`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owners.
`
`______________
`
`
`U.S. Patent No. 7,237,634 to Severinsky et al.
`IPR Case No. IPR2015-00606
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF DR. JEFFREY L. STEIN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW UNDER
`35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
` OF CLAIMS 56-65, 68-77, 242-251, 268-277, 292, 293 AND 298
`OF U.S. PATENT NO. 7,237,634
`
`Page 1
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`
`TABLE OF CONTENTS
`
`
`
`I.
`
`Introduction ...................................................................................................... 8
`
`A.
`
`Engagement ........................................................................................... 8
`
`B.
`
`C.
`
`Background and Qualifications ............................................................. 8
`
`Compensation and Prior Testimony ....................................................11
`
`D. Materials and Information Considered ................................................11
`
`II.
`
`RELEVANT LEGAL STANDARDS ...........................................................12
`
`A. General ................................................................................................12
`
`B.
`
`C.
`
`Priority Dates for Claimed Subject Matter..........................................13
`
`Claim Construction Standard ..............................................................14
`
`D. Anticipation .........................................................................................15
`
`E.
`
`Obviousness .........................................................................................16
`
`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND IN THE RELEVANT TIMEFRAME ..................................................19
`
`IV. STATE OF THE ART as of 2001 .................................................................21
`
`A. HEV Architecture ................................................................................21
`
`1.
`
`2.
`
`3.
`
`Series HEVs ..............................................................................23
`
`Parallel HEVs ............................................................................24
`
`Series-Parallel HEVs ................................................................25
`
`Controls ...............................................................................................27
`
`Electrical Characteristics .....................................................................29
`
`B.
`
`C.
`
`V.
`
`THE ‘634 PATENT .......................................................................................32
`
`Page 2
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`
`
`A.
`
`The Challenged Claims .......................................................................32
`
`B.
`
`C.
`
`Prosecution History of the ‘634 Patent ...............................................44
`
`Construction of Terms in the Challenged Claims ...............................46
`
`D.
`
`Effective Filing Date of the Challenged Claims .................................48
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`The ‘634 Patent’s Priority Claim ..............................................48
`
`Introduction of New Subject Matter on April 2, 2001
`Under “Further
`Improvements According
`to
`the
`Continuation-in-Part” ................................................................51
`
`is
`The Max Voltage-to-Current Ratio Limitation
`Unsupported Prior to April 2, 2001 ..........................................53
`
`The Maximum DC Voltage Limitation Is Unsupported
`Prior to April 2, 2001 ................................................................61
`
`The Maximum Current Limitation Is Unsupported Prior
`to April 2, 2001 .........................................................................66
`
`6.
`
`Vague Incorporation By Reference ..........................................68
`
`VI. PATENTABILITY ANALYSIS OF THE CHALLENGED CLAIMS ........70
`
`A. Overview of the Prior Art ....................................................................70
`
`1.
`
`2.
`
`PCT Publication No. WO00/015455 ........................................70
`
`U.S. Patent No. 5,343,970 (“Severinsky ‘970”) .......................73
`
`B.
`
`Ground 1: Claims 56-65, 68-77, 242-251, 268-277, 292, 293
`and 298 are Obvious Over the ’455 PCT Publication in View of
`Severinsky ’970 ...................................................................................74
`
`1.
`
`2.
`
`3.
`
`Non-Challenged Independent Base Claims ..............................75
`
`Challenged Dependent Claims ................................................120
`
`Challenged Independent Claims (and Dependent Claim
`293) .........................................................................................175
`
`Page 3
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`4.
`
`Rationale to Combine the ‘455 PCT Publication and
`Severinsky ‘970.......................................................................199
`
`VII. OBJECTIVE EVIDENCE OF NONOBVIOUSNESS ...............................204
`
`VIII. CONCLUSION ............................................................................................205
`
`
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`Page 4
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`
`EXHIBIT LIST
`
`Description
`
`Identifier
`
`Exhibit
`
`No.
`
`1151
`1152
`1153
`
`1154
`1155
`1156
`
`1157
`
`1158
`
`U.S. Patent No. 7,237,634
`Declaration of Dr. Jeffrey L. Stein
`PCT Publication No. WO00/015455
`
`U.S. Patent No. 5,343,970
`Ford’s letter to Paice dated September 22, 2014
`Paice, LLC et al. v. Ford Motor Co. 1:14-cv-00492
`
`Ford Motor Co v. Paice LLC, Case IPR2014-00568,
`Paper 12 (P.T.A.B. Sept. 8, 2014) (Decision
`Denying Institution of Inter Partes Review)
`U.S. Provisional Application No. 60/100,095
`
`‘634 Patent
`Stein Decl.
`‘455 PCT
`Publication
`Severinsky ‘970
`Ford Letter
`MD Ct.
`Decision
`IPR2014-00568
`Decision
`
`‘095 Provisional
`Application
`‘296 Provisional
`Application
`‘088 CIP Patent
`‘866 CIP
`Application
`‘817
`Application
`‘743
`Application
`‘634 File
`History
`‘762
`Application
`IPR2014-00570
`Decision
`
`Yamaguchi
`Paper
`
`GE Final
`Report
`
`1159
`
`U.S. Provisional Application No. 60/122,296
`
`1160
`1161
`
`U.S. Patent No. 6,554,088
`U.S. Application No. 09/822,866
`
`1162
`
`U.S. Application No. 09/264,817
`
`1163
`
`U.S. Application No. 09/392,743
`
`1164
`
`File History for U.S. Patent No. 7,237,634
`
`1165
`
`U.S. Application No. 11/229,762
`
`1166
`
`1167
`
`1168
`
`Ford Motor Co v. Paice LLC, Case IPR2014-005708,
`Paper 10 (P.T.A.B. Sept. 30, 2014) (Decision Denying
`Institution of Inter Partes Review)
`Kozo Yamaguchi et al., Development of a New
`Hybrid System – Dual System, SAE Technical Paper
`960231 (February 1996).
`http://papers.sae.org/960231/
`General Electric Company, Corp. Research & Dev.,
`Near-Term Hybrid Vehicle Program, Final Report -
`
`Page 5
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`
`
`Exhibit
`
`No.
`
`Description
`
`Identifier
`
`1169
`1170
`1171
`
`1172
`1173
`1174
`
`1175
`
`1176
`
`1177
`
`1178
`
`1179
`
`1180
`
`Phase 1 (October 1979).
`http://ntrs.nasa.gov/search.jsp?R=19800017707
`U.S. Patent No. 3,888,325
`U.S. Patent No. 4,335,429
`Cimline, Inc. v. Crafco. Inc., No. 2010-1348 (Fed.
`Cir. Opinion March 2, 2011)
`Curriculum Vitae of Dr. Jeffrey L. Stein
`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).
`http://www.osti.gov/scitech/biblio/516019
`Society of Automotive Engineers Special Publication,
`Technology for Electric and Hybrid Vehicles, SAE
`SP-1331 (February 1998)
`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).
`http://papers.sae.org/950493/
`L. E. Unnewehr et al., Hybrid Vehicle for Fuel
`Economy, SAE Technical Paper 760121 (1976).
`http://papers.sae.org/760121/
`Case No. IPR2014-00568, Paper 8, Patent Owner’s
`[Redacted] Preliminary Response to Petition for Inter
`Partes Review of U.S. Patent No. 7,455,134 (July 11,
`2014)
`Performance Characterization Chevrolet S-10
`Electric, Panasonic Lead-Acid Battery, Southern
`California Edison Electrical Transportation Division
`(December 1999).
`http://avt.inel.gov/pdf/fsev/sce_rpt/s10pbareport.p
`df
`Tesla Motors Website,
`www.teslamotors.com/roadster/specs, retrieved
`October 31, 2014.
`
`Reinbeck
`Kawakatsu
`Cimline
`
`Dr. Stein CV
`Pieper
`Duoba
`
`SAE SP-1331
`
`Anderson
`
`Unnewehr
`
`IPR2014-00568
`Redacted PO
`Prelim.
`Response
`S10
`Performance
`Report
`
`Tesla Roadster
`Performance
`Specs
`
`Page 6
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`Exhibit
`
`No.
`
`1181
`
`1182
`
`1183
`
`1184
`
`1185
`1186
`1187
`
`Description
`
`Identifier
`
`GM Press Release, Corvette Stingray: 3.8 seconds
`from 0 to 60 mph, GM News Website,
`http://media.gm.com/media/us/en/gm/news.detail.
`html/content/Pages/news/us/en/2013/Jun/0620-
`corvette-performance.html (June 20, 2013), retrieved
`November 1, 2014.
`Gene Berdichevsky et al., The Tesla Roadster Battery
`System, Tesla Motors, Inc. (August 16, 2006).
`http://large.stanford.edu/publications/coal/referenc
`es/docs/tesla.pdf
`Will Dron, Roadster 2.5 Sport – Road Test, The
`Charging Point Website,
`http://www.thechargingpoint.com/manufacturers/te
`sla/roadster-2.5-sport-roadtest.html#roadTest (July
`18, 2011), retrieved November 1, 2014.
`U.S. Patent Application No. 10/382,577
`
`U.S. Patent No. 6,209,672
`U.S. Patent No. 6,338,391
`Comparison of ‘455 PCT Publication and ‘634 Patent
`Descriptions
`
`GM Press
`Release
`
`Tesla Roadster
`Battery
`
`Tesla Roadster
`Road Test
`
`‘577
`Application
`‘672 Patent
`‘391 Patent
`‘455/‘634
`Description
`Comparison
`
`
`
`
`
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`
`I.
`
`INTRODUCTION
`
`A.
`
`Engagement
`
`1. My name is Jeffrey L. Stein. I have been retained by counsel for Ford
`
`Motor Company (“Ford”) as an expert witness in the above-captioned proceeding. I
`
`have been asked to provide analysis and my opinion about the state of the art of the
`
`technology described in U.S. Patent No. 7,237,634 (“the ‘634 Patent,” Ex. 1151) and
`
`on the patentability of claims 56-65, 68-77, 242-251, 268-277, 292, 293 and 298 (“the
`
`challenged claims”) of the ‘634 Patent.
`
`B.
`
`2.
`
`Background and Qualifications
`
`I am currently a Professor of Mechanical Engineering at the University
`
`of Michigan, Ann Arbor Campus, and the former Associate Director of the
`
`Automotive Research Center at the University of Michigan. I have studied, taught
`
`and/or practiced in the relevant hybrid electric vehicle (HEV) control technology for
`
`over 20 years.
`
`
`
`3.
`
`I received my Ph.D. degree
`
`in Mechanical Engineering from
`
`Massachusetts Institute of Technology in 1983. I received a Masters of Science degree
`
`in Mechanical Engineering and a Bachelors of Science degree in Mechanical
`
`Engineering from Massachusetts Institute of Technology in 1976.
`
`4.
`
`In my capacity as a Professor, I teach undergraduate and graduate
`
`courses in mechanical design, dynamics, systems and control engineering. In my
`
`capacity as a Professor, I also do research in the area of automotive system design and
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`control as well as machine design and control. In several of my research projects, my
`
`students and I discovered unique ways to model, design and control automotive
`
`powertrains including hybrid powertrains.
`
`5.
`
` In addition to being the former Associate Director of the Automotive
`
`Research Center at the University of Michigan, I am also the former Principle
`
`Investigator (PI) of the project “A Multi-Scale Design and Control Framework for
`
`Dynamically Coupled Sustainable and Resilient Infrastructures, with Application to
`
`Vehicle-to-Grid Integration.” I am currently the PI of a project “Sustainable
`
`Transportation for a 3rd Century: An Interdisciplinary Approach to Addressing the
`
`Last Mile Problem for Enhanced Accessibility.” In my work at the Automotive
`
`Research Center, and on these projects, I have developed computer–based methods
`
`for facilitating the design evaluation of automotive powertrains including hybrid
`
`powertrains.
`
`6.
`
` From 1983 through 1987 and 1991 through the present, I have also
`
`worked as an Independent Consultant concentrating in the area of design and risk
`
`analysis of mechanical systems and manufacturing machines. Much of this work is
`
`particularly germane to the area of automotive powertrains. Some examples include:
`
`hybrid electric vehicles, automated mechanical transmissions and transfer cases for
`
`on-demand four-wheel drive.
`
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`7.
`
`From 1988 through 1991, I was also employed as an Independent
`
`Consultant for Failure Analysis Associates in San Francisco, California, focusing on
`
`the design and risk analysis of mechanical systems and manufacturing machines.
`
`8.
`
`I am a registered Professional Engineer in the State of Michigan, and am
`
`a member of several professional engineering organizations including the Society of
`
`Automotive Engineers, National Society of Professional Engineers, the American
`
`Society of Mechanical Engineers, the Society of Manufacturing Engineers, and the
`
`American Society for Engineering Education.
`
`9.
`
`In my work, I have had a number of opportunities to deal with U.S.
`
`Patents. This work has included infringement and validity analysis in the areas of
`
`hybrid electric vehicle powertrain design, CNC machine tool control, automotive
`
`transfer case design and control, automotive interior lighted mirror design, automated
`
`mechanical transmissions, agricultural seed meters, automotive shipping containers,
`
`medical beds and automated chemical immunoassay machines.
`
`10.
`
`I have authored over 65 journal articles, including at least 13 articles that
`
`are related to hybrid electric vehicles. I have also contributed to over 115 refereed
`
`conference papers, including at least 18 papers that are related to hybrid electric
`
`vehicles.
`
`11. My Curriculum Vitae is submitted herewith as Exhibit 1172 (“Dr. Stein
`
`CV”), and provides a listing of all publications on which I am a named author.
`
`
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`C. Compensation and Prior Testimony
`
`12.
`
`I am being compensated at a rate of $425 per hour to provide analysis
`
`and testimony in this inter partes review proceeding. My compensation is not
`
`contingent on the outcome of any matter or the specifics of my testimony. I have no
`
`financial interest in the Petition.
`
`13.
`
`I have previously provided expert testimony in over 15 patent-related
`
`matters. My Curriculum Vitae identifies some of the areas in which I have previously
`
`provided expert testimony. (Dr. Stein CV, Ex. 1172.)
`
`D. Materials and Information Considered
`
`14. My findings, as explained below, are based on my years of education,
`
`research, experience, and background in the fields discussed above, as well as my
`
`investigation and study of relevant materials. In forming my opinions, I have studied
`
`and considered the materials identified in the Exhibit List shown at the beginning of
`
`my report. Each of the exhibits listed are true and accurate copies. The Exhibit List
`
`includes citations for each exhibit I have reviewed including a weblink where
`
`appropriate or applicable.
`
`15. Additionally, I am aware of information generally available to, and relied
`
`upon by, persons of ordinary skill in the art at the relevant times, including technical
`
`dictionaries and technical reference materials (including textbooks, manuals, technical
`
`papers and articles); some of my statements below are expressly based on such
`
`awareness.
`
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`16. Due to procedural limitations for inter partes reviews, the grounds of
`
`unpatentability discussed herein are based solely on prior patents and other printed
`
`publications. I understand that Petitioner reserves all rights to assert other grounds for
`
`unpatentability or invalidity, not addressed herein, at a later time. Thus, the absence of
`
`discussion of such matters here should not be taken as indicating that there are no
`
`such additional grounds for unpatentability and invalidity of the ‘634 Patent.
`
`II. RELEVANT LEGAL STANDARDS
`
`A. General
`
`17.
`
`In expressing my opinions and considering the subject matter of the
`
`challenged claims of the ‘634 Patent, I am relying upon certain basic legal principles
`
`that have been provided and/or explained to me.
`
`18.
`
`I understand that in this proceeding Ford has the burden of proving that
`
`the challenged claims of the ‘634 Patent are unpatentable by a preponderance of the
`
`evidence. I understand that under “a preponderance of the evidence” standard, Ford
`
`must show that a fact is more likely true than it is not.
`
`19.
`
` I understand that for an invention claimed in a patent to be found
`
`patentable, it must be, among other things, new and not obvious from what was
`
`known before the invention was made.
`
`20.
`
`I understand the information that is used to evaluate whether a claimed
`
`invention is patentable is generally referred to as “prior art” and includes patents and
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`printed publications (e.g., books, journal publications, articles on websites, product
`
`manuals, etc.).
`
`21.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, I understand the prior art can be shown to
`
`“anticipate” the claim. Second, I understand the prior art can be shown to have made
`
`the claim “obvious” to a person of ordinary skill in the art. My understanding of the
`
`two legal standards is set forth below.
`
`B.
`
`22.
`
`Priority Dates for Claimed Subject Matter
`
`I understand that in order to be considered “prior art,” patents or
`
`printed publications must predate the pertinent priority dates for the subject matter
`
`claimed in the ‘634 Patent.
`
`23.
`
`I have been informed that a patent is only entitled to a priority date
`
`based on an earlier filed application if the earlier filed application meets the
`
`requirements of 35 U.S.C. §112. Specifically, I have been informed that 35 U.S.C. §
`
`112, ¶ 1 requires that the specification of a patent or patent application must “contain
`
`a written description of the invention, and the manner and process of making and
`
`using it, in such full, clear, concise, and exact terms as to enable any person skilled in
`
`the art to which it pertains, or with which it is most nearly connected, to make and
`
`use the [invention] . . . .” I understand that the requirements of this provision are
`
`commonly called
`
`the written description requirement and
`
`the enablement
`
`requirement.
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`24.
`
`I have been informed that compliance with both the written description
`
`requirement and enablement requirement must be determined as of the effective filing
`
`date of the application for which priority is sought.
`
`25.
`
`I have been informed that to satisfy the written description requirement
`
`a patent’s specification should reasonably convey to a person of skill in the art that the
`
`inventor had possession of the claimed invention as of the effective filing date of the
`
`application.
`
`C. Claim Construction Standard
`
`26.
`
`I understand that in this proceeding, the claims must be given their
`
`broadest reasonable interpretation consistent with the specification. I have been
`
`informed that the claims, after being construed in this manner, are then to be
`
`compared to the information in the prior art, which for this proceeding is limited to
`
`patents and printed publications. I also understand that, at the same time, absent
`
`some reason to the contrary, claim terms are typically given their ordinary and
`
`accustomed meaning as would be understood by one of ordinary skill in the art.
`
`27.
`
`I understand that in other forums, such as in federal courts, different
`
`standards of proof and claim interpretation control, which are not applied by the U.S.
`
`Patent and Trademark Office for inter partes review. Accordingly, I understand that
`
`any interpretation or construction of the challenged claims in this proceeding, either
`
`implicitly or explicitly, should not be viewed as constituting, in whole or in part,
`
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`Petitioner’s own interpretation or construction, except as regards the broadest
`
`reasonable construction of the claims presented.
`
`D. Anticipation
`
`28.
`
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`29.
`
`I understand that, for a patent to be “anticipated” by the prior art, each
`
`and every limitation of the claim must be found, expressly, implicitly or inherently, in
`
`a single prior art reference. I further understand that the requirement of strict identity
`
`between the claim and the reference is not met if a single element or limitation
`
`required by the claim is missing from the applied reference.
`
`30.
`
`I understand that claim limitations that are not expressly described in a
`
`prior art reference may still be there if they are implicit or inherent to the thing or
`
`process being described in the prior art. I have been informed that to establish
`
`inherency, the extrinsic evidence must make clear that the missing descriptive matter
`
`is necessarily present in the thing described in the reference and that it would be so
`
`recognized by persons of ordinary skill in the art. I have been informed that inherency
`
`cannot be established just because a certain thing may result from a given set of
`
`circumstances.
`
`31.
`
`I understand that it is acceptable to consider evidence other than the
`
`information in a particular prior art document to determine if a feature is necessarily
`
`present in or inherently described by that reference.
`
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`E. Obviousness
`
`32.
`
`I understand that for a single reference or a combination of references to
`
`render obvious a claimed invention, a person of ordinary skill in the art must have
`
`been able to arrive at the claimed invention by altering or combining the applied
`
`references.
`
`33.
`
`I have been informed that a patent claim can be found unpatentable as
`
`obvious where the differences between the subject matter taught to be patented and
`
`the prior art are such that the subject matter as a whole would have been obvious at
`
`the time the invention was made to a person of ordinary skill in the relevant field.
`
`Specifically, I understand that the obviousness question involves a consideration of:
`
`a) the scope and content of the prior art;
`
`b) the differences between the prior art and the claims at issue;
`
`c) the knowledge of a person of ordinary skill in the pertinent art; and
`
`d) whatever objective factors indicating obviousness or non-obviousness
`
`may be present in any particular case – referred to as “secondary
`
`considerations.”
`
`34.
`
`I have been informed that such secondary considerations include: (a)
`
`commercial success of a product due to the merits of the claimed invention; (b) a
`
`long-felt, but unmet need for the invention; (c) failure of others to find the solution
`
`provided by the claimed invention; (d) deliberate copying of the invention by others;
`
`(e) unexpected results achieved by the invention; (f) praise of the invention by others
`
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`skilled in the art; (g) the taking of licenses under the patent by others and (h) the
`
`patentee proceeded contrary to the accepted wisdom of the prior art. I understand
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`that secondary considerations are relevant where there is a connection, or nexus,
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`between the evidence and the claimed invention.
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`35.
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`In addition, I understand that the obviousness inquiry should not be
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`done in hindsight, but must be done using the perspective of a person of ordinary skill
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`in the relevant art as of the effective filing date of the patent claim.
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`36.
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`I understand that in order for a claimed invention to be considered
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`obvious, there must be some rationale for combining cited references as proposed.
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`37.
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` I understand that obviousness may also be shown by demonstrating that
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`it would have been obvious to modify what is taught in a single piece of prior art to
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`create the patented invention. I understand that obviousness may be shown by
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`establishing that it would have been obvious to combine the teachings of more than
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`one item of prior art. In determining whether a piece of prior art could have been
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`combined with other prior art or with other information within the knowledge of one
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`of ordinary skill in the art, I have been informed the following are examples of
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`approaches and rationales that may be considered:
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`(A) Combining prior art elements according to known methods to
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`yield predictable results;
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`(B)
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`Simple substitution of one known element for another to obtain
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`predictable results;
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`(C) Use of a known technique to improve similar devices (methods,
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`or products) in the same way;
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`(D)
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` Applying a known technique to a known device (method, or
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`product) ready for improvement to yield predictable results;
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`(E)
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` Applying a technique or approach that would have been
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`“obvious to try” (i.e., choosing from a finite number of identified,
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`predictable solutions, with a reasonable expectation of success);
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`(F) Known work in one field of endeavor may prompt variations of it
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`for use in either the same field or a different one based on design
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`incentives or other market forces if the variations would have
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`been predictable to one of ordinary skill in the art; or
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`(G) Some teaching, suggestion, or motivation in the prior art that
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`would have led one of ordinary skill to modify the prior art
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`reference or to combine prior art reference teachings to arrive at
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`the claimed invention. I also understand that this suggestion or
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`motivation may come from such sources as explicit statements in
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`the prior art, or from the knowledge or common sense of one of
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`ordinary skill in the art.
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`38.
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`I understand that an invention that might be considered an obvious
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`variation or modification of the prior art may be considered non-obvious if one or
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`more prior art references discourages or lead away from the line of inquiry disclosed
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`in the reference(s). I understand a reference does not “teach away” from an invention
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`simply because the reference suggests that another embodiment of the invention is
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`better or preferred. My understanding of the doctrine of teaching away requires a clear
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`indication that the combination should not be attempted (e.g., because it would not
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`work or explicit statement saying the combination should not be made).
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`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT
`FIELD AND IN THE RELEVANT TIMEFRAME
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`39. Based on my review of these materials, I believe that the relevant field
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`for purposes of the ‘634 Patent is system, methods and apparatuses for controlling
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`and operating a hybrid electric vehicle (“HEV”) and methods for improving fuel
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`economy and reducing emissions. (See ‘634 Patent, Ex. 1151, 1:21-29 (“Field of the
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`Invention”).)
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`40.
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` As described in Section I(B) above, I have extensive experience in the
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`relevant field, including experience relating to hybrid powertrain control strategies and
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`the related architecture. Based on my experience, I have an established understanding
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`of the relevant field.
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`41.
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`I understand that a “person of ordinary skill in the art” is one who is
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`presumed to be aware of all pertinent art as of the relevant timeframe, thinks along
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`conventional wisdom in the art, and is a person of ordinary creativity. I understand
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`that the level of skill in the art is evidenced by the prior art references. It is my
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`understanding that the ‘634 Patent is to be interpreted based on how it would be read
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`by a person of ordinary skill in the art. It is my understanding that factors such as the
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`education level of those working in the field, the sophistication of the technology, the
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`types of problems encountered in the art, the prior art solutions to those problems,
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`and the speed at which innovations are made may help establish the level of skill in
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`the art. I understand that a person of ordinary skill in the art is not a specific real
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`individual, but rather is a hypothetical individual having the qualities reflected by the
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`factors above.
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`42.
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`I understand the relevant timeframe for evaluating a claim is at the time
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`of the invention, which is based on the effective filing date of each claim, or the date
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`at which the subject matter of the claim was first disclosed in an application in such
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`full, clear, concise, and exact terms as to enable the person skilled in the art to make
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`and use the claimed invention. For the reasons stated below, the effective filing date
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`of the Challenged Claims of the ‘634 Patent is April 2, 2001. In my opinion, given the
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`relevant field and relevant timeframe of the ‘634 Patent, a person of ordinary skill in
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`the art would have: 1) a graduate degree in mechanical, electrical or automotive
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`engineering with at least some experience in the design and control of combustion
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`engines, electric or hybrid electric vehicle propulsion systems, or design and control of
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`automotive transmissions, or 2) a bachelor's degree in mechanical, electrical or
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`automotive engineering and at least five years of experience in the design and control
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`of combustion engines, electric vehicle propulsion systems, or automotive
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`transmissions.
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`43. Based on my experience, I have an understanding of the capabilities of a
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`person of ordinary skill in the relevant field as of April 2001. I have supervised and
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`directed many such persons over the course of my career.
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`IV. STATE OF THE ART AS OF 2001
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`A. HEV Architecture
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`44. HEVs were conceived in an attempt to combine and utilize the power
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`capabilities of internal combustion engines and electric motors to satisfy all the torque
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`required or demanded for propelling the vehicle in a more fuel efficient manner and
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`with reduced emissions, as compared to conventional (non-HEV) vehicles.
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`45. HEVs are not new and in fact date back to the early 1900s. Indeed, I am
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`aware of U.S. Patent No. 913,846 that issued to H. Pieper in March 1909, entitled
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`“Mixed Drive Auto Vehicles.” (Pieper, Ex. 1173.) Pieper discloses a vehicle having an
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`internal combustion engine, a dynamo motor directly connected to the engine and a
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`storage battery connected to the motor. (Id. at 1:20-35.)
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`46. World events such as the Clean Air Act and other regulatory events
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`during the 1960s and 1970s spurred a renewed interest in both electric vehicle and
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`HEV development. (Duoba1, Ex. 1174 at 3.) This renewed interest spurred a 30 year
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`span of HEV research and development (R&D). (Id.)
`
`
`1 Michael Duoba, Ctr. for Transp. Research, Argonne Nat’l Lab., Challenges for the
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`Vehicle Tester in Characterizing Hybrid Electric Vehicles, 7th CRC on Road Vehicle
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`47. Based upon the level of HEV R&D during this period, various HEV
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`powertrain “topologies” and corresponding control strategies were well-known to a
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`person of ordinary skill in the art by April 2001. The various HEV topologies
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`generally differ in how the engine and motor(s) are arranged and connected to the
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`wheels. It was also known that HEV control strategies generally used the motor(s) to
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`ensure the engine operated at its “sweet spot” or optimum efficiency range to
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`minimize emissions and energy consumption. (SAE SP-13312, Ex. 1175 at 5;
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`Anderson3, Ex. 1176 at 7-8.) Indeed, the various hybrid powertrain architectures were
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`designed, in significant part, with this goal in mind.
`
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`Emissions Workshop (April 1997). Duoba is a true and accurate copy of a paper that
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`I understand was published by the U.S. Department of Energy on August 1, 1997.
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`2 Society of Automotive Engineers Special Publication, Technology for Electric and
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`Hybrid Vehicles, SAE SP-1331 (February 1998). SAE SP-1331 is a true and accurate
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`copy of excerpts from a Society of Automotive Engineers (SAE) special publication
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`that I understand was published in February 1998 as a collection of papers from the
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`1998 SAE International Congress and Exposition t