throbber
Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 1 of 14
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
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`PAICE LLC, et al.,
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`BMW,
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`v.
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`BAYERISCHE MOTOREN WERKE, A.G., *
`et al.,
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`*
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`Paice.
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`*
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`*
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`*
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`*
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`*
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`*
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`Civil Case No. SAG-19-3348
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`*
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`*
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`* *
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`MEMORANDUM OPINION
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`Paice LLC (“Paice”) and The Abell Foundation, Inc. (“Abell”) (collectively, “Paice”) sued
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`Bayerische Motoren Werke, A.G. and BMW of North America, LLC (collectively, “BMW”) for
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`patent infringement. Pending is claim construction for the disputed terms of U.S. Patent Nos.
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`7,104,347 (“the ’347 patent”); 7,237,634 (“the ’634 patent”); and 8,630,761 (“the ’761 patent”)
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`(collectively, the “Asserted Patents”). On October 15, 2020, the Court held a claim construction
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`hearing. For the following reasons, the claim constructions adopted by the Court will govern this
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`litigation.
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`I.
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`BACKGROUND
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`Paice is a Delaware limited liability company with its principal place of business in
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`Maryland. ECF 1 at 3. Established in 1992 by Doctor Alex J. Severinsky, the company “develops
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`and promotes innovative hybrid electric vehicle technology that improves fuel efficiency and
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`lowers emissions, while maintaining superior driving performance.” Id. Abell, a Maryland
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`corporation, is a nonprofit charitable organization whose objectives include increasing energy
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`1
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`PAICE 2007
`BMW v. Paice
`IPR2020-01299
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`

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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 2 of 14
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`efficiency and producing alternative energy. Id. BMW, meanwhile, is an automaker that
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`manufactures, markets, and sells luxury cars worldwide, including hybrid electric vehicles.
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`Paice and Abell are co-owners by assignment of the entire right, title, and interest in and
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`to U.S. Patent Nos. 7,104,347; 7,237,634; and 8,630,761. Id. at 6. The ’347, ’634, ’761 patents
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`are part of a family of patents related to U.S. Patent No. 6,209,672. Id. at 7. The patents involve
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`hybrid vehicle technologies, and per Paice’s description involve “hybrid topologies and methods
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`of control to optimize vehicle performance, fuel economy, and emissions efficiency.” Id. More
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`specifically, since a hybrid vehicle uses two power sources—an electric motor (powered by a
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`battery) and an internal combustion engine (powered by gasoline)—the vehicle requires a way to
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`switch between the two power supplies. The patents claim control strategies for coordinating these
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`two power sources.
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`On August 7, 2020, the parties submitted a Joint Claim Construction statement. ECF No.
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`71. On that same day, BMW submitted their opening claim construction brief. ECF No. 73, as did
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`Paice, ECF No. 72. On September 8, 2020, BMW filed their responsive claim construction brief,
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`ECF 82, as did Paice, ECF 81. A claim construction hearing was held on October 15, 2020.
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`II.
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`LEGAL STANDARD
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`Claim construction is a question of law, to be determined by the Court. Markman v.
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`Westview Instruments, Inc., 517 U.S. 370, 384 (1996). Specifically, “[c]laim construction is a
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`matter of resolution of disputed meanings and technical scope, to clarify and when necessary to
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`explain what the patentee covered by the claims, for use in the determination of infringement. It is
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`not an obligatory exercise in redundancy.” Therefore, “district courts are not ... required to
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`construe every limitation present in a patent's asserted claims.” O2 Micro Int'l Ltd. v. Beyond
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`Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). For instance, terms that are
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`2
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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 3 of 14
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`“commonplace” or that “a juror can easily use [ ] in her infringement fact-finding without further
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`direction from the court” need not be construed because they “are neither unfamiliar to the jury,
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`confusing to the jury, nor affected by the specification or prosecution history.”
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`“It is a bedrock principle of patent law that the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (internal quotation marks omitted), cert. denied, 546 U.S. 1170 (2006). Thus,
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`unsurprisingly, “the claim construction analysis must begin and remain centered on the claim
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`language itself.” Id. A court should give the term’s words their “ordinary and customary meaning”
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`as would be understood by “a person of ordinary skill in the art in question at the time of the
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`invention.” Id. at 1313. “A determination that a claim term . . . has the ‘plain and ordinary
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`meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance
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`on a term's ‘ordinary’ meaning does not resolve the parties’ dispute.” O2 Micro, 521 F.3d at 1361.
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`In addition to the plain language of the claim itself, “the claim should be read within the
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`context of the entire patent, including the specification.” Pulse Med. Instruments, Inc. v. Drug
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`Impairment Detection Servs., Inc., 2009 WL 6898404, at *1 (D. Md. Mar. 20, 2009). The
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`specification “is always highly relevant to the claim construction analysis. Usually it is dispositive;
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`it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic,
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`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Yet, in other Federal Circuit decisions, the
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`specification’s use has been limited to circumstances in which either “a patentee sets out a
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`definition and acts as his own lexicographer,” or “when the patentee disavows the full scope of a
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`claim term either in the specification or during prosecution.” Unwired Planet, LLC v. Apple Inc.,
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`829 F.3d 1353, 1358 (Fed. Cir. 2016). To this end, the Federal Circuit has “acknowledge[d] the
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`difficulty in drawing the fine line between construing the claims in light of the specification and
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`3
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`

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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 4 of 14
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`improperly importing a limitation from the specification into the claims.” Cont'l Circuits LLC v.
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`Intel Corp., 915 F.3d 788, 797 (Fed. Cir. 2019), cert. denied, 140 S. Ct. 648 (2019). Through close
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`review of the specification, “[m]uch of the time . . . it will become clear whether the patentee is
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`setting out specific examples of the invention to accomplish those goals, or whether the patentee
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`instead intends for the claims and the embodiments in the specification to be strictly coextensive.”
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`Phillips, 415 F.3d 1323. To that end, for the specification language to restrict the scope of claim
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`term, it must “rise to the level of ‘a clear and unmistakable disclaimer.’” Cont’l Circuits, 915 F.3d
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`at 797 (quoting Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012)).
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`“In addition to consulting the specification ... a court should also consider the patent's
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`prosecution history, if it is in evidence.” Phillips, 415 F.3d at 1317 (internal quotation marks
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`omitted). “The prosecution history limits the interpretation of claim terms so as to exclude any
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`interpretation that was disclaimed during prosecution.” Southwall Techs., Inc. v. Cardinal IG Co.,
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`54 F.3d 1570, 1576 (Fed. Cir. 1995), cert. denied, 516 U.S. 987 (1995). “Yet because the
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`prosecution history represents an ongoing negotiation between the PTO and the applicant, rather
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`than the final product of that negotiation, it often lacks the clarity of the specification and thus is
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`less useful for claim construction purposes.” Phillips, 415 F.3d at 1317. Relatedly, “statements
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`made by a patent owner during an IPR proceeding can be considered during claim construction
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`and relied upon to support a finding of prosecution disclaimer.” Asylus Networks, Inc. v. Apple,
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`Inc., 856 F.3d 1353, 1361 (Fed. Cir. 2017).
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`“In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity
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`in a disputed claim term. In such circumstances, it is improper to rely on extrinsic evidence.”
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`Vitronics, 90 F.3d at 1583. Extrinsic evidence, including expert and inventor testimony,
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`dictionaries, and learned treatises, may be helpful to explain scientific principles, the meaning of
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`4
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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 5 of 14
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`technical terms, and terms of art that appear in the patent and prosecution history. Extrinsic
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`evidence may demonstrate the state of the prior art at the time of the invention. It is useful to show
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`what was then old, to distinguish what was new, and to aid the court in the construction of the
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`patent. Markman, 52 F.3d 967, 980 (Fed. Cir. 1995) (internal quotation marks omitted), aff'd, 517
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`U.S. 370 (1996). “In sum, extrinsic evidence may be useful to the court, but it is unlikely to result
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`in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic
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`evidence.” Phillips, 415 F.3d at 1319.
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`III. ANALYSIS OF THE DISPUTED TERMS
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`a. Term 1
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`Claim Term
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`“shafts may be connected by
`a non-slipping clutch”
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`Paice’s proposed
`construction
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`Plain and ordinary
`meaning
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`BMW’s proposed construction
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`“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 engaged”
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`
`
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`The core of the dispute over construction of this term is the parties’ disagreement over
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`whether Paice’s use of the permissive phrase “may be connected” should be replaced with the
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`mandatory phrase “are connected,” at BMW’s urging. Paice argues that the word “may” is not
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`ambiguous and is optional on its face. ECF 73 at 12-13. Paice also notes that BMW failed to
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`identify this claim term for construction and stated that it “accord[ed] the plain and ordinary
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`meaning to the remaining terms” in its recent inter partes review (IPR) petition. Id. at 12, citing
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`ECF 73-5 at 8. BMW responds with a contextual argument grounded in the specification, arguing
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`that it argues limits the claim to the use of a non-slipping clutch and in doing so resolves ambiguity
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`in the meaning of the term “may.” ECF 72 at 16-18.
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`5
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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 6 of 14
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`BMW’s transformation of the word “may” is unwarranted, as the term has a clear plain
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`meaning indicating that the use of a non-slipping clutch is optional. Contrary to BMW’s concerns
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`that every clause must do something to restrict the scope of the claim, ECF 72 at 18, the Federal
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`Circuit has held that there is nothing inherently problematic with the use of an open-ended phrase
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`like “may” in a claim. See In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) (“Optional
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`elements do not narrow the claim because they can always be omitted.”); see also Prolitec, Inc. v.
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`Scentair Techs., Inc., 807 F.3d 1353, 1358 (Fed. Cir. 2015) (“[T]he use of ‘may’ signifies that the
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`inventors did not intend to limit the patent.”) (reversed on other grounds). Moreover, nothing in
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`the specification provides the sort of “clear, limited definition of the term being construed” such
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`that it could overcome the plain meaning of the word “may.” Road Science, LLC v. Telfer Oil Co.,
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`2012 WL 1739817, at *5 (E.D. Cal. May 15, 2012). While the specification does discuss the use
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`of non-slipping clutches, it does so in a permissive fashion similar to the word “may” in the
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`disputed claim at issue. ECF 73-1 at 26:33-40 (stating that the clutch “need not necessarily be an
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`ordinary automotive friction clutch”) (emphasis added). Accordingly, the Court will adopt the
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`plain and ordinary meaning construction proposed by Paice.1
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`b. Term 2
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`Claim Term
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`“operating the turbocharger .
`. . when desired”
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`Paice’s proposed
`construction
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`Plain and ordinary
`meaning
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`BMW’s proposed construction
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`“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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`
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`1 As the Court construes this term to be optional, it declines to further construe the phrase “non-
`slipping clutch,” which is sufficiently defined by its plain and ordinary meaning.
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`6
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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 7 of 14
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`This second disputed term once again involves Paice arguing for a plain meaning, while
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`BMW seeks to import alleged limitations from the specification. Paice argues that the meaning of
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`“when desired” is plain on its face, in that the turbocharger can be controlled to broadly operate
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`when desired to “maximize efficient operation of the engine” (in contrast with a conventional
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`turbocharger which either operates or does not operate based on gas engine output alone). ECF
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`73 at 14. Paice emphasizes that “the claims are intentionally silent on when the turbocharger must
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`be operated,” in stark contrast to BMW’s construction. ECF 81 at 8. Paice also highlights the fact
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`that BMW did not dispute this particular claim term in its previous IPR brief construing ’634,
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`where it stated, “[p]etitioners … accord the plain and ordinary meaning to the remaining terms.”
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`ECF 73-6 at 10. BMW, meanwhile, argues that the term “when desired” is ambiguous. BMW
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`thus turns to the specification for greater detail, which it alleges provides the relevant language
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`specifying when the turbocharger operates for the purposes of the claim. ECF 72 at 14-15. It also
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`argues that the specification disclaims operation of a conventional turbocharger. ECF 72 at 15.
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`
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`BMW’s narrow definition of when the turbocharger operates falls short. While the Court
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`agrees that “when desired” is less than clear in its meaning, as will be discussed below, there is no
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`support for inserting the “road load > MTO” language as the sole situation in which the
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`turbocharger operates. This is supported by the principle of “claim differentiation,” an analysis
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`that revolves around claims 47, 103, and 136, where Paice did use the “road load > MTO” language
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`BMW attempts to insert here. The fact that Paice used this limiting language elsewhere, but
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`excluded it here, suggests an intentional choice not to limit the term “when desired” to that
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`particular circumstance. Clearstream Wastewater Sys., Inc. v. Hydro-Action, Inc., 206 F.3d 1440,
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`1446 (Fed. Cir. 2000) (“Under the doctrine of claim differentiation, it is presumed that different
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`words used in different claims result in a difference in meaning and scope for each of the claims.”).
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`7
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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 8 of 14
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`While the specification does include language suggesting that the “the turbocharger is employed
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`only when the vehicle’s torque requirements, the ‘road load’ as above, exceeds the engine’s
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`normally-aspirated maximum torque capacity for a relatively extended period T of time,” the
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`surrounding language suggests that this description was meant to be exemplary. ECF 73-2 at
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`44:59-65. In fact, the defining feature of the claimed turbocharger was its “additional flexibility”
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`that allowed it to be operated “when useful in further improving vehicle efficiency and drivability
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`and not at other times.” Id. at 44:52-57. Ultimately, this mix of language does not rise to the level
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`of “clear disavowal” required to overcome the plain meaning of “when desired.” See Epistar Corp.
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`v. Int'l Trade Comm'n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (quoting Teleflex, Inc.v. Ficosa N.
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`Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)).2
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`While BMW’s overly-narrow definition may not be supported by the open-ended claim
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`language or other intrinsic evidence, it is also true that “when desired” does not have the sort of
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`unambiguous plain meaning that Paice argues it does. In the context of machines like the
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`turbocharger and the controller operating it, the term “desired” and the personification it entails
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`provides little clarity as to what is being desired or what, even, is doing the “desiring.” Setting
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`aside such semantics, the “when desired” language would not be helpful to a jury seeking to
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`determine questions of infringement. Whereas the other open-ended terms at issue here have some
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`well-defined boundaries upon which a jury could rely (e.g. a “pattern of vehicle operation” is
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`2 BMW argues that the specification disclaims operation of a conventional turbocharger, a
`viewpoint that has compelling support in the text. See ’634 patent, 46:14-19. However, even if it
`were true that the specification disclaims a conventional turbocharger, that fact alone does not
`provide support for its overly narrow construction put forward here, which goes many steps further
`and articulates one single case in which the novel turbocharger can operate. Moreover, Paice
`appears to concede that a conventional turbocharger is not covered by its proposed plain meaning
`of “when desired” in the first place, even without a disclaimer. ECF 81 at 9. To the extent that
`BMW is concerned Paice will seek to include operation of a conventional turbocharger in this
`claim at trial, that avenue is foreclosed by Paice’s own arguments here.
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`8
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`

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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 9 of 14
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`necessarily limited to operation of said vehicle, even if it leaves open how exactly the pattern is
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`derived), “operating the turbocharger . . . when desired” has no such limits—"when desired” could
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`mean almost anything. Such boundless scope is not only of little use in determining infringement,
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`but is also belied by the specification, which does limit the claim term, just not in the way BMW
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`suggests. As noted above, the turbocharger is meant to be operated “when useful in further
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`improving vehicle efficiency and drivability and not at other times.” ECF 73-2 at 44:52-57. This
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`language delinates a clear outer bound for the claim, while also staying true to the flexible nature
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`of the original “when desired” language. The Court will thus adopt its own construction:
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`“operating the turbocharger . . . when useful in further improving vehicle efficiency and drivability
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`and not at other times.”
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`c. Term 3
`
`Claim Term
`
`“a predicted near-term
`pattern of operation” and
`“anticipated patterns of
`vehicle operation”
`
`Paice’s proposed
`construction
`
`“an expected pattern of
`operation”
`
`
`
`BMW’s proposed construction
`
`“a pattern of operation of the
`vehicle expected based on
`monitoring the driver’s repeated
`driving operations over time”
`
`
`
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`The core of the parties’ disagreement here centers on how the vehicle controller derives
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`the “pattern of operation” it uses to vary and optimize hybrid control. BMW seeks to limit how
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`the controller derives this pattern, basing it solely on the driver’s repeated driving operations,
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`whereas Paice suggests that the question of how the pattern is derived was left open-ended by the
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`claim language and covers vehicle operation in general. In support of its position, BMW relies
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`heavily on arguments Paice made in distinguishing its invention from others during the patent
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`application process, as well alleged limiting language in the specification. ECF 72 at 8-10. BMW
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`also points out that Paice has construed related phrases in the ’347 patent to mean “monitoring a
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`9
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`

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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 10 of 14
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`driver’s repeated driving operations over time” in a prior IPR proceeding. Id. at 11. Paice,
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`meanwhile, points to the fact that the plain language of the claim contains no reference to how the
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`pattern is derived, and argues that the specification and prosecution history actually supports,
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`rather than disclaims, a more open-ended reading. ECF 73 at 17; ECF 81 at 11-12. Paice also
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`looks to the ’761 independent and dependent claims as contextual evidence that BMW’s
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`construction improperly limits the way the pattern is derived. ECF 73 at 18.
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`
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`Once again, BMW’s narrow construction fails to overcome the unambiguously broad
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`language of the claim, which Paice accurately notes does not include any limitation as to how the
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`pattern is derived. The various intrinsic sources upon which BMW relies do not go so far as to
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`disclaim the broad scope of the claim term or support its narrow definition of what criteria might
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`be used for prediction. The patent application history, for one, says nothing about restricting
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`derivation of the relevant pattern from driver behavior alone. ECF 72-1 at 58-59. It merely
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`suggests that, in contrast with the ’970 patent, the invention will not make determinations strictly
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`in real time, and that the determinations will be based on vehicle-specific operation patterns. Id.
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`The language BMW cites, in which Paice distinguished the ’970 patent, uses language describing
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`monitoring of vehicle operation generally, rather than driver operation specifically. Id. (noting
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`that the claimed invention would “anticipate a pattern of operation of the vehicle” and “monitor[]
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`operation of the particular vehicle”). The portions of the specification cited by BMW, meanwhile,
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`describe predicting a pattern based on driving operations, but do so framed in the language of
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`examples, rather than as the outer bounds of the claim. See, e.g., ECF 73-3 at 39:48-67 (noting
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`that it is “within the scope” of the invention to monitor the vehicle’s operation over time and to
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`specifically monitor repetitive driving patterns, but not articulating that this is the only way to
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`monitor vehicle operation).
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`10
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`

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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 11 of 14
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`
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`BMW makes the compelling point that Paice has argued for a more limited construction
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`(that closely tracks BMW’s construction here) of a near-identical phrase in the context of the ’347
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`patent. ECF 72 at 11. Yet such evidence—from a different patent, litigated in a separate case not
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`involving BMW, in which the parties were focused on a different interpretive issue—falls short of
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`limiting the plainly open-ended language of the claim itself, especially where the specification and
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`the prosecution history contain the same unrestricted language. It is also worth noting that Paice,
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`whether in the specification or at oral argument, has provided few examples of other factors that
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`might play into the expected pattern of operation. It seems apparent that driving operations will
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`be the most central factor in ascertaining the pattern of operation. Nevertheless, the plain language
`
`does not rule out other inputs. Thus, because Paice’s construction hews most closely to the broad
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`plain language of the claim, the Court will adopt it: “an expected pattern of operation.”
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`d. Term 4
`
`Claim Term
`
`“monitoring operation of said
`hybrid vehicle”
`
`Paice’s proposed
`construction
`
`Plain and ordinary
`meaning
`
`BMW’s proposed construction
`
`“monitoring a driver’s repeated
`driving operations over time”
`
`
`
`
`Like Term 3 above, this dispute centers on a dispute over whether the monitoring of driving
`
`operation should be limited to a driver’s repeated driving operations. The parties largely
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`incorporate their arguments from the preceding analysis, as the two claims are connected such that
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`the parties agree they should be construed in conjunction with one another. ECF 82 at 3; ECF 73
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`at 19-20. Additionally, BMW asserts that Paice inappropriately relies on the “plain and ordinary
`
`meaning” here to avoid providing its own construction of the terms—BMW suggests that Paice’s
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`strategy amounts to “non-construction.” ECF 72 at 12-13. However, as Paice points out, there is
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`a long history of utilizing the “plain and ordinary” in the absence of ambiguity as to what the claim
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`11
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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 12 of 14
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`term means. See, e.g., InterDigital Commn’cs, LLC v. Int’l Trade Com’n, 690 F.3d 1318, 132
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`(Fed. Cir. 2012) (“The plain meaning of claim language ordinarily controls.”); ActiveVideo
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`Networks, Inc. v. Verizon Commn’cs, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012) (finding the
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`district court properly construed two terms as plain and ordinary meaning). Moreover, BMW did
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`not identify this term as one requiring construction in its prior IPR filing regarding the ’761 patent.
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`In doing so, BMW lumped it together with the other non-construed terms it said should be given
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`plain and ordinary meaning. ECF 81-1 at 10 (“Except as discussed below, the terms in the
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`Challenged Claims should have their plain and ordinary meaning for purposes of this IPR
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`proceeding.”).
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`Here, once again, there is no ambiguity in “monitoring operation of said hybrid vehicle.”
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`While it is undoubtedly open-ended and may not provide the sort of restricted specificity that
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`BMW would like, there is no evidence in the specification or elsewhere that Paice clearly
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`disclaimed the open-ended plain meaning that leaves open the question of what, specifically, is
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`being monitored about the vehicle’s operation. The Court will therefore adopt the plain and
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`ordinary meaning of this term.
`
`e. Term 5
`
`
`
`Claim Term
`
`“repetitive pattern of
`operation of said hybrid
`vehicle”
`
`Paice’s proposed
`construction
`
`Plain and ordinary
`meaning
`
`BMW’s proposed construction
`
`“a pattern of operation of the
`hybrid vehicle derived from
`monitoring the vehicle’s operation
`over a period of days or weeks”
`
`
`
`
`The parties here disagree regarding the period of time over which the repetitive pattern is
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`gleaned, as well as (again) how the repetitive pattern is derived. BMW seeks to specify that the
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`time period must be “a period of days or weeks,” while Paice argues that the claim is intentionally
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`12
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`

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`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 13 of 14
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`open-ended in terms of the timeframe during which the relevant monitoring occurs. BMW
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`suggests that the definition of “repetitive” necessarily requires a period of time in which it occurs,
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`and points to the specification to provide that time period because it refers to a “period of days or
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`weeks.” ECF 72 at 13-14. Paice, meanwhile, focuses on the allegedly problematic grammatical
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`ramifications of BMW’s construction, suggesting that the plain language is sufficient to give
`
`meaning to the word “repetitive.” ECF 81 at 15-16. Paice also notes that BMW failed to contest
`
`the meaning of this term in the prior IPR. Instead, like in the examples above, BMW suggested
`
`that the term—together with any other term not specifically contested in its IPR brief—should be
`
`given its plain and ordinary meaning. Id. at 16.
`
`
`
`Here, BMW’s proposed construction falls short. While it is undoubtedly true that
`
`“repetitive” necessarily implies that something repeats over a period of time, that does not mean
`
`that this time period must be specified in the claim in order for it to have a clear and unambiguous
`
`meaning. The unambiguous meaning is that “repetitive” means the pattern repeats over time,
`
`without limitation as to what the relevant time period might be. The specification does not say
`
`otherwise. Rather, it references “monitor[ing] the vehicle’s operation over a period of days or
`
`weeks” as “within the scope of the invention.” ECF 73-3 at 39:48-51. That something is “within
`
`the scope of the invention” does not mean that it is the only thing the invention covers, but rather
`
`that it is one possible embodiment within its scope. That is not the sort of clear disavowal needed
`
`to support BMW’s insertion of “days or weeks” into the claim term.
`
`Setting the period of time aside, it is similarly unnecessary to alter the language of the claim
`
`to specify that the “pattern of operation” is derived from “monitoring the vehicle’s operation.”
`
`Paice accurately notes that this slight tweak in language fundamentally transforms the term from
`
`a description of a pattern into an explanation of how the pattern is derived. The impropriety of
`
`13
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`

`

`Case 1:19-cv-03348-SAG Document 93 Filed 10/26/20 Page 14 of 14
`
`this transformation is highlighted by claim 3, which provides its own definition of how the
`
`repetitive pattern is derived and thus would result in redundancy were BWM’s construction
`
`inserted. Accordingly, the Court construes the term to have its plain and ordinary meaning.
`
`IV. CONCLUSION
`
`For the foregoing reasons, the five terms as construed by the Court are as follows:
`
`Term
`
`“shafts may be connected by a non-slipping clutch”
`
`“operating the turbocharger . . . when desired”
`
`
`“a predicted near-term pattern of operation” and
`“anticipated patterns of vehicle operation”
`
`“monitoring operation of said hybrid vehicle”
`
`“repetitive pattern of operation of said hybrid
`vehicle”
`
`
`Court’s Construction
`
`Plain and ordinary meaning
`
`“operating the turbocharger . . . when
`useful in further improving vehicle
`efficiency and drivability and not at
`other times.”
`
`“an expected pattern of operation”
`
`Plain and ordinary meaning
`
`Plain and ordinary meaning
`
`Dated: October 26, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/
`
`
` Stephanie A. Gallagher
` United States District Judge
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`14
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`

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