UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owners.
`
`______________
`
`
`
`U.S. Patent No. 8,214,097 to Severinsky et al.
`IPR Case No. IPR2015-00792
`
`
`
`DECLARATION OF DR. JEFFREY L. STEIN IN SUPPORT OF
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
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`Page 1 of 33
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`Case No.: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
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`Table of Contents
`
`Updated Exhibit List .................................................................................................. 4
`
`I.
`
`Introduction ...................................................................................................... 8
`
`A.
`
`
`Paice’s deposition tactics ...................................................................... 8
`
`B.
`
`
`Disputed claims ...................................................................................10
`
`II.
`
`Grounds 1-2: ..................................................................................................11
`
`A.
`
`
`Regarding Independent claims 1, 11 and 21, Severinsky ’970
`discloses when to operate the engine based on “RL”, i.e., the
`“torque required to propel the vehicle” ...............................................11
`
`1.
`
`
`Severinsky ’970 teaches starting and stopping the engine
`based on road load or torque required to operate the
`vehicle .......................................................................................11
`
`B.
`
`
`Severinsky ’970 discloses the additional “abnormal and
`transient conditions” limitations of claims 7, 17, 27 and 37 ..............14
`
`III. Ground 1-2: ....................................................................................................19
`
`A.
`
`
`Independent claims 1, 11, 21 and 30 ...................................................19
`
`1.
`
`
`2.
`
`
`Takaoka’s control strategy for reducing engine load
`fluctuation is not referring to the mechanical design of an
`engine ........................................................................................19
`
`a.
`
`Paice characterized Takaoka as teaching a control
`strategy during the prosecution of the ’347 Patent .........22
`
`Takaoka’s control strategy for reducing engine load is
`simply another way of saying that the rate of change of
`engine torque is controlled to maintain combustion at a
`stoichiometric ratio ...................................................................23
`
`B.
`
`
`Rationale to combine Severinsky ’970 and Takaoka ..........................24
`
`1.
`
`
`Severinsky ’970 does not teach away from operating at
`the stoichiometric ratio .............................................................24
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`Page 2 of 33
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`2.
`
`
`Severinsky ’970 does not teach away from Takaoka’s
`“underpowered” engine ............................................................30
`
`IV. Conclusion .....................................................................................................32
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`Case No.: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
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`
`
`Exhibit
`No.
`1201
`
`Updated Exhibit List
`
`Description
`
`U.S. Patent No. 8,214,097
`
`1202
`
`Declaration of Dr. Jeffrey L. Stein
`
`
`
`1203
`
`1204
`
`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
`
`1205
`
`U.S. Patent No. 5,343,970
`
`Identifier
`
`’097
`Patent
`Stein
`Decl.
`Paice
`Complaint
`
`Ford
`Letter
`Severinsk
`y ’970
`Takaoka
`
`IPR2014-
`01415 PO
`Preliminar
`y
`Response
`Librarian
`Decl.
`
`1206
`
`1207
`
`1208
`
`1209
`
`1210
`
`1211
`
`1212
`
`1213
`
`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)
`
`Declaration of Walt Johnson, Librarian at Patent and
`Trademark Resource Center
`(PTRC), Minneapolis
`Central Library
`U.S. Patent No. 5,865,263
`
`Yamaguch
`i
`’097 File
`History
`’347
`Patent
`’347 File
`History
`Paice LLC v. Toyota Motor Corp. et al., Case No. 2:04- Toyota
`
`File History of U.S. Patent No. 8,214,097
`
`U.S. Patent No. 7,104,347
`
`File History of U.S. Patent No. 7,104,347
`
`Page 4 of 33
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`Case No.: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
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`
`
`Identifier
`
`Litigation
`
`Hyundai
`Litigation
`
`IPR2014-
`00571
`Decision
`’634
`Patent
`IPR2014-
`0571 PO
`Response
`Kawakats
`u
`Anderson
`
`Dr. Stein
`CV
`Heywood
`
`Pulkrabek
`
`Hawley
`
`
`
`
`Exhibit
`No.
`
`1214
`
`1215
`
`1217
`
`1218
`
`1219
`
`1220
`
`1221
`
`1222
`
`1223
`
`1224
`1225
`
`1216
`
`U.S. Patent No. 7,237,634
`
`Description
`
`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)
`
`Ford Motor Co. v. Paice, LLC, Case IPR2014-00571,
`Paper 20, Patent Owner Response (P.T.A.B. Jan. 21,
`2015)
`U.S. Patent No. 4,335,429
`
`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
`
`Internal Combustion Engine
`John B. Heywood,
`Fundamentals
`(McGraw-Hill 1988)
`(available
`at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2094
`6&recCount=25&recPointer=4&bibId=2421798.)
`Willard W. Pulkrabek, Engineering Fundamentals of the
`Internal Combustion Engine (Prentice Hall, 1997)
`(available
`at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=1000
`3&recCount=25&recPointer=1&bibId=2109503.)
`Hawley, G.G., The Condensed Chemical Dictionary, Van
`Nostrand Reinhold Co., 9th ed. (1977) (available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2154
`1&recCount=25&recPointer=14&bibId=1289584.)
`Pieper
`U.S. Patent No. 913,846
`Michael Duoba, Ctr. for Transp. Research, Argonne Duoba
`
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`Exhibit
`No.
`
`1226
`
`1227
`
`1228
`1229
`
`1230
`
`1231
`
`1232
`
`1233
`
`Case No.: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
`
`
`
`Description
`
`Identifier
`
`in
`the Vehicle Tester
`for
`Nat’l Lab., Challenges
`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.)
`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/.)
`U.S. Patent No. 3,888,325
`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=2182
`9&recCount=25&recPointer=13&bibId=4259071.)
`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=&arnu
`mber=411385&queryText%3DA.+G.+Stefanopoulou+et+
`al.%2C+Engine+Air-
`Fuel+Ratio+and+Torque+Control+using+Secondary+Thr
`ottles%2C+Proceedings+of+the+33rd+IEEE+Conference
`+on+Decision+and+Control+.LB.December+1994.RB.)
`Oreste Vittone et al., FIAT Research Centre, Fiat
`Conceptual Approach to Hybrid Car Design, 12th
`
`SAE SP-
`1331
`
`Yamaguch
`i Paper
`
`Reinbeck
`Unnewehr
`
`Brown
`
`Engh
`
`Stefanopo
`ulou
`
`Vittone
`
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`Exhibit
`No.
`
`1234
`
`1235
`
`1236
`1237
`
`1238
`
`1239
`
`1240
`
`1241
`
`1242
`
`1243
`
`1244
`
`1245
`
`1246
`
`Case No.: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
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`
`
`Description
`
`Identifier
`
`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.)
`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.)
`U.S. Application No. 13/065,704
`
`U.S. Patent No. 5,479,898
`Reply Decl. of Dr. Jeffrey L. Stein
`
`Final Decision, IPR2015-01415, Paper 30 (March 10,
`2016)
`
`Final Decision, IPR2014-01416, Paper 26 (March 10,
`2016)
`
`Mr. Hannemann Deposition Transcript (IPR2015-00571,
`April 7, 2015)
`Final Decision, IPR2014-00570, Paper 44 (September 28,
`2015)
`Final Decision, IPR2014-00904, Paper 41 (December 10,
`2015)
`Mr. Hannemann Deposition Transcript (IPR2015-01415,
`September 4, 2015)
`Mr. Hannemann Deposition Transcript (IPR2015-00570,
`April 8, 2015)
`Dr. Stein Deposition Transcript (IPR2015-01415, May
`29, 2015)
`Bosch Automotive Handbook (Oct. 1996)
`
`GE Final
`Report
`
`’704
`Applicatio
`n
`Cullen
`Reply
`Decl.
`’1415
`Final
`Decision
`’1416
`Final
`Decision
`Hn Tr. 1
`
`’570 Final
`Decision
`’904 Final
`Decision
`Hn Tr. 2
`
`Hn Tr. 3
`
`Stein Tr. 1
`
`Bosch
`Handbook
`
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`I.
`
`Introduction
`
`Case No.: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
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`
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`1. My name is Jeffrey L. Stein. I provided my background, qualifications
`
`and opinions pertaining to a Petition for Inter Partes Review, Case No. IPR2015-
`
`00792, of certain claims of U.S. 8,214,097 (“the ’097 Patent,” Ex. 1201) in a
`
`Declaration that was filed on February 19, 2015. (“Stein Decl.,” “Stein,” “First
`
`Declaration,” Ex. 1202.)
`
`2.
`
`I have been asked by Ford to provide this Second Declaration (“Reply
`
`Decl.,” Ex. 1237) in support of Ford’s reply to Paice’s response regarding certain
`
`factual issues raised in IPR2015-00792.
`
`3.
`
`Specifically, for purposes of this declaration, I have been asked to
`
`analyze the arguments made by Paice in their Patent Owner Response (“POR”),
`
`along with the declaration of Paice’s expert, Mr. Hannemann (“Hn Decl.,” Ex.
`
`2206). I have also analyzed the Patent Trial and Appeal Board’s decision to
`
`institute. (“Decision,” IPR2015-00792, Paper 13.)
`
`4.
`
`I have also reviewed my first declaration (Stein Decl., Ex. 1202), the
`
`exhibits cited in my declarations.
`
`
`A.
`
`5.
`
`Paice’s deposition tactics
`
`I understand that the IPR rules limit the scope of a deposition to issues
`
`raised in a declaration for the same IPR. During my deposition for IPR2015-01415,
`
`Paice’s Attorney repeatedly read a sentence from a document and asked me if I
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`agreed with the sentence, without providing any context. (See e.g., Stein Tr. 1 Ex.
`
`1245, 58:25-59:3; 86:14-87:16.) I was not sure if he was reading from my
`
`declaration or from another document, so I asked questions for clarification and/or
`
`asked Paice’s Attorney to let me see the document that he was reading. (Id.)
`
`6.
`
`For example, Paice’s attorney repeatedly read from one such
`
`document and asked me if I agreed “that Severinsky '970 discloses a motor
`
`operation mode that is based both on the vehicle's speed and torque requirements?”
`
`(See e.g., Stein Tr. 1 Ex. 1245 at 58:25-59:3.) I asked Paice’s attorney for
`
`clarification for a few minutes. (See e.g., Stein Tr. 1 Ex. 1245 at 58:25-62:8.)
`
`Afterwards, I described Severinsky ’970’s hysteresis control sequence. (Stein Tr.
`
`1, Ex. 1245 at 62:8-64:19.)
`
`7.
`
`Paice attempts to attack my credibility by rewriting their ambiguous
`
`question from “do you agree that Severinsky '970 discloses a motor operation
`
`mode that is based both on the vehicle's speed and torque requirements?” to one
`
`limited to speed:
`
`Similarly, when asked whether Severinsky disclosed a motor
`
`operation mode based on speed, Dr. Stein first argued the mode was
`
`based on torque, then pointed to the “hysteresis” disclosure of
`
`Severinsky (Ex. 1205 at 18:34-42) as evidence of switching based on
`
`speed, then reversed course and argued that it was “mentioning speed
`
`ranges in the context of a patent, which is all about torque control,”
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`then finally agreed that the “hysteresis” disclosure did not even use
`
`the word “torque.” See Ex. 2213 at 62:1-66:11. Dr. Stein’s analysis is
`
`riddled with hindsight bias, which is perhaps best captured by his
`
`reading “torque” into every mention of “speed,” contrary to the plain
`
`language of Severinsky.
`
`(POR at 58.)
`
`8.
`
`Similarly, in a deposition for a related IPR, Paice asked me questions
`
`about a paper I co-authored in 2006, without providing the paper to me. (See POR
`
`at 58-59.) Thus, Paice’s tactic of asking me if I agree with a statement without
`
`supporting context is difficult to answer, especially when the statement is outside
`
`the scope of my declaration for that IPR.
`
`
`
` Disputed claims B.
`
`9.
`
`Paice did not argue all claim limitations. And I was not asked to give
`
`an additional opinion on some of Paice’s new arguments. For all claim limitations
`
`not analyzed in this declaration, I refer to the analysis in my First Declaration
`
`(Stein Decl., Ex. 1202.)
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`II. Grounds 1-2:
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`Case No.: IPR2015-00792
`Attorney Docket No. FPGP0110IPR3
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`
`
`
` Regarding Independent claims 1, 11 and 21, Severinsky ’970 A.
`discloses when to operate the engine based on “RL”, i.e., the
`“torque required to propel the vehicle”
`
`
`1.
`
`Severinsky ’970 teaches starting and stopping the engine
`based on road load or torque required to operate the vehicle
`
`10. Paice argues that claim 21 requires starting the engine, i.e., “the
`
`engine is brought into operation” and cites to paragraph 44 of Mr. Hannemann’s
`
`declaration for support. (POR at 17-18, n.2.) Mr. Hannemann does not explain how
`
`the claims require that the engine is “brought into operation” in paragraph 44, but
`
`he does discuss Paice’s proposed claim constructions for “setpoint” and adding a
`
`comparison between road load or torque requirements and setpoint and/or MTO to
`
`independent claims 1, 11 and 21:
`
`44. In addition, counsel for Patent Owner has asked that in addition to
`
`applying the Board-adopted constructions that I apply an alternative
`
`construction of “setpoint (SP),” which requires that the setpoint be a
`
`value “at which a transition between operating modes may occur.” I
`
`also understand that Patent Owners have requested that the Board
`
`construe claims 1, 11, and 21 (and all claims depending therefrom), to
`
`make explicit the requirement that the challenged claims require a
`
`comparison between road load or torque requirements and setpoint
`
`and/or MTO. I agree with Patent Owners that the plain language of
`
`the claims requires such comparisons. Moreover, a person of skill in
`
`the art would certainly not interpret the challenged claims so broadly
`
`as to disregard the comparison of road load to setpoint and/or MTO as
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`such comparisons are fundamental to the claimed control system.
`
`Otherwise, the language following the word “when” in limitations
`
`such as “operating said internal combustion engine to provide torque
`
`to the hybrid vehicle when the torque required to operate the hybrid
`
`vehicle is between a setpoint SP and a maximum torque output
`
`(MTO) of the engine” would be rendered superfluous. Throughout my
`
`declaration, I apply the constructions identified in the table above
`
`unless I specifically note otherwise.
`
`(Hn. Decl., Ex. 2206, ¶44, emphasis added.)
`
`11.
`
`I cannot find the limitations – “starting the engine” or “the engine is
`
`brought into operation” in claim 21. However, per Mr. Hannemann’s statements in
`
`¶44, I assume that Paice’s arguments are rooted in its proposed construction for
`
`“setpoint.”
`
`12. Severinsky ’970 discloses that the engine is operated only under the
`
`most efficient conditions of output power and speed, and under other conditions,
`
`the electric motor drives the vehicle:
`
`More particularly, according to the invention, the internal combustion
`
`engine is operated only under the most efficient conditions of output
`
`power and speed. When the engine can be used efficiently to drive the
`
`vehicle forward, e.g. in highway cruising, it is so employed. Under
`
`other circumstances, e.g. in traffic, the electric motor alone drives the
`
`vehicle forward and the internal combustion engine is used only to
`
`charge the batteries as needed.
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`(Severinsky ’970, Ex. 1205, 7:8-16, emphasis added.)
`
`13. Severinsky ’970 discloses disconnecting the engine 40 from the drive
`
`and shutting it off, when the motor 20 is operated to drive the vehicle:
`
`When the battery 22 is fully charged, and the vehicle speed is below
`
`about 25-35 mph, the microprocessor 48 disconnects the engine 40
`
`from the drive and shuts it off. Under these circumstances only the
`
`motor 20 provides power to drive the vehicle. If the brake pedal is
`
`depressed by the driver, the microprocessor 48 causes the motor
`
`frequency to advance, so that motor 20 performs as a generator to
`
`recover some of the braking energy back into the battery. See FIGS.
`
`12-13. Up to 40-50% on average of the vehicle's kinetic energy may
`
`thus be recovered and stored in battery 22. Excess braking energy is
`
`still dissipated by the brake pads of the vehicle.
`
`(Severinsky ’970, Ex. 1205, 17:44-55, emphasis added.)
`
`14. Severinsky ’970 discloses that the engine is run only in the vicinity of
`
`its most efficient operational point (i.e., between 60-90% of the engine’s MTO):
`
`It will be appreciated that according to the invention the internal
`
`combustion engine is run only in the near vicinity of its most efficient
`
`operational point, that is, such that it produces 60-90% of its
`
`maximum torque whenever operated.
`
`(Severinsky ’970, Ex. 1205, 20:63-67, emphasis added.)
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`15. A person of ordinary skill in the art would have understood that since
`
`the engine is run only between 60-90% of MTO, the engine is started and operated
`
`when the “RL” / torque required to operate the vehicle is between a setpoint (60%
`
`MTO) and 90% MTO. A person of ordinary skill in the art would have also
`
`understood that the engine is shut off (stopped) during other conditions, e.g., when
`
`the engine produces less than the setpoint (60% of MTO).
`
`16. Thus even if the independent claims were construed as proposed by
`
`Paice to require starting the engine, and to include a comparison between road load
`
`and setpoint and/or MTO - Severinsky ’970 discloses such limitations.
`
`
`B.
`
`Severinsky ’970 discloses the additional “abnormal and transient
`conditions” limitations of claims 7, 17, 27 and 37
`
`17. Claims 7, 17, 27 and 37 depend from claims 1, 11, 21 and 30,
`
`respectively and are directed to “abnormal and transient conditions” limitations.
`
`18. Claim 7 is representative and requires “operating the engine at torque
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`output levels less than SP under abnormal and transient conditions.”
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`19. Severinsky ’970 discloses the additional “abnormal and transient
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`conditions” limitations of claims 7, 17, 27 and 37. (Stein Decl., Ex. 1202, ¶¶427-
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`436.)
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`20. Paice argues that “abnormal and transient conditions” be construed as
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`“‘starting and stopping of the engine and provision of torque to satisfy drivability
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`or safety considerations,’ to make clear that it does not include ‘city traffic and
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`reverse operation.’” (POR at 12-13, citing ’097 FH, Ex. 1210 at 238.) And Mr.
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`Hannemann states:
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`103. During prosecution of the ’097 patent, the patentee distinguished
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`“abnormal and transient conditions” from “traffic or city driv[ing]”
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`and reverse operation, stating that “city traffic and reverse operation
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`are normal conditions” during which the traction motor provides the
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`torque and the combustion engine is “operated to charge the battery
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`when it is discharged.” Ex. 1210 at 238. In my opinion, to a person of
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`ordinary skill in the art, Severinsky’s disclosure of traffic and low
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`battery charge do not constitute “abnormal and transient conditions,”
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`because these are normal operating conditions, as confirmed by the
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`prosecution history of the ’097 patent.
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`(Hn. Decl., Ex. 2206, ¶103.)
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`21. During the prosecution of the related ’097 Patent, the Examiner
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`rejected pending claims 25, 36, 47, 56 and 59, which included similar “abnormal
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`and transient conditions” limitations, over Severinsky ’970’s disclosure of “low
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`speed or in traffic driving” in its Abstract and in Col. 6, lines 19-48. (’097 FH, Ex.
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`1210 at 191.) The Examiner also stated that he “interprets ‘abnormal and transient
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`condition’ as in traffic or city drive, too many traffic light so too many stops and
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`reverse operation.” (Id.) However, Severinsky ’970’s disclosed low speed mode
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`refers to an electric mode in which the electric motor alone drives the vehicle:
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`An improved hybrid electric vehicle includes an internal combustion
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`engine and an electric motor. Both the motor and the engine provide
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`torque to drive the vehicle directly through a controllable torque
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`transfer unit. Typically at low speeds or in traffic, the electric
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`motor alone drives the vehicle, using power stored in batteries;
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`under acceleration and during hill climbing both the engine and the
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`motor provide torque to drive the vehicle; and in steady state highway
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`cruising, the internal combustion engine alone drives the vehicle.
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`(Severinsky ’970, Ex. 1205, Abstract, emphasis added.)
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`A microprocessor receives control inputs from the driver of the
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`vehicle and monitors the performance of the electric motor and the
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`internal combustion engine, the state of charge of the battery, and
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`other significant variables. The microprocessor determines whether
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`the internal combustion engine or the electric motor or both should
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`provide torque to the wheels under various monitored operating
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`conditions. Typically, the electric motor operates under battery power
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`during low speed operation, e.g., in traffic, during reverse operation,
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`or the like. In this mode of operation, the energy transfer efficiency
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`from the batteries to the wheels is very high. By comparison, it will be
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`appreciated that a vast amount of fuel is wasted as internal
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`combustion engines of conventional vehicles idle uselessly at stop
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`lights or in traffic. This source of inefficiency and pollution is
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`eliminated according to the invention.
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`(Severinsky ’970, Ex. 1205, 6:19-35, emphasis added.)
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`22. Paice filed an amendment, and argued the Examiner’s rejection of the
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`“abnormal and transient conditions” claims over Severinsky’s disclosed low speed
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`/ electric mode:
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`There are also a few apparent misunderstandings concerning the
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`claims, which should be clarified. For example, as to claims 25, 36,
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`47, [56 - sic - apparently an error] and 59 the Examiner interprets
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`"abnormal and transient conditions" wherein the engine can be run at
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`output levels less than SP, the minimum power output of the engine
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`under normal circumstances, as "in traffic or city driv[ing] too many
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`traffic light so too many stops and reverse operation." In fact, city
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`traffic and reverse operation are normal conditions and are explicitly
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`provided for. In both, the vehicle typically operates as an electric car,
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`with the traction motor providing the torque necessary to propel the
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`vehicle, and with the ICE operated to charge the battery when it is
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`discharged. The "abnormal and transient conditions" referred to are
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`such conditions as starting the engine, during which operation it must
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`necessarily be operated at less than SP for a short time.
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`(’097 FH, Ex. 1210 at 238, emphasis added.)
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`23. Paice’s argument from the ‘097 File History does not make clear what
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`is not “abnormal and transient conditions.” The “abnormal and transient” claims
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`are not addressed in the remainder of the ‘097 File History, including the
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`Examiner’s Reasons for Allowance. (’097 FH, Ex. 1210 at 256-257.) Therefore it
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`is not clear that Paice’s argument from the ‘097 File History somehow limited the
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`scope, of “abnormal and transient conditions” to make clear that it does not
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`include ‘city traffic and reverse operation.’”
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`24. Alternatively, Paice’s argument seemingly attempts to broaden the
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`“abnormal and transient” limitations to include any engine start: “[t]he ‘abnormal
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`and transient conditions’ referred to are such conditions as starting the engine,
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`during which operation it must necessarily be operated at less than SP for a short
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`time.” (’097 FH, Ex. 1210 at 238.)
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`25. Nonetheless, I understand that the Board concluded that examples of
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`“abnormal and transient conditions” encompass “starting and stopping the engine,
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`in comparison to other disclosed conditions of operating the engine.” (Decision at
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`9.) And I used a similar interpretation of the term for my analysis in my first
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`declaration.
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`26. Therefore Severinsky ’970 disclosure of “operat[ing] the engine 40
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`outside its most fuel efficient operating range, on occasion . . . [because] it is
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`preferable to use the engine somewhat inefficiently rather than to discharge the
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`batteries excessively, which would substantially reduce the battery lifetime”
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`discloses the additional “abnormal and transient conditions” limitations of claims
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`7, 17, 17 and 37 (i.e., “operating the engine at torque output levels less than SP
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`under abnormal and transient conditions” under the Board’s determination that
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`such conditions encompass “starting and stopping the engine, in comparison to
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`other disclosed conditions of operating the engine.” (Severinsky ’970, Ex. 1205,
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`18:23-33; Stein Decl., Ex. 1202, ¶¶427-436; Decision at 9.)
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`III. Ground 1-2:
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`A.
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`Independent claims 1, 11, 21 and 30
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`1.
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`load
`Takaoka’s control strategy for reducing engine
`fluctuation is not referring to the mechanical design of an
`engine
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`27. Paice’s expert argues that Takaoka reduces engine load fluctuation by
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`the design of the engine, not a control system:
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`137. Second, in my opinion a person of skill in the art would read the
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`disclosures relied on by Ford and Dr. Stein in the larger context of the
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`reference, and conclude that the sentences are simply directed to
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`engine design, not a control system. In other words, a POSITA would
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`have understood that Takaoka disclosed reducing “engine load
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`fluctuation under conditions such as rapid acceleration” via the
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`physical design of the engine, which was made possible by
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`combining the underpowered engine with the electric motor. This is
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`not dissimilar to Anderson, which does not disclose a control system,
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`but rather, discloses using an engine with slow transients; Anderson is
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`able to use an underpowered engine because the electric motor
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`provides all torque to the wheels, and thus, vehicle performance is
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`ensured by the motor.
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`(Hn Decl., Ex. 2206, ¶137, emphasis added.)
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`28. Contrary to Paice’s statements, Takaoka discloses controlling the
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`motor and the engine to lower emissions levels:
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`Emissions levels much lower than the current standard values were
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`attained by optimum control of the motor and engine.
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`(Takaoka, Ex. 1206 at 8, emphasis added.)
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`29. Takaoka provides an example of such optimum control - Takaoka
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`discloses that the system controls the engine to reduce engine load fluctuation (i.e.,
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`limits the rate of increase of engine output torque) and the system allocates a
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`portion of the load to the electric motor:
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`(2) By allocating a portion of the load to the electric motor, the system
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`is able to reduce engine load fluctuation under conditions such as
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`rapid acceleration. This makes it possible to reduce quick transients in
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`engine load so that the air-fuel ratio can be stabilized easily.
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`(Takaoka, Ex. 1206 at 6, emphasis added; see also Stein Decl., Ex. 1202, ¶¶204-
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`219.)
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`30. A person of ordinary skill in the art would have understood that
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`Takaoka’s “optimum control” of the engine and the system “reduce[s] engine load
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`fluctuation” – teaches a control system for controlling the engine, not the design of
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`the inherent characteristics of the engine.
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`31. During his deposition, Mr. Hannemann testified that the mechanical
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`design of the engine both reduced engine load fluctuation and allocated load to the
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`motor:
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`Q. Now, could a person of ordinary skill in the art in reading this
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`section, refers to the system is able to reduce engine load fluctuation,
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`could a person of ordinary skill in the art interpret that as a control
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`strategy?
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`MR. LIVEDALEN: Objection, form.
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`A. In this context, I don't believe someone would -- would make that
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`interpretation.
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`Q. You said in -- in your opinion, a person of ordinary skill in the art
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`could not interpret that as a control strategy.
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`A. Yeah, I still agree that the system here's referring to, you know, the
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`engine and even the rest of the power train components but not to
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`control strategies.
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`Q. Okay.
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`A. So in this case the system is mechanical. It's the connection of the
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`mechanical system that makes that possible.
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`* * *
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`Q. In your opinion, does the system allocate the load between the
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`motor and the engine?
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`A. Well, it says the system is able to, so it has that ability, is how I
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`read that.
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`Q. But in your opinion, the system is the mechanical components
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`themselves, not control strategy implemented by a control.
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`A. That's correct.
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`(Hn Tr. 2, Ex. 1243 at 32:7-33:17.)
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`32. A person of ordinary skill in the art would have understood that a
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`control system uses a control strategy to reduce engine load fluctuation by, in part,
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`allocating the fluctuating commanded load to the motor and the slower transient
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`load requests to the engine. A person of ordinary skill in the art would have known
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`that a mechanical component alone (e.g., an engine) is not capable of such control.
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`a.
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`Paice characterized Takaoka as teaching a control
`strategy during the prosecution of the ’347 Patent
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`33. Paice characterized Takaoka during the prosecution of the ’347
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`Patent, the grandparent of the ’097 Patent. (’347 Patent file history, Ex. 1212 at
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`268; Stein Decl., Ex. 1202, ¶238.) Specifically, Paice characterized Takaoka’s
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`disclosure of “By allocating a portion of the load to the electric motor, the system
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`is able to reduce engine load fluctuation under conditions such as rapid
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`acceleration. This makes it possible t