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
`TECHTRONTC INDUSTRIES CO LTD
`
`Plaintiffs
`
`HITACHI KOKJ CO LTD and HITACHI
`KOKJ USA LTD
`
`Defendants
`
`Case No 09-cv-00948-WEC
`PATENT CASE
`JURY DEMANDED
`
`REBUTTAL EXPERT REPORT OF DR MEHRDA.D MARK EHSANI REGARDING
`CLAIM CONSTRUCTION
`
`EHSANI DEl EXHIBIT
`
`Case 209-cv-00948-WEC
`
`Filed 05/25/12
`
`Page
`
`of 19 Document 98-9
`
`BNA/Brose Exhibit 1059
`IPR2014-00416
`Page 1
`
`

`

`Qualifications
`
`My qualifications for forming the opinions in this report are included in my Expert Report
`Regarding Claim Construction which was served on January 14 2011
`incorporate by
`reference those qualifications as if set forth entirely herein
`
`II Subject matter of opinions
`have been engaged by Howrey LLP counsel of record for Plaintiffs Milwaukee Electric
`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
`
`have been engaged by Howrey LLP counsel of record for Plaintiffs in this
`Additionally
`case to respond to the opinions expressed by Dr van Schalkwijk in the Expert Report of Walter
`van Schalkwijk Ph.D on the Issues of Claim Construction as to U.S Patent Nos 7554290
`7164257 7176654 7323847 and 7508167 served January 14 2011
`
`III Materials reviewed
`
`reviewed in preparing this report are included in my Expert Report Regarding
`The materials
`Claim Construction which was served on January 14 2011
`incorporate by reference those
`materials as if set forth entirely herein In addition to those materials also reviewed U.S
`Patent No 7157882 the Expert Report of Walter van Schalkwijk Ph.D on the Issues of Claim
`Construction as to U.S Patent Nos 7554290 7164257 7176654 7323847 and 7508167
`served January 14 2011 and the exhibits thereto
`
`Case 209-cv-00948-WEC
`
`Filed 05/25/12
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`

`

`IV The Law of Claim Construction
`summary of the relevant case law regarding claim construction is included in my Expert
`Report Regarding Claim Construction which was served on January 14 2011
`incorporate by
`reference that summary as if set forth entirely herein
`
`Person of Ordinary Skill in the Art
`My opinion regarding the level of skill of
`person of ordinary skill
`Patent 257 Patent 654 Patent 847 Patent and 167 Patent
`is included in my Expert Report
`Regarding Claim Construction which was served on January 14 2011
`incorporate by
`reference that opinion as if set forth entirely herein
`
`in the art for the 290
`
`understand that
`
`it
`
`is his opinion that
`
`the term
`
`VI
`The 290 Patent
`After reviewing Dr van Schalkwijks Report
`battery cells capable of producing an average discharge current greater than or equal
`approximately 20 amps should be construed as each of plurality of battery cells having the
`ability to discharge about 20 amps of current over any non-trivial period of time believe that
`his opinion regarding the proper construction of this term is incorrect for several
`reasons
`is my opinion that the term when
`expressed in my January 14 2011 Report
`Additionally as
`properly 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
`
`to
`
`First
`
`disagree with Dr van Schalkwijks opinion that each of the battery cells in the
`plurality of battery cells must have the ability to discharge about 20 amps of current To start
`Claim states that the claimed battery pack has
`plurality of battery cells supported by the
`housing with the battery cells being capable of producing an average discharge current greater
`than or equal to approximately 20 amps See 290 Patent at Claim In my opinion the
`reference to the battery cells refers back to the plurality of battery cells as configured in the
`
`battery pack and not to the individual cells themselves
`
`believe that Dr van Schalkwijks opinion that each of the plurality of battery
`Additionally
`cells must have the ability to discharge about 20 amps of current is contradicted by the intrinsic
`including the Declaration of Gary Meyer Mr
`evidence in the file history of the 290 Patent
`Meyers declaration makes clear that he tested whether
`fully charged Prototype Pack could
`failing Declaration of Gary Meyer Under 37 C.F.R 1.132
`deliver 20 amps of current without
`emphasis added As such
`person of ordinary skill
`in the art having
`at
`reviewed the intrinsic evidence including the Declaration of Gary Meyer would understand the
`phrase the battery cells being capable of producing an average discharge current greater than or
`
`believe that
`
`Case 209-cv-00948-WEC
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`to approximately 20 amps to mean that the battery cells when configured together in
`equal
`battery pack are capable of producing reasonably close to 20 amps of discharge current and not
`that each of the battery cells itself must have the ability to discharge about 20 amps of current
`
`10
`
`fails to disclose sufficient
`
`opinion that
`
`the specification of the 290 Patent
`
`in the art to connect
`
`also disagree with Dr van Schalkwijks
`information to enable of person of ordinary skill
`pure serial connection without undue
`the battery cells in any configuration other than
`experimentation and
`the preferred embodiment
`includes battery cells connected
`serial configuration supports his opinion that each of the battery cells must have the ability
`to discharge about 20 amps of current
`
`in
`
`the fact
`
`that
`
`11 As Dr van Schalkwijks Report notes the specification of the 290 Patent specifically states
`battery cells 346a-g can also be electrically connected in any suitable manner such as
`partial serial arrangement e.g
`
`that
`
`partial parallel
`
`for example in serial arrangement
`parallel arrangement
`some of the battery cells 346a-g are connected in
`serial arrangement
`arrangement e.g some of the battery cells 346a-g are connected in
`serial arrangement
`combination of serial parallel partial serial or partial parallel arrangement 290 Patent at
`1046-53 In my opinion
`person of ordinary skill
`in the art having read the specification of the
`290 Patent would readily know how to connect
`the battery cells in any of the listed
`agree with Dr van Schalkwijk that
`configurations without undue experimentation While
`battery cells are connected in pure serial arrangement
`the current through each of the cells
`is also my opinion that the same would not
`and the pack as whole would be the same it
`necessarily be true in others of the listed configurations As
`is my opinion that these
`result it
`alternate disclosed embodiments only further support my conclusion that the phrase the battery
`cells being capable of producing an average discharge current greater
`than or equal to
`approximately 20 amps means that the battery cells when configured together in
`are capable of producing reasonably close to 20 amps of discharge current
`
`if the
`
`battery pack
`
`disagree with Dr van Schalkwijks
`opinion that the cells must only have the
`12 Second
`ability to discharge about 20 amps of current over any non-trivial period oftime disagree
`reasons and instead believe that the battery cells when configured
`with this opinion for several
`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
`
`together
`
`in
`
`13 To start Dr van Schalkwijk
`proposal of any non-trivial period of time is hopelessly
`in the art and would make it
`vague has no established meaning to one of ordinary skill
`impossible for one to determine what period of time would be required to meet the limitations of
`the claims In addition Dr van Schalkwijks
`proposed construction could potentially render the
`claim invalid in light of the prototype pack tested by Gary Meyer and described in his
`declaration which is part of the intrinsic record This is because the prototype pack was able to
`discharge current of 20 amps for
`period of time that could possibly be considered
`
`produce
`
`Case 209-cv-00948-WEC
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`

`

`non-trivial under Dr van Schalkwijks definition See Declaration of Gary Meyer Under 37
`C.F.R 1.132 at 2-6 During prosecution the applicants made clear and the examiner
`explained in my January 14 2011 Report
`understood that the prototype pack was prior art As
`believe that Dr van Schalkwijks construction cannot be correct because
`am told that if
`claim is amenable to more than one construction it should when it
`is reasonably possible to do
`Cleveland Golf Co 242 F.3d
`
`so be construed to preserve its validity Karsten Mfg Corp
`1376 1384 Fed Cir 2001
`
`14 Finally the extrinsic evidence cited by Dr van Schalkwijk
`dictionary definition of
`is silent on the appropriate length of time over which the discharge
`average discharge current
`current is measured and provides no support for his position that the cells must only have the
`ability to discharge about 20 amps of current over any non-trivial period of time The words
`non-trivial appear nowhere in the dictionary definition quoted and relied on by Dr van
`and appear to be inserted by Dr van Schalkwijk without any basis or support
`Schalkwijk
`Moreover Dr Schalkwijks
`focus on delivering current for
`period of time as opposed to
`discharge ignores the distinction between the prior art prototype
`delivering current through frill
`pack tested by Gary Meyer and the claimed invention
`The pack failure described in the
`Declaration of Gary Meyer was not due to the length of the period of time that the prototype
`Instead the pack failed because it was not able to provide
`current
`pack delivered
`of approximately 20 amps throughout delivery of its entire rated capacity Thus the Gary Meyer
`Declaration demonstrates that the desired performance was
`pack capable of delivering
`current of approximately 20 amps or greater over
`the course of delivering its entire rated
`capacity For these reasons and the reasons stated in my January 14 2011 Report
`is my
`person of ordinary skill
`in the art having considered the specification and file
`opinion that
`history of the 290 Patent would understand that the phrase battery cells capable of producing
`to approximately 20 amps when properly
`than or equal
`an average discharge current 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
`
`current
`
`it
`
`VII The 257 Patent
`15 After reviewing Dr van Schalkwijks Report
`understand that
`is his opinion that
`state of charge should be construed as the amount of charge remaining at
`given time for
`battery pack and the amount of charge remaining at
`battery pack when used to modify
`battery cell when used to modify
`given time for
`believe that his opinion
`battery cell
`regarding the proper construction of this term is incorrect for several reasons Additionally as
`the term when properly construed
`expressed in my January 14 2011 Report
`is my opinion that
`means the amount of charge remaining
`
`it
`
`the term
`
`Case 209-cv-00948--WEC Filed 05/25/12
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`16 In my opinion Dr van Schalkwijks
`construction is too limiting because it
`inappropriately
`limitation to the term that is not supported by the specification and is
`adds
`temporal
`inconsistent with how person of ordinary skill
`in the art would understand this term In
`disagree with Dr van Schalkwijks decision to include the at
`given time
`limitation is his proposed construction for at least the following reasons
`
`particular
`
`17 First it
`
`is my opinion that state of charge when properly construed should not include any
`time-
`limitation because the specification regularly modifies state of charge with
`temporal
`related term when
`limitation is intended For example the specification uses words
`temporal
`such as current and present to modif state of charge when it
`intends to place
`temporal
`limitation on the term and does not use such terms when it does not intend to place such
`limitation on the term Compare e.g 257 Patent at 813-46 867-911 916-31 945-50 963-
`105 1035-43 148-12 1431-35 1535-41 229-12 2312-19 with 661-64 851-61 1046-49
`111-10 1147-51 2015-27 2325-28 Adding the temporal
`limitation to the meaning of state
`of charge is unnecessarily limiting and is inconsistent with the usage in the specification
`Additionally because the meaning of this term is unambiguous in light of the way it
`is my opinion that resorting to extrinsic evidence in the form of dictionary
`the specification it
`as Dr van Schalwijk has done
`is inappropriate and unnecessary As
`definition for support
`result in my opinion the term state of charge would be understood by one of ordinary skill
`the art to mean the amount of charge remaining and would not further include the temporal
`given time proposed by Dr van Schalkwijk
`limitation at
`
`is used in
`
`in
`
`given time in the construction as proposed by Dr van
`18 Second the inclusion ofat
`Schalkwijk implies certain level of precision or exactness in the amount of charge remaining
`that is inconsistent with embodiments explicitly disclosed in the specification
`For example the
`specification uses state of charge to describe approximations and other representations of the
`amount of charge remaining that are not exact See e.g 257 Patent at 813-25 837-46 2015-
`27 For this additional reason the reasons set forth above and the reasons included in my
`is my opinion the term state of charge would be understood by one
`January 14 2011 Report
`in the art to mean the amount of charge remaining and would not include the
`of ordinary skill
`given time proposed by Dr van Schalkwijk
`further limitation at
`
`it
`
`VIII The 654 Patent and 847 Patent
`After reviewing Dr van Schalkwijks Report
`the term
`understand that it
`is his opinion that
`state of charge as used in Claim 62 of the 654 Patent and Claim 10 of the 847 Patent should
`be construed as the amount of charge remaining at
`battery cell
`believe
`given time for
`
`that his opinions regarding the proper construction of this term are incorrect
`for several
`reasons
`is my opinion that the term when
`expressed in my January 14 2011 Report
`Additionally as
`properly construed means the amount of charge remaining
`
`it
`
`Case 209-cv-00948-WEC
`
`Filed 05/25/12
`
`Page
`
`of 19 Document 98-9
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`

`

`understand that the specifications of the 654 Patent and 847 Patent
`20
`incorporate by
`reference U.S patent application Ser No 10/720027 which subsequently issued as U.S Patent
`No 7157882 the 882 Patent See 654 Patent at 114-16 and 847 Patent at 115-17 1am
`informed that when
`incorporates by reference the contents of another patent or patent
`patent
`application the incorporated text is as much
`it was actually set
`part of the specification as if
`
`forth in its entirety therein
`
`21 As
`
`particular
`
`expressed above Dr van Schalkwijks construction is too limiting because it
`inappropriately adds
`is not supported by the specification
`limitation to the term that
`temporal
`and is inconsistent with how person of ordinary skill
`in the art would understand this term In
`disagree with Dr van Schalkwijks decision to include the at
`limitation is his proposed construction for at least the following reasons
`
`given time
`
`22 First it
`
`is my opinion that state of charge when properly construed should not
`include any
`limitation because the specification regularly modifies state of charge with time-
`temporal
`related term when
`limitation is intended For example the specification uses words
`temporal
`such as current and present to modify state of charge when it
`intends to place
`limitation on the term and does not use such terms when it does not
`intend to place such
`limitation on the term Compare e.g 654 Patent at 1618-23 1635-39 1651-54 847 Patent
`at 1619-24 1636-40 1652-55 882 Patent at 810-43 864-98 913-28 942-47 960-102
`1032-40 145-9 1428-32 1532-38 225-10 238-15 with 654 Patent at 1623-31 1640-51
`1655-1727 2044-49 847 Patent at 1624-32 1641-52 1656-1729 2044-49 882 Patent at
`658-61 848-58 1043-46 1055-117 1144-48 2011-23 2321-25 Adding the temporal
`limitation to the meaning of state of charge is unnecessarily limiting and is inconsistent with
`the usage in the specification Additionally because the meaning of this term is unambiguous in
`is my opinion that resorting to extrinsic evidence
`is used in the specification it
`light of the way it
`as Dr van Schalwijk has done
`in the form of
`dictionary definition for support
`result in my opinion the term state of charge would be
`inappropriate and unnecessary As
`in the art to mean the amount of charge remaining and
`understood by one of ordinary skill
`given time proposed by Dr van
`limitation at
`would not further include the temporal
`
`temporal
`
`is
`
`Schalkwijk
`
`23 Second the inclusion ofat
`
`Schalkwijk implies
`
`given time in the construction as proposed by Dr van
`certain level of precision or exactness in the amount of charge remaining
`that is inconsistent with embodiments explicitly disclosed in the specification
`For example the
`specification uses state of charge to describe approximations averages estimates and other
`representations of the amount of charge remaining that are not exact See e.g 654 Patent at
`1623-31 1640-54 1663-175 1713-25 847 Patent at 1624-32 1641-55 1664-176 1714-
`26 882 Patent at 810-22 834-43 2011-23 For this additional
`reason the reasons set forth
`above and the reasons included in my January 14 2011 Report
`is my opinion the term state
`in the art to mean the amount of charge
`of charge would be understood by one of ordinary skill
`
`it
`
`Case 209-cv-00948-WEC
`
`Filed 05/25/12
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`
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`

`remaining and would not include the fhrther limitation at
`
`given time proposed by Dr van
`
`Schalkwijk
`
`24 After reviewing Dr van Schalkwijks Report
`understand that
`is his opinion that the term
`23 and 57 of the 654 Patent and Claims
`and
`nominal voltage range as used in Claims
`of the 847 Patent should be construed as any voltage where the battery can reliably operate
`for several
`believe that his opinions regarding the proper construction of this term are incorrect
`expressed in my January 14 2011 Report
`is my opinion that the term
`reasons Additionally as
`when properly construed means
`range for the designated expected voltage
`
`it
`
`25 First
`
`disagree with Dr van Schalkwijk
`opinion that nominal voltage range would not
`in the art For example The Illustrated
`have an established meaning to one of ordinary skill
`dictionary relied on by Dr van Schalkwijk to support other of his
`Dictionary of Electronics
`rated nameplate value of required voltage or of
`opinions defines nominal voltage as
`THE ILLUSTRATED DICTIONARY OF ELECTRONICS 480 8th Ed 2001 attached
`This definition is consistent with my proposed construction of nominal voltage
`as Exhibit
`range and how person of ordinary skill
`in the art would understand this term
`
`voltage output
`
`fail
`
`also disagree with Dr van Schalkwijks
`26 Second
`opinion that the specifications and claims
`expressed in my January
`to make clear what the term nominal voltage range means As
`is my opinion that
`14 2011 Report
`person of ordinary skill
`in the art having reviewed the
`specifications and claims of the 654 Patent and 847 Patent would understand the term
`range for the designated expected voltage See e.g 654
`nominal voltage range to mean
`Patent at 327-37 541-67 1839-192 1936-60 847 Patent at 327-37 541-67 1840-193
`1937-61
`
`it
`
`it
`
`IX The 167 Patent
`27 After reviewing Dr van Schalkwijks Report
`understand that
`the term
`is his opinion that
`12 and 15 of the 167 Patent should be
`individual state of charge as used in Claims
`given time for an individual battery cell
`construed as the amount of charge remaining at
`believe that his opinion regarding the proper construction of this term is incorrect for several
`expressed in my January 14 2011 Report
`is my opinion that
`reasons Additionally as
`term when properly construed means the amount of charge remaining in battery cell
`
`it
`
`the
`
`incorporates by reference U.S patent
`the specification of the 167 Patent
`28
`understand that
`issued as U.S Patent No 7157882 the
`application Ser No 10/720027 which subsequently
`882 Patent See 167 Patent at 120-23
`am informed that when
`incorporates by
`patent
`reference the contents of another patent or patent application the incorporated text is as much
`it was actually set forth in its entirety therein
`part of the specification as if
`
`Case 209-cv-00948-WEC
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`
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`29 As
`
`particular
`
`expressed above Dr van Schalkwijks construction is too limiting because it
`inappropriately adds
`limitation to the term that is not supported by the specification
`temporal
`and is inconsistent with how person of ordinary skill
`in the art would understand this term In
`disagree with Dr van Schalkwijks decision to include the at
`given time
`limitation is his proposed construction for at
`
`least the following reasons
`
`30 First it
`
`is my opinion that
`individual state of charge when properly construed should not
`include any temporal
`limitation because the specification regularly modifies state of charge
`with time-related term when
`limitation is intended For example the specification
`temporal
`uses words such as current and present to modify state of charge when it
`intends to place
`limitation on the term and does not use such terms when it does not
`intend to place
`temporal
`limitation on the term Compare e.g 167 Patent at 163-8 1620-24 1636-39 882
`Patent at 810-43 864-98 913-28 942-47 960-102 1032-40 145-9 1428-32 1532-38
`225-10 238-15 with 167 Patent at 168-16 1625-36 1640-1712 2019-23 882 Patent at
`658-61 848-58 1043-46 1055-117 1144-48 2011-23 2321-25 Adding the temporal
`limitation to the meaning of state of charge is unnecessarily limiting and is inconsistent with
`
`such
`
`the usage in the specification Additionally because the meaning of this term is unambiguous in
`is my opinion that resorting to extrinsic evidence
`is used in the specification it
`light of the way it
`as Dr van Schalwijk has done
`in the form of dictionary definition for support
`inappropriate and unnecessary As
`result in my opinion the term individual state of charge
`in the art to mean the amount of charge remaining
`would be understood by one of ordinary skill
`limitation at
`given time
`battery cell and would not further include the temporal
`in
`proposed by Dr van Schalkwijk
`
`is
`
`that
`
`given time in the construction as proposed by Dr van
`31 Second the inclusion of at
`Schalkwijk implies certain level of precision or exactness in the amount of charge remaining
`is inconsistent with embodiments explicitly disclosed in the specification
`For example the
`specification uses state of charge to describe approximations averages estimates and other
`representations of the amount of charge remaining that are not exact See e.g 654 Patent at
`168-16 1625-39 1648-57 1665-179 882 Patent at 810-22 834-43 2011-23 For this
`additional reason the reasons set forth above and the reasons included in my January 14 2011
`is my opinion the term individual state of charge would be understood by one of
`in the art to mean the amount of charge remaining in
`battery cell and would not
`ordinary skill
`given time proposed by Dr van Schalkwijk
`include the further limitation at
`
`Report
`
`it
`
`Reservation of Rights
`reserve the right to supplement or amend my opinions in response to opinions expressed by
`32
`Dr van Schalkwijk or other of Defendants experts or in light of any additional evidence
`testimony discovery or other information that may be provided to me after the date of this
`
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`report including any changes or modifications that Defendants make to their proposed
`reserve the right to consider and testify about
`constructions
`In addition
`issues that may be
`raised by Defendants fact witnesses andlor experts during testimony or in expert reports
`also
`reserve the right to modify or to supplement my opinions as
`result of ongoing expert discovery
`or testimony
`
`Signed under the penalty of perjury on February
`
`2011 in College Station Texas
`
`Dr Mehrdad Mark Ehsani
`
`Case 209-cv-00948--WEC Filed 05/25/12
`
`Page 11 of 19 Document 98-9
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