`571-272-7822
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` Paper 30
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`Entered: October 25, 2016
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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 IPR2015-00792
`Patent 8,214,097 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
`Paice LLC & The Abell Foundation, Inc. (collectively, “Paice”) are
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`the owners of U.S. Patent No. 8,214,097 B2 (“the ’097 patent”). Ford Motor
`Company (“Ford”) filed a Petition for inter partes review of the ’097 patent,
`challenging the patentability of claims 1, 3, 4, 7, 9, 11, 13, 14, 17, 19, 21, 23,
`24, 27, 28, 30, 32, 33, 37, and 38 under 35 U.S.C. § 103. Paper 2 (“Pet.”).
`In a preliminary proceeding, we instituted an inter partes review because
`Ford made a threshold showing of a “reasonable likelihood” that the
`challenged claims are unpatentable under 35 U.S.C. § 314. Paper 13
`(“Dec.”).
`Subsequent to institution, Paice filed a Patent Owner Response (Paper
`16, “PO Resp.”), and Ford followed with a Reply (Paper 18, “Reply”).1 An
`oral hearing was held on June 28, 2016, and a transcript of the hearing is
`included in the record. Paper 29 (“Tr.”). After reviewing the evidence and
`arguments of the parties, and pursuant to our jurisdiction under 35 U.S.C.
`§ 6, we conclude, first, that Ford is estopped from maintaining its challenge
`in this proceeding against claims 1, 3, 4, 9, 11, 13, 14, 19, 21, 23, 24, 28, 30,
`32, and 33, and, second, that Ford has proven, by a preponderance of the
`evidence, that remaining claims 7, 17, 27, 37, and 38 are unpatentable.
`II. BACKGROUND
`
`Related Cases
`A.
`This is not the first time Ford has presented the ’097 patent for inter
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`partes review. A number of claims of the ’097 patent were adjudicated
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`1 In addition, Paice filed a Motion for Observation on Cross-Examination
`(Paper 22) and Ford filed a Response to Motion for Observation on Cross-
`Examination (Paper 25), both of which have been considered.
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`previously in IPR2014-00570 and IPR2014-01415, only on different
`grounds.2 Specifically, the -570 proceeding led to final written decision of
`unpatentability for claims 30, 32, and 33 at issue here (2015 WL 5782083
`(PTAB Sep. 28, 2015)), and the -1415 proceeding led to a final written
`decision of unpatentability for claims 1, 3, 4, 7, 9, 11, 13, 14, 19, 21, 23, 24,
`28, and 30 (2016 WL 932941) (PTAB Mar. 10, 2016)). The -570 and -1415
`decisions are currently on appeal at the U.S. Court of Appeals for the
`Federal Circuit.
`
`The ’097 patent is also the subject of co-pending district court actions,
`including Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md.), filed
`Feb. 19, 2014, and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
`(D. Md.), filed Feb. 16, 2012. Pet. 2.
`B.
`The ’097 Patent
`
`The ’097 patent describes a hybrid vehicle with an internal
`combustion engine, an electric motor, and a battery bank, all controlled by a
`microprocessor that controls the direction of torque transfer between the
`engine, the motor, and the drive wheels of the vehicle. Ex. 1201, 16:61–
`17:5, Fig. 4. The microprocessor monitors the vehicle’s instantaneous
`torque requirements, also known as “road load (RL),” to determine whether
`to operate the engine, the electric motor, or both, to propel the vehicle. Id. at
`11:50–52. The vehicle’s various modes of operation include an engine-only
`mode, an all-electric mode, or a hybrid mode. Id. at 35:14–36:4, 36:39–
`37:22.
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`2 The earlier -570 and -1415 proceedings each included a number of claims
`from the ’097 patent not at issue here.
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`3
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`As summarized in the ’097 patent, the microprocessor selects the
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`appropriate mode of operation “in response to evaluation of the road load,
`that is, the vehicle’s instantaneous torque demands and input commands
`provided by the operator of the vehicle.”3 Id. at 17:16–22. “[T]he
`microprocessor can effectively determine the road load by monitoring the
`response of the vehicle to the operator’s command for more power.” Id. at
`36:57–64. “[T]he torque required to propel the vehicle [i.e., road load]
`varies as indicated by the operator’s commands.” Id. at 37:23–25. For
`example, the microprocessor “monitors the rate at which the operator
`depresses [accelerator and brake] pedals . . . as well as the degree to which
`[the] pedals . . . are depressed.” Id. at 27:1–4. The microprocessor uses this
`information “as an indication that an amount of torque that can efficiently be
`provided by the engine . . . will shortly be required.” Id. at 27:6–22.
`The microprocessor then compares the vehicle’s torque requirements
`against a predefined “setpoint (SP)” to determine whether to employ the
`engine. Id. at 36:39–37:21, 39:27–59. The microprocessor runs the engine
`only in a range of high fuel efficiency, such as when the vehicle’s torque
`requirements, or road load (RL), reaches a setpoint (SP) of approximately
`30% of the engine’s maximum torque output (MTO). Id. at 20:37–45,
`36:39–59; see also id. at 13:48–50 (“the engine is never operated at less than
`30% of MTO, and is thus never operated inefficiently”). The
`microprocessor also limits the rate of increase of the engine’s torque output
`so that combustion of fuel occurs at a near stoichiometric air-fuel ratio. See,
`
`3 The ’097 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. 1201,
`13:24–28.
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`e.g., id. at 27:31–35, 29:63–30:12, 37:2–6, 38:62–39:14. These control
`strategies have the effect of maximizing fuel efficiency and reducing carbon
`emissions of the vehicle. Id. at 15:38–41.
`
`C.
`The Challenged Claims
`
`
`Of the challenged claims, four are independent—claims 1, 11, 21, and
`30. Claims 1, 11, and 21 relate to a method for controlling a hybrid vehicle,
`while claim 30 relates to the hybrid vehicle itself. Claim 1 is illustrative:
`1.
`A method for controlling a hybrid vehicle, said
`vehicle comprising a battery, a controller, wheels, an internal
`combustion engine and at least one electric motor, wherein both
`the internal combustion engine and motor are capable of
`providing torque to the wheels of said vehicle, and wherein said
`engine has an inherent maximum rate of increase of output
`torque, said method comprising the steps of:
`operating the internal combustion engine of the hybrid
`vehicle to provide torque to operate the vehicle;
`operating said at least one electric motor to provide
`additional torque when the amount of torque provided by said
`engine is less than the amount of torque required to operate the
`vehicle; and
`employing said controller to control the engine such that
`a rate of increase of output torque of the engine is limited to
`less than said inherent maximum rate of increase of output
`torque, and wherein said step of controlling the engine such that
`the rate of increase of output torque of the engine is limited is
`performed such that combustion of fuel within the engine
`occurs at a substantially stoichiometric ratio; and comprising
`the further steps of:
`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, wherein the
`engine is operable to efficiently produce torque above SP, and
`wherein SP is substantially less than MTO;
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`operating both the at least one electric motor and the
`engine to provide torque to the hybrid vehicle when the torque
`required to operate the hybrid vehicle is more than MTO; and
`operating the at least one electric motor to provide torque
`to the hybrid vehicle when the torque required to operate the
`hybrid vehicle is less than SP.
`Ex. 1201, 56:47–57:14 (emphases added).
`
`Independent claims 11 and 21 are similar in scope to claim 1, except
`claim 21 uses the term “RL” in place of the phrase “the amount of torque
`required to operate the vehicle” found in claims 1 and 11. Claim 21 also
`recites the steps of “determining instantaneous road load (RL) required to
`propel the vehicle” and “operating the engine to charge the battery
`responsive to the state of charge of the battery.” Finally, although claim 30
`is directed to the components of a hybrid vehicle, the limitations pertaining
`to the “controller” are similar in scope to those of claims 1, 11, and 21.
`D.
`The Instituted Grounds
`
`In a preliminary proceeding, we instituted trial because Ford made a
`threshold showing of a “reasonable likelihood” under 35 U.S.C. § 314(a)
`that claims 1, 7, 9, 11, 17, 19, 21, 27, 28, 30, 37, and 38 are unpatentable as
`obvious over Severinsky4 and Takaoka,5 and that claims 3, 4, 13, 14, 23, 24,
`32, and 33 are unpatentable as obvious over Severinsky, Takaoka, and
`Yamaguchi.6 Dec. 14, 16.
`We now decide, first, whether Ford is estopped under 35 U.S.C.
`§ 315(e)(1) from maintaining its challenge against claims 1, 3, 4, 9, 11, 13,
`
`4 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1205, “Severinsky”).
`5 T. Takaoka et al., A High-Expansion Ratio Gasoline Engine for the Toyota
`Hybrid System, TOYOTA TECHNICAL REVIEW, vol. 47, no. 2 (Apr. 1998) (Ex.
`1206, “Takaoka”).
`6 U.S. Patent No. 5,865,263, iss. Feb. 2, 1999 (Ex. 1209, “Yamaguchi”).
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`14, 19, 21, 23, 24, 28, 30, 32, and 33 because they are the subject of prior
`final written decisions, and second, whether Ford has proven the
`unpatentability of any remaining claims by a “preponderance of the
`evidence” under 35 U.S.C. § 316(e).
`III. ANALYSIS
`
`A.
`
`Petitioner Estoppel
`As discussed above, in two previous final written decisions on the
`’097 patent, we determined that claims 1, 3, 4, 9, 11, 13, 14, 19, 21, 23, 24,
`28, 30, 32, and 33 are unpatentable. Given those final written decisions,
`Paice argues that, pursuant to 35 U.S.C. § 315(e)(1), Ford is estopped from
`maintaining the instant challenge against any claims previously found
`unpatentable. PO Resp. 15–16. Ford responds that estoppel should not
`attach to claims 7, 17, 27, and 37 because they were not challenged
`previously. Reply 6–7. And, although claim 38 was challenged previously,
`Ford points out that it was denied institution. Id.
`Under 35 U.S.C. § 315(e)(1), a petitioner who has obtained a final
`written decision on a patent claim in an inter partes review may not maintain
`a subsequent proceeding with respect to that same claim on a ground that it
`“reasonably could have raised” in the original proceeding. Specifically,
`section 315(e)(1) provides:
`(e) Estoppel.—
`(1) Proceedings before the office.—The petitioner in an
`inter partes review of a claim in a patent under this chapter that
`results in a final written decision under section 318(a) . . . may
`not request or maintain a proceeding before the Office with
`respect to that claim on any ground that the petitioner raised or
`reasonably could have raised during that inter partes review.
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`As mentioned above, on September 15, 2015, a final written decision
`was entered in IPR2015-00570, in which we deemed claims 30, 32, and 33
`to be unpatentable. Later, on March 10, 2016, a final written decision was
`entered in IPR2015-01415, in which we deemed claims 1, 3, 4, 7, 9, 11, 13,
`14, 19, 21, 23, 24, 28, and 30 unpatentable. Ford was the petitioner in those
`proceedings, as it is in this proceeding. Although the grounds raised by Ford
`in the -570 and -1415 proceedings against claims 1, 3, 4, 9, 11, 13, 14, 19,
`21, 23, 24, 28, 30, 32, and 33 were not the same as the grounds raised
`against those claims in this proceeding, the prior art references asserted in
`those prior proceedings include the identical references asserted in this
`proceeding, i.e., Severinsky, Takaoka, and Yamaguchi.
`Ford makes no argument as to why it reasonably could not have raised
`the grounds based on Severinsky, Takaoka, and Yamaguchi, as asserted
`here, in its earlier challenges against claims 1, 3, 4, 9, 11, 13, 14, 19, 21, 23,
`24, 28, 30, 32, and 33. See Reply 6–7. Indeed, with respect to claims 4, 14,
`24, and 30, Ford did raise the identical ground asserted here in the -1415
`proceeding. Thus, at a minimum, we determine that Ford reasonably could
`have raised the grounds based on Severinsky, Takaoka, and Yamaguchi
`against any of the claims under challenge in the -1415 proceeding.
`Accordingly, Petitioner is now estopped under 35 U.S.C. § 315(e)(1) from
`maintaining its challenge against claims 1, 3, 4, 9, 11, 13, 14, 19, 21, 23, 24,
`28, 30, 32, and 33, on which a final written decision has already been
`rendered. As such, we dismiss the inter partes review with respect to those
`claims.7
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`7 Although we address the parties’ contentions with respect to independent
`claims 1, 11, 21, and 30, because their respective limitations are necessarily
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`Claim Construction
`B.
`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
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Ford proposes a construction
`for three claim terms, namely, “road load,” “setpoint,” and “abnormal and
`transient conditions.” Pet. 13–16. We construed all three terms in our
`Decision to Institute. Dec. 6–9. Ford does not challenge our original
`constructions. See Reply 2–5. Paice, however, requests that we reconsider
`our construction of “setpoint” and “ambient and transient conditions.” See
`PO Resp. 6–9, 12–13. Paice also requests clarification with respect to the
`term “maximum torque output,” as used in claims 1, 11, and 21. PO Resp.
`9–12. We address the three terms disputed by Paice, but first we summarize
`our construction of “road load” from the institution decision.
`1.
`“Road load (RL)”
`
`The term “road load” or “RL” appears in independent claim 21, and
`thus, necessarily is included in dependent claim 27. Neither Ford nor Paice
`challenges our construction of “road load” from the Decision to Institute. As
`noted therein, the specification of the ’097 patent expressly defines “road
`load” as “the vehicle’s instantaneous torque demands, i.e., that amount of
`torque required to propel the vehicle at a desired speed,” and further notes
`that it “can be positive or negative, i.e., when decelerating or descending a
`hill, in which case the negative road load . . . is usually employed to charge
`
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`included in remaining claims 7, 17, 27, 37, and 38, we do not otherwise
`provide a final written decision on their merits.
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`the battery bank.” Dec. 6 (citing Ex. 1201, 12:30–57). We do not perceive
`any reason or evidence that might compel us to deviate from that original
`analysis. Thus, we maintain our construction of “road load” or “RL” as “the
`amount of instantaneous torque required to propel the vehicle, be it positive
`or negative.”
`“Setpoint (SP)”
`2.
`The term “setpoint” or “SP” is found in independent claims 1, 11, and
`
`21, as well as dependent claims 7, 17, 27, and 37. In our Decision to
`Institute, after taking into consideration the parties’ arguments and
`supporting evidence, we construed “setpoint” or “SP” to mean “a
`predetermined torque value that may or may not be reset.” Dec. 8. Ford
`agrees with that construction, but Paice does not. Reply 3; PO Resp. 6–9.
`Paice maintains, as it did in the preliminary proceeding, that “setpoint” or
`“SP” should “not be limited to a torque value” but rather should be
`construed as “a definite, but potentially variable value at which a transition
`between operating modes may occur.” PO Resp. 6–9 (emphasis added).
`As discussed in our Decision to Institute, we looked first to the
`context in which the term “setpoint” appears in the claims. See Phillips v.
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he claims
`themselves provide substantial guidance as to the meaning of particular
`claim terms. . . . [T]he context in which a term is used in the asserted claim
`can be highly instructive”). In that regard, we determined that the claims
`compare the setpoint against a torque value. Id. For example, each of
`claims 1 and 11 speaks of “setpoint” or “SP” as being the lower limit of a
`range at which the engine can produce torque efficiently, i.e., “when the
`torque required to operate the hybrid vehicle is between a setpoint (SP) and
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`a maximum torque output (MTO) of the engine, wherein the engine is
`operable to efficiently produce torque above SP.” Ex. 1201, 57:1–7, 58:11–
`17 (emphasis added). Claim 21 similarly compares the setpoint “SP” against
`a torque-based “road load” or “RL” value. Id. at 59:7–12. These express
`recitations suggest that “setpoint” is not just any value, but a value that—per
`the surrounding claim language—equates to a measure of “torque.”8
`
`Paice, on the other hand, urges that “setpoint” is synonymous with a
`“transition” point, not a torque value. PO Resp. 6–7. Paice points to a
`passage from the specification, exclusive of the claims, as supporting a
`construction of “setpoint” that “marks a point at which the vehicle may
`transition between two modes,” such as from the motor propelling the
`vehicle to a mode in which the engine is also used to propel the vehicle. Id.
`at 7 (citing Ex. 1201, 39:52–59). Paice’s argument is misplaced. Although
`the passage of the specification on which Paice relies says that “sometimes”
`the setpoint may serve as a “transition point” (see id.), the claim language
`itself makes clear that setpoint relates simply to a torque value, without
`requiring that it be a transition point. In other words, a transition between
`modes is neither an intrinsic property nor a necessary and required condition
`of the setpoint as claimed. Indeed, the specification acknowledges that the
`mode of operation does not always transition, or switch, at a setpoint, but
`instead depends on a number of parameters. For instance,
`the values of the sensed parameters in response to which the
`operating mode is selected may vary . . . , so that the operating
`
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`8 Paice’s technical expert, Mr. Neil Hannemann, testified similarly that the
`comparison made in the claims is “most straightforward” if the “setpoint is a
`torque value.” Ex. 1240, 79:16–80:25.
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`mode is not repetitively switched simply because one of the
`sensed parameters fluctuates around a defined setpoint.
`Ex. 1201, 19:45–51 (emphasis added). That disclosure suggests that a
`transition does not spring simply from the recitation of “setpoint.” Thus, we
`will not import into the meaning of “setpoint” an extraneous limitation that
`is supported by neither the claim language nor the specification. As such,
`we reject Paice’s attempt to further limit the meaning of setpoint to a
`transition between operating modes.
`Paice additionally argues that “setpoint” should not be limited to a
`torque value because the specification describes that the system variable,
`“the state of charge of the battery BSC,” may be compared against a
`setpoint. PO. Resp. 8–9 (citing Ex. 1201, 39:29–37). This argument also is
`misplaced. As discussed above, each of claims 1, 11, and 21 requires a
`comparison of the setpoint to a variable expressed as a torque value, not a
`variable expressed as a state of electrical charge. Thus, in the context of
`claims 1, 11, and 21, and those depending therefrom, a setpoint must be a
`torque value, and not some state of charge of a battery.
`
`We also regard as meaningful that nothing in the specification
`precludes a setpoint from being reset, after it has been set. The specification
`states that the value of a setpoint may be “reset . . . in response to a repetitive
`driving pattern.” Ex. 1201, 39:60–63. That a setpoint may be reset under
`certain circumstances, however, does not foreclose it from being “set,” or
`“fixed,” at some point in time.9 A setpoint for however short a period of
`time still is a setpoint. Thus, for the foregoing reasons, we construe
`
`9 The definition of “set” is “determined . . . premeditated . . . fixed . . .
`prescribed, specified . . . built-in . . . settled.” Merriam-Webster’s Collegiate
`Dictionary (10th ed. 2000). Ex. 3001.
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`“setpoint” and “SP” as a “predetermined torque value that may or may not
`be reset.”
`“Maximum Torque Output (MTO)”
`3.
`
`Paice requests that we make clear that each of claims 1, 11, and 21
`requires a comparison of road load (RL), i.e., the vehicle’s torque
`requirements, not only to the setpoint (SP) but also to the maximum torque
`output (MTO) of the engine. PO Resp. 9–12. Paice points to the following
`limitation as calling for such a comparison: “operating both the at least one
`electric motor and the engine to provide torque to the hybrid vehicle when
`the torque required to operate the hybrid vehicle is more than MTO.” Id. at
`9. According to Paice, this limitation calls expressly for a comparison with
`MTO. Id. at 10. We agree. Each of claims 1, 11, and 21 has limitations
`directed to a comparison with setpoint (SP) or maximum torque output
`(MTO). But that comparison is clear from the claim language itself, thus, no
`further construction is necessary. Nor does Ford dispute that such a
`comparison takes place. And, to the extent Paice requests that we read the
`additional phrase “a comparison . . . [that] results in a determination” into
`the claims (PO Resp. 10–11), we decline to do so, as it is unclear what is
`meant by “determination” when only a comparison is required. And,
`although claims 1, 11, and 21 may require a comparison, at some point, with
`maximum torque output (MTO) of the engine, that does not mean the claims
`exclude a comparison with other parameters.
`4.
`“Abnormal and Transient Conditions”
`Each of claims 7, 17, 27, and 37, which depend, respectively, from
`independent claims 1, 11, 21 and 30, adds that the engine is operated “at
`torque output levels less than SP under abnormal and transient conditions.”
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`See, e.g., Ex. 1201, 57:39–41, 60:54–56. The term “abnormal and transient
`conditions” is not defined or described with any particularity in the
`specification of the ’097 patent. In our Decision to Institute, we found it
`unnecessary to construe “abnormal and transient conditions” beyond
`determining that it encompasses “starting and stopping the engine” when the
`vehicle is operated in “city traffic and reverse operation.” Dec. 9. Ford does
`not dispute that construction. Reply 4–5. Paice urges, however, that we
`further construe this limitation to exclude such conditions as “city traffic and
`reverse operation.” PO Resp. 12–13. Paice notes that such a distinction was
`made during prosecution of the ’097 patent. Id. at 12.
`We have reviewed the prosecution history of the ’097 patent and find
`it does not support Paice’s assertion. See Ex. 1210. Instead, as Ford points
`out, the prosecution history makes clear that “starting the engine” is at least
`one example of an abnormal and transient condition: “The ‘abnormal and
`transient conditions’ referred to are such conditions as starting the engine,
`during which operation it must necessarily be operated at less than SP for a
`short time.” Id. at 238 (emphasis added). Thus, contrary to what Paice
`urges now, there was no disavowal, whatsoever, of starting the engine as an
`abnormal and transient condition, let alone a “clear and unmistakable”
`disavowal. Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–
`26 (Fed. Cir. 2003). As such, we are not persuaded by Paice’s attempt to
`exclude starting and stopping the engine in city traffic or reverse operation
`as abnormal and transient conditions. Beyond determining that abnormal
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`and transient conditions include starting and stopping of the engine in city
`traffic or reverse operation, we need not construe this term further.10
`C.
`Claims 7, 17, 27, 37, and 38
`As discussed above, we dismiss the inter partes review with respect to
`independent claims 1, 11, 21, and 30, as well as dependent claims 3, 4, 9, 13,
`14, 19, 23, 24, 28, 32, and 33. Thus, only dependent claims 7, 17, 27, 37,
`and 38 are before us. Nonetheless, dependent claims 7, 17, and 37 stem
`from claims 1, 11, 21, respectively, and dependent claims 37 and 38 stem
`from claim 30, and thus, each of these remaining claims at issue necessarily
`includes the limitations of its base claim. Accordingly, we first address the
`limitations incorporated from base claims 1, 11, 21, and 30 into the
`respective dependent claims at issue.
`Ford provides detailed explanations as to how Severinsky and
`Takaoka together teach the limitations of base claims 1, 11, 21, and 30, and
`advances a reason why a skilled artisan would have combined their
`teachings to arrive at the claimed invention. Pet. 16–48; Reply 7–10, 14–21.
`In doing so, Ford relies upon the declaration of Dr. Jeffrey L. Stein, a
`technical expert retained by Ford for purposes of this proceeding. Ex. 1202.
`As discussed below, and notwithstanding Paice’s arguments to the contrary,
`we are persuaded by Ford’s showing, which we adopt as our own, that
`claims 1, 11, 21, and 30 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over the combination of Severinsky and Takaoka.
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`10 We also note that the term “abnormal and transient conditions” is
`exemplified in a related patent, U.S. Patent No. 7,104,347 B2 (“the ’347
`patent”), in which claim 22 describes abnormal and transient conditions as
`“comprising starting and stopping of the engine and provision of torque to
`satisfy drivability or safety considerations.” Ex. 1211, 60:17–21.
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`The Hybrid Components of Base Claims 1, 11, 21, and 30
`1.
`To begin, each of claims 1, 11, 21, and 30 recites a general
`configuration of components for a hybrid vehicle, which include “an internal
`combustion engine,” “at least one electric motor,” “a battery,” and “a
`controller.” Contrasting the claimed invention with Severinsky, we are
`persuaded that Severinsky discloses the same configuration, at least by way
`of components, as that called for by claims 1, 11, 21, and 30. Compare Ex.
`1205, Fig. 3 (Severinsky) with Ex. 1201, Fig. 4 (the ’097 patent). Ford’s
`expert witness, Dr. Stein, whose testimony we credit, confirms as much.
`See, e.g., Ex. 1202 ¶¶ 132–138, 272–278, 370–390. Thus, we are persuaded
`that Severinsky discloses the general configuration of components called for
`by the claims.
`Paice does not dispute that Severinsky discloses the components
`called for by the claims but, instead, argues that it fails to disclose using
`torque or road load for determining when to operate the engine to propel the
`vehicle. PO Resp. 16, 20. In that regard, each of claims 1, 11, and 21 (but
`not claim 30) recites a “setpoint” or “SP” for operating the engine
`“efficiently.” Paice further argues that the combination of Severinsky and
`Takaoka fails to teach the additional condition of limiting the engine’s “rate
`of increase” of output torque “such that combustion of fuel within the engine
`occurs at a substantially stoichiometric ratio,” as required by claims 1, 11,
`21, and 30. We address each argument in turn.
`2.
`The “Setpoint” Limitations of Base Claims 1, 11, and 21
`Base claims 1, 11, and 21 include limitations directed to a particular
`“setpoint” or “SP” for operating the engine such that it produces torque
`“efficiently.” For instance, claims 1 and 11 recite operating the engine
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`“when the torque required to operate the hybrid vehicle is between a setpoint
`SP and a maximum torque output (MTO) of the engine, wherein the engine
`is operable to efficiently produce torque above SP.” Ex. 1201, 57:1–7,
`58:11–17. And, claim 21 similarly recites operating the engine “when RL is
`between SP and a maximum torque output (MTO) of the engine, wherein the
`engine is operable to efficiently produce torque above SP.” Id. at 59:7–12.
`Although claim 21 recites the term “RL,” or “road load,” in place of the
`recitation “torque required to operate the hybrid vehicle” in claims 1 and 11,
`the meaning is the same given our construction that “road load” or “RL”
`equates to “torque required to propel the vehicle,” as discussed above in
`section III.B.1.
`We are persuaded, notwithstanding the arguments of Paice (which we
`address below), that Severinsky teaches a comparison of road load (i.e., the
`vehicle’s torque requirements) to a “setpoint” for determining when to
`operate the engine, as called for by claims 1, 11, and 21, even though
`Severinsky may not employ the exact same language as the claims. For
`instance, Severinsky describes that microprocessor 48 “monitors the
`performance of the electric motor and the internal combustion engine, the
`state of charge of the battery, and other significant variables [and] . . .
`determines whether the internal combustion engine or the electric motor or
`both should provide torque to the wheels under various monitored operating
`conditions.” Ex. 1205, 6:19–23 (emphasis added). In determining whether
`to employ the engine, Severinsky states that microprocessor 48 operates the
`engine only when it is “efficient” to do so:
`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.
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` Under other
`in highway cruising, it is so employed.
`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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`Id. at 7:8–16 (emphasis added); see also id. at 9:40–52 (“the internal
`combustion engine operates only in its most efficient operating range”).
`These disclosures indicate that Severinsky’s microprocessor monitors
`the performance of the vehicle to ensure the engine operates within a certain
`range of efficiency. Even more specifically, Severinsky discloses that to
`maximize efficiency, microprocessor 48 operates the engine “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.” Id. at 20:63–
`67 (emphasis added). That alone, Severinsky says, will yield improvement
`in fuel economy on the order of 200–300%. Id. at 20:67–68.
`Ford’s expert, Dr. Stein, explains that because the engine in
`Severinsky is not operated below 60% of MTO (maximum torque output of
`the engine), 60% MTO is a “setpoint” at or above which the engine is
`operated to propel the vehicle, and that when road load is between this
`setpoint and the MTO, e.g., 75% MTO, the engine alone produces the
`required torque. Ex. 1202 ¶¶ 176–179. Dr. Stein further explains that the
`60% of MTO in Severinsky is a setpoint below which only the electric motor
`is operated to propel the vehicle. Id. As such, Dr. Stein concludes that a
`skilled artisan would have understood that Severinsky’s lower limit of 60%
`of MTO is “a predetermined torqu