`
`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
`
`
`
`______________
`
`
`
`
`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)
`
`
`
`
`
`
`
`
`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ..................................................................................................................... iii
`
`I.
`
`INTRODUCTION .................................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ........................................ 2
`
`A.
`B.
`C.
`D.
`
`Real Party-In-Interest – 37 C.F.R. § 42.8(b)(1) ............................................ 2
`Related Matters – 37 C.F.R. § 42.8(b)(2) ...................................................... 2
`Lead and Back-Up Counsel – 37 C.F.R. § 42.8(b)(3).................................. 3
`Service Information – 37 C.F.R. § 42.8(b)(4)............................................... 3
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104 .................................................. 3
`
`A. Grounds for Standing – 37 C.F.R. § 42.104(a) ............................................ 3
`B.
`Challenged Claims – 37 C.F.R. § 42.104(b)(1) ............................................. 3
`C.
`Prior Art Relied Upon .................................................................................... 4
`D. Grounds of Challenge – 37 C.F.R. § 42.104(b)(2) ...................................... 5
`
`IV.
`
`PERSON OF ORDINARY SKILL IN THE ART (POSA) ............................... 5
`
`V. OVERVIEW OF THE ’097 PATENT ................................................................... 5
`
`A.
`B.
`C.
`D.
`
`The ’097 Patent Family ................................................................................... 5
`Background and Purported Invention .......................................................... 6
`Technical Fundamentals of the Claimed Subject Matter ............................ 7
`Prosecution History ........................................................................................ 8
`
`VI.
`
`STATE OF THE ART RELATIVE TO THE ’097 PATENT ......................... 10
`
`VII. CLAIM CONSTRUCTION – 37 C.F.R. § 42.104(b)(3) ..................................... 12
`
`A.
`B.
`C.
`
`“road load (RL)” and “RL” ............................................................................ 13
`“setpoint (SP)” and “SP” ................................................................................. 13
`“abnormal and transient conditions” ................................................................... 15
`
`VIII. UNPATENTABILITY GROUNDS .................................................................... 16
`
`A. GROUND 1: Claims 1, 7, 9, 11, 17, 19, 21, 27, 28, 30, 37 and 38
`are Obvious Over Severinsky ’970 and Takaoka ....................................... 16
`1.
`Independent Claim 21 ............................................................................ 16
`2.
`Independent Claim 1 .............................................................................. 38
`3.
`Independent Claim 11 ............................................................................ 40
`4.
`Independent Claim 30 ............................................................................ 43
`5.
`Dependent Claims 7, 17, 27 and 37 ...................................................... 48
`6.
`Dependent Claims 9, 19, 28 and 38 ...................................................... 50
`7.
`Rationale to Combine ............................................................................. 52
`
`i
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`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`B.
`
`Ground 2: Claims 3, 4, 13, 14, 23, 24, 32 and 33 are Obvious
`Over Severinsky ’970, Takaoka and Yamaguchi ........................................ 55
`1.
`Dependent Claim 3 ................................................................................ 55
`2.
`Dependent Claims 13, 23 and 32........................................................... 56
`3.
`Claims 4, 14, 24 and 33 ....................................................................... 57
`4.
`Rationale to Combine ............................................................................. 58
`
`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS ......................................... 60
`
`X.
`
`CONCLUSION ........................................................................................................ 60
`
`CERTIFICATE OF SERVICE ......................................................................................... 61
`
`
`
`
`
`
`
`ii
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`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`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
`
`1215
`
`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)
`
`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
`
`iii
`
`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`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
`
`iv
`
`

`

`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
`
`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`Identifier
`Unnewehr
`
`Brown
`
`Engh
`
`Stefanopoulou
`
`Vittone
`
`GE Final
`Report
`
`’704
`Application
`Cullen
`
`Exhibit
`No.
`1229
`
`1230
`
`1232
`
`1236 U.S. Patent No. 5,479,898
`
`
`
`v
`
`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`I.
`
`INTRODUCTION
`
`Petitioner FORD MOTOR COMPANY (“Ford”) requests inter partes review of
`
`claims 1, 3, 4, 7, 9, 11, 13, 14, 17, 19, 21, 23, 24, 27, 28, 30, 32, 33, 37 and 38
`
`(collectively, the “Challenged Claims”) of U.S. Patent No. 8,214,097 to Severinsky et
`
`al. (“the ’097 Patent,” Ex. 1201), which is owned by PAICE LLC et al. (“Paice” or
`
`“Patentee”). Through this Petition, and the Declaration of Dr. Jeffrey L. Stein (“Stein
`
`Decl.,” Ex. 1202), Petitioner demonstrates that there is a reasonable likelihood that
`
`the Challenged Claims are unpatentable.
`
`The ’097 patent is one of five patents that Paice has asserted against Ford in
`
`litigation. Paice contends that these patents teach an allegedly “fundamental” method
`
`of “mode control using road load” and “engine control under which engine torque is
`
`above a setpoint.” (Paice Complaint, Ex. 1203 at 16, ¶43, served on February 25,
`
`2014 (page 1).) Paice’s methods of using “road load” and an engine torque “setpoint”
`
`were actually well known in the art. (Stein Decl., Ex. 1202, ¶¶63-68.) U.S. Patent No.
`
`4,335,429 to Kawakatsu (Ex. 1218) and Paice’s own U.S. Patent No. 5,343,970
`
`(“Severinsky ’970”, Ex. 1205) all disclose use of “road load” and “setpoint” for mode
`
`switching in a hybrid vehicle. (Id.)
`
`Paice’s patent claims start with this well-known control strategy and then add
`
`other common features. The ’097 Patent has 39 such claims. Ford has repeatedly
`
`asked Paice to limit the asserted claims to a reasonable number. (Ford Letter, Ex.
`
`1204.) Paice has refused. Accordingly, Ford is filing several IPRs to address the
`
`1
`
`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`asserted claims in the ’097 Patent Family and is trying to group the claims according
`
`to claimed subject matter. This IPR focuses on claims that include the “abnormal and
`
`transient” limitation. While IPR2014-01415 also relied on Takaoka, this petition uses it
`
`to address new claims, and as an alternate ground for previously challenged claims to
`
`render moot Paice’s argument on the scope of SAE Technical Paper 950493
`
`(“Anderson,” Ex. 1219). Petitioner also submits additional evidence that Takaoka was
`
`published as a printed publication in a well-known, widely distributed periodical
`
`before the effective filing date of the challenged claims.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-In-Interest – 37 C.F.R. § 42.8(b)(1)
`
`Petitioner certifies that Ford is the real party-in-interest.
`
`B. Related Matters – 37 C.F.R. § 42.8(b)(2)
`
`The ’097 Patent is being asserted in Paice, LLC and the Abell Foundation, Inc. v.
`
`Ford Motor Company, Case No. 1-14-cv-00492 and Paice LLC and The Abell Foundation,
`
`Inc. v. Hyundai Motor America et. al., Case No. 1:2012-cv-00499. Ford has filed petitions
`
`concerning the ’097 Patent in IPR2014-00570 and IPR2014-01415, and has filed
`
`petitions concerning other asserted patents in the ’097 Patent’s family in IPR2014-
`
`00568, IPR2014-00571, IPR2014-00579, IPR2014-00852, IPR2014-00875, IPR2014-
`
`00884, IPR2014-00904, IPR2014-01416, IPR2015-00606, IPR2015-00767, IPR2015-
`
`00722, IPR2015-00758, IPR2015-00784, IPR2015-00785, and IPR2015-00791.
`
`2
`
`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`Petitioner is concurrently filing related petitions: IPR2015-00787, IPR2015-00790,
`
`IPR2015-00794, and IPR2015-00795.
`
`C.
`
`Lead and Back-Up Counsel – 37 C.F.R. § 42.8(b)(3)
`
`Ford appoints Sangeeta G. Shah (Reg. No. 38,614) of Brooks Kushman P.C. as
`
`lead counsel, and Frank A. Angileri (Reg. No. 36,733), Michael D. Cushion (Reg. No.
`
`55,094) and Andrew B. Turner (Reg. No. 63,121) of Brooks Kushman P.C., as well as
`
`Lissi Mojica (Reg. No. 63,421) and Kevin Greenleaf (Reg. No. 64,062) of Dentons US
`
`LLP, as back-up counsel. A Power of Attorney is filed concurrently herewith.
`
`D.
`
`Service Information – 37 C.F.R. § 42.8(b)(4)
`
`Hand-delivery service can be made to Brooks Kushman P.C., 1000 Town
`
`Center, Twenty-Second Floor, Southfield, MI 48075 and Dentons US LLP, 233 South
`
`Wacker Drive, Suite 7800, Chicago, IL 60606-6306. Petitioner consents to email
`
`service at FPGP0110IPR3@brookskushman.com and iptdocketchi@dentons.com.
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing – 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ’097 Patent is available for IPR and Petitioner is not
`
`barred or estopped from challenging the patent claims on the grounds in this Petition.
`
`B.
`
`Challenged Claims – 37 C.F.R. § 42.104(b)(1)
`
`Petitioner requests IPR of the Challenged Claims and requests that the Patent
`
`Trial and Appeal Board (“PTAB”) cancel those claims as unpatentable.
`
`
`
`3
`
`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`C.
`
`Prior Art Relied Upon
`
`1.
`
`U.S. Patent No. 5,343,970 to Severinsky (Severinsky ’970, Ex. 1205),
`
`which issued on September 6, 1994, is prior art under 35 U.S.C. § 102(b). Although
`
`Severinsky ’970 and the ’097 Patent share a common inventor, Severinsky ’970 is not
`
`part of the ’097 Patent Family.
`
`2.
`
`Toshifumi Takaoka et al., A High-Expansion Ratio Gasoline Engine for the
`
`Toyota Hybrid System, Toyota Technical Review Vol. 47, No. 2 (April 1998)
`
`(“Takaoka,” Ex. 1206), which was published in April 1998, is prior art under 35
`
`U.S.C. § 102(a). Paice challenged the public accessibility of Takoka in its Preliminary
`
`Patent Owner Response to IPR2014-01415, and stated that “Takaoka is a document
`
`designated as ‘Toyota Technical Review Vol. 47 No. 2 Apr. 1998.’ While this may
`
`seem to indicate that Takaoka was part of a periodical, nothing indicates that this is a
`
`periodical commonly circulated to the relevant public.” (IPR2014-01415 PO
`
`Preliminary Response, Ex. 1207 at 10-11, emphasis added.) Although thought to be
`
`unnecessary, Petitioner has acquired a declaration from a librarian establishing that
`
`Takaoka was in fact publically accessible as of September 1998. (Librarian Decl., Ex.
`
`1208.)
`
`3.
`
`U.S. Patent No. 5,865,263 to Yamaguchi (“Yamaguchi,” Ex. 1209),
`
`which was filed in the U.S. on February 23, 1996 and issued on February 2, 1999, is
`
`prior art under 35 U.S.C. §102(e).
`
`
`
`
`
`4
`
`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
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`D. Grounds of Challenge – 37 C.F.R. § 42.104(b)(2)
`
`Ground Basis
`
`References
`
`Claims Challenged
`
`1
`
`§ 103 Severinsky ’970 and Takaoka
`
`1, 7, 9, 11, 17, 19, 21, 27, 28, 30,
`
`37 and 38
`
`2
`
`§ 103 Severinsky ’970, Takaoka and
`
`3, 4, 13, 14, 23, 24, 32 and 33
`
`Yamaguchi
`
`
`IV. PERSON OF ORDINARY SKILL IN THE ART (POSA)
`
`The level of ordinary skill in the art is evidenced by the references. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A POSA would have either: (1) a
`
`graduate degree in mechanical, electrical or automotive engineering with experience in
`
`the design and control of combustion engines, electric or hybrid electric propulsion
`
`systems, or automotive transmissions, or (2) a bachelor’s degree in mechanical,
`
`electrical or automotive engineering with at least five years of experience in the design
`
`and control of combustion engines, electric or hybrid electric propulsion systems, or
`
`automotive transmissions. (Stein Decl., Ex. 1202, ¶¶39-43.)
`
`V. OVERVIEW OF THE ’097 PATENT
`
`A. The ’097 Patent Family
`
`The ’097 Patent is a divisional, filed March 29, 2011, in a patent family chain
`
`that ultimately claims priority back to two separate provisional applications – U.S.
`
`Provisional Application No. 60/100,095 filed September 14, 1998 and U.S.
`
`5
`
`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
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`Provisional Application No. 60/122,296 filed March 1, 1999. (See Stein Decl., Ex.
`
`1202, ¶¶121-123.)
`
`The diagram above illustrates the ’097 Patent and its ancestors. Other related
`
`
`
`patents and pending applications are not shown.
`
`B.
`
`Background and Purported Invention
`
`The ’097 Patent is broadly directed to a “hybrid vehicle” design that includes an
`
`internal combustion engine (“engine”), electric motor, and battery, all controlled by a
`
`controller. (’097 Patent, Ex. 1201, Abstract.) The controller controls the operational
`
`mode of the hybrid vehicle so that the engine operates only under conditions of high
`
`efficiency in order to improve fuel economy. (’097 Patent, Ex. 1201, 13:37-50, 15:55-
`
`16-2.) The ’097 Patent admits that “the prior art, including the [Severinsky] ’970
`
`Patent, clearly discloses the desirability of operating an internal combustion engine in
`
`its most efficient operating range.” (’097 Patent, Ex. 1201, 11:13–16.) In the
`
`background section discussing the prior art, the ’097 Patent further admits that great
`
`attention has been given to reducing fuel consumption and reducing pollutants
`
`emitted by vehicles. (’097 Patent, Ex. 1201, 1:36–40.)
`
`6
`
`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`As set forth in the Challenged Claims, the purported invention of the ’097
`
`Patent is merely directed toward a well-known hybrid vehicle configuration with
`
`engine control strategies to minimize the formation of undesired emissions by
`
`maintaining a “substantially stoichiometric ratio.” (’097 Patent, Ex. 1201, claims 1, 11, 21
`
`and 30.) In certain Challenged Claims, the purported invention is further directed to
`
`known HEV control strategies that operate the engine and motors “in accordance
`
`with the vehicle’s instantaneous torque demands so that the engine is run only under
`
`conditions of high efficiency.” (’097 Patent, Ex. 1201, Abstract, see e.g., claims 1 and
`
`11.) However, these concepts were old and well-known to POSAs before the earliest
`
`effective filing date of the ’097 Patent. (Stein Decl., Ex. 1202, ¶¶96-99.)
`
`C. Technical Fundamentals of the Claimed Subject Matter
`
`The Challenged Claims of the ’097 Patent are directed to the interplay between
`
`engine control strategies, the combustion process and emissions. Fundamentally, an
`
`internal combustion engine produces mechanical power by releasing energy in the fuel
`
`through a combustion reaction with air. (Stein Decl. Ex. 1202, ¶44.) To regulate the
`
`mechanical power (i.e., output torque times engine speed) produced by the engine
`
`during combustion, the amount of air and fuel provided to the engine must be
`
`controlled. (Id. at ¶45.)
`
`To minimize the formation of undesired emissions and improve fuel economy,
`
`engine control strategies also regulate the air/fuel mixture to strive towards a
`
`“stoichiometric” ratio — the ratio at which complete combustion is achieved. (Id. at
`
`7
`
`

`

`Case No: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`¶¶47, 69-83.) Such undesired emissions are further reduced in a secondary reaction
`
`using a catalyst in the exhaust stream. However, controlling emissions can be more
`
`difficult during rapid changes in output engine torque (i.e., transient conditions),
`
`because of the time delay in measuring and modifying the air-fuel mixture. (Id. at
`
`¶48.) In contrast to an engine, an electric motor does not create emissions when
`
`converting electric energy to mechanical energy. Thus, rapid changes in output motor
`
`torque — to meet driver demand — are possible without emissions concerns. (Id. at
`
`¶49.)
`
`HEVs combine and utilize the features of both internal combustion engines
`
`and electric motors to satisfy the driver demanded torque requirements to propel the
`
`vehicle in a way that reduces undesired emissions and improves fuel economy.
`
`“Application of the electric motor during rapid changes in vehicle torque demand
`
`resolves the problem of additional emissions that would otherwise be created by the
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`engine alone. This was well known prior to the earliest effective filing date of the
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`challenged claims of the ’097 Patent.” (Id. at ¶50.)
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`D.
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`Prosecution History
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`As part of the amendments that led to issued claim 1, the prosecution history
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`explains the claimed relationship between controlling combustion and stoichiometry
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`on emissions formation:
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`More specifically, the claims of this application are largely directed to
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`control of the combustion of fuel in an ICE of a hybrid vehicle so that
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`the fuel is combusted efficiently. Ideally, combustion would take place
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`at precisely the stoichiometric ratio, whereby the fuel:air mixture that is
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`provided to the ICE is neither "rich" (containing more fuel than can be
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`combusted in the amount of air provided), nor "lean" (containing more
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`air than is needed for the complete combustion of the amount of fuel
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`provided). Rich mixtures lead to unburned fuel in the exhaust, which is
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`wasteful of fuel and can contribute to undesirable emissions, while over-
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`lean mixtures can lead to increased combustion temperatures and
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`formation of different undesired emissions.
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`(’097 File History, Ex. 1210 at 231, emphasis added.)
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`The remarks further state that it is difficult to maintain a precisely
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`stoichiometric ratio due to the “delay in the response of the ICE controller to
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`transients in the amount of torque required.” (Id. at 232.)
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`By limiting the rate of increase of engine output torque, a substantially
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`stoichiometric ratio can be maintained to reduce emissions:
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`As claimed herein, the controller imposes a further, noninherent
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`limitation on the rate of increase of torque output by the engine. This is
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`done so that the "super-rich" fuel:air mixtures mentioned above, and
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`indeed substantially all rich mixtures, can be avoided in favor of
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`substantially stoichiometric combustion at all times, yielding further
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`improvement in fuel usage efficiency and reduction of undesired exhaust
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`emissions.
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`(Id. at 235, emphasis added.)
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`The limitation is defined in relation to an “inherent maximum”:
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`It will be appreciated that what is being claimed here is that the
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`controller limits the rate of increase of torque output by the engine. That
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`is, all engines have an inherent limitation on the maximum rate of
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`increase at which they can supply torque responsive to increase in fuel
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`supplied.
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`(Id. at 234, emphasis added.)
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`More specifically, the advantage of limiting the “rate of increase of output torque of
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`the engine” to less than the engine’s “inherent maximum rate of increase in output torque” is
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`“that the engine can be controlled to combust fuel substantially at the stoichiometric
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`fuel:air ratio, as claimed. Thus, combustion can be maintained substantially
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`stoichiometric regardless of rapid variation in the operator’s demand for torque to be
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`supplied to the vehicle wheels.” (Id. at 242.)
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`VI. STATE OF THE ART RELATIVE TO THE ’097 PATENT
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`Since their introduction in the early 20th century, HEVs used the power
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`capabilities of electric motors and internal combustion engines to satisfy torque
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`requirements in a fuel efficient manner. (Stein Decl., Ex. 1202, ¶¶50-53.) Advances
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`in components and electronics resulted in well-established HEV architectures and
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`engine controls. (Id. at ¶¶53-68.) From at least the 1970s, a variety of parallel hybrid
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`vehicle systems having “at least one electric motor” were designed – such as the one
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`described in the Challenged Claims. (Id. at ¶¶56-59.)
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`During
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`this same period, environmental regulations resulted
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`in
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`the
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`development of catalysts to increase the rate of fuel combustion to reduce the
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`formation of undesired emissions. (Id. at ¶¶69-78.) Since at least 1988, “three-way”
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`catalysts have been widely used to control hydrocarbon (HC), carbon monoxide (CO)
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`and nitrogen oxide (NOx) emissions. (Id. at ¶79.) To efficiently convert all three
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`gases, the engine must operate at a substantially stoichiometric air/fuel ratio. (Id.) A
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`stoichiometric air/fuel ratio is the ideal quantity of air (oxygen) and fuel reactants
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`required to achieve a complete combustion reaction – wherein all of the hydrocarbon
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`fuel reacts with oxygen to form carbon dioxide and water. (Id. at ¶¶71-73.) Outside
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`of the stoichiometric air/fuel ratio, HC, CO and NOx conversion efficiencies rapidly
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`drop. (Id. at ¶79.) Because fuel is completely burned at the stoichiometric ratio, fuel
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`economy is also maximized. (Id. at ¶¶47, 71-73.)
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`Since at least 1977, a closed-loop feedback system has used one or more
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`oxygen (lambda) sensors to monitor the oxygen content in the exhaust stream from
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`the engine to help maintain the stoichiometric ratio; this monitored oxygen content is
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`used to determine whether the air/fuel ratio is “rich” (i.e., excess fuel) or “lean” (i.e.,
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`excess air). (Id. at ¶¶81-83.) For conventional vehicles, engines typically run rich
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`during engine starting conditions and during transient conditions (i.e., when the
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`vehicle is accelerating under load). (Id. at ¶¶84-89.) During “rich” operation, vehicles
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`emit more HC and CO pollutants than during normal operation. (Id. at ¶73-74, 84.)
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`As of the earliest claimed priority date of the ’097 Patent, limiting the rate of
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`change of engine torque/load during transient conditions, such that the combustion
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`of fuel within the engine occurs at a substantially stoichiometric ratio, was known. (Id.
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`Case No: IPR2015-00792
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`at ¶90-91.) The Patentee admitted as much in their characterization of Takaoka (Ex.
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`1206) during the prosecution of U.S. Patent No. 7,104,347 (“the ’347 Patent,” Ex.
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`1211), which is the great-grandparent of the ’097 Patent:
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`Takaoka et al, in “A High-Expansion-Ratio Gasoline Engine for the
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`Toyota Hybrid System”, discuss the details of an ICE designed for use in
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`a hybrid vehicle. This paper states that “By using the supplementary
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`drive power of the electric motor, the system eliminates the light-load
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`range, where concentrations of hydrocarbons in the emissions are high
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`and the exhaust temperature is low.” (p. 57; a similar statement is made
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`on p. 59) and “By allocating a portion of the load to the electric motor,
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`the system is able to reduce engine load fluctuation under conditions
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`such as rapid acceleration. This makes it possible to reduce quick
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`transients in engine load so that the air-fuel ratio can be stabilized
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`easily.” (p. 58). The former statement simply emphasizes the fact that
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`engines are operated more efficiently at higher loads, and the latter that
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`stoichiometric combustion can be more nearly obtained if the
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`engine’s speed and/or load is varied as slowly as possible.
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`(’347 File History, Ex. 1212 at 23, emphasis added)
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`VII. CLAIM CONSTRUCTION – 37 C.F.R. § 42.104(b)(3)
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`For purposes of this IPR, a claim is interpreted by applying its “broadest
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`reasonable construction.” 37 C.F.R. § 42.100(b). Certain terms in the claims of the
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`’097 Patent were argued by Paice with respect to the ’097 Patent and other patents in
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`the ’097 Patent family, and construed by the Eastern District of Texas court in Paice
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`LLC v. Toyota Motor Corp. et al., Case No. 2:04-cv-211 and Paice LLC v. Toyota Motor
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`Case No: IPR2015-00792
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`Corp. et al., Case No. 2:07-cv-180 (“Toyota Litigation,” Ex. 1213). Certain terms
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`recited in the claims of the ’097 Patent were also argued by Paice and construed by a
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`Maryland district court in Paice LLC v. Hyundai Motor Corp. et al., Case No. 2:12-cv-
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`0499, on July 24, 2014 (“Hyundai Litigation,” Ex. 1214).
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`Ford proposes the following constructions for the purposes of this IPR only.
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`But for some of these terms, based on the specification, file history, and Patentee
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`admissions, Ford contends that construction under applicable district court standards
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`is narrower, and reserves the right to present a narrower construction in district court
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`litigation.
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`A.
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` “road load (RL)” and “RL”
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`The Eastern District of Texas and the District of Maryland courts have
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`construed the terms “road load,” “RL,” and “road load (RL)” as “the instantaneous
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`torque required for propulsion of the vehicle, which may be positive or negative in
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`value.” (Toyota Litigation, Ex. 1213 at 14-15; Hyundai Litigation, Ex. 1214 at 15-19.)
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`For this proceeding, Petitioner proposes that “road load” be construed as “the
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`amount of instantaneous torque required to propel the vehicle, be it positive or
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`negative.” This is consistent with the PTAB’s construction in related proceedings.
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`(See IPR2014-00571 Decision, Ex. 1215 at 7.)
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`B.
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`“setpoint (SP)” and “SP”
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`The Texas and Maryland courts construed “setpoint (SP)” as being “a definite,
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`but potentially variable value at which a transition between operating modes may
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`occur” (Toyota Litigation, Ex. 1213 at 12-13; Hyundai Litigation, Ex. 1214 at 19-23).
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`Ford disagrees that this construction is the broadest reasonable construction.
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`The ’097 Patent claims, specification, and file history define “setpoint” as a
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`“predetermined torque value.” All claims recite a “setpoint” or “SP” value being
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`compared to either: (1) a torque value (e.g., claims 1 and 11); or (2) a torque-based
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`“road load” value (e.g., claim 21). No claims recite a “setpoint” or “SP” in comparison
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`to any other system variable. Likewise, the specification says “the microprocessor
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`tests sensed and calculated values for system variables, such as the vehicle’s
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`instantaneous torque requirement, i.e., the “road load” RL. . . against setpoints, and
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`uses the results of the comparisons to control the mode of vehicle operation.” (’097
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`Patent, Ex. 1201, 40:16-26.) To provide a meaningful comparison, the “setpoint”
`