Unicorn Energy GmbH v. Tesla, Inc.

Filing 169

CLAIMS CONSTRUCTION ORDER. Signed by Judge Beth Labson Freeman on 1/19/2023. (blflc3, COURT STAFF) (Filed on 1/19/2023)

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Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 1 of 42 1 2 3 UNITED STATES DISTRICT COURT 4 NORTHERN DISTRICT OF CALIFORNIA 5 SAN JOSE DIVISION 6 7 UNICORN ENERGY GMBH, Plaintiff, 8 TESLA INC., Defendant. 11 United States District Court Northern District of California CLAIMS CONSTRUCTION ORDER v. 9 10 Case No. 21-cv-07476-BLF 12 Unicorn Energy GMBH (“Unicorn”) brings this patent infringement lawsuit against Tesla 13 14 Inc. (“Tesla”) for Tesla’s alleged infringement of U.S. Patent No. 10,008,869 (“the ’869 Patent” or 15 “the Asserted Patent”). The Court held a tutorial hearing on October 7, 2022, and a claims 16 construction hearing on October 14, 2022, for the purpose of construing nine terms of the ’869 17 Patent. After the hearing, the parties submitted a Joint Claim Construction Chart setting forth their 18 proposed constructions. See ECF No. 152. 19 I. ’869 PATENT 20 The ’869 Patent concerns components of electrical energy supply network. ’869 Patent, at 21 1:15-20. The patent discloses that the components can be configured to store, supply, convert, and 22 consume energy. See id. 1:18-20. The claims, however, are limited to components that can store 23 electrical energy. See id. at 21:18, 23:3. 24 At the time of the alleged invention, conventional batteries included alkaline batteries of 25 certain standardized housing sizes. Id. at 1:23-29. Certain types of rechargeable batteries were 26 also generally known. Id. at 1:21-31. These standardized batteries could be adapted to different 27 applications with specific voltage needs by placing them in series. Id. at 1:32-34. 28 The patent discloses several problems that arose when combining batteries and battery Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 2 of 42 1 cells to make larger battery systems. One problem was that, as battery systems became more 2 complicated and subject to more safety requirements, it became necessary to construct battery and 3 charging systems adapted to each application. Id. at 1:43-56. Another problem was that, for cells 4 arranged in series, the failure of one cell resulted in a failure of the entire system. Id. at 1:57-61, 5 3:35-40. The alleged invention sought to solve these problems by providing a “mobile, stackable, United States District Court Northern District of California 6 7 secure and intelligent” component that could connect to an electricity network and store 8 electricity. See id. at 5:17-25. These components can be combined to form scalable “energy 9 blocks” that serve a range of different devices with different energy needs, thus overcoming the 10 need to design application-specific systems. Id. at 12:23-27, 12:28-44; see also 5:12-16. They 11 can also be designed to separate from the network when they develop a defect, thus allowing a 12 system using the components remain operable. Id. at 12:1-10. 13 14 II. LEGAL STANDARD A. General Principles 15 Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 517 U.S. 16 370, 387 (1996). “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the 17 invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 18 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citation omitted). Therefore, “[t]he appropriate 19 starting point . . . is always with the language of the asserted claim itself.” Comark Commc’ns, 20 Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). 21 Claim terms “are generally given their ordinary and customary meaning,” defined as “the 22 meaning . . . the term would have to a person of ordinary skill in the art in question . . . as of the 23 effective filing date of the patent application.” Phillips, 415 F.3d at 1313 (internal citation 24 omitted). The court reads claims in view of the specification, which is “the single best guide to the 25 meaning of a disputed term.” Id. at 1315. Furthermore, “the interpretation to be given a term can 26 only be determined and confirmed with a full understanding of what the inventors actually 27 invented and intended to envelop with the claim.” Id. at 1316 (quoting Renishaw PLC v. Marposs 28 Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). The words of the claims must 2 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 3 of 42 1 therefore be understood as the inventor used them, as such understanding is revealed by the patent 2 and prosecution history. Id. The claim language, written description, and patent prosecution 3 history thus form the intrinsic record that is most significant when determining the proper meaning 4 of a disputed claim limitation. Id. at 1315-17; see also Vitronics Corp. v. Conceptronic, Inc., 90 5 F.3d 1576, 1582 (Fed. Cir. 1996). Evidence external to the patent is less significant than the intrinsic record, but the court United States District Court Northern District of California 6 7 may also consider such extrinsic evidence as expert and inventor testimony, dictionaries, and 8 learned treatises “if the court deems it helpful in determining ‘the true meaning of language used 9 in the patent claims.’” Philips, 415 F.3d at 1318 (quoting Markman, 52 F.3d at 980). Extrinsic 10 evidence may not be used to contradict or change the meaning of claims “in derogation of the 11 ‘indisputable public records consisting of the claims, the specification and the prosecution 12 history,’ thereby undermining the public notice function of patents.” Id. at 1319 (quoting 13 Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed. Cir. 1995)). 14 B. Means-Plus-Function Claiming 15 Paragraph 6 of 35 U.S.C. § 112 provides for means-plus-function claiming: “An element in 16 a claim for a combination may be expressed as a means . . . for performing a specified function . . . 17 and such claim shall be construed to cover the corresponding structure, material, or acts described 18 in the specification and equivalents thereof.” The means-plus-function analysis involves two 19 steps. 20 At step one, courts “determine whether a limitation is drafted in means-plus-function 21 format” by determining whether the limitation “connotes sufficiently definite structure to a person 22 of ordinary skill in the art.” Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022). 23 Courts presume that “a claim limitation is not drafted in means-plus-function format in the 24 absence of the term ‘means.’” Id. “The presumption can be overcome if a challenger 25 demonstrates that the claim term fails to recite sufficiently definite structure.” Id. (citation and 26 internal quotation marks omitted). The essential inquiry is “whether the words of the claim are 27 understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the 28 name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). 3 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 4 of 42 1 Such an inquiry turns on “[i]ntrinsic evidence, such as the claims themselves and the prosecution 2 history,” as well as extrinsic evidence. Dyfan, 28 F.4th at 1365-66. 3 At step two, if the limitation is drafted in a means-plus-function format, courts 4 “determine[e] ‘what structure, if any, disclosed in the specification corresponds to the claimed 5 function.’” Dyfan, 28 F.4th at 1365 (quoting Williamson, 792 F.3d at 1351). A means-plus- 6 function claim is indefinite if the specification fails to disclose adequate corresponding structure to 7 perform the claimed function. Williamson, 792 F.3d at 1351-52. The step one inquiry is distinct 8 from, but “may be similar to[,] looking for corresponding structure in the specification.” Apple 9 Inc. v. Motorola, Inc., 757 F.3d 1286, 1296 (Fed. Cir. 2014), abrogated on other grounds by 10 United States District Court Northern District of California 11 12 Williamson, 792 F.3d at 1349. C. Indefiniteness A patent claim must “particularly point[] out and distinctly claim[] the subject matter 13 which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. This language captures the 14 Patent Act’s “definiteness” requirement. See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 15 898, 901 (2014). A patent claim is invalid for indefiniteness if it fails to inform, “with reasonable 16 certainty,” when read in light of the specification and prosecution history, those skilled in the art 17 about the scope of the invention. See id.; See also Nature Simulation Sys. Inc. v. Autodesk, Inc., 18 50 F.4th 1358, 1362 (Fed. Cir. 2022) (“Patent claims must provide reasonable certainty in defining 19 what is patented, in conformity with the requirements of 35 U.S.C. § 112”). “United States 20 patents are accompanied by a presumption of validity, 35 U.S.C. § 282, and invalidity must be 21 established by clear and convincing evidence.” Nature Simulation Sys., 50 F.4th at 1361; see also 22 S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001) (“The claims as granted are 23 accompanied by a presumption of validity based on compliance with, § 112 ¶ 2.”). 24 25 26 27 28 4 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 5 of 42 1 III. A. Disputed Terms 2 1. “energy storing component” (all asserted claims) 3 4 5 DISCUSSION Unicorn’s Proposal “Device that stores electrical energy” 6 7 10 United States District Court Northern District of California 11 12 Court’s Construction Plain and ordinary meaning, where the subcomponents of the energy storing component may not be distributed across the supply network. The term “energy storing component” appears in every claim of the ’869 Patent. Tesla’s 8 9 Tesla’s Proposal “Plain and ordinary meaning, where an energy storing component is an individual component that satisfies elements [1[a]-1[e] / 27[b]27[f]].” proposed construction incorporates the elements of independent claims 1 and 27. Those claims recite: 1. An energy storing component for a supply network for electrical energy as a network medium, comprising: 13 [1a] at least one contact unit for contacting a further energy storing component of the supply network; 14 [1b] an energy store comprising at least one battery cell, and 15 [1c] at least one gateway for coupling the at least one contact unit with the energy store, 16 17 18 19 20 21 22 23 24 25 [1d] wherein the at least one contact unit has a communication interface for communicating with a further energy storing component of the supply network and a transport interface for transporting the electrical energy to the further energy storing component; [1e] wherein the energy storing component comprises at least one switch for separating the energy store from the network medium, the energy storing component being configured to cooperate with the communication interface such that the energy storing component is separated from the network medium in response to an autonomous identification of incompatibility of the energy storing component with the present supply network. ’869 Patent, cl. 1. 27. An energy storage block for a supply network for electrical energy as a network medium, wherein the energy storage block comprises: 26 27 [27a] a plurality of energy storing components for a supply network for electrical energy as a network medium, each supply network component comprising: 28 5 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 6 of 42 1 [27b] at least one contact unit for contacting a further energy storing component of the supply network, 2 [27c] an energy store comprising at least one battery cell, and 3 [27d] at least one gateway for coupling the at least one contact unit with the energy store, 4 5 6 7 8 9 10 United States District Court Northern District of California 11 12 13 14 [27e] wherein the at least one contact unit has a communication interface for communicating with a further energy storing component of the supply network and a transport interface for transporting the electrical energy to the further energy storing component, wherein the plurality of supply network components are connected in parallel or in series with one another; [27f] wherein each of the energy storing components comprises at least one switch for separating its respective energy store from the network medium, each of the energy storing components being configured to cooperate with the communication interface such that the respective energy storing component is separated from the network medium in response to an autonomous identification of incompatibility of the respective energy storing component with the present supply network. ’869 Patent, cl. 27. Before turning to the parties’ dispute, the Court highlights what the parties do not dispute. Unicorn proposes, and Tesla does not dispute, that an “energy storing component” is a component 15 within a supply network. See Unicorn Br. 7-8, ECF No. 135; Tesla Resp. 2-4, ECF No. 141. And 16 the parties agree that an “energy storing component” may be a multicomponent device. See 17 Unicorn Br. 8; Tesla Resp. 4. 18 19 The parties’ agreement that the “energy storing component” may be a multicomponent device comports with the plain language of the claims. For example, claim 1 discloses “[a]n 20 energy storing component . . . comprising: at least one contact unit . . . [,] an energy store . . . , and 21 at least one gateway.” ’869 Patent, cl. 1. Under Claim 1’s plain terms, an energy storing 22 component may therefore have at least three sub-components: a contact unit, an energy store, and 23 a gateway. Phillips, 415 F.3d at 1314 (“Quite apart from the written description and the 24 prosecution history, the claims themselves provide substantial guidance as to the meaning of 25 particular claim terms.”). 26 The parties’ key dispute is whether the subcomponents of the energy storing component— 27 e.g., the contact unit, energy store, and gateway—may be distributed throughout a supply network. 28 6 United States District Court Northern District of California Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 7 of 42 1 See Unicorn Br. 8-9; Tesla Resp. 2-4; Unicorn Reply 2, ECF No. 142. Tesla attempts to capture 2 this requirement through its proposal that an energy storing component is an “individual 3 component.” In its opening brief, Unicorn does not directly addresses whether the subcomponents 4 of the energy storing component may be distributed throughout a supply network. But it does 5 contend that Tesla’s proposed construction is unsupported by the intrinsic record and attempts to 6 add a limitation via claim construction. Unicorn Br. 8. Tesla contends that the subcomponents of 7 the energy storing component may not be distributed throughout a supply network and attempts to 8 capture this limitation by specifying in its proposed construction that an energy storing component 9 is “an individual component.” Tesla Resp. 2-4. Tesla argues that Unicorn disclaimed the 10 possibility of an energy storing component that has subcomponents distributed throughout a 11 supply network to avoid institution of an inter partes review (“IPR”) of claims of the ’869 patent 12 by the Patent Trial and Appeal Board (“PTAB”). Id. at 2-3. On reply, Unicorn contends that 13 “Tesla’s proposal to limit an [energy storing component] to ‘an individual component’ is . . . 14 unjustified” and that the PTAB’s decision to not institute an IPR turned on the prior art’s failure to 15 disclose the limitations of the challenged claims regardless of any purported disclaimer. Id. at 2-3. 16 “When the patentee unequivocally and unambiguously disavows a certain meaning to 17 obtain a patent, the doctrine of prosecution history disclaimer narrows the meaning of the claim 18 consistent with the scope of the claim surrendered.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 19 1353, 1359 (Fed. Cir. 2017) (quoting Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 20 1095 (Fed. Cir. 2013)). This doctrine extends to statements made by a patent owner during an IPR 21 proceeding, whether before or after an institution decision. Id. at 1362. Accordingly, such 22 statements “can be considered for claim construction and relied upon to support a finding of 23 prosecution disclaimer,” so long as the disclaimer is “clear and unmistakable.” Id. at 1361-62. 24 This “ensures that claims are not construed one way in order to obtain their allowance and in a 25 different way against accused infringers.” Id. at 1360 (internal quotations omitted). 26 Based on the prosecution history, the Court concludes that Unicorn clearly and 27 unmistakably disavowed an energy storing component with subcomponents that may be 28 distributed throughout a network. Unicorn’s Patent Owner’s Preliminary Response to Tesla’s 7 United States District Court Northern District of California Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 8 of 42 1 petition for IPR included a section titled “The Claims Require Elements [a]-[e] To Be Part of the 2 ‘Energy Storing Component,’ Not Remote Devices Elsewhere on a Network.” Smith Decl. Ex. B, 3 at 10, ECF No. 139-3. In that section Unicorn faulted Tesla for “suggest[ing] that an ‘energy 4 storing component’ itself can be made up of separate devices distributed across a network.” Id. at 5 12 (emphasis in original). Unicorn used its contention that an energy storing component may not 6 be made up of separate devices distributed across a network to distinguish one of Tesla’s proposed 7 prior art references. Id. at 30-33, 35-43. Unicorn argued that Tesla failed to show that the prior 8 art reference disclosed an energy storing component because Tesla relied on the combination of 9 two connected—but separate—components to attempt to do so. Id. Thus, Unicorn’s disclaimer of 10 an energy storing component with subcomponents distributed throughout a network was clear and 11 unmistakable. 12 Unicorn argues that it is not bound by its disclaimer because the PTAB did not rely on it. 13 See Reply 2-3. The Federal Circuit has explained that “[a]n applicant’s argument made during 14 prosecution may lead to a disavowal of claim scope even if the Examiner did not rely on the 15 argument.” See Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1374 (Fed. Cir. 2005); see 16 also Microsoft Corp. v. Multi–Tech Sys., 357 F.3d 1340, 1350 (Fed.Cir.2004) (“We have stated on 17 numerous occasions that a patentee's statements during prosecution, whether relied on by the 18 examiner or not, are relevant to claim interpretation.”). The Federal Circuit has even found 19 prosecution disclaimer where a patentee’s “statement was unnecessary to overcome [a] reference 20 and [where] the examiner explicitly disagreed with it.” See Am. Piledriving Equip., Inc. v. 21 Geoquip, Inc., 637 F.3d 1324, 1336 (Fed. Cir. 2011). By contrast, the Federal Circuit has declined 22 to find prosecution estoppel where a patent owner’s limiting statements “were clearly and 23 expressly rejected by the Patent Office.” Galderma Lab'ys, L.P. v. Amneal Pharms. LLC, 806 F. 24 App’x 1007, 1010-11 (Fed. Cir. 2020). 25 Here, the PTAB did not rely on Unicorn’s disclaimer, but it also did not reject it. The 26 PTAB noted that Unicorn’s argument that the prior art does not disclose an energy storing 27 component “rests on the assumption that the claim requires all the elements of the ‘energy storing 28 component’ to be integrated into a single device.” Jonas Decl. Ex. 3, at 19 (emphasis in original), 8 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 9 of 42 1 ECF No. 136-3. But the PTAB found it “unnecessary . . . to resolve whether the claim requires 2 the elements to be integrated into the same device or not” because the prior art failed to teach one 3 of the elements of the claims. Id. at 19, 27-30. United States District Court Northern District of California 4 Unicorn is bound by its clear and unmistakable disclaimer because the PTAB did not reject 5 it. Compare Am. Piledriving Equip., 637 F.3d at 1336, with Galderma Lab’ys, 806 F. App’x at 6 1010-11. This result makes sense because the PTAB’s decision leaves intact Unicorn’s 7 representations regarding the scope of its claims, and “[c]ompetitors are entitled to rely on those 8 representations when determining a course of lawful conduct, such as launching a new product or 9 de-signing-around a patented invention.” See Aylus Networks, 856 F.3d at 1359 (citation omitted). 10 Accordingly, the Court finds that the scope of the term “energy storing component” is 11 limited by Unicorn’s prosecution disclaimer. The Court adopts a modified version of Tesla’s 12 proposed construction, construing “energy storing component” to have its plain and ordinary 13 meaning with the limitation that the subcomponents of the energy storing component may not be 14 distributed across the supply network. 15 The Court finds that this more closely aligns with the disclaimer Unicorn made before the 16 PTAB than Tesla’s proposal. The Court also finds that Tesla’s proposal to specifically state that 17 the energy storing component “that satisfies elements [1[a]-1[e] / 27[b]-27[f]]” is redundant, as 18 claim 1 is expressly directed to “[a]n energy storing component . . . comprising: [the elements of 19 the claim]” and claim 27 is expressly directed to “[a]n energy storage block . . . compris[ing]: a 20 plurality of energy storing components . . . each supply network component comprising: [the 21 remaining elements of the claim].” See ’869 Patent cls. 1, 27. 22 23 24 25 2. “network medium” (asserted claims 1, 24, 27) Unicorn’s Proposal “electrical energy in the supply network” Tesla’s Proposal “no construction necessary” Court’s Construction “electrical energy in the supply network” The parties dispute whether the term “network medium” requires construction. Unicorn 26 argues that it does and that the term should be construed as “electrical energy in the supply 27 network.” Unicorn Br. 9-10. Unicorn argues that its construction is necessary to “clarif[y] that 28 9 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 10 of 42 1 the ‘network medium’ is concerned with electrical energy, as opposed to other types of storage . . . 2 that are mentioned in the specification but not claimed in the patent.” Id. Tesla argues that 3 Unicorn’s proposed construction adds nothing to the plain language of the claims and therefore 4 does not clarify their scope. Tesla Resp. 4. Tesla also argues that replacing “network medium” 5 with Unicorn’s proposal in the independent claims leaves those preambles “confusingly” phrased. 6 Id. The Court agrees with Unicorn that the term “network medium” requires construction. United States District Court Northern District of California 7 8 Unicorn explains, and Tesla does not dispute, that the term “network medium” was coined for the 9 ’869 Patent and therefore would not have a plain and ordinary meaning to a person of skill in the 10 art. Unicorn Br. 9. As “network medium” is a technical term whose meaning is not “immediately 11 apparent,” the Court finds that construction would be helpful to the jury. See Phillips, 415 F.3d at 12 1314. 13 The plain language of the claims supports Unicorn’s proposed construction. See id. 14 (“[T]he claims themselves provide substantial guidance as to the meaning of particular claim 15 terms.”). The preamble of claim 1 discloses “[a]n energy storing component for a supply network 16 for electrical energy as a network medium.” ’869 Patent, cl. 1. The preamble of the patent’s other 17 independent claim, claim 27, discloses “[a]n energy storage block for a supply network for 18 electrical energy as a network medium.” Id. cl. 27. Both claims state that “electrical energy” is 19 the “network medium.” Both claims also make clear that the supply network is for electrical 20 energy. It therefore follows that the network medium is “electrical energy within the supply 21 network,” as Unicorn proposes. 22 The specification supports this plain reading of the claims. The specification states, that 23 “[i]n particular, the network medium is electrical energy. However, water, gas, air, petroleum, 24 thermal energy or other energy forms can also be involved, for example.” ’869 Patent, at 5:3-5. 25 The patent also specifies that “[t]he network medium is electrical energy” in each of the disclosed 26 embodiments. See id. at 13:58. Although these excerpts would not limit the term “network 27 medium” to include only electrical energy, they make clear that electrical energy is one possible 28 network medium. The claims then disavow any other possibility through their express invocation 10 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 11 of 42 1 of electrical energy as the network medium. 2 Tesla does not dispute that Unicorn’s proposed construction captures the plain and 3 ordinary meaning of the term to a person of skill in the art. See Tesla Br. 4. Tesla argues only that 4 the construction adds confusion because it cannot be directly substituted for the term “network 5 medium” in the preambles of claims 1 and 27. See id. Tesla offers no caselaw to suggest that 6 such substitution is required, and the Court is aware of none. 7 8 Accordingly, the Court adopts Unicorn’s version and construes the term “network medium” to mean “electrical energy in the supply network.” 3. “contact unit for contacting a further energy storing component” (asserted claims 1 and 27) 9 10 United States District Court Northern District of California 11 12 13 14 15 16 Unicorn’s Proposal “electrical contact(s) for electrically connecting a further energy storing component” Alternatively, if the Court applies 112 ¶ 6: Tesla’s Proposal Subject to 35 U.S.C. § 112 ¶ 6 Function: contacting a further energy storing component of the supply network. Court’s Construction “electrical contact(s) for electrically connecting a further energy storing component” Structure: first contact unit 12 or second contact unit 14. Function: “electrically connecting” 17 18 19 20 21 22 23 24 25 26 Structure: “connectors/plugs/sockets with electrical contacts and optionally including cables, and equivalents thereof” as depicted and described at: Figs. 1-4, 6-10 (and related portions of the specification), 9:59-68, 10:19-25, 11:18-21, 12:36-37, 14:49-59, 16:9-15, 17:36-65. The parties dispute whether “contact unit for contacting a further energy storing component” is a means-plus-function limitation and therefore must be interpreted under 35 U.S.C. § 112 ¶ 6. 27 28 11 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 12 of 42 1 2 3 4 5 i. Legal Standard for Determining whether § 112 ¶ 6 Applies “To determine whether § 112, para. 6 applies to a claim limitation, [Federal Circuit] precedent has long recognized the importance of the presence or absence of the word ‘means.’” Williamson, 792 F.3d at 1348 (Fed. Cir. 2015). The failure to use the word “means” creates a rebuttable presumption that § 112 ¶ 6 does not apply. Id. This presumption is not “strong” and “can be overcome . . . if the challenger demonstrates that the claim term fails to recite sufficiently 6 definite structure or else recites function without reciting sufficient structure for performing that 7 8 function.” Id. at 1349 (internal quotation marks, brackets, and citation omitted). “In making the assessment of whether the limitation in question is a means-plus-function 9 term subject to the strictures of § 112, para. 6, . . . the essential inquiry is not merely the presence 10 or absence of the word ‘means’ but whether the words of the claim are understood by persons of 11 United States District Court Northern District of California ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” 12 Williamson, 792 F.3d at 1348. The determination of whether § 112 ¶ 6 applies to a claim 13 limitation must be made under the traditional claim construction principles, on an element-by14 element basis, and in light of evidence intrinsic and extrinsic to the asserted patents. See, e.g., 15 16 17 18 Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 702-04 (Fed. Cir. 1998) (stating that “[w]hether certain claim language invokes 35 U.S.C. § 112, ¶ 6 is an exercise in claim construction” and that the presumption that § 112 ¶ 6 does not apply “can be rebutted if the evidence intrinsic to the patent and any relevant extrinsic evidence so warrant”). 19 20 21 ii. Whether the Disputed Phrase is Subject to § 112 ¶ 6 The phrase proposed for construction “contact unit for contacting a further energy storing component” does not include the term “means.” The Court therefore presumes that the phrase is 22 not subject to § 112 ¶ 6. Williamson, 792 F.3d at 1348. 23 Unicorn contends that the disputed term is not a means-plus-function term because the 24 25 26 27 word “contact” in “contact unit” connotes sufficient structure to a person of skill in the art. Unicorn Br. 10. Unicorn argues that the specification supports this view. Id. at 11. Unicorn’s expert, Mr. Dillard, opines that the phrase “‘contact unit for contacting a further energy storing component of the supply network’ as it appears in claims 1 and 27 of the ’869 patent ‘is not 28 12 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 13 of 42 1 lacking in structure but rather describes a known structure or class of structures.’” Dillard Decl. ¶ 2 92, ECF No. 135-1. Mr. Dillard cites the Dictionary of Science & Technology (2d ed. 2007) in 3 support of his position. Id. ¶ 91. That dictionary defines “contact” as “a section of a switch or 4 connector that provides an electrical path when it touches another conductor.” Dillard Decl. Ex. 5 D, at 141, ECF No. 135-5. United States District Court Northern District of California 6 Tesla contends that the term is subject to § 112 ¶ 6. Tesla notes that the term is in a format 7 consistent with traditional means-plus-function limitations. Tesla Resp. 5. Tesla argues that 8 nothing in the specification defines a specific structure for the term. Id. Tesla argues that the 9 word “unit” is a nonce term and the addition of the word “contact” before it “merely describes the 10 claimed function of ‘contacting a further energy storing component.’” Tesla Resp. 5-6. For 11 support, Tesla offers of the opinion of its own expert, Dr. Christopher D. Rahn. See id. at 6. Dr. 12 Rahn opines that “the phrase ‘contact unit’ would not be understood by a POSITA to have a 13 sufficiently definite meaning as the name for any particular structure.” Id. ¶ 54. 14 The parties focus their dispute on whether the recited “contact unit” connotes sufficient 15 structure to preclude application of § 112 ¶ 6. Tesla asserts, and Unicorn does not dispute, that the 16 term “unit,” as used here, is a nonce term. Tesla Br. 5. Unicorn contends, however, that the 17 modifier “contact” imparts structural significance into the term and therefore precludes application 18 of § 112 ¶ 6. Unicorn Br. 10. For support, Unicorn cites the Federal Circuit’s decision in 19 Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996). Unicorn Br. 11; 20 Unicorn Reply 4-5. 21 In Greenberg, the court determined that the phrase “cooperating detent mechanism 22 defining the conjoint rotation of said shafts in predetermined intervals” did not invoke § 112 ¶ 6. 23 91 F.3d at 1584. The court disagreed with the district court’s conclusion that the term “detent 24 mechanism” was equivalent to the phrase “means for.” Id. at 1583. Noting that “[m]any devices 25 take their names from the functions they perform,” the court explained that the fact that “detent 26 mechanism” is defined in functional terms is not sufficient to bring the term within the ambit of § 27 112 ¶ 6. Id. The court determined, based on dictionary definitions, that “the noun ‘detent’ denotes 28 a type of device with a generally understood meaning in the mechanical arts, even though the 13 United States District Court Northern District of California Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 14 of 42 1 definitions are expressed in functional terms.” Id. The court concluded that “[w]hat is important 2 is not simply that a ‘detent’ or ‘detent mechanism’ is defined in terms of what it does, but that the 3 term, as the name for structure, has a reasonably well understood meaning in the art.” Id. 4 The Court finds that, like the term “detent” in Greenberg, the term “contact” imparts 5 sufficient structure into the disputed phrase to preclude application of § 112 ¶ 6. Unicorn’s expert, 6 Mr. Dillard, opines that, in the electronic arts, the term “contact” refers to structures providing an 7 electrical path for the flow of current. Dillard Decl. ¶ 89. For support, he cites the Dictionary of 8 Science & Technology, which defines the noun “contact” as “ELEC[:] a section of a switch or 9 connector that provides an electrical path when it touches another conductor.” Dillard Decl. ¶ 89 10 & Ex. D, at 141. He contends these definitions for “contact” support his opinion that “‘contact 11 unit,’ as it appears in claims 1 and 27 of the ’869 patent, is disclosed with sufficient structural 12 properties so that a POSITA would readily understand the structure from that description, 13 including specifically that is a ‘electrical contact(s) for electrically connecting a further energy 14 storing component.’” Id. ¶ 89. Tesla’s expert, Dr. Rahn, never responds to Mr. Dillard’s assertion 15 that “contact” has a known meaning in the electronic arts or opines as to why that meaning would 16 not apply here. His only analysis of the word “contact” by itself is one sentence stating that “[t]he 17 modifier ‘contact’ within the phrase fails to connote any particular structure and instead merely 18 describes the function of ‘contacting’ to be performed by the unit.” Rahn Decl. ¶ 54. This 19 unsupported conclusion fails to rebut Mr. Dillard’s showing, which is at least supported by a 20 dictionary definition.1 21 22 23 24 25 26 27 28 Unicorn also relies on Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342 (Fed. Cir. 2020). Unicorn Br. 11. The Court finds that case less applicable than Greenberg. In Samsung, the Court rejected the PTAB’s determination that “digital processing unit” invoked § 112 ¶ 6. Samsung, 948 F.3d at 1353-54. The Court held § 112 ¶ 6 did not apply to the term because (1) the PTAB found that, in the context of another claim, “digital processing unit” was a stand-in for general purpose computer or central processing unit, each of which would be understood to reference structure; (2) the claim required the “digital processing unit” to be operably connected to a data entry device; and (3) there was a presumption that § 112 ¶ 6 does not apply because the term does not use the phrase “means for.” Id. at 1354. Although the disputed term here, like the disputed term in Samsung, includes the word “unit,” the terms otherwise have little in common. Neither party contends that “contact unit” is a stand in for another known structure. Rather, the parties dispute whether the term “contact” itself connotes structure. Furthermore, neither party relies on the context of the claims to argue that the “contact unit” is connected to other structural components. 14 1 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 15 of 42 1 2 the specification states that a contact unit can be structured in the form of a plug or socket, which 3 Unicorn contends are “well-known electrical contacts”; and “the contact units described in the 4 specification include conventional elements of an electrical contact, such as spring pins and rings 5 that electrically connect and are contained in an insulated housing.” Unicorn Br. 11. Tesla 6 responds that Unicorn’s arguments based on the specification do not establish that “contact unit” 7 is structural because Unicorn identifies only the “teachings of lower level known structures.” 8 Tesla Resp. 6. 9 United States District Court Northern District of California Unicorn argues that the specification further shows that “contact unit” is structural because The Court agrees with Unicorn that the specification disclosures further support the 10 conclusion that a person of skill in the art would find “contact unit” to connote structure. See 11 Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1296 (Fed. Cir. 2014) (stating that when determining 12 whether a claim limitation is subject to §112 ¶ 6 “[w]e must construe the claim limitation to decide 13 if it connotes ‘sufficiently definite structure’ to a person of ordinary skill in the art, which requires 14 us to consider the specification.”), overruled on other grounds by Williamson, 792 F.3d 1339. The 15 specification discloses that contact units may be “designed in the form of a plug and . . . a socket.” 16 ’869 Patent, at 11:1-5. Unicorn’s expert opines, and Tesla’s expert does not dispute, that based on 17 these disclosures, “a POSITA would understand that a ‘contact unit’ is described in the ’869 18 patent with reference to examples of sockets and plugs,” which “are all generally understood by a 19 POSITA to be ‘electric contacts.’” Dillard Decl. ¶ 90. The specification further discloses that a 20 contact unit may have “a coaxial form with three contacts,” ’869 Patent 10:1-2, or may have “at 21 least three spring contacts,” id. 16:2. These disclosures all refer to structural components and 22 therefore suggest that the term “contact unit” would have connoted structure to a person of skill in 23 the art at the time of invention. 24 Tesla cites Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291 (Fed. Cir. 2018), 25 and Nichia Corp. v. VIZIO, Inc., No. 8:16-CV-00545-SJO-MRW, 2019 WL 7281927 (C.D. Cal. 26 Apr. 16, 2019), for the proposition that the word “unit” is a nonce term. Tesla Resp. 6. As noted 27 above, the parties appear to agree that “unit” is a nonce term. The Court nevertheless finds it 28 useful to distinguish these cases as they are examples of cases in which a phrase containing the 15 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 16 of 42 1 United States District Court Northern District of California 2 word “unit” was held to invoke § 112 ¶ 6. In Diebold, the disputed phrase was “cheque standby unit.” 899 F.3d at 1297. In holding 3 that the phrase invoked § 112 ¶ 6, the Court noted that “the specification does not include any 4 examples of what structures or class of structures fall within the definition of a ‘cheque standby 5 unit.’” Id. at 1298. The Court also distinguished Greenberg by noting that there was no evidence 6 “in the form of dictionary definitions or otherwise” that a “cheque standby unit” was reasonably 7 well understood by persons of ordinary skill in the art to refer to structure or a class of structures. 8 Id. at 1302. But here, as noted above, the specification provides examples of structures that could 9 form the claimed “contact unit.” See ’869 Patent, at 11:1-5 (explaining that contact units may be 10 “designed in the form of a plug and . . . a socket.”). And Unicorn has provided the Court evidence 11 in the form of dictionary definitions to support the contention that the disputed term would have 12 been understood by persons of skill in the art to connote structure. The Court therefore finds 13 Diebold distinguishable. 14 Nichia is even further afield. The Court first notes that the Nichia court later vacated the 15 claim construction order Tesla cites. See Nichia Corp. v. VIZIO, Inc., No. 8:16-CV-00545-SJO- 16 MRW, 2019 WL 7281927, at *1 (C.D. Cal. Apr. 16, 2019). Moreover, in Nichia, the parties 17 agreed that the disputed phrase invoked § 112 ¶ 6. 2019 WL 196664, at *5. Thus, the court was 18 not presented with the issue of determining whether § 112 ¶ 6 applied. 19 In sum, the Court finds that both the intrinsic and extrinsic evidence support the conclusion 20 that the term “contact unit” would connote structure to a person of skill in the art. Tesla therefore 21 fails to overcome the presumption that the phrase “contact unit for contacting a further energy 22 storing component” does not invoke § 112 ¶ 6. 23 The Court notes that this conclusion is not at odds with the Federal Circuit’s holding in 24 Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). In Williamson, the Federal 25 Circuit held that a limitation with the introductory phrase “distributed learning control module” 26 was not subject to § 112 ¶ 6. 792 F.3d at 1350-51. The court determined that the term “module” 27 is a nonce word and that the prefix “distributed learning control” did not impart structure into the 28 term. Id. at 1350-51. In reaching this conclusion, the court stated that it found nothing in the 16 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 17 of 42 1 intrinsic record that might lead it to construe “distributed learning control” as the name of a 2 sufficiently definite structure as to take the overall claim limitation out of the ambit of § 112 ¶ 6. 3 Id. at 1351. The Court also found unpersuasive an expert’s testimony that he would program a 4 computer to perform the recited functions because the fact that one of skill in the art could 5 program a computer in this manner cannot create structure where none is otherwise disclosed. Id. 6 at 1351. Here, as described above, the Court has found support in the patent specification for the 7 conclusion that person of skill in the art would understand the term “contact” to connote structure. 8 And unlike the expert testimony in Williamson, which sought to impart structure into a term where 9 there was none, the expert testimony here, supported by dictionary definitions, establishes that the 10 United States District Court Northern District of California 11 12 term at issue would have connoted structure to a person of skill in the art. iii. Construction of the Disputed Phrase Having found that the phrase does not invoke § 112 ¶ 6, the Court now determines its 13 construction. Unicorn proposes that the phrase should be construed as “electrical contact(s) for 14 electrically connecting a further energy storing component.” Unicorn’s proposed construction 15 replaces the claim language “contact unit for contacting” with “electrical contact(s) for electrically 16 connecting” but otherwise leaves the claim language intact. Tesla does not offer a proposed 17 construction as an alternative to its proposal under § 112 ¶ 6. 18 Unicorn’s proposal is supported by the intrinsic evidence. V-Formation, Inc. v. Benetton 19 Group SpA, 401 F.3d 1307, 1310–11 (Fed. Cir. 2005) (“The intrinsic record in a patent case is the 20 primary tool to supply the context for interpretation of disputed claim terms.”) The ’869 Patent 21 claims state that each contact unit has “a transport interface for transporting . . . electrical energy.” 22 ’869 Patent cls. 1, 27. Likewise, the specification states each of the contact units has a transport 23 interface “which provides an interface for transmitting the network medium,” which the Court 24 determined above to be electrical energy. See ’869 Patent, 14:51-54. Furthermore, the patent 25 specification discloses that a contact unit may be designed as a “plug” or “socket,” see id. at 26 17:38-39, 17:52-53, which according to Mr. Dillard, are “recognized in the art as ‘electrical 27 contacts,’” Dillard Decl. ¶ 88. Each of these disclosures supports Unicorn’s proposal that a 28 “contact unit for contacting . . . ” should be construed as “electrical contact for electrically 17 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 18 of 42 1 2 Unicorn’s proposal is further supported by the extrinsic evidence. Phillips, 415 F.3d at 3 1317 (“Although we have emphasized the importance of intrinsic evidence in claim construction, 4 we have also authorized district courts to rely on extrinsic evidence, which ‘consists of all 5 evidence external to the patent and prosecution history, including expert and inventor testimony, 6 dictionaries, and learned treatises.’”) As noted above, Mr. Dillard explained that a person of skill 7 in the art would understand “contact unit” to mean “electrical contact.” Dillard Decl. ¶¶ 84-88. 8 Mr. Dillard supported his assertion by citing a technical dictionary that defines “contact” as “a 9 section of a switch or connector that provides an electrical path when it touches another 10 conductor.” Id. ¶ 89. This evidence further supports Unicorn’s proposed construction. 11 United States District Court Northern District of California connecting . . . .” Tesla argues that Unicorn’s proposal cannot be correct because it reads out preferred 12 embodiments. See Tesla Resp. 9. Tesla is right that “[a] claim construction that excludes a 13 preferred embodiment . . . is rarely, if ever correct and would require highly persuasive evidentiary 14 support.” See Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014)). But 15 Tesla is wrong the Unicorn’s proposed construction does so. Contrary to Tesla’s contention, 16 Unicorn’s proposed construction does not read out the embodiment in which contact units are 17 connected by permanent magnets. See Tesla Resp. 9 (citing ’869 Patent, at 9:38-50). Unicorn’s 18 proposed construction requires that the contact units are electrically connected but places no other limit 19 on how the contact units are connected. Thus, under Unicorn’s proposed construction, the contact 20 units may be connected by permanent magnets or other means, so long as the contact units are also 21 electrically connected. Unicorn Reply 6. 22 Tesla also suggests that Unicorn’s proposed construction reads out the embodiment claimed in 23 dependent claim 17. Tesla notes that claim 1 requires that the “contact unit has a communication 24 interface” and claim 17, which depends from claim 1, requires that “the communication interface is a 25 wireless communication interface.” But again, Unicorn’s proposal allows for the embodiment Tesla 26 identifies. This embodiment exists under Unicorn’s proposal where, for example, contact units are 27 electrically connected to transport electrical energy through their transport interface and wirelessly 28 communicate information through their communication interface. 18 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 19 of 42 1 2 for contacting a further energy storing component” as “electrical contact(s) for electrically 3 connecting a further energy storing component.” 4 5 6 7 8 9 10 11 United States District Court Northern District of California Accordingly, the Court adopts Unicorn’s proposed construction and construes “contact unit 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4. “gateway for coupling the at least one contact unit with the energy store” (asserted claims 1 and 27) Unicorn’s Proposal “coupler that serves as a connection between the at least one contact unit and the energy store” Alternatively, if the Court applies 35 U.S.C. § 112 ¶ 6: Tesla’s Proposal Subject to 35 U.S.C. § 112 ¶ 6 Court’s Construction “coupler that serves as a connection between the at least Function: “coupling the at least one contact unit and the energy store” one contact unit with the energy store.” Structure: “coupling unit 18 Function: “coupling to establish shown and described in Figures an energy transfer path 1 and 9.” between” Structure: “coupling unit/coupler that establishes an energy transfer path between the contact unit and the energy store, including a DC/DC converter (79) and optionally including a controlling device (26), and equivalents thereof,” as depicted and described at: Figs. 1, 9, 10 (and related portions of the specification), 6:66-67, 13:64-67, 14:23-38, 17:67-18:3. The disputed phrase appears in claims 1 and 27. Those claims disclose that an energy storing component includes “at least one gateway for coupling the at least one contact unit with the energy store.” ’869 Patent, cls. 1, 27. The parties dispute whether the phrase “gateway for coupling the at least one contact unit with the energy store” is a means-plus-function limitation subject to interpretation under 35 U.S.C. § 112 ¶ 6. The parties also dispute the proper construction of the phrase regardless of whether the Court applies § 112 ¶ 6. i. Whether the Disputed Phrase is Subject to § 112 ¶ 6. First addressing whether the disputed phrase “gateway for coupling the at least one contact unit with the energy store” is subject § 112 ¶ 6, the Court notes that the claim phrase does not use 19 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 20 of 42 1 the word “means.” Thus, the Court presumes that it is not subject to § 112 ¶ 6. See Williamson, 2 792 F.3d at 1348.2 A party may overcome this presumption, however, by showing that the claim 3 term fails to recite sufficiently definite structure or else recites function without reciting sufficient 4 structure for performing that function. Id. The parties focus their dispute on whether a person of skill in the art would have United States District Court Northern District of California 5 6 understood the term “gateway” to connote sufficiently definite structure. See Unicorn Br. 12-13; 7 Tesla Resp. 10-11; Unicorn Reply 6-7. Unicorn contends that Tesla cannot overcome the 8 presumption that § 112 ¶ 6 does not apply because (1) the Federal Circuit has construed the term 9 “gateway” without invoking means-plus-function treatment; and (2) the patentee equated 10 “gateway” with the term “coupling unit” which is a “well-known class of circuit structures.” 11 Unicorn Br. 12-13. Tesla contends that the phrase is subject to § 112 ¶ 6 because a person of skill 12 in the art would not have understood the term “gateway” to have sufficiently definite meaning as 13 the name for structure. Tesla Resp. 10. Tesla agrees with Unicorn that the patentee equated the 14 term “gateway” with the term “coupling unit” but contends that “coupling unit” is “an even more 15 generic descriptor.” Id. For the reasons stated below, the Court finds that the term is not subject 16 to § 112 ¶ 6. 17 The Court first addresses Unicorn’s argument that the term “gateway” conveys structure 18 because the Federal Circuit previously construed the term in Starhome GmbH v. AT&T Mobility 19 LLC, 743 F.3d 849, 854 (Fed. Cir. 2014), “without invoking means-plus-function treatment.” See 20 Unicorn Br. 12. The Court finds this argument unpersuasive for two reasons. First, the Federal 21 Circuit has cautioned that “[a] particular term used in one patent need not have the same meaning 22 when used in an entirely separate patent, particularly one involving different technology.” 23 Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1318 (Fed. Cir. 2005). Here, Unicorn notes 24 that the Starhome court “found that the word ‘gateway’ had a well-known technical meaning in 25 the telecommunications industry.” Unicorn Br. 12. But Unicorn’s own expert describes the 26 27 28 2 The Court summarized the legal standard for determining whether a term should be construed under § 112 ¶ 6 above in the section construing the phrase “contact unit for contacting a further energy storing component.” 20 United States District Court Northern District of California Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 21 of 42 1 relevant field of technology of the ’869 patent as “electric energy storage,” not 2 telecommunications. See Dillard Decl. ¶ 32. Second, even if the patent at issue in Starhome 3 concerned the same technology and used “gateway” in a similar way as the ’869 Patent, the court 4 was not presented with the issue of whether the term was subject to § 112 ¶ 6. The Federal 5 Circuit’s analysis in Starhome is therefore not relevant to whether “gateway” would connote 6 structure in the context of the ’869 Patent. 7 The Court next considers Unicorn’s argument that a person of skill in the art would 8 understand the term “gateway” to connote sufficiently definite structure because the patent equates 9 the term with “coupling unit”—a term that a person of skill in the art would understand to connote 10 sufficiently definite structure. The Court finds that Unicorn is on firmer ground with this 11 argument. 12 The parties agree that the patent equates the term “gateway” with the term “coupling unit.” 13 Compare Unicorn Br. 12, with Tesla Resp. 10; see also Hrg. Transcript 31:3-6, 39:8-13. But they 14 disagree about whether a person of skill in the art would understand the term “coupling unit” to 15 connote sufficiently definite structure. Unicorn argues that a person of skill in the art would 16 understand “coupling unit” as used in the ’869 Patent to refer to a known class of circuit 17 structures. Unicorn Br. 12. Tesla argues that “coupling unit” is a “generic descriptor” for the 18 function it accomplishes. Tesla Resp. 10. The Court finds Unicorn’s argument persuasive. Unicorn’s expert Mr. Dillard opines that 19 20 “[i]n the field of electrical energy storage, and electronics generally, ‘coupling’ refers to 21 transferring energy by means of [various] well-known structures such as wires (at the simplest), 22 capacitors, inductors, transformers, converters, or combinations of such.”3 Mr. Dillard supports 23 his opinion by citing two dictionary definitions for the term “coupling”: (1) “[a] mutual relation 24 between two circuits that permits energy transfer from one to another, through a wire, resistor, 25 26 27 28 According to Tesla, Unicorn served Mr. Dillard’s declaration on the deadline set by Patent L.R. 4-3 and then untimely filed a new version with its opening brief. Tesla Resp. 13. Tesla asks the Court to disregard “new opinions” offered the untimely declaration. Id. Relevant here, Tesla objects that Mr. Dillard changed the phrase “various well-known structures” in his original declaration to “a class of well-known structures” in the new declaration. See id. & Ex. D, at ¶ 96. The Court uses the term “various” from the Mr. Dillard’s original declaration but finds the change immaterial. 21 3 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 22 of 42 1 transformer, capacitor, or other device,” Dillard Decl. Ex. E (McGraw-Hill Dictionary of 2 Scientific and Technical Terms (6th ed. 2003)), ECF No. 135-6; and (2) “the act or process of 3 linking two or more circuits so that power can be transferred between them usually by mutual 4 induction, as in a transformer, or by means of a capacitor or inductor common to both circuits,” 5 Dillard Decl. Ex. F (Collins Dictionary (10th ed. 2009)), ECF No. 135-7. Mr. Dillard’s statements 6 and citations to technical dictionaries provide persuasive evidence in support of Unicorn’s 7 contention that a person of skill in the art would understand “coupling unit” to connote a 8 sufficiently meaning as the name for structure. United States District Court Northern District of California 9 Tesla’s response does not overcome the presumption that § 112 ¶ 6 does not apply. Tesla 10 asserts that coupling unit is a “generic descriptor,” but it never grapples with the definitions 11 Unicorn provided showing that the term “coupling” connotes structure. Tesla therefore does not 12 rebut Unicorn’s showing that “coupling unit” would connote a sufficiently definite structure to a 13 person of skill in the art, much less satisfy its affirmative burden of showing that the term would 14 not connote sufficiently definite structure to a person of skill in the art. See Apex Inc. v. Raritan 15 Computer, Inc., 325 F.3d 1364, 1372 (Fed. Cir. 2003) (noting that the party seeking to overcome 16 the presumption that § 112 ¶ 6 does or does not apply must do so by a preponderance of the 17 evidence). Because Tesla has agreed that the patent equates “gateway” and “coupling unit,” the 18 Court finds that the Tesla has not overcome the presumption that the phrase “gateway for coupling 19 the at least one contact unit with the energy store” is not subject to § 112, ¶ 6. 20 21 ii. Construction of the Disputed Phrase Having found that the phrase does not invoke § 112 ¶ 6, the Court now determines its 22 construction. Unicorn contends that the phrase should be construed as “coupler that serves as a 23 connection between the at least one contact unit and the energy store.” Unicorn’s proposed 24 construction replaces the words “gateway for coupling” with “coupler that serves as a connection 25 between” but otherwise leaves the words of the claims intact. Tesla argues that Unicorn’s proposed 26 construction is unsupported because Unicorn’s proposed construction replaces “gateway” with another 27 nonce word “coupler.” Tesla Resp. 12. Tesla also objects that Unicorn’s expert failed to support his 28 assertion that a “gateway” or “coupling unit” is the equivalent of a “coupler.” Id. at 13. 22 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 23 of 42 1 2 above, the parties agreed that the patent uses the terms “gateway” and “coupling units” as equivalents. 3 Mr. Dillard explained in his declaration that “[a]s used in the ’869 patent ‘gateway’ / ‘coupling unit’ 4 simply refers to these sorts of coupling structures, often referred to simply as a ‘coupler.’” See Dillard 5 Decl. ¶ 96. While Tesla’s expert disputed Unicorn’s proposed construction, he did not appear to have 6 any difficulty understanding the word “coupler.” See Rahn Decl. ¶ 100. 7 8 9 10 11 United States District Court Northern District of California The Court finds that Unicorn’s construction is supported and would help the jury. As noted 12 13 14 15 16 Accordingly, the Court construes the disputed phrase as “coupler that serves as a connection between the at least one contact unit and the energy store.” 5. “configured to cooperate with the communication interface such that the [respective] energy storing component is [separated from the network medium / switched on]” (asserted claims 1 and 26-28) Unicorn’s Proposal Tesla’s Proposal “configured to cooperate with Indefinite the communication interface” means “configured to exchange information with the communication interface” No construction is necessary for the remainder of the claim term. 17 18 19 20 21 Court’s Construction “configured to exchange information with the communication interface such that [the energy storing component is separated from the network medium / the energy storing component is switched on / the respective energy storing component is separated from the network medium]” Although the parties list three variations of the disputed phrase, the parties’ key dispute centers on a portion of the phrase that is consistent across all three variations: “configured to cooperate with the communication interface.” Unicorn argues that this phrase means “configured to exchange information with the communication interface.” Unicorn Br. 14. Tesla contends that 22 the phrase is indefinite. Tesla Resp. 13-16. The Court first addresses whether the term is 23 indefinite and then construes the term, if necessary. 24 25 26 27 i. Whether the Disputed Phrase is Indefinite Tesla argues that the phrase “configured to cooperate with the communication interface” is indefinite for two reasons: (1) the phrase purports to recite a relationship between two separate components, but the claim is referring a relationship of a component with itself; and (2) a person 28 23 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 24 of 42 1 of skill in the art would not be able to determine with reasonable certainty what it means for the 2 two components to cooperate. Tesla Resp. 14. The Court addresses each point in turn. 3 4 when read in light of the specification and prosecution history, those skilled in the art about the 5 scope of the invention. Nautilus, 572 U.S. at 901. Invalidity must be established by clear and 6 convincing evidence. See Nature Simulation Sys., 50 F.4th at 1361. 7 United States District Court Northern District of California A patent claim is invalid for indefiniteness if it fails to inform, “with reasonable certainty,” Tesla’s first argument is that the phrase is indefinite because, when read in the context of 8 the claims, it requires that the energy storing component is configured to cooperate with the 9 communication interface. Id. According to Tesla, this requirement is “illogical” because the 10 communication interface is part of the contact unit, which is a component of the energy storing 11 component, and therefore the claims require the energy storing component to communicate with 12 itself. Id. But Tesla concedes that the energy storing component has multiple subcomponents. 13 See Tesla Resp. 4 (“Tesla’s construction [of energy storing component] allows for an energy 14 storing component to be a multicomponent device.”). The communication interface is one of 15 those subcomponents. Thus, it is not “illogical” that a subcomponent of the device—the 16 communication interface—would be configured to cooperate with the remainder of the device, 17 including its other components. 18 The ’869 Patent confirms as much. According to the specification, supply network 19 components may exchange technical data and physical parameters with each other through their 20 communication interfaces. ’869 Patent 9:8-11. Supply network components designed as energy 21 stores may be configured to supply energy only if “a release is given via the communication 22 interface” for example after “identification of compatibility and compliance with . . . physical 23 limits.” Id. 8:55-57. Depending on this release, “each supply network component is individually 24 turned on or off.” Id. 8:59-60. Likewise, “[e]ach supply network component can . . . 25 autonomously interrupt the current flow through at least one switch,” for example, by using the at 26 least one switch to separate the supply network component’s functional group from the network 27 medium. Id. 8:48-54. In this way, “[e]ach supply network component can . . . take responsibility 28 for safe connection to the supply network by means of the communication interface and by 24 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 25 of 42 1 monitoring compatibility with the supply network.” Id. 8:61-64. The patent specification 2 therefore discloses that a supply network component (e.g., an energy storing component) may 3 cooperate with its communication interface by exchanging information with the communication 4 interface and using that information to determine whether to separate its functional group (e.g., an 5 energy store) from the network medium. United States District Court Northern District of California 6 At the hearing, Tesla addressed these disclosures. Tesla noted that the claims require that 7 “the energy storing component is separated from the network medium.” See Hrg. Transcript 8 64:10-12. Tesla further noted that a different claim element, consistent with the disclosures above, 9 requires that the switch separates the functional group (e.g., or energy store) from the network 10 medium. Id. at 64:8-9. Tesla argues that the only component that can separate the energy storing 11 component from the network medium is the transport interface in the contact unit. Id. at 64:16-20. 12 Tesla’s argument misses the mark for two reasons. First, it is beside the point. The 13 specification disclosures cited above show how the energy storing component cooperates with the 14 communication interface: it exchanges information with it. It then uses that information to control 15 its other subcomponents. Tesla’s argument that only the transport interface can separate the 16 energy storing component from the network medium does not undermine the fact that the energy 17 storing component may cooperate with the communication interface by exchanging information; it 18 suggests that the subcomponent that gets controlled as a result of the exchanged information is the 19 transport interface. Controlling the transport interface in response to information obtained from 20 the communication interface is consistent with the specification. The specification states that the 21 communication interface exchanges physical parameters, like temperature, and further notes that, 22 based on physical parameters, like temperature, the “transmission of the network medium via the 23 transport interface can . . . be interrupted.” ’869 Patent 9:8-11, 9:27-31. 24 Second, using the switch to separate the energy store from the network medium is not 25 inconsistent with separating the energy storing component from the network medium. The patent 26 specification describes a “refinement of the supply network component” in which “the controlling 27 device is designed in such a way that it separates the functional group from the network medium 28 in the event of a failure of the communication interface.” Id. 12:1-5. The specification states that 25 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 26 of 42 1 “[d]efective or unsuitable supply network components are thus simply disconnected from the 2 supply network.” Id. 12:6-7. The patent thus describes an embodiment in which it equates 3 separating the functional group from the network medium and disconnecting a supply network 4 component (e.g., an energy storing component) from the supply network, which would separate 5 the supply network component itself from the network medium. United States District Court Northern District of California 6 Tesla next argues that the phrase is indefinite because a person of skill in the art would not 7 understand with reasonable certainty what it means for energy storing component and 8 communication interface to “cooperate.” Tesla Resp. 14. Again, the Court disagrees. As noted 9 above, the patent specification explains what it means for the energy storing component and the 10 communication interface to cooperate. The patent specification discloses that an energy storing 11 component may cooperate with its communication interface by exchanging information with the 12 communication interface and using that information to determine whether to separate its energy 13 store from the network medium. ’869 Patent 8:48-11. 14 To support its two primary arguments, Tesla contends that the patent specification “further 15 confuses the issue.” Tesla Resp. 15. According to Tesla, “[t]he ‘communication interface’ is not 16 used to communicate the network medium, and thus, cannot result in separating the network 17 medium from the energy storing component.” Id. But the claims do not require that the 18 communication interface itself “separate[s] the network medium from the energy storing 19 component.” In fact, the claims avoid stating which component separates the network medium 20 from the energy storing component through their use of the passive voice. See, e.g., ’869 Patent, 21 cl. 1 (stating that the “the energy storing component [is] configured to cooperate with the 22 communication interface such that the energy storing component is separated from the network 23 medium”). Tesla’s argument is therefore flawed because it would require a limitation that the 24 claims do not. 25 26 27 28 Accordingly, the Court finds that Tesla has not shown that the disputed phrase is indefinite by clear and convincing evidence. ii. Construction of the Disputed Phrase As noted above, the parties dispute centers on the phrase “configured to cooperate with the 26 United States District Court Northern District of California Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 27 of 42 1 communication interface.” Unicorn contends that the phrase should be construed to mean 2 “configured to exchange information with the communication interface.” Tesla does not propose a 3 construction but contends that Unicorn’s construction is incorrect and indefinite. 4 The Court finds that Unicorn’s construction is supported by the intrinsic record. Unicorn’s 5 construction proposes to replace the word “cooperate” with “exchange information” but otherwise 6 leaves the words of the claims intact. The specification explains that supply network components 7 exchange information including technical data and physical parameters with each other through 8 the communication interface. ’869 Patent 9:8-11. The patent further explains that “[e]ach supply 9 network component designed as an energy store will only supply energy if a release is given via 10 the communication interface.” Id. 8:55-57. As a result, “[e]ach supply network component can 11 thus take responsibility for safe connection to the supply network by means of the communication 12 interface and by monitoring compatibility with the supply network present.” ’869 Patent at 8:55- 13 64. 14 The Court finds unconvincing Tesla’s argument that Unicorn’s proposed construction 15 cannot be right because it results in different claim terms having the same meaning. Tesla argues 16 that “exchange information” is synonymous with “communicate,” therefore, construing 17 “cooperate” to mean “exchange information” would result in two different claim terms— 18 “cooperate” and “communicat[e]”—having the same meaning. Tesla is right that claim terms are 19 generally presumed to have different meanings. See, e.g., Augme Techs., Inc. v. Yahoo! Inc., 755 20 F.3d 1326, 1333 (Fed. Cir. 2014). “That inference, however, is not conclusive; it is not unknown 21 for different words to be used to express similar concepts, even though it may be poor drafting 22 practice.” Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004). 23 The Court finds that where, as here, the meaning of a term to be construed is clear from the 24 intrinsic record, that meaning will not be disturbed by the canon that terms are generally construed 25 to have different meanings. See Diamond Coating Techs., LLC v. Hyundai Motor Am., No. 8:13- 26 CV-01480-MRP, 2014 WL 5698445, at *8-9 (C.D. Cal. Aug. 25, 2014). 27 28 Accordingly the court construes “configured to cooperate with the communication interface such that [the energy storing component is separated from the network medium / the 27 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 28 of 42 1 energy storing component is switched on / the respective energy storing component is separated 2 from the network medium]” as “configured to exchange information with the communication 3 interface such that [the energy storing component is separated from the network medium / the 4 energy storing component is switched on / the respective energy storing component is separated 5 from the network medium].” 6 7 8 9 10 United States District Court Northern District of California 11 6. “autonomous identification of [incompatibility / compatibility] of the [respective] energy storing component with the present supply network” (asserted claims 1 and 26-28) Unicorn’s Proposal “self-determined identification of incompatibility [/or compatibility] with the present supply network by the [respective] energy storing component” Tesla’s Proposal Indefinite Court’s Construction “self-determined identification of incompatibility [/or compatibility] with the present supply network by the [respective] energy storing component” 12 The parties dispute whether this phrase is indefinite and, if not, how it should be construed. 13 14 Unicorn argues that the term is not indefinite and that the term “autonomous” means “selfdetermined” in the context of the ’869 Patent. Unicorn Br. 15-18. Tesla argues that the phrase is 15 indefinite because a person of skill in the art would not be able to determine with reasonable 16 certainty what it means for an energy storing component to be compatible or incompatible with 17 supply network. Tesla Resp. 16-17. Tesla argues that Unicorn’s proposed construction is also 18 indefinite because it fails to address this point. Id. 18-19. Tesla also objects to equating 19 autonomous with “self determined” without meaningful discussion. Id. at 18. 20 21 i. Whether the Disputed Phrase is Indefinite The Court begins by determining whether the disputed phrase is indefinite. Tesla appears 22 to rely on two primary arguments to support its contention that the phrase is indefinite: (1) the 23 24 25 specification does not “define what it means for an ‘energy storing component’ to be ‘[in]compatible’ with a ‘supply network,’” and (2) the phrase is “so vague with so many different possible criteria” that it fails to apprise the public of what is still open to them. Id. 18. The Court 26 addresses each argument in turn. 27 The Court notes as the outset that the ’869 Patent’s lack of definition for “compatible” or 28 28 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 29 of 42 1 “incompatible” does not resolve whether the term is indefinite. As the Federal Circuit has 2 explained, “The failure to define [a] term is, of course, not fatal, for if the meaning of the term is 3 fairly inferable from the patent, an express definition is not necessary.” Bancorp Servs., L.L.C. v. 4 Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004); see also Niazi Licensing Corp. v. St. Jude 5 Med. S.C., Inc., 30 F.4th 1339, 1347 (Fed. Cir. 2022) (“[A] patentee need not define his invention 6 with mathematical precision in order to comply with the definiteness requirement.” (citation 7 omitted)). The Court therefore proceeds with its analysis. United States District Court Northern District of California 8 The Court finds unconvincing Tesla’s argument that the phrase is indefinite because it 9 allows for too many different possible criteria for compatibility or incompatibility. “A claim is 10 not indefinite just because it is broad.” Niazi, 30 F.4th at 1347 (citing BASF Corp. v. Johnson 11 Matthey Inc., 875 F.3d 1360, 1367 (Fed. Cir. 2017)). In BASF, the Federal Circuit reversed the 12 district court’s decision finding that the term “effective for catalyzing” was indefinite. 875 F.3d at 13 1362. The Federal Circuit faulted the district court for “not consider[ing] that the specification 14 makes clear that it is the arrangement of the . . . catalysts, rather than the selection of particular 15 catalysts that purportedly renders the inventions . . . a patentable advance over the prior art.” Id. at 16 1367. The Federal Circuit also faulted the district court for failing to address “the significance of 17 the facts that both the claims and specification provide exemplary material compositions that are 18 ‘effective’ to catalyze [the relevant components].” Id. Finally, the Federal Circuit faulted the 19 district court for determining that the claims fail to sufficiently identify the material compositions 20 that are “effective for catalyzing” based on the patent challenger’s expert’s assertion that “a 21 practically limitless number of materials” could perform this function. Id. The court explained 22 that “the inference of indefiniteness simply from the scope finding is legally incorrect: breadth is 23 not indefiniteness.” Id. (quotation marks and citation omitted). 24 Here, as in BASF, the challenged term, when read in light of the intrinsic and extrinsic 25 evidence, informs those skilled in the art about the scope of the invention with reasonable 26 certainty. This is so for at least two reasons. First, as in BASF, the intrinsic record makes clear 27 that the purported patentable advance over prior art is an element of the claims separate from the 28 disputed term. The purported patentable advance is the energy storing component’s 29 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 30 of 42 1 “autonomous” identification of compatibility, not the criteria it uses. This is most apparent from 2 the patent’s prosecution history. During prosecution, the applicant added the requirement that the 3 identification of compatibility be accomplished “autonomous[ly]” to distinguish the claims from 4 the prior art. See Jonas Decl. Ex D, at 2 (“Mar. 2018 OA Resp.”), ECF No. 136-4. The applicant 5 explained: 6 7 8 9 10 United States District Court Northern District of California 11 12 [The prior art] emphasizes a traditional approach using an external circuit that decides whether a certain battery module may be switched on or not. This lacks any insight or recognition of the problems addressed by the arrangement of claim 1. . . . The arrangement of claim 1 provides a check of compatibility that must be completed successfully in order for the supply network component to be connected to the network medium. Moreover, where multiple supply network components are employed, each supply network component may determine its own compatibility (and thus to whether to separate from the network medium depending [on] whether compatibility is established or not) “autonomously.” By virtue of this compatibility check, risk of damage due to incompatibility is effectively minimized or avoided entirely. 13 Id. at 12-13. The applicant thus argued that the autonomous compatibility check was an 14 improvement over the traditional approach of using an external circuit. The absence of discussion 15 about what criteria are evaluated as part of the compatibility check supports the conclusion that a 16 person of skill in the art would have known, with reasonable certainty, the scope of such criteria. 17 Second, as in BASF, the patent specification provides examples of what falls within the 18 scope of the disputed term. The specification states that “after authentication, identification of 19 compatibility and compliance with the physical limits, each supply network component is 20 individually turned on or off.” ’869 Patent, at 8:55-60. The specification provides examples of 21 criteria that the system may evaluate, including voltage, current, and temperature. Id. 8:65-9:3. 22 The specification’s inclusion of this exemplary criteria for determining compatibility further 23 supports Unicorn’s assertion that a person of skill in the art would be able to determine the 24 meaning of the term. See BASF, 875 F.3d at 1367; Niazi, 30 F.4th at 1349 (finding the term 25 “pliable” not indefinite based, in part, on examples in the specification and noting that this was “in 26 line” with other Federal Circuit decisions holding that “examples in the written description helped 27 provide sufficient guidance to render the claims not invalid as indefinite”). 28 Tesla’s expert’s ability to “generate a very long list of different criteria that could be within 30 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 31 of 42 1 the bounds of the phrase” does not undermine the conclusion that the term is not indefinite. The 2 Court in BASF found the term “effective to catalyze” not indefinite despite an expert’s assertion 3 that “a practically limitless number of materials” could serve as the claimed catalyst. BASF, 875 4 F.3d at 1366-67. Additionally, Unicorn’s expert stated in his declaration, citing a technical 5 dictionary defining the term “compatibility,” that “compatibility . . . has meaning to those in the 6 electrical energy storage art.” Dillard Decl. ¶ 129. 7 8 9 United States District Court Northern District of California 10 Accordingly, the Court finds that Tesla has not shown that the disputed phrase is indefinite by clear and convincing evidence. ii. Construction of the Disputed Phrase Having determined that the phrase is not indefinite, the Court construes the phrase. 11 Unicorn proposes that the phrase should be construed as “self-determined identification of 12 incompatibility [/or compatibility] with the present supply network by the [respective] energy storing 13 component.” Unicorn’s proposal replaces the word “autonomous” with “self-determined” but 14 otherwise only rearranges the words of the claim. Tesla argues that the proposal is indefinite for the 15 same reasons the original claim language was indefinite but offers no proposed construction or other 16 argument against Unicorn’s proposal. 17 The Court adopts Unicorn’s proposal because it is well supported and will help the jury. The 18 specification explains that a supply network component may “comprise[] at least one switch for 19 separating a functional group from the network medium.” ’869 Patent, at 8:48-51. Through this at 20 least one switch, “[e]ach supply network component can thus autonomously interrupt current flow . . . 21 in one or both directions.” ’869 Patent, at 8:52-54. The specification explains that “[e]ach supply 22 network component . . . will only supply energy if a release is given via the communication interface.” 23 Id. 8:55-57. In this way, “[e]ach supply network component can . . . take responsibility for safe 24 connection to the supply network by means of the communication interface and by monitoring 25 compatibility with the supply network present.” Id. 8:55-64. The patent thus discloses that a supply 26 network component (e.g., an energy storing component) may monitor compatibility with the supply 27 network and determine for itself (i.e., self-determine) whether it is safe to connect to the supply 28 network. And the patent equates this self-determination with autonomous interruption of current flow 31 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 32 of 42 1 from the energy storing component. See id. at 8:52-54. The specification therefore supports Unicorn’s 2 proposal to construe “autonomous” as “self-determined.” 3 4 the applicant added the requirement that the identification of compatibility be accomplished 5 “autonomous[ly]” to distinguish the claims from the prior art. See Mar. 2018 OA Resp., at 2. In 6 explaining the purported benefits of the invention, the patentee aligned a supply network 7 component’s self-determination of compatibility with an autonomous determination of 8 compatibility. See id. at 12 (“each supply network component may determine its own 9 compatibility . . . ‘autonomously.’”). These disclosures further support Unicorn’s proposal to 10 11 United States District Court Northern District of California The prosecution history supports this understanding. As explained above, during prosecution, construe “autonomous” as “self-determined.” In light of the foregoing, the Court adopts Unicorn’s proposed construction. The Court 12 therefore construes “autonomous identification of [incompatibility / compatibility] of the 13 [respective] energy storing component with the present supply network” as “self-determined 14 identification of incompatibility [/or compatibility] with the present supply network by the [respective] 15 energy storing component.” 16 17 18 19 20 21 22 23 24 25 26 27 28 7. “switch for separating [the/its respective] energy store from the network medium” (asserted claims 1 and 27) Unicorn’s Proposal “device that can electrically connect or isolate [the/its respective] energy store from the network medium” Tesla’s Proposal “a device that is used to open or close an electric circuit, without the use of a direct current converter, for separating [the/its respective] energy store from the network medium” Court’s Construction “device that can electrically connect or isolate [the/its respective] energy store from the network medium” The parties dispute the meaning of the phrase “switch for separating [the/its respective] energy store from the network medium.” Both parties contend that their proposed construction captures the ordinary meaning of the phrase as it would have been understood by a person of skill in the art at the time of invention. The parties’ primary disagreement is whether, in the context of the asserted patent, the claimed “switch” may be implemented as a direct current converter. The Court will therefore first address this point and then further construe the term as necessary. 32 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 33 of 42 1 2 implemented as a direct current converter. Unicorn argues that it can because (1) the plain 3 meaning of switch at the time of invention included direct current converter, and the patentee did 4 not disavow this meaning; and (2) excluding a direct current converter as a type of switch would 5 exclude preferred embodiments disclosed in the patent. Unicorn Br. 18-21. Tesla argues that, in 6 the context of the ’869 Patent, a switch cannot include a direct current converter because (1) the 7 ’869 Patent distinguishes between the two; and (2) claim differentiation requires that a switch and 8 direct current converter be treated as two different components. Tesla Resp. 19-22. 9 United States District Court Northern District of California As noted above, the parties disagree about whether the claimed “switch” may be The Court starts by examining the specification. See Phillips, 415 F.3d at 1315 (“The 10 specification is . . . the primary basis for construing the claims”). The parties’ arguments center on 11 the following passage: 12 15 [i]nstead of a switch, it is possible to provide a direct current converter (DC/DC converter) in the supply network component, which converter enables both a voltage increase and a decrease between the functional units and a system voltage at the at least one contact unit for this purpose, in a manner similar to a laboratory power supply unit, an adjustable voltage and current limit for both current directions.” 16 ’869 Patent, at 8:6-14. Tesla argues that this passage shows that “a ‘switch’ is . . . different than a 17 ‘direct current converter.’” Tesla Resp. 19-20. Unicorn argues that the passage “highlights the 18 additional functionality provided by a [direct current] converter beyond a simple switch” but does 19 not undermine that a direct current converter could be a switch. Unicorn Br. 12. The Court agrees 20 with Unicorn that this language does not preclude a direct current converter from being a switch. 21 By stating that a direct current converter could be used “[i]nstead of a switch,” the passage 22 suggests that the terms “switch” and “direct current converter” are not coextensive. But it does 23 not establish that a direct current converter could not function as a switch. 13 14 24 Tesla argued at the hearing that the embodiments of energy storing components shown in 25 Figures 9 and 10 support its contention that, in the context of the ’869 Patent, a direct current 26 converter cannot be a switch. Regarding Figure 9, Tesla noted that the figure depicts an energy 27 storing component with a direct current converter and that the specification explains that the 28 energy storing component has a switch. Regarding Figure 10, Tesla argued that the figure shows 33 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 34 of 42 1 an energy storing component with a direct current converter, and though it is not depicted, the 2 energy storing component has a switch. Even if Tesla were right about both figures, neither 3 establishes that a direct current converter cannot be utilized as a switch within the context of the 4 ’869 Patent. For example, the embodiment in Figure 9 may have a direct current converter as 5 shown in the figure, while the switch that is described in the specification but not shown in the 6 figure may be implemented as a direct current converter. United States District Court Northern District of California 7 Unicorn, for its part, argues that Figure 10 shows that Tesla’s proposed construction cannot 8 be true because it shows a direct current converter “that acts as a switch.” Unicorn Br. 20. 9 Unicorn misconstrues Figure 10. In describing the figure, the specification states that “[e]ach 10 supply network component . . . designed as energy stores comprises within its functional unit a 11 dedicated direct current converter which can regulate charging and discharging individually for the 12 respective functional group of each supply network component.” 18:48-53. It is unclear from this 13 disclosure whether the direct current converter in Figure 10 performs the claimed function of 14 “separating the energy store from the network medium.” It is therefore unclear whether the direct 15 current converter in Figure 10 is “act[ing] as a switch,” as Unicorn contends, or whether the 16 embodiment of Figure 10 has another switch that is not depicted or described, as Tesla contends. 17 Given this ambiguity, Figure 10 does not establish that the Patent discloses an embodiment that 18 uses a direct current converter as a switch. Of course, this is not fatal to Unicorn’s position, as the 19 lack of an embodiment expressly disclosing a particular feature does not amount to disclaimer of 20 that feature. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002) 21 (“Contrary to the district court's analysis, moreover, the specifications did not need to include a 22 drawing of a multi-component, curved member for the claimed invention to cover that particular 23 embodiment.”). 24 Tesla also advances an argument based on the language of claims 7 and 8. Tesla argues 25 that “the fact that claim 1 . . . requires a switch whereas claims 7 and 8 (which depend from claim 26 1) separately require a ‘direct current converter’ confirms that the two are different parts of the 27 claimed system.” At the hearing, Tesla clarified that its argument here is not one of claim 28 differentiation. Hrg. Transcript 103:3-21. Regardless of which doctrine Tesla relies upon, its 34 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 35 of 42 1 argument fails for two reasons. First, even if claims 7 and 8 require a direct current converter 2 separate from the switch in claim 1, that does not preclude the switch in claim 1 from being 3 implemented as a direct current converter. Second, if a direct current converter is a type of switch, 4 as Unicorn contends, then there is no claim differentiation issue because claims 7 and 8 would 5 narrow the scope of claim 1 by specifying the type of “switch” recited in claim 1. See TecSec, Inc. 6 v. Adobe Sys. Inc., 658 F. App’x 570, 577 (Fed. Cir. 2016) (“[W]hile the doctrine of claim 7 differentiation requires that the limitations in a parent claim be construed to be different in scope 8 from those in dependent claims, it does not necessarily mean that they are mutually exclusive. The 9 only requirement is that the limitation in the parent be at least broad enough to encompass the 10 United States District Court Northern District of California 11 limitation in the dependent claim.”). In light of the foregoing, the Court concludes that there is nothing in the intrinsic record 12 that narrows the scope of switch to exclude a direct-current converter. See Thorner v. Sony 13 Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“The standard for disavowal of 14 claim scope is . . . exacting.”). The Court thus turns to the extrinsic evidence for clarity. See 15 Phillips, 415 F.3d at 1317 (“[W]e have also authorized district courts to rely on extrinsic evidence, 16 which consists of all evidence external to the patent and prosecution history, including expert and 17 inventor testimony, dictionaries, and learned treatises. However, while extrinsic evidence can shed 18 useful light on the relevant art, we have explained that it is less significant than the intrinsic record 19 in determining ‘the legally operative meaning of claim language.” (internal quotation marks and 20 citations omitted)). 21 The Court finds that the extrinsic evidence establishes that a person of skill in the art 22 would understand the term “switch” to include direct current converters. Unicorn’s expert, Mr. 23 Dillard, opines that a switch is a widely known device in the electronic arts that “serves to 24 electrically connect or isolate its input(s) from its output(s), thereby controlling the flow of 25 current.” Dillard Decl. ¶ 152. To support this opinion, Mr. Dillard cites the Dictionary of Science 26 and Technology (2d ed. 2007), which defines “switch” as “ELEC[:] a mechanical or solid state 27 device that can electrically connect or isolate two or more lines.” Id. & Ex. D, at 592. Mr. Dillard 28 opines that “typical DC-DC converters plainly are within the ordinary meaning of switch” because 35 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 36 of 42 1 “they can isolate or connect their inputs/outputs.” Id. at 156. This is because “in a typical DC-DC 2 converter design, when the converter is not operating (switched off or ‘disabled’) current does not 3 flow between the inputs and outputs of the DC-DC converter.” Id. ¶ 155. Tesla identifies no 4 evidence that would undermine this opinion. In fact, Tesla’s expert offers no opinion at all about 5 whether a direct current converter can operate as a switch. The Court therefore finds that the 6 extrinsic evidence before it establishes that a person of skill in the art would understand the term 7 “switch” to include direct current converters. 8 United States District Court Northern District of California 9 Having found that the extrinsic evidence shows that a person of skill in the art would understand that a direct current converter may operate as a switch and that this understanding is 10 not undermined by the intrinsic evidence, the Court adopts Unicorn’s proposed construction. 11 Accordingly, the Court construes “switch for separating [the/its respective] energy store from the 12 network medium” as “device that can electrically connect or isolate [the/its respective] energy 13 store from the network medium.” 8. “functional group” (asserted claim 9) 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Unicorn’s Proposal Tesla’s Proposal “energy store, i.e., unit that Indefinite stores energy within an energy storing component” Court’s Construction “energy store” The parties dispute whether the term “functional group” renders claim 9 indefinite. Claim 9 recites: The energy storing component as claimed in claim 1, wherein the energy storing component comprises at least one sensor for detecting a physical parameter of the functional group. ’869 Patent, cl. 9. Unicorn argues that the term does not render the claim indefinite because it is clear from the patent and prosecution history that “functional group” means energy store. Unicorn Br. 22. Unicorn further argues, in the alternative, that “functional group” is a typographical error, and the Court should exercise its authority to correct it. Id. at 22. Tesla argues that the term does render the claim indefinite because a “functional group” can be configured as different components, and the claims and specification leave unclear what the functional group is in the context of claim 9. Tesla Resp. 22. Tesla also argues that Unicorn’s construction fails because it 36 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 37 of 42 1 2 “It is well-settled law that, in a patent infringement suit, a district court may correct an 3 obvious error in a patent claim.” CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 4 1358 (Fed. Cir. 2011). “A district court can correct a patent only if (1) the correction is not subject 5 to reasonable debate based on consideration of the claim language and the specification and (2) the 6 prosecution history does not suggest a different interpretation of the claims.” Id. (quoting Novo 7 Indus. L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003)). This inquiry should be 8 conducted “from the point of view of one skilled in the art.” Ultimax Cement Mfg. Corp. v. CTS 9 Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009). 10 United States District Court Northern District of California results in a failure to differentiate claim 9 from claim 10, which depends from claim 9. Id. The Court first determines whether there is an error in the claim. See Pavo Sols. LLC v. 11 Kingston Tech. Co., Inc., 35 F.4th 1367, 1373-74 (Fed. Cir. 2022). The Court finds that there is an 12 error: the term “the functional group” lacks an antecedent basis in claims 9 or 1. See, e.g., 13 Quanergy Sys., Inc. v. Velodyne Lidar, Inc., No. 16-CV-05251-EJD, 2017 WL 4410174, at *14 14 (N.D. Cal. Oct. 4, 2017) (correcting obvious error where term lacked antecedent basis). The Court 15 therefore proceeds to determine whether Unicorn’s proposed correction is not subject to 16 reasonable debate based on consideration of the claim language and the specification. See Novo 17 Indus., 350 F.3d at 1357. 18 The Court finds that Unicorn’s proposed correction replacing “functional group” with 19 “energy store” is not subject to reasonable debate. The patent specification explains that “[t]he 20 function of a supply network component is determined by its functional group.” ’869 Patent, at 21 13:61-62. A functional group “can be configured for example as [an] energy store, energy source, 22 or [an] energy consumer.” Id. 13:62-64. The parties agree that the claimed “energy storing 23 component” is a type of “supply network component.” See Unicorn Br. 2 (“The specification 24 describes various types of ‘supply network components,’ including [energy storing 25 components]”); Tesla Resp. 8 (referring to an “energy storing component” as “one example of a 26 supply network component”). This makes sense because the functional group comprising the 27 “energy storing component” of claim 1 is an “energy store.” ’869 Patent, cl 1. Claim 9 is for “the 28 energy storing component of claim 1.” Therefore, its functional group is too an “energy store.” 37 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 38 of 42 The prosecution history does not suggest a different interpretation of the claims. The United States District Court Northern District of California 1 2 prosecution history shows that the applicant consistently replaced the term “functional group” 3 with “energy store” in every claim in which functional group appeared, except for claim 11—the 4 claim that would become claim 9. Mar. 2018 OA Resp. at 2-7. The applicant offered no argument 5 that would suggest this failure to replace “functional group” with energy store was intentional. To 6 the contrary, the applicant’s remarks suggest that the applicant intended to amend all the claims 7 consistently. The applicant states that “independent claims 1 and 29 have been amended to clarify 8 the scope of the subject matter recited therein” and “each of dependent claims 4-9, 11-22, and 24- 9 48 . . . , have been amended consistent to claim 1, from which they depend.” The applicant 10 includes no statement suggesting an intention to modify the scope of every claim except claim 11 11—the claim that would become claim 9. The Court therefore finds that the prosecution history 12 does not suggest a different interpretation of the claims than the proposed correction. The Court disagrees with Tesla’s argument that replacing “functional group” with “energy 13 14 store” causes a claim-differentiation conflict between claims 9 and 10. As corrected, claim 9 15 requires that the “the energy storing component comprises at least one sensor for detecting a 16 physical parameter of the energy store.” Claim 10, which depends from claim 9, requires that 17 sensor disclosed in claim 9 detects “a voltage, a current or a temperature of the at least one energy 18 store.” Claim 9 thus requires detection of physical parameters of an energy, and claim 10 more 19 narrowly requires detection of the specific physical parameters of voltage, current, or temperature 20 of the energy store. There is no claim-differentiation problem here, as the claim 9 is broader than 21 the claim that depends from it. Cf. Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 22 (Fed. Cir. 2022) (“By definition, an independent claim is broader than a claim that depends from 23 it.”). 24 Accordingly, the Court exercises its discretion to correct the term “functional group” to 25 “energy store.” The Court declines to further construe “energy store” as “unit that stores energy 26 within an energy storing component” as Unicorn requests, as it is unclear whether Unicorn’s 27 request is meant to apply consistently to all uses of “energy store” within the claims or just claim 28 9, and the Court finds that this further construction would not be helpful to the jury. 38 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 39 of 42 9. “supply network component” (asserted claim 27) 1 Unicorn’s Proposal “energy storing component” 2 3 27. An energy storage block for a supply network for electrical energy as a network medium, wherein the energy storage block comprises: 5 a plurality of energy storing components for a supply network for electrical energy as a network medium, each supply network component comprising . . . . 6 7 wherein the plurality of supply network components are connected in series or in parallel with one another. 8 United States District Court Northern District of California Court’s Construction “energy storing component” Claim 27 requires reads in relevant part as follows: 4 9 Tesla’s Proposal Indefinite ’869 Patent, cl. 27.4 Unicorn contends that “supply network component” would be understood in 10 the context of the claim to be “energy storing component.” Unicorn Br. 22. Unicorn further 11 argues, in the alternative, that “supply network component” is a typographical error, and the Court 12 should exercise its authority to correct it. Id. at 23. Tesla argues that “supply network 13 component” is indefinite because it is a coined term that lacks an antecedent basis, and nothing in 14 the intrinsic record clarifies the meaning of the term. Tesla Resp. 23-24. 15 As the Court noted above when construing the term “functional group,” “a district court 16 may correct an obvious error in a patent claim” but “only if (1) the correction is not subject to 17 reasonable debate based on consideration of the claim language and the specification and (2) the 18 prosecution history does not suggest a different interpretation of the claims.” CBT Flint Partners, 19 654 F.3d at 1358. The Court finds that the inclusion of the phrase “supply network component” in 20 claim 27 is a typographical error and that it should be corrected to “energy storing component” for 21 the following reasons. 22 The Court first determines whether there is an error in the claim. See Pavo Sols., 35 F.4th 23 at 1373-74. The Court finds that there is an error: the phrases “each supply network component” 24 “the plurality of supply network components” lack antecedent bases. See, e.g., Quanergy Sys., 25 2017 WL 4410174, at *14 (correcting obvious error where term lacked antecedent basis). The 26 27 28 Claim 27 also requires that “the plurality of supply network components are connected in series or in parallel with one another.” 39 4 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 40 of 42 1 Court therefore proceeds to determine whether Unicorn’s proposed correction is not subject to 2 reasonable debate based on consideration of the claim language and the specification. See Novo 3 Indus., 350 F.3d at 1357. United States District Court Northern District of California 4 The first limitation in claim 27 referring to a “supply network component” recites “a 5 plurality of energy storing components for a supply network for electrical energy as a network 6 medium, each supply network component comprising.” The most natural reading of this 7 limitation is that the phrase “each supply network component” refers back to the “plurality of 8 energy storing components.” 9 Reading this language in the context of the specification confirms that Unicorn’s proposed 10 correction replacing “supply network component” with “energy storing component” is not subject 11 to reasonable debate. The patent specification explains that “[t]he function of a supply network 12 component is determined by its functional group.” ’869 Patent, at 13:61-62. A functional group 13 “can be configured for example as [an] energy store, energy source, or [an] energy consumer.” Id. 14 13:62-64. The “plurality of energy storing components” of claim 27 is comprised of a functional 15 group configured as an “energy store.” ’869 Patent, cl 27. Therefore, the only reasonable 16 understanding of the disclosures, is that an energy storing component is a supply network 17 component with a functional group configured as an energy store. Although Tesla appears to 18 dispute this conclusion in the section of its briefing on this disputed term, it concedes it elsewhere, 19 acknowledging that an “energy storing component” is “one example of a supply network 20 component.” Compare Tesla Resp. 23, with Tesla Resp. 8. 21 The prosecution history does not suggest a different interpretation of the claims. “Supply 22 network component” appeared in the claims 54 times, and the prosecuting attorney consistently 23 changed “supply network component” to “energy storing component” 52 times. Mar. 2018 OA 24 Resp. at 2-7. It appears, however, that the prosecuting attorney missed three instances of the term. 25 See Tesla Resp. 24. The applicant offered no argument that would suggest this failure to replace 26 “supply network component” to “energy storing component” these three times was intentional. To 27 the contrary, the applicant’s remarks suggest that the applicant intended to amend all the claims 28 consistently. The applicant states that “independent claims 1 and 29 have been amended to clarify 40 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 41 of 42 1 the scope of the subject matter recited therein” and “each of dependent claims 4-9, 11-22, and 24- 2 48 . . . , have been amended consistent to claim 1, from which they depend.” The Court therefore 3 finds that the prosecution history does not suggest a different interpretation of the claims than the 4 proposed correction. Tesla argues that the prosecution history suggests that the inclusion of “supply network 5 6 component” was not a typo because “the applicant relied on these references . . . , even after the 7 amendment had been filed, to distinguish prior art.” Tesla Resp. 24. The section of the 8 prosecution history upon which Tesla relies states in relevant part: 9 [The prior art reference] emphasizes a traditional approach using an external circuit that decides whether a certain batter module may be switched on or not. This lacks any insight or recognition of the problems addressed by the arrangement of claim 1. . . . The arrangement of claim 1 provides a check of compatibility that must be completed successfully in order for the supply network component to be connected to the network medium. Moreover, where multiple supply network components are employed, each supply network component may determine its own compatibility (and thus whether to separate from the network medium depending whether compatibility is established or not) “autonomously.” 10 United States District Court Northern District of California 11 12 13 14 15 Mar. 2018 OA Resp., at 12-13. The Court finds that the section of the prosecution history upon which Tesla relies does not 16 17 undermine the conclusion that “supply network component” should be corrected to “energy 18 storing component.” The applicant’s argument was that the alleged invention was distinguishable 19 from the prior art because the “supply network component” determines its own compatibility 20 “autonomously.” The component that performs this function in claim 27 is the “energy storing 21 component.” See ’869 Patent, cl. 27. This excerpt therefore confirms what was already clear from 22 the specification and other sections of the prosecution history: the applicant equated energy storing 23 component and supply network component. Accordingly, the Court exercises its discretion to correct the term “supply network 24 25 component” in claim 27 to “energy storing component.” 26 // 27 // 28 // 41 Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 42 of 42 1 IV. ORDER For the foregoing reasons, the Court construes the following terms: 2 3 1 4 Claim Term “energy storing component” 5 6 2 3 7 8 4 9 5 10 United States District Court Northern District of California 11 “network medium” “contact unit for contacting a further energy storing component” “gateway for coupling the at least one contact unit with the energy store” “configured to cooperate with the communication interface such that the [respective] energy storing component is [separated from the network medium / switched on]” 12 “autonomous identification of [incompatibility / compatibility] of the [respective] energy storing component with the present supply network” 7 “switch for separating [the/its respective] energy store from the network medium” 8 “functional group” 9 “supply network component” 10 “auxiliary voltage interface for transmitting an auxiliary voltage for supplying at least one of the contact unit or gateway with electrical energy”5 13 6 14 15 16 17 18 19 20 Court’s Construction Plain and ordinary meaning, where the subcomponents of the energy storing component may not be distributed across the supply network. electrical energy in the supply network electrical contact(s) for electrically connecting a further energy storing component gateway for coupling the at least one contact unit with the energy store configured to exchange information with the communication interface such that [the energy storing component is separated from the network medium / the energy storing component is switched on / the respective energy storing component is separated from the network medium] self-determined identification of incompatibility [/or compatibility] with the present supply network by the [respective] energy storing component device that can electrically connect or isolate [the/its respective] energy store from the network medium energy store energy storing component electrical contact that allows auxiliary energy to be supplied to at least one of the contact unit or the gateway 21 22 Dated: January 19, 2023 ______________________________________ BETH LABSON FREEMAN United States District Judge 23 24 25 26 27 28 Unicorn argued 10 terms in its opening brief. Tesla “withdr[ew] its proposed construction for the ‘auxiliary voltage interface . . .’ term” in its Response. See Tesla Resp. 1 n.1. The Court therefore adopts Unicorn’s proposed construction 42 5

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