`Entered: October 26, 2015
`
`
`
`
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-00785
`Patent 7,237,634 B2
`
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Petitioner filed a Petition (“Pet.”) for inter partes review of U.S.
`
`Patent No. 7,237,634 B2 (“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 under 35 U.S.C. § 103. Patent Owner filed a Preliminary Response
`(“Prelim. Resp.”).1 After considering the Petition and Preliminary
`Response, we are persuaded, under 35 U.S.C. § 314(a), that Petitioner has
`demonstrated a reasonable likelihood that claims 80, 91, 92, 97, 107, 108,
`110, 112, 114, 125, 126, 130, 140, 141, 143, 145, 241, 252–254, 256–263,
`and 265 are unpatentable. Pursuant to our authority under 37 C.F.R.
`§ 42.4(a), we institute an inter partes review of claims 80, 91, 92, 97, 107,
`108, 110, 112, 114, 125, 126, 130, 140, 141, 143, 145, 241, 252–254, 256–
`263, and 265.
`
`Claims 99 and 132, however, have been challenged by Petitioner on
`the same ground of unpatentability in IPR2014-01416, in which trial already
`was instituted on March 12, 2015. We decline to consider claims 99 and
`132 in this proceeding.
`
`
`
`
`
`1 A confidential version was filed as Paper 9, subject to a Motion to Seal
`(Paper 11), and a public redacted version was filed as Paper 10.
`
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`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 Number 1-14-cv-00492 (D. Md.); (2) Paice
`LLC et al. v. Hyundai Motor America, et al., Case Number 1-12-cv-00499
`(D. Md.). Papers 1, 5. 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.
`C.
`The ’634 Patent
`
`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
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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.
`Of the challenged claims, claims 80, 114, and 241 are independent,
`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.
`114. 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;
`
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`operating at least one electric motor to propel the hybrid vehicle
`when the RL required to do so is less than a setpoint (SP);
`wherein said operating the at least one electric motor to propel
`the hybrid vehicle is performed when the RL<the SP for at
`least a predetermined amount of time;
`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.
`Id. at 68:34–55.
`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
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`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
`
`Frank
`
`Anderson
`
`U.S. Pat. No. 5,823,280
`
`Oct. 20, 1998
`
`Ex. 1356
`
`U.S. Pat. No. 5,842,534
`
`Dec. 1, 1998
`
`Ex. 1357
`
`1995
`
`Ex. 1355
`
`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 Declaration of Dr. Jeffrey L. Stein.
`
`Ex. 1352.
`
`
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`E.
`
`
`The Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`References
`Basis
`Claims Challenged
`Severinsky ’970 and
`241, 252–254, 256, 258,
`Anderson
`259, 263, and 265
`
`§ 103(a)
`
`Severinsky ’970,
`Anderson, and Lateur
`
`Severinsky ’970 and
`Frank
`
`Severinsky ’970, Frank,
`and Anderson
`
`Severinsky ’970, Frank,
`and Lateur
`
`§ 103(a)
`
`257 and 260–262
`
`§ 103(a)
`
`80, 91, 92, 99, 112, 114,
`125, 126, 132, and 145
`
`§ 103(a)
`
`110 and 143
`
`97, 107, 108, 130, 140, and
`141
`
`§ 103(a)
`
`
`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); In
`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).
`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
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`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). If a feature is not necessary to give meaning to what
`the inventor means by a claim term, it would be “extraneous” and should not
`be read into the claim. 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).
`“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.” Ex. 1351,
`12:42–61. 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,
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`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. Id.
`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, 65:17–18, 68:41–42, 81:39–
`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, 81:42–44. Thus, although Patent Owner correctly notes that the
`Specification outside of the claims refers to two items being measurable
`against respective setpoints, i.e., the vehicle’s instantaneous torque
`requirement and the state of charge of the battery bank (Prelim. Resp. 12–
`13), the setpoint in these claims relates to torque and not battery charge.
`
`Patent Owner asserts that “setpoint” or “SP” is not simply a numerical
`value divorced from the context of the rest of the vehicle’s control system,
`and that a “setpoint” serves the crucial function of marking the transition
`from one claimed mode to another, and in particular, the transition from
`propelling the vehicle with the motor to propelling the vehicle with the
`engine. Prelim. Resp. 9. Citing the Specification, Patent Owner further
`states that the Specification uses “setpoint” synonymously with “transition
`point.” Id. at 10. Accordingly, Patent Owner urges that the construction of
`“setpoint” or “SP” must include an indication that it is a point at which a
`transition between different operating modes may occur. Id. at 11.
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`Patent Owner’s arguments are misplaced. The Specification outside
`
`of the claims sometimes uses “setpoint” interchangeably with “transition
`point,” because the disclosure describes the particular transitions between
`operative modes, at the setpoints. If the multiple transitions between modes
`are not described, it would be without meaning to refer to a “setpoint” as a
`transition point between modes. A transition does not spring solely from the
`term “setpoint” or “SP.” It would be improper to read into a claim all of the
`disclosed operational modes and all disclosed transitions between modes
`simply because the claim recites the “setpoint” or “SP.”
`
`Patent Owner does not urge that “setpoint” or “SP” requires any
`particular transition from mode to mode. Instead, Patent Owner merely
`desires to add that a “setpoint” is where a transition between operating
`modes “may occur.” Id. Nothing of significance is added by that proposed
`construction. If a transition is specified by other limitations in the claim, at
`the setpoint, then a transition is required at the setpoint. If no transition is
`specified by other limitations in the claim, then no transition is required at a
`setpoint. Thus, it already is the case that a transition may or may not occur
`at a setpoint, depending on what else is recited in the claim. It is not
`necessary to include such “may occur” language in the construction of
`“setpoint” and “SP.” A multitude of events “may occur” at a setpoint, but
`they are not necessary for setting forth the meaning of setpoint” or “SP” in a
`claim. The rest of the claim sets forth what is required to occur at a setpoint.
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`Nevertheless, we do regard as meaningful to note that nothing in the
`
`Specification precludes a setpoint from being reset, after it has been set. A
`setpoint for however short a period of time still is a setpoint.
`
`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 99 depends from independent claim 80. Clam 132 depends
`
`from independent claim 114. Claim 259 depends from independent claim
`241. Each of claims 99, 132, and 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.” None of claims 99, 132, 259, and
`260 itself defines the meaning of any “mode” recited therein. However, 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. We construe “mode I,” in
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`accordance with the above-quoted description in the Specification, as “a
`mode of operation of the vehicle, in which all torque provided to the wheels
`is supplied by an electric motor.” We construe “low-load operation mode I”
`the same as we do “mode I,” because it is evident that “low-load operation
`mode I” is 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 the 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. We construe “high-way cruising mode” as “a mode of
`operation in which all torque provided to the wheels is supplied by the
`internal combustion engine.”
`
`With regard to “acceleration 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
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`battery bank 22 to traction motor 25, and possibly also to
`starting motor 21; torque flows from either or both motors and
`engine to wheels 34.
`
`Ex. 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. 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.”
`“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.” Id. at 71:43–
`46, 83:52–54. 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
`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
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`’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 asserts that Petitioner’s open-ended construction causes
`confusion, and urges that the Board make clear that “abnormal and transient
`conditions” does not include “city traffic and reverse operation.” Prelim.
`Resp. 13–15. 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). Prelim. Resp. 14–15. It appears, however, unsupported to
`exclude operation in city traffic and reverse operation in their entirety
`including any abnormal and transient conditions which may occur within
`them. It is also uncertain just precisely what constitutes city traffic.
`
`For the foregoing reasons, we are unpersuaded by either the
`contention of Petitioner or that of Patent Owner. Nevertheless, it is not
`necessary that we expressly construe “abnormal and transient conditions”
`beyond determining merely that examples of such conditions include starting
`the engine and stopping the engine. In the context of the Specification of the
`’634 patent, we regard both starting the engine and stopping the engine as an
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`abnormal and transient condition, as compared to the other disclosed
`conditions of operating the engine, as disclosed in the Specification.
`B.
`Claims 241, 252, 253, 254, 256, 258, 259, 263, and 265
`
`as Obvious over Severinsky ’970 and Anderson
`
`Petitioner asserts that claims 241, 252, 253, 254, 256, 258, 259, 263,
`and 265 are unpatentable, under 35 U.S.C. § 103, as obvious over
`Severinsky ’970 and Anderson. Pet. 12–40. Claim 241 is independent and
`the rest of these claims depend, directly or indirectly, from claim 241. With
`respect to claim 241, Petitioner relies on Severinsky ’970 as describing all
`limitations except for what is labeled as limitation [241.5] in the Petition:
`“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.”
`For limitation [241.5], Petitioner relies on Anderson. Pet. 25–26.
`
`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
`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.
`
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`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.
`
`Claim 241 recites: “determining instantaneous road load (RL)
`required to propel the hybrid vehicle responsive to an operator command.”
`We are sufficiently persuaded by Petitioner that that step takes place in
`
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`Severinsky ’970 even though Severinsky ’970 does not use identical
`language to describe the same.
`
`For instance, Severinsky ’970 describes that microprocessor 48 is
`provided with all information relevant to the performance of the system, and
`appropriately controls torque transfer unit 28, internal combustion engine 40,
`and electric motor 20 “to ensure that appropriate torque is delivered to the
`wheels 34 of the vehicle.” Id. at 12:64–13:2 (emphasis added). Severinsky
`’970 also describes that microprocessor 48 monitors the operator’s inputs
`and the vehicle’s performance, and activates electric motor 20 when torque
`in excess of the capabilities of engine 40 is required. Ex. 1354, 14:15–18.
`
`Throughout its disclosure, Severinsky ’970 describes having the
`vehicle in various modes of operation depending on the magnitude of the
`torque required to drive the vehicle. In one mode, electric motor 20 provides
`“all of the torque needed to move the vehicle.” Id. 10:66–68. In another
`mode, the internal combustion engine and electric motor together provide
`“all torque required to drive the vehicle.” Id. at 13:66–68. In still another
`mode, the microprocessor activates electric motor 20 when torque in excess
`of the capability of engine 40 is required. Id. at 14:15–18.
`
`Petitioner’s technical witness, Dr. Stein, testifies that one with
`ordinary skill in the art would have understood Severinsky ’970 as
`disclosing that microprocessor 48 determines the torque required to propel
`the vehicle based on operator’s inputs and vehicle performance, and then
`compares the torque required to the engine’s capabilities before activating
`electric motor 20, if the required torque is beyond the maximum torque
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`output of the engine. Ex. 1352 ¶ 134. Dr. Stein also testifies that one with
`ordinary skill in the art would have understood Severinsky ’970 as
`disclosing that microprocessor 48 monitors the instantaneous torque required
`to propel the vehicle so that motor 20 can be controlled to supply additional
`torque. Id. at ¶ 136.
`
`Claim 241 recites in what Petitioner identifies (Pet. 16) as limitation
`[241.2] the step of “operating at least one electric motor to propel the hybrid
`vehicle when the RL required to do so is less than a setpoint (SP),” and in
`what Petitioner identifies (Pet. 16) as limitation [241.3] the step of
`“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.” We are sufficiently persuaded by
`Petitioner that those two steps take place in Severinsky ’970 even though
`Severinsky ’970 does not use identical language to describe the same.
`
`Severinsky ’970 states: “[t]he internal combustion engine is run 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.” Ex. 1354,
`20:63–67. Severinsky ’970 also states that when the engine can be used
`efficiently, it is so employed, and that under other circumstances, the electric
`motor alone drives the vehicle. Id. at 7:11–16.
`
`Dr. Stein explains that in Severinsky ’970, because the engine is not
`operated below 60% of MTO (maximum torque output of the engine), 60%
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`MTO is a “setpoint” at or above which the engine is operated to propel the
`vehicle, and that when road load is between this setpoint and the MTO, e.g.,
`75% MTO, the engine alone produces the required torque. Ex. 1352 ¶¶ 154–
`156. Dr. Stein also explains that the 60% MTO referred to in Severinsky is a
`setpoint below which only the electric motor is operated to propel the
`vehicle. Id. In particular, Dr. Stein states that a person of ordinary skill in
`the art would have understood that Severinsky ’970 discloses “a
`predetermined torque value or setpoint” that is 60% of the engine’s
`maximum torque output. Id. ¶ 156. Dr. Stein further explains that the 60%
`of MTO setpoint is substantially less than the MTO, citing claim 15 of the
`’634 patent, which indicates that 70% MTO qualifies as substantially less
`than the MTO. Id. ¶¶ 185–187. Dr. Stein also explains that in the context of
`the ’634 patent, which regards a range of 30-50% of MTO as varying
`substantially, a difference of at least 20% MTO is substantial in the context
`of the ’634 patent. Id. ¶¶ 183–184.
`
`Claim 241 recites in what Petitioner identifies (Pet. 24) as limitation
`[241.4] the step of “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.” As is pointed out by Petitioner (Pet. 24), Severinsky
`’970 describes: “Microprocessor 48 monitors the operator’s inputs and the
`vehicle’s performance, and activates electric motor 20 when torque in excess
`of the capabilities of engine 40 is required” (Ex. 1354, 14:15–18). In that
`connection, the ’634 patent itself states: “Where the road load exceeds the
`engine’s maximum torque for a relatively short period less than T, the
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`traction motor (and possibly also the starting motor) are used to provide
`additional torque, as in the [Severinsky] ’970 patent and above. Ex. 1351,
`44:65–45:2 (emphasis added). Dr. Stein testifies and explains why
`Severinsky ’970 discloses limitation [241.4]. Ex. 1352 ¶¶ 189–194.
`
`For what Petitioner identifies as limitation [241.5], Petitioner relies on
`the disclosure of Anderson (Pet. 25, 26), and for what Petitioner identifies as
`limitation [241.6], Petitioner relies on both the disclosure of Severinsky ’970
`and Anderson (Pet. 27–28). Petitioner’s positions are supported by the
`testimony of Dr. Stein. Ex. 1352 ¶¶ 195–210, 211–218. With respect to
`limitation [241.5], Petitioner articulates reasoning for combining the
`teachings of Severinsky ’970 and Anderson. Pet. ¶¶ 38–40. The articulated
`reasoning is supported by the testimony of Dr. Stein. Ex. 1352 ¶¶ 314–325.
`With regard to limitation [241.6], Petitioner does not need to rely on
`Anderson because Severinsky ’970 teaches the limitation.
`
`Patent Owner argues that Petitioner improperly incorporates
`arguments from Dr. Stein’s Declaration into the Petition, i.e., by citing to
`excessive number of paragraphs of the Declaration without corresponding
`explanation in the Petition. Prelim. Resp. 29. We do not find that to be the
`case with respect to claim 241 and challenged claims depending from claim
`241, at least not to the extent of dismissing a challenge or declining to
`consider certain testimony. There is not a per se rule that all explanations
`must be reproduced in the Petition. A rule of reason applies. Patent Owner
`has not shown that the circumstance here is so egregious that we should not
`consider the testimony relied on by Petitioner in support of the assertion of
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`unpatentability of claim 241 and challenged claims depending from claim
`241. Similarly, with respect to claim 241 and challenged claims depending
`from claim 241, we reject Patent Owner’s contention that the Petition creates
`an overly voluminous record to be considered.
`
`Patent Owner further contends that Petitioner improperly has
`incorporated by reference by, within the Petition, citing and applying other
`