Judge Jones Construes Claims in Toyota Hybrid Case

In a case that features Hollywood's David-versus-Goliath story of inventorship (for example see this link), independent inventor Conrad Gardner is suing Toyota for patent infringement of his U.S. Patent No. 7,290,627. The ‘627 Patent covers hybrid vehicle technology for automobiles. Specifically, the patent relates to the use of an internal combustion engine and a separate electric motor for powering a hybrid vehicle. While Mr. Gardner's patent has a priority date earlier than Toyota's first patent in this area, he has had difficulties in this case. The latest came in terms of claim construction, while it is not clear of the implications.

Claim one of the '627 patent is copied below:

1. A controller of a hybrid electric vehicle having an engine (22)
and a motor (12) for controlling driving of the engine (22) and the motor
12, comprising: a battery (58) for supplying electric power to the motor (12); motor-generated driving force transfer means (14) for transferring the driving force generated by the motor (12) to wheels (18); a power generator (78) driven by the engine (22) to supply generated electric power to the battery (58); engine-generated driving force transfer means (75) for transferring the driving force generated by the engine (22) to the wheels (28); means for detecting a vehicle running state (44); and control means (30) for controlling whether to transfer a driving force generated by an engine (22) to a power generator (78) or wheels (28)in accordance with a vehicle running state, wherein the control means (30) transfers the driving force generated by the engine (22) to wheels (28) when said running state is more than a predetermined value, transfers the driving force generated by the engine (22) to the power generator (78) when said running state is less than a predetermined value.

Judge Jones recently construed this claim and others. In particular, there was a lot to say about whether certain terms should be construed as means-plus-funtion under Section 112 paragraph 6.

From Judge Jones' order:


Mr. Gardner’s proposed construction is confusing, because he both contends that this claim does not have a means-plus-function limitation and also directs the court to the drawings as evidence to support the “well-understood meaning.” Again, Mr. Gardner has unsuccessfully attempted to rebut the means-plus-function presumption. In order to rebut the presumption, the claim language itself would have to define the structure that performs the stated function. Mr. Gardner has not pointed to any language in the claim itself that describes definite structure, and indeed relies on the drawings in order to construct the term. Thus, the court concludes that this is a means plus-function limitation because no specific structure is identified.

Goodbye and Thanks to Sam Darby

The son of James T. and Ellen Doran (Dunman) Darby, Sam Darby was born in Falcon, Arkansas, February 4, 1867. In the fall of 1882, he went to Annapolis, Maryland, as a cadet in the US Naval Academy. He left the Navy after graduation in 1886. Two years later, he started his undergraduate at Georgetown in Washington, D.C., finishing in 1891, with an LL.B and LL.M in law. During law school, he married Estelle Edgar Rawlings, and they had two children, Walter Ayers and Samuel Edgar, Jr. In 1894, Sam Darby Sr. joined Frank T. Brown, forming the firm Brown & Darby in Chicago.

After just seven years in practice, Sam Darby Sr. appeared before the U.S. Supreme Court, arguing on behalf of William R. Warner & Co., the founder of Warner-Lambert, a company that is now part of Pfizer. While he lost the case, Warner v. Searle, 191 U.S. 195 (1903), Sam Darby made important contributions to trademark law by helping to define the scope of descriptive trademarks. The mark at issue was PANCREOPEPSINE, which described an amino acid used to help cure indigestion (this also became the primary ingredient of PEPSI). Sam Darby Sr., went on to represent a number of other IP rights holders in cases that made important contributions to our existing laws.

Sam Darby Jr. probably joined his father in practice sometime around 1920. By that time, the firm had moved from Chicago to New York City, somewhere downtown. He appears as counsel for the infamous, self proclaimed "Father of Radio," Lee de Forest (http://www.leedeforest.org/) as early as 1924, see In Re De Forest Radio Telephone & Telegraph Co., 264 U.S. 568 (1924). Lee de Forest was one of the founders of the "electronic age" and the inventor of the "audion" which led to development of the triode, a device that was important for FM radio transmission. Lee de Forest "was involved in several patent lawsuits and he spent a substantial part of his income from his inventions on the legal bills," (source: http://en.wikipedia.org/wiki/Lee_De_Forest) most of which were likely paid to Darby & Darby, considering the volume of reported cases Sam Darby Jr. handled for Mr. De Forest. Lee's primary legal foe was Edwin Armstrong, the prolific inventor whose patent for the regenerative circuit had been issued in 1914. Armstrong's lawsuit with de Forest lasted twelve years, winding its way through the appeals process and ending up before the Supreme Court in 1926. The Supreme Court ruled in favor of De Forest, "although the view of many historians is that the judgment was incorrect." (Source: http://en.wikipedia.org/wiki/Lee_De_Forest) … but that's what I call some good lawyering).

While Sam Darby Jr. may have benefited from Lee de Forest's legal entanglements, he paid dearly as well, because he was indicted along with Lee de Forest for mail fraud, but was later acquitted. The firm moved to the Chrysler Building, 405 Lexington Avenue, in 1931 (one of the building's first tenants). Sam Jr. appears on dozens of U.S. Supreme Court cases of significance until his untimely death in 1947, he was probably not yet 60 years old.

Walter Darby also practiced with his brother and father. He died in 1949. He appears on very few cases, and was reportedly interested in admiralty law more than IP.

The legacy of Darby & Darby was passed down to Louis Fletcher, Floyd Crews, Don Overocker, Harvey Mortimer, and Morris Relson. According to some old letter head, these were the partners in 1961. Associates at this time were Robert Maikis, Robert Keegan, Howard Miskin, Gordon Copelein, and William Dudine, Jr. Prior to the decade that began in 1960, another Darby partner of note was Russell Pelton, who left to go in-house in 1957 with Norelco.

During the 1950s and 60s, Floyd Crews, Morrie Relson, and Louis Feltcher appear on dozens of CCPA and Supreme Court cases. According to Gordon Copelein "Floyd Crews was instrumental in having Giles Rich appointed to the CCPA." Gordon also reports that during the 1960s, many partners and associates would lunch at Schraft's restaurant. On occasion, the Darby lawyers were joined by judges, including some CCPA judges like Judge Rich. Mike Sweedler may remember some of these lunches, and I will leave the details to him.

The 1970s ushered in new associates, including the likes of Peter Ludwig, Mel Gardner, Adda Gogoris, Ethan Horwitz, and others. I know little of these details, from 1970 to when I joined in 2007, so Mel, or Peter will have to fill these in for me.

Over the last 115 years, Darby & Darby has represented some of this Nation's most prolific inventors and the companies they worked for. Companies etched in the American psyche, like Warner; Emerson Radio, Dumont and Olympic Television, Polorad Electronics; Fairchild Aircraft; Walter Kidde; Nokia; Yahoo; Boston Scientific; American Home Products; Wyeth; and a host of others. I'm proud to be a part of this history, and while today is a sad day because it marks the end of Darby & Darby, we can all take comfort in knowing that we were a part of something bigger than ourselves.