Trials@uspto.gov
`571-272-7822
`
` Paper 10
`
`Entered: September 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`1 of 292
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`571-272-7822
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` Paper 10
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`Entered: September 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`I. INTRODUCTION
`Ford Motor Company (“Ford”) filed a Petition requesting an inter
`partes review of claims 30–33, 35, 36, 38, and 39 of U.S. Patent No.
`8,214,097 B2 (“the ’097 patent”). Paper 1 (“Pet.”). The owner of the
`’097 patent, Paice LLC & The Abell Foundation, Inc. (“Paice”), filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.” ).1 We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” After considering the Petition and Preliminary Response, we
`conclude that Ford has demonstrated a reasonable likelihood that it would
`prevail in showing unpatentability of all but one of the challenged claims.
`Accordingly, we authorize institution of an inter partes review as to claims
`30–33, 35, 36, and 39 of the ’097 patent, but deny review as to claim 38.
`II. BACKGROUND
`
`The ’097 Patent 2
`A.
`The ’097 patent describes a hybrid vehicle with an internal
`
`combustion engine, an electric motor, and a battery bank, all controlled by a
`microprocessor that directs the transfer of electrical and mechanical power
`
`
`1 Paice filed both redacted and unredacted versions of the Preliminary
`
`Response. Papers 7, 8. Our decision cites to the redacted version, i.e., Paper
`8, which is marked “Public.”
`2 The ’097 patent is also the subject of a co-pending case, Paice, LLC
`
`et al. v. Ford Motor Company, No. 1-14-cv-00492, filed Feb. 19, 2014, in
`the U.S. District Court for the District of Maryland. Pet. 2.
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`between the engine, the motor, and the wheels of the vehicle. Ex. 1001,
`Abs., Fig. 4. The hybrid vehicle features a hybrid control strategy that limits
`the rate of increase of the engine’s output torque so that fuel combustion in
`the engine occurs at a mixture near the stoichiometric air-fuel ratio. Id. at
`37:2–42. By limiting the rate of increasing engine torque and maintaining a
`near stoichiometric air-fuel mixture, the hybrid control strategy of the ’097
`patent increases fuel efficiency and reduces undesirable emissions during
`start and operation of the vehicle. Id. at 38:62–39:14.
`B.
`Challenged Claims
`Ford challenges independent claim 30 and dependent claims 31–33,
`35, 36, 38, and 39 of the ’097 patent. Claim 30 is illustrative:
`30. 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,
`wherein said engine has an inherent maximum rate of increase
`of output torque;
`
`at least one electric motor operable to propel the hybrid
`vehicle by providing torque to the one or more wheels;
`
`a battery coupled to the at least one electric motor,
`operable to provide electrical power to the at least one electric
`motor; and
`
`a controller, operable to control the flow of electrical and
`mechanical power between the engine, the at least one electric
`motor, and the one or more wheels, responsive to an operator
`command;
`
`wherein said controller controls said at least one electric
`motor to provide additional torque when the amount of torque
`being provided by said engine is less than the amount of torque
`required to operate the vehicle; and
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`wherein said controller controls said engine such that a
`
`rate of increase of output torque of said engine is limited to less
`than said inherent maximum rate of increase of output torque,
`and wherein the controller is operable to limit the rate of change
`of torque produced by the engine such that combustion of fuel
`within the engine occurs at a substantially stoichiometric ratio.
`
`Ex. 1001, 60:4–29.
`C.
`Evidence of Record
`
`Ford relies upon the following prior art as its basis for challenging the
`claims of the ’097 patent. Ford also proffers the Declaration of Dr. Jeffrey
`L. Stein. Ex. 1002.
`
`Anderson
`
`References
`’455 PCT
`publication
`Caraceni
`
`Patents/Printed Publications
`PCT INTERNATIONAL PUBLICATION
`NO. WO 00/15455
`A. Caraceni et al., Hybrid Power
`Unit Development for Fiat
`Multipla Vehicle, SAE TECHNICAL
`PAPER 981124
`C. Anderson & E. Pettit, The
`Effects of APU Characteristics on
`the Design of Hybrid Control
`Strategies for Hybrid Electric
`Vehicles, SAE TECHNICAL PAPER
`950493
`Yamaguchi U.S. Patent No. 5,865,263
`Katsuno
`U.S. Patent No. 4,707,984
`Severinsky U.S. Patent No. 5,343,970
`Boberg
`U.S. Patent No. 5,959,420
`
`Exhibit
`Date
`Mar. 23, 2000 1004
`
`1998
`
`1005
`
`1995
`
`1006
`
`1007
`Feb. 2, 1999
`Nov. 24, 1987 1008
`Sep. 6, 1994
`1009
`Sep. 28, 1999
`1012
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`D.
`
`Asserted Grounds of Unpatentability
`Ford challenges the patentability of claims 30–33, 35, 36, 38, and 39
`of the ’097 patent based on the following specific grounds:
`
`Ground
`§ 102(b)
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Basis
`’455 PCT publication
`’455 PCT publication
`Caraceni
`Caraceni and Boberg
`Caraceni, Boberg, and Yamaguchi
`Caraceni, Boberg, Yamaguchi, and
`Katsuno
`Severinsky and Anderson
`
`Challenged Claims
`38
`38
`30, 31, 35, 36
`30, 31, 35, 36
`32
`33
`
`30, 31, 35, 36, 38, 39
`
`Severinsky, Anderson, and Yamaguchi
`Severinsky, Anderson, Yamaguchi, and
`Katsuno
`
`32
`
`33
`
`III. ANALYSIS
`
`Standing
`A.
`Paice contends that Ford is “barred or estopped” under 37 C.F.R.
`
`§ 42.104(a) from requesting inter partes review of the ’097 patent due to an
`alleged breach of an arbitration agreement between the parties. Prelim.
`Resp. 6–13. According to Paice, the arbitration agreement includes
`“unambiguous terms” that purportedly limit Ford’s ability to “challeng[e]
`the claims of the ’097 patent.” Id. at 7, 9–10. Postulating that Ford is in
`breach of those terms, Paice asserts that Ford has failed to demonstrate the
`requisite standing to file the instant Petition. Id. at 11.
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`The purported “standing” argument raised by Paice, however, relates
`
`to a disputed contractual matter that falls outside the purview of our
`authority under the Leahy-Smith America Invents Act, Pub. L. No. 112–29,
`125 Stat. 284 (2011). Indeed, the question of whether Ford has breached the
`arbitration agreement by requesting inter partes review of the ’097 patent is
`currently the subject of a preliminary injunction motion filed by Paice in the
`co-pending district court action, and yet to be decided. Prelim. Resp. 12 n.4.
`As such, we reject Paice’s attempt to frame this unresolved breach-of-
`contract issue as a standing issue ripe for our review. Based on the current
`record, Paice has not demonstrated that Ford is barred or estopped from
`challenging the ’097 patent.
`B.
`Claim Construction
`We have considered the terms of the challenged claims. For purposes
`of this decision, no particular claim term requires an express construction at
`this time.
`C.
`Asserted Grounds
`
`1.
`Claim 38 - Anticipation by the ’455 PCT Publication
`Claim 38, which depends directly from independent claim 30, requires
`that the battery supply power to the electric motor “at a peak of at least 500
`volts under peak load conditions.” Ford contends that claim 38 is
`unpatentable under 35 U.S.C. § 102(b) as anticipated by the ’455 PCT
`publication. Pet. 23–29.
`The ’455 PCT publication has a publication date of March 23, 2000.
`Ex. 1004. The application that issued as the ’097 patent has a filing date of
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`March 29, 2011, but claims the benefit under 35 U.S.C. § 120 of
`applications that have filing dates prior to the publication date of the ’455
`PCT publication, namely, application No. 09/392,743 (“the ’743
`application”) and application No. 09/264,817 (“the ’817 application”). Ex.
`1001. Nevertheless, Ford argues that the benefit of the previously-filed ’743
`and ’817 applications does not extend to claim 38, because the ’743 and
`’817 applications fail to provide written description support for the claimed
`range of “at least 500 volts.” Pet. 6–7. Instead, according to Ford,
`disclosure of the peak voltage, as recited in claim 38, did not occur until
`April 2, 2001, with the filing of continuation-in-part application No.
`09/822,866 (“the ’866 application”). Id. at 8–10.
`We credit the testimony of Ford’s declarant, Dr. Stein, that a skilled
`artisan would not have understood the ’743 and ’817 applications as
`evincing possession of the peak voltage limitation of claim 38. Pet. 7 (citing
`Ex. 1002 ¶¶127–133). Moreover, we find persuasive Ford’s argument, with
`supporting evidence, that claim 38 is only entitled to the benefit of the
`April 2, 2001 priority date of the ’866 CIP application.3 Id. at 8–10. Thus,
`based on the current record, Ford has shown that the ’455 PCT publication
`qualifies as prior art against claim 38.
`
`Having demonstrated the prior art status of the ’455 PCT publication,
`Ford proceeds to argue that it discloses, and thus, anticipates, the peak
`voltage range of claim 38. Pet. 23–29. But Ford’s argument bears an
`
`3 At this time, it appears Paice does not dispute this premise. See
`
`Prelim. Resp. 16.
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`element of inconsistency. Although Ford acknowledges that the ’455 PCT
`publication, which is a combination of the disclosures of the ’743 and ’817
`applications, is not a “claim supporting disclosure” of the full scope of claim
`38, Ford nevertheless contends that the ’455 PCT publication inherently
`describes an embodiment encompassed by claim 38. Id. at 29. In particular,
`Ford relies on a series of calculations by Dr. Stein purporting to show that a
`skilled artisan would have recognized that the nominal voltage (768 volts)
`described in the ’455 PCT publication “would drop” to a peak voltage (553
`volts) under peak load conditions within the scope of claim 38. Pet. 29
`(citing Ex. 1002 ¶ 198); see also id. at 24 (citing Ex. 1002 ¶¶ 193–208).
`
`Dr. Stein’s arrival at a peak voltage within the claimed range,
`however, is based on teachings taken not solely from the ’455 PCT
`publication, but also from the challenged ’097 patent. See Ex. 1002 ¶¶ 198–
`206. Notably, Dr. Stein explains that “[u]sing the ‘Further Improvements’
`section of the ’097 patent as a basis for my calculations, it is my
`determination that the approximate voltage drop of a 768 volt lead-acid
`battery bank . . . ‘under peak load conditions’ would be no less than
`approximately 553 volts when a maximum current of 200 amperes is being
`supplied.” Id. at ¶ 198. As part of his calculations, Dr. Stein admittedly
`imports the “stated parameters” of “two examples” from the ’097 patent into
`the disclosure of the ’455 PCT publication to arrive at the claimed invention.
`See id. at ¶¶ 198–199, 202. This is impermissible.
`
`The proposed ground is one of anticipation, not obviousness. There is
`no indication in Dr. Stein’s Declaration that the purportedly “inherent” peak
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`voltage of 553 volts could be arrived at from parameters expressed in the
`’455 PCT publication or otherwise within the knowledge of an ordinarily
`skilled artisan. Instead, Dr. Stein clearly utilizes, and combines, the
`teachings of two references in asserting anticipation of the claimed
`invention, which is not permissible under 35 U.S.C. § 102(b). Nor has Ford
`persuaded us that the parameters stated in the ’097 patent, as relied on by Dr.
`Stein, would have been known by a skilled artisan at the time of the claimed
`invention, as opposed to only the inventors of the ’097 patent. As such, we
`determine that the information presented by Ford fails to establish a
`reasonable likelihood of prevailing on the ground that claim 38 is
`unpatentable as anticipated by the ’455 PCT publication.
`2.
`Claim 38 – Obviousness Over the ’455 PCT Publication
`Ford also contends that claim 38 is unpatentable under 35 U.S.C.
`
`§ 103 as obvious over the ’455 PCT publication, or alternatively, over the
`combined teachings of Severinsky and Anderson. Pet. 29, 54. In arguing
`obviousness, however, Ford again relies on the legally-flawed conclusion of
`its declarant, Dr. Stein, who utilizes teachings from the challenged ’097
`patent to conclude that a skilled artisan would have understood the
`disclosures of either the ’455 PCT publication or Severinsky as teaching,
`and thereby rendering obvious, the “at least 500 volts” limitation of claim
`38. Id. at 30, 54 (citing Ex. 1002 ¶¶ 209, 391, respectively). As such, we
`are not persuaded that the evidence proffered by Ford demonstrates a
`reasonable likelihood that the subject matter of claim 38 would have been
`obvious over either the ’455 PCT publication or Severinsky and Anderson.
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`3.
`
`Claims 30–33, 35, 36, and 39 – Obviousness Over
` Severinsky and Anderson
`Ford challenges claims 30, 31, 35, 36, and 39 on the ground that the
`claimed invention would have been obvious over the combined teachings of
`Severinsky and Anderson. Pet. 4, 46–54. In support of this ground, Ford
`provides a detailed claim chart explaining how each claim limitation is met
`by Severinsky and Anderson and why a skilled artisan would have found it
`obvious to modify the hybrid powertrain taught by Severinsky with the
`hybrid control strategy taught by Anderson. Id. at 47–51. Acknowledging
`that Severinsky does not explicitly disclose limiting the rate of increase of
`engine output torque, as recited in independent claim 30, Ford relies on
`Anderson as teaching a hybrid control strategy that “only allows slow
`[engine] transients” for maintaining a stoichiometric ratio. Id. at 49–50
`(discussing Anderson’s teaching of claim elements labeled as 30.7 and 30.8).
`
`Paice, in turn, responds that a skilled artisan would not equate
`Anderson’s teaching of “slow transients” for the engine with claim 30’s
`“limiting . . . engine output torque,” and further contends that Ford’s
`arguments, which rely on the declaration of Dr. Stein, are “merely
`conclusory” and “entitled to little or no weight.” Prelim. Resp. 36–38. We
`disagree. Contrary to Paice’s argument, Anderson expressly describes the
`engine’s “transient capabilities” in terms of “power output” and
`“combinations of speed and torque” for enabling greater optimization of the
`hybrid vehicle’s powertrain. Ex. 1006 at 7 (emphasis added). Indeed,
`Anderson correlates slow engine transients with maintaining a
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`“stoichiometric air to fuel ratio” such that “emissions are minimized.” Id.
`As such, Ford has demonstrated a reasonable likelihood that the subject
`matter of independent claim 30 would have been obvious in view of the
`combined teachings of Severinsky and Anderson.
`
`Also, we have considered Ford’s challenge of dependent claims 31–
`33, 35, 36, and 39. Pet. 51–57. Paice does not argue these dependent claims
`separately from independent claim 30. See Prelim. Resp. 33–37. Based on
`our review of the detailed claim chart and reasoning presented in the
`Petition, we are persuaded that Ford has shown sufficiently that the
`dependent limitations are taught by Severinsky and Anderson (claims 31, 35,
`36, and 39), together with Yamaguchi (claim 32) and Katsuno (claim 33).
`4.
`Additional Grounds
`
`Ford further contends that claims 30–33, 35, and 36 are unpatentable
`as obvious over Caraceni, either alone or in combination with Boberg. Pet.
`30. Recognizing that neither Caraceni nor Boberg explicitly discloses
`operating the engine at a substantially stoichiometric ratio, Ford argues that
`they implicitly teach this limitation by their disclosure of a “three-way
`catalyst,” which Dr. Stein opines as “operat[ing] at or near a stoichiometric
`ratio.” Pet. 37 (citing Ex. 1002 ¶¶ 258–262); see also id. at 41. Ford,
`however, does not articulate reasonably how the implicit teaching of a
`stoichiometric ratio by Caraceni and Boberg is meaningfully distinctive from
`the express teaching of this same limitation by Severinsky and Anderson.
`As such, we exercise our discretion under 37 C.F.R. § 42.108 and decline to
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`institute on any ground relying on Caraceni, either alone or in combination
`with Boberg, Yamaguchi, or Katsuno.
`IV. CONCLUSION
`Based on the arguments and evidence presented in the Petition, we
`determine that Ford has demonstrated a reasonable likelihood that it would
`prevail in establishing that the subject matter of claims 30–33, 35, 36, and 39
`would have been obvious under 35 U.S.C. § 103, but that Ford has not
`demonstrated a reasonable likelihood that claim 38 is unpatentable under
`either 35 U.S.C. §§ 102 or 103.
`V. ORDER
`For the foregoing reasons, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review
`of challenged claims 30, 31, 35, 36, and 39 of the ’097 patent is instituted on
`the asserted ground of obviousness over Severinsky and Anderson, review of
`challenged claim 32 is instituted on the asserted ground of obviousness over
`Severinsky, Anderson, and Yamaguchi, and review of challenged claim 33 is
`instituted on the asserted ground of obviousness over Severinsky, Anderson,
`Yamaguchi, and Katsuno;
`
`FURTHER ORDERED that Ford’s Petition is denied as to claim 38;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, inter partes review of the ’097 patent shall commence on the
`entry date of this Order, and notice is hereby given of the institution of a
`trial; and
`
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`FURTHER ORDERED that all other grounds presented in Ford’s
`Petition are denied, and no ground other than that specifically listed above is
`authorized for inter partes review of the ’097 patent.
`
`
`
`FOR PETITIONER:
`
`Sangeeta Shah
`Frank Angileri
`John Nemazi
`John Rondini
`BROOKS KUSHMAN P.C.
`FPGP0110IPR1@brookskushman.com
`FPGP010IPR2@brookskushman.com
`FPGP010IPR2@brookskushman.com
`jrondini@brookskushman.com
`
`Kevin Greenleaf
`Lissi Mojica
`DENTONS US LLP
`kevin.greenleaf@dentons.com
`lissi.mojica@dentons.com
`
`
`
`FOR PATENT OWNER:
`
`Timothy W. Riffe
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`riffe@fr.com
`IPR36351-0011IP1@fr.com
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
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`
`
`
`
`
`FORD MOTOR COMPANY
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
`
`
`
`
`
`
`
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`Case IPR2014-00571
`Patent 7,104,347
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`
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`Patent Owner’s Preliminary Response to
`Petition for Inter Partes Review of U.S. Patent
`No. 7,104,347
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`PUBLIC – REDACTED VERSION
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`harmed by a decision that merely requires it to live up to the contractual promises it made.
`
`Accordingly, for at least these additional reasons, the Board should exercise its discretion
`
`and decide not to institute inter partes review on the ground that at least Petitioner lacks
`
`standing to bring the instant petition.
`
`While Patent Owner has provided reasons as to why the Board should not institute
`
`inter partes review based solely on the bargained-for Arbitration Agreement between the
`
`parties, other reasons exist for denying certain grounds of unpatentability presented in the
`
`Petitioner’s petition. Each of those reasons is discussed in further detail below.
`
`IV.
`
`CLAIM CONSTRUCTION
`
`A claim subject to IPR is given its “broadest reasonable construction in light of the
`
`specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). This means that the
`
`words of the claim are given their plain meaning unless that meaning is inconsistent with the
`
`specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Patent Owner submits, for
`
`the purposes of the IPR only, that the claim terms are presumed to take on their broadest
`
`reasonable interpretation in view of the specification of the ’347 patent.5 Under this
`
`
`
`5 Because the standards of claim interpretation applied in litigation differ from PTO
`
`proceedings, any interpretation of claim terms in this IPR is not binding upon Petitioner in
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`any litigation related to the ’360 patent. See In re Zletz, 893 F.2d at 321.
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`standard, and consistent with at least one district court construction of the same terms, the
`
`broadest reasonable interpretation of the terms “setpoint(SP)” and “SP,” which appear in
`
`claims 1, 6, 7, 9, 15, 23, and 36 of the ’347 patent, is “a definite, but potentially variable
`
`value at which a transition between operating modes may occur.” (Ex. 1115 at 13.)
`
`Contrary to the broadest reasonable interpretation standard, Petitioner’s proposed
`
`construction for the terms “setpoint (SP)” and “SP” is based upon an improperly narrow
`
`reading of the specification and completely dismisses the previous construction of the same
`
`term by the U.S. District Court for the Eastern District of Texas. (See Petition at 14-16.)
`
`Specifically, Petitioner asserts that “setpoint (SP)” and “SP” should be construed as “a
`
`predetermined torque value.” (Id. at 16.) Petitioner’s proposed construction is contrary to
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`the specification and claims of the ’347 patent.
`
`The specification of the ’347 patent makes clear that the control system calculates a
`
`number of sensed variables, such as “road load,” the current torque output of the engine,
`
`and the state of charge of the battery, and compares those calculated values against the
`
`“setpoint” to determine the mode of operation:
`
`the microprocessor tests sense 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,
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`against setpoints, and uses the results of the comparisons to control the
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`mode of vehicle operation.
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`(Ex. 1001 at 40:21-32.)
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`The specification also discloses that the “value of a setpoint (for example) may vary
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`somewhat in response to recent history, or in response to monitored variables” and that “the
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`values given above for various numerical quantities may vary somewhat without departing
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`from the invention.” (See Ex. 1001 at 40:39-43.) Other examples of the “setpoint” varying
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`include: varying the “setpoint” “in response to a repetitive driving pattern” such as the route
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`driven by the driver each day (Ex. 1001 at 40:56-67); and varying the “setpoint” based “on
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`the mode of operation in effect when the road load equals a given setpoint SP,” e.g., varying
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`the “setpoint” for the transition between mode I and mode IV when the “road load” is
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`fluctuating around the “setpoint” (Ex. 1001 at 41:20-54). Moreover, the ’347 patent
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`specification describes that “setpoint” isn’t merely a value that is predetermined or definite,
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`but rather that it refers to a value that is potentially variable. Indeed, the ’347 patent
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`specification explicitly states that “setpoint, referred to in the appended claims as ‘SP’…is
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`obviously arbitrary and can vary substantially.” (Ex. 1001 at col. 40:50-55 (emphasis
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`added); see also id. col. 13:23-25.) In addition, claim 2 specifically recites that “the
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`controller monitors patterns of vehicle operation over time and varies said setpoint SP
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`accordingly,” which clearly shows that the setpoint SP is not necessarily a “predetermined”
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`value as Petitioner contends.
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`Additionally, Patent Owner notes that at least one district court has construed the
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`terms “setpoint” and “SP” consistent with Patent Owner’s proposed construction. (Ex. 1115
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`at 13.) In that case, the court rejected defendant’s argument that “setpoint” should be
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`construed as a “torque value” (essentially the same argument being offered by Petitioner
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`here), holding that:
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`Although it is possible that a setpoint may always be determined to be a
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`torque value, there is nothing in the claims or specification that indicate
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`a given setpoint value is actually represented in terms of torque. In fact,
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`the specification clearly indicates that the state of charge of the battery bank,
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`‘expressed as a percentage of its full charge’ is compared against setpoints,
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`the result of the comparison being used to control the mode of the vehicle.
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`’347 Patent, col. 40, ll. 28-31. Clearly a setpoint based on the battery charge
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`status is not a torque value. See also ’347 Patent, col. 41, ll. 10-19 (“It is also
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`within the scope of the invention to make setpoint SP . . . somewhat ‘fuzzy’”).
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`(Ex. 1115 at 10 (emphasis added).)
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`The District Court went on to hold that the terms “setpoint” and “SP” should be given
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`the same construction that Patent Owner offers here, namely “a definite, but potentially
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`variable value at which a transition between operating modes may occur.” Id.
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`Patent Owner also notes that Dr. Davis’ opinions hinge on Petitioner’s proposed
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`various constructions. For example, Dr. Davis states that “[f]or the purposes of this
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`declaration…regarding unpatentability,” he interprets “SP” and “Setpoint (SP)” as
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`“predetermined torque value.” (Ex. 1005 at ¶ 174; see also id. at ¶¶ 273, 295, 318, 329,
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`339, and 371.) Accordingly, if the Board rejects any of Petitioner’s constructions, Dr. Davis’
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`opinions on the corresponding claim term (or terms) are irrelevant and should be given no
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`weight.
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`V.
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`DEFECTS IN THE PROPOSED GROUNDS OF UNPATENTABILITY
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`Each of the proposed grounds of unpatentability is defective for at least the reasons
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`detailed below.
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`A.
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`Ground 1 is defective because Petitioner has failed to establish a
`reasonable likelihood that Severinsky ’970 in view of the general
`knowledge of a POSA describes or suggests the features recited in
`claims 23 and 36.
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`The Board should deny the Petition for inter partes review of claim 23 (and its
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`dependent claim 36) under Ground 1 because Petitioner has failed to establish a
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`reasonable likelihood that Severinsky ’970 in view of the general knowledge of a POSA
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`describes or suggests at least “an internal combustion engine capable of efficiently
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`producing torque at loads between a lower level SP and a maximum torque output MTO,”
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`much less the recited steps of employing such engine. Moreover, Petitioner has failed to
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`establish a reasonable likelihood that Severinsky ’970 in view of the general knowledge of a
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`POSA describes or suggests the recited step of “employing said engine to propel said
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`vehicle when the torque RL required to do so is less than said lower level SP and using the
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`torque between RL and SP to drive said at least one electric motor to charge said battery
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`when the state of charge of said battery indicates the desirability of doing so.”
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`1.
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`Severinsky ’970 in view of the general knowledge of a POSA does
`not describe or suggest the claimed engine that can efficiently
`produce torque at a lower level SP of the engine.
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`Severinsky ’970 does not describe or suggest the claimed engine that can efficiently
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`produce torque at a lower level SP of the engine. Regarding setpoint (SP), Petitioner and
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`Dr. Davis assert that because the engine in Severinsky ’970 runs only at 60-90% of MTO,
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`the low end of 60% of MTO is a “predetermined torque value” and thus equivalent to the
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`claimed “setpoint” based on Petitioner’s flawed proposed construction of the term. (See Ex.
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`1005 at ¶ 204; see also Petition at 21.) However, as discussed above, “setpoint” as
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`properly construed in view of the specification and in light of the broadest reasonable
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`interpretation standard indicates values that are definite but potentially variable. At
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`minimum, Petitioner fails to demonstrate how the lower end of the 60-90% range of the
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`disclosed engine in Severinsky ’970 can be varied.
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`To the contrary, Petitioner equates the claimed “lower level SP” to a fixed level of
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`“60% of the engine’s maximum torque output.” (Petition at 21.) Dr. Davis further explains
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`that the 60-90% of MTO “is the ‘sweet spot’ of the disclosed engine where operation is most
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`efficient.” (Ex. 1005 at ¶ 202.) Neither the Petition nor Dr. Davis’s declaration however
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`provides any supporting evidence to indicate that this low end value in Severinsky ’970 may
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`be varied in any way. Rather, Petitioner and Dr. Davis merely explain that the engine in
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`Severinsky ’970 has a lower efficient operation point that is a fixed property of the engine.
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`Therefore, Ground 1 is defective because it fails to establish a reasonable likelihood
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`that Severinsky ’970 in view of the general knowledge of a POSA describes or suggests the
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`claimed engine that can efficiently produce torque at a lower level SP of the engine.
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`2.
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`Severinsky ’970 in view of the general knowledge of a POSA does
`not describe or suggest the claimed engine that can efficiently
`produce torque up to a maximum torque output MTO of the
`engine.
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`Petitioner has failed to provide any evidence regarding how Severinsky ’970
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`describes or suggests the claimed engine that efficiently produces torque up to a maximum
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`torque output (MTO) of the engine. Petitioner’s expert, Dr. Davis, likewise falls short in
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`demonstrating how Severinsky ’970 meets this claimed feature.
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`According to the Petitioner, Severinsky ’970 teaches an engine that is “operated
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`only under its most efficient conditions” of output power and speed. (Petition at 20-21,
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`emphasis added.) Petitioner further acknowledges that the engine disclosed in Severinsky
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`’970 “is run only in the near vicinity of its most efficient operational point, that is, such
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`that it produces 60-90% of its maximum torque whenever operated.” (Id. at 21 (emphasis
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`in original).) In other words, to the extent that Severinsky ’970 discloses “an internal
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`combustion engine capable of efficiently producing torque,” any such engi
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