`571-272-7822
`
`
`Paper 35
`Entered: October 21, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00784
`Patent 7,237,634 B2
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DeFRANCO, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I. INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, we dismiss the inter
`partes review with respect to claims 1 and 16, and determine that Petitioner
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`has shown by a preponderance of the evidence that claims 2, 3, 6–12, 17, 19,
`23, 27, 30, and 66 of U.S. Patent No. 7,237,634 B2 are unpatentable.
`
`A. Procedural History
`Petitioner, Ford Motor Company, filed a Petition requesting an inter
`partes review of claims 1–3, 5–12, 16, 17, 19, 23, 27, 30, and 66 of U.S.
`Patent No. 7,237,634 B2 (Ex. 1550, “the ’634 patent”). Paper 1 (“Pet.”).
`Patent Owner, Paice LLC & The Abell Foundation, Inc., filed a Preliminary
`Response in both unredacted and redacted forms. Papers 9, 10 (“Prelim.
`Resp.”). Upon consideration of the Petition and Preliminary Response, on
`October 29, 2015, we instituted an inter partes review of claims 1–3, 6–12,
`16, 17, 19, 23, 27, 30, and 66, pursuant to 35 U.S.C. § 314. Paper 12
`(“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 17 (“PO Resp.”)) and Petitioner filed a Reply (Paper 25
`(“Pet. Reply”)).1 An oral hearing was held on June 28, 2016, and a
`transcript of the hearing is included in the record (Paper 34 (“Tr.”)).
`B. Related Proceedings
`The ’634 patent is involved in Paice LLC v. Ford Motor Co., No.
`1-14-cv-00492, filed on February 19, 2014, in the United States District
`Court for the District of Maryland. Pet. 2. Petitioner twice filed an earlier
`Petition for inter partes review of the ’634 patent, and we instituted trial in
`both proceedings, and subsequently entered final written decisions. Ford
`
`1 In addition, Patent Owner filed a Motion for Observation on Cross-
`Examination (Paper 27) and Petitioner filed a Response to Motion for
`Observation on Cross-Examination (Paper 30), both of which have been
`considered.
`
`2
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`Motor Co. v. Paice LLC & The Abell Foundation, Inc., Case IPR2014-00904
`(Papers 13 and 41), and Ford Motor Co. v. Paice LLC & The Abell
`Foundation, Inc., Case IPR2014-01416 (Papers 9 and 26). The ’634 patent
`also is involved in the following inter partes review proceedings: IPR2015-
`00606, IPR2015-00722, IPR2015-00758, IPR2015-00785, IPR2015-00787,
`IPR2015-00790, IPR2015-00791, IPR2015-00799, IPR2015-00800, and
`IPR2015-00801.
`
`C. The ’634 Patent (Ex. 1550)
`The ’634 patent describes a hybrid vehicle with an internal
`combustion engine, at least one electric motor, and a battery bank, all
`controlled by a microprocessor that directs torque transfer between the
`engine, the motor, and the drive wheels of the vehicle. Ex. 1550, 17:17–56,
`Fig. 4. The microprocessor compares the vehicle’s torque requirements and
`the engine’s torque output against a predefined setpoint and uses the results
`of the comparison to control the vehicle’s mode of operation, e.g., straight-
`electric, engine-only, or hybrid. Id. at 40:16–49. The microprocessor
`utilizes a hybrid control strategy that operates the engine only in a range of
`high fuel efficiency, which occurs when the instantaneous torque required to
`drive the vehicle, or road load (RL), reaches a setpoint (SP) of
`approximately 30% of the engine’s maximum torque output (MTO). Id. at
`20:61–67; see also id. at 13:64–65 (“the engine is never operated at less than
`30% of MTO, and is thus never operated inefficiently”). Operating the
`engine in a range above the setpoint but substantially less than the maximum
`torque output maximizes fuel efficiency and reduces pollutant emissions of
`the vehicle. Id. at 15:55–58.
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`D. Illustrative Claim
`Petitioner challenges independent claim 1 and dependent claims 2, 3,
`6–12, 16, 17, 19, 23, 27, 30, and 66, which depend directly or indirectly
`from claim 1. Claim 1 is illustrative:
`
`1.
`A hybrid vehicle, comprising:
`
`one or more wheels;
`
`an internal combustion engine operable to propel the
`hybrid vehicle by providing torque to the one or more wheels;
`
`a first electric motor coupled to the engine;
`
`a second electric motor operable to propel the hybrid
`vehicle by providing torque to the one or more wheels;
`
`a battery coupled to the first and second electric motors,
`operable to: provide current to the first and/or the second
`electric motors; and accept current from the first and second
`electric motors; and
`
`a controller, operable to control the flow of electrical and
`mechanical power between the engine, the first and the second
`electric motors, and the one or more wheels;
`
`wherein the controller is operable to operate the engine
`when torque required from the engine to propel the hybrid
`vehicle and/or to drive one or more of the first or the second
`motors to charge the battery is at least equal to a setpoint (SP)
`above which the torque produced by the engine is efficiently
`produced, and wherein the torque produced by the engine when
`operated at the SP is substantially less than the maximum
`torque output (MTO) of the engine.
`Ex. 1550, 58:2–27.
`
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`Basis Challenged Claim(s)
`
`E. Grounds of Unpatentability
`We instituted an inter partes review of claims 1–3, 6–12, 16, 17, 19,
`23, 27, 30, and 66 on the following grounds:
`
`Reference[s]
`Ibaraki ’882 2 and the general
`knowledge of a person of ordinary
`skill in the art (“POSA”)
`Ibaraki ’882, Frank,3 and the general
`knowledge of a POSA
`Ibaraki ’882, Jurgen,4 Lateur,5 and
`the general knowledge of a POSA
`
`§ 103
`
`§ 103
`
`§ 103
`
`1–3, 12, 16, 17, 19,
`27, 30, and 66
`
`6–11
`
`23
`
`
`
`II. ANALYSIS
`A. Petitioner Estoppel
`On December 10, 2015, we rendered a final written decision of claims
`
`1 and 16 of the ’634 patent in IPR2014-00904. Ford Motor Co. v. Paice
`LLC & The Abell Foundation, Inc., Case IPR2014-00904 (PTAB December
`10, 2015) (Paper 41). Patent Owner argues that, pursuant to 35 U.S.C.
`§ 315(e)(1), Petitioner may not maintain its challenge of claims 1 and 16.
`PO Resp. 16–17. Petitioner responds that it was necessary for it to file
`multiple petitions to address the large number of dependent claims, and that
`in doing so, it was necessary to re-challenge claims 1 and 16. Pet. Reply 4.
`
`
`2 U.S. Patent No. 5,789,882, issued Aug. 4, 1998 (Ex. 1552) (“Ibaraki
`’882”).
`3 U.S. Patent No. 6,116,363, issued Sep. 12, 2000 (Ex. 1553) (“Frank”).
`4 Ronald Jurgen, Automotive Electronics Handbook, 1995 (Ex. 1554)
`(“Jurgen”).
`5 U.S. Patent No. 5,823,280, issued Oct. 20, 1998 (Ex. 1555) (“Lateur”).
`
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`Under 35 U.S.C. § 315(e)(1), a petitioner who has obtained a final
`written decision on a patent claim in an inter partes review may not
`maintain a subsequent proceeding with respect to that same claim on a
`ground that it “reasonably could have raised” in the original proceeding.
`Specifically, section 315(e)(1) provides:
`(e) Estoppel.—
`(1) Proceedings before the office.—The petitioner in
`an inter partes review of a claim in a patent under this
`chapter that results in a final written decision under section
`318(a) . . . may not request or maintain a proceeding before
`the Office with respect to that claim on any ground that the
`petitioner raised or reasonably could have raised during that
`inter partes review.
`
`
`
`On December 10, 2015, a final written decision was entered in
`IPR2014-00904, in which we determined that claims 1 and 16 of the ’634
`patent are unpatentable. Petitioner in this proceeding is the same Petitioner
`in IPR2014-00904. The grounds raised by Petitioner in IPR2014-00904
`against claims 1 and 16 were not the same as the grounds raised against
`those claims in this proceeding. Nonetheless, Ibaraki ’882 was cited during
`prosecution that led to the ’634 patent and is listed on the face of the ’634
`patent. Ex. 1550. Petitioner does not argue that it reasonably could not have
`raised its challenge to claims 1 and 16 based on Ibaraki ’882 in IPR2014-
`00904. Pet. Reply 4. We determine that Petitioner reasonably could have
`raised this challenge in IPR2014-00904. Accordingly, Petitioner is estopped
`under 35 U.S.C. § 315(e)(1) from maintaining the grounds based on Ibaraki
`’882 against claims 1 and 16. We dismiss the inter partes review with
`respect to claims 1 and 16.
`Although we determine it necessary to address the parties’ contentions
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`with respect to independent claim 1 because claims 2, 3, 6–12, 17, 19, 23,
`27, 30, and 66 depend from claim 1, and dependent claim 16, because claims
`17 and 19 depend from claim 16, we do not otherwise provide a final written
`decision on the merits with respect to claims 1 and 16, or again hold those
`claims to be unpatentable.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`reasonable construction standard, claim terms are generally given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a
`claim term must be set forth with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the following claim terms: “road
`load,” “mode I,” “low-load mode I,” “high-way cruising mode IV,” and
`“acceleration mode V.” Pet. 6–9. In our Decision to Institute, we
`interpreted these terms. Dec. 5–6, 8–10. Neither party has indicated that our
`interpretations were improper and we do not perceive any reason or evidence
`that now compels any deviation from our initial interpretations.
`Accordingly, the following constructions apply to this Decision:
`Claim Term
`Construction
`road load or RL
`the amount of instantaneous torque
`required to propel the vehicle, be it
`positive or negative
`a mode of operation of the vehicle,
`
`mode I or low-load mode I
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`high-way cruising mode IV
`
`acceleration mode V
`
`in which all torque provided to the
`wheels is supplied by an electric
`motor
`a mode of operation in which all
`torque provided to the wheels is
`supplied by the internal combustion
`engine
`a mode of operation in which torque
`provided to the wheels is supplied
`by the internal combustion engine
`and at least one electric motor
`
`
`For purposes of this decision, we find it necessary to construe
`“setpoint” and the “operating limitations” found in claims 1 and 16.
`Setpoint (SP)
`The term “setpoint” or “SP” is recited in independent claim 1, and,
`
`thus, necessarily is included in dependent claims 2, 3, 6–12, 16, 17, 19, 23,
`27, 30, and 66. Petitioner proposes that “setpoint” or “SP” be construed, in
`the context of these claims, as “predetermined torque value.” Pet. 7–8.
`Patent Owner argues that “setpoint” or “SP” be construed as “a definite, but
`potentially variable value at which a transition between operating modes
`may occur.” PO Resp. 7.6
`We agree with Petitioner that the claims compare the setpoint either to
`an engine torque value or a torque based “road load” value. Pet. 7–8. Claim
`1 recites a condition “when torque required from the engine to propel the
`
`
`6 In our Decision to Institute, and upon taking into consideration the parties’
`arguments and supporting evidence, we interpreted “setpoint” or “SP” to
`mean “predetermined torque value that may or may not be reset.” Dec. 8.
`Petitioner agrees with that interpretation, while Patent Owner does not. Pet.
`Reply 2; PO Resp. 7–11.
`
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`hybrid vehicle and/or to drive one or more of the first or the second motors
`to charge the battery is at least equal to a setpoint (SP).” Ex. 1550, 58:19–
`23. Claim 16 further recites a range established by the setpoint at one end,
`and the maximum torque output of the engine at the other end, by the
`language “when the SP<the RL<the MTO, the engine is operable to provide
`torque to propel the hybrid vehicle.” Id. at 59:24–25.
`Nothing in the Specification precludes a setpoint from being reset,
`after it has been set. A setpoint for however short a period of time still is a
`setpoint. Accordingly, we construe “setpoint” and “SP” as “predetermined
`torque value that may or may not be reset.”
`
`Patent Owner argues that the claims and the Specification of the ’634
`patent “make clear that a ‘setpoint’ is not simply a numerical value divorced
`from the context of the rest of the control system,” and that “‘setpoint’
`serves the crucial function of marking the transition from one claimed mode
`to another, and in particular, the transition from propelling the vehicle with
`the motor to propelling the vehicle with the engine.” PO Resp. 8. This
`argument is misplaced. Although such use of a setpoint is described by
`other language in the Specification, it is not an intrinsic property of a
`setpoint and is not a necessary and required use of all setpoints. In that
`regard, we further note the following passage in the Specification of the ’634
`patent, which supports not reading a mode switching requirement (i.e.,
`transition requirement) into the term “setpoint”:
`the values of the sensed parameters in response to which the
`operating mode is selected may vary . . ., so that the operating
`mode is not repetitively switched simply because one of the
`sensed parameters fluctuates around a defined setpoint.
`Ex. 1550, 19:67–20:6 (emphasis added).
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`It is improper to add an extraneous limitation into a claim, i.e., one
`that is added wholly apart from any need for the addition to accord meaning
`to a claim term. See, e.g., Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948,
`950 (Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). It is important not to import into
`a claim limitations that are not a part of the claim. Superguide Corp. v.
`DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). For
`example, a particular embodiment appearing in the written description may
`not be read into a claim when the claim language is broader than the
`embodiment. Id.; see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993). That is no different even if the patent specification describes only a
`single embodiment. Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898,
`906 (Fed. Cir. 2004).
`Patent Owner brings to our attention that the U.S. District Court for
`the Eastern District of Texas and the U.S. District Court for the District of
`Maryland both have construed “setpoint” to mean “a definite, but potentially
`variable value at which a transition between operating modes may occur.”
`PO Resp. 7 n.1. We note that that construction also does not require that an
`operating mode be changed at a setpoint, as Patent Owner urges. Instead,
`the construction of the district courts sets forth that a transition between
`operating modes “may occur” at a setpoint, which is consistent with our
`construction here.
`Patent Owner additionally argues that “setpoint” should not be limited
`to a torque value, because the Specification makes clear that it also can be
`the state of charge of a battery. PO. Resp. 10–11. Patent Owner cites to the
`following passage in the Specification:
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`[T]he microprocessor tests sensed and calculated values for
`system variables, such as the vehicle’s instantaneous torque
`requirement, i.e., the “road load” RL, the engine’s instantaneous
`torque output ITO, both being expressed as a percentage of the
`engine’s maximum torque output MTO, and the state of charge
`of the battery bank BSC, expressed as a percentage of its full
`charge, against setpoints, and uses the results of the comparisons
`to control the mode of vehicle operation.
`Ex. 1550, 40:18–26 (emphasis added). This argument also is misplaced. As
`we noted above, independent claim 1 requires a comparison of the setpoint
`to an engine torque value. Thus, in the context of claim 1, and claims
`dependent therefrom, a setpoint must be a torque value, and not some state
`of charge of a battery.
`
`For reasons discussed above, we construe “setpoint” and “SP” as
`“predetermined torque value that may or may not be reset.”
`The “operating” limitations
`
`Patent Owner asserts that the challenged claims require a comparison
`of road load (RL) or torque requirements to setpoint (SP) and to maximum
`torque output (MTO). PO Resp. 11–16. The assertion is based on the
`requirements of (1) operating a second electric motor to propel the hybrid
`vehicle “when the RL<the SP,” (claim 16) (2) operating an internal
`combustion engine of the hybrid vehicle “when torque required from the
`engine to propel the hybrid vehicle and/or to drive one or more of the first or
`second motors to charge the battery is at least equal to a setpoint (SP),”
`(claim 1), (3) operating in a highway cruising mode IV “when the SP<the
`RL<the MTO, the engine is operable to provide torque to propel the hybrid
`vehicle,” (claim 16), and (4) operating the engine, and the first electric
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`motor, and/or the second electric motor to propel the hybrid vehicle “when
`the RL>the MTO” (claim 16).
`In the above discussion of the construction of setpoint, we already
`noted that, for example, claim 1 requires a comparison of torque to a setpoint
`because of the claim recitation “when torque required from the engine to
`propel the hybrid vehicle and/or to drive one or more of the first or the
`second motors to charge the battery is at least equal to a setpoint (SP).”
`For similar reasons, claim 16 requires a comparison of road load to a
`maximum torque output (MTO) because of the recitation “when the SP<the
`RL<the MTO, the engine is operable to provide torque to propel the hybrid
`vehicle” and “when the RL>the MTO.” Petitioner has not advanced any
`cogent reasoning why no such comparison is required by the claims. We
`determine that claims 1 and 16 require a comparison of torque or road load
`(RL) to a setpoint (SP) and claim 16 also requires a comparison with road
`load to maximum torque output (MTO). That, however, does not mean the
`claims exclude the comparison of other parameters.
`
`C. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
`Translogic, 504 F.3d at 1259.
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`D. Claims 1 and 16
`As discussed above, we dismiss the inter partes review with respect to
`claims 1 and 16. Only dependent claims 2, 3, 6–12, 17, 19, 23, 27, 30, and
`66 are before us. Each of claims 2, 3, 6–12, 17, 19, 23, 27, 30, and 66,
`however, ultimately depends from claim 1 and necessarily include all of the
`limitations of claim 1. In addition, each of claims 17 and 19 depends from
`claim 16 and necessarily includes all of the limitations of claim 16.
`Accordingly, we first address the contentions made by Petitioner as to how
`Ibaraki ’882 renders obvious claims 1 and 16.
`Petitioner contends that claims 1 and 16 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Ibaraki ’882 and the general knowledge
`of a person of ordinary skill in the art. Pet. 9–26, 32–40. To support its
`contentions, Petitioner provides detailed explanations as to how the prior art
`meets each claim limitation of claims 1 and 16. Id. Petitioner also relies
`upon a Declaration of Dr. Gregory W. Davis, who has been retained as an
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`expert witness by Petitioner for the instant proceeding. Ex. 1556. For the
`reasons that follow, and notwithstanding Patent Owner’s arguments, which
`we address below, we are persuaded by Petitioner’s showing, which we
`adopt as our own, that claims 2, 3, 6–12, 17, 19, 23, 27, 30, and 66, which
`depend from claim 1 are unpatentable under 35 U.S.C. § 103(a).
`Ibaraki ’882
`Ibaraki ’882 describes a drive control apparatus and method for a
`hybrid vehicle equipped with two drive power sources consisting of an
`electric motor and engine such as an internal combustion engine. Ex. 1552,
`1:9–14. Ibaraki ’882 describes that when the electric motor (14, Fig. 1 or
`114, Fig. 8) functions also as an electric generator, a separate electric
`generator may be provided in addition to the electric motor. Id. at 26:34–38.
`Ibaraki ’882 further describes an electric energy storage device or battery 22.
`Id. at Fig. 1. Drive control apparatus includes controller 128 that includes a
`drive source selecting means 160. Drive source selecting means is adapted
`to select one or both of engine 112 and motor 114 as the drive power source
`or sources according to a drive source selecting data map stored in memory
`means 162. Id. at 20:38–43, Figs. 8 and 9. In particular, controller 128 has
`a MOTOR DRIVE mode in which motor 114 is selected as the drive power
`source, an ENGINE DRIVE mode in which the engine 112 is selected as the
`drive power mode source, and an ENGINE-MOTOR DRIVE mode in which
`both the engine 112 and the motor 114 are selected as the drive power
`sources. Id. at 20:43–49.
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`Figure 11, reproduced below, depicts a graph which represents a
`predetermined relationship between the vehicle drive torque and running
`speed V and the three drive modes. Id. at 20:50–53.
`
`
`Figure 11 shows a graph which represents a predetermined
`relationship between the vehicle drive torque and running speed.
`Drive source selecting means 160 (Fig. 9) selects the MOTOR
`DRIVE mode when the vehicle running condition as represented by the
`current vehicle drive torque and speed V is held within the range below the
`first boundary line B. When the vehicle running condition is held within the
`range between the first and second boundary lines B and C, the drive source
`selecting means 160 selects the ENGINE DRIVE mode. When the vehicle
`running condition is in the range above the second boundary line C, the
`drive source selecting means 160 selects the ENGINE[-MOTOR] DRIVE
`mode. Id. at 20:59–21:1. Ibaraki ’882 describes that the boundary line B
`may be adjusted from B1 to B2 so as to enlarge the range in which the
`MOTOR DRIVE mode is selected. Id. at 21:2–4. Ibaraki ’882 further
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`describes an ELECTRICITY GENERATING DRIVE mode where the
`engine provides surplus power that is greater than the vehicle drive torque.
`The surplus power from the engine is used to operate the electric motor as a
`generator to regeneratively charge the battery. Id. at 23:1–30.
`Claim 1
`Claim 1 recites a “hybrid vehicle.” Petitioner contends that Ibaraki
`’882 describes a drive control apparatus for controlling a hybrid vehicle that
`may be propelled by an internal engine and electric motor. Pet. 9; Ex. 1552,
`1:9–14; Ex. 1556 ¶¶ 181–184. We are persuaded by Petitioner’s showing,
`and adopt it as our own, that Ibaraki ’882 describes this limitation.
`Claim 1 recites “one or more wheels.” Petitioner directs attention to a
`passage in Ibaraki ’882 that describes that power from the internal
`combustion engine and motor are “simultaneously or selectively transferred
`to a transmission 16, and to right and left drive wheels via an output device.”
`Pet. 10; Ex. 1552, 11:12–16; Ex. 1556 ¶¶ 185–187. The “drive wheels” are
`also shown in Figure 8. We are persuaded by Petitioner’s showing, and
`adopt it as our own, that Ibaraki ’882 describes one or more wheels.
`Claim 1 recites “an internal combustion engine operable to propel the
`hybrid vehicle by providing torque to the one or more wheels.” For this
`claim 1 phrase, Petitioner contends that Ibaraki ’882 describes that the
`power of the internal combustion engine “simultaneously or selectively [is]
`transferred to a transmission 16, and to right and left drive wheels via an
`output device.” Pet. 11; Ex. 1552, 11:12–15, 19:24–28; Ex. 1556 ¶ 190.
`Petitioner further contends, directing attention to the testimony of Dr. Davis,
`that a person having ordinary skill in the art would have understood that
`when power is transferred from the internal combustion engine to the
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`transmission, and then to the wheels as described in Ibaraki ’882, the power
`is transferred by the torque from the engine crankshaft, which is applied to
`the drive shaft and ultimately the drive wheels. Ex. 1556 ¶ 191. We are
`persuaded by Petitioner’s showing, and adopt it as our own, that Ibaraki ’882
`describes an internal combustion engine operable to propel the hybrid
`vehicle by providing torque to the one or more wheels.
`Claim 1 recites “a first electric motor coupled to the engine” and “a
`second electric motor operable to propel the hybrid vehicle by providing
`torque to the one or more wheels.” Petitioner contends that in addition to the
`electric motor disclosed in Figure 8 of Ibaraki ’882, Ibaraki ’882 also
`describes adding a separate electric generator for generating electricity,
`directing attention to Ibaraki ’882 claim 1 which describes a drive control
`apparatus for a vehicle having an electric generator and an electric motor.
`Pet. 11–12; Ex. 1552, Claim 1. Petitioner also relies on descriptions in
`Ibaraki ’882 which describes that the electric generator and electric motor
`may be provided as separate elements. Pet. 12; Ex. 1552, 5:27–29; 26:34–
`38. Petitioner contends, with supporting evidence, that a person having
`ordinary skill in the art would have understood the described separate
`generator to be an electric motor. Pet. 13; Ex. 1556 ¶ 199. Petitioner
`provides annotated Figures 1 and 8 from Ibaraki ’882 and modifies them to
`include the separate electric generator. In essence the annotated figures
`show an added generator coupled to the internal combustion engine. Pet. 13.
`Petitioner contends that a person having ordinary skill in the art would have
`understood that the separate generator (first electric motor) would have
`necessarily been coupled to the internal combustion engine in order for the
`engine to operate the generator to generate electricity as described. Pet. 13–
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`14; Ex. 1556 ¶ 200. Lastly, Petitioner contends that a person having
`ordinary skill in the art would have understood that the second electric motor
`(e.g., 114 of Figure 8) is operable to propel the vehicle by providing torque
`to the one or more wheels. Pet. 16–17; Ex. 1556 ¶¶ 210–212. We are
`persuaded by Petitioner’s showing, and adopt it as our own, that Ibaraki
`’882, based on the relevant knowledge a person of ordinary skill in the art
`would have had at the time of the invention, meets the recitation of the first
`and second electric motors.
`Claim 1 recites “a battery coupled to the first and second electric
`motors, operable to: provide current to the first and/or the second electric
`motors; and accept current from the first and second electric motors.”
`Petitioner contends that Ibaraki ’882 describes an electric energy storage
`device 22 or 136 in the form of a battery. Pet. 17; Ex. 1552, 11:31–33,
`19:55–57. Petitioner further contends that the battery (either 22 or 136) is
`coupled to the second motor (i.e., electric motor 14, 114) so that the battery
`can accept current from the motor for charging of the battery and provide
`current for propelling the vehicle. Pet. 17; Ex. 1552, 11:37–41, 19:63–67;
`Ex. 1556 ¶¶ 215, 218–219, 221–223. Petitioner further contends that the
`first electric motor (e.g., the described electric generator, or the one of the
`two or more electric motors for driving the wheels of the vehicle) provides
`and accepts current from the battery. Pet. 18–19; Ex. 1556 ¶ 227. We are
`persuaded by Petitioner’s showing, and adopt it as our own, that Ibaraki
`’882, based on the relevant knowledge a person of ordinary skill in the art
`would have had at the time of the invention, meets the recitation of a battery
`coupled to the first and second electric motors as claimed.
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`Claim 1 recites “a controller, operable to control the flow of electrical
`and mechanical power between the engine, the first and the second electric
`motors, and the one or more wheels.” Petitioner contends that Ibaraki ’882
`describes a controller 26, or controller 128, which includes drive source
`selecting means used to select whether the vehicle is placed in MOTOR
`DRIVE mode, ENGINE DRIVE mode, or ENGINE-MOTOR DRIVE mode.
`Pet. 19–20; Ex. 1552, 12:8–11, 20:38–49. Petitioner contends that
`Ibaraki ’882 further describes that the drive source selecting means of the
`controller selects between the engine drive mode, motor drive mode, and
`electricity generating mode in a hybrid vehicle with a first and second
`electric motor. Pet. 20; Ex. 1552, Claim 1. Petitioner argues that it would
`have been obvious to a person having ordinary skill in the art that the first
`electric motor would have been connected to the controller 128, and that the
`controller 128 would have provided control signals instructing the first
`electric motor to operate in a generator mode. Pet. 21; Ex. 1556 ¶ 232. We
`are persuaded by Petitioner’s showing, and adopt it as our own, that Ibaraki
`’882, based on the relevant knowledge a person of ordinary skill in the art
`would have had at the time of the invention, meets the recitation of the
`controller as claimed.
`Claim 1 further recites “wherein the controller is operable to operate
`the engine when torque required from the engine to propel the hybrid vehicle
`and/or to drive one or more of the first or the second motors to charge the
`battery is at least equal to a setpoint (SP) above which the torque produced
`by the engine is efficiently produced.” Petitioner asserts that because of the
`“and/or” language, the phrase is met if Ibaraki ’882 discloses that “the
`controller is operable to operate the engine when the torque required from
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`the engine to propel the hybrid vehicle is at least equal to a setpoint (SP)