Case 1:19-cv-03348-SAG Document 72 Filed 08/07/20 Page 1 of 22
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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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`v.
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`BAYERISCHE MOTOREN WERKE A.G., and
`BMW OF NORTH AMERICA, LLC,
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`
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`Defendants.
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`Plaintiffs,
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`
`
`C.A. No. 19-CV-3348-SAG
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`JURY TRIAL DEMANDED
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`
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`
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`DEFENDANTS BAYERISCHE MOTOREN WERKE, AG AND BMW OF NORTH
`AMERICA, LLC’S OPENING CLAIM CONSTRUCTION BRIEF
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`
`
`
`1
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`PAICE 2001
`BMW v. Paice
`IPR2020-01299
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`Case 1:19-cv-03348-SAG Document 72 Filed 08/07/20 Page 2 of 22
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ...............................................................................................................1
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`OVERVIEW OF THE ASSERTED PATENTS..................................................................2
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`A.
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`B.
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`Litigation History of the Asserted Patents ...............................................................2
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`Technology Allegedly Claimed by the Asserted Patents .........................................3
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`III.
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`LEGAL STANDARDS .......................................................................................................6
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`A.
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`Claim Construction ..................................................................................................6
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`IV.
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`DISPUTED TERMS OF U.S. PATENT NO. 8,630,761 ....................................................8
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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) ...............................10
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`“monitoring operation of said hybrid vehicle” (claims 1 and 7) ...........................11
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`“repetitive pattern of operation of said hybrid vehicle” (claims 2, 3, 4, 8, 9,
`and 10) ...................................................................................................................13
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`I.
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`DISPUTED TERMS OF U.S. PATENT NO. 7,237,634 ..................................................14
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`A.
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`“operating the turbocharger . . . when desired” (claim 49) ....................................14
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`II.
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`DISPUTED TERM OF U.S. PATENT NO. 7,104,347 .....................................................16
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`A.
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`“shafts may be connected by a non-slipping clutch” (claim 38) ...........................16
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`III.
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`CONCLUSION ..................................................................................................................19
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`TABLE OF AUTHORITIES
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`
`Cases
`Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006) ..............................................6
`Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335 (Fed.Cir.1998) ..........................................8
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111 (Fed. Cir.
`2004) ....................................................................................................................................7, 18
`Innovad Inc. v. Microsoft Corp., 260 F.3d 1326 (Fed. Cir. 2009) .................................................15
`Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295 (Fed. Cir. 2004) ...........................7
`Liebel-Flarsheim Co. v. Medrad Inc., 2006 WL 335846 at *6 (S.D. Ohio 2006) ...................12, 18
`Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) .......................................................6
`Maytag Corp. v. Electrolux Home Prods. Inc., 411 F. Supp. 2d 1008 (N.D. Iowa 2006)
`............................................................................................................................................12, 18
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351 (Fed. Cir.
`2008....................................................................................................................................12, 18
`Oil Co. v. Am. Cyanamid Co., 774 F.2d 448 (Fed. Cir.1985)..........................................................8
`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) .............................................8
`Paice LLC v. Ford Motor Co., Appeal Nos. 2016-1412, 1415, 1745, Doc. 46-2,
`Opinion (Fed. Cir. Mar. 7, 2017) ...............................................................................................3
`Paice LLC v. Hyundai Motor Co., No. Civ. WDQ-12-0499, 2014 WL 3725652, at
`*13 (D. Md. July 24, 2014) ...............................................................................................12, 18
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .........................................................6, 7, 8
`Toro Co. v. White Consolidated Industries, Inc., 383 F.3d 1326 (Fed. Cir. 2004)........................16
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) ............................................7
`Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 US 17, 27 note 4 (1997) ........................18
`
`
`Rules
`Local Rule 805.1 ..............................................................................................................................1
`35 U.S.C. §102(b) ............................................................................................................................8
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`Pursuant to the Court’s Scheduling Order (ECF No. 36) and Local Rule 805.1, 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”) file their opening claim construction for the disputed
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`terms of U.S. Patent Nos. 7,104,347 (“the ’347 patent”); 7,237,634 (“the ’634 patent”); and
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`8,630,761 (“the ’761 patent”) (collectively, the “Asserted Patents”). The agreed constructions for
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`certain of the claim terms in these patents are set out in the Joint Claim Construction Statement.
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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 various claims in the three Asserted Patents. Paice contends that the
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`Asserted Patents are infringed by certain BMW and MINI-brand hybrid vehicles that were
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`designed and produced by BMW wholly independent of any of the teachings of the Asserted
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`Patents.
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`The parties have agreed on the proper construction of five of the claim terms of the Asserted
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`Patents, as set forth in the Joint Claim Construction Statement. However, the parties have a number
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`of disputes regarding the proper construction of other claim terms that require resolution by the
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`Court.
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`BMW’s proposed constructions are intended to define these disputed terms to apply
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`meaning one of ordinary skill in the art would attach to the disputed terms based on the way the
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`claim term is used in the claims, the patent specifications, and file history of the Asserted Patents.
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`On the other hand, for all but one term, Paice defaults to a “plain and ordinary meaning”
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`construction, rather than proposing a meaningful construction for the disputed terms. Paice’s
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`proposals contradict the intrinsic evidence and inject ambiguity, rather than clarity, to the disputed
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`claim terms. Paice’s goal is obvious—it wants to keep the meaning of the asserted claims as
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`ambiguous as possible, to prop up the weakness of its infringement case in this court and the
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`invalidity challenges to the claims that exist in the pending IPRs, which are described below. The
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`Court should reject Paice’s attempt to inject ambiguity and uncertainty into the meaning of the
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`disputed terms. Rather, for the reasons set forth below, the Court should adopt BMW’s correct
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`constructions.
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`II.
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`OVERVIEW OF THE ASSERTED PATENTS
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`“Hybrid” vehicles are vehicles that use two or more different sources of power to propel
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`the vehicle. At issue in this case are hybrid electric vehicles that combine an internal combustion
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`engine with one or more electric motors to propel the vehicle.
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`Paice did not invent hybrid electric vehicles. Indeed, this type of hybrid vehicles has been
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`known for over a hundred years. (See, e.g., ’347 patent (“References Cited,” citing a 1905 patent
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`on a combustion engine plus battery hybrid, U.S. Patent No. 913,846 to Pieper).) Instead, the
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`Asserted Patents are directed to alleged incremental improvements to a specific hybrid vehicle
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`system and control strategy. The patents purport to improve on the design of an earlier, prior art
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`patent that is owned by Paice and not at issue in this case—U.S. Patent No. 5,343,970 (“the ’970
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`patent”).
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`A.
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` Litigation History of the Asserted Patents
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`The Asserted Patents have been extensively litigated, including in two cases in this District
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`and two proceedings in the US International Trade Commission. Paice has licensed many
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`automakers under the patents in its portfolio, including Toyota, Ford, GM, Hyundai, and Honda.
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`However, the past litigations have taken their toll on the Paice portfolio. All of the patents
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`are now expired. Many of the claims in the ’347 and ’634 patents have been reviewed and had
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`scores of claims cancelled in multiple IPR proceedings by the U.S. Patent and Trademark Office
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`(“PTO”).
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`The ’347 patent has been the subject of eight previous IPRs in which 30 of 32 challenged
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`claims were found invalid based upon a variety of references. For example, the decision in in
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`IPR2014-00571 found that numerous claims of the ’347 patent were invalid. The Federal Circuit
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`affirmed that decision. Paice LLC v. Ford Motor Co., Appeal Nos. 2016-1412, 1415, 1745, Doc.
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`46-2, Opinion (Fed. Cir. Mar. 7, 2017).
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`The ’634 patent has been the subject of 26 previous IPRs, in which over 150 claims were
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`determined to be invalid. The Final Written Decisions in IPR2014-00904, IPR2014-01416,
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`IPR2015-00758, IPR2015-00785, and IPR2015-00801 specifically determined the ’970 patent
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`rendered obvious numerous claims in view of secondary references. The Federal Circuit affirmed
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`each of those decisions.
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`Since this lawsuit was filed, BMW has filed an IPR petition against each of the three
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`Asserted Patents. Those three petitions are on file in the PTO. Notably, BMW’s claim construction
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`positions in this Court are wholly consistent with its contentions in the IPRs.
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`B.
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`The Asserted Patents
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`The three Asserted Patents are closely related. They have essentially the same written
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`specification and the same drawings. The three patents differ somewhat in the subject matter they
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`claim, but there is also considerable overlap as to the claimed subject matter as well. All three
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`patents claim priority to a provisional application filed in 1998. All three patents have expired.
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`The specifications of the patents purport to disclose a “new ‘topology’ for a hybrid vehicle”
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`requiring “a first electric ‘starting’ motor” and “[a] second ‘traction’ motor.” ’347 patent, 11:47-
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`61; ’634 patent, 11:50-62; ’761 patent, 11:25-37. This purportedly “new ‘topology’” is disclosed
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`as a two-motor “series-parallel” hybrid. ’347 patent, 15:65-16:4; ’634 patent, 16:5-11; ’761 patent,
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`15:41-47. For background information, Figure 3 of each patent (reproduced below) shows one
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`such embodiment of a hybrid with a combustion engine and two electric motors. The figure shows
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`an internal combustion engine 40, a starting electric motor 21, and a traction electric motor 25:
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`The vast majority of the asserted claims, however, require only a single-electric motor
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`configuration, which the patents admit already existed in prior art such as U.S. Patent No.
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`5,343,970 (“the Severinsky ’970 patent”).
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`The patents also describe a control strategy to operate the engine and electric motor “in
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`accordance with the vehicle’s instantaneous torque demands so that the engine is run only under
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`conditions of high efficiency.” See ’347 patent, Abstract; ’634 patent, Abstract; ’761 patent,
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`Abstract. The specifications describe a number of operating modes to best control operation of the
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`hybrid vehicle, including a “low-load mode” in which the vehicle is propelled only by the electric
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`motor, a “highway cruising mode” in which the vehicle is propelled only by the engine, and an
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`“acceleration mode” in which the vehicle is propelled by both the engine and the electric motor.
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`E.g., ’761 patent, 35:1-48. A microprocessor determines the mode of operation based on road load.
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`Id. If the road load is below a setpoint (or “transition point”), the vehicle operates in the motor
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`only mode; if the road load is between the setpoint and the maximum torque output of the engine,
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`the vehicle operates in the engine only mode; if the road load is above the maximum torque output
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`of the engine, the vehicle operates in the motor/engine mode. Id., 39:42-47. But the patents admit
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`that these features were not new but were previously disclosed in the Severinsky ’970 patent. Id.,
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`34:10-15.
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`Although the ’634 patent contains 300+ claims, these are not reflective of extensive
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`innovation but rather a seeming determination by Paice to recycle well-known hybrid vehicle
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`features into the supposedly novel control strategy, resulting in a large number of very similar
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`claims with minor permutations. This overly repetitive claiming strategy extends also to the ’347
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`and ’761 patents.
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`Some of the claims, particularly in the ’761 patent, also claim the feature of using data
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`pertaining to how the vehicle is actually driven to enhance control of a hybrid vehicle. The
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`specifications describe this feature in a few locations and only at a high level of generality. See
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`’761 patent, 39:48-67; 40:41-43; 43:7-22. In particular, the specification explains that the
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`microprocessor can monitor a vehicle’s operation over a period of time and alter the vehicle’s
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`setpoint (where a transition between vehicles states occurs) in response recognizing to a repetitive
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`driving pattern. Id., 39:48-51. As an example, the specification states that an operator may drive
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`the same route from a congested suburban development to a workplace at about the same time
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`every morning, and it may be beneficial to adjust the engine/motor transition point to prevent
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`repetitive engine starts that would otherwise occur in suburban traffic. Id.
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`III. LEGAL STANDARDS
`A.
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`Claim Construction
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`Claims are construed from the perspective of a person of ordinary skill in the art of the
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`field of the invention when the patent application was filed. Phillips v. AWH Corp., 415 F.3d 1303,
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`1313 (Fed. Cir. 2005). In this case, a person of ordinary skill in the art at the time of the applications
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`of the patents addressed in this brief would have had either: (1) a graduate degree in mechanical,
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`electrical, or automotive engineering with at least some experience in the design and control of
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`combustion engines, electric or hybrid electric vehicle propulsion systems, or design and control
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`of automotive transmissions; or (2) a bachelor’s degree in mechanical, electrical, or automotive
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`engineering and at least five years of experience in the design of combustion engines, electric
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`vehicle propulsion systems, or automotive transmissions. Ex. D, Declaration of Dr. Gregory W.
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`Davis in Support of BMW’s Petition for Inter Partes Review of ’761 Patent, ¶¶ 43-46.
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`Courts construe patent claims as a matter of law. Markman v. Westview Instruments, Inc.,
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`517 U.S. 370, 391 (1996). “It is a ‘bedrock principle’ of patent law that the claims of a patent
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`define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp.,
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`415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). The recipe to achieve a legally correct claim
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`construction is a simple one. The words of a claim are generally given their ordinary and customary
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`meaning to one of ordinary skill in the art. Id. Like interpreting a contractual provision, the
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`“primary focus” in determining this plain and ordinary meaning is to consider evidence that is
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`“intrinsic” to the patent itself. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 996 (Fed. Cir.
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`2006); see also Phillips, 415 F.3d at 1313-17. Such intrinsic evidence includes the patent claims,
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`the patent specification, and the history of the inventor’s negotiation with the Patent Office to
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`obtain his patent, called the prosecution (or file) history. Id.
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`The first step in construing a claim term and in assessing the intrinsic evidence is to first
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`look to the words of the claims themselves. Phillips, 415 F.3d at 1313-14; Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “[A] claim construction analysis must
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`begin and remain centered on the claim language itself, for that is the language the patentee has
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`chosen to ‘particularly point[] out and distinctly claim[] the subject matter which the patentee
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`regards as his invention.’” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
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`1111, 1116 (Fed. Cir. 2004).
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`Next, the Court should look to the patent’s specification, which is also known as its written
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`description. See Phillips, 415 F.3d at 1315-17. “The person of ordinary skill in the art is deemed
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`to read the claim term not only in the context of the particular claim in which the disputed term
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`appears, but in the context of the entire patent, including the specification.” Id. The specification
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`is “the single best guide to the meaning of a disputed term.” Vitronics, 90 F.3d at 1582. It “acts as
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`a dictionary when it expressly defines terms used in the claims or when it defines terms by
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`implication.” Phillips, 415 F.3d at 1321. “Even when guidance is not provided in explicit
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`definitional format, the specification may define claim terms by implication such that the meaning
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`may be found in or ascertained by a reading of the patent documents.” Irdeto Access, Inc. v.
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`Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (citations omitted).
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`To round out the intrinsic evidence analysis, the Court should look to the patent’s
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`prosecution history. See Phillips, 415 F.3d at 1317. The prosecution history is created by the
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`inventor as an attempt to explain the invention to obtain a patent from the Patent Office. Id. It tells
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`the story of how the inventor and the Patent Office understood what the invention is, as well as the
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`commensurate scope of a patent’s claims. Id. It can be particularly helpful to determine if the
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`inventor limited the invention, “making the claim scope narrower than it would otherwise be.” Id.
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`It is well established that a patentee may not recapture through claim construction claim scope that
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`he has disclaimed during his patent’s prosecution. See Omega Eng’g, Inc. v. Raytek Corp., 334
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`F.3d 1314, 1323 (Fed. Cir. 2003); Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir.
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`1985). The reason for this is simple: the public must be able to rely on a patentee’s statements
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`during prosecution to understand what scope the inventor believed his claims to have. See Digital
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`Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998).
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`IV. DISPUTED TERMS OF U.S. PATENT NO. 8,630,761
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`The ’761 patent issued from U.S. Patent Application No. 13/573,728, which was filed on
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`October 5, 2012. The ’761 patent claims priority to a lengthy chain of parent non-provisional and
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`provisional patent applications, dating back to September 14, 1998.
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`The prosecution history of the ’761 patent is important to understanding the proper
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`meaning of the disputed claim terms. During prosecution of the ’761 patent, the PTO Examiner
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`rejected the independent claims of the application. These claims would eventually issue as
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`independent claims 1 and 7 of the ’761 patent. The Examiner rejected these claims as “anticipated”
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`(35 U.S.C. §102(b)) by the Severinsky ’970 patent, discussed above. In response, the applicants
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`amended claim 17 (now issued claim 1) to provide that the controller “derives a predicted pattern
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`of operation of said hybrid vehicle by monitoring [the] operation of said hybrid vehicle” and
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`controls the vehicle based on the derived pattern. Ex. A, ’761 patent file history, at 53. A similar
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`amendment was made to prosecution claim 23 (now issued claim 7). Id. at 54.
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`In remarks accompanying the amendment, applicants argued that this added feature of the
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`pending claims distinguished the claims over the Severinsky ’970 patent:
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`[I]ndependent claims 17 and 23 [(issued claims 1 and 7)] have both been
`amended hereby to recite that the controller performs the separate steps of
`monitoring vehicle operation to derive a predicted pattern of operation, and
`then controlling vehicle operation accordingly. [The Severinsky ’970
`patent] discloses only that the vehicle is operated in different modes
`responsive to vehicle speed, makes this mode determination strictly in real
`time, and says nothing about predicting a pattern of operation, and altering
`vehicle operation accordingly.
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`Id. at 58 (emphasis added). Thus, applicants limited the scope of the claims to require that the
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`controller control the vehicle based on predicted pattern information instead of making
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`determinations strictly in real time. Applicants further argued that the Severinsky ’970 patent is
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`different from the amended claims because the control scheme is not based on actual driver
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`behavior but on predetermined settings:
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`Further, [the Severinsky ’970 patent] says nothing about the
`controller performing the step of monitoring vehicle operations in
`order to derive a predicted pattern or anticipate a pattern of operation
`of the vehicle. That is, as noted by the Examiner, highway operation
`and operation in traffic are predictable modes of operating any
`vehicle, and therefore any vehicle must be designed to accomplish
`both properly. But in this case, it is the vehicle designer who
`anticipates highway and low-speed driving, and incorporates the
`necessary components into the vehicle to permit the vehicle to
`perform in both modes . . . . This is very different from the vehicle’s
`controller monitoring operation of the particular vehicle and using
`this data to predict future operational patterns accordingly, as
`claimed.
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`Id. In other words, applicants distinguished a general-purpose control strategy selected by the
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`vehicle designer (manufacturer) to cover known modes of operation for any hybrid vehicle from
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`an optimized intelligent control strategy for a particular hybrid vehicle based on how a driver
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`actually operates that particular vehicle. In response to the claim amendments and arguments, the
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`Examiner allowed the ’761 patent to issue. Id. at 35.
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`This prosecution history will inform the proper construction of the disputed claim terms in
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`the ’761 patent, as discussed below.
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`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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`Initially, BMW notes that claim 1 recites “deriv[ing] a predicted near-term pattern of
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`operation, whereas claims 7 recites “predict[ing] a near-term pattern of operation.” However, there
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`does not appear to be a substantive difference between those limitations in either the specification
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`or the file history, nor has Paice suggested any differences between them. While claims 6 and 12
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`utilize the term “anticipated pattern” of operation, this also seems to have no substantive difference
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`from the term “predicted pattern.” Indeed, in response to a rejection by the Examiner, applicants
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`responded by using “predict” and “anticipate” interchangeably: “[The Severinsky ’970 patent] says
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`nothing about the controller performing the step of monitoring vehicle operations in order to derive
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`a predicted pattern or anticipate a pattern of operation . . . .” Ex. A, ’761 patent file history, at 58
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`(emphasis added). Hence, BMW’s claim construction contentions treat these terms have having
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`substantially the same meaning.
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`BMW’s proposed construction flows from the claim language itself, as well as the
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`specification and prosecution history. The specification of the ’761 patent describes monitoring
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`the vehicle’s operation over a period of days or weeks to determine repetitive driving patterns,
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`such as when an operator drives the same route to the workplace every morning. ’761 patent,
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`39:49-61. The ’761 patent specification explains that “in response to recognition of a regular
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`pattern,” the transition point for the control strategy may be altered. Id., 39:58-67; see also id.,
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`43:15-22. This supports BMW’s construction that the claimed pattern of operation must be based
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`on monitoring the driver’s operation of the vehicle over time. BMW’s construction is also
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`consistent with the file history, which distinguished the Severinsky ’970 patent on the basis that
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`this claim term requires the prediction of future operation based on monitored driver behavior. It
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`is also consistent with the ordinary understanding of a skilled artisan reading the claim language
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`itself.
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`Notably, in a prior IPR on the parent ’347 patent, Paice argued for a construction of the
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`related phrase “monitoring patterns of vehicle operation over time” to mean “monitoring a driver’s
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`repeated driving operations over time.” Ex. B, IPR2014-00884, Final Written Decision (Paper 38),
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`at 11-13. The Board agreed with this proposed construction proposed by Paice. Id. That
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`construction is also consistent with the one proposed herein by BMW.
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`Paice’s proposed construction, by contrast, is inconsistent with the specification and file
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`history. It is not sufficient that the claimed pattern of operation must be “expected” in some
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`undefined sense. Rather the anticipated pattern must be based on monitoring the actual operation
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`of the vehicle. Indeed, this exact point was argued by the applicant in the prosecution history of
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`the ’761 patent. There the applicant noted that the ’970 Patent recognized that a hybrid vehicle can
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`be expected to be operated in both highway speeds and in traffic. However, the applicant noted
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`that this “hardly suggests the specific method steps recited in [claims 1 and 7].” Amendment at 7.
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`Rather, the applicant noted, the claims require that the predicted pattern of operation be derived
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`from monitoring the actual driving of the vehicle, not merely that it was expected in some sense.
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`Id. As Paice’s argument contradicts the intrinsic record, it should be rejected.
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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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`
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`Paice’s Construction
`Plain and ordinary meaning
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`EAST\175761502.3
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`11
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`14
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`Case 1:19-cv-03348-SAG Document 72 Filed 08/07/20 Page 15 of 22
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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 IV.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”).
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`Paice’s proposed construction to a plain and ordinary meaning would fail to properly
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`inform the jury as to the meaning and scope of the limitation. Further, it is improper for Paice to
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`assert “plain and ordinary meaning” for a disputed term without specifying what it contends the
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`plain and ordinary meaning of that term is. See Paice LLC v. Hyundai Motor Co., No. Civ. WDQ-
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`12-0499, 2014 WL 3725652, at *13 (D. Md. July 24, 2014) (“A determination that a term has the
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`plain and ordinary meaning ‘may be inadequate when a term has more than one “ordinary”
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`meaning or when reliance on a term’s “ordinary” meaning does not resolve the parties’ dispute.’”
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`(citing O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1361 (Fed. Cir.
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`2008)). See also Liebel-Flarsheim Co. v. Medrad Inc., 2006 WL 335846 at *6 (S.D. Ohio 2006)
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`(“[A] patentee cannot avoid defining its own claim terms by asserting that its claims have a plain
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`meaning”); Maytag Corp. v. Electrolux Home Prods. Inc., 411 F. Supp. 2d 1008, 1037 (N.D. Iowa
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`2006) (“[P]arties in patent cases rarely agree on the ‘ordinary meaning [of patent terms] as
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`understood by a person of skill in the art,’ so that asserting that such a meaning should apply,
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`without further construction, merely begs the question of what that meaning is.”).
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`BMW’s correct construction, on the other hand, is clear and grounded in the specification:
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`“It is also within this scope of this invention . . . to monitor the vehicle’s operation over a period
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`EAST\175761502.3
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`15
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`Case 1:19-cv-03348-SAG Document 72 Filed 08/07/20 Page 16 of 22
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`of days or weeks and reset this important setpoint in response to a repetitive driving pattern.” ’761
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`patent, 39:48-51 (emphasis added).
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`In an attempt to support its non-construction, Paice cites to intrinsic evidence—parts of the
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`specification of the ’347 patent—but that evidence actually confirm that BMW’s construction is
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`correct: The quote from ’347 patent, 40:56-59, is identical to the language BMW relies on in the
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`paragraph above from column 39 of the ’761 patent. The other portion of the ’347 patent Paice
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`refers to, at 19:58-61, also supports BMW’s construction. It provides that “the values of the sensed
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`parameters in response to which operating mode is selected may vary depending on recent history,
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`or upon analysis by the microprocessor of trips repeated daily . . . .”.
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`Once again, BMW’s construction better comports with the language of the claim and the
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`intrinsic evidence and 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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`
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`The ’761 patent does not specifically define what constitutes a “repetitive pattern.”
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`However, the plain meaning of “repetition” clearly requires an act which recurs over time. See The
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`American Heritage Dictionary of the English Language (5th ed. 2020) (“repetition” – “The act or
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`process or an instance of repeating or being repeated”; “repeated” – “Said, done, or occurring again
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`and again”). Thus, the term necessarily requires two or more occurrences over a period of time.
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`Here, the only period of time described in the ’761 patent is a “period of days or weeks.” See ’761
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`patent, 39:48-51; 43:18-22. This limitation is meaningful to show that the claimed “pattern” must
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`EAST\175761502.3
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`16
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`Case 1:19-cv-03348-SAG Document 72 Filed 08/07/20 Page 17 of 22
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`be something more than short term or transient event but also need not extend over the entire life
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`of the vehicle. Hence the “days or weeks” part of the definition should be adopted.
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`BMW’s construction, therefore, flows from the claim language itself, as well as the
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`spec