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
`
`
`______________
`
`
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,104,347
`
`
`
`
`
`
`
`
`
`
`

`

`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
`
`
`Table of Contents
`
`Table of Authorities ............................................................................................................... ii
`
`Updated Exhibit List ............................................................................................................. iii
`
`I.
`
`II.
`
`Introduction ................................................................................................................. 1
`
`A POSA would NOT understand Severinsky ’970 as Paice proposes, i.e.,
`that it doesn’t consider torque demands but instead “uses speed as the
`one factor in determining when to employ the engine” ........................................ 1
`
`A.
`
`B.
`
`C.
`
`Paice’s “road load” argument depends on Mr. Hannemann’s
`improper application of the Board’s instantaneous torque required to
`propel the vehicle construction ............................................................................ 2
`A POSA would understand that Severinsky ’970 teaches using the
`instantaneous torque required to propel the vehicle for mode selection................. 6
`Paice’s reliance on Severinsky ’970’s use of “speed” language is
`misplaced where all agree, and a POSA would understand, that
`speed and torque can be proxies in that “higher vehicle speeds
`generally require more torque” .................................................................... 10
`
`III. A POSA would understand that Severinsky ’970 discloses the disputed
`limitations of claim 23 .............................................................................................. 11
`
`A.
`
`B.
`
`Severinsky ’970 teaches the engine [23.8], motor [23.7], and
`setpoint [23.1] limitations ............................................................................. 13
`1.
`Paice’s arguments about “output torque” and “output
`power and speed” ignore the well-known relationships
`between torque, power and speed, and misrepresent Ford’s
`positon ................................................................................................. 17
`Paice cannot avoid the admissions in the ’347 Patent ................... 19
`The Board’s construction of setpoint is correct; and Paice’s
`proposed construction would not affect the analysis .................... 21
`Severinsky teaches the charging limitation [23.10] .................................... 21
`
`2.
`3.
`
`IV. A POSA would understand that Severinsky ’970 and Ehsani disclose the
`disputed limitations of claim 1 and its dependents ............................................... 24
`
`V.
`
`Conclusion ................................................................................................................. 25
`
`Certificate of Service ............................................................................................................ 26
`
`
`
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`
`
`
`
`i
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`

`

`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
`
`
`Table of Authorities
`
`
`Cases
`
`Clearwater Systems Corp. v. Evapco, Inc.,
`
`394 Fed.Appx. 699 (Fed. Cir. 2010) ....................................................................... 19
`
`Constant v. Advanced Micro–Devices, Inc.,
`
`848 F.2d 1560 (Fed.Cir.1988) .................................................................................. 20
`
`In re Fulton,
`
`391 F.3d 1195 (Fed. Cir. 2004) ................................................................................ 25
`
`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
`
`491 F.3d 1342 (Fed. Cir. 2007) ................................................................................ 19
`
`Other Authorities
`
`MPEP 2258 ........................................................................................................................... 20
`
`Rules
`
`37 CFR 1.104 ........................................................................................................................ 20
`
`
`
`
`
`
`
`
`ii
`
`

`

`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
`
`
`Updated Exhibit List
`
`Exhibit
`No.
`1001
`1002
`
`Description
`U.S. Patent No. 7,104,347
`’347 Patent File History
`
`1003
`1004
`1005
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`1016
`
`
`
`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)
`Curriculum Vitae of Gregory Davis
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`
`iii
`
`Date
`
`n/a
`n/a
`
`Sept. 6, 1994
`Dec. 24, 1996
`n/a
`Mar. 8, 2005
`
`Identifier
`The ’347 Patent
`’347 Patent File
`History
`Severinsky ’970
`Ehsani
`Davis
`n/a
`
`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
`
`
`Feb. 1994
`
`Declaration Ex.
`Declaration Ex.
`
`

`

`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
`
`
`Date
`Feb. 1997
`Feb. 1998
`1998
`
`Identifier
`Declaration Ex.
`Declaration Ex.
`Declaration Ex.
`
`Declaration Ex.
`
`Feb. 24-28, 1992 Declaration Ex.
`
`April 9-11, 1997 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.
`Declaration Ex.
`
`Jan. 1998
`
`Declaration Ex.
`
`Exhibit
`No.
`1017
`1018
`1019
`
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`1032
`
`1033
`1034
`
`1035
`
`
`
`Description
`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
`Introduction to Automotive
`Powertrains (Davis Textbook)
`Yamaguchi article: Toyota Prius,
`Automotive Engineering
`International
`
`iv
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`

`

`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`
`Date
`Description
`60/100,095 Provisional Application Filed Sept. 11,
`1998
`Feb. 29, 2012
`
`Identifier
`Declaration Ex.
`
`n/a
`
`Amendment in File History of U.S.
`Patent 8,214,097
`Reply Declaration of Dr. Gregory
`Davis
`Deposition Transcript of Mr.
`Hannemann IPR2014-00571
`
`
`
`Reply Dec.
`
`4/7/2015
`
`Hannemann
`Depo.
`
`
`
`Deposition Transcript of Mr.
`Hannemann IPR2014-00579
`
`4/7/2015 –
`4/8/2015
`
`v
`
`Exhibit
`No.
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`
`
`
`
`
`
`

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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`
`I.
`
`Introduction
`
`The Board instituted “inter partes review of challenged claims 1, 6, 7, 9, 15, 21,
`
`23 and 36 of the ’347 patent . . . on the asserted ground of obviousness over
`
`Severinsky and Ehsani.” (Decision (Paper 12) at 16.) Patent Owner (“Paice”) disputes
`
`a limited number of limitations from claims 23, 1, 7 and 9 (Patent Owner Response,
`
`(“Response” or “POR”) at i-ii), so the remaining limitations are undisputed.
`
`In virtually every section of its Response, Paice makes the same argument, i.e.:
`
`Severinsky ’970 allegedly does not consider torque demands but instead uses speed as
`
`the one factor in determining when to employ the engine. (See, e.g., POR at 26, 28, 31,
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`34, 39, 45, 53, 56, 57, 58.) Petitioner (“Ford”) accordingly addresses Paice’s global
`
`argument first (Section II.), addresses the challenged limitations of claim 23 second
`
`(Section III.), and then addresses claim 1 and its dependents (Section IV.).
`
`For the reasons explained in Ford’s Petition and below, the Board should find
`
`the challenged claims unpatentable.
`
`II. A POSA would NOT understand Severinsky ’970 as Paice
`proposes, i.e., that it doesn’t consider torque demands but instead
`“uses speed as the one factor in determining when to employ the
`engine”
`
`Virtually every section of Paice’s Response depends on its assertion that
`
`Severinsky ’970 does not “determine road load” or “consider torque demands,” but
`
`instead “explicitly states that it uses speed as the one factor in determining when to
`
`employ the engine.” (POR at 56, 57, 58 (emphasis added); see also POR 28, 31, 34, 39,
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`
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`1
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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`45, 53.) Paice is incorrect.
`
`As explained in Section A. below, Paice’s entire argument lacks support
`
`because it is based on an improper application of the Board’s construction for road
`
`load, i.e., “the amount of instantaneous torque required to propel the vehicle, be it positive or
`
`negative.”1 (Decision at 7.) As explained in section B. below, a POSA would
`
`understand that Severinsky ’970 considers the instantaneous torque required to propel the
`
`vehicle in determining when to employ the engine. And as explained in Section C.,
`
`Paice’s reliance on “speed” language in Severinsky ’970 is misplaced.
`
`A POSA would not conclude that Severinsky ’970 “uses speed as the one
`
`factor in determining when to employ the engine.”
`
`A.
`
`Paice’s “road load” argument depends on Mr. Hannemann’s
`improper application of the Board’s instantaneous torque
`required to propel the vehicle construction
`
`As discussed, all of Paice’s arguments depend on its assertion that Severinsky
`
`’970 does not meet the disputed limitations because it allegedly does not determine or
`
`consider road load. (POR 26, 28, 31, 34, 39, 45, 53, 56, 57, 58.) But the deposition of
`
`Paice’s expert, Mr. Hannemann, revealed that Paice’s global “road load” argument
`
`depends on Paice improperly applying the Board’s construction of road load, i.e., “the
`
`amount of instantaneous torque required to propel the vehicle, be it positive or negative.” (Decision
`
`
`1 In the Petition, Ford italicized claim language for each reference. Ford will also
`
`italicize the Board’s construction of road load in this Reply.
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`
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`2
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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`
`at 7.)
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`For example, Mr. Hannemann admitted that at any point in time, the ’970
`
`microprocessor is “determining how much torque the motor and/or the engine
`
`should be generating, [and] it's doing so based on what the microprocessor concludes
`
`is required at that point in time.” (Ex. 1039, Hannemann Depo. at 112:18-113:3,
`
`emphasis added.) Yet Paice/Hannemann assert that Severinsky ’970 does not disclose
`
`determining the instantaneous torque required to propel the vehicle. (POR at 26, n.8; Ex. 2002,
`
`Hannemann Decl. p. 45, n.4.)
`
`As explained more
`
`fully below, Paice’s arguments are based on
`
`Paice/Hannemann improperly limiting the instantaneous torque required to propel the vehicle
`
`to include only the torque that meets the external forces – aerodynamic/wind
`
`resistance, friction, grade – on the vehicle. Per Paice/Hannemann, the instantaneous
`
`torque required to propel the vehicle does not include the torque required to implement a
`
`driver command, e.g., accelerate. (Ex. 1039, Hannemann Depo. at 46:20-25.) Mr.
`
`Hannemann’s deposition revealed these points, as Ford will now explain.
`
`Mr. Hannemann first defined what he calls “actual road load” or “textbook
`
`road load” as the external “forces acting on the vehicle.” (Ex. 1039, Hannemann
`
`Depo. at 43:4-9; 43:19-21; 45:22-25; 47:1-5.) These external forces include “air [aero]
`
`dynamic forces, mechanical [frictional] forces, and forces related to the grade of the
`
`road.” (Ex. 1039, Hannemann Depo. at 44:1-5.) According to Hannemann/Paice, the
`
`instantaneous torque required to propel the vehicle is limited to the torque required to
`
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`3
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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`overcome these external forces (Ex. 1039, Hannemann Depo. at 43:19-23; 46:7-12),
`
`and therefore “would not include a driver command,” e.g., to accelerate the vehicle.
`
`(Ex. 1039, Hannemann Depo. at 46:20-25; see also Ex. 1040, Hannemann Depo. for
`
`20014-0579 at 78:17-80:5.)
`
`There is no basis for limiting the instantaneous torque required to propel the vehicle to
`
`exclude torques required to implement a driver command. Claim 23 expressly states:
`
`“determining the instantaneous torque RL required to propel said vehicle responsive
`
`to an operator command.” (Emphasis added.) The specification likewise states that
`
`“the torque required to propel the vehicle varies as indicated by the operator’s
`
`commands.” (Ex. 1001, 38:12-14.) The specification states that “a continued operator
`
`request for more power,” i.e., pressing the accelerator pedal, is “a sensed increase in
`
`the road load.” (Ex. 1001, 36:26-28.) But Paice/Hannemann say the opposite:
`
`Q: Mr. Hannemann, does an operator depressing the accelerator pedal
`
`signify an increase in [the instantaneous torque required to propel the
`
`vehicle]?2
`
`MR. LIVEDALEN: Objection. Vague.
`
`Mr. Hannemann: No.
`
`(Ex. 1039, Hannemann Depo. at 139:10-13.)
`
`
`2 The question used the term “road load,” but Mr. Hannemann stated elsewhere that
`
`his opinions are based on the Board’s construction of road load. (Ex. 1039,
`
`Hannemann Depo. at 42:22-43:3.)
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`4
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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`Beyond the language of claim 23 and the ’347 specification, and as a matter of
`
`common sense, the instantaneous torque required to propel the vehicle is influenced by how
`
`the driver desires to propel the vehicle and the instantaneous torque required to
`
`do so. For example, when a driver wants to accelerate a vehicle, the instantaneous torque
`
`required to propel the vehicle at that time goes up – but Paice/Hannemann would say it
`
`does not because the “external forces” have not changed in that instant. (Ex. 1038,
`
`Reply Decl. at ¶¶6-10.) And when a driver encounters a hill, the external forces (due
`
`to grade) increase, but if the driver wants to slow down up the hill, the instantaneous
`
`torque required to propel the vehicle at that instant may decrease. (Ex. 1038, Reply Decl. at
`
`¶¶11-13.)
`
`The following Q&A regarding hill-climbing illustrates that Paice/Hannemann
`
`are not applying the Board’s instantaneous torque required to propel the vehicle construction
`
`in any ordinary, let alone the broadest reasonable, meaning in this IPR. When Mr.
`
`Hannemann was asked about the impact of a hill on the “torque . . . that’s required to
`
`propel the vehicle,” he said it “depends what the driver command is”:
`
`Q: Now, a different scenario. Driver is driving down the road; driver
`
`encounters a hill. Wants to maintain speed but is now going up a hill.
`
`Do you agree, then that the torque at the wheels that's required to
`
`propel the vehicle at that time will go up?
`
`MR. LIVEDALEN: Objection. Vague, incomplete hypothetical.
`
`Mr. Hannemann: It depends what the driver command is.
`
`
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`5
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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`(Ex. 1039, Hannemann Depo. at 105:16-23, emphasis added.)
`
`Yet when applying the Board’s construction, Paice/Hannemann opine that
`
`instantaneous torque required to propel the vehicle “would not include a driver command.”
`
`(Ex. 1039, Hannemann Depo. at 46:20-25; 85:9-86:2.)
`
` In sum, Paice raises a “road load” argument for virtually every limitation and
`
`issue in its Response. (POR 28, 31, 34, 39, 45, 53, 56, 57, 58.) As shown above, Mr.
`
`Hannemann admits that “the torque at the wheels that’s required to propel the
`
`vehicle” “depends [on] the driver command.” And the ’347 patent confirms that the
`
`instantaneous torque required to propel the vehicle can depend on driver command. Yet
`
`Paice/Hannemann’s positions depend on a contention that the instantaneous torque
`
`required to propel the vehicle “would not include a driver command.” (Ex. 1039,
`
`Hannemann Depo. at 46:20-25; 85:9-86:2.)
`
`Against the background, Paice has no declarant support for any analysis under
`
`the Board’s actual instantaneous torque required to propel the vehicle construction.
`
`B.
`
`A POSA would understand that Severinsky ’970 teaches
`using the instantaneous torque required to propel the vehicle
`for mode selection
`
`Paice has to misapply the Board’s instantaneous torque required to propel the vehicle
`
`construction because Severinsky ’970 teaches a microprocessor considering the
`
`instantaneous torque required to propel the vehicle for mode selection.
`
`First, Paice’s own expert, Mr. Hannemann, admits that at any point in time, the
`
`’970 microprocessor is “determining how much torque the motor and/or the engine
`
`
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`6
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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`should be generating, [and] it's doing so based on what the microprocessor concludes
`
`is required at that point in time.” (Ex. 1039, Hannemann Depo. at 112:18-113:3,
`
`emphasis added.)
`
`Second, Severinsky
`
`’970 employs a motor-plus-engine “acceleration/hill
`
`climbing” mode, which is clearly road-load-based because both experts agree that
`
`acceleration/hill climbing can occur at any speed, and requires increased torque to
`
`propel the vehicle regardless of the vehicle’s speed. (Ex. 1039, Hannemann Dep. at
`
`102:7-12 (acceleration/hill climbing can occur at any speed), 104:10-16 (acceleration
`
`requires more torque), and 105:16-106:4 (hill climbing requires more torque); Ex.
`
`1003, 14:15-18; Ex. 1038, Reply Decl. at ¶¶6-13; Ex. 1005 at ¶¶284-291.) Indeed,
`
`Severinsky ’970 describes one example where the microprocessor “activates electric
`
`motor 20” to enter the acceleration/hill-climbing mode “when torque in excess of the
`
`capabilities of engine 40 is required.” (Id. at 14:15-18, 22-26, emphasis added.) Thus
`
`Severinsky ’970 discloses a microprocessor that compares the Board’s instantaneous
`
`torque required to propel the vehicle with the torque capabilities of the engine to determine
`
`the vehicle mode.
`
`Third, Severinsky
`
`’970’s description of motor-engine transition further
`
`confirms it uses the instantaneous torque required to propel the vehicle in determining when
`
`to employ the engine. If, as Paice now asserts, Severinsky ’970 transitions from motor
`
`to engine based solely on speed, then it would identify the speed where the transition
`
`occurs and would state that at a certain speed the controller starts the engine and
`
`
`
`7
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`

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`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`turns off the motor. It does neither. On the contrary, Severinsky ’970 transitions from
`
`motor to engine when the “operator continues to command acceleration” – indicating
`
`increased torque demands, not speed. (Ex. 1003, 10:66-11:6.) And when the operator
`
`“continues to command acceleration,” Severinsky ’970 does not describe starting the
`
`engine and stopping the motor. Severinsky ’970 instead states that the vehicle first
`
`enters road-load-based “acceleration/hill climbing mode” (motor and engine) before
`
`entering the higher speed “highway cruising” (engine only) mode. Severinsky ’970
`
`states:
`
`“FIG. 4 illustrates operation in low speed circumstances, e.g., in city
`
`traffic or reversing. . . . Thus FIG. 4 indicates that the flow of energy in
`
`heavy traffic or for reversing is simply from battery 22 to electric motor
`
`20; torque flows from the motor 20 to the wheels 34. Under these
`
`circumstances, electric motor 20 provides all of the torque needed to
`
`move the vehicle. Other combinations of torque and energy flow
`
`required under other circumstances are detailed below in connection
`
`with FIGS. 5-9. For example, if the operator continues to command
`
`acceleration, an acceleration/hill climbing mode illustrated in
`
`FIG. 6 may be entered, followed by a highway cruising mode
`
`illustrated in FIG. 5.”
`
`(Ex. 1003 at 10:52-53, 10:63-11:6 (emphasis added); see also 14:16-26 (acceleration/hill
`
`climbing mode uses engine and motor for high torque); Ex. 1038, Reply Decl. at ¶¶6-
`
`13; Ex. 1005 at ¶¶284-291.)
`
`The ’347 Patent likewise states that the vehicle transitions “from low-speed”
`
`
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`8
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`

`

`Case No.: IPR2014-00571
`Attorney Docket No.: FPGP0101IPR2
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`motor mode “to highway cruising” engine mode when it senses “a continued operator
`
`request for more acceleration.” (Ex. 1001 at 36:27-32.) Like Severinsky ’970, the ’347
`
`Patent transitions by starting the engine, and running both the motor and the engine.
`
`(Ex. 1201, 36:30-36.) Once “a desired cruising speed has been reached,” the “traction
`
`motor 25 is accordingly depowered.” (Ex. 1001 at 36:35-39; see also 29:65-30:8; Ex.
`
`1038; Ex. 1005 at ¶¶284-291.)
`
`Finally, the ’347 patent itself confirms that Severinsky ’970 teaches a hybrid
`
`vehicle that selects an operational mode “depending on the torque required.”
`
`Turning now to detailed discussion of the inventive control strategy
`
`according to which the hybrid vehicles of the invention are operated: as
`
`in the case of the hybrid vehicle system shown in the [Severinsky] ’970
`
`patent, and as discussed in further detail below, the vehicle of the
`
`invention is operated in different modes depending on the torque
`
`required, the state of charge of the batteries, and other variables[.]
`
`(Ex. 1001 at 35:5-11 (emphasis added).)3
`
`Contrary to Paice’s assertion, a POSA would understand that Severinsky ’970
`
`considers the instantaneous torque required to propel the vehicle for mode selection. Ford will
`
`address the disputed claim limitations in detail in Section III. But first, Ford will
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`3 Consistently, when Paice/Severinsky distinguished “speed”-based prior art in the
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`’347 patent, they did not mention the ’970 patent. (Ex. 1001 at 13:1-8.)
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`respond (in the following Section C.) to Paice’s assertions about the “speed” language
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`in Severinsky ’970.
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`C.
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`Paice’s reliance on Severinsky ’970’s use of “speed”
`language is misplaced where all agree, and a POSA would
`understand, that speed and torque can be proxies in that
`“higher vehicle speeds generally require more torque”
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`To support its position that Severinsky ’970 “explicitly states that it uses speed
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`as the one factor in determining when to employ the engine” (POR e.g. at 56,
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`emphasis added), Paice quotes Severinsky ’970 passages that describe operating the
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`motor in “low speed circumstances” and operating the engine at higher “highway
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`speeds” (POR at 18-19). But Severinsky ’970 uses these terms merely as descriptors
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`for relatively low or moderate load situations (no significant acceleration/hill
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`climbing) at lower/“city traffic” speeds (Ex. 1003 at 6:27-28 and 10:52-53) or higher
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`“steady state cruising on the highway” speeds (Ex. 1003 at 6:41 and 13:67). A POSA
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`would have readily understood that in such situations, lower speeds use the motor and
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`higher speeds use the engine because, as Paice itself acknowledges, “higher
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`vehicle speeds generally require more torque.” (POR at 39 (emphasis added); Ex.
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`1039, Hannemann Depo. at 101:17-102:2; see also Ex. 1038, Reply Decl. at ¶¶14-20.)
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`Indeed, the “torque-based” ’347 Patent likewise describes motor mode as “low-speed
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`operation, such as in city traffic” and engine mode as “highway cruising.” (Ex. 1001 at
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`35:66-67 and 36:26-31, Ex. 1038, Reply Decl. at ¶17.) Further, the provisional
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`application 09/10095, to which the ’347 Patent claims priority, more clearly states that
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`in “high-speed high way driving, where the internal-combustion engine can be
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`operated efficiently, it typically provides all torque. . .” (Ex. 1036 at 3, emphasis
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`added.)
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`Similarly, Severinsky ’970’s use of “speed-responsive” terminology does not
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`prove that Severinsky ’970 “uses speed as the one factor in determining when to
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`employ the engine.” (Ex. 1038, Reply Decl. at ¶¶18-19.) Severinsky ’970 is again
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`describing lower load (“moderate”/“suburban”) situations, where “higher vehicle
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`speeds generally require more torque.” (POR at 39; Ex. 1038, Reply Decl. at ¶¶18-19.)
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`Again, the ’347 Patent also describes hysteresis around a “road load” setpoint in
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`“suburban traffic” as “low-speed hysteresis.” (Ex. 1001 at 43:67-44:3.)
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`Even if Severinsky ’970 does disclose considering speed, that is irrelevant.
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`Severinsky ’970 also discloses using the instantaneous torque required to propel the vehicle for
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`mode selection, and in particular discloses the disputed limitations [23.8], [23.7] and
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`[23.1], as explained in the following section III.
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`III. A POSA would understand that Severinsky ’970 discloses the
`disputed limitations of claim 23
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`Paice challenges four limitations from claim 23.4 (POR at pp. 26, 43, 45, 50.)
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`4 In footnote 8, Paice says that Severinsky ’970 does not disclose limitations [23.5] and
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`[23.9] because Severinsky ’970 allegedly “does not consider road load at all.” As
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`explained in Section II, these arguments should be rejected because they depend on
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`Ford reproduces those limitations below in the same order challenged by Paice, adds
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`the limitation numbering from the Petition for consistency, and adds a shorthand
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`name, e.g., “engine limitation” for ease of reference.
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`[23.8] engine limitation: “employing said engine to propel said vehicle when the torque RL
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`required to do so is between said lower level SP and MTO.” (POR at 26.)
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`[23.7] motor limitation: “employing said at least one electric motor to propel said vehicle
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`when the torque RL required to do so is less than said lower level SP.” (POR at 43.)
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`[23.10] charging limitation: “employing said engine to propel said vehicle when the torque
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`RL required to do so is less than said lower level SP and using the torque between RL and
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`SP to drive said at least one electric motor to charge said battery when the state of charge of
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`said battery indicates the desirability of doing so.” (POR at 45.5)
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`[23.1] setpoint limitation6: “an internal combustion engine capable of efficiently producing
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`Paice/Hannemann improperly applying the Board’s instantaneous torque required to propel
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`the vehicle construction.
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`5 Paice does not quote all of limitation [23.10] in its heading on POR 45. Ford quotes
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`the entire limitation here because, as explained in Section III.B. below, the omitted
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`language is relevant to the analysis.
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`6 Paice does not identify a particular limitation when it argues that Severinsky ’970
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`does not disclose setpoint (see POR at 50-52), so Ford reproduces the first limitation of
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`claim 23 [23.1] where setpoint appears.
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`torque at loads between a lower level SP and a maximum torque output MTO.” (POR at
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`50.)
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`Because Ford focuses on the same Severinsky ’970 passages for limitations
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`[23.8], [23.7], and [23.1], Ford groups these in Section A, below. Ford addresses
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`limitation [23.10] in Section B.
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`A.
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`Severinsky ’970 teaches the engine [23.8], motor [23.7], and
`setpoint [23.1] limitations
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`Severinsky ’970 teaches limitations [23.8], [23.7], and [23.1]. The passages
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`quoted in Section II. B. above show that a POSA would have understood Severinsky
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`’970 teaches determining/considering the instantaneous torque required to propel the vehicle
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`in mode selection. Two additional passages further confirm that a POSA would have
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`understood Severinsky ’970 teaches limitations [23.8], [23.7], and [23.1] in particular.
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`The first passage (“Passage 1”) reads:
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`It will be appreciated that according to the invention the internal
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`combustion engine is run only in the near vicinity of its most efficient
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`operational point, that is, such that it produces 60-90% of its maximum
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`torque whenever operated.
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`(Ex. 1003 at 20:63-67, emphasis added.)
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`Passage 1 is significant because it states (1) that the engine should be run only
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`near its most efficient range, and (2) defines that most efficient range as 60-90% of its
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`maximum torque output (“MTO”). (Ex. 1005 at ¶¶201-202.) A second passage
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`(“Passage 2”) states:
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`When the engine can be used efficiently to drive the vehicle forward, e.g.
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`in highway cruising, it is so employed. Under other circumstances, e.g. in
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`traffic, the electric motor alone drives the vehicle forward and the
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`internal combustion engine is used only to charge the batteries as
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`needed.”
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`(Ex. 1003 at 7:11-16, emphasis added.)
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`Passage 2, read in context with Passage 1, expressly discloses the engine [23.8]
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`and motor [23.7] limitations. Passages 1 and 2 expressly state when to run the engine:
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`“when the engine can be used efficiently to drive the vehicle forward” – defined in
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`Passage 1 as times when “it produces 60-90% of its [MTO]” – “it is so employed.”
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`(Ex. 1005 at ¶¶272, 273, 274, 276-283.) And Passages 1 and 2 expressly state when to
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`run the motor: in “other circumstances,” i.e., “when the engine can[not] be used
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`efficiently” – defined in Passage 1 as times when it would produce less than 60% of
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`its MTO – the motor is used. (Ex. 1005 at ¶¶258-275, especially 261, 262, 272.)
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`Passage 1 also describes the setpoint limitation [23.1]. The Board construed
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`setpoint as a “predetermined torque value that may or may not be reset.” (Decision at
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`9.) Further, limitation [23.1] describes the setpoint SP as the lower bound of the
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`range where the engine is efficient: “an internal combustion engine capable of
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`efficiently producing torque at loads between a lower level SP and a maximum torque
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`output MTO.” (Ex. 1001 at 60:23-25.) Passage 1 describes this exact concept – a
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`predetermined torque value (60% of MTO) that defines the lower bound of efficient
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`engine operation:
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`It will be appreciated that according to the invention the internal
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`combustion engine is run only in the near vicinity of its most efficient
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`operational point, that is, such that it produces 60-90% of its maximum
`
`torque whenever operated.
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`(Ex. 1003 at 20:63-67, emphasis added; see also Ex. 1005 at 198-214, especially 201-
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`204.)
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`Paice accuses Ford of attempting to “recast” Severinsky ’970 “based on a few
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`selected statements taken out of context.” (POR at 12.) In fact, the inventor of the
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`’347 patent characterized “the invention of the [Severinsky] ’970 patent” just like
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`Ford:
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`According to an important aspect of the invention of the
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`[Severinsky] ’970 patent, substantially improved efficiency is afforded
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`by operating the internal comb