UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owners.
`
`______________
`
`
`
`U.S. Patent No. 7,237,634 to Severinsky et al.
`IPR Case No. IPR2015-00785
`
`
`
`DECLARATION OF DR. JEFFREY L. STEIN IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
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`Page 1 of 57
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`FORD 1384
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`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
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`
`
`Table of Contents
`
`
`
`Updated Exhibit List .................................................................................................. 5
`
`I.
`
`Introduction ....................................................................................................11
`
`
`
` Disputed claims ...................................................................................11 A.
`
`II.
`
`Grounds 1-5: ..................................................................................................12
`
`A.
`
`
`Regarding Independent claims 80, 114 and 241, Severinsky
`’970 discloses when to operate the engine based on “RL”, i.e.,
`the “torque required to propel the vehicle” .........................................12
`
`1.
`
`
`Severinsky ’970 teaches starting and stopping the engine
`based on road load or torque required to operate the
`vehicle .......................................................................................12
`
`B.
`
`
`Severinsky ’970 discloses the additional “abnormal and
`transient conditions” limitations of claims 112, 145 and 265 ............15
`
`III. Grounds 1 and 4: ............................................................................................20
`
`A.
`
`
`Independent Claim 241 .......................................................................20
`
`1.
`
`
`2.
`
`
`Anderson discloses “using the electric motor to provide
`additional torque when the rate of increase of engine
`output torque is limited” ...........................................................21
`
`[241.5] controlling said engine such that combustion of
`fuel within
`the engine occurs substantially at a
`stoichiometric ratio, wherein said controlling the engine
`comprises limiting a rate of change of torque output of
`the engine; and ..........................................................................22
`
`a.
`
`b.
`
`Anderson’s hybrid strategy that allows only slow
`transients refers to variables subject to control ..............22
`
`Anderson’s hybrid strategy that allows only slow
`transients refers to slow engine torque transients ...........28
`
`B.
`
`
`Rationale to Combine Severinsky ’970 and Anderson .......................31
`
`Page 2 of 57
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`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
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`1.
`
`
`Anderson does not teach away from using an engine
`control strategy employing slow transients in a parallel
`hybrid system ............................................................................38
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`Anderson’s control strategies apply to parallel
`HEVs ...............................................................................38
`
`Anderson’s hybrid strategy that allows only slow
`transients would work with a parallel hybrid
`because engine transients occur frequently and are
`unpredictable in a parallel hybrid ...................................40
`
`Anderson’s statement that a parallel hybrid vehicle
`“always uses” the following mode does not teach
`away from employing slow transients in all
`parallel hybrid engine control strategies .........................43
`
`A person of ordinary skill in the art would have
`understood that Severinsky ’970’s HEV mode
`selection strategy
`includes modes
`that
`fall
`somewhere
`between Anderson’s
`extreme
`thermostat and follower modes ......................................45
`
`Anderson provides a roadmap for modifying
`Severinsky ’970’s control strategy to employ
`Anderson’s engine control strategy of allowing
`only slow transients ........................................................47
`
`2.
`
`
`3.
`
`
`Anderson’s statement that “slow transients can be a
`serious problem during a
`transition from a hard
`acceleration to a hard braking” does not teach away from
`slow engine transients ...............................................................51
`
`Severinsky ’970 does not teach away from operating at
`the stoichiometric ratio .............................................................52
`
`IV. Grounds 2 and 5: Lateur discloses the additional cruise control
`limitations ......................................................................................................54
`
`V. Grounds 3-5: The combination of Severinsky ’970 and Frank
`discloses the hysteresis limitations of claims 80 and 114 .............................56
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`Page 3 of 57
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`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
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`VI. Conclusion .....................................................................................................56
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`Page 4 of 57
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`FORD 1384
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`
`
`Exhibit
`No.
`1351
`
`1352
`1353
`
`1354
`
`1355
`
`1356
`
`1357
`
`1358
`
`1359
`
`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
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`
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`Updated Exhibit List
`
`Identifier
`
`’634 Patent
`
`Stein
`Ford
`Litigation
`
`Severinsky
`’970
`Anderson
`
`Lateur
`
`Frank
`
`’634 File
`History
`Takaoka
`
`Description
`U.S. Patent No. 7,237,634 issued to Severinsky et al.
`(July 3, 2007)
`Declaration of Jeffery L. Stein, Ph.D.
`Paice LLC v. Ford Motor Company, Case No. 1:14-
`cv-00492, District of MD, Baltimore Div., Complaint
`(Feb. 19, 2014) (Ex. 1353 at 2-51.)
`
`Service (Feb. 25, 2014) (Ex. 1353 at 1.)
`
`Letter from Ford to Paice (Sept. 22, 2014) (Ex. 1353
`at 52.)
`U.S. Patent No. 5,343,970 issued to Severinsky (Sept.
`6, 1994)
`Catherine Anderson & Erin Pettit, The Effects of APU
`Characteristics on the Design of Hybrid Control
`Strategies for Hybrid Electric Vehicles, SAE
`Technical Paper 950493, published as part of Society
`of Automotive Engineers Special Publication,
`DESIGN INNOVATIONS IN Electric AND Hybrid
`Electric Vehicles, SAE SP-1089 (February, 1995)
`(available at http://papers.sae.org/950493/.)
`U.S. Patent No. 5,823,280 issued to Lateur (Oct. 20,
`1998)
`U.S. Patent No. 5,842,534 issued to Frank (Dec. 1,
`1998)
`USPN 7,237,634 File History
`
`Toshifumi Takaoka et al., A High-Expansion Ratio
`Gasoline Engine for the Toyota Hybrid System,
`published as part of Toyota Technical Review,
`Prevention of Global Warming, Vol. 47, No. 2
`(Toyota Motor Corporation, April 1998) (Ex. 1359 at
`1-8.) (available at: https://www.worldcat.org/title/a-
`high-expansion-ratio-gasoline-engine-for-the-toyota-
`hybrid-
`
`Page 5 of 57
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`FORD 1384
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`
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`
`
`Exhibit
`No.
`
`1360
`
`1361
`
`1362
`
`1363
`
`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
`
`
`
`Identifier
`
`Description
`system/oclc/205516653&referer=brief_results.)
`
`Declaration of Walt Johnson and Exhibit A (Dec. 23,
`2014) (Ex.1359 at 9-19.)
`USPN 7,104,347 File History Excerpts
`
`Paice LLC v. Toyota Motor Corp. et al., Case No.
`2:04-cv-211, E.D. Texas, Paice Opening Claim
`Construction Brief (Mar. 8, 2005) (Ex. 1361 at 1-40.)
`
`Paice Claim Construction Reply Brief (Mar. 29, 2005)
`(Ex. 1361 at 41-79.)
`
`Claim Construction Order (Sept. 28, 2005) (Ex. 1361
`at 80-130.)
`
`Paice LLC v. Toyota Motor Corp. et al., Case No.
`2:07-cv-180 (Paice Opening Claim Construction Brief
`(June 25, 2008) (Ex. 1361 at 131-165.)
`
`Paice Claim Construction Reply Brief (Aug. 1, 2008)
`(Ex. 1361 at 166-191.)
`
`Claim Construction Order (Dec. 5, 2008) (Ex. 1361 at
`192-220.)
`Paice LLC v. Hyundai Motor Corp. et al., Case No.
`1:12-cv-0499, District of MD, Baltimore Div., Paice
`Opening Claim Construction Brief (Nov. 14, 2013)
`(Ex. 1362 at 1-37.)
`
`Paice Responsive Brief on Claim Construction (Dec.
`16, 2013) (Ex. 1362 at 38-81.)
`
`Claim Construction Order (Ex. 1362 at 82-122.)
`Decision of Institution, IPR2014-00570, Paper 10
`(Sept. 30, 2014) (Ex. 1363 at 1-13.)
`
`
`’347 File
`History
`Toyota
`Litigation
`
`Hyundai
`Litigation
`
`Ford IPRs
`
`Page 6 of 57
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`FORD 1384
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`
`
`Exhibit
`No.
`
`1364
`
`1365
`1366
`
`1367
`
`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
`
`
`
`Identifier
`
`Description
`Excerpts from Public Patent Owner Preliminary
`Response, IPR2014-00571, Paper 11, (July 11, 2014)
`(Ex. 1363 at 14-23.)
`
`Excerpts from Public Patent Owner Preliminary
`Response, IPR2014-00579, Paper 11, (July 11, 2014)
`(Ex. 1363 at 24-33.)
`
`Decision of Institution, IPR2014-00571, Paper 12,
`(Sept. 30, 2014) (Ex. 1363 at 34-50.)
`
`Decision of Institution, IPR2014-00579, Paper 12,
`(Sept. 30, 2014) (Ex. 1363 at 51-64.)
`
`Decision of Institution, IPR2014-00904, Paper 13,
`(Dec. 12, 2014) (Ex. 1363 at 65-78.)
`
`Excerpts from Public Patent Owner Preliminary
`Response, IPR2014-01415, Paper 9, (Dec. 16, 2014)
`(Ex. 1363 at 79-96.)
`
`Patent Owner Response, IPR2014-00571, Paper 20
`(January 21, 2015) (Ex. 1363 at 97-162.)
`
`Patent Owner Response, IPR2014-00579, Paper 20
`(January 21, 2015) (Ex. 1363 at 163-226.)
`
`Patent Owner Response, IPR2014-00570, Paper 22
`(January 21, 2015) (Ex. 1363 at 227-292.)
`U.S. Patent No. 7,104,347 issued to Severinsky et al.
`(Sep. 12, 2006)
`Curriculum Vitae of Jeffery L. Stein
`John B. Heywood, Internal Combustion Engine
`Fundamentals (McGraw-Hill 1988) (available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2
`0946&recCount=25&recPointer=4&bibId=2421798.)
`Willard W. Pulkrabek, Engineering Fundamentals of
`
`’347 Patent
`
`Jeff Stein CV
`Heywood
`
`Pulkrabek
`
`Page 7 of 57
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`
`Exhibit
`No.
`
`1368
`
`1369
`
`1370
`
`1371
`
`1372
`
`1373
`
`1374
`
`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
`
`
`
`Identifier
`
`Hawley
`
`Pieper
`
`Duoba
`
`Description
`the Internal Combustion Engine (Prentice Hall, 1997)
`(available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=1
`0003&recCount=25&recPointer=1&bibId=2109503.)
`Hawley, G.G., The Condensed Chemical Dictionary,
`Van Nostrand Reinhold Co., 9th ed. (1977) (available
`at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2
`1541&recCount=25&recPointer=14&bibId=1289584.)
`U.S. Patent No. 913,846 issued to Pieper (Mar. 2,
`1909)
`Michael Duoba, Ctr. for Transp. Research, Argonne
`Nat’l Lab., Challenges for the Vehicle Tester in
`Characterizing Hybrid Electric Vehicles, 7th CRC on
`Road Vehicle Emissions Workshop (April 1997)
`(available at
`http://www.osti.gov/scitech/biblio/516019.)
`Society of Automotive Engineers Special Publication,
`Technology for Electric and Hybrid Vehicles, SAE
`SP-1331 (February 1998) (available at
`http://www.worldcat.org/title/technology-for-electric-
`and-hybrid-vehicles/oclc/39802642.)
`Yamaguchi et al., Development of a New Hybrid
`System – Dual System, SAE Technical Paper 960231,
`published as part of Society of Automotive Engineers
`Special Publication, Strategies in Electric and Hybrid
`Vehicle Design, SAE SP-1156, (February 1996)
`(available at http://www.worldcat.org/title/strategies-
`in-electric-and-hybrid-vehicle-design-sae-special-
`publication-sp-1156-a-collection-of-papers-presented-
`for-sessions-at-the-1996-sae-international-congress-
`and-
`exposition/oclc/312822989?ht=edition&referer=di;
`and http://papers.sae.org/960231/.)
`U.S. Patent No. 3,888,325 issued to Reinbeck (June
`10, 1975)
`U.S. Patent No. 4,335,429 issued to Kawakatsu (June Kawakatsu
`
`SP-1331
`
`Yamaguchi
`Paper
`
`Reinbeck
`
`Page 8 of 57
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`
`Exhibit
`No.
`
`1375
`
`1376
`
`1377
`
`1378
`
`1379
`
`1380
`
`1381
`
`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
`
`
`
`Description
`
`15, 1982)
`L. E. Unnewehr et al., Hybrid Vehicle for Fuel
`Economy, SAE Technical Paper 760121 (1976)
`(available at http://papers.sae.org/760121/.)
`Brown, T.L. et al., Chemistry, The Central Science,
`Third Edition (Prentice-Hall, 1985) (available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2
`1829&recCount=25&recPointer=13&bibId=4259071.)
`Grunde T. Engh & Stephen Wallman, Development of
`the Volvo Lambda-Sond System, SAE Technical Paper
`770295 (1977) (available at
`http://papers.sae.org/770295/.)
`A.G. Stefanopoulou et al., Engine Air-Fuel Ratio and
`Torque Control using Secondary Throttles,
`Proceedings of the 33rd IEEE Conference on Decision
`and Control, (December 1994) (available at
`http://ieeexplore.ieee.org/xpl/articleDetails.jsp?tp=&ar
`number=411385&queryText%3DA.+G.+Stefanopoulo
`u+et+al.%2C+Engine+Air-
`Fuel+Ratio+and+Torque+Control+using+Secondary+
`Throttles%2C+Proceedings+of+the+33rd+IEEE+Conf
`erence+on+Decision+and+Control+.LB.December+19
`94.RB.)
`Oreste Vittone et al., FIAT Research Centre, Fiat
`Conceptual Approach to Hybrid Car Design, 12th
`International Electric Vehicle Symposium, Volume 2
`(1994), (available at
`https://www.worldcat.org/title/symposium-
`proceedings-12th-international-electric-vehicle-
`symposium-december-5-7-1994-disneyland-hotel-and-
`convention-center-anaheim-
`california/oclc/32209857&referer=brief_results.)
`General Electric Company, Corp. Research & Dev.,
`Near-Term Hybrid Vehicle Program, Final Report -
`Phase 1 (October 1979) (available at
`http://ntrs.nasa.gov/search.jsp?R=19800017707.)
`William J. Palm III, Control Systems Engineering
`
`Identifier
`
`Unnewehr
`
`Brown
`
`Engh
`
`Stefanopoulou
`
`Vittone
`
`GE Final
`Report
`
`Palm III
`
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`
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`
`
`Exhibit
`No.
`
`1382
`
`1383
`
`1384
`1385
`
`1386
`
`1387
`
`1388
`
`1389
`
`1390
`
`1391
`
`1392
`
`1393
`
`
`
`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
`
`
`
`Identifier
`
`Description
`(John Wiley & Sons, 1986) (available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=1
`0476&recCount=25&recPointer=0&bibId=3806292.)
`Ronald K. Jurgen, Automotive Electronics Handbook,
`(McGraw-Hill 1995) (available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=1
`0485&recCount=25&recPointer=1&bibId=1598658.)
`U.S. Patent No. 5,479,898 issued to Cullen et al. (Jan.
`2, 1996)
`Reply Decl. of Dr. Jeffrey L. Stein
`Final Decision, IPR2014-00904, Paper 41 (December
`10, 2015)
`Final Decision, IPR2014-01416, Paper 26 (March 10,
`2016)
`Final Decision, IPR2014-00570, Paper 44 (September
`28, 2015)
`Final Decision, IPR2015-01415, Paper 30 (March 10,
`2016)
`Mr. Hannemann Deposition Transcript (IPR2015-
`00571, April 7, 2015)
`Mr. Hannemann Deposition Transcript (IPR2015-
`01415, September 4, 2015)
`Mr. Hannemann Deposition Transcript (IPR2015-
`00570, April 8, 2015)
`Dr. Stein Deposition Transcript (IPR2015-00570,
`January 12, 2015)
`Bosch Automotive Handbook (Oct. 1996)
`
`
`
`Jurgen
`
`Cullen
`
`Reply Decl.
`’904 Final
`Decision
`’1416 Final
`Decision
`’570 Final
`Decision
`’1415 Final
`Decision
`Hn Tr. 1
`
`Hn Tr. 2
`
`Hn Tr. 3
`
`Stein Tr. 1
`
`Bosch
`Handbook
`
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`I.
`
`Introduction
`
`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
`
`
`
`1. My name is Jeffrey L. Stein. I provided my background, qualifications
`
`and opinions pertaining to a Petition for Inter Partes Review, Case No. IPR2015-
`
`00785, of certain claims of U.S. 7,237,634 (“the ’634 Patent,” Ex. 1351) in a
`
`Declaration that was filed on February 22, 2015. (“Stein,” “First Declaration,” Ex.
`
`1352.)
`
`2.
`
`I have been asked by Ford to provide this Second Declaration (“Reply
`
`Decl.,” Ex. 1384) in support of Ford’s reply to Paice’s response regarding certain
`
`factual issues raised in IPR2015-00785.
`
`3.
`
`Specifically, for purposes of this declaration, I have been asked to
`
`analyze the arguments made by Paice in their Patent Owner Response, along with
`
`the declaration of Paice’s expert, Mr. Hannemann (“Hn Decl.,” Ex.2308). I have
`
`also analyzed the Patent Trial and Appeal Board’s decision to institute.
`
`(“Decision,” IPR2015-00785, Paper 13.)
`
`4.
`
`I have also reviewed my first declaration (Stein, Ex. 1352) and the
`
`exhibits cited in my declarations.
`
` Disputed claims
`A.
`
`5.
`
`Paice did not argue all claim limitations. For all claim limitations not
`
`analyzed in this declaration, I refer to the analysis in my First Declaration (Stein,
`
`Ex. 1352.)
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`Page 11 of 57
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`II. Grounds 1-5:
`
`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
`
`
`
` Regarding Independent claims 80, 114 and 241, Severinsky ’970
`A.
`discloses when to operate the engine based on “RL”, i.e., the
`“torque required to propel the vehicle”
`
`
`1.
`
`Severinsky ’970 teaches starting and stopping the engine
`based on road load or torque required to operate the vehicle
`
`6.
`
`Paice argues that claim 241 requires starting the engine, i.e., “the
`
`engine is brought into operation” and cites to paragraph 36 of Mr. Hannemann’s
`
`declaration for support. (POR at 14, n.1.) Mr. Hannemann does not explain how
`
`the claims require that the engine is “brought into operation” in paragraph 36, but
`
`he does discuss Paice’s proposed claim constructions for “setpoint” and adding the
`
`phrase “a comparison of the RL to a setpoint (SP) results in a determination that”
`
`to each independent claim:
`
`36. In addition, counsel for Patent Owner has asked that in addition to
`
`applying the Board-adopted constructions that I apply an alternative
`
`construction of “setpoint (SP),” which requires that the setpoint be a
`
`value “at which a transition between operating modes may occur.” I
`
`also understand that Patent Owners have requested that the Board
`
`construe the challenged claims to make explicit the requirement that
`
`the challenged claims require a comparison between road load and
`
`setpoint and/or MTO. I agree with Patent Owners that the plain
`
`language of the claims requires such comparisons. Moreover, a person
`
`of skill in the art would certainly not interpret the challenged claims
`
`so broadly as to disregard the comparison of road load to setpoint
`
`and/or MTO as such comparisons are fundamental to the claimed
`
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`control system. Otherwise, the language following the word “when”
`
`in limitations such as "operating an internal combustion engine of the
`
`hybrid vehicle to propel the hybrid vehicle when the RL required to
`
`do so is between the SP and a MTO" would be rendered superfluous.
`
`Throughout my declaration, I apply the constructions identified in the
`
`table above unless I specifically note otherwise.
`
`(Hn. Decl., Ex. 2308, ¶36, emphasis added.)
`
`7.
`
`I cannot find the limitations – “starting the engine” or “the engine is
`
`brought into operation” in claim 241. However, per Mr. Hannemann’s statements
`
`in ¶36, I assume that Paice’s arguments are rooted in its proposed construction for
`
`“setpoint.”
`
`8.
`
`Severinsky ’970 discloses that the engine is operated only under the
`
`most efficient conditions of output power and speed, and under other conditions,
`
`the electric motor drives the vehicle:
`
`More particularly, according to the invention, the internal combustion
`
`engine is operated only under the most efficient conditions of output
`
`power and speed. When the engine can be used efficiently to drive the
`
`vehicle forward, e.g. in highway cruising, it is so employed. Under
`
`other circumstances, e.g. in traffic, the electric motor alone drives the
`
`vehicle forward and the internal combustion engine is used only to
`
`charge the batteries as needed.
`
`(Severinsky ’970, Ex. 1354, 7:8-16, emphasis added.)
`
`Page 13 of 57
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`9.
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`Case No.: IPR2015-00785
`Attorney Docket No. FPGP0104IPR7
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`
`
`Severinsky ’970 discloses disconnecting the engine 40 from the drive
`
`and shutting it off, when the motor 20 is operated to drive the vehicle:
`
`When the battery 22 is fully charged, and the vehicle speed is below
`
`about 25-35 mph, the microprocessor 48 disconnects the engine 40
`
`from the drive and shuts it off. Under these circumstances only the
`
`motor 20 provides power to drive the vehicle. If the brake pedal is
`
`depressed by the driver, the microprocessor 48 causes the motor
`
`frequency to advance, so that motor 20 performs as a generator to
`
`recover some of the braking energy back into the battery. See FIGS.
`
`12-13. Up to 40-50% on average of the vehicle's kinetic energy may
`
`thus be recovered and stored in battery 22. Excess braking energy is
`
`still dissipated by the brake pads of the vehicle.
`
`(Severinsky ’970, Ex. 1354, 17:44-55, emphasis added.)
`
`10. Severinsky ’970 discloses that the engine is run only in the vicinity of
`
`its most efficient operational point (i.e., between 60-90% of the engine’s MTO):
`
`It will be appreciated that according to the invention the internal
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`combustion engine is run only in the near vicinity of its most efficient
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`operational point, that is, such that it produces 60-90% of its
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`maximum torque whenever operated.
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`(Severinsky ’970, Ex. 1354, 20:63-67, emphasis added.)
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`11. A person of ordinary skill in the art would have understood that since
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`the engine is run only between 60-90% of MTO, the engine is started and operated
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`when the “RL” / torque required to operate the vehicle is between a setpoint (60%
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`MTO) and 90% MTO. A person of ordinary skill in the art would have also
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`understood that the engine is shut off (stopped) during other conditions, e.g., when
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`the engine produces less than the setpoint (60% of MTO).
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`12. Thus even if the independent claims were construed as proposed by
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`Paice to require starting the engine, and to include a comparison between road load
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`and setpoint and/or MTO - Severinsky ’970 discloses such limitations.
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`B.
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`Severinsky ’970 discloses the additional “abnormal and transient
`conditions” limitations of claims 112, 145 and 265
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`13. Claims 112, 145 and 265 depend from claims 80, 114 and 241,
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`respectively and are directed to “abnormal and transient conditions” limitations.
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`Claims 112 and 145 are challenged in Ground 3. Claim 265 is challenged in
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`Ground 1.
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`14. Claim 265 is representative and requires “operating the engine at
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`torque output levels less than the SP under abnormal and transient conditions to
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`satisfy drivability and/or safety considerations.”
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`15. Severinsky ’970 discloses the additional “abnormal and transient
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`conditions” limitations of claims 112, 145 and 265. (Stein, Ex. 1352, ¶¶555-565;
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`723-733; 303-313.)
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`16. Paice argues that “abnormal and transient conditions” be construed as
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`“‘starting and stopping of the engine and provision of torque to satisfy drivability
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`or safety considerations,’ to make clear that it does not include ‘city traffic and
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`reverse operation.’” (POR at 9-10, citing ’097 FH, Ex. 2301 at 238.) And Mr.
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`Hannemann states:
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`95. During prosecution of the related ’097 patent, the patentee
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`distinguished “abnormal and transient conditions” from “traffic or city
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`driv[ing]” and reverse operation, stating that “city traffic and reverse
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`operation are normal conditions” during which the traction motor
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`provides the torque and the combustion engine is “operated to charge
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`the battery when it is discharged.” Ex. 2301 at 238. In my opinion, to
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`a person of ordinary skill in the art, Severinsky’s disclosure of traffic
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`and low battery charge do not constitute “abnormal and transient
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`conditions,” because these are normal operating conditions, as
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`confirmed by the prosecution history of the ’097 patent.
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`(Hn. Decl., Ex. 2308, ¶95.)
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`17. During the prosecution of the related ’097 Patent, the Examiner
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`rejected pending claims 25, 36, 47, 56 and 59, which included similar “abnormal
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`and transient conditions” limitations, over Severinsky ’970’s disclosure of “low
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`speed or in traffic driving” in its Abstract and in Col. 6, lines 19-48. (’097 FH, Ex.
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`2301 at 191.) The Examiner also stated that he “interprets ‘abnormal and transient
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`condition’ as in traffic or city drive, too many traffic light so too many stops and
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`reverse operation.” (Id.) However, Severinsky ’970’s disclosed low speed mode
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`refers to an electric mode in which the electric motor alone drives the vehicle:
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`An improved hybrid electric vehicle includes an internal combustion
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`engine and an electric motor. Both the motor and the engine provide
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`torque to drive the vehicle directly through a controllable torque
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`transfer unit. Typically at low speeds or in traffic, the electric
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`motor alone drives the vehicle, using power stored in batteries;
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`under acceleration and during hill climbing both the engine and the
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`motor provide torque to drive the vehicle; and in steady state highway
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`cruising, the internal combustion engine alone drives the vehicle.
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`(Severinsky ’970, Ex. 1354, Abstract, emphasis added.)
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`A microprocessor receives control inputs from the driver of the
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`vehicle and monitors the performance of the electric motor and the
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`internal combustion engine, the state of charge of the battery, and
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`other significant variables. The microprocessor determines whether
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`the internal combustion engine or the electric motor or both should
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`provide torque to the wheels under various monitored operating
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`conditions. Typically, the electric motor operates under battery power
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`during low speed operation, e.g., in traffic, during reverse operation,
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`or the like. In this mode of operation, the energy transfer efficiency
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`from the batteries to the wheels is very high. By comparison, it will be
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`appreciated that a vast amount of fuel is wasted as internal
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`combustion engines of conventional vehicles idle uselessly at stop
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`lights or in traffic. This source of inefficiency and pollution is
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`eliminated according to the invention.
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`(Severinsky ’970, Ex. 1354, 6:19-35, emphasis added.)
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`18. Paice filed an amendment, and argued the Examiner’s rejection of the
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`“abnormal and transient conditions” claims over Severinsky’s disclosed low speed
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`/ electric mode:
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`There are also a few apparent misunderstandings concerning the
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`claims, which should be clarified. For example, as to claims 25, 36,
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`47, [56 - sic - apparently an error] and 59 the Examiner interprets
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`"abnormal and transient conditions" wherein the engine can be run at
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`output levels less than SP, the minimum power output of the engine
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`under normal circumstances, as "in traffic or city driv[ing] too many
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`traffic light so too many stops and reverse operation." In fact, city
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`traffic and reverse operation are normal conditions and are explicitly
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`provided for. In both, the vehicle typically operates as an electric car,
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`with the traction motor providing the torque necessary to propel the
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`vehicle, and with the ICE operated to charge the battery when it is
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`discharged. The "abnormal and transient conditions" referred to are
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`such conditions as starting the engine, during which operation it must
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`necessarily be operated at less than SP for a short time.
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`(’097 FH, Ex. 2301 at 238, emphasis added.)
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`19. Paice’s argument from the ‘097 File History does not make clear what
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`is not “abnormal and transient conditions.” The “abnormal and transient” claims
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`are not addressed in the remainder of the ‘097 File History, including the
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`Examiner’s Reasons for Allowance. (’097 FH, Ex. 2301 at 256-257.) Therefore it
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`is not clear that Paice’s argument from the ‘097 File History somehow limited the
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`scope, of “abnormal and transient conditions” to make clear that it does not
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`include ‘city traffic and reverse operation.’”
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`20. Alternatively, Paice’s argument seemingly attempts to broaden the
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`“abnormal and transient” limitations to include any engine start: “[t]he ‘abnormal
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`and transient conditions’ referred to are such conditions as starting the engine,
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`during which operation it must necessarily be operated at less than SP for a short
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`time.” (’097 FH, Ex. 2301 at 238.)
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`21. Nonetheless, I understand that the Board concluded that examples of
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`“abnormal and transient conditions” include “starting the engine and stopping the
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`engine.” (Decision at 14.) And I used a similar interpretation of the term for my
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`analysis in my first declaration.
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`22. Therefore Severinsky ’970 disclosure of “operat[ing] the engine 40
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`outside its most fuel efficient operating range, on occasion . . [because] it is
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`preferable to use the engine somewhat inefficiently rather than to discharge the
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`batteries excessively, which would substantially reduce the battery lifetime”
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`discloses the additional “abnormal and transient conditions” limitations of claims
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`112, 145 and 265 (i.e., “operating the engine at torque output levels less than the
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`SP under abnormal and transient conditions to satisfy drivability and/or safety
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`considerations” under the Board’s determination that such conditions include
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`“starting the engine and stopping the engine.” (Severinsky ’970, Ex. 1354, 18:23-
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`33; Stein, Ex. 1352, ¶¶303-313; 555-565; 723-733; Decision at 14.)
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`III. Grounds 1 and 4:
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` Independent Claim 241 A.
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`23. The limitations of claim 241 have been parsed and given unique
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`numerical identifiers:
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`U.S. Patent No. 7,237,634
`[241.0] A method for controlling a hybrid vehicle, comprising:
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`[241.1] determining instantaneous road load (RL) required to propel the hybrid vehicle
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`responsive to an operator command;
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`[241.2] operating at least one electric motor to propel the hybrid vehicle when the RL required to
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`do so is less than a setpoint (SP);
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`[241.3][a] operating an internal combustion engine of the hybrid vehicle to propel the hybrid
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`vehicle when the RL required to do so is between the SP and a maximum torque output (MTO)
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`of the engine, [b] wherein the engine is operable to efficiently produce torque above the SP, and
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`[c] wherein the SP is substantially less than the MTO; and
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`[241.4] operating both the at least one electric motor and the engine to propel the hybrid vehicle
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`when the torque RL required to do so is more than the MTO;
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`[241.5] controlling said engine such that combustion of fuel within the engine occurs
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`substantially at a stoichiometric ratio, wherein said controlling the engine comprises limiting a
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`rate of change of torque output of the engine; and
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`[241.6] if the engine is incapable of supplying instantaneous torque required to propel the hybrid
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`vehicle, supplying additional torque from the at least one electric motor.
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`Anderson discloses “using the electric motor to provide
`additional torque when the rate of increase of engine output
`torque is limited”
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`24. Paice argues that “the full context of claim 241 makes clear that
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`controlling the rate of change of engine output torque to maintain stoichiometry
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`and supplying supplemental torque from the motor [limitations 241.5 and 241.6]
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`are performed together.” (POR at 46, Hn Decl., Ex. 2308, ¶141.)
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`25. However, the context of claim 241 does not make clear that
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`limitations [241.5] and [241.6] are performed together, because the two limitations
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`are separated by a semi-colon followed by the word “and” and formatted with a
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`carriage return and line feed:
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`[241.5] controlling said engine such that combustion of fuel within the
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`engine occurs substantially at a stoichiometric ratio, wherein said
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`controlling the engine comprises limiting a rate of change of torque
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`output of the engine; and
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`[241.6] if the engine is incapable of supplying instantaneous torque
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`required to propel the hybrid vehicle, supplying additional torque
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`from the at least one electric motor.
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`(Emphasis added.)
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`26. Regardless, my analysis of claim [241.6] included an explanation that
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`“Anderson discloses supplementing engine output torque with motor torque during
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`transient conditions: . . ‘Some of this effect can be reduced using a hybrid strategy
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`that only allows slow transients, but this places greater strain on the LLD
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`[battery].’” (Stein, Ex. 1352, ¶216, citing Anderson Ex. 1355 at 10, 11.) And that
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`“