Trials@uspto.gov
`571-272-7822
`
` Paper 10
`
`Entered: September 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
` Paper 10
`
`Entered: September 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`
`
`I. INTRODUCTION
`Ford Motor Company (“Ford”) filed a Petition requesting an inter
`partes review of claims 30–33, 35, 36, 38, and 39 of U.S. Patent No.
`8,214,097 B2 (“the ’097 patent”). Paper 1 (“Pet.”). The owner of the
`’097 patent, Paice LLC & The Abell Foundation, Inc. (“Paice”), filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.” ).1 We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” After considering the Petition and Preliminary Response, we
`conclude that Ford has demonstrated a reasonable likelihood that it would
`prevail in showing unpatentability of all but one of the challenged claims.
`Accordingly, we authorize institution of an inter partes review as to claims
`30–33, 35, 36, and 39 of the ’097 patent, but deny review as to claim 38.
`II. BACKGROUND
`
`The ’097 Patent 2
`A.
`The ’097 patent describes a hybrid vehicle with an internal
`
`combustion engine, an electric motor, and a battery bank, all controlled by a
`microprocessor that directs the transfer of electrical and mechanical power
`
`
`1 Paice filed both redacted and unredacted versions of the Preliminary
`
`Response. Papers 7, 8. Our decision cites to the redacted version, i.e., Paper
`8, which is marked “Public.”
`2 The ’097 patent is also the subject of a co-pending case, Paice, LLC
`
`et al. v. Ford Motor Company, No. 1-14-cv-00492, filed Feb. 19, 2014, in
`the U.S. District Court for the District of Maryland. Pet. 2.
`2
`
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`Case IPR2014-00570
`Patent 8,214,097 B2
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`between the engine, the motor, and the wheels of the vehicle. Ex. 1001,
`Abs., Fig. 4. The hybrid vehicle features a hybrid control strategy that limits
`the rate of increase of the engine’s output torque so that fuel combustion in
`the engine occurs at a mixture near the stoichiometric air-fuel ratio. Id. at
`37:2–42. By limiting the rate of increasing engine torque and maintaining a
`near stoichiometric air-fuel mixture, the hybrid control strategy of the ’097
`patent increases fuel efficiency and reduces undesirable emissions during
`start and operation of the vehicle. Id. at 38:62–39:14.
`B.
`Challenged Claims
`Ford challenges independent claim 30 and dependent claims 31–33,
`35, 36, 38, and 39 of the ’097 patent. Claim 30 is illustrative:
`30. A hybrid vehicle, comprising:
`one or more wheels;
`an internal combustion engine operable to propel the
`hybrid vehicle by providing torque to the one or more wheels,
`wherein said engine has an inherent maximum rate of increase
`of output torque;
`
`at least one electric motor operable to propel the hybrid
`vehicle by providing torque to the one or more wheels;
`
`a battery coupled to the at least one electric motor,
`operable to provide electrical power to the at least one electric
`motor; and
`
`a controller, operable to control the flow of electrical and
`mechanical power between the engine, the at least one electric
`motor, and the one or more wheels, responsive to an operator
`command;
`
`wherein said controller controls said at least one electric
`motor to provide additional torque when the amount of torque
`being provided by said engine is less than the amount of torque
`required to operate the vehicle; and
`3
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`Case IPR2014-00570
`Patent 8,214,097 B2
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`
`wherein said controller controls said engine such that a
`
`rate of increase of output torque of said engine is limited to less
`than said inherent maximum rate of increase of output torque,
`and wherein the controller is operable to limit the rate of change
`of torque produced by the engine such that combustion of fuel
`within the engine occurs at a substantially stoichiometric ratio.
`
`Ex. 1001, 60:4–29.
`C.
`Evidence of Record
`
`Ford relies upon the following prior art as its basis for challenging the
`claims of the ’097 patent. Ford also proffers the Declaration of Dr. Jeffrey
`L. Stein. Ex. 1002.
`
`Anderson
`
`References
`’455 PCT
`publication
`Caraceni
`
`Patents/Printed Publications
`PCT INTERNATIONAL PUBLICATION
`NO. WO 00/15455
`A. Caraceni et al., Hybrid Power
`Unit Development for Fiat
`Multipla Vehicle, SAE TECHNICAL
`PAPER 981124
`C. Anderson & E. Pettit, The
`Effects of APU Characteristics on
`the Design of Hybrid Control
`Strategies for Hybrid Electric
`Vehicles, SAE TECHNICAL PAPER
`950493
`Yamaguchi U.S. Patent No. 5,865,263
`Katsuno
`U.S. Patent No. 4,707,984
`Severinsky U.S. Patent No. 5,343,970
`Boberg
`U.S. Patent No. 5,959,420
`
`Exhibit
`Date
`Mar. 23, 2000 1004
`
`1998
`
`1005
`
`1995
`
`1006
`
`1007
`Feb. 2, 1999
`Nov. 24, 1987 1008
`Sep. 6, 1994
`1009
`Sep. 28, 1999
`1012
`
`4
`
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`Case IPR2014-00570
`Patent 8,214,097 B2
`
`D.
`
`Asserted Grounds of Unpatentability
`Ford challenges the patentability of claims 30–33, 35, 36, 38, and 39
`of the ’097 patent based on the following specific grounds:
`
`Ground
`§ 102(b)
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Basis
`’455 PCT publication
`’455 PCT publication
`Caraceni
`Caraceni and Boberg
`Caraceni, Boberg, and Yamaguchi
`Caraceni, Boberg, Yamaguchi, and
`Katsuno
`Severinsky and Anderson
`
`Challenged Claims
`38
`38
`30, 31, 35, 36
`30, 31, 35, 36
`32
`33
`
`30, 31, 35, 36, 38, 39
`
`Severinsky, Anderson, and Yamaguchi
`Severinsky, Anderson, Yamaguchi, and
`Katsuno
`
`32
`
`33
`
`III. ANALYSIS
`
`Standing
`A.
`Paice contends that Ford is “barred or estopped” under 37 C.F.R.
`
`§ 42.104(a) from requesting inter partes review of the ’097 patent due to an
`alleged breach of an arbitration agreement between the parties. Prelim.
`Resp. 6–13. According to Paice, the arbitration agreement includes
`“unambiguous terms” that purportedly limit Ford’s ability to “challeng[e]
`the claims of the ’097 patent.” Id. at 7, 9–10. Postulating that Ford is in
`breach of those terms, Paice asserts that Ford has failed to demonstrate the
`requisite standing to file the instant Petition. Id. at 11.
`5
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`Case IPR2014-00570
`Patent 8,214,097 B2
`
`The purported “standing” argument raised by Paice, however, relates
`
`to a disputed contractual matter that falls outside the purview of our
`authority under the Leahy-Smith America Invents Act, Pub. L. No. 112–29,
`125 Stat. 284 (2011). Indeed, the question of whether Ford has breached the
`arbitration agreement by requesting inter partes review of the ’097 patent is
`currently the subject of a preliminary injunction motion filed by Paice in the
`co-pending district court action, and yet to be decided. Prelim. Resp. 12 n.4.
`As such, we reject Paice’s attempt to frame this unresolved breach-of-
`contract issue as a standing issue ripe for our review. Based on the current
`record, Paice has not demonstrated that Ford is barred or estopped from
`challenging the ’097 patent.
`B.
`Claim Construction
`We have considered the terms of the challenged claims. For purposes
`of this decision, no particular claim term requires an express construction at
`this time.
`C.
`Asserted Grounds
`
`1.
`Claim 38 - Anticipation by the ’455 PCT Publication
`Claim 38, which depends directly from independent claim 30, requires
`that the battery supply power to the electric motor “at a peak of at least 500
`volts under peak load conditions.” Ford contends that claim 38 is
`unpatentable under 35 U.S.C. § 102(b) as anticipated by the ’455 PCT
`publication. Pet. 23–29.
`The ’455 PCT publication has a publication date of March 23, 2000.
`Ex. 1004. The application that issued as the ’097 patent has a filing date of
`
`6
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`Case IPR2014-00570
`Patent 8,214,097 B2
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`March 29, 2011, but claims the benefit under 35 U.S.C. § 120 of
`applications that have filing dates prior to the publication date of the ’455
`PCT publication, namely, application No. 09/392,743 (“the ’743
`application”) and application No. 09/264,817 (“the ’817 application”). Ex.
`1001. Nevertheless, Ford argues that the benefit of the previously-filed ’743
`and ’817 applications does not extend to claim 38, because the ’743 and
`’817 applications fail to provide written description support for the claimed
`range of “at least 500 volts.” Pet. 6–7. Instead, according to Ford,
`disclosure of the peak voltage, as recited in claim 38, did not occur until
`April 2, 2001, with the filing of continuation-in-part application No.
`09/822,866 (“the ’866 application”). Id. at 8–10.
`We credit the testimony of Ford’s declarant, Dr. Stein, that a skilled
`artisan would not have understood the ’743 and ’817 applications as
`evincing possession of the peak voltage limitation of claim 38. Pet. 7 (citing
`Ex. 1002 ¶¶127–133). Moreover, we find persuasive Ford’s argument, with
`supporting evidence, that claim 38 is only entitled to the benefit of the
`April 2, 2001 priority date of the ’866 CIP application.3 Id. at 8–10. Thus,
`based on the current record, Ford has shown that the ’455 PCT publication
`qualifies as prior art against claim 38.
`
`Having demonstrated the prior art status of the ’455 PCT publication,
`Ford proceeds to argue that it discloses, and thus, anticipates, the peak
`voltage range of claim 38. Pet. 23–29. But Ford’s argument bears an
`
`3 At this time, it appears Paice does not dispute this premise. See
`
`Prelim. Resp. 16.
`
`7
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`Case IPR2014-00570
`Patent 8,214,097 B2
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`element of inconsistency. Although Ford acknowledges that the ’455 PCT
`publication, which is a combination of the disclosures of the ’743 and ’817
`applications, is not a “claim supporting disclosure” of the full scope of claim
`38, Ford nevertheless contends that the ’455 PCT publication inherently
`describes an embodiment encompassed by claim 38. Id. at 29. In particular,
`Ford relies on a series of calculations by Dr. Stein purporting to show that a
`skilled artisan would have recognized that the nominal voltage (768 volts)
`described in the ’455 PCT publication “would drop” to a peak voltage (553
`volts) under peak load conditions within the scope of claim 38. Pet. 29
`(citing Ex. 1002 ¶ 198); see also id. at 24 (citing Ex. 1002 ¶¶ 193–208).
`
`Dr. Stein’s arrival at a peak voltage within the claimed range,
`however, is based on teachings taken not solely from the ’455 PCT
`publication, but also from the challenged ’097 patent. See Ex. 1002 ¶¶ 198–
`206. Notably, Dr. Stein explains that “[u]sing the ‘Further Improvements’
`section of the ’097 patent as a basis for my calculations, it is my
`determination that the approximate voltage drop of a 768 volt lead-acid
`battery bank . . . ‘under peak load conditions’ would be no less than
`approximately 553 volts when a maximum current of 200 amperes is being
`supplied.” Id. at ¶ 198. As part of his calculations, Dr. Stein admittedly
`imports the “stated parameters” of “two examples” from the ’097 patent into
`the disclosure of the ’455 PCT publication to arrive at the claimed invention.
`See id. at ¶¶ 198–199, 202. This is impermissible.
`
`The proposed ground is one of anticipation, not obviousness. There is
`no indication in Dr. Stein’s Declaration that the purportedly “inherent” peak
`
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`Case IPR2014-00570
`Patent 8,214,097 B2
`
`voltage of 553 volts could be arrived at from parameters expressed in the
`’455 PCT publication or otherwise within the knowledge of an ordinarily
`skilled artisan. Instead, Dr. Stein clearly utilizes, and combines, the
`teachings of two references in asserting anticipation of the claimed
`invention, which is not permissible under 35 U.S.C. § 102(b). Nor has Ford
`persuaded us that the parameters stated in the ’097 patent, as relied on by Dr.
`Stein, would have been known by a skilled artisan at the time of the claimed
`invention, as opposed to only the inventors of the ’097 patent. As such, we
`determine that the information presented by Ford fails to establish a
`reasonable likelihood of prevailing on the ground that claim 38 is
`unpatentable as anticipated by the ’455 PCT publication.
`2.
`Claim 38 – Obviousness Over the ’455 PCT Publication
`Ford also contends that claim 38 is unpatentable under 35 U.S.C.
`
`§ 103 as obvious over the ’455 PCT publication, or alternatively, over the
`combined teachings of Severinsky and Anderson. Pet. 29, 54. In arguing
`obviousness, however, Ford again relies on the legally-flawed conclusion of
`its declarant, Dr. Stein, who utilizes teachings from the challenged ’097
`patent to conclude that a skilled artisan would have understood the
`disclosures of either the ’455 PCT publication or Severinsky as teaching,
`and thereby rendering obvious, the “at least 500 volts” limitation of claim
`38. Id. at 30, 54 (citing Ex. 1002 ¶¶ 209, 391, respectively). As such, we
`are not persuaded that the evidence proffered by Ford demonstrates a
`reasonable likelihood that the subject matter of claim 38 would have been
`obvious over either the ’455 PCT publication or Severinsky and Anderson.
`
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`Case IPR2014-00570
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`
`
`
`3.
`
`Claims 30–33, 35, 36, and 39 – Obviousness Over
` Severinsky and Anderson
`Ford challenges claims 30, 31, 35, 36, and 39 on the ground that the
`claimed invention would have been obvious over the combined teachings of
`Severinsky and Anderson. Pet. 4, 46–54. In support of this ground, Ford
`provides a detailed claim chart explaining how each claim limitation is met
`by Severinsky and Anderson and why a skilled artisan would have found it
`obvious to modify the hybrid powertrain taught by Severinsky with the
`hybrid control strategy taught by Anderson. Id. at 47–51. Acknowledging
`that Severinsky does not explicitly disclose limiting the rate of increase of
`engine output torque, as recited in independent claim 30, Ford relies on
`Anderson as teaching a hybrid control strategy that “only allows slow
`[engine] transients” for maintaining a stoichiometric ratio. Id. at 49–50
`(discussing Anderson’s teaching of claim elements labeled as 30.7 and 30.8).
`
`Paice, in turn, responds that a skilled artisan would not equate
`Anderson’s teaching of “slow transients” for the engine with claim 30’s
`“limiting . . . engine output torque,” and further contends that Ford’s
`arguments, which rely on the declaration of Dr. Stein, are “merely
`conclusory” and “entitled to little or no weight.” Prelim. Resp. 36–38. We
`disagree. Contrary to Paice’s argument, Anderson expressly describes the
`engine’s “transient capabilities” in terms of “power output” and
`“combinations of speed and torque” for enabling greater optimization of the
`hybrid vehicle’s powertrain. Ex. 1006 at 7 (emphasis added). Indeed,
`Anderson correlates slow engine transients with maintaining a
`
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`Case IPR2014-00570
`Patent 8,214,097 B2
`
`“stoichiometric air to fuel ratio” such that “emissions are minimized.” Id.
`As such, Ford has demonstrated a reasonable likelihood that the subject
`matter of independent claim 30 would have been obvious in view of the
`combined teachings of Severinsky and Anderson.
`
`Also, we have considered Ford’s challenge of dependent claims 31–
`33, 35, 36, and 39. Pet. 51–57. Paice does not argue these dependent claims
`separately from independent claim 30. See Prelim. Resp. 33–37. Based on
`our review of the detailed claim chart and reasoning presented in the
`Petition, we are persuaded that Ford has shown sufficiently that the
`dependent limitations are taught by Severinsky and Anderson (claims 31, 35,
`36, and 39), together with Yamaguchi (claim 32) and Katsuno (claim 33).
`4.
`Additional Grounds
`
`Ford further contends that claims 30–33, 35, and 36 are unpatentable
`as obvious over Caraceni, either alone or in combination with Boberg. Pet.
`30. Recognizing that neither Caraceni nor Boberg explicitly discloses
`operating the engine at a substantially stoichiometric ratio, Ford argues that
`they implicitly teach this limitation by their disclosure of a “three-way
`catalyst,” which Dr. Stein opines as “operat[ing] at or near a stoichiometric
`ratio.” Pet. 37 (citing Ex. 1002 ¶¶ 258–262); see also id. at 41. Ford,
`however, does not articulate reasonably how the implicit teaching of a
`stoichiometric ratio by Caraceni and Boberg is meaningfully distinctive from
`the express teaching of this same limitation by Severinsky and Anderson.
`As such, we exercise our discretion under 37 C.F.R. § 42.108 and decline to
`
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`Case IPR2014-00570
`Patent 8,214,097 B2
`
`institute on any ground relying on Caraceni, either alone or in combination
`with Boberg, Yamaguchi, or Katsuno.
`IV. CONCLUSION
`Based on the arguments and evidence presented in the Petition, we
`determine that Ford has demonstrated a reasonable likelihood that it would
`prevail in establishing that the subject matter of claims 30–33, 35, 36, and 39
`would have been obvious under 35 U.S.C. § 103, but that Ford has not
`demonstrated a reasonable likelihood that claim 38 is unpatentable under
`either 35 U.S.C. §§ 102 or 103.
`V. ORDER
`For the foregoing reasons, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review
`of challenged claims 30, 31, 35, 36, and 39 of the ’097 patent is instituted on
`the asserted ground of obviousness over Severinsky and Anderson, review of
`challenged claim 32 is instituted on the asserted ground of obviousness over
`Severinsky, Anderson, and Yamaguchi, and review of challenged claim 33 is
`instituted on the asserted ground of obviousness over Severinsky, Anderson,
`Yamaguchi, and Katsuno;
`
`FURTHER ORDERED that Ford’s Petition is denied as to claim 38;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, inter partes review of the ’097 patent shall commence on the
`entry date of this Order, and notice is hereby given of the institution of a
`trial; and
`
`
`
`12
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`Case IPR2014-00570
`Patent 8,214,097 B2
`
`
`FURTHER ORDERED that all other grounds presented in Ford’s
`Petition are denied, and no ground other than that specifically listed above is
`authorized for inter partes review of the ’097 patent.
`
`
`FOR PETITIONER:
`
`Sangeeta Shah
`Frank Angileri
`John Nemazi
`John Rondini
`BROOKS KUSHMAN P.C.
`FPGP0110IPR1@brookskushman.com
`FPGP010IPR2@brookskushman.com
`FPGP010IPR2@brookskushman.com
`jrondini@brookskushman.com
`
`Kevin Greenleaf
`Lissi Mojica
`DENTONS US LLP
`kevin.greenleaf@dentons.com
`lissi.mojica@dentons.com
`
`
`FOR PATENT OWNER:
`
`Timothy W. Riffe
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`riffe@fr.com
`IPR36351-0011IP1@fr.com
`
`13
`
`
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