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. 8,214,097 to Severinsky et al.
`
`IPR Case No.: IPR2014-01415
`
`______________
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE TO SECOND PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,214,097
`
`
`
`
`

`
`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
`
`
`
`Table of Contents
`
`Table of Authorities ................................................................................................. iii
`
`Updated List of Exhibits .......................................................................................... iv
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Claim construction ........................................................................................... 2
`
`III. Ground 1: Claims 1-2, 5-6, 8–12, 15-16, 18–22, 25-26 and 28-29
`would have been obvious over Severinsky ’970 and Anderson ...................... 2
`
`B.
`
`C.
`
`D.
`
`E.
`F.
`
`G.
`
`A. Anderson’s disclosure of slow engine transients satisfies
`limitations [1.3], [11.3] and [21.5] ........................................................ 2
`Paice argues with little support - that the claims require using
`the electric motor to provide additional torque when the rate of
`increase of engine output torque is limited; regardless Anderson
`discloses this feature .............................................................................. 4
`Paice’s arguments regarding limitations [1.4], [11.4], [21.7]
`depend on improperly narrowing Anderson ......................................... 5
`Severinsky ’970’s HEV mode selection strategy satisfies
`limitations [1.5], [1.7], [11.5], [11.7], [21.2], [21.3] ............................. 6
`1.
`Severinsky ’970 discloses operating the engine based on
`RL/torque required ...................................................................... 6
`Severinsky ’970 discloses torque-based mode selection ............ 7
`2.
`Paice cannot avoid the admissions in the ’097 Patent .......................... 8
`Rationale to combine - the combination of Anderson’s transient
`control algorithm with Severinsky’s architecture and HEV
`mode selection control algorithms would have required only
`slight modifications ............................................................................... 9
`Contrary to Paice’s arguments challenging the rationale to
`combine, Anderson must be read as a whole ......................................11
`1.
`Paice’s attempt to limit Anderson to series hybrids is
`flawed ........................................................................................11
`Paice’s “follower mode” teaching away argument
`improperly narrows Severinsky ’970 and is based on a
`single sentence, taken out of context ........................................12
`Paice’s arguments based on Anderson’s braking related
`disclosures are not relevant .......................................................13
`Severinsky ’970’s disclosure of a lean-burn engine
`control strategy is a way, but not a “teaching away” ................14
`
`2.
`
`3.
`
`4.
`
`i
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`

`
`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
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`IV. Ground 2: Claims 3, 13 and 23 would have been obvious over
`Severinsky ’970 in view of Anderson and Yamaguchi .................................15
`
`V. Ground 3: Claims 4, 14 and 24 would have been obvious over
`Severinsky ’970 in view of Anderson, Yamaguchi and Takaoka .................16
`
`Takaoka’s “entire range” includes starting conditions .......................16
`A.
`Paice’s argument reads “cold-start” into the claims ...........................17
`B.
`C. Modifying Severinsky ’970 control strategies to include
`Takaoka’s engine control strategies of operating near
`stoichiometry during starting conditions would have been
`obvious and well within the capability of a skilled artisan .................18
`
`VI. Ground 4: Claims 30 and 34 would have been obvious over
`Severinsky ’970 in view of Takaoka .............................................................19
`
`A.
`
`B.
`
`C.
`
`D.
`E.
`F.
`
`G.
`
`Takaoka discloses claim limitation [30.7] – not the design of an
`engine ..................................................................................................19
`Paice’s current analysis of Takaoka conflicts with its prior
`analysis of Takaoka .............................................................................20
`Takaoka’s disclosure of reducing engine load transients is
`simply another way of saying that the rate of change of engine
`torque is controlled to maintain combustion at a stoichiometric
`ratio ......................................................................................................21
`Takaoka discloses limitation [30.8] ....................................................21
`Severinsky ’970 discloses claim 34 ....................................................22
`Rationale to combine – Modifying Severinsky ’970’s control
`strategies to include Takaoka’s engine control strategies to
`maximize fuel economy and reduce emissions would have been
`obvious and well within the capability of a skilled artisan. ................23
`Severinsky ’970 does not teach away .................................................24
`
`VII. Conclusion .....................................................................................................25
`
`Certificate of Service ...............................................................................................27
`
`
`
`
`
`ii
`
`

`
`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
`
`
`
`Table of Authorities
`
`Cases
`
`Boston Scientific Scimed, Inc. v. Cordis Corp.,
`
`554 F.3d 982 (Fed. Cir. 2009) .......................................................................12
`
`Clearwater Systems Corp. v. Evapco, Inc.,
`
`394 Fed. Appx. 699 (Fed. Cir. 2010) .............................................................. 9
`
`Clearwater Systems Corp. v. Evapco, Inc.,
`
`596 F.Supp.2d 291 (D. Conn. 2009) ............................................................... 9
`
`Constant v. Advanced Micro–Devices, Inc.,
`
`848 F.2d 1560 (Fed. Cir. 1988) ....................................................................... 8
`
`Garmin v. Cuozzo,
`
`IPR2012-00001, Paper 59 (PTAB Nov. 13, 2013) ................................. 12, 14
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Insurance Co.,
`CBM 2012-00002, Paper 66 (PTAB Jan. 23, 2014) .....................................11
`
`
`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
`
`491 F.3d 1342 (Fed. Cir. 2007) ....................................................................... 8
`
`
`
`
`
`iii
`
`

`
`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
`
`
`
`Updated List of Exhibits
`
`Exhibit No.
`
`Description
`
`1101
`1102
`1103
`1104
`1105
`
`1106
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`1112
`
`1113
`
`1114
`1115
`
`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
`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
`
`
`
`iv
`
`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
`
`

`
`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
`
`Exhibit No.
`
`Description
`
`1116
`
`1117
`
`1118
`
`1119
`
`1120
`
`1121
`
`1122
`
`1123
`1124
`
`1125
`1126
`1127
`
`1128
`
`1129
`1130
`
`1131
`
`L. E. Unnewehr et al., Hybrid Vehicle for
`Fuel Economy, SAE Technical Paper
`760121 (1976)
`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
`Declaration of Walt Johnson, Librarian at
`Patent and Trademark Resource Center
`(PTRC), Minneapolis Central Library
`Email correspondence between Petitioner
`and Board
`Reply Decl. of Dr. Jeffrey L. Stein
`Mr. Hannemann Deposition Transcript
`(IPR2014-01415, September 4, 2015)
`Mr. Hannemann Deposition Transcript
`(IPR2014-00570, April 8, 2015)
`
`v
`
`Identifier
`
`Unnewehr
`
`The Condensed
`Chemical Dictionary
`
`Brown
`
`Engh
`
`Toyota Litigation
`
`Stefanopoulou
`
`GE Final Report
`
`’704 Application
`Hyundai Litigation
`
`’347 Patent
`’347 File History
`Johnson Declaration
`
`Email
`
`Reply Decl.
`Hn Tr.
`
`Hn Tr. 2
`
`

`
`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
`
`Exhibit No.
`
`Description
`
`Identifier
`
`1132
`
`1133
`1134
`
`Mr. Hannemann Deposition Transcript
`(IPR2014 – 00571, April 7, 2015)
`Oral Hearing Transcript (July 1, 2015)
`Bosch Automotive Handbook (Oct. 1996)
`
`
`
`
`Hn Tr. 3
`
`OH Tr.
`Bosch Handbook
`
`
`
`vi
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`

`
`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
`
`I.
`
`Introduction
`
`The Board instituted an inter partes review of four grounds challenging
`
`claims 1–6, 8–16, 18–26, 28–301 and 34 of the ’097 Patent. (“Decision,” Paper 10
`
`at 2, 4-5.) Patent Owner (“Paice”) filed a response to the Petition arguing only
`
`claims 1, 3, 4, 11, 13, 14, 21, 23, 24, 30 and 34 and the rationale to combine for
`
`Grounds 1-4. (“Patent Owner Response,” “POR,” Paper 21.) Any arguments for
`
`patentability not raised and fully briefed in the POR are “deemed waived.”
`
`(Scheduling Order, Paper 11 at 3-4.)
`
`Paice attempts to distinguish the Challenged Claims over the prior art by: 1)
`
`construing claims to add new limitations and then arguing that the prior art does
`
`not meet the limitations; 2) arguing that Anderson & Takaoka teach only engines
`
`having slow inherent capabilities and not slow transient control strategies; 3)
`
`arguing that Severinsky ’970 teaches only speed-based HEV mode selection (not
`
`torque-based); 4) ignoring case law that its prior admissions bind; and 5)
`
`improperly limiting the scope of the references based on passages taken out of
`
`context.
`
`Scattered through these arguments are mischaracterized statements from Dr.
`
`Stein. (Reply Decl., Ex. 1129, ¶¶5-8.)
`
`
`1 Claim 30 was previously challenged in IPR 2014-00570 and a final decision in
`
`the ’570 IPR is due by September 30, 2015.
`
`1
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`

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`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
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`II. Claim construction
`
`Ford argued that “rate of change” be construed as the “rate of increase”;
`
`“setpoint” and “SP” be construed as “a predetermined torque value”; and “road
`
`load” and “RL” be construed as “the instantaneous torque required for propulsion
`
`of the vehicle, which may be positive or negative.” (Pet. at 13-19.) The Board
`
`declined to construe any terms. (Decision at 5.) Ford maintains its proposed
`
`constructions, but asserts that the challenged claims are unpatentable under
`
`Grounds 1-4 even under a plain and ordinary meaning of the claims.
`
`III. Ground 1: Claims 1-2, 5-6, 8–12, 15-16, 18–22, 25-26 and 28-29
`would have been obvious over Severinsky ’970 and Anderson
`
`A. Anderson’s disclosure of slow engine transients satisfies
`limitations [1.3], [11.3] and [21.5]
`
`In combination with Severinsky ’970, Ford relies on Anderson’s disclosure
`
`of “slow transients” (i.e., slow changes in engine torque) for satisfying limitations
`
`[1.3], [11.3] and [21.5]. Limitation [1.3] is representative and recites “employing
`
`said controller to control the engine such that a rate of increase of output torque of
`
`the engine is limited to less than said inherent maximum rate of increase of output
`
`torque.” (Pet. at 22, 27, 34; Stein Decl., Ex. 1102, ¶¶148-158, 286-296, 458-468;
`
`see also ¶¶81-82.)
`
`Paice argues that “Anderson discloses that the transient capabilities are
`
`limited by the inherent mechanical characteristics of the engine itself” and not a
`
`2
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`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
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`“controller” that limits the rate of increase of engine output torque to “less than the
`
`inherent maximum rate of increase of engine output torque.” (POR at 13.)
`
`Paice’s argument fails to consider Anderson’s teachings and the perspective
`
`of a POSA. Anderson discloses a “hybrid strategy that only allows slow transients”
`
`and states that “[a] hybrid control strategy is an algorithm that determines when
`
`and at what power level to run a hybrid electric vehicle’s auxiliary power unit
`
`(APU) [engine].” (Anderson, Ex. 1105 at 7; at 3, Abstract, emphasis added.)
`
`Paice’s expert admitted that the “hybrid control strategy” described in Anderson’s
`
`abstract likely refers to “an algorithm implemented by the microcontroller using
`
`software.” (Hn Tr. Ex. 1130, at 25:9-26:12; Reply Decl., Ex. 1129, ¶¶26-30.)
`
`When viewed in the context of a POSA, Anderson’s “hybrid strategy that only
`
`allows slow transients” refers to an algorithm implemented by a microcontroller
`
`that actively controls the engine during transient conditions (i.e. limits rate of
`
`increase of engine output torque), not to the engine’s inherent mechanical
`
`characteristics (i.e., its inherent maximum rate of increase). (See Stein Decl., Ex.
`
`1102, ¶154; Reply Decl., Ex. 1129, ¶¶29-33.)
`
`Paice’s argument implies that the actual mass of the moving components of
`
`the engine must be increased to control engine transients, but that is contrary to the
`
`purpose of HEVs. (Reply Decl., Ex. 1129, ¶¶27-28.) A POSA would have
`
`understood that Anderson’s “hybrid strategy” refers to a strategy for actively
`
`3
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`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
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`controlling the engine and the motor during transient conditions, not to a vehicle
`
`having slow engine transient capabilities. (Reply Decl., Ex. 1129, ¶33.)
`
`B.
`
`Paice argues with little support - that the claims require
`using the electric motor to provide additional torque when
`the rate of increase of engine output torque is limited;
`regardless Anderson discloses this feature
`
`Claims 1 and 11 require “operating” the “motor to provide additional torque
`
`. . ; and employing said controller to control the engine such that a rate of increase
`
`of output torque of the engine is limited.” Similarly claim 21 requires “employing
`
`said controller to control the engine such that a rate of increase of output torque of
`
`the engine is limited . . . and . . . supplying additional torque from the at least one
`
`electric motor.” (‘097 Patent, Ex. 1101, claims [1.2-1.3], [11.2-11.3], [21.5-21.6],
`
`Reply Decl., Ex. 1102, ¶10.)
`
`Paice argues the claims require use of the motor at the same time as the rate
`
`of increase of engine output torque is limited. (See Hn Tr., Ex. 1130 at 18:18-20:3.)
`
`Specifically, Paice argues that claims 1, 11 and 21 require “using the electric motor
`
`to provide additional torque when the rate of increase of engine output torque is
`
`limited.” (POR at 44, emphasis added.)
`
` Paice does not offer much explanation for this construction. And Paice’s
`
`expert only identified the word “and” in claims 1 and 11 as providing the link. (See
`
`Hn Tr., Ex. 1130 at 14:20-19:6.) Notably, Paice knew how to claim “when.” For
`
`example, claim limitation [1.2] recites “operating said at least one electric motor
`
`4
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`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
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`to provide additional torque when the amount of torque provided by said engine is
`
`less than the amount of torque required to operate the vehicle.”
`
`Regardless, Anderson satisfies Paice’s “when” construction of claims 1, 11
`
`and 21. Anderson discloses that “[t]ransients present an emissions problem that is
`
`largely related to the speed of the transient” and that “[s]ome of this effect can be
`
`reduced using a hybrid strategy that only allows slow transients, but this places
`
`greater strain on the LLD.” (Anderson, Ex. 1105, p. 7.) A POSA would have
`
`understood Anderson’s disclosure of straining the battery means that while an
`
`HEV can control the engine operation to allow only slow engine transients (i.e.,
`
`limit the rate of change of engine torque), and provide additional torque by
`
`controlling the electric motor to meet the current vehicle torque and power
`
`requirements, this will strain the battery by cycling it more often than it would
`
`otherwise. (Reply Decl., Ex. 1129, ¶16.)
`
`C.
`
`Paice’s arguments regarding limitations [1.4], [11.4], [21.7]
`depend on improperly narrowing Anderson
`
`For limitations [1.4], [11.4] and [21.7], Ford relies on Severinsky ’970
`
`combined with Anderson’s disclosure that “[s]ome of this effect [running rich or
`
`lean during transients] can be reduced using a hybrid strategy that only allows slow
`
`transients.” (Pet. at 23-24; Stein Decl., Ex. 1102, ¶¶159-163, 297-301, 474-478.)
`
`Paice argues that “[n]owhere does Anderson state that a hybrid strategy that
`
`only allows slow transients results in the combustion of fuel within the engine
`
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`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
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`occurring at a substantially stoichiometric ratio.” (POR at 19-20.)
`
`Paice’s argument ignores the perspective of a POSA. As Paice’s expert
`
`acknowledges, the transient emissions problem applied to both conventional and
`
`hybrid vehicles in 1998. (Hn Tr. 2, Ex. 1131 at 59:4-14.) Given the breadth of the
`
`problem, the underlying issues would have been well known to a POSA. When
`
`viewed in the proper context of a POSA, Anderson clearly teaches limitation [1.4],
`
`[11.4], [21.7]. (Stein Decl., Ex. 1102, ¶¶159-163, 297-301, 474-478.)
`
`D.
`
`Severinsky ’970’s HEV mode selection strategy satisfies
`limitations [1.5], [1.7], [11.5], [11.7], [21.2], [21.3]
`
`1.
`
`Severinsky ’970 discloses operating the engine based
`on RL/torque required
`
`Paice argues that “[t]hese claims [i.e., claims 1, 11 and 21] require that the
`
`system start and stop the engine based on road load or torque required to operate
`
`the vehicle, and this fundamental concept is simply not shown in Severinsky
`
`[’970].” (POR at 21, emphasis added.) Paice does not cite any claim language for
`
`its “start and stop” construction.
`
`Assuming claims 1, 11 and 21 are construed to require starting and stopping
`
`the engine, Severinsky ’970 discloses such limitations. Severinsky ’970 discloses
`
`that the engine is run only in the vicinity of its most efficient operational point (i.e.,
`
`between 60-90% of the engine’s MTO), and under other conditions, the engine is
`
`shut off and the electric motor drives the vehicle. (Reply Decl., Ex. 1129, ¶¶21-23,
`
`6
`
`

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`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
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`citing Severinsky ’970, Ex. 1104, 17:44-55; 20:63-67.) Since Severinsky ’970
`
`discloses that the engine is run only between 60-90% of MTO, a POSA would
`
`have understood that the engine is started and operated when the torque required to
`
`operate the vehicle is between a setpoint (60% MTO) and MTO; and that the
`
`engine is shut off (stopped) during other conditions, e.g., when the engine produces
`
`less than the setpoint (60% of MTO). (Reply Decl., Ex. 1129, ¶24.) Thus
`
`Severinsky ’970 teaches claims 1, 11 and 21 even under Paice’s construction.
`
`2.
`
`Severinsky ’970 discloses torque-based mode selection
`
`Paice argues that “Severinsky [’970] unequivocally determines when to
`
`employ the engine based on the speed of the vehicle and not the road load RL.”
`
`(POR at 28, emphasis added.) On the contrary, Severinsky ’970 teaches: (1)
`
`operating the engine when it would be efficient to do so, i.e. at a torque range of
`
`60-90% of MTO; and (2) operating the motor “at other times.” (Severinsky ’970,
`
`Ex. 1104, 7:8-16; 20:63-67; Stein Decl., Ex. 1002, ¶¶168-169.)
`
`The ’097 Patent itself acknowledges these facts. The ’097 Patent admits that
`
`in Severinsky ’970, the vehicle “is operated in different modes depending on the
`
`torque required”; or based on “road load”: “[w]here the road load exceeds the
`
`engine's maximum torque . . . the traction motor (and possibly also the starting
`
`motor) are used to provide additional torque, as in the [Severinsky] ’970 patent
`
`and above.” (’097 Patent, Ex. 1101, 44:2-5, emphasis added.) The ’097 Patent also
`
`7
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`

`
`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
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`admits that “an important aspect of the invention” of Severinsky ’970 is operating
`
`the engine “at relatively high torque levels” and operating the motor “when less
`
`torque is required.” (’097 Patent, Ex. 1101, 24:47-55.) These admissions are
`
`binding on Paice for determinations of both anticipation and obviousness. See, e.g.
`
`PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1362 (Fed. Cir.
`
`2007); Constant v. Advanced Micro–Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir.
`
`1988).
`
`Paice argued at the oral hearing for an IPR concerning the related ’347
`
`Patent, that the PharmaStem cases “stand for [] the proposition that if in my patent
`
`I label a figure as prior art, then I can't come back and contest that it is, in fact,
`
`prior art.” (OH Tr., Ex. 1133 at 51:1-11.) This is incorrect; the admission in
`
`PharmaStem concerned the disclosure of stem cells in cord blood: "PharmaStem's
`
`argument that stem cells had not been proved to exist in cord blood prior to the
`
`experiments described in the patents is contrary to the representation in the
`
`specification that the prior art disclosed stem cells in cord blood.” PharmaStem
`
`491 F.3d 1342, 1362.
`
`E.
`
`Paice cannot avoid the admissions in the ’097 Patent
`
`Paice tries to avoid certain admissions in the ’097 patent by arguing
`
`incorrectly that Ford is relying on them as “prior art.” (POR at 32-36.) Ford relies
`
`on the quoted ’097 patent passages as admissions regarding how a POSA would
`
`8
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`Case No: IPR2014-01415
`Attorney Docket No. FPGP0110IPR2
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`have understood Severinsky ’970, i.e., the understanding Severinsky himself said
`
`one should have.
`
`Paice relies on Clearwater Systems Corp. v. Evapco, Inc., 394 Fed. Appx.
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`699 (Fed. Cir. 2010) for the proposition that “it is legally impermissible for Ford to
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`rely on portions of the ’097 patent as evidence of what is actually disclosed in
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`Severinsky [’970].” (POR at 35.) Paice’s characterization of Clearwater is
`
`incorrect.
`
`In Clearwater, the Federal Circuit reversed a district court’s summary
`
`judgement ruling of inherency by anticipation. (Id.) The district court found that
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`the claimed method was anticipated by a prior art device (’267 patent) based solely
`
`on disclosure in the ’739 patent-in-suit stating that the prior art device could be
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`used to practice the claimed method. Clearwater Systems Corp. v. Evapco, Inc.,
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`596 F.Supp.2d 291, 313 (D. Conn. 2009). The District Court’s decision was based
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`on a claim chart that relied only on excerpts from the patent-in-suit. Clearwater,
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`596 F.Supp.2d at 311-312. Here, inherency by anticipation is not at issue, and Ford
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`relies on excerpts and figures from Severinsky ’970 for establishing unpatentability
`
`of the challenged claims.
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`F. Rationale to combine - the combination of Anderson’s
`transient control algorithm with Severinsky’s architecture
`and HEV mode selection control algorithms would have
`required only slight modifications
`
`Regarding the rationale to combine, Ford asserts the addition of Anderson’s
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`stoichiometric control strategies with Severinsky ’970’s hardware and HEV mode
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`selection control strategies obtains the predictable results taught in Anderson —
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`improved control of the stoichiometric air-fuel ratio. (Pet. at 44-45, Stein Decl.,
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`Ex. 1102, ¶545.) Thus, the combination merely supplements the control strategy of
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`Severinsky ’970 with an additional desirable feature — limiting transients —
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`described in Anderson to obtain improved emissions. (Id.)
`
`There is ample evidence to support the rationale to combine Severinsky ’970
`
`and Anderson. As Dr. Stein explains, the fundamental goals of HEV technology,
`
`namely to increase fuel economy and reduce noxious emissions, provide the
`
`rationale for combining Severinsky ’970’s HEV powertrain topology with the
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`engine control strategy taught by Anderson. (Stein Decl., Ex. 1102, ¶544-545.)
`
`Paice’s expert agrees that if a POSA is trying to reduce emissions — an object of
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`Severinsky ’970 — any teaching that reduces emissions would be considered by
`
`the POSA and applied if it helps. (Hn Tr. 3, Ex. 1132 at 26:9-14.)
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`Further, a POSA would have been motivated to replace lean-burn strategies
`
`with stoichiometric strategies to meet Federal emissions regulations that were
`
`becoming more stringent. (Reply Decl., Ex. 1129, ¶¶46-47.) Paice’s expert testified
`
`that in the 1980’s “when nox [regulations] became important, then the lean burn
`
`strategies diminished, and pretty much everything went to [a] stoichiometric
`
`strategy.” (Hn Tr. 2, Ex. 1131 at 54:19-21.)
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`G. Contrary to Paice’s arguments challenging the rationale to
`combine, Anderson must be read as a whole
`
`A common theme among Paice’s array of attacks challenging the rationale to
`
`combine Severinsky ’970 and Anderson is an effort to narrow the scope of
`
`Anderson’s teachings by exaggerating the impact of individual sentences, contrary
`
`to the import of the reference as a whole. Such a tactic is impermissible. See,
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`Liberty Mutual Ins. Co. v. Progressive Casualty Insurance Co., CBM 2012-00002,
`
`Paper 66, pp. 41-43 (PTAB Jan. 23, 2014).
`
`1.
`
`Paice’s attempt to limit Anderson to series hybrids is
`flawed
`
`As part of its fragmented reading of Anderson, Paice argues that Anderson’s
`
`hybrid strategies are limited to series architectures and further inoperable for the
`
`parallel architecture disclosed in Severinsky ’970. (POR at 9.)
`
`Paice’s position is refuted by the very paragraph on which Paice relies:
`
`“[t]he thought processes presented in this paper are sufficiently general that they
`
`can be applied to any type of vehicle. To fully explore the flexibility allowed by
`
`the hybrid system, we focus on the design of a strategy for the most versatile
`
`layout: the power assist hybrid.” (Anderson, Ex. 1105 at 4, emphasis added.) As
`
`Paice’s own expert acknowledges, if two portions of a reference apply, a POSA
`
`would look at both. (Hn Tr. 3, Ex. 1132 at 27:21-28:11.) Combining two
`
`embodiments disclosed adjacent to each other in a prior art reference does not
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`require a leap of inventiveness. See, e.g., Boston Scientific Scimed, Inc. v. Cordis
`
`Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
`
`Paice’s second position – that Anderson’s hybrid strategies are inoperable
`
`for the parallel architecture disclosed in Severinsky ’970 - is defective as it fails to
`
`account for how a POSA would view the teachings in Anderson.
`
`Anderson’s hybrid strategy that allows only slow engine transients applies to
`
`all engine transients. (Reply Decl., Ex. 1129, ¶56.) Engine transients are frequent
`
`and unpredictable during the operation of a parallel HEV operating in the follower
`
`mode. (Reply Decl., Ex. 1129, ¶59.) Thus, a POSA would have understood that
`
`Anderson’s slow engine transient control strategy “becomes more and more
`
`important for a parallel hybrid as you approach the follower mode, because in this
`
`mode the transients are frequent and unpredictable” and “would have less and less
`
`benefit as you approach the thermostat mode of the power assist series hybrid.”
`
`(Reply Decl., Ex. 1129, ¶59.) When viewed from the required technological
`
`perspective, Paice’s inoperability argument fails. See Garmin v. Cuozzo, IPR2012-
`
`00001, Paper 59, pp. 35-36 (PTAB Nov. 13, 2013).
`
`2.
`
`Paice’s “follower mode” teaching away argument
`improperly narrows Severinsky ’970 and is based on
`a single sentence, taken out of context
`
`Paice argues that “Anderson expressly teaches away from using an engine
`
`control strategy employing slow transients in a parallel hybrid system” because
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`“Anderson teaches that a parallel hybrid system always uses the ‘following’ mode,
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`which requires the engine to follow the actual wheel power (similar to a
`
`conventional automobile).” (POR at 43.)
`
`But Anderson describes the follower mode as a mode in which the engine
`
`“follows the actual wheel power whenever possible” - i.e. the engine will not
`
`follow wheel power when not possible. (Reply Decl., Ex. 1129, ¶61; Anderson, Ex.
`
`1005 at 5, emphasis added.) Further, Anderson also describes its follower mode as
`
`including “fast transients” and focuses on reducing, i.e., limiting the rate of
`
`increase during, those “fast transients.” (Id.)
`
`Regardless, Severinsky ’970’s hybrid control strategy is not limited to
`
`Anderson’s follower mode – so the sentence of Anderson is inapplicable to the
`
`combination of Severinsky ’970 and Anderson – and does not “teach away.”
`
`(Reply Decl., Ex. 1129, ¶¶62-68.) Severinsky ’970, like Anderson, teaches
`
`controlling the electric motor to provide additional torque. (Reply Decl., Ex. 1129,
`
`¶¶64, 67.)
`
`A POSA would not have been discouraged from combining Severinsky
`
`’970’s architecture and HEV mode selection strategy with Anderson’s strategy of
`
`allowing only slow transients. (Reply Decl., Ex. 1129, ¶¶68-71.)
`
`3.
`
`Paice’s arguments based on Anderson’s braking
`related disclosures are not relevant
`
`Contrary to Paice’s assertion, Anderson’s teaching that “during a transition
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`from a hard acceleration to a hard braking” a slow transient (i.e., limiting the rate
`
`of decrease in engine output torque) could damage the engine or the battery does
`
`not amount to a teaching away. (Anderson, Ex. 1105 at 7; Reply Decl., Ex. 1129,
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`¶¶74-75.) This teaching is irrelevant to the Challenged Claims because it relates to
`
`braking, i.e., decreasing engine output torque, while the claims (and the Anderson
`
`teaching on which Ford relies) relate to the “rate of increase” of engine torque.
`
`(Reply Decl., Ex. 1129, ¶74.)
`
`4.
`
`Severinsky ’970’s disclosure of a lean-burn engine
`control strategy is a way, but not a “teaching away”
`
`Severinsky ’970 discloses an engine control strategy that includes operating
`
`the engine 40 in a lean burn mode to lower hydrocarbon and carbon monoxide
`
`emissions. (Severinsky ’970, Ex. 1104, 12:13-33.) Despite Paice’s assertions to the
`
`contrary, this one statement does not qualify as a “teaching away.” (POR at 45.)
`
`Because Severinsky ’970 provides a balanced view of the tradeoffs associated with
`
`a lean burn strategy, such teachings would not lead a POSA away from the claimed
`
`stoichiometry strategy. (Reply Decl., Ex. 1129, ¶76.) Further, as Paice’s expert
`
`testified, in the 1980’s “when nox [regulations] became important, then the lean
`
`burn strategies diminished, and pretty