Trials@uspto.gov
`571-272-7822
`
` Paper 12
`
`Entered: September 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2014-00579
`Patent 7,104,347 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
` Paper 12
`
`Entered: September 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2014-00579
`Patent 7,104,347 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2014-00579
`Patent 7,104,347 B2
`
`
`I. INTRODUCTION
`Ford Motor Company (“Ford”) filed a Petition requesting an inter
`partes review of claims 1, 7, 8, 18, 21, 23, and 37 of U.S. Patent No.
`7,104,347 B2 (“the ’347 patent”). Paper 1 (“Pet.”). The owner of the ’347
`patent, Paice LLC & The Abell Foundation, Inc. (“Paice”), filed a
`Preliminary Response. Paper 11 (“Prelim. Resp.” ).1 We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” After considering the Petition and the Preliminary Response,
`we conclude that Ford has demonstrated a reasonable likelihood that it
`would prevail in showing unpatentability of all the challenged claims. Thus,
`we authorize institution of an inter partes review of claims 1, 7, 8, 18, 21,
`23, and 37 of the ’347 patent.
`II. BACKGROUND
`
`The ’347 Patent 2
`A.
`The ’347 patent describes a hybrid vehicle with an internal
`
`combustion engine, two electric motors (a starter motor and a traction
`motor), and a battery bank, all controlled by a microprocessor that directs
`
`
`1 Paice filed both redacted and unredacted versions of its Preliminary
`
`Response. Papers 7, 11. Our decision cites to the redacted version, i.e.,
`Paper 11, which is marked “Public.”
`2 The ’347 patent is also the subject of a co-pending case, Paice, LLC
`et al. v. Ford Motor Company, No. 1-14-cv-00492, filed Feb. 19, 2014, in
`the U.S. District Court for the District of Maryland. Pet. 1.
`2
`
`
`
`Case IPR2014-00579
`Patent 7,104,347 B2
`
`torque transfer between the engine, the motors, and the drive wheels of the
`vehicle. Ex. 1001, 17:5–45, Fig. 4. The hybrid vehicle features a hybrid
`control strategy that runs the engine only under conditions of high
`efficiency, typically when the vehicle’s instantaneous torque demand (i.e.,
`the amount of torque required to propel the vehicle at a desired speed) is at
`least equal to 30% of the engine’s maximum torque output (“MTO”). Id. at
`20:52–60, 35:5–14; see also id. at 13:47–61 (“the engine is never operated at
`less than 30% of MTO, and is thus never operated inefficiently”).
`
`Running the engine only under efficient operating conditions leads to
`improved fuel economy and reduced emissions. Id. at 13:47–51. To achieve
`such efficiency, the hybrid vehicle includes different operating modes that
`depend on the vehicle’s instantaneous torque demand, the battery’s state of
`charge, and other operating parameters. Id. at 19:53–55. For example, the
`hybrid vehicle operates in: (1) an all-electric mode, where only the traction
`motor provides the torque to propel the vehicle, whenever operation of the
`engine would be inefficient (i.e., stop-and-go city driving); (2) an engine-
`only mode, where only the engine provides the torque to propel the vehicle,
`whenever the engine can run at an efficient level (i.e., highway cruising);
`(3) a hybrid mode, where the traction motor provides additional torque to
`propel the vehicle beyond that already provided by the engine, whenever the
`instantaneous torque demand exceeds the maximum torque output of the
`engine (i.e., while accelerating, passing, and climbing hills); and (4) a
`battery recharge mode where the engine operates a generator to recharge the
`
`3
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`Case IPR2014-00579
`Patent 7,104,347 B2
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`battery while the traction motor drives the vehicle. Id. at 35:66–36:58; see
`also id. at 37:26–38:55.
`B.
`Challenged Claims
`Ford challenges independent claims 1 and 23. It also challenges
`dependent claims 7, 8, 18, and 21, which depend directly or indirectly from
`claim 1, and dependent claim 37, which depends from claim 23. Claim 1 is
`illustrative:
`A hybrid vehicle, comprising:
`1.
`an internal combustion engine controllably coupled to
`
`road wheels of said vehicle;
`
`a first electric motor connected to said engine [a]nd
`operable to start the engine responsive to a control signal;
`
`a second electric motor connected to road wheels of said
`vehicle, and operable as a motor, to apply torque to said wheels
`to propel said vehicle, and as a generator, for accepting torque
`from at least said wheels for generating current;
`
`a battery, for providing current to said motors and
`accepting charging current from at least said second motor; and
`
`a controller for controlling the flow of electrical and
`mechanical power between said engine, first and second
`motors, and wheels,
`
`wherein said controller starts and operates said engine
`when torque require[d] to be produced by said engine to propel
`the vehicle and/or to drive either one or both said electric
`motor(s) to charge said battery is at least equal to a setpoint
`(SP) above which said engine torque is efficiently produced,
`and wherein the torque produced by said engine when operated
`at said setpoint (SP) is substantially less than the maximum
`torque output (MTO) of said engine.
`
`Ex. 1001, 58:13–37.
`
`4
`
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`Case IPR2014-00579
`Patent 7,104,347 B2
`
`Independent claim 23 is directed to a “method” of controlling a hybrid
`
`vehicle. Id. at 60:22. Like claim 1, it recites an “internal combustion engine
`capable of efficiently producing torque at loads between a lower level SP
`[setpoint] and a maximum torque output MTO.” Id. at 60:23–25. Unlike
`claim 1, however, claim 23 does not require two motors but simply recites
`“one or more electric motors” for providing output torque and generating
`electrical current. Id. at 60:25–27 (emphasis added).
`C.
`Evidence of Record
`
`As its basis for challenging the claims of the ’347 patent, Ford relies
`upon five publications authored-in-part by J.R. Bumby (collectively, “the
`Bumby references”). Ford also proffers the Declaration of Dr. Gregory W.
`Davis (Ex. 1108).
`
`References
`Bumby I
`
`Bumby II
`
`Bumby III
`
`Patents/Printed Publications
`J.R. Bumby et al., Computer
`modelling of the automotive energy
`requirements for internal combustion
`engine and battery electric-powered
`vehicles, IEE PROC., v. 132, pt. A,
`no. 5, 265–279
`J.R. Bumby and I. Forster,
`Optimisation and control of a hybrid
`electric car, IEE PROC., v. 134, pt. D,
`no. 6, 373–387
`I. Forster and J.R. Bumby, A hybrid
`internal combustion engine/battery
`electric passenger car for petroleum
`displacement, PROC. INST. MECH.
`ENGRS., v. 202, no. D1, 51–64
`
`5
`
`Date
`Sep. 1985
`
`Exhibit
`1103
`
`Nov. 1987 1104
`
`Jan. 1988
`
`1105
`
`
`
`Case IPR2014-00579
`Patent 7,104,347 B2
`
`References
`Bumby IV
`
`Bumby V
`
`Patents/Printed Publications
`J.R. Bumby and P.W. Masding, A
`Test-Bed Facility for Hybrid IC
`Engine-Battery Electric Road Vehicle
`Drive Trains, TRANS. INST. MEAS. &
`CONT., v. 10, no. 2, 87–97
`P.W. Masding and J.R. Bumby,
`Integrated microprocessor control of
`a hybrid i.c. engine/battery-electric
`automotive power train, TRANS. INST.
`MEAS. & CONT., v. 12, no. 3, 128-146
`
`Date
`Apr. 1988
`
`Exhibit
`1106
`
`Jan. 1990
`
`1107
`
`
`D.
`
`Asserted Ground of Unpatentability
`Ford asserts the following single ground in challenging the
`patentability of the claims.
`
`Ground
`
`§ 103
`
`Basis
`Bumby I, II, III, IV, V (collectively,
`“the Bumby references”)
`
`Challenged Claims
`
`1, 7, 8, 18, 21, 23, 37
`
`III. ANALYSIS
`
`Standing
`A.
`Paice contends that Ford is “barred or estopped” under 37 C.F.R.
`
`§ 42.104(a) from requesting inter partes review of the ’347 patent due to an
`alleged breach of an arbitration agreement between the parties. Prelim.
`Resp. 5–12. According to Paice, the arbitration agreement includes
`“unambiguous terms” that purportedly limit Ford’s ability to “challeng[e]
`the patent claims of the ’347 patent.” Id. at 7, 9–10. Postulating that Ford is
`in breach of those terms, Paice asserts that Ford has failed to demonstrate the
`requisite standing to file the instant Petition. Id. at 11.
`6
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`Case IPR2014-00579
`Patent 7,104,347 B2
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`The purported “standing” argument raised by Paice, however, relates
`
`to a disputed contractual matter that falls outside the purview of our
`authority under the Leahy-Smith America Invents Act, Pub. L. No. 112–29,
`125 Stat. 284 (2011). Indeed, the question of whether Ford has breached the
`arbitration agreement by requesting inter partes review of the ’347 patent is
`currently the subject of a preliminary injunction motion filed by Paice in the
`co-pending district court action, and yet to be decided. Prelim. Resp. 11 n.4.
`As such, we reject Paice’s attempt to frame this unresolved breach-of-
`contract issue as a standing issue ripe for our review. Based on the current
`record, Paice has not demonstrated that Ford is barred or estopped from
`challenging the ’347 patent.
`B.
`Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in the context of the patent in which
`they appear. 37 C.F.R. § 42.100(b). Ford contends that five claim
`limitations are in need of construction, namely, “road load (RL),” “setpoint
`(SP),” “low-load mode I,” “highway cruising mode IV,” and “acceleration
`mode V.” Pet. 12–17. We construe the relevant limitations as follows.
`1.
`“road load (RL)”
`The term “road load” or “RL” is found in independent claim 23 and
`dependent claim 7. The specification defines “road load” as “the vehicle’s
`instantaneous torque demands, i.e., that amount of torque required to propel
`the vehicle at a desired speed,” and further notes that it “can be positive or
`negative, i.e., when decelerating or descending a hill, in which case the
`
`7
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`Case IPR2014-00579
`Patent 7,104,347 B2
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`negative road load . . . is usually employed to charge the battery.” Ex. 1001,
`12:40–57. We see no reason to deviate from the specification’s express
`definition. Thus, consistent with the specification, we construe “road load”
`as “the amount of instantaneous torque required to propel the vehicle, be it
`positive or negative.”
`2.
`“setpoint (SP)”
`Independent claims 1 and 23 recite that the internal combustion
`
`engine efficiently produces torque at loads between a “setpoint (SP)” and a
`“maximum torque output (MTO).” Paice seeks to construe the term
`“setpoint” as “a definite, but potentially variable value at which a transition
`between operating modes may occur.” Prelim. Resp. 13. Ford, on the other
`hand, asserts that “setpoint” means a “predetermined torque value.” Pet. 14,
`16.
`The specification of the ’347 patent states that the value of a setpoint
`
`“may vary somewhat” or be “reset” in response to repetitive driving patterns
`or other monitored variables. Ex. 1001, 40:37–59. But, just because a
`setpoint may change under certain circumstances does not foreclose it from
`being “set” or “determined” at a prior point in time. Any other construction
`would defeat the purpose of it being “set,” which the ’347 patent admits is
`for comparison sake. For instance, the specification states that “the
`microprocessor tests sensed and calculated values for system variables [such
`as road load (RL)] . . . against setpoints, and uses the results of the
`comparisons to control the mode of vehicle operation.” Ex. 1001, 40:22–31
`(emphasis added). That description makes clear that the microprocessor is
`
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`Case IPR2014-00579
`Patent 7,104,347 B2
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`comparing a just-derived value against a previously-defined value. As such,
`we construe the term “setpoint” to at least mean a “predetermined value that
`may or may not be reset.” The inquiry does not end there, however.
`
`Next, Paice takes issue with Ford’s construction of “setpoint” as being
`limited to a “torque value.” Prelim. Resp. 13–15. According to Paice, the
`specification describes setpoint as both a “torque value” and a “battery
`charge status.” Id. at 15 (citing Ex. 1115 at 10). We agree that the
`specification provides that either “torque output” or “state of charge of the
`battery bank” can be compared against setpoints. Ex. 1001, 40:28–31. The
`claim language, however, is not so broad. Although the specification is an
`important tool in claim construction, it is the claim language itself—and the
`manner in which a disputed term is used in the context of the claim—which
`controls the ultimate determination.
`Here, contrary to Paice’s assertion, the claim language consistently
`refers to a “setpoint” in terms of a “torque” value. For example, claim 1
`recites that the “torque require[d] . . . is at least equal to a setpoint (SP)
`above which said engine torque is efficiently produced, and wherein the
`torque produced by said engine when operated at said setpoint (SP) is
`substantially less than the maximum torque output (MTO) of said engine.”
`Nowhere does the claim refer to “setpoint” or “SP” in the context of a
`battery’s “state of charge.” Likewise, although claim 23 includes the step of
`“monitoring the state of charge of said battery,” the claim never makes a
`comparison between the battery’s “state of charge” and a “setpoint.”
`Instead, claim 23 consistently references a “setpoint” or “SP” in terms of
`
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`“torque,” e.g., “producing torque at loads between a lower level SP and a
`maximum torque output”; “when the torque RL required to do so is less than
`said lower level SP”; “using the torque between RL and SP to drive said at
`least one electric motor”; and “the torque produced by said engine when
`operated at said setpoint (SP) is substantially less than the maximum torque
`output.” Ex. 1001, 60:22–54 (emphasis added). Thus, given the claim
`language’s clear correlation of a “setpoint” or “SP” to a torque value, we
`construe the terms “setpoint” and “SP” to mean “a predetermined torque
`value.”
`“low-load mode I,” “highway cruising mode IV,” and
`3.
`
`“acceleration mode V”
`
`
`Claim 7 expressly defines the terms “low-load mode I,” “highway
`cruising mode IV,” and “acceleration mode V,” within the body of the claim.
`Ex. 1001, 58:58–59:8. As such, for purposes of institution, no further
`construction of these terms is necessary at this time.
`C.
`Asserted Ground
`
`1.
`Obviousness over Bumby I, II, III, IV, and V
`
`Ford challenges claims 1, 7, 8, 18, 21, 23, and 37 of the ’347 patent on
`a single ground—that the claimed invention would have been obvious over
`the collective teachings of the five Bumby references. Pet. 31–59. In
`support of this ground, Ford provides a detailed claim chart explaining how
`each claim limitation is met by the Bumby references and why a skilled
`artisan would have been led to combine their teachings to arrive at the
`claimed invention. Id. at 28–59. Taken together, the five Bumby references
`
`
`
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`Case IPR2014-00579
`Patent 7,104,347 B2
`
`disclose a hybrid-vehicle arrangement in which both the internal combustion
`engine and the electric motor are capable of driving the road wheels directly,
`with the mix of power between the engine and motor being controlled by a
`microprocessor. Ex. 1104 at 1, Fig. 2; Ex. 1108 ¶¶ 238-244. In order to
`maximize engine efficiency, Bumby describes a hybrid control strategy that
`operates the engine only “when load demand is high,” rather than at “low
`speed, low load situations [where] the ic engine is inefficient compared with
`the electric traction system.” Ex. 1106 at 3–4; Ex. 1108 ¶¶ 251–255, 258.
`Notably, Bumby defines “maximum engine efficiency” in terms of a “lower
`torque bound” and an “upper torque bound.” Ex. 1104 at 10–11, Fig. 16;
`Ex. 1105 at 7–8, Fig. 8.
`
`Based on the current record, we find credible the testimony of Ford’s
`declarant, Dr. Davis, who equates Bumby’s “lower” and “upper” torque
`boundaries — for maximizing engine efficiency — to the “setpoint” and
`“maximum torque output” limitations recited by the challenged claims. Ex.
`1108 ¶¶ 277–293. We also are persuaded by Dr. Davis’s explanation of how
`the Bumby references teach the use of a starter motor in the manner required
`by challenged claim 1. Ex. 1106 at 7 (describing “a conventional starter
`motor”); Ex. 1108 ¶¶ 248–249. And, in disclosing the claimed “operating
`modes,” Bumby describes a “low-load” all-electric mode, a “long distance,
`high-speed travel” engine-only mode, a “battery charge” mode, and an
`“accelerator” mode. Ex. 1107 at 4; see also Ex. 1106 at 3; Ex. 1105 at 11–
`12; Ex. 1104 at 13.
`
`11
`
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`Case IPR2014-00579
`Patent 7,104,347 B2
`
`Paice argues that neither the Petition nor Dr. Davis’s Declaration
`
`articulates sufficient reasoning for combining the five Bumby references.
`Prelim. Resp. 17–18. We do not find this argument persuasive. Given the
`related nature of the five Bumby references, including the significant overlap
`of their disclosures and the cross-citations to preceding Bumby references,
`we are persuaded that a skilled artisan would have been led to combine the
`teachings of the five Bumby references in an obvious manner to arrive at the
`claimed invention. See Pet. 28–30 (citing Ex. 1108 ¶¶ 189–194).
`Paice next takes issue with Dr. Davis’s conclusion that Bumby’s
`disclosure of a “lower torque bound” is equivalent to the claimed “setpoint”
`of claims 1 and 23. Prelim. Resp. 19–21. According to Paice, Dr. Davis
`fails to indicate how Bumby’s lower torque bound is “potentially variable”
`or “may be varied in any way.” Id. at 20–21. Paice’s contention, however,
`is premised on an incorrect construction of “setpoint.” As properly
`construed above, “setpoint” simply requires that the torque value be
`“predetermined.” Although the claim language does not preclude the
`“setpoint” from being reset (e.g., based on driver tendencies), nothing in the
`claim language requires that it be “variable,” as Paice contends.
`
`Having considered the information presented in the Petition and the
`Preliminary Response, we are persuaded that Ford has demonstrated a
`reasonable likelihood of showing that a skilled artisan would have found the
`subject matter of independent claims 1 and 23 obvious over the combined
`teachings of the five Bumby references. Also, we have considered Ford’s
`challenge of the dependent claims. Pet. 39–49, 59. Paice does not argue any
`
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`Case IPR2014-00579
`Patent 7,104,347 B2
`
`of the dependent claims separately from the independent claims. See Prelim.
`Resp. 16–22. Regardless, the information presented in the Petition
`persuades us that the limitations of the challenged dependent claims also
`would have been obvious over the Bumby references.
`IV. CONCLUSION
`Based on the arguments and evidence presented in the Petition, we
`determine that Ford has demonstrated a reasonable likelihood that it would
`prevail in establishing that the subject matter of claims 1, 7, 8, 18, 21, 23,
`and 37 would have been obvious under 35 U.S.C. § 103.
`V. ORDER
`For the foregoing reasons, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review
`of challenged claims 1, 7, 8, 18, 21, 23, and 37 of the ’347 patent is
`instituted on the asserted ground of obviousness over the five Bumby
`references;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, inter partes review of the ’347 patent shall commence on the
`entry date of this Order, and notice is hereby given of the institution of a
`trial; and
`FURTHER ORDERED that no ground other than that specifically
`listed above is authorized for inter partes review of the ’347 patent.
`
`
`
`
`
`
`
`13
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`Case IPR2014-00579
`Patent 7,104,347 B2
`
`
`FOR PETITIONER:
`
`Frank Angileri
`John Nemazi
`John Rondini
`BROOKS KUSHMAN P.C.
`FPGP0101IPR3@brookskushman.com
`jrondini@brookskushman.com
`
`Kevin Greenleaf
`Lissi Mojica
`DENTONS US LLP
`kevin.greenleaf@dentons.com
`lissi.mojica@dentons.com
`
`FOR PATENT OWNER:
`
`Timothy W. Riffe
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`riffe@fr.com
`IPR36351-0011IP1@fr.com
`
`14
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