Chamberlain Group, Inc. v. Lear Corp. (756 F. Supp. 2d 938, 2010)

United States District Court for the Northern District of Illinois 2010-11-24

Citations

Full opinion text

MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Judge:

In 2005, patentee The Chamberlain Group, Inc. (“Chamberlain”), and its exclusive licensee Johnson Controls Interiors, L.L.C. (“JCI”), filed suit against Lear Corporation, alleging that Lear’s Car2U® product infringed U.S. Patent Nos. 6,154,-544 and 6,810,123. Plaintiffs subsequently amended their complaint to allege that Lear also had infringed U.S. Patent No. 7,412,056. Following the close of discovery, the parties filed a number of dispositive motions. Lear seeks summary judgment as to its asserted noninfringement of the '544, '123, and '056 patents. (R. 406; R. 407.) Lear also requests summary judgment of invalidity of all three asserted patents under 35 U.S.C. § 101. (R. 637.) In addition to opposing the preceding motions, Chamberlain and JCI urge the Court to grant summary judgment in their favor as to Defendant’s alleged infringement of all three patents. (R. 418; R. 428; R. 431.) Plaintiffs also move for summary judgment on Lear’s invalidity defense that the asserted claims are directed to unpatentable subject matter. (R. 652.) Plaintiffs further seek summary judgment on Defendant’s inequitable-conduct claim. (R. 665.) They also move for summary judgment on Defendant’s invalidity defenses based on alleged lack of definiteness, enablement, and written description. (R. 659.)

The Court rules as follows on these motions: Lear’s motion for summary judgment as to its noninfringement of the '544 and '123 patents is granted in part and denied in part; Lear’s summary-judgment motion of noninfringement of the '056 patent is denied; Plaintiffs’ motions for summary judgment of Lear’s alleged infringement of the '544, '123, and '056 patents are denied; Lear’s motion for summary judgment of invalidity under 35 U.S.C. § 101 of the '544, '123, and '056 patents is denied; Plaintiffs’ motion for summary judgment on Lear’s invalidity defense that the asserted claims are directed to unpatentable subject matter is granted; Plaintiffs’ motion for summary judgment on Lear’s inequitable-conduct claim is granted in part and denied in part; and Plaintiffs’ motion for summary judgment on Lear’s invalidity defenses based on alleged lack of definiteness, enablement, and written description is granted in part and denied in part.

BACKGROUND

I. The Parties and the Lawsuit

Plaintiff, The Chamberlain Group, Inc., a manufacturer and purveyor of garage-door openers, is incorporated in Connecticut and has its principal place of business in Illinois. (R. 270 at ¶ 1; R. 410 at ¶ 2.) On November 28, 2000, Chamberlain acquired the rights to U.S. Patent No. 6,154,-544 (“the '544 patent”), entitled “Rolling Code Security System.” (R. 270 at ¶ 9.) Almost four years later, Chamberlain also acquired U.S. Patent No. 6,810,123 (“the '123 patent”), which bears the same title as the '544 patent. (R. 270 at ¶ 15.) The '544 and '123 patents disclose a remote-control, garage-door opening system, which includes a transmitter and a receiver. (R. 342 at ¶ 3.) The '544 and '123 patents are in the same patent family (the '123 patent is a continuation of the '544 patent) and the two share the same specification. (R. 410 at ¶ 9.) The similarity between the two patents led Chamberlain to file a “terminal disclaimer” to the '123 patent. (Id.)

On June 13, 2005, Chamberlain, owner of the '544 and '123 patents, sued Lear Corporation for infringement of those intellectual-property rights. (R. 410 at ¶ 5.) Lear is a manufacturer and seller of vehicle interior systems and components. (R. 342 at ¶ 1.) Chamberlain filed an Amended Complaint on October 5, 2005. (R. 43.) JCI, Chamberlain’s exclusive licensee of the '544 and '123 patents, joined in the Amended Complaint as a named Plaintiff. (Id.) On August 19, 2008, Plaintiffs again amended their complaint to add a count of infringement of the subsequently issued U.S. Patent No. 7,412,056 (“the '056 patent”). (R. 270.) Chamberlain and JCI allege that Lear’s transmitters, which are installed in automobiles made by OEM for actuating garage-door operators made by Chamberlain, infringe the '544, '123, and '056 patents. (Id.)

The allegedly infringing product is a universal transmitter used to open garage doors. (R. 434 at 26-27.) In opening those doors, the product’s transmitter acts as a remote-control device that encrypts a coded signal each time the transmitter is actuated by the user and communicates that signal on a radio frequency carrier to the receiver, which is usually attached to a mechanical device that operates the garage door. Id. The receiver recognizes the coded signal sent from the transmitter, and then causes the mechanical device to operate the garage door. Id. The accused device is interoperable with Plaintiffs’ garage-opening product, which incorporates the allegedly infringed patented technology. (R. 410-6 at 12; R. 455 at 14.)

II. The District Court’s Grant of a Preliminary Injunction and Defendant’s Successful Appeal to the Federal Circuit

Having held a Markman hearing, the district court entered a claim-construction order in which it defined “binary code” as a “code in which each code element may be either of two distinct kinds of values, which code may represent various kinds of letters and numbers including, but not limited to, a representation of a base 2 number.” (R. 148 at 8.) Construing “binary code” to encompass more than a binary number, the district court rejected Lear’s proposed construction of “binary code generator.” (Id. at 8-9.) Judge Moran reached the same conclusion with respect to “trinary code generator,” observing that the claims did not limit the initial binary code to a binary number, but instead left “the term open to encompass other numerical and character languages, including trinary code.” (Id. at 9.)

Shortly thereafter, the district court issued a preliminary injunction in Plaintiffs’ favor. (R. 166.) Defendant contended that its Car2U® product used only trinary numbers and algorithms, and Plaintiffs argued that the distinction was irrelevant because the Car2U® device relied on binary language to communicate trinary numbers. Since Defendant conceded (as it had to) that the trinary numbers used by its Car2U® product were necessarily represented by Os and Is in the product’s computer, the district court held that the accused product’s “binary-coded trinary numbers” necessarily use binary code, and so the Car2U® product would likely fall within the '544’s “binary-code” limitation. Id. This ruling formed the basis of the district court’s decision preliminarily to enjoin Defendant.

On appeal, the Federal Circuit vacated the preliminary injunction and reversed the claim construction on which the district court had relied. The Chamberlain Group, Inc., et al. v. Lear Corp., 516 F.3d 1331 (Fed.Cir.2008). Judge Rader for the panel noted that, “for the district court, Lear’s ‘binary-coded trinary numbers’ were binary code, not trinary code.” Id. at 1336. Examining the '544 patent’s specification, the Federal Circuit found that the disclosure restricts the term “binary code” to a narrower meaning than the ordinary or customary reading of the term. Id. at 1337. The Federal Circuit construed “code” as it is used in the claims and concluded that “the '544 patent’s term ‘trinary code’ is relevant to construing ‘binary code’ because the term ‘code’ presumptively should carry the same meaning throughout the patent.” Id. at 1337. Specifically, the Federal Circuit agreed with Lear that the '544 patent uses the term “binary code” “to represent the meaning of the message,” or content, and “not its mere form.” Id. In other words, the '544 limits “binary code” to binary, or base 2, numbers and “trinary code” to trinary, or base 3, numbers, even though the trinary numbers may be still expressed in the binary “Os and Is” language of the transmitter’s microcontroller. Id. at 1139.

Observing that its reversal of the district court’s claim construction “fundamentally influence[d] the likelihood of success in proving infringement,” the Federal Circuit vacated the preliminary injunction. Id. at 1340.

III. Post-Remand Developments

On remand, Defendant moved for summary judgment, arguing that the Federal Circuit’s construction made it impossible for Plaintiffs to prove infringement of the '544 and '123 patents. (R. 236.) The district court ordered discovery to close on August 15, 2008, and entered a briefing schedule. (R. 258.) Two days before discovery was scheduled to close, Plaintiffs sought leave to file a second amended complaint, adding a new patent, U.S. Patent No. 7,412,056, which issued just one day earlier. (R. 260.) On December 8, 2008, Defendant filed its second motion for summary judgment, arguing noninfringement of the '056 patent. (R. 293.) On April 9, 2009, the Executive Commit tee reassigned the case to this Court. (R. 315.)

On April 16, 2009, the Court denied Lear’s motion for summary judgment of noninfringement of the '544, '123, and '056 patents as premature. On July 9, 2009, the Court stayed the case after Lear filed for bankruptcy. (R. 359.) The parties conducted further discovery and, on March 18, 2010, Lear filed renewed motions for summary judgment as to its noninfringement of the three asserted patents. (R. 406; R. 407.) Plaintiffs then filed their own motions for summary judgment of infringement. (R. 418; R. 428; R. 431.)

In addition to ruling upon these cross-motions for summary judgment, the Court now addresses several other motions that are presently before it. These are: Lear’s motion for summary judgment of invalidity under 35 U.S.C. § 101 of the three asserted patents (R. 637); Plaintiffs’ motion for summary judgment on Lear’s invalidity defense that the asserted claims are directed to unpatentable subject matter (R. 652); Plaintiffs’ motion for summary judgment on Lear’s invalidity defenses based on alleged lack of definiteness, enablement, and written description (R. 659); and Plaintiffs’ motion for summary judgment on Defendant’s inequitable-conduct claim (R. 665).

SUMMARY-JUDGMENT STANDARD

Summary judgment is appropriate when “the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c)(2). A genuine issue of material fact exists if “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In determining summary-judgment motions, “facts must be viewed in the light most favorable to the nonmoving party only if there is a ‘genuine’ dispute as to those facts.” Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007). The party seeking summary judgment has the burden of establishing the lack of any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). After “a properly supported motion for summary judgment is made, the adverse party ‘must set forth specific facts showing that there is a genuine issue for trial.’ ” Anderson, 477 U.S. at 255, 106 S.Ct. 2505 (quotation omitted); see also Fed.R.Civ.P. 56(e)(2) (requiring adverse party to “set out specific facts”).

“[Ijnfringement must be shown literally or equivalently for each limitation; general assertions of facts, general denials, and conclusory statements are insufficient to shoulder the non-movant’s burden.” Tech-Search, L.L.C. v. Intel Corp., 286 F.3d 1360, 1372 (Fed.Cir.2002) (citations omitted). “Thus, the party opposing the motion for summary judgment of noninfringment must point to an evidentiary conflict created on the record, at least by a counter-statement of a fact set forth in detail in an affidavit by a knowledgeable affiant. Mere denials or conclusory statements are insufficient.” Id. at 1372 (citations omitted).

ANALYSIS

I. The '544 and '123 Patents

Lear has moved for summary judgment of noninfringement of the '544 and '123 patents, contending that the Federal Circuit’s 2008 opinion in this case, in conjunction with undisputed facts in the record, reveals that its Car2U® product does not use binary numbers. (R. 407; R. 409.) Since the asserted claims in the '544 and '123 patents literally require the presence of those numbers — as all parties to this case agree — Lear contends that the absence of binary code in the allegedly infringing device entitles it to summary judgment as a matter of law. Lear, having failed to obtain a license from Chamberlain to practice the claimed invention, argues that it successfully invented around the '544 and '123 patents,-thus allowing it to market a substitutable product that evades the zone of exclusivity inherent in those patent rights. (R. 410 at ¶ 62.)

In its response to Lear’s motion, JCI devotes considerable time challenging Defendant’s efforts to design around the claims underlying those patents. (R. 422 at 4-5.) Far from being a source of consternation, however, inventing around a patented technology is highly desirable from both an intellectual-property and public-policy perspective. See, e.g., WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed.Cir.1999) (noting that “the patent law encourages competitors to design or invent around existing patents”); State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed.Cir.1985) (“One of the benefits of a patent system is its so-called ‘negative incentive’ to ‘design around’ a competitor’s products, even when they are patented, thus bringing a steady flow of innovations to the marketplace.”). The question before the Court, of course, is whether, viewing all facts in favor of the nonmoving party, Lear succeeded in its design-around efforts. Answering that question requires the Court to determine whether a genuine issue of material fact exists as to whether Lear’s Car2U® product uses binary numbers, a binary-code generator, or a trinary-eode generator for generating a three-valued or trinary code responsive to the variable binary code. If no reasonable jury could find that Defendant’s Car2U® product operates in such a manner, Lear is entitled to summary judgment as to the '544 and '123 patents. See, e.g., Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1323 (Fed.Cir.2009) (citing Anderson v. Liberty Lobby, 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). In light of the claim construction adopted by the Federal Circuit, a genuine issue of fact exists that Defendant’s Car2U® product literally generates, uses, or otherwise employs binary numbers. Lear is therefore not entitled to summary judgment of literal noninfringement of the '544 and '123 patents on that ground. Furthermore, there is a genuine issue of fact as to whether the accused device infringes those patents under the doctrine of equivalents. Lear is entitled to summary judgment, however, of literal noninfringement of the '544 patent and claim 17 of the '123 patent because the Court construes “binary code generator” to require the fact of storage. This result follows because there is no genuine issue that the accused product does not store binary numbers.

A. The Federal Circuit’s Claim Construction Controls

A preliminary issue concerns the impact of the Federal Circuit’s 2008 ruling. Plaintiff JCI contends that “the Federal Circuit wiped the slate clean on claim construction and gave the parties a blank slate on which to move forward.” (R. 422 at 6.) Plaintiff Chamberlain similarly argues that the appellate court’s ruling was merely preliminary, such that this Court can and should revisit the relevant claim construction. (R. 432 at 4, 16-18.) Specifically, Chamberlain contends that the Federal Circuit’s construction of relevant claim terms — including that “code” is synonymous with “number” due to the effect of the '544 patent’s specification in giving particular limited meanings to the language in the claims — was qualified by a footnote in the court’s opinion. (Id. at 16 (quoting Chamberlain, 516 F.3d at 1340 n. 2).) This footnote observed that “Chamberlain did not identify even any expert reports or testimony in support of its particular claim meaning theory.” Id.

A full reading of the Federal Circuit’s opinion, however, reveals that the court’s construction was premised on Chamberlain’s lack of expert reports. The appellate court went to some length to explain how the disputed claim terms, when read together and in light of the specification, compel the conclusion that, for the purpose of the '544 patent, “code” is synonymous with “number” and “binary code” represents “the meaning of the message.” Chamberlain, 516 F.3d at 1335. The Federal Circuit’s construction remains invariant in the face of Chamberlain’s proffered expert reports, and, as previously noted, it is the “law of the case.” (R. 319 at 4.)

This conclusion holds despite the case law relied on by Chamberlain. (R. 432 at 16 (quoting SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1368 (Fed.Cir.2010); CVI/Beta Ventures, Inc. v. Tura L.P., 112 F.3d 1146, 1160 n. 7 (Fed. Cir.1997)).) Neither decision establishes that the Court is free, or ought, to disregard the Federal Circuit’s prior claim construction. Both Montgomery Ward and Marchon Eyewear involved situations in which the Federal Circuit had to determine how it, as an appellate court, should receive a claim construction tendered by a district court on the basis of an incomplete factual record. Montgomery Ward, 594 F.3d at 1360, passim; CVI, 112 F.3d at 1146, passim. Neither case speaks to a situation in which a lower court, in light of a more complete record, is asked to jettison a prior claim construction adopted by the Federal Circuit. It further bears noting that, in the present case, the district court already had held a Markman hearing by the time the Federal Circuit determined the appropriate claim construction. (R. 148 at 1.) The Federal Circuit was not asked to ascertain the meaning of disputed claim terms in the presence of an impoverished factual record.

In continuing to abide by the Federal Circuit’s claim construction in the face of a subsequent and contrary opinion proffered by Chamberlain’s expert witness, Dr. Rhyne, this Court also notes the appellate court’s earlier proclamation that “[ijntrinsic evidence, that is the claims, written description, and the prosecution history of the patent, is a more reliable guide to the meaning of a claim term than are extrinsic sources like technical dictionaries, treatises, and expert testimony.” Chamberlain, 516 F.3d at 1335. Given the Federal Circuit’s careful exposition as to why its construction followed from such intrinsic sources as the claims and written description, the dearth of relevant case law relied upon by Chamberlain, and the fact that the relevant aspects of Dr. Rhyne’s report would not persuade the Court to rule otherwise, the Federal Circuit’s claim construction holds.

The Court therefore denies Chamberlain’s cross-motion for summary judgment of infringement of the '544 and '123 patents, which is premised on the adoption of Chamberlain’s proposed claim construction over that previously found by the Federal Circuit. (R. 432 at 16-18; R. 491 at 4-8.)

B. JCI’s Contention That Lear’s Product Infringes The '544 And '123 Patents Because It Performs The Same Function As Plaintiffs’ Patented Product Fails

Plaintiff JCI’s first substantive argument is that “Lear performs the method disclosed in the Chamberlain patents, not because it wants to, but because it needs to.... For Lear to have a commercially viable product ... [its] garage door opener must be capable of opening ... Chamberlain’s garage door openers.” R. 422 at 5 (emphasis in original). JCI thus claims that Lear’s Car2U® product must infringe the '544 and '123 patents because there is no other way to “open Chamberlain garage door openers” but “to use the patented Chamberlain security algorithm or its equivalent.” Id. at 5; see also id. at 7-9. This assertion is a nonstarter, for it is well established that mere functional equivalence does not render an accused product or process infringing. See Chiuminatta Concrete Concepts v. Cardinal Indus., Inc., 145 F.3d 1303, 1309-10 (Fed.Cir.1998). Put differently, the fact of interoperability does not require mathematical identity in all material respects, such that an accused device necessarily infringes a patented product or process that achieves precisely the same result. Instead, the fact of infringement must be determined by reference to the claims in the patent. See Zenith Lab., Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1423 (Fed.Cir.1994). This is not to say, of course, that interchangeability is irrelevant to the infringement analysis — it may be quite pertinent in assessing validity under the doctrine of equivalents. See, e.g., Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1324 (Fed.Cir.2000) (observing that “[interchangeability is indeed relevant to equivalency”). Nevertheless, the Federal Circuit has made clear that “interchangeability ... is certainly not dispositive.” Cardinal Industries, 145 F.3d at 1309.

JCI next contends that Lear’s Car2U® product “must produce a trinary number that corresponds to the value of a mirrored (reversed) binary number.” R. 422 at 8 (emphasis in original). Looking to the Federal Circuit’s claim construction, which emphasized that “trinary code is still trinary code when expressed as a trinary number represented by (base 2) bit pairs, using 0s and Is,” it does not follow that Lear’s production of a trinary number that corresponds to the value of a mirrored binary number necessarily constitutes the use of a “binary number.” Chamberlain, 516 F.3d at 1339. There is no reason to infer that mere correspondence is enough. Furthermore, Plaintiff Chamberlain’s own expert, Dr. Rhyne, testified at his deposition that Lear’s software “stores both the rolling code value and the mirrored rolling code value in what the Federal Circuit calls trinary.” (R. 410-2 at 48.)

C. There Is No Genuine Issue Concerning the Fact that Lear’s Car2U ® Product Does Not Literally Use “Binary Code” as the Federal Circuit Has Construed that Claim

1. The '544 and '123 Patents Require the Generation or Use of Binary Codes

The Court now turns to the crux of the parties’ dispute: whether a genuine issue of fact exists as to whether the accused device uses “binary code.” The parties do not dispute that the absence of binary code, either literally or equivalently, within the accused product would necessitate a finding of noninfringement as to the '544 and '123 patents. Accord R. 432-1 at 6 (“[T]he sole infringement dispute is whether the Lear transmitter generates a binary code on which the trinary code is based”).

As highlighted in italics, each asserted claim requires the presence or use of binary code. Of course, it is black-letter law that the absence of a patented claim in the accused device is fatal to any contention of literal infringement. See Research Plastics, Inc. v. Fed. Packaging Corp., 421 F.3d 1290, 1297 (Fed.Cir.2005).

Claim 1 of the '544 patent claims as follows:

A transmitter for sending an encrypted signal to control an actuator, comprising:

[1] oscillator for generating a radio frequency oscillatory signal;

[2] apparatus for enabling the sending on an encrypted signal;

[3] binary code generator responsive to the enabling apparatus for generating a variable binary code, said variable code being different for each enabling by the enabling device;

[4] trinary code generator for generating a three-valued or trinary code responsive to the variable binary code; and

[5] transmitting apparatus for modulating the radio frequency oscillatory signal with the trinary code to produce a modulated trinary coded variable radio frequency signal for operation or control of a secure actuator.

(R. 270-2 at 27) (emphasis added).

Claim 1 of the '123 patent reads as follows:

A transmitter comprising:

[1]an oscillator for generating radio frequency oscillatory signal;

[2] a source of a sequence of binary codes, successive binary codes in the sequence being different from predetermined preceding codes in the sequence;

[3] trinary code generator for converting said sequence of binary codes to a sequence of trinary codes; and

[4] a transmitting apparatus for modulating the radio frequency oscillatory signal with the binary codes to produce a modulated trinary coded radio frequency signal.

(R. 270-2 at 51) (emphasis added).

Finally, Claim 17 of the '123 patent claims:

A transmitter for authorizing access to a secure area by a control actuator receiver, comprising:

[1] an oscillator for generating a radio frequency oscillatory signal;

[2] a binary code generator for generating a sequence of binary codes, predetermined ones of the binary codes being different from others of the binary codes of the sequence;

[3] a trinary code generator responsive to the binary codes for generating three-valued or trinary codes; and

[4] a transmitting apparatus for modulating the radio frequency oscillatory signal with the trinary codes to transmit a modulated trinary coded radio frequency signal to the control actuator receiver.

(R. 270-2 at 51) (emphasis added).

2. The Parties Dispute Whether Lear’s Car2U® Product Uses Binary Code

The principal dispute concerns the question whether Lear’s Car2U® product operates using purely trinary numbers, as its designers apparently sought to achieve. (R. 434 at 54-55; R. 410 at 21, ¶ 62.) Defendant’s expert, Dr. Schonfeld, contends that “the securePlus module operates exclusively on trinary numbers and performs only trinary operations.” (R. 410-7 at 13, ¶ 30.) He submits that “the Lear Car2U product uses and operates only on trinary numbers” and thus that the device “is neither responsive to nor does it convert ‘binary codes.’ ” (Id. at 16, ¶ 36.)

Dr. Schonfeld’s conclusions are bolstered by a number of meaningful concessions by Plaintiffs’ experts. First, Chamberlain’s expert, Dr. Rhyne, admitted in his deposition that Lear’s code “stores both the rolling code value and the mirrored rolling code value in what the Federal Circuit calls trinary.” (R. 410-2 at 48.) He also opined that the “fixed code” is stored as a trinary number in Lear’s software. (Id.). Similarly, Chamberlain’s expert, Mr. Cole, agreed in his deposition that “both the variable and fixed code[s] are trinary numbers in Lear’s system.” (R. 410-8 at 6; see also id. at 10.) Lear argues that these admissions, read in light of the Federal Circuit’s claim construction and in conjunction with Dr. Schonfeld’s report, necessitate an entry of summary judgment in its favor as to noninfringement of the '544 and '123 patents. (R. 409 at 12-18; R. 455 at 5-13.)

Plaintiffs dispute this assessment. They do not seek to counter the fact, well established in the record, that Lear’s Car2U® product uses trinary numbers. (R. 410-7 at 2-112; R. 410-2 at 48; R. 410-8 at 6, 10.) Instead, they challenge whether the allegedly infringing product operates using exclusively trinary code. Specifically, Plaintiffs contend that the operation of the “Compare Ternary function” in the accused product entails the employment of a binary number. (R. 422 at 10-18; R. 432 at 9-11.) Plaintiffs assert that this function employs the subtraction method for binary conversion. (R. 422 at 11.) To this end, Plaintiffs proffer the expert reports of Mr. Cole and Dr. Stevenson.

Mr. Cole opines that the “Lear micro-controller performs the steps to convert a trinary number to a binary number” and asserts that the “microcontroller memory uses binary values (high and low bit), which represent 0 and 1.” (R. 410-6 at 13, 15, ¶¶ 40, 47.) He finds binary numbers in the “special function register Status Z-bit[, which] fluctuates between 0 and 1 depending on whether a component power of 2 has been found in the counter. When a component power of 2 is not found, the value of this bit is 1. When the component power of 2 is found, the value of this bit is zero.” (Id. at 25, ¶ 89.) He thus concludes that, “[r]ead sequentially, these Z-bit values constitute ... a binary number.” (Id. at ¶ 90.)

Professor Stevenson similarly explains that, although he does “not dispute that Compare Ternary () eventually returns a trinary number, it is [his] opinion that there is a ‘binary code generator.’ It is the comparison of the return value of Compare Ternary () to 0 inside the if () statement when run 31 times through the for () loop in Step 3 of the SecurityPlus () function. This comparison determines bit by bit whether the power of two in a binary number is present or absent.” (R. 410-4 at 109.)

Plaintiff JCI summarizes the relevant process as follows:

• Each time a button on the garage door opener is pressed, the SecurityPlus() function increments the value of the variable code, button.data.chamberlain_sync[ ], by 3.

• Using the newly incremented value, a “for() loop” is executed.

• This “for() loop” runs 31 times, once for each of the 31 powers of two that the variable code could contain.

• Each time through the “for() loop,” a comparison of the Compare Ternary() function is made to the number 0 (this happens inside the “if()” statement); the internal comparison checks whether the variable code value contains that specific power of two.

• In other words, the first time through the “for() loop,” the code checks whether the value of the variable code is greater than or equal to 231, (which is 2 raised to the thirty-first power), and if so, subtracts 231 from the variable code value to create a new temporary value Temp_Copy_K[ ], the second time through the loop the code checks whether the value of the variable code is greater than or equal to 230, the third time through the loop the code checks whether the value is greater than 229, etc.

• The resulting sequence of the outputs from the 31 comparisons made inside the “if()” statements is, in Dr. Stevenson’s opinion, a binary number, because it is verbatim to the binary number that represents the quantity of the variable code.

(R. 422 at 11) (internal citations omitted) (emphasis in original).

3. Expert Disagreement Is Not Necessarily Enough In Itself to Preclude Summary Judgment

Plaintiffs’ principal contention is that, because the plaintiff-and defense-side experts in the present case reach diametrically opposed conclusions as to whether Lear’s Car2U® product generates or otherwise employs a binary number, summary judgment is categorically improper. (R. 422 at 10; R. 432 at 4-11.) It is indeed true that a “battle of the experts” can preclude summary judgment. See, e.g., Hot Wax, Inc. v. Turtle Wax, Inc., 27 F.Supp.2d 1043, 1048 (N.D.Ill.1998). Nevertheless, not every contention asserted by an expert will suffice to create a genuine issue of material fact to defeat summary judgment. Gratuitous assertions, for example, which are devoid of substantive explanation and analysis, need not be credited. See, e.g., Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed.Cir.2001) (“Broad eonelusory statements offered by ... experts are not evidence and are not sufficient to establish a genuine issue of material fact.”); Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 1112 (Fed.Cir.2000). Similarly, expert contentions that cannot be squared with applicable claim construction, as passed upon in this case by the.Federal Circuit, will not create a genuine issue of material fact. Accord Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed.Cir.1995) (“Claim interpretation, as a question of pure law, is amenable to summary judgment and disagreement over the meaning of a term within a claim does not necessarily create a genuine issue of material fact.”). Furthermore, courts may disregard expert testimony introduced through affidavits that is inconsistent with that expert’s prior deposition testimony. See Delaware Valley Floral Group, Inc. v. Shaw Rose Nets, L.L.C., 597 F.3d 1374, 1382 (Fed.Cir.2010).

In the face of the discordant expert testimony referenced above, Lear articulates several arguments why Plaintiffs’ proffered evidence is insufficient both to meet their burden of proof in responding to a motion for summary judgment and hence to raise a genuine issue of material fact. As discussed in detail below, Lear has established that it is entitled to summary judgment as to literal noninfringement of the '544 and '123 patents. See Anderson, 477 U.S. at 255, 106 S.Ct. 2505 (requiring an adverse party to “set forth specific facts showing that there is a genuine issue for trial”).

4. Defendant Is Not Entitled to Summary Judgment By Virtue of its Broad Contention That the Accused Product Does Not Operate With or Convert Binary Code as That Term Has Been Construed by the Federal Circuit

Defendant’s case for noninfringement begins with a far-reaching assertion that, because its “software program was specifically designed in such a way as to avoid using binary numbers,” since its “transmitter operates only with trinary numbers,” and due to the asserted fact that its product “does not convert any binary numbers into trinary numbers,” the accused device cannot infringe. (R. 409 at 13) (emphasis omitted). Lear grounds this argument in the Federal Circuit’s claim construction, which, it contends, precludes the possibility of infringement. (Id. at 16-18.)

In light of the diametrically opposed contentions of fact advocated by the parties’ respective experts, Lear’s summary-judgment argument on the basis of this broad argument fails. This holds true in spite of the Federal Circuit’s claim construction, which holds that trinary numbers constitute trinary code even when they are stored in the microcontroller in Is and Os (as they must be). Chamberlain, 516 F.3d at 1339. Since Plaintiffs’ experts articulate reasoned explanations as to why they believe the Z-bit generates binary code as that term has been defined by the Federal Circuit, the Court declines to grant summary judgment on the blanket ground that the relevant claim construction categorically forecloses literal infringement. (R. 410-5 at 58-59, ¶¶ 186-89; R. 410-6 at 33hH, ¶¶ 124-51.)

5. Defendant Is Not Entitled to Summary Judgment on its Argument That the Z-Bit Cannot Be Understood to Generate or Use a Binary Number Because It Is Merely a Switch or Status Flag

Lear next contends that there is no dispute concerning the fact that the Z-bit status register is not a number. (R. 409 at 17; R. 455 at 6.) Defendant instead characterizes the Z-bit register as a “status flag” or “register.” (Id.) This, Lear asserts, entitles it to summary judgment. Plaintiff Chamberlain counters that Dr. Rhyne and Mr. Cole testified that “the Z-bit does indeed represent a binary number.” (R. 432 at 12.)

Chamberlain’s response raises an important question whether the status register’s “representing” a binary number is the same as being one, generating one, or producing a sequence of them. Plaintiffs argue that the Z-bit register’s not being a number does not foreclose the possibility of its generating or otherwise employing a binary number. In support, they reference the expert reports of Dr. Rhyne and Mr. Cole, who opine that Lear’s transmitter determines a series of component powers of 2 for each rolling counter value, and hence generates and uses binary codes. (R. 410-5 at 44-47, 59, 66-69, ¶¶ 138-153, 189, 215-27; R. 410-6 at 13, 19, 25-26, 33-34,35, ¶¶ 40, 60, 89-92, 124-125, 132.) In light of their supported contentions, the Court cannot award Lear summary judgment of noninfringement on the particular ground of the Z-bit register’s not itself being a number because this is an issue of fact.

6. Defendant Is Not Entitled to Summary Judgment of Literal Noninfringement of the '544 and '123 Patents on the Ground that the Z-Bit Register Can Only Be Construed to Generate or Otherwise Use a Binary Number When One Consciously Omits Intervening Statuses

Lear contends that the Z-bit register’s supposed generation of Is and Os cannot constitute the generation of a binary number on the ground that the Z-bit produces multiple intervening values that Plaintiffs’ experts chose not to record. (R. 409 at 17-18; R. 455 at 9-10.) Indeed, Plaintiff s expert Mr. Cole admitted in his deposition that the series of Z-bit statuses he represented corresponds to the status of the Z-bit at successive break points at the BZ command. (R. 410-8 at 19.) He admitted further that he did not write down or represent intervening statuses of the Z-bit — statuses that he did not characterize as significant. (Id.) He thus conceded that his recorded sequence of Z-bit sequences “is not a complete record of the Z-bit during the entire time represented in the display.” (Id. at 20.) This fact is therefore undisputed.

Defense expert Dr. Schonfeld submits that the presence of intervening statuses in the Z-bit, which are ignored by Plaintiffs for the purpose of identifying the generation of a binary number, precludes the existence of such a number, since it would reflect nothing more than a “hypothetical” collection of Z-bit flags. (R. 410-10 at ¶ 22.) He further explains:

Dr. Rhyne and Mr. Cole incorrectly claim that a collection of Ts and ‘O’s from the ‘Z-bit’ flag forms a ‘sequence’ which represents a ‘binary number’ corresponding to the ‘trinary number’ in Lear’s Car2U product. This ‘sequence’ has been obtained by using the Microchip MPLab emulator debugging software, and then updating the status of the ‘Z-bit’ flag at specific ‘breakpoints’ or pausing points selected by Mr. Cole. Specifically, Mr. Cole recorded the status of the ‘Z-bit’ flag at specific points in the execution of Lear’s Car2U software, and ignored the status of the ‘Z-bit’ flag at other points during the execution of the program between the selected points. Thus, the purported ‘binary number’ represents a hypothetical collection of the ‘Z-bit’ flag at nonsuccessive points during the execution of the program and discards the status of the ‘Z-bit’ flag at intervening points in time. As I pointed out earlier, the ‘Z-bit’ flag changes in response to arithmetic and logic operations and thus its status toggles repeatedly throughout the execution of the program. For instance, the command ‘SUBFWB [Oxl], W’ which appears merely four lines below the ‘BZ Ox3aOe’ command, also alters the status of the ‘Z-bit’ flag. Therefore, the ‘Z-bit’ flag will toggle in between the isolated points selected by Mr. Cole, who ignores intervening changes in the ‘Z-bit’ flag.

(R. 410-10 at ¶ 22) (internal citations omitted).

Lear thus argues that “manually selecting out Z-bit statuses and throwing away intervening values that the experts do not like is relevant. It shows that Lear’s product never treats the Z-bit as if it was [sic] a number.” (R. 455 at 9) (emphasis in original).

Chamberlain contests the significance of the undisputed fact that not all Z-bit values are recorded on the basis that “Dr. Rhyne and Mr. Cole ... disagree.” (R. 432 at 13.) Dr. Rhyne explains as follows:

Since most computer programs are performing multiple functions during their execution, it is normal for the Z bit to be used as other functions are performed by the Lear software. The fact that the Z bit performs other functions between the times when it is used to define the sequence of bits in the calculated binary number does not detract from the fact that it shows the generation of powers of two and generation of a binary number when the Lear software is performing the relevant functions in the securePlus module in its software. It is irrelevant that the Z-bit takes on other values when it is executing functions other than generating binary code during the Compare Ternary function. The key is that at the times when the each bit of the binary number being generated is calculated, the value of that bit is represented in the Zbit, as it must be to allow the binary mirroring process to be performed by the Lear software.

(R. 434-3 at 290-91.)

Mr. Cole similarly opines:

Whether the Z-bit is an “operand” has no bearing on whether the Z-bit sequence is a number. Although it is entirely possible that the Z-bit is used in arithmetic operations within the processor, the performance of arithmetic operations on the Z-bit is not required for the Z-bit sequence to constitute a binary number. In substance, irrespective of the intermediate values, the generation of values at the Z-bit register during the operation of the securePlus module in the Lear software constitutes generation of a binary number.

(R. 434-3 at 299.)

One might question the sufficiency of these explanations on the ground that they do not explain how the Z-bit could be literally read to generate numbers, binary or otherwise, if such values can be ascertained only by recording particular statuses over time and ignoring intervening ones. Dr. Rhyne and Mr. Cole’s declarations, however, are nevertheless sufficient to reveal a genuine issue of material fact. The Federal Circuit previously explained that “[t]he substance, rather than the form, controls whether a ‘code’ is ‘binary’ or ‘trinary’ for the '544 patent.” Chamberlain, 516 F.3d at 1339 (emphasis added). Dr. Rhyne and Mr. Cole’s declarations explain that the Z-bit register’s operation can give rise to the generation of a binary number “in substance.” (R. 434-3 at 299.) Although their explanations are not as comprehensive as they could be, to survive summary judgment, they need not “give a primer on why the facts allow the expert to reach that conclusion.” Vollmert v. Wis. Dep’t of Trans., 197 F.3d 293, 300-01 (7th Cir. 1999); Patton v. MFS/Sun Life Financial Distribs., Inc., 480 F.3d 478, 487 (7th Cir. 2007) (“[E]ven brief expert reports will suffice at the summary judgment stage.”); see also Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043, 1051 (Fed.Cir. 2001) (observing that the sufficiency of the factual basis underlying an expert report is a question for the relevant regional circuit “since the factual foundation necessary to support an expert’s opinion is not a matter peculiar to patent law”).

A reasonable jury could find that, because Plaintiffs’ experts had to pick and choose particular statuses of the Z-bit values, hence necessarily ignoring intervening values, in order to obtain a sequence that they contend to be a binary number, the Z-bit cannot literally generate or use a binary number. In light of Plaintiffs’ experts’ reasoned explanations, however, a reasonable jury would not be confined to reaching that conclusion. To grant summary judgment in Lear’s favor, the Court would have to weigh conflicting evidence. Accordingly, the Court cannot grant Lear summary judgment on this ground. See, e.g., Dowden v. Polymer Raymond, Inc., 966 F.2d 1206, 1207 (7th Cir.1992) (“Summary judgment is not an appropriate occasion for weighing the evidence and should not be granted if the evidence supports alternate inferences.”) (internal citations omitted).

7. Lear Is Entitled to Summary Judgment of Literal Noninfringement of Claim 1 of the '544 Patent and Claim 17 of the '123 Patent Because “Binary Code Generator” Requires That the Relevant Binary Code Be Stored

Defendant is entitled to summary judgment as to literal noninfringement of claim 1 of the '544 patent and claim 17 of the '123 patent because “binary code generator” requires, consistent with the Federal Circuit’s interpretation, the fact of storage. There is no genuine issue that the accused product does not store a binary number.

Plaintiff Chamberlain argues that the accused device does store binary codes. (R. 432 at 12-13.) Chamberlain’s primary contention is that “all variables in the Car2U transmitter are processed and stored as binary codes because all processors use binary architecture for representing and storing.” (R. 434 at 28.) This position, however, is inconsistent with the Federal Circuit’s opinion, which held that, although “the transmitter’s microcontroller, like other computers, undisputably stores and processes data as sequences of Os and Is,” the district court had erred in concluding that “ ‘binary code’ encompassed anything represented in Is and Os in a computer.” Chamberlain, 516 F.3d at 1337-39. Indeed, Chamberlain would appear to admit that this is the case. (R. 434 at 32) (contending that, “[u]nder the Federal Circuit’s construction of ‘binary number’ ... the Compare Ternary function generates binary numbers,” and further contending that “[ujnder Chamberlain’s construction of ‘binary code,’ the PIC18 processor in Lear’s Car2U transmitter process and stores all information as binary code”) (emphasis added). Because the Federal Circuit’s construction remains law of the case, Plaintiffs argument fails. Chamberlain, 516 F.3d at 1339.

In the alternative, Chamberlain contends that, “[u]nder Lear’s construction of ‘binary code,’ the Lear transmitter generates and stores a binary number.” (R. 434 at 35.) In doing so, Chamberlain relies on paragraphs 139-44 and 189 of Dr. Rhyne’s expert report, as well as paragraph 55 of Mr. Cole’s report. (Id. at 35.) Paragraph 55 of Mr. Cole’s report, however, does not support that position. (R. 410-6 at ¶ 55; R. 434-3 at ¶ 55.) Nor do paragraphs 189 and 139 to 144 of Dr. Rhyne’s expert report offer an opinion as to the alleged fact of storage. (R. 434-2 at 44-45, 59, ¶¶ 139-44, 189.)

The admissions Dr. Rhyne and Mr. Cole made during their respective depositions are even more important. Dr. Rhyne testified that Lear’s code “stores both the rolling code value and the mirrored rolling code value in what the Federal Circuit calls trinary.” (R. 410-2 at 48.) He also opined that the “fixed code” is stored as a trinary number in Lear’s software. (Id.) Mr. Cole testified that the Z-bit status register can store a 30-bit number by reading them sequentially. (R. 410-8 at 18.) He further testified that “the counter in the Lear device is stored as a trinary number.” (R. 410-8 at 9-10; see also R. 410-6 at 26, ¶ 92.)

In light of the preceding analysis, there is no genuine issue of fact concerning the accused product’s nonstorage of binary numbers. The Court thus proceeds to consider whether the term “binary code generator” necessitates the storage of a binary number. Of course, claim construction is a question of law that entitles the district court to award summary judgment despite the presence of a dispute between experts over the meaning of a claim term. See Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir.2004) (observing that all claim-construction issues are a matter of law for the court, though evidence from experts may be relevant).

Defense expert Dr. Schonfeld opines that a “ ‘binary code generator’ produces and stores binary numbers.” (R. 410-7 at 15, ¶35; see also id. at 13-15, ¶¶ 31-32.) As a result, he contends, the fact that Lear’s Car2U® product does not store any binary number it supposedly produces pursuant to the Z-bit sequence of the status register means that it cannot entail the use of a “binary code generator.” (Id.) Mr. Cole opposes that view, arguing that the appropriate construction of “binary code generator” does not require storage. (R. 410-6 at 35-37, ¶¶ 133-36.) Plaintiffs’ experts, Professor Stevenson and Dr. Rhyne, echo Mr. Cole’s perspective. (R. 410-4 at 110, ¶ 179; R. 410-5 at 33, ¶ 101.)

Mr. Cole first asserts that the Federal Circuit's claim construction does not support an interpretation requiring storage. (R. 410-6 at 35, ¶ 133.) He is mistaken. The Federal Circuit observed that, for the purpose of the '544 patent, “the term ‘code’ presumptively should carry the same meaning throughout the patent.” Chamberlain, 516 F.3d at 1337. It stressed further that “ ‘binary code’ and ‘trinary code’ should have parallel meanings, differing only insofar as ‘binary’ and ‘trinary’ differ in their relationships to the numbers 2 and 3.” Id. (emphasis added). In the very next sentence, the Federal Circuit held that “ ‘trinary code’ as used in the '544 patent means values stored and processed in the binary language as 0s and Is.” Id. at 1337 (emphasis added). If this Court is to bestow the term “code” with the same meaning throughout the patent, then, as with “trinary code,” “binary code” similarly means values that are “stored and processed.” According to the Federal Circuit, then, “the '544 patent notes that the transmitter’s microcontroller generates the trinary code,” which “means values stored and processed in the binary language as 0s and Is.” Id. at 1337-38 (emphasis added). The Federal Circuit’s claim construction strongly supports an interpretation requiring storage.

Mr. Cole supports his position by appealing to extrinsic dictionary evidence as to the meaning of “binary code” and “binary number.” (Id. at 36-37, ¶¶ 134-35.) Such evidence is, of course, relevant, but its hermeneutic value is of ancillary importance. See Kara Tech., Inc. v. Stamps.com, Inc., 582 F.3d 1341, 1348 (Fed.Cir. 2009) (“It is not uncommon in patent cases to have ... dueling experts. When construing claims, however, the intrinsic evidence and particularly the claim language are the primary resources.... While helpful, extrinsic sources ... cannot overcome more persuasive intrinsic evidence.”). In addition, it is relevant that the Federal Circuit has already determined that the term “binary code” in the context of the '544 patent has “a narrower meaning” than “an ordinary or customary reading” would provide. Chamberlain, 516 F.3d at 1337.

Mr. Cole, Professor Stevenson, and Dr. Rhyne look further to dependent claim 7, which specifies a “transmitter for sending an encrypted signal to control an actuator according to claim 1, wherein said binary code generator for generating a variable binary code includes a non-volatile memory for storing a variable binary code.” (R. 410-6 at 35, ¶ 133.) The Federal Circuit has made clear that “the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.Cir.2005) (en banc). Mr. Cole therefore interprets the fact that storage is specified in a dependent claim as indicating that storage is an optional feature in the asserted independent claim. (R. 410-6 at 35-36, ¶ 133; see also R. 410-4 at 110, ¶ 179; R. 410-5 at 33, ¶ 101.) Nevertheless, the Court agrees with Defendant that the proper construction is that the independent claim requires that codes be stored in a computer. Dependent claim 7 imposes a further limitation, which is that the storage take place in “non-volatile memory.” (R. 410-10 at 13, ¶ 25.)

This Court thus construes “binary code generator,” as used in the '544 and '123 patents, to require not only the production, but the storage of binary numbers. Because there is no material dispute that Lear’s Car2U® device does not store a binary number, Lear is entitled to summary judgment of literal noninfringement of claim 1 of the '544 patent and claim 17 of the '123 patent.

D. There Is a Genuine Issue of Material Fact as to Whether Lear’s Car2U® Product Infringes Under the Doctrine of Equivalents

Defendant also seeks summary judgment of noninfringement on Plaintiff’s doctrine-of-equivalents claim. Plaintiffs argue that the operation of the Z-bit status register within Lear’s Car2U® product involves the generation and use of a binary number. It is a fundamental tenet of patent law that an accused product may infringe a patent if it meets each limitation of the claim equivalently. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1459 (Fed.Cir.1998) (en banc). “An element in the accused product is equivalent to a claim limitation if the differences between the two are ‘insubstantial’ to one of ordinary skill in the art.” Amgen Inc. v. F. Hoffman-LA Roche, 580 F.3d 1340, 1382 (Fed.Cir.2009) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)). To determine whether the difference between an element in the accused product is insubstantially different to a claim limitation, the test is whether the accused device performs substantially the same function in substantially the same way to obtain the same result as the claim limitation. See id. (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950)).

Plaintiffs’ expert reports provide that the accused product, even if it does not literally infringe the asserted patents, does infringe under the doctrine of equivalents. (R. 410-5 at 62-66, 77-80; R. 410-4 at 85-97.) Dr. Rhyne and Professor Stevenson present detailed analysis as to why, in their respective opinions, each element in the accused device is equivalent to the relevant claim limitations in the '544 and '123 patents. (Id.)

Noting the Federal Circuit’s command that “the patent claims and specification ... do not permit [the binary code and trinary code] terms to overlap,” Defendant argues that “a key facet of the invention is that it employs both the binary and trinary number systems.” (R. 409-1 at 14) (emphasis omitted). Pursuant to this contention, Lear argues that any view that “Lear’s trinary code and trinary operations are ‘substantially equivalent’ to the patents’ ‘binary code’ limitations must fail” because “[s]uch a theory of equivalence would completely vitiate the claim element of a binary code, an element which is separate and cannot overlap.” (Id. at 15.) See Vehicular Techs. Corp. v. Titan Wheel Intern., Inc., 141 F.3d 1084, 1090 (Fed.Cir. 1998) (“[I]f a claim limitation must play a role in the context of the specific claim language, then an accused device which cannot play that role, or which plays a substantially different role, cannot infringe under the doctrine of equivalents.”).

Lear’s error lies in its assertion that a jury could not find that its Car2U® product infringes under the doctrine of equivalents without conflating the separate requirements of “trinary code” and “binary code.” A reasonable jury could find that the operation of a status register cannot literally be said to be or to generate a number (be it binary or trinary) if the construction of such a number depends on the selective omission of intervening values. Under this view, the Z-bit status register would literally constitute neither a binary number nor a trinary number. Nevertheless, a reasonable jury could simultaneously find that the nonsuccessive array of Z-bit statuses is the substantive equivalent of the generation of a binary number. Such a determination would be tantamount to finding that the Z-bit register, which is an element of the accused product, is insubstantially different to the claim limitations involving “binary code.” This finding would not vitiate separate claims involving “trinary code.”

Plaintiffs offer reasoned expert reports and deposition testimony that bolster then-argument that the accused product performs substantially the same function in substantially the same way to achieve substantially the same result as the asserted claims underlying patents '544 and '123. Indeed, it is undisputed that the accused product achieves substantially the same result as the claimed invention. (R. 516-2 at 6 (agreeing that the goal was “to put out the same signal as the Chamberlain system”); R. 432 at 15; R. 455 at 14.) There is, however, a genuine issue of material fact as to whether the substitute element (the Z-bit status register and related operations within the accused product) matches the “way” and “function” of the claimed element. This question is the subject of competing expert reports, all of which are well reasoned. Because the Court cannot weigh conflicting evidence at the summary-judgment juncture, the issue of infringement under the doctrine of equivalents is a question for the jury. The jury could reasonably decide that the Z-bit status register’s operation gives rise to the de facto generation or use of a binary number in a way that is insubstantially different to the claimed “binary code.”

Defendant presents one further argument why its accused device cannot infringe under the doctrine of equivalents. It submits that infringement under that doctrine is necessarily foreclosed by its ownership of U.S. Patent No. 7,589,613 (“the Kraft patent”), which covers the “all-trinary solution” embodied in its Car2U® product. (R. 409 at 15-16.) This argument fundamentally misconceives the nature of a patent grant, which bestows upon its owner a right to exclude, but not an affirmative right to practice. See, e.g., TransCore LP v. Elec. Trans. Consultants Corp., 563 F.3d 1271, 1275 (Fed.Cir.2009). JCI is correct to point out that the existence of a patent on the accused process is not dis-positive on the question of infringement under the doctrine of equivalents, but is instead significant to that determination. (R. 516 at 2 n. 1 (citing Nat’l Presto Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1191-92 (Fed.Cir.1996)).) At trial, Lear can point to the existence of the Kraft patent, in addition to the fact that the Kraft application cited the '544 and '123 patents as prior art (which thus demonstrates that the PTO considered the '544 and '123 patents and nevertheless considered the claimed invention to be novel, useful, and nonobvious in light of that pri- or art.) See Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 954 (Fed.Cir.1993). Nevertheless, the existence of the Kraft patent does not in itself entitle Defendant to summary judgment of equivalent noninfringement.

For the preceding reasons, the Court grants in part and denies in part Defendant’s motion for summary judgment of noninfringement of the '544 and '123 patents.

II. The'056 Patent

Plaintiffs also allege that Lear’s Car2U® product infringes claim 1 of the '056 patent, which claims:

A transmitter for sending an encrypted signal to control an actuator, comprising:

[1] oscillator for generating a radio frequency oscillatory signal;

[2] apparatus for enabling the sending of an encrypted signal;

[3] a memory having a fixed code stored therein;

[4] code generator responsive to the enabling apparatus for generating a variable code, said variable code being different for each enabling by the enabling device;

[5] apparatus for providing a code that is based on the fixed code;

[6] apparatus for combining a trinary code version of the variable code with a trinary code version of the code, wherein the apparatus combines the trinary code version of the variable code with the trinary code version of the code by interleaving trinary bits for the trinary code version of the variable code with trinary bits for the trinary code version of the code to thereby provide an interleaved trinary code combined result;

[7] transmitting apparatus for modulating the radio frequency oscillatory signal with the interleaved trinary code combined result to produce a modulated trinary code variable radio frequency signal for operation or control of a secure actuator.

(R. 270-2 at 80.)

Lear contends that there is no genuine issue of fact that its Car2U® product uses exclusively trinary numbers and employs an encrypted fixed code, which changes with each actuation of the device. Defendant argues that it is entitled to summary judgment on Plaintiffs’ claim of infringement of the '056 patent on either one of two interpretations; namely, that the term “variable code” in that patent means “nontrinary code” and that the “code that is based on the fixed code” is itself fixed. (R. 408 at 9-19.) Lear submits that, if the Court accepts either construction (or, indeed, both constructions) in said manner, Defendant is entitled to summary judgment of noninfringement. (Id.)

A. “Variable Code” Means “Nontrinary Variable Number”

Defendant argues that the “variable code” referenced in [4] and [6] of claim 1 of the '056 patent necessarily