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
`Patent Owner
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`Case IPR2014-00884
`Patent 7,104,347
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`Patent No. 7,104,347
`Patent Owner Response
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`Case IPR2014-00884
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`Attorney Docket No: 36351-0011IP3
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1 
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`I. 
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`II. 
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`CLAIM CONSTRUCTION ............................................................................ 6 
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`A. 
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`B. 
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`C. 
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`The District Courts’ Construction ......................................................... 7 
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`The Board should revise its construction of “setpoint
`(SP)” ...................................................................................................... 8 
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`1. 
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`2. 
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`“Setpoint” marks a transition between operating
`modes .......................................................................................... 9 
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`“Setpoint” is not “predetermined” and is not
`limited to torque values ............................................................. 12 
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`The Board should construe “monitor patterns of vehicle
`operation over time” to mean “the controller tracks and
`records the driver’s repeated driving operations over
`time.” ................................................................................................... 13 
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`III. 
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`INTRODUCTION TO THE PRIOR ART .................................................... 17 
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`IV.  THE ’347 PATENT IS NOT OBVIOUS OVER CARACENI ..................... 18 
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`A. 
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`Caraceni does not disclose or suggest the use of a
`“setpoint” to turn on and operate the engine as required
`by claim 1. ........................................................................................... 19 
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`1. 
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`2. 
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`Caraceni discloses a control system that requires
`the driver to select “electric mode.” .......................................... 19 
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`The use of a “setpoint” is not explicitly or
`inherently disclosed by Caraceni .............................................. 23 
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`B. 
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`C. 
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`Caraceni does not disclose or suggest the use of “road
`load” as required by claim 7. ............................................................... 32 
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`Caraceni does not disclose or suggest the “controller” of
`claim 1 that “starts and operates” the engine to charge the
`battery. ................................................................................................. 38 
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`Patent No. 7,104,347
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`Patent Owner Response
`D. 
`Caraceni does not disclose or suggest a “battery” of claim
`1 that “provid[es] current” to a “first electric motor.” ........................ 40 
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`V. 
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`THE ’347 PATENT IS NOT OBVIOUS OVER TABATA ’201 OR
`TABATA ’541 ............................................................................................... 44 
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`A. 
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`B. 
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`C. 
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`Tabata ’201 and Tabata ’541 do not disclose or suggest
`the use of “road load” or “setpoint” as required by claim
`23. ........................................................................................................ 44 
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`Tabata ’201 and Tabata ’541 do not disclose or suggest
`the battery charging limitation of claim 23. ........................................ 51 
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`Tabata ’201 and Tabata ’541 do not disclose a
`“controller” that “monitor[s] patterns of vehicle operation
`over time” as required by claim 24. .................................................... 56 
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`VI.  CONCLUSION .............................................................................................. 60 
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`Patent No. 7,104,347
`Patent Owner Response
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`Case IPR2014-00884
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`Attorney Docket No: 36351-0011IP3
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases 
`Cases 
`Allergan, Inc. v. Barr Labs., Inc., 501 F. App'x 965, 973 (Fed. Cir. 2013) ...................................................................... 54 
`Ex Parte Levy, 17 U.S.P.Q.2d 1461, 1990 WL 354577 at *3 (P.T.O. Oct. 16, 1990) ..................................................... 26 
`Fresenius USA, Inc. v. Baxter Int'l, Inc., 582 F.3d 1288, 1300 (Fed. Cir. 2009) ............................................................. 54 
`Fuji Photo Film Co. v. Int'l Trade Comm'n, 386 F.3d 1095 (Fed. Cir. 2004) .................................................................. 12 
`In re Abbott Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012) .................................................................................... 8 
`In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012) .......................................................................... 8 
`In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) ................................................................................................. 25, 27 
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) .................................................................................................... 26 
`In re Vaidyanathan, 381 Fed. Appx. 985 (Fed. Cir. 2010) .............................................................................................. 8 
`Koito Mfg. Co. v. Turn‐Key‐Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) ............................................................... 54 
`Motorola Mobility, LLC v. Int'l Trade Comm'n, 737 F.3d 1345, 1350 (Fed. Cir. 2013) ................................................. 26 
`Paice LLC v. Hyundai Motor Co., No. CIV. WDQ‐12‐0499, 2014 WL 3725652 (D. Md. July 24, 2014) ........................... 8 
`PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195‐96 (Fed. Cir. 2014) .................................................... 25, 27 
`Sata GmbH & Co., v. Anest Iwata Corp., 2013 WL 5970199 (June 25, 2013 Patent Tr. & App. Bd.) ........................... 34 
`W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1555 (Fed. Cir. 1983) .................................................... 26 
`Other Authorities 
`MPEP § 2141.02 ........................................................................................................................................................... 26 
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`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP3
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`Patent Owner Response
`UPDATED LIST OF EXHIBITS
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`Patent Owner
`Exhibit Number
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`PAICE Ex. 2201
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`Exhibit Description
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`Arbitration Agreement between Paice LLC and Ford Motor
`Company
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`PAICE Ex. 2202 Memorandum Opinion, U.S. District Court for the District of
`Maryland, U.S. District Judge William D. Quarles, Jr.
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`PAICE Ex. 2203
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`Declaration in support of pro hac vice motion
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`PAICE Ex. 2204
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`Bosch Automotive Handbook, 4th Edition (excerpts)
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`PAICE Ex. 2205 MULTIPLA - IN BRIEF - Press Releases - Fiat Chrysler
`Automobiles
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`PAICE Ex. 2206 MULTIPLA - ENGINES - Press Releases - Fiat Chrysler
`Automobiles
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`PAICE Ex. 2207
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`Ford Complaint
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`PAICE Ex. 2208
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`Letter from Paice to Ford (Nov. 24, 2014)
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`PAICE Ex. 2209
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`Griffith Hack white paper
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`PAICE Ex. 2210
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`The Oxford Essential Dictionary, American Ed. (1998)
`(excerpt)
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`PAICE Ex. 2211
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`Introduction to Automotive Powertrains (excerpts)
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`PAICE Ex. 2212
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`Gregory Davis deposition transcript (Feb. 25, 2015)
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`PAICE Ex. 2213
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`Gregory Davis deposition transcript (Jan. 13, 2015)
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`PAICE Ex. 2214
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`Davis, G. W., Hodges, G. L., and Madeka, F. C., "The
`Development and Performance of the AMPhibian Hybrid
`Electric Vehicle,” SAE Technical Publication 940337, 1994.
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`PAICE Ex. 2215
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`Declaration of Neil Hannemann
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`Patent No. 7,104,347
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`Patent Owner Response
`PAICE Ex. 2216
`Neil Hannemann CV
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`Patent No. 7,104,347
`Patent Owner Response
`I.
`INTRODUCTION
`The Board instituted trial with respect to claims 1, 7, 10, 21, 23, and 24 (the
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`Case IPR2014-00884
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`“challenged claims”) of U.S. Patent No. 7,104,347 (“the ’347 patent”) owned by
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`Paice LLC and The Abell Foundation (collectively, “Paice” or “Patent Owner”) in
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`view of a Petition requesting inter partes review filed by Ford Motor Company
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`(“Ford” or “Petitioner”). The Board instituted trial on two Grounds of obviousness
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`presented in the petition: (1) A. Caraceni, G. Cipolla, and R. Barbiero, “Hybrid
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`Power Unit Development for Fiat Multipla Vehicle,” SAE Publication 981124
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`(1998) (“Caraceni”) and (2) U.S. Patent Nos. 5,841,201 (“Tabata ’201”) and
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`6,158,541 (“Tabata ’541”) (collectively, “Tabata ’201 and ’541”). See 2014-12-11
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`Decision, pp. 14-15. This Response responds to the Petition, as informed and
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`narrowed by the Board’s Decision. All challenged claims are patentable over the
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`cited Grounds for the reasons set forth herein.
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`Ford’s arguments with regards to the ’347 patent are fundamentally flawed.
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`The Board will recall that the ’347 patent deals with hybrid gasoline/electric
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`vehicles, and in particular, a control strategy that decides which of several
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`operating “modes” the vehicle will use. These modes are characterized primarily
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`through whether the motor, engine, or both propel the vehicle. The ’347 patent
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`claims an improved control strategy that utilizes a parameter known as “road load”
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`to decide when to move between operating modes to maximize efficiency.
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`Patent Owner Response
`None of the cited prior art deals with this fundamental aspect of the ’347
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`claims. With respect to Ground 1, the Caraceni reference discloses a vehicle
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`control system that requires the driver to manually select the hybrid vehicle mode;
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`a far cry from using “road load” to effect mode transitions. Even under Ford’s
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`incorrect reading of the reference, Caraceni simply discloses a control system that
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`uses basic accelerator pedal position to make mode switching decisions, not “road
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`load.” With respect to Ground 2, Ford relies on Tabata ’201 and ’541, references
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`that were in front of the Examiner during prosecution, and that disclose using
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`power, not road load, as the guiding parameter to change modes.
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`Therefore, for the reasons detailed more fully herein, the Board should
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`affirm the patentability of claims 1, 7, 10, 21, 23, and 24 of the ’347 patent.
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`Before reaching the merits, it is important to place the patent owners and
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`Ford’s Petition into proper context. Abell is a Baltimore-based charitable
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`organization dedicated to fighting urban poverty and finding solutions to
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`intractable problems confronting Maryland residents. Abell has invested millions
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`of dollars in small companies like Paice, a small Maryland-based company that has
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`developed and promoted hybrid electric technology since 1992. Paice has been
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`involved with
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`the world’s
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`top automotive manufacturers
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`in developing
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`commercially viable hybrid vehicles, and in 2010 reached a significant license on
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`the patent subject to Ford’s Petition with Toyota, the world’s most successful
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`hybrid auto manufacturer.
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`Beyond recognition by the automotive industry, others have considered
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`Paice’s patents as among the most important in the automotive industry. Griffith
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`Hack, an Australian law firm specializing in intellectual property, conducted an
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`independent study of the most dominant hybrid vehicle patents in the world
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`without input or even contact with Paice. Griffith Hack analyzed more than 58,000
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`hybrid vehicle technology patents and concluded that the top hybrid vehicle patents
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`were those held by Paice, ahead of those held by leading hybrid vehicle
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`manufacturers such as Toyota, Ford and Honda. See Griffith Hack white paper,
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`Exhibit 2209.
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`Paice and Ford have an extensive history. Between 1999 and 2004, Paice
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`spent significant time working with Ford to teach Ford Paice’s hybrid vehicle
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`technology, including detailed modeling of Paice’s patented technology in actual
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`or proposed Ford vehicles. Attached as Exhibit 2207 is the complaint Paice filed in
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`district court that summarizes the full context of how Ford accepted Paice’s help
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`and teaching, repeatedly complimented and validated Paice’s technology, but
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`ultimately refused to license Paice’s patents.
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`As the result of an earlier district court litigation, Ford did take a license in
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`2010 to one of Paice’s patents— U.S. Patent No. 5,343,970. At that time, the
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`parties were not able to reach resolution on the other Paice patents and entered into
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`an Arbitration Agreement as a means to resolve the dispute. Ford ultimately
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`declined to arbitrate Paice’s claims that Ford is unlawfully using Paice’s
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`technology, and instead has filed twenty-five separate Petitions for Inter Partes
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`Review before this Board.1
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`Ford’s tactic of filing twenty-five petitions on just five patents flies in the
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`face of Congressional intent for post-grant review. Congress intended that the AIA
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`provide “procedural safeguards to prevent a challenger from using the process to
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`harass patent owners.” See 157 Cong. Rec. S952 (2011) (statement of Sen.
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`Grassley). Congress further intended “to prevent petitioners from raising in a
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`1 After filing ten IPRs, Ford sent two letters respectively dated September 22, 2014
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`and October 16, 2014 threatening to file additional IPRs to burden Paice if Paice
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`did not withdraw or limit its infringement complaint. Ford is silent about the long
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`history of exchanges between the parties, including Paice’s giving Ford the right in
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`a 2010 license agreement to submit the entirety of the underlying dispute to
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`binding arbitration, and Ford’s unilateral decision not to do so. Paice responded in
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`a letter dated November 24, 2014 (attached as Exhibit 2208) pointing out that Ford
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`had refused all reasonable efforts to narrow or eliminate this dispute, consistent
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`with Ford’s policy of driving up the costs and burdens for small inventors in order
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`to gain advantage in litigation.
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`subsequent challenge the same patent issues that were raised or reasonably could
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`have been raised in a prior challenge” in order to “significantly reduce the ability
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`to use post-grant procedures for abusive serial challenges to patents.” See id.
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`Ford seems intent on violating all aspects of Congress’s admonitions about
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`using IPR processes to harass. Ford’s serial and abusive filings are specifically
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`designed to drive up costs and burden on Paice and Abell. Ford’s resources greatly
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`surpass those of Paice and Abell. Ford could have brought its best prior art and
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`arguments in a handful of petitions and avoid excess cost and burden. Instead,
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`Ford’s strategy is to fight a war of attrition by opening as many fronts as possible.
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`Moreover, Paice long ago gave Ford the right to take this dispute to binding simple
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`arbitration; if Ford were truly interested in resolving the dispute, it had the right to
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`arbitrate all issues over just a few months.
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`Ford’s strategy is particularly insidious in the context of the instant IPR,
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`where Ford attacks the validity of the ‘347 patent for a third time, having
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`previously attacked the validity of the same independent claims in Cases IPR2014-
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`00571 and IPR2014-00579. This strategy of filing serial and abusive petitions is
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`specifically designed to overburden Paice and Abell. Each of these petitions
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`presents great expense to small companies like Paice and Abell. Ford is hoping that
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`the cumulative effect of filing twenty-five separate petitions will make the IPRs
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`cost prohibitive to force Paice and Abell into submission. But Congress made clear
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`Patent Owner Response
`that post-grant review proceedings are “not to be used as tools for harassment …
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`through repeated litigation and administrative attacks on the validity of a patent.”
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`H.R. Rep. No. 112-98 at 48 (2011). Still further, at Ford’s insistence the district
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`court case between the parties has been stayed pending resolution of the now
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`twenty-five IPR proceedings, and Ford’s recursive approach to filing IPR petitions
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`significantly delays the litigation.
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`The AIA gave the Board an array of tools to curb this very type of behavior,
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`including the discretion to terminate multiple proceedings under 35 U.S.C §
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`315(d), the discretion to reject the petition 35 U.S.C § 325(d) because the same or
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`substantially same prior art or arguments were previously presented to the Board,
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`the ability to determine the proper course of conduct in a proceeding under 37
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`C.F.R. § 42.5, and the power to terminate proceedings as sanctions under 37 C.F.R.
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`§ 42.12(a)(7) for abuse of process. Accordingly, Paice asks that Ford’s instant
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`petition be terminated pursuant to the Board’s discretion.
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`II. CLAIM CONSTRUCTION
`Independent claim 1 requires “A hybrid vehicle, comprising … a controller
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`… wherein said controller starts and operates said engine when torque require[d] to
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`be produced by said engine to propel the vehicle and/or to drive either one or both
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`said electric motor(s) to charge said battery is at least equal to a setpoint (SP) ….”
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`Independent claim 23 similarly recites using a setpoint (SP) compared to “road
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`Case IPR2014-00884
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`Patent No. 7,104,347
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`Patent Owner Response
`load” in a method of controlling a hybrid vehicle, including “employing said
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`engine to propel said vehicle when the torque RL required to do so is between said
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`lower level SP and MTO.”
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`In its Initial Decision, the Board construed the terms “road load (RL)” and
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`“setpoint (SP).” Initial Decision, pp. 7-9. While the challenged claims are
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`patentable under the Board’s construction of these terms, Patent Owner opposes
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`the Board’s construction of “setpoint (SP)” and respectfully requests that the Board
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`revise its construction for the reasons set forth below.2
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`A. The District Courts’ Construction
`As an initial matter, Patent Owner notes that the Board’s construction of
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`“setpoint (SP)” is directly at odds with the construction adopted by two district
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`courts. The Board construed “setpoint (SP)” as “a predetermined torque value that
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`may or may not be reset.” The U.S. District Court for the Eastern District of Texas
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`and the U.S. District Court for the District of Maryland both have construed the
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`term “setpoint (SP)” to mean “a definite, but potentially variable value at which a
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`transition between operating modes may occur.”3 Judge Quarles of the District of
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`2 These arguments are also presented in Patent Owner’s Response in IPR2014-
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`00571 and IPR2014-00579.
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`3 Ex. 1112; Ex. 1115; Paice LLC v. Hyundai Motor Co., No. CIV. WDQ-12-0499,
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`Case IPR2014-00884
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`Patent No. 7,104,347
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`Patent Owner Response
`Maryland noted that “[Paice’s] proposed construction of “setpoint’ … is consistent
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`with the language of the claims and the intrinsic evidence.”4
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`The Board should revise its construction of “setpoint (SP)”
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`B.
`The Board’s construction of “setpoint (SP)” as “a predetermined torque
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`value that may or may not be reset” is incorrect for at least three reasons: (1) it fails
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`to recognize that “setpoint” represents a point at which a transition between
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`different operating modes may occur; (2) it reads in the additional and redundant
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`limitation “predetermined;” and (3) it incorrectly restricts “setpoint” to a torque
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`value. The Board failed to consider the entirety of the claims and specification,
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`instead limiting its analysis to just a portion of the disputed claim phrase (i.e.
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`whether it’s a “torque value, and whether it’s variable), which is clear, reversible
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`error. See In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012)
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`(holding that Board’s construction of “electrochemical sensor” was “unreasonable
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`and inconsistent with the language of the claims and the specification”).
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`The Board’s broadest interpretation must be reasonable, and must be in
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`conformity with
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`the
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`invention as described
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`in
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`the specification. In re
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`Vaidyanathan, 381 Fed. Appx. 985, 995-96 (Fed. Cir. 2010) (unpublished).
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`Cont’d
`2014 WL 3725652 (D. Md. July 24, 2014).
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`4 Paice LLC v. Hyundai Motor Co., 2014 WL 3725652 at *8.
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`Case IPR2014-00884
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`Patent No. 7,104,347
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`Patent Owner Response
`Accordingly, the Board should revise its construction of “setpoint” to make clear
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`that the “setpoint” may be variable, is not limited to a torque value, and represents
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`a point at which a transition between modes may occur. The Board should thus
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`adopt Patent Owner’s construction, “a definite, but potentially variable value at
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`which a transition between operating modes may occur” for the following reasons:
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`“Setpoint” marks a transition between operating modes
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`1.
`The Board did not adopt Patent Owner’s construction that a “setpoint” is a
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`value “at which a transition between operating modes may occur.” The Board
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`provided no explanation for declining to adopt this portion of the construction. Nor
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`did Ford provide any argument on the phrase.5 However, it is clear from the claims
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`and the specification that a “setpoint” is not simply a numerical value divorced
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`from the context of the rest of the control system. Rather, “setpoint” serves the
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`crucial function of marking the transition from one claimed mode to another and,
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`in particular, the transition from propelling the vehicle with the motor to propelling
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`the vehicle with the engine.
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`The language of the claims makes clear that a “setpoint” marks a point at
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`5 Ford acknowledged the past construction given this term by the U.S. District
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`Court for the Eastern District of Texas, including the phrase “at which a transition
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`between operating modes may occur.” See Petition at 14.
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`Case IPR2014-00884
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`Patent No. 7,104,347
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`Patent Owner Response
`which the vehicle may transition between two modes. For example, in claims 1, 7
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`and 23, the “setpoint” marks the transition between a mode in which only the
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`motor propels the vehicle, to modes in which the engine also can be used to propel
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`the vehicle or charge the battery. See ’347 Patent at claims 1, 7, 23. Dependent
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`claim 3 similarly recites “…wherein said controller monitors the road load (RL) on
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`the vehicle over time, and controls transition between propulsion of said vehicle
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`by said motor(s) to propulsion by said engine responsive to RL reaching SP, …”
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`See ’347 Patent at claim 3 (emphasis added); see also id. at claim 25.
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`Further, the specification makes clear that a “setpoint” is synonymous with a
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`“transition point” between modes:
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`[I]n the example of the inventive control strategy discussed above, it
`is repeatedly stated that the transition from low-speed operation to
`highway cruising occurs when road load is equal to 30% of MTO.
`This setpoint, referred to in the appended claims as "SP", and
`sometimes hereinafter as the transition point (i.e., between operation
`in modes I and IV) is obviously arbitrary and can vary substantially,
`e.g., between 30-50% of MTO, within the scope of the invention.
`See ’347 Patent at col. 40:47-55; see also id. at col. 41:2-4 (“For example, in
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`response to recognition of a regular pattern as above, the transition point might be
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`adjusted to 60% of MTO”); col. 41:10-14 (“It is also within the scope of the
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`invention to make the setpoint SP to which the road load is compared to control the
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`transition from mode I to mode IV somewhat "fuzzy" [sic], so that SP may vary
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`Case IPR2014-00884
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`Patent No. 7,104,347
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`Patent Owner Response
`from one comparison of road load to MTO to the next depending on other
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`variables”); col. 41:66-42:2 (“FIG. 9 thus shows the main decision points of the
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`control program run by the microprocessor, with the transition point between mode
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`I, low-speed operation, and mode IV highway cruising, set at a road load equal to
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`30% of MTO”); col. 44:32-39 (“Further, as noted above the transition points
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`between modes I, IV, and V in particular may vary in accordance with the
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`operator's commands…”).
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`By ignoring this “transition” requirement, the Board has effectively read out
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`a crucial limitation of the claims: that the “setpoint” marks the amount of “road
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`load” at which the claimed control system actively changes the vehicle from one
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`mode to another (e.g. from motor propulsion to engine propulsion). For example,
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`dependent claim 7 clearly covers a vehicle “operated in a plurality of operating
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`modes responsive to the value for the road load (RL) and said setpoint SP”
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`(emphasis added). The Board’s failure to recognize the “transition” function of
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`“setpoint” robs the remaining “mode” limitations of one of the key aspects of the
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`invention, which is the significant efficiencies to be gained by transitioning
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`between motor propulsion to engine propulsion in response to “road load.” See e.g.
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`’347 Patent at 13:39-46 (“By comparison … the vehicle’s operating mode-that is,
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`the selection of the source of torque needed to propel the vehicle-is determined
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`based on the amount of torque actually required. In this way the proper
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`Case IPR2014-00884
`
`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP3
`
`Patent Owner Response
`combination of engine, traction motor, and starting motor is always available. This
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`apparently simple point has evidently been missed entirely by the art.”); see also
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`id. at col. 39:47-65 (noting that prior art references using vehicle speed to
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`transition between modes “inherently operate the engine under less efficient
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`conditions”).
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`In other words, under the Board’s improper construction, one could attempt
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`to improperly read the claims to broadly cover hybrid vehicle systems where
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`transitions between modes never occur, a clear error that is fundamentally contrary
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`to the specification of the ’347 Patent. See Fuji Photo Film Co. v. Int'l Trade
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`Comm'n, 386 F.3d 1095, 1098 (Fed. Cir. 2004) (claim should not be given overly
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`broad construction that is inconsistent with how claim term is used in the
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`specification). Therefore, Patent Owner respectfully requests that the Board
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`reconsider its construction of “setpoint” to make clear that it is a value “at which a
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`transition between operating modes may occur.”
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`2.
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`“Setpoint” is not “predetermined” and is not limited to
`torque values
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`Patent Owner does not agree with the Board’s construction requiring the
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`term “setpoint” to be “predetermined” and a “torque value” and reserves the right
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`to appeal the Board’s construction on these additional bases.
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`While Patent Owner disagrees with the Board’s construction of “setpoint,”
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`the challenged claims are patentable under either construction and Patent Owner
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`Case IPR2014-00884
`
`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP3
`
`Patent Owner Response
`applies the Board’s constructions in its arguments below unless explicitly stated
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`otherwise.
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`C. The Board should construe “monitor patterns of vehicle
`operation over time” to mean “the controller tracks and
`records the driver’s repeated driving operations over time.”
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`Dependent claim 24 of the ’347 patent claims “employing said controller to
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`monitor patterns of vehicle operation over time and vary said setpoint SP
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`accordingly.” Ford and Dr. Davis’s gross misapplication of this claim language to
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`Tabata ’541 is, for reasons explained more fully below, factually wrong. However,
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`in order to clarify the scope of this claim in light of this misapplication, and for the
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`purposes of this IPR only, Patent Owner respectfully requests that the Board give
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`the phrase “monitor patterns of vehicle operation over time” its broadest
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`reasonable interpretation, which is: “the controller tracks and records the driver’s
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`repeated driving operations over time.”
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`The specification makes clear that the claimed control system can be altered
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`based on “patterns of vehicle operation over time,” which refers to how the
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`operator actually drives the car over some period of time, i.e. changing variables
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`according to how the driver actually uses the car on a day to day basis. See ’347
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`Patent at col. 35:47-58 (“Examples of
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`this practice-amounting
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`in many
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`circumstances to modifying certain specific values depending on other data items
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`not discussed in detail, or by monitoring the vehicle's actual usage patterns over
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`Case IPR2014-00884
`
`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP3
`
`Patent Owner Response
`time-are given below.”) (emphasis added). For example, the specification describes
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`an embodiment of this claim where the “setpoint” is adjusted based on the driver’s
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`daily commute from home to work. See ’347 Patent at col. 40:56-41:9. After
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`analyzing the driver’s “daily patterns,” such as “driv[ing] the same route from a
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`congested suburban development to a workplace about the same time every
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`morning,” the ’347 invention adjusts the “setpoint” to use the engine more
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`efficiently (e.g. to “prevent repetitive engine starts”). See id.
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`The specification is thus clear that the “patterns” referred to in the claim
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`language are the driver’s regular and repeated use of the vehicle. Ford’s arguments
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`about Tabata ’541 indicate that Ford interprets claim 24 and “monitor patterns of
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`vehicle operation over time” to include monitoring the battery state of charge and
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`adjusting the “setpoint” based on the state of charge. See e.g. Ex. 1215 at ¶¶ 471-
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`72. At his deposition, Dr. Davis stated that a “pattern of vehicle operation” meant
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`“changes in vehicle operation over time.” See Ex. 2212, Davis Tr. at 143:16-25.
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`That is clearly wrong.6 The specification makes clear that changing the “setpoint”
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`in response to the battery SOC is a separate feature of the invention from changing
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`6 Dr. Davis admitted at his deposition that he did not rely on the specification to
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`determine the meaning of “patterns of vehicle operation.” Ex. 2212, Davis Tr. at
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`144:23-145:5.
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`14
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`Case IPR2014-00884
`
`Patent No. 7,104,347
`Attorney Docket No: 36351-0011IP3
`
`Patent Owner Response
`the “setpoint” in response to monitored vehicle patterns. See ’347 Patent at col.
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`44:23-39. Similarly, when the inventors wanted to claim changing control
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`parameters based on the state of charge, they did so without using the word
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`“pattern.” See e.g. ’347 patent, claim 13, col. 59:48-49 (“The vehicle of claim 12,
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`wherein said time T is controlled responsive to the state of charge of the battery.”)
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`Further, the changing state of battery charge during normal vehicle operation
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`is clearly not a “pattern.” Claim 24 combines three important features that clearly
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`exclude simply monitoring the battery state of charge. First, as explained above, a
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`“vehicle pattern” according to the specification describes how the driver uses the
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`car; monitoring the vehicle’s “pattern of operation” is not so broad as to include
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`monitoring every internal data point (such as the battery state of charge). Second,
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`the specification also makes clear that “monitor[ing] patterns of vehicle operation
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`over time” includes tracking and recording the data. See e.g. ’347 patent at col.
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`44:36-39 (“the microprocessor builds up a detailed historical record of the
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`vehicle’s usage pattern…”) Changing the “setpoint” based on the current state of
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`charge of the battery does not encompass taking into consideration past usage of
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`the vehicle. It only requires a one-time comparison of the state of charge to a
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`threshold value. Finally, the controller alters the “setpoint” based on this record of
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`the data when the data reflects repeated driving operations. See ’347 patent at col.
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`40:56-59 (the controller “monitor[s] the vehicle's operati