throbber
IN THE UNITED STATES DISTRICT COURT FOR
`
`THE DISTRICT OF MARYLAND, NORTHERN DIVISION
`
`*
`
`PAICE LLC, et al.,
`
`Plaintiffs,
`
`V.
`
`CIVIL NO.: WDQ-12-0499
`
`HYUNDAI MOTOR COMPANY, et al.,
`
`Defendants.
`
`MEMORANDUM OPINION
`
`Paice LLC (“Paice”) and The Abell Foundation,
`
`Inc.
`
`(“Abell")
`
`(collectively,
`
`the “P1aintiffs”) sued Hyundai Motor
`
`Company, Hyundai Motor America (together, “Hyundai"), and others1
`
`(collectively,
`
`the “Defendants”)
`
`for patent infringement.
`
`Pending is the Defendants’ motion to file first amended
`
`invalidity contentions, and claim construction.
`
`On January 14,
`
`2014,
`
`the Court held a claim construction hearing.
`
`For the
`
`following reasons,
`
`the Defendants’ motion to file first amended
`
`invalidity contentions will be denied, and the claim
`
`constructions adopted by the Court will govern this litigation.
`
`1 The other defendants are Kia Motors Corporation and Kia Motors
`America,
`Inc.
`(together, “Kia”).
`See ECF No. 52, Ex.
`1
`(hereinafter “2d Am. Compl.”).
`
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`I.
`
`Background’
`
`A.
`
`The Parties
`
`Paice is a Delaware limited liability company with a place
`
`of business in Bonita Springs, Florida.
`
`2d Am. Compl.
`
`fl 1.
`
`Since Paice was established in 1992 by Doctor Alex J.
`
`Severinsky,
`
`the company has developed “innovative hybrid
`
`electric technology” to promote fuel efficiency,
`
`lower
`
`emissions, and “superior driving performance."
`
`Id. According
`
`to Paice, its hybrid patents are “well known" in the automotive
`
`industry.
`
`Id.
`
`fl 30.3 Abell, a Maryland corporation,
`
`is a
`
`nonprofit charitable organization whose objectives include
`
`increasing energy efficiency and producing alternative energy.
`
`Id.
`
`fl 2.
`
`In 1998, Abell was introduced to Paice and has become
`
`an equity owner of the company.
`
`Id. Hyundai Motor Company and
`
`Kia Motors Corporation are Korean companies.
`
`Id.
`
`flfl 3-4.
`
`Hyundai Motor America is a California subsidiary of Hyundai
`
`Motor Company,
`
`id.
`
`1 5; Kia Motors America,
`
`Inc.
`
`is a California
`
`subsidiary of Kia Motors Corporation,
`
`id.
`
`fl 6. Hyundai and Kia
`
`are “related companies" and share information and technology.
`
`Id.
`
`1] 34.
`
`2 The facts are from the Plaintiffs’ proposed second amended
`complaint.
`
`IP firm Griffith Hack published a study
`in 2010,
`3 For instance,
`in which it found that Paice owns four of the world's 10 most
`
`dominant hybrid vehicle patents.
`
`2d Am. Compl.
`
`1 30.
`
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`B.
`
`The Patents in Suit
`
`Paice and Abell are co-owners by assignment of the entire
`
`right, title, and interest in and to U.S. Patent Nos. 6,209,672
`
`(the “‘672 patent”);‘ 7,104,347 (the “‘347 patent");5 7,237,634
`
`(the “‘634 patent");‘ 7,559,388 (the “‘388 patent”);7 and
`
`8,214,097 (the “‘097 patent”).°
`
`2d Am. Compl.
`
`1% 11-16.
`
`The
`
`‘347,
`
`‘634,
`
`‘388, and ‘097 patents issued from continuation-in-
`
`part applications relating to the ‘672 patent.
`
`Id.
`
`1 16.
`
`The
`
`‘672 patent is entitled “Hybrid Vehicle" and protects a “hybrid
`
`electric vehicle that is fully competitive with presently
`
`conventional vehicles as regards performance, operating
`
`convenience, and cost, while achieving substantially improved
`
`fuel economy and reduced pollutant emissions.”
`
`‘672 patent,
`
`Col. 1, 11.13-13.9
`
`“ The ‘672 patent issued on April 3, 2001.
`
`Am. Compl. 1 14.
`
`5 The ‘347 patent issued on September 12, 2006.
`
`Id.
`
`fl 12.
`
`‘ The ‘634 patent issued on July 3, 2007.
`
`Id.
`
`1 11.
`
`7 The ‘388 patent issued on July 14, 2009.
`
`Id.
`
`fl 13.
`
`“ The ‘o97 patent issued on July 3, 2012.
`
`Id.
`
`fl 15.
`
`9 The ‘672 patent is attached to the first amended complaint at
`ECF No. 27-2.
`
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`C.
`
`Procedural History
`
`On February 16, 2012,
`
`the Plaintiffs filed suit against the
`
`Defendants for directly,
`
`indirectly, and willfully infringing
`
`the ‘634,
`
`‘347, and ‘388 patents,
`
`in violation of 35 U.S.C.
`
`§
`
`271.
`
`ECF No. 1.
`
`On March 20, 2012,
`
`the parties stipulated to,
`
`and the Court approved, an extension of time to respond to the
`
`complaint.
`
`ECF Nos. 5, 8.
`
`On May 22, 2012,
`
`the Defendants
`
`timely moved to dismiss.
`
`ECF No. 14.
`
`On June 8, 2012,
`
`the
`
`Plaintiffs opposed the motion and moved for leave to file an
`
`amended complaint.
`
`ECF No. 24.
`
`On June 13, 2012,
`
`the Court
`
`denied the Defendants’ motion to dismiss as moot and deemed the
`
`proposed amended complaint filed as of June 13, 2012.
`
`ECF No.
`
`26. Also on June 13,
`
`the Plaintiffs filed the first amended
`
`complaint.
`
`ECF No. 27.” On June 27, 2012,
`
`the Defendants moved
`
`m The amended complaint alleged eight causes of action:
`(1) Direct,
`indirect, and willful infringement of the ‘634
`patent, against Hyundai
`(Count One)
`(2) Direct,
`indirect, and willful infringement of the ‘634
`patent, against Kia (Count Two)
`(3) Direct,
`indirect, and willful infringement of the ‘347
`patent, against Hyundai
`(Count Three);
`(4) Direct,
`indirect, and willful infringement of the ‘347
`patent, against Kia (Count Four);
`(5) Direct,
`indirect, and willful infringement of the ‘388
`patent, against Hyundai
`(Count Five);
`(6) Direct,
`indirect, and willful infringement of the ‘388
`patent, against Kia (Count Six);
`(7) Direct,
`indirect, and willful infringement of the ‘672
`patent, against Hyundai
`(Count Seven); and
`(8) Direct,
`indirect, and willful infringement of the ‘672
`patent, against Kia (Count Eight).
`
`4
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`to dismiss for failure to state a claim.
`
`ECF No. 29.
`
`On July
`
`16, 2012,
`
`the Plaintiffs opposed the motion.
`
`ECF No. 30.
`
`On
`
`July 30, 2012,
`
`the Defendants replied.
`
`ECF No. 31.
`
`On March
`
`27, 2013,
`
`the Court denied the Defendants’ motion to dismiss.
`
`ECF Nos. 32, 33.
`
`On April 10, 2013,
`
`the Defendants answered the amended
`
`complaint and asserted counterclaims for declaratory judgment of
`
`the invalidity and non-infringement of the patents.
`
`ECF No. 34
`
`at 15-19.
`
`On May 6, 2013,
`
`the Plaintiffs answered the
`
`Defendants’ counterclaims.
`
`ECF No. 38.
`
`On May 20, 2013,
`
`the
`
`Court entered a scheduling order pursuant to Local Rule 103.9.
`
`ECF No. 49.
`
`The order provided that any motion to amend the
`
`pleadings must be filed within 60 days.
`
`Id. at 1 1 8.
`
`On May
`
`28, 2013,
`
`the Court modified the scheduling order to limit the
`
`number of proposed terms for construction to 15, and to limit
`
`the number of asserted claims to 30 within 15 days of the claim
`
`construction ruling.
`
`ECF No. 50.
`
`On June 7, 2013,
`
`the Plaintiffs moved for leave to file a
`
`second amended complaint adding the ‘097 patent to the case.
`
`
`
`The complaint sought judgments that
`ECF No. 27 1% 35-90.
`Hyundai and Kia infringed the patents in suit; compensatory
`damages; pre- and post-judgment interest; attorney's fees; and a
`permanent injunction prohibiting further infringement
`(or,
`alternatively, determination of an ongoing royalty).
`Id. at 27-
`28.
`
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`ECF No. 52.” On June 13, 2013,
`
`the Court entered a scheduling
`
`order superseding the May 20, 2013 order.
`
`ECF No. 53.
`
`The new
`
`scheduling order stated that any motion to amend the pleadings
`
`must be filed within 60 days of the order.
`
`Id. at 1 fl 8.
`
`On
`
`June 24, 2013,
`
`the Defendants opposed the motion for leave to
`
`amend.
`
`ECF No. 56.
`
`On July 5, 2013,
`
`the parties submitted a
`
`joint discovery plan.
`
`ECF No. 58.
`
`On July 12, 2013,
`
`the
`
`Plaintiffs replied.
`
`ECF No. 62.
`
`On October 15, 2013,
`
`the parties submitted a Joint Claim
`
`Construction statement.
`
`ECF No. 71.
`
`On November 5, 2013,
`
`the
`
`Defendants moved for leave to serve first amended invalidity
`
`contentions.
`
`ECF No. 74.
`
`On November 6, 2013,
`
`the case was
`
`referred to Magistrate Judge Susan K. Gauvey for discovery. ECF
`
`No. 76.
`
`On November 14, 2013,
`
`the Plaintiffs submitted their
`
`opening claim construction brief.
`
`ECF No. 78.
`
`on November 14,
`
`2013,
`
`the Defendants filed their opening claim construction
`
`brief.
`
`ECF No. 79.
`
`On November 22, 2013,
`
`the Plaintiffs
`
`opposed the motion for leave to serve first amended invalidity
`
`contentions.
`
`ECF No. 83.
`
`On December 9, 2013,
`
`the Defendants
`
`11 The second amended complaint alleges two additional causes of
`action:
`
`indirect, and willful infringement of the ‘097
`(1) Direct,
`patent, against Hyundai
`(Count Nine)
`(2) Direct,
`indirect, and willful infringement of the ‘097
`patent, against Kia (Count Ten).
`2d Am. Compl. 11 93-104.
`
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`replied.
`
`ECF No. 84.
`
`On December 16, 2013,
`
`the Defendants
`
`filed their responsive claim construction brief.
`
`ECF No. 89.
`
`On December 17, 2013,
`
`the Court granted leave to file a
`
`second amended complaint.
`
`ECF Nos. 92, 93.
`
`On January 3, 2014,
`
`the Plaintiffs answered the amended complaint and
`
`counterclaimed.
`
`ECF No. 97.
`
`On January 14, 2014,
`
`the Court
`
`held a claim construction hearing.
`
`ECF No. 106.
`
`On May 30,
`
`2014,
`
`the Defendants moved for leave to serve second amended
`
`invalidity contentions.
`
`ECF No. 256.
`
`On June 16, 2014,
`
`the
`
`Plaintiffs opposed the motion for leave to serve second amended
`
`invalidity contentions.
`
`ECF No. 309.
`
`On July 3, 2014,
`
`the
`
`Defendants replied.
`
`ECF No. 353.
`
`II. Analysis
`
`A. Motion to File First Amended Invalidity Contentions
`
`The Defendants move to amend their invalidity contentions
`
`to add an indefiniteness defense under 35 U.S.C.
`
`§ 112 fl 2 for 5
`
`claim terms.
`
`See ECF No. 75 at 1. Under Local Rule 804.6, a
`
`party may amend its invalidity contentions “upon written consent
`
`of all parties or, for good cause shown, upon leave of the
`
`Court."
`
`See Local Rule 804.6.
`
`The parties have not identified, and the Court has not
`
`found, any cases applying Local Rule 804.6 in the context of
`
`amending invalidity contentions. other district courts have
`
`similar local patent rules that require a showing of “good
`
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`cause” to amend invalidity contentions.” The Federal Circuit
`
`has addressed the application of a “good cause" standard found
`
`in local district court rules.
`
`See 02 Micro Int'1 Ltd. V.
`
`Monolithic Power Sys., Inc., 467 F.3d 1355, 1363 (Fed. Cir.
`
`2006)
`
`(addressing the application of the Northern District of
`
`California's local patent rules requiring a finding of “good
`
`cause” to amend contentions).
`
`The Federal Circuit held that the
`
`“good cause” standard requires a showing of diligence.
`
`See 02
`
`Micro Int'1, 467 F.3d at 1366.
`
`The burden is on the moving
`
`party to establish diligence.
`
`Id. at 1366. Local patent rules
`
`are designed to “require the parties to crystallize their
`
`theories of the case early in the litigation so as to prevent
`
`the shifting sands approach to claim construction.”
`
`Id. at 1364
`
`(internal quotation marks and citations omitted).
`
`The patent
`
`rules “seek to balance the right to develop new information in
`
`discovery with the need for certainty as to legal theories.”
`
`Id. at 1366.
`
`12 See, e.g., Veolia Water Solutions & Techs. Support v. Siemens
`Indus., Inc., No. 5:11-CV-00296-FL, 2013 WL 2149209, at *2
`(E.D.N.C. May 16, 2013)
`(local rule in Eastern District of North
`Carolina allows amendment upon a showing of good cause);
`Nautilus Neurosciences,
`Inc. V. Wockhardt USA LLC, No. 11-1997-
`ES-SCM, 2013 WL 7901901, at *2 (D.N.J. Jan. 23, 2013)
`(District
`of New Jersey local rule requiring a showing of good cause to
`amend invalidity contentions); Fleming v. Escort, Inc., No. CV-
`09-10S—S—BLW, 2011 WL 1542126, at *2 (D.
`Idaho April 21, 2011)
`(District of Idaho local rule requiring showing of good cause).
`
`8
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`The Defendants argue that there is good cause here because
`
`they “attempted to resolve any potential issue regarding the
`
`validity of these claim terms through the claim construction
`
`meet and confer process.”
`
`ECF No. 75 at 7.
`
`The Defendants
`
`assert that they raised the issue of indefiniteness “at the
`
`appropriate time" during the meet and confer process, but these
`
`amendments are required because the Plaintiffs did not
`
`participate meaningfully in the process.
`
`See ECF No. 75 at 3;
`
`ECF No. 84 at 4-7.
`
`The Defendants have not demonstrated good cause to amend
`
`the invalidity contentions.
`
`The Defendants’ request to amend is
`
`not the result of any newly discovered information.
`
`See 02
`
`Micro Int’l, 467 F.3d at 1366 (requiring parties to amend their
`
`contentions promptly after discovering new information).
`
`The
`
`Defendants’ assertions that the proposed amendments are the
`
`result of “continuing diligent analysis" of the asserted claims
`
`and “attempts to resolve the bounds of the allegedly indefinite
`
`claim term through the claim construction meet and confer
`
`process"” do not establish that they were diligent in
`
`discovering the ambiguities. Cf. Nautilus Neurosciences, Inc.,
`
`2013 WL 7901901, at *7 (“Diligence does not exist where
`
`Defendants uncover the basis of an invalidity defense during the
`
`1’ EC}? No. 84 at 5.
`
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`claim construction process if they could have done so prior to
`
`filing their invalidity contentions.”).
`
`The Defendants have not
`
`sufficiently explained why they were unable to discover the
`
`basis for the indefiniteness defense for these claim terms
`
`before filing their invalidity contentions. Because the
`
`Defendants have not demonstrated diligence,
`
`they have not made
`
`the required showing of good cause. Accordingly,
`
`the
`
`Defendants’ motion to amend their invalidity contentions will be
`
`denied.
`
`B.
`
`Claim Construction
`
`1.
`
`Legal Standard
`
`Claim construction is a question of law,
`
`to be determined
`
`by the Court. Markman V. Westview Instruments, Inc., 517 U.S.
`
`370, 384 (1996). Specifically, “[c]laim construction is a
`
`matter of resolution of disputed meanings and technical scope,
`
`to clarify and when necessary to explain what the patentee
`
`covered by the claims,
`
`for use in the determination of
`
`infringement.
`
`It is not an obligatory exercise in redundancy.”“
`
`Therefore, “district courts are not
`
`.
`
`.
`
`. required to construe
`
`every limitation present in a patent's asserted claims.”
`
`02
`
`Micro Int’l Ltd. V. Beyond Innovation Tech. Co., 521 F.3d 1351,
`
`1362 (Fed. Cir. 2008).
`
`For instance,
`
`terms that are
`
`“ U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568
`(Fed. Cir. 1997), cert. denied, 522 U.S. 950 (1997).
`
`10
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`“commonplace” or that “a juror can easily use []
`
`in her
`
`infringement fact-finding without further direction from the
`
`court" need not be construed because they “are neither
`
`unfamiliar to the jury, confusing to the jury, nor affected by
`
`the specification[“] or prosecution history[”].”“
`
`“Although a claim is not to be construed in light of the
`
`accused device, it must inevitably be construed in the context
`
`of the accused device.” Pulse Med. Instruments,
`
`Inc. v. Drug
`
`Impairment Detection Servs., Inc., No. DKC 07-1388, 2009 WL
`
`6898404, at *2 (D. Md. Mar. 20, 2009).
`
`“It is only after the
`
`claims have been construed without reference to the accused
`
`device that the claims, as so construed, are applied to the
`
`accused device to determine infringement.”
`
`SRI Int’l V.
`
`Matsushita Elec. Cbrp. of Am., 775 F.2d 1107, 1118 (Fed. Cir.
`
`1985)
`
`(en banc)
`
`(emphasis in original).
`
`“ The “specification” is “[t]he part of a patent application
`describing how an invention is made and used,
`the best mode of
`operation of the claimed invention, and the inventor's claims.”
`Black's Law Dictionary 1528 (9th ed. 2009).
`
`“ Also termed the “file wrapper,” the prosecution history is
`“[t]he complete record of proceedings in the [PTO]
`from the
`initial application to the issued patent or trademark;
`specif[ically], a patent or trademark-registration application
`together with all documentation, correspondence, and any other
`record of proceedings before the PTO concerning that
`application.”
`Id. at 704.
`
`“ Bd. of Trs. of Leland Stanford Junior Univ. V. Roche Molecular
`
`Sys., Inc., 528 F. Supp. 2d 967, 976 (N.D. Cal. 2007).
`
`11
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`“It 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.” Phillips V. AWH Corp., 415 F.3d 1303,
`
`1312 (Fed. Cir. 2005)
`
`(internal quotation marks omitted), cert.
`
`denied, 546 U.S. 1170 (2006). Thus, when construing a claim, a
`
`court should give its words their “ordinary and customary
`
`meaning” as would be understood by “a person of ordinary skill
`
`in the art in question at the time of the invention.”
`
`Id. at
`
`1313.
`
`“The claim should be read within the context of the
`
`entire patent,
`
`including the specification.” Pulse, 2009 WL
`
`6898404, at *2.
`
`The specification “is always highly relevant to
`
`the claim construction analysis. Usually it is dispositive; it
`
`is the single best guide to the meaning of a disputed term.”
`
`Vitronics Corp. V. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
`
`Cir. 1996).
`
`“The specification functions as a dictionary to
`
`explain the claimed subject matter and define the terms used in
`
`the claims[, but]
`
`is to be used only to interpret words or
`
`phrases of a patent claim, not to add to, or detract from,
`
`the
`
`language of the claims.” C.M.L. s.r.l. v.
`
`Ineco Indus. Navarra
`
`de Equipos y Comercio, S.A., 177 F. Supp. 2d 442, 445 (D. Md.
`
`2001)
`
`(internal citation omitted).
`
`“In some instances,
`
`the
`
`ordinary meaning of a claim as understood by a person of skill
`
`in the art will be readily apparent from the words themselves
`
`and in those situations, general language dictionaries may be of
`
`12
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`assistance." Pulse, 2009 WL 6898404, at *2 (citing Phillips,
`
`415 F.3d at 1314).
`
`“In addition to consulting the specification .
`
`.
`
`. a court
`
`should also consider the patent’s prosecution history,
`
`if it is
`
`in evidence." Phillips, 415 F.3d at 1317 (internal quotation
`
`marks omitted).
`
`“The prosecution history limits the interpreta-
`
`tion of claim terms so as to exclude any interpretation that was
`
`disclaimed during prosecution." Southwall Techs.,
`
`Inc. V.
`
`Cardinal
`
`IG Cb., 54 F.3d 1570, 1576 (Fed. Cir. 1995). cert.
`
`denied, 516 U.S. 987 (1995).
`
`“Yet because the prosecution
`
`history represents an ongoing negotiation between the PTO and
`
`the applicant, rather than the final product of that negotia—
`
`tion, it often lacks the clarity of the specification and thus
`
`is less useful for claim construction purposes.” Phillips, 415
`
`F.3d at 1317.
`
`“In most situations, an analysis of the intrinsic
`
`evidence alone will resolve any ambiguity in a disputed claim
`
`term.
`
`In such circumstances, it is improper to rely on
`
`extrinsic evidence.” Vitronics, 90 F.3d at 1583. Extrinsic
`
`evidence,
`
`including expert and inventor testimony, dictionaries,
`
`and learned treatises,
`
`the
`to explain scientific principles,
`may be helpful
`that
`meaning of
`technical
`terms,
`and terms of art
`appear
`in
`the
`patent
`and
`prosecution
`history.
`Extrinsic evidence may demonstrate the state of
`the
`prior art at the time of
`the invention.
`It is useful
`to show what was
`then old,
`to distinguish what was
`
`13
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`new, and to aid the court
`patent.
`
`in the construction of
`
`the
`
`Markman, 52 F.3d 967, 980 (Fed. Cir. 1995)
`
`(internal quotation
`
`marks omitted), aff’d, 517 U.S. 370 (1996).
`
`“In sum, extrinsic
`
`evidence may be useful to the court, but it is unlikely to
`
`result in a reliable interpretation of patent claim scope unless
`
`considered in the context of the intrinsic evidence." Phillips,
`
`415 F.3d at 1319.
`
`2.
`
`Disputed Terms
`
`The Court will address six disputed claim terms.”
`
`” The parties’ Joint Claim Construction Statement identified 14
`disputed terms for claim construction.
`ECF No. 71-1.
`The
`Defendants did not provide support in their briefs or at the
`hearing for their proposed constructions for terms 6 and 8 of
`the Joint Claim Construction Statement.
`The Court will consider
`these arguments waived and, because the Plaintiffs argue that
`the terms do not require construction,
`the Court will not
`construe these terms.
`
`The Defendants indicated at the hearing that Terms 3, 4,
`and 5 of the Joint Claim Construction Statement were no longer
`in dispute.
`See Hr'g 157:1-6. Accordingly,
`the Court will not
`construe those terms.
`
`The Defendants argued in their briefings that Terms 9 and
`10 of the joint statement are indefinite. However, as discussed
`above, supra Part II.A.,
`the Defendants failed to include these
`terms in their invalidity contentions.
`The Court will not
`address their invalidity for indefiniteness argument, and thus
`will not construe these terms. Similarly,
`the Court will not
`address the indefiniteness arguments for terms 12, 13, and 14,
`and instead address only the Defendants’ alternative proposed
`constructions.
`
`Terms 12 and 14 of the Joint Claim Construction Statement
`
`the Court will address the
`were briefed together; accordingly,
`terms as combined into one construction.
`
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`a.
`
`Term 1
`
`Claim Term
`
`
`
`Plaintiffs’ proposed
`
`Defendants’ proposed
`construction
`
`construction
` “the instantaneous
`torque required for
`propulsion of the
`vehicle, which may be
`positive or negative
`a given speed, which
`in value.”
`may be positive or
`
`negative in value.”
`
`
`
`
`
`
`
`“the amount of torque
`actually required to
`propel the vehicle on
`the road to maintain
`
`
`
`“road load (RL)"
`
`
`
`i.
`
`Torque Required for Propulsion
`
`The parties agree that “road load" is an instantaneous
`
`torque value and that value may be positive or negative.
`
`See
`
`Hr’g 109:19-110:5l.
`
`The Plaintiffs argue that their
`
`construction tracks the definition of “road load” stated in the
`
`claims themselves.
`
`See ECF No. 78 at 16; Hr’g 94:25-95:15.
`
`For
`
`example,
`
`in the ‘672 patent, Claim 15 recites: “wherein torque
`
`to propel said vehicle is provided by said traction motor, said
`
`engine, and both, respectively,
`
`in response to monitoring the
`
`instantaneous torque requirements required for propulsion of the
`
`vehicle (RL).”
`
`‘672 patent col.39:42-46 (emphasis added). This
`
`same definition is found in other patents.” The Plaintiffs
`
`argue that this construction is also consistent with the
`
`19 Term 1 in the Joint Claim Construction Statement.
`1.
`
`ECF No. 71-
`
`“determining
`the ‘634 patent at Claim 80 states:
`2° For example,
`instantaneous road load (RL) required to propel the hybrid
`vehicle."
`‘634 patent col. 65:11-14.
`
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`specification.
`
`See ECF No. 78 at 17.
`
`For example,
`
`the ‘672
`
`patent specification states “the vehicle's instantaneous torque
`
`requirements or ‘road load.’”
`
`‘672 patent col. 28:5-7.
`
`The Defendants argue that their proposed construction of
`
`“road load” clarifies that it does not
`
`include torque generated
`
`for purposes other than propelling the vehicle on the road, such
`
`as the torque required to charge the battery.
`
`ECF No. 79 at 18.
`
`The claim language and specification demonstrate that “road
`
`load” is the torque required to propel the vehicle, and that it
`
`does not
`
`include torque used for other purposes, such as the
`
`torque used to charge the battery.
`
`See ‘388 patent col. 59:51-
`
`52 (“operable to monitor road load and battery charging load")
`
`(emphasis added);
`
`‘347 patent col. 14:13-17 (“Furutani's
`
`‘vehicle load’
`
`thus apparently includes the torque required to
`
`charge the battery, as distinguished from applicants’
`
`‘road
`
`load,’ i.e.,
`
`the torque required to propel the vehicle.").
`
`However,
`
`the Plaintiffs’ proposed construction similarly defines
`
`“road load" as “the instantaneous torque required for propulsion
`
`of the vehicle.”
`
`The Defendants’ use of the phrase “required to
`
`propel the vehicle on the road” does not provide any additional
`
`clarity that “road load" is limited to the torque necessary for
`
`propelling the vehicle rather than for other uses.
`
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`ii. Maintain Given Speed
`
`The Plaintiffs contend that the Defendants’ addition of the
`
`phrase “to maintain a given speed" is misleading because, while
`
`vehicle speed is one factor that goes into determining the
`
`amount of torque required to propel the vehicle,
`
`road load
`
`varies independent of vehicle speed.
`
`See ECF No. 90 at 10-11.
`
`At the hearing,
`
`the Defendants asserted that the phrase “to
`
`maintain a given speed" is used in the same way that the
`
`Plaintiffs use “instantaneous” in their proposed construction.
`
`See Hr’g 111:3-21 (“We're saying given pedal position, given
`
`road conditions, given those things at a point in time, what is
`
`the actual force required to propel the vehicle? That's all we
`
`mean by ‘maintain a given speed.’
`
`They use the word
`
`‘instantaneous.’
`
`It's the same thing. There is no dispute
`
`there.")
`
`If the purpose of the phrase “to maintain a given
`
`speed” is to make it clear that “road load" is the torque
`
`necessary to propel the vehicle, it is an unnecessarily
`
`confusing addition.
`
`iii. Torque Actually Required
`
`Lastly,
`
`the parties dispute the Defendants’ use of the
`
`phrase “actually required.”
`
`The Defendants argue that this
`
`phrase is necessary to clarify that “road load" is the actual
`
`torque required to propel the vehicle rather than an estimate.
`
`See Hr’g 120:22-121:4 (“It is the Defendant[s’] position that
`
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`the claims require that
`
`‘road load’ be the actual torque
`
`required to propel the vehicle at a given speed.
`
`It cannot be
`
`just some calculation based on estimate.").
`
`The Defendants
`
`argue that this definition excludes torque values output by
`
`“maps” based on metrics such as vehicle speed and accelerator
`
`position.
`
`ECF No. 79 at 24-25.
`
`For example,
`
`the Defendants
`
`point to the ‘347 patent distinguishing “road load” from
`
`“vehicle driving torque demand” in the Egami patent that is
`
`determined by “consulting a ‘map’, using ‘the vehicle speed V,
`
`the accelerator life ACC,
`
`the brake state BRK, and the shift
`
`position SFT as the input parameters.’”
`
`‘347 patent col.14:54-
`
`65.
`
`The Defendants assert that this demonstrates the road load
`
`is the actual torque output to the wheels to maintain a desired
`
`speed, and it is not a value determined by consulting a map
`
`using vehicle inputs such as speed or shift position.
`
`ECF No.
`
`79 at 26.
`
`The Plaintiffs contend that the term “actually required"
`
`does not appear anywhere in the claims or specifications, and it
`
`does not clarify the meaning of road load.
`
`ECF No. 19 at 12-13.
`
`The Plaintiffs argue that the Defendants’ definition
`
`inappropriately conflates what “road load” is with the way “road
`
`load" is derived.
`
`See Hr'g 99:8-13.
`
`The Defendants’ addition of the phrase “actually required"
`
`does not clarify the meaning of “road load” for the jury.
`
`The
`
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`definition of the term found in the claim language itself is
`
`sufficiently clear and supported by the specification.
`
`See ‘672
`
`patent col. 39:42-46;
`
`‘634 patent col. 65:11~l4;
`
`‘672 patent
`
`col. 28:5-7. Accordingly,
`
`the Court will adopt the construction
`
`proposed by the Plaintiffs.
`
`Claim Term
`
`Court's Construction
`
`
`
`
`
`“road load (RL)"
`
`“the instantaneous torque
`required for propulsion of the
`
`vehicle, which may be positive
`or negative in value.”
`
`b.
`
`Term 2
`
`Claim Term
`
`Plaintiffs’ proposed
`
`construction
`
`Defendants’ proposed
`construction
`
`“setpoint,” “SP”
`
`
`“a definite, but
`
`
`
`
`
`
`
`This term should be
`construed in context
`
`of the individual
`
`claims in which it
`
`potentially variable
`value at which a
`transition between
`
`operating modes may
`occur."
`
`appears.
`
`The Plaintiffs’ proposed construction of the term
`
`“setpoint” contains two parts:
`
`(1) it is a definite value that
`
`may vary under certain conditions; and (2)
`
`that the operating
`
`mode transition may occur at a “setpoint."
`
`See Hr’g 138:1-4.
`
`The Plaintiffs argue that the claim language demonstrates that
`
`the setpoint can be variable.
`
`See ECF No. 78 at 20.
`
`For
`
`example, Claim 33 of the ‘634 patent:
`
`“monitoring patterns of
`
`“ Term 2 in the Joint Claim Construction Statement.
`1.
`
`ECF No. 71-
`
`19
`
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`vehicle operation over time and varying the SP accordingly.”
`
`‘634 patent, col.61:7-8.
`
`The Plaintiffs contend that the
`
`specification also describes varying the setpoint in response to
`
`various conditions, such as in the ‘672 patent:
`
`“It is also
`
`within the scope of the invention for the microprocessor to
`
`monitor the vehicle's operation over a period of days or weeks
`
`and reset this important setpoint in response to a repetitive
`
`driving pattern."
`
`‘672 patent, col.33:28-31.
`
`The Plaintiffs also argue that it is clear from the
`
`intrinsic evidence that a transition between operating modes may
`
`occur at a setpoint.
`
`See Hr'g 139:2-10.
`
`For example,
`
`in the
`
`‘672 patent, “the microprocessor tests sensed and calculated
`
`values for system variables .
`
`.
`
`. against setpoints, and uses
`
`the results of the comparisons to control the mode of vehicle
`
`operation."
`
`‘672 patent, col. 32:60—33:4. However,
`
`the
`
`Plaintiffs’ proposed construction states that the transition
`
`“may occur” because the transition may be determined by other
`
`factors in addition to setpoint.
`
`See Hr'g 139:l1~23.
`
`For
`
`example, Claim 80 of the ‘634 patent provides that transition
`
`occurs when road load is greater than the setpoint for a
`
`“predetermined time."
`
`See ‘634 patent, col. 65:26-30.
`
`The Defendants argue that construing the term “setpoint” in
`
`a vacuum accomplishes nothing and may unnecessarily confuse the
`
`jury.
`
`See Hr'g 145:4-17; 147:13—17.
`
`The Defendants agree that
`
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`the setpoint may be variable and that transitions may occur at
`
`the setpoint.
`
`See Hr'g at 145:4-17. However,
`
`the Defendants
`
`contend that the term “setpoint” should be read in the context
`
`of the claims in which it appears, and construing the term in a
`
`vacuum is unnecessary.” The Defendants assert that a definition
`
`stating that “setpoint” may be variable will cause confusion for
`
`claims in which setpoint is not variable.
`
`See Hr’g 146212-24.
`
`For example,
`
`in Claim 16 of the ‘672 patent setpoint is a
`
`predetermined percentage of MTO; however,
`
`in Claim 19,
`
`the
`
`setpoint varies.
`
`See ‘672 patent, col. 39:49-51; 40:3-5.
`
`Similarly,
`
`the Defendants argue that the specific language of
`
`the claims makes it clear whether a setpoint causes a transition
`
`to occur or if additional conditions are necessary.
`
`See Hr'g
`
`146:25-147:12.
`
`For example,
`
`in Claim 20,
`
`the transition occurs
`
`when road load is greater than the setpoint “for at least a
`
`predetermined time.”
`
`‘672 patent, col. 40:6-11. As a result,
`
`the Defendants offered proposed
`22 In their briefings,
`constructions for three setpoint-related terms:
`(1) “wherein SP
`is a setpoint expressed as a predetermined percentage of MTO;”
`(2) “road load (RL) and said setpoint SP, both expressed as
`percentages of the maximum torque output of the engine when
`normally-aspirated (MTO);” and (3)
`“a second setpoint
`(SP2),
`wherein the SP2 is a larger percentage of the MTO than the SP."
`See ECF No. 79 at 38-41.
`The Plaintiffs argued that the terms
`did not require a separate construction.
`See ECF No. 90 at 27-
`29. However, at the hearing,
`the Defendants clarified that they
`were “perfectly happy to live with the claim language on the
`disputed terms,” and that they were no longer arguing for
`further construction on the setpoint—related terms.
`See Hr'g
`144:11-18. Accordingly, because these terms are no longer in
`dispute,
`the Court will not construe them.
`
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`the Defendants contend that construing the term in a vacuum will
`
`only cause confusion when the term is read in the context of the
`
`claim terms.
`
`See Hr'g 147:13-17.
`
`The Plaintiffs’ proposed construction of “setpoint" as “a
`
`definite, but potentially variable value at which a transition
`
`between operating modes may occur,” is consistent with the
`
`language of the claims and the intrinsic evidence.
`
`See ‘634
`
`patent, col. 61:7-8 (describing the setpoint as variable);
`
`‘634
`
`patent, col. 65:26-30 (stating that transition occurs when road
`
`load is greater than setpoint for a predetermined time).
`
`For
`
`example,
`
`the ‘672 patent specification describes the setpoint as
`
`follows:
`
`to highway
`[Tlhe transition from low-speed. operation.
`cruising occurs when road load is equal
`to 30% of MTO.
`This setpoint,
`referred to in the appended claims as
`“SP”,
`and
`sometimes hereinafter
`as
`the
`transition
`
`is
`I and IV)
`point (i.e., between operation in modes
`obviously arbitrary and can vary substantially, e.g.,
`between
`30-50% of MTO, within the
`scope
`of
`the
`invention.
`
`‘672 patent, col. 33:

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