UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,237,634
`
`IPR Case No.: IPR2014-00904
`
`
`______________
`
`
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,237,634
`
`
`
`
`
`
`
`
`
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`
`Table of Contents
`
`Table of Authorities ............................................................................................................... ii
`
`Updated Exhibit List ............................................................................................................. iii
`
`I.
`
`II.
`
`Introduction ................................................................................................................. 1
`
`A POSA would have understood that Severinsky ’970 considers torque
`demands and is NOT limited, as Paice proposes, to a system that “uses
`speed as the one factor in determining when to employ the engine” .................. 2
`
`A.
`
`B.
`
`C.
`
`Paice’s “road load” argument depends on Mr. Hannemann’s
`incorrect application of the Board’s instantaneous torque required to
`propel the vehicle construction ............................................................................ 3
`A POSA would have understood that Severinsky ’970 teaches
`using the instantaneous torque required to propel the vehicle for mode
`selection ............................................................................................................ 6
`Paice’s reliance on Severinsky ’970’s use of “speed” language is
`misplaced where all agree, and a POSA would have understood,
`that speed and torque can be proxies in that “higher vehicle
`speeds generally require more torque” ....................................................... 10
`
`III. A POSA would have understood that Severinsky ’970 discloses the
`disputed limitations of claim 16 .............................................................................. 11
`
`A.
`
`B.
`
`C.
`D.
`
`Severinsky ’970 teaches the engine [16.2], motor [16.1], and
`setpoint [16.0] limitations ............................................................................. 13
`Paice’s arguments about “output torque” and “output power and
`speed” ignore the well-known relationships between torque,
`power and speed, and misrepresent Ford’s positon.................................. 17
`Paice cannot avoid the admissions in the ’634 Patent .............................. 19
`The Board’s construction of setpoint is correct; and Paice’s
`proposed construction would not affect the analysis ............................... 21
`
`IV. A POSA would have understood that Severinsky ’970 in view of Field
`and SAE 1996 teach the disputed limitations of Claim 1 .................................... 22
`
`V.
`
`A POSA would have understood that Severinsky ’970 in view of Field
`and SAE 1996 teach the disputed limitations of Claim 18 .................................. 24
`
`VI. Conclusion ................................................................................................................. 25
`
`Certificate of Service ............................................................................................................ 27
`
`
`
`
`
`
`
`
`
`i
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`
`Table of Authorities
`
`
`Cases
`
`Clearwater Systems Corp. v. Evapco, Inc.,
`
`394 Fed.Appx. 699 (Fed. Cir. 2010) ....................................................................... 19
`
`Constant v. Advanced Micro–Devices, Inc.,
`
`848 F.2d 1560 (Fed.Cir.1988) .................................................................................. 20
`
`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
`
`491 F.3d 1342 (Fed. Cir. 2007) ................................................................................ 20
`
`Other Authorities
`
`MPEP 2258 ........................................................................................................................... 20
`
`Rules
`
`37 CFR 1.104 ........................................................................................................................ 20
`
`
`
`
`
`
`
`
`ii
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`
`Updated Exhibit List
`
`Exhibit
`No.
`1001
`1002
`
`Description
`U.S. Patent No. 7,237,634
`’634 Patent File History
`
`1003
`1004
`1005
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`1016
`
`
`
`U.S. Patent No. 5,343,970
`U.S. Patent No. 5,586,613
`Declaration of Gregory Davis
`Plaintiff Paice LLC’s Reply Claim
`Construction Brief (Case No. 2:04-
`cv-00211
`Plaintiff Paice LLC’s Claim
`Construction Brief (Case No. 2:04-
`cv-00211)
`Claim Construction Order (Case
`No. 2:04-cv-00211)
`Plaintiff Paice LLC’s Opening
`Claim Construction Brief (Case No.
`2:07-cv-00180)
`Plaintiff Paice LLC’s Reply Brief on
`Claim Construction (Case No. 2:07-
`cv-00180)
`Claim Construction Order (Case
`No. 2:07-cv-00180)
`Plaintiff Paice LLC and Abell
`Foundation, Inc.’s Opening Claim
`Construction Brief (Case No. 1:12-
`cv-00499)
`Plaintiff Paice LLC and Abell
`Foundation, Inc.’s Responsive Brief
`on Claim Construction (Case No.
`1:12-cv-00499)
`U.S. Patent Trial and Appeal Board
`January 3, 2014 Decision (Appeal
`No. 2011-004811)
`Curriculum Vitae of Gregory Davis
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`
`iii
`
`Date
`
`n/a
`n/a
`
`Sept. 6, 1994
`Dec. 24, 1996
`n/a
`Mar. 8, 2005
`
`Identifier
`The ’634 Patent
`‘634 Patent File
`History
`Severinsky ’970
`Ehsani
`Davis
`n/a
`
`Mar. 29, 2005
`
`n/a
`
`Sept. 28, 2005
`
`n/a
`
`June 25, 2008
`
`n/a
`
`Aug. 1, 2008
`
`n/a
`
`Dec. 5, 2008
`
`n/a
`
`Nov. 14, 2013
`
`n/a
`
`Dec. 16, 2013
`
`n/a
`
`Jan. 3, 2014
`
`n/a
`
`
`Feb. 1994
`
`Declaration Ex.
`Declaration Ex.
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`
`Date
`Feb. 1997
`Feb. 1998
`1998
`
`Identifier
`Declaration Ex.
`Declaration Ex.
`Declaration Ex.
`
`Declaration Ex.
`
`Feb. 24-28, 1992 Declaration Ex.
`
`April 9-11, 1997 Declaration Ex.
`
`April 1995
`
`Declaration Ex.
`
`Feb. 1998
`
`Declaration Ex.
`
`Feb. 1996
`
`SAE 1996
`
`Sept. 30, 1979
`
`Declaration Ex.
`
`June 1, 1971
`
`Declaration Ex.
`
`Sept. 1, 1988
`
`Declaration Ex.
`
`1996
`
`Declaration Ex.
`
`Feb. 1997
`
`Declaration Ex.
`
`Oct. 1996
`Feb. 1995
`
`Declaration Ex.
`Declaration Ex.
`
`Apr. 3, 2001
`
`
`Declaration Ex.
`Declaration Ex.
`
`Jan. 1998
`
`Declaration Ex.
`
`Exhibit
`No.
`1017
`1018
`1019
`
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`1032
`
`1033
`1034
`
`1035
`
`
`
`Description
`1996 Future Car Challenge
`1997 Future Car Challenge
`History of the Electric Automobile
`– Hybrid Electric Vehicles
`Hybrid Vehicle for Fuel Economy
`Hybrid/Electric Vehicle Design
`Options and Evaluations
`Challenges for the Vehicle Tester in
`Characterizing Hybrid Electric
`Vehicles
`Electric and Hybrid Vehicles
`Program
`Technology for Electric and Hybrid
`Vehicles
`Strategies in Electric and Hybrid
`Vehicle Design
`Hybrid Vehicle Potential
`Assessment
`Final Report Hybrid Heat Engine /
`Electric Systems Study
`Transactions of the Institute of
`Measurements and Control: A
`microprocessor controlled gearbox
`for use in electric and hybrid-
`electric vehicles
`Propulsion System Design of
`Electric Vehicles
`Propulsion System Design of
`Electric and Hybrid Vehicles
`Bosch Handbook
`Design Innovations in Electric and
`Hybrid Electric Vehicles
`U.S. Patent No. 6,209,672
`Introduction to Automotive
`Powertrains (Davis Textbook)
`Yamaguchi article: Toyota Prius,
`Automotive Engineering
`International
`
`iv
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`
`Identifier
`Declaration Ex.
`
`n/a
`
`the ‘347 patent
`
`Field
`
`‘347 Patent File
`History
`Hannemann 1
`Depo.
`Hannemann 2
`Depo.
`Hannemann 3
`Depo.
`Davis Reply Decl.
`
`September 12,
`2006
`November 25,
`1998
`n/a
`
`April 7, 2015
`
`May 1, 2015
`
`April 30, 2015
`
`
`
`Date
`Description
`60/100,095 Provisional Application Filed Sept. 11,
`1998
`Feb. 29, 2012
`
`Amendment in File History of U.S.
`Patent 8,214,097
`U.S. Patent No. 7,104,347
`
`PCT International Patent
`Application No. PCT/US93/04378
`Amendment in File History of U.S.
`Patent No. 7,104,347
`Deposition Transcript of Neil
`Hannemann from IPR2014-00571
`Deposition Transcript of Neil
`Hannemann from IPR2014-00904
`Deposition Transcript of Neil
`Hannemann from IPR2014-00875
`Reply Declaration of Dr. Gregory
`Davis
`
`v
`
`Exhibit
`No.
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`
`
`
`
`
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`
`I.
`
`Introduction
`
`The Board instituted “inter partes review of challenged claims 1, 14, 16, 18 and
`
`24 of the ’634 patent . . . on the asserted ground of obviousness over Severinsky,
`
`SAE, and Field.” (Decision at 13.) Patent Owner (“Paice”) disputes a limited number
`
`of limitations from claims 1, 16 and 18 (Patent Owner Response, (“Response” or
`
`“POR”) at i-ii), so the remaining limitations are undisputed.
`
`In virtually every section of its Response, Paice makes the same argument, i.e.:
`
`Severinsky ’970 allegedly does not consider torque demands but instead uses speed to
`
`determine when to employ the engine. (See, e.g., POR at 1-2, 12, 19, 20, 26, 29, 30, 39-
`
`40, 42, 44, 50, 55, 57, 59.) Petitioner (“Ford”) addresses Paice’s global argument first
`
`(Section II), and then addresses the challenged limitations of claim 16 (Section III),
`
`claim 1 (Section IV), and claim 18 (Section V).
`
`For the reasons explained in Ford’s Petition and below, the Board should find
`
`the challenged claims unpatentable.1
`
`
`1 “Before reaching the merits” (POR at 4), Paice opens with two pages that have
`
`nothing to do with the merits. The Abell Foundation’s alleged charitable work may be
`
`commendable – like Ford providing jobs for 100,000+ people – but it’s irrelevant to
`
`this patentability proceeding. Paice confirms the irrelevance of its self-serving
`
`complaint allegations and the hearsay “Griffith Hack” conclusions by never
`
`correlating these unsupported assertions to the merits.
`
`
`
`1
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`
`II. A POSA would have understood that Severinsky ’970 considers
`torque demands and is NOT limited, as Paice proposes, to a
`system that “uses speed as the one factor in determining when to
`employ the engine”
`
`Virtually every section of Paice’s Response depends on its assertion that
`
`Severinsky ’970 does not “consider road load” or “any other torque demand or
`
`metric,” but instead “explicitly states that it uses speed as the one factor in
`
`determining when to employ the engine” (POR at 58-59 (emphasis added); see also
`
`POR 1-2, 12, 19-20, 26, 29, 30, 39-40, 42, 44, 50, 55, 57.) Paice’s assertion that speed
`
`is the only factor used to determine when to employ the engine is incorrect.
`
`As explained in Section A below, Paice’s entire argument lacks support because
`
`it is based on an improper application of the Board’s construction for road load, i.e.,
`
`
`Paice’s assertions about costs (POR at 5) ignore the fact that Paice has
`
`aggressively asserted these patents for years, and that Paice alone defined the size of
`
`this dispute. Paice will not say which of its 522 claims Ford can ignore. The parties
`
`would incur costs addressing these claims’ validity regardless of forum, and through
`
`this forum, both parties will save considerable time and resources over litigation. And,
`
`as detailed in the Board’s May 14, 2015 call, Ford saved everyone’s resources by
`
`addressing Paice’s patents efficiently, especially considering the large number of
`
`dependent claims which necessitated some overlap.
`
`
`
`2
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`“the amount of instantaneous torque required to propel the vehicle, be it positive or negative.”2
`
`(Decision at 6.) As explained in Section B below, a POSA would have understood
`
`that Severinsky ’970 considers the instantaneous torque required to propel the vehicle in
`
`determining when to employ the engine. And as explained in Section C, Paice’s
`
`reliance on “speed” language in Severinsky ’970 is misplaced.
`
`A POSA would not have concluded that Severinsky ’970 uses only speed to
`
`determine when to employ the engine.
`
`A.
`
`Paice’s “road load” argument depends on Mr. Hannemann’s
`incorrect application of the Board’s instantaneous torque
`required to propel the vehicle construction
`
`In many of its Patent Owner Responses,3 Paice argues that the prior art
`
`allegedly does not teach “road load,” or “determining road load” or controlling modes
`
`based on “road load.” To support these arguments, Paice relies on Neil Hannemann,
`
`who testified he is a POSA, including for the relevant timeframe for the Paice patents.
`
`
`2 In the Petition, Ford italicized claim language. Ford will also italicize the Board’s
`
`construction of road load in this Reply.
`
`3 Paice contends that road load/determining road is not taught by the prior art in the
`
`following IPRs: IPR2014-00904; IPR2014-00571; IPR2014-00875; IPR2014-00884;
`
`and IPR2014-00579.
`
`
`
`3
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`(Ex.1043, Hannemann 3 Depo.4 at 51:9-16.) But with each deposition, it has become
`
`clearer that Paice’s road load positons have no foundation.
`
`Paice’s positions are inconsistent. Although the claims and specification discuss
`
`determining road load responsive to an operator command, Paice/Hannemann have
`
`argued that the instantaneous torque required to propel the vehicle does not include the pedal
`
`input from the driver, e.g., to accelerate the vehicle. (Ex. 1041, Hannemann 1 Depo.
`
`at 46:20-25.) But then on other occasions Paice/Hannemann take the opposite
`
`position – arguing that the accelerator pedal may be considered as one factor in
`
`determining Paice’s road load. (Ex. 1043, Hannemann 3 Depo. at 40:7-14.)
`
`Rather than identifying a specific methodology for determining road load, Mr.
`
`Hannemann testified that “there’s a number of factors you look at.” (Ex. 1043,
`
`Hannemann 3 Depo. at 42:21-43:7.) Mr. Hannemann identified eight factors that a
`
`POSA “might consider” in determining Paice’s road load, but he never conclusively
`
`identified the specific factors that should be used to determine road load. (Ex. 1043,
`
`
`4 Ford relies on three depositions of Mr. Hannemann in its reply: (1) the April 7, 2015
`
`deposition (Ex. 1041, “Hannemann 1 Depo”) taken in IPR2014-00571, which
`
`includes many of Mr. Hannemann’s opinions about Severinsky ’970 and the common
`
`specification shared by the ’634 and ’347 patents; (2) the May 1, 2015 deposition (Ex.
`
`1042, “Hannemann 2 Depo”) taken in this IPR2014-00904; and (3) the April 30, 2015
`
`deposition (Ex. 1043, “Hannemann 3 Depo”) taken in IPR2014-00875.
`
`
`
`4
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`
`Hannemann 3 Depo. at 64:12-24, see also 59:23-60:9.)
`
`Instead, Paice/Hannemann contend that a POSA would have known how to
`
`determine Paice’s road load. (Ex. 1043, Hannemann 3 Depo. at 49:13-50:8, 50:24-51:8,
`
`53:9-54:8.) But to determine the road load factors, Paice/Hannemann maintain that a
`
`POSA must perform the “testing” and “analysis” employed in a normal vehicle
`
`product development process (Ex. 1043, Hannemann 3 Depo. at 52:6-24; 59:23-
`
`62:17); a process that generally takes 3-5 years (Ex. 1043, Hannemann 3 Depo. at
`
`62:25-63:5). Yet, none of this is disclosed in the ’634 Patent. Paice/Hannemann admit
`
`that the Paice patents do not describe how one determines road load. (Ex. 1041,
`
`Hannemann 1 Depo. at 61:24-62:5.)
`
`Paice’s assertions also run contrary to the Board’s construction of road load as
`
`the amount of instantaneous torque required to propel the vehicle, be it positive or negative.
`
`(Decision at 6.) Despite no such requirement
`
`in the Board’s construction,
`
`Paice/Hannemann are applying the construction to require how road load is
`
`determined. (Ex. 1041, Hannemann 1 Depo. at 56:12-57:6.) That is improper.
`
`Concerning the prior art, Paice is not reasonably applying the Board’s
`
`instantaneous torque required to propel the vehicle construction. Paice/Hannemann admitted
`
`that Severinsky ’970 teaches a microprocessor that is “determining how much torque
`
`the motor and/or the engine should be generating, [and] it's doing so based on what
`
`the microprocessor concludes is required at that point in time.” (Ex. 1041,
`
`Hannemann 1 Depo. at 112:18-113:3, emphasis added.) But Paice/Hannemann then
`
`
`
`5
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`argue that Severinsky ’970 does not disclose determining the amount of instantaneous
`
`torque required to propel the vehicle. (POR at 31-32 and 36-37; Ex. 2004, Hannemann Decl.
`
`at ¶¶95-99.) In another IPR concerning the Vittone reference (IPR 2014-00875),
`
`Paice/Hannemann contend that a POSA could NOT reasonably interpret the
`
`disclosed “drivability torque requirement” as the “torque required to drive a vehicle.”
`
`(Ex. 1043, Hannemann 3 Depo. at 36:24-37:10.)
`
`Paice’s intent is obvious: make “road load” so flexible that Mr. Hannemann can
`
`adjust his positions to avoid the prior art, while allowing Paice to later argue that
`
`Ford’s system, however designed, considers the correct factors for determining road
`
`load. But the Board has construed road load, and the prior art meets the plain
`
`application of the Board’s construction.
`
`Because Paice/Hannemann are not applying the Board’s instantaneous torque
`
`required to propel the vehicle construction in any reasonable way, their road load positions
`
`have no support. For these reasons and the reasons described below, the Board
`
`should find the challenged claims unpatentable.
`
`B.
`
`A POSA would have understood that Severinsky ’970 teaches
`using the instantaneous torque required to propel the vehicle
`for mode selection
`
`Paice must misapply the Board’s instantaneous torque required to propel the vehicle
`
`construction because Severinsky ’970 teaches a microprocessor that considers the
`
`instantaneous torque required to propel the vehicle for mode selection. (See e.g., Ex. 1003 at
`
`14:15-18.)
`
`
`
`6
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`First, Mr. Hannemann, admits that Severinsky ‘970 teaches the microprocessor
`
`“activating [the] electric motor based on the torque required.” (Ex. 1042, Hannemann
`
`2 Depo. at 10:21-11:11, emphasis added.) Severinsky ‘970 confirms this admission –
`
`disclosing that the microprocessor “activates electric motor 20” to enter the
`
`acceleration/hill-climbing mode “when torque in excess of the capabilities of engine
`
`40 is required.” (Ex. 1003 at 14:15-18, emphasis added.) Mr. Hannemann further
`
`admits that at any point in time, the ’970 microprocessor is “determining how much
`
`torque the motor and/or the engine should be generating, [and] it's doing so based on
`
`what the microprocessor concludes is required at that point in time.” (Ex. 1041,
`
`Hannemann 1 Depo. at 112:18-113:3, emphasis added; see also Ex. 1005, Davis Decl.
`
`at ¶¶285-292 and Ex. 1044, Davis Reply Decl, at ¶¶9-10.)
`
`Second, Severinsky
`
`’970 employs a motor-plus-engine “acceleration/hill
`
`climbing” mode, which is road-load-based because both experts agree it can occur at
`
`any speed and it requires increased torque to propel the vehicle regardless of the
`
`vehicle’s speed. (Ex. 1041, Hannemann 1 Depo. at 102:7-12 (acceleration/hill
`
`climbing can occur at any speed), 104:10-16 (acceleration requires more torque), and
`
`105:16-106:4 (hill climbing requires more torque); Ex. 1003, 14:15-18; Ex. 1044, Davis
`
`Reply Decl. at ¶¶6-15; Ex. 1005 at ¶¶283-289.) Thus, Severinsky ’970 discloses a
`
`microprocessor that compares the instantaneous torque required to propel the vehicle with the
`
`torque capabilities of the engine (i.e., setpoint) to determine the vehicle mode.
`
`Third, Severinsky
`
`’970’s description of motor-engine transition further
`
`
`
`7
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`confirms it uses the instantaneous torque required to propel the vehicle to determine when to
`
`employ the engine. If, as Paice asserts, Severinsky ’970 transitions from motor to
`
`engine based solely on speed, then it would state that at a certain speed the controller
`
`starts the engine and turns off the motor. Instead, Severinsky ’970 transitions from
`
`motor to engine when the “operator continues to command acceleration” – indicating
`
`increased torque demands, not speed. (Ex. 1003, 10:66-11:6; Ex. 1044, Davis Reply
`
`Decl. at ¶14.) And when the operator “continues to command acceleration,”
`
`Severinsky ’970 does not describe starting the engine and stopping the motor.
`
`Severinsky
`
`’970
`
`instead states that the vehicle first enters road-load-based
`
`“acceleration/hill climbing mode” (motor and engine) before entering the higher
`
`speed “highway cruising” (engine only) mode. Severinsky ’970 states:
`
`FIG. 4 illustrates operation in low speed circumstances, e.g., in city traffic
`
`or reversing. . . . Under these circumstances, electric motor 20 provides
`
`all of the torque needed to move the vehicle. Other combinations of
`
`torque and energy flow required under other circumstances are detailed
`
`below in connection with FIGS. 5-9. For example, if the operator
`
`continues to command acceleration, an acceleration/hill climbing
`
`mode illustrated in FIG. 6 may be entered, followed by a highway
`
`cruising mode illustrated in FIG. 5.
`
`(Ex. 1003 at 10:52-53, 10:63-11:6 (emphasis added); see also 14:16-26 (acceleration/hill
`
`climbing mode uses engine and motor for high torque); Ex. 1044, Davis Reply Decl.
`
`at ¶¶6-15; Ex. 1005 at ¶¶284-291.)
`
`
`
`8
`
`

`

`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`The ’634 Patent admits that unless otherwise noted the vehicle design of
`
`Severinsky ’970 is applicable to the vehicle design of the ’634 patent. (Ex. 1001, 10:40-
`
`47.) The ’634 patent and Severinsky ’970 likewise have the same vehicle transitions
`
`“from low-speed” motor mode “to highway cruising” engine mode when the
`
`microprocessor senses “a continued operator request for more power.” (Ex. 1001 at
`
`36:24-29.) Like Severinsky ’970, the ’634 Patent transitions by starting the engine, and
`
`running both the motor and the engine. (Ex. 1001 at 36:24-34.) Once “a desired
`
`cruising speed has been reached,” the “traction motor 25 is accordingly depowered.”
`
`(Ex. 1001 at 36:29-34, 29:66-30:8; Ex. 1005 at ¶¶283-289.)
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`Finally, the ’634 Patent itself confirms that Severinsky ’970 teaches a hybrid
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`vehicle that selects an operational mode “depending on the torque required.”
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`Turning now to detailed discussion of the inventive control strategy
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`according to which the hybrid vehicles of the invention are operated: as
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`in the case of the hybrid vehicle system shown in the [Severinsky] ’970
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`patent, and as discussed in further detail below, the vehicle of the
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`invention is operated in different modes depending on the torque
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`required, the state of charge of the batteries, and other variables[.]
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`(Ex. 1001 at 35:3-9 (emphasis added).)5
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`Contrary to Paice’s assertion, a POSA would have understood that Severinsky
`
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`5 Consistently, when Paice/Severinsky distinguished “speed”-based prior art in the
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`’634 patent, they did not mention the ’970 patent. (Ex. 1001 at 13:5-17.)
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`
`
`9
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`’970 considers the instantaneous torque required to propel the vehicle for mode selection. Ford
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`will address the disputed claim limitations in detail in Section III below. But first,
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`Ford will respond (in the following Section C) to Paice’s assertions about the “speed”
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`language in Severinsky ’970.
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`C.
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`Paice’s reliance on Severinsky ’970’s use of “speed”
`language is misplaced where all agree, and a POSA would
`have understood, that speed and torque can be proxies in
`that “higher vehicle speeds generally require more torque”
`
`To support its position that Severinsky ’970 “explicitly states that it uses speed
`
`as the one factor in determining when to employ the engine” (POR at 59, emphasis
`
`added), Paice quotes Severinsky ’970 passages that describe operating the motor in
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`“low speed circumstances” and operating the engine at higher “highway speeds”
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`(POR at 19-20). But Severinsky ’970 uses these terms merely as descriptors for
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`relatively low or moderate load situations (no significant acceleration/hill climbing) at
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`lower/“city traffic” speeds (Ex. 1003 at 6:27-28 and 10:52-53) or higher “steady state
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`cruising on the highway” speeds (Ex. 1003 at 6:41 and 13:67). A POSA would have
`
`readily understood that in such situations, lower speeds use the motor and higher
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`speeds use the engine because, as Paice itself acknowledges, “higher vehicle
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`speeds generally require more torque.” (POR at 46 (emphasis added); Ex. 1041,
`
`Hannemann 1 Depo. at 101:8-102:2 (“as the speed goes up, the torque required would
`
`go up”); see also Ex. 1044, Davis Reply Decl. at ¶¶16-23.) Indeed, the “torque-based”
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`’634 Patent likewise describes motor mode as “low-speed operation, such as in city
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`
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`10
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`traffic,” and describes engine mode as “highway cruising.” (Ex. 1001 at 35:63-67 and
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`36:20-36, Ex. 1044, Davis Reply Decl. at ¶19.) The provisional application
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`(60/100095) to which the ’634 Patent claims priority likewise also states that in “high-
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`speed highway driving, where the internal-combustion engine can be operated
`
`efficiently, it typically provides all torque. . .” (Ex. 1036 at 3, emphasis added.)
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`Similarly, Severinsky ’970’s use of “speed-responsive” hysteresis terminology
`
`does not prove that Severinsky ’970 “uses speed as the one factor in determining
`
`when to employ the engine.” (Ex. 1044, Davis Reply Decl. at ¶¶19-21.) Severinsky
`
`’970 is again describing lower load (“moderate”/“suburban”) situations, where
`
`“higher vehicle speeds generally require more torque.” (POR at 46; Ex. 1044, Davis
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`Reply Decl. at ¶¶19-21.) Again, the ’634 Patent also describes hysteresis around a
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`“road load” setpoint in “suburban traffic” as “low-speed hysteresis.” (Ex. 1001 at
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`43:52-62.)
`
`Even if Severinsky ’970 does disclose considering speed, that is irrelevant.
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`Severinsky ’970 also discloses using the instantaneous torque required to propel the vehicle for
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`mode selection, and in particular discloses the disputed limitations [16.2], [16.1] and
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`[16.0], as explained in the following Section III.
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`III. A POSA would have understood that Severinsky ’970 discloses the
`disputed limitations of claim 16
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`
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`11
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`Paice challenges three limitations from claim 16.6 (POR at 28, 50, 53.) Ford
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`reproduces those limitations below in the same order challenged by Paice, adds the
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`limitation numbering from the Petition for consistency, and adds a shorthand name,
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`e.g., “engine limitation” for ease of reference.
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`[16.2] engine limitation: “a highway cruising mode IV, wherein, when the SP<the
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`RL<the MTO, the engine is operable to provide torque to propel the hybrid vehicle, and
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`wherein the controller is operable to start the engine if the engine is not running to enter the
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`highway cruising mode IV.” (POR at 28-29.)
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`[16.1] motor limitation: “a low-load mode I, wherein, when the RL<the SP, the second
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`electric motor is operable to provide torque to propel the hybrid vehicle.” (POR at 50.)
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`[16.0] setpoint limitation:7 “the controller is operable to implement a plurality of operating
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`modes responsive to road load (RL) and the SP.” (POR at 53.)
`
`
`6 In footnote 11, Paice says that Severinsky ’970 does not disclose limitation [16.3]
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`because Severinsky ’970 allegedly “does not consider road load at all.” As explained in
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`Section II,
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`these arguments should be
`
`rejected because
`
`they depend on
`
`Paice/Hannemann improperly applying the Board’s construction of instantaneous torque
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`required to propel the vehicle construction.
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`7 Paice does not identify a particular limitation when it argues that Severinsky ’970
`
`does not disclose setpoint (see POR at 53-54), so Ford reproduces the relevant portion
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`of the first limitation of claim 16 [16.0] where setpoint appears.
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`
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`12
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
`
`
`A.
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`Severinsky ’970 teaches the engine [16.2], motor [16.1], and
`setpoint [16.0] limitations
`
`Severinsky ’970 teaches limitations [16.2], [16.1], and [16.0]. The passages
`
`quoted in Section II.B above show that a POSA would have understood Severinsky
`
`’970 teaches determining/considering the instantaneous torque required to propel the vehicle
`
`in mode selection. (See also Petition at 41-46.) Two additional passages further confirm
`
`that a POSA would have understood Severinsky ’970 teaches limitations [16.2], [16.1],
`
`and [16.0] in particular.
`
`The first passage (“Passage 1”) reads:
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`It will be appreciated that according to the invention the internal
`
`combustion engine is run only in the near vicinity of its most efficient
`
`operational point, that is, such that it produces 60-90% of its maximum
`
`torque whenever operated.
`
`(Ex. 1003 at 20:63-67, emphasis added.)
`
`Passage 1 is significant because it states: (1) that the engine should be run only
`
`near its most efficient range, and (2) defines that most efficient range as 60-90% of its
`
`maximum torque output (“MTO”). (Ex. 1005 at ¶¶350-352.) A second passage
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`(“Passage 2”) states:
`
`When the engine can be used efficiently to drive the vehicle forward, e.g.
`
`in highway cruising, it is so employed. Under other circumstances, e.g. in
`
`traffic, the electric motor alone drives the vehicle forward and the
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`internal combustion engine is used only to charge the batteries as
`
`needed.
`
`
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`13
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`
`(Ex. 1003 at 7:11-16, emphasis added.)
`
`Passage 2, read in context with Passage 1, expressly discloses the engine [16.2]
`
`and motor [16.1] limitations. Passages 1 and 2 expressly state when to run the engine:
`
`“when the engine can be used efficiently to drive the vehicle forward” – defined in
`
`Passage 1 as times when “it produces 60-90% of its [MTO]” – “it is so employed.”
`
`(Ex. 1005 at ¶¶317-322.) And Passages 1 and 2 expressly state when to run the
`
`motor: in “other circumstances,” i.e., “when the engine can[not] be used efficiently” –
`
`defined in Passage 1 as times when it would produce less than 60% of its MTO – the
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`motor is used. (Ex. 1005 at ¶¶302-307; Ex. 1003 at 7:11-16.)
`
`Passage 1 also describes the setpoint limitation [16.0]. The Board construed
`
`setpoint as a “predetermined torque value that may or may not be reset.” (Decision at
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`8.) Further, claim 1, from which claim 16 depends, describes the setpoint SP as the
`
`lower bound of the range where the engine is efficient: “a setpoint (SP) above which
`
`the torque produced by the engine is efficiently produced.” (Ex. 1001 at 58:23-24.)
`
`Passage 1 describes this exact concept – a predetermined torque value (60% of MTO)
`
`that defines the lower bound of efficient engine operation:
`
`It will be appreciated that according to the invention the internal
`
`combustion engine is run only in the near vicinity of its most efficient
`
`operational point, that is, such that it produces 60-90% of its maximum
`
`torque whenever operated.
`
`
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`14
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`Case No.: IPR2014-00904
`Attorney Docket No.: FPGP0104IPR1
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`(Ex. 1003 at 20:63-67, emphasis added; see also Ex. 1005 at ¶¶302-307, 317-322, 333-
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`334, 350-352.)
`
`Paice accuses Ford of attempting to “recast” Severinsky ’970 “based on a few
`
`selected statements taken out of context.” (POR at 12-13.) In fact, the inventor of the
`
`’634 patent characterized “the invention of the [Severinsky] ’970 patent” just like
`
`Ford:
`
`According to an important aspect of the invention of the
`
`[Severinsky] ’970 patent, substantially improved efficiency is afforded
`
`by operating the internal combustion engine only at relat