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. 8,214,097 to Severinsky et al.
`IPR Case No. IPR2014-00570
`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 30-33, 35, 36, 38 and 39 of U.S. PATENT NO. 8,214,097)
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST .......................................................................................................... i
`
`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)) ....................................................................................... 2
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 3
`
`III. GROUNDS FOR STANDING (§ 42.104(a)) ................................................. 3
`
`IV. OVERVIEW OF CHALLENGE (§ 42.104(b)) .............................................. 3
`
`V. OVERVIEW OF THE ’097 PATENT FAMILY ............................................ 4
`
`VI. PRIORITY DATE FOR CLAIM 38 OF THE ’097 PATENT ........................ 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`
`No Explicit Support Exists .......................................................... 7
`Patentee’s Admissions ................................................................ 8
`Implicit Support Is Also Absent ................................................. 9
`The 2001 Priority Date Gives Rise to Intervening Art .............10
`An Insolubly Vague Incorporation By Reference Should
`Be Afforded No Weight ............................................................11
`
`VII. PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND THE RELEVANT TIMEFRAME .......................................................13
`
`VIII. TECHNICAL FUNDAMENTALS OF THE CLAIMED SUBJECT
`MATTER .......................................................................................................14
`
`IX. PROSECUTION HISTORY .........................................................................15
`
`X.
`
`STATE OF THE ART RELATIVE TO THE ’097 PATENT ......................17
`
`A.
`B.
`
`Background .........................................................................................17
`Prior Art Disclosing Primary Features ................................................19
`A. Caraceni et al. Hybrid Power Unit Development for
`1.
`
`Fiat Multipla Vehicle, SAE 981124 (February, 1998)
`(“Caraceni,” FMC 1005) ...........................................................19
`U.S. Patent No. 5,959,420 (“Boberg,” FMC 1012) ..................20
`Catherine Anderson, Erin Pettit, The Effects of APU
`Characteristics on the Design of Hybrid Control
`
`2.
`
`3.
`
`
`
`
`

`

`
`
`4.
`
`
`Strategies for Hybrid Electric Vehicles, SAE 950493
`(February, 1995) (“Anderson,” FMC 1006) .............................20
`U.S. Patent No. 5,343,970 (“Severinsky ’970,” FMC
`1009) .........................................................................................20
`Prior Art Disclosing Additional Features ............................................21
`1.
`U.S. Patent No. 5,865,263 (“Yamaguchi,” FMC 1007) ...........21
`
`2.
`U.S. Patent No. 4,707,984 (“Katsuno,” FMC1008) .................21
`
`
`C.
`
`XI. CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R.
`§ 42.104(B)(3) ...............................................................................................22
`
`XII. UNPATENTABILITY GROUNDS ..............................................................23
`
`B.
`
`C.
`
`A. Ground 1A: Claim 38 Is Anticipated by the Intervening ’455
`PCT publication ...................................................................................23
`Ground 1B: Claim 38 Is Obvious Over the ’455 PCT
`Publication ...........................................................................................29
`Ground 2: Claims 30, 31, 35 and 36 Are Obvious over Caraceni ......30
`1.
`Independent Claim 30 ...............................................................30
`
`2.
`Dependent Claims 31, 35 and 36 ..............................................38
`
`D. Ground 3: Claims 30, 31, 35 and 36 Are Obvious over Caraceni
`in View of Boberg ...............................................................................40
`Independent Claim 30 ...............................................................40
`1.
`
`2.
`Dependent Claims 31, 35 and 36 ..............................................42
`
`Ground 4: Claim 32 Is Obvious over Caraceni in View of
`Boberg and Yamaguchi .......................................................................43
`Ground 5: Claim 33 Is Obvious over Caraceni in View of
`Boberg, Yamaguchi and Further in View of Katsuno ........................44
`G. Ground 6: Claims 30, 31 35, 36, 38 and 39 Are Obvious over
`Severinsky ’970 in View of Anderson ................................................46
`1.
`Independent Claim 30 ...............................................................46
`
`2.
`Dependent Claims 31, 35, 36, 38 and 39 ..................................51
`
`H. Ground 7: Claim 32 Is Obvious over Severinsky ’970 in View
`of Anderson and further in View of Yamaguchi .................................55
`Ground 8: Claim 33 Is Obvious over Severinsky ’970 in View
`of Anderson, Yamaguchi and further in View of Katsuno .................56
`
`E.
`
`F.
`
`I.
`
`XIII. OBVIOUSNESS SHOWING ........................................................................58
`
`A. Objective Indicia of Nonobviousness .................................................58
`B.
`The Proposed Grounds Are Not Redundant ........................................58
`
`XIV. CONCLUSION ..............................................................................................60
`
`ii
`
`

`

`
`
`
`
`EXHIBIT LIST
`
`FMC 1011
`
`
`
`
`Identifier
`Description
`Exhibit No.
`’097 patent
`FMC 1001 U.S. Patent No. 8,214,097
`FMC 1002 Declaration of Dr. Jeffrey L. Stein Stein Decl.
`FMC 1003
`File History of U.S. Patent No.
`’097 File History
`8,214,097
`PCT Publication No. WO00/15455 ’455 PCT publication
`FMC 1004
`FMC 1005 A. Caraceni et al., Hybrid Power
`Caraceni
`Unit Development for Fiat
`Multipla Vehicle, SAE Technical
`Paper 981124 (1998)
`FMC 1006 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 1007 U.S. Patent No. 5,865,263
`FMC 1008 U.S. Patent No. 4,707,984
`FMC 1009 U.S. Patent No. 5,343,970
`FMC 1010
`File History for U.S. Patent No.
`7,237,634
`John B. Heywood, Internal
`Combustion Engine Fundamentals
`(McGraw-Hill 1988)
`FMC 1012 U.S. Patent No. 5,959,420
`FMC 1013 U.S. Patent No. 8,214,097 Patent
`Family Chart
`FMC 1014 U.S. Application No. 09/264,817
`FMC 1015 U.S. Application No. 09/392,743
`FMC 1016
`Society of Automotive Engineers
`Special Publication, Technology
`for Electric and Hybrid Vehicles,
`SAE SP-1331 (February 1998)
`FMC 1017 U.S. Application No. 60/122,296
`
`Anderson
`
`Yamaguchi
`Katsuno
`Severinsky ’970
`’634 file history
`
`Heywood
`
`Boberg
`’097 Patent Family
`
`’817 application
`’743 application
`SAE SP-1331
`
`’296 provisional application
`
`

`

`Identifier
`’088 CIP patent
`Pieper
`Duoba
`
`Yamaguchi Paper
`
`Reinbeck
`Kawakatsu
`Unnewehr
`
`The Condensed Chemical
`Dictionary
`
`Brown
`
`Engh
`
`
`Stefanopoulou
`
`
`
`Description
`Exhibit No.
`FMC 1018 U.S. Patent No. 6,554,088
`FMC 1019 U.S. Patent No. 913,846
`FMC 1020 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 1021 Kozo Yamaguchi et al.,
`Development of a New Hybrid
`System – Dual System, SAE
`Technical Paper 960231 (February
`1996)
`FMC 1022 U.S. Patent No. 3,888,325
`FMC 1023 U.S. Patent No. 4,335,429
`L. E. Unnewehr et al., Hybrid
`FMC 1024
`Vehicle for Fuel Economy, SAE
`Technical Paper 760121 (1976)
`FMC 1025 Hawley, G.G., The Condensed
`Chemical Dictionary, Van
`Nostrand Reinhold Co., 9th ed.
`(1977)
`FMC 1026 Brown, T.L. et al., Chemistry, The
`Central Science, Third Edition
`(1985)
`FMC 1027 Grunde T. Engh & Stephen
`Wallman, Development of the
`Volvo Lambda-Sond System, SAE
`Technical Paper 770295 (1977)
`[Not Used]
`FMC 1028
`FMC 1029 A. G. Stefanopoulou et al., Engine
`Air-Fuel Ratio and Torque Control
`using Secondary Throttles,
`Proceedings of the 33rd IEEE
`Conference on Decision and
`Control (December 1994)
`
`ii
`
`

`

`
`
`Description
`Exhibit No.
`FMC 1030 General Electric Company, Corp.
`Research & Dev., Near-Term
`Hybrid Vehicle Program, Final
`Report - Phase 1 (October 1979)
`FMC 1031 U.S. Application No. 13/065,704
`FMC 1032
`[Not Used]
`FMC 1033 U.S. Application No. 12/320,600
`FMC 1034 U.S. Application No. 11/429,458
`FMC 1035 U.S. Application No. 10/382,577
`FMC 1036 U.S. Application No. 09/822,866
`FMC 1037 U.S. Patent No. 6,209,672
`FMC 1038 U.S. Application No. 60/100,095
`FMC 1039 U.S. Patent No. 6,338,391
`FMC 1040
`[Not Used]
`FMC 1041 U.S. Application No. 11/229,762
`FMC 1042 Comparison of ’455 PCT
`Publication and ’097 Patent
`Descriptions
`
`Identifier
`GE Final Report
`
`’704 application
`
`’600 application
`’458 application
`’577 application
`’866 CIP application
`’672 patent
`’095 provisional application
`’391 patent
`
`’762 application
`’455/’097 Description
`Comparison
`
`
`
`
`
`
`
`iii
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`FORD MOTOR COMPANY (“Petitioner” or “FMC”) petitions for inter
`
`partes review, seeking cancellation of claims 30-33, 35-36 and 38-39 of U.S.
`
`Patent No. 8,214,097 to Severinsky et al. (“the ’097 patent,” FMC 1001), which is
`
`owned by PAICE, LLC and the ABELL FOUNDATION, INC. (“Patentee”).
`
`The challenged claims are directed to a hybrid vehicle system that “limit[s]
`
`the rate of change of torque produced by the engine such that combustion of fuel
`
`within the engine occurs at a substantially stoichiometric ratio.” The ’097 patent
`
`purports to be predicated on the discovery of this relationship. As evidenced by the
`
`prior art references cited in this Petition and the Declaration of Dr. Jeffrey L. Stein,
`
`the connection between limiting the rate of change of engine torque and
`
`maintaining stoichiometry was well-known.
`
`Further, the voltage limitation in claim 38 is new matter that is not supported
`
`by the earliest priority filings. Under the proper priority date, intervening prior art
`
`renders claim 38 unpatentable under 35 U.S.C. § 102(b).
`
`Petitioner is reasonably likely to prevail in showing that at least one of the
`
`challenged claims is not patentable. Inter partes review of the ’097 patent should
`
`be instituted.
`
`1
`
`

`

`
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Petitioner certifies that Ford Motor Company is the real party-in-interest.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`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 ’097
`
`patent is being asserted in this proceeding, along with four other patents within the
`
`same patent family as the ’097 patent—namely, U.S. Patent Nos. 7,104,347,
`
`7,455,134, 7,237,634 and 7,520,353.
`
`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 ’097 patent was added to the proceeding in the Second Amended
`
`Complaint filed on December 17, 2013.
`
`Additionally, petitions have been concurrently filed on this day on patents
`
`that are part of the ’097 patent family– specifically, IPR2014-00568, IPR2014-
`
`00571, and IPR2014-00579.
`
`C. Lead and Back-Up Counsel and Service Information (37
`C.F.R. § 42.8(b)(3-4))
`
`Ford appoints Sangeeta G. Shah (Reg. No. 38,614) of Brooks Kushman P.C.
`
`as lead counsel, and appoints Frank A. Angileri (Reg. No. 36,733), Michael D.
`
`2
`
`

`

`
`
`Cushion (Reg. No. 55,094) and Andrew B. Turner (Reg. No. 63,121) 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 Denton US LLP, 1530 Page Mill Road; Suite 200 Palo Alto,
`
`California 94304-1125. Petitioner consents to service by email at
`
`FPGP0110IPR1@brookskushman.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com and iptdocketchi@dentons.com.
`
`III. GROUNDS FOR STANDING (§ 42.104(a))
`
`Petitioner certifies that the ’097 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 ’097 patent on the grounds identified in this Petition.
`
`IV. OVERVIEW OF CHALLENGE (§ 42.104(b))
`
`Inter partes review of the ’097 challenged claims is requested on the
`
`grounds for unpatentability listed in the index below.
`
`3
`
`

`

`
`
`Ground
`
`Basis
`
`Index of References
`
`Claims Challenged
`
`1A/1B § 102 /§ 103
`
`’455 PCT publication
`
`38
`
`2
`
`3
`
`4
`
`5
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Caraceni
`
`30, 31, 35 and 36
`
`Caraceni and Boberg
`
`30, 31, 35 and 36
`
`Caraceni, Boberg and Yamaguchi 32
`
`Caraceni, Boberg, Yamaguchi
`and Katsuno
`
`33
`
`6
`
`§ 103
`
`Severinsky ’970 and Anderson
`
`30, 31, 35, 36, 38
`and 39
`
`7
`
`§ 103
`
`8
`
`§ 103
`
`Severinsky ’970, Anderson and
`Yamaguchi
`
`Severinsky ’970, Anderson,
`Yamaguchi and Katsuno
`
`32
`
`33
`
`
`The ’455 PCT Publication, Caraceni, Boberg, Anderson, Yamaguchi and
`
`Katsuno references were not cited or applied by the Examiner during prosecution
`
`of the ’097 patent. While the Severinsky ’970 patent was previously considered by
`
`the Patent Office, it is presented here in new combinations along with Caraceni,
`
`Anderson, Yamaguchi and Katsuno. In support of the proposed grounds of
`
`unpatentability, this Petition is accompanied by the declaration of technical expert
`
`Dr. Jeffrey L. Stein. (“Stein Decl.,” FMC 1002.)
`
`V. OVERVIEW OF THE ’097 PATENT FAMILY
`
`As shown graphically below, the ’097 patent (highlighted in blue) is a
`
`divisional application, filed March 29, 2011, in an extensive chain of filings that
`
`4
`
`

`

`
`
`spans over fifteen years, and claims priority to two separate provisional
`
`applications – U.S. Provisional Application No. 60/100,095 (“the ’095 provisional
`
`application,” FMC 1038), filed September 14, 1998 and U.S. Provisional
`
`Application No. 60/122,296 (“the ’296 provisional application,” FMC 1017), filed
`
`March 1, 1999.
`
`The diagram above illustrates the ’097 patent, its ancestors, and other
`
`relevant family members and is provided in exhibit FMC 1013, for reference
`
`
`
`5
`
`

`

`
`
`(“’097 patent family”). For the sake of focus and brevity, other related patents and
`
`pending applications are not shown.
`
`The ’097 patent’s priority claim extends through, among other applications,
`
`U.S. Patent No. 6,554,088 (“the ’088 CIP patent,” shown in yellow, FMC 1018),
`
`which issued from continuation-in-part (“CIP”) application No. 09/822,866 (“the
`
`’866 CIP application,” FMC 1036). The ’088 CIP patent is a CIP of the two
`
`applications, U.S. Serial No. 09/264,817 (“the ’817 application,” FMC 1014),
`
`which issued as U.S. Patent No. 6,209,672 (“the ’672 patent,” FMC 1037), and
`
`U.S. Serial No. 09/392,743 (“the ’743 application,” FMC 1015), which issued as
`
`U.S. Patent No. 6,338,391 (“the ’391 patent,” FMC1039). As will be explained
`
`more fully below, the ’866 CIP application added new matter, including several
`
`electrical limitations not disclosed in either of its immediate parents – the ’817 and
`
`’743 applications.
`
`VI. PRIORITY DATE FOR CLAIM 38 OF THE ’097 PATENT
`
`Claim 38 is directed to: “[t]he hybrid vehicle of claim 30, wherein energy is
`
`supplied from the battery to the motor at a peak of at least 500 volts under peak
`
`load conditions.”1 The “at least 500 volts under peak load conditions” limitation in
`
`claim 38 is not supported by the earliest priority filings.
`
`
`1 In this Petition, quoted claim language is italicized for ease of reference.
`
`6
`
`

`

`
`
`The determination of a priority date for claims in a CIP application depends
`
`on when the claimed subject matter first appeared in the chain of patent
`
`disclosures. Augustine v. Gaymar, 181 F.3d 1291, 1302 (Fed. Cir. 1999). The test
`
`for whether a priority application supports 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 (emphasis added). A description that
`
`merely renders the invention obvious does not satisfy the requirement of adequate
`
`support for the claimed invention of the later filed claims. 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).
`
`
`1.
`
`No Explicit Support Exists
`
`The applications preceding the ’866 CIP application do not disclose the “at
`
`least 500 volts” claimed range nor the idea of voltages “under peak load
`
`conditions.” (Stein Decl., FMC 1002, ¶¶127-133.) In each of the ’817 and ’743
`
`applications, a single battery voltage is provided, with no hint of a broader range or
`
`the significance of determining voltage under peak load conditions. The ’817
`
`application discloses a voltage of 768 volts, and the ’743 application discloses a
`
`voltage of 800 volts (’817 application, FMC 1014, p. 50:34-35; ’743 application,
`
`7
`
`

`

`
`
`FMC 1015, p. 34:25-28). Thus, nothing in the earliest priority filings conveys that
`
`the inventor had possession of the claimed voltage limitation.
`
`
`2.
`
`Patentee’s Admissions
`
`By Patentee’s own admission, the voltage limitation is new matter. Patentee
`
`first introduced the voltage limitation in the ’866 CIP application under a section
`
`titled “Further Improvements According to the Continuation-in-Part”:
`
`As set forth above, it is desirable for a number of reasons to operate
`
`the system of the invention at relatively high voltages, e.g., 800 V or
`
`above, in the case of larger vehicles; this reduces the current flowing
`
`throughout the system, which allows use of plug-in rather than bolted
`
`connectors, allows use of inexpensive automatic disconnects, and
`
`reduces resistance heating losses… In another example, of a much
`
`lighter 3000 lb. vehicle, an 80 HP, 60 kW motor might be sufficient.
`
`To keep the peak current to 115 A, a battery bank of 600 V nominal,
`
`500 V under load would be required. The ratio is then 4.3 (=
`
`500V/115 A). (’866 CIP application, FMC 1036, p. 89:23-90:28,
`
`emphasis added.)
`
`It is clear from the ’866 CIP application that the “at least 500 volts” under
`
`load limitation is part of the “Further Improvements” that gave rise to the CIP
`
`filing.
`
`Relevant admissions extend into the ’097 family of patents. For example,
`
`during prosecution of U.S. Patent No. 7,237,634 (“the ’634 patent”), Patentee
`
`reiterated that support for a “500 volts” limitation is found in the “Further
`
`8
`
`

`

`
`
`Improvements” CIP section. (’634 file history, FMC 1010, pp. 256 and 311; Stein
`
`Decl., FMC 1002, ¶131.) Thus, Patentee’s own admissions establish that claim 38
`
`of the ’097 patent is not entitled to a priority date before April 2, 2001--the ’866
`
`CIP application filing date.
`
`
`3.
`
`Implicit Support Is Also Absent
`
`Notwithstanding its prior admissions and lack of disclosure, Patentee may
`
`advocate that a battery voltage of 768 volts in the ’817 application provides
`
`implicit or inherent support for the voltage limitation. However, because those
`
`skilled in the art would be unable to infer that the claimed voltage range, i.e., “at
`
`least 500 volts under peak load conditions” is “required” or “necessarily present”
`
`from the relevant applications, no implicit or inherent support exists. In re
`
`Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). (Stein Decl., FMC 1002, ¶¶127-
`
`133.)
`
`First, a single voltage value is insufficient to provide written description
`
`support for the “at least 500 volts” unbounded claim range. Without a
`
`representative 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, 1351 (Fed. Cir. 2010). Identification of one voltage species in the
`
`applications preceding the ’866 CIP application is insufficient to support the ’097
`
`patent’s claim to an open-ended “at least 500 volts” genus. In re Wertheim, 541
`
`9
`
`

`

`
`
`F.2d 257, 263-264 (CCPA 1976).
`
`Second, the applications preceding the ’866 CIP application say nothing
`
`about determining voltage “under peak load conditions” as required by claim 38.
`
`(Stein Decl., FMC 1002, ¶129.) It was not until the ’866 CIP application that
`
`Patentee distinguished between nominal voltages and voltages under load. (Stein
`
`Decl., FMC 1002, ¶130.) Before that, voltage was simply voltage.
`
`Finally, even if one skilled in the art were to divine that the disclosed 768
`
`voltage value should be converted to a voltage “under peak load” value, the 500
`
`volts lower limit of the unbounded claim range is not disclosed (Stein Decl., FMC
`
`1002, ¶¶129-132.)
`
`Without explicit, implicit or inherent support for the claimed voltage
`
`limitation in the applications preceding the ’866 CIP application, claim 38 is not
`
`entitled to priority before the filing date of the ’866 CIP application, i.e., April 2,
`
`2001.
`
`
`4.
`
`The 2001 Priority Date Gives Rise to Intervening
`Art
`
`A related patent application may be prior art to claims in a subsequent CIP if
`
`there is not support for the claims in the priority application. Tronzo v. Biomet,
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`Inc., 156 F.3d 1143 (Fed.Cir. 1998); In re Lukach, 413 F.2d 967, 969 (CCPA
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`1971). As the earliest effective filing date for claim 38 is April 2, 2001, the PCT
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`Publication No. WO00/015455 (“the ’455 PCT publication”), which published on
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`March 23, 2000, (i.e., more than one year before the earliest effective filing date of
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`claim 38), is intervening prior art under 35 U.S.C. § 102(b).
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`5.
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`An Insolubly Vague Incorporation By Reference
`Should Be Afforded No Weight
`
`Despite the lack of explicit, implicit or inherent support for the claimed
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`voltage limitation, Patentee may argue that its incorporation by reference clause
`
`allows it to selectively reach back into prior art U.S. Patent No. 5,343,970
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`(“Severinsky ’970,” FMC 1009) to fill the void. The incorporation by reference
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`clause is, however, fatally ambiguous.
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`First, to incorporate material by reference, the host document must identify
`
`with detailed particularity what specific material it incorporates, “using the one of
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`ordinary skill in the art standard. Zenon Environmental, Inc. v. United States Filter
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`Corp., 506 F.3rd 1370, 1378-9 (Fed. Cir. 2007, emphasis added).
`
`The relevant language in the ’097 patent, which is included in each ancestor
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`application,
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`is as follows: “[1] This application discloses a number of
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`improvements over and enhancements to the hybrid vehicles disclosed in U.S. Pat.
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`No. 5,343,970 (“the ’970 patent”), to one of the present inventors, which is
`
`incorporated herein by this reference. [2] Where differences are not mentioned,
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`it is to be understood that the specifics of the vehicle design shown in the ’970
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`patent are, applicable to the vehicles shown herein as well. (’097 patent, FMC
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`1001, col. 10:28-34, reference numerals and emphasis added.)
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`This seemingly inconsistent, negative provision, fails to describe with
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`detailed particularity the scope of the incorporation. To give meaning to the
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`second, more specific clause, the incorporation must be limited to exclude any
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`“differences” between Severinsky ’970 and the ’097 patent. However, as the term
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`“differences” is not explained, it is impossible for one skilled in the art to ascertain
`
`the scope of the incorporation. (Stein Decl., FMC 1002, ¶¶134-136.) For example,
`
`where differences are not explicitly articulated but the subject matter between the
`
`two disclosures differs, it is unclear whether the incorporation by reference is
`
`triggered. (Stein Decl., FMC 1002, ¶135.) Likewise, it is unclear whether the
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`“specifics of the vehicle design shown in the [Severinsky] ’970 patent” would
`
`include a general disclosure of a range of battery voltages and thus fall within the
`
`incorporated subject matter.
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`An insolubly ambiguous incorporation clause is afforded no weight. Hollmer
`
`v. Harari, 681 F.3d 1351, 1358 (Fed. Cir. 2012). Thus, any attempt to utilize the
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`incorporation by reference clause to salvage an earlier effective filing date should
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`fail.
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`Second, even if the entire Severinsky ’970 prior art patent were incorporated
`
`into the ’097 patent, nothing in the Severinsky ’970 patent teaches that the battery
`
`voltage should be “at least 500 volts under peak load conditions,” as required by
`
`claim 38. The Severinsky ’970 patent—which is prior art to the ’097 patent
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`family—discloses that “[t]ypical maximum voltages corresponding to light and
`
`heavy vehicles are between 500 and 1,500 volts.” (Severinsky ’970, FMC 1009,
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`col. 19:47-50.) This range, however, is neither correlated to voltages “under peak
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`load conditions” nor unbounded, as required by claim 38.
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`In sum, under any set of arguments, claim 38 is only entitled to priority as of
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`April 2, 2001, i.e., the filing date of the ’866 CIP application/the ’088 CIP patent.
`
`VII. PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND THE RELEVANT TIMEFRAME
`
`The relevant field for purposes of the ’097 patent is systems, methods and
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`apparatuses for controlling and operating a hybrid electric vehicle (“HEV”) and
`
`methods for improving fuel economy and reducing emissions. (’097 patent, FMC
`
`1001, col. 1:24-32 (“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
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`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did
`
`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 the earliest
`
`effective filing date of the ’097 patent claims, 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
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`mechanical, electrical or automotive engineering and at least five years of
`
`experience in the design and control of combustion engines, electric vehicle
`
`propulsion systems, or automotive transmissions.
`
`VIII. TECHNICAL FUNDAMENTALS OF THE CLAIMED
`SUBJECT MATTER
`
`The challenged ’097 claims are directed to the interplay between engine
`
`control strategies, the combustion process and emissions. Fundamentally, an
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`internal combustion engine produces mechanical power by releasing energy in the
`
`fuel through a combustion reaction with air. (Stein Decl., FMC 1002, ¶¶44-45.) To
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`regulate the mechanical power (i.e. output torque) produced by the engine during
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`combustion, the amount of air and fuel provided to the engine must be controlled.
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`(Stein Decl., FMC 1002, ¶45.)
`
`Engine control strategies also regulate the air/fuel mixture to strive towards a
`
`complete combustion reaction—to minimize the formation of undesired emissions
`
`and improve fuel economy. (Stein Decl., FMC 1002, ¶46.) Such undesired
`
`emissions are further reduced in a secondary reaction using a catalyst. However,
`
`controlling emissions can be more difficult during rapid changes in output engine
`
`torque (i.e., transient conditions), because of the time delay in measuring and
`
`modifying the air-fuel mixture. (Stein Decl., FMC 1002, ¶47.) In contrast to an
`
`engine, an electric motor does not create emissions, because it converts electric
`
`energy to mechanical energy. Thus, rapid changes in motor output torque—to meet
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`driver demand—are possible without emissions concerns. (Stein Decl., FMC 1002,
`
`¶48.)
`
`HEVs combine and utilize the features of both internal combustion engines
`
`and electric motors to satisfy the torque required to propel the vehicle in a way that
`
`reduces undesired emissions and improves fuel economy. “Application of the
`
`electric motor during rapid changes in vehicle torque demand resolves the problem
`
`of additional emissions that would otherwise be created by the engine alone. This
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`was well known prior to the earliest effective filing date of the challenged claims
`
`of the ’097 patent.” (Stein Decl., FMC 1002, ¶49.)
`
`IX. PROSECUTION HISTORY
`
`As part of the amendments that led to issued claim 30, the prosecution
`
`history explains the claimed relationship between controlling combustion and
`
`stoichiometry on emissions formation:
`
`More specifically, the claims of this application are largely directed to
`
`control of the combustion of fuel in an ICE of a hybrid vehicle so that
`
`the fuel is combusted efficiently. Ideally, combustion would take
`
`place at precisely the stoichiometric ratio, whereby the fuel:air
`
`mixture that is provided to the ICE is neither "rich" (containing more
`
`fuel than can be combusted in the amount of air provided), nor "lean"
`
`(containing more air than is needed for the complete combustion of
`
`the amount of fuel provided). Rich mixtures lead to unburned fuel in
`
`the exhaust, which is wasteful of fuel and can contribute to
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`undesirable emissions, while over-lean mixtures can lead to increased
`
`combustion
`
`temperatures and formation of different undesired
`
`emissions. (’097 File History, FMC 1003, p. 231, emphasis added.)
`
`The remarks further state that it is difficult to maintain a precisely stoichiometric
`
`ratio due to the “delay in the response of the ICE controller to transients in the
`
`amount of torque required.” (’097 File History, FMC 1003, p. 232.)
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`However, by limiting the rate of increase of engine output torque, a
`
`substantially stoichiometric ratio can be maintained to reduce emissions:
`
`As claimed herein, the controller imposes a further, noninherent
`
`limitation on the rate of increase of torque output by the engine. This
`
`is done so that the "super-rich" fuel:air mixtures mentioned above, and
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`indeed substantially all rich mixtures, can be avoided in favor of
`
`substantially stoichiometric combustion at all times, yielding further
`
`improvement in fuel usage efficiency and reduction of undesired
`
`exhaust emissions. (’097 File History, FMC 1003, p. 235, emphasis
`
`added.)
`
`The limitation is defined in relation to an “inherent maximum:”
`
`It will be appreciated that what is being claimed here is that the
`
`controller limits the rate of increase of torque output by the engine.
`
`That is, all engines have an inherent limitation on the maximum rate
`
`of increase at which they can supply torque responsive to increase in
`
`fuel supplied. (’097 File History, FMC 1003, p. 234, emphasis added.)
`
`More specifically, the advantage of limiting the “controller of the
`
`hybrid vehicle to be less than the engine’s inherent maximum rate of
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`increase in output torque” is “that the engine can be controlled to combust
`
`fuel substantially at the stoichiometric fuel:air ratio, as claimed. Thus,
`
`combustion can be maintained substantially stoichiometric regardless of
`
`rapid variation in the operator’s demand for torque to be supplied to the
`
`v