The Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd

United States Court of Appeals

for the Federal Circuit

______________________

THE CHAMBERLAIN GROUP, INC.,

Plaintiff-Appellee

v.

TECHTRONIC INDUSTRIES CO., TECHTRONIC

INDUSTRIES NORTH AMERICA, INC., ONE

WORLD TECHNOLOGIES, INC., OWT

INDUSTRIES, INC., RYOBI TECHNOLOGIES, INC.,

Defendants-Appellants

ET TECHNOLOGY (WUXI) CO.,

Defendant

______________________

2018-2103, 2018-2228

______________________

Appeals from the United States District Court for the

Northern District of Illinois in No. 1:16-cv-06097, Senior

Judge Harry D. Leinenweber.

______________________

Decided: August 21, 2019

______________________

JUANITA ROSE BROOKS, Fish & Richardson, PC, San Di-

ego, CA, argued for plaintiff-appellee. Also represented by

MARIA ELENA STITELER, Minneapolis, MN; BENJAMIN

ELACQUA, Houston, TX; STEFFEN NATHANAEL JOHNSON,

Wilson Sonsini Goodrich & Rosati, Washington, DC;

KATHERINE VIDAL, MATTHEW R. MCCULLOUGH, MICHAEL

2 CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO.

LTD.

RUECKHEIM, Winston & Strawn LLP, Menlo Park, CA.

JASON C. WHITE, Morgan, Lewis & Bockius LLP, Chi-

cago, IL, argued for defendants-appellants. Also repre-

sented by MICHAEL J. ABERNATHY, SANJAY K. MURTHY,

NICHOLAS A. RESTAURI; JULIE S. GOLDEMBERG, Philadel-

phia, PA; WILLIAM R. PETERSON, Houston, TX; SEAN C.

CUNNINGHAM, ERIN GIBSON, STANLEY JOSEPH PANIKOWSKI,

III, DLA Piper LLP (US), San Diego, CA.

______________________

Before LOURIE, O’MALLEY, and CHEN, Circuit Judges.

CHEN, Circuit Judge.

Techtronic Industries Co. Ltd., Techtronic Industries

North America, Inc., One World Technologies, Inc., OWT

Industries, Inc., and Ryobi Technologies, Inc. (collectively,

TTI) appeal from the opinion and order of the United States

District Court for the Northern District of Illinois denying

TTI’s motion for judgment as a matter of law (JMOL) and

granting Chamberlain Group, Inc.’s (CGI) motions for en-

hanced damages and attorney fees. TTI also appeals the

jury’s verdict with respect to infringement and validity.

We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Because we conclude that claims 1, 5, and 15 of CGI’s

U.S. Patent No. 7,224,275 (’275 patent) are directed to an

abstract idea and therefore patent-ineligible, we reverse

the district court’s JMOL decision with respect to the ’275

patent on 35 U.S.C. § 101 grounds. We affirm the jury’s

verdict with respect to its finding of no anticipation of

claims 14, 17, and 18 of CGI’s U.S. Patent No. 7,635,966

(’966 patent) by U.S. Patent No. 6,484,784 (Weik). Accord-

ingly, we vacate the district court’s injunction and its

awards of enhanced damages and attorney fees, and re-

mand to the district court for reconsideration of enhanced

damages and attorney fees with respect to only the ’966 pa-

tent.

CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO. 3

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A. THE ’275 PATENT

The ’275 patent relates to an apparatus and method for

communicating information about the status of a movable

barrier, for example, a garage door. The ’275 patent ex-

plains that, “[o]ver time, the capabilities of and features

supported by . . . movable barrier operators . . . expanded

to include actions other than merely opening and closing a

corresponding movable barrier.” ’275 patent at col. 1, ll.

31–34. Some movable barrier operators could provide am-

bient lighting, for example, or sense the presence of an ob-

stacle in the path of the movable barrier and take an

appropriate action. Id. at col. 1, ll. 34–38. The ’275 patent

explains that the movable barrier operator may communi-

cate information relating to the movable barrier’s status

with respect to these actions with various peripheral de-

vices, including sensors, alarms, displays, lights, and so

forth. Id. at col. 1, ll. 54–61. Rather than communicating

this information over a physical signaling path, the as-

serted claims recite communicating it wirelessly. Id. at col.

1, l. 64 – col. 2, l. 16. The specification describes wireless

transmitters as being “well understood in the art.” Id. at

col. 3, l. 54 – col. 4, l. 4.

The parties do not contest the district court’s treatment

of claim 1 as representative. Claim 1 recites:

1. A movable barrier operator comprising:

a controller having a plurality of potential opera-

tional status conditions defined, at least in part, by

a plurality of operating states;

a movable barrier interface that is operably cou-

pled to the controller;

a wireless status condition data transmitter that is

operably coupled to the controller, wherein the

wireless status condition data transmitter trans-

mits a status condition signal that:

4 CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO.

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corresponds to a present operational status

condition defined, at least in part, by at

least two operating states from the plural-

ity of operating states; and

comprises an identifier that is at least rel-

atively unique to the movable barrier oper-

ator, such that the status condition signal

substantially uniquely identifies the mova-

ble barrier operator.

Id. at claim 1.

TTI moved for JMOL that the asserted claims of the

’275 patent are directed to patent-ineligible subject matter

under § 101. The district court denied TTI’s motion, disa-

greeing with TTI’s allegation that the asserted claims are

directed to the abstract idea of wireless transmission of

content. See J.A. 98. The district court determined that,

“[h]ere, the ’275 patent claims are not directed to the trans-

mission of data, but to garage door openers that wirelessly

transmit status information.” J.A. 99 (internal quotation

marks omitted). The district court further determined that

the asserted claims are directed to “a particular improve-

ment over prior art which uses a particular manner of

sending and experiencing data,” which it deemed patent-

eligible in light of this court’s decision in Core Wireless Li-

censing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356,

1361 (Fed. Cir. 2018), and various other decisions. J.A.

103–05. Because it concluded that the asserted claims

were not directed to any abstract idea, the court did not

reach step two of Alice Corp. Pty. Ltd. v. CLS Bank Int’l,

573 U.S. 208, 218 (2014). J.A. 106.

Patent eligibility under § 101 is a question of law that

may contain underlying issues of fact. Interval Licensing

LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018) (cit-

ing Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir.

2018)). We review an ultimate conclusion on patent eligi-

bility de novo. See id.

CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO. 5

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The Supreme Court has deemed certain categories of

subject matter, including abstract ideas, ineligible for pa-

tent protection under § 101. Mayo Collaborative Servs. v.

Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). “The ‘ab-

stract ideas’ category embodies the longstanding rule that

an idea of itself is not patentable.” Alice Corp., 573 U.S. at

218 (internal brackets and quotation marks omitted). To

determine whether claimed subject matter is patent-eligi-

ble, we apply the two-step framework set forth in Alice. Id.

First, we “determine whether the claims at issue are di-

rected to a patent-ineligible concept,” such as an abstract

idea. Id. Second, if so, we “examine the elements of the

claim to determine whether it contains an ‘inventive con-

cept’ sufficient to ‘transform’ the claimed abstract idea into

a patent-eligible application.” Id. at 221 (quoting Mayo,

566 U.S. at 72, 80).

1. Step One

At step one, we “look at the focus of the claimed ad-

vance over the prior art to determine if the claim’s charac-

ter as a whole is directed to excluded subject matter.”

Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d

1253, 1257 (Fed. Cir. 2016) (internal quotation marks omit-

ted). “[T]he specification [is] helpful in illuminating what

a claim is ‘directed to.’” ChargePoint, Inc. v. SemaConnect,

Inc., 920 F.3d 759, 766 (Fed. Cir. 2019). “But while the

specification may help illuminate the true focus of a claim,

when analyzing patent eligibility, reliance on the specifica-

tion must always yield to the claim language in identifying

that focus.” Id.

We conclude that claim 1 is directed to wirelessly com-

municating status information about a system. See, e.g.,

’275 patent at claim 1 (reciting that “the wireless status

condition data transmitter transmits a status condition

signal that: corresponds to a present operational status

condition defined, at least in part, by at least two operating

states”). The specification supports this conclusion. The

6 CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO.

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only described difference between the prior art movable

barrier operator systems and the claimed movable barrier

operator system is that the status information about the

system is communicated wirelessly, in order to overcome

certain undesirable disadvantages of systems using physi-

cal signal paths—additional cost, exposed wiring, and in-

creased installation time. See id. at col. 1, l. 49 – col. 2, l.

16, col. 3, ll. 16–26.

Wirelessly communicating status information about a

system is similar to abstract ideas we have found in our

previous cases. See Amdocs (Israel) Ltd. v. Openet Telecom,

Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that

courts typically “examine earlier cases in which a similar

or parallel descriptive nature can be seen” as part of their

abstract idea analysis). In DIRECTV, we found claims re-

citing the function of wirelessly communicating regional

broadcast content to an out-of-region recipient to be di-

rected to the abstract idea of “providing out-of-region ac-

cess to regional broadcast content.” DIRECTV, 838 F.3d at

1258. In Affinity Labs of Texas, LLC v. Amazon.com Inc.,

838 F.3d 1266 (Fed. Cir. 2016), we found claims reciting

media systems that deliver streaming content to a

handheld wireless electronic device to be directed to the ab-

stract idea of “delivering user-selected media content to

portable devices.” Id. at 1269. As such, the broad concept

of communicating information wirelessly, without more, is

an abstract idea.

This case is unlike those in which we have determined

that the claims were not directed to abstract ideas. In Tha-

les Visionix Inc. v. United States, 850 F.3d 1343, 1344–45

(Fed. Cir. 2017), to which CGI likens the asserted claims,

the claimed advance over the prior art related to a new,

specific way in which sensors measured inertial changes.

See id. at 1345. In the prior art, the measurement occurred

with respect to the earth, but, in the asserted claims,

“[w]hen the moving platform accelerates or turns, the iner-

tial sensor on the platform directly measures the

CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO. 7

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gravitational effect in the moving reference frame and the

system therefore requires fewer measured inputs (and

fewer points of potential error) to determine the position

and orientation of the tracked object.” Id. at 1345. “By

changing the reference frame, one [could] track the position

and orientation of the object within the moving platform

without input from a vehicle attitude reference system or

calculating orientation or position of the moving platform

itself.” Id. This created multiple advantages over prior art

systems, including increased accuracy and independent op-

eration. Id. The asserted claims here are not limited to a

specific implementation of a technological improvement to

communication systems. Rather, they simply recite a sys-

tem that wirelessly communicates status information.

Nor do the asserted claims “focus on a specific means

or method that improves the relevant technology,” McRO,

Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314

(Fed. Cir. 2016), or “effect an improvement in any other

technology or technical field,” DDR Holdings, LLC v. Ho-

tels.com, L.P., 773 F.3d 1245, 1265 (Fed. Cir. 2014) (quot-

ing Alice, 573 U.S. at 225). The specification admits that

the act of transmitting data wirelessly is “well understood

in the art,” and no other changes to the generically claimed

movable barrier operator are recited in the asserted claims

or described in the specification. ’275 patent at col. 3, ll.

54–60. Moreover, that the claimed invention transmits

data wirelessly and therefore does not rely on a wired path

is not itself a technological improvement, but rather simply

a feature of wireless communication, which the specifica-

tion explains was already a basic, conventional form of

communication.

The district court likened this case to Core Wireless. In

Core Wireless, we determined that claims drawn to im-

proved interfaces for electronic devices with small screens

that allowed users to more quickly access desired data

stored in, and functions of applications included in, the

electronic devices were not drawn to the abstract idea of an

8 CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO.

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index. Core Wireless, 880 F.3d at 1359, 1362. We con-

cluded that the claims recited “a specific improvement over

prior systems, resulting in an improved user interface for

electronic devices.” Id. at 1363. The same is not true here,

where the claims merely recite a system that communi-

cates status information, in the same “well understood”

manner that wireless transmissions have always occurred.

See ’275 patent at col. 3, ll. 54–60. Unlike Core Wireless,

no specific manner of performing the abstract idea is re-

cited in these claims.

CGI alleges that its claims are not directed to an ab-

stract idea, but instead to a novel combination of its prior

art movable barrier operator with a transmitter that is

wireless. The district court’s analysis mirrored CGI’s ap-

proach. See J.A. 99–105. But “[t]he Supreme Court and

this court have repeatedly made clear that merely limiting

the field of use of the abstract idea to a particular existing

technological environment does not render the claims any

less abstract.” DIRECTV, 838 F.3d at 1259.

Last, CGI’s reliance on the asserted claims being di-

rected to “physical real world manifestation[s] of an im-

proved machine” is misplaced. See Appellee’s Op. Br. at 22.

Without more, the mere physical nature of CGI’s claim el-

ements (e.g., controller, interface, and wireless data trans-

mitter) is not enough to save the claims from abstractness,

where the claimed advance is directed to the wireless com-

munication of status information using off-the-shelf tech-

nology for its intended purpose. See In re Marco Guldenaar

Holding B.V., 911 F.3d 1157, 1161 (Fed. Cir. 2018).

Because we find that the asserted claims are drawn to

the abstract idea of wirelessly communicating status infor-

mation about a system, we proceed to step two of the anal-

ysis.

CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO. 9

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2. Step Two

“The ‘inventive concept’ step requires us to look with

more specificity at what the claim elements add, in order

to determine whether they identify an ‘inventive concept’

in the application of the ineligible subject matter to which

the claim is directed.” DIRECTV, 838 F.3d at 1258 (inter-

nal quotation marks omitted). “Simply appending conven-

tional steps, specified at a high level of generality, [i]s not

enough to supply an inventive concept.” Alice, 573 U.S. at

222 (internal quotation marks and emphasis omitted).

The specification describes each individual element of

the asserted claims—including the controller, the inter-

face, and the wireless data transmitter—as “well under-

stood in the art.” ’275 patent at col. 3, l. 27 – col. 4, l. 4.

These conventional components, all recited in a generic

way, are no better equipped to save the claim from ab-

stractness than were, for example, the conventional com-

puter used in Alice or the scanner used in Content

Extraction & Transmission LLC v. Wells Fargo Bank, Na-

tional Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014).

CGI argues that the ordered combination of the as-

serted claims’ elements provides the inventive concept be-

cause “there is no evidence in the record” that “a new type

of movable barrier operator that includes an integrated

controller and a wireless transmitter to transmit a status

signal” was “well-understood, routine and conventional to

a skilled artisan.” Appellee’s Op. Br. at 28 (citing Berk-

heimer, 881 F.3d at 1368). CGI misunderstands our case

law. The appropriate question is not whether the entire

claim as a whole was “well-understood, routine [and] con-

ventional” to a skilled artisan (i.e., whether it lacks nov-

elty), but rather, there are two distinct questions: (1)

whether each of “the [elements] in the claimed [product]

(apart from the natural laws themselves) involve well-un-

derstood, routine, conventional activity previously engaged

in by researchers in the field,” Mayo, 566 U.S. at 73, and

10 CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO.

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(2) whether all of the steps “as an ordered combination

add[] nothing to the laws of nature that is not already pre-

sent when the steps are considered separately,” id. at 79

(emphasis added). In other words, beyond the idea of wire-

lessly communicating status information about a movable

barrier operator, what elements in the claim may be re-

garded as the “inventive concept”? This analysis applies to

both system and method claims. Alice, 573 U.S. at 226.

As we explained above, the specification makes clear

that transmitting information wirelessly was conventional

at the time the patent was filed and could be performed

with off-the-shelf technology. ’275 patent at col. 3, l. 54 –

col. 4, l. 4. Yet wireless transmission is the only aspect of

the claims that CGI points to as allegedly inventive over

the prior art. See, e.g., Appellee’s Op. Br. at 31 (“[T]he

’275’s claims, like Bascom’s, are patent-eligible because

they ‘carve out’ a specific implementation (a specific type of

operator with an integrated controller and wireless trans-

mitter to transmit status information) that provide [sic]

greater flexibility than the prior art physical interfaces ap-

proach.”). Wireless communication cannot be an inventive

concept here, because it is the abstract idea that the claims

are directed to. See Interval Licensing, 896 F.3d at 1347.

Because CGI does not point to any inventive concept pre-

sent in the ordered combination of elements beyond the act

of wireless communication, we find that no inventive con-

cept exists in the asserted claims sufficient to transform

the abstract idea of communicating status information

about a system into a patent-eligible application of that

idea.

We therefore reverse the district court’s opinion and or-

der to the extent that it found the asserted claims of the

’275 patent eligible for patent protection under § 101.

B. ’966 PATENT

The ’966 patent relates to a rechargeable battery

backup system for a barrier movement operator. In the

CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO. 11

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event of a power outage, many garage door openers that

are powered via electrical outlet cannot open and close the

garage door, so, consequently, the garage door must be

opened and closed manually. ’966 patent at col. 1, ll. 25–

27. It is therefore useful for the barrier movement operator

to have a rechargeable battery to be used as a backup, but

it is also inefficient to use separate, distinct rechargeable

batteries for multiple devices, for example, with cordless

power tools. Id. at col. 1, ll. 31–50. Accordingly, the inven-

tion of the ’966 patent includes the ability for the barrier

movement operator to be powered by a main power source,

and the operator also possesses a battery charging system

that charges a rechargeable battery capable of being used

with both the barrier movement operator and other electri-

cally powered equipment that may be stored in a garage.

Id. at claim 1.

The jury found, inter alia, that the asserted claims of

the ’966 patent were not anticipated by Weik. J.A. 90. TTI

moved for JMOL that Weik anticipates the asserted claims,

which the district court denied. J.A. 134. The district court

explained, quoting CGI’s expert, that Weik “teaches a mo-

tor-operated door and discloses two different embodiments,

one of which has a portable battery and no charger and one

of which has a nonportable battery but does have a

charger.” J.A. 131 (internal quotation marks omitted). TTI

argued that a particular combination of these two embodi-

ments (a portable battery with a charger) anticipates the

asserted claims of the ’966 patent. Id. Citing Microsoft

Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017),

the district court stated that “[t]hough combinations of ad-

jacently disclosed embodiments may be considered under

the obviousness analysis, the same is not true for anticipa-

tion” and concluded that any testimony by TTI’s expert ex-

plaining an anticipation theory relying on the combination

of the two embodiments was improper as a matter of law.

J.A. 132–33.

12 CHAMBERLAIN GROUP, INC. v. TECHTRONIC INDUSTRIES CO.

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To the extent the district court suggested a blanket

rule that two embodiments disclosed in a reference can

never be considered in combination to make a finding of

anticipation, this was incorrect. In Kennametal, Inc. v.

Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015),

we explained that “a reference can anticipate a claim even

if it ‘d[oes] not expressly spell out’ all the limitations ar-

ranged or combined as in the claim, if a person of skill in

the art, reading the reference, would ‘at once envisage’ the

claimed arrangement or combination.” Id. at 1381. Thus,

even when a reference discloses elements in different loca-

tions in the disclosure, the relevant question is whether the

reference is sufficiently clear in disclosing the combinabil-

ity of those elements such that a skilled artisan would “at

once envisage” the claimed combination. However, because

TTI does not allege that the jury ever received the district

court’s recitation of the law from the JMOL, and because

TTI does not appeal any jury instructions containing the

court’s language, we find any error by the district court to

be harmless under the circumstances.

“Anticipation is a factual question, and a jury verdict

regarding anticipation is reviewed after trial for substan-

tial evidence.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d

1332, 1343 (Fed. Cir. 2003). Because Weik’s disclosure as

to the possible combinability of the embodiments in the

way TTI urges is less than clear, we agree with the district

court that TTI has not met its burden of showing that the

jury’s no-anticipation verdict was not supported by sub-

stantial evidence. Accordingly, we affirm the verdict.

C. TTI’S REQUESTS FOR A NEW TRIAL

TTI moved at the district court for a new trial based on

two grounds: (1) because the district court allegedly erred

in denying TTI’s motion to transfer venue after the Su-

preme Court’s TC Heartland decision, and (2) because the

district court allegedly erred in admitting into the record

the Patent Trial and Appeal Board’s (Board) non-

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institution decision with respect to TTI’s petition for inter

partes review of the ’966 patent as evidence. The district

court denied TTI’s motion. We decline to reverse on either

ground.

“In reviewing a district court’s disposition of . . . a new

trial motion, this court applies the law of the regional cir-

cuit where the district court sits,” here, the Seventh Cir-

cuit. Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629,

638 (Fed. Cir. 2011). The Seventh Circuit “give[s] great

deference to a district court’s rulings on motions to transfer

venue.” In re Chi., Milwaukee, St. Paul & Pac. R.R., 974

F.2d 775, 789 (7th Cir. 1992). “Indeed, [the appellate] court

can only reverse a district court’s determinations in this

regard if [it] find[s] a ‘clear abuse of discretion.’” Id. (quot-

ing Cote v. Wadel, 796 F.2d 981, 985 (7th Cir. 1986)). The

Seventh Circuit’s “standard of review in determining

whether the district court committed reversible error in ei-

ther the admission or exclusion of evidence is abuse of dis-

cretion.” Geitz v. Lindsey, 893 F.2d 148, 150 (7th Cir.

1990).

We do not find that the district court abused its discre-

tion on either ground. As we explained in In re Micron

Technology, Inc., 875 F.3d 1091 (Fed. Cir. 2017), “Congress

has provided express statutory confirmation of judicial au-

thority to consider the timeliness and adequacy of a venue

objection: 28 U.S.C. § 1406(b) provides that ‘[n]othing in

this chapter shall impair the jurisdiction of a district court

of any matter involving a party who does not interpose

timely and sufficient objection to the venue.’” Id. at 1101.

“[D]istrict courts have authority to find forfeiture of a

venue objection,” for example where “venue objections

based on TC Heartland . . . were presented close to trial.”

Id. at 1101–02. In Micron, we pointed to cases—including

for a writ of mandamus previously filed to our court by TTI

that stemmed from the same underlying proceeding as this

appeal—where we had previously denied mandamus and

found no clear abuse of discretion where the motion to

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transfer venue was filed two to three months before trial.

Id. at 1102 & n.4. TTI waited almost thirty days after TC

Heartland and two months before trial to file a motion to

transfer venue. The district court did not abuse its discre-

tion in denying TTI’s motion to transfer venue under the

circumstances here.

Nor did the district court abuse its discretion in admit-

ting the Board’s non-institution decision. TTI requested

and the district court gave a limiting instruction to the jury

explaining that the legal standards applied by the Patent

Office and the legal standards the jury must apply may dif-

fer, for example the application of different claim construc-

tions. See J.A. 148–49. The Supreme Court has previously

approved of limiting instructions that direct juries to con-

sider differences between proceedings at the Patent Office

and in front of the district court. See, e.g., Microsoft Corp.

v. I4I Ltd. P’ship, 564 U.S. 91, 111 (2011) (“When war-

ranted, the jury may be instructed to consider that it has

heard evidence that the PTO had no opportunity to evalu-

ate before granting the patent. When it is disputed

whether the evidence presented to the jury differs from

that evaluated by the PTO, the jury may be instructed to

consider that question.”). But district courts should still

exercise caution when admitting evidence of a denial of in-

stitution because it may be confusing to the jury and prej-

udicial. We have often affirmed district courts in similar

situations where the district courts exclude evidence of a

non-final determination from ongoing proceedings at the

Patent Office. See SSL Servs., LLC v. Citrix Sys., Inc., 769

F.3d 1073, 1093 (Fed. Cir. 2014); Callaway Golf Co. v.

Acushnet Co., 576 F.3d 1331, 1342–43 (Fed. Cir. 2009). Alt-

hough ongoing proceedings may be prejudicial for different

reasons, such as being non-final, the concerns of confusing

the jury because the Patent Office uses different standards

from the district courts remains the same. Accordingly,

both ongoing proceedings and denials of institution provide

limited probative value that is likely to be outweighed by

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the prejudice to the opposing party, and limiting instruc-

tions to the jury do not necessarily cure the prejudice.

However, under the circumstances of this case, TTI has not

shown an abuse of discretion. We affirm the district court’s

denial of TTI’s motion for a new trial.

D. ENHANCED DAMAGES AND ATTORNEY FEES

Much of the district court’s analysis awarding TTI en-

hanced damages and attorney fees was focused on activi-

ties relating to the ’275 patent. Because we conclude that

the asserted claims of the ’275 patent are invalid under

§ 101 but affirm the jury’s verdict with respect to the ’966

patent, we vacate the district court’s enhanced damages

and attorney fees award and remand for the court to recon-

sider whether the award is warranted with respect to only

the ’966 patent.

CONCLUSION

For the reasons stated above, we reverse the district

court’s judgment as a matter of law with respect to the as-

serted claims of the ’275 patent. We affirm the jury’s ver-

dict on anticipation with respect to the asserted claims of

the ’966 patent and the district court’s determinations on

TTI’s motion for a new trial. We vacate the district court’s

injunction and its awards of enhanced damages and attor-

ney fees, and we remand for reconsideration of enhanced

damages and attorney fees consistent with this opinion.

We have considered the parties’ remaining arguments and

find them unpersuasive.

REVERSED-IN-PART, AFFIRMED-IN-PART, AND

VACATED-AND-REMANDED-IN-PART

No costs.