UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC
`Patent Owner.
`
`______________
`
`
`
`U.S. Patent No. 7,455,134 to Severinsky et al.
`
`IPR Case No.: IPR2014-00852
`
`______________
`
`
`
`SECOND PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1-3, 5-6, 19, 27, 40 and 58 OF U.S. PATENT NO. 7,455,134)
`
`
`
`
`
`
`i
`
`

`

`
`TABLE OF CONTENTS
`
`
`
`EXHIBIT LIST ........................................................................................................ iv
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1
`
`A.
`B.
`C.
`D.
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1) ..................................... 1
`Related Matters - 37 C.F.R. § 42.8(b)(2) .............................................. 1
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3) ........................... 2
`Service Information - 37 C.F.R. § 42.8(b)(4) ....................................... 2
`
`III. GROUNDS FOR STANDING AND PROCEDURAL STATEMENT
`UNDER 37 C.F.R. § 42.104(a) ............................................................ 3
`
`IV. OVERVIEW OF CHALLENGE UNDER 37 C.F.R. §42.104(b)(2) ............. 3
`
`A.
`B.
`
`Prior Art ................................................................................................. 3
`Grounds of Challenge ............................................................................ 5
`
`V.
`
`STATE OF THE ART ..................................................................................... 5
`
`A.
`B.
`C.
`
`‘134 Patent Family ................................................................................ 8
`Background ........................................................................................... 9
`Purported Invention ............................................................................... 9
`1.
`The claimed HEV architecture and general electrical
`characteristics are old ..............................................................11
`The claimed voltage to current ratio of “at least 2.5” is
`old and arbitrary .......................................................................12
`
`2.
`
`VI. PERSON OF ORDINARY SKILL IN THE ART ........................................12
`
`VII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3) ..................13
`
`A.
`B.
`
`“Start And Stop The Engine” ...............................................................14
`“Road Load” ........................................................................................14
`
`VIII. UNPATENTABILITY GROUNDS ..............................................................16
`
`A. GROUND 1: Claims 1-3, 5 and 6 are obvious over Ehsani and
`Ehsani NPL ..........................................................................................16
`1.
`Overview of the Ehsani references ...........................................16
`2.
`Independent Claim 1 .................................................................18
`3.
`Dependent Claims 2, 3, 5 and 6 ................................................26
`4.
`Rationale to Combine ...............................................................29
`
`ii
`
`

`

`B.
`
`GROUND 2: Claim 40 is obvious over Ehsani, Ehsani NPL and
`Vittone .................................................................................................30
`1.
`Limitation[40] [a]: “wherein a rate of change of torque
`output of said engine is limited to a threshold value” ..............33
`GROUND 3: Claim 58 is obvious over Ehsani ..................................35
`C.
`D. GROUND 4: Claims 1-3, 5-6, 19 and 58 are obvious over
`Kawakatsu in view of Ehsani ..............................................................42
`1.
`Independent Claim 1 .................................................................42
`2.
`Dependent Claims 2, 3, 5 and 6 ................................................49
`3.
`Dependent Claim 19 .................................................................49
`4.
`Independent Claim 58 ...............................................................52
`5.
`Rationale to Combine ...............................................................57
`GROUND 5: Claim 27 is obvious over Kawakatsu, Ehsani and
`Yamaguchi ...........................................................................................57
`1.
`Dependent Claim 27 .................................................................57
`2.
`Rationale to Combine ...............................................................58
`
`E.
`
`IX. OBVIOUSNESS SHOWING ........................................................................58
`
`A. Objective Indicia of Nonobviousness .................................................58
`B.
`The Proposed Grounds Are Not Redundant ........................................59
`
`X.
`
`CONCLUSION ..............................................................................................60
`
`CERTIFICATE OF SERVICE ................................................................................61
`
`
`
`
`
`iii
`
`

`

`Exhibit
`No.
`1101
`1102
`1103
`1104
`1105
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`
`1112
`
`1113
`
`EXHIBIT LIST
`
`Description
`U.S. Patent No. 7,455,134
`Declaration of Dr. Jeffrey L. Stein
`U.S. Patent No. 5,586,613
`U.S. Patent No. 4,335,429
`U.S. Patent No. 5,865,263
`Gao et al., The Energy Flow
`Management and Battery Energy
`Capacity Determination for the Drive
`Train and Electrically Peaking Hybrid
`Vehicle, SAE 972647 (1997)
`Vittone, Fiat Conceptual Approach to
`Hybrid Car Design,” 12th International
`Electric Vehicle Symposium, 1994)
`File History for U.S. Patent No.
`7,455,134
`John B. Heywood, Internal
`Combustion Engine Fundamentals
`(McGraw-Hill 1988)
`Hawley, G.G., The Condensed
`Chemical Dictionary, Van Nostrand
`Reinhold Co., 9th ed. (1977)
`Michael Duoba, Ctr. for Transp.
`Research, Argonne Nat’l Lab.,
`Challenges for the Vehicle Tester in
`Characterizing Hybrid Electric
`Vehicles, 7th CRC on Road Vehicle
`Emissions Workshop (April 1997)
`Kozo Yamaguchi et al., Development
`of a New Hybrid System – Dual
`System, SAE Technical Paper 960231
`(February 1996)
`General Electric Company, Corp.
`Research & Dev., Near-Term Hybrid
`Vehicle Program, Final Report -
`Phase 1 (October 1979)
`
`iv
`
`Identifier
`‘134 Patent
`Stein Decl.
`Ehsani
`Kawakatsu
`Yamaguchi
`Ehsani NPL (non-patent
`literature)
`
`Vittone
`
`‘134 File History
`
`Heywood
`
`The Condensed Chemical
`Dictionary
`
`Duoba
`
`Yamaguchi Paper
`
`GE Final Report
`
`

`

`Exhibit
`No.
`1114
`1115
`
`1116
`
`1117
`1118
`
`1119
`
`1120
`1121
`
`1122
`
`1123
`
`1124
`
`
`
`Description
`U.S. Patent No. 5,343,970
`Claim Construction Order (Case No.
`2:04-cv-00211)
`Plaintiff Paice LLC and Abell
`Foundation, Inc.’s Opening Claim
`Construction Brief (Case No. 1:12-cv-
`00499)
`U.S. Patent No. 913,846
`Society of Automotive Engineers
`Special Publication, Technology for
`Electric and Hybrid Vehicles, SAE
`SP-1331 (February 1998)
`Catherine Anderson & Erin Pettit, The
`Effects of APU Characteristics on the
`Design of Hybrid Control Strategies
`for Hybrid Electric Vehicles, SAE
`Technical Paper 950493 (1995)
`U.S. Patent No. 3,888,325
`L. E. Unnewehr et al., Hybrid Vehicle
`for Fuel Economy, SAE Technical
`Paper 760121 (1976)
`Brown, T.L. et al., Chemistry, The
`Central Science, Third Edition (1985)
`Grunde T. Engh & Stephen Wallman,
`Development of the Volvo Lambda-
`Sond System, SAE Technical Paper
`770295 (1977)
`A. G. Stefanopoulou et al., Engine
`Air-Fuel Ratio and Torque Control
`using Secondary Throttles,
`Proceedings of the 33rd IEEE
`Conference on Decision and Control
`(December 1994)
`
`Identifier
`Severinsky ‘970
`Toyota Litigation
`
`Hyundai Litigation
`
`Pieper
`SAE SP-1331
`
`Anderson
`
`Reinbeck
`Unnewehr
`
`Brown
`
`Engh
`
`Stefanopoulou
`
`v
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`FORD MOTOR COMPANY (“Ford” or “Petitioner”) petitions for inter
`
`partes review, seeking cancellation of claims 1-3, 5-6, 19, 27, 40 and 58 of U.S.
`
`Patent No. 7,455,134 to Severinsky et al. (“the ‘134 Patent,” Ex. 1101), which is
`
`owned by PAICE, LLC et al.
`
`Through this Petition, and the Declaration of Dr. Jeffrey L. Stein (“Stein
`
`Decl., Ex. 1102), Petitioner demonstrates that, by a preponderance of the evidence,
`
`there is a reasonable likelihood that challenged claims 1-3, 5-6, 19, 27, 40 and 58
`
`of the ‘134 Patent are unpatentable over the prior art. Inter partes review of the
`
`‘134 Patent should be instituted.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`
`Petitioner certifies that Ford Motor Company (“Petitioner”) is the real party-
`
`in-interest.
`
`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`
`Petitioner identifies the following judicial matters:
`
`1) Paice, LLC et al. v. Ford Motor Company, Case Number 1-14-cv-00492
`
`filed February 19, 2014 in the District of Maryland, Baltimore Division. The ‘134
`
`Patent is being asserted in this proceeding, along with four other patents within the
`
`same patent family as the ‘134 Patent—namely, U.S. Patent Nos. 7,104,347,
`
`1
`
`

`

`
`
`7,237,634, 7,559,388 and 8,214,097.
`
`2) Paice LLC et al. v. Hyundai Motor America, et al., Case Number
`
`1:2012cv00499 filed on February 16, 2012 in the District of Maryland, Baltimore
`
`Division. The ‘134 Patent has not been asserted in that proceeding, however, it is
`
`part of the same family of patents that have been asserted.
`
`3) IPR petitions were filed April 4, 2014, directed to patents that are
`
`included in the above litigation proceeding and part of the same family of patents
`
`—specifically, IPR2014-00568, IPR2014-00570, IPR2014-00571, and IPR2014-
`
`00579. Additionally, petitions have been concurrently filed on this day on patents
`
`that are part of the ‘134 Patent family – specifically IPR2014-00875, IPR2014-
`
`00884 and IPR2014-00904.
`
`C. Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
`
`Ford appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman P.C.
`
`as lead counsel, and appoints Sangeeta G. Shah (Reg. No. 38,614), Andrew B.
`
`Turner (Reg. No. 63,121) and Michael D. Cushion (Reg. No. 55,094) of Brooks
`
`Kushman P.C., as well as Lissi Mojica (Reg. No. 63,421) and Kevin Greenleaf
`
`(Reg. No. 64,062) of Dentons US LLP, as back-up counsel. An appropriate Power
`
`of Attorney is filed concurrently herewith.
`
`D.
`
`Service Information - 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made via
`
`2
`
`

`

`
`
`hand-delivery to Brooks Kushman P.C., 1000 Town Center, 22nd Floor, Southfield,
`
`Michigan 48075 and Dentons US LLP, 233 South Wacker Drive, Suite 7800,
`
`Chicago, IL 60606-6306.
`
` Petitioner consents
`
`to service by email at
`
`FPGP0106IPR2@brookskushman.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com and iptdocketchi@dentons.com.
`
`III. GROUNDS FOR STANDING AND PROCEDURAL
`STATEMENT UNDER 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ‘134 Patent is available for inter partes review
`
`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the claims of the ‘134 Patent on the grounds identified in this Petition.
`
`The undersigned authorizes the U.S. Patent and Trademark Office (“PTO”)
`
`to charge Petitioner’s Deposit Account No. 06-1510 for the Petition fees. Any
`
`additional fees or overpayment credits can be charged to the above-referenced
`
`Deposit Account.
`
`IV. OVERVIEW OF CHALLENGE UNDER 37 C.F.R. §42.104(b)(2)
`
`Inter partes review of the challenged claims of the ‘134 Patent is requested
`
`on the grounds for unpatentability noted in the table on page 5, based on the
`
`identified prior art.
`
`A.
`
`Prior Art
`
`Petitioner relies on the following patent and publications:
`
`
`
`1.
`
`U.S. Patent No. 5,586,613 to Ehsani (“Ehsani,” Ex. 1103),
`
`3
`
`

`

`
`
`which issued on December 24, 1996, is prior art under 35 U.S.C. § 102(b).
`
`
`
`2.
`
`U.S. Patent No. 4,335,429 to Kawakatsu (“Kawakatsu,” Ex.
`
`1104), which issued on June 15, 1982, is prior art under 35 U.S.C. § 102(b).
`
`
`
`3.
`
`U.S. Patent No. 5,865,263 to Yamaguchi et al. (“Yamaguchi,”
`
`Ex. 1105), which was filed in the U.S. on February 23, 1996 and issued on
`
`February 2, 1999, is prior art under 35 U.S.C. § 102(e).
`
`
`
`4.
`
`Gao et al., The Energy Flow Management and Battery Energy
`
`Capacity Determination for the Drive Train and Electrically Peaking Hybrid
`
`Vehicle, SAE 972647 (1997) (“Ehsani NPL,” Ex. 1106), which was published in
`
`August 1997 is prior art under 35 U.S.C. § 102(b). “NPL” is an abbreviation for
`
`non-patent literature. The inventor listed on Ehsani is a co-author of Ehsani NPL.
`
`
`
`5.
`
`Vittone, Fiat Conceptual Approach to Hybrid Car Design,” 12th
`
`International Electric Vehicle Symposium (1994) (“Vittone,” Ex. 1107), which
`
`was published in December, 1994 is prior art under 35 U.S.C. § 102(b).
`
`None of these references were applied by the Examiner during prosecution
`
`of the ‘134 Patent. Further, the references that were of record, Ehsani, Kawakatsu
`
`and Yamaguchi, are presented in a new light.
`
`
`
`
`
`4
`
`

`

`
`
`B. Grounds of Challenge
`
`Ground
`
`Reference(s)
`
`Basis
`
`Claims
`Challenged
`
`1
`
`2
`
`3
`
`4
`
`Ehsani and Ehsani NPL
`
`§ 103
`
`1-3, 5 and 6
`
`Ehsani, Ehsani NPL and Vittone
`
`§ 103
`
`40
`
`Ehsani
`
`§ 103
`
`58
`
`Kawakatsu and Ehsani
`
`§ 103
`
`1-3, 5, 6, 19
`
`and 58
`
`5
`
`Kawakatsu, Ehsani and Yamaguchi
`
`§103
`
`27
`
`
`V.
`
`STATE OF THE ART
`
`Hybrid Electric Vehicles (HEVs) were conceived in an attempt to combine
`
`and utilize the power capabilities of electric motors and internal combustion
`
`engines to satisfy all the torque required or demanded for propelling the vehicle, in
`
`a fuel efficient manner. (Stein Decl., Ex. 1102, ¶49.) While HEVs date back over
`
`100 years, substantial advancements to engine technology limited HEV research
`
`and development (R&D) for the early portion of the 20th Century. Id. at ¶¶50-51.
`
`The Clean Air Act and other regulatory events in the 1960s and 1970s
`
`spurred a renewed interest in HEV R&D to further increase vehicle efficiency and
`
`to improve emissions. Id. at ¶51. Such R&D resulted in advancements to HEV
`
`architectures and operating control strategies. (Stein Decl., Ex. 1102, ¶52.)
`
`5
`
`

`

`
`
`During this time, various HEV powertrain architectures became well-known.
`
`See Kozo Yamaguchi et al., Development of a New Hybrid System – Dual System,
`
`SAE Technical Paper 960231 (February 1996) (“Yamaguchi Paper,” Ex. 1112.)
`
`Such architectures included: (A) “series” HEVs (“SERIES SYSTEM”) that
`
`mechanically connected and used the motor to supply all propulsive torque to the
`
`wheels; (B) “parallel” HEVs (“PARALLEL SYSTEM”) that used an engine and
`
`motor either separately or in combination to provide the required torque to the
`
`wheels; and (C) “series-parallel” HEVs (“SERIES-PARALLEL COMBINED
`
`SYSTEM”) that are essentially parallel HEVs having a second motor/generator
`
`that can operate in both a parallel mode and a series mode. (Yamaguchi Paper, Ex.
`
`1112 at 3-4, Figure 1; Stein Decl., Ex. 1102, ¶¶53-58.)
`
`Yamaguchi Paper, Ex. 1112 at 4, Figure 1 (annotated)
`
`
`
`6
`
`

`

`
`
`With regards to control strategies, it was known that engines operate
`
`inefficiently and have “high fuel consumption” relative to power output at low
`
`vehicle speeds and low torque levels (i.e., low “loads”). (Stein Decl., Ex. 1102,
`
`¶¶59-61.) Thus, it was known to modify engine control strategies to limit operation
`
`of the engine to its most efficient operating range – to minimize emission and
`
`energy consumption. Id.
`
`Indeed, the control strategy in U.S. Patent No. 5,343,970 issued in 1994 to
`
`Alex Severinsky (“Severinsky ‘970,” Ex. 1114), one of the inventors listed on the
`
`‘134 Patent, is similar to the strategy set forth in the challenged claims. According
`
`to both Severinsky ‘970 and the ‘134 Patent, the internal combustion engine is
`
`operated only under the most efficient conditions of output power and speed. (Stein
`
`Decl., Ex. 1102, ¶¶62-63.)
`
`Likewise, the desired electrical characteristics of HEV systems were known
`
`at least as early as 1979. (Stein Decl., Ex. 1102, ¶84.) In a project funded by the
`
`U.S. government, researchers and developers at General Electric expressed the
`
`desirability of high voltage and low current systems in hybrid electric vehicle
`
`design. General Electric Company, Corp. Research & Dev., Near-Term Hybrid
`
`Vehicle Program, Final Report - Phase 1 (October 1979) (“GE Final Report,” Ex.
`
`1113 at 504, 523). The study also recommended AC induction motors with voltage
`
`inverters for medium and long-term development, but chose DC motors in the
`
`7
`
`

`

`
`
`near-term because of their lower cost, wider availability and the need to develop
`
`high-power transistors. (GE Final Report, Ex. 1113 at 99, 460, and 492-504; Stein
`
`Decl., Ex. 1102, ¶85.) Severinsky ‘970 further articulates a preference for high
`
`voltage/low current hybrid systems that include an AC traction motor with a bi-
`
`directional AC/DC converter. (Severinsky ‘970, Ex. 1114, 5:60-6:17; Stein Decl.,
`
`Ex. 1102, ¶¶86-87.) OVERVIEW OF THE ‘134 PATENT
`
`A.
`
`‘134 Patent Family
`
`As shown graphically below, the ‘134 Patent (highlighted in blue), a
`
`divisional in an extensive chain of filings, claims priority to two separate
`
`provisional applications – Provisional Appl. No. 60/100,095, filed September 14,
`
`1998, and Provisional Appl. No. 60/122,296, filed March 1, 1999. Notably, while
`
`the claim of priority is not relevant to this challenge, it is a basis of the
`
`unpatentability grounds in the related proceeding involving the ‘134 Patent, Case
`
`No. IPR 2014-00568. The diagram below shows the ‘134 Patent and its ancestors.
`
`Other related patents and pending applications in the same patent family are not
`
`shown.
`
`
`
`8
`
`

`

`
`
`B.
`
`Background
`
`The ‘134 Patent is directed to a “hybrid vehicle” design that includes an
`
`internal combustion engine (“engine”), traction motor, starter motor and battery
`
`bank, all controlled by a microprocessor. (‘134 Patent, Ex. 1101, Abstract.) The
`
`microprocessor generally controls the operational mode of the hybrid vehicle so
`
`that the engine operates only under conditions of high efficiency in order to
`
`improve fuel economy. (‘134 Patent, Ex. 1101, Abstract, 13:24-36.) The ‘134
`
`Patent admits that “the prior art, including the ‘970 patent, clearly discloses the
`
`desirability of operating an internal combustion engine in its most efficient
`
`operating range.” (‘134 Patent, Ex. 1101, 11:9-12.)
`
`During prosecution, the Patentee submitted over 500 references to the PTO.
`
`The ‘134 Patent was allowed without rejection or objection in the first Office
`
`action. (‘134 File History, Ex. 1108 at 375-379; Stein Decl., Ex. 1102, ¶¶97-99.)
`
`C.
`
`Purported Invention
`
`Claim 1 of the ‘134 Patent is merely directed toward a well-known hybrid
`
`vehicle topology with electrical components providing a relatively high maximum
`
`DC voltage-to-current supplied ratio. (Stein Decl., Ex. 1102, ¶88.)
`
`
`
`9
`
`

`

`
`
`Claim 1 (emphasis added) is directed to1:
`
`
`
`
`
`1.
`
`A hybrid vehicle, comprising:
`
`at least two wheels, operable to receive power to propel said
`
`hybrid vehicle;
`
`
`
`a first alternating current (AC) electric motor, operable to
`
`provide power to said at least two wheels to propel said hybrid
`
`vehicle;
`
`
`
`
`
`a second AC electric motor;
`
`an engine coupled to said second electric motor, operable to
`
`provide power to said at least two wheels to propel the hybrid vehicle,
`
`and/or to said second electric motor to drive the second electric motor
`
`to generate electric power;
`
`
`
`a first alternating current-direct current (AC-DC) converter
`
`having an AC side coupled to said first electric motor, operable to
`
`accept AC or DC current and convert the current to DC or AC
`
`current respectively;
`
`
`
`a second AC-DC converter coupled to said second electric
`
`motor, at least operable to accept AC current and convert the current
`
`to DC;
`
`
`
`an electrical storage device coupled to a DC side of said AC-
`
`DC converters, wherein the electrical storage device is operable to
`
`store DC energy received from said AC-DC converters and provide
`
`DC energy to at least said first AC-DC converter for providing power
`
`to at least said first electric motor; and
`
`
`1 For ease of reference, quoted claim language has been italicized throughout.
`
`10
`
`

`

`
`
`
`
`a controller, operable to start and stop the engine to minimize
`
`fuel consumption;
`
`
`
`wherein a ratio of maximum DC voltage on the DC side of at
`
`least said first AC-DC converter coupled to said first electric motor
`
`to current supplied from said electrical storage device to at least said
`
`first AC-DC converter, when maximum current is so supplied, is at
`
`least 2.5.
`
`1.
`
`The claimed HEV architecture and general electrical
`characteristics are old
`
`The hybrid vehicle topology recited in claim 1 of the ‘134 Patent is a two-
`
`motor parallel HEV, often called a series-parallel HEV, in which a second motor
`
`operates as a generator – an architecture that has been around since at least 1982.
`
`(See Kawakatsu, Ex. 1104, Abstract, Figure 3; Stein Decl., Ex. 1102, ¶89.)
`
`Microcontroller-based engine operation in HEVs also dates back to at least 1982.
`
`(See Kawakatsu, Ex. 1104, Fig. 4; Stein Decl., Ex. 1102, ¶89.) Likewise, the
`
`desirability of high voltage and low current systems in HEV design was known at
`
`least as early as 1979 and expressly acknowledged in 1992, by a co-inventor of the
`
`‘134 Patent, in Severinsky ‘970. (Severinsky ‘970, Ex. 1114, 6:5-11; Stein Decl.,
`
`Ex. 1102, ¶¶90-91.)
`
`As the HEV powertrain architecture and general electrical characteristics
`
`were well known in the prior art, it seems that the only purported invention in
`
`claim 1 of the ‘134 Patent was the placement of the lower limit of the claimed
`
`11
`
`

`

`
`
`range of ratios of “maximum DC voltage. . . to current supplied” at 2.5—a
`
`limitation in all of the independent claims. (Stein Decl., Ex. 1102, ¶92.)
`
`2.
`
`The claimed voltage to current ratio of “at least 2.5”
`is old and arbitrary
`
`Other than a general statement that the ratio “appears useful” in sizing
`
`components with respect to one another, the ‘134 Patent offers no other
`
`explanation or examples to support the 2.5:1 ratio demarcation (‘134 Patent, Ex.
`
`1101, 49:37-42). No specific function is set forth for the 2.5:1 ratio lower limit.
`
`(Stein Decl., Ex. 1102, ¶93.) It appears to be an arbitrary byproduct of other
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`conventional design constraints. (Stein Decl., Ex. 1102, ¶¶94-96.)
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`The apparent usefulness of a max voltage-to-current ratio of “at least 2.5”
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`seems to stem from a desire to obtain unbounded claim protection for all ratios
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`above that of the Toyota Prius. The ‘134 Patent describes a Toyota Prius hybrid on
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`the market in which “the ratio between the voltage under load and the peak current
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`is only about 2 (=230V/120A).” (‘134 Patent, Ex. 1101, 49:58-63; Stein Decl., Ex.
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`1102, ¶94.) Whatever the rationale, as detailed below, a max voltage-to-current
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`ratio of “at least 2.5” was disclosed in Ehsani in 1993.
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`VI. PERSON OF ORDINARY SKILL IN THE ART
`
`The relevant field for purposes of the ‘134 Patent is systems, methods and
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`apparatuses for controlling and operating an HEV and methods for improving fuel
`
`economy and reducing emissions. (‘134 Patent, Ex. 1101, 1:21-29 (“Field of the
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`Invention”).) Within a given field, the level of ordinary skill in the art is evidenced
`
`by the prior art references of record. See In re GPAC Inc., 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995) (determining that the Board did not err in adopting the approach
`
`that the level of skill in the art was best determined by the references of record).
`
`Assuming a September 14, 1998 priority date, the earliest claimed priority
`
`date of the ‘134 Patent, a person of ordinary skill in the art (“POSA”) typically
`
`would have possessed: 1) a graduate degree in mechanical, electrical or automotive
`
`engineering with at least some experience in the design and control of combustion
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`engines, electric or hybrid electric vehicle propulsion systems, or design and
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`control of automotive transmissions, or 2) a bachelor's degree in mechanical,
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`electrical or automotive engineering and at least five years of experience in the
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`design and control of combustion engines, electric vehicle propulsion systems, or
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`automotive transmissions.
`
`VII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3)
`
`Per the claim construction standard for an inter partes review, Petitioner
`
`bases this petition upon the broadest reasonable interpretation of the claim
`
`language. Solely for purposes of this proceeding, the following discussion
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`proposes constructions of certain claim terms. Under the broadest reasonable
`
`interpretation standard, Petitioner proposes that all claims should be entitled to
`
`their plain and ordinary meaning, with the exception of the “start and stop the
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`engine” and “road load” terms that require clarification as described below.
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`A.
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`“Start And Stop The Engine”
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`Independent claim 1 of the ‘134 Patent is directed to “[a] hybrid vehicle,
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`comprising. . . : a controller, operable to start and stop the engine to minimize fuel
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`consumption.” The term “start and stop the engine” requires clarification as the
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`plain and ordinary meaning should be construed in the context of a hybrid vehicle
`
`application. Starting and stopping an HEV includes not only “cold starts”—turning
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`on the engine when the vehicle is not operating—but also “hot starts”—interim
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`engine starts that occur after engine operation is interrupted (i.e., stopped) while
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`the vehicle is operating. (Stein Decl., Ex. 1102, ¶101.) At lower vehicle speeds or
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`loads, for example, an HEV typically stops engine operation and controls an
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`electric motor to provide torque for vehicle propulsion. At higher vehicle speeds or
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`loads, the HEV restarts the engine to provide torque to meet operator demand. Id.
`
`As interim engine starts and stops are part of basic HEV operation, the plain and
`
`ordinary meaning of the term “start and stop the engine” includes all engine starts
`
`and stops, including interim ones that occur during normal HEV operation.
`
`B.
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`“Road Load”
`
`The “road load” limitation recited in dependent claim 40 requires
`
`construction and additional clarification. Dependent claim 40 is directed to:
`
`The hybrid vehicle of claim 1, wherein a rate of change of torque
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`output of said engine is limited to a threshold value, wherein when a
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`rate of change of road load exceeds said threshold value of the rate of
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`change of torque output of the engine, said controller is operable to
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`operate said first motor and/or said second motor to supply additional
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`power to at least said two wheels to supply remaining required
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`torque.
`
`During the 2005 and 2008 litigation with Toyota, the Eastern District of
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`Texas construed the terms “instantaneous road load,” “road load,” “RL,” and “road
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`load (RL)” as follows: (1) “instantaneous torque [rotary force] required for
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`propulsion of the vehicle” (Toyota Litigation, Ex. 1115 at 39-41 & 49); (2) “the
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`instantaneous torque required for propulsion of the vehicle, which may be positive
`
`or negative in value.” (Toyota Litigation, Ex. 1115 at 14-15.)
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`In the currently ongoing Hyundai Litigation, the patentee has also
`
`maintained that the terms “road load” or “RL” should be construed as “the
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`instantaneous torque required for propulsion of the vehicle, which may be positive
`
`or negative in value.” (Hyundai Litigation, Ex. 1116 at 16-19.)
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`Because inter partes review proceedings use the broadest reasonable
`
`construction of claim terms, Petitioner proposes, for purposes of this proceeding
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`only, that the term “road load” of claim 40 may be construed as: “the
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`instantaneous torque required for propulsion of the vehicle, which may be positive
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`or negative in value.” (see Hyundai Litigation, Ex. 1116 at 14-15.) Based on the
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`specification, prosecution history, and admissions by the patentee, however,
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`Petitioner’s position is that the construction under the applicable standards in
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`district court is narrower, and Petitioner reserves the right to present a narrower
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`construction in district court litigation.
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`VIII. UNPATENTABILITY GROUNDS
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`The references reviewed below render
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`the claimed subject matter
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`unpatentable under 35 U.S.C. § 103. The Petitioner has a reasonable likelihood of
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`prevailing as to each of the following grounds of unpatentability.
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`A. GROUND 1: Claims 1-3, 5 and 6 are obvious over Ehsani
`and Ehsani NPL
`
`1. Overview of the Ehsani references
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`Ehsani discloses a hybrid system and corresponding control strategy
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`designed for use with several parallel HEV configurations, as disclosed in Figures
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`1 and 3-7. (Ehsani, Ex. 1103, 3:11-32, 4:19-59, Figs. 1 and 3-7.) The general
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`teachings regarding parallel HEV architectures and controls, described in reference
`
`to the base configuration in Figure 1, apply across the alternative embodiments
`
`illustrated in Figure 3-7, as all of the embodiments can be operated as parallel
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`HEVs.
`
`One such parallel HEV configuration, depicted in Figure 5 on page 19,
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`includes two AC electric machines, generator 50 and electric motor 51. (Ehsani,
`
`Ex. 1103, Fig. 5.) The two-motor parallel HEV embodiment of Figure 5 is often
`
`referred to as a series-parallel HEV, as in the ‘134 Patent, because it can be
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`operated as a series HEV and a parallel HEV. (Stein Decl., Ex. 1102, ¶123.) Each
`
`electric machine has “dual functionality to act as a motor and as a generator” and is
`
`connected to a battery 24 through an AC/DC converter. (Ehsani, Ex. 1103, 4:34-
`
`36, Fig. 5.) Ehsani discloses operating the AC electric machines at a high voltage
`
`and relatively low current. Id. at 6:57-67. Ehsani also discloses a method,
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`implemented by the controller 14, for controlling the hybrid system that includes
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`two modes: a first mode in which the vehicle is propelled by both the engine 16
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`and the electric motor 51 to provide output torque; and a second mode in which the
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`vehicle is propelled by the engine output torque and generator 50 converts excess
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`engine output torque or regenerating braking torque to electrical energy for
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`charging the battery 24. Id. at 4:19-59. The two-mode control strategy improves
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`efficiencies and minimizes fuel consumption. Id.
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`Ehsani NPL is a technical paper co-authored by Mehrdad Ehsani, published
`
`one year after the Ehsani patent reference issued. Ehsani NPL describes and refers
`
`to the hybrid system disclosed in Ehsani and teaches different operating modes that
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`can be applied to parallel HEV configurations. (Ehsani NPL, Ex. 1106 at 3,
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`Abstract.) In particular, Ehsani NPL discloses stopping the engine in certain
`
`operating modes and restarting the engine in others to minimize fuel consumption.
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`Id. at 4.
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`2.
`
`Independent Claim 1
`
`Ehsani’s one-motor base configuration, shown in Figure 1, and two-motor
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`alternative embodiment, shown in Figure 5, are reproduced below with
`
`annotations. The claim chart that follows maps claim 1 of the ‘134 Patent to
`
`Figure 5 of Ehsani, along with applicable references from the Ehsani specification
`
`describing both the Figure 1 and Figure 5 embodiments and Ehsani NPL. A
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`detailed analysis supporting the claim chart is provided in the Stein Declaration at
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`¶¶115-200. For ease of reference, the limitations of claim 1 have been parsed and
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`given a unique numerical identifier.
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`Ehsani and Ehsani NPL
`[1.0] Ehsani: hybrid system 48, shown above in
`Fig. 5. (Stein Decl. Ex. 1102, ¶¶120-124.)
`
`[1.1] Ehsani: propulsion device 20, shown above
`in Fig. 5. The wheels 20 are operable to receive
`power to propel the vehicle. (Ehsani, Ex. 1103,
`3:43-59; Stein Decl., Ex. 1102, ¶¶125-129.)
`
`[1.2] Ehsani: electric motor 51, shown above in
`Fig. 5.
`
`Electric motor 51 is an embodiment of electric
`machine 18 ,shown above in Fig. 1; electric
`machine 18 is an AC motor. (Stein Decl., Ex.
`1102, ¶130.)
`
`“FIG. 5 illustrates an alternate embodiment,
`hybrid system 48, in which electric machine 18
`comprises separate generator 50 and electric
`motor 51.” (Ehsani, Ex. 1103, 8:15-17.) “Many
`presently available AC motors are appropriate for
`e