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.: IPR2014-00579
`
`______________
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1, 7, 8, 18, 21, 23 AND 37 OF U.S. PATENT NO. 7,104,347)
`
`
`
`
`

`

`
`
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ........................................................................................................ iii
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1
`
`A.
`B.
`C.
`D.
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1) ..................................... 1
`Related Matters - 37 C.F.R. § 42.8(b)(2) .............................................. 1
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 2
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104 ............................................ 2
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a) ...................................... 2
`B.
`Challenged Claims - 37 C.F.R. §§ 42.104(b)(1) ................................... 3
`C.
`Grounds of Challenge – 37 C.F.R. §42.104(b)(2) ................................ 3
`
`IV. PERSON OF ORDINARY SKILL IN THE ART .......................................... 3
`
`V.
`
`STATE OF THE ART ..................................................................................... 4
`
`VI. OVERVIEW OF THE ’347 PATENT ............................................................ 6
`
`A.
`B.
`C.
`
`Prosecution History of the ’347 Patent ................................................. 6
`Purported Improvement of the ’347 Patent ........................................... 7
`Independent Claims 1 and 23 ................................................................ 9
`
`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104(B)(3) ............................12
`
`A.
`
`B.
`C.
`
`“road load (RL),” “RL” and “instantaneous torque RL required
`to propel said vehicle” (Claims 7 & 23) ..............................................13
`“SP,” “Setpoint (SP)” (Claims 1, 7 & 23) ...........................................14
`“low-load mode I,” “highway cruising mode IV,” “acceleration
`mode V” (Claims 7 & 8) .....................................................................16
`
`VIII. UNPATENTABILITY GROUND ................................................................17
`
`Ground 1. Claims 1, 7, 8, 18, 21, 23 and 37 are Rendered Obvious by
`Bumby I in view of Bumby II in further view of Bumby III in
`further view of Bumby IV in further view of Bumby V .....................18
`
`A. Overview of the “Bumby Project” ......................................................18
`B.
`Reasons to Combine ............................................................................28
`C.
`Analysis of Claims ..............................................................................31
`Claim 1 ................................................................................................31
`
`
`
`
`
`
`i
`
`

`

`
`
`
`
`
`
`
`Claim 7 ................................................................................................39
`Claim 8. ...............................................................................................48
`Claim 18. .............................................................................................49
`Claim 21. .............................................................................................49
`Claim 23 ..............................................................................................49
`Claim 37. .............................................................................................59
`
`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS ......................................59
`
`X.
`
`CONCLUSION ..............................................................................................60
`
`CERTIFICATE OF SERVICE ................................................................................61
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`EXHIBIT LIST
`
`
`
`Exhibit
`No.
`1101
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`1109
`
`Description
`U.S. Patent No. 7,104,347
`’347 Patent File History
`
`Bumby, J.R. et al. “Computer
`modelling of the automotive energy
`requirements for internal
`combustion engine and battery
`electric-powered vehicles” - IEE
`Proc. A 1985(5)
`Bumby, J.R. et al. “Optimisation
`and control of a hybrid electric car”
`- IEE Proc. A 1987, 134(6)
`Bumby, J.R. et al. “A Hybrid
`Internal Combustion
`Engine/Battery Electric Passenger
`Car for Petroleum Displacement” –
`Proc Instn Mech Engrs Volume
`202 (D1), 51-65
`Bumby, J.R. et al. “A Test-Bed
`Facility for Hybrid IC Engine-
`Battery Electric Road Vehicle
`Drive Trains” - Trans Inst Meas &
`Cont 1988 Vol. 10(2)
`Bumby, J.R. et al. “Integrated
`Microprocessor Control of a
`Hybrid i.c. Engine/Battery-Electric
`Automotive Power Train” - Trans
`Inst Meas & Cont 1990 Vol.
`12:128
`Declaration of Gregory W. Davis
`U.S. Patent Trial and Appeal Board
`January 3, 2014 Decision (Appeal
`No. 2011-004811)
`
`
`
`
`
`iii
`
`Date
`
`n/a
`n/a
`
`Sept. 1985
`
`Identifier
`The ’347 Patent
`’347 Patent File
`History
`Bumby I
`
`Nov. 1987
`
`Bumby II
`
`Jan. 1988
`
`Bumby III
`
`Apr. 1, 1988
`
`Bumby IV
`
`Jan. 1, 1990
`
`Bumby V
`
`
`Jan. 3, 2014
`
`
`n/a
`
`

`

`Exhibit
`No.
`1110
`
`1111
`
`1112
`
`1113
`
`1114
`
`1115
`
`1116
`
`1117
`
`1118
`1119
`
`1120
`1121
`1122
`
`1123
`1124
`
`1125
`
`Description
`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)
`Curriculum Vitae of Gregory Davis
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`1996 Future Car Challenge
`1997 Future Car Challenge
`History of the Electric Automobile
`– Hybrid Electric Vehicles
`Hybrid Vehicle for Fuel Economy
`Hybrid/Electric Vehicle Design
`Options and Evaluations
`Challenges for the Vehicle Tester
`in Characterizing Hybrid Electric
`Vehicles
`
`
`
`
`
`iv
`
`Date
`March 8, 2005
`
`Identifier
`
`
`
`Mar. 29, 2005
`
`Sept. 28, 2005
`
`June 25, 2008
`
`Aug. 1, 2008
`
`Dec. 5, 2008
`
`Nov. 14, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dec. 16, 2013
`
`
`
`
`Feb. 1994
`
`Declaration Ex.
`Declaration Ex.
`
`Feb. 1997
`Feb. 1998
`1998
`
`Declaration Ex.
`Declaration Ex.
`Declaration Ex.
`
`
`Feb. 24-28,
`1992
`April 9-11,
`1997
`
`Declaration Ex.
`Declaration Ex.
`
`Declaration Ex.
`
`

`

`Exhibit
`No.
`1126
`
`1127
`
`1128
`
`1129
`
`1130
`
`1131
`
`1132
`
`1133
`
`1134
`1135
`
`1136
`1137
`
`1138
`
`1139
`
`
`
`
`
`Date
`April 1995
`
`Feb. 1998
`
`Feb. 1996
`
`Identifier
`Declaration Ex.
`
`Declaration Ex.
`
`Declaration Ex.
`
`Sept. 30, 1979 Declaration Ex.
`
`June 1, 1971 Declaration Ex.
`
`Sept. 1, 1988 Declaration Ex.
`
`1996
`
`Feb. 1997
`
`Oct. 1996
`Feb. 1995
`
`Declaration Ex.
`
`Declaration Ex.
`
`Declaration Ex.
`Declaration Ex.
`
`Apr. 3, 2001 Declaration Ex.
`
`Declaration Ex.
`
`Description
`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
`60/100095 Provisional Application Filed Sept. 11,
`1998
`
`Jan. 1998
`
`Declaration Ex.
`
`Declaration Ex.
`
`
`
`v
`
`

`

`I.
`
`INTRODUCTION
`
`The Petitioner Ford Motor Company respectfully requests inter partes
`
`review of claims 1, 7, 8, 18, 21, 23 and 37 of U.S. Patent No. 7,104,347 (“the ’347
`
`Patent”; attached as Ex. 1101) in accordance with 35 U.S.C. §§ 311–319 and 37
`
`C.F.R. § 42.100 et seq.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`
`Petitioner certifies that Ford Motor Company (“Petitioner”) is the real party-
`
`in-interest.
`
`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`
`Petitioner identifies the following judicial matter: Paice, LLC et al., Inc. v.
`
`Ford Motor Company, Case Number 1-14-cv-00492 (“Related Litigation”). The
`
`complaint in the Related Litigation was filed on February 19, 2014 in the District
`
`of Maryland, Baltimore Division. The ’347 patent is being asserted in this
`
`proceeding along with four other patents.
`
`Petitioner also states that it is aware that the ’347 patent is being asserted in
`
`Paice LLC et al. v. Hyundai Motor America, et al., Case Number 1:2012cv00499,
`
`District of Maryland, Baltimore Division (hereinafter, “the Hyundai Litigation”).
`
`The complaint in the Hyundai Litigation was filed on February 16, 2012.
`
`Concurrently filed related petitions include: IPR2014-00570, IPR2014-
`
`
`
`
`
`1
`
`

`

`00568 and IPR2014-00571. This Petition is not redundant to concurrently filed
`
`petitions related to the ’347 Patent as each petition addresses different claims.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Ford appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman P.C.
`
`as lead counsel, and appoints John E. Nemazi (Reg. No. 30,876), John P. Rondini
`
`(Reg. No. 64,949) and Erin K. Bowles (Reg. No. 64,705) of Brooks Kushman P.C.,
`
`as well as Lissi Mojica (Reg. No. 64,121) and Kevin Greenleaf (Reg. No. 64,062)
`
`of Dentons US LLP, as back-up counsel. An appropriate Power of Attorney is
`
`filed concurrently herewith.
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made via
`
`hand-delivery to Brooks Kushman P.C., 1000 Town Center, Twenty-Second Floor,
`
`Southfield, Michigan 48075 and Denton US LLP, 1530 Page Mill Road; Suite 200,
`
`Palo Alto, California 94304-1125. Petitioner consents to service by email at
`
`FPGP0101IPR3@brookskushman.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com, and iptdocketchi@dentons.com.
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’347 Patent is available for inter partes review
`
`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`
`
`
`
`2
`
`

`

`for the patent claims on the grounds identified in this Petition.
`
`B. Challenged Claims - 37 C.F.R. §§ 42.104(b)(1)
`
`Petitioner requests inter partes review for claims 1, 7, 8, 18, 21, 23 and 37 of
`
`the ’347 Patent and requests that the Patent Trial and Appeal Board (“PTAB”)
`
`cancel those claims as unpatentable.
`
`C. Grounds of Challenge – 37 C.F.R. §42.104(b)(2)
`
`There is a single ground of unpatentability presented in this petition is that
`
`claims 1, 7, 8, 18, 21, 23 and 37 are obvious under 35 U.S.C. § 103 by Bumby I in
`
`view of Bumby II in further view of Bumby III in further view of Bumby IV in
`
`further view of Bumby V. (Exs. 1103-1107.)
`
`The unpatentability ground set forth in this Petition is confirmed and
`
`supported by the declaration of Dr. Gregory W. Davis (“Davis” at Ex. 1108).
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the art is evidenced by the references. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A person of ordinary skill in the
`
`art would have had either: (1) a graduate degree in mechanical, electrical or
`
`automotive engineering with at least some experience in the design and control of
`
`combustion engines, electric or hybrid electric vehicle propulsion systems, or
`
`design and control of automotive transmissions, or (2) a bachelor's degree in
`
`mechanical, electrical or automotive engineering and at least five years of
`
`
`
`
`
`3
`
`

`

`experience in the design and control of combustion engines, electric vehicle
`
`propulsion systems, or automotive transmissions. (Ex. 1108, Davis ¶¶41-42, see
`
`also ¶¶5-37.)
`
`V.
`
`STATE OF THE ART
`
`Hybrid vehicles date back over 100 years to the infancy of the automobile.
`
`(Ex. 1108, Davis ¶¶43-47.) Over this time span, numerous hybrid architectures had
`
`been examined to achieve design “goals” that included efficient engine operation,
`
`improved fuel economy and reduced emissions. (Ex. 1108, Davis ¶48.)
`
`By September 1998, the development of the hybrid vehicle had advanced to
`
`a state where numerous different hybrid vehicle architectures were generally
`
`known and had even been successfully built and tested on public roads. (Ex. 1108,
`
`Davis ¶¶49-60.) These hybrid vehicle architectures typically employed electric
`
`motors to maintain operation of the internal combustion engine within the engine’s
`
`most efficient operating region, commonly referred as the engine’s “sweet spot.”
`
`(Ex. 1108, Davis ¶¶59, 108-133.) Some hybrid vehicles could accomplish efficient
`
`engine operation by employing “one-motor” architectures while other designs
`
`found operational benefits by employing “two-motor” architectures. (Ex. 1105,
`
`Davis, See discussion regarding “series” hybrid vehicles at ¶¶61-69; and “parallel”
`
`hybrid vehicles at ¶¶70-107.)
`
`It was known before September 1998 that engines in conventional vehicles
`
`
`
`
`
`4
`
`

`

`operate inefficiently at low torque loads and vehicle speeds. (Ex. 1108, Davis
`
`¶¶108-123, 125-126.) Hybrid vehicles could overcome the inefficiency of
`
`conventional vehicles by including a motor (i.e., “traction motor”) with sufficient
`
`power to propel the vehicle at low speeds and low loads. (Ex. 1108, Davis ¶¶108-
`
`125.) By using a powerful enough motor, hybrid vehicles could restrict engine
`
`operation solely to areas of high efficiency. (Ex. 1108, Davis ¶¶59, 108-125.) As
`
`the vehicle speed and load increased, operation of the engine was permitted when
`
`the speed and load were determined to be in a region where engine torque is most
`
`efficiently produced—i.e., the engine’s “sweet spot.” (Ex. 1108, Davis ¶¶59, 109-
`
`133.)
`
`For hybrid vehicles it was further known prior to September 1998 that
`
`engine operation could be restricted to its “sweet spot” using a control strategy that
`
`typically included: (1) an all-electric mode where only the motor propels the
`
`vehicle when engine operation is inefficient (i.e., at low loads or vehicle speeds);
`
`(2) an engine-only mode where the engine propels the vehicle when engine
`
`operation is efficient, such as highway cruising at higher speeds; (3) a recharge
`
`mode where the vehicle operates a generator to provide electrical energy to
`
`recharge the battery; and (4) an acceleration mode where the both engine and
`
`motor are used to propel the vehicle when the demand is beyond the maximum
`
`torque capabilities of the engine, such as during acceleration, passing, hill-
`
`
`
`
`
`5
`
`

`

`climbing. (Ex. 1108, Davis ¶¶84, 124-131.)
`
`VI. OVERVIEW OF THE ’347 PATENT
`
`The ’347 Patent is a divisional in a patent family chain that ultimately claims
`
`priority back to two separate Provisional Applications—Provisional Application
`
`No. 60/100,095 (“the ’095 application”), filed September 14, 1998, and 60/122,296
`
`(“the ’296 application”), filed March 1, 1999. (Ex. 1101; Ex. 1102 at 2.) For
`
`reference, the relevant portions of the ’347 Patent family chain is illustrated below.
`
`
`
`A.
`
`Prosecution History of the ’347 Patent
`
`The ’347 Patent issued from Application No. 10/382,577 and received only
`
`one Office Action with “non-final” rejections. (Ex. 1102 at 387-393.) The Patentee
`
`amended the clams to correct some 35 U.S.C. § 112 rejections or to correct claim
`
`numbering. In response to prior art rejections, the Patentee also amended claims 82
`
`and 104 (issued independent claims 1 and 23 of the ’347 Patent) to include the
`
`following limitation:
`
`
`
`
`
`6
`
`

`

`and wherein the torque produced by said engine when operated at said
`
`setpoint (SP) is substantially less than the maximum torque output
`
`(MTO) of said engine.
`
`(Ex. 1102 at 431-432 and 437-438.)
`
`Subsequent to the Patentee’s amendment of the claims, a first notice of
`
`allowance was issued on April 21, 2005. (Ex. 1102 at 699-702.) After receiving
`
`this allowance, the Patentee paid the issue fee and concurrently submitted
`
`numerous prior art references produced by Toyota during contemporaneous
`
`patent litigation. (Ex. 1102 at 708-711.) On January 19, 2006, the Patentee further
`
`filed a petition to withdraw the application from issuance and submitted additional
`
`prior art references presented during the litigation with Toyota. (Ex. 1102 at 1089-
`
`1091 and 1093-1103.)
`
`On July 11, 2006, a subsequent notice of allowance was issued without any
`
`additional rejections based on the numerous prior art references provided by the
`
`Patentee after the first notice of allowance. The ’347 Patent subsequently issued
`
`on September 12, 2006. (Ex. 1102 at 1211-1212.)
`
`B.
`
`Purported Improvement of the ’347 Patent
`
`The ’347 Patent purports to identify “a new ‘topology’ for a hybrid vehicle”
`
`that requires “a first electric ’starting’ motor” and “[a] second ’traction’ motor []
`
`
`
`
`
`7
`
`

`

`directly connected to the wheels to propel the vehicle.” (Ex. 1101 at 11:49-59.)1
`
`The ’347 Patent also purports to identify a new control strategy that operates the
`
`engine, traction motor, and starter motor “in accordance with the vehicle’s
`
`instantaneous torque demands so that the engine is run only under conditions of
`
`high efficiency.” (Ex. 1101 at 1-Abstract.)
`
`Specifically, the ’347 Patent states that the control strategy operates “the
`
`internal combustion engine only under circumstances providing a significant load,
`
`thus ensuring efficient operation.” (Ex. 1101 at 41:11-14; See also 19:36-41 &
`
`20:52-60.) The ’347 Patent states that such efficient engine operation is
`
`accomplished using a set of operating modes that determine when to operate the
`
`engine or motors “depending on the torque required, the state of charge of the
`
`battery and other variables.” (Ex. 1101 at 35:5-11.) Specifically, the ’347 Patent
`
`discloses: (1) operating the traction motor to provide “the torque required to propel
`
`the vehicle” when engine torque would be inefficiently produced (i.e., “mode I”);
`
`(2) operating the engine to provide “the torque required to propel the vehicle”
`
`when engine torque is efficiently produced (i.e., “mode IV”); (3) operating both the
`
`engine and motor when the “torque required to propel the vehicle” is above the
`
`maximum operating torque of the engine (i.e., “mode V”). (Ex. 1101 at 35:66-36:4;
`
`
`1 “Topology” is a term used by the ’347 Patent to describe a vehicle architecture or
`
`vehicle configuration. (Ex. 1105, Davis ¶56 and ¶135).
`
`
`
`
`
`8
`
`

`

`36:23-46; Figs. 8(a), (c), (d).)2
`
`As discussed in the “State of the Art” above, however, known prior art
`
`hybrid vehicles controlled the motor to propel the vehicle at low speeds and loads
`
`so that engine operation is restricted to a region where engine torque is most
`
`efficiently produced—a region that is commonly referred to as the engine’s “sweet
`
`spot.” Indeed, using operational modes based on the torque required to propel the
`
`vehicle was well-known and extensively documented by the Bumby publications
`
`more than a decade before the ’347 Patent was filed as discussed in the
`
`Petitioner’s unpatentability ground below. 3
`
`C.
`
`Independent Claims 1 and 23
`
`Claim 1 of the ’347 Patent is directed to a “hybrid vehicle.” Claim 1 further
`
`
`2 These operational “modes” were also summarized by the Patentee during a prior
`
`claim construction briefing. (Ex. 1013 at 13-14).
`
`3 In a co-pending petition, the Petitioner asserts that the efficient control strategy of
`
`the Patentee’s earlier U.S. Patent No. 5,343,970 was identified as operable to
`
`control the hybrid vehicle disclosed by the ’347 Patent. Specifically, the ’347
`
`Patent states “the inventive control strategy according to which the hybrid vehicles
`
`of the invention are operated” is the same “as in the case of the hybrid vehicle
`
`system shown in the ’970 patent.” (Ex. 1101 at 35:5-11).
`
`
`
`
`
`9
`
`

`

`recites an “internal combustion engine,” “first motor,” and “second motor.” 4 The
`
`“internal combustion engine” is recited as being “controllably coupled” to the road
`
`wheels. The “first motor” is “operable to start the engine responsive to a control
`
`signal.” The “second motor” is “connected to the wheels … and operable as a
`
`motor … to propel the vehicle … and as a generator … for generating current.” A
`
`“battery” is also recited as “providing current to said motors” and receiving a
`
`“charging current from at least the second motor.”5
`
`Claim 1 specifically pertains to controlling these components such that
`
`“engine torque is efficiently produced.” In particular, claim 1 recites a “controller”
`
`that starts and operates the engine when the engine can be efficiently operated.
`
`Claim 1 further recites that the engine is started and operated in order to perform
`
`the following elements:6
`
`Element A - start[] and operate[] said engine when torque require to be
`
`produced by said engine to propel the vehicle … is at least equal to a
`
`
`4 In this Petition, quoted claim language is italicized for easy reference. Petitioner
`
`will occasionally add boldface to certain claim language for emphasis.
`
`5 The “first motor” is therefore not required to provide a charging current (i.e.,
`
`operate as a generator).
`
`6 Claim 1 uses an “and/or” modifier which is properly construed as “Element A
`
`alone,” “Element B alone,” or “Elements A and B taken together.” (Ex. 1109 at 4).
`
`
`
`
`
`10
`
`

`

`setpoint (SP) above which said engine torque is efficiently produced…
`
`Element A - start[] and operate[] said engine when torque require to be
`
`produced by said engine to … drive either one or both said electric
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`motor(s) to charge said battery is at least equal to a setpoint (SP) above
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`which said engine torque is efficiently produced…
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`Claim 1 also states that the recited “setpoint (SP)” is a value that is
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`“substantially less than the maximum torque output (MTO) of the engine.”
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`Claim 23 is directed to the efficient control of a hybrid vehicle. The
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`preamble of claim 23 provides the structure of the recited hybrid vehicle being
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`controlled. Like claim 1, claim 23 requires an “internal combustion engine capable
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`of efficiently producing torque at loads between a lower level [setpoint] and a
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`maximum torque output MTO” and a “battery.” Unlike claim 1, however, claim 23
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`does not require two motors. Claim 23 simply requires “one or more electric
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`motors being capable of providing output torque … and of generating electric
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`current.”
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`In order to determine the proper mode of operation of the vehicle the
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`claimed method first “determin[es] the instantaneous torque RL required to propel
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`the vehicle responsive to an operator command” and “monitor[s] the state of
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`charge of the battery.” Based on these values, the hybrid vehicle is operated
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`according to one of the following operational modes:
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`1. Propelling the vehicle using the motor when “torque RL required to do so is
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`less than said lower level [setpoint].”
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`2. Propelling the vehicle using the engine when “the torque RL required to do
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`so is between said lower level SP and MTO.”
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`3. Propelling the vehicle using the engine and motor “when the torque RL
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`required to do so is more than MTO.”
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`4. Propelling the vehicle using the engine “when the torque RL required to do
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`so is less than [setpoint].” Although this equality (i.e., RL<SP) should result
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`in motor operation, the “state of charge of said battery” has decreased to a
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`value that the battery must be charged before the motor can be used again to
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`propel the vehicle. In order to recharge the battery back to a proper voltage
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`level, the claim recites that the engine will use “the torque between RL and
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`SP” to drive the motor as a generator in order “to charge said battery.”
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`Claim 23 also recites that the “setpoint (SP)” is a value “substantially less
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`than the maximum torque output (MTO) of the engine.”
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`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104(B)(3)
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`For purposes of this IPR, a claim is interpreted by applying its “broadest
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`reasonable construction.” 37 C.F.R. § 42.100(b).
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`Certain terms recited in the claims of the ’347 Patent were argued by the
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`Patentee with respect to other patents in the ’347 Patent family chain, namely U.S.
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`
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`Patent Nos. 6,209,672 and 6,554,088, and construed by a court in the Eastern
`
`District of Texas with respect to the ’672 Patent and ’088 Patent in the prior Paice
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`LLC v. Toyota Motor Corp. et al., Case No. 2:04-cv-211, on September 28, 2005.
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`(Ex. 1110; Ex. 1111; Ex. 1112.)
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`Certain terms recited in the claims of the ’347 Patent and ’634 Patent were
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`also argued by the Patentee and construed by the same Texas court in Paice LLC v.
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`Toyota Motor Corp. et al., Case No. 2:07-cv-180, on December 5, 2008. (Ex.
`
`1113; Ex.1114; Ex. 1115.)
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`Certain terms recited in the claims of the ’347 Patent has further been
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`briefed in the currently ongoing Hyundai Litigation. (Ex. 1116; Ex. 1117.)
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`Petitioner proposes the following claim constructions for the purposes of this
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`IPR only.
`
`A.
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`“road load (RL),” “RL” and “instantaneous torque RL
`required to propel said vehicle” (Claims 7 & 23)
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`During the 2005 and 2008 litigation with Toyota, the Eastern District of
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`Texas construed the terms “instantaneous road load,” “road load,” “RL,” and “road
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`load (RL)” as follows: (1) “instantaneous torque [rotary force] required for
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`propulsion of the vehicle” (Ex. 1112 at 39-41 & 49); (2) “the instantaneous torque
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`required for propulsion of the vehicle, which may be positive or negative in value.”
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`(Ex. 1115 at 14-15.)
`
`In the currently ongoing Hyundai Litigation, the Patentee has also
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`
`
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`maintained that the terms “road load” or “RL” should be construed as “the
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`instantaneous torque required for propulsion of the vehicle, which may be positive
`
`or negative in value.” (Exhibit 1116 at 16-19.)
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`Because inter partes review proceedings use the broadest reasonable
`
`construction of claim terms, Petitioner proposes the terms “road load (RL),” “RL”
`
`and “instantaneous torque RL required to propel said vehicle” for purposes of this
`
`proceeding be construed as: “the instantaneous torque required for propulsion of
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`the vehicle, which may be positive or negative in value.” (Ex. 1115 at 14-15.)
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`Based on the specification, prosecution history, and admissions by the Patentee,
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`however, it is Petitioner’s position that the correct construction for these terms is
`
`narrower, and Petitioner reserves the right to present such a construction in district
`
`court litigation.
`
`B.
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`“SP,” “Setpoint (SP)” (Claims 1, 7 & 23)
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`During 2008 litigation with Toyota, the Eastern District of Texas construed
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`the “setpoint (SP)” as being “a definite, but potentially variable value at which a
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`transition between operating modes may occur.” (Ex. 1115 at 13.) To the extent
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`this construction is applicable to cover any-and-all predetermined values (e.g.,
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`setpoints) disclosed in the ’347 Patent, this construction is overly broad. Instead,
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`the broadest reasonable construction of the terms “setpoint (SP)” and “SP” is “a
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`predetermined torque value,” as patentee made clear during prosecution.
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`
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`During prosecution issued claims 1 and 23 were amended to include the
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`following language in order to overcome prior art rejections issued in a non-final
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`Office Action:
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`and wherein the torque produced by said engine when operated at said
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`setpoint (SP) is substantially less than the maximum torque output
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`(MTO) of said engine.7
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`(Ex. 1102 at 387-393, 431-432 and 437-438.)
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`Such language was added in order to overcome a rejection based on U.S.
`
`Patent 6,054,844 to Frank and a non-patent publication titled “A hybrid drive
`
`based on a structure variable arrangement” to Mayrhofer. In order to overcome
`
`these references, the Patentee argued that the engine was operated only when
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`loaded “in excess of SP [setpoint], which is now defined to be ‘substantially less
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`than the maximum torque output (MTO) of said engine.’” (Ex. 1102 at 443-444,
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`emphasis added.)
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`Aside from these amendments, the ’347 Patent specification also states that
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`multiple “system variables” are compared against multiple “setpoints.”
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`As mentioned above, FIG. 9 is a high-level flowchart of the principal
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`decision points in the control program used to control the mode of
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`vehicle operation. Broadly speaking, the microprocessor tests
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`sensed and calculated values for system variables, such as the
`
`
`7 Claim 23 recites a similar comparison between engine torque and “setpoint (SP).”
`
`
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`15
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`vehicle's instantaneous torque requirement, i.e., the “road load” RL,
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`the engine's instantaneous torque output ITO, both being expressed as
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`a percentage of the engine's maximum torque output MTO, and the
`
`state of charge of the battery bank BSC, expressed as a percentage of
`
`its full charge, against setpoints, and uses the results of the
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`comparisons to control the mode of vehicle operation.
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`(Ex. 1101 at 40:21-32, emphasis added.)
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`Independent claims 1 and 23 instead recite a “setpoint” that is compared to
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`the “torque produced by said engine.” (Ex. 1101 at 58:34-34; 60:52-54.) Thus, the
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`setpoint is based on torque by the express claim language. The ’347 Patent states
`
`that the engine torque system variable is compared against a “setpoint” that is
`
`between “30-50%” of the engine’s maximum torque output. (Ex. 1101 at 40:47-
`
`55.) In other words, independent claims 1 and 23 recite a torque value that is used
`
`to test whether the “torque produced by the engine” is within a specified engine
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`torque range (e.g., 30-50% of MTO).
`
`According to the broadest reasonable construction, the recited “setpoint
`
`(SP)” and “SP” of independent claims 1 and 23 and dependent claims 6, 7, 9, 15
`
`and 36 should be construed as a “predetermined torque value.”
`
`C.
`
`“low-load mode I,” “highway cruising mode IV,”
`“acceleration mode V” (Claims 7 & 8)
`
`During the 2008 patent suit with Toyota, a Texas court construed these terms
`
`as follows: (1) “low-load mode I” as “the mode of operation in which energy from
`
`
`
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`the battery bank flows to the traction motor and torque (rotary force) flows from
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`the traction motor to the road wheels; “highway cruising mode IV” as “the mode of
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`operation in which energy flows from the fuel tank into the engine and torque
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`(rotary force) flows from the engine to the road wheels;” (3) “acceleration mode
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`V” as “the mode of operation in which energy flows from the fuel tank to the
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`engine and from the battery bank to at least one motor and torque (rotary force)
`
`flows from the engine and at least one motor to the road wheels.” (Ex. 1115 at 15-
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`17.)
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`Because inter partes review proceedings use the broadest reasonable
`
`construction of claim terms, Petitioner agrees with the above constructions
`
`provided by the Texas court for this proceeding only. (Ex. 1115 at 15-17.) Based
`
`on the specification, prosecution history, and admissions by the Patentee, however,
`
`it is Petitioner’s position that the correct construction for these terms is narrower,
`
`and Petitioner reserves the right to present such a construction in district court
`
`litigation.
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`VIII. UNPATENTABILITY GROUND
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`Bumby I through V render the claimed subject matter invalid under 35
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`U.S.C. §103 and the Petitioner there