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`IPR2015-00606, Paper No. 31
` IPR2015-00799, Paper No. 29
`August 11, 2016
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`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`FORD MOTOR COMPANY
`Petitioner
`vs.
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
`- - - - - -
`Case IPR2015-00606 and IPR2015-00799
`Patent 7,237,634
`Application 11/229762
`Technology Center 3600
`- - - - - -
`Oral Hearing Held: June 29, 2016
`
`
`
`Before: SALLY C. MEDLEY, KALYAN K. DESHPANDE,
`and CARL M. DeFRANCO, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on Wednesday,
`June 29, 2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia in Courtroom A, at 9:00 a.m.
`
`
`
`REPORTED BY: KAREN BRYNTESON, RMR, CRR, FAPR
`
`
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`Case IPR2015-00606; IPR2015-00799
`Patent 7,237,634
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`APPEARANCES:
`ON BEHALF OF THE PETITIONER, FORD MOTOR:
`
`SANGEETA SHAH, ESQ.
`JOHN RONDINI, ESQ.
`FRANK ANGILERI, ESQ.
`ANDREW TURNER, ESQ.
`Brooks Kushman LLP
`1000 Town Center, 22nd Floor
`Southfield, MI 48075-1238
`(248) 358-4400
`
`LISSI MOJICA, ESQ.
`KEVIN GREENLEAF, ESQ.
`Dentons US LLP
`1530 Page Mill Road
`Palo Alto, CA 94304-1125
`(650) 798-0300
`
`MATTHEW J. MOORE, ESQ.
`GABRIEL K. BELL, ESQ.
`Latham & Watkins LLP
`555 Eleventh Street, N.W., Suite 1000
`Washington, D.C. 20004-1304
`(202) 637-2200
`
`
`
`
`
`
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`APPEARANCES (Continued):
`
`ON BEHALF OF THE PATENT OWNER:
`
`JOHN S. GOETZ, ESQ.
`Fish & Richardson P.C.
`601 Lexington Avenue
`52nd Floor
`New York, NY 10022
`(212) 765-5070
`
`BRIAN J. LIVEDALEN, ESQ.
`LINDA L. KORDZIEL, ESQ.
`Fish & Richardson, P.C.
`1425 K Street, N.W.
`11th Floor
`Washington, D.C. 20005
`(202) 783-5070
`
`ALSO PRESENT:
`DAVID KELLEY, Ford
`FRANCES KEENAN, Paice and Abell
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`P R O C E E D I N G S
`
`(9:00 a.m.)
`JUDGE MEDLEY: Good morning. Please be seated.
`This is the hearing for IPR2015- 00606 and 799,
`between Petitioner, Ford and Patent Owner, Paice and Abell
`Foundation involving challenged claims of U .S. Patent
`7,237,634.
`Per the May 26th order, each party will have 45
`minutes, the total time to present arguments. Petitioner, you
`will proceed first, present your case with respect to the
`challenged claims and grounds for which the Board instituted
`trial. Thereafter, Patent Owner will respond to Petitioner's
`presentation.
`Petitioner, you may reserve rebuttal time. At this
`time we would like the parties to please introduce themselves,
`beginning with the Petitioner.
`MS. SHAH: So for Petitioner Ford Motor Company I
`have -- I am Sangeeta Shah. I have with me at counsel table
`Andrew Turner. We also have Frank Angileri and John
`Rondini, also from the law firm of Brooks Kushman.
`In addition to that, we have from the Dentons firm
`Lissi Mojica, and Kevin Greenleaf, as well as from Latham &
`Watkins Matt Moore and --
`MR. BELL: Gabe Bell.
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`MS. SHAH: And Gabe Bell, and from Ford Motor
`Company, David Kelley.
`JUDGE MEDLEY: Okay. Thank you. And for
`Patent Owner?
`MR. GOETZ: Good morning, Your Honor. John
`Goetz of Fish & Richardson on behalf of the Patent Owner. I
`am backup counsel but I will be presenting during today's
`hearing.
`
`And with me is Brian Livedalen also of Fish, and
`Ms. Kordziel also of Fish and Ms. Keenan of Paice and Abell
`Foundation.
`JUDGE MEDLEY: Thank you very much.
`Okay. We're ready when Petitioner is ready.
`MS. SHAH: I would like to reserve 20 minutes for
`
`rebuttal.
`
`JUDGE MEDLEY: Okay.
`MS. SHAH: Good morning. We are going to be
`covering the grounds of the second set of IPRs today . They are
`IPRs 2015- 00606 and 799. The shorthand for these IPRs is the
`priority or the electrical IPRs.
`Both -- we seem to be having a technical issue. All
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`right.
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`So turning to slide 2, both IPRs have one single
`ground, and that is the 103 obviousness ground in relation to the
`'455 PCT publication, which is the primary reference in
`combination with Severinsky '970. The challenged claims, as
`you can see for each of the IPRs, is different, but the grounds
`are exactly the same.
`And what is most noticeable here is that Paice in its
`response has not argued that the combination of those
`references does not meet the challenged claims. There is no
`dispute that the combination of the '455 PCT publication
`coupled with Severinsky '970 meets the claims, all of the
`limitations of the claims, and, in addition to that, that there is
`sufficient rationale to combine those two references to satisfy
`these claims.
`The only question that is in dispute based on the
`Patent Owner response is whether the '455 PCT publication is
`prior art to the challenged claims. So to make that argument,
`Paice essentially has two arguments.
`The first one is they argue that there is a series of
`priority applications that precede the '455 PCT publication.
`And they argue that those priority applications have sufficient
`written description support for these electrical limitations that
`have been identified in all of the challenged claims. That's the
`first argument.
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`The second argument then, sort of as an alternative to
`that, is even if the priority applications do not have sufficient
`written description support, that the applications of -- these
`priority applications have incorporation by reference in them to
`Severinsky '970 and that that incorporation then allows subject
`matter from the '970 to come into the priority applications.
`And, once again, then, sort of effectively cures the written
`description issue, allowing the '455 PCT publication to no
`longer be prior art.
`The third issue that Ford raises with respect to these
`written description arguments that Paice makes is that Paice has
`not met its burden of proof with respect to written description.
`So those are the three issues that are involved with
`today's argument.
`Just for purposes of the citations, within this slide
`deck we have basically cited to the '606 IPR. And at the back
`of this, at the very end of the slide deck, there is an index that
`provides all the sort of cross- referencing between the '606 IPR
`and the '799 IPR to assist the Board .
`If you could turn to slide 3, please.
`So as we mentioned earlier, sort of the crux of this
`issue is whether there is written description support. Paice, for
`its part, makes the argument that the '455 PCT publication here,
`shown in gray, that that is not prior art because the three
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`priority applications that you see here, the first one being the
`'095 provisional application that is highlighted in green; the
`second is the '817 application that is highlighted in blue; and
`the third is the '743 application highlighted in magenta, that
`those three "priority applications" together provide sufficient
`written description support for these electrical limitations that
`are within the challenged claims, and, hence, they predate the
`'455 PCT publication.
`And they want to argue that, you know, they get the
`benefit, the '634 patent and these claims that we have
`challenged, get the benefit of those early priority application
`dates.
`
`Ford argues, in contrast, that the first time that these
`electrical limitations were properly supported is in the '866 CIP
`application, which was shown in red. And we will go through
`this then on the next slide.
`But if you look at what is required to establish
`written description support, the detailed particularity and the
`possession of the claimed subject matter, Ford argues, shows up
`for the first time in '866 CIP application.
`The other thing we want to note with respect to this
`slide is that the green provisional application, which is the '095
`application, that that application, there is specific subject
`matter that Paice relies on, in particular, this 100 amp teaching,
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`that only exists in the '095 application. So it didn't carry
`forward into the '817 and '743 applications, and so essentially
`there is a break in the continuity chain .
`And so under 35 U.S.C. Section 120, because of that
`break, the subject matter that exists only in the '095 application
`is not eligible for use for purposes of written description
`support.
`
`And so that's sort of, again, as you will see through
`the slide deck, we sort of tried to keep the color coordination
`the same. There is a fair amount of this kind of mixing and
`matching that takes place.
`So as we go through this, I guess you will see in
`particular where there is green highlighting, that is subject
`matter that Paice is pulling from the '095 application.
`If you can turn to slide 4, please.
`So the question, once again, is whether the '866 CIP
`application, whether the priority applications that are filed
`before the '866 CIP application, whether they provide written
`description support for the electrical limitations. And so these
`are the three limitations that Ford has identified as essentially
`being -- as lacking in the priority applications, and, hence, the
`'455 PCT publication is prior art.
`These are -- the first limitation is referred to as the
`"at least 2.5 ratio limitation." And as you can see here, it is a
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`ratio of maximum DC voltage to maximum current supply of at
`least 2.5.
`The second one, the shorthand for that is the 500
`volts limitation . That is maximum DC voltage of at least
`approximately 500 volts. And the third one is referred to as the
`150 amp limitation. And that's maximum current is less than
`150 amperes -- is less than approximately 150 amperes.
`These are the three electrical limitations that at least
`one of those electrical limitations is in each of the challenged
`claims. And so essentially the issue is whether written
`description support exists for these limitations in the priority
`applications.
`If we can turn to slide 5.
`JUDGE DeFRANCO: Counsel, before you leave that
`
`slide.
`
`MS. SHAH: Yes.
`JUDGE DeFRANCO: You mentioned the third one,
`the 150 amp limitation there.
`MS. SHAH: Yes.
`JUDGE DeFRANCO: Now, you mentioned earlier
`that the '095 application, that mentions 100 amps?
`MS. SHAH: Yes.
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`JUDGE DeFRANCO: Does that earlier application
`say anything about voltage limitation as well as the ratio
`limitation, the first and second on the screen?
`MS. SHAH: It does not. The only teaching that is
`relevant with respect to threes three voltage -- I'm sorry, with
`respect to these three electrical limitations that comes out of
`'095 is the 100 amp teaching.
`So when Paice will -- as we get into sort of slide 8
`and 9, you will see there is this kind of derivation that they pull
`information from the '817, the '743, and '095 applications for
`that purpose. Actually, if we can turn to slide, I think it is 9.
`Actually slide 8.
`So if you look here, you will see that Paice
`essentially pulls values kind of selectively from these three
`priority applications. Again, we have tracked these based on
`the colors from that original priority chart.
`So, once again here, you will see the horsepower
`values they pulled from the '743 application, then they pull 100
`amp teachings from the '095 application. Those are the ones in
`green. And then they separately pull the 200 amp teachings
`from the '817 application.
`There is not a corresponding voltage teaching that
`was relevant for these electrical limitations from the '095
`application. So if we can go back to slide 4. I'm sorry, slide 5.
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`So this is essentially the very first time that
`Severinsky actually teaches the electrical limitations that are in
`question. You know, if you take a look at this, most
`importantly you will see that the '866 CIP application, that this
`-- and this exact disclosure, of course, appears in the '634 patent
`as well -- that these teachings are provided under a title that
`very clearly states that these are further improvements
`according to the continuation -in- part. That's the title under
`which these teachings then are provided.
`The first one being, it explains kind of the nature of
`these electrical limitations in the middle box here, you see it
`says, more particularly, it appears useful to size the components
`with respect to one another, in particular, the battery bank with
`respect to the motors, so that the peak current is no more than
`150 amps. That's the first -- that's the current teaching, the
`current limitation in question here.
`Then it goes on to explain you do that, you pair the
`current, the max current teaching so that you have a peak
`electrical loading ratio of no more -- I'm sorry, of at least 2 and
`a half to 1. That is, again, explicitly provided in the '866 CIP
`application.
`Then if you proceed into the third box that is
`identified here in slide 5, you will see that, once again, they
`talk about we want to keep the peak current to 115 amps. They
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`then identify that that corresponds to a battery bank of 600 volts
`nominal. And they explicitly then provide the corresponding
`under load value, which is 500 volts under load. Once again,
`that's the actual number that is not claimed in the '634
`challenged claims that we're talking about today.
`So you explicitly have the teaching for two and a half
`to one, you have the teaching for 500 volts, and you have the
`150 amp teaching all three of the electrical limitations in
`question that are explicitly provided in this CIP application,
`coupled with the fundamental explanation of why these are even
`relevant.
`
`Sort of the nature of the interaction between these
`various electrical limitations and that they effectively work
`together to allow a person of skill in the art to size the
`electrical components relative to one another.
`If we can turn to slide 6, please .
`So in contrast now, you will see that these are Paice's
`arguments with trying to establish what support exists in the
`priority applications. And so turning first to the two and a half
`ratio limitation, there is no disclosure of any numerical ratio.
`There is nothing that would indicate to a person of
`skill in the art that they should even calculate a ratio. And even
`beyond that, stepping back, there is not even the predicate for
`conception.
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`And, again, once again, we're contrasting that with
`the '866 CIP teaching here, which is very clear that identifies a
`ratio of two and a half to one.
`If we can turn to slide 7, please.
`This is the same situation with the 500 volts
`limitation. On the left you will see sort of in the magenta color
`under a teaching that exists in the '743 application, there is
`highlighted at 800 to 1200 volt range that does come from the
`'743 application. The shortfall there for both the magenta 800
`to 1200 volt range and also the 768 volt range that is shown in
`the bottom sort of highlighting in blue, that which comes from
`the '817 application, in both instances, those voltages that are
`identified in the priority applications are, it is either unclear as
`to whether they are under load limitations -- and let me sort of
`step back.
`This 500 volts limitation, it is undisputed by the
`parties that that limitation is to be voltage under load
`limitation. And the Board in prior decisions, as well as the
`Institution decision here, has also found that that max voltage
`limitation is an under load limitation.
`So keeping that in mind, when you take a like at the
`teachings that exist in the priority applications, like I said with
`respect to the '743 application, it is -- there is no clear teaching
`that identifies that that range would be a voltage under load.
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`Equally when you look at the '817 application, that
`one explicitly calls for the 768 volts to effectively be for open
`relays, hence, open circuit. As Dr. Stein points out on the
`right- hand side of the slide, he makes it clear that for there --
`for there to be a voltage under load teaching, if you had a
`voltage range, you would have to provide the corresponding
`current condition that because you are talking about voltages
`under load and because voltages under load effectively change
`in relationship to the magnitude of current, you have to have
`both together to be able to establish that it is voltage under
`load.
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`And so without that, sort of the default is that the
`identified range is a nominal range and, hence, not under load.
`If we could turn to slide 8.
`So Paice's next argument is even if there is no
`explicit support in the priority applications, a person of skill in
`the art could effectively derive one. And so to do this, Paice,
`you know, we have looked at this slide earlier, they do this sort
`of mix and match approach.
`They take a value from the '743 application, so the
`horsepower values on the left- hand side that are sort of
`highlighted in that magenta box, those come from the '743
`application. They then take the 200 amp teachings from the
`'817 application and then the 100 amp teachings that only exist
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`in the '095 application, those are sort of mixed and matched for
`purposes of Paice's arguments to essentially establish a "derived
`voltage under load."
`That voltage under load is once again used to "derive
`a ratio" that arguably would assist Paice in its arguments. So
`once again here, the '095 100 amp teaching is absolutely critical
`to Paice's arguments because, as we will see as we proceed
`forward, those -- that 100 amp teaching is the only kind of
`predicate for Paice to be able to establish any derivation of
`either voltage or ratio that falls within the scope of the claims.
`And so we will get to that when we get to the next
`slide. Here, once again, you will see this sort of mix and match
`approach Paice has taken with the defect here being there is no
`incorporation by reference of these various priority applications
`relative to one another.
`And so it is improper to just sort of pluck various
`teachings from these priority applications kind of with a
`litigation bias towards trying to establish a teaching that fall
`within the scope of these claims, which is effectively what's
`been done in this instance.
`If you can turn to slide 9, please.
`So here you see the sort of effect of what Paice has
`done with respect to the bigger picture. So, once again, if you
`look at the two sort of relational sequences at the bottom of the
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`slide, you see if you take a look at the right- most side, it
`derived ratios that come from the '095 application, which again
`requires that 100 amp teaching. Those are the only ones that
`are above the two and a half to one ratio, the at least two and a
`half to one ratio or the at least 500 volts ratio.
`Without that 100 amp teaching that is pulled from the
`'095 provisional application, which lacks continuity of
`disclosure, Paice has no teaching explicit or derived that falls
`within the scope of the claims.
`So when you go back and you see what is left, if you
`look at only the '743 and '817 applications, they are well below,
`if you are looking at the ratio here, it is well below the admitted
`prior art Prius in the '634 patent that is two to one. And, again,
`in the '634 patent Paice sort of, you know, created a patent
`holder distinction between two to one for the Toyota Prius and
`two and a half to one for those claims.
`So arguably if you have derived ratios that are well
`below two to one, they are not -- they cannot be used for
`establishing written description support for this claim
`limitation.
`And equally you then have the derived voltages from
`the '817 application, the 186.42 and the 372.85. Again, well
`below the 500 volts claim scope.
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`So without that 100 amp teaching, you basically don't
`have any derived ratios or voltages that fall within those claims .
`If we can turn to slide 10.
`Similarly, there is no support for the 150 amp
`limitation. What Paice does here is they argue at the top in
`their Patent Owner response that the '817 application provides a
`range of upper limits from 30 amps to 200 amps. As it turns
`out, if you look a little bit more closely at the '817 application,
`what it in fact teaches is two distinct sort of one range and then
`a limit.
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`The first one, which is highlighted in blue, again,
`because it comes from the '817 application, is a long term
`continuous operation amp range. And that's for 30 to 50
`amperes.
`
`The second one that identified a little bit later in that
`quote is an identification of maximum currents up to 200
`amperes. Those are distinct teachings. This first one is not a
`max current teaching. It is a teaching for long- term continuous
`operation.
`The second one is the only teaching that is sort of
`relevant. And that effectively is up to 200 amp teaching, which
`teaches away from the 150 ampere ceiling or threshold that is
`provided in this claim.
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`And, once again, that is sort of in contrast to the very
`explicit teaching that exists in the '866 CIP application at the
`bottom of this slide where it unequivocally provides that the
`peak current should be no more than 150 amps .
`If we can turn to slide 11, please.
`So once again here, you know --
`JUDGE DeFRANCO: Counsel, let me go back to that
`amp limitation.
`MS. SHAH: Sure.
`JUDGE DeFRANCO: So the claim says maximum
`current of less than approximately 150 amps. And that
`limitation says should be limited to 30 to 50 amps. Why is that
`-- why does that not meet the claim limitation?
`MS. SHAH: Well, so that particular 30 to 50 ampere
`teaching is not a maximum current teaching. It is specifically
`talking about, if you look at sort of the beginning sentence
`there, it is talking about the current drawn from battery bank
`during long- term operation of the traction and starting motors to
`propel the vehicle should be limited to 30 to 50 amperes.
`So that's sort of distinct from then when you talk
`about later on in that quote, they say, these components are
`satisfactory to carry currents of up to 200 amperes, as may be
`encountered during full- power acceleration, which is essentially
`the condition required for a maximum current.
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`So they are distinct teachings, but even if, let's say,
`that 30 to 50 ampere teaching is considered to be a max current
`teaching, that in and of itself is not sufficient to establish that
`threshold 150 limitation teaching. And nor does it establish
`sort of possession of that full range.
`Because you have got -- there is sort of variations
`that exist within that range from effectively zero to 150. And
`30 to 50, coupled with this sort of separate 200 ampere teaching
`that actually teaches away from it, would not be sufficient to
`establish possession of the less than 150 ampere limitation
`teaching.
`JUDGE DeFRANCO: So it is your position that they
`have to be in full possession of the entire range?
`MS. SHAH: No, it is our position that they have to
`essentially be in possession of a sufficient number of species
`that establish -- so where there is -- there is a significant
`variation in these ranges because they are fairly large ranges.
`Specifically talking about the current range, if you
`just take one segment of the, in this case, 30 to 50 ampere
`range, it is not reflective of what takes place as you go to
`higher currents and what the impact of that would be with
`respect to a system as a whole.
`And so to establish possession that the inventor
`actually possessed that full range, you would have to have, let's
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`say, a teaching of 30 to 50 and then one closer to the threshold
`of 150. Because there is not that teaching here, we would argue
`that there is not sufficient possession. A person of skill in the
`art wouldn't understand that the inventor actually possessed the
`entire range.
`If we can turn to slide 11.
`So, once again here, we look at how it, you know,
`how Severinsky articulated its disclosure of the electrical
`limitations back with the '866 CIP application. This is what
`Severinsky did when, I guess, to explicitly identify each of
`these electrical limitations.
`Once again, you can see the three electrical
`limitations are explicitly provided, as well as the rationale for
`why they are relevant and what the relationship is of these
`electrical limitations to one another.
`If we can go to slide 12.
`And so the other point that is very relevant here is
`that not only are those electrical limitations provided for the
`first time in the '866 CIP application, but in this, in the file
`history of the '634 patent, Paice or Severinsky at the time
`actually admitted that support for the electrical limitations
`existed in this further improvement section.
`So when there was no litigation bias, when Paice had
`the opportunity during prosecution to explain where support
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`existed for these electrical limitations for the, as you can see
`here, for the voltage, current, and ratio limitations, they pointed
`to the further improvement section of the CIP, of the '866 CIP
`section.
`
`They did not point to the priority applications. They
`did not point to the incorporation by reference. Severinsky,
`that is a second argument that they are going to make, they
`explicitly pointed to these further improvement sections in the
`CIP. And, again, when there was no litigation, sort of
`after-the-fact arguments being made.
`If we can go to slide 13, please.
`So this gets us then to Paice's sort of alternative
`argument that even if the priority applications do not provide
`written description support, Paice argues that there is
`effectively -- that the issue of written description support is
`cured with the incorporation by reference to Severinsky '970.
`There is sort of a two- prong issue there. And that
`has to do with whether they have met the particularity
`requirement, whether that incorporation by reference is
`sufficient. And then is there, you know, is there an issue with
`respect to what would specifically be incorporated.
`We can go to slide 14, please.
`So this is the relevant incorporation language. It is
`two sentences. And if you look at the first sentence, it
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`specifically talks about disclosing that the application discloses
`a number of improvements over and enhancements to the hybrid
`vehicles in the inventor's '978 patent, which is incorporated
`herein by reference.
`So kind of the predicate for the first sentence is that
`there are these improvements that exist over what was disclosed
`in '970, and something is, you know, being incorporated.
`Then you get into the second sentence which then
`sort of keys off of the first one, which talks about again in the
`context of these improvements, that where differences are not
`mentioned, it is to be understood that the specifics of the
`vehicle design shown in the '970 patent are applicable to the
`vehicles in this particular application. So this is the '817 quote.
`Ford has two arguments with respect to this
`incorporation reference. The first is that because of the nature
`of these two clauses, the Number 1 point being that the
`combination of the first and second sentences is ambiguous, it is
`unclear as to what specific subject matter is to be incorporated,
`that that incorporation by reference is improper, that the litmus
`test for incorporation by reference is, is there sufficient detailed
`particularity of what is to be incorporated and where you obtain
`that incorporation from, that here that there is sufficient sort of
`ambiguity or a lack of clarity, as Dr. Stein points out in his
`reply declaration.
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`And the second issue then is that even if there are
`differences that sort of based on the plain meaning of that
`incorporation language, if there are differences, the differences
`are not to be incorporated, that at a minimum, that sort of
`second clause is to be given some weight.
`And so then if you look and see if sort of the chart,
`the graph that exists at the bottom of slide 14, you will see that
`for all of the electrical limitations that are in question here,
`there are differences.
`Once again, differences that under the plain meaning
`of that second sentence of the incorporation language would
`preclude incorporation. If you look at the -- in the context of
`voltage, you have got 1000 to 1400 volts under load teaching as
`compared to the priority applications, which provide 768 and
`800 to 1200 open circuit voltage teaching. Similarly, you have
`75 versus 200.
`And in the context of the ratio, neither the '977
`Severinsky reference or priority applications provide any
`teaching for the two and a half to one ratio. Even if you look at
`the derivations, those are different.
`So even as derived, there are differences between the
`numbers that Paice has come up with. And so looking at this
`sort of language that identifies that if there are differences, they
`are not to be incorporated, then clearly here the electrical
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`limitations would not be subject matter that would be
`incorporated into these priority applications.
`So turning to slide 15, we then look at under Paice's
`best argument, if we take all of the disclosure from '970, and we
`incorporate it into the priority applications, even then there is a
`shortfall.
`And so here we take a look at Paice's -- Paice