`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owners.
`
`______________
`
`
`U.S. Patent No. 7,455,134 to Severinsky et al.
`IPR Case No. IPR2014-00568
`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1-3, 5-6, 19-20, 26-27, 40, 58 AND 62
`OF U.S. PATENT NO. 7,455,134)
`
`
`
`

`

`
`
`
`
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ........................................................................................................ iii
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 2
`
`A.
`
`B.
`
`C.
`
`
`D.
`
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)): ................................... 2
`Related Matters (37 C.F.R. § 42.8(b)(2)): ............................................. 2
`Lead and Back-Up Counsel and Service Information (37
`C.F.R. § 42.8(b)(3-4)) ........................................................................... 3
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 3
`
`III. GROUNDS FOR STANDING AND PROCEDURAL
`STATEMENTS (42.104(a)) ............................................................................ 3
`
`IV. OVERVIEW OF CHALLENGE (§ 42.104(b)) .............................................. 4
`
`V. OVERVIEW OF THE ’134 PATENT ............................................................ 5
`
`VI. CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R.
`§ 42.104(B)(3) ................................................................................................. 7
`
`A.
`
`
`“Start And Stop The Engine” ................................................................. 8
`
`VII. PRIORITY DATE OF THE CHALLENGED CLAIMS ................................ 9
`
`A.
`
`
`B.
`
`
`The “At Least 2.5” Ratio Is Unsupported Before April 2,
`2001 ....................................................................................................... 9
`1.
`No Explicit Support Exists .......................................................... 9
`2.
`Patentee’s Admissions ..............................................................10
`3.
`Implicit or Inherent Support Is Further Absent ........................12
`The Applicable Priority Date Gives Rise To Intervening Art ............14
`
`VIII. THE PERSON OF ORDINARY SKILL IN THE RELEVANT
`FIELD AND THE RELEVANT TIMEFRAME ...........................................15
`
`IX. STATE OF THE ART ...................................................................................16
`
`X.
`
`BACKGROUND OF THE ’134 PATENT ...................................................20
`
`XI. GROUNDS OF UNPATENTABILITY ........................................................23
`
`
` Ground 1A: Claims 1-3, 5, 19-20, 26-27, 40, 58 and 62 are A.
`Anticipated by the ’455 PCT Publication ...........................................23
`1.
`Claims 1-3, 5, 19-20, 26-27 and 40 are Anticipated by
`the ’455 PCT Publication ..........................................................23
`
`i
`
`

`

`2.
`
`Claims 58 and 62 are Anticipated by the ’455 PCT
`Publication ................................................................................34
`Ground 1B: Claims 1-3, 5, 19-20, 26-27, 40, 58 and 62 are
`Anticipated by the ’455 PCT publication ............................................38
`Ground 2: Claims 6 Is Obvious Over ’455 PCT publication
`In View Of Ehsani ...............................................................................39
`Secondary Considerations ...................................................................41
`
`B.
`
`
`C.
`
`
`D.
`
`
`XII. CONCLUSION ..............................................................................................43
`
`
`
`
`
`ii
`
`

`

`
`
`
`
`EXHIBIT LIST
`
`
`
`
`Exhibit
`Description
`No.
`FMC 1001 U.S. Patent No. 7,455,134
`FMC 1002 Declaration of Dr. Jeffrey L. Stein
`FMC 1003 The ’134 Patent Family Chart
`
`Identifier
`’134 patent
`Stein Decl.
`’134 Patent Family
`Chart
`’088 CIP patent
`FMC 1004 U.S. Patent No. 6,554,088
`’866 CIP application
`FMC 1005 U.S. Application No. 09/822,866
`’817 application
`FMC 1006 U.S. Application No. 09/264,817
`’743 application
`FMC 1007 U.S. Application No. 09/392,743
`’634 patent
`FMC 1008 U.S. Patent No. 7,237,634
`’634 file history
`FMC 1009 File History for U.S. Patent No. 7,237,634
`FMC 1010 U.S. Provisional Application No. 60/100,095 ’095 provisional
`application
`Duoba
`
`FMC 1011 Michael Duoba, Ctr. for Transp. Research,
`Argonne Nat’l Lab., Challenges for the
`Vehicle Tester in Characterizing Hybrid
`Electric Vehicles, 7th CRC on Road Vehicle
`Emissions Workshop (April 1997)
`FMC 1012 Kozo Yamaguchi et al., Development of a
`New Hybrid System – Dual System, SAE
`Technical Paper 960231 (February 1996)
`FMC 1013 General Electric Company, Corp. Research
`& Dev., Near-Term Hybrid Vehicle
`Program, Final Report - Phase 1 (October
`1979)
`FMC 1014 U.S. Patent No. 5,343,970
`FMC 1015 U.S. Patent No. 4,335,429
`FMC 1016 PCT Publication No. WO00/015455
`FMC 1017 U.S. Patent No. 5,586,613
`FMC 1018 U.S. Patent No. 913,846
`FMC 1019 Society of Automotive Engineers Special
`Publication, Technology for Electric and
`Hybrid Vehicles, SAE SP-1331 (February
`1998)
`
`iii
`
`Yamaguchi Paper
`
`GE Final Report
`
`Severinsky ’970
`Kawakatsu
`’455 PCT publication
`Ehsani
`Pieper
`SAE SP-1331
`
`

`

`Identifier
`Anderson
`
`Reinbeck
`Unnewehr
`
`Exhibit
`Description
`No.
`FMC 1020 Catherine Anderson & Erin Pettit, The
`Effects of APU Characteristics on the
`Design of Hybrid Control Strategies for
`Hybrid Electric Vehicles, SAE Technical
`Paper 950493 (1995)
`FMC 1021 U.S. Patent No. 3,888,325
`FMC 1022 L. E. Unnewehr et al., Hybrid Vehicle for
`Fuel Economy, SAE Technical Paper
`760121 (1976)
`’457 application
`FMC 1023 U.S. Application No. 11/429,457
`’134 file history
`FMC 1024 File History for U.S. Patent No. 7,455,134
`Yamaguchi
`FMC 1025 U.S. Patent No. 5,865,263
`
`FMC 1026 [Not Used]
`’577 application
`FMC 1027 U.S. Application No. 10/382,577
`’672 patent
`FMC 1028 U.S. Patent No. 6,209,672
`’391 patent
`FMC 1029 U.S. Patent No. 6,338,391
`FMC 1030 U.S. Provisional Application No. 60/122,296 ’296 provisional
`application
`’762 application
`’455/’134 Description
`Comparison
`
`FMC 1031 U.S. Application No. 11/229,762
`FMC 1032 Comparison of ’455 PCT Publication and
`’134 Patent Descriptions
`
`
`
`
`
`
`iv
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`FORD MOTOR COMPANY (“Petitioner” or “FMC”) petitions for inter
`
`partes review, seeking cancellation of claims 1-3, 5-6, 19-20, 26-27, 40, 58 and 62
`
`of U.S. Patent No. 7,455,134 to Severinsky et al. (“the ’134 patent,” FMC 1001),
`
`which is owned by PAICE, LLC et al.
`
`As explained in detail below and in the Declaration of Dr. Jeffrey L. Stein
`
`(“Stein Decl.,” FMC 1002), the challenged claims of the ’134 patent are
`
`unpatentable over the prior art. The challenged claims are directed to a hybrid
`
`vehicle or a method for controlling a hybrid vehicle with a defined electrical
`
`limitation–a ratio of maximum DC voltage to current supplied of at least 2.5, when
`
`maximum current is supplied. Contrary to the claim of priority, the challenged
`
`claims have an earliest effective filing date of April 2, 2001 due to this “at least
`
`2.5” ratio. Accordingly, a related PCT application published in March 2000 as
`
`WO00/15455 (“the ’455 PCT publication,” FMC 1016) is intervening art under 35
`
`U.S.C. § 102(b). As a corresponding PCT publication in the ’134 patent family, the
`
`’455 PCT publication anticipates claims 1-3, 5, 19-20, 26-27, 40, 58, and 62.
`
`Additionally, the ’455 PCT publication together with U.S. Patent No. 5,586,613 to
`
`Ehsani (“Ehsani,” FMC 1017) renders claim 6 obvious. Petitioner is reasonably
`
`likely to prevail in showing that at least one of the challenged claims is not
`
`patentable. Inter partes review of the ’134 patent should be instituted.
`
`1
`
`

`

`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`
`
` Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)): A.
`
`Petitioner certifies that Ford Motor Company is the real party-in-interest.
`
`
`
` Related Matters (37 C.F.R. § 42.8(b)(2)): B.
`
`Petitioner identifies the following judicial matters:
`
`1) Paice, LLC et al. v. Ford Motor Company, Case Number 1-14-cv-00492
`
`filed February 19, 2014 in the District of Maryland, Baltimore Division. The ’134
`
`patent is being asserted in this proceeding, along with four other patents within the
`
`same patent family as the ’134 patent—namely, U.S. Patent Nos. 7,104,347,
`
`7,237,634, 7,559,388 and 8,214,097.
`
`2) Paice LLC et al. v. Hyundai Motor America, et al., Case Number
`
`1:2012cv00499 filed on February 16, 2012 in the District of Maryland, Baltimore
`
`Division. The ’134 patent has not been asserted in that proceeding, however, it is
`
`part of the same family of patents that have been asserted.
`
`Additionally, IPR petitions have been concurrently filed on this day directed
`
`to patents that are included in the above litigation proceeding and part of the same
`
`family of patents —specifically, IPR2014-00570, IPR2014-00571, and IPR2014-
`
`00579.
`
`
`
`2
`
`

`

` Lead and Back-Up Counsel and Service Information (37 C.
`
`
`C.F.R. § 42.8(b)(3-4))
`
`Ford appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman P.C.
`
`as lead counsel, and appoints Sangeeta G. Shah (Reg. No. 38,614), Andrew B.
`
`Turner (Reg. No. 63,121) and Michael D. Cushion (Reg. No. 55,094) of Brooks
`
`Kushman P.C., as well as Lissi Mojica (Reg. No. 64,121) and Kevin Greenleaf
`
`(Reg. No. 64,062) of Dentons US LLP, as back-up counsel. An appropriate Power
`
`of Attorney is filed concurrently herewith.
`
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made via
`
`hand-delivery to Brooks Kushman P.C., 1000 Town Center, 22nd Floor, Southfield,
`
`Michigan 48075 and Dentons US LLP, 1530 Page Mill Road, Suite 200 Palo Alto,
`
`California 94304-1125. Petitioner consents to service by email at
`
`FPGP0106IPR1@brookskushman.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com and iptdocketchi@dentons.com.
`
`III. GROUNDS FOR STANDING AND PROCEDURAL
`STATEMENTS (42.104(a))
`
`Petitioner certifies that the ’134 patent is available for inter partes review
`
`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the claims of the ’134 patent on the grounds identified in this Petition.
`
`3
`
`

`

`The undersigned authorizes the Office to charge Petitioner’s Deposit
`
`Account No. 06-1510 for the Petition fees. Any additional fees or overpayment
`
`credits can be charged to the above-referenced Deposit Account.
`
`IV. OVERVIEW OF CHALLENGE (§ 42.104(b))
`
`Inter partes review of the ’134 patent’s challenged claims is requested on
`
`the grounds for unpatentability listed in the index below.
`
`Grounds of Unpatentability for U.S. Patent No. 7,455,134
`
`Ground
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`1A
`
`’455 PCT publication
`
`§ 102
`
`1-3, 5, 19-20, 26-27, 40, 58 and
`
`62
`
`1B
`
`’455 PCT publication
`
`§ 103
`
`1-3, 5, 19-20, 26-27, 40, 58 and
`
`62
`
`2
`
`’455 PCT publication and
`
`§ 103
`
`6
`
`Ehsani
`
`The ’455 PCT publication (FMC 1016) was not cited during prosecution of
`
`the ’134 patent; Ehsani (FMC 1017) was cited, but not applied. In support of the
`
`proposed grounds of unpatentability, this Petition is accompanied by a declaration
`
`of technical expert Dr. Jeffrey L. Stein (FMC 1002).
`
`4
`
`

`

`V. OVERVIEW OF THE ’134 PATENT
`
`As shown graphically below, the ’134 patent (highlighted in blue), a
`
`divisional in an extensive chain of filings, claims priority to two separate
`
`provisional applications–Provisional Appl. No. 60/100,095 (“the ’095 provisional
`
`application,” FMC 1010), filed September 14, 1998, and Provisional Appl. No.
`
`60/122,296 (“the ’296 provisional application,” FMC 1030), filed March 1, 1999.
`
`The diagram below shows the ’134 patent, its ancestors (shown using dark blue
`
`connectors), and other relevant family members and is provided in Exhibit FMC
`
`1003 for reference. (“The ’134 Patent Family Chart,” FMC 1003.) For the sake of
`
`focus and brevity, other related patents and pending applications are not shown.
`
`5
`
`
`
`

`

`Significant to this Petition, the ’134 patent’s priority claim extends through,
`
`among other applications, continuation-in-part (“CIP”) U.S. Patent No. 6,554,088
`
`(“the ’088 CIP patent,” FMC 1004) (highlighted in yellow), which issued from CIP
`
`Application No. 09/822,866 (“the ’866 CIP application,” FMC 1005). The ’088
`
`CIP patent is a CIP of two applications, U.S. Application No. 09/264,817 (“the
`
`’817 application,” FMC 1006), which issued as U.S. Patent No. 6,209,672 (“the
`
`’672 patent,” FMC 1028), and U.S. Application No. 09/392,743 (“the ’743
`
`application,” FMC 1007), which issued as U.S. Patent No. 6,338,391 (“the ’391
`
`patent,” FMC 1029).1 (See Stein Decl., FMC 1002, ¶¶77-83.)
`
`As will be explained more fully below, the ’866 CIP application added new
`
`matter, including several electrical limitations not disclosed in either of its
`
`
`
` The ’134 patent is a divisional of Appl. No. 10/382,577, filed March 7, 2003,
`
` 1
`
`now U.S. Pat. No. 7,104,347, which is a divisional of Appl. No. 09/822,866, filed
`
`April 2, 2001, now U.S. Pat. No. 6,554,088, which is a continuation-in-part of
`
`Appl. No. 09/264,817, filed March 9, 1999, now U.S. Pat. No. 6,209,672, which in
`
`turn claimed the benefit of Provisional Appl. No. 60/100,095, filed September 14,
`
`1998, and was also a continuation-in-part of Appl. No. 09/392,743, filed
`
`September 9, 1999, now U.S. Pat. No. 6,338,391, which in turn claimed the benefit
`
`of Provisional Appl. No. 60/122,296, filed March 1, 1999.
`
`6
`
`

`

`immediate parents – the ’817 and ’743 applications. (Stein Decl., FMC 1002, ¶¶76,
`
`85-93.) The ’134 patent has a specification in common with the ’866 CIP
`
`application and claims the new matter added to the ’866 CIP application. (Stein
`
`Decl, FMC1002, ¶84.) The ’134 patent claims therefore are not entitled to a
`
`priority date earlier than the filing date of the ’866 CIP application, April 2, 2001.
`
`U.S. Patent No. 7,237,634 (“the ’634 patent,” FMC 1008) (highlighted in green),
`
`part of the ’134 patent family, also includes a common specification with the ’134
`
`patent and is relevant and included for reasons explained herein.
`
`VI. CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R.
`§ 42.104(B)(3)
`
`Per the claim construction standard for an inter partes review, Petitioner
`
`bases this petition upon the broadest reasonable interpretation of the claim
`
`language. Solely for purposes of this proceeding, the following discussion
`
`proposes constructions of certain claim terms. Under the broadest reasonable
`
`interpretation standard, Petitioner proposes that all claims should be entitled to
`
`their plain and ordinary meaning, with the exception of the “start and stop the
`
`engine”2 term that requires clarification as described below.
`
`
`In
`
`this Petition, quoted claim
`
`language
`
`is
`
`italicized
`
`for ease of
`
`
`
` 2
`
`reference. Petitioner will occasionally add boldface or underlining to certain claim
`
`language for emphasis.
`
`7
`
`

`

`
`A.
`
`“Start And Stop The Engine”
`
`The limitation recited in the challenged independent claims of “a controller,
`
`operable to start and stop the engine to minimize fuel consumption” requires
`
`construction and additional clarification. The boldface limitation will be addressed
`
`below.
`
`Independent claim of the ’134 patent is directed to “[a] hybrid vehicle,
`
`comprising. . . : “a controller, operable to start and stop the engine to minimize
`
`fuel consumption.” The term “start and stop the engine” requires clarification as
`
`the plain and ordinary meaning should be construed in the context of a hybrid
`
`vehicle application. Starting and stopping a hybrid electric vehicle (HEV) includes
`
`both “cold starts”—turning on the engine when the vehicle is not operating—and
`
`“hot starts”—interim engine starts that occur after engine operation is interrupted
`
`(i.e., stopped) while the vehicle is operating. (Stein Decl., FMC 1002, ¶75.) At
`
`lower vehicle speeds or loads, for example, an HEV typically stops engine
`
`operation and controls an electric motor to provide torque for vehicle propulsion.
`
`At higher vehicle speeds or loads, the HEV restarts the engine to provide torque to
`
`meet operator demand. (Stein Decl., FMC 1002, ¶75.) As interim engine starts and
`
`stops are part of basic HEV operation, the plain and ordinary meaning of the term
`
`“start and stop the engine” should be clarified to include all engine start and stops,
`
`including interim ones that occur during normal vehicle operation.
`
`8
`
`

`

`VII. PRIORITY DATE OF THE CHALLENGED CLAIMS
`
`
`
` The “At Least 2.5” Ratio Is Unsupported Before April 2, 2001 A.
`
`1.
`
`No Explicit Support Exists
`
`The ’134 patent claims priority all the way to the ’095 provisional
`
`application, filed September 14, 1998, and the ’296 provisional application, filed
`
`March 1, 1999. (See ’134 Patent Family Chart, FMC 1003; Stein Decl., FMC 1002,
`
`¶¶77-83.) However, the ’134 patent is entitled to a filing date no earlier than the
`
`’866 CIP application, April 2, 2001. Under 35 U.S.C. § 120, the challenged claims
`
`are entitled priority if the claimed subject matter is disclosed continuously to the
`
`claimed priority date. Prior to the April 2, 2001 filing date of the ’866 CIP
`
`application, there is no disclosure of the “at least 2.5” ratio of maximum DC
`
`voltage to current supplied limitation in the challenged claims. (Stein Decl., FMC
`
`1002, ¶¶88-113.) Specifically, the challenged independent claims recite “a ratio of
`
`maximum DC voltage on the DC side of at least said first AC-DC converter
`
`coupled to said first electric motor to current supplied from said electrical storage
`
`device to at least said first AC-DC converter, when maximum current is so
`
`supplied, is at least 2.5.” More specifically, this “at least 2.5” ratio limitation is
`
`not described in either of the parent applications preceding the ‘866 CIP
`
`application, the ’817 and ’743 applications. (Stein Decl., FMC 1002, ¶¶89 and 96-
`
`97.)
`
`9
`
`

`

`The granting of priority depends on when the subject matter claimed in a
`
`CIP application first appeared in the parent disclosures. Augustine v. Gaymar, 181
`
`F.3d 1291, 1302 (Fed. Cir. 1999). The test for whether a priority application
`
`provides adequate written description of the later claimed elements is whether the
`
`disclosure of the priority application reasonably conveys that the inventor had
`
`possession of the later claimed subject matter at the time that the parent application
`
`was filed. Augustine, 181 F.3d at 1302. A description that merely renders the
`
`invention obvious does not satisfy the written description requirement. Lockwood
`
`v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997). Rather, the priority
`
`application itself must describe the invention. PowerOasis v. T-Mobile, 522 F.3d
`
`1299, 1306 (Fed. Cir. 2008).
`
`
`
`The applications preceding the ’866 CIP application simply lack the
`
`requisite written description support for the “at least 2.5” ratio limitation and, thus,
`
`Patentee is not entitled to the full scope of its claim of priority. The filings before
`
`the ’866 CIP application fail to disclose any voltage/current ratios, let alone the
`
`claimed range of ratios having a lower limit of 2.5. (Stein Decl., FMC 1002, ¶¶96-
`
`97.)
`
`2.
`
`Patentee’s Admissions
`
`By Patentee’s own admission, the “at least 2.5” ratio was new matter as of
`
`the ’866 CIP application. (Stein Decl., FMC 1002, ¶¶89-93.) The Patentee first
`
`10
`
`

`

`introduced the “at least 2.5” ratio in the ’866 CIP application under a section
`
`entitled “Further Improvements According to the Continuation-in-Part”:
`
`More particularly, it appears useful to size the components with
`
`respect to one another, in particular, the battery bank with respect to
`
`the traction motor(s), so that the peak current is no more than about
`
`150 A, and so that under peak electrical loading (usually under
`
`acceleration) a ratio of at least 2.5:1 of the battery voltage to the
`
`peak current is exceeded. . .Applicants assert, therefore, that
`
`according to the invention the components of the hybrid vehicles of
`
`the invention are to be sized so that the ratio between battery voltage
`
`under load to peak current is at least about 2.5, and preferably is at
`
`least 3.5 to 4:1.
`
`(’866 CIP application, FMC 1005, pp. 89-91, emphasis added.)
`
`This admission
`
`is echoed
`
`in Patentee’s continuing prosecution. In
`
`connection with the ’634 patent, another patent in the ’134 patent family, Patentee
`
`repeated its assertion that the “at least 2.5” electrical ratio limitation is new matter
`
`added to the ’866 CIP application. The ’634 patent, another grandchild of the ’866
`
`CIP application, includes a common specification with the ’134 patent. During
`
`prosecution of the ’634 patent3, Patentee added claims including the “at least 2.5”
`
`ratio limitation and noted that “new claims have been added reciting specifics of
`
`
` The ’634 patent is a divisional of U.S. Patent No. 7,104,347, filed March 7, 2003,
`
` 3
`
`which is a divisional of the ’088 CIP patent.
`
`11
`
`

`

`the preferred ranges of voltage and current, and their ratio” and referenced the CIP
`
`“Further Improvements” section common between the specifications of the ’634
`
`patent, the ’134 patent and the ’866 CIP application as support. (’634 file history,
`
`FMC 1009, October 24, 2006 Amendment, p. 311; Stein Decl., FMC 1002, ¶87.)
`
`In particular, Patentee added new claim 76 directed to the “at least 2.5” electrical
`
`ratio limitation and in the “Remarks” noted that support for claim 76 could be
`
`found
`
`in
`
`the application on pages 89-91—the section entitled “Further
`
`Improvements According to the Continuation-In-Part.” (’634 file history, FMC
`
`1009, pp. 94-96, 256, 311.)
`
`3.
`
`Implicit or Inherent Support Is Further Absent
`
`Notwithstanding the lack of disclosure and prior admissions, Patentee may
`
`assert that the 2.5 ratio disclosure is implicit from the ’817 and ’743 ancestor
`
`application filings. The disclosures, however, evidence otherwise.
`
`When an explicit limitation in a claim “is not present in the written
`
`description whose benefit is sought it must be shown that a person of ordinary skill
`
`would have understood, at the time the patent application was filed, that the
`
`description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed.
`
`Cir. 1998, emphasis added). Alternately, to establish that the claim limitation is
`
`inherent, the specification must make clear to those skilled in the art “that the
`
`12
`
`

`

`missing descriptive matter is necessarily present in the thing described in the
`
`reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999, emphasis added).
`
`The ’817 application’s vague preference for a “relatively high voltage and
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`relatively low current” does not allow one skilled in the art to understand that the
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`claimed range of ratios of “at least 2.5” is required or inherent. (See ’817
`
`application, FMC 1006, p. 20:1-4; Stein Decl., FMC 1002, ¶¶96-97.) Such
`
`imprecise language cannot constitute a defined genus. MPEP §2163; In re Lukach,
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`442 F.2d 967, 969 (CCPA 1971).
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`Likewise, if one skilled in the art deduced a ratio from the maximum voltage
`
`and current ratings disclosed in the pre-’866 CIP application filings, that ratio
`
`would be 3.84. (Stein Decl., FMC 1002, ¶97.) Per Dr. Stein, because no ratio is
`
`ever mentioned in the pre-’866 CIP filings, it is unlikely that one skilled in the art
`
`would deduce one. (Stein Decl., FMC 1002, ¶97.) Taking it a step further, if the
`
`ratio is calculated using “the maximum DC voltage” under load when “maximum
`
`current is so supplied,” then a different set of calculations is required. This requires
`
`one to appreciate the relevant battery characteristics required to calculate a voltage
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`under load and then look to an extraneous source to gather the requisite
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`information. (Stein Decl., FMC 1002 ¶¶98-99.) Though there is no suggestion for
`
`doing so, if one of ordinary skill in the art would have deduced the applicable
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`“under load” voltage-to-current ratio, then the ratio would be 2.76. (Stein Decl.,
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`FMC 1002, ¶¶100-113.) Without the benefit of hindsight, one skilled in the art
`
`would not have considered such calculations based on the applications preceding
`
`the ’866 CIP application.
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`Even if explicitly recited, disclosure of a single ratio of 3.84 (2.76 under
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`load) would be insufficient to provide written description support for the “at least
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`2.5” ratio limitation. The applications preceding the ’866 CIP application neither
`
`provide support for the lower limit of 2.5 nor the entire unbounded range of ratios.
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`The description of a single embodiment, while enough for anticipation, is
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`not a claim-supporting disclosure. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
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`1562 (Fed. Cir. 1991); In re Lukach, 442 F.2d at 969. Without a representative
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`number of species across an entire genus, possession of the genus is unclear and
`
`written description is not met. Ariad Pharms, Inc. v. Eli Lilly Co., 598 F.3d 1336,
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`1351 (Fed. Cir. 2010). Identification of one species is insufficient to support the
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`’134 patent’s claim to an open-ended “at least 2.5” ratio genus. In re Wertheim,
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`541 F.2d 257, 263-264 (CCPA 1976).
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`Accordingly, prior to the ’866 CIP filing, there is no explicit, implicit or
`
`inherent support for the “at least 2.5” ratio limitation.
`
`
`B.
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`The Applicable Priority Date Gives Rise To Intervening Art
`
`Without requisite support, the ’134 patent is not entitled to claim priority to
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`the earlier ’817 and ’743 applications—the immediate parents of the ’866 CIP
`
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`application. Because the claimed range of electrical ratios of “at least 2.5” in the
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`’134 patent claims was not properly supported before the filing date of the ’866
`
`CIP application, the earliest effective filing date for the ’134 patent claims is April
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`2, 2001.
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`The defective claim of priority gives rise to intervening art. Go Med. Indus.
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`Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1270 (Fed. Cir. 2006). As the earliest
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`effective filing date for the challenged claims is April 2, 2001, the 455 PCT
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`publication—which published more than one year before the earliest effective
`
`filing date—is prior art under 35 U.S.C. § 102(b). A related patent publication may
`
`be prior art to a subsequent CIP if the written description requirement is not
`
`satisfied by the priority application. Tronzo v. Biomet, Inc., 156 F.3d 1143
`
`(Fed.Cir. 1998); In re Lukach, 413 F.2d 967, 969 (CCPA 1971).
`
`VIII. THE PERSON OF ORDINARY SKILL IN THE
`RELEVANT FIELD AND THE RELEVANT TIMEFRAME
`
`The relevant field for purposes of the ’134 patent is systems, methods and
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`apparatuses for controlling and operating a hybrid electric vehicle (“HEV”) and
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`methods for improving fuel economy and reducing emissions. (’134 patent, FMC
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`1001, col. 1:21-29 (“Field of the Invention”).) Within a given field, the level of
`
`ordinary skill in the art is evidenced by the prior art references of record. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did
`
`15
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`not err in adopting the approach that the level of skill in the art was best
`
`determined by the references of record).
`
`With that in mind, as of April 2, 2001, the earliest possible priority date of
`
`the claims of the ’134 patent, a person of ordinary skill in the art typically would
`
`have possessed: 1) a graduate degree in mechanical, electrical or automotive
`
`engineering with at least some experience in the design and control of combustion
`
`engines, electric or hybrid electric vehicle propulsion systems, or design and
`
`control of automotive transmissions, or 2) a bachelor's degree in mechanical,
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`electrical or automotive engineering and at least five years of experience in the
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`design and control of combustion engines, electric vehicle propulsion systems, or
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`automotive transmissions.
`
`IX. STATE OF THE ART
`
`Hybrid Electric Vehicles (HEVs) were conceived in an attempt to combine
`
`and utilize the power capabilities of electric motors and internal combustion
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`engines to satisfy all the torque required or demanded for propelling the vehicle, in
`
`a fuel efficient manner. (Stein Decl., FMC 1002, ¶44.) While HEVs date back over
`
`100 years, substantial advancements to the engine limited HEV research and
`
`development (R&D) for the early portion of the 20th Century. (Stein Decl., FMC
`
`1002, ¶¶45-46.)
`
`16
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`

`

`The Clean Air Act and other regulatory events in the 1960s and 1970s,
`
`spurred a renewed interest in HEV R&D to further increase vehicle efficiency and
`
`to improve emissions. (Stein Decl., FMC 1002, ¶46.) Such R&D resulted in
`
`advancements to HEV architectures and operating control strategies. (Stein Decl.,
`
`FMC 1002, ¶¶46-47; Duoba4, FMC 1011, p. 3.)
`
`During this time, HEV architectures included: (1) “series hybrid electric
`
`vehicles” (“Series HEV”) that mechanically connected and used the motor to
`
`supply all propulsive torque to the wheels; and (2) “parallel hybrid electric
`
`vehicles” (“Parallel HEV”) that used an engine and motor either separately or in
`
`combination to provide the required torque to the wheels. (Stein Decl., FMC 1002,
`
`¶¶48-51;Yamaguchi Paper5, FMC 1012, pp. 3-4, Figure 1.)
`
`
`
` Michael Duoba, Ctr. for Transp. Research, Argonne Nat’l Lab., Challenges for
`
` 4
`
`the Vehicle Tester in Characterizing Hybrid Electric Vehicles, 7th CRC on Road
`
`Vehicle Emissions Workshop (April 1997)
`
`5 Kozo Yamaguchi et al., Development of a New Hybrid System – Dual System,
`
`SAE Technical Paper 960231 (February 1996)
`
`17
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`

`

`Yamaguchi Paper, FMC 1012, p. 4, Figure 1(A), (B)
`
`
`
`During this time, one of skill in the art would have known that a series HEV
`
`was operated to optimize efficiency and reduce emission levels at all times. (Stein
`
`Decl., FMC 1002, ¶49.)
`
`Yamaguchi Paper, FMC 1012, p. 4, Figure 1(C-1), (C-2)
`
`
`
`18
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`
`
`With regards to control strategies, it was known that engines operate
`
`inefficiently and have “high fuel consumption” relative to power output at low
`
`vehicle speeds and low torque levels (i.e., low “loads”). (Stein Decl., FMC 1002,
`
`¶¶54-56.) Thus, it was known to modify engine control strategies to limit operation
`
`of the engine to its most efficient operating range – to minimize emission and
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`energy consumption. Id.
`
`Likewise, the desired electrical characteristics of HEV systems, were known
`
`at least as early as 1979. (Stein Decl., FMC 1002, ¶¶59-60.) In a project funded by
`
`the U.S. government, researchers and developers at General Electric expressed the
`
`desirability of high voltage and low current systems in hybrid electric vehicle
`
`design. (Stein Decl., FMC 1002, ¶¶59-60; GE Final Report6, FMC 1013, pp. 504,
`
`523.)
`
`Indeed, the control strategy in U.S. Patent No. 5,343,970 to Alex Severinsky
`
`(“Severinsky ’970,” FMC 1014), one of the inventors listed on the ’134 patent, is
`
`similar to the strategy set forth in the challenged claims. According to both
`
`Severinsky ’970 and the ’134 patent, the internal combustion engine is operated
`
`only under the most efficient conditions of output power and speed. (Stein Decl.,
`
`
`
` General Electric Company, Corp. Research & Dev., Near-Term Hybrid Vehicle
`
` 6
`
`Program, Final Report - Phase 1 (October 1979)
`
`19
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`

`

`FMC 1002, ¶¶57-58.) Severinsky ’970 further articulates a preference for high
`
`voltage/low current hybrid systems. (Severinsky ’970, FMC 1014, col. 6:5-11;
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`Stein Decl., FMC 1002, ¶61.)
`
`X. BACKGROUND OF THE ’134 PATENT
`
`The ’134 patent issued on November 25, 2008 from U.S. Patent Application
`
`No. 11/429,457, filed May 8, 2006 (“the ’457 application,” FMC 1023). The
`
`Patentee submitted over 500 references to the Patent Office. The ’134 patent was
`
`allowed without rejection or objection in the first Office action. (’134 File History,
`
`FMC 1024, pp. 375-379; Stein Decl., FMC 1002, ¶73.)
`
`Claim 1 of the ’134 patent is merely directed toward a well-known parallel
`
`hybrid vehicle topology with electrical components provi