Case: 1:13-cv-08413 Document #: 144 Filed: 09/21/16 Page 1 of 10 PageID #:4474
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`VELOCITY PATENT LLC,
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`Case No. 13-cv-8413
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`Judge John W. Darrah
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`Case No. 13-cv-8419
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`Judge John W. Darrah
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`Plaintiff,
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`
`v.
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`
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`MERCEDES-BENZ USA, LLC;
`MERCEDES-BENZ U.S.
`INTERNATIONAL, INC.,
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` Defendants.
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`VELOCITY PATENT LLC,
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`
`
`Plaintiff,
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`
`v.
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`
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`FCA US LLC,
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` Defendant.
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`MEMORANDUM OPINION AND ORDER
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`Plaintiff Velocity Patent LLC filed Complaints against Defendants
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`Mercedes-Benz USA, LLC, Mercedes-Benz U.S. International, Inc., and FCA US LLC1
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`(“FCA”) (collectively, the “Defendants”), each alleging one count of infringement of U.S. Patent
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`No. 5,954,781 (“the ‘781 Patent”). Defendants filed joint Motions for Summary Judgment of
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`Indefiniteness or Noninfringement [13-cv-8413, Dkt. 104; 13-cv-8419, Dkt. 80]. Plaintiff filed
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`cross-Motions for Summary Judgment of Infringement [13-cv-8413, Dkt. 111; 13-cv-8419,
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`Dkt. 87]. For the reasons set forth below, Defendants’ Motions [13-cv-8413, Dkt. 104;
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`1 FCA US LLC is the successor in interest to Chrysler Group, LLC, against whom the
`original Complaint was filed. An Amended Complaint was filed against FCA US LLC on
`October 27, 2015.
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`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`
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`VELOCITY PATENT LLC,
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`
`
`Case No. 13-cv-8413
`
`Judge John W. Darrah
`
`
`
`Case No. 13-cv-8419
`
`Judge John W. Darrah
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`))
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`Plaintiff,
`
`
`v.
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`
`
`MERCEDES-BENZ USA, LLC;
`MERCEDES-BENZ U.S.
`INTERNATIONAL, INC.,
`
` Defendants.
`
`VELOCITY PATENT LLC,
`
`
`
`Plaintiff,
`
`
`v.
`
`
`
`FCA US LLC,
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` Defendant.
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`
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`MEMORANDUM OPINION AND ORDER
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`Plaintiff Velocity Patent LLC filed Complaints against Defendants
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`Mercedes-Benz USA, LLC, Mercedes-Benz U.S. International, Inc., and FCA US LLC1
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`(“FCA”) (collectively, the “Defendants”), each alleging one count of infringement of U.S. Patent
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`No. 5,954,781 (“the ‘781 Patent”). Defendants filed joint Motions for Summary Judgment of
`
`Indefiniteness or Noninfringement [13-cv-8413, Dkt. 104; 13-cv-8419, Dkt. 80]. Plaintiff filed
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`cross-Motions for Summary Judgment of Infringement [13-cv-8413, Dkt. 111; 13-cv-8419,
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`Dkt. 87]. For the reasons set forth below, Defendants’ Motions [13-cv-8413, Dkt. 104;
`
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`1 FCA US LLC is the successor in interest to Chrysler Group, LLC, against whom the
`original Complaint was filed. An Amended Complaint was filed against FCA US LLC on
`October 27, 2015.
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`
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`Case: 1:13-cv-08413 Document #: 144 Filed: 09/21/16 Page 2 of 10 PageID #:4475
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`13-cv-8419, Dkt. 80] and Plaintiff’s cross-Motions [13-cv-8413, Dkt. 111; 13-cv-8419, Dkt. 87]
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`are denied.
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`LOCAL RULE 56.1
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`Local Rule 56.1(a)(3) requires the moving party to provide “a statement of material facts
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`as to which the party contends there is no genuine issue for trial.” Ammons v.
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`Aramark Uniform Servs., 368 F.3d 809, 817 (7th Cir. 2004). Local Rule 56.1(b)(3) requires that
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`“[a]ll material facts set forth in the statement required of the moving party will be deemed to be
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`admitted unless controverted by the statement of the opposing party.” Id. Local Rule
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`56.1(b)(3)(C) permits the nonmovant to submit “any additional facts that require the denial of
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`summary judgment. . . .” To overcome summary judgment, “the nonmoving party must file a
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`response to each numbered paragraph in the moving party’s statement.” Schrott v.
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`Bristol-Myers Squibb Co., 403 F.3d 940, 944 (7th Cir. 2005). In the case of any disagreement,
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`the nonmoving party must reference affidavits, parts of the record, and other materials that
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`support his stance. Id. A nonmovant’s “mere disagreement with the movant’s asserted facts is
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`inadequate if made without reference to specific supporting material.” Smith v. Lamz, 321 F.3d
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`680, 683 (7th Cir. 2003). Legal conclusions or otherwise unsupported statements, including
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`those that rely upon inadmissible hearsay, will be disregarded. See First Commodity
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`Traders, Inc. v. Heinold Commodities, Inc., 766 F.2d 1007, 1011 (7th Cir. 1985); see also
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`Eisenstadt v. Centel Corp., 113 F.3d 738, 742 (7th Cir. 1997). If the nonmovant’s response only
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`provides extraneous or argumentative information, the response will fail to constitute a proper
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`denial of the fact, and the fact will be admitted. See Graziano v. Vill. of Oak Park,
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`401 F. Supp. 2d 918, 936 (N.D. Ill. 2005).
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`2
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`Case: 1:13-cv-08413 Document #: 144 Filed: 09/21/16 Page 3 of 10 PageID #:4476
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`BACKGROUND
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`The following facts are taken from the parties’ statements of undisputed material facts
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`submitted in accordance with Local Rule 56.1.
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`Velocity is an Illinois limited-liability corporation with its principal business address in
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`Atherton, California. (Dkt. 113, ¶ 1.) Mercedes-Benz USA, LLC is a Delaware limited-liability
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`corporation with its principal place of business in Dunwoody, Georgia. (Id. ¶ 5.)
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`Mercedes-Benz U.S. International, Inc. is an Alabama corporation with its principal place of
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`business in Vance, Alabama. (Id.) FCA is a Delaware corporation with its principal place of
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`business in Auburn Hills, Michigan. (Id. ¶ 6.)
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`The ‘781 Patent is titled “METHOD AND APPARATUS FOR OPTIMIZING VEHICLE
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`OPERATION” and was issued on September 21, 1999. (Id. ¶ 9.) Velocity asserts Claims 1, 7,
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`13, 17, 18-20, 33-34, 40, 42, 46, 53, 56, 58, 60, 64,66, 69, 75, and 76 of the ’781 Patent against
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`Defendants Mercedes. (Id. ¶ 16.) Velocity asserts Claims 1, 7, 13, 17-20, 28, 33-34, 40, 41, 42,
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`46, 53, 56, 58, 60, 64, 66, 69, 75-76, and 88 of the ’781 Patent against Defendant FCA. (Id.
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`¶ 46.) Claims 1, 7, 13, 17, 28, 60, 69, and 76 are independent claims that include a
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`“fuel overinjection notification circuit” limitation. (Id., ¶¶ 16, 47). That limitation requires a
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`“fuel overinjection notification circuit . . . said fuel overinjection notification circuit issuing a
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`notification that excessive fuel is being supplied to said engine of said vehicle.” (Id. ¶ 48.)
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`LEGAL STANDARD
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`Summary judgment will be granted where “the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
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`Fed. R. Civ. P. 56. Courts are required to view all facts and make reasonable inferences “in the
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`light most favorable to” the nonmoving party. Scott v. Harris, 550 U.S. 372, 378 (2007). A
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`3
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`Case: 1:13-cv-08413 Document #: 144 Filed: 09/21/16 Page 4 of 10 PageID #:4477
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`genuine dispute of material facts exists where “the evidence is such that a reasonable jury could
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`return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
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`(1986). The moving party has the initial burden of establishing that there is no genuine dispute
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`as to any material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). To overcome a
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`motion for summary judgment, “[t]he nonmoving party must point to specific facts showing that
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`there is a genuine issue for trial.” Stephens v. Erickson, 569 F.3d 779, 786 (7th Cir. 2009). The
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`nonmovant must show “that a reasonable jury could return a verdict for the nonmoving party.”
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`Pugh v. City of Attica, Ind., 259 F.3d 619, 625 (7th Cir. 2001) (quoting Anderson, 477 U.S. at
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`248).
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`ANALYSIS
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`Indefiniteness
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`Defendants claim that the ‘781 Patent is invalid because it is indefinite, referencing the
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`arguments in their claim construction response brief. Specifically, Defendants argue that the
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`term “fuel overinjection notification circuit” is indefinite. A patent must “conclude with one or
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`more claims particularly pointing out and distinctly claiming the subject matter which the
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`applicant regards as [the] invention.” 35 U.S.C. § 112, ¶ 2. A lack of definiteness renders the
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`patent or any claim in suit invalid. 35 U.S.C. § 282, ¶ 2(3).1. “[A] patent is invalid for
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`indefiniteness if its claims, read in light of the specification delineating the patent, and the
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`prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the
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`scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
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`“[T]he burden of proving indefiniteness remains on the party challenging [the patent’s] validity
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`and . . . they must establish it by clear and convincing evidence.” Dow Chem. Co. v.
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`4
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`Case: 1:13-cv-08413 Document #: 144 Filed: 09/21/16 Page 5 of 10 PageID #:4478
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`Nova Chemicals Corp. (Canada), 809 F.3d 1223, 1227 (Fed. Cir. 2015). As discussed in the
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`claim construction Memorandum Opinion and Order, the term “fuel overinjection notification
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`circuit” is not indefinite.
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`Infringement
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`“To prove literal infringement, a plaintiff must show that the accused device contains
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`each and every limitation of the asserted claims.” Presidio Components, Inc. v.
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`Am. Tech. Ceramics Corp., 702 F.3d 1351, 1358 (Fed. Cir. 2012) (citing Uniloc USA, Inc. v.
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`Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011)). In infringement cases, the court
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`interprets the claims to determine their scope and meaning; then the fact-finder compares the
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`properly construed claims to the allegedly infringing device. Id. (citing Cybor Corp. v. FAS
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`Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998)). If any claim is missing from the accused
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`device, there is no literal infringement as a matter of law. Bayer AG v. Elan Pharm. Research
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`Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000).
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`The term “fuel overinjection notification circuit” was construed as: “A circuit that
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`notifies a driver that more fuel is being supplied to the engine than is necessary.” The term
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`“a notification” was construed as: “An act or instance of notifying, making known or giving
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`notice to the operator of the vehicle.” The term “processor subsystem” was construed to be
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`governed by 35 U.S.C. § 112(f). The claim language states that the processor subsystem
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`“determines” whether to activate a notification circuit. Because the claim does not provide
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`sufficient structure for performing the functions recited in the claims, i.e., determining whether
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`to activate the notification circuit, § 112(f) applies and an algorithm is required.
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`5
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`Case: 1:13-cv-08413 Document #: 144 Filed: 09/21/16 Page 6 of 10 PageID #:4479
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`Plaintiff contends that Defendants Mercedes’ ECO display and Defendant FCA’s ECO
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`ECO Display
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`and Fuel Saver Mode displays infringe the ‘781 Patent. Plaintiff alleges that
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`Defendants Mercedes’ ECO display meets the term “fuel overinjection notification circuit.”
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`(Dkt. 113, ¶ 20.) Plaintiff alleges that Defendant FCA’s ECO display and Fuel Saver Mode
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`display meet the term “fuel overinjection notification circuit.” (Id., ¶¶ 50-53).
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`Defendants Mercedes’ ECO display features curved or straight bars relating information
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`about acceleration, coasting, and constant speed. In one version of the display, an icon
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`corresponding to the bar is illuminated green under certain conditions. In another version of the
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`display, the bars start at 50 percent and go up or down depending on certain factors.
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`(Dkt. 112, p. 12.) Defendant FCA’s ECO Index Gauge shows a number between 0 and 5, which
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`represents the “efficiency of the driving style.” Defendant FCA’s ECO display illuminates the
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`word ECO when a person is driving in a fuel efficient manner. Defendant FCA’s Fuel Saver
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`Mode display shows the words Fuel Save Mode when the engine is operating on four cylinders.
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`6
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`Case: 1:13-cv-08413 Document #: 144 Filed: 09/21/16 Page 7 of 10 PageID #:4480
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`Plaintiff argues that all of these features notify the driver when they are, or are not,
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`operating the vehicle in a fuel efficient manner. Defendants argue that the displays provide
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`information about driving style and do not notify the driver of changes to fuel economy.
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`Defendants also argue that the same display could indicate increased fuel efficiency - for
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`example going from 49 percent to 50 percent - or decreased efficiency - for example going from
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`51 percent to 50 percent. The parties dispute what information the ECO displays and Fuel Saver
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`Mode display conveys and whether those displays notify the driver of a change in fuel efficiency.
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`Whether the ECO displays and Fuel Saver Mode display issue notifications that inform the driver
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`more fuel is being provided to the engine than necessary is a question of material fact.
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`MPG and Range Displays
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`Plaintiff alleges that Defendants Mercedes’ MPG and Range display meets the term “fuel
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`overinjection notification circuit.” (Dkt. 113, ¶ 31.) Plaintiff alleges that Defendant FCA’s
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`Average Fuel Economy display and MPG display meet the term “fuel overinjection notification
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`circuit.” (Id., ¶¶ 63-65.) Defendants Mercedes’ MPG and Range display shows the level of fuel
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`consumption in miles per gallon in a bar and shows the range of the vehicle.
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`7
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`Case: 1:13-cv-08413 Document #: 144 Filed: 09/21/16 Page 8 of 10 PageID #:4481
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`Defendant FCA’s Average Fuel Economy display and MPG display show the average fuel
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`consumption in miles per gallon and the current fuel consumption in miles per gallon in real
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`time.
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`Plaintiff argues that, when the current MPG falls below the average MPG, these displays
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`show that there is reduced fuel economy. Plaintiff also argues that the range combined with the
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`current fuel consumption conveys information to the driver regarding fuel economy. Defendants
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`argue that these displays are merely providing information and do not notify the driver that more
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`fuel than necessary is being consumed. Defendants also argue that some of this information is
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`not displayed at the same time and, therefore, cannot notify the driver that more fuel than
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`necessary is being consumed. Whether the MPG and Range displays issue notifications that
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`8
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`Case: 1:13-cv-08413 Document #: 144 Filed: 09/21/16 Page 9 of 10 PageID #:4482
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`inform the driver more fuel is being provided to the engine than necessary is a question of
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`material fact.
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`Check Engine or Engine Malfunction Light
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`Plaintiff alleged that the Check Engine or Engine Malfunction Lights infringed under
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`Defendants’ proposed construction of the term “fuel overinjection notification circuit.”
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`However, Plaintiff only alleged that the Check Engine or Engine Malfunction Lights infringed
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`under Defendants’ proposed construction. Since Defendants’ proposed construction was not
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`adopted, this issue is moot.
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`Doctrine of Equivalents
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`Plaintiff argues that if the Court decides that § 112(f) applies, the accused features may
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`still infringe under the doctrine of equivalents. “Literal infringement of a § 112[(f)] claim
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`requires that the relevant structure in the accused device perform the identical function recited in
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`the claim and be identical or equivalent to the corresponding structure in the specification.”
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`Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320 (Fed. Cir. 2003).
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`Specifically, “an accused device may infringe under the doctrine of equivalents if each element
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`performs substantially the same function, in substantially the same way, to achieve substantially
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`the same result.” Id. (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40
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`(1997)). The purpose of the doctrine of equivalents is to allow the patentee “to claim those
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`insubstantial alterations that were not captured in drafting the original patent claim but which
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`could be created through trivial changes.” AquaTex Indus., Inc. v. Techniche Solutions, 419 F.3d
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`1374, 1381 (Fed. Cir. 2005) (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
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`U.S. 722, 733 (2002)).
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`9
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`Case: 1:13-cv-08413 Document #: 144 Filed: 09/21/16 Page 10 of 10 PageID #:4483
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`Defendants argue that it is too late for Plaintiff to amend their infringement contentions to
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`include the doctrine of equivalents. It should be noted that Plaintiff has not submitted its Final
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`Infringement Contentions yet; but, even if that were the case, the Local Patent Rules allow for
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`amendment of final contentions “upon a showing of good cause and absence of unfair prejudice
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`to opposing parties.” LPR 3.4. An example of a circumstance supporting a finding of good
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`cause is: “a claim construction by the Court different from that proposed by the party seeking
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`amendment.” Id. A motion to amend final contentions because of a claim construction ruling
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`shall be filed, along with the proposed amendments, within fourteen days of the entry of a claim
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`construction ruling. Id. The Local Patent Rules do not preclude Plaintiff from filing a motion to
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`amend their contentions, unless there is undue prejudice, because Plaintiff’s constructions were
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`not adopted in several instances.
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`At this point, it is premature to determine whether the doctrine of equivalents is available
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`to Plaintiff, as it has not moved to amend its infringement contentions.
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`CONCLUSION
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`For the reasons set forth above, Defendants’ joint Motions for Summary Judgment of
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`Indefiniteness or Noninfringement [13-cv-8413, Dkt. 104; 13-cv-8419, Dkt. 80] are denied.
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`Plaintiff’s cross-Motions for Summary Judgment of Infringement [13-cv-8413, Dkt. 111;
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`13-cv-8419, Dkt. 87] are denied.
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` September 21, 2016
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`JOHN W. DARRAH
`United States District Court Judge
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`10
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`Date:
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