IN THE UNITED STATES DISTRICT COURT FOR THE
`EASTERN DISTRICT OF WISCONSIN
`
`MILWAUKEE ELECTRIC TOOL
`CORPORATION METCO BATTERY
`TECHNOLOGIES LLC AC COMMERCIAL
`OFFSHORE DE MACAU LIMITADA and
`TECHTRONIC INDUSTRIES CO LTD
`
`Plaintiffs
`
`HITACHI KOKI CO LTD and HITACHI
`KOKI USA LTD
`
`Defendants
`
`Case No 09-cv-00948-WEC
`PATENT CASE
`JURY DEMANDED
`
`EXPERT REPORT OF DR MEHRDAD MARK EHSANI REGARDING CLAIM
`CONSTRUCTION
`
`rE1EHSANI DEP EXHIBIT
`Iu
`
`LKe
`
`It4lJc
`
`Case 209-cv-00948-WEC
`
`Filed 05/25/12
`
`Page
`
`of 62 Document 98-8
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`BNA/Brose Exhibit 1058
`IPR2014-00416
`Page 1
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`

`

`Qualifications
`
`My qualifications for forming the opinions in this report are summarized below and are
`in my professional CV which is attached as Exhibit
`presented in more detail
`in one case
`have provided testimony at deposition hearing or trial
`the past fours years
`Artesyn Technologies Inc 205-cv-00463-JDL E.D Tex on behalf of
`Power-One Inc
`
`to this report
`
`In
`
`Power-One Inc.
`
`am tenured Professor in the Department of Electrical Engineering at the Texas AM
`University Texas AM in College Station Texas where
`specialize in power electronics
`battery energy storage systems and their related technologies
`hold several academic chairs at
`Texas AM University including the Robert
`Kennedy Endowed Chair of Electrical
`
`Engineering
`
`am the Founder and Director of the Advanced Vehicle Systems Research Program and the
`Power Electronics and Motor Drives Laboratory which is one of the first university power
`electronics and energy storage systems teaching and research programs in the United States
`This program is considered one of the top three programs in the US and one of the best in the
`world For my work with this program received the Institute of Electrical and Electronics
`Engineers IEEE Outstanding Teaching Award in 2003 which is the top academic award in this
`
`field
`
`received my B.S and M.S degrees from the University of Texas at Austin in 1973 and
`1974 respectively and my Ph.D from the University of Wisconsin-Madison in 1981 all
`electrical engineering
`
`in
`
`have organized two undergraduate
`
`AM Many of these courses have been on the topic of power converters battery energy
`
`and five graduate courses in power electronics at Texas
`
`storage and management
`conducted research and supervised graduate theses on these topics In addition
`
`their system controls and issues for various applications
`
`have also
`
`have also
`
`published several papers and obtained patents in this and related technical areas
`
`was one of the founders of the IEEE Power Electronics Society in the early 1980s and
`
`served on its founding Administrative Council and chaired its sub committees for many years
`This professional society is the main forum for power electronics and battery management
`systems specialists and organizes several annual conferences and has
`journal for publication of
`state of the art papers in power electronics
`have chaired many of these international
`
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`

`conferences and their sessions and have been
`
`reviewer for the publications of this society for
`
`nearly two decades
`
`have also served in positions of leadership in power electronics and its applications in other
`professional societies including IEEE Industry Application Society IEEE Industrial Electronics
`Society IEEE Vehicular Technology Society and Society of Automotive Engineers SAE
`have received numerous honors and awards from these societies for my contributions to power
`electronics technologies and its state of the art such as the Avant Garde Award from IEEE
`have been elected Fellow of both IEEE and SAE which is the
`Vehicular Technology Society
`fraction of one percent of the membership of these professional
`
`highest ranking given to
`
`societies
`
`have been
`
`consulting engineer to over sixty companies in the US and internationally in
`power electronics battery energy storage systems and their applications including applications
`have also given numerous power electronics
`related to power tools over the past thirty years
`and energy storage and controls short courses and seminars in the US and all over
`the world for
`continuing education of engineers in companies and government agencies
`
`am the author or co-author of over
`
`three hundred published papers thirteen books and over
`twenty patents in power electronics energy storage and management systems and their
`have authored is included in my professional CV
`list of all publications that
`
`applications
`
`10
`
`am being compensated at
`rate of $375 per hour for my work in this case
`compensated at the same rate for any deposition
`appear as witness at
`give in this case or if
`any trial or hearing My compensation does not depend on the outcome of this litigation
`
`will be
`
`II Subject matter of opinions
`have been engaged by Howrey LLP counsel of record for Plaintiffs Milwaukee Electric
`11
`Tool Corporation Metco Battery Technologies LLC AC Commercial Offshore De Macau
`Limitada and Techtronic Industries Co Ltd Plaintiffs in this case to provide my expert
`opinion on certain issues related to claim construction Specifically
`have been asked to provide
`an opinion on certain of the terms identified by the parties for construction in U.S Patent No
`7164257 the 257 patent U.S Patent No 7176654 the 654 patent U.S Patent No
`7323847 the 847 patent U.S Patent No 7508167 the 167 patent and U.S Patent
`No 7554290 the 290 patent
`
`III
`
`12
`
`Materials reviewed
`
`reviewed the following materials in preparing this report
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`Case 209-cv-00948-WEC
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`The 257 patent
`The654 patent
`The 847 patent
`
`Thel67patent
`The 290 patent
`The file histories of the above-mentioned patents
`
`Prior art cited during the prosecution of the above-mentioned patents
`
`Technical
`
`and lay dictionaries
`
`Relevant
`
`case law
`
`IV The Law of Claim Construction
`am informed that claim construction is an issue of law for the Court to decide Marknan
`13
`Wesiview Instruments 517 U.S 370 388 1996 am also informed that
`claims is simply way of elaborating on the claim language in order to understand and explain
`Brinkmann Corp 418 F.3d 1379 1382
`but not to change the scope of the claims Terlep
`Fed Cir 2005
`
`the construction of
`
`14
`
`the context of the invention
`
`in
`
`in the art
`
`am informed that the words of
`claim are generally given their ordinary and customary
`WHCorp 415 F.3d 1303 1312 Fed Cir 2005 en banc The ordinary
`meaning Phillips
`the term would have to
`and customary meaning is the meaning that
`person of ordinary skill
`the art in question at the time of the invention Id at 1313
`person of ordinary skill
`is presumed to have read the patents specification and prosecution history to better understand
`Id am also informed that
`in determining the ordinary meaning of
`claim term the Court should consult all of the intrinsic evidence e.g the claims themselves
`lesser extent extrinsic evidence such as
`the specification and the prosecution history and to
`dictionaries Id at 1313 13 16-18 Finally am informed that
`claim is amenable to more
`than one construction it should when it
`is reasonably possible to do so be construed to preserve
`Cleveland GolfCo 242 F.3d 1376 1384 Fed Cir 2001
`
`its validity Karsten Mfg Corp
`
`if
`
`that
`
`am informed
`
`15 With regard to the construction of certain terms under 35 U.S.C 112
`claim term that does not use the word means will trigger
`rebuttable presumption that
`does not apply CCS Fitness Inc
`Brunswick Corp 288 F.3d 1359 1369
`35 U.S.C 112
`Fed Cir 2002
`am also informed that the presumption can be rebutted only if
`the claim term
`function without reciting sufficient
`
`fails to recite sufficiently definite structure or recites
`am further informed that
`structure for performing that function Id
`sufficiently definite structure if the claim term is used in common parlance or by persons of skill
`broad class of structures and
`in the pertinent art to designate structure even if the term covers
`even if the term identifies the structures by their function Lighting World Inc
`Lighting Inc 382 F.3d 1354 1360-61 Fed Cir 2004
`
`claim term recites
`
`Birchwood
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`in the Art
`
`Person of Ordinary Skill
`in the art for the 290 patent 257 patent 654
`16 In my opinion
`person of ordinary skill
`patent 847 patent and 167 patent would have
`Bachelors degree in Electrical Engineering
`least two years of experience designing cordless power tools including experience with
`and at
`battery design and battery makeup
`
`VI
`The 290 Patent
`17 The 290 patent was filed on July 20 2007 and was issued on June 30 2009 The named
`inventors are Todd
`Johnson Dennis Grzybowski Mark
`Rosenbecker
`Kubale Jay
`Meyer Jeffrey
`Zeiler and Kevin
`Scheucher Gary
`Glasgow
`
`Karl
`
`am informed that the parties dispute the appropriate construction of the following terms
`18
`from the 290 patent
`hand held power tool and
`battery cells capable of producing an
`average discharge current greater than or equal to approximately 20 amps
`
`19 With regard to the term hand held power tool it
`is my opinion that the term when properly
`construed means
`power tool that can be held in and supported by the operators hand or
`hands Support for this construction is found throughout
`the specification of the 290 including
`specific examples of hand held power tools such as driver drills and circular saws See e.g
`290 at 541-45 947-54 1013-26 Figs hA 55 56 Claim 10
`
`proposed construction
`
`20 Defendants proposed construction
`power tool capable of being operated while held in the
`hand is flawed for
`number of reasons In particular
`believe that under Defendants
`hand held power tool would include
`tool that could simply be
`operated by hand even if the entire tool could not held in the operators hand while it
`is being
`construction is contrary to how person of ordinary skill
`operated Such
`in the art would
`understand this term
`
`21 With regard to the term battery cells capable of producing an average discharge current
`to approximately 20 amps it
`is my opinion that the term when properly
`than or equal
`greater
`construed means the battery cells when configured together in
`battery pack are capable of
`producing reasonably close to 20 amps of discharge current or greater over the course of
`delivering their entire rated capacity Support for this construction is found in the specification
`and prosecution history of the 290 See e.g 290 at 1013-26 Declaration of Gary Meyer at 2-
`Gary Meyefs Declaration in particular sheds considerable
`light on the proper construction
`of this term and makes clear that
`battery pack meeting the limitations of the claims must have
`battery pack are able to produce reasonably close to 20 amps of
`cells that when configured in
`discharge current or greater over
`the course of delivering their entire rated capacity and not
`short duration as proposed by Defendants See Declaration of Gary Meyer at 2-6
`
`just for
`
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`22 Defendants proposed construction each of plurality of battery cells having the ability to
`discharge about 20 amps of current over any non-trivial period of time is flawed for
`number
`of reasons For example Defendants proposed construction would render the claim invalid in
`light of the prototype pack tested by Gary Meyer and described in his declaration During
`prosecution the applicants made clear and the examiner appeared to understand that the
`prototype pack was prior art As is discussed above
`believe that such
`construction cannot be
`claim is amenable to more than one construction it should when it
`correct because if
`reasonably possible to do so be construed to preserve its validity Karsten Mfg Corp
`Cleveland Golf Co 242 F.3d 1376 1384 Fed Cir 2001 Furthermore the phrase non-trivial
`has no established meaning in the art and would render the claim hopelessly vague
`
`is
`
`VII The 257 Patent
`23 The 257 patent was filed on December 30 2005 and was issued on January 16 2007 The
`Johnson Dennis Grzybowski Mark
`named inventors are Todd
`Kubale Jay
`Zeiler and Kevin
`Meyer Jeffrey
`Scheucher Gary
`
`Rosenbecker Karl
`
`Glasgow
`
`am informed that the parties dispute the appropriate construction of the following terms
`24
`froth the 257 patent
`state of charge
`control circuit supported by the housing
`control circuit configured to monitor the respective state of charge of each of the battery cells
`the control circuit
`state of charge of the battery pack and
`battery pack temperature
`further configured to control at least one function of the battery pack based on the monitored
`respective states of charge of the battery cells the monitored state of charge of the battery pack
`heat sink in heat transfer relationship with the
`or the monitored battery pack temperature
`the heat sink is in heat transfer
`switch and operable to dissipate heat from the switch and
`relationship with the controller and operable to dissipate heat from the controller
`
`is my opinion that the term when properly
`25 With regard to the term state of charge it
`construed means the amount of charge remaining This construction is supported by the
`specification and is consistent with how person of ordinary skill
`in the art would understand
`See e.g 257 at 813-25 837-42 865-98 919-28
`this term having read the specification
`223-28 2312-29
`947-50 967-105 1040-49 1061-11101535-41
`
`26 Defendants proposed construction of the amount of charge remaining at
`given time for
`battery cell when used to modify battery cell and the amount of charge remaining at
`battery pack when used to modify battery pack is too limiting because it
`time for
`limitation to the term that
`inappropriately adds
`is not supported by the specification
`temporal
`and is inconsistent with how person of ordinary skill
`in the art would understand this term
`
`given
`
`27 With regard to the term control circuit supported by the housing it
`is my opinion that the
`term when properly construed means control circuit connected either directly or indirectly to
`
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`the housing This construction is supported by the specification and is not inappropriately
`limiting like Defendants proposed construction
`function and is
`that performs
`located entirely within and mounted to the battery pack housing See e.g 257 at 534-46
`664-73 Indeed Defendants proposed construction requiring that the circuit be mounted to the
`battery pack housing would exclude embodiments explicitly disclosed in the specification
`See
`e.g 257 at 664-73 In some constructions the flexible circuit 145 can wrap around one or
`more cells 80 or wrap around the interior of the housing 65.
`
`control
`
`circuit
`
`it
`
`28 With regard to the term control circuit configured to monitor the respective state of charge
`of each of the battery cells
`state of charge of the battery pack and
`battery pack temperature
`is my opinion that the term when properly construed means control circuit capable of
`monitoring the amount of charge remaining in each of the battery cells the amount of charge
`battery pack temperature Such
`construction is consistent
`remaining in the battery pack and
`in the art having read the specification would
`with the way that
`person of ordinary skill
`interpret this term See e.g 257 at 813-42 963-105 1040-1110 1142-51
`
`29 Defendants proposed construction of
`that obtains information regarding the state
`of charge of each of the plurality of battery cells of the battery pack as well as the state of
`
`circuit
`
`temperature of the battery
`charge of the battery pack and information indicative of the present
`pack is too limiting to the extent that it suggests that the control circuit must constantly and
`simultaneously obtain all of the listed information Such
`construction therefore would be
`inconsistent with the specification See e.g 257 at 813-42 963-105 1040-1110 1142-51
`
`30 With regard to the term the control circuit
`of the battery pack based on the monitored respective states of charge of the battery cells the
`
`further configured to control at least one function
`
`monitored state of charge of the battery pack or the monitored battery pack temperature it
`my opinion that the term when properly construed means the control circuit
`further configured
`least one function of the battery pack after considering one or more of the monitored
`to control at
`amount of charge remaining in the battery cells the monitored amount of charge remaining in
`the battery pack or the monitored battery pack temperature though other information can also
`be used or considered This construction is supported by the specification and consistent with
`how
`in the art would understand this term having read the
`person of ordinary skill
`See e.g 257 at 813-42 963-105 1040-1110 1142-51
`
`specification
`
`is
`
`31 Defendants proposed construction the circuit controls at least one function of the battery
`pack based on at least one of the following criteria
`the present state of charge of each one of
`the plurality of battery cells ii
`the present state of charge of the battery pack or iii
`the present
`temperature of the battery pack is too limited because
`it precludes the consideration of other
`information besides one of the three pieces of information specifically mentioned for controlling
`
`the battery pack
`
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`32 With regard to the term heat sink in heat transfer relationship with the switch and operable
`to dissipate heat from the switch it
`is my opinion that the term when properly construed means
`device configured to dissipate heat from the switch This construction is supported by both
`the specification and other claims of the 257 patent and is also consistent with how person of
`in the art would understand this term See e.g 257 at 1657-61 1833-35 Figs
`ordinary skill
`13A-C 15 16 Claim see also heat sink in Websters Collegiate Dictionary 10th Ed
`substance or device for the absorption or dissipation of unwanted heat as from
`defined as
`process or an electronic device
`
`33 Defendants proposed construction
`metallic mounting base or
`
`heat exchange structure in the form of
`
`heavy
`
`set of radiating fins in physical contact with
`hot portion the switch
`and operable to collect and remove heat generated by the switch by conducting
`the heat away
`number of reasons To start Defendants proposed construction
`from the switch is flawed for
`inappropriately limits the term heat sink to
`structure made of metal which is contrary to
`number of the embodiments explicitly disclosed in the specification See e.g 257 at 1833-35
`noting that the heat sink may be formed of metal polymer or other material with high thermal
`conductivity Furthermore am informed that Defendants requirement that
`the heat sink be in
`physical contact with the switch runs afoul of the doctrine of claim differentiation Compare
`257 Claim with 257 Claim Finally the particular structure of the heat sink included in
`Defendants proposed construction is far too limiting inconsistent with how person of ordinary
`in the art would understand the term and contrary to its readily accepted definition See
`heat sink in Websters Collegiate Dictionary lO Ed defined as
`substance or device for
`the absorption or dissipation of unwanted heat as from process or an electronic device
`
`skill
`
`34 With regard to the term the heat sink is in heat transfer relationship with the controller and
`is my opinion that the term when properly
`operable to dissipate heat from the controller it
`device configured to dissipate heat from the controller This construction is
`
`construed means
`
`supported by and consistent with the specification for the reasons discussed above regarding the
`nearly identical phrase See e.g 257 at 1657-61 1833-35 Figs 13A-C 15 16 Claim
`
`35 Defendants construction the structure being in physical contact with
`hot portion of the
`controller and operable to collect and remove heat generated by the controller by conducting
`heat away from the controller is again too limiting for all of the reasons discussed above
`regarding the proper construction of the term heat sink in heat transfer relationship with the
`switch and operable to dissipate heat from the switch Additionally the heat sink need not be in
`for at least these same reasons
`physical contact with the controller
`
`the
`
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`VIII The 654 Patent
`36 The 654 patent was filed on November 20 2003 and was issued on February 13 2007 The
`Rosenbecker Kevin
`Glasgow Todd
`named inventors are Gary
`Meyer Jay
`Scheucher
`
`Johnson
`
`and Karl
`
`than the first
`
`am informed that the parties dispute the appropriate construction of the following terms
`37
`from the 654 patent
`nominal voltage range
`first nominal voltage range
`the second voltage range being different
`second nominal voltage range
`hand-held power tool
`voltage range
`state of charge and
`operable to identify the state of charge of the first Lithium-based battery cell and to charge the
`first battery based at least in part on the state of charge of the first Lithium-based battery cell
`
`battery charger
`
`is
`
`38 With regard to the terms nominal voltage range first nominal voltage range and second
`these terms when properly construed mean
`is my opinion that
`nominal voltage range it
`range
`range for the designated expected voltage and
`for the designated expected voltage
`second range for the designated expected voltage This construction is supported by the
`in the art would
`specification and consistent with the understanding
`person of ordinary skill
`have of this term See e.g 654 at 327-37 541-67 1839-192 1936-60
`
`first
`
`39 Defendants constructions for these terms any voltage where the battery can reliably
`operate for both nominal voltage range and first nominal voltage range and any voltage
`where the battery can reliably operate wherein the second nominal voltage range is non-
`overlapping with the first nominal voltage range is inconsistent with how person of ordinary
`skill having read the specification would understand these terms Additionally Defendants
`construction for second nominal voltage range is too narrow and improperly imports an
`
`arbitrary limitation into the claim that
`
`the ranges cannot overlap without any support for such
`
`an interpretation in the specification
`
`40 With regard to the term the second voltage range being different
`than the first voltage
`the term when properly construed means the second voltage range
`is my opinion that
`range it
`the same as the first voltage range This construction is consistent with the specification
`is not
`and the readily understood meaning of the word different See e.g 654 at 327-37 541-67
`1839-192 1936-60 see also different in Websters Collegiate Dictionary 10th Ed defined
`as not the same as
`
`41 Defendants construction the second voltage range is non-overlapping with the first
`nominal voltage range is again too narrow In particular Defendants construction improperly
`imports an arbitrary limitation into the claim that the ranges cannot overlap without any
`support for such an interpretation in the specification
`
`42 With regard to the term hand-held power tool it
`is my opinion that the term when properly
`power tool that can be held in and supported by the operators hand or
`construed means
`
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`hands for the same reasons discussed above with respect
`Claims 58 74 Figs iSA-B
`
`to the 290 patent See also 654 at
`
`is my opinion that the term when properly
`43 With regard to the term state of charge it
`construed means the amount of charge remaining for the same reasons discussed above with
`to the 257 patent See also 654 at 1616-1741
`
`respect
`
`44 With regard to the term battery charger
`in part on the state of
`Lithium-based battery cell and to charge the first battery based at least
`is my opinion that the term when properly
`is operable to identify the amount of charge remaining in the
`
`charge of the first Lithium-based battery cell it
`
`construed means battery charger
`
`is operable to identify the state of charge of the first
`
`first Lithium-based battery cell and to charge the first battery after considering the amount of
`
`charge remaining in the first Lithium-based battery cell though other information can also be
`See e.g 654 at
`used or considered This construction is supported by the specification
`1616-1741
`
`45
`
`am informed that Defendants contend that this term should be construed under 35 U.S.C
`and that their proposed construction is Function identify the individual state of charge
`in part on the
`of the first Lithium-based battery cell and to charge the first battery based at least
`
`112
`
`individual state of charge of the first Lithium-based battery cell Structure control device
`
`microcontroller microprocessor or controller specifically programmed to identify the individual
`
`informed that
`
`recites sufficiently definite structure if
`
`of skill
`
`state of charge of the first Lithium-based battery cell and to charge the first battery based at least
`am also
`state of charge of the first Lithium-based battery cell
`in part on the individual
`claim term that does not use means will trigger
`rebuttable presumption that
`does not apply CCS Fitness Inc
`Brunswick Corp 288 F.3d 1359 1369
`35 U.S.C 112
`Fed Cir 2002 Additionally
`am informed that the presumption can only be rebutted if the
`claim term fails to recite sufficiently definite structure or recites
`Id am further informed that
`sufficient structure for performing that function
`the claim term is used in common parlance or by persons
`broad class of
`in the pertinent art to designate structure even if the term covers
`structures and even if the term identifies the structures by their function Lighting World Inc
`Birchwood Lighting Inc 382 F.3d 1354 1360-61 Fed Cir 2004 It
`is my opinion that
`term which recites battery charge recites sufficiently definite structure to
`person of skill
`the art and should not be construed under 35 U.S.C 112
`person of ordinary
`In particular
`charger would have circuitry sufficient
`to perform the claimed
`
`function without
`
`reciting
`
`claim term
`
`the
`
`in
`
`skill
`
`in the art would know that
`
`functions
`
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`IX The 847 Patent
`46 The 847 patent was filed on December 28 2006 and was issued on January 29 2008 The
`Rosenbecker Kevin
`Glasgow Todd
`named inventors are Gary
`Meyer Jay
`Johnson
`Scheucher
`
`and Karl
`
`am informed that the parties dispute the appropriate construction of the following terms
`47
`from the 847 patent
`nominal voltage range and
`state of charge
`
`48 With regard to the term nominal voltage range it
`is my opinion that
`properly construed means
`range for the designated expected voltage for the same reasons
`to the 654 patent See also 847 at 327-37 541-67 1840-193
`
`discussed above with respect
`
`the term when
`
`1937-61
`
`the term when properly
`is my opinion that
`49 With regard to the term state of charge it
`construed means the amount of charge remaining for the same reasons discussed above with
`to the 257 patent See also 847 at 1617-1742
`
`respect
`
`The 167 Patent
`50 The 167 patent was filed on August 10 2007 and was issued on March 24 2009 The
`Rosenbecker Kevin
`Glasgow Todd
`named inventors are Gary
`Meyer Jay
`Johnson
`Scheucher
`
`and Karl
`
`in part
`
`controller is operable to monitor the
`each battery cell of the
`
`am informed that the parties dispute the appropriate construction of the following terms
`51
`from the 167 patent
`sense terminal
`individual state of charge
`controller being
`operable to control the charging current being supplied to the battery pack based at least
`each battery cell of the
`on the individual state of charge of at least one battery cell
`plurality of battery cells is individually tapped
`respective individual state of charge thereof via the sense terminal
`its respective individual state of
`plurality of battery cells being individually tapped such that
`the controller being operable to control
`state of
`
`charge is monitorable
`
`charger sense terminal
`the charging current being supplied to the battery based at least in part on an individual
`the
`charge of at least one battery cell monitored via the charger sense terminal and
`the charging current being supplied to the battery based at
`controller being operable to control
`least in part on an individual state of charge of at least one battery cell wherein the individual
`is communicated to the controller via the sense
`
`state of charge of at least one battery cell
`terminal
`
`and 12 it
`52 With regard to the term sense terminal in claims
`is my opinion that
`terminal used to communicate information about one or more
`when properly construed means
`characteristic of the battery pack This construction is supported by the specification and
`
`the term
`
`Case 209-cv-00948-WEC
`
`Filed 05/25/12
`
`Page 12 of 62 Document 98-8
`
`11
`
`BNA/Brose Exhibit 1058
`IPR2014-00416
`Page 11
`
`

`

`consistent with how
`in the art would understand this term See e.g
`person of ordinary skill
`167 at 430-38 1011-22 1061-117 1730-51 Figs
`5A-B 13
`
`53 Defendants proposed constructions for this term terminal separate and distinct from the
`positive terminal and negative terminal of the battery charger positioned in the battery charger
`is used to transfer information between the battery pack and the battery charger claims
`that
`terminal separate and distinct from the positive terminal and negative terminal of the
`12 and
`
`battery pack that
`
`is used to transfer information between the battery pack and the battery
`charge claim appears to attempt to inappropriately limit
`the term through careful
`wordsmithing In particular to the extent Defendants proposed construction suggests that the
`is in all manner separate from the positive and negative terminals
`terminal
`for example
`construction would inappropriately exclude embodiments
`such
`always electrically separate
`explicitly disclosed in the specification See e.g 167 at 430-38 1011-22 1061-117 1730-
`5A-B 13
`51 Figs
`
`54 With regard to the term individual state of charge it
`is my opinion that the term when
`properly construed means the amount of charge remaining in
`battery cell for the same
`to the term state of charge in the 257 patent See also
`reasons discussed above with respect
`167 at 161-1725
`
`battery cell it
`
`55 With regard to the term controller being operable to control the charging current being
`supplied to the battery pack based at least in part on the individual state of charge of at least one
`is my opinion that the term when properly construed means controller being
`the charging current being supplied to the battery pack after considering the
`operable to control
`amount of charge remaining in at least one battery cell though other information can also be
`used or considered This construction is supported by the specification and consistent with how
`in the art would understand this term having read the specification
`person of ordinary skill
`See e.g 167 at 161-1725 Figs
`16
`
`56
`
`112
`
`am informed that Defendants contend that this term should be construed under 35 U.S.C
`their proposed construction is Function control
`the charging current being
`supplied to the battery pack based on the individual state of charge of at least one battery cell
`
`and that
`
`Structure microprocessor specifically programmed to control
`the charging current being
`supplied to the battery pack based on the individual state of charge of at least one battery cell
`claim term that does not use means will trigger
`am also informed that
`does not apply CCS Fitness Inc
`Brunswick Corp 288
`presumption that 35 u.s.c
`112
`F.3d 1359 1369 Fed Cir 2002 Additionally
`am informed that the presumption can only be
`rebutted if
`the claim term fails to recite sufficiently definite structure or recites
`function
`am further informed that
`without reciting sufficient structure for performing that function Id
`the claim term is used in common parlance
`broad
`
`claim term recites sufficiently definite structure if
`or by persons of skill
`
`in the pertinent art to designate structure even if the term covers
`
`rebuttable
`
`Case 209-cv-00948-WEC
`
`Filed 05/25/12
`
`Page 13 of 62 Document 98-8
`
`12
`
`BNA/Brose Exhibit 1058
`IPR2014-00416
`Page 12
`
`

`

`class of structures and even if
`
`the term identifies the structures by their function Lighting
`BirchwoodLighting Inc 382 F.3d 1354 1360-61 Fed Cir 2004 It
`is my
`World Inc
`opinion that the term which recites controller recites sufficiently definite structure to
`person
`in the art and should not be construed under 35 U.S.C 11