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Velocity Patent LLC v. Mercedes-Benz USA LLC

United States District Court, N.D. Illinois, Eastern Division

September 21, 2016

VELOCITY PATENT LLC, Plaintiff,
v.
MERCEDES-BENZ USA, LLC; MERDECES-BENZ U.S. INTERNATIONAL, INC., Defendants. VELOCITY PATENT LLC, Plaintiff,
v.
FCA U.S. LLC, Defendant. VELOCITY PATENT LLC, Plaintiff,
v.
AUDI OF AMERICA, INC., Defendant.

          MEMORANDUM OPINION AND ORDER

          JOHN W. DARRAH United States District Court Judge.

         Plaintiff Velocity Patent, LLC (“Velocity”) filed a Complaint against Defendants Mercedes-Benz USA, LLC and Mercedes-Benz U.S. International, Inc. and Amended Complaints against FCA U.S. LLC and Audi of America, Inc., each alleging one count of infringement for several claims of U.S. Patent No. 5, 954, 781 (“the ‘781 Patent”). On April 12, 2016, the Court held a claims-construction hearing, which included the argument of counsel for each party and the submissions of written summations by each party. The Court also considered the PowerPoint presentations presented by the parties at the hearing.

         BACKGROUND

         The ‘781 Patent was issued on September 21, 1999. The patent is entitled “METHOD AND APPARATUS FOR OPTIMIZING VEHICLE OPERATION” and describes a system that “notifies the driver of recommended corrections in vehicle operation and, under certain conditions, automatically initiates selected corrective action.” (‘781 Pat. at 1:7-10.) The patent generally claims several sensors, a memory subsystem, a processor subsystem, and notification circuits.

         (Image Omitted)

         The notification circuits provide warnings to the driver that certain conditions are present. Velocity asserts Claims 1, 7, 13, 17-20, 28, 3-34, 40-42, 46, 53, 56, 58, 60, 64, 66, 69, 75-76, and 88 of the ‘781 Patent against Defendants.[1]

         LEGAL STANDARD

         Claim construction is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970 (Fed. Cir. 1995). Claim construction involves “determining the meaning and scope of the patent claims asserted to be infringed.” Id. at 976. In construing the claim, the court does not “rewrite claims” but, rather, “give[s] effect to the terms chosen by the patentee.” K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999). The words of a claim are “generally given their ordinary and customary meaning, ” that is, “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (citations omitted.)

         In interpreting claims, “the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The specification is “highly relevant to the claim construction analysis, ” is “usually . . . dispositive” and is “the single best guide to the meaning of a disputed term.” Id. However, limitations from the specification describing embodiments must not be imported into a claim that does not recite those limitations. Phillips, 415 F.3d at 1323.

         The court may also consider extrinsic evidence, such as expert testimony, dictionaries and learned treatises. Markman, 52 F.3d at 980. However, “[e]xtrinsic evidence is to be used for the court's understanding of the patent, not for the purpose of varying or contradicting the terms of the claims.” Id. at 981.

         ANALYSIS

         “Fuel Overinjection Notification Circuit”

         The parties dispute the proper construction of the term “fuel overinjection notification circuit . . ., said fuel overinjection notification circuit issuing a notification that excessive fuel is being supplied to said engine of said vehicle.” This term is located in Claims 1, 7, 13, 17, 28, 60, 69, and 76. The following are the parties' proposed constructions:

Velocity's Proposed Construction

Defendants' Proposed Construction

A circuit that notifies a driver of a reduced fuel economy condition at the time of the condition.

Mercedes/FCA: The term "excessive fuel is being supplied to said engine" is indefinite. In the alternative, that term means "more fuel than is proper is being supplied to the engine."

Audi: Indefinite

         Indefiniteness

         Defendants argue that this term is indefinite. A patent must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.” 35 U.S.C. § 112, ¶ 2. A lack of definiteness renders the patent or any claim in suit invalid. 35 U.S.C. § 282, ¶ 2(3).1. “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014).

         “Some modicum of uncertainty . . . is the ‘price of ensuring the appropriate incentives for innovation.'” Id. at 2128 (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 732 (2002)). However, “a patent must be precise enough to afford clear notice of what is claimed, thereby appris[ing] the public of what is still open to them.” Id. at 2129. “The properties and purpose of the invention, together with the examples provided by the specification, [must] apprise an ordinary-skilled artisan of the scope of the invention.” Delaware Display Grp. LLC v. Lenovo Grp. Ltd, No. CA 13-2108-RGA, 2015 WL 6870031, at *6 (D. Del. Nov. 6, 2015). “[T]he burden of proving indefiniteness remains on the party challenging [the patent's] validity and that they must establish it by clear and convincing evidence.” Dow Chem. Co. v. Nova Chemicals Corp. (Canada), 809 F.3d 1223, 1227 (Fed. Cir. 2015).

         Plaintiff argues that the “fuel overinjection notification circuit” does not contain a term of degree and is not indefinite because the claim provides for a notification. However, the notification is activated when “excessive fuel” is being supplied to the engine and “excessive fuel” is a term of degree. However, terms of degree are not “inherently indefinite.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014), cert. denied, 136 S.Ct. 59, 193 L.Ed.2d 207 (2015). A term of degree provides insufficient notice of its scope if it depends “on the unpredictable vagaries of any one person's opinion.” Id. at 1371 (citing Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)). In Interval Licensing, the patents described a system that selectively displayed generated images “in an unobtrusive manner that does not distract a user of the display device . . . .” Interval Licensing LLC, 766 F.3d 1364, 1368. The Federal Circuit found the claim term “unobtrusive manner” indefinite, referencing the term's highly subjective nature and its failure to provide guidance to one of skill in the art. Id. at 1371. Whether an image was obtrusive depended on the preferences of any particular viewer and the circumstances under which the image was viewed. Id. Thus, the patent did not provide enough guidance to one practiced in the art.

         In Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015), the claim limitation at issue recited the term “molecular weight” without specifying the meaning of that term. Teva, 789 F.3d at 1341. The patentee argued that average molecular weight had a presumed meaning in the context of the patent. Id. However, the Court held that the claims were indefinite because there were multiple relevant measures for molecular weight and that “the claim on its face offers no guidance on which measure of ‘molecular weight' the claims cover.” Id. “The burden of proving indefiniteness includes proving not only that multiple measurement techniques exist, but that one of skill in the art would not know how to choose among them.” Dow Chem. Co., 809 F.3d at 1227.

         The ‘781 patent describes itself as claiming an “[a]pparatus for optimizing operation of an engine driven vehicle.” (‘781 Pat.) Further, the specification notes that “operating a vehicle at excessive speed, excessive RPM and/or excessive manifold pressure will result in both reduced fuel economy and increased operating costs, ” and that the purpose of the invention is to provide a system “which will enhance the efficient operation” of the vehicle. ('781 Pat. at 1:15-18; 2:2-3). The intrinsic record also shows that the ‘781 patent was meant to promote efficient operation of a vehicle in terms of fuel efficiency and fuel economy. See, e.g., (JA 112, 260, 337.)

         Defendants argue that the patent “must identify (1) a standard to measure the relative term (e.g., how the amount of fuel being supplied to the engine should be measured) and (2) an objective boundary (e.g., a point of reference used to determine whether an amount of fuel [is] ‘excessive').” (Defs' Br. at p. 5.) However, a claim does not necessarily need to reference a precise numerical measurement. See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir. 2010) (“Because the intrinsic evidence here provides a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine [the scope of the claims], . . ., the claims are not indefinite even though the construction of the term ‘not interfering substantially' defines the term without reference to a precise numerical measurement.”) (internal citations and quotations omitted)). Furthermore, the lack of a standard to measure the amount of fuel being supplied to the engine speaks to the breadth of the patent. A broad claim does not “prevent the public from understanding the scope of the patent.” Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir. 2009); SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (“[B]readth is not indefiniteness.” (quotation and citation omitted)). “A broad claim can be definite even where there is no precise numerical boundary so long as a person of skill in the art can determine the scope with reasonable certainty.” GPNE Corp. v. Apple Inc., 108 F.Supp.3d 839, 874 (N.D. Cal. 2015) (citing Enzo Biochem, Inc., 599 F.3d at 1335; Nautilus, 134 S.Ct. at 2124).

         Further, the patent itself contains examples of when the “fuel overinjection notification circuit” should be activated. For example, the fuel overinjection notification circuit is activated when: (1) road speed and throttle position for the vehicle are increasing; and (2) manifold pressure for the vehicle is above the manifold pressure set point. ('781 Pat. at 2:19-27.) The fuel overinjection notification circuit is activated if both (1) throttle position and manifold pressure for the vehicle are increasing; and (2) road speed and engine speed for the vehicle are decreasing. (Id. at 2:28-36). “[A] patent which defines a claim phrase through examples may satisfy the definiteness requirement.” Interval Licensing LLC, 766 F.3d at 1373; see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014) (“For other terms like, for example, terms of degree, specific and unequivocal examples may be sufficient to provide a skilled artisan with clear notice of what is claimed.”). These examples provide a method of measurement or assessment.

         The patent provides a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine the scope of the claims. Defendants have not shown, by clear and convincing evidence, that the ‘781 Patent fails to inform, with reasonable certainty, an individual skilled in the art about the scope of the invention in light of the specification and the prosecution history. The term “excessive fuel” is not indefinite under the Nautilus test.

         Construction

         Mercedes and FCA argue that, in the alternative to the term being indefinite, “excessive fuel” should be construed as “more fuel than is proper is being supplied to the engine.” The entire phrase would be “fuel overinjection notification circuit . . ., said fuel overinjection notification circuit issuing a notification that more fuel than is proper is being supplied to the engine of said vehicle.” Plaintiff's proposed construction is: “A circuit that notifies a driver of a reduced fuel economy condition at the time of the condition.”

         The words of a claim are “generally given their ordinary and customary meaning, ” that is, “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1312-13. Additionally, a “claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). Plaintiff argues that Mercedes and FCA's construction would read out the preferred embodiment of the claim because there is no description of a way to measure the amount of fuel being supplied to the engine. Defendants respond that the fuel does not need to be measured directly but can be measured indirectly by proxies, i.e., the various sensors described in the patent. This is one of the arguments Plaintiff makes as to why the notification of excessive fuel use is not indefinite, because it is based on data measured by the sensors. Defendants' construction does not read out the preferred embodiment.

         Specifications are the “primary basis for construing the claims.” Phillips, 415 F.3d at 1315 (quoting Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985)). However, limitations from the specification describing embodiments must not be imported into a claim that does not recite those limitations. Phillips, 415 F.3d at 1323. Therefore, it would be improper to read a notification of fuel efficiency, which is only located in dependent Claim 42[2], into a claim that does not recite that limitation. According to the Merriam-Webster dictionary, excessive is defined as “exceeding what is usual, proper, necessary, or normal.” However, Defendants' use of the word “proper” does not adequately describe the claim. Efficiency is based on how much of something is necessary to complete a particular task.

         The Court adopts the following construction for the term “fuel overinjection notification circuit . . ., said fuel overinjection notification circuit issuing a notification that excessive fuel is being supplied to said engine of said vehicle”: A circuit that notifies a driver that more fuel is being supplied to the engine than is necessary.

         “Insufficient Engine Speed”

         The parties dispute the proper construction of the term “insufficient engine speed” in Claims 7 and 13. The following are the parties' proposed constructions:

Velocity's Proposed Construction

Defendants' Proposed Construction

Engine rotation speed falls below a threshold

Indefinite

         Defendants argue that this term is also indefinite because there is no objective boundary. As previously discussed, a “claim can be definite even where there is no precise numerical boundary so long as a person of skill in the art can determine the scope with reasonable certainty.” GPNE Corp., 108 F.Supp.3d at 874. Further, other parts of the patent make reference to manufacturers' guidelines for engine-specific thresholds. While the patent does not point to specific threshold, “[s]ome modicum of uncertainty . . . is the ‘price of ensuring the appropriate incentives for innovation.'” Nautilus, Inc., 134 S.Ct. at 2128 (quoting Festo Corp., 535 U.S. at 732.) For the reasons discussed above, Defendants have not shown, by clear and convincing evidence, that the ‘781 Patent fails to inform, with reasonable certainty, an individual skilled in the art about the scope of the invention in light of the specification and the prosecution history.

         The Court adopts the following construction for the term “insufficient engine speed”: Engine rotation speed falls below a threshold.

         “A Processor Subsystem . . . Said Processor Subsystem ...


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