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
`
`IPR Case No.: IPR2015-00790
`
`______________
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`
`
`______________
`
`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
`
`IPR Case No.: IPR2015-00790
`
`______________
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`
`
`Case No.: IPR2015-00790
`Attorney Docket No.: FPGP0104IPR12
`
`
`I.
`
`Response to Paice’s Observations
`
`Response to Observation 1. Dr. Davis’ deposition testimony does not
`
`contradict his reply declaration testimony. First, counsel’s questions related to
`
`whether the electric motor used in Ibaraki ’882 and the electric motor used in U.S.
`
`(Kawakatsu) “play an entirely different role in the two control strategies.” (Ex.
`
`2611 31:3-32:9). In the portion of testimony cited by Paice, Dr. Davis testified the
`
`two control strategies differ because “in Figure 11 [of Ibaraki ’882] the motor does
`
`provide all the torque requirements of the vehicle at very low speeds.” (Ex. 2611 at
`
`32:12-13.) Regardless, Dr. Davis testified that with regards to Figure 11’s
`
`boundary line B “the whole thing is part of the boundary, the setpoint” (i.e., the flat
`
`portion and curved portion of boundary line B). (Ex. 2611 at 33:8-9.) Dr. Davis
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`also testified that “when you go to [sic] far to the left” on Figure 11 (i.e., low
`
`vehicle speeds), “you can’t operate the engine” and all the torque required to
`
`propel the vehicle in this region of the graph indicates “operation by the motor
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`only.” (Ex. 2611 at 33:10:34-1.) Dr. Davis testimony demonstrates that the engine
`
`is “being controlled not to operate” at lower vehicle speeds because Figure 11
`
`confirms this to be a “region where the electric motor alone operates.” (Ex. 2611 at
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`34:2-36:9.)
`
`Response to Observation 2. Dr. Davis’ deposition testimony does not
`
`contradict his reply declaration testimony. As stated in response to observation 1,
`
`1
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`Case No.: IPR2015-00790
`Attorney Docket No.: FPGP0104IPR12
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`Dr. Davis’ testified that for boundary line B “the whole thing is part of the
`
`boundary, the setpoint” (i.e., the flat portion and curved portion of boundary line
`
`B). (Ex. 2611 at 33:8-9.) Dr. Davis testified that “when you go to far to the left” on
`
`Figure 11 (i.e., low vehicle speeds), “you can’t operate the engine” and all the
`
`torque required to propel the vehicle in this region of the graph indicates
`
`“operation by the motor only.” (Ex. 2611 at 33:10:34-1.) Dr. Davis testimony
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`simply demonstrates that the engine is “being controlled not to operate” at lower
`
`vehicle speeds because Figure 11 confirms this to be a “region where the electric
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`motor alone operates.” (Ex. 2611 at 34:2-36:9.)
`
`Response to Observation 3. When the entire portion of testimony
`
`surrounding the two snippets cited by Paice are read in context, Dr. Davis’
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`testimony is not contradictory. (See Ex. 2611 at 43:1-53:3.) Specifically, Dr. Davis
`
`testified that Ibaraki ’882 discloses a “shift actuator” that can “place the
`
`transmission” in a “drive position” that includes “park, reverse, neutral, drive and
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`low.” (Ex. 2611 at 43:1-17.) Dr. Davis testified that a “drive source selecting data
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`map is provided for each of the[se] drive positions of the transmission” (i.e., park,
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`reverse, neutral, drive and low). (Ex. 2611 at 43:18-25.) Dr. Davis further testified
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`that Ibaraki ’882 does not use a different data map (as illustrated by Figure 11) “for
`
`every different gear” of the transmission when a specific drive position (e.g.,
`
`“drive”) has been selected because that “wouldn’t make any sense.” (Ex. 2611 at
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`2
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`Case No.: IPR2015-00790
`Attorney Docket No.: FPGP0104IPR12
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`52:12-14.)
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`Response to Observation 4. Dr. Davis’ deposition testimony does not
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`contradict his reply declaration testimony. Dr. Davis fully testified that “one of
`
`ordinary skill would see that line C is either at the upper bound or slightly below or
`
`possibly below the upper bound . . . for the engine.” (Ex. 2611 at 62:6-10.) Earlier
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`in his deposition, Paice’s counsel had similarly asked whether the words “upper
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`bound of [the] engine MTO in any gear” appear anywhere “with respect to Figure
`
`11 of Ibaraki ’882.” (Ex. 2611 at 7-9.) Dr. Davis directed counsel to his reply
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`declaration (IPR2015-00787, Ex. 1809) where he relied on a textbook introduced
`
`by Paice (IPR2015-00787, Ex. 2711)1 to explain how the “upper bound” of Figure
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`11 would have been understood by PHOSITA. (Ex. 2611 at 53:7-54:21.) Dr. Davis
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`testified that paragraph 30 of his reply declaration in IPR2015-00787 (Ex. 1809)2
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`illustrates a vehicle drive graph having a dashed curved line that is the “upper
`
`bound of each individual MTO curve that has been modified by the transmission
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`and provided at the drive wheels.” (Ex. 2611 at 53:13-23.) Dr. Davis testified that
`
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`1 IPR2015-00787, Ex. 2711 was not likewise produced in this proceeding. Dr.
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`Davis included a copy of the complete chapter of the textbook introduced by Paice
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`in IPR2015-00787. (See IPR2015-00787, Ex. 1802; IPR2015-00722, Ex. 1706.)
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`2 Dr. Davis provided this same evidence at paragraphs 30 of his declaration in this
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`proceeding. (Ex. 1713.)
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`3
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`Case No.: IPR2015-00790
`Attorney Docket No.: FPGP0104IPR12
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`“at any given vehicle speed the engine is incapable of providing any torque above
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`that [curved] line.” (Ex. 2611 at 54:1-3.) Dr. Davis provided the same answer when
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`counsel repeatedly questioned him about the “upper bound curve” shown in Figure
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`11 in comparison to the curved line shown by Fig. 2.13 of Ex. 1809. (Ex. 2611 at
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`37:6:42:8.)
`
`Response to Observation 5. Dr. Davis’ deposition testimony does not
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`contradict his reply declaration testimony. As explained in response to Observation
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`4, Dr. Davis testified that paragraph 30 of his reply declaration in IPR2015-00787
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`(Ex. 1809; IPR2015-00790, Ex. 1713 at ¶30) illustrates a graph from Ex. 2711
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`having a dashed curved line that is the “upper bound of each individual MTO
`
`curve that has been modified by the transmission and provided at the drive
`
`wheels.” (Ex. 2611 at 53:13-23.) Dr. Davis also testified “one of ordinary skill in
`
`the art” would understand that boundary line C could be adjusted to be slightly
`
`below the engine’s MTO to “achieve a little bit better efficiency” or to ensure the
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`engine has “a little bit of reserve.” (Ex. 2611 at 38:25-39:9.) Dr. Davis testified
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`that by looking at the engine graph of Ibaraki ’882’s (Figure 5) “sweet spot,” a
`
`PHOSITA would understand that boundary line C could be adjusted slightly below
`
`the engine’s MTO to narrow the engine operation range and “get even a little bit
`
`better efficiency.” (Ex. 2611 at 62:13-4.)
`
`Response to Observation 6. Dr. Davis’ deposition testimony does not
`
`4
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`Case No.: IPR2015-00790
`Attorney Docket No.: FPGP0104IPR12
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`contradict his reply declaration testimony. Paragraph 33 states that the “direct
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`drive” curve is the “engine’s MTO” which is “not modified and will be far below
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`the hyperbolic ‘ideal tractive force’” curve. (Ex. 1713 at ¶33.) Paragraph 34
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`similarly states that “without a transmission” the engine MTO curve labeled “direct
`
`drive” is also “below the engine MTO curve at the wheels for each gear ratio of the
`
`transmission that follows the hyperbolic ‘ideal tractive force’ curve.” (Ex. 1713 at
`
`¶34.) Dr. Davis’ testimony confirmed these paragraphs to be accurate by testifying
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`that the “direct drive” curve illustrates either: (1) a “final drive ratio” that is the
`
`engine’s MTO curve at the drive wheels which is unmodified by the transmission
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`(Ex. 2611 at 69:19-70:2); or (2) an engine MTO curve which is “not modified or
`
`multiplied by a particular gear ratio” (Ex. 2611 at 70:3-7).
`
`Response to Observation 7. Dr. Davis’ deposition testimony does not
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`contradict his reply declaration testimony. Paragraph 33 of Dr. Davis’ reply
`
`declaration states that the “direct drive” curve shown in Ex. 2613 (pg. 20) is an
`
`“engine’s MTO” which is “not modified and will be far below the hyperbolic
`
`‘ideal tractive force’” curve. (Ex. 1713 at ¶33.) Paragraph 34 continues by
`
`explaining that “without a transmission” the engine MTO curve labeled “direct
`
`drive” is also “below the engine MTO curve at the wheels for each gear ratio of the
`
`transmission that follows the hyperbolic ‘ideal tractive force’ curve.” (Ex. 1713 at
`
`¶34.) Dr. Davis’ testimony confirmed these paragraphs to be accurate by testifying
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`5
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`Case No.: IPR2015-00790
`Attorney Docket No.: FPGP0104IPR12
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`that the “direct drive” curve illustrates either: (1) a “final drive ratio” that is the
`
`engine’s MTO curve at the drive wheels which is unmodified by the transmission
`
`(Ex. 2611 at 69:19-70:2); or (2) an engine MTO curve which is “not modified or
`
`multiplied by a particular gear ratio” (Ex. 2611 at 70:3-7).
`
`Response to Observation 8. Dr. Davis’ May 13, 2016 deposition testimony
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`does not contradict his January 26, 2016 deposition testimony. First, the line of
`
`questioning leading up to the portion of testimony cited by counsel related to
`
`whether or not Dr. Davis agreed with a specific statement found within Mr.
`
`Hannemann’s declaration. (Ex. 2611 at 72:11-73:2.) In attempting to answer this
`
`question, Dr. Davis testified that Ibaraki ’882 discloses a first embodiment where
`
`calculations are performed in “real time” using the Figure 5 engine graph in order
`
`to determine when to operate the engine or motor. (Ex. 2611 at 79:9-80:23; see
`
`also complete answer at 75:8-79:7; Ex. 1652 (Ibaraki ’882) at 12:8-13:16.) Dr.
`
`Davis testified that instead of performing real time calculations, “Column 25” of
`
`Ibaraki ’882 discusses an alternative that “us[es] Figure 5 directly” to determine
`
`“whether to select motor drive mode or then whether to . . . select . . . [the] engine
`
`drive mode.” (Ex. 2611 at 73:3-74:2; see also complete answer at 75:8-79:7.) Dr.
`
`Davis testified (as he did in his January 26th testimony) that the alternative
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`embodiment of making mode selections based on the Figure 5 engine graph was
`
`used to derive the Figure 11 vehicle drive torque graph used and discussed by the
`
`6
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`Case No.: IPR2015-00790
`Attorney Docket No.: FPGP0104IPR12
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`second embodiment. (Ex. 2611 at 78:21-79:7; Ex. 2610 at 52:18-19:2.) Lastly, Dr.
`
`Davis testified how the alternative to the first embodiment using the Figure 5
`
`engine graph is related to the Figure 11 vehicle drive torque graph.
`
`You know, in the first embodiment you're talking about a way of
`
`doing it, for example, as I showed, off of the values displayed in
`
`Figure 5. In the second embodiment, so you're making decisions based
`
`on values located at the engine, so engine torque requirements to
`
`propel the vehicle, and the engine speed. In the second embodiment
`
`you're taking those engine requirements to determine when it's
`
`efficient to operate the engine, and then you're translating through the
`
`various gear ratios of the gear box or transmission to the vehicle speed
`
`or the drive wheels of the vehicle. So now you're transferring from
`
`going from the engine side, engine torque, engine speed, to the
`
`modified engine torque as provided at the wheels as a function of the
`
`speed of the vehicle or the rotational speed of the wheels. So you're
`
`using Figure 5 at the engine to determine where is it efficient to
`
`operate the engine in order to determine your setpoint values that are
`
`used in Figure 11 of the second embodiment.
`
`(Ex. 2611 at 79:14-80:8.)
`
`Response to Observation 9. Dr. Davis’ deposition testimony does not
`
`contradict his reply declaration testimony. First, just prior to the testimony cited by
`
`Paice, Dr. Davis stated that he “didn’t have the benefit of having [the] An”
`
`reference to answer counsel’s question. (Ex. 2611 at 8:21-9:1.) Even without being
`
`provided the reference, Dr. Davis was able to recall that An “discloses that the
`
`7
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`Case No.: IPR2015-00790
`Attorney Docket No.: FPGP0104IPR12
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`sizing of the electric motor determines whether or not the HEV is capable of ZEV
`
`operation.” (Id.) When counsel did finally provide the An reference, Dr. Davis
`
`repeatedly testified how a person having ordinary skill in the art would understand
`
`the An reference as teaching that an electric motor should be sufficiently sized so
`
`as to be capable of meeting all the urban driving requirements. (Ex. 2611 at 10:15-
`
`18:12.) Specifically, Dr. Davis’ was able to identify for counsel sections of the An
`
`reference disclosed to a PHOSITA evaluating electric motors using the Federal
`
`Urban Driving Schedule (FUDS). (Ex. 2611 at 11:3-12:12; 18:2-12.)
`
`Response to Observation 10. Dr. Davis’ deposition testimony does not
`
`contradict his reply declaration testimony. In fact, the cited testimony demonstrates
`
`that Paice’s counsel abruptly stopped Dr. Davis from answering in order to get the
`
`particular snippet of testimony used for observation 10. (Ex. 2611 at 23:9-12.)
`
`Regardless, Dr. Davis did testify that a PHOSITA would understand that Suga
`
`teaches a test bed for electric motors that could be used “whether it’s electric mode
`
`of operation in a hybrid electric vehicle or whether it’s just simply an electric
`
`vehicle.” (Ex. 2611 at 23:20-23.)
`
`Response to Observation 11. Dr. Davis’ deposition testimony does not
`
`contradict his reply declaration testimony. The cited testimony is correct as Suga is
`
`a U.S. patent disclosing a particular way of testing by operating an electric motor
`
`over the LA4 (FUDS) driving schedule. And Dr. Davis previously testified that a
`
`8
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`Case No.: IPR2015-00790
`Attorney Docket No.: FPGP0104IPR12
`
`PHOSITA would understand that Suga teaches a test bed for electric motors that
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`could be used “whether it’s electric mode of operation in a hybrid electric vehicle
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`or whether it’s just simply an electric vehicle.” (Ex. 2611 at 23:20-23.)
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`Respectfully submitted,
`
`
`
`
`
`
`Dated: May 27, 2016
`
`
` /John P. Rondini/
`Frank A. Angileri (Reg. No. 36,733)
`John E. Nemazi (Reg. No. 30,876)
`John P. Rondini (Reg. No. 64,949)
`Christopher C. Smith (Reg. No. 59,669)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`DENTONS US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`650 798 0300
`
`Attorneys for Petitioner
`
`
`9
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`
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`Case No.: IPR2015-00790
`Attorney Docket No.: FPGP0104IPR12
`
`Certificate of Service
`
`The undersigned hereby certifies that on May 27, 2016, a complete and
`entire copy of PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATIONS ON CROSS EXAMINATION, was served
`via electronic mail by serving the correspondence email address of record as
`follows:
`
`
`BACK-UP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`Ruffin B. Cordell, Reg. No. 33,487
`Linda L. Kordziel, Reg. No. 39,732
`Brian J. Livedalen, Reg. No. 67,450
`Daniel A. Tishman
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0015IP8@fr.com;
`
`Riffe@fr.com
`
`
`Respectfully submitted,
`
`
` /John P. Rondini/
`Frank A. Angileri (Reg. No. 36,733)
`John E. Nemazi (Reg. No. 30,876)
`John P. Rondini (Reg. No. 64,949)
`Christopher C. Smith (Reg. No. 59,669)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Lissi Mojica (Reg. No. 63,421)
`Kevin Greenleaf (Reg. No. 64,062)
`Dentons US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`
`Attorneys for Petitioner
`
`10
`
`LEAD COUNSEL
`Timothy W. Riffe, Reg. No. 43,881
`
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0015IP8@fr.com;
`
`Riffe@fr.com
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