Trials@uspto.gov
`571-272-7822
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` Paper 13
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` Entered: November 9, 2015
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`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.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
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`
`
`
`
`
`
` Paper 13
`
`
`
` Entered: November 9, 2015
`
`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.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-00790
`Patent 7,237,634 B2
`
`
`I.
`INTRODUCTION
`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 both unredacted and redacted forms. Papers
`10, 11 (“Prelim. Resp.”).1 Patent Owner also filed a Motion to Seal. Paper
`12 (“Motion to Seal”). We have jurisdiction under 35 U.S.C. § 314(a),
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” After considering the
`Petition, the Preliminary Response, and associated evidence, we conclude
`that Petitioner has demonstrated a reasonable likelihood that it would prevail
`in showing unpatentability of all the challenged claims. Thus, we authorize
`institution of an inter partes review of claims 4, 13–15, 25, 28, 29, 32, 67,
`and 79 of the ’634 patent.
`
`A. Related Proceedings
`Petitioner indicates that the ’634 patent is the subject of Paice, LLC
`
`and The Abell Foundation, Inc. v. Ford Motor Company, Case No. 1-14-cv-
`00492 (D. Md.) and Paice LLC and The Abell Foundation, Inc. v. Hyundai
`Motor America et. al., Case No. 1:2012-cv-00499 (D. Md.). Pet. 2.
`Petitioner also indicates that the ʼ634 patent is the subject of IPR2014-
`00904, IPR2014-01416, IPR2015-00606, IPR2015-00722, IPR2015-00758,
`IPR2015-00784, IPR2015-00785, and IPR2015-00791. Id. Petitioner
`
`
`1 Citations are to the redacted version of Patent Owner’s Preliminary
`Response (Paper 11, “Prelim. Resp.”).
`2
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`Patent 7,237,634 B2
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`further indicates that patents related to the ʼ634 patent are the subject of
`IPR2014-00568, IPR2014-00570, IPR2014-00571, IPR2014-00579,
`IPR2014-00852, IPR2014-00875, IPR2014-00884, IPR2014-01415, and
`IPR2015-00767. Id.
`
`B. The ʼ634 Patent (Ex. 1650)
`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
`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.
`C. Illustrative Claim
`Petitioner challenges dependent claims 4, 13–15, 25, 28, 29, 32, 67,
`and 79 of the ’634 patent. Pet. 3–59. Each of these claims depends from
`independent claim 1, and, therefore, claim 1 is illustrative of the claims at
`
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`IPR2015-00790
`Patent 7,237,634 B2
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`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 engine when
`operated at the SP is substantially less than the maximum
`torque output (MTO) of the engine.
`Ex. 1650, 58:2–27.
`D. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth proposed grounds
`of unpatentability of claims 4, 13–15, 25, 28, 29, 32, 67, and 79 of the ’634
`patent under 35 U.S.C. § 103(a) as follows (see Pet. 3–59):2, 3
`
`2 Petitioner supports its challenge with the Declaration of Dr. Gregory W.
`Davis. Ex. 1661.
`3 Although Petitioner adds the general knowledge of one with ordinary skill
`in the art to the express statement of each alleged ground of unpatentability
`(Pet. 3–4), that is not necessary. Obviousness is determined from the
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`
`References
`Ibaraki ʼ8824 and
`Yamaguchi5
`Ibaraki ʼ882,
`Masding/Bumby,6 and
`Admitted Prior Art (“APA”)7
`Ibaraki ʼ882 and Kawakatsu8
`Ibaraki ʼ882 and Vittone9
`Ibaraki ʼ882 and
`Ibaraki ʼ62610
`Ibaraki ʼ882 and Suga11
`
`Claims
`Challenged
`4 and 28
`
`13, 14, and 15
`
`25
`29
`
`32
`
`67 and 79
`
`II. ANALYSIS
`A. Patent Owner’s Discretionary Dismissal Arguments
`Patent Owner first argues that we should exercise our discretion under
`35 U.S.C. § 325(d) and reject the Petition because “it relies on substantially
`the same arguments that [Petitioner] Ford has already presented to the Board
`
`
`perspective of one with ordinary skill in the art. We leave out the express
`inclusion of the general knowledge of one with ordinary skill.
`4 U.S. Patent No. 5,789,882, issued Aug. 4, 1998 (Ex. 1652)(“Ibaraki ʼ882”).
`5 U.S. Patent No. 5,865,263, issued Feb. 2, 1999 (Ex. 1653)(“Yamaguchi”).
`6 P.W. Masding et al., A Microprocessor Controlled Gearbox for Use in
`Electric and Hybrid-Electric Vehicles, THE INSTITUTE OF MEASUREMENT
`AND CONTROL (1998) (Ex. 1654) (“Masding/Bumby”).
`7 Petitioner relies on the Masding/Bumby disclosures from the ʼ634 patent
`specification.
`8 U.S. Patent No. 4,335,429, issued June 15, 1982 (Ex. 1655)(“Kawakatsu”).
`9 Oreste Vittone, Fiat Conceptual Approach to Hybrid Cars Design, 12TH
`INTERNATIONAL ELECTRIC VEHICLE SYMPOSIUM (1994) (Ex. 1656)
`(“Vittone”).
`10 U.S. Patent No. 6,003,626, issued Dec. 21, 1999 (Ex. 1657)
`(“Ibaraki ʼ626”).
`11 U.S. Patent No. 5,623,104, issued Apr. 22, 1997 (Ex. 1658) (“Suga”).
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`in several other proceedings, having filed a total of thirteen petitions
`regarding the ʼ634 patent.” Prelim. Resp. 15–22. We have considered
`Patent Owner’s argument, but exercise our discretion and consider the
`Petition and institute trial on the grounds summarized below, based in part
`on Ibaraki ’882, a reference not previously relied on with respect to the
`challenged claims. We also have considered Patent Owner’s arguments
`regarding multiple attacks on dependent claim 14. Id. at 20–22 (citing
`IPR2014-00904). We are not persuaded by this argument because claim 14
`in IPR2014-00904 was not challenged as obvious over Ibaraki ʼ882 and the
`Masding/Bumby disclosures. Similarly, we are not persuaded by Patent
`Owner’s argument that Petitioner’s challenges to dependent claims here are
`substantially the same arguments presented in other Petitions (see id. at 20–
`21(“Compare Pet. at Ground 2 with IPR2015-00722, Petition at Ground 4;
`compare Pet. at Ground 4 with IPR2015-00787, Petition at Ground 2;
`compare Pet. at Ground 5 with IPR2015-00722, Petition at Ground 2;
`compare Pet. at Ground 6 with IPR2015-00722, Petition at Ground 3 and
`IPR2015-00791, Petition at Ground 3”)) because Patent Owner has not
`identified how these challenges are substantially similar, and, based on our
`review of the challenges, we do not agree with Patent Owner that these
`challenges are substantially similar because the other Petitions challenge
`different claims than this Petition.
`We also have considered Patent Owner’s argument that multiple
`challenges should not be allowed because, under 35 U.S.C. § 315(e)(1), once
`a final written decision is issued in one proceeding with respect to a claim,
`Petitioner would be barred from requesting or maintaining a proceeding on
`that claim on any ground that the Petitioner raised or could have raised in the
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`proceeding which yielded the final written decision. Prelim. Resp. 22–25.
`The contention is misplaced, because that provision applies only to the
`Petitioner, not the Board. See Progressive Cas. Ins. Co. v. Liberty Mut. Ins.
`Co., Nos. 2014-1586, 2014-1466, 2014-1639, 2014-1538, 2014-1638, 2014-
`1636, 2014-1656, 2014-1549, 2014-1637, 2015 WL 5004949, at *2 (Fed.
`Cir. Aug. 24, 2015)(non-precedential). Even if it applies to the Board, it is
`not burdensome simply to terminate the second proceeding with respect to
`certain claims.
`
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the broadest
`reasonable construction 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). Although claim 1 is not challenged in this
`Petition, it is challenged in IPR2015-00784 as obvious over Ibaraki ʼ882.
`See Ford Motor Company v. Paice LLC and The Abell Foundation, LLC,
`Case IPR2015-00784, Paper 12 (PTAB Oct. 29, 2015) (“784 Decision”).
`All terms not explicitly construed below are construed consistently with the
`784 Decision. See 784 Decision 5–12.
`2. “Set Point” or “SP”
`The term “setpoint” or “SP” is recited in independent claim 1 and
`incorporated by dependent claims 4, 13–15, 25, 28, 29, 32, 67, and 79.
`Petitioner proposes that “setpoint” or “SP” be construed, in the context of
`
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`these claims, as “predetermined torque value.” Pet. 12–13. In that regard,
`Petitioner correctly notes that the claims compare the setpoint to an engine
`torque value. Id. Although Patent Owner correctly notes that the
`Specification outside of the claims refers to two items being measurable
`against respective setpoints, i.e., the vehicle’s instantaneous torque
`requirement and the state of charge of the battery bank (Prelim. Resp. 7–12),
`the setpoint in these claims relates to torque and not battery charge.
`
`Patent Owner asserts that “setpoint” or “SP” is not simply a numerical
`value divorced from the context of the rest of the vehicle’s control system,
`and that a “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. Prelim. Resp. 7–12. Citing the Specification, Patent Owner further
`states that the Specification uses “setpoint” synonymously with “transition
`point.” Id at 9–10. Accordingly, Patent Owner urges that the construction
`of “setpoint” or “SP” must include an indication that it is a point at which a
`transition between different operating modes may occur. Id. at 9–12.
`
`Patent Owner’s arguments are misplaced. The Specification outside
`of the claims sometimes uses “setpoint” interchangeably with “transition
`point,” because the disclosure describes the particular transitions between
`operative modes, at the setpoints. If the multiple transitions between modes
`are not described, it would be without meaning to refer to a “setpoint” as a
`transition point between modes. A transition does not spring solely from the
`term “setpoint” or “SP.” It would be improper to read into a claim all of the
`disclosed operational modes and all disclosed transitions between modes
`simply because the claim recites the “setpoint” or “SP.”
`
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`Patent Owner does not urge that “setpoint” or “SP” requires any
`
`particular transition from mode to mode. Instead, Patent Owner merely
`desires to add that a “setpoint” is where a transition between operating
`modes “may occur.” Id. Nothing of significance is added by that proposed
`construction. If a transition is specified by other limitations in the claim, at
`the setpoint, then a transition is required at the setpoint. If no transition is
`specified by other limitations in the claim, then no transition is required at a
`setpoint. A transition may or may not occur at a setpoint, depending on
`what else is recited in the claim. It is not necessary to include such “may
`occur” language in the construction of “setpoint” and “SP.” A multitude of
`events “may occur” at a setpoint, but they are not necessary for setting forth
`the meaning of “setpoint” or “SP” in a claim. The rest of the claim sets forth
`what is required to occur at a setpoint.
`
`Nevertheless, we do regard as meaningful to note that 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.
`
`We construe “setpoint” and “SP” as “predetermined torque value that
`may or may not be reset.”
`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.
`Petitioner asserts that the term “abnormal and transient conditions” is
`defined in the parent application of the ’634 patent, i.e., Application
`10/382,577, which issued as U.S. Patent No. 7,104,347 B2 (“the ’347
`patent”). Pet. 13–14. The source of the alleged definition is claim 22 of the
`
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`’347 patent, which reads, in pertinent part: “said [abnormal and transient
`conditions] comprising starting and stopping of the engine and provision of
`torque to satisfy drivability or safety considerations.” Ford Motor Co. v.
`Paice LLC and The Abell Foundation, LLC, Case IPR2015-00785, Ex. 1364,
`60:17–21. The quoted claim language from the ’347 patent does not present
`a definition but merely identifies open-ended examples of “abnormal and
`transient conditions,” i.e., (1) starting and stopping of the engine, and (2)
`provision of torque to satisfy drivability or safety considerations. Moreover,
`it is unclear what is abnormal or transient about “provision of torque to
`satisfy drivability or safety considerations.”
`
`Patent Owner asserts that Petitioner’s open-ended construction causes
`confusion, and urges that the Board make clear that “abnormal and transient
`conditions” does not include “city traffic and reverse operation.” Prelim.
`Resp. 13–14. Patent Owner notes that it had made that distinction in the
`prosecution history of a related patent, i.e., U.S. Patent No. 8,214,097 B2
`(Ex. 2602, 238). Id. It appears, however, unsupported to exclude operation
`in city traffic and reverse operation in their entirety including any abnormal
`and transient conditions which may occur within them. It is also uncertain
`just precisely what constitutes city traffic.
`
`For the foregoing reasons, we are unpersuaded by either the
`contention of Petitioner or that of Patent Owner. Nevertheless, it is not
`necessary that we expressly construe “abnormal and transient conditions”
`beyond determining merely that examples of such conditions include starting
`the engine and stopping the engine. In the context of the Specification of the
`’634 patent, we regard both starting the engine and stopping the engine as an
`
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`abnormal and transient condition, as compared to the other disclosed
`conditions of operating the engine, as disclosed in the Specification.
`C. Claims 4 and 28 – Obviousness over Ibaraki ʼ882 and Yamaguchi
`Petitioner contends that claims 4 and 28 are unpatentable under 35
`U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and Yamaguchi. Pet. 14–38.
`1. Ibaraki ʼ882 (Ex. 1652)
`Ibaraki ʼ882 discloses a drive control apparatus for a “hybrid vehicle”
`equipped with an electric motor and an internal combustion engine.
`Ex. 1652, 1:10–15. The electric motor provides electric energy and operates
`as a first drive power source, and the internal combustion engine combusts
`fuel to provide a second drive power source. Id. at 2:57–64. The drive
`control apparatus includes (1) an engine drive mode where the vehicle is
`driven by the engine, (2) a motor drive mode where the vehicle is driven by
`the electric motor, and (3) an electricity generating mode where an electric
`generator is operated by the engine to charge an electric energy storage
`device. Id. at 2:64–3:2. Depending on the running condition of the vehicle,
`the drive control apparatus selects the drive mode. Id. at 3:5–14.
`2. Analysis
`The evidence set forth by Petitioner indicates there is a reasonable
`likelihood that Petitioner will prevail in showing that claims 4 and 28 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and
`Yamaguchi. Pet. 14–38. Petitioner provides a detailed analysis, supported
`by evidence, demonstrating that there is a reasonable likelihood that claims 4
`and 28 are obvious over Ibaraki ʼ882 and Yamaguchi. Id.
`Claims 4 and 28 depend from independent claim 1. Although claim 1
`is not challenged in this Petition, claim 1 is challenged as obvious over
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`Ibaraki ʼ882 in IPR2015-00784. Pet. 14 n.2. Petitioner submits the exact
`same analysis of claim 1 from IPR2015-00784 to support its challenge of
`dependent claims 4 and 28 in this Petition.12 Compare Pet. 14–33 with Ford
`Motor Co. v. Paice LLC and The Abell Foundation, LLC, Case IPR2015-
`00784, Paper 1, 9–26. Accordingly, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood that independent claim 1 is obvious
`over Ibaraki ʼ882 for the reasons discussed in IPR2015-00784. See 784
`Decision 13–20. We similarly are unpersuaded by Patent Owner’s general
`arguments towards ground 1 and specific arguments towards claim 1 for the
`same reasons. See id. at 16–19.
`Claim 4 additionally recites “to operate the engine, the controller is
`operable to start the engine via the first electric motor if the engine is not
`already running.” Ex. 1650, 58:35–37. Claim 28 additionally 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 air therein.” Id. at 60:30–33. Petitioner argues that
`Yamaguchi discloses these limitations. Pet. 33–38. We are not persuaded
`by Patent Owner’s argument that Petitioner has failed to establish that a
`person of ordinary skill in the art would have been motivated to combine
`Ibaraki ʼ882 and Yamaguchi. Prelim. Resp. 38–39. Rather, we determine
`that Petitioner articulates reasoning with rational underpinning on why a
`person of ordinary skill in the art at the time of the invention would have
`
`
`12 Petitioner provides citations to Exhibit 1552 (Ibaraki ʼ882) and
`Exhibit 1556 (Davis Declaration). See Pet. 14–33. However, this record
`does not include Exhibit 1556 (Ibaraki ʼ882) and Exhibit 1556 (Davis
`Declaration). We understand Petitioner to be referencing Ibaraki ʼ882,
`Exhibit 1652, and Dr. Davis’ Declaration, Exhibit 1661.
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`combined Ibaraki ʼ882 and Yamaguchi. Pet. 33–38. We have reviewed the
`arguments and evidence presented by Petitioner, and also the opposing
`contentions of Patent Owner, and we are persuaded, at this juncture of the
`proceeding, that Petitioner has established a reasonable likelihood that
`Petitioner would prevail in its challenge to claims 4 and 28.
`D. Claims 13, 14, and 15 – Obviousness over Ibaraki ʼ882,
`Masding/Bumby, and APA
`The evidence set forth by Petitioner indicates there is a reasonable
`likelihood that Petitioner will prevail in showing that claims 13, 14, and 15
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and
`Masding/Bumby. Pet. 38–41. Claim 13 recites “the SP is at least
`approximately 20% of the MTO of the engine when normally-aspirated.”
`Ex. 1650, 59:6–8. Claim 14 recites “the SP is at least approximately 30% of
`the MTO of the engine when normally-aspirated.” Id. at 59:9–11. Claim 15
`recites “the SP is less than approximately 70% of the MTO of the engine
`when normally-aspirated.” Id. at 59:12–14. Petitioner argues that
`Masding/Bumby and APA disclose prior art systems that render these
`limitations obvious. Pet. 38–41.
`We are not persuaded by Patent Owner’s argument that Petitioner
`improperly relies on and incorporates the Declaration of Dr. Davis in
`explaining its obviousness rationale. Prelim. Resp. 39–40. Although, in
`general, arguments must not be incorporated by reference from one
`document into another (see 37 C.F.R. § 42.6(a)(3)), Petitioner merely relies
`on Dr. Davis’s testimony as evidence of what a person with ordinary skill in
`the art would have known at the time of the invention.
`We also are not persuaded by Patent Owner’s argument that
`Petitioner’s contention that it would have been an obvious design choice to
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`choose engines with similar parameters fails to provide an adequate analysis
`of obviousness. Prelim. Resp. 40–41. Rather, Petitioner has explained in its
`Petition, relying on the Declaration of Dr. Davis, that based on the disclosure
`of prior art systems, a person with ordinary skill in the art would have
`understood the relative setpoints based on the relative fuel efficiency
`thresholds. Pet. 39–40 (citing Ex. 1661 ¶¶ 286–293, 297–299).
`We also are not persuaded by Patent Owner’s argument that Petitioner
`has failed to establish a motivation to combine Ibaraki ʼ882,
`Masding/Bumby, and APA. Prelim. Resp. 42. Rather, we determine that
`Petitioner articulates reasoning with rational underpinning on why a person
`of ordinary skill in the art at the time of the invention would have combined
`Ibaraki ʼ882, Masding/Bumby, and APA based on known prior art systems
`at the time of the invention. Pet. 33–38.
`We have reviewed the arguments and evidence presented by
`Petitioner, and also the opposing contentions of Patent Owner, and we are
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`reasonable likelihood that Petitioner would prevail in its challenge to claims
`13, 14, and 15.
`E. Claim 25 – Obviousness over Ibaraki ʼ882 and Kawakatsu
`The evidence set forth by Petitioner indicates there is a reasonable
`likelihood that Petitioner will prevail in showing that claim 25 is
`unpatentable under 35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and
`Kawakatsu. Pet. 41–45. Dependent claim 25 recites that the “total torque
`available to the one or more wheels from the engine is no greater than total
`torque available from the first and second electric motors combined.”
`Ex. 1650, 60:18–21. Petitioner argues that Kawakatsu discloses this
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`limitation. Pet. 41–45(emphasis omitted). 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 and
`Kawakatsu. Id.
`We reject Patent Owner’s general argument that Petitioner has
`provided a conclusory argument for combining Ibaraki ʼ882 and Kawakatsu.
`Prelim. Resp. 42–44. Rather, we determine that Petitioner articulates
`reasoning with rational underpinning on why a person of ordinary skill in the
`art at the time of the invention would have combined Ibaraki ʼ882 and
`Kawakatsu. Pet. 44–45. We have reviewed the arguments and evidence
`presented by Petitioner, and also the opposing contentions of Patent Owner,
`and we are persuaded, at this juncture of the proceeding, that Petitioner has
`established a reasonable likelihood that Petitioner would prevail in its
`challenge to claim 25.
`F. Claim 29 – Obviousness over Ibaraki ʼ882 and Vittone
`The evidence set forth by Petitioner indicates there is a reasonable
`likelihood that Petitioner will prevail in showing that claim 29 is
`unpatentable under 35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and
`Vittone. Pet. 45–51. Dependent claim 29 recites “the controller is operable
`to limit a rate of change of torque produced by the engine, such that
`combustion of fuel within the engine occurs substantially at a stoichiometric
`ratio, and wherein if the engine is incapable of supplying an instantaneous
`torque required, the controller is operable to transfer additional torque from
`one or more of the first or the second electric motors.” Ex. 1650, 60:34–41.
`Petitioner argues that Vittone discloses these limitations. Pet. 45–51.
`Petitioner also articulates reasoning with rational underpinnings on why a
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`person of ordinary skill in the art at the time of the invention would have
`combined Ibaraki ʼ882 and Vittone. Id.
`We reject Patent Owner’s general argument that Petitioner has
`provided a conclusory argument for combining Ibaraki ʼ882 and Kawakatsu.
`Prelim. Resp. 44–46. Rather, we determine that Petitioner articulates
`reasoning with rational underpinning on why a person of ordinary skill in the
`art at the time of the invention would have combined Ibaraki ʼ882 and
`Vittone. Pet. 45–51. We have reviewed the arguments and evidence
`presented by Petitioner, and also the opposing contentions of Patent Owner,
`and we are persuaded, at this juncture of the proceeding, that Petitioner has
`established a reasonable likelihood that Petitioner would prevail in its
`challenge to claim 29.
`G. Claim 32 – Obviousness over Ibaraki ʼ882 and Ibaraki ʼ626
`The evidence set forth by Petitioner indicates there is a reasonable
`likelihood that Petitioner will prevail in showing that claim 32 is
`unpatentable under 35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and
`Ibaraki ʼ626. Pet. 51–56. Dependent claim 32 recites “the controller is
`operable to start and operate 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. Petitioner argues that Ibaraki ʼ626
`discloses these limitations. Pet. 51–56. 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 and Ibaraki ʼ626.
`Id.
`
`We reject Patent Owner’s general argument that Petitioner has
`provided a conclusory argument for combining Ibaraki ʼ882 and Kawakatsu.
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`Prelim. Resp. 47–48. Rather, we determine that Petitioner articulates
`reasoning with rational underpinning on why a person of ordinary skill in the
`art at the time of the invention would have combined Ibaraki ʼ882 and
`Ibaraki ʼ626. Pet. 51–56. We have reviewed the arguments and evidence
`presented by Petitioner, and also the opposing contentions of Patent Owner,
`and we are persuaded, at this juncture of the proceeding, that Petitioner has
`established a reasonable likelihood that Petitioner would prevail in its
`challenge to claim 29.
`H. Claims 67 and 79 – Obviousness over Ibaraki ʼ882 and Suga
`The evidence set forth by Petitioner indicates there is a reasonable
`likelihood that Petitioner will prevail in showing that claims 67 and 79 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and
`Suga. Pet. 56–59. Claim 67 recites “the second electric motor is sufficiently
`powerful to provide acceleration of said vehicle sufficient to conform to the
`Federal urban cycle driving fuel mileage test without use of torque from the
`engine to propel the vehicle.” Ex. 1650, 64:8–12. Claim 79 recites “the
`second electric motor is sufficiently powerful to provide acceleration of said
`vehicle sufficient to conform to the Federal urban cycle driving fuel mileage
`test without use of torque from the engine to propel the vehicle.” Id. at
`65:6–10. Petitioner argues that Suga discloses these limitations. Pet. 56–59.
`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 and Suga. Id.
`Patent Owner argues that claims 67 and 79 are directed to the power
`capabilities of the second electric motor in a hybrid vehicle, whereas Suga
`relates to a test procedure for electric vehicles without an engine and,
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`therefore, Suga is not directed to the design of a hybrid vehicle. Prelim.
`Resp. 48–51. Patent Owner argues that because of this deficiency in Suga, a
`person with ordinary skill in the art would not have combined Ibaraki ʼ882
`and Suga as proposed by Petitioner. Id. In other words, Patent Owner
`argues that Petitioner fails to explain why “a person of ordinary skill in the
`art would look to Suga[ʼs] discussion of ‘a test apparatus and procedure that
`determines the electric motor’s operator power performance and efficiency’
`for pure electric vehicles in choosing the power capabilities of a motor
`relative to an engine for a hybrid vehicle.” Id.
`We are not persuaded by Patent Owner. Petitioner has relied on Suga
`to disclose “a test apparatus and procedure that determines an electric
`motor’s operating power performance and efficiency” and “testing the
`electric motor according to the LA4 drive cycle.” Pet. 56 (citing Ex. 1658,
`4:6–17; Ex. 1661 ¶¶ 386–392). Petitioner further relies on the Declaration
`of Dr. Davis to explain that a person with ordinary skill in the art would
`have understood the AL4 drive cycle is the same well-known LA4 (FUDS)
`drive cycle. Id. at 57 (citing Ex. 1661 ¶ 396). Accordingly, Petitioner is
`relying on Suga to disclose testing of the electric motor, and, therefore,
`Patent Owner’s argument that Suga is not directed towards a hybrid vehicle
`is not relevant. Petitioner further articulates reasoning with rational
`underpinning on why a person of ordinary skill in the art at the time of the
`invention would have combined Ibaraki ʼ882 and Suga. Pet. 58–59. We
`have reviewed the arguments and evidence presented by Petitioner, and also
`the opposing contentions of Patent Owner, and we are persuaded, at this
`juncture of the proceeding, that Petitioner has established a reasonable
`likelihood that Petitioner would prevail in its challenge to claims 67 and 79.
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`III. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review
`hereby is in
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