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 IPR2014-00579
`Patent 7,104,347
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`Patent No. 7,104,347
`Patent Owner Response
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`Case IPR2014-00579
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`Attorney Docket No: 36351-0011IP2
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1 
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`I. 
`
`II. 
`
`BACKGROUND OF THE PATENT OWNERS AND THIS
`PETITION ....................................................................................................... 3 
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`III.  CLAIM CONSTRUCTION ............................................................................ 5 
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`A. 
`
`B. 
`
`The District Courts’ Construction ......................................................... 6 
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`The Board should revise its construction of “setpoint
`(SP)” ...................................................................................................... 6 
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`1. 
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`2. 
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`“Setpoint” is used to mark a transition between
`operating modes .......................................................................... 7 
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`“Setpoint” is not “predetermined” and is not
`limited to torque values ............................................................. 11 
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`IV. 
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`INTRODUCTION TO THE PRIOR ART .................................................... 11 
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`V. 
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`THE ’347 PATENT IS NOT OBVIOUS OVER THE BUMBY
`REFERENCES .............................................................................................. 14 
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`A.  A POSITA would not have combined the Bumby
`references because Bumby 1988 and Masding teach away
`from the Bumby 1987 and Forster control algorithms ........................ 15 
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`B. 
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`The Bumby references do not disclose or suggest each
`limitation of the asserted claims. ......................................................... 21 
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`1. 
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`2. 
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`3. 
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`The Bumby references do not disclose or suggest
`the use of “setpoints (SP)” as required by claims 1,
`7, and 23 .................................................................................... 21 
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`The Bumby references do not disclose or suggest
`use of “road load” in claims 7 and 23 ....................................... 34 
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`The Bumby references do not disclose or suggest
`the “first electric motor” of claims 1 and 8 ............................... 37 
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`i
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`Case IPPR2014-000579
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`Patent NNo. 7,104,3347
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`Atttorney Doocket No: 336351-001
`1IP2
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`Patent OOwner Ressponse
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`4. 
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`or suggest t disclose onces do notThe Bummby referen
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`the batterry chargingg mode of f claim 1 orr 23 ............................
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`... 43 
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`a)
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`  The BBumby refferences doo not discloose the
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`battery chharging limmitation off claim 1 ...
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`..................................
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`... 46 
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`  The Bb) Bumby ref
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`ferences doo not discloose the
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`battery chharging limmitation off claim 23.
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` ..................................
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`... 51 
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`..................................................SION .........VI.  CCONCLUS
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`..................................
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`... 57 
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`ii
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`Patent No. 7,104,347
`Patent Owner Response
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`Case IPR2014-00579
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`Attorney Docket No: 36351-0011IP2
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`TABLE OF AUTHORITIES
`
`
`Cases 
`Fuji Photo Film Co. v. Int'l Trade Comm'n,
` 386 F.3d 1095 (Fed. Cir. 2004) ........................................................................... 11
`
`Page(s)
`
`
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
` 2013 Pat. App. LEXIS 5602 (July 31, 2013) ........................................................ 2
`
`
`In re Abbott Diabetes Care Inc.,
` 696 F.3d 1142 (Fed. Cir. 2012) ............................................................................. 7
`
`
`In re Giannelli,
` 739 F.3d 1375 (Fed. Cir. 2014) ........................................................................... 54
`
`
`In re Kahn,
` 441 F.3d 977, 988 (Fed. Cir. 2006) ....................................................................... 2
`
`
`In re Nilssen,
` 837 F.2d 1098 (Fed. Cir. 1987) ........................................................................... 16
`
`
`In re Vaidyanathan,
` 381 Fed. Appx. 985 (Fed. Cir. 2010) .................................................................... 7
`
`
`InTouch Technologies, Inc. v. VGO Commc'ns, Inc.,
` 751 F.3d 1327 (Fed. Cir. 2014) ........................................................................... 50
`
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
` 688 F.3d 1342 (Fed. Cir. 2012) ............................................................................. 2
`
`
`KSR Int’l Co. v. Teleflex Inc.,
` 550 U.S. 398 (2007) .............................................................................................. 1
`
`
`Paice LLC v. Hyundai Motor Co.,
` No. CIV. WDQ-12-0499, 2014 WL 3725652 (D. Md. July 24, 2014) ................. 6
`
`
`Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc.,
` 183 F.3d 1347 (Fed. Cir. 1999) ........................................................................... 16
`iii
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`Patent No. 7,104,347
`Patent Owner Response
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`Case IPR2014-00579
`Attorney Docket No: 36351-0011IP2
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`UPDATED LIST OF EXHIBITS
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`Patent Owner
`Exhibit Number
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`Exhibit Description
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`PAICE Ex. 2101 Arbitration Agreement between Paice LLC and Ford Motor
`Company
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`PAICE Ex. 2102 Declaration of Neil Hannemann
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`PAICE Ex. 2103 Neil Hannemann CV
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`PAICE Ex. 2104 Masding, Philip Wilson (1988) “Some drive train control
`problems in hybrid i.c engine/battery electric vehicles,”
`Durham theses, Durham University.
`Bosch Handbook, 4th Edition (excerpts)
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`PAICE Ex. 2105
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`PAICE Ex. 2106 Gregory Davis Deposition Transcript (Jan. 13, 2015)
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`PAICE Ex. 2107 Davis, G. W., Hodges, G. L., and Madeka, F. C., "The
`Development and Performance of the AMPhibian Hybrid
`Electric Vehicle,” SAE Technical Publication 940337, 1994.
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`PAICE Ex. 2108
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`Paice v. Ford, C.A. No. 1:14-cv-00492-WDQ, Complaint
`(Feb. 19, 2014)
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`PAICE Ex. 2109 Griffith Hack Report
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`iv
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`Patent No. 7,104,347
`Patent Owner Response
`I.
`INTRODUCTION
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`Case IPR2014-00579
`Attorney Docket No: 36351-0011IP2
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`The Board instituted trial with respect to claims 1, 7, 8, 18, 21, 23, 37 of
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`U.S. Patent No. 7,104,347 (“the ’347 patent”) owned by Paice LLC and The Abell
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`Foundation (collectively, “Paice” or “Patent Owner”) in view of a Petition
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`requesting inter partes review filed by Ford Motor Company (“Ford”).1 The Board
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`instituted trial on the single ground (Ground I) presented in the Petition, namely
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`that the challenged claims were obvious in light of five different references related
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`only by sharing a common author.2 (09-30-2014 Initial Decision, p. 13). This
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`Response responds to the Petition, as informed and narrowed by the Board’s Initial
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`Decision. All challenged claims are patentable over the cited grounds for the
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`reasons set forth herein.
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`It is well-settled that “rejections on obviousness cannot be sustained by mere
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`conclusory statements; instead, there must be some articulated reasoning with
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`some rational underpinning to support the legal conclusion of obviousness.” KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
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`1 Notably, this is the second Petition filed by Ford on the ’347 patent. Rather than
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`present its best arguments and evidence, Ford has chosen to burden the Board and
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`Paice with multiple Petitions and multiple asserted grounds.
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`2 Ford refers to these references as Bumby I, II, III, IV, and V.
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`1
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`Case IPR2014-00579
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`Patent No. 7,104,347
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`Patent Owner Response
`977, 988 (Fed. Cir. 2006)). See also Kinetic Concepts, Inc. v. Smith & Nephew,
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`Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) (“Even if the references disclosed all of
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`the limitations of the asserted claims, which they do not, S & N still needed to
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`proffer evidence indicating why a person having ordinary skill in the art would
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`combine the references to arrive at the claimed invention.”). The Board’s decision
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`in Heart Failure Techs., LLC v. Cardiokinetix, Inc., 2013 Pat. App. LEXIS 5602,
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`at *10-11 (July 31, 2013), emphasizes this point. In Heart Failure Technologies,
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`the Board denied an IPR petition that proposed multiple combinations of
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`references. The Board stated:
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`The fact that Murphy, Khairkhahan, and Lane all concern
`human heart repair is not in itself sufficient rationale for making
`the combination. Many heart repair devices exist. That fact
`alone would not make it obvious to combine their features.
`Petitioner must show some reason why a person of ordinary
`skill in the art would have thought to combine particular
`available elements of knowledge, as evidenced by the prior art,
`to reach the claimed invention. See KSR Int’l Co. v. Teleflex,
`Inc., 550 U.S. 398, 418 (2007). This, the Petitioner has not
`done. That the references relied upon all relate to human heart
`repair does not amount to “some articulated reasoning with
`some rational underpinning to support the legal conclusion of
`obviousness.” See id. (internal quotations omitted).
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`Id. (emphasis in original).
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`2
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`Case IPR2014-00579
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`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP2
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`Patent Owner Response
`Ford’s arguments with regards to the ’347 patent are fundamentally flawed
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`for two reasons. First, Ford has articulated no rational reason to combine the five
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`different Bumby references, offering only conclusory statements and unfounded
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`assumptions; in fact, the Bumby references teach away from combining the control
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`algorithms in the earlier Bumby references with the hybrid vehicle topology
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`disclosed in the later references. Second, even if the Bumby references were
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`combined, they fail to disclose or suggest the topology or control strategy of the
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`claimed invention.
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`Therefore, for the reasons detailed more fully herein, the Board should
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`affirm the patentability of claims 1, 7, 8, 18, 21, 23, 37 of the ’347 patent.
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`II. BACKGROUND OF THE PATENT OWNERS AND THIS
`PETITION
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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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`3
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`Case IPR2014-00579
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`Patent No. 7,104,347
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`Patent Owner Response
`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 2108 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
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`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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`4
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`Case IPR2014-00579
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`Patent No. 7,104,347
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`Patent Owner Response
`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 2109.
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`III. CLAIM CONSTRUCTION
`Independent claim 1 requires “A hybrid vehicle, comprising … a controller
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`… wherein said controller starts and operates said engine when torque require[d] to
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`be produced by said engine to propel the vehicle and/or to drive either one or both
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`said electric motor(s) to charge said battery is at least equal to a setpoint (SP)
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`above which said engine torque is efficiently produced, and wherein the torque
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`produced by said engine when operated at said setpoint (SP) is substantially less
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`than the maximum torque output (MTO) of said engine.” Independent claim 23
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`similarly recites using setpoint (SP) in a method of controlling a hybrid vehicle,
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`including, “employing said at least one electric motor to propel said vehicle when
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`the torque RL required to do so is less than said lower level SP; employing said
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`engine to propel said vehicle when the torque RL required to do so is between said
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`lower level SP and MTO; employing both said at least one electric motor and said
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`engine to propel said vehicle when the torque RL required to do so is more than
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`MTO.”
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`In its Initial Decision, the Board construed the terms “road load (RL)” and
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`“setpoint (SP).” Initial Decision, pp. 7-8. While the Challenged Claims are
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`patentable under the Board’s construction of these terms, Patent Owner opposes
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`5
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`Case IPR2014-00579
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`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP2
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`Patent Owner Response
`the Board’s construction of “setpoint (SP)” and respectfully requests that the Board
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`revise its construction for the reasons set forth below.3
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`A. The District Courts’ Construction
`As an initial matter, Patent Owner notes that the Board’s construction of
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`“setpoint (SP)” is directly at odds with the construction adopted by two district
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`courts. The U.S. District Court for the Eastern District of Texas and the U.S.
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`District Court for the District of Maryland both have construed the term “setpoint
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`(SP)” to mean “a definite, but potentially variable value at which a transition
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`between operating modes may occur.”4 Judge Quarles of the District of Maryland
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`noted that “[Paice’s] proposed construction of “setpoint’ … is consistent with the
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`language of the claims and the intrinsic evidence.”5
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`The Board should revise its construction of “setpoint (SP)”
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`B.
`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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`3 These arguments are also presented in Patent Owner’s Response in IPR2014-
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`00571.
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`4 Ex. 1112; Ex. 1115; Paice LLC v. Hyundai Motor Co., No. CIV. WDQ-12-0499,
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`2014 WL 3725652 (D. Md. July 24, 2014).
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`5 Paice LLC v. Hyundai Motor Co., 2014 WL 3725652 at *8.
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`6
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`Case IPR2014-00579
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`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP2
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`Patent Owner Response
`different operating modes may occur; (2) it reads in the additional and redundant
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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 clear, reversible error. See In re Abbott Diabetes Care Inc.,
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`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
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`the
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`invention as described
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`in
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`the specification. 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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`1.
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`“Setpoint” is used to mark a transition between operating
`modes
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`7
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`Case IPR2014-00579
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`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP2
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`Patent Owner Response
`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.6 However, it is clear from the claims
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`and the specification that a “setpoint” is not simply a numerical value divorced
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`from the context of the rest of the control system. Rather, “setpoint” serves the
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`crucial function of marking the transition from one claimed mode to another and,
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`in particular, the transition from propelling the vehicle with the motor to propelling
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`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 ’347 Patent at claims 1, 7, 23. Dependent
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`claim 3 similarly recites “…wherein said controller monitors the road load (RL) on
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`the vehicle over time, and controls transition between propulsion of said vehicle
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`6 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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`8
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`Case IPR2014-00579
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`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP2
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`Patent Owner Response
`by said motor(s) to propulsion by said engine responsive to RL reaching SP, …”
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`See ’347 Patent at claim 3 (emphasis added); see also id. at claim 25.
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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 ’347 Patent 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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`9
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`Case IPR2014-00579
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`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP2
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`Patent Owner Response
`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 “setpoint” robs the remaining “mode”
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`limitations of one of the key aspects of the invention, which is the significant
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`efficiencies to be gained by transitioning between motor propulsion to engine
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`propulsion in response to “road load.” See e.g. ’347 Patent at 13:39-46 (“By
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`comparison … the vehicle’s operating mode-that is, the selection of the source of
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`torque needed to propel the vehicle-is determined based on the amount of torque
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`actually required. In this way the proper combination of engine, traction motor, and
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`starting motor is always available. This apparently simple point has evidently been
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`missed entirely by the art.”); see also id. at col. 39:47-65 (noting that prior art
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`references using vehicle speed to transition between modes “inherently operate the
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`engine under less efficient conditions”).
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`10
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`Case IPR2014-00579
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`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP2
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`Patent Owner Response
`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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`2.
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`“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.
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`While Patent Owner disagrees with the Board’s construction of “setpoint,”
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`the Challenged Claims are patentable under either construction and Patent Owner
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`applies the Board’s constructions in its arguments below unless explicitly stated
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`otherwise.
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`INTRODUCTION TO THE PRIOR ART
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`IV.
`The prior art explored a large number of unsuccessful approaches to control
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`sources of motive force needed to propel a hybrid vehicle (i.e. the mode of vehicle
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`Case IPR2014-00579
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`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP2
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`Patent Owner Response
`operation). Compared to the ’347 patent however, the prior art used a variety of
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`inefficient, costly, and ultimately ineffective metrics to make mode switching
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`determinations, including most commonly vehicle speed or bare pedal position.
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`See ’347 patent at col. 4:42-57, 13:1-17, 13:66-14:27, 14:66-15:15 (describing
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`various prior art control systems). As noted in the ’347 patent, these prior systems
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`failed to understand that the “vehicle operational mode should preferably be
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`controlled in response to the vehicle's actual torque requirements, i.e., the road
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`load,” which provides “superior performance, in terms of both vehicle response to
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`operator commands and fuel efficiency, under the widely varying conditions
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`encountered in ‘real world’ driving situations.” See ’347 patent at col. 13:11-17.
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`Additionally, this failure to recognize the benefits of using “road load” to select the
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`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 various Bumby references are no different, disclosing a control system
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`that uses demand power set by bare pedal position and a cumbersome gear ratio
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`selection system to make mode changing decisions. See Ex. 2102 at ¶¶ 37-61.
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`“Optimisation and Control of a Hybrid Electric Car,” J.R. Bumby, I. Forster, Nov.
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`Patent No. 7,104,347
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`Patent Owner Response
`1987 (“Bumby 1987”)7 and “A Hybrid Internal Combustion Engine/Battery
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`Electric Passenger Car for petroleum Displacement,” I. Forster, J.R. Bumby, Jan.
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`1988 (“Forster”)8 disclose a “sub-optimal” control algorithm that, like certain of
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`the prior art discussed above, uses pedal position and vehicle speed to match driver
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`demand power to the power outputs available at different gear ratios.9 See Ex. 2102
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`at ¶¶ 41-53. The other Bumby references, “A Test-Bed Facility for Hybrid I.C.
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`Engine/Battery-Electric Road Vehicle drive Trains,” J.R. Bumby, P.W. Masding,
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`Apr. 1988 (“Bumby 1988”)10 and “Integrated Microprocessor Control of a Hybrid
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`i.c. Engine/Battery-Electric Automotive Power Train,” P.W. Masding, J.R. Bumby,
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`Jan. 1990 (“Masding”)11 disclose a “test bed” hybrid vehicle that, like much of the
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`7 Ford refers to this reference as “Bumby II.”
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`8 Ford refers to this reference as “Bumby III.”
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`9 “Computer Modeling of the Automotive Energy Requirements for Internal
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`Combustion Engine and Battery Electric-Powered Vehicles,” J.R. Bumby, H.
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`Clarke, I. Forster, Sep. 1985 (“Clarke”), which Ford refers to as “Bumby I” is
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`directed to computer simulations of various vehicles, with no disclosure of hybrid
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`topologies or control algorithms. See Ex. 2102 at ¶¶ 37-40.
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`10 Ford refers to this reference as “Bumby IV.”
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`11 Ford refers to this reference as “Bumby V.”
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`Case IPR2014-00579
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`Patent No. 7,104,347
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`Patent Owner Response
`prior art, uses a vehicle-speed algorithm to control hybrid mode switching. See Ex.
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`2102 at ¶¶ 54-61. Ford’s Bumby prior art is at best a way to make a speed based
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`system more efficient through a complicated transmission control approach. The
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`system makes repeated calculations to shift gears around to improve engine
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`efficiency. The Bumby approach falls well short of the elegant “road load”
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`system of the ’347 claims.
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`The ’347 patent succeeded where the Bumby references and others failed by
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`arriving at a sophisticated control strategy that measured and evaluated the road
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`load with respect to certain setpoints. While the concept of “road load” may have
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`been understood as an academic concept, the prior art failed to appreciate that road
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`load could be calculated and used to make decisions about mode switching in an
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`actual hybrid vehicle by comparing the road load to setpoints and other values.
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`Despite Ford’s arguments to the contrary, this claimed control strategy is absent
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`from any Bumby reference.
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`V. THE ’347 PATENT IS NOT OBVIOUS OVER THE BUMBY
`REFERENCES
`Ground I is defective: a person of ordinary skill in the art12 would not have
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`combined the Bumby references as proposed in the Petition because the references
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`12 The level of skill in the art is defined in the declaration of Mr. Hannemann. Ex.
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`2001 at ¶ 26. However, the differences between the level of skill described by Mr.
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`Patent No. 7,104,347
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`Patent Owner Response
`themselves are
`incomplete and actually
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`Case IPR2014-00579
`Attorney Docket No: 36351-0011IP2
`teach away from
`the proposed
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`combinations. Indeed, Ford’s asserted reasons for making the combinations are
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`directly undercut by the actual teachings of the references as a whole and by its
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`expert’s admissions at deposition. But even if a person of ordinary skill in the art
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`combined the references as proposed in the Petition, the resulting combination
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`would not include all the features of the claimed invention.
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`A. A POSITA would not have combined the Bumby references
`because Bumby 1988 and Masding teach away from the
`Bumby 1987 and Forster control algorithms
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`It is axiomatic that in an obviousness analysis, there must be a reason,
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`suggestion, or motivation in the prior art that would lead one of ordinary skill in
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`the art to combine the references, and that would also suggest a reasonable
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`likelihood of success. See Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc., 183
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`F.3d 1347, 1356 (Fed. Cir. 1999). However, the only reasons Ford presents to
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`justify
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`the combination of five different references (written by varying
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`combinations of four different authors over the course of five years, in three
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`different journals), is that the articles share a common author and cite to each
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`other. See Petition at 28-31. The mere fact that a publication refers to other
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`Cont’d
`Hannemann and Dr. Davis do not affect the outcome of the obviousness
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`determination.
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`Patent No. 7,104,347
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`Patent Owner Response
`publications written by a similar group of authors, much less a common single
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`author, provides no justification for combining the technology of the various
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`references. See In re Nilssen, 837 F.2d 1098 (Fed. Cir. 1987) (noting that technical
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`reasons to combine references control the obviousness determination). Even Ford’s
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`expert Dr. Davis agrees that having a common author does not mean papers are
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`directed to the same project. See Davis Tr. at 197:20-23 (“Q: And the fact that you
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`are listed as an author on each of these doesn’t mean it’s all part of one project,
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`right? Dr. Davis: Oh, of course not necessarily, no.”).
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`Fords’ failure to provide a specific technical reason to combine is
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`particularly significant here where the references themselves teach away from the
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`combination proposed by Ford. A person of ordinary skill in the art would not have
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`combined the control algorithms taught by Bumby 1987 and Forster with the “test
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`rig” disclosed in Bumby 1988 and Masding, because the latter Bumby references
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`teach away from using the former references’ control algorithm.13 As an initial
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`13 The Clarke reference is not addressed in this section because Clarke is cited by
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`Ford only once in its claim analysis for the alleged disclosure of the variable ratio
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`transmission of dependent claim 8. See Petition at 49. Dr. Davis does not cite to
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`Clarke for his analysis of any claim element, but merely uses it as an “introduction
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`to the subject matter.” See Davis Tr. at 204:9-13 (“Q: Do you recall relying on Mr.
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`Patent Owner Response
`matter, Bumby 1988 (published only months after Forster) discloses no control
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`algorithm at all, merely stating that “[w]ork is continuing in development of …
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`mode control algorithms and it is hoped to report on these at a later date.” Ford Ex.
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`1106 at 10. Masding, published two years later, discloses a “test rig” that uses
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`vehicle speed to determine the mode: “an arbitrary speed-based mode controller
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`was used to decide when to switch between all electric, all-i.c.-engine and hybrid
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`modes of operation. In addition, gear shifting occurs at fixed speeds.” See Ford Ex.
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`1107 at 19 (emphasis added). Thus, contrary to Dr. Davis’s compl