`571-272-7822
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`Paper 11
`Entered: November 20, 2014
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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 IPR2014-00852
`Patent 7,455,134 B2
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DeFRANCO, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`I. INTRODUCTION
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`
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`Petitioner, Ford Motor Company, filed a Petition requesting an inter
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`partes review of claims 1–3, 5, 6, 19, 27, 40, and 58 of U.S. Patent No.
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`7,455,134 B2 (Ex. 1101, “the ’134 patent”). Paper 2 (“Pet.”). Patent
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`Owner, Paice LLC & The Abell Foundation, Inc., filed a Preliminary
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`Response in both unredacted and redacted form. Papers 7 and 8 (“Prelim.
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`Resp.” ).1 Patent Owner also filed a Motion to Seal. Paper 9 (“Mot. to
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`Seal.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
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`an inter partes review may not be instituted “unless . . . the information
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`presented in the petition . . . shows that there is a reasonable likelihood that
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`the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.”
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`Upon consideration of the Petition and the Preliminary Response, we
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`conclude that there is not a reasonable likelihood that Petitioner would
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`prevail in challenging any of claims 1–3, 5, 6, 19, 27, 40, and 58 as
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`unpatentable. Accordingly, pursuant to 35 U.S.C. § 314(a), we do not
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`authorize an inter partes review to be instituted.
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`A. Related Proceedings
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`The ’134 patent is involved in Paice, LLC v. Ford Motor Company,
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`No. 1-14-cv-00492, filed on February 19, 2014, in the United States District
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`Court for the District of Maryland. Pet. 1. Petitioner filed an earlier Petition
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`for inter partes review of the ’134 patent, but we did not institute trial. Ford
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`Motor Company v. Paice LLC & The Abell Foundation, Inc., Case IPR2014-
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`00568 (PTAB Sept. 8, 2014) (Paper 12).
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`
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`1 Citations are to the redacted version of the Patent Owner Preliminary
`Response (Paper 8, “Prelim. Resp.”). Patent Owner marked Paper 8 for
`“Parties and Board Only.” The paper will be made publicly available in due
`course.
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`2
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`B. The ’134 Patent (Ex. 1101)
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`The ’134 patent describes a hybrid vehicle with an internal
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`combustion engine, a traction motor, a starter motor, and a battery bank, all
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`controlled by a microprocessor. Ex. 1101, Abs. Figure 4, reproduced
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`below, shows a block diagram of a hybrid vehicle. Id. at Fig. 4.
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`Figure 4 illustrates a block diagram of a hybrid vehicle.
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`The hybrid vehicle includes two wheels 34 operable to propel the
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`vehicle, traction motor 25, starting motor 21, and engine 40 coupled to
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`starting motor 21. Id. Inverter/charger 27 is coupled to traction motor 25
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`and inverter/charger 23 is coupled to starting motor 21. Id. Battery bank 22
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`is coupled to inverter/charger 23, as well as inverter/charger 27.
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`Controller 48 controls the operation of engine 40 and motors 21 and 25. Id.
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`The components of the vehicle “are to be sized so that the ratio between
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`battery voltage under load to peak current is at least about 2.5, and
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`preferably is at least 3.5 to 4:1.” Id. at 50:5–9.
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`C. Claims
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`Petitioner challenges independent claim 1 and dependent claims 2, 3,
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`5, 6, 19, 27, and 40, which depend directly from claim 1. Petitioner also
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`challenges independent claim 58. Claim 1 reads:
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`A hybrid vehicle, comprising:
`1.
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`at least two wheels, operable to receive power to propel
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`said hybrid vehicle;
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`a first alternating current (AC) electric motor, operable to
`provide power to said at least two wheels to propel said hybrid
`vehicle;
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`a second AC electric motor;
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`an engine coupled to said second electric motor, operable
`to provide power to said at least two wheels to propel the
`hybrid vehicle, and/or to said second electric motor to drive the
`second electric motor to generate electric power;
`(AC-DC)
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`a
`first alternating current-direct current
`converter having an AC side coupled to said first electric motor,
`operable to accept AC or DC current and convert the current to
`DC or AC current respectively;
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`a second AC-DC converter coupled to said second
`electric motor, at least operable to accept AC current and
`convert the current to DC;
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`an electrical storage device coupled to a DC side of said
`AC-DC converters, wherein the electrical storage device is
`operable to store DC energy received from said AC-DC
`converters and provide DC energy to at least said first AC-DC
`converter for providing power to at least said first electric
`motor; and
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`a controller, operable to start and stop the engine to
`minimize fuel consumption;
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`wherein a ratio of maximum DC voltage on the DC side
`of at least said first AC-DC converter coupled to said first
`electric motor to current supplied from said electrical storage
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`device to at least said first AC-DC converter, when maximum
`current is so supplied, is at least 2.5.
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`Id. at 56:43–57:7.
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`D. Asserted Grounds of Unpatentability
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`Petitioner contends that claims 1–3, 5, 6, 19, 27, 40, and 58 of the
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`’134 patent are unpatentable under 35 U.S.C. §§ 102 and 103 based on the
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`following specific grounds:
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`Reference[s]
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`Basis
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`Ehsani2 and Ehsani NPL3
`Ehsani, Ehsani NPL, and Vittone4
`Ehsani
`Kawakatsu5 and Ehsani
`Kawakatsu, Ehsani, and Yamaguchi6
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Challenged
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`Claim[s]
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`1–3, 5, and 6
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`40
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`58
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`1–3, 5, 6, 19, and 58
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`27
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`II. ANALYSIS
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`A. Claim Construction
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`As a step in our analysis for determining whether to institute a review,
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`we determine the meaning of the claims for purposes of this decision. In an
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`2 U.S. Patent No. 5,586,613, issued Dec. 24, 1996 (Ex. 1103) (“Ehsani”).
`3 Yimin Gao et al., The Energy Flow Management and Battery Energy
`Capacity Determination for the Drive Train and Electrically Peaking Hybrid
`Vehicle, SAE 972647 (1997) (Ex. 1106) (“Ehsani NPL”).
`4 Oreste Vittone et al., Fiat Conceptual Approach to Hybrid Car Design,
`12th International Electric Vehicle Symposium (1994) (Ex. 1107)
`(“Vittone”).
`5 U.S. Patent No. 4,335,429, issued June 15, 1982 (Ex. 1104)
`(“Kawakatsu”).
`6 U.S. Patent No. 5,865,263, filed Feb. 23, 1996, issued Feb. 2, 1999 (Ex.
`1105) (“Yamaguchi”).
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`inter partes review, we construe claim terms in an unexpired patent
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`according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
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`2012). Consistent with the broadest reasonable construction, claim terms are
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`presumed to have their ordinary and customary meaning, as understood by a
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`person of ordinary skill in the art, in the context of the entire patent
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). For purposes of this decision, we only need to construe the term
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`“maximum DC voltage.”
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`“maximum DC voltage”
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`
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`Patent Owner argues that the “maximum DC voltage” recited in
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`independent claims 1 and 58 refers to a voltage under load, and not a
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`nominal voltage (i.e., a voltage not under load), citing to examples in the
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`’134 patent. Prelim. Resp. 18–19. Although Petitioner does not construe the
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`“maximum DC voltage” limitation, Petitioner’s declarant, Dr. Jeffrey L.
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`Stein, agrees with this construction. In particular, Dr. Stein opines that “[a]s
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`it is used in the claims and the specification of the ’134 patent, the maximum
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`DC voltage refers to a maximum DC voltage under load” and that the
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`maximum DC voltage “when maximum current is so supplied” refers to the
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`maximum DC voltage under peak electrical load. Ex. 1102 ¶ 181. We agree
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`that the plain language of the claims of a “maximum DC voltage . . . when
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`maximum current is so supplied” means a voltage under load and excludes a
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`nominal voltage (a voltage not under load).
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`B. All Grounds of Obviousness Based in Part on Ehsani
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`Petitioner contends that all challenged claims 1–3, 5, 6, 19, 27, 40,
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`and 58 are unpatentable under 35 U.S.C. § 103 based on various
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`combinations of prior art. In each of the proposed challenges, Petitioner
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`relies on Ehsani to teach the “wherein” limitation of independent claims 1
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`and 58. Pet. 24–25, 41, 48–49, 56. In particular, claim 1 recites “wherein a
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`ratio of maximum DC voltage . . . to current supplied from said electrical
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`storage device to at least said first AC-DC converter, when maximum
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`current is so supplied, is at least 2.5.” Claim 58 recites nearly an identical
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`limitation. Ex. 1101, 64:12–16. The limitation in all of the challenged
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`claims requires a maximum DC voltage to current supplied to be at least 2.5.
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`For the reasons discussed below, Petitioner has not made a sufficient
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`showing that Ehsani teaches a maximum DC voltage to current supplied to
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`be at least 2.5, or that that ratio would have been obvious to a person of
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`ordinary skill in the art.
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`1. Ehsani
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`Ehsani describes an electrically peaking hybrid system and method of
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`generating hybrid electric-combustion power. Ex. 1103, 1:13–16. Figure 5,
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`reproduced below, shows a block diagram of a hybrid vehicle. Id. at Fig. 5.
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` Figure 5 illustrates a block diagram of a hybrid vehicle.
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`The hybrid vehicle includes two wheels 20, operable to propel the
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`vehicle, electric motor 51, generator 50, engine 16 coupled to generator 50.
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`Id. AC/DC converter 54 is coupled to electric motor 51 and AC/DC
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`converter 52 is coupled to generator 50. Id. Battery 24 is coupled to AC/DC
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`converter 52, as well as AC/DC converter 54. Controller 14 controls the
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`operation of engine 16, converter 22, and battery 24. Id. at 7:1–2.
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`2. Analysis
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`Petitioner contends that Ehsani describes an embodiment within the
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`scope of the “at least 2.5” ratio range recited in claims 1 and 58. Although
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`Petitioner asserts that Ehsani describes, in general, operating the AC electric
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`machines at a high voltage and relatively low current, citing to column six,
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`lines 57–67 (Pet. 17), Petitioner acknowledges that Ehsani does not describe
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`any specific numeric ratio of a maximum DC voltage to current supplied.
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`Id. at 25. Nonetheless, Petitioner relies on the Declaration of Dr. Stein to
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`demonstrate that Ehsani describes parameters that a person of ordinary skill
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`in the art would have recognized would lead to two different ratios of DC
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`voltage to current supplied. Id. at 24–26; Ex. 1102 ¶¶ 182, 197.
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`The first ratio of 10:1 is calculated by Dr. Stein using parameters
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`found in Ehsani of a nominal voltage of 700V divided by a maximum
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`current of 70A. Ex. 1102 ¶ 182. As discussed in the claim construction
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`section, a “maximum DC voltage . . . when maximum current is so supplied”
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`means a voltage under load and excludes a nominal voltage (a voltage not
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`under load). Accordingly, the first ratio has not been shown to be an
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`embodiment within the scope of the at least 2.5 ratio range.7
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`The second ratio of 8.82:1 is calculated by Dr. Stein using parameters
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`found in the ’134 patent. Pet. 25; Ex. 1102 ¶¶ 183–197. Ehsani describes
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`that battery 24 is a lead-acid battery. Ex. 1103, 5:16–17. Dr. Stein testifies
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`that the maximum voltage drop of the Ehsani 700 volt lead-acid battery bank
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`under peak load conditions would be approximately 70 volts, resulting in a
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`DC bus voltage under load no less than approximately 630 volts when a
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`maximum current of about 70 amperes is being supplied. Ex. 1102 ¶ 184.
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`To determine the internal resistance of the Ehsani battery, and, thus, the
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`voltage drop, Dr. Stein looks to the vehicle parameters used in the
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`’134 patent. Id. ¶¶ 185–197. Dr. Stein concludes that under the maximum
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`current condition, the ratio of the maximum DC voltage to current is 8.82:1.
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`Id. ¶ 199.
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`7 Dr. Stein opines that “[a] case can be made that the DC bus voltage refers
`to a voltage under load” but does not explain how that case can be made. Ex.
`1102 ¶ 182. Petitioner has not shown that the DC bus voltage described in
`Ehsani refers to a voltage under load.
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`Patent Owner argues that Dr. Stein’s calculation of DC maximum
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`voltage to current supplied of 8.82:1, based on parameters found in the
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`disclosure of the’134 patent, as opposed to parameters found in Ehsani, is
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`improper. Prelim. Resp. 20–32. We agree with Patent Owner that the
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`information contained in the ’134 patent has not been shown by Petitioner to
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`be information that would have been known by a person of ordinary skill in
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`the art, as opposed to information known only to the inventors of the ’134
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`patent. Even Petitioner recognizes that the design parameters described in
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`the ’134 patent, used by Dr. Stein to arrive at the 8.82:1 ratio, dictate the
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`claimed ratio, which is described as the “further improvements” of the ’134
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`patent. Pet. 25; Ex. 1101, 49:10–57. As such, Petitioner has not shown that
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`the information Dr. Stein relies on from the ’134 patent to arrive at an
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`embodiment within the scope of the claim was known to anyone other than
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`the inventors of the ’134 patent. Petitioner, therefore, has failed to establish
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`that Ehsani discloses the claimed ratio. Petitioner does not provide a
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`rationale as to why the claimed ratio would have otherwise been obvious.
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`For these reasons, we conclude that there is not a reasonable
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`likelihood that Petitioner would prevail in challenging any of claims 1–3, 5,
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`6, 19, 27, 40, and 58 as unpatentable.
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`C. Patent Owner Motion to Seal
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`Patent Owner moves to seal the unredacted Patent Owner Preliminary
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`Response (Paper 7) and Exhibit 2101. Paper 9. In rendering our decision
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`not to institute trial, we found it unnecessary to rely on the information
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`Patent Owner seeks to maintain as sealed. For these reasons, we expunge
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`the unredacted version of the Patent Owner Preliminary Response and
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`Exhibit 2101. Patent Owner’s motion to seal is dismissed as moot.
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`III. CONCLUSION
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`For the foregoing reasons, we conclude that there is not a reasonable
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`likelihood that Petitioner would prevail in challenging claims 1–3, 5, 6, 19,
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`27, 40, and 58 of the ’134 patent as unpatentable. In rendering our decision,
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`we found it unnecessary to rely on documents Patent Owner seeks to
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`maintain as sealed, and, therefore, we expunge from the record the sealed
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`documents and dismiss Patent Owner’s motion to seal.
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`IV. ORDER
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`Upon consideration of the record before us, it is
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`ORDERED that the Petition is denied and no trial is instituted;
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`FURTHER ORDERED that Patent Owner’s motion to seal is
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`dismissed; and
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`FURTHER ORDERED that Patent Owner’s unredacted preliminary
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`response (Paper 7) and Exhibit 2101 be expunged from the record.
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`FOR PETITIONER:
`
`Frank Angileri
`FPGP0106IPR1@brookskushman.com
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`Sangeeta Shah
`FPGP0106IPR1@brookskushman.com
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`Kevin Greenleaf
`kevin.greenleaf@dentons.com
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`Lissi Mojica
`lissi.mojica@dentons.com
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`FOR PATENT OWNER:
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`Timothy W. Riffe
`riffe@fr.com
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`Kevin E. Greene
`IPR36351-0012IP1@fr.com
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