UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,237,634 to Severinsky et al.
`
`IPR Case No.: IPR2014-01416
`
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 80, 93, 98, 99, 102, 109, 114, 127, 131, 132, 135, 139, 142, 161, 215,
`228, 232, 233 AND 235-237 OF U.S. PATENT NO. 7,237,634)
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ........................................................................................................ iii
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1
`
`A.
`B.
`C.
`D.
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1) ..................................... 1
`Related Matters - 37 C.F.R. § 42.8(b)(2) .............................................. 1
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 2
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104 ............................................ 3
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a) ...................................... 3
`B.
`Challenged Claims - 37 C.F.R. § 42.104(b)(1) ..................................... 3
`C.
`Grounds of Challenge – 37 C.F.R. § 42.104(b)(2) ............................... 3
`
`IV. PERSON OF ORDINARY SKILL IN THE ART (POSA) ............................ 4
`
`V.
`
`STATE OF THE ART ..................................................................................... 4
`
`VI. OVERVIEW OF THE ’634 Patent .................................................................. 6
`
`Prosecution History of the ’634 Patent ................................................. 7
`A.
`Purported Improvement in the ’634 Patent ........................................... 8
`B.
`C. Method Claims Requiring Only One-Motor .......................................10
`
`VII. CLAIM CONSTRUCTION – 37 C.F.R. § 42.104 (B)(3) .............................10
`
`A.
`
`B.
`
`C.
`
`Road load (RL) and RL (claims 80, 99, 114, 132, 139, 161, 215
`and 233) ...............................................................................................11
`Setpoint (SP) and SP (claims 80, 98, 99, 114, 131, 132, 161,
`215, 232 and 233) ................................................................................12
`1.
`“Setpoint (SP)” and “SP” ..........................................................12
`2.
`Setpoint (SP) in the ’634 Patent claims is a torque based
`value ..........................................................................................13
`“Low-load mode I,” “highway cruising mode IV,” “acceleration
`mode V” (Claims 99, 102, 132, 133, 161 and 233) ............................14
`
`VIII. UNPATENTABILITY GROUNDS ..............................................................15
`
`A. GROUND 1: Claims 215, 228, 232, 233, 237 & 161 Are
`Anticipated and/or Obvious over Severinsky ’970 .............................15
`1.
`Independent Claim 215 .............................................................16
`2.
`Claim 228 ..................................................................................27
`
`i
`
`

`

`B.
`
`C.
`
`3.
`Claim 232 ..................................................................................29
`Claim 233 ..................................................................................29
`4.
`Claim 237 ..................................................................................36
`5.
`Independent Claim 161 .............................................................36
`6.
`GROUND 2: Claims 80, 93, 98, 99, 102, 109, 114, 127, 131,
`132, 135, 139 and 142 Are Obvious over Severinsky ’970 in
`View of Frank and General Knowledge of a POSA ...........................39
`1.
`Independent Claim 114 .............................................................39
`2.
`Claim 127 ..................................................................................43
`3.
`Claim 131 ..................................................................................44
`4.
`Claim 132 ..................................................................................44
`5.
`Claim 135 ..................................................................................44
`6.
`Claim 139 ..................................................................................44
`7.
`Claim 142 ..................................................................................45
`8.
`Independent Claim 80 ...............................................................45
`9.
`Claim 93 ....................................................................................47
`10. Claim 98 ....................................................................................47
`11. Claim 99 ....................................................................................48
`12. Claim 102 ..................................................................................48
`13. Claim 109 ..................................................................................48
`GROUND 3: Claims 215, 228, 233, 235 and 236 Are Obvious
`over Tabata ’201 in View of the General Knowledge of a POSA ......48
`1.
`Independent Claim 215 .............................................................49
`2.
`Claim 228 ..................................................................................55
`3.
`Claim 233 ..................................................................................56
`4.
`Claim 235 ..................................................................................58
`5.
`Claim 236 ..................................................................................58
`
`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS ......................................59
`
`X.
`
`CONCLUSION ..............................................................................................60
`
`CERTIFICATE OF SERVICE ................................................................................61
`
`
`
`
`
`
`
`ii
`
`

`

`
`
`EXHIBIT LIST
`
`Petition Exhibits
`Description
`
`Date
`
`Identifier
`
`Exhibit
`No.
`1101 U.S. Patent No. 7,237,634
`1102
`7,237,634 File History
`
`n/a
`n/a
`
`Sept. 6, 1994
`Nov.3, 1997
`Feb. 27 1997
`Jan. 26, 1998
`n/a
`Mar. 8, 2005
`
`Mar. 29, 2005
`
`Sept. 28, 2005
`June 25, 2008
`Aug. 1, 2008
`Dec. 5, 2008
`Nov. 14, 2013
`
`Dec. 16, 2013
`
`
`
`n/a
`
`Jan. 3, 2014
`
`The ’634 Patent
`’634 Patent File
`History
`Severinsky ’970
`Frank
`Tabata ’201
`Tabata ’541
`Davis
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`’347 Patent File
`History
`
`
`Feb. 29, 2012
`
`July 11, 2014
`
`July 11, 2014
`
`
`
`
`
`
`
`1109
`
`1110
`1111
`1112
`1113
`1114
`
`1115
`
`1116
`
`1117
`
`1103 U.S. Patent No. 5,343,970
`1104 U.S. Patent No. 5,842,534
`1105 U.S. Patent No. 5,841,201
`1106 U.S. Patent No. 6,158,541
`1107 Declaration of Gregory Davis
`1108
`2005 Paice Opening Claim
`Construction Brief
`2005 Paice Response Claim
`Construction Brief
`2005 Claim Construction Order
`2008 Paice Opening Brief
`2008 Paice Response Brief
`2008 Claim Construction Order
`2013 Paice Opening Claim
`Construction Brief
`2013 Paice Response Claim
`Construction Brief
`2014 Paice Claim Construction
`Order
`Excerpt of USPN 7,104,347 File
`History
`1118 U.S. Patent Trial and Appeal Board
`January 3, 2014 Decision (Appeal
`No. 2011-004811)
`2012 Amendment to U.S.
`Application 13/065,704
`Excerpts from Patent Owner
`Response (IPR2014-00571, Doc 8)
`Excerpts from Patent Owner
`Response (IPR2014-00579, Doc 8)
`
`1119
`
`1145
`
`1146
`
`iii
`
`

`

`
`
`Declaration Exhibits
`
`Date
`
`
`Feb. 1994
`
`Exhibit
`Description
`No.
`1120 Curriculum Vitae of Gregory Davis
`1121
`Innovations in Design: 1993 Ford Hybrid Electric
`Vehicle Challenge
`Feb. 1997
`1996 Future Car Challenge
`1122
`Feb. 1998
`1997 Future Car Challenge
`1123
`1124 History of Hybrid Electric Vehicle (Wakefield-1998) 1998
`1125
`SAE 760121 (Unnewehr-1976)
`
`1126
`SAE 920447 (Burke-1992)
`Feb. 24-28, 1992
`1127 Vehicle Tester for HEV (Duoba-1997)
`April 9-11, 1997
`1128 DOE Report to Congress (1994)
`April 1995
`1129
`SAE SP-1331 (1998)
`Feb. 1998
`1130
`SAE SP-1156 (1996)
`Feb. 1996
`1131 DOE HEV Assessment (1979)
`Sept. 30, 1979
`1132
`EPA HEV Final Study (1971)
`June 1, 1971
`1133 Microprocessor Design for HEV (Bumby-1988)
`Sept. 1, 1988
`1134
`Propulsion System for Design for EV (Ehsani-1996) 1996
`1135
`Propulsion System Design for HEV (Ehsani-1997)
`Feb. 1997
`1136 Bosch Automotive Handbook (1996)
`Oct. 1996
`1137
`SAE SP-1089 (Anderson-1995)
`Feb. 1995
`1138 U.S. Patent No. 6,209,672
`Apr. 3, 2001
`1139
`Introduction to Automotive Powertrain (Davis)
`
`1140
`Toyota Prius (Yamaguchi-1998)
`Jan. 1998
`1141 US Application 60/100,095
`Filed Sept. 11,
`1998
`Nov. 25, 1998
`Oct.13, 1995
`August 11, 1998
`
`1142 WO 9323263A1 (Field)
`1143 U.S. Patent No. 6,098,733
`1144 Critical Issues in Quantifying HEV Emissions and
`Fuel Consumption (An-1998)
`
`
`
`
`
`iv
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`The Petitioner Ford Motor Company respectfully requests 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 U.S. Patent No. 7,237,634 (“the ’634 Patent”;
`
`attached as Ex. 1101) in accordance with 35 U.S.C. §§ 311–319 and 37 C.F.R.
`
`§ 42.100 et seq.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`
`Petitioner certifies that Ford Motor Company (“Petitioner”) is the real party-
`
`in-interest.
`
`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`
`Petitioner identifies the following related judicial matter: Paice, LLC and the
`
`Abell Foundation, Inc. v. Ford Motor Company, Case Number 1-14-cv-00492 filed
`
`on February 19, 2014 in the District of Maryland, Baltimore Division. The ’634
`
`Patent is being asserted in this proceeding, along with four other patents within the
`
`same family.
`
`Petitioner is also aware that the ’634 patent is being asserted in Paice LLC
`
`and The Abell Foundation, Inc. v. Hyundai Motor America, Kia Motors
`
`Corporation, Hyundai Motor Company and Kia Motors America, Inc., Case
`
`Number 1:2012-cv-00499, District of Maryland, Baltimore Division filed on
`
`1
`
`

`

`
`
`February 16, 2012.
`
`Petitioner filed the following related petitions: IPR2014-00570, IPR2014-
`
`00571,
`
`IPR2014-00568,
`
`IPR2014-00579,
`
`IPR2014-00852,
`
`IPR2014-00875,
`
`IPR2014-00884, and IPR2014-00904. Petitioner is concurrently filing related
`
`petition: IPR2014-01415. This Petition is not redundant to any previous or
`
`concurrently filed petitions.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Ford appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman P.C.
`
`as lead counsel, and appoints John E. Nemazi (Reg. No. 30,876), John P. Rondini
`
`(Reg. No. 64,949) and Erin K. Bowles (Reg. No. 64,705) of Brooks Kushman P.C.,
`
`as well as Lissi Mojica (Reg. No. 63,421) and Kevin Greenleaf (Reg. No. 64,062)
`
`of Dentons US LLP, as back-up counsel. An appropriate Power of Attorney is
`
`filed concurrently herewith.
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made via
`
`hand-delivery to Brooks Kushman P.C., 1000 Town Center, Twenty-Second Floor,
`
`Southfield, Michigan 48075 and Denton US LLP, 233 South Wacker Drive, Suite
`
`7800, Chicago, IL 60606-6306. Petitioner consents to service by email at
`
`FPGP0104IPR3@brookskushman.com, lissi.mojica@dentons.com,
`
`kevin.greenleaf@dentons.com, and iptdocketchi@dentons.com.
`
`2
`
`

`

`
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’634 Patent is available for inter partes review
`
`and that the Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this Petition.
`
`B. Challenged Claims - 37 C.F.R. § 42.104(b)(1)
`
`Petitioner requests inter partes review for claims 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 and requests that the Patent Trial and Appeal Board (“PTAB”) cancel those
`
`claims as unpatentable.
`
`C. Grounds of Challenge – 37 C.F.R. § 42.104(b)(2)
`
`Petitioner relies on the following patents and publications:
`
`1. U.S. Patent No. 5,343,970 issued to Severinsky (“Severinsky ’970,”
`
`Ex. 1103), which was filed on September 21, 1992, and issued on September 6,
`
`1994 and is prior art under 35 U.S.C. § 102(b). (Ex. 1103.) Severinsky ’970 is not
`
`part of the ’634 Patent family chain of filings. In fact, the ’634 Patent itself
`
`acknowledges Severinsky ’970 as being prior art. (Ex. 1101 at 10:37-11:34.)
`
`2. U.S. Patent No. 5,842,534 issued to Frank (“Frank,” Ex. 1104), which
`
`was filed November 3, 1997, and issued December 1, 1998 and is prior art under
`
`35 U.S.C. §102(e). (Ex. 1104.)
`
`3
`
`

`

`
`
`3.
`
`U.S. Patent No. 5,841,201 issued to Tabata et al. (“Tabata ’201” Ex.
`
`1105), which was filed in the U.S. on February 24, 1997, issued on November 24,
`
`1998, and is prior art under 35 U.S.C. §102(e). (Ex. 1105.)
`
`The grounds of unpatentability presented in this petition are as follows:
`
`Ground
`
`Basis
`
`References
`
`Claims
`
`1
`
`2
`
`§ 102/§103 Severinsky ’970
`
`215, 228, 232, 233, 237 &161
`
`§ 103
`
`Severinsky ’970 in view
`
`80, 93, 98, 99, 102, 109, 114,
`
`of Frank
`
`127, 131, 132, 135, 139 & 142
`
`3
`
`§ 103
`
`Tabata ’201
`
`215, 228, 233, 235 & 236
`
`The unpatentability grounds set forth in this Petition are confirmed and
`
`supported by the declaration of Dr. Gregory W. Davis. (“Davis” at Ex. 1107.)
`
`IV. PERSON OF ORDINARY SKILL IN THE ART (POSA)
`
`The level of ordinary skill in the art is evidenced by the references. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The level of ordinary skill of a
`
`POSA is also set forth in the accompanying declaration of Greg Davis. (Ex. 1107,
`
`Davis ¶¶41-42, see also ¶¶5-37.)
`
`V.
`
`STATE OF THE ART
`
`Hybrid vehicles date back over 100 years to the infancy of the automobile.
`
`(Ex. 1107, Davis ¶¶43-47.) Over this time span, numerous hybrid architectures
`
`4
`
`

`

`
`
`have been examined to achieve design “goals” that include efficient engine
`
`operation, improved fuel economy and reduced emissions. (Ex. 1107, Davis ¶48.)
`
`By September 1998, the development of the hybrid vehicle had advanced to
`
`a state where numerous different hybrid vehicle architectures were generally
`
`known and had even been successfully built and tested on public roads. (Ex. 1107,
`
`Davis ¶¶49-60.) These hybrid vehicle architectures typically employed electric
`
`motors to maintain operation of the internal combustion engine within the engine’s
`
`most efficient operating region, commonly referred as the engine’s “sweet spot.”
`
`(Ex. 1107, Davis ¶¶59, 108-134.) Some hybrid vehicles could accomplish efficient
`
`engine operation by employing “one-motor” architectures while other designs
`
`found operational benefits by employing “two-motor” architectures. (Ex. 1107,
`
`Davis, see discussion regarding “series” hybrid vehicles at ¶¶660-69; “parallel”
`
`hybrid vehicles at ¶¶70-86; and “series-parallel” hybrid vehicles ¶¶ 87-107.)
`
`It was known before September 1998 that engines in conventional vehicles
`
`operate inefficiently at low torque loads and at low vehicle speeds. (Ex. 1107,
`
`Davis ¶¶108-123, 125-126.) Hybrid vehicles could overcome the inefficiency of
`
`conventional vehicles by including a motor (i.e., “traction motor”) with sufficient
`
`power to propel the vehicle at low speeds and low loads. (Ex. 1107, Davis ¶¶108-
`
`123.) By using a powerful enough motor, hybrid vehicles could restrict engine
`
`operation solely to areas of high efficiency. (Ex. 1107, Davis ¶¶59, 108-123.) As
`
`5
`
`

`

`
`
`the vehicle speed and load increased, operation of the engine was permitted when
`
`the speed and load were determined to be in a region where engine torque is most
`
`efficiently produced—i.e., the engine’s “sweet spot.” (Ex. 1107, Davis ¶¶59, 109-
`
`134.)
`
`For hybrid vehicles it was further known prior to September 1998 that
`
`engine operation could be restricted to its “sweet spot” using a control strategy that
`
`typically included: (1) an all-electric mode where only the motor propels the
`
`vehicle when engine operation would be inefficient (i.e., at low loads and vehicle
`
`speeds); (2) an engine-only mode where the engine propels the vehicle when
`
`engine operation is efficient, such as highway cruising at higher speeds; and (3) an
`
`acceleration mode where the both engine and motor are used to propel the vehicle
`
`when the demand is beyond the maximum torque capabilities of the engine, such
`
`as during acceleration, passing, hill-climbing. (Ex. 1107, Davis ¶¶84-86, 124-133.)
`
`VI. OVERVIEW OF THE ’634 Patent
`
`The ’634 Patent is a divisional in a patent family chain that ultimately claims
`
`priority back to two separate Provisional Applications—Provisional Application
`
`No. 60/100,095 (“the ’095 Provisional”), filed September 14, 1998, and
`
`60/122,296 (“the ’296 Provisional”), filed March 1, 1999. (Ex. 1101; Ex. 1102 at
`
`2.) Specifically, the ’634 Patent is a direct divisional of U.S. Patent No. 7,104,347
`
`(“the ’347 Patent”).
`
`6
`
`

`

`
`
`A.
`
`Prosecution History of the ’634 Patent
`
`
`
`The ’634 Patent was filed on September 18, 2005. (Ex. 1102 at 1-3.) As
`
`filed, the ’634 Patent included 16 claims. (Ex. 1102 at 109-114.) On May 5, 2006,
`
`the patentee filed a preliminary amendment cancelling originally filed claims 1-16
`
`and adding new claims 17-75. (Ex. 1102 at 166-181.)
`
`On August 8, 2006, a non-final office action was presented rejecting pending
`
`claims 17-75. (Ex. 1102 at 189.) In the non-final office action, claims 17-72 were
`
`provisionally rejected on the ground of non-statutory obviousness-type double
`
`patenting over claims 82-122 of the then co-pending ’347 Patent. (Ex. 1102 at
`
`190.) Claims 73-74 were rejected under 35 U.S.C. §102(e) as being anticipated by
`
`U.S. Patent No. 5,935,040 to Tabata. (Ex. 1102 at 191-192.) Claim 75 was also
`
`rejected under 35 U.S.C. § 103(a) as being unpatentable over Tabata ‘040 alone.
`
`(Ex. 1102 at 192.) Lastly, claims 49-54, 58-61, 68, 69, and 72 were rejected under
`
`35 U.S.C. §103(a) as being unpatentable over Gray, Jr. in view of Tabata ‘040.
`
`(Ex. 1102 at 192-193.) The Examiner indicted that claims 17-48 would be
`
`allowable upon submission of a proper terminal disclaimer and claims 55-57, 62-
`
`7
`
`

`

`
`
`67 and 70-71 would also be allowable if rewritten in independent form. (Ex. 1102
`
`at 193.)
`
`On October 24, 2006, the patentee filed an amendment that amended claim
`
`49 to include the allowable subject matter of claim 55 and also added 261 new
`
`claims numbered new claims 76-337. (Ex. 1102 at 256-309.) In the remarks
`
`section, the patentee stated that these new claims were based on “allowable subject
`
`matter as indicated above and are also allowable.” (Ex. 1102 at 311.) The patentee
`
`also filed a terminal disclaimer with respect to claims 17-48 and cancelled
`
`corresponding claims 73-75. (Id.)
`
`On February 8, 2007, a notice of allowance was issued. (Ex. 1102 at 392.) In
`
`the corresponding notice of allowability the Examiner stated that claims 17-54, 56-
`
`72 and 76-326 were allowed and that the terminal disclaimer had been accepted
`
`and recorded. (Ex. 1102 at 395-396.) On July 3, 2007, the ’634 Patent issued. (Ex.
`
`1102 at 403.)
`
`B.
`
`Purported Improvement in the ’634 Patent
`
`The ’634 Patent identifies a purportedly “a new ‘topology’ for a hybrid
`
`vehicle” that requires “a first electric ‘starting’ motor” and “[a] second ‘traction’
`
`motor [] directly connected to the wheels to propel the vehicle.” (Ex. 1101 at
`
`11:50-61.)1 The purported “new ‘topology’” is disclosed as a two-motor “series-
`
`
`1 “Topology” is a term used by the ’634 Patent to describe a vehicle architecture or
`
`8
`
`

`

`
`
`parallel” hybrid design. (Ex. 1101 at 16:5-11.) Two-motor “series-parallel”
`
`hybrids, however, were well-known long before the patentee’s earliest priority date
`
`of September 1998. (Ex. 1107, Davis ¶¶ 87-107.)
`
`The ’634 Patent also identifies a purportedly new control strategy that
`
`operates the engine, traction motor, and starter motor “in accordance with the
`
`vehicle’s instantaneous torque demands so that the engine is run only under
`
`conditions of high efficiency.” (Ex. 1101 at 1-Abstract.) Specifically, the ’634
`
`Patent states that the control strategy operates “the internal combustion engine only
`
`under circumstances providing a significant load, thus ensuring efficient
`
`operation.” (Ex. 1101 at 35:10-12; See also 19:45-50 and 20:61-21:2.) The ’634
`
`Patent states that such efficient engine operation is accomplished using a set of
`
`operating modes that determine when to operate the engine or motors “depending
`
`on the torque required, the state of charge of the battery and other variables.” (Ex.
`
`1101 at 35:3-9.) Specifically, the ’634 Patent discloses: (1) operating the traction
`
`motor to provide “the torque required to propel the vehicle” when engine torque
`
`would be inefficiently produced (i.e., “mode I”); (2) operating the engine to
`
`provide “the torque required to propel the vehicle” when engine torque is
`
`efficiently produced (i.e., “mode IV”); (3) operating both the engine and motor
`
`when the “torque required to propel the vehicle” is above the maximum operating
`
`
`vehicle hardware configuration. (Ex. 1107, Davis ¶56 and ¶135).
`
`9
`
`

`

`
`
`torque of the engine (i.e., “mode V.”) (Ex. 1101 at 35:63-36:4; 36:20-43; Figs.
`
`8(a), (c), (d).)2
`
`As discussed in the “State of the Art” above, the control strategy of the ’634
`
`Patent was known in the prior art. (Ex. 1107, Davis ¶¶108-133.) In fact, as
`
`discussed in the Petitioner’s unpatentability grounds below, the ’634 Patent itself
`
`acknowledges that “the inventive control strategy according to which the hybrid
`
`vehicles of the ’634 Patent are operated” is the same “as in the case of the hybrid
`
`vehicle system shown in [the prior art Severinsky ’970 patent].” (Ex. 1101 at 35:3-
`
`9, 25:4-24.)
`
`C. Method Claims Requiring Only One-Motor
`
`The ’634 Patent includes several claims directed to a method for controlling
`
`a hybrid vehicle. The various method claims include numerous limitations that are
`
`identical, or substantially the same, as is noted in the unpatentability grounds
`
`below. In addition, the method claims recite, at least one electric motor. A hybrid
`
`vehicle having only one electric motor satisfies this limitation; thus, the claims do
`
`not recite the purportedly novel hybrid topology having two-motors disclosed in
`
`the specification of the ’634 Patent.
`
`VII. CLAIM CONSTRUCTION – 37 C.F.R. § 42.104 (B)(3)
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`2 These operational “modes” were also summarized by the patentee during a prior
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`claim construction briefing in district court litigation. (Ex. 1112 at 13-14).
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`For purposes of this IPR, a claim is interpreted by applying its “broadest
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`reasonable construction.” 37 C.F.R. § 42.100(b).
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`Certain terms recited in the claims of the ’634 Patent were argued by the
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`patentee with respect to other patents in the ’634 Patent family chain, namely U.S.
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`Patent Nos. 6,209,672, 6,554,088, and 7,104,547, and construed by a court in the
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`Eastern District of Texas in the prior Paice LLC v. Toyota Motor Corp. et al., Case
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`No. 2:04-cv-211, on September 28, 2005. (Ex. 1108; Ex. 1109; Ex. 1110.)
`
`Certain terms recited in the claims of the ’634 Patent were also argued by
`
`the patentee and construed by the same Texas court in Paice LLC v. Toyota Motor
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`Corp. et al., Case No. 2:07-cv-180, on December 5, 2008. (Ex. 1111; Ex.1112; Ex.
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`1113.)
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`Certain terms recited in the claims of the ’634 Patent were also argued by
`
`the patentee and construed by a Maryland district court in Paice LLC v. Hyundai
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`Motor Corp. et al., Case No. 2:12-cv-0499, on July 24, 2014. (Ex. 1114; Ex. 1115;
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`Ex. 1116.)
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`Petitioner proposes the following claim constructions for the purposes of this
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`Petition only.
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`A. Road load (RL) and RL (claims 80, 99, 114, 132, 139, 161,
`215 and 233)
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`During the 2005 and 2008 litigation with Toyota, the Eastern District of
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`Texas construed the terms road load, RL, and road load (RL) as follows: (1)
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`“instantaneous torque [rotary force] required for propulsion of the vehicle” (Ex.
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`1110 at 39-41 and 49); (2) “the instantaneous torque required for propulsion of the
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`vehicle, which may be positive or negative in value.” (Ex. 1113 at 14-15.)
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`In the currently ongoing Hyundai Litigation, the patentee has maintained and
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`the Maryland district court has construed the terms road load or RL as “the
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`instantaneous torque required for propulsion of the vehicle, which may be positive
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`or negative in value.” (Ex. 1114 at 16-19; Ex. 1119 at 19.)
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`Because inter partes review proceedings use the broadest reasonable
`
`construction of claim terms, Petitioner proposes, for purposes of this proceeding
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`only, that the terms road load (RL) and RL be construed as: “the instantaneous
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`torque required for propulsion of the vehicle, which may be positive or negative in
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`value.” (see Ex. 1113 at 14-15.) Based on the specification, prosecution history,
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`and admissions by the patentee, however, Ford’s position is that the construction
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`under the applicable standards in district court is more narrow, and Petitioner
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`reserves the right to present a narrower construction in district court litigation.
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`B.
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`Setpoint (SP) and SP (claims 80, 98, 99, 114, 131, 132, 161,
`215, 232 and 233)
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`1.
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`“Setpoint (SP)” and “SP”
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`Presently, 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 value
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`at which a transition between operating modes may occur.” (Ex. 1011 at 13; Ex.
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`1144 at 23.) In a pair of recent responses to inter partes petitions, the Patent
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`Owner maintained this to be the correct construction. (Ex. 1145 at 2-6; Ex. 1145 at
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`2-6.) The Petitioner disagrees that the Patent Owner’s proposed construction is the
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`broadest reasonable construction for this term as used in the challenged claims.
`
`2.
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`Setpoint (SP) in the ’634 Patent claims is a torque
`based value
`
`Whatever the term setpoint may mean in general, as used within the ’634
`
`Patent claims the term setpoint is a torque based value. First, the ’634 Patent and
`
`appended claims recite that the term setpoint is compared to the road load
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`requirements of the vehicle. For instance, Claims 33, 80, 114, 161, 215, 241, and
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`267 compare the setpoint against a torque-based road load value. Also, claims 1
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`and 23 of the ’347 Patent3 were amended during prosecution to include the
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`following language in order to overcome a prior art rejection:
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`and wherein the torque produced by said engine when operated at said
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`setpoint (SP) is substantially less than the maximum torque output
`
`(MTO) of said engine.
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`(Ex. 1117 at 9-10 & 15-16.)
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`Such language was added to overcome a rejection based on two prior art
`
`references. To overcome these references, the patentee argued that the engine was
`
`operated only when loaded “in excess of SP [setpoint], which is now defined to be
`
`
`3 Again, the’634 Patent is a direct divisional of the ’347 Patent.
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`‘substantially less than the maximum torque output (MTO) of said engine.’” (Ex.
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`1117 at 21-22, emphasis added.)
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`The claims, specification, and file history therefore define the term setpoint
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`is a “predetermined torque value.”
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`C.
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`“Low-load mode I,” “highway cruising mode IV,”
`“acceleration mode V” (Claims 99, 102, 132, 133, 161 and
`233)
`
`During the 2008 patent suit with Toyota, a Texas court construed these terms
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`as follows: (1) low-load mode I as “the mode of operation in which energy from
`
`the battery bank flows to the traction motor and torque (rotary force) flows from
`
`the traction motor to the road wheels;” highway cruising mode IV as “the mode of
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`operation in which energy flows from the fuel tank into the engine and torque
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`(rotary force) flows from the engine to the road wheels;” (3) acceleration mode V
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`as “the mode of operation in which energy flows from the fuel tank to the engine
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`and from the battery bank to at least one motor and torque (rotary force) flows
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`from the engine and at least one motor to the road wheels.” (Ex. 1113 at 15-17.)
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`Because inter partes review proceedings use the broadest reasonable
`
`construction of claim terms, Petitioner agrees with the above constructions
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`provided by the Texas court for this proceeding only. (See Ex. 1113 at 15-17.)
`
`Based on the specification, prosecution history, and admissions by the patentee,
`
`however, Ford’s position is that the construction under the applicable standards in
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`district court is narrower and Petitioner reserves the right to present a narrower
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`construction in district court litigation.
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`VIII. UNPATENTABILITY GROUNDS
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`The references below render the claimed subject matter invalid under 35
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`U.S.C. §§ 102 or 103, and the Petitioner therefore has a reasonable likelihood of
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`prevailing as to each of the following grounds of unpatentability. 35 U.S.C.
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`§ 314(a); 37 C.F.R. § 42.104(b)(4).
`
`A. GROUND 1: Claims 215, 228, 232, 233, 237 & 161 Are
`Anticipated and/or Obvious over Severinsky ’970
`
`The purported new ‘topology’ for a hybrid vehicle’ disclosed by the ’634
`
`Patent having “two-motors” was purported to be an improvement over the “one-
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`motor” hybrid vehicle disclosed by Severinsky ’970. (Ex. 1101 at 11:52 and 17:30-
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`36.) Specifically, the ’634 Patent states that it was eliminating the “torque-transfer
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`unit” of Severinsky ’970 by adding a second motor. (Ex. 1101 at 17:30-36.)
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`However, the challenged claims only require one motor and are not limited
`
`to the purportedly novel two-motor system. Petitioner contends that the challenged
`
`claims simply recite the method of controlling a hybrid vehicle previously
`
`disclosed by Severinsky ’970.
`
`The ’634 Patent also discloses a purportedly new “efficient” method of
`
`controlling a hybrid vehicle by using a set of operating modes that determine when
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`to operate the engine and motors. (Ex. 1101 at 35:3-9.)
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`Such efficient control, however, was disclosed by the prior art Severinsky
`
`’970 patent. In fact, the ’634 Patent itself admits that “the inventive control
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`strategy according to which the hybrid vehicles of the [’634 Patent] are operated”
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`is the same “as in the case of the hybrid vehicle system shown in [Severinsky
`
`’970].” (Ex. 1101 at 35:3-9 and 24:64-24:24.)
`
`Because Severinsky ’970 discloses each limitation recited by claims 215,
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`228, 232, 233, 237 and 161, Severinsky ’970 anticipates those claims under 35
`
`U.S.C. §102(b). To the extent the claim limitations are not anticipated by
`
`Severinsky ’970, the claims are obvious in view of the hybrid vehicle control
`
`method disclosed by Severinsky ’970 and the knowledge of one of ordinary skill in
`
`the art. (Ex. 1107, Davis ¶¶173-174.)
`
`1.
`
`Independent Claim 215
`
`…
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`[215.0] A method for controlling a hybrid vehicle, comprising:
`
`Severinsky ’970 is titled “Hybrid Electric Vehicle” and also claims a
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`“method of operating a hybrid electric vehicle.” (Ex. 1103 at 1-Abstract; Fig. 3;
`
`Claim 15.) Figure 3 of Severinsky ’970 also illustrates the “schematic diagram of
`
`the principal components of [the disclosed] … hybrid vehicle drive system,” as
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`annotated below. (Ex. 1103 at 7:45-46; Ex. 1107, Davis ¶¶177-178, 180-182.)
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`Ex. 1203, Severinsky ’970, Fig. 3, annotated
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`
`
`
`The ’634 Patent in fact admits that Severinsky ’970 discloses a hybrid
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`vehicle: “For example, according to the operating scheme of the hybrid vehicle
`
`disclosed in the [Severinsky] ’970 patent,. . .” (Ex. 1101 at 10:57-11:2, emphasis
`
`added; Ex. 1107, Davis ¶179.)
`
`…
`
`[215.1] determining instantaneous road load (RL) required to propel
`
`the hybrid vehicle responsive to an operator command
`
`Severinsky ’970 discloses that the “microprocessor 48” determines the road