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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`FORD MOTOR COMPANY
`Petitioner,
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`v.
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`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owners.
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`_________________________
`
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`Case IPR2014-00884
`Patent 7,104,347
`_________________________
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`
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`PATENT OWNER’S MOTION FOR OBSERVATIONS ON THE
`CROSS EXAMINATION OF DR. GREGORY DAVIS
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`Case IPR2014-00884
`Patent 7,104,347
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`UPDATED LIST OF EXHIBITS
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`Exhibit Description
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`Arbitration Agreement between Paice LLC and Ford Motor
`Company
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`Patent Owner
`Exhibit Number
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`PAICE Ex. 2201
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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
`
`Declaration of Neil Hannemann
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`Case IPR2014-00884
`Patent 7,104,347
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`PAICE Ex. 2216
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`Neil Hannemann CV
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`PAICE Ex. 2217
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`Deposition of Gregory W. Davis Ph.D. (June 3, 2015)
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`Case IPR2014-00884
`Patent 7,104,347
`In exhibit 2217, on 11:16-12:5, Dr. Davis testified that his use of
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`1.
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`“inherency” meant “this particular attribute, if it's inherent it simply may exist or
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`be obvious within the disclosed device.” Dr. Davis also testified at 17:12-22 that
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`his definition of “inherent” was the “more commonly understood non-legal
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`meaning, for example, an attribute may simply exist or be obvious within a
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`disclosed device.” Dr. Davis also testified on 24:21-25:17 and 26:2-19 that he was
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`applying the legal definition of obviousness but the non-legal definition of
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`“inherent.” This testimony is relevant to 153:14-22 of Ex. 2212, where Dr. Davis
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`testified that “I think ‘inherency’ means that if something -- if one of ordinary skill
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`in the art would know that something must be there in order for it to function,
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`maybe, in the claimed way, that it would be inherently there.” The testimony is
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`relevant because it shows that Dr. Davis is applying the wrong standard of
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`inherency in his reply, and that his reply contradicts his prior deposition testimony.
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`2.
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`In exhibit 2217, on 28:9-10, Dr. Davis testified that Caraceni does not
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`“specifically disclose an engine fuel performance map.” This testimony is relevant
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`to paragraphs 16-17 on page 13 of exhibit 1248, where Dr. Davis testified that
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`Caraceni discloses a “torque threshold that determines when to turn on/off the
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`engine” because “exemplary engine performance maps I used in my Initial
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`Declaration would typically be stored as calibration data within a vehicle controller
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`(e.g. the Engine Control Unit in Caraceni). The vehicle would use this stored
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`Case IPR2014-00884
`Patent 7,104,347
`calibration data for knowing when the engine would produce torque efficiently
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`versus when the engine would produce torque inefficiently.” The testimony is
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`relevant because it shows that Dr. Davis is relying on the alleged possible
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`capability of the device disclosed in Caraceni rather than the actual disclosure of
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`Caraceni.
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`3.
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`In exhibit 2217, on 39:8-17, Dr. Davis testified that the support for his
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`opinion that someone of skill in the art would understand that Caraceni was using
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`an “engine performance map” was the “entire reference” and not a specific
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`disclosure therein. This testimony is relevant to paragraphs 16-17 on page 13 of
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`Ex. 1248 where Dr. Davis testified that a “setpoint” was obvious in light of “a
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`common understanding of engine performance maps” that could be used in
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`Caraceni. The testimony is relevant because it shows that Dr. Davis’s opinions are
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`conclusory and not supported by the evidence.
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`4.
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`In exhibit 2217, on 41:1-14, Dr. Davis testified that Caraceni’s
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`disclosure that “[t]he powertrain management controls takes care of not
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`discharging the battery below a certain threshold. If the threshold is reached the
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`system does not allow the use of electric motor automatically switching into
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`economy mode,” (emphasis added) simply means that when the batteries are
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`discharged below a threshold value the use of an electric motor is restricted. This
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`testimony is relevant to paragraph 25 on page 17 of Ex. 1248 where Dr. Davis
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`Case IPR2014-00884
`Patent 7,104,347
`testified that “[r]eading this sentence it is clear that the system will first try to
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`recharge the batteries by entering the ‘recharge mode.’ ” The testimony is relevant
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`because it contradicts Dr. Davis’s reliance on that disclosure of Caraceni for his
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`opinion that it teaches automatically switching into recharge mode, and shows that
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`Dr. Davis’s declaration testimony is contradicted by the reference itself.
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`5.
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`In exhibit 2217, on 45:22-46:4, Dr. Davis testified that Caraceni’s
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`disclosure that “[t]he powertrain management controls takes care of not
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`discharging the battery below a certain threshold. If the threshold is reached the
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`system does not allow the use of electric motor automatically switching into
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`economy mode,” discloses automatically switching to economy mode, not recharge
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`mode. This testimony is relevant to paragraph 25 on page 17 of Ex. 1248 where
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`Dr. Davis testified that “[r]eading this sentence it is clear that the system will first
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`try to recharge the batteries by entering the ‘recharge mode.’ ” The testimony is
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`relevant because it contradicts Dr. Davis’s reliance on that disclosure of Caraceni
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`for his opinion that it teaches automatically switching into recharge mode, and
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`shows that Dr. Davis’s declaration testimony is contradicted by the reference itself.
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`6.
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`In exhibit 2217, on 54:4-24, Dr. Davis was unable to answer whether
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`or not manually switching into recharge mode meets the limitations of claim 1.
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`This testimony is relevant to paragraph 27 on page 18 of Ex. 1248 where Dr. Davis
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`testified that “it is my understanding that the claim [1] appears to require only that
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`Case IPR2014-00884
`Patent 7,104,347
`the controller start the engine, not automatically switch modes. Caraceni’s
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`controller would start the engine for operation in “recharge mode,” whether the
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`signal was from a manual or automatic signal to switch to the recharge mode.” The
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`testimony is relevant because it contradicts Dr. Davis’s declaration testimony that
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`manual mode switching meets the claim limitations.
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`7.
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`In exhibit 2217, on 55:20-56:5, Dr. Davis testified that when a driver
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`selects “recharge mode” in Caraceni, Dr. Davis was unable to answer whether or
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`not the driver was aware of the torque required to be produced by the engine (“I
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`can't answer whether he does or he doesn't. I really don't know.”) This testimony is
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`relevant to claim 1 of the ’347 patent at col. lines 29-33 of Ex. 1201, which require
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`“wherein said controller starts and operates said engine when torque require to be
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`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).” It is
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`also relevant to paragraph 27 on page 18 of Ex. 1248 where Dr. Davis testified that
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`manual mode switching meets the limitations of claim 1. The testimony is relevant
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`because it contradicts Dr. Davis’s declaration testimony that manual mode
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`switching meets the claim limitations.
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`8.
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`In exhibit 2217, on 61:16-22, Dr. Davis testified that he interpreted
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`Mr. Hannemann’s power versus torque engine operation figures as illustrations of
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`a control strategy. This testimony is relevant to paragraphs 124 to 126 on page 68-
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`Case IPR2014-00884
`Patent 7,104,347
`69 of Ex. 2215, where Mr. Hannemann testified that his power versus torque
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`engine operation figures were “illustrat[ing] the engine’s operation.” The
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`testimony is relevant because it shows that Dr. Davis has misinterpreted those
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`figures.
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`9.
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` In exhibit 2217, on 63:1-64:11, 66:11-17, and 67:2-6, Dr. Davis
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`testified that he was relying on the .7 ETA ICE max line in Tabata ’201 as the
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`setpoint in claim 23’s limitation “employing said engine to propel said vehicle
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`when the torque RL required to do so is less than said lower level SP and using the
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`torque between RL and SP to drive said at least one electric motor to charge said
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`battery when the state of charge of said battery indicates the desirability of doing
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`so.” This testimony is relevant to paragraphs 420-447 on pages 172-185 of Ex.
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`1215, where Dr. Davis testified that he was relying on “P1” as the setpoint for the
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`motor, engine, and motor-plus-engine modes of claim 23. The testimony is
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`relevant because it shows that Dr. Davis is mixing different embodiments from
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`Tabata ’201 but has not provided any analysis or explanation of why a person of
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`skill in the art would be motivated to combine those embodiments.
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`10.
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` In exhibit 2217, on 78:5-79:7 Dr. Davis testified that his opinions
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`with regards to claim 24 were based on “several embodiments” in Tabata ‘541.
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`This testimony is relevant to paragraphs 470-472 on pages 195-198 of Ex. 1215
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`where Dr. Davis testified that his opinions on claim 24 relied on Fig. 9’s disclosure
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`Case IPR2014-00884
`Patent 7,104,347
`of “monitoring the vehicle operations over time, including operation of battery to
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`ensure the battery is functioning normally” and separately, a “version of the control
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`strategy, Tabata ’541 [that] discloses changing the lower threshold P1 (i.e.
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`“setpoint SP”) if the battery state of charge (SOC) and battery temperature exceed
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`predetermined thresholds, as described in relation to Fig. 16.” The testimony is
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`relevant because it shows that Dr. Davis is mixing different embodiments from
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`Tabata ’541 but has not provided any analysis or explanation of why a person of
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`skill in the art would be motivated to combine those embodiments, let alone
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`combine each of the separate embodiments with Tabata ’201.
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`11.
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` In exhibit 2217, on 85:9-16 Dr. Davis testified that he was not relying
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`on Fig. 9 from Tabata for its disclosure of using the increase and decrease of the
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`energy amounts to calculate the charging or discharging efficiency,” but was
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`instead relying on “the entire patent.” This testimony is relevant to paragraphs 470-
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`472 on pages 195-198 of Ex. 1215 where Dr. Davis testified that his opinions on
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`claim 24 relied on Fig. 9’s disclosure of “monitoring the vehicle operations over
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`time, including operation of battery to ensure the battery is functioning normally”
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`and separately, a “version of the control strategy, Tabata ’541 [that] discloses
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`changing the lower threshold P1 (i.e. “setpoint SP”) if the battery state of charge
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`(SOC) and battery temperature exceed predetermined thresholds, as described in
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`relation to Fig. 16.” The testimony is relevant because it shows that Dr. Davis’s
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`Case IPR2014-00884
`Patent 7,104,347
`testimony is conclusory and that Dr. Davis is mixing different embodiments from
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`Tabata ’541 but has not provided any analysis or explanation of why a person of
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`skill in the art would be motivated to combine those embodiments, let alone
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`combine each of the separate embodiments with Tabata ’201.
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`12.
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` In exhibit 2217, on 90:20-91:5, Dr. Davis testified that looking at an
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`instantaneous point of data was not a pattern. This testimony is relevant to
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`paragraph 471 on page 197 of Ex. 1215, where Dr. Davis testified that he was
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`relying on Tabata ’201’s disclosure of “changing the lower threshold P1 (i.e.
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`“setpoint SP”) if the battery state of charge (SOC) and battery temperature exceed
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`predetermined thresholds.” (emphasis added) The testimony is relevant because
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`it contradicts Dr. Davis’s opinion that comparing the instantaneous state of battery
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`charge to a predetermined threshold discloses the “pattern” limitation of claim 24.
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`13.
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` In exhibit 2217, on 92:17-93:4, Dr. Davis testified that step SH4 in
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`Fig. 16 of Tabata ’541, which determines whether or not to execute step SH5 based
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`on the instantaneous state of charge of the battery, was not a pattern. In exhibit
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`2217, on 86:6-8, Dr. Davis testified that the modification of the “P1” threshold in
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`Tabata ‘541 (which Dr. Davis relies on for “vary[ing] said setpoint SP
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`accordingly” in claim 24) occurs at step SH5 on Figure 16 of Tabata ’541. This
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`testimony is relevant to paragraph 471 on page 197 of Ex. 1215, where Dr. Davis
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`testified that he was relying on Tabata ’201’s disclosure of “changing the lower
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`Case IPR2014-00884
`Patent 7,104,347
`threshold P1 (i.e. “setpoint SP”) if the battery state of charge (SOC) and battery
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`temperature exceed predetermined thresholds.” The testimony is relevant because
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`it shows that Tabata ‘541 does not disclose changing a “setpoint” based on a
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`pattern, and Dr. Davis’s conclusory testimony is based on hindsight bias and
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`combining embodiments of Tabata ‘541 without any justification for doing so.
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`Dated: June 10, 2015
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`Case IPR2014-00884
`Patent 7,104,347
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`By: /s/Kevin Greene
`
`
`Timothy W. Riffe (Reg. No. 43,881)
`Kevin Greene, (Reg. No. 46,031)
`FISH & RICHARDSON P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`Tel: (202) 626-6447
`Fax: (202) 783-2331
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`Attorneys for Patent Owner
`Paice LLC & Abell Foundation, Inc.
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`CERTIFICATE OF SERVICE
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`Case IPR2014-00884
`Patent 7,104,347
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on June 10, 2015, a complete and entire copy of this Patent Owner’s
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`Motion for Observation and Exhibit was provided via email to the Petitioner by
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`serving the correspondence email addresses of record as follows:
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`Frank A. Angileri
`Brooks Kushman P.C.
`1000 Town Center
`Twenty-Second Floor
`Southfield, Michigan 48075
`Email: FPGP0101IPR4@brookskushman.com
`
`Lissi Mojica
`Kevin Greenleaf
`Dentons US LLP
`1530 Page Mill Road
`Suite 200
`Palo Alto, California 94304-11251
`Email: lissi.mojica@dentons.com
`Email: kevin.greenleaf@dentons.com
`Email: iptdocketchi@dentons.com
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`/Susan C. Johnson/
`Susan Johnson
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis MN 55402
`214-292-4086
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