Range Energy Inc. v. Hyliion Inc.

Background

Range brought this declaratory-judgment case seeking rulings that it did not infringe, and that certain claims were invalid in, eight Hyliion patents related to electric trailers. Hyliion asserted two counterclaims alleging that Range infringed the ’853 Patent and the ’029 Patent. The motion addressed in this order was Range’s motion under Federal Rule of Civil Procedure 12(b)(6), which tests whether a pleading states a legally sufficient claim.

The court previously held that Claim 16 of the ’853 Patent was directed to an abstract idea at the first step of the patent-eligibility analysis. The remaining issue was the second step: whether Claim 16 contained an “inventive concept”—additional elements that significantly transformed the abstract idea into a patent-eligible application.

Arguments and analysis

Claim 16 describes a trailer with sensors that detect trailer data, a control system that calculates the torque needed to keep the trailer moving at a substantially constant speed and estimates the torque applied by the towing vehicle, and an electric motor-generator coupled to the trailer axles. Hyliion alleged that this combination was unconventional because it allowed the trailer to contribute and recapture motive force without a direct communication link to, or control over, the towing vehicle and could be retrofitted onto existing trailers.

The court found those allegations insufficient. Claim 16 does not include the hybrid-suspension-system and autonomous-controller limitations that Hyliion relied on to support autonomy and retrofit capability. The court also determined that the claim’s language did not exclude the use of information received directly from the towing vehicle. Because the features Hyliion identified as inventive were not actually required by Claim 16, Hyliion had not plausibly alleged that the claim’s ordered combination was unconventional.

The court rejected Hyliion’s argument that claim construction had to occur first. Hyliion did not propose a specific construction for the disputed phrase concerning computationally estimating the towing vehicle’s torque, and the court held that a general reference to possible claim-construction disputes did not prevent dismissal at this stage.

Ruling

The court GRANTED Range’s motion to dismiss Hyliion’s Counterclaim 1 alleging infringement of the ’853 Patent. It DENIED Hyliion leave to amend Counterclaim 1 as to Claim 16 of the ’853 Patent because Hyliion had already received an opportunity to amend and did not explain how another amendment could preserve Claim 16’s validity. The court GRANTED Hyliion leave to amend Counterclaim 1 to assert other claims from the ’853 Patent. The court stated that Hyliion must file any amended counterclaims within fourteen days.