On October 6, 2016, ALJ Thomas B. Pender issued Order No. 8 construing the claim terms of the asserted patents in Certain Hybrid Electric Vehicles and Components Thereof (Inv. No. 337-TA-998).

By way of background, this investigation is based on a complaint filed by Paice LLC and the Abell Foundation, Inc. alleging violation of Section 337 by certain European automakers (Volkswagen, Porsche, Audi) in the importation into the U.S. and sale of certain hybrid electrical vehicles and components thereof that infringe one or more claims of U.S. Patent Nos. 7,104,347; 7,237,634; and 8,214,097. See our April 18, 2016 and May 20, 2016 posts for more details on the complaint and Notice of Investigatin, respectively.

Level of Ordinary Skill

According to the Order, Complainants’ and Respondents’ experts essentially agreed on the baseline education (bachelor’s degree in engineering or physics) required of a person of ordinary skill in the art at the relevant timeframe for the asserted patents, but disagreed as to requisite level of work experience. ALJ Pender agreed with Respondents’ expert that one of ordinary skill in the art would have at least three years of experience working with hybrid vehicles or other commensurate experience.

Construction of Disputed Claim Term “road load”

The term “road load” appears in the asserted claims of each of the patents-in-suit. Complainants argued that this term means “the instantaneous torque required for propulsion of the vehicle, which may be of positive or negative value.” The Porsche respondents’ construction was not materially different from Complainants’ construction. The Volkswagen and Audi respondents, however, sought to add the requirement that the road load includes torque necessary “to overcome breakaway friction, rolling friction (as in bearings and tire of road friction) and windage (as in drag forces exerted on the vehicle by air) and maintain speed.” According to Volkswagen and Audi, the specifications and file histories of the asserted patents “repeatedly and affirmatively distinguish the meaning of the term ‘road load,’ and Complainants have argued before the Federal Circuit that this term should be construed in the context of the patents to account for ‘external torque requirements,’ including ‘rolling resistance, driving conditions, and wind resistance.’” Volkswagen and Audi also relied on extrinsic evidence in the form of patents and publications “dated long before the Paice patents were applied for” which allegedly demonstrate that “road load” was a technical term used in the art to describe the instantaneous torque required to propel a vehicle to overcome breakaway friction, rolling friction, and windage so as to maintain speed.

Based on the parties’ briefing, ALJ Pender accepted Complainants’ construction of “road load.” The ALJ explained that Complainants’ construction “necessarily includes any factor that affects the amount of torque needed to propel the vehicle, such as wind resistance, friction of all kinds, etc., because, quite simply, they are all factors affecting the amount of torque needed to propel the vehicle.” ALJ Pender also noted that he saw “nothing inconsistent with what Complainants’ have argued in any other case from what they argue in this investigation.” Accordingly, the ALJ construed “road load” to mean “the instantaneous torque required for propulsion of the vehicle, which may be positive or negative.”

Construction of Disputed Claim Term “setpoint”

The term “setpoint” likewise appears in the asserted claims of each of the patents-in-suit. Complainants argued that the patentee acted as his own lexicographer and that this term means “a definite, but potentially variable value at which a transition between operating modes may occur.” Respondents contended that “setpoint” should be construed as “a predefined torque value that may or may not be reset.” Respondents argued, inter alia, that Complainants’ definition improperly broadens the “setpoint” value to units other than torque—a construction that the PTAB had rejected as too broad in related IPR proceedings.

ALJ Pender agreed with Respondents’ construction. The ALJ first noted the PTAB’s broader standard for claim construction and found that “[s]ince the definition Complainants propose is broader than what the PTAB agreed with, it can be logically argued Complainants’ proposal is too broad.” ALJ Pender also determined that “the claim language in the relevant asserted claims creates an absolute connection between the concept of a setpoint and torque.” Further, “[i]n examining the specification [the ALJ found] nothing that widens the meaning of setpoint found in the relevant claims beyond a torque value.” Finally, ALJ Pender observed that “Complainants have conflated the limitation that the torque value of the setpoint may be reset with an argument that the value of the setpoint may be reset to something other than torque.” The ALJ went on to state that “[i]f Complainants actually were to concur the value of the setpoint must always be valued in terms of torque, which is perhaps a fair reading of their proposed construction, then there would be less of a problem,” but regardless, “the solution here is simple—the claims leave no doubt that the term setpoint must be expressed as a torque value.” Thus, the term “setpoint” was construed as “a predefined torque value that may or may not be reset.”

Remaining Disputed Claim Terms

With respect to the ten remaining disputed claim terms that Complainants argued should be afforded their plain meaning and Respondents alleged are indefinite, ALJ Pender stated that he “cannot resolve of this matter in a claims construction order” because it would not be “a reviewable or appealable Initial Determination.” Short of an Initial Determination after a hearing on the merits, the ALJ stated that resolution of the indefiniteness issues could only be accomplished upon a motion for summary determination.