Paper 31
`Entered: October 21, 2016
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00785
`Patent 7,237,634 B2
`____________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`Entered: October 21, 2016
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00785
`Patent 7,237,634 B2
`____________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2015-00785
`Patent 7,237,634 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Ford Motor Company (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`for inter partes review of U.S. Patent No. 7,237,634 B2 (Ex. 1351, “the ’634
`patent”). Paper 1. The Petition challenges the patentability of claims 80, 91,
`92, 97, 99, 107, 108, 110, 112, 114, 125, 126, 130, 132, 140, 141, 143, 145,
`241, 252–254, 256–263, and 265 of the ’634 patent. In an Initial Decision,
`we instituted inter partes review of each of these claims, except for claims
`99 and 132. Paper 13 (“Dec. Inst.”).
`Paice LLC and The Abell Foundation, Inc. (“Patent Owner”) filed a
`Patent Owner Response (Paper 15, “PO Resp.”), and Petitioner filed a Reply
`(Paper 19, “Reply”).1 Oral hearing was held on June 29, 2016. A transcript
`of the oral hearing is included in the record. Paper 30 (“Tr.”). Neither party
`filed a motion to exclude evidence.
`
`For reasons discussed below, we (1) dismiss Petitioner’s challenge of
`claims 80 and 114, and (2) determine that Petitioner has shown by a
`preponderance of the evidence that each of claims 91, 92, 97, 107, 108, 110,
`112, 125, 126, 130, 140, 141, 143, 145, 241, 252–254, 256–263, and 265 is
`unpatentable.
`
`
`
`
`
`
`1 In addition, Patent Owner filed a Motion for Observation on Cross-
`Examination (Paper 23) and Petitioner filed a Response to Motion for
`Observation on Cross-Examination (Paper 26), both of which have been
`considered.
`
`2
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`IPR2015-00785
`Patent 7,237,634 B2
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`Related Matters
`B.
`Petitioner and Patent Owner collectively identify the following civil
`
`actions in which the ’634 patent has been asserted: (1) Paice LLC et al. v.
`Ford Motor Company, Case No. 1-14-cv-00492 (D. Md.); (2) Paice LLC et
`al. v. Hyundai Motor America, et al., Case No. 1:2012-cv-00499 (D. Md.).
`Pet. 2, Paper 5, 2–3. The ’634 patent also is the patent involved in the
`following inter partes review proceedings: IPR2014-00904, IPR2014-
`01416, IPR2015-00606, IPR2015-00722, IPR2015-00758, IPR2015-00784,
`IPR2015-00787, IPR2015-00790, IPR2015-00791, IPR2015-00799,
`IPR2015-00800, and IPR2015-00801.
`
`The ’634 Patent
`C.
`The ’634 patent describes a hybrid vehicle with an internal
`
`combustion engine, at least one electric motor, and a battery bank, all
`controlled by a microprocessor that directs torque transfer between the
`engine, the motor, and the drive wheels of the vehicle. Ex. 1351, 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
`
`3
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`IPR2015-00785
`Patent 7,237,634 B2
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`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.
`Independent claims 80 and 241 are illustrative and are reproduced
`below:
`80. A method for controlling a hybrid vehicle, comprising:
`determining instantaneous road load (RL) required to propel the
`hybrid vehicle responsive to an operator command;
`monitoring the RL over time;
`operating at least one electric motor to propel the hybrid vehicle
`when the RL required to do so is less than a setpoint (SP);
`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 maximum torque output (MTO) of the
`engine, wherein the engine is operable to efficiently produce
`torque above the SP, and wherein the SP is substantially less
`than the MTO; and
`wherein said operating the internal combustion engine to propel
`the hybrid vehicle is performed when: the RL>the SP for at
`least a predetermined time; or the RL>a second setpoint
`(SP2), wherein the SP2 is a larger percentage of the MTO
`than the SP; and
`operating both the at least one electric motor and the engine to
`propel the hybrid vehicle when the torque RL required to do
`so is more than the MTO.
`Id. at 65:11–33.
`
`
`
`
`
`
`4
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`241. A method for controlling a hybrid vehicle, comprising:
`determining instantaneous road load (RL) required to propel the
`hybrid vehicle responsive to an operator command;
`operating at least one electric motor to propel the hybrid vehicle
`when the RL required to do so is less than a setpoint (SP);
`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 maximum torque output (MTO) of the
`engine, wherein the engine is operable to efficiently produce
`torque above the SP, and wherein the SP is substantially less
`than the MTO; and
`operating both the at least one electric motor and the engine to
`propel the hybrid vehicle when the torque RL required to do
`so is more than the MTO;
`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
`if the engine is incapable of supplying instantaneous torque
`required to propel the hybrid vehicle, supplying additional
`torque from the at least one electric motor.
`Id. at 81:33–58.
`
`D.
`
`Evidence Relied Upon
`
`Prior Art References
`
`Date
`
`Exhibit
`
`Severinsky ’970 U.S. Pat. No. 5,343,970
`
`Sept. 6, 1994 Ex. 1354
`
`Lateur
`
`U.S. Pat. No. 5,823,280
`
`Oct. 20,
`1998
`
`Ex. 1356
`
`Frank
`
`
`U.S. Pat. No. 5,842,534
`
`Dec. 1, 1998 Ex. 1357
`
`5
`
`
`
`Date
`
`Exhibit
`
`1995
`
`Ex. 1355
`
`IPR2015-00785
`Patent 7,237,634 B2
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`
`
`Prior Art References
`
`Anderson
`
`Catherine Anderson & Erin
`Pettit, The Effects of APU
`Characteristics on the
`Design of Hybrid Control
`Strategies for Hybrid
`Electric Vehicles, DESIGN
`INNOVATIONS IN ELECTRIC
`AND HYBRID ELECTRIC
`VEHICLES, (SP-1089),
`Society of Automotive
`Engineers, Inc. 1995.
`
`
`
`Petitioner also relies on the declarations of Jeffrey L. Stein,
`Ph.D. Ex. 1352 (“first declaration”), Ex. 1384 (“reply declaration”).
`
`E.
`
`The Asserted Grounds of Unpatentability
`
`References
`Severinsky ’970 and
`Anderson
`
`Severinsky ’970,
`Anderson, and Lateur
`
`Severinsky ’970 and
`Frank
`
`Severinsky ’970, Frank,
`and Anderson
`
`Basis
`
`§ 103(a)
`
`Claims Challenged
`241, 252–254, 256, 258,
`259, 263, and 265
`
`§ 103(a)
`
`257 and 260–262
`
`§ 103(a)
`
`80, 91, 92, 112, 114, 125,
`126, and 145
`
`§ 103(a)
`
`110 and 143
`
`6
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`Patent 7,237,634 B2
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`
`References
`Severinsky ’970, Frank,
`and Lateur
`
`Basis
`
`§ 103(a)
`
`Claims Challenged
`97, 107, 108, 130, 140, and
`141
`
`
`
`II. ANALYSIS
`
`Claim Construction
`A.
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Even
`under the rule of broadest reasonable interpretation, claim terms generally
`also 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. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Only terms which are in controversy need to be construed, and only
`to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`If an inventor acts as his or her own lexicographer, the definition must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998). It is improper to add an extraneous limitation into a
`claim, i.e., one that is added wholly apart from any need for the addition to
`accord meaning to a claim term. See, e.g., Hoganas AB v. Dresser Indus.,
`Inc., 9 F.3d 948, 950 (Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v.
`Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`7
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`
`“road load (RL)”
`The term “road load” or “RL” is recited in each of independent claims
`
`80, 114, and 241. The Specification 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 bank.”
`Ex. 1351, 12:44–61. Accordingly, we construe “road load” and “RL” as
`“the amount of instantaneous torque required to propel the vehicle, be it
`positive or negative.” This construction is the same as that proposed by
`Petitioner. Pet. 9. Patent Owner does not propose a different construction.
`“setpoint (SP)”
`The term “setpoint” or “SP” is recited in each of independent claims
`
`80, 114, and 241. Petitioner proposes that “setpoint” or “SP” be construed,
`in the context of these claims, as “predetermined torque value.” Pet. 10. 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. Pet. 9–
`10. Each of claims 80, 114, and 241 recites a condition “when the RL
`required to do so is less than a setpoint (SP).” Ex. 1351, 65:16–18, 68:40–
`42, 81:38–40. Each of claims 80, 114, and 241 further defines a range
`established by the setpoint at one end, and the maximum torque output of the
`engine at the other end, by the language “when the RL required to do so is
`between the SP and a maximum torque output (MTO) of the engine.” Id. at
`65:20–22, 68:47–49, 81:41–44.
`
`8
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`Nothing in the Specification precludes a setpoint from being reset,
`
`after it has been set. A setpoint for however short a period of time still is a
`setpoint. Accordingly, we construe “setpoint” and “SP” as “predetermined
`torque value that may or may not be reset.”
`
`Patent Owner argues that the claims and the Specification of the ’634
`patent “make clear that a SP is not simply a numerical value divorced from
`the context of the rest of the control system,” and that “‘setpoint’ serves the
`crucial function of marking the transition from one mode to another, and in
`particular, the transition from propelling the vehicle with the motor to
`propelling the vehicle with the engine.” PO Resp. 5. The argument is
`misplaced. Although such use of a setpoint is described by other language
`in the Specification, it is not an intrinsic property of a setpoint and is not a
`necessary and required use of all setpoints. In that regard, we further note
`the following passage in the Specification of the ’634 patent, which supports
`not reading in a mode switching requirement into the term “setpoint”:
`the values of the sensed parameters in response to which the
`operating mode is selected may vary . . . , so that the operating
`mode is not repetitively switched simply because one of the
`sensed parameters fluctuates around a defined setpoint.
`Ex. 1351, 19:67–20:6 (emphasis added).
`It is improper to add an extraneous limitation into a claim, i.e., one
`that is added wholly apart from any need for the addition to accord meaning
`to a claim term. See, e.g., Hoganas AB, 9 F.3d at 950; E.I. du Pont de
`Nemours, 849 F.2d at 1433. It is important not to import into a claim
`limitations that are not a part of the claim. SuperGuide Corp. v. DirecTV
`
`9
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`Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). For example, a particular
`embodiment appearing in the written description may not be read into a
`claim when the claim language is broader than the embodiment. Id.; see
`also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). That is no
`different even if the patent specification describes only a single embodiment.
`Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906 (Fed. Cir. 2004).
`Patent Owner urges that “setpoint” should be construed as “a definite,
`but potentially variable value at which a transition between operating modes
`may occur.” PO Resp. 4. We note that that construction also does not
`require that an operating mode be changed at a setpoint, as Patent Owner
`urges. Instead, the construction sets forth that a transition between operating
`modes “may occur” at a setpoint, which is consistent with our construction.
`Patent Owner additionally argues that “setpoint” should not be limited
`to a torque value, because the Specification makes clear that it also can be
`the state of charge of a battery. PO. Resp. 6–7. Patent Owner cites to the
`following passage in the Specification:
`[T]he microprocessor tests sensed and calculated values for
`system variables, such as the vehicle’s instantaneous torque
`requirement, i.e., the “road load” RL, the engine’s instantaneous
`torque output ITO, both being expressed as a percentage of the
`engine’s maximum torque output MTO, and the state of charge
`of the battery bank BSC, expressed as a percentage of its full
`charge, against setpoints, and uses
`the results of
`the
`comparisons to control the mode of vehicle operation.
`Id. at 7 (citing Ex. 1351, 40:18–26 (emphasis added by Patent
`Owner)). The argument also is misplaced. As we noted above, each
`independent claim 80, 114, and 241 requires a comparison of the
`10
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`IPR2015-00785
`Patent 7,237,634 B2
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`setpoint either to an engine torque value or a torque based “road load”
`value. Thus, in the context of these claims, and claims dependent
`therefrom, a setpoint must be a torque value, and not some state of
`charge of a battery.
`
`For reasons discussed above, we construe “setpoint” and “SP”
`as “predetermined torque value that may or may not be reset.”
`“mode I,”
`“low-load operation mode I,”
`“high-way cruising operation mode IV,”
`“acceleration operation mode V”
`Claim 259 depends from independent claim 241. Claim 259 recites
`
`limitations referring to “low-load operation mode I,” “high-way cruising
`operation mode IV,” and “acceleration operation mode V.” Claim 260
`depends from claim 241 and recites a limitation referring to “mode I.” The
`Specification of the ’634 patent does set 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. 1351, 35:63–36:1 (emphasis added).
`
`Petitioner proposes a construction for “mode I” that disregards the “all
`torque” requirement quoted above. Pet. 11. Patent Owner does not propose
`a construction. We construe “mode I,” in accordance with the above-quoted
`description in the Specification, as “a mode of operation of the vehicle, in
`
`11
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`which all torque provided to the wheels are supplied by an electric motor.”
`We construe “low-load operation mode I” and “operating mode I,” the same
`as we do “mode I,” because it is evident that “low-load operation mode I”
`and “operating mode I” are each just another name for “mode I.”
`
`With regard to “high-way cruising operation mode IV,” the
`Specification states:
`When the operator releases pressure on the accelerator pedal,
`indicating that a desired cruising speed has been reached, traction
`motor 25 is accordingly depowered. The highway cruising mode
`is referred to as “mode IV” operation, and the flow of energy and
`torque are as illustrated in FIG. 8(c).
`
`Ex. 1351, 36:31–36. Figure 8(c) shows that all power to the wheels are
`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. 11. Patent Owner does not propose a construction. We
`construe “high-way cruising mode IV” as “a mode of operation in which all
`torque provided to the wheels are supplied by the internal combustion
`engine.”
`
`With regard to “acceleration operation 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
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`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. 1351, 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.
`
`Id. at 38:1–8. Patent Owner does not propose a construction. We construe
`“acceleration operation 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.”
`That the Claims Require a Comparison
`of Road Load (RL) to Setpoint (SP) and to MTO
`Patent Owner asserts that the challenged claims require a comparison
`of road load (RL) to setpoint (SP) and also to maximum torque output
`(MTO). PO Resp. 7–9. The assertion is based on the requirements in claim
`80 of (1) “operating at least one electric motor to propel the hybrid vehicle
`when the RL required to do so is less than a setpoint (SP),” (2) “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 maximum torque
`output (MTO) of the engine,” and (3) “operating both the at least one
`electric motor and the engine to propel the hybrid vehicle when the torque
`
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`RL required to do so is more than the MTO, and essentially the same
`recitations in claims 114 and 241.
`In the above discussion of the construction of setpoint, we already
`noted that claims 80, 114, and 241 each require a comparison of road load to
`a setpoint because of the claim recitations “when the RL required to do so is
`less than a setpoint (SP)” and “when the RL required to do so is between the
`SP and a maximum torque output (MTO) of the engine.” For similar reason,
`claims 80, 114, and 241 each require a comparison of road load to a
`maximum torque output (PTO) because of the recitation “when the torque
`RL required to do so is more than the MTO.” Petitioner has not advanced
`any cogent reasoning why no such comparison is required by the claims.
`We determine that the claims require a comparison of road load (RL) to a
`setpoint (SP) and also to a maximum torque output (MTO). That, however,
`does not mean the claims exclude the comparison of other parameters.
`“abnormal and transient conditions”
`Claim 145 depends from independent claim 114, and claim 265
`
`depends from independent claim 241. Relative to each’s base independent
`claim, each of claims 145 and 265 additionally requires: “operating the
`engine at torque output levels less than the SP under abnormal and transient
`conditions to satisfy drivability and/or safety considerations.” Ex. 1351,
`71:43–46, 83:51–54. The term “abnormal and transient conditions” is not
`defined or described in any particularity in the Specification.
`
` Petitioner asserts that the term “abnormal and transient conditions” is
`defined in the parent application of the ’634 patent, i.e., Application
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`10/382,577, which issued as U.S. Patent No. 7,104,347 B2 (“the ’347
`patent”). Pet. 11. The source of the alleged definition is claim 22 of the
`’347 patent, which reads, in pertinent part: “said [abnormal and transient
`conditions] comprising starting and stopping of the engine and provision of
`torque to satisfy drivability or safety considerations.” Ex. 1364, 60:17–21.
`The quoted claim language from the ’347 patent does not present a
`definition but merely identifies open-ended examples of “abnormal and
`transient conditions,” i.e., (1) starting and stopping of the engine, and (2)
`provision of torque to satisfy drivability or safety considerations. Moreover,
`it is unclear what is abnormal or transient about “provision of torque to
`satisfy drivability or safety considerations.”
`
`Patent Owner urges that the Board make clear that “abnormal and
`transient conditions” does not include “city traffic and reverse operation.”
`PO Resp. 9–10. Patent Owner notes that it had made that distinction in the
`prosecution history of a related patent, i.e., U.S. Patent No. 8,214,097 B2
`(Ex. 2301, 238). Id. It is, however, unsupported to exclude operation in city
`traffic and reverse operation in their entirety including any abnormal and
`transient condition which may occur within them. It is also uncertain
`precisely what constitutes city traffic. More importantly, in the prosecution
`history of U.S. Patent No. 8,214,097 B2 that has been cited by Patent
`Owner, there is language clearly including starting the engine as an
`abnormal and transient condition: “The ‘abnormal and transient conditions’
`referred to are such conditions as starting the engine, during which operation
`it must necessarily be operated at less than SP for a short time.” Ex. 2301,
`
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`238. Thus, there has been no disavowal, whatsoever, by Patent Owner of
`starting the engine as an abnormal and transient condition, let alone a clear
`and unmistakable disavowal that is required to narrow the claim scope by
`prosecution history. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314,
`1325–26 (Fed. Cir. 2003) (“Consequently, for prosecution disclaimer to
`attach, our precedent requires that the alleged disavowing actions or
`statements made during prosecution be both clear and unmistakable.”).
`
`For the foregoing reasons, we are unpersuaded by the above-noted
`contentions of either Petitioner or Patent Owner. Nevertheless, it is not
`necessary that we expressly construe “abnormal and transient conditions”
`beyond determining that examples of such conditions include starting and
`stopping of the engine. In the context of the Specification of the ’634 patent,
`we regard both starting the engine and stopping the engine as an “abnormal
`and transient condition.”
`
`B.
`
`Level of Ordinary Skill in the Art
`Patent Owner does not explicitly take a position on the level of
`ordinary skill in the art. Neither does Petitioner in the Petition itself, except
`to say that “[t]he level of ordinary skill in the art is evidenced by the
`references.” Pet. 4. Petitioner’s expert, Dr. Stein, expresses a certain
`required level of technical education and experience for one with ordinary
`skill in the art. Ex. 1352 ¶ 42. We determine that no express finding on a
`specific corresponding level of technical education and experience is
`necessary, and that 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.
`
`16
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`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. Differences Between the Claimed Invention and Prior Art
`Patent Owner asserts that Petitioner has not adequately identified
`differences between the claimed invention and the prior art, and that it is
`unclear from the Petition whether, for certain claim elements, Petitioner is
`saying that Severinsky ’970 discloses the claim element or simply renders
`obvious the claim element. PO Resp. 10–12. In that regard, Patent Owner
`refers to claim 241 as an example. Id. We are unpersuaded by Patent
`Owner’s contention. Petitioner’s identification in its claim charts of a
`disclosure from a prior art reference in a corresponding location opposite a
`reproduced claim limitation is a representation that that disclosure meets the
`associated claim limitation.
`
`Patent Owner takes issue with the meaning of Petitioner’s statements
`expressing that one with ordinary skill in the art “would have understood”
`the prior art’s disclosure in a certain way. Id. at 11–12. According to Patent
`Owner, such statements are confusing because Patent Owner does not know
`whether the statement is based on principles of anticipation or obviousness.
`Id. at 12. We disagree. There is no requirement that the prior art must use
`the same words as those of a claim element in order to be deemed as
`teaching or disclosing that claim element. Identity of terminology is not
`required, for a claim element to be met directly by the prior art, without
`resort to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Even in a non-
`
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`obviousness setting, it is proper to take into account not only the literal and
`specific teachings of the reference, but also the inferences which one skilled
`in the art would reasonably be expected to draw therefrom. In re Preda,
`401 F.2d 825, 826 (CCPA 1968). Petitioner’s assertions regarding what one
`with ordinary skill in the art “would have understood” conveys the
`understanding of one with ordinary skill in the art with respect to what is
`disclosed by the prior art, not what would have been obvious over the prior
`art. Prior art references must be “considered together with the knowledge of
`one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
`
`D. Claims 241, 252–254, 256, 258, 259, 263, and 265
`as Obvious over Severinsky ’970 and Anderson
`We have reviewed the arguments and evidence presented by
`
`Petitioner, and determine that, notwithstanding the arguments of Patent
`Owner, which we discuss below, Petitioner has established, by a
`preponderance of the evidence, that the subject matter of claims 241, 252–
`254, 256, 258, 259, 263, and 265 would have been obvious over the
`combined teachings of Severinsky ’970 and Anderson and thus the claims
`are unpatentable.
`Severinsky ’970 describes a hybrid vehicle that operates in a plurality
`of modes, including: (1) a low-speed, electric motor mode in which
`“inefficiency and pollution” of the engine is eliminated (e.g., city driving);
`(2) a high-speed, engine mode in which the engine operates “near maximum
`efficiency” (e.g., highway cruising); (3) a hybrid mode in which both the
`engine and the electric motor power the vehicle when road load exceeds
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`maximum torque output of the engine (e.g., accelerating or hill climbing);
`and (4) a battery charging mode in which the engine operates a generator to
`recharge the battery (e.g., braking or coasting). Ex. 1354, 6:26–48, 7:8–26.
`
`Severinsky ’970 describes:
`
`A microprocessor receives control inputs from the driver
`of the vehicle and monitors the performance of the electric motor
`and the internal combustion engine, the state of charge of the
`battery, and other significant variables. The microprocessor
`determines whether the internal combustion engine or the
`electric motor or both should provide torque to the wheels under
`various monitored operating conditions.
`
`Id. at 6:19–23 (emphasis added). Severinsky ’970 further describes:
`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.
`
`Id. at 7:8–16 (emphasis added).
`
`Severinsky’970 discloses that to maximize efficiency, it uses a
`
`controller that operates the engine “only in the near vicinity of its most
`efficient operational point, that is, such that it produces 60-90% of its
`maximum torque whenever operated.” Id. at 20:63–67 (emphasis added).
`According to Severinsky ’970, that alone will yield improvement in fuel
`economy on the order of 200–300%. Id. at 20:67–68.
`
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`
`Claim 241
`1.
`In what Petitioner regards as limitation [241.0], claim 241 recites: “A
`method for controlling a hybrid vehicle, comprising.” For that recitation,
`Petitioner cites to Severinsky ’970 which is titled “Hybrid Electric Vehicle”
`and which claims a “method of operating a hybrid vehicle” in its claim 15.
`Pet. 13. Petitioner also cites to declaration paragraphs 124–128 of the first
`declaration of Dr. Stein (Ex. 1352). Id. We find that this limitation is
`disclosed by Severinsky ’970.
`In what Petitioner regards as limitation [241.1], claim 241 recites:
`“determining instantaneous road load (RL) required to propel the hybrid
`vehicle responsive to an operator command.” For that recitation, Petitioner
`cites (Pet. 13) to the following text of Severinsky ’970 as well as declaration
`paragraphs 129–147 of the first declaration of Dr. Stein (Ex. 1352): “[A]t all
`times the microprocessor 48 may determine the load (if any) to be provided
`to the engine by the motor, responsive to the load imposed by the
`vehicle’s propulsion requirements, so that the engine 40 can be operated in
`its most fuel efficient operating range.” Pet. 13 (citing Ex. 1354, 17:11–15)
`(emphases added). Petitioner explains:
`Severinsky ’970 discloses a microprocessor 48 that
`“responds to operator commands” and controls engine 40 and
`motor 20 “to ensure that appropriate torque is delivered to the
`wheels 34 of the vehicle.” (Severinsky ’970, Ex. 1354, 14:15–
`18, 12:60–13:2; Stein, Ex. 1352, ¶¶ 133–135, see also ¶ 142.)
`The microprocessor can “ensure that appropriate torque is
`delivered to the wheels 34 of the vehicle” only by determining
`the torque required at that time, i.e., the “instantaneous road
`load (RL).” (Stein, Ex. 1352, ¶¶ 133–136.) While Severinsky
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`’970 may not use the term “road load,” a POSA would have
`understood that Severinsky ’970 teaches determining the
`instantaneous torque required to propel the vehicle because it
`ensures delivering the appropriate torque to the wheels. (Id.)
`Pet. 13–14. Petitioner further explains the different operating modes for a
`hybrid vehicle as is disclosed by Severinsky ’970. Id. at 14. We are
`persuaded, notwithstanding the arguments of Patent Owner which we
`address below, that limitation [241.1] is
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