Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 1 of 29 PageID #: 1467
`
`PAICE LLC,
`
`
`
`v.
`
`TOYOTA MOTOR CORP., TOYOTA
`MOTOR NORTH AMERICA, INC. and
`TOYOTA MOTOR SALES U.S.A., INC.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`§
`
`§
`
`§
`
`§
`
`§
`CIVIL ACTION NO. 2:07-CV-180 (DF)
`§
`§
`§
`§
`§
`§
`
`
`CLAIM CONSTRUCTION ORDER
`
`Plaintiff,
`
`Defendants
`
`Construing Terms in U.S. Patent Nos. 5,343,970, 7,104,347, and 7,237,634
`
`
`
`Before the Court are Paice’s Opening Brief on Claim Construction (Dkt. No. 46),
`
`Toyota’s Responsive Claim-Construction Brief (Dkt. No. 47), and Paice’s Reply Brief on Claim
`
`Construction (Dkt. No. 51). Also before the Court are the Local Patent Rule (LPR) 4-3 Joint
`
`Claim-Construction and Prehearing Statement (Dkt. No. 45) and the LPR 4-5 Joint Claim-
`
`Construction Chart (Dkt. No. 55). A claim-construction hearing, in accordance with Markman v.
`
`Westview Instruments, 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996), was
`
`held in Texarkana on September 10, 2008. See Dkt. No. 58 (hearing transcript). After hearing
`
`argument of counsel and reviewing the relevant pleadings, presentation materials, other papers,
`
`and case law, the Court finds the disputed terms of the patents-in-suit should be construed as set
`
`forth herein.
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`Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 2 of 29 PageID #: 1468
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`TABLE OF CONTENTS
`
`I. 
`II. 
`III. 
`IV. 
`
`V. 
`
`VI. 
`
`5. 
`
`- i -
`
`BACKGROUND .................................................................................................................. - 1 - 
`LEGAL PRINCIPLES ........................................................................................................... - 1 - 
`PATENTS-IN-SUIT ............................................................................................................. - 2 - 
`U.S. PATENT NO. 5,343,970 ............................................................................................ - 4 - 
`A. 
`Overview ............................................................................................................. - 4 - 
`B. 
`Claim Construction ............................................................................................. - 4 - 
`1. 
`“controllable torque transfer unit” .................................................................... - 4 - 
`2. 
`“means for performing the following functions responsive to input
`commands and monitored operation of said vehicle” ....................................... - 5 - 
`U.S. PATENT NO. 7,104,347 ............................................................................................ - 5 - 
`A. 
`Overview ............................................................................................................. - 5 - 
`B. 
`Claim Construction ............................................................................................. - 6 - 
`1. 
`“controllably coupled” ...................................................................................... - 6 - 
`2. 
`“setpoint (SP)” .................................................................................................. - 9 - 
`3. 
`“road load (RL)” ............................................................................................. - 11 - 
`4. 
`“low-load mode I” .......................................................................................... - 12 - 
`5. 
`“highway cruising mode IV” .......................................................................... - 13 - 
`6. 
`"acceleration mode V” .................................................................................... - 13 - 
`U.S. PATENT NO. 7,237,634 .......................................................................................... - 14 - 
`A. 
`Overview ........................................................................................................... - 14 - 
`B. 
`Claim Construction ........................................................................................... - 18 - 
`“operating at least one electric motor to propel the hybrid vehicle when
`1. 
`the RL required to do so is less than a setpoint (SP)” ..................................... - 18 - 
`“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” ................................................................ - 19 - 
`“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” .............................................................................................................. - 20 - 
`“wherein 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” .................................................................................... - 21 - 
`“wherein energy originating at the battery is supplied to the solid state
`inverter at a maximum current of no more than 150 amperes” ...................... - 22 - 
`
`2. 
`
`3. 
`
`4. 
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`6. 
`
`“wherein energy originating at the battery is supplied to the second
`motor at a peak voltage of at least about 500 volts” ....................................... - 23 - 
`“wherein power originating at the battery is supplied to a second motor at
`a peak current no greater than about 150 amperes” ........................................ - 24 - 
`VII.  CONCLUSION .................................................................................................................. - 25 - 
`
`
`7. 
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`- ii -
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`Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 4 of 29 PageID #: 1470
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`I. BACKGROUND
`This is the second lawsuit between these parties over the same technology, which relates
`
`
`
`to hybrid vehicles. See Civil Action No. 2:04-CV-211. In the previous lawsuit, Paice asserted
`
`claims from U.S. Patent Nos. 5,343,970 (’970 Patent), 6,209,672 (’672 Patent), and 6,554,088
`
`(’088 Patent) against Toyota for infringement by certain Toyota’s vehicles. Id.; Dkt. No. 1.
`
`
`
`In the present lawsuit, Paice contends certain new hybrid vehicles made by Toyota
`
`infringe claims of the ’970 Patent and that all Toyota hybrid vehicles infringe two other patents,
`
`U.S. Patent Nos. 7,104,347 (’347 Patent) and 7,237,634 (’634 Patent) (collectively, the “patents-
`
`in-suit”). These patents are entitled “Hybrid Electric Vehicle,” “Hybrid Vehicles,” and “Hybrid
`
`Vehicles,” respectively. The ’347 Patent issued from a division of the application that became
`
`the ’088 Patent, and the’634 Patent issued from a division of the application that became the’347
`
`Patent. ’347 Patent, at [60] (filed Mar. 7, 2003); ’634 Patent, at [60] (filed Jan. 13, 2006).
`
`
`
`The claim construction in this case involves analyzing terms that have never been
`
`construed as well as terms that have been previously construed by this Court in the first lawsuit.
`
`Because of the technology overlap and the divisional nature of the patents-in-suit, there are also
`
`terms that have been previously construed in a different patent but that now appear in claims of
`
`the newly-asserted Paice patents. For additional background on the previous lawsuit, see Dkt.
`
`No. 91, Civil Action No. 2:04-CV-211 (claim-construction order).
`
`II. LEGAL PRINCIPLES
`A determination of patent infringement involves two steps: first, the patent claims are
`
`
`
`construed, and, second, the claims are compared to the allegedly infringing device. Cybor Corp.
`
`v. FAS Techs., Inc., 138 F.3d 1448, 1455 (Fed. Cir. 1998) (en banc). The legal principles of
`
`claim construction were reexamined by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) (en banc). The Federal Circuit in Phillips expressly reaffirmed the
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`Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 5 of 29 PageID #: 1471
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`principles of claim construction as set forth in Markman v. Westview Instruments, Inc., 52 F.3d
`
`967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996), Vitronics Corp. v. Conceptronic, Inc.,
`
`90 F.3d 1576 (Fed. Cir. 1996), and Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`
`381 F.3d 1111 (Fed. Cir. 2004). Claim construction is a legal question for the courts. Markman,
`
`52 F.3d at 979.
`
`
`
`The Court, in accordance with the doctrines of claim construction which it has outlined in
`
`the past, will construe the claims of the Paice Patents below. See Pioneer v. Samsung, No. 2:07-
`
`CV-170, Dkt. No. 94, at 2-8 (E.D. Tex. filed Mar. 10, 2008) (claim-construction order).
`
`III. PATENTS-IN-SUIT
`The patents-in-suit are directed to particular features of electric/combustion engine hybrid
`
`
`
`drive systems. The ’970 Patent issued on September 6, 1994 from an application filed on
`
`September 21, 1992. The patent generally discloses and claims a hybrid vehicle, including an
`
`internal combustion engine and one electric motor, both of which can provide torque to the
`
`wheels of the vehicle through a controllable torque transfer unit, and that can recharge storage
`
`batteries for the motor. The direction of torque transfer is controlled by a microprocessor
`
`responsive to the mode of operation of the vehicle. The ’970 Patent abstract reads:
`
`An improved hybrid electric vehicle includes an internal combustion engine and
`an electric motor. Both the motor and the engine provide torque to drive the
`vehicle directly through a controllable torque transfer unit. Typically at low
`speeds or in traffic, the electric motor alone drives the vehicle, using power stored
`in batteries; under acceleration and during hill climbing both the engine and the
`motor provide torque to drive the vehicle; and in steady state highway cruising,
`the internal combustion engine alone drives the vehicle. The internal combustion
`engine is sized to operate at or near its maximum fuel efficiency during highway
`cruising. The motor is operable as a generator to charge the batteries as needed
`and also for regenerative braking. No transmission is employed. The motor
`operates at significantly lower currents and higher voltages than conventionally
`and has a rated power at least equal to that of the internal combustion engine. In
`this manner a cost efficient vehicle is provided, suffering no performance
`disadvantage compared to conventional vehicles.
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`’970 Patent, at [57].
`
`
`
`The ’347 Patent issued September 12, 2006 from an application filed on March 7, 2003.
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`’347 Patent, at [22], [45]. The patent generally discloses and claims a hybrid electric vehicle that
`
`includes an internal combustion engine and two separate electric motors, both of which may be
`
`used as traction motors to drive the wheels or generators to charge the battery as appropriate.
`
`’347 Patent, col. 17, ll. 20-35. A microprocessor, or other controller, controls the torque transfer
`
`to provide “highly efficient operation over a wide variety of operating conditions, and while
`
`providing good performance.” Id. at col. 17, ll 9-14. This microprocessor also controls the flow
`
`of energy, whether electrical energy from the battery bank or chemical energy stored as
`
`combustible fuel. Id. at col. 17, ll. 14-17. The abstract from the ’347 Patent reads:
`
`A hybrid vehicle comprises an internal combustion engine, a traction motor, a
`starter motor, and a battery bank, all controlled by a microprocessor in accordance
`with the vehicle’s instantaneous torque demands so that the engine is run only
`under conditions of high efficiency, typically only when the load is at least equal
`to 30% of the engine's maximum torque output. In some embodiments, a
`turbocharger may be provided, activated only when the load exceeds the engine’s
`maximum torque output for an extended period; a two-speed transmission may
`further be provided, to further broaden the vehicle's load range. A hybrid brake
`system provides regenerative braking, with mechanical braking available in the
`event the battery bank is fully charged, in emergencies, or at rest; a control
`mechanism is provided to control the brake system to provide linear brake feel
`under varying circumstances.
`
`’347 Patent, at [57].
`
`
`
`The ’634 Patent issued July 3, 2007 from an application filed January 13, 2006. ’634
`
`Patent, at [22], [45]. The ’634 Patent is subject to a terminal disclaimer. Id. The ’634 Patent is a
`
`division of the application that became the ’347 Patent; therefore, the ’634 Patent disclosure is
`
`substantially similar to that contained in the ’347 Patent. The abstracts are identical and thus
`
`won’t be repeated. Compare ’347 Patent, at [57] with ’634 Patent, at [57].
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`Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 7 of 29 PageID #: 1473
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`IV. U.S. PATENT NO. 5,343,970
`
`A.
`
`
`Overview
`Paice has asserted claims 11 and 39 of the ’970 Patent against Toyota in this lawsuit.
`
`Dkt. No. 46, at 18. Only one term, “controllable torque transfer unit” (CTTU) 1 remains in
`
`dispute. See Dkt. No. 55-2, at 4-5.
`
`B.
`
`
`
`Claim Construction
`1.
`“controllable torque transfer unit”
`a.
`Parties’ Positions
`The parties propose the following constructions for “controllable torque transfer unit,”
`
`which is present in claims 11 and 39. Dkt. No. 55-2, at 2, 4. Claim 39 depends from claim 38,
`
`which depends from claim 32. Id. at 4.
`
`Paice
`A multi-input device or component that is
`controlled to transfer variable amounts of
`torque.
`
`
`
`
`Toyota
`Means-plus-function term, having:
`Function: to control the transfer of torque
`from two inputs to an output.
`Structure: gear box illustrated in Fig. 11
`
`Paice contends this term needs no construction because it has already been construed by
`
`this Court in the previous litigation. Id. Paice further argues there is no justification for the
`
`Court to deviate from its prior construction because (1) the Court was correct in the first
`
`instance, and (2) Toyota has already had a full and fair opportunity to litigate the meaning of the
`
`term. Id.
`
`
`
`Toyota admits that this Court previously construed the CTTU term but contends
`
`collateral estoppel does not apply in this instance because the Federal Circuit did not reach the
`
`construction of the terms when the previous litigation was on appeal. Dkt. No. 47, at 13.
`
`
`
`
`
`
`1 To avoid duplicity, the Court refers the parties to the Court’s prior claim-construction order for the specific claim
`language and analysis regarding the ’970 Patent and more specifically, the CTTU term. See Dkt. No. 91, Civil
`Action No. 2:04-CV-211, at 15-20.
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`b.
`Court’s Construction
`Regardless of whether collateral estoppels applies to the construction of this term, the
`
`
`
`Court finds no reason to deviate from its previous construction. Accordingly, as the Court
`
`previously ruled, the term “controllable torque transfer unit” means “a multi-input device or
`
`component that is controlled to transfer variable amounts of torque (rotary force)”. See
`
`Dkt. No. 91, at 17-20, Civil Action No. 2:04-CV-211.
`
`2.
`
`“means for performing the following functions responsive to input
`commands and monitored operation of said vehicle”
`The parties have agreed on a meaning for this term, which appears in claim 39. The
`
`
`
`proposed construction is:
`
`A computerized control device and associated components for selecting an
`operating mode [mode or state of operation determined by the source and/or
`direction of the flow of energy and/or torque (rotary force) in the system] and
`controlling the engine, motor and battery to implement that mode.
`
`Dkt. No. 55-2, at 5. The Court has no reason to disagree and therefore adopts the parties’
`
`construction.
`
`V. U.S. PATENT NO. 7,104,347
`
`A.
`
`
`Overview
`Paice has asserted claim 7, which depends from claim 1, against Toyota. Dkt. No. 46, at
`
`22. Claim 7 depends from claim 1. For reference, the asserted claims read (disputed terms
`
`emphasized):
`
`1. A hybrid vehicle, comprising:
`
`an internal combustion engine controllably coupled to road wheels of said
`vehicle;
`
`a first electric motor connected to said engine nd [sic] operable to start the
`engine responsive to a control signal;
`
`a second electric motor connected to road wheels of said vehicle, and
`operable as a motor, to apply torque to said wheels to propel said vehicle, and
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`Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 9 of 29 PageID #: 1475
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`as a generator, for accepting torque from at least said wheels for generating
`current;
`
`a battery, for providing current to said motors and accepting charging current
`from at least said second motor; and
`
`a controller for controlling the flow of electrical and mechanical power
`between said engine, first and second motors, and wheels,
`
`wherein said controller starts and operates said engine when torque require
`[sic] to be produced by said engine to propel the vehicle and/or to drive either
`one or both said electric motor(s) to charge said battery is at least equal to a
`setpoint (SP) above which said engine torque is efficiently produced, and
`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.
`
`7. The vehicle of claim 1, wherein said vehicle is operated in a plurality of
`operating modes responsive to the value for the road load (RL) and said setpoint
`SP, both expressed as percentages of the maximum torque output of the engine
`when normally-aspirated (MTO), and said operating modes include:
`
`a low-load mode I, wherein said vehicle is propelled by torque provided by
`said second electric motor in response to energy supplied from said battery,
`while RL<SP,
`
`a highway cruising mode IV, wherein said vehicle is propelled by torque
`provided by said internal combustion engine, while SP<RL<MTO, and
`
`an acceleration mode V, wherein said vehicle is propelled by torque
`provided by said internal combustion engine and by torque provided by either
`or both electric motor(s) in response to energy supplied from said battery,
`while RL>MTO.
`
`’347 Patent, col. 58, ll. 12-37, col 58, l. 58 – col. 59, l. 8 (emphasis added).
`
`B.
`
`
`
`Claim Construction
`1.
`“controllably coupled”
`a.
`Parties’ Positions
`The parties offer the following constructions for “controllably coupled.” Dkt. No. 55-2,
`
`at 7. The parties’ central dispute is whether or not a “clutch” is required.
`
`Paice
`Plain meaning sufficient. Does not require
`construction. If construed, should not be
`
`Toyota
`Connected through a clutch that is controlled to
`selectively connect or disconnect the engine
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`Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 10 of 29 PageID #: 1476
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`limited to coupling through a clutch.
`
`from the road wheels.
`
`
`
`Paice contends this term’s plain and ordinary meaning is sufficient. Dkt. No. 46, at 24.
`
`Toyota, however, argues that an “ordinarily skilled artisan” would understand this term, as used
`
`in the ’347 Patent, to mean “connected through a clutch that is controlled to selectively connect
`
`or disconnect the engine from the road wheels.” Dkt. No. 47, at 15. The thrust of Toyota’s
`
`argument is that because every embodiment described in the ’347 Patent has the internal
`
`combustion engine (ICE) connected to the wheels of the vehicle through a clutch and because the
`
`term is not defined in the ’347 Patent specification, one must look to the embodiments to define
`
`this term. Id. Further, argues Toyota, “ordinary meaning” is not applicable if that meaning
`
`strays from the scope of the originally-filed application. Id. (citing Schering Corp. v. Amgen
`
`Inc., 222 F.3d 1347, 1351-54 (Fed. Cir. 2000)).
`
`
`
`Paice responds that (1) Toyota’s construction not only violates the plain and ordinary
`
`meaning of the term but also that (2) the intrinsic record clearly demonstrates the applicant never
`
`intended for “controllably coupled” to be limited to “controllably coupled through a clutch.”
`
`Dkt. No. 51, at 13. Specifically, Paice notes that during prosecution, the term “controllably
`
`coupled” was added to three claims by preliminary amendment, two of which additionally
`
`recited “by a clutch” and one that did not. Id. at 12-13. In later amendments, the words “by a
`
`clutch” were explicitly deleted from those two claims and a new claim was added that recited
`
`“controllably coupled” without a clutch. Id. at 13.
`
`b.
`Court’s Construction
`The Court finds the term “controllably coupled” should not be limited to a clutch. Toyota
`
`
`
`inappropriately seeks to read the “clutch” limitation into claim 1 when the plain language of the
`
`claim does not include it. See Cybor, 138 F.3d at 1471. Further, claim terms are to be given
`
`their plain and ordinary meaning absent a different meaning deliberately set forth in the intrinsic
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`Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 11 of 29 PageID #: 1477
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`record. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1362-63 (Fed. Cir. 1999). The Court
`
`agrees with Paice that Schering is not applicable here because, unlike the term at issue in
`
`Schering that had a changed meaning in the art, the term “controllably coupled” has not changed
`
`in meaning; hence, the originally-filed claims were never amended to raise a new matter
`
`question. Finally, the Court finds the doctrine of claim differentiation also indicates that
`
`“controllably coupled” should not be limited to a clutch, as dependent claim 21 specifically
`
`recites the clutch limitation. See ’347 Patent, col. 60, ll. 14-16.
`
`
`
`However, this term is clearly in dispute; the Court therefore has a duty under O2 Micro
`
`Int’l Ltd v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008) to provide a
`
`construction. The ’347 Patent specification in several places describes a “clutch” as the
`
`mechanism by which the ICE is selectively connected to the road wheels. See, e.g., ’347 Patent,
`
`col. 17, ll. 28-33, col. 17, l. 58 – col. 18, l. 2, col. 26, ll. 25-27, col. 27, ll. 6-20. The claim
`
`clearly does not recite a clutch; instead, the claim recites only the “controlled connection”
`
`between the ICE and the road wheels. This “controlled connection” refers to the selective
`
`connection between the ICE and the road wheels as controlled by a microprocessor or other
`
`controller. See ’347 Patent, col. 25, ll. 53-66. “In each case, the engine is controllably
`
`disconnected from the road wheels by control of the clutch. Engagement of the clutch is
`
`controlled by the microprocessor.” ’347 Patent, col. 17, l. 66 – col. 18, l. 2. Thus, what is
`
`claimed is the “selective connection/disconnection” and the “control” over that
`
`connection/disconnection, not the device (e.g., clutch) through which the selective connection is
`
`achieved.
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`
`
`Accordingly, the Court construes “controllably coupled” to mean “selectively
`
`connected through a mechanism that is controlled by a microprocessor.” Microprocessor is
`
`defined in the patent. See ’347 Patent, col. 25, ll. 53-66.
`
`2.
`
`“setpoint (SP)”
`a.
`Parties’ Positions
`The parties offer the following constructions for “setpoint (SP)” that appears in asserted
`
`
`
`claim 7, which depends from claim 1. Dkt. No. 55-2, at 8. The primary disagreement between
`
`the parties is whether the setpoint is a value at which a transition between modes must occur and
`
`whether the setpoint is necessarily a torque value.
`
`Paice
`A defined, but potentially variable value at
`which a transition between modes of operation
`may occur.
`
`Toyota
`A value of torque that defines the transition
`point between the low-load mode I operating
`mode and the highway cruising mode IV.
`
`
`
`The parties have some agreement on this term. Both parties agree that “setpoint” refers
`
`to a variable value that defines the transition point between operating modes. Compare Dkt. No.
`
`46, at 24 with Dkt. No. 47, at 17.
`
`
`
`Beyond that, Paice contends the term setpoint is clearly defined by the patent to be a
`
`value that is potentially variable over time that is used to indicate transition points between
`
`modes of operation. Dkt. No. 46, at 24-25 (citing ’347 Patent, col. 58, ll. 29-33, col. 58, ll. 58-
`
`60, col. 58, ll. 38-40, col. 58, ll. 53-54, and col. 40, ll. 22-32). Toyota agrees that setpoint is
`
`potentially variable but argues that the specification mandates that the setpoint is expressed in
`
`terms of torque and that it must define the transition point between low-load mode I and highway
`
`cruising mode IV. Dkt. No. 47, at 17. Toyota cites to the ’347 Patent, column 40, lines 47-55
`
`for the basis of its argument.
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`Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 13 of 29 PageID #: 1479
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`b.
`Court’s Construction
`The Court finds Toyota’s arguments unpersuasive. The portion of the patent
`
`
`
`specification Toyota cites for setpoint discusses a particular embodiment. Although it is possible
`
`that a setpoint may always be determined to be a torque value, there is nothing in the claims or
`
`specification that indicate a given setpoint value is actually represented in terms of torque. In
`
`fact, the specification clearly indicates that the state of charge of the battery bank, “expressed as
`
`a percentage of its full charge” is compared against setpoints, the result of the comparisons being
`
`used to control the mode of the vehicle. ’347 Patent, col. 40, ll. 28-31. Clearly a setpoint based
`
`on the battery charge status is not a torque value. See also ’347 Patent, col. 41, ll. 10-19 (“It is
`
`also within the scope of the invention to make setpoint SP . . . somewhat ‘fuzzy’”).
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`
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`As for Paice’s other argument, that setpoints define where a transition must occur
`
`between modes, the Court is likewise unconvinced. The specification indicates that the
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`invention embodies buffering setpoints with time such that a setpoint must be exceeded for a
`
`certain amount of time before a transition between modes occurs. See ’347 Patent, col. 41, ll. 41-
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`46 (“for example, mode IV might be entered from mode I only after the road load exceeded a
`
`first, lower setpoint SP for an extended period of time, so that the engine would be run for
`
`extended low-speed cruising”); id. at col. 58, l.. 41-47 (claim 3, including limitation that
`
`transition occurs only after setpoint is exceed “for at least a predetermined time”). Thus, the
`
`’347 Patent does not mandate that transitions necessarily occur solely because a setpoint is
`
`reached. Because there can be other factors, such as time, that determine whether a transition
`
`will indeed occur, the “must” limitation should not be read into the claim. Accordingly, the
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`Court construes “setpoint (SP)” to mean “a definite, but potentially variable value at which a
`
`transition between operating modes may occur.”
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`3.
`
`“road load (RL)”
`a.
`Parties’ Positions
`The parties offer the following constructions for “road load (RL)” that appears in claim 7,
`
`
`
`which depends from claim 1. Dkt. No. 55-2, at 8. This term also appears in claim 215 of the
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`’634 Patent. Id. at 10. This term was construed in the previous litigation. See Dkt. No. 91, at
`
`41, Civil Action No. 2:04-CV-211. The parties principal dispute is whether the construction
`
`should include the notion that instantaneous torque may be positive or negative.
`
`Paice
`The instantaneous torque required for
`propulsion of the vehicle.
`
`Toyota
`The instantaneous torque required for
`propulsion of the vehicle, which must be
`capable of being either positive or negative.
`
`
`
`Paice contends the Court’s previous construction is binding on Toyota in this case and
`
`that the Court appropriately considered the notion that the term can be positive or negative in the
`
`previous litigation by including the modifying term “instantaneous” to torque. Dkt. No. 51, at
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`17. Toyota argues it is not collaterally estopped from disputing this term because the Federal
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`Circuit did not reach the construction on appeal. Dkt. No. 47, at 19. Toyota contends the Court
`
`should adopt Toyota’s proposed construction from the previous case or its proposed definition
`
`here. Id. Importantly, argues Toyota, the construction should include the fact that the value can
`
`be positive or negative. Id. At the claim-construction hearing, Paice did not dispute that road
`
`load could be positive or negative, and Paice had no problem with the positive/negative
`
`distinction being added to the construction, although Paice did not feel it was necessary. Dkt. No.
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`58, at 54-57.
`
`b.
`Court’s Construction
`The Court adopts its previous construction but adds the positive/negative distinction in
`
`
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`the construction to clarify what is meant by “instantaneous” in the construction. Accordingly,
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`Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 15 of 29 PageID #: 1481
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`the Court construes “road load” to mean “the instantaneous torque required for propulsion
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`of the vehicle, which may be positive or negative in value.”
`
`4.
`
`“low-load mode I”
`a.
`Parties’ Positions
`The parties offer the following constructions for “low-load mode I” that appears in claim
`
`
`
`7, which depends from claim 1. Dkt. No. 55-2, at 9. This term was construed in the previous
`
`litigation. See Dkt. No. 91, Civil Action No. 2:04-CV-211. The parties’ principal dispute is
`
`whether all torque to drive the road wheels must be provided by the electric traction motor.
`
`Paice
`The mode of operation in which energy flows
`from the battery bank to the traction motor and
`torque flows from the traction motor to the
`road wheels.
`
`Toyota
`An operating mode in which all torque is
`provided to the road wheels by the traction
`motor operating on electrical energy supplied
`by the battery bank.
`
`
`
`Paice contends collateral estoppels bars reconstruction of this term. Dkt. No. 46, at 26.
`
`Further, Paice contends the term is clearly defined in the ’347 Patent claims and that definition
`
`should be used. Id (citing ’347 Patent, col. 58, ll. 64-67). Toyota makes the same argument it
`
`made in the previous case—that embodiment figures from the patent indicate this mode is a
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`“motor-only” mode. Dkt. No. 47, at 22.
`
`b.
`Court’s Construction
`The Court rejects Toyota’s arguments here for the same reason the Court rejected them in
`
`
`
`the previous litigation. The ’347 Patent claim 7 clearly defines this term. Accordingly, the
`
`Court construes “low-load mode I” to mean “the mode of operation in which energy from the
`
`battery bank flows to the traction motor and torque (rotary force) flows from the traction
`
`motor to the road wheels.”
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`Case 2:07-cv-00180-DF Document 63 Filed 12/05/08 Page 16 of 29 PageID #: 1482
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`5.
`
`“highway cruising mode IV”
`a.
`Parties’ Positions
`The parties offer the following constructions for “highway cruising mode IV” that
`
`
`
`appears in claim 7, which depends from claim 1. Dkt. No. 55-2, at 9. This term was construed
`
`in the previous litigation. See Dkt. No. 91, at 41, Civil Action No. 2:04-CV-211. The parties’
`
`principal dispute is whether, in this mode, all torque is provided to the road wheels by the
`
`internal combustion engine.
`
`Paice
`The mode of operation in which energy flows
`from the fuel tank into the engine and torque
`flows from the engine to the road wheels.
`
`Toyota
`An operating mode in which all torque is
`provided to the road wheels by the ICE and the