Fulhorst v. Toyota Motor Corporation

Full title: FULHORST v. TOYOTA MOTOR CORPORATION

Court: United States District Court, E.D. Texas, Marshall Division

Date published: Feb 20, 2003

2:00-CV-71 (E.D. Tex. Feb. 20, 2003)

Opinion

2:00-CV-71

February 20, 2003

MEMORANDUM ORDER

DAVID FOLSOM, District Judge

I. BACKGROUND

Fulhorst sued Toyota for infringement of claims 3 and 5 of U.S. Patent 4,523,178 (the "Fulhorst patent" or the" `178 patent"). Before the Court is Toyota's "Motion for Reconsideration" of denial of its motion for summary judgment of non-infringement of claims 3 and 5 of the Fulhorst patent (Dkt. No. 188). For the reasons set forth herein, the motion will be GRANTED. Accordingly, Toyota's previously urged Motion for Summary Judgment (Dkt. No. 74) will be GRANTED, but on the grounds now addressed by the Court.¹ Additionally, Fulhorst's various objections to the claim construction proposed by the Special Master, which was adopted by the Magistrate Judge, (Dkt. No. 174) are OVERRULED.

1 Procedurally, this Order rules on Toyota's Motion for Reconsideration. The Opinion and Order grant summary judgment for Toyota where the Court previously had denied it. However, the Court now grants summary judgment based on wholly different grounds than were addressed in its previous Order, which denied summary judgment. In fact, the Court has not before passed on the arguments now addressed in this Order. This is because the parties agreed that, of the several grounds urged for granting Toyota's Motion for Summary Judgment Motion (Dkt. No. 74), one of the grounds did not depend on the claim construction. Both parties objected to the claim construction, and they sought determination of the summary judgment motion based on grounds unrelated to the claim construction before any others were addressed. Therefore, the Court took up that issue first, i.e. whether Festo Corp. v. Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000) (en banc) and Bose Corporation v. JBL, Inc. 275 F.3d 1354, 61 USPQ 2d 1216 (Fed Cir. 2001) barred the use of the Doctrine of Equivalents to prove infringement. The Court does not retreat from its earlier analysis and conclusion; it was substantially correct. Accordingly, this Order merely adds to the discussion in the Court's previous Order. See Dkt. No. 185. The earlier opinion's denial of summary judgment, however, is replaced here by the granting of the same.

Claim 5 is dependant on claim 3. If claim 3 is not infringed, claim 5 is not infringed. Claim 3 in essential parts is expressed in means-plus-function format.

35 U.S.C. § 112, ¶ 6 states that:

An element in a claim for combination may be expressed as a means or step for performing specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Literal infringement of a means-plus-function claim requires that the relevant structure in the accused device perform the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification. Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267, 51 USPQ2d 1225, 1229 (Fed. Cir. 1999), Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1320, 50 USPQ2d 1161, 1168 (Fed. Cir. 1999); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934, 4 USPQ2d 1737, 1739 (Fed. Cir. 1987) (en banc). Functional identity and either structural identity or equivalence are both necessary. See Pennwalt, 833 F.3d at 934, 4 USPQ2d at 1739.

If an accused device does not have the identical function of the means-plus-function element, the whole accused device does not literally infringe under § 112, ¶ 6.

Claims 3 and 5 were construed in the Amended Report and Recommendation of Special Master on Interpretation of Claims 3 and 5 of U.S. Patent 4,523,178 filed May 21, 2001 (the "SMCI") and later by Magistrate Judge McKee's Order of September 13, 2001.

There are five clauses to claim 3 of the `178 patent, numbered (a) through (e):

3. "A wireless alarm system comprising:

(a) a portable radio frequency transmitter for transmitting a coded signal;

(b) a radio frequency receiver for receiving said coded signal, said radio frequency received comprising:

(1) first means for detecting said coded signal

(2) second means activated in response to the detection of said coded signal;

(c) vehicle means activated in response to said second means being activated for indicating an alarm condition;

(d) said second means including a timer activated in response to the detection of said coded signal for operating said vehicle means to indicate an alarm condition, said timer including reset means to restore said timer to its initial deactivated state; and

(e) a vehicle including an ignition circuit and means in said ignition circuit operative during the start-up and shut-down cycle of said ignition circuit for operating said reset means to restore said timer to its initial deactivated state.

The Report and Recommendation of United States Magistrate Judge dated August 10, 2001 (the "MJRR") found that there were genuine issues of material fact regarding literal infringement of all of clauses (a) through (d), as construed, but not clause (e), a means-plus-function clause, because the accused Toyota devices did not have the identical function required by means-plus-function clause (e), as construed (hereinafter, the means-plus-function clause (e) of claim 3 is called "claim element 3(e)").

Proof in the record includes the opinion by Fulhorst's expert witness. The expert testified that the function of Toyota's structure is the equivalent of the function stated in the claim element 3(e), as construed in the SMCI. This proof is grounded in reliance upon the common law "doctrine of equivalents" to prove infringement (for brevity, the doctrine of equivalents hereinafter is identified by the acronym "DOE"). As stated by the Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), 12 S.Ct. 1831, 1838, "[t]he doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes."

The Report and Recommendation of Special Master on Toyota Motor Corporation's Motion for Summary Judgment of Non-Infringement of Claims 3 and 5 of U.S. Patent 4,523,178, filed June 22, 2001 (the "SMNI") did not make a recommendation on whether there was no genuine issue of material fact that the function of Toyota's structure is not the equivalent of the function stated in the claim element 3(e), as construed in the SMCI, because under the then controlling law of Festo Corp. v. Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000) (en banc) (hereinafter called "Festo I"), Fulhorst was estopped from proving infringement under the DOE if the claim element in question had been narrowed in prosecution. The SMNI concluded that the claim element 3(e) had been involved in an amendment of the same sort that was treated as narrowing in Festo I. Under the rule of Festo I, this barred Fulhorst from proving infringement by resort to equivalence of the function of the claim element 3(e). Accordingly, Magistrate Judge McKee's recommendation was that Toyota's motion for summary judgment of non-infringement be granted.

After Judge McKee's recommendation, the Court of Appeals for the Federal Circuit, in Bose Corporation v. JBL, Inc., 275 F.3d 1354, 61 USPQ 2d 1216 (Fed Cir. December 2001), implicitly held that the kind of amendment made by Fulhorst was not a narrowing amendment for purposes of application of the rule of complete bar created by Festo I. Since the amendment made by Fulhorst was not a narrowing amendment causing complete bar, Fulhorst would not be barred from proving infringement of the claim element 3(e) under the DOE.² Based on Bose, this Court issued its Memorandum Order, dated March 27, 2002, denying Toyota's motion for summary judgment of non-infringement.³

2 At page 10 of the Memorandum Order, the statement occurs that "Both the Special Master and Judge McKee determined that Toyota's devices do not infringe Fulhorst's patent either literally or under the doctrine of equivalents (Judge McKee's RR at 31; SM RR on Noninfringement at 54.)." The statement in its brevity is imprecise. The finding in respect to the elements (a)-(d) of claim 3 was that (i) there was a genuine issue of material fact whether there was literal infringement (for a means-plus-function element, literal infringement is proved by finding the same or equivalent structure in the accused device if the function in the accused device is the same as stated in the claim element), (ii) there was no genuine issue of material fact that the function of element (e) of claim 3 was not the same (so there would be no literal infringement of claim 3), and (iii) Fulhorst was barred from proving infringement by equivalents under the DOE because of prosecution history estoppel under the holding in Festo I. Thus there was no genuine issue of material fact that Toyota's structure did not infringe claim 3. Claim 5 dependent from claim 3 was not infringed because claim 3 was not infringed.

3 After issuance of the Memorandum Order, the U.S. Supreme Court on May 28, 2002, in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), 122 S.Ct. 1831 ("Festo II) decided the appeal of Festo I, vacating the judgment and remanding the case to the Federal Circuit for proceedings in accordance with its decision. The Supreme Court re-instated the flexible bar rule that had been in effect prior to Festo I. Under Festo II, the issue of whether prosecution history estoppel prevents proof of infringement of a claim element by the DOE still depends on whether a claim amendment was narrowing, but requires an examination into the reasons for the amendment. A patentee's rationale for an amendment, as ascertained from the written record of the prosecution history, gives a court a basis from which to determine if the patentee is attempting to recapture ceded ground when seeking to prove infringement by the DOE. If no reason is ascertainable, there is no rationale which the court can apply to test whether ceded ground is sought; so, complete estoppel continues to apply in that situation. Since there was no narrowing amendment by Fulhorst, Festo II does not affect the Memorandum Order.

As set forth above, the MJRR found there is a genuine issue of material fact whether elements (a)-(d) of claim 3 are literally infringed. Toyota's motion for reconsideration therefore returns us to the pivotal issue of whether there is a genuine issue of material fact that the functionality requirement of claim element 3(e) is not infringed by equivalency under the DOE.

Summary judgment is improper "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party" Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). When ruling on a motion for summary judgment, all of the nonmovant's evidence is to be credited, and all justifiable inferences are to be drawn in the nonmovant's favor. See id. at 255.

The Federal Circuit, in Sage Products v. Devon Industries, Inc., 126 F.3d 1420 (Fed. Cir. 1997), has said that:

Although equivalence is a factual matter normally reserved for a fact finder, the trial court should grant summary judgment in any case where no reasonable fact finder could find equivalence.

If a reasonable jury could not find that the function of Toyota's structure was the equivalent of the function stated in claim element 3(e) as interpreted, Toyota's motion for summary judgment should be granted. If a reasonable jury could find that the function of Toyota's structure was the equivalent of the function stated in claim element 3(e) as interpreted, there must still be considered whether there is a genuine issue of material fact whether the tests for equality of "way" and "result" are met. For infringement under the DOE, Toyota's accused structure must accomplish either the same or substantially the same result in the same or substantially the same way as the structure described in the Fulhorst patent that corresponds to the function set forth in the claim element 3(e), as interpreted. See generally, Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 41 USPQ2d 1865 (1997).

For purposes of Toyota's motion for reconsideration and a grant of summary judgment of non-infringement, Toyota must show that there is no genuine issue that, with respect to the means in the ignition circuit element of the claim element 3(e), as construed, Fulhorst does not show equivalence of at least one of function, way or result in the accused Toyota systems. This is because Fulhorst bears the burden of demonstrating that the Toyota devices are equivalent as to all three of these elements. If no reasonable jury could find equivalence in one of function, way or result in the accused Toyota systems on the basis of the record, then summary judgment of non-infringement must be granted to Toyota.

Analysis of Toyota's reasons advanced for reconsideration of its motion for summary judgment rests at least in part on the claim construction of the claim element 3(e). The meaning of the claim element 3(e), was construed by the Special Master in the SMCI.⁴ Following the SMCI, Fulhorst and Toyota filed objections. These objections were not further addressed by the Special Master, and were in effect rejected by Magistrate Judge McKee's Order of September 13, 2001. Fulhorst, in a filing dated September 28, 2001, objected to Magistrate McKee's adoption of the SMCI, essentially repeating verbatim the objections that Fulhorst had made to the SMCI. Toyota filed its objections too, in a filing dated October 4, 2001, incorporating by reference objections made in its filings of June 4, 2001 (Toyota's Objections to Special Master's Amended Report and Recommendation on Interpretation of Claims 3 and 5), June 7, 2001 (Response and Objections to Plaintiff's Objections to Special Masters Amended Report and Recommendation on Claim Interpretation), and July 20, 2001 (Response to Plaintiff's Objections to the Report and Recommendation of Special Master on Toyota's Motion for Summary Judgment of Non-Infringement of Claim 3 and 5 of U.S. Patent 4,523,178). Toyota's October 4, 2001 filing in the same document responded to the objections made by Fulhorst.

4 The SMCI was preceded by a first report and recommendation on interpretation dated April 23, 2002, to which Fulhorst and Toyota each made objections. The Special Master then issued a "Report and Recommendation of Special Master on Toyota's and Fulhorst's Objections to the Special Master's Report and Recommendation of Interpretation of Claims 3 and 5 of U.S. Patent 4,523,178 on May 18, 2001", the findings of which were incorporated into the SMCI.

The parties argued to the Court that one of the many grounds then urged for granting summary judgment could be determined without reference to the disputed claim construction. Therefore, the Court first addressed whether Plaintiff would be estopped under Festo and Bose from arguing DOE. As a result of limiting its inquiry to those issues unrelated to the claim construction, as the parties urged, the Memorandum Order dated March 27, 2002, did not address the parties' objections to the claim construction. At most, it did so by implication in that the court continued using the same interpretation placed on the claims that Magistrate Judge McKee had adopted from the SMCI. Toyota objected in part to the SMCI, and argued for reconsideration. Fulhorst also objected to the claim construction of the element 3(e). Because the Court now relies on the previously adopted claim construction of claim element 3(e), and because the parties have previously objected to the Court's adoption of the claim construction, the Court now addresses the parties objections. However, before addressing these objections, it is appropriate to revisit the claim construction of the claim element 3(e), in light of the `178 patent disclosure.

II. INTERPRETATION OF CLAIM ELEMENT 3(e)

The principal issues on Toyota's motion for reconsideration and its motion for summary judgment of non-infringement hinge on the interpretation of the claim element 3(e), a means-plus-function element.

Construction of a means-plus-function limitation involves two steps. First, the claimed function must be identified. Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1324, 58 USPQ2d 1545, 1549 (Fed. Cir. 2001). The court must construe the function of a means-plus-function limitation to include the limitations contained in the claim language, and only those limitations. Lockheed Martin Corp. v. Space Sys./Loral, Inc., 249 F.3d 1314, 1324, 58 USPQ2d 1671, 168 (Fed. Cir. 2001). It is improper to narrow the scope of the function beyond the claim language. Id. It is equally improper to broaden the scope of the claimed function by ignoring clear limitations in the claim language. Id. Ordinary principles of claim construction govern interpretation of the claim language used to describe the function. Id.

After identifying the claimed function, the structure, if any, disclosed in the specification that corresponds to the claimed function must be determined. Id. In order to qualify as corresponding, the structure must not only perform the claimed function, but the specification must clearly associate the structure with performance of the function. B Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900 (Fed. Cir. 1997). This inquiry is undertaken from the perspective of a person of ordinary skill in the art. Amel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1378-79, 53 USPQ2d 1225, 1227-28 (Fed. Cir. 1999).

A. The Claim Element at Issue

Claim element 3(e) is:

(e) a vehicle including an ignition circuit and means in said ignition circuit operative during the start-up and shut-down cycle of said ignition circuit for operating said reset means to restore said timer to its initial deactivated state.

Claim element 3(e) has three function-related limitations that structure has to satisfy for there to be literal infringement. These three functional limitations (sometimes referred to hereinafter as the "triad") are:

1. the function to be performed: "operating said reset means"

2. the time during which the function is to be performed and completed: "operative during the start-up and shut-down cycle of said ignition circuit"

3. the functional result to be achieved: "to restore said timer to its initial deactivated state"

As specified in claim elements 3(b) and (d), the timer is included in the radio frequency receiver. The timer is activated in response to the detection of the coded signal. The timer includes the reset means to restore the timer to its original deactivated state.

B. The Sources for Interpretation found in the Fulhorst Patent

The Fulhorst patent shows two embodiments for his invention. One embodiment is described in reference to Fig. 3. The other embodiment is described in reference to Fig. 6. The descriptions of both embodiments refer to a description of a "start-up and shut-down cycle of an ignition circuit" which is illustrated in Fig. 4.

This is the relevant portion of Fig. 3:

This embodiment is first discussed in reference to automatically stopping the alarm. This is what the Fulhorst patent says (column 4, lines 41-57):

This paragraph tells us there are two ways in which the alarm is stopped. The first is an automatic shutoff of the alarm after fifty-five seconds: the timer has an automatic reset for deenergizing relay 96, which causes contacts 96 to open and discontinue the operation of the vehicle device 25 that was expressing an alarm condition. The second way is by using the starting system of the vehicle: the timer 90 is " also" reset to " its initial state" by "stepping the auto ignition system through its start-up and shutdown sequence in a manner to be described hereinafter."

The patent specification shows another embodiment for an automatic reset of the timer, the embodiment depicted in Fig. 6:

With respect to Fig. 6, the `178 patent says, at column 6, lines 18-31:

Following the first paragraph set forth above from the specification of the patent, the specification, at column 4, lines 64-65, referring to Fig. 4, describes an ignition circuit in the vehicle in which a starter coil is in series with an ignition switch:

The ignition circuit in which the starter coil is in series with the ignition switch is seen in Fig. 4:

The start-up and shut-down sequence, referred to in the preceding first two paragraphs describing the embodiments in Figs 3 and 6 where the paragraphs are marked by brackets, is set forth at column 5, lines 34-45, in reference to Fig. 4 above:

This latter paragraph is what the Special Master called the "Start-up and Shut-down Cycle Paragraph" in the SMCI, and is sometimes referred to as such herein.

Claim 5 provides the last intrinsic source of information in the `178 patent:

C. Use of the Intrinsic Bases for Interpretation of Claim Element 3(e)

1. The time during which the operation "operating said reset means" is to be performed (started and completed): "during the start-up and shut-down cycle of said ignition circuit"

Referring to the Start-up and Shutdown Cycle Paragraph quoted immediately above, the patent makes it clear that the starter coil (relay) and its operatively associated contacts 120 in the reset ground circuit are the only structure that are expressly linked to the claim element 3(e) functional completion requirement, that the means in the ignition circuit be "operative during the start-up and shut-down cycle of said ignition circuit." Specifically, the patent states:

When the ignition system of the vehicle is stepped through its start-up and shut-down sequence within 55 seconds of the operation of the alarm 25, the starter relay 104 is energized and then deenergized. (Col. 5, lines 34-37, emphasis added.)

This sentence could not be more clear: it links the "start-up and shut-down sequence" of "the ignition system" to " when " the starter relay 104 is "energized then deenergized." Implicitly, this means that the ignition circuit is stepped through its start-up and shut-down cycle " during" the period that starts when ignition switch 105 is closed (connected to the vehicle battery) to energize the starter relay (coil), and that ends when ignition switch 105 is re-opened (disconnected from the battery) to deenergize the relay (coil).

The patent continues in the next sentence, equating the "stepped" start-up and shut-down sequence of the ignition system with the start-up and shut-down cycle of the starter coil 104:

At the time the starter coil 104 completes its start-up and shut-down cycle, its contacts 120 (FIG. 4) close and open. (Col. 5, lines 37-39, emphasis added.)

This sentence is explicit: on start-up of the cycle, contacts 120 close (which is caused by energization of starter coil 104); on shut-down of the cycle contacts 120 open (which is caused by deenergization of starter coil 104). Coincident with, that is, " at the time " of opening of contacts 120, the start-up and shut-down cycle is " completed ."⁵ Since the opening of contacts 120 is also " when " the ignition system has been " stepped through its start-up and shut-down cycle", the patent is interchangeably referring to " the time " the starter coil 104 completes " its" cycle and the time " when " the ignition system is stepped through its "sequence."

5 The patent's two sentences flowing the sentence at column 5, lines 37-79 explain the consequence of closing contacts 120 (which occurs from energization of the coil in the start-up portion of the cycle), namely to ground the reset, which deenergizes relay 95, which opens contacts 96 to turn off the alarm:

The closing of the contacts 120 applies a ground to the reset terminals 4 and 8 of the timer 90. This action resets the timer 90 to its initial state to deenergize the relay 95. Thereupon, the contacts 96 open to deactivate the vehicle device 25. (Col. 5, lines 39-44.)

"At the time" the starter coil 104 "completes" its shut-down cycle, which corresponds to "when" starter relay 104 is deenergized, which equates to "when" the ignition system is stepped to its "shut-down", contacts 120 open,
The contacts 120 are opened to assume their initial position. (Col. 5, lines 44-45.)

Energization of starter coil 104 is caused when current from a battery is connected to starter coil 104. In Fig. 4, this is implicitly accomplished by closing ignition switch 105. Deenergization is caused when current to the starter coil is stopped. In Fig.4, this is implicitly accomplished by opening ignition switch 105. Since the patent clearly indicates that starter coil energization is "when" the ignition system is in "start-up" and starter coil deenergization is "when" the ignition system is in "shut-down", and since energization is implicitly caused by switching on ignition switch 105 and deenergization is implicitly caused by switching off ignition switch 105, "start-up" of the ignition circuit coincides with when the ignition switch 105 is closed and "shut-down" of the ignition circuit coincides with when ignition switch 105 is opened.

Ignition switch 105 is never mentioned in the Start-up and Shut-down Cycle Paragraph set out on page 13 above. Only operation of starter coil 104 and contacts 120 are described. Thus the sole contribution played by ignition switch 105 is inferred from operation of the starter coil 104. More precisely, the contribution of ignition switch 105 to accomplishment of the required functional triad is to enable operation of starter coil 104 and hence its associated contacts 120.

2. "Functional result: "to restore said timer to its initial deactivated state."

The functional result required by claim element 3(e) is "to restore the timer to its initial deactivated state." The meaning of this limitation was interpreted by the Special Master as restoring the timer to a state where it is ready to be activated by receipt of a transmitter signal that the receiver of the system recognizes. This interpretation is confirmed by the sources of interpretation in the specification of the patent set forth above. While claim 5 is directed to means structure for automatic reset and claim 3 is directed to means structure for operator intervention to reset the timer, the words for the functional result in the automatic reset of claim 5 are the same, verbatim, as the words for the functional result in the operator reset of claim 3, namely, "to restore said timer to its initial deactivated state." The Federal Circuit has held that a claim term should be construed consistently with its other places in the same claim or in other claims of the same patent. CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159, 42 USPQ2d 1577, 1586 (Fed. Cir. 1997) ("[W]e are obliged to construe the term `elasticity' consistently throughout the claims."); Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579, 34 USPQ2d 1673, 1679 (Fed. Cir. 1995) (holding that claim terms found in different claims should be interpreted consistently). Since identical functional result words are used as claim limitations in claim element 3(e) as in claim 5, the implication is that when the timer is restored to its initial deactivated state by operator intervention, the timer must have end up having the same state as when restored by automatic reset. Thus seeing what the specification tells us about the end state of automatic reset also informs us about what end state must exist upon operator intervention to restore the timer to its initial deactivated state.

Automatic Reset

The patent gives the state in which the timer ends up when automatically restored (claim 5 subject matter). The automatic reset functional result (alarm turned off, timer ready to be activated) occurs only if contacts 120 stay open (never close) while automatic reset stops output to coil 95, causing contacts 96 to open. The timer is ready to be activated, in short, ready to go, when contacts 96 open, because contacts 120 have never been closed to ground the timer.

Figs 3 and 6, in pertinent part depict the automatic reset structure.

Knowing that under automatic reset contacts 120 must be open to gain the functional result that the alarm is both turned off and the timer is ready to go, we now look at the subject matter about which we are concerned — means structure permitting operator reset.

Operator Reset

In the only described and depicted (Fig. 4) operator reset structure of the Fulhorst `178 device (claim 3 subject matter), a mechanism "in" the "ignition circuit" of a vehicle is provided for closing and then opening contacts 120. In a first operation or step, contacts 120 are first closed to apply a ground to the reset terminal of the timer (the terminal is at numeral 4 in Fig. 6). Reset of the timer stops the timer output to coil 95, causing contacts 96 to open to turn off alarm 25. In a second operation or step, contacts 120 are opened, making the Fulhorst `178 device ready to be activated.

Thus in the Fulhorst `178 device, whether reset is automatic (claim 5 subject matter) or performed by operator intervention (claim 3 subject matter), the alarm is always turned off when contacts 96 are opened, but the alarm timer is never ready to go if contacts 120 are not open.

Therefore to satisfy the functional result limitation of claim element 3(e), there must not only be structure "in" the "ignition circuit" of a vehicle that is operable to reset the timer to turn off the alarm (a first capability), but also there must be structure which puts the timer back to a condition where it is ready to go (second capability). The only mechanism that is described and depicted in the Fulhorst patent for allowing operator intervention to "restore said timer to its initial deactivated state" uses closing then opening of contacts 120. Closing and opening of contacts 120 is accomplished respectively first by energization of a starter coil 104 (on inferred closure of switch 105) and secondly by de-energization of the starter coil 104 (on inferred opening of switch 105).

In summary, the functional result limitation of claim element 3(e), "to restore said timer to its initial deactivated state," encompasses two steps or phases: (1) turning off the alarm, and (2) making the timer ready to go again.

3. Means "in said ignition circuit"

The Fulhorst patent, in the only description and depiction of structure (ignition switch, starter coil and ignition circuit) employed for operator reset and restoration of the alarm timer to its initial deactivated state, specifies that the arrangement of these structural components is in series:

"The switch 102 is in an ignition circuit 103 in series with a starter coil 104 and an ignition switch 105" (Column 4, lines 64-65, emphasis added)

This statement in made in reference to Fig. 4, which shows that the series arrangement is in serial order: ignition switch 105, then switch 102,⁶ then starter coil 104, then ignition circuit 103:

6 The significance of switch 102 is discussed below at part II.C.5.

In the typical multifunctional ignition switch found in modem automobiles and trucks, the switch is rotated clockwise from OFF to RUN (also called ON) then to START, and counterclockwise from START to RUN to OFF. Each of these switch positions corresponds to a terminal that the switch connects to battery power. The RUN terminal connects battery power directly to the ignition circuit without going to the starter coil. The START terminal connects battery power to the starter coil and to the ignition circuit. Since Fig. 4 shows only a single terminal of an ignition switch 105 connecting to starter coil 104 thence serially to ignition circuit 103, that is, since the starter coil 104 is in series connection interposed between the single terminal of switch 105 and ignition circuit 103, the single terminal can only be the START terminal of the conventional multifunction ignition switch. It cannot be the RUN (ON) terminal of a conventional multifunction ignition switch because the terminal connects serially to starter coil 104. Since a RUN terminal directly connecting to the ignition circuit is not shown by Fig. 4 and since a direct connection from ignition switch 105 to ignition circuit 103 is not described by words in the patent, it is concluded that a RUN connection of the conventional ignition switch is not corresponding structure "described in the specification" as required by 35 U.S.C. § 112, ¶ 6.⁷

7 An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure . . . in support thereof, and such claim shall be construed to cover the corresponding structure . . . described in the specification and the equivalents thereof. 35 U.S.C. § 112, ¶ 6 (emphasis added).

In Fig. 4, current flows from the battery⁸ across the START terminal through the starter coil and thence to the ignition circuit. In this sense, the starter coil 104 is "in" an "ignition circuit" in a vehicle. In a conventional multifunctional ignition switch, when the ignition switch START terminal is closed, the starter of the vehicle is stepped though the first part of the start-up and shut-down cycle, the starter coil is energized to switch a larger amperage battery cable to the starter motor to crank to start the car engine. Upon starting the car engine, the conventional ignition switch springs from the START position back to a RUN position (A RUN terminal is not shown in Fig. 4), switching off current from the switch to the starter coil, thus de-energizing the starter coil which in turn disconnects the larger amperage cable and its battery current to the starter motor, shutting down operation of the starter motor. This energization and deenergization of the starter coil is linked by the Start-up and Shut-down Cycle Paragraph to the start-up and shut-down cycle phraseology used in claim element 3(e). The spring back of the conventional ignition switch from START to RUN redirects current from the battery directly to the ignition system through the RUN terminal (not shown in Fig. 4). In a RUN position the engine remains running after having been started.

8 The battery is not shown in patent Fig. 4, but is understood, since that is the sole source of electricity in automotive circuits until after the car is running, when the alternator provides current for charging the battery and for ancillary electrical systems.

4. Structure corresponding to the functional triad

Only one organization of structure is described in the words and drawings of the patent that (i) is "in" "an ignition circuit" included in a vehicle, (ii) is "operative during the start-up and shut-down cycle of said ignition circuit", and (iii) provides the specified restoration function, which as interpreted, requires the timer to be restored to a state in which after turning off the alarm the timer is ready to go. That corresponding structure "in" an ignition circuit is the combination of (1) a starter coil in series with (2) an ignition switch, and (3) starter coil contacts in (4) a normally open ground circuit connected to the timer. See the SMCI, page 47.

5. Confirmation that the Foregoing Construction of Claim Element 3(e) is Correct

The patent application provides convincing intrinsic evidence that the "start-up and shut-down cycle" is wed to the START position of the ignition switch which is closed for starting ("start-up") and opened when the car is started ("shut-down" of starting). The patentee foresaw that by restoring the timer to its initial deactivated condition on moving the ignition key from the START terminal to deenergize the starter coil, the alarm would be ready to go when the car is started and running, and to prevent the alarm from being turned on while the car was being driven, the patentee specifically designed the transmitter that activates the timer (which turns on the alarm) to prevent the transmitter from operating while the car was running.

Referring to Fig. 5 of the Fulhorst patent (on the same sheet as Fig. 4):

the patentee's design switches on ("enables") the series circuit — containing the START terminal of the ignition switch, the starter coil and the ignition circuit — by closing series circuit contacts 102 when the transmitter case is inserted into case receptacle 101.⁹ This insertion pushes transmitter switch 110 against projection 111, opening switch 110, which disables the transmitter circuit, preventing it from working to start the timer so long as the transmitter case is in the receptacle.¹⁰ This is an "interlock" safety design: the transmitter case has to be inserted to connect the START terminal to the starter coil and turn off the alarm, but the alarm cannot be turned on while the case is inserted because the transmitter is disabled. It is an "interlock" safety design because the absence of the case locks out the starting circuit and the presence of the case locks out the transmitter, thus preventing the driver from being startled by the alarm being accidentally set off while the car is being driven.

9 Col. 4, line 58 through col. 5, line 2, emphasis added: "Mounted under the dashboard of the vehicle is a receptacle 100 (FIGS. 4 and 5) in which the housing 101 of the transmitter 15 is removably disposed. When the transmitter 15 is inserted into the receptacle 100, the housing 101 of the transmitter 15 engages a movable, leaf spring contact of a switch 102 to close the same. The switch 102 is in an ignition circuit 103 in series with a starter coil 104 and an ignition switch 105. The closing of the switch 102 enables the operation of the ignition circuit 103. When the transmitter housing 101 is removed from the receptacle 100, the switch 102 opens under the yieldable action of its movable, leaf spring contact. This action disables the ignition circuit 103."

10 Col. 5. lines 3-18, emphasis added: "Mounted in the transmitter housing 101 and connected to the voltage supply in series with the manually operated switch 31 is a switch 110 (FIGS. 2 and 5). The switch 110 includes a movable, leaf spring contact. Mounted in the receptacle 100 is a switch actuator 111. When the transmitter housing 101 is removed from the receptacle 100, the switch 110 is closed to enable the operation of the transmitter 15. When the transmitter housing 101 is inserted in the receptacle 100, the actuator 111 advances through an opening 112 in a wall of the transmitter housing 101 to engage the movable, leaf spring contact of the switch 110 to open the same. This action disables the operation of the transmitter 15. The electrical switch 110 closes when the transmitter housing 101 is removed from the receptacle 100 under the yieldable action of the leaf spring thereof."

If as plaintiff Fulhorst contends the RUN terminal of ignition switch 105 is all that is required by the "means" functional triad of claim element 3(e) — with the effect that the timer is not ready to go so long as the RUN terminal is switched ON and not turned to OFF — then there would be no need for the patentee to have provided an interlock safety to prevent the alarm from being accidentally set off while the car is being driven. There would be no need to disable the transmitter with the interlock because, with the interpretation Fulhorst urges (with the switch in RUN position the timer is not ready to go), no amount of transmitter signaling could activate the timer and accidentally set off the alarm. The fact that the patentee provides the safety interlock to safeguard against turning on the alarm while the car is being driven indicates that the claim element 3(e) means of operator intervention necessarily produces the result that the timer is restored to its initial deactivated state when the ignition switch is moved counterclockwise from its START terminal, as when the ignition switch "spring" back from START to RUN on release). This convincingly confirms that the patent does not have the interpretation that plaintiff Fulhorst contends.

III.

FULHORST'S OBJECTIONS ON CONSTRUCTION OF THE CLAIM ELEMENT 3(e)

A. Terms the Construction of Which Were Objected To

Fulhorst objected to the construction of three claim terms, all found in the claim element 3(e), and respectively emphasized in italics, underlining and bolding below for ready reference to their place in element 3(e):

1) " restor[ing] said timer to its initial deactivated state"

2) "start-up and shut-down cycle of said ignition circuit"

3) " means in said ignition circuit."

in:

(e) a vehicle including an ignition circuit and means in said ignition circuit operative during the start-up and shut-down cycle of said ignition circuit for operating said reset means to restore said timer to its initial deactivated state.

Fulhorst objected that the Special Master's construction contravened the patent specification, added limitations rather than define a disputed claim term, and included un-necessary structural details in the means element. These will be addressed sequentially.

1. "restor[ing] said timer to its initial deactivated state"

With regard to the term "restor[ing] said timer to its initial deactivated state", Fulhorst's points of argument were:

a. The specification does not distinguish between the "initial state" and the "deactivated state." They are one and the same.

For this point, Fulhorst relied on the following two excerpts from the specification: column 5, lines 41-43 ("This action resets the timer 90 to its initial state to deenergize the relay 95. Thereupon, the contacts 96 open . . ."):

and column 6, lines 27-29 ("The resetting of the timer 175 deactivates the timer 175 to deenergize the relay 95 for reopening the contacts 96."):

b. The restoring function is a one step process, not a two-step process.

For this point, Fulhorst states the timer is reset to its initial state by the application of the reset signal to the reset terminal of the timer, citing in the specification col. 5, lines 39-42 ("The closing of the contacts 120 applies the ground to the reset terminals 4 and 8 of the timer 90. This action resets the timer 90 to its initial state to de-energize the relay 95."):

Additionally, says Fulhorst, the timer is deactivated by the application of the reset signal of the reset terminal of the timer, citing column 6, lines 27-29 ("The resetting of the timer 175 deactivates the timer 175 to de-energize the relay 95 for reopening the contacts 96."):

c. The `178 patent is not inconsistent.

Fulhorst says the only detailed description of the "restoring" function in the specification is found at column 5, lines 39-45, and column 6, lines 23-30:

2. "start-up and shut-down cycle of said ignition circuit"

With regard to the term "start-up and shut-down cycle of said ignition circuit", Fulhorst's point is:

The special master erroneously found that the "start-up and shut-down cycle of said ignition circuit" means the "start-up and shut-down cycle of the starter coil in said ignition circuit." The "ignition circuit" and "starter coil" are different structures in the `178 patent. It is improper claim interpretation to either (1) substitute the one term for the other, or (2) to add the one term to the claim when the other term is already in the claim.

3. " means in said ignition circuit"

With regard to "means in said ignition circuit", Fulhorst's point is:

The phrase "operative during the start-up and shut-down cycle of said ignition circuit" limits "means in said ignition circuit." The only structure in the ignition circuit which is operative during the "start-up and shut-down cycle of the ignition circuit" is the ignition switch. While the starter coil and contacts may function in the "start-up cycle" of the ignition circuit, these elements do not function in the "shut-down" cycle of the ignition circuit.

B. Comments on Fulhorst's Objections

1. "[R]estor[ingJ said timer to its initial deactivated state"

Turning now to Fulhorst's arguments in opposition to the construction that has been given to the term "initial deactivated state", the patentee did not use the words "initial deactivated state" in the specification of the patent. Fulhorst in his objections has selected two sentences out of the specification, and juxtaposed these two sentences to demonstrate that on the one hand, the patentee talks about the action of the closure of contacts 120 resetting the timer "to its initial state to deenergize the relay 95", and on the other hand that "the resetting of the timer 175 deactivates the timer 175 to deenergize the relay 95 for reopening the contacts 96." Thus says Fulhorst, the words "initial" and deactivated" are one and the same. In other words they are interchangeable.

Fulhorst ties this "initial" or "deactivated" state of the timer to the condition of the timer when the starter coil contacts 120 are closed, not the state of the timer when the starter coil contacts 120 are open. He relies for this proposition by citation to the same two sentences from the specification he juxtaposed and expands the citation to include the sentence preceding the "initial state" sentence ("The closing of the contacts 120 applies the ground to the reset terminals 4 and 8 of the timer 90."). On the basis of these three sentences selected out of from the entire specification, Fulhorst argues the restoring function is a one-step process, not a two step process. That is, the restoring function is only causing the timer to go to a condition that makes the alarm stop, not that does that but also restores the timer to a condition when it is ready to go, capable of starting the alarm again.

Finally, on the last point made about the "restor[ing] said timer to its initial deactivated state" limitation, Fulhorst says the only detailed description of the "restoring" function in the specification is found that column 5, lines 39-45, and column 6, lines 23-30, so he concludes there is no inconsistency with his position and the remainder of the disclosure.

As can be seen by comparing the column 5, lines 39-45 excerpt on which Fulhorst relies to the full Start-up and Shut-down Cycle Paragraph from which the excerpt is taken, Fulhorst's arguments remove the context in which the excerpt appears.

The context in which the excerpt appears is the context clearly linked to the requirement of claim element 3(e), that the reset function be "operative during the startup and shut-down cycle". The only description in the patent of this cycle requires grounding contacts 120 be opened when the cycle "completes." Not until contacts 120 are opened is the timer able to be activated to turn on the alarm. When it is able to turn on the alarm, it is in its "initial deactivated state."

There is no explanation in the `178 patent whatever, much less an enabling disclosure, describing structure for performing a timer reset operation, whether automatically or through operation of structure in an ignition circuit, in a manner that, after deactivation of the timer to stop the alarm, has the timer in a suspended condition in which it cannot be activated. The only description is the one in which the timer is restored to readiness for activation, either by automatic reset when the timer times out or by cycling the starter coil through the start-up and shut-down cycle of an ignition circuit in the vehicle.

2. "[S]tart-up and shut-down cycle of said ignition circuit"

With regard to the "start-up and shut-down cycle of said ignition circuit" term broken out by Fulhorst, his point is that the "ignition circuit" and the "starter coil" are different structures, therefore it is improper to interpret the phrase the "start-up and shut-down cycle of said ignition circuit" to mean the "start-up and shut-down cycle of the starter coil in said ignition circuit."

The specification states that the ignition switch 105 and the starter coil 104 are in series with switch 102 "in" ignition circuit 103.

The way the patent expresses it, switch 102 is "in an ignition circuit." Starter coil 104 is as much "in" ignition circuit as switch 102 or ignition switch 105. It is correct but misleading to say as does Fulhorst that the "ignition circuit" and the "starter coil" are different structures. So are the "ignition circuit" and the "ignition switch" yet Fulhorst Fulhorst is not troubled that an ignition switch is a different structure than the ignition circuit when Fulhorst argues that the only structure "in" an ignition circuit in a vehicle corresponding to the function of claim element 3(e) is an ignition switch, and that only the operation of an ignition switch to close and open it corresponds to the description "operative during the start-up and shut-down cycle of an ignition circuit in a vehicle." The Start-up and Shut-down Cycle Paragraph does not expressly mention ignition switch 105 or the operation of ignition switch 105. As explained above at Part II.C., the only structure expressly associated with the requirement that the reset function occur "during the start-up and shut-down cycle of said ignition circuit" is the starter coil 104 and its associated contacts 120. Ignition switch 105 is implicated only by inference. The necessary inference is that ignition switch 105 can refer only to the START terminal of a multifunction key-switch in a modern vehicle. It is the starter coil in series in an ignition circuit that, in the context of the sole description in the patent, goes through a start-up and shut-down cycle. Starting requires a starter.

3. "[M]eans in said ignition circuit"

With regard to the to the "means in said ignition circuit" term, which is limited by the phrase "operative during the start-up and shut-down cycle of said ignition circuit", Fulhorst argues that the only structure in the ignition circuit which is operative during the "start-up and shut-down cycle of the ignition circuit" is the ignition switch, saying:

"While the starter coil and contacts may function in the `start-up cycle' of the ignition circuit, these elements do not function in the `shut-down' cycle of the ignition circuit."

This statement is belied entirely by the Start-up and Shut-down Paragraph, which expressly calls for stepping the starter coil 104 and starter coil contacts 120 "through" the cycle, so that the coil "completes" the cycle to open and close the contacts 120. Manifestly, starter coil 104 and contacts 120 function in the `start-up cycle' of the ignition circuit, when the starter coil energizes and the contacts close, and these components function in the `shut-down' cycle of the ignition circuit, when the starter coil deenergizes and the contacts open. The `178 patent does not describe how all that is needed is closure and opening of an ignition switch, without more, to turn off an expressing alarm and ready it for activation again.

In Budde v. Harley Davidson, Inc., 250 F.3d 1369, 58 USPQ2d 1801 (Fed. Cir. 2001), the Court emphasized the importance of not reading language in the specification in isolation, as Fulhorst does, by picking and choosing sentences apart from the context of the entire specification. The Court stated, 250 F.3d at 1380, that:

In construing terms used in patent claims, it is necessary to consider the specification as a whole, and to read all portions of the written description, if possible, in a manner that renders the patent internally consistent. In addition, it is important to construe claim language through the looking glass of a person skilled in the art.

C. Summary

In summary, Fulhorst's arguments disregard the entirety of the teaching of the patent concerning the only structure disclosed in the patent that corresponds to the function and other description of claim element 3(e). Fulhorst would have the Court look no further than a stated function in the claim language to determine a proper construction, rather than proceeding to identify the requisite corresponding structure that language necessarily evokes, if any. B Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900 (Fed. Cir. 1997). The claim language clearly points out a function for which a limited range of corresponding structures described in the specification could exist, and which function affirmatively precludes some structures from being so related. It follows then that the Court must adopt a claim construction that does not broaden the range of corresponding structures beyond those which are recognized by the plain language of the claim function and the specification description of the patent's function. The Special Master's construction meets these criteria. Accordingly, the construction given by the Special Master and the Magistrate Judge to the claim element 3(e) is specifically approved and adopted.

IV.

TOYOTA'S OBJECTION ON CONSTRUCTION OF THE CLAIM ELEMENT 3(e)

Toyota's objection¹¹ concerning the Special Master's construction of the claim element 3(e) is inclusion of contacts 120 in the "means in said ignition circuit" to the extent that the construction excludes the contacts from being in the "reset means" in clause (d) (see page 3 above).

11 Not relevant to Toyota's Request for Reconsideration as it relates to claim element 3(e) is another objection made by Toyota to the SMCI regarding the functional limitation for the vehicle means of clause (c) of claim 3. This objection is not considered in this Memorandum Order.

Claim 4 is directed to a limitation of elements in which the means in the ignition circuit include a starter coil and in which the reset means includes the contacts opened and closed through the energization and deenergization of the starter coil:

4. A wireless alarm system as claimed in claim 3 wherein said means in said ignition circuit for operating said reset means includes a starter coil, and said reset means includes contacts opened and closed through the energization and deenergization of said coil.

As explained by the Federal Circuit in Wenger Mfg., Inc. v. Coating Mach. Sys., Inc. (Case Number 00-1121, decided Feb. 6, 2000), in Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 19 USPQ2d 1367 (Fed. Cir. 1991), the disputed claim limitation was a "means for joining" a plurality of link ends for a conveyor belt. Id. at 1535 n. 3, 19 USPQ2d at 1369 n. 3. The corresponding structure in the specification consisted of link elements and cross members. Id. at 1536, 19 USPQ2d at 1370. The court rejected the argument that the "means for joining" limitation could not include a cross member because that limitation was explicitly recited in a dependent claim. The court explained that "[a] means-plus-function limitation is not made open-ended by the presence of another claim specifically claiming the disclosed structure which underlies the means clause or an equivalent of that structure." Id. at 1538, 19 USPQ2d at 1371. The court then held that "one cannot escape [the] mandate [of § 112, ¶ 6] by merely adding a claim or claims specifically reciting structure or structures." Id. Thus, Laitram held that the stringencies of a means-plus-function limitation are not to be avoided by the mere addition of a dependent claim that recites the corresponding structure disclosed in the specification. However, Laitram does not stand for the proposition that a means-plus-function limitation must be interpreted without regard to other claims.

With regard to whether inclusion of contacts 120 in the means in the ignition circuit necessarily precludes a construction in which the contacts can be read as being in the reset means of clause (d), the SMCI acknowledged that the patent did not mandate one construction or the other. The SMCI at page 36 was clear that the claim construction was not preclusive:

It is concluded that the contacts optionally may be either in the ignition circuit or in the reset circuit, but must be in one or the other of them. In accordance with the doctrine of claim differentiation, it may be inferred that since the patentee specifically claimed the contacts as part of the reset means in claim 4, the patentee did not constrain himself in claim 3 to the contacts 120 being part of the reset means only, but allowed himself the flexibility for the contacts 120 to be either in the "reset means" or in the "means in said ignition circuit".

This interpretation by the Special Master which construes the contacts that open and close responsive is energization and deenergization of the starter coil as being comprehended either in claim element 3(e) as means in said ignition circuit or in the reset means is approved and adopted.

V. TOYOTA'S REQUEST FOR RECONSIDERATION

The Special Master identified the structure that corresponds to the "means in [an] ignition circuit [of a vehicle]" as (1) an ignition switch, (2) a starter coil, (3) contacts that close and open on energization and deenergization of the starter coil during the start-up and shut-down cycle of the starter coil in the ignition circuit, and (4) a ground circuit connected on closure of the contacts to a terminal of a timer. The Special Master found that these contacts and the ground circuit permissibly alternatively could be construed to be structure corresponding to the "reset means" of clause (d). Toyota's request for reconsideration places the contacts and the ground circuit in the reset means. Thus Toyota refers to "ignition circuit means" comprising an ignition switch and a starter coil, and "reset means" comprising the contacts and ground circuit.

The alternative basis that Toyota advances in its motion for reconsideration are as follows:

Point 1. As a matter of law, the "means in [an] ignition circuit [in a vehicle]" of clause element (e) of claim 3 cannot be infringed under the DOE by an ignition circuit solution that is the same as a solution that Fulhorst possessed at the time the application for the `178 patent was filed but which he did not disclose in the patent application. The Toyota ignition circuit solutions, to the extent they are the same as the undisclosed ignition based solutions, cannot be captured by the DOE.

Point 2. As a matter of law, Fulhorst cannot employ the DOE to eliminate the function, or the structure corresponding to the function, of the "ignition circuit means" or the "reset means."

Point 3. As a matter of law, the combination of features which Fulhorst asserts to be the equivalents of the elements of claim 3 and 5 would have been rejected by the Patent Office if a claim for them had been drawn and presented to the Patent Office.

Advanced in the motion for partial summary judgment of non-infringement and/or invalidity but not urged in the motion for reconsideration (unless by implication through reference to prior filings — see footnote 4 on page to of the motion for reconsideration) was an argument of invalidity of claims 3 and 5 for the reason that inventor Fulhorst did not disclose his best mode for a reset means.

As background to discussing Points 1 and 2, the operation of the structure accused of infringement by claim element 3(e) is first addressed.

A. How the Accused Toyota Devices Work

The Toyota system employs a computer system to perform the functions of the timer of the Fulhorst patent (receive a signal as a result of which the timer turns on the vehicle alarm apparatus and turns off the alarm after a set period of time) and to figure out if the alarm should be turned off before the computer times out and if so to turn off the alarm. The computer constantly (in microsecond intervals) checks different terminals connected to the computer to see if any voltage is applied to the terminals. One terminal will have power applied to it if the key-switch on the ignition system of the automobile is in the ON position (this condition will occur when a key is inserted in the key-switch and the key-switch is turned to the ON position). Another of the terminals will have voltage applied if a coded radio frequency signal is detected by the receiver. If the computer does not detect that the key-switch is in the ON position and if the computer detects voltage applied to the terminal that signifies a proper coded radio frequency signal has been received by the receiver, the computer will activate a software timing loop and produce an output signal that results in activation of the alarm. The alarm will express itself until the software loop times out, when the output signal for the alarm will stop. This is the automatic time out of the alarm.

If the computer detects power applied to the terminal that shows the key-switch is in the ON position, the computer will stop the timing loop and stop sending the output signal to the alarm, thus turning off the alarm.

So long as the key-switch is in the ON position, the alarm cannot be activated even though the computer detects voltage on the terminal that signifies a proper coded radio frequency is being received. Only when the key-switch is moved from the ON position to the OFF position, removing the applied voltage to the terminal of the computer corresponding to the key-switch ON position will the computer be able to react to another alarm signal.

B. Point 1 of Toyota's Motion for Reconsideration

1. Fulhorst's Non-Disclosed Invention

Fulhorst submitted a new product disclosure to his patent attorney. The patent application for the `178 patent was filed after the new product disclosure was provided. The new product disclosure is titled "Sound-Off Switch, S.O.S. Device" (hereinafter called the "S.O.S. device") and is Exhibit C to the Fulhorst deposition.¹² Exhibit C states a Item 2. C. and D, that

12 Excerpts to the Fulhorst deposition and a copy of Exhibit C are attached to Toyota's Motion for Summary Judgment of Non-Infringement and/or Invalidity of Claims 3 and 5 of U.S. Patent 4,523,178 (Dkt. No. 74).

C.) "The Receiver/Switch unit is designed so:

Return the Receiver/Switch Switch to the OPEN condition of upon initiating the Start sequence of the automobile which Disables the Receiver portion of the Receiver/Switch unit during the Engine Start Cycle and Engine Run time while Enabling the Horn Circuit operation and/or any other predesigned electrically operated apparatus as originally provided by the auto manufacturer.

D.) The. S. O. S. Receiver/Switch unit is returned to its READY condition of home switching OFF the engine.

Part 3 of Exhibit C, titled "Key Condition(s)" says:

A.) The S. O. S. Transmitted Signal is designed to effect Receiver/Signal Processing and Switching within the effective Signal area.

B.) Engine OFF — Receiver portion of the Receiver/Switch unit is in the READY Condition for S. O. S. Transmitted Signal processing.

C.) Receiver/Switch switch is in the OPEN Condition relevant to item A. Above Condition.

D.) Receiver/Switch switch is CLOSED by the S. O. S. Transmitted Processed Signal.

E.) The CLOSED Receiver/Switch applies electrical power to the pre-designated electrical apparatus, i.e.; Horn, Lights etc . . .

F.) The Receiver/Switch can be ONE-TIME Re-set to the OPEN condition via the Transmitted SIGNAL command.

G.) Upon starting the engine, the S. O. S. Receiver portion of the Receiver/Switch unit is Disabled while returning the Switch to its OPEN Condition if not previously SET to the CLOSED Condition.

H.) Upon turning OFF the engine — the Receiver portion of the S. O. S. Receiver/Switch unit is RETURNED to its READY For Signal Processing Condition.

The undisclosed system described by the new product disclosure of Exhibit C to the Fulhorst deposition disables the alarm by "initiating the start sequence". The alarm is kept disabled while the vehicle is in "Engine Runtime" (key-switch is ON position). The alarm unit is returned to its "READY" condition (when it can start the alarm) by switching the key-switch to the "OFF" position.

Toyota in its Request for Reconsideration characterizes the S.O.S. device as "an alarm system in which the system is disabled by a voltage supplied when the ignition system is in the engine START condition and when it is in the engine RUN condition, and hence is not based on the starter coil." It is noted however, that paragraph G) of Exhibit C refers to starting the engine and paragraph H) refers to turning OFF the engine.

Toyota's argument, as perceived, is that, as a matter of law, the non-disclosure in the `178 patent of the S.O.S device, invented by Fulhorst before the filing of the patent application for the `178 patent, estops Fulhorst from claiming, as the equivalent of claim element 3(e), "an alarm system in which the system is disabled by a voltage supplied when the ignition system is in the engine START condition and when it is in the engine RUN condition, and hence is not based on the starter coil."¹³

13 This argument assumes that the undisclosed S.O.S. function does not literally infringe claim element 3(e). As found above, infringement requires restoration of the timer to an "initial deactivated state" where the timer is able to be activated upon receipt of a properly coded RF signal by the receiver, and this "initial deactivated state" coincides with the shutdown portion of the start-up and shut-down cycle (when the START switch is opened) where contacts open removing a ground to the timer. The result of this function is to allow the alarm to be turned on again while the engine is running if the engine started. In the S.O.S. device, the timer is not restored to the "initial deactivated state" until the key-switch is switched from ON to OFF, that is, when the engine is switched off. This does not restore the timer to its "initial deactivated state" "during the start-up and shut-down cycle" of the ignition system. Thus the S.O.S. device would not literally infringe claim element 3(e).

2. Legal Authority

The cases on which Toyota's assertion relies are Tanabe Seiyaku Co., Ld. v. ITC, 109 F.3d 726, 723-33 (Fed. Cir. 1997) and Insituform Tech., Inc. v. Cat Contracting, Inc., 161 F.3d 688, 694 (Fed. Cir. 1998). In Tanabe, the inventor possessed data that showed a four carbon number ketone (butanone) produced poor results. These data were not disclosed in the application. The claims recited the ketone component as limited to the three carbon ketone, acetone, that is, the patentee limited the claim by using specific chemical terminology for the three carbon ketone that excluded the four carbon ketone. The patentee sought to prevent a competitor from importing a drug, alleging the patented process was literally infringed except by using the four carbon ketone instead of the three carbon ketone, and as to that four carbon ketone, the patent was infringed by equivalency. The Federal Circuit held that the sharply limited chemical terminology, in the context of broadly defined other ingredients, signaled to those in the art that the process would not work other than by using the specifically defined chemical, and thus signaled to those in the art that the four carbon homologue was not an insubstantially different variant. The Court, in reviewing the decision of the ITC (after hearing) that the four carbon ketone (butanone) was not the equivalent of the three carbon ketone (acetone), stated, Tanabe, 109 F.3d at 732, that:

The Commission correctly noted that, in the specification and claims, Tanabe chose to define its invention in terms of specific base-solvent combinations, rather than in terms of categories of bases and solvents. A person skilled in the art would know that Tanabe could have used the term "lower alkyl ketone" to describe a class of ketone solvents including butanone and acetone. Tanabe used a similar term to describe a class of acetate solvents, claiming the use of a "lower alkyl acetate" solvent, either by itself or with water, rather than claiming only a specific acetate solvent.

For ketone solvents, Tanabe took a different approach to describing and claiming its invention, describing and claiming acetone as the only ketone solvent. . . . This specific claim language would suggest to a person skilled in the art that ketones other than acetone may not be useful. . . . In other words, the claim language itself, and the specification, suggest that substituting butanone for acetone is not an insubstantial change. Although we do not speculate on Tanabe's reasons for disclosing and claiming the use of only one ketone solvent, we note that "the doctrine of equivalents is not available for the attainment in court of a scope of protection which encompasses subject matter deliberately removed from examination by the PTO during prosecution through narrow claiming. . . . [I]t is impermissible to erase under the doctrine of equivalents `meaningful limitations of the claim on which the public is entitled to rely in avoiding infringement.' Genentech, Inc. v. Wellcome Found., Ltd., 29 F.3d 1555, 1568 n. 41, 31 USPQ2d 1161, 1171 n. 41 (Fed. Cir. 1994) (citation omitted).

. . . The sharply restricted nature of the claims has much to do with the scope we accord to the doctrine of equivalents. . . . [T]he Commission properly considered Tanabe's pre-application experiments in assessing whether there is a substantial difference between the claimed and accused processes. Tanabe's unsuccessful experiments with butanone indicate that the inventors did not consider butanone to be interchangeable with acetone for use in the claimed . . . process.

The basis of the Tanabe decision therefore was the sharply restricted nature of the claim coupled with evidence that the inventor did not consider the claimed equivalent to be "interchangeable".¹⁴

14 The United States Supreme Court in Graver Tank Mfg. Co. v. Linde Air Products Co. (1950), stated as an important factor for determining equivalency is "whether persons reasonably skilled in the art would have known of the interchangeability of [an element] not contained in the patent with one that was." As explained by the Supreme Court in its 1997 decision in Hilton Davis Chem. Co. v. Warner-Jenkinson Co., "A skilled practitioner's knowledge of interchangeability between the claimed and accused elements is not relevant for its own sake, but for what it tells the fact-finder about the similarities or differences between those elements."

In Insituform, the patentee had attempted unsuccessfully to make a particular embodiment (a needle) work in a process before filing a patent application that did not mention the possibility of using a needle and that defined instead a cup element that the patentee made work in the process. Later the patentee asserted infringement against a competitor who had made the needle element work, alleging equivalence. Defendants argued the patentee's failure with needles was evidence of substantial difference. The district court held that there were no substantial differences between the cup and multiple needles used in defendant's process. In reversing the district court, the Federal Circuit gave as one of its reasons, 161 F.3d at 694, that:

Another factor that affects our infringement analysis is that the inventor of the `012 patent attempted to use a needle instead of a cup prior to filing his application. For a reason that is disputed by the parties, he changed to a cup, and when his patent application was filed, no mention of the possible use of a needle was made. Insituform argues that the inventor's early use of needles shows that needles are old in the art and are known substitutions for cups. Defendants argue, however, that the inventor's "failure" with needles is evidence of a substantial difference between needles and cups. It is not apparent from the district court's opinion that it considered this prior attempt with needles. The evidence that the inventor first tried to use needles and then changed to cups without disclosing to the public that needles were, indeed, an option, supports an inference that the inventor was unable satisfactorily to practice his claimed method using a needle instead of a cup.

We therefore hold that, based on the evidence of substantial differences between the claimed single cup process and the accused multiple needle process, and the district court's legal errors in defining incorrectly the "way" in its function-way-result analysis and dismissing structural differences as irrelevant, the district court reversibly erred in finding that Defendants' multiple needle process infringed Insituform's claim 1 under the doctrine of equivalents. Once the "way" is correctly defined and the structural differences are properly considered, no reasonable trier of fact could have found the claimed single cup process and the accused multiple needle process to be equivalent.

Thus neither Tanabe nor Insituform was decided on an estoppel basis. Estoppel is a principle that precludes a patentee from taking one position before the Patent Office in order to get a patent and then taking a contrary position on the scope of the patent when suing for infringement. In Johnson Johnson Associates, Inc. v. R. E. Service Co., Inc., 285 F.3d 1046 (Fed. Cir. 2002) ( en banc), the issue was whether a metal (steel) disclosed but not claimed in a claim that claimed only aluminum could be asserted as an equivalent. The Federal Circuit issued a per se rule, that subject matter disclosed but unclaimed in the patent application is disclaimed as matter of law and cannot be an equivalent, saying:

a patentee cannot narrowly claim an invention to avoid prosecution scrutiny by the PTO, and then, after patent issuance, use the doctrine of equivalents to establish infringement because the specification discloses equivalents. `Such a result would merely encourage a patent applicant to present a broad disclosure in the specification of the application and file narrow claims, avoiding examination of broader claims that the applicant could have filed consistent with the specification.' [citing Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1107 (Fed. Cir. 1996) (citing Genentech, Inc. v. Wellcome Found. Ltd., 29 F.3d 1555, 1564, 31 USPQ2d 1161, 1167 (Fed. Cir. 1994)].

In Johnson Johnson as in Tanabe, the public was entitled to rely on the narrowness of the claim in light of the specification disclosures as indicating there could be no equivalence of the sharply defined material. The specification disclosures showed that the patentee clearly indicated he knew the claim could have been written more broadly (in Johnson Johnson because the unclaimed metal was disclosed; in Tanabe because although the unclaimed matter was not disclosed the patentee indicated by generic claiming of other compounds in the claim that he well knew how to claim the limited compound more broadly). No such indication was evident in the Insituform nondisclosure. But the common feature in Johnson Johnson, Tanabe and Insituform is that the patentee was possessed of the embodiment he could have protected by disclosure and broader claiming. As the Supreme Court recognized in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), 12 S.Ct. 1831, 1837, an inventor can choose to patent an invention and disclose it to the public or can chose to exploit it in secret. The quid pro quo for the patent is disclosure. If he wishes to have it protected by patent, he must disclose it. If he chooses to keep it secret and not disclose it, there is no quid pro quo reason for the doctrine of equivalents, a rule of equity, to provide him patent protection by extending the reach of narrow claims he patented that do not cover the nondisclosed invention. If the patentee wanted patent protection, he should have disclosed the non-disclosed embodiment he possessed and exposed broader claims covering both it and the disclosed embodiment to the patent examination process.

Although estoppel was not an announced basis for the decisions in the Tanabe and Insituform cases, and no preclusion from access to the doctrine of equivalence can be based on estoppel from these cases, these cases do support an argument that nondisclosure of a personally known embodiment coupled with claims too narrow to be literally infringed by that known embodiment indicates that the inventor did not consider the non-disclosed alternative equivalent to the narrowly claimed element or elements.

Fulhorst was in possession of the S.O.S. device. He did not disclose it when prosecuting his patent application. The function of the S.O.S. device is different from the functional limitations of claim element 3(e). Whereas both the S.O.S. device and the structure described in the `178 patent close or use the START terminal to reset the timer to turn off the alarm, unlike claim element 3(e), which opens the START terminal of the ignition switch to break the ground to the timer reset to return the timer to an active state where it is ready to go, the S.O.S. device defers restoration of the timer to its initial deactivated state until the key-switch is rotated back past RUN to OFF. By not opening the START terminal of the ignition switch to get the timer ready to go, the S.O.S. device eliminates need for the interlock safety guard described in the `178 patent as a means for preventing the alarm from going off during operation of the vehicle.¹⁵

15 See the discussion at part II.C.5, above.

No jury could find that the S.O.S. device was functionally equivalent to the functional limitations required by claim element 3(e). The following reasoning highlights why this is so. First, the patentee narrowly claimed the invention using a means-plus-function format to cover only the disclosed corresponding structure described in the patent and the equivalents of that limited structure. Second, the claim complies with the All Limitations Rule that claim limitation requires a functionally equivalent structure to be "operative during the start-up and shut-down cycle of said ignition circuit," as construed. However, the S.O.S. device does not complete the required timer restoration process during that cycle. As a result, a jury could not find that the S.O.S. device was functionally equivalent functional limitations required by claim element 3(e).

Furthermore, the following observation buttresses this conclusion. The patentee described the interlock safety device for use with the claim element 3(e) means which closes and then opens the START terminal of the ignition switch respectively to reset the timer to turn off the alarm and then get the timer ready to go. It is clear the non- disclosed S.O.S device eliminates the need for the interlock by delaying restoration of the timer to it initial deactivated state until the ignition switch is rotated past RUN to OFF. Therefore, again, no reasonable jury, faced with the above observations could find that the S.O.S. device was functionally equivalent to the functional limitations of claim element 3(e).

Interestingly, given that the S.O.S. device is not functional equivalent to the, 178 patent, comparing it to the Toyota devices further highlights why the Toyota devices is not equivalent. In fact, the S.O.S. device functions more like the structure described in the `178 patent corresponding to claim element 3(e) than does the accused Toyota RKE devices. With the S.O.S. device, like the patented `178 device, it is necessary to initiate the start sequence. The S.O.S. device requires turning the key-switch to START to disable the alarm timer, a functional feature of the S.O.S. device common with the functional requirements of the claim element 3(e) structure. By contrast, the Toyota RKE devices disable the alarm timer when the key-switch is turned from OFF only to RUN (ON). In the S.O.S. device the alarm is not made ready to go until "[ r]eturn [of] the Receiver/Switch Switch to the OPEN condition of upon initiating the Start sequence of the automobile which Disables the Receiver portion of the Receiver/Switch unit during the Engine Start Cycle and Engine Run time." See Exhibit C to the Fulhorst deposition, available as attachments to Toyota's Motion for Summary Judgment of Non-Infringement (emphasis added). While the Toyota devices, much like the S.O.S. device, also does not get the timer ready to go so long as the switch remains in the RUN position, unlike either the S.O.S. device or the claim element 3(e), the Toyota device does not have to engage a "Start sequence." Consequently, the Toyota devices are even less like the `178 patent than the S.O.S. device, which itself is not equivalent to the `178 patent.

Consequently, because no reasonable jury could find that the S.O.S. device is the functional equivalent of the structure described in the `178 patent corresponding to claim element 3(e), and because the Toyota RKE devices function even less like the `178 structure than the S.O.S. device, no reasonable jury could find that the Toyota RKE devices have a functional equivalency to claim element 3(e) of the `178 patent. In short, neither the S.O.S. device nor the accused Toyota devices could be found to be equivalent to the `178 patent.

C. Point 2 of Toyota's Request for Reconsideration

This point raises the "All Elements Rule" in reference to Fulhorst's argument that the start-up and shut-down cycle does not require a starter coil but can be any equivalent sequencing of a key-switch to disable the timer to turn off the alarm and then enable the timer by turning the key-switch to OFF.

This returns us to the point of Toyota's motion for summary judgment of non-infringement and to an infringement analysis. Before preceding to that analysis, certain Toyota remote keyless entry ("RKE") panic alarm systems are not contested by Fulhorst to be non-infringing, either literally or under the DOE.

Toyota's RKE panic alarm systems are described in the Declaration of Joseph C. McAlexander dated March 22, 2001.¹⁶ Fulhorst did not contest this description. Based on this description, there are three basic categories of these systems either factory installed in Toyota vehicles offered for sale or sold in the United States during the period beginning six years prior to the filing of the instant lawsuit to date, or offered for sale and sold as dealer installed options during the same period of time (McAlexander ¶ 14). The dealer installed options are the TVIP 3200, TVIP 3000, TVSS and TDSE systems. The following table characterizes these systems:

16 Exhibit A of the Report and Recommendation of the Special Master on Toyota's Motion for Summary Judgment of Non-Infringement and/or Invalidity of Claims 3 and 5 of U.S. Patent 4,523,178).

Table 1. Characterization of Operation of Accused Toyota Devices

"Row" Toyota Device Essential facts All RKE Systems

Row 1 (factory No aspect of the control routine or installed and dealer function in the control system that installed options) controls operation of the vehicle lights and horn when the appropriate button on the transmitter is operated ("the panic control function") of any RKE system is controlled responsive to 1) energization or de-energization of the vehicle's starter coil or any other ignition circuit component to open or close any contacts, or 2) actuation of the ignition switch connection that is closed when the ignition switch is turned to the START position. Row 2 All factory installed Turning the ignition switch to ON terminates systems and the TVIP panic alarm. RS3200 dealer installed systems Panic control function cannot be activated so long as ignition key is ON, without regard to whether key moved to START. Row 3 TVSS TVIP RS3000 The alarm is turned off by a sequence of turning dealer option installations key operations repetitively moving key from ON to OFF or ACC (accessory). Row 4 TDSE No vehicle operations (including any key function) deactivate alarm. Panic alarm is terminated by operating the transmitter button 1. The TDSE Systems Do Not Infringe

The SMNI found (paragraph 24, page 26), that Mr. McAlexander's statement that the TDSE dealer installed option system (Row 4, Table 1) is not deactivated by any use of the ignition circuit, but instead only by operation of a transmitter button (McAlexander Declaration, ¶ 14(d)) was not contradicted by any of the documentary proofs included in the declarations or other proofs of Fulhorst pointed out to the Special Master. Accordingly, the Special Master found that the TDSE systems, lacking "means in said ignitions circuit . . . for operating said reset means . . ." do not infringe claim 3. Lacking such means, the TDSE systems also do not infringe claim 5 which depends from claim 3 and incorporates all its limitations.

2. The Other RKE Systems

The general description of the Toyota RKE alarm system (Row 3, Table 1) does not describe the operation of the TVSS TVIP RS 3000 system. However, this system is described by Row 1, Table 1. If the "Essential Facts" of Row 1 are dispositive, it can be decided that the TVSS TVIP RS3000 dealer option installations do not infringe the `178 patent without further analysis.

This brings us to all of the Toyota factory installed systems and the TVIP RS3200 dealer installed systems, which do conform in operation to the general description of the Toyota RKE alarm system described above.

a. No Literal Infringement by Toyota Factory Installed Systems and the TVIP RS3200 Dealer Installed Systems Under the Approved Construction of Claim Element 3(e)

Under the construction of claim element 3(e) approved herein, no reasonable jury could find there is literal infringement of claim element 3(e). The Toyota "timer" is "reset" in part by moving the key-switch from OFF to the RUN (ON) terminal to turn off the alarm. This is before the Fulhorst `178 device commences its start-up and shut-down cycle, which is when the key-switch is moved to the START terminal. The Toyota "timer" is not restored to its initial deactivated state until the key — switch is moved from the RUN (ON) terminal to the OFF terminal. This is after the shut-down part of the Fulhorst `178 device start-up and shut-down cycle, which is when the START terminal of the ignition switch is opened (moved counterclockwise from START). After having moved counterclockwise from the START terminal, such as to RUN to run the vehicle, the Fulhorst `178 timer is ready to go. The Toyota device in the "RUN (ON)" position is not ready to go. The Toyota device is not ready to go until after the key-switch is returned to the OFF position.

This difference causes a significant real world consequence: when the key-switch of the Fulhorst `178 device would be in the RUN (ON) position after being switched from START, the timer would be ready to go and start an alarm, which can occur while the vehicle is running down the highway.¹⁷ By contrast, the Toyota device cannot start an alarm while running down the highway because it is not ready to go until the ignition switch is turned to OFF.

17 The interlock safeguard described at part II.C.5 is not part of claim 3.

b. Conclusion

The Special Master in the SMNI found and the Magistrate Judge adopted the finding that no reasonable jury could find that the Toyota devices described in Table 1 above literally infringe claim element 3(e), thus claim 3 (and thus claim 5) of the `178 patent as claim element 3(e) was interpreted in the SMCI, a construction which this Memorandum Order specifically affirms. This Memorandum Order approves and adopts that finding for the additional reasons expressed herein. Infringement, if any, of claim element 3(e) therefore must be established by the DOE.

3. Fulhorst's Application of Claim Element 3(e) Under the DOE to the Toyota Factory Installed Systems and the TVIP RS3200 Dealer Installed Systems

In the `178 patent, closure of the switch 105 provides voltage that creates a connection, by inducing contacts 120 to close. When the contacts close, the reset terminal of the timer is grounded to shut off the alarm. In the Toyota system, the connection from the ignition switch to the computer is always present and the computer acts to turn off the alarm only when voltage is applied to the connection by moving the ignition key-switch to ON.

Fulhorst's expert, Dr. Rhyne, opined that Toyota's system ignition switch and wiring and connectors associated with the ignition circuit constitute the equivalent of the structure required in the claim element 3(e), the corresponding structure of which the Special Master construed as (1) an ignition switch, (2) a starter coil, (3) contacts that close and open on energization and deenergization of the starter coil during the start-up and shut-down cycle of the starter coil in the ignition circuit, in (4) a normally open ground circuit connected on closure of the contacts to a terminal of a timer. Dr. Rhyne opined that the starter coil and contacts of the `178 patent provide no function other than to pass the reset signal from the ignition switch to the reset terminal; that one skilled in the art would understand that the ignition coil and contacts act as an inductive conductor to couple the signal from the ignition switch to the integrated circuit; and that Toyota's alarms function substantially the same way because they merely conduct the signal through a wire as opposed to using an inductive conductor.¹⁸

18 Rhyne Supplemental Declaration ¶ 30, 39, 41 (RRNI, ¶ 21, 25, pages 24, 26-27).

Accepting for purposes of argument Dr. Rhyne's opinion that Toyota's system ignition switch and wiring and connectors associated with the ignition circuit constitute the equivalent of the structure required in the claim element 3(e), Dr. Rhyne is incorrect that the starter coil and contacts of the `178 patent provide no function other than to pass the reset signal from the ignition switch to the reset terminal. At page 33 of the SMNI, the Special Master stated:

[T]he starter coil and contacts of the Fulhorst patent, for purposes of the invention, do more than merely apply the reset signal from the ignition switch to the reset terminal. The deenergization of the starter coil and the resultant opening of the contacts also removes the reset signal to the reset means to restore the timer to its initial deactivated state, as that term was construed by the Special Master, as summarized at page 22-23 above. Until the reset signal is removed from the reset means, the timer is only in the deactivated state.

Dr. Rhyne further avers that even if it were determined that the ignition switch and associated circuitry in the Toyota systems is not "operative during the start-up and shut-down cycle of the ignition circuit" or starter relay because the timer is not restored to its "initial deactivated state" until after the start-up and shut-down cycle of the ignition circuit or starter relay, the Toyota systems would nevertheless include element 3(e) under the doctrine of equivalence; that specifically, in both the claim and in the Toyota systems, the function is identical or substantially the same — to operate the reset means to deactivate the timer and terminate the alarm condition; that the way in which the function is performed in each is also the same or substantially the same, namely, the ignition switch is operated so as to cause a reset signal to be applied to a reset terminal to deactivate the timer and terminate the alarm condition; and that the result is the same in both cases — the timer is deactivated and the alarm condition is terminated.¹⁹

19 Rhyne Supplemental Declaration ¶ 43, RRNI ¶ 26, pages 27-28.

This opinion is subject to the same fault as the one quoted above; it assumes that the starter coil and contacts of the `178 patent provide no function other than to pass the reset signal from the ignition switch to the reset terminal. It ignores the second half of the function tied to the claim limitation "operative during the start-up and shut-down cycle", that on deenergization of the starter coil, the ground to the timer terminal is removed and the timer is returned to the "initial" deactivated state, ready to be activated.

As has been explained in detail above when discussing the claim construction of element 3(e), deenergization of the starter coil in the shut-down portion of the start-up and shut-down cycle is caused when the START terminal of the ignition key-switch is opened, which happens when the key-switch is rotated or springs back counterclockwise to the RUN (ON) position. When the starter coil is deenergized, the contacts (120) open that switched the ground circuit to the timer reset terminal, removing the ground that prevented the timer from being activated. In the RUN (ON) position after return of the key-switch from START, the alarm is enabled (in its "initial deactivated state") and can be activated.

Dr. Rhyne opines that it would be equivalent to deactivate the timer and terminate the alarm based on either the START or RUN (ON) positions of the ignition switch; that both positions achieve the same function (to operate the reset means to deactivate the timer and terminate the panic alarm) in substantially the same way (operation of the ignition switch so as to cause a reset signal to be applied to a reset terminal) to achieve the same result (the timer is deactivated and the alarm is terminated); that if not the same result, the result is substantially identical even if the Fulhorst patent claim were somehow limited to the use of the START position; that there is only a short time delay when turning the ignition switch from RUN (ON) to START, and the START position, when the key is released, returns to the RUN (ON) position; and that there is no reason to distinguish between the RUN (ON) and START positions of the ignition switch for purposes of the Fulhorst patent.²⁰

20 Rhyne Supplemental Declaration ¶ 37, RRNI ¶ 28, page 28.

This opinion too is subject to the same fault as the one quoted above; it assumes that the starter coil and contacts of the `178 patent provide no function other than to pass the reset signal from the ignition switch to the reset terminal. The issue is not a short time delay in the time between when the key is turned to START and then released to come back to (RUN) ON, the issue is what happens when the key-switch is returned to RUN (ON) (in the `178 patent, what happens is that the timer is restored to the "initial deactivated state," ready to be activated).

Dr. Rhyne addresses the matter of return of the alarm to the ready condition where it can be activated. He acknowledges that while the ignition switch of the applicable Toyota RKE systems is in its RUN (ON) position, the reset signal remains applied to the reset terminal of the microcontroller, and opines that, even assuming a difference between the RUN (ON) position in Toyota's systems and the specific embodiment of the Fulhorst patent specification, this difference is insubstantial; that in particular, in both cases, the alarm condition is terminated upon application of the reset signal to the reset terminal; that in both cases, when the reset signal is removed, the timers are able to respond to another logic signal to activate the alarm once again; that the period while the reset signal remains applied to the reset terminal of the microcontroller is unrelated to any aspect of the claimed invention; and that therefore, even if one were to find that the "initial deactivated state" is not achieved by the Toyota systems literally under claim 3, it certainly would be achieved under the doctrine of equivalents.²¹

21 Rhyne Supplemental Declaration ¶ 37, RRNI ¶ 29, pages 28-29.

This latter opinion is entirely bootstrapped by the assertion that the "period while the reset signal remains applied to the reset terminal of the microcontroller is unrelated to any aspect of the claimed invention." As construed, claim element 3(e) includes the START terminal of an ignition switch for the reason that (i) closure of the START terminal (by energizing the starter coil to close contacts 120) closes a ground circuit connection that resets the timer to turn off the alarm, and (ii) opening of the START terminal (by deenergizing the starter coil to open contacts 120) opens the ground circuit breaking the connection that restores the timer to its initial deactivated state. The "aspect of the invention" to which the "period while the reset signal remains applied to the reset terminal" is "operative during the start-up and shut-down of said ignition circuit" that is linked to the START terminal of the ignition switch. It is plainly incorrect for Dr. Rhyne to say that the "period while the reset signal remains applied to the reset terminal" is unrelated to any aspect of the invention. This period is related directly to the claim limitation "operative during the start-up and shut-down of said ignition circuit" which in accordance with the All Limitations Rule must be observed when seeking to prove existence of an equivalent of the limitation in an accused device.

a. Do the Toyota devices have an insubstantially diferent function from the function required by claim element 3(e)?

As interpreted and explained above, the function of claim element 3(e) is operating the timer reset to deactivate it to turn off the vehicle alarm and restore the timer to its "initial" state where the alarm system can be activated. No reasonable jury could find that the Toyota devices do not perform that function, but no reasonable jury could find that this function is only insubstantially differently performed by the Toyota devices "during the start-up and shut-down cycle of said ignition circuit." Since this limitation must be observed for functional equivalency, no reasonable jury could find that the Toyota devices are functionally equivalent to the functional limitations required by claim element 3(e).

b. Do the Toyota devices have an insubstantially diferent "way" from the "way" required by claim element 3(e)for performing the required function?

The DOE does not require proof of structure present in the Toyota device insubstantially different from each one of (1) an ignition switch, (2) a starter coil, (3) contacts that close and open on energization and deenergization of the starter coil during the start-up and shut-down cycle of the starter coil in the ignition circuit, and (4) a ground circuit connected on closure of the contacts to a terminal of a timer, the corresponding structure which the construction of the means element of claim 3(e) requires for literal infringement. It is equivalence to the overall structure corresponding to the claimed function that must be found. In examining the "corresponding structure" to determine the scope of a claim limitation, Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267, 51 USPQ2d 1225, 1229 (Fed. Cir. 1999) states:

"[t]he individual components, if any, of an overall structure that corresponds to the claimed function are not claim limitations. Rather, the claim limitation is the overall structure corresponding to the claimed function. This is why structures with different numbers of parts may still be equivalent under § 112, ¶ 6, thereby meeting the claim limitation."

The DOE does require that the all elements rule be observed, and for this, the Toyota devices must perform their function "during start-up and shut-down cycle of the ignition circuit."

The "way" the Fulhorst device (comprising the above identified structure corresponding to claim element 3(e)) performs its function "during start-up and shut-down cycle of the ignition circuit" is that it closes the START terminal of an ignition switch (switches the ignition switch to START) to energize a starter coil (which causes associated contacts to close a normally open ground circuit and thereby apply a ground to the timer reset) to operate the timer reset to deactivate the timer (which turns off the alarm before it times out). The "way" of the Fulhorst device, then opens the START terminal of the ignition switch, e.g., allows the switch to turn under spring load from START to RUN (ON), if only momentarily, which de-energizes the starter coil (which causes the associated contacts to open the ground circuit, removing the ground to the timer reset) to operate the timer reset to restore the timer to its "initial deactivated state."

The "way" of the Toyota devices switches the ignition key-switch to RUN (ON) to operate the timer reset to deactivate the timer (which turns off the alarm before it times out). The "way" of the Toyota devices does not restore the timer to its initial deactivated state while the ignition key switch is RUN (ON). The "way" of the Toyota devices does not operate to restore the timer to its "initial" deactivated state until the ignition switch is turned from RUN (ON) to OFF. The "way" of the Toyota devices does not operate "during the start-up and shut-down cycle of the ignition circuit" as that limitation of claim element 3(e) has been interpreted herein.

No reasonable jury could find that this difference in Toyota's "way" of "operating said reset means to restore said timer to its initial deactivated state" is insubstantial, because to do so would ignore the functional limitation "during the start-up and shutdown cycle of said ignition circuit" which necessarily implicates the START terminal of switch 105. There is no genuine issue of material fact that Fulhorst does not show an insubstantial difference between the "way" Toyota's devices operate the reset means to restore the timer to its initial deactivated state and the "way" Fulhorst's structure corresponding to the function of claim element 3(e) operate the reset means to restore the timer to its initial deactivated state during the start-up and shut-down cycle of said ignition circuit. The two are not sufficiently similar.

c. Do the Toyota devices have an insubstantially diferent result from the result required by claim element 3(e)?

Claim element 3(e) requires the result that the reset of the timer is restored to its "initial deactivated state" by operation of means in the ignition circuit of a vehicle that are operative during the start-up and shut-down cycle of the ignition circuit. The result accomplished by the "way" of the Fulhorst device is that the timer is ready to go at the end of the start-up and shut-down cycle when the START terminal of the ignition key switch opened (returned to RUN (ON) from START). Thus the timer is able to be activated and turn on the car alarm while the engine is running.

The "result" accomplished by the "way" of the Toyota devices is that while the ignition key-switch remains in the RUN (ON) position, the timer is disabled and therefore not able to be activated to turn on the alarm. This is a different result.

No reasonable jury could find that this difference in result is insubstantial. There is no genuine issue of material fact that Fulhorst does not show an insubstantial difference between the result achieved by the way Toyota's devices operate the reset means to restore the timer to its initial deactivated state and the result achieved by the way Fulhorst's structure corresponding to the function of claim element 3(e) operates the reset means to restore the timer to its initial deactivated state during the start-up and shut-down cycle of the ignition circuit.

d. Conclusion

No reasonable jury could find that the function, way and result of the Toyota devices is insubstantially different from the function, way and result required by claim element 3(e) of the `178 patent. Accordingly, no reasonable jury could find that the Toyota devices infringe claim element 3(e) under the DOE. Since infringement of claim element 3(e) is required in order to prove infringement of claim 3, no reasonable jury could find that claim 3 is infringed under the doctrine of equivalents. Therefore, there is no genuine issue of material fact that claim 3 is not infringed. Since claim 5 is dependent from claim 3 and incorporates all the limitations of claim 3, and since claim 3 is not infringed either literally or under the doctrine of equivalents, there is no genuine issue of material fact that claim 5 is not infringed.

D. Point 3 of Toyota's Request for Reconsideration.

Point 3 is that if the Toyota device is the equivalent of the claim 3(e) element of the `178 patent, then that "reach" of claim 3 would be invalid as anticipated under 35 U.S.C. § 102(b) by the PL-10 embodiment on sale more than a year before Fulhorst filed his application, or on the Sassar patent, or under a laid open Japanese patent application. A patent is presumed valid. 35 U.S.C. § 282. One attacking the validity of a patent must present clear and convincing evidence establishing facts that lead to the legal conclusion of invalidity. 35 U.S.C. § 282. Glaverbel Societe Anonyme v. Northlake Marketing Supply, Inc., 45 F.3d 1550, 1555, 33 USPQ2d 1496, 1499 (Fed. Cir. 1995). Fulhorst in his opposition to the motion for reconsideration presents cogent arguments addressed to the inadmissibility and madequacy of the evidence advanced by Toyota to prove invalidity. Toyota's invalidity arguments are more directly and fully developed and presented (and vigorously opposed) in Toyota's motion for summary judgment of invalidity of claims 3 and 5, which was filed without the benefit of the claim construction adopted by the magistrate judge. Toyota's motion for summary judgment of invalidity of claims 3 and 5 was dismissed without prejudice to resubmission after ruling on the motion for summary judgment of non-infringement, and is not before the Court. Since under the claim construction affirmed and adopted herein, the Toyota device is determined not to be the equivalent of claim element 3(e) of the `178 patent, Toyota's point is moot. Even were it not moot, the prior art evidence on which Toyota would make this argument is strongly contested by Fulhorst, and since nonmovant Fulhorst's evidence must be credited and all justifiable inferences in respect thereto drawn in nonmovant Fulhorst's favor, this point would be denied if not moot.

V. INVALIDITY FOR NONDISCLOSURE OF BEST MODE

As respects the basis advanced in Toyota's motion for partial summary judgment of non-infringement and/or invalidity, that the patent is invalid for failure of the patentee to set forth his best mode, as required by 35 U.S.C. § 112, alternative inferences can be drawn on the patentee's deposition testimony, as well pointed out by Fulhorst in its opposition to the motion to reconsider. A patent is presumed valid. 35 U.S.C. § 282. One attacking the validity of a patent must present clear and convincing evidence establishing facts that lead to the legal conclusion of invalidity. 35 U.S.C. § 282. Glaverbel Societe Anonyme v. Northlake Marketing Supply, Inc., 45 F.3d 1550, 1555, 33 USPQ2d 1496, 1499 (Fed. Cir. 1995). The burden of persuasion never shifts from the proponent of invalidity. The issue of which of two embodiments was considered by the inventor to be his best tests the subjective opinion of the inventor; it is not an objective test of which embodiment is actually the best. The evidence presented by Toyota is not clear and convincing concerning the inventor's subjective preference, and since when ruling on a motion for summary judgment, all of the nonmovant's evidence is to be credited, and all justifiable inferences are to be drawn in the nonmovant's favor, Toyota has not satisfied the burden necessary to grant its motion of invalidity based on failure to disclose the best mode contemplated by the inventor. Accordingly, Toyota's motion for invalidating the `178 patent is DENIED.

VII. SUMMARY

There is no genuine issue of material fact that the Toyota RKE systems do not infringe claims 3 and 5 of U.S. Patent 4,523,178, either literally or under the doctrine of equivalents. The question of invalidity posed by Point 3 of Toyota's Request for Reconsideration is mooted by the holding of noninfringement. Toyota's motion for summary judgment of invalidity of the Fulhorst patent grounded on failure to disclose a best mode is denied. For the foregoing reasons, it is

ORDERED that Defendant Toyota Motor Corporation's Motion for Reconsideration (Dkt. No. 188) is GRANTED, insofar as the Court addresses and finds merit in other independent grounds for summary judgment discussed herein. Accordingly, it is further

ORDERED that Summary Judgment of Non-Infringement of Claims 3 and 5 of U.S. Patent No. 4,523,178 is (Doc. #74) is GRANTED.