Velocity Patent LLC v. Chrysler Group, LLC
Filing
483
MEMORANDUM Opinion and Order: The Court denies Velocity's motion for reconsideration 479 . Signed by the Honorable Thomas M. Durkin on 9/4/2018:Mailed notice(srn, )
IN THE UNITED STATES DISTRICT COURT FOR THE
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
VELOCITY PATENT LLC,
Plaintiff,
vs.
FCA US LLC,
Defendant.
)
)
)
)
)
)
)
)
)
No. 13 C 8419
Judge Thomas M. Durkin
MEMORANDUM OPINION AND ORDER
On August 7, 2018, the Court entered a Memorandum Opinion and Order
granting in part and denying in part FCA’s motion for summary judgment regarding
infringement and invalidity and denying Velocity’s motion regarding non-infringing
alternatives. R. 442. On August 23, 2018, Velocity filed a motion asking the Court to
reconsider a decision it made in that order regarding the construction of Claim 28 of
the ‘781 Patent. R. 479. Familiarity with the Court’s previous ruling is assumed. For
the following reasons, the Court denies Velocity’s motion.
STANDARD
This Court has “inherent authority” under Rule 54(b) to reconsider its
interlocutory orders. Janusz v. City of Chi., 78 F. Supp. 3d 782, 787 (N.D. Ill. 2015);
Fed. R. Civ. P. 54(b) (Non-final orders “may be revised at any time before entry of a
judgment adjudicating all the claims and all the parties’ rights and liabilities.”). But
motions for reconsideration “serve a limited function: to correct manifest errors of law
or fact or to present newly discovered evidence.” Caisse Nationale de Credit Agricole
v. CBI Indus., 90 F.3d 1264, 1269 (7th Cir. 1996). They are proper where the court
“has patently misunderstood a party, or has made a decision outside the adversarial
issues presented to the Court by the parties, or has made an error not of reasoning
but of apprehension.” Bank of Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d
1185, 1191 (7th Cir. 1990). Motions for reconsideration are not, however, “appropriate
vehicle[s] for relitigating arguments that the Court previously rejected or for arguing
issues that could have been raised during the consideration of the motion presently
under reconsideration.” Caine v. Burge, 897 F. Supp. 2d 714, 717 (N.D. Ill. 2012)
(citing Caisse, 90 F.3d at 1270).
ANALYSIS
On summary judgment, in relevant part, FCA asked the Court to construe
Claim 28 in the same way as other claims in the ‘781 Patent that contained the same
claim term. The Court relied on a previous claim construction order entered by Judge
Darrah in ruling that Claim 28 should be construed with a means-plus-function
limitation. In its motion to reconsider, Velocity asks the Court to reconsider its
summary judgment decision as to Claim 28. But Velocity’s filings make clear that it
is really asking this Court to reconsider the claim construction order entered by Judge
Darrah over two years ago in September 2016. 1
Any motion to reconsider the claim construction order of September 21, 2016
should have been presented before Judge Darrah or before the summary judgment
briefing and decision. It is inappropriate now. In any event, the Court finds that even
1
The case was reassigned to this Court on February 27, 2017. R. 129.
2
if it were to reconsider the earlier claim construction order or its ruling on Claim 28,
the result would be the same—the “a processor subsystem . . . said processor
subsystem determining” language in the patent requires construction under 35
U.S.C. § 112, ¶ 6. 2 Velocity’s motion to reconsider is therefore denied. See, e.g., In re
Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004) (on appeal, “to prevail the appellant must
not only show the existence of error, but also show that the error was in fact harmful
because it affected the decision below”).
I.
Velocity Has Waived Reconsideration of Claim Construction
FCA filed its claim construction brief on December 23, 2015, R. 75, and Velocity
responded to that brief, R. 85. It does not appear Velocity filed its own affirmative
claim construction brief. The parties’ briefs (including a surreply from Velocity, R. 971), alone comprised over 100 pages and included affidavits and declarations by
experts, deposition testimony, and other exhibits. The Court conducted a Markman
hearing on April 12, 2016. See Dkt. 132 of Velocity Patent LLC v. Mercedes-Benz USA,
LLC, et al., No. 1-13-cv-08413 (N.D. Ill. May 5, 2016) (transcript of April 12, 2016
Markman Hearing).
The Court’s claim construction order was entered on September 21, 2016. It
explained that, when deciding claim construction, courts first look at the intrinsic
The America Invents Act amended and renamed § 112, ¶ 6. It is now § 112(f). Pub.
L. No. 112-29, § 4(c), 125 Stat. 284, 296 (2011). However, the amended version of §
112 applies only to patent applications “filed on or after” September 16, 2012. See AIA
§ 4(e), 125 Stat. at 297. Because the application that led to the ‘781 Patent was filed
before that date, the Court refers to the previous version (§ 112, ¶ 6). See Zeroclick,
LLC v. Apple Inc., 891 F.3d 1003, 1006 (Fed. Cir. 2018).
2
3
evidence in the record, including the patent itself, the claims, and the prosecution
history. The Court may also consider extrinsic evidence such as expert testimony,
dictionaries, and learned treatises. However, extrinsic evidence is to be used for the
Court’s understanding of the patent, not for the purpose of varying or contradicting
the terms of the claims. R. 114 at 3. The Court construed the phrase, “a processor
subsystem . . . said processor subsystem determining” contained in Claims 1, 7, 13,
17, 60, 69, and 76, 3 as requiring a means-plus-function construction. The Court
explained that when a claim term lacks the word “means,” § 112, ¶ 6 is presumed to
not apply unless “the challenger demonstrates that the claim term fails to ‘recite
sufficiently definite structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’” Id. at 11 (citing Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)). The Court noted that an individual of
ordinary skill in the art would understand that “processor” encompasses a
microprocessor or microcontroller, which are structural terms, and thus the patent
recited a sufficiently definite structure. Id. at 12.
The Court found that the presumption against application of § 112, ¶ 6 may
also be overcome if the claim recites “function without reciting sufficient structure for
Claim 28 was not included in this list. The parties dispute whether this was
intentional or an oversight. FCA represented that Claim 28 was inadvertently
omitted from the list of claims that included the same language, R. 350 at 10, which
Velocity disputed, R. 370 at 10. FCA’s representation is almost certainly true, but the
Court finds that dispute irrelevant, because the claims would have been construed
the same. Had the parties raised this issue at the time of the original claim
construction order, it would have been a simple matter to resolve. Fault lies with both
parties for that delay.
3
4
performing that function.” Id. After analyzing the patent and the claims, the Court
found that the patent provided for several different functions “that may be generally
described as receiving information from the sensors, exchanging data with the
memory subsystem, and determining whether to activate a notification circuit” but
did not provide sufficient structure for performing those functions. Id. at 13.
Accordingly, the Court held that the presumption against applying § 112(f) was
overcome, and the patent required an algorithm to avoid indefiniteness. Id. (citing
EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir.
2015) (“A microprocessor or general purpose computer lends sufficient structure only
to basic functions of a microprocessor. All other computer-implemented functions
require disclosure of an algorithm.”)). The Court adopted FCA’s construction of the
phrase, “a processor subsystem . . . said processor subsystem determining . . . ,” as to
each claim, noting Velocity offered no alternate construction. Id. at 14.
Though Velocity now argues Judge Darrah’s opinion contains “manifest errors
of law” warranting reconsideration, Velocity did not file a motion to reconsider before
Judge Darrah. The parties spent the next year and a half conducting fact and expert
discovery based on that claim construction. At least as early as December 4, 2017,
FCA informed Velocity that it intended to construe Claim 28, which contains the
same “processor subsystem determining” language, like the other claims with that
language. See R. 394, ¶ 51 (FCA cites to an email stating: “Velocity’s contention that
the ‘processor subsystem’ term utilized in Claim 28 is somehow not to be constructed
as a means-plus-function term . . . is another example of attempting to bypass the
5
Court’s constructions.”). Velocity again did not file a motion to reconsider the claim
construction at that time, despite knowing FCA’s position on the issue. The parties
continued to conduct extensive discovery, knowing FCA’s interpretation that Claim
28 should be construed with a means-plus-function limitation.
On May 22, 2018, the parties appeared before the Court on a motion hearing
related to the summary judgment proceedings. Velocity noted concern about FCA’s
motion on summary judgment to include Claim 28 as requiring a means-plus-function
limitation. At Velocity’s insistence, the Court made clear that it would not
substantively reconsider Judge Darrah’s ruling, because the parties had conducted
significant fact and expert discovery based on that claim construction, and because
neither party had filed a motion to reconsider before him. R. 354 at 4:2-21 (transcript
of May 22, 2018 hearing). Velocity had indicated it “could be very seriously
prejudiced” by any reconsideration, explaining that claim construction should not be
reconsidered after expert discovery. Id. at 3:17-25 (by Velocity’s counsel James
Shimota: “I mean, we—the reason we filed all these pages is, I mean, we’re—we have
a problem with the motion for reconsideration on the summary judgment issue. But,
in particular, the request for briefing on claim construction, I mean, we’re very
concerned about this. I mean, to the extent that it’s—claim construction is being
taken out of order after expert discovery. To the extent that you rule on this, I mean,
we think that there’s a number of ways that this could go, and we could be very
seriously prejudiced by this.”). Velocity did not alert the Court that it believed the
earlier claim construction of the ‘781 Patent was otherwise improper.
6
On summary judgment, neither side asked the Court to reconsider the original
claim construction ruling. Instead, FCA asked the Court to construe Claim 28 the
same as the remaining claims containing the same language. Velocity argued that
Claim 28 should not be construed like the remaining claims with the “processor
subsystem . . . said processor subsystem determining” language because Claim 28
recites specific sensors to draw data from, while the remaining claims provide for one
or more sensors. 4 R. 370 at 15. Velocity did not make any other arguments regarding
the proper construction of Claim 28 or any other claims. Instead, it contended FCA
had waived its argument and that Velocity would be prejudiced by the Court’s
construction of Claim 28 with a means-plus-function limitation at the late stage of
the proceedings. Velocity again argued that the Court should not redo its claim
construction. See R. 370 at 10-11 (“Velocity made strategic decisions based on the
claim construction order. . . . All fact depositions occurred after November 16, 2017
at FCA’s request, after FCA concedes it knew about its ‘mistake’ but elected not to
pursue the issue. FCA should have raised this issue before all fact depositions were
taken. . . . If there is a ‘do over,’ Velocity, not FCA, will be prejudiced because Velocity
has relied on that ruling.”). See also R. 370 at 19 (“FCA is the only party hoping to do
over claim construction. FCA has known since 2014 that Velocity disputed [FCA’s
position on whether Claim 28 was invalid as prior art] and could have asked Judge
Darrah to construe the terms.”).
The claims have similar language. For example, Claim 1 uses “plurality of sensors”;
Claim 17 uses “at least one sensor”; and Claim 60 uses “at least the data received
from said [sensors].” Claim 28 states “data received from said [sensors].”
4
7
In its summary judgment ruling, the Court found Velocity’s arguments
unpersuasive. It noted Velocity had been aware of FCA’s proposed construction of
Claim 28 since at least December 4, 2017 and had taken discovery on both structures.
R. 442 at 32-34. The Court granted FCA’s motion, and held that “a processor
subsystem . . . said processor subsystem determining . . . ,” should be construed
consistently through all the relevant claims, including Claim 28.
Now, on the eve of trial (trial was scheduled to begin on September 12, 2018), 5
Velocity seeks reconsideration of the original claim construction order through Claim
28 “because the Court adopted the reasoning from its original claim construction
ruling without any additional findings when construing previously unconstrued claim
28.” R. 481 at 7.
Velocity points to no reason for its delay in waiting two years to seek
reconsideration of claim construction. Its arguments could have been made at any
time during the claim construction proceedings or before summary judgment.
Velocity makes a perfunctory argument that it could not have raised “some of
[its] arguments until recently due to significant Federal Circuit opinions issued
within the past few months.” R. 481 at 1. But none of the cases it cites in support of
that argument cite any new principles of law. See R. 479 at 4; R. 481 at 2-5 (relying
on Apple Inc. v. Motorola, Inc., 757 F.3d 1285 (Fed. Cir. 2014); Chrimar Holding
On August 28, 2018, the Court informed the parties that it intended to deny
Velocity’s motion to reconsider and asked the parties whether they wished to proceed
with the trial. The parties agreed that they would seek final judgment rather than
proceed to trial, and the Court vacated the trial date. R. 482.
5
8
Company, LLC v. ALE USA Inc., 732 Fed. App’x 876, 885 (2018) (decided May 8,
2018) (citing Williamson for the proposition that a claim term that has an understood
meaning in the art as reciting structure is not a nonce 6 word triggering § 112,¶ 6);
Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007 (2018) (decided June 1, 2018)
(holding the district court failed to undertake the relevant inquiry on claim
construction—“whether the words of the claim are understood by persons of ordinary
skill in the art to have a sufficiently definite meaning as the name for structure” and
make related factual findings based on intrinsic and extrinsic evidence). 7
Velocity could and should have made its arguments—both as to the meansplus-function limitation and whether Claim 28 should have been included in that
construction—before Judge Darrah. A motion to reconsider is not an opportunity to
“relitigate[e] arguments that the Court previously rejected or [to argue] issues that
In the patent context, “nonce” words are “[g]eneric terms such as ‘mechanism,’
‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal
constructs[.] [They] may be used in a claim in a manner that is tantamount to using
the word ‘means’ because they ‘typically do not connote sufficiently definite structure’
and therefore may invoke § 112, para. 6.” See Williamson v. Citrix Online, LLC, 792
F.3d 1339 (Fed. Cir. 2015).
6
The court in Zeroclick relied on Williamson v. Citrix Online, LLC, 792 F.3d 1339
(Fed. Cir. 2015), Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d
696, 702-04 (Fed. Cir. 1998), and Cole v. KimberlyClark Corp., 102 F.3d 524, 531 (Fed.
Cir. 1996), as well as other cases to make its findings, but did not recite new law. As
explained by Williamson, the district court necessarily must make factual findings
related to intrinsic and extrinsic evidence for the Federal Circuit to review those
determinations. Williamson, 792 F.3d at 1346 (“Regarding questions of claim
construction, including whether claim language invokes 35 U.S.C. § 112, ¶ 6, the
district court’s determinations based on evidence intrinsic to the patent as well as its
ultimate interpretations of the patent claims are legal questions that we review de
novo.”). At most, Zeroclick reiterated the analysis district courts must take during
claim construction.
7
9
could have been raised during the consideration of the motion presently under
reconsideration.” Caine, 897 F. Supp. 2d at 717. See also United States v. Harris, 531
F.3d 507, 513 (7th Cir. 2008) (“Under the law of the case doctrine, a court generally
should not reopen issues decided in earlier stages of the same litigation . . . [T]he
doctrine authorizes such reconsideration of a previous ruling in the same litigation if
there is a compelling reason, such as a change in, or clarification of, law that makes
clear that the earlier ruling was erroneous.”); Galvan v. Norberg, 678 F.3d 581, 587
(7th Cir. 2012) (explaining that reassigned judges should “abide by the rulings of the
first judge unless some new development, such as a new appellate decision, convinces
him that his predecessor’s ruling was incorrect”).
Velocity has had numerous opportunities over the last two years to file a
motion to reconsider the Court’s original claim construction order. 8 It failed to do so
until three weeks before trial. The parties have spent years and significant resources
litigating this case. The expert discovery alone is substantial—the parties’ expert
reports span hundreds of pages and the parties collectively engaged at least six
experts. Velocity has waived its ability to ask for reconsideration of the Court’s claim
Indeed, when FCA filed a motion to reconsider parts of the Court’s recent summary
judgment ruling, R. 454, Velocity still did not file a motion to reconsider the previous
claim construction ruling. Instead, it criticized FCA’s motion, stating “the Court
plainly spent substantial time pouring over the facts before rendering its decisions.
While Velocity respectfully disagrees with some of this Court’s rulings, only FCA has
the temerity to suggest that the Court ‘patently misunderstood’ FCA or ‘made an
error not of reasoning but of apprehension.’” R. 462 at 2. Further, as the Court
explained in its summary judgment opinion, FCA’s request regarding construction of
Claim 28 was not a request to redo the claim construction order, as Velocity requests
here. Rather, it was a discrete request to apply the claim construction to Claim 28,
which has identical language to the remaining claims.
8
10
construction order. See Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1385 (Fed.
Cir. 2016), cert. denied, 137 S. Ct. 1213 (2017) (collecting cases for the proposition
that a district court has discretion to find waiver regarding claim construction raised
late in the proceedings).
II.
Even if the Court Were to Reconsider Claim Construction, It Would
Reach the Same Result
Acknowledging Velocity’s motion to reconsider, the Court will conduct a claim
construction analysis as to Claim 28. 9 This analysis applies to the Court’s first claim
construction as well, because all the claims have similar language, and Claim 28
contains the narrowest construction. See supra n.4. The result is the same—the “a
processor subsystem . . . said processor subsystem determining” language in ‘781
Patent is properly construed with a means-plus-function limitation. 10
Claim 28 of the ‘781 patent recites an:
Apparatus for optimizing operation of a vehicle, comprising:
a plurality of sensors coupled to a vehicle having an engine, said
plurality of sensors, which collectively monitor operation of said vehicle,
including a road speed sensor, a manifold pressure sensor and a throttle
position sensor;
a processor subsystem, coupled to each one of said plurality of sensors,
to receive data therefrom;
The Court relies on the parties’ original claim construction briefs, the transcript of
the Markman hearing, the summary judgment briefs, and the arguments the parties
make on the motion to reconsider currently before the Court. Velocity has had many
opportunities (before two judges) to convince the Court of why this language should
not be construed with a means-plus-function limitation.
9
Because the Court finds Claim 28 does not recite sufficient structure, the Court
finds that the broader claims likewise fail to recite sufficient structure, and the
presumption against § 112, ¶ 6 is overcome.
10
11
a fuel overinjection notification circuit coupled to said processor
subsystem, said fuel overinjection notification circuit issuing a
notification that excessive fuel is being supplied to said engine of said
vehicle;
said processor subsystem determining whether to activate said fuel
overinjection notification [circuit] 11 based upon data received from said
road speed sensor, said throttle position sensor and said manifold
pressure sensor.
R. 344-1, ‘781 Pat., at 20.
Velocity first argues that the Court erred in holding that Claim 28 should be
governed by 35 U.S.C. § 112, ¶ 6 because the claims are not drafted in the traditional
means-plus-function format. But simply because a presumption exists does not mean
that presumption cannot be overcome. The Court finds that the intrinsic and extrinsic
evidence demonstrates that Claim 28 is properly construed with a means-plusfunction limitation, as follows.
A patent claim may be expressed using functional language. See 35 U.S.C. §
112, ¶ 6; Williamson, 792 F.3d at 1347-49. § 112, ¶ 6 provides that a structure may
be claimed as a “means . . . for performing a specified function” and that an act may
be claimed as a “step for performing a specified function.” Masco Corp. v. United
States, 303 F.3d 1316, 1326 (Fed. Cir. 2002). “To determine whether § 112, ¶ 6 applies
to a claim limitation, our precedent has long recognized the importance of the
Claim 28 states “fuel overinjection notification sensor” rather than “fuel
overinjection notification circuit.” R. 344-1 at 20:53. FCA represented that the parties
treated the claim term as if it recites a “circuit” rather than a “sensor” and that the
issue is not material to the limitation’s claim construction. R. 350 at 11. See also CBT
Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir. 2011) (district
courts may correct obvious errors in patent claims).
11
12
presence or absence of the word ‘means.’” Williamson, 792 F.3d at 1348. The failure
to use the word “means” creates a rebuttable presumption (though not a “strong”
presumption) that § 112, ¶ 6 does not apply. Id. at 1348-49. That presumption can be
overcome, and § 112, ¶ 6 will apply, “if the challenger demonstrates that the claim
term fails to recite sufficiently definite structure or else recites function without
reciting sufficient structure for performing that function.” Id.
Here, there is a rebuttable presumption that § 112, ¶ 6 does not apply because
the claim does not recite the word “means.” Therefore, the analysis proceeds in two
steps. First, the Court must determine whether the phrases are in means-plusfunction form pursuant to 35 U.S.C. § 112, ¶ 6. See Robert Bosch, LLC v. Snap-On
Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014). If the Court determines that the phrase
recites a means-plus-function limitation, then the Court proceeds to the next step and
attempts “to construe the disputed claim term by identifying the corresponding
structure, material, or acts described in the specification to which the term will be
limited.” Id. If the Court is unable to identify any “corresponding structure, material,
or acts described in the specification,” the claim term is indefinite. Id.
The claimed limitation in Claim 28 is “processor subsystem determining
whether to activate said fuel overinjection notification sensor based upon data
received from said road speed sensor, said throttle position sensor and said manifold
pressure sensor.” The function in Claim 28 is “determining whether to activate the
fuel overinjection notification sensor” based on the data received from the three
sensors. The “means for determining” that function is a “processor subsystem.” But
13
“processor subsystem” 12 does not define sufficient structure for performing that
function. 13 Instead, the term “processor subsystem” here refers only to a general
category of what can perform the specified function and as a result, does not identify
sufficient structure to avoid § 112, ¶ 6.
Both intrinsic and extrinsic evidence support that construction. First, the
claim limitation is drafted in the same format as traditional means-plus-function
limitations when the word “means” is substituted for “processor subsystem”—“means
[for] 14 determining whether to activate said fuel overinjection notification sensor
based upon data received from said road speed sensor, said throttle position sensor
and said manifold pressure sensor.”
Second, “processor subsystem” in the ‘781 Patent is a nonce word, such as
“device” or “module,” because it is defined only by the function it performs, without
FCA presented a dictionary definition that “subsystem” means “a major part of a
system which itself has the characteristics of a system, usually consisting of several
components.” R. 76 at 8.
12
The Court acknowledges that Judge Darrah found that “one of ordinary skill in the
art would understand that ‘processor’ encompasses a microprocessor or
microcontroller—structural terms.” R. 114 at 12. Here, the Court finds “processor
subsystem” is a nonce word because of the second part of the claim term (“subsystem”)
and the patent’s description of “processor subsystem.” The difference between Judge
Darrah’s ruling and the Court’s ruling is not material, however, because Judge
Darrah likewise found that the patent provided for several different functions “that
may be generally described as receiving information from the sensors, exchanging
data with the memory subsystem, and determining whether to activate a notification
circuit” but did not provide sufficient structure for performing those functions. Id. at
13. As a result, the claim limitation is subject to § 112, ¶ 6.
13
Courts apply the presumption “when a claim uses the word ‘means’ as a noun in
the claim: a ‘means’ for doing something.” Robert Bosch, LLC v. Snap-On Inc., 769
F.3d 1094, 1098-99 (Fed. Cir. 2014).
14
14
providing additional structure. See Joao Control & Monitoring Sys., LLC v. Protect
Am., Inc., 2015 WL 4937464, at *8 (W.D. Tex. Aug. 18, 2015) (“processing device” as
used in the disputed claims was “purely functional drafting of the claims—and [a]
lack of corresponding structure” required § 112, ¶ 6 construction); Intellectual
Ventures I, LLC v. Canon Inc., 2015 WL 1458035, at *14 (D. Del. Mar. 27, 2015) (claim
term with “processing device” description did not disclose sufficient structure for
“check[ing] if there is another scan job; and transfer[ing] the final image to the
application program” because a person of ordinary skill in the art would not
understand “processing device” to be inherently capable of performing the function).
The patent explains only what a “processor subsystem” may be: “the system includes
a processor subsystem, for example, a microprocessor.” R. 344-1, ’781 Patent, at 5:5455 (emphasis added). Velocity’s expert admitted during his deposition that a
“processor subsystem” is not necessarily a microprocessor and that the meaning of
“processor subsystem” depends on each claim limitation’s function:
Q. Okay. And your interpretation of the processor subsystem—what’s
getting that data—is a microprocessor?
A. It can be. It can be others. . . . Probably a microprocessor but it can be
something else.
Q. Okay. Is it any microprocessor? Or does it have to be a specially
programmed microprocessor?
A. Actually, it—you don’t have to—as I said in page 28, “that there are
a number of ways to implement the claim structure—implement the
claimed structure that would vary based on a number of factors, such as
vehicle attributes, operating conditions, et cetera.” So it’s just—it has to
do with what’s in that claim limitation.
15
R. 96-1 at 161:5-19 (emphasis added). 15 But “merely listing examples of possible
structures is insufficient to avoid invocation of § 112, ¶ 6. Indeed, means-plusfunction language that defines a category in functional terms will typically cover
examples of structures that fall within it.” Robert Bosch, 769 F.3d at 1101.
Finally, the specification generally indicates that the system exchanges data
but does not teach how the “processor subsystem” receives and processes data. See id.
at 1100 (specification that did not teach how the “program recognition device”
receives and processes signals, as the words “signal” and “process” are not even in the
specification, did not recite sufficient structure); compare M2M Sols. LLC v. Sierra
Wireless Am., Inc., 2015 WL 5826816, at *3 (D. Del. Oct. 2, 2015) (“processing module”
sufficiently contained structure because the claim term described the “how”—the
“claim language stated that the particular manner by which the ‘processing module’
Velocity argues that because “FCA chose to have its claim construction expert
remain silent on the proper construction of the ‘processor subsystem’ limitations,
Velocity’s expert’s opinion that the claim term recites ‘a specific type of structure’ was
unrebutted.” See R. 481 at 8. The Court finds the expert report, R. 85-1 ¶ 63-65, less
persuasive than his deposition testimony and the patent’s intrinsic evidence. The
Court finds particularly troubling the expert’s finding that “there are a number of
ways to implement the claimed structure that would vary based on a number of
factors, such as vehicle attributes, operating conditions, etc. As a person of ordinary
skill in the art, I would be able to implement the claimed ‘determining, based upon
data received from said plurality of sensors, when to activate said’ claimed
notification circuits in any number of ways based on the factors noted above.” Id. at
¶ 65. The expert’s finding that the function could be implemented “in any number of
ways” supports both Judge Darrah and this Court’s finding that the claim term fails
to recite sufficient structure, and as a result, the claim term is subject to § 112, ¶ 6.
See Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“A
patentee cannot avoid providing specificity as to structure simply because someone
of ordinary skill in the art would be able to devise a means to perform the claimed
function. To allow that form of claiming under section 112, paragraph 6, would allow
the patentee to claim all possible means of achieving a function.”).
15
16
can carry out authenticating is ‘by determining if at least one transmission contains
the coded number.”). On summary judgment, Velocity argued that the sensors
provide sufficient structure to the claim. R. 370 at 15. But the sensors only provide
data inputs, they do not “determine.” The claim here describes the input as coming
from the sensors, and it describes the output, as activating the fuel overinjection
notification circuit, but leaves a “black box” because it does not tell the reader how to
get from the input to the output. FCA has overcome the presumption against applying
§ 112, ¶ 6—Claim 28 contains the same “black box recitation of structure for providing
the same specified function as if the term ‘means’ had been used,” and is appropriately
construed with a means-plus-function limitation. See Williamson, 792 F.3d at 1350. 16
Comparing the claim here with the cases Velocity cites shows the distinction. In
Masimo Corp. v. Philips Elecs. N.A. Corp., 2015 WL 7737308, at *8 (D. Del. Dec. 1,
2015) the claim term at issue was “a processor configured to perform a method
comprising . . . selecting one of the plurality of possible oxygen saturation values as
an oxygen saturation measurement based upon an analysis to determine which of the
plurality of possible oxygen saturation values corresponds to the oxygen saturation of
the pulsing blood.” Unlike here, that claim term describes how the processor performs
the function—it selects one of the oxygen saturation values as an oxygen saturation
measurement based upon an analysis of the oxygen saturation values and the oxygen
saturation of the pulsing blood. In Syncpoint Imaging, LLC v. Nintendo of Am. Inc.,
2016 WL 55118, at *16 (E.D. Tex. Jan. 5, 2016), the claim at issue recited: “processing
the image to detect position of the optical cursor and at least one property of the
optical cursor and for converting the position and at least one property to
corresponding commands to control the computer and move an internal cursor to a
position corresponding to the optical cursor while the optical cursor remains within
the output displayed on the screen.” See also Linear Tech. Corp. v. Impala Linear
Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004) (holding that the objectives and outputs
of the “circuit for monitoring a signal from the output terminal to generate a first
feedback signal” limitation are “monitoring a signal from the output terminal” and
“generating a first feedback signal”). In these cases, the input and how the input
affected the output is described in the claim limitation (i.e. monitoring a signal and
giving a feedback signal or moving the cursor based on the position), giving structure
to the processor. Here, no such structure is given to “processor subsystem.”
16
17
Because the Court finds § 112, ¶ 6 applies, it must “construe the disputed claim
term by identifying the corresponding structure, material, or acts described in the
specification to which the term will be limited.” Robert Bosch, 769 F.3d at 1097. Here,
an algorithm is required to “properly define[] the scope of the claim and prevent[]
pure functional claiming.” Core Wireless Licensing S.a.r.l. v. Apple Inc., 853 F.3d
1360, 1366 (Fed. Cir. 2017); Cloud Farm Assocs. LP v. Volkswagen Grp. of Am., Inc.,
674 F. App’x 1000, 1010 (Fed. Cir. 2017) (“Because this means-plus-function term is
a computer-implemented one, the patent must disclose more than a general purpose
processor; it must also include an algorithm to perform the function.”). 17 As the Court
described on summary judgment, the algorithm to activate the “fuel overinjection
notification circuit,” is illustrated in Figs. 2A-2B and described in 11:13-13:7 of the
‘781 Patent. 18
On summary judgment, FCA argued in the alternative that if Claim 28 is not
construed with a means-plus-function limitation, it is invalid in view of prior art. R.
350 at 12-16. FCA contended that “Hibino” is a prior art patent from Honda issued in
1987, nearly a decade before the ‘781 Patent’s filing date and discloses a driver
notification system that also has a road speed sensor, a manifold pressure sensor, and
a throttle sensor, like Claim 28. The Court did not reach the issue of invalidity
because it construed Claim 28 with a means-plus-function limitation.
17
Velocity argues this construction improperly excludes relevant portions of the
corresponding algorithm. But Velocity failed to point to what it believes is the correct
algorithm during claim construction. See R. 114 (“[Velocity] provides no alternative
constructions for a means-plus-function construction.”). On summary judgment,
Velocity indicated the patent described a third algorithm as well. R. 370 at 14. But
that “third algorithm,” representing boxes 106-108 of Figure 2B, is only a direction to
repeat the notification until engine speed (through RPM) is decreasing. See R. 344-1
at 13:8-18. Unlike the acceleration and the lugging scenarios, which represent
separate algorithms for determining whether to activate the fuel overinjection
notification circuit, see R. 442 at 23, this “third algorithm” is merely part of the
algorithm that notifies the system to continuing “looping.” On its own, it does not
18
18
Because Velocity could not present any evidence that FCA’s products infringed
that algorithm, Velocity could not show a disputed fact on infringement, which is why
the Court granted summary judgment. There is no valid reason given to reconsider
that decision here.
CONCLUSION
For the foregoing reasons, the Court denies Velocity’s motion for
reconsideration, R. 479.
ENTERED:
Dated: September 4, 2018
Honorable Thomas M. Durkin
United States District Judge
point to an algorithm to determine whether to activate the fuel overinjection
notification, and has no effect on the decision here.
19
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?