UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`
`U.S. Patent No. 7,237,634 to Severinsky et al.
`
`IPR Case No.: IPR2015-00787
`
`______________
`
`
`
`REPLY TO PATENT OWNER’S RESPONSE TO PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,237,634
`
`
`
`
`
`

`
`
`
`
`
`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
`
`TABLE OF CONTENTS
`
`Updated List of Exhibits ........................................................................................... ii
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Claim construction ........................................................................................... 2
`
`A.
`B.
`
`Setpoint .................................................................................................. 2
`Paice’s “comparison” amendment is improper ..................................... 3
`
`III.
`
`Ford is not estopped as Paice alleges .............................................................. 4
`
`IV. Grounds 1-3 - Ibaraki ’882 renders the challenged claims unpatentable ........ 4
`
`A.
`
`B.
`
`C.
`
`3.
`
`2.
`
`Ibaraki ’882 discloses operating the engine/motor when the
`“road load” is above/below a “setpoint” .............................................. 4
`1.
`Paice’s power argument is not based on the figures nor
`disclosure of Ibaraki ’882 ........................................................... 6
`Fig. 5 of Ibaraki ’882 discloses mode selection based on
`road load and setpoint ..............................................................11
`Even if Ibaraki is power-based, the challenged claims are
`obvious based on the undisputed mathematical
`relationship between power and torque ....................................12
`Ibaraki ’882 discloses operating the motor and engine “when
`the torque RL...is more than the MTO” ...............................................15
`1.
`Fig. 5 also discloses operating the motor and engine
`when “road load” is “more than the MTO” ..............................20
`Ibaraki ’882 discloses a setpoint substantially less than MTO ...........22
`
`V. Ground 2: As the Board has previously found, Vittone’s “steady state
`management” teaches that the rate of change of torque output of the
`engine is limited .............................................................................................23
`
`A.
`B.
`
`Rationale to combine Ibaraki ’882 with Vittone .................................24
`Paice’s narrow interpretation of Ibaraki ’882 and Vittone is
`incorrect ...............................................................................................25
`
`VI. Ground 3: The challenged claims are obvious in view of Ibaraki ’882,
`Yamaguchi and the knowledge of a PHOSITA ............................................26
`
`VII. Conclusion .....................................................................................................27
`
`Certificate of Service ...............................................................................................29
`
`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24 .......................................30
`
`i
`
`

`
`
`
`
`Exhibit
`No.
`1750
`1751
`1752
`1753
`
`1754
`1755
`1756
`1757
`
`1758
`
`1759
`
`1760
`
`1761
`1762
`1763
`
`1764
`1765
`
`1766
`
`1767
`
`1768
`
`Description
`U.S. Patent No. 7,237,634
`Ford Letter to Paice
`U.S. Patent No. 5,789,882
`Oreste Vittone et al., FIAT
`Research Centre, Fiat
`Conceptual Approach to Hybrid
`Car Design,” 12th (International
`Electric Vehicle Symposium,
`1994)
`U.S. Patent No. 5,865,263
`Declaration of Gregory Davis
`Toyota Litigations
`Hyundai Litigation
`
`Feb. 23, 1996
`
`2005
`2013-2014
`
`PTAB Decisions & Preliminary
`Response in 2014-00571
`7,237,634 File History (certified) n/a
`
`
`
`Yamaguchi
`Davis Dec.
`Toyota Litigation
`Hyundai
`Litigation
`
`
`’634 Patent File
`History
`’347 File History
`
`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
`
`Updated List of Exhibits
`
`Date
`July 3, 2007
`Sept. 2014
`Aug. 4, 1998
`1994
`
`Identifier
`’634 Patent
`
`Ibaraki ’882
`Vittone
`
`Excerpt of USPN 7,104,347 File
`History
`U.S. Patent No.7,104,347
`SAE 760121 (Unnewehr-1976)
`Microprocessor Design for HEV
`(Bumby-1988)
`SAE SP-1331 (1998)
`Innovations in Design: 1993
`Ford Hybrid Electric Vehicle
`Challenge
`1996 & 1997 Future Car
`Challenge
`Introduction to Automotive
`Powertrain (Davis)
`U.S. Application 60-100095
`
`ii
`
`n/a
`
`Sept. 12, 2006
`Feb. 1, 1976
`Sept. 1, 1988
`
`’347 Patent
`Unnewehr
`Bumby 1988
`
`Feb. 1998
`Feb. 1994
`
`SAE SP-1331
`
`
`Feb. 1997 &
`Feb. 1998
`
`
`Filed Sept. 11,
`1998
`
`
`
`Davis Textbook
`
`’095 Provisional
`
`

`
`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
`
`Description
`History of Hybrid Electric
`Vehicle (Wakefield-1998)
`SAE 920447 (Burke-1992)
`Vehicle Tester for HEV (Duoba-
`1997)
`DOE Report to Congress (1994) April 1995
`
`Date
`
`1998
`
`Feb. 1, 1992
`Aug. 1, 1997
`
`Identifier
`Wakefield
`
`Burke 1992
`Duoba 1997
`
`1994 Report to
`Congress
`SAE SP-1156
`Feb. 1996
`Sept. 30, 1979 HEV Assessment
`1979
`EPA HEV Final
`Study
`9323263
`Toyota Prius
`Yamaguchi 1998
`’672 Patent
`IEEE Eshani 1996
`
`June 1, 1971
`
`Nov. 25, 1998
`Jan. 1998
`
`April 3, 2001
`1996
`
`Feb. 1997
`
`IEEE Eshani 1997
`
`Oct. 1996
`
`Bosch Handbook
`
`SAE SP-1089
`Feb. 1995
`Aug. 11, 1998 An 1998
`
`
`July 12, 1994
`Sept. 6, 1994
`Nov. 1987
`
`
`Boll
`Severinsky ’970
`Bumby II
`
`Feb. 25, 2014
`1995
`
`
`Jurgen
`
`1997
`
`Pulkrabek
`
`
`Exhibit
`No.
`1769
`
`1770
`1771
`
`1772
`
`1773
`1774
`
`SAE SP-1156 (1996)
`DOE HEV Assessment (1979)
`
`1775
`
`EPA HEV Final Study (1971)
`
`1776
`1777
`
`1778
`1779
`
`1780
`
`1781
`
`1782
`1783
`
`1784
`1785
`1786
`1787
`
`1788
`1789
`
`1790
`
`WO 9323263A1 (Field)
`Toyota Prius (Yamaguchi-1998)
`
`US Patent 6,209,672
`Propulsion System for Design
`for EV (Ehsani-1996)
`Propulsion System Design for
`HEV (Ehsani-1997)
`Bosch Automotive Handbook
`(1996)
`SAE SP-1089 (Anderson-1995)
`Critical Issues in Quantifying
`HEV Emissions (An 1998)
`Gregory Davis Resume
`U.S. Patent No. 5,327,992
`US Patent 5,343,970
`Bumby, J.R. et al. “Optimisation
`and control of a hybrid electric
`car” - IEE Proc. A 1987, 134(6)
`Paice Complaint
`Automotive Electronics
`Handbook (Jurgen)
`Engineering Fundamentals of the
`Internal Combustion Engine
`(Pulkrabek)
`
`iii
`
`

`
`
`Exhibit
`No.
`1791
`
`1792
`
`1793
`
`1794
`
`1795
`
`1796
`
`1797
`
`1798
`
`1799
`
`1800
`
`1801
`
`1802
`
`1803
`
`1804
`
`1805
`
`1806
`
`1807
`
`1808
`
`Description
`Final Decision, IPR2014-00904,
`Paper 41
`Final Decision, IPR2014-00571,
`Paper 44
`Final Decision, IPR2014-01416,
`Paper 26
`Deposition Transcript of Neil
`Hannemann for IPR2014-01416
`Final Decision, IPR2014-00884,
`Paper 38
`Final Decision, IPR2014-00875,
`Paper 38
`Final Decision, IPR2014-01415,
`Paper 30
`Deposition Transcript of Neil
`Hannemann for IPR2014-00570
`Deposition Transcript of Neil
`Hannemann for IPR2014-00875
`Exhibit 2 from deposition of Neil
`Hannemann for IPR2014-00875
`Patent Owner’s Response,
`IPR2014-00884, Paper 19
`Modern Electric, Hybrid Electric
`and Fuel Cell Vehicles
`Bosch Handbook
`
`Deposition Transcript of Neil
`Hannemann for IPR2014-00884
`Deposition Transcript of Neil
`Hannemann for IPR2014-00787
`Exhibit 12 from Deposition
`Transcript of Neil Hannemann
`(IPR2014-00884)
`Patent Owner’s Response,
`IPR2014-01416, Paper 17
`Deposition Transcript of Neil
`Hannemann for IPR2014-00571
`
`iv
`
`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
`
`Date
`December 10,
`2015
`September 28,
`2015
`March 10, 2016
`
`Sept. 4, 2015
`
`December 10,
`2015
`November 23,
`2015
`March 10, 2016
`
`Identifier
`’904 Decision
`
`’571 Decision
`
`’1416 Decision
`
`Hannemann ’1416
`Dep.
`’884 Decision
`
`’875 Decision
`
`’1415 Decision
`
`April 8, 2015
`
`Hannemann ’570
`Dep.
`April 30, 2015 Hannemann ’875
`Dep.
`’875 Dep. Exhibit
`
`April 30, 2015
`
`March 10, 2015
`
`’884 POR
`
`2005
`
`Ehsani
`
`1976
`
`Bosch Handbook
`1976
`April 30, 2015 Hannemann ’884
`Dep.
`April 27, 2016 Hannemann ’787
`Dep.
`’884 Dep. Exhibit
`
`April 30, 2015
`
`June 17, 2015
`
`’1416 POR
`
`April 7, 2015
`
`Hannemann ’571
`Dep.
`
`

`
`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
`
`
`Exhibit
`No.
`1809
`
`Description
`Reply Declaration of Dr.
`Gregory Davis
`
`Date
`
`
`
`Identifier
`Davis Reply
`
`v
`
`

`
`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
`
`
`I.
`
`Introduction
`
`Paice challenges Grounds 1-3 based on three primary arguments. First, Paice
`
`argues that Ibaraki ’882 does not disclose or render obvious a control strategy that
`
`compares “road load” to a “setpoint” and/or “MTO.” (POR at 17-34.) Second,
`
`Paice argues that Ibaraki ’882 does not operate both an electric motor and engine
`
`“when the torque RL required to do so is more than the MTO.” (POR at 34-45.)
`
`Third, Paice argues that Ibaraki ’882 does not disclose or render obvious a
`
`“setpoint” that is substantially less than MTO. (POR at 45-48.)
`
`Paice’s over-arching argument is that Ibaraki ’882 teaches a power-based
`
`strategy. But Ibaraki ’882 expressly teaches selecting operating modes based on
`
`the “vehicle running condition as represented by the current vehicle drive torque
`
`and speed.” (Ex. 1752, Ibaraki ’882 at 20:58-65, emphasis added; Pet. at 29.)
`
`Regardless of its express teachings, the challenged claims would have also been
`
`obvious in view Ibaraki ’882 based on the well-known relationship where power =
`
`torque * speed.
`
`Paice also challenges Grounds with secondary references. Ford provided
`
`detailed reasoning for: (1) how/why the prior art would be combined with Ibaraki
`
`’882; and (2) why the challenged claims are unpatentable in view of the proposed
`
`combination, even though the Paice disputes these findings.
`
`
`
`1
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`

`
`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
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`
`II. Claim construction
`
`A.
`
`Setpoint
`
`The Board’s institution decision construed “setpoint” as a “predetermined
`
`torque value that may or may not be reset.” (Paper 12 at 12.) For the reasons stated
`
`in Ford’s Petition and the Board Final Decisions, that continues to be the correct
`
`construction. (Ex. 1793, ’1416 Decision at 8; see also, Ex. 1791, ’904 Decision at
`
`9.)
`
`The Board further found persuasive Paice’s expert’s testimony that “under
`
`the ‘most straightforward’ approach for the claimed ‘comparison,’ the ‘setpoint is a
`
`torque value.’” (Ex. 1793, ’1416 Decision at 8, fn. 7, citing Ex. 1808, Hannemann
`
`’571 Dep. at 79:16-80:25.) The Board stated that although “sometimes the
`
`specification describes the setpoint in terms of a ‘transition point’ . . . the claim
`
`language itself makes clear that setpoint relates simply to a torque value, without
`
`requiring that it be a transition point.” (Ex. 1793, ’1416 Decision at 8-9, emphasis
`
`in original.) The Board also held “the specification acknowledges that the mode of
`
`operation does not always transition, or switch, at the setpoint, but instead depends
`
`on a number of parameters.” (Id.)
`
`Ford agrees with the Board’s construction, as supported by the Board’s prior
`
`decisions. (Petition at 10-11.)
`
`
`
`2
`
`

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`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
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`
`
`B.
`
`Paice’s “comparison” amendment is improper
`
`Unlinked to any particular claim term, Paice proposes a construction that
`
`improperly imports “a comparison of the RL” to a “setpoint (SP)” and/or “MTO”
`
`to each independent claim. (POR at 11-16.) Impermissibly adding limitations does
`
`not comport with the broadest reasonable construction standard.
`
`Regardless, as discussed below, Paice’s proposed construction does not
`
`change the obviousness of the claims. If the improper “comparison” limitation was
`
`imported, a PHOSITA would have understood that Ibaraki ’882 compares whether
`
`“the vehicle running condition” (i.e., “drive power PL) “as represented [and
`
`determined] by the current vehicle drive torque and speed” is: (1) “below the first
`
`boundary line B”; (2) “between the first and second boundary lines B and C”; or
`
`(3) “above the second boundary line C.” (Pet. at 15-28; Ex. 1755, Davis at ¶¶177-
`
`203, 226-244; Ex. 1752, Ibaraki ’882 at 20:58-21:1; 24:66-24:30.) The “point
`
`corresponding to the required drive power PL” satisfies the claimed “road load.”
`
`(Pet. at 15-18; Ex. 1755, Davis at ¶¶161-173.) “Boundary line B” satisfies the
`
`claimed “setpoint.” (See e.g., Pet. at 19, 21-22; Ex. 1755, Davis at ¶187.) And as
`
`explained further below, “Boundary line C” would have been at or near the
`
`engine’s MTO. (Pet. at 27-30; Ex 1755, Davis at ¶¶237-240.)
`
`3
`
`
`
`

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`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
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`
`III. Ford is not estopped as Paice alleges
`
`To address the large number of dependent claims in the ’634 Patent, Ford
`
`had to file multiple petitions, which sometimes addressed the same independent
`
`claims. (See, Petition at 1.) And the present petition had to re-challenge
`
`independent claim 215 in order to address dependent claim 238 that was neither
`
`challenged nor addressed by the Board’s decision in IPR2014-01416.
`
`The Board may exercise its discretion in maintaining the current proceeding
`
`against the claim 215 because it is incorporated within the body of the presently
`
`challenged dependent claim 238 “as a matter of dependency.” (See e.g., Ex. 1795,
`
`’884 Decision at 15-16, n.11.)
`
`IV. Grounds 1-3 - Ibaraki ’882 renders the challenged claims
`unpatentable
`
`A.
`
`Ibaraki ’882 discloses operating the engine/motor when the
`“road load” is above/below a “setpoint”
`
`Ibaraki ’882 discloses a control strategy that uses Fig. 11 for selecting
`
`operating modes based on the vehicle’s current required torque and speed.1 (See
`
`e.g., Ex. 1752, Ibaraki ’882 at 8:37-43, 20:58-21:1, 23:66-24:30; Petition at 15-28.)
`
`Figure 11 is used to select an operating mode (annotated below) when it is
`
`
`1 Mr. Hannemann testified that Fig. 11 is the vehicle torque and speed as measured
`
`at the vehicle wheels. (Ex. 1805, Hannemann ‘787 Dep at 73:18-22.)
`
`4
`
`

`
`
`determined that “the vehicle running condition as represented by the current
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`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
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`vehicle drive torque and speed” is either: (1) “below the first boundary line B”
`
`(red); (2) “between the first and second boundary lines B and C” (green); or (3)
`
`“above the second boundary line C” (blue).2 (Ex. 1752, Ibaraki ’882 at 20:58-21:1,
`
`see also 23:66-24:30.)
`
`Ex. 1752, Ibaraki ’882 at Fig. 11 (Annotated)
`
`
`
`Each operating mode is specifically selected by determining where “a point
`
`corresponding to the required drive power PL (determined by the current vehicle
`
`drive torque and speed V)” is located on the “data map.” (Ex. 1752, Ibaraki ’882 at
`
`23:66-24:30, emphasis added; see also Ex. 1805, Hannemann Dep. at 66:6-67:2.)
`
`
`2 Ibaraki ’882 also discloses how Fig. 5 can also be used to select when to operate
`
`the engine. (Ex. 1752, Ibaraki ’882 at 25:36-26:8.)
`
`5
`
`

`
`
`As annotated below, Ford maintains that Ibaraki ’882 satisfies the claimed
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`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
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`comparison of road load (i.e., a required drive power PL “point,” determined by
`
`current vehicle torque) to a setpoint (i.e., a “point” on boundary line B) in
`
`determining when to operate the engine. (Petition at 19-23; Ex. 1755, Davis at
`
`¶¶194-203.)
`
`Ex. 1752, Ibaraki ’882 at Fig. 11 (Annotated)
`
`1. Paice’s power argument is not based on the figures
`nor disclosure of Ibaraki ’882
`
`
`
`Paice’s argument that Ibaraki ’882 teaches a control strategy that compares
`
`power demand to power thresholds is based on arguments and figures it presented
`
`6
`
`

`
`
`in IPR2014-01416.3 (Compare, POR at 26-29 with Ex. 1807, ’1416 POR at 55-58.)
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`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
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`Instead of relying on Fig. 11 of Ibaraki ‘882 in this proceeding (below right), Paice
`
`has re-labeled figures (below left) that Mr. Hannemann testified were created for a
`
`prior proceeding that did not include Ibaraki ‘882. (See Ex. 1805, Hannemann Dep.
`
`at 74:21-77:8.)
`
`
`But these figures, which Paice labels “Ibaraki ’882,” are notably different
`
`from the actual Ibaraki ’882. First, as shown above, Paice’s created figures lack the
`
`constant (flat) portion of “boundary line B” at low vehicle speeds. As is further
`
`shown below, Paice’s created figures would not account for, nor select, the
`
`“MOTOR-DRIVE mode” if a “point corresponding to the required drive power PL”
`
`
`3 Paice originally presented these arguments in IPR2014-00884. (Ex. 1801, ’884
`
`POR at 48-51.)
`
`7
`
`

`
`
`is positioned just below this constant (flat) portion of “boundary line B” (i.e., high
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`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
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`torque/low speed). This constant portion confirms that the entire “boundary line
`
`B” – and not just the hyperbolic portion – would be understood as being torque.
`
`(Ex. 1809, Davis Reply at ¶¶3-14.)
`
`
`Second, Paice’s figures depict an IC engine graph with “engine torque”
`
`along the y-axis and “engine speed” along the x-axis and a blue “MTO” line across
`
`the top. Fig. 11, on the other hand, is labeled “vehicle drive torque” along the y-
`
`axis and “vehicle speed” along the x-axis. In other words, Fig. 11 depicts the actual
`
`torque required to propel the vehicle at the wheels, not the torque/speed output at
`
`the engine.4
`
`
`4 This distinction is important as Ibaraki ’882 discloses a “transmission 116”
`
`between the engine and the drive wheels. (Ex. 1752, Ibaraki ’882 at Fig. 8.)
`
`8
`
`

`
`
`
`This difference is not insignificant as Ibaraki ’882 itself recognizes the
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`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
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`difference and discusses how an IC engine graph (Fig. 5) could be modified to
`
`embody “the data map shown in FIG. 11.” (Ex. 1752, Ibaraki ’882 at 25:62-65.)
`
`When one compares the Paice-created engine graph with the actual Ibaraki engine
`
`graph in Fig. 5, the graphs are dramatically different.
`
`
`But when one compares the alleged “road load-based control strategy” that
`
`Paice contends is the claimed control strategy (below left) with Ibaraki ’882’s
`
`control strategy using the Fig. 5 engine graph, the differences are virtually
`
`indistinguishable.
`
`9
`
`

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`
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`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
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`With reference to the engine graph control strategy illustrated by Fig. 5,
`
`
`
`Ibaraki ’882 states that a “fuel consumption efficiency” threshold of “0.7ηICEmax” is
`
`employed for determining when to operate the motor or engine. (Ex. 1752, Ibaraki
`
`’882 at 25:46-54.) Ibaraki ’882 also explains that “fuel consumption efficiency
`
`FCe may be determined on the basis of engine torque TE and speed NE.” (Id. at
`
`12:67-13:5.) In other words, Ibaraki ’882 determines how much engine
`
`torque/speed is needed to operate the vehicle and will: (1) operate the motor if the
`
`engine torque is below a point along the “0.7ηICEmax” threshold (setpoint); or (2)
`
`operate the engine if the engine torque is above a point along the “0.7ηICEmax”
`
`threshold (setpoint). (Ex. 1752, Ibaraki ’882 at 25:46-54.) So contrary to Paice’s
`
`created engine graph representations, Ibaraki ’882 specifically discloses how an
`
`engine graph can be used to select modes based on torque. The engine graph of
`
`Fig. 5 (like the vehicle drive torque graph of Fig. 11) demonstrates that Ibaraki
`
`10
`
`

`
`
`’882 does not use or disclose any graph similar to the Paice created “Ibaraki ’882
`
`Case No: IPR2015-00787
`Attorney Docket No. FPGP0104IPR5
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`graphs.”
`
`2.
`
`Fig. 5 of Ibaraki ’882 discloses mode selection based
`on road load and setpoint
`
`As discussed above, Ibaraki ’882 also discloses how an engine map can be
`
`used to select modes similar to the “data map” illustrated in Fig. 11. (See Petition
`
`at 25; Ex. 1752, Ibaraki ’882 at 25:36-65.) Paice argues that this disclosure does
`
`not meet the claimed invention because “Fig. 5 uses entirely different criteria (fuel
`
`consumption efficiency) to determine when to operate the engine.” (POR at 33.)
`
`According to Paice, a PHOSITA would have understood “fuel consumption
`
`efficiency” is expressed as measures of power, not torque and therefore do not
`
`render the claimed invention obvious.5 (POR at 33, Ex. 2706, Hannemann Dec. at
`
`¶71.)
`
`But Ibaraki ’882 also expressly recognizes that “fuel consumption efficiency
`
`FCe” may be “determined on the basis of the engine torque TE and engine speed
`
`NE and according to a predetermined relationship between the efficiency FCe and
`
`these parameters.” (Ex. 1752, Ibaraki ’882 at 12:67-13:4.) A PHOSITA also would
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`5 A PHOSITA, however, would have understood that fuel efficiency could be
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`expressed on an engine graph in terms of power or torque based on the engine
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`speed. (Ex. 1755, Davis at ¶¶110-123; Ex. 1763, Bumby at Fig. 1.)
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`11
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`have understood that fuel efficiency for an engine can be related (as Ibaraki ’882
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`expressly teaches) to both the engine’s power and torque at a specific speed. (Ex.
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`1755, Davis at ¶¶108-123.) Any point on the engine map of Fig. 5 is therefore a
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`known fuel consumption efficiency at a given engine torque and speed. (Ex. 1755,
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`Davis at ¶¶210-213.)
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`This engine torque is the amount of torque required (road load) by either the
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`motor (if below “0.7ηICEmax” threshold) or the engine (if between “0.7ηICEmax”
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`threshold and engine MTO) for propelling the vehicle. (Ex. 1755, Davis at ¶¶210-
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`213.) The amount of required torque at a given engine speed is also compared to a
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`point along the “0.7ηICEmax” threshold (setpoint) to determine whether to operate
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`the motor or engine. (Id.) Thus, Fig. 5 teaches a control strategy that compares
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`“road load” to a “setpoint.” (Id.)
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`3.
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`Even if Ibaraki is power-based, the challenged claims
`are obvious based on the undisputed mathematical
`relationship between power and torque
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`This Board has already considered Paice’s power versus torque argument
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`and held the claimed control strategy of the ’634 Patent is obvious based on the
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`12
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`well-known (and undisputed) relationship between power and torque (i.e., power =
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`torque * speed).6 (Ex. 1793, ’1416 Decision at 23-25.)
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`For instance, because power and torque are related mathematically by speed,
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`a PHOSITA would have understood that power can be mathematically converted
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`to torque for determining when to operate the engine. (Ex. 1755, Davis at ¶201,
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`n.25, see also ¶¶166-171; Ex. 1805, Hannemann ’787 Dep. at 64:2-4.) And Ibaraki
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`’882 expressly recognizes this well-known relationship in stating that “a point
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`corresponding to the required drive power PL” is “determined by the current
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`vehicle drive torque and speed V.” (Ex. 1752, Ibaraki ’882 at 23:66-24:3.)
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`Despite this known relationship, Paice re-argues (as it did in IPR2014-
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`01416) that “[c]hoosing a road-load based system over a power-based system will
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`have…significant ramifications in hybrid vehicle design.” (Compare POR at 26-29
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`with Ex. 1807, ’1416 POR at 55-58.) Specifically, Paice re-argues that the size of
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`the engine and motor may vary between power and torque-based strategies. (POR
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`at 28-29.) But Paice has acknowledged the alleged trade-offs in sizing were known
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`to a PHOSITA. (Ex. 1801, ’884 POR at 50-51.) Furthermore, Paice’s own expert
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`6 Paice’s power-based argument also conflicts with the ’634 Patent which claims
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`evaluating the “power required from the engine to satisfy the road load.” (See
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`e.g., Ex. 1750, ’634 Patent at claims 302-306, emphasis added.)
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`13
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`has testified that while sizing of components may be different between a power and
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`torque control strategies, he further testified: “It's not necessary that one's better
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`than the other.” (Ex. 1804, Hannemann ’884 Dep. at 39:23-40:6.) Known tradeoffs
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`that are not a product of innovation do not make the claims non-obvious.7
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`Irrespective, the challenged independent claims do not include limitations
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`directed to engine and motor sizing. When Paice argued in the ’1416 proceeding
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`that power-vs-torque affects component sizing, The Board found that component
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`sizing is not part of the independent claims and “thus, is irrelevant.” (Ex. 1793,
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`’1416 Decision at 24.)
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`Moreover, the challenged claims of the ’634 Patent also do not require a
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`constant-value “setpoint” at all vehicle or engine speeds – as Paice alleges.8 (POR
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`at 38.) In fact, the ’634 Patent itself claims that the “setpoint SP is varied as a
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`function of vehicle speed.” (Ex. 1750, ’634 Patent at claim 300, see also claim 12.)
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`7 “As the Supreme Court explained, if trying such a limited number of solutions
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`‘leads to the anticipated success, it is likely the product not of innovation but of
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`ordinary skill and common sense.’” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
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`F.3d 1324, 1331 (Fed. Cir. 2009) (emphasis in original).
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`8 Even Paice’s proposed construction states that the setpoint “may be variable.”
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`(POR at 7.)
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`Mr. Hannemann has even previously agreed and provided examples (below) how
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`the recited “setpoint” could vary with respect to speed. (Ex. 1804, Hannemann
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`’884 Dep. at 16:10-16:22; and 42:21-45:3; Ex. 1806.)
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`Ex. 1806, Hannemann ’884 Dep.
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`B.
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`Ibaraki ’882 discloses operating the motor and engine
`“when the torque RL...is more than the MTO”
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`Paice provides a graph, reproduced below, and alleges it is representative of
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`Ibaraki ’882 that discloses both the motor and engine being operated “when the
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`torque RL...is more than the MTO.” (POR at 38.) Mr. Hannemann even agreed that
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`this figure represents that Ibaraki ’882 discloses that the motor and engine operates
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`above the engine’s MTO (i.e., shown by a green shaded area above a blue MTO
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`15
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`line).9 (Ex. 1805, Hannemann Dep. at 96:8-97:14; Ex. 2706, Hannemann Dec. at
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`¶77.)
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`The claims simply require that the motor and engine be operated “when the
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`torque RL...is more than the MTO.” (See e.g., Ex. 1750, ’634 Patent at Claim 215.)
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`Even though its own response demonstrates this limitation is met, Paice argues that
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`Ibaraki ’882 cannot meet the limitation by “coincidentally” operating both the
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`motor+engine above the engine’s MTO. (POR at 40.) Instead, Paice argues the
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`claims “properly construed... require an affirmative comparison of ‘road load’ to
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`‘MTO’...” (POR at 40.) Ford disagrees. The claims do not recite any such
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`9 Again, this figure is not an accurate representation of Fig. 11. Ford maintains this
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`limitation is met when Fig. 11 is accurately analyzed. (Ex. 1755, Davis at ¶¶234-
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`243.)
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`“comparison” nor can one be inferred. They also do not require operating the
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`motor and engine only “when the torque RL” is “more than the MTO.”
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`The fact that a “parallel hybrid” – like Ibaraki ’882 – meets this limitation is
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`also not “coincidental” as it was well-known to a PHOSITA to operate the motor
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`and engine to propel the vehicle “when the torque RL is more than the MTO.” (Ex.
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`1755, Davis at ¶¶240-243, 129-134.)
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`When the vehicle acceleration demands exceed the power capacity of
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`the engine, the electrical system is used to provide the extra needed
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`power.
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`(Ex. 1762, Unnewehr at 5.)
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`When more power
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`is needed
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`than
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`the engine can provide,
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`a... motor/generator or ‘torquer’ provides additional torque as needed.
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`(Ex. 1750, ’634 Patent at 3:40-42.)
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`Furthermore, Fig. 11 illustrates the “vehicle drive torque” and “vehicle
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`speed” at the drive wheels. Paice’s attempt to overlay Fig. 11 onto an engine graph
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`erroneously disregards the “transmission 116” that exists between the engine and
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`drive wheels.10 (Ex. 1752 at Fig. 8.) In accounting for the “transmission 116,” a
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`10 Again, the ’634 Patent states a “variable-ratio transmission” can be included as
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`part of the claimed invention. (Ex. 1750, ’634 Patent at 20:14-21, 21:18-32, 51:27-
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`52:61, see also Claims 51, 107, 140, 235, 261.) But Paice does not discuss how the
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`PHOSITA would have understood that any point along “boundary line C” is at or
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`above the engine’s MTO as Ford explained. (Petition at 27-29.)
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`For example, the textbook cited in Paice’s response (Ex. 2711) describes
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`how it was known to use a “multigear transmission... to modify the torque-speed
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`profile” of an engine.11 (Ex. 2711 at 15; Ex. 1809, Davis Reply at ¶¶26-27.) As
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`shown, the engine’s “torque-speed profile” is modified by the transmission to
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`provide: (1) higher torques at lower vehicle speeds (1st and 2nd gear); and (2) lower
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`torques at higher vehicle speeds (3rd and 4th gear).12 (Ex. 1809, Davis Reply at
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`¶¶26-27.) Mr. Hannemann even agreed that Fig. 2.13 (below right) illustrates “the
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`engine torque curve” (below left) for each gear after it is “multiplied” (i.e.,
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`claimed engine MTO would be modified by a transmission nor how such a
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`modification would affect the claimed control strategy.
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`11 Paice cites Ex. 2711 in arguing the “torque-speed profile” is representative of
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`what a PHOSITA understood as being an engine’s MTO curve. (POR at 35; Ex.
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`2706 at ¶74; see also Ex. 1805, ’787 Dep. at 83:1-6.)
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`12 While Ex. 1802 is labeled “tractive effort” along the y-axis, a PHOSITA would
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`have understood “vehicle drive torque” is simply the tractive effort * the radius of
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`the vehicle’s tires. (Ex. 1755, Davis at ¶116; Ex. 1781, Bosch Handbook at 6-7.)
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`18
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`modified) by a transmission. (Ex. 1805, Hannemann Dep at 86:23-87:12, see also
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`85:25-86:5, 83:1-84:12.)
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`As also shown, each gear is limited by the dashed hyperbolic curve line. (Ex.
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`1809, Davis Reply at ¶¶29-31.) And both experts agree that a PHOSITA would
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`have understood that the engine’s MTO at each of the transmissions gears cannot
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`exceed the hyperbolic curve line shown as a dashed line in Fig. 2.13 above. (Id.;
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`Ex. 1805, Hannemann Dep. at 87:13-88:13.) Fig. 11 likewise includes such a
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`hyperbolic curve (“boundary line C”) like the “dashed line” shown above. This is
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`because a PHOSITA would have understood “boundary line C” (like the curved
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`line illustrated in Fig. 2.13 below) illustrates the vehicle’s MTO, i.e., the engine’s
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`MTO as modified by the “transmission 116” and as measured at the drive wheels.
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`(Ex. 1809, Davis Reply at ¶¶32-34.)
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`In accounting for the transmission, a PHOSITA would have understood that
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`any drive torque beyond the hyperbolic dashed line (i.e., boundary line C) is
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`beyond the engine’s MTO capability. (Pet. at 27-28, Ex. 1755, Davis at ¶¶234-243;
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`Ex. 1809, Davis Reply at ¶¶32-34.) “Boundary line C” therefore discloses
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`operating the motor and engine together when the “vehicle drive torque” (road
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`load) is more than the engine’s MTO as modified by “transmission 116.”
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`1.
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`Fig. 5 also discloses operating the motor and engine
`when “road load” is “more than the MTO”
`
`Paice also argues that this limitation is not met by the engine graph of Fig. 5
`
`because it does not include an “ENGINE-MOTOR DRIVE” mode. (POR at 32, n.
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`4.) But, Ibaraki ’882 discloses modifying “the first embodiment... embodied as the
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`data map shown in FIG. 11” using the Fig. 5 engine map. (Ex. 1752, Ibaraki ’882
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`at 25:62-65.) In the very next column, Ibaraki ’882 discloses that the first
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`embodiment may be further “modified to have the ENGINE-MOTOR DRIVE
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`mode... which is selected when the vehicle load is comparatively high.” (Ex. 1752,
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`Ibarak