In The Chamberlain Group, Inc. v. One World Techs., Inc., Case 18-2112 (Fed. Cir. Dec. 17, 2019), the Federal Circuit held the USPTO erred in determining that Chamberlain raised a new argument during the Board’s final hearing. There, Chamberlain argued that the prior art did not anticipate certain claims of the patent. The Federal Circuit explained that “Chamberlain was merely clarifying its earlier position” in response to One World’s reply brief and “not raising a new issue.” The Court, nevertheless, affirmed the Board’s decision canceling the challenged claims as anticipated by the prior art, noting that substantial evidence supported the finding.
Chamberlain’s U.S. Patent No. 7,196,611 was directed to improved methods of human interaction with “barrier movement operators,” such as garage door operator systems. In its IPR petition, One World asserted that claims 18–25 were anticipated under 35 U.S.C. § 102(b) by U.S. Patent No. 4,638,433 (Schindler), and that claims 23 and 24 were obvious under 35 U.S.C. § 103(a) over the combination of Schindler and an owner’s manual for an industrial duty door operator (LiftMaster). The Board instituted review on all challenged claims on both asserted grounds.
The parties disputed whether a claimed step required identifying one, or more than one, pre-determined activities to be completed by a user. Chamberlain argued in its patent owner response that the claims required identification of multiple activities, and asserted that One World’s construction improperly suggested that the controller in the prior art Schindler reference need only identify a single activity. One World reiterated its claim construction position in its reply, and it also responded to Chamberlain’s criticisms by arguing that Schindler’s controller nevertheless identified multiple activities.
At the Board’s final hearing, Chamberlain argued for the first time that Schindler failed to anticipate because it lacked another claim element requiring the transmission of guidance “responsive to the first and second identifying steps.” Chamberlain explained that the claimed transmission is responsive to the entirety of the two identification steps, requiring the identification of more than one activity before “responsive” guidance was transmitted. According to Chamberlain, Schindler only identifies a single activity before transmitting a guidance signal.
The Board’s final written decision rejected Chamberlain’s argument that Schindler only identifies a single activity. Thus, the Board found that claims 18–25 of the ’611 patent were anticipated by Schindler. The Board then added that Chamberlain waived its “responsive to” argument by raising it for the first time at the final hearing. Further, the Board found the argument unpersuasive on its merits.
On appeal, Chamberlain argued the Board’s waiver finding was erroneous because (1) its “responsive to” argument responded to new arguments One World first made in its reply; and (2) its “responsive to” argument was consistent with its position throughout the IPR and was merely a clarification. The Court agreed with the former, ruling that the Board erred in finding waiver. However, the Court nevertheless found that the Board’s error did not require that its anticipation findings be vacated. Consequently, the Court stated that the Board’s findings were supported by substantial evidence.
Chamberlain illustrates how a patent owner is entitled to an opportunity to respond to arguments in a petitioner’s reply. However, it also acts as a reminder of the limitations set on those responsive arguments, and the deference the Federal Circuit will give to the Board when substantial evidence supports its ruling.