`Tel: 571-272-7822
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`Paper 38
`Entered November 23, 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 IPR2014-00875
`Patent 7,559,388 B2
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
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`I.
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`INTRODUCTION
`
`A. Background
`Ford Motor Company (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 1–4, 6, 12, and 19 of U.S. Patent No. 7,559,388
`B2 (Ex. 1001; “the ’388 patent”). Paper 2 (“Pet.”). Paice LLC & The Abell
`Foundation, Inc. (collectively, “Patent Owner”) filed a Preliminary
`Response. Paper 8 (“Prelim. Resp.”).1 Pursuant to 35 U.S.C. § 314, we
`instituted inter partes review of the ʼ388 patent, on December 11, 2014,
`under 35 U.S.C. § 103(a), as to claims 1, 3, and 19 as obvious over Ehsani2
`and Vittone,3 claim 2 as obvious over Ehsani, Vittone, and Caraceni,4 claim
`6 as obvious over Ehsani, Vittone, and Fjällström,5 claim 12 as obvious over
`Ehsani, Vittone, and Yamaguchi,6 and claims 1, 3, 4, and 19 as obvious over
`Kawakatsu7 and Vittone. Paper 11 (“Dec.”).
`Patent Owner filed a Response (Paper 19, “PO Resp.”), and Petitioner
`filed a Reply (Paper 22, “Pet. Reply”). Patent Owner filed a Motion to Seal
`
`
`1 Patent Owner filed both redacted and unredacted versions of its
`Preliminary Response. Papers 7, 8. Our Decision cites to the redacted
`version, i.e., Paper 8, which is marked “Public.”
`2 U.S. Patent No. 5,586,613, issued Dec. 24, 1996 (Ex. 1003) (“Ehsani”).
`3 Oreste Vittone, Fiat’s Conceptual Approach to Hybrid Car Design, 12TH
`INTERNATIONAL ELECTRIC VEHICLE SYMPOSIUM (1994) (Ex. 1005)
`(“Vittone”).
`4 A. Caraceni et al., Hybrid Power Unit Development for Fiat Multipla
`Vehicle, SAE 981124 (1998) (Ex. 1006) (“Caraceni”).
`5 U.S. Patent No. 5,120,282, issued June 9, 1992 (Ex. 1007) (“Fjällström”).
`6 U.S. Patent No. 5,865,263, issued Feb. 2, 1999 (Ex. 1008) (“Yamaguchi”).
`7 U.S. Patent No. 4,335,429, issued June 15, 1982 (Ex. 1004)
`(“Kawakatsu”).
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`(Paper 9, “Mot.”). Oral hearing was held on July 1, 2015, and the hearing
`transcript has been entered in the record. Paper 35 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, we are persuaded that Petitioner has shown
`by a preponderance of the evidence that claims 1–4, 6, 12, and 19 of the
`ʼ388 patent are unpatentable.
`B. Related Proceedings
`Petitioner indicates that the ’388 patent is the subject of the
`proceedings in Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md.)
`and Paice LLC v. Hyundai Motor America, No. 1:2012-cv-00499 (D. Md.).
`Pet. 1–2.
`Additionally, Petitioner indicates that this Petition is related to
`IPR2014-00568, IPR2014-00570, IPR2014-00571, IPR2014-00579,
`IPR2014-00852, IPR2014-00884, IPR2014-00904, IPR2014-01415, and
`IPR2014-01416. Pet. 2; Paper 10, 1.
`C. The ʼ388 Patent
`The ’388 patent describes a hybrid vehicle with an internal
`combustion engine, two electric motors (a starter motor and a traction
`motor), and a battery bank, all controlled by a microprocessor that directs
`torque transfer between the engine, the motors, and the drive wheels of the
`vehicle. Ex. 1001, 17:7–47, Fig. 4. The hybrid vehicle features a hybrid
`control strategy that runs the engine only under conditions of high
`efficiency, typically when the vehicle’s instantaneous torque demand (i.e.,
`the amount of torque required to propel the vehicle at a desired speed) is at
`least equal to 30% of the engine’s maximum torque output (“MTO”). Id. at
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`20:28–35, 35:5–14; see also id. at 13:44–46 (“the engine is never operated at
`less than 30% of MTO, and is thus never operated inefficiently”).
`Running the engine only under efficient operating conditions leads to
`improved fuel economy and reduced emissions. Id. at 13:35–37. To achieve
`such efficiency, the hybrid vehicle includes different operating modes that
`depend on the vehicle’s instantaneous torque demand, the battery’s state of
`charge, and other operating parameters. Id. at 19:31–33. For example, the
`hybrid vehicle operates in: (1) an all-electric mode, where only the traction
`motor provides the torque to propel the vehicle, whenever operation of the
`engine would be inefficient (i.e., stop-and-go city driving); (2) an engine-
`only mode, where only the engine provides the torque to propel the vehicle,
`whenever the engine can run at an efficient level (i.e., highway cruising);
`(3) a hybrid mode, where the traction motor provides additional torque to
`propel the vehicle beyond that already provided by the engine, whenever the
`instantaneous torque demand exceeds the maximum torque output of the
`engine (i.e., while accelerating, passing, and climbing hills); and (4) a
`battery recharge mode where the engine operates a generator to recharge the
`battery while the traction motor drives the vehicle. Id. at 35:6–64.
`D. Illustrative Claim
`Petitioner challenges claims 1–4, 6, 12, and 19 of the ’388 patent. Pet.
`15–60. Claim 1 is illustrative of the claims at issue and is reproduced below:
`1. A hybrid vehicle, comprising:
`at least two wheels, operable to receive power to propel
`said hybrid vehicle;
`a first alternating current (AC) electric motor, operable to
`provide power to said at least two wheels to propel said hybrid
`vehicle;
`a second AC electric motor;
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`an engine coupled to said second electric motor, operable
`to provide power to said at least two wheels to propel the
`hybrid vehicle, and/or to said second electric motor to drive the
`second electric motor to generate electric power;
`a first alternating current-direct current (AC-DC)
`converter having an AC side coupled to said first electric motor,
`operable to accept AC or DC current and convert the current to
`DC or AC current respectively;
`a second AC-DC converter coupled to said second
`electric motor, at least operable to accept AC current and
`convert the current to DC;
`an electrical storage device operable to store energy
`converted to DC by said AC-DC converters and to provide
`energy to be converted to AC by at least said first AC-DC
`converter to power at least said first electric motor; and
`a controller;
`wherein a rate of change of torque output of said engine
`is limited to a threshold value, wherein when a rate of change of
`road load exceeds said threshold value of the rate of change of
`torque output of the engine, said controller is operable to
`operate said first motor and/or said second motor to supply
`additional power to at least said two wheels to supply
`remaining required torque.
`Ex. 1001, 56:42–57:5.
`E. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs.,
`LLC, 793 F.3d 1268, 1278–80 (Fed. Cir. 2015) (“Congress implicitly
`approved the broadest reasonable interpretation standard in enacting the
`AIA,” and “the standard was properly adopted by PTO regulation.”). Under
`the broadest reasonable interpretation standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one of ordinary
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`skill in the art in the context of the entire disclosure. In re Translogic Tech.
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`1. “road load (RL)”
`The term “road load” or “RL” is found in independent claims 1 and
`19. The specification describes “road load” as “the vehicle’s instantaneous
`torque demands, i.e., that amount of torque required to propel the vehicle at
`a desired speed.” Ex. 1001, 12:24–28 (emphasis added). Petitioner and
`Patent Owner agree that this definition of “road load” is consistent with its
`plain meaning and as it is commonly understood in the art. See PO Resp.
`23–24; Pet. Reply 2. Patent Owner argues “road load” should additionally
`account for external forces acting on the vehicle. PO Resp. 26–28 (citing
`Ex. 2003 ¶¶ 76–78); see Ex. 2003 ¶¶ 71, 73. Although external forces may
`play a role in the amount of torque required to propel the vehicle, we need
`not address them in order to construe the term “road load.” We see no
`reason to depart from the ʼ388 patent specification’s express definition of
`“road load” in terms of an amount of torque, such that “road load” is “the
`amount of instantaneous torque required to propel the vehicle.” See
`Ex. 1001, 11:46–48, 12:24–28, 35:14–17, 12:57–13:3, 37:13–15, 37:45–47,
`38:5–10.
`
`II. ANALYSIS
`A. Claims 1, 3, and 19 – Obvious over Ehsani and Vittone
`1. Overview
`Petitioner contends that claims 1, 3, and 19 of the ʼ388 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Ehsani and Vittone.
`Pet. 15–36. Petitioner provides citations for where each claim limitation is
`disclosed by Ehsani and Vittone. Id. Petitioner also articulates reasoning
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`with rational underpinnings on why a person of ordinary skill in the art at the
`time of the invention would have combined Ehsani and Vittone. Id. We
`have reviewed the Petition and supporting evidence and find that Petitioner
`has shown by a preponderance of the evidence that claims 1, 3, and 19 are
`obvious over Ehsani and Vittone. See id.
`2. Ehsani (Ex. 1003)
`Ehsani discloses an electrically peaking hybrid system and method of
`generating hybrid electric-combustion power. Ex. 1003, 1:14–17. The
`hybrid electric-combustion system includes an engine to generate
`mechanical energy, a battery to store and deliver electric energy, a drive
`mechanism coupled to the engine, and an electric machine coupled to the
`engine and battery. Id. at 2:45–56. The system has two modes of operation:
`in the first mode, the power requirements of the system exceed the power
`available from the engine and the electric motor draws energy from the
`battery to provide the engine with additional power; in the second mode, the
`power requirements are less than that being supplied by the engine and the
`electric motor acts as a generator to convert excess mechanical energy to
`electrical energy to be stored in the battery. Id. at 4:20–53.
`3. Vittone (Ex. 1005)
`Vittone discusses various motivations behind the development of
`hybrid cars, where parallel configuration of the propulsion system allows for
`short trips using only the electric motor driveline and long trips with
`performance close to that of conventional cars, but lower emissions.
`Ex. 1005,8 20. In hybrid mode, both the electric motor and the thermal
`
`8 Ex. 1005 includes page numbers indicated by the publication itself and
`different page numbers provided by Petitioner. Our references are to the
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`engine are active and the torque is split between the two drivelines to assure
`good drivability, to optimize the consumptions, and to reduce emissions. Id.
`at 26. The thermal engine is set to a maximum torque and the electric motor
`supplies additional torque to meet the total torque required. Id. at Fig. 8.
`4. Analysis
`Petitioner contends that claims 1, 3, and 19 of the ʼ388 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Ehsani and Vittone.
`Pet. 15–36. Petitioner provides citations for where each claim limitation is
`disclosed by Ehsani and Vittone, contending that each of the claim
`limitations are disclosed by Ehsani, except for the “wherein” limitation. Id.
`Petitioner argues that Vittone discloses the “wherein” limitation. Id.
`Petitioner also articulates reasoning with rational underpinnings on why a
`person of ordinary skill in the art at the time of the invention would have
`combined Ehsani and Vittone. Id. We have reviewed the Petition and
`supporting evidence and find that Petitioner has shown by a preponderance
`of the evidence that claims 1, 3, and 19 are obvious over Ehsani and Vittone.
`See id.
`Patent Owner argues that (a) Vittone fails to disclose “road load,” (b)
`Vittone fails to disclose limiting a rate of change of engine torque output to a
`threshold value, (c) Vittone fails to disclose operating the first and/or second
`AC motor to supply the remaining required torque when a rate of change of
`“road load” exceeds the threshold value, and (d) a person with ordinary skill
`in the art would not have combined Ehsani and Vittone in the manner
`
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`page numbers provided by Petitioner and not the page numbers printed on
`the publication itself.
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`asserted by Petitioner. PO Resp. 20–38. Patent Owner presents these same
`arguments for claim 3. PO Resp. 37–38. For the foregoing reasons, we are
`not persuaded by Patent Owner’s arguments that claims 1, 3, and 19 are
`patentable over Ehsani and Vittone.
`a. “Road Load”
`Patent Owner argues that Vittone fails to disclose “road load.” Id. at
`22–28. Patent Owner explains that Vittone discloses a “driveability torque
`requirement,” and Petitioner argues that “driveability torque requirement” is
`equivalent to “road load.” Id. at 22–23. Patent Owner further explains that
`Vittone discloses that “that the accelerator pedal position defines the
`requested torque to the drivetrain and that the driver, through the accelerator
`pedal position, sets the total traction torque, which is referred to as the
`driveability torque requirement.” Id. at 24 (citing Ex. 2003 ¶¶ 68–69).
`Patent Owner argues the total traction torque or the driveability torque
`requirement represents the accelerator pedal position, but does not represent
`“road load.” Id. (citing Ex. 2003 ¶¶ 68–69). Patent Owner argues that the
`accelerator pedal position controls the flow of fuel and air into the engine,
`which has “nothing to do with using ‘road load’ as part of a vehicle control
`strategy.” Id. at 24–26 (citing Ex. 2003 ¶¶ 68–69). Patent Owner argues
`that accelerator pedal position represents the driver’s request, not the
`instantaneous torque required to propel the vehicle. Id. at 27 (citing
`Ex. 2003 ¶ 74).
`We are not persuaded by Patent Owner’s arguments. As discussed
`above, we have interpreted “road load” to mean “the amount of
`instantaneous torque required to propel the vehicle.” See Section I.E.1.
`Vittone discloses the “driveability torque requirement” and the “total
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`traction torque,” and we agree with Petitioner that the plain meaning of
`“driveability torque requirement” and “total traction torque” is the torque
`required to propel the vehicle. Pet. Reply 2–3. Although Patent Owner
`argues that “driveability torque requirement” and “total traction torque” are
`represented by the accelerator pedal position (PO Resp. 24–26), Patent
`Owner and Patent Owner’s declarant, Mr. Hannemann, fail to provide any
`persuasive argument or evidence that the “driveability torque requirement”
`and the “total traction torque” do not represent the torque required to propel
`the vehicle.
`We further credit the testimony of Dr. Stein, who explains that a
`person with ordinary skill in the art would have understood that the
`“driveability torque requirement” and the “total traction torque” represent
`the instantaneous torque required to propel the vehicle. Pet. Reply 2–3
`(citing Ex. 1002 ¶ 173); Pet. 22–24. Contrary to Patent Owner’s argument,
`Dr. Stein explains that, although Vittone discloses the “driveability torque
`requirement” and the “total traction torque” are based on accelerator pedal
`position, “driveability torque requirement” and “total traction torque” are
`based also on other factors, including brake pedal position. Pet. Reply 3–4
`(citing Ex. 1028 ¶¶ 20–30); Pet. 22–24. Therefore, the “driveability torque
`requirement” and the “total traction torque” do not only represent the
`accelerator position.
`Patent Owner further argues that Vittone fails to disclose “road load”
`because Vittone’s “driveability torque requirement” does not take into
`account external torque requirements, such as driving conditions and also
`does not take into account operating conditions. PO Resp. 27–28 (citing
`Ex. 2003 ¶¶ 72, 75). We are not persuaded by this argument because we
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`decline to import “external torque requirements” into our interpretation of
`“road load,” as discussed above. See Section I.E.1.
`Accordingly, we are persuaded by Petitioner that “driveability torque
`requirement” and “total traction torque” represent the instantaneous torque
`required to propel the vehicle and, therefore, Vittone discloses “road load.”
`b. “Rate of Change of Torque Output of Said Engine is Limited
`to a Threshold Value”
`Patent Owner argues Vittone fails to disclose limiting a rate of change
`of engine torque to a threshold value. PO Resp. 28–31. Patent Owner
`specifically argues that Vittone discloses that the “the total traction torque is
`split between the engine and the electric motor and that the electric motor is
`used to assist the engine when the pedal position changes (i.e., during
`acceleration) and when the pedal position indicates that the total traction
`torque is greater than the maximum engine torque,” however, Vittone does
`not disclose that the slope of the engine torque output is limiting the rate of
`change of engine torque to a threshold value. Id. at 28–29 (citing Ex. 2003
`¶ 77). Patent Owner also argues that, although Vittone discloses “how the
`total traction torque is split between the engine and electric motor, it does
`not specify the management strategy of the IC engine,” and Vittone does not
`disclose how “steady state” management of the thermal engine is
`accomplished. Id. at 30–31 (citing Ex. 2003 ¶ 79).
`We are not persuaded by Patent Owner’s arguments. Vittone
`discloses that the “driveability torque requirement” or the “total traction
`torque” (i.e., “road load”) is split between the two drivelines, the thermal
`engine and the electric motor. See Pet. 24 (citing Ex. 1005, 26). Vittone
`further discloses that in order to reduce emissions, a “steady state”
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`management is used during transient phases, where the thermal engine is
`supported by the electric motor in order to meet the required torque. See id.
`at 23–26 (citing Ex. 1005, 26, 29, 30); Pet. Reply 7–10. We further credit
`the testimony of Dr. Stein, who explains that Vittone discloses that during
`transient phases, the “driveability torque requirements” or “road load”
`increases at a constant rate. Ex. 1002 ¶¶ 177–178, 181 (citing Ex. 1005, Fig.
`8); Pet. Reply 7–10. Dr. Stein further explains that Vittone discloses that
`during two different transient phases, each transient phase representing a
`different rate of change of “road load,” the rate of change of torque output of
`the engine is approximately the same value. Id. Dr. Stein explains that this
`common rate of change of torque output of the engine is due to the “steady
`state” management of the thermal engine that limits its rate of change of
`torque output and the common value is a threshold value. Id. Therefore, Dr.
`Stein concludes that Vittone discloses “rate of change of torque output of
`said engine is limited to a threshold value.”
`Accordingly, we are persuaded by Petitioner that a person with
`ordinary skill in the art would have understood that Vittone’s “steady state
`management” of the thermal engine meets the limitation of the “rate of
`change of torque output of said engine is limited to a threshold value.”
`c. Operating the Motor to Supply Remaining Required Torque
`When a Rate of Change of Road Load Exceeds the
`Threshold Value
`Patent Owner argues that Vittone fails to disclose “using the motor to
`supply remaining required torque when a rate of change of road load
`exceeds the threshold value.” PO Resp. 31 (citing Ex. 2003 ¶ 81). Patent
`Owner specifically argues that a person with ordinary skill in the art would
`have understood that Vittone discloses “the electric motor is used to assist
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`the engine when there is a change in pedal position (i.e., during acceleration)
`and when the pedal position indicates that the total traction torque is greater
`than the engine’s maximum torque,” but Vittone fails to disclose using the
`electric motor to supply the remaining required torque when a rate of change
`of road load exceeds the threshold value. Id. at 30–31 (citing Ex. 1005, 25–
`26).
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`We are not persuaded by Patent Owner’s arguments. As discussed
`above, we are persuaded by Petitioner that Vittone discloses “road load” and
`the “rate of change of torque output of said engine is limited to a threshold
`value.” See Sections II.A.4.a, II.A.4.b. Vittone further discloses that when
`the rate of change of “driveability torque requirements” or “road load”
`exceeds the threshold of the rate of change of the engine torque output, the
`electronic control unit operates the electric motor to supply the remaining
`required torque to meet the “driveability torque requirements” or “road
`load.” See Pet. 26 (citing Ex. 1005, 26, 30; Ex. 1002 ¶¶ 182–188); Pet.
`Reply 10–11. Vittone discloses that this “steady state” management is done
`during transient phases in order to reduce emissions. Ex. 1005, 26, Fig. 8;
`See Pet. 26.
`d. Combination of Ehsani and Vittone
`Patent Owner argues that “it would not have been obvious to one of
`ordinary skill in the art to combine the control strategy of Ehsani with the
`control strategy of Vittone,” because Ehsani and Vittone are directed to very
`different engine control strategies. PO Resp. 32–33 (citing Ex. 2003 ¶ 83).
`Patent Owner explains that Ehsani discloses an engine that operates at a
`constant power output and uses the electric motor to supplement the engine
`when needed, or uses excess engine power for storage in the battery,
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`whereas Vittone discloses a hybrid mode, where both the electric motor and
`the engine are used based on accelerator position, and absent hindsight, “[i]t
`is even difficult to imagine what that system would look like.” Id. at 33–37
`(citing Ex. 2003 ¶¶ 84–86). Patent Owner argues that a person with ordinary
`skill in the art would not have combined Ehsani and Vittone because
`“maintaining constant power would require changing torque to keep the
`power output constant.” Id. at 35.
`We disagree with Patent Owner. Both Ehsani and Vittone are directed
`towards hybrid vehicles. See Pet. Reply 11 (citing Ex. 1003, 7:25–30; Ex.
`1005, 26). Ehsani and Vittone are directed also towards reducing emissions.
`Id. Ehsani discloses that a controller controls the engine with a
`predetermined trajectory of speed and power in order to improve efficiency
`and reduce emissions. Ex. 1003, 7:25–30. Vittone discloses expressly the
`“steady state” management of the thermal engine in order to reduce
`emissions. Ex. 1005, 26. We credit the testimony of Dr. Stein, who
`explains that “implementing a particular control strategy is a simple
`substitution of (or modification of) an existing control strategy that may not,
`and likely does not, even require changes to the underlying system
`architecture.” Ex. 1002 ¶¶ 253–254; Ex. 1028 ¶ 51. A person with ordinary
`skill in the art would have combined the elements of Ehsani and Vittone,
`and, therefore, such a reconstruction is not based in hindsight. A person
`with ordinary skill in the art would have looked to even further reduce the
`emissions of the Ehsani hybrid vehicle by implementing Vittone’s “steady
`state” management strategy. Accordingly, we agree with Petitioner that both
`Ehsani and Vittone are concerned with the same problem of reducing
`emissions in hybrid vehicles, and a person with ordinary skill in the art
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`would have been motivated to further reduce Ehsani’s emissions by
`implementing Vittone’s “steady state” management control strategy.
`Patent Owner further argues that Ehsani eliminates the need for a
`transmission, and, therefore, teaches away from Vittone’s use of a
`transmission. Id. (citing Ex. 1003, 2:59–63). Therefore, Patent Owner
`specifically argues that Ehsani is critical of a transmission and teaches away
`from Vittone. Id. We are not persuaded by this argument. First, Petitioner
`does not argue for modifying Ehsani’s hybrid vehicle to include Vittone’s
`transmission. See Pet. 35–36. Rather, Petitioner proposes the simple
`substitution or modification of Ehsani’s control strategy with Vittone’s
`control strategy. Id. Accordingly, whether Ehsani teaches away from the
`use of a transmission is not relevant.
`Furthermore, “[a] reference may be said to teach away when a person
`of ordinary skill, upon reading the reference, would be discouraged from
`following the path set out in the reference, or would be led in a direction
`divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v.
`Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations
`omitted). A reference does not teach away if it merely expresses a general
`preference for an alternative invention from amongst options available to the
`ordinarily skilled artisan, and the reference does not discredit or discourage
`investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
`(Fed. Cir. 2004). Ehsani proposes an advantage that can be gained without
`the use of a transmission, but does not discredit or discourage the use of a
`transmission. In fact, Ehsani discloses an embodiment that uses a
`transmission. Pet. Reply 13–14 (citing Ex. 1003, 8:6–11).
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`5. Conclusion
`We have reviewed the Petition and supporting evidence, along with
`Patent Owner’s arguments and evidence, and determine that Petitioner has
`shown by a preponderance of the evidence that claims 1, 3, and 19 are
`obvious over Ehsani and Vittone. See Pet. 15–38.
`B. Obviousness of Claim 2 over Ehsani, Vittone, and Caraceni
`1. Overview
`Petitioner contends that claim 2 of the ʼ388 patent is unpatentable
`under 35 U.S.C. § 103(a) as obvious over Ehsani, Vittone, and Caraceni.
`Pet. 36–39. Petitioner provides citations for where each claim limitation is
`disclosed by Ehsani, Vittone, and Caraceni. Id. Petitioner also articulates
`reasoning with rational underpinnings on why a person of ordinary skill in
`the art at the time of the invention would have combined Ehsani, Vittone,
`and Caraceni. Id. We have reviewed the Petition and supporting evidence
`and find that Petitioner has shown by a preponderance of the evidence that
`claim 2 is obvious over Ehsani, Vittone, and Caraceni. See id.
`2. Caraceni (Ex. 1006)
`Caraceni discloses a hybrid vehicle that features a power train that
`integrates a thermal engine with an electric motor. Ex. 1006, 29.9 Caraceni
`discloses a “Dual mode” configuration that includes the addition of an
`independent electric power train on the thermal vehicle, where the electric
`and thermal power trains operate in the alternative to meet the torque
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`9 Ex. 1006 includes page numbers indicated by the publication itself and
`different page numbers provided by Petitioner. Our references are to the
`page numbers as they are printed on the publication itself and not the page
`numbers provided by Petitioner.
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`requirements. Id. at 30–31. The driver selects between four operating
`modes: hybrid mode, electric mode, economy mode, and recharge mode. Id.
`at 33–34. The driver, through the accelerator pedal position, sets the
`required traction torque. Id. at 34. In hybrid mode, the torque requirements
`are split between the engine and motor to optimize fuel economy, emission,
`and driveability. Id.
`3. Analysis
`Petitioner contends that claim 2 of the ʼ388 patent is unpatentable
`under 35 U.S.C. § 103(a) as obvious over Ehsani, Vittone, and Caraceni.
`Pet. 36–39. Claim 2 recites “said threshold value is no more than about 2%
`per revolution.” Petitioner argues that Caraceni discloses this limitation. Id.
`Petitioner also articulates reasoning with rational underpinnings on why a
`person of ordinary skill in the art at the time of the invention would have
`combined Ehsani, Vittone, and Caraceni. Id. We have reviewed the Petition
`and supporting evidence and find that Petitioner has shown by a
`preponderance of the evidence that claim 2 is obvious over Ehsani, Vittone,
`and Caraceni. See id.
`Patent Owner argues that Caraceni discloses an “absolute” rate of
`change, whereas claim 2 requires a “relative” change. PO Resp. 39–40.
`Patent Owner explains that Caraceni discloses “torque gradients,” which are
`expressed as deca-Newton Meters per second. Id. Patent Owner argues that
`deca-Newton Meters per second are an absolute rate of change threshold,
`which is “fundamentally and mathematically different from the ‘2% per
`revolution’ threshold of claim 2.” Id. (citing Ex. 2003 ¶ 93).
`We are not persuaded by Patent Owner’s arguments. Claim 2 recites
`“said threshold value is no more than about 2% per revolution.” Claim 1
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`defines the “threshold value” as “a rate of change of torque output of said
`engine.” We agree with Petitioner that claim 2 does not require the rate of
`change to be expressed only as a “relative” change. See Pet. Reply 15. The
`“threshold value,” as defined by claim 1, broadly requires a “rate of change”
`without specifying whether that rate of change is “absolute” or “relative.”
`Patent Owner has not provided persuasive evidence that the scope of claim 2
`is narrowed to require a “relative” change. Accordingly, we are not
`persuaded by Patent Owner’s arguments that attempt to distinguish Caraceni
`from the claim 2 based on a “relative” rate of change of torque output from
`the engine.
`Patent Owner further argues that Dr. Stein’s calculations are flawed
`because Dr. Stein should not have used the maximum torque output
`(“MTO”) of the engine in calculating a rate of change threshold. PO Resp.
`41–42. Patent Owner specifically argues that a person with ordinary skill in
`the art would not have used MTO in calculating a rate of change of increase
`because the engine cannot increase its torque output at MTO. Id. (citing Ex.
`2003 ¶ 96). Patent Owner further argues that limiting the rate of change of
`torque output of the engine at MTO would be unsafe. Id.
`We are not persuaded by Patent Owner’s arguments. As discussed
`above, claims 1 and 2 do not limit the scope of the “threshold value” such
`that it cannot be applied from the MTO. Although Patent Owner argues that
`limiting the rate of change of torque output of the engine at MTO is unsafe,
`the claims do not address the consideration of safety.
`Petitioner contends that Caraceni discloses “torque gradient” values
`that can be converted to “% per revolution” values using engine speed and
`torque values, and “[f]orty of the forty-two torque gradient values disclosed
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`in Fig. 14 of Caraceni satisfy the ‘no more than about 2% per revolution’
`limitation of claim 2.” Pet. 37–38 (citing Ex. 1006, 4, Table 2; Ex. 1002
`¶¶ 255–273). We credit the testimony of Dr. Stein and are persuaded by Dr.
`Stein’s calculations in determining that Caraceni discloses “said threshold
`value is not more than about 2% per revolution.”