Case 1:12-cv-00499-WDQ Document 90 Filed 12/16/13 Page 1 of 44
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`BALTIMORE DIVISION
`
`PAICE LLC ANd THE ABELL FOUNDATION'
`INC.,
`
`Plaintiffs,
`
`v.
`
`HYUNDAI MOTOR COMPANY,
`HYUNDAI MOTOR AMERICA, KIA
`MOTORS CORPORATION, and KIA
`MOTORS AMERICA,INC.
`
`Defendants.
`
`C. A. No. WDQ-12-499
`
`PLAINTIFFS PAICE LLC AND THE ABELL FOUNDATION' INC.'S
`RESPONSIVE BRIEF ON CLAIM CONSTRUCTION
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`Case 1:12-cv-00499-WDQ Document 90 Filed 12/16/13 Page 2 of 44
`TABLE OF CONTENTS
`
`Page
`
`II.
`
`B.
`
`LEGAL STANDARDS OF CLAIM INTERPRETATION
`........... I
`A.
`The Court May Adopt Plain and Ordinary Meaning For Disputed Terms............. I
`B.
`RESPONSE TO DEFENDANTS' INTERPRETATION OF DISPUTED CLAIM
`TERMS
`...................3
`ooRoad Load" is "the instantaneous torque required for propulsion of the vehicle,
`A.
`which may be positive or negative in value."
`..................... 3
`1.
`"Road Load" does not include the Defendants' additional limitation "to
`maintain a given speed"
`........................4
`"Road Load" Measures Instantaneous Torque
`2.
`.....'.6
`3.
`Plaintiffs' Construction is Consistent With Two Prior Court Decisions.... 9
`ttMotor"
`'.... 10
`"Motor" should be given its plain and ordinary meaning.
`1.
`...... 10
`2.
`Defendants' Argument Regarding "Transmission" Is a Red-Herring...... I I
`3.
`Defendants Misstate the Law Regarding Claim Scope............'..........'..... 14
`4.
`Defendants Misconstrue "Variable-Ratio Transmission".....'...'......'........ 16
`5.
`Defendants' Proposed Construction for "Motor" Is Incorrect... ...............17
`o'setpoint" is "a definite, but potentially variable value at which a transition
`between operating modes may occur."........'.'....
`......'....... 18
`1.
`Defendants' Constructions Merely Parrot the Claim Language....'.'........ l9
`2.
`Plaintiffs' Construction is Consistent With A Prior Court Decision ........20
`"wherein SP is a setpoint expressed as a predetermined percentage of MTO" ....20
`"road load (RL) and said setpoint SP, both expressed as percentages of the
`maximum torque output of the engine when normally-aspirated (MTO)"...........21
`ooa second setpoint (SP2), wherein the SP2 is a larger percentage of the MTO than
`the SP."
`.....22
`"max torque output (MTO) of said engine".'...
`1. MTO Is Not the Maximum Physical Quality......
`The Court Is Not Required to Construe This Term
`2.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`......-..........24
`
`....................24
`
`................25
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`Case 1:12-cv-00499-WDQ Document 90 Filed 12/16/13 Page 3 of 44
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`Page(s)
`
`H.
`
`I.
`
`m.
`
`2.
`
`3.
`
`4.
`
`The Claim Terms are Not Indefinite..
`.............26
`1.
`"a setpoint (SP) above which said engine torque is effrciently produced"/
`"wherein the engine is operable to efficiently produce torque above the
`SP"/ "engine is operable to efficiently produce torque above SP"'..........27
`"wherein the torque produced by said engine when operated at said
`setpoint (SP) is substantially less than the maximum torque output (MTO)
`of said engine."/ "wherein the SP is substantially less than the MTO"/
`"wherein SP is substantially less than MTO"
`'...... 30
`"a rapid increase in the torque to be applied to the wheels of the vehicle as
`desired by the operator is detected"..............'.
`...... 3l
`okherein a rate of change of torque output of said engine is limited to a
`threshold value"
`....'........... 33
`"operating said internal combustion engine to provide torque to the hybrid vehicle
`when the torque required to operate the hybrid vehicle is between a setpoint SP
`and a maximum torque output (MTO) of the engine"
`...... 35
`J.
`"the state of charge of the battery is below a predetermined level" ..................... 36
`CONCLUSION..........
`.............37
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`Case 1:12-cv-00499-WDQ Document 90 Filed 12/16/13 Page 4 of 44
`TABLE OF AUTHORITIES
`
`Casns
`
`ActiveVideo Networlrs, Inc. v. Verizon Comm'n, Inc',
`6g4F.3d 1312 (Fed. Cir.20l2).
`
`Page(s)
`
`passim
`
`Acumed LLC v. Stryker Corp.,
`483 F.3d 800 (Fed. Cir.2007).
`Barco N.V. v. Tech. Properties Ltd.,5:08-CV-05398 JF/HRL,2011 WL 3957390,*2
`(N.D. Cal. Sept. 7,2}ll) ..............
`............."""26
`
`'15, 18
`
`Breville Pty Ltd. v, Storebound LLC,
`L2-CV-01783-JST,2013 WL 1758742 (N.D' Cal. Apr. 24,2013)
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir.2002).
`
`""'26
`
`.........."""""""'3
`
`Classen Immunotherapies, Inc. v. Biogen ldec,
`CIV.WDQ-04-2607,2013 WL 4587522(D.Md. Aug.27,2013)
`
`.'....."""""""""1
`
`Dealertrack, Inc. v. Huber,
`614F.3d 1315 (Fed. Cir.20r2).
`
`Deere & Co. v. Bush Hog, LLC,
`703 F.3d 1349 (Fed. Cir.20l2).
`
`Digital-Vending Servs. Int'\, LLC v. Univ. of Phoenix, Inc.,
`672F.3d titO gea. cir.20r2).
`
`Dow Chemical Co. v. United States,
`226F.3d 1334 (Fed. Cir. 2000).
`
`Ecolab, Inc, v. Envirochem, Inc.,
`264F.3d 1358 (Fed. Cir. 2001).
`
`Epistar Corp. v. Int'l Trade Comm'n,
`566 F.3d 1321 (Fed. Cir. 2009)....'...
`
`Finjan, Inc. v. Secure Computing Corp.,
`626F.3d 1197 Ged. Cir. 2010).
`
`"""'2
`
`""""""""'28,30
`
`....-..4
`
`""'29
`
`""'28
`
`"""""""""4
`
`'......"""""""""1
`
`Fleming v. Escort, Inc.,
`CV 09-105-S-BLW, 201 1 WL 1542126 (D. Idaho Apt.21,2011).......'
`
`"""""""'27
`
`lll
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`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`381 F.3d 1 1 I I (Fed. Cir. 2004).
`
`JW Enterprises, Inc. v. Interact Accessories, Inc',
`424F.,d824 (Fed. Cir. 2005).
`
`Kinzenbm,v v. Case LLC,
`179 Fed. App'x 20 (Fed. Cir. 2006)
`
`Marlvnan v. Westview Instruments, Inc.,
`52F.3d967 (Fed.Cir. 1995).
`
`MBO Laboratories, Inc. v. Becton, Dickinson & Co.,
`474F.3d 1323 (Fed. Cir.2007).
`
`02 Micro Int'l Ltd. v, Beyond Innovation Tech. Co., LTD,
`521 F.3d l35l (Fed. Cir. 2008).
`
`02 Micro Int'l Ltd. v. Monolithic Power Sys., Inc',
`467 F .3d 1355 (Fed. Cir. 2006).
`
`Paice LLC v. Toyota Motor Corp., et al.,
`No. 2:04-CV-21l-DF, Dkt. No. 91 (E.D. Tex. Sep' 28,2005)"
`
`Paice LLC v. Toyota Motor Corp., et al.,
`No.2:07-CV-180-DF, Dkt. No. 63 (E.D. Tex. Dec. 5,2008)
`
`Phillips v. AWH Corp.,
`+is r.:a 1303 ded. cir.2005).
`Plantronics, Inc. v. Aliph, Inc.,
`724F.3d 1343 (Fed. Cir.20l3).
`
`Praxair, Inc. v. ATMI, Inc.,
`543 F.3d 1306 (Fed. Cir. 2008).
`
`Rambus, Inc. v. Infineon Techs. AG,
`318 F.3d 1081 (Fed. Cir.2003).
`
`SanDisk Corp. v. Memorex Prods., Inc.o
`415 F.3d 1278 Ged. Cir. 2005).
`
`Page(s)
`
`"""""""'2,7,19
`
`.2,29
`
`""""""""'28
`
`"""""'2
`
`"""""""""""'11
`
`""""""""""""'l
`
`""""""""'26,35
`
`""""""9
`
`'10,20,23
`
`.............2,29,31
`
`"""'4
`
`"""""'12,27,31
`
`""'12
`
`""'26
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`Silicon Graphics, Inc. v. ATI Technologies, Inc.,
`607 F.3d 784 (Fed. Cir. 2010).
`
`Sorensen v. Int'l Trade Comm'n,
`427 F.3d 1375 (Fed. Cir. 2005).
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997).
`
`Varco, L.P. v. Panson Sys. USA Corp.,
`436 F.3d 1368 (Fed. Cir.2002).
`
`Verve v. Crane Cams, Inc.,
`311 F.3d 1116 (Fed. Cir.2002).
`
`Vitronics Corp. v. Conceptronic,
`90 F.3d 1576 (Fed. Cir. 1996).
`
`Voda v. Cordis Corp.,
`536 F.3d 131I (Fed. Cir. 2008).
`
`Page(s)
`
`.........2
`
`...."'3
`
`....'..........'......'21
`
`.......3
`
`..."28
`
`."""23
`
`.....12
`
`Wellman, Inc. v. Eastman Chem. Co.,
`642F.3d 1355 (Fed. Cir. 201l) cert. denied,132 S. Ct. 1541 ,l82L.Ed.2d 162 (U.S.
`2012)
`...'......32
`
`York Prod., Inc. v. Central Tractor Farm & Family Ctr.,
`99 F.3d 1568 (Fed. Cir. 1996).
`
`Sraturrs
`35 U.S.C. $ 112.........
`35 U.S.C. $112(d)
`
`""""'2
`
`-........27
`
`........15,23
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`Plaintiffs Paice LLC ("Paice") and the Abell Foundation, Inc., ("Abell") hereby submit
`
`their responsive brief on the proper construction of the disputed terms.
`
`I.
`
`LEGAL STANDARDS OF CLAIM INTERPRETATION
`
`Plaintiffs provided the general principles of claim construction in their opening brief.
`
`Defendants' brief misapplies the law to reach claim construction proposals that are
`
`fundamentally flawed. Plaintiffs address a few of Defendants' misstatements below.
`A.
`When the parties disagree over the construction of a claim termo a district court may
`
`The Court May Adopt Plain and Ordinary Meaning For Disputed Terms
`
`properly adopt the plain and ordinary meaning for that term. See, e.g., ActiveVideo Networks,
`
`Inc. v. Verizon Comm'n, Inc.,694F.3d 1312,1326 (Fed. Cir. 2012) ("The district court did not
`
`err in concluding that these terms have plain meanings that do not require additional
`
`construction. ActiveVideo's proposed construction enoneously reads limitations into the claims
`
`and the district court properly rejected that construction and resolved the dispute between the
`
`parties."). Defendants' reliance on 02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., LTD,
`
`521 F.3d 1351 (Fed. Cir. 2008) is misplaced. Since 02 Micro's publication, the Federal Circuit
`
`has clarified that it is completely proper for a district court to adopt the plain and ordinary
`
`meaning of a term, even where the defendants dispute plaintiffs' argument that the plain and
`
`ordinary meaning should apply. See e.g. ActiveVideo Networlrs, 694 F .3d at 1326 (upholding
`
`district court's decision to reject defendant's construction and adopt plain and ordinary meaning
`
`for a disputed claim term); Finjan, Inc. v. Secure Computing Corp.,626F.3d 1197,1207 (Fed.
`
`Cir. 2010) (finding no violationof O2 Micro and upholding district court's decision to reject
`
`defendant's construction and adopt plain and ordinary meaning for a disputed claim term); see
`
`also Classen Immunotherapies, Inc, v. Biogen ldec, ClY. WDQ-04-2607,2013 WL 4587522, at
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`* 1 5 (D. Md. Aug. 27 , 2013) (relying on plain and ordinary meaning and declining to adopt
`
`proposed construction because term itself is clear).
`B. Claims Are Not Limited to a Preferred Embodiment
`In the absence of the inventor's express intent to deviate from the ordinary meaning of
`
`claim terms, the claim terms are controlled by their plain meaning. See, e.g., York Prod., Inc. v.
`
`central Tractor Farm & Family ctr.,99 F.3d 1568, 1572 (Fed. Cir. 1996) ("without an express
`
`intent to impart a novel meaning to claim terms, an inventor's claim terms take on their ordinary
`meaning." ). The scope of a claim is defined by the language of the claim: "[i]t is a'bedrock
`principle' of patent law that 'the claims of a patent define the invention to which the patentee is
`
`entitled the right to exclude."' See Phillips v. ALIrH Corp.,415 F.3d 1303, 1312 (Fed. Cir. 2005)
`
`(quoting Innova/Pure Water, Inc. v. Safari Water Filtration '!ts., 381 F.3d 1111, 1115 (Fed. Cir.
`200a)); see also York Prod.,99 F.3d at 1572. Specifications cannot limit claims because "[t]he
`
`written description part of the specification itself does not delimit the right to exclude . . . [t]hat
`
`is the function and purpose of claims." Markman v. Westview Instruments, Inc.o 52F.3d967,
`
`980 (Fed. Cir. 1995).
`
`The Federal Circuit has frequently cautioned that the specification must be used with
`
`care: "it is improper to read limitations from a preferred embodiment described in the
`
`specification." Dealertrack, Inc. v. Huber,674 F.3d 1315, 1327 (Fed. Cir. 2012); see also
`Silicon Graphics, Inc. v. ATI Technologies, lnc.,607 F.3d784,792 (Fed. Cir. 2010) ("A
`
`construing court's reliance on the specification must not go so far as to import limitations into
`
`claims from examples or embodiments appearing only in a patent's written description ... unless
`
`the specification makes clear that the patentee ... intends for the claims and the embodiments in
`
`the specification to be strictly coextensive") (internal quotation and citation omitted); JVW
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`Enterprises, Inc. v. Interact Accessories, lnc.,424 F.3d 1324,1335 (Fed. Cir. 2005) ("We do not
`
`import limitations into claims from examples or embodiments appearing only in a patent's
`
`written description, even when a specification describes very specific embodiments of the
`
`invention or even describes only a single embodiment . . . ."); Varco, L.P. v. Panson Sys. USA
`
`Corp.,436F.3d 1368,1373 (Fed. Cir. 2002) ("In examining the specification for proper context,
`
`however, this court will not at any time import limitations from the specification into the
`
`claims") (intemal quotation and citation omitted).
`
`It is well known that a "patentee need not describe in the specification every conceivable
`
`and possible future embodiment of his invention." CCS Fitness, Inc. v. Brunswick Corp.,288
`
`F.3d 1359, 1366 (Fed. Cir.2002). Similarly, the prosecution history may shed light on what a
`
`term means, but "it often lacks the clarity of the specif,rcation and thus is less useful for claim
`
`construction purposes." Id. The prosecution history will not limit claim scope unless it contains
`
`aooclear and unmistakable" disclaimer. Sorensen v. Int'l Trade Comm'n,427 F.3d 1375, 1378-
`
`79 (Fed. Cir.2005).
`
`For the reasons discussed below and in Plaintiffs' opening brief, Defendants have done
`
`nothing to demonstrate a legitimate basis to depart from the general rule in this case.
`
`II.
`
`RESPONSE TO DEFENDANTS' INTERPRETATION OF DISPUTED CLAIM
`TERMS
`A.
`,,Road Load" is "the instantaneous torque required for propulsion of the
`vehicle, which may be positive or negative in value."
`
`Plaintiffs' Constructron
`
`Defendants' Construction
`
`"the instantaneous torque required for
`propulsion of the vehicle, which may be
`positive or negative in value."
`
`'othe amount of torque actually required to
`propel the vehicle on the road to maintain a
`given speed, which may be positive or negative
`in value."
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`1.
`
`66Road Load" does not include the Defendants' additional limitation
`66to maintain a given speed"
`
`Defendants' definition of ooroad load" impermissibly imports the limitation "to maintain a
`
`given speed" without providing any support in the specification or file history for that extra
`
`limitation. Defendants' sole citation to the file history cheny-picks a limited part of the relevant
`
`quote, fails to provide the full picture, and is not a "clear disavowal" as required by Federal
`
`Circuit case law. See e.g. Digital-Vending Servs. Int'L, LLC v. Univ. of Phoenix, Inc.,672F.3d
`
`1270,I276 (Fed. Cir. 2012) ("[B]ecause the prosecution history represents an ongoing
`
`negotiation between the PTO and the applicant, rather than the final product of that negotiation,
`
`it often lacks the clarity of the specification" and "[Uor this reason, it is particularly important
`
`not to limit claim scope based on statements made during prosecution absent a clear disavowal or
`
`contrary definition.") (citations and quotations omitted); see also Plantronics, Inc. v. Aliph, Inc.,
`
`724F.3d 1343, 1350 (Fed. Cir. 2013) (holding that "when the patentee unequivocally and
`
`unambiguously disavows a certain meaning to obtain a patent the doctrine of prosecution history
`
`disclaimer naffows the meaning of the claim consistent with the scope of the claim surrendered")
`
`(citations and quotations omitted); Epistar Corp. v. Int'l Trade Comm'n,566 F.3d 1321,1334
`
`(Fed. Cir. 2009) (holding that defendants "must also overcome a heavy presumption that claim
`
`terms carry their full ordinary and customary meaning, unless it can show the patentee expressly
`
`relinquished claim scope").
`
`The full quotation is provided below, and makes clear that "road load" is not limited to
`
`Defendants' proposed "to maintain a given speed":
`
`'oAs a preliminary matter, it should be clear that 'road load' as used in the claims
`of this application refers to the instantaneous torque requirements of the vehicle,
`i.e., that amount of torque required to propel the vehicle at a desired speed.
`[citations omitted] The operator's input, by way of the accelerator or brake pedals,
`or a 'cruise control' device, indicates that continuing at steady speed is
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`desired, or that a change in vehicle speed is called for. For example, the
`operator's depressing the accelerator pedal signifies an increase in desired speed,
`i.e., an increase in road load, while reducing the pressure on the accelerator or
`depressing the brake pedal signifies a desired reduction in vehicle speed,
`indicating that the torque being supplied is to be reduced or should be negative.
`More particularly, it is important to note that the road load can vary
`between wide limits, independent of vehicle speed, and can be positive or
`negative, i.e., when decelerating or descending a hill, in which case the
`negative road load (that is, torque available at the wheels in excess of that
`required to propel the vehicle) is usually employed to charge the battery bank."
`
`Ex.7,'672File History, 5ep.27,2000, Amendment at 10-l I (emphasis added).
`
`Defendants' construction therefore impermissibly attempts to confuse the patentee's clear
`
`statement to the PTO that "road load" takes into account a driver's desired speed. Of coutse, the
`
`speed at which a driver wishes to drive the vehicle is one factor that goes into how much torque
`
`is required to propel the vehicle at any instant. However, as the statements above make clear,
`
`"road load" is an instantaneous measurement that also takes into account "that a change in
`
`vehicle speed is called for." Even more importantly, the patentee noted that "road load" may
`
`vary "independent of vehicle speet'in response to, for example, climbing or descending a hill.
`
`This is not a meaningless distinction: o'road load" measures more than merely vehicle speed, and
`
`by holistically accounting for the instantaneous torque requirements of the vehicle, leads to
`
`improvements in fuel economy and efficiency.
`
`Additionally, the above cited passage, and the arguments about prior art that follow, are
`
`not a disclaimer of claim scope for the term "road load." An accurate and full reading of the
`
`patentee's argument about the Koide and Schmidt-Brticken references make plain that those
`
`references taught changing mode based on only vehicle speed:
`
`"By the same token, control of the vehicle's operating mode in response to
`monitoring of road load is not the same as controlling its operating mode in
`response to vehicle speed. The distinction is critical here because both Koide and
`Schmidt-Brticken do the latter, i.e., both control the vehicle operating mode in
`response to vehicle speed. (Frank '534 and Moroto do the same, as mentioned
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`above.) Neither Koide nor Schmidt-Briicken recognizes that the desired vehicle
`operational mode should preferably be controlled in response to the vehicle's
`actual torque requirements, i.e., the road load. As a consequence, neither is
`capable of providing good performance, in terms of either vehicle response to
`operator commands or fuel effrciency, under the widely-varying conditions
`encountered in 'real world' driving situations. More speciJically, both Koide and
`Schmidt-Briicken explicitly teach controlling the vehicle operating mode in
`response to vehicle speed, not road load."
`
`Ex. 7,' 672 File History, Sep. 27, 2000, Amendment at | | -12 (emphasis added).
`
`It is simply a non-sequitur to argue that because the patentee differentiated prior art that
`
`made mode-changing decisions based solely on vehicle speed, that somehow acts to limit the
`
`definition of o'road load." "Road load" is a quantitative measurement of the torque required to
`
`propel the vehicle at any given instant, which measurement may include vehicle speed because
`
`the operator's desired speed necessarily contributes to the total torque required to propel the
`
`vehicle. o,Road load" is then used by the control system of the invention to make decisions about
`
`what mode to operate in. See e.g.'672 patentl, claim 16 ("wherein said controller controls said
`
`vehicle to operate in said low speed mode I while RL<SP, wherein SP is a setpoint expressed as
`
`a predetermined percentage of MTO"). Defendants' deftnition therefore inappropriately
`
`attempts to confuse these two important and distinct ideas: (1) what "road load" is, and(2) how
`
`"road load" is used by the control system ofthe asserted patents.
`2.
`The Court also should reject Defendants' attempt to read in the limitation "actually
`required," which is unsupported by the claims or specification of the asserted patents. First, it
`
`otRoad Load" Measures Instantaneous Torque
`
`should be noted that the phrase "actually required" does not appear anywhere in the claims or
`
`specification, let alone modify or define "road load." Additionally, the word "actually" is merely
`
`I The asserted patents were attached as Exhibits to Plaintiffs' Opening Claim
`ConstructionBrief: '612patent(Exhibit I),'347 patent (Exhibit 2),'634 patent (Exhibit 3), '388
`patent (Exhibit 4),and '097 pabrrt" (Exhibit 5).
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`surplus language, and adds nothing to clarify or define the meaning of "road load." Conversely,
`
`Plaintiffs' proposed definition is clear and consistent with the claim language itself: "wherein
`
`torque to propel said vehicle is provided by said traction motor, said engine, and both,
`
`respectively, in response to monitoring the instantaneous torque requiremenls required for
`
`propulsion of the vehicle (RL)." See'672 patent, claim 15. This clear claim language should
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`therefore control. See e.g. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., lnc.,381 F.3d
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`1 1 I l, I I 15-16 (Fed. Cir. 2004) ("[A] claim construction analysis must begin and remain
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`centered on the claim language itself, for that is the language the patentee has chosen to
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`particularly point out and distinctly claim the subject matter which the patentee regards as his
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`invention.") (quotations and citations omitted).
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`To read in their new "actually required" limitation, Defendants misconstrue the file
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`history and specification of the asserted patents by again confusing (1) the definition of "road
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`load" and (2) how "road load" is used by the control system of the claim inventions.
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`Specifically, while Defendants correctly point out that the file history and specification of the
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`asserted patents differentiated prior art systems that made mode changing decision based on, for
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`example, only accelerator pedal position, Defendants then reach the illogical conclusion that
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`"road load" must not take into account accelerator pedal position. As the quotation above from
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`the file history makes clear however, 'oroad load" simply measures the instantaneous torque
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`demand of the vehicle; that demand may take into account as one factor the accelerator pedal
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`position. See e.g. '672 patent, col.29:10-15 ("[W]hen a sensed increase in the road load (e.g., by
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`a continued operator request for more power) indicates that the preferred operating mode is
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`changing from low-speed to highway cruising operation, the microprocessor controls starting
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`motor 21 by way of inverter/charger 23 to start engine 40.").
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`But "road load" more holistically captures the total measurement of the instantaneous
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`torque required to propel a vehicle. As noted previous, this approach leads to increases in
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`efficiency and fuel economy. For example, "road load" also accounts for other instantaneous
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`torque demands on the vehicle such as when the vehicle is climbing or descending a hill. See
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`e.g. '672 patent, col.29:23-25 ("If extra torque is needed during highway cruising, e.g., for
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`acceleration or hill-climbing, either or both of motors 2l and25 can be powered.") Similarly,
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`o'road load" accounts for the rate of change of the pedal position, and not merely the position of
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`the pedal. See e.g. '672 patent, col20:37-40 ("The microprocessor monitors the rate at which the
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`operator depresses pedals 69 and 70 as well as the degree to which pedals 69 and 70 we
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`depressed"). Defendants are simply wrong that "road load" and accelerator pedal position are
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`two completely unrelated quantitative measurements.
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`Defendants make the same error with respect to the specification's references to the
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`Egami2 and Deguchi3 prior art references.o Itt both cases, the specification makes clear that the
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`references fail to disclose "road load" because they do not disclose determining the instantaneous
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`torque requirements of the vehicle. The specification notes that Egami discloses using only "the
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`vehicle speed V, the accelerator lift ACC, the brake state BRK, and the shift position SFT as the
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`input parameters." See'347 patent, col 14:58-60. Deguchi similarly accounts for only vehicle
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`speed and accelerator pedal position. See '347 patent, col. l4:66-co1. 1 5 : I 5. "Road load" may
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`include some of these factors, but more holistically includes all instantaneous torque required to
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`'U.S. Patent No. 6,018,694
`3 U.S. Patent No. 5.993.351
`o The disc,.rssion of Egami and Deguchi appears only in the specification of the '347,
`'388,'634, and'097.It does not appear in the '672 specifrcation.
`8
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`propel the vehicle such as, for example, the rate of change of the pedal position and whether the
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`vehicle is climbing a hill, something the prior art simply failed to recognize.
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`In fact, the specification gives examples of including vehicle speed and accelerator pedal
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`position as part of the calculation of the instantaneous torque required to propel the vehicle, i.e.
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`the "road load." See e,g.'672patent,col.20:31-37 ("The acceleration and deceleration
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`commands may be provided by position-sensing encoders 7l and72 ... connected to
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`microprocessor 48 by lines 67 and68, to inform the microprocessor of the operator's commands
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`responsive to motion of accelerator and brake pedals 69 and 70 (FIG. 3) respectively"); id' at col.
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`19:33-39; id. at 20:40-47 ; id. ar col. 22:57 -66; id. at col. 29:10-22; id. at col. 30:42-51 .
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`The Court should therefore reject Defendants' attempt to impermissibly read in the new
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`limitation "actually required" into the definition of ooroad load."
`3.
`Additionally, the Plaintiffs' construction of "road load" is consistent with two prior
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`Plaintiffs' Construction is Consistent With Two Prior Court Decisions
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`district court decisions construing the claim term. In Paice LLC v. Toyota Motor Corp', et al.,
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`No. 2:04-CV-211-DF, Dkt. No. 91 (E.D. Tex. Sep. 28,2005), Judge Folsom of the Eastern
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`District of Texas rejected essentially the same arguments that Defendants are making here.
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`Judge Folsom found that the cited portions of the '672 prosecution history did "not amount to the
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`clear and unambiguous disavowal necessary for inclusion of these limitations in claim
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`construction":
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`"In discussing the Koide reference, the patentee acknowledges the input
`parameters used to control the vehicle's operating mode. '672 File History,
`September 27, 2000 Amendment at 72. The patentee then distinguishes the
`invention of the '672 patent from the Koide and SchmidrBruken prior art
`references because those references 'explicitly teach controlling the vehicle
`operating mode in response to vehicle speed, not road load.' /d This does not
`amount to disavowing the use of those same parameters found in the prior
`art to calculate troad load.t"
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`See id. at 38.
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`Judge Folsom construed "road load" to mean the "instantaneous torque [rotary force]
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`required for propulsion of the vehicle." See id. In a later case involving the '634 and'347
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`patents, Judge Folsom again adopted a construction of 'oroad load" consistent with Plaintiffs'
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`position in this case. ,See Paice LLC v. Toyota Motor Corp., et al.,No. 2:07-CV-180-DF, Dkt.
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`No. 63 (E.D. Tex. Dec. 5, 2008) (construing "road load" as "the instantaneous torque required
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`for propulsion of the vehicle, which may be positive or negative in value").
`
`B.
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`6(Motortt
`
`Pl aintiffs' Constructron
`Term does not require construction by the
`Court.
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`Defendants' Construction
`'oa motor that, when combined with a second
`electric motor, has a maximum output power
`equal to or greater than the maximum power
`output of the engine."
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`o'Motor" should be given its plain and ordinary meaning
`
`1.
`Contrary to Defendants' assertions, "motor" is a commonly understood term by one of
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`ordinary skill in the art and needs no special construction by the Court. There is no support for
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`Defendants' argument that the patentee expressly gave the term o'motor" a special definition. As
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`discussed in Plaintiffs' opening brief, Defendants' proposed construction is nonsensical and
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`contradicts the plain claim language. For example, many of the asserted claims do not even
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`require a second motor. It is also unclear whether Defendants are arguing that their proposed
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`construction applies to a first motor, second motor, starter motor or traction motor. The fact that
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`Defendants' proposed construction uses the term "motor" also shows that their construction is
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`circular and that Defendants are not trying to construe "motor," but are trying to read in
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`limitations from one of the preferred embodiments into that term. Defendants are impermissibly
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`trying to limit all of the claimed inventions to one of the preferred embodiments.
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`Defendants make two illogical arguments in attempting to explain the rationale for their
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`proposed construction. First, they argue that there can be no multi-speed transmission disposed
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`between either of these motors and the road wheels. Then, Defendants argue that in order to
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`enable operation without this transmission, the combined output power of the motors must be
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`equal to or greater than the rated output power of the engine. See Defs. Brief at 23- As
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`discussed below, both of these arguments are wrong.
`Defendants' Argument Regarding ooTransmission" Is a Red-Herring
`2.
`As an initial matter, Defendants' argument regarding "transmission" has nothing to do
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`with the proper construction of the term "motor." Such arguments cannot provide a basis for
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`importing unrelated limitations into the claim. See MBO Laboratories, Inc. v. Becton, Dickinson
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`& Co.,474F.3d 1323,1330 -1331 (Fed. Cir. 2007) ("we cannot endorse a construction analysis
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`that does not identify 'a textual reference in the actual language of the claim with which to
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`associate a proffered claim construction."'). Transmission and motor are two entirely different
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`components of a hybrid vehicle. Defendants also mischaracterize the intrinsic evidence in
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`arguing that there can be no transmission disposed between either of these motors and the road
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`wheels in all of the claimed inventions. To the contrary, the intrinsic evidence clearly shows that
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`the claimed inventions may include a transmission, except where it is excluded by the express
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`claim language.
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`The'672 patent discloses and claims numerous inventions directed to the topology,
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`method of control and other features of a hybrid vehicle. While the'672 patent specification
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`indicates that a variable-ratio transmission is not necessary, it clearly states that "it is within the
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`scope of the invention, where not excluded by the appended claims, to also provide a variable-
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`ratio transmission." '672 patent, col.25:47-49.5 Ignoring the above clear statement, Defendants
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`mischaracterize ot