Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 1 of 26 PageID #: 1152
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`Plaintiff,
`
`
`
` Case No.: 2-07-cv-180-DF
`
`
`
`
`
`PAICE LLC,
`
`
`
`
`
`
`v.
`
`
`TOYOTA MOTOR CORPORATION, a
`Japanese Corporation, TOYOTA MOTOR
`NORTH AMERICA, INC., and TOYOTA
`MOTOR SALES, U.S.A., INC.,
`
` Defendants.
`
`
`
`PLAINTIFF PAICE LLC’S REPLY BRIEF ON CLAIM CONSTRUCTION
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`
`
`Dated: August 1, 2008
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`
`
`
`
`Samuel F. Baxter (Bar No. 01938000)
`McKOOL SMITH P.C.
`P.O. Box O
`104 E. Houston St., Suite 300
`Marshall, Texas 75670
`(903) 923-9000
`
`Of Counsel:
`
`Ruffin B. Cordell (Bar No. 04820550)
`Ahmed J. Davis
`Scott A. Elengold
`FISH & RICHARDSON P.C.
`1425 K Street, N.W., 11th Floor
`Washington, DC 20005
`(202) 783-5070
`
`Robert E. Hillman
`FISH & RICHARDSON P.C.
`225 Franklin Street
`Boston, MA 02110
`(617) 542-5070
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`
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`Page 1 of 26
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 2 of 26 PageID #: 1153
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`
`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`LEGAL STANDARDS OF CLAIM INTERPRETATION ............................................... 1
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`A.
`B.
`C.
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`Collateral Estoppel Applies To The Claim Construction In This Case .................. 1
`Application of Means-Plus-Function is Improper .................................................. 2
`Ordinary Meaning Applies and Written Description Cannot Limit Claims........... 3
`
`RESPONSE TO TOYOTA’S PROPOSED INTERPRETATION OF DISPUTED
`CLAIM TERMS ................................................................................................................. 4
`A.
`’970 Patent .............................................................................................................. 4
`1.
`“Controllable torque transfer unit” ............................................................. 4
`2.
`“Means for performing the following functions responsive to input
`commands and monitored operation of said vehicle: selecting an
`appropriate mode of operation...” ............................................................... 6
`
`B.
`
`C.
`
`’347 Patent .............................................................................................................. 7
`1.
`“Controllably coupled” ............................................................................... 7
`2.
`“Setpoint” and/or “SP” ............................................................................... 9
`3.
`“Road load” and/or “RL”.......................................................................... 11
`4.
`“Normally aspirated” ................................................................................ 13
`5.
`“Low-load mode I,” “Highway cruising mode IV,”
`and “Acceleration mode V”...................................................................... 13
`
`’634 Patent ............................................................................................................ 15
`1.
`“Road load”/“RL” and “Setpoint”/“SP” .................................................. 15
`2.
`“Operating at least one electric motor to propel the hybrid
`vehicle when the RL required to do so is less than a
`setpoint (SP)”............................................................................................ 15
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 3 of 26 PageID #: 1154
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`TABLE OF CONTENTS (cont’d)
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`Page
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`3.
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`4.
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`“ Operating an internal combustion engine of the hybrid
`vehicle to propel the hybrid vehicle when the RL required
`to do so is between the SP and a maximum torque output
`(MTO) of the engine, wherein the engine is operable to
`efficiently produce torque above the SP, and wherein the
`SP is substantially less than the MTO” ..................................................... 16
`
`“ Operating both the at least one electric motor and the engine
`to propel the hybrid vehicle when the torque RL required to
`do so is more than the MTO” .................................................................... 16
`
`“ Energy originating at the battery is supplied to the solid state
`inverter at a voltage and current such that the ratio of voltage
`to current is at least about 2.5 to 1” .......................................................... 17
`
`“ Wherein energy originating at the battery is supplied to the
`solid state inverter at a maximum current of no more than
`150 amps” ................................................................................................. 18
`
`“ Energy originating at the battery is supplied to the second
`motor at a peak voltage of at least about 500 volts................................... 18
`
`“ Power originating at the battery is supplied to the second
`motor at a peak current no greater than about 150 amps” ........................ 19
`CONCLUSION................................................................................................................. 20
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`5.
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`6.
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`7.
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`8.
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`III.
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 4 of 26 PageID #: 1155
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`
`Amgen v. Hoffman-LaRoche Ltd.,
`494 F. Supp. 2d 54, 58-61 (D. Mass. 2007)...................................................................5, 12, 14
`
`Arthrex, Inc. v. Depuy Mitek, Inc.,
`2006 U.S. Dist. LEXIS 95465 (M.D. Fla. Oct. 16, 2006) ...................................................4, 17
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002)..................................................................................................2
`
`First Years, Inc. v. Munchkin, Inc.,
`2008 U.S. Dist. LEXIS 31826 (W.D. Wis. Apr. 15, 2008) ................................................4, 18
`
`In re Wright,
`866 F.2d 422 (Fed. Cir. 1989)....................................................................................................9
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`381 F.3d 1111 (Fed. Cir. 2004)..................................................................................................3
`
`JVW Enterprises, Inc. v. Interact Accessories, Inc.,
`424 F.3d 1324 (Fed. Cir. 2005)..................................................................................................4
`
`Lighting World, Inc. v. Birchwood Lighting, Inc.,
`382 F.3d 1354 (Fed. Cir. 2004)..................................................................................................2
`
`LizardTech, Inc. v. Earth Resource Mapping, Inc.,
`433 F.3d 1373 (Fed.Cir. 2006).............................................................................................4, 18
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995)......................................................................................................3
`
`Novartis Pharms. Corp. v. Abbott Labs.,,
`375 F.3d 1328 (Fed. Cir. 2004)..................................................................................................2
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..............................................................................................3, 4
`
`Rambus Inc. v. Hynix Semiconductor Inc.,
`2008 WL 2754805 (N.D. Cal. July 10, 2008)............................................................................2
`
`RecoverEdge L.P. v. Pentecost,
`44 F.3d 1284 (5th Cir. 1995) .....................................................................................................1
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 5 of 26 PageID #: 1156
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`TABLE OF AUTHORITIES (cont’d)
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`Page(s)
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`RF Delaware, Inc. v. Pacific Keystone Techs., Inc.,
`326 F.3d 1255 (Fed. Cir. 2003)..................................................................................................1
`
`Schering Corp. v. Amgen Inc.,
`222 F.3d 1347 (Fed. Cir. 2002)..............................................................................................8, 9
`
`Standard Oil Co. v. American Cyanamid Co.,
`774 F.2d 448, 452 (Fed.Cir.1985)..............................................................................................3
`
`Texas Instruments, Inc. v. Linear Technologies Corp.,
`182 F. Supp. 2d 580 (5th Cir. 2002) ..........................................................................................2
`
`Varco, L.P. v. Panson Sys. USA Corp.,
`436 F.3d 1368 (Fed. Cir. 2002)..................................................................................................4
`
`York Prod., Inc. v. Central Tractor Farm & Family Ctr.,
`99 F.3d 1568 (Fed.Cir.1996)......................................................................................................3
`
`STATUTES
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`35 U.S.C. § 112 ¶ 6..................................................................................................................2, 5, 6
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`35 U.S.C. § 132................................................................................................................................9
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 6 of 26 PageID #: 1157
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`Paice submits this reply brief on the proper claim construction of certain disputed terms
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`in the ’ 970, the ’ 347, and the ’ 634 patents. For the reasons that follow and for the reasons stated
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`in its Opening Brief, Paice respectfully requests that this Court maintain its claim constructions
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`from Paice I. To the extent that any further construction is necessary, Paice requests that the
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`Court adopt Paice’ s proposed claim constructions in their entirety.
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`I.
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`LEGAL STANDARDS OF CLAIM INTERPRETATION
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`Paice responds below to Toyota’ s section entitled “ The Applicable Law.” Insofar as the
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`law cited and quoted by Toyota states general principles of claim construction, it has
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`precedential value so far as it goes. However, Toyota misapplies that law to the facts here to
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`reach claim construction proposals that are fundamentally flawed.
`
`A.
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`Collateral Estoppel Applies To The Claim Construction In This Case
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`
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`Toyota contends that collateral estoppel does not apply here, see Toyota Markman Br. at
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`8, but cites no law to support its assertions. Toyota is wrong. The doctrine of collateral estoppel
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`bars Toyota from rearguing claim terms that were fully and fairly litigated in Paice I.
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`
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`On the issue of collateral estoppel, the law of the regional circuit applies. See RF
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`Delaware, Inc. v. Pacific Keystone Techs., Inc., 326 F.3d 1255, 1261 (Fed. Cir. 2003). In the
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`Fifth Circuit, collateral estoppel depends on three elements: (1) the issue at stake must be
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`identical to the one involved in the prior action; (2) the issue must have been actually litigated in
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`the prior action; and (3) the determination of the issue in the prior action must have been a
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`necessary part of the judgment in that earlier action. E.g., RecoverEdge L.P. v. Pentecost, 44
`
`F.3d 1284, 1290 (5th Cir. 1995). These elements are satisfied here—and Toyota does not
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`contend otherwise. Instead, Toyota argues only that it is not estopped because the Federal
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`Circuit did not rule on certain claim construction issues raised in Toyota’ s appeal.
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 7 of 26 PageID #: 1158
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`The application of issue preclusion (i.e., collateral estoppel) is barred only where the law
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`prevents appellate review. See Rambus Inc. v. Hynix Semiconductor Inc., Nos. C-05-00334
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`RMW, C-05-02298 RMW, C-06-00244 RMW, 2008 WL 2754805, at *15 (N.D. Cal. July 10,
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`2008). Here, no law prevented appellate review. Therefore, Toyota is estopped from rearguing
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`construction of claim terms that were construed by the Court in Paice I, fully and fairly litigated
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`before the jury, and necessary to the judgment in the prior action. See Novartis Pharms. Corp. v.
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`Abbott Labs., 375 F.3d 1328, 1332-33 (Fed. Cir. 2004). Collateral estoppel in patent suits is
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`premised on principles of fairness, and “ the Supreme Court held that where a patent has been
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`declared invalid in a proceeding in which the patentee has had a full and fair chance to litigate
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`the validity of his patent, the patentee is collaterally estopped from relitigating the validity of the
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`patent.” Texas Instruments, Inc. v. Linear Technologies Corp., 182 F.Supp.2d 580, 585 (5th Cir.
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`2002) (quotation and citation omitted). The same result obtains here, where Toyota once before
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`has briefed and argued a previous Markman hearing before this Court, tried liability to a jury,
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`appealed to the Federal Circuit and lost. Under the circumstances, fairness dictates that Toyota
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`be collaterally estopped from rearguing claim construction of the same or similar terms here.
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`B.
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`Application of Means-Plus-Function is Improper
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`
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`“ [A] claim term that does not use ‘means’ will trigger the rebuttable presumption that §
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`112 ¶ 6 does not apply.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358
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`(Fed. Cir. 2004) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir.
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`2002)). “ The presumption that a limitation lacking the term ‘means’ is not subject to section 112
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`¶ 6 can be overcome if it is demonstrated that the claim term fails to recite sufficiently definite
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`structure or else recites function without reciting sufficient structure for performing that function
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`[but] the presumption . . . is a strong one that is not readily overcome.” Id. Therefore, even if
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`the proper question is whether the claim limitation has a generally understood structural meaning
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`to one of ordinary skill in the art, the burden is on Toyota to prove that the claim term lacks
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`sufficient structure.
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`C.
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`Ordinary Meaning Applies and Written Description Cannot Limit Claims
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`
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`In the absence of the inventor’ s express intent to deviate from the ordinary meaning of
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`claim terms, the claim phrase is controlled by the plain meaning. See, e.g., York Prod., Inc. v.
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`Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572 (Fed.Cir.1996) (“ Without an express
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`intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary
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`meaning.” ). The scope of the claim is defined by the language of the claim, and “ [i]t is a
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`‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the
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`patentee is entitled the right to exclude.’ ” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
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`2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1115
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`(Fed. Cir. 2004)); see also York Prod., 99 F.3d at 1572.
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`Specifications cannot limit claims because “ [t]he written description part of the
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`specification itself does not delimit the right to exclude . . . [t]hat is the function and purpose of
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`claims.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995). However,
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`“ [t]he descriptive part of the specification aids in ascertaining the scope and meaning of the
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`claims inasmuch as the words of the claims must be based on the description.” Standard Oil Co.
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`v. American Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985) (quotation and citation omitted).
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`Although it is helpful to look at the specifications to interpret a claim if it lacks an ordinary
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`meaning, the specification cannot be read to limit the scope of the claim. But that is precisely
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`what Toyota is attempting to do here.
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`Disclosed embodiments are just examples and cannot be read to limit claims. “ We do not
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`import limitations into claims from examples or embodiments appearing only in a patent's
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`written description, even when a specification describes very specific embodiments of the
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 9 of 26 PageID #: 1160
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`
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`invention or even describes only a single embodiment . . . .” JVW Enterprises, Inc. v. Interact
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`Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005). “ Even if the specification describes a
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`very specific embodiment, the claims are not confined to the embodiment described.” Arthrex,
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`Inc. v. Depuy Mitek, Inc., No. 2:04-cv-328-FtM-99DNF, 2006 U.S. Dist. LEXIS 95465, at *3
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`(M.D. Fla. Oct. 16, 2006) (citing LizardTech, Inc. v. Earth Resource Mapping, Inc., 433 F.3d
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`1373, 1377 (Fed.Cir. 2006)); see also Varco, L.P. v. Panson Sys. USA Corp., 436 F.3d 1368,
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`1373 (Fed. Cir. 2002) (“ In examining the specification for proper context, however, this court
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`will not at any time import limitations from the specification into the claims.” (quotation and
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`citation omitted)).
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`“ To avoid importing limitations from the specification into the claims, it is important to
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`keep in mind that the purposes of the specification are to teach and enable those of skill in the art
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`to make and use the invention and to provide a best mode for doing so.” Phillips, 415 F.3d at
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`1323. The only exception to this rule is “ [a]n embodiment may serve to limit a claim only if it is
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`clear that the patentee intends the claims and embodiments to be strictly coextensive . . . .” First
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`Years, Inc. v. Munchkin, Inc., No. 07-cv-558-bbc, 2008 U.S. Dist. LEXIS 31826, at *39-40
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`(W.D. Wis. Apr. 15, 2008)). Despite Toyota’ s arguments in response, it has done nothing to
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`demonstrate a legitimate basis to depart from the general rule in this case.
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`II.
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`RESPONSE TO TOYOTA’S PROPOSED INTERPRETATION OF DISPUTED
`CLAIM TERMS
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`A.
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`’970 Patent
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`The only disputed term in the ’ 970 patent is “ controllable torque transfer unit.”
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`1.
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` “Controllable torque transfer unit”
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`Paice’ s proposed construction: This term means a multi-input device or component that is
`controlled to transfer variable amounts of torque [rotary force].
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 10 of 26 PageID #: 1161
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`Toyota’ s proposed construction: Construed under 35 U.S.C. § 112 ¶ 6 as “ reading on the
`structure shown in Figure 11 of the ’ 970 patent, and equivalents thereof, performing the
`indicated function.” Toyota Markman Br. at 8.
`
`The Court has already construed this term in Paice I and Toyota is estopped from
`
`challenging that construction in this case. See generally Amgen v. Hoffman-LaRoche Ltd., 494 F.
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`Supp. 2d 54, 58-61 (D. Mass. 2007) (citing cases). Even if Toyota was not estopped, however,
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`there is no basis to depart from that original construction. Because Toyota’ s arguments on this
`
`issue essentially are identical to those made in the first case, Paice incorporates herein its
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`arguments against application of § 112 ¶ 6 made in its briefs and at the Markman hearing in
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`Paice I. See Paice’ s March 29, 2005 Claim Construction Reply Br. (D.I. 27) at 3-6; see also
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`April 19, 2005 Markman Hrg. Tr. at 17-22 and 91-92.
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`With respect to the means-plus-function issue, Toyota contends that the “ only evidence”
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`Paice ever offered that the term was structural was two references it found on the Internet that
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`identified a torque transfer unit, but that alone does not convey to ordinarily skilled artisans
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`sufficient structure for a torque transfer unit or a controllable torque transfer unit. Of course, as
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`Paice argued at the first Markman hearing, it need not offer any evidence on this point. The law
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`is clear that the burden rests on Toyota to overcome the presumption that § 112 ¶ 6 does not
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`apply, and Toyota has not done so here. In fact, Toyota unwittingly has demonstrated the very
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`thing it is trying to disprove by relying upon prior art that shows one of ordinary skill in the art
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`that a torque transfer unit is a structural component. A 1979 publication by General Electric
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`entitled “ Near-Term Hybrid Vehicle Program, Phase 1,” marked at trial as DTX-704 in Paice-
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`Toyota I, clearly shows a torque transfer unit (identified below by the red arrow) that combines
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`torque from two sources (and electric motor and an internal combustion engine) for output to the
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`wheels of a hybrid vehicle:
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 11 of 26 PageID #: 1162
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`DTX-704 (excerpt attached hereto as Exhibit F) at TPR183536.
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`To be sure, the unit disclosed in DTX-704 is not identical to the controllable torque
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`transfer unit of the ’ 970 patent. Nevertheless, Toyota’ s suggestion that one of ordinary skill in
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`the art in 1992 would not recognize a “ torque transfer unit” as structural—when Toyota has
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`relied on prior art from 13 years earlier disclosing a “ torque transfer unit” —should be rejected
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`out of hand. The fact that the ’ 970 patent discloses a particular torque transfer unit that is also
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`“ controllable” does not move a structural limitation into the functional purview of § 112 ¶ 6.
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`2.
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`“Means for performing the following functions responsive to input
`commands and monitored operation of said vehicle: selecting an
`appropriate mode of operation...”
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`This claim term arises in ’ 970 patent claim 39. Toyota originally proposed construing
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`this claim term but in its responsive brief withdrew its opposition to Paice’ s construction. See
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 12 of 26 PageID #: 1163
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`Toyota Markman Br. at 8-9. Accordingly, for the reasons set forth in Paice’ s opening Markman
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`brief, the Court should adopt Paice’ s proposed construction.
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`B.
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`’347 Patent
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`The disputed claim terms for the ’ 347 patent are: “ controllably coupled,” “ road load,”
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`“ set point,” and the definitions of certain modes of operation. Because many of these terms
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`appear in both the ’ 347 and the ’ 634 patents (which have common disclosures), the parties agree
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`the same construction should apply to both patents.
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`1.
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` “Controllably coupled”
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`Paice’ s proposed construction: This claim phrase is controlled by the plain meaning and
`does not require construction. Paice reserves the right to address in its reply brief any arguments
`Toyota makes regarding why this claim term should be construed beyond its ordinary meaning.
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`Toyota’ s proposed construction: This term means “ connected through a clutch that is
`controlled to selectively connect or disconnect the engine from the road wheels.” Toyota
`Markman Br. at 10.
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`Paice has asserted ’ 347 patent claim 7, which depends from claim 1, against Toyota.
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`Paice contends the claim phrase “ controllably coupled” is controlled by the plain meaning and
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`does not require construction. Toyota argues in response that “ controllably coupled” was not in
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`the original claims, and therefore can be understood only by reference to the intrinsic evidence.
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`See Toyota Markman Br. at 11. Toyota then attempts to use the intrinsic evidence to add a
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`connection “ through a clutch” to perform specific functions. Toyota’ s argument fails for two
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`reasons. First, the words “ controllably coupled” do not reference to a “ clutch” or any specific
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`function. As a result, Toyota’ s construction departs from the plain meaning of the words.
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`Second, the intrinsic evidence supports Paice’ s construction, not Toyota’ s.
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`The prosecution history of the ’ 347 patent supports a broad construction of the term
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`“ controllable coupled.” The phrase “ controllably coupled” was not in the claims but was added
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 13 of 26 PageID #: 1164
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`to three claims by preliminary amendment on August 18, 2003. Of the three claims containing
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`the term “ controllably coupled,” two recited “ by a clutch” but one expressly did not. ’ 347 file
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`history, 8/18/03 Preliminary Amendment, (attached as Exhibit G) at 2, 20-21, 14 (claims 17, 78,
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`and 56). In a further preliminary amendment filed on May 20, 2004, the words “ by a clutch”
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`were deleted from the two claims, and new claim was added that used “ controllably coupled”
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`without a clutch. ’ 347 file history, 5/20/04 Preliminary Amendment (attached as Exhibit H) at 2-
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`3, 23-24, 26-27 (claims 17, 78, 82). The amendments clearly demonstrate that the applicant
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`never intended the phrase “ controllably coupled” to be limited to “ controllably coupled through a
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`clutch.”
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`If there were any doubt whether Toyota is reading the claim language in an improperly
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`narrow manner— reading every occurrence of “ controllably coupled” as if “ through a clutch”
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`were present— the doubt is removed entirely when one considers ’ 347 patent claim 33, which
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`claims a turbocharger that is “ controllably coupled” to the internal combustion engine. Figure
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`11 of the ’ 347 patent shows a turbocharger 100 that is directly coupled to the engine 40, i.e., it is
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`not connected through clutch 51. Thus, Toyota’ s proposed construction would read out the
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`preferred embodiment disclosed in Figure 11. Accordingly, the canons of claim construction
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`prevent “ controllably coupled” from meaning coupled “ through a clutch.”
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`The only legal support Toyota identifies for its argument, Schering Corp. v. Amgen Inc.,
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`222 F.3d 1347 (Fed. Cir. 2002), is inapt and readily distinguishable. The relevant question in
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`that case was whether the original specification supported a particular claim term that the
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`patentee inserted during prosecution. The term did not appear anywhere in the specification or
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`the claims, but was added to the claims and the specification because during the pendency of the
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`application a scientific committee determined that the particular term of art (which the patentee
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`Case 2:07-cv-00180-DF Document 51 Filed 08/01/08 Page 14 of 26 PageID #: 1165
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`had used in his claims) was no longer scientifically acceptable and should be replaced with a
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`more appropriate term. See Schering Corp., 222 F.3d at 1352. The district court determined that
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`the patentee’ s substitution of new language into the specification and claims of the pending
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`application of the newly-minted term advanced the art and therefore violated the rule against
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`introduction of new matter. Id. The Federal Circuit disagreed, concluding the substitution of the
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`new language did not broaden the scope of the claims to ordinarily skilled artisans. Id. at 1353.
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`The Schering case is not relevant to the issue presently before this Court regarding the
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`term “ controllably coupled” . Unlike Schering, there has been no change in the understanding of
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`persons of ordinary skill in the meaning of the disputed claim term, and the originally-filed
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`claims in this case were never amended to raise a new matter question under 35 U.S.C. § 132.1
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`Moreover, as discussed above, Toyota cannot seriously dispute that the patent discloses
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`controllable coupling without expressly reciting a clutch. Accordingly, Toyota’ s attempt to read
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`additional limitations from the specification into the claims should be rejected.
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`2.
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`“Setpoint” and/or “SP”
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`Paice’ s proposed construction: This term means a defined, but potentially variable, value
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`at which a transition between modes of operation may occur.
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`Toyota’ s proposed construction: This term means “ a value of torque that defines the
`transition point between low-load mode I operating mode and the highway cruising mode IV.”
`Toyota Markman Br. at 12.
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`Toyota’ s proposed construction of the term “ setpoint” is based upon an improperly
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`narrow reading of the specification and therefore should be rejected, for at least three separate
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`reasons.
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`1 The appropriate test for new matter is whether “ the scope of a claim has been changed by amendment in such a
`way as to justify an assertion that it is directed to a different invention than was the original claim . . . .” In re
`Wright, 866 F.2d 422, 424 (Fed. Cir. 1989).
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`First, Toyota argues incorrectly that the term setpoint is limited to that point at which a
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`transition occurs between low-load mode I operation and highway cruising mode IV operation.
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`See Toyota Markman Br. at 12. While the section of the ’ 347 patent specification that Toyota
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`relies upon to support its argument describes an embodiment wherein the setpoint is for the mode
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`I-to-mode IV transition that Toyota identifies, the specification does not limit setpoint to just that
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`transition. For example, the patent uses the terms “ setpoint,” “ SP,” and “ transition point”
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`interchangeably. See ’ 347 patent, col. 40, lines 50-54 (“ This setpoint, referred to in the appended
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`claims as ‘SP’ and sometimes referred to hereinafter as the transition point (i.e., between
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`operation in modes I and IV) is obviously arbitrary and can vary substantially . . . .” ). Later in
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`the specification, “ transition point” is used expressly to describe transitions to other modes,
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`including at least mode V:
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`Further, as noted above the transition points [setpoints] between
`modes I, IV, and V in particular may vary in accordance with the
`operator’ s commands . . . .
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`’ 347 patent, col. 44, lines 32-34 (emphasis added).
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`Thus, the specification gives specific examples of setpoints involving a mode of
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`operation other than modes I or IV. In fact, it is this disclosure in the specification that supports
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`asserted claim 7, which claims inter alia a vehicle “ operated in a plurality of operating modes
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`responsive to the value for the road load (RL) and said setpoint SP . . . said operating modes
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`includ[ing] a low-load mode I . . . a highway cruising mode IV . . . and an acceleration mode V .
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`. . .” (emphasis added). Thus, Toyota’ s proposed construction clearly cannot be correct.
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`Second, Toyota argues that the setpoint is required to be the point at which a transition
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`must occur. See Toyota Markman Br. at 13. This plainly is not required by the ’ 347 patent. The
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`specification teaches, for example, that in some instances it may be appropriate to have a time-
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`dependent setpoint. ’ 347 patent, col. 41, lines 41-46 (“ [F]or example, mode IV might be entered
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`from mode I only after the road load exceeded a first, lower setpoint SP for an extended period
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`of time . . . .” ). In such a case, if the vehicle was operated for less than the period of time set by
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`the microprocessor, the setpoint (which is not itself a time-dependent value) would be reached
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`but no transition actually would occur. This transition point also can be overridden by the
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`operator setting cruise-control operation. See ’ 347 patent, col. 44, lines 40-59. The setpoint
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`therefore is a point at which a transition may occur, but it need not necessarily occur.
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`Third, Toyota demands that the setpoint be limited to a torque value. See Toyota
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`Markman Br. at 13. In particular, Toyota asserts that because road load is defined to be a torque
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`value and setpoint is measured against road load, it too must be a torque value. Toyota’ s analogy
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`to road load in this instance is apt, but ultimately leads to a different conclusion than that Toyota
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`proposes. As discussed at length in Paice I, road load must have at least a torque component but
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`it can be comprised of other variables. The same is true for the setpoint: “ It is also within the
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`scope of the invention to make setpoint SP. . . somewhat ‘fuzzy’ so that SP may vary from one
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`comparison of road load to MTO to the next depending on other variables.” ’ 347 patent, col. 41,
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`lines 10-14 (emphasis added). Thus, the claims can be satisfied so long as the setpoint and the
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`road load are measured using comparable variable units, e.g., torque or power. The patent
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`specification and claims do not mandate that setpoint be a value set exclusively in torque.
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`3.
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`“ Road load” and/or “ RL”
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`Paice’ s proposed construction: These terms mean the instantaneous tor