`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FORD MOTOR COMPANY
`
`Petitioner
`
`V.
`
`PAICE LLC & THE ABELL FOUNDATION
`Patent Owner
`
`Case IPR2015—0079O
`
`Patent‘ 7,23 7,634
`
`DECLARATION OF NEIL HANNEMANN
`
`IN SUPPORT OF THE PATENT OWNER’S RESPONSE
`
`PAIGE 2605
`Ford V. Paice 8. Abell
`|PR2015—00790
`
`PAICE 2416
`Ford v. Paice & Abell
`IPR2015-00794
`
`
`
`Case IPRZUIS-[}0'r'90
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`TABLE OF CONTENTS
`
`I .
`
`II.
`
`INTRODUCTION ......................................................................................... .. 1
`
`QUALIFICATIONS AND EXPERIENCE ................................................... ..3
`
`III.
`
`LEGAL UNDERSTANDING ....................................................................... ..6
`
`IV. DEFINITION OF A PERSON OF SKILL IN THE ART ............................ ..9
`
`V.
`
`TH.E ’634 PATENT ..................................................................................... ..10
`
`VI.
`
`CLAIM CONSTRUCTIONS ...................................................................... ..I3
`
`VII. ANALYSIS AND OPINIONS .................................................................... ..15
`
`A.
`
`The prior art references selected by Ford and Dr. Davis
`do not disclose using the required torque compared to a
`setpoint to determine when to operate the engine ............................. ..15
`
`1.
`
`2.
`
`3.
`
`Introduction to Ibaraki ’882 .................................................... ..15
`
`Ibaraki ’882 does not compare the torque required
`to setpoint ................................................................................ ..18
`
`Ibaraki ’382 does not disclose a setpoint that is
`“substantially less than MTO” ................................................ ..38
`
`Combining Yamaguchi with Ibaraki ’882 does not
`remedy the defects identified above with respect to
`Ibaraki ’882 ....................................................................................... ..41
`
`Combining Masding and other references with Ibaraki
`’882 does not remedy the defects identified above with
`respect to Ibaraki ’882 ....................................................................... ..42
`
`The proposed combination of Kawakatsu and .Ibaral<i
`’882 does not disclose or render obvious “wherein total
`
`torque available to the one or more wheels from the
`engine is no greater than total torque available from the
`first and second electric motors combined” ...................................... ..43
`
`B.
`
`C.
`
`D.
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`
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`Case IPRZOI 5-00790
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`E.
`
`Vittone does not disclose controlling the engine by
`limiting a rate of change of torque output of the engine ................... ..45
`
`1.
`
`2.
`
`3.
`
`4.
`
`Introduction to Vittone ............................................................ ..45
`
`Vittone does not disclose the torque required from
`the engine to propel the hybrid vehicle and/or to
`drive one or more of the first or the second moto1's
`
`to charge the battery ................................................................ ..47
`
`Vittone does not disclose limiting a rate of change
`of engine torque output ........................................................... ..52
`
`A person of ordinary skill in the art would not have
`been motivated to combine Ibaraki ’882 with
`
`Vittone ..................................................................................... ..53
`
`F.
`
`G.
`
`Combining Ibaraki ’882 with Ibaraki ’626 does not
`remedy the defects identified above with respect to
`Ibaraki ’882 ....................................................................................... ..54
`
`Suga’s vehicle does not relate to sizing a motor in a
`hybrid vehicle .................................................................................... ..55
`
`VIII. CONCLUSION ............................................................................................ -.58
`
`ii
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`Case IPR20 1 5-00?90
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`DECLARATION EXHIBITS
`
`Exhibit Number
`
`
`
`
`Ex. 2601
`
`Exhibit Name
`
`Table of Ford’s IPR Petitions
`
`U.S. Patent No. 8,214,097 File History
`Appendix A (Jan. 15, 2014)
`Declaration of Daniel A. Tishman in Support of
`Patent Owners’ Motion for Pro Hao Vice Admission
`
`Declaration of Neil Hannemann
`
`Neil Hannemann CV
`
`
`
`
`
`Gregory W. Davis, Deposition Tr. (IPR2015-00722,
`IPR2015—00784, IPR2015—00787, IPR.201S~00790,
`1PR2015—00791, IPR2015—0079-4, IPR2015-00795)
`(January 13, 2016)
`Hybrid Power Unit Development for Fiat Multipla
`Vehicle,” by A. Caraceni, G. Cipolla, and R.
`Barbiero, SAE Publication 981124 (1998)
`(“Caraceni”)
`Jeffery L. Stein, Deposition T1‘. (IPR2014-00875)
`Mar. 3, 2015L
`Gregory W. Davis, Deposition Tr. (IPR2014-00571,
`IPR2014-00579) Janua
`13, 2015
`
`
`
`
`
`iii
`
`EX. 2607
`
`Ex. 2608
`
`Ex. 2610
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`
`
`
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`Case lPR20l 5-00790
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`1, Neil Hannemann, hereby declare the following:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by counsel
`
`for Paice LLC and the Abell
`
`Foundation (collectively, “Paice” or “Patent Owner”) to investigate and analyze
`
`certain issues relating to the validity of claims of U.S. Patent No. 7,237,634 (“the
`
`’634 patent”).
`
`2.
`
`Specifically, for purposes of this declaration, I have been asked to
`
`analyze the arguments made by Ford Motor Company (“Ford” or “Petitioner”) in the
`
`matter of the Inter Parites Review of the ’634 patent, Case No. IPR2015-00790.
`
`I
`
`have reviewed Ford’s petition, along with the declaration of Ford’s expert, Dr.
`
`Davis, and the documents cited therein. I have reviewed the Patent Trial and Appeal
`
`Board’s (“the Board”) decision to institute, as well as the Board's claim
`
`constructions. My analysis is based on the Board’s claim constructions, unless I
`
`specifically note otherwise.
`
`3.
`
`I understand that the Board has instituted review ofthe following claims
`
`of the ’634 patent (the “challenged claims”): 4, 13-15, 25, 28, 29, 32, 67, and 79.
`
`4.
`
`I understand that Ford and Dr. Davis argue that the challenged claims
`
`are obvious over various combinations of U.S. Patent No. 5,789,882 to Ibaraki et al.
`
`(Ex. 1652) (“Ibaraki ’882”), U.S. Patent No. 5,865,263 to Yamaguchi (Ex. 1653)
`
`(“Yamaguchi”), P.W. Masding et al., A Microprocessor comfirolled Gearboxfor use
`
`1
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`
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`Case lPR20l5-00790
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`in electric and hybrid-electric vehicles, (Ex. 1654) (“Masding”), U.S. Patent No.
`
`4,335,429 to Kawakatsu (Ex. 1655) (“Kawakatsu”), Oreste Vittone et al., FIAT
`
`Research Centre, Fiat Conceptual Approach to Hybrid Car Design (Ex. 1656)
`
`(“Vittone”), U.S. Patent No. 6,003,626 to Ibaraki et al. (Ex. 1657) (“Ibaral<i ’626”),
`
`and U.S. Patent No. 5,623,104 to Suga (Ex. 1658) (“Suga”).
`
`5.
`
`My opinions are based on my review of the ’634 patent and each of the
`
`references on which Ford’s petition relies. Additionally, I have also reviewed the
`
`documents listed as exhibits to this declaration. Finally, my opinions are also based
`
`on my experience and work in the field of automotive engineering (as detailed
`
`further below). For the reasons discussed herein, I disagree with Ford and Dr. Davis.
`
`As I explain below, none of the prior art that Ford and Dr. Davis rely upon disclose
`
`using the “torque required” and setpoint to decide when to move between operating
`
`modes to maximize efficiency. This is a requirement of each challenged claim.
`
`Moreover, the cited do not disclose or render obvious other, additional limitations
`
`of the challenged claims, as set forth below.
`
`6.
`
`I am being compensated at the rate of $525 for each hour of service that
`
`I provide in connection with this matter. This compensation is not contingent upon
`
`my performance, upon the outcome of this matter, or upon any issues involved in or
`
`related to this matter.
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`
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`Case lPR20l 5-00790
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`II.
`
`QUALIFICATIONS AND EXPERIENCE
`
`7.
`
`My curriculum vitae is attached to this declaration as Ex. 2606, and
`
`contains a description of my work history, education, and accomplishments. I am an
`
`automotive engineer with over 25 years of experience in road and race vehicle
`
`engineering and design.
`
`8.
`
`I
`
`received a Bachelor of Science in Mechanical Engineering,
`
`Automotive option, from the General Motors Institute (now known as Kettering
`
`University) in 1981. My college thesis was entitled “Design of an Emissions
`
`Laboratory”, dated May 15, 1981.
`
`9.
`
`I worked for almost 20 years for Chrysler (then DaimIe1'Chrysler).
`
`During my assignment as the vehicle development engineer for the Dodge Viper I
`
`was responsible for certain aspects of emissions development and certification. This
`
`included scheduling and monitoring the durability cycle, coordinating emissions
`
`calibration and development. The Dodge Viper utilized a metal monolith catalytic
`
`converter. While a product development engineer at Chrysler,
`
`I also performed
`
`calibrations to Engine Control Modules (ECM).
`
`10.
`
`I spent two years as a Chief Engineer at Saleen Inc. While there, I was
`
`responsible for all vehicle design, design analysis and vehicle development.
`
`1 was
`
`also responsible for emissions certification for all Saleen models. Additionally, I
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`
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`Case IPR20l 5-007'90
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`was responsible for powertrain calibrations.
`
`I personally approved every final
`
`calibration that the engineers performed.
`
`ll.
`
`I was the Chief Engineer for the Ford GT, initially produced as a 2005
`
`model. In this role, I was responsible for all aspects of the performance of the Ford
`
`GT. This included drafting and approving the plan for all safety and certification
`
`testing, including emissions development and testing. I was also responsible for the
`
`decision on which engine to use for the vehicle. I also was the architect for the main
`
`structure of the vehicle and was responsible for all structural design, analysis, testing
`
`and development.
`
`12.
`
`As Chief Engineer
`
`responsible for design, design analysis and
`
`development for the Ford GT1 was involved in the emissions strategy, and the design
`
`of the emissions related components. Ford had yet to utilize a metal monolith
`
`catalytic converter and my experience at Chrysler with the Dodge Viper was a factor
`
`in convincing Ford to use this new (for them) technology.
`
`13.
`
`I worked as an Executive Director of Engineering for McLaren
`
`Automotive. While there,
`
`I was responsible for all aspects of engineering and
`
`technical integrity for their current and future products. My focus was on mid-engine
`
`sports cars for Mercedes-Benz, FMVSS 208 compliance for Mercedes—lV_IcLaren
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`SLR and future variants.
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`
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`Case IPR20l 5430790
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`14.
`
`I was a Senior Vice President at Aptera Motors, Inc. While at Aptera,
`
`I was involved in the development and testing of regenerative braking calibrations.
`
`I have also done this type of work for other consulting clients. These clients include
`
`those developing hybrid~electric Vehicles.
`
`15.
`
`In 1994 I performed a “Fresh eyes” review of the Chrysler Patriot
`
`concept vehicle, which was a turbine—electric hybrid sports-prototype racing car
`
`utilizing flywheel energy storage. My work included an overall design review and
`
`review of the testing plans. The Chrysler Patriot was a series hybrid configuration.
`
`16.
`
`In 2003 I designed the architecture for hybrid configurations for the
`
`MP4/ 12C sports car for MeLaren Automotive. The architecture design included
`
`consideration of the hybrid topology including the layout and packaging of the major
`
`components, motors, batteries, inverter, and controller. This p1'ocess included the
`
`design ofnumerous hybrid concepts and consideration of different components such
`
`as the motors. The McLaren concepts were parallel hybrid configurations.
`
`17.
`
`In 2009 I was also the program manager of a project for Kepler Motors.
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`I was responsible for program management for a hybrid sports car. As program
`
`manager, I was involved with the building and testing of hybrid prototypes. The
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`testing included both testing on dynarnometer test beds and testing of completed
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`Vehicles. A patent was awarded for the transaxle designed for this concept. The
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`Kepler Motion is a parallel “through the road” hybrid configuration.
`
`
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`Case [PR20 15-007"90
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`18.
`
`I have consulted on various electric and hybrid-electric vehicle projects.
`
`In 2008 I performed testing and development of the regenerative braking
`
`characteristics for an electric vehicle.
`
`I was also responsible for the overall design
`
`of the entire electric vehicle.
`
`In 2010 I provided safety consulting for a hybrid
`
`vehicle manufacturer. In 2010 I consulted for a start—up electric car company, where
`
`I was responsible for the design of a two seat NEV (Neighborhood electric vehicle).
`
`I was also the program manager for many systems on the vehicle. As the program
`
`managerl considered various batteries, including lithium ion and lead acid.
`
`19.
`
`In 2012 I analyzed the regenerative braking system performance
`
`characteristics of an existing hybrid vehicle. My analysis included vehicle testing.
`
`In 2013, I performed vehicle testing for handling stability of a hybrid vehicle being
`
`designed specifically for utility companies. The different modes of hybrid operation
`
`were considered for the effect of the stability of the vehicle, along with the effect of
`
`the battery placement.
`
`20.
`
`I am a named inventor of U.S. Patent No. 8,276,693 B2, October 2,
`
`2012, entitled “Powertrain, Vehicle, and Method with Electric Motors and Dual Belt
`
`Drive”, direct to a transaxle.
`
`III.
`
`LEGAL UNDERSTANDING
`
`21.
`
`I am informed by counsel for the Patent Owner and understand that
`
`statutory and judicially created standards must be considered to determine the
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`Case lPR20l 5-00';'90
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`validity of a patent claim. I have reproduced standards relevant to this declaration
`
`below, as provided to 1ne by counsel for Patent Owner and as I understand them.
`
`22.
`
`I am informed by counsel for the Patent Owner and understand that a
`
`patent claim is unpatentable as “anticipated” under 35 U.S.C. § 102 if it
`
`is
`
`determined that the claimed invention was previously known, and that all
`
`the
`
`limitations of the claim are described in a single prior art reference.
`
`I am informed
`
`by counsel for the Patent Owner and understand that, to anticipate a claim, a prior
`
`art reference must disclose, either expressly or inherently, each and every limitation
`
`of that claim and enable one of ordinary skill in the art to make and use the invention.
`
`23.
`
`I am informed by counsel for the Patent Owner and understand that a
`
`claim is unpatentable for obviousness under 35 U.S.C. § 103 “if the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinaljy skill
`
`in the art to which said subject matter
`
`pertains.” 35 U.S.C. § 103.
`
`I am informed by counsel for the Patent Owner and
`
`understand that obviousness may be based upon a combination of references.
`
`I am
`
`informed by counsel for the Patent Owner and understand that the combination of
`
`familiar elements according to known methods is likely to be obvious when it does
`
`no more than yield predictable results. However, I am informed by counsel for the
`
`Patent Owner and understand that a patent claim composed of several elements is
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`11
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`Case lPR20 l 5-007390
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`not proved obvious merely by demonstrating that each of its elements was,
`
`independently, known in the prior art.
`
`24.
`
`I am informed by counsel for the Patent Owner and understand that
`
`when a patented invention is a combination of known elements, a court must
`
`determine whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue by considering the teachings of prior art
`
`references, the effects of demands known to people working in the field or present
`
`in the marketplace, and the background knowledge possessed by a person having
`
`ordinary skill in the art.
`
`25.
`
`I am informed by counsel for the Patent Owner and understand that a
`
`patent claim composed of several limitations is not proved obvious merely by
`
`demonstrating that each of its limitations was independently known in the prior art. I
`
`am informed by counsel for the Patent Owner and understand that identifying a
`
`reason those elements would be combined can be important because inventions in
`
`many instances rely upon building blocks long since uncovered, and claimed
`
`discoveries almost of necessity will be combinations of what, in some sense,
`
`is
`
`already known.
`
`I am informed by counsel for the Patent Owner and understand that
`
`it is improper to use hindsight in an obviousness analysis, and that a patent's claims
`
`should not be used as a “roadmap.”
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`12
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`Case IPR20I 5430790
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`26.
`
`I am informed by counsel for the Patent Owner and understand that an
`
`obviousness inquiry requires consideration of the following factors: (1) the scope
`
`and content of the prior art; (2) the differences between the claims and the prior art;
`
`(3) the level of ordinary skill in the pertinent art; and (4) any objective indicia of
`
`non-obviousness, such as commercial success, long-‘felt but unresolved need, failure
`
`of others, industry recognition, copying, and unexpected results.
`
`27.
`
`I am informed by counsel for the Patent Owner and understand that all
`
`prior art references are to be looked at from the viewpoint of a person of ordinary
`
`skill in the art. Furthermore, obviousness is analyzed from the perspective of one of
`
`ordinary skill in the art at the time the invention was made.
`
`IV. DEFINITION OF A PERSON OF SKILL IN THE ART
`
`28.
`
`Based on my review of the ’634 patent, the documents cited by Ford
`
`and Dr. Davis, and my own knowledge and skill based on my experience in the
`
`automotive industry and with the design and control of hybrid electric vehicles, it is
`
`my opinion that a person of ordinary skill in the art in September of I 998' is a person
`
`who would have a combination of experience and education in the design and
`
`1 I understand that the ’63-4 claims priority to a provisional application filed on
`
`September 14, 1998.
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`I understand that in analyzing the Validity of the ’634 patent,
`
`that date should be used to gauge the skill of those in the art.
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`13
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`Case lPR2015«00790
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`development of mechanical systems or control systems, typically a Bachelor of
`
`Science degree in mechanical engineering or electrical engineering or similar field
`
`plus at least three years of experience in designing, implementing, testing, teaching,
`
`or otherwise working with automotive systems, control system logic, or a related
`
`field.
`
`I note that the differences between the level of skill above and the level of
`
`skill defined by Dr. Davis are minor and do not affect my opinions set forth below.
`
`V.
`
`THE ’634 PATENT
`
`29.
`
`The ’634 patent (Ex. 1650), entitled “Hybrid Vehicles,” issued on July
`
`3, 2007 from an application that claims priority to a provisional application filed on
`
`September 14, 1998. The ’634 patent discloses embodiments of a hybrid electric
`
`vehicle, with an internal combustion engine and two motors. One or both of the
`
`motors may be used to recharge the battery. Additionally, a microprocessor is
`
`employed to select different operating modes based on the vehicle’s instantaneous
`
`torque requirements, the state of charge of the battery bank, and other variables. See,
`
`e.g., id. at Abstract.
`
`30.
`
`An embodiment of the hybrid vehicle disclosed in the ’634 patent is
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`shown in Figure 3, reproduced below:
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`10
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`‘I4
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`Case lPR20l5-00790
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`:96. 3
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`‘B
`
`
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`31. As shown, a traction motor 25 is connected to the road wheels 34
`
`through a differential 32. A starter motor 21 is connected to the internal combustion
`
`engine 40. The motors 21 and 25 are functional as either motors or generators,
`
`depending on the operation of the corresponding inverter/charger units 23 and 27,
`
`which connect the motors to the battery bank 22. See id. at 26:19-30.
`
`32.
`
`These components are controlled by a microprocessor 48 or any
`
`controller capable of examining input parameters and signals and controlling the
`
`mode of operation of the Vehicle. See, e. g., id. at 26:3 l-27:25. For example, control
`
`of engine 40 is accomplished by way of control signals provided by the
`
`microprocessor to the electronic fuel injection (EFI) unit 56 and electronic engine
`
`management (EEM) unit 55. Control of (1) starting of the engine 40; (2) use of
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`motors 21 and 25 to provide propulsive torque; or (3) use of motors as generators to
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`provide regenerative recharging of battery bank 22, is accomplished through control
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`11
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`15
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`Case I[’R20l5-00790
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`signals provided by the microprocessor to the inverter/charger units 23 and 27. See,
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`e.g., id. at 26:64-27:25; 28:42—52.
`
`33.
`
`The hybrid vehicle may be operated in a number of modes based on
`
`comparing the vehicle’s instantaneous torque requirements (i. e. the “road load”), the
`
`engine’s maximum torque output, the state of charge of the battery, and other
`
`operating parameters.
`
`In an implementation of the ’634 patent, the microprocessor
`
`causes the vehicle to operate in various operating modes pursuant to its control
`
`strategy.
`
`34.
`
`For example, in mode I, the hybrid vehicle is operated as an electric car,
`
`with the traction motor providing all torque to propel the vehicle. Id. at 37:24-32. As
`
`the vehicle continues to he propelled in electric only mode, the state of charge of the
`
`battery may become depleted, and need to be recharged. In this case, the hybrid
`
`vehicle may transition to mode 11 to recharge the battery,
`
`in which the vehicle
`
`operates as in mode I, with the addition of the engine running the starter/generator
`
`motor to provide electrical energy to operate the traction motor and recharge the
`
`battery. Id. at 37:32-36. When the internal combustion engine can operate in its fuel
`
`efficient range based on an evaluation of the road load, the hybrid vehicle operates
`
`in mode IV, with the engine providing torque to propel the vehicle. Id. at 37:42-44;
`
`38151-6 1. In this mode, the motor may also provide torque in order to, for example,
`
`limit
`
`the rate of increase of engine output
`
`torque during operation to reduce
`
`12
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`16
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`Case IPR20l 5-00790
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`emissions.
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`Id. at 39:50 — 40:15. If the vehicle requires additional torque, such as
`
`for acceleration or passing, the vehicle may enter mode V, where the traction motor
`
`provides additional torque to propel the vehicle beyond that provided by engine 40.
`
`Id. at 38:1-9. The algorithm implemented by embodiments of the ’634 patent is
`
`illustrated in Fig. 9 reproduced below.
`
`
`
`1943
`
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`
`
`
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`no
`E.-a>ar;.(*: Y
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`
`no
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`40)BSD
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`
`KL: 3034» Y
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`BF I;-TD
`
`@ no
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`
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`'5
`
`5'l‘k9.T'|N.I'a MOIDR (‘.0
`
`See id. at 41:59 — 43:25.
`
`V1. CLAIM CONSTRUCTIONS
`
`35.
`
`I understand that in an inter partes review proceeding, the claims of a
`
`patent are to be given their broadest reasonable meaning as they would be unclerstoocl
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`13
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`17
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`Case lPR2015-00'x'90
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`by one of ordinary skill in the art, consistent with the specification of the patent.
`
`I
`
`understand that Board has construed the following terms in its institution decision.
`
`I have used these constructions in my analysis, which the Board adopted:
`
`“road load (RL)”
`
`
`
`
`“setpoint (SP)”
`“predetermined torque value that may or
`may not be reset.”
`
`“the amount of instantaneous torque
`required to propel
`the vehicle, be it
`positive or negative.”
`
`
`
`
`“mode I” / “low-load operation model” “a mode of operation of the vehicle, in
`which all torque provided to the wheels
`
`is supplied by an electric motor”
`
`
`
`
`
`
`“high—way cruising operation mode IV” “a mode of operation in which all torque
`provided to the wheels is supplied by the
`
`internal combustion engine”
`
`
`
`
`“acceleration operation mode V”
`“a mode of operation in which torque
`provided to the wheels is supplied by the
`
`internal combustion engine and at least
`
`one electric motor”
`
`
`36.
`
`In addition, counsel for Patent Owner has asked that in addition to
`
`applying the Board-adopted constructions that I apply an alternative construction of
`
`“setpoint (SP),” which requires that the setpoint be a value “at which a transition
`
`between operating modes may occur.” I also understand that Patent Owners have
`
`requested that
`
`the Board construe the challenged claims to make explicit
`
`the
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`14
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`Case IPR20l 5-00790
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`requirement that the challenged claims require a comparison between the required
`
`torque and setpoint. I agree with Patent Owners that the plain language of the claims
`
`requires such comparisons. Moreover, a person of skill in the art would certainly
`
`not interpret the challenged claims so broadly as to disregard the comparison of the
`
`required torque to setpoint and/or MTO as such comparisons are fundamental to the
`
`claimed control system. Otherwise, the language following the word “when” in
`
`limitations such as “wherein the controller is operable to operate the engine when
`
`torque required from the engine to propel the hybrid vehicle and/or to drive one or
`
`more of the first or the Second motors to charge the battery is at least equal to a
`
`setpoint (SP)” would be rendered superfluous. Throughout my declaration, I apply
`
`the constructions identified in the table above unless I specifically note otherwise.
`
`VII. ANALYSIS AND OPINIONS
`
`The prior art references selected by Ford and Dr. Davis do
`A.
`not disclose using the required torque compared to a setpoint to
`determine when to operate the engine
`
`1.
`
`Introduction to Ibaraki ’882
`
`37.
`
`Ibaraki ’882 describes a hybrid Vehicle and control system for selecting
`
`among an ENGINE DRIVE mode, MOTOR DRIVE mode, or ENG1NE—MOTOR
`
`DRIVE mode. See Ex. 1652 (“Ibaraki ’882”) at Abstract. The control system in
`
`Ibaraki ’882 is a power—based system: it calculates demand power based on pedal
`
`‘i5
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`19
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`Case lPR20 l 5~00790
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`position, and compares that demand power to certain power thresholds to determine
`
`whether to use the engine, motor, or some combination thereof.
`
`38.
`
`Ibaraki ‘S82 discloses that the system calculates the demand power, 1'. e.
`
`the “instantaneous drive power,” which Ibaraki ’882 refers to as “P1,.” Ibaraki ’882
`
`at 12:54-64.
`
`Ibaraki ’882 discloses that the “instantaneous drive power” can be
`
`calculated by the product of the engine speed and torque, the product of the motor
`
`speed and torque, or the accelerator‘ pedal position. Ibaraki ’882 at 12:54-64.
`
`39.
`
`In a rotational system like the drive shaft of a vehicle, power is the
`
`product of the torque on the shaft and the rotational speed of the shaft. Torque and
`
`speed are independent variables and can be measured.
`
`Power is a resultant
`
`calculated product and cannot be directly measured. As should be clear from that
`
`mathematical relationship, multiple different rotational speeds and torques can be
`
`multiplied together to get the same power. For example, the following table shows
`
`some exemplary speed and torque values (in revolutions per minute and Newton-
`
`meters respectively) that would produce 10.5 kW of power:
`
`10.5 kw of power
`
`IIIIIHNIIIII
`Illliilllll
`33.33333
`
`
`
`
`
`
`
`
`25
`
`16
`
`20
`
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`Case IPR20] 5430790
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`40.
`
`As shown in Fig. 10 below, Ibaraki ‘S82 determines at step Q8 whether
`
`or not to operate the engine to propel the vehicle based on the “instantaneous drive
`
`power” needed to propel the vehicle, 1'. e. “PL.” To do this, Ibaralci ’882 compares
`
`“Pi,” to a threshold power value “B,” and if the “instantaneous drive power” is
`
`greater than power threshold “B” the “Vehicle is driven with only the engine used as
`
`the drive power soI.11'ce.” Ibaraki ’882 at 20:3 8-47, 23:66 A 24:21.
`
`FIG. 10
`
`0'
`Q2
`*E¥%n“i‘:i=>‘%‘r‘:§FsE’6‘L>——/’,
`301
`& POSITION ?
`V55
`‘JER
`SHH-‘T
`"0
`AT "tr, *2'uE:5n 1' ?
`
`N0
`
`
`
`REGENEFIATIVE DRIVING
`DIODE SUB-ROUTINE
`
`VE
`STORING REGENE
`CHRHGING i°«lol0U#g|4-(‘DISH
`
`
`GALGUL$\3'|VIJl£inR|§LQUt
`
`FED
`
`05
`<’$-DC? < DOFI
`SOC-HT 500 < E ”
`YES
`A=A1
`
`03
`
`N0
`
`NU
`
`ELECTRIRKE‘;
`DFIIVEMODE
`SUB-fl0U'I'INE 016
`
`
`
`17
`
`21
`
`
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`Case lPR20l5-00790
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`Id. at Fig. 10. If the “instantaneous drive power” is less than threshold power value
`
`“B,” the “the vehicle is driven with only the motor as the drive power source.” See
`
`id. at 20:38-47, 24:6-ll.
`
`lbaraki ’882 does not disclose calculating or using the
`
`“torque required.” If the answer at step Q8 is yes, Ibaraki ‘S82 also compares “PL”
`
`to a second threshold power value “C” at step Q9. Ifthe “instantaneous drive power”
`
`is greater than power threshold “C” the vehicle is driven in “ENGINE—l\/IOTOR
`
`DRIVE mode.” In this mode, both the engine and the motor are selected as the drive
`
`power sources. See id. at 20:3 8-49, 24:16-21.
`
`Ibaraki ’882 does not compare the torgue reguired to
`2.
`setpoint
`
`41.
`
`The challenged claims of the ’634 patent each require the use of a
`
`“setpoint” compared to the “torque required” to determine when to turn the engine
`
`on. For example, claim 1 requires.
`
`wherein the controller is operable to operate the engine when
`torque required from the engine to propel the hybrid vehicle
`and/or to drive one or more of the first or the second motors to
`charge the battery is at least equal to a setpoint (SP)2
`
`2 I understand that neither Ford nor Dr. Davis contend that Ibaraki ’882 discloses
`
`“wherein the controller is operable to operate the engine when torque required
`
`from the engine
`
`to drive one or more of the first or the second motors to charge
`
`the battery is at least equal to a setpoint (SP).”
`
`18
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`22
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`Case lPR2015-00790
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`4-2.
`
`The Board has construed “setpoint” as a “predetermined torque value
`
`that may or may not be reset.” Therefore,
`
`the challenged claims require a
`
`comparison of the “torque required” to a “predetermined torque value that may or
`
`may not be reset” to determine when to employ the motor and when to employ the
`
`engine.
`
`43.
`
`In my opinion, Ibaraki ’882 discloses a fundamentally different control
`
`strategy that determines the demand power, as calibrated by the pedal position, and
`
`compares that demand power to power thresholds to determine whether to use the
`
`motor or the engine to propel the vehicle. Thus, under the Board’s constructions of
`
`“setpoint,” Ibaraki ’882 does not disclose or suggest comparing “a predetermined
`
`torque value” to the “torque required” to determine whether or not to use the engine
`
`to propel the vehicle.
`
`44.
`
`As I described above, Ibaraki ‘S82 determines the instantaneous drive
`
`power “PL,” (see Ibaraki ‘$82 at 12:54-64) and compares that to power thresholds
`
`“B” and “C” to determine whether to propel the car with the motor or the engine or
`
`some combination of the two (see Ibaraki ’882 at 20:38-49, 23:66 — 24:21). Ibaraki
`
`’882 does not disclose or suggest determining the “torque required” or using the
`
`“torque required,” nor does Ibaraki ‘S82 disclose or suggest comparing the “required
`
`torque” to a “predetermined torque Value.”
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`Case IPR20l5-00?'90
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`45.
`
`In my opinion comparing instantaneous drive power to a power
`
`threshold is fundamentally different than comparing the “torque required” to a
`
`“predetermined torque value.” First of all, torque is independent of vehicle speed
`
`where power clearly is not. This is made clear in the ’634 patent, which states that
`
`the “instantaneous torque necessary to propel the vehicle” is “independent of vehicle
`
`speed.” ’634 patent at 12:55-61.
`
`46.
`
`The equation for power is expressed as follows: Power = torque *
`
`speed. Speed is a component of power, and the equation shows that power is directly
`
`proportional to speed in the same way that power is proportional to torque. Thus,
`
`power will increase as speed increases, but the torque will remain the same as it is
`
`independent of speed. Consequently, a power—based control strategy would utilize
`
`the engine under conditions of high vehicle speed and low torque and under
`
`conditions of low vehicle speed and very high torque. The ’634 patent, however,
`
`operates the engine at relatively high torques across all engine speeds.
`
`47.
`
`Fig. 11 of Ibaraki ‘B82 (on which Dr. Davis relies), demonstrates how
`
`Ibaraki ’882’s power—based system is inextricably dependent on vehicle speed. Fig.
`
`1 1 illustrates a graph with “vehicle speed” on the X axis and “vehicle drive torque”
`
`on the Y axis. The power—based threshold B illustrated as “boundary line B” is a
`
`line of constant power and is thus equally dependent on the “vehicle speed” and
`
`“vehicle drive torque.”
`
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`24
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`Case IPRZOIS-00790
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`TORQUE
`
`
`
`VEHICLEDRIVE
`
`VEHICLE SPEED
`
`Ibaraki ‘S82 at Fig. ] 1.
`
`48.
`
`In my opinion, a person of skill in the art would recognize that both
`
`speed and torque are components of power; however,
`
`that person would not
`
`conclude that comparing the “torque required” is the same as comparing the
`
`“instantaneous drive power” to a power-based threshold. As I explained above,
`
`vehicle speed plays an important role in determining the