On behalf of: Ford Motor Company
`
`
`Entered: January 6, 2017
`
`
`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. 8,214,097
`
`IPR Case No.: IPR2015-00792
`
`______________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and CARL M.
`DeFRANCO, Administrative Patent Judges.
`
`
`
`PETITIONER’S NOTICE OF CROSS-APPEAL
`
`
`
`
`
`
`
`
`
`
`Entered: January 6, 2017
`
`
`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. 8,214,097
`
`IPR Case No.: IPR2015-00792
`
`______________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and CARL M.
`DeFRANCO, Administrative Patent Judges.
`
`
`
`PETITIONER’S NOTICE OF CROSS-APPEAL
`
`
`
`
`
`
`
`
`
`Case No.: IPR2015-00792
`Attorney Docket No.: FPGP0110IPR3
`
`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 25, 2016
`
`(Paper 30, attached hereto) and from all underlying orders, decisions, rulings and
`
`opinions that are adverse to Petitioner, including, without limitation, those within
`
`the Decision on Institution of Inter Partes Review, entered October 26, 2015 (Paper
`
`13).
`
`This notice is timely under C.F.R. § 90.3(a)(1) and Rule 4(a)(3) of the Federal
`
`Rules of Appellate Procedure because Patent Owners Paice LLC and the Abell
`
`Foundation, Inc. filed a notice of appeal on December 23, 2016. That appeal was
`
`assigned Case No. 17-1406.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates that
`
`the issues on cross-appeal include, but are not limited to, the Board’s decision not to
`
`provide a final written decision on the merits, nor hold unpatentable, claims 1, 3, 4,
`
`9, 11, 13, 14, 19, 21, 23, 24, 28, 30, 32 and 33 of U.S. Patent No. 8,214,097.
`
`Contemporaneously with this submission, a copy of the Notice of Cross-
`
`Appeal is being filed electronically with the Patent Trial and Appeal Board. In
`
`addition, a copy of this Notice of Appeal, along with the required docketing fees, are
`
`being electronically filed with the Clerk’s Office for the United States Court of
`
`Appeals for the Federal Circuit.
`
`2
`
`
`
`
`
`
`
`
`Dated: January 6, 2017
`
`
`
`Respectfully submitted,
`
`Case No.: IPR2015-00792
`Attorney Docket No.: FPGP0110IPR3
`
`
`
`
`
` s/Sangeeta G. Shah/
`Sangeeta G. Shah (Reg. No. 38,614)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Petitioner
`
`
`
`
`
`
`3
`
`
`
`Case No.: IPR2015-00792
`Attorney Docket No.: FPGP0110IPR3
`
`CERTIFICATE OF FILING AND SERVICE
`
`
`
`The undersigned hereby certifies that on January 6, 2017, a complete and
`
`entire copy of PETITIONER FORD MOTOR COMPANY’S NOTICE OF
`
`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: IPR36351-0013IP3@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: IPR36351-0013IP3@fr.com;
`
`Riffe@fr.com
`
` I
`
` also certify that in addition to being filed electronically with the Board
`
`through its E2E System, the original of the foregoing Petitioner Ford Motor
`
`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 January 6, 2017 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
`
`
`
`Case No.: IPR2015-00792
`Attorney Docket No.: FPGP0110IPR3
`
`I further certify that a copy of the foregoing Petitioner’s Notice of Cross-
`
`Appeal was filed via CM/ECF on January 6, 2017, with the United States Court of
`
`Appeals for the Federal Circuit.
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`s/Sangeeta G. Shah/
`Sangeeta G. Shah (Reg. No. 38,614)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Petitioner
`
`5
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Entered: October 25, 2016
`
`UNITED STATES PATENT AND TRADEMARI¢ OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`V,
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`
`Case IPR2015-00792
`Patent 8,214,097 B2
`
`Before SALLY C. MEDLEY, ICALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent &tdge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and37 C.F.R. § 42.73
`
`
`
`IPR2015-00792
`Patent 8,214,097 B2
`
`I. INTRODUCTION
`
`Paice LLC & The Abell Foundation, Inc. (collectively, "Paice") are
`
`the owners of U.S. Patent No. 8,214,097 B2 ("the ’097 patent"). Ford Motor
`
`Company ("Ford") filed a Petition for interpartes review of the ’097 patent,
`
`challenging the patentability of claims 1, 3, 4, 7, 9, 11, 13, 14, 17, 19, 21, 23,
`
`24, 27, 28, 30, 32, 33, 37, and 38 under 35 U.S.C. § 103. Paper 2 ("Pet.").
`
`In a preliminary proceeding, we instituted an interpartes review because
`
`Ford made a threshold showing of a "reasonable likelihood" that the
`
`challenged claims are unpatentable under 35 U.S.C. § 314. Paper 13
`
`("Dec.").
`
`Subsequent to institution, Paice filed a Patent Owner Response (Paper
`
`16, "PO Resp."), and Ford followed with a Reply (Paper 18, "Reply"). l An
`
`oral hearing was held on June 28, 2016, and a transcript of the hearing is
`
`included in the record. Paper 29 ("Tr."). After reviewing the evidence and
`
`arguments of the parties, and pursuant to our jurisdiction under 35 U.S.C.
`
`§ 6, we conclude,first, that Ford is estopped from maintaining its challenge
`
`in this proceeding against claims 1, 3, 4, 9, 11, 13, 14, 19, 21, 23, 24, 28, 30,
`
`32, and 33, and, second, that Ford has proven, by a preponderance of the
`
`evidence, that remaining claims 7, 17, 27, 37, and 38 are unpatentable.
`
`A.
`
`Related Cases
`
`II. BACKGROUND
`
`This is not the first time Ford has presented the ’097 patent for inter
`
`partes review. A number of claims of the ’097 patent were adjudicated
`
`1 In addition, Paice filed a Motion for Observation on Cross-Examination
`(Paper 22) and Ford filed a Response to Motion for Observation on Cross-
`Examination (Paper 25), both of which have been considered.
`
`
`
`IPR2015-00792
`Patent 8,214,097 B2
`
`previously in IPR2014-00570 and IPR2014-01415, only on different
`
`grounds.2 Specifically, the -570 proceeding led to final written decision of
`
`unpatentability for claims 30, 32, and 33 at issue here (2015 WL 5782083
`
`(PTAB Sep. 28, 2015)), and the -1415 proceeding led to a final written
`
`decision of unpatentability for claims 1, 3, 4, 7, 9, 11, 13, 14, 19, 21, 23, 24,
`
`28, and 30 (2016 WL 932941) (PTAB Mar. 10, 2016)). The -570 and -1415
`
`decisions are currently on appeal at the U.S. Court of Appeals for the
`
`Federal Circuit.
`
`The ’097 patent is also the subject of co-pending district court actions,
`
`including Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md.), filed
`
`Feb. 19, 2014, and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
`
`(D. Md.), filed Feb. 16, 2012. Pet. 2.
`
`B.
`
`The ’097 Patent
`
`The ’097 patent describes a hybrid vehicle with an internal
`
`combustion engine, an electric motor, and a batteu bank, all controlled by a
`
`microprocessor that controls the direction of torque transfer between the
`
`engine, the motor, and the drive wheels of the vehicle. Ex. 1201, 16:61-
`
`17:5, Fig. 4. The microprocessor monitors the vehicle’s instantaneous
`
`torque requirements, also known as "road load (RL)," to determine whether
`
`to operate the engine, the electric motor, or both, to propel the vehicle. Id. at
`
`11:50-52. The vehicle’s various modes of operation include an engine-only
`
`mode, an all-electric mode, or a hybrid mode. Id. at 35:14-36:4, 36:39-
`
`37:22.
`
`2 The earlier -570 and -1415 proceedings each included a number of claims
`
`from the ’097 patent not at issue here.
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`3
`
`
`
`IPR2015-00792
`Patent 8,214,097 B2
`
`As summarized in the ’097 patent, the microprocessor selects the
`
`appropriate mode of operation "in response to evaluation of the road load,
`
`that is, the vehicle’s instantaneous torque demands and input commands
`
`provided by the operator of the vehicle.’’3 Id. at 17:16-22. "[T]he
`
`microprocessor can effectively determine the road load by monitoring the
`
`response of the vehicle to the operator’s command for more power." Id. at
`
`36:57-64. "[T]he torque required to propel the vehicle [i.e., road load]
`
`varies as indicated by the operator’s commands." Id. at 37:23-25. For
`
`example, the microprocessor "monitors the rate at which the operator
`
`depresses [accelerator and brake] pedals.., as well as the degree to which
`
`[the] pedals.., are depressed." Id. at 27:1-4. The microprocessor uses this
`
`information "as an indication that an amount of torque that can efficiently be
`
`provided by the engine.., will shol~ly be required." Id. at 27:6-22.
`
`The microprocessor then compares the vehicle’s torque requirements
`
`against a predefined "setpoint (SP)" to determine whether to employ the
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`engine. Id. at 36:39-37:21, 39:27-59. The microprocessor runs the engine
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`only in a range of high fuel efficiency, such as when the vehicle’s torque
`
`requirements, or road load (RL), reaches a setpoint (SP) of approximately
`
`30% of the engine’s maximum torque output (MTO). Id. at 20:37-45,
`
`36:39-59; see also id. at 13:48-50 ("the engine is never operated at less than
`
`30% of MTO, and is thus never operated inefficiently"). The
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`microprocessor also limits the rate of increase of the engine’s torque output
`
`so that combustion of fuel occurs at a near stoichiometric air-fuel ratio. See,
`
`3 The ’097 patent contrasts the claimed invention to prior control strategies
`
`"based solely on speed," which are "incapable of responding to the
`operator’s commands, and will ultimately be unsatisfactory." Ex. 1201,
`13:24-28.
`
`4
`
`
`
`IPR2015-00792
`Patent 8,214,097 B2
`
`e.g., id. at 27:31-35, 29:63-30:12, 37:2-6, 38:62-39:14. These control
`
`strategies have the effect of maximizing fuel efficiency and reducing carbon
`
`emissions of the vehicle. Id. at 15:38-41.
`
`C.
`
`The Challenged Claims
`
`Of the challenged claims, four are independent claims 1, 11, 21, and
`
`30. Claims 1, 11, and 21 relate to a method for controlling a hybrid vehicle,
`
`while claim 30 relates to the hybrid vehicle itself. Claim 1 is illustrative:
`
`1. A method for controlling a hybrid vehicle, said
`vehicle comprising a battery, a controller, wheels, an internal
`combustion engine and at least one electric motor, wherein both
`the internal combustion engine and motor are capable of
`providing torque to the wheels of said vehicle, and wherein said
`engine has an inherent maximum rate of increase of output
`torque, said method comprising the steps of:
`operating the internal combustion engine of the hybrid
`vehicle to provide torque to operate the vehicle;
`operating said at least one electric motor to provide
`additional torque when the amount of torque provided by said
`engine is less than the amount of torque required to operate the
`vehicle; and
`employing said controller to control the engine such that
`a rate of increase of output torque of the engine is limited to
`less than said inherent maximum rate of increase of output
`torque, and wherein said step of controlling the engine such that
`the rate of increase of output torque of the engine is limited is
`performed such that combustion of fuel within the engine
`occurs at a substantially stoichiometric ratio; and comprising
`the further steps of:
`operating said internal combustion engine to provide
`torque to the hybrid vehicle when the torque required to
`operate the hybrid vehicle is between a setpoint SP and a
`maximum torque output (MTO) of the engine, wherein the
`engine is operable to efficiently produce torque above SP, and
`wherein SP is substantially less than MTO;
`
`
`
`IPR2015-00792
`Patent 8,214,097 B2
`
`operating both the at least one electric motor and the
`engine to provide torque to the hybrid vehicle when the torque
`required to operate the hybrid vehicle is more than MTO; and
`operating the at least one electric motor to provide torque
`to the hybrid vehicle when the torque required to operate the
`hybrid vehicle is less than SP.
`
`Ex. 1201, 56:47-57:14 (emphases added).
`
`Independent claims 11 and 21 are similar in scope to claim 1, except
`
`claim 21 uses the term "RL" in place of the phrase "the amount of torque
`
`required to operate the vehicle" found in claims 1 and 11. Claim 21 also
`
`recites the steps of"determining instantaneous road load (RL) required to
`
`propel the vehicle" and "operating the engine to charge the battery
`
`responsive to the state of charge of the battery." Finally, although claim 30
`
`is directed to the components of a hybrid vehicle, the limitations pertaining
`
`to the "controller" are similar in scope to those of claims 1, 11, and 21.
`
`D.
`
`The Instituted Grounds
`
`In a preliminary proceeding, we instituted trial because Ford made a
`
`threshold showing of a "reasonable likelihood" under 35 U.S.C. § 314(a)
`
`that claims 1, 7, 9, 11, 17, 19, 21, 27, 28, 30, 37, and 38 are unpatentable as
`
`obvious over Severinsky4 and Takaoka,5 and that claims 3, 4, 13, 14, 23, 24,
`
`32, and 33 are unpatentable as obvious over Severinsky, Takaoka, and
`
`Yamaguchi.6 Dec. 14, 16.
`
`We now decide, first, whether Ford is estopped under 35 U.S.C.
`
`§ 315(e)(1) from maintaining its challenge against claims 1, 3, 4, 9, 11, 13,
`
`4 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1205, "Severinsky").
`5 T. Takaoka et al., A High-Expansion Ratio Gasoline Engine for the Toyota
`
`Hybrid System, TOYOTA TECHNICAL REVIEW, vol. 47, no. 2 (Apr. 1998) (Ex.
`1206, "Takaoka").
`6 U.S. Patent No. 5,865,263, iss. Feb. 2, 1999 (Ex. 1209, "Yamaguchi").
`
`6
`
`
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`IPR2015-00792
`Patent 8,214,097 B2
`
`14, 19, 21, 23, 24, 28, 30, 32, and 33 because they are the subject of prior
`
`final written decisions, and second, whether Ford has proven the
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`unpatentability of any remaining claims by a "preponderance of the
`
`evidence" under 35 U.S.C. § 316(e).
`
`III. ANALYSIS
`
`A.
`
`Petitioner Estoppel
`
`As discussed above, in two previous final written decisions on the
`
`’097 patent, we determined that claims 1, 3, 4, 9, 11, 13, 14, 19, 21, 23, 24,
`
`28, 30, 32, and 33 are unpatentable. Given those final written decisions,
`
`Paice argues that, pursuant to 35 U.S.C. § 315(e)(1), Ford is estopped fi’om
`
`maintaining the instant challenge against any claims previously found
`
`unpatentable. PO Resp. 15-16. Ford responds that estoppel should not
`
`attach to claims 7, 17, 27, and 37 because they were not challenged
`
`previously. Reply 6-7. And, although claim 38 was challenged previously,
`
`Ford points out that it was denied institution. Id.
`
`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.
`
`7
`
`
`
`IPR2015-00792
`Patent 8,214,097 B2
`
`As mentioned above, on September 15, 2015, a final written decision
`
`was entered in IPR2015-00570, in which we deemed claims 30, 32, and 33
`
`to be unpatentable. Later, on March 10, 2016, a final written decision was
`
`entered in IPR2015-01415, in which we deemed claims 1, 3, 4, 7, 9, 11, 13,
`
`14, 19, 21, 23, 24, 28, and 30 unpatentable. Ford was the petitioner in those
`
`proceedings, as it is in this proceeding. Although the grounds raised by Ford
`
`in the -570 and -1415 proceedings against claims 1, 3, 4, 9, 11, 13, 14, 19,
`
`21, 23, 24, 28, 30, 32, and 33 were not the same as the grounds raised
`
`against those claims in this proceeding, the prior art references asserted in
`
`those prior proceedings include the identical references asserted in this
`
`proceeding, i.e., Severinsky, Takaoka, and Yamaguchi.
`
`Ford makes no argument as to why it reasonably could not have raised
`
`the grounds based on Severinsky, Takaoka, and Yamaguchi, as asserted
`
`here, in its earlier challenges against claims 1, 3, 4, 9, 11, 13, 14, 19, 21, 23,
`
`24, 28, 30, 32, and 33. See Reply 6-7. Indeed, with respect to claims 4, 14,
`
`24, and 30, Ford did raise the identical ground asserted here in the -1415
`
`proceeding. Thus, at a minimum, we determine that Ford reasonably could
`
`have raised the grounds based on Severinsky, Takaoka, and Yamaguchi
`
`against any of the claims under challenge in the - 1415 proceeding.
`
`Accordingly, Petitioner is now estopped under 35 U.S.C. § 315(e)(1) from
`
`maintaining its challenge against claims 1, 3, 4, 9, 11, 13, 14, 19, 21, 23, 24,
`
`28, 30, 32, and 33, on which a final written decision has already been
`
`rendered. As such, we dismiss the inter partes review with respect to those
`
`claims.7
`
`7 Although we address the parties’ contentions with respect to independent
`claims 1, 11, 21, and 30, because their respective limitations are necessarily
`
`8
`
`
`
`IPR2015-00792
`Patent 8,214,097 B2
`
`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); Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131, 2142-46 (2016). Ford proposes a construction
`
`for three claim terms, namely, "road load," "setpoint," and "abnormal and
`
`transient conditions." Pet. 13-16. We construed all three terms in our
`
`Decision to Institute. Dec. 6-9. Ford does not challenge our original
`
`constructions. See Reply 2-5. Paice, however, requests that we reconsider
`
`our construction of"setpoint" and "ambient and transient conditions." See
`
`PO Resp. 6-9, 12-13. Paice also requests clarification with respect to the
`
`term "maximum torque output," as used in claims 1, 11, and 21. PO Resp.
`
`9-12. We address the three terms disputed by Paice, but first we summarize
`
`our construction of "road load" from the institution decision.
`
`1.
`
`"Road load (RL)"
`
`The term "road load" or "RL" appears in independent claim 21, and
`
`thus, necessarily is included in dependent claim 27. Neither Ford nor Paice
`
`challenges our construction of"road load" fi’om the Decision to Institute. As
`
`noted therein, the specification of the ’097 patent expressly defines "road
`
`load" as "the vehicle’s instantaneous torque demands, i.e., that amount of
`
`torque required to propel the vehicle at a desired speed," and further notes
`
`that it "can be positive or negative, i.e., when decelerating or descending a
`
`hill, in which case the negative road load.., is usually employed to charge
`
`included in remaining claims 7, 17, 27, 37, and 38, we do not otherwise
`provide a final written decision on their merits.
`
`9
`
`
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`IPR2015-00792
`Patent 8,214,097 B2
`
`the battery bank." Dec. 6 (citing Ex. 1201, 12:30-57). We do not perceive
`
`any reason or evidence that might compel us to deviate from that original
`
`analysis. Thus, we maintain our construction of"road load" or "RL" as "the
`
`amount of instantaneous torque required to propel the vehicle, be it positive
`
`or negative."
`
`2. "Setpoint (SP)"
`
`The term "setpoint" or "SP" is found in independent claims 1, 11, and
`
`21, as well as dependent claims 7, 17, 27, and 37. In our Decision to
`
`Institute, after taking into consideration the parties’ arguments and
`
`supporting evidence, we construed "setpoint" or "SP" to mean "a
`
`predetermined torque value that may or may not be reset." Dec. 8. Ford
`
`agrees with that construction, but Paice does not. Reply 3; PO Resp. 6-9.
`
`Paice maintains, as it did in the preliminary proceeding, that "setpoint" or
`
`"SP" should "not be limited to a torque value" but rather should be
`
`construed as "a definite, but potentially variable value at which a transition
`
`between operating modes may occur." PO Resp. 6-9 (emphasis added).
`
`As discussed in our Decision to Institute, we looked first to the
`
`context in which the term "setpoint" appears in the claims. See Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) ("[T]he claims
`
`themselves provide substantial guidance as to the meaning of particular
`
`claim terms .... [T]he context in which a term is used in the asserted claim
`
`can be highly instructive"). In that regard, we determined that the claims
`
`compare the setpoint against a torque value. Id. For example, each of
`
`claims 1 and 11 speaks of"setpoint" or "SP" as being the lower limit of a
`
`range at which the engine can produce torque efficiently, i.e., "when the
`
`torque required to operate the hybrid vehicle is between a setpoint (SP) and
`
`10
`
`
`
`IPR2015-00792
`Patent 8,214,097 B2
`
`a maximum torque output (MTO) of the engine, wherein the engine is
`
`operable to efficiently produce torque above SP." Ex. 1201, 57:1-7, 58:11-
`
`17 (emphasis added). Claim 21 similarly compares the setpoint "SP" against
`
`a torque-based "road load" or "RL" value. Id. at 59:7-12. These express
`
`recitations suggest that "setpoint" is not just any value, but a value that--per
`
`the surrounding claim language--equates to a measure of"torque.’’8
`
`Paice, on the other hand, urges that "setpoint" is synonymous with a
`
`"transition" point, not a torque value. PO Resp. 6-7. Paice points to a
`
`passage from the specification, exclusive of the claims, as supporting a
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`construction of"setpoint" that "marks a point at which the vehicle may
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`transition between two modes," such as from the motor propelling the
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`vehicle to a mode in which the engine is also used to propel the vehicle. Id.
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`at 7 (citing Ex. 1201, 39:52-59). Paice’s argument is misplaced. Although
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`the passage of the specification on which Paice relies says that "sometimes"
`
`the setpoint may serve as a "transition point" (see id.), the claim language
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`itself makes clear that setpoint relates simply to a torque value, without
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`requiring that it be a transition point. In other words, a transition between
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`modes is neither an intrinsic property nor a necessary and required condition
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`of the setpoint as claimed. Indeed, the specification acknowledges that the
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`mode of operation does not always transition, or switch, at a setpoint, but
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`instead depends on a number of parameters. For instance,
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`the values of the sensed parameters in response to which the
`operating mode is selected may vary..., so that the operating
`
`8 Paice’s technical expert, Mr. Neil Hannemann, testified similarly that the
`comparison made in the claims is "most straightforward" if the "setpoint is a
`torque value." Ex. 1240, 79:16-80:25.
`
`11
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`mode is not repetitively switched simply because one of the
`sensed parameters fluctuates around a defined setpoint.
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`Ex. 1201, 19:45-51 (emphasis added). That disclosure suggests that a
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`transition does not spring simply from the recitation of"setpoint." Thus, we
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`will not import into the meaning of"setpoint" an extraneous limitation that
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`is supported by neither the claim language nor the specification. As such,
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`we reject Paice’s attempt to further limit the meaning of setpoint to a
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`transition between operating modes.
`
`Paice additionally argues that "setpoint" should not be limited to a
`
`torque value because the specification describes that the system variable,
`
`"the state of charge of the battery BSC," may be compared against a
`
`setpoint. PO. Resp. 8-9 (citing Ex. 1201, 39:29-37). This argument also is
`
`misplaced. As discussed above, each of claims 1, 11, and 21 requires a
`
`comparison of the setpoint to a variable expressed as a torque value, not a
`
`variable expressed as a state of electrical charge. Thus, in the context of
`
`claims 1, 11, and 21, and those depending therefrom, a setpoint must be a
`
`torque value, and not some state of charge of a battery.
`
`We also regard as meaningful that nothing in the specification
`
`precludes a setpoint from being reset, after it has been set. The specification
`
`states that the value of a setpoint may be "reset... in response to a repetitive
`
`driving pattern." Ex. 1201, 39:60-63. That a setpoint may be reset under
`
`certain circumstances, however, does not foreclose it from being "set," or
`
`"fixed," at some point in time.9 A setpoint for however short a period of
`
`time still is a setpoint. Thus, for the foregoing reasons, we construe
`
`9 The definition of"set" is "determined... premeditated.., fixed...
`
`prescribed, specified ... built-in.., settled." Merriam-Webster’s Collegiate
`Dictiona13~ (10th ed. 2000). Ex. 3001.
`
`12
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`IPR2015-00792
`Patent 8,214,097 B2
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`"setpoint" and "SP" as a "predetermined torque value that may or may not
`
`be reset."
`
`3.
`
`"Maximum Torque Output (MTO)"
`
`Paice requests that we make clear that each of claims 1, 11, and 21
`
`requires a comparison of road load (RL), i.e., the vehicle’s torque
`
`requirements, not only to the setpoint (SP) but also to the maximum torque
`
`output (MTO) of the engine. PO Resp. 9-12. Paice points to the following
`
`limitation as calling for such a comparison: "operating both the at least one
`
`electric motor and the engine to provide torque to the hybrid vehicle when
`
`the torque required to operate the hybrid vehicle is more than MTO." Id. at
`
`9. According to Paice, this limitation calls expressly for a comparison with
`
`MTO. Id. at 10. We agree. Each of claims 1, 11, and 21 has limitations
`
`directed to a comparison with setpoint (SP) or maximum torque output
`
`(MTO). But that comparison is clear from the claim language itself, thus, no
`
`further construction is necessary. Nor does Ford dispute that such a
`
`comparison takes place. And, to the extent Paice requests that we read the
`
`additional phrase % comparison... [that] results in a determination" into
`
`the claims (PO Resp. 10-11), we decline to do so, as it is unclear what is
`
`meant by "determination" when only a comparison is required. And,
`
`although claims 1, 11, and 21 may require a comparison, at some point, with
`
`maximum torque output (MTO) of the engine, that does not mean the claims
`
`exclude a comparison with other parameters.
`
`4.
`
`"Abnormal and Transient Conditions"
`
`Each of claims 7, 17, 27, and 37, which depend, respectively, from
`
`independent claims 1, 11, 21 and 30, adds that the engine is operated "at
`
`torque output levels less than SP under abnormal and transient conditions."
`
`13
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`See, e.g., Ex. 1201, 57:39-41, 60:54-56. The term "abnormal and transient
`
`conditions" is not defined or described with any particularity in the
`
`specification of the ’097 patent. In our Decision to Institute, we found it
`
`unnecessary to construe "abnormal and transient conditions" beyond
`
`determining that it encompasses "starting and stopping the engine" when the
`
`vehicle is operated in "city traffic and reverse operation." Dec. 9. Ford does
`
`not dispute that construction. Reply 4-5. Paice urges, however, that we
`
`further construe this limitation to exclude such conditions as "city traffic and
`
`reverse operation." PO Resp. 12-13. Paice notes that such a distinction was
`
`made during prosecution of the ’097 patent. Id. at 12.
`
`We have reviewed the prosecution history of the ’097 patent and find
`
`it does not support Paice’s assertion. See Ex. 1210. Instead, as Ford points
`
`out, the prosecution histol7 makes clear that "starting the engine" is at least
`
`one example of an abnormal and transient condition: "The ’abnormal and
`
`transient conditions’ referred to are such conditions as starting the engine,
`
`during which operation it must necessarily be operated at less than SP for a
`
`short time." Id. at 238 (emphasis added). Thus, contrary to what Paice
`
`urges now, there was no disavowal, whatsoever, of starting the engine as an
`
`abnormal and transient condition, let alone a "clear and unmistakable"
`
`disavowal. Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1325-
`
`26 (Fed. Cir. 2003). As such, we are not persuaded by Paice’s attempt to
`
`exclude starting and stopping the engine in city traffic or reverse operation
`
`as abnormal and transient conditions. Beyond determining that abnormal
`
`14
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`IPR2015-00792
`Patent 8,214,097 B2
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`and transient conditions include starting and stopping of the engine in city
`
`traffic or reverse operation, we need not construe this term further.l°
`
`C.
`
`Claims 7, 17, 27, 37, and 38
`
`As discussed above, we dismiss the inter partes review with respect to
`
`independent claims 1, 11, 21, and 30, as well as dependent claims 3, 4, 9, 13,
`
`14, 19, 23, 24, 28, 32, and 33. Thus, only dependent claims 7, 17, 27, 37,
`
`and 38 are before us. Nonetheless, dependent claims 7, 17, and 37 stem
`
`from claims 1, 11, 21, respectively, and dependent claims 37 and 38 stem
`
`from claim 30, and thus, each of these remaining claims at issue necessarily
`
`includes the limitations of its base claim. Accordingly, we first address the
`
`limitations incorporated from base claims 1, 11, 21, and 30 into the
`
`respective dependent claims at issue.
`
`Ford provides detailed explanations as to how Severinsky and
`
`Takaoka together teach the limitations of base claims 1, 11, 21, and 30, and
`
`advances a reason why a skilled artisan would have combined their
`
`teachings to arrive at the claimed invention. Pet. 16-48; Reply 7-10, 14-21.
`
`In doing so, Ford relies upon the declaration of Dr. Jeffrey L. Stein, a
`
`technical expel~ retained by Ford for purposes of this proceeding. Ex. 1202.
`
`As discussed below, and notwithstanding Paice’s arguments to the contrary,
`
`we are persuaded by Ford’s showing, which we adopt as our own, that
`
`claims 1, 11, 21, and 30 are unpatentable under 35 U.S.C. § 103(a) as
`
`obvious over the combination of Severinsky and Takaoka.
`
`10 We also note that the term "abnormal and transient conditions" is
`exemplified in a related patent, U.S. Patent No. 7,104,347 B2 ("the ’347
`patent"), in which claim 22 describes abnormal and transient conditions as
`"comprising starting and stopping of the engine and provision of torque to
`satisfy drivability or safety considerations." Ex. 1211, 60:17-21.
`
`15
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`IPR2015-00792
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`1.
`
`The Hybrid Components of Base Claims 1, 11, 21, and 30
`
`To begin, each of claims 1, 11, 21, and 30 recites a general
`
`configuration of components for a hybrid vehicle, which include "an internal
`
`combustion engine," "at least one electric motor," "a battery," and "a
`
`controller." Contrasting the claimed invention with Severinsky, we are
`
`persuaded that Severinsky discloses the same configuration, at least by way
`
`of components, as that called for by claims 1, 11, 21, and 30. Compare Ex.
`
`1205, Fig. 3 (Severinsky) with Ex. 1201, Fig. 4 (the ’097 patent). Ford’s
`
`expert witness, Dr. Stein, whose testimony we credit, confirms as much.
`
`See, e.g., Ex. 1202 ¶¶ 132-138, 272-278, 370-390. Thus, we are persuaded
`
`that Severinsky discloses the general configuration of components called for
`
`by the claims.
`
`Paice does not dispute that Severinsky discloses the components
`
`called for by the claims but, instead, argues that it fails to disclose using
`
`torque or road load for determining when to operate the engine to propel the
`
`vehicle. PO Resp. 16, 20. In that regard, each of claims 1, 11, and 21 (but
`
`not claim 30) recites a "setpoint" or "SP" for operating the engine
`
`"efficiently." Paice further argues that the combination of Severinsky and
`
`Takaoka fails to teach the additional condition of limiting the engine’s "rate
`
`of increase" of output torque "such that combustion of fuel within the engine
`
`occurs at a substantially stoichiometric ratio," as required by claims 1, 11,
`
`21, and 30. We address each argument in turn.
`
`2. The "Setpoint" Limitations of Base Claims 1, 11, and 21
`
`Base claims 1, 11, and 21 include limitations directed to a particular
`
`"setpoint" or "SP" for operating the engine such that it produces torque
`
`"efficiently." For instance, claims 1 and 11 recite operating the engine
`
`16
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`
`
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