Paper 44
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`Entered: September 28, 2015
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`
`
`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 IPR2014-00571
`Patent 7,104,347 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
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`I. INTRODUCTION
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`Ford Motor Company (“Ford”) filed a Petition (“Pet.”) for inter partes
`
`review of claims 1, 6, 7, 9, 15, 21, 23, and 36 of U.S. Patent No. 7,104,347
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`B2 (“the ’347 patent”), which is owned by Paice LLC & The Abell
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`Foundation, Inc. (collectively, “Paice”). In a preliminary proceeding, we
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`determined a reasonable likelihood existed that the challenged claims are
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`unpatentable under 35 U.S.C. § 103, and instituted trial. In support of
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`patentability, Paice filed a Patent Owner Response (“PO Resp.”), and Ford
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`followed with a Reply (“Reply”). After hearing oral argument from both
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`parties,1 and pursuant to our jurisdiction under 35 U.S.C. § 6(c), we
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`conclude Ford has proven, by a preponderance of the evidence, that all of the
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`challenged claims are unpatentable.
`
`II. BACKGROUND
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`The ’347 patent 2
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`The ’347 patent describes a hybrid vehicle with an internal
`
`A.
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`
`
`combustion engine, two electric motors (a starter motor and a traction
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`motor), and a battery bank, all controlled by a microprocessor that directs
`
`the transfer of torque from the engine and traction motor to the drive wheels
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`of the vehicle. Ex. 1001, 17:5–45, Fig. 4. The microprocessor features an
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`engine control strategy that runs the engine only under conditions of high
`
`efficiency, typically when the vehicle’s instantaneous torque requirements
`
`(i.e., the amount of torque required to propel the vehicle, or “road load”) is
`
`
`1 A transcript (“Tr.”) has been entered into the record. Paper 49.
`2 The ’347 patent is also the subject of several co-pending cases, including
`Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md.), filed Feb. 19,
`2014 (Pet. 1), and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
`(D. Md.), filed Feb. 16, 2012 (PO Resp. 6).
`
`2
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`at least equal to 30% of the engine’s maximum torque output (“MTO”)
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`capability. Id. at 20:52–60, 35:5–14; see also id. at 13:47–61 (“the engine is
`
`never operated at less than 30% of MTO, and is thus never operated
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`inefficiently”).
`
`
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`Running the engine only when it is efficient to do so leads to
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`improved fuel economy and reduced emissions. Id. at 13:47–51. To achieve
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`such efficiency, the hybrid vehicle includes various operating modes that
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`depend on the vehicle’s torque requirements, the battery’s state of charge,
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`and other operating parameters. Id. at 19:53–55. For example, the hybrid
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`vehicle may operate in: (1) an all-electric mode, where only the traction
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`motor provides the torque to propel the vehicle and operation of the engine
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`would be inefficient (i.e., stop-and-go city driving); (2) an engine-only
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`mode, where only the engine provides the torque to propel the vehicle and
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`the engine would run at an efficient level (i.e., highway cruising); (3) a dual-
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`operation mode, where the traction motor provides additional torque to
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`propel the vehicle beyond that already provided by the engine and the torque
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`required to propel the vehicle exceeds the maximum torque output of the
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`engine (i.e., while accelerating, passing, and climbing hills); and (4) a
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`battery recharge mode where the engine operates a generator to recharge the
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`battery while the traction motor drives the vehicle. Id. at 35:66–36:58,
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`37:26–38:55.
`
`B.
`
`The challenged claims
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`
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`Ford challenges the patentability of claims 1, 6, 7, 9, 15, 21, 23, and
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`36. Pet. 3. Of the challenged claims, claims 1 and 23 are independent.
`
`Claim 1 is directed to a “hybrid vehicle” (Ex. 1001, 58:13), while claim 23 is
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`directed to a “method of control” of a hybrid vehicle (id. at 60:22). Each of
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`the independent claims recites that the engine is employed when it can
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`produce torque “efficiently,” which claim 1 describes as when the torque
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`required to propel the vehicle is “at least equal to a setpoint (SP) [but]
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`substantially less than the maximum torque output (MTO)” of the engine (id.
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`at 58:29–37), and claim 23 describes as when the torque required to propel
`
`the vehicle is “between a lower level SP and a maximum torque output
`
`MTO” (id. at 60:23–42).
`
`
`
`Claim 1 is illustrative of the challenged claims:
`
`1.
`
`A hybrid vehicle, comprising:
`
`an internal combustion engine controllably coupled to
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`road wheels of said vehicle;
`
`
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`a first electric motor connected to said engine [a]nd
`operable to start the engine responsive to a control signal;
`
`
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`a second electric motor connected to road wheels of said
`vehicle, and operable as a motor, to apply torque to said wheels
`to propel said vehicle, and as a generator, for accepting torque
`from at least said wheels for generating current;
`
`
`
`a battery, for providing current to said motors and
`accepting charging current from at least said second motor; and
`
`
`
`a controller for controlling the flow of electrical and
`mechanical power between said engine, first and second
`motors, and wheels,
`
`
`
`wherein said controller starts and operates said engine
`when torque require[d] to be produced by said engine to propel
`the vehicle and/or to drive either one or both said electric
`motor(s) to charge said battery is at least equal to a setpoint
`(SP) above which said engine torque is efficiently produced,
`and wherein the torque produced by said engine when operated
`at said setpoint (SP) is substantially less than the maximum
`torque output (MTO) of said engine.
`
`Ex. 1001, 58:13–37 (emphasis added).
`
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`C.
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`The instituted grounds of unpatentability
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`
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`In the preliminary proceeding, we instituted trial because Ford made a
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`threshold showing of a “reasonable likelihood” that claims 23 and 36 were
`
`unpatentable as obvious over Severinsky,3 and claims 1, 6, 7, 9, 15, 21 were
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`unpatentable as obvious over Severinsky and Ehsani.4 Dec. to Inst. 10–15.
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`We now decide whether Ford has proven the unpatentability of these claims
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`by a “preponderance of the evidence.” See 35 U.S.C. § 316(e).
`
`A.
`
`Claim construction
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`III. ANALYSIS
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`
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b). This standard involves
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`determining the ordinary and customary meaning of the claim terms as
`
`understood by one of ordinary skill in the art reading the patent’s entire
`
`written disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007). Here, our review centers on the construction of two claim
`
`terms—“road load (RL)” and “setpoint (SP).” 5
`
`
`
`
`
`1.
`
`“Road load” or “RL”
`
`The term “road load” or “RL” appears throughout the claims of the
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`’347 patent. For example, claim 7, which depends from claim 1, recites that
`
`the operating modes are “responsive to the value for the road load (RL) and
`
`
`3 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1003, “Severinsky”).
`4 U.S. Patent No. 5,586,613, iss. Dec. 24, 1996 (Ex. 1004, “Ehsani”).
`5 Ford also contends that the terms “low-load mode I,” “highway cruising
`mode IV,” and “acceleration mode V” are in need of construction. Pet. 16–
`17. Those terms are expressly defined by claim 7. Ex. 1001, 58:64–59:8.
`As such, no further construction is necessary.
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`said setpoint (SP), both expressed as percentages of the maximum torque
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`output of the engine,” and claim 23 recites the step of “determining the
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`instantaneous torque RL required to propel said vehicle responsive to an
`
`operator command.”
`
`
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`The specification also describes “road load” as “the vehicle’s
`
`instantaneous torque demands, i.e., that amount of torque required to propel
`
`the vehicle at a desired speed.” Ex. 1001, 12:40–57 (emphasis added).
`
`Elsewhere the specification similarly speaks of road load in terms of a
`
`“torque” requirement:
`
`The vehicle operating mode is determined by a microprocessor
`responsive to the “road load,” that is, the vehicle’s
`instantaneous torque demands.
`
`
`* * *
`While operating at low speeds, e.g., when the vehicle’s
`torque requirements (“road load,” or “RL”) are less than
`30% of the engine's maximum torque output (“MTO”),
`engine 40 is run only as needed to charge battery bank 22.
`
`Id. at 11:60–63, 36:8–11, respectively (emphases added). Also, in
`
`distinguishing the claimed invention over the prior art, the specification
`
`explains that:
`
`Numerous prior art references . . . indicate the vehicle operating
`mode should be controlled in response to vehicle speed . . . [but
`none] recognizes that the desired vehicle operational mode
`should preferably be controlled in response to the vehicle’s
`actual torque requirements, i.e., the road load. Doing so
`according to the invention provides superior performance, in
`terms of both vehicle response to operator commands and fuel
`efficiency . . .
`
`Id. at 13:1–15 (emphasis added).
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`These passages from the specification comport with a construction of
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`“road load” that is limited to an instantaneous torque value, and more
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`specifically, a torque value which can be expressed in terms of a percentage
`
`of the engine’s “maximum torque output” or “MTO.” For instance, the
`
`specification states that:
`
`road load is shown . . . as varying from 0 at the origin to 200%
`of maximum torque output.
`
`
`* * *
`During highway cruising . . . where the road load is between
`about 30% and 100% of the engine’s maximum torque output,
`the engine alone is used to propel the vehicle.
`
`
`* * *
`[W]hen the microprocessor detects that the road load exceeds
`100% of the engine’s maximum torque output, it controls
`inverter/charger 27 so that energy flows from battery bank 22 to
`traction motor 25, providing torque propelling the vehicle in
`addition to that provided by engine 40.
`
`Id. at 37:13–15, 37:45–47, 38:5–10 (emphases added).
`
`
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`We see no reason to depart from these express definitions of “road
`
`load” in terms of an amount of torque. Thus, consistent with the
`
`specification’s many uses of the term, “road load” is properly construed to
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`be “the amount of instantaneous torque required for propulsion of the
`
`vehicle.”
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`
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`Paice urges that our construction of “road load” should additionally
`
`account for external forces acting on the vehicle, such as “aerodynamic
`
`drag.” PO Resp. 31–32; see also Ex. 2002 ¶¶ 85–88. Although
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`aerodynamic forces may play a role in the amount of torque required to
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`propel the vehicle, we need not address them in order to construe the term
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`“road load.” That is because the claims and specification of the ’347 patent
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`consistently speak of “road load” in a more general sense. In fact, the
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`specification mentions aerodynamic forces only in the context of a “heavy
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`vehicle” having “high torque requirements” and “poor aerodynamic
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`characteristics.” Ex. 1001, 49:9–14. That singular example, however, is not
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`enough for us to overlook the countless descriptions found elsewhere in the
`
`specification, where “road load” or “RL” is defined simply as “the amount
`
`of torque required to propel the vehicle,” divorced from other potential
`
`forces acting on the vehicle.
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`
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`
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`2.
`
`“Setpoint” or “SP”
`
`Each of independent claims 1 and 23 recites that the engine operates
`
`“efficiently” when the torque required to propel the vehicle is between a
`
`“setpoint (SP)” and a “maximum torque output (MTO).” Paice seeks to
`
`construe the term “setpoint” as “a definite, but potentially variable value at
`
`which a transition between operating modes may occur.” PO Resp. 6–7.
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`Ford, on the other hand, advocates that “setpoint” means a “predetermined
`
`torque value.” Pet. 16. Paice protests any construction that limits the
`
`meaning of “setpoint” to a “torque value” (PO Resp. 11), arguing that the
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`specification supports a broader definition that also could encompass a “state
`
`of charge of the battery” (Prelim. Resp. 13–15) or a “transition between
`
`operating modes” (PO Resp. 7–10).
`
`
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`We agree with Paice that the specification speaks of “setpoint” in
`
`terms of a “torque output,” a “state of charge of the battery,” or a “transition
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`point.” See Ex. 1001, 40:20–54. However, the claim language is not so
`
`broad. Although we recognize that the specification is an important tool in
`
`claim construction, it is the claim language—and the context in which the
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`disputed term is used—that is of primary importance. Phillips v. AWH
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`Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“the claims
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`themselves provide substantial guidance as to the meaning of particular
`
`claim terms . . . the context in which a term is used in the asserted claim can
`
`be highly instructive”) (citations omitted). Put another way, “the name of
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`the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
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`1998) (quoting Giles Sutherland Rich, Extent of Protection and
`
`Interpretation of Claims—American Perspectives, 21 Int’l Rev. Indus. Prop.
`
`& Copyright L. 497, 499 (1990)).
`
`
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`Here, contrary to Paice’s assertion, the claim language consistently
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`refers to a “setpoint” in terms of a “torque” requirement. For instance,
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`claim 1 recites that the controller starts and operates the engine
`
`when torque require[d] to be produced by said engine . . . is at
`least equal to a setpoint (SP) above which said engine torque is
`efficiently produced, and wherein the torque produced by said
`engine when operated at said setpoint (SP) is substantially less
`than the maximum torque output (MTO) of said engine.
`
`Ex. 1001, 58:30–37 (emphases added). And, likewise, claim 23 speaks
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`consistently of “setpoint” or “SP” as being the “lower level,” or limit, at
`
`which the engine can efficiently produce torque, reciting that: the engine is
`
`capable of “efficiently producing torque at loads between a lower level SP
`
`and a maximum torque output”; the engine is employed to propel the vehicle
`
`“when the torque RL required to do so is between said lower level SP and
`
`MTO”; and “wherein the torque produced by said engine when operated at
`
`said setpoint (SP) is substantially less than the maximum torque output.” Id.
`
`at 60:22–54 (emphases added). These express limitations suggest that
`
`“setpoint” is not just any value, but a value that—per the surrounding claim
`
`language—equates to the level of the engine’s “torque.”
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`Moreover, we note that claim 23 includes a limitation directed to “the
`
`state of charge of said battery,” but it never correlates that limitation with a
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`“setpoint” or “SP,” even though those terms are used elsewhere throughout
`
`the claim. Nor does Paice point us to anywhere in the claims that describe
`
`the setpoint in the context of the battery’s state of charge. Indeed, when
`
`speaking of “the state of charge of the battery,” dependent claims 9 and 31
`
`refer to it in terms of falling below “a predetermined level,” not a “setpoint.”
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`Thus, given the claim language’s unequivocal use of “setpoint” or “SP” in
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`the context of a “torque” requirement, we construe the terms “setpoint” and
`
`“SP” to mean “a torque value.” Our assessment does not end there,
`
`however.
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`
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`The specification states that “the value of a setpoint (for example)
`
`may vary somewhat in response to recent [driving] history, or in response to
`
`monitored variables” or may be “reset . . . in response to a repetitive driving
`
`pattern.” Ex. 1001, 40:37–59. But, just because a setpoint may vary under
`
`certain circumstances, that potential variation does not foreclose it from
`
`being “set,” or “fixed,” at some point in time.6 A setpoint for however short
`
`a period of time still is a setpoint. Any other construction would defeat its
`
`purpose of being set for comparison against another value. For example, the
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`specification states that “the microprocessor tests sensed and calculated
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`values for system variables [such as road load (RL)] . . . against setpoints,
`
`and uses the results of the comparisons to control the mode of vehicle
`
`operation.” Ex. 1001, 40:22–31 (emphasis added). That description makes
`
`
`6 The definition of “set” is “determined . . . premeditated . . . fixed by
`authority or appointment . . . prescribed, specified . . . built-in . . . settled,
`persistent.” Merriam-Webster’s Collegiate Dictionary (10th ed. 2000).
`Ex. 3001.
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`clear that the comparative setpoint is a pre-defined value. Indeed, the
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`specification refers to setpoint in terms of a “defined setpoint.” Id. at 19:64.
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`As such, we construe the term “setpoint” to mean at least “a predefined
`
`torque value that may or may not be reset.”7
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`
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`Finally, we cannot disregard Paice’s argument that our construction is
`
`“at odds” with the construction adopted by two district courts in related
`
`actions.8 PO Resp. 6. According to Paice, each of the district courts
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`construed “setpoint,” as used in the ’347 patent, to mean “a definite, but
`
`potentially variable value at which a transition between operating modes
`
`may occur.” Id. Although, generally, we construe claim terms under a
`
`different standard than that of a district court, and thus, are not bound by a
`
`district court’s prior claim construction, we nonetheless feel compelled, by
`
`the circumstances of this case, to evaluate the district courts’ construction in
`
`light of our construction. See Power Integrations, Inc. v. Lee, 2015 WL
`
`4757642, at *6 (Fed. Cir. Aug. 12, 2015) (“Given that [patent owner’s]
`
`principal argument to the board . . . was expressly tied to the district court’s
`
`claim construction, we think that the board had an obligation, in these
`
`circumstances, to evaluate that construction”) .
`
`
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`Here, the first half of the district courts’ construction—“a definite, but
`
`potentially variable value”— coincides squarely with our construction of
`
`“setpoint” as a “predefined” value “that may or may not be reset.” The
`
`
`7 Even Paice’s declarant agreed that, given the “comparison” being made in
`claims 1 and 23, the “most straightforward” construction is that “setpoint is a
`torque value.” Ex. 1039, 79:1–80:25.
`8 Paice LLC v. Toyota Motor Corp., No. 2:07-cv-00180, Dkt. 63 (E.D. Tex.
`Dec. 5, 2008); Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499, 2014
`WL 3725652 (D. Md. July 24, 2014).
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`difference, however, lies in our construction of “setpoint” as a “torque”
`
`value. On that point, at least one of the district courts held:
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`there is nothing in the claims or specification that indicate a
`given setpoint value is actually represented in terms of torque.
`In fact, the specification clearly indicates that the state of
`charge of the battery bank, ‘expressed as a percentage of its full
`charge’ is compared against setpoints, the result of the
`comparison being used to control the mode of the vehicle.
`
`Ex. 1011, 10 (citing the ’347 patent, 40:28–31). But, as discussed above,
`
`although claims are read in light of the specification, it is the use of the term
`
`“setpoint” within the context of the claims themselves that provides a firm
`
`basis for our construction. See Phillips, 415 F.3d at 1314 (“the context in
`
`which a term is used in the asserted claim can be highly instructive”). Here,
`
`the claims instruct us that “setpoint,” when read in the context of the
`
`surrounding language, is limited to a torque value. We decline to read the
`
`term as also encompassing a state of charge of the battery, as the district
`
`court did. Thus, we stand by our determination that claims 1 and 23
`
`consistently refer to “setpoint” as a “torque” requirement.
`
`
`
`With regard to the second half of the district courts’ construction of
`
`“setpoint” as “a transition between operating modes,” we believe it imports
`
`an extraneous limitation into the meaning of “setpoint” that is neither
`
`supported by the claim language nor the specification. In particular,
`
`claims 1 and 23 expressly describe “setpoint (SP)” as being the lower limit
`
`at which the engine can “efficiently” produce torque. Those claims make no
`
`mention of this lower limit as being a “transition” point for the “operating
`
`modes,” although it potentially may be. Indeed, the specification
`
`acknowledges that the mode of operation does not always transition, or
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`switch, at the setpoint, but instead depends on a number of operating
`
`parameters:
`
`the values of the sensed parameters in response to which the
`operating mode is selected may vary . . . , so that the operating
`mode is not repetitively switched simply because one of the
`sensed parameters fluctuates around a defined setpoint.”
`
`Ex. 1001, 19:53–64 (emphasis added).
`
`
`
`Moreover, that a “setpoint” is not a per se transition between
`
`operating modes is reinforced by the fact that only the dependent claims, for
`
`example claims 7 and 28, mention “setpoint” in terms of “operating modes.”
`
`See id. at 58:58–60, 61:11–13. Where the meaning of a claim term is clear
`
`from the context of its use in an independent claim, we will not further limit
`
`the meaning of the term by its use in a dependent claim, absent justification
`
`for doing so. See Phillips, 415 F.3d at 1315 (“the presence of a dependent
`
`claim that adds a particular limitation gives rise to a presumption that the
`
`limitation in question is not present in the independent claim”). Thus,
`
`although the district courts may have had justification for a narrower
`
`construction of “setpoint,” we believe it is unnecessary here and may lead to
`
`confusion given our standard of applying the “broadest reasonable
`
`construction” to the terms of a claim. See 37 C.F.R. § 42.100(b). As such,
`
`we maintain our construction of “setpoint,” as discussed above, which
`
`arguably may differ from the construction arrived at in the related district
`
`court actions.
`
`B.
`
`The asserted grounds
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`
`
`
`
`1.
`
`Claims 23 and 36—obviousness over Severinsky
`
`Ford relies primarily on Severinsky as teaching the limitations of the
`
`contested claims, including claim 23 on which Paice focuses the majority of
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`its response in defending the ’347 patent.9 See PO Resp. 12–52. Like claim
`
`23, Severinsky discloses the essential components of a hybrid electric
`
`vehicle, including an internal combustion engine, an electric motor, a
`
`battery, and a microprocessor for controlling the vehicle’s mode of
`
`operation, i.e., an all-electric mode, an engine-only mode, or a hybrid mode.
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`Compare Ex. 1003, Fig. 3 (Severinsky) with Ex. 1001, Fig. 4 (the ’347
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`patent).
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`In determining whether to employ the engine or the motor or both,
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`Severinsky’s microprocessor bases its decision on “various monitored
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`operating conditions” (id. at 6:19–26) that include “the operator’s inputs and
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`the vehicle’s performance” (id. at 14:15–18). Furthermore, Severinsky
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`teaches that the microprocessor activates the engine only when it is
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`“efficient” to do so:
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`the internal combustion engine is operated only under the most
`efficient conditions of output power[10] and speed. When the
`engine can be used efficiently to drive the vehicle forward, e.g.
`in highway cruising, it is so employed. Under other
`circumstances, e.g. in traffic, the electric motor alone drives the
`vehicle forward and the internal combustion engine is used only
`to charge the batteries as needed.
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`Ex. 1003, 7:8–16 (emphasis added); see also id. at 9:40–52 (“the internal
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`combustion engine operates only in its most efficient operating range”).
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`Even more importantly, Severinsky teaches that the engine’s efficient range
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`9 Paice does not dispute that Severinsky is prior art against the ’347 patent.
`10 Paice’s declarant testified that a skilled artisan would have understood that
`“power is a product of torque and speed.” Ex. 1039, 32:6–13, 82:10–11
`(emphasis added); see also Ex. 2002 (“For every engine speed, there is an
`associated torque value. Another way of defining an engine’s operating
`range would be by its output power, which is the engine’s speed multiplied
`by the output torque”) (emphases added).
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`is based on the “torque” level required to propel the vehicle, stating that the
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`microprocessor runs the engine “only in the near vicinity of its most efficient
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`operational point, that is, such that it produces 60–90% of its maximum
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`torque whenever operated.” Id. at 20:63–66 (emphasis added).
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`Central to our analysis is the recitation in claim 23 that the engine can
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`operate “efficiently” and be employed to propel the vehicle “when the torque
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`RL [road load] required to do so is between a lower level SP [setpoint] and a
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`maximum torque output MTO.” Ex. 1001, 60:22–25, 39–41. Paice does not
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`dispute that Severinsky teaches operating the engine when it is efficient to
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`do so. Rather, Paice faults Severinsky, repeatedly so, for failing to teach that
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`efficient operation of the engine is based on “road load,” or “RL,” as
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`required by claim 23. PO Resp. 12; see also id. at 26 (“Severinsky ’970
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`does not consider road load at all”), id. at 46 (“the vehicle taught by
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`Severinsky does not calculate road load or have any concept of road load”).
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`In Paice’s view, “Severinsky determines when to turn the engine on
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`based on the speed of the vehicle in contrast to the ’347 patent, which turns
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`the engine on based on road load.” Id. at 17. More specifically, Paice
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`argues, “nowhere does Severinsky disclose that road load or any other
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`torque demand is considered when determining when to employ the engine
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`or if the road load is above the setpoint when the engine is operated.” Id. at
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`37; see also id. at 19, 26, 34–36 (arguing same). Instead, according to Paice,
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`Severinsky “uses speed as the one factor in determining whether to employ
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`the engine.” Id. at 56 (emphasis added). In support of that proposition,
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`Paice cites various passages in Severinsky that discuss “speed.” See, e.g., id.
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`at 18–19, 27, 29–30.
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`We are not persuaded by Paice’s focus on isolated passages of
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`Severinsky, while downplaying its teaching as a whole. It is the totality of
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`Severinsky that must be assessed, not its individual parts. Paice would have
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`us believe that “speed” is the sole factor used by Severinsky’s
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`microprocessor in determining when to employ the engine. That is simply
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`not the case. Although Severinsky describes the use of “speed” as a factor
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`considered by the microprocessor, Severinsky makes clear that the
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`microprocessor also uses the vehicle’s “torque” requirements in determining
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`when to run the engine. Importantly, Severinsky discloses that
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`at all times the microprocessor 48 may determine the load (if
`any) to be provided to the engine by the motor, responsive to
`the load imposed by the vehicle’s propulsion requirements, so
`that the engine 40 can be operated in its most fuel efficient
`operating range.
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`Ex. 1003, 17:11–15 (emphases added). And, while Severinsky may not use
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`the term “road load” expressly, its description of the engine’s operation
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`being “responsive to the load imposed by the vehicle’s propulsion
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`requirements” is the same as the engine being employed in response to “road
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`load,” which we have construed to mean “the torque required for propulsion
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`of the vehicle.” As such, we find that Severinsky teaches an engine control
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`strategy that depends on road load, or “RL,” as required by claim 23.11
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`
`
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`11 We are not persuaded by the testimony of Paice’s declarant, who testifies
`that this passage in Severinsky relates to “providing torque to the motor” and
`“is not related to determining when to employ the engine.” Ex. 2002 ¶ 90.
`Plainly, this passage relates to operation of the engine—it states that the
`microprocessor determines the load “to be provided to the engine” and
`responds to that load “so that the engine 40 can be operated in its most fuel
`efficient operating range.” Ex. 1003, 17:7–15 (emphases added).
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`Moreover, Severinsky teaches elsewhere that efficient operation of the
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`engine is based on torque, not speed. In particular, Severinsky specifies that
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`the microprocessor runs the engine “only in the near vicinity of its most
`
`efficient operational point, that is, such that it produces 60–90% of its
`
`maximum torque whenever operated.” Id. at 20:63–67 (emphasis added).
`
`Severinsky’s “operational point” for the engine is no different than the
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`“setpoint,” or “SP,” called for by claim 23. Indeed, just as Severinsky’s
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`“operational point” is expressed in terms of a percentage of maximum
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`torque—“60–90% of its maximum torque”—so too is the claimed
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`“setpoint.” For instance, claim 29, which depends from claim 23, recites
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`that “said setpoint SP is at least approximately 30% of MTO.” Ex. 1001,
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`61:27–28; see also id. at 58:55–57. That Severinsky describes the
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`operational point for the engine in terms similar to, if not the same as, the
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`claimed invention runs counter to Paice’s argument that Severinsky employs
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`the engine based on speed alone.
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`
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`Also, we are not persuaded by Paice’s argument that Severinsky does
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`not teach a “lower level SP,” or setpoint, as required by claim 23. PO Resp.
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`34–35, 50–52. Rather, we find credible the testimony of Ford’s declarant,
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`Dr. Davis, that a skilled artisan would have understood the lower limit of
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`Severinsky’s range—60%—to be a “lower level” setpoint. See Pet. 21
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`(citing Ex. 1005 ¶¶ 201–204, 279); see also id. at 311, 398–402. Thus, we
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`find that Severinsky fulfills the claim requirement of employing the engine
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`to propel the vehicle when the torque demand, or road load, is between a
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`lower level setpoint (SP) and the engine’s maximum torque output (MTO).
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`
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`Paice cites various passages in Severinsky that purportedly show
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`Severinsky’s engine control strategy is “based on vehicle speed, and not the
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`road load or any other torque demand.” PO Resp. 17–19, 27, 29–30. For
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`example, Paice points to Severinsky’s disclosure that the engine is turned off
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`in “low speed circumstances” and turned on during “highway cruising” at
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`moderate speeds. Id. at 17–18. That disclosure, however, does not foreclose
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`Severinsky from teaching the engine’s torque requirements as a
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`determinative factor of when to employ the engine. In other words, torque
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`and speed are not mutually exclusive concepts. Indeed, the ’347 patent itself
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`speaks of “speed” when describing the vehicle’s various operating modes,
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`stating that “the traction motor provides torque to propel the vehicle in low-
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`speed situations” and “[d]uring substantially steady-state operation, e.g.,
`
`during highway cruising, the control system operates the engine.” Ex. 1001,
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`17:34–37, 19:35–36, respectively (emphasis added). Thus, just as “speed”
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`plays some role in the modes of ope