PUBLIC – REDACTED VERSION
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
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`Case IPR2014-00579
`Patent 7,104,347
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`Patent Owner’s Preliminary Response to
`Petition for Inter Partes Review of U.S. Patent
`No. 7,104,347
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`PUBLIC – REDACTED VERSION
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`Patent No. 7,104,347
`Patent Owner Preliminary Response
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`PUBLIC – REDACTED VERSION
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`Case IPR2014-00579
`Attorney Docket No: 36351-0011IP2
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`TABLE OF CONTENTS
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`I.
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`II.
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`III.
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`INTRODUCTION ....................................................................................................... 1
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`BACKGROUND OF THE ’347 PATENT .................................................................... 2
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`PETITIONER IS BARRED OR ESTOPPED FROM REQUESTING INTER PARTES
`REVIEW CHALLENGING THE ’347 PATENT CLAIMS ............................................. 5
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`A.
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`B.
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`C.
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`Introduction – The Arbitration Agreement ....................................................... 5
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`Petitioner Has Failed to Meet the Requirements of 37 C.F.R. § 42.104 .......... 9
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`The Board Should Exercise its Discretion Under 37 C.F.R. § 42.108(b) and
`Deny Institution of the Petition to Prevent Harm to Patent Owner ................. 10
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`IV.
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`CLAIM CONSTRUCTION ........................................................................................ 12
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`V.
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`DEFECTS IN THE PROPOSED GROUND OF UNPATENTABILITY ...................... 16
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`A.
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`B.
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`Ground 1 is defective because Petitioner has failed to establish a prima facie
`case of obviousness with regard to its proposed combination. ..................... 16
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`Ground 1 is additionally defective because Petitioner has failed to establish a
`reasonable likelihood that the Bumby references, even if combined, describe
`or suggest all recited features of claims 1, 7, 8, 18, 21, 23, and 37. ............. 19
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`The Bumby references do not describe or suggest “a setpoint (SP)
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`above which said engine torque is efficiently produced,” as recited in claim 1.
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`19
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`The Bumby references do not describe or suggest “an internal
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`combustion engine capable of efficiently producing torque at loads between a
`lower level SP and a maximum torque output MTO,” as recited in claim 23,
`nor any of the recited steps of employing such an engine. ........................... 21
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`VI.
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`REDUNDANT GROUNDS OF UNPATENTABILITY ................................................ 21
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`VII. CONCLUSION ......................................................................................................... 22
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`Patent No. 7,104,347
`Patent Owner Preliminary Response
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`PUBLIC – REDACTED VERSION
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`Case IPR2014-00579
`Attorney Docket No: 36351-0011IP2
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`CASES
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`TABLE OF AUTHORITIES
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`Ex parte Levengood,
`28 USPQ2d 1300 (B.P.A.I.. 1993) ................................................................................. 19
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`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ................................................................................. 12, 13
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`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ..................................................................................... 18
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`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................................ 17, 19
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`Liberty Mutl. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003, Paper No. 7
`(PTAB Oct. 25, 2012) .................................................................................................... 22
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`STATUTES AND REGULATIONS
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`35 U.S.C. § 313 .................................................................................................................... 1
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`35 U.S.C. § 315(b) .............................................................................................................. 11
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`37 C.F.R. § 42.1(b) ............................................................................................................. 22
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`37 C.F.R. § 42.100(b) ......................................................................................................... 12
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`37 C.F.R. § 42.104 ............................................................................................................... 9
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`37 C.F.R. § 42.107 ............................................................................................................... 1
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`37 C.F.R. § 42.108(b) ......................................................................................................... 10
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`77 Fed. Reg. 48688 (Aug. 14, 2012) ................................................................................... 10
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`PUBLIC – REDACTED VERSION
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`Case IPR2014-00579
`Attorney Docket No: 36351-0011IP2
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`Patent No. 7,104,347
`Patent Owner Preliminary Response
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`OTHER AUTHORITIES
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`Inter Partes Review, Inter Partes Disputes (last visited July 11, 2014),
`http://www.uspto.gov/aia_implementation/bpai.jsp .......................................................... 8
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`Patent No. 7,104,347
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`Case IPR2014-00579
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`EXHIBITS
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`Exhibit Number
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`2101
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`Exhibit Name
`Arbitration Agreement between Paice LLC and Ford Motor
`Company
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`PUBLIC – REDACTED VERSION
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`Case IPR2014-00579
`Attorney Docket No: 36351-0011IP2
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`Patent No. 7,104,347
`Patent Owner Preliminary Response
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`I.
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`INTRODUCTION
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`Paice LLC and The Abell Foundation, Inc. (collectively, “Patent Owner”) respectfully
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`submits this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. §
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`42.107, responding to the Petition for Inter Partes Review (“the Petition”) filed by Ford Motor
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`Company (“Petitioner”). Patent Owner requests that the Board not institute inter partes
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`review because (1) Petitioner lacks standing in view of the bargained-for Arbitration
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`Agreement between Petitioner and Patent Owner and (2) the Petition fails to establish a
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`reasonable likelihood that Petitioner will prevail with respect to at least one of the
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`challenged claims.
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`First, Petitioner and Patent Owner have negotiated and executed an Arbitration
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`Agreement as part of a settlement of a prior patent infringement suit and Petitioner is barred
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`or estopped from requesting inter partes review challenging the claims of the ’347 patent in
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`view of the Arbitration Agreement.
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`Second, for each of the proposed grounds of unpatentability, Petitioner has failed to
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`demonstrate that there is a reasonable likelihood that the prior art relied upon anticipates or
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`renders obvious the challenged claims.
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`For example, with respect to Ground 1, Petitioner has failed to demonstrate a
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`reasonable likelihood that a POSA would have known and been able to combine the five
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`“Bumby” references.
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`Case IPR2014-00579
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`Also with respect to Ground 1, Petitioner has failed, among other things, to
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`demonstrate a reasonable likelihood that the “Bumby” references disclose or suggest “a
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`setpoint (SP) above which said engine torque is efficiently produced,” as recited in claim 1,
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`or “an internal combustion engine capable of efficiently producing torque at loads between a
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`lower level SP and a maximum torque output MTO,” as recited in claim 23.
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`Accordingly, Petitioner’s petition fails to establish a reasonable likelihood that it
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`would prevail with respect to at least one of the claims challenged in the petition. This
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`petition should be denied.
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`II.
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`BACKGROUND OF THE ’347 PATENT
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`The ’347 patent (Ex. 1001), entitled “Hybrid Vehicles,” issued on September 12,
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`2006 from an application with a priority date of September 14, 1998. The ’347 patent
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`discloses embodiments of a hybrid electric vehicle, with an internal combustion engine and
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`two motors. One or both of the motors may be used to recharge the battery. Additionally, a
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`microprocessor is employed to select different operating modes based on the vehicle’s
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`instantaneous torque requirements, the state of charge of the battery bank, and other
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`variables. (See, e.g., Ex. 1001 at Abstract.)
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`An embodiment of the hybrid vehicle disclosed in the ’347 patent is shown in Figure
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`3, reproduced below:
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`Patent No. 7,104,347
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`As shown, a traction motor 25 is connected to the road wheels 34 through a
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`differential 32. A starter motor 21 is connected to the internal combustion engine 40. The
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`motors 21 and 25 are functional as either motors or generators, depending on the operation
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`of the corresponding inverter/charger units 23 and 27, which connect the motors to the
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`battery bank 22. (See Ex. 1001 at 26:13-24.)
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`These components are controlled by a microprocessor 48 or any controller capable
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`of examining input parameters and signals and controlling the mode of operation of the
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`vehicle. (See, e.g., Ex. 1001 at 26:25-27:20.) For example, control of engine 40 is
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`accomplished by way of control signals provided by the microprocessor to the electronic fuel
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`injection (EFI) unit 56 and electronic engine management (EEM) unit 55. Control of (1)
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`starting of the engine 40; (2) use of motors 21 and 25 to provide propulsive torque; or (3)
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`Patent No. 7,104,347
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`Case IPR2014-00579
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`use of motors as generators to provide regenerative recharging of battery bank 22, is
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`accomplished through control signals provided by the microprocessor to the inverter/charger
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`units 23 and 27. (See, e.g., Ex. 1001 at 26:59-27:20; 28:38-49.)
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`The hybrid vehicle may be operated in a number of modes based on the vehicle’s
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`instantaneous torque requirements, the engine’s maximum torque output, the state of
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`charge of the battery, and other operating parameters. In an implementation of the ’347
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`patent, the microprocessor causes the vehicle to operate in various operating modes
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`pursuant to its control strategy.
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`For example, in mode I, the hybrid vehicle is operated as an electric car, with the
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`traction motor providing all torque to propel the vehicle. (Ex. 1001 at 37:26-35.) As the
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`vehicle continues to be propelled in electric only mode, the state of charge of the battery
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`may become depleted, and need to be recharged. In this case, the hybrid vehicle may
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`transition to mode II to recharge the battery, in which the vehicle operates as in mode I, with
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`the addition of the engine running the starter/generator motor to provide electrical energy to
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`operate the traction motor and recharge the battery. (Ex. 1001 at 37:35-39.) When the
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`internal combustion engine can operate in its fuel efficient range, the hybrid vehicle
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`operates in mode IV, with the engine providing torque to propel the vehicle. (Ex. 1001 at
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`37:45-47; 38:55-65.) If the vehicle requires additional torque, such as for acceleration or
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`hill-climbing, the vehicle may enter mode V, where the traction motor provides additional
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`torque to propel the vehicle beyond that provided by engine 40. (Ex. 1001 at 38:4-11.)
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`III.
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`PETITIONER IS BARRED OR ESTOPPED FROM REQUESTING INTER PARTES
`REVIEW CHALLENGING THE ’347 PATENT CLAIMS
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`A.
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`Introduction – The Arbitration Agreement
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`Petitioner is barred or estopped from requesting an inter partes review challenging
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`the claims of the ’347 patent in view of an Arbitration Agreement negotiated by Petitioner
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`and Patent Owner as a part of a settlement of Patent Owner’s 2010 patent infringement suit
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`against Petitioner. (Ex. 2101, Arbitration Agreement (“AA”).)
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`Case IPR2014-00579
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`Patent No. 7,104,347
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`Case IPR2014-00579
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`Petitioner has breached the Arbitration Agreement’s
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` and therefore should be estopped or barred from requesting inter partes review
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`challenging the patent claims of the ’347 patent.
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` Petitioner then filed four separate Petitions
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`Case IPR2014-00579
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`for Inter Partes Review on April 4, 2014 with the Patent Trial and Appeal Board of the U.S.
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`Patent Office. The cases are numbered: IPR2014-00568, IPR2014-00570, IPR2014-00571
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`and IPR2014-00579. On June 5, 2014, Petitioner filed four more Petitions for Inter Partes
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`Review. Those cases are numbered: IPR2014-00852, IPR2014-00884, IPR2014-00875 and
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`IPR2014-00904.
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`Each of the eight Petitions for Inter Partes Review filed by Petitioner
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` Indeed, the U.S. Patent and Trademark Office classifies IPR as a trial
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`proceeding which, among other things, determines the validity of a patent.3 Parties to IPR
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`proceedings file pleadings, take discovery, present trial briefs, participate in evidentiary
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`hearings with live testimony, and make arguments before a three administrative law judge
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`panel.
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` Petitioner breached the Arbitration Agreement by
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`3 “Inter Partes Review,” http://www.uspto.gov/aia_implementation/bpai.jsp.
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`Patent No. 7,104,347
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`Case IPR2014-00579
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` Petitioner’s eight separate IPR proceedings force Patent Owner to litigate on eight
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`separate fronts, including multiple IPR’s directed against the instant challenged ’347 patent.
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`For example, Petitioner filed 3 IPRs covering many of the same claims of the ’347 patent:
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`(1) IPR2014-00579—claims 1, 7, 8, 18, 21, 23, and 37; (2) IPR2014-00571—claims 1, 6, 7,
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`9, 15, 21, 23, and 36; and (3) IPR2014-00884—claims 1, 7, 10, 21, 23, and 24.
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`B.
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`Petitioner Has Failed to Meet the Requirements of 37 C.F.R. § 42.104
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`As discussed above, by virtue of the unambiguous terms of the Arbitration
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`Agreement, Petitioner is barred or estopped from requesting inter partes review. Under 37
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`C.F.R. § 42.104, “[t]he petitioner must certify that the patent for which review is sought is
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`available for inter partes review and that the petitioner is not barred or estopped from
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`requesting an inter partes review challenging the patent claims on the grounds identified in
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`the petition.” While Petitioner parroted the language from the rule in making its
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`“certification” in each of its eight petitions for inter partes review, Petitioner failed to bring the
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`Arbitration Agreement to the Board’s attention, or address the terms of the Agreement
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`whatsoever.
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` “Section 42.104(a) provides that a petition must demonstrate that the petitioner has
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`standing.” 77 Fed. Reg. 48688 (Aug. 14, 2012). “This requirement is to ensure that a party
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`has standing to file the inter partes review and would help prevent spuriously-instituted inter
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`partes reviews.” Id. In fact, “[f]acially improper standing will be a basis for denying the
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`petition without proceeding to the merits of the petition.” Id. By failing to address the
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`Agreement in its petition, the Petitioner has failed to meet section 42.104(a)’s requirement
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`that the Petitioner demonstrate that it has standing. For at least this additional reason, the
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`instant petition should be denied.
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`C.
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`The Board Should Exercise its Discretion Under 37 C.F.R. § 42.108(b)
`and Deny Institution of the Petition to Prevent Harm to Patent Owner
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`Moreover, even if the Petitioner had addressed or acknowledged the Arbitration
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`Agreement in its petition, the Board should exercise its discretion and deny the instant
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`petition to prevent substantial harm to the Patent Owner from the Petitioner’s breach of the
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`Agreement. First, Patent Owner will lose the benefit of the bargain it made with Petitioner,
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` and now Patent Owner will lose
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`the benefit of the bargain it believed it obtained.
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`Petitioner, on the other hand, will lose nothing if the instant petition is denied. It will
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`still have the opportunity to challenge validity
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`losing only the time between the original filing of its petition and the Board’s institution
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`decision—
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` Petitioner cannot be
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`harmed by a decision that merely requires it to live up to the contractual promises it made.
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`4 Patent Owner has concurrently-filed a Motion for Preliminary Injunction in the co-pending
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`district court case (Paice LLC and The Abell Foundation, Inc. v. Ford Motor Company, C.A.
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`No. 1:140-cv-00492-WDQ) seeking an Order requiring Petitioner to dismiss seven of the
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`IPRs to comply with the Arbitration Agreement’s
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`dismiss the instant petition and each of the other seven petitions for at least the reasons
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` the Board should
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`discussed herein.
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` Petitioner is well within the one-
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`year time bar of 35 U.S.C. § 315(b) and therefore will not be prejudiced by denial of
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`institution of each of the presently-pending petitions.
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`Accordingly, for at least these additional reasons, the Board should exercise its discretion
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`and decide not to institute inter partes review on the ground that at least Petitioner lacks
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`standing to bring the instant petition.
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`While Patent Owner has provided reasons as to why the Board should not institute
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`inter partes review based solely on the bargained-for Arbitration Agreement between the
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`parties, other reasons exist for denying certain grounds of unpatentability presented in the
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`Petitioner’s petition. Each of those reasons is discussed in further detail below.
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`IV.
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`CLAIM CONSTRUCTION
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`A claim subject to IPR is given its “broadest reasonable construction in light of the
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`specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). This means that the
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`words of the claim are given their plain meaning unless that meaning is inconsistent with the
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`specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Patent Owner submits, for
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`the purposes of the IPR only, that the claim terms are presumed to take on their broadest
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`reasonable interpretation in view of the specification of the ’347 patent.5 Under this
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`5 Because the standards of claim interpretation applied in litigation differ from PTO
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`proceedings, any interpretation of claim terms in this IPR is not binding upon Petitioner in
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`standard, and consistent with at least one district court construction of the same terms, the
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`broadest reasonable interpretation of the terms “setpoint(SP)” and “SP,” which appear in
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`claims 1, 6, 7, 9, 15, 23, and 36 of the ’347 patent, is “a definite, but potentially variable
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`value at which a transition between operating modes may occur.” (Ex. 1115 at 13.)
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`Contrary to the broadest reasonable interpretation standard, Petitioner’s proposed
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`construction for the terms “setpoint (SP)” and “SP” is based upon an improperly narrow
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`reading of the specification and completely dismisses the previous construction of the same
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`term by the U.S. District Court for the Eastern District of Texas. (See Petition at14-16.)
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`Specifically, Petitioner asserts that “setpoint (SP)” and “SP” should be construed as “a
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`predetermined torque value.” (Id. at 16.) Petitioner’s proposed construction is contrary to
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`the specification and claims of the ’347 patent.
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`The specification of the ’347 patent makes clear that the control system calculates a
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`number of sensed variables, such as “road load,” the current torque output of the engine,
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`and the state of charge of the battery, and compares those calculated values against the
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`“setpoint” to determine the mode of operation:
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`any litigation related to the ’360 patent. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir.
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`1989).
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`the microprocessor tests sense and calculated values for system variables,
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`such as the vehicle’s instantaneous torque requirement, i.e., the “road load”
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`RL, the engine’s instantaneous torque output ITO, both being expressed as a
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`percentage of the engine’s maximum torque output MTO, and the state of
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`charge of the battery bank BSC, expressed as a percentage of its full charge,
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`against setpoints, and uses the results of the comparisons to control the
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`mode of vehicle operation.
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`(Ex. 1101 at 40:21-32.)
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`The specification also discloses that the “value of a setpoint (for example) may vary
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`somewhat in response to recent history, or in response to monitored variables” and that “the
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`values given above for various numerical quantities may vary somewhat without departing
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`from the invention.” (See Ex. 1101 at 40:39-43.) Other examples of the “setpoint” varying
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`include: varying the “setpoint” “in response to a repetitive driving pattern” such as the route
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`driven by the driver each day (Ex. 1101 at 40:56-67); and varying the “setpoint” based “on
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`the mode of operation in effect when the road load equals a given setpoint SP,” e.g., varying
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`the “setpoint” for the transition between mode I and mode IV when the “road load” is
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`fluctuating around the “setpoint” (Ex. 1101 at 41:20-54). Moreover, the ’347 patent
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`specification describes that “setpoint” isn’t merely a value that is predetermined or definite,
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`but rather that it refers to a value that is potentially variable. Indeed, the ’347 patent
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`specification explicitly states that “setpoint, referred to in the appended claims as ‘SP’…is
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`obviously arbitrary and can vary substantially.” (Ex. 1101 at col. 40:50-55 (emphasis
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`added); see also id. col. 13:23-25.) In addition, claim 2 specifically recites that “the
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`controller monitors patterns of vehicle operation over time and varies said setpoint SP
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`accordingly,” which clearly shows that the setpoint SP is not necessarily a “predetermined”
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`value as Petitioner contends.
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`Additionally, Patent Owner notes that at least one district court has construed the
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`terms “setpoint” and “SP” consistent with Patent Owner’s proposed construction. (Ex. 1115
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`at 13.) In that case, the court rejected defendant’s argument that “setpoint” should be
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`construed as a “torque value” (essentially the same argument being offered by Petitioner
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`here), holding that:
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`Although it is possible that a setpoint may always be determined to be a
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`torque value, there is nothing in the claims or specification that indicate
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`a given setpoint value is actually represented in terms of torque. In fact,
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`the specification clearly indicates that the state of charge of the battery bank,
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`‘expressed as a percentage of its full charge’ is compared against setpoints,
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`the result of the comparison being used to control the mode of the vehicle.
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`’347 Patent, col. 40, ll. 28-31. Clearly a setpoint based on the battery charge
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`status is not a torque value. See also ’347 Patent, col. 41, ll. 10-19 (“It is also
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`within the scope of the invention to make setpoint SP . . . somewhat ‘fuzzy’”).
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`(Ex. 1115 at 10 (emphasis added).)
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`The District Court went on to hold that the terms “setpoint” and “SP” should be given
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`the same construction that Patent Owner offers here, namely “a definite, but potentially
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`variable value at which a transition between operating modes may occur.” Id.
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`Patent Owner also notes that Dr. Davis’ opinions hinge on Petitioner’s proposed
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`various constructions. For example, Dr. Davis states that “[f]or the purposes of this
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`declaration…regarding unpatentability,” he interprets “SP” and “Setpoint (SP)” as
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`“predetermined torque value.” (Ex. 1108 at ¶ 174; see also id. at ¶¶ 273, 295, 318, 329,
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`339, and 371.) Accordingly, if the Board rejects any of Petitioner’s constructions, Dr. Davis’
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`opinions on the corresponding claim term (or terms) are irrelevant and should be given no
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`weight.
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`V.
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`DEFECTS IN THE PROPOSED GROUND OF UNPATENTABILITY
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`The proposed ground of unpatentability is defective for at least the reasons detailed
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`below.
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`A.
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`Ground 1 is defective because Petitioner has failed to establish a prima
`facie case of obviousness with regard to its proposed combination.
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`The present Petition for inter partes review under Ground 1 should be denied
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`because Petitioner has failed to establish a prima facie case of obviousness with regard to
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`its proposed combination of Bumby I (Ex. 1103), Bumby II (Ex. 1104), Bumby III (Ex. 1105),
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`Bumby IV (Ex. 1106), and Bumby V (Ex. 1107).
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`As an initial matter, Patent Owner takes issue with Petitioner’s characterization of
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`these five references as the “Bumby Project” and subsequent reliance on same in asserting
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`that the recited features are met. First, while J.R. Bumby does appear as one of the co-
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`authors in all five publications, he is the first author in only three of the five references relied
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`upon by Petitioner (Bumby I, II, and IV). Thus, Petitioner’s characterization of all five
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`references as being authored by “Bumby, J.R. et al.” is misleading and inaccurate. (See
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`Petition at iii.) Second, while Petitioner characterizes these five references as belonging to
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`“a series of publications…that pertain to a hybrid vehicle research and development project
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`undertaken by Professor James Bumby,” these papers were published across three
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`different academic journals over a period of five years. (Id. at 18 and iii.) There is no
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`indication, contrary to Petitioner’s assertions, that these five references somehow constitute
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`“a series of publications.” Moreover, there is no reference whatsoever in any of these five
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`publications to an all-encompassing “project” that these papers describe or might fall under.
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`Regarding the proposed combination of Bumby I-V, neither the Petition nor Dr.
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`Davis’ declaration provides any articulated reasoning with some rational underpinning for
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`the assertion that a person of ordinary skill reading the publications would have been
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`motivated to combine the five Bumby references. (See Petition at 30-31.) See KSR Int'l
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`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), citing In re Kahn, 441 F.3d 977, 988 (Fed.
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`Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
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`statements; instead, there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness”); K/S HIMPP v. Hear-Wear
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`Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) (holding that “the Board cannot accept
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`general conclusions about what is ‘basic knowledge’ or ‘common sense’ as a replacement
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`for documentary evidence for core factual findings in a determination of patentability.
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`To hold otherwise would be to embark down a slippery slope which would permit the
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`examining process to deviate from the well-established and time-honored requirements that
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`rejections be supported by evidence.” (emphasis added; citations omitted)). In fact, the
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`portion of Dr. Davis’ declaration that Petitioner cites to for allegedly supporting the notion of
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`a motivated combination merely states that “a person of ordinary skill in the art…would have
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`been motivated to acquire and read the full context of the University of Durham’s hybrid
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`vehicle project” and further would have “been able to fully comprehend each of these
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`publications.” (Ex. 1108 at ¶ 194.) Dr. Davis provides no further articulation of why a
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`person of ordinary skill in the art would have been motivated to actually combine the five
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`Bumby references, nor does he explain how such a combination would have been
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`implemented. In contrast, courts have well established that ‘‘‘rejections on obviousness
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`cannot be sustained by mere conclusory statements; instead, there must be some
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`articulated reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.’” KSR, 550 U.S. at 418, (quoting In re Kahn, 441 F.3d 977, 988, (Fed. Cir.
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`2006)).
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`Moreover, arguing that the references relied upon individually teach all aspects of
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`the claimed invention, as Dr. Davis asserts, is not sufficient to establish a prima facie case
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`of obviousness without a showing of some objective reason to combine the teachings of the
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`references. Ex parte Levengood, 28 USPQ2d 1300 (B.P.A.I. 1993).
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`Therefore, Ground 1 is defective because it fails to establish a reasonable likelihood
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`that a person of ordinary skill in the art would have been motivated to combine the five
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`Bumby references.
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`B.
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`Ground 1 is additionally defective because Petitioner has failed to
`establish a reasonable likelihood that the Bumby references, even if
`combined, describe or suggest all recited features of claims 1, 7, 8, 18,
`21, 23, and 37.
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`The Board should deny the present Petition for inter partes review of claims 1 and 23
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`(and their dependent claims 7, 8, 18, 21, and 37) under Ground 1 because Petitioner has
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`failed to establish a reasonable likelihood that the five Bumby references, either alone or in
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`proper combination, describe or suggest all recited features.
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`1.
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`The Bumby references do not describe or suggest “a setpoint
`(SP) above which said engine torque is efficiently produced,” as
`recited in claim 1.
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`The Bumby references, either collectively or individually, are further deficient in
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`describing or suggesting “a setpoint (SP) above which said engine torque is efficiently
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`produced,” as recited in claim 1. Regarding setpoint (SP), Petitioner and Dr. Davis equate
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`an engine’s “lower torque bound,” which is mentioned for example in Bumby III, to
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`“predetermined torque value” and thus equivalent to the claimed “setpoint” based on their
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`proposed construction of the term. (See Ex. 1108 at ¶ 280; see also Petition at 37.)
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`However, as discussed above, “setpoint” should properly be construed