UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
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`Case IPR2015-00794
`Patent 7,104,347
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`Patent No. 7,104,347
`Patent Owner’s Response
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`Case IPR2015-00794
`Attorney Docket No: 36351-0011IP4
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`TABLE OF CONTENTS
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`I. 
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`II. 
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`INTRODUCTION ........................................................................................... 1 
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`THE ’347 patent .............................................................................................. 3 
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`A. 
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`B. 
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`Background of the ’347 patent .............................................................. 3 
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`Claim Construction ............................................................................... 4 
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`1. 
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`“setpoint (SP)” ............................................................................ 5 
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`The Challenged Claims Require a comparison of Road Load to
`2. 
`Setpoint and/or MTO ............................................................................ 9 
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`III.  ARGUMENT ................................................................................................. 14 
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`A. 
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`B. 
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`Ford is Estopped from Maintaining its Challenges to Claim 23 ......... 14 
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`Grounds 1 through 7 are Deficient—Ford Has Failed to Demonstrate
`that Ibaraki ’882 Discloses or Renders Obvious the Features Recited in
`the Challenged Claims ........................................................................ 15 
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`1. 
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`2. 
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`Ibaraki ’882 does not compare “road load” to “setpoint” ......... 15 
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`Ibaraki ’882 does not compare “road load” to “MTO” ............ 32 
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`Ibaraki ’882 does not disclose a setpoint that is substantially less
`3. 
`than MTO ............................................................................................ 43 
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`C. 
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`Ground 2 is Deficient—the Prior Art of Record Fails to Disclose The
`Claimed Setpoint ................................................................................. 46 
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`D.  Ground 3 is Deficient—the Prior Art of Record Fails to Disclose
`Limiting a Rate of Change of Torque Output of the Engine to Achieve
`Stoichiometry ...................................................................................... 48 
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`Vittone Does Not Disclose Controlling the Engine by Limiting a
`1. 
`Rate of Change of Torque Output of the Engine ................................ 49 
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`Ford Fails to Establish a Motivation to Combine Vittone with
`2. 
`Ibaraki ’882 ......................................................................................... 52 
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`E. 
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`F. 
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`Ground 4 is Deficient—Ford Fails to Establish a Rationale to Combine
`Severinsky with Yamaguchi ................................................................ 54 
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`Ground 5 is Deficient—Ford Fails to Establish a Motivation to
`Combine Ibaraki ’882 with Ibaraki ’626 ............................................. 55 
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`G.  Ground 6 is Deficient—Lateur’s Cruise Control Does not Disclose a
`Road-Load-Based Control Strategy .................................................... 56 
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`H.  Ground 7 is Deficient—the Prior Art of Record Fails to Disclose Road-
`Load-Based Hysteresis ........................................................................ 58 
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`IV.  CONCLUSION .............................................................................................. 60 
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`Patent No. 7,104,347
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`Cases
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`Case IPR2015-00794
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`TABLE OF AUTHORITIES
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` Page(s)
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`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ............................................................................ 8
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ................................................................ 4, 52, 56
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`Fuji Photo Film Co. v. Int'l Trade Comm’n,
`386 F.3d 1095 (Fed. Cir. 2004) ............................................................................ 8
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`Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
`222 F.3d 951 (Fed. Cir. 2000) ...................................................................... 43, 45
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`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .............................................................. 52, 55, 58
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`Ex Parte James R. Bosserdet Jr.,
`Appeal 2012-001420, 2014 WL 5590704 (PTAB Oct. 9, 2014) ....................... 46
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`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 29
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 29, 56, 60
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`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 11
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .................................................................. 5, 8, 12
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`In re Nilssen,
`837 F.2d 1098 (Fed. Cir. 1987) .......................................................................... 56
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`Nystrom v. Trex Co.,
`424 F.3d 1136 ..................................................................................................... 43
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`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 5
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`Texas Instruments v. United States ITC,
`988 F.2d 1165 (Fed. Cir. 1993) .......................................................................... 46
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`In re Vaidyanathan,
`381 Fed. Appx. 985 (Fed. Cir. 2010) .................................................................... 8
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`In re Wright,
`569 F.2d 1124 (C.C.P.A. 1977) .......................................................................... 44
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`Statutes
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`35 U.S.C. § 103 .......................................................................................................... 1
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`35 U.S.C. § 315(e)(1) ............................................................................................... 14
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`Other Authorities
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`37 C.F.R. § 42.100 ............................................................................................... 4, 15
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`EXHIBITS
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`Exhibit Name
`Table of Ford’s IPR Petitions
`Gregory Davis Deposition Transcript (Feb. 25, 2015)
`The Oxford Essential Dictionary, American Ed. (1998)
`(excerpt)
`Appendix A (Jan. 15, 2014)
`Declaration of Daniel A. Tishman in Support of Patent
`Owners’ Motion for Pro Hac Vice Admission
`Declaration of Neil Hannemann
`Neil Hannemann CV
`Gregory W. Davis, Deposition Tr. (IPR2015-00722,
`IPR2015-00784,
`IPR2015-00787,
`IPR2015-00790,
`IPR2015-00791,
`IPR2015-00794,
`IPR2015-00795)
`(January 13, 2016)
`Hybrid Power Unit Development for Fiat Multipla
`Vehicle,” by A. Caraceni, G. Cipolla, and R. Barbiero,
`SAE Publication 981124 (1998) (“Caraceni”)
`Ehsani et al., Modern Electric Hybrid Electric, and
`Fuel Cell Vehicles (2005)
`Gregory W. Davis, Deposition Tr. (IPR2014-00571,
`IPR2014-00579) (January 13, 2015)
`Jeffery L. Stein, Deposition Tr. (IPR2014-00875)
`(Mar. 3, 2015)
`Ex. 1661 from IPR2015-00790
`Gregory W. Davis, Deposition Tr. (IPR2014-01416)
`(June 3, 2015)
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`v
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`Exhibit Number
`Ex. 2401
`Ex. 2402
`Ex. 2403
`Ex. 2404
`Ex. 2405
`Ex. 2406
`Ex. 2407
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`Ex. 2408
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`Ex. 2409
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`Ex. 2410
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`Ex. 2411
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`Ex. 2412
`Ex. 2413
`Ex. 2414
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`Patent No. 7,104,347
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`Case IPR2015-00794
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`Pursuant to 37 C.F.R. § 42.120 and the Decision to Institute (“Institution
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`Decision” or “Inst. Dec.”), Patent Owners Paice LLC and the Abell Foundation, Inc.
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`(collectively, “Paice”) hereby submit this Response to the Petition for Inter Partes
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`Review of U.S. Patent. No. 7,104,347 under 35 U.S.C. § 311 et seq., and 37 C.F.R.
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`§ 42.100 et seq. (“Petition” or “Pet.”) filed by Ford Motor Company (“Ford”).
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`I.
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`INTRODUCTION
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`U.S. Patent. No. 7,104,347 (“the ’347 patent”), which is the subject of the
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`present Petition, claims an inventive and novel method of control for a hybrid
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`electric vehicle that uses road load, setpoint, and the maximum torque output of an
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`internal combustion engine to determine when to transition between various
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`operating modes in which the vehicle is propelled by an electric motor, an internal
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`combustion engine, or both. Ford’s Petition challenges claims 23-30, 32, and 39-41
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`(“the challenged claims”) as obvious under 35 U.S.C. § 103. Following Paice’s
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`preliminary response, filed on August 3, 2015, the Board instituted review of each
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`of the challenged claims, except for claim 24, as obvious over various combinations
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`of U.S. Patent No. 5,789,882 to Ibaraki et al. (Ex. 1403) (“Ibaraki ’882”), either
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`alone or in combination with U.S. Patent No. 5,823,280 to Lateur et al. (Ex. 1407)
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`(“Lateur”), U.S. Patent No. 6,116,363 to Frank (Ex. 1418) (“Frank”), U.S. Patent
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`No. 5,865,263 to Yamaguchi et al. (Ex. 1421) (“Yamaguchi”), U.S. Patent No.
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`6,003,626 to Ibaraki et al. (Ex. 1422) (“Ibaraki ’626”), Fiat Conceptual Approach
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`to Hybrid Cars Design, Vittone (Ex. 1420) (“Vittone”), “the teachings of known
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`prior art systems,” and “the knowledge of a POSA.” All challenged claims are
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`patentable over the cited grounds for the reasons set forth herein.
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`Ford’s arguments with regards to the ’347 patent are fundamentally flawed.
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`The ’347 patent’s innovative control strategy, using road load, setpoint, and the
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`engine’s maximum torque output (MTO) to decide which operating mode to select
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`to maximize efficiency, is absent in the cited references. Instead, Ibaraki ’882
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`discloses selecting operating modes based on power, not road load or torque-based
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`setpoints. The following illustration of each control system reveals the manifest
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`differences:
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`The control strategy claimed by the ’347 patent compares road load to
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`setpoint and MTO, and, as a result, operates the engine at a wide range of
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`relatively high torque values across the engine’s entire speed range, as depicted
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`above on left. The power-based control strategy of Ibaraki ’882 compares the
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`instantaneous drive power to power thresholds (which are unrelated to the engine’s
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`MTO) and, therefore, operates the engine in a defined range of power values, as
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`depicted above on right. Consequently, Ibaraki ’882 operates the motor much
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`more frequently than the inventive, road load-based control strategy claimed in the
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`’347 patent. Ford has presented no logical rationale as to why the ’347 patent’s
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`control system would be rendered obvious by the power-based system of Ibaraki
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`’882.
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`II. THE ’347 patent
`A. Background of the ’347 patent
`The ’347 patent, entitled “Hybrid Vehicles,” issued on September 12, 2006,
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`from an application with a priority date of September 14, 1998. The ’347 patent
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`discloses embodiments of a hybrid electric vehicle, with an internal combustion
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`engine and two motors. One or both of the motors may be used to recharge the
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`battery. Additionally, a microprocessor is employed to select different operating
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`modes based on the vehicle’s instantaneous torque requirements, the state of charge
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`of the battery bank, and other variables. See, e.g., Ex. 1401 at Abstract.
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`The hybrid vehicle may be operated in a number of modes based on the
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`vehicle’s instantaneous torque requirements, the engine’s maximum torque output,
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`the state of charge of the battery, and other operating parameters. In an
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`implementation of the ’347 patent, the microprocessor causes the vehicle to operate
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`in various operating modes pursuant to its control strategy.
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`For example, in mode I, the hybrid vehicle is operated as an electric car, with
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`the traction motor providing all torque to propel the vehicle. Id. at 37:26-35. As the
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`vehicle continues to be propelled in electric only mode, the state of charge of the
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`battery may become depleted, and need to be recharged. In this case, the hybrid
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`vehicle may transition to mode II to recharge the battery, in which case the vehicle
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`operates as in mode I, with the addition of the engine running the starter/generator
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`motor to provide electrical energy to operate the traction motor and recharge the
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`battery. Id. at 37:35-39. When the internal combustion engine can operate in its fuel
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`efficient range, the hybrid vehicle operates in mode IV, with the engine providing
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`torque to propel the vehicle. Id. at 37:45-47, 38:55-65. If the vehicle requires
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`additional torque, such as for acceleration or hill-climbing, the vehicle may enter
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`mode V, where the traction motor provides additional torque to propel the vehicle
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`beyond that provided by engine 40. Id. at 38:4-11.
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`B. Claim Construction
`In IPR proceedings, the Board applies the “broadest reasonable interpretation”
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`standard, which mandates that “[a] claim in an unexpired patent shall be given its
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`broadest reasonable construction in light of the specification of the patent in which
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`it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793
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`F.3d 1268, 1278 (Fed. Cir. 2015). The Federal Circuit has recognized, however, that
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`that standard requires that the claims must be read in light of the specification as it
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`would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc.,
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`603 F.3d 1255, 1260 (Fed. Cir. 2010). In Microsoft Corp. v. Proxyconn, Inc., the
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`Federal Circuit explained that the broadest reasonable interpretation does not mean
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`that “the Board may construe the claims during IPR so broadly that its constructions
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`are unreasonable under general claim constructions principles,” and that the
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`construction must not be “divorced from the specification and the record evidence”
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`and inconsistent with “the one that those skilled in the art would reach.” 789 F.3d
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`1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
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`2011); In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). “A construction that
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`is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language
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`and disclosure’ will not pass muster.” Microsoft, 789 F.3d at 1298 (quoting Suitco,
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`603 F.3d at 1260).
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`“setpoint (SP)”
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`1.
`A “setpoint” is “a definite, but potentially variable value at which a transition
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`between operating modes may occur.”1 In its Institution Decision, the Board
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`1 As the Board is aware, the U.S. District Court for the Eastern District of
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`Texas and the U.S. District Court for the District of Maryland both have construed
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`construed “setpoint” as a “predetermined torque value that may or may not be reset.”
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`Paice respectfully requests that the Board reconsider its construction as it is
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`unreasonably broad and does not reasonably reflect the disclosure of the ’347 patent.
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`Instead, the Board should adopt Paice’s construction (“a definite, but potentially
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`variable value at which a transition between operating modes may occur”).
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` The claims and the specification of the ’347 patent make clear that a
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`“setpoint” is not simply a numerical value divorced from the context of the control
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`system. Rather, “setpoint” serves the crucial function of marking the transition from
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`one claimed mode to another, and in particular, the transition from propelling the
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`vehicle with the motor to propelling the vehicle with the engine. See, e.g., Ex. 1401
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`at 40:50-55.
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`the term “setpoint (SP)” to mean “a definite, but potentially variable value at which
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`a transition between operating modes may occur.” See Paice LLC v. Toyota Motor
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`Corp., Case No. 2:07-cv-180 (E.D. Tex. Dec. 5, 2008) (Ex. 1413 at 204); Paice LLC
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`v. Hyundai Motor Corp., Case No. 2:12-cv-499 (D. Md. Jul. 24, 2014) (Ex. 1414 at
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`103) (“The Plaintiffs’ proposed construction of ‘setpoint’ as ‘a definite, but
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`potentially variable value at which a transition between operating modes may occur,’
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`is consistent with the language of the claims and the intrinsic evidence.”).
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`First, the claims are clear that a “setpoint” marks a point at which the vehicle
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`may transition between two modes. For example, in claims 1, 7, 23, and 28, the
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`“setpoint” marks the transition between a mode in which only the motor propels the
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`vehicle, to modes in which the engine also can be used to propel the vehicle or charge
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`the battery. See id. at claims 1, 7, 23, 28. Dependent claim 3 similarly requires that
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`the “controller monitors the road load (RL) on the vehicle over time, and controls
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`transition between propulsion of said vehicle by said motor(s) to propulsion by said
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`engine responsive to RL reaching SP.” Id. at claim 3 (emphasis added). Claim 25
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`recites similar language.
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`Additionally,
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`the specification unambiguously defines “setpoint” as
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`synonymous with a “transition point” between modes:
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`[I]n the example of the inventive control strategy discussed above, it is
`repeatedly stated that the transition from low-speed operation to
`highway cruising occurs when road load is equal to 30% of MTO. This
`setpoint, referred to in the appended claims as "SP", and sometimes
`hereinafter as the transition point (i.e., between operation in modes I
`and IV) is obviously arbitrary and can vary substantially, e.g., between
`30-50% of MTO, within the scope of the invention.
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`Id. at 40:47-55 (emphasis added); see also id. at 40:22-31, 41:2-4, 41:10-14, 41:66-
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`42:2, 44:32-39.
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`The Board’s initial construction of “setpoint” as a “predetermined torque
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`value that may or may not be reset,” see Inst. Dec. at 10, is incorrect and
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`unreasonably broad because it fails to recognize that “setpoint” represents a point at
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`which a transition between different operating modes may occur. The broadening
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`construction is “divorced from the specification and the record evidence” and
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`inconsistent with “the one that those skilled in the art would reach.” See Microsoft,
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`789 F.3d at 1298 (quoting NTP, 654 F.3d at 1288; Cortright, 165 F.3d at 1358). In
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`essence, the construction covers hybrid vehicle systems where transitions between
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`modes never occur—a clear error that is fundamentally contrary to the specification
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`of the ’347 patent. See Fuji Photo Film Co. v. Int'l Trade Comm’n, 386 F.3d 1095,
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`1098 (Fed. Cir. 2004) (claim should not be given overly broad construction that is
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`inconsistent with how claim term is used in the specification). The Board’s
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`“broadest reasonable interpretation” must be reasonable, and must be in conformity
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`with the invention as described in the specification. In re Vaidyanathan, 381 Fed.
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`Appx. 985, 995-96 (Fed. Cir. 2010); see also In re Abbott Diabetes Care Inc., 696
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`F.3d 1142, 1149 (Fed. Cir. 2012) (holding that Board’s construction of
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`“electrochemical sensor” was “unreasonable and inconsistent with the language of
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`the claims and the specification”).
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`Additionally, as set forth in Paice’s preliminary response, “setpoint” should
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`not be limited to a torque value—the specification makes clear that a setpoint is not
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`limited to a torque value and in fact could also be a measure of the state of charge of
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`the battery.
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` [T]he microprocessor tests sensed and calculated values for system
`variables, such as the vehicle's instantaneous torque requirement, i.e.,
`the “road load” RL, the engine's instantaneous torque output ITO, both
`being expressed as a percentage of the engine's maximum torque output
`MTO, and the state of charge of the battery bank BSC, expressed as a
`percentage of its full charge, against setpoints, and uses the results of
`the comparisons to control the mode of vehicle operation.
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`Ex. 1401 at 40:22-31 (emphasis added). Therefore, Paice respectfully requests that
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`the Board reconsider its construction and adopt Paice’s construction of “setpoint” to
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`make clear that it is a value “at which a transition between operating modes may
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`occur.”
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`2.
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`The Challenged Claims Require a comparison of Road Load
`to Setpoint and/or MTO
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`Each of the challenged claims require that road load is compared to setpoint
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`and or MTO. See Ex. 1401 at claim 23 (“employing said at least one electric motor
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`to propel said vehicle when the torque RL required to do so is less than said lower
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`level SP; employing said engine to propel said vehicle when the torque RL required
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`to do so is between said lower level SP and MTO; employing both said at least one
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`electric motor and said engine to propel said vehicle when the torque RL required to
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`do so is more than MTO”); see also claim 1. Because Ford appears intent on
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`interpreting these limitations in an unreasonably broad manner to essentially capture
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`any system where a torque value is above/below a threshold either by coincidence
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`or otherwise, the Board should construe these limitations to make clear that the
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`claimed controller (or method of control) selects operating modes based on a
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`comparison of road load to setpoint or MTO.
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`Specifically, the Board should construe “employing said at least one electric
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`motor to propel said vehicle when the torque RL required to do so is less than said
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`lower level SP” as “employing said at least one electric motor to propel said vehicle
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`when a comparison of the RL to said lower level (SP) results in a determination that
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`the torque RL required to do so is less than said lower level SP.” Second, the Board
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`should construe “employing said engine to propel said vehicle when the torque RL
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`required to do so is between said lower level SP and MTO” as “employing said
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`engine to propel said vehicle when a comparison of the RL to said lower level (SP)
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`and MTO results in a determination the torque RL required to do so is between said
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`lower level SP and MTO.” Third, the Board should construe “employing both said
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`at least one electric motor and said engine to propel said vehicle when the torque RL
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`required to do so is more than MTO” as “employing both said at least one electric
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`motor and said engine to propel said vehicle when a comparison of the RL to MTO
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`results in a determination the torque RL required to do so is more than MTO.” See
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`claim 23.
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`The broadest reasonable interpretation of these limitations requires that the
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`controller (or method of control) employ the motor and/or engine based on a
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`comparison of road load to setpoint and a maximum torque output of the engine.
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`First, the intrinsic evidence of the ’347 patent, including the claims and the
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`specification, makes clear that the invention is directed to a control algorithm for
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`selecting operating modes based on the comparison of road load to SP and MTO.
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`The plain language of the claims makes clear that a comparison of road load to SP
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`and MTO is required. For example, the requirement in the challenged claims of
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`“employing said engine to propel said vehicle when the torque RL required to do so
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`is between said lower level SP and MTO” makes clear to a person of ordinary skill
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`in the art that road load must be compared to SP and MTO—otherwise, the language
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`following the word “when” would be rendered superfluous. See Ex. 2406 at ¶ 36.
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`It is axiomatic that “[c]laims should not be construed so as to render terms redundant
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`or superfluous.” Microsoft Corp. v. Surfcast, Inc., IPR2013-00292, IPR2013-00293,
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`IPR2013-00294, IPR2013-00295, Paper No. 93 at 11-12 (PTAB Oct. 14, 2014)
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`(citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims
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`are interpreted with an eye toward giving effect to all terms in the claim.”)); see also
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`Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A
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`claim construction that gives meaning to all the terms of the claim is preferred over
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`one that does not do so.”). In other words, the term “when” must be understood to
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`have causative effect. To interpret the challenged claims to require mere coincidence
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`would be a construction “divorced from the specification and the record evidence”
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`and inconsistent with “the one that those skilled in the art would reach.” Microsoft
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`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re NTP,
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`Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). Next, the specification of the ’347 patent
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`specifically describes a control algorithm, depicted in Fig. 9, that selects operating
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`modes by comparing road load to SP and MTO. See Ex. 1401 at Fig. 9; col. 41:66-
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`42:2; see also id. at 40:47-50; id. at 41:10-14; id. at 41:36-39.
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`This Board has previously recognized that the claims require a comparison of
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`road load to setpoint. See Inst. Dec. at 8 (“Petitioner correctly notes that the claims
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`compare the setpoint either to an engine torque value or a torque based ‘road load’
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`value.”). Even Ford appears to concede that the claims of the ’347 patent require a
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`comparison of road load to setpoint and MTO. For example, Ford explains:
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`All claims recite a “setpoint” or “SP” value being compared to either:
`(1) an engine torque value (e.g., claim [23.11]); or (2) a torque based
`“road load” value (e.g., claim [23.7]). Likewise, the specification says
`“the microprocessor tests sensed and calculated values for system
`variables, such as the vehicle’s instantaneous torque requirement, i.e.,
`the ‘road load’ RL . . . against setpoints, and uses the results of the
`comparisons to control the mode of vehicle operation.” (Ex. 1401,
`40:20-31.) To do so (e.g., whether “RL < SP”), the “setpoint” would
`have to be in the same measurement units as the “road load.”
`Pet. at 5 (emphasis added). Yet despite these admissions, Ford’s Petition makes
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`clear that it chose to ignore the comparison and causation requirements. Ford first
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`ignores the comparison between road load and setpoint, stating only that a torque
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`value (which Ford equates to a setpoint) would be “known” at each vehicle speed
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`along Ibaraki ’882’s power threshold and that the torque component of the “required
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`drive power” may be above or below that threshold. See, e.g., Pet. at 14, 16-17.
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`Likewise, Ford does not identify a comparison between road load and MTO, merely
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`stating that Ibaraki ’882 operates in an “ENGINE-MOTOR DRIVE mode” at
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`“vehicle drive torques above the IC engine’s MTO.” Id. at 21. By ignoring the
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`comparison and causation requirements, Ford has essentially construed the claims
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`to capture any control system where a torque value happens to be above/below a
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`threshold irrespective of the criteria used by the control system. Such an
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`interpretation of the claims is unreasonably broad and should be rejected.
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`Therefore, for the reasons expressed above, for purposes of this IPR, the
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`Board should: (1) construe “employing said at least one electric motor to propel said
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`vehicle when the torque RL required to do so is less than said lower level SP” as
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`“employing said at least one electric motor to propel said vehicle when a comparison
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`of the RL to said lower level (SP) results in a determination that the torque RL
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`required to do so is less than said lower level SP;” (2) construe “employing said
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`engine to propel said vehicle when the torque RL required to do so is between said
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`lower level SP and MTO” as “employing said engine to propel said vehicle when a
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`comparison of the RL to said lower level (SP) and MTO results in a determination
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`the torque RL required to do so is between said lower level SP and MTO;” and (3)
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`construe “employing both said at least one electric motor and said engine to propel
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`said vehicle when the torque RL required to do so is more than MTO” as “employing
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`both said at least one electric motor and said engine to propel said vehicle when a
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`comparison of the RL to MTO results in a determination the torque RL required to
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`do so is more than MTO.”
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`III. ARGUMENT
`Each of the three instituted grounds of unpatentability should be denied
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`because the claimed invention is novel and nonobvious. In particular, Ibaraki ’882
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`alone or in combination with any one of Vittone, Yamaguchi, Ibaraki ’626, Lateur,
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`Frank, and/or “known prior art systems” does not render the challenged claims
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`obvious.
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`Ford is Estopped from Maintaining its Challenges to Claim 23
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`A.
`First, Ford is estopped from maintaining its challenges to claim 23, pursuant
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`to 35 U.S.C. § 315(e)(1). Under section 315(e)(1), upon a “final written decision”
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`Ford “may not request or maintain a proceeding before the Office with respect to
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`that claim on any ground that the petitioner raised or reasonably could have raised
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`during that inter partes review.” Id. (emphasis added). Specifically, the Board
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`entered a final written decision in IPR2014-00571 and IPR2014-00579 on
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`September 28, 2015, many months before the deadline for a final written decision
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`here. See 37 C.F.R. § 42.100(c). Thus, the Board should reject the Petition with
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`respect to claim 23.
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`B. Grounds 1 through 7 are Deficient—Ford Has Failed to
`Demonstrate that Ibaraki ’882 Discloses or Renders Obvious the
`Features Recited in the Challenged Claims
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`For the reasons explained below, Grounds 1 through 7 are defective because
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`Ibaraki ’882 does not disclose or suggest each limitation of the challenged claims.
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`Ibaraki ’882 does not compare “road load” to “setpoint”
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`1.
`The challenged claims of the ’347 patent as properly construed (see Section
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`II.B.2) require the comparison of “road load (RL)” and “setpoint” to determine when
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`to turn the engine on. See, e.g., Ex. 1401 at claim 23 (“employing said engine to
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`propel said vehicle when the torque RL required to do so is between said lower level
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`SP and MTO”). Dr. Davis agreed that such a comparison is required because
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`“obviously you have to know if your road load is – where your road load is in
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`comparison to that setpoint.” Ex. 2408 at 40:13-15.
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`Road load (i.e., “the amount of instantaneous torque required to propel the
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`vehicle, be it positive or negative”) and “setpoint” (i.e., “predetermined torque
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`values that may or may not be reset”) are both unquestionably a measure of torque
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`according to the Board’s construction. Ibaraki ’882, however, discloses a
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`fundamentally different control strategy that compares demand power to power
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`thresholds to determine the operational mode of the vehicle. Power is not the same
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`as “road load” and a power based control strategy is vastly different. See Ex. 2411