UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
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`Case IPR2015-00792
`Patent 8,214,097
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`

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`Patent No. 8,214,097
`Patent Owner’s Response
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`Case IPR2015-00792
`Attorney Docket No: 36351-0013IP3
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`TABLE OF CONTENTS
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`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`
`THE ’097 PATENT ......................................................................................... 2 
`
`A. 
`
`B. 
`
`Background of the ’097 Patent .............................................................. 2 
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`Claim Construction ............................................................................... 6 
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`1. 
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`“setpoint (SP)” ............................................................................ 6 
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`The Challenged Claims Require a Comparison of Road Load /
`2. 
`Torque Requirements to Setpoint and MTO ......................................... 9 
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`3. 
`
`“abnormal and transient conditions” ......................................... 12 
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`III.  ARGUMENT ................................................................................................. 13 
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`A. 
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`B. 
`
`C. 
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`Ford’s Conclusory Petition is Deficient Under 35 U.S.C. § 103(a) ... 13 
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`Ford Is Estopped from Maintaining its Challenge to Claims 30, 32, and
`33, and Will Be Estopped From Maintaining its Challenge to Claims 1,
`3, 4, 9, 11, 13, 14, 19, 21, 23, 24, 28, and 38 ...................................... 15 
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`Grounds 1 and 2 Should Be Denied—the Prior Art of Record Fails to
`Disclose Using Torque Requirements or Road Load to Determine
`When to Operate the Engine ............................................................... 16 
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`1. 
`
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`Severinsky Uses Speed to Determine When to Use the Engine
`17 
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`The Passages of Severinsky on Which Ford Relies Are
`2. 
`Inapposite—Severinsky Does Not Use Torque Requirements or Road
`Load to Determine When to Operate the Engine ................................ 20 
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`D.  Grounds 1 and 2 Should Be Denied—the Prior Art of Record Fails to
`Disclose a Setpoint .............................................................................. 29 
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`1. 
`
`Severinsky’s Sweet Spot Is Not a Setpoint ............................... 31 
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`Patent No. 8,214,097
`Patent Owner’s Response
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`Case IPR2015-00792
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`E. 
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`F. 
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`2. 
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`Ford’s Focus on Output Torques Is Flawed.............................. 38 
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`Severinsky Does Not Disclose the “Abnormal and Transient
`3. 
`Conditions” Limitations ...................................................................... 40 
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`Ford’s Reliance on the ’097 Patent’s Discussion of Severinsky is
`Flawed and Improper........................................................................... 42 
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`Grounds 1 and 2 Should Be Denied—the Prior Art of Record Fails to
`Disclose Controlling the Engine to Limit a Rate of Increase of Output
`Torque.................................................................................................. 47 
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`1. 
`
`Takaoka’s Underpowered Engine is Not a Control Strategy ... 48 
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`Takaoka Does Not Limit the Rate of Change of Engine Output
`2. 
`Torque to Achieve Stoichiometry ....................................................... 50 
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`3. 
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`If Anything, Takaoka Limits Engine Power, Not Torque ........ 51 
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`Ford Fails to Establish a Rationale to Combine Severinsky with
`4. 
`Takaoka ............................................................................................... 53 
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`G.  Ground 2 Should Be Denied—Ford Fails to Establish a Rationale to
`Combine Severinsky with Yamaguchi and Takaoka .......................... 54 
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`H.  Dr. Stein’s Opinions Should Be Given Little Weight ......................... 56 
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`IV.  CONCLUSION .............................................................................................. 59 
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`Patent No. 8,214,097
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`Case IPR2015-00792
`Attorney Docket No: 36351-0013IP3
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................ 8
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc.,
`661 F.3d 629 (Fed. Cir. 2011) ............................................................................ 14
`
`Clearwater Sys. Corp. v. Evapco, Inc.
` 394 F. App'x 699 (Fed. Cir. 2010) .................................................................... 45
`
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999) ............................................................................ 8
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 6
`
`Fuji Photo Film Co. v. Int'l Trade Comm’n,
`386 F.3d 1095 (Fed. Cir. 2004) ............................................................................ 8
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 14, 15
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 53
`
`KSR lnt’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 14
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .................................................................... passim
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ...................................................................... 8, 12
`
`In re Oelrich,
`666 F.2d 578 (CCPA 1981) ................................................................................ 15
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`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007) .................................................................... 46, 47
`iii
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`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 6
`
`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973 (Fed. Cir. 2014) ............................................................................ 41
`
`In re Vaidyanathan,
`381 Fed. Appx. 985 (Fed. Cir. 2010) .................................................................... 8
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`Statutes
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`35 U.S.C. § 103 .............................................................................................. 1, 13, 14
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`35 U.S.C. § 311 .......................................................................................................... 1
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`35 U.S.C. § 315 ........................................................................................................ 15
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`35 U.S.C. § 322 ........................................................................................................ 13
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`Other Authorities
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`37 C.F.R. § 42.22 ..................................................................................................... 13
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`37 C.F.R. § 42.100 ........................................................................................... 1, 6, 16
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`37 C.F.R. § 42.120 ..................................................................................................... 1
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`Patent No. 8,214,097
`Patent Owner’s Response
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`Case IPR2015-00792
`Attorney Docket No: 36351-0013IP3
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`EXHIBITS
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`Exhibit Name
`Table of Ford’s IPR Petitions
`Jeffery L. Stein, Deposition Tr. (IPR2014-00875)
`(Mar. 3, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00875)
`(May 29, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00570)
`(May 8, 2015)
`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. (IPR2014-00571 &
`IPR2014-00579) (Jan. 13, 2015)
`Gregory W. Davis Deposition Tr. (IPR2014-01416)
`(June 3, 2015)
`Gregory W. Davis Deposition Tr. (IPR2014-00571)
`(May 8, 2015)
`Excerpts from Neil Hannemann Deposition Tr.
`(IPR2014-00571) (April 7, 2015)
`Gregory W. Davis Deposition Tr. (IPR2014-00884)
`(Feb. 25, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-01415)
`(May 29, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00570) (Jan.
`12, 2015)
`Integrated Microprocessor Control of a Hybrid i.c.
`Engine/Battery-Electric Automotive Power Train,”
`P.W. Masding, J.R. Bumby, Jan. 1990
`Masding, Philip Wilson (1988) “Some drive train
`control problems in hybrid i.c engine/battery electric
`vehicles,” Durham theses, Durham University
`Excerpt from McGraw-Hill Dictionary of Scientific
`and Technical Terms, Sixth Ed., 2003.
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`v
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`Exhibit Number
`Ex. 2201
`Ex. 2202
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`Ex. 2203
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`Ex. 2204
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`Ex. 2205
`Ex. 2206
`Ex. 2207
`Ex. 2208
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`Ex. 2209
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`Ex. 2210
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`Ex. 2211
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`Ex. 2212
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`Ex. 2213
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`Ex. 2214
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`Ex. 2215
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`Ex. 2216
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`Ex. 2217
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`

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`Patent No. 8,214,097
`Patent Owner’s Response
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`Case IPR2015-00792
`Attorney Docket No: 36351-0013IP3
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`Pursuant to 37 C.F.R. § 42.120 and the Decision to Institute (“Institution
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`Decision” or “Inst. Dec.”), Patent Owners Paice LLC and the The Abell Foundation,
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`Inc. (collectively, “Paice”) hereby submit this Response to the Petition for Inter
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`Partes Review of U.S. Patent. No. 8,214,097 Under 35 U.S.C. § 311 et seq., and 37
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`C.F.R. § 42.100 et seq. (“Petition” or “Pet.”) filed by Ford Motor Company (“Ford”).
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`I.
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`INTRODUCTION
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`U.S. Patent. No. 8,214,097 (“the ’097 patent”), which is the subject of the
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`present Petition, claims an inventive and novel method of control for a hybrid
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`electric vehicle that uses road load or torque requirements, setpoint, and the
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`maximum torque output of an internal combustion engine to determine when to
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`transition between various operating modes in which the vehicle is propelled by an
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`electric motor, an internal combustion engine, or both. Ford’s Petition challenges
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`claims 1, 3, 4, 7, 9, 11, 13, 14, 17, 19, 21, 23, 24, 27, 28, 30, 32, 33, 37 and 38 (“the
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`challenged claims”) as obvious under 35 U.S.C. § 103. Following Paice’s
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`preliminary response, filed on July 27, 2015, the Board instituted review of each of
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`the challenged claims based on two proposed grounds for obviousness over U.S.
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`Patent No. 5,343,970 (“Severinsky”) in combination with one or more of A High-
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`Expansion Ratio Gasoline Engine for the Toyota Hybrid System, Toyota Technical
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`Review Vol. 47, No. 2 (“Takaoka”), U.S. Patent No. 5,865,263 (“Yamaguchi”). See
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`Inst. Dec. at 18-19. All challenged claims are patentable over the cited grounds for
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`the reasons set forth herein.
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`Case IPR2015-00792
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`Ford’s arguments with regard to the ’097 patent are fundamentally flawed.
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`The ’097 patent’s innovative control strategy, using road load or torque requirements
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`and setpoint to decide when to move between operating modes to maximize
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`efficiency, is absent in the cited references. Moreover, none of the cited references
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`discloses “control[ling] the engine such that a rate of increase of output torque of the
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`engine is limited to less than said inherent maximum rate of increase of output
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`torque,” as required by independent claims 1, 11, 21, and 30, and all claims
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`depending therefrom.
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`Therefore, for the reasons detailed more fully herein, the Board should affirm
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`the patentability of claims 1, 3, 4, 7, 9, 11, 13, 14, 17, 19, 21, 23, 24, 27, 28, 30, 32,
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`33, 37 and 38 of the ’097 patent.
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`II. THE ’097 PATENT
`A. Background of the ’097 Patent
`The ’097 patent (Ex. 1201) describes a hybrid vehicle featuring a hybrid
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`control strategy that reduces emissions during start and operation of the hybrid
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`vehicle. Ex. 1201 at 1:24-32, 29:63-30:12. For example, the ’097 patent describes
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`a hybrid control strategy that allows for starting the engine at a substantially
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`stoichiometric air-fuel ratio. The ’097 patent also describes a hybrid control strategy
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`for limiting the rate of increase of the engine’s output torque such that the
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`combustion of fuel occurs at a substantially stoichiometric air-fuel ratio and using
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`the electric motor to meet any shortfall in torque required to operate the vehicle in
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`response to the operator’s command. See, e.g., id. at 27:31-35, 29:63-30:12, 37:2-
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`6, 37:39-42, 38:62-39:14. This reduces emissions and improves fuel economy.
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`During operation of conventional engines, when the operator depresses the
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`accelerator, additional fuel is injected and thus results in a non-stoichiometric and
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`inefficient combustion. See, e.g., id. at 39:1-14. By contrast, the ’097 patent’s
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`hybrid control strategy uses the electric traction motor to limit the rate of increase of
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`engine output torque during operation, thereby reducing emissions. See, e.g., id. at
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`37:39-42, Fig. 7(a).
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`An example of the hybrid control strategy disclosed by the ’097 patent is
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`illustrated in Figure 7(a):
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`Id. at Fig. 7(a) (annotated). The solid line of the graph in Figure 7(a) depicts the
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`vehicle’s instantaneous torque requirement (road load), whereas the dashed line of
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`the graph depicts the engine’s instantaneous output torque. See, e.g., id. at 37:51-
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`63. As the figure illustrates, starting at point D, the rate of increase of the engine’s
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`output torque is limited so as to maintain substantially stoichiometric combustion.
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`See, e.g., id. at 38:62-65. When this occurs, the engine’s output torque does not meet
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`the road load, and the electric traction motor provides the balance of the torque to
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`propel the vehicle, as illustrated in the red, cross-hatched annotation in Fig. 7(a).
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`During the prosecution of the ’097 patent, the patentee explained that, while
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`substantially stoichiometric combustion is to be maintained, “drivability—that is,
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`rapid increase in the torque provided to the wheels in response to the operator’s
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`command—is nonetheless essential to a commercially viable vehicle.” Ex. 1210 at
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`232-33. The patentee further stated that the “electric ‘traction’ motor of the hybrid
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`vehicle is . . . employed to provide a rapid increase in torque to be provided to the
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`wheels of the vehicle” instead of forcing the engine into non-stoichiometric
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`combustion, providing drivability while maintaining efficient operation. Id. at 233.
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`The patentee also noted that “the rate of increase of torque output by the ICE
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`[internal combustion engine] is limited by the controller to less than the inherent
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`maximum rate of increase in output torque of the ICE, and any shortfall in the torque
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`required to meet the operator’s requirements—that is, to provide drivability—is
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`supplied by torque from the traction motor.” Id. at 234.
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`The ’097 patent also describes operating the vehicle in different operating
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`modes responsive to the road load, transitioning between modes at various setpoint
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`values. See, e.g., id. at 35:14-60, 37:39-38:52, 39:52-59, 41:1-42:33, Figs. 6, 8, 9.
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`The hybrid controller may also operate the internal combustion engine at torque
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`output levels less than the setpoint transition under “abnormal and transient
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`conditions.” See id. at claims 7, 17, 27, 37. During the prosecution of the ’097
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`patent, the patentee distinguished “abnormal and transient conditions” from “city
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`traffic and reverse operation,” which are normal conditions, and instead described
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`“abnormal and transient conditions” as including “such conditions as starting the
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`engine, during which operation it must necessarily be operated at less than SP
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`[setpoint] for a short time.” Ex. 1210 at 238.
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`The ’097 patent also describes an efficient high-speed engine startup process
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`that allows the combustion of fuel to occur at a substantially stoichiometric air-fuel
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`ratio. See, e.g., Ex. 1201 at 27:13-41. By contrast, during the engine startup process
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`of conventional engines, a rich air-fuel mixture on the order of six to seven times the
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`stoichiometric amount of fuel is provided to ensure that some fraction of the fuel is
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`in the vapor phase, since only fuel in the vapor phase can be ignited by a spark. See,
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`e.g., Ex. 1201 at 29:64-67. Most of the excess fuel condenses as liquid on the cold
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`cylinder walls and is emitted unburned. See, e.g., id. at 29:67-30:3. The hybrid
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`control strategy described by the ’097 patent allows for starting the engine at high
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`speeds, creating turbulence in the combustion chamber that is sufficient to ensure
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`the presence of vapor so that a near-stoichiometric air-fuel mixture can be provided
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`to the engine during the startup phase. See, e.g., id. at 30:3-12.
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`Patent No. 8,214,097
`Patent Owner’s Response
`B. Claim Construction
`In IPR proceedings, the Board applies the “broadest reasonable interpretation”
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`Case IPR2015-00792
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`standard, which mandates that “[a] claim in an unexpired patent shall be given its
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`broadest reasonable construction in light of the specification of the patent in which
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`it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793
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`F.3d 1268, 1278 (Fed. Cir. 2015). The Federal Circuit has recognized, however, that
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`that standard requires that the claims must be read in light of the specification as it
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`would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc.,
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`603 F.3d 1255, 1260 (Fed. Cir. 2010); see also Microsoft Corp. v. Proxyconn, Inc.,
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`789 F.3d 1292, 1298 (Fed. Cir. 2015).
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`“setpoint (SP)”
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`1.
`A “setpoint” is “a definite, but potentially variable value at which a transition
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`between operating modes may occur.” In its Institution Decision, the Board
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`construed “setpoint” as a “predetermined torque value that may or may not be reset.”
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`Paice respectfully requests that the Board reconsider its construction as it is
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`unreasonably broad and does not reasonably reflect the disclosure of the ’097 patent.
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`Instead, the Board should adopt Paice’s construction (“a definite, but potentially
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`variable value at which a transition between operating modes may occur”).
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`The claims and the specification of the ’097 patent make clear that a “setpoint”
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`is not simply a numerical value divorced from the context of the rest of the control
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`system. Rather, “setpoint” serves the crucial function of marking the transition from
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`one claimed mode to another, and in particular, the transition from propelling the
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`vehicle with the motor to propelling the vehicle with the engine. See, e.g., Ex. 1201
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`at 39:55-59.
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`First, the claims are clear that a “setpoint” marks a point at which the vehicle
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`may transition between two modes. For example, in claims 1, 11, 21, and 30, the
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`“setpoint” marks the transition between a mode in which only the motor propels
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`the vehicle, to modes in which the engine also can be used to propel the vehicle or
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`charge the battery. See e.g., id. at claim 1 (“operating the at least one electric motor
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`to provide torque to the hybrid vehicle when the torque required to operate the
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`hybrid vehicle is less than SP”). Additionally, the specification unambiguously
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`defines “setpoint” as synonymous with a “transition point” between modes:
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`[I]n the example of the inventive control strategy discussed above, it is
`repeatedly stated that the transition from low-speed operation to
`highway cruising occurs when road load is equal to 30% of MTO. This
`setpoint, referred to in the appended claims as “SP”, and sometimes
`hereinafter as the transition point (i.e., between operation in modes I
`and IV) is obviously arbitrary and can vary substantially, e.g., between
`30-50% of MTO, within the scope of the invention.
`Id. at 39:52-59; see also id. at 39:27-37; 40:7-12, 40:13-23; 41:1-4; 43:29-36.
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`The Board’s initial construction of “setpoint” as a “predetermined torque
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`value that may or may not be reset,” see Inst. Dec. at 6-7, is incorrect and
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`unreasonably broad because it fails to recognize that “setpoint” represents a point at
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`which a transition between different operating modes may occur. The broadening
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`construction is “divorced from the specification and the record evidence” and
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`inconsistent with “the one that those skilled in the art would reach.” See Microsoft,
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`789 F.3d at 1298 (quoting NTP, 654 F.3d at 1288; Cortright, 165 F.3d at 1358). In
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`essence, the construction covers hybrid vehicle systems where transitions between
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`modes never occur—a clear error that is fundamentally contrary to the specification
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`of the ’097 patent. See Fuji Photo Film Co. v. Int'l Trade Comm’n, 386 F.3d 1095,
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`1098 (Fed. Cir. 2004) (claim should not be given overly broad construction that is
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`inconsistent with how claim term is used in the specification). The Board’s
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`“broadest reasonable interpretation” must be reasonable, and must be in conformity
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`with the invention as described in the specification. In re Vaidyanathan, 381 Fed.
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`Appx. 985, 995-96 (Fed. Cir. 2010); see also In re Abbott Diabetes Care Inc., 696
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`F.3d 1142, 1149 (Fed. Cir. 2012) (holding that Board’s construction of
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`“electrochemical sensor” was “unreasonable and inconsistent with the language of
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`the claims and the specification”).
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`Additionally, as set forth in Paice’s preliminary response, “setpoint” should
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`not be limited to a torque value—the specification makes clear that a setpoint is not
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`limited to a torque value and in fact could also be a measure of the state of charge of
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`the battery.
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`Case IPR2015-00792
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`[T]he microprocessor tests sensed and calculated values for system
`variables, such as the vehicle's instantaneous torque requirement, i.e.,
`the “road load” RL, the engine's instantaneous torque output ITO, both
`being expressed as a percentage of the engine's maximum torque output
`MTO, and the state of charge of the battery bank BSC, expressed as a
`percentage of its full charge, against setpoints, and uses the results of
`the comparisons to control the mode of vehicle operation.
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`Ex. 1201 at 39:29-37 (emphasis added).
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`Therefore, Paice respectfully requests that the Board reconsider its
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`construction and adopt Paice’s construction of “setpoint” to make clear that it is a
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`value “at which a transition between operating modes may occur.”
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`2. The Challenged Claims Require a Comparison of Road Load
`/ Torque Requirements to Setpoint and MTO
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`Each of claims 1, 11, and 21 (and all claims depending therefrom) as properly
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`construed requires a comparison of road load or torque requirements to setpoint and
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`MTO. See, e.g., Ex. 1201 at claim 1 (“operating said internal combustion engine to
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`provide torque to the hybrid vehicle when the torque required to operate the hybrid
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`vehicle is between a setpoint SP and a maximum torque output (MTO) of the engine,
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`... operating both the at least one electric motor and the engine to provide torque to
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`the hybrid vehicle when the torque required to operate the hybrid vehicle is more
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`than MTO; and operating the at least one electric motor to provide torque to the
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`hybrid vehicle when the torque required to operate the hybrid vehicle is less than
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`SP”). Because Ford appears intent on interpreting these limitations in an
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`unreasonably broad manner to remove the comparison requirement and essentially
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`capture any system where a torque value is above/below a threshold either by
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`coincidence or otherwise, the Board should construe these limitations to make clear
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`that the claimed controller (or method of control) selects operating modes based on
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`a comparison of road load or torque requirements to setpoint or MTO.
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`Specifically, the Board should construe (1) “operating the at least one electric
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`motor to provide torque to the hybrid vehicle when the torque required to operate
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`the hybrid vehicle is less than SP” as “operating the at least one electric motor to
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`provide torque to the hybrid vehicle when a comparison of torque required to operate
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`the hybrid vehicle to a setpoint (SP) results in a determination that the torque
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`required to operate the hybrid vehicle is less than SP,” (2) “operating at least one
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`electric motor to propel the hybrid vehicle when RL is less than a setpoint (SP)” as
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`“operating at least one electric motor to propel the hybrid vehicle when a comparison
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`of RL to a setpoint (SP) results in a determination that RL is less than SP,” (3)
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`“operating said internal combustion engine to provide torque to the hybrid vehicle
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`when the torque required to operate the hybrid vehicle is between a setpoint SP and
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`a maximum torque output (MTO) of the engine” as “operating said internal
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`combustion engine to provide torque to the hybrid vehicle when a comparison of
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`torque required to operate the hybrid vehicle to a setpoint (SP) and a maximum
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`torque output (MTO) of the engine results in a determination that the torque required
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`to operate the hybrid vehicle is between a setpoint SP and MTO,” (4) “operating an
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`internal combustion engine of the hybrid vehicle to propel the hybrid vehicle when
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`RL is between SP and a maximum torque output (MTO) of the engine” as “operating
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`an internal combustion engine of the hybrid vehicle to propel the hybrid vehicle
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`when a comparison of RL to SP and maximum torque output (MTO) of the engine
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`results in a determination that RL is between SP and MTO,” (5) “operating both the
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`at least one electric motor and the engine to provide torque to the hybrid vehicle
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`when the torque required to operate the hybrid vehicle is more than MTO” as
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`“operating both the at least one electric motor and the engine to provide torque to
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`the hybrid vehicle when a comparison of torque required to operate the hybrid
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`vehicle to SP and MTO results in a determination that the torque required to operate
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`the hybrid vehicle is more than MTO,” and (6) “operating both the at least one
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`electric motor and the engine to propel the hybrid vehicle when RL is more than
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`MTO” as “operating both the at least one electric motor and the engine to propel the
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`hybrid vehicle when a comparison of RL to SP and MTO results in a determination
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`that RL is more than MTO.”
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`The intrinsic evidence makes clear that the invention is directed to a control
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`algorithm for selecting operating modes based on the comparison of road load or
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`torque requirements to SP and MTO (see Section II.B.1.) such that any other
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`construction would be “divorced from the specification and the record evidence” and
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`inconsistent with “the one that those skilled in the art would reach.” Microsoft Corp.
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`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc.,
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`654 F.3d 1279, 1288 (Fed. Cir. 2011).
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`“abnormal and transient conditions”
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`3.
`The Board should construe “abnormal and transient conditions” as “starting
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`and stopping of the engine and provision of torque to satisfy drivability or safety
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`considerations,” to make clear that it does not include “city traffic and reverse
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`operation.” During the prosecution of the ’097 patent, the patentee distinguished
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`“abnormal and transient conditions” from “city traffic and reverse operation,” which
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`are normal conditions:
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`[T]he Examiner interprets “abnormal and transient conditions” wherein
`the engine can be run at output levels less than SP, the minimum power
`output of the engine under normal circumstances, as “in traffic or city
`driv[ing] too many traffic light so too many stops and reverse
`operation.” In fact, city traffic and reverse operation are normal
`conditions and are explicitly provided for. In both, the vehicle typically
`operates as an electric car, with the traction motor providing the torque
`necessary to propel the vehicle, and with the ICE operated to charge the
`battery when it is discharged. 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.
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`Ex. 1210 at 238. However, Ford improperly interprets “abnormal and transient”
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`conditions broadly as comprising operation in traffic. See Pet. at 48-50.
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`The Board should construe “abnormal and transient conditions” as “starting
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`and stopping of the engine and provision of torque to satisfy drivability or safety
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`considerations.” At a minimum, the Board should reject Ford’s construction and
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`adopt a construction that does not encompass “city traffic and reverse operation.”
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`III. ARGUMENT
`Each of the two instituted grounds of unpatentability should be denied because
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`the claimed invention is novel and nonobvious. In particular, Ford fails to provide
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`an adequate obviousness analysis under 35 U.S.C. § 103(a). Moreover, Severinsky
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`in combination with any or all of Takaoka and Yamaguchi fails to disclose or render
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`obvious the torque requirements, “road load,” “setpoint,” and “control[ling] the
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`engine such that a rate of increase of output torque of the engine is limited to less
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`than said inherent maximum rate of increase of output torque” limitations.
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`Ford’s Conclusory Petition is Deficient Under 35 U.S.C. § 103(a)
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`A.
`As a preliminary matter, the Petition in its entirety is improper because it does
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`not perform an adequate obviousness analysis, thus falling short of the requirements
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`of 35 U.S.C. § 103(a), 35 U.S.C. § 322, and 37 C.F.R. § 42.22(a). Taking Ground 1
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`as an example, Ford fails to identify the differences between Severinsky and
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`independent claim 21. As a result, Ground 1 fails to establish that “the differences
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`between the subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a person of ordinary skill in the art to which the subject matter pertains.”
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`35 U.S.C. § 103(a); see also KSR lnt’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
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`(explaining that “the scope and content of the prior art are to be determined;
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`differences between the prior art and the claims at issue are to be ascertained; and
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`the level of ordinary skill in the pertinent art resolved” (quoting Graham v. John
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`Deere Co., 383 U.S. 1, 17-18 (1966))).
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`Specifically, with respect to Ground 1, Ford claims to be performing an
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`obviousness analysis but for several claim elements does not indicate whether
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`Severinsky actually discloses or merely renders obvious that claim element. Instead,
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`Ford seems to argue that Severinsky discloses each of these claim elements but
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`curiously concludes each assertion with a statement that a person of ordinary skill in
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`the art would have “understood” that those claim elements are present. See, e.g.,
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`Pet. at 19 (“[A] POSA would have understood that Severinsky ’970 teaches
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`determining the instantaneous torque required to propel the vehicle because it
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`ensures delivering the appropriate torque to the wheels.” (citing Ex. 1202 at ¶¶ 144-
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`148)). As a result, it is entirely unclear whether Ford is advancing anticipation
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`arguments (e.g., through the doctrine of inherency) or obviousness arguments for
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`each of these claim elements. If the fo