`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`FORD MOTOR COMPANY
`
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,104,347 to Severinsky et al.
`
`IPR Case No.: IPR2015-00794
`
`______________
`
`
`
`DECLARATION OF DR. GREGORY W. DAVIS IN SUPPORT
`OF INTER PARTES REVIEW UNDER 35 U.S.C. § 311 ET SEQ.
`AND 37 C.F.R. § 42.100 ET SEQ. (CLAIMS 23-30, 32, AND 39-41
`OF U.S. PATENT NO. 7,104,347)
`
`
`
`
`
`
`
`Page 1 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`TABLE OF CONTENTS
`
`
`EXHIBIT LIST ...................................................................................................................... 5
`
`I.
`
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ....................... 7
`
`II.
`
`RELEVANT LEGAL STANDARDS .................................................................. 14
`
`III. QUALIFICATIONS OF ONE OF ORDINARY SKILL IN THE ART ...... 15
`
`IV.
`
`STATE OF THE ART ............................................................................................ 16
`
`A.
`
`“Series” Hybrid Vehicle ......................................................................22
`
`B.
`
`“Parallel” Hybrid Vehicle ...................................................................26
`
`1.
`
`2.
`
`One-Motor “Parallel” Hybrid Vehicle ............................................ 28
`
`Two-Motor “Series-Parallel” Hybrid Vehicle ................................ 33
`
`a.
`
`b.
`
`“Switching” Two-Motor “Series-Parallel” Hybrid
`Vehicles .................................................................................... 37
`
`“Power-Split” Two-Motor “Series-Parallel” Hybrid
`Vehicles .................................................................................... 40
`
`C.
`
`Hybrid Vehicle “Control Strategies” .....................................................40
`
`V.
`
`CHALLENGED CLAIMS OF THE ’347 PATENT AND
`PROPOSED CLAIM CONSTRUCTIONS ........................................................ 54
`
`VI. OVERVIEW OF THE PRIOR ART .................................................................... 55
`
`A.
`
`B.
`
`C.
`
`U.S. Patent No. 5,789,882 to Ibaraki et al. (Ibaraki ’882) ......................55
`
`U.S. Patent No. 6,116,363 to Frank (Frank) ..........................................55
`
`Engineering Fundamentals of the Internal Combustion Engine
`(Pulkrabek) ...........................................................................................56
`
`D.
`
`Fiat Conceptual Approach to Hybrid Chars Design (Vittone) ..............56
`
`E.
`
`U.S. Patent No. 5,865,263 to Yamaguchi et al. (Yamaguchi) .................57
`
`Page 2 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`F.
`
`U.S. Patent No. 6,003,626 to Ibaraki et al. (Ibaraki ’626) ......................58
`
`G.
`
`Automotive Electronics Handbook (Jurgen) ........................................58
`
`H. U.S. Patent No. 5,823,280 (Lateur) .......................................................59
`
`VII. GROUND 1 – CLAIMS 23, 24, 28, 30, AND 32 ARE OBVIOUS
`OVER IBARAKI ’882 IN VIEW OF THE KNOWLEDGE OF A
`PERSON HAVING ORDINARY SKILL IN THE ART ................................ 59
`
`A.
`
`B.
`
`Independent Claim 23 ..........................................................................59
`
`Dependent Claim 24 ...........................................................................140
`
`C. Dependent Claim 28 ...........................................................................151
`
`D. Dependent Claim 30 ...........................................................................162
`
`E. Dependent Claim 32 ...........................................................................165
`
`VIII. GROUND 2 – CLAIM 29 IS OBVIOUS OVER IBARAKI ’882 IN
`VIEW OF THE KNOWLEDGE OF A PERSON HAVING
`ORDINARY SKILL IN THE ART AND THE TEACHINGS OF
`KNOWN PRIOR ART SYSTEMS ..................................................................... 178
`
`A. Dependent Claim 29 ...........................................................................178
`
`IX. GROUND 3 – CLAIM 39 IS OBVIOUS OVER IBARAKI ’882 IN
`VIEW VITTONE, AND THE KNOWLEDGE OF A PERSON
`HAVING ORDINARY SKILL IN THE ART ................................................. 191
`
`A. Dependent Claim 39 ...........................................................................191
`
`1.
`
`2.
`
`Reason to Combine ......................................................................... 191
`
`Analysis ............................................................................................. 197
`
`X. GROUND 4 – CLAIM 40 IS OBVIOUS OVER IBARAKI ’882 IN
`VIEW OF YAMAGUCHI, AND THE KNOWLEDGE OF A
`PERSON HAVING ORDINARY SKILL IN THE ART .............................. 204
`
`A. Dependent Claim 40 ...........................................................................204
`
`Page 3 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`XI. GROUND 5 – CLAIM 41 IS OBVIOUS OVER IBARAKI ’882 IN
`VIEW OF IBARAKI ’626, AND THE KNOWLEDGE OF A
`PERSON HAVING ORDINARY SKILL IN THE ART .............................. 209
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`A. Dependent Claim 41 ...........................................................................209
`
`1.
`
`2.
`
`Reason to Combine ......................................................................... 209
`
`Analysis ............................................................................................. 217
`
`XII. GROUND 6 – CLAIM 27 IS OBVIOUS OVER IBARAKI ’882 IN
`VIEW OF LATEUR, AND THE KNOWLEDGE OF A PERSON
`HAVING ORDINARY SKILL IN THE ART ................................................. 230
`
`A.
`
`B.
`
`Reasons to Combine ...........................................................................230
`
`Analysis ..............................................................................................233
`
`XIII. GROUND 7 – CLAIMS 25-26 ARE OBVIOUS OVER IBARAKI ’882
`IN VIEW OF FRANK AND THE KNOWLEDGE OF A PERSON
`HAVING ORDINARY SKILL IN THE ART ................................................. 240
`
`A.
`
`Reasons to Combine ..........................................................................240
`
`B.
`
`C.
`
`Dependent Claim 25 ..........................................................................246
`
`Dependent Claim 26 ..........................................................................262
`
`XIV. CONCLUSION ...................................................................................................... 270
`
`
`
`
`
`
`
`Page 4 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`
`
`
`Exhibit
`No.
`1401
`1402
`1403
`1404
`1405
`1406
`
`1407
`1408
`1409
`
`1410
`
`1411
`1412
`
`1413
`1414
`1415
`
`1416
`
`1417
`1418
`1419
`
`1420
`
`1421
`1422
`1423
`
`1424
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`EXHIBIT LIST
`
`Description
`US Patent 7,104,347
`Ford Letter to Paice
`US Patent 5,789,882
`US Patent 5,623,104
`US Patent 4,335,429
`Automotive Electronics
`Handbook (Jurgen)
`US Patent 5,823,280
`Declaration of Gregory Davis
`US Application 60-100095
`
`Excerpt of USPN 7,104,347 File
`History
`U.S. Patent No. 7,237,634
`7,237,634 File History (certified)
`
`Toyota Litigations
`Hyundai Litigation
`PTAB Decisions & Preliminary
`Response in 2014-00571
`Bosch Automotive Handbook
`(1996)
`US Patent 5,934,395
`US Patent 6,116,363
`Engineering Fundamentals of the
`Internal Combustion Engine
`Fiat Conceptual Approach to
`Hybrid Cars Design (Vittone)
`US Patent 5,865,263
`US Patent 6,003,626
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`1996 & 1997 Future Car
`Challenge
`
`Date
`Sept. 12, 2006
`Sept. 2014
`Aug. 4, 1998
`Apr. 22, 1997
`June 15, 1982
`
`
`Oct. 20, 1998
`
`Filed Sept. 11,
`1998
`n/a
`
`July 3, 2007
`n/a
`
`2005
`2013-2014
`
`
`Identifier
`’347 Patent
`
`Ibaraki ’882
`Suga ’104
`Kawakatsu ’429
`Jurgen
`
`Lateur
`Davis Dec.
`‘095 Provisional
`
`‘347 File History
`
`’634 Patent
`’634 Patent File
`History
`Toyota Litigation
`Hyundai Litigation
`
`
`Oct. 1996
`
`Bosch Handbook
`
`Aug. 10, 1999
`Sept. 12, 2000
`1997
`
`Koide
`Frank
`Pulkrabek
`
`Dec. 5-7, 1994
`
`Vittone
`
`Feb. 2, 1999
`Dec. 21, 1999
`Feb. 1994
`
`Yamaguchi
`Ibaraki ’626
`
`
`Feb. 1997 &
`Feb. 1998
`
`
`
`Page 5 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`
`
`Exhibit
`No.
`1425
`
`1426
`
`1427
`1428
`1429
`
`1430
`
`1431
`1432
`1433
`
`1434
`
`Date
`
`
`
`1998
`
`Description
`Introduction to Automotive
`Powertrain (Davis)
`History of Hybrid Electric
`Vehicle (Wakefield-1998)
`SAE 760121 (Unnewehr-1976)
`SAE 920447 (Burke-1992)
`Vehicle Tester for HEV (Duoba-
`1997)
`DOE Report to Congress (1994) April 1995
`
`Feb. 1, 1976
`Feb. 1, 1992
`Aug. 1, 1997
`
`SAE SP-1331 (1998)
`SAE SP-1156 (1996)
`Microprocessor Design for HEV
`(Bumby-1988)
`DOE HEV Assessment (1979)
`
`Feb. 1998
`Feb. 1996
`Sept. 1, 1988
`
`Sept. 30, 1979
`
`Identifier
`Davis Textbook
`
`Wakefield
`
`Unnewehr
`Burke 1992
`Duoba 1997
`
`1994 Report to
`Congress
`SAE SP-1331
`SAE SP-1156
`Bumby/Masding
`1988
`HEV Assessment
`1979
`EPA HEV Final
`Study
`IEEE Ehsani 1996
`
`1435
`
`EPA HEV Final Study (1971)
`
`June 1, 1971
`
`1436
`
`1437
`
`1438
`
`1439
`1440
`
`1441
`1442
`1443
`
`1444
`1445
`1446
`
`
`
`Propulsion System for Design for
`EV (Ehsani-1996)
`Propulsion System Design for
`HEV (Ehsani-1997)
`Critical Issues in Quantifying
`HEV Emissions (An 1998)
`WO 9323263A1 (Field)
`Toyota Prius (Yamaguchi-1998)
`
`US Patent 6,209,672
`SAE SP-1089 (Anderson-1995)
`1973 Development of the Federal
`Urban Driving Schedule (SAE
`730553)
`Gregory Davis Resume
`Gregory Davis Data
`U.S. Patent No. 4,407,132
`
`
`
`June 18, 2005
`
`Feb. 1997
`
`IEEE Ehsani 1997
`
`Aug. 11, 1998
`
`An 1998
`
`Nov. 25, 1998
`Jan. 1998
`
`April 3, 2001
`Feb. 1995
`1973
`
`9323263
`Toyota Prius
`Yamaguchi 1998
`’672 Patent
`SAE SP-1089
`SAE 1973
`
`
`
`Oct. 4, 1983
`
`
`
`Kawakatsu ’132
`
`Page 6 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`I, Gregory Davis, hereby declare as follows:
`
`1.
`
`I am making this declaration at the request of Ford Motor Company in
`
`the matter of inter partes review of U.S. Patent No. 7,104,347 (“the ’347 Patent”) to
`
`Severinsky et al.
`
`2.
`
`I am being compensated for my work in this matter at a rate of
`
`$315/hour. My compensation in no way depends on the outcome of this proceeding.
`
`3.
`
`In preparation of this declaration, I have studied the exhibits as listed in
`
`the Exhibit List shown above in my report. Each of the exhibits listed are true and
`
`accurate copies. The Exhibit list also includes true and accurate citations for each
`
`exhibit I have reviewed including a weblink, library of congress number or other
`
`markings denoting authenticity where applicable.
`
`4.
`
`
`
`In forming the opinions expressed below, I have considered:
`
`(a)
`
`The documents listed above as well as additional patents and
`
`documents referenced herein;
`
`
`
`(b) The relevant
`
`legal standards,
`
`including
`
`the standard for
`
`obviousness provided to me, and any additional documents cited in the body of
`
`this declaration; and
`
`
`
`(c) My knowledge and experience based upon my work and study in
`
`this area as described below.
`
`I.
`
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`5.
`
`I have provided my full background in the curriculum vitae that is
`
`Page 7 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`attached as Exhibit 1444.
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`6.
`
`I received my Bachelor of Science Degree in Mechanical Engineering
`
`from the University of Michigan, Ann Arbor in 1982 and my Master of Science
`
`Degree in Mechanical Engineering from Oakland University in 1986.
`
`7.
`
`Michigan.
`
`8.
`
`Further, I am a licensed “Professional Engineer” in the state of
`
`As shown in my curriculum vitae, most of my career has been in the
`
`field of automotive engineering, including numerous positions in both the academia
`
`and industry settings.
`
`9.
`
`After receiving my Master’s degree, I began work at General Motors
`
`where I had several assignments involving automotive design, advanced engineering
`
`and manufacturing. Over the course of my years at General Motors, I was involved in
`
`all aspects of the vehicle design process, from advanced research and development to
`
`manufacturing.
`
`10.
`
`Specifically, my work at General Motors included aspects of engine and
`
`fuel system design relating to the production of fuel sending units, and modeling the
`
`effects of fuels and EGR on vehicle performance and emissions.
`
`11. After leaving General Motors, I continued my education at the
`
`University of Michigan where I was awarded a Ph.D. in Mechanical Engineering in
`
`1991. My thesis was directed to automotive engineering including the design and
`
`development of systems and models for understanding combustion in automotive
`
`Page 8 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`engines.
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`12. Upon completion of my Ph.D., I joined the faculty of the U.S. Naval
`
`Academy where I led the automotive program in mechanical engineering. As part of
`
`my responsibilities while at the Academy, I managed the laboratories for Internal
`
`Combustion Engines and Power Systems.
`
`13.
`
`I further taught automotive and mechanical engineering courses while at
`
`the U.S. Naval Academy. Some of the courses I taught were directed specifically to
`
`design and operation of internal combustion engines in both conventional and hybrid
`
`vehicles. I also taught courses pertaining to the design and operation of hybrid
`
`vehicles.
`
`14.
`
`In addition to my work at the U.S. Naval Academy, I also served as
`
`faculty advisor for the USNA Society of Automotive Engineers (SAE). During this
`
`time, I served as project director for the research and development of hybrid electric
`
`vehicles.
`
`15. My work with regards to hybrid electric vehicles included extensive
`
`design and modifications of the powertrain, chassis, and body systems. This
`
`development work included the design, modifications and implementation of alternate
`
`fuel delivery and injection systems.
`
`16.
`
`Some of the hybrid electric vehicle work that I worked on at the U.S.
`
`Naval Academy was published in a bound 1994 SAE special publication. I have
`
`attached as Exhibit 1423 a true and accurate copy of the 1994 paper that was
`
`Page 9 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`submitted on behalf of my team for this competition. (Ex. 1423 [1993 Hybrid
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`Challenge].)
`
`17. While at the Naval Academy, I also taught classes in mechanical
`
`engineering at Johns Hopkins University.
`
`18.
`
`In 1995, I joined the faculty of Lawrence Technological University
`
`where I served as Director of the Master of Automotive Engineering Program and
`
`Associate Professor in the Mechanical Engineering Department.
`
`19. The master’s program in automotive engineering is a professionally
`
`oriented program aimed at attracting and educating practicing engineers in the
`
`automotive industry.
`
`20.
`
`In addition to teaching and designing the curriculum for undergraduate
`
`and graduate students, I also worked in the automotive industry closely with Ford
`
`Motor Company on the development of a hybrid electric vehicle.
`
`21.
`
`Specifically, I served as project director on a cooperative research project
`
`to develop and design all aspects of a hybrid electric vehicle. While in many instances
`
`we used standard Ford components, we custom designed many automotive
`
`subsystems. As part of this project, we completely redesigned and replaced the
`
`existing powertrain including the fuel storage, delivery and injection systems. We also
`
`did analytical and actual testing of the systems.
`
`22. While at Lawrence Technological University, I also served as the faculty
`
`advisor on several student based hybrid vehicle competitions that were sponsored
`
`Page 10 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`primarily by Ford Motor Company, General Motors Company, and Chrysler
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`Corporation.
`
`23. These competitions required the complete design of a hybrid vehicle,
`
`including the design of the powertrain. These competitions also required the complete
`
`design of the software and hardware required to control the hybrid vehicle.
`
`24. Attached as Exhibit 1424 [1996 and 1997 Futurecar Challange] are true
`
`and accurate copies of the competition papers that were submitted for the 1996 and
`
`1997 competitions for which I served as the faculty advisor. (Ex. 1424 [1996&1997
`
`Futurecar Challenge].)
`
`25. During my time at Lawrence Technological University, I further served
`
`as advisor for 145 automotive graduate and undergraduate project students. Many of
`
`the graduate students whom I advised were employed as full time engineers in the
`
`automotive industry. This service required constant interaction with the students and
`
`their automotive companies which included the major automotive manufacturers (e.g.,
`
`Ford, Chrysler, General Motors, Toyota, etc.) along with many automotive suppliers,
`
`including those that supply fuel delivery systems (e.g., Denso, Delphi and Bosch).
`
`26. Currently, I am employed as a Professor of Mechanical Engineering &
`
`Director of the Advanced Engine Research Laboratory (AERL) at Kettering
`
`University—formerly known as “General Motors Institute.”
`
`27. At Kettering University, I develop curriculum and teach courses in
`
`mechanical and automotive engineering to both undergraduate and graduate students.
`
`Page 11 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`For one of my classes on automotive powertrains, I and a fellow professor (Craig
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`Hoff) co-authored a textbook titled “Introduction to Automotive Powertrains.” A
`
`true and accurate copy of excerpts from this textbook is attached as Exhibit 1425
`
`[Davis Textbook]. The full version of this textbook is around 400 pages long and is
`
`used in my course to give engineering students an introductory understanding of the
`
`fundamentals of automotive engines, automotive transmissions, and how to select
`
`those components to provide the optimum compromise between acceleration
`
`performance, gradeability performance and fuel economy performance. (Ex. 1425
`
`[Davis Textbook] at 2.) Further, this textbook is based on my and Professor Hoff’s
`
`personal collection of class notes that we had been using to teach such fundamental
`
`automotive principles as far back as the mid-1990’s.
`
`28.
`
`Since coming to Kettering, I have advised over 90 undergraduate and
`
`graduate theses in automotive engineering. Further, I actively pursue research and
`
`development activities within automotive engineering.
`
`29. My work requires constant involvement with my students and their
`
`sponsoring automotive companies which have included not only those mentioned
`
`above, but also Walbro, Nissan, Borg Warner, FEV, Inc., U.S. Army Automotive
`
`Command, Denso, Honda, Dana, TRW, Tenneco, Navistar, and ArvinMeritor.
`
`30. As is further shown by resume, I have published over 50 peer reviewed
`
`technical articles and presentations involving topics in automotive engineering.
`
`31. Automotive and mechanical engineering topics covered in these articles
`
`Page 12 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`include development of hybrid vehicles, mechanical design and analysis of
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`components and systems, vehicle exterior design
`
`including aerodynamics,
`
`development of alternative fueled vehicles and fuel systems, thermal and fluid system
`
`design and analysis, selection and design of components and sub-systems for
`
`optimum system integration, and system calibration and control.
`
`32.
`
`I have also chaired or co-chaired sessions in automotive engineering at
`
`many technical conferences including sessions involving powertrain development and
`
`control in automotive engineering.
`
`33. Additionally, while acting as director of the AERL, I am responsible for
`
`numerous laboratories and undergraduate and graduate research projects, which
`
`include On-road and Off-road engine and chassis testing laboratories. Projects have
`
`included the design and development of fuel injection systems for off-road vehicles,
`
`fuel compatibility studies of vehicle storage and delivery systems, modification of fuel
`
`delivery systems to accommodate alternative fuels, the development of electric
`
`vehicles, and other extensive modifications and development of vehicular
`
`powertrains.
`
`34.
`
`I also serve as faculty advisor to the Society of Automotive Engineers
`
`International (SAE) of the local Student Branch and for the “SAE Clean Snowmobile
`
`Challenge,” and “SAE Aero Design” collegiate design competitions. At the national
`
`level, I have served as a director on the SAE Board of Directors, the Engineering
`
`Education Board, and the Publications Board.
`
`Page 13 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`35.
`
`Further, I have chaired the Engineering Education Board and several of
`
`the SAE Committees.
`
`36.
`
`I also actively develop and teach Continuing Professional Development
`
`(CPD) courses both for SAE and directly for corporate automotive clients. These
`
`CPD courses are directed to automotive powertrain, exterior body systems, hybrid
`
`electric vehicle design, and include extensive engine performance, emissions, and
`
`economy considerations. These courses are taught primarily to engineers who are
`
`employed in the automotive industry or governmental entities.
`
`37.
`
`Finally, I am a member of the Advisory Board of the National Institute
`
`for Advanced Transportation Technology at the University of Idaho. In addition to
`
`advising, I also review funding proposals and project reports of the researchers
`
`funded by the center.
`
`II. RELEVANT LEGAL STANDARDS
`
`38.
`
`I have been asked to provide opinions on the claims of the ’347 Patent
`
`in light of the prior art.
`
`39.
`
`It is my understanding that a claimed invention is unpatentable under 35
`
`USC § 102 if a prior art reference teaches every element of the claim. Further, it is my
`
`understanding that a claimed invention is unpatentable under 35 U.S.C. § 103 if the
`
`differences between the invention and the prior art are such that the subject matter as
`
`a whole would have been obvious at the time the alleged invention was made to a
`
`person having ordinary skill in the art to which the subject matter pertains. I also
`
`Page 14 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`understand that an obviousness analysis takes into account factual inquiries including
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`the level of ordinary skill in the art, the scope and content of the prior art, and the
`
`differences between the prior art and the claimed subject matter.
`
`40.
`
`It is my understanding that the Supreme Court has recognized several
`
`rationales for combining references or modifying a reference to show obviousness of
`
`the claimed subject matter. Some of these rationales include the following: combining
`
`prior art elements according to known methods to yield predictable results; simple
`
`substitution of one known element for another to obtain predictable results; a
`
`predictable use of prior art elements according to their established functions; applying
`
`a known technique to a known device to yield predictable results; choosing from a
`
`finite number of identified, predictable solutions, with a reasonable expectation of
`
`success; and some teaching, suggestion, or motivation in the prior art that would have
`
`led one of ordinary skill to modify the prior art reference or to combine prior art
`
`reference teachings to arrive at the claimed invention.
`
`III. QUALIFICATIONS OF ONE OF ORDINARY SKILL IN THE
`ART
`
`41.
`
`I have reviewed the ’347 Patent, those patents cited in the ’347 Patent as
`
`well as the prior art documents. Based on this review and my knowledge of hybrid
`
`electric vehicles, including my work on multiple hybrid vehicles during the course of
`
`the 1990’s, it is my opinion that a person of ordinary skill in the art would have either:
`
`(1) a graduate degree in mechanical, electrical or automotive engineering with at least
`
`Page 15 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`some experience in the design and control of combustion engines, electric or hybrid
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`electric vehicle propulsion systems, or design and control of automotive
`
`transmissions, or (2) a bachelor's degree in mechanical, electrical or automotive
`
`engineering and at least five years of experience in the design of combustion engines,
`
`electric vehicle propulsion systems, or automotive transmissions.
`
`42.
`
`I understand that this determination is made at the time of the invention,
`
`which I understand that the patentee purports as being the September 14, 1998 filing
`
`of U.S. Provisional Application No. 60/100,095 (“the ’095 Provisional,” Ex. 1409).
`
`As I also discussed in my “Qualifications and Professional Experience” (¶¶5-37)
`
`above, I am familiar with the level of knowledge and the abilities of a person having
`
`ordinary skill in the art at the time of the claimed invention based on my experience in
`
`the industry (both as an employee and as a professor).
`
`IV. STATE OF THE ART
`
`43.
`
`It is my opinion that hybrid-electric vehicles (hybrid vehicle) were
`
`conceived over 100 years ago in an attempt to combine the power capabilities of
`
`electric motors and internal combustion engines1 (ICE) to satisfy all the driver
`
`demand required to propel a vehicle. My opinion is supported by a true and accurate
`
`copy of excerpts from the 1998 textbook titled the “History of the Electric
`
`
`1 An engine could also be referred to as a “heat engine” and is commonly known to
`
`be a part of the overall “Auxiliary Power Unit” of a hybrid vehicle (i.e., “APU”).
`
`Page 16 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`Automobile” authored by Ernest Wakefield. (Ex. 1426 [Wakefield] at 11.)2
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`44.
`
`For instance, Wakefield describes a functioning hybrid vehicle that was
`
`designed and built by Justus Entz in May 1897. (Ex. 1426 [Wakefield] at 11-13.)
`
`45. My opinion is also supported by hybrid vehicle patents that I am aware
`
`extend as far back as 1909 for U.S. Patent No. 913,846 to Pieper that was granted for
`
`a “Mixed Drive Auto Vehicle.”
`
`46. As is explained by Wakefield, the hybrid vehicle disclosed by the Pieper
`
`patent was likewise assembled as a functioning hybrid vehicle that was publically used.
`
`(Ex. 1426 [Wakefield] at 13-14.)
`
`47. As is explained by Wakefield, well-known hybrid vehicles were built and
`
`publically used by Baker and Woods in 1917. (Ex. 1426 [Wakefield] at 21-23.)
`
`48.
`
` Based on my experience and knowledge a known goal of using hybrid
`
`vehicles is the possibility of operating the engine at its “optimum efficiency.” For
`
`instance, a 1976 SAE paper states:
`
`From almost
`
`the beginning of
`
`the Automotive Age, various
`
`combinations of drive systems have been tried in order to achieve
`
`vehicle performance characteristics superior to those that can be
`
`obtained using a single type of drive. These efforts have been made in
`
`the name of many worthwhile goals such as increased vehicle
`
`
`2 Ex. 1426 [Wakefield] is stated as being copyrighted in 1998 and available from the
`
`Society of Automotive Engineers (SAE). (Ex. 1426 [Wakefield] at 2.)
`
`Page 17 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`acceleration capability, audible noise reduction, operation of an
`
`engine or turbine at optimum efficiency, reduction of noxious
`
`emissions, and improved fuel economy.
`
`(Ex. 1427 [Unnewehr] at 1, emphasis added.)3
`
`49.
`
`It is my understanding that based on events in the 1970’s, a renewed
`
`interest in hybrid vehicles emerged as a means to combat the U.S. dependency on oil
`
`and to meet increased air pollution reduction goals. (See e.g., Ex. 1428 [Burke 1992] at
`
`34; Ex. 1429 [Duoba 1997] at 3.)5
`
`50.
`
`It is also my understanding that in 1976 the U.S. government enacted
`
`Public Law 94-413 pertaining to the “Electric and Hybrid Vehicle Research,
`
`Development, and Demonstration Act” that was to “encourage and support
`
`
`3 Ex. 1427 [Unnewehr] is a true and accurate copy of an SAE paper titled “Hybrid
`
`Vehicle for Fuel Economy” that was published by L.E. Unnewehr et al. that I
`
`understand was published on February 1, 1976.
`
`4 Ex. 1428 [Burke 1992] is a true and accurate copy of a SAE paper titled
`
`“Hybrid/Electric Vehicle Design Options and Evaluations” authored by Andrew
`
`Burke that I understand was published on February 1, 1992.
`
`5 Ex. 1429 [Duoba 1997] is a true and accurate copy of a paper titled “Challenges for
`
`the Vehicle Tester in Characterizing Hybrid Electric Vehicles” authored by Michael
`
`Duoba that I understand was published by the U.S. DOE on August 1, 1997.
`
`Page 18 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`accelerated research
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`into, and development of electric and hybrid vehicle
`
`technologies.” (Ex. 1430 [1994 Report to Congress] at 4.)6
`
`51. As a result of this law, it is my understanding that hybrid and electric
`
`vehicles were being developed by automotive corporations. (Ex. 1430 [1994 Report to
`
`Congress] at 4.)
`
`52.
`
`It is my understanding that during the 1980’s and 1990’s, Ford Motor
`
`Company and Toyota Motor Company were involved in the design and development
`
`of both hybrid and electric vehicles. (See e.g., Ex. 1427 [Unnewehr] at 1; Ex. 1431
`
`[SAE SP-1331]7 at 4-5.)
`
`53.
`
`It is further my understanding that collegiate competitions intensified
`
`hybrid vehicle research during the 1990’s starting with the 1993 Ford Hybrid Electric
`
`Vehicle Challenge. As indicated by Ex. 1423 [1993 Hybrid Challenge] I personally
`
`participated in the 1993 Ford Hybrid Electric Vehicle Challenge. (Ex. 1423 [1993
`
`Hybrid Challenge] at 6.) By 1994 these competitions had grown to include teams from
`
`
`6 Ex. 1430 [1994 Report to Congress] is a true and accurate copy of the “Electric and
`
`Hybrid Vehicles Program – 18th Annual Report to Congress for Fiscal Year 1994”
`
`that I understand was published by the U.S. Department of Energy in April 1995.
`
`7 Ex. 1431 [SAE SP-1331] is a true and accurate copy of excerpts from a SAE special
`
`publication that I understand was published in February 1998. (Ex. 1431 [SAE SP-
`
`1331] at 2.)
`
`Page 19 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`over 30 universities representing more than 800 students. (Ex. 1430 [1994 Report to
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`Congress] at 10.)
`
`54. As I mentioned in my “Qualifications and Professional” section above, I
`
`was personally involved with the U.S. Naval Academy’s hybrid vehicle design that was
`
`entered in the 1993 “Ford Hybrid Vehicle” and the 1994-1995 competitions. (Ex.
`
`1423 [1993 Hybrid Challenge] at 6.)
`
`55.
`
`I was also personally involved with Lawrence Technological University’s
`
`hybrid vehicle design that was entered in the 1996 and 1997 “Future Car” hybrid
`
`electric vehicle competitions. (Ex. 1424 [1996&1997 Futurecar Challenge] at 6, 23.)
`
`56. Based upon the level of research and development prior to 1998, it is my
`
`opinion that various hybrid vehicle “architectures” were well-known. (See e.g., Ex.
`
`1432 [SAE SP-1156] at 4, 7-8.)8 As I explain in more detail below, hybrid vehicle
`
`“architectures” included: (1) “series” hybrid vehicles (¶¶61-69 below); and (2)
`
`“parallel” hybrid vehicles (¶¶70-72 below). As I further explain in detail below,
`
`“parallel” hybrid vehicle architectures were known to include: (1) one motor “parallel”
`
`hybrid vehicle architectures (¶¶73-86 below); and (3) two motor “parallel” hybrid
`
`vehicle architectures (¶¶87-107 below).
`
`
`8 Ex. 1432 [SAE SP-1156] is a true and accurate copy of an SAE special publication
`
`titled “Strategies in Electric and Hybrid Vehicle Designs” that I understand was
`
`published in February 1996.
`
`Page 20 of 270
`
`
`
`FORD 1408
`
`
`
`
`
`
`
`
`Case No: IPR2015-00794
`Attorney Docket No. FPGP0101IPR6
`
`57. As I explain below, these varying hybrid vehicl