UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`FORD MOTOR COMPANY Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
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`Patent Owner
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`
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`Case IPR2014-01415
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`Patent 8,214,097
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`
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`
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`Patent Owner’s Response to Petition for Inter Partes Review of
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`U.S. Patent No. 8,214,097
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`Patent No. 8,214,097
`Patent Owner Response
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`Case Case IPR2014-01415
`Attorney Docket No: 36351-0013IP2
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`TABLE OF CONTENTS
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`
`I. 
`
`II. 
`
`Introduction ...................................................................................................... 1 
`
`Background of the ’097 Patent ........................................................................ 2 
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`III.  Claim Construction .......................................................................................... 3 
`
`A. 
`
`B. 
`
`The District Courts’ Construction ......................................................... 4 
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`“Setpoint” is “a definite, but potentially variable value at which a
`transition between operating modes may occur.” ................................. 4 
`
`“Setpoint” is used to mark a transition between operating
`1. 
`modes ..................................................................................................... 4 
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`“Setpoint” is not “predetermined” and is not limited to torque
`2. 
`values ..................................................................................................... 7 
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`IV.  Overview of the References ............................................................................ 7 
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`A. 
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`B. 
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`C. 
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`Severinsky ............................................................................................. 7 
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`Anderson ............................................................................................... 8 
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`Takaoka ............................................................................................... 12 
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`V.  Ground 1 is defective because claims 1, 11, and 21 are not obvious over the
`proposed combination of Severinsky and Anderson ..................................... 12 
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`A. 
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`B. 
`
`C. 
`
`Severinsky and Anderson do not disclose “wherein the controller
`controls said engine such that a rate of increase of output torque of
`said engine is limited . . .” ................................................................... 12 
`
`Severinsky and Anderson do not disclose a controller that
`supplements engine torque with motor torque while the engine’s
`torque output is limited. ...................................................................... 15 
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`Severinsky and Anderson do not disclose a “controller . . . such that
`combustion of fuel within the engine occurs at a substantially
`stoichiometric ratio” ............................................................................ 18 
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`D.  Ground 1 is Defective Because Severinsky in view of Anderson Fails
`to Disclose the “setpoint”-based Modes of Operation Recited in
`Claims 1, 11, and 21 ............................................................................ 21 
`
`1. 
`
`Ford Misapplies Severinsky to Claims 1, 11, and 21 ............... 21 
`
`Severinsky and Anderson Fail to Disclose the Modes of
`2. 
`Operation Recited in Claims 1, 11, and 21 ......................................... 27 
`
`Statements made in the ’097 Patent regarding Severinsky do not
`3. 
`remedy the above-mentioned deficiencies .......................................... 32 
`
`Severinsky in view of Anderson does not disclose or render
`4. 
`obvious a “setpoint” ............................................................................ 37 
`
`Severinsky and Anderson cannot be combined in the manner asserted
`by Ford................................................................................................. 38 
`
`Severinsky and Anderson teach away from the claimed invention .... 43 
`
`Ford’s expert should be given little or no weight ............................... 47 
`
`E. 
`
`F. 
`
`G. 
`
`VI.  Ground 2 is defective because claims 3, 13, and 23 are not obvious over the
`proposed combination of Severinsky, Anderson, and Yamaguchi ............... 50 
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`VII.  Ground 3 is defective because claims 4, 14, and 24 are not obvious over the
`proposed combination of Severinsky, Anderson, Yamaguchi, and Takaoka 51 
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`VIII.  Ground 4 is defective because claims 30 and 34 are not obvious over the
`proposed combination of Severinsky and Takaoka ....................................... 52 
`
`A. 
`
`Takaoka fails to disclose a “controller” that limits engine output
`torque to maintain stoichiometry......................................................... 52 
`
`Severinsky does not disclose the limiting that rate of change
`1. 
`limitations ............................................................................................ 53 
`
`2. 
`
`Takaoka discloses an underpowered engine ............................. 53 
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`Takaoka does not limit the rate of change of engine output
`3. 
`torque to achieve stoichiometry .......................................................... 55 
`
`Takaoka at best discloses limiting engine output power, not
`4. 
`torque ................................................................................................... 56 
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`Case Case IPR2014-01415
`Attorney Docket No: 36351-0013IP2
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`B. 
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`C. 
`
`Severinsky does not disclose or suggest claim 34 .............................. 58 
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`A POSITA would not have been motivated to combine Severinsky
`and Takaoka ........................................................................................ 59 
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`IX.  Conclusion ..................................................................................................... 60 
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`TABLE OF AUTHORITIES
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`Cases
`
`Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
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`796 F.2d 443 (Fed. Cir. 1986).............................................................................. 45
`
`Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
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`796 F.2d 443, 448 (Fed. Cir. 1986) ..................................................................... 45
`
`Clearwater Sys. Corp. v. Evapco, Inc.,
`
`394 F. App'x 699, 705 (Fed. Cir. 2010) ............................................................... 35
`
`Fluor Tec, Corp. v. Kappos, 499 Fed. Appx. 35 (Fed. Cir. 2012) .......................... 46
`
`Fuji Photo Film Co. v. Int'l Trade Comm'n,
`
`386 F.3d 1095, 1098 (Fed. Cir. 2004) ................................................................... 7
`
`In re Giannelli, 739 F.3d 1375, 1380-81 (Fed. Cir. 2014) ...................................... 14
`
`In re Gurley, 27 F.3d 551 (Fed. Cir. 1994) .............................................................. 43
`
`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) ............ 59
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 46
`
`Microsoft Corporation v. Enfish, LLC, IPR2013-00559,
`
` Paper No. 65 at 29 (PTAB March 3, 2015) ........................................................ 59
`
`Outside The Box Innovations, LLC v. Travel Caddy, Inc.,
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`695 F.3d 1285 (Fed. Cir. 2012)............................................................................ 46
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`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
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`491 F.3d 1342, 1362 (Fed. Cir. 2007) ................................................................. 36
`
`Salesforce.com, Inc. v. VirtualAgility, Inc., CBM2013-00024,
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`Paper No. 16 at 43 (PTAB November 19, 2013) ................................................. 59
`
`Sata GmbH & Co., v. Anest Iwata Corp.,
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`2013 WL 5970199 (June 25, 2013 Patent Tr. & App. Bd.) ................................. 49
`
`Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336 (Fed. Cir. 2011) ....................... 43
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ...................... 46
`
`
`Statutes
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`35 U.S.C. § 103 ................................................................................................. 50, 51
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`Patent No. 8,214,097
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`Case Case IPR2014-01415
`Attorney Docket No: 36351-0013IP2
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`Patent Owner
`Exhibit Number
`PAICE Ex. 2101
`PAICE Ex. 2102
`PAICE Ex. 2103
`
`PAICE Ex. 2104
`PAICE Ex. 2105
`PAICE Ex. 2106
`PAICE Ex. 2107
`PAICE Ex. 2108
`PAICE Ex. 2109
`PAICE Ex. 2110
`PAICE Ex. 2111
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`UPDATED TABLE OF EXHIBITS
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`Exhibit Description
`
`Declaration in support of pro hac vice motion
`Declaration of Neil Hannemann
`IPR2014-01415, Jeffery L. Stein, Deposition Tr. (May 29,
`2015)
`Jeffery L. Stein, Deposition Tr. (Mar. 3, 2015)
`Jeffery L. Stein, Deposition Tr. (May 29, 2015)
`Jeffery L. Stein, Deposition Tr. (Jan. 12, 2015)
`Jeffery L. Stein, Deposition Tr. (May 8, 2015)
`Gregory Davis, Deposition Tr. (Jan. 13, 2015)
`Gregory Davis, Deposition Tr. (Feb. 25, 2015)
`Neil Hannemann CV
`McGraw Hill Dictionary Scientific 2003
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`vi
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`Patent No. 8,214,097
`Patent Owner Response
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`I.
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`Introduction
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`Case Case IPR2014-01415
`Attorney Docket No: 36351-0013IP2
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`The Board instituted trial with respect to claims 1–6, 8–16, 18–26, 28–30, and
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`34 (the “challenged claims”) of U.S. Patent No. 8,214,097 (“the ’097 patent”) (Ex.
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`1101) owned by Paice LLC and The Abell Foundation, Inc. (collectively, the “Patent
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`Owner” or “Paice”) in view of a Petition requesting inter partes review filed by Ford
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`Motor Company (“Ford”). The Board instituted on each of the asserted 4 grounds
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`based on the following references: (1) U.S. Patent No. 5,343,970 (“Severinsky”)
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`(Ex. 1104); (2) “The Effects of APU Characteristics on the Design of Hybrid Control
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`Strategies for Hybrid Electric Vehicles,” SAE Technical Paper Series, February 27–
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`March 2, 1995 (“Anderson”) (Ex. 1105); (3) U.S. Patent No. 5,865,263
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`(“Yamaguchi”) (Ex. 1106); and (4) “A High-Expansion Ratio Gasoline Engine for
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`the Toyota Hybrid System,” Toyota Technical Review, vol. 47, no. 2, Apr. 1998
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`(“Takaoka”) (Ex. 1107).
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`In particular, the Board instituted the following grounds: Ground 1—claims
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`1, 2, 5, 6, 8–12, 15, 16, 18–22, 25, 26, 28, and 29 as obvious over Severinsky and
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`Anderson; Ground 2—claims 3, 13, and 23 as obvious over Severinsky, Anderson,
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`and Yamaguchi; Ground 3—claims 4, 14, and 24 as obvious over Severinsky,
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`Anderson, Yamaguchi, and Takaoka; and Ground 4—claims 30 and 34 as obvious
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`over Severinsky and Takaoka. See March 12, 2015 Decision, Paper 10, at 12
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`(“Decision”). This Response is filed in opposition to the Petition, as informed and
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`narrowed by the Decision. It is respectfully submitted that all challenged claims are
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`patentable for the reasons set forth herein.
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`Ford’s arguments with regard to the ’097 patent are fundamentally flawed for
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`several reasons. Even assuming for the sake of argument that Severinsky may be
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`combined with Anderson or Takaoka, the proposed combinations fails to disclose
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`the claimed controller of independent claims 1, 11, 21, and 30. Moreover, a person
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`of ordinary skill in the art would not have combined the parallel hybrid topology and
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`control strategies of Severinsky with the series hybrid control strategies of Anderson.
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`Therefore, for the reasons detailed more fully herein, the Board should affirm the
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`patentability of the challenged claims.
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`II. Background of the ’097 Patent
`The ’097 patent describes a hybrid vehicle featuring a hybrid control strategy
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`that reduces emissions during start and operation of the hybrid vehicle. Ex. 1101,
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`col. 1:24-32, col. 29:63-30:12; see also Ex. 2102, ¶29-37. The ’097 patent describes
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`a hybrid control strategy for limiting the rate of increase of the engine’s output torque
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`such that the combustion of fuel occurs at a substantially stoichiometric air-fuel ratio
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`and using the electric motor to meet any shortfall in torque required to operate the
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`vehicle in response to the operator’s command. See, e.g., id., col. 27:31-35, col.
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`29:63-30:12, col. 37:2-6, col. 37:39-42, col. 38:62-39:14; see also Ex. 2102, ¶29-37.
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`This reduces emissions and improves fuel economy. Ex. 2102, ¶29-37. The ’097
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`patent also describes operating the vehicle in different “modes” responsive to the
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`“road load.” See Ex. Ex. 2102, ¶42-43.
`
`During the prosecution of the ’097 patent, the patentee stated that while
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`substantially stoichiometric combustion is to be maintained, drivability – that is,
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`rapid increase in the torque provided to the wheels in response to the operator’s
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`command – is nonetheless essential to a commercially viable vehicle. Ex. 2102, ¶¶
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`38-41. The electric ‘traction’ motor of the hybrid vehicle is instead employed to
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`provide a rapid increase in torque provided to the wheels of the vehicle instead of
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`forcing
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`the engine
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`into non-stoichiometric combustion,
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`thereby providing
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`drivability, while maintaining efficient operation. Ex. 1103, at 232-233; see also Ex.
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`2102, ¶¶ 38-41. The patentee also explained that: “the rate of increase of torque
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`output by the ICE [internal combustion engine] is limited by the controller to less
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`than the inherent maximum rate of increase in output torque of the ICE, and any
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`shortfall in the torque required to meet the operator’s requirements – that is, to
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`provide drivability – is supplied by torque from the traction motor.” Id. at 234; see
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`also Ex. 2102, ¶¶ 38-41.
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`III. CLAIM CONSTRUCTION
`In its Initial Decision the Board declined to construe any claim terms.
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`Decision at 5. While the Challenged Claims are patentable under a plain and ordinary
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`meaning of the claims, Patent Owner respectfully requests that the Board adopt
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`Patent Owner’s construction of “setpoint”: “a definite, but potentially variable value
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`at which a transition between operating modes may occur.”
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`A. The District Courts’ Construction
`As an initial matter, Patent Owner notes that the U.S. District Court for the
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`Eastern District of Texas and the U.S. District Court for the District of Maryland
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`both have construed the term “setpoint (SP)” to mean “a definite, but potentially
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`variable value at which a transition between operating modes may occur.”1 Judge
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`Quarles of the District of Maryland noted that “[Paice’s] proposed construction of
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`“setpoint’ … is consistent with the language of the claims and the intrinsic
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`evidence.”2
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`B.
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`“Setpoint” is “a definite, but potentially variable value at which a
`transition between operating modes may occur.”
`1.
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`“Setpoint” is used to mark a transition between operating
`modes
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`It is clear from the claims and the specification that a “setpoint” is not simply
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`a numerical value divorced from the context of the rest of the control system. Rather,
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`“setpoint” serves the crucial function of marking the transition from one claimed
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`1 See Ex. 1120, Ex. 1124.
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`2 Ex. 1124.
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`mode to another, and in particular, the transition from propelling the vehicle with
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`the motor 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, 11,
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`and 21, 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. 1101 at claims 1, 11, and 21.
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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 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. 1101 at col. 39:52-59; see also id. at col. 40:6-8 (“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. 40:13-17 (“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 from
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`one comparison of road load to MTO to the next depending on other variables”); col.
`5
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`41:1-4 (“FIG. 9 thus shows the main decision points of the control program run by
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`the microprocessor, with the transition point between mode I, low-speed operation,
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`and mode IV highway cruising, set at a road load equal to 30% of MTO”); col. 43:29-
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`32 (“Further, as noted above the transition points between modes I, IV, and V in
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`particular may vary in accordance with the operator's commands…”).
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`The “setpoint” marks the amount of “road load” at which the claimed control
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`system actively changes the vehicle from one mode to another (e.g. from motor
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`propulsion to engine propulsion). The challenged patent recognizes the significant
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`efficiencies to be gained by transitioning between motor propulsion to engine
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`propulsion in response to “road load.” See e.g., Ex. 1101 at col. 13:29-36 (“By
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`comparison … the vehicle’s operating mode-that is, the selection of the source of
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`torque needed to propel the vehicle-is determined based on the amount of torque
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`actually required. In this way the proper combination of engine, traction motor, and
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`starting motor is always available. This apparently simple point has evidently been
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`missed entirely by the art.”); see also id. at col. 13:37-53 (noting that prior art
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`references using vehicle speed to transition between modes “inherently operate the
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`engine under less efficient conditions”).
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`Without a proper construction, Ford is attempting to improperly read the
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`claims to broadly cover hybrid vehicle systems where transitions between modes
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`never occur, a clear error that is fundamentally contrary to the specification of the
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`Case Case IPR2014-01415
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`’097 Patent. See Fuji Photo Film Co. v. Int'l Trade Comm'n, 386 F.3d 1095, 1098
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`(Fed. Cir. 2004) (claim should not be given overly broad construction that is
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`inconsistent with how claim term is used in the specification). Therefore, Patent
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`Owner respectfully requests that the Board adopt Patent Owner’s construction of
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`“setpoint” to make clear that it is a value “at which a transition between operating
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`modes may occur.”
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`2.
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`“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 in related IPRs
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`requiring the term “setpoint” to be “predetermined” and a “torque value” (see e.g.
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`IPR2014-00904, Paper 13, at 8), and reserves the right to appeal the Board’s
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`construction on these additional bases. While Patent Owner disagrees with the
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`Board’s construction of “setpoint” in the related IPRs, the Challenged Claims are
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`patentable under either construction.
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`IV. Overview of the References
`A.
`Severinsky
`Severinsky is directed to a parallel hybrid system. Ex. 1009, col. 6:3-5; see
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`also Ex. 2102, ¶¶ 53-55. In fact, Severinsky discourages the use of series hybrid
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`systems by stating that “series hybrid electric vehicles are inefficient and grossly
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`uneconomical.” Ex. 1009, col. 2:55-65; see also Ex. 2102, ¶¶ 53-55. Severinsky
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`discloses a control strategy where the engine, electric motor, or both the engine and
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`electric motor, can be used to propel the parallel hybrid vehicle. Ex. 2102, ¶¶ 56-66.
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`The hybrid vehicle operates in various modes based on vehicle speed, including a
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`low speed mode where only the electric motor is used to propel the vehicle, and a
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`high speed/cruising mode where only the engine is used to propel the vehicle. See,
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`e.g., Ex. 1009, col. 10:52-68; 13:66-14:2; see also Ex. 1103, at 238-239; see also
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`Ex. 2102, ¶¶ 56-66. There is also a high-speed acceleration/hill climbing mode
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`where both the engine and electric motor are used to propel the vehicle. See, e.g.,
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`Ex. 1009, col. 14:22-26; see also Ex. 2102, ¶¶ 56-66.
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`B. Anderson
`Anderson is entitled “The Effects of APU Characteristics on the Design of
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`Hybrid Control Strategies for Hybrid Electric Vehicles.” As an initial matter,
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`Anderson notes that hybrid vehicles are divided into two architectural categories—
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`series and parallel. Ex. 1105 at 3-4. In a series hybrid system, the APU (e.g. the
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`engine) is decoupled from the wheels. Id. at 3-4; see also Ex. 2102, ¶¶ 67-73. In
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`contrast to the series topology, in a parallel hybrid system, there is a direct
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`mechanical connection between the APU and the wheels through a transmission. Id.
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`at 4. Because the APU is directly coupled to the wheels in a parallel hybrid, the APU
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`speed is determined by the vehicle speed and transmission ratio. Id. at 4; see also
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`Ex. 2102, ¶¶ 67-73.
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`Although Anderson states that the “thought processes” presented in the paper
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`are “sufficiently general” that they can be applied to any type of vehicle, this simply
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`means that the “thought processes”—in other words, the methodology of designing
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`a hybrid control strategy and the effects of APU and battery characteristics and
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`design trade-offs—can be applied to any type of vehicle. Id. at 4; see also Ex. 2102,
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`¶ 74. Nowhere does Anderson suggest that the hybrid control strategies articulated
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`for a series hybrid can be applied to a parallel hybrid. In fact, Anderson differentiates
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`the two architectures and makes clear that, to fully explore the flexibility allowed by
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`the hybrid system, its focus is on the design of a strategy for what Anderson calls a
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`“power assist” hybrid, which is a series hybrid system. Ex. 1105 at 4-5.
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`When considering control strategies for a series hybrid system, Anderson
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`starts by describing two extremes in control strategies for a series hybrid system:
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`“thermostat” mode and “following” mode. Id. at 5; see also Ex. 2102, ¶ 75. Using
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`the “thermostat” mode, the APU is operated at a constant power level when the state
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`of charge of the battery is below a certain lower threshold, and turned off when the
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`state of charge exceeds an upper threshold. Id. The “following” mode requires the
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`“APU to follow the actual wheel power whenever possible (similar to a conventional
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`automobile).” Id. Using the “following” mode, the APU “must then operate over its
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`entire range of power levels and perform fast power transients, both of which can
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`adversely affect engine efficiency and emissions characteristics.” Id. Importantly,
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`Patent No. 8,214,097
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`Anderson notes that the “following” mode “is the mode a parallel hybrid vehicle
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`always uses.” Id. Thus, although the “thermostat” mode or the “following” mode
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`may be considered for a series hybrid vehicle, Anderson expressly teaches that a
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`parallel hybrid vehicle always uses the “following” mode and that the engine must
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`perform fast power transients. Id. This is because the engine follows the actual wheel
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`power and responds to an operator’s command for more power. Id.
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`Anderson acknowledges that neither strategy would be the optimum strategy,
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`because the optimum strategy is dependent on the component characteristics and
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`design trade-offs for the APU and battery. Id. at 5; see also Ex. 2102, ¶¶ 76-77. In
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`discussing APUs and their characteristics, Anderson again makes clear that its focus
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`is on the control strategy for a series hybrid system. Anderson states that “[b]ecause
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`the APU is decoupled from the drivetrain, there is greater flexibility in its design,”
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`and the “design need not be performance driven.” Id.; see also id. at 7 (“a series
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`hybrid vehicle decouples both the speed and power of the APU from the speed and
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`power requirement at the wheels”).
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`Regarding APU transient capabilities, Anderson states that: “Mechanically,
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`the transient capabilities of an engine are limited by the inertia involved in increasing
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`or decreasing the engine speed. Although slower transients are desirable for reducing
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`emissions, slow transients can curtail the life of the battery or potentially harm the
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`engine.” Ex. 1105 at 7. In other words, Anderson’s focus is limited to the inherent
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`transient characteristics of an engine, recognizing the limitations associated with an
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`engine’s mechanical inertia when increasing or decreasing the engine speed. Ex.
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`2102, ¶¶ 78-79. For example, engines have different transient capabilities based on
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`mechanical parameters such as flywheel inertia, inertia of other rotating and
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`reciprocating components, limitations of air flow, and internal friction. Id.; see also
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`Ex. 1003 at 234-235. Anderson is simply making the unremarkable observation that
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`when choosing engines based on their characteristics for a series hybrid system, the
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`transient capability of an engine is inherently limited by mechanical inertia and that
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`this may be a consideration. Ex. 1105 at 6; see also Ex. 2102, ¶¶ 78-79.
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`Anderson also recognizes that transients present an emissions problem that is
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`largely related to the speed of the transient and teaches that “[s]ome of this effect
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`can be reduced using a hybrid strategy that only allows slow transients, but this
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`places greater strain on the LLD.” Ex. 1105 at 7; see also Ex. 2102, ¶¶ 81-83.
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`Anderson’s teaching that “some of this effect can be reduced using a hybrid strategy
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`that only allows slow transients” is clearly not for a parallel hybrid system. Ex. 2102,
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`¶¶ 80, 81-83. As discussed above, Anderson expressly teaches that a parallel hybrid
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`system always uses the “following” control strategy, and that the APU must perform
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`fast power transients. Ex. 1105 at 5 (emphasis added); see also Ex. 2102, ¶¶ 81-83.
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`Anderson also notes that because the speed and power of the APU is decoupled from
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`the speed and power requirement at the wheels for series hybrid, the APU does not
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`Attorney Docket No: 36351-0013IP2
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`follow actual wheel power and thus, may be turned on to a constant power level
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`when the state of charge of the battery is below a certain threshold, as in case of the
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`“thermostat” control strategy. Ex. 2102, ¶¶ 81-83.
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`C. Takaoka
`Takaoka is titled “A High-Expansion-Ratio Gasoline Engine for the
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`TOYOTA Hybrid System.” Takaoka discusses the development of “a new gasoline
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`engine,” which had “more emphasis on thermal efficiency than on specific output.”
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`See Ex. 1107 at 1. In other words, Takaoka teaches using an engine that sacrifices
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`performance for efficiency. See id.; Ex. 2102, ¶¶ 85-86. Takaoka further discloses
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`that this tradeoff can be made without sacrificing overall vehicle performance by
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`combining the power of the engine with the power of an electric motor. See id.; Ex.
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`2102, ¶¶ 87-88.
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`V. Ground 1 is defective because claims 1, 11, and 21 are not obvious over
`the proposed combination of Severinsky and Anderson
`A.
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`Severinsky and Anderson do not disclose “wherein the controller
`controls said engine such that a rate of increase of output torque
`of said engine is limited . . .”
`Severinsky and Anderson do not disclose a controller controlling the engine
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`such that a rate of increase of engine output torque is limited to less than said inherent
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`maximum rate of increase of output torque. Ex. 2102, ¶¶ 122-123. Anderson
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`examines how the design of an engine impacts the design of hybrid control strategies
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`and states that engine characteristics (such as transient capabilities, fuel efficiency
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`and emissions) must be chosen to complement the battery requirements. Id.
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`Anderson treats these as inherent characteristics rather than variables subject to
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`control. Id.; see also Ex. 1105 at 7.
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`In other words, Anderson discloses that the transient capabilities are limited
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`by the inherent mechanical characteristics of the engine itself, such as its inertia in
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`responding to commands for increasing or decreasing engine speed. Ex. 2102, ¶¶
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`124. Consequently, the transient capabilities of the engine depends on the particular
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`mechanical capabilities of an APU, and thus, varies for different APUs. Id. The idea
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`is that the designer can choose one engine over another based on the desired
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`characteristics. Anderson does not suggest which feature set is better, and critically,
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`never suggests a control strategy that can modify these inherent characteristics. In
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`particular, nowhere does Anderson teach a controller that controls the engine such
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`that a rate of increase of engine output torque is limited to less than the inherent
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`maximum rate of increase of engine output torque. Id.
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`For example, Anderson discloses that “slow transients can be a serious
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`problem during a transition from a hard acceleration to a hard braking.” See Ex. 1105
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`at 7. As Mr. Hannemann explains, “if you design an engine to inherently have slow
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`transients, that can cause a problem during a transition from a hard acceleration to a
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`hard braking, because the vehicle can decrease its speed faster than the engine. In
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`that situation, the vehicle would be forcing a negative torque on the engine that the
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`engine was not necessarily designed for.” See Ex. 2102 at ¶ 80. This further shows
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`that Anderson’s disclosure of “slow transients” is related to the design of an engine,
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`not a control system. See id.; see also id. at ¶¶ 129-131.
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`In IPR2014-00570, Ford misleadingly argues that they are relying on the
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`controller in Severinsky, not Anderson. See IPR2014-00570, Paper 29, at 7. That
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`misses the point: Paice does not dispute that programmable controllers were known
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`in 1998. Ex. 2102, ¶ 128. The issue is whether the combination of Anderson and
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`Seversinky discloses a controller that controls the engine to limit the rate of increase
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`of output torque, as opposed to simply including an engine that reacts more slowly
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`to transients. The fact that programmable controllers were known in the art is
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`irrelevant in light of the fact that Anderson and Severinsky fail to disclose a
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`controller programmed to carry out the claimed functionality. See id.; see also In
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`re Giannelli, 739 F.3d 1375, 1380-81 (Fed. Cir. 2014) (reversing Board’s
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`determination where the obviousness rejection was incorrectly based on the mere
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`capability of the prior art device).
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`Similarly, Dr. Stein asserts that “[t]he amount of fuel supplied to an engine
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`affects engine torque production” and that “[c]ontrolling the rate of supply of the
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`fuel to the engine 40 through electronic fuel injection is, therefore, one way the
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`microprocessor 48 limits the rate of increase of output torque of the engine 40.” See
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`Ex. 1102, ¶¶351-352; see also Ex. 2102, ¶¶ 125-127. In other words, Severinsky
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