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.: IPR2015-00790
`
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. §42.100 ET SEQ.
`(CLAIMS 4, 13-15, 25, 28, 29, 32, 67 AND 79 OF U.S. PATENT NO. 7,237,634)
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`Case No: IPR2015-00790
`Attorney Docket No. FPGP0104IPR12
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`TABLE OF CONTENTS
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`EXHIBIT LIST ..................................................................................................................... iii
`
`I.
`
`INTRODUCTION .................................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ........................................ 2
`
`A.
`B.
`C.
`D.
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1) ............................................ 2
`Related Matters - 37 C.F.R. § 42.8(b)(2) ....................................................... 2
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3) .................................. 2
`Service Information - 37 C.F.R. § 42.8(b)(4) ............................................... 3
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`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104 .................................................. 3
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a) ............................................. 3
`B.
`Challenged Claims - 37 C.F.R. §42.104(b)(1) ............................................... 3
`C. Grounds of Challenge - 37 C.F.R. §42.104(b)(2) ........................................ 3
`
`IV. OVERVIEW OF THE ’634 PATENT ................................................................... 6
`
`A.
`B.
`C.
`
`Prosecution History of the ’634 Patent ........................................................ 6
`Purported Improvement in the ’634 Patent ................................................. 7
`Independent Claim 1 ....................................................................................... 8
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART (POSA) ............................... 9
`
`VI.
`
`STATE OF THE ART .............................................................................................. 9
`
`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3) ................................. 11
`
`A.
`B.
`C.
`
`road load (RL) and RL .................................................................................. 12
`setpoint (SP) and SP ...................................................................................... 12
`“abnormal and transient conditions” .......................................................... 13
`
`VIII. UNPATENTABILITY GROUNDS .................................................................... 14
`
`A. Ground 1 – Claims 4 and 28 Are Obvious Over Ibaraki ’882 In
`View Of Yamaguchi ’263 In Further View Of The General
`Knowledge Of A POSA ............................................................................... 14
`1.
`Independent Claim 1 ......................................................................... 15
`2.
`Dependent Claim 4 ............................................................................ 33
`3.
`Dependent Claim 28 .......................................................................... 36
`Ground 2 – Claims 13-15 Are Obvious Over Ibaraki ’882 In View
`Of The Knowledge Of A POSA Using The Teachings From
`Masding/Bumby 1988 And Applicant Admitted Prior Art
`Disclosed In The ’634 Patent ....................................................................... 38
`1.
`Dependent Claim 13 .......................................................................... 38
`
`B.
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`Dependent Claim 14 .......................................................................... 40
`2.
`Dependent Claim 15 .......................................................................... 41
`3.
`C. Ground 3 – Claim 25 Is Obvious Over Ibaraki ’882 In View Of
`Kawakatsu ’429 In Further View Of The Knowledge Of A POSA ....... 41
`1.
`Dependent Claim 25 .......................................................................... 41
`(a)
`Reason To Combine .............................................................. 44
`D. Ground 4 - Claim 29 Is Obvious Over Ibaraki ’882 In View Of
`Vittone In Further View Of the Knowledge Of A POSA ....................... 45
`1.
`Dependent Claim 29 .......................................................................... 45
`(a)
`Reason To Combine .............................................................. 47
`E. Ground 5 - Claim 32 Is Obvious Over Ibaraki ’882 In View Of
`Ibaraki ’626 In Further View Of The Knowledge Of A POSA .............. 51
`1.
`Dependent Claim 32 .......................................................................... 51
`(a)
`Reason To Combine .............................................................. 54
`Ground 6 - Claims 67 and 79 Are Obvious Over Ibaraki ’882 In
`view Of Suga ’104 In Further View Of The Knowledge Of A
`POSA .............................................................................................................. 56
`1.
`Dependent Claims 67 and 79 ........................................................... 56
`(a)
`Reason To Combine .............................................................. 58
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`F.
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`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS ......................................... 59
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`X.
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`CONCLUSION ........................................................................................................ 59
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`CERTIFICATE OF SERVICE ......................................................................................... 61
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`ii
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`

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`
`
`Exhibit
`No.
`1650
`1651
`1652
`1653
`1654
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`1655
`1656
`
`1657
`1658
`1659
`
`1660
`
`1661
`1662
`1663
`
`1664
`1665
`1666
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`1667
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`1668
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`1669
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`1670
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`1671
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`1672
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`Case No: IPR2015-00790
`Attorney Docket No. FPGP0104IPR12
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`EXHIBIT LIST
`
`Description
`U.S. Patent No. 7,237,634
`Ford Letter to Paice
`US Patent 5,789,882
`US Patent 5,865,263
`Microprocessor Design for HEV
`(Bumby-1988)
`US Patent 4,335,429
`Fiat Conceptual Approach to
`Hybrid Cars Design (Vittone)
`US Patent 6,003,626
`US Patent 5,623,104
`Engineering Fundamentals of the
`Internal Combustion Engine
`Automotive Electronics
`Handbook (Jurgen)
`Declaration of Gregory Davis
`US Patent 7,104,347
`7,237,634 File History (certified)
`
`Toyota Litigations
`Hyundai Litigation
`PTAB Decisions & Preliminary
`Response in 2014-00571
`Excerpt of USPN 7,104,347 File
`History
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`1996 & 1997 Future Car
`Challenge
`Introduction to Automotive
`Powertrain (Davis)
`US Application 60-100095
`
`History of Hybrid Electric
`Vehicle (Wakefield-1998)
`
`Date
`July 3, 2007
`Sept. 2014
`Aug. 4, 1998
`Feb. 2, 1999
`Sept. 1, 1988
`
`Jun. 15, 1982
`Dec. 5-7, 1994
`
`Identifier
`’634 Patent
`
`Ibaraki ’882
`Yamaguchi ‘263
`Bumby/Masding
`1988
`Kawakatsu ‘429
`Vittone
`
`Dec. 21, 1999
`Apr. 22, 1997
`1997
`
`Ibaraki ’626
`Suga ‘104
`Pulkrabek
`
`
`
`Jurgen
`
`
`Sept. 12, 2006
`n/a
`
`2005
`2013-2014
`
`
`Davis Dec.
`‘347 Patent
`’634 Patent File
`History
`Toyota Litigation
`Hyundai Litigation
`
`
`n/a
`
`‘347 File History
`
`Feb. 1994
`
`Feb. 1997 &
`Feb. 1998
`
`
`Filed Sept. 11,
`1998
`1998
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`
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`
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`Davis Textbook
`
`‘095 Provisional
`
`Wakefield
`
`iii
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`Description
`SAE 760121 (Unnewehr-1976)
`SAE 920447 (Burke-1992)
`Vehicle Tester for HEV (Duoba-
`1997)
`DOE Report to Congress (1994) April 1995
`
`Date
`Feb. 1, 1976
`Feb. 1, 1992
`Aug. 1, 1997
`
`SAE SP-1331 (1998)
`SAE SP-1156 (1996)
`DOE HEV Assessment (1979)
`
`Feb. 1998
`Feb. 1996
`Sept. 30, 1979
`
`Identifier
`Unnewehr
`Burke 1992
`Duoba 1997
`
`1994 Report to
`Congress
`SAE SP-1331
`SAE SP-1156
`HEV Assessment
`1979
`EPA HEV Final
`Study
`9323263
`Toyota Prius
`Yamaguchi 1998
`‘672 Patent
`IEEE Ehsani 1996
`
`
`
`Exhibit
`No.
`1673
`1674
`1675
`
`1676
`
`1677
`1678
`1679
`
`1681
`1682
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`1683
`1684
`
`1685
`
`1686
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`1687
`1688
`
`1689
`
`1690
`1691
`1692
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`1693
`1694
`
`
`1680
`
`EPA HEV Final Study (1971)
`
`June 1, 1971
`
`WO 9323263A1 (Field)
`Toyota Prius (Yamaguchi-1998)
`
`Nov. 25, 1998
`Jan. 1998
`
`April 3, 2001
`June 18, 2005
`
`Feb. 1997
`
`IEEE Ehsani 1997
`
`Oct. 1996
`
`Bosch Handbook
`
`Feb. 1995
`Aug. 11, 1998
`
`SAE SP-1089
`An 1998
`
`1973
`
`SAE 1973
`
`
`
`Nov. 1987
`
`
`
`Bumby II
`
`Sept. 6, 1994
`Feb. 25, 2014
`
`Severinsky ‘970
`
`
`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)
`1973 Development of the Federal
`Urban Driving Schedule (SAE
`730553)
`Gregory Davis Resume
`Gregory Davis Data
`Bumby, J.R. et al. “Optimisation
`and control of a hybrid electric
`car” - IEE Proc. A 1987, 134(6)
`US Patent 5,343,970
`Paice Complaint
`
`iv
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`I.
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`INTRODUCTION
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`Case No: IPR2015-00790
`Attorney Docket No. FPGP0104IPR12
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`Petitioner (“Ford”) requests IPR of claims 4, 13-15, 25, 28, 29, 32, 67 and 79 of
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`U.S. Patent No. 7,237,634 (“the ’634 Patent,” Ex. 1650).
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`The ’634 patent is one of five patents that Patent Owner (“Patentee” or
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`“Paice”) has asserted against Ford in litigation. Paice contends that these patents teach
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`an allegedly “fundamental” method of “mode control using road load” and “engine
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`control under which engine torque is above a setpoint.” (Ex. 1694 [Paice Complaint],
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`p. 16, ¶43, served on 2/25/14 (p.1).) Paice’s methods of using “road load” and an
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`engine torque “setpoint” were actually well known in the art. (Ex. 1661 [Davis Decl.],
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`¶¶ 398-410.) U.S. Patent No. 5,789,882 (“Ibaraki ’882”), prior publications by Bumby,
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`and Paice’s own U.S. Patent No. 5,343,970 (“Severinsky ’970”) all disclose use of
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`“road load” and “setpoint” for mode switching in a hybrid vehicle. (Id.).
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`Paice’s patent claims start with this well-known control strategy and then add
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`other common features. The ’634 patent has 306 such claims. Ford has repeatedly
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`asked Paice to limit the asserted claims to a reasonable number (Ex. 1651, [Ford
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`Letter]), but Paice has refused. Accordingly, Ford is filing several IPR’s to address the
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`’634 Patent claims and is trying to group the claims according to claimed subject
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`matter. Due to page limitations, and the voluminous number of dependent claims,
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`Ford addresses independent claims in multiple petitions. Ford relies on Ibaraki ’882 in
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`this petition, but may rely on Severinsky ’970 or the Bumby publications in other
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`petitions because they address other dependent claims directed toward different
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`subject matter.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
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`A. Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
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`Petitioner certifies that Ford is the real party-in-interest.
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`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
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`The ’634 Patent is being asserted in Paice, LLC and the Abell Foundation, Inc. v.
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`Ford Motor Company, Case No. 1-14-cv-00492 and Paice LLC and The Abell Foundation,
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`Inc. v. Hyundai Motor America et. al., Case No. 1:2012-cv-00499. Ford has filed petitions
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`concerning the ’634 Patent in IPR2014-00904, IPR2014-01416 and IPR2015-00606,
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`IPR2015-00722, IPR2015-00758, IPR2015-00784, IPR2015-00785, and IPR2015-
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`00791. Petitioner has also filed petitions concerning other asserted patents in
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`IPR2014-00568, IPR2014-00570, IPR2014-00571, IPR2014-00579, IPR2014-00852,
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`IPR2014-00875, IPR2014-00884, IPR2014-01415, and IPR2015-00767. Petitioner is
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`concurrently filing related petition IPR2015-00794. This Petition is not redundant to
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`any previously or concurrently filed petitions.
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`C.
`
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
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`Petitioner appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman
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`P.C. as lead counsel, and appoints John E. Nemazi (Reg. No. 30,876), John P.
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`Rondini (Reg. No. 64,949) and Christopher C. Smith (Reg. No. 59,669) of Brooks
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`Kushman P.C., as well as Lissi Mojica (Reg. No. 63,421) and Kevin Greenleaf (Reg.
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`No. 64,062) of Dentons US LLP, as back-up counsel. An appropriate Power of
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`Attorney is filed concurrently herewith.
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`D.
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`Service Information - 37 C.F.R. § 42.8(b)(4)
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`Service of any documents to lead and back-up counsel can be made via hand-
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`delivery to Brooks Kushman P.C., 1000 Town Center, Twenty-Second Floor,
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`Southfield, Michigan 48075 and Dentons US LLP, 233 South Wacker Drive, Suite
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`7800, Chicago, IL 60606-6306. Petitioner consents to service by email at
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`FPGP0104IPR12@brookskushman.com and iptdocketchi@dentons.com.
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`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing - 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’634 Patent is available for IPR and that Petitioner is
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`not barred or estopped from challenging the patent claims on the grounds in this
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`Petition.
`
`B.
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`Challenged Claims - 37 C.F.R. §42.104(b)(1)
`
`Petitioner requests IPR of the ’634 Patent claims 4, 13-15, 25, 28, 29, 32, 67
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`and 79 and requests that the Patent Trial and Appeal Board (“PTAB”) cancel those
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`claims as unpatentable.
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`C. Grounds of Challenge - 37 C.F.R. §42.104(b)(2)
`
`Petitioner relies on the following prior art:
`
`(i)
`
`Ibaraki ’882 – U.S. Patent No. 5,789,882 to Ibaraki et al. (hereinafter “Ibaraki
`
`’882”) was filed on July 22, 1996, issued on August 4, 1998, and qualifies as prior art
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`under 35 U.S.C. § 102(a) & (e). (Ex. 1652 [Ibaraki ’882].)
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`3
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`(ii) Yamaguchi ’263 – U.S. Patent No. 5,865,263 to Yamaguchi et al. (hereinafter
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`“Yamaguchi ’263”) was filed on February 23, 1996, issued on February 2, 1999, and
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`qualifies as prior art under 35 U.S.C. § 102(e). (Ex. 1653 [Yamaguchi ’263].)
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`(iii) Masding/Bumby 1988 – A September 1988 paper by P.W. Masding et al.
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`titled “A Microprocessor controlled Gearbox for use in electric and hybrid-electric
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`vehicles.” (Ex. 1654 [Masding/Bumby 1988].)
`
`(iv) Kawakatsu ’429 – U.S. Patent No. 4,335,429 to Kawakatsu (hereinafter
`
`“Kawakatsu ’429”) was filed on March 12, 1980, issued on June 15, 1982, and
`
`qualifies as prior art under 35 U.S.C. 102(b). (Ex. 1655 [Kawakatsu ’429].)
`
`(v) Vittone – The article titled “Fiat Conceptual Approach to Hybrid Cars
`
`Design” by Oreste Vittone, was published in December 1997 and therefore qualifies
`
`as prior art under 35 U.S.C. 102(a). (Ex. 1656 [Vitton].)
`
`(vi)
`
`Ibaraki ’626 – U.S. Patent No. 6,003,626 to Ibaraki et al. (hereinafter “Ibaraki
`
`’626”) was filed on Oct. 4, 1996, issued on Dec. 21, 1999, and qualifies as prior art
`
`under 35 U.S.C. § 102(e). (Ex. 1657 [Ibaraki ’626].)
`
`(vii) Suga ’104 – U.S. patent No. 5,623,104 to Hiroshi Suga (hereinafter “Suga
`
`’104”) was filed on Jan. 30, 1996, issued on April 22, 1997, and qualifies as prior art
`
`under U.S.C. § 102(b). (Ex. 1658 [Suga ’104].)
`
`The grounds of unpatentability presented in this petition are as follows:
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`Ground Basis
`1
`§ 103 Ibaraki
`
`References
`’882
`in view of
`
`Claims
`Dependent claims 4 and 28
`
`Yamaguchi
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`’263
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`in further
`
`view of the general knowledge
`
`of a POSA
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`2
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`§ 103 Ibaraki ’882 in view of the
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`Dependent claims 13, 14 and 15
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`knowledge of a POSA using
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`the
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`teachings
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`from
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`Masding/Bumby 1988 and
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`Applicant Admitted Prior Art
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`Disclosed in the ’634 Patent
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`3
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`§ 103 Ibaraki
`
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`’882
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`in view of
`
`Dependent claim 25
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`Kawakatsu
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`’429
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`in further
`
`view of the general knowledge
`
`of a POSA
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`4
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`§ 103 Ibaraki ’882 in view of Vittone
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`Dependent Claim 29
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`in further view of the general
`
`knowledge of a POSA
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`5
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`References
`Ground Basis
`5
`§ 103 Ibaraki ’882 in view of Ibaraki
`
`Claims
`Dependent Claim 32
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`’626 in further view of the
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`general knowledge of a POSA
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`6
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`§ 103 Ibaraki ’882 in view of Suga
`
`Dependent Claims 67 and 79
`
`’104 in further view of the
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`general knowledge of a POSA
`
`The unpatentability grounds set forth in this Petition are confirmed and
`
`supported by the declaration of Dr. Gregory W. Davis. (“Davis Dec.,” Ex. 1661.)
`
`IV. OVERVIEW OF THE ’634 PATENT
`
`The ’634 Patent is a divisional in a patent family chain that ultimately claims
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`priority back to two separate Provisional Applications—Provisional Application No.
`
`60/100,095, filed September 14, 1998, and 60/122,296, filed March 1, 1999.The ’634
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`Patent is a direct divisional of U.S. Patent No. 7,104,347 (“the ’347 Patent,” Ex.
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`1662).
`
`A.
`
`Prosecution History of the ’634 Patent
`
`The ’634 Patent was accorded a filing date of January 13, 2006. (’634 File
`
`History, Ex. 1663.) As filed, the ’634 Patent included 16 claims. Id. at 126-131. On
`
`May 5, 2006, the Patentee filed a preliminary amendment cancelling originally filed
`
`claims 1-16 and adding new claims 17-75. Id. at 166-182. On October 24, 2006, the
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`patentee responded to a non-final office action by cancelling some of the previously
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`submitted claims and adding 261 new claims. Id. at 344. On February 8, 2007, the
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`Examiner issued a notice of allowance. Id. at 493.
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`B.
`
`Purported Improvement in the ’634 Patent
`
`The ’634 Patent identifies a purportedly “new ‘topology’ for a hybrid vehicle”
`
`that requires “a first electric ‘starting’ motor” and “[a] second ‘traction’ motor []
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`directly connected to the road wheels to propel the vehicle.” (Ex. 1650 [’634 Patent] at
`
`11:50-62.)1 The purported “new ‘topology’” is disclosed as a two-motor “series-
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`parallel” hybrid. Id. at 16:5-11. Two-motor “series-parallel” hybrids were well-known
`
`long before the patentee’s earliest priority date of September 1998. (Ex. 1661 [Davis
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`Dec.] at ¶¶ 87-107.)
`
`The ’634 Patent also identifies a control strategy to operate the engine, traction
`
`motor, and starter motor “in accordance with the vehicle’s instantaneous torque
`
`demands so that the engine is run only under conditions of high efficiency.” (Ex. 1650
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`[’634 Patent] at 1, Abstract.) The ’634 Patent states that the control strategy operates
`
`“the internal combustion engine only under circumstances providing a significant
`
`load, thus ensuring efficient operation.” (Ex. 1650 [’634 Patent] at 35:10-12; see also
`
`19:45-50 and 20:61-21:2.) Efficient engine operation is accomplished by using a set of
`
`operating modes that determine when to operate the engine or motors “depending on
`
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`1 “Topology” is used in the ’634 Patent to describe a vehicle architecture or vehicle
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`hardware configuration.
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`the torque required, the state of charge of the battery and other variables.” (Id. at 35:3-
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`9.) Specifically, the ’634 Patent discloses: (1) operating the traction motor to provide
`
`“the torque required to propel the vehicle” when engine torque would be inefficiently
`
`produced (i.e., “mode I”); (2) operating the engine to provide “the torque required to
`
`propel the vehicle” when engine torque is efficiently produced (i.e., “mode IV”); (3)
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`operating both the engine and motor when the “torque required to propel the
`
`vehicle” is above the maximum operating torque of the engine (i.e., “mode V”). (Id. at
`
`35:63-36:4; 36:20-43; Figs. 8(a), (c), (d).)
`
`The ’634 Patent control strategy was also known in the prior art. (Ex. 1661
`
`[Davis Dec.] ¶¶398-410.) In fact, the ’634 Patent itself acknowledges that “the
`
`inventive control strategy according to which the hybrid vehicles of the [’634 Patent]
`
`invention are operated” is the same “as in the case of the hybrid vehicle system shown
`
`in [the prior art Severinsky] ’970 patent.” (Ex. 1650 [’634 Patent] at 35:3-9, see also
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`25:4-24.)
`
`C.
`
`Independent Claim 1
`
`Independent claim 1 recites a “hybrid vehicle” that includes an engine and first
`
`and second electric motors. Independent claim 1 further recites: (1) operating “the
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`engine” when the “torque required from the engine to propel the hybrid vehicle” is “at least equal to
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`a setpoint (SP),” and (2) wherein “the torque produced by the engine when operated at the SP is
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`substantially less than the maximum torque output (MTO) of the engine.”
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`V.
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`PERSON OF ORDINARY SKILL IN THE ART (POSA)
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`The level of ordinary skill in the art is evidenced by the references. See In re
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`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A POSA would have either: (1) a
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`graduate degree in mechanical, electrical or automotive engineering with experience in
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`the design and control of combustion engines, electric or hybrid electric propulsion
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`systems, or automotive transmissions, or (2) a bachelor’s degree in mechanical,
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`electrical or automotive engineering with at least five years of experience in the design
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`and control of combustion engines, electric or hybrid electric propulsion systems, or
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`automotive transmissions. (Ex. 1661 [Davis Dec.] ¶¶41-42.)
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`VI. STATE OF THE ART
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`Hybrid vehicles date back over 100 years to the infancy of the automobile. (Ex.
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`1661 [Davis Dec.] ¶¶43-47.) Over this time span, numerous hybrid architectures had
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`been examined to achieve design “goals” that included efficient engine operation,
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`improved fuel economy and reduced emissions. (Ex. 1661 [Davis Dec.] ¶48.)
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`By September 1998, the development of the hybrid vehicle had advanced to a
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`state where numerous different hybrid vehicle architectures were generally known and
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`had even been successfully built and tested on public roads. (Ex. 1661 [Davis Dec.]
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`¶¶49-60.) These hybrid vehicle architectures typically employed electric motors to
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`maintain operation of the internal combustion engine within the engine’s most
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`efficient operating region, commonly referred as the engine’s “sweet spot.” (Ex. 1661
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`[Davis Dec.] ¶¶59, 108-134.) Some hybrid vehicles could accomplish efficient engine
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`operation by employing “one-motor” architectures while other designs found
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`operational benefits by employing “two-motor” architectures. (Ex. 1661 [Davis Dec.],
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`see discussion regarding “series” hybrid vehicles at ¶¶61-69; “parallel” hybrid vehicles
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`at ¶¶70-86; and “series-parallel” hybrid vehicles ¶¶ 87-107.)
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`It was known before September 1998 that engines in conventional vehicles
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`operate inefficiently at low torque loads and vehicle speeds. (Ex. 1661 [Davis Dec.]
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`¶¶108-123, 125-126.)
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` Hybrid vehicles could overcome the
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`inefficiency of
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`conventional vehicles by including an electric motor (i.e., “traction motor”) with
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`sufficient power to propel the vehicle at low speeds and low loads. (Ex. 1661 [Davis
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`Dec.] ¶¶108-123.) By using a powerful enough motor, hybrid vehicles could restrict
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`engine operation solely to areas of high efficiency. (Ex. 1661 [Davis Dec.] ¶¶59, 108-
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`123.) As the vehicle speed and load increased, operation of the engine was permitted
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`when the speed and load were determined to be in a region where engine torque is
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`most efficiently produced—i.e., the engine’s “sweet spot.” (Ex. 1661 [Davis Dec.]
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`¶¶59, 108-134.)
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`For hybrid vehicles it was further known prior to September 1998 that engine
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`operation could be restricted to its “sweet spot” using a control strategy that typically
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`included: (1) an all-electric mode where only the motor propels the vehicle when
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`engine operation is inefficient (i.e., at low loads or vehicle speeds); (2) an engine-only
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`mode where the engine propels the vehicle when engine operation is efficient, such as
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`highway cruising at higher loads and speeds; and (3) an acceleration mode where the
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`both engine and motor are used to propel the vehicle when the demand is beyond the
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`maximum torque capabilities of the engine, such as during acceleration, passing, hill-
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`climbing. (Ex. 1661 [Davis Dec.] ¶¶84, 124-131.)
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`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3)
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`For purposes of this IPR, a claim is interpreted by applying its “broadest
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`reasonable construction.” 37 C.F.R. § 42.100(b).
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`Certain terms in the claims of the ’634 Patent were argued by the patentee with
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`respect to the ’634 Patent and other patents in the ’634 Patent family, and construed
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`by the Eastern District of Texas court in Paice LLC v. Toyota Motor Corp. et al., Case
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`No. 2:04-cv-211 and Paice LLC v. Toyota Motor Corp. et al., Case No. 2:07-cv-180,
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`(“Toyota Litigation,” Ex. 1664.)
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`Certain terms recited in the claims of the ’634 Patent were also argued by the
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`patentee and construed by a Maryland district court in Paice LLC v. Hyundai Motor
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`Corp. et al., Case No. 2:12-cv-0499, on July 24, 2014. (“Hyundai Litigation,” Ex. 1665.)
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`Certain terms that are related to terms recited in the claims of the ’634 Patent
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`were also discussed in prior institution decisions. (“Ford IPRs,” Ex. 1666.)
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`Petitioner proposes the following constructions for the purposes of this IPR
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`only. But for some of these terms, based on the specification, prosecution history, and
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`patentee admissions, Petitioner contends that the construction under the applicable
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`district court standards is narrower, and reserves the right to present a narrower
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`construction in district court litigation.
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`A.
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`road load (RL) and RL
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`The Eastern District of Texas and the District of Maryland courts have
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`construed the terms “road load,” “RL,” and “road load (RL)” as “the instantaneous
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`torque required for propulsion of the vehicle, which may be positive or negative in
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`value.” (Toyota Litigation, Ex. 1664 at 205-206; Hyundai Litigation, Ex. 1665 at 16,
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`96-97.)
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`For this proceeding, Petitioner proposes that “road load” be construed as “the
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`amount of instantaneous torque required to propel the vehicle, be it positive or
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`negative.” This is consistent with a prior PTAB construction. (See Ford v. Paice IPR
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`Decisions, Ex. 1666 at 20, 38, 51, 70, 84.) Petitioner contends the construction is
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`narrower under district court standards.
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`B.
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`setpoint (SP) and SP
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`The Texas and Maryland courts construed “setpoint (SP)” as being “a definite,
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`but potentially variable value at which a transition between operating modes may
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`occur” (Toyota Litigation, Ex. 1664 at 204, Hyundai Litigation, Ex. 1665 at 104.
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`Petitioner disagrees that this is the broadest reasonable construction.
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`The ’634 Patent claims, specification, and file history define “setpoint” as a
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`“predetermined torque value.” All claims recite a “setpoint” or “SP” value being
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`compared to either: (1) an engine torque value (e.g., claim 1); or (2) a torque-based
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`“road load” value (e.g., claim 33). No claims recite a “setpoint” or “SP” in comparison
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`to any other system variable. Likewise, the specification says “the microprocessor tests
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`sensed and calculated values for system variables, such as the vehicle’s instantaneous
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`torque requirement, i.e., the ‘road load’ RL . . . against setpoints, and uses the results
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`of the comparisons to control the mode of vehicle operation.” (’634 Patent, Ex. 1650,
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`40:16-26, emphasis added.) To do so (e.g., whether “RL < SP”), the “setpoint” would
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`have to be in the same measurement units as the “road load.”
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`During prosecution of the ’347 Patent – the parent of the ’634 Patent (See Ex.
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`1667) – patentee added the following limitation to pending claims 1 and 82 to
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`overcome a prior art rejection: “wherein the torque produced by said engine when
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`operated at said setpoint (SP) is substantially less than the maximum torque output
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`(MTO) of said engine.” (’347 File History, Ex. 1667 at 8-20.) Patentee then argued the
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`engine was operated only “when it is loaded . . . in excess of SP [setpoint], which is
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`now defined to be ‘substantially less than the maximum torque output (MTO) of said
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`engine.’” (’347 File History, Ex. 1667 at 21.)
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`This proposed construction is consistent with recent PTAB constructions.
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`(Ford IPRs, Ex. 1666 at 21, 40, 72, 86.) Accordingly the broadest reasonable
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`construction of “setpoint (SP)” and “SP” as used in the challenged claims is a
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`“predetermined torque value.”
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`C.
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` “abnormal and transient conditions”
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`Claim 32 requires “operating the engine at torque output levels less than the SP under
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`abnormal and transient conditions to satisfy driveability and/or safety considerations.” The ’634
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`Patent does not define “abnormal and transient conditions,” nor describe its full scope
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`with reasonable certainty. Claim 22 of the ’347 Patent, the parent of the ‘634 Patent,
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`defines “abnormal and transient conditions” as “comprising starting and stopping of the
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`engine and provision of torque to satisfy drivability or safety considerations.” (’347
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`Patent, Ex. 1364, Claim 22.)
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`Thus, although Petitioner does not admit that the term “abnormal and transient
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`conditions” satisfies 35 U.S.C. § 112, the limitation appears to include “starting and
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`stopping of the engine and provision of torque to satisfy drivability or safety
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`considerations.” Accordingly, for purposes of this proceeding only, Petitioner
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`construes “abnormal and transient conditions” as comprising “starting and stopping of the
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`engine and provision of torque to satisfy drivability or safety considerations.”
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`VIII. UNPATENTABILITY GROUNDS
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`The references below render the claimed subject matter invalid under 35 U.S.C.
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`§ 103 and the Petitioner therefore has a reasonable likelihood of prevailing as to each
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`of the following grounds of unpatentability. 35 U.S.C. § 314(a); 37 C.F.R. §
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`42.104(b)(4).
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`A. Ground 1 – Claims 4 and 28 Are Obvious Over Ibaraki ’882
`In View Of Yamaguchi ’263 In Further View Of The General
`Knowledge Of A POSA
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`As provided below and by the accompanying declaration of Dr. Davis, claims
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`12, 4 and 28 are unpatentable as being obvious under 35 U.S.C. § 103 over Ibaraki
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`2 Petitioner’s analysis of Independent Claim 1 is incorporated herein solely to provide
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`’882 (Ex. 1652 [Ibaraki ’882]) in view of Yamaguchi ’263 (Ex. 1653 [Yamaguchi ‘263])
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`and the general knowledge of a POSA.
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`1.
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`Independent Claim 1
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`… [1.0] A hybrid vehicle, comprising:
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`Ibaraki ’882 states that the “present invention” pertains to a “drive control
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`apparatus” for controlling a “hybrid vehicle” that may be propelled by an internal
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`combustion (IC) engine and an electric motor. (Ex. 1552 [Ibaraki ’882] at 1:9-14; Ex.
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`1556 [Davis Dec.] at ¶¶181-184.) As illustrated below, Ibaraki ’882 generally discloses
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`a hybrid vehicle including a controller (128), which is used to control an internal
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`combustion engine (112) and an electric motor (114) (Ex. 1552 [Ibaraki ’882] at 19:11-
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`54.)
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`a complete analysis of dependent claims 4, 13-15, 25, 28, 29, 32, 67 and 79 raised
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`below. Petitioner has already raised Independent Claim 1 in view of Ibaraki ’882 in
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`Ground 1 of IPR2015-00784.
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`Ex. 1552 [Ibaraki ’882] at Figure 8.
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`… [1.1] one or more wheels;
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`Ibaraki ’882 also discloses that power from the internal combustion engine and
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`motor are “simultaneously or selectively transferred to a transmission 16, and to right
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`and left drive wheels via an output device 18.” (Ex. 1552 [Ibaraki ‘882] at 11:12-16,
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`emphasis added; see also Id. at 19:18-28; Ex. 1556 [Davis Dec.] at ¶¶ 185-187.) Further,
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`Ibaraki ‘882 discloses “drive wheels 120” (highlighted in red in Figure 8 below) as part
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`of the described hybrid vehicle:
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`Ex. 1552 [Ibaraki ‘882] at Figure 8 (annotated)