Trials@uspto.gov
`571-272-7822
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` Paper 12
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` Entered: November 2, 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 and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00794
`Patent 7,104,347 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

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`IPR2015-00794
`Patent 7,104,347 B2
`
`
`I.
`
`INTRODUCTION
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`Ford Motor Company (“Petitioner”) filed a Petition requesting an
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`inter partes review of claims 23–30, 32, and 39–41 of U.S. Patent
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`No. 7,104,347 B2 (Ex. 1401, “the ’347 patent”). Paper 1 (“Pet.”). Paice
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`LLC and The Abell Foundation, Inc. (collectively, “Patent Owner”) filed a
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`Preliminary Response in both unredacted and redacted forms. Papers 9, 10
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`(“Prelim. Resp.”).1 Patent Owner also filed a Motion to Seal. Paper 11
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`(“Motion to Seal”). We have jurisdiction under 35 U.S.C. § 314(a), which
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`provides that an inter partes review may not be instituted “unless . . . there is
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`a reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” After considering the
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`Petition, the Preliminary Response, and associated evidence, we conclude
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`that Petitioner has demonstrated a reasonable likelihood that it would prevail
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`in showing unpatentability of all the challenged claims, except claim 24.
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`Thus, we authorize institution of an inter partes review of claims 23, 25–30,
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`32, and 39–41 of the ’347 patent and we do not institute inter partes review
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`of claim 24 of the ʼ347 patent.
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`A. Related Proceedings
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`
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`Petitioner indicates that the ’347 patent is the subject of Paice, LLC
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`and The Abell Foundation, Inc. v. Ford Motor Company, Case No. 1-14-cv-
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`00492 and Paice LLC and The Abell Foundation, Inc. v. Hyundai Motor
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`America et. al., Case No. 1:2012-cv-00499. Pet. 1; Paper 5, 2. Petitioner
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`also indicates that the ʼ347 patent is the subject of IPR2014-00571,
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`IPR2014-00579, and IPR2014-00884. Id.; Paper 5, 3. Petitioner further
`
`
`1 Citations are to the redacted version of Patent Owner’s Preliminary
`Response (Paper 10, “Prelim. Resp.”).
`
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`2
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`IPR2015-00794
`Patent 7,104,347 B2
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`indicates that patents related to the ʼ347 patent are the subject matter of
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`IPR2014-00570, IPR2014-01415, IPR2014-00568, IPR2014-00852,
`
`IPR2014-00875, IPR2014-00904, IPR2014-01416, IPR2015-00606,
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`IPR2015-00767, IPR2015-00722, IPR2015-00758, IPR2015-00784,
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`IPR2015-00785, IPR2015-00791, IPR2015-00787, IPR2015-00790,
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`IPR2015-00795, and IPR2015-00792. Id. at 1–2; Paper 5, 3.
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`B. The ʼ347 Patent (Ex. 1401)
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`
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`The ’347 patent describes a hybrid vehicle with an internal
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`combustion engine, two electric motors (a starter motor and a traction
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`motor), and a battery bank, all controlled by a microprocessor that directs
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`the transfer of torque from the engine and traction motor to the drive wheels
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`of the vehicle. Ex. 1401, 17:5–45, Fig. 4. The microprocessor features a
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`control strategy that runs the engine only under conditions of high
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`efficiency, typically when the vehicle’s instantaneous torque requirements
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`(i.e., the amount of torque required to propel the vehicle, or “road load”) is
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`at least equal to 30% of the engine’s maximum torque output (“MTO”)
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`capability. Id. at 20:52–60, 35:5–14; see also id. at 13:47–61 (“the engine is
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`never operated at less than 30% of MTO, and is thus never operated
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`inefficiently”).
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`
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`Running the engine only when it is efficient to do so leads to
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`improved fuel economy and reduced emissions. Id. at 13:47–52. To achieve
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`such efficiency, the hybrid vehicle includes various operating modes that
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`depend on the vehicle’s torque requirements, the battery’s state of charge,
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`and other operating parameters. Id. at 19:53–55. For example, the hybrid
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`vehicle may operate in: (1) an all-electric mode, where only the traction
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`motor provides the torque to propel the vehicle and operation of the engine
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`IPR2015-00794
`Patent 7,104,347 B2
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`would be inefficient (i.e., stop-and-go city driving); (2) an engine-only
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`mode, where only the engine provides the torque to propel the vehicle and
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`the engine would run at an efficient level (i.e., highway cruising); (3) a dual-
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`operation mode, where the traction motor provides additional torque to
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`propel the vehicle beyond that already provided by the engine and the torque
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`required to propel the vehicle exceeds the maximum torque output of the
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`engine (i.e., while accelerating, passing, and climbing hills); and (4) a
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`battery recharge mode where the engine operates a generator to recharge the
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`battery while the traction motor drives the vehicle. Id. at 35:66–36:58,
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`37:26–38:55.
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`C. Illustrative Claim
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`Petitioner challenges claims 23–30, 32, and 39–41 of the ’347 patent.
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`Pet. 4–60. Claim 23 is illustrative of the claims at issue and is reproduced
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`below:
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`23. A method of control of a hybrid vehicle, said vehicle
`comprising an internal combustion engine capable of efficiently
`producing torque at loads between a lower level SP and a
`maximum torque output MTO, a battery, and one or more
`electric motors being capable of providing output torque
`responsive to supplied current, and of generating electrical
`current responsive to applied torque, said engine being
`controllably connected to wheels of said vehicle for applying
`propulsive torque thereto and to said at least one motor for
`applying torque thereto, said method comprising the steps of:
`determining the instantaneous torque RL required to
`propel said vehicle responsive to an operator command;
`monitoring the state of charge of said battery;
`employing said at least one electric motor to propel said
`vehicle when the torque RL required to do so is less than said
`lower level SP;
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`IPR2015-00794
`Patent 7,104,347 B2
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`employing said engine to propel said vehicle when the
`torque RL required to do so is between said lower level SP and
`MTO;
`employing both said at least one electric motor and said
`engine to propel said vehicle when the torque RL required to do
`so is more than MTO; and
`employing said engine to propel said vehicle when the
`torque RL required to do so is less than said lower level SP and
`using the torque between RL and SP to drive said at least one
`electric motor to charge said battery when the state of charge of
`said battery indicates the desirability of doing so; and
`wherein the torque produced by said engine when
`operated at said setpoint (SP) is substantially less than the
`maximum torque output (MTO) of said engine.
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`Ex. 1001, 60:22–54.
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`D. The Alleged Grounds of Unpatentability
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`The information presented in the Petition sets forth proposed grounds
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`of unpatentability of claims 23–30, 32, and 39–41 of the ’347 patent under
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`35 U.S.C. § 103(a) as follows (see Pet. 6–60):23
`
`References
`
`Ibaraki ʼ8824
`Ibaraki ʼ882 and Admitted
`Prior Art (“APA”)5
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`Claims
`Challenged
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`23, 24, 28, 30, and 32
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`29
`
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`2 Petitioner supports its challenge with the Declaration of Dr. Gregory W.
`Davis. Ex. 1408.
`3 Although Petitioner adds the general knowledge of one with ordinary skill
`in the art to the express statement of each alleged ground of unpatentability
`(Pet. 3–4), that is not necessary. Obviousness is determined from the
`perspective of one with ordinary skill in the art. We leave out the express
`inclusion of the general knowledge of one with ordinary skill.
`4 U.S. Patent No. 5,789,882, issued Aug. 4, 1998 (Ex. 1403)(“Ibaraki ʼ882”).
`5 Petitioner relies on Figures 1 and 2 of the ʼ347 patent, reproduced from the
`ʼ970 patent, and the Masding/Bumby disclosures from the ʼ634 patent
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`IPR2015-00794
`Patent 7,104,347 B2
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`References
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`Ibaraki ʼ882 and Vittone6
`Ibaraki ʼ882 and
`Yamaguchi7
`Ibaraki ʼ882 and
`Ibaraki ʼ6268
`Ibaraki ʼ882 and Lateur9
`Ibaraki ʼ882 and Frank10
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`Claims
`Challenged
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`39
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`40
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`41
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`27
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`25 and 26
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`II. ANALYSIS
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`A. Patent Owner’s Discretionary Dismissal Arguments
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`Patent Owner first argues that we should exercise our discretion under
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`35 U.S.C. § 325(d) and reject the Petition because “it relies on substantially
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`the same arguments that [Petitioner] Ford has already presented to the Board
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`in three separate proceedings.” Prelim. Resp. 14–27. We have considered
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`Patent Owner’s argument, but exercise our discretion and consider the
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`Petition and institute trial on the grounds summarized below, based in part
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`on Ibaraki ’882, a reference not previously relied on. We also have
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`considered Patent Owner’s arguments regarding multiple attacks on
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`independent claim 23. Id. at 21–23. Where a dependent claim is challenged,
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`we see no reason not to consider a challenge of the independent claim from
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`
`(Ex. 1433).
`6 Oreste Vittone, Fiat Conceptual Approach to Hybrid Cars Design, 12TH
`INTERNATIONAL ELECTRIC VEHICLE SYMPOSIUM (1994) (Ex. 1420)
`(“Vittone”).
`7 U.S. Patent No. 5,865,263, issued Feb. 2, 1999 (Ex. 1421) (“Yamaguchi”).
`8 U.S. Patent No. 6,003,626, issued Dec. 21, 1999 (Ex. 1422)
`(“Ibaraki ʼ626”).
`9 U.S. Patent No. 5,823,280, issued Oct. 20, 1998 (Ex. 1407) (“Lateur”).
`10 U.S. Patent No. 6,116,363, issued Sept. 12, 2000 (Ex. 1418) (“Frank”).
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`which it depends over the same prior art, even if the independent claim
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`already has been challenged elsewhere. Whatever renders obvious the
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`dependent claim necessarily renders obvious the independent claim.
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`We also have considered Patent Owner’s argument that multiple
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`challenges should not be allowed because, under 35 U.S.C. § 315(e)(1), once
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`a final written decision is issued in one proceeding with respect to a claim,
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`Petitioner would be barred from requesting or maintaining a proceeding on
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`that claim on any ground that the Petitioner raised or could have raised in the
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`proceeding which yielded the final written decision. Prelim. Resp. 27–30.
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`The contention is misplaced, because that provision applies only to the
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`Petitioner, not the Board. See Progressive Cas. Ins. Co. v. Liberty Mut. Ins.
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`Co., Nos. 2014-1586, 2014-1466, 2014-1639, 2014-1538, 2014-1638, 2014-
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`1636, 2014-1656, 2014-1549, 2014-1637, 2015 WL 5004949, at *2 (Fed.
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`Cir. Aug. 24, 2015). Even if it applies to the Board, it is not burdensome
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`simply to terminate the second proceeding with respect to certain claims.
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`B. Claim Construction
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`The Board interprets claims of an unexpired patent using the broadest
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`reasonable construction in light of the specification of the patent in which
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`they appear. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Under the broadest reasonable
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`construction standard, claim terms are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007).
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`1. “Road Load”or “RL”
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`The term “road load” or “RL” is recited in independent claim 23. The
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`Patent 7,104,347 B2
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`Specification of the ’347 patent defines “road load” as “the vehicle’s
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`instantaneous torque demands, i.e., that amount of torque required to propel
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`the vehicle at a desired speed,” and further notes that it “can be positive or
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`negative, i.e., when decelerating or descending a hill, in which case the
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`negative road load . . . is usually employed to charge the battery.” Ex. 1401,
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`12:38–58. Accordingly, we construe “road load” and “RL” as “the amount
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`of instantaneous torque required to propel the vehicle, be it positive or
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`negative.”11
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`2. “Set Point” or “SP”
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`The term “setpoint” or “SP” is recited in independent claim 23 and
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`dependent claims 24–30, 32, and 39–41. Petitioner proposes that “setpoint”
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`or “SP” be construed, in the context of these claims, as “predetermined
`
`torque value.” Pet. 5–6. In that regard, Petitioner correctly notes that the
`
`claims compare the setpoint either to an engine torque value or a torque
`
`based “road load” value. Id. Independent claim 23 recites a condition
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`“when the torque RL required to do so is less than said lower level [setpoint]
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`SP.” Ex. 1401, 60:37–39. Independent claim 23 further recites a range
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`established by the setpoint at one end, and the maximum torque output of the
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`engine at the other end, by the language “when the torque RL required to do
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`so is between said lower level SP and [maximum torque output] MTO.” Id.
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`at 60:40–42. Although Patent Owner correctly notes that the Specification
`
`outside of the claims refers to two items being measurable against respective
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`setpoints, i.e., the vehicle’s instantaneous torque requirement and the state of
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`11 This construction is the same as that proposed by Petitioner. Pet. 4–5.
`Patent Owner does not propose a different construction.
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`charge of the battery bank (Prelim. Resp. 11–12), the setpoint in these claims
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`relates to torque and not battery charge.
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`
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`Patent Owner asserts that “setpoint” or “SP” is not simply a numerical
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`value divorced from the context of the rest of the vehicle’s control system,
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`and that a “setpoint” serves the crucial function of marking the transition
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`from one claimed mode to another, and in particular, the transition from
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`propelling the vehicle with the motor to propelling the vehicle with the
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`engine. Prelim. Resp. 8–11. Citing the Specification, Patent Owner further
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`states that the Specification uses “setpoint” synonymously with “transition
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`point.” Id at 9–10. Accordingly, Patent Owner urges that the construction
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`of “setpoint” or “SP” must include an indication that it is a point at which a
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`transition between different operating modes may occur. Id. at 9–11.
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`
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`Patent Owner’s arguments are misplaced. The Specification outside
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`of the claims sometimes uses “setpoint” interchangeably with “transition
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`point,” because the disclosure describes the particular transitions between
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`operative modes, at the setpoints. If the multiple transitions between modes
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`are not described, it would be without meaning to refer to a “setpoint” as a
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`transition point between modes. A transition does not spring solely from the
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`term “setpoint” or “SP.” It would be improper to read into a claim all of the
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`disclosed operational modes and all disclosed transitions between modes
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`simply because the claim recites the “setpoint” or “SP.”
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`
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`Patent Owner does not urge that “setpoint” or “SP” requires any
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`particular transition from mode to mode. Instead, Patent Owner merely
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`desires to add that a “setpoint” is where a transition between operating
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`modes “may occur.” Id. Nothing of significance is added by that proposed
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`construction. If a transition is specified by other limitations in the claim, at
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`the setpoint, then a transition is required at the setpoint. If no transition is
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`specified by other limitations in the claim, then no transition is required at a
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`setpoint. A transition may or may not occur at a setpoint, depending on
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`what else is recited in the claim. It is not necessary to include such “may
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`occur” language in the construction of “setpoint” and “SP.” A multitude of
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`events “may occur” at a setpoint, but they are not necessary for setting forth
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`the meaning of “setpoint” or “SP” in a claim. The rest of the claim sets forth
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`what is required to occur at a setpoint.
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`
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`Nevertheless, we do regard as meaningful to note that nothing in the
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`Specification precludes a setpoint from being reset, after it has been set. A
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`setpoint for however short a period of time still is a setpoint.
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`
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`We construe “setpoint” and “SP” as “predetermined torque value that
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`may or may not be reset.”
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`3. “monitor patterns of vehicle operation over time”
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`Dependent claim 24 recites “monitor[ing] patterns of vehicle
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`operation over time and vary[ing] said setpoint SP accordingly.” Ex. 1401,
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`60:55–57. Patent Owner argues that we should construe the italicized phrase
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`to mean “track and record the driver’s repeated driving operations over
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`time.” Prelim. Resp. 12. Petitioner does not provide an explicit construction
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`for the phrase.
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`Patent Owner argues that the Specification of the ’347 patent’s
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`description of monitoring patterns of vehicle operation over time refers to
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`how the operator actually drives the car over some period of time, as
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`opposed to monitoring an internal data point of the vehicle. Id. at 12–16. In
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`support of its construction, Patent Owner directs attention to the following
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`descriptions in the Specification:
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`Examples of this practice—amounting in many circumstances
`to modifying certain specific values depending on other data
`items not discussed in detail, or by monitoring the vehicle’s
`actual usage patterns over time—are given below.
`
`Prelim. Resp. 13 (citing Ex. 1401, 35:47–58).
`
`It is also within the scope of the invention for the
`microprocessor to monitor the vehicle’s operation over a period
`of days or weeks and reset this important setpoint in response to
`a repetitive driving pattern. For example, suppose the operator
`drives the same route from a congested suburban development
`to a workplace about the same time every morning; typically
`the road load might remain under 20% of MTO for the first few
`minutes of each day, then vary between 0 and 50% of MTO for
`another few minutes as the operator passes through a few traffic
`lights, and then suddenly increase to 150% of MTO as the
`operator accelerates onto a highway. It is within the skill [in]
`the art to program a microprocessor to record and analyze
`such daily patterns, and to adapt the control strategy
`accordingly. For example, in response to recognition of a
`regular pattern as above, the transition point might be adjusted
`to 60% of MTO; this would prevent repetitive engine starts as
`the road load exceeded 30% of MTO for a few hundred yards at
`a time, as might often occur in suburban traffic. Similarly, the
`engine starting routine might be initiated after the same total
`distance had been covered each day.
`
`Ex. 1401, 40:56–41:9 (emphasis added).
`
`In addition, Patent Owner, directing attention to external evidence,
`
`argues that the word “pattern” means a regular and repeated course of
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`conduct or behavior. Prelim. Resp. 16; Ex. 1428; Ex. 2403.
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`Although Petitioner does not provide an explicit construction for the
`
`phrase “monitor[ing] patterns of vehicle operation over time,” Patent Owner
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`argues that Petitioner implicitly construes the phrase to encompass
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`monitoring the battery state of charge or “regenerative charging amount”
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`and adjusting the alleged “setpoint” based on the stored regenerative
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`charging amount. Id. at 13–14 (citing Pet. 28–31).
`
`We agree with Patent Owner that Petitioner’s implicit construction is
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`not in light of the written description of the Specification of the ’347 patent
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`which describes changing a setpoint in response to monitored vehicle
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`operation patterns. In particular, the description in the Specification
`
`regarding patterns describes clearly that the patterns are in connection with
`
`the driving patterns of the operator of the vehicle. Ex. 1401, 40:56–41:9.
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`The Specification does not describe monitoring “patterns” of a battery state
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`of charge, for example. Moreover, the plain words of the phrase require
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`monitoring patterns over time. It is not enough to monitor a single value of
`
`a vehicle component, for instance. Rather the plain meaning of the words
`
`require monitoring patterns, where a pattern is defined as a regular or logical
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`form, order, etc. Ex. 2403. Thus, we agree with Patent Owner that a pattern
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`is a regular and repeated course of conduct or behavior and that the phrase
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`“monitoring patterns of vehicle operation over time” requires monitoring a
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`driver’s repeated driving operations over time.
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`Accordingly, for purposes of this decision, we interpret “monitoring
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`patterns of vehicle operation over time” to require monitoring a driver’s
`
`repeated driving operations over time.
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`C. Claims 23, 24, 28, 30, and 32– Obviousness over Ibaraki ʼ882
`
`Petitioner contends that claims 23, 24, 28, 30, and 32 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882. Pet. 6–36.
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`1. Ibaraki ʼ882 (Ex. 1403)
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`Ibaraki ʼ882 discloses a drive control apparatus for a “hybrid vehicle”
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`equipped with an electric motor and an internal combustion engine.
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`Ex. 1403, 1:10–15. The electric motor provides electric energy and operates
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`as a first drive power source, and the internal combustion engine combusts
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`fuel to provide a second drive power source. Id. at 2:57–64. The drive
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`control apparatus includes (1) an engine drive mode where the vehicle is
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`driven by the engine, (2) a motor drive mode where the vehicle is driven by
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`the electric motor, and (3) an electricity generating mode where an electric
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`generator is operated by the engine to charge an electric energy storage
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`device. Id. at 2:64–3:2. Depending on the running condition of the vehicle,
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`the drive control apparatus selects the drive mode. Id. at 3:5–14.
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`2. Analysis
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`a. Claims 23, 28, 30, and 32
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`The evidence set forth by Petitioner indicates there is a reasonable
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`likelihood that Petitioner will prevail in showing that claims 23, 28, 30, and
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`32 are unpatentable under 35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882.
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`Pet. 6–36. Petitioner provides a detailed analysis, supported by evidence,
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`demonstrating that there is a reasonable likelihood that claims 23, 28, 30,
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`and 32 are obvious over Ibaraki ʼ882. Id.
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`For example, claim 23 recites a “method of control of a hybrid
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`vehicle,” where the “vehicle comprising an internal combustion engine
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`capable of efficiently producing torque at loads between a lower level
`
`[setpoint] SP and a maximum torque output MTO.” Claim 23 further recites
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`“the torque produced by said engine when operated at said setpoint (SP) is
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`substantially less than the maximum torque output (MTO) of said engine.”
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`Claim 23 additionally recites “a battery.” Petitioner argues that Ibaraki ʼ882
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`discloses a drive control apparatus for a hybrid vehicle, where the vehicle
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`includes an electric motor and an internal combustion engine. Pet. 6–7
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`(citing Ex. 1403, 1:9–14, 19:11–54; Ex. 1408 ¶¶ 169–170). Petitioner
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`further argues that Ibaraki ʼ882 discloses an energy efficiency map that
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`includes a threshold and multiple setpoints based on the engine speed. Pet.
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`8–9 (citing Ex. 1403, 25:46–26:8, Fig. 5; Ex. 1408 ¶¶ 185–187). Petitioner
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`asserts that the setpoints represent the point where the hybrid vehicle
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`transitions from motor drive mode to engine drive mode and the engine
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`efficiently produces torque above the setpoint. Id. Petitioner argues that
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`Ibaraki ʼ882 similarly discloses a drive source selecting data map that
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`includes a boundary line, along which are setpoints. Id. at 9–10 (citing Ex.
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`1403, 20:49–21:20, 24:6–26, Fig. 11; Ex. 1408 ¶¶185, 188–190, 193).
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`Petitioner argues that these setpoints also represent the point where the
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`hybrid vehicle transitions from motor drive mode to engine drive mode and
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`the engine efficiently produces torque above the setpoint. Id. Petitioner
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`explains that although the language “substantially less than” is not
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`“mathematically precise,” 70% of the MTO is “substantially less than” the
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`MTO and Ibaraki ʼ882 discloses threshold or setpoint at 70% of the engine’s
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`maximum efficiency. Id. at 25–26 (citing Ex. 1403, 25:46–56, Fig. 5).
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`Petitioner further argues that Ibaraki ʼ882 discloses an energy storage
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`device, which can be “in the form of a battery or condenser.” Id. at 11
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`(citing Ex. 1403, 19:55–57; Ex 1408 ¶¶ 198–199) (emphasis omitted).
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`Claim 23 further recites “one or more electric motors being capable of
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`providing output torque responsive to supplied current, and of generating
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`electrical current responsive to applied torque.” Claim 23 also recites “said
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`engine being controllably connected to wheels of said vehicle for applying
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`propulsive torque thereto and to said at least one motor for applying torque
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`thereto.” Petitioner contends that Ibaraki ʼ882 discloses a “dynamo-electric
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`motor” that receives electric energy, i.e. current, from the energy storage
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`device or battery when in a “DRIVE” state and transfers the power to the
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`wheels ultimately. Id. at 11–12 (citing Ex. 1403, 19:24–28, 19:55–63; Ex.
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`1408 ¶¶ 200–204). Petitioner further contends that Ibaraki ʼ882 discloses a
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`“CHARGING” state, where the motor functions as an electric generator or
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`dynamo, with regenerative braking. Id. at 12 (citing Ex. 1403, 19:61–67).
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`Petitioner argues that Ibaraki ʼ882 discloses that the engine is controlled by a
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`“clutch.” Id. at 12–13 (citing Ex. 1403, 19:50–54, Fig. 8; Ex. 1408 ¶¶ 208–
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`210).
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`Claim 23 also recites “determining the instantaneous torque RL
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`required to propel said vehicle responsive to an operator command.”
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`Petitioner argues that Ibaraki ʼ882 discloses a required drive power for a
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`vehicle that is determined by the vehicle torque and speed. Id. at 13–14
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`(citing Ex. 1403, 20:39–43, 20:58–21:1, 23:66–24:21; Ex. 1408 ¶¶ 221–
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`224). Petitioner further asserts that Ibaraki ʼ882 discloses that the
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`“instantaneous drive power required for running the vehicle, which power
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`includes components for overcoming the air resistance experienced by the
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`vehicle and the rolling resistance of each vehicle wheel.” Id. at 14–15
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`(quoting Ex. 1403, 12:50–54)(emphasis omitted).
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`Claim 23 additionally recites “monitoring the state of charge of said
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`battery.” Petitioner contends that Ibaraki ʼ882 discloses that the controller
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`receives a state of charge SOC of the electric energy storage device or
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`battery. Id. at 16 (citing Ex. 1403, 20:10–23).
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`Claim 23 further recites four different modes used to propel the
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`vehicle: (1) “employing said at least one electric motor to propel said vehicle
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`when the torque RL required to do so is less than said lower level SP,” (2)
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`“employing said engine to propel said vehicle when the torque RL required
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`to do so is between said lower level SP and MTO,” (3) “employing both said
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`at least one electric motor and said engine to propel said vehicle when the
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`torque RL required to do so is more than MTO,” and (4) “employing said
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`engine to propel said vehicle when the torque RL required to do so is less
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`than said lower level SP and using the torque between RL and SP to drive
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`said at least one electric motor to charge said battery when the state of
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`charge of said battery indicates the desirability of doing so.” Petitioner
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`contends that Ibaraki ʼ882 discloses (1) a “MOTOR DRIVE mode,” (2) an
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`“ENGINE DRIVE mode,” (3) an “ENGINE-MOTOR DRIVE mode,” and
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`(4) an “ELECTRICITY GENERATING DRIVE mode.” Id. at 16–25 (citing
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`Ex. 1403, 15:37–50, 19:18–27, 19:55–20:9, 20:18–63, 20:43–53, 20:55–
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`21:1, 23:6–19, 23:66–24:30, 26:18–21, 26:28–33, Figs. 5, 7, 10, 11; Ex.
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`1408 ¶¶ 242-250, 253–262, 266–281, 287–294). Petitioner further argues
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`that Ibaraki ʼ882 discloses (1) the vehicle operates in “MOTOR DRIVE
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`mode” when the required torque at a given speed is below boundary line B,
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`(2) the vehicle operates in “ENGINE DRIVE mode” when the required
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`torque at a given speed is between boundary line B and boundary line C, and
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`(3) the vehicle operates in “ENGINE-MOTOR DRIVE mode” when the
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`required torque at a given speed is above boundary line C. Id. Accordingly,
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`Petitioner asserts that boundary line B is the same as setpoint SP and
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`boundary line C must be at least equal to the maximum torque output MTO.
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`Id. Petitioner further argues that Ibaraki ʼ882 discloses that during
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`“ELECTRICITY GENERATING DRIVE mode” the engine speed is held
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`constant at a value greater than the required torque and the surplus torque is
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`used to drive the motor for charging the battery. Id.
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`Accordingly, the present record supports that Petitioner has
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`established a reasonable likelihood it will prevail in demonstrating that claim
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`23 is obvious over Ibaraki ʼ882. We are similarly persuaded that Petitioner
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`has established a reasonable likelihood it will prevail in demonstrating
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`claims 28, 30, and 32 are obvious over Ibaraki ʼ882.
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`We have considered Patent Owner’s argument that the Petition
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`improperly incorporates arguments and evidence from the Declaration of
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`Dr. Davis into the Petition. Prelim. Resp. 30–35. We agree that, in general,
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`arguments must not be incorporated by reference from one document into
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`another document (37 C.F.R. § 42.6(a)(3)). Here, however, Patent Owner’s
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`arguments are unpersuasive. Petitioner relies on Ibaraki and the knowledge
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`of POSA in challenging claims 23, 28, 30, and 32. In doing so, Petitioner
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`relies on Dr. Davis’ testimony as evidence of what a POSA would have
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`known at the time of the invention. We have reviewed those portions of Dr.
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`Davis’ Declaration, to which we are directed, with respect to the grounds
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`upon which we institute, and, have determined that there is nothing unusual
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`about his declaration or the way in which Petitioner relies on the declaration
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`insofar as improper incorporation is concerned, at least not to the extent that
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`we would disregard the Petition in its entirety. Moreover, we will not
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`disregard the Petition because of an alleged “voluminous record.” Id. at 34–
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`35.
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`Patent Owner also argues that Petitioner has failed to identify “what
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`claim elements are missing from Ibaraki ʼ882” and, therefore, Patent Owner
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`argues that Petitioner “fails to provide the requisite Graham v. John Deere
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`analysis.” Prelim. Resp. 36–38. Patent Owner argues that it is unclear
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`whether Petitioner is asserting that Ibaraki ʼ882 discloses the claim element
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`or simple renders obvious the claim element. Id. We are not persuaded by
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`Patent Owner’s argument. Whatever disclosure from each prior art
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`reference, listed in Petitioner’s claim charts in a corresponding location
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`opposite a reproduced claim limitation, is a representation that that
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`disclosure meets the associated claim limitation. We have reviewed the
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`proposed ground of obviousness over Ibaraki ʼ882 against claims 23, 28, 30,
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`and 32, and are persuaded, at this juncture of the proceeding, that Petitioner
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`has established a reasonable likelihood that Petitioner would prevail in its
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`challenge to claims 23, 28, 30, and 32.
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`Patent Owner also argues that Petitioner relies improperly on two
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`separate embodiments of Ibaraki ʼ882, namely, the disclosures of Figures 5
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`and 11, and fails to explain why a person of ordinary skill in the art would be
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`motivated to combine these embodiments. Id. at 38–39. We disagree with
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`Patent Owner. Petitioner explains that Figures 5 and 11 similarly set forth
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`thresholds based on engine torque and engine speed. See Pet. 8–10.
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`Petitioner further sets forth that the thresholds determine the point in which
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`the engine mode will transition. See id. Although Patent Owner argues that
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`Figure 5 discloses “thresholds based on engine efficiency” and Figure 11
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`discloses “thresholds are based on drive power” (Prelim. Resp. 38–39), we
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`are not persuaded that these are two separate embodiments. Rather, both
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`Figures 5 and 11 discloses threshold points for transitioning between engine
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`modes. The mere fact that Figure 5 also discloses engine efficiency based
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`on speed and torque does no