Paper 33
`
`Entered: November 8, 2016
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00606
`Patent 7,237,634 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`Entered: November 8, 2016
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00606
`Patent 7,237,634 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2015-00606
`Patent 7,237,634 B2
`
`
`I. INTRODUCTION
`
`
`
`Paice LLC & The Abell Foundation, Inc. (collectively, “Paice”) are
`
`the owners of U.S. Patent No. 7,237,634 B2 (“the ’634 patent”). Ford Motor
`
`Company (“Ford”) filed a Petition for inter partes review of the ’634 patent,
`
`challenging the patentability of claims 56–65, 68–77, 242–251, 268–277,
`
`292, 293, and 298 under 35 U.S.C. § 103. Paper 1 (“Pet.”). In a preliminary
`
`proceeding, we instituted an inter partes review because Ford made a
`
`threshold showing of a “reasonable likelihood” that the challenged claims
`
`are unpatentable. Paper 14 (“Dec.”).
`
`Subsequent to institution, Paice filed a Patent Owner Response (Paper
`
`17, “PO Resp.”), and Ford followed with a Reply (Paper 19, “Reply”).1 An
`
`oral hearing was held on June 28, 2016, and a transcript of the hearing is
`
`included in the record. Paper 31 (“Tr.”). After reviewing the evidence and
`
`arguments of the parties, and pursuant to our jurisdiction under 35 U.S.C.
`
`§ 6, we conclude Ford has proven, by a preponderance of the evidence, that
`
`claims 56–65, 68–77, 242–251, 268–277, 292, 293, and 298 are
`
`unpatentable.
`
`A.
`
`Related Cases
`
`II. BACKGROUND
`
`
`
`The ’634 patent, which includes over 300 claims, has previously been
`
`before us, having been the subject of multiple petitions filed by Ford for
`
`inter partes review (“IPR”). Aside from this case, the IPRs on which we
`
`have instituted trial include IPRs 2014-00904, 2014-1416, 2015-00722,
`
`
`1 In addition, Paice filed a Motion for Observation on Cross-Examination
`(Paper 23) and Ford filed a Response to Motion for Observation on Cross-
`Examination (Paper 26), both of which have been considered.
`
`2
`
`
`
`IPR2015-00606
`Patent 7,237,634 B2
`
`2015-00758, 2015-00784, 2015-00785, 2015-00787, 2015-00790, 2015-
`
`00791, 2015-00799, 2015-00800, and 2015-00801. And, with this decision
`
`today, we have rendered final decisions in all of these IPRs, many of which
`
`include some overlap in terms of claims challenged or prior art asserted or
`
`both.2 The instant IPR, however, presents us with an entirely new set of
`
`claims, as well as a ground, that we have not previously seen.
`
`
`
`The ’634 patent is also the subject of litigation in two co-pending
`
`district court actions, Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D.
`
`Md.), filed Feb. 19, 2014, and Paice LLC v. Hyundai Motor Co., No. 1:12-
`
`cv-00499 (D. Md.), filed Feb. 16, 2012. Pet. 3.
`
`B.
`
`The ’634 Patent
`
`
`
`The ’634 patent describes a hybrid vehicle with an internal
`
`combustion engine, at least one electric motor, and a battery bank, all
`
`controlled by a microprocessor that directs the transfer of torque between the
`
`engine, the motor, and the drive wheels of the vehicle. Ex. 1151, 17:17–56,
`
`Fig. 4. The microprocessor determines whether to operate the engine, the
`
`motor, or both, in response to “road load,” that is, the instantaneous torque
`
`required to drive the vehicle. Id. at 12:42–46. The microprocessor “can
`
`effectively determine the road load by monitoring the response of the vehicle
`
`
`2 The earliest of these cases, the -904 and -1416 IPRs, led to final
`determinations of unpatentability, respectively, for claims 1, 14, 16, 18, and
`24 (2015 WL 8536745 (PTAB Dec. 10, 2015)) and claims 80, 93, 98, 99,
`102, 109, 114, 127, 131, 132, 135, 139, 142, 161, 215, 228, 232, 233, and
`235–237 (2016 WL 932948) (PTAB Mar. 10, 2016)). These two IPRs are
`currently on appeal at the U.S. Court of Appeals for the Federal Circuit. We
`issued final decisions in the other IPRs more recently.
`
`3
`
`
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`IPR2015-00606
`Patent 7,237,634 B2
`
`to the operator’s command for more power.”3 Id. at 37:42–49. The operator
`
`commands include “the rate at which the operator depresses [accelerator and
`
`brake] pedals 69 and 70 as well as the degree to which [they] are depressed.”
`
`Id. at 27:26–38, Figs. 3, 4. The microprocessor uses information from the
`
`operator commands “as an indication that an amount of torque . . . will
`
`shortly be required.” Id. at 27:41–57.
`
`The microprocessor then compares the vehicle’s torque requirements
`
`against a predefined “setpoint,” or “SP,” and uses the results of the
`
`comparison to determine the vehicle’s mode of operation, e.g., straight-
`
`electric, engine-only, or hybrid. Id. at 40:16–49. The microprocessor
`
`utilizes a hybrid control strategy that operates the engine only in a range of
`
`high fuel efficiency, which occurs when the instantaneous torque required to
`
`drive the vehicle, or road load (RL), reaches a setpoint (SP) of
`
`approximately 30% of the engine’s maximum torque output (MTO). Id. at
`
`20:61–67; see also id. at 13:64–65 (“the engine is never operated at less than
`
`30% of MTO, and is thus never operated inefficiently”). In other words,
`
`when the road load is above 30% of the engine’s maximum torque output,
`
`the vehicle operates in an engine-alone mode. Id. at 37:42–44. When the
`
`road load is below 30% of the engine’s maximum torque, the vehicle
`
`operates in a straight-electric mode. Id. at 37:24–28. Operating the engine
`
`in a range above the setpoint but below the engine’s maximum torque output
`
`maximizes fuel efficiency and reduces pollutant emissions of the vehicle.
`
`Id. at 15:55–58.
`
`
`
`
`3 The ’634 patent contrasts the claimed invention to prior control strategies
`“based solely on speed,” which are “incapable of responding to the
`operator’s commands, and will ultimately be unsatisfactory.” Ex. 1151,
`13:39–42.
`
`4
`
`
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`IPR2015-00606
`Patent 7,237,634 B2
`
`C.
`
`The Challenged Claims
`
`
`
`Of the challenged claims, only two are independent—claims 292 and
`
`298. Dependent claim 293 stems from independent claim 292, while the
`
`remainder of the challenged dependent claims stem from independent claims
`
`that are unchallenged by the instant Petition, but are the subject of several of
`
`the related IPRs mentioned above. Specifically,
`
`claims 56–65 depend from unchallenged claim 1, which
`is the subject of the -904 IPR;
`
`
`
`claims 68–77 depend from unchallenged claim 33, which
`is the subject of the -722, -787, and -791 IPRs;
`
`
`
`claims 242–251 depend from unchallenged claim 241,
`which is the subject of the -785, -787, and -801 IPRs; and
`
`
`
`claims 268–277 depend from unchallenged claim 267,
`which is the subject of the -787 and -801 IPRs.
`
`
`
`Common to the challenged claims, except for claims 292, 293, and
`
`298, is that they combine a hybrid control strategy that compares “road load”
`
`to a particular “setpoint” for determining when to operate the engine and
`
`motor,4 with additional limitations requiring that energy5 supplied from the
`
`battery be at a specific “maximum DC voltage” and a specific “maximum
`
`current.” For instance, a first set of claims (i.e., claims 57, 59, 62, 64, 69,
`
`71, 74, 76, 243, 245, 248, 250, 269, 274, 276, and 292) relates to maximum
`
`voltage from the battery: “the maximum DC voltage is at least
`
`approximately 500 volts” (the “maximum voltage” limitations). A second
`
`
`4 Claims 292, 293, and 298 do not recite a “setpoint,” but do utilize a hybrid
`control strategy that is responsive to “road load” for determining when to
`operate the engine and motor.
`5 Some of the claims speak in terms of “power” from the battery in place of
`“energy” from the battery. In the context of these claims, the difference is
`irrelevant. See Ex. 1152 ¶¶ 263–264.
`
`5
`
`
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`IPR2015-00606
`Patent 7,237,634 B2
`
`set of claims (i.e., claims 58, 63, 65, 70, 72, 75, 77, 244, 246, 249, 251, 270,
`
`272, 275, 277, 293, and 298) relates to maximum current, with most of these
`
`claims requiring that it be “less than approximately 150 amperes” (the
`
`“maximum current” limitations). And a third set of claims (i.e., claims 56,
`
`61, 68, 73, 242, 247, 268, 273, and all claims depending therefrom) requires
`
`that “a ratio of maximum DC voltage to maximum current supplied is at
`
`least 2.5” (the “ratio” limitation). Independent claims 292 and 298 require
`
`similar voltage and current limitations, while claim 293 requires that the
`
`current be “no more than about 75 amperes.” In analyzing the claims, we
`
`refer to the voltage, current, and ratio limitations, collectively, as the
`
`“electrical limitations.”
`
`D.
`
`The Instituted Grounds
`
`
`
`Ford asserts but a single ground of unpatentability, namely, that the
`
`challenged claims are unpatentable under 35 U.S.C. § 103 as obvious over
`
`the combined teachings of the ’455 PCT publication6 and Severinsky ’970.7
`
`Pet. 4–5. In a preliminary proceeding, we instituted trial because Ford
`
`demonstrated a “reasonable likelihood” of succeeding on that one ground.
`
`Dec. 13. We now decide whether Ford has proven the challenged claims
`
`unpatentable by a “preponderance of the evidence.” 35 U.S.C. § 316. In
`
`doing so, we also decide whether the ’455 PCT publication qualifies as prior
`
`art to the ’634 patent.
`
`
`6 PCT International Publication No. WO 00/15455, pub. Mar. 23, 2000
`(Ex. 1153).
`7 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1154, “Severinsky
`’970”).
`
`6
`
`
`
`IPR2015-00606
`Patent 7,237,634 B2
`
`
`A.
`
`Claim Construction
`
`III. ANALYSIS
`
`In our Decision to Institute, we construed the term “maximum DC
`
`voltage,” which is recited throughout the challenged claims. As noted
`
`therein, we pointed to the ’634 patent specification and its discussion of
`
`battery voltage and peak electrical loading as supporting a construction of
`
`“maximum DC voltage” that means “a voltage under load,” as opposed to a
`
`nominal, open-circuit voltage. Dec. 5 (citing Ex. 1151, 50:44–51:26). Paice
`
`does not challenge that construction,8 and we do not perceive any reason or
`
`evidence that might compel us to alter it.
`
`B.
`
`Obviousness Over the ’455 PCT Publication and Severinsky ’970
`
`As discussed above, all but one of the challenged dependent claims
`
`stem from independent claims that are not challenged by the instant petition,
`
`and thus, necessarily include the limitations of their respective base claims.
`
`Accordingly, we first address the limitations incorporated from the base
`
`claims (i.e., claims 1, 33, 241, and 267), each of which is directed to a
`
`configuration of components that includes an internal combustion engine, at
`
`least one electric motor, a battery, and a hybrid control strategy that utilizes
`
`“road load” and a “setpoint” for determining when to operate the engine.9
`
`We likewise address the limitations in independent claims 292 and 298 that
`
`
`8 Indeed, Paice proposed the same construction of “maximum DC voltage”
`in an earlier related proceeding, IPR2014–00568 (Jul. 11, 2014) (Paper 8,
`16–17), which is now terminated.
`9 To the extent there is any dispute over construction of the term “setpoint,”
`we incorporate our construction from the final written decision in IPR2014-
`01416 (Mar. 10, 2016) (Paper 26, 8–11).
`
`7
`
`
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`IPR2015-00606
`Patent 7,237,634 B2
`
`are directed to a similar configuration of components that utilize road load
`
`less the setpoint.
`
`To begin, Ford argues that the ’455 PCT publication discloses all of
`
`the limitations of base claims 1, 33, 241, and 267, as well as the hybrid
`
`configuration of independent claims 292 and 298. Pet. 2, 21–22. Most
`
`important, Ford points out that the specification and figures of the ’455 PCT
`
`publication are substantially the same as those of the ’634 patent (id. at 21)
`
`and submits a comparison illustrating the identity of the two disclosures
`
`(Ex. 1187). Ford then provides a detailed analysis of how the ’455 PCT
`
`publication satisfies the limitations of the base claims, which are directed to
`
`the configuration of components and torque control strategy of a hybrid
`
`vehicle. Id. at 22–34. In doing so, Ford proffers the testimony of Dr. Jeffrey
`
`L. Stein, an expert witness retained by Ford, who explains why the ’455
`
`PCT publication teaches each of the limitations of the independent base
`
`claims. Ex. 1152 ¶¶ 171–261.
`
`We are persuaded by Ford’s showing, which we adopt as our own,
`
`that the ’455 PCT publication discloses all of the limitations of base
`
`claims 1, 33, 241, and 267. See Pet. 22–34; Ex. 1152 ¶¶ 171–261. Paice
`
`does not dispute that the ’455 PCT publication discloses the limitations of
`
`the base claims, nor can it reasonably do so given the identity of the
`
`disclosure of the ’455 PCT publication to that of the ’634 patent. See Ex.
`
`1152 ¶ 165 (citing Ex. 1187). We are also persuaded by Ford’s showing,
`
`which we adopt as our own, that the ’455 PCT publication discloses all of
`
`the limitations of independent claims 292 and 298, except for the “voltage”
`
`and “current” limitations. See Pet. 50–56; Ex. 1152 ¶¶ 375–397 (claim 292),
`
`¶¶ 412–419 (claim 298).
`
`8
`
`
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`IPR2015-00606
`Patent 7,237,634 B2
`
`
`Having shown that the ’455 PCT publication discloses the hybrid
`
`configuration and torque control strategy recited by the base claims, Ford
`
`then discusses how Severinsky ’970 teaches the electrical (voltage, current,
`
`and ratio) limitations of the challenged claims (id. at 34–56), and explains
`
`why a skilled artisan would have been led to combine the teachings of
`
`Severinsky ’970 with those of the ’455 PCT publication to arrive at the
`
`claimed invention (id. at 57–59). And, with respect to the electrical
`
`limitations, Ford again proffers the testimony of its expert, Dr. Stein, who
`
`confirms that Severinsky ’970 teaches the specific voltage, current, and ratio
`
`values recited by the challenged claims. See Ex. 1152 ¶¶ 262–374 (claims
`
`56–65, 68–77, 242–251, 268–277), ¶¶ 398–407 (claim 292), ¶¶ 408–411
`
`(claim 293), ¶ 420 (claim 298). Dr. Stein also explains why it would have
`
`been obvious to combine these teachings with the’455 PCT publication. See
`
`id. ¶¶ 421–428.
`
`Paice does not dispute Ford’s contentions that the ’455 PCT
`
`publication and Severinsky ’970 together teach the limitations of the
`
`challenged claims, nor does Paice dispute the reason to combine those
`
`teachings. After reviewing Ford’s evidence and arguments, and
`
`notwithstanding Paice’s argument that the ’455 PCT publication is not prior
`
`art, as discussed below, we are persuaded that Ford has shown, by a
`
`preponderance of the evidence, that the challenged claims would have been
`
`obvious over the ’455 PCT publication and Severinsky ’970.
`
`C.
`
`The ’455 PCT Publication Is Prior Art to the Challenged Claims
`
`Paice’s sole argument against Ford’s proof of obviousness is that the
`
`’455 PCT publication is “not prior art” because the effective filing date of
`
`the challenged claims “pre-dates” the ’455 PCT publication. PO Resp. 6.
`
`9
`
`
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`IPR2015-00606
`Patent 7,237,634 B2
`
`Specifically, Paice contends that, with respect to the claims reciting the
`
`electrical limitations, “there is more than sufficient support for those claims
`
`in earlier applications from which the ’634 patent claims priority, which pre-
`
`date the ’455 PCT publication.” Id. at 6–7.
`
`The earlier applications identified by Paice as providing support for
`
`the claimed electrical limitations include provisional application
`
`No. 60/100,095, filed September 14, 1998 (Ex. 1158, “the ’095
`
`application”), continuation-in-part application No. 09/264,817 filed March 9,
`
`1999 (Ex. 1162, “the ’817 application”), and continuation-in-part application
`
`No. 09/392,743, filed September 9, 1999 (Ex. 1163, “the ’743 application”).
`
`See Ex. 1151, cover page, item 60 (“Related U.S. Application Data”).
`
`According to Paice, these ancestor applications convey to a skilled artisan
`
`that the inventors had possession of the claimed electrical limitations by no
`
`later than September 9, 1999, which is prior to the March 23, 2000
`
`publication date of the ’455 PCT publication. PO Resp. 9 (citing Ex. 2105
`
`¶¶ 41–93). We disagree.
`
`Although the priority applications10 have earlier filing dates than the
`
`publication date of the ʼ455 PCT publication, we agree with Ford that the
`
`benefit of those earlier dates does not extend to the challenged claims
`
`because the priority applications fail to provide adequate written description
`
`support for the electrical (voltage, current, and ratio) limitations. See Pet. 8–
`
`15; Reply 2–16. Paice argues two reasons why we should find that the
`
`priority applications provide support for the electrical limitations of the
`
`
`10 We refer to the ancestor ’095, ’817, and ’743 applications, upon which
`Paice relies for support of the challenged claims, collectively as “the priority
`applications.”
`
`10
`
`
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`IPR2015-00606
`Patent 7,237,634 B2
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`challenged claims—first, “the incorporated disclosure of Severinsky ’970”
`
`into each of the priority applications; and second, the “four corners of the
`
`applications themselves.” We address each argument in turn.
`
`1.
`
`
`
`Paice’s Argument That Severinsky ’970 Is Incorporated By
`Reference Into the Priority Applications
`
`Paice argues that Severinsky ’970, which purportedly provides written
`
`description support for the claimed electrical limitations, is incorporated by
`
`reference into each of the ’095, ’817, and ’743 priority applications. PO
`
`Resp. 9–16. “Incorporation by reference provides a method for integrating
`
`material from various documents into a host document . . . by citing such
`
`material in a manner that makes clear that the material is effectively part of
`
`the host document as if it were explicitly contained therein.” Zenon Envtl.,
`
`Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007) (citations
`
`omitted) (emphasis added). But, to incorporate material by reference
`
`properly, “the host document must identify with detailed particularity what
`
`specific material it incorporates and clearly indicate where that material is
`
`found in the various documents.” Id. (emphases in original).
`
`Here, Paice relies on several passages from the priority applications as
`
`support for the incorporation by reference of Severinsky ’970. PO Resp.
`
`11–13. First, Paice points to a general assertion of “incorporation” found in
`
`each of the three priority applications:
`
`This application discloses a number of improvements
`over and enhancements to the hybrid vehicles disclosed in the
`inventor’s U.S. Pat. No. 5,343,970 (the “’970 patent”), which is
`incorporated herein by this reference. 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 shown herein as well.
`* * *
`
`11
`
`
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`IPR2015-00606
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`
`The hybrid drive train shown in the ’970 patent has many
`aspects and advantages with respect to the prior art which are
`retained by the present invention. . . . As compared to the prior
`art, the battery bank, motor/generator, and associated power
`circuitry are operated at relatively high voltage and relatively
`low current, reducing losses due to resistive heating and
`simplifying component selection and connection.
`
`
`
`Id. at 8, 11–12 (quoting Ex. 1158, 2–3 (the ’095 application) (emphasis
`
`added)); see also Ex. 1162, 18–20 (the ’817 application); Ex. 1163, 1–2 (the
`
`’743 application). Paice also points to “incorporation” language from the
`
`‘095 and ’817 applications:
`
`Essentially similar functions were provided by the solid-state
`switching AC/DC converter 44 in the ’970 patent; where not
`specified to the contrary, the discussion thereof is applicable to
`the inverter design shown in FIG. 5 hereof.
`
`
`
`PO Resp. 12–13 (quoting Ex. 1162, 49:8–12) (emphasis added); see also
`
`Ex. 1158, 16:30–34.
`
`We are not persuaded that these incorporation clauses from the
`
`priority applications “clearly indicate” what is being incorporated, let alone
`
`incorporating the specific teachings of maximum voltage and maximum
`
`current found in Severinsky ’970. See Zenon, 506 F.3d at 1378. Rather, in
`
`our view, these incorporation clauses leave open the question of exactly
`
`which “advantages” and “similar functions” from Severinsky ’970 are being
`
`incorporated into the priority applications. Most notably, the applicant’s
`
`general assertion of incorporation, as indicated above, is coupled with an
`
`express qualification limiting the extent of Severinsky ’970’s incorporation:
`
`“[w]here 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 shown herein as well.” Ex. 1158, 2:12–15, Ex. 1162, 18:27–30;
`
`12
`
`
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`IPR2015-00606
`Patent 7,237,634 B2
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`Ex. 1163, 1:22–25 (emphasis added). In other words, the incorporation
`
`excludes “differences” between Severinsky ’970 and the priority
`
`applications where mentioned.
`
`But, with respect to specific ranges for voltage and current,
`
`differences are mentioned that appear to preclude incorporation of
`
`Severinsky ’970 into the priority applications. For instance, Severinsky ’970
`
`discloses a DC voltage of 1,000–1,400 volts under load, as compared to the
`
`disclosure in the ’817 and ’743 applications of a 768 open-circuit voltage
`
`and an 800–1200 open-circuit voltage range, respectively. Compare
`
`Ex. 1154, 19:42–47 with Ex. 1162, 50:34–35 and Ex 1163, 16:25–28.
`
`Likewise, with respect to the “current” limitation, Severinsky ’970 discloses
`
`that the current should be less than 75 amperes,” whereas the ’095
`
`application discloses currents of “100 amperes” and the ’817 application
`
`discloses “currents of up to 200 amperes.” Compare Ex. 1154, 19:42–44
`
`with Ex. 1158, 18:1–2, and Ex. 1162, 50:26–29. Thus, Ford’s expert, Dr.
`
`Stein, testifies that Severinsky ’970’s voltage and current ranges are
`
`“different” from the voltage and current ranges disclosed in the priority
`
`applications, thereby precluding incorporation of the specific voltage and
`
`current ranges disclosed in Severinsky ’970. Ex. 1188 ¶¶ 44–48. We find
`
`this testimony persuasive.
`
`Based on Dr. Stein’s testimony, we find that, at the very least, a
`
`skilled artisan would have had difficulty ascertaining the extent of the
`
`incorporation due to the mentioned differences between Severinsky ’970 and
`
`the priority applications in describing voltage and current. Ex. 1152 ¶¶ 153–
`
`154. Without a more detailed accounting, the skilled artisan would have
`
`been left to guess about the extent of the incorporation and whether the
`
`13
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`IPR2015-00606
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`differences were too vast to be applicable to the priority applications. Id.
`
`That type of incorporation by reference falls short of the Federal Circuit’s
`
`mandate that the host document identify the incorporated material with
`
`sufficient particularity and clarity. See Zenon, 506 F.3d at 1378–79.
`
`Paice relies heavily on the decision in Harari v. Lee, 656 F.3d 1331,
`
`1335 (Fed. Cir. 2011), and argues that the incorporation in that case is
`
`“nearly identical” to the incorporation language here. PO Resp. 14; see also
`
`id. at 10–11. We disagree. That case involved a broad incorporation clause
`
`followed, several pages later, by an incorporation directing the reader to
`
`certain “relevant portions” of the material being incorporated. Harari, 656
`
`F.3d 1335–36. Here, no such direction is given. Rather, the general
`
`incorporation here is followed immediately by qualifying language expressly
`
`informing the reader that any “differences” with Severinsky ’970 are
`
`excluded from the incorporation. That limitation, or qualification,
`
`distinguishes the incorporation here from the incorporation in Harari, where
`
`the incorporation did not include any such qualifying language expressly
`
`excluding incorporation of “differences” between the host document and the
`
`document being incorporated. If the general incorporation clause here was
`
`intended to constitute a complete incorporation of Severinsky ’970, there
`
`would be no need to follow it immediately with a limitation on the extent of
`
`the incorporation.
`
`In sum, we are not persuaded that the general incorporation of
`
`Severinsky ’970 would have been understood by a skilled artisan as also
`
`incorporating its specific ranges of maximum voltage and current,
`
`particularly in view of the express qualification that differences with
`
`Severinsky ’970 were not subject to incorporation.
`
`14
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`
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`IPR2015-00606
`Patent 7,237,634 B2
`
`
`2.
`
`Paice’s Argument that the Priority Applications Themselves
`Adequately Describe the Electrical Limitations
`
`
`
`Paice argues that, the incorporation of Severinsky ’970 aside, the
`
`priority applications themselves provide ample support for the electrical
`
`(voltage, current, and ratio) limitations of the challenged claims. PO Resp.
`
`23, 33, 36. We disagree.
`
`a.
`
`The Maximum Voltage Limitation
`
`The challenged claims require that the maximum DC voltage supplied
`
`from the battery be “at least approximately 500 volts.” Ford’s expert,
`
`Dr. Stein, testifies that a skilled artisan would not have understood the ’095,
`
`’817, and ’743 applications as evincing possession of the claimed voltage
`
`range. Ex. 1152 ¶¶ 125–143. Paice responds that the voltage limitation is
`
`supported by at least the ’743 application, which discloses an “open-circuit
`
`voltage” in the 800-1200 volt range. PO Resp. 23–24 (emphasis added).
`
`But, it is undisputed that, as claimed, the “at least approximately 500 volts”
`
`limitation refers to voltages “under load, as opposed to a nominal, open-
`
`circuit voltage.” See Section III.A. (noting that neither party disputes our
`
`construction of “maximum DC voltage” as “a voltage under load”).
`
`Nonetheless, Paice and its expert, Mr. Hannemann, rely on an “open-
`
`circuit voltage” in the ’743 application that they admit is “not under load,”
`
`without any explanation of how such an open-circuit voltage translates to a
`
`voltage under load. Ex. 2105 ¶ 62. On the other hand, Ford’s expert,
`
`Dr. Stein, testifies that, because the conversion of an open circuit voltage to
`
`a closed circuit or “under load” voltage depends on several parameters—
`
`such as type of battery, internal resistance as a function of current flow,
`
`voltage and current losses through the circuit, etc.—which are not disclosed
`
`15
`
`
`
`IPR2015-00606
`Patent 7,237,634 B2
`
`by the ’743 application, the required “under load” voltage cannot be
`
`ascertained. Ex. 1188 ¶ 30; see also Ex. 1152 ¶¶ 128, 137 (explaining
`
`further why voltage under load “cannot be deduced from the information
`
`provided by the ’743 application”). We find Dr. Stein’s testimony more
`
`persuasive, particularly in view of Mr. Hannemann’s reliance on an
`
`improper type of voltage from the ’743 application.
`
`In apparent recognition of the ’743 application’s deficiency in
`
`disclosing a voltage under load, as required by the claims, Paice argues
`
`alternatively that a skilled artisan “could derive” the proper voltage value.
`
`PO Resp. 23–27. To do so, however, Paice’s expert, Mr. Hannemann, mixes
`
`and matches power and current values across the three priority applications
`
`in an attempt to derive the proper voltage. See Ex. 2105 ¶¶ 64–69. We find
`
`this mix-and-match approach highly speculative. In our view, it does not
`
`convey the level of “reasonable clarity” necessary to show possession of the
`
`invention by the filing date sought. See Ariad Pharms., Inc. v. Eli Lilly &
`
`Co., 560 F.3d 1366, 1371 (Fed. Cir. 2009). Indeed, Ford’s expert, Dr. Stein,
`
`testifies that Mr. Hannemann’s derivation of a voltage under load relies on
`
`power and current values taken from “unrelated” examples in the priority
`
`applications. Ex. 1188 ¶ 33.
`
`In the end, we are not persuaded by Paice’s attempt to derive voltage
`
`values for support of the claimed “500 volt” limitation by combining
`
`unrelated values from three different applications. Instead, we find more
`
`persuasive the testimony of Ford’s expert that “a POSA would have no
`
`rationale to (1) look to the ’743 Application for a power value; and (2) to
`
`pair a power value from the ’743 Application with the disclosure of a 200
`
`amperes current value in the ’817 Application to calculate a maximum
`
`16
`
`
`
`IPR2015-00606
`Patent 7,237,634 B2
`
`voltage value.” Ex. 1188 ¶¶ 34–36. Accordingly, we determine that the
`
`disclosures in the priority applications fail to provide written description
`
`support for the claimed maximum voltage limitation.
`
`b.
`
`The Maximum Current Limitation
`
`The challenged claims require that maximum current from the battery
`
`be “less than approximately 150 amperes.” Paice relies exclusively on the
`
`’817 application as providing “ample support” for this maximum current
`
`limitation. PO Resp. 33. In particular, Paice argues that the ’817 application
`
`discloses that current from the battery may range “from 30 amperes up to
`
`200 amperes,” and that this broad range would have conveyed to a skilled
`
`artisan the narrower range of “less than approximately 150 amperes,” as
`
`recited in the challenged claims. Id. at 33–35.
`
`To arrive at that broad range, however, Paice combines two unrelated
`
`ranges, a range of “30-50 amperes,” which the ’817 application says is for
`
`continuous “long-term” operation of the motor, and another range of “up to
`
`200 amperes,” which the ’817 application says is for “full-power
`
`acceleration” of no more than “10-15 seconds.” Ex. 1162, 50:22–29. In
`
`doing so, Paice is “effectively rewriting the disclosure” of the ’817
`
`application in an effort to expand the range beyond what is actually
`
`disclosed, according to Ford’s expert, Dr. Stein. Ex. 1188 ¶¶ 37–38.
`
`Dr. Stein further explains that the “30-50 amperes” disclosure is
`
`actually a “limit” on continuous operation, “not a range of maximum current
`
`values, as required by the claims.” Id. ¶ 38. Thus, in Dr. Stein’s view, that
`
`disclosure cannot provide support for the higher 150 amperes maximum
`
`current limitation. Id. We agree. And, with respect to the ’817
`
`application’s disclosure of “up to 200 amperes,” we again agree with
`
`17
`
`
`
`IPR2015-00606
`Patent 7,237,634 B2
`
`Dr. Stein that there is too significant a disparity with the claimed maximum
`
`threshold of 150 amperes to convey possession thereof. Id. ¶ 39.
`
`Accordingly, we find that the disclosures of the priority applications fail to
`
`provide written description support for the claimed maximum current
`
`limitation.11
`
`c.
`
`The “Ratio” Limitation
`
`Finally, with respect to the limitations requiring that a “ratio” of “at
`
`least 2.5” of maximum DC voltage-to-current supplied from the battery,
`
`Paice admits that none of the priority applications alone discloses such a
`
`ratio. Instead, Paice argues that a skilled artisan “could calculate” the ratio
`
`from various disclosures in the three priority applications. PO Resp. 38–39.
`
`Indeed, Paice’s expert, Mr. Hannemann, plucks “power” values from the
`
`’743 application and “maximum current” values from the ’095 and ’817
`
`applications to calculate voltage, and thereby, derive a number of ratios that
`
`purport to satisfy the claimed ratio. Ex. 2105 ¶¶ 90–92. We are not
`
`persuaded by this mix-and-match approach. Rather, we find more
`
`persuasive the testimony of Ford’s expert, Dr. Stein, that a skilled artisan
`
`would “not derive voltage to current ratios from power and current values
`
`found in unrelated examples disclosed in three different applications.”
`
`Ex. 1188 ¶¶ 19–20 (emphasis added); see also Ex. 1152 ¶¶ 122–129. Thus,
`
`
`11 Paice also argues that the ’817 application provides support for the “75
`amperes” limitation found only in dependent claim 293. PO Resp. 33. We
`are not persuaded for the simple reason that the ’817 application emphasizes
`twice that maximum current from the battery not exc
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