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,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,104,347 to Severinsky et al.
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`IPR Case No.: IPR2014-00884
`______________
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`PETITIONER’S RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
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`
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`
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`______________
`
`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
`______________
`
`
`
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER'S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
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`
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`Table of Contents
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`
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`I.
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`Patent Owner’s motion for observation is improper and should be
`dismissed .......................................................................................................... 1
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`II.
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`Response To Patent Owner’s Observations .................................................... 2
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`Observation 1.
`Observation 2.
`Observation 3.
`Observation 4.
`Observation 5.
`Observation 6.
`Observation 7.
`Observation 8.
`Observation 9.
`Observation 10.
`Observation 11.
`Observation 12.
`Observation 13.
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`Certificate of Service ...............................................................................................10
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`
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`i
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`I.
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`Patent Owner’s motion for observation is improper and should be
`dismissed
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`A “motion for observation on cross-examination is a mechanism to draw the
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`Board’s attention to relevant cross-examination testimony of a reply witness.”
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`Medtronic Inc. v. Nuvasive, Inc., IPR2013-00506, Paper 31 at 3. The Board has
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`been clear that the observations must be nothing more than a “concise statement of
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`the relevance of precisely identified testimony to a precisely identified argument or
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`portion of an exhibit.” Medtronic, Inc. v. Nuvasive, Inc., IPR2013-00506, Paper 37
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`at 2. Observations are not allowed to include arguments, and are not “an
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`opportunity to raise new issues, to re-argue issues, or to pursue objections.” PTAB
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`Trial Practice Guide, 77 F.R. 157, 48768 §L; IPR2013-00506, Paper 37 at 2. If
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`even one observation is found to have violated these rules, the Board may dismiss
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`and not consider the Patent Owner’s entire motion for observation. See IPR2013-
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`00506, Paper 37 at 2-4 (“the entire motion… may be dismissed and not considered
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`if there is even one excessively long or argumentative observation”); see also
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`CBM2013-00017, Paper 36 at 4.
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`On June 10, 2015, Patent Owner filed its Motion for Observations on Cross
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`Examination of Dr. Gregory Davis. (Paper No. 29.) Petitioner believes that one or
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`more of the Patent Owner’s observations are improper as they are argumentative,
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`include new issues not previously raised, and/or re-argue prior issues and pursue
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`objections. Accordingly, Petitioner requests that the Board deny Patent Owner’s
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`1
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`motion.
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`II. Response To Patent Owner’s Observations
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`Notwithstanding the above general objections, Petitioner respectfully
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`submits the following responses.
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`Observation 1. This observation improperly cites portions from over 15
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`pages of Dr. Davis’ deposition testimony and is therefore not a “concise statement
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`of the relevance of precisely identified testimony to a precisely identified
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`argument.” (IPR2013-00506, Paper 37 at 2-4.) Dr. Davis’ deposition testimony is
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`also not relevant because Dr. Davis’ initial testimony was in response to Paice’s
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`question regarding the legal “understanding of the doctrine of inherency.” (Ex.
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`2212 at 153:14-15) In contrast, Dr. Davis’ reply testimony states that he was not
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`“trying to attach any legal type of legal significance” to the word “inherent,” but
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`was using the word “inherent” according to his “non-legal definition.” (Ex. 2217 at
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`11:16-12:5, 17:12-18:3; see also Ex. 1248 (Davis Reply Declaration) at ¶¶6-7.)
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`Observation 2. Dr. Davis’ deposition testimony is not relevant because it
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`does not show that his reply testimony is “relying on the alleged possible. . . rather
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`than the actual disclosure of Caraceni.” Observation 2 selectively cites only the
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`first sentence, but Dr. Davis full reply testimony states that a POSA would have
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`understood an engine performance map (efficiency map) would have existed and
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`been used by Caraceni. (Ex. 2217 28:9-29:5.) Dr. Davis also disagreed with Paice
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`2
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`that “Caraceni . . . does not disclose that an engine performance map stores
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`calibration data within the vehicle controller for determining torque values where
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`the engine should not be operated.” (Ex. 2217 at 29:11-30:1, see also 31:19-34:16.)
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`In response to Paice’s question whether Caraceni “explicitly discloses the engine
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`performance map,” Dr. Davis testified that a POSA would understand “that’s the
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`only way to make those decisions about where those torque levels are so you know
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`where to operate the engine and how much torque you want the engine to provide.”
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`(Ex. 2217 at 37:14-38:25.)
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`Observation 3. Dr. Davis’ testimony is not relevant because it does not
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`show his opinions are conclusory and unsupported by the evidence. Dr. Davis
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`testified: “There’s support throughout, as I’ve kind of pointed to bits and pieces
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`here and there where they're talking about minimizing fuel consumption,
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`minimizing emissions, achieving the highest fuel economy.” (Ex. 2217 at 39:10-
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`17; see also Ex. 1248 at ¶¶8-17.) Dr. Davis also testified that a POSA would
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`understand “when reading the [Caraceni] reference as a whole. . . that they’re using
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`the engine fuel performance map in order to base their decisions about when and
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`how to operate the engine.” (Ex. 2217 at 40:19-25; see also 37:14-38:25.)
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`Observation 4. Dr. Davis’ complete Reply Declaration does not
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`contradict his reply testimony. Dr. Davis’ Reply Declaration explains that Caraceni
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`“will first try to recharge the batteries by entering the ‘recharge mode’. . . [and] if
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`recharge mode did not substantially provide the charge needed, or the battery state-
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`of-charge was to substantial (i.e. below the threshold), the vehicle would
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`transition to operating by engine alone (thermal mode).” (Ex. 1248 at ¶25,
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`emphasis added.) Dr. Davis’ Reply Declaration also explains that “automatic
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`transition to ‘thermal mode’ is a fail-safe in case the battery cannot be recharged.”
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`(Ex. 1248 at ¶25.)
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`Observation 5. Dr. Davis’ complete Reply Declaration does not
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`contradict his reply testimony. Dr. Davis’ Reply Declaration explains that Caraceni
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`“will first try to recharge the batteries by entering the ‘recharge mode’. . . [and] if
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`recharge mode did not substantially provide the charge needed, or the battery state-
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`of-charge was to substantial (i.e. below the threshold), the vehicle would
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`transition to operating by engine alone (thermal mode).” (Ex. 1248 at ¶25,
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`emphasis added.) Dr. Davis’ Reply Declaration also explains that “automatic
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`transition to ‘thermal mode’ is a fail-safe in case the battery cannot be recharged.”
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`(Ex. 1248 at ¶25.)
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`Observation 6. Dr. Davis’ deposition testimony is not relevant because it
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`does not show that his reply testimony contradicts his prior testimony. The
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`complete excerpt (observation 6 cites only select portions) asks Dr. Davis to
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`“forget about Caraceni” and answer whether a “scenario [exists] in which a user is
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`driving a hybrid vehicle and flips a switch that causes the engine to drive an
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`4
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`electric motor to charge the battery, [and] under that scenario would claim
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`limitation 1.6 be satisfied?” (Ex. 2217 at 54:1-24.) Dr. Davis’ answered: “I think
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`I’d have to see something and be able to sit down and really analyze it. I really
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`don’t think I can answer that as I sit here right now without, you know, doing a full
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`analysis.” (Ex. 54:11-14.)
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`Observation 7. Dr. Davis’ deposition testimony is not relevant because it
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`does not contradict his testimony that manual operation meets the claim limitation.
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`Dr. Davis testified that his opinion regarding claim 1 was “focus[ed] more on the
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`fact that it’s the controller that actually starts and operates the engine.” (Ex. 2217
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`at 56:1-5.) Dr. Davis also testified that “if the driver can manually indicate that he
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`desires recharge mode, that’s just an indication, another operator input to the
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`controller. . . [and the] controller itself starts and operates the engine.” (Ex. 2217 at
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`56:15-57:18.)
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`Observation 8. Dr. Davis’ deposition testimony does not show that he
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`“misinterpreted those figures” as being illustrations of a control strategy. Mr.
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`Hannemann’s declaration states that the figure shown in paragraph 124 illustrates a
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`“control strategy that compares demand power to a power threshold . . .” (Ex. 2215
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`at ¶125.) Mr. Hannemann’s declaration also states that the figure shown in
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`paragraph 126 illustrates “the ’347 [Patent] control strategy that compares ‘road
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`load’ to a ‘setpoint’. . .” (Ex. 2215 at ¶127.) Mr. Hannemann also testified that the
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`figure shown in paragraph 124 is used to “represent the Tabata [’201] strategy.”
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`(Ex. 1243 at 22:11-16.) Mr. Hannemann further testified that the figure shown in
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`paragraph 126 illustrates “the control strategy as disclosed by the ’347 Patent.”
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`(Ex. 1243 at 9:7-10 & 8:22-9:6.)
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`Observation 9. This observation is improper because it raises a new
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`issue, namely if it would have been obvious to a POSA that there was a “reason to
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`combine” the embodiments disclosed in Tabata ’201.1 Further, Dr. Davis’
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`testimony is not relevant because it does not show that Dr. Davis is “mixing
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`different embodiments from Tabata ’201” without providing “any analysis or
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`explanation of why a person of skill in the art would be motivated to combine
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`those embodiments.” Paice’s questions pertained to Dr. Davis’ Reply Declaration
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`where he testified to having reviewed Mr. Hannemann’s testimony regarding
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`Figure 7 of Tabata ’201. (Ex. 1248 at ¶¶62-63; see also Ex. 2217 at 63:1:68:22.)
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`Dr. Davis’ Reply Declaration also states that he agreed with Mr. Hannemann’s
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`testimony that Figure 7 of Tabata ’201 discloses an alternative embodiment of
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`Tabata ’201’s “mode 3” (“ENGINE DRIVE & CHARGING MODE”) having a
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`“setpoint.” (Ex. 1248 at ¶¶60-67.)
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`1 The Federal Circuit has held: “Combining two embodiments disclosed adjacent to
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`each other in a prior art patent does not require a leap of inventiveness.” Boston
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`Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`Observation 10. This observation is improper because it raises a new
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`issue, namely if it would have been obvious to a POSA that there was a “reason to
`
`combine” the embodiments disclosed in Tabata ’541 with Tabata ’201.2 Dr. Davis’
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`testimony is also not relevant because paragraphs 470-472 of Dr. Davis Initial
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`Declaration (Ex. 1215) concern his analysis regarding how claim 24 is satisfied.
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`Paragraphs 464-469 of Dr. Davis’ Initial Declaration concern his analysis that “[i]t
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`would be obvious to combine Tabata ’541 with Tabata ’201 for additional details
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`of the battery and hybrid control strategy relating to the battery.” (Ex. 1215 at
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`¶469.) Dr. Davis reply testimony also states that Tabata ’541 teaches a POSA that
`
`the disclosed embodiments could be “link[ed]”
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`together and
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`that
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`those
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`embodiments “can’t [be] taken. . . in isolation.” (Ex. 2217 at 83:3-84:2, 86:4-5; see
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`also complete testimony at 84:4-86:5.)
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`Observation 11. This observation is improper because it raises a new
`
`issue, namely if it would have been obvious to a POSA that there was a “reason to
`
`combine” the embodiments disclosed in Tabata ’541. Dr. Davis’ testimony is also
`
`not relevant because when asked whether he was “mixing and matching Figures 9
`
`and 16,” Dr. Davis testified: “No. [Tabata ‘541 is] teaching -- that's why it's
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`difficult to take these things in isolation. [Tabata ‘541 is] teaching a whole body of
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`ways of doing this. And [Tabata ‘541 is] teaching you different ways that you can
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`2 See footnote 1 supra.
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`accomplish these different things. And so, again, it's -- [Tabata ‘541 is] teaching
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`one of ordinary skill that, hey, here's a way to determine whether it discharged,
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`here's another way to determine whether or not it will be discharged, and here's yet
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`another way.” (Ex. 2217 at 84:4-17.) Dr. Davis reply testimony also states that
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`Tabata ’541 teaches a POSA that the disclosed embodiments could be “link[ed]”
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`together and that those embodiments “can’t [be] taken. . . in isolation.” (Ex. 2217
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`at 83:3-84:2, 86:4-5.)
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`Observation 12. Dr. Davis’ deposition testimony is not relevant because it
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`does not show that his reply testimony contradicts his Initial Declaration. Dr.
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`Davis’ testified: “[Tabata ‘541 is] talking about values of increase and decrease of
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`the energy, SOCA, SOCB, and how they differ from the theoretical value. So he's
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`looking at the patterns of whether, you know, these things are increasing or
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`decreasing, how is the efficiency. And so he's obviously looking at these data
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`points over time. So it's storing the prior data point and then comparing it over
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`time.” (Ex. 2217 at 88:25-89:7, emphasis added) In his Reply Declaration, Dr.
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`Davis also explained how the “‘increase and decrease of the energy amounts’ used
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`to calculate the charging or discharging efficiency would be considered a pattern of
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`vehicle operation.” (Ex. 1248 at ¶¶74-75)
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`Observation 13. This observation is improper because it raises a new
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`issue, namely whether Dr. Davis’ testimony was conclusory and based on
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`8
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`“hindsight bias.” Dr. Davis’ deposition testimony is also not relevant because when
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`Dr. Davis was asked whether he was “relying on that step at SH4 as a pattern,” Dr.
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`Davis’ testified: “No. That's, again, I was relying on the pattern as established in
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`Figure 9. Because, again, if you look at the conditional box above that. . . ” (Ex.
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`2217 at 92:25-93:4; emphasis added). Dr. Davis’ Reply Declaration and Initial
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`Declaration also rely on the same passages and control of Tabata ‘541 to establish
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`a pattern regarding battery charging and discharging efficiencies. (see Ex. 1215 at
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`¶470; Ex. 1248 at ¶72.)
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`Dated: June 22, 2015
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`Respectfully submitted,
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`
` /John P. Rondini/
`John P. Rondini (Reg. No. 64,949)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`DENTONS US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`650 798 0300
`
`Attorneys for Petitioner
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`9
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`Case No.: IPR2014-00884
`Attorney Docket No.: FPGP0101IPR4
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`Certificate of Service
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`The undersigned hereby certifies that on June 22, 2015, a complete and
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`entire copy of Petitioner’s Response To Patent Owner's Motion For
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`Observations On Cross Examination, was served via electronic mail by serving
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`the correspondence email address of record as follows:
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`LEAD COUNSEL
`Timothy W. Riffe, Reg. No. 43,881
`
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0011IP3@fr.com;
`
`Riffe@fr.com; Greene@fr.com
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`BACK-UP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`Ruffin B. Cordell, Reg. No. 33,487
`Linda L. Kordziel, Reg. No. 39,732
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0011IP3@fr.com;
`
`Riffe@fr.com; Greene@fr.com
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`Respectfully submitted,
`
`
` /John P. Rondini/
`Frank A. Angileri (Reg. No. 36,733)
`John E. Nemazi (Reg. No. 30,876)
`John P. Rondini (Reg. No. 64,949)
`Erin K. Bowles (Reg. No. 64,705)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`Dentons US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`650 798 0300
`Attorneys for Petitioner
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`10
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