rate at which the receiver switches frequencies.” FID at 40. This was unreviewed and therefore adopted by the Commission. Comm’n Op. at 12.

The Commission further found “that in view of the specification, ‘multiple copies of a message’ is broad enough to include an aggregate of partial or single copies of a message that are transmitted over a specific channel so long as in the aggregate they comprise multiple copies of a message.” Comm’n Op. at 19. The Commission further stated that “for the ‘935 patent, the claim language does not foreclose the frequency from being switched back and forth between different channels such that multiple copies of a message are transmitted over the different channels.” Id.

Claims 18 and 24 of the ‘718 Patent and Claim 17 of the ‘895 Patent

The ‘718 patent is titled “Remote Control and Monitoring of Barrier Operators With Radio Frequency Transceivers. FID at 221. The ‘895 patent is a continuation of the ‘718 patent and shares the same title and specification. Id.

Claims 18 and 24 of the ‘718 patent are independent claims and reproduced below:

18. In a barrier operator system for moving a barrier between open and closed positions, a motor operably connected to a mechanism connected to said barrier, a base controller operably connected to said motor and operable to receive signals from barrier position limit detection means, at least one remote control unit operable for wireless communication with said base controller, at least one of a barrier status indicating unit and an obstruction detection unit operable for wireless communication with at least one of said base controller and said at least one remote control unit;

said base controller including an RF base transceiver, said at least one remote control unit including an RF remote transceiver, said at least one of said barrier status indicating unit and obstruction detection unit including an RF transceiver;

said transceivers being operable to transmit signals to at least one of said base transceiver and said remote transceiver indicating a status of said barrier of being one of in an open position, moving toward an open position, a closed position, moving toward a closed position and an obstruction detected;

said remote control unit includes signal means for generating a status signal in response to transmissions from at least one of said base transceiver and said transceiver of said status indicating unit and said obstruction detection unit; and

said obstruction detection unit includes control means responsive to a signal from at least one of said base transceiver and said remote transceiver for changing a power consumption mode of the obstruction detection unit.

24. In a barrier operator system for moving a barrier between open and closed positions, a motor operably connected to a mechanism connected to said barrier, a base controller operably connected to said motor and operable to receive signals from barrier position limit detection means, at least one remote control unit operable for wireless communication with said base controller, at least one of a barrier status indicating unit and an obstruction detection unit operable for wireless communication with at least one of said base controller and said one remote control unit;

said base controller including an RF base transceiver, said remote controller including an RF remote transceiver, said at least one of said status indicating unit and obstruction detection unit including an RF transceiver operable to transmit signals to said base transceiver indicating one of a status of said barrier and an obstruction detected; and

control means associated with said transceiver of one of said status indicating unit and said obstruction detection unit for changing from a low power consumption state to a higher power consumption state upon receiving a signal from at least one of said base transceiver and said remote transceiver.

See FID at 222-23; the ‘718 patent, col. 10: lns. 8-38; col. 10: ln. 66-col. 11: ln. 21.

The non-asserted independent claim 14 and dependent claim 17 of the ‘895 patent are reproduced below:

14. In a movable barrier operator system including a base controller having a radio frequency base transceiver and a remote control unit for controlling movement of said barrier, said remote control unit including a radio frequency remote transceiver operable to communicate with said base transceiver, a method including the steps of:

communicating a wireless control signal from said remote transceiver to said base transceiver instructing said operator system to change the state of said barrier by either one of opening said barrier or closing said barrier;

said base transceiver, upon receiving said wireless control signal, causing said base controller to either open or close said barrier;

transmitting a wireless status signal from said base transceiver to said remote transceiver indicating a change of state of said barrier; and

causing said remote control unit to provide a signal to alert a user thereof as to a status of said barrier.

17. The method set forth in claim 14, further comprising:

communicating a wireless control signal to an obstruction detector transceiver; and

energizing said obstruction detector from a power consumption mode to a higher power consumption mode upon receipt of said wireless control signal.

See FID at 224; the ‘895 patent, col. 9: lns. 40-57; col. 9: ln. 65-col. 10: ln. 3.

During the underlying investigation, the parties agreed that the term “energizing said obstruction detector from a power consumption state to a higher power consumption state upon receipt of said wireless control signal” in claim 17 of the ‘895 patent should be given its plain meaning of “changing a power consumption mode of said obstruction detector from a power consumption mode to a higher power consumption mode following receipt of said wireless control signal by the obstruction detection transceiver.” FID at 228. The ALJ adopted the parties’ proposed construction for this claim term. Id. at 229.

The parties also agreed that the term “barrier status indicating unit” in claims 18 and 24 of the ‘718 patent should be given its plain meaning of “device or circuitry capable of indicating a status of a barrier,” which the ALJ adopted. Id. The ALJ construed the disputed term “base controller” in claims 18 and 24 of the ‘718 patent and claim 14 of the ‘895 patent with its plain meaning, i.e., “device or piece of equipment used to operate the base.” Id. at 230. The ALJ construed the disputed claim term “operably connected to” according to its plain and ordinary meaning as “arranged in a manner capable of performing a designated function.” Id. at 233. The ALJ also construed the claim term “at least one of [A] and [B],” from claims 18 and 24 of the ‘718 patent, with its plain and ordinary meaning of “either A or B or multiple As or multiple Bs or combinations thereof.” Id. at 239.

Additionally, the ALJ construed three claim terms, all of which include the word “means.” Id. at 242. The ALJ construed “barrier position limit detection means” from claims 18 and 24 of the ‘718 patent as “a means-plus-function term with a recited function of ‘barrier limit detection’ and a recited structure of ‘limit switches or electronic limits.’” Id. at 243. The ALJ construed “signal means for generating a status signal in response to transmissions from at least one of said base transceiver and said transceiver of said status indicating unit and said obstruction detection unit,” from claim 18 of the ‘718 patent, as a “means-plus-function term with a recited function of ‘generating a status signal’ and a recited structure of ‘visual indicators and/or by way of a text message displayed on a suitable visual display.’” Id. at 244-45. Lastly, the ALJ construed “control means responsive to a signal ... for changing a power consumption mode ... unit,” from claim 18 of the ‘718 patent, and “control means associated with said transceiver ... for changing from a low power consumption state to a higher power consumption state upon receiving a signal...transceiver,” from claim 24 of the ‘718 patent, as “means-plus-function terms with a recited function of ‘changing a power consumption mode’ and a recited structure of ‘a processor.’” Id. at 246-47.

The construction of the claim terms discussed above with respect to the ‘718 and ‘895 patents were all unreviewed and therefore adopted by the Commission. Comm’n Op. at 53. The Commission did, however, review and construe the term “obstruction detection unit,” in claims 18 and 24 of the ‘718 patent, and “obstruction detector,” in claim 17 of the ‘895 patent, to mean a “device or circuitry capable of detecting and signaling an obstruction in the opening closable by the barrier.” Id.

19 C.F.R. Part 177 Ruling Request

Procedural History

On February 14, 2022, Chamberlain submitted a letter to CBP requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included Exhibits 1 to 17, Video Exhibits 1 to 5, Exhibit A, two declarations—one from Mr. Jenkins (“Jenkins Decl.”) and one from Dr. Schonfeld (“Schonfeld Decl.”), and Appendices A to C (collectively, “Ruling Request”). Chamberlain Email to EOE Branch, dated February 14, 2022. Chamberlain requested a ruling “that certain movable barrier operator systems and components thereof to be imported by Chamberlain are not subject to exclusion from entry for consumption into the United States because they have been redesigned to eliminate the features covered by the Limited Exclusion Order (‘LEO’) issued on February 9, 2022 by the ITC in the 1209 Investigation.” Ruling Request at 1. In the same e-mail, Chamberlain stated that it was “copying counsel for OHD to ensure simultaneous review of the submission.” Chamberlain Email to EOE Branch, dated February 14, 2022. On February 16, 2022, the EOE Branch had an initial conference call with Chamberlain and OHD, on which both parties agreed to conduct the ruling request process on an inter partes basis, as administered by the EOE Branch, and the parties confirmed that they had entered into a non-disclosure agreement. See EOE Branch Email, dated February 16, 2022. Also during this initial call, the EOE Branch and the parties discussed scheduling for this inter partes proceeding, and after failing to reach agreement on a proposed procedural schedule, the parties submitted proposals to the EOE Branch. See OHD Email, dated February 24, 2022; Chamberlain Email, dated February 24, 2022. On February 25, 2022, after considering the submissions, the EOE Branch established a procedural schedule. See EOE Branch email to Parties, dated February 25, 2022. On March 21, 2022, OHD provided its response to the Ruling Request, which included Exhibits A to NN and three declarations—one from Dr. Kattamis (“Kattamis Decl.”), one from Dr. Wells (“Wells Decl.”), and another from Mr. Williams (“Williams Decl.”) (collectively, “OHD Response”). On March 28, 2022, Chamberlain provided its reply to OHD's Response, which included Exhibit 1 and three declarations—another from Mr. Jenkins (“Jenkins Reply Decl.”), another from Dr. Schonfeld (“Schonfeld Reply Decl.”), and one from Ms. Kelkhoff (“Kelkhoff Reply Decl.”) with accompanying exhibits (collectively, “Chamberlain Reply”). On April 4, 2022, OHD provided its sur-reply to Chamberlain’s Reply, which included Exhibits OO to RR and two additional declarations—from Dr. Baer (“Baer Sur Reply Decl.”) and another from Dr. Kattamis (“Kattamis Sur Reply Decl.”) (collectively, “OHD Sur Reply”). On April 12, the EOE Branch conducted an oral discussion with the parties, both of which submitted presentations (“Chamberlain Oral Discussion Presentation” and “OHD Oral Discussion Presentation” accordingly). On April 18, 2022, the parties submitted their Post Oral Discussion Submissions (“Chamberlain Post-Oral Discussion Submission” and “OHD Post Oral Discussion Submission” accordingly).

On April 21, 2022, the EOE Branch sent a letter to the Commission seeking “confirmation or clarification whether the Commission reached any finding or determination whether the [respondent’s] legacy products satisfied the obstruction detector limitation based on (1) the safety reversing sensors, (2) the processor, or (3) the RF transceiver present on the legacy products.” Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209, EDIS Doc. ID 770512, Letter from U.S. Customs and Border Protection Regarding Clarification on a Commission Determination (April 11, 2022) (Confidential); Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209, EDIS Doc. ID 770511, Letter from U.S. Customs and Border Protection Regarding Clarification on a Commission Determination (April 11, 2022) (Public) at 2. The Commission replied to this letter on May 2, 2022. Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209, EDIS Doc. ID 769628, Confidential Commission Letter Responding to an Inquiry from Customs and Border Protection for This Investigation (May 2, 2022); Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209, EDIS Doc. ID 770000, Commission Letter Responding to an Inquiry from Customs and Border Protection for This Investigation (May 2, 2022) (Public) (“Comm’n Response”) at 1. On May 6, 2022, OHD sent the EOE Branch a letter regarding the May 2nd Commission letter (“OHD Letter”), and on May 9, 2022, Chamberlain submitted a letter to the EOE Branch responding to the OHD Letter (“Chamberlain Letter”).

The Articles at Issue in this Ruling Request

Chamberlain states that any of its products that implement the redesigns at issue in this ruling will bear an “MC” designation. Jenkins Decl. at ¶ 107. For example, Chamberlain notes that the redesigned products will have an “MC” after the SKU/Model Number on the product label. See e.g., Exhibit 17 of Jenkins Decl. Additional details regarding the specific redesigns are provided below.

The Frequency Redesign

Chamberlain claims that the articles listed in Appendix A of the Ruling Request “have been redesigned to replace Triband™ multi-frequency transmission with single frequency transmission.” See e.g., Supplemental Appendix A of Chamberlain Post Oral Discussion Submission at 1. Chamberlain explains that the frequency redesign removed the Triband™ functionality from “the source code [[

]][] [[

]] Chamberlain Post Oral Discussion Submission at 3 (citing Jenkins Decl. ¶¶ 48-53, 70-75); Jenkins Reply Decl. ¶¶ 3-28.

Transmitters

893LM_MC Transmitters

For the transmitters, Chamberlain states that “[b]y default in the United States, the new, redesigned transmitters transmit on only 315 MHz; they do not switch between multiple transmission frequencies during transmission.” Ruling Request at 13 (citing Jenkins Decl. at ¶ 33). In support, Chamberlain provided a video representation (Video Exhibit 1 of the Ruling Request) for a legacy transmitter and the redesigned transmitter (Model No. 893LM MC) in operation when in the presence of a spectrum analyzer, which is “a device that shows the intensity of signals emitted on various frequencies.” See e.g., Jenkins Decl. ¶¶ 34-8. A screenshot from that video is provided in Mr. Jenkins’ Declaration and reproduced below. Id. at ¶ 34.




Id. As shown in the video, the redesigned transmitter, exhibiting a date of [[ ]] and labeled as Model No. 893LM MC, transmits on 315 MHz, while the legacy transmitter, exhibiting a date of [[ ]] and labeled as Model No. 893LM, transmits on 310, 315 and 390 MHz during a single transmission. Id. at ¶¶ 34-5. Chamberlain further claims that “[t]he redesign of the Chamberlain 893LM standard transmitter is exemplary of the redesign to all Chamberlain transmitters.” Ruling Request at 14 (citing Jenkins Decl. at ¶ 38).

Chamberlain notes further that the redesign “was implemented in Chamberlain’s transmitter firmware to replace Triband™ multi-frequency transmission with single frequency transmission.” Jenkins Decl. at ¶ 48. For the 893LM transmitter, Chamberlain identifies that “changes [were] made to [[ ]] which controls the permitted transmission frequencies, and [[ ]] which controls the regular operation of the Chamberlain transmitters.” Id.; see also Exhibits 12 and 13 of Jenkins Decl. “[T]he redesigned code [[

]] Jenkins Decl. at ¶ 52. More specifically, [[ ]] was added to [[ ]] to set the permitted transmission frequency [and as shown below from a picture reproduced from Mr. Jenkins’s declaration] the permitted frequency for the 893LM transmitter is set to 315 MHz because [[ ]] Id. at ¶ 49.

[[ ]]

Id. (citing Exhibit 12 of Jenkins Decl. at ln. 66-70). Chamberlain further explains that [[ ]] the transmitter would be set to transmit on 390 MHz [but] no Chamberlain transmitter imported into the U.S. has [[ ]] and therefore no transmitter imported into the U.S. is set to transmit on 310 MHz, 315 MHz, and 390 MHz.” Jenkins Decl. at ¶ 49.

In addition, Chamberlain states that “the redesigned code [[ ]] which ensures that, in all circumstances, the transmitter can only transmit when its frequency is tuned to the frequency set by [[ ]]” Id. at ¶ 50. Chamberlain points out that [[ ]] [[ ]] and this [[ ]]. Jenkins Decl. at ¶ 50 (citing Exhibit 13 of Jenkins Decl. at ln. 1383, ln. 1365-66). In particular, Chamberlain provides that the precise code requirements [[ ]] are shown below. Id. at ¶ 51 (citing Exhibit 13 of Jenkins Decl. at ln. 1365-66).

[[ ]]

Id. at ¶ 50. Chamberlain explains that the [[

]] Id. at ¶ 51. Chamberlain states that [[

]] Id. at fn.3 and ¶ 50. Thus, Chamberlain notes that [[

]] Id. Chamberlain then concludes [[ ]] Id. at ¶ 50. Nevertheless, OHD points out that [[ ]] Baer Decl. at ¶ 25.

893MAX_MC Transmitters

For the transmitters, Chamberlain also notes that “[i]f customers experience performance issues with transmission on 315 MHz, they can configure some transmitters to use an alternate frequency, 390 MHz [but] [i]n all circumstances, transmission is single frequency without switching transmission frequency during transmission.” Id. at 13, fn. 8. This is referred to as the “Alternate Frequency Mode.” See e.g., Schonfeld Reply Decl. at ¶ 14. In support, as part of its Reply, Chamberlain provided a video representation (Video Exhibit 6 of Chamberlain Reply) of a legacy 893MAX legacy transmitter and a redesigned 893MAX_MC transmitter in operation when in the presence of a spectrum analyzer. See e.g., Jenkins Reply Decl. at ¶¶ 11-16. A screenshot from the video is provided in Mr. Jenkins’ Declaration and reproduced below. Id. at ¶ 11




The video shows that the redesigned transmitter (exhibiting a date of [[ ]] and labeled as Model No. 893MAX MC) transmits on 315MHZ or on 390 MHz, while the legacy transmitter (exhibiting a date of [[ ]] and labeled as Model No. 893MAX) transmits on 310, 315, and 390 MHz during a single transmission. Id. at ¶¶ 11-12.

Chamberlain further explains that for the firmware, in particular [[ ]] Jenkins Reply Decl. at ¶ 9. Mr. Jenkins explains that “[[ ]] the 893MAX_MC replaces Triband™ multi-frequency functionality with the ability to only transmit on a single frequency [i.e., either 315 MHz or 390 MHz transmission].” Id. at ¶¶ 9-10. OHD provides in further detail that “in the [ ] 893MAX_MC CGI version of transmitter source code that CGI provided, CGI [[ ]] Baer Decl. at ¶ 52 (internal citations omitted). OHD further states that [[

]] Id. at ¶ 29. Moreover, OHD notes that [[

]] Id.

Receivers

For the receivers, Chamberlain similarly states that “the new, redesigned barrier operators’ default receiving frequency in the United States is 315 MHz. Ruling Request at 15 (citing Jenkins Decl. at ¶ 53). Chamberlain further states that “[t]hese redesigned barrier operators receive on only that frequency during reception and do not scan between multiple reception frequencies during reception” but notes that “[i]f customers experience performance issues with transmission on 315 MHz, they can configure the receiver to use an alternate frequency[] e.g., 390 MHz [and] [i]n all circumstances, reception is on a single frequency without scanning between multiple frequencies.” Id. at 15, fn. 9. In support, Chamberlain provided a video representation (Video Exhibit 2 of Ruling Request) showing the operation of the receiver technology for a redesigned garage door opener (“GDO”). Jenkins Decl. at ¶ 55. The video shows “a redesigned Chamberlain D2101 non-Wi-Fi myQ AC Operator GDO’s response to transmitters transmitting on multiple frequencies.” Ruling Request at 1 (citing Video Exhibit 2 of Jenkins Decl. and Jenkins Decl. at ¶¶ 55-61). Chamberlain noted that “the GDO [was] set to ‘learn mode’ so that it would be capable of pairing any transmitter broadcasting at the right frequency” and pointed out that “[i]f the GDO was not in learn mode, it is possible that lack of operation could simply mean that the transmitter and GDO were not paired. Using learn mode ensures that the GDO will respond to any transmitter signal it is capable of receiving.” Jenkins Decl. at ¶ 55, fn. 4. The video shows that a GDO will respond to the 315 MHz frequency, but not the 310 MHz, 390 MHz, or 433.92 MHz frequencies. Video Exhibit 2 of Ruling Request; see also Jenkins Decl. at ¶¶ 55-61.

Chamberlain further explains that “[t]his redesign was implemented in Chamberlain’s receiver firmware to replace Triband™ multi-frequency reception with single frequency reception.” Jenkins Decl. at ¶ 70. Chamberlain provides details of the firmware changes made to the LiftMaster® Model 8500W Wall Mount Wi-Fi® GDO but claims that the changes made to this GDO “are exemplary of the changes made to all GDO receiver firmware.” Id. Specifically, Chamberlain states that “[[ ]] which controls the GDO’s radio reception and transmission capabilities.” Id. (citing Exhibit 4 at ln. 4). Chamberlain states that [[ ]][[ ]] Id. at ¶ 71. Chamberlain also states that each portion of the code that could have set multiple receive frequencies [[

]]. Id. at ¶ 72. Chamberlain notes that “[a]ll other functions that could change the receiver frequency to scan more than a single frequency are similarly [[ ]] in any circumstance, that would allow reception on more than a single frequency.” Id. at ¶¶ 74-5. Chamberlain summarizes that [[

]] Chamberlain Post Oral Discussion Submission at 3-4. Chamberlain also points out that in the code excerpt below,

[[ ]] Id. at 4.

[[ ]]

Id. (citing Chamberlain Oral Discussion Presentation at Slide 37).

The Power Consumption Redesign

In addition to the above, Chamberlain argues that the [[

]] See e.g., Supplemental Appendix C of Chamberlain Post Oral Discussion Submission. [[ ]] Compare Supplemental Appendix C of Chamberlain Post Oral Discussion Submission with Supplemental Appendix A of Chamberlain Post Oral Discussion Submission. By removing the energy conservation feature, Chamberlain argues that the power consumption redesign does not enter sleep mode, and therefore “the safety reversing sensors do not ‘turn OFF’ during normal operation.” Ruling Request at 16 (citing Jenkins Decl. at ¶ 77). Given its representation that the safety reversing sensors do not “turn off” during normal operation, Chamberlain claims that the safety reversing sensors never change power consumption mode upon receipt of a wireless signal, as required by the claims at issue in the ‘718 and ‘895 patents. Id.

In support of this modification, Chamberlain provides source code and video evidence depicting the comparison between power supplied to the safety reversing sensors for the legacy and redesigned articles. See Ruling Request at 16-19. For example, in the Ruling Request, Chamberlain provides a depiction of the redesigned [[

]]

Ruling Request at 17 (citing Jenkins Decl. Ex. 4 at 19); see also Jenkins Decl. Ex. 4 [[ ]]; Jenkins Decl. Ex. 15 [[ ]]; Jenkins Decl. Ex. 16 [[ ]].

According to Chamberlain, the video evidence it submitted further demonstrates the operation of the redesigned products and depicts no change in the power supplied to the safety reversing sensors. See Ruling Request at 17; see also Jenkins Decl. Video Ex. 3; Jenkins Decl. Video Ex. 4, Jenkins Decl. Video Ex. 5. For example, in explaining the content of the video submissions, Chamberlain provided the still image depicted below, which compares the redesigned article remaining at a standard 5.9 Volts, with the legacy product reducing to approximately 0 Volts:




Ruling Request at 17.

Chamberlain argues that the testing captured in the video exhibits is consistent with that performed during the underlying investigation and relied upon by the Commission to reach its infringement determination. Id. (citing FID at 274, 290). Specifically, during the investigation, OHD’s expert “‘measured the voltage between the safety sensors, and therefore the power supplied and consumed by them, at 5.9 Volts.’ After several minutes ‘sleep mode was engaged, and voltage between the safety sensors (and therefore the power supplied and consumed by them) was reduced to approximately 0 Volts.’” Ruling Request at 17 (quoting FID at 274) (internal citations omitted).

Therefore, Chamberlain argues that the power consumption redesign has been modified not to enter sleep mode, and the safety reversing sensors do not "turn OFF” during normal operation, thereby never changing power consumption mode upon receipt of a wireless signal. Ruling Request at 18.

ISSUE

Whether Chamberlain has met its burden to show that the articles at issue do not infringe any of claims 1, 4, 16, and 19 of the ‘935 patent; claims 18 and 24 of the ‘718 patent; and claim 17 of the ‘895 patent and thus are not subject to the Modified 1209 LEO. See, e.g., Ruling Request at 1-2.

LAW AND ANALYSIS

Section 337 Exclusion Order Administration

The Commission shall investigate any alleged violation of section 337 on complaint under oath or upon its initiative.  See 19 U.S.C. § 1337(b)(1).  If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States unless the Commission finds based on consideration of the public interest that such articles should not be excluded from entry.  See 19 U.S.C. § 1337(d)(1).  When the Commission determines there is a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007).

Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the Commission in the investigation. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id. A general exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).

In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. § 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id. at 1337(i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).”).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that violate Section 337 of the Tariff Act of 1930 without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame Camera, Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n. 6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)–(D) and 19 U.S.C. § 1337(d)(1).”).

Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist.” See Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine importation and [violation], the Commission's jurisdiction extends to all models of [violative] products that are imported at the time of the Commission's determination and to all such products that will be imported during the life of the remedial orders.” See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56–57, USITC Pub. 3935, Doc ID 287263 (July 2007).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee [or plaintiff],” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843; 187 L. Ed. 2d 703; 2014 U.S. LEXIS 788 (2014), the Commission has held that Medtronic is not controlling precedent and does not overturn its longstanding practice of placing the burden of proof on the party who, in light of the issued exclusion order, is seeking to have an article entered for consumption. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 6–11. In particular, the Commission has noted that “[t]he Federal Circuit has upheld a Commission remedy which effectively shifted the burden of proof on infringement issues to require a company seeking to import goods to prove that its product does not infringe, despite the fact that, in general, the burden of proof is on the patentee to prove, by a preponderance of the evidence, that a given article does infringe[.]” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993), (emphasis in original) (citing Sealed Air Corp. v. U.S. Int’l Trade Comm’n, 645 F.2d 976, 988–89 (C.C.P.A. 1981)).

This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co. v. U.S. Int'l Trade Comm'n, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does not dispute, that in an appropriate case the Commission can impose a general exclusion order that binds parties and non-parties alike and effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. The rationale underlying the issuance of general exclusion orders—placing the risk of unfairness associated with a prophylactic order upon potential importers rather than American manufacturers that, vis-a-vis at least some foreign manufacturers and importers, have demonstrated their entitlement to protection from unfair trade practices—applies here [in regard to a limited exclusion order] with increased force.”) (emphasis added) (internal citation omitted).

Patent Infringement

Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to establish equivalence is by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function-way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016).

As for the first step above, “claim construction is a matter of law.” SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). Moreover, the ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the patent’s intrinsic evidence (the patent claims, specifications, and prosecution history). UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 325-6, (2015).

“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.” Id. at 1314. In others, courts look to public sources such as “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.

“To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). The context in which a claim term is used also includes the full chain of dependence as well as the remaining suite of claims and the written description. See Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of claim differentiation.”).

The second step to establish infringement involves a comparison of the claims, as properly construed, to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).

The Frequency Redesign

The infringement analysis of the frequency redesign centers on claim 1 of the ‘935 patent, and more specifically, the claim limitations emphasized in bold and italicized below:

1. A remote controlled barrier opening system, comprising:

a transmitter configured to:

(a) switch an output frequency to different channels, the switching being performed at a transmitter-switching rate, and

(b) on each of the channels, transmit multiple copies of a message;

a receiver configured to:

(a) switch a reception frequency to the different channels at a receiver scan rate that is different from the transmitter-switching rate, and

(b) on each of the channels, receive data for a period of time greater than a transmission time of one copy of the message; and

a barrier operator configured to operate a device at least in part in response to receipt of a copy of the message on any of the different channels.

See, the ‘935 Patent, col. 11: lns. 6-24 (emphasis added); Ruling Request at 5; OHD Response at 48. For at least the reasons below, we find that Chamberlain has met its burden to show that the frequency redesign does not infringe claim 1 of the ‘935 patent as at least the claim limitations emphasized above are not met.

Infringement Analysis

As an initial matter, we note that “in every infringement analysis, the language of the claims, as well as the nature of the accused product, dictates whether an infringement has occurred.” Fantasy Sports Props. v. Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002). Thus, we start with the claim language, and as OHD states, claim 1 recites an apparatus with a transmitter and receiver “configured to” perform certain functions. OHD Response at 52. Further, there is no real disagreement between the parties that, in light of the “configured to” language at issue, claim 1 recites capability. See e.g., OHD Response at 52 (citing Finjan, 626 F.3d 1197, 1204 (Fed. Cir. 2010)); Chamberlain Reply at 4.

Turning to the products that implement the frequency redesign, we note that the parties generally do not dispute the manner in which the redesigned product samples are configured and operate. For example, Chamberlain states, and OHD has not shown otherwise, that “[t]he redesigned products are sold to consumers with the software in a compiled ‘executable’ form such that its source code cannot be read or changed.” Schonfeld Reply Decl. at ¶ 7. Furthermore, with respect to the 893LM_MC transmitter, there is no significant dispute that (1) in the relevant source code, [[ ]]; (2) if [[ ]], the single frequency functionality is executed and the transmitter transmits on a single frequency, i.e., 315 MHz; and (3) if [[ ]] the multi-frequency functionality is executed and the transmitter transmits on multiple frequencies, i.e., 310, 315 and 390 MHz. See e.g., Jenkins Decl. at ¶¶ 48-50; Chamberlain Reply at 5 (citing Exhibit 12 of Jenkins Decl.); Jenkins Reply Decl. at ¶ 7; Baer Decl. at ¶¶ 24-5; OHD Post Oral Discussion Submission at 35 (citing Oral Discussion Transcript at 24:19-25:2). Similarly, for the 893MAX_MC transmitter and the 8500W_MC GDO receiver, there is no significant dispute that (1) in the relevant source code, [[

]]; (2) if [[ ]], the code for the single frequency functionality is executed and the transmitter transmits or receiver receives on a single frequency, i.e., either 315 MHz or 390 MHz but not both; and (3) if [[ ]] the code for the multi-frequency functionality is executed and the transmitter transmits or receiver receives on multiple frequencies, i.e., 310, 315 and 390 MHz. See e.g., Jenkins Decl. at ¶¶ 72-4; Baer Decl. at ¶¶ 29, 34-5, 44; Jenkins Reply Decl. at ¶¶ 9-10; Baer Sur Reply Decl. at ¶ 13.

Notwithstanding their common understanding as to the configuration and operation of the frequency redesign detailed above, the parties continue to dispute whether claim 1 of the ‘935 patent is infringed and the basis for that dispute is centered on the question regarding the lines of code for the [[ ]] that are still present in the source code. See e.g., Wells Decl. at ¶¶ 36-8. OHD argues that “CGI transmitters and receivers include the source code that configures the CGI transmitters and receiver to be capable of functioning in a manner that was found to infringe the ‘935 Patent.” OHD Response at 55. Chamberlain responds that the frequency redesign is neither “configured to infringe” nor “reasonably capable of infringing” because the “redesigned products are sold to consumers with the software in a compiled ‘executable’ form” that only allows execution of the single frequency functionality and any infringement based on the multi-frequency functionality would require modification. See e.g., Chamberlain Post Oral Discussion Submission at 6; Schonfeld Reply Decl. at ¶ 7. Additionally, both parties cite precedent to support their respective positions that infringement does or does not lie under the facts presented and as commonly understood among the parties.

We agree with Chamberlain that “the asserted claims recite physical structures (transmitters and receivers) such that the claims are not practiced when the transmitting and receiving functionality is removed by changes to the source code[.]” Chamberlain Post Oral Discussion Submission at 8-9, fn. 9. While it is undisputed that “[[ ]],” OHD Response at 49 (citing FID at 85), it is also important to note that the language of claim 1 does not specifically claim source code as an element of the apparatus claim. Rather, the limitations at issue from claim 1 speak in terms of “a transmitter” and “a receiver” configured to perform a function. See e.g., claim 1 of the ‘935 patent, col. 11: lns. 6-24 (“a transmitter configured to . . .” and “a receiver configured to . . .”). Moreover, there is no contention that “transmitter” or “receiver” are terms of art that mean or refer to “source code.” See Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.”) (emphasis added). Accordingly, this language in claim 1 cannot be construed to mean “source code configured to” execute the multi-frequency functionality. Rather, it is the “transmitter” or “receiver” that must be configured to perform the multi-frequency functionality. Thus, for claim 1 to be infringed, the “transmitter” and “receiver” (not the source code) need to operate in the multi-frequency mode or be capable of operating in that manner.

Chamberlain has shown that the redesigned transmitters and receivers do not operate in the multi-frequency mode and are not capable (without modification) of operating in that mode. First, as discussed above, there is no dispute that, for the frequency redesign, in the source code at issue: (a) [[ ]] and when [[ ]] the single frequency functionality is executed and the transmitter transmits on a single frequency, i.e., 315 MHz; and that (b) [[ ]] and when [[ ]] the code for the single frequency functionality is executed and the transmitter transmits or the receiver receives on a single frequency, i.e., either 315 MHz or 390 MHz but not both. Second, Chamberlain’s expert, Mr. Schoenfeld, stated “[t]he redesigned products are sold to consumers with the software in a compiled ‘executable’ form such that its source code cannot be read or changed.” Schonfeld Reply Decl. at ¶ 7, ¶ 25 (“There is no option, or even an ability, to simply plug a computer into the redesigned products and modify the compiled source code on the redesigned products.”). Taken together, this shows that the frequency redesign is only configured to transmit or receive on a single frequency [[ ]] and, as such, the redesign is not capable of operating in the multi-frequency mode ([[

]] Moreover, the code on the products is “in a compiled ‘executable’ form such that its source code cannot be read or changed.” Schonfeld Reply Decl. at ¶ 7. Thus, we find that the frequency redesign does not satisfy the relevant limitations in claim 1, unless there is a modification, and therefore does not infringe the ‘935 patent.

This view is consistent with the approach the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has adopted in cases such as Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001). In Telemac, the patent holder argued that “even though Topp [the accused infringer] has chosen not to permit direct dialing of international call, the capability of billing for international rates is nonetheless present in the phone's source code.” Id. at 1330 (emphasis added). Thus, the patent holder asserted that “because Topp’s system is capable of being modified to place, and charge for, international calls, Topp’s system infringes.” Id. However, as manufactured and sold, the telephone product at issue was not enabled or capable of use to place international calls. Telemac, 247 F.3d at 1330. Based on these facts, the Federal Circuit found that the telephone product at issue was not infringing. The Federal Circuit specifically noted that “[u]nder the precedent of this circuit . . . that a device is capable of being modified to operate in an infringing manner is not sufficient by itself [] to support a finding of infringement.” Id. (citation omitted); see also e.g., TQ Delta LLC v. Adtran, Inc., No. CV 14-954-RGA, 2021 U.S. Dist. LEXIS 60151 (D. Del. Mar. 30, 2021) at *16 (citing Telemac, 247 F.3d at 1330, and explaining that Telemac found “that the telephone product at issue was non-infringing even if its source code—without modification—was capable of the infringing functionality.”) (emphasis added). Similarly, [[ ]] the redesigned transmitters and receivers, as manufactured and sold, are incapable of being used to transmit or receive on multiple frequencies and there is no evidence in the administrative record that establishes how to enable the multi-frequency functionality on the transmitter or receiver without a modification. As explained above, (1) in the source code for the redesigned articles, [[ ]], providing that only the single frequency functionality is executed and (2) the “[t]he redesigned products are sold to consumers with the software in a compiled ‘executable’ form such that its source code cannot be read or changed.” See e.g., Jenkins Decl. at ¶¶ 48-50; Schonfeld Reply Decl. at ¶¶ 7, 25.

OHD’s Additional Arguments While OHD argued and provided expert declarations stating, inter alia, that “the functionality of the source code does not need to be altered to trigger channel-switching functionality,” OHD Sur-Reply at 45-6 citing Baer Decl. at ¶¶ 25-8 (emphasis added), OHD has not demonstrated that the transmitter or receiver “with the software in a compiled executable form”, see e.g., Schonfeld Reply Decl. at ¶ 7, can operate in an infringing mode without first being modified or altered. In other words, [[ ]] but there is no evidence establishing that the transmitter or receiver can execute it without modification. The language of claim 1 is not directed to source code and, therefore, [[ ]] does not compel a finding of infringement. Indeed, there is no evidence to suggest that the redesigned transmitters or receivers are capable of multi-frequency transmission or reception without modification. This approach comports with Federal Circuit precedent. See e.g., Chamberlain Reply at 3 (alteration omitted) (citing Versata Software, Inc. v. SAP Am., Inc., 717 F.3d 1255, 1262 (Fed. Cir. 2013) (quoting High Tech Med. Instrumentation v. New Image Indus., Inc., 49 F.3d 1551, 1555 (Fed. Cir. 1995)) (“[A] device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim.”)); see also, Fantasy Sports, 287 F.3d at 1117-8 (“Intel therefore does not stand for the proposition . . . that infringement may be based upon a finding that an accused product is merely capable of being modified in a manner that infringes the claims of a patent.”).

While we recognize that claim 1 of the ‘935 patent recites capability and not actual operation, we find that, under the language of the claim and the relevant case law, in order to infringe, the features of the device (i.e., the redesigned transmitter or receiver and not the source code) must be capable of operating in the infringing mode without modification. See e.g., Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 994 (Fed. Cir. 2009) (noting that the “reasonably capable” test applies “only to claim language that specifies that the claim is drawn to capability.”); cited in Finjan, 626 F.3d at 1204.

Specifically, in Finjan, the patent holder’s “non-method claims describe[d] capabilities without requiring that any software components be ‘active’ or ‘enabled.’ Id. at 1204-05. The Federal Circuit noted it was “undisputed that software for performing the claimed functions existed in the products when sold—in the same way that an automobile engine for propulsion exists in a car even when the car is turned off.” Moreover, the Federal Circuit compared this to a similar case in Fantasy Sports, 287 F.3d at 1117, where infringement was based on the defendants’ sale of a “modifiable software tool” for users to “activate the functions programmed into a piece of software by selecting those options[.]” Finjan at 1205 (quoting Fantasy Sports at 1118). As such, while “the user [was] only activating means that [were] already present in the underlying software,” activation was still necessary.

In other words, the Federal Circuit recognized that, in Fantasy Sports, “[i]nfringement occurred because the code ‘was written in such a way as to enable a user of that software to utilize the function . . . without having to modify that code.’” Finjan at 1205 (quoting Fantasy Sports at 1118) (emphasis added). The same analysis from Fantasy Sports applied in Finjan because there was “no evidence that customers needed to modify the underlying code to unlock any software modules.” Id. However, precisely for this reason, these cases are factually distinct from the present inter partes proceeding, where the unrebutted evidence shows that modification is necessary to implement the multi-frequency functionality and, therefore, the “reasonably capable” test does not apply to find that the redesign products infringe. For its side, OHD primarily argues that “[j]ust as in Finjan, EVS Codec, and TQ Delta, the language of claims 1 and 4 of the ‘935 Patent does not require that the device’s code be active or enabled.” See OHD Response at 53. OHD states that “[i]nfringement occurs with respect to such a claim occurs [sic] when ‘software for performing the claimed functions existed in the products when sold.’” OHD Response at 52 (quoting Finjan, 626 F.3d at 1205). However, as noted above, these cases are distinguishable, as further explained below.

Both Finjan and EVS Codec Techs. v. ZTE Corp., No. 3:19-cv-00385-M, 2020 U.S. Dist. LEXIS 258052 (N.D. Tex. July 21, 2020) are distinguishable because the claims at issue in these cases recite software elements. Specifically, in Finjan, the Federal Circuit found that “claims recite software components with specific purposes.” Finjan, 626 F.3d at 1205. The software claims at issue, as noted above, “describe[d] capabilities without requiring that any software components be ‘active’ or ‘enabled.’” 626 F.3d at 1204-05. Similarly, in EVS Codec, the district court found that the claims terms at issue encompassed software. EVS Codec, 2020 U.S. Dist. LEXIS 258052 at *12 (“Here, by contrast, the Eastern District of Texas—whose claim constructions the parties stipulated govern this case . . . rejected ZTE's argument that several terms at issue in this case should be construed as physical structures. For example, that court held that the term ‘filter’ encompassed software operating on a general-purpose processor or computer and rejected ZTE's argument that the claim required ‘a distinct specialized hardware circuit.’”) (citations omitted). In contrast, claim 1 of the ‘935 patent is not directed to source code as an element but recites “a transmitter” and “a receiver” “configured to” perform the claimed function. Thus, the focus of the analysis must remain on the capability of the transmitter and receiver, not aspects of the source code. While OHD has provided evidence showing that the source code may be capable of executing the multi-frequency functionality if enabled with a change, for example, by [[ ]], there is no record evidence that the redesigned transmitter or receiver is capable of operating on multiple frequencies without such a change. Rather, as Mr. Schonfeld stated, “[t]he redesigned products are sold to consumers with the software in a compiled ‘executable’ form such that its source code cannot be read or changed.” Schonfeld Reply Decl. at ¶ 7. “There is no option, or even an ability, to simply plug a computer into the redesigned products and modify the compiled source code on the redesigned products.” Id. at ¶ 25. TQ Delta LLC v. Adtran, Inc., No. CV 14-954-RGA, 2021 U.S. Dist. LEXIS 60151 (D. Del. Mar. 30, 2021) is likewise distinguishable, not only because the relevant claim limitations of the asserted patents before the district court are software-driven, but because the infringing functionality at issue (i.e., “Dynamic D”) could be “turned on” by entering a command into the command line interface (“CLI”) without any changes to the underlying source code. Id. at *2-3. In contrast, OHD has not argued that there is an equivalent option to enter a command with respect to the redesigned transmitter or receiver that would “turn on” or otherwise activate a multi-frequency mode of operation. But see Schonfeld Reply Decl. at ¶ 25. Rather, the primary argument advanced by OHD is that changing [[ ]] would permit operation of the multi-frequency functionality based on this reprogramming of the source code. OHD argues further that such a change should not be considered a modification. See e.g., OHD Sur Reply at 43. However, in TQ Delta, the district court noted that “[w]ith regard to infringement, caselaw indicates that modification in the context of software claims typically means altering the source code.” Id. at *12-13 (emphasis added). In particular, the district court found that “[t]he command used to enable Dynamic D in the Accused Products is issued through the CLI and does not require that the source code itself be edited for the command to be used.” Id. at *15.

Additionally, the district court emphasized that “the CLI runs the code; it is not used to write or edit the code.” Id. (emphasis in the original). Thus, the district court found that “[a]ctivation of Dynamic D does not require modification of the source code, nor do other features of the apparatus pose structural barriers to carrying out the infringing functionality.” Id. at *17. On this basis, the district court found the accused products to infringe. Returning to the undisputed facts regarding the source code as programed and compiled for the frequency redesign, even with the focus only on the source code capability, under TQ Delta, changing [[ ]] must be considered a modification. Thus, absent such a modification to the source code, the frequency redesign only implements a single frequency functionality, and as such, does not infringe claim 1 of the ‘935 patent. As stressed above, the parties do not dispute that in the source code provided, [[ ]] and according to this understanding, the multi-frequency functionality is not executed. See e.g., OHD Post Oral Discussion Submission at 34 (noting that CGI [[ ]] and the Tri-Band functionality is no longer a default feature). For the multi-frequency functionality to be executed, the source code needs to be altered, namely, [[ ]]. See e.g., Baer Decl. at ¶¶ 24-5. Similarly, [[

]]. See e.g., Baer Decl. at ¶¶ 29, 34-5, 44. Put another way, for the multi-frequency functionality to be executed, there needs to be, at least, a change in the source code and without a change in the source code, the multi-frequency functionality is not executed.

Accordingly, Chamberlain has met its burden to demonstrate that the transmitters and receivers implementing the frequency redesign, do not permit multi-frequency functionality and the evidence and arguments OHD relied on have not rebutted this showing. Therefore, after evaluating the record evidence, we find that Chamberlain has met its burden to show that the frequency redesign does not infringe claim 1 of the ‘935 patent. Moreover, claim 4 depends from claim 1, and thus, we further find that Chamberlain has met its burden to show that claim 4 of the ‘935 patent is not infringed. See Duncan Parking Techs., 914 F.3d at 1365.

The Power Consumption Redesign

With respect to the power consumption redesign, for at least the reasons below, we find that Chamberlain has met its burden to show that the power consumption redesign does not infringe claims 18 or 24 of the ‘718 patent or claim 17 of the ‘895 patent.

The parties dispute only one limitation for each of the patents at issue, which requires the obstruction detector to change power consumption mode or state in response to a wireless signal. See e.g., OHD Response at 24. In response to Chamberlain’s non-infringement arguments concerning removal of certain energy conservation functionality, OHD claims that the source code that prompts a low power consumption mode from the legacy products found to infringe at the Commission remains in the redesigned products and that Chamberlain erroneously limited its modification in the redesign to the safety reversing sensor while failing to change the functionality of other features that make up the claimed obstruction detector. See OHD Response at 17, 24.

Specifically, OHD claims that, with respect to the IR safety beams referenced above, Chamberlain has not removed the source code for functionality found to infringe at the Commission, but rather [[ ]] to keep the IR safety beams powered on. OHD Response at 35. [[ ]] OHD argues that Chamberlain has “provid[ed] no evidence that any redesigned products are not ‘reasonably capable’ of operating in an infringing manner[.]” Id. at 43 (citing Finjan, 626 F.3d at 1204). In response, Chamberlain argues, inter alia, that [[ ]] and, as with the frequency redesign, “to the extent OHD is arguing it would be possible to modify the source code to configure the products to infringe, then that argument is legally wrong under Federal Circuit precedent.” Chamberlain Reply at 39-40 (emphasis in original). OHD replies that the Commission found Chamberlain’s earlier redesigns to infringe because they retained control means, [[ ]]. OHD Sur-Reply at 38 (quoting FID at 293). While Chamberlain argues that the source code would need to be modified for it to infringe, CGI Reply at 43, OHD claims that [[ ]]. OHD Sur-Reply at 38. According to OHD, the present redesign is analogous to the redesign that Chamberlain introduced during the underlying investigation, which was found to infringe, as it [[ ]] Id. (citing FID at 293).

We note that, for example, claim 18 of the ‘718 patent, an apparatus claim, recites an “obstruction detector” with “control means” that performs a function. See e.g., Comm’n Op. at 51; ’718 patent, col. 10, lns. 34-38. Similar to the analysis above, there is no contention here that “obstruction detector” or “control means” are terms of art that mean “source code.” Therefore, for this claim to be infringed, the “obstruction detector,” rather than the source code, must be capable of changing power consumption mode or state in response to a wireless signal. To the extent OHD is making arguments in line with those raised for the frequency redesign, we refer to that analysis above.

Moreover, Chamberlain maintains that the power consumption redesign does not invoke the infringing code in any of its power modes, but rather, there needs to be a change at the source code level in order to invoke the infringing functionality. CGI Reply at 43 (“There is no credible dispute that the [[ ]] will not be invoked because the [[ ]]. The source code in the redesigned products would need to be modified in order to [[ ]] and operate with the energy conservation functionality.”) (citing Jenkins Decl. at ln. 449-52); OHD Sur-Reply at 38 (“CGI does not rebut the testimony of Dr. Baer that [[ ]]) (emphasis in original) (internal citation omitted). Therefore, the basis of the dispute between the parties with respect to the safety reversing sensors is whether there must be a modification or alteration to the code to infringe, or whether [[ ]]. Id.

We find that, as with the discussion above concerning the multi-frequency patent, to implement the infringing functionality, there must be a change in the source code. Even if, as OHD argues, all that is required for the redesigns to infringe is the [[

]]. For example, as OHD’s expert explained, [[

]] OHD Response at 43-44 (quoting Baer Sur Reply Decl. at ¶¶ 42, 44) (internal quotation marks omitted). As OHD has stated, to implement the infringing functionality, the [[ ]]. Id. Without this change, the low power consumption functionality is not executed. As with the frequency redesign, though the source code related to the low power consumption functionality [[ ]] the safety sensors on the power consumption redesign are incapable of entering a low power consumption mode in response to a wireless signal without a change at the source code level. Therefore, we find that Chamberlain has met its burden to show that safety reversing sensors do not change power consumption mode or state in response to a wireless signal.

OHD also argues that the power consumption redesign infringes the patents at issue because Chamberlain has not made changes to the other features of the claimed obstruction detector, including the processor and the transceiver, that were present on the legacy products found to infringe at the Commission. See e.g., OHD Response at 24, 30. Both parties agree there have been no changes to the processor or transceiver in the legacy products found to infringe and the redesigned products at issue in this ruling request. Accordingly, the only modifications in the power consumption redesign are exclusively to the safety reversing sensors. See e.g., Ruling Request at 2 (“Chamberlain redesigned its GDOs to remove sleep mode and ensure power supplied to the safety reversing sensors cannot change upon receipt of a wireless signal”) (emphasis in original); OHD Response at 22 (“CGI’s Ruling Request deliberately avoids describing this background or the full scope of the obstruction detector, and instead, just as it did before the Commission, erroneously ‘insists on limiting the accused obstruction detector to the safety reversing sensors.’” (quoting Comm’n Op. at 58). However, as described in more detail below, the Commission confirmed that, while it found infringement based on a change in power consumption mode by the safety reversing sensors, the Commission did not make any findings regarding the processor or transceiver features with respect to the claimed obstruction detector. See Comm’n Response at 2.

Based on this confirmation from the Commission, we find that the administrative record does not support a determination that the processor or RF transceiver represent a basis to exclude the redesigned products from entry as there is no dispute that these same features were present on the legacy products during the underlying investigation but were not specifically the basis of the Commission’s infringement finding. Accordingly, CBP shall not refuse entry based on these feature, absent further direction from the Commission. See HQ H242025 (dated June 24, 2013).

Although the Commission described the scope of the claim language in connection with the obstruction detector limitation, see Comm’n Op. at 54 (e.g., “the claim term at issue is not limited as to components (e.g., IR sensors) or as to location” and “[t]he specification also discloses an embodiment where the obstruction detector includes optical or infrared emitter and receiver, a processor, and a transceiver”) (internal citations omitted), the Commission made findings with respect to infringement, and specifically the features satisfying the obstruction detector limitation, based on the safety reversing sensors only. See Comm’n Response at 2. Because the Commission did not make infringement findings during the underlying investigation as to any features other than the safety reversing sensors—including the processor and RF transceiver—CBP shall not refuse entry on the basis of these other features absent further direction from the Commission in light of HQ H242025 and as required by 19 U.S.C. § 1625. See Int'l Custom Prods. v. United States, 748 F.3d 1182, 1185-86, 1187 (“Section 1625(c) requires Customs to undergo notice and comment procedures before it may issue ‘a proposed interpretive ruling or decision which would — (1) modify . . . or revoke a prior interpretive ruling or decision which has been in effect for at least 60 days.’” (emphasis in original); “Once Customs issued the Ruling Letter, [plaintiff] and other importers were entitled ‘to expect certainty’ that Customs ‘w[ould] not unilaterally change’ [its position] ‘without providing proper notice and an opportunity for comment.’” (emphasis added) (internal citations omitted)); see also 19 C.F.R. § 177.9(a) (“A ruling letter issued by the Customs Service under the provisions of this part represents the official position of the Customs Service with respect to the particular transaction or issue described therein and is binding on all Customs Service personnel in accordance with the provisions of this section until modified or revoked.”).

In HQ H242025, the Intellectual Property Rights Branch (the predecessor of the EOE Branch) addressed a similar issue regarding application of a limited exclusion order in connection with features present on legacy products that were not specifically accused or found to infringe during the underlying investigation at Commission. In that ruling, the complainant had accused a specific application program running on the legacy mobile devices of infringing the asserted patent claims. The Commission found infringement based solely on this infringement contention. However, after the Commission issued the exclusion order, the complainant argued that a different application program, also present on the same legacy devices but not accused or found to infringe, subjected any imported articles with the non-accused application program to the exclusion order. CBP adopted a different enforcement position and held that it would “not refuse entry on the basis of features that were present on the accused devices at the time of the ITC investigation but were not specifically accused and found to satisfy the limitations of the asserted patent claims in the exclusion order.” HQ H242025 at 10-11. Returning to the issues presented in this ruling request with respect to the features present on the legacy products in this investigation, the Commission stated that:

[w]hile the FID also discusses the “garage door opener,” “obstruction detector,” or “processor” being in a sleep or wake mode (see FID at 272-73, 290), the FID did not make any express finding regarding a change (or increase) in power consumption mode (or state) in connection with the processor or transceiver component of the obstruction detection unit (or obstruction detector). [] Accordingly, we confirm that the Commission’s infringement determination with respect to the power consumption claim element is based on a change (or increase) in power consumption mode (or state) of the safety reversing sensors (rather than the processor or transceiver component) of the obstruction detection unit (or obstruction detector).

Comm’n Response at 2 (emphasis added).

Thus, because there is no dispute that these features were present on the articles during the underlying investigation, and the Commission has confirmed that the relevant infringement findings were based on the safety reversing sensors rather than the processor or transceiver, we find that the standard from HQ H242025 applies with equal force in this ruling such that CBP will not refuse entry on the basis of these features absent direction from the Commission.

Conformity with 19 C.F.R. Part 177

Finally, OHD argues that Chamberlain’s ruling request should be denied for failing to comply with the requirements of 19 C.F.R. Part 177. See e.g., OHD Response at 6. Specifically, OHD claims that Chamberlain failed to provide all relevant facts relating to the transaction, that the EOE Branch should draw adverse inferences based on the discovery provided, and that the products are essentially hypothetical. Id. at 6-16.

OHD claims that Chamberlain has not provided a “complete statement of all relevant facts relating to the transaction,” as required by 19 C.F.R. § 177.2(b)(1). OHD states that, during the underlying investigation, the Commission “relied upon myriad forms of evidence: (1) engineering specifications for the Accused Products, (2) deposition testimony from CGI personnel, (3) admissions from the CGI’s expert witnesses, (4) source code for approximately fifty of the Accused Products, (5) other materials from CGI (design documents, schematics, manuals, and comparison charts), and (6) public-facing materials form CGI to customers about the functionality of Accused Products.” OHD Response at 7 (internal citations omitted). OHD also argues that the EOE Branch should draw an adverse inference from Chamberlain’s refusal to provide certain information or files. For example, OHD points to Chamberlain refusal to “provid[e] complete source code for all the products at issue, a fulsome set of design documents and specifications, and mak[e] its witnesses available for deposition.” OHD Response at 12-14. Furthermore, OHD claims that Chamberlain has failed to prove non-infringement through failure of proof by omission, lack of production, and unreliability based on the evidence that Chamberlain provided. Id. at 33-36.

A request for an administrative ruling must indeed include a complete statement of all relevant facts relating to the transaction contemplated by the request. 19 C.F.R. § 177.2(b)(1). This section, however, identifies the type of information to be provided: “[s]uch facts include the names, addresses, and other identifying information of all interested parties (if known); the name of the port or place at which any article involved in the transaction will arrive or be entered, or which will otherwise have jurisdiction with respect to the act or activity described in the transaction; and a description of the transaction itself, appropriate in detail to the type of ruling requested.” Id. Chamberlain has provided product names, model numbers, and exemplary packaging for the products that Chamberlain seeks an admissibility determination. See e.g., Ruling Request App. A; App. C; Ex. 17. OHD, and its experts, had access to the source code, see e.g., Baer Sur Reply Decl. at ¶ 18, and product samples, see e.g., Kattamis Decl. at ¶ 14, for the articles at issue. Furthermore, Chamberlain has cited the underlying Commission record in support of its non-infringement position. See e.g., Ruling Request at 16-18. Lastly, the burden remains on Chamberlain to establish admissibility in this inter partes proceeding and failure to carry its burden with respect to admissibility, including a failure to provide sufficient evidence to support a specific position or non-infringement argument, goes more to satisfying the burden of proof rather than evidencing a failure to comply with the requirements to receive a ruling under 19 C.F.R. Part 177.

OHD further asserts that we should “decline CGI’s Ruling Request as based on a hypothetical transaction because CGI has failed to establish that its ‘MC’ products’ design and function are finalized.” OHD Response at 14. For example, OHD points out that Chamberlain has not yet obtained regulatory approval for the redesigned products from, for example, the U.S. Consumer Product Safety Commission. Id. at 15. We disagree that Chamberlain’s Ruling Request is essentially hypothetical. The question presented in this ruling request is whether the redesigned products are subject to the exclusion order issued in the 1209 investigation due to infringement of the patents at issue. As part of its request, Chamberlain provided samples of articles it intends to import that permitted an evaluation of those sample for OHD to evaluate and argue its position whether the articles in question infringe any of the asserted claims in the Modified 1209 LEO. The administrative record does not provide for an inference that these articles are not sufficiently finalized for evaluation or that Chamberlain is still working on fabrication of its redesigns. Moreover, the Customs regulations make clear that “[t]he application of a ruling letter by a Customs Service field office to the transaction to which it is purported to relate is subject to the verification of the facts incorporated in the ruling letter, a comparison of the transaction described therein to the actual transaction, and the satisfaction of any conditions on which the ruling was based.” See 19 C.F.R. § 177.9(b)(1). Thus, to the extent that modifications are made in the future and imported articles differ materially from the facts incorporated in the ruling letter or do not satisfy the conditions upon which this ruling letter is based, this ruling letter will not apply to that import transaction.

We have considered the parties’ remaining arguments and do not find them persuasive or necessary to the disposition of the question presented in the ruling request. See HQ H323308 (dated February 8, 2022) at 21.

In light of the information submitted during this inter partes proceeding, we find that Chamberlain as met the requirement of 19 C.F.R. Part 177 and that an administrative ruling on the question presented is appropriate.

IV. HOLDING

We find that Chamberlain has met its burden to show that the multi-patent frequency redesign and the power consumption redesign do not infringe claims 1, 4, 16, and 19 of the ‘935 patent, claims 18 and 24 of the ‘718 patent, and claim 17 of the ‘895 patent.

Thus, CBP’s position is that these articles are not subject to the Modified 1209 LEO.

The decision is limited to the specific facts set forth herein. If articles differ in any material way from the articles at issue described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. §§ 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2).


Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

CC: Mr. Bert C. Reiser
Latham & Watkins LLP
555 Eleventh Street, N.W.
Suite 1000
[email protected]; [email protected]