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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
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`Case IPR2014-00568
`Patent 7,455,134
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`Patent Owner’s Preliminary Response to
`Petition for Inter Partes Review of U.S. Patent
`No. 7,455,134
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`Case IPR2014-00568
`Attorney Docket No: 36351-0012IP1
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`TABLE OF CONTENTS
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`Patent No. 7,455,134
`Patent Owner Response
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`I. 
`II. 
`III. 
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`IV. 
`V. 
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`INTRODUCTION ......................................................................................................... 1 
`BACKGROUND OF THE ’134 PATENT ..................................................................... 2 
`PETITIONER IS BARRED OR ESTOPPED FROM REQUESTING INTER PARTES
`REVIEW CHALLENGING THE ’134 PATENT CLAIMS .............................................. 6 
`A. 
`Introduction – The Arbitration Agreement ........................................................ 7 
`B. 
`Petitioner Has Failed to Meet the Requirements of 37 C.F.R. § 42.104 ........ 11 
`C. 
`The Board Should Exercise its Discretion Under 37 C.F.R. §42.108(b) and
`Deny Institution of the Petition to Prevent Harm to Patent Owner ................. 12 
`CLAIM CONSTRUCTION ......................................................................................... 14 
`DEFECTS IN THE PROPOSED GROUNDS OF UNPATENTABILITY .................... 17 
`A. 
`Ground 1A is defective because Ford has failed to establish that there is a
`reasonable likelihood that the ’455 PCT publication discloses “a ratio of
`maximum DC voltage … to current supplied from said electrical storage
`device to at least said first AC-DC converter, when maximum current is so
`supplied, is at least 2.5,” as recited in independent claims 1 and 58. ............ 18 
`Ground 1B is defective because it is supported only by conclusory statements
`and therefore fails to establish a reasonable likelihood that the ’455 PCT
`publication renders the challenged claims obvious. ....................................... 30 
`Ground 2 is defective because Ehsani alone does not render the challenged
`claim obvious. ................................................................................................ 31 
`REDUNDANT GROUNDS OF UNPATENTABILITY ................................................. 32 
`VI. 
`VII.  CONCLUSION .......................................................................................................... 33 
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`B. 
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`C. 
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`TABLE OF AUTHORITIES
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`Case IPR2014-00568
`Attorney Docket No: 36351-0012IP1
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`Patent No. 7,455,134
`Patent Owner Response
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`Federal Cases 
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`Application of Lukach, 442 F.2d 967 (CCPA 1971) .............................................................. 20
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`Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 20 USPQ2d 1746 (Fed.
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`Cir. 1991) .......................................................................................................................... 23
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`Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048 (Fed. Cir. 1994) .. 24, 28
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`In re Robertson, 169 F.3d 743, 49 USPQ2d 1949 (Fed. Cir. 1999) ..................................... 23
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`In re Schreiber 128 F.3d 1473 (Fed. Cir. 1997) .................................................................... 22
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`In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 14
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`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)......................................................... 30, 31
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`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2013-00003, Paper No. 7 ... 32
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`Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461 (Fed. Cir. 1997) ........................... 22
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`Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565 (Fed. Cir. 1991) ...... 23
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`Studiengesellschaft Kohle, m.b.H. v. Dart Indus., Inc., 726 F.2d 724 (Fed. Cir. 1984) .. 22, 23
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`Teleflex, Inc. v. Ficosa North American Corp., 299 F.3d 1313, 63 USPQ2d 1374 (Fed. Cir.
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`2002) ................................................................................................................................ 23
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`Trintec Industries, Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 63 USPQ2d 1597 (Fed. Cir.
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`2002) ................................................................................................................................ 23
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`Case IPR2014-00568
`Attorney Docket No: 36351-0012IP1
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`Patent No. 7,455,134
`Patent Owner Response
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`Federal Statutes 
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`35 U.S.C. § 313 ...................................................................................................................... 1
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`35 U.S.C. § 314(a) ................................................................................................................ 30
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`35 U.S.C. § 315(b) ................................................................................................................ 13
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`Regulations 
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`37 C.F.R. § 42.1(b) ............................................................................................................... 32
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`37 C.F.R. § 42.100(b) ........................................................................................................... 14
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`37 C.F.R. § 42.104 ............................................................................................................... 11
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`37 C.F.R. § 42.107 ................................................................................................................. 1
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`37 C.F.R. § 42.108(c) ........................................................................................................... 30
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`37 C.F.R. §42.108(b) ............................................................................................................ 12
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`Patent No. 7,455,134
`Patent Owner Response
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`Exhibit Number
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`2001
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`PUBLIC – REDACTED VERSION
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`EXHIBITS
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`Case IPR2014-00568
`Attorney Docket No: 36351-0012IP1
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`Exhibit Name
`Arbitration Agreement between Paice LLC and Ford Motor
`Company
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`PUBLIC – REDACTED VERSION
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`Patent No. 7,455,134
`Patent Owner Response
`I.
`INTRODUCTION
`Paice LLC and the The Abell Foundation, Inc. (“the Patent Owner” or collectively
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`Case IPR2014-00568
`Attorney Docket No: 36351-0012IP1
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`referred to as “Paice”) respectfully submit this Preliminary Response in accordance with 35
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`U.S.C. § 313 and 37 C.F.R. § 42.107, responding to the Petition for Inter Partes Review
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`(“the Petition”) filed by Ford Motor Company (“the Petitioner”). Paice requests that the
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`Board not institute inter partes review because (1) Ford lacks standing in view of the
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`bargained-for Arbitration Agreement between Ford and Paice (2) the Petition fails to
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`establish a reasonable likelihood that the challenged claims are unpatentable.
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`First, Ford and Paice have negotiated and executed an Arbitration Agreement as
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`part of a settlement of a prior patent infringement suit and Ford is barred or estopped from
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`requesting inter partes review challenging the claims of the ’134 patent in view of the
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`Arbitration Agreement.
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`Second, for the proposed grounds of unpatentability, Ford has failed to demonstrate
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`that there is a reasonable likelihood that the prior art relied upon anticipates or renders
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`obvious the challenged claims.
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`For example, with respect to Ground 1A, Ford has failed to establish that ’455 PCT
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`publication discloses “a ratio of maximum DC voltage … to current supplied from said
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`PUBLIC – REDACTED VERSION
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`Patent No. 7,455,134
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`Case IPR2014-00568
`Patent Owner Response
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`Attorney Docket No: 36351-0012IP1
`electrical storage device to at least said first AC-DC converter, when maximum current is so
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`supplied, is at least 2.5,” as recited in independent claims 1 and 58.
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`With respect to Ground 1B, Ford has only provided conclusory statements in support
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`of the positions and therefore has failed to establish a reasonable likelihood that the ’455
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`PCT publication renders the challenged claims obvious.
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`With respect to Ground 2, Ford has failed to establish that the combination of the
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`’455 PCT publication and the Ehsani reference renders the challenged claim obvious.
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`Accordingly, Ford’s petition fails to establish a reasonable likelihood that it would
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`prevail with respect to at least one of the claims challenged in the petition. This petition
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`should be denied.
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`II.
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`BACKGROUND OF THE ’134 PATENT
`The ’134 patent (FMC 1001) issued on November 25, 2008 from Application No.
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`11/429, 457 (“the ’457 application,” FMC 1023), which was filed on May 8, 2006. The ’457
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`application was a division of U.S. Patent 7,104,347 (“the ’347 patent”), filed on March 7,
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`2003 as Application No. 10/382,577(“the ’577 application,” FMC 1027), which in turn was a
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`division of U.S. Patent No. 6,554,088 (“the ’088 patent”), filed on April 2, 2001 as
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`Application No. 09/822,866 (“the ’866 application,” FMC 1005). The ’088 patent was a
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`continuation-in-part of U.S. Patent No. 6,338,391(“the ’391 patent”), filed on Sep. 9, 1999 as
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`Patent No. 7,455,134
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`Case IPR2014-00568
`Patent Owner Response
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`Attorney Docket No: 36351-0012IP1
`Application No. 09/392,743(“the ’743 application,” FMC 1007), and a continuation-in-part of
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`U.S. Patent 6,209,672 (“the ’672 patent”), filed on Mar. 9, 1999 as Application No.
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`09/264,817(“the ’817 application,” FMC 1006). The ’134 patent claims priority to provisional
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`application No. 60/122,296, filed on March 1,1999 (FMC 1030) and provisional application
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`No. 60/100,095, filed on Sep. 14, 1998 (FMC 1010). The ’743 application, “the ’817
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`application” and the provisional applications may be collectively referred to herein as the
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`pre-CIP applications.
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`Furthermore, Paice filed a PCT application, Ser.No. PCT/US1999/018844, on
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`September 10,1999, that was published as Publication No. WO 00/015455 (FMC 1016) on
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`March 23, 2000, which is more than one year prior to the filing date of the CIP application
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`from which the ’134 patent claims priority for the new subject matter disclosed therein. The
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`’134 patent is entitled to the priority date of the ’743 and ’817 applications for the subject
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`matter disclosed therein. The PCT application combined the disclosures of the ’743 and
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`’817 applications, for simplification of foreign prosecution. Therefore the PCT application
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`includes no subject matter as to which the ’134 patent is not entitled to a priority date earlier
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`than the publication date of the PCT application. Moreover, the PCT application contains
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`the same disclosure as the ’743 and ’817 applications.
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`Patent No. 7,455,134
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`Case IPR2014-00568
`Patent Owner Response
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`Attorney Docket No: 36351-0012IP1
`The ’134 patent is directed to hybrid vehicles that include an internal combustion
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`engine (ICE), as well as one or more electric motors to supply torque to the driving wheels
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`of the vehicle. See, e.g., FMC 1001, 1: 20-30. The ’134 patent shares the specification with
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`the ’088 and ’347 patents, and the specification describes certain improvements over the
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`implementations described in the pre-CIP applications. See, e.g., id.,11: 21-32. The
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`improvements pertain to various aspects, including for example, particular combinations of
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`powertrain and ancillary components such that the electrical motors are capable of
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`providing adequate acceleration without assistance from the internal combustion engine,
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`and the efficiency of the vehicle is improved. See, e.g., id.,19: 59 to 20:24 and 49: 58 to 50:
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`18. In particular, the ’134 patent recognizes that in order to achieve the desired efficiency,
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`the components should be selected such that under peak electrical loading the ratio of the
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`battery voltage to the peak current should be at least 2.5:1. See, e.g., id., 49: 58 to 50: 18.
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`The inventors also recognized that a high ratio of the battery voltage to the peak current
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`allows for using components with low current ratings. In particular, the ’134 patent
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`describes (see id., 49:23-36):
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`More particularly, suppose that the "average maximum"
`current (e.g., defined as the maximum current flowing for more
`than, for example, thirty seconds; under most circumstances,
`the average current would be much less) is controlled to be 50
`A. This allows use of inexpensive mass-produced plug-in
`connectors, and can be controlled by inexpensive mass-
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`Patent No. 7,455,134
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`Case IPR2014-00568
`Patent Owner Response
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`Attorney Docket No: 36351-0012IP1
`produced power electronic components, as needed to construct
`the inverter/charger units. These components can be designed
`to conduct up to approximately 200 A for up to thirty seconds,
`so that full acceleration can be provided for a time sufficient for
`the vehicle to reach essentially its maximum speed; according
`to this aspect of the invention, the peak current can accordingly
`be set at, for example, 150 A, and the power electronics
`components then sized based on this value.
`More particularly, it appears useful to size the
`components with respect to one another, in particular, the
`battery bank with respect to the traction motor( s), so that the
`peak current is no more than about 150 A, and so that under
`peak electrical loading (usually under acceleration) a ratio of at
`least 2.5: 1 of the battery voltage to the peak current is
`exceeded.
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`The ’134 patent describes multiple examples where a sufficiently high ratio helps
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`achieve sufficient acceleration without assistance from an ICE. See, e.g., id., 49: 44-57. To
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`emphasize the importance of the ratio, the ’134 patent also mentions the Toyota Prius as an
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`example of how a low ratio is insufficient to provide adequate acceleration without
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`assistance from an ICE. See, e.g., id., 49: 58 to 50: 18. Recognizing the shortcomings of
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`the Toyota Prius, the inventors were able to ascertain an appropriate lower limit on the ratio.
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`See, e.g., id., 49: 58 to 50: 18. Therefore, rather than being a byproduct of the design
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`constraints (as alleged by the Ford on page 23 of the Petition), the ratio is used in the ’134
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`patent as a key design parameter to select appropriate components. See, e.g., id., 50: 5-
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`18. For example, the ’134 patent describes (see id., 49:44 to 50:10):
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`Patent No. 7,455,134
`Patent Owner Response
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`Case IPR2014-00568
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`Attorney Docket No: 36351-0012IP1
`For example, suppose it is desired to implement the
`invention with respect to a relatively heavy, e.g., 6000 pound,
`vehicle having target acceleration capabilities such that a 120
`HP electric traction motor, typically drawing 100 kW, will be
`required. The battery bank for such a vehicle is sized to provide
`a nominal voltage of 830 v (i.e., when not under load); this will
`drop to approximately 650 V under load. The battery bank will
`thus be required to produce 153 A (=100 kW /650 V) during full
`acceleration, and the ratio of voltage to peak current is 3.92
`(=650VI153 A).
`In another example, of a much lighter 3000 lb vehicle, a
`80 HP, 60 kW motor might be sufficient. To keep the peak
`current to 115 A, a battery bank of 600 V nominal, 500 V under
`load would be required. The ratio is then 4.3 (=500VI115 A).
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`***
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` [More generally,] the components of the hybrid vehicles
`of the invention are to be sized so that the ratio between battery
`voltage under load to peak current is at least about 2.5, and
`preferably is at least 3.5 to 4: 1; this allows adequate
`acceleration from low speeds without use of torque from the
`ICE.
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`Selecting components in accordance with the teachings of the ’134 patent may
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`provide several advantages. For example, it may allow the elimination of multiple-speed or
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`variable-ratio transmission (thereby making the design simpler), and may allow torque and
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`rotation from the ICE to be disengaged from the wheels except when the ICE can be
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`employed efficiently to propel the vehicle. See, e.g., id.,50: 5-15.
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`III.
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`PETITIONER IS BARRED OR ESTOPPED FROM REQUESTING INTER PARTES
`REVIEW CHALLENGING THE ’134 PATENT CLAIMS
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`PUBLIC – REDACTED VERSION
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`Patent No. 7,455,134
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`Patent Owner Response
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`A.
`Introduction – The Arbitration Agreement
`Petitioner is barred or estopped from requesting an inter partes review challenging
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`Case IPR2014-00568
`Attorney Docket No: 36351-0012IP1
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`the claims of the ’134 patent in view of an Arbitration Agreement (“AA”) negotiated by
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`Petitioner and Patent Owner as a part of a settlement of Patent Owner’s 2010 patent
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`infringement suit against Petitioner. See Ex. 2001.
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`Patent No. 7,455,134
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`PUBLIC – REDACTED VERSION
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`Patent No. 7,455,134
`Patent Owner Response
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`Case IPR2014-00568
`Attorney Docket No: 36351-0012IP1
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`Petitioner has breached the Arbitration Agreement’s
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`, and therefore should be estopped or barred from requesting inter partes review
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`challenging the patent claims of the ’134 patent.
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` Petitioner then filed four separate Petitions
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`for Inter Partes Review on April 4, 2014 with the Patent Trial and Appeal Board of the U.S.
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`Patent Office. The cases are numbered: IPR2014-00568, IPR2014-00570, IPR2014-00571
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`and IPR2014-00579. On June 5, 2014, Petitioner filed four more Petitions for Inter Partes
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`Review. Those cases are numbered: IPR2014-00852, IPR2014-00884, IPR2014-00875 and
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`IPR2014-00904.
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`PUBLIC – REDACTED VERSION
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`Patent No. 7,455,134
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`Case IPR2014-00568
`Patent Owner Response
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`Attorney Docket No: 36351-0012IP1
`Each of the eight Petitions for Inter Partes Review filed by Petitioner
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` Indeed, the U.S. Patent and Trademark Office classifies IPR as a trial
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`proceeding which, among other things, determines the validity of a patent.3 Parties to IPR
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`proceedings file pleadings, take discovery, present trial briefs, participate in evidentiary
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`hearings with live testimony, and make arguments before a three administrative law judge
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`panel.
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` Petitioner breached the Arbitration Agreement by
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` Petitioner’s eight separate IPR proceedings force Patent Owner to litigate on eight
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`separate fronts, including multiple IPR’s directed against the instant challenged ’134 patent.
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`For example, Petitioner filed 2 IPRs covering many of the same claims of the ’134 patent:
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`(1) IPR2014-00568—claims 1-3, 5-6, 19-20, 26-27, 40, 58 AND 62; and (2) IPR2014-
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`3 “Inter Partes Review,” http://www.uspto.gov/aia_implementation/bpai.jsp.
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`Patent No. 7,455,134
`Patent Owner Response
`00852—claims 1-3, 5-6, 19, 27, 40 and 58.
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`Case IPR2014-00568
`Attorney Docket No: 36351-0012IP1
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`Petitioner Has Failed to Meet the Requirements of 37 C.F.R. § 42.104
`B.
`As discussed above, by virtue of the unambiguous terms of the Arbitration
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`Agreement, Petitioner is barred or estopped from requesting inter partes review. Under 37
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`C.F.R. § 42.104, “[t]he petitioner must certify that the patent for which review is sought is
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`available for inter partes review and that the petitioner is not barred or estopped from
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`requesting an inter partes review challenging the patent claims on the grounds identified in
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`the petition.” While Petitioner parroted the language from the rule in making its
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`“certification” in each of its eight petitions for inter partes review, Petitioner failed to bring the
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`Arbitration Agreement to the Board’s attention, or address the terms of the Agreement
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`whatsoever.
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` “Section 42.104(a) provides that a petition must demonstrate that the petitioner has
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`standing.” See 77 Fed. Reg. 48688 (Aug. 14, 2012). “This requirement is to ensure that a
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`party has standing to file the inter partes review and would help prevent spuriously-instituted
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`inter partes reviews.” Id. In fact, “[f]acially improper standing will be a basis for denying the
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`petition without proceeding to the merits of the petition.” Id. By failing to address the
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`Patent No. 7,455,134
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`Case IPR2014-00568
`Patent Owner Response
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`Attorney Docket No: 36351-0012IP1
`Agreement in its petition, the Petitioner has failed to meet section 42.104(a)’s requirement
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`that the Petitioner demonstrate that it has standing. For at least this additional reason, the
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`instant petition should be denied.
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`C.
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`The Board Should Exercise its Discretion Under 37 C.F.R. §42.108(b)
`and Deny Institution of the Petition to Prevent Harm to Patent Owner
`Moreover, even if the Petitioner had addressed or acknowledged the Arbitration
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`Agreement in its petition, the Board should exercise its discretion and deny the instant
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`petition to prevent substantial harm to the Patent Owner from the Petitioner breach of the
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`Agreement. First, Patent Owner will lose the benefit of the bargain it made with Petitioner,
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` and now Patent Owner will lose
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`the benefit of the bargain it believed it obtained.
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`Petitioner, on the other hand, will lose nothing if the instant petition is denied. It will
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`still have the opportunity to challenge validity
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`losing only the time between the original filing of its petition and the Board’s institution
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`Patent No. 7,455,134
`Patent Owner Response
`decision—
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`PUBLIC – REDACTED VERSION
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`Case IPR2014-00568
`Attorney Docket No: 36351-0012IP1
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`4 Petitioner cannot be
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`harmed by a decision that merely requires it to live up to the contractual promises it made.
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`Accordingly, for at least these additional reasons, the Board should exercise its discretion
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`and decide not to institute inter partes review on the ground that at least Petitioner lacks
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`standing to bring the instant petition.
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`4 Patent Owner has concurrently-filed a Motion for Preliminary Injunction in the co-
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`pending district court case (Paice LLC and The Abell Foundation, Inc. v. Ford Motor
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`Company, C.A. No. 1:140-cv-00492-WDQ) seeking an Order requiring Petitioner to dismiss
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`seven of the IPRs to comply with the Arbitration Agreement’s
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` the
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`Board should dismiss the instant petition and each of the other seven petitions for at least
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`the reasons discussed herein.
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`within the one-year time bar of 35 U.S.C. § 315(b) and therefore will not be prejudiced by
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`denial of institution of each of the presently-pending petitions.
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` Petitioner is well
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`PUBLIC – REDACTED VERSION
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`Patent No. 7,455,134
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`Case IPR2014-00568
`Patent Owner Response
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`Attorney Docket No: 36351-0012IP1
`While Patent Owner has provided reasons as to why the Board should not institute
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`inter partes review based solely on the bargained-for Arbitration Agreement between the
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`parties, other reasons exist for denying certain grounds of unpatentability presented in the
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`Petitioner’s petition. Each of those reasons is discussed in further detail below.
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`IV.
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`CLAIM CONSTRUCTION
`A claim subject to IPR is given its “broadest reasonable construction in light of the
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`specification of the patent in which it appears.” See 37 C.F.R. § 42.100(b). This means that
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`the words of the claim are given their plain meaning unless that meaning is inconsistent with
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`the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Patent Owner submits,
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`for the purposes of the IPR only, that the claim terms are presumed to take on their
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`broadest reasonable interpretation in view of the specification of the ’134 patent.5
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`Ford has sought construction for one particular phrase, i.e., “start and stop the
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`engine.” In this regard, the Petition states (at pages 7-8):
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`5 Because the standards of claim interpretation applied in litigation differ from PTO
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`proceedings, any interpretation of claim terms in this IPR is not binding upon Petitioner in
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`any litigation related to the 134 patent. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
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`PUBLIC – REDACTED VERSION
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`Patent No. 7,455,134
`Patent Owner Response
`
`
`Case IPR2014-00568
`
`Attorney Docket No: 36351-0012IP1
`Under the broadest reasonable interpretation standard,
`Petitioner proposes that all claims should be entitled to their
`plain and ordinary meaning, with the exception of the “start and
`stop the engine” term that requires clarification as described
`below.
`…
`The term “start and stop the engine” requires
`clarification as the plain and ordinary meaning should be
`construed in the context of a hybrid vehicle application. Starting
`and stopping a hybrid electric vehicle (HEV) includes both “cold
`starts”—turning on the engine when the vehicle is not
`operating—and “hot starts”—interim engine starts that occur
`after engine operation is interrupted (i.e., stopped) while the
`vehicle is operating. (Stein Decl., FMC 1002, ¶75.) At lower
`vehicle speeds or loads, for example, an HEV typically stops
`engine operation and controls an electric motor to provide
`torque for vehicle propulsion. At higher vehicle speeds or loads,
`the HEV restarts the engine to provide torque to meet operator
`demand. (Stein Decl., FMC 1002, ¶75.) As interim engine starts
`and stops are part of basic HEV operation, the plain and
`ordinary meaning of the term “start and stop the engine” should
`be clarified to include all engine start and stops, including
`interim ones that occur during normal vehicle operation.
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`The phrase “start and stop the engine” is clear on its face and does not need
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`construction. In fact, the construction proposed by Ford is confusing rather than clarifying
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`because it introduces the ambiguous phrase “normal vehicle operation” without specifying
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`what constitutes such operation. Further, the accompanying analysis uses terms such as
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`“hot starts,” “cold starts,” and “interim starts,” terms that are not even mentioned in the ’134
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`patent specification. It is therefore unclear why this term needs to be construed, more so
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`PUBLIC – REDACTED VERSION
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`Patent No. 7,455,134
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`Case IPR2014-00568
`Patent Owner Response
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`Attorney Docket No: 36351-0012IP1
`because the proposed construction does not appear to affect the manner in which Ford has
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`applied the prior art reference against the claims (or at least the Petition does not indicate
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`how the construction affects the application of the prior art). As such, Patent Owners
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`contend that, for the purposes of this inter-partes review, this term does not need to be
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`construed.
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`Rather, consistent with the broadest reasonable interpretation standards, the term
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`should be given its plain and ordinary meaning such that the phrase “a controller, operable
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`to start and stop the engine” encompasses a controller operable to start an engine and stop
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`an engine, regardless of whether the starts include “cold starts,” “hot starts,” or both. That
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`is, the phrase “a controller, operable to start and stop the engine” should be construed, at
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`least for the purposes of this proceeding, to encompass a controller operable to perform a
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`“cold start,” a controller operable to perform a “hot start,” or a controller operable to perform
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`both “cold” and “hot” starts.
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`While “start and stop the engine” does not need construction, it may be useful to
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`construe “maximum DC voltage…when maximum current is so supplied.” The Petition and
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`the expert’s Declaration include repeated references to this phrase. Yet, neither document
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`attempts to construe the phrase in light of the specification of the ’134 patent. The claims
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`and the specification of the ’134 patent makes it clear that this refers to a voltage under load
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`Patent No. 7,455,134
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`Case IPR2014-00568
`Patent Owner Response
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`Attorney Docket No: 36351-0012IP1
`(as opposed to an open circuit or nominal DC voltage). In particular, the phrase itself states
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`the “maximum DC voltage . . . when maximum current is so supplied,” which means the
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`voltage is under load. Further, the specification indicates that the ratio is determined based
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`on a voltage under load. For example, the ’134 patent states (see, e.g., id.,49:48-63):
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`The battery bank for such a vehicle is sized to provide a
`nominal voltage of 830 v (i.e., when not under load); this will
`drop to approximately 650 V under load. The battery bank will
`thus be required to produce 153 A (=100 kW /650 V) during full
`acceleration, and the ratio of voltage to peak current is 3.92
`(=650V/153 A).
`In another example, of a much lighter 3000 lb vehicle, a
`80 HP, 60 kW motor might be sufficient. To keep the peak
`current to 115 A, a battery bank of 600 V nominal, 500 V under
`load would be required. The ratio is then 4.3 (=500V/115 A).
`By comparison, insofar as known to the inventors, the
`Toyota "Prius" hybrid car now being marketed uses a 30 kW
`motor, and its battery bank provides approximately 230 V under
`load; the current required is thus approximately 120 A (=30 kW
`/230 V) and the ratio between the voltage under load and the
`peak current is only about 2 (=230V/120A).
`The above examples in the ’134 patent specification make it clear that the “maximum
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`DC voltage” recited in claims 1 and 58 refers to a voltage under load, and not a nominal
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`open circuit voltage.
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`V.
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`DEFECTS IN THE PROPOSED GROUNDS OF UNPATENTABILITY
`Each of the proposed grounds of unpatentability is defective because of the reasons
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`discussed below.
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`PUBLIC – REDACTED VERSION
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`Patent No. 7,455,134
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`Case IPR2014-00568
`Patent Owner Response
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`Attorney Docket No: 36351-0012IP1
`A.
`Ground 1A is defective because Ford has failed to establish that there is
`a reasonable likelihood that the ’455 PCT publication discloses “a ratio
`of maximum DC voltage … to current supplied from said electrical storage
`device to at least said first AC-DC converter, when maximum current is so
`supplied, is at least 2.5,” as recited in independent claims 1 and 58.
`The Board should deny institution of inter partes review under Ground 1A because
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`Ford has failed to establish that there is a reasonable likelihood that the ’455 PCT
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`publication anticipates each and every feature recited in the independent claims 1 and 58,
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`the only independent claims challenged under Ground 1A. As described below in detail,
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`Ford has failed to establish a reasonable likelihood that the ’455 PCT publication discloses
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`“a ratio of maximum DC voltage … to current supplied from said electrical storage device to
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`at least said first AC-DC converter, when maximum current is so supplied, is at least 2.5.”
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`In fact, Ford’s attempt to do so is fraught with errors. Effectively, Ford first states
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`that one of ordinary skill in the art would not be inclined to deduce the appropriate ratio
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`based on the disclosure of the ’455 PCT publication and, even if he or she were so inclined,
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`would not be able to do so based on the disclosure of the ’455 PCT publication alone. Ford
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`then attempts to improperly fill the purported gap in the disclosure with teachings from the
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`very patent it is challenging – the ’134 patent. This is not a situation in which Ford is
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`asserting that the person of ordinary skill in the art is using his or her presumed knowledge
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`as demonstrated by a secondary reference. Rather, Ford’s approach is to use teachings
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