Full Opinion (html_with_citations)

  United States Court of Appeals
      for the Federal Circuit
                 ______________________

        THE CHAMBERLAIN GROUP, INC.,
                 Appellant

                            v.

   ONE WORLD TECHNOLOGIES, INC., DBA
TECHTRONIC INDUSTRIES POWER EQUIPMENT,
                  Appellee
           ______________________

                       2018-2112
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
00214.
                 ______________________

              Decided: December 17, 2019
                ______________________

     JOHN A. DRAGSETH, Fish & Richardson P.C., Minneap-
olis, MN, argued for appellant. Also represented by
BENJAMIN ELACQUA, Houston, TX; KATHERINE VIDAL,
MATTHEW R. MCCULLOUGH, MICHAEL RUECKHEIM, Winston
& Strawn LLP, Menlo Park, CA.

   JASON C. WHITE, Morgan, Lewis & Bockius LLP, Chi-
cago, IL, argued for appellee. Also represented by WILLIAM
R. PETERSON, Houston, TX; DION MICHAEL BREGMAN,
AHREN CHRISTIAN HSU-HOFFMAN, MICHAEL JOHN LYONS,
2                 THE CHAMBERLAIN GROUP, INC. v. ONE WORLD
                                      TECHNOLOGIES, INC.


ALEXANDER STEIN, Palo Alto, CA; JULIE S. GOLDEMBERG,
Philadelphia, PA.
                ______________________

    Before DYK, REYNA, and HUGHES, Circuit Judges.
HUGHES, Circuit Judge.
     This is a patent case involving garage door and gate
operator systems. The Chamberlain Group, Inc. appeals
the final written decision of the Patent Trial and Appeal
Board in an inter partes review of claims 18–25 of U.S. Pa-
tent No. 7,196,611, which found all challenged claims an-
ticipated. See One World Techs., Inc. v. Chamberlain
Group, Inc., No. IPR2017-00214 (P.T.A.B. May 15, 2018).
Because the Board’s anticipation findings are supported by
substantial evidence, we affirm.
                              I
                              A
     Chamberlain owns the ’611 patent entitled “Barrier
Movement Operator Human Interface Method and Appa-
ratus.” The ’611 patent is directed to improved methods of
human interaction with “barrier movement operators,”
such as garage door operator systems. ’611 patent, col. 1
ll. 6–14. The system includes “a motor for moving a barrier
between open and closed positions” and a controller that
selectively supplies power to the motor. Id. col. 1 ll. 9–12.
The controller “includes a programmed microprocessor,
[which] responds to user input signals” from a wall control
unit and a radio transmitter. Id. col. 1 ll. 64–66. The con-
troller also connects “to a plurality of input/output devices”
such as a rotary switch and indicator LEDs that “advise a
user of the status of particular controller functions.” Id.
col. 2 ll. 41–42, 52–53.
    Claims 18–25 of the ’611 patent are directed to an “in-
teractive learn mode” that “guide[s] a user through instal-
lation and learn mode actions.” Id. col. 4 ll. 13–14. During
THE CHAMBERLAIN GROUP, INC. v. ONE WORLD                  3
TECHNOLOGIES, INC.


the learn mode, the controller “determines the user activi-
ties or steps needed during the learn process” and guides
the user through those steps by flashing the indicator
LEDs. Id. col 4 ll. 17–19.
     The ’611 specification describes the example of using
the learn mode to set the garage door operator’s “max run
timer.” Id. col. 4 l. 45. The max run timer is the amount of
time for the door to move between its open and closed lim-
its, plus five to ten seconds. The system uses the timer to
determine whether the door has been moving for too long
without reaching its final open or closed position.
     The ’611 patent teaches the following steps for setting
the max run timer during the learn mode. First, the user
presses a button on the controller to enter learn mode.
Next, the controller identifies the proper beginning status
for the door and the steps the user must complete to set the
timer. Finally, the controller guides the user through the
identified steps by flashing the appropriate indicator LED
for each step. For example, if the step requires the user to
open the door, the controller will flash the open limit LED.
Once the user completes all the steps, the controller counts
the time for the door to travel from its closed limit to its
open limit, adds five to ten seconds, and records that value
as the max run timer.
    Independent claim 18, reproduced below, is illustrative
of the challenged claims:
   18. A method of assisting in the installation and
   maintenance of a barrier movement operator in-
   cluding a controller, comprising:
       activating a learn mode activity of the con-
       troller of the barrier movement operator
       which learning mode requires pre-deter-
       mined activities by a user;
4                 THE CHAMBERLAIN GROUP, INC. v. ONE WORLD
                                      TECHNOLOGIES, INC.


        first identifying by the controller the pre-
        sent status of the barrier movement opera-
        tor;
        second identifying by the controller, the ac-
        tivities to be completed by a user of the bar-
        rier movement operator; and
        responsive to the first and second identify-
        ing steps transmitting guidance signals to
        an annunciating unit for guidance of the
        user.
’611 patent, col. 6 ll. 25–38.
                                 B
    One World Technologies, Inc. petitioned for IPR of
claims 18–25 of the ’611 patent. One World’s petition as-
serted that claims 18–25 are anticipated under
35 U.S.C. § 102
(b) by
U.S. Patent No. 4,638,433
 (Schindler), and that
claims 23 and 24 are 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). 1 The Board in-
stituted review on all challenged claims on both asserted
grounds.
    Schindler is a U.S. Patent directed to a garage door op-
erator system. It teaches a mode that allows the user to
program the upper and lower limits for the garage door’s
movement. In this mode, Schindler’s controller flashes an
indicator LED to communicate which limit is being pro-
grammed to the user. Depending on which LED flashes,
the user must press and hold the corresponding switch—
“door open” for the upper limit or “door close” for the lower
limit—until the door reaches its limit position. To set the


    1   Chamberlain only challenges the Board’s findings
on the teachings of Schindler, so we need not address the
Board’s findings or analysis of LiftMaster.
THE CHAMBERLAIN GROUP, INC. v. ONE WORLD                      5
TECHNOLOGIES, INC.


second limit, the user must press a control switch button.
The controller then flashes the appropriate indicator LED
for the remaining limit, instructing the user to press and
hold the corresponding switch until the door reaches its
limit position. Finally, the controller stores the door’s max-
imum upper and minimum lower positions as the upper
and lower limits.
    One World’s petition argued that Schindler’s program
mode teaches every limitation of claims 18–25 of the ’611
patent. It argued that claim 18’s second identifying step,
that the controller identify “activities to be completed by a
user,” ’611 patent, col. 6 ll. 33–34, should be construed to
mean “the controller establishing which of the pre-deter-
mined activities a user must complete,” J.A. 86. The peti-
tion relied on Schindler’s disclosure that the controller
determines which limit is being programmed during the
program mode to teach that limitation.
    In its patent owner response, Chamberlain argued that
the second identifying step should be construed to require
identifying multiple activities. According to Chamberlain,
“Schindler clearly establishes that its controller identifies
a single activity; it either sets the ‘up’ limit, or it sets the
‘down’ limit.” J.A. 1200 (emphasis omitted).
    One World’s reply asserted that “Schindler unambigu-
ously teaches that multiple limit-setting activities are com-
pleted by a user during the program/ learn mode.”
J.A. 1467–68. It claimed that “when Schindler’s controller
makes a decision as to whether a user should start setting
an up limit or a down limit, it necessarily identifies multi-
ple activities.” J.A. 1471–72. One World also argued that
claim 18 lacks any timing limitation and does not require
identifying multiple activities at the same time.
    The Board held an oral hearing on January 18, 2018.
At that hearing, Chamberlain argued for the first time that
Schindler fails to anticipate claim 18’s final step—trans-
mitting guidance “responsive to the first and second
6                THE CHAMBERLAIN GROUP, INC. v. ONE WORLD
                                     TECHNOLOGIES, INC.


identifying steps.” ’611 patent, col. 6 l. 36. Chamberlain
explained that the “responsive step is responsive to the en-
tirety of the second identifying step having been per-
formed.” J.A. 1975. Thus, Chamberlain asserted that
claim 18 requires identifying multiple activities before
transmitting any guidance “responsive to” the identifica-
tion step. According to Chamberlain, Schindler only iden-
tifies a single activity before transmitting a guidance
signal for that single activity.
                             C
     The Board issued a final written decision finding
claims 18–25 anticipated by Schindler. 2 The Board agreed
with Chamberlain on claim construction, finding that
“claim 18 requires identifying at least two ‘pre-determined
activities’ and claim 21 requires determining at least two
‘actions.’” J.A. 11. 3 But the Board rejected Chamberlain’s
argument that Schindler only identifies a single activity.
It noted that “the user sets both the up limit and sets the
down limit” during Schindler’s learn mode, and it found


    2    The Board also found that claims 23 and 24 are ob-
vious over the combination of Schindler and LiftMaster.
Because we affirm the Board’s anticipation findings, we
need not address its obviousness findings.
    3    Chamberlain’s opening brief only addresses the
Board’s analysis and findings for claim 18, arguing that
“the Board centered all its analysis on claim 18, so a rever-
sal of the anticipation finding for claim 18 means reversal
for all other claims.” Appellant’s Br. 10. One World coun-
ters that independent claim 21 and its dependent
claims 22–25 are distinct from claim 18, noting that the
“responsive to” language is absent from those claims. Ap-
pellee’s Br. 30–31. One World asserts that Chamberlain
waived any challenge to the Board’s findings on claims 21–
25. Because we affirm the Board’s anticipation findings on
claim 18, we need not decide that issue here.
THE CHAMBERLAIN GROUP, INC. v. ONE WORLD                       7
TECHNOLOGIES, INC.


that Schindler’s “microprocessor identifies each of these as
activities to be completed by the user.” J.A. 23. The Board
explained that Chamberlain’s argument relied on the tim-
ing of Schindler’s steps “because the user in Schindler sets
each limit in sequence, rather than together at the same
time . . . .”
Id.
 Because no “language in this limitation or
the rest of the claim . . . requires the activities to be identi-
fied together or at the same time,” the Board found this
“single activity” argument unpersuasive. J.A. 24.
     The Board also rejected Chamberlain’s argument that
Schindler fails to teach the “responsive to” step of claim 18.
First, it found that Chamberlain waived this argument by
raising it for the first time at the oral hearing. The Board
also found the “responsive to” argument unpersuasive on
its merits. It reemphasized that “there is no timing re-
quirement in the claim as to when each of the multiple ac-
tivities needs to be identified.” J.A. 25. Thus, the Board
concluded that “Schindler’s disclosure of transmitting the
signals in sequence, one after the other in response to the
previously-completed steps of identifying the garage door
operator’s present status and activities to be completed”
teaches claim 18’s “responsive to” step. J.A. 26.
   Chamberlain now appeals. We have jurisdiction under
28 U.S.C. § 1295
(a)(4)(A).
                               II
    We review the Board’s ultimate claim construction de
novo and any underlying factual determinations involving
extrinsic evidence for substantial evidence. In re Cuozzo
Speed Techs., LLC,
793 F.3d 1268, 1280
 (Fed. Cir. 2015).
Anticipation is a question of fact, and we review the Board’s
findings thereon for substantial evidence. Kennametal,
Inc. v. Ingersoll Cutting Tool Co.,
780 F.3d 1376, 1381
 (Fed.
Cir. 2015). Substantial evidence is “such relevant evidence
as a reasonable mind might accept as adequate to support
a conclusion.” Consol. Edison Co. of N.Y. v. NLRB,
305 U.S. 197, 229
 (1938).
8                 THE CHAMBERLAIN GROUP, INC. v. ONE WORLD
                                      TECHNOLOGIES, INC.


     We review the Board’s application of its own procedural
rules for abuse of discretion. Ultratec, Inc. v. CaptionCall,
LLC,
872 F.3d 1267
, 1271–72 (Fed. Cir. 2017); see also In-
telligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
821 F.3d 1359
, 1369–70 (Fed. Cir. 2016). “The Board abuses its
discretion if the decision: (1) is clearly unreasonable, arbi-
trary, or fanciful; (2) is based on an erroneous conclusion of
law; (3) rests on clearly erroneous fact findings; or (4) in-
volves a record that contains no evidence on which the
Board could rationally base its decision.” Ultratec, Inc.,
872 F.3d at 1272
.
                              A
    We first address the Board’s finding that it need not
consider Chamberlain’s “responsive to” argument because
Chamberlain raised it for the first time at the oral hearing.
Chamberlain argues the Board’s waiver finding was erro-
neous because (1) its “responsive to” argument responded
to new arguments made in One World’s reply; and (2) its
“responsive to” argument was consistent with its position
throughout the IPR and was merely a clarification. We
agree with Chamberlain that the Board erred in finding
waiver here, but we do not agree that the Board’s error re-
quires vacatur of its anticipation findings.
     Chamberlain only relied on the “responsive to” step at
the oral hearing to respond to arguments first raised in
One World’s reply. In its petition, One World argued that
claim 18’s second identifying step requires “establishing
which of the pre-determined activities a user must com-
plete.” J.A. 86 (emphasis omitted). Chamberlain’s re-
sponse argued that One World’s construction suggested
that the controller need only identify a single activity,
while the claims require multiple activities. One World
maintained its claim construction position in its reply, and
it also responded to Chamberlain’s criticisms by arguing
for the first time that Schindler’s controller identifies mul-
tiple activities. One World also argued that claim 18 lacks
THE CHAMBERLAIN GROUP, INC. v. ONE WORLD                   9
TECHNOLOGIES, INC.


any timing limitation, so Schindler’s process of identifying
multiple activities and transmitting guidance sequentially,
rather than simultaneously, anticipates claim 18.
     At the oral hearing, Chamberlain explained that its ar-
guments regarding the “responsive to” step were clarifica-
tions of earlier arguments it raised. See J.A. 1992 (counsel
for Chamberlain explaining that “there was[,] we believe[,]
a late arising argument by opposing counsel that solicited
the need to get to this clarification” about the “responsive
to” step). Chamberlain clarified that in its view, claim 18
requires not only identifying multiple activities, but iden-
tifying multiple activities before transmitting any guidance
“responsive to” the identification step. That argument di-
rectly responded to One World’s position in its reply that
Schindler identifies multiple activities, and that the timing
of the identification is immaterial. We agree with Cham-
berlain that waiver is inappropriate in this situation, as
Chamberlain was merely clarifying its earlier position, not
raising a new issue.
    “‘A patent owner in [Chamberlain’s] position is un-
doubtedly entitled to notice of and a fair opportunity to
meet the grounds of rejection,’ based on due-process and
APA guarantees.” In re NuVasive, Inc.,
841 F.3d 966, 971
(Fed. Cir. 2016) (quoting Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1080
 (Fed. Cir. 2015)). When a petitioner raises
new arguments (in the sense of new issues) in its peti-
tioner’s reply, 4 the patent owner is entitled to an oppor-
tunity to respond to those arguments.            But here,
Chamberlain did not raise a new issue at the oral hearing
in response to One World’s reply. It merely clarified its


    4    Chamberlain argued before the Board that the ar-
guments in One World’s reply exceeded the proper scope of
a reply under
37 C.F.R. § 42.23
(b). Chamberlain does not
raise that challenge on appeal, however, so we need not de-
cide it here.
10               THE CHAMBERLAIN GROUP, INC. v. ONE WORLD
                                     TECHNOLOGIES, INC.


previous position. Thus, we conclude that the Board erred
in finding Chamberlain waived its “responsive to” argu-
ment.
     PTO guidelines provide that “[n]o new evidence or ar-
guments may be presented at the oral argument.” Office
Patent Trial Practice Guide,
77 Fed. Reg. 48,756
, 48,768
(Aug. 14, 2012). We understand the reference to “argu-
ments” to refer to new issues. Parties are not barred from
elaborating on their arguments on issues previously raised.
Interactive Gift Express, Inc. v. CompuServe Inc.,
256 F.3d 1323, 1347
 (Fed. Cir. 2001). We do not believe Chamber-
lain introduced new issues or evidence here. Chamber-
lain’s arguments at the oral hearing were responsive to
One World’s reply and tracked the arguments in its re-
sponse. Throughout the IPR, Chamberlain maintained
that Schindler fails to anticipate because it does not iden-
tify multiple activities in the manner required by claim 18.
Chamberlain did not introduce new evidence at the oral
hearing; it merely pointed to different portions of the claim
language to clarify its claim construction position. Thus,
Chamberlain’s reliance on the “responsive to” language
was not a new argument for patentability, but a clarifica-
tion of its prior position in response to the arguments
raised in One World’s reply.
    This case is distinguishable from Dell Inc. v. Acceleron,
LLC, where we noted that “the Board was obligated to dis-
miss Dell’s untimely argument . . . raised for the first time
during oral argument.”
884 F.3d 1364, 1369
 (Fed. Cir.
2018). There, the petitioner, Dell, relying on new evidence,
raised a new argument for unpatentability based on a
broader claim construction for the first time at the oral
hearing.
Id. at 1367
. We vacated the Board’s decision that
relied on those new arguments without providing the pa-
tent owner an opportunity to respond.
Id. at 1368
. On re-
mand, the Board declined to consider Dell’s new arguments
rather than provide the patent owner with an opportunity
to respond.
Id.
 Dell appealed that decision, and we
THE CHAMBERLAIN GROUP, INC. v. ONE WORLD                    11
TECHNOLOGIES, INC.


affirmed.
Id. at 1369
. Dell is quite unlike this case—the
new argument was essentially a new issue.
                              B
     We now address the Board’s finding that Schindler an-
ticipates claim 18 of the ’611 patent, even considering
Chamberlain’s “responsive to” argument. We conclude
that the Board’s finding is supported by substantial evi-
dence.
     We agree with the Board that nothing in claim 18 “re-
quires the activities to be identified together or at the same
time.” J.A. 24. Chamberlain’s own expert, Dr. Davis, tes-
tified that claim 18 “requires identifying multiple activities
by the controller and is silent on any timing requirement.”
J.A. 1619. Given the absence of any timing limitation, the
Board reasonably found that “Schindler’s disclosure of
transmitting the signals in sequence, one after the other in
response to the previously-completed steps of identifying
the garage door operator’s present status and activities to
be completed” teaches the “responsive to” step. J.A. 26.
Thus, the Board’s finding that Schindler anticipates
claim 18 of the ’611 patent is supported by substantial evi-
dence, so we affirm.
                              III
     We have considered the parties’ remaining arguments
and find them unpersuasive. We conclude that the Board
erred in finding that Chamberlain waived its “responsive
to” argument by raising it for the first time at the oral hear-
ing. But we agree with the Board that Chamberlain’s “re-
sponsive to” argument is unpersuasive on its merits. We
thus conclude that the Board’s finding that Schindler an-
ticipates claim 18 of the ’611 patent is supported by sub-
stantial evidence. For that reason, we affirm.
                        AFFIRMED