Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: March 12, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01416
`Patent 7,237,634 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`DEFRANCO, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Entered: March 12, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01416
`Patent 7,237,634 B2
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`DEFRANCO, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`I. INTRODUCTION
`
`
`
`Ford Motor Company (“Ford”) filed a Petition (“Pet.”) for inter partes
`
`review of U.S. Patent No. 7,237,634 B2 (“the ’634 patent”). Paper 1. The
`
`Petition challenges the patentability of claims 80, 93, 98, 99, 102, 109, 114,
`
`127, 131, 132, 135, 139, 142, 161, 215, 228, 232, 233, and 235–237 under
`
`35 U.S.C. §§ 102 and 103. Paice LLC and The Abell Foundation, Inc.
`
`(“Paice”), the owner of the ’634 patent, filed a Preliminary Response
`
`(“Prelim. Resp.” ). Paper 8. After considering the Petition and Preliminary
`
`Response, we determine that Ford has demonstrated a reasonable likelihood
`
`that the challenged claims are unpatentable. 35 U.S.C. § 314. Pursuant to
`
`our authority under 37 C.F.R. § 42.4(a), we institute an inter partes review
`
`of challenged claims 80, 93, 98, 99, 102, 109, 114, 127, 131, 132, 135, 139,
`
`142, 161, 215, 228, 232, 233, and 235–237.
`
`II. BACKGROUND
`
`A.
`
`
`
`The ’634 Patent1
`
`The ’634 patent describes a hybrid vehicle with an internal
`
`combustion engine, at least one electric motor, and a battery bank, all
`
`controlled by a microprocessor that directs torque transfer between the
`
`engine, the motor, and the drive wheels of the vehicle. Ex. 1101, 17:17–56,
`
`Fig. 4. The microprocessor compares the vehicle’s torque requirements and
`
`the engine’s torque output against a predefined setpoint and uses the results
`
`
`
`1 The ’634 patent is the subject of a co-pending case, Paice, LLC v. Ford
`Motor Company, No. 1:14-cv-492, filed Feb. 19, 2014, in the U.S. District
`Court for the District of Maryland. Pet. 1.
`2
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`of the comparison to control the vehicle’s mode of operation, e.g., straight-
`
`electric, engine-only, or hybrid. Id. at 40:16–49. The microprocessor
`
`utilizes a hybrid control strategy that operates the engine only in a range of
`
`high fuel efficiency, which occurs when the instantaneous torque required to
`
`drive the vehicle, or road load (RL), reaches a setpoint (SP) of
`
`approximately 30% of the engine’s maximum torque output (MTO). Id. at
`
`20:61–67; see also id. at 13:64–65 (“the engine is never operated at less than
`
`30% of MTO, and is thus never operated inefficiently”). Operating the
`
`engine in a range above the setpoint but substantially less than the maximum
`
`torque output maximizes fuel efficiency and reduces pollutant emissions of
`
`the vehicle. Id. at 15:55–58.
`
`B.
`
`Challenged Claims
`
`Of the challenged claims, claims 80, 114, 161, and 215 are
`
`independent. Claim 80 is illustrative:
`
`80. A method for controlling a hybrid vehicle,
`
`comprising:
`
`determining instantaneous road load (RL) required to
`propel the hybrid vehicle responsive to an operator command;
`
`monitoring the RL over time;
`
`operating at least one electric motor to propel the hybrid
`vehicle when the RL required to do so is less than a setpoint
`(SP);
`operating an internal combustion engine of the hybrid
`
`vehicle to propel the hybrid vehicle when the RL required to do
`so is between the SP and a maximum torque output (MTO) of
`the engine, wherein the engine is operable to efficiently produce
`torque above the SP, and wherein the SP is substantially less
`than the MTO; and
`
`3
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`wherein said operating the internal combustion engine to
`
`propel the hybrid vehicle is performed when: the RL>the SP for
`at least a predetermined time; or the RL>a second setpoint
`(SP2), wherein the SP2 is a larger percentage of the MTO than
`the SP; and
`
`operating both the at least one electric motor and the
`engine to propel the hybrid vehicle when the torque RL
`required to do so is more than the MTO.
`
`Ex. 1101, 65:11–33.
`
`C.
`
`Asserted Grounds
`
`
`
`Ford challenges the claims of the ’634 patent based on the following
`
`grounds and prior art (Pet. 4), and also proffers the declaration testimony of
`
`Dr. Gregory W. Davis (Ex. 1107) in furtherance of these grounds.
`
`Ground
`
`Basis
`
`Challenged Claims
`
`§ 102/§ 103 Severinsky2
`
`161, 215, 228, 232, 233, 237
`
`§ 103
`
`§ 103
`
`Severinsky and Frank3
`
`80, 93, 98, 99, 102, 109, 114,
`127, 131, 132, 135, 139, 142
`
`Tabata4
`
`215, 228, 233, 235, 236
`
`
`
`III. ANALYSIS
`
`A.
`
`Claim Construction
`
`
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in the context of the patent in which
`
`
`
`2 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1103).
`3 U.S. Patent No. 5,824,534, iss. Dec. 1, 1998 (Ex. 1104).
`4 U.S. Patent No. 5,841,201, iss. Nov. 24, 1998 (Ex. 1105).
`4
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`they appear. 37 C.F.R. § 42.100(b); accord In re Cuozzo Speed Techs., No.
`
`2014-1301, 2015 WL 448667, at *6 (Fed. Cir. Feb. 4, 2015) (holding that
`
`the PTO “properly adopted” the broadest reasonable interpretation standard
`
`for IPR proceedings). Ford proposes a construction for several claim terms,
`
`including “road load,” “setpoint,” “low-load mode I,” “highway cruising
`
`mode IV,” and “acceleration mode V.” Pet. 11–15. Based on our review of
`
`the record, however, no particular claim term requires an express
`
`construction for purposes of this preliminary proceeding.5
`
`B.
`
`Asserted Grounds of Unpatentability
`
`
`
`
`
`1.
`
`Claims 161, 215, 228, 232, 233, and 237
`
`Ford challenges independent claims 161 and 215 as either anticipated
`
`by Severinsky under 35 U.S.C. § 102 or obvious over Severinsky under 35
`
`U.S.C. § 103. Pet. 15–39. Claims 161 and 215 recite various modes of
`
`operation including one in which “the engine is operable to efficiently
`
`produce torque above the SP, and wherein the SP is substantially less than
`
`the MTO.” Ex. 1101, 73:41–67; 79:10–31 (emphases added).
`
`
`
`Severinsky describes a hybrid vehicle that operates in a plurality of
`
`modes, including: (1) a low-speed, electric motor mode in which
`
`“inefficiency and pollution” of the engine is eliminated (e.g., city driving);
`
`(2) a high-speed, engine mode in which the engine operates “near maximum
`
`efficiency” (e.g., highway cruising); (3) a hybrid mode in which both the
`
`
`
`5 A “Preliminary Proceeding,” according to our rules, “begins with the filing
`of a petition for instituting a trial and ends with a written decision as to
`whether a trial will be instituted.” 37 C.F.R. § 42.2.
`5
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`engine and the electric motor power the vehicle when road load exceeds
`
`maximum torque output of the engine (e.g., accelerating or hill climbing);
`
`and (4) a battery charging mode in which the engine operates a generator to
`
`recharge the battery (e.g., braking or coasting). Ex. 1103, 6:26–48, 7:8–26,
`
`25:1–40. In order to maximize fuel efficiency, Severinsky discloses a
`
`controller that operates the engine “only in the near vicinity of its most
`
`efficient operational point, that is, such that it produces 60-90% of its
`
`maximum torque whenever operated.” Id. at 20:63–67 (emphasis added).
`
`
`
`Ford’s declarant testifies that a skilled artisan would have understood
`
`the lower limit of Severinsky’s range, i.e., 60%, to be a “setpoint” for
`
`efficient operation of the engine. Ex. 1107 ¶ 208. Ford’s declarant further
`
`testifies that Severinsky’s lower limit of 60% is “substantially less than the
`
`MTO” of the engine, thereby meeting the language of independent claims
`
`161 and 215. Id. ¶¶ 231–232, 326. Crediting the testimony of Ford’s
`
`declarant, we are persuaded that Severinsky discloses, or at the very least
`
`suggests, each of the limitations of claims 161 and 215. See id. ¶¶ 175–259,
`
`320–341.
`
`
`
`We also are persuaded that Severinsky discloses and/or suggests the
`
`limitations of claims 228, 232, 233, and 237, which depend from claim 215.
`
`See Pet. 27–36. For example, with respect to claims 228, Severinsky
`
`discloses that either the engine or the motor can be operated in a “battery
`
`charge mode . . . responsive to monitoring the state of charge of battery.”
`
`Ex. 1103, 15:1–10, 16:67–17:15. As to claim 232, Severinsky’s lower limit
`
`of 60% appears to fall within the claimed range that the setpoint be greater
`
`6
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`than “at least approximately 30% of the MTO of the engine.” Ex. 1107,
`
`¶¶ 272–274. And, with respect to claim 237, Severinsky discloses a “two-
`
`way clutch” that “controllabl[y]” couples the engine to the drive wheels of
`
`the vehicle. Ex. 1103, 9:58–61, Figs. 3, 11.
`
`
`
`In sum, after considering Ford’s evidence and analysis, we determine
`
`that Ford has demonstrated a reasonable likelihood that claims 161, 215,
`
`228, 232, 233, and 237 are unpatentable as anticipated by, or obvious over,
`
`Severinsky.
`
`
`
`
`
`2.
`
`
`Claims 80, 93, 98, 99, 102, 109, 114, 127, 131, 132,
`135, 139, and 142
`
`Ford argues that independent claims 80 and 114 would have been
`
`obvious over Severinsky and Frank. Pet. 39–48. In addition to the step of
`
`operating the engine in a range of maximum fuel efficiency (i.e., above the
`
`SP and substantially less than the MTO), which Severinsky discloses as
`
`discussed above, claim 80 recites operating the engine “for at least a
`
`predetermined time” and claim 114 recites operating the electric motor “for
`
`at least a predetermined amount of time.” Ex. 1101, 65:26–28, 68:43–45.
`
`The ’634 patent describes this step as a “hysteresis” time delay for
`
`preventing undesirable mode switching as a result of quick fluctuations in
`
`road load. Ex. 1101, 41:30–47.
`
`Severinsky expressly contemplates “hysteresis in mode switching.”
`
`Ex. 1103, 18:34–42. And Ford points to Frank as confirming it was well
`
`known to utilize a load-responsive hysteresis time delay in a hybrid control
`
`strategy to prevent unwanted cycling between the electric motor and the
`
`7
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`engine. Pet. 42 (citing 1104, 8:7–11). After considering Ford’s evidence
`
`and analysis, we are persuaded that a skilled artisan would have been led to
`
`incorporate Frank’s strategy of using a load-responsive time delay for
`
`preventing unwanted mode switching into the hybrid control strategy of
`
`Severinsky because both hybrid systems utilize a threshold or setpoint for
`
`determining the appropriate mode of operation and are concerned with
`
`continual starting and stopping of the engine. See Ex. 1107 ¶¶ 373–377.
`
`We also are persuaded that Severinsky discloses the features recited in the
`
`challenged claims depending from claims 80 and 114, for example, a battery
`
`charge mode (claim 93, 127, 139), a set point of at least 30% of MTO
`
`(claims 98, 131), and a clutch (claims 109, 142). See Pet. 43–48. Thus, we
`
`determine that Ford has demonstrated a reasonable likelihood that claims 80,
`
`93, 98, 99, 102, 109, 114, 127, 131, 132, 135, 139, and 142 are unpatentable
`
`for obviousness over Severinsky and Frank.
`
`
`
`
`
`3.
`
`Claims 215, 228, 233, 235, and 236
`
`Ford argues that claims 215, 228, 233, 235, and 236 would have been
`
`obvious over Tabata. Pet. 48–58. As addressed above, claim 215 is
`
`independent and recites a mode of operation in which “the engine is
`
`operable to efficiently produce torque above the SP, and wherein the SP is
`
`substantially less than the MTO.” Ex. 1101, 79:10–31.
`
`
`
`Tabata discloses a hybrid vehicle that operates in a plurality of modes,
`
`including: a “Motor Drive” mode 1; an “Engine Drive” mode 2; an “Engine
`
`Drive & Charging” mode 3, and an “Engine-Motor Drive” mode 4. Ex.
`
`1105, 11:15–24, Fig. 15. Central to Tabata is a controller that executes a
`
`8
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`hybrid control strategy so that the engine achieves “a maximum value of the
`
`fuel consumption efficiency.” Id. at 13:65–67. As described, the engine is
`
`operated when “the currently required output Pd is larger than the first
`
`threshold P1 and smaller than the second threshold P2.” Id. at 33:30–32.
`
`Ford’s declarant explains that, as used in Tabata, the term “Pd” means road
`
`load or RL, and the terms “P1” and “P2” constitute lower and upper limits
`
`for efficient operation of the engine. Ex. 1107 ¶¶ 480–486. Indeed, Tabata
`
`discloses that both P1 and P2 are determined “so as to minimize the exhaust
`
`gas emissions and the fuel consumption, depending upon the energy
`
`efficiency during running of the vehicle.” Id. at 30:59–62; 32:7–9.
`
`In other words, Tabata discloses that the engine runs most efficiently
`
`when the road load is between a setpoint (P1) and an upper limit (P2). And,
`
`as Ford’s declarant further explains, Figure 7 of Tabata illustrates that the
`
`engine operates in a “sweet spot” between lower and upper limits P1 and P2
`
`and that a skilled artisan would have recognized those limits as being well
`
`below the engine’s MTO. Ex. 1107 ¶¶ 487–496. At this stage, the
`
`testimony of Ford’s declarant persuades us that Tabata’s engine operates
`
`“efficiently” in a range “above the SP” and “substantially less than the
`
`MTO,” as recited by claim 215.
`
`
`
`We also are persuaded that Tabata discloses the limitations of
`
`dependent claims 228, 233, 235, and 236. With respect to claim 228, in
`
`particular, Paice argues that Tabata fails to disclose the step of “monitoring a
`
`state of charge of a battery” in the vehicle.” Prelim. Resp. 11–14. But
`
`Tabata illustrates expressly that “SOC” (i.e., state of charge) of the battery is
`
`9
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`determined before any modes of operation are executed. Ex. 1105, Fig. 15
`
`(as depicted in steps S12, S16, S18). Tabata further states that an integral
`
`part of the hybrid control sub-routine is “to determine whether the amount of
`
`electric energy SOC stored in the electric storage device [i.e., battery] is
`
`equal to or larger than a predetermined upper limit.” Id. at 28:40–45. That
`
`disclosure persuades us that Ford is reasonably likely to demonstrate that
`
`Tabata meets the battery-charge monitoring step of claim 228. As for claims
`
`235 and 236, Tabata expressly discloses a “continuously variable
`
`transmission” equipped with “planetary gear sets.” Id. at 9:63–10:27.
`
`After considering Ford’s evidence and analysis, we are persuaded that
`
`Ford has demonstrated a reasonable likelihood that claims 215, 228, 233,
`
`235, and 236 are unpatentable as obvious over Tabata. See Pet. 48–58.
`
`IV. CONCLUSION
`
`
`
`On the current record, Ford has demonstrated a reasonable likelihood
`
`of proving that (1) claims 161, 215, 228, 232, 233, 237 are either anticipated
`
`by, or obvious over, Severinsky, (2) claims 80, 93, 98, 99, 102, 109, 114,
`
`127, 131, 132, 135, 139, 142 would have been obvious over Severinsky and
`
`Frank, and (3) claims 215, 228, 233, 235, 236 would have been obvious over
`
`Tabata. As such, we institute an inter partes review of the challenged claims
`
`10
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`of the ’634 patent. Our decision to institute acts as a preliminary measure of
`
`Ford’s evidence as having enough merit to take these claims to trial.6
`
`
`
`For the foregoing reasons, it is
`
`V. ORDER
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review
`
`of claims 161, 215, 228, 232, 233, and 237 of the ’634 patent is instituted on
`
`the ground of anticipation asserted under 35 U.S.C. § 102, and that inter
`
`partes review of claims 80, 93, 98, 99, 102, 109, 114, 127, 131, 132, 135,
`
`139, 142, 161, 215, 228, 232, 233, and 235–237 of the ’634 patent is
`
`instituted on the grounds of obviousness asserted under 35 U.S.C. § 103; and
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4(b), inter partes review of the ’097 patent shall commence on
`
`the entry date of this Order, and notice is hereby given of the institution of a
`
`trial.
`
`
`
`
`
`
`
`
`
`6 Senator Jon Kyl remarked that the “reasonable likelihood” threshold
`imposed by 35 U.S.C. § 314(a) “is currently used in evaluating whether a
`party is entitled to a preliminary injunction, and effectively requires the
`petitioner to present a prima facie case justifying a rejection of the claims in
`the patent.” 157 CONG. REC. S1375 (daily ed. Mar. 8, 2011).
`11
`
`
`
`IPR2014-01416
`Patent 7,237,634 B2
`
`
`FOR PETITIONER:
`
`Sangeeta G. Shah
`Frank A. Angileri
`Michael D. Cushion
`Andrew B. Turner
`BROOKS KUSHMAN P.C.
`FPGP0110IPR2@brookskushman.com
`
`Frank A. Angileri
`John E. Nemazi
`John P. Rondini
`Erin K. Bowles
`BROOKS KUSHMAN P.C.
`FPGP0104IPR3@brookskushman.com
`
`Lissi Mojica
`Kevin Greenleaf
`DENTONS US LLP
`lissi.mojica@dentons.com
`kevin.greenleaf@dentons.com
`iptdocketchi@dentons.com
`
`
`FOR PATENT OWNER:
`
`Timothy W. Riffe
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`riffe@fr.com
`IPR36351-0012IP1@fr.com
`
`
`12
`
`
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