PTAB

IPR2022-00842

Chamberlain Group LLC v. Overhead Door Corp

Log In
Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Programming of Paired Authorization Codes in Wireless Transmitter and Barrier Operator Prior to Use by End User
  • Brief Description: The ’120 patent discloses methods for pre-programming unique authorization codes from wireless transmitters into a barrier operator (e.g., a garage door opener) prior to delivery to the end user, such as at the factory. This process is intended to avoid common end-user confusion and errors associated with pairing the devices after installation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sommer and Marchetto - Claims 1, 4, 10, 11, and 13 are obvious over Sommer in view of Marchetto.

  • Prior Art Relied Upon: Sommer (Application # 20060176148) and Marchetto (Application # 20090251280).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sommer taught a barrier operator system where transmitters are programmed to a receiver using a "teach-in mode" at the factory level, prior to delivery to the end user. This addresses the core pre-programming concept of the challenged claims. Marchetto taught the use of an external, wireless programming unit to update or transmit recognition codes to a receiver. Petitioner asserted that the combination involved using Marchetto's external programming device to wirelessly transmit the authorization codes to Sommer's receiver during the factory "teach-in" process, thus meeting limitations such as transmitting the code from a transmitter "external to the barrier opening system."
    • Motivation to Combine: A POSITA would combine Sommer and Marchetto to improve manufacturing efficiency and reduce costs. Using Marchetto's external programming device would automate the pairing process, alleviating the need for a factory worker to manually locate, handle, and actuate each individual consumer transmitter to program the receiver, as implied by Sommer. This automation was a known method for reducing handling time and labor costs in manufacturing.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination. Both references describe similar mechanisms for programming barrier operators, and using an external programmer (Marchetto) to input codes into a learning receiver (Sommer) was a straightforward application of known technologies to achieve a predictable result.

Ground 2: Obviousness over Fitzgibbon and Romine - Claims 1-4, 10, 11, and 13 are obvious over Fitzgibbon in view of Romine.

  • Prior Art Relied Upon: Fitzgibbon (Patent 5,751,224) and Romine (Patent 8,639,240).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Fitzgibbon disclosed a movable barrier operator with a "learn mode" that can be enabled to store codes from a hand-held transmitter. This established the fundamental system of a barrier operator learning codes from associated transmitters. Romine taught techniques for wirelessly programming, testing, and configuring devices during the manufacturing process using a "tester/controller." Petitioner argued that the combination involved performing Fitzgibbon's "learn mode" pairing process during manufacturing, using Romine's external tester/controller to wirelessly place the operator in learn mode and transmit the transmitter codes to it before delivery to the end user.
    • Motivation to Combine: The primary motivation was to increase end-user satisfaction by delivering a system that is functional "right out of the box," thereby alleviating the need for the consumer to perform the programming. This would avoid potential user error and troubleshooting. A secondary motivation, similar to Ground 1, was the reduction in manufacturing handling and associated costs by using an efficient, external programming device (Romine) rather than manual actuation of each transmitter (Fitzgibbon).
    • Expectation of Success: A POSITA would expect this combination to succeed. Applying Romine's well-known manufacturing-line programming techniques to Fitzgibbon's conventional garage door operator system was a predictable implementation of established engineering principles to improve a known system.

  • Additional Grounds: Petitioner asserted additional obviousness challenges over Sommer and Marchetto in view of Thomas (Patent 8,042,140) and over Fitzgibbon and Romine in view of Thomas for claims 5, 6, 8, 14, 15, and 17. These grounds argued that adding Thomas, which taught printing unique identifiers on labels or stickers for wireless devices, rendered obvious the claims directed to configuring and affixing an "identifying device" (e.g., a label with the authorization code) to the transmitters.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court litigation was in a very early stage, as the case had only recently been transferred and no scheduling order or trial date had been set. Petitioner contended that a Final Written Decision in the IPR would likely issue before any potential trial. Furthermore, Petitioner asserted that the IPR raises unique issues and challenges a broader set of claims than the single claim asserted in the district court, making institution efficient for the overall system.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 8, 10, 11, 13-15, and 17 of the ’120 patent as unpatentable.