Case IPR2014-01416
`Attorney Docket No: 36351-0015IP2
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`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
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION
`Patent Owner
`
`Case IPR2014-01416
`Patent 7,237,634
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`FORD 1463
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`

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`Case IPR2014-01416
`Attorney Docket No: 36351-0015IP2
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ................................................................................................................. 1
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`II. CLAIM CONSTRUCTION ................................................................................................... 2
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`A. The District Courts’ Construction ................................................................................. 2
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`1.
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`“Setpoint” is used to mark a transition between operating modes ........................ 3
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`2.
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`“Setpoint” is not “predetermined” and is not limited to torque values ................. 6
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`III. DEFECTS IN THE INSTITUTED GROUNDS OF UNPATENTABILITY ....................... 6
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`A. Grounds 1 and 2 are Defective Because Ford Misapplies Severinsky to the
`Challenged Claims ........................................................................................................ 7
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`B. Ground 2 is Defective Because Ford Has Failed to Demonstrate that Severinsky in
`view of Frank Discloses or Renders Obvious the Features Recited in the Challenged
`Claims ......................................................................................................................... 16
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`1. Ground 2 is Defective Because Ford Has Failed to Demonstrate that Severinsky
`in view of Frank Discloses or Renders Obvious the Features Recited in Claim 80
` …………………………………………………………………………………..16
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`(a)
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`(b)
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`(c)
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`(d)
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`Severinsky in view of Frank does not disclose or render obvious “wherein
`said operating the internal combustion engine to propel the hybrid vehicle
`is performed when: the RL>the SP for at least a predetermined time; or the
`RL>a second setpoint (SP2), wherein the SP2 is a larger percentage of the
`MTO than the SP” ..................................................................................... 18
`
`Severinsky in view of Frank does not disclose or render obvious
`“operating an internal combustion engine of the hybrid vehicle to propel
`the hybrid vehicle when the RL required to do so is between the SP and a
`maximum torque output (MTO) of the engine…” .................................... 24
`
`i.
`
`Severinsky operates the engine to propel the vehicle based on speed,
`not road load (RL) ............................................................................ 25
`
`ii. Severinsky does not compare the road load to a setpoint (SP) ........ 33
`
`iii. Statements made in the ’634 Patent regarding Severinsky do not
`remedy the above-mentioned deficiencies ....................................... 38
`
`Severinsky in view of Frank does not disclose or render obvious
`“operating at least one electric motor to propel the hybrid vehicle when the
`RL required to do so is less than a setpoint (SP)”..................................... 44
`
`Severinsky in view of Frank does not disclose or render obvious a
`“setpoint” .................................................................................................. 46
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`2. Ground 2 is Defective Because Ford Has Failed to Demonstrate that Severinsky
`in view of Frank Discloses or Renders Obvious the Features Recited in Claim
`114 ....................................................................................................................... 48
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`C. Ground 1 is Defective Because Ford Has Failed to Demonstrate that Severinsky
`Discloses or Renders Obvious the Features Recited in the Challenged Claims ......... 49
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`1.
`
`Independent Claim 161........................................................................................ 49
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`2.
`
`Independent Claim 215........................................................................................ 50
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`D. Ground 3 is Defective Because Ford Has Failed to Demonstrate that Tabata ’201
`Discloses or Renders Obvious the Features Recited in the Challenged Claims ......... 51
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`1. Tabata ’201 does not disclose or suggest the use of “road load” or “setpoint” as
`required by claim 215. ......................................................................................... 51
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`IV. CONCLUSION .................................................................................................................... 60
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`Case IPR2014-01416
`Attorney Docket No: 36351-0015IP2
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
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`Clearwater Sys. Corp. v. Evapco, Inc.,
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`394 F. App'x 699, 705 (Fed. Cir. 2010) .............................................................................43, 44
`
`Fuji Photo Film Co. v. Int'l Trade Comm'n,
`386 F.3d 1095 (Fed. Cir. 2004)..................................................................................................6
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...........................................................................................................22, 54
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`PharmaStem Therapeutics, Inc. v. Viacell, Inc.,
`491 F.3d 1342 (Fed. Cir. 2007)................................................................................................44
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`Case IPR2014-01416
`Attorney Docket No: 36351-0015IP2
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`EXHIBITS
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`Exhibit Description
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`Declaration in support of pro hac vice motion
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`Dr. Gregory W. Davis Deposition Transcript (June 3, 2015)
`
`Excerpt from Neil Hannemann Deposition Transcript (April 7,
`2015)
`Declaration of Neil Hannemann
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`Dr. Gregory W. Davis Deposition Transcript (Jan. 13, 2015)
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`Excerpt from File History for U.S. Patent 8,214,097
`
`Integrated Microprocessor Control of a Hybrid i.c.
`Engine/Battery-Electric Automotive Power Train,” P.W.
`Masding, J.R. Bumby, Jan. 1990
`Masding, Philip Wilson (1988) “Some drive train control
`problems in hybrid i.c engine/battery electric vehicles,” Durham
`theses, Durham University
`Excerpt from McGraw-Hill Dictionary of Scientific and
`Technical Terms, Sixth Ed., 2003.
`Neil Hannemann CV
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`“Hybrid Power Unit Development for Fiat Multipla Vehicle,” by
`A. Caraceni, G. Cipolla, and R. Barbiero, SAE Publication
`981124 (1998)
`Dr. Gregory W. Davis Deposition Transcript (May 8, 2015)
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`
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`iv
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`Patent Owner
`Exhibit
`Number
`PAICE Ex.
`2101
`PAICE Ex.
`2102
`PAICE Ex.
`2103
`PAICE Ex.
`2104
`PAICE Ex.
`2105
`PAICE Ex.
`2106
`PAICE Ex.
`2107
`
`PAICE Ex.
`2108
`
`PAICE Ex.
`2109
`PAICE Ex.
`2110
`PAICE Ex.
`2111
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`PAICE Ex.
`2112
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`Case IPR2014-01416
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`
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`I.
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`INTRODUCTION
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`The Board instituted trial with respect to claims 80, 93, 98, 99, 102, 109, 114,
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`127, 131, 132, 135, 139, 142, 161, 215, 228, 232, 233, and 235–237 of U.S. Patent
`
`No. 7,237,634 (“the ’634 patent”) (“the Challenged Claims”) owned by Paice LLC
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`and The Abell Foundation (collectively, “Paice”) in view of a Petition requesting
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`inter partes review filed by Ford Motor Company (“Ford”). The Board instituted
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`trial on three ground of obviousness: (1) U.S. Patent No. 5,343,970 (“Severinsky”);
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`(2) Severinsky and U.S. Patent 5,842,534 (“Frank”); and (3) U.S. Patent Nos.
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`5,841,201 (“Tabata ’201”). This Response responds to the Petition, as informed and
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`narrowed by the Board’s Decision. All challenged claims are patentable over the
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`cited ground for the reasons set forth herein.
`
`Ford’s arguments with regards to the ’634 patent are fundamentally flawed.
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`The ’634 patent claims an improved control strategy that utilizes a parameter known
`
`as “road load” to decide when to move between operating modes to maximize
`
`efficiency and claims 80 and 114 claim a control strategy for employing road load-
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`based hysteresis in determining when to turn the engine on and off. None of the
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`cited prior art deals with this fundamental aspect of the ’634 patent claims.
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`Severinsky and Frank both explicitly recite hysteresis based on speed—not road
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`load. 1 As to Tabata, this reference was before the Examiner during prosecution, and
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`it discloses using power, not road load, as the guiding parameter to change modes.
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`Therefore, for the reasons detailed more fully herein, the Board should affirm
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`the patentability of claims 80, 93, 98, 99, 102, 109, 114, 127, 131, 132, 135, 139,
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`142, 161, 215, 228, 232, 233, and 235–237 of the ’634 patent.
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`II. CLAIM CONSTRUCTION
`
`In its Initial Decision the Board declined to construe any claim terms.
`
`Decision at 5. While the Challenged Claims are patentable under a plain and
`
`ordinary meaning of the claims, Patent Owner respectfully requests that the Board
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`adopt Patent Owner’s construction of “setpoint,” “a definite, but potentially
`
`variable value at which a transition between operating modes may occur.”
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`A. The District Courts’ Construction
`
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`1 The Board’s institution decision relies on Frank for the disclosure of road load-
`
`based hysteresis stating “Ford points to Frank as confirming it was well known to
`
`utilize a load-responsive time delay in a hybrid control strategy.” Decision at 7. But
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`Frank utilizes a speed-based hysteresis modified by the state of charge of the battery
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`(Ex. 1104 at 7:66 – 8:7) and Ford does not contend otherwise. Ex. 2102 at 14:19-
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`24; 53:15-25.
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`As an initial matter, Patent Owner notes that the Board’s construction of
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`“setpoint (SP)” is directly at odds with the construction adopted by two district
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`courts. The Board construed “setpoint (SP)” as “a predetermined torque value that
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`may or may not be reset.” The U.S. District Court for the Eastern District of Texas
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`and the U.S. District Court for the District of Maryland both have construed the
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`term “setpoint (SP)” to mean “a definite, but potentially variable value at which a
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`transition between operating modes may occur.”2 Judge Quarles of the District of
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`Maryland noted that “[Paice’s] proposed construction of “setpoint’ … is consistent
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`with the language of the claims and the intrinsic evidence.”3
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`B. “Setpoint” is “a definite, but potentially variable value at
`which a transition between operating modes may occur.”
`
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`1. “Setpoint” is used to mark a transition between
`operating modes
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`It is clear from the claims and the specification that a “setpoint” is not simply
`
`a numerical value divorced from the context of the rest of the control system. Rather,
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`“setpoint” serves the crucial function of marking the transition from one claimed
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`mode to another, and in particular, the transition from propelling the vehicle with
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`the motor to propelling the vehicle with the engine.
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`2 Ex. 1008; Ex. 1012
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`3 Ex. 1012.
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`The language of the claims makes clear that a “setpoint” marks a point at
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`which the vehicle may transition between two modes. For example, in claims 80,
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`114, 161, and 225, the “setpoint” marks the transition between a mode in which only
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`the motor propels the vehicle, to modes in which the engine also can be used to
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`propel the vehicle or charge the battery. See Ex. 1001 at claims 80, 114, 161, and
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`225. Dependent claim 6 similarly recites “…wherein the controller is further
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`operable to: monitor road load (RL) on the hybrid vehicle over time; and control
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`transition between propulsion of the hybrid vehicle by the first and/or the second
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`electric motors to propulsion by the engine responsive to the RL reaching the
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`SP…” See Ex. 1001 at claim 6 (emphasis added); see also id. at claims 8, 11, 19.
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`Further, the specification makes clear that a “setpoint” is synonymous with a
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`“transition point” between modes:
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`[I]n the example of the inventive control strategy discussed above, it is
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`repeatedly stated that the transition from low-speed operation to
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`highway cruising occurs when road load is equal to 30% of MTO. This
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`setpoint, referred to in the appended claims as "SP", and sometimes
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`hereinafter as the transition point (i.e., between operation in modes I
`
`and IV) is obviously arbitrary and can vary substantially, e.g., between
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`30-50% of MTO, within the scope of the invention.
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`See Ex. 1001 at 40:41-49; see also id. at 40:63-65 (“For example, in response
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`to recognition of a regular pattern as above, the transition point might be adjusted to
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`60% of MTO”); 41:4-8 (“It is also within the scope of the invention to make the
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`setpoint SP to which the road load is compared to control the transition from mode
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`I to mode IV somewhat "fuzzy" [sic], so that SP may vary from one comparison of
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`road load to MTO to the next depending on other variables”); 41:59-63 (“FIG. 9 thus
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`shows the main decision points of the control program run by the microprocessor,
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`with the transition point between mode I, low-speed operation, and mode IV
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`highway cruising, set at a road load equal to 30% of MTO”); 44:24-31 (“Further, as
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`noted above the transition points between modes I, IV, and V in particular may vary
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`in accordance with the operator's commands…”).
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`The “setpoint” marks the amount of “road load” at which the claimed control
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`system actively changes the vehicle from one mode to another (e.g. from motor
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`propulsion to engine propulsion). For example, dependent claim 16 clearly covers
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`a vehicle with a controller that is “operable to implement a plurality of operating
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`modes responsive to road load (RL) and the SP” (emphasis added). The challenged
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`patent recognizes the significant efficiencies to be gained by transitioning between
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`motor propulsion to engine propulsion in response to “road load.” See e.g., Ex. 1101
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`at 13:44-51 (“By comparison … the vehicle’s operating mode-that is, the selection
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`of the source of torque needed to propel the vehicle-is determined based on the
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`amount of torque actually required. In this way the proper combination of engine,
`
`traction motor, and starting motor is always available. This apparently simple point
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`has evidently been missed entirely by the art.”); see also id. at 13:52 – 14:2 (noting
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`that prior art references using vehicle speed to transition between modes “inherently
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`operate the engine under less efficient conditions”).
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`Without a proper construction, Ford is attempting to improperly read the
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`claims to broadly cover hybrid vehicle systems where transitions between modes
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`never occur, a clear error that is fundamentally contrary to the specification of the
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`’097 Patent. See Fuji Photo Film Co. v. Int'l Trade Comm'n, 386 F.3d 1095, 1098
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`(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). Therefore, Patent
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`Owner respectfully requests that the Board adopt Patent Owner’s construction of
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`“setpoint” to make clear that it is a value “at which a transition between operating
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`modes may occur.”
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`2. “Setpoint” is not “predetermined” and is not limited
`to torque values
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`Patent Owner does not agree with the Board’s construction in related IPRs
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`requiring the term “setpoint” to be “predetermined” and a “torque value” (see e.g.
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`IPR2014-00904, Paper 13, at 8), and reserves the right to appeal the Board’s
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`construction on these additional bases. While Patent Owner disagrees with the
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`Board’s construction of “setpoint” in the related IPRs, the Challenged Claims are
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`patentable under either construction.
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`III. DEFECTS IN THE INSTITUTED GROUNDS OF
`UNPATENTABILITY
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`A. Grounds 1 and 2 are Defective Because Ford Misapplies
`Severinsky to the Challenged Claims
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`By now the Board is well aware of Severinsky’s disclosure. The claims at
`
`issue in this particular proceeding, however, further elucidate the critical difference
`
`between the claimed control strategy (based on road load) and Severinsky’s control
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`strategy (based on speed). For example, claim 80 of the ’634 patent is directed to
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`applying hysteresis in determining when to turn the engine on based on the
`
`determined road load value by operating the engine “when: the RL>the SP for at
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`least a predetermined time; or the RL>a second setpoint (SP2), wherein the SP2 is a
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`larger percentage of the MTO than the SP.” Claim 80 unquestionably calls for a
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`road load-responsive hysteresis control strategy. Severinsky, on the other hand,
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`explicitly recites using “speed-responsive hysteresis” to determine when to turn the
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`engine off. Severinsky states that “[t]he engine will continue to run unless the engine
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`speed is reduced to 20-25 mph for a period of time, typically 2-3 minutes” and that
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`“[t]his speed-responsive hysteresis in mode switching will eliminate nuisance
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`engine starts.” Ex. 1103 at 18:38-42 (emphasis added).
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`As confirmed by Severinsky’s use of “speed-responsive hysteresis,”
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`Severinsky determines when to turn the engine off based on the speed of the vehicle.
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`Severinsky teaches that the engine is off and the motor is on in a mode called “low
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`speed” or “traffic” mode that is employed at low speeds. Ex. 2104 at ¶¶ 56-57.
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`Conversely, Severinsky teaches that the engine is turned on “after the vehicle
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`reaches a speed of 30-35 mph.” Ex. 1103 at 18:34-38. Severinsky calls this mode
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`“highway cruising mode.” See id. at 6:26-43; 10:52-53; 13:65 – 14:3. These
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`passages make clear that Severinsky teaches turning the engine on (i.e., transitioning
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`from “low speed” mode to “highway cruising” mode and vice versa) based on the
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`vehicle speed, and not the road load. Ex. 2104 at ¶ 57.
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`Thus, while both Severinsky and the ‘634 patent may have the same goal
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`(efficient engine operation), Severinsky and the ’634 patent accomplish that goal
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`using entirely different control strategies. Ford’s petition starts with the goal
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`(efficient engine operation) and works its way backwards (using impermissible
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`hindsight from the ‘634 patent itself) to recast the reference as a “road load”
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`reference based on a few selected statements taken out of context.
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`Ford’s makeover of Severinsky is based on confusing two important aspects
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`of hybrid control strategy, namely, when to operate the engine and how to operate
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`the engine once it is turned on. Ex. 2104 at ¶ 73; see also ¶¶ 41-49. The cited
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`portions on which Ford relies merely discuss in an aspirational sense aspects of how
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`to operate the engine. Id. at ¶ 73. But the Challenged Claims clearly are directed to
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`a control strategy about when to operate the engine. Id. These claims require that
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`the system start and stop the engine based on road load, and this fundamental concept
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`is simply not shown in Severinsky.
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`Ford’s entire argument is based on Severinsky’s disclosure of an aspirational
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`operating range of the engine—that the engine is to be operated between “60-90%
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`of its maximum torque.”4 Ex. 1103 at 20:63-67 (“It will be appreciated that
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`according to the invention the internal combustion engine is run only in the near
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`vicinity of its most efficient operational point, that is, such that it produces 60-90%
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`of its maximum torque whenever operated.”). An engine’s operating range refers to
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`the range of operating speeds, powers, or torques under which the engine is designed
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`to operate. Ex. 2104 at ¶¶ 36, 59. The goal of Severinsky is to operate the engine
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`within 60-90% of the engine’s maximum torque so that “the internal combustion
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`engine is run only in the near vicinity of its most efficient operational point.” Ex.
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`1103 at 20:64-65; Ex. 2104 at ¶¶ 58-59.
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`4 Ford focuses its Petition on this one instance in which the operating range is defined
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`in terms of torque. In proper context, this disclosure is related to improving fuel
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`economy for limiting carbon dioxide emissions in general. Ex. 1103 at 20:63 –
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`21:22. However, all other disclosures of a preferred engine operating range are
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`disclosed in terms of speed and power. Id. at 7:8-14, 8:28-30, and 17:67 – 18:2.
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`Ford never explains how this reference, properly taken as a whole, should be read as
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`torque-based.
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`That such a disclosure is aspirational is established by the ‘634 patent, which
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`notes that Severinsky “clearly discloses the desirability of operating an internal
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`combustion engine in its most efficient operating range.”) Ex. 1001 at 11:27-29
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`(emphasis added). Ford’s expert, Dr. Davis, refers to the 60-90% range as the
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`engine’s “sweet spot” (Ex. 1107 at ¶¶ 206-08) and agreed that maintaining engine
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`operation within the “sweet spot” is “a goal of hybrid vehicles” and “a goal in
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`conventional vehicles.” Ex. 2105 at 103:20 – 105:1. Thus, it is agreed that
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`Severinsky’s disclosure of a sweet spot is aspirational—it is the goal. Ex. 2104 at
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`¶¶ 39-49, 60-62. This goal, however, does not define the underlying control strategy.
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`Notably, the range of torques included in the operating range or in the “sweet
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`spot” are the range of potential output torques of the engine. Ex. 2104 at ¶¶ 37, 60.
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`The engine’s output torque is the amount of torque that the engine can produce in
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`order to, for example, move the wheels, recharge the battery, power accessories, etc.
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`Id. This output torque, however, is unrelated to input torque demands taught by the
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`’634 patent, for example, the instantaneous torque required to propel the vehicle (i.e.,
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`road load). Id. Thus, defining an operating range of an engine as between “60-90%
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`of its maximum torque” or defining a “sweet spot” merely tells a POSITA5 how to
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`preferably run the engine. Id. at ¶¶ 41, 61-62.
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`Severinsky’s teaching about how to operate the engine (in the engine’s “sweet
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`spot”) does not tell a POSITA when to operate the engine, i.e., when to turn the
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`engine on or off. Id. at ¶¶ 61-62. This is evident from the context of the passage on
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`which Ford relies. Severinsky states that “the internal combustion engine is run only
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`in the near vicinity of its most efficient operational point, that is, such that it produces
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`60-90% of its maximum torque whenever operated.”). Id. at 20:63-67 (emphasis
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`added). The use of the word “whenever” indicates that the “60-90%” requirement
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`is agnostic as to when the engine is turned on so long as the engine is operating
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`within that range once a determination is made to operate the engine. Id. at ¶ 62.
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`Moreover, Severinsky’s disclosure of an engine operating range between “60-
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`90% of its maximum torque” is in the context of improving fuel economy and
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`limiting carbon dioxide emissions in general. Ex. 1103 at 20:63 – 21:22. The range
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`is merely illustrative of the improvements that may be obtained and is unrelated to
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`5 The level of skill in the art is defined in the declaration of Mr. Hannemann. Ex.
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`2104 at ¶ 27. However, the differences between the level of skill described by Mr.
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`Hannemann and Dr. Davis do not affect the outcome.
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`hybrid modes or how to switch between these modes, for example, by turning the
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`engine on or off.
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`In addition, Dr. Davis admitted that defining the engine’s sweet spot does not
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`tell a POSITA when to employ the engine:
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`Q. [column] 21, line 34 through 38.
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`A. Okay.
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`Q. So the plain reading of this passage is that the engine is operated
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`near its sweet spot, right?
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`A. The -- that’s your goal, yes. You’re optimizing to try to ensure that
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`operation generally near the sweet spot, yes.
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`Q. But it doesn’t tell us when you start the engine, correct?
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`A. This paragraph does not.
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`Ex. 2105 at 164:22 – 165:7. Determining when to turn the engine on is an entirely
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`different question and is the key to actually maintaining engine operation within the
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`“sweet spot.” Dr. Davis agreed that there is not a single control strategy that would
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`maintain the engine within its sweet spot and identified numerous factors that must
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`be taken into account when developing a hybrid control strategy such as “multiple
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`vehicle hardware considerations,” “drivability considerations,” “different conditions
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`of the vehicle,” “different operating conditions,” and “different topologies of the
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`hybrid vehicle.” Ex. 2105 at 104:3-9, 106:4-8. Thus, Severinsky’s disclosure of a
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`“sweet spot” is merely the goal. A POSITA, however, would understand that
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`Severinsky must employ a control strategy that determines when to turn the engine
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`on in order to accomplish that goal. Ex. 2104 at ¶¶ 39, 62, 72.
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`As shown below, Ford’s petition conflates these two distinct concepts (i.e.,
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`when to operate the engine vs. how to operate the engine) by pointing to the engine’s
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`operating range (between “60-90% of its maximum torque”) as evidence of when
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`Severinsky determines to turn the engine on. Ex. 2104 at ¶¶ 73-74.
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`Severinsky ’970 discloses that “the internal combustion engine is run
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`only in the near vicinity of its most efficient operational point, that is,
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`such that it produces 60-90% of its maximum torque whenever
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`operated.” (Ex. 1103 at 20:63-66.) Engine operation is therefore
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`permitted only when the road load requirement is determined to be
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`between 60-90% of the engine’s maximum torque. (Ex. 1107, Davis
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`¶289.) Below the 60% setpoint value, the “electric motor alone drives
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`the vehicle forward.” (Ex. 1103 at 7:8-16; Ex. 1107, Davis ¶289.)
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`Petition at 32 (emphasis added). In other words, Ford argues that Severinsky
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`instructs a POSITA when to turn the engine on because it teaches that “the internal
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`combustion engine is run only in the near vicinity of its most efficient operational
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`point, that is, such that it produces 60-90% of its maximum torque whenever
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`operated.” Ex. 1103 at 20:63-66. Ford’s logic makes no sense because it requires
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`the output torque of the engine to be the parameter used to decide to start the engine.
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`It would be circular (and impossible) to turn the engine on or off based on the
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`engine’s output torque, output power, or output speed because these values are
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`always zero when the engine is off. Ex. 2104 at ¶¶ 77-79.
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`Yet, as illustrated below, this is the exact logic on which Ford and its expert
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`base its petition.
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`Severinsky ’970 also discloses that the engine is operated in its most
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`efficient conditions of output power and speed. When the output
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`power and speed are below the engine’s most efficient operating
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`condition, the motor is disclosed as being used to propel the vehicle.
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`Ex. 1107 at ¶ 226 (emphasis in original). If the engine is only employed in its most
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`efficient operating region, it is never the case that “the output power and speed are
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`below the engine’s most efficient operating condition” as Dr. Davis suggests. Ex.
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`2104 at ¶¶ 70-74. Dr. Davis admitted as much during his deposition. Ex. 2105 at
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`154:1-9; see also 152:9 – 154:9. This simple illustration reveals i) the fallacy on
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`which Ford’s petition is premised and ii) that a POSITA would not read Severinsky
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`as teaching using the output torque as a control metric. Ex. 2104 at ¶ 82.
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`The passages on which Ford relies make clear that the operating ranges
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`identified by Severinsky are representative of the output torque of the engine and
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`not the torque demand required to propel the vehicle. Ex. 1103 at 7:8-13 (“efficient
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`conditions of output power and speed”); id. at 7:8-13 (“produces 60-90% of its
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`maximum torque whenever operated”). In order to fix this problem, Ford (without
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`any basis for doing so or acknowledging its rhetorical sleight of hand) substitutes
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`the output torque with “the road load requirement.”
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`Case IPR2014-01416
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`Severinsky ’970 discloses that “the internal combustion engine is run
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`only in the near vicinity of its most efficient operational point, that is,
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`such that it produces 60-90% of its maximum torque whenever
`
`operated.” (Ex. 1103 at 20:63-66.) Engine operation is therefore
`
`permitted only when the road load requirement is determined to be
`
`between 60-90% of the engine’s maximum torque. (Ex. 1107, Davis
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`¶289.) Below the 60% setpoint value, the “electric motor alone drives
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`the vehicle forward.” (Ex. 1103 at 7:8-16; Ex. 1107, Davis ¶289.)
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`Petition at 32 (emphasis added). Such a conclusion does not logically follow. As
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`discussed above, it is illogical to start with the goal (running the engine in its “most
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`efficient operational point”) and from that goal derive the control strategy (a control
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`strategy that compares road load to a setpoint).
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`Finally, Ford’s allegation that the engine operating range is used to effect
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`mode switching is belied by Severinsky’s disclosure that the engine can operate in
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`inefficient ranges. Ex. 1103 at 18:23-33; Ex. 2104 at ¶¶ 111-12. Thus, Severinsky’s
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`teaching concerning operating the engine “only under the most efficient conditions”
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`must be understood as aspirational and not as a rigid method of control. Ex. 2104 at
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`¶ 132. In fact, Dr. Davis agreed that operating the engine in its “sweet spot” is “a
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`goal of hybrid vehicles” and “a goal in conventional vehicles” but that other factors
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`such as “drivability” and “operating conditions” must be considered. Ex. 2105 at
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`103:20 – 105:1; see also Ex. 2104 at ¶ 45.
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`At bottom, Ford’s reliance on the engine’s operating range (or “sweet spot”)
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`as evidence of mode switching is mistaken. It then follows that Ford’s contention
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`that the lower boundary of the engine’s operating range (i.e., 60% of the engine’s
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`maximum torque) is used as a “setpoint” is also wrong. Severinsky repeatedly and
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`directly states that its control system compares speed values to speed thresholds to
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`accomplish mode switching. This is the explicit teaching of the reference. Ford’s
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`reliance on the engine operating range to suggest implied mode switching or a
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`setpoint shows that Ford is using impermissible hindsight. Ford argues that because
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`both Severinsky and the ’634 patent have the same goal (efficient engine operation),
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`the two must accomplish the goal in the same manner. As described above, that
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`assumption is clearly wrong.
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`B. Ground 2 is Defective Because Ford Has Failed to Demonstrate
`that Severinsky in view of Frank Discloses or Renders Obvious
`the Features Recited in the Challenged Claims
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`1. Ground 2 is Defective Because Ford Has Failed to
`Demonstrate that Severinsky in view of Frank Discloses
`or Renders Obvious the Features Recited in Claim 80
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`Ford asserts that claim 80 is unpatentable under 35 U.S.C. § 103 over
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`Severinsky in view of Frank. Ford and Dr. Davis mischaracterize Severinsky by
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`twisting isolated passages and disregarding and glossing over other passages that
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`reveal important details of the operation of the vehicle disclosed in Severinsky.
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`Contrary to Ford’s assertions, Severinsky fails to disclose, for example, at least
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`“determining instantaneous road load (RL) required to propel the hybrid vehicle
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`responsive to an operator command,” “monitoring the RL over time,” “operating at
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`least one electric motor to propel the hybrid vehicle when the RL required to do so
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`is less than a setpoint (SP),” “operating an internal combustion engine of the hybrid
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`vehicle to propel the hybrid vehicle when the RL required to do so is between the
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`SP an