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
`
`IPR Case No.: IPR2014-01416
`
`
`
`______________
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,237,634
`
`
`
`
`
`
`
`
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`
`Table of Contents
`
`
`Table of Authorities .................................................................................................. ii
`
`Updated Exhibit List ................................................................................................ iii
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Claim Construction .......................................................................................... 2
`
`III. A POSA would have understood that Severinsky ’970 teaches the
`engine, motor and setpoint limitations of the claims at issue, and
`therefore teaches “when” to operate the engine and motor ............................. 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Severinsky ’970 discloses the engine, motor and set point
`limitations .............................................................................................. 3
`The Severinsky ’970 admissions stated in the ’634 Patent are
`binding ................................................................................................... 8
`Additional disclosures in Severinsky ’970 reinforce that it
`teaches selecting modes using “road load” ........................................10
`Paice’s argument regarding “how” road load is determined is
`unsupported and flawed ......................................................................13
`Paice’s arguments about “output torque” and “output power and
`speed” ignore the well-known relationships between torque,
`power and speed, and misrepresent Ford’s position ...........................15
`
`IV.
`
`It would have been obvious to apply well-known hysteresis
`techniques to the control strategy of Severinsky ’970 ..................................17
`
`V.
`
`The challenged claims are obvious in view of Tabata ’201 ..........................19
`
`VI. Conclusion .....................................................................................................25
`
`Certificate of Service ...............................................................................................26
`
`
`
`i
`
`
`
`
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`
`
`
`Table of Authorities
`
`Cases
`
`Clearwater Systems Corp. v. Evapco, Inc.,
`
`394 Fed. Appx. 699 (Fed. Cir. 2010) ..........................................................8, 9
`
`Clearwater Systems Corp. v. Evapco, Inc.,
`
`596 F.Supp.2d 291 (D. Conn. 2009) ............................................................... 8
`
`Constant v. Advanced Micro–Devices, Inc.,
`
`848 F.2d 1560 (Fed. Cir. 1988) ....................................................................... 8
`
`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
`
`491 F.3d 1342 (Fed. Cir. 2007) ....................................................................... 8
`
`
`
`Rules
`
`37 CFR 1.104(c)(3) .................................................................................................... 8
`
`MPEP 2258 ................................................................................................................ 8
`
`
`
`
`
`
`
`ii
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`
`Updated Exhibit List
`
`
`
`Description
`
`Exhibit
`No.
`1101 U.S. Patent No. 7,237,634
`1102
`7,237,634 File History
`
`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
`1120 Curriculum Vitae of Gregory Davis
`1121
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`1996 Future Car Challenge
`
`1119
`
`1122
`
`
`
`iii
`
`Date
`
`Identifier
`
`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
`
`
`Feb. 1994
`
`Feb. 1997
`
`
`
`
`
`
`
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`
`Date
`
`Identifier
`
`Feb. 1998
`1998
`
`
`Feb. 24-28,
`1992
`April 9-11,
`1997
`April 1995
`Feb. 1998
`Feb. 1996
`Sept. 30, 1979
`June 1, 1971
`Sept. 1, 1988
`
`1996
`
`Feb. 1997
`
`Oct. 1996
`
`Feb. 1995
`Apr. 3, 2001
`
`
`Jan. 1998
`Filed Sept. 11,
`1998
`Nov. 25, 1998
`Oct.13, 1995
`August 11,
`1998
`
`July 11, 2014
`
`July 11, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Description
`
`Exhibit
`No.
`1997 Future Car Challenge
`1123
`1124 History of Hybrid Electric Vehicle
`(Wakefield-1998)
`SAE 760121 (Unnewehr-1976)
`SAE 920447 (Burke-1992)
`
`1125
`1126
`
`1134
`
`1127 Vehicle Tester for HEV (Duoba-
`1997)
`1128 DOE Report to Congress (1994)
`1129
`SAE SP-1331 (1998)
`1130
`SAE SP-1156 (1996)
`1131 DOE HEV Assessment (1979)
`1132
`EPA HEV Final Study (1971)
`1133 Microprocessor Design for HEV
`(Bumby-1988)
`Propulsion System for Design for
`EV (Ehsani-1996)
`Propulsion System Design for HEV
`(Ehsani-1997)
`1136 Bosch Automotive Handbook
`(1996)
`SAE SP-1089 (Anderson-1995)
`1137
`1138 U.S. Patent No. 6,209,672
`1139
`Introduction
`to
`Automotive
`Powertrain (Davis)
`Toyota Prius (Yamaguchi-1998)
`1140
`1141 US Application 60/100,095
`
`1135
`
`1142 WO 9323263A1 (Field)
`1143 U.S. Patent No. 6,098,733
`1144 Critical Issues in Quantifying HEV
`Emissions and Fuel Consumption
`(An-1998)
`from Patent Owner
`Excerpts
`Response (IPR2014-00571, Doc 8)
`Excerpts
`from Patent Owner
`Response (IPR2014-00579, Doc 8)
`
`1145
`
`1146
`
`
`
`iv
`
`

`
`Description
`
`Exhibit
`No.
`1147 Reply Dec. of Gregory Davis
`1148 Oral Transcript for IPR2014-570,
`571, 579, 884, 875, and 904
`1149 Deposition Transcript of Neil
`Hannemann for IPR2014-571
`1150 Deposition Transcript of Neil
`Hannemann for IPR2014-904
`1151 Deposition Transcript of Neil
`Hannemann for IPR2014-875
`1152 Deposition Transcript of Gregory
`Davis for IPR2014-571
`1153 Deposition Transcript of Neil
`Hannemann for IPR2014-1416
`1154 Deposition Transcript of Neil
`Hannemann for IPR2014-884
`1155 USPN 3,104,347
`1156
`Ex. 11 to Deposition Transcript of
`Neil Hannemann for IPR2014-884
`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`
`Date
`
`Identifier
`
`n/a
`July 1, 2015
`
`Davis Reply
`Transcript
`
`April 7, 2015
`
`571 Dep.
`
`May 1, 2015
`
`904 Dep.
`
`April 30, 2015 875 Dep.
`
`Jan. 13, 2015
`
`Davis 571 Dep.
`
`Sept. 4, 2015
`
`1416 Dep.
`
`April 30, 2015 884 Dep.
`
`Sept. 12, 2006
`April 30, 2015
`
`’347 Patent
`
`
`
`
`v
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`
`I.
`
`Introduction
`
`This petition addresses four independent claims (80, 114, 161 and 215) and
`
`17 associated dependent claims. Paice only argues that certain limitations from
`
`independent claims 80, 114, 161 and 215 are not satisfied. Paice provides no
`
`separate argument that the 17 dependent claims are patentable over the prior art.
`
`For Grounds 1 and 2, Ford argued that independent claims 80, 114, 161 and
`
`215 are unpatentable on Severinsky ’970. Paice has responded that Ford is
`
`misapplying Severinsky ’970 because the control strategy claimed in the ’634
`
`Patent is based on “road load” (i.e., required torque) and Severinsky ’970’s control
`
`strategy is “based on speed.” (See e.g., Patent Owner Response (POR) at 7.) Paice
`
`repeats this speed vs. torque argument to argue that Severinsky ’970 does not teach
`
`“when” to operate the engine as claimed by the ’634 Patent. But as addressed in
`
`Section III below, Severinsky ’970 expressly teaches “when” to operate the motor
`
`and engine based on the required torque – i.e., using “road load.”
`
`Claims 80 and 114 include a time-based “hysteresis” limitation that Paice
`
`argues is not disclosed or rendered obvious by either Severinsky ’970 or Frank.
`
`(POR at 16-24 & 48.) As detailed in Section IV below, it is undisputed that time-
`
`based hysteresis is a well-known technique employed within hybrid vehicle control
`
`strategies, as exemplified by the Frank reference. It therefore would have been
`
`obvious to apply well-known hysteresis principles to the torque-based control
`
`
`
`1
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`strategy described in Severinsky ’970 thereby satisfying the limitations of claims
`
`80 and 114.
`
`Regarding Ground 3, Ford relies on Tabata ’201. Paice argues: (1) the
`
`control strategy of Tabata ’201 is based on power; (2) the ’634 Patent claims a
`
`control strategy based on torque; and (3) a POSA would have understood that
`
`power and torque are fundamentally different. But Paice’s own argument admits
`
`that a POSA knows and understands the differences/benefits of both. Paice’s own
`
`arguments reinforce Ford’s position that it would have been obvious for a POSA to
`
`modify the power based control of Tabata ’201, because power and speed are
`
`related by the well-known relationship where Power = Torque * Speed. And, a
`
`POSA would have been merely modifying a known technique based on known
`
`benefits. In any event, Tabata ’201 links power and torque, so it would have been
`
`obvious based on Tabata ’201 alone. Ford addresses Paice’s response regarding
`
`Tabata ’201 in Section V below.
`
`II. Claim Construction
`
`As in earlier IPRs concerning similar claims, there are two claim
`
`construction issues. First, Paice challenges Ford’s proposed construction of the
`
`claimed “setpoint” limitation. (POR at 3-6.) Paice argues that the Board should
`
`have construed setpoint as a value “at which a transition between operating modes
`
`may occur.” (POR at 6.) But Paice’s own arguments undercut its construction.
`
`
`
`2
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`Paice also states that “‘setpoint’ marks the amount of ‘road load’ at which the
`
`claimed control system actively changes the vehicle from one mode to another.”
`
`(POR at 5.) Yet Paice’s construction only states that a “transition. . . may occur.”
`
`(POR at 5-6.) If the transition “may occur,” then it may not occur, and “setpoint” is
`
`meaningless—i.e., it does not mark any transition point. For this reason, the Board
`
`should adopt Ford’s proposed construction. However, if the Board adopts Paice’s
`
`proposed “transition. . . may occur” language, it would not affect the analysis in
`
`this IPR as the prior art presented would meet either construction.
`
`Second, the disputed limitations use the term “RL” or “road load.” In its
`
`Petition, Ford proposed the term to mean: “the instantaneous torque required for
`
`propulsion of the vehicle, which may be positive or negative in value.” (Petition at
`
`11-12.) Paice does not oppose this construction. And during oral arguments on a
`
`prior IPR related to the ’634 Patent, Paice agreed that “road load” means: “the
`
`instantaneous torque required to propel the vehicle.” (Ex. 1148, Transcript at
`
`39:14-17.) Accordingly, Ford applies this construction herein.
`
`III. A POSA would have understood that Severinsky ’970 teaches the
`engine, motor and setpoint limitations of the claims at issue, and
`therefore teaches “when” to operate the engine and motor
`
`A.
`
`Severinsky ’970 discloses the engine, motor and set point
`limitations
`
`Paice argues that the “critical difference” why the ’634 Patent is patentable
`
`is because Severinsky ’970 teaches a control strategy that operates the engine
`
`
`
`3
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`“based on the speed of the vehicle.” (POR at 17.) Paice argues that because
`
`Severinsky ’970 is a speed-based control strategy, it does not determine “when” to
`
`operate the motor and engine using the recited “setpoint” as shown by the
`
`following limitations common to each challenged independent claim:
`
`motor limitation: “operating at least one electric motor to propel the
`
`hybrid vehicle when the RL required to do so is less than a setpoint
`
`(SP)”1
`
`engine limitation: “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”2
`
`But reading Severinsky ’970 in context, a POSA would have understood that
`
`it teaches the above limitations. For instance, a first passage (“Passage 1”) from
`
`Severinsky ’970 reads:
`
`It will be appreciated that according to the invention the internal
`
`combustion engine is run only in the near vicinity of its most efficient
`
`
`1 This limitation is repeated in claim 80.3, 114.3, 161.3, and 215.2 (emphasis
`
`added).
`
`2 This limitation is repeated in claim 80.4, 114.5, 161.5, and 215.3 (emphasis
`
`added).
`
`
`
`4
`
`

`
`operational point, that is, such that it produces 60-90% of its
`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`
`maximum torque whenever operated.
`
`(Ex. 1103 at 20:63-67, emphasis added.)
`
`Passage 1 is relevant because: (1) it states that the engine should be run only
`
`near its most efficient range, and (2) it defines that most efficient range as 60-90%
`
`of its maximum torque output (“MTO”). (Ex. 1107, Davis at ¶¶226-235.) A
`
`second passage (“Passage 2”) from Severinsky ’970 states:
`
`When the engine can be used efficiently to drive the vehicle forward,
`
`e.g.
`
`in highway cruising,
`
`it
`
`is so employed. Under other
`
`circumstances, e.g. in traffic, the electric motor alone drives the
`
`vehicle forward and the internal combustion engine is used only to
`
`charge the batteries as needed. (Ex. 1103 at 7:11-16, emphasis added.)
`
`Passage 2, when read in context with Passage 1, discloses the “engine” and
`
`“motor” limitations. More specifically, read in context Severinsky ’970 states:
`
`“when the engine can be used efficiently to drive the vehicle forward” – which is
`
`defined in Passage 1 as times when “it produces 60-90% of its [MTO]” – “it is so
`
`employed.” (Ex. 1107, Davis at ¶¶226-235.) And Passages 1 and 2 expressly state
`
`that the motor is run in “other circumstances” (i.e., “when the engine can[not] be
`
`used efficiently”). Passage 1 clarifies that the motor is run at times when the
`
`engine (if operated) would produce less than 60% of its MTO. (Ex. 1107, Davis at
`
`¶¶203-214; Ex. 1103 at 7:11-16.)
`
`
`
`5
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`Passage 1 also describes the use of a “setpoint” for selecting when to run the
`
`motor or engine. As Ford stated within its Petition, “setpoint” as used in the recited
`
`claim should be construed as a “predetermined torque value that may or may not
`
`be reset.” (Petition at 13-14.) And as each independent claim recites, the “setpoint
`
`(SP)” is the lower bound of the range where the engine is efficient (“wherein the
`
`engine is operable to efficiently produce torque above the SP”). Passage 1
`
`describes this exact concept – a predetermined torque value (60% of MTO) that
`
`defines the lower bound of efficient engine operation:
`
`It will be appreciated that according to the invention the internal
`
`combustion engine is run 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.
`
`(Ex. 1103 at 20:63-67, emphasis added; see also Ex. 1107, Davis at ¶¶203-214,
`
`226-235, 272-273, 286-292.)
`
`Paice accuses Ford of attempting to “recast” Severinsky ’970 “based on a
`
`few selected statements taken out of context.” (POR at 8.) But the inventor of the
`
`’634 patent characterized “the invention of [Severinsky] ’970 patent” just like
`
`Ford:
`
`According to an important aspect of the invention of the
`
`[Severinsky] ’970 patent, substantially improved efficiency is
`
`afforded by operating the internal combustion engine only at
`
`relatively high torque output levels, typically at least 35% and
`
`
`
`6
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`
`preferably at least 50% of peak torque. When the vehicle operating
`
`conditions require torque of this approximate magnitude, the engine
`
`is used to propel the vehicle [engine limitation]; when less torque is
`
`required, an electric motor powered by electrical energy stored in a
`
`substantial battery bank drives the vehicle [motor limitation]; when
`
`more power is required than provided by either the engine or the
`
`motor, both are operated simultaneously. The same advantages are
`
`provided by the system of the present invention . . .
`
`(Ex. 1101 at 25:11-23, emphasis added.)
`
`Quoting only portions of Passage 1, Paice repeatedly argues: (1) Severinsky
`
`’970 discloses only “how” to run the engine, not “when” to run the engine. (POR
`
`at 8, 10-11, 13); and (2) that the 60-90% of MTO teaching is only “aspirational.”
`
`(POR at 8-10, 15, 20, 34, 46.) But Ford does not rely solely on Passage 1, and a
`
`POSA would not have limited their understanding of Severinsky ’970 solely to
`
`Passage 1. (Petition at 22-23.) When considered in total, a POSA would have
`
`instead understood that Severinsky ’970 discloses “when” to run the engine and
`
`motor. (Ex. 1107, Davis at ¶¶203-214, 226-235, 272-273, 286-292.) The inventor’s
`
`own admissions in the ’634 Patent confirm that a POSA would have agreed with
`
`Ford’s understanding. A POSA therefore would not have concluded that
`
`Severinsky ’970 uses only speed to determine when to employ the engine.
`
`7
`
`
`
`
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`
`B.
`
`The Severinsky ’970 admissions stated in the ’634 Patent
`are binding
`
`The law is clear that the admissions about Severinsky ’970 stated in the ’634
`
`Patent 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); 37 CFR 1.104(c)(3); MPEP 2258.
`
`But Paice tries to avoid the admissions by arguing inaccurately that Ford is
`
`relying on them as “prior art.” (POR at 40-44.) Paice specifically relies on
`
`Clearwater Systems Corp. v. Evapco, Inc., 394 Fed. Appx. 699 (Fed. Cir. 2010) for
`
`the proposition that “it is legally impermissible for Ford to rely on portions of the
`
`’634 patent as evidence of what is actually disclosed in Severinsky.” (POR at 42.)
`
`Clearwater does not stand for Paice’s proposition. In Clearwater, the
`
`Federal Circuit reversed a district court that had found summary judgement of
`
`anticipation by inherency. The district court had held that a prior art patent
`
`inherently anticipated a method claimed in the patent-in-suit. But the district court
`
`relied solely on disclosures in the patent-in-suit stating that the prior art patent
`
`could be used to practice the claimed method. Clearwater Systems Corp. v.
`
`Evapco, Inc., 596 F.Supp.2d 291, 311-313 (D. Conn. 2009). The district court
`
`prepared a claim chart that cited only portions of the specification of the patent-in-
`
`suit, id., and then stated: “The text of the [patent-in-suit] specification makes clear
`
`
`
`8
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`that inherent in the [prior art patent], when practiced, is the method and results
`
`claimed in the [patent-in-suit].” Id. at 313.
`
`On appeal, the Federal Circuit reversed the district court’s ruling as being
`
`legally flawed. Clearwater Systems, 394 Fed. Appx. at 705-706. And the Federal
`
`Circuit held: “the district court erred in comparing the claim language of the
`
`[patent-in-suit] with the description of the [prior art patent] contained in the written
`
`description of the [patent-in-suit].” Id. at 705.
`
`Ford’s analysis of Severinsky ’970 and the admissions in the patent-in-suit
`
`bears no resemblance to the district court analysis rejected by the Federal Circuit in
`
`Clearwater. First, throughout its Petition and the current Reply, Ford relies on
`
`excerpts and figures from Severinsky ’970 for establishing unpatentability of the
`
`challenged claims. In contrast, the Clearwater district court relied solely on
`
`excerpts from the patent-in-suit. Second, Ford relies on the patent-in-suit
`
`characterizing what the prior art Severinsky 970 actually discloses, to show how a
`
`POSA would have understood Severinsky ’970. The Clearwater district court
`
`however used statements in the patent-in-suit regarding how the prior art could be
`
`used as “proof” that such use was prior art.
`
`Paice also tries to discount these admissions by asserting that the ’634 patent
`
`is inconsistent because Severinsky ’970 discloses operating between 60-90% of
`
`MTO, while the ’634 patent allegedly discloses a range of 35-50%. (POR at 41;
`
`
`
`9
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`Ex. 2104, Hannemann Dec. at ¶139.) But Mr. Hannemann has previously admitted
`
`that the ’634 patent specification does not describe a range of operation of 35-
`
`50%. (Ex. 1149, 571 Dep. at 94:14-95:7; 98:5-11.) The ’634 patent describes two
`
`alternative low ends – 35% or 50% – of the range of operation. (Id.) There is
`
`nothing inconsistent between the ’634 Patent describing 50% as the low end for
`
`“improved efficiency” (Ex. 1101 at 25:11-15), and Severinsky ’970 describing
`
`60% as the low end of the “most efficient” (Ex. 1103 at 20:66) range of operation.
`
`Finally, Paice tries to rely on its own statements in the prosecution history of
`
`a related patent to refute the admissions in the ’634 patent. (POR at 39-40.)
`
`Beyond the fact that Paice cannot rely on its own statements because they are
`
`hearsay, the self-serving statements cannot negate the prior admissions in the ’634
`
`patent at issue.
`
`C. Additional disclosures in Severinsky ’970 reinforce that it
`teaches selecting modes using “road load”
`
`As explained
`
`in
`
`the previous section, Severinsky ’970
`
`teaches a
`
`microprocessor that considers the instantaneous torque required to propel the
`
`vehicle for mode selection. (See e.g., Ex. 1103 at 14:15-18.) And a POSA would
`
`have understood that Severinsky ’970 uses the required torque to determine mode
`
`selection.
`
`First, Mr. Hannemann has previously admitted that Severinsky ‘970 teaches
`
`the microprocessor “activating [the] electric motor based on the torque required.”
`
`
`
`10
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`(Ex. 1150, 904 Dep. at 10:15-11:11, emphasis added.) Severinsky ‘970 confirms
`
`this admission – disclosing that the microprocessor “activates electric motor 20” to
`
`enter the acceleration/hill-climbing mode “when torque in excess of the
`
`capabilities of engine 40 is required.” (Ex. 1103 at 14:15-18, emphasis added.) Mr.
`
`Hannemann further admitted that at any point in time, the ’970 microprocessor is
`
`“determining how much torque the motor and/or the engine should be generating,
`
`[and] it's doing so based on what the microprocessor concludes is required at that
`
`point in time.” (Ex. 1149, 571 Dep. at 112:11-113:3, emphasis added; see also Ex.
`
`1107, Davis at ¶¶187-197 and Ex. 1147, Davis Reply at ¶¶8-9.)
`
`Second, Severinsky ’970 employs a motor-plus-engine “acceleration/hill
`
`climbing” mode, which is road-load-based because both experts agree it can occur
`
`at any speed and it requires increased torque to propel the vehicle regardless of the
`
`vehicle’s speed. (Ex. 1149, 571 Dep. at 102:7-12 (acceleration/hill climbing can
`
`occur at any speed), 104:10-16 (acceleration requires more torque), and 105:16-
`
`106:4 (hill climbing requires more torque); Ex. 1103, 14:15-18; Ex. 1107, Davis at
`
`¶¶185-197; Ex. 1147, Davis Reply at ¶¶5-14.) Thus, Severinsky ’970 discloses a
`
`microprocessor that compares the instantaneous torque required to propel the
`
`vehicle with the torque capabilities of the engine (i.e., setpoint) to determine the
`
`vehicle mode.
`
`Third, Severinsky ’970’s description of motor-engine transition further
`
`
`
`11
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`confirms it uses the instantaneous torque required to propel the vehicle to
`
`determine when to employ the engine. If, as Paice asserts, Severinsky ’970
`
`transitions from motor to engine based solely on speed, then it would state that at a
`
`certain speed the controller starts the engine and turns off the motor. Instead,
`
`Severinsky ’970 transitions from motor to engine when the “operator continues to
`
`command acceleration” – indicating increased torque demands, not speed. (Ex.
`
`1103, 10:66-11:6; Ex. 1147, Davis Reply at ¶13.) And when the operator
`
`“continues to command acceleration,” Severinsky ’970 does not describe starting
`
`the engine and stopping the motor. Severinsky ’970 instead states that the vehicle
`
`first enters road-load-based “acceleration/hill climbing mode” (motor and engine)
`
`before entering the higher speed “highway cruising” (engine only) mode.
`
`FIG. 4 illustrates operation in low speed circumstances, e.g., in city
`
`traffic or reversing. . . . Under these circumstances, electric motor 20
`
`provides all of the torque needed to move the vehicle. Other
`
`combinations of torque and energy flow required under other
`
`circumstances are detailed below in connection with FIGS. 5-9. For
`
`example, if the operator continues to command acceleration, an
`
`acceleration/hill climbing mode illustrated in FIG. 6 may be
`
`entered, followed by a highway cruising mode illustrated in FIG.
`
`5.
`
`
`
`12
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`(Ex. 1103 at 10:52-53, 10:63-11:6 (emphasis added); see also 14:22-35
`
`(acceleration/hill climbing mode uses engine and motor for high torque); Ex. 1147,
`
`Davis Reply at ¶¶5-14; Ex. 1107, Davis at ¶¶187-197.)
`
`Finally, Paice cites situations where Severinsky ’970 refers to how the
`
`vehicle operates at certain speeds. (See e.g., POR at 7-8.) But Paice’s own expert
`
`acknowledges that absent significant hills or acceleration, torque and speeds are
`
`proxies because “higher vehicle speeds generally require higher torques.” (Ex.
`
`2104 at ¶138; see also Ex. 1147, Davis Reply at ¶18.) Indeed, the ’634 Patent also
`
`describes transitions “from low-speed” motor mode “to highway cruising” engine
`
`mode when the microprocessor senses “a continued operator request for more
`
`power.” (Ex. 1101 at 36:24-29.) And when Paice/Severinsky distinguished
`
`“speed”-based prior art in the ’634 patent, they did not mention the ’970 patent.
`
`(Ex. 1101 at 13:5-17.)
`
`D.
`
`Paice’s argument regarding “how” road load is determined
`is unsupported and flawed
`
`Paice argues on pages 28-29 that Severinsky ‘970 does not teach the “road
`
`load” because it allegedly determines the required torque based on pedal position.3
`
`
`3 Paice also argues that U.S. Patent No. 5,842,534 (Frank) teaches a mode control
`
`strategy based on pedal position alone. (POR at 29-30, Footnote 9.) According to
`
`Paice, determining “how much torque the engine and motor should generate based
`
`
`
`13
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`But “road load” as Paice agreed is “the instantaneous torque required to propel the
`
`vehicle.” (Ex. 1148, Transcript at 39:14-17.) This construction does not require any
`
`specific method of determining road load. Further, Paice and its expert have
`
`admitted that the ‘634 patent does not state how one determines road load. (Ex.
`
`1149, 571 Dep. at 61:6-62:5; see also Ex. 1151, 875 Dep. at 48:9-16, 49:13-50:8,
`
`50:24-51:8, 62:25-63:5.)
`
`In fact, the ’634 Patent provides an example that a microprocessor may
`
`determine increases in “road load” or decreases in “road load” based on the
`
`accelerator/brake pedal inputs.
`
`The ’817 and ’743 applications4 also disclose that the vehicle
`
`operating mode is determined by a microprocessor responsive to
`
`the “road load”, that is, the vehicle's instantaneous torque demands,
`
`i.e., that amount of torque required to propel the vehicle at a desired
`
`speed. The operator's input, by way of the accelerator or brake pedals,
`
`or a “cruise control” device, indicates that continuing at steady speed
`
`
`purely on correlating the engine and motor output to the pedal position” is not the
`
`claimed control strategy that is determines when to operate the engine and motor
`
`based on “road load.” (Id.; Ex., 2104, Hannemann Dec. at ¶124.)
`
`4 The ’817 and ’743 applications are the parent applications (U.S. Patent Nos.
`
`6,209,672 and 6,338,391, respectively) which the ’634 Patent claims priority. (Ex.
`
`1101 at “Related U.S. Application Data.”)
`
`
`
`14
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`
`is desired, or that a change in vehicle speed is called for. For
`
`example, the operator's depressing the accelerator pedal signifies
`
`an increase in desired speed, i.e., an increase in road load, while
`
`reducing the pressure on the accelerator or depressing the brake
`
`pedal signifies a desired reduction in vehicle speed, indicating that
`
`the torque being supplied is to be reduced or should be negative.
`
`(Ex. 1101 at 12:42-55.)
`
`Regardless, Severinsky ’970 evaluates more than just pedal position. For
`
`instance, Figure 3 of Severinsky ’970 illustrates a microprocessor that monitors
`
`“operator commands” that include pedal position, as well as, engine speed, motor
`
`speed, battery SOC and temperature. And Severinsky ’970 expressly states that
`
`these monitored variables are used by the microprocessor to “determine[] whether
`
`the internal combustion engine or the electric motor or both should provide torque
`
`to the wheels.” (Ex. 1103 at 6:19-26; Ex. 1107, Davis at ¶¶185-186.) Severinsky
`
`’970 therefore determines “road load” and the Board should dismiss Paice’s
`
`arguments regarding how “road load” may be calculated.
`
`E.
`
`Paice’s arguments about “output torque” and “output
`power and speed” ignore the well-known relationships
`between torque, power and speed, and misrepresent Ford’s
`position
`
`Paice also tries to assert that Severinsky ’970’s disclosures should be
`
`ignored because they allegedly relate to “output torques.” (POR at 10, 13-14.) But
`
`a POSA would have understood that when Severinsky ’970 discloses determining
`
`
`
`15
`
`

`
`Case No.: IPR2014-01416
`Attorney Docket No.: FPGP0104IPR3
`
`output torque, it is related to “the instantaneous torque required to propel the
`
`vehicle.” Mr. Hannemann admitted that “when the microprocessor in the ’970
`
`patent is determining how much torque the motor and/or the engine should be
`
`generating [output torque] it's doing so based on what the microprocessor
`
`concludes is required at that point in time.” (Ex. 1149, 571 Dep. at 112:18-113:3,
`
`emphasis added.)
`
`Paice also quotes Dr. Davis referencing Severinsky ’970 disclosures on
`
`“conditions of output power and speed.” (POR at 14, citing Ex. 1107, Davis at
`
`¶226.) Here again, Paice gives the POSA no credit. Mr. Hannemann acknowledged
`
`that a POSA understood that torque, power and speed have a simple known
`
`relationship: power = torque * speed. (Ex. 1149, 571 Dep. at 31:6-13.) Thus, as Dr.
`
`Davis explained during a prior deposition, referencing the same paragraphs quoted
`
`by Paice, a condition of “output power and speed” is easily converted to a torque.
`
`(Ex. 1152, Davis 571 Dep. at 165:11-166:2.)
`
`Paice also mischaracterizes Ford’s pos