`
`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 to Severinsky et al.
`
`IPR Case No. 2015-00792
`
`
`
`
`
`
`DECLARATION OF DR. JEFFREY L. STEIN IN SUPPORT OF
`THIRD PETITION FOR INTER PARTES REVIEW UNDER
`35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1, 3, 4, 7, 9, 11, 13, 14, 17, 19, 21, 23, 24, 27, 28, 30, 32, 33, 37 AND 38
`OF U.S. PATENT NO. 8,214,097)
`
`
`
`
`
`
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`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
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`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ........................................................................................... 2
`
`EXHIBIT LIST .......................................................................................................... 5
`
`I.
`
`INTRODUCTION ........................................................................................... 8
`
`A.
`
`Engagement ........................................................................................... 8
`
`B.
`
`C.
`
`Background and Qualifications ............................................................. 8
`
`Compensation and Prior Testimony ....................................................11
`
`D. Materials and Information Considered ................................................11
`
`II.
`
`RELEVANT LEGAL STANDARDS ...........................................................12
`
`A. General ................................................................................................12
`
`B.
`
`C.
`
`Priority Dates for Claimed Subject Matter..........................................13
`
`Claim Construction Standard ..............................................................14
`
`D. Anticipation .........................................................................................15
`
`E.
`
`Obviousness .........................................................................................16
`
`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND IN THE RELEVANT TIMEFRAME ..................................................19
`
`IV. STATE OF THE ART AS OF 1998 ..............................................................21
`
`A.
`
`Engine Fundamentals ..........................................................................21
`
`B.
`
`C.
`
`Electric Motor Fundamentals ..............................................................25
`
`HEV Architecture ................................................................................25
`
`1.
`
`2.
`
`3.
`
`Series HEVs ..............................................................................27
`
`Parallel HEVs ............................................................................28
`
`Series-Parallel HEVs ................................................................30
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`D.
`
`Controls – HEV Mode Selection .........................................................31
`
`E.
`
`F.
`
`Emissions .............................................................................................37
`
`Electrical Characteristics .....................................................................53
`
`V.
`
`THE ’097 PATENT .......................................................................................55
`
`A.
`
`Background of the ’097 Patent ............................................................55
`
`B.
`
`C.
`
`Prosecution History of the ’097 Patent ...............................................57
`
`Construction of Terms in the Challenged Claims ...............................64
`
`D.
`
`Priority Claim ......................................................................................67
`
`VI. PATENTABILITY ANALYSIS OF THE CHALLENGED CLAIMS ........68
`
`A. Overview of the Prior Art ....................................................................68
`
`1.
`
`2.
`
`3.
`
`U.S. Patent No. 5,343,970 (“Severinsky ’970”) .......................68
`
`Toyota Technical Review Vol. 47, No. 2 (“Takaoka”) ............69
`
`U.S. Patent No. 5,865,263 (“Yamaguchi”) ...............................70
`
`B.
`
`Ground 1: The Combination of Severinsky ’970 and Takaoka
`Teaches all of the Limitations of Claims 1, 7, 9, 11, 17, 19, 21,
`27, 28, 30, 37 .......................................................................................71
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Independent Claim 21 ...............................................................71
`
`Independent Claim 1 ...............................................................133
`
`Independent Claim 11 .............................................................177
`
`Independent Claim 30 .............................................................182
`
`Dependent Claims 7, 17, 27 and 37 ........................................204
`
`Dependent Claims 9, 19, 28 and 38 ........................................209
`
`Rationale for Combining Severinsky ’970 and Takaoka ........211
`
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`C.
`
`Ground 2: The Combination of Severinsky ’970, Takaoka and
`Yamaguchi Teaches All of the Limitations of Claims 3, 4, 13,
`14, 23 and 24 .....................................................................................218
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claim 3 ....................................................................................218
`
`Claims 13, 23 and 32 ..............................................................223
`
`Claims 4, 14, 24 and 33 ..........................................................228
`
`Rationale for Combining Yamaguchi with Severinsky
`’970 and Takaoka ....................................................................231
`
`VII. OBJECTIVE EVIDENCE OF NONOBVIOUSNESS ...............................235
`
`VIII. CONCLUSION ............................................................................................236
`
`
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`EXHIBIT LIST
`
`Exhibit
`Description
`No.
`1201 U.S. Patent No. 8,214,097
`1202 Declaration of Dr. Jeffrey L. Stein
`1203
`Paice LLC v. Ford Motor Company, Case No. 1:14-cv-
`00492, District of MD, Baltimore Div., Complaint (Feb.
`19, 2014)
`Ford’s letter to Paice dated September 22, 2014
`1204
`1205 U.S. Patent No. 5,343,970
`1206
`Toshifumi Takaoka et al., A High-Expansion Ratio
`Gasoline Engine for the Toyota Hybrid System, Toyota
`Technical Review Vol. 47, No. 2 (April 1998) (available
`at: https://www.worldcat.org/title/a-high-expansion-
`ratio-gasoline-engine-for-the-toyota-hybrid-
`system/oclc/205516653&referer=brief_results.)
`Ford Motor co. v. Paice LLC, Case IPR2014-01415, Paper
`9, Patent Owner Preliminary Response (P.T.A.B. Dec.
`16, 2014)
`1208 Declaration of Walt Johnson, Librarian at Patent and
`Trademark Resource Center (PTRC), Minneapolis
`Central Library
`1209 U.S. Patent No. 5,865,263
`1210
`File History of U.S. Patent No. 8,214,097
`
`1207
`
`1211 U.S. Patent No. 7,104,347
`1212
`File History of U.S. Patent No. 7,104,347
`
`1213
`
`1214
`
`Paice LLC v. Toyota Motor Corp. et al., Case No. 2:04-cv-
`211, E.D. Texas, Claim Construction Order (Dec. 5,
`2008)
`Paice, LLC v. Hyundai Motor Corp. et a., Case No. 2:12-cv-
`0499, District of MD, Baltimore Div., Claim
`Construction Order (July 24, 2014)
`Ford Motor Co. v. Paice, LLC, Case IPR2014-00571, Paper
`12, Decision (P.T.A.B. Sept. 30, 2014)
`1216 U.S. Patent No. 7,237,634
`1217
`Ford Motor Co. v. Paice, LLC, Case IPR2014-00571, Paper
`20, Patent Owner Respose (P.T.A.B. Jan. 21, 2015)
`
`1215
`
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`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`Identifier
`’097 Patent
` Stein Decl.
`Paice
`Complaint
`
`Ford Letter
`Severinsky ’970
`Takaoka
`
`IPR2014-01415
`PO Preliminary
`Response
`Librarian Decl.
`
`Yamaguchi
`’097 File
`History
`’347 Patent
`’347 File
`History
`Toyota
`Litigation
`
`Hyundai
`Litigation
`
`IPR2014-00571
`Decision
`’634 Patent
`IPR2014-0571
`PO Response
`
`

`

`Case No: IPR2015-00792
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`1220
`1221
`
`Exhibit
`Description
`No.
`1218 U.S. Patent No. 4,335,429
`1219
`Catherine Anderson & Erin Pettit, The Effects of APU
`Characteristics on the Design of Hybrid Control Strategies for
`Hybrid Electric Vehicles, SAE Technical Paper 950493
`(February, 1995) (available at
`http://papers.sae.org/950493/.)
`Curriculum Vitae of Dr. Jeffery L. Stein
`John B. Heywood, Internal Combustion Engine Fundamentals
`(McGraw-Hill 1988) (available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2
`0946&recCount=25&recPointer=4&bibId=2421798.)
`1222 Willard W. Pulkrabek, Engineering Fundamentals of the
`Internal Combustion Engine (Prentice Hall, 1997) (available
`at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=1
`0003&recCount=25&recPointer=1&bibId=2109503.)
`1223 Hawley, G.G., The Condensed Chemical Dictionary, Van
`Nostrand Reinhold Co., 9th ed. (1977) (available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2
`1541&recCount=25&recPointer=14&bibId=1289584.)
`1224 U.S. Patent No. 913,846
`1225 Michael Duoba, Ctr. for Transp. Research, Argonne
`Nat’l Lab., Challenges for the Vehicle Tester in Characterizing
`Hybrid Electric Vehicles, 7th CRC on Road Vehicle
`Emissions Workshop (April 1997) (available at
`http://www.osti.gov/scitech/biblio/516019.)
`Society of Automotive Engineers Special Publication,
`Technology for Electric and Hybrid Vehicles, SAE SP-1331
`(February 1998) (available at
`http://www.worldcat.org/title/technology-for-electric-
`and-hybrid-vehicles/oclc/39802642.)
`1227 Kozo Yamaguchi et al., Development of a New Hybrid
`System — Dual System, SAE Technical Paper 960231
`(February 1996)
`(available at http://papers.sae.org/960231/.)
`1228 U.S. Patent No. 3,888,325
`
`1226
`
`Identifier
`Kawakatsu
`Anderson
`
`Dr. Stein CV
`Heywood
`
`Pulkrabek
`
`Hawley
`
`Pieper
`Duoba
`
`SAE SP-1331
`
`Yamaguchi
`Paper
`
`Reinbeck
`
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`Identifier
`Unnewehr
`
`Brown
`
`Engh
`
`Stefanopoulou
`
`Vittone
`
`GE Final
`Report
`
`’704
`Application
`Cullen
`
`Exhibit
`No.
`1229
`
`1230
`
`1232
`
`Description
`L. E. Unnewehr et al., Hybrid Vehicle for Fuel Economy,
`SAE Technical Paper 760121 (1976) (available at
`http://papers.sae.org/760121/.)
`Brown, T.L. et al., Chemistry, The Central Science, Third
`Edition (Prentice-Hall 1985) (available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2
`1829&recCount=25&recPointer=13&bibId=4259071.)
`1231 Grunde T. Engh & Stephen Wallman, Development of the
`Volvo Lambda-Sond System, SAE Technical Paper 770295
`(1977) (available at http://papers.sae.org/770295/.)
`A. G. Stefanopoulou et al., Engine Air-Fuel Ratio and
`Torque Control using Secondary Throttles, Proceedings of the
`33rd IEEE Conference on Decision and Control
`(December 1994) (available at
`http://ieeexplore.ieee.org/xpl/articleDetails.jsp?tp=&ar
`number=411385&queryText%3DA.+G.+Stefanopoulo
`u+et+al.%2C+Engine+Air-
`Fuel+Ratio+and+Torque+Control+using+Secondary+
`Throttles%2C+Proceedings+of+the+33rd+IEEE+Con
`ference+on+Decision+and+Control+.LB.December+1
`994.RB.)
`1233 Oreste Vittone et al., FIAT Research Centre, Fiat
`Conceptual Approach to Hybrid Car Design, 12th
`International Electric Vehicle Symposium, Volume 2
`(1994), (available at
`https://www.worldcat.org/title/symposium-
`proceedings-12th-international-electric-vehicle-
`symposium-december-5-7-1994-disneyland-hotel-and-
`convention-center-anaheim-
`california/oclc/32209857&referer=brief_results.)
`1234 General Electric Company, Corp. Research & Dev.,
`Near-Term Hybrid Vehicle Program, Final Report - Phase 1
`(October 1979) (available at
`http://ntrs.nasa.gov/search.jsp?R=19800017707.)
`1235 U.S. Application No. 13/065,704
`
`1236 U.S. Patent No. 5,479,898
`
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`Case No: IPR2015-00792
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`I.
`
`INTRODUCTION
`
`A. Engagement
`
`1. My name is Jeffrey L. Stein. I have been retained by counsel for Ford
`
`Motor Company (“Ford”) as an expert witness in the above-captioned proceeding. I
`
`have been asked to provide analysis and my opinion about the state of the art of the
`
`technology described in U.S. Patent No. 8,214,097 (“the ’097 Patent,” Ex. 1201) and
`
`on 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 (“the challenged claims”) of the ’097 Patent.
`
`B.
`
`2.
`
`Background and Qualifications
`
`I am currently a Professor of Mechanical Engineering at the University
`
`of Michigan, Ann Arbor Campus, and the former Associate Director of the
`
`Automotive Research Center at the University of Michigan. I have studied, taught
`
`and/or practiced in the relevant hybrid electric vehicle (HEV) control technology for
`
`over 20 years.
`
`
`
`3.
`
`I received my Ph.D. degree
`
`in Mechanical Engineering from
`
`Massachusetts Institute of Technology in 1983. I received a Masters of Science degree
`
`in Mechanical Engineering and a Bachelors of Science degree in Mechanical
`
`Engineering from Massachusetts Institute of Technology in 1976.
`
`4.
`
`In my capacity as a Professor, I teach undergraduate and graduate
`
`courses in mechanical design, dynamics, systems and control engineering. In my
`
`capacity as a Professor, I also do research in the area of automotive system design and
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`control as well as machine design and control. In several of my research projects, my
`
`students and I discovered unique ways to model, design and control automotive
`
`powertrains including hybrid powertrains.
`
`5.
`
` In addition to being the former Associate Director of the Automotive
`
`Research Center at the University of Michigan, I am also the former Principle
`
`Investigator (PI) of the project “A Multi-Scale Design and Control Framework for
`
`Dynamically Coupled Sustainable and Resilient Infrastructures, with Application to
`
`Vehicle-to-Grid Integration.” I am currently the PI of a project “Sustainable
`
`Transportation for a 3rd Century: An Interdisciplinary Approach to Addressing the
`
`Last Mile Problem for Enhanced Accessibility.” In my work at the Automotive
`
`Research Center, and on these projects, I have developed computer–based methods
`
`for facilitating the design evaluation of automotive powertrains including hybrid
`
`powertrains.
`
`6.
`
` From 1983 through 1987 and 1991 through the present, I have also
`
`worked as an Independent Consultant concentrating in the area of design and risk
`
`analysis of mechanical systems and manufacturing machines. Much of this work is
`
`particularly germane to the area of automotive powertrains. Some examples include:
`
`hybrid electric vehicles, automated mechanical transmissions and transfer cases for
`
`on-demand four-wheel drive.
`
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`7.
`
`From 1988 through 1991, I was also employed as an Independent
`
`Consultant for Failure Analysis Associates in San Francisco, California, focusing on
`
`the design and risk analysis of mechanical systems and manufacturing machines.
`
`8.
`
`I am a registered Professional Engineer in the State of Michigan, and am
`
`a member of several professional engineering organizations including the Society of
`
`Automotive Engineers, National Society of Professional Engineers, the American
`
`Society of Mechanical Engineers, the Society of Manufacturing Engineers, and the
`
`American Society for Engineering Education.
`
`9.
`
`In my work, I have had a number of opportunities to deal with U.S.
`
`Patents. This work has included infringement and validity analysis in the areas of
`
`hybrid electric vehicle powertrain design, CNC machine tool control, automotive
`
`transfer case design and control, automotive interior lighted mirror design, automated
`
`mechanical transmissions, agricultural seed meters, automotive shipping containers,
`
`medical beds and automated chemical immunoassay machines.
`
`10.
`
`I have authored over 65 journal articles, including at least 13 articles that
`
`are related to hybrid electric vehicles. I have also contributed to over 115 refereed
`
`conference papers, including at least 18 papers that are related to hybrid electric
`
`vehicles.
`
`11. My Curriculum Vitae is submitted herewith as Exhibit 1220 (“Dr. Stein
`
`CV”), and provides a listing of all publications on which I am a named author.
`
`
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`C.
`
`12.
`
`Compensation and Prior Testimony
`
`I am being compensated at a rate of $425 per hour to provide analysis
`
`and testimony in this inter partes review proceeding. My compensation is not
`
`contingent on the outcome of any matter or the specifics of my testimony. I have no
`
`financial interest in the Petition.
`
`13.
`
`I have previously provided expert testimony in over 15 patent-related
`
`matters. My Curriculum Vitae identifies some of the areas in which I have previously
`
`provided expert testimony. (Dr. Stein CV, Ex. 1220.)
`
`D. Materials and Information Considered
`
`14. My findings, as explained below, are based on my years of education,
`
`research, experience, and background in the fields discussed above, as well as my
`
`investigation and study of relevant materials. In forming my opinions, I have studied
`
`and considered the materials identified in the Exhibit List shown at the beginning of
`
`my report. Each of the exhibits listed are true and accurate copies. The Exhibit List
`
`includes citations for each exhibit I have reviewed including a weblink where
`
`appropriate or applicable.
`
`15. Additionally, I am aware of information generally available to, and relied
`
`upon by, persons of ordinary skill in the art at the relevant times, including technical
`
`dictionaries and technical reference materials (including textbooks, manuals, technical
`
`papers and articles); some of my statements below are expressly based on such
`
`awareness.
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`16. Due to procedural limitations for inter partes reviews, the grounds of
`
`unpatentability discussed herein are based solely on prior patents and other printed
`
`publications. I understand that Petitioner reserves all rights to assert other grounds for
`
`unpatentability or invalidity, not addressed herein, at a later time. Thus, the absence of
`
`discussion of such matters here should not be taken as indicating that there are no
`
`such additional grounds for unpatentability and invalidity of the ’097 Patent.
`
`II. RELEVANT LEGAL STANDARDS
`
`A. General
`
`17.
`
`In expressing my opinions and considering the subject matter of the
`
`challenged claims of the ’097 Patent, I am relying upon certain basic legal principles
`
`that have been provided and/or explained to me.
`
`18.
`
`I understand that in this proceeding Ford has the burden of proving that
`
`the challenged claims of the ’097 Patent are unpatentable by a preponderance of the
`
`evidence. I understand that under “a preponderance of the evidence” standard, Ford
`
`must show that a fact is more likely true than it is not.
`
`19.
`
` I understand that for an invention claimed in a patent to be found
`
`patentable, it must be, among other things, new and not obvious from what was
`
`known before the invention was made.
`
`20.
`
`I understand the information that is used to evaluate whether a claimed
`
`invention is patentable is generally referred to as “prior art” and includes patents and
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`printed publications (e.g., books, journal publications, articles on websites, product
`
`manuals, etc.).
`
`21.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, I understand the prior art can be shown to
`
`“anticipate” the claim. Second, I understand the prior art can be shown to have made
`
`the claim “obvious” to a person of ordinary skill in the art. My understanding of the
`
`two legal standards is set forth below.
`
`B.
`
`22.
`
`Priority Dates for Claimed Subject Matter
`
`I understand that in order to be considered “prior art,” patents or
`
`printed publications must predate the pertinent priority dates for the subject matter
`
`claimed in the ’097 Patent.
`
`23.
`
`I have been informed that a patent is only entitled to a priority date
`
`based on an earlier filed application if the earlier filed application meets the
`
`requirements of 35 U.S.C. §112. Specifically, I have been informed that 35 U.S.C. §
`
`112, ¶ 1 requires that the specification of a patent or patent application must “contain
`
`a written description of the invention, and the manner and process of making and
`
`using it, in such full, clear, concise, and exact terms as to enable any person skilled in
`
`the art to which it pertains, or with which it is most nearly connected, to make and
`
`use the [invention] . . . .” I understand that the requirements of this provision are
`
`commonly called
`
`the written description requirement and
`
`the enablement
`
`requirement.
`
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`24.
`
`I have been informed that compliance with both the written description
`
`requirement and enablement requirement must be determined as of the effective filing
`
`date of the application for which priority is sought.
`
`25.
`
`I have been informed that to satisfy the written description requirement
`
`a patent’s specification should reasonably convey to a person of skill in the art that the
`
`inventor had possession of the claimed invention as of the effective filing date of the
`
`application.
`
`C.
`
`26.
`
`Claim Construction Standard
`
`I understand that in this proceeding, the claims must be given their
`
`broadest reasonable interpretation consistent with the specification. I have been
`
`informed that the claims, after being construed in this manner, are then to be
`
`compared to the information in the prior art, which for this proceeding is limited to
`
`patents and printed publications. I also understand that, at the same time, absent
`
`some reason to the contrary, claim terms are typically given their ordinary and
`
`accustomed meaning as would be understood by one of ordinary skill in the art.
`
`27.
`
`I understand that in other forums, such as in federal courts, different
`
`standards of proof and claim interpretation control, which are not applied by the U.S.
`
`Patent and Trademark Office for inter partes review. Accordingly, I understand that any
`
`interpretation or construction of the challenged claims in this proceeding, either
`
`implicitly or explicitly, should not be viewed as constituting, in whole or in part,
`
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`Petitioner’s own interpretation or construction, except as regards the broadest
`
`reasonable construction of the claims presented.
`
`D. Anticipation
`
`28.
`
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`29.
`
`I understand that, for a patent to be “anticipated” by the prior art, each
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`and every limitation of the claim must be found, expressly, implicitly or inherently, in
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`a single prior art reference. I further understand that the requirement of strict identity
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`between the claim and the reference is not met if a single element or limitation
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`required by the claim is missing from the applied reference.
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`30.
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`I understand that claim limitations that are not expressly described in a
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`prior art reference may still be there if they are implicit or inherent to the thing or
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`process being described in the prior art. I have been informed that to establish
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`inherency, the extrinsic evidence must make clear that the missing descriptive matter
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`is necessarily present in the thing described in the reference and that it would be so
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`recognized by persons of ordinary skill in the art. I have been informed that inherency
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`cannot be established just because a certain thing may result from a given set of
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`circumstances.
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`31.
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`I understand that it is acceptable to consider evidence other than the
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`information in a particular prior art document to determine if a feature is necessarily
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`present in or inherently described by that reference.
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`Case No: IPR2015-00792
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`E. Obviousness
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`32.
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`I understand that for a single reference or a combination of references to
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`render obvious a claimed invention, a person of ordinary skill in the art must have
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`been able to arrive at the claimed invention by altering or combining the applied
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`references.
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`33.
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`I have been informed that a patent claim can be found unpatentable as
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`obvious where the differences between the subject matter taught to be patented and
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`the prior art are such that the subject matter as a whole would have been obvious at
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`the time the invention was made to a person of ordinary skill in the relevant field.
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`Specifically, I understand that the obviousness question involves a consideration of:
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`a) the scope and content of the prior art;
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`b) the differences between the prior art and the claims at issue;
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`c) the knowledge of a person of ordinary skill in the pertinent art; and
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`d) whatever objective factors indicating obviousness or non-obviousness
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`may be present in any particular case – referred to as “secondary
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`considerations.”
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`34.
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`I have been informed that such secondary considerations include: (a)
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`commercial success of a product due to the merits of the claimed invention; (b) a
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`long-felt, but unmet need for the invention; (c) failure of others to find the solution
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`provided by the claimed invention; (d) deliberate copying of the invention by others;
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`(e) unexpected results achieved by the invention; (f) praise of the invention by others
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`Case No: IPR2015-00792
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`skilled in the art; (g) the taking of licenses under the patent by others and (h) the
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`patentee proceeded contrary to the accepted wisdom of the prior art. I understand
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`that secondary considerations are relevant where there is a connection, or nexus,
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`between the evidence and the claimed invention.
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`35.
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`In addition, I understand that the obviousness inquiry should not be
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`done in hindsight, but must be done using the perspective of a person of ordinary skill
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`in the relevant art as of the effective filing date of the patent claim.
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`36.
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`I understand that in order for a claimed invention to be considered
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`obvious, there must be some rationale for combining cited references as proposed.
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`37.
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`I understand that obviousness may also be shown by demonstrating that
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`it would have been obvious to modify what is taught in a single piece of prior art to
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`create the patented invention. I understand that obviousness may be shown by
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`establishing that it would have been obvious to combine the teachings of more than
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`one item of prior art. In determining whether a piece of prior art could have been
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`combined with other prior art or with other information within the knowledge of one
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`of ordinary skill in the art, I have been informed the following are examples of
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`approaches and rationales that may be considered:
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`(A) Combining prior art elements according to known methods to
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`yield predictable results;
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`(B)
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`Simple substitution of one known element for another to obtain
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`predictable results;
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`Case No: IPR2015-00792
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`(C) Use of a known technique to improve similar devices (methods,
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`or products) in the same way;
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`(D)
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` Applying a known technique to a known device (method, or
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`product) ready for improvement to yield predictable results;
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`(E)
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` Applying a technique or approach that would have been
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`“obvious to try” (i.e., choosing from a finite number of identified,
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`predictable solutions, with a reasonable expectation of success);
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`(F) Known work in one field of endeavor may prompt variations of it
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`for use in either the same field or a different one based on design
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`incentives or other market forces if the variations would have
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`been predictable to one of ordinary skill in the art; or
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`(G) Some teaching, suggestion, or motivation in the prior art that
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`would have led one of ordinary skill to modify the prior art
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`reference or to combine prior art reference teachings to arrive at
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`the claimed invention. I also understand that this suggestion or
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`motivation may come from such sources as explicit statements in
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`the prior art, or from the knowledge or common sense of one of
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`ordinary skill in the art.
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`38.
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`I understand that an invention that might be considered an obvious
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`variation or modification of the prior art may be considered non-obvious if one or
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`more prior art references discourages or lead away from the line of inquiry disclosed
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`Case No: IPR2015-00792
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`in the reference(s). I understand a reference does not “teach away” from an invention
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`simply because the reference suggests that another embodiment of the invention is
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`better or preferred. My understanding of the doctrine of teaching away requires a clear
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`indication that the combination should not be attempted (e.g., because it would not
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`work or explicit statement saying the combination should not be made).
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`III. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND IN THE RELEVANT TIMEFRAME
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`39. Based on my review of these materials, I believe that the relevant field
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`for purposes of the ’097 Patent is system, methods and apparatuses for controlling
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`and operating a hybrid electric vehicle (“HEV”) and methods for improving fuel
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`economy and reducing emissions. (See ‘097 Patent, Ex. 1201, 1:24-32 (“Field of the
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`Invention”).)
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`40. As described in Section I(B) above, I have extensive experience in the
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`relevant field, including experience relating to hybrid powertrain control strategies and
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`the related architecture. Based on my experience, I have an established understanding
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`of the relevant field.
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`41.
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`I understand that a “person of ordinary skill in the art” is one who is
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`presumed to be aware of all pertinent art as of the relevant timeframe, thinks along
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`conventional wisdom in the art, and is a person of ordinary creativity. I understand
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`that the level of skill in the art is evidenced by the prior art references. It is my
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`understanding that the ’097 Patent is to be interpreted based on how it would be read
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`Page 19 of 236
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`Case No: IPR2015-00792
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`by a person of ordinary skill in the art. It is my understanding that factors such as the
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`education level of those working in the field, the sophistication of the technology, the
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`types of problems encountered in the art, the prior art solutions to those problems,
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`and the speed at which innovations are made may help establish the level of skill in
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`the art. I understand that a person of ordinary skill in the art is not a specific real
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`individual, but rather is a hypothetical individual having the qualities reflected by the
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`factors above.
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`42.
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`I understand the relevant timeframe for evaluating a claim is at the time
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`of the invention, which is based on the effective filing date of each claim, or the date
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`at which the subject matter of the claim was first disclosed in an application in such
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`full, clear, concise, and exact terms as to enable the person skilled in the art to make
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`and use the claimed invention. The earliest claimed priority date of the ’097 Patent is
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`September 14, 1998. (’097 Patent, Ex. 1201 at 1.) For reasons not addressed in this
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`Declaration or the Petition it accompanies, the effective filing date of certain
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`challenged claims of the ’097 Patent is April 2, 20011. However, I have assumed a
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`September 14, 1998 priority date for purposes of my analysis below, as the priority
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`1 The issue of the effective filing date of claim 38, of the ‘097 Patent was taken up in a
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`separate Petition for Inter Partes Review and supporting Declaration filed April 4, 2014
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`in Case No. IPR2014-00570. Like claim 38, challenged claims 9, 19 and 28 include the
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`limitation “w