UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,104,347 to Severinsky et al.
`
`IPR Case No.: IPR2014-00571
`
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1, 6, 7, 9, 15, 21, 23 AND 36 OF U.S. PATENT NO. 7,104,347)
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ........................................................................................................ iii
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1
`
`A.
`B.
`C.
`D.
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1) ..................................... 1
`Related Matters - 37 C.F.R. § 42.8(b)(2) .............................................. 1
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 2
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104 ............................................ 2
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a) ...................................... 2
`B.
`Challenged Claims - 37 C.F.R. §42.104(b)(1) ...................................... 3
`C.
`Grounds of Challenge – 37 C.F.R. §42.104(b)(2) ................................ 3
`
`IV. PERSON OF ORDINARY SKILL IN THE ART (POSA) ............................ 3
`
`V.
`
`STATE OF THE ART ..................................................................................... 4
`
`VI. OVERVIEW OF THE ’347 PATENT ............................................................ 6
`
`A.
`B.
`C.
`
`Prosecution History of the ’347 Patent ................................................. 6
`Purported Improvement in the ’347 Patent ........................................... 7
`Independent Claims 1 and 23 ................................................................ 9
`
`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104(B)(3) ............................12
`
`A.
`
`B.
`C.
`
`“road load (RL),” “RL” and “instantaneous torque RL required
`to propel said vehicle” (Claims 7, 9, 15, 23 & 36) .............................13
`“SP,” “Setpoint (SP)” (Claims 1, 6, 7, 9, 15, 23 & 36) .......................14
`“low-load mode I,” “highway cruising mode IV,” “acceleration
`mode V” (Claims 7 & 9) ......................................................................16
`
`VIII. UNPATENTABILITY GROUNDS ..............................................................17
`
`Ground 1. Claims 23 and 36 are Obvious Over Severinsky ’970 in View of
`the General Knowledge of a POSA ....................................................17
`
`
`
`
`Claim 23 ..............................................................................................19
`Claim 36 ..............................................................................................33
`
`Ground 2. Claims 1, 6, 7, 9, 15 and 21 are Obvious Over Severinsky ’970
`in view of the General Knowledge of a POSA and in further
`view of Ehsani .....................................................................................34
`
`
`
`
`
`
`
`i
`
`

`

`
`
`
`
`
`
`
`Claim 1 ................................................................................................38
`Claim 6. ...............................................................................................44
`Claim 7 ................................................................................................45
`Claim 9. ...............................................................................................50
`Claim 15 ..............................................................................................51
`Claim 21 ..............................................................................................51
`
`Ground 3. Claims 1, 6, 7, 9, 15 and 21 are Obvious Over Ehsani in view of
`Severinsky ’970 ...................................................................................51
`
`
`
`
`
`
`
`Claim 1 ................................................................................................54
`Claim 7… ............................................................................................59
`Claim 9… ............................................................................................59
`Claim 15… ..........................................................................................59
`Claim 21… ..........................................................................................59
`
`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS ......................................59
`
`X.
`
`CONCLUSION ..............................................................................................60
`
`CERTIFICATE OF SERVICE ................................................................................61
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`EXHIBIT LIST
`
`Description
`U.S. Patent No. 7,104,347
`’347 Patent File History
`
`Date
`
`n/a
`n/a
`
`Identifier
`The ’347 Patent
`’347 Patent File
`History
`Severinsky ’970
`Ehsani
`Davis
`n/a
`
`Sept. 6, 1994
`Dec. 24, 1996
`n/a
`Mar. 8, 2005
`
`Mar. 29, 2005
`
`n/a
`
`Sept. 28, 2005
`
`n/a
`
`June 25, 2008
`
`n/a
`
`Aug. 1, 2008
`
`n/a
`
`Dec. 5, 2008
`
`n/a
`
`Nov. 14, 2013
`
`n/a
`
`Dec. 16, 2013
`
`n/a
`
`Jan. 3, 2014
`
`n/a
`
`
`
`Exhibit
`No.
`1001
`1002
`
`1003
`1004
`1005
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`U.S. Patent No. 5,343,970
`U.S. Patent No. 5,586,613
`Declaration of Gregory Davis
`Plaintiff Paice LLC’s Reply Claim
`Construction Brief (Case No.
`2:04-cv-00211
`Plaintiff Paice LLC’s Claim
`Construction Brief (Case No.
`2:04-cv-00211)
`Claim Construction Order (Case
`No. 2:04-cv-00211)
`Plaintiff Paice LLC’s Opening
`Claim Construction Brief (Case
`No. 2:07-cv-00180)
`Plaintiff Paice LLC’s Reply Brief
`on Claim Construction (Case No.
`2:07-cv-00180)
`Claim Construction Order (Case
`No. 2:07-cv-00180)
`Plaintiff Paice LLC and Abell
`Foundation, Inc.’s Opening Claim
`Construction Brief (Case No.
`1:12-cv-00499)
`Plaintiff Paice LLC and Abell
`Foundation, Inc.’s Responsive
`Brief on Claim Construction (Case
`No. 1:12-cv-00499)
`U.S. Patent Trial and Appeal
`Board January 3, 2014 Decision
`(Appeal No. 2011-004811)
`
`
`
`
`
`iii
`
`

`

`Exhibit
`No.
`1015
`
`1016
`
`1017
`1018
`1019
`
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`1032
`
`1033
`
`Description
`Curriculum Vitae of Gregory
`Davis
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`1996 Future Car Challenge
`1997 Future Car Challenge
`History of the Electric Automobile
`– Hybrid Electric Vehicles
`Hybrid Vehicle for Fuel Economy
`Hybrid/Electric Vehicle Design
`Options and Evaluations
`Challenges for the Vehicle Tester
`in Characterizing Hybrid Electric
`Vehicles
`Electric and Hybrid Vehicles
`Program
`Technology for Electric and
`Hybrid Vehicles
`Strategies in Electric and Hybrid
`Vehicle Design
`Hybrid Vehicle Potential
`Assessment
`Final Report Hybrid Heat Engine /
`Electric Systems Study
`Transactions of the Institute of
`Measurements and Control: A
`microprocessor controlled gearbox
`for use in electric and hybrid-
`electric vehicles
`Propulsion System Design of
`Electric Vehicles
`Propulsion System Design of
`Electric and Hybrid Vehicles
`Bosch Handbook
`Design Innovations in Electric and
`Hybrid Electric Vehicles
`U.S. Patent No. 6,209,672
`
`
`
`
`
`iv
`
`Date
`
`
`
`Identifier
`Declaration Ex.
`
`Feb. 1994
`
`Declaration Ex.
`
`Feb. 1997
`Feb. 1998
`1998
`
`
`Feb. 24-28,
`1992
`April 9-11,
`1997
`
`Declaration Ex.
`Declaration Ex.
`Declaration Ex.
`
`Declaration Ex.
`Declaration Ex.
`
`Declaration Ex.
`
`April 1995
`
`Declaration Ex.
`
`Feb. 1998
`
`Declaration Ex.
`
`Feb. 1996
`
`Declaration Ex.
`
`Sept. 30, 1979 Declaration Ex.
`
`June 1, 1971
`
`Declaration Ex.
`
`Sept. 1, 1988
`
`Declaration Ex.
`
`1996
`
`Declaration Ex.
`
`Feb. 1997
`
`Declaration Ex.
`
`Oct. 1996
`Feb. 1995
`
`Declaration Ex.
`Declaration Ex.
`
`Apr. 3, 2001
`
`Declaration Ex.
`
`

`

`Exhibit
`No.
`1034
`
`1035
`
`1036
`
`1037
`
`
`
`Description
`Introduction to Automotive
`Powertrains (Davis Textbook)
`Yamaguchi article: Toyota Prius,
`Automotive Engineering
`International
`60/100,095 Provisional
`Application
`Amendment in File History of
`U.S. Patent 8,214,097
`
`Date
`
`
`
`Identifier
`Declaration Ex.
`
`Jan. 1998
`
`Declaration Ex.
`
`Filed Sept. 11,
`1998
`Feb. 29, 2012
`
`Declaration Ex.
`
`n/a
`
`
`
`
`
`v
`
`

`

`I.
`
`INTRODUCTION
`
`The Petitioner Ford Motor Company respectfully requests inter partes
`
`review of claims 1, 6, 7, 9, 15, 21, 23 and 36 of U.S. Patent No. 7,104,347 (“the
`
`’347 Patent”; attached as Ex. 1001) in accordance with 35 U.S.C. §§ 311–319 and
`
`37 C.F.R. § 42.100 et seq.
`
`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 (“Petitioner”) is the real party-
`
`in-interest.
`
`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`
`Petitioner identifies the following related judicial matter: Paice, LLC and
`
`the Abell Foundation, Inc. v. Ford Motor Company, Case Number 1-14-cv-00492
`
`filed on February 19, 2014 in the District of Maryland, Baltimore Division. The
`
`’347 Patent is being asserted in this proceeding, along with four other patents
`
`within the same family.
`
`Petitioner is also aware that the ’347 patent is being asserted in Paice LLC
`
`and The Abell Foundation, Inc. v. Hyundai Motor America, Kia Motors
`
`Corporation, Hyundai Motor Company and Kia Motors America, Inc., Case
`
`Number 1:2012-cv-00499, District of Maryland, Baltimore Division filed on
`
`February 16, 2012.
`
`
`
`
`
`1
`
`

`

`Concurrently filed related petitions include: IPR2014-00570, IPR2014-
`
`00568 and IPR2014-00579. This Petition is not redundant to concurrently filed
`
`petitions related to the ’347 Patent as each petition addresses different claims.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Ford appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman P.C.
`
`as lead counsel, and appoints John E. Nemazi (Reg. No. 30,876), John P. Rondini
`
`(Reg. No. 64,949) and Erin K. Bowles (Reg. No. 64,705) 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, Twenty-Second 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
`
`FPGP0101IPR2@brookskushman.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com, and iptdocketchi@dentons.com.
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’347 Patent is available for inter partes review
`
`
`
`
`
`2
`
`

`

`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this Petition.
`
`B. Challenged Claims - 37 C.F.R. §42.104(b)(1)
`
`Petitioner requests inter partes review for claims 1, 6, 7, 9, 15, 21, 23, and
`
`36 of the ’347 Patent and requests that the Patent Trial and Appeal Board
`
`(“PTAB”) cancel those claims as unpatentable.
`
`C. Grounds of Challenge – 37 C.F.R. §42.104(b)(2)
`
`The grounds of unpatentability presented in this petition are as follows:
`
`Ground Basis
`
`References
`
`Challenged
`
`Claims
`
`1
`
`§ 103 Severinsky ‘970 in view of
`
`23 and 36
`
`General Knowledge of a POSA
`
`2
`
`§ 103 Severinsky ’970 in view of
`
`1, 6, 7, 9, 15, 21
`
`General Knowledge of a POSA and Ehsani
`
`3
`
`§ 103 Ehsani in view of Severinsky ’970
`
`1, 6, 7, 9, 15, 21
`
`The unpatentability grounds set forth in this Petition are confirmed and
`
`supported by the declaration of Dr. Gregory W. Davis. (“Davis” at Ex. 1005.)
`
`IV. PERSON OF ORDINARY SKILL IN THE ART (POSA)
`
`The level of ordinary skill in the art is evidenced by the references. See In re
`
`
`
`
`
`3
`
`

`

`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A POSA would have had either:
`
`(1) a graduate degree in mechanical, electrical or automotive engineering with at
`
`least some experience in the design and control of combustion engines, electric or
`
`hybrid electric vehicle propulsion systems, or design and control of automotive
`
`transmissions, or (2) a bachelor's degree in mechanical, 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. (Ex. 1005, Davis ¶¶41-42, see also ¶¶5-37.)
`
`V.
`
`STATE OF THE ART
`
`Hybrid vehicles date back over 100 years to the infancy of the automobile.
`
`(Ex. 1005, Davis ¶¶43-47.) Over this time span, numerous hybrid architectures had
`
`been examined to achieve design “goals” that included efficient engine operation,
`
`improved fuel economy and reduced emissions. (Ex. 1005, Davis ¶48.)
`
`By September 1998, the development of the hybrid vehicle had advanced to
`
`a state where numerous different hybrid vehicle architectures were generally
`
`known and had even been successfully built and tested on public roads. (Ex. 1005,
`
`Davis ¶¶49-60.) These hybrid vehicle architectures typically employed electric
`
`motors to maintain operation of the internal combustion engine within the engine’s
`
`most efficient operating region, commonly referred as the engine’s “sweet spot.”
`
`(Ex. 1005, Davis ¶¶59, 108-133.) Some hybrid vehicles could accomplish efficient
`
`
`
`
`
`4
`
`

`

`engine operation by employing “one-motor” architectures while other designs
`
`found operational benefits by employing “two-motor” architectures. (Ex. 1005,
`
`Davis, see discussion regarding “series” hybrid vehicles at ¶¶61-69; and “parallel”
`
`hybrid vehicles at ¶¶70-107.)
`
`It was known before September 1998 that engines in conventional vehicles
`
`operate inefficiently at low torque loads and vehicle speeds. (Ex. 1005, Davis
`
`¶¶108-123, 125-126.) Hybrid vehicles could overcome the inefficiency of
`
`conventional vehicles by including a motor (i.e., “traction motor”) with sufficient
`
`power to propel the vehicle at low speeds and low loads. (Ex. 1005, Davis ¶¶108-
`
`123.) By using a powerful enough motor, hybrid vehicles could restrict engine
`
`operation solely to areas of high efficiency. (Ex. 1005, Davis ¶¶59, 108-123.) As
`
`the vehicle speed and load increased, operation of the engine was permitted when
`
`the speed and load were determined to be in a region where engine torque is most
`
`efficiently produced—i.e., the engine’s “sweet spot.” (Ex. 1005, Davis ¶¶59, 109-
`
`133.)
`
`For hybrid vehicles it was further known prior to September 1998 that
`
`engine operation could be restricted to its “sweet spot” using a control strategy that
`
`typically included: (1) an all-electric mode where only the motor propels the
`
`vehicle when engine operation is inefficient (i.e., at low loads or vehicle speeds);
`
`(2) an engine-only mode where the engine propels the vehicle when engine
`
`
`
`
`
`5
`
`

`

`operation is efficient, such as highway cruising at higher speeds; (3) a recharge
`
`mode where the vehicle operates a generator to provide electrical energy to
`
`recharge the battery; and (4) an acceleration mode where the both engine and
`
`motor are used to propel the vehicle when the demand is beyond the maximum
`
`torque capabilities of the engine, such as during acceleration, passing, hill-
`
`climbing. (Ex. 1008, Davis ¶¶84, 124-131.)
`
`VI. OVERVIEW OF THE ’347 PATENT
`
`The ’347 Patent is a divisional in a patent family chain that ultimately claims
`
`priority back to two separate Provisional Applications—Provisional Application
`
`No. 60/100,095 (“the ’095 Provisional”), filed September 14, 1998, and
`
`60/122,296 (“the ’296 Provisional”), filed March 1, 1999. (Ex. 1001; Ex. 1002 at
`
`2.)
`
`A.
`
`Prosecution History of the ’347 Patent
`
`The ’347 Patent issued from Application No. 10/382,577 and received only
`
`one Office Action, with “non-final” rejections. (Ex. 1002 at 387-393.) The patentee
`
`amended some claims to correct 35 U.S.C. § 112 rejections or to correct claim
`
`numbering. (Ex. 1002 at 431-442.) In response to prior art rejections, the patentee
`
`also amended claims 82 and 104 (issued independent claims 1 and 23 of the ’347
`
`Patent) to include the following limitation:
`
`
`
`
`
`6
`
`

`

`and wherein the torque produced by said engine when operated at said
`
`setpoint (SP) is substantially less than the maximum torque output
`
`(MTO) of said engine.
`
`(Ex. 1002 at 431-432 and 437-438.)
`
`Subsequent to the patentee’s amendment of the claims, a first notice of
`
`allowance was issued on April 21, 2005. (Ex. 1002 at 699-702.) After receiving
`
`this allowance, the patentee paid the issue fee and concurrently submitted
`
`numerous prior art references produced in a contemporaneous patent litigation
`
`against Toyota. (Ex. 1002 at 708-711.) On January 19, 2006, the patentee further
`
`filed a petition to withdraw the application from issuance and submitted additional
`
`prior art references presented during the litigation with Toyota. (Ex. 1002 at 1084-
`
`1091 and 1093-1103.)
`
`On July 11, 2006, a subsequent notice of allowance was issued without any
`
`additional rejections based on the numerous prior art references provided by the
`
`patentee after the first notice of allowance. The ’347 Patent subsequently issued
`
`on September 12, 2006. (Ex. 1002 at 1211-1212.)
`
`B.
`
`Purported Improvement in the ’347 Patent
`
`The ’347 Patent purports to identify “a new ‘topology’ for a hybrid vehicle”
`
`that requires “a first electric ‘starting’ motor” and “[a] second ‘traction’ motor []
`
`
`
`
`
`7
`
`

`

`directly connected to the wheels to propel the vehicle.” (Ex. 1001 at 11:49-59.)1
`
`The ’347 Patent also purports to identify a new control strategy that operates the
`
`engine, traction motor, and starter motor “in accordance with the vehicle’s
`
`instantaneous torque demands so that the engine is run only under conditions of
`
`high efficiency.” (Ex. 1001 at 1-Abstract.)
`
`Specifically, the ’347 Patent states that the control strategy operates “the
`
`internal combustion engine only under circumstances providing a significant load,
`
`thus ensuring efficient operation.” (Ex. 1001 at 41:11-14; See also 19:36-41 &
`
`20:52-60.) The ’347 Patent states that such efficient engine operation is
`
`accomplished using a set of operating modes that determine when to operate the
`
`engine or motors “depending on the torque required, the state of charge of the
`
`battery and other variables.” (Ex. 1001 at 35:5-11.) Specifically, the ’347 Patent
`
`discloses: (1) operating the traction motor to provide “the torque required to propel
`
`the vehicle” when engine torque would be inefficiently produced (i.e., “mode I”);
`
`(2) operating the engine to provide “the torque required to propel the vehicle”
`
`when engine torque is efficiently produced (i.e., “mode IV”); (3) operating both the
`
`engine and motor when the “torque required to propel the vehicle” is above the
`
`maximum operating torque of the engine (i.e., “mode V”.) (Ex. 1001 at 35:66-36:4;
`
`
`1 “Topology” is a term used by the ’347 Patent to describe a vehicle architecture or
`
`vehicle configuration. (Ex. 1005, Davis ¶56 and ¶135).
`
`
`
`
`
`8
`
`

`

`36:23-46; Figs. 8(a), (c), (d).)2
`
`As discussed in the “State of the Art” above, the control strategy of the ’347
`
`Patent was known in the prior art. (Ex. 1005, Davis ¶¶108-133.) In fact, as
`
`discussed in the Petitioner’s unpatentability grounds below, the ’347 Patent itself
`
`acknowledges that “the inventive control strategy according to which the hybrid
`
`vehicles of the [’347 Patent] are operated” is the same “as in the case of the hybrid
`
`vehicle system shown in [the prior art Severinsky ’970 patent].” (Ex. 1001 at 35:5-
`
`11; see also Ex. 1001 at 24:64-25:17.)
`
`C.
`
`Independent Claims 1 and 23
`
`Claim 1 of the ’347 Patent is directed to a “hybrid vehicle.” Claim 1 further
`
`recites an “internal combustion engine,” “first motor,” and “second motor.”3 The
`
`“internal combustion engine” is recited as being “controllably coupled” to the road
`
`wheels. The “first motor” is “operable to start the engine responsive to a control
`
`signal.” The “second motor” is “connected to the wheels … and operable as a
`
`motor … to propel the vehicle … and as a generator … for generating current.” A
`
`“battery” is also recited as “providing current to said motors” and receiving a
`
`
`2 These operational “modes” were also summarized by the patentee during a prior
`
`claim construction briefing. (Ex. 1009 at 13-14).
`
`3 In this Petition, quoted claim language is italicized for ease of reference.
`
`Petitioner will occasionally add boldface to certain claim language for emphasis.
`
`
`
`
`
`9
`
`

`

`“charging current from at least the second motor.”4
`
`Claim 1 specifically pertains to controlling these components such that
`
`“engine torque is efficiently produced.” In particular, claim 1 recites a “controller”
`
`that starts and operates the engine when the engine can be efficiently operated.
`
`Claim 1 further recites that the engine is started and operated in order to perform
`
`the following elements:5
`
`Element A - start[] and operate[] said engine when torque require to be
`
`produced by said engine to propel the vehicle … is at least equal to a
`
`setpoint (SP) above which said engine torque is efficiently produced…
`
`Element B - start[] and operate[] said engine when torque require to be
`
`produced by said engine 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…
`
`Claim 1 also states that the recited “setpoint (SP)” is a value that is
`
`“substantially less than the maximum torque output (MTO) of the engine.”
`
`Claim 23 is directed to the efficient control of a hybrid vehicle. The
`
`
`4 The “first motor” is therefore not required to provide a charging current (i.e.,
`
`operate as a generator).
`
`5 Claim 1 uses an “and/or” modifier which is properly construed as “Element A
`
`alone,” “Element B alone,” or “Elements A and B taken together.” (Ex. 1014 at 4).
`
`
`
`
`
`10
`
`

`

`preamble of claim 23 provides the structure of the recited hybrid vehicle being
`
`controlled. Like claim 1, claim 23 requires an “internal combustion engine capable
`
`of efficiently producing torque at loads between a lower level [setpoint] and a
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`maximum torque output MTO” and a “battery.” Unlike claim 1, however, claim 23
`
`does not require two motors. Claim 23 simply requires “one or more electric
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`motors being capable of providing output torque … and of generating electric
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`current.”
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`In order to determine the proper mode of operation of the vehicle the
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`claimed method first “determin[es] the instantaneous torque RL required to propel
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`the vehicle responsive to an operator command” and “monitor[s] the state of
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`charge of the battery.” Based on these values, the hybrid vehicle is operated
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`according to one of the following operational modes:
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`1. Propelling the vehicle using the motor when “torque RL required to do so is
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`less than said lower level [setpoint].”
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`2. Propelling the vehicle using the engine when “the torque RL required to do
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`so is between said lower level SP and MTO.”
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`3. Propelling the vehicle using the engine and motor “when the torque RL
`
`required to do so is more than MTO.”
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`4. Propelling the vehicle using the engine “when the torque RL required to do
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`so is less than [setpoint].” Although this equality (i.e., RL<SP) should result
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`
`
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`in motor operation, the “state of charge of said battery” has decreased to a
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`value that the battery must be charged before the motor can be used again to
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`propel the vehicle. In order to recharge the battery back to a proper voltage
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`level, the claim recites that the engine will use “the torque between RL and
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`SP” to drive the motor as a generator in order “to charge said battery.”
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`Claim 23 also recites that the “setpoint (SP)” is a value “substantially less
`
`than the maximum torque output (MTO) of the engine.”
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`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104(B)(3)
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`For purposes of this IPR, a claim is interpreted by applying its “broadest
`
`reasonable construction.” 37 C.F.R. § 42.100(b).
`
`Certain terms recited in the claims of the ’347 Patent were argued by the
`
`patentee with respect to other patents in the ’347 Patent family chain, namely U.S.
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`Patent Nos. 6,209,672 and 6,554,088, and construed by a court in the Eastern
`
`District of Texas in the prior Paice LLC v. Toyota Motor Corp. et al., Case No.
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`2:04-cv-211, on September 28, 2005. (Ex. 1006; Ex. 1007; Ex. 1008.)
`
`Certain terms recited in the claims of the ’347 Patent were also argued by
`
`the patentee and construed by the same Texas court in Paice LLC v. Toyota Motor
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`Corp. et al., Case No. 2:07-cv-180, on December 5, 2008. (Ex. 1009; Ex.1010; Ex.
`
`1011.)
`
`Certain terms recited in the claims of the ’347 Patent have further been
`
`
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`briefed in the currently ongoing Hyundai Litigation. (Ex. 1012; Ex. 1013.)
`
`Petitioner proposes the following claim constructions for the purposes of this
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`Petition only.
`
`A.
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`“road load (RL),” “RL” and “instantaneous torque RL
`required to propel said vehicle” (Claims 7, 9, 15, 23 & 36)
`
`During the 2005 and 2008 litigation with Toyota, the Eastern District of
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`Texas construed the terms “instantaneous road load,” “road load,” “RL,” and “road
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`load (RL)” as follows: (1) “instantaneous torque [rotary force] required for
`
`propulsion of the vehicle” (Ex. 1008 at 39-41 & 49); (2) “the instantaneous torque
`
`required for propulsion of the vehicle, which may be positive or negative in value.”
`
`(Ex. 1011 at 14-15.)
`
`In the currently ongoing Hyundai Litigation, the patentee has also
`
`maintained that the terms “road load” or “RL” should be construed as “the
`
`instantaneous torque required for propulsion of the vehicle, which may be positive
`
`or negative in value.” (Exhibit 1012 at 16-19.)
`
`Because inter partes review proceedings use the broadest reasonable
`
`construction of claim terms, Petitioner proposes, for purposes of this proceeding
`
`only, that the terms “road load (RL),” “RL” and “instantaneous torque RL
`
`required to propel said vehicle” be construed as: “the instantaneous torque
`
`required for propulsion of the vehicle, which may be positive or negative in value.”
`
`(see Ex. 1011 at 14-15.) Based on the specification, prosecution history, and
`
`
`
`
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`admissions by the patentee, however, Ford’s position is that the construction under
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`the applicable standards in district court is more narrow, and Petitioner reserves the
`
`right to present a narrower construction in district court litigation.
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`B.
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`“SP,” “Setpoint (SP)” (Claims 1, 6, 7, 9, 15, 23 & 36)
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`During 2008 litigation with Toyota, the Eastern District of Texas construed
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`the “setpoint (SP)” as being “a definite, but potentially variable value at which a
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`transition between operating modes may occur.” (Ex. 1011 at 13.) To the extent
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`this construction is applicable to cover any-and-all predetermined values (e.g.,
`
`setpoints) disclosed in the ’347 Patent, this construction is overly broad. Instead,
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`the broadest reasonable construction of the terms “setpoint (SP)” and “SP” is “a
`
`predetermined torque value,” as patentee made clear during prosecution.
`
`First, issued claims 1 and 23 were amended during prosecution to include
`
`the following language in order to overcome a prior art rejection:
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`and wherein the torque produced by said engine when operated at said
`
`setpoint (SP) is substantially less than the maximum torque output
`
`(MTO) of said engine.6
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`(Ex. 1002 at 387-393, 431-432 and 437-438.)
`
`Such language was added in order to overcome a rejection based on U.S.
`
`Patent 6,054,844 to Frank and a non-patent publication titled “A hybrid drive
`
`
`6 Claim 23 recites a similar comparison between engine torque and “setpoint (SP).”
`
`
`
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`based on a structure variable arrangement” to Mayrhofer. In order to overcome
`
`these references, the patentee argued that the engine was operated only when
`
`loaded “in excess of SP [setpoint], which is now defined to be ‘substantially less
`
`than the maximum torque output (MTO) of said engine.’” (Ex. 1002 at 443-444,
`
`emphasis added.)
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`Aside from these amendments, the ’347 Patent specification also states that
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`multiple “system variables” are compared against multiple “setpoints.”
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`As mentioned above, FIG. 9 is a high-level flowchart of the principal
`
`decision points in the control program used to control the mode of
`
`vehicle operation. Broadly speaking, the microprocessor tests
`
`sensed and calculated values for system variables, such as the
`
`vehicle's instantaneous torque requirement, i.e., the “road load” RL,
`
`the engine's instantaneous torque output ITO, both being expressed as
`
`a percentage of the engine's maximum torque output MTO, and the
`
`state of charge of the battery bank BSC, expressed as a percentage of
`
`its full charge, against setpoints, and uses the results of the
`
`comparisons to control the mode of vehicle operation.
`
`(Ex. 1001 at 40:21-32, emphasis added.)
`
`Independent claims 1 and 23 instead recite a “setpoint” that is compared to
`
`the “torque produced by said engine.” (Ex. 1001 at 58:34-34; 60:52-54.) Thus, the
`
`setpoint is based on torque by the express claim language. The ’347 Patent states
`
`that the engine torque “system variable” is compared against a “setpoint” that is
`
`
`
`
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`between “30-50%” of the engine’s maximum torque output. (Ex. 1001 at 40:47-
`
`55.) In other words, independent claims 1 and 23 recite a torque value that is used
`
`to test whether the “torque produced by the engine” is within a specified engine
`
`torque range (e.g., 30-50% of MTO.)
`
`According to the broadest reasonable construction, the recited “setpoint
`
`(SP)” and “SP” of independent claims 1 and 23 and dependent claims 6, 7, 9, 15
`
`and 36 should be construed as a “predetermined torque value.”
`
`C.
`
`“low-load mode I,” “highway cruising mode IV,”
`“acceleration mode V” (Claims 7 & 9)
`
`During the 2008 patent suit with Toyota, a Texas court construed these terms
`
`as follows: (1) “low-load mode I” as “the mode of operation in which energy from
`
`the battery bank flows to the traction motor and torque (rotary force) flows from
`
`the traction motor to the road wheels; “highway cruising mode IV” as “the mode of
`
`operation in which energy flows from the fuel tank into the engine and torque
`
`(rotary force) flows from the engine to the road wheels;” (3) “acceleration mode
`
`V” as “the mode of operation in which energy flows from the fuel tank to the
`
`engine and from the battery bank to at least one motor and torque (rotary force)
`
`flows from the engine and at least one motor to the road wheels.” (Ex. 1011 at 15-
`
`17.)
`
`Because inter partes review proceedings use the broadest reasonable
`
`construction of claim terms, Petitioner agrees with the above constructions
`
`
`
`
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`provided by the Texas court for this proceeding only. (see Ex. 1011 at 15-17.)
`
`Based on the specification, prosecution history, and admissions by the patentee,
`
`however, Ford’s position is that the construction under the applicable standards in
`
`district court is more narrow, and Petitioner reserves the right to present a narrower
`
`construction in district court litigation.
`
`VIII. UNPATENTABILITY GROUNDS
`
`The references below render the claimed subject matter invalid under 35
`
`U.S.C. §103 and the Petitioner therefore has a reasonable likelihood of prevailing
`
`as to each of the following grounds of unpatentability. 35 U.S.C. § 314(a); 37
`
`C.F.R. § 42.104(b)(4).
`
`Ground 1. Claims 23 and 36 are Obvious Over Severinsky ’970 in
`
`View of the General Knowledge of a POSA
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`As provided below and by the accompanying declaration of Dr. Davis,
`
`claims 23 and 36 are unpatentable as being obvious under 35 U.S.C. §103 over
`
`Severinsky ’970 in view of the knowledge of a POSA. (Ex. 1005, Davis ¶¶183-
`
`192.) First, Severinsky ’970