Case IPR2014-00571
`Attorney Docket No: 36351-0011IP1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION
`Patent Owner
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`Case IPR2014-00571
`Patent 7,104,347
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`Case IPR2014-00571
`Attorney Docket No: 36351-0011IP1
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`TABLE OF CONTENTS
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`INTRODUCTION .......................................................................................................................... 1
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`I. CLAIM CONSTRUCTION .................................................................................................... 5
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`A. The District Courts’ Construction ........................................................................................ 5
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`B. The Board should revise its construction of “setpoint (SP)” ............................................... 6
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`II. DEFECTS IN THE INSTITUTED GROUNDS OF
`UNPATENTABILITY .......................................................................................................... 11
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`A. Ground 1 is Defective Because Ford Misapplies
`Severinsky to the Challenged Claims ................................................................................ 12
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`B. Ground 1 is Defective Because Ford Has Failed to
`Demonstrate that Severinsky Discloses or Renders
`Obvious the Features Recited in Claim 23 ........................................................................ 25
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`1. Severinsky does not disclose or render obvious “employing said engine
`to propel said vehicle when the torque RL required to do
`so is between said lower level SP and MTO” ................................................................ 26
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`2. Severinsky does not disclose or render obvious “employing said at least
`one electric motor to propel said vehicle when the torque RL
` required to do so is less than said lower level SP” ........................................................ 43
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`3. Severinsky does not disclose or render obvious “employing said engine
`to propel said vehicle when the torque RL required to do
`so is less than said lower level SP and using the torque
` between RL and SP to drive said at least one electric
` motor to charge said battery” ........................................................................................ 45
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`4. Severinsky does not disclose or render obvious a “setpoint”......................................... 50
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`C. Ground 2 is Defective Because Ford Has Failed to
`Demonstrate that Severinsky in view of Ehsani
`Render Obvious the challenged claims .............................................................................. 52
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`1. Severinsky in view of Ehsani does not render obvious
`“wherein said controller starts and operates said engine
`when torque require to be produced by said engine to propel
`the vehicle and/or to drive either one or both said electric motor(s)
` to charge said battery is at least equal to a setpoint (SP) above
`which said engine torque is efficiently produced” as required by claim 1 .................... 52
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`Case IPR2014-00571
`Attorney Docket No: 36351-0011IP1
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`2. Severinsky in view of Ehsani does not render
`obvious a “setpoint” as required by claim 1 ................................................................... 55
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`3. Severinsky in view of Ehsani does not render
`obvious “wherein said vehicle is operated in a plurality
`of operating modes responsive to the value for the
`road load (RL) and said setpoint SP” as required by claim 7 ........................................ 56
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`4. Severinsky in view of Ehsani does not render
`obvious “a highway cruising mode IV,
`wherein said vehicle is propelled by torque
`provided by said internal combustion engine,
`while SP<RL<MTO” as required by claim 7 ................................................................. 57
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`5. Severinsky in view of Ehsani does not render
`obvious “a low-load mode I, wherein said vehicle
`is propelled by torque provided by said second
`electric motor in response to energy supplied
`from said battery, while RL<SP” as required by claim 7............................................... 58
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`6. Severinsky in view of Ehsani does not render obvious claim 9 ..................................... 58
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`D. Ground 3 is Defective Because Ford Has Failed
`to Demonstrate that Severinsky in View of Ehsani
`Fails to Render Obvious the Challenged Claims .............................................................. 59
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`III. CONCLUSION ..................................................................................................................... 60
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`Case IPR2014-00571
`Attorney Docket No: 36351-0011IP1
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`TABLE OF AUTHORITIES
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`Cases
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................ 7
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`Page(s)
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`Clearwater Sys. Corp. v. Evapco, Inc.
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`394 F. App'x 699, 705 (Fed. Cir. 2010) ........................................................ 41, 50
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`Fuji Photo Film Co. v. Int'l Trade Comm'n,
`386 F.3d 1095 (Fed. Cir. 2004) .......................................................................... 11
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 42
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 42
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`Paice LLC v. Hyundai Motor Co.,
`No. CIV. WDQ-12-0499, 2014 WL 3725652 (D. Md. July 24,
`2014) ..................................................................................................................... 6
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`Paice LLC v. Toyota Motor Corp., et al.,
`No. 2:04-CV-211-DF, Dkt. No. 91 (E.D. Tex. Sep. 28, 2005) ............................ 6
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`Paice LLC v. Toyota Motor Corp., et al.,
`No. 2:07-CV-180-DF, Dkt. No. 63 (E.D. Tex. Dec. 5, 2008) .............................. 6
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`In re Vaidyanathan,
`381 Fed. Appx. 985 (Fed. Cir. 2010) (unpublished) ............................................ 7
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`Case IPR2014-00571
`Attorney Docket No: 36351-0011IP1
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`Patent Owner
`Exhibit
`Number
`PAICE Ex.
`2002
`PAICE Ex.
`2003
`PAICE Ex.
`2004
`PAICE Ex.
`2005
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`PAICE Ex.
`2006
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`PAICE Ex.
`2007
`PAICE Ex.
`2008
`PAICE Ex.
`2009
`PAICE Ex.
`2010
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`EXHIBITS
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`Exhibit Description
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`Declaration of Neil Hannemann
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`Dr. Gregory W. Davis Deposition Transcript (Jan. 13, 2015)
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`Excerpt from File History for U.S. Patent 8,214,097
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`Integrated Microprocessor Control of a Hybrid i.c.
`Engine/Battery-Electric Automotive Power Train,” P.W.
`Masding, J.R. Bumby, Jan. 1990
`Masding, Philip Wilson (1988) “Some drive train control
`problems in hybrid i.c engine/battery electric vehicles,” Durham
`theses, Durham University
`Excerpt from McGraw-Hill Dictionary of Scientific and
`Technical Terms, Sixth Ed., 2003.
`Neil Hannemann CV
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`Paice v. Ford, C.A. No. 1:14-cv-00492-WDQ, Complaint (Feb.
`19, 2014)
`Griffith Hack Report
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`I.
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`INTRODUCTION
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`Case IPR2014-00571
`Attorney Docket No: 36351-0011IP1
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`The Board instituted trial with respect to claims 1, 6, 7, 9, 15, 21, 23 and 36
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`of U.S. Patent No. 7,104,347 (“the ’347 patent”) owned by Paice LLC and The
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`Abell Foundation (collectively, “Paice”) in view of a Petition requesting inter
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`partes review filed by Ford Motor Company (“Ford”). The Board instituted trial
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`on three grounds that all rely on a prior art patent also owned by Paice, namely,
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`U.S. Patent No. 5,343,970 (“Severinsky”). This Response responds to the Petition,
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`as informed and narrowed by the Board’s Decision. All challenged claims are
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`patentable over the cited grounds for the reasons set forth herein.
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`The instituted grounds are all based on a misapplication of Severinsky.
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`Ford’s petition is based on an exercise in cherry picking short excerpts from
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`Severinsky out of their proper context and using the ’347 patent as a road map to
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`concoct a prior art reference that purportedly reads on the Challenged Claims.
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`Ford’s effort, however, fails because it is premised on technical and legal fallacies
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`(discussed below) that greatly undermine Ford’s case for unpatentability.
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`A close inspection of Severinsky reveals that while Severinsky discloses
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`certain modes of operations (e.g., “low speed” and “highway cruising” modes),
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`Severinsky discloses transitioning from one mode to another mode using an
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`entirely different method than that disclosed and claimed by the ’347 patent. As
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`discussed in greater detail below, Severinsky switches modes and turns the engine
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`on or off based on the speed of the vehicle. Moreover, Severinsky was already
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`considered by the PTO with respect to a related patent (U.S. Patent 8,214,097) and
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`successfully distinguished on this basis.
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`In contrast, the ’347 patent, switches modes based on the road load—the
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`instantaneous torque required to propel the vehicle. As shown in the annotated
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`Figure 7 below, the ’347 patent transitions from, for example, Mode I (motor only
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`operation) to Mode IV (engine operation) based on comparing the road load
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`(depicted as a solid line) to a setpoint (which in the example shown in Figure 7 is
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`30% of the maximum torque output of the engine).
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`Thus, one of the key principles taught by the ’347 patent is not merely the
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`modes of operation of the hybrid vehicle, but when to transition from one mode to
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`another mode. The prior art explored a large number of unsuccessful approaches
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`to control sources of motive force needed to propel a hybrid vehicle (i.e. the mode
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`of vehicle operation). Compared to the ’347 patent however, the prior art used a
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`variety of inefficient, costly, and ultimately ineffective metrics to make mode
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`switching determinations, including most commonly vehicle speed or bare pedal
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`position. See ’347 patent at col. 4:42-57, 13:1-17, 13:66-14:27, 14:66-15:15
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`(describing various prior art control systems). As noted in the ’347 patent, these
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`prior systems failed to understand that the “vehicle operational mode should
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`preferably be controlled in response to the vehicle's actual torque requirements,
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`i.e., the road load,” which provides “superior performance, in terms of both vehicle
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`response to operator commands and fuel efficiency, under the widely varying
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`conditions encountered in ‘real world’ driving situations.” See ’347 patent at col.
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`13:11-17. Additionally, this failure to recognize the benefits of using “road load”
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`to select the vehicle mode also led prior art systems to incorrectly size other system
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`components, such as the battery and motors, which similarly resulted in operating
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`the engine under less efficient conditions. See ’347 patent at 13:48-65.
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`The ’347 patent succeeded where others failed by arriving at a sophisticated
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`control strategy that measured and evaluated the road load with respect to certain
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`setpoints. While the concept of “road load” may have been understood as an
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`academic concept, the prior art failed to appreciate that road load could be
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`determined and used to make decisions about mode switching in an actual hybrid
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`vehicle by comparing the road load to setpoints and other values. Despite Ford’s
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`arguments to the contrary, this claimed control strategy is absent in Severinsky.
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`Therefore, for the reasons detailed more fully herein, the Board should affirm the
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`patentability of claims 1, 6, 7, 9, 15, 21, 23 and 36 of the ’347 patent.
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`Before reaching the merits, it is important to place the patent owners and
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`Ford’s Petition into proper context. Abell is a Baltimore-based charitable
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`organization dedicated to fighting urban poverty and finding solutions to
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`intractable problems confronting Maryland residents. Abell has invested millions
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`of dollars in small companies like Paice, which is a small Maryland-based
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`company that has developed and promoted hybrid electric technology since 1992.
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`Paice has been involved with the world’s top automotive manufacturers in
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`developing commercially viable hybrid vehicles, and in 2010 reached a significant
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`license on the patent subject to Ford’s Petition with Toyota, the world’s most
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`successful hybrid auto manufacturer. Between 1999 and 2004, Paice spent
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`extensive time working with Ford to teach Ford Paice’s hybrid vehicle technology,
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`including detailed modeling of Paice’s patented technology in actual or proposed
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`Ford vehicles. Attached as Exhibit 2009 is the complaint Paice has filed in district
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`court that summarizes the full context of how Ford accepted Paice’s help and
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`teaching, repeatedly complimented and validated Paice’s technology, but
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`ultimately refused to license Paice’s patents.
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`As the result of an earlier district court litigation, Ford did take a license in
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`2010 to one of Paice’s patents— U.S. Patent No. 5,343,970. At that time, the
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`parties were not able to reach resolution on the other Paice patents and entered into
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`an Arbitration Agreement as a means to resolve the dispute. Ford declined to take
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`Paice’s claims that Ford is unlawfully using Paice’s technology to arbitration, and
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`instead has filed ten separate Petitions for Inter Partes Review before this Board.
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`Beyond recognition by the automotive industry, others have considered
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`Paice’s patents as among the most important in the automotive industry. Griffith
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`Hack, an Australian law firm specializing in intellectual property, conducted an
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`independent study of the most dominant hybrid vehicle patents in the world
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`without input or even contact with Paice. Griffith Hack analyzed more than 58,000
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`hybrid vehicle technology patents and their inter-relationships and concluded that
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`the top hybrid vehicle patents were those held by Paice, ahead of those held by
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`leading hybrid vehicle manufacturers such as Toyota, Ford and Honda. A copy of
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`Griffith Hack’s white paper is attached as Exhibit 2010.
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`II. CLAIM CONSTRUCTION
`In its Initial Decision, the Board, construed the terms “road load (RL)” and
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`“setpoint (SP).” Decision, pp. 7-8. While the Challenged Claims are patentable
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`under the Board’s construction of these terms, Patent Owner opposes the Board’s
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`construction of “setpoint (SP)” and respectfully requests that the Board revise its
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`construction for the reasons set forth below.
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`A. The District Courts’ Construction
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`As an initial matter, Patent Owner notes that the Board’s construction of
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`“setpoint (SP)” is at odds with the construction adopted by two district courts. The
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`U.S. District Court for the Eastern District of Texas and the U.S. District Court for
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`the District of Maryland have both consistently construed the term “setpoint (SP)”
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`to mean “a definite, but potentially variable value at which a transition between
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`operating modes may occur.”1 Judge Quarles of the District of Maryland noted
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`that “[Paice’s] proposed construction of “setpoint’ … is consistent with the
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`language of the claims and the intrinsic evidence.”2
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`B. The Board should revise its construction of “setpoint (SP)”
`The Board’s construction of “setpoint (SP)” as “a predetermined torque
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`value that may or may not be reset” is wrong for at least three reasons: (1) it fails
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`to recognize that “setpoint” represents a point at which a transition between
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`different operating modes may occur, 2) it reads in the additional and redundant
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`1 Paice LLC v. Toyota Motor Corp., et al., No. 2:04-CV-211-DF, Dkt. No. 91
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`(E.D. Tex. Sep. 28, 2005); Paice LLC v. Toyota Motor Corp., et al., No. 2:07-CV-
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`180-DF, Dkt. No. 63 (E.D. Tex. Dec. 5, 2008); Paice LLC v. Hyundai Motor Co.,
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`No. CIV. WDQ-12-0499, 2014 WL 3725652 (D. Md. July 24, 2014).
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`2 Paice LLC v. Hyundai Motor Co., No. CIV. WDQ-12-0499, 2014 WL 3725652,
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`at *8 (D. Md. July 24, 2014).
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`Case IPR2014-00571
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`limitation “predetermined,” and (3) it incorrectly restricts “setpoint” to a torque
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`value. For all three errors the Board failed to consider the entirety of the claims
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`and specification, instead limiting its analysis to just a portion of the disputed
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`claim phrase, which is clearly, reversible error. See In re Abbott Diabetes Care
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`Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) (holding that Board’s construction of
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`“electrochemical sensor” was “unreasonable and inconsistent with the language of
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`the claims and the specification”).
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`The Board’s “broadest” interpretation must be reasonable, and must be in
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`conformity with the invention as described in the specification.
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` In re
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`Vaidyanathan, 381 Fed. Appx. 985, 995-96 (Fed. Cir. 2010) (unpublished).
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`Accordingly, for the reasons set out below, the Board should revise its construction
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`of “setpoint” to make clear that the “setpoint” may be variable, is not limited to a
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`torque value, and represents a point at which a transition between modes may
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`occur. The Board should thus adopt Patent Owner’s construction, “a definite, but
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`potentially variable value at which a transition between operating modes may
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`occur.”
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`i. “Setpoint” is used to mark a transition between operating
`modes
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`The Board did not adopt Patent Owner’s construction that a “setpoint” is a
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`value “at which a transition between operating modes may occur.” The Board
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`provided no explanation for refusing to adopt this portion of the construction. Nor
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`did Ford provide any argument on the phrase.3 However, it is clear from the
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`claims and the specification that a “setpoint” is not simply a numerical value
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`divorced from the context of the rest of the control system. Rather, “setpoint”
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`serves the crucial function of marking the transition from one claimed mode to
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`another, and in particular, the transition from propelling the vehicle with the motor
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`to propelling the vehicle with the engine.
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`The language of the claims makes clear that a “setpoint” marks a point at
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`which the vehicle may transition between two modes. For example, in claims 1, 7
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`and 23, the “setpoint” marks the transition between a mode in which only the
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`motor propels the vehicle, to modes in which the engine also can be used to propel
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`the vehicle or charge the battery. See Ex. 1001 at claims 1, 7, 23. Dependent claim
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`3 similarly recites “…wherein said controller monitors the road load (RL) on the
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`vehicle over time, and controls transition between propulsion of said vehicle by
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`said motor(s) to propulsion by said engine responsive to RL reaching SP, …” See
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`Ex. 1001 at claim 3 (emphasis added); see also id. at claim 25.
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`3 Ford acknowledged the past construction given this term by the U.S. District
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`Court for the Eastern District of Texas, including the phrase “at which a transition
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`between operating modes may occur.” See Petition at 14.
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`Further, the specification makes clear that a “setpoint” is synonymous with a
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`“transition point” between modes:
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`For example, in the example of the inventive control strategy
`discussed above, it is repeatedly stated that the transition from
`low-speed operation to highway cruising occurs when road load
`is equal to 30% of MTO. This setpoint, referred to in the
`appended claims as "SP", and sometimes hereinafter as the
`transition point (i.e., between operation in modes I and IV) is
`obviously arbitrary and can vary substantially, e.g., between 30-
`50% of MTO, within the scope of the invention.
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`See Ex. 1001 at col. 40:47-55; see also id. at col. 41:2-4 (“For example, in
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`response to recognition of a regular pattern as above, the transition point might be
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`adjusted to 60% of MTO”); col. 41:10-14 (“It is also within the scope of the
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`invention to make the setpoint SP to which the road load is compared to control the
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`transition from mode I to mode IV somewhat "fuzzy" [sic], so that SP may vary
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`from one comparison of road load to MTO to the next depending on other
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`variables”); col. 41:66-42:2 (“FIG. 9 thus shows the main decision points of the
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`control program run by the microprocessor, with the transition point between mode
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`I, low-speed operation, and mode IV highway cruising, set at a road load equal to
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`30% of MTO”); col. 44:32-39 (“Further, as noted above the transition points
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`between modes I, IV, and V in particular may vary in accordance with the
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`operator's commands…”).
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`By ignoring this “transition” requirement, the Board has committed error by
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`effectively reading out a crucial limitation of the claims, which is that the
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`“setpoint” marks the amount of “road load” at which the claimed control system
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`actively changes the vehicle from one mode to another (e.g. from motor propulsion
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`to engine propulsion). For example, dependent claim 7 clearly covers a vehicle
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`“operated in a plurality of operating modes responsive to the value for the road
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`load (RL) and said setpoint SP” (emphasis added). Yet the Board’s failure to
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`recognize the “transition” function of “setpoints” could potentially rob the
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`remaining “mode” limitations of one of the key aspects of the invention, which is
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`the significant efficiency to be gained by transitioning between motor propulsion
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`to engine propulsion in response to “road load.” See e.g., Ex. 1001 at col. 13:39-46
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`(“By comparison … the vehicle’s operating mode-that is, the selection of the
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`source of torque needed to propel the vehicle-is determined based on the amount of
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`torque actually required. In this way the proper combination of engine, traction
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`motor, and starting motor is always available. This apparently simple point has
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`evidently been missed entirely by the art.”); see also id. at col. 39:47-65 (noting
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`that prior art references using vehicle speed to transition between modes
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`“inherently operate the engine under less efficient conditions”).
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`In other words, under the Board’s improper construction, one could attempt
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`to improperly read the claims to broadly cover hybrid vehicle systems where
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`transitions between modes never occur, a clear error that is fundamentally contrary
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`to the specification of the ’347 Patent. See Fuji Photo Film Co. v. Int'l Trade
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`Comm'n, 386 F.3d 1095, 1098 (Fed. Cir. 2004) (claim should not be given overly
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`broad construction that is inconsistent with how claim term is used in the
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`specification). Therefore, Patent Owner respectfully requests that the Board
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`reconsider its construction of “setpoint” to make clear that it is a value “at which a
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`transition between operating modes may occur.”
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`ii. “Setpoint” is not “predetermined” and is not limited to
`torque values
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`Patent Owner does not agree with the Board’s construction requiring the
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`term “setpoint” to be “predetermined” and a “torque value” and reserves the right
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`to appeal the Board’s construction on these additional bases. While Patent Owner
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`disagrees with the Board’s construction of “setpoint,” the Challenged Claims are
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`patentable under either construction and Patent Owner applies the Board’s
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`constructions in its arguments below unless explicitly stated otherwise.
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`III. DEFECTS IN THE INSTITUTED GROUNDS OF
`UNPATENTABILITY
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`The overarching flaw in Ford’s challenge to the ‘347 is that Ford is unable to
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`show use of road load to control transitions from one hybrid mode to another.
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`While both Severinsky and the ’347 patent have the same goal (efficient engine
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`operation), Severinsky and the ’347 accomplish that goal using entirely different
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`Case IPR2014-00571
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`control strategies. Ford starts with the goal (efficient engine operation) and works
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`its way backwards (using impermissible hindsight) to map Severinsky on the
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`claims of the ’347 patent. However, Severinsky repeatedly references control of
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`mode transitions based on speed, and so Ford attempts to recast the prior art based
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`on a few selected statements taken out of context. The ’347 patent claims switch
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`modes and start and stop the engine based on road load—the instantaneous torque
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`required to propel the vehicle—to produce efficiencies that have made
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`commercially viable hybrids possible. Ford has simply failed to find this key
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`feature of the ‘347 claims in the prior art, and the Petition should similarly fail.
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`A. Ground 1 is Defective Because Ford Misapplies Severinsky to
`the Challenged Claims
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`Ford’s application of Severinsky to the Challenged Claims of the ’347 patent
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`is premised upon a misunderstanding of two important aspects of hybrid control
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`strategy, namely, when to operate the engine and how to operate the engine once it
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`is turned on. Ex. 2002 at ¶ 59; see also ¶¶ 33-44. The cited portions on which
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`Ford relies merely disclose the latter. Id. at ¶ 59. But the Challenged Claims
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`clearly are directed to a control strategy about when to operate the engine. Id.
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`These claims require that the system start and stop the engine based on road load,
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`and this fundamental concept is simply not shown in Severinsky.
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`Severinsky makes reference to an aspirational operating range of the
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`engine—that the engine is to be operated between “60-90% of its maximum
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`torque.”4 Ex. 1003 at 20:63-67 (“It will be appreciated that according to the
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`invention the internal combustion engine is run only in the near vicinity of its most
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`efficient operational point, that is, such that it produces 60-90% of its maximum
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`torque whenever operated.”). An engine’s operating range refers to the range of
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`operating speeds, powers, or torques under which the engine is designed to operate.
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`Ex. 2002 at ¶¶ 34, 54. The goal of Severinsky is to operate the engine within 60-
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`90% of the engine’s maximum torque so that “the internal combustion engine is
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`run only in the near vicinity of its most efficient operational point.” Id. at 20:64-
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`65; Ex. 2002 at ¶ 54.
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`That such a disclosure is aspirational is established by the ’347 patent, which
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`notes that Severinsky “clearly discloses the desirability of operating an internal
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`combustion engine in its most efficient operating range.”) (emphasis added).
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`Ford’s expert, Dr. Davis, refers to the 60-90% range as the engine’s “sweet spot”
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`(Ex. 1005, Davis ¶202) and agreed that maintaining engine operation within the
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`4 Ford focuses its Petition on this one instance in which the operating range is
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`defined in terms of torque. However, all other disclosures of a preferred engine
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`operating range are disclosed in terms of speed and power. Ex. 1003 at 7:8-14,
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`8:28-30. Ford never explains how this reference, properly taken as a whole, should
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`be read as torque-based.
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`“sweet spot” is “a goal of hybrid vehicles” and “a goal in conventional vehicles.”
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`Ex. 2003 at 103:20 – 105:1. Thus, it is agreed that Severinksy’s disclosure of a
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`sweet spot is aspirational—it is the goal. Ex. 2002 at ¶¶ 40, 55-57. This goal,
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`however, does not define the underlying control strategy.
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`Notably, the range of torques included in the operating range or in the
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`“sweet spot” are the range of potential output torques of the engine. Ex. 2002 at ¶¶
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`32, 55. The engine’s output torque is the amount of torque that the engine can
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`produce in order to, for example, move the wheels, recharge the battery, power
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`accessories, etc. Id. This output torque, however, is unrelated to input torque
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`demands taught by the ’347 patent, for example, the instantaneous torque required
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`to propel the vehicle (i.e., road load). Id. Thus, defining an operating range of an
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`engine as between “60-90% of its maximum torque” or defining a “sweet spot”
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`merely tells a POSITA5 how to preferably run the engine. Id. at ¶ 56.
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`Severinsky’s teaching about how to operate the engine (in the engine’s
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`“sweet spot”) does not tell a POSITA when to operate the engine, i.e., when to turn
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`the engine on or off. Id. at ¶ 56. This is evident from the context of the passage on
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`5 The level of skill in the art is defined in the declaration of Mr. Hannemann. Ex.
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`2002 at ¶ 22. However, the differences between the level of skill described by Mr.
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`Hannemann and Dr. Davis do not affect the outcome.
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`Case IPR2014-00571
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`which Ford relies. Severinsky states that “the internal combustion engine is run
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`only in the near vicinity of its most efficient operational point, that is, such that it
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`produces 60-90% of its maximum torque whenever operated.”). Id. at 20:63-67
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`(emphasis added). The use of the word “whenever” indicates that the “60-90%”
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`requirement is agnostic as to when the engine is turned on so long as the engine is
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`operating within that range once a determination is made to operate the engine.6
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`Id. at ¶ 57. Moreover, Dr. Davis admitted that defining the engine’s sweet spot
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`does not tell a POSITA when to employ the engine:
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`Q. [column] 21, line 34 through 38.
`A. Okay.
`Q. So the plain reading of this passage is that the engine is operated
`near its sweet spot, right?
`A. The -- that’s your goal, yes. You’re optimizing to try to ensure that
`operation generally near the sweet spot, yes.
`Q. But it doesn’t tell us when you start the engine, correct?
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`6 It is also of note that Severinsky’s disclosure of an engine operating range
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`between “60-90% of its maximum torque” is in the context of improving fuel
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`economy and limiting carbon dioxide emissions in general. Id. at 20:63 – 21:22.
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`The range is merely illustrative of the improvements that may be obtained and is
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`unrelated to hybrid modes or how to switch between these modes, for example, by
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`turning the engine on or off.
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`A. This paragraph does not.
`Ex. 2003 at 164:22 – 165:7.
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`Determining when to turn the engine on is an entirely different question and
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`is the key to actually maintaining engine operation within the “sweet spot.” For
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`example, at one extreme, the engine could operate in its sweet spot all the time.
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`This could be the case, for example, in a locomotive using a series hybrid
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`configuration. Because a locomotive operates normally at constant speeds and
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`because a series configuration separates the engine from the drive shaft, the output
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`speed and torque of the engine are not related to the speed of the locomotive. Ex.
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`2002 at ¶ 36. Thus, the engine could always operate in its most efficient operating
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`range to charge the battery. Id. On the other extreme, the engine could never
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`operate, for example, in an electric car, which does not have an engine. Id.
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`There are an infinite number of methods of control that could be employed
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`to operate the engine between these two extremes such that the engine would
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`operate only some of the time. For example, the user could manually turn the
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`engine on or off by pressing a button or the engine could be turned on at certain
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`time intervals. Id. at ¶ 37. While these two exemplary control strategies may not
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`present a practical solution in the context of a commercial hybrid automobile, the
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`prior art has similarly failed to sufficiently answer the question “when do I turn the
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`engine on or off”? The question at hand is complex and not easily answered. On
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`one hand, if the engine is operated too infrequently, the state of charge of the
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`battery may diminish too quickly such that the range of the vehicle may be
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`inadequate. On the other hand, if the engine is operated too frequently, the engine
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`may generate excess torque that is not c