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
`
`______________
`
`
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION FOR
` INTER PARTES REVIEW OF U.S. PATENT NO 7,104,347
`
`
`
`
`
`
`______________
`
`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
`
`______________
`
`
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION FOR
` INTER PARTES REVIEW OF U.S. PATENT NO 7,104,347
`
`
`
`
`
`
`
`
`
`
`Case No.: IPR2014-00579
`Attorney Dkt. No.: FPGP0101IPR3
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`Table of Contents
`
`Table of Authorities ............................................................................................................... ii
`
`Updated Exhibit List ............................................................................................................. iii
`
`I.
`
`II.
`
`Introduction ................................................................................................................. 1
`
`The Board’s construction of setpoint is correct and Paice’s proposed
`construction would not affect Petitioner’s analysis ................................................ 1
`
`III. A POSA would have combined the Bumby references ......................................... 2
`
`A.
`
`Bumby IV or V do not “teach away” from the sub-optimal
`control algorithm taught by Bumby II and III ........................................ 3
`
`IV. The Bumby references disclose a setpoint that is used for determining
`when to operate the engine/motor in claims 1 and 23 .......................................... 5
`
`V.
`
`The Bumby references determine road load as recited in claim 7 and 23 ............ 12
`
`VI.
`
`It was obvious to a POSA that a conventional starter motor could accept
`current from the claimed battery as required in claim 1 and 8 ............................ 13
`
`A.
`
`B.
`
`Claim 1 is satisfied by a conventional starter motor ..............................17
`
`Claim 8 is satisfied by a conventional starter motor ..............................20
`
`VII. The battery charging limitations of claims 1 and 23 would be obvious in
`view of the Bumby references ................................................................................. 20
`
`VIII. Conclusion ................................................................................................................. 25
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`Certificate of Service ............................................................................................................ 26
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`Table of Authorities
`
`Cases
`
`Beckman Instruments v. LKB Produkter AB,
`
`892 F.2d 1547 (Fed. Cir. 1989) .................................................................................. 4
`
`In re Fulton,
`
`391 F.3d 1195 (Fed. Cir. 2004) ........................................................................ 3, 5, 24
`
`KSR Int'l Co. v. Teleflex Inc.,
`
`550 U.S. 398 (2007) ..................................................................................................... 5
`
`Phillips v. AWH Corp.,
`
`415 F. 3d 1303 (Fed. Cir. 2005) ......................................................................... 18, 20
`
`Superguide Corp. v. DirecTV Enterprises, Inc.,
`
`358 F.3d 870 (Fed. Cir. 2004) .................................................................................. 18
`
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`ii
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`Updated Exhibit List
`
`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
`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
`
`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
`
`
`
`Feb. 1994
`
`Feb. 1997
`Feb. 1998
`1998
`
`
`Declaration Ex.
`Declaration Ex.
`
`Declaration Ex.
`Declaration Ex.
`Declaration Ex.
`
`
`
`Declaration Ex.
`
`
`
`
`Exhibit
`No.
`1101
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`1118
`1119
`
`1120
`1121
`1122
`
`1123
`
`
`
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`Date
`Feb. 24-28,
`1992
`April 9-11,
`1997
`
`Identifier
`Declaration Ex.
`
`Declaration Ex.
`
`April 1995
`
`Declaration Ex.
`
`Feb. 1998
`
`Declaration Ex.
`
`Feb. 1996
`
`Declaration Ex.
`
`Description
`Hybrid/Electric Vehicle Design
`Options and Evaluations
`Challenges for the Vehicle Tester in
`Characterizing Hybrid Electric
`Vehicles
`Electric and Hybrid Vehicles
`Program
`Technology for Electric and Hybrid
`Vehicles
`Strategies in Electric and Hybrid
`Vehicle Design
`Hybrid Vehicle Potential Assessment Sept. 30, 1979 Declaration Ex.
`Final Report Hybrid Heat Engine /
`June 1, 1971
`Declaration Ex.
`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
`
`Sept. 1, 1988 Declaration Ex.
`
`1996
`
`Declaration Ex.
`
`Feb. 1997
`
`Declaration Ex.
`
`Oct. 1996
`Feb. 1995
`
`Declaration Ex.
`Declaration Ex.
`
`Apr. 3, 2001
`
`
`Declaration Ex.
`Declaration Ex.
`
`Jan. 1998
`
`Declaration Ex.
`
`Declaration Ex.
`
`Filed Sept. 11,
`1998
`Davis Reply
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`April 7-8, 2015 Hannemann Dep.
`
`
`
`Exhibit
`No.
`1124
`
`1125
`
`1126
`
`1127
`
`1128
`
`1129
`1130
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`1131
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`1132
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`1133
`
`1134
`1135
`
`1136
`1137
`
`1138
`
`1139
`
`1140
`1141
`
`Dr. Davis Reply Declaration
`Deposition Transcript of Mr.
`Hannemann IPR2014-00579
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`Description
`Exhibit 12 from the April 8, 2015
`deposition of Mr. Hannemann
`Deposition Transcript of Mr.
`Hannemann IPR2014-00571
`U.S. Patent No. 5,285,862
`
`Date
`April 8, 2015
`
`
`
`Identifier
`
`April 7, 2015 Hannemann Dep.
`
`Feb. 15, 1994
`
`’862 Patent
`
`
`
`Exhibit
`No.
`1142
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`1143
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`1144
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`I.
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`Introduction
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`The Board instituted “inter partes review of claims 1, 7, 8, 18, 21, 23, and 37 of
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`U.S. Patent No. 7,104,347.” (Decision (Paper 12) at 2 (hereinafter “Decision”).)
`
`Patent Owner (“Paice”) now argues that: (1) a POSA would not combine the Bumby
`
`references; and (2) if combined, the “Bumby references fail to disclose or suggest the
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`topology or control strategy of the claimed invention.” (Patent Owner Response
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`(Paper 20) (hereinafter “Response”) at 3.)
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`Paice’s current arguments are based primarily on a thesis paper written by
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`Philip Masding (Ex. 2104). But, as explained below, the Masding Thesis further
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`confirms the unpatentability arguments explained in original Ford’s Petition.
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`II. The Board’s construction of setpoint is correct and Paice’s proposed
`construction would not affect Petitioner’s analysis
`
`The Board construed setpoint as “a predetermined torque value.” (Decision at 10.)
`
`Paice has argued that under this construction, the Board has committed a “clear,
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`reversible error.” (Response at 7.) Yet, Paice’s own expert agrees, independent of the
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`Board’s construction, that setpoint is a torque value in the claims at issue. (Ex. 1143,
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`Hannemann Dep. for IPR2014-571 at 80:14-25.)
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`Paice also argues that the Board should have construed setpoint as a value “at
`
`which a transition between operating modes may occur.” (Response at 8, n.6.) But
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`Paice’s own arguments undercut this request. Paice states that “‘setpoint’ marks the
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`amount of ‘road load’ at which the claimed control system actively changes the vehicle
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`from one mode to another.” (Response at 10.) Yet Paice’s construction only states
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`that a “transition . . . may occur.” (Id. at 11.) If the transition “may occur,” then it may
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`not occur, and setpoint is meaningless—i.e., it does not mark any transition point. For
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`this reason, even
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`if the construction of setpoint
`
`includes Paice’s proposed
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`“transition. . . may occur” language, it would not affect the analysis in this IPR.
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`III. A POSA would have combined the Bumby references
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`Paice argues that Ford’s “only reason” for combining the Bumby references is
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`that Dr. Bumby is listed as a common author on each publication.1 (Response at 15-
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`16.) On the contrary, Ford previously detailed how the Bumby references expressly
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`cross-cite each other and chronologically detail a hybrid project being developed at
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`the University of Durham in the 1980’s. (Petition at 18-31; Ex. 1108 at ¶¶175-233.)
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`And the Masding Thesis that Paice introduced into evidence confirms Ford’s original
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`position. (Ex. 1140, Davis Reply ¶¶5-22; see also Ex. 2104 at 35-44.) The Board also
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`agreed that all five Bumby references include substantial overlap and would have been
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`combined by a POSA. (Decision at 12.) Even Paice’s expert Mr. Hannemann testified
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`that the Masding Thesis “encompasses a lot of the elements of all of the other five
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`1 Paice has created different reference names than those used in the Petition, Patent
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`Owner’s Preliminary Response and the Board’s Decision. (See Decision at 5-6.) For
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`consistency with these prior filings, Ford will continue to refer to the publications as
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`Bumby I-V.
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`papers.” (Ex. 1141, Hannemann Dep. at 17:1-9.) It would have been obvious to a
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`POSA that the Bumby references concern the same microprocessor-based control
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`strategies and all components needed to produce an operational hybrid vehicle. (Ex.
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`1140, Davis Reply ¶¶5-22)
`
`A.
`
`Bumby IV or V do not “teach away” from the sub-optimal control
`algorithm taught by Bumby II and III
`
`Paice argues that a POSA would not have combined the Bumby references
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`because Bumby IV or V teaches away from the control strategies disclosed in Bumby
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`II & III. (Response at 16-21.)
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`For instance, Paice argues that Bumby V discloses an alternative “arbitrary
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`speed-based mode controller” and therefore teaches away from the sub-optimal
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`control algorithm. (Response at 16-17; Ex. 2102 at ¶7, 67-68.) The “mere disclosure
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`of more than one alternative does not constitute a teaching away…because such
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`disclosure does not criticize, discredit, or otherwise discourage” the disclosure of the
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`sub-optimal control algorithm. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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`Here, the disclosed alternative doesn’t “teach away” because Bumby V clearly states
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`that the “arbitrary [speed-based] strategy is intended purely to demonstrate” that the
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`“more sophisticated” sub-optimal control strategy of Bumby II & III could be
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`implemented on a hybrid vehicle. (Ex. 1105 at 19.)
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`The Bumby references also never expressly teach a POSA that the sub-optimal
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`control algorithm is inoperable. (Ex. 1140, Davis Reply ¶¶23-32.) Even if the sub-
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`optimal control algorithm was inoperable, “it is prior art for all it teaches.” Beckman
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`Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). At best, Paice
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`relies on Mr. Hannemann for the position that “it was not technically feasible to
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`implement” the sub-optimal control algorithm due to a potential “gear shifting”
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`problem. (Ex. 2102 at ¶66, 68; Response at 18-19.) But Mr. Hannemann testified, that
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`“gear shifting” was merely a problem that the Masding Thesis was investigating. (Ex.
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`1141 at 54:14-17.) And the Masding Thesis confirms that once the gear shifting
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`problem was corrected, the sub-optimal control algorithm would be implemented.
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`(Ex. 2102 at 240; see also Ex. 1141 at 19:2-9, 23:5-14.) A POSA would have therefore
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`recognized that the sub-optimal control algorithm is operative and that work was
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`being performed to implement the algorithm into a hybrid vehicle. (Ex. 1140, Davis
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`Reply ¶¶23-32.)
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`Paice also cites alleged poor fuel economy using one data point from a large set
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`of test data in arguing inoperability of the sub-optimal control algorithm. (Response at
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`19-20; Ex. 2102 at ¶69-76.) Specifically, Paice cites the data result for a conventional
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`vehicle with a “3-cylinder engine” that outperformed a hybrid vehicle with the same
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`“3-cylinder engine.” (Response at 19-20; Ex. 2102 at ¶69-76.) But a single result from
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`a larger grouping does not establish that the sub-optimal control algorithm is
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`inoperable. In fact, Paice ignores the data result showing that the sub-optimal control
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`algorithm provided better fuel economy over the conventional vehicle when the
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`“base configuration” was evaluated. (Ex. 1140, Davis Reply ¶¶24-26 Ex. 1104 at Fig.
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`3A, 3B.) The mere fact that the “3-cylinder engine” conventional vehicle architecture
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`outperformed its hybrid counterpart “does not constitute a teaching away…because
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`such [a] disclosure does not criticize, discredit, or otherwise discourage” the use of the
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`sub-optimal control algorithm with respect to the base vehicle configuration. In re
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`Fulton, 391 at 1201. In fact, the Masding Thesis recognizes that conventional vehicles
`
`might outperform their counterpart hybrid vehicles as more advanced drivetrains are
`
`introduced. (Ex. 2104 at 36.) Nevertheless, the Masding Thesis confirms that hybrid
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`vehicles are more “attractive because they can shift energy use away from petroleum
`
`towards the broader base of fuels used to generate electricity.” (Id.) It would have
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`therefore been obvious to a POSA to use the sub-optimal control algorithm to try to
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`provide a hybrid vehicle with improved fuel economy as shown by the “base
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`configuration” and discussed by the Masding Thesis. (Ex. 1140, Davis Reply ¶¶27-32.)
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`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
`
`IV. The Bumby references disclose a setpoint that is used for determining
`when to operate the engine/motor in claims 1 and 23
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`The Board construed setpoint as a “predetermined torque value.” Paice has not
`
`contested that the “lower torque bound” disclosed by the Bumby references is a
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`“predetermined torque value.” In fact, Mr. Hannemann testified that the Bumby
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`Reference’s “lower torque bound” is a torque value that is approximately 20 Newton-
`
`meters. (Ex. 1141 at 107:5-9.) Paice further admits that “the Bumby references
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`contain no disclosure of operating the engine when ‘road load’ is below ‘said lower
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`5
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`level setpoint.’” (Response at 51.) Paice therefore agrees that the engine is operated
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`only above setpoint. The Bumby references therefore disclose a “lower torque bound”
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`that is a “predetermined torque value” or setpoint.
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`Despite the Bumby references’ teaching of the “lower torque bound” for
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`determining when to operate the engine and/or motor, Paice argues that the Bumby
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`references make mode decisions based on power, not torque. (Response at 21-24.)
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`However, even when power remains constant, the Bumby references teach changing
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`hybrid modes based on a torque setpoint, as clearly illustrated in the following
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`example. During Mr. Hannemann’s deposition, he was asked to plot a constant-
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`power line of 4.2kW and identify the torque values corresponding to four gear ratio
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`points. (Ex. 1141 at 86:3-105:23; Ex. 1142.)
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`(Ex. 1142 – Exhibit 12 of 4/18/2015 Deposition of Mr. Hannemann)
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`As shown, the 4.2kW constant-power line includes two points below the
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`“lower torque bound” (i.e., Gear 1 and Gear 2) and another point within the boxed
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`region above the “lower torque bound” (i.e., Gear 3 shown at ~2000RPM). Based on
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`the above drawing, Mr. Hannemann testified that the sub-optimal control algorithm
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`would select the torque value located that is located above the “lower torque bound”
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`(i.e., Gear 3, which is in the ‘box’.). (Ex. 1141 at 89:16-90:10.) This example illustrates
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`that the sub-optimal strategy cannot be based on power. As the Bumby references
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`clearly state, and the above example illustrates, the sub-optimal strategy evaluates the
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`torque values relative to the “lower torque bound” to determine the appropriate
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`hybrid vehicle mode. (Ex. 1104 at 10-11; Ex. 1105 at 7-8.) And when the power is
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`constant (i.e., 4.2kW), and the corresponding torque values crosses from below to
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`above the “lower torque bound,” a mode transition would occur (e.g. engine mode is
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`selected). The Bumby references confirm, that for the 4.2kW example, when “one of
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`this family of operating points falls within the engine operating box, then that gear
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`and IC engine operation is selected.” (Ex. 1104 at 11.) Mr. Hannemann, however,
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`refused to admit that based on the torque values he plotted at Gear 3, that the sub-
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`optimal control algorithm would operate the vehicle using the engine.
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`Q: Sure. Do you have an opinion whether the suboptimal control
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`algorithm will operate the engine in the 4.2-kilowatt scenario you have
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`drawn?
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`MR. GUARNIERI: Same objection.
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`Mr. Hannemann: Yeah. The information in the reference about the
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`algorithm isn't clear enough that I can state that with certainty.
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`Q: So you have no opinion?
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`Mr. Hannemann: I guess, yeah, I have no opinion other than what's in
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`the graph, which is -- let's see. The operation would be in the reduced
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`suboptimum region, so I just don't know the parameters that relate to
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`that.
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`Q: So you have no opinion regarding engine operation?
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`Mr. Hannemann: Correct.
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`(Ex. 1141 at 105:9-23.)
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`Mr. Hannemann’s testimony is dubious, especially since he stated the torque
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`value that would be selected by the sub-optimal control algorithm is within the box.
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`Although Mr. Hannemann could not answer the question, a POSA would have
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`understood that because a torque value is within the box, the engine is used to propel
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`the vehicle. (Ex. 1140, Davis Reply ¶¶33-36.)
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`Paice further argues that the Bumby references make mode decisions based on
`
`power because the sub-optimal control strategy uses the accelerator pedal to indicate
`
`“demand power.” (Response at 32-34.) While pedal position (i.e., “demand power”) is
`
`an input, the references are clear that “the suboptimal control algorithm converts the
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`instantaneous power and speed requirement into a torque and speed demand.”
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`(Ex. 1104 at 11, emphasis added.) Bumby III further explains that the sub-optimal
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`control algorithm “accepts demand power as its control variable and, by sensing
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`road speed, transforms this power to a torque at the output of the transmission.”
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`(Ex. 1105 at 7, emphasis added.) Based on the torque value on the output of the
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`transmission, a “set of torque and speed values” are calculated that relate to “discrete
`
`gear ratio[s]” for the transmission. Id. The Bumby references are therefore clear that
`
`“demand power” is converted to a torque value. (Ex. 1140, Davis Reply ¶¶37-39.)
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`As confirmed by the example from Mr. Hannemann shown on page 7 above,
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`the Bumby references compare the calculated torque values (relating to the gear
`
`ratios) against the “lower torque bound” to determine whether the engine and/or
`
`electric motor should be used for propelling the vehicle. (Ex. 1104 at 10-11, Ex. 1105
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`at 7-8.) When a torque value is above the lower torque bound, the engine is used to
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`propel the vehicle. Id. When all the torque values are below the lower torque bound,
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`the electric motor is used to propel the vehicle. Id. The control strategy recited by the
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`challenged claims requires nothing more and as such the Bumby references disclose
`
`the use of a setpoint as required by claims 1, 7 and 23.
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`Lastly, in an argument that has nothing to do with the recited claim language,
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`Paice argues that the sub-optimal control algorithm “is actually a transmission control
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`system based on power” and therefore a “far cry from the patented system which
`
`makes decisions to use the engine and/or electric motor based on the instantaneous
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`torque required to propel the vehicle.” (Response at 27-31; Ex. 2102 at ¶92-93.)
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`Whether a transmission is used with the sub-optimal control strategy is irrelevant to
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`evaluating the patentability of the challenged claims. Indeed, Paice admits that the
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`challenged claims “may include a transmission.”2 (Response at 31; Ex. 2102 at ¶96; see
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`Ex. 1101 at Claim 18.) The Masding Thesis also confirms that a “variable transmission
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`is not absolutely essential. . .” (Ex. 2104 at 180; Ex. 1140, Davis Reply ¶¶40-43.)
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`Paice has argued that Dr. Davis’ initial Declaration regarding the sub-optimal
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`control is incorrect because he didn’t consider a transmission. (Response at 28-30.) 3
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`But Dr. Davis did consider a transmission, including his analysis of claim 18 which
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`recites a “variable-ratio transmission.” (See e.g., Ex. 1108, Davis Dec. at ¶¶268, 271,
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`278, 326, 354-359.) In fact, Dr. Davis’ initial declaration illustrated a simplified
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`situation where a transmission remains in a fixed gear and the vehicle speed is
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`constant. (Ex. 1140, Davis Reply ¶¶44-46.)
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`Dr. Davis’ simplified example illustrated how the sub-optimal controller
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`evaluates the torque required to propel the vehicle against the setpoint (i.e. “lower
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`torque bound”). The example illustrated how a vehicle operating in a fixed gear and
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`constant speed would react if the vehicle began to slowly ascend up a hill. And
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`although other driving scenarios exist where the transmission may behave differently,
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`a POSA understands that for both hybrid and conventional vehicles, transmissions
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`2 Paice has not explained how the claimed control strategy operates when a
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`transmission is included.
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`3 Mr. Hannemann admits that the gear ratio points that he analyzed were
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`“approximated.” (Ex. 1141 at 83:18-25.)
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`10
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`remain in a fixed gear during many driving situations. Dr. Davis’ example clearly
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`illustrates how a POSA understands that the claims are satisfied by the sub-optimal
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`Case No.: IPR2014-00579
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`control algorithm. (Ex. 1140, Davis Reply ¶¶44-46.)
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`Further, in reply to Paice’s argument at Response 26-27, Dr. Davis’ original
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`explanation could be updated to show power curves and transmission torque points,
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`similar to what has been shown by Paice. The updated figure illustrates the same
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`results Dr. Davis previously provided when the vehicle operates in a fixed gear (i.e.,
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`“Gear 2”) and constant speed with only the change being a gradual increase in the
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`“torque required to propel the vehicle” (e.g., if the vehicle transitioned from a level
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`surface to climbing a moderate hill). (Ex. 1140, Davis Reply ¶¶47-50.)
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`(Ex. 1140, Davis Reply at ¶44-48)
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`11
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`The
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`sub-optimal control algorithm
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`therefore discloses
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`the claimed
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`“predetermined torque value” or setpoint that is used for determining when to operate
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`the engine and/or electric motor.
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`V. The Bumby references determine road load as recited in claim 7 and 23
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`The Board construed road load as the “instantaneous torque required to propel
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`the vehicle, be it positive or negative.” (Decision at 8.) Paice argues that the Bumby
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`references “do not calculate ‘the instantaneous torque required to propel the
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`vehicle’. . .” (Response at 34.)
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`But Paice admits that the Bumby references “calculate[ ], for a driving cycle,
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`‘the torque required at the road wheels to overcome both vehicle drag and rolling
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`resistance and to provide any vehicle acceleration.’” (Response at 35, emphasis added;
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`quoting Ex. 1105 at 5.) As Dr. Davis stated in his initial declaration, this quotation
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`would be understood by a POSA to be the torque required to propel the vehicle. (Ex.
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`1108, Davis Dec. at ¶¶312-316.) Paice argues this is not road load because the torque
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`value is calculated too slowly. (Response at 35.) Neither the specification nor the
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`claims require a frequency for calculating road load. So the torque value calculated by
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`the Bumby references satisfies the claimed “torque required to propel the vehicle.”
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`Further, the Bumby references disclose calculating the “torque at the output of
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`the transmission” based on the power being demanded by the driver using the
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`accelerator pedal position and vehicle speed. (Ex. 1105 at 7.) Using the “fixed
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`transmission ratios available” the sub-optimal algorithm determines “a set of torque
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`12
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`and speed values at the torque split point. . .” where the engine and/or motor can
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`provide the previously calculated output torque. (Id.) Each torque/speed value
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`“corresponds to the number of discrete gear ratios available” for the transmission
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`used. (Id.) Further, the selected torque value corresponds to the torque required by the
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`engine and/or motor for propelling the vehicle. It would have therefore been obvious
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`that each calculated torque value is the “torque required to propel the vehicle.” (Ex.
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`1108, Davis Dec. ¶¶278-283, 300-316, 389-409.)
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`Lastly, the claims do not require a specific method or algorithm to “calculate”
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`the torque required to propel the vehicle. Therefore, the claims are met by the Bumby
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`references which determine the “torque required to propel the vehicle.” Further, Paice
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`has failed to articulate how the ’347 Patent “calculates” road load. And Paice’s expert
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`states that the ’347 Patent does not teach a POSA how to calculate, measure, or
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`determine road load because “that’s something that wasn’t a part of the patent.” (Ex.
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`1143, Hannemann Dep. for IPR2014-571 at 61:6-62:6.)
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`Therefore, Paice’s extensive arguments regarding the method of calculating road
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`load extend beyond the boundary of the claims. Further, as previously argued the
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`Bumby references disclose determining the “torque required to propel the vehicle, per
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`the Board’s construction. (Ex. 1108, Davis Dec. ¶¶278-283, 300-316, 389-409.)
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`VI.
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`It was obvious to a POSA that a conventional starter motor could accept
`current from the claimed battery as required in claim 1 and 8
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`Paice argues that “no Bumby reference explicitly discloses that the ‘first electric
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`13
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`motor’ receives current from the battery...” (Response at 38; Ex. 2102 at ¶80.) And
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`because there is not an express teaching in the Bumby references, Paice argues that a
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`POSA would have understood “it is not possible to simply attach a 216V battery
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`to a conventional starter motor. . .” (Response at 39.) Specifically, Paice argues that
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`a POSA would have understood that adding “power electronics required to use a 216
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`V battery with a 12 V [conventional] starter motor would add significant cost and
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`technical complexity to the system.” (Ex. 2102 at ¶84; Ex. 1141 at 63:13-20.)
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`First, Ford never presented an anticipation argument relying on the express
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`teachings of the Bumby references but instead argued that it was obvious to provide
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`current to a conventional starter motor from the recited battery. (Ex. 1108, Davis Dec.
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`at ¶¶263-264.) And when cross-examined, Dr. Davis provided obvious design choices
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`known to a POSA for providing current to a conventional starter motor from a high
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`voltage battery like the 216 V battery pack disclosed by the Bumby references.
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`Q: [A 216-volt battery]. . . would be incompatible with a standard
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`[conventional] starter motor, correct?
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`Dr. Davis: I don't see any difficulty there. I mean you just put a DC-to-
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`DC converter in there and knock the voltage down. I don't see a
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`problem with that.
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`Q: But you don't see a DC-to-DC converter within the structure of the
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`test bed, correct?
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`Dr. Davis: Well, if you're looking at the figure, if you look at the figure
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`that they have in Figure 4, it doesn't even show the starter, so -- but it
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`14
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`clearly talks about the starter.
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`Q: So there must be a 12-volt supply some place. Is that fair?
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`Dr. Davis: I would say that they would more than likely use a DC-
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`DC converter to knock the voltage down. I don't know the particular
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`layout of these batteries in the battery pack, but often, particularly in this
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`time frame, we would have a grouping of 12-volt batteries comprising a
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`battery pack, and I do know that people would sometimes pull the
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`12-volts they needed off one of those batteries from the pack. So
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`there are numerous ways to do that.
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`(Ex. 2106 at 262:20-264:1, emphasis added.)
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`Dr. Davis’ obviousness opinion is also supported by a 1993 hybrid vehicle
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`competition paper that was presented by the United States Naval Academy collegiate
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`team during the 1993 hybrid vehicle competition. (Ex. 1119 at 7; Ex. 2107 at 5.)4 As
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`identified at the beginning of the article, Dr. Davis was a member of the United States
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`Naval Academy hybrid vehicle design team and is also named co-author on the paper.
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`(Ex. 1119 at 6; Ex. 2107 at 1.) This 1993 paper states that “several approaches were
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`considered to power the 12 V system.” (Ex. 1119 at 7; Ex. 2107 at 5.) One obvious
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`design choice included directly providing current to a conventional starter motor by
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`4 Ex. 2107 is a re-publication of Ex. 1119 that was provided in Dr. Davis’ initial
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`declaration.
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`15
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`“utiliz[ing] the output of one twelve volt battery from the 120V [battery] stack.”5 (Id. at
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`7; Ex. 2107 at 5.) The second obvious design choice included powering the
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`conventional starter motor indirectly via a “DC/DC converter, powered by the [high
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`voltage] 120V stack . . .” (Ex. 1119 at 7; Ex. 2107 at 6; Ex. 1140, Davis Reply ¶¶51-
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`62.)
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`Aside from Dr. Davis’ 1993 paper, further prior art shows it was obvious to
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`indirectly provide current from the battery to a conventional starter motor. For
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`instance, European Patent App. EP0136055 was cited by Paice during prosecution of
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`the ’347 Patent. (Ex. 1102 at 960.) This reference states that by 1988 it was known
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`that a DC-DC converter could be connected across a high voltage battery (i.e., 216V)
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`for indirectly providing current to a 12V conventional starter motor.
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`The battery 14 comprises eighteen 12 volt battery units, providing 216
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`volts. A dc/dc converter 27 is connected across the output of the battery
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`14 for maintaining a charge on an auxiliary 12 volt battery 28 which can
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`supply, inter alia, the starter and ignition circuits of the engine 20,
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`through a switch 29. In its fully clockwise position the switch 29 supplies
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`current to a starter (not shown) of the engine 20 through a switch 36.
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`(Ex. 1102 at 324, emphasis added; Ex. 1140, Davis Reply ¶63.)
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`Likewise, U.S. Patent 5,285,862 discloses that it was obvious to have a hybrid
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`5 Mr. Hannemann’s opinion improperl
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