Paper 12
`Trials@uspto.gov
`571-272-7822 Entered: October 29, 2015
`
`
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. INTRODUCTION
`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.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: October 29, 2015
`
`
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. INTRODUCTION
`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.
`
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`Case IPR2015-00784
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`Resp.”).1 Patent Owner also filed a Motion to Seal. Paper 11 (“Mot. to
`Seal.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
`an inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`For the reasons that follow, we institute an inter partes review of
`claims 1–3, 6–12, 16, 17, 19, 23, 27, 30, and 66 of the ’634 patent. We do
`not institute an inter partes review of claim 5 of the ’634 patent.
`A. 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. Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc.,
`Case IPR2014-00904 (PTAB Dec. 11, 2014) (Paper 13), and Ford Motor
`Co. v. Paice LLC & The Abell Foundation, Inc., Case IPR2014-01416
`(PTAB Mar. 12, 2015) (Paper 9). Petitioner filed eleven additional petitions,
`including the instant Petition, challenging various claims of the ’634 patent.2
`B. 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
`
`
`1 Citations are to the redacted version of Patent Owner’s Preliminary
`Response (Paper 10, “Prelim. Resp.”).
`2 See IPR2015-00606 (Paper 10, Appendix), for a complete listing of the
`eleven cases.
`
`2
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`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.
`
`C. Claims
`Petitioner challenges independent claim 1 and dependent claims 2, 3,
`5–12, 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,
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`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.
`
`
`
`
`Basis Challenged Claim(s)
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–3, 5–12, 16, 17, 19, 23, 27, 30, and
`66 of the ’634 patent are unpatentable under 35 U.S.C. § 103 based on the
`following specific grounds:
`Reference[s]
`Ibaraki ’882 3 and the general
`knowledge of a person of ordinary
`skill in the art (“POSA”)
`Ibaraki ’882, Frank,4 and the general
`knowledge of a POSA
`
`§ 103
`
`§ 103
`
`1–3, 5, 12, 16, 17, 19,
`27, 30, and 66
`
`6 –11
`
`
`3 U.S. Patent No. 5,789,882, issued Aug. 4, 1998 (Ex. 1552) (“Ibaraki
`’882”).
`4 U.S. Patent No. 6,116,363, issued Sep. 12, 2000 (Ex. 1553) (“Frank”).
`4
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`Reference[s]
`Ibaraki ’882, Jurgen,5 Lateur,6 and the
`general knowledge of a POSA
`
`Basis Challenged Claim(s)
`
`§ 103
`
`23
`
`II. ANALYSIS
`A. 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 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).
`Road Load (RL)
`The term “road load” or “RL” is recited in each of dependent claims
`6, 16, and 23. The Specification of the ’634 patent defines “road load” as
`“the vehicle’s instantaneous torque demands, i.e., that amount of torque
`required to propel the vehicle at a desired speed,” and further notes that it
`“can be positive or negative, i.e., when decelerating or descending a hill, in
`which case the negative road load . . . is usually employed to charge the
`battery.” Ex. 1550, 12:42–61. Accordingly, we construe “road load” and
`
`
`5 Ronald Jurgen, Automotive Electronics Handbook, 1995 (Ex. 1554)
`(“Jurgen”).
`6 U.S. Patent No. 5,823,280, issued Oct. 20, 1998 (Ex. 1555) (“Lateur”).
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`“RL” as “the amount of instantaneous torque required to propel the vehicle,
`be it positive or negative.”7
`
`Setpoint (SP)
`The term “setpoint” or “SP” is recited in independent claim 1.
`
`Petitioner proposes that “setpoint” or “SP” be construed, in the context of
`these claims, as “predetermined torque value.” Pet. 7–8. In that regard,
`Petitioner correctly notes that the claims compare the setpoint either to an
`engine torque value or a torque based “road load” value. Id. Although
`Patent Owner correctly notes that the Specification outside of the claims
`refers to two items being measurable against respective setpoints, i.e., the
`vehicle’s instantaneous torque requirement and the state of charge of the
`battery bank (Prelim. Resp. 12), the setpoint in these claims relates to torque
`and not battery charge.
`
`Patent Owner asserts that “setpoint” or “SP” is not simply a numerical
`value divorced from the context of the rest of the vehicle’s control system,
`and that a “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. Prelim. Resp. 7–8. Citing the Specification, Patent Owner further
`states that the Specification uses “setpoint” synonymously with “transition
`point.” Id. at 9. Accordingly, Patent Owner urges that the construction of
`“setpoint” or “SP” must include an indication that it is a point at which a
`transition between different operating modes may occur. Id. at 12.
`
`
`7 This construction is the same as that proposed by Petitioner. Pet. 7. Patent
`Owner does not propose a different construction.
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`Patent Owner’s arguments are misplaced. The Specification outside
`
`of the claims sometimes uses “setpoint” interchangeably with “transition
`point,” because the disclosure describes the particular transitions between
`operative modes, at the setpoints. If the multiple transitions between modes
`are not described, it would be without meaning to refer to a “setpoint” as a
`transition point between modes. A transition does not spring solely from the
`term “setpoint” or “SP.” It would be improper to read into a claim all of the
`disclosed operational modes and all disclosed transitions between modes
`simply because the claim recites the “setpoint” or “SP.”
`
`Patent Owner does not urge that “setpoint” or “SP” requires any
`particular transition from mode to mode. Instead, Patent Owner merely
`desires to add that a “setpoint” is where a transition between operating
`modes “may occur.” Id. Nothing of significance is added by that proposed
`construction. If a transition is specified by other limitations in the claim, at
`the setpoint, then a transition is required at the setpoint. If no transition is
`specified by other limitations in the claim, then no transition is required at a
`setpoint. A transition may or may not occur at a setpoint, depending on
`what else is recited in the claim. It is not necessary to include such “may
`occur” language in the construction of “setpoint” and “SP.” A multitude of
`events “may occur” at a setpoint, but they are not necessary for setting forth
`the meaning of “setpoint” or “SP” in a claim. The rest of the claim sets forth
`what is required to occur at a setpoint.
`
`Nevertheless, we do regard as meaningful to note that 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.
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`We construe “setpoint” and “SP” as “predetermined torque value that
`
`may or may not be reset.”
`
`Mode I,
`Low-load Mode I,
`High-way Cruising Mode IV,
`Acceleration mode V
`
`Dependent claims 16, 17, and 19 recite the above italicized
`
`limitations. For example, dependent claim 16, recites “low-load mode I,”
`“high-way cruising mode IV,” and “acceleration mode V.” The
`Specification of the ’634 patent sets forth a definition for these modes.
`
`With regard to “mode I,” the Specification states:
`
`As noted, during low-speed operation, such as in city
`traffic, the vehicle is operated as a simple electric car, where all
`torque is provided to road wheels 34 by traction motor 25
`operating on electrical energy supplied from battery bank 22.
`This is referred to as “mode I” operation (see FIG. 6), and is
`illustrated in FIG. 8(a).
`
`Ex. 1550, 35:63–36:1 (emphasis added).
`
`Petitioner proposes a construction for “mode I” that disregards the “all
`torque” requirement quoted above. Pet. 8. We construe “mode I,” in
`accordance with the above-quoted description in the Specification, as “a
`mode of operation of the vehicle, in which all torque provided to the wheels
`is supplied by an electric motor.” We construe “low-load mode I” the same
`as we do “mode I,” because it is evident that “low-load mode I” is another
`name for “mode I.”
`
`With regard to “high-way cruising mode IV,” the Specification states:
`When the operator releases pressure on the accelerator pedal,
`indicating that the desired cruising speed has been reached,
`traction motor 25 is accordingly depowered. The highway
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`cruising mode is referred to as “mode IV” operation, and the
`flow of energy and torque are as illustrated in FIG. 8(c).
`
`Id. at 36:31–36. Figure 8(c) shows that all power to the wheels is supplied
`from the internal combustion engine. Additionally, the Specification states:
`“[d]uring highway cruising, region IV, where the road load is between about
`30% and 100% of the engine’s maximum torque output, the engine alone is
`used to propel the vehicle.” Id. at 37:42–44. Petitioner’s proposed
`construction disregards the exclusivity of the power source. Pet. 8. We
`construe “high-way cruising mode” as “a mode of operation in which all
`torque provided to the wheels is supplied by the internal combustion
`engine.”
`
`With regard to “acceleration mode V,” the Specification states:
`
`If extra torque is needed during highway cruising, e.g.,
`for acceleration or hill-climbing, either or both of motors 21
`and 25 can be powered. This “mode V” operation is illustrated
`in FIG. 8(d); energy flows from tank 38 to engine 40, and from
`battery bank 22 to traction motor 25, and possibly also to
`starting motor 21; torque flows from either or both motors and
`engine to wheels 34.
`
`Ex. 1550, 36:37–43. The Specification further states:
`
`If the operator then calls for additional power, e.g., for
`
`acceleration or passing, region V is entered; that is, when the
`microprocessor detects that the road load exceeds 100% of the
`engine’s maximum torque output, it controls inverter/charger
`27 so that energy flows from battery bank 22 to traction motor
`25, providing torque propelling the vehicle in addition to that
`provided by engine 40. Starting motor 21 can similarly be
`controlled to provide propulsive torque.
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`Id. at 38:1–8. We construe “acceleration mode V” as “a mode of operation
`in which torque provided to the wheels is supplied by the internal
`combustion engine and at least one electric motor.”
`Monitor Patterns of Vehicle Operation Over Time
`
`Claim 5 depends directly from claim 1 and recites that the controller is
`
`operable to “monitor patterns of vehicle operation over time and vary the SP
`accordingly” (emphasis added). Patent Owner argues that we should
`construe the italicized phrase to mean “track and record the driver’s repeated
`driving operations over time.” Prelim. Resp. 13. Petitioner does not provide
`an explicit construction for the phrase.
`Patent Owner argues that the Specification of the ’634 patent’s
`description of monitoring patterns of vehicle operation over time refers to
`how the operator actually drives the car over some period of time, as
`opposed to monitoring an internal data point of the vehicle. Id. at 13–15. In
`support of its construction, Patent Owner directs attention to the following
`descriptions in the Specification:
`Examples of this practice—amounting in many circumstances
`to modifying certain specific values depending on other data
`items not discussed in detail, or by monitoring the vehicle’s
`actual usage patterns over time—are given below.
`
`Ex. 1550, 35:51–55.
`
`
`It is also within the scope of the invention for the
`microprocessor to monitor the vehicle’s operation over a period
`of days or weeks and reset this important setpoint in response to
`a repetitive driving pattern. For example, suppose the operator
`drives the same route from a congested suburban development
`to a workplace about the same time every morning; typically
`the road load might remain under 20% of MTO for the first few
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`minutes of each day, then vary between 0 and 50% of MTO for
`another few minutes as the operator passes through a few traffic
`lights, and then suddenly increase to 150% of MTO as the
`operator accelerates onto a highway. It is within the skill of the
`art to program a microprocessor to record and analyze such
`daily patterns, and to adapt the control strategy accordingly.
`For example, in response to recognition of a regular pattern as
`above, the transition point might be adjusted to 60% of MTO;
`this would prevent repetitive engine starts as the road load
`exceeded 30% of MTO for a few hundred yards at a time, as
`might often occur in suburban traffic. Similarly, the engine
`starting routine might be initiated after the same total distance
`had been covered each day.
`
`Id. at 40:50–41:3 (emphasis added).
`
`In addition, Patent Owner, directing attention to external evidence,
`argues that the word pattern means a regular and repeated course of conduct
`or behavior. Prelim. Resp. 16–17; Ex. 2503.
`Although Petitioner does not provide an explicit construction for the
`phrase “monitor patterns of vehicle operation over time,” Petitioner
`implicitly construes the phrase to encompass monitoring an internal data
`point of the vehicle, e.g., a sum regenerative charging amount that exceeds a
`threshold as described in Ibaraki ’882. Pet. 29–31.
`We agree with Patent Owner that Petitioner’s implicit construction is
`not in light of the written description of the Specification of the ’634 patent
`which describes changing a setpoint in response to monitored vehicle
`operation patterns. In particular, the description in the Specification
`regarding patterns, clearly describes that the patterns are in connection with
`the driving patterns of the operator of the vehicle. Ex. 1550, 40:50–41:3.
`The Specification does not describe monitoring “patterns” of a battery state
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`of charge, for example. Moreover, the plain words of the phrase require
`monitoring patterns over time. It is not enough to monitor a single value of
`a vehicle component, for instance. Rather the plain meaning of the words
`require monitoring patterns, where a pattern is defined as a regular or logical
`form, order, etc. Ex. 2503. Thus, we agree with Patent Owner that a pattern
`is a regular and repeated course of conduct or behavior and that the phrase
`“monitoring patterns of vehicle operation over time” requires monitoring a
`driver’s repeated driving operations over time.
`Because the prior art, as applied by Petitioner, does not describe
`monitoring a driver’s repeated driving operations over time as explained
`below, we need not resolve whether monitoring patterns of vehicle operation
`over time also requires recording and storing. Accordingly, for purposes of
`this decision, we interpret “monitor patterns of vehicle operation over time”
`to require monitoring a driver’s repeated driving operations over time.
`
`B. 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;
`(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).
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`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. A prima facie case of obviousness is
`established when the prior art itself would appear to have suggested the
`claimed subject matter to a person of ordinary skill in the art. In re Rinehart,
`531 F.2d 1048, 1051 (CCPA 1976).
`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).
`C. Obviousness Grounds – Claims 1–3, 5, 12, 16, 17, 19, 27, 30, and 66
`Petitioner contends that claims 1–3, 5, 12, 16, 17, 19, 27, 30, and 66
`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 (POSA). Pet.
`9–46. To support its contention, Petitioner provides explanations as to how
`the prior art meets each claim limitation of claims 1–3, 5, 12, 16, 17, 19, 27,
`30, and 66. Id. Petitioner also relies upon a Declaration of Dr. Gregory W.
`Davis, who has been retained as an expert witness by Petitioner for the
`instant proceeding. Ex. 1556. For reasons provided below, we institute on
`all claims from this set except claim 5.
`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
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`114, Fig. 8) functions also as an electric generator, a separate electric
`generator may be provided in addition to the electric motor. Ex. 1552,
`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.
`Figure 11, reproduced below, shows 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.
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`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-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 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
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`is used to operate the electric motor as a generator to regeneratively charge
`the battery. Id. at 23:1–30.
`Petitioner contends, with supporting evidence, that a POSA would
`have understood that the separate generator described in Ibaraki ’882 is an
`electric motor. Pet. 13, Ex. 1556 ¶ 199. Petitioner further contends, with
`supporting evidence, that a POSA would have recognized that an IC engine,
`like that described in Ibaraki ’882, necessarily has a maximum torque output
`(MTO), above which the IC engine cannot produce additional torque. Pet.
`24–25; Ex. 1556 ¶ 250. Petitioner further contends, with supporting
`evidence, that a POSA would have understood that the IC engine described
`in Ibaraki ’882 can operate to efficiently produce torque when the road load
`is above the setpoint during the “ENGINE DRIVE mode.” Pet. 22–23; Ex.
`1556 ¶¶ 239, 240.
`The present record supports the contention that Ibaraki ’882, based on
`the knowledge of a POSA, describes a hybrid vehicle with one or more
`wheels, an engine operable to propel the vehicle, two electric motors, one for
`propelling the vehicle, a battery, and a controller operable to control power
`between the engine, the first and second motors, and the one or more wheels.
`Pet. 9–21. The present record also supports the contention that Ibaraki ’882,
`based on the knowledge of a POSA, describes that the controller is operable
`to operate the engine when torque required from the engine to propel the
`vehicle is at least equal to a setpoint above which the torque produced by the
`engine is substantially less than the maximum torque output of the engine.
`Pet. 21–26.
`Patent Owner argues that Petitioner has failed to establish, through its
`annotations of Figure 11, that Ibaraki ’882 describes “transitioning between
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`operating modes based on a road-load-based setpoint.” Prelim. Resp. 39.
`The argument is misplaced as none of the challenged claims require
`“transitioning between operating modes based on a road-load-based
`setpoint.” The argument is based on Patent Owner’s proposed construction
`for setpoint, which we have not adopted for the reasons provided above in
`the claim construction section.
`Patent Owner argues that Petitioner’s contention that placement and
`configuration of the described generator to meet the claim 1 recitation of a
`first electric motor coupled to the engine is deficient because Petitioner’s
`contention, in that regard, is conclusory. Prelim. Resp. 39. We are not
`persuaded that Petitioner’s explanation with respect to the first electric
`motor coupled to the engine is conclusory. Rather, the Petition provides
`detailed analysis of how a person of ordinary skill in the art would have
`arrived at the claimed configuration given the Ibaraki ’882 description of the
`separate generator and the limited ways in which the generator could have
`been arranged in the system described therein.
`Claim 1 essentially claims operating the engine of the hybrid vehicle
`when the torque required from the engine is between a SP and the MTO of
`the engine. Claim 1 recites that “the SP is substantially less than the
`maximum torque output (MTO)” of the engine. Patent Owner argues that
`Petitioner effectively reads the word “substantially” out of the phrase. Id. at
`40. We disagree. Instead, Petitioner explains that, based on a description in
`the ’634 Patent (claim 15), “substantially less than the MTO” includes a SP
`which is less than approximately 70% of the MTO. Pet. 24. Based on the
`record before us, we have determined that Petitioner has accounted for the
`“substantially less than the MTO” limitation of claim 1.
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`Patent Owner argues that Petitioner has failed to establish that Ibaraki
`’882 describes “monitor[ing] patterns of vehicle operation over time” as
`required by dependent claim 5. Prelim. Resp. 41–42. Patent Owner’s
`argument is persuasive. As explained above in the claim construction
`section, we interpret the claim 5 phrase “monitor[ing] patterns of vehicle
`operation over time” to require monitoring a driver’s repeated driving
`operations over time. As a result, Petitioner has not shown how any of the
`relied upon references disclose monitoring a driver’s repeated driving
`operations over time as required by claim 5, nor has Petitioner shown that a
`person having ordinary skill in the art at the time of the invention would
`have known of the claimed feature. Petitioner’s reliance (Pet. 29–31) on the
`Ibaraki ’882 disclosure, for example, of monitoring a sum regenerative
`charging amount (SOCRT) that is acquired while the vehicle is operated in
`the regenerative charging mode and determining if that amount exceeds a
`threshold is insufficient to show “monitoring patterns of vehicle operations
`over time.” The monitoring, in that regard, is not based on a driver’s
`repeated driving operations over time. Indeed, Petitioner has not shown that
`Ibaraki ’882 monitors for a pattern, e.g., a regular and repeated course of
`conduct or behavior. Ibaraki ’882 monitors the sum regenerative charging
`amount. The sum is a total of regenerative charges, not based on any
`monitored pattern of charges, and importantly, the monitoring has not been
`shown to be based on a driver’s repeated driving operations over time.
`Patent Owner argues that none of Petitioner’s proposed grounds
`present a proper obviousness analysis, whereby Petitioner has failed to
`identify the differences between the claims challenged and Ibaraki ’882.
`Prelim. Resp. 34–39. We have reviewed the proposed ground of
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`obviousness over Ibaraki ’882 and POSA against claims 1–3, 12, 16, 17, 19,
`27, 30, and 66, and we are persuaded, at this juncture of the proceeding, that
`Petitioner has established a reasonable likelihood that Petitioner would
`prevail in its challenge to claims 1–3, 12, 16, 17, 19, 27, 30, and 66.
`We also have considered Patent Owner’s argument that the Petition
`improperly incorporates arguments and evidence from the Declaration of
`Dr. Davis into the Petition. Prelim. Resp. 29–32. We agree that, in general,
`arguments must not be incorporated by reference from one document into
`another document (37 C.F.R. § 42.6(a)(3)). Here, however, Patent Owner’s
`arguments are unpersuasive. Petitioner relies on Ibaraki and the knowledge
`of POSA in challenging claims 1–3, 12, 16, 17, 19, 27, 30, and 66. In doing
`so, Petitioner relies on Dr. Davis’ testimony as evidence of what a POSA
`would have known at the time of the invention. We have reviewed those
`portions of Dr. Davis’ Declaration, to which we are directed, with respect to
`the grounds upon which we institute, and, have determined that there is
`nothing unusual about his declaration or the way in which Petitioner relies
`on the declaration insofar as improper incorporation is concerned, at least
`not to the extent that we would disregard the Petition in its entirety. For
`similar reasons, we are not persuaded by Patent Owner’s argument that we
`should deny the Petition because Petitioner incorporates by reference
`previous explanations of how claims are met by the prior art with respect to
`other claims. Our rule against incorporation by reference does not apply to a
`single document referencing other parts of the same document. Moreover,
`we will not disregard the Petition because of an alleged “voluminous
`record.” Id. at 32–33.
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`We have considered Patent Owner’s arguments that we should not
`consider, on the merits, the Petition based on 35 U.S.C. § 325(d). Id. at 17–
`26. Notwithstanding those arguments, we exercise our discretion and
`consider the Petition and institute trial on the grounds summarized below,
`based in part on Ibaraki ’882, a reference
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