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 to Severinsky et al.
`
`IPR Case No.: IPR2014-00904
`
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1, 14, 16, 18, AND 24 OF U.S. PATENT NO. 7,237,634)
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ........................................................................................................ iii
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1
`
`A.
`B.
`C.
`D.
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1) ..................................... 1
`Related Matters - 37 C.F.R. § 42.8(b)(2) .............................................. 1
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 2
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104 ............................................ 3
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a) ...................................... 3
`B.
`Challenged Claims - 37 C.F.R. §42.104(b)(1) ...................................... 3
`C.
`Grounds of Challenge – 37 C.F.R. §42.104(b)(2) ................................ 3
`
`IV. PERSON OF ORDINARY SKILL IN THE ART (POSA) ............................ 5
`
`V.
`
`STATE OF THE ART ..................................................................................... 5
`
`VI. OVERVIEW OF THE ’634 PATENT ............................................................ 7
`
`A.
`B.
`C.
`
`Prosecution History of the ’634 Patent ................................................. 7
`Purported Improvement in the ’634 Patent ........................................... 9
`Independent Claim 1 ...........................................................................11
`
`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3) ...........................12
`
`A.
`B.
`C.
`
`“road load (RL)” and “RL” (claims 16, 18 and 24) ............................13
`“Setpoint (SP)” and “SP” (claim 1, 14, 16 and 18) ............................14
`“low-load mode I,” “highway cruising mode IV,” “acceleration
`mode V” (Claims 16) .........................................................................17
`
`VIII. UNPATENTABILITY GROUNDS ..............................................................18
`
`Ground 1: Claims 1, 14, 16, 18 and 24 are Obvious over Severinsky
`’970 in view of Field, SAE 1996 and the General Knowledge of
`a POSA ................................................................................................18
`A. Motivation to Combine .......................................................................18
`B.
`Claim 1 ................................................................................................25
`C.
`Claim 14 ..............................................................................................36
`D.
`Claim 16 ..............................................................................................37
`E.
`Claim 18 ..............................................................................................46
`F.
`Claim 24 ..............................................................................................48
`
`
`
`
`
`i
`
`

`

`Ground 2: Claims 1, 14, 16, 18, and 24 are Obvious Over Ehsani in
`view of Severinsky ’970 ......................................................................50
`A. Motivation to Combine .......................................................................50
`B.
`Claim 1 ................................................................................................53
`C.
`Claim 14 ..............................................................................................58
`D.
`Claim 16 ..............................................................................................58
`E.
`Claim 18 ..............................................................................................59
`F.
`Claim 24 ..............................................................................................59
`
`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS ......................................59
`
`X.
`
`CONCLUSION ..............................................................................................60
`
`CERTIFICATE OF SERVICE ................................................................................61
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`EXHIBIT LIST
`
`Description
`U.S. Patent No. 7,237,634
`’634 Patent File History
`
`Date
`
`n/a
`n/a
`
`Identifier
`The ’634 Patent
`‘634 Patent File
`History
`Severinsky ’970
`Ehsani
`Davis
`n/a
`
`Sept. 6, 1994
`Dec. 24, 1996
`n/a
`Mar. 8, 2005
`
`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
`
`
`
`Exhibit
`No.
`1001
`1002
`
`1003
`1004
`1005
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`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)
`
`
`
`
`
`iii
`
`

`

`Exhibit
`No.
`1015
`
`1016
`
`1017
`1018
`1019
`
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`1032
`
`1033
`
`Description
`Curriculum Vitae of Gregory
`Davis
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`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
`
`
`
`
`
`iv
`
`Date
`
`
`
`Identifier
`Declaration Ex.
`
`Feb. 1994
`
`Declaration Ex.
`
`Feb. 1997
`Feb. 1998
`1998
`
`
`Feb. 24-28,
`1992
`April 9-11,
`1997
`
`Declaration Ex.
`Declaration Ex.
`Declaration Ex.
`
`Declaration Ex.
`Declaration Ex.
`
`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.
`
`

`

`Exhibit
`No.
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`
`
`Description
`Introduction to Automotive
`Powertrains (Davis Textbook)
`Yamaguchi article: Toyota Prius,
`Automotive Engineering
`International
`60/100,095 Provisional
`Application
`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
`
`Date
`
`
`
`Identifier
`Declaration Ex.
`
`Jan. 1998
`
`Declaration Ex.
`
`Filed Sept. 11,
`1998
`Feb. 29, 2012
`
`September 12,
`2006
`November 25,
`1998
`n/a
`
`Declaration Ex.
`
`n/a
`
`the ‘347 patent
`
`Field
`
`‘347 Patent File
`History
`
`
`
`
`
`v
`
`

`

`I.
`
`INTRODUCTION
`
`The Petitioner Ford Motor Company respectfully requests inter partes
`
`review of claims 1, 14, 16, 18, and 24 of U.S. Patent No. 7,237,634 (“the ’634
`
`Patent”; attached as Ex. 1001) in accordance with 35 U.S.C. §§ 311–319 and 37
`
`C.F.R. § 42.100 et seq.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`
`Petitioner certifies that Ford Motor Company (“Petitioner”) is the real party-
`
`in-interest.
`
`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`
`Petitioner identifies the following related judicial matter: Paice, LLC and
`
`the Abell Foundation, Inc. v. Ford Motor Company, Case Number 1-14-cv-00492
`
`filed on February 19, 2014 in the District of Maryland, Baltimore Division. The
`
`’634 Patent is being asserted in this proceeding, along with four other patents
`
`within the same family.
`
`Petitioner is also aware that the ’634 patent is being asserted in Paice LLC
`
`and The Abell Foundation, Inc. v. Hyundai Motor America, Kia Motors
`
`Corporation, Hyundai Motor Company and Kia Motors America, Inc., Case
`
`Number 1:2012-cv-00499, District of Maryland, Baltimore Division filed on
`
`February 16, 2012.
`
`
`
`
`
`1
`
`

`

`Petitioner filed the following related petitions on April 4, 2014: IPR2014-
`
`00570, IPR2014-00571, IPR2014-00568 and IPR2014-00579. Concurrently filed
`
`related petitions include: IPR2014-00852, IPR2014-00875, and IPR2014-00884.
`
`This Petition is not redundant to any previous or concurrently filed petitions.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. §
`42.8(b)(3)
`
`Ford appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman P.C.
`
`as lead counsel, and appoints John E. Nemazi (Reg. No. 30,876), John P. Rondini
`
`(Reg. No. 64,949) and Erin K. Bowles (Reg. No. 64,705) of Brooks Kushman P.C.,
`
`as well as Lissi Mojica (Reg. No. 63,421) and Kevin Greenleaf (Reg. No. 64,062)
`
`of Dentons US LLP, as back-up counsel. An appropriate Power of Attorney is
`
`filed concurrently herewith.
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made via
`
`hand-delivery to Brooks Kushman P.C., 1000 Town Center, Twenty-Second Floor,
`
`Southfield, Michigan 48075 and Denton US LLP, 233 South Wacker Drive, Suite
`
`7800, Chicago, IL 60606-6306. Petitioner consents to service by email at
`
`FPGP0104IPR1@brookskushman.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com, and iptdocketchi@dentons.com.
`
`
`
`
`
`2
`
`

`

`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’634 Patent is available for inter partes review
`
`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this Petition.
`
`B. Challenged Claims - 37 C.F.R. §42.104(b)(1)
`
`Petitioner requests inter partes review for claims 1, 14, 16, 18, and 24 of the
`
`’634 Patent and requests that the Patent Trial and Appeal Board (“PTAB”) cancel
`
`those claims as unpatentable.
`
`C. Grounds of Challenge – 37 C.F.R. §42.104(b)(2)
`
`Petitioner relies on the following patents and publications:
`
`1.
`
`U.S. Patent No. 5,343,970 by Severinsky (“Severinsky ’970,” Ex.
`
`1003), which was filed on September 21, 1992, and issued on September 6, 1994
`
`and is prior art under 35 U.S.C. § 102(b). Severinsky ’970 was cited by not applied
`
`during prosecution of the ’634 Patent.
`
`2.
`
`PCT application number PCT/US93/04378 by Field (“Field,” Ex.
`
`1039), which published on November 25, 1993 and is prior art under 35 U.S.C. §
`
`102(b). Field was not cited and was not applied during prosecution of the ’634
`
`Patent.
`
`3.
`
`SAE Special Publication SP-1156 (“SAE 1996,” Ex. 1025) is a
`
`
`
`
`
`3
`
`

`

`Society of Automotive Engineering bound collection of papers that was published
`
`in February 1996 and is prior art under 35 U.S.C. § 102(b).1 SAE 1996 was not
`
`cited and was not applied during prosecution of the ’634 Patent.
`
`4.
`
`U.S. Patent No. 5,586,613 by Ehsani (“Ehsani,” Ex. 1004), which was
`
`filed on September 26, 1994, and issued on December 24, 1996 and is prior art
`
`under 35 U.S.C. § 102(b). Ehsani was cited but not applied during prosecution of
`
`the ’634 Patent.
`
`The grounds of unpatentability presented in this petition are as follows:
`
`Ground Basis
`
`References
`
`Claims
`
`1
`
`§ 103 Severinsky ’970 in view of Field, SAE 1996 and
`
`1, 14, 16,
`
`General Knowledge of a POSA
`
`18 & 24
`
`
`
`2
`
`§ 103 Ehsani in view of Severinsky ’970 and General
`
`1, 14, 16,
`
`Knowledge of a POSA
`
`18 & 24
`
`The unpatentability grounds set forth in this Petition are confirmed and
`
`supported by the declaration of Dr. Gregory W. Davis. (“Davis” at Ex. 1005.)
`
`
`1 For this petition, only one article from the bound collection is being referenced.
`
`Petitioner therefore provides just this reference due to the length of the full
`
`publication.
`
`
`
`
`
`4
`
`

`

`IV. PERSON OF ORDINARY SKILL IN THE ART (POSA)
`
`The level of ordinary skill in the art is evidenced by the references. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The level of ordinary skill of a
`
`POSA is also set forth in the accompanying declaration of Greg Davis. (Ex. 1005,
`
`Davis ¶¶41-42, see also ¶¶5-37.)
`
`V.
`
`STATE OF THE ART
`
`Hybrid vehicles date back over 100 years to the infancy of the automobile.
`
`(Ex. 1005, Davis ¶¶43-47.) Over this time span, numerous hybrid architectures had
`
`been examined to achieve design “goals” that included efficient engine operation,
`
`improved fuel economy and reduced emissions. (Ex. 1005, Davis ¶48.)
`
`By September 1998, the development of the hybrid vehicle had advanced to
`
`a state where numerous different hybrid vehicle architectures were generally
`
`known and had even been successfully built and tested on public roads. (Ex. 1005,
`
`Davis ¶¶49-60.) These hybrid vehicle architectures typically employed electric
`
`motors to maintain operation of the internal combustion engine within the engine’s
`
`most efficient operating region, commonly referred as the engine’s “sweet spot.”
`
`(Ex. 1005, Davis ¶¶59, 108-133.) Some hybrid vehicles could accomplish efficient
`
`engine operation by employing “one-motor” architectures while other designs
`
`found operational benefits by employing “two-motor” architectures. (Ex. 1005,
`
`Davis, see discussion regarding “series” hybrid vehicles at ¶¶61-69; “parallel”
`
`
`
`
`
`5
`
`

`

`hybrid vehicles at ¶¶70-86; and “series-parallel” hybrid vehicles ¶¶ 87-107.)
`
`It was known before September 1998 that engines in conventional vehicles
`
`operate inefficiently at low torque loads and vehicle speeds. (Ex. 1005, Davis
`
`¶¶108-123, 125-126.) Hybrid vehicles could overcome the inefficiency of
`
`conventional vehicles by including a motor (i.e., “traction motor”) with sufficient
`
`power to propel the vehicle at low speeds and low loads. (Ex. 1005, Davis ¶¶108-
`
`123.) By using a powerful enough motor, hybrid vehicles could restrict engine
`
`operation solely to areas of high efficiency. (Ex. 1005, Davis ¶¶59, 108-123.) As
`
`the vehicle speed and load increased, operation of the engine was permitted when
`
`the speed and load were determined to be in a region where engine torque is most
`
`efficiently produced—i.e., the engine’s “sweet spot.” (Ex. 1005, Davis ¶¶59, 109-
`
`133.)
`
`For hybrid vehicles it was further known prior to September 1998 that
`
`engine operation could be restricted to its “sweet spot” using a control strategy that
`
`typically included: (1) an all-electric mode where only the motor propels the
`
`vehicle when engine operation is inefficient (i.e., at low loads or vehicle speeds);
`
`(2) an engine-only mode where the engine propels the vehicle when engine
`
`operation is efficient, such as highway cruising at higher speeds; and (3) an
`
`acceleration mode where the both engine and motor are used to propel the vehicle
`
`when the demand is beyond the maximum torque capabilities of the engine, such
`
`
`
`
`
`6
`
`

`

`as during acceleration, passing, hill-climbing. (Ex. 1005, Davis ¶¶84, 124-131.)
`
`VI. OVERVIEW OF THE ’634 PATENT
`
`The ’634 Patent is a divisional in a patent family chain that ultimately claims
`
`priority back to two separate Provisional Applications—Provisional Application
`
`No. 60/100,095 (“the ’095 Provisional”), filed September 14, 1998, and
`
`60/122,296 (“the ’296 Provisional”), filed March 1, 1999. (Ex. 1001; Ex. 1002 at
`
`2.) Specifically, the ’634 Patent is a direct divisional of U.S. Patent No. 7,104,347
`
`(“the ’347 Patent”).
`
`
`
`A.
`
`Prosecution History of the ’634 Patent
`
`The ’634 Patent was filed on September 18, 2005 as a divisional of the ’347
`
`Patent. (Ex. 1002 at 1-3.) As filed, the ’634 Patent included 16 claims. (Ex. 1002
`
`at 109-114.) On May 5, 2006, the patentee filed a preliminary amendment
`
`cancelling originally filed claims 1-16 and adding new claims 17-75. (Ex. 1002 at
`
`166-181.)
`
`On August 8, 2006, a non-final office action was presented rejecting pending
`
`claims 17-75. (Ex. 1002 at 189.) In the non-final office action, claims 17-72 were
`
`
`
`
`
`7
`
`

`

`provisionally rejected on the ground of non-statutory obviousness-type double
`
`patenting over claims 82-122 of the then co-pending ’347 Patent. (Ex. 1002 at
`
`190.) Claims 73-74 were rejected under 35 U.S.C. § 102(e) as being anticipated by
`
`U.S. Patent No. 5,935,040 to Tabata. (Ex. 1002 at 191-192.) Claim 75 was also
`
`rejected under 35 U.S.C. § 103(a) as being unpatentable over Tabata alone. (Ex.
`
`1002 at 192.) Lastly, claims 49-54, 58-61, 68, 69, and 72 were rejected under 35
`
`U.S.C. § 103(a) as being unpatentable over Gray, Jr. in view of Tabata. (Ex. 1002
`
`at 192-193.) The Examiner indicted that claims 17-48 would be allowable upon
`
`submission of a proper terminal disclaimer and claims 55-57, 62-67 and 70-71
`
`would also be allowable if rewritten in independent form. (Ex. 1002 at 193.)
`
`On October 24, 2006, the patentee filed an amendment that amended claim
`
`49 to include the allowable subject matter of claim 55 and also added 261 new
`
`claims numbered new claims 76-337. (Ex. 1002 at 256-309.) In the remarks
`
`section, the patentee stated that these new claims were based on “allowable subject
`
`matter as indicated above and are also allowable.” (Ex. 1002 at 311.) The patentee
`
`also filed a terminal disclaimer with respect to claims 17-48 and cancelled
`
`corresponding claims 73-75. (Id.)
`
`On February 8, 2007 a notice of allowance was granted. (Ex. 1002 at 392.)
`
`In the corresponding notice of allowability the Examiner stated that claims 17-54,
`
`56-72 and 76-326 were allowed and that the terminal disclaimer had been accepted
`
`
`
`
`
`8
`
`

`

`and recorded. (Ex. 1002 at 395-396.) On July 3, 2007 the ’634 Patent issued. (Ex.
`
`1002 at 403.)
`
`B.
`
`Purported Improvement in the ’634 Patent
`
`The ’634 Patent identifies a purportedly “a new ‘topology’ for a hybrid
`
`vehicle” that requires “a first electric ‘starting’ motor” and “[a] second ‘traction’
`
`motor [] directly connected to the wheels to propel the vehicle.” (Ex. 1001 at
`
`11:50-61.)2 As further explained in the “Motivation to Combine” section below
`
`(Section VIII.A, pg. 18), the purported “new ‘topology’” is disclosed as a two-
`
`motor “series-parallel” hybrid design. (Ex. 1001 at 16:5-11.) Two-motor “series-
`
`parallel” hybrids, however, were well-known long before Paice’s earliest priority
`
`date of September 1998. (Ex. 1005, Davis ¶¶ 87-107.)
`
`The’634 Patent also identifies a purportedly new control strategy that
`
`operates the engine, traction motor, and starter motor “in accordance with the
`
`vehicle’s instantaneous torque demands so that the engine is run only under
`
`conditions of high efficiency.” (Ex. 1001 at 1-Abstract.) Specifically, the ’634
`
`Patent states that the control strategy operates “the internal combustion engine only
`
`under circumstances providing a significant load, thus ensuring efficient
`
`operation.” (Ex. 1001 at 35:10-12; See also 19:45-50 and 20:61-21:2.) The ’634
`
`
`2 “Topology” is a term used by the ’634 Patent to describe a vehicle architecture or
`
`vehicle hardware configuration. (Ex. 1005, Davis ¶56 and ¶135).
`
`
`
`
`
`9
`
`

`

`Patent states that such efficient engine operation is accomplished using a set of
`
`operating modes that determine when to operate the engine or motors “depending
`
`on the torque required, the state of charge of the battery and other variables.” (Ex.
`
`1001 at 35:3-9.) Specifically, the ’634 Patent discloses: (1) operating the traction
`
`motor to provide “the torque required to propel the vehicle” when engine torque
`
`would be inefficiently produced (i.e., “mode I”); (2) operating the engine to
`
`provide “the torque required to propel the vehicle” when engine torque is
`
`efficiently produced (i.e., “mode IV”); (3) operating both the engine and motor
`
`when the “torque required to propel the vehicle” is above the maximum operating
`
`torque of the engine (i.e., “mode V”.) (Ex. 1001 at 35:63-36:4; 36:20-43; Figs.
`
`8(a), (c), (d).)3
`
`As discussed in the “State of the Art” above, the control strategy of the ’634
`
`Patent was known in the prior art. (Ex. 1005, Davis ¶¶108-133.) In fact, as
`
`discussed in the Petitioner’s unpatentability grounds below, the ’634 Patent itself
`
`acknowledges that “the inventive control strategy according to which the hybrid
`
`vehicles of the ’634 Patent] are operated” is the same “as in the case of the hybrid
`
`vehicle system shown in [the prior art Severinsky ’970 patent].” (Ex. 1001 at 35:3-
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`9, 25:4-24.)
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`3 These operational “modes” were also summarized by the patentee during a prior
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`claim construction briefing in district court litigation. (Ex. 1009 at 13-14).
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`10
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`C.
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`Independent Claim 1
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`Claim 1 of the ’634 Patent is directed to a “hybrid vehicle.” Claim 1 further
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`recites an “internal combustion engine,” “first electric motor,” and “second
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`electric motor.”4 The “internal combustion engine” is recited as being “operable to
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`propel the hybrid vehicle by providing torque to the one or more wheels.” The
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`“second electric motor” is also “operable to propel the hybrid vehicle by providing
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`torque to the one or more wheels.” The “first electric motor” is further recited as
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`simply being “coupled to the engine.”
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`Claim 1 also recites “a battery” that is coupled to both the “first electric
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`motor” and the “second electric motor.” The “battery” is recited as “providing
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`current to the first and/or second electric motors.” The “battery” is also recited as
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`“accept[ing] current from the first and second electric motors.” Claim 1 therefore
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`recites providing current to the second electric motor but accepting current from
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`both the first and second electric motors.
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`Claim 1 specifically pertains to controlling these components such that
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`“engine torque is efficiently produced.” In particular, claim 1 recites a “controller”
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`that operates the engine when the engine can be efficiently operated. Claim 1
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`4 In this Petition, quoted claim language is italicized for ease of reference.
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`Petitioner will occasionally add boldface to certain claim language for emphasis.
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`11
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`further recites that the engine is operated according to the following limitations:5
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`Element A6 - operate the engine when torque required from the engine to
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`propel the hybrid vehicle … is at least equal to a setpoint (SP) above
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`which the torque produced by the engine is efficiently produced…
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`Element B - operate the engine when torque required from the engine … to
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`drive one or more of the first or the second motors to charge the battery
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`is at least equal to a setpoint (SP) above which the torque produced by the
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`engine is efficiently produced…
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`Claim 1 also states that the recited “setpoint (SP)” is a value that is
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`“substantially less than the maximum torque output (MTO) of the engine.”
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`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3)
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`For purposes of this IPR, a claim is interpreted by applying its “broadest
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`reasonable construction.” 37 C.F.R. § 42.100(b).
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`Certain terms recited in the claims of the ’634 Patent were argued by the
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`patentee with respect to other patents in the ’634 Patent family chain, namely U.S.
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`Patent Nos. 6,209,672 and 6,554,088, 7,104,547, and construed by a court in the
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`Eastern District of Texas in the prior Paice LLC v. Toyota Motor Corp. et al., Case
`
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`5 Claim 1 uses an “and/or” modifier which is properly construed as “Element A
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`alone,” “Element B alone,” or “Elements A and B taken together.” (Ex. 1014 at 4).
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`6 The term “Element” is used according to a 2014 PTAB decision. (Ex. 1014 at 4.)
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`
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`12
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`No. 2:04-cv-211, on September 28, 2005. (Ex. 1006; Ex. 1007; Ex. 1008.)
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`Certain terms recited in the claims of the ’634 Patent were also argued by
`
`the patentee and construed by the same Texas court in Paice LLC v. Toyota Motor
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`Corp. et al., Case No. 2:07-cv-180, on December 5, 2008. (Ex. 1009; Ex.1010; Ex.
`
`1011.)
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`Certain terms recited in the claims of the ’634 Patent have further been
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`briefed in the currently ongoing Hyundai Litigation. (Ex. 1012; Ex. 1013.)
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`Petitioner proposes the following claim constructions for the purposes of this
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`Petition only.
`
`A.
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`“road load (RL)” and “RL” (claims 16, 18 and 24)
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`
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`During the 2005 and 2008 litigation with Toyota, the Eastern District of
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`Texas construed the terms “road load,” “RL,” and “road load (RL)” as follows: (1)
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`“instantaneous torque [rotary force] required for propulsion of the vehicle” (Ex.
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`1008 at 39-41 and 49); (2) “the instantaneous torque required for propulsion of the
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`vehicle, which may be positive or negative in value.” (Ex. 1011 at 14-15.)
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`In the currently ongoing Hyundai Litigation, the patentee has also
`
`maintained that the terms “road load” or “RL” should be construed as “the
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`instantaneous torque required for propulsion of the vehicle, which may be positive
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`or negative in value.” (Ex. 1012 at 16-19.)
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`Because inter partes review proceedings use the broadest reasonable
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`
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`13
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`construction of claim terms, Petitioner proposes, for purposes of this proceeding
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`only, that the terms “road load (RL)” and “RL” be construed as: “the instantaneous
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`torque required for propulsion of the vehicle, which may be positive or negative in
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`value.” (see Ex. 1011 at 14-15.) Based on the specification, prosecution history,
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`and admissions by the patentee, however, Ford’s position is that the construction
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`under the applicable standards in district court is more narrow, and Petitioner
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`reserves the right to present a narrower construction in district court litigation.
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`B.
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`“Setpoint (SP)” and “SP” (claim 1, 14, 16 and 18)
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`
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`During 2008 litigation with Toyota, the Eastern District of Texas construed
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`the “setpoint (SP)” as being “a definite, but potentially variable value at which a
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`transition between operating modes may occur.” (Ex. 1011 at 13.) To the extent
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`this construction is applicable to cover any-and-all predetermined values (e.g.,
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`setpoints) disclosed in the ’634 Patent, this construction is overly broad. Instead,
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`the broadest reasonable construction of the terms “setpoint (SP)” and “SP” is “a
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`predetermined torque value,” as patentee made clear during prosecution.
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`Again, the ’634 Patent is a direct divisional of the ’347 Patent which
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`ultimately claims priority back to the ’672 Patent. Because these “patents all
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`derive from the same parent application and share many common terms” the claim
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`terms must be interpreted “consistently across all asserted patents.” NTP, Inc. v.
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`Research in Motion, Ltd., 418 F. 3d 1282, 1293 (Fed. Cir. 2005); Microsoft Corp.
`
`
`
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`14
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`v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (holding that
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`statements made in prosecution of one patent are relevant to the scope of all sibling
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`patents); see also Wang Laboratories, Inc. v. America Online Inc., 197 F. 3d 1377,
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`1384 (Fed. Cir. 1999); Omega Engineering, Inc v. Raytek Corp., 334 F. 3d 1314,
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`1333-1334 (Fed. Cir. 2003)
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`Claim 1 of the ’634 Patent is virtually identical to claim 1 of the ’347 Patent.
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`(Ex. 1001 at Claim 1; Ex. 1038 at Claim 1.) During prosecution of the ’347 Patent,
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`the patentee amended then pending claim 1 to include the following language in
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`order to overcome a prior art rejection:
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`and wherein the torque produced by said engine when operated at said
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`setpoint (SP) is substantially less than the maximum torque output
`
`(MTO) of said engine.7
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`(Ex. 1040 at 4-7, 9-10 and 15-16.)
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`Such language was added in order to overcome a rejection based on U.S.
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`Patent 6,054,844 to Frank and a non-patent publication titled “A hybrid drive
`
`based on a structure variable arrangement” to Mayrhofer. In order to overcome
`
`these references, the patentee argued that the engine was operated only when
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`loaded “in excess of SP [setpoint], which is now defined to be ‘substantially less
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`than the maximum torque output (MTO) of said engine.’” (Ex. 1040 at 21-22,
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`7 Claim 23 recites a similar comparison between engine torque and “setpoint (SP).”
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`15
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`emphasis added.)
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`The ’634 Patent specification states that multiple “system variables” are
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`compared against multiple “setpoints.”
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`As mentioned above, FIG. 9 is a high-level flowchart of the principal
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`decision points in the control program used to control the mode of
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`vehicle operation. Broadly speaking, the microprocessor tests
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`sensed and calculated values for system variables, such as the
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`vehicle's instantaneous torque requirement, i.e., the “road load” RL,
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`the engine's instantaneous torque output ITO, both being expressed as
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`a percentage of the engine's maximum torque output MTO, and the
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`state of charge of the battery bank BSC, expressed as a percentage of
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`its full charge, against setpoints, and uses the results of the
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`comparisons to control the mode of vehicle operation.
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`(Ex. 1001 at 40:16-26, emphasis added.)
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`Independent claim 1, however, recites a “setpoint” that is compared to the
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`“torque produced by said engine.” (Ex. 1001 at 58:23-24.) Thus, the claimed
`
`setpoint is based on torque by the express claim language. The ’634 Patent states
`
`that the engine torque “system variable” is compared against a “setpoint” that is
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`between “30-50%” of the engine’s maximum torque output. (Ex. 1001 at 40:41-
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`44.) In other words, independent claim 1 recites a torque based “setpoint” that is
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`“obviously arbitrary and can vary substantially, e.g., between 30-50% of MTO.”
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`(Ex. 1001 at 40:47-48.)
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`
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`16
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`According to the broadest reasonable construction, the recited “setpoint
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`(SP)” and “SP” should be construed as a “predetermined torque value.”
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`C.
`
`“low-load mode I,” “highway cruising mode IV,”
`“acceleration mode V” (Claims 16)
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`
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`During the 2008 patent suit with Toyota, a Texas court construed these terms
`
`as follows: (1) “low-load mode I” as “the mode of operation in which energy from
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`the battery bank flows to the traction motor and torque (rotary force) flows from
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`the traction motor to the road wheels;” “highway cruising mode IV” as “the mode
`
`of operation in which energy flows from the fuel tank into the engine and torque
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`(rotary force) flows from the engine to the road wheels;” (3) “acceleration mode
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`V” as “the mode of operation in which energy flows from the fuel tank to the
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`engine and from the battery bank to at least one motor and torque (rotary force)
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`flows from the engine and at least one motor to the road wheels.” (Ex. 1011 at 15-
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`17.)
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`Because inter partes review proceedings use the broadest reasonable
`
`construction of claim terms, Petitioner agrees with the above constructions
`
`provided by the Texas court for this proceeding only. (See Ex. 1011 at 15-17.)
`
`Based on the specification, prosecution history, and admissions by the patentee,