NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                 ______________________

        THE CHAMBERLAIN GROUP, INC.,
               Plaintiff-Appellee

                            v.

       TECHTRONIC INDUSTRIES CO. LTD.,
        ET TECHNOLOGY (WUXI) CO. LTD.,
                 Defendants

 TECHTRONIC INDUSTRIES NORTH AMERICA,
 INC., ONE WORLD TECHNOLOGIES, INC., OWT
INDUSTRIES, INC., RYOBI TECHNOLOGIES, INC.,
              Defendants-Appellants
             ______________________

                  2016-2713, 2017-1220
                 ______________________

   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: January 25, 2017
                ______________________

    KATHERINE VIDAL, Fish & Richardson, PC, Redwood
City, CA, argued for plaintiff-appellee. Also represented
by BENJAMIN ELACQUA, MICHAEL RUECKHEIM, Houston,
TX; MARIA ELENA STITELER, Minneapolis, MN.
2   THE CHAMBERLAIN GRP., INC.   v. TECHTRONIC INDUS. CO. LTD.




    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; WILLIAM R. PETERSON, NICHOLAUS
E. FLOYD, Houston, TX; JULIE S. GOLDEMBERG, Philadel-
phia, PA.
                ______________________

     Before LOURIE, TARANTO, and CHEN, Circuit Judges.
LOURIE, Circuit Judge.
     Techtronic Industries North America, Inc., One World
Technologies, Inc., OWT Industries, Inc., and Ryobi
Technologies, Inc. (collectively, “TTI”) appeal from the
decision and order of the United States District Court for
the Northern District of Illinois granting The Chamber-
lain Group, Inc.’s (“CGI”) motion for a preliminary injunc-
tion. See Chamberlain Grp., Inc. v. Techtronic Indus. Co.,
No. 16 C 6097, 2016 U.S. Dist. LEXIS 129809 (N.D. Ill.
Sept. 15, 2016) (“Decision”); Chamberlain Grp., Inc. v.
Techtronic Indus. Co., No. 16 C 6097, ECF No. 111 (N.D.
Ill. Sept. 20, 2016) (J.A. 19–20). Because the district court
erred as a matter of law in its claim construction, and
concluded that CGI is likely to succeed on the merits of its
infringement claim and that a preliminary injunction
should therefore be granted on the basis of that incorrect
construction, we vacate the preliminary injunction.
                       BACKGROUND
    CGI owns U.S. Patent 7,224,275 (the “’275 patent”),
which is directed to garage door openers that wirelessly
transmit status information. CGI entered the garage door
opener market in 1958. CGI sells its garage door openers
in several stores, including Home Depot.
     Claim 1 of the ’275 patent is exemplary and reads as
follows:
THE CHAMBERLAIN GRP., INC.   v. TECHTRONIC INDUS. CO. LTD.   3



    A movable barrier operator comprising:
        a controller having a plurality of potential
        operational status conditions defined, at
        least in part, by a plurality of operating
        states;
        a movable barrier interface that is opera-
        bly coupled to the controller;
        a wireless status condition data transmit-
        ter that is operably coupled to the control-
        ler, wherein the wireless status condition
        data transmitter transmits a status condi-
        tion signal that:
            corresponds to a present opera-
            tional status condition defined, at
            least in part, by at least two oper-
            ating states from the plurality of
            operating states; and
            comprises an identifier that is at
            least relatively unique to the mov-
            able barrier operator, such that
            the status condition signal sub-
            stantially uniquely identifies the
            movable barrier operator.
’275 patent col. 8 ll. 5–21 (emphasis added).
     Claims 2 and 5 depend directly from claim 1, and
claim 3 depends from claim 2. Id. col. 8 ll. 22–27, 30–46.
Claim 2 recites that the movable barrier “further com-
prises at least one condition status sensor that is operably
coupled to the controller.” Id. col. 8 ll. 22–24 (emphasis
added). Claim 3 recites transmission of “data that corre-
sponds to the at least one condition status sensor.” Id.
col. 8 ll. 25–27. Claim 5 recites a plurality of operating
states at least one of which must be included in the mov-
able barrier, including “detecting a likely presence of an
4   THE CHAMBERLAIN GRP., INC.   v. TECHTRONIC INDUS. CO. LTD.



obstacle to movement of the movable barrier;” “detecting a
likely proximal presence of a human;” and “detecting a
likely proximal presence of a vehicle.” Id. col. 8 ll. 30–46.
    TTI manufactures and sells power tools and accesso-
ries under the brand name Ryobi. In May 2016, TTI
began selling the Ryobi GD200 garage door opener (“Ry-
obi GDO”). TTI sells its Ryobi products, including the
Ryobi GDO, exclusively through Home Depot.
    In June 2016, CGI sued TTI alleging that the Ryobi
GDO infringed the ’275 patent, 1 and moved for a prelimi-
nary injunction. The district court granted the motion
with respect to claims 1 and 5 of the ’275 patent.
    The district court found that CGI had shown a sub-
stantial likelihood of success on the merits of its in-
fringement claim. The court construed “controller” in
claim 1 to be a “self-aware [controller], i.e., that it did not
rely upon any external sensors to obtain the status condi-
tions of the [garage door opener], and which it was able to
transmit upon request.” Decision, 2016 U.S. Dist. LEXIS
129809, at *9. The court stated that, due to differences
between claims 1 and 2, “[c]laim 1 eschews condition
sensors in favor of a controller that does not rely on
external sensors.” Id. at *10. The court further reasoned
that, during prosecution, “the only way to distinguish the
’275 patent from the prior art was for the examiner to




    1   CGI also alleged infringement of U.S. Patent
7,635,966 (the “’966 patent”). This case, however, is a
limited appeal of the district court’s grant of a prelimi-
nary injunction, and the preliminary injunction does not
extend to the claims of the ’966 patent. Accordingly, the
’966 patent is not before us today and will not be dis-
cussed. See Abbott Labs. v. Andrx Pharm., Inc., 452 F.3d
1331, 1333 n.1 (Fed. Cir. 2006).
THE CHAMBERLAIN GRP., INC.   v. TECHTRONIC INDUS. CO. LTD.   5



conclude that the ’275 patent does not rely on external
sensors.” Id. at *12.
     In construing “controller,” the district court also re-
jected TTI’s argument that requiring the “controller” to be
self-aware would render dependent claim 5 inoperable
because some of its listed operational states require
external sensors. The court noted that the operational
states “do appear to require external sensors.” Id. at *10.
The court, however, rejected TTI’s argument because
CGI’s expert testified that those operational states “might
through future invention be able to be sensed by the
controller without external sensors.” Id. at *10–11.
    Applying its “self-aware controller” construction, the
court concluded that “[b]ecause none of the prior art
suggested by [TTI’s expert] taught the concept of the ‘self-
aware’ controller, TTI has not raised a ‘substantial ques-
tion as to invalidity’” of the ’275 patent. Id. at *12. The
court did not make findings regarding whether other
claim limitations were disclosed in the cited prior art.
    As for the remaining factors considered in a prelimi-
nary injunction analysis, the district court found that CGI
would suffer irreparable harm based on “clear evidence of
price erosion caused by the Ryobi product launch”; “basic
economic reasoning dictat[ing] that [reduced CGI market
share] should be suspected”; and a “substantial risk” of
lost profits, including for accessories. Id. at *18–19. The
court also found that the balance of the hardships favored
CGI and that the public interest factor favored a prelimi-
nary injunction. Id. at *20.
    Subsequently, the district court issued an order en-
joining TTI from “making, using, selling, or offering to sell
in the United States or importing into the United States
the Ryobi GD200 garage door opener in a configuration
that infringes claims 1 and 5 of the ’275 [p]atent under
the Court’s Memorandum Opinion or products that are
not colorably different therefrom.” J.A. 20.
6   THE CHAMBERLAIN GRP., INC.    v. TECHTRONIC INDUS. CO. LTD.



    TTI appealed from the grant of the preliminary in-
junction and moved to stay the preliminary injunction
pending appeal. On November 1, 2016, a motions panel of
this court denied TTI’s motion. The panel “conclude[d]
that while TTI has demonstrated likelihood of success on
the merits, it has not established any of the other three
factors, and that given its failure to demonstrate irrepa-
rable injury, it has not established that a stay of the
preliminary injunction pending appeal is warranted
here.” Chamberlain Grp., Inc. v. Techtronic Indus. Co.,
No. 16-2713, slip op. at 2 (Fed. Cir. Nov. 1, 2016).
    We have jurisdiction pursuant to 28 U.S.C. § 1292(c)
in view of §§ 1292(a) and 1295(a)(1).
                       DISCUSSION
                             I.
    The grant or denial of a preliminary injunction is
within the sound discretion of the district court, and we
will not reverse its judgment absent an abuse of that
discretion. Amazon.com, Inc. v. Barnesandnoble.com,
Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001). Accordingly,
we will only overturn a decision granting a preliminary
injunction on appeal if “the court made a clear error of
judgment in weighing relevant factors or exercised its
discretion based upon an error of law or clearly erroneous
factual findings.” Sanofi–Synthelabo v. Apotex, Inc., 470
F.3d 1368, 1374 (Fed. Cir. 2006) (quoting Genentech, Inc.
v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed. Cir.
1997)). We review the district court’s conclusions of law
de novo. Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd.,
357 F.3d 1319, 1325 (Fed. Cir. 2004).
    “A plaintiff seeking a preliminary injunction must es-
tablish that he is likely to succeed on the merits, that he
is likely to suffer irreparable harm in the absence of
preliminary relief, that the balance of equities tips in his
favor, and that an injunction is in the public interest.”
THE CHAMBERLAIN GRP., INC.   v. TECHTRONIC INDUS. CO. LTD.   7



Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20
(2008). The movant must establish both “likelihood of
success on the merits and irreparable harm” for the court
to grant a preliminary injunction. Amazon.com, 239 F.3d
at 1350 (emphasis added). 2 Thus, where the accused
infringer “raises a ‘substantial question’ concerning
validity, enforceability, or infringement (i.e., asserts a
defense that [the patentee] cannot show ‘lacks substantial
merit’) the preliminary injunction should not issue.”
Genentech, 108 F.3d at 1364.
                              II.
    We first consider whether the district court erred in
its claim construction. We review a district court’s ulti-
mate claim constructions de novo and any underlying
factual determinations involving extrinsic evidence for
clear error. Teva Pharm. U.S.A., Inc. v. Sandoz, Inc., 135
S. Ct. 831, 841–42 (2015). Here, because the intrinsic
record alone determines the proper construction of “con-
troller,” we review the district court’s construction de
novo. See David Netzer Consulting Eng’r LLC v. Shell Oil
Co., 824 F.3d 989, 993 (Fed. Cir. 2016), cert. denied, No.
16-713, 2017 WL 69299 (U.S. Jan. 9, 2017); Shire Dev.,
LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1364, 1368
(Fed. Cir. 2015) (citing Teva, 135 S. Ct. at 840–42).
    The words of a claim “are generally given their ordi-
nary and customary meaning” as understood by a person
of ordinary skill in the art at the time of the invention.
Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir.
2005) (en banc). Because that meaning is “often not



   2    Although TTI also challenges on appeal the dis-
trict court’s conclusions regarding irreparable harm, we
only reach the district court’s analysis of likelihood of
success on the merits because it is dispositive. See Nat’l
Steel Car, 357 F.3d at 1325 n.5.
8   THE CHAMBERLAIN GRP., INC.   v. TECHTRONIC INDUS. CO. LTD.



immediately apparent, and because patentees frequently
use terms idiosyncratically,” the court looks to the intrin-
sic record, including “the words of the claims themselves,
the remainder of the specification, [and] the prosecution
history,” as well as to extrinsic evidence, when appro-
priate, to construe a disputed claim term. Id. at 1314,
1319. The specification “is the single best guide to the
meaning of a disputed term,” and “is, thus, the primary
basis for construing the claims.” Id. at 1315 (internal
citations and quotation marks omitted). Accordingly,
“while extrinsic evidence can shed useful light on the
relevant art, we have explained that it is less significant
than the intrinsic record in determining the legally opera-
tive meaning of claim language.” Id. at 1317 (quotation
marks omitted); see also id. at 1318 (“We have viewed
extrinsic evidence in general as less reliable than the
patent and its prosecution history in determining how to
read claim terms, for several reasons.”).
    TTI argues that the district court improperly con-
strued “controller” in claim 1 to read a “self-aware control-
ler” limitation into the claims. TTI contends that the
plain language of the claim is not limited to a “self-aware
controller” and that the specification supports this conclu-
sion. TTI asserts that the district court’s claim construc-
tion rests on a misunderstanding of the relationship
between dependent and independent claims and a mis-
reading of the prosecution history. TTI argues that the
district court erred in concluding that, because dependent
claim 2 has sensors, independent claim 1 cannot have
sensors. TTI also contends that the district court’s con-
struction renders claim 5 inoperable.
    CGI responds that the district court’s claim construc-
tion was correct based on the plain language of claim 1,
which requires “a controller having a plurality of potential
operational status conditions,” ’275 patent col. 8 ll. 6–7
(emphasis added), not a controller that can determine
actual conditions of external sensors. CGI argues that the
THE CHAMBERLAIN GRP., INC.   v. TECHTRONIC INDUS. CO. LTD.     9



“potential operational status conditions” are internal
conditions of the controller because the claim terms
“having” and “potential” refer to operational status condi-
tions of the controller itself. CGI contends that the dis-
trict court did not find that because claim 2 has sensors,
claim 1 cannot have sensors. CGI also argues that differ-
ences in the signal transmissions recited in claims 1 and 3
due to claim 3’s dependence on claim 2 support the dis-
trict court’s construction. CGI further asserts that the
district court properly rejected TTI’s argument that claim
5 is inoperable without using external sensors based on
expert testimony and that we must review the district
court’s factual findings regarding claim construction
under the clearly erroneous standard.
    We agree with TTI that the district court incorrectly
construed “controller” to require that the controller be
“self-aware” and to prohibit the controller from “rely[ing]
upon any external sensors to obtain status conditions” of
the movable barrier. Decision, 2016 U.S. Dist. LEXIS
129809, at *9. Claim 1 neither recites nor requires a
“self-aware controller.” The written description of the
’275 patent makes clear that the controller can obtain the
operational status conditions through self-awareness or
through externally-developed information, e.g., sensors.
’275 patent col. 2 ll. 56–64, col. 4 ll. 52–59, col. 6 ll. 33–36.
    The written description of the ’275 patent uses the
term “self-aware” only once. That usage makes clear that,
although the controller can be self-aware, it does not need
to be self-aware. The written description states:
    Depending on the needs of the setting, the control-
    ler 11 can be self-aware of such operational status
    conditions (as when, for example, the controller 11
    is aware that it has switched a given ambient
    light fixture on or off) or the controller 11 can be
    provided with externally developed information
    regarding the condition. To effect the latter, it
10 THE CHAMBERLAIN GRP., INC. v. TECHTRONIC INDUS. CO. LTD.



    may be desirable in some settings to use one or
    more status condition sensors 14.
Id. col. 4 ll. 52–59 (emphases added).
    CGI’s arguments regarding the language of claims 1
and 3 do not compel the district court’s construction. As
discussed above, the written description contemplates
both self-aware controllers and controllers that rely on
sensors. Moreover, the written description does not
support CGI’s assertion that the use of the terms “having”
and “potential” in claim 1 demonstrate that the claim is
directed to a self-aware controller. For example, the
written description explains that, typically, “the controller
11 will have a plurality of potential operational status
conditions.” Id. col. 4 ll. 5–6 (emphases added). This
statement is not limited to self-aware controller embodi-
ments. Similarly, claim 3’s dependence from claim 2,
rather than claim 1, does not demonstrate that the “con-
troller” of claim 1 must be self-aware.
    We also agree with TTI that the district court erred by
concluding that “the only reasonable way to reconcile the
difference between [c]laim 1 and [c]laim 2 is that [c]laim 1
eschews condition sensors in favor of a controller that does
not rely on external sensors.” Decision, 2016 U.S. Dist.
LEXIS 129809, at *10 (emphasis added). The inclusion of
a particular limitation in a dependent claim does not
suggest that the limitation is eschewed by the claim from
which it depends. See Trs. of Columbia Univ. in City of
N.Y. v. Symantec Corp., 811 F.3d 1359, 1370 (Fed. Cir.
2016) (explaining that “construing the independent claim
to exclude material covered by the dependent claim would
be inconsistent”). Rather, it compels the opposite conclu-
sion. If claim 1 precluded the inclusion of sensors, a claim
dependent on it, such as claim 2, could not include sen-
sors. See 35 U.S.C. § 112 (2012) (“A claim in dependent
form shall be construed to incorporate by reference all the
limitations of the claim to which it refers.”).
THE CHAMBERLAIN GRP., INC.   v. TECHTRONIC INDUS. CO. LTD. 11



    Additionally, the prosecution history does not support
the district court’s construction of “controller.” In fact, the
prosecution history contradicts the district court’s conclu-
sion that “the only way to distinguish the ’275 patent from
the prior art was for the examiner to conclude that the
’275 patent does not rely on external sensors.” Decision,
2016 U.S. Dist. LEXIS 129809, at *12. Although the
applicant noted during prosecution that a particular piece
of cited art disclosed a controller “that receives a signal
from various sensors,” no argument to distinguish the art
on this basis was made. See J.A. 1187. Moreover, the
applicant amended a different limitation and argued for
patentability based on that amendment in the same Reply
to Office Action. See J.A. 1178, 1190. The prosecution
history does not support a departure from the plain
meaning of “controller” evinced by the specification.
    In light of our rejection of the district court’s construc-
tion of “controller,” we need not, and do not, reach TTI’s
inoperability argument regarding claim 5.
     Furthermore, we reject CGI’s contention that the dis-
trict court made any factual findings regarding claim
construction that we must review for clear error. As we
have explained, the Supreme “Court did not hold that a
deferential standard of review is triggered any time a
district court hears or receives extrinsic evidence.” Shire
Dev., 787 F.3d at 1368 (citing Teva, 135 S. Ct. at 842).
Here, we apply the de novo standard of review because
“there is no indication that the district court made any
factual findings that underlie its construction[],” id., and
“the intrinsic record alone determines the proper con-
struction,” David Netzer Consulting Eng’r, 824 F.3d at
993. See also Shire Dev., 787 F.3d at 1364, 1368 (citing
Teva, 135 S. Ct. at 840–42).
                             III.
    We finally consider whether the district court erred in
finding that CGI established a likelihood of success on the
12 THE CHAMBERLAIN GRP., INC. v. TECHTRONIC INDUS. CO. LTD.



merits. To satisfy its burden, CGI must show that “in
light of the presumptions and burdens that will inhere at
a trial on the merits,” CGI will likely (1) prove that the
Ryobi GDO infringes the ’275 patent; and (2) withstand
TTI’s challenges to the validity and enforceability of the
’275 patent. Sanofi-Synthelabo, 470 F.3d at 1374 (quoting
Amazon.com, 239 F.3d at 1350). Because TTI only chal-
lenges the district court’s finding that it failed to raise a
substantial question of validity, our analysis is limited to
that issue.
    TTI argues that the preliminary injunction should be
vacated because CGI did not establish a likelihood of
success on the merits. TTI contends that the district
court’s finding of a likelihood of success on the merits was
based entirely on its erroneous claim construction of
“controller.” TTI asserts that it raised a substantial
question of invalidity under both the court’s erroneous
construction and the correct construction of “controller.”
     CGI responds that the district court did not abuse its
discretion in issuing the preliminary injunction. CGI
asserts that the district court properly construed “control-
ler” and correctly concluded that TTI did not raise a
substantial question of invalidity. CGI alleges that it
presented reasons that the cited art does not invalidate
the claims to the district court in addition to the lack of a
“self-aware controller.” CGI contends that this court may
affirm on the basis of one or more of those reasons even if
the district court did not address them in its opinion.
     We agree with TTI that CGI has not established a
likelihood of success on the merits. As discussed above,
the district court incorrectly construed “controller.” That
incorrect construction was the court’s sole basis for de-
termining that TTI had not raised a substantial question
of invalidity, see Decision, 2016 U.S. Dist. LEXIS 129809,
at *12, and, as it was incorrect, we must vacate the grant
of the preliminary injunction.
THE CHAMBERLAIN GRP., INC.   v. TECHTRONIC INDUS. CO. LTD. 13



    We decline to reach CGI’s alternative bases for affir-
mance because they involve factual issues on which the
district court’s opinion does not contain factual findings.
See Pullman-Standard v. Swint, 456 U.S. 273, 291–92
(1982) (“[F]actfinding is the basic responsibility of district
courts, rather than appellate courts, and . . . the Court of
Appeals should not have resolved in the first instance this
factual dispute which had not been considered by the
District Court.” (alterations in original) (quoting DeMarco
v. United States, 415 U.S. 449, 450 n.* (1974))); see also
Sprint/United Mgmt. Co. v. Mendelsohn, 552 U.S. 379,
387 (2008) (“Rather than assess the relevance of the
evidence itself and conduct its own balancing of its proba-
tive value and potential prejudicial effect, the Court of
Appeals should have allowed the District Court to make
these determinations in the first instance, explicitly and
on the record.”).
    Based on the foregoing, on this record, and with the
proper claim construction, TTI has raised a substantial
question of invalidity, and CGI has not demonstrated that
the question lacks substantial merit. Accordingly, the
district court abused its discretion in granting the prelim-
inary injunction.
                        CONCLUSION
    We have considered CGI’s remaining arguments but
find them to be unpersuasive. For the foregoing reasons,
we vacate the grant of the preliminary injunction and
remand for proceedings consistent with this opinion.
             VACATED AND REMANDED
                           COSTS
    Costs to TTI.