UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`FORD MOTOR COMPANY
`Petitioner,
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`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owners.
`
`_________________________
`
`
`Case IPR2014-00579
`Patent 7,104,347
`_________________________
`
`
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`PATENT OWNER’S MOTION FOR OBSERVATIONS ON THE
`CROSS EXAMINATION OF DR. GREGORY DAVIS
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`_________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owners.
`
`_________________________
`
`
`Case IPR2014-00579
`Patent 7,104,347
`_________________________
`
`
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS ON THE
`CROSS EXAMINATION OF DR. GREGORY DAVIS
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`Case IPR2014-00579
`Patent 7,104,347
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`
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`1.
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`In exhibit 2111, on page 70, line 3 to page 71 line 2, Dr. Davis
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`testified that Fig. 7.12(b) of the Masding Thesis (Ex. 2104 at 233) illustrates the
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`“battery recharge mode” disclosed in the Bumby references. This testimony is
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`relevant to paragraphs 78-83 of Dr. Davis’ Reply Declaration (Ex. 1140). The
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`testimony is relevant because the “battery recharge mode” shown in Fig. 7.12(b) is
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`activated based on an arbitrary time threshold, which shows that Dr. Davis’
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`opinion that the “battery recharge mode” meets the battery recharge claim
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`limitation of claim 23 (“operating the engine to charge the battery when RL is less
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`than SP”) is unsupported by any evidence.
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`2.
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`In exhibit 2111, on page 72, line 5 to 14, Dr. Davis testified that Fig.
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`7.12(b) of the Masding Thesis (Ex. 2104 at 233) shows that the “battery recharge
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`mode” is entered based purely on time. This testimony is relevant to paragraphs
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`78-83 of Dr. Davis’ Reply Declaration (Ex. 1140). The testimony is relevant
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`because it contradicts Dr. Davis’ opinion that the “battery recharge mode” in the
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`Bumby references meets the battery recharge claim limitation of claim 23
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`(“employing said engine to propel said vehicle when the torque RL required to do
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`so is less than said lower level SP and using the torque between RL and SP to drive
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`said at least one electric motor to charge said battery when the state of charge of
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`said battery indicates the desirability of doing so”).
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`2
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`Case IPR2014-00579
`Patent 7,104,347
` In exhibit 2111, on page 82, line 14 to page 83 line 1, Dr. Davis
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`3.
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`testified that Fig. 7.12(b) of the Masding Thesis (Ex. 2104 at 233), was not using
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`the “sub-optimal” control algorithm. This testimony is relevant to paragraphs 71-
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`83 of Dr. Davis’ Reply Declaration (Ex. 1140), where Dr. Davis testified that the
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`Bumby references disclose using the “sub-optimal” control algorithm during the
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`“battery recharge mode.” The deposition testimony is relevant because it
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`contradicts Dr. Davis’ declaration testimony.
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`4.
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` In exhibit 2111, on page 85, lines 10-22, Dr. Davis testified that Fig.
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`7.12(b) of the Masding Thesis (Ex. 2104 at 233), was using the speed-based
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`controller. This testimony is relevant to paragraphs 13-26 of Dr. Davis’ Reply
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`Declaration (Ex. 1140), where Dr. Davis testified that the Masding Thesis (Ex.
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`2104) shows that the “test rig” disclosed in the Masding Thesis, Bumby 1988 (Ex.
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`1106), and Masding (Ex. 1107), was using the “sub-optimal” control algorithm.
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`The testimony is relevant because it calls into question the credibility of Dr. Davis’
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`opinion about the whether the “test rig” used the “sub-optimal” control algorithm.
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`5.
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`In exhibit 2111, on page 21, lines 10-17, Dr. Davis testified that the
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`Masding thesis (Ex. 2104) states that the “sub-optimal” controller algorithm was
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`never implemented in a vehicle. On page 22, lines 11-20, Dr. Davis testified that
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`there was no evidence from the Bumby references that the “sub-optimal” control
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`algorithm was ever implemented in a vehicle. This testimony is relevant to
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`3
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`Case IPR2014-00579
`Patent 7,104,347
`paragraphs 16 to 26 of Dr. Davis’ Reply Declaration (Ex. 1140), where Dr. Davis
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`testified that there was a motivation to combine the Bumby references because the
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`“sub-optimal” control algorithm was “operable.” The testimony is relevant because
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`it contradicts Dr. Davis’ opinion that the “sub-optimal” control algorithm was
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`“operable” and shows that a POSITA would not have been motivated to combine
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`the “sub-optimal” control algorithm of the earlier Bumby references with the “test
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`rig” of the later Bumby references.
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`6.
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`In exhibit 2111, on page 26, line 15 to page 27, line 13, Dr. Davis
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`testified that his reply declaration’s testimony that “[t]he transmission control
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`strategy is not part of the Bumby references, and discussion of the transmission
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`control strategy would be speculative” was not as “clear as [it] should have been.”
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`This testimony is relevant to paragraphs 34 to 35 of Dr. Davis’ Reply Declaration
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`(Ex. 1140), where Dr. Davis testified that the “sub-optimal” control strategy
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`includes controlling the transmission by selecting a gear. The testimony is relevant
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`because it impeaches the credibility of Dr. Davis’ explanation of how the “sub-
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`optimal” control algorithm works.
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`7.
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`In exhibit 2111, on page 28, line 12 to page 30 line 6, Dr. Davis
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`testified he could not recall reviewing the papers regarding the Lucas hybrid
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`vehicle in Harding, et al. 1983, and the earlier hybrid built by Bosch described in
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`Fersen 1974, and testified that given the time difference between those papers and
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`4
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`Case IPR2014-00579
`Patent 7,104,347
`the Bumby references it was “highly unlikely” they were using the “sub-optimal”
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`control strategy. This testimony is relevant to paragraph 40 of Dr. Davis’ Reply
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`Declaration (Ex. 1140), where Dr. Davis testified that the “Masding Thesis
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`discloses that a transmission is not necessarily required,” and cites to a portion of
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`the Masding thesis (Ex. 2104) that in turn cites to the Harding and Fersen papers.
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`The testimony is relevant because it shows that a POSITA would understand that
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`the Masding Thesis was merely stating that hybrid vehicles in general did not need
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`a transmission and is not related to whether the “sub-optimal” control algorithm
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`requires a transmission.
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`8.
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`In exhibit 2111, on page 34, line 14 to page 38 line 2, Dr. Davis
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`testified that the support for his opinion that the suboptimal control algorithm can
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`operate without a transmission is the description of the “sub-optimal” control
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`strategy in Ex. 1105, including that “[k]nowing the fixed transmission ratios
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`available, a set of torque and speed values at the torque split point can be defined,
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`the number of which will correspond to the number of discrete gear ratios
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`available,” and that “[t]he control algorithm always seeks to place the IC engine
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`operating point within the 'box' using the available transmission ratios.” This
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`testimony is relevant to paragraphs 40-50 of Dr. Davis’ Reply Declaration (Ex.
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`1140), where Dr. Davis testified that a transmission is not required by the Bumby
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`“sub-optimal” control strategy.” The testimony is relevant because it shows that
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`5
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`Case IPR2014-00579
`Patent 7,104,347
`Dr. Davis’ opinion with regard to the transmission is conclusory and not based on
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`the disclosure of the references.
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`9.
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`In exhibit 2111, on page 42, line 24 to 44 line 3, Dr. Davis testified
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`that the motor break speed of the motor shown on Fig. 16 of Bumby 1987 (Ex.
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`1104) was approximately 2000 RPMs. In exhibit 2111, on page 44 line 14 to page
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`45 line 12, Dr. Davis drew this line onto Fig 16 of the Bumby 1987 reference in
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`Davis Exhibit 3 (see Ex. 2112). This testimony is relevant to paragraphs 46-50 of
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`Dr. Davis’ Reply Declaration (Ex. 1140), where Dr. Davis testified that the Bumby
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`“sub-optimal” control strategy would select Gear 2 at 3000 RPMs for his
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`illustrative 1.5 kW power demand; it is also relevant to Bumby 1987 (Ex. 1104) at
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`page 11, where the reference states that “[f]or all-electric operation, the gear ratio
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`that puts the operating point nearest the motor break speed is selected.” The
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`testimony is relevant because it calls into question Dr. Davis’ credibility with
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`respect to his understanding of the “sub-optimal” control algorithm and shows that
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`Dr. Davis’ examples provided in his declaration are contrary to the disclosure of
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`the reference, which will select a gear nearest the motor break speed of 2000
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`RPMS (i.e. Gear 3 in Dr. Davis’ example at Ex. 1140, ¶¶ 47-48).
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`10.
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`In exhibit 2111, on page 48, lines 5 to page 50 line 12, Dr. Davis
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`testified that if all the available power output gear ratios are above the “box,” the
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`“sub-optimal” control algorithm will select the highest available gear, which Dr.
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`6
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`Case IPR2014-00579
`Patent 7,104,347
`Davis testified would be “around 1500 to 2,000 RPM”. This testimony is relevant
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`to paragraphs 46-50 of Dr. Davis’ Reply Declaration (Ex. 1140), where Dr. Davis
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`testified that the Bumby “sub-optimal” control strategy would select Gear 2 at
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`3000 RPMs for his illustrative 40 kW power demand where all the points are
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`above the box (and not the higher Gear 3 at 2000 RPMs or Gear 4 at 1000 RPMs).
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`The testimony is relevant because it calls into question Dr. Davis’ credibility with
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`respect to his understanding of the “sub-optimal” control algorithm and shows that
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`Dr. Davis’ examples provided in his declaration are contrary to the disclosure of
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`the reference.
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`11.
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`In exhibit 2111, on page 62, lines 2-5, Dr. Davis testified that he did
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`not cite to his own “AMPhibian paper” in his original declaration when discussing
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`the claim limitation that the battery provides current to the first electric motor. This
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`testimony is relevant to paragraphs 51-65 of Dr. Davis’ Reply Declaration (Ex.
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`1140), where Dr. Davis offers new opinions on whether it would be obvious to
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`modify the Bumby references 12 volt conventional starter motor to connect it to
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`the 216 volt hybrid battery. The testimony is relevant because it shows that Dr.
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`Davis’ opinions in his original declaration were conclusory and not supported by
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`the evidence.
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`12.
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`In exhibit 2111, on page 65 line 21 to 66 line 10, Dr. Davis testified
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`that he added new references to European Patent Application EP0136055 and U.S.
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`7
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`Case IPR2014-00579
`Patent 7,104,347
`Patent No. 5,285,862 to his reply declaration. Dr. Davis also testified at page 68,
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`lines 18 to 21 that Ford’s counsel provided him with U.S. Patent No. 5,285,862.
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`This testimony is relevant to paragraphs 63-65 of Dr. Davis’ Reply Declaration
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`(Ex. 1140), where Dr. Davis offers opinions based on European Patent Application
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`EP0136055 and U.S. Patent No. 5,285,862. The testimony is relevant because it
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`shows that Dr. Davis’ opinions in paragraphs 63-65 of Ex. 1140 were new opinions
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`based on evidence not disclosed in his original declaration.
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`Dated: May 15, 2015
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`By: /Timothy W. Riffe/
`Timothy W. Riffe (Reg. No. 43,881)
`Kevin Greene, (Reg. No. 46,031)
`FISH & RICHARDSON P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`Tel: (202) 626-6447
`Fax: (202) 783-2331
`
`Attorneys for Patent Owner
`Paice LLC & Abell Foundation, Inc.
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`8
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on May 15, 2015, a complete and entire copy of this Patent Owner’s
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`Motion for Observations on the Cross Examination of Dr. Gregory Davis was
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`provided via email to the Petitioner by serving the correspondence email addresses
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`of record as follows:
`
`Frank A. Angileri
`John Nemazi, John Rondini
`Brooks Kushman P.C.
`1000 Town Center
`Twenty-Second Floor
`Southfield, Michigan 48075
`Email: FPGP0101IPR3@brookskushman.com
`
`Lissi Mojica
`Kevin Greenleaf
`Dentons US LLP
`1530 Page Mill Road
`Suite 200
`Palo Alto, California 94304-11251
`Email: lissi.mojica@dentons.com
`Email: kevin.greenleaf@dentons.com
`Email: iptdocketchi@dentons.com
`
`
`
`
`
`
`
`/Jessica K. Detko/
`
`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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