Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION
`Patent Owner
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`Case IPR2014-00904
`Patent 7,237,634
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................. 1 
`I. 
`II.  CLAIM CONSTRUCTION ............................................................................... 6 
`A. The District Courts’ Construction .............................................................. 6 
`B.  The Board should revise its construction of “setpoint (SP)” ..................... 7 
`1.  “Setpoint” is used to mark a transition between operating modes ...... 8 
`2.  “Setpoint” is not “predetermined” and is not limited to torque values
` 12 
`III.  DEFECTS IN THE INSTITUTED SINGLE
`GROUND OF UNPATENTABILITY ............................................................ 12 
`A. Ground 1 is Defective Because Ford Misapplies Severinsky
`to the Challenged Claims.......................................................................... 13 
`B.  Ground 1 is Defective Because Ford Has Failed to Demonstrate
`that Severinsky in view of Field and SAE 1996 Discloses or
`Renders Obvious the Features Recited in the Challenged Claims ........... 26 
`1.  Ground 1 is Defective Because Ford Has Failed to Demonstrate
`that Severinsky in view of Field and SAE 1996 Discloses or
`Renders Obvious the Features Recited in Claim 16 .......................... 26 
`(a)  Severinsky in view of Field and SAE 1996 does not
`disclose or render obvious “a highway cruising mode IV,
`wherein, when the SP<the RL<the MTO, the engine is
`operable to provide torque to propel the hybrid vehicle,
`and wherein the controller is operable to start the engine
`if the engine is not running to enter the highway cruising
`mode IV” ................................................................................... 28 
`i.  Severinsky operates the engine to propel the
`vehicle based on speed, not road load (RL) ...................... 29 
`ii.  Severinsky does not compare the road load
`to a setpoint (SP) ............................................................... 39 
`iii.  Statements made in the ’634 Patent regarding
`Severinsky do not remedy the above-mentioned
`deficiencies ........................................................................ 44 
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
`(b)  Severinsky in view of Field and SAE 1996 does not
`disclose or render obvious “a low-load mode I, wherein,
`when the RL<the SP, the second electric motor is
`operable to provide torque to propel the hybrid vehicle” ......... 50 
`(c)  Severinsky in view of Field and SAE 1996 does not
`disclose or render obvious a “setpoint” .................................... 53 
`2.  Ground 1 is Defective Because Ford Has Failed to
`Demonstrate that Severinsky in view of Field and
`SAE 1996 Discloses or Renders Obvious the
`Features Recited in Claim 1 ............................................................... 55 
`(a)  Severinsky in view of Field and SAE 1996
`does not disclose or render obvious “wherein
`the controller is operable to operate the engine
`when torque required from the engine to propel
`the hybrid vehicle and/or to drive one or more
`of the first or the second motors to charge the
`battery is at least equal to a setpoint (SP) above
`which the torque produced by the engine is
`efficiently produced” ................................................................ 55 
`(b)  Severinsky in view of Field and SAE 1996 does not
`render obvious a “setpoint” as required by claim 1 .................. 58 
`3.  Severinsky in view of Field and SAE 1996 does not
`render obvious claim 18 ..................................................................... 58 
`IV.  CONCLUSION ................................................................................................ 60 
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
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`Clearwater Sys. Corp. v. Evapco, Inc.,
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`394 F. App'x 699, 705 (Fed. Cir. 2010) ........................................................ 47, 48
`
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................ 7
`
`Fuji Photo Film Co. v. Int'l Trade Comm'n,
`386 F.3d 1095 (Fed. Cir. 2004) .......................................................................... 11
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 49
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`Paice LLC v. Hyundai Motor Co.,
`No. CIV. WDQ-12-0499, 2014 WL 3725652 (D. Md. July 24,
`2014) ..................................................................................................................... 7
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`Paice LLC v. Toyota Motor Corp., et al.,
`No. 2:04-CV-211-DF, Dkt. No. 91 (E.D. Tex. Sep. 28, 2005) ............................ 7
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`Paice LLC v. Toyota Motor Corp., et al.,
`No. 2:07-CV-180-DF, Dkt. No. 63 (E.D. Tex. Dec. 5, 2008) .............................. 7
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`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) .......................................................................... 49
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`In re Vaidyanathan,
`381 Fed. Appx. 985 (Fed. Cir. 2010) (unpublished) ............................................ 8
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
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`EXHIBITS
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`Exhibit Description
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`Arbitration Agreement between Paice LLC and Ford Motor
`Company
`Memorandum Opinion, U.S. District Court for the District of
`Maryland, U.S. District Judge William D. Quarles, Jr.
`Declaration in support of pro hac vice motion
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`Declaration of Neil Hannemann
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`Dr. Gregory W. Davis Deposition Transcript (Jan. 13, 2015)
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`Excerpt from File History for U.S. Patent 8,214,097
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`“Integrated Microprocessor Control of a Hybrid i.c.
`Engine/Battery-Electric Automotive Power Train,” P.W.
`Masding, J.R. Bumby, Jan. 1990
`Masding, Philip Wilson (1988) “Some drive train control
`problems in hybrid i.c engine/battery electric vehicles,” Durham
`theses, Durham University
`Excerpt from McGraw-Hill Dictionary of Scientific and
`Technical Terms, Sixth Ed., 2003.
`Neil Hannemann CV
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`Paice v. Ford, C.A. No. 1:14-cv-00492-WDQ, Complaint (Feb.
`19, 2014)
`Griffith Hack Report
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`Nov. 24, 2014 Letter to Wahls from Cordell
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`Dr. Gregory W. Davis Deposition Transcript (Feb. 25, 2015)
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`iv
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`Patent Owner
`Exhibit
`Number
`PAICE Ex.
`2001
`PAICE Ex.
`2002
`PAICE Ex.
`2003
`PAICE Ex.
`2004
`PAICE Ex.
`2005
`PAICE Ex.
`2006
`PAICE Ex.
`2007
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`PAICE Ex.
`2008
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`PAICE Ex.
`2009
`PAICE Ex.
`2010
`PAICE Ex.
`2011
`PAICE Ex.
`2012
`PAICE Ex.
`2013
`PAICE Ex.
`2014
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`I.
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`INTRODUCTION
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
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`The Board instituted trial with respect to claims 1, 14, 16, 18, and 24 of U.S.
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`Patent No. 7,237,634 (“the ’634 patent”) (“the Challenged Claims”) owned by
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`Paice LLC and The Abell Foundation (collectively, “Paice”) in view of a Petition
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`requesting inter partes review filed by Ford Motor Company (“Ford”). The Board
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`instituted trial on one ground that relies on a prior art patent also owned by Paice,
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`namely, U.S. Patent No. 5,343,970 (“Severinsky”). This Response responds to the
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`Petition, as informed and narrowed by the Board’s Decision. All challenged
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`claims are patentable over the cited ground for the reasons set forth herein.
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`The instituted ground is based on a misapplication of Severinsky. Ford’s
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`petition is based on an exercise in cherry picking short excerpts from Severinsky
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`out of their proper context and using the ’634 patent as a road map to concoct a
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`prior art reference that purportedly reads on the Challenged Claims. Ford’s effort,
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`however, fails because it is premised on technical and legal fallacies (discussed
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`below) that greatly undermine Ford’s case for unpatentability.
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`A close inspection of Severinsky reveals that while Severinsky discloses
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`certain modes of operations (e.g., “low speed” and “highway cruising” modes),
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`Severinsky discloses transitioning from one mode to another mode using an
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`entirely different method than that disclosed and claimed by the ’634 patent. As
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`discussed in greater detail below, Severinsky switches modes and turns the engine
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
`on or off based on the speed of the vehicle. Moreover, Severinsky was already
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`considered by the PTO with respect to a related patent (U.S. Patent 8,214,097) and
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`distinguished on this same basis.
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`In contrast, the ’634 patent, switches modes based on the road load—the
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`instantaneous torque required to propel the vehicle. As shown in the annotated
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`Figure 7 below, the ’634 patent transitions from, for example, Mode I (motor only
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`operation) to Mode IV (engine operation) based on comparing the road load
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`(depicted as a solid line) to a setpoint (which in the example shown in Figure 7 is
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`30% of the maximum torque output of the engine).
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`One of the key principles taught by the ’634 patent is not merely the modes
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`of operation of the hybrid vehicle, but when to transition from one mode to another
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`mode. The “when” is a critical aspect of the efficiency of a hybrid system. Each
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`component of a hybrid drive system has unique characteristics that make it more or
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`less suitable to operate the vehicle. The prior art explored a large number of
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`unsuccessful approaches to control sources of motive force needed to propel a
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`hybrid vehicle (i.e. the mode of vehicle operation).
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`The prior art used a variety of inefficient, costly, and ultimately ineffective
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`metrics to make mode switching determinations, including most commonly vehicle
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`speed or bare accelerator pedal position. See ’634 patent at col. 4:45-60, 13:5-22,
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`14:3-32, 15:4-20 (describing various prior art control systems). As noted in the
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`’634 patent, these prior systems failed to understand that the “vehicle operational
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`mode should preferably be controlled in response to the vehicle's actual torque
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`requirements, i.e., the road load,” which provides “superior performance, in terms
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`of both vehicle response to operator commands and fuel efficiency, under the
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`widely varying conditions encountered in ‘real world’ driving situations.” See ’634
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`patent at col. 13:16-22. Additionally, this failure to recognize the benefits of using
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`“road load” to select the vehicle mode also led prior art systems to incorrectly size
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`other system components, such as the battery and motors, which resulted in
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`operating the engine under inefficient conditions. See ’634 patent at 13:52 – 14:2.
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`The ’634 patent succeeded where others failed by arriving at a sophisticated
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`control strategy that measured and evaluated the road load with respect to certain
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`setpoints. While the concept of “road load” may have been understood as an
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`academic concept, the prior art failed to appreciate that road load could be
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`determined and used to make decisions about mode switching in an actual hybrid
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`vehicle by comparing the road load to setpoints and other values. Despite Ford’s
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`arguments to the contrary, this claimed control strategy is absent in Severinsky.
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`Therefore, for the reasons detailed more fully herein, the Board should affirm the
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`patentability of claims 1, 14, 16, 18, and 24 of the ’634 patent.
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`Before reaching the merits, it is important to place the patent owners and
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`Ford’s Petition into proper context. Abell is a Baltimore-based charitable
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`organization dedicated to fighting urban poverty and finding solutions to
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`intractable problems confronting Maryland residents. Abell has invested millions
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`of dollars in small companies like Paice, which is a small Maryland-based
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`company that has developed and promoted hybrid electric technology since 1992.
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`Paice has been involved with the world’s top automotive manufacturers in
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`developing commercially viable hybrid vehicles, and in 2010 reached a significant
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`license on the patent subject to Ford’s Petition with Toyota, the world’s most
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`successful hybrid auto manufacturer. Between 1999 and 2004, Paice spent
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`significant time working with Ford to teach Ford Paice’s hybrid vehicle
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`technology, including detailed modeling of Paice’s patented technology in actual
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`or proposed Ford vehicles. Attached as Exhibit 2011 is the complaint Paice has
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`filed in district court that summarizes the full context of how Ford accepted Paice’s
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`help and teaching, repeatedly complimented and validated Paice’s technology, but
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`ultimately refused to license Paice’s patents.
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`As the result of an earlier district court litigation, Ford did take a license in
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`2010 to one of Paice’s patents— U.S. Patent No. 5,343,970. At that time, the
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`parties were not able to reach resolution on the other Paice patents and entered into
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`an Arbitration Agreement as a means to resolve the dispute. Ford ultimately
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`declined to take Paice’s claims that Ford is unlawfully using Paice’s technology to
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`arbitration, and instead has filed twenty-five1 separate Petitions for Inter Partes
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`Review before this Board.
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`Beyond recognition by the automotive industry, others have considered
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`Paice’s patents as among the most important in the automotive industry. Griffith
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`1 After filing ten IPRs, Ford sent two letters respectively dated September 22, 2014
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`and October 16, 2014 threatening to file additional IPRs to burden Paice if Paice
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`did not withdraw or limit its infringement complaint. Ford is silent about the long
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`history of exchanges between the parties, including Paice’s giving Ford the right in
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`a 2010 license agreement to submit the entirety of the underlying dispute to
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`binding arbitration, and Ford’s unilateral decision not to do so. Paice responded in
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`a letter dated November 24, 2014 (attached as Exhibit 2013) pointing out that Ford
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`had refused all reasonable efforts to narrow or eliminate this dispute, consistent
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`with Ford’s policy of driving up the costs and burdens for small inventors in order
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`to gain advantage in litigation.
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`Attorney Docket No: 36351-0015IP1
`Hack, an Australian law firm specializing in intellectual property, conducted an
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`independent study of the most dominant hybrid vehicle patents in the world
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`without input or even contact with Paice. Griffith Hack analyzed more than 58,000
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`hybrid vehicle technology patents and their inter-relationships and concluded that
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`the top hybrid vehicle patents were those held by Paice, ahead of those held by
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`leading hybrid vehicle manufacturers such as Toyota, Ford and Honda. A copy of
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`Griffith Hack’s white paper is attached as Exhibit 2012.
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`II. CLAIM CONSTRUCTION
`In its Initial Decision, the Board, construed the terms “road load (RL)” and
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`“setpoint (SP).” Decision, pp. 6-8. While the Challenged Claims are patentable
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`under the Board’s construction of these terms, Patent Owner opposes the Board’s
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`construction of “setpoint (SP)” and respectfully requests that the Board revise its
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`construction for the reasons set forth below.
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`A. The District Courts’ Construction
`As an initial matter, Patent Owner notes that the Board’s construction of
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`“setpoint (SP)” is directly at odds with the construction adopted by two district
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`courts. The Board construed “setpoint (SP)” as “a predetermined torque value that
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`may or may not be reset.” The U.S. District Court for the Eastern District of Texas
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`and the U.S. District Court for the District of Maryland both have construed the
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`term “setpoint (SP)” to mean “a definite, but potentially variable value at which a
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
`transition between operating modes may occur.”2 Judge Quarles of the District of
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`Maryland noted that “[Paice’s] proposed construction of “setpoint’ … is consistent
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`with the language of the claims and the intrinsic evidence.”3
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`B. The Board should revise its construction of “setpoint (SP)”
`The Board’s construction of “setpoint (SP)” as “a predetermined torque
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`value that may or may not be reset” is incorrect for at least three reasons: (1) it fails
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`to recognize that “setpoint” represents a point at which a transition between
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`different operating modes may occur, 2) it reads in the additional and redundant
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`limitation “predetermined,” and (3) it incorrectly restricts “setpoint” to a torque
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`value. The Board failed to consider the entirety of the claims and specification,
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`instead limiting its analysis to just a portion of the disputed claim phrase (i.e.,
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`whether it’s a “torque value, and whether it’s variable), which is clear, reversible
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`error. See In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012)
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`2 Paice LLC v. Toyota Motor Corp., et al., No. 2:04-CV-211-DF, Dkt. No. 91
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`(E.D. Tex. Sep. 28, 2005); Paice LLC v. Toyota Motor Corp., et al., No. 2:07-CV-
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`180-DF, Dkt. No. 63 (E.D. Tex. Dec. 5, 2008); Paice LLC v. Hyundai Motor Co.,
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`No. CIV. WDQ-12-0499, 2014 WL 3725652 (D. Md. July 24, 2014).
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`3 Paice LLC v. Hyundai Motor Co., No. CIV. WDQ-12-0499, 2014 WL 3725652,
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`at *8 (D. Md. July 24, 2014).
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`(holding that Board’s construction of “electrochemical sensor” was “unreasonable
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`and inconsistent with the language of the claims and the specification”). The
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`Board’s broadest interpretation must be reasonable, and must be in conformity
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`with the invention as described in the specification. In re Vaidyanathan, 381 Fed.
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`Appx. 985, 995-96 (Fed. Cir. 2010) (unpublished). Accordingly, the Board should
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`revise its construction of “setpoint” to make clear that the “setpoint” may be
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`variable, is not limited to a torque value, and represents a point at which a
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`transition between modes may occur. The Board should thus adopt Patent Owner’s
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`construction, “a definite, but potentially variable value at which a transition
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`between operating modes may occur” for the following reasons.
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`1. “Setpoint” is used to mark a transition between
`operating modes
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`The Board did not adopt Patent Owner’s construction that a “setpoint” is a
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`value “at which a transition between operating modes may occur.” The Board
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`provided no explanation for declining to adopt this portion of the construction.
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`Nor did Ford provide any argument on the phrase.4 However, it is clear from the
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`claims and the specification that a “setpoint” is not simply a numerical value
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`4 Ford acknowledged the past construction given this term by the U.S. District
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`Court for the Eastern District of Texas, including the phrase “at which a transition
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`between operating modes may occur.” See Petition at 14.
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`divorced from the context of the rest of the control system. Rather, “setpoint”
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`serves the crucial function of marking the transition from one claimed mode to
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`another, and in particular, the transition from propelling the vehicle with the motor
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`to propelling the vehicle with the engine.
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`The language of the claims makes clear that a “setpoint” marks a point at
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`which the vehicle may transition between two modes. For example, in claims 1 and
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`16, the “setpoint” marks the transition between a mode in which only the motor
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`propels the vehicle, to modes in which the engine also can be used to propel the
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`vehicle or charge the battery. See Ex. 1001 at claims 1 and 16. Dependent claim 6
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`similarly recites “…wherein the controller is further operable to: monitor road load
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`(RL) on the hybrid vehicle over time; and control transition between propulsion
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`of the hybrid vehicle by the first and/or the second electric motors to propulsion
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`by the engine responsive to the RL reaching the SP…” See Ex. 1001 at claim 6
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`(emphasis added); see also id. at claims 8, 11, 19.
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`Further, the specification makes clear that a “setpoint” is synonymous with a
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`“transition point” between modes:
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`[I]n the example of the inventive control strategy discussed above, it
`is repeatedly stated that the transition from low-speed operation to
`highway cruising occurs when road load is equal to 30% of MTO.
`This setpoint, referred to in the appended claims as "SP", and
`sometimes hereinafter as the transition point (i.e., between operation
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`in modes I and IV) is obviously arbitrary and can vary substantially,
`e.g., between 30-50% of MTO, within the scope of the invention.
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`See Ex. 1001 at col. 40:41-49; see also id. at col. 40:63-65 (“For example, in
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`response to recognition of a regular pattern as above, the transition point might be
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`adjusted to 60% of MTO”); col. 41:4-8 (“It is also within the scope of the
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`invention to make the setpoint SP to which the road load is compared to control the
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`transition from mode I to mode IV somewhat "fuzzy" [sic], so that SP may vary
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`from one comparison of road load to MTO to the next depending on other
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`variables”); col. 41:59-63 (“FIG. 9 thus shows the main decision points of the
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`control program run by the microprocessor, with the transition point between mode
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`I, low-speed operation, and mode IV highway cruising, set at a road load equal to
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`30% of MTO”); col. 44:24-31 (“Further, as noted above the transition points
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`between modes I, IV, and V in particular may vary in accordance with the
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`operator's commands…”).
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`By ignoring this “transition” requirement, the Board effectively read out a
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`crucial limitation of the claims: that the “setpoint” marks the amount of “road
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`load” at which the claimed control system actively changes the vehicle from one
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`mode to another (e.g. from motor propulsion to engine propulsion). For example,
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`dependent claim 16 clearly covers a vehicle with a controller that is “operable to
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`implement a plurality of operating modes responsive to road load (RL) and the
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`SP” (emphasis added). The Board’s failure to recognize the “transition” function
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`of “setpoint” robs the remaining “mode” limitations of one of the key aspects of
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`the invention, which is the significant efficiencies to be gained by transitioning
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`between motor propulsion to engine propulsion in response to “road load.” See
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`e.g., Ex. 1001 at col. 13:44-51 (“By comparison … the vehicle’s operating mode-
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`that is, the selection of the source of torque needed to propel the vehicle-is
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`determined based on the amount of torque actually required. In this way the proper
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`combination of engine, traction motor, and starting motor is always available. This
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`apparently simple point has evidently been missed entirely by the art.”); see also
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`id. at col. 13:52 – 14:2 (noting that prior art references using vehicle speed to
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`transition between modes “inherently operate the engine under less efficient
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`conditions”).
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`In other words, under the Board’s improper construction, one could attempt
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`to improperly read the claims to broadly cover hybrid vehicle systems where
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`transitions between modes never occur, a clear error that is fundamentally contrary
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`to the specification of the ’634 Patent. See Fuji Photo Film Co. v. Int'l Trade
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`Comm'n, 386 F.3d 1095, 1098 (Fed. Cir. 2004) (claim should not be given overly
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`broad construction that is inconsistent with how claim term is used in the
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`specification). Therefore, Patent Owner respectfully requests that the Board
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`reconsider its construction of “setpoint” to make clear that it is a value “at which a
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`transition between operating modes may occur.”
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`2. “Setpoint” is not “predetermined” and is not limited
`to torque values
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`Patent Owner does not agree with the Board’s construction requiring the
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`term “setpoint” to be “predetermined” and a “torque value” and reserves the right
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`to appeal the Board’s construction on these additional bases. While Patent Owner
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`disagrees with the Board’s construction of “setpoint,” the Challenged Claims are
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`patentable under either construction and Patent Owner applies the Board’s
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`constructions in its arguments below unless explicitly stated otherwise.
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`III. DEFECTS IN THE INSTITUTED SINGLE GROUND OF
`UNPATENTABILITY
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`The overarching flaw in Ford’s challenge to the ‘634 patent is that Ford is
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`unable to show use of road load to control transitions from one hybrid mode to
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`another. While both Severinsky and the ‘634 patent have the same goal (efficient
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`engine operation), Severinsky and the ’634 accomplish that goal using entirely
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`different control strategies. In mounting its obviousness challenge, Ford starts with
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`the goal (efficient engine operation) and works its way backwards (using
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`impermissible hindsight from the ‘634 patent itself) to map Severinsky onto the
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`‘634 patent claims. However, the Severinsky patent is built on a completely
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`different control strategy where mode transitions are based on speed, and so Ford
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
`attempts to recast the reference based on a few selected statements taken out of
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`context. The ‘634 patent claims switch modes and start and stop the engine based
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`on road load—the instantaneous torque required to propel the vehicle—to produce
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`efficiencies that have made commercially viable hybrids possible. Ford has
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`simply failed to find this key feature of the ‘634 patent claims in the prior art, and
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`the Petition should similarly fail.
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`A. Ground 1 is Defective Because Ford Misapplies Severinsky to
`the Challenged Claims
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`Ford’s application of Severinsky to the Challenged Claims of the ‘634 patent
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`is premised upon a misunderstanding of two important aspects of hybrid control
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`strategy, namely, when to operate the engine and how to operate the engine once it
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`is turned on. Ex. 2004 at ¶ 64; see also ¶¶ 33-44. The cited portions on which
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`Ford relies merely discuss in an aspirational sense aspects of how to operate the
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`engine. Id. at ¶ 64. But the Challenged Claims clearly are directed to a control
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`strategy about when to operate the engine. Id. These claims require that the
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`system start and stop the engine based on road load, and this fundamental concept
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`is simply not shown in Severinsky.
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`Severinsky makes reference to an aspirational operating range of the
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`engine—that the engine is to be operated between “60-90% of its maximum
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
`torque.”5 Ex. 1003 at 20:63-67 (“It will be appreciated that according to the
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`invention the internal combustion engine is run only in the near vicinity of its most
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`efficient operational point, that is, such that it produces 60-90% of its maximum
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`torque whenever operated.”). An engine’s operating range refers to the range of
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`operating speeds, powers, or torques under which the engine is designed to operate.
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`Ex. 2004 at ¶¶ 39, 59. The goal of Severinsky is to operate the engine within 60-
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`90% of the engine’s maximum torque so that “the internal combustion engine is
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`run only in the near vicinity of its most efficient operational point.” Id. at 20:64-
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`65; Ex. 2004 at ¶ 59.
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`That such a disclosure is aspirational is established by the ‘634 patent, which
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`notes that Severinsky “clearly discloses the desirability of operating an internal
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`combustion engine in its most efficient operating range.”) Ex. 1001 at 11:27-29
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`(emphasis added). Ford’s expert, Dr. Davis, refers to the 60-90% range as the
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`engine’s “sweet spot” (Ex. 1005 at ¶¶ 259-60) and agreed that maintaining engine
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`5 Ford focuses its Petition on this one instance in which the operating range is
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`defined in terms of torque. However, all other disclosures of a preferred engine
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`operating range are disclosed in terms of speed and power. Ex. 1003 at 7:8-14,
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`8:28-30, and 17:67 – 18:2. Ford never explains how this reference, properly taken
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`as a whole, should be read as torque-based.
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
`operation within the “sweet spot” is “a goal of hybrid vehicles” and “a goal in
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`conventional vehicles.” Ex. 2005 at 103:20 – 105:1. Thus, it is agreed that
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`Severinsky’s disclosure of a sweet spot is aspirational—it is the goal. Ex. 2004 at
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`¶¶ 44, 60-62. This goal, however, does not define the underlying control strategy.
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`Notably, the range of torques included in the operating range or in the
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`“sweet spot” are the range of potential output torques of the engine. Ex. 2004 at ¶¶
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`37, 60. The engine’s output torque is the amount of torque that the engine can
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`produce in order to, for example, move the wheels, recharge the battery, power
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`accessories, etc. Id. This output torque, however, is unrelated to input torque
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`demands taught by the ’634 patent, for example, the instantaneous torque required
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`to propel the vehicle (i.e., road load). Id. Thus, defining an operating range of an
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`engine as between “60-90% of its maximum torque” or defining a “sweet spot”
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`merely tells a POSITA6 how to preferably run the engine. Id. at ¶ 56.
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`Severinsky’s teaching about how to operate the engine (in the engine’s
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`“sweet spot”) does not tell a POSITA when to operate the engine, i.e., when to turn
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`the engine on or off. Id. at ¶ 56. This is evident from the context of the passage on
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`6 The level of skill in the art is defined in the declaration of Mr. Hannemann. Ex.
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`2002 at ¶ 27. However, the differences between the level of skill described by Mr.
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`Hannemann and Dr. Davis do not affect the outcome.
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
`which Ford relies. Severinsky states that “the internal combustion engine is run
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`only in the near vicinity of its most efficient operational point, that is, such that it
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`produces 60-90% of its maximum torque whenever operated.”). Id. at 20:63-67
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`(emphasis added). The use of the word “whenever” indicates that the “60-90%”
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`requirement is agnostic as to when the engine is turned on so long as the engine is
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`operating within that range once a determination is made to operate the engine.7
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`Id. at ¶ 57. Moreover, Dr. Davis admitted that defining the engine’s sweet spot
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`does not tell a POSITA when to employ the engine:
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`Q. [column] 21, line 34 through 38.
`A. Okay.
`Q. So the plain reading of this passage is that the engine is operated
`near its sweet spot, right?
`A. The -- that’s your goal, yes. You’re optimizing to try to ensure that
`operation generally near the sweet spot, yes.
`Q. But it doesn’t tell us when you start the engine, correct?
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`7 It is also of note that Severinsky’s disclosure of an engine operating range
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`between “60-90% of its maximum torque” is in the context of improving fuel
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`economy and limiting carbon dioxide emissions in general. Id. at 20:63 – 21:22.
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`The range is merely illustrative of the improvements that may be obtained and is
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`unrelated to hybrid modes or how to switch between these modes, for example, by
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`turning the engine on or off.
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`Case IPR2014-00904
`Attorney Docket No: 36351-0015IP1
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`A. This paragraph does not.
`Ex. 2005 at 164:22 – 165:7.
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`Determining when to turn the engine on is an entirely different question and
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`is the key to actually maintaining engine operation within the “sweet spot.” For
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`example, at one extreme, the engine could operate in its sweet spot all the time.
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`This could be the case, for example, in a locomotive using a series hybrid
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`configuration. Because a locomotive operates normally at constant speeds and
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`because a series configuration separates the engine from the drive shaft, the output
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`speed and torque of the engin