Case 1:19-cv-03348-SAG Document 82 Filed 09/08/20 Page 1 of 11
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
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`PAICE LLC and THE ABELL FOUNDATION,
`INC.,
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`Plaintiffs,
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`v.
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`BAYERISCHE MOTOREN WERKE A.G., and
`BMW OF NORTH AMERICA, LLC,
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`Defendants.
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`C.A. No. 19-CV-3348-SAG
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`JURY TRIAL DEMANDED
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`DEFENDANTS BAYERISCHE MOTOREN WERKE, AG AND BMW OF NORTH
`AMERICA, LLC’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`EAST\176308242.1
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`PAICE 2035
`BMW v. Paice
`IPR2020-01299
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`Case 1:19-cv-03348-SAG Document 82 Filed 09/08/20 Page 2 of 11
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ...............................................................................................................1
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`PAICE’S PROPOSED CONSTRUCTIONS INJECT AMBIGUITY INTO THE
`SCOPE OF THE CLAIMS CONTRARY TO THE INTRINSIC RECORD ......................2
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`A.
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`B.
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`C.
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`“a [predicted] near-term pattern of operation” (claims 1 and 7) and
`“anticipated patterns of vehicle operation” (claims 6 and 12) .................................2
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`“monitoring operation of said hybrid vehicle” (claims 1 and 7) .............................3
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`“repetitive pattern of operation of said hybrid vehicle” (claims 2, 3, 4, 8, 9,
`and 10) .....................................................................................................................4
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`III.
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`PAICE’S PROPOSED “PLAIN AND ORDINARY MEANING”
`CONSTRUCTIONS WOULD NOT RESOLVE THE AMBIGUITY OF CLAIM
`TERMS ................................................................................................................................5
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`A.
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`B.
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`“operating the turbocharger . . . when desired” (claim 49) ......................................5
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`“shafts may be connected by a non-slipping clutch” (claim 38) .............................7
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`IV.
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`CONCLUSION ....................................................................................................................8
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
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`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 ............................................................................................................................7
`
`Maytag Corp. v. Electrolux Home Prods. Inc.,
`411 F. Supp. 2d 1008 (N.D. Iowa 2006) ....................................................................................3
`
`Paice LLC v. Hyundai Motor Co.,
`No. Civ. WDQ-12-0499, 2014 WL 3725652 (D. Md. July 24, 2014) .......................................3
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`Phillips v. AWH Corp.,
`415 F3d 1303 (Fed. Cir. 2005)...................................................................................................6
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`Road Science, LLC v. Telfer Oil Co.,
`No. CIV S-10-0786 KJM, 2012 WL 1739817 (E.D. Cal. May 15, 2012) .................................7
`
`Saffran v. Johnson & Johnson,
`712 F.3d 549 (Fed. Cir. 2013)....................................................................................................2
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`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997)..................................................................................................1
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`Statutes
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`35 U.S.C. § 102(b) ...........................................................................................................................2
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`Other Authorities
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`Local Rule 805 .................................................................................................................................1
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`Case 1:19-cv-03348-SAG Document 82 Filed 09/08/20 Page 4 of 11
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`Pursuant to the Court’s Scheduling Order (ECF No. 51) and Local Rule 805, Defendants
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`Bayerische Motoren Werke, AG (“BMW AG”) and BMW of North America, LLC (“BMWNA”)
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`(collectively, “BMW” or “Defendants”) submit this brief in response to Plaintiffs Paice LLC and
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`the Abell Foundation’s (collectively, “Paice” or “Plaintiffs”) Opening Claim Construction Brief
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`(“Paice Op. Br.”)
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`I.
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`INTRODUCTION
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`Plaintiffs, Paice LLC and the Abell Foundation (collectively, “Paice” or “Plaintiffs”),
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`accuse BMW of infringing over 50 claims across U.S. Patent Nos. 7,104,347 (“the ’347 patent”);
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`7,237,634 (“the ’634 patent”); and 8,630,761 (“the ’761 patent”) (collectively, the “Asserted
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`Patents”). Paice contends that the Asserted Patents are infringed by certain BMW and MINI-brand
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`hybrid vehicles that were designed and produced by BMW wholly independent of any of the
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`teachings of the Asserted Patents.
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`The purpose of claim construction is the “resolution of disputed meanings and technical
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`scope to clarify and when necessary to explain what the patentee covered by the claims, for use in
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`the determination of infringement.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568
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`(Fed. Cir. 1997). Yet, Paice’s proposed “constructions”—almost all of which resort to a “plain and
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`ordinary meaning” where such meaning is not apparent from the specification—make clear that
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`Paice has no intention of resolving any disputes or clarifying its infringement positions through
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`claim construction.
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`II.
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`PAICE’S PROPOSED CONSTRUCTIONS INJECT AMBIGUITY INTO THE
`SCOPE OF THE CLAIMS CONTRARY TO THE INTRINSIC RECORD
`
`A.
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`“a [predicted] near-term pattern of operation” (claims 1 and 7) and
`“anticipated patterns of vehicle operation” (claims 6 and 12)
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`BMW’s Construction
`“a pattern of operation of the vehicle
`expected based on monitoring the driver’s
`repeated driving operations over time”
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`Paice’s Construction
`“an expected pattern of operation”
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`BMW’s construction is supported by and consistent with the file history of the ’761 patent,
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`which distinguished the identified prior art on the basis that this claim term requires the prediction
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`of future operation based on monitoring a driver’s behavior. In responding to a rejection under 35
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`U.S.C. § 102(b) over U.S. Patent No. 5,343,970 (“Severinsky ’970”), Paice amended the now-
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`issued claims 1 and 7 and differentiated from Severinsky ’970 by arguing that “[Severinsky ’970]
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`says nothing about the controller performing the step of monitoring vehicle operations in order to
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`derive a predicted pattern or anticipate a pattern of operation of the vehicle.” Ex. A to BMW Op.
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`Br., ’761 patent file history, at 58.
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`“[A]n applicant’s argument that a prior art reference is distinguishable on a particular
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`ground can serve as a disclaimer of claim scope . . . .” Saffran v. Johnson & Johnson, 712 F.3d
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`549, 559 (Fed. Cir. 2013) (quotation marks omitted). Thus, Paice’s descriptions of its own alleged
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`inventions and distinctions from the prior art, Severinsky ’970, is a disclaimer that must be
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`considered in defining the scope of the term.
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`Moreover, Paice fails to mention that Paice itself proposed the same construction in a prior
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`IPR of the ’347 patent, which is a parent of the ’761 patent and contains the same disclosure. In
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`the IPR proceedings, Paice argued for a construction of the related phrase “monitoring patterns of
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`vehicle operation over time” to mean “monitoring a driver’s repeated driving operations over
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`time,” a construction that was adopted by the Board. Ex. B to BMW Op. Br., IPR2014-00884,
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`Final Written Decision (Paper 38), at 11-13.
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`Given that Paice limited the scope of this term through disclaimers and limiting statements
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`made during prosecution and in IPR proceedings in order to secure its allowance and preserve its
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`validity in the IPR proceeding, Paice should not be permitted to ignore this prosecution and seek
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`a broader construction of the claim term for infringement purposes. The Court should adopt
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`BMW’s proposed construction.
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`B.
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`“monitoring operation of said hybrid vehicle” (claims 1 and 7)
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`BMW’s Construction
`“monitoring a driver’s repeated driving
`operations over time”
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`Paice’s Construction
`Plain and ordinary meaning
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`Paice cannot assert “plain and ordinary meaning” for a disputed term without specifying
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`what it contends the plain and ordinary meaning of that term is. See Paice LLC v. Hyundai Motor
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`Co., No. Civ. WDQ-12-0499, 2014 WL 3725652, at *13 (D. Md. July 24, 2014) (“A determination
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`that a term has the plain and ordinary meaning ‘may be inadequate when a term has more than one
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`“ordinary” meaning or when reliance on a term’s “ordinary” meaning does not resolve the parties’
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`dispute.’” (citing O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1361
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`(Fed. Cir. 2008)). See also Maytag Corp. v. Electrolux Home Prods. Inc., 411 F. Supp. 2d 1008,
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`1037 (N.D. Iowa 2006) (“[P]arties in patent cases rarely agree on the ‘ordinary meaning [of patent
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`terms] as understood by a person of skill in the art,’ so that asserting that such a meaning should
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`apply, without further construction, merely begs the question of what that meaning is.”).
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`This term should be construed in conjunction with the term “a [predicted] near-term pattern
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`of operation” construed in Section II.A above, as two terms are included in the same limitation in
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`claims 1 and 7. See ’761 patent, claim 1 (“wherein said controller derives a predicted near-term
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`pattern of operation of said hybrid vehicle by monitoring operation of said hybrid vehicle”); claim
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`7 (“wherein said controller predicts a near-term pattern of operation of said hybrid vehicle by
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`monitoring operation of said hybrid vehicle”). And, as discussed above, Paice’s limiting
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`statements during prosecution should inform the proper construction of this term.
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`BMW’s construction, on the other hand, is clear and grounded in the specification: “It is
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`also within this scope of this invention . . . to monitor the vehicle’s operation over a period of days
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`or weeks and reset this important setpoint in response to a repetitive driving pattern.” ’761 patent,
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`39:48-51 (emphasis added). This correct construction, therefore, should be adopted.
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`C.
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`“repetitive pattern of operation of said hybrid vehicle” (claims 2, 3, 4, 8, 9,
`and 10)
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`BMW’s Construction
`“a pattern of operation of the hybrid vehicle
`derived from monitoring the vehicle’s
`operation over a period of days or weeks”
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`Paice’s Construction
`Plain and ordinary meaning
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`Paice argues that BMW’s proposed construction converts a noun (“repetitive pattern of
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`operation”) into a verbal phrase (“monitoring the vehicle’s operation”). However, this argument is
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`in error. BMW’s proposed construction construes the pattern of operation ( a noun) to be just that,
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`a pattern of operation of the hybrid vehicle. BMW’s construction requires that the pattern be
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`derived from prior monitoring of the vehicle’s operation. As pointed out in BMW’s Opening Brief
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`(at pages 13-14) this is exactly what the ’761 Patent teaches. The plain meaning of a pattern is a
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`series of repeated operations and the only time period mentioned in the ’761 Patent is a pattern
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`derived from monitoring the vehicle’s operation over days and weeks. See ’761 patent, 39:48-51;
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`43:18-22. Hence, BMW’s proposed construction hues closely to the intrinsic evidence in the
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`patent’s specification. Paice’s only other objection is that BMW’s construction “deprives the word
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`‘pattern’ of any meaning.” Paice Op. Br. at 21. But once again, Paice is wrong. Paice misquotes
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`BMW’s proposed construction and only addresses the “monitoring “ aspect of the construction
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`which limits how the pattern is derived. BMW’s complete construction in reality uses the term
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`“pattern” in the construction.
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`The most significant difference between the proposed construction is that Paice seeks to
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`ignore the teaching of the ’761 Patent that the pattern of operation is derived from monitoring the
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`prior operation of the vehicle. As such, the Court should reject Paice’s proposed “plain meaning”
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`construction and adopt BMW’s proposed construction, which better comports with the
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`specification of the patent itself.
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`III.
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`PAICE’S PROPOSED “PLAIN AND ORDINARY MEANING”
`CONSTRUCTIONS WOULD NOT RESOLVE THE AMBIGUITY OF CLAIM
`TERMS
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`A.
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`“operating the turbocharger . . . when desired” (claim 49)
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`BMW’s Construction
`“operating the turbocharger when the road
`load has exceeded the engine’s maximum
`torque output for a specified period of time”
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`Paice’s Construction
`Plain and ordinary meaning
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`The ’634 patent specification distinguishes the use of a turbocharger in the invention,
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`which operates only when the road load required to drive the vehicle exceeds the engine maximum
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`torque, from what it calls a “conventionally-turbocharged engine” which may be inhibited during
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`highway driving. ’634 patent, 48:33-48. Rather, the patent states, the invention uses “turbocharger
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`on demand,” which only uses the turbocharger when it is actually needed. Id., 48:48-54. The claims
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`support BMW’s construction: “operating the turbocharger . . . when desired, wherein said
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`operating the turbocharger . . . occurs when the RL [road load] > MTO for more than the
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`predetermined time T . . . .”
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`However, the claim term contains a latent ambiguity—that is what does it mean to operate
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`the turbocharger “when desired.” Does it mean operating the turbocharger when desired as a
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`conventional turbocharger of the prior art, or does it mean operating the turbocharger when desired
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`in accord with the teachings of the Paice patent? Paice’s plain meaning constructions fails to
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`resolve the ambiguity of the term “when desired” and thus should be rejected.
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`The term “when desired” does not appear in the specification of the ’634 patent and appears
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`only in the claims. As Paice points out, claims 47, 103, and 136 include the “when the RL>MTO
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`for more than the predetermined time T” language to qualify when the turbocharger is operated.
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`Those claims are thus consistent with the specification and do not contain the ambiguity present
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`in claim 49, as the further language of the claim confines the claim to cover only that which the
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`specification teaches. Thus, contrary to what Paice argues, consulting these other claims actually
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`supports BMW’s proposed construction of claim 49—the claims show that the invention the
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`patentee purported to make was to operate the turbocharger only in the restricted circumstance
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`when the road load exceeded the maximum torque output of the engine. The fact that this limitation
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`is not specifically included in claim 49 merely demonstrates that the claim is ambiguous, it does
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`not demonstrate that claim 49 is necessarily broader than the other claims.
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`The entire point of a claim construction is to construe the claim to cover what the patentee
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`invented and disclosed. Phillips v. AWH Corp., 415 F3d 1303, 1316 (Fed. Cir. 2005) (“Ultimately,
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`the interpretation to be given a term can only be determined and confirmed with a full
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`understanding of what the inventors actually invented and intended to envelop with the claim.”)
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`(quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
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`Claim 49 as writing contains an ambiguity that lends it to be susceptible to covering something the
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`patent did not invent or disclose, the operation of a conventional turbocharger. The Court should
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`adopt BMW’s construction to resolve the ambiguity and confirm that claim 49 covers only that
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`the inventor purported to invent and disclose.
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`B.
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`“shafts may be connected by a non-slipping clutch” (claim 38)
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`BMW’s Construction
`“shafts are connected by a non-slipping
`clutch, a non-conventional automotive
`friction clutch that does not allow for
`extensive relative slipping before the shafts
`are fully engaged”
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`Paice’s Construction
`Plain and ordinary meaning
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`The parties agree that the crux of the issue is whether the term “may” should be construed
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`to be mandatory, as in “must be connected,” or whether the use of a slipping clutch is optional.
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`The intrinsic evidence and the basic principles of claim construction support BMW’s “mandatory”
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`construction. See Road Science, LLC v. Telfer Oil Co., No. CIV S-10-0786 KJM, 2012 WL
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`1739817, at *5 (E.D. Cal. May 15, 2012) (rejecting patentee’s argument that the word “may” is
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`“non-limiting” because the specification provided a clear, limited definition of the term being
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`construed).
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`BMW’s proposed construction is supported by basic principles of claim construction.
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`Claims, by their nature, restrict the invention. If the term “may” in claim 38 were construed to be
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`permissive, the clause would do nothing to restrict the scope of the claim. The clutch might, or
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`might not, be a slipping clutch and, therefore, the clause would have no meaning, as it did not
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`restrict the claim in any way. The mandatory construction of “may” gives meaning to the clause,
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`as it then requires the clutch be a non-slipping clutch. Claim construction presumes that all parts
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`of the claim have meaning. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
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`1111, 1119 (“[A]ll claim terms are presumed to have meaning in a claim.”). Construing the term
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`“may” to be mandatory gives meaning to this clause, which otherwise would be meaningless
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`surplusage.
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`IV.
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`CONCLUSION
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`For the foregoing reasons, BMW respectfully requests that the Court adopt its proposed
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`claim constructions.
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`Dated: September 8, 2020
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`DLA PIPER LLP (US)
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`Of Counsel:
`
`Joel A. Dewey
`DLA PIPER LLP (US)
`The Marbury Building
`6225 Smith Avenue
`Baltimore, MD 21209-3600
`Telephone: (410) 580-4135
`Facsimile: (410) 580-3135
`joel.dewey@us.dlapiper.com
`
`Stephanie Lim (admitted pro hac vice)
`DLA PIPER LLP (US)
`444 West Lake Street, Suite 900
`Chicago, IL 60606-0089
`Phone: (312) 368-4000
`Fax: (312) 236-7516
`stephanie.lim@us.dlapiper.com
`
`/s/ Joseph P. Lavelle
`
`Joseph P. Lavelle (admitted pro hac vice)
`DLA PIPER LLP (US)
`500 Eighth Street, NW
`Washington, DC 20004
`Telephone: (202) 799-4000
`Facsimile: (202) 799-5000
`joe.lavelle@us.dlapiper.com
`
`David R. Knudson (admitted pro hac vice)
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101-4297
`Phone: (619) 699-2700
`Fax: (619) 699-2701
`david.knudson@us.dlapiper.com
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`Attorneys for Defendants
`BAYERISCHE MOTOREN WERKE AG and
`BMW OF NORTH AMERICA, LLC
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