Paper 26
`Entered: March 10, 2016
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01416
`Patent 7,237,634 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I. INTRODUCTION
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`Paice LLC and The Abell Foundation, Inc. (collectively, “Paice”) are
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`the owners of U.S. Patent No. 7,237,634 B2 (“the ’634 patent”). Ford Motor
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`Company (“Ford”) filed a Petition (“Pet.”) for inter partes review of the
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`’634 patent, challenging the patentability of claims 80, 93, 98, 99, 102, 109,
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`114, 127, 131, 132, 135, 139, 142, 161, 215, 228, 232, 233, and 235–237
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`under 35 U.S.C. § 103. In a preliminary proceeding, we instituted trial
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`because Ford demonstrated a reasonable likelihood that it would prevail in
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`proving unpatentability of the challenged claims. Once trial was instituted,
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`Paice filed a Patent Owner Response (“PO Resp.”), and Ford followed with
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`a Reply (“Reply”). The parties waived oral argument, choosing instead to
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`rely on arguments presented during a prior, consolidated hearing conducted
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`in several related proceedings, namely, IPR2014-000570, -00571, -00579,
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`-00875, -00884, and -00904.1 Pursuant to our jurisdiction under 35 U.S.C.
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`§ 6(c), we conclude that Ford has proven, by a preponderance of the
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`evidence, that the challenged claims are unpatentable.
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`A.
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`Related Cases
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`II. BACKGROUND
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`
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`The ’634 patent was previously the subject of a final written decision
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`in IPR2014-00904. That prior proceeding, however, involved different
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`claims and grounds than the instant proceeding. Specifically, the -00904
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`proceeding resulted in a final determination that claims 1, 14, 16, 18, and 24
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`of the ’634 patent are unpatentable under 35 U.S.C. § 103. 2015 WL
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`8536745 (PTAB Dec. 10, 2015). We granted institution of trial in the
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`1 Transcripts have been entered into the record in those earlier proceedings.
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`2
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`instant proceeding in March 2015, well before our final written decision in
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`the -00904 proceeding.
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`
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`The ’634 patent is also the subject of co-pending district court actions,
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`including Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md.), filed
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`Feb. 19, 2014, and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
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`(D. Md.), filed Feb. 16, 2012. Pet. 1–2; PO Resp. 3 (referencing the district
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`courts’ claim constructions).
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`B.
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`The ’634 Patent
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`
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`The ’634 patent describes a hybrid vehicle with an internal
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`combustion engine, an electric motor, and a battery bank, all controlled by a
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`microprocessor that controls the direction of torque transfer between the
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`engine, motor, and drive wheels of the vehicle. Ex. 1101, 17:17–56, Fig. 4.
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`The microprocessor monitors the vehicle’s instantaneous torque
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`requirements, also known as “road load (RL),” to determine whether the
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`engine, the electric motor, or both, will be used as a source to propel to
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`propel the vehicle. Id. at 11:63–65. Aptly, the ’634 patent describes the
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`vehicle’s various modes of operation in terms of an engine-only mode, an
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`all-electric mode, or a hybrid mode. Id. at 35:63–36:55, 37:24–38:8.
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`
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`As summarized in the ’634 patent, the microprocessor selects the
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`appropriate mode of operation “in response to evaluation of the road load,
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`that is, the vehicle’s instantaneous torque demands and input commands
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`provided by the operator of the vehicle.”2 Id. at 17:40–45. “[T]he
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`microprocessor can effectively determine the road load by monitoring the
`
`
`2 The ’634 patent contrasts the claimed invention to prior control strategies
`“based solely on speed,” which are “incapable of responding to the
`operator’s commands, and will ultimately be unsatisfactory.” Ex. 1101,
`13:39–42.
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`3
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`response of the vehicle to the operator’s command for more power.” Id. at
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`37:42–49. “[T]he torque required to propel the vehicle [i.e., road load]
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`varies as indicated by the operator’s commands.” Id. at 38:9–11. For
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`example, the microprocessor “monitors the rate at which the operator
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`depresses pedals [for acceleration and braking] as well as the degree to
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`which [the pedals] are depressed.” Id. at 27:26–38. These operator input
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`commands are provided to the microprocessor “as an indication that an
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`amount of torque” from the engine “will shortly be required.” Id. at 27:41–
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`57.
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`
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`The microprocessor then compares the vehicle’s torque requirements
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`against a predefined “setpoint (SP)” and uses the results of the comparison
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`to determine the vehicle’s mode of operation. Id. at 40:16–49. The
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`microprocessor utilizes a hybrid control strategy that runs the engine only in
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`a range of high fuel efficiency, such as when the torque required to drive the
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`vehicle, or road load (RL), reaches a setpoint (SP) of approximately 30% of
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`the engine’s maximum torque output (MTO). Id. at 20:61–67, 37:24–44; see
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`also id. at 13:64–65 (“the engine is never operated at less than 30% of MTO,
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`and is thus never operated inefficiently”). Other operating parameters may
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`also play a role in the microprocessor’s choice of the vehicle’s mode of
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`operation, such as the battery’s state of charge and the operator’s driving
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`history over time. Id. at 19:63–20:3; see also id. at 37:20–23 (“according to
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`one aspect of the invention, the microprocessor 48 controls the vehicle’s
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`mode of operation at any given time in dependence on ‘recent history,’ as
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`well as on the instantaneous road load and battery charge state”). According
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`to the ’634 patent, a microprocessor control strategy that operates the engine
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`in a range above the setpoint (SP), but substantially less than the maximum
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`4
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`torque output (MTO), maximizes fuel efficiency and reduces pollutant
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`emissions of the hybrid vehicle. Id. at 15:55–58.
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`B.
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`The Challenged Claims
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`Of the challenged claims, claims 80, 114, 161, and 215 are
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`independent. Claim 161 is illustrative:
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`161. A method for controlling a hybrid vehicle,
`comprising:
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`
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`determining instantaneous road load (RL) required to
`propel the hybrid vehicle responsive to an operator command;
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`
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`wherein the hybrid vehicle is operated in a plurality of
`operating modes corresponding to values for the RL and a
`setpoint (SP);
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`
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`operating at least one first electric motor to propel the
`hybrid vehicle when the RL required to do so is less than the
`SP;
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`wherein said operating the at least one first electric motor
`to drive the hybrid vehicle composes a low-load
`operation mode I;
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`
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`operating an internal combustion engine of the hybrid
`vehicle to propel the hybrid vehicle when the RL required to do
`so is between the SP and a maximum torque output (MTO) of
`the engine, wherein the engine is operable to efficiently
`produce torque above the SP, and wherein the SP is
`substantially less than the MTO;
`wherein said operating the internal combustion engine of
`the hybrid vehicle to propel the hybrid vehicle composes
`a high-way cruising operation mode IV;
`
`
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`operating both the at least one first electric motor and
`the engine to propel the hybrid vehicle when the torque RL
`required to do so is more than the MTO;
`wherein said operating both the at least one first electric
`motor and the engine to propel the hybrid vehicle
`composes an acceleration operation mode V;
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`
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`5
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`receiving operator input specifying a change in required
`torque to be applied to wheels of the hybrid vehicle; and
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`
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`if the received operator input specifies a rapid increase in
`the required torque, changing operation from operating mode I
`directly to operating mode V.
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`
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`Ex. 1101, 73:41–74:9 (emphases added).
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`C.
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`The Instituted Grounds
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`In the preliminary proceeding, we instituted trial because Ford made a
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`threshold showing of a “reasonable likelihood” that:
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`(1) claims 161, 215, 228, 232, 233, 237 are either
`anticipated by, or would have been obvious over, Severinsky3;
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`
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`(2) claims 80, 93, 98, 99, 102, 109, 114, 127, 131, 132,
`135, 139, 142 would have been obvious over Severinsky and
`Frank4; and
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`
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`(3) claims 215, 228, 233, 235, 236 would have been
`obvious over Tabata.5
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`
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`Dec. to Inst. 10–11. We now decide whether Ford has proven the
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`unpatentability of these same claims by a “preponderance of the evidence.”
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`35 U.S.C. § 316(e).
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`A.
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`Claim Construction
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`III. ANALYSIS
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`
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b). Here, Ford proposes a
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`construction for several claim terms, including “road load,” “setpoint,”
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`“low-load mode I,” “highway cruising mode IV,” and “acceleration mode
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`3 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1103, “Severinsky”).
`4 U.S. Patent No. 5,824,534, iss. Dec. 1, 1998 (Ex. 1104, “Frank”).
`5 U.S. Patent No. 5,841,201, iss. Nov. 24, 1998 (Ex. 1105, “Tabata”).
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`6
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`V.” Pet. 11–15. Our review centers on the construction of two claim
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`terms—“road load (RL)” and “setpoint (SP).”6
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`1.
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`“Road load” or “RL”
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`
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`The term “road load” or “RL” appears in each of the independent
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`claims at issue here. Ford proposes that “road load” means the instantaneous
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`torque required for propulsion of the vehicle. Pet. 11–12. Paice agrees with
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`that construction. PO Resp. 10; Ex. 1148, 39:14–17. And, the parties’
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`proposed construction appears to comport with the specification, which
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`defines “road load” as “the vehicle’s instantaneous torque demands, i.e., that
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`amount of torque required to propel the vehicle at a desired speed.” Ex.
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`1101, 12:44–46. In further defining “road load,” the specification notes that:
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`the operator’s depressing the accelerator pedal signifies an
`increase in desired speed, i.e., an increase in road load, while
`reducing the pressure on the accelerator or depressing the brake
`pedal signifies a desired reduction in vehicle speed, indicating
`that the torque being supplied is to be reduced or should be
`negative.
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`
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`Id. at 12:50–61 (emphases added). As such, the specification states that road
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`load “can be positive or negative.” Id. at 12:55–58. Thus, consistent with
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`the specification, we construe “road load” or “RL” as “the amount of
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`instantaneous torque required to propel the vehicle, be it positive or
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`negative.”
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`6 Ford also proposes a construction for the terms “low-load mode I,”
`“highway cruising mode IV,” and “acceleration mode V.” Pet. 14. Paice is
`silent on any construction for these terms. We determine that, for purposes
`of our review, no further construction is necessary aside from the way those
`terms are defined in claims 99, 133, 161, and 233.
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`7
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`2.
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`“Setpoint” or “SP”
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`
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`The term “setpoint” or “SP” is found in each of the independent
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`claims at issue. Ford proposes that “setpoint” be construed, in the context of
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`the claims, as a “predetermined torque value.” Pet. 13–14. In that regard,
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`Ford correctly notes that the claims compare the setpoint against “a torque-
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`based road load value.” Id. at 13. For example, each of the challenged
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`independent claims speak of the “setpoint” or “SP” as being the lower limit
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`at which the engine can produce torque efficiently, i.e., operating the engine
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`to propel the hybrid vehicle “when the RL required to do so is between the
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`SP and a maximum torque output (MTO) of the engine, wherein the engine
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`is operable to efficiently produce torque above the SP.”7 This express
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`language suggests that “setpoint” is not just any value, but a value that—per
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`the surrounding claim language—equates to “torque.” See Phillips v. AWH
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`Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he claims
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`themselves provide substantial guidance as to the meaning of particular
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`claim terms . . . [T]he context in which a term is used in the asserted claim
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`can be highly instructive”).
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`
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`Paice, on the other hand, argues that “setpoint” is synonymous with a
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`“transition” point, not a torque value. PO Resp. 3–6. Citing the
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`specification, Paice urges that “setpoint” must be construed to indicate a
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`point “at which a transition between operating modes may occur.” Id. at 3,
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`6. Paice’s argument is misplaced. While Paice is correct that sometimes the
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`specification describes the setpoint in terms of a “transition point” (see id. at
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`7 Paice’s declarant, Mr. Neil Hannemann, similarly testified that under the
`“most straightforward” approach for the claimed “comparison,” the “setpoint
`is a torque value.” Ex. 1149, 79:16–80:25.
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`8
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`4–5), the claim language itself makes clear that setpoint relates simply to a
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`torque value, without requiring that it be a transition point. Indeed, the
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`specification acknowledges that the mode of operation does not always
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`transition, or switch, at the setpoint, but instead depends on a number of
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`parameters. For instance,
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`the values of the sensed parameters in response to which the
`operating mode is selected may vary . . . , so that the operating
`mode is not repetitively switched simply because one of the
`sensed parameters fluctuates around a defined setpoint.
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`
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`Ex. 1101, 19:67–20:6 (emphasis added). That disclosure suggests that a
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`transition does not spring simply from the recitation of “setpoint.” Thus, we
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`will not import into the meaning of “setpoint” an extraneous limitation that
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`is supported by neither the claim language nor the specification. As such,
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`we reject Paice’s attempt to further limit the meaning of setpoint to a
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`transition between operating modes.
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`
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`We also regard as meaningful that nothing in the specification
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`precludes a setpoint from being reset, after it has been set. The specification
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`states that the value of a setpoint may be “reset . . . in response to a repetitive
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`driving pattern.” Ex. 1101, 40:50– 64. But, just because a setpoint may be
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`reset under certain circumstances does not foreclose it from being “set,” or
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`“fixed,” at some point in time.8 A setpoint for however short a period of
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`time still is a setpoint. Thus, we construe “setpoint” as a “predetermined
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`torque value that may or may not be reset.”
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`8 The definition of “set” is “determined . . . premeditated . . . fixed . . .
`prescribed, specified . . . built-in . . . settled.” Merriam-Webster’s Collegiate
`Dictionary (10th ed. 2000).
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`9
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`Finally, Paice argues that any construction limiting the meaning of
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`setpoint to a “torque value” would be “directly at odds with the construction
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`adopted by two district courts” in related litigation.9 PO Resp. 3. Although,
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`generally, we construe claim terms under a different standard than a district
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`court, and thus, are not bound by a district court’s prior construction, Paice’s
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`emphasis on the district court’s construction compels us to address it. See
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`Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1327 (Fed. Cir. 2015)
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`(“Given that [patent owner’s] principal argument to the board . . . was
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`expressly tied to the district court’s claim construction, we think that the
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`board had an obligation, in these circumstances, to evaluate that
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`construction”).
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`In that regard, the district court held:
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`there is nothing in the claims or specification that indicate a
`given setpoint value is actually represented in terms of torque.
`In fact, the specification clearly indicates that the state of
`charge of the battery bank, ‘expressed as a percentage of its full
`charge’ is compared against setpoints, the result of the
`comparison being used to control the mode of the vehicle.
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`
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`Ex. 1113, 13, 21. But, as discussed above, although claims are read in light
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`of the specification, it is the use of the term “setpoint” within the context of
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`the claims themselves that provides a firm basis for our construction. See
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`Phillips, supra. Here, the claims instruct us that “setpoint,” when read in the
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`context of the surrounding language, is limited to a torque value. As for the
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`district court’s statement that the battery’s state of the charge is compared to
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`9 Paice LLC v. Toyota Motor Corp., No. 2:07-cv-00180, 2008 WL 6822398
`(E.D. Tex. Dec. 5, 2008); Paice LLC v. Hyundai Motor Co., No. 1:12-cv-
`00499, 2014 WL 3725652 (D. Md. July 24, 2014).
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`a setpoint, we note that the claims actually speak of comparing the “state of
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`charge of the battery” to “a predetermined level,” not a “setpoint” or “SP” as
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`found elsewhere in the claims. See, e.g., Ex. 1101, 67:36–38 (dependent
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`claim 101), 70:54–56 (dependent claim 134). Thus, in the context of the
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`claims, we decline to read “setpoint” as also encompassing a state of charge
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`of the battery, as the district court did. Instead, we construe “setpoint” as
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`representing a torque-based value.
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`B.
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`Ground 1—Anticipation by, and Obviousness Over, Severinsky
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`1.
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`Independent Claims 161 and 215
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`
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`Ford challenges independent claims 161 and 215 on the ground that
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`the claimed invention is anticipated by Severinsky.10 Pet. 16–27, 36–39;
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`Reply 10–15. To the extent that Severinsky does not anticipate the
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`challenged claims, Ford argues that the claimed invention would have been
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`obvious in view of the teachings of Severinsky and the knowledge of skilled
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`artisans in the relevant time frame. Id. at 16.
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`Claims 161 and 215 are directed to a “method for controlling a hybrid
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`vehicle.” The claims recite various “operating modes” for the vehicle, in
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`which either an “electric motor,” or an “internal combustion engine,” or
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`“both,” are selected to propel the vehicle. Ex. 1101, 73:41–67, 79:10–27.
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`Claim 161 describes these three modes as a “low-load” mode, a “high-way
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`cruising” mode, and an “acceleration” mode, respectively. Id. at 73:49–
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`74:3. Claim 215 adds a battery “charging” mode to the mix. Id. at 79:28–
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`31.
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`At the outset, we find that, like claims 161 and 215, Severinsky
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`discloses the basic components of a hybrid vehicle, including (1) an internal
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`10 Paice does not dispute that Severinsky is prior art against the ’634 patent.
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`combustion engine that provides propulsive torque to the wheels of the
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`vehicle, (2) an electric motor that also is capable of providing propulsive
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`torque to the wheels, and (3) a “battery” that provides electrical current to
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`the motor. Compare Ex. 1003, Fig. 3 (Severinsky) with Ex. 1101, Fig. 4
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`(the ’634 patent). More significantly, Severinsky discloses “controlling the
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`relative contributions of the internal combustion engine and electric motor”
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`so that the hybrid vehicle “may be operated in a variety of operating modes
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`selected dependent on desired vehicle performance.” Ex. 1103, 22:19–39
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`(emphasis added). Those modes, according to Severinsky, include:
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`“a low speed/reversing mode, wherein all energy is supplied by
`said battery and all torque by said electric motor”;
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`
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`“a high speed/cruising mode, wherein all energy is supplied by
`combustible fuel and all torque by said engine”; and
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`
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`“an acceleration/hill climbing mode, wherein energy is supplied
`by both combustible fuel and said battery, and torque by both
`said engine and said motor.”
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`
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`Ex. 1103, 22:39–50; see also id. at 10:24–11:6 (describing each mode in
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`greater detail). We find that those disclosures in Severinsky meet the
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`general configuration of the operating modes required by claims 161 and
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`215.
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`Claims 161 and 215 also require operating the engine when the torque
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`required to propel the vehicle reaches a “setpoint” or “SP” so that the engine
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`produces torque “efficiently.” Ex. 1101, 73:55–60 (claim 161), 79:18–24
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`(claim 215). Severinsky discloses that the engine is operated only when it is
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`“efficient” to do so, and if not, the motor is used:
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`the internal combustion engine is operated only under the most
`efficient conditions of output power[11] 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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`
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`Ex. 1103, 7:8–16 (emphasis added); see also id. at 9:40–52 (“the internal
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`combustion engine operates only in its most efficient operating range”).
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`Paice does not appear to dispute that Severinsky teaches operating the
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`engine when it is efficient to do so. PO Resp. 8 (“Severinsky and the ’634
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`patent may have the same goal (efficient engine operation)”). Thus, we find
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`that Severinsky, like the claims, discloses operating the engine when it can
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`produce torque efficiently.
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`With respect to the claimed “setpoint” for achieving such efficiency,
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`Severinsky teaches that the microprocessor runs the engine “only in the near
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`vicinity of its most efficient operational point, that is, such that it produces
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`60–90% of its maximum torque whenever operated.” Id. at 20:63–66
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`(emphasis added). Ford’s declarant, Dr. Gregory Davis, testifies that a
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`skilled artisan would have understood the lower limit of Severinsky’s range,
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`i.e., 60% of maximum torque, to be a “setpoint” for efficient operation of the
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`engine. Ex. 1107 ¶ 208. Dr. Davis further testifies that Severinsky’s lower
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`limit of 60% is “substantially less than the MTO” of the engine, thereby
`
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`11 Paice’s declarant, Mr. Hannemann, testified that a skilled artisan would
`have understood that “power is a product of torque and speed.” Ex. 1149,
`31:6–13 (emphasis added); see also Ex. 2104 ¶ 36 (“For every engine speed,
`there is an associated torque value. Another way of defining an engine’s
`operating range would be by its output power, which is the engine’s speed
`multiplied by the output torque”) (emphases added).
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`meeting the language of claims 161 and 215. Id. ¶¶ 231–232. Crediting the
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`testimony of Dr. Davis, we are persuaded that Severinsky discloses, or at the
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`very least suggests, the “setpoint” limitations of claims 161 and 215. See id.
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`¶¶ 183–212, 223–232, 323–326.
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`Faced with the explicit teachings of Severinsky, Paice raises a number
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`of arguments, none of which we find persuasive. See PO Resp. 7–16, 49–
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`50. First, Paice argues repeatedly that Severinsky fails to teach the claimed
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`setpoint because Severinsky determines when to turn the engine on “based
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`on the speed of the vehicle,” and “not road load” as required by the claims.
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`Id. at 7, 17, 25–38, 45. Although Paice acknowledges that “Severinsky
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`clearly teaches ‘mode switching’,” it nonetheless maintains that Severinsky
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`“only discloses speed and not load as the control metric.” Id. at 19
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`(emphasis added).
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`
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`Paice would have us believe that “speed” is the sole factor used by
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`Severinsky in determining when to employ the engine. That is not the case.
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`Severinsky makes clear that the controller uses the “load” requirements of
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`the vehicle in determining when to run the engine. Importantly, Severinsky
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`discloses that
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`at all times the microprocessor 48 may determine the load (if
`any) to be provided to the engine by the motor, responsive to
`the load imposed by the vehicle’s propulsion requirements, so
`that the engine 40 can be operated in its most fuel efficient
`operating range.
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`
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`Ex. 1103, 17:11–15 (emphases added). We are not persuaded by Paice’s
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`focus on Severinsky’s disclosure of “speed,” when Severinsky plainly
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`teaches using “load” for determining the engine’s “most fuel efficient
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`operating range.” It is the totality of Severinsky that must be assessed, not
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`its individual parts.
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`
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`Although it may not use the term “road load” per se, Severinsky
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`describes operation of the engine in terms similar to our construction of
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`“road load,” and uses language much like the claims. For example, just as
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`claims 161 and 215 describe the engine as being operated in response to
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`“instantaneous road load (RL) required to propel the hybrid vehicle,” so too
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`does Severinsky describe operating the engine in response to “the load
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`imposed by the vehicle’s propulsion requirements.” Id. The similarity of
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`those descriptions provides ample support for finding that Severinsky
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`teaches an engine control strategy that depends on the load, or torque,
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`required to propel the vehicle, as called for by the claims.
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`
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`Moreover, Severinsky teaches elsewhere that efficient operation of the
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`engine is based on torque, not speed. In particular, Severinsky specifies that
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`the microprocessor runs the engine at an “operational point” at which “it
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`produces 60–90% of its maximum torque.” Id. at 20:63–67 (emphasis
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`added). That disclosure by Severinsky is no different than the way in which
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`the ’634 patent claims the “setpoint.” For instance, claim 232, which
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`depends from claim 215, recites that the setpoint is “approximately 30% of
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`the MTO” of the engine. Ex. 1101, 80:62–63. Just as the claimed setpoint is
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`expressed in terms of a percentage of maximum torque, so too is
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`Severinsky’s “operational point,” which is described as “60–90% of its
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`maximum torque.” That Severinsky describes the engine’s operational point
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`in terms similar to, if not the same as, the claimed setpoint, i.e., a percentage
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`of maximum torque, runs counter to Paice’s argument that Severinsky
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`employs the engine based on speed alone.
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`Paice cites a number of passages in Severinsky that purportedly
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`evince a control strategy that is based on speed, as opposed to torque or load.
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`PO Resp. 7, 21, 45. We do not find the cited passages supportive of Paice’s
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`argument. For example, Paice accuses Ford of “glossing over” Severinsky’s
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`disclosure of turning the engine off during “low speed” or “traffic”
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`situations, and turning it on during “moderate speed” or “highway cruising”
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`situations. Id. at 7–8. Those disclosures, however, do not foreclose
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`Severinsky from teaching that “load” or “torque” requirements are a
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`determinative factor of when to employ the engine. In other words, torque
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`and speed are not mutually exclusive concepts.12 Indeed, the ’634 patent
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`itself speaks of “speed” when describing the vehicle’s various operating
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`modes, stating that “the traction motor provides torque to propel the vehicle
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`in low-speed situations” and “[d]uring substantially steady-state operation,
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`e.g., during highway cruising, the control system operates the engine.” Ex.
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`1101, 17:47–48, 19:45–46, respectively (emphasis added). Thus, just as
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`“speed” plays a role in the control strategy of the ’634 patent, so too does it
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`in Severinsky.
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`
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`Paice also points to Severinsky’s disclosure of “speed-responsive
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`hysteresis” and argues repeatedly that it depicts a control strategy “based on
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`speed, not road load.” PO Resp. 7, 17–19, 22, 25. According to Paice, “[i]t
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`simply makes no sense for Severinsky to use ‘speed responsive-hysteresis’ if
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`Severinsky uses road load to control engine starts and stops.” Id. at 25. But
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`Severinsky only discusses the hysteresis feature as “speed-responsive”
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`because it is used to avoid cycling the engine on and off in “low-speed”
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`situations where engine speed dips to “20-25 mph” while in a highway
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`12 See supra n.11.
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`mode. Ex. 1103, 18:23–42. That discussion of low-speed hysteresis is
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`essentially the same as the description of hysteresis in the ’634 patent, which
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`discloses that “excessive mode switching otherwise likely to be encountered
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`in suburban traffic can be largely avoided [by] implementing this ‘low-speed
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`hysteresis’.” Ex. 1101, 43:67–44:3. In any event, that Severinsky may teach
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`an additional hysteresis feature as a way of controlling unintended engine
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`starts during temporary dips in speed does not preclude Severinsky from also
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`teaching the use of a torque value, or road load, as a way to determine when
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`to employ the engine in the first instance. We find persuasive the testimony
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`of Ford’s declarant, Dr. Davis, confirming that “[e]ven if Severinsky ’970
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`was considering speed in this particular situation [of nuisance engine starts],
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`it is generally, if not always, using torque/road load in its mode decisions.”
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`Ex. 1147 ¶ 20.
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`
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`Generally speaking, Paice is attempting to hold Severinsky to a
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`different standard than it holds the claimed invention. That Severinsky may
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`discuss “speed” as one of the parameters used by the microprocessor does
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`not negate its overall, and express, teaching of employing the engine
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`“responsive to the load imposed by the vehicle’s propulsion requirements,”
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`or road load, “so that the engine [] can be operated in its most fuel efficient
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`operating range.” Ex. 1103, 17:11–15. Thus, we reject Paice’s arguments
`
`that criticize Severinsky’s references to “speed,” when the ’634 patent itself
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`recognizes that “speed” plays a role in a road load-responsive hybrid control
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`strategy.13
`
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`13 Even claims 12 and 300 of the ’634 patent acknowledge that “the
`controller is operable to vary the SP as a function of speed of the engine.”
`Ex. 1101, 59:3–5, 89:51–52 (emphasis added).
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`Paice also faults Severinsky for disclosing that “the microprocessor
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`receives inputs from the driver.” PO Resp. 26 n.8. But, once again, Paice
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`fails to recognize that the claims at issue expressly call for receiving inputs
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`from the driver as part of the engine control strategy. For instance, claim
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`161 recites: “receiving operator input specifying a change in required torque
`
`to be applied to the wheels of the hybrid vehicle.” Ex. 1101, 74:4–5. The
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`’634 patent explains that the “operator input” includes the position of the
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`accelerator and brake pedals, which is then used “to properly control
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`operation of the vehicle.” Id. at 27:26–46. Severinsky discloses the same
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`type of input: “a controller adapted to receive input commands from a driver
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`. . . to control operation of said controllable torque transfer unit.” Ex. 1103,
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`24:60–63. Given that claim 161 requires operator input (such as pedal
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`position) as part of the claimed method, we are not persuaded by Paice’s
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`attack on Severinsky for teaching a control strategy that relies on the same
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`input.
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`
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`In the end, we are not persuaded by Paice’s arguments that Severinsky
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`does not anticipate, or render obvious, the claimed “setpoint.” PO Resp. 7–
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`38, 44–50. Rather, we credit the testimony of Ford’s declarant, Dr. Davis,
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`that a skilled artisan would have understood the lower limit of Severinsky’s
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`range—60% of MTO—to be a predetermined setpoint that is based on
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`torque. See Ex. 1107 ¶¶ 203–212. Thus, we find that Severinsky fulfills the
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`claimed criteria of comparing the torque required to propel