Case 1:12-cv-00216-MCW Document 226 Filed 04/17/17 Page 1 of 36
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`In the United States Court of Federal Claims
`
`No. 12-216C
` (Filed: April 17, 2017)
`
`
`
`28 U.S.C. § 1498(a); Patent Infringement;
`Claim Construction; Indefiniteness; 35
`U.S.C. § 112, ¶ 2; Means Plus Function
`Claim; 35 U.S.C. § 112, ¶ 6.
`
` *
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`UUSI, LLC, and OLDNAR CORP.,
`
`Plaintiffs,
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`THE UNITED STATES,
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`v.
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`Defendant
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`and
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`Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP, 901 New
`York Avenue NW, Washington, D.C. 20001, for Plaintiffs.
`
`Benjamin C. Mizer, John Fargo, and Conrad J. DeWitte, Jr., U.S. Department of Justice,
`Civil Division, Commercial Litigation Branch, P.O. Box 480, Benjamin Franklin Station,
`Washington, D.C. 20044, for Defendant. Gary L. Hausken and Michel E. Souaya, U.S.
`Department of Justice, Civil Division, Commercial Litigation Branch, P.O. Box 480, Benjamin
`Franklin Station, Washington, D.C. 20044, Of Counsel.
`
`
`
`
`AM GENERAL, LLC.,
`
`
`
` Third-Party Defendant.
`
` *
`
`Nicole M. Jantzi, McDermott Will & Emery LLP, 500 North Capitol Street NW,
`Washington, D.C. 20001, for Third-Party Defendant. Paul M. Schoenhard and Ian B. Brooks,
`McDermott Will & Emery LLP, 500 North Capitol Street NW, Washington, D.C. 20001, Of
`Counsel. Robert K. Huffman, Thomas P. McLish, and Karen D. Williams, Akin Gump Strauss
`Hauer & Feld LLP, 1333 New Hampshire Avenue NW, Washington, D.C. 20036, Of Counsel.
`
`
`
`AM General Exhibit 1014
`AM General v. UUSI
`IPR2016-01050
`Page 00001
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`Case 1:12-cv-00216-MCW Document 226 Filed 04/17/17 Page 2 of 36
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`
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`_________________________________________________________
`
`CLAIM CONSTRUCTION OPINION AND ORDER
`_________________________________________________________
`
`WILLIAMS, Judge.
`
`In this action, Plaintiffs UUSI, LLC and OLDNAR Corporation allege infringement of
`United States Patent Nos. 5,327,870; 5,729,456; 6,009,369; 6,148,258; 5,413,072; 5,507,255; and
`5,570,666 through Third-Party Defendant AM General LLC’s (“AM General”) use and
`manufacture of starting systems for High Mobility Multipurpose Wheeled Vehicles for Defendant,
`the United States.1 The patents-in-suit are directed to glow plugs - - the heating elements used to
`assist diesel engine start-up - - and glow plug controllers that cycle power to the glow plugs. The
`parties dispute the construction of claim terms in two of the seven asserted patents-in-suit - - U.S.
`Patent Nos. 5,327,870 (“the ’870 Patent”) and 6,148,258 (“the ’258 Patent”).
`
`Background2
`
`The patents-in-suit implicate various aspects of operating glow plugs - - heating devices
`
`used in diesel engines that aid in the combustion of fuel particularly during engine start-up. ’258
`Patent 1:29-31, 63-67. Diesel engines function by compressing air in a combustion chamber which
`causes the air to heat up to a temperature where fuel, when injected into the combustion chamber,
`will spontaneously ignite and continue to burn. ’258 Patent 1:44-52. This fuel-air mixture “will
`not ignite” or “run efficiently” if the engine is cold. ’258 Patent 1:52-54. Glow plugs are
`employed to help heat diesel engine compression chambers when ignition and combustion are
`impaired by “varying conditions” and thus are not able to reach “minimal operational
`temperature.”
`
`The ’258 Patent explains:
`
`Varying conditions (some widely varying) including: Engine temperature, ambient
`air temperature, ambient air absolute density, mass air flow, engine compression
`ratio, and fuel flash point temperature (being also some interrelated function of the
`above variable conditions) require various amounts of supplemental heat to be
`added to the combustion chamber prior to and during engine cranking and warmup
`to enable fuel ignition with sufficient combustion for engine operation during
`engine cranking conditions and cold engine warm up operation. To assist in
`bringing the combustion chambers above the necessary minimal operational
`
`
`1
`On July 11, 2016, Plaintiffs withdrew their infringement allegations related to U.S. Patent
`No. 5,287,831, leaving seven remaining patents-in-suit. Notice Regarding Terms Previously
`Identified for Claim Construction 1 (July 11, 2016).
`
` 2
`
`This background is derived from the record developed at the claim construction hearing.
`
`The Court has not corrected grammatical errors in quotations from the record. Plaintiffs’ and
`Defendants’ demonstrative exhibits admitted during the claim construction hearing are labeled
`PDX, and DDX, respectively.
`
`
`
`2
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`Case 1:12-cv-00216-MCW Document 226 Filed 04/17/17 Page 3 of 36
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`temperature and/or to supply a source of combustion chamber ignition temperature,
`diesel engine glow plug heaters, otherwise called glow plugs, are employed.
`
`’258 Patent 1:54-67.
`
`The following image depicts a diesel engine combustion chamber with a glow plug just
`
`above the chamber:
`
`
`
`
`
`
`DDX 4 at 22.
`
`The following image shows a hot glow plug:
`
`
`
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`
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`PDX 1 at 9.
`
`
`
`The design of circuitry systems can improve glow plug operation by tailoring the
`temperature and duration of supplying power, or “energization” to the glow plug prior to engine
`start-up - - called preglow - - and then cycling power to pulse heat to the glow plugs so that a
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`3
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`combustion chamber maintains a steady temperature - - called afterglow. ’258 Patent 2:1-10; 2:22-
`41. Poorly regulated glow plug energization times lead to undesirable effects on engine start-up
`and efficiency:
`
`Excessive glow plug power energization time causes higher than desired glow plug
`temperatures which can result in significantly shortened life of the glow plugs, in
`addition to wasting of energy and unnecessary long time before the engine can be
`started. Insufficient glow plug power ON time will cause lower than desired glow
`plug temperatures and reduced supplemental heat which can result in: Inability to
`start engine, excessive cranking time, starter motor wear, undesirable hydrocarbon
`exhaust emissions, white smoke of completely combusted fuel, increased fuel
`consumption[.]
`
`’258 Patent 2:1-10.
`
`Overview of U.S. Patent No. 5,327,870
`
`The ’870 Patent titled “Glow Plug Controller” was filed on August 26, 1993, and issued
`
`on July 12, 1994. The ’870 Patent is a continuation in part of U.S. Patent Application No.
`07/785,462 filed October 31, 1991, now abandoned.
`
`The ’870 Patent is directed to the housing and circuitry of a glow plug controller with a
`“packaging means for facilitating rapid and inexpensive assembly.” ’870 Patent Abstract.3 The
`described packaging is a “two-chamber tubular housing” with a smaller first chamber and a larger
`second chamber. ’870 Patent Abstract. The “general object” of the ’870 Patent is to “provide
`improved glow plug controller circuitry, and mounting and housing structure for such a glow plug
`controller, to enhance the efficacy of control of operation of the glow plugs . . . and to enhance the
`durability, reliability and ease of assembly of the glow plug controller.” ’870 Patent 3:11-17. Only
`one term is at issue in this patent - - the term “remote” that appears in Claim 9, which depends on
`Claim 1.
`
`Independent Claim 1 is illustrative of the ’870 Patent:
`
`1. A glow plug controller comprising:
`a) a generally tubular housing having a wall defining a first chamber and a second
`chamber and a second chamber communicating with said first chamber, the
`portion of the outer surface of the wall which defines said first chamber being a
`threaded portion for threaded engagement in hole;
`b) glow plug controller circuitry[4] including a temperature sensor located within
`said threaded portion and circuitry for controlling glow plug operation as a
`function of sensed temperature, said temperature sensor being located within said
`
`
`3
`The parties did not include any excerpts from the prosecution history of the ’870 Patent in
`their briefing.
`
`4
`The parties stipulated to construe “glow plug controller circuitry” to mean “circuitry that
`controls the operation of one or more glow plugs.” Pls.’ Notice 3 (July 27, 2016).
`
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`4
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`Case 1:12-cv-00216-MCW Document 226 Filed 04/17/17 Page 5 of 36
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`first chamber and wherein glow plug controller circuitry is located within said
`second chamber of said housing; and
`c) means for conductively coupling said glow plug controller circuitry to other
`circuitry external to said housing.
`
`’870 Patent 10:43-60 (as amended by a Certificate of Correction dated September 20, 1994).
`
`Claim 9 depends on Claim 1 and contains the disputed term “remote,” and states:
`
`9. The glow plug controller of Claim 1, wherein:
`a) said glow plug controller circuitry comprises power supply circuitry, and
`b) said power supply circuitry is located within said housing at a location remote from
`said temperature sensor.
`
`
`
`’870 Patent 11:23-28 (emphasis added).
`
`Overview of U.S. Patent No. 6,148,258
`
`The ’258 Patent titled “Electrical Starting System for Diesel Engines” issued on November
`
`14, 2000, from U.S. Application No. 09/076,291 (“the ’291 Application”) filed May 12, 1998. The
`’291 Application is a continuation-in-part of U.S. Application No. 08/931,470, which is a
`continuation-in-part of Application No. 08/508,063, which is a continuation of Application No.
`08/042,239, which is a continuation of Application No. 07/785,462, filed on October 31, 1991,
`now abandoned. The claims of the ’258 Patent expired on November 14, 2012, due to nonpayment
`of maintenance fees. Institution Decision, AM Gen., LLC v. UUSI, LLC, No. IPR 2016-01050
`(P.T.A.B. Nov. 14, 2016) (“Institution Decision”).5
`
`The ’258 Patent is directed to an “integrated electronic starting control system module for
`
`diesel engines.” ’258 Patent Abstract. This “integrated” modular device improves “control,
`performance, diagnostics, monitoring, adaptability, and compensation pertaining to glow plugs,
`starter motor actuation, and battery power application for diesel engine applications.” ’258 Patent
`1:17-22. By integrating and incorporating this improved circuitry “into a single engine electronic
`starting system,” or EESS, the claimed invention of the ’258 Patent produces “a multiplicity of
`desirable characteristics for implementing the safe, reliable and efficient operation of the
`components of a diesel engine electrical control system.” ’258 Patent 3:26-31.
`
`Independent Claim 1 is illustrative of the invention:
`
`
`
`
`1. For use with a motor vehicle diesel engine having one or more glowplugs for
`maintaining temperature control of one or more diesel engine combustion
`chambers, apparatus comprising:
`
`
`5
`The ’258 Patent is currently subject to an inter partes review proceeding before the Patent
`Trial and Appeal Board) (“PTAB”). In the PTAB proceeding, Plaintiff UUSI asserted that Claims
`17 and 18 of the ’258 Patent do not expire until May 12, 2018, based on claim amendments that
`recite new subject matter.
`
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`5
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`a) a starter control housing supported by the motor vehicle and including a
`cable connector for routing energization signals into a housing interior from
`a vehicle mounted power source for use in energizing the glow-plugs;
`b) monitor circuitry supported within a housing interior for providing an
`indicator signal corresponding to a voltage applied to the one or more
`glowplugs;
`c) a programmable controller supported within the housing interior that is
`coupled to the monitor circuitry and produces a control output for supplying
`energy to the glowplugs;
`d) at least one switching device supported within the housing interior that is
`coupled to the control output from the programmable controller for
`energizing the one or more glow plugs in a controlled time sequence prior
`to, during an/or after engine cranking by selectively coupling the
`energization signals to the glowplugs; and
`e) load protection circuitry supported within the housing interior for
`temporarily maintaining an alternator to battery power correction after
`removal or an ignition signal until engine speed has been reduced to a
`specified value.
`
`
`’258 Patent 23:33-60.
`
`
`Figure 3 of the ’258 Patent depicts the glow plug system, showing eight glow plugs, the
`glow plug controller, and the housing for the electrical starting system:
`
`
`
`’258 Patent Fig. 3.
`
`The ’258 Specification elaborates on Figure 3:
`
`
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`
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`The preferred embodiment of the present invention is for use with a motor vehicle
`diesel engine having one or more glowplugs 12 for maintaining temperature control
`of one or more diesel engine combustion chambers. The exemplary embodiment
`includes a housing 70 supported by the motor vehicle and including a connector for
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`Case 1:12-cv-00216-MCW Document 226 Filed 04/17/17 Page 7 of 36
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`routing signals from a vehicle mounted power source that energizes the glowplugs
`into said housing.
`
`
`’258 Patent 6:48-55. The housing 70 contains multiple circuitry systems coupled to one another
`in a specific sequence. The circuitry systems include: 1) monitoring circuitry, 2) a programmable
`controller containing circuitry that “produces a control output for supplying energy to the glow
`plugs,” 3) a switching device that “energizes the one or more glow plugs in a controlled time
`sequence prior to initiation of combustion,” and 4) a maintenance circuit that “maintains power to
`current drawing loads of the motor vehicle after removal of an ignition signal.” ’258 Patent 6:55-
`7:1.
`
`Inter Partes Review of the ’258 Patent
`
`On May 18, 2016, AM General filed a petition for inter partes review of the ’258 Patent.6
`On August 19, 2016, UUSI, LLC filed its Preliminary Response. On November 14, 2016, the
`PTAB issued its Institution Decision, granting inter partes review of the ’258 Patent. Institution
`Decision 31.7 The PTAB made preliminary claim construction findings on three terms at issue
`
`6
`Inter partes review is a Patent Office procedure that allows third parties to seek cancellation
`of an issued patent on grounds of anticipation or obviousness. 35 U.S.C. § 100 et seq (2012). The
`first stage of this procedure, the “institution stage,” involves the third party filing a petition for
`review that sets forth the grounds for challenging the patent claims’ issuance. A patent owner may
`file a preliminary response stating why the PTAB should not review the petition. Based on the
`petition and the patent owner’s preliminary response, a panel of three administrative judges issues
`an “Institution Decision,” which contains preliminary findings on claim construction and on
`whether the petitioner has shown “a reasonable likelihood that it would prevail [in showing
`unpatentability] as to at least 1 of the claims challenged.” 35 U.S.C. § 314(a). The Institution
`Decision is subject to change based on the parties’ future filings. If the PTAB institutes inter partes
`review, then the procedure moves into the “trial stage.” The trial stage ends when the PTAB panel
`issues a “Final Written Decision” on the subject claims’ patentability. Only final written decisions,
`not institution decisions, are appealable to the United States Court of Appeals for the Federal
`Circuit. 35 U.S.C. §§ 314(d), 319 (2012); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016).
`
` 7
`
`In inter partes review proceedings, the PTAB cannot consider whether a claim is indefinite
`
`under 35 U.S.C. § 112, but rather is limited to reviewing claims for anticipation under 35 U.S.C.
`§ 102 and obviousness under 35 U.S.C. § 103. 37 C.F.R. § 42.104(b)(2). In addition, during the
`institution phase, the patent owner is not required to respond to the petitioner’s allegations, and
`any factual dispute raised by a patent owner is viewed in a light most favorable to the petitioner.
`See 37 C.F.R. §§ 42.107(a), 42.108 (“The Board’s [institution] decision will take into account a
`patent owner preliminary response where such a response is filed, including any testimonial
`evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed
`in the light most favorable to the petitioner solely for the purposes of deciding whether to institute
`inter partes review.”).
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`here - - “until,” “a voltage signals,” and “power correction after removal or an ignition signal” - -
`as follows:
`
`
`Term
`
`“power correction after removal or an
`ignition signal”
`“a voltage signals”
`
`“until”
`
`
`
`PTAB Institution Decision
`Construction
`“power connection after removal of an
`ignition signal.” Institution Decision 13.
`No construction made, institution of
`Claim 9 denied as the “scope of Claim 9
`cannot be determined without
`speculation.” Institution Decision 15.
`“up to the point, but not thereafter”
`Institution Decision 19.
`
`Because claims cannot be amended in expired patents, the PTAB construes expired claims
`under the standard applied by the trial court in Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
`Cir. 2005) (en banc). As the ’258 Patent expired on November 14, 2012, the PTAB applied the
`Phillips standard to its constructions. The PTAB proceeding is currently ongoing, and the PTAB’s
`claim constructions in its Institution Decision are subject to change.
`
`Jurisdiction
`
`Discussion
`
`The Court has subject-matter jurisdiction over this action pursuant to 28 U.S.C. § 1498(a).
`That statute provides in relevant part:
`
`Whenever an invention described in and covered by a patent of the United States is
`used or manufactured by or for the United States without license of the owner
`thereof or lawful right to use or manufacture the same, the owner’s remedy shall be
`by action against the United States in the United States Court of Federal Claims for
`the recovery of his reasonable and entire compensation for such use and
`manufacture.
`
`28 U.S.C. § 1498(a) (2012).
`
`The patents-in-suit were originally assigned to Nartron Corporation - - now known as
`OLDNAR. Am. Compl. ¶ 1. In 2009, Nartron Corporation assigned UUSI ownership of all the
`patents-in-suit, including “the right to assert infringement actions and to collect damages or seek
`other remedies regardless of when the infringement occurred, including past infringement.” Id. at
`¶ 3. Plaintiffs UUSI and OLDNAR allege that the United States infringed the following patent
`claims through AM General’s use and manufacture of High Mobility Multipurpose Wheeled
`Vehicles for several Government agencies including the Army, Air Force, Navy, Marine Corps,
`National Guard, and Border Patrol, without license or lawful right:
`
`
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`U.S. Patent Number
`
`Asserted Claims
`
`5,327,870
`
`5,413,072
`
`5,507,255
`
`5,570,666
`
`5,729,456
`
`6,009,369
`
`6,148,258
`
`Pls.’ Br. 1; see Am. Compl. ¶ 13.
`
`Stipulated Claim Terms
`
`7, 9, and 16
`
`4 and 6
`
`4
`
`11 and 13
`
`1, 3, 5, 8, and 9
`
`1, 3, 6, 9, 13, 17, 18, 21, 22, 26, 31, and 33
`
`9, 11, 12, 18, and 31
`
`
`The parties agreed to the following constructions:
`
`Claim Term
`Circuity
`
`a monitor
`
`during an/or after
`
`Positioned
`
`Convertor
`
`oscillator means to provide a clock signal
`for operations in conjunction with glow
`plug controller circuitry
`
`means for conductivity coupling said
`glow plug controller circuitry to other
`circuitry external to the housing
`
`
`Agreed-Upon Construction
`Circuitry
`
`a sensing device
`
`during and/or after
`
`Positioned
`
`Converter
`
`oscillator clock
`
`Function: Conductively coupling glow plug
`controller circuitry to other circuitry external to
`the housing
`
`Structure: Conductive connector pins or
`connector pins in conjunction with conductive
`foil layers on the surface of the glow plug
`controller circuitry or equivalents thereof
`
`9
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`digital logic means
`
`circuitry for controlling glow plug
`operation
`
`glow plug controller circuitry
`
`latching circuitry to inihibit the
`reactuation of the wait-to-start lamp prior
`to the subsequent toggling of the ignition
`switch
`means for preventing damage to the
`switching device by application of too
`large a voltage signal
`
`digital circuit that performs Boolean algebra
`
`circuitry that controls the operation of one or
`more glow plugs
`
`circuitry that controls the operation of one or
`more glow plugs
`
`latching circuitry which inhibits the wait-to-
`start lamp from re-illuminating until the ignition
`switch is turned off then back on.
`
`Function: Preventing damage to the switching
`device by application of too large a voltage
`signal
`
`Structure: (1) a microprocessor that keeps the
`switching device closed for some period of time
`after the ignition switch is turned to the off
`position until “the alternator is at a sufficiently
`safe and low speed” (as described at col. 2 lines
`13 through 14 and col. 4 lines 55 through 64),
`or (2) the load protection circuit shown as item
`330 of Fig. 8 and described at col. 14 line 45
`through 47, or (3) the “load dump control
`circuitry” of U.S. Patent 5,287,831 made
`reference to in the ’369 patent at col. 4 lines 10
`through 21, and equivalents thereof
`
`
`Pls.’ Notice 2-3.
`
`Disputed Claim Terms
`
`The parties identified five claim terms for this Court to construe:
`
`Patent Claims
`
`Term to be Construed
`
`’870 Patent, Claim 9
`
`’258 Patent, Claim 1
`
`’258 Patent, Claim 9
`
`’258 Patent, Claim 9
`
`“located within said housing remote from”
`
`“until”
`
`“a voltage signals”
`
`“power correction after removal or an ignition
`signal”
`
`
`10
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`’258 Patent, Claim 29
`
`“means based on various sensed conditions to
`adjust to a preglow energization time and an
`afterglow energization time to limit excessive
`temperatures of the glow plugs while applying
`adequate glow plug energy to facilitate engine
`starting and warmup”
`
`
`
`Id. at 2.
`
`Legal Standards for Claim Construction
`
`The “bedrock principle” of patent law is that “‘the claims of a patent define the invention
`to which the patentee is entitled the right to exclude.’” Phillips, 415 F.3d at 1312 (quoting
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys. Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).
`Claim terms should be given their ordinary and customary meaning as used in the field of
`invention. Id. at 1312-13; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d. 1576, 1582 (Fed. Cir.
`1996). The ordinary and customary meaning is the meaning a claim term would have to a skilled
`artisan at the time of the invention - - the effective filing date of the patent application. Phillips,
`415 F.3d at 1313 (citing Innova, 381 F.3d at 1116). A person of ordinary skill in the art is “deemed
`to read the claim term not only in the context of the particular claim in which the disputed term
`appears, but in the context of the entire patent, including the specification.” Id. “In some cases,
`the ordinary meaning of claim language . . . may be readily apparent even to lay judges, and claim
`construction in such cases involves little more than the application of the widely accepted meaning
`of commonly understood words.” Id. at 1314. A claim can depart from its ordinary meaning only
`if the inventor has explicitly assigned it a separate meaning. Id. at 1316.
`
`To construe claims, a court objectively looks at public sources, such as the patent itself, its
`prosecution history, or technical dictionaries, that show what a skilled artisan would have
`understood the disputed claim language to mean. Innova, 381 F.3d at 1116. In Phillips, the Federal
`Circuit clarified that courts should first review the “intrinsic” record of the patent. 415 F.3d at
`1314-17. Intrinsic evidence consists of the patent claims, specification, and the patent’s
`prosecution history. Id. at 1314; IMS Tech., Inc. v. Haas Automation Inc., 206 F.3d 1422, 1433
`(Fed. Cir. 2000).
`
`As the claims define the invention, the claim language is the most important source for a
`court to consider in construing the claim terms. Phillips, 415 F.3d at 1312. The second most critical
`source of intrinsic evidence is the patent specification, which “contain[s] a written description of
`the invention and of the manner and process of making and using it . . . .” 35 U.S.C. § 112 ¶ 1
`(2006). 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.’” Phillips, 415 F.3d
`at 1315 (quoting Vitronics, 90 F.3d at 1582)). The third source of intrinsic evidence is the
`prosecution history, which consists of “the complete record of the proceedings before the Patent
`Office and includes the prior art cited during examination of the patent.” Id. at 1317. The
`prosecution history is less useful in claim construction, however, because it can itself be
`ambiguous as it represents ongoing negotiations between the patent applicant and the Patent
`
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`Office. Id.; see Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380-82
`(Fed. Cir. 2002).
`
`After consideration of the intrinsic evidence, if a court still finds the claim term to be
`ambiguous, it can look to extrinsic evidence which “consists of all evidence external to the patent
`and prosecution history, including expert and inventor testimony, dictionaries, and learned
`treatises.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc),
`aff’d, 517 U.S. 370 (1996). However, such external evidence is “less significant than the intrinsic
`record in determining the ‘legally operative meaning of claim language.’” C.R. Bard, Inc. v. U.S.
`Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (quoting Vanderlande Indus. Nederland BV v.
`Int’l Trade Comm’n, 366 F.3d 1311, 1318 (Fed. Cir. 2004)).
`
`Legal Standards for Indefiniteness
`
`The definiteness requirement is codified in 35 U.S.C. § 112 ¶ 2, which provides:
`
`The specification shall conclude with one or more claims particularly pointing out
`and distinctly claiming the subject matter which the applicant regards as his
`invention.
`
`
`35 U.S.C. § 112, ¶ 2.8
`
`
`In Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court set the standard for
`indefiniteness, holding that “a patent is invalid for indefiniteness if its claims, read in light of the
`specification delineating the patent, and the prosecution history, fail to inform, with reasonable
`certainty, those skilled in the art about the scope of the invention.” 134 S. Ct. 2120, 2124 (2014).
`At the same time an inventor “need not explain every detail because a patent is read by those of
`skill in the art.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1367 (Fed. Cir. 2011).
`Failure to meet this definiteness requirement renders the subject claim invalid. Allen Eng’g Corp.
`v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002).
`
`Level of Skill in the Art
`
`Plaintiffs propose that a person of ordinary skill in the art for both the ’870 and ’258 Patents
`is “a person with a Bachelor’s degree in electrical engineering or its equivalent, and approximately
`two to three years’ experience in automotive technology and/or the design and development of
`
`8
`Section 112 of Title 35 of the United States Code was revised as of September 6, 2011, to
`designate previously undesignated paragraphs and to conform terminology to changes made in
`other parts of Title 35. Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 4(c), 125 Stat.
`284, 296 (2011). As the applications of all patents-in-suit were filed prior to September 16, 2012,
`the version of 35 U.S.C. § 112(2) in effect prior to the passage of the America Invents Act applies
`to the Court’s claim construction. Id. § 4(e), 125 Stat. at 297 (“The amendments made by this
`section shall take effect upon the expiration of the 1-year period beginning on the date of the
`enactment of the Act and shall apply to any patent application that is filed on or after the effective
`date.”).
`
`
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`Case 1:12-cv-00216-MCW Document 226 Filed 04/17/17 Page 13 of 36
`
`open loop and closed loop automotive electronic systems.” Pls.’ Br. 6. Plaintiffs note that “[m]ore
`education could substitute for experience, and that experience, especially when combined with
`training, could substitute for formal college education.” Id.
`
`
`
`Defendants argue that a person of ordinary skill in the art for the ’870 Patent is a person
`with “a Bachelor’s degree in electrical engineering (or four years of relevant work experience),
`and familiarity with the design of vehicle electrical starting systems.” Defs.’ Br. 5. For the ’258
`Patent, Defendants argue that the technology is more complicated and that a person of ordinary
`skill in the art would have achieved:
`
`(1) a Ph. D in electrical engineering with a focus on designing power control circuits
`and some familiarity with vehicle electrical systems; (2) a Master’s degree in
`electrical engineering, and two years of experience in designing power control
`circuits and some familiarity with automotive vehicle electrical systems; (3) a
`Bachelor’s degree in electrical engineering and four years of experience designing
`power control circuits and some familiarity with automotive vehicle electrical
`systems; or (4) some undergraduate engineering coursework including at least one
`introductory course [in] electrical engineering, ten years of relevant work
`experience including 6 years of experience designing power control circuits, and
`some familiarity with automotive vehicle electrical systems.
`
`
`Defs.’ Br. 5.
`
`
`
`The field of invention here is automotive electronic systems, including vehicle control
`systems, sensors, and actuators. Wilhelm Decl. ¶ 19. The Court agrees that the ’258 Patent is
`directed to more complicated circuitry technology than the ’870 Patent, but finds the parties’
`definitions of a person of ordinary skill in the art to be substantially similar. Hence, for the
`purposes of claim construction only, the Court defines a person of ordinary skill in the art as
`follows:
`
`
` For the ’870 Patent, a person of ordinary skill in the art is a person with a Bachelor’s
`degree in electrical engineering or its equivalent with approximately three years’
`experience in the design and development of vehicle electrical starting systems, with the
`recognition that more education could substitute for experience and experience combined
`with training could substitute for formal college education.
`
` For the ’258 Patent, a person of ordinary skill in the art is a person with a Bachelor’s
`degree in electrical engineering with approximately four years’ experience designing
`power control circuits and some familiarity with automotive vehicle electrical control
`systems, including open loop and closed loop automotive electrical systems, with the
`recognition that more education could substitute for experience and experience combined
`with training could substitute for formal college education.
`
`
`Effective Filing Date
`
`The ’870 Patent and the ’258 Patent both list related Application number 07/785,462 filed
`
`October 31, 1991, now abandoned, as their earliest possible priority application date. As such, the
`
`
`
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`Case 1:12-cv-00216-MCW Document 226 Filed 04/17/17 Page 14 of 36
`
`Court considers the effective filing date of the ’870 and ’258 Patents to be October 31, 1991, for
`the purposes of claim construction.
`
`Claim Construction of the ’870 Patent
`
`“located within said housing at a location remote fro