UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`
`U.S. Patent No. 7,237,634 to Severinsky et al.
`
`IPR Case No.: IPR2015-00758
`
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`OF CLAIMS 80-90, 114-124, 161-171, 215-225, AND 294
`OF U.S. PATENT NO. 7,237,634
`
`
`
`
`

`
`
`
`
`
`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`TABLE OF CONTENTS
`
`EXHIBIT LIST ..................................................................................................................... iii
`
`I.
`
`INTRODUCTION .................................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ........................................ 2
`
`A.
`B.
`C.
`D.
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1) ............................................ 2
`Related Matters - 37 C.F.R. § 42.8(b)(2) ....................................................... 2
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3) .................................. 2
`Service Information - 37 C.F.R. § 42.8(b)(4) ............................................... 3
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104 .................................................. 3
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a) ............................................. 3
`B.
`Challenged Claims - 37 C.F.R. § 42.104(b)(1) .............................................. 3
`C.
`Prior Art Relied Upon .................................................................................... 3
`
`IV.
`
`PERSON OF ORDINARY SKILL IN THE ART (“POSA”) ........................... 4
`
`V.
`
`STATE OF THE ART .............................................................................................. 4
`
`VI. OVERVIEW OF THE ’634 PATENT ................................................................... 5
`
`A.
`B.
`
`Purported Improvement in the ’634 Patent ................................................. 5
`Challenged Claims Requiring Only One-Motor .......................................... 7
`
`VII. CLAIM CONSTRUCTION – 37 C.F.R. § 42.104 (B)(3) ..................................... 7
`
`A.
`B.
`C.
`
`Road load (RL) and RL (claims 80, 114, 161, and 215) ................................ 8
`Setpoint (SP) and SP (claims 80, 114, 161, and 215) ..................................... 8
`Low-load mode I, highway cruising mode IV, and acceleration mode V
`(Claim 161) ..................................................................................................... 10
`
`VIII. UNPATENTABILITY GROUNDS .................................................................... 10
`
`A. GROUND 1: Claims 215-220, And 161-166 Are Obvious Over
`Severinsky ’970 In View Of General Knowledge Of A POSA ............... 10
`1.
`Independent Claim 215 ..................................................................... 11
`2.
`Independent Claim 161 ..................................................................... 23
`3.
`Dependent Claims 162 And 216 ...................................................... 30
`4.
`Dependent Claims 163 And 217 ...................................................... 31
`5.
`Dependent Claims 164 And 218 ...................................................... 31
`6.
`Dependent Claims 165 And 219 ...................................................... 32
`7.
`Dependent Claims 166 And 220 ...................................................... 32
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`i
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`B.
`
`Ground 2: Claims 80-85, And 114-119 Are Obvious Over
`Severinsky ’970 In View Of Frank & General Knowledge Of A
`POSA .............................................................................................................. 33
`1.
`Independent Claim 80 ....................................................................... 34
`2.
`Independent Claim 114 ..................................................................... 39
`3.
`Dependent Claims 81-85 and 115-119 ............................................ 40
`C. Ground 3: Claims 86-90, 120-124, 167-171, 221-225, And 294 Are
`Obvious Over Severinsky ’970 & Frank In View Of Field, SAE
`1996, & General Knowledge Of A POSA ................................................. 40
`1.
`Reasons to Combine Severinsky ’970 (claims 167-171, 221-
`225 and 294), or Severinsky ’970 and Frank (claims 86-90,
`120-124), with another motor, as exemplified in SAE 1996
`and/or Field ........................................................................................ 42
`Claims 86, 120, 167 and 221 ............................................................. 47
`Claims 87-90, 121-124, 168-171, and 222-225 ............................... 53
`Independent Claim 294 ..................................................................... 55
`
`2.
`3.
`4.
`
`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS ......................................... 60
`
`X.
`
`CONCLUSION ........................................................................................................ 60
`
`CERTIFICATE OF SERVICE ......................................................................................... 61
`
`
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`
`ii
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`
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`EXHIBIT LIST
`
`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
`
`Date
`
`Identifier
`
`July 3, 2007
`n/a
`
`Sept. 6, 1994
`Nov. 3, 1997
`Sept. 2014
`Sep. 12, 2006
`
`Mar. 8, 2005
`
`Mar. 29, 2005
`
`Sept. 28, 2005
`June 25, 2008
`Aug. 1, 2008
`Dec. 5, 2008
`Nov. 14, 2013
`
`Dec. 16, 2013
`
`’634 Patent
`’634 Patent File
`History
`Severinsky ‘970
`Frank
`
`
`Davis
`
`
`
`
`
`
`
`
`
`
`
`
`July 24, 2014
`n/a
`
`Jan. 3, 2014
`
`
`’347 Patent File
`History
`
`
`Feb. 29, 2012
`
`
`Feb. 1994
`
`Feb. 1997
`Feb. 1998
`1998
`
`1976
`
`
`
`
`
`
`
`
`
`
`
`
`Description
`
`Exhibit
`No.
`1201 U.S. Patent No. 7,237,634
`1202
`7,237,634 File History
`
`1209
`
`1210
`1211
`1212
`1213
`1214
`
`1215
`
`1203 U.S. Patent No. 5,343,970
`1204 U.S. Patent No. 5,842,534
`1205
`Ford Letter to Paice
`1206 U.S. Patent No. 7,104,347
`1207 Declaration of Gregory Davis
`1208
`2005 Paice Opening Claim
`Construction Brief
`2005 Paice Response Claim
`Construction Brief
`2005 Claim Construction Order
`2008 Paice Opening Brief
`2008 Paice Response Brief
`2008 Claim Construction Order
`2013 Paice Opening Claim
`Construction Brief
`2013 Paice Response Claim
`Construction Brief
`2014 Paice Claim Construction Order
`Excerpt of USPN 7,104,347 File
`History
`1218 U.S. Patent Trial and Appeal Board
`January 3, 2014 Decision (Appeal No.
`2011-004811)
`2012 Amendment to U.S. Application
`13/065,704
`Curriculum Vitae of Gregory Davis
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`1996 Future Car Challenge
`1222
`1997 Future Car Challenge
`1223
`1224 History of Hybrid Electric Vehicle
`(Wakefield-1998)
`SAE 760121 (Unnewehr-1976)
`
`1216
`1217
`
`1219
`
`1220
`1221
`
`1225
`
`iii
`
`

`
`
`Exhibit
`No.
`1226
`
`1234
`
`1235
`
`1236
`1237
`1238
`1239
`
`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`Description
`
`Date
`
`Identifier
`
`SAE 920447 (Burke-1992)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Field
`
`
`
`1996
`
`Feb. 1997
`
`Jan. 1998
`Filed Sept. 11,
`1998
`Nov. 25, 1998
`Apr. 4, 2014
`Aug. 11, 1998
`
`Feb. 24-28,
`1992
`1227 Vehicle Tester for HEV (Duoba-1997) Apr. 9-11, 1997
`1228 DOE Report to Congress (1994)
`Apr. 1995
`1229
`SAE SP-1331 (1998)
`Feb. 1998
`1230
`SAE SP-1156 (1996)
`Feb. 1996
`1231 DOE HEV Assessment (1979)
`Sept. 30, 1979
`1232
`EPA HEV Final Study (1971)
`June 1, 1971
`1233 Microprocessor Design for HEV
`Sept. 1, 1988
`(Bumby -1988)
`Propulsion System for Design for EV
`(Ehsani-1996)
`Propulsion System Design for HEV
`(Ehsani-1997)
`Bosch Automotive Handbook (1996) Oct. 1996
`SAE SP-1089 (Anderson-1995)
`Feb. 1995
`IPR 2014-00904 Decision
`Dec. 12, 2014
`Introduction to Automotive
`
`Powertrain (Davis)
`Toyota Prius (Yamaguchi-1998)
`1240
`1241 US Application 60/100,095
`
`1245
`
`1246
`
`1242 WO 9323263A1 (Field)
`1243
`IPR 2014-00571 Petition
`1244
`Critical Issues in Quantifying HEV
`Emissions and Fuel Consumption (An-
`1998)
`Excerpts from Patent Owner Response
`(IPR2014-00571, Doc 8)
`Excerpts from Patent Owner Response
`(IPR2014-00579, Doc 8)
`Fundamentals of Electronic Circuits
`IPR 2014-00571 Decision
`IPR 2014-00579 Decision
`IPR 2014-00571 Patent Owner
`Response
`
`1247
`1248
`1249
`1250
`
`iv
`
`July 11, 2014
`
`July 11, 2014
`
`Copyright 2000
`Sept. 30, 2014
`Sept. 30, 2014
`Jan. 21, 2015
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`
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`
`
`
`

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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`Description
`
`Date
`
`Identifier
`
`
`Exhibit
`No.
`1251
`
`Bumby, J.R. et al. “Optimisation and
`control of a hybrid electric car” - IEE
`Proc. A 1987, 134(6)
`1252 U.S. Patent No. 5,789,882
`1253
`Paice Complaint
`
`Nov. 1987
`
`Bumby II
`
`Aug. 4, 1998
`Feb. 25, 2014
`
`Ibaraki
`
`
`v
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`

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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`
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`I.
`
`INTRODUCTION
`
`Petitioner (“Ford”) requests IPR of claims 80-90, 114-124, 161-171, 215-225,
`
`and 294 of U.S. Patent No. 7,237,634 (“’634 Patent”, Ex. 1201).
`
`The ’634 patent is one of five patents that Patent Owner (“Patentee” or
`
`“Paice”) has asserted against Ford in litigation. Paice contends that these patents teach
`
`an allegedly “fundamental” method of “mode control using road load” and “engine
`
`control under which engine torque is above a setpoint.” (Ex. 1253, Paice Complaint,
`
`p. 16, ¶43, served on 2/25/14 (p.1).) Paice’s methods of using “road load” and an
`
`engine torque “setpoint” were actually well known before Paice’s earliest priority date.
`
`(Ex. 1207 at ¶¶514-524.) U.S. Patent No. 5,789,882 (“Ibaraki ’882”), prior
`
`publications by Bumby, and Paice’s own U.S. Patent No. 5,343,970 (“Severinsky
`
`’970”) all disclose use of “road load” and “setpoint” for mode switching in a hybrid
`
`vehicle. (Id.)
`
`Paice’s patent claims start with this well-known control strategy and then add
`
`other common features. The ’634 patent has such 306 claims. Ford has repeatedly
`
`asked Paice to limit the asserted claims to a reasonable number (Ford Letter, Ex.
`
`1205), but Paice has refused. Accordingly, Ford is filing several IPR’s to address the
`
`’634 Patent claims and is trying to group the claims according to claimed subject
`
`matter. Due to page limitations, and the voluminous number of dependent claims,
`
`Ford addresses independent claims in multiple petitions. Ford relies on Severinsky
`
`’970 in this petition, but may rely on Ibaraki ’882 or the Bumby publications in other
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`1
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`petitions because they address other dependent claims directed toward different
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`Case No: IPR2015-00758
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`subject matter.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`
`Petitioner certifies Ford Motor Company is the real party-in-interest.
`
`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`
`The ’634 Patent is being asserted in Paice, LLC and the Abell Foundation, Inc. v.
`
`Ford Motor Company, Case No. 1-14-cv-00492 and Paice LLC and The Abell Foundation,
`
`Inc. v. Hyundai Motor America et. al. Case No. 1:2012-cv-00499. Ford has filed petitions
`
`concerning the ’634 Patent in IPR2014-00904, IPR2014-01416 and IPR2015-00606
`
`and has filed petitions concerning other asserted patents in IPR2014-00568, IPR2014-
`
`00570, IPR2014-00571, IPR2014-00579, IPR2014-00852, IPR2014-00875, IPR2014-
`
`00884, IPR2014-01415, IPR2015-00767. Petitioner is concurrently filing related
`
`petition: IPR2015-00722, IPR2015-00785, IPR2015-00784, and IPR2015-00768. This
`
`Petition is not redundant to any previously or concurrently filed petitions.
`
`C.
`
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
`
`Ford appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman P.C. as
`
`lead counsel, and John P. Rondini (Reg. No. 64,949), John M. Halan (Reg. No.
`
`35,534), and Todd W. Dishman (Reg. No. 70,624) of Brooks Kushman P.C., as well
`
`as Lissi Mojica (Reg. No. 63,421) and Kevin Greenleaf (Reg. No. 64,062) of Dentons
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`US LLP, as back-up counsel. A Power of Attorney has been filed.
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`
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`D.
`
`Service Information - 37 C.F.R. § 42.8(b)(4)
`
`Hand-delivery service can be made to Brooks Kushman P.C., 1000 Town
`
`Center, Twenty-Second Floor, Southfield, MI 48075 and Dentons US LLP, 233 South
`
`Wacker Drive, Suite 7800, Chicago, IL 60606-6306. Ford consents to email service at
`
`FPGP0104IPR4@brookskushman.com and iptdocketchi@dentons.com.
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a)
`
`Ford certifies the ’634 Patent is available for IPR and that Ford is not barred or
`
`estopped from challenging the patent claims on the grounds in this Petition.
`
`B.
`
`Challenged Claims - 37 C.F.R. § 42.104(b)(1)
`
`Ford requests IPR of ’634 Patent claims 80-90, 114-124, 161-171, 215-225, and
`
`294 and requests these claims be cancelled as unpatentable.
`
`C.
`
`Prior Art Relied Upon
`
`1. U.S. Patent No. 5,343,970 to Severinsky (“Severinsky ’970,” Ex. 1203),
`
`filed on Sept. 21, 1992 and issued on Sept. 6, 1994, is §102(b) prior art.
`
`2.
`
`U.S. Patent No. 5,842,534 to Frank (“Frank,” Ex. 1204), filed on Nov. 3,
`
`1997 and issued on Dec. 1, 1998, is prior art under at least 35. U.S.C. §102(e).
`
`3.
`
`PCT Application Publication Number WO 93/23263 to Field (“Field,”
`
`Ex. 1242), published on Nov. 25, 1993, is prior art under 35 U.S.C. §102(b).
`
`4.
`
`SAE Special Publication SP-1156 (“SAE 1996,” Ex. 1230) is one of a
`
`collection of papers published in Feb. 1996 and is prior art under 35 U.S.C. §102(b).
`
`3
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`D. Grounds of Challenge – 37 C.F.R. §42.104(b)(2)
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`Ground Basis
`
`References
`
`Claims
`
`1
`
`2
`
`3
`
`§103 Severinsky ’970 and General Knowledge of
`
`161-166 & 215-220
`
`a POSA
`
`§103 Severinsky ’970, Frank, and General
`
`80-85 & 114-119
`
`Knowledge of a POSA
`
`§103 Severinsky ’970, Frank, Field, SAE 1996,
`
`86-90, 120-124, 167-
`
`and General Knowledge of a POSA
`
`171, 221-225, & 294
`
`
`IV. PERSON OF ORDINARY SKILL IN THE ART (“POSA”)
`
`The level of ordinary skill in the art is evidenced by the references, See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)), and is also set forth in the
`
`declaration of Greg Davis. (Ex. 1207, Davis ¶¶41-42, see also ¶¶5-37.)
`
`V.
`
`STATE OF THE ART
`
`Hybrid vehicle architectures have been examined for more than 100 years and
`
`by Sept. 1998, numerous architectures were known, built, and publicly tested. (Id. at
`
`¶¶43-60.) For example, three architectures were well-known by 1998: (1) two-motor
`
`“series” hybrids (Id. at ¶¶61-69, 428-431); (2) one-motor “parallel” hybrids, like that
`
`disclosed in Severinsky ’970 (Id. at ¶¶70-86, 432-435); and (3) two-motor “series-
`
`parallel” hybrids, like that disclosed in the ’634 Patent. (Id. at ¶¶87-107, 437-440) (See
`
`also, Ex. 1230, SAE 1996 at 4, 7-8; Ex. 1242 at 1:8-3:24.)
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`Case No: IPR2015-00758
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`It was also known before Sept. 1998 that engines operate inefficiently at low
`
`torque loads, i.e., low speeds. (Ex. 1207 at ¶¶108-126.) With an appropriate electric
`
`motor, hybrids could restrict engine operation to when the torque load/speed were
`
`determined to be in a region when engine torque is most efficiently produced – the
`
`engine’s “sweet spot.” (Id. at ¶¶59, 108-134.) It was also known that hybrid engine
`
`operation could be restricted to its “sweet spot” using a control strategy that included:
`
`(1) an all-electric mode where only the motor propels the vehicle when engine
`
`operation would be inefficient (i.e., at low loads/speeds); (2) an engine-only mode
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`when engine operation is efficient (i.e., cruising at higher loads/speeds); and (3) an
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`acceleration mode where both engine and motor are used when demand is beyond the
`
`maximum torque capabilities of the engine (i.e., during acceleration, passing, or hill-
`
`climbing). (Ex. 1207 at ¶¶84-86, 124-133.)
`
`VI. OVERVIEW OF THE ’634 PATENT
`
`A.
`
`Purported Improvement in the ’634 Patent
`
`The ’634 Patent identifies a purported “new ‘topology’ for a hybrid vehicle”
`
`requiring “a first electric ‘starting’ motor” and “[a] second ‘traction’ motor . . . directly
`
`connected to the road wheels to propel the vehicle.” (Ex. 1201 at 11:50-62.)
`
`“Topology” is used to describe a vehicle architecture or hardware configuration. (Ex.
`
`1207 at ¶56, 136.) The “new ‘topology’” is disclosed as a two-motor “series-parallel”
`
`hybrid. (Ex. 1201 at 16:5-12.) Two-motor “series-parallel” hybrids were well-known
`
`long before the earliest priority date of Sept. 1998. (Ex. 1207 at ¶¶87-107.)
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`The ’634 Patent also identifies a control strategy to operate the engine, traction
`
`motor, and starter motor “in accordance with the vehicle’s instantaneous torque
`
`demands so that the engine is run only under conditions of high efficiency,” i.e., at
`
`higher speeds. (Ex. 1201 at Abstract; see also 19:45-50 and 20:61-21:2; Ex. 1207 at
`
`¶219.) The control strategy further provides for “operat[ing] the internal combustion
`
`engine only under circumstances providing a significant load, thus ensuring efficient
`
`operation.” (Ex. 1201 at 35:10-12; see also 20:61-21:2.) Efficiency is accomplished by
`
`using operating modes that determine when to operate the engine or motor(s)
`
`“depending on the torque required, the state of charge of the batteries and other
`
`variables.” (Id. at 35:3-9.) Specifically, the ’634 Patent discloses: (1) operating the
`
`traction motor to provide “the torque required to propel the vehicle” when engine
`
`torque would be inefficiently produced (i.e., “mode I”); (2) operating the engine to
`
`provide “the torque required to propel the vehicle” when engine torque is efficiently
`
`produced (i.e., “mode IV”); (3) operating both the engine and motor when the
`
`“torque required to propel the vehicle” is above the maximum operating torque of the
`
`engine (i.e., “mode V.”) (Id. at 35:63-36:4; 36:20-43; Figs. 8(a), (c), (d).) These
`
`operational “modes” were also summarized by patentee during prior claim
`
`construction briefing in district court litigation. (Ex. 1212 at 18-19.)
`
`As discussed above, the control strategy of the ’634 Patent was known in the
`
`prior art. (Ex. 1207 at ¶¶108-134.) In fact, the ’634 Patent acknowledges “the
`
`inventive control strategy according to which the hybrid vehicles of the [’634 Patent]
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`6
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`Case No: IPR2015-00758
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`invention are operated” is the same “as in the case of the hybrid vehicle system shown
`
`in [the prior art Severinsky] ’970 patent.” (Ex. 1201 at 35:3-9, see also 25:4-24.)
`
`B.
`
`Challenged Claims Requiring Only One-Motor
`
`Challenged claims 81-90, 115-124, 162-171, and 216-225 depend from
`
`independent claims reciting “at least one electric motor.” Accordingly, a hybrid having one
`
`electric motor satisfies this limitation; i.e., the claims do not recite the allegedly
`
`“novel” two-motor topology disclosed in the ’634 Patent.
`
`VII. CLAIM CONSTRUCTION – 37 C.F.R. § 42.104 (B)(3)
`
`For purposes of this IPR, a claim is interpreted by applying its “broadest
`
`reasonable construction.” 37 C.F.R. § 42.100(b).
`
`Certain terms were argued by patentee with respect to the ’634 Patent, and
`
`others in the ’634 Patent family (U.S. Patent Nos. 6,209,672, 6,554,088, and
`
`7,104,347), and construed by an Eastern District of Texas court in Paice LLC v. Toyota
`
`Motor Corp. et al., Case No. 2:04-cv-211 (Ex. 1208; Ex. 1209; Ex. 1210) and Paice LLC
`
`v. Toyota Motor Corp. et al., Case No. 2:07-cv-180 (Ex. 1211; Ex. 1212; Ex. 1213).
`
`Certain terms recited in the ’634 Patent claims were also argued by patentee
`
`and construed by a Maryland district court in Paice LLC v. Hyundai Motor Corp. et al.,
`
`Case No. 2:12-cv-0499, on July 24, 2014. (Ex. 1214; Ex. 1215; Ex. 1216.)
`
`Petitioner proposes the following constructions for this IPR only. But for some
`
`terms, based on the specification, file history, and patentee admissions, Ford contends
`
`that construction under applicable district court standards is narrower, and reserves
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`7
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`Case No: IPR2015-00758
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`
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`the right to present a narrower construction in district court litigation.
`
`A. Road load (RL) and RL (claims 80, 114, 161, and 215)
`
`The Eastern District of Texas and Maryland courts have construed the terms
`
`“road load,” “RL,” and “road load (RL)” as “the instantaneous torque required for
`
`propulsion of the vehicle, which may be positive or negative in value.” (Ex. 1213 at
`
`14-15; Ex. 1216 at 19.)
`
`For this proceeding only, Ford proposes that “road load” be construed as “the
`
`amount of instantaneous torque required to propel the vehicle, be it positive or
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`negative.” This is consistent with the PTAB’s construction. (See Ford v. Paice IPR
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`Decisions: Ex. 1248, IPR2014-00571, Paper 12 at 7; Ex. 1249, IPR2014-00579, Paper
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`12 at 7-8; Ex. 1238, IPR2014-00904, Paper 13 at 6.) Ford contends the construction is
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`narrower under district court standards.
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`B. Setpoint (SP) and SP (claims 80, 114, 161, and 215)
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`The Texas and Maryland courts construed “setpoint (SP)” as being “a definite,
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`but potentially variable value at which a transition between operating modes may
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`occur” (Ex. 1213 at 12-13; Ex. 1216 at 19-23), and in recent IPR petition responses,
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`Patent Owner agreed. (Ex. 1245 at 2-6; Ex. 1246 at 2-6.) Ford disagrees that Patent
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`Owner’s proposed construction is the broadest reasonable construction.
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`The ’634 Patent claims, specification, and file history define “setpoint” as a
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`“predetermined torque value.” All claims recite a “setpoint” or “SP” value being
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`compared to either: (1) an engine torque value (e.g., claim 1); or (2) a torque-based
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`“road load” value (e.g., claim 33). No claims recite a “setpoint” or “SP” in comparison to
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`any other system variable. Likewise, the specification says “the microprocessor tests
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`sensed and calculated values for system variables, such as the vehicle’s instantaneous
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`torque requirement, i.e., the “road load” RL . . . against setpoints, and uses the results
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`of the comparisons to control the mode of vehicle operation.” (Ex. 1201 at 40:16-26,
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`emphasis added.) To do so (e.g., compare whether “RL < SP”), the “setpoint” must be
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`in the same measurement units as the “road load.”
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`During prosecution of the ’347 Patent – the parent of the ’634 Patent (See Ex.
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`1201) – patentee added the following limitation to pending claims 82 and 104 to
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`overcome a prior art rejection: “wherein the torque produced by said engine when
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`operated at said setpoint (SP) is substantially less than the maximum torque output
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`(MTO) of said engine.”1 (Ex. 1217 at 4-7, 9-10, 15-16.) Patentee then argued the
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`engine was operated only “when it is loaded . . . in excess of a setpoint SP, which is
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`now defined to be ‘substantially less than the maximum torque output (MTO) of said
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`engine.’” (Ex. 1217 at 21-22, emphasis added.)
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`This proposed construction is consistent with the PTAB’s recent construction.
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`(Ex. 1248, Paper 12 at 7-9; See also Ex. 1249, Paper 12 at 8-10.) Accordingly, the
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`broadest reasonable construction of “setpoint (SP)” and “SP” as used in the challenged
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`claims is a “predetermined torque value.”
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`1 Claim 23 recites a similar comparison between engine torque and “setpoint (SP).”
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`C. Low-load mode I, highway cruising mode IV, and acceleration
`mode V (Claim 161)
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`During the Toyota suit, the court construed terms of the parent ’347 Patent (Ex.
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`1206) as follows: (1) “low-load mode I” as “the mode of operation in which energy from
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`the battery bank flows to the traction motor and torque (rotary force) flows from the
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`traction motor to the road wheels” (Ex. 1213 at 15, relying on Ex. 1206, 58:64-67); (2)
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`“highway cruising mode IV” as “the mode of operation in which energy flows from the
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`fuel tank into the engine and torque (rotary force) flows from the engine to the road
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`wheels” (Ex. 1213 at 16, relying on Ex. 1206, 59:1-3); and (3) “acceleration mode V” as
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`“the mode of operation in which energy flows from the fuel tank to the engine and
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`from the battery bank to at least one motor and torque (rotary force) flows from the
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`engine and at least one motor to the road wheels.” (Ex. 1213 at 16-17.) Ford agrees
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`with these constructions for this IPR but reserves right to offer narrower
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`constructions in litigation.
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`VIII. UNPATENTABILITY GROUNDS
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`The references below render the claimed subject matter invalid under 35 U.S.C.
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`§103, and Ford therefore has a reasonable likelihood of prevailing on each of the
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`following grounds. 35 U.S.C. §314(a); 37 C.F.R. §42.104(b)(4).
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`A. GROUND 1: Claims 215-220, And 161-166 Are Obvious Over
`Severinsky ’970 In View Of General Knowledge Of A POSA
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`The purportedly “new” two-motor topology disclosed in the ’634 Patent was
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`an asserted improvement over the “one motor” hybrid disclosed by Severinsky ’970.
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`(Ex. 1201 at 11:52, 17:30-36.) Severinsky ’970 and the general knowledge of a POSA
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`render obvious the one motor dependent claims 216-220 and 162-166, as well as
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`independent claims 215 and 161 from which they depend. (Ex. 1207, ¶¶173-341.)
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`Claims 215 and 161 were challenged on the same bases in IPR2014-01416 under §103,
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`and are addressed again because Ford is challenging dependent claims.
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`1.
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`Independent Claim 215
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`… [215.0] A method for controlling a hybrid vehicle, comprising
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`Severinsky ’970 claims a “method of operating a hybrid electric vehicle.” (Ex.
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`1203 at Abstract; Fig. 3; Claim 15; Ex. 1207, ¶¶177-178, 180-182.) Fig. 3 of Severinsky
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`’970 illustrates “a block diagram of the parallel hybrid drive system of the invention,”
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`as annotated below. (Ex. 1203 at 7:45-46; Ex. 1207, ¶¶181-182.)
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`Ex. 1203, Fig. 3 (annotated)
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`… [215.1] determining instantaneous road load (RL) required to
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`propel the hybrid vehicle responsive to an operator command
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`Severinsky ’970 discloses a microprocessor 48 that “responds to operator
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`commands” and controls engine 40 and motor 20 “to ensure that appropriate torque
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`is delivered to the wheels 34 of the vehicle.” (Ex. 1203, 12:60–13:2; Ex. 1207, ¶¶185,
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`193, 195, 196.) The microprocessor can “ensure that appropriate torque is delivered
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`to the wheels 34 of the vehicle” only by determining the torque required at that time,
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`i.e., the “road load (RL).” (Ex. 1207, ¶185.) While Severinsky ’970 may not use the
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`term “road load,” a POSA would have understood that Severinsky ’970 teaches
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`determining the instantaneous torque required to propel the vehicle because it ensures
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`delivering the appropriate torque to the wheels. Id.
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`Severinsky ’970 confirms this in describing modes where the (a) electric motor,
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`(b) engine, or (c) both, provide the torque required for propulsion. As to the motor
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`mode (a), Severinsky ’970 states the “electric motor 20 provides all of the torque
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`needed to move the vehicle.” (Ex. 1203, 10:67-68, emphasis added.) In engine mode
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`(b), “all torque required to drive the vehicle at normal highway speeds (e.g., above
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`about 45 mph) is provided by the internal combustion engine 40.” (Ex. 1203, 13:67-
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`14:2, emphasis added.) And when the engine is operating, the microprocessor
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`“activates electric motor 20 when torque in excess of the capabilities of engine 40 is
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`required.” (Id. at 14:15-18, emphasis added.) Severinsky ’970 calls this mode (c) the
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`“acceleration and/or hill climbing” mode. (Id. at 14:22-26.) A POSA would have
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`understood that the microprocessor can deliver “all torque required,” or determine
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`that “torque in excess” of engine capabilities is “required” only by “determining [the]
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`instantaneous road load (RL) required to propel the hybrid vehicle.” (Ex. 1207, ¶185.)
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`In fact, Severinsky ’970 confirms that the “microprocessor 48” determines “the
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`load imposed by the vehicle’s propulsion requirements,” (“road load”) “at all times”:
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`Thus, at all times the microprocessor 48 may determine the load (if any)
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`to be provided to the engine by the motor, responsive to the load
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`imposed by the vehicle's propulsion requirements, so that the
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`engine 40 can be operated in its most fuel efficient operating range. (Ex.
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`1203 at 17:11-15, emphasis added, 6:19-26; Ex. 1207, ¶¶183-187.)
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`The ’634 Patent also admits that Severinsky ’970 teaches a hybrid vehicle that
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`selects an operational mode “depending on the torque required” (“road load”):
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`Turning now to detailed discussion of the inventive control strategy
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`according to which the hybrid vehicles of the invention are operated: as
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`in the case of the hybrid vehicle system shown in the [Severinsky] ’970
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`patent, and as discussed in further detail below, the vehicle of the
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`invention is operated in different modes depending on the torque
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`required, the state of charge of the batteries, and other variables[.]
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`* * *
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`Where the road load exceeds the engine's maximum torque for a
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`relatively short period less than T, the traction motor (and possibly also
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`the starting motor) are used to provide additional torque, as in the '970
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`patent and above.
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`(Ex. 1201 at 35:3-17 and 44:65-45:2, emphasis added2; Ex. 1207, ¶197.) Again, a
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`POSA would have understood that the Severinsky ’970 microprocessor first
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`2 To be clear, Ford is relying on the quoted ’634 Patent passages as patentee
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`admissions regarding how a POSA would have understood the prior art Severinsky
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`determines the instantaneous torque required to propel the vehicle, (i.e., the “road
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`load”) and then operates in different modes depending on the torque required
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`(Ex. 1203, 12:60-13:2; Ex. 1207, ¶¶185-199.)
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`… [215.2] operating at least one electric motor to propel the
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`hybrid vehicle when the RL required to do so is less than a
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`setpoint (SP);
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`… [215.3] [a] operating an internal combustion engine of the
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`hybrid vehicle to propel the hybrid vehicle when the RL
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`required to do so is between the SP and a maximum torque
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`output (MTO) of the engine, [b] wherein the engine is
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`operable to efficiently produce torque above the SP, and [c]
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`wherein the SP is substantially less than the MTO; and
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`Severinsky ’970 discloses limitations [215.2] and [215.3][a]. Limitations
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`[215.2] and [215.3][a] address, respectively, operating a motor when road load is “less
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`than a setpoint (SP),” and operating an engine when road load is “between the SP and a
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`maximum torque output (MTO) of the engine.” As discussed more fully below, Severinsky
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`’970 discloses operating an engine when it “can be used efficiently,” and operating a
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`’970, not as prior art. These admissions bind the patentee. See, e.g., PharmaStem
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`Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1362 (Fed. Cir. 2007) (“Admissions in
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`the specification regarding the prior art are binding on the patentee for purposes of a
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`later inquiry into obviousness.”); 37 CFR 1.104(c)(3); and MPEP 2258.
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`motor when the engine cannot be used efficiently. Severinsky ’970 teaches that when
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`the torque required to propel the vehicle (road load) exceeds 60% of MTO, “the
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`engine can be used efficiently” and “it is so employed.” “Under other circumstances,”
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`i.e., when road load is less than 60% of MTO, “the electric motor alone drives the
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`vehicle.” Based on this disclosure, a POSA would have understood that Severinsky
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`’970 describes limitations [215.2] and [215.3][a]. (Ex. 1207, ¶¶200-237.)
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`Turning to specifics, Severinsky ’970 discloses “at least one electric motor” 20 and
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`an “internal combustion engine” 40. (Ex. 1207, ¶203, see also Fig. 3 above.) Severinsky ’970
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`teaches operating the engine or motor based on whether the engine c