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)

Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 1 of 42

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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UNICORN ENERGY GMBH,
Plaintiff,

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TESLA INC.,
Defendant.

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United States District Court
Northern District of California

CLAIMS CONSTRUCTION ORDER

v.

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Case No. 21-cv-07476-BLF

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Unicorn Energy GMBH (“Unicorn”) brings this patent infringement lawsuit against Tesla

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Inc. (“Tesla”) for Tesla’s alleged infringement of U.S. Patent No. 10,008,869 (“the ’869 Patent” or

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“the Asserted Patent”). The Court held a tutorial hearing on October 7, 2022, and a claims

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construction hearing on October 14, 2022, for the purpose of construing nine terms of the ’869

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Patent. After the hearing, the parties submitted a Joint Claim Construction Chart setting forth their

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proposed constructions. See ECF No. 152.

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I.

’869 PATENT

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The ’869 Patent concerns components of electrical energy supply network. ’869 Patent, at

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1:15-20. The patent discloses that the components can be configured to store, supply, convert, and

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consume energy. See id. 1:18-20. The claims, however, are limited to components that can store

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electrical energy. See id. at 21:18, 23:3.

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At the time of the alleged invention, conventional batteries included alkaline batteries of

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certain standardized housing sizes. Id. at 1:23-29. Certain types of rechargeable batteries were

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also generally known. Id. at 1:21-31. These standardized batteries could be adapted to different

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applications with specific voltage needs by placing them in series. Id. at 1:32-34.

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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

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cells to make larger battery systems. One problem was that, as battery systems became more

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complicated and subject to more safety requirements, it became necessary to construct battery and

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charging systems adapted to each application. Id. at 1:43-56. Another problem was that, for cells

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arranged in series, the failure of one cell resulted in a failure of the entire system. Id. at 1:57-61,

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3:35-40.
The alleged invention sought to solve these problems by providing a “mobile, stackable,

United States District Court
Northern District of California

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secure and intelligent” component that could connect to an electricity network and store

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electricity. See id. at 5:17-25. These components can be combined to form scalable “energy

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blocks” that serve a range of different devices with different energy needs, thus overcoming the

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need to design application-specific systems. Id. at 12:23-27, 12:28-44; see also 5:12-16. They

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can also be designed to separate from the network when they develop a defect, thus allowing a

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system using the components remain operable. Id. at 12:1-10.

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II.

LEGAL STANDARD
A. General Principles

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Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 517 U.S.

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370, 387 (1996). “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the

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invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d

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1303, 1312 (Fed. Cir. 2005) (en banc) (internal citation omitted). Therefore, “[t]he appropriate

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starting point . . . is always with the language of the asserted claim itself.” Comark Commc’ns,

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Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998).

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Claim terms “are generally given their ordinary and customary meaning,” defined as “the

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meaning . . . the term would have to a person of ordinary skill in the art in question . . . as of the

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effective filing date of the patent application.” Phillips, 415 F.3d at 1313 (internal citation

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omitted). The court reads claims in view of the specification, which is “the single best guide to the

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meaning of a disputed term.” Id. at 1315. Furthermore, “the interpretation to be given a term can

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only be determined and confirmed with a full understanding of what the inventors actually

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invented and intended to envelop with the claim.” Id. at 1316 (quoting Renishaw PLC v. Marposs

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Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). The words of the claims must
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therefore be understood as the inventor used them, as such understanding is revealed by the patent

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and prosecution history. Id. The claim language, written description, and patent prosecution

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history thus form the intrinsic record that is most significant when determining the proper meaning

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of a disputed claim limitation. Id. at 1315-17; see also Vitronics Corp. v. Conceptronic, Inc., 90

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F.3d 1576, 1582 (Fed. Cir. 1996).
Evidence external to the patent is less significant than the intrinsic record, but the court

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Northern District of California

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may also consider such extrinsic evidence as expert and inventor testimony, dictionaries, and

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learned treatises “if the court deems it helpful in determining ‘the true meaning of language used

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in the patent claims.’” Philips, 415 F.3d at 1318 (quoting Markman, 52 F.3d at 980). Extrinsic

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evidence may not be used to contradict or change the meaning of claims “in derogation of the

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‘indisputable public records consisting of the claims, the specification and the prosecution

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history,’ thereby undermining the public notice function of patents.” Id. at 1319 (quoting

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Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed. Cir. 1995)).

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B. Means-Plus-Function Claiming

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Paragraph 6 of 35 U.S.C. § 112 provides for means-plus-function claiming: “An element in

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a claim for a combination may be expressed as a means . . . for performing a specified function . . .

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and such claim shall be construed to cover the corresponding structure, material, or acts described

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in the specification and equivalents thereof.” The means-plus-function analysis involves two

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steps.

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At step one, courts “determine whether a limitation is drafted in means-plus-function

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format” by determining whether the limitation “connotes sufficiently definite structure to a person

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of ordinary skill in the art.” Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022).

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Courts presume that “a claim limitation is not drafted in means-plus-function format in the

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absence of the term ‘means.’” Id. “The presumption can be overcome if a challenger

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demonstrates that the claim term fails to recite sufficiently definite structure.” Id. (citation and

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internal quotation marks omitted). The essential inquiry is “whether the words of the claim are

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understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the

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name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015).
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Such an inquiry turns on “[i]ntrinsic evidence, such as the claims themselves and the prosecution

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history,” as well as extrinsic evidence. Dyfan, 28 F.4th at 1365-66.

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At step two, if the limitation is drafted in a means-plus-function format, courts

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“determine[e] ‘what structure, if any, disclosed in the specification corresponds to the claimed

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function.’” Dyfan, 28 F.4th at 1365 (quoting Williamson, 792 F.3d at 1351). A means-plus-

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function claim is indefinite if the specification fails to disclose adequate corresponding structure to

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perform the claimed function. Williamson, 792 F.3d at 1351-52. The step one inquiry is distinct

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from, but “may be similar to[,] looking for corresponding structure in the specification.” Apple

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Inc. v. Motorola, Inc., 757 F.3d 1286, 1296 (Fed. Cir. 2014), abrogated on other grounds by

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United States District Court
Northern District of California

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Williamson, 792 F.3d at 1349.
C. Indefiniteness
A patent claim must “particularly point[] out and distinctly claim[] the subject matter

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which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. This language captures the

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Patent Act’s “definiteness” requirement. See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.

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898, 901 (2014). A patent claim is invalid for indefiniteness if it fails to inform, “with reasonable

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certainty,” when read in light of the specification and prosecution history, those skilled in the art

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about the scope of the invention. See id.; See also Nature Simulation Sys. Inc. v. Autodesk, Inc.,

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50 F.4th 1358, 1362 (Fed. Cir. 2022) (“Patent claims must provide reasonable certainty in defining

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what is patented, in conformity with the requirements of 35 U.S.C. § 112”). “United States

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patents are accompanied by a presumption of validity, 35 U.S.C. § 282, and invalidity must be

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established by clear and convincing evidence.” Nature Simulation Sys., 50 F.4th at 1361; see also

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S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001) (“The claims as granted are

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accompanied by a presumption of validity based on compliance with, § 112 ¶ 2.”).

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III.

A. Disputed Terms

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1. “energy storing component” (all asserted claims)

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DISCUSSION

Unicorn’s Proposal
“Device that stores electrical
energy”

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United States District Court
Northern District of California

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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

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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:

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[1a] at least one contact unit for contacting a further energy storing
component of the supply network;

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[1b] an energy store comprising at least one battery cell, and

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[1c] at least one gateway for coupling the at least one contact unit with
the energy store,

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[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:

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[27a] a plurality of energy storing components for a supply network
for electrical energy as a network medium, each supply network
component comprising:

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Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 6 of 42

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[27b] at least one contact unit for contacting a further energy storing
component of the supply network,

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[27c] an energy store comprising at least one battery cell, and

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[27d] at least one gateway for coupling the at least one contact unit
with the energy store,

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Northern District of California

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[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

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within a supply network. See Unicorn Br. 7-8, ECF No. 135; Tesla Resp. 2-4, ECF No. 141. And
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the parties agree that an “energy storing component” may be a multicomponent device. See

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Unicorn Br. 8; Tesla Resp. 4.
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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

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energy storing component . . . comprising: at least one contact unit . . . [,] an energy store . . . , and
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at least one gateway.” ’869 Patent, cl. 1. Under Claim 1’s plain terms, an energy storing

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component may therefore have at least three sub-components: a contact unit, an energy store, and
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a gateway. Phillips, 415 F.3d at 1314 (“Quite apart from the written description and the

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prosecution history, the claims themselves provide substantial guidance as to the meaning of
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particular claim terms.”).
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The parties’ key dispute is whether the subcomponents of the energy storing component—

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e.g., the contact unit, energy store, and gateway—may be distributed throughout a supply network.
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Northern District of California

Case 5:21-cv-07476-BLF Document 169 Filed 01/19/23 Page 7 of 42

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See Unicorn Br. 8-9; Tesla Resp. 2-4; Unicorn Reply 2, ECF No. 142. Tesla attempts to capture

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this requirement through its proposal that an energy storing component is an “individual

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component.” In its opening brief, Unicorn does not directly addresses whether the subcomponents

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of the energy storing component may be distributed throughout a supply network. But it does

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contend that Tesla’s proposed construction is unsupported by the intrinsic record and attempts to

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add a limitation via claim construction. Unicorn Br. 8. Tesla contends that the subcomponents of

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the energy storing component may not be distributed throughout a supply network and attempts to

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capture this limitation by specifying in its proposed construction that an energy storing component

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is “an individual component.” Tesla Resp. 2-4. Tesla argues that Unicorn disclaimed the

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possibility of an energy storing component that has subcomponents distributed throughout a

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supply network to avoid institution of an inter partes review (“IPR”) of claims of the ’869 patent

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by the Patent Trial and Appeal Board (“PTAB”). Id. at 2-3. On reply, Unicorn contends that

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“Tesla’s proposal to limit an [energy storing component] to ‘an individual component’ is . . .

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unjustified” and that the PTAB’s decision to not institute an IPR turned on the prior art’s failure to

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disclose the limitations of the challenged claims regardless of any purported disclaimer. Id. at 2-3.

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“When the patentee unequivocally and unambiguously disavows a certain meaning to

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obtain a patent, the doctrine of prosecution history disclaimer narrows the meaning of the claim

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consistent with the scope of the claim surrendered.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d

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1353, 1359 (Fed. Cir. 2017) (quoting Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090,

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1095 (Fed. Cir. 2013)). This doctrine extends to statements made by a patent owner during an IPR

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proceeding, whether before or after an institution decision. Id. at 1362. Accordingly, such

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statements “can be considered for claim construction and relied upon to support a finding of

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prosecution disclaimer,” so long as the disclaimer is “clear and unmistakable.” Id. at 1361-62.

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This “ensures that claims are not construed one way in order to obtain their allowance and in a

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different way against accused infringers.” Id. at 1360 (internal quotations omitted).

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Based on the prosecution history, the Court concludes that Unicorn clearly and

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unmistakably disavowed an energy storing component with subcomponents that may be

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distributed throughout a network. Unicorn’s Patent Owner’s Preliminary Response to Tesla’s
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Northern District of California

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petition for IPR included a section titled “The Claims Require Elements [a]-[e] To Be Part of the

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‘Energy Storing Component,’ Not Remote Devices Elsewhere on a Network.” Smith Decl. Ex. B,

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at 10, ECF No. 139-3. In that section Unicorn faulted Tesla for “suggest[ing] that an ‘energy

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storing component’ itself can be made up of separate devices distributed across a network.” Id. at

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12 (emphasis in original). Unicorn used its contention that an energy storing component may not

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be made up of separate devices distributed across a network to distinguish one of Tesla’s proposed

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prior art references. Id. at 30-33, 35-43. Unicorn argued that Tesla failed to show that the prior

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art reference disclosed an energy storing component because Tesla relied on the combination of

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two connected—but separate—components to attempt to do so. Id. Thus, Unicorn’s disclaimer of

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an energy storing component with subcomponents distributed throughout a network was clear and

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unmistakable.

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Unicorn argues that it is not bound by its disclaimer because the PTAB did not rely on it.

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See Reply 2-3. The Federal Circuit has explained that “[a]n applicant’s argument made during

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prosecution may lead to a disavowal of claim scope even if the Examiner did not rely on the

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argument.” See Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1374 (Fed. Cir. 2005); see

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also Microsoft Corp. v. Multi–Tech Sys., 357 F.3d 1340, 1350 (Fed.Cir.2004) (“We have stated on

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numerous occasions that a patentee's statements during prosecution, whether relied on by the

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examiner or not, are relevant to claim interpretation.”). The Federal Circuit has even found

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prosecution disclaimer where a patentee’s “statement was unnecessary to overcome [a] reference

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and [where] the examiner explicitly disagreed with it.” See Am. Piledriving Equip., Inc. v.

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Geoquip, Inc., 637 F.3d 1324, 1336 (Fed. Cir. 2011). By contrast, the Federal Circuit has declined

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to find prosecution estoppel where a patent owner’s limiting statements “were clearly and

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expressly rejected by the Patent Office.” Galderma Lab'ys, L.P. v. Amneal Pharms. LLC, 806 F.

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App’x 1007, 1010-11 (Fed. Cir. 2020).

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Here, the PTAB did not rely on Unicorn’s disclaimer, but it also did not reject it. The

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PTAB noted that Unicorn’s argument that the prior art does not disclose an energy storing

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component “rests on the assumption that the claim requires all the elements of the ‘energy storing

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component’ to be integrated into a single device.” Jonas Decl. Ex. 3, at 19 (emphasis in original),
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ECF No. 136-3. But the PTAB found it “unnecessary . . . to resolve whether the claim requires

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the elements to be integrated into the same device or not” because the prior art failed to teach one

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of the elements of the claims. Id. at 19, 27-30.

United States District Court
Northern District of California

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Unicorn is bound by its clear and unmistakable disclaimer because the PTAB did not reject

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it. Compare Am. Piledriving Equip., 637 F.3d at 1336, with Galderma Lab’ys, 806 F. App’x at

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1010-11. This result makes sense because the PTAB’s decision leaves intact Unicorn’s

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representations regarding the scope of its claims, and “[c]ompetitors are entitled to rely on those

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representations when determining a course of lawful conduct, such as launching a new product or

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de-signing-around a patented invention.” See Aylus Networks, 856 F.3d at 1359 (citation omitted).

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Accordingly, the Court finds that the scope of the term “energy storing component” is

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limited by Unicorn’s prosecution disclaimer. The Court adopts a modified version of Tesla’s

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proposed construction, construing “energy storing component” to have its plain and ordinary

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meaning with the limitation that the subcomponents of the energy storing component may not be

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distributed across the supply network.

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The Court finds that this more closely aligns with the disclaimer Unicorn made before the

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PTAB than Tesla’s proposal. The Court also finds that Tesla’s proposal to specifically state that

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the energy storing component “that satisfies elements [1[a]-1[e] / 27[b]-27[f]]” is redundant, as

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claim 1 is expressly directed to “[a]n energy storing component . . . comprising: [the elements of

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the claim]” and claim 27 is expressly directed to “[a]n energy storage block . . . compris[ing]: a

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plurality of energy storing components . . . each supply network component comprising: [the

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remaining elements of the claim].” See ’869 Patent cls. 1, 27.

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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

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argues that it does and that the term should be construed as “electrical energy in the supply

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network.” Unicorn Br. 9-10. Unicorn argues that its construction is necessary to “clarif[y] that

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the ‘network medium’ is concerned with electrical energy, as opposed to other types of storage . . .

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that are mentioned in the specification but not claimed in the patent.” Id. Tesla argues that

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Unicorn’s proposed construction adds nothing to the plain language of the claims and therefore

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does not clarify their scope. Tesla Resp. 4. Tesla also argues that replacing “network medium”

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with Unicorn’s proposal in the independent claims leaves those preambles “confusingly” phrased.

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Id.
The Court agrees with Unicorn that the term “network medium” requires construction.

United States District Court
Northern District of California

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Unicorn explains, and Tesla does not dispute, that the term “network medium” was coined for the

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’869 Patent and therefore would not have a plain and ordinary meaning to a person of skill in the

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art. Unicorn Br. 9. As “network medium” is a technical term whose meaning is not “immediately

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apparent,” the Court finds that construction would be helpful to the jury. See Phillips, 415 F.3d at

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1314.

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The plain language of the claims supports Unicorn’s proposed construction. See id.

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(“[T]he claims themselves provide substantial guidance as to the meaning of particular claim

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terms.”). The preamble of claim 1 discloses “[a]n energy storing component for a supply network

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for electrical energy as a network medium.” ’869 Patent, cl. 1. The preamble of the patent’s other

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independent claim, claim 27, discloses “[a]n energy storage block for a supply network for

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electrical energy as a network medium.” Id. cl. 27. Both claims state that “electrical energy” is

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the “network medium.” Both claims also make clear that the supply network is for electrical

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energy. It therefore follows that the network medium is “electrical energy within the supply

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network,” as Unicorn proposes.

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The specification supports this plain reading of the claims. The specification states, that

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“[i]n particular, the network medium is electrical energy. However, water, gas, air, petroleum,

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thermal energy or other energy forms can also be involved, for example.” ’869 Patent, at 5:3-5.

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The patent also specifies that “[t]he network medium is electrical energy” in each of the disclosed

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embodiments. See id. at 13:58. Although these excerpts would not limit the term “network

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medium” to include only electrical energy, they make clear that electrical energy is one possible

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network medium. The claims then disavow any other possibility through their express invocation
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of electrical energy as the network medium.

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Tesla does not dispute that Unicorn’s proposed construction captures the plain and

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ordinary meaning of the term to a person of skill in the art. See Tesla Br. 4. Tesla argues only that

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the construction adds confusion because it cannot be directly substituted for the term “network

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medium” in the preambles of claims 1 and 27. See id. Tesla offers no caselaw to suggest that

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such substitution is required, and the Court is aware of none.

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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)

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United States District Court
Northern District of California

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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”

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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.

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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

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definite structure or else recites function without reciting sufficient structure for performing that
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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

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term subject to the strictures of § 112, para. 6, . . . the essential inquiry is not merely the presence
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or absence of the word ‘means’ but whether the words of the claim are understood by persons of

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United States District Court
Northern District of California

ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”
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Williamson, 792 F.3d at 1348. The determination of whether § 112 ¶ 6 applies to a claim
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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.,
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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
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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

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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
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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