`
`
`Entered: December 16, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`
`U.S. Patent No. 7,237,634
`
`IPR Case No.: IPR2015-00791
`
`______________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and CARL M.
`DeFRANCO, Administrative Patent Judges.
`
`
`
`PETITIONER’S NOTICE OF CROSS-APPEAL
`
`
`
`
`
`
`
`
`
`Case No.: IPR2015-00791
`Attorney Docket No.: FPGP0104IPR11
`
`Notice is hereby given, pursuant to 37 C.F.R § 90.2(a), that Petitioner, Ford
`
`Motor Company (“Petitioner”), hereby appeals to the United States Court of Appeals
`
`for the Federal Circuit from the Final Written Decision entered on October 21, 2016
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`(Paper 36, attached hereto) and from all underlying orders, decisions, rulings and
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`opinions that are adverse to Petitioner, including, without limitation, those within
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`the Decision on Institution of Inter Partes Review, entered October 27, 2015 (Paper
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`12).
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`This notice is timely under C.F.R. § 90.3(a)(1) and Rule 4(a)(3) of the Federal
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`Rules of Appellate Procedure because Patent Owners Paice LLC and the Abell
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`Foundation, Inc. filed a notice of appeal on December 2, 2016. That appeal was
`
`assigned Case No. 17-1311.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates that
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`the issues on cross-appeal include, but are not limited to, the Board’s decision not to
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`provide a final written decision on the merits, nor hold unpatentable, claims 80, 93,
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`99, 114, 127, 132, 139, and 215 of U.S. Patent No. 7,237,634.
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`Contemporaneously with this submission, a copy of the Notice of Cross-
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`Appeal is being filed electronically with the Patent Trial and Appeal Board. In
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`addition, a copy of this Notice of Appeal, along with the required docketing fees, are
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`being electronically filed with the Clerk’s Office for the United States Court of
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`Appeals for the Federal Circuit.
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`2
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`Dated: December 16, 2016
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`
`
`Respectfully submitted,
`
`Case No.: IPR2015-00791
`Attorney Docket No.: FPGP0104IPR11
`
`
`
`
`
` s /Frank A. Angileri/
`Frank A. Angileri (Reg. No. 36,733)
`John E. Nemazi (Reg. No. 30,876)
`John P. Rondini (Reg. No. 64,949)
`Michael N. MacCallum (Reg. No. 63,108)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Petitioner
`
`
`
`
`
`
`3
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`
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`Case No.: IPR2015-00791
`Attorney Docket No.: FPGP0104IPR11
`
`CERTIFICATE OF FILING AND SERVICE
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`
`
`The undersigned hereby certifies that on December 16, 2016, a complete and
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`entire copy of PETITIONER FORD MOTOR COMPANY’S NOTICE OF
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`CROSS-APPEAL was served by electronic mail to the following counsel of record:
`
`LEAD COUNSEL
`Timothy W. Riffe, Reg. No. 43,881
`
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0015IP9@fr.com;
`
`Riffe@fr.com
`
`BACK-UP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`Ruffin B. Cordell, Reg. No. 33,487
`Linda L. Kordziel, Reg. No. 39,732
`Daniel A. Tishman
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0015IP9@fr.com;
`
`Riffe@fr.com
`
` I
`
` also certify that in addition to being filed electronically with the Board
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`through its PRPS System, the original of the foregoing Petitioner Ford Motor
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`Company’s Notice of Cross-Appeal is being sent, pursuant to 37 C.F.R. § 104.2, via
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`first-class mail on December 16, 2016 to the United States Patent and Trademark
`
`Office at the following address:
`
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`4
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`
`
`Case No.: IPR2015-00791
`Attorney Docket No.: FPGP0104IPR11
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`I further certify that a copy of the foregoing Petitioner’s Notice of Cross-
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`Appeal was filed via CM/ECF on December 16, 2016, with the United States Court
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`
`
`
`
`Respectfully submitted,
`
`
`
` s /Frank A. Angileri/
`Frank A. Angileri (Reg. No. 36,733)
`John E. Nemazi (Reg. No. 30,876)
`John P. Rondini (Reg. No. 64,949)
`Erin K. Bowles (Reg. No. 64,705)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Petitioner
`
`of Appeals for the Federal Circuit.
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`
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`5
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`
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`Trials@uspto.gov
`571-272-7822
`
`Paper 36
`Entered: October 21, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`V.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`
`Case IPR2015-00791
`Patent 7,237,634 B2
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DeFRANCO, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.XC. §318(a) and37 C.F.R. §42.73
`
`I. INTRODUCTION
`
`We have jurisdiction to hear this interpartes review 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. For the reasons that follow, we dismiss the inter
`
`partes review with respect to claims 80, 93, 99, 114, 127, 132, 139, and 215,
`
`and determine that Petitioner has shown by a preponderance of the evidence
`
`
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`Case IPR2015-00791
`Patent 7,237,634 B2
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`that claims 94, 96, 106-108, 113, 128, 140, 141,146, 229, and 231 of U.S.
`
`Patent No. 7,237,634 B2 are unpatentable.
`
`A. Procedural History
`
`Petitioner, Ford Motor Company, filed a Petition requesting an inter
`
`partes review of claims 33, 37, 39-41, 80, 93, 94, 96, 99, 106-108, 113,
`
`114, 127, 128, 132, 139-141,146, 215,229, and 231 of U.S. Patent No.
`
`7,237,634 B2 (Ex. 1450, "the ’634 patent"). Paper 1 ("Pet."). Patent
`
`Owner, Paice LLC & The Abell Foundation, Inc., filed a Preliminary
`
`Response in both unredacted and redacted forms. Papers 9, 10 ("Prelim.
`
`Resp."). Upon consideration of the Petition and Preliminary Response, on
`
`October 27, 2015, we instituted an interpartes review of claims 80, 93, 94,
`
`96, 99, 106-108, 113,114, 127, 128, 132, 139-141,146,215,229, and 231,
`
`pursuant to 35 U.S.C. § 314. Paper 12 ("Dec.").
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response (Paper 17 ("PO Resp.")) and Petitioner filed a Reply (Paper 25
`
`("Pet. Reply")).1 An oral hearing was held on June 28, 2016, and a
`
`transcript of the hearing is included in the record (Paper 34 ("Tr.")).
`
`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
`
`1 In addition, Patent Owner filed a Motion for Observation on Cross-
`Examination (Paper 27) and Petitioner filed a Response to Motion for
`Observation on Cross-Examination (Paper 30), both of which have been
`considered.
`
`2
`
`
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`Case IPR2015-00791
`Patent 7,237,634 B2
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`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, IPR2015-00790, IPR2015-00799, IPR2015-00800, and
`
`IPR2015-00801.
`
`C. The ’634 Patent (Ex. 1450)
`
`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. 1450, 17:17-56,
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`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-
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`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.
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`
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`Case IPR2015-00791
`Patent 7,237,634 B2
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`D. Illustrative Claims
`
`Petitioner challenges independent claim 80 and dependent claims 93,
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`94, 96, 99, 106-108, and 113 which depend either directly or indirectly from
`
`claim 80. Petitioner also challenges independent claim 114 and dependent
`
`claims 127, 128, 132, 139-141, and 146, which depend either directly or
`
`indirectly from claim 114. Petitioner also challenges independent claim 215
`
`and dependent claims 229 and 231, which depend directly from claim 215.
`
`Independent claims 80, 114, and 215 are reproduced below:
`
`80. A method for controlling a hybrid vehicle, comprising:
`determining instantaneous road load (RL) required to
`propel the hybrid vehicle responsive to an operator command;
`monitoring the RL over time;
`operating at least one electric motor to propel the hybrid
`vehicle when the RL required to do so is less than a setpoint
`(SP);
`
`operating an internal combustion engine of the hybrid
`vehicle to propel the hybrid vehicle when the RL required to do
`so is between the SP and a maximum torque output (MTO) of
`the engine, wherein the engine is operable to efficiently produce
`torque above the SP, and wherein the SP is substantially less
`than the MTO; and
`wherein said operating the internal combustion engine to
`propel the hybrid vehicle is performed when: the RL>the SP for
`at least a predetermined time; or the RL>a second setpoint
`(SP2), wherein the SP2 is a larger percentage of the MTO than
`the SP; and
`operating both the at least one electric motor and the
`engine to propel the hybrid vehicle when the torque RL
`required to do so is more than the MTO.
`
`Id. at 65:11-33.
`
`4
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`Case IPR2015-00791
`Patent 7,237,634 B2
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`114. A method for controlling a hybrid vehicle, comprising:
`determining instantaneous road load (RL) required to
`propel the hybrid vehicle responsive to an operator command;
`monitoring the RL over time;
`operating at least one electric motor to propel the hybrid
`vehicle when the RL required to do so is less than a setpoint
`(SP);
`
`wherein said operating the at least one electric motor to
`propel the hybrid vehicle is performed when the RL<the SP for
`at least a predetermined amount of time;
`operating an internal combustion engine of the hybrid
`vehicle to propel the hybrid vehicle when the RL required to do
`so is between the SP and a maximum torque output (MTO) of
`the engine, wherein the engine is operable to efficiently produce
`torque above the SP, and wherein the SP is substantially less
`than the MTO; and
`operating both the at least one electric motor and the
`engine to propel the hybrid vehicle when the torque RL
`required to do so is more than the MTO.
`
`Id. at 68:34-55.
`
`215. A method for controlling a hybrid vehicle, comprising:
`determining instantaneous road load (RL) required to
`propel the hybrid vehicle responsive to an operator command;
`operating at least one electric motor to propel the hybrid
`vehicle when the RL required to do so is less than a setpoint
`(SP);
`
`operating an internal combustion engine of the hybrid
`vehicle to propel the hybrid vehicle when the RL required to do
`so is between the SP and a maximum torque output (MTO) of
`the engine, wherein the engine is operable to efficiently produce
`torque above the SP, and wherein the SP is substantially less
`than the MTO; and
`operating both the at least one electric motor and the
`engine to propel the hybrid vehicle when the torque RL
`required to do so is more than the MTO; and
`regeneratively charging a battery of the hybrid vehicle
`when instantaneous torque output of the engine>the RL, when
`
`5
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`Case IPR2015-00791
`Patent 7,237,634 B2
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`the RL is negative, and/or when braldng is initiated by an
`operator of the hybrid vehicle.
`
`Id. at 79:10-31.
`
`E. Grounds of Unpatentability
`
`We instituted an interpartes review of claims 80, 93, 94, 96, 99, 106-
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`108, 113,114, 127, 128, 132, 139-141,146,215,229, and 231 onthe
`
`following grounds:
`
`Ibaraki ’882 2 and the general
`knowledge of a POSA
`
`§ 103
`
`215 and 229
`
`Ibaraki ’882, Frank,3 and the general
`knowledge of a POSA
`
`§ 103
`
`Ibaraki ’882, Frank, Suga,4 and the
`general knowledge of a POSA
`Ibaraki ’882, Jurgen,5 Lateur,6 and the
`general knowledge of a POSA
`
`§ 103
`
`§ 103
`
`80, 93, 94, 96, 99,
`106-108, 114, 127,
`128, 132, and 139-
`141
`
`113 and 146
`
`231
`
`II. ANALYSIS
`
`A. Petitioner Estoppel
`
`On March 10, 2016, we rendered a final written decision of claims 80,
`
`93, 99, 114, 127, 132, 139, and 215 of the ’634 patent in IPR2014-01416.
`
`z U.S. Patent No. 5,789,882, issued Aug. 4, 1998 (Ex. 1452) ("Ibaraki
`
`’882").
`3 U.S. Patent No. 6,116,363, issued Sept. 12, 2000 (Ex. 1489) ("Frank").
`4 U.S. Patent No. 5,623,104, issued Apr. 22, 1997 (Ex. 1454) ("Suga").
`5 Ronald Jurgen, Automotive Electronics Handbook, 1995 (Ex. 1491)
`
`("Jurgen").
`6 U.S. Patent No. 5,823,280, issued Oct. 20, 1998 (Ex. 1490) ("Lateur").
`
`6
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`Case IPR2015-00791
`Patent 7,237,634 B2
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`Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc., Case IPR2014-
`
`01416 (PTAB March 10, 2016) (Paper 26). Patent Owner argues that,
`
`pursuant to 35 U.S.C. § 315(e)(1), Petitioner may not maintain its challenge
`
`of claims 80, 93, 99, 114, 127, 132, 139, and 215. PO Resp. 17. Petitioner
`
`responds that it is not estopped with respect to claims 80, 114, and 215
`
`because it was necessary for it to file multiple petitions to address multiple
`
`dependent claims. Pet. Reply 4.
`
`Under 35 U.S.C. § 315(e)(1), a petitioner who has obtained a final
`
`written decision on a patent claim in an interpartes 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
`petitioner raised or reasonably could have raised during that
`inter partes review.
`
`On March 10, 2016, a final written decision was entered in IPR2014-
`
`01416, in which we determined that claims 80, 93, 99, 114, 127, 132, 139,
`
`and 215 of the ’634 patent are unpatentable. Petitioner in this proceeding is
`
`the same Petitioner in IPR2014-01416. The grounds raised by Petitioner in
`
`IPR2014-01416 against claims 80, 93, 99, 114, 127, 132, 139, and 215 were
`
`not the same as the grounds raised against those claims in this proceeding.
`
`Nonetheless, Ibaraki ’882 and Frank were cited during prosecution that led
`
`to the ’634 patent and are listed on the face of the ’634 patent. Ex. 1450.
`
`7
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`Case IPR2015-00791
`Patent 7,237,634 B2
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`Petitioner does not argue that it reasonably could not have raised its
`
`challenge to claims 80, 93, 99, 114, 127, 132, 139, and 215 based on Ibaraki
`
`’882 and Frank in IPR2014-01416. Pet. Reply 4. We determine that
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`Petitioner reasonably could have raised this challenge in IPR2014-01416.
`
`Accordingly, Petitioner is estopped under 35 U.S.C. § 315(e)(1) from
`
`maintaining the grounds based on Ibarald ’882 against claims 80, 93, 99,
`
`114, 127, 132, 139, and 215. We dismiss the interpartes review with
`
`respect to claims 80, 93, 99, 114, 127, 132, 139, and 215.
`
`Although we determine it necessary to address the parties’ contentions
`
`with respect to independent claims 80, 114, and 215 because claims 94, 96,
`
`106-108, 113,128, 140, 141,146, 229, and 231 depend from one of claims
`
`80, 114, and 215, we do not otherwise provide a final written decision on the
`
`merits with respect to claims 80, 93, 99, 114, 127, 132, 139, and 215, or
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`again hold those claims to be unpatentable.
`
`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`
`reasonable construction standard, claim terms are generally 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). Any special definition for a
`
`claim term must be set forth with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Petitioner proposes constructions for the following claim terms: "road
`
`load," "low-load operation mode I," "high-way cruising operation mode
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`Case IPR2015-00791
`Patent 7,237,634 B2
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`IV," and "acceleration operation mode V." Pet. 9, 11. In our Decision to
`
`Institute, we interpreted those terms. Dec. 9-10, 12-14. The claim terms
`
`"low-load operation mode I," "high-way cruising operation mode IV," and
`
`"acceleration operation mode V," however, are found only in dependent
`
`claims 99 and 132. For reasons stated above, we dismiss the interpartes
`
`review with respect to claims 99 and 132. Thus, we determine it
`
`unnecessary to interpret those terms for purposes of this decision.
`
`Moreover, neither party has indicated that our interpretation with respect to
`
`road load (RL) was improper, and we do not perceive any reason or
`
`evidence that now compels any deviation from our initial interpretation.
`
`Accordingly, we construe "road load" as the amount of instantaneous torque
`
`required to propel the vehicle, be it positive or negative.
`
`For purposes of this decision, we find it necessary to construe
`
`"setpoint" and the "operating limitations" found in claims 80, 114, and 215.
`
`Setpoint (SP)
`
`The term "setpoint" or "SP" is recited in independent claims 80, 114,
`
`and 215, and, thus, necessarily is included in dependent claims 94, 96, 106-
`
`108, 113,128, 140, 141,146, 229, and 231. Petitioner proposes that
`
`"setpoint" or "SP" be construed, in the context of these claims, as
`
`"predetermined torque value." Pet. 10-11. Patent Owner argues that
`
`"setpoint" or "SP" be construed as "a definite, but potentially variable value
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`Case IPR2015-00791
`Patent 7,237,634 B2
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`at which a transition between operating modes may occur." PO Resp. 7.7
`
`We agree with Petitioner that the claims compare the setpoint either to
`
`an engine torque value or a torque based "road load" value. Pet. 10-11.
`
`Each of claims 80, 114, and 215 recites a condition "when the RL required
`
`to do so is less than a setpoint (SP)." Ex. 1450,65:17-18, 68:41-42; 79:16-
`
`17. Each of claims 80, 114, and 215 further recites a range established by
`
`the setpoint at one end, and the maximum torque output of the engine at the
`
`other end, by the language "when the RL required to do so is between the SP
`
`and a maximum torque output (MTO) of the engine." Id. at 65:20-22,
`
`68:47-49; 79:19-21.
`
`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
`
`7 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. 12.
`Petitioner agrees with that interpretation, while Patent Owner does not. Pet.
`Reply 2; PO Resp. 7-11.
`
`10
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`Case IPR2015-00791
`Patent 7,237,634 B2
`
`in the 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 Specification of the ’634 patent, 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. 1450, 19:67-20:6 (emphasis added).
`
`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.L 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.
`
`DirecTVEnterprises, 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. MedradInc., 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
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`variable value at which a transition between operating modes may occur."
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`Patent 7,237,634 B2
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`PO Resp. 7 n.1. We note that that construction also does not require that an
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`operating mode be changed at a setpoint, as Patent Owner urges. Instead,
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`the construction of the district courts sets forth that a transition between
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`operating modes "may occur" at a setpoint, which is consistent with our
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`construction here.
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`Patent Owner additionally argues that "setpoint" should not be limited
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`to a torque value, because the Specification makes clear that it also can be
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`the state of charge of a battery. PO. Resp. 10-11. Patent Owner cites to the
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`following passage in the Specification:
`
`[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. 1450, 40:18-26 (emphasis added). This argument also is misplaced. As
`
`we noted above, independent claim 1 requires a comparison of the setpoint
`
`to an engine torque 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."
`
`The "operating" limitations
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`Patent Owner asserts that the challenged claims require a comparison
`
`of road load (RL) to setpoint (SP) and also to maximum torque output
`
`(MTO). PO Resp. 11-17. The assertion is based on the requirements in
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`Case IPR2015-00791
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`each of claims 80, 114, and 215 of(l) operating at least one first electric
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`motor to propel the hybrid vehicle "when the RL required to do so is less
`
`than the SP," (2) operating an internal combustion engine of the hybrid
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`vehicle to propel the hybrid vehicle "when the RL required to do so is
`
`between the SP and a maximum torque output (MTO) of the engine," and
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`(3) operating both the at least one first electric motor and the engine to
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`propel the hybrid vehicle "when the torque RL required to do so is more
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`than the MTO."
`
`In the above discussion of the construction of setpoint, we already
`
`noted that claims 80, 114, and 215 each require a comparison of road load to
`
`a setpoint because of the claim recitations "when the RL required to do so is
`
`less than the SP" and "when the RL required to do so is between the SP and
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`a maximum torques output (MTO) of the engine." For similar reasons,
`
`claims 80, 114, and 215 each require a comparison of road load to a
`
`maximum torque output (MTO) because of the recitation "when the torque
`
`RL required to do so is more than the MTO." 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 road load (RL) to a
`
`setpoint (SP) and also to a maximum torque output (MTO). That, however,
`
`does not mean the claims exclude the comparison of other parameters.
`
`C. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`Case IPR2015-00791
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`subject matter pel~ains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`In that regard, an obviousness analysis "need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, for
`
`a court can take account of the inferences and creative steps that a person of
`
`ordinary skill in the art would employ." KSR, 550 U.S. at 418; see
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`Translogic, 504 F.3d at 1259.
`
`The level of ordinary skill in the art is reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`
`In re GPACInc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
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`579 F.2d 86, 91 (CCPA 1978).
`
`D. Claims 215 and 229
`
`As discussed above, we dismiss the interpartes review with respect to
`
`claim 215 pursuant to 35 U.S.C. § 315 (e)(1). Claim 229, however, depends
`
`from claim 215 and necessarily includes all of the limitations of claim 215.
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`Accordingly, we first address the contentions made by Petitioner as to how
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`Ibaraki ’882 renders obvious claim 215.
`
`Petitioner contends that claims 215 and 229 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Ibaraki ’882 and the general knowledge
`
`of a person ofordinm3, skill in the art. Pet. 38-39. To support its
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`contention, Petitioner provides detailed explanations as to how the prior art
`
`meets each claim limitation of claims 215 and 229. Id. Petitioner also relies
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`Patent 7,237,634 B2
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`upon a Declaration of Dr. Gregory W. Davis, who has been retained as an
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`expert witness by Petitioner for the instant proceeding. Ex. 1455. For the
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`reasons that follow, and notwithstanding Patent Owner’s arguments, which
`
`we address below, we are persuaded by Petitioner’s showing, which we
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`adopt as our own, that claim 229, which depends from claim 215, is
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`unpatentable under 35 U.S.C. § 103(a) as obvious over Ibaraki ’882 and the
`
`general knowledge of a person of ordinary skill in the art.
`
`Ibaraki ’882
`
`Ibaraki ’882 describes a drive control apparatus and method for a
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`hybrid vehicle equipped with two drive power sources consisting of an
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`electric motor and engine such as an internal combustion engine. Ex. 1452,
`
`1:9-14. Ibaraki ’882 describes that when the electric motor (14, Fig. 1 or
`
`114, Fig. 8) functions also as an electric generator, a separate electric
`
`generator may be provided in addition to the electric motor. Id. at 26:34-38.
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`Ibaraki ’882 further describes an electric energy storage device or battery 22.
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`Id. at Fig. 1. 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
`
`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.
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`Case IPR2015-00791
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`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.
`FIG. 11
`
`ILl
`Z)
`o
`r’¢
`o
`I-’-
`LI.J
`
`r’r"
`t’-’l
`LU
`.,_d
`oI
`I
`ill
`
`C
`
`B=B2
`
`0
`
`VEH CLE SPEED
`
`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
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`first boundary line B. When the vehicle running condition is held within the
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`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
`
`running condition is in the range above the second boundary line C, the
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`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 Bt to B2 so as to enlarge the range in which the
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`MOTOR DRIVE mode is selected. Id. at 21:2-4. Ibaraki ’882 further
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`Case IPR2015-00791
`Patent 7,237,634 B2
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`describes an ELECTRICITY GENERATING DRIVE mode where the
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`engine provides surplus power that is greater than the vehicle drive torque.
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`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.
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`Claim 215
`
`Claim 215 recites a method for controlling a hybrid vehicle.
`
`Petitioner contends that Ibaraki ’882 describes a drive control apparatus for
`
`controlling a hybrid vehicle that may be propelled by an internal engine and
`
`electric motor. Pet. 13, 38; Ex. 1452, 1:9-14; Ex. 1455 ¶¶ 152-154. We are
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`persuaded by Petitioner’s showing, and adopt it as our own, that Ibaraki ’882
`
`describes a method for controlling a hybrid vehicle.
`
`Claim 215 recites "determining instantaneous road load (RL) required
`
`to propel the hybrid vehicle responsive to an operator command." Petitioner
`
`contends, with suppol~ing evidence, that a person having ordinary skill in the
`
`art would have understood that the "vehicle drive torque" values described
`
`in Ibaraki ’882 represent instantaneous road load (torque) required to propel
`
`the vehicle responsive to operator command (accelerator pedal operating
`
`amount and rate of change of accelerator pedal operati