Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 34
`Entered November 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00790
`Patent 7,237,634 B2
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 34
`Entered November 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00790
`Patent 7,237,634 B2
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`
`
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`IPR2015-00790
`Patent 7,237,634 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`Ford Motor Company (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 4, 13–15, 25, 28, 29, 32, 67, and 79 of U.S.
`Patent No. 7,237,634 B2 (Ex. 1650, “the ’634 patent”). Paper 1 (“Pet.”).
`Paice LLC and The Abell Foundation, Inc. (collectively, “Patent Owner”)
`filed a Preliminary Response in unredacted and redacted forms. Papers 10,
`11 (“Prelim. Resp.”). Patent Owner also filed a Motion to Seal. Paper 12
`(“Motion to Seal”).
`Pursuant to 35 U.S.C. § 314, we instituted inter partes review of the
`ʼ634 patent, on November 9, 2015, under 35 U.S.C. § 103(a), as to claims 4
`and 28 as obvious over Ibaraki ’882,1 Yamaguchi,2 and the general
`knowledge of a person with ordinary skill in the art; claims 13‒15 as
`obvious over Ibaraki ’882, Masding/Bumby 1988,3 and Admitted Prior Art
`(APA); claim 25 as obvious over Ibaraki ’882 and Kawakatsu;4 claim 29 as
`
`
`1 U.S. Patent No. 5,789,882, issued Aug. 4, 1998 (Ex. 1652) (“Ibaraki
`ʼ882”).
`2 U.S. Patent No. 5,865,263, issued Feb. 2, 1999 (Ex. 1653) (“Yamaguchi”).
`3 P.W. Masding, J.R. Bumby, and N. Herron, A Microprocessor Controlled
`Gearbox for Use in Electric and Hybrid-Electric Vehicles, TRANSACTIONS
`OF THE INSTITUTE OF MEASUREMENT AND CONTROL (1988) (Ex. 1654)
`(“Masding/Bumby 1988”).
`4 U.S. Patent No. 4,335,429, issued June 15, 1982 (Ex. 1655)
`(“Kawakatsu”).
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`obvious over Ibaraki ’882 and Vittone;5 claim 32 as obvious over Ibaraki
`’882 and Ibaraki ’626;6 and claims 67 and 79 as obvious over Ibaraki ’882
`and Suga.7 Paper 13 (“Dec.”).
`Patent Owner filed a Response (Paper 18, “PO Resp.”), and Petitioner
`filed a Reply (Paper 24, “Pet. Reply”).8 Oral hearing was held on June 28,
`2016, and the hearing transcript has been entered in the record. Paper 33
`(“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Pursuant to our jurisdiction under 35 U.S.C. § 6, we conclude, first, that
`Petitioner is estopped from maintaining its challenge in this proceeding
`against claim 14. For the reasons discussed below, we are persuaded that
`Petitioner has shown by a preponderance of the evidence that claims 4, 13,
`15, 25, 28, 29, 32, 67, and 79 of the ʼ634 patent are unpatentable.
`
`
`5 Oreste Vittone, Fiat Conceptual Approach to Hybrid Cars Design, 12TH
`INTERNATIONAL ELECTRIC VEHICLE SYMPOSIUM (1994) (Ex. 1656)
`(“Vittone”).
`6 U.S. Patent No. 6,003,626, issued Dec. 21, 1999 (Ex. 1657)
`(“Ibaraki ʼ626”).
`7 U.S. Patent No. 5,623,104, issued Apr. 22, 1997 (Ex. 1658) (“Suga”).
`8 In addition, Patent Owner filed a Motion for Observation on Cross-
`Examination (Paper 26) and Petitioner filed a Response to Motion for
`Observation on Cross-Examination (Paper 29), both of which have been
`considered.
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`B. Related Proceedings
`The ’634 patent is involved in Paice LLC v. Ford Motor Co., No.
`1-14-cv-00492, filed on February 19, 2014, in the United States District
`Court for the District of Maryland. Pet. 2. Petitioner twice filed an earlier
`Petition for inter partes review of the ’634 patent, and we instituted trial in
`both proceedings and subsequently entered final written decisions. Ford
`Motor Co. v. Paice LLC & The Abell Foundation, Inc., Case IPR2014-00904
`(Papers 13 and 41), and Ford Motor Co. v. Paice LLC & The Abell
`Foundation, Inc., Case IPR2014-01416 (Papers 9 and 26). The ’634 patent
`also is involved in the following inter partes review proceedings: IPR2015-
`00606, IPR2015-00722, IPR2015-00758, IPR2015-00784, IPR2015-00785,
`IPR2015-00787, IPR2015-00791, IPR2015-00799, IPR2015-00800, and
`IPR2015-00801.
`C. The ʼ634 Patent
`The ’634 patent describes a hybrid vehicle with an internal
`combustion engine, at least one electric motor, and a battery bank, all
`controlled by a microprocessor that directs torque transfer between the
`engine, the motor, and the drive wheels of the vehicle. Ex. 1650, 17:17–56,
`Fig. 4. The microprocessor compares the vehicle’s torque requirements and
`the engine’s torque output against a predefined setpoint and uses the results
`of the comparison to control the vehicle’s mode of operation, e.g., straight-
`electric, engine-only, or hybrid. Id. at 40:16–49. The microprocessor
`utilizes a hybrid control strategy that operates the engine only in a range of
`high fuel efficiency, which occurs when the instantaneous torque required to
`drive the vehicle, or road load (RL), reaches a setpoint (SP) of
`approximately 30% of the engine’s maximum torque output (MTO). Id. at
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`20:61–67; see also id. at 13:64–65 (“the engine is never operated at less than
`30% of MTO, and is thus never operated inefficiently”). Operating the
`engine in a range above the setpoint but substantially less than the maximum
`torque output maximizes fuel efficiency and reduces pollutant emissions of
`the vehicle. Id. at 15:55–58.
`D. Illustrative Claim
`Petitioner challenges claims 4, 13–15, 25, 28, 29, 32, 67, and 79 of the
`’634 patent. Pet. 3–59. Although not challenged, claim 1, from which all
`challenged claims depend, is illustrative of the claims at issue and is
`reproduced below:
`1.
`A hybrid vehicle, comprising:
`
`one or more wheels;
`
`an internal combustion engine operable to propel
`the hybrid vehicle by providing torque to the one or more
`wheels;
`a first electric motor coupled to the engine;
`
`a second electric motor operable to propel the
`
`hybrid vehicle by providing torque to the one or more wheels;
`
`a battery coupled to the first and second electric
`motors, operable to:
`provide current to the first and/or the second
`electric motors; and
`accept current from the first and second
`electric motors; and
`a controller, operable to control the flow of
`electrical and mechanical power between the engine, the
`first and the second electric motors, and the one or more
`wheels;
`
`wherein the controller is operable to operate the
`engine when torque required from the engine to propel the
`hybrid vehicle and/or to drive one or more of the first or the
`second motors to charge the battery is at least equal to a
`setpoint (SP) above which the torque produced by the engine is
`efficiently produced, and wherein the torque produced by the
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`engine when operated at the SP is substantially less than the
`maximum torque output (MTO) of the engine.
`Ex. 1650, 58:2–27.
`
`II. ANALYSIS
`A. Petitioner Estoppel
`On December 10, 2015, we rendered a final written decision of claims
`1, 14, 16, 18, and 24 of the ’634 patent in IPR2014-00904. Ford Motor Co.
`v. Paice LLC & The Abell Foundation, Inc., Case IPR2014-00904 (PTAB
`December 10, 2015) (Paper 41). Patent Owner argues that, pursuant to
`35 U.S.C. § 315(e)(1), Petitioner may not maintain its challenge of claim 14.
`PO Resp. 16. Petitioner responds that it is not estopped because it was
`necessary for it to file multiple petitions to address the ’634 patent’s many
`dependent claims, such as dependent claims 4 and 28, which depend from
`independent claim 1. Pet. Reply 2‒3. Accordingly, Petitioner argues that
`the Board “may exercise its discretion in maintaining the current proceeding
`against claim 1 because it is incorporated within the body of the presently
`challenged dependent claims ‘as a matter of dependency.’” Id. at 3.
`Under 35 U.S.C. § 315(e)(1), a petitioner who has obtained a final
`written decision on a patent claim in an inter partes review may not
`maintain a subsequent proceeding with respect to that same claim on a
`ground that it “reasonably could have raised” in the original proceeding.
`Specifically, section 315(e)(1) provides:
`(e) Estoppel.—
`(1) Proceedings before the office.—The petitioner in
`an inter partes review of a claim in a patent under this
`chapter that results in a final written decision under section
`318(a) . . . may not request or maintain a proceeding before
`the Office with respect to that claim on any ground that the
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`petitioner raised or reasonably could have raised during that
`inter partes review.
`
`
`On December 10, 2015, a Final Written Decision was entered in
`IPR2014-00904, in which we determined that claims 1, 14, 16, 18, and 24 of
`the ’634 patent are unpatentable. Petitioner in this proceeding is the same
`Petitioner in IPR2014-00904. The grounds raised by Petitioner in IPR2014-
`00904 against claim 14 is not the same as the ground raised against claim 14
`in this proceeding. Nonetheless, Ibaraki ’882 was cited during prosecution
`that led to the ’634 patent and is listed on the face of the ’634 patent.
`Ex. 1650. APA was similar known as it is part of the ’634 patent. Id.
`Petitioner does not argue that it reasonably could not have raised its
`challenge to claim 14 based on Ibaraki ’882 in IPR2014-00904. Pet. Reply
`2‒3. Similarly, Petitioner does not argue that it reasonably could not have
`raised its challenge to claim 14 based on Masding/Bumby 1988 and APA in
`IPR2014-00904. Id. We determine that Petitioner reasonably could have
`raised this challenge in IPR2014-00904. Accordingly, Petitioner is estopped
`under 35 U.S.C. § 315(e)(1) from maintaining the ground based on Ibaraki
`’882 against claim 14. We dismiss the inter partes review with respect to
`claim 14.
`Although Petitioner argues that we can maintain the proceeding with
`respect to independent claim 1 (see Pet. Reply 3), Petitioner has not
`challenged independent claim 1 in this proceeding under any grounds, and,
`therefore, we do not provide a final written decision on the merits with
`respect to claim 1. However, we determine it is necessary to address the
`parties’ contentions with respect to independent claim 1 because claims 4,
`13, 15, 25, 28, 29, 32, 67, and 79 depend from claim 1. We do not otherwise
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`provide a final written decision on the merits with respect to claim 1 or
`claim 14, or again hold those claims to be unpatentable.
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs. LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under the broadest reasonable
`interpretation standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`1. “Set Point” or “SP”
`The term “setpoint” or “SP” is recited in independent claim 1 and
`dependent claims 4, 13, 15, 25, 28, 29, 32, 67, and 79. Petitioner proposes
`that “setpoint” or “SP” be construed, in the context of these claims, as
`“predetermined torque value.” Pet. 12–13. Patent Owner argues that
`“setpoint” should be construed as “a definite, but potentially variable value
`at which a transition between operating modes may occur.” PO Resp. 7‒
`11.9
`
`
`9 In our Decision to Institute, and upon taking into consideration the parties’
`arguments and supporting evidence, we interpreted “setpoint” or “SP” to
`mean “predetermined torque value that may or may not be reset.” Dec. 8‒
`10. Petitioner agrees with that interpretation, while Patent Owner does not.
`Pet. Reply 2; PO Resp. 7–11.
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`We agree with Petitioner that the claims compare the setpoint either to
`an engine torque value or a torque based “road load” value. Pet. 12–13.
`Claim 1 recites a condition “when torque required from the engine to propel
`the hybrid vehicle . . . is at least equal to a setpoint (SP).” Ex. 1650, 58:19‒
`27.
`
`Nothing in the Specification precludes a setpoint from being reset,
`after it has been set. A setpoint for however short a period of time still is a
`setpoint. Accordingly, we construe “setpoint” and “SP” as “predetermined
`torque value that may or may not be reset.”
`Patent Owner argues that the claims and the specification of the ’634
`patent “make clear that a ‘setpoint’ is not simply a numerical value divorced
`from the context of the control system,” and that “‘setpoint’ serves the
`crucial function of marking the transition from one claimed mode to another,
`and in particular, the transition from propelling the vehicle with the motor to
`propelling the vehicle with the engine.” PO Resp. 8. This argument is
`misplaced. Although such use of a setpoint is described by other language
`in the ’634 patent specification, it is not an intrinsic property of a setpoint
`and is not a necessary and required use of all setpoints. In that regard, we
`further note the following passage in the ’634 patent specification, which
`supports not reading a mode switching requirement (i.e., transition
`requirement) into the term “setpoint”:
`the values of the sensed parameters in response to which
`the operating mode is selected may vary . . ., so that the operating
`mode is not repetitively switched simply because one of the
`sensed parameters fluctuates around a defined setpoint.
`Ex. 1650, 19:67‒20:6 (emphasis added).
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`It is improper to add an extraneous limitation into a claim, i.e., one
`that is added wholly apart from any need for the addition to accord meaning
`to a claim term. See, e.g., Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948,
`950 (Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). It is important not to import into
`a claim limitations that are not a part of the claim. Superguide Corp. v.
`DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). For
`example, a particular embodiment appearing in the written description may
`not be read into a claim when the claim language is broader than the
`embodiment. Id.; see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993). That is no different even if the patent specification describes only a
`single embodiment. Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898,
`906 (Fed. Cir. 2004).
`Patent Owner brings to our attention that the U.S. District Court for
`the Eastern District of Texas and the U.S. District Court for the District of
`Maryland both have construed “setpoint” to mean “a definite, but potentially
`variable value at which a transition between operating modes may occur.”
`PO Resp. 7 n.1. We note that that construction also does not require that an
`operating mode be changed at a setpoint, as Patent Owner urges. Instead,
`the construction of the district courts sets forth that a transition between
`operating modes “may occur” at a setpoint, which is consistent with our
`construction here.
`Patent Owner additionally argues that “setpoint” should not be limited
`to a torque value, because the Specification makes clear that it also can be
`the state of charge of a battery. PO. Resp. 11. Patent Owner cites to the
`following passage in the Specification:
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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.
`Ex. 1650, 40:22–31 (emphasis added). This argument also is misplaced. As
`we noted above, independent claim 1 requires a comparison of the setpoint
`either to an engine torque value or a torque based “road load” value. Thus,
`in the context of claim 1, and claims dependent therefrom, a setpoint must be
`a torque value, and not some state of charge of a battery.
`For reasons discussed above, we construe “setpoint” and “SP” as
`“predetermined torque value that may or may not be reset.”
`2. The “operating” limitations
`Patent Owner asserts that the challenged claims require a comparison
`of the torque required to propel the hybrid vehicle to a setpoint (SP) and also
`to the maximum torque output (MTO). PO Resp. 11–15. The assertion is
`based on the requirements in claim 1 of “when torque required to propel the
`hybrid vehicle . . . is at least equal to a setpoint (SP).” Id.
`In the above discussion of the construction of setpoint, we already
`noted that claim 1 requires a comparison of the torque required to propel the
`hybrid vehicle to a setpoint because of the claim recitations “when torque
`required from the engine to propel the hybrid vehicle . . . is at least equal to a
`setpoint (SP).” Petitioner has not advanced any cogent reasoning why no
`such comparison is required by the claims. We determine that the claims
`require a comparison of the torque required to propel the hybrid vehicle to a
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`setpoint (SP) and also to a maximum torque output (MTO). That, however,
`does not mean the claims exclude the comparison of other parameters.
`3. “abnormal and transient conditions”
`Dependent claim 32 recites that the controller operates the engine “at
`torque output levels less than SP under abnormal and transient conditions to
`satisfy drivability and/or safety considerations.” Ex. 1650, 60:54–57.
`In our Decision to Institute, we interpreted “abnormal and transient
`conditions” to include starting the engine and starting the engine. Dec. 9‒
`11. Neither party has indicated that our interpretation was improper and we
`do not perceive any reason or evidence that now compels any deviation from
`our initial interpretation. Accordingly, we interpret “abnormal and transient
`conditions” to include “starting the engine and stopping the engine.”
`C. Claims 4 and 28 – Obviousness over Ibaraki’ 882, Yamaguchi, and
`the General Knowledge of a Person with Ordinary Skill
`Petitioner contends that claims 4 and 28 are unpatentable under 35
`U.S.C. § 103(a) as obvious over Ibaraki ʼ882, Yamaguchi, and the
`knowledge of a person with ordinary skill in the art. Pet. 14–38.
`1. Ibaraki ʼ882 (Ex. 1652)
`Ibaraki ’882 describes a drive control apparatus and method for a
`hybrid vehicle equipped with two drive power sources consisting of an
`electric motor and engine such as an internal combustion engine. Ex. 1652,
`1:9–14. Drive control apparatus includes controller 128 that includes a drive
`source selecting means 160. Drive source selecting means is adapted to
`select one or both of engine 112 and motor 114 as the drive power source or
`sources according to a drive source selecting data map stored in memory
`means 162. Id. at 20:38–43, Figs. 8 and 9. In particular, controller 128 has
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`a MOTOR DRIVE mode in which motor 114 is selected as the drive power
`source, an ENGINE DRIVE mode in which the engine 112 is selected as the
`drive power mode source, and an ENGINE-MOTOR DRIVE mode in which
`both the engine 112 and the motor 114 are selected as the drive power
`sources. Id. at 20:43–49.
`Figure 11, reproduced below, depicts a graph which represents a
`predetermined relationship between the vehicle drive torque and running
`speed V and the three drive modes. Id. at 20:50–53.
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`
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`Figure 11 shows a graph which represents a predetermined
`relationship between the vehicle drive torque and running speed.
`Drive source selecting means 160 (Fig. 9) selects the MOTOR
`DRIVE mode when the vehicle running condition as represented by the
`current vehicle drive torque and speed V is held within the range below the
`first boundary line B. When the vehicle running condition is held within the
`range between the first and second boundary lines B and C, the drive source
`selecting means 160 selects the ENGINE DRIVE mode. When the vehicle
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`running condition is in the range above the second boundary line C, the
`drive source selecting means 160 selects the ENGINE[-MOTOR] DRIVE
`mode. Id. at 20:59–21:1. Ibaraki ’882 describes that the boundary line B
`may be adjusted from B1 to B2 so as to enlarge the range in which the
`MOTOR DRIVE mode is selected. Id. at 21:2–4. Ibaraki ’882 further
`describes an ELECTRICITY GENERATING DRIVE mode where the
`engine provides surplus power that is greater than the vehicle drive torque.
`The surplus power from the engine is used to operate the electric motor as a
`generator to regeneratively charge the battery. Id. at 23:1–30.
`2. Yamaguchi (Ex. 1653)
`Yamaguchi discloses a hybrid vehicle driven by a motor and an
`internal combustion engine. Ex. 1653, 1:6–8. The vehicle includes a control
`unit for controlling the engine, generator/motor, and driving motor. Id. at
`4:66–5:2. The vehicle control unit supplies the engine control system with
`ON/OFF signals in response to various detected conditions. Id. at 5:9–14.
`The vehicle control unit further supplies the generator/motor control unit
`with a target rotation speed based on the accelerator pedal sensor and
`supplies the driving motor control unit with a torque signal based on the
`accelerator pedal sensor. Id. at 5:15–29.
`3. Analysis
`Petitioner contends that claims 4 and 28 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882, Yamaguchi, and the
`general knowledge of a person with ordinary skill in the art. Pet. 14–38.
`Petitioner provides a detailed analysis, supported by evidence,
`demonstrating, by a preponderance of the evidence, that claims 1 and 5 are
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`obvious over Ibaraki ʼ882, Yamaguchi, and the general knowledge of a
`person with ordinary skill in the art. Id.
`As discussed above, we do not provide a written final decision with
`respect to independent claim 1 because claim 1 has not been challenged in
`this proceeding. Claims 4, 13, 15, 25, 28, 29, 32, 67, and 79, however,
`depend from claim 1 and necessarily include all of the limitations of claim 1.
`Accordingly, we first address the contentions made by Petitioner as to how
`the combination of Ibaraki ’882, Yamaguchi, and the general knowledge of a
`person with ordinary skill in the art renders obvious claim 1.
`Claim 1 recites “[a] hybrid vehicle,” the vehicle comprising “one or
`more wheels” and “an internal combustion engine operable to propel the
`hybrid vehicle by providing torque to the one or more wheels.” Petitioner
`contends that Ibaraki ʼ882 discloses a hybrid vehicle that is propelled by an
`internal combustion (IC) engine and an electric motor. Pet. 15 (citing
`Ex. 1652,10 1:9–14; Ex. 166111 ¶ 181‒184). Petitioner specifically argues
`that Ibaraki ʼ882 discloses that the engine is controllably coupled to right
`and left road wheels. Id. at 16 (citing Ex. 1652, 11:12‒16, 19:18–28, Fig. 8;
`Ex. 1661 ¶¶ 185‒187, 190‒191).
`Claim 1 further recites “a first electric motor coupled to the engine”
`and “a second electric motor operable to propel the hybrid vehicle by
`
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`10 Petitioner cites to Exhibit 1552, however, we understand this to be a
`typographical error because Exhibit 1552 does not exist in this proceeding,
`and that Petitioner intended to cite to Exhibit 1652, which is Ibaraki ’882.
`11 Petitioner cites to Exhibit 1556, however, we understand this to be a
`typographical error because Exhibit 1556 does not exist in this proceeding,
`and that Petitioner intended to cite to Exhibit 1661, which is the Declaration
`of Dr. Davis.
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`providing torque to the one or more wheels.” Petitioner argues that Ibaraki
`ʼ882 discloses a hybrid vehicle with a “generator” and an “electric motor” as
`separate components, and the separate electric generator is operated for
`driving the vehicle. Id. at 17‒23 (citing Ex. 1652, 5:27‒29, 26:34‒38;
`Ex. 1661 ¶¶ 196‒201). Petitioner alternatively argues that Ibaraki ’882
`discloses an embodiment where two or more electric motors drive the
`wheels, and a person with ordinary skill in the art would have understood the
`“two or more electric motors” would necessarily be coupled to the engine in
`order for the engine to generate electricity for the motors. Id. at 20 (citing
`Ex. 1652, 10:20‒26, 12:22‒75, 17:65‒18:1, 27:1‒3; Ex. 1661 ¶¶ 203, 205).
`Claim 1 also recites “a battery coupled to the first and second electric
`motors” that is operable to “provide current to the first and/or the second
`electric motors” and “accept current from the first and second electric
`motors.” Petitioner contends that Ibaraki ʼ882 discloses an electrical energy
`storage device in the form of a battery, and the battery accepts current from
`the first motor and the second motor, when the second motor is functioning
`as a generator. Id. at 23‒25 (citing Ex. 1652, 11:31–33, 19:55–57; Ex. 1661
`¶¶ 215–227).
`Claim 1 additionally recites “a controller, operable to control the flow
`of electrical and mechanical power between the engine, the first and the
`second electric motors, and the one or more wheels.” Petitioner contends
`that Ibaraki ʼ882 discloses a controller that includes four modes: (1)
`MOTOR DRIVE, where the electric motor is selected as the drive power
`source, (2) ENGINE DRIVE, where the engine is selected as the drive
`power source, (3) ENGINE-MOTOR DRIVE, where both the engine and
`electric motor are selected as the drive power sources, and (4) CHARGING,
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`where electrical energy generated during regenerative braking is transferred
`to the battery. Id. at 25–27 (citing Ex. 1652, 12:8‒11, 20:38–49, Fig. 8;
`Ex. 1661 ¶¶ 230, 232, 233).
`Claim 1 further recites “wherein the controller is operable to operate
`the engine when torque required from the engine to propel the hybrid vehicle
`and/or to drive one or more of the first or the second motors to charge the
`battery is at least equal to a setpoint (SP) above which the torque produced
`by the engine is efficiently produced.” Petitioner contends that this
`limitation includes the language “and/or” and, therefore, this limitation is
`met because Ibaraki ʼ882 discloses “the controller is operable to operate the
`engine when torque required from the engine to propel the hybrid vehicle . . .
`is at least equal to a setpoint (SP) above which the torque produced by the
`engine is efficiently produced.” Id. at 27 (citing Ex. 1661 ¶ 235).
`Specifically, Petitioner contends that Ibaraki ʼ882 discloses a setpoint of
`engine speed above which the engine torque is efficiently produced, the 70%
`relative efficiency. Id. at 27–29 (citing Ex. 1652, 25:36–26:8, Fig. 5;
`Ex. 1661 ¶¶ 238–240). Petitioner further contends that Ibaraki ’882, in
`Figure 11, discloses multiple setpoints along boundary line “B.” Id. at 29‒
`30 (citing Ex. 1652, 20:49‒21:20, 24:6‒26, Fig. 11; Ex. 1661 ¶¶ 243‒244).
`Petitioner further argues that a person with ordinary skill in the art would
`have understood that “at a given speed, a torque along boundary line ‘B’ is a
`setpoint above which torque produced by the engine is efficiently produced.”
`Id. at 30 (citing Ex. 1661 ¶ 244) (emphasis omitted).
`Claim 1 also recites “wherein the torque produced by the engine when
`operated at the SP is substantially less than the maximum torque output
`(MTO) of the engine.” Petitioner further argues that Ibaraki ʼ882 discloses
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`an energy efficiency map that includes a threshold and multiple setpoints
`based on the engine speed. Pet. 30–31 (citing Ex. 1652, 25:46–26:8, Fig. 5;
`Ex. 1558 ¶¶ 250‒253). Petitioner asserts that the setpoints represent the
`point where the hybrid vehicle transitions from motor drive mode to engine
`drive mode and the engine efficiently produces torque above the setpoint.
`Id. Petitioner argues that Ibaraki ʼ882 similarly discloses a drive source
`selecting data map that includes a boundary line, along which are setpoints.
`Id. at 31–32 (citing Ex. 1652, 24:6–16, Fig. 11; Ex. 1558 ¶¶254‒256).
`Petitioner argues that these setpoints also represent the point where the
`hybrid vehicle transitions from motor drive mode to engine drive mode and
`the engine efficiently produces torque above the setpoint. Id. Petitioner
`explains that although the language “substantially less than” is not
`“mathematically precise,” 70% of the MTO is “substantially less than” the
`MTO and Ibaraki ʼ882 discloses threshold or setpoint at 70% of the engine’s
`maximum efficiency. Id. at 30 (citing Ex. 1652, 25:46–26:8, Fig. 5).
`We are similarly persuaded that Petitioner has established by a
`preponderance of the evidence that claims 4 and 28 are obvious over Ibaraki
`ʼ882, Yamaguchi, and the general knowledge of a person with ordinary skill
`in the art. See Pet. 33–38. Claim 4 recites “the controller is operable to start
`the engine via the first electric motor if the engine is not already running.”
`Claim 28 recites “the controller is operable to rotate the engine via the first
`electric motor before starting the engine such that cylinders of the engine are
`heated by compression of the air therein.” Petitioner specifically argues that
`Yamaguchi discloses that “the engine speed increases from “0” to a non-zero
`amount [] before the engine control unit (ECU) turns on the ignition to start
`the engine.” Id. at 36‒38 (citing Ex. 1661 ¶ 269; Ex. 1653, 8:62‒65, Fig. 8)
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`(emphasis omitted). Petitioner further argues that Yamaguchi discloses that
`the motor “is rotated in the positive direction [] to allow for rotating the
`engine before the engine is ignited.” Id. (citing Ex. 1653, 8:41‒44).
`Petitioner also articulates reasoning with rational underpinnings on
`why a person of ordinary skill in the art at the time of the invention would
`have combined Ibaraki ʼ882, Yamaguchi, and the general knowledge of a
`person with ordinary skill in the art. Id. at 34‒36. Petitioner argues that one
`of ordinary skill in the art would have known and understood that it was
`well-known to preheat the engine and/or catalyst to reduce engine emissions
`during a cold start, and one of Ibaraki ’882’s stated objectives is to reduce
`“the fuel consumption amount or exhaust gas amount of the engine.” Id.
`(citing Ex. 1661 ¶¶ 262‒264; Ex. 1652, 2:52‒56). Accordingly, Petitioner
`argues that a person with ordinary skill in the art would have combined the
`pre-heating method of Yamaguchi to Ibaraki ’882’s hybrid vehicle in order
`to effectively reduce the fuel consumption amount or exhaust gas amount of
`the engine. Id. (citing Ex. 1652, 2:52‒56; Ex. 1661 ¶¶ 262‒264).
`Notwithstanding Patent Owner’s arguments, which we address below,
`we are persuaded by Petitioner’s showing, which we adopt as our own, that
`Ibaraki ’882 in combination with Yamaguchi and the general knowledge of a
`person with ordinary skill in the art reasonably would have suggested the
`elements of claims 4 and 28, which include all of the elements of claim 1,
`and that the combination would have been obvious for the reasons provided
`by Petitioner.
`Patent Owner argues that (1) Ibaraki ’882 does not compare torque
`requirements to setpoint, (2) Ibaraki ’882 does not disclose a setpoint that is
`substantially less than MTO, and (3) Petitioner fails to establish that a person
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