`
`_________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owners.
`
`_________________________
`
`
`
`
`
`Case IPR2015-00791
`Patent 7,237,634
`_________________________
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS ON THE
`CROSS EXAMINATION OF DR. GREGORY DAVIS
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-00791
`Patent 7,237,634
`
`Exhibit Number
`Ex. 2401
`Ex. 2402
`Ex. 2403
`Ex. 2404
`Ex. 2405
`Ex. 2406
`Ex. 2407
`Ex. 2408
`
`Ex. 2409
`
`Ex. 2410
`
`Ex. 2411
`
`Ex. 2412
`Ex. 2413
`
`Ex. 2414
`Ex. 2415
`Ex. 2416
`Ex. 2417
`
`EXHIBITS
`
`Exhibit Name
`Table of Ford’s IPR Petitions
`Gregory Davis Deposition Transcript (Feb. 25, 2015)
`The Oxford Essential Dictionary, American Ed.
`(1998) (excerpt)
`U.S. Patent No. 8,214,097 File History
`Appendix A (Jan. 15, 2014)
`Declaration of Daniel A. Tishman in Support of
`Patent Owners’ Motion for Pro Hac Vice Admission
`Declaration of Neil Hannemann
`Neil Hannemann CV
`Gregory W. Davis, Deposition Tr. (IPR2015-00722,
`IPR2015-00784, IPR2015-00787, IPR2015-00790,
`IPR2015-00791, IPR2015-00794, IPR2015-00795)
`(January 13, 2016)
`Hybrid Power Unit Development for Fiat Multipla
`Vehicle,” by A. Caraceni, G. Cipolla, and R.
`Barbiero, SAE Publication 981124 (1998)
`(“Caraceni”)
`Ehsani et al., Modern Electric Hybrid Electric, and
`Fuel Cell Vehicles (2005)
`Gregory W. Davis, Deposition Tr. (IPR2014-00571,
`IPR2014-00579) (January 13, 2015)
`Gregory W. Davis Deposition Tr. (IPR2014-01416)
`(June 3, 2015)
`Ex. 1661 from IPR2015-00790
`Deposition Transcript of Dr. Gregory W. Davis
`Annotated Declaration of Neil Hannemann
`Annotated Declaration of Dr. Gregory W. Davis
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-00791
`Patent 7,237,634
`In exhibit 2415, on page 32, line 11-20 with respect to U.S. Patent No.
`
`1.
`
`5,789,882 (“Ibaraki ’882), Dr. Davis testified that “in Figure 11 [of Ibaraki ’882]
`
`the motor does provide all the torque requirements of the vehicle at very low
`
`speed” and that the engine is not operating at the low vehicle speeds corresponding
`
`to the “horizontal” or flat portion of boundary line B shown in Figure 11 because
`
`“one of ordinary skill in the art would understand you can't operate the engine at
`
`those very low vehicle speeds.” This testimony is relevant to paragraphs 4-14 of
`
`Dr. Davis’s Reply Declaration (Ex. 1513). The testimony is relevant because it
`
`contradicts Dr. Davis’s reply declaration testimony that that the flat portion of
`
`boundary line B is related to mode switching between the motor drive mode and
`
`engine drive mode in Ibaraki ’882.
`
`2.
`
`In exhibit 2415, on page 35, line 11-20, Dr. Davis again testified that
`
`only the motor can operate at vehicle speeds corresponding to the flat portion of
`
`boundary line B shown on Figure 11 of Ibaraki ’882 and confirmed his opinion by
`
`highlighting the speed region where only the motor can operate on Figure 11
`
`reproduced at pg. 48 of exhibit 2416. This testimony is relevant to paragraphs 4-
`
`14 of Dr. Davis’s Reply Declaration (Ex. 1513). The testimony is relevant because
`
`it contradicts Dr. Davis’s reply declaration testimony that that the flat portion of
`
`boundary line B is related to mode switching between the motor drive mode and
`
`engine drive mode in Ibaraki ’882.
`
`1
`
`
`
`
`Case IPR2015-00791
`Patent 7,237,634
`In exhibit 2415, on page 51, line 24 to page 52, line 3, Dr. Davis
`
`3.
`
`agreed that the second embodiment of Ibaraki ’882 discloses a plurality of forward
`
`drive positions each having different speed ratios. This testimony is relevant to
`
`page 45, line 3-15 of the same exhibit. The testimony is relevant because it
`
`contradicts Dr. Davis’s earlier testimony that Ibaraki ’882 does not provide a
`
`separate data map (as shown in Figure 11) for each speed (or gear) ratio even
`
`though Dr. Davis agreed that Ibaraki ’882 provides a separate data map for each
`
`drive position.
`
`4.
`
`In exhibit 2415, on page 62, line 2-8, Dr. Davis acknowledged that
`
`Ibaraki ’882 never identifies boundary line C of Figure 11 as the upper bound of
`
`engine MTO in any gear. This testimony is relevant to paragraphs 32-34 of Dr.
`
`Davis’s Reply Declaration (Ex. 1513). The testimony is relevant because it calls
`
`into question Dr. Davis’s opinion that boundary line C of Figure 11 as the upper
`
`bound of engine MTO in any gear.
`
`5.
`
`In exhibit 2415, on page 39, line 10-21, Dr. Davis testified that in his
`
`opinion boundary line C of Figure 11 is the engine’s maximum torque output
`
`modified by the gears of the transmission. This testimony is relevant to paragraph
`
`34 of Dr. Davis’s Reply Declaration (Ex. 1513). The testimony is relevant because
`
`it calls into question Dr. Davis’s opinion that boundary line C of Figure 11 is at or
`
`below the engine’s MTO.
`
`2
`
`
`
`
`Case IPR2015-00791
`Patent 7,237,634
`In exhibit 2415, on page 63, line 10-23 and page 70, line 3-7, Dr.
`
`6.
`
`Davis testified that it was his opinion that the curve labeled “Ideal Tractive Force
`
`Hyperbola” of the Bosch Handbook corresponds to boundary line C of Figure 11
`
`of Ibaraki ’882 and that a separate curve (labeled “Direct Drive”) represents the
`
`engine’s MTO that is not multiplied by a particular gear ratio. This testimony is
`
`relevant to paragraph 34 of Dr. Davis’s Reply Declaration (Ex. 1513). The
`
`testimony is relevant because it calls into question Dr. Davis’s opinion that
`
`boundary line C of Figure 11 is at or below the engine’s MTO.
`
`7.
`
`In exhibit 2415, on page 64, line 19-24 and page 69, line 11 to page
`
`70, line 7, Dr. Davis identified the “Ideal Tractive Force Hyperbola” of the Bosch
`
`Handbook in blue and the curve labeled “Direct Drive” representing the engine’s
`
`MTO (not multiplied by a particular gear ratio) in pink at page 20 of Ex. 2417.
`
`This testimony is relevant to paragraph 34 of Dr. Davis’s Reply Declaration (Ex.
`
`1513). The testimony is relevant because it calls into question Dr. Davis’s opinion
`
`that boundary line C of Figure 11 is at or below the engine’s MTO.
`
`8.
`
`In exhibit 2415, on page 81, line 7-25, Dr. Davis testified that it was
`
`his opinion that Ibaraki ’882’s Figure 5 and Figure 11 disclose alternative
`
`embodiments for making mode selection decisions. This testimony is relevant to
`
`page 47, line 1-16; page 52, line 18 to page 53, line 2; page 55, line 20 to page 56,
`
`line 6; and page 56, line 23 to page 57, line 3 of Dr. Davis’s previous deposition
`
`3
`
`
`
`
`Case IPR2015-00791
`Patent 7,237,634
`taken on January 13, 2016 (Ex. 2409) where he testified that Figure 5 and Figure
`
`11 are not alternative control strategies but that Ibaraki ’882 uses Figure 5 to
`
`generate Figure 11. The testimony is relevant because it calls into question Dr.
`
`Davis’s credibility concerning his opinions with respect to Ibaraki ’882’s use of
`
`Figure 5.
`
`9.
`
`In exhibit 2415, on page 9, line 3-14, when asked whether he
`
`presented any evidence or opinion in his reply declaration connecting ZEV
`
`operation to whether or not an electric motor in a hybrid vehicle is sufficiently
`
`powerful to provide acceleration to conform to the Federal Urban Cycle Driving
`
`Fuel Mileage Test, Dr. Davis testified that “An also discloses that the sizing of the
`
`electric motor determines whether or not the HEV is capable of ZEV operation.”
`
`This testimony is relevant to paragraphs 42-45 of Dr. Davis’s Reply Declaration
`
`(Ex. 1513). The testimony is relevant because it confirms that Dr. Davis’s reply
`
`declaration testimony relates only to ZEV operation and calls into question Dr.
`
`Davis’s reply declaration testimony that it would have been obvious to a person of
`
`ordinary skill in the art to size a motor in a hybrid vehicle that is sufficiently
`
`powerful to provide acceleration to conform to the Federal Urban Cycle Driving
`
`Fuel Mileage Test.
`
`10.
`
`In exhibit 2415, on page 23, line 9-11, Dr. Davis testified that he
`
`could not find the word “hybrid” anywhere in U.S. Patent No. 5,623,104 (“Suga”).
`
`4
`
`
`
`
`Case IPR2015-00791
`Patent 7,237,634
`This testimony is relevant to paragraphs 42-45 of Dr. Davis’s Reply Declaration
`
`(Ex. 1513). The testimony is relevant because it calls into question Dr. Davis’s
`
`reply declaration testimony that a person of ordinary skill in the art would look to
`
`Suga in order to size a motor in a hybrid vehicle that is sufficiently powerful to
`
`provide acceleration to conform to the Federal Urban Cycle Driving Fuel Mileage
`
`Test.
`
`11.
`
`In exhibit 2415, on page 25, line 3-6, Dr. Davis testified that Suga is
`
`about a particular way of testing the performance of an electric motor for the LA4
`
`test. This testimony is relevant to paragraphs 42-45 of Dr. Davis’s Reply
`
`Declaration (Ex. 1513). The testimony is relevant because it calls into question Dr.
`
`Davis’s reply declaration testimony that a person of ordinary skill in the art would
`
`look to Suga in order to size a motor in a hybrid vehicle that is sufficiently
`
`powerful to provide acceleration to conform to the Federal Urban Cycle Driving
`
`Fuel Mileage Test.
`
`
`
`
`
`
`By: /Brian J. Livedalen/
`
`Timothy W. Riffe (Reg. No. 43,881)
`Kevin Greene, (Reg. No. 46,031)
`Brian J. Livedalen (Reg. No. 67,450)
`FISH & RICHARDSON P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`
`5
`
`
`Dated: May 20, 2016
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-00791
`Patent 7,237,634
`
`Tel: (202) 626-6447
`Fax: (202) 783-2331
`
`Attorneys for Patent Owner
`Paice LLC & Abell Foundation, Inc.
`
`
`
`
`
`
`
`
`
`6
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2015-00791
`Patent 7,237,634
`
`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on May 20,
`
`2016, a complete and entire copy of this Patent Owner’s Motion for Observations
`
`was provided via email to the Petitioner by serving the correspondence email
`
`address of record as follows:
`
`Frank A. Angileri
`John P. Rondini
`Michael N. MacCallum
`Erin K. Bowles
`Andrew B. Turner
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`Lissi Mojica
`Kevin Greenleaf
`Dentons US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, CA 94304-1125
`
`Email: FPGP0104IPR11@brookskushman.com
`Email: ipt.docketchi@dentons.con
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`
`
`
`/Edward G. Faeth/
`
`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420