Toyota has been the target of a number of patent infringement suits involving hybrid electric vehicles in the last several years (e.g., see previous posts here, here and here). 

So instead of waiting to be sued again, this time the automaker got a jump on Palo Alto-based hybrid and electric vehicle technology company Efficient Drivetrains Inc. (EDI) and brought its own action for declaratory judgment of noninfringement and invalidity of several patents relating to power output control and charge depletion methods for hybrid electric vehicles.

The complaint (Toyota-EDI_Complaint), filed in federal court in San Jose, California, lists U.S. Patents Nos. 5,842,534 (’534 Patent), 6,054,844, 6,116,363, 6,809,429 (’429 Patent) and 6,847,189 (’189 Patent) (collectively “Asserted Patents”) and also names the Regents of the University of California, the owner the Asserted Patents, as a defendant.

According to EDI’s web site, the company holds an exclusive license for the entire University of California – Davis patent portfolio relating to hybride electric vehicles and continuously variable transmissions (read more about the licensed technology here).  UC Davis Professor Andy Frank is the named inventor on all of the Asserted Patents.

Most of the Asserted Patents are directly related, or at least incorporate and improve upon each other, and four out of five trace priority back to an original filing date of 1995.

The earliest patent, the ’534 Patent, was filed in 1997 and is directed to methods and apparatus for controlling a hybrid electric vehicle to optimize efficiency in varying driving conditions.

The method is performed by sensing the vehicle speed and battery depth of discharge (steps 110 and 120) during operation by the electric motor (12) and comparing them with a control curve (150). 

If those parameters exceed a predetermined threshold, the internal combustion engine (14) is brought on line by engaging the clutch (step 170) and turning on the internal combustion engine (14) (step 180).

The electric motor (12) can be used to supply additional power (200) if the need for additional power demand is sensed (190).  If the internal combustion engine (14) is operating at closed throttle and the brake pedal is depressed for deceleration (210), the electric motor (12) is operated in regeneration mode (230).

Through continuation applications, the subsequent patents claim improvements upon and variations of the methods of the ’534 Patent such as power output control where the internal combustion engine is coupled to a continuously variable transmission (’429 Patent) and control methods for hybrid electric vehicles with smaller battery packs (’189 Patent).

According to the complaint, EDI’s counsel offered Toyota a license to the Asserted Patents, and subsequently contended that Toyota’s hybrid electric vehicles infringe the Asserted Patents and indicated their intention to enforce the patents against Toyota.  Apparently, that’s when Toyota took matters into its own hands.

In a previous post, I wrote about patent attorney-inventor Conrad O. Gardner’s infringement suit against Toyota in which he accused the automaker of infringing U.S. Patent No. 7,290,627 (’627 patent). 

In that case, Gardner alleged that Toyota infringed the ’627 Patent by making and selling the second generation Prius, the Camry hybrid and the Highlander hybrid.

The ’627 Patent is entitled “Extended range motor vehicle having ambient pollutant processing” and is directed to a hybrid vehicle control system which controls the relative contribution of driving force from an internal combustion engine and an electric motor by sensing the vehicle’s speed and transferring the driving force contributions accordingly.

Last year Toyota succeeded in knocking out one claim of the ’627 Patent, and Toyota has now won the case outright in the district court.

In an order issued last month (gardnerorder.pdf) Judge Richard A. Jones of the U.S. District Court for the Western District of Washington granted Toyota’s motion for summary judgment of non-infringement of the three remaining claims of the ’627 Patent.

The court had previously construed two of the patent’s claim terms “motor-generated driving force transfer means” and “engine-generated driving force transfer means” to mean that an engine drives one set of wheels and an electric motor drives a different set of wheels.

The construction of the first term also required (1) the combination of a drive shaft, clutch, transmission, and axle, or (2) the combination of an electric motor direct drive and axle.

The court found that the Prius, the Camry and the two-wheel-drive Highlander do not infringe the ’627 Patent because in those vehicles the engine and the electric motor both drive the same set of wheels, specifically the front wheels.

The four-wheel-drive Highlander was found to be non-infringing because the separate electric motor that drives the rear wheels is not connected to the wheels through a clutch, nor does it constitute a direct drive.

The court issued a subsequent order (gardnerorder2.pdf) denying Gardner’s motions for partial summary judgment against Toyota’s inequitable conduct counterclaim and invalidity argument.

Gardner has appealed both summary judgment decisions (gardnernotice.pdf).

After six years of legal wrangling in U.S. courts and the International Trade Commission (ITC) over hybrid vehicle patents, Paice and Toyota recently announced that they have settled their disputes.

Although the terms of the agreement are confidential, the reports and statements of people involved reveal two interesting elements of the deal.

First, a compromise statement reported in a PR Newswire article tactfully notes Toyota’s infringement of Paice’s U.S. Patent No. 5,343,970 (’970 Patent) on the one hand and its independent development of the technology on the other hand:

The parties agree that, although certain Toyota vehicles have been found to be equivalent to a Paice patent, Toyota invented, designed and developed the Prius and Toyota’s hybrid technology independent of any inventions of [Paice founder] Dr. Severinsky and Paice as part of Toyota’s long history of innovation. 

Second, and more significantly, Toyota took a license to Paice’s entire patent portfolio.  According to this Forbes.com piece, the chair of Paice’s Board, Frances M. Keenan, said that “Toyota had agreed to license all 23 of Paice’s patents, not just the one at issue in the ITC claim.” 

The court clashes date back to a patent infringement suit filed by Paice in 2004 in which Toyota was held liable for infringing the ’970 Patent under the doctrine of equivalents.  After being awarded an ongoing royalty of $98 per infringing vehicle, Paice turned its attention to the ITC where it could obtain an exclusion order against Toyota.

Most recently, the adminstrative law judge (ALJ) presiding over the ITC case denied Toyota’s motion for summary determination that the ITC investigation was barred by claim preclusion. 

The ALJ held that Paice was not precluded from pursuing its case in the ITC because the exclusion order was not available to Paice in the district court action and is a materially different remedy from the injunctive relief offered by the courts.

As a result of the license agreement, Paice will receive a revenue stream from Toyota for a while: the last patent under license expires in 2019.

Last month, Ford Motor Company (Ford) and hybrid vehicle technology company Paice LLC (Paice) each sued the other over allegations that Ford’s Fusion hybrid infringes Paice’s U.S. Patent No. 5,343,970 (’970 Patent).  The two lawsuits were filed the same day in different courts. 

Paice’s complaint (paice-ford_complaint.pdf), filed in the Eastern District of Texas, alleges that the Ford Fusion infringes at least claims 7-8, 25 and 39 of the ’970 Patent. 

In particular, the complaint notes that the car uses a “variable voltage booster” to raise the voltage the battery supplies to the vehicle’s electric motor.

Ford filed its suit in the Eastern District of Michigan seeking a declaratory judgment (DJ) that Ford does not infringe the ’970 Patent and that the patent is invalid. 

According to Ford’s complaint (ford-paice_complaint.pdf), in addition to the allegations made against the Fusion, the hybrid version of its Escape vehicle is also at risk of being targeted for infringement by Paice. 

Ford brought a similar DJ action against Paice back in 2005, but the case was dismissed for lack of DJ jurisdiction.  

Ford’s complaint mentions that case and points out that the Supreme Court and the Federal Circuit have since lowered the bar for establishing DJ jurisdiction by eliminating the necessity that there be a “reasonable apprehension of imminent suit.”

Ford is not the first automaker to face Paice and the ’970 Patent; Paice has been relatively successful in enforcing the ’970 Patent against Toyota.

In the fall of 2007, the Federal Circuit affirmed a jury verdict that the Toyota Prius, Highlander and Lexus SUV infringed two claims of the ’970 Patent under the doctrine of equivalents. 

In that case Paice was awarded about $4.3 million in past damages and an ongoing royalty of $98 per infringing vehicle sold.

Toyota also is fighting to avoid an exclusion order that would bar importation of the third generation Prius and other hybrid vehicles Paice has accused of infringement in an investigation currently pending before the U.S. International Trade Commission (see previous posts here, here, here and here).

The ’970 Patent is directed to a hybrid electric vehicle in which the drive train uses a microprocessor and a controllable torque transfer unit (28) that accepts torque input from both the vehicle’s internal combustion engine (ICE) and its electric motor.

The microprocessor controls the amount of torque provided by the ICE and the electric motor by locking or releasing bevel gears (94, 96, 98, 100) and holding torque inputs constant.