UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,104,347 to Severinsky et al.
`
`IPR Case No.: IPR2014-00884
`
`
`______________
`
`
`
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,104,347
`
`
`
`
`
`
`
`
`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
`
`
`Table of Contents
`
`I.
`
`Introduction ................................................................................................................. 1
`
`A.
`
`The present petition does not violate the AIA ............................................ 1
`
`II.
`
`Claim Construction ..................................................................................................... 2
`
`A.
`B.
`
`The Board’s construction of “setpoint” is correct ...................................... 2
`The Board should reject Paice’s proposed construction of
`“monitor patterns of vehicle operation over time”..................................... 3
`
`III. Claims 1, 7, and 8 would have been obvious in view of Caraceni ........................ 4
`
`A.
`
`B.
`
`C.
`D.
`
`2.
`
`Caraceni discloses turning on the engine by comparing the “torque
`required to be produced by the engine to propel the vehicle” against a
`“setpoint” ............................................................................................................ 4
`1.
`In region 1 of Caraceni’s “hybrid mode,” the engine is not
`“on and spinning” as Paice alleges ..................................................... 5
`Caraceni discloses a “setpoint” for determining when to
`“start and operate” the engine as required by limitation [1.6] ............ 7
`Caraceni discloses “road load (RL)” as required by claim 7 ....................... 11
`1.
`Paice’s arguments regarding “road load” do not pertain to
`the Board’s construction ................................................................... 12
`Caraceni discloses a “recharge mode” as recited by limitation [1.6] ....... 14
`Caraceni discloses a “first electric motor” that accepts current
`from the “battery” ......................................................................................... 15
`
`IV. Claims 23 and 24 would have been obvious in view of Tabata
`References ...................................................................................................... 16
`
`A.
`
`B.
`
`C.
`
`It is obvious that Tabata ’201 employs the engine when the “torque
`RL required to propel the vehicle” exceeds a “setpoint” ..................................... 16
`The battery charging limitation of limitation [23.10] would have
`been obvious in view of the Tabata references ......................................... 22
`Tabata ’541 discloses a “pattern of vehicle operation” ............................ 24
`
`Certificate of Service ............................................................................................................ 27
`
`
`
`
`
`
`ii
`
`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
`
`
`
`
`Table of Authorities
`
`Cases
`
`K-40 Electronics LLC v. Escort,
`IPR2013-00240 ............................................................................................................ 3
`
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................................ 16
`
`Superguide Corp. v. DirecTV Enterprises, Inc.,
`
`358 F.3d 870 (Fed. Cir. 2004) .............................................................................. 3, 16
`
`
`
`
`
`iii
`
`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
`
`
`Updated Exhibit List
`
`Description
`U.S. Patent No. 7,104,347
`’347 Patent File History
`
`Date
`n/a
`n/a
`
`Identifier
`The ’347 Patent
`’347 Patent File
`History
`Caraceni
`
`Feb. 23, 1998
`
`
`
`
`Exhibit
`No.
`1201
`1202
`
`1203
`
`1204
`1205
`1206
`
`1207
`
`1208
`
`1209
`
`1210
`
`1211
`
`1212
`
`1213
`
`1214
`
`Hybrid Power Unit Development
`for Fiat Multipla Vehicle
`U.S. Patent No. 5,841,201
`U.S. Patent No. 6,158,541
`Plaintiff Paice LLC’s Reply Claim
`Construction Brief (Case No. 2:04-
`cv-00211)
`LLC’s Claim
`Paice
`Plaintiff
`Construction Brief (Case No. 2:04-
`cv-00211)
`Claim Construction Order (Case
`No. 2:04-cv-00211)
`Plaintiff Paice LLC’s Opening
`Claim Construction Brief (Case No.
`2:07-cv-00180)
`Plaintiff Paice LLC’s Reply Brief on
`Claim Construction (Case No. 2:07-
`cv-00180)
`Claim Construction Order (Case
`No. 2:07-cv-00180)
`Plaintiff Paice LLC and Abell
`Foundation, Inc.’s Opening Claim
`Construction Brief (Case No. 1:12-
`cv-00499)
`Plaintiff Paice LLC and Abell
`Foundation, Inc.’s Responsive Brief
`on Claim Construction (Case No.
`1:12-cv-00499)
`U.S. Patent Trial and Appeal Board
`January 3, 2014 Decision (Appeal
`No. 2011-004811)
`
`iv
`
`Feb. 27 1997
`Feb. 27 1997
`Mar. 8, 2005
`
`Tabata ’201
`Tabata ’541
`n/a
`
`Mar. 29, 2005
`
`n/a
`
`Sept. 28, 2005
`
`n/a
`
`June 25, 2008
`
`n/a
`
`Aug. 1, 2008
`
`n/a
`
`Dec. 5, 2008
`
`n/a
`
`Nov. 14, 2013
`
`n/a
`
`Dec. 16, 2013
`
`n/a
`
`Jan. 3, 2014
`
`n/a
`
`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
`
`
`Date
`n/a
`Feb. 1994
`
`Feb. 1997
`Feb. 1998
`1998
`
`Identifier
`Davis
`Declaration Ex.
`
`Declaration Ex.
`Declaration Ex.
`Declaration Ex.
`
`Declaration Ex.
`
`Feb.24-28, 1992 Declaration Ex.
`
`April 9-11, 1997 Declaration Ex.
`
`April 1995
`
`Declaration Ex.
`
`Feb. 1998
`
`Declaration Ex.
`
`Feb. 1996
`
`Declaration Ex.
`
`Sept. 30, 1979
`
`Declaration Ex.
`
`June 1, 1971
`
`Declaration Ex.
`
`Sept. 1, 1988
`
`Declaration Ex.
`
`1996
`
`Declaration Ex.
`
`Feb. 1997
`
`Declaration Ex.
`
`Oct. 1996
`Feb. 1995
`
`Declaration Ex.
`Declaration Ex.
`
`Apr. 3, 2001
`
`Declaration Ex.
`
`Exhibit
`No.
`1215
`1216
`
`1217
`1218
`1219
`
`1220
`1221
`
`1222
`
`1223
`
`1224
`
`1225
`
`1226
`
`1227
`
`1228
`
`1229
`
`1230
`
`1231
`1232
`
`1233
`
`and Hybrid Vehicles
`
`Description
`Declaration of Gregory Davis
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`1996 Future Car Challenge
`1997 Future Car Challenge
`History of the Electric Automobile
`– Hybrid Electric Vehicles
`Hybrid Vehicle for Fuel Economy
`Hybrid/Electric Vehicle Design
`Options and Evaluations
`Challenges for the Vehicle Tester in
`Characterizing Hybrid Electric
`Vehicles
`Electric
`Program
`Technology for Electric and Hybrid
`Vehicles
`Strategies in Electric and Hybrid
`Vehicle Design
`Hybrid
`Vehicle
`Assessment
`Final Report Hybrid Heat Engine /
`Electric Systems Study
`Transactions of the Institute of
`Measurements and Control: A
`microprocessor controlled gearbox
`for use
`in electric and hybrid-
`electric vehicles
`Propulsion System Design of
`Electric Vehicles
`Propulsion System Design of
`Electric and Hybrid Vehicles
`Bosch Handbook
`Design Innovations in Electric and
`Hybrid Electric Vehicles
`U.S. Patent No. 6,209,672
`
`Potential
`
`v
`
`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
`
`
`Exhibit
`No.
`1234
`
`1235
`
`1236
`
`1237
`
`1238
`1239
`1240
`
`1241
`1242
`1243
`
`1244
`
`1245
`
`1246
`
`1247
`
`1248
`
`1249
`
`Identifier
`Declaration Ex.
`
`Declaration Ex.
`
`Declaration Ex.
`
`Declaration Ex.
`
`Declaration Ex.
`Declaration Ex.
`Declaration Ex.
`
`Declaration Ex.
`Declaration Ex.
`884 Dep
`
`
`
`
`
`571 Dep
`
`875 Dep
`
`Davis Reply
`
`‘862 Patent
`
`Date
`n/a
`
`Jan. 1998
`
`Description
`Automotive
`to
`Introduction
`Powertrains (Davis Textbook)
`Yamaguchi article: Toyota Prius,
`Automotive
`Engineering
`International
`60/100,095 Provisional Application Filed Sept. 11,
`1998
`Feb. 29, 2012
`
`Oct. 9, 1996
`Feb. 27 1997
`Dec. 1989
`
`Amendment in File History of U.S.
`Patent 8,214,097
`U.S. Patent No. 6,098,733
`U.S. Patent No. 6,081,042
`Surface Vehicle Recommended
`Practice
`PCT Publication No. WO93/23263 Nov. 25, 1993
`Curriculum Vitae of Gregory Davis n/a
`Deposition Transcript of Neil
`April 30, 2015-
`Hannemann for IPR2014-00884
`May 1, 2015
`Exhibit
`12
`from Deposition
`n/a
`Transcript of Neil Hannemann
`Exhibit
`9
`from Deposition
`Transcript of Neil Hannemann
`Deposition Transcript of Neil
`Hannemann for IPR2014-00571
`Deposition Transcript of Neil
`Hannemann for IPR2014-00875
`Reply Declaration of Gregory
`Davis
`U.S. Patent No. 5,285,862
`
`n/a
`
`April 7, 2015
`
`April 30, 2015
`
`n/a
`
`
`
`vi
`
`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
`
`
`I.
`
`Introduction
`
`The Board instituted “inter partes review of claims 1, 7, 10, 21, 23 and 24 of U.S.
`
`Patent No. 7,104,347.” (Decision (Paper 11) at 14-15, hereinafter “Decision.”) Patent
`
`Owner (“Paice”) now argues positions that are contradicted by its own expert Mr.
`
`Hannemann and the evidence presented. As such, the Board should find the
`
`challenged claims unpatentable.
`
`A. The present petition does not violate the AIA
`
`Paice alleges that the present petition is “serial and abusive” and is “specifically
`
`designed to overburden Paice and Abell.” (Response (Paper 19) at 5, hereinafter
`
`“Response.”) Paice also states that the present petition, in addition to all other
`
`petitions filed by Ford, “flies in the face of Congressional intent for post-grant
`
`review.” (Response at 4.)
`
`Petitioner’s multiple filings arose because Paice asserted five patents that
`
`contain 522 claims (including U.S.P.N. 7,237,634 with 306 claims) and Paice refuses
`
`to limit the number of claims it will assert in pending or future litigation. Regardless
`
`of whether Paice intends to assert fewer claims, Ford has diligently worked to focus
`
`all 25 filed petitions. As detailed in the Board’s May 14, 2015 call, of the claims
`
`challenged by Ford, more than 60% are challenged only once, only 11% are
`
`challenged more than twice, and those arise largely because independent claims need
`
`to be challenged multiple times to address the many dependent claims.
`
`This is Ford’s only opportunity to challenge these patents via IPR and Ford is
`
`1
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`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`addressing Paice’s many claims efficiently. Paice is not entitled to special protections.
`
`On the contrary, Paice “invited a multi-front battle” when it asserted these massive
`
`patents. See e.g., IPR2014-00279, Paper 21. Because the present petition is proper the
`
`Board should reject Paice’s request.
`
`II. Claim Construction
`
`A. The Board’s construction of “setpoint” is correct
`
`The Board construed setpoint as “a predetermined torque value that may or
`
`may not be reset.” (Decision at 10.) Paice has argued that under this construction, the
`
`Board committed a “clear, reversible error.” (Response at 7.) Yet, Paice’s own expert
`
`agrees, independent of the Board’s construction, that setpoint is a torque value in the
`
`claims at issue. (Ex. 1246, 571 Dep at 80:14-25.)
`
`Paice also argues that the Board should have construed setpoint as a value “at
`
`which a transition between operating modes may occur.” (Response at 9, fn.5.) But
`
`Paice’s own arguments undercut its construction. Paice states that “‘setpoint’ marks
`
`the amount of ‘road load’ at which the claimed control system actively changes the
`
`vehicle from one mode to another.” (Response at 11.) Yet Paice’s construction only
`
`states that a “transition . . . may occur.” (Id. at 12.) If the transition “may occur,” then
`
`it may not occur, and “setpoint” is meaningless—i.e., it does not mark any transition
`
`point. For this reason, the Board should maintain its construction. Even if the
`
`construction of “setpoint” includes Paice’s proposed “transition . . . may occur”
`
`language, it would not affect the analysis in this IPR as Caraceni’s “setpoint” meets
`
`2
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`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`either definition because the different construction is not meaningfully distinct from
`
`the Board’s.
`
`B. The Board should reject Paice’s proposed construction of
`“monitor patterns of vehicle operation over time”
`
`Paice proposes the following construction: “the controller tracks and records
`
`the driver’s repeated driving operations over time.” (Response at 13.) The claim
`
`language simply requires monitoring “patterns of vehicle operation.” (Ex. 1201 at
`
`41:55-65, Emphasis added.) The claim does not require monitoring “the driver’s
`
`repeated driving patterns,” nor “recording” a pattern, as Paice proposes. Paice’s
`
`proposed construction therefore improperly imports limitations into the claims.
`
`Further, Paice’s proposed imported limitations describe only one embodiment
`
`while ignoring other embodiments. The claim language is broader than just the one
`
`embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed.
`
`Cir. 2004). The plain meaning of “vehicle operation” could include more than just the
`
`driver’s repeated driving operations. (See Ex. 1201, ‘347 Patent at 41:10-65.) In fact,
`
`the ‘347 Patent discloses numerous embodiments where the “setpoint” is varied based
`
`on operations other than the “driver’s driving operations.” Id. The PTAB has also
`
`held that “[e]ven in cases where the specification describes only a single embodiment,
`
`however, we do not construe necessarily the claims as being limited to that
`
`embodiment.” K-40 Electronics LLC v. Escort, IPR2013-00240, Paper 37 at 9.
`
`Therefore, “monitor patterns of vehicle operation over time” should be construed
`
`3
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`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
`
`
`according to its plain and ordinary meaning.
`
`III. Claims 1, 7, and 8 would have been obvious in view of Caraceni
`
`A.
`
`Caraceni discloses turning on the engine by comparing the
`“torque required to be produced by the engine to propel the
`vehicle” against a “setpoint”
`
`Figure 9 illustrates Caraceni’s “hybrid mode” control strategy. (Ex. 1203 at 6,
`
`Fig. 9.) As annotated below, when operating in “hybrid mode” the vehicle may
`
`transition between five separate operating regions—labeled “1” to “5.”
`
`
`Caraceni discloses that the required torque in region 1 is at a level where engine
`
`operation is inefficient (i.e., “high specific fuel consumption”). (Ex. 1203 at 6, Fig. 9;
`
`Ex. 1215 at ¶¶270-278.) The vehicle is therefore driven exclusively by torque
`
`produced by the electric motor. (Ex. 1203 at 6, Fig. 9; Ex. 1215 at ¶275.) Caraceni also
`
`discloses that a transition may occur between region 1 and region 2 where the
`
`required torque increases and the engine is turned on and used to provide torque to
`
`4
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`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`propel the vehicle. (Ex. 1203 at 6, Fig. 9; Ex. 1215 at ¶278.) As previously explained, a
`
`POSA would have understood that this transition was triggered by the required
`
`torque reaching a “setpoint.” (Ex. 1215 at ¶277.)
`
`1.
`
`In region 1 of Caraceni’s “hybrid mode,” the engine is not
`“on and spinning” as Paice alleges
`
`Limitation [1.6] recites “start[ing] and operat[ing]” the engine when the “torque
`
`require[d] by said engine to propel the vehicle…is at least equal to a setpoint.” Paice argues that
`
`in “hybrid mode” Caraceni does not use a “setpoint” to “start and operate” the engine to
`
`propel the vehicle because Caraceni’s “engine is [allegedly] always on and spinning.”
`
`(Response at 20.) So according to Paice, in region 1 of “hybrid mode” Caraceni is
`
`operating the engine below the “setpoint” identified by Ford. (See Ex. 1215 at ¶¶274-
`
`278.)
`
`Paice’s argument that the engine is “operating” in region 1 of “hybrid mode” is
`
`simply incorrect. This was confirmed in the deposition of Paice’s expert, Mr.
`
`Hannemann, where he explained that the engine is off and producing zero torque
`
`in region 1 of “hybrid mode.”
`
`Q … Does the engine provide any torque required to propel the vehicle
`
`in the area labeled 1?
`
`A No. It doesn't appear that it does.
`
` (Ex. 1243, 884 Dep at 106:3-106:13.)
`
`5
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`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
`
`
`Q … When you say motoring, when you say the engine is motoring
`
`during the area marked No. 1, could you please explain to me what is
`
`exactly happening in that scenario?
`
`A Yeah. My definition of motoring is that the engine is being driven by
`
`an external source. It's not being supplied fuel or ignition. So it's
`
`actually not operating to create power even though it's maybe
`
`spinning.
`
`(Ex. 1243, 884 Dep at 109:11-21, emphasis added.)
`
`Q Okay. So stepping back to region 1, we had said that the engine is
`
`motoring in that scenario. Is the engine on in region 1?
`
`A Well, by my definition it's not on. On means you need to provide fuel
`
`and spark to the engine, so I would say no, it's not on.
`
`(Ex. 1243, 884 Dep at 111:14-19, emphasis added.)
`
`To argue that the engine is on and operating at all times (including in region 1)
`
`Paice also cites the simulation studies shown in Figures 12 and 13. (Response at 22-
`
`23.) Paice’s allegations that the simulation studies show every region (i.e. regions 1-5)
`
`of Caraceni’s “hybrid mode” are also misplaced. In fact, Mr. Hannemann testified that
`
`due to the scaling it is not possible to tell whether Figures 12 and 13 disclose all five
`
`regions of the “hybrid mode” illustrated by Figure 9. Further, because Figures 12 and
`
`13 are
`
`labeled “Thermal engine torque gradient
`
`limited @1daNm/s,” Mr.
`
`Hannemann agreed that Figures 12 and 13 may simply illustrate simulation studies
`
`shown as region 2 of the “hybrid mode.”
`
`Q. Are figure 12 and 13 illustrating all of the areas of the hybrid mode
`
`that is shown in figure 9?
`
`6
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`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
`
`
`MR. GUARNIERI: Objection. Vague.
`
`A. Again, it's hard to tell from the scale on the graphs, it's so tiny, but it's
`
`-- and in the hybrid mode the time basis I don't think are, are relative. So
`
`I don't think that this is really a time base thing. So it's -- I think it's really
`
`impossible to tell from the graphs if it's covering all five of the described
`
`operations.
`
`Q. Isn't it possible to just label or based on the labeling of figure 12 and
`
`13 that all they were testing in the simulation study was the effects of
`
`different limited torque gradients on the engine?
`
`A. Yeah. That's possible. It's because it doesn't say hybrid mode. It just
`
`says torque splitting.
`
`(Ex. 1243, 884 Dep at 134:20-135:11.)
`
`Caraceni’s engine is not on and operating in region 1 of “hybrid mode,” as
`
`Paice alleges. And as explained in the following section, Caraceni uses a “setpoint” for
`
`determining when to “start and operate” the engine during the transition from region 1
`
`to region 2.
`
`2.
`
`Caraceni discloses a “setpoint” for determining when to
`“start and operate” the engine as required by limitation [1.6]
`
`Paice also argues that Ford presented an inherency argument that is “facially
`
`contradicted by Caraceni’s actual disclosure that the engine is always on and operating
`
`in ‘hybrid mode.’” (Response at 29-30, italics in original.) In fact, Paice dedicates over
`
`seven pages of its Response to this heightened-standard inherency argument. (See
`
`Response at 24-31.) But Ford never presented an inherency argument. (Petition
`
`7
`
`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`at 29-32.)1 Instead, Ford argued that using a “setpoint” for determining when to turn
`
`on and operate the engine was obvious to a POSA in view of Caraceni. (Petition at
`
`29-32; Ex. 1215 at ¶¶262-279.)
`
`For instance, Ford has maintained that Caraceni discloses that the engine is not
`
`on (i.e. off and not being supplied fuel) in region 1 of the “hybrid mode.” (Ex. 1215 at
`
`¶275.) Mr. Hannemann even agreed with Ford’s position that the engine is off during
`
`region 1 of the “hybrid mode.” (Ex. 1243, 884 Dep at 111:14-19.) Mr. Hannemann
`
`further testified that the engine only turns on and operates after transitioning from
`
`region 1 to region 2.2
`
`Q What about region 2? Is the engine on in region 2?
`
`A Yes.
`
`
`1 Paice inherency argument relies on Dr. Davis’ non-legal use of the word “inherent”
`
`used once within his analysis of claim 1. (Response at 24-25; see also Ex. 1215 at
`
`¶¶275.) However, Dr. Davis was merely using a non-legal, common usage of the word
`
`and his complete opinion was not based on the “doctrine of inherency” as Paice
`
`alleges. (Ex. 1248 at ¶¶6-17; Ex. 1215 at ¶¶262-279.)
`
`2 Again, Mr. Hannemann’s testimony is directly contrary to Paice’s Response which
`
`consistently argues that the engine is always on and “providing torque to propel the
`
`vehicle” when in “hybrid mode.” (Response at 23, fn. 10.)
`
`8
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`

`

`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
`
`
`Q So between region 1 and region 2 the hybrid mode shown in figure 9
`
`shows a scenario where the engine is off in region 1 and it transitioned
`
`to being on in region 2. Is that an accurate statement?
`
`A In a general sense, yes.
`
`(Ex. 1243, 884 Dep at 111:20-112:2.)
`
`Paice’s inherency argument also attempts to suggest that Ford’s analysis was
`
`premised incorrectly on operating the engine “according to its ‘specific fuel
`
`consumption’ level...” (Response at 26.) Putting aside Paice’s misplaced inherency
`
`argument, Ford argued only that Caraceni’s disclosure of “high specific fuel
`
`consumption” was evidence that the engine operates efficiently above the “setpoint.”
`
`(Ex. 1215 at ¶¶275-278.) For instance, Figure 9 states that when the “driver torque
`
`request” is below a certain torque level (i.e. “setpoint”) the “electric motor provides all
`
`the required torque where the engine has high specific fuel consumption.” (Ex. 1203
`
`at 6-Fig. 9.)
`
`And Dr. Davis explained that the motor alone is operated in region 1, because
`
`if the engine was operated in region 1 it would be operated at a “high specific fuel
`
`consumption.” (Ex. 1215 at ¶¶275-278; Ex. 1248 at ¶¶8-17.) So, when the “driver
`
`torque request” increases above a “setpoint” (e.g. transition from region 1 to region 2)
`
`Caraceni teaches that the engine is turned on and operated to propel the vehicle
`
`because it no longer is operating at a “high specific fuel consumption” (i.e. it
`
`can operate more efficiently). It is this variance in torque levels between regions 1 and
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`2 that Dr. Davis opined a POSA would have understood as disclosing a
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`“predetermined torque value” or “setpoint.” (Ex. 1215 at ¶¶275-278.)
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`Even Mr. Hannemann confirmed during his deposition that “specific fuel
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`consumption” cannot be used as a “setpoint” when the engine is not operating (e.g. in
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`region 1). Because the engine is not operated in region 1, Paice’s argument is
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`nonsensical. Instead, as Mr. Hannemann confirmed, calibration data is used to
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`determine the torque level where the engine has a “high specific fuel consumption”
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`and should not be operated.
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`Q. How would a person of skill in the art design a vehicle so that the
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`vehicle understands to use the motor where the engine has a high
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`specific fuel consumption?
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`MR. GUARNIERI: Objection. Vague.
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`A. Well, so when you're operating the electric motor only, you
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`don't really have a measure of the specific fuel consumption. So the
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`sentence is a little bit of a misnomer because the engine doesn't
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`actually have high specific fuel consumption, but at that point if
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`the engine were operated it would have high specific fuel
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`consumption. So this is something that the engineer developing and
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`calibrating the vehicle has to program in to the vehicle, so it's not
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`something that's measuring the fuel consumption. It's something that's
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`just built in to the calibration of the vehicle.
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`(Ex. 1243, 884 Dep at 116:12-117:3, Emphasis added.)
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`Dr. Davis further confirmed Mr. Hannemann’s understanding about stored
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`calibration data being used for turning on the engine. As Dr. Davis explained, such
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`data could be stored in a “torque map” for selecting: (1) when the “driver torque
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`request” is at a level where the engine would have a “high specific fuel consumption”
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`if operated (i.e. region 1); versus (2) where “driver torque request” is at a level where
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`the engine has a lower specific fuel consumption when operated (i.e. region 2).
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`Q. So is it possible, based on the exposure of Figure 1, that the setpoint
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`is actually a specific fuel consumption setpoint?
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`A. But you don't know when you're achieving good brake specific fuel
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`consumption unless you -- that's typically plotted on a torque map. So
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`you would be using the driver torque request, or the torque required to
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`produce, as your indicator where you are on the specific fuel
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`consumption map so you know whether you're operating efficiently.
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`(Ex. 2212 at 94:4-15, see also 94:16-25; Ex. 1248 at ¶¶8-17.)
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`Thus, as Ford previously presented, Caraceni discloses a “hybrid mode” that
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`starts and operates the engine when the torque required to propel the vehicle exceeds
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`a torque “setpoint,” as illustrated by the transition between region 1 and region 2.
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`B.
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`Caraceni discloses “road load (RL)” as required by claim 7
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`The Board construed “road load” as the “the amount of instantaneous torque
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`required to propel the vehicle, be it positive or negative.” (Decision at 7.) Paice argues
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`Caraceni does not meet the Board’s construction because “Caraceni relies on bare
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`accelerator pedal position.” (Response at 32-33.) Paice and Mr. Hannemann state that
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`“bare” accelerator pedal position is merely an engine throttle position for controlling
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`“fuel and air flow into the engine.” (Response at 34-36; Ex. 2215 at ¶¶90-91.)
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`But Paice and Mr. Hannemann’s argument applies only to a conventional
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`vehicle having only an engine. This argument is wrong for a hybrid vehicle that
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`includes an electric motor, and Mr. Hannemann provides no support in his
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`declaration how throttle position is used for selecting the amount of torque to be
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`produced by the electric motor. (Ex. 2215 at ¶¶88-95.) In contrast to a conventional
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`vehicle, during the “hybrid mode” disclosed by Caraceni, the motor and engine are
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`both operated, either alone or in combination. Therefore, pedal position cannot
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`correlate solely to engine throttle position, as Paice argues, because this would not
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`account for times when the motor is operated, like in regions 1, 2 and 4 shown in Fig.
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`9 of Caraceni.
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`Paice also states that Caraceni teaches that “pedal position ‘sets’ the ‘required
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`traction torque’.” (Response at 33.) But Paice does not explain how Caraceni’s
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`“required traction torque” differs from “road load” as construed (i.e. “instantaneous
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`torque required to propel the vehicle”). As Ford originally explained, the accelerator
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`and brake pedals are used as inputs for determining the “required traction torque” (i.e.
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`“driver’s torque request”). And this “required traction torque” is used for selecting the
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`amount of torque required of the engine and/or motor satisfy the instantaneous
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`torque required to propel the vehicle, as shown by each region of “hybrid mode”
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`shown in Fig. 9 in Caraceni. (Petition at 34-37; Ex. 1215 ¶¶298-317.)
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`1.
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`Paice’s arguments regarding “road load” do not pertain to
`the Board’s construction
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`Paice consistently maintains that Caraceni, like all other prior art, does not
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`teach “road load,” “determining road load” or controlling modes based on “road load.”
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`(Response at 2, 32-40) With each deposition of Mr. Hannemann, however, it becomes
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`clearer that Paice’s “road load” positions have no foundation.
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`For instance, Mr. Hannemann testified on April 7, 2015 that the ’347 Patent
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`does not teach a POSA how to calculate, measure, or determine road load because
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`“that’s something that wasn’t a part of the patent.” (Ex. 1246, 571 Dep at 61:6-62:5.)
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`Mr. Hannemann further testified during this same deposition that the accelerator
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`pedal is not an indication of “road load.” (Ex. 1246, 571 Dep at 49:24-50:25.)
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`Just a few weeks later, however, Mr. Hannemann changed his earlier testimony
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`and stated that the accelerator pedal may be considered as one factor in determining
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`Paice’s “road load.” (Ex. 1247, 875 Dep at 40:7-14, 42:25-43:7.) He also went on to
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`testify there are a number of “factors” (Mr. Hannemann identified eight) that a POSA
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`“might consider” in determining Paice’s “road load.” (Ex. 1247, 875 Dep at 47:13-18,
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`64:12-24, see also 59:23-60:9.)
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`Even though he testified that “road load” could be calculated, Mr. Hannemann
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`would not articulate a definitive list of factors that are sufficient to determine the
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`claimed “road load.” (Ex. 1247, 875 Dep at 48:9-16, 49:13-50:8, 50:24-51:8.) According
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`to Mr. Hannemann’s recent testimony in a related proceeding, a POSA must perform
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`extensive vehicle product development “testing” and “analysis” to calculate the
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`claimed “road load.” (Ex. 1247, 875 Dep at 64:25-65:6; see also 52:6-24, 59:23-62:17.)
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`This process, he states, generally takes 3-5 years. (Ex. 1247, 875 Dep at 62:25-63:5.)
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`Despite no such requirement in the Board’s construction, the specification, or
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`most importantly the claims, Paice is attempting to interject how “road load” might be
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`determined. (Ex. 1247, 875 Dep at 56:12-57:6.) Paice’s intent is obvious: make “road
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`load” so flexible that Mr. Hannemann can argue no prior art meets the “road load”
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`limitations. But the Board has construed “road load,” and the prior art, including
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`Caraceni, meets the plain application of the Board’s construction. Paice is therefore
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`not applying the Board’s construction in any meaningful way, and as a result, Paice
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`has no evidence supporting its positions that Caraceni does not disclose “road load.”
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`C.
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`Caraceni discloses a “recharge mode” as recited by limitation [1.6]
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`Although Caraceni discloses a “recharge mode,” Paice argues that “the driver,
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`not the controller, starts and operates the engine to charge the battery during
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`‘recharge mode.’” (Response at 38-39.) But the claim does not require that the
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`controller autonomously enter “recharge mode” without user operation. Instead, the
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`claim simply requires that the controller “start and operate” the engine when the torque
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`required to propel the motor to charge the battery is above a “setpoint.”3 And it would
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`have been obvious to a POSA that the controller in Caraceni starts and operates the
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`engine when “recharge mode” is entered. (Ex. 1248 at ¶26-27.) For instance, if the
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`3 It does not even appear that claim 1 requires the engine be started above “setpoint,”
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`as dependent claim 22 recites that the engine is operated below the setpoint when
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`started. (Ex. 1201 at claim 22; see also Ex. 1237 at 16.)
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`vehicle was operating in “electric mode” and the user switched to “recharge mode,”
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`the “controller” would start and operate the engine. As was also previously explained,
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`when recharge mode is entered the engine operates above “setpoint” to propel the
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`motor to charge the battery. (Petition at 32; Ex. 1215 at ¶¶280-286.)
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`Regardless, it would have been obvious to a POSA that Caraceni discloses
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`automatic mode switching. While the vehicle in Caraceni may allow the driver to
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`manually selection operation in “electric mode” or “hybrid mode,” a POSA would
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`have understood that Caraceni would then automatically switch to “recharge mode”
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`when the battery state of charge begins to decrease. (Ex. 1248 at ¶¶23-25.) Caraceni
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`in fact confirms “automatic switching” when the battery is “below a certain
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`threshold.” (Ex. 1203 at 6; Ex. 1248 at ¶¶24-25.) Therefore, it would have been
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`obvious to a POSA that when the battery charge is low and the vehicle is in “hybrid
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`mode,” Caraceni would automatically switch to “recharge mode” to charge the battery
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`while the engine propels the vehicle, as shown in Fig. 9. (Ex. 1248 at ¶¶23-27.)
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`D. Caraceni discloses a “first electric motor” that accepts current
`from the “battery”
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`Paice argues that the “engine starter” (first electric motor) disclosed by
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`Caraceni does not “accept current from a hybrid battery.” (Response at 41.) In
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`support, Paice argues that the first electric motor in claim 1 must: (1) be more
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`powerful than a conventional starter motor “to provide high power at higher speeds;”
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`and (2) acc