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
`
`______________
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,237,634
`
`
`
`
`
`

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`
`
`
`
`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
`
`TABLE OF CONTENTS
`
`Table of Authorities .................................................................................................. ii
`
`Updated List of Exhibits .......................................................................................... iii
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Claim construction ........................................................................................... 2
`
`A.
`B.
`
`Setpoint .................................................................................................. 2
`Paice seeks to amend each independent claim to include “a
`comparison of the RL to a setpoint (SP) results in a
`determination that. . . ” .......................................................................... 4
`
`III.
`
`Ford’s petition properly establishes unpatentability under 35 U.S.C.
`§ 103 ............................................................................................................... 4
`
`IV. Ford is not estopped from maintaining its challenges to dependent
`claims 81-90, 115-124, 162-171, 216-225 ...................................................... 5
`
`V. As the Board has previously found, Severinsky discloses “when” to
`operate the engine based on “RL”, i.e., the “torque required to propel
`the vehicle” ...................................................................................................... 6
`
`VI. As the Board has previously found, Severinsky discloses a “setpoint” .......... 7
`
`VII. As the Board has found, the combination of Severinsky and Frank
`discloses the hysteresis limitations .................................................................. 9
`
`A.
`
`Rationale to combine Severinsky with Frank .....................................11
`
`VIII. Paice cannot avoid its ’634 Patent specification admissions ........................12
`
`IX. Conclusion .....................................................................................................13
`
`Certificate of Service ...............................................................................................15
`
`
`
`
`
`i
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`

`
`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
`
`
`
`
`
`Table of Authorities
`
`Cases
`
`Clearwater Systems Corp. v. Evapco, Inc.,
`
`394 Fed. Appx. 699 (Fed. Cir. 2010) ............................................................13
`
`Clearwater Systems Corp. v. Evapco, Inc.,
`
`596 F.Supp.2d 291 (D. Conn. 2009) .............................................................13
`
`Constant v. Advanced Micro–Devices, Inc.,
`
`848 F.2d 1560 (Fed. Cir. 1988) .....................................................................13
`
`In re Fracalossi,
`
`681 F.2d 792 (C.C.P.A. 1982) ......................................................................... 4
`
`In re Pearson,
`
`494 F.2d 1399 (C.C.P.A. 1974) ....................................................................... 5
`
`Johns Hopkins University v CellPro, Inc.,
`
`152 F.3d 1342 (Fed. Cir. 1998) ....................................................................... 5
`
`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
`
`491 F.3d 1342 (Fed. Cir. 2007) .....................................................................13
`
`RCA Corp. v Applied Digital Data Systems, Inc.,
`
`730 F.2d 1440 (Fed. Cir. 1984) ....................................................................... 5
`
`Statutes
`
`35 U.S.C. § 315 .......................................................................................................... 5
`
`
`
`
`
`ii
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`

`
`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
`
`Updated List of Exhibits
`
`Description
`
`Date
`
`Identifier
`
`U.S. Patent No. 7,237,634
`7,237,634 File History
`
`July 3, 2007
`n/a
`
`’634 Patent
`’634 Patent File
`History
`Severinsky
`Frank
`
`
`Davis
`
`
`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
`
`July 24, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`n/a
`
`Jan. 3, 2014
`
`’347 Patent File
`History
`
`
`Feb. 29, 2012
`
`
`
`Feb. 1994
`
`Feb. 1997
`Feb. 1998
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit
`No.
`1201
`1202
`
`1203
`1204
`1205
`1206
`1207
`1208
`
`1209
`
`1210
`1211
`1212
`1213
`1214
`
`1215
`
`1216
`
`1217
`
`1218
`
`1219
`
`1220
`
`1221
`
`1222
`1223
`
`U.S. Patent No. 5,343,970
`U.S. Patent No. 5,842,534
`Ford Letter to Paice
`U.S. Patent No. 7,104,347
`Declaration of Gregory Davis
`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
`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
`1997 Future Car Challenge
`
`iii
`
`

`
`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
`
`Date
`
`1998
`
`9-11,
`
`24-28,
`
`1976
`Feb.
`1992
`Apr.
`1997
`Apr. 1995
`Feb. 1998
`Feb. 1996
`Sept. 30, 1979
`June 1, 1971
`Sept. 1, 1988
`
`1996
`
`Feb. 1997
`
`Oct. 1996
`
`Feb. 1995
`Dec. 12, 2014
`
`
`Identifier
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Jan. 1998
`Filed Sept. 11,
`1998
`Nov. 25, 1998 Field
`Apr. 4, 2014
`
`Aug. 11, 1998
`
`
`July 11, 2014
`
`
`
`
`Exhibit
`No.
`1224
`
`1225
`1226
`
`1227
`
`1228
`1229
`1230
`1231
`1232
`1233
`
`1234
`
`1235
`
`1236
`
`1237
`1238
`1239
`
`1240
`1241
`
`1242
`1243
`1244
`
`1245
`
`Description
`
`History of Hybrid Electric Vehicle
`(Wakefield-1998)
`SAE 760121 (Unnewehr-1976)
`SAE 920447 (Burke-1992)
`
`Vehicle Tester for HEV (Duoba-
`1997)
`DOE Report to Congress (1994)
`SAE SP-1331 (1998)
`SAE SP-1156 (1996)
`DOE HEV Assessment (1979)
`EPA HEV Final Study (1971)
`Microprocessor Design for HEV
`(Bumby -1988)
`Propulsion System for Design for
`EV (Ehsani-1996)
`Propulsion System Design for
`HEV (Ehsani-1997)
`Bosch Automotive Handbook
`(1996)
`SAE SP-1089 (Anderson-1995)
`IPR 2014-00904 Decision
`Introduction
`to
`Automotive
`Powertrain (Davis)
`Toyota Prius (Yamaguchi-1998)
`US Application 60/100,095
`
`WO 9323263A1 (Field)
`IPR 2014-00571 Petition
`Critical
`Issues
`in Quantifying
`HEV
`Emissions
`and
`Fuel
`Consumption (An-1998)
`Excerpts
`from Patent Owner
`Response (IPR2014-00571, Doc
`8)
`
`iv
`
`

`
`
`Exhibit
`No.
`1246
`
`1247
`
`1248
`1249
`1250
`
`1251
`
`1252
`1253
`1254
`
`1255
`
`1256
`
`1257
`
`1258
`
`1259
`
`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`Description
`
`Date
`
`Identifier
`
`of
`
`Electronic
`
`from Patent Owner
`Excerpts
`Response (IPR2014-00579, Doc
`8)
`Fundamentals
`Circuits
`IPR 2014-00571 Decision
`IPR 2014-00579 Decision
`IPR 2014-00571 Patent Owner
`Response
`Bumby, J.R. et al. “Optimisation
`and control of a hybrid electric
`car” - IEE Proc. A 1987, 134(6)
`U.S. Patent No. 5,789,882
`Paice Complaint
`Final Decision, IPR2014-00904,
`Paper 41
`Final Decision, IPR2014-00571,
`Paper 44
`Final Decision, IPR2014-01416,
`Paper 26
`Deposition Transcript of Neil
`Hannemann for IPR2014-00571
`Deposition Transcript of Neil
`Hannemann for IPR2014-01416
`Final Decision, IPR2014-00884,
`Paper 33
`
`July 11, 2014
`
`Copyright
`2000
`Sept. 30, 2014
`Sept. 30, 2014
`Jan. 21, 2015
`
`
`
`
`
`
`
`
`
`Nov. 1987
`
`Bumby II
`
`Aug. 4, 1998
`Feb. 25, 2014
`December 10,
`2015
`September 28,
`2015
`March
`2016
`April 7, 2015
`
`10,
`
`Ibaraki
`
`’904 Decision
`
`’571 Decision
`
`’1416 Decision
`
`571 Dep.
`
`Sept. 4, 2015
`
`1416 Dep.
`
`December 10,
`2015
`
`’884 Decision
`
`v
`
`

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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
`
`
`I.
`
`Introduction
`
`This petition challenges four independent claims (80, 114, 161 and 215) of
`
`U.S.P.N. 7,237,634 (“the ’634 Patent”) and 40 previously unchallenged dependent
`
`claims. Paice only argues that certain limitations from independent claims 80, 114,
`
`161 and 215 are not satisfied. Paice provides no separate argument that the 40
`
`dependent claims are patentable over the prior art.
`
`Paice’s Response (“POR”) focuses on three principal arguments, all of
`
`which have been: (a) raised in prior responses by Paice; (b) addressed in prior
`
`replies by Ford; and (c) rejected by this Board.
`
`First, Paice argues that “setpoint” should be construed as a definite, but
`
`potentially variable value “at which a transition between operating modes may
`
`occur.” (POR at 5-9.) But as explained in Section II.A., Ford agrees with the
`
`Board’s prior decisions that have rejected Paice’s proposed construction. (see e.g.,
`
`Ex. 1254, ’904 Decision at 6-10; Ex. 1256, ’1416 Decision at 8-11.)
`
`Second, Paice argues that Severinsky allegedly does not teach using “road
`
`load” and “setpoint” to determine when to operate the engine. (POR at 17-40.)
`
`Although Ford re-addresses this argument in Sections V & VI below, the Board
`
`has previously rejected this same argument:
`
`Thus, we find that Severinsky fulfills the claimed criteria of
`
`comparing the torque required to propel the vehicle, or road load, to a
`
`“setpoint,” including operating the engine “to efficiently produce
`
`1
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`

`
`
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`torque above the SP, and wherein the SP is substantially less than the
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`MTO.”
`
`(Ex. 1256, ’1416 Decision at 18, Emphasis original; See also Ex. 1254, ’904
`
`Decision at 13-14; Ex. 1255, ’571 Decision at 17.)
`
`Third, Paice argues the combination of Severinsky and Frank allegedly does
`
`not teach “road load” based hysteresis. Although Ford re-addresses this argument
`
`in Section VII below, the Board has already rejected this same argument for
`
`independent claims 80 and 114:
`
`Thus, we find that Severinsky’s disclosure of a torque-based setpoint
`
`for starting and stopping the engine, when combined with Frank’s
`
`teaching of a time-delay with an on-off threshold for an engine, would
`
`have suggested to a skilled artisan the features of claims 80 and 114.
`
`(Ex. 1256, ’1416 Decision at 22, emphasis original.)
`
`II. Claim construction
`
`A.
`
`Setpoint
`
`The Board’s institution decision construed “setpoint” as “a predetermined
`
`torque value that may or may not be reset.” (Paper 12 at 8.) Paice argues that the
`
`construction provided by the Board in its institution decision “is unreasonably
`
`broad and does not reasonably reflect the disclosure of the ’634 Patent.” (POR at
`
`5.) But the Board has explained in multiple decisions why “setpoint” should be
`
`construed as a “predetermined torque value that may or may not be reset.” (See
`
`2
`
`

`
`
`e.g., Ex. 1256, ’1416 Decision at 8-11; Ex. 1254, ’904 Decision at 9.)
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`As the Board stated, “each of the challenged independent claims speak of the
`
`‘setpoint’ or ‘SP’ as being the lower limit at which the engine can produce torque
`
`efficiently,” and “[t]his express language suggests that ‘setpoint’ is not just any
`
`value, but a value that—per the surrounding claim language—equates to ‘torque.’”
`
`(Ex. 1256, ’1416 Decision at 8.) The Board further found persuasive Paice’s
`
`expert’s testimony that “under the ‘most straightforward’ approach for the claimed
`
`‘comparison,’ the ‘setpoint is a torque value.’” (Ex. 1256, ’1416 Decision at 8, fn.
`
`7, citing Ex. 1257, 2015 Hann. Dep. at 79:16-80:25.)
`
`The Board also stated that although “sometimes the specification describes
`
`the setpoint in terms of a ‘transition point’ . . . the claim language itself makes
`
`clear that setpoint relates simply to a torque value, without requiring that it be a
`
`transition point.” (Ex. 1256, ’1416 Decision at 8-9, emphasis in original.) The
`
`Board also found that “the specification acknowledges that the mode of operation
`
`does not always transition, or switch, at the setpoint, but instead depends on a
`
`number of parameters.” (Id.)
`
`Ford agrees with the Board’s construction, as supported by the Board’s prior
`
`3
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`final determinations. (Pet. at 8-9.)
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`

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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`
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`B.
`
`Paice seeks to amend each independent claim to include “a
`comparison of the RL to a setpoint (SP) results in a
`determination that. . . ”
`
`Unlinked to any particular claim term, Paice proposes a construction that
`
`adds “a comparison of the RL to a setpoint (SP) and a MTO results in a
`
`determination that” to each independent claim. (POR at 10.) Impermissibly adding
`
`limitations does not comport with the broadest reasonable construction standard. In
`
`any event, a POSA would have understood that Severinsky’s disclosure of running
`
`the engine only between 60-90% of MTO teaches that the engine is started and
`
`operated when the “RL” > “SP” and shut off when “RL” < SP. (Ex. 1207, Davis at
`
`¶¶200-237; Ex. 1203, Severinsky at 17:44-55; 20:63-67.) Since Ford’s analysis
`
`shows that Severinsky teaches “a comparison of the RL to a setpoint (SP),” Paice’s
`
`proposed construction does not affect the obviousness analysis.
`
`III. Ford’s petition properly establishes unpatentability under 35
`U.S.C. § 103
`
`On page 15, Paice makes a one-sentence, conclusory assertion that Ford did
`
`not provide an adequate obviousness analysis for claims 161 and 215. Specifically,
`
`Paice asserts that Ford must identify “claim elements [that] are missing in
`
`Severinsky” to present an obviousness argument. (POR at 15.)
`
`Paice cites no case that requires such a rule. Indeed, the Federal Circuit and
`
`the CCPA have repeatedly held that a single reference may establish obviousness.
`
`In re Fracalossi, 681 F.2d 792, 794 (C.C.P.A. 1982); In re Pearson, 494 F.2d
`
`4
`
`

`
`
`1399, 1402 (C.C.P.A. 1974). That is true even if that single piece of art anticipates
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`the claim because “anticipation is the epitome of obviousness.” RCA Corp. v
`
`Applied Digital Data Systems, Inc., 730 F.2d 1440, 1446 (Fed. Cir. 1984); Johns
`
`Hopkins University v CellPro, Inc., 152 F.3d 1342, 1357 n.21 (Fed. Cir. 1998).
`
`IV. Ford is not estopped from maintaining its challenges to dependent
`claims 81-90, 115-124, 162-171, 216-225
`
`Paice argues that pursuant to 35 U.S.C. § 315(e)(1), Ford’s petition with
`
`respect to independent claims 80, 114, 161 and 215 should be dismissed because a
`
`previously filed petition (IPR2014-01416) addressed these same four independent
`
`claims. (POR at 17; Ex. 1256, ’1416 Decision at 26.) But the present petition
`
`addresses the unpatentability of the dependent claims 81-90, 115-124, 162-171,
`
`216-225 that were neither challenged nor addressed by the Board’s decision in
`
`IPR2014-01416.
`
`Separate petitions were necessary to address the large number of dependent
`
`claims present in the ’634 Patent. (See also, Petition at 1.) To challenge all the
`
`dependent claims Ford had to file multiple petitions that addressed the same
`
`independent claims. Further, the Board may exercise its discretion in maintaining
`
`the current proceeding against the previously challenged independent claims
`
`because they are incorporated within the body of the presently challenged
`
`dependent claims “as a matter of dependency.” (See e.g., Ex. 1259, ’884 Decision
`
`at 15-16, n.11.)
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`5
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`Case No: IPR2015-00758
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`
`V. As the Board has previously found, Severinsky discloses “when”
`to operate the engine based on “RL”, i.e., the “torque required to
`propel the vehicle”
`
`Paice argues that independent claims 80, 114, 161, 215, and 294 are
`
`patentable because “Severinsky determines when to use the internal combustion
`
`engine based on the speed of the vehicle and not the [recited] road load.” (POR at
`
`18; See also POR at 21.) But the Board previously rejected this same argument in
`
`its final determination in IPR2014-01416.
`
`Paice would have us believe that “speed” is the sole factor used by
`
`Severinsky in determining when to employ the engine. That is not the
`
`case. Severinsky makes clear that the controller uses the “load”
`
`requirements of the vehicle in determining when to run the engine.
`
`***
`
`Although it may not use the term “road load” per se, Severinsky
`
`describes operation of the engine in terms similar to our construction
`
`of “road load,” and uses language much like the claims... The
`
`similarity of those descriptions provides ample support for finding
`
`that Severinsky teaches an engine control strategy that depends on the
`
`load, or torque, required to propel the vehicle, as called for by the
`
`claims.
`
`(Ex. 1256, ’1416 Decision at 14-15, 20; see also Ex. 1254, ’904 Decision at 12-
`
`19.)
`
`The record continues to support the Board’s decisions in the related IPRs.
`
`For example, Severinsky discloses that the “microprocessor 48” determines “the
`
`6
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`

`
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`load imposed by the vehicle’s propulsion requirements,” (i.e., “RL”) “at all times.”
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`(Pet. at 12-13; Ex. 1207, Davis at ¶¶183-187; Ex. 1203, Severinsky at 17:11-15.)
`
`Severinsky also discloses that the microprocessor uses the vehicle’s torque
`
`requirements in determining when to run the engine:
`
`[A]t 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.
`
`(Ex. 1203, Severinsky at 17:11-15, emphasis added; Pet. at 13.)
`
`VI. As the Board has previously found, Severinsky discloses a
`“setpoint”
`
`Paice argues that “Severinsky’s aspirational operating range of ‘60-90% of
`
`its maximum torque’ does not disclose a ‘60% of MTO’ setpoint.” (POR at 30.)
`
`Paice similarly argues that “Ford’s identified ‘60% of MTO’ is merely the lower
`
`bound of the desired operating range or ‘sweet spot’ of the engine—not a
`
`setpoint.” (POR at 33.) Paice is incorrect; Severinsky ’970 teaches a “setpoint.”
`
`First, the Board has previously found that “Severinsky’s disclosure of an
`
`‘operational point’ for the engine is no different than the claimed ‘setpoint.’” (Ex.
`
`1254, ’904 Decision at 14-15; see also Ex. 1256, ’1416 Decision at 15.) The record
`
`still supports the Board’s finding. For example, Severinsky discloses that: (1) the
`
`microprocessor controls the engine to “run only in the near vicinity of its most
`
`efficient operational point, that is, such that it produces 60-90% of its maximum
`
`7
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`

`
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`torque whenever operated;” and (2) operating
`
`the motor “under other
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`circumstances.” (Ex. 1203, Severinsky at 20:63-67 & 7:8-16, Emphasis added; Pet.
`
`at 15-21; Ex. 1207, Davis at ¶¶200-237.)
`
`The Board also found: “That Severinsky describes the engine’s operational
`
`point in terms similar to, if not the same as, the claimed setpoint, i.e., a percentage
`
`of maximum torque, runs counter to Paice’s argument that Severinsky employs the
`
`engine based on speed alone.” (Ex. 1256, ’1416 Decision at 15, emphasis original.)
`
`Like Severinsky, the challenged claims also describe the setpoint/operational point
`
`as a percentage of maximum torque (see e.g., Ex. 1201, ’634 Patent at claim 232
`
`reciting: “[setpoint] is at least approximately 30% of the [engine’s] MTO;” Petition
`
`at 17.)
`
`Paice also argues that Severinsky’s disclosure of “potential output torques of
`
`the engine” is “unrelated to input torque demands taught by the ’634 Patent, for
`
`example, the instantaneous torque required to propel the vehicle (i.e., road load).”
`
`(POR at 38, emphasis added.) Paice made this same argument in IPR2014-00904,
`
`and the Board rejected it, finding that Paice’s “argument fails for the simple reason
`
`that, like Severinsky, the claims themselves express ‘road load’ as a torque output,
`
`not an input.” (Ex. 1254, ’904 Decision at 18, emphasis in original.)
`
`In fact, Severinsky is no different than the way that the ’634 Patent claims
`
`the setpoint/operational point as a percentage of maximum torque output, i.e.,
`
`8
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`

`
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`“MTO.” (e.g., Ex. 1201, ’634 Patent at claim 232: “[setpoint] is at least
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`approximately 30% of the [engine’s] MTO;” See also Ex. 1256, ’1416 Decision at
`
`15.) Because Paice’s arguments have not changed, the Board should reject them
`
`again in this IPR for the same reasons.
`
`VII. As the Board has found, the combination of Severinsky and Frank
`discloses the hysteresis limitations
`
`Paice argues that the “proposed combination of Severinsky with Frank
`
`. . . fails to disclose or render obvious road-load-based hysteresis, as required by
`
`claims 80 and 114. . . .” (POR at 47.) But the Board previously rejected this same
`
`argument for the same claims in IPR2015-01416.
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`Severinsky’s disclosure of a torque-based setpoint for starting and
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`stopping the engine, when combined with Frank’s teaching of a time-
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`delay with an on-off threshold for an engine, would have suggested to
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`a skilled artisan the features of claims 80 and 114.
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`(Ex. 1256, ’1416 Decision at 22, emphasis in original.)
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`The record continues to support the Board’s final determination. As
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`explained in Section VI above, Severinsky discloses a torque-based “setpoint” for
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`starting and stopping the engine. (Ex. 1203, Severinsky at 20:63-67 & 7:8-16; Pet.
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`at 15-17; Ex. 1207, Davis at ¶¶200-237). Both Severinsky and Frank disclose
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`hysteresis strategies that utilize a time delay with an engine start/stop threshold to
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`reduce excessive engine cycling. (See Pet. at 35-38; Ex. 1207, Davis at ¶¶346-347,
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`365-366, 414-415.) Severinsky discloses “hysteresis in mode switching” to
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`“eliminate nuisance engine starts.” (Pet. at 37; Ex. 1203, Severinsky at 18:34-42.)
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`Frank discloses a first hysteresis strategy in which “a single threshold could
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`be used in combination with a time delay between the [engine] ‘on’ and ‘off’
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`modes to prevent frequent cycling [of the engine].” (Pet. at 36-37; Ex. 1204, Frank
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`at 7:66-8:11; Ex. 1207, Davis at ¶415.) Frank also discloses a second hysteresis
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`strategy that includes “separate ‘on’ and ‘off’ thresholds.” (Ex. 1204, Frank at
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`7:66-8:11.) Frank explains that “[t]he control band between the ‘on’ threshold
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`curve and the ‘off’ threshold curve prevents undesirable or excessive cycling of the
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`ICE 14.” (Pet. at 39; Ex. 1204, Frank at 7:66-8:11; Ex. 1207, Davis at ¶¶373-374.)
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`Also, Severinsky ’970 recognizes that at “slow speeds … [that are] about 25-
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`35 MPH … the average power demand is small.” (Ex. 1203, Severinsky at
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`17:34-43, emphasis added; Petition at 26-27.) And a POSA would have understood
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`this as meaning that low power (or torque) requirements generally coincide when a
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`vehicle is operating at low vehicle speeds. (Ex. 1203, Davis at ¶¶369, see also 83,
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`108, 127; Ex. 1226, at 7-8.) Paice’s own expert has acknowledged that torque and
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`speeds are “prox[ies]” because “higher vehicle speeds generally require higher
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`torques.” (Ex. 2208 at ¶131.) Thus, a POSA would have understood that
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`Severinsky’s discussion of a time-based hysteresis as being “speed-responsive,”
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`does not negate the fact that Severinsky ’970 describes torque/road-load-based
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`control. (Ex. 1207 at ¶366, 372 See also Ex. 1254, ’1416 Decision at 21.) A POSA
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`would have understood that it would have been obvious to combine the torque-
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`based setpoint control strategy of Severinsky with a hysteresis time delay (as
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`taught by Severinsky and Frank) to avoid nuisance starting/stopping of the engine.
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`(Petition at 37; Ex. 1207, Davis at ¶¶373-374 See also Ex. 1254, ’1416 Decision at
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`21-22.)
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`Further, Paice does not dispute that time-based hysteresis techniques – such
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`as those disclosed by Severinsky ’970 and Frank – were well-known and used in
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`hybrid vehicles. Dr. Davis confirms time-based hysteresis control techniques are
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`well known (Ex. 1207, Davis at ¶369), and Paice’s Dr. Hannemann testified
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`hysteresis was a well-known mechanical characteristic that is now employed in
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`electronic control strategies. (Ex. 1258, 1416 Dep. at 5:18-12:20.) It would have
`
`therefore been obvious to apply the well-known time-based hysteresis techniques
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`to any control strategy, including, the torque-based control strategy of Severinsky
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`’970. And a POSA would have included such hysteresis techniques to Severinsky’s
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`torque-based control strategy to achieve known benefits and results (e.g., avoiding
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`frequent on/off switching of the engine). (Ex. 1207, Davis at ¶375; See also Ex.
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`1254, ’1416 Decision at 21-22.)
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`A. Rationale to combine Severinsky with Frank
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`Paice further argues that “Ford offers no explanation as to how combining
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`two speed-based hysteresis references would result in a road load-based hysteresis
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`teaching.” (POR at 52.) But Ford did not make that argument.
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`Instead, an as explained in the prior section, Severinsky and Frank both
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`disclose a time-based hysteresis delay that seeks to avoid excessive on/off
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`switching of the engine. And it would have been obvious to combine Severinsky’s
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`torque-based mode selection strategy for turning on/off the engine with these
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`known hysteresis time-delays to obtain this well-known benefit. (Pet. at 38; Ex.
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`1207, Severinsky at 18:34-42; Ex. 1203, Frank at 7:66-8:11; Ex. 1207, Davis at
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`¶¶345-349.) Once employed, excessive on/off switching of the engine would be
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`eliminated from Severinsky’s torque-based control strategy.
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`VIII. Paice cannot avoid its ’634 Patent specification admissions
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`Paice states that “nowhere does the ’634 Patent state that Severinsky uses
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`road load to make decisions about when to employ the engine.” (POR at 41.) In
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`fact, the ’634 Patent admits that “an important aspect of the invention of the
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`[Severinsky] ’970 patent” is operating the engine “at relatively high torque levels”
`
`and operating the motor “when less torque is required.” (Pet. at 18; Ex. 1201, ’634
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`Patent at 25:11-24; Ex. 1207, Davis at ¶¶197-199.) The ’634 Patent also admits
`
`that “[w]here the road load exceeds the engine's maximum torque . . . the traction
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`motor (and possibly also the starting motor) are used to provide additional torque,
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`as in the [Severinsky] ’970 patent and above.” (Pet. at 22; Ex. 1201, ’634 Patent
`
`at 44:65-45:2, emphasis added; Ex. 1207, Davis at ¶¶245-246.) These admissions
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`are binding on Paice for determinations of both anticipation and obviousness. See,
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`e.g., PharmaStem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342, 1362 (Fed.
`
`Cir. 2007); Constant v. Advanced Micro–Devices, Inc., 848 F.2d 1560, 1570 (Fed.
`
`Cir. 1988).
`
`Paice relies on Clearwater Systems Corp. v. Evapco, Inc., 394 Fed. Appx.
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`699 (Fed. Cir. 2010) for the proposition that “it is legally impermissible for Ford to
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`rely on portions of the ’634 Patent as evidence of what is actually disclosed in
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`Severinsky [’970].” (POR at 44-45.) Paice’s characterization of Clearwater is
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`incorrect. In Clearwater, the Federal Circuit reversed a district court that found
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`inherency by anticipation at summary judgment. (Clearwater, 394 Fed. Appx.
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`699.) The district court found that the claimed method (in a ’739 Patent-in-suit)
`
`was anticipated by a prior art device (’267 Patent) based solely on disclosure in the
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`’739 Patent-in-suit stating that the prior art device could be used to practice the
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`claimed method. Clearwater Systems Corp. v. Evapco, Inc., 596 F.Supp.2d 291,
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`313 (D. Conn. 2009). The District Court’s decision was based on a claim chart that
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`relied only on excerpts from the patent-in-suit. Clearwater, 596 F.Supp.2d at 311-
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`312. Here, inherency by anticipation is not at issue, and Ford relies on excerpts and
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`figures from Severinsky for establishing unpatentability of the challenged claims.
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`IX. Conclusion
`
`For at least the reasons stated above, in the Petition and the supporting
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`Declarations, the Challenged Claims are unpatentable.
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`
`Dated: April 8, 2016
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`
`
`
`
`
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`
`
`Respectfully submitted,
`
`
` /John P. Rondini/
`Frank A. Angileri (Reg. No. 36,733)
`John P. Rondini (Reg. No. 64,949)
`John M. Halan (Reg. No. 35,534)
`Todd W. Dishman (Reg. No. 70,624)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Petitioner
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`Case No: IPR2015-00758
`Attorney Docket No. FPGP0104IPR4
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`
`
`Certificate of Service
`
`The undersigned hereby certifies that on April 8, 2016, a complete and entire
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`copy of Reply To Patent Owner’s Response To Petition For Inter Partes
`
`Review Of U.S. Patent No. 7,237,634, was served via electronic mail by serving
`
`the correspondence email address of record as follows:
`
`LEAD COUNSEL
`Timothy W. Riffe, Reg. No. 43,881
`
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0015IP4@fr.com;
`
`Riffe@fr.com
`
`BACK-UP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`Ruffin B. Cordell, Reg. No. 33,487
`Linda L. Kordziel, Reg. No. 39,732
`Daniel A. Tishman
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: : IPR36351-0015IP4@fr.com;
`
`Riffe@fr.com
`
`
`Respectfully submitted,
`
`
` /John P. Rondini/
`Frank A. Angileri (Reg. No. 36,733)
`John P. Rondini (Reg. No. 64,949)
`John M. Halan (Reg. No. 35,534)
`Todd W. Dishman (Reg. No. 70,624)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`Dentons US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`Attorneys for Petitioner
`
`15