Paice LLC v. Toyota Motor Corp.

Opinion for the court filed by Circuit Judge PROST. Opinion concurring in the result filed by Circuit Judge RADER.

Defendants Toyota Motor Corporation, Toyota Motor North America, Inc., and Toyota Motor Sales, U.S.A., Inc. (collectively, “Toyota”) appeal a judgment by the United States District Court for the Eastern District of Texas that Toyota infringed claims 11 and 39 of U.S. Patent No. 5,343,-970 (“the '970 patent”) owned by Paice LLC (“Paice”) under the doctrine of equivalents. Paice LLC v. Toyota Motor Corp., No. 2:04-CV-211, 2006 WL 2385139 (E.D.Tex. Aug. 16, 2006). Paice cross-appeals the district court’s judgment that Toyota did not literally infringe claims 11 and 39 of the '970 patent, claim 15 of the U.S. Patent No. 6,209,672 (“the '672 patent”), and claims 1 and 2 of U.S. Patent No. 6,554,088 (“the '088 patent”).1 Paice also appeals the district court’s imposition of an ongoing royalty arrangement that allows Toyota to continue practicing the invention of the '970 patent in exchange for a set royalty payment. For the reasons explained below, we affirm-in-part, vacate-in-part, and remand for further proceedings.

I. BACKGROUND

A. Patents in Suit

The three patents at issue in this case relate to drive trains for hybrid electric vehicles. In a conventional automobile, the wheels are driven using torque (rotational force) supplied only by an internal combustion engine (“ICE” or “engine”). In hybrid electric vehicles, on the other hand, the wheels are driven using torque supplied by an ICE, an electric motor, or a combination of the two. This adds an additional layer of complexity because the relative torque contributions of the ICE and the electric motor must be combined and controlled.

To that end, the drive train disclosed in the '970 patent employs a microprocessor and a controllable torque transfer unit (“CTTU”) that accepts torque input from both the ICE and the electric motor:

*1297[[Image here]]

As shown in figure 11 of the '970 patent, illustrated above, the ICE output shaft 86 and the electric motor output shaft 26 extend into the CTTU housing 92 and terminate at bevel gears 94 and 96, respectively, each of which mesh with two other bevel gears, 98 and 100.

In this embodiment, bevel gears 98 and 100 are equipped with microprocessor-controlled locking devices 106 for setting the gears’ rotational freedom, if any, relative to the housing. '970 patent, col. 15, II. 50-53. In one mode of operation the microprocessor locks the bevel gears, causing the housing and the drive shaft 30 to rotate about their horizontal axes in response to any torque provided by the output shafts of the ICE or electric motor (or both). Id. at col. 15, 1. 64 — col. 16, 1. 3. In this “locked” mode of operation, the two shafts rotate at the same speed, although the amount of torque provided by the individual shafts may differ. See id. The CTTU’s microprocessor, by virtue of its ability to control the amount of torque provided at each shaft, is able to control the relative amounts of torque transferred from the ICE and the electric motor to the drive shaft. See id. at col. 10, II. 4-43. The microprocessor is able to do so by holding the inputs constant and merely sending control signals to the locking devices. For example, if the ICE is disengaged (and not providing any torque) while the bevel gears are locked, there is a one-to-one transfer of torque from the electric motor output shaft, through the CTTU, to the drive shaft. J.A. 1494. In another mode of operation (“differential mode”), however, the microprocessor releases the bevel gears such that they are free to rotate. '970 patent, col. 16, II. 11-27. If the ICE is disengaged in this mode, there is a one-to-two transfer of torque from the motor output shaft, through the CTTU, to the drive shaft. J.A. 1494.

Claims 11 and 39 of the '970 patent are relevant to this appeal. Because claim 39 depends from claim 32, and because the issues we must decide do not implicate the additional limitation of claim 39, only claims 11 and 32 are reproduced below:

11. A hybrid electric vehicle, comprising:

two or more drive wheels receiving torque for propelling said vehicle from an output shaft, and a power unit supplying *1298drive torque to said output shaft, said power unit comprising:

a controllable torque transfer unit adapted to receive torque from two sources and transfer said torque to said output shaft;

an engine adapted to consume combustible fuel and supply torque to said torque transfer unit;

an AC electric motor adapted to receive electric energy from a battery and supply torque to said torque transfer unit, said motor being further adapted to be operable as a generator;

a battery for supply of stored electric energy to said motor, and for receiving and storing electric energy from said motor when operated as a generator;

solid state switching means for converting DC supplied by said battery to AC for supply to said electric motor, and for rectifying AC generated by said motor when operated in a regenerative mode to provide DC to charge said battery; and

a controller for controlling the operation of said engine, said electric motor, said solid state switching means, and said torque transfer unit, such that said torque transfer unit receives torque from either or both of said internal combustion engine and said electric motor and transmits torque therefrom to said drive wheels by way of said output shaft, and for controlling the relative contributions of the internal combustion engine and electric motor to the torque driving the wheels.

'970 patent, col. 23, II. 36-68 (emphasis added).

32. A hybrid electric vehicle, comprising:

a controllable torque transfer unit, operable to transfer torque in three modes: (a) from either or both of two input shafts to an output member, said output member transmitting torque to drive wheels of said vehicle; (b) between said input shafts; and (c) from said output member to one or both of said input shafts;

an electric motor adapted to apply torque to a first of said input shafts responsive to supplied electrical energy, said motor further being operable in a generator mode, to provide electrical energy when driven by torque transferred thereto via said first input shaft;

a combustible-fuel-burning internal combustion engine adapted to apply torque to a second of said input shafts;

a battery adapted to supply electrical energy to and store energy received from said electric motor; and

a controller adapted to receive input commands from a driver of said vehicle to monitor operation of said vehicle and to control operation of said controllable torque transfer unit, said motor, and said internal combustion engine, wherein said controller comprises means for performing the following functions responsive to input commands and monitored operation of said vehicle:

selecting an appropriate mode of operation of said vehicle from at least the following possible modes of operation:

low speed running;

steady state running;

acceleration or hill climbing;

battery charging;

braking; and

engine starting;

selecting the appropriate flow paths of electrical energy and/or combustible fuel and of torque to effectuate the selected mode of operation; and

controlling operation of said controllable torque transfer unit, said electric motor and said internal combustion *1299engine in accordance with said selected appropriate flow paths and selected mode of operation.

Id. at col. 26, 1. 39-col. 27, 1. 15 (emphasis added).

The drive train of the '672 and '088 patents differs from the drive train of the '970 patent in that it employs a clutch— rather than a CTTU — to combine the torque contributions from the ICE and the electric motor. As illustrated in figure 3 of the '672 patent (illustrated below), torque from electric motor 25 is directly transferred to differential 32 (and therefore to the wheels 34). Torque from ICE 40, on the other hand, is only indirectly transferred to the wheels because output shaft 41 of the ICE is routed through clutch 51.

[[Image here]]

Consequently, when the clutch is disengaged, the electric motor is the solé source of torque transferred to the wheels. When the clutch is engaged, however, torque provided by both the ICE and the electric motor is transferred to the wheels. Another difference from the drive train of the '970 patent is that the drive train of the '672 and '088 patents use “road load” to determine the proper combination of torque from the ICE and the electric motor.2

B. Accused Devices

At issue in this appeal are hybrid electric vehicles sold by Toyota. Toyota’s first commercial hybrid electric vehicle, the “Prius I,” was sold in Japan beginning in 1997 and in the United States beginning in 2000. In 2003, Toyota began marketing a newer-model, the “Prius II.” The drive train (or “transaxle unit”) of the Prius II— which is also present in another form in the Toyota Highlander and Lexus RX 400h3 — is similar to the drive trains described in all three patents in suit in the sense that it, too, combines torque from an ICE with torque from an electric motor (“MG2” or “the traction motor”). However, instead of combining these torques using the '970 patent’s lockable bevel gears or the '672 and '088 patents’ clutch, Toyota’s drive train is designed around a “planetary gear unit” (or “power-splitting device”), having a central “sun” gear that meshes with several “planetary” gears *1300(supported by a “planetary carrier”), which in turn mesh with a peripheral ring gear:

[[Image here]]

J.A. 4629.

As may be appreciated from the following depiction of Toyota’s drive train, the output shaft from the ICE is connected to the planetary carrier (and thus to the planetary gears), whereas the output shaft from MG2 is connected to the ring gear. The Toyota design also employs an additional motor/generator (“MG1”) having an output shaft connected to the sun gear.

[[Image here]]

J.A. 12788.

As with the microprocessor in the '970 drive train, a microprocessor associated with Toyota’s drive train is able to control the amount of torque provided by both the ICE and MG2. J.A. 1577. Unlike the transfer of torque through the CTTU described in the '970 patent, however, the transfer of torque through Toyota’s planetary gear unit cannot be varied; 72% of the torque provided by the ICE to the planetary carrier is always transferred to the ring gear.4 J.A. 1497. That fraction of the ICE torque is then combined with 100% of the torque provided by MG2. J.A. 1505. As such, Toyota’s microprocessor is only able to vary the amount of torque output to the drive shaft by varying the ICE and/or MG2 torque inputs; holding *1301those inputs constant results in a constant torque output. J.A. 1577.

II. DISTRICT COURT PROCEEDINGS

Paice initiated the instant action against Toyota on June 8, 2004, by filing a complaint in the United States District Court for the Eastern District of Texas alleging three counts of infringement — one count for each patent in suit — and requesting, inter alia, compensatory damages and a permanent injunction. On September 28, 2005, the district court issued a written opinion construing dozens of disputed claim terms. Paice LLC v. Toyota Motor Corp., No. 2:04-CV-211 (E.D.Tex. Sept. 28, 2005) (“Claim Construction Opinion ”). Of primary importance to the issues on appeal is the court’s construction of “controllable torque transfer unit” (the CTTU limitation) as “a multi-input device or component that is controlled to transfer variable amounts of torque.” Id. slip op. at 17.

On December 6, 2005, the district court commenced a ten-day jury trial during which both sides presented extensive evidence. Paice’s theory of the case, put before the jury largely through the expert testimony of Dr. Steven Nichols, was that the planetary gear unit, the chain/sprocket arrangement, and the shaft leading to the counter drive gear of Toyota’s drive train satisfies the CTTU limitation.

[[Image here]]

See J.A. 1256,5 12788. In particular, Dr. Nichols stated that the structure is (1) “a multi-input device or component” — it accepts inputs at the planetary carrier from the ICE output shaft and at the ring gear from the MG2 output shaft; (2) “that is controlled to transfer variable amounts of torque” — the microprocessor dictates the amount of torque sent from each input, and ultimately output to the drive shaft. See, e.g., J.A. 1201-03.

Toyota offered its own theory to the jury, largely through the expert testimony of Dr. Edward Caulfield. According to Dr. Caulfield, Toyota’s planetary gear unit only accepts torque input from the ICE. Seventy-two percent of that input torque is then output to the ring gear. The combination of the fractional (72%) ICE torque with the torque from MG2 does not occur until after the fractional ICE torque is output from the planetary gear unit to the ring gear. Therefore, Dr. Caulfield’s opin*1302ion was that Toyota’s drive train does not satisfy the district court’s construction because there is no single “device or component” that can be characterized as “multi-input.” See J.A. 1497-98.6 Dr. Caulfield further testified that Toyota’s drive train does not satisfy the CTTU limitation because the flow of torque through the planetary gear unit cannot be altered from the 72/28 split discussed above, and therefore, cannot be “controlled to transfer variable amounts of torque.” J.A. 1505-06.

At the end of the evidentiary presentation, the ease was submitted to the jury. The jury concluded that Toyota’s drive train lacks a literal CTTU, but infringes claims 11 and 39 of the '970 patent under the doctrine of equivalents, see J.A. 4394; the jury found no infringement of the other asserted claims. Based on those findings, the jury awarded $4,269,950.00 to Paice as a reasonable royalty.

On January 20, 2006, Toyota filed a motion for judgment as a matter of law (“JMOL”) seeking to overturn the jury’s limited finding of infringement. Paice filed its own motion for JMOL, seeking to overturn the jury’s finding of no literal infringement with respect to claims 11 and 39 of the '970 patent, claim 15 of the '672 patent, and claims 1 and 2 of the '088 patent. The court denied both motions.

Paice also moved for a permanent injunction to prevent Toyota from making, using, offering for sale, and selling within the United States the accused vehicles. In addressing that motion, the district court followed the traditional four-factor test mandated by the Supreme Court’s recent decision in eBay Inc. v. MercExchange, L.L.C., — U.S.-, 126 S.Ct. 1837, 1839, 164 L.Ed.2d 641 (2006) (“A plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.”). With respect to irreparable injury, Paice argued that the absence of an injunction would have an adverse effect on its ability to license the patented technology. The court rejected this argument, however, noting that Paice had only adduced vague testimony that the company was “sidelined” in its business dealings during litigation. Paice LLC v. Toyota Motor Corp., No. 2:04-CV-211, Docket No. 227, slip op. at 8, 2006 WL 2385139 (E.D.Tex. Aug. 16, 2006). The court also pointed to evidence in the record suggesting that Paice’s inability to reach an agreement with Chrys*1303ler, for example, was due to public misrepresentations Paice allegedly made about its relationship with Chrysler, and was not due to the absence of an injunction. Id. Moreover, since Paice does not actually manufacture any goods, the court concluded that there was no threat that Paice would lose name recognition or market share without an injunction. Id. slip op. at 9.

Intertwined with its consideration of irreparable injury was the court’s analysis of the adequacy of monetary damages. Given the relatively small reasonable royalty awarded by the jury — which amounted to approximately $25 per accused vehicle — in comparison to the overall value of the vehicles, the court concluded that monetary damages would suffice. Id. The adequacy of monetary damages was further bolstered, in the court’s opinion, by the fact that Paice had offered a license to Toyota during the post-trial period. Id. slip op. at 9-10.

With regard to the balance of hardships, Paice contended that it “faces extinction” without an injunction, whereas Toyota would suffer “only minor economic losses.” This contention was rejected by the court because, in its view, an injunction against Toyota (1) would disrupt “related business, such as dealers and suppliers;” (2) could have an adverse effect on the “burgeoning hybrid market;” and (3) might damage Toyota’s reputation. Id. slip op. at 10. The court further concluded that Paice’s “extinction” argument was unsound because it was based on the rejected premise that “only injunctive relief [of the type requested] will lead to a successful licensing program.” Consequently, the court held that the balance of hardships favored Toyota. Id. Lastly, the court determined that the public interest favored neither party. Id. Accordingly, the court denied Paice’s motion for a permanent injunction. Id. slip op. at 11. However, rather than leaving the parties to their own devices with respect to any future acts of infringement, the court imposed an “ongoing royalty” of $25 per Prius II, Toyota Highlander, or Lexus RX400h vehicle sold by Toyota during the remaining life of the patent and entered final judgment. Paice LLC v. Toyota Motors Corp., No. 2:04-CV211, Docket No. 228, slip op. at 2 (E.D.Tex. Aug. 16, 2006).

Toyota appeals the denial of its JMOL motion, and Paice cross-appeals both the denial of its JMOL motion, as well as the “ongoing royalty” imposed by the district court.7 We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

III. STANDARD OF REVIEW

Federal Rule of Civil Procedure 50(a)(1) provides that a court may grant a motion for JMOL only where “there is no legally sufficient evidentiary basis for a reasonable jury to find for [the non-movant].” ‘We review the district court’s denial of a motion for JMOL without deference, applying the same standard employed by the district court.” Honeywell, Int’l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed.Cir.2004) (en banc). “Under this standard, we can reverse a denial of a motion for JMOL only if the jury’s factual findings are not supported by substantial evidence or if the legal conclusions implied from the jury’s verdict cannot in law be supported by those findings.” Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc).

*1304“The decision to grant or deny permanent injunctive relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion.” eBay, 126 S.Ct. at 1839.

IV. DISCUSSION

A. Toyota’s Appeal

We first address the issues raised in Toyota’s appeal of the district court’s denial of the motion for JMOL of noninfringement of claims 11 and 39 of the '970 patent. According to Toyota, the jury’s finding of infringement of those claims under the doctrine of equivalents must be overturned for three reasons. We disagree.

1. Sufficiency of the Evidence

First, Toyota argues that the expert testimony of Dr. Nichols was legally insufficient to support a finding of infringement under the doctrine of equivalents. Although Dr. Nichols testified before the jury for a day and a half, Toyota claims that the vast majority of his testimony was directed to literal infringement. Specifically, Toyota argues that Dr. Nichols explicitly marked the end of his extensive literal infringement testimony by answering in the affirmative when asked whether “[t]he opinion that [he had] expressed thus far ... relate[d] to literal infringement.” J.A. 1218. Immediately thereafter, Toyota contends, Dr. Nichols explicitly transitioned to his equivalence testimony by again answering in the affirmative when asked whether he had “also formed an opinion with respect to the Doctrine of Equivalents.” Id.

Following his answer to that question, the following brief exchange took place before the jury between counsel for Paice and Dr. Nichols:

Q. So, assuming that the controllable torque transfer unit is not literally infringed, have you found that ... the accused vehicles satisfy this limitation under the doctrine of equivalents?

A. Yes. It is my opinion that they do.

Q. [CJould you describe that for us by reference to the slide that we see on the screen, Slide 71?

A. Well, this particular slide is the Doctrine of Equivalents analysis for the controllable torque transfer unit. I will say that I do believe that it is literally there. However, it provides the function that is to be provided. It provides controllable and variable amounts of torque from two sources to the drive wheels, and I believe that’s consistent with the claim construction of the Court.

The way in which it does that is it controls a set of gears to receive torque from two input shafts and transfer torque to the drive wheels.

Q. And what’s the result?

A. The results are control — that the vehicles control to direct torque flow between the motor, the engine and the drive....

Id. The “Slide 71” referenced by counsel for Paice contained a grid with three rows, with one row corresponding the function of the CTTU, one row corresponding to the way in which the CTTU performed that function, and one row corresponding to the result the CTTU achieved; and two columns, one corresponding to the '970 patent and the other corresponding to the “Accused Toyota Vehicles.” In each of the grid’s six boxes, a red check mark indicated the presence of the function/way/result in both the CTTU and the “Accused Toyota Vehicles.” This, Toyota says, was the extent of Dr. Nichols’s testimony on the subject.

We have stated that “a patentee must ... provide particularized testimony *1305and linking argument ... with respect to the function, way, result test when such evidence is presented to support a finding of infringement under the doctrine of equivalents.” Tex. Inst. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir.1996) (emphasis added). “Generalized testimony as to the overall similarity between the claims and the accused infringer’s product or process will not suffice.” Id. Under this standard, Dr. Nichols’s testimony was plainly sufficient. A careful review of the entire transcript from that portion of the trial evinces that the bulk of Dr. Nichols’s testimony was not limited to literal infringement. While it is true that the excerpts pointed to by Toyota ostensibly draw a figurative line in the sand separating testimony concerning literal infringement from that concerning equivalence, we do not read Dr. Nichols’s testimony to say that every word he uttered from the time he took the stand until the moment he transitioned to the doctrine of equivalents related only to literal infringement. Rather, Dr. Nichols gave a substantial amount of testimony — occupying over seventy pages of transcript — concerning the technology disclosed in the patents and the inner workings of the accused vehicles’ transaxle units before he even discussed the topic of infringement at all:

Q. Now, Dr. Nichols, now that we’ve discussed some of the components in the patents, could we turn to your infringement analysis.8

A. Yes.

J.A. 1212. It was with his answer to this question that Dr. Nichols indicated to the jury that his infringement testimony was officially beginning. And it was to this starting point that Dr. Nichols was referring a short time later when he answered in the affirmative to the question, “[t]he opinion that you’ve expressed thus far, does that relate to literal infringement?” J.A. 1218.

Another infirmity in Toyota’s argument is that, even if we were to agree that Dr. Nichols did in fact draw some sort of line in the sand with his answer to that question, in so doing he did not thereby render his literal infringement analysis irrelevant to his subsequent equivalence analysis. Our “particularized testimony” standard does not require Dr. Nichols to re-start his testimony at square one when transitioning to a doctrine of equivalents analysis. Indeed, we think it desirable for a witness to incorporate earlier testimony in order to avoid duplication. The fact that Dr. Nichols did not explicitly do so does not mean he did not implicitly incorporate his earlier testimony. Thus, we reject any notion that Dr. Nichols’s equivalence testimony is strictly limited to the few lines pointed to by Toyota.

Toyota also argues that Dr. Nichols’s other testimony cannot be used to support the jury’s verdict due to the absence of any “linking argument” to tie such testimony to the function/way/result analysis of the CTTU. Again, we find Toyota’s characterization of Dr. Nichols’s testimony inaccurate. For example, on the morning of December 8, 2005, and before he turned to his literal infringement analysis, Dr. Nichols demonstrated the operation of an actual accused vehicle’s transaxle unit to the jury, and in so doing he explained:

Q. Okay. And when you say its input, what is it that you’re talking about as being input, Dr. Nichols?

A. We have torque input from the engine, torque input from MG2, combined *1306torque output to the drive wheels, cont-rollably combined to give you variable torque on the output to drive the wheels.

J.A. 1201 (emphases added). Later that same morning, referring to Slide 71, Dr. Nichols explained to the jury that the accused vehicles’ transaxle units “provide [ ] the function that is to be provided,” i.e., “controllable and variable amounts of torque from two sources to the drive wheels.” J.A. 1218 (emphases added). Thus, within a close proximity of time, Dr. Nichols first demonstrated and explained operation of an actual accused device to the jury, and then linked that demonstration and explanation to the function of the CTTU. Our review of the record reveals that Dr. Nichols’s testimony was similarly sufficient with respect to linking the way and result prongs.

Nonetheless, Toyota criticizes Dr. Nichols for allegedly failing to identify any specific structure in the accused vehicles’ transaxle units corresponding to the CTTU. In particular, Toyota claims that Paice’s equivalence argument is supported by nothing more than Dr. Nichols’s “[g]en-eralized testimony as to the overall similarity between the claims and the accused infringer’s product.” See Appellants’ Br. 37-38 (quoting Tex. Inst., 90 F.3d at 1567). This argument is specious in light of the fact that counsel for Toyota spent a substantial portion of his time on cross examination asking Dr. Nichols to help draw a box on a diagram around the exact portion of Toyota’s drive train he identified as corresponding to the CTTU. See J.A. 1256. To now suggest on appeal that the jury was never shown specific structure is simply incorrect. Compare Appellants’ Br. 38 (“Indeed, Dr. Nichols was never asked at trial to identify any alleged equivalent structure in connection with his equivalents analysis.”), with J.A. 1256 (Questions by Mr. Badenoch: “Exactly what portion — what device in this diagram of the Toyota Prius transaxle schematic, what are you [Dr. Nichols] calling now the controllable torque transfer unit in your opinion?” and “Can you [Dr. Nichols] just go over that one more time so that I can draw a box to make sure I’ve got it right?”).

Toyota also argues that Dr. Nichols “fail[ed] to acknowledge any differences between the CTTU claim limitation and any component or components alleged to be equivalent” in order to “explain why and how such differences are insubstantial.” Appellants’ Br. 41. We are unaware of any such “acknowledgement” requirement in the context of the function/way/result test, and Toyota does not cite any case law standing therefor. In any case, Dr. Nichols was called as a. rebuttal witness to answer Dr. Caulfield’s testimony. With respect to the question of whether Toyota’s accused CTTU is “multi-input device or component,” Dr. Nichols testified:

Q. Now, Dr. Nichols, did you also hear Dr. Caulfield testify yesterday about where the torque from MG2, I’ll say intersects the ring gear and where is it, in your understanding, that Dr. Caul-field said that takes place?

A. If I understand him correctly, he takes the position that — well, actually this plus this plus other elements are all one shaft and as a result it is not an input; it’s sort of an input/output flowby and there is no input shaft in MG2. If I understand his testimony.

Q. Do you agree with this testimony, Dr. Nichols?

A. Well, it’s certainly a novel approach.

Q. And what is it you mean by a novel approach?

A. It’s not true.

Q. So, you do not agree with it?

*1307A. No_This is a ring gear. Without this, the planetary gear unit does not exist. It’s not a ring gear shaft, a shaft ring gear. It’s a ring gear.

Q. Thank you.

A. I will add one other thing. If, in fact, it does flow on the outside somehow, which it does not, this is not a dumb device. This would be a very smart device that somehow would have torque flow around the outside of a ring gear which is not a ring gear but a shaft. It simply does not make sense to me.

Trial Tr. 141:18-143:4, December 16, 2005.

And with respect to the question of whether Toyota’s accused CTTU is “controlled to transfer variable amounts of torque,” Dr. Nichols testified:

Q. We heard a lot of testimony about the 72 percent/28 percent torque split within the planetary gear unit. I just want to confirm it. Do you agree or disagree that the torque split always occurs in the planetary gear unit?

A. Yes. It’s steady state, that’s the torque split and it’s been consistent on four or five or six people giving testimony. We all agree on that split of steady state.

Q. And yet you still have reached the conclusion that you’ve reached, Dr. Nichols, regarding whether the planetary gear unit in the Toyota accused vehicles is a controllable torque transfer unit?

A. Yes.

Q. And how have you reached that in light of the fact that there is a fixed split within the ring gear itself?

A. Well, ... I believe everyone that’s given testimony has agreed that it — the [MG2] can provide power independently through the ... planetary gear unit, although there may be some arguments whether it’s through or somehow around the planetary gear unit. Everyone’s agreed, and the engine can provide it and then provide it in different combinations.

Trial Tr. 145:13-146:18, Dec. 16, 2005.

This rebuttal testimony, in conjunction with the testimony given during each side’s case in chief, provided the jury with an ample basis upon which to evaluate the insubstantiality of the differences between the CTTU limitation and the accused structure.

2. Criticism of Prior Art

The second reason Toyota contends that the jury’s equivalence verdict cannot stand relates to Paice’s criticism of two patents issued to Berman et al. and assigned to TRW, Inc.: U.S. Patent Nos. 3,566,717 (“the '717 patent”) and 3,732,751 (“the '751 patent”) (collectively, “Ber-man/TRW”).9 Both Berman/TRW patents describe a hybrid drive train similar to those in the accused vehicles in that the Berman/TRW drive train design employs an ICE, a traction motor, and a generator coupled to a planetary gear unit. See '751 patent, col. 2, 1. 48-col. 3, 1. 9. However, unlike Toyota’s drive train, the Ber-man/TRW drive train has two operator-selectable modes of operation, one being designed for lower speeds and the other being designed for higher speeds. See, e.g., id. at col. 4, II. 48-62. Although the Berman/TRW design employs various con*1308trollers containing transistors and other electronic circuitry, see id. at figs. 4-5, there is no controlling microprocessor choosing the most appropriate mode of operation. J.A. 1255.

The written description of the '970 patent describes the Berman/TRW design as providing “[a] more promising ‘parallel hybrid’ approach” than other prior art, '970 patent, col. 2, 1. 67-col. 3, 1. 1, but it nevertheless points to disadvantages of the Berman/TRW design compared to the '970 invention:

The present invention relates to such a parallel hybrid vehicle, but addresses certain substantial deficiencies of the Berman et al design. For example, Berman et al show two separate electric motor/generators powered by the internal combustion engine to charge batteries and to drive the vehicle forward in traffic. This arrangement is a source of additional complexity, cost and difficulty, as two separate modes of engine control are required, and the operator must control the transition between the several modes of operation. Further the gear train shown by Berman et al appears to be quite complex and difficult to manufacture economically.10

Id. at col. 3, II. 16-27 (emphases added). Given this criticism and disavowal of Ber-man/TRW in the written description, Toyota argues that its drive trains — which are allegedly “based on the configuration of the prior art Berman/TRW patents”- — cannot be captured by Paice’s invocation of the doctrine of equivalents.

This court has addressed the effects of criticism and disavowal in several cases. For example, in SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., the technology at issue related to “[b]al-loon dilatation catheters ... used in coronary angioplasty procedures to remove restrictions in coronary arteries.” 242 F.3d 1337, 1339 (Fed.Cir.2001). Such catheters were made in one of two configurations: “the dual (or adjacent) lumen configuration,” or “the coaxial lumen configuration.” Id. The question on appeal was whether the claims — which merely specified that the two lumens be “separate” — were limited in scope, either literally or under the doctrine of equivalents, to the coaxial lumen configuration. Analyzing the claim language in light of the written description, we held, inter alia, that the patentee had “distinguish[ed] the prior art on the basis of the use of dual lumens and [had] point[ed] out the advantages of the coaxial lumens used in the catheters that [were] the subjects of the [patents in suit].” Id. at 1343. We read this as “supporting]” the “conclusion that the claims should not be read so broadly as to encompass the distinguished prior art structure.” Id. We further explained that the “most compelling portion of the specification” was the patentee’s statement that the coaxial configuration “is ‘the basic sleeve structure for all embodiments of the present invention contemplated and disclosed herein.’” Id. at 1344 (quoting the written description). We were thus led “to the inescapable conclusion” that the “separate” limitation was literally limited in scope to the coaxial configuration. Id. at 1342.

Relying again on the patentee’s criticism of the prior art and the “all embodiments” statement, we arrived at the same conclusion with respect to equivalent claim scope. However, our analysis turned on a narrower rationale:

The principle articulated in [several cited] cases is akin to the familiar rule *1309that the doctrine of equivalents cannot be employed in a manner that wholly vitiates a claim limitation. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., [520 U.S. 17, 29-30, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)]; Athletic Alternatives, [Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1582 (Fed.Cir.1996)] (“specific exclusion” principle is “a corollary to the ‘all limitations’ rule”). Thus, if a patent states that the claimed device must be “nonmetallic,” the patentee cannot assert the patent against a metallic device on the ground that a metallic device is equivalent to a non-metallic device. The unavailability of the doctrine of equivalents could be explained either as the product of an impermissible vitiation of the “non-metallic” claim limitation, or as the product of a clear and binding statement to the public that metallic structures are excluded from the protection of the patent. [T]he foreclosure of reliance on the doctrine of equivalents in such a case depends on whether the patent clearly excludes the asserted equivalent structure, either implicitly or explicitly.

Id. at 1346-47. Thus, because the paten-tee had “clearly exclude[d]” one of only two possible structures, “competitors and the public were free to draw the reasonable conclusion that the patentee was not seeking patent protection for catheters that used a dual lumen configuration.” Id. at 1347.

This court was confronted with a similar fact pattern in Gaus v. Conair Corp., where the technology at issue related to “a safety mechanism that prevents fatal shocks to users of electrical appliances such as hairdryers” due to immersion of the appliance in water. 363 F.3d 1284, 1285 (Fed.Cir.2004). In particular, the safety mechanism of the patented invention employed protective circuitry designed to detect the invasion of water before any such water could reach the voltage-carrying components of the appliance itself. Id. at 1289. The safety mechanism of the accused appliance, however, would not react until water reached the voltage-carrying components of the appliance. Id. at 1290. This would result in the user experiencing a brief, but non-fatal shock. Id. Ironically, we noted, “one of the principal advantages of the claimed invention [over the prior art]” touted in the patent’s specification was the invention’s ability to “protect [] the user from such a shock.” Id. at 1289. Thus, we held that the paten-tee’s criticism of this prior art characteristic amounted to a surrender of claim scope that the patentee could not “reclaim ... by invoking the doctrine of equivalents.” Id. at 1291; see also Dawn Equip. Co. v. Ky. Farms