UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,237,634 to Severinsky et al.
`
`IPR Case No.: IPR2015-00784
`
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. §42.100 ET SEQ.
`(CLAIMS 1-3, 5-12, 16, 17, 19, 23, 27, 30 AND 66 OF U.S. PATENT NO.
`7,237,634)
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`Case No: IPR2015-00784
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`Attorney Docket No. FPGP0104IPR9
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`TABLE OF CONTENTS
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`EXHIBIT LIST ..................................................................................................................... iii
`
`I.
`
`INTRODUCTION .................................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ........................................ 2
`
`A.
`
`
`B.
`
`
`C.
`
`
`D.
`
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1) ............................................ 2
`Related Matters - 37 C.F.R. § 42.8(b)(2) ....................................................... 2
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3) .................................. 2
`Service Information - 37 C.F.R. § 42.8(b)(4) ............................................... 3
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104 .................................................. 3
`
` Grounds for Standing - 37 C.F.R. § 42.104(a) ............................................. 3
`A.
`Challenged Claims - 37 C.F.R. §42.104(b)(1) ............................................... 3
`B.
`
` Grounds of Challenge - 37 C.F.R. §42.104(b)(2) ........................................ 3
`C.
`
`IV.
`
`STATE OF THE ART .............................................................................................. 5
`
`V.
`
`CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3) ................................... 6
`
`A.
`
`
`B.
`
`
`C.
`
`
`road load (RL) and RL ...................................................................................... 6
`setpoint (SP) and SP ........................................................................................... 7
`“mode I,” “low-load operation mode I,” “highway cruising operation mode
`IV,” “acceleration operation mode V” .................................................................. 8
`
`VI. UNPATENTABILITY GROUNDS ...................................................................... 9
`
` Ground 1: Claims 1-3, 5, 12, 16, 17, 19, 27, 30 And 66 Are
`A.
`Obvious Over Ibaraki ’882 In View Of The Knowledge Of A
`POSA ................................................................................................................ 9
`1.
`Independent Claim 1 ........................................................................... 9
`2.
`Dependent Claim 2 ............................................................................ 27
`3.
`Dependent Claim 3 ............................................................................ 29
`4.
`Dependent Claim 5 ............................................................................ 29
`5.
`Dependent Claim 12 .......................................................................... 31
`6.
`Dependent Claim 16 .......................................................................... 32
`7.
`Dependent Claim 17 .......................................................................... 40
`8.
`Dependent Claim 19 .......................................................................... 42
`9.
`Dependent Claim 27 .......................................................................... 45
`10. Dependent Claim 30 .......................................................................... 46
`11. Dependent Claim 66 .......................................................................... 46
` Ground 2 : Claims 6-11 Are Obvious Over Ibaraki ‘882 In View
`B.
`Of Frank ‘363 And The Knowledge Of A POSA .................................... 47
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`Case No: IPR2015-00784
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`1.
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`Dependent Claim 6 ............................................................................ 47
`(a)
`Reason To Combine .............................................................. 49
`Dependent Claim 7 ............................................................................ 51
`2.
`Dependent Claim 8 ............................................................................ 52
`3.
`Dependent Claim 9 ............................................................................ 53
`4.
`Dependent Claim 10 .......................................................................... 53
`5.
`Dependent Claim 11 .......................................................................... 54
`6.
` Ground 3: Claim 23 Is Obvious Over Ibaraki ‘882 In View Of
`C.
`The Teachings Of Jurgen And Lateur ‘280 In Further View Of
`The Knowledge Of A POSA ....................................................................... 55
`(a)
`Reason To Combine .............................................................. 56
`
`VII. OBJECTIVE INDICIA OF NONOBVIOUSNESS ......................................... 59
`
`VIII. CONCLUSION ........................................................................................................ 59
`
`CERTIFICATE OF SERVICE ......................................................................................... 60
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`
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`
`ii
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`

`

`
`
`
`
`Exhibit
`No.
`1550
`1551
`1552
`1553
`1554
`
`1555
`1556
`1557
`1558
`
`1559
`1560
`1561
`
`1562
`
`1563
`
`1564
`
`1565
`
`1566
`
`1567
`
`1568
`1569
`1570
`
`1571
`
`1572
`1573
`
`
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`Case No: IPR2015-00784
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`Attorney Docket No. FPGP0104IPR9
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`EXHIBIT LIST
`
`Date
`July 3, 2007
`Sept. 2014
`Aug. 4, 1998
`Sept. 12, 2000
`
`
`Oct. 20, 1998
`
`Sept. 12, 2006
`n/a
`
`2005
`2013-2014
`
`
`Identifier
`’634 Patent
`
`Ibaraki ’882
`Frank ‘363
`Jurgen
`
`Lateur ‘280
`Davis Dec.
`‘347 Patent
`’634 Patent File
`History
`Toyota Litigation
`Hyundai Litigation
`
`
`n/a
`
`‘347 File History
`
`Description
`U.S. Patent No. 7,237,634
`Ford Letter to Paice
`US Patent 5,789,882
`US Patent 6,116,363
`Automotive Electronics
`Handbook (Jurgen)
`US Patent 5,823,280
`Declaration of Gregory Davis
`US Patent 7,104,347
`7,237,634 File History (certified)
`
`Toyota Litigations
`Hyundai Litigation
`PTAB Decisions & Preliminary
`Response in 2014-00571
`Excerpt of USPN 7,104,347 File
`History
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`1996 & 1997 Future Car
`Challenge
`Introduction to Automotive
`Powertrain (Davis)
`US Application 60-100095
`
`Feb. 1994
`
`Feb. 1997 &
`Feb. 1998
`
`
`Filed Sept. 11,
`1998
`1998
`
`History of Hybrid Electric
`Vehicle (Wakefield-1998)
`SAE 760121 (Unnewehr-1976)
`SAE 920447 (Burke-1992)
`Vehicle Tester for HEV (Duoba-
`1997)
`DOE Report to Congress (1994) Apr-95
`
`Feb. 1, 1976
`Feb. 1, 1992
`Aug. 1, 1997
`
`SAE SP-1331 (1998)
`SAE SP-1156 (1996)
`
`Feb. 1998
`Feb. 1996
`
`iii
`
`
`
`
`
`Davis Textbook
`
`‘095 Provisional
`
`Wakefield
`
`Unnewehr
`Burke 1992
`Duoba 1997
`
`1994 Report to
`Congress
`SAE SP-1331
`SAE SP-1156
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`Description
`Microprocessor Design for HEV
`(Bumby-1988)
`DOE HEV Assessment (1979)
`
`Date
`Sept. 1, 1988
`
`Sept. 30, 1979
`
`1576
`
`EPA HEV Final Study (1971)
`
`June 1, 1971
`
`WO 9323263A1 (Field)
`Toyota Prius (Yamaguchi-1998)
`
`Nov. 25, 1998
`Jan. 1998
`
`
`
`Exhibit
`No.
`1574
`
`1575
`
`1577
`1578
`
`1579
`1580
`
`1581
`
`1582
`
`1583
`1584
`
`1585
`1586
`1587
`
`1588
`1589
`1590
`
`
`Identifier
`Bumby/Masding
`1988
`HEV Assessment
`1979
`EPA HEV Final
`Study
`9323263
`Toyota Prius
`Yamaguchi 1998
`‘672 Patent
`IEEE Ehsani 1996
`
`April 3, 2001
`June 5, 1996
`
`Feb. 1997
`
`IEEE Ehsani 1997
`
`Oct. 1996
`
`Bosch Handbook
`
`Feb. 1995
`Aug. 11, 1998
`
`SAE SP-1089
`An 1998
`
`
`
`Nov. 1987
`
`
`
`Bumby II
`
`Sept. 6, 1994
`July 12, 1994
`Feb. 25, 2014
`
`Severinsky ‘970
`Boll
`
`
`US Patent 6,209,672
`Propulsion System for Design for
`EV (Ehsani-1996)
`Propulsion System Design for
`HEV (Ehsani-1997)
`Bosch Automotive Handbook
`(1996)
`SAE SP-1089 (Anderson-1995)
`Critical Issues in Quantifying
`HEV Emissions (An 1998)
`Gregory Davis Resume
`Gregory Davis Data
`Bumby, J.R. et al. “Optimisation
`and control of a hybrid electric
`car” - IEE Proc. A 1987, 134(6)
`US Patent 5,343,970
`US Patent 5,327,992
`Paice Complaint
`
`iv
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`I.
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`INTRODUCTION
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`Attorney Docket No. FPGP0104IPR9
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`Petitioner (“Ford”) requests IPR of claims 1-3, 5-12, 16, 17, 19, 23, 27, 30 and
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`66 of U.S. Patent No. 7,237,634 (“’634 Patent”, Ex. 1550).
`
`The ’634 patent is one of five patents that Patent Owner (“Patentee” or
`
`“Paice”) has asserted against Ford in litigation. Paice contends that these patents teach
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`an allegedly “fundamental” method of “mode control using road load” and “engine
`
`control under which engine torque is above a setpoint.” (Ex. 1590, [Paice Complaint]
`
`at 16, ¶43, served on 2/25/14 (p.1).) Paice’s methods of using “road load” and an
`
`engine torque “setpoint” were actually well-known in the art. (Ex. 1556 [Davis Dec.]
`
`at ¶¶444-456.) U.S. Patent No. 5,789,882 (“Ibaraki ’882”), prior publications by
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`Bumby, and Paice’s own U.S. Patent No. 5,343,970 (“Severinsky ’970”) all disclose
`
`use of “road load” and “setpoint” for mode switching in a hybrid vehicle. (Id.).
`
`Paice’s patent claims start with this well-known control strategy and then add
`
`other common features. The ’634 patent has 306 such claims. Ford has repeatedly
`
`asked Paice to limit the asserted claims to a reasonable number (Ex. 1551 [Ford
`
`Letter]), but Paice has refused. Accordingly, Ford is filing several IPR’s to address the
`
`’634 Patent claims and is trying to group the claims according to claimed subject
`
`matter. Due to page limitations, and the voluminous number of dependent claims,
`
`Ford addresses independent claims in multiple petitions. Ford relies on Ibaraki ’882 in
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`this petition, but may rely on Severinsky ’970 or the Bumby publications in other
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`petitions because they address other dependent claims directed toward different
`
`subject matter.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
` Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`A.
`
`Petitioner certifies that Ford is the real party-in-interest.
`
` Related Matters - 37 C.F.R. § 42.8(b)(2)
`B.
`
`The ’634 Patent is being asserted in Paice, LLC and the Abell Foundation, Inc. v.
`
`Ford Motor Company, Case No. 1-14-cv-00492 and Paice LLC and The Abell Foundation,
`
`Inc. v. Hyundai Motor America et. al. Case No. 1:2012-cv-00499. Ford has filed petitions
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`concerning the ’634 Patent in IPR2014-00904, IPR2014-01416 and IPR2015-00606
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`and has filed petitions concerning other asserted patents in IPR2014-00568, IPR2014-
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`00570, IPR2014-00571, IPR2014-00579, IPR2014-00852, IPR2014-00875, IPR2014-
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`00884, IPR2014-01415, IPR2015-00767. Petitioner is concurrently filing related
`
`petition: IPR2015-00758, IPR2015-00722, IPR2015-00785, and IPR2015-00768. This
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`Petition is not redundant to any previously or concurrently filed petitions.
`
`
`C.
`
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
`
`Petitioner appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman
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`P.C. as lead counsel, and appoints John E. Nemazi (Reg. No. 30,876), John P.
`
`Rondini (Reg. No. 64,949) and Christopher C. Smith (Reg. No. 59,669) of Brooks
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`Kushman P.C., as well as Lissi Mojica (Reg. No. 63,421) and Kevin Greenleaf (Reg.
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`No. 64,062) of Dentons US LLP, as back-up counsel. An appropriate Power of
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`Attorney is filed concurrently herewith.
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`D.
`
`Service Information - 37 C.F.R. § 42.8(b)(4)
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`Service of any documents to lead and back-up counsel can be made via hand-
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`delivery to Brooks Kushman P.C., 1000 Town Center, Twenty-Second Floor,
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`Southfield, Michigan 48075 and Dentons US LLP, 233 South Wacker Drive, Suite
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`7800, Chicago, IL 60606-6306. Petitioner consents to service by email at
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`FPGP0104IPR9@brookskushman.com and iptdocketchi@dentons.com.
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`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
` Grounds for Standing - 37 C.F.R. § 42.104(a)
`A.
`
`Petitioner certifies that the ’634 Patent is available for IPR and that Petitioner is
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`not barred or estopped from challenging the patent claims on the grounds in this
`
`Petition.
`
`
`B.
`
`Challenged Claims - 37 C.F.R. §42.104(b)(1)
`
`Petitioner requests IPR of the ’634 Patent claims 1-3, 5-12, 16, 17, 19, 23, 27,
`
`30 and 66 and requests that the Patent Trial and Appeal Board (“PTAB”) cancel those
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`claims as unpatentable.
`
` Grounds of Challenge - 37 C.F.R. §42.104(b)(2)
`C.
`
`Petitioner relies on the following prior art:
`
`(i)
`
`Ibaraki ’882 – U.S. Patent No. 5,789,882 to Ibaraki et al. (hereinafter “Ibaraki
`
`’882”) was filed on July 22, 1996, issued on August 4, 1998, and qualifies as prior art
`
`under 35 U.S.C. § 102(a) & (e). (Ex. 1552 [Ibaraki ’882].)
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`(ii) Frank ’363 – U.S. Patent No. 6,116,363 to Frank (hereinafter “Frank ’363”)
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`was filed on April 21, 1998, issued on September 12, 2000, and qualifies as prior art
`
`under 35 U.S.C. § 102(e). (Ex. 1553 [Frank ’363].)
`
`(iii) Jurgen – “Automotive Electronics Handbook” by Ronald Jurgen (hereinafter
`
`“Jurgen”) was published in 1995, and qualifies as prior art under 35 U.S.C. § 102(b).
`
`(Ex. 1554 [Jurgen].)
`
`(iv) Lateur ’280 – U.S. Patent No. 5,823,280 to Lateur et al. (hereinafter “Lateur
`
`’280”) was filed on January 12, 1995, and issued on October 20, 1998, and qualifies as
`
`prior art under 35 U.S.C. § 102(e). (Ex. 1555 [Lateur ’280].)
`
`The grounds of unpatentability presented in this petition are as follows:
`
`References
`Ground Basis
`1
`§ 103 Ibaraki ’882 and the general
`
`Claims
`Independent claim 1 and dependent
`
`knowledge of a POSA
`
`claims 2, 3, 5, 12, 16, 17, 19, 27, 30
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`2
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`§ 103 Ibaraki ’882, Frank ’363 and
`
` and 66.
`Dependent claims 6, 7, 8, 9, 10 and
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`the general knowledge of a
`
`11
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`POSA
`§ 103 Ibaraki ’882, Jurgen, Lateur
`
`3
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`Dependent claim 23
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`’280 and the general
`
`knowledge of a POSA
`
`The unpatentability grounds set forth in this Petition are confirmed and
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`supported by the declaration of Dr. Gregory W. Davis. (“Davis Dec.” at Ex. 1556.)
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`IV. STATE OF THE ART
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`By September 1998, the development of the hybrid vehicle had advanced to a
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`state where numerous different hybrid vehicle architectures were generally known and
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`had even been successfully built and tested on public roads. (Ex. 1556 [Davis Dec.]
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`¶¶49-60.) These hybrid vehicle architectures typically employed electric motors to
`
`maintain operation of the internal combustion engine within the engine’s most
`
`efficient operating region, commonly referred as the engine’s “sweet spot.” (Ex. 1556
`
`[Davis Dec.] ¶¶59, 108-133.) Some hybrid vehicles could accomplish efficient engine
`
`operation by employing “one-motor” architectures while other designs found
`
`operational benefits by employing “two-motor” architectures. (Ex. 1556 [Davis Dec.],
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`see discussion regarding “series” hybrid vehicles at ¶¶61-69; “parallel” hybrid vehicles
`
`at ¶¶70-86; and “series-parallel” hybrid vehicles ¶¶87-107.)
`
`For hybrid vehicles it was further known prior to September 1998 that engine
`
`operation could be restricted to its “sweet spot” using a control strategy that typically
`
`included: (1) an all-electric mode where only the motor propels the vehicle when
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`engine operation is inefficient (i.e., at low loads or vehicle speeds); (2) an engine-only
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`mode where the engine propels the vehicle when engine operation is efficient, such as
`
`highway cruising at higher loads and speeds; and (3) an acceleration mode where both
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`the engine and motor are used to propel the vehicle when the demand is beyond the
`
`maximum torque capabilities of the engine, such as during acceleration, passing, and
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`hill-climbing. (Ex. 1556 [Davis Dec.] ¶¶84, 124-131.)
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`V.
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`CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3)
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`For purposes of this IPR, a claim is interpreted by applying its “broadest
`
`reasonable construction.” 37 C.F.R. § 42.100(b).
`
`Certain terms in the claims of the ’634 Patent were argued by the patentee with
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`respect to the ’634 Patent and other patents in the ’634 Patent family, and construed
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`by the Eastern District of Texas court in Paice LLC v. Toyota Motor Corp. et al., Case
`
`No. 2:04-cv-211 and Paice LLC v. Toyota Motor Corp. et al., Case No. 2:07-cv-180,
`
`(“Toyota Litigation,” Ex. 1559.)
`
`Certain terms recited in the claims of the ’634 Patent were also argued by the
`
`patentee and construed by a Maryland district court in Paice LLC v. Hyundai Motor
`
`Corp. et al., Case No. 2:12-cv-0499, on July 24, 2014. (“Hyundai Litigation,” Ex. 1560.)
`
`Certain terms that are related to terms recited in the claims of the ’634 Patent
`
`were also discussed in prior institution decisions. (“Ford IPRs,” Ex. 1561.)
`
`Petitioner proposes the following constructions for the purposes of this IPR
`
`only. But for some of these terms, based on the specification, prosecution history, and
`
`patentee admissions, Petitioner contends that the construction under the applicable
`
`district court standards is narrower, and reserves the right to present a narrower
`
`construction in district court litigation.
`
` road load (RL) and RL
`A.
`
`The Eastern District of Texas and the District of Maryland courts have
`
`construed the terms “road load,” “RL,” and “road load (RL)” as “the instantaneous
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`torque required for propulsion of the vehicle, which may be positive or negative in
`
`value.” (Toyota Litigation, Ex. 1559 at 205-206; Hyundai Litigation, Ex. 1560 at 16,
`
`96-97.)
`
`For this proceeding, Petitioner proposes that “road load” be construed as “the
`
`amount of instantaneous torque required to propel the vehicle, be it positive or
`
`negative.” This is consistent with a prior PTAB construction. (See Ford v. Paice IPR
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`Decisions, Ex. 1561 at 20, 38, 51, 70, 84.) Petitioner contends the construction is
`
`narrower under district court standards.
`
`
`B.
`
` setpoint (SP) and SP
`
`The Texas and Maryland courts construed “setpoint (SP)” as being “a definite,
`
`but potentially variable value at which a transition between operating modes may
`
`occur” (Toyota Litigation, Ex. 1559 at 204, Hyundai Litigation, Ex. 1560 at 104.)
`
`The ’634 Patent claims, specification, and file history define “setpoint” as a
`
`“predetermined torque value.” All claims recite a “setpoint” or “SP” value being
`
`compared to either: (1) an engine torque value (e.g., claim 1); or (2) a torque-based
`
`“road load” value (e.g., claim 33). No claims recite a “setpoint” or “SP” in comparison
`
`to any other system variable. Likewise, the specification says “the microprocessor tests
`
`sensed and calculated values for system variables, such as the vehicle’s instantaneous
`
`torque requirement, i.e., the ‘road load’ RL . . . against setpoints, and uses the results
`
`of the comparisons to control the mode of vehicle operation.” (’634 Patent, Ex. 1550,
`
`40:16-26.) To do so (e.g., whether “RL < SP”), the “setpoint” would have to be in the
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`same measurement units as the “road load.”
`
`During prosecution of the ’347 Patent – the parent of the ’634 Patent (See Ex.
`
`1557) – patentee added the following limitation to pending claims 1 and 82 to
`
`overcome a prior art rejection: “wherein the torque produced by said engine when
`
`operated at said setpoint (SP) is substantially less than the maximum torque output
`
`(MTO) of said engine.” (’347 File History, Ex. 1562 at 8-20.) Patentee then argued the
`
`engine was operated only “when it is loaded . . . in excess of a setpoint SP, which is
`
`now defined to be ‘substantially less than the maximum torque output (MTO) of said
`
`engine.’” (Id. at 21.)
`
`This proposed construction is consistent with recent PTAB constructions.
`
`(Ford IPRs, Ex. 1561 at 21, 40, 72, 86.) Accordingly the broadest reasonable
`
`construction of “setpoint (SP)” and “SP” as used in the challenged claims is a
`
`“predetermined torque value.”
`
` “mode I,” “low-load operation mode I,” “highway cruising
`C.
`operation mode IV,” “acceleration operation mode V”
`
`During the Toyota Litigation, the court construed terms of the parent ’347
`
`Patent as follows: (1) low-load mode I as “the mode of operation in which energy from
`
`the battery bank flows to the traction motor and torque (rotary force) flows from the
`
`traction motor to the road wheels;” (2) highway cruising mode IV as “the mode of
`
`operation in which energy flows from the fuel tank into the engine and torque (rotary
`
`force) flows from the engine to the road wheels;” (3) acceleration mode V as “the mode
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`of operation in which energy flows from the fuel tank to the engine and from the
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`battery bank to at least one motor and torque (rotary force) flows from the engine and
`
`at least one motor to the road wheels.” (Toyota Litigation, Ex. 1559 at 219.) Petitioner
`
`agrees with these constructions for this IPR but reserves the right to offer narrower
`
`constructions in litigation, for the reasons stated above.
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`VI. UNPATENTABILITY GROUNDS
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`The references below render the claimed subject matter invalid under 35 U.S.C.
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`§ 103 and the Petitioner therefore has a reasonable likelihood of prevailing as to each
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`of the following grounds of unpatentability. 35 U.S.C. § 314(a); 37 C.F.R. §
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`42.104(b)(4).
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` Ground 1: Claims 1-3, 5, 12, 16, 17, 19, 27, 30 And 66 Are Obvious
`A.
`Over Ibaraki ’882 In View Of The Knowledge Of A POSA
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`1.
`Independent Claim 1
`… [1.0] A hybrid vehicle, comprising:
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`Ibaraki ’882 states that the “present invention” pertains to a “drive control
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`apparatus” for controlling a “hybrid vehicle” that may be propelled by an internal
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`combustion (IC) engine and an electric motor. (Ex. 1552 [Ibaraki ’882] at 1:9-14; Ex.
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`1556 [Davis Dec.] at ¶¶181-184.) As illustrated below, Ibaraki ’882 generally discloses
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`a hybrid vehicle including a controller (128), which is used to control an internal
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`combustion engine (112) and an electric motor (114) (Ex. 1552 [Ibaraki ’882] at 19:11-
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`54.)
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`Case No: IPR2015-00784
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`Attorney Docket No. FPGP0104IPR9
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`Ex. 1552 [Ibaraki ’882] at Figure 8.
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`… [1.1] one or more wheels;
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`Ibaraki ’882 also discloses that power from the internal combustion engine and
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`motor are “simultaneously or selectively transferred to a transmission 16, and to right
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`and left drive wheels via an output device 18.” (Ex. 1552 [Ibaraki ‘882] at 11:12-16,
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`emphasis added; see also Id. at 19:18-28; Ex. 1556 [Davis Dec.] at ¶¶ 185-187.) Further,
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`Ibaraki ‘882 discloses “drive wheels 120” (highlighted in red in Figure 8 below) as part
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`of the described hybrid vehicle:
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`Ex. 1552 [Ibaraki ‘882] at Figure 8 (annotated).
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`… [1.2] an internal combustion engine operable to propel the hybrid
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`vehicle by providing torque to the one or more wheels;
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`Case No: IPR2015-00784
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`Attorney Docket No. FPGP0104IPR9
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`Ibaraki ’882 expressly discloses “power of the internal combustion engine . . .
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`simultaneously or selectively transferred to a transmission . . ., and to right and left
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`drive wheels.” (Ex. 1552 [Ibaraki ’882] at 11:12-15 and 19:24-28, emphasis added;
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`Ex. 1556 [David Dec.] at ¶190.) A POSA would have understood that when power is
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`transferred from the internal combustion engine to the transmission, and then to the
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`wheels, the power is transferred by the torque from the engine crankshaft, which is
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`applied to the drive shaft and ultimately the drive wheels. (Ex. 1556 [Davis Dec.] at
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`¶191.)
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`Further, as shown in Figure 8 below, Ibaraki ’882 discloses a hybrid vehicle
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`with an “internal combustion engine 112” (highlighted in green below), which
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`transfers power (highlighted in green) via “transmission 116” to “drive wheels 120”
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`highlighted in red). (Ex. 1552 [Ibaraki ‘882] at 19:24-28.)
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`Ex. 1552 [Ibaraki ‘882] at Figure 8 (annotated).
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`… [1.3] a first electric motor coupled to the engine;
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`As shown above in limitation [1.0], Ibaraki ’882 discloses a hybrid vehicle,
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`Case No: IPR2015-00784
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`Attorney Docket No. FPGP0104IPR9
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`which includes an engine and an electric motor. In addition to the electric motor
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`disclosed in Figure 8 above, Ibaraki ’882 further discloses adding a separate “electric
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`generator” for generating electricity.
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`1. A drive control apparatus for an automotive vehicle having an
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`electric generator for generating an electric energy, an electric
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`energy storage device for storing the electric energy generated by said
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`electric generator, an electric motor operated as a first drive power
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`source by said electric energy, and an engine operated as a second
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`drive power source by combustion of a fuel, said apparatus having an
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`engine drive mode in which the vehicle is driven by said engine, a motor
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`drive mode in which the vehicle is driven by said electric motor, and an
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`electricity generating mode in which said electric generator is operated by
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`said engine to charge said electric energy storage device. . .
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`(Ex. 1552 [Ibaraki ‘882] at Claim 1, emphasis added; Ex. 1556 [Davis Dec.] at ¶196.)
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`Ibaraki ’882 further discloses that the hybrid vehicle could be implemented
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`with a “generator” and “electric motor” as separate elements.
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`The electric generator and the electric motor may be provided as
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`separate elements. Alternatively, the electric motor may function as the
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`electric generator.
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`(Ex. 1552 [Ibaraki ’882] at 5:27-29, emphasis added.)
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`While the electric motor 14, 114 functions also as the electric generator
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`or dynamo
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`in the
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`illustrated embodiments, a separate electric
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`generator may be provided in addition to the electric motor which
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`is operated for the sole purpose of driving the vehicle.
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`(Ex. 1552 [Ibaraki ’882] at 26:34-38, emphasis added; Ex. 1556 [Davis Dec.] at ¶197.)
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`Based on these express disclosures, Figures 1 and 8 (as shown annotated
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`below) could be modified to include the disclosed separate electric generator,
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`which would function as the claimed “first electric motor coupled to the engine.” (Ex.
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`1556 [Davis Dec.] at ¶¶198 and 201.)
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`Ex. 1552 [Ibaraki ‘882] at Figures 1 and 8 (annotated).
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`A POSA would have understood that the separate “generator” described in
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`Ibaraki ’882, and depicted in annotated Figures 1 and 8 above, is an electric motor.
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`(Ex. 1556 [Davis Dec.] at ¶199.) Further, because Ibaraki ’882 discloses that the
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`engine operates the generator to generate electricity, a POSA would have understood
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`that the internal combustion engine disclosed in Ibaraki ‘882 would necessarily need
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`to be coupled to the electric motor-generator (i.e., first electric motor).1 (Id. at ¶200.)
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`Alternatively, Ibaraki ’882 discloses an embodiment where two or more electric
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`motors may be provided for the drive wheels:
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`Two or more electric motors may be provided for the respective
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`drive wheels of the vehicle, or a single electric motor may be provided
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`for all of the drive wheels. Where the vehicle is equipped with a
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`transmission, however, the drive wheels are desirably driven by a single
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`electric motor in the motor drive mode. (Ex. 1552 [Ibaraki ‘882] at
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`10:20-26, emphasis added; Ex. 1556 [Davis Dec.] at ¶203.)
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`Thus, in this embodiment, Ibaraki ‘882 discloses a hybrid vehicle with at least
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`first and second electric motors (i.e., “two or more electric motors”). Because the
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`disclosed “two or more electric motors” are “provided for the respective drive wheels
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`of the vehicle,” a POSA would have understood that the “two or more electric
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`motors” are coupled to the drive wheels. (Ex. 1556 [Davis Dec.] at ¶204.) Further,
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`because the “two or more electric motors” could function as electric generators in an
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`1 Because Ibaraki ’882 does not expressly disclose the placement and configuration of
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`the “generator” (first electric motor) in the larger system, Petitioner submits this ground
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`as an obvious analysis under 35 U.S.C. § 103. The placement and configuration of the
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`described “generator” would have been an obvious design choice to a person having
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`ordinary skill in the art. (Ex. 1556 [Davis Dec.] at ¶202.)
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`“ELECTRICITY GENERATING DRIVE mode,” a POSA would have understood
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`that the “two or more electric motors” would necessarily have to be coupled to the IC
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`engine in order for the IC engine to drive the motors for generating electricity. (Ex.
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`1552 [Ibaraki ‘882] at 12:22-25, 17:65-18:1, 27:1-3; Ex. 1556 [Davis] at ¶205.)
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`… [1.4] a second electric motor operable to propel the hybrid vehicle
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`by providing torque to the one or more wheels;
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`As discussed above for limitation [1.3], Ibaraki ’882 discloses a hybrid vehicle
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`with a first electric motor (i.e., “generator”) and second electric motor (i.e., “electric motor”),
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`where the second electric motor may be operable in a “motor drive mode” to drive the
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`vehicle.
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`1. A drive control apparatus for an automotive vehicle having an
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`electric generator for generating an electric energy, an electric
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`energy storage device for storing the electric energy generated by said
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`electric generator, an electric motor operated as a first drive power
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`source by said electric energy, and an engine operated as a second drive
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`power source by combustion of a fuel, said apparatus having an engine
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`drive mode in which the vehicle is driven by said engine, a motor drive
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`mode in which the vehicle is driven by said electric motor, and an
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`electricity generating mode in which said electric generator is operated by
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`said engine to charge said electric energy storage device. . . (Ex. 1552
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`[Ibaraki ‘882] at Claim 1, emphasis added; Ex. 1556 [Davis Dec.] at
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`¶207.)
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`The second electric motor is further depicted in the annotated versions of Figures 1
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`and 8 below.
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`Case No: IPR2015-00784
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`Attorney Docket No. FPGP0104IPR9
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`Ex. 1552 [Ibaraki ‘882] at Figures 1 and 8 (annotated).
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`Ibaraki ’882 expressly discloses that the “power of the motor . . . are
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`simultaneously or selectively transferred to a transmission . . . and to right and left
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`drive wheels.” (Ex. 1552 [Ibaraki ’882] at 11:12-15 and 19:24-28; Ex. 1556 [Davis
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`Dec.] at ¶210.) A POSA would have understood that when power is transferred from
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`the motor (second electric motor) to the transmission, and then to the right and left drive
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`wheels, the power is transferred by the torque from the output shaft of the second
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`electric motor, which is applied to the drive shaft and ultimately the drive wheels. (Ex.
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`1556 [Davis Dec.] at ¶211.)
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`As stated above, Ibaraki ’882 also discloses that “[t]wo or more electric motors
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`Case No: IPR2015-00784
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`Attorney Docket No. FPGP0104IPR9
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`may be provided for the respective drive wheels of the vehicle. . .” (Ex. 1552 [Ibaraki
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`‘882] at 10:20-22.) Ibaraki ‘882 discloses the use of a “dynamo-electric motor,” which
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`functions as both an electric motor and an electric generator. (Ex. 1552 [Ibaraki ‘882]
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`at 11:11-12 and 19:21-24.) In view of this disclosure for the “motor” of Ibaraki ‘882, a
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`POSA would have understood that one or more of the “two or more electric motors”
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`could have been used as the second electric motor to provide torque to the drive wheels
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`and propel the vehicle. (Ex. 1556 [Davis Dec.] at ¶212.)
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`… [1.5] a battery coupled to the first and second electric motors,
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`operable to: provide current to the first and/or the second electric
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`motors; and accept current from the first and second electric
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`motors;
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`Ibaraki ‘882 discloses “electric energy storage device (electric power supply
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`device) 22 in the form of a battery.” Ibaraki ‘882 also discloses “electric energy
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`storage device 136,” which can be “in the form of a battery or condenser.” (Ex. 1552
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`[Ibaraki ‘882] at 11:31-33 and 19:55-57,