Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 38
`
`Entered: December 10, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00884
`Patent 7,104,347 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`
` Paper 38
`
`Entered: December 10, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00884
`Patent 7,104,347 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`
`I. INTRODUCTION
`Ford Motor Company (“Ford”) filed a Petition (“Pet.”) for inter partes
`review of claims 1, 7, 10, 21, 23, and 24 of U.S. Patent No. 7,104, 347 B2
`(“the ’347 patent”), which is owned by Paice LLC & The Abell Foundation,
`Inc. (collectively, “Paice”). In a preliminary proceeding, we decided to
`institute trial (“Dec. Inst.”) because Ford demonstrated a reasonable
`likelihood that the challenged claims are unpatentable under 35 U.S.C.
`§ 103. In due course, Paice filed a Patent Owner Response (“PO Resp.”),
`and Ford followed with a Reply (“Reply”). Having heard oral argument on
`this matter,1 and pursuant to our jurisdiction under 35 U.S.C. § 6(c), we
`determine Ford has proven that claims 1, 7, and 10 are unpatentable by a
`preponderance of the evidence, but has not carried its burden with respect to
`claim 24. Also, pursuant to 35 U.S.C. § 315(e)(1), we determine that Ford is
`estopped from maintaining its challenge against claims 21 and 23.
`II. BACKGROUND
`A. Related Proceedings
`The instant Petition challenges several claims of the ’347 patent that
`
`have been adjudicated previously in IPR2014-00571 and IPR2014-00579,
`but on different grounds. Specifically, those prior proceedings led to final
`written decisions in which claims 1, 7, 21, and 23 at issue here were
`determined to be unpatentable, among other claims of the ’347 patent. See
`IPR2014-00571, Paper 44, 2015 WL 5782084 (PTAB Sept. 28, 2015);
`IPR2014-00579, Paper 45, 2015 WL 5782085 (PTAB Sep. 28, 2015).2 We
`
`
`1 A transcript (“Tr.”) has been entered into the record. Paper 36.
`2 Paice has filed notices of appeal from our final written decisions in the
`-571 and -579 proceedings.
`
`2
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`granted institution of trial in the instant proceeding back in December 2014,
`well before our final written decisions in the -571 and -579 proceedings.
`
`The ’347 patent is also the subject of co-pending district court actions,
`including Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md., filed
`Feb. 19, 2014), and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
`(D. Md., filed Feb. 16, 2012). Pet. 1; see also PO Resp. 7–8 (referencing the
`district courts’ claim construction). We are informed that, in the latter
`action, a jury trial was recently completed on October 1, 2015, and the
`parties are currently engaged in post-trial briefing.
`B. The ’347 Patent
`The ’347 patent describes a hybrid vehicle with an internal
`
`combustion engine, at least one electric motor, and a battery bank, all
`controlled by a microprocessor that controls the direction of torque between
`the engine, motor, and drive wheels of the vehicle. Ex. 1201, 17:5–45,
`Fig. 4. The microprocessor monitors the vehicle’s instantaneous torque
`requirements, or road load, to determine the source of torque necessary to
`propel the vehicle, be it the engine, the motor, or both. Id. at 11:60–62.
`Aptly, the ’347 patent describes the vehicle’s various modes of operation as
`an engine-only mode, an all-electric mode, or a hybrid mode. Id. at 35:66–
`36:58, 37:26–38:11.
`
`In summarizing the invention, the ’347 patent states that the
`microprocessor selects the appropriate mode of operation “in response to
`evaluation of the road load, that is, the vehicle’s instantaneous torque
`demands and input commands provided by the operator of the vehicle.”3 Id.
`
`
`3 The ’347 patent contrasts the claimed invention to prior control strategies
`“based solely on speed,” which are “incapable of responding to the
`
`3
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`at 17:28–32. More specifically, “the microprocessor can effectively
`determine the road load by monitoring the response of the vehicle to the
`operator’s command for more power.” Id. at 37:44–51. “[T]he torque
`required to propel the vehicle [i.e., road load] varies as indicated by the
`operator’s commands.” Id. at 38:12–14. For example, the microprocessor
`“monitors the rate at which the operator depresses pedals [for acceleration
`and braking] as well as the degree to which [the pedals] are depressed.” Id.
`at 27:21–34. These operator input commands are provided to the
`microprocessor “as an indication that an amount of torque” from the engine
`“will shortly be required.” Id. at 27:36–53.
`
`The microprocessor then compares the vehicle’s torque requirements
`against a predefined “setpoint” and uses the results of the comparison to
`determine the vehicle’s mode of operation. Id. at 40:20–55. The
`microprocessor may utilize a control strategy that runs the engine only in a
`range of high fuel efficiency, such as when the torque required to drive the
`vehicle, or road load (RL), reaches a setpoint (SP) of approximately 30% of
`the engine’s maximum torque output (MTO). Id. at 20:52–60, 37:26–46; see
`also id. at 13:47–61 (“the engine is never operated at less than 30% of MTO,
`and is thus never operated inefficiently”). The microprocessor may also
`monitor other operating parameters to control the vehicle’s mode of
`operation, such as the battery’s state of charge and the operator’s driving
`history over time. Id. at 19:53–60; see also id. at 37:23–26 (“according to
`one aspect of the invention, the microprocessor 48 controls the vehicle’s
`mode of operation at any given time in dependence on ‘recent history,’ as
`
`
`operator’s commands, and will ultimately be unsatisfactory.” Ex. 1201,
`13:35–38.
`
`4
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`well as on the instantaneous road load and battery charge state”). According
`to the ’347 patent, this microprocessor control strategy maximizes fuel
`efficiency and reduces pollutant emissions of the hybrid vehicle. Id. at
`15:48–50.
`
`B. The Challenged Claims
`Of the challenged claims, claims 1 and 23 are independent. Claim 1
`
`requires two electric motors, while claim 23 requires simply one or more
`electric motors. Claim 1 is illustrative and recites:
`1.
`A hybrid vehicle, comprising:
`an internal combustion engine controllably coupled to
`road wheels of said vehicle;
`
`a first electric motor connected to said engine [a]nd
`operable to start the engine responsive to a control signal;
`
`a second electric motor connected to road wheels of said
`vehicle, and operable as a motor, to apply torque to said wheels
`to propel said vehicle, and as a generator, for accepting torque
`from at least said wheels for generating current;
`
`a battery, for providing current to said motors and
`accepting charging current from at least said second motor; and
`
`a controller for controlling the flow of electrical and
`mechanical power between said engine, first and second
`motors, and wheels,
`
`wherein said controller starts and operates said engine
`when torque require[d] to be produced by said engine to propel
`the vehicle and/or to drive either one or both said electric
`motor(s) to charge said battery is at least equal to a setpoint
`(SP) above which said engine torque is efficiently produced,
`and wherein the torque produced by said engine when operated
`at said setpoint (SP) is substantially less than the maximum
`torque output (MTO) of said engine.
`
`Ex. 1201, 58:13–37.
`
`
`
`5
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`
`C. The Decision to Institute
`In the preliminary proceeding, we instituted inter partes review on
`
`two grounds, determining Ford had demonstrated a “reasonable likelihood”
`that (1) claims 1, 7, 10, and 21 are unpatentable as obvious over Caraceni,4
`and (2) claims 23 and 24 are unpatentable as obvious over Tabata ’2015 and
`Tabata ’541.6 Dec. Inst. 14–15. We now determine whether Ford has
`proven the unpatentability of these claims by a “preponderance of the
`evidence.” 35 U.S.C. § 316(e).
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). This standard involves
`determining the ordinary and customary meaning of the claim terms as
`understood by one of ordinary skill in the art reading the patent’s entire
`written disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Here, our review centers on the construction of two claim
`terms—“road load (RL)” and “setpoint (SP).”7
`
`
`
`
`
`
`4 A. Caraceni et al., Hybrid Power Unit Development for Fiat Multipla
`Vehicle, SAE TECHNICAL PAPER 981124, pub. 1998 (Ex. 1203, “Caraceni”).
`5 U.S. Patent No. 5,841,201, iss. Nov. 24, 1998 (Ex. 1204, “Tabata ’201”).
`6 U.S. Patent No. 6,158,541, iss. Dec. 12, 2000 (Ex. 1205, “Tabata ’541”).
`7 Although Ford also proposes a construction for the terms “low-load mode
`I,” “highway cruising mode IV,” and “acceleration mode V” (Pet. 17), those
`terms are expressly defined by claim 7. Ex. 1201, 58:58–59:8. As such,
`they do not require further construction.
`
`6
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`“Road load” or “RL”
`1.
`
`The term “road load” or “RL” does not appear in independent claim 1,
`but is found in independent claim 23, as well as dependent claims 7 and 21.
`Both Ford and Paice agree that “road load” means the instantaneous torque
`required to propel the vehicle. Pet. 14–15; PO Resp. 7, 17. That proposed
`construction comports with the specification, which defines “road load” as
`“the vehicle’s instantaneous torque demands, i.e., that amount of torque
`required to propel the vehicle at a desired speed.” Ex. 1201, 12:38–42.
`
`In further defining road load, the specification notes that “the
`operator’s depressing the accelerator pedal signifies an increase in desired
`speed, i.e., an increase in road load, while reducing the pressure on the
`accelerator or depressing the brake pedal signifies a desired reduction in
`vehicle speed, indicating that the torque being supplied is to be reduced or
`should be negative.” Id. at 12:42–51 (emphases added). As such, the
`specification states that road load “can be positive or negative.” Id. at
`12:51–54. Thus, consistent with the specification, we construe “road load”
`or “RL” as “the amount of instantaneous torque required to propel the
`vehicle, be it positive or negative.”
`“Setpoint” or “SP”
`2.
`
`The term “setpoint” or “SP” is found in independent claims 1 and 23,
`as well as dependent claim 7. Ford proposes that “setpoint” be construed, in
`the context of the claims, as a “predetermined torque value.” Pet. 15, 17. In
`that regard, Ford correctly notes that the claims compare the setpoint against
`a torque value. Id. at 16. For example, claim 1 speaks of the “setpoint” or
`“SP” as being the lower limit at which the engine can produce torque
`efficiently, i.e., “when torque require[d] to be produced by said engine to
`
`7
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`propel the vehicle . . . is at least equal to a setpoint (SP) above which said
`engine torque is efficiently produced.”8 Ex. 1201, 58:29–34. Similarly,
`claim 23 recites “employing said engine to propel said vehicle when the
`torque RL required to do so is between said lower level SP and MTO,”
`where MTO stands for maximum torque output. Id. at 60:39–41. This
`express language suggests that “setpoint” is not just any value, but a value
`that—per the surrounding claim language—equates to “torque.” See
`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“the
`claims themselves provide substantial guidance as to the meaning of
`particular claim terms . . . the context in which a term is used in the asserted
`claim can be highly instructive”).
`
`Paice, on the other hand, argues that “setpoint” is synonymous with a
`“transition” point, not a torque value. PO Resp. 9–12. Citing the
`specification, Paice urges that “setpoint” must be construed to indicate a
`point “at which a transition between operating modes may occur.” Id. at 9.
`Paice’s argument is misplaced. While Paice is correct that sometimes the
`specification describes the setpoint in terms of a “transition point” (see id. at
`10), the claim language itself makes clear that setpoint relates simply to a
`torque value, without requiring that it be a transition point. Indeed, the
`specification acknowledges that the mode of operation does not always
`transition, or switch, at the setpoint, but instead depends on a number of
`parameters. For instance,
`
`
`8 Paice’s declarant, Mr. Neil Hannemann, agreed that, given the
`“comparison” being made by this claim language, the “most
`straightforward” construction is that “setpoint is a torque value.” Ex. 1246,
`79:16–80:25.
`
`8
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`
`the values of the sensed parameters in response to which the
`operating mode is selected may vary . . . , so that the operating
`mode is not repetitively switched simply because one of the
`sensed parameters fluctuates around a defined setpoint.
`
`Ex. 1201, 19:58–64 (emphasis added). That disclosure suggests that a
`transition does not spring simply from the recitation of “setpoint.” As such,
`we will not import into the meaning of “setpoint” an extraneous limitation
`that is supported by neither the claim language nor the specification.
`Moreover, that a “setpoint” does not mean a per se transition between
`
`operating modes is reinforced by the fact that only the dependent claims, for
`example, claims 3 and 10, describe the “setpoint” in terms of a “transition”
`between operating modes. See id. at 58:41–47, 59:25–29. Where the
`meaning of a claim term is clear from the context of its use in an
`independent claim, we will not further limit the meaning of the term by its
`use in a dependent claim, absent justification for doing so. See Phillips, 415
`F.3d at 1315 (“the presence of a dependent claim that adds a particular
`limitation gives rise to a presumption that the limitation in question is not
`present in the independent claim”). Thus, we reject Paice’s attempt to
`further limit the meaning of setpoint to a transition between operating
`modes.
`
`We also regard as meaningful that nothing in the specification
`precludes a setpoint from being reset, after it has been set. The specification
`states that the value of a setpoint may be “reset . . . in response to a repetitive
`driving pattern.” Ex. 1201, 40:55–58. But, just because a setpoint may be
`reset under certain circumstances does not foreclose it from being “set,” or
`
`9
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`“fixed,” at some point in time.9 A setpoint for however short a period of
`time still is a setpoint. Thus, we construe “setpoint” as a “predetermined
`torque value that may or may not be reset.”
`
`Finally, Paice argues that any construction limiting the meaning of
`setpoint to a “torque value” would be “directly at odds with the construction
`adopted by two district courts” in related litigation.10 PO Resp. 7–8.
`Although, generally, we construe claim terms under a different standard than
`a district court, and thus, are not bound by a district court’s prior
`construction, Paice’s emphasis on the district court’s construction compels
`us to address it. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1327
`(Fed. Cir. 2015) (“Given that [patent owner’s] principal argument to the
`board . . . was expressly tied to the district court’s claim construction, we
`think that the board had an obligation, in these circumstances, to evaluate
`that construction”).
`
`In that regard, the district court held:
`there is nothing in the claims or specification that indicate a
`given setpoint value is actually represented in terms of torque.
`In fact, the specification clearly indicates that the state of
`charge of the battery bank, ‘expressed as a percentage of its full
`charge’ is compared against setpoints, the result of the
`comparison being used to control the mode of the vehicle.
`
`
`
`9 The definition of “set” is “determined . . . premeditated . . . fixed . . .
`prescribed, specified . . . built-in . . . settled.” Merriam-Webster’s Collegiate
`Dictionary (10th ed. 2000). Ex. 3001.
`10 Paice LLC v. Toyota Motor Corp., No. 2:07-cv-00180, Dkt. 63 (E.D. Tex.
`Dec. 5, 2008); Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499, 2014
`WL 3725652 (D. Md. July 24, 2014).
`
`
`10
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`Ex. 1211, 13 (citing the ’347 patent, 40:28–31). But, as discussed above,
`although claims are read in light of the specification, it is the use of the term
`“setpoint” within the context of the claims themselves that provides a firm
`basis for our construction. See Phillips, supra. Here, the claims instruct us
`that “setpoint,” when read in the context of the surrounding language, is
`limited to a torque value. As for the district court’s statement that the
`battery’s state of the charge is compared to a setpoint, we note that the
`claims actually speak of comparing the “state of charge of the battery” to “a
`predetermined level,” not the “setpoint” or “SP” recited elsewhere in the
`claims. See, e.g., Ex. 1201, 59:13–16, 61:33–36 (dependent claims 9 and 31,
`respectively). Thus, in the context of the claims, we decline to read
`“setpoint” as also encompassing a state of charge of the battery, as the
`district court did. Instead, we construe “setpoint” as representing a torque-
`based value.
`3.
`“Monitor Patterns of Vehicle Operation Over Time”
`
`Claim 24 recites that the controller is operable to “monitor patterns of
`vehicle operation over time.” Ford does not explicitly propose a
`construction for this phrase, other than to argue it should be construed
`“according to its plain and ordinary meaning.” Reply 3. Paice, on the other
`hand, argues that this phrase should be construed to mean that the controller
`“tracks and records the driver’s repeated driving operations over time.” PO
`Resp. 13.
`
`According to Paice, the specification of the ’347 patent supports a
`construction that monitoring the patterns of vehicle operation over time
`refers to how the operator actually drives the vehicle over some period of
`time, as opposed to monitoring an internal data point of the vehicle. PO
`
`11
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`Resp. 13–16. Specifically, Paice points to the following descriptions in the
`specification:
`Examples of this practice—amounting in many circumstances
`to modifying certain specific values depending on other data
`items not discussed in detail, or by monitoring the vehicle’s
`actual usage patterns over time—are given below.
`
`Ex. 1201, 35:47–58 (emphasis added).
`It is also within the scope of the invention for the
`microprocessor to monitor the vehicle’s operation over a period
`of days or weeks and reset this important setpoint in response to
`a repetitive driving pattern. For example, suppose the operator
`drives the same route from a congested suburban development
`to a workplace about the same time every morning; typically
`the road load might remain under 20% of MTO for the first few
`minutes of each day, then vary between 0 and 50% of MTO for
`another few minutes as the operator passes through a few traffic
`lights, and then suddenly increase to 150% of MTO as the
`operator accelerates onto a highway. It is within the skill [in]
`the art to program a microprocessor to record and analyze
`such daily patterns, and to adapt the control strategy
`accordingly. For example, in response to recognition of a
`regular pattern as above, the transition point might be adjusted
`to 60% of MTO; this would prevent repetitive engine starts as
`the road load exceeded 30% of MTO for a few hundred yards at
`a time, as might often occur in suburban traffic. Similarly, the
`engine starting routine might be initiated after the same total
`distance had been covered each day.
`Id. at 40:56–41:9 (emphasis added).
`
`Although Ford does not provide an explicit construction for the phrase
`“monitor patterns of vehicle operation over time,” Ford implicitly construes
`the phrase to encompass monitoring the battery state of charge and adjusting
`the control strategy based on that state of charge. Pet. 55–56 (citing Ex.
`1215 ¶¶ 468–471). As shown above, however, the specification makes clear
`
`
`
`12
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`that the “patterns” recited by claim 24 are the repetitive and regular driving
`patterns of the vehicle’s operator, not some internal data point of the vehicle
`itself (such as battery state of charge). Ex. 1201, 40:56–41:9. Indeed, the
`specification draws a clear distinction between changing the control strategy
`in response to monitored battery state of charge (“BSC”) and changing it in
`in response to monitored driving patterns. See, e.g., Ex. 1201, 44:23–39 (“it
`may be desirable to vary the operation of the system insofar as responsive to
`BSC in accordance with monitored variables indicative of battery
`temperature, ambient temperature, and the like”). Notably, the specification
`makes no mention of monitoring “patterns” of a battery state of charge.
`
`Moreover, the plain words of claim 24 require monitoring patterns
`over time. It is not enough to monitor a single variable of a vehicle
`component, such as battery state of charge. Rather, the plain meaning of the
`words require monitoring patterns, particularly where the specification
`speaks of patterns in terms of regular and repetitive usage by the operator of
`the vehicle, not a component of the vehicle. Thus, we agree with Paice that
`the phrase “monitoring patterns of vehicle operation over time” means
`monitoring a driver’s repeated driving operations over time.
`B. The Instituted Grounds
`Estoppel—Claims 21 and 23
`1.
`Ford is estopped from maintaining its challenge against claims 21 and
`
`23 in the instant proceeding because the asserted grounds are based on prior
`art that Ford was aware of, and could have raised, in prior proceedings
`challenging the same claims. Specifically, claims 21 and 23 were the
`subject of the related -571 and -579 proceedings discussed above (see
`section II.A.), in which final written decisions were entered. In those prior
`
`13
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`proceedings, claims 21 and 23 were adjudged to be unpatentable on grounds
`that differ from the Caraceni-based and Tabata-based grounds asserted
`against claims 21 and 23, respectively, in the instant proceeding.
`
`Under 35 U.S.C. § 315(e)(1), once a petitioner has obtained a final
`written decision on a patent claim in an inter partes review, that petitioner
`may not maintain a subsequent proceeding with respect to that same claim
`on a ground that it “reasonably could have raised” in the original proceeding.
`Specifically, section 315(e)(1) provides:
`(e) Estoppel.—
`
`(1) Proceedings before the office.—The petitioner in an
`inter partes review of a claim in a patent under this chapter that
`results in a final written decision under section 318(a) . . . may
`not request or maintain a proceeding before the Office with
`respect to that claim on any ground that the petitioner raised or
`reasonably could have raised during that inter partes review.
`
`The prerequisites for applying estoppel are satisfied here because:
`
`(1) Ford is the petitioner in the instant proceeding and in the prior -571 and
`-579 proceedings; and (2) the -571 and -579 proceedings resulted in final
`written decisions. With those prerequisites in place, our determination of
`whether to apply estoppel turns on whether Ford could have raised the prior
`art asserted here—Caraceni against claim 21, and Tabata ’201 and Tabata
`’541 against claim 23—in the -571 and/or -579 proceedings.
`
`What a petitioner “reasonably could have raised” includes prior art
`that a skilled advocate would have been expected to discover and proffer in
`the course of conducting due diligence on the patent at issue. Here, we need
`not speculate about what reasonably could have been discovered and
`proffered, because the record demonstrates that Ford must have known of
`Caraceni, Tabata ’201, and Tabata ’541 at the time of the -571 and -579
`
`14
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`Petitions, and if not, such knowledge should be imputed to it. More
`specifically, with respect to the Tabata references, they were cited during
`prosecution that led to the ’347 patent and are listed on the face of the
`patent. Ex. 1201, 3, 4. As such, Ford was on notice of the existence of the
`Tabata references as potential prior art to the ’347 patent before it filed the
`-571 and -579 Petitions.
`
`In addition, Ford could have raised the Caraceni reference against
`claim 21 in the -571 and -579 proceedings because it was asserted in a
`related petition, IPR2014-00570, that Ford filed on the very same day as the
`-571 and -579 Petitions. Thus, Ford must have known, or should have
`known, of Caraceni’s potential application to claim 21 before it filed the
`-571 and -579 Petitions. Under these circumstances, we determine that the
`Caraceni and Tabata references constitute grounds that Ford reasonably
`could have asserted against claims 21 and 23 in the original -571 and -579
`Petitions. Accordingly, Ford is estopped under 35 U.S.C. § 315(e)(1) from
`now maintaining those grounds against claims 21 and 23 in the instant
`proceeding.
`2.
`Claims 1, 7, and 10—Obviousness over Caraceni
`
`Ford challenges independent claim 1, and dependent claims 7 and 10,
`on the ground that the claimed invention would have been obvious over the
`teachings of Caraceni.11 Pet. 18–42. In support of this ground, Ford
`
`
`11 This is the first instance in which Ford challenges dependent claim 10.
`Thus, unlike claim 21, which Ford is estopped from pursuing (as discussed
`above), claim 10 was not the subject of the prior -571 and -579 proceedings
`that resulted in final written decisions. And, although claims 1 and 7 were
`the subject of final written decisions in the -571 and -579 Petitions, we
`exercise our discretion to maintain the instant proceeding against claims 1
`
`15
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`provides a detailed analysis of how Caraceni meets each limitation of the
`challenged claims and why a skilled artisan would have found the claimed
`invention obvious over Caraceni and the general state of the art. Id. at 21–
`42.
`Claim 1
`a.
`
`At the outset, we find that Caraceni teaches the essential components
`
`of a hybrid vehicle, which like claim 1, include: (1) an internal combustion
`engine that provides propulsive torque to the wheels of the vehicle, (2) an
`electric motor that is also capable of providing propulsive torque to the
`wheels, (3) a battery that provides electrical current to the motor, and (4) a
`controller, or “Vehicle Management Unit” (VMU), that controls operation of
`the engine and motor in a “hybrid mode” and a “recharge mode.” Compare
`Figs. 2, 10 of Ex. 1003 (Caraceni) with Fig. 4 of Ex. 1201 (the ’347 patent);
`see also Ex. 1215 ¶ 201 (depicting Caraceni’s Figs. 2, 10 as annotated by
`Ford’s declarant, Dr. Davis). Also, with respect to a separate starter motor
`for the engine (i.e., the “first electric motor” of claim 1), Caraceni teaches an
`“engine starter.” Ex. 1203, Fig. 10. Although Caraceni does not disclose
`that the engine starter is an electric motor per se, we are persuaded that a
`
`
`and 7 because they are incorporated within the body of claim 10 as a matter
`of dependency. See 35 U.S.C. § 315(e)(1) (neither the plain terms of this
`provision, nor chapter 31 more generally, prohibits the Board from entering
`final decisions where it sees fit); see also 35 U.S.C. § 325(d) (conferring
`authority on the Board to decide how to deal with multiple proceedings). In
`any event, whatever renders obvious a dependent claim necessarily renders
`obvious the claims from which it depends.
`
`16
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`skilled artisan would have understood Caraceni’s “engine starter” to be an
`electric motor.12 See Ex. 1215 ¶¶ 210–215.
`In an attempt to distinguish the claimed invention from the hybrid
`configuration taught by Caraceni, Paice raises a number of arguments
`directed to certain functional aspects of the controller of claim 1. PO Resp.
`18–43.
`
`“Engine . . . to Propel the Vehicle”
`First, Paice contends that Caraceni fails to teach or suggest starting
`and operating the engine to propel the vehicle in response to a “setpoint,” as
`required by claim 1. PO Resp. 19–32. In particular, Paice argues that,
`instead of a setpoint, Caraceni “relies on the driver to decide when to turn
`the engine on.” Id. at 19. According to Paice, Caraceni discloses that the
`driver manually selects when to operate the engine, whereas, in the claimed
`invention, the controller automatically determines when to operate the
`engine. Id. at 20 (citing Ex. 1203, 5–6); see also id. at 23 (“the user in
`Caraceni” selects when to operate the engine, “not the control system”).
`
`We are not persuaded that Caraceni controls operation of the engine
`on manual basis. Our review of Caraceni supports a contrary finding.
`Although Paice is correct that Caraceni permits the driver to manually select
`whether the vehicle will be operated as an all-electric vehicle, an engine-
`only vehicle, or a hybrid vehicle, it is only the vehicle’s operation in a
`hybrid mode that Ford relies on to satisfy the “controller” and “setpoint”
`limitations of claim 1. In that regard, Caraceni states that “a proper
`combination of thermal engine operation for cruising, and electric motor for
`
`
`12 Paice does not dispute that Caraceni meets the “first electric motor”
`limitation of claim 1.
`
`17
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`acceleration can be used to minimize fuel consumption and emissions.” Ex.
`1203, 6. In other words, Caraceni splits the power between the engine (one
`drive train) and the electric motor (another drive train) in order to maximize
`fuel efficiency.
`
`Caraceni then makes clear that, while operating in the “hybrid mode,”
`activation of the engine is controlled automatically by a Vehicle
`Management Unit (VMU), not manually by the driver.
`The hybrid system is managed by a Vehicle Management Unit
`(VMU) which implements the working strategies of the vehicle
`and activates the two drive trains through the inverter for the
`electric motor and the engine electronic control unit
`respectively.
`
`
`Ex. 1203, 6 (emphasis added). Ford’s declarant, Dr. Davis, explains that the
`VMU is a controller that receives and transmits commands to an
`“electromagnetic clutch switch” connected to the engine’s transmission for
`controlling activation and operation of the engine. Ex. 1215 ¶¶ 205–209,
`251–252 (citing Ex. 1203, Fig. 10). Dr. Davis further explains that, in the
`hybrid mode, the VMU controls operation of the electric motor through an
`“inverter interface” to act as either a traction motor or a generator. Id.
`¶¶ 218–220, 230–237, 269. Based on Dr. Davis’s testimony of a skilled
`artisan’s understanding of Caraceni, we find that Caraceni teaches a
`controller that automatically starts and operates the engine in a hybrid mode,
`as required by claim 1.
`
`With respect to the controller’s use of a “setpoint” as a basis for
`starting and operating the engine, we credit Dr. Davis’ testimony that
`Figure 9 of Caraceni illustrates that the engine is not started until the torque
`
`18
`
`
`
`IPR2014-00884
`Patent 7,104,347 B2
`
`demand exceeds a predetermined torque value. Ex. 1215 ¶¶ 259–287.
`Figure 9, as annotated by Dr. Davis
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
