UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
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`Case IPR2015-00790
`Patent 7,237,634
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`Patent No. 7,237,634
`Patent Owner’s Response
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`Case IPR2015-00790
`Attorney Docket No: 36351-0015IP8
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`TABLE OF CONTENTS
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`I. 
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`II. 
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`INTRODUCTION ........................................................................................... 1 
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`THE ’634 PATENT ......................................................................................... 3 
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`A. 
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`B. 
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`Background of the ’634 Patent .............................................................. 3 
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`Claim Construction ............................................................................... 6 
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`1. 
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`“setpoint (SP)” ............................................................................ 7 
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`The Challenged Claims Require a Comparison Torque
`2. 
`Requirements to Setpoint .................................................................... 11 
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`III.  ARGUMENT ................................................................................................. 15 
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`A. 
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`B. 
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`Ford is Estopped from Maintaining its Challenges to Claim 14 ......... 16 
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`Grounds 1-6 are Deficient—Ford Has Failed to Demonstrate that the
`Proposed Combination of Ibaraki ’882 and Yamaguchi Discloses or
`Renders Obvious the Features Recited in the Challenged Claims ...... 16 
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`1. 
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`Ibaraki ’882 does not compare torque requirements to “setpoint”
`16 
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`Ibaraki ’882 does not disclose a setpoint that is substantially less
`2. 
`than MTO ............................................................................................ 35 
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`Claims 4 and 28 Are Not Obvious Over the Proposed
`3. 
`Combination of Ibaraki ’882 and Yamaguchi ..................................... 38 
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`C. 
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`Ground 2 is Deficient—Claims 13-15 Are Not Obvious Over the
`Proposed Combination of Ibaraki ’882 and Masding ......................... 39 
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`D.  Ground 3 is Deficient—Ford Fails to Establish a Motivation to
`Combine Ibaraki ’882 with Kawakatsu ............................................... 41 
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`E. 
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`Ground 4 is Deficient—Claim 29 is Not Obvious Over the Proposed
`Combination of Ibaraki ’882 and Vittone ........................................... 44 
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`Vittone Does Not Disclose Controlling the Engine by Limiting a
`1. 
`Rate of Change of Torque Output of the Engine ................................ 45 
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`Ford Fails to Establish a Motivation to Combine Vittone with
`2. 
`Ibaraki ’882 ......................................................................................... 48 
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`F. 
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`Ground 5 is Deficient—Claim 32 is Not Obvious Over the Proposed
`Combination of Ibaraki ’882 and Ibaraki ’626 ................................... 50 
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`G.  Ground 6 is Deficient—Suga’s Pure Electric Vehicle Does Not Relate
`to Sizing a Motor in a Hybrid Electric Vehicle................................... 52 
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`IV.  CONCLUSION .............................................................................................. 56 
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`Patent No. 7,237,634
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) .......................................................................... 10
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 6
`
`Ex parte Gunasekar, Appeal 2009-008345, 2011 WL 3872007 (BPAI
`2011) ............................................................................................................. 40, 41
`
`Fuji Photo Film Co. v. Int'l Trade Comm’n,
`386 F.3d 1095 (Fed. Cir. 2004) .......................................................................... 10
`
`In re Giannelli,
`739 F.3d 1375 (Fed. Cir. 2014) .......................................................................... 49
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 51
`
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
`222 F.3d 951 (Fed. Cir. 2000) ...................................................................... 35, 37
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) ........................................................ 39, 43, 48, 53
`
`Ex Parte James R. Bosserdet Jr.,
`Appeal 2012-001420, 2014 WL 5590704 (PTAB Oct. 9, 2014) ....................... 37
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 32
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 32, 44, 51
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`MasterImage 3D, Inc. v. Reald Inc.,
`IPR2015-00033, Paper 12 (PTAB Apr. 22, 2015) ....................................... 49, 56
`
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 13
`
`Microsoft Corp. v. Enfish, LLC,
`IPR2013-00559, Paper 65 (PTAB Mar. 3, 2015) ................................... 43, 49, 51
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................ 6, 7, 10, 13
`
`In re Nilssen,
`837 F.2d 1098 (Fed. Cir. 1987) .......................................................................... 51
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`Nystrom v. Trex Co.,
`424 F.3d 1136 ..................................................................................................... 35
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`Plantronics v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) .......................................................................... 55
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`Salesforce.com, Inc. v. VirtualAgility, Inc.,
`CBM2013-00024, Paper 16 (PTAB Nov. 19, 2013) .................................... 43, 49
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 6
`
`Texas Instruments v. United States ITC,
`988 F.2d 1165 (Fed. Cir. 1993) .................................................................... 37, 38
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`In re Vaidyanathan,
`381 Fed. Appx. 985 (Fed. Cir. 2010) .................................................................. 10
`
`In re Wright,
`569 F.2d 1124 (C.C.P.A. 1977) .......................................................................... 36
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`Statutes
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`35 U.S.C. § 103 .......................................................................................................... 1
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`35 U.S.C. § 315(e)(1) ............................................................................................... 16
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`Other Authorities
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`37 C.F.R. § 42.100(b) ................................................................................................ 6
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`EXHIBITS
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`Exhibit Name
`Table of Ford’s IPR Petitions
`U.S. Patent No. 8,214,097 File History
`Appendix A (Jan. 15, 2014)
`Declaration of Daniel A. Tishman in Support of Patent
`Owners’ Motion for Pro Hac Vice Admission
`Declaration of Neil Hannemann
`Neil Hannemann CV
`Gregory W. Davis, Deposition Tr. (IPR2015-00722,
`IPR2015-00784,
`IPR2015-00787,
`IPR2015-00790,
`IPR2015-00791,
`IPR2015-00794,
`IPR2015-00795)
`(January 13, 2016)
`Hybrid Power Unit Development for Fiat Multipla
`Vehicle,” by A. Caraceni, G. Cipolla, and R. Barbiero,
`SAE Publication 981124 (1998) (“Caraceni”)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00875)
`(Mar. 3, 2015)
`Gregory W. Davis, Deposition Tr. (IPR2014-00571,
`IPR2014-00579) (January 13, 2015)
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`Patent No. 7,237,634
`Patent Owner’s Response
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`Exhibit Number
`Ex. 2601
`Ex. 2602
`Ex. 2603
`Ex. 2604
`Ex. 2605
`Ex. 2606
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`Ex. 2607
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`Ex. 2608
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`Ex. 2609
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`Ex. 2610
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`Patent No. 7,237,634
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`Case IPR2015-00790
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`Pursuant to 37 C.F.R. § 42.120 and the Decision to Institute (“Institution
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`Decision” or “Inst. Dec.”), Patent Owners Paice LLC and the Abell Foundation, Inc.
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`(collectively, “Paice”) hereby submit this Response to the Petition for Inter Partes
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`Review of U.S. Patent. No. 7,237,634 under 35 U.S.C. § 311 et seq., and 37 C.F.R.
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`§ 42.100 et seq. (“Petition” or “Pet.”) filed by Ford Motor Company (“Ford”).
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`I.
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`INTRODUCTION
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`U.S. Patent. No. 7,237,634 (“the ’634 patent”), which is the subject of the
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`present Petition, claims an inventive and novel method of control for a hybrid
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`electric vehicle that uses road load, setpoint, and the maximum torque output of an
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`internal combustion engine to determine when to transition between various
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`operating modes in which the vehicle is propelled by an electric motor, an internal
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`combustion engine, or both. Ford’s Petition challenges claims 4, 13-15, 25, 28, 29,
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`32, 67 and 79 (“the challenged claims”) as obvious under 35 U.S.C. § 103.
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`Following Paice’s preliminary response, filed on August 10, 2015, the Board
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`instituted review of each of the challenged claims as obvious over various
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`combinations of U.S. Patent No. 5,789,882 to Ibaraki et al. (Ex. 1652) (“Ibaraki
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`’882”), U.S. Patent No. 5,865,263 to Yamaguchi (Ex. 1653) (“Yamaguchi”), P.W.
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`Masding et al., A Microprocessor controlled Gearbox for use in electric and hybrid-
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`electric vehicles, (Ex. 1654) (“Masding”), U.S. Patent No. 4,335,429 to Kawakatsu
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`(Ex. 1655) (“Kawakatsu”), Oreste Vittone et al., FIAT Research Centre, Fiat
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`Conceptual Approach to Hybrid Car Design (Ex. 1656) (“Vittone”), U.S. Patent No.
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`6,003,626 to Ibaraki et al. (Ex. 1657) (“Ibaraki ’626”), and U.S. Patent No.
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`5,623,104 to Suga (Ex. 1658) (“Suga”).
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`Ford’s arguments with regards to the ’634 patent are fundamentally flawed.
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`The ’634 patent’s innovative control strategy, using road load or torque
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`requirements, setpoint, and the engine’s maximum torque output (MTO) to decide
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`which operating mode to select to maximize efficiency, is absent in the cited
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`references. Instead, Ibaraki ’882 discloses selecting operating modes based on
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`power, not road load or torque-based setpoints. The following illustration of each
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`control system reveals the manifest differences:
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`The control strategy claimed by the ’634 patent compares torque requirements
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`to setpoint and MTO, and, as a result, operates the engine at a wide range of
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`relatively high torque values across the engine’s entire speed range, as depicted
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`above on left. The power-based control strategy of Ibaraki ’882 compares the
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`instantaneous drive power to power thresholds (which are unrelated to the engine’s
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`MTO) and, therefore, operates the engine in a defined range of power values, as
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`depicted above on right. Consequently, Ibaraki ’882 operates the motor much more
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`frequently than the inventive, torque-based control strategy claimed in the ’634
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`patent. Ford has presented no logical rationale as to why the ’634 patent’s control
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`system would be rendered obvious by the power-based system of Ibaraki ’882.
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`II. THE ’634 PATENT
`A. Background of the ’634 Patent
`The ’634 patent, entitled “Hybrid Vehicles,” issued on July 3, 2007, from an
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`application with a priority date of September 14, 1998. The ’634 patent discloses
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`embodiments of a hybrid electric vehicle, with an internal combustion engine, two
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`electric motors and a battery bank. A microprocessor is employed to control the
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`internal combustion engine, the two electric motors, and the battery bank based on
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`the hybrid vehicle’s instantaneous torque requirements such that the internal
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`combustion engine is only run under high efficiency conditions. See, e.g., Ex. 1650
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`at Abstract.
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`An embodiment of the hybrid vehicle disclosed in the ’634 patent is shown in
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`Figure 3, reproduced below:
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`Id. at Fig. 3. As shown, a traction motor 25 is connected to the road wheels 34
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`through a differential 32. A starter motor 21 is connected to the internal combustion
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`engine 40. The motors 21 and 25 are functional as either motors or generators,
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`depending on the operation of the corresponding inverter/charger units 23 and 27,
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`which connect the motors to the battery bank 22. See id. at 26:19-30.
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`These components are controlled by a microprocessor 48 or any controller
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`capable of examining input parameters and signals and controlling the mode of
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`operation of the vehicle. See, e.g., id. at 26:31-27:25. For example, control of engine
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`40 is accomplished by way of control signals provided by the microprocessor to the
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`electronic fuel injection (EFI) unit 56 and electronic engine management (EEM) unit
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`55. Control of (1) starting of the engine 40; (2) use of motors 21 and 25 to provide
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`propulsive torque; or (3) use of motors as generators to provide regenerative
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`recharging of battery bank 22, is accomplished through control signals provided by
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`the microprocessor to the inverter/charger units 23 and 27. See, e.g., id. at 26:64-
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`27:25; 28:42-52.
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`The hybrid vehicle may be operated in a number of modes based on the
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`vehicle’s instantaneous torque requirements, the engine’s maximum torque output,
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`the state of charge of the battery, and other operating parameters. In an
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`implementation of the ’634 patent, the microprocessor employs a hybrid system
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`control strategy based on sensed and calculated values for system variables that are
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`evaluated against setpoints and causes the vehicle to operate in various operating
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`modes pursuant to this control strategy. See, e.g., id. at 40:16-26.
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`For example, in mode I, the hybrid vehicle is operated as an electric car, with
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`the traction motor providing all torque to propel the vehicle. Id. at 37:24-32. As
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`the vehicle continues to be propelled in electric only mode, the state of charge of the
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`battery may become depleted, and need to be recharged. In this case, the hybrid
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`vehicle may transition to mode II to recharge the battery, in which the vehicle
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`operates as in mode I, with the addition of the engine running the starter/generator
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`motor to provide electrical energy to operate the traction motor and recharge the
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`battery. See, e.g., id. at 37:32-36. When the internal combustion engine can be
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`operated in its fuel efficient range to propel the vehicle, the hybrid vehicle operates
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`in mode IV, with the engine providing torque to propel the vehicle. Id. at 37:42-44;
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`38:51-61. If the vehicle requires additional torque, such as for acceleration or hill-
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`climbing, the vehicle may enter mode V, where the traction motor provides
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`additional torque to propel the vehicle beyond that provided by engine 40. Id. at
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`38:1-8.
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`B. Claim Construction
`In IPR proceedings, the Board applies the “broadest reasonable interpretation”
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`standard, which mandates that “[a] claim in an unexpired patent shall be given its
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`broadest reasonable construction in light of the specification of the patent in which
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`it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793
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`F.3d 1268, 1278 (Fed. Cir. 2015). The Federal Circuit has recognized, however, that
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`that standard requires that the claims must be read in light of the specification as it
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`would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc.,
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`603 F.3d 1255, 1260 (Fed. Cir. 2010). In Microsoft Corp. v. Proxyconn, Inc., the
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`Federal Circuit explained that the broadest reasonable interpretation does not mean
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`that “the Board may construe the claims during IPR so broadly that its constructions
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`are unreasonable under general claim constructions principles,” and that the
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`construction must not be “divorced from the specification and the record evidence”
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`and inconsistent with “the one that those skilled in the art would reach.” 789 F.3d
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`1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
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`2011); In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). “A construction that
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`is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language
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`and disclosure’ will not pass muster.” Microsoft, 789 F.3d at 1298 (quoting Suitco,
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`603 F.3d at 1260).
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`“setpoint (SP)”
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`1.
`A “setpoint” is “a definite, but potentially variable value at which a transition
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`between operating modes may occur.”1 In its Institution Decision, the Board
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`construed “setpoint” as a “predetermined torque value that may or may not be reset.”
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`Paice respectfully requests that the Board reconsider its construction as it is
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`unreasonably broad and does not reasonably reflect the disclosure of the ’634 patent.
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`1 As the Board is aware, the U.S. District Court for the Eastern District of
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`Texas and the U.S. District Court for the District of Maryland both have construed
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`the term “setpoint (SP)” to mean “a definite, but potentially variable value at which
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`a transition between operating modes may occur.” See Paice LLC v. Toyota Motor
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`Corp., Case No. 2:07-cv-180 (E.D. Tex. Dec. 5, 2008) (Ex. 1664 at 204); Paice LLC
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`v. Hyundai Motor Corp., Case No. 2:12-cv-499 (D. Md. Jul. 24, 2014) (Ex. 1665 at
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`103) (“The Plaintiffs’ proposed construction of ‘setpoint’ as ‘a definite, but
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`potentially variable value at which a transition between operating modes may occur,’
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`is consistent with the language of the claims and the intrinsic evidence.”).
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`Instead, the Board should adopt Paice’s construction (“a definite, but potentially
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`variable value at which a transition between operating modes may occur”).
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` The claims and the specification of the ’634 patent make clear that a
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`“setpoint” is not simply a numerical value divorced from the context of the control
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`system. Rather, “setpoint” serves the crucial function of marking the transition from
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`one claimed mode to another, and in particular, the transition from propelling the
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`vehicle with the motor to propelling the vehicle with the engine. See, e.g., Ex. 1650
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`at 40:41-49.
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`For example, in claim 1 the “setpoint” marks the transition between a mode
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`in which only the motor propels the vehicle, to modes in which the engine also can
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`be used to propel the vehicle or charge the battery. See id. at claim 1 (“wherein the
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`controller is operable to operate the engine when torque required from the engine to
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`propel the hybrid vehicle and/or to drive one or more of the first or the second motors
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`to charge the battery is at least equal to a setpoint (SP)”). Dependent claim 6
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`similarly recites “. . . wherein the controller is further operable to: monitor road load
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`(RL) on the hybrid vehicle over time; and control transition between propulsion of
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`the hybrid vehicle by the first and/or the second electric motors to propulsion by the
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`engine responsive to the RL reaching the SP . . . .” Id. at claim 6 (emphasis added);
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`see also id. at claims 8, 11, 19.
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`Additionally,
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`the specification unambiguously defines “setpoint” as
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`synonymous with a “transition point” between modes:
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`[I]n the example of the inventive control strategy discussed above, it is
`repeatedly stated that the transition from low-speed operation to
`highway cruising occurs when road load is equal to 30% of MTO. This
`setpoint, referred to in the appended claims as "SP", and sometimes
`hereinafter as the transition point (i.e., between operation in modes I
`and IV) is obviously arbitrary and can vary substantially, e.g., between
`30-50% ofMTO, within the scope of the invention.
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`Id. at 40:41-49; see also id. at 40:16-26 (“the microprocessor tests sensed and
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`calculated values for system variables, such as the vehicle’s instantaneous torque
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`requirement, i.e., the ‘road load’ RL . . . against setpoints, and uses the results of the
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`comparisons to control the mode of vehicle operation.”), 40:63-65 (“For example,
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`in response to recognition of a regular pattern as above, the transition point might be
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`adjusted to 60% of MTO”), 41:4-8 (“It is also within the scope of the invention to
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`make the setpoint SP to which the road load is compared to control the transition
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`from mode I to mode IV somewhat ‘fuzzy’ [sic], so that SP may vary from one
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`comparison of road load to MTO to the next depending on other variables”), 41:59-
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`63 (“FIG. 9 thus shows the main decision points of the control program run by the
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`microprocessor, with the transition point between mode I, low-speed operation, and
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`mode IV highway cruising, set at a road load equal to 30% of MTO”), 44:24-31
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`(“Further, as noted above the transition points between modes I, IV, and V in
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`particular may vary in accordance with the operator's commands”).
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`The Board’s initial construction of “setpoint” as a “predetermined torque
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`value that may or may not be reset,” see Inst. Dec. at 9, is incorrect and unreasonably
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`broad because it fails to recognize that “setpoint” represents a point at which a
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`transition between different operating modes may occur. The broadening
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`construction is “divorced from the specification and the record evidence” and
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`inconsistent with “the one that those skilled in the art would reach.” See Microsoft,
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`789 F.3d at 1298 (quoting NTP, 654 F.3d at 1288; Cortright, 165 F.3d at 1358). In
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`essence, the construction covers hybrid vehicle systems where transitions between
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`modes never occur—a clear error that is fundamentally contrary to the specification
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`of the ’634 patent. See Fuji Photo Film Co. v. Int'l Trade Comm’n, 386 F.3d 1095,
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`1098 (Fed. Cir. 2004) (claim should not be given overly broad construction that is
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`inconsistent with how claim term is used in the specification). The Board’s
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`“broadest reasonable interpretation” must be reasonable, and must be in conformity
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`with the invention as described in the specification. In re Vaidyanathan, 381 Fed.
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`Appx. 985, 995-96 (Fed. Cir. 2010); see also In re Abbott Diabetes Care Inc., 696
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`F.3d 1142, 1149 (Fed. Cir. 2012) (holding that Board’s construction of
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`“electrochemical sensor” was “unreasonable and inconsistent with the language of
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`the claims and the specification”).
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`Attorney Docket No: 36351-0015IP8
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`Additionally, as set forth in Paice’s preliminary response, “setpoint” should
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`not be limited to a torque value—the specification makes clear that a setpoint is not
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`limited to a torque value and in fact could also be a measure of the state of charge of
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`the battery.
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`[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.
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`Ex. 1650 at 40:22-31 (emphasis added).
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`Therefore, Paice respectfully requests that the Board reconsider its
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`construction and adopt Paice’s construction of “setpoint” to make clear that it is a
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`value “at which a transition between operating modes may occur.”
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`2.
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`The Challenged Claims Require a Comparison Torque
`Requirements to Setpoint
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`Each of the challenged claims require “wherein the controller is operable to
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`operate the engine when torque required from the engine to propel the hybrid vehicle
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`and/or to drive one or more of the first or the second motors to charge the battery is
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`at least equal to a setpoint (SP).” See Ex. 1650 at claim 1. Because Ford appears
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`intent on interpreting this limitation in an unreasonably broad manner to essentially
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`capture any system where a torque value is above/below a threshold either by
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`coincidence or otherwise, the Board should construe this limitation to make clear
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`that the claimed controller selects operating modes based on a comparison of torque
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`requirements to setpoint.
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`Specifically, the Board should construe “wherein the controller is operable to
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`operate the engine when torque required from the engine to propel the hybrid vehicle
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`and/or to drive one or more of the first or the second motors to charge the battery is
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`at least equal to a setpoint (SP)” as “wherein the controller is operable to operate the
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`engine when a comparison of torque required from the engine to propel the hybrid
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`vehicle and/or to drive one or more of the first or the second motors to charge the
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`battery to a setpoint (SP) results in a determination that torque required from the
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`engine to propel the hybrid vehicle and/or to drive one or more of the first or the
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`second motors to charge the battery is at least equal to a setpoint (SP).”
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`The broadest reasonable interpretation of this limitation requires that the
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`controller employ the engine based on a comparison of torque requirements to
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`setpoint. First, the intrinsic evidence of the ’634 patent, including the claims and
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`the specification, makes clear that the invention is directed to a control algorithm for
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`selecting operating modes based on the comparison of road load or torque
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`requirements to SP and MTO. The plain language of the claims makes clear that a
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`comparison of torque requirements to SP is required. For example, the requirement
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`in the challenged claims of “operat[ing] the engine when torque required from the
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`engine to propel the hybrid vehicle and/or to drive one or more of the first or the
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`second motors to charge the battery is at least equal to a setpoint (SP)” makes clear
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`to a person of ordinary skill in the art that road load must be compared to SP—
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`otherwise, the language following the word “when” would be rendered superfluous.
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`See Ex. 2605 at ¶ 36. It is axiomatic that “[c]laims should not be construed so as to
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`render terms redundant or superfluous.” Microsoft Corp. v. Surfcast, Inc., IPR2013-
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`00292, IPR2013-00293, IPR2013-00294, IPR2013-00295, Paper No. 93 at 11-12
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`(PTAB Oct. 14, 2014) (citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.
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`Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all terms in
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`the claim.”)); see also Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372
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`(Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the
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`claim is preferred over one that does not do so.”). In other words, the term “when”
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`must be understood to have causative effect. To interpret the challenged claims to
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`require mere coincidence would be a construction “divorced from the specification
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`and the record evidence” and inconsistent with “the one that those skilled in the art
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`would reach.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir.
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`2015) (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011).
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`Next, the specification of the ’634 patent specifically describes a control
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`algorithm, depicted in Fig. 9, that selects operating modes by comparing road load
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`or torque requirements to SP and MTO. See Ex. 1650 at Fig. 9; col. 41:59-62 (“FIG.
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`9 thus shows the main decision points of the control program run by the
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`microprocessor, with the transition point between mode I, low-speed operation, and
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`mode IV highway cruising, set at a road load equal to 30% of MTO”); see also id.
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`at 40:41-44 (“For example, in the example of the inventive control strategy discussed
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`above, it is repeatedly stated that the transition from low-speed operation to highway
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`cruising occurs when road load is equal to 30% of MTO.”); id. at 41:4-8; id. at 41:30-
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`33. Indeed, this Board has previously recognized that the microprocessor of the
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`claimed invention compares road load to setpoint. See Inst. Dec. at 3 (“The
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`microprocessor compares the vehicle’s torque requirements and the engine’s torque
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`output against a predefined setpoint and uses the results of the comparison to control
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`the vehicle’s mode of operation, e.g., straight-electric, engine-only, or hybrid.”
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`(citing Ex. 1650 at 40:16-49)).
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`Even Ford appears to concede that the claims of the ’634 patent require a
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`comparison of road load to setpoint and MTO. For example, Ford explains:
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`All claims recite a “setpoint” or “SP” value being compared to either:
`(1) an engine torque value (e.g., claim 1); or (2) a torque-based “road
`load” value (e.g., claim 33). No claims recite a “setpoint” or “SP” in
`comparison to any other system variable. Likewise, the specification
`says “the microprocessor tests sensed and calculated values for system
`variables, such as the vehicle’s instantaneous torque requirement, i.e.,
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`the ‘road load’ RL . . . against setpoints, and uses the results of the
`comparisons to control the mode of vehicle operation.” (’634 Patent,
`Ex. 1650, 40:16-26, emphasis added.) To do so (e.g., whether “RL <
`SP”), the “setpoint” would have to be in the same measurement units
`as the “road load.”
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`Pet. at 12-13 (emphasis added). Yet despite these admissions, Ford’s Petition makes
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`clear that it chose to ignore the comparison and causation requirements. Ford first
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`ignores the comparison between road load or torque requirements and setpoint,
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`stating only that at a given speed, engine torque may be above a setpoint. See, e.g.,
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`Pet. at 28. By ignoring the comparison and causation requirements, Ford has
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`essentially construed the claims to capture any control system where a torque value
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`happens to be above/below a threshold irrespective of the criteria used by the control
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`system. Such an interpretation of the claims is unreasonably broad and should be
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`rejected.
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`Therefore, for the reasons expressed above, for purposes of this IPR, the
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`Board should construe the challenged claims to make clear that a comparison
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`between torque requirements and setpoint is required.
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`III. ARGUMENT
`Each of the instituted grounds of unpatentability should be denied because the
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`claimed invention is novel and nonobvious. In particular, Ibaraki ’882 alone or in
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`combination with any one of Yamaguchi, Masding, Kawakatsu, Vittone, Ibaraki
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`’626, and Suga, does not render the challenged claims obvious.
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`Ford is Estopped from Maintaining its Challenges to Claim 14
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`A.
`First, Ford is estopped from maintaining its challenges to claim 14, pursuant
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`to 35 U.S.C. § 315(e)(1). Under section 315(e)(1), upon a “final written decision”
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`Ford “may not request or mai