Trials@uspto.gov
`571-272-7822
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` Paper 28
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`Entered: November 8, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00758
`Patent 7,237,634 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2015-00758
`Patent 7,237,634 B2
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`I. INTRODUCTION
`Paice LLC & The Abell Foundation, Inc. (collectively, “Paice”) are
`
`the owners of U.S. Patent No. 7,237,634 B2 (“the ’634 patent”). Ford Motor
`Company (“Ford”) filed a Petition for inter partes review of the ’634 patent,
`challenging the patentability of claims 80–90, 114–124, 161–171, 215–225,
`and 294 under 35 U.S.C. § 103. Paper 1 (“Pet.”). In a preliminary
`proceeding, we instituted an inter partes review because Ford made a
`threshold showing of a “reasonable likelihood” that the challenged claims
`are unpatentable under 35 U.S.C. § 314. Paper 12 (“Dec.”).
`Subsequent to institution, Paice filed a Patent Owner Response (Paper
`16, “PO Resp.”), and Ford followed with a Reply (Paper 18, “Reply”). An
`oral hearing was held on June 28, 2016, and a transcript of the hearing is
`included in the record. Paper 27 (“Tr.”). After reviewing the evidence and
`arguments of the parties, and pursuant to our jurisdiction under 35 U.S.C.
`§ 6, we conclude, first, that Ford is estopped from maintaining its challenge
`in this proceeding against claims 80, 114, 161, and 215, and, second, that
`Ford has proven, by a preponderance of the evidence, that remaining claims
`81–90, 115–124, 162–171, 216–225, and 294 are unpatentable.
`II. BACKGROUND
`
`Related Cases
`A.
`The ’634 patent, which includes over 300 claims, has previously been
`
`before us, having been the subject of multiple petitions filed by Ford for
`inter partes review (“IPR”). Aside from this case, the IPRs on which we
`have instituted trial include IPRs 2014-00904, 2014-1416, 2015-00606,
`2015-00722, 2015-00784, 2015-00785, 2015-00787, 2015-00790, 2015-
`00791, 2015-00799, 2015-00800, and 2015-00801. And, with our decision
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`today, we have rendered final decisions in all of these IPRs, many of which
`include some overlap in terms of claims challenged or prior art asserted or
`both. Indeed, four of the five independent claims challenged here—claims
`80, 114, 161, and 215—were adjudicated previously in IPR2014-01416
`(Paper 29) on grounds identical to those asserted here. See Ford Motor Co.
`v. Paice LLC, 2016 WL 932948 (PTAB Mar. 10, 2016).1
`
`The ’634 patent is also the subject of co-pending district court actions,
`including Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md.), filed
`Feb. 19, 2014, and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
`(D. Md.), filed Feb. 16, 2012. Pet. 2.
`B.
`The ’634 Patent
`
`The ’634 patent describes a hybrid vehicle with an internal
`combustion engine, at least one electric motor, and a battery bank, all
`controlled by a microprocessor that directs the transfer of torque between the
`engine, the motor, and the drive wheels of the vehicle. Ex. 1201, 17:17–56,
`Fig. 4. The microprocessor determines whether to operate the engine, the
`motor, or both, in response to “road load,” that is, the instantaneous torque
`required to drive the vehicle. Id. at 12:42–46. The microprocessor “can
`effectively determine the road load by monitoring the response of the vehicle
`to the operator’s command for more power.”2 Id. at 37:42–49. The operator
`commands include “the rate at which the operator depresses [accelerator and
`
`
`1 The Final Decision in the -1416 IPR is currently on appeal at the U.S.
`Court of Appeals for the Federal Circuit.
`2 The ’634 patent contrasts the claimed invention to prior control strategies
`“based solely on speed,” which are “incapable of responding to the
`operator’s commands, and will ultimately be unsatisfactory.” Ex. 1201,
`13:39–42.
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`brake] pedals 69 and 70 as well as the degree to which [they] are depressed.”
`Id. at 27:26–38, Figs. 3, 4. The microprocessor uses information from the
`operator commands “as an indication that an amount of torque . . . will
`shortly be required.” Id. at 27:41–57.
`The microprocessor then compares the vehicle’s torque requirements
`against a predefined “setpoint,” or “SP,” and uses the results of the
`comparison to determine the vehicle’s mode of operation, e.g., straight-
`electric, engine-only, or hybrid. Id. at 40:16–49. The microprocessor
`utilizes a hybrid control strategy that operates the engine only in a range of
`high fuel efficiency, which occurs when the instantaneous torque required to
`drive the vehicle, or road load (RL), reaches a setpoint (SP) of
`approximately 30% of the engine’s maximum torque output (MTO). Id. at
`20:61–67; see also id. at 13:64–65 (“the engine is never operated at less than
`30% of MTO, and is thus never operated inefficiently”). In other words,
`when the road load is above 30% of the engine’s maximum torque output,
`the vehicle operates in an engine-alone mode. Id. at 37:42–44. When the
`road load is below 30% of the engine’s maximum torque, the vehicle
`operates in a straight-electric mode. Id. at 37:24–28. Operating the engine
`in a range above the setpoint but below the engine’s maximum torque output
`maximizes fuel efficiency and reduces pollutant emissions of the vehicle.
`Id. at 15:55–58.
`C.
`The Challenged Claims
`
`Of the challenged claims, five are independent—claims 80, 114, 161,
`215, and 294. Common to the independent claims, except for claim 294, is a
`hybrid control strategy that compares “road load” of the vehicle to a
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`“setpoint” in order to determine when to operate the engine and motor.3 The
`challenged claims depending from these base claims combine that hybrid
`control strategy with additional limitations requiring that energy supplied
`from the battery to the motor be at a specific “maximum DC voltage” and a
`specific “maximum current.” For instance, a first set of dependent claims
`relates to maximum voltage supplied from the battery: “the maximum DC
`voltage is at least approximately 500 volts” (the “maximum voltage”
`limitations). A second set of claims relates to maximum current, requiring
`that it be “less than approximately 150 amperes” (the “maximum current”
`limitations). And a third set of claims requires that “a ratio of maximum DC
`voltage to maximum current supplied is at least 2.5” (the “ratio” claims).
`Claim 294, the other independent claim under challenge, requires that the
`maximum current be “no more than about 75 amperes.”
`Independent claim 80 and dependent claims 81 through 83 are
`illustrative of the claims being challenged:
`80. A method for controlling a hybrid vehicle,
`comprising:
`determining instantaneous road load (RL) required to
`propel the hybrid vehicle responsive to an operator command;
`monitoring the RL over time;
`operating at least one electric motor to propel the hybrid
`vehicle when the RL required to do so is less than a setpoint
`(SP);
`
`operating an internal combustion engine of the hybrid
`vehicle to propel the hybrid vehicle when the RL required to do
`so is between the SP and a maximum torque output (MTO) of
`the engine, wherein the engine is operable to efficiently produce
`
`
`3 Claim 294 does not recite a “setpoint,” but does utilize a hybrid control
`strategy that is responsive to “road load” for determining when to operate
`the engine and motor.
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`torque above the SP, and wherein the SP is substantially less
`than the MTO; and
`wherein said operating the internal combustion engine to
`propel the hybrid vehicle is performed when: the RL>the SP for
`at least a predetermined time; or the RL>a second setpoint
`(SP2), wherein the SP2 is a larger percentage of the MTO than
`the SP; and operating both the at least one electric motor and
`the engine to propel the hybrid vehicle when the torque RL
`required to do so is more than the MTO.
`81. The method of claim 80,
`wherein said operating the at least one electric motor
`comprises supplying power from a battery;
`wherein a ratio of maximum DC voltage to maximum
`current supplied is at least 2.5.
`82. The method of claim 81, wherein the maximum
`DC voltage is at least approximately 500 volts.
`83. The method of claim 81, wherein the maximum
`current is less than approximately 150 amperes.
`Ex. 1201, 65:11–42.
`D.
`The Instituted Grounds
`
`In a preliminary proceeding, we instituted trial because Ford made a
`threshold showing of a “reasonable likelihood” under 35 U.S.C. § 314(a)
`that:
`
`
`
`
`
`claims 161–166 and 215–220 are unpatentable as obvious
`over Severinsky,4
`claims 80–85 and 114–119 are unpatentable as obvious
`over Severinsky and Frank,5 and
`
`
`
`
`
`
`4 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1203, “Severinsky
`’970”).
`5 U.S. Patent No. 5,842,534, iss. Dec. 1, 1998 (Ex. 1204, “Frank”).
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`claims 86–90, 120–124, 167–171, 221–225, and 294 are
`unpatentable as obvious over Severinsky, Frank, Field,6 and
`SAE 1996.7
`Dec. 14–15. We now decide, first, whether Ford is estopped under 35
`U.S.C. § 315(e)(1) from maintaining its challenge against independent
`claims 80, 114, 161, and 215 because they are the subject of a prior final
`written decision, and second, whether Ford has proven the unpatentability of
`any remaining claims by a “preponderance of the evidence” under 35 U.S.C.
`§ 316(e).
`
`III. ANALYSIS
`
`A.
`
`Petitioner Estoppel
`As discussed above, in IPR2014-01416, we issued a final decision
`finding claims 80, 114, 161, and 215 of the ’634 patent unpatentable. See
`Ford Motor Co. v. Paice LLC, 2016 WL 932948 (PTAB Mar. 10, 2016). In
`view of that decision, Paice contends that Ford is now estopped under 35
`U.S.C. § 315(e)(1) from maintaining its challenge in this IPR against these
`same claims. PO Resp. 17. Ford does not dispute that estoppel attaches to
`claims 80, 114, 161, and 215. Reply 5. Instead, Ford requests that we use
`our discretion to keep these independent claims in this IPR because they are
`incorporated as a matter of dependency within the body of other claims
`under challenge. Id. But the grounds asserted here against claims 80, 114,
`161, and 215 are identical to the grounds asserted against these same claims
`in the -1416 IPR. And, because our final decision in the -1416 IPR
`
`6 PCT Int’l Pub. WO 93/23263 A1, pub. Nov. 25, 1993 (Ex. 1242, “Field”).
`7 Kozo Yamaguchi, Development of a New Hybrid System—Dual System,
`STRATEGIES IN ELECTRIC AND HYBRID VEHICLE DESIGN, SAE SPECIAL
`PUBLICATION SP-1156, No. 960231, 25–33, pub. Feb. 1996 (Ex. 1230, “SAE
`1996”).
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`addresses these claims and grounds, we see no benefit in revisiting our
`analysis from the -1416 proceeding. Thus, Ford is estopped under 35 U.S.C.
`§ 315(e)(1) from maintaining its challenge against claims 80, 114, 161, and
`215. As such, we dismiss the inter partes review with respect to these
`independent claims.8
`B.
`Claim Construction
`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); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Ford proposes a construction
`for two claim terms9 recited in the independent claims, “road load” and
`“setpoint.” Pet. 13–16. We construed both terms in our Decision to
`Institute. Dec. 6–8. Ford does not challenge our original constructions. See
`Reply 2–3. Paice, however, requests that we “reconsider” our construction
`of the term “setpoint.” PO Resp. 5–9. Paice also requests clarification of
`the term “maximum torque output” as used in the context of the claims. Id.
`at 9–14. We address both of these terms, as requested by Paice, but first we
`summarize our construction of “road load” from the institution decision.
`
`
`8 Although we address the parties’ contentions with respect to independent
`claims 80, 114, 161, and 215, because their respective limitations are
`necessarily included in the dependent claims under challenge, we do not
`otherwise provide a final written decision on their merits.
`9 Ford also proposes a construction for the terms “low-load mode I,”
`“highway cruising mode IV,” and “acceleration mode V,” as recited in
`claim 161. Pet. 10. Paice does not dispute Ford’s proposed construction.
`See PO Resp. 4–14. Because those terms are already expressly defined by
`claim 161 itself (Ex. 1201, 73:53–74:3), we determine that, for purposes of
`our review, no further construction is necessary.
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`
`“Road load (RL)”
`1.
`
`The term “road load” or “RL” appears in each of the challenged
`independent claims. Neither Ford nor Paice challenges our construction of
`“road load” from the Decision to Institute. As noted therein, the
`specification of the ’634 patent expressly defines “road load” as “the
`vehicle’s instantaneous torque demands, i.e., that amount of torque required
`to propel the vehicle at a desired speed,” and further notes that it “can be
`positive or negative, i.e., when decelerating or descending a hill, in which
`case the negative road load . . . is usually employed to charge the battery
`bank.” Dec. 6 (citing Ex. 1201, 12:42–61). Thus, consistent with the
`specification, we construed the term “road load,” or “RL,” to mean “the
`amount of instantaneous torque required to propel the vehicle, be it positive
`or negative.” We do not perceive any reason or evidence that might compel
`us to alter our original analysis.
`“Setpoint (SP)”
`2.
`The term “setpoint” or “SP” is found in four of the five challenged
`
`independent claims, namely, claims 80, 114, 161, and 215. In our Decision
`to Institute, after taking into consideration the parties’ arguments and
`supporting evidence, we construed “setpoint” or “SP” to mean “a
`predetermined torque value that may or may not be reset.” Dec. 6–8. Ford
`agrees with that construction, but Paice does not. Reply 3; PO Resp. 5–9.
`Paice maintains, as it did in the preliminary proceeding, that “setpoint” or
`“SP” should “not be limited to a torque value” but rather should be
`construed as “a definite, but potentially variable value at which a transition
`between operating modes may occur.” PO Resp. 5 (emphasis added).
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`As discussed in our Decision to Institute, we looked first to the
`context in which the term “setpoint” appears in the claims. See Phillips v.
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he claims
`themselves provide substantial guidance as to the meaning of particular
`claim terms. . . . [T]he context in which a term is used in the asserted claim
`can be highly instructive”). In that regard, we determined that the claims
`compare the setpoint against a torque value. Id. For example, each of
`claims 80, 114, 161, and 215 speaks of “setpoint” or “SP” as being the lower
`limit of a range at which the engine can produce torque efficiently, i.e.,
`“when the torque required to operate the hybrid vehicle is between a
`setpoint (SP) and a maximum torque output (MTO) of the engine, wherein
`the engine is operable to efficiently produce torque above SP.” See, e.g., Ex.
`1201, 65:19–24 (emphasis added). This express language suggests that
`“setpoint” is not just any value, but a value that—per the surrounding claim
`language—equates to a measure of “torque.”10
`
`Paice, on the other hand, urges that “setpoint” is synonymous with a
`“transition” point, not a torque value. PO Resp. 6–8. Paice points to a
`passage from the specification, exclusive of the claims, as supporting a
`construction of “setpoint” that “marks a point at which the vehicle may
`transition between two modes,” such as from the motor propelling the
`vehicle to a mode in which the engine is also used to propel the vehicle. Id.
`at 6–7 (citing Ex. 1201, 40:41–49). Paice’s argument is misplaced.
`Although the passage of the specification on which Paice relies says that
`
`
`10 Paice’s technical expert, Mr. Neil Hannemann, similarly agreed that the
`comparison made in the claims is “most straightforward” if the “setpoint is a
`torque value.” Ex. 1257, 79:16–80:25.
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`“sometimes” the setpoint may serve as a “transition point” (see id.), the
`claim language itself makes clear that setpoint relates simply to a torque
`value, without requiring that it be a transition point. In other words, a
`transition between modes is neither an intrinsic property nor a necessary and
`required condition of the setpoint as claimed. Indeed, the specification
`acknowledges that the mode of operation does not always transition, or
`switch, at a setpoint, but instead depends on a number of parameters. For
`instance,
`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. 1201, 19:67–20:6 (emphasis added). That disclosure suggests that a
`transition does not spring simply from the recitation of “setpoint.” Thus, we
`will not import into the meaning of “setpoint” an extraneous limitation that
`is supported by neither the claim language nor the specification. As such,
`we reject Paice’s attempt to further limit the meaning of setpoint to a
`transition between operating modes.
`Paice additionally argues that “setpoint” should not be limited to a
`torque value because the specification describes that the system variable,
`“the state of charge of the battery BSC,” may be compared against a
`setpoint. PO. Resp. 8–9 (citing Ex. 1201, 40:16–26). This argument also is
`misplaced. As discussed above, each of claims 80, 114, 161, 215 requires a
`comparison of the setpoint to a variable expressed as a torque value, not a
`variable expressed as a state of electrical charge. Thus, in the context of
`these claims, and those depending therefrom, a setpoint must be a torque
`value, and not some state of charge of a battery.
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`We also regard as meaningful that nothing in the specification
`
`precludes a setpoint from being reset, after it has been set. The specification
`states that the value of a setpoint may be “reset . . . in response to a repetitive
`driving pattern.” Ex. 1201, 40:50–53. That a setpoint may be reset under
`certain circumstances, however, does not foreclose it from being “set,” or
`“fixed,” at some point in time.11 A setpoint for however short a period of
`time still is a setpoint. Thus, for the foregoing reasons, we construe
`“setpoint” and “SP” as a “predetermined torque value that may or may not
`be reset.”
`“Maximum Torque Output (MTO)”
`3.
`
`Paice requests that we make clear that each of the challenged claims
`requires a comparison of road load (RL) not only to the setpoint (SP) but
`also to the maximum torque output (MTO) of the engine. PO Resp. 9–14.
`As an example, Paice points to limitations from claim 80 calling for such a
`comparison: “operating an internal combustion engine of the hybrid vehicle
`to propel the hybrid vehicle when the RL required to do so is between the SP
`and a maximum torque output (MTO) of the engine, . . . operating both the
`at least one electric motor and the engine to propel the hybrid vehicle when
`the torque RL required to do so is more than the MTO.” Id. at 9. According
`to Paice, this limitation calls expressly for a comparison with MTO. Id. at
`9–10. We agree that each of claims 80, 114, 161, and 215 has limitations
`directed to a comparison with a setpoint (SP) and a maximum torque output
`
`
`11 The definition of “set” is “determined . . . premeditated . . . fixed . . .
`prescribed, specified . . . built-in . . . settled.” Merriam-Webster’s Collegiate
`Dictionary (10th ed. 2000). Ex. 3001.
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`(MTO). But, in our view, that comparison is clear from the claim language
`itself, and, thus, no further construction is necessary.
`Nor does Ford dispute that such a comparison takes place. Instead,
`Ford disputes Paice’s attempt to read an additional limitation into the claims,
`i.e., that “a comparison of the RL to a setpoint (SP) results in a
`determination.” Reply 4. To the extent that Paice requests that we add such
`a requirement (see PO Resp. 10–14), we decline to do so, as it is unclear
`what is meant by “determination” when only a comparison is required. And,
`just to be clear, although claims 80, 114, 161, and 215 may require a
`comparison at some juncture with maximum torque output (MTO), that does
`not mean the claims exclude a comparison with other parameters.
`C. Ground 1—Claims 162–166 and 216–220 As Obvious Over
`Severinsky
`
`Ford challenges claims 161–166 and 215–220 on the ground that the
`claimed invention would have been obvious over Severinsky.12 Pet. 10. As
`discussed above, we dismiss the challenge against independent claims 161
`and 215. See Section III.A. Thus, with respect to this ground, only claims
`162–166 and 216–220, which depend from claims 161 and 215, remain
`before us. Nonetheless, these dependent claims necessarily include the
`limitations of their respective base claim. Accordingly, we address first the
`limitations incorporated from the base claims into the dependent claims still
`at issue. Notably, Paice’s response to Ford’s challenge centers mainly on
`the hybrid control strategy recited in these base claims. See PO Resp. 17–
`41.
`
`
`12 Paice does not dispute that Severinsky is prior art to the ’634 patent.
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`Base Claims 161 and 215
`1.
`Claims 161 and 215 are directed to a hybrid control strategy that
`compares “road load” to a “setpoint” for determining the “operating” modes
`of a hybrid vehicle, i.e., whether to operate the engine, the motor, or “both”
`to propel the vehicle. Ex. 1201, 73:41–74:6, 79:10–31. Ford provides a
`detailed analysis of how Severinsky teaches all of the limitations of these
`base claims. Pet. 10–29; Reply 6–9. In doing so, Ford proffers the
`testimony of Dr. Gregory W. Davis, an expert witness retained by Ford, who
`explains Severinsky’s teachings and maps them to their relevant claim
`limitations. Ex. 1207 ¶¶ 173–314. We are persuaded by Ford’s showing,
`which we adopt as our own, that Severinsky teaches the limitations of base
`claims 161 and 215.
`At the outset, we find that, like claims 161 and 215, Severinsky
`describes the basic components of a hybrid vehicle, including an internal
`combustion engine, at least one electric motor, a battery, and a controller.
`Compare Ex. 1203, Fig. 3 (Severinsky) with Ex. 1201, Fig. 4 (the ’634
`patent); see also Ex. 1207 ¶¶ 181, 203, 226. More significantly, Severinsky
`teaches the various modes of “operating” the vehicle as recited in claims 161
`and 215, including an engine-only mode, a motor-only mode, or a “both”
`mode. For instance, Severinsky discloses “controlling the relative
`contributions of the internal combustion engine and electric motor” so that
`the hybrid vehicle “may be operated in a variety of operating modes selected
`dependent on desired vehicle performance.” Ex. 1203, 22:19–39 (emphasis
`added). These modes, according to Severinsky, include:
`“a low speed/reversing mode, wherein all energy is supplied by
`said battery and all torque by said electric motor”;
`
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`“a high speed/cruising mode, wherein all energy is supplied by
`combustible fuel and all torque by said engine”; and
`“an acceleration/hill climbing mode, wherein energy is supplied
`by both combustible fuel and said battery, and torque by both
`said engine and said motor.”
`
`
`
`Ex. 1203, 22:39–50; see also id. at 10:24–11:6 (describing each mode in
`greater detail). We find that those disclosures in Severinsky meet the
`general configuration of the “operating” modes recited by claims 161 and
`215.
`
`Claims 161 and 215 additionally require that the engine be operated
`when the “road load (RL),” which we have construed as torque required to
`propel the vehicle, reaches a “setpoint (SP)” so that the engine produces
`torque “efficiently.” Ex. 1201, 73:55–60 (claim 161), 79:18–24 (claim 215).
`We are persuaded, notwithstanding the arguments of Paice (which we
`address below), that Severinsky teaches a comparison of road load to a
`setpoint for determining when to operate the engine, even though Severinsky
`may not employ the exact same language as the claims.
`In particular, Severinsky explains that a microprocessor “monitors the
`performance of the electric motor and the internal combustion engine, the
`state of charge of the battery, and other significant variables [and] . . .
`determines whether the internal combustion engine or the electric motor or
`both should provide torque to the wheels under various monitored operating
`conditions.” Ex. 1203, 6:19–23 (emphasis added). In determining whether
`to employ the engine, Severinsky further elaborates that the microprocessor
`operates the engine only when it is “efficient” to do so, and if not, the motor
`is used:
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`the internal combustion engine is operated only under the most
`efficient conditions of output power[13] 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.
`Id. at 7:8–16 (emphasis added); see also id. at 9:40–52 (“the internal
`combustion engine operates only in its most efficient operating range”).
`These disclosures indicate that Severinsky’s microprocessor monitors
`the performance of the vehicle to ensure the engine operates within a certain
`range of efficiency. Even more specifically, Severinsky discloses that to
`maximize efficiency, the microprocessor operates 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). That alone, Severinsky says, will yield improvement
`in fuel economy on the order of 200–300%. Id. at 20:67–68.
`Ford’s expert, Dr. Davis, explains that because the engine in
`Severinsky is not operated below 60% of MTO (maximum torque output of
`the engine), 60% MTO is a “setpoint” at or above which the engine is
`operated to propel the vehicle, and that when road load is between this
`setpoint and MTO, the engine alone produces the required torque. Ex. 1207
`¶¶ 204–208, 227–228. Dr. Davis further explains that the 60% of MTO in
`
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`13 Paice’s technical expert, Mr. Neil Hannemann, testified that a skilled
`artisan would have understood that “power is a product of torque and
`speed.” Ex. 1257, 31:6–13 (emphasis added); see also Ex. 2208 ¶ 37 (“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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`Severinsky is a setpoint below which only the electric motor is operated to
`propel the vehicle. Id. ¶¶ 210–211. As such, Dr. Davis concludes that a
`skilled artisan would have understood that Severinsky’s lower limit of 60%
`of MTO is a “setpoint,” thereby satisfying the claims. Id. ¶¶ 209, 229. Dr.
`Davis further concludes that the setpoint of 60% of MTO, disclosed by
`Severinsky, is “substantially less than MTO” of the engine, as also required
`by the claims. Id. ¶¶ 232–233.
`Paice responds that Severinsky fails to disclose “using road load and
`setpoint to make mode selection decisions, let alone comparing road load to
`a setpoint.” PO Resp. 17–18. According to Paice, “Severinsky determines
`when to use the internal combustion engine based on the speed of the vehicle
`and not road load.” Id. at 18 (emphasis added). Paice repeats this argument
`throughout its response (see id. at 21, 24, 27, 32, 37, 41, 43–44), and
`likewise, argues that Severinsky uses speed in determining when to operate
`the motor as well (id. at 20).
`
`Although we agree with Paice that the claims require a comparison of
`road load (i.e., the torque required to propel the vehicle) to a setpoint, we are
`unpersuaded that Severinsky does not make this comparison in determining
`when to operate the engine and motor. As discussed above, Ford and its
`declarant, Dr. Davis, whose testimony we find persuasive, make a specific
`accounting of how Severinsky teaches a comparison of the vehicle’s torque
`requirements (road load) to a setpoint in the range of 60–90% of MTO.
`And, to the extent that Paice points to passages in Severinsky that
`discuss “speed” as a factor in selecting the operating mode of the engine
`and/or motor (see PO Resp. 19–20), we decline to read those passages in
`isolation, as Paice does, without crediting Severinsky’s disclosure as a
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`whole. For instance, Paice argues that such passages indicate that
`“Severinsky only considers speed” as a factor in determining when to
`operate the engine. PO Resp. 20. That is, quite simply, not the case.
`Although it is true that certain passages in Severinsky describe the operating
`modes in terms of speed, other passages in Severinsky express a framework
`that clearly extends beyond considerations of speed: “More particularly,
`according to the invention, the internal combustion engine is operated only
`under the most efficient conditions of output power and speed.” Ex. 1203,
`7:8–10 (emphasis added). Paice’s own expert, Mr. Hannemann, testified
`that “power is a product of torque and speed” and a skilled artisan would
`have understood as much. Ex. 1257, 31:6–13 (emphasis added). Thus, at
`the very least, Severinsky contemplates the use of both torque and speed in
`determining when the engine can be operated efficiently.
`Moreover, in another passage, Severinsky makes clear that the
`microprocessor responds to “load” requirements of the vehicle in
`determining when the engine can be operated efficiently:
`Thus, 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.
`Ex. 1203, 17:11–15 (emphases added). That Severinsky may reflect on
`speed in determining when to operate the engine does not nullify or
`undermine these otherwise express disclosures by Severinsky of employing
`the engine based on the “torque” or “load” requirements of the vehicle.
`With that in mind, we reject Paice’s incorrect assertions that Severinsky
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`considers “only” speed to determine when to operate the engine. See PO
`Resp. 20–21.
`
`Paice also points to Severinsky’s disclosure of “speed-responsive
`hysteresis” as purported evidence of “a speed-based control strategy to turn
`the engine on and off.” PO Resp. 19–20. According to Paice, “[i]t makes no
`sense for Severinsky to use ‘speed responsive-hysteresis’ if it uses road load
`to control engine starts and stops.” Id. at 20. But Severinsky discusses
`“speed-responsive” hysteresis only in the context of preventing the engine
`from cycling on and off in “low-speed” situations where engine speed may
`dip temporarily t