UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
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`Case IPR2015-00758
`Patent 7,237,634
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`Patent No. 7,237,634
`Patent Owner’s Response
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`Case IPR2015-00758
`Attorney Docket No: 36351-0015IP4
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`TABLE OF CONTENTS
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`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`THE ’634 PATENT ......................................................................................... 2 
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`A. 
`
`B. 
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`Background of the ’634 Patent .............................................................. 2 
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`Claim Construction ............................................................................... 4 
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`1. 
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`“setpoint (SP)” ............................................................................ 5 
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`The Challenged Claims Require a Comparison of Road Load to
`2. 
`Setpoint and MTO ................................................................................. 9 
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`III.  ARGUMENT ................................................................................................. 14 
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`A. 
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`B. 
`
`C. 
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`Ford’s Conclusory Petition is Deficient Under 35 U.S.C. § 103(a) ... 15 
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`Ford Will Be Estopped from Maintaining its Challenges to Claims 80,
`114, 161, and 215 ................................................................................ 17 
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`The Prior Art of Record Fails to Disclose Using Road Load to
`Determine When to Operate the Engine ............................................. 17 
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`1. 
`
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`Severinsky Uses Speed to Determine When to Use the Engine
`18 
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`The Passages of Severinsky on Which Ford Relies Are
`2. 
`Inapposite—Severinsky Does Not Use Road Load to Determine When
`to Operate the Engine .......................................................................... 21 
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`D. 
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`The Prior Art of Record Fails to Disclose a Setpoint ......................... 29 
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`1. 
`
`2. 
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`Severinsky’s Sweet Spot Is Not a Setpoint ............................... 31 
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`Ford’s Focus on Output Torque Is Flawed ............................... 38 
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`E. 
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`Ford’s Reliance on ’634 Patent’s Discussion of Severinsky is Flawed
`and Improper ....................................................................................... 41 
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`F. 
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`Grounds 2 and 3 Should Be Denied Because the Prior Art of Record
`Fails to Disclose Road-Load-Based Hysteresis .................................. 47 
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`Neither Severinsky nor Frank Discloses Road-Load-Based
`1. 
`Hysteresis ............................................................................................ 47 
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`2. 
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`Ford Fails to Establish a Rationale to Combine ....................... 51 
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`IV.  CONCLUSION .............................................................................................. 53 
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`Patent No. 7,237,634
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`Case IPR2015-00758
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................ 7
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc.,
`661 F.3d 629 (Fed. Cir. 2011) ............................................................................ 16
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ............................................................................ 11
`
`Clearwater Sys. Corp. v. Evapco, Inc.
`394 F. App'x 699 (Fed. Cir. 2010) ...................................................................... 44
`
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999) ........................................................................ 4, 7
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 4
`
`Elkay Mfg. Co. v. Ebco Mfg. Co.,
`192 F.3d 973 (Fed. Cir. 1999) ............................................................................ 44
`
`Ex parte Clapp, 227 U.S.P.Q. 972 (BPAI 1985) ..................................................... 53
`
`Ex parte Gunasekar, et al., Appeal 2009-008345, 2011 WL 3872007
`(BPAI Aug. 29, 2011) ......................................................................................... 53
`
`Fuji Photo Film Co. v. Int'l Trade Comm’n,
`386 F.3d 1095 (Fed. Cir. 2004) ............................................................................ 7
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 15, 17
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 50, 53
`
`KSR lnt’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 15, 50, 53
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`iii
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`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 11
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ................................................................ 4, 11, 19
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`Microsoft Corp. v. Proxyconn, Inc.,
`No. 2014-1542, 2015 WL 3747257 (Fed. Cir. Jun. 16, 2015) ......................... 4, 7
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`Microsoft Corp. v. Surfcast, Inc.,
`IPR2013-00292, IPR2013-00293, IPR2013-00294, IPR2013-
`00295, Paper 93 (PTAB Oct. 14, 2014).............................................................. 11
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`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) .................................................................. 4, 7, 11
`
`In re Oelrich,
`666 F.2d 578 (CCPA 1981) ................................................................................ 16
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`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) .......................................................................... 46
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 4
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997) ............................................................................ 9
`
`In re Vaidyanathan,
`381 Fed. Appx. 985 (Fed. Cir. 2010) .................................................................... 7
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`Statutes
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`35 U.S.C. § 103 .................................................................................................. passim
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`35 U.S.C. § 311 .......................................................................................................... 1
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`35 U.S.C. § 315 ........................................................................................................ 17
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`35 U.S.C. § 322 ........................................................................................................ 15
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`Other Authorities
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`37 C.F.R. § 42.22 ..................................................................................................... 15
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`37 C.F.R. § 42.100 ........................................................................................... 1, 4, 17
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`37 C.F.R. § 42.120 ..................................................................................................... 1
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`Case IPR2015-00758
`Attorney Docket No: 36351-0015IP4
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`EXHIBITS
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`Exhibit Name
`Table of Ford’s IPR Petitions
`Gregory W. Davis Deposition Tr. (IPR2014-00571 &
`IPR2014-00579) (Jan. 13, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00570)
`(May 8, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00875)
`(Mar. 3, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00875)
`(May 29, 2015)
`Gregory W. Davis Deposition Tr. (IPR2014-01416)
`(June 3, 2015)
`Declaration of Daniel A. Tishman in Support of
`Patent Owners’ Motion for Pro Hac Vice Admission
`Declaration of Neil Hannemann
`Neil Hannemann CV
`Gregory W. Davis Deposition Tr. (IPR2014-00571)
`(May 8, 2015)
`Excerpts from Neil Hannemann Deposition Tr.
`(IPR2014-00571) (April 7, 2015)
`Excerpt from File History for U.S. Patent No.
`8,214,097
`Integrated Microprocessor Control of a Hybrid i.c.
`Engine/Battery-Electric Automotive Power Train,”
`P.W. Masding, J.R. Bumby, Jan. 1990
`Masding, Philip Wilson (1988) “Some drive train
`control problems in hybrid i.c engine/battery electric
`vehicles,” Durham theses, Durham University
`Excerpt from McGraw-Hill Dictionary of Scientific
`and Technical Terms, Sixth Ed., 2003.
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`vi
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`Patent No. 7,237,634
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`Exhibit Number
`Ex. 2201
`Ex. 2202
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`Ex. 2203
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`Ex. 2204
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`Ex. 2205
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`Ex. 2206
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`Ex. 2207
`Ex. 2208
`Ex. 2209
`Ex. 2210
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`Ex. 2211
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`Ex. 2212
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`Ex. 2213
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`Ex. 2214
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`Ex. 2215
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`Patent No. 7,237,634
`Patent Owner’s Response
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`Case IPR2015-00758
`Attorney Docket No: 36351-0015IP4
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`Pursuant to 37 C.F.R. § 42.120 and the Decision to Institute (“Institution
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`Decision” or “Inst. Dec.”), Patent Owners Paice LLC and the The Abell Foundation,
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`Inc. (collectively, “Paice”) hereby submit this Response to the Petition for Inter
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`Partes Review of U.S. Patent. No. 7,237,634 Under 35 U.S.C. § 311 et seq., and 37
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`C.F.R. § 42.100 et seq. (“Petition” or “Pet.”) filed by Ford Motor Company (“Ford”).
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`I.
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`INTRODUCTION
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`U.S. Patent. No. 7,237,634 (“the ’634 patent”), which is the subject of the
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`present Petition, claims an inventive and novel method of control for a hybrid
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`electric vehicle that uses road load, setpoint, and the maximum torque output of an
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`internal combustion engine to determine when to transition between various
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`operating modes in which the vehicle is propelled by an electric motor, an internal
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`combustion engine, or both. Ford’s Petition challenged claims 80-90, 114-124, 161-
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`171, 215-225, and 294 of the ’634 patent (“the challenged claims”) as obvious under
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`35 U.S.C. § 103. Following Paice’s preliminary response, filed on August 10, 2015,
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`the Board instituted review of each of the challenged claims based on three proposed
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`grounds of obviousness over U.S. Patent No. 5,343,970 (“Severinsky”) either alone
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`or in combination with one or more of U.S. Patent No. 5,842,534 (“Frank”), PCT
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`Int’l Pub. WO 93/23263 (“Field”), and SAE Special Publication SP-1156 (“SAE
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`1996”). See Inst. Dec. at 5, 14-15. All challenged claims are patentable over the
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`cited grounds for the reasons set forth herein.
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`Ford’s arguments with regard to the ’634 patent are fundamentally flawed.
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`The ’634 patent’s innovative control strategy, using road load and setpoint to decide
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`when to move between operating modes to maximize efficiency, is absent in the
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`cited references. Moreover, none of the cited references discloses using road-load-
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`based hysteresis in determining when to turn the engine on and off, as claimed by
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`claims 80 and 114 and their dependent claims. Severinsky and Frank both explicitly
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`recite hysteresis based on speed—not road load. And Ford does not rely on Field or
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`SAE 1996 for any disclosure of road load, let alone road-load-based hysteresis.
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`Therefore, for the reasons detailed more fully herein, the Board should affirm
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`the patentability of claims 80-90, 114-124, 161-171, 215-225, and 294 of the ’634
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`patent.
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`II. THE ’634 PATENT
`A. Background of the ’634 Patent
`The ’634 patent (Ex. 1201), entitled “Hybrid Vehicles,” issued on July 3,
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`2007, from an application with a priority date of September 14, 1998. The ’634
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`patent discloses embodiments of a hybrid electric vehicle, with an internal
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`combustion engine, two electric motors and a battery bank. A microprocessor is
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`employed to control the internal combustion engine, the two electric motors, and the
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`battery bank based on the hybrid vehicle’s instantaneous torque requirements such
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`that the internal combustion engine is only run under high efficiency conditions.
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`See, e.g., Ex. 1201 at Abstract.
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`The hybrid vehicle may be operated in a number of modes based on the
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`vehicle’s instantaneous torque requirements, the engine’s maximum torque output,
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`the state of charge of the battery, and other operating parameters. In an
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`implementation of the ’634 patent, the microprocessor employs a hybrid system
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`control strategy based on sensed and calculated values for system variables that are
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`evaluated against setpoints and causes the vehicle to operate in various operating
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`modes pursuant to this control strategy. See, e.g., id. at 40:16-26.
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`For example, in mode I, the hybrid vehicle is operated as an electric car, with
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`the traction motor providing all torque to propel the vehicle. Id. at 37:24-32. As the
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`vehicle continues to be propelled in electric only mode, the state of charge of the
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`battery may become depleted, and need to be recharged. In this case, the hybrid
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`vehicle may transition to mode II to recharge the battery, in which the vehicle
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`operates as in mode I, with the addition of the engine running the starter/generator
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`motor to provide electrical energy to operate the traction motor and recharge the
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`battery. See, e.g., id. at 37:32-36. When the internal combustion engine can be
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`operated in its fuel efficient range to propel the vehicle, the hybrid vehicle operates
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`in mode IV, with the engine providing torque to propel the vehicle. Id. at 37:42-44;
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`38:51-61. If the vehicle requires additional torque, such as for acceleration or hill-
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`climbing, the vehicle may enter mode V, where the traction motor provides
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`additional torque to propel the vehicle beyond that provided by engine 40. Id. at
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`38:1-8.
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`B. Claim Construction
`In IPR proceedings, the Board applies the “broadest reasonable interpretation”
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`standard, which mandates that “[a] claim in an unexpired patent shall be given its
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`broadest reasonable construction in light of the specification of the patent in which
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`it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793
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`F.3d 1268, 1278 (Fed. Cir. 2015). The Federal Circuit has recognized, however, that
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`that standard requires that the claims must be read in light of the specification as it
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`would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc.,
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`603 F.3d 1255, 1260 (Fed. Cir. 2010). In Microsoft Corp. v. Proxyconn, Inc., the
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`Federal Circuit explained that the broadest reasonable interpretation does not mean
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`that “the Board may construe the claims during IPR so broadly that its constructions
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`are unreasonable under general claim constructions principles,” and that the
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`construction must not be “divorced from the specification and the record evidence”
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`and inconsistent with “the one that those skilled in the art would reach.” 789 F.3d
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`1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
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`2011); In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). “A construction that
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`is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language
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`and disclosure’ will not pass muster.” Microsoft, 789 F.3d at 1298 (quoting Suitco,
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`603 F.3d at 1260).
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`“setpoint (SP)”
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`1.
`A “setpoint” is “a definite, but potentially variable value at which a transition
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`between operating modes may occur.”1 In its Institution Decision, the Board
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`construed “setpoint” as a “predetermined torque value that may or may not be reset.”
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`Paice respectfully requests that the Board reconsider its construction as it is
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`unreasonably broad and does not reasonably reflect the disclosure of the ’634 patent.
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`Instead, the Board should adopt Paice’s construction (“a definite, but potentially
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`variable value at which a transition between operating modes may occur”).
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`1 As the Board is aware, the U.S. District Court for the Eastern District of
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`Texas and the U.S. District Court for the District of Maryland both have construed
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`the term “setpoint (SP)” to mean “a definite, but potentially variable value at which
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`a transition between operating modes may occur.” See Paice LLC v. Toyota Motor
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`Corp., Case No. 2:07-cv-180 (E.D. Tex. Dec. 5, 2008) (Ex. 1213 at 13); Paice LLC
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`v. Hyundai Motor Corp., Case No. 2:12-cv-499 (D. Md. Jul. 24, 2014) (Ex. 1216 at
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`22) (“The Plaintiffs’ proposed construction of ‘setpoint’ as ‘a definite, but
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`potentially variable value at which a transition between operating modes may occur,’
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`is consistent with the language of the claims and the intrinsic evidence.”).
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` The claims and the specification of the ’634 patent make clear that a
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`“setpoint” is not simply a numerical value divorced from the context of the rest of
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`the control system. Rather, “setpoint” serves the crucial function of marking the
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`transition from one claimed mode to another, and in particular, the transition from
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`propelling the vehicle with the motor to propelling the vehicle with the engine. See,
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`e.g., Ex. 1201 at 40:41-49.
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`For example, in claims 1 and 16, the “setpoint” marks the transition between
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`a mode in which only the motor propels the vehicle, to modes in which the engine
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`also can be used to propel the vehicle or charge the battery. See Ex. 1201 at claims
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`1 and 16. Dependent claim 6 similarly recites “…wherein the controller is further
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`operable to: monitor road load (RL) on the hybrid vehicle over time; and control
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`transition between propulsion of the hybrid vehicle by the first and/or the second
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`electric motors to propulsion by the engine responsive to the RL reaching the
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`SP…” See Ex. 1201 at claim 6 (emphasis added); see also id. at claims 8, 11, 19.
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`Additionally,
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`the specification unambiguously defines “setpoint” as
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`synonymous with a “transition point” between modes:
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`[I]n the example of the inventive control strategy discussed above, it is
`repeatedly stated that the transition from low-speed operation to
`highway cruising occurs when road load is equal to 30% of MTO. This
`setpoint, referred to in the appended claims as “SP”, and sometimes
`hereinafter as the transition point (i.e., between operation in modes I
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`and IV) is obviously arbitrary and can vary substantially, e.g., between
`30-50% of MTO, within the scope of the invention.
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`Id. at 40:41-49; see also id. at 40:16-26; 40:63-65; 41:4-8; 41:59-63; 44:24-31.
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`The Board’s initial construction of “setpoint” as a “predetermined torque
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`value that may or may not be reset,” see Inst. Dec. at 8, is incorrect and unreasonably
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`broad because it fails to recognize that “setpoint” represents a point at which a
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`transition between different operating modes may occur. The broadening
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`construction is “divorced from the specification and the record evidence” and
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`inconsistent with “the one that those skilled in the art would reach.” See Microsoft,
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`789 F.3d at 1298 (quoting NTP, 654 F.3d at 1288; Cortright, 165 F.3d at 1358). In
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`essence, the construction covers hybrid vehicle systems where transitions between
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`modes never occur—a clear error that is fundamentally contrary to the specification
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`of the ’634 patent. See Fuji Photo Film Co. v. Int'l Trade Comm’n, 386 F.3d 1095,
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`1098 (Fed. Cir. 2004) (claim should not be given overly broad construction that is
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`inconsistent with how claim term is used in the specification). The Board’s
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`“broadest reasonable interpretation” must be reasonable, and must be in conformity
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`with the invention as described in the specification. In re Vaidyanathan, 381 Fed.
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`Appx. 985, 995-96 (Fed. Cir. 2010); see also In re Abbott Diabetes Care Inc., 696
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`F.3d 1142, 1149 (Fed. Cir. 2012) (holding that Board’s construction of
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`“electrochemical sensor” was “unreasonable and inconsistent with the language of
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`the claims and the specification”).
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`The Board’s reliance on the ’634 patent’s disclosure of hysteresis as allegedly
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`indicating that transitioning does not always occur at the setpoint misses the point.
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`See Inst. Dec. at 8 (quoting Ex. 1201 at 19:67-20:6). As explained above, the
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`setpoint is a transition point, and the fact that hysteresis may be employed to avoid
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`repetitive fluctuation of operating modes around a defined setpoint does not change
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`the fact that a setpoint is “a definite, but potentially variable value at which a
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`transition between operating modes may occur.”
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`Additionally, as set forth in Paice’s preliminary response, “setpoint” should
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`not be limited to a torque value—the specification makes clear that a setpoint is not
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`limited to a torque value and in fact could also be a measure of the state of charge of
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`the battery.
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`[T]he microprocessor tests sensed and calculated values for system
`variables, such as the vehicle's instantaneous torque requirement, i.e.,
`the “road load” RL, the engine's instantaneous torque output ITO, both
`being expressed as a percentage of the engine's maximum torque output
`MTO, and the state of charge of the battery bank BSC, expressed as a
`percentage of its full charge, against setpoints, and uses the results of
`the comparisons to control the mode of vehicle operation.
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`Ex. 1201 at 40:16-26 (emphasis added). The Board is correct that claim language
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`may provide guidance as to the meaning of particular claim terms, see Inst. Dec. at
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`8
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`7; however, to the extent that the challenged claims make clear that setpoint relates
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`to a torque value, then it is unnecessary to graft this limitation onto the claims. See
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`U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim
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`construction . . . is not an obligatory exercise in redundancy.”).
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`Therefore, Paice respectfully requests that the Board reconsider its
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`construction and adopt Paice’s construction of “setpoint” to make clear that it is a
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`value “at which a transition between operating modes may occur.”
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`2. The Challenged Claims Require a Comparison of Road Load
`to Setpoint and MTO
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`Each of the challenged claims as properly construed require a comparison of
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`road load to setpoint and MTO. See Ex. 1201 at claim 80 (“operating at least one
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`electric motor to propel the hybrid vehicle when the RL required to do so is less than
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`a setpoint (SP); operating an internal combustion engine of the hybrid vehicle to
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`propel the hybrid vehicle when the RL required to do so is between the SP and a
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`maximum torque output (MTO) of the engine, … operating both the at least one
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`electric motor and the engine to propel the hybrid vehicle when the torque RL
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`required to do so is more than the MTO”). Because Ford appears intent on
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`interpreting these limitations in an unreasonably broad manner to remove the
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`comparison requirement and essentially capture any system where a torque value is
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`above/below a threshold either by coincidence or otherwise, the Board should
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`construe these limitations to make clear that the claimed controller (or method of
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`control) selects operating modes based on a comparison of road load to setpoint or
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`MTO.
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`Specifically, the Board should construe “operating at least one electric motor
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`to propel the hybrid vehicle when the RL required to do so is less than a setpoint
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`(SP)” as “operating at least one electric motor to propel the hybrid vehicle when a
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`comparison of the RL to a setpoint (SP) results in a determination that the RL
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`required to do so is less than a SP.” Second, the Board should construe “operating
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`an internal combustion engine of the hybrid vehicle to propel the hybrid vehicle
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`when the RL required to do so is between the SP and a MTO” as “operating an
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`internal combustion engine of the hybrid vehicle to propel the hybrid vehicle when
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`a comparison of the RL to a SP and a MTO results in a determination that the RL
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`required to do so is between the SP and a MTO of the engine.” Third, the Board
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`should construe “operating both the at least one electric motor and the engine to
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`propel the hybrid vehicle when the torque RL required to do so is more than the
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`MTO” as “operating both the at least one electric motor and the engine to propel the
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`hybrid vehicle when a comparison of the RL to a SP and a MTO results in a
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`determination that the torque RL required to do so is more than the MTO.”
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`The intrinsic evidence makes clear that the invention is directed to a control
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`algorithm for selecting operating modes based on the comparison of road load to SP
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`Patent No. 7,237,634
`Patent Owner’s Response
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`and MTO.
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`Case IPR2015-00758
`Attorney Docket No: 36351-0015IP4
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`First, the plain language of the claims makes clear that a comparison of road
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`load to SP and MTO is required. For example, the requirement in the challenged
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`claims of “operating an internal combustion engine of the hybrid vehicle to propel
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`the hybrid vehicle when the RL required to do so is between the SP and a MTO”
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`makes clear to a person of ordinary skill in the art that road load must be compared
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`to SP and MTO—otherwise, the language following the word “when” would be
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`rendered superfluous. See Ex. 2208 at ¶ 36. It is axiomatic that “[c]laims should
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`not be construed so as to render terms redundant or superfluous.” Microsoft Corp.
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`v. Surfcast, Inc., IPR2013-00292, IPR2013-00293, IPR2013-00294, IPR2013-
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`00295, Paper No. 93 at 11-12 (PTAB Oct. 14, 2014) (citing Bicon, Inc. v. Straumann
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`Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye
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`toward giving effect to all terms in the claim.”)); see also Merck & Co. v. Teva
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`Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that
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`gives meaning to all the terms of the claim is preferred over one that does not do
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`so.”). In other words, the term “when” must be understood to have causative effect.
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`To interpret the challenged claims to require mere coincidence would be a
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`construction “divorced from the specification and the record evidence” and
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`inconsistent with “the one that those skilled in the art would reach.” Microsoft Corp.
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`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc.,
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`Patent No. 7,237,634
`Patent Owner’s Response
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`654 F.3d 1279, 1288 (Fed. Cir. 2011).
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`Case IPR2015-00758
`Attorney Docket No: 36351-0015IP4
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`Next, the specification of the ’634 patent specifically describes a control
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`algorithm, depicted in Fig. 9, that selects operating modes by comparing road load
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`to SP and MTO. See Ex. 1201 at Fig. 9; col. 41:59-62 (“FIG. 9 thus shows the main
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`decision points of the control program run by the microprocessor, with the transition
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`point between mode I, low-speed operation, and mode IV highway cruising, set at a
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`road load equal to 30% of MTO”); see also id. at 40:41-44 (“For example, in the
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`example of the inventive control strategy discussed above, it is repeatedly stated that
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`the transition from low-speed operation to highway cruising occurs when road load
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`is equal to 30% of MTO.”); id. at 41:4-8; id. at 41:30-33. Indeed, this Board has
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`previously recognized that the microprocessor of the claimed invention compares
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`road load to setpoint. See Inst. Dec. at 3 (“The microprocessor compares the
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`vehicle’s torque requirements and the engine’s torque output against a predefined
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`setpoint and uses the results of the comparison to control the vehicle’s mode of
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`operation, e.g., straight-electric, engine-only, or hybrid.” (citing Ex. 1201 at 40:16-
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`49)).
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`Even Ford appears to concede that the claims of the ’634 patent require a
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`comparison of road load to setpoint and MTO. For example, Ford explains:
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`All claims recite a “setpoint” or “SP” value being compared to either:
`(1) an engine torque value (e.g., claim 1); or (2) a torque-based “road
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`Attorney Docket No: 36351-0015IP4
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`load” value (e.g., claim 33). No claims recite a “setpoint” or “SP” in
`comparison to any other system variable. Likewise, the specification
`says “the microprocessor tests sensed and calculated values for system
`variables, such as the vehicle’s instantaneous torque requirement, i.e.,
`the ‘road load’ RL . . . against setpoints, and uses the results of the
`comparisons to control the mode of vehicle operation.” (’634 Patent,
`Ex. 1201, 40:16-26, emphasis added.) To do so (e.g., whether “RL <
`SP”), the “setpoint” would have to be in the same measurement units
`as the “road load.”
`Pet. at 8-9 (emphasis added). Yet despite these admissions, Ford’s Petition makes
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`clear that it chose to ignore the comparison and causation requirements. For
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`example, Ford disregards the comparison between road load and setpoint. Indeed,
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`nowhere does Ford ever identify in Severinsky a comparison between road load and
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`the alleged setpoint (60% MTO). As set forth in great detail below (see Section
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`III.D), the 60% MTO value is not even used by Severinsky’s microprocessor, much
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`less compared to road load. Ford has essentially construed the claims to capture any
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`control system where a torque value happens to be above/below a threshold
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`irrespective of the criteria used by the control system. Such an interpretation of the
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`claims is unreasonably broad and should be rejected.
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`Therefore, for the reasons expressed above, for purposes of this IPR, the
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`Board should: (1) construe “operating at least one electric motor to propel the hybrid
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`vehicle when the RL required to do so is less than a setpoint (SP)” as “operating at
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`Patent No. 7,237,634
`Patent Owner’s Response
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`Case IPR2015-00758
`Attorney Docket No: 36351-0015IP4
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`least one electric motor to propel the hybrid vehicle when a comparison of the RL
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`to a setpoint (SP) results in a determination that the RL required to do so is less than
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`a SP,” (2) construe “operating an internal combustion engine of the hybrid vehicle
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`to propel the hybrid vehicle when the RL required to do so is between the SP and a
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`MTO” as “operating an internal combustion engine of the hybrid vehicle to propel
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`the hybrid vehicle when a comparison of the RL to a SP and a MTO results in a
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`determination that the RL required to do so is between the SP and a MTO of the
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`engine,” and (3) construe “operating both the at least one electric motor and the
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`engine to propel the hybrid vehicle when the torque RL required to do so is more
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`than the MTO” as “operating both the at least one electric motor and the engine to
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`propel the hybrid vehicle when a comparison of the RL to a SP and a MTO results
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`in a determination that the torque RL required to do so is more than the MTO.”
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`III. ARGUMENT
`Each of the three instituted grounds of unpatentability should be denied
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`because the claimed invention is novel and nonobvious. In particular, Ford fails to
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`provide an adequate obviousness analysis under 35 U.S.C. § 103(a). Moreover,
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`Severinsky, alone or in combination with any one of Frank, Field, and/or SAE 1996
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`fails to disclose or render obvious the “road load,” “setpoint,” and road load-based
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`hysteresis limitations.
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`Patent No. 7,237,634
`Patent Owner’s Response
`A.
`As a preliminary matter, all instituted grounds should be denied because Ford
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`Case IPR2015-00758
`Attorney Docket No: 36351-0015IP4
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`Ford’s Conclusory Petition i