UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 8,214,097 to Severinsky et al.
`IPR Case No. 2014-01415
`
`
`
`
`
`
`
`
`SECOND PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1–6, 8–16, 18–26, 28–30 and 34 of U.S. PATENT NO. 8,214,097)
`
`
`
`
`
`
`

`

`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. GROUNDS FOR STANDING AND PROCEDURAL STATEMENT
`UNDER 37 C.F.R. § 42.104(a) ............................................................ 3
`
`IV. OVERVIEW OF CHALLENGE UNDER 37 C.F.R. §42.104(b)(2) .............. 3
`
`A.
`B.
`
`Prior Art Relied Upon ........................................................................... 3
`Grounds of Challenge — 37 C.F.R. § 42.104(b)(2) ............................. 4
`
`V. OVERVIEW OF THE ‘097 PATENT FAMILY ............................................ 4
`
`A.
`B.
`
`‘097 Patent Family ................................................................................ 5
`Background and Purported Invention ................................................... 5
`
`VI. TECHNICAL FUNDAMENTALS OF THE CLAIMED SUBJECT
`MATTER ............................................................................................... 6
`
`VII. PROSECUTION HISTORY ........................................................................... 8
`
`VIII. STATE OF THE ART RELATIVE TO THE ‘097 PATENT ......................10
`
`IX. PERSON OF ORDINARY SKILL IN THE ART (POSA) ..........................13
`
`X.
`
`CLAIM CONSTRUCTION — 37 C.F.R. § 42.104(B)(3) ..........................13
`
`A.
`B.
`
`C.
`
`Rate of Change ....................................................................................13
`“Setpoint” or “SP” ...............................................................................15
`1.
`“Setpoint” or “SP” is a torque-based value ............................15
`2.
`Either as construed or applied “Setpoint” or “SP” does
`not have to be variable ..............................................................17
`“Road Load,” “RL” .............................................................................18
`
`XI. UNPATENTABILITY GROUNDS ..............................................................19
`
`A. Ground 1: Claims 1, 2, 5, 6, 8–12, 15, 16, 18-22, 25, 26, 28 and
`29 are obvious over Severinsky ‘970 and Anderson ...........................20
`1.
`Independent Claim 1 .................................................................20
`
`i
`
`

`

`B.
`
`Independent Claim 11 ...............................................................27
`2.
`Dependent Claims 2, 5-6 and 8-10 ...........................................37
`3.
`Dependent Claims 12, 15–16 and 18–20 ..................................40
`4.
`Dependent Claims 22, 25, 26, 28 and 29 ..................................42
`5.
`Rationale to Combine ...............................................................44
`6.
`Ground 2: Claims 3, 13 and 23 are obvious over Severinsky
`‘970, Anderson and Yamaguchi ..........................................................45
`Ground 3: Claims 4, 14 and 24 are obvious over Severinsky
`‘970, Anderson, Yamaguchi and Takaoka ..........................................48
`D. Ground 4: Claims 30 and 34 are obvious over Severinsky ‘970
`and Takaoka ........................................................................................50
`1.
`Independent Claim 30 ...............................................................50
`2.
`Dependent Claim 34 .................................................................56
`
`C.
`
`XII. OBJECTIVE INDICIA OF NONOBVIOUSNESS ......................................59
`
`XIII. CONCLUSION ..............................................................................................60
`
`CERTIFICATE OF SERVICE ................................................................................61
`
`
`
`
`
`
`
`ii
`
`

`

`EXHIBIT LIST
`
`
`Exhibit
`No.
`1101
`1102
`1103
`1104
`1105
`
`1106
`1107
`
`Description
`U.S. Patent No. 8,214,097
`Declaration of Dr. Jeffrey L. Stein
`File History of U.S. Patent No. 8,214,097
`U.S. Patent No. 5,343,970
`Catherine Anderson & Erin Pettit, The Effects
`of APU Characteristics on the Design of Hybrid
`Control Strategies for Hybrid Electric Vehicles,
`SAE Technical Paper 950493 (1995)
`U.S. Patent No. 5,865,263
`Toshifumi Takaoka et al., A High-Expansion
`Ratio Gasoline Engine for the Toyota Hybrid
`System, Toyota Technical Review Vol. 47, No.
`2 (April 1998)U.S. Patent No. 4,707,984
`U.S. Patent No. 4,335,429
`
`John B. Heywood, Internal Combustion Engine
`Fundamentals (McGraw-Hill 1988)
`Society of Automotive Engineers Special
`Publication, Technology for Electric and
`Hybrid Vehicles, SAE SP-1331 (February 1998)
`U.S. Patent No. 913,846
`1111
`1112 Michael Duoba, Ctr. for Transp. Research,
`Argonne Nat’l Lab., Challenges for the Vehicle
`Tester in Characterizing Hybrid Electric
`Vehicles, 7th CRC on Road Vehicle Emissions
`Workshop (April 1997)
`Kozo Yamaguchi et al., Development of a New
`Hybrid System — Dual System, SAE Technical
`Paper 960231 (February 1996)
`U.S. Patent No. 3,888,325
`
`U.S. Application No. 11/229,762
`L. E. Unnewehr et al., Hybrid Vehicle for Fuel
`Economy, SAE Technical Paper 760121 (1976)
`
`1108
`
`1109
`
`1110
`
`1113
`
`1114
`1115
`1116
`
`Identifier
`‘097 Patent
`Stein Decl.
`‘097 File History
`Severinsky ‘970
`Anderson
`
`Yamaguchi
`Takaoka
`
`Kawakatsu
`
`Heywood
`
`SAE SP-1331
`
`Pieper
`Duoba
`
`Yamaguchi Paper
`
`Reinbeck
`‘762 Application
`Unnewehr
`
`iii
`
`

`

`Exhibit
`No.
`1117
`
`1118
`
`1119
`
`1120
`
`1121
`
`1122
`
`1123
`1124
`
`1125
`1126
`
`Description
`Hawley, G.G., The Condensed Chemical
`Dictionary, Van Nostrand Reinhold Co., 9th ed.
`(1977)
`Brown, T.L. et al., Chemistry, The Central
`Science, Third Edition (1985)
`Grunde T. Engh & Stephen Wallman,
`Development of the Volvo Lambda-Sond
`System, SAE Technical Paper 770295 (1977)
`Claim Construction Order (Paice, LLC v.
`Toyota, Case No. 2:07-cv-180)
`A. G. Stefanopoulou et al., Engine Air-Fuel
`Ratio and Torque Control using Secondary
`Throttles, Proceedings of the 33rd IEEE
`Conference on Decision and Control (December
`1994)
`General Electric Company, Corp. Research &
`Dev., Near-Term Hybrid Vehicle Program,
`Final Report - Phase 1 (October 1979)
`U.S. Application No. 13/065,704
`Paice, LLC v. Hyundai Claim Construction
`Order (Case No. WDQ-12-0499)
`U.S. Patent No. 7,104,347
`File History for U.S. Patent No. 7,104,347
`
`Identifier
`The Condensed
`Chemical Dictionary
`
`Brown
`
`Engh
`
`Toyota Litigation
`
`Stefanopoulou
`
`GE Final Report
`
`‘704 Application
`Hyundai Litigation
`
`‘347 Patent
`‘347 File History
`
`iv
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`FORD MOTOR COMPANY (“Petitioner” or “Ford”) petitions for inter
`
`partes review, seeking cancellation of claims 1–6, 8–16, 18–26, 28–30 and 34
`
`(collectively, the “Challenged Claims”) of U.S. Patent No. 8,214,097 to Severinsky
`
`et al. (“the ‘097 Patent,” Ex. 1101). Through this Petition, and the Declaration of
`
`Dr. Jeffrey L. Stein (“Stein Decl.,” Ex. 1102), Petitioner demonstrates that there is
`
`a reasonable likelihood that the Challenged Claims are unpatentable.
`
`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 is the real party-in-interest.
`
`B. Related Matters — 37 C.F.R. § 42.8(b)(2)
`
`Petitioner identifies the following judicial matters:
`
`1) Paice, LLC et al v. Ford Motor Company, Case Number 1-14-cv-00492
`
`filed February 19, 2014 in the District of Maryland, Baltimore Division. The ‘097
`
`Patent is being asserted in this proceeding, along with four other patents within the
`
`same patent family as the ‘097 Patent — namely, U.S. Patent Nos. 7,104,347,
`
`7,455,134, 7,237,634 and 7,520,353.
`
`2) Paice LLC et al. v. Hyundai Motor America et al., Case Number
`
`1:2012cv00499 filed on February 16, 2012 in the District of Maryland, Baltimore
`
`Division. The ‘097 Patent was added to the proceeding on December 17, 2013.
`
`1
`
`

`

`
`
`3) IPR petitions were filed April 4, 2014 and June 5, 2014, directed to
`
`patents that are included in the above litigation proceeding and part of the same
`
`family of patents. On April 4, 2014, IPR2014-00568, IPR2014-00570, IPR2014-
`
`00571, and IPR2014-00579 were filed. On June 5, 2014, IPR2014-00852,
`
`IPR2014-00875, IPR2014-00884 and IPR2014-00904 were filed. Also, IPR2014-
`
`01416 is being concurrently filed on a patent that is part of the ‘097 Patent Family.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Ford appoints Sangeeta G. Shah (Reg. No. 38,614) of Brooks Kushman P.C.
`
`as lead counsel, and appoints Frank A. Angileri (Reg. No. 36,733), Michael D.
`
`Cushion (Reg. No. 55,094) and Andrew B. Turner (Reg. No. 63,121) 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, 22nd Floor, Southfield,
`
`Michigan 48075 and Dentons US LLP, 233 South Wacker Drive, Suite 7800,
`
`Chicago,
`
`IL 60606-6306. Petitioner consents
`
`to service by email at
`
`FPGP0110IPR2@brookskushman.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com and iptdocketchi@dentons.com.
`
`2
`
`

`

`
`
`III. GROUNDS FOR STANDING AND PROCEDURAL
`STATEMENT UNDER 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ‘097 Patent is available for inter partes review
`
`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the claims of the ‘097 Patent on the grounds identified in this Petition.
`
`The “standing” argument raised in Patent Owner’s Preliminary Response in
`
`IPR2014-00571 relates to a disputed contractual matter that is outside the purview
`
`of 35 U.S.C. § 315.
`
`The undersigned authorizes the U.S. Patent and Trademark Office (“PTO”)
`
`to charge Petitioner’s Deposit Account No. 06-1510 for the Petition fees and any
`
`additional fees or applicable overpayment credits.
`
`IV. OVERVIEW OF CHALLENGE UNDER 37 C.F.R. §42.104(b)(2)
`
`Inter partes review of the Challenged Claims of the ‘097 Patent is requested
`
`on the grounds noted in the table on page 4, based on the identified prior art.
`
`A.
`
`Prior Art Relied Upon
`
`1.
`
`U.S. Patent No. 5,343,970 to Severinsky (“Severinsky ‘970,” Ex.
`
`1104), which issued on September 6, 1994, is prior art under 35 U.S.C. § 102(b).
`
`Although Severinsky ‘970 and the ‘097 Patent share a common inventor,
`
`Severinsky ‘970 is not part of the ‘097 Patent Family.
`
`2.
`
`Catherine Anderson and Erin Pettit, The Effects of APU
`
`Characteristics on the Design of Hybrid Control Strategies for Hybrid Electric
`
`3
`
`

`

`
`
`Vehicles, SAE 950493 (February 1995) (“Anderson,” Ex. 1105), which was
`
`published in February 1995, is prior art under 35 U.S.C. § 102(b).
`
`3.
`
`U.S. Patent No. 5,865,263 to Yamaguchi (“Yamaguchi,” Ex. 1106),
`
`which was filed in the U.S. on February 23, 1996 and issued on February 2, 1999,
`
`is prior art under 35 U.S.C. §102(e).
`
`4.
`
`Toshifumi Takaoka et al., A High-Expansion Ratio Gasoline Engine
`
`for the Toyota Hybrid System, Toyota Technical Review Vol. 47, No. 2 (April
`
`1998) (“Takaoka,” Ex. 1107), which was published in April 1998, is prior art under
`
`35 U.S.C. § 102(a).
`
`B. Grounds of Challenge — 37 C.F.R. § 42.104(b)(2)
`
`Ground Basis
`
`References
`
`Claims Challenged
`
`1
`
`§ 103 Severinsky ‘970 and Anderson
`
`1-2, 5-6, 8–12, 15-16, 18–22,
`
`25-26 and 28-29
`
`2
`
`§ 103 Severinsky ‘970, Anderson and
`
`3, 13, 23
`
`Yamaguchi
`
`3
`
`§ 103 Severinsky ‘970, Anderson,
`
`4, 14, 24
`
`Yamaguchi and Takaoka
`
`4
`
`§ 103 Severinsky ‘970 and Takaoka
`
`30, 34
`
`V. OVERVIEW OF THE ‘097 PATENT FAMILY
`
`4
`
`

`

`
`
`A.
`
`‘097 Patent Family
`
`As shown graphically below, the ‘097 Patent (highlighted in blue) is a
`
`divisional application, filed March 29, 2011, in an extensive chain of filings that
`
`spans over fifteen years, and claims priority to two separate provisional
`
`applications — U.S. Provisional Application No. 60/100,095 filed September 14,
`
`1998 and U.S. Provisional Application No. 60/122,296 filed March 1, 1999.
`
`
`
`Notably, while the claim of priority is not relevant to this challenge, it is a
`
`basis of one of the unpatentability grounds in the related proceeding involving the
`
`‘097 Patent, IPR2014-00570. The diagram above illustrates the ‘097 Patent and its
`
`ancestors. Other related patents and pending applications are not shown.
`
`B.
`
`Background and Purported Invention
`
`The ‘097 Patent is broadly directed to a “hybrid vehicle” design that
`
`includes an internal combustion engine (“engine”), electric motor, and battery, all
`
`controlled by a controller. (‘097 Patent, Ex. 1101, Abstract.) The controller
`
`controls the operational mode of the hybrid vehicle so that the engine operates only
`
`5
`
`

`

`
`
`under conditions of high efficiency in order to improve fuel economy. (‘097
`
`Patent, Ex. 1101, 13:38-55; 17:18–39.) The ‘097 Patent admits that “the prior art,
`
`including the [Severinsky] ‘970 Patent, clearly discloses the desirability of
`
`operating an internal combustion engine in its most efficient operating range.”
`
`(‘097 Patent, Ex. 1101, 11:13–16.) In the background section discussing the prior
`
`art, the ‘097 Patent further admits that great attention has been given to reducing
`
`fuel consumption and reducing pollutants emitted by vehicles. (‘097 Patent, Ex.
`
`1101, 1:36–40.)
`
`As set forth in the Challenged Claims, the purported invention of the ‘097
`
`Patent is merely directed toward a well-known hybrid vehicle configuration with
`
`engine control strategies to minimize the formation of undesired emissions by
`
`maintaining a “substantially stoichiometric ratio.” (‘097 Patent, Ex. 1101, claims
`
`1, 11, 21 and 30.) In certain Challenged Claims, the purported invention is further
`
`directed to known HEV control strategies that operate the engine and motors “in
`
`accordance with the vehicle’s instantaneous torque demands so that the engine is
`
`run only under conditions of high efficiency.” (‘097 Patent, Ex. 1101, Abstract,
`
`See e.g., claims 1 and 11.)
`
`VI. TECHNICAL FUNDAMENTALS OF THE CLAIMED
`SUBJECT MATTER
`
`The Challenged Claims of the ‘097 Patent are directed to the interplay
`
`between engine control strategies, the combustion process and emissions.
`
`6
`
`

`

`
`
`Fundamentally, an internal combustion engine produces mechanical power by
`
`releasing energy in the fuel through a combustion reaction with air. (Stein Decl.
`
`Ex. 1102, ¶44.) To regulate the mechanical power (i.e. output torque times engine
`
`speed) produced by the engine during combustion, the amount of air and fuel
`
`provided to the engine must be controlled. Id. at 45.
`
`To minimize the formation of undesired emissions and improve fuel
`
`economy, engine control strategies also regulate the air/fuel mixture to strive
`
`towards a “stoichiometric” ratio — the ratio at which complete combustion is
`
`achieved. Id. at 47,67-79. Such undesired emissions are further reduced in a
`
`secondary reaction using a catalyst. However, controlling emissions can be more
`
`difficult during rapid changes in output engine torque (i.e., transient conditions),
`
`because of the time delay in measuring and modifying the air-fuel mixture. Id. at
`
`48. In contrast to an engine, an electric motor does not create emissions when
`
`converting electric energy to mechanical energy. Thus, rapid changes in output
`
`motor torque — to meet driver demand — are possible without emissions
`
`concerns. Id. at 49.
`
`HEVs combine and utilize the features of both internal combustion engines
`
`and electric motors to satisfy the driver demanded torque requirements to propel
`
`the vehicle in a way that reduces undesired emissions and improves fuel economy.
`
`“Application of the electric motor during rapid changes in vehicle torque demand
`
`7
`
`

`

`
`
`resolves the problem of additional emissions that would otherwise be created by
`
`the engine alone. This was well known prior to the earliest effective filing date of
`
`the challenged claims of the ‘097 Patent.” Id. at 50.
`
`VII. PROSECUTION HISTORY
`
`As part of the amendments that led to issued claim 1, the prosecution history
`
`explains
`
`the claimed
`
`relationship between controlling combustion and
`
`stoichiometry on emissions formation:
`
`More specifically, the claims of this application are largely directed to
`
`control of the combustion of fuel in an ICE of a hybrid vehicle so that
`
`the fuel is combusted efficiently. Ideally, combustion would take
`
`place at precisely the stoichiometric ratio, whereby the fuel:air
`
`mixture that is provided to the ICE is neither "rich" (containing more
`
`fuel than can be combusted in the amount of air provided), nor "lean"
`
`(containing more air than is needed for the complete combustion of
`
`the amount of fuel provided). Rich mixtures lead to unburned fuel in
`
`the exhaust, which is wasteful of fuel and can contribute to
`
`undesirable emissions, while over-lean mixtures can lead to increased
`
`combustion
`
`temperatures and formation of different undesired
`
`emissions.
`
`(‘097 File History, Ex. 1103 at 231, emphasis added.)
`
`
`
`The remarks further state that it is difficult to maintain a precisely
`
`stoichiometric ratio due to the “delay in the response of the ICE controller to
`
`transients in the amount of torque required.” Id. at 232.
`
`8
`
`

`

`
`
`However, by limiting the rate of increase of engine output torque, a
`
`substantially stoichiometric ratio can be maintained to reduce emissions:
`
`As claimed herein, the controller imposes a further, noninherent
`
`limitation on the rate of increase of torque output by the engine. This
`
`is done so that the "super-rich" fuel:air mixtures mentioned above, and
`
`indeed substantially all rich mixtures, can be avoided in favor of
`
`substantially stoichiometric combustion at all times, yielding further
`
`improvement in fuel usage efficiency and reduction of undesired
`
`exhaust emissions.
`
`Id. at 235, emphasis added.
`
`The limitation is defined in relation to an “inherent maximum”:
`
` It will be appreciated that what is being claimed here is that the
`
`controller limits the rate of increase of torque output by the engine.
`
`That is, all engines have an inherent limitation on the maximum rate
`
`of increase at which they can supply torque responsive to increase in
`
`fuel supplied.
`
`Id. at 234, emphasis added.
`
`More specifically, the advantage of limiting the “rate of increase of output
`
`torque of the engine” to be less than the engine’s “inherent maximum rate of
`
`increase in output torque” is “that the engine can be controlled to combust fuel
`
`substantially at the stoichiometric fuel:air ratio, as claimed. Thus, combustion can
`
`be maintained substantially stoichiometric regardless of rapid variation in the
`
`operator’s demand for torque to be supplied to the vehicle wheels.” Id. at 242.
`
`9
`
`

`

`
`
`VIII. STATE OF THE ART RELATIVE TO THE ‘097 PATENT
`
`Since their introduction in the early 20th century, HEVs used the power
`
`capabilities of electric motors and internal combustion engines to satisfy torque
`
`requirements in a fuel efficient manner. (Stein Decl., Ex. 1102, ¶¶50-53.)
`
`Advances in components and electronics resulted in well-established HEV
`
`architectures and engine controls. Id. at 53-64. From at least the 1970s, a variety
`
`of series/parallel hybrid vehicle systems were designed — such as the one
`
`described in the Challenged Claims. Id. at 54-59.
`
`During this same period, environmental regulations resulted in the
`
`development of catalysts to increase the rate of fuel combustion to reduce the
`
`formation of undesired emissions. Id. at 65-66. Since at least 1988, “three-way”
`
`catalysts have been widely used to control hydrocarbon (HC), carbon monoxide
`
`(CO) and nitrogen oxide (NOx) emissions. Id. at 75. To efficiently convert all
`
`three gases, the engine must operate at a substantially stoichiometric air/fuel ratio.
`
`Id. at 75. A stoichiometric air/fuel ratio is the ideal quantity of air (oxygen) and
`
`fuel reactants required to achieve a complete combustion reaction —– wherein all
`
`of the hydrocarbon fuel reacts with oxygen to form carbon dioxide and water. Id.
`
`at 67-69. Outside of the stoichiometric air/fuel ratio, HC, CO and NOx conversion
`
`efficiencies rapidly drop. Id. at 75. Because fuel is completely burned at the
`
`stoichiometric ratio, fuel economy is also maximized. Id. at 47, 67, 69.
`
`10
`
`

`

`
`
`Since 1977, a closed-loop feedback system has been used with one or more
`
`oxygen (lambda) sensors to monitor the oxygen content in the exhaust stream from
`
`the engine to help maintain the stoichiometric ratio; this monitored oxygen content
`
`is used to determine whether the air/fuel ratio is “rich” (i.e., excess fuel) or “lean”
`
`(i.e., excess air). Id. at 77-79. For conventional vehicles, engines typically run
`
`rich (excess fuel) during engine starting conditions; and during such operation,
`
`vehicles emit more HC and CO pollutants than during normal operation. Id. at 69-
`
`70, 80.
`
`As of the earliest claimed priority date of the ‘097 Patent, limiting the rate of
`
`change of engine load in a HEV, such that the combustion of fuel within the engine
`
`occurs at a substantially stoichiometric ratio, was known. The Patentee admitted
`
`as much in their characterization of Takaoka (Ex. 1107) during the prosecution of
`
`the ‘347 Patent:
`
`Takaoka et al, in ‘A High-Expansion-Ratio Gasoline Engine for the
`
`Toyota Hybrid System’, discuss the details of an ICE designed for use
`
`in a hybrid vehicle. This paper states that ‘By using the supplementary
`
`drive power of the electric motor, the system eliminates the light-load
`
`range, where concentrations of hydrocarbons in the emissions are high
`
`and the exhaust temperature is low.’ (p. 57; a similar statement is
`
`made on p. 59) and ‘By allocating a portion of the load to the electric
`
`motor, the system is able to reduce engine load fluctuation under
`
`conditions such as rapid acceleration. This makes it possible to reduce
`
`11
`
`

`

`
`
`quick transients in engine load so that the air-fuel ratio can be
`
`stabilized easily.’ (p. 58). The former statement simply emphasizes
`
`the fact that engines are operated more efficiently at higher loads, and
`
`the latter that stoichiometric combustion can be more nearly
`
`obtained if the engine’s speed and/or load is varied as slowly as
`
`possible.
`
`(‘347 File History, Ex. 1126 at 23, emphasis added)
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`Further, the Patentee admitted in the ‘097 Patent, that the claimed HEV
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`mode selection strategy was disclosed in the prior art Severinsky ‘970 reference:
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`As shown in the [Severinsky] ‘970 patent with reference to FIGS. 1
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`and 2 thereof, and again above, typical modern automobiles operate at
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`very low efficiency, due principally to the fact that internal
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`combustion engines are very inefficient except when operating at near
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`peak torque output; this condition is only rarely met. (The same is
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`true, to greater or lesser degree, of other road vehicles powered by
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`internal combustion engines.) According to an important aspect of
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`the invention of the [Severinsky] ‘970 patent, substantially
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`improved efficiency is afforded by operating the internal combustion
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`engine only at relatively high torque output levels, typically at least
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`35% and preferably at least 50% of peak torque. When the vehicle
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`operating conditions require torque of this approximate magnitude,
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`the engine is used to propel the vehicle; when less torque is required,
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`an electric motor powered by electrical energy stored in a substantial
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`battery bank drives the vehicle; when more power is required than
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`provided by either the engine or the motor, both are operated
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`simultaneously. The same advantages are provided by the system
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`of
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`the present
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`invention, with
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`further
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`improvements and
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`enhancements described in detail below.
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`(‘097 patent, Ex. 1101, 24:40-60, emphasis added.)
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`IX. PERSON OF ORDINARY SKILL IN THE ART (POSA)
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`The level of ordinary skill in the art is evidenced by the references. See In re
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`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A POSA would have had either:
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`(1) a graduate degree in mechanical, electrical or automotive engineering with at
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`least some experience in the design and control of combustion engines, electric or
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`hybrid electric vehicle propulsion systems, or design and control of automotive
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`transmissions, or (2) a bachelor's degree in mechanical, electrical or automotive
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`engineering and at least five years of experience in the design and control of
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`combustion engines, electric vehicle propulsion systems, or automotive
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`transmissions. (Stein Decl., Ex. 1102, ¶¶42-43.)
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`X. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104(B)(3)
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`Per the claim construction standard for an inter partes review, Petitioner
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`bases this petition upon the broadest reasonable interpretation of the claim
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`language. Solely for purposes of the proceeding, under the broadest reasonable
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`interpretation standard, Petitioner proposes that all claims should be entitled to
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`their plain and ordinary meaning, with the exception of the limitations below.
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`A. Rate of Change
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`The term “rate of change” is included in independent claims 21 and 30. By
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`way of example, claim 30 states:
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`wherein said controller controls said engine such that a rate of
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`increase of output torque of said engine is limited to less than said
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`inherent maximum rate of increase of output torque, and wherein the
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`controller is operable to limit the rate of change of torque produced
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`by the engine. (‘097 Patent, Ex. 1101, claim 30, emphasis added.)
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`For the reasons stated below, during prosecution, all of the independent
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`claims, including claims 40 and 51 (which issued as claims 21 and 30 respectively)
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`were amended to change the phrase the “rate of change” of engine output torque to
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`the “rate of increase” of engine output torque:
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`Finally, note that the claims have been amended to refer to limitation
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`of the rate of increase of torque output, rather than the rate of change
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`thereof, as decreases in torque in a conventional engine do not involve
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`rich mixtures, such that the improvement claimed is primarily relevant
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`to increases in the engine’s output torque.
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`(‘097 File History, Ex. 1103 at 234, emphasis added.)
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`This change was made throughout the claims, however, claims 21 and 30 as
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`issued mistakenly failed to amend one “rate of change” term—leaving that term
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`with no antecedent basis. (‘097 File History, Ex. 1103 at 227, 229.) Accordingly,
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`to give meaning to the claim language and the prosecution history, the term “rate
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`of change” in claims 21 and 30 should be construed to mean “rate of increase”.
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`B.
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` “Setpoint” or “SP”
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`Both the Eastern District of Texas and District Court of Maryland have
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`construed the term “setpoint (SP)” as being “a definite, but potentially variable
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`value at which a transition between operating modes may occur.” (Toyota
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`Litigation, Ex. 1120 at 13; Hyundai Litigation, Ex. 1124 at 23.) Patentee has also
`
`argued for this construction in two related IPR’s, IPR2014-00571 and IPR2014-
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`00579. However, within the context of the Challenged Claims and prosecution
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`history, the broadest reasonable construction of the terms “setpoint” or “SP” is “a
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`predetermined torque value.”
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`1.
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`“Setpoint” or “SP” is a torque-based value
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`For each of the Challenged Claims, the term “setpoint” or “SP” is always
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`defined in relation to a torque value. For example, independent claims 1 and 11
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`provide that “the torque required to operate the hybrid vehicle is between a
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`setpoint SP and a maximum torque output (MTO).” (‘097 Patent, Ex. 1101, claims
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`1 and 11, emphasis added.) Independent claim 21 compares the “setpoint” to a
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`“road load” torque value. Further, all of the Challenged Claims require that
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`“setpoint” is “substantially less than the [Maximum Torque Output] MTO” of the
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`engine and that “the engine is operable to efficiently produce torque above SP.”
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`(‘097 Patent, Ex. 1101, claims 1, 11 and 21, emphasis added.)
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`While the prosecution history of the ‘097 Patent does not shed any light on
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`the issue, the prosecution history of the ‘347 Patent—an ancestor of the ‘097
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`Patent, also makes it clear that “setpoint” is a torque value. As shown in the
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`graphic on page 5 above, the ‘097 Patent is a 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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`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).
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`During prosecution of the ‘347 Patent, the Patentee amended then pending
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`claim 82 to include the following language 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
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`(MTO) of said engine.
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`(‘347 File History, Ex. 1126 at 37-38.)
`
`
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`This language was added during prosecution of the ‘347 Patent in response
`
`to a rejection based on two prior art references. To overcome these references, the
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`Patentee argued that the engine was operated only when loaded “in excess of SP
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`[setpoint], which is now defined to be ‘substantially less than the maximum
`
`torque output (MTO) of said engine.’” (‘347 File History, Ex. 1126 at 49,
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`emphasis added.)
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`Additionally, the specification makes it clear that while multiple “system
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`variables” can be compared against multiple “setpoints,” for any given comparison
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`(i.e. “road load”) this is accomplished using comparable values (i.e. torque):
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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
`
`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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`(‘097 Patent, Ex. 1101 at 39:27-37, emphasis added.)
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`Thus, per the express language of the Challenged Claims and the
`
`prosecution history, “setpoint” is a predetermined torque value.
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`2.
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`Either as construed or applied “Setpoint” or “SP”
`does not have to be variable
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`In IPR2014-00571, while Patentee argues that “setpoint” is a definite, but
`
`potentially variable value,” Patentee applies its proposed construction to require
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`that an invalidating reference have the ability to vary setpoint. A construction that
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`requires “setpoint” to be a “variable value” impermissibly narrows the term to a
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`non-limiting embodiment. Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784,
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`792 (Fed. Cir. 2010). The ‘097 specification states that a variable “setpoint” is one
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`potential embodiment: “the value of a setpoint (for example) may vary somewhat
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`in response to recent history.” (‘097 Patent, Ex. 1101 at 39:44.) Further,