Trials@uspto.gov
`571-272-7822
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`
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`Paper 13
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`Entered: October 26, 2015
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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.
`
`DECISION TO INSTITUTE
`37 C.F.R. § 42.108
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`IPR2015-00792
`Patent 8,214,097 B2
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`I. INTRODUCTION
`This is a preliminary proceeding to decide the threshold question of
`
`whether inter partes review of U.S. Patent No. 8,214,097 B2 (“the ’097
`patent”) should be instituted under 35 U.S.C. § 314(a). Ford Motor
`Company filed a Petition (“Pet.”) seeking inter partes review of claims 1, 3,
`4, 7, 9, 11, 13, 14, 17, 19, 21, 23, 24, 27, 28, 30, 32, 33, 37, and 38 of the
`’097 patent, which is owned by Paice LLC & The Abell Foundation, Inc.
`(collectively, “Paice”). Paice filed a Preliminary Response (“Prelim. Resp.”)
`requesting that we deny institution of inter partes review. After considering
`the Petition and Preliminary Response, we conclude that Ford has
`demonstrated a reasonable likelihood of proving the challenged claims
`unpatentable. Accordingly, we institute inter partes review of claims 1, 3, 4,
`7, 9, 11, 13, 14, 17, 19, 21, 23, 24, 27, 28, 30, 32, 33, 37, and 38.
`II. BACKGROUND
`
`A.
`
`The ’097 patent1
`The ’097 patent describes a hybrid vehicle with an internal
`combustion engine, at least one electric motor, and a battery bank, all
`controlled by a microprocessor that directs the transfer of torque from the
`engine and/or motor to the drive wheels of the vehicle. Ex. 1201, 17:5–45,
`Fig. 4. The microprocessor “monitors the rate at which the operator
`depresses pedals [for acceleration and braking] as well as the degree to
`which [the pedals] are depressed.” Id. at 27:2–4. These “operator input
`commands” are provided to the microprocessor “as an indication that an
`
`1 The ’097 patent is involved in several 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.
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`amount of torque” from the engine “will shortly be required” to drive the
`vehicle. Id. at 26:59–27:22. The microprocessor then compares this torque
`requirement to a predefined setpoint and uses the results of the comparison
`to control the vehicle’s mode of operation, e.g., straight-electric, engine-
`only, or hybrid. Id. at 39:27–59. For instance, the microprocessor may
`utilize a control strategy that runs the engine only in a range of high fuel
`efficiency, such as when the torque required to drive the vehicle, or road
`load (RL), reaches a setpoint (SP) of approximately 30% of the engine’s
`maximum torque output (MTO). Id. at 20:37–45, 27:6–12, 36:39–40:56;
`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 may
`also utilize a control strategy that limits the rate of increase of the engine’s
`torque output so that fuel combustion occurs near or at a stoichiometric air-
`fuel ratio. Id. at 38:62–39:14. Operating the engine in accordance with
`these control strategies maximizes fuel efficiency and reduces pollutant
`emissions of the vehicle. Id. at 15:38–41, 37:2–6, 38:66–39:14.
`B.
`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;
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`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;
`
`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, 56:47–57:15.
`
`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 additional 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
`that pertain to the “controller” are similar in scope to those of method claims
`1, 11, and 21.
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`The asserted grounds of unpatentability
`C.
`Ford asserts two grounds of unpatentability against the claims at
`
`issue—first, claims 1, 7, 9, 11, 17, 19, 21, 27, 28, 30, 37, and 38 are
`unpatentable as obvious over the combined teachings of Severinsky2 and
`Takaoka;3 and, second, claims 3, 4, 13, 14, 23, 24, 32, and 33 are
`unpatentable as obvious over the teachings of Severinsky, Takaoka, and
`Yamaguchi.4 Pet. 5.
`
`III. ANALYSIS
`In this preliminary proceeding, we decide whether Ford has made a
`
`threshold showing, supported by sufficient proof, of a reasonable likelihood
`that the challenged claims are unpatentable for obviousness under 35 U.S.C.
`§ 103. In deciding this question, we construe the claims only to the extent
`necessary without making a final determination until the parties have
`exhausted their opportunity to present additional evidence and argument.
`A.
`Claim construction
`Ford asks that we construe the following terms: “road load,”
`“setpoint,” and “ambient and transient conditions.” Pet. 13–16. In an inter
`partes review, claim terms in an unexpired patent are given their broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b). This standard involves determining the
`ordinary and customary meaning of the claim terms as would be understood
`by one of ordinary skill in the art reading the patent’s entire written
`
`
`2 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1205, “Severinsky”).
`3 T. Takaoka et al., A High-Expansion Ratio Gasoline Engine for the
`Toyota Hybrid System, TOYOTA TECHNICAL REVIEW, Vol. 47, No. 2 (April
`1998) (Ex. 1206, “Takaoka”).
`4 U.S. Patent No. 5,865,263, iss. Feb. 2, 1999 (Ex. 1209, “Yamaguchi”).
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Any special definition for a claim term must be set forth with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). With these principles in mind, we construe the
`disputed terms as follows.
`
`1.
`“road load” or “RL”
`The term “road load” or “RL” appears in independent claim 21. The
`specification of the ’097 patent 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 the battery.” Ex. 1201,
`12:30–57. Thus, consistent with the specification, we construe “road load”
`and “RL” as “the amount of instantaneous torque required for propulsion of
`the vehicle, be it positive or negative.”5
`2.
`“setpoint” or “SP”
`The term “setpoint” or “SP” is recited in each of independent claims
`
`1, 11, and 21, as well as dependent claims 7, 17, 27, and 37. Ford proposes
`that “setpoint” or “SP” be construed, in the context of these claims, as a
`“predetermined torque value.” Pet. 13–15. In that regard, Ford correctly
`notes that the claims compare the setpoint either to an engine torque value or
`a torque based “road load” value. Id. at 14. For example, each of claims 1
`and 11 recites operating the engine “when the torque required to operate the
`hybrid vehicle is between a setpoint SP and a maximum torque output
`
`
`5 This construction is essentially the same as that proposed by Ford. Pet. 13.
`Paice does not propose a different construction. Prelim. Resp. 10.
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`(MTO) of the engine.” Ex. 1201, 57:2–4, 58:12–14. Similarly, claim 21
`recites operating the engine “when RL is between SP and a maximum torque
`output (MTO).” Id. at 59:8–9. Moreover, each of these claims speaks of the
`“setpoint” or “SP” as being the lower limit of a range in which the engine
`can produce torque efficiently, i.e., “wherein the engine is operable to
`efficiently produce torque above SP, and wherein SP is substantially less
`than MTO.” Id. at 57:4–7, 58:14–17, 59:10–12 (emphasis added). This
`express language suggests that “setpoint” is not just any value, but a value
`that—per the surrounding language—equates to a “torque” value.
`
`Although Paice correctly notes that the specification, exclusive of the
`claims, describes two parameters as being measurable against respective
`setpoints, i.e., road load and the state of charge of the battery (Prelim. Resp.
`16–17), the claim language makes clear that setpoint relates to a torque value
`and not a battery charge. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
`Cir. 2005) (en banc) (“the claims themselves provide substantial guidance as
`to the meaning of particular claim terms . . . the context in which a term is
`used in the asserted claim can be highly instructive”) (citations omitted).
`
`Paice also argues that “setpoint” or “SP” is the point at which the
`vehicle transitions from one operational mode to another, and in particular,
`the transition from a mode when only the motor propels the vehicle to modes
`when the engine can also be used to propel the vehicle. Prelim. Resp. 13–
`15. Citing the specification, Paice argues that “setpoint” is synonymous
`with a “transition point.” Id. at 13–14. Accordingly, Paice urges that the
`construction of “setpoint” or “SP” must be construed to indicate a point at
`which a transition between different operating modes may occur. Id. at 14–
`15.
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`Paice’s argument is misplaced. Although the specification sometimes
`
`uses “setpoint” interchangeably with “transition point,” elsewhere it
`acknowledges that the mode of operation does not always transition, or
`switch, at the setpoint, but instead depends on a number of parameters. For
`instance,
`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.
`
`Ex. 1201, 19:41–51 (emphasis added). That disclosure suggests that a
`transition does not spring simply from the recitation of “setpoint.” As such,
`we will not import into the meaning of “setpoint” an extraneous limitation
`that is supported by neither the claim language nor the specification.
`
`Finally, we regard as meaningful that nothing in the specification
`precludes a setpoint from being reset, after it has been set. A setpoint for
`however short a period of time still is a setpoint. Thus, we construe
`“setpoint” and “SP” as a “predetermined torque value that may or may not
`be reset.”
`“abnormal and transient conditions”
`3.
`
`
`Dependent claims 7, 17, 27, and 37 recite essentially the same
`limitation—operating the engine “at torque output levels less than SP under
`abnormal and transient conditions.” The specification does not define or
`describe the term “abnormal and transient conditions” with any particularity.
`
` Ford asserts that the term “abnormal and transient conditions” was
`defined during prosecution of the ’097 patent (Pet. 15), where the patentee
`acknowledged that,
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`[t]he ‘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.
`
`Ex. 1210, 238. Ford also points to claim 22 in the parent application of the
`’097 patent, which issued in U.S. Patent No. 7,104,347 B2 (“the ’347
`patent”) and recites, in pertinent part, “said [abnormal and transient
`conditions] comprising starting and stopping of the engine and provision of
`torque to satisfy drivability or safety considerations.” Ex. 1211, 60:17–21.
`But these passages upon which Ford relies are not definitions as much as
`they are examples of “abnormal and transient conditions.” As such, we are
`not persuaded that Ford’s construction is the correct one.
`
`Paice urges us to reject Ford’s construction and, instead, adopt a
`construction of “abnormal and transient conditions” that does not include
`“city traffic and reverse operation.” Prelim. Resp. 17–19. Paice notes that it
`argued that distinction during prosecution of the ’097 patent. Id. (citing Ex.
`1210, 238). We decline Paice’s invitation for the simple reason that
`abnormal and transient conditions, such as starting the engine, may very well
`occur in city traffic and reverse operation.
`
`We have considered the constructions proposed by both Ford and
`Paice, but do not find either of them persuasive. Nevertheless, it is not
`necessary to expressly construe “abnormal and transient conditions” beyond
`determining that such conditions encompass starting and stopping the
`engine, in comparison to other disclosed conditions of operating the engine.
`B.
`Claims 1, 7, 9, 11, 17, 19, 21, 27, 28, 30, 37, and 38—
`
`Obviousness over Severinsky and Takaoka
`Ford relies on Severinsky and Takaoka as together teaching the
`limitations of claims 1, 7, 9, 11, 17, 19, 21, 27, 28, 30, 37, and 38. Pet. 16–
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`52. Ford also discusses why a skilled artisan would have been led to
`combine their respective teachings to arrive at the claimed invention. Id. at
`52–55. To begin, we note, and Paice does not dispute, that Severinsky
`discloses the essential components of a hybrid electric vehicle, including an
`internal combustion engine, an electric motor, a battery, and a
`microprocessor for controlling operation of the engine and motor. Ex. 1009,
`Fig. 3. Also, like the claimed invention, Severinsky appears to teach that
`“stoichiometric combustion” in the engine is important to “lower the toxic
`hydrocarbon and carbon monoxide emission” of the vehicle. Ex. 1201,
`12:13–17.6
`
`Acknowledging that Severinsky does not disclose achieving
`stoichiometric combustion by controlling the “rate of increase” of the
`engine’s output torque, as required by each of the independent claims, Ford
`argues that this limitation does nothing more than apply “a known technique
`from the prior art,” as taught by Takaoka. Pet. 52 (citing Ex. 1206, 2, 6; Ex.
`1202 ¶ 446). More specifically, Takaoka discloses a hybrid control strategy
`that “reduce[s] quick transients in engine load so that the air-fuel ratio can be
`stabilized easily.” Ex. 1206, 6. Takaoka further teaches that, “in order to
`achieve a major reduction in emissions,” the engine should “operate with λ =
`1 over its entire range.” Id. at 2. Ford’s declarant, Dr. Stein, explains that
`“[a] lambda (λ) value of 1 corresponds to the stoichiometric air/fuel ratio,”
`and, thus, a skilled artisan would have understood Takaoka’s disclosures to
`mean reducing the rate of increase of engine torque so as to maintain engine
`
`6 Ford’s declarant, Dr. Stein, whose testimony we credit, confirms the
`teachings of Severinsky with respect to the basic elements and functions
`recited by the challenged claims, i.e., the engine, motor, battery, and
`controller. Ex. 1202 ¶¶ 131–141, 265–286.
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`combustion at a stoichiometric ratio. Ex. 1202 ¶¶ 206–208, 217–219, 231–
`237, 299–302, 444–448. This basic technique, according to Dr. Stein, would
`have been desired by a skilled artisan working on improving stoichiometry
`in a hybrid control strategy, such as that of Severinsky. Id. ¶¶ 449–451. Dr.
`Stein thus concludes that the combination of Severinsky and Takaoka
`satisfies all of the limitations of claims 1, 11, 21, and 30. Id. ¶¶ 264, 364,
`368, 423.
`
`Paice attacks Ford’s combination of Severinsky and Takaoka on three
`fronts, arguing, first, the combination fails to teach or suggest a “setpoint” as
`claimed, second, Ford fails to state an adequate reason to combine the
`references, and third, the combination does not render obvious dependent
`claims 7, 9, 17, 19, 27, 28, 37, or 38. Prelim. Resp. 4, 42–43. We address
`each argument in order.
`
`1.
`The “setpoint” limitation
`
`Paice contends that neither Severinsky nor Takaoka discloses or
`suggests the controller limitations of independent claims 1, 11, and 21 that
`utilize a “setpoint” or “SP.” Prelim. Resp. 43–47. We disagree. Paice’s
`argument is based entirely on its construction of the meaning of “setpoint.”
`According to Paice, a proper construction of “setpoint” must account for
`“the transition from one claimed mode to another.” Id. at 43. As discussed
`above, however, we have not adopted Paice’s construction. Even so,
`Severinsky teaches a setpoint as claimed.
`
`For instance, with respect to operating the engine “between a setpoint
`SP and a maximum torque output (MTO) of the engine [and] efficiently
`produce torque above SP,” as recited by claims 1, 11, and 21, Severinsky
`discloses that the microprocessor runs the engine “only in the near vicinity
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`of its most efficient operational point, that is, such that it produces 60–90%
`of its maximum torque whenever operated.” Ex. 1205, 20:63–67 (emphasis
`added). “When the engine can be used efficiently,” Severinsky states, “it is
`so employed,” and “[u]nder other circumstances, e.g. in traffic, the electric
`motor alone drives the vehicle.” Id. at 7:8–16.
`
`Ford’s declarant, Dr. Stein, explains that, because the microprocessor
`in Severinsky does not operate the engine below 60% of MTO (maximum
`torque output of the engine), the 60% MTO functions as 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 ¶¶ 165–167, 175–179. Dr. Stein
`further explains that the 60% MTO acts as a setpoint below which only the
`electric motor is operated to propel the vehicle. Id. According to Dr. Stein,
`a skilled artisan would have understood that Severinsky teaches “a
`predetermined torque value or setpoint” that is 60% of the engine’s
`maximum torque output. Id. ¶ 167.
`
`With respect to the claim limitation that the setpoint be “substantially
`less than MTO,” Dr. Stein confirms that the 60% of MTO setpoint in
`Severinsky is substantially less than the MTO because claim 15 of the
`related ’634 patent recognizes that an even higher setpoint of 70% MTO
`qualifies as substantially less than the MTO. Id. ¶ 196. Also, Dr. Stein
`explains that a skilled artisan would have viewed the 40% difference
`between the 60% setpoint and 100% MTO taught by Severinsky as
`“substantial.” Id. ¶¶ 191–195.
`
`We find Dr. Stein’s testimony persuasive. Thus, based on our review
`of the record as it currently stands, we determine that Severinsky’s
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`“operational point” for the engine of 60% MTO is likely no different than
`the “setpoint,” or “SP,” called for by claims 1, 11, and 21. We have
`considered but are not persuaded by Paice’s arguments to the contrary. See
`Prelim Resp. 43–47.
`
`Independent claim 30 does not use the term “setpoint” or “SP,” but
`requires that the controller activate the electric motor “to provide additional
`torque when the amount of torque being provided by said engine is less than
`the amount of torque required to propel the vehicle.” Severinsky teaches
`this limitation, stating that the “[m]icroprocessor 48 monitors the operator’s
`inputs and the vehicle’s performance, and activates electric motor 20 when
`torque in excess of the capabilities of engine 40 is required.” Ex. 1205,
`14:15–18 (emphasis added). For example, “[i]f the vehicle then starts to
`climb a hill, the motor 20 is used to supplement the output torque of engine
`40.” Id. at 10:36–38 (emphasis added). Likewise, Severinsky specifies “a
`highspeed acceleration and/or hill climbing mode, wherein both internal
`combustion engine 40 and electric motor 20 provide torque to road wheels
`34.” Id. at 14:22–25 (emphasis added). Those express disclosures by
`Severinsky are no different than what claim 30 requires—that the controller
`activate the motor to provide supplemental torque when the torque provided
`by the engine is insufficient to drive the vehicle. See Ex. 1202 ¶¶ 394–396.
`
`2.
`The reason to combine
`
`Paice argues, in conclusory fashion, that a skilled artisan would not
`have been led to combine the teachings of Severinsky and Takaoka. Prelim.
`Resp. 49–50. We are not persuaded. Ford’s declarant, Dr. Stein, persuades
`us that a skilled artisan would have been led to modify the basic hybrid
`control strategy of Severinsky with the known technique of reducing engine
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`transients, as taught by Takaoka, because both references share the same
`fundamental goal of reducing carbon emissions by maintaining a
`stoichiometric air-fuel ratio. Ex. 1202 ¶¶ 444–456 (citing Ex. 1206, 2, 6).
`According to Dr. Stein, such a modification would have yielded the
`predictable result of improving control of the stoichiometric combustion of
`the engine, thereby, leading to reduced emissions. Ex. 1202 ¶¶ 448-449. Dr.
`Stein further explains that incorporating Takaoka’s known technique of
`reducing engine transients into Severinsky’s control algorithm would have
`been well within the level of skill in the art. Id. ¶¶ 455–456.
`
`In sum, based on the current record, we are persuaded that Ford has
`provided sufficient reasoning, backed with supporting evidence, for
`combining the hybrid control strategies of Severinsky and Takaoka to meet
`the controller limitations of independent claims 1, 11, 21, and 30.
`
`3.
`The challenged dependent claims
`
`
`a.
`Claims 7, 17, 27, and 37
`
`Claims 7, 17, 27, and 37 depend from independent claims 1, 11, 21,
`and 30, respectively, and add “operating the engine at torque output levels
`less than SP under abnormal and transient conditions.” For these dependent
`claims, Paice rests on the same arguments it made with respect to the
`independent claims. Prelim. Resp. 9. As discussed above, we did not find
`those arguments persuasive. After reviewing the evidence and arguments
`presented in the Petition, we determine that Ford has demonstrated a
`reasonable likelihood that dependent claims 7, 17, 27, and 37 would have
`been obvious over Severinsky and Takaoka. See Pet. 48–50.
`
`More specifically, Severinsky discloses that in certain conditions the
`engine would be operated outside of its most fuel efficient operating range
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`and gives an example that involves the engine operating at lower than its
`range of efficient operation. Ex. 1205, 18:23–33. In that scenario,
`Severinsky discloses that it is preferable to use the engine inefficiently than
`to discharge the battery excessively. Id. We have construed “abnormal and
`transient conditions” as covering starting the engine. To operate the engine
`to prevent the battery from discharging excessively during the time the
`engine is off because its output would be below the setpoint of 60% MTO
`requires starting the engine. As such, we determine Ford has demonstrated a
`reasonable likelihood of proving that claims 7, 17, 27, and 37 would have
`been obvious over Severinsky and Takaoka.
`
`
`b.
`Claims 9, 19, 28, and 38
`
`Claims 9, 19, and 28 recite that energy is supplied “to the motor from
`the battery at a voltage of at least 500 volts under peak load conditions.”
`Claim 38 recites similar language. Ford argues that Severinsky satisfies
`these claims and relies on the testimony of its declarant, Dr. Stein, as
`support. Pet. 50–52. Paice, in turn, argues that Dr. Stein’s testimony “does
`not disclose the underlying facts upon which he relies.” Prelim. Resp. 48.
`We disagree.
`
`Dr. Stein explains that “Severinsky ’970 discloses that the DC voltage
`will be between 1,000 and 1,400 volts when operating a [] motor at its
`maximum current (i.e., ‘peak current’) of 50 amperes” to power the vehicle.
`Ex. 1202 ¶ 440 (citing Ex. 1205, 19:39–49). Dr. Stein further explains that a
`skilled artisan would have known that a motor is operating “under peak load
`conditions” when it is operating at its maximum current. Ex. 1202 ¶ 441.
`Thus, according to Dr. Stein, because Severinsky’s maximum voltage of
`1,400 volts would have been understood to be the peak voltage, Severinksy
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`teaches supplying energy to the motor from the battery “at a voltage of at
`least 500 volts [i.e., 1,400 volts] under peak load conditions [at a maximum
`current of 50 amperes].” Id. ¶ 442. Contrary to Paice’s assertion, we are
`persuaded that Dr. Stein’s testimony is supported by sufficient facts from
`Severinsky. As such, we determine Ford has demonstrated a reasonable
`likelihood of proving that claims 9, 19, 28, and 38 would have been obvious
`over Severinsky and Takaoka.7
`C.
`Claims 3, 4, 13, 14, 23, 24, 32, and 33—Obviousness over
`
`Severinsky, Takaoka, and Yamaguchi
`Claims 3, 13, 23, and 32 add the limitation that the engine is “rotated
`at least 300 rpm” so as to heat the engine “prior to supply of fuel for starting
`the engine,” and claims 4, 14, 24, and 33 add the limitation that fuel and air
`are supplied to the engine “at a fuel:air ratio of no more than 1.2 of the
`stoichiometric ratio for starting the engine.” These claims depend directly or
`indirectly from claims 1, 11, 21, and 30. Paice does not argue these
`dependent claims separately, instead stating that they are patentable “for at
`least the same reasons” as the independent claims from which they depend.
`We have considered the evidence and arguments presented in the Petition.
`Based on the current record, we are persuaded that Ford has demonstrated a
`reasonable likelihood that these dependent claims are unpatentable as
`obvious over Severinsky, Takaoka, and Yamaguchi. As such, we institute
`inter partes review of claims 3, 4, 13, 14, 23, 24, 32, and 33.
`
`7 We recognize that in a prior proceeding, we denied institution of claim 38.
`IPR2014-00570, Paper 10, 9. That denial, however, was based on Ford’s
`use of the ’097 patent as a roadmap to arrive at the claimed invention. Id. In
`the instant proceeding, Ford relies on the teachings of Severinsky, the
`testimony of Dr. Stein, and the level of skill in the art, exclusive of the ’097
`patent. See Pet. 50–52 (citing Ex. 1202 ¶¶ 92–95, 440–443).
`
`
`
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`IPR2015-00792
`Patent 8,214,097 B2
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`D.
`
`Paice’s other arguments
`Paice argues that Ford’s Petition should be dismissed under 35 U.S.C.
`§ 325(d) because it amounts to a third attack on the ’097 patent, challenging
`the same claims and presenting the same prior art that is already the subject
`of earlier petitions by Ford. Prelim. Resp. 19–33. We are not persuaded by
`Paice’s arguments. This latest petition challenges different dependent
`claims and asserts different prior art than Ford’s earlier petitions. And, in
`challenging a different dependent claim, Ford would be remiss to not also
`challenge the related independent claim, even if already challenged in an
`earlier petition, for whatever renders obvious the dependent claim
`necessarily renders obvious the independent claim. Thus, notwithstanding
`Paice’s arguments, we exercise our discretion and consider this third
`Petition.8
`
`Paice also contends that multiple challenges should not be allowed
`because, under 35 U.S.C. § 315(e)(1), once a final written decision is issued
`in one proceeding with respect to a claim, Ford would be barred from
`requesting or maintaining a proceeding on that claim on any ground that
`Ford raised or could have raised in the proceeding which yielded the final
`written decision. Prelim. Resp. 33–36. That contention is misplaced,
`because that provision of the statute applies only to the petitioner, not the
`Board. See Progressive Cas. Ins. Co. v. Liberty Mut. Ins. Co., 2015 WL
`5004949, at *2 (Fed. Cir. Aug. 24, 2015). And, even if somehow it applies
`
`
`8 We note that Ford previously requested that Paice limit the number of
`claims being asserted in the related district court action “to a reasonable
`number,” but Paice refused. Ex. 1204. That refusal by Paice weighs in
`favor of permitting multiple petitions on the same patent.
`
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`to the Board, it is not burdensome simply to terminate the second proceeding
`with respect to certain claims.
`
`We also have considered Paice’s argument that the Petition
`improperly incorporates arguments and evidence from the Declaration of
`Dr. Stein into the Petition. Prelim. Resp. 37–41. In general, arguments must
`not be incorporated by reference from one document into another document.
`37 C.F.R. § 42.6(a)(3). Here, however, in challenging certain claims, Ford
`relies on Dr. Stein’s testimony as evidence of what a skilled artisan would
`have understood from reading Severinsky’s disclosure at the time of the
`claimed invention. We have reviewed those portions of Dr. Stein’s
`declaration, to which Paice directs us, and determine that there is nothing
`unusual about Dr. Stein’s declaration or the way in which Ford relies on it
`insofar as incorporation by reference is concerned, at least not to the extent
`that we would disregard the Petition in its entirety. For similar reasons, we
`are not persuaded by Paice’s argument that we should deny the Petition
`because Ford incorporates by reference previous explanations of how claims
`are met by the prior art with respect to other claims. Our rule against
`incorporation by reference does not apply to a single document referencing
`other parts of the same document. Moreover, Paice does not persuade us
`that we should disregard the Petition on the basis of a purported
`“voluminous record.” Id. at 41–42.
`IV. CONCLUSION
`For the