On behalf of: Ford Motor Company
`
`
`Entered: January 10, 2017
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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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`______________
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`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,104,347 to Severinsky et al.
`
`IPR Case No.: IPR2015-00795
`
`______________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and CARL M.
`DeFRANCO, Administrative Patent Judges.
`
`
`PETITIONER’S NOTICE OF CROSS-APPEAL
`
`
`
`
`
`
`
`
`
`
`Entered: January 10, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`FORD MOTOR COMPANY
`Petitioner,
`
`v.
`
`PAICE LLC & ABELL FOUNDATION, INC.
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,104,347 to Severinsky et al.
`
`IPR Case No.: IPR2015-00795
`
`______________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and CARL M.
`DeFRANCO, Administrative Patent Judges.
`
`
`PETITIONER’S NOTICE OF CROSS-APPEAL
`
`
`
`
`
`
`
`
`
`Case No.: IPR2015-00795
`Attorney Docket No.: FPGP0101IPR5
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`Notice is hereby given, pursuant to 37 C.F.R § 90.2(a), that Petitioner, Ford
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`Motor Company (“Petitioner”), hereby appeals to the United States Court of Appeals
`
`for the Federal Circuit from the Final Written Decision entered on November 1, 2016
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`(Paper 31, attached hereto) and from all underlying orders, decisions, rulings and
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`opinions that are adverse to Petitioner, including, without limitation, those within
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`the Decision on Institution of Inter Partes Review, entered November 2, 2015 (Paper
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`12).
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`This notice is timely under C.F.R. § 90.3(a)(1) and Rule 4(a)(3) of the Federal
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`Rules of Appellate Procedure because Patent Owners Paice LLC and the Abell
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`Foundation, Inc. filed a notice of appeal on January 4, 2017. That appeal was
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`assigned Case No. 17-1443.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates that
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`the issues on cross-appeal include, but are not limited to, the Board’s decision not to
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`provide a final written decision on the merits, nor hold unpatentable, claim 1 of U.S.
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`Patent No. 7,104,347.
`
`Contemporaneously with this submission, a copy of the Notice of Cross-
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`Appeal is being filed electronically with the Patent Trial and Appeal Board. In
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`addition, a copy of this Notice of Appeal, along with the required docketing fees, are
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`being electronically filed with the Clerk’s Office for the United States Court of
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`Appeals for the Federal Circuit.
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`2
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`
`
`
`
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`
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`Dated: January 10, 2017
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`
`
`Respectfully submitted,
`
`Case No.: IPR2015-00795
`Attorney Docket No.: FPGP0101IPR5
`
`
`
` /s/Frank A. Angileri/
`Frank A. Angileri (Reg. No. 36,733)
`John P. Rondini (Reg. No. 64,949)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Petitioner
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`3
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`Case No.: IPR2015-00795
`Attorney Docket No.: FPGP0101IPR5
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`CERTIFICATE OF FILING AND SERVICE
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`
`The undersigned hereby certifies that on January 10, 2017, a complete and
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`entire copy of PETITIONER FORD MOTOR COMPANY’S NOTICE OF
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`CROSS-APPEAL was served by electronic mail to the following counsel of record:
`
`LEAD COUNSEL
`Timothy W. Riffe, Reg. No. 43,881
`
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0011IP5@fr.com;
`
`Riffe@fr.com; Greene@fr.com
`
`BACK-UP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`Ruffin B. Cordell, Reg. No. 33,487
`Linda L. Kordziel, Reg. No. 39,732
`Brian J. Livedalen, Reg. No. 67,450
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email: IPR36351-0011IP5@fr.com;
`
`Riffe@fr.com; Greene@fr.com
`
` I
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` also certify that in addition to being filed electronically with the Board
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`through its E2E System, the original of the foregoing Petitioner Ford Motor
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`Company’s Notice of Cross-Appeal is being sent, pursuant to 37 C.F.R. § 104.2, via
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`first-class mail on January 10, 2017 to the United States Patent and Trademark
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`Office at the following address:
`
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`4
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`
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`Case No.: IPR2015-00795
`Attorney Docket No.: FPGP0101IPR5
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`I further certify that a copy of the foregoing Petitioner’s Notice of Cross-
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`Appeal was filed via CM/ECF on January 10, 2017, with the United States Court of
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`Appeals for the Federal Circuit.
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`
`
`
`
`Respectfully submitted,
`
`
` /s/Frank A. Angileri/
`Frank A. Angileri (Reg. No. 36,733)
`John P. Rondini (Reg. No. 64,949)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Petitioner
`
`5
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`
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`Trials@uspto.gov Paper 31
`Tel: 571-272-7822
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`Entered: November 1, 2016
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`
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`
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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 IPR2015-00795
`Patent 7,104,347 B2
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
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`IPR2015-00795
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`I.
`
`INTRODUCTION
`
`A. Background
`Ford Motor Company (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 1–5, 14, 16, 19, 20, and 22 of U.S. Patent
`No. 7,104,347 B2 (Ex. 1301, “the ’347 patent”). Paper 1 (“Pet.”). Paice
`LLC and The Abell Foundation, Inc. (collectively, “Patent Owner”) filed a
`Preliminary Response in unredacted and redacted forms. Papers 9, 10
`(“Prelim. Resp.”). Patent Owner also filed a Motion to Seal. Paper 11
`(“Motion to Seal”).
`Pursuant to 35 U.S.C. § 314, we instituted inter partes review of the
`ʼ347 patent, on November 2, 2015, under 35 U.S.C. § 103(a), as to claims 1
`and 5 as obvious over Ibaraki ’8821 and Koide;2 claims 3 and 4 as obvious
`over Ibaraki ’882, Koide, and Frank;3 claim 16 as obvious over Ibaraki ’882,
`Koide, and Kawakatsu;4 claim 20 as obvious over Ibaraki ’882, Koide, and
`Vittone;5 claim 19 as obvious over Ibaraki ’882, Koide, and Yamaguchi;6
`
`
`1 U.S. Patent No. 5,789,882, issued Aug. 4, 1998 (Ex. 1303) (“Ibaraki
`ʼ882”).
`2 U.S. Patent No. 5,934,395, issued Aug. 10, 1999 (Ex. 1317) (“Koide”).
`3 U.S. Patent No. 6,116,363, issued Sept. 12, 2000 (Ex. 1318) (“Frank”).
`4 U.S. Patent No. 4,335,429, issued June 15, 1982 (Ex. 1305)
`(“Kawakatsu”).
`5 Oreste Vittone, Fiat Conceptual Approach to Hybrid Cars Design, 12TH
`INTERNATIONAL ELECTRIC VEHICLE SYMPOSIUM (1994) (Ex. 1320)
`(“Vittone”).
`6 U.S. Patent No. 5,865,263, issued Feb. 2, 1999 (Ex. 1321) (“Yamaguchi”).
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`claim 22 as obvious over Ibaraki ’882, Koide, and Ibaraki ’626;7 and claim
`14 as obvious over Ibaraki ’882, Koide, and Lateur.8 Paper 12 (“Dec.”). We
`did not institute inter partes review of claim 2 as obvious over Ibaraki ’882
`and Koide. Dec. 21‒22.
`Patent Owner filed a Response (Paper 16, “PO Resp.”), and Petitioner
`filed a Reply (Paper 21, “Pet. Reply”).9 Oral hearing was held on June 28,
`2016, and the hearing transcript has been entered in the record. Paper 30
`(“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Pursuant to our jurisdiction under 35 U.S.C. § 6, we conclude, first, that
`Petitioner is estopped from maintaining its challenge in this proceeding
`against claim 1. For the reasons discussed below, we are persuaded that
`Petitioner has shown by a preponderance of the evidence that claims 3–5,
`14, 16, 19, 20, and 22 of the ʼ347 patent are unpatentable.
`B. Related Proceedings
`Petitioner indicates that the ’347 patent is the subject of Paice, LLC
`and The Abell Foundation, Inc. v. Ford Motor Company, Case No. 1-14-cv-
`00492 and Paice LLC and The Abell Foundation, Inc. v. Hyundai Motor
`
`
`7 U.S. Patent No. 6,003,626, issued Dec. 21, 1999 (Ex. 1322)
`(“Ibaraki ʼ626”).
`8 U.S. Patent No. 5,823,280, issued Oct. 20, 1998 (Ex. 1307) (“Lateur”).
`9 In addition, Patent Owner filed a Motion for Observation on Cross-
`Examination (Paper 23) and Petitioner filed a Response to Motion for
`Observation on Cross-Examination (Paper 26), both of which have been
`considered.
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`America et. al., Case No. 1:2012-cv-00499. Pet. 1; Paper 5, 2. Petitioner
`also indicates that the ʼ347 patent was the subject of IPR2014-00571,
`IPR2014-00579, and IPR2014-00884, in which final decisions have been
`issued. Id.; Paper 5, 3. Petitioner further indicates that patents related to the
`ʼ347 patent are the subject matter of IPR2014-00570, IPR2014-01415,
`IPR2014-00568, IPR2014-00852, IPR2014-00875, IPR2014-00904,
`IPR2014-01416, IPR2015-00606, IPR2015-00767, IPR2015-00722,
`IPR2015-00758, IPR2015-00784, IPR2015-00785, IPR2015-00791,
`IPR2015-00787, IPR2015-00790, IPR2015-00794, and IPR2015-00792. Id.
`at 1–2; Paper 5, 3.
`C. The ʼ347 Patent
`The ’347 patent describes a hybrid vehicle with an internal
`combustion engine, two electric motors (a starter motor and a traction
`motor), and a battery bank, all controlled by a microprocessor that directs
`the transfer of torque from the engine and traction motor to the drive wheels
`of the vehicle. Ex. 1301, 17:5–45, Fig. 4. The microprocessor features a
`control strategy that runs the engine only under conditions of high
`efficiency, typically when the vehicle’s instantaneous torque requirements
`(i.e., the amount of torque required to propel the vehicle, or “road load”) are
`at least equal to 30% of the engine’s maximum torque output (“MTO”)
`capability. Id. at 20:52–60, 35:5–14; see also id. at 13:47–61 (“the engine is
`never operated at less than 30% of MTO, and is thus never operated
`inefficiently”).
`Running the engine only when it is efficient to do so leads to
`improved fuel economy and reduced emissions. Id. at 13:47–52. To achieve
`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,
`and other operating parameters. Id. at 19:53–55. For example, the hybrid
`vehicle may operate in: (1) an all-electric mode, where only the traction
`motor provides the torque to propel the vehicle and operation of the engine
`would be inefficient (i.e., stop-and-go city driving); (2) an engine-only
`mode, where only the engine provides the torque to propel the vehicle and
`the engine would run at an efficient level (i.e., highway cruising); (3) a dual-
`operation mode, where the traction motor provides additional torque to
`propel the vehicle beyond that already provided by the engine and the torque
`required to propel the vehicle exceeds the maximum torque output of the
`engine (i.e., while accelerating, passing, and climbing hills); and (4) a
`battery recharge mode where the engine operates a generator to recharge the
`battery while the traction motor drives the vehicle. Id. at 35:66–36:58,
`37:26–38:55.
`D. Illustrative Claim
`Petitioner challenges claims 1–5, 14, 16, 19, 20, and 22 of the ’347
`patent. Pet. 4–60. Claim 1 is illustrative of the claims at issue and is
`reproduced below:
`1. A hybrid vehicle, comprising:
`an internal combustion engine controllably coupled to
`road wheels of said vehicle;
`a first electric motor connected to said engine nd [sic]
`operable to start the engine responsive to a control signal;
`a second electric motor connected to road wheels of said
`vehicle, and operable as a motor, to apply torque to said wheels
`to propel said vehicle, and as a generator, for accepting torque
`from at least said wheels for generating current;
`a battery, for providing current to said motors and
`accepting charging current from at least said second motor; and
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`a controller for controlling the flow of electrical and
`mechanical power between said engine, first and second
`motors, and wheels, wherein said controller starts and operates
`said engine when torque require to be produced by said engine
`to propel the vehicle and/or to drive either one or both said
`electric motor(s) to charge said battery is at least equal to
`a setpoint (SP) above which said engine torque is efficiently
`produced, 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.
`Ex. 1301, 58:13–37.
`
`II. ANALYSIS
`A. Petitioner Estoppel
`On September 28, 2015, we rendered a final written decision of
`claims 1, 7, 8, 18, 21, 23, and 37 of the ’347 patent in IPR2014-00571, and
`claims 1, 6, 7, 9, 15, 21, 23, and 36 of the ’347 patent in IPR2014-00579.
`Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc., Case IPR2014-
`00571 (PTAB September 28, 2015) (Paper 44); Ford Motor Co. v. Paice
`LLC & The Abell Foundation, Inc., Case IPR2014-00579 (PTAB September
`28, 2015) (Paper 45). Patent Owner argues that, pursuant to 35 U.S.C.
`§ 315(e)(1), Petitioner may not maintain its challenge of claim 1. PO
`Resp. 16. Petitioner responds that it is not estopped because it was
`necessary for it to file multiple petitions to address the ’347 patent’s many
`dependent claims, such as dependent claims 3–5, 14, 16, 19, 20, and 22,
`which depend from independent claim 1. Pet. Reply 2‒3.
`Under 35 U.S.C. § 315(e)(1), a petitioner who has obtained a final
`written decision on a patent claim in an inter partes review may not maintain
`a subsequent proceeding with respect to that same claim on a ground that it
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`“reasonably could have raised” in the original proceeding. Specifically,
`section 315(e)(1) provides:
`(e) Estoppel.—
`(1) Proceedings before the office.—The petitioner in an
`inter partes review of a claim in a patent under this chapter that
`results in a final written decision under section 318(a) . . . may
`not request or maintain a proceeding before the Office with
`respect to that claim on any ground that the petitioner raised or
`reasonably could have raised during that inter partes review.
`
`On September 28, 2015, final written decisions were entered in
`IPR2014-00571 and IPR2014-00579, in which we determined that claim 1
`of the ’347 patent is unpatentable.10 Petitioner in this proceeding is the same
`Petitioner in IPR2014-00571 and IPR2014-00579. The grounds raised by
`Petitioner in IPR2014-00571 and IPR2014-00579 against claim 1 is not the
`same as the ground raised against claim 1 in this proceeding. Nonetheless,
`both Ibaraki ’882 and Koide were cited during prosecution that led to the
`’347 patent and are listed on the face of the ’347 patent. Ex. 1301.
`Petitioner does not argue that it reasonably could not have raised its
`challenge to claim 1 based on Ibaraki ’882 and Koide in IPR2014-00571 and
`IPR2014-00579. Pet. Reply 2‒3. We determine that Petitioner reasonably
`could have raised this challenge in IPR2014-00571 and IPR2014-00579.
`Accordingly, Petitioner is estopped under 35 U.S.C. § 315(e)(1) from
`maintaining the ground based on Ibaraki ’882 and Koide against claim 1.
`We dismiss the inter partes review with respect to claim 1.
`
`
`10 Although not argued by Patent Owner, we note that claim 1 was held
`unpatentable in IPR2014-00884 also. Ford Motor Co. v. Paice LLC & The
`Abell Foundation, Inc., Case IPR2014-00884 (PTAB December 10, 2015)
`(Paper 38).
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`Although we determine it is necessary to address the parties’
`contentions with respect to independent claim 1 because claims 3–5, 14, 16,
`19, 20, and 22 depend from claim 1, we do not otherwise provide a final
`written decision on the merits with respect to claim 1, or again hold that
`claim to be unpatentable.
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs. LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under the broadest reasonable
`interpretation standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`1. “Road Load” or “RL”
`The term “road load” or “RL” is recited in dependent claims 3, 4, and
`14. The Specification of the ’347 patent defines “road load” as “the
`vehicle’s instantaneous torque demands, i.e., that amount of torque required
`to propel the vehicle at a desired speed,” and further notes that it “can be
`positive or negative, i.e., when decelerating or descending a hill, in which
`case the negative road load . . . is usually employed to charge the battery.”
`Ex. 1301, 12:38–58. Accordingly, we construe “road load” and “RL” as
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`“the amount of instantaneous torque required to propel the vehicle, be it
`positive or negative.”11
`2. “Set Point” or “SP”
`The term “setpoint” or “SP” is recited in independent claim 1 and
`dependent claims 3–5, 14, 16, 19, 20, and 22. Petitioner proposes that
`“setpoint” or “SP” be construed, in the context of these claims, as
`“predetermined torque value.” Pet. 6–7. Patent Owner argues that
`“setpoint” should be construed as “a definite, but potentially variable value
`at which a transition between operating modes may occur.” PO Resp. 7‒8.12
`We agree with Petitioner that the claims compare the setpoint either to
`an engine torque value or a torque based “road load” value. Pet. 6–7. Claim
`1 recites a condition “when torque require to be produced . . . is at least
`equal to a setpoint (SP).” Ex. 1301, 58:29‒37.
`Nothing in the Specification precludes a setpoint from being reset,
`after it has been set. A setpoint for however short a period of time still is a
`setpoint. Accordingly, we construe “setpoint” and “SP” as “predetermined
`torque value that may or may not be reset.”
`Patent Owner argues that the claims and the specification of the ’347
`patent “make clear that a ‘setpoint’ is not simply a numerical value divorced
`from the context of the control system,” and that “‘setpoint’ serves the
`
`
`11 This construction is the same as that proposed by Petitioner. Pet. 6‒7.
`Patent Owner does not propose a different construction.
`12 In our Decision to Institute, and upon taking into consideration the parties’
`arguments and supporting evidence, we interpreted “setpoint” or “SP” to
`mean “predetermined torque value that may or may not be reset.” Dec. 8‒
`10. Petitioner agrees with that interpretation, while Patent Owner does not.
`Pet. Reply 2; PO Resp. 7–11.
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`crucial function of marking the transition from one claimed mode to another,
`and in particular, the transition from propelling the vehicle with the motor to
`propelling the vehicle with the engine.” PO Resp. 7‒8. This argument is
`misplaced. Although such use of a setpoint is described by other language
`in the ’347 patent specification, it is not an intrinsic property of a setpoint
`and is not a necessary and required use of all setpoints. In that regard, we
`further note the following passage in the ’347 patent specification, which
`supports not reading a mode switching requirement (i.e., transition
`requirement) into the term “setpoint”:
`the values of the sensed parameters in response to which
`the operating mode is selected may vary . . ., so that the operating
`mode is not repetitively switched simply because one of the
`sensed parameters fluctuates around a defined setpoint.
`Ex. 1301, 19:58–64 (emphasis added).
`It is improper to add an extraneous limitation into a claim, i.e., one
`that is added wholly apart from any need for the addition to accord meaning
`to a claim term. See, e.g., Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948,
`950 (Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v. Phillips Petroleum
`Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). It is important not to import into
`a claim limitations that are not a part of the claim. Superguide Corp. v.
`DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). For
`example, a particular embodiment appearing in the written description may
`not be read into a claim when the claim language is broader than the
`embodiment. Id.; see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
`1993). That is no different even if the patent specification describes only a
`single embodiment. Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898,
`906 (Fed. Cir. 2004).
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`Patent Owner brings to our attention that the U.S. District Court for
`the Eastern District of Texas and the U.S. District Court for the District of
`Maryland both have construed “setpoint” to mean “a definite, but potentially
`variable value at which a transition between operating modes may occur.”
`PO Resp. 7 n.1. We note that that construction also does not require that an
`operating mode be changed at a setpoint, as Patent Owner urges. Instead,
`the construction of the district courts sets forth that a transition between
`operating modes “may occur” at a setpoint, which is consistent with our
`construction here.
`Patent Owner additionally argues that “setpoint” should not be limited
`to a torque value, because the Specification makes clear that it also can be
`the state of charge of a battery. PO. Resp. 10‒11. Patent Owner cites to the
`following passage in the Specification:
`[T]he microprocessor tests sensed and calculated values
`for system variables, such as the vehicle’s instantaneous torque
`requirement, i.e., the “road load” RL, the engine’s instantaneous
`torque output ITO, both being expressed as a percentage of the
`engine’s maximum torque output MTO, and the state of charge
`of the battery bank BSC, expressed as a percentage of its full
`charge, against setpoints, and uses the results of the comparisons
`to control the mode of vehicle operation.
`Ex. 1301, 40:22–31 (emphasis added). This argument also is misplaced. As
`we noted above, independent claim 1 requires a comparison of the setpoint
`either to an engine torque value or a torque based “road load” value. Thus,
`in the context of claim 1, and claims dependent therefrom, a setpoint must be
`a torque value, and not some state of charge of a battery.
`For reasons discussed above, we construe “setpoint” and “SP” as
`“predetermined torque value that may or may not be reset.”
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`3. “said controller starts and operates . . . “when torque require to
`be produced . . . is at least equal to a setpoint (SP)”
`Patent Owner asserts that the challenged claims require a comparison
`of road load (RL) to setpoint (SP) and also to maximum torque output
`(MTO). PO Resp. 11–15. The assertion is based on the requirements in
`claim 1 of “when torque require to be produced . . . is at least equal to a
`setpoint (SP).” Id.
`In the above discussion of the construction of setpoint, we already
`noted that claim 1 requires a comparison of road load to a setpoint because
`of the claim recitations “when torque require to be produced . . . is at least
`equal to a setpoint (SP).” Petitioner has not advanced any cogent reasoning
`why no such comparison is required by the claims. We determine that the
`claims require a comparison of road load (RL) to a lower level setpoint (SP)
`and also to a maximum torque output (MTO). That, however, does not
`mean the claims exclude the comparison of other parameters.
`C. Claims 1 and 5 – Obviousness over Ibaraki’ 882 and Koide
`Petitioner contends that claims 1 and 5 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and Koide. Pet. 8–28.
`1. Ibaraki ʼ882 (Ex. 1303)
`Ibaraki ’882 describes a drive control apparatus and method for a
`hybrid vehicle equipped with two drive power sources consisting of an
`electric motor and engine such as an internal combustion engine. Ex. 1303,
`1:9–14. Drive control apparatus includes controller 128 that includes a drive
`source selecting means 160. Drive source selecting means is adapted to
`select one or both of engine 112 and motor 114 as the drive power source or
`sources according to a drive source selecting data map stored in memory
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`means 162. Id. at 20:38–43, Figs. 8 and 9. In particular, controller 128 has
`a MOTOR DRIVE mode in which motor 114 is selected as the drive power
`source, an ENGINE DRIVE mode in which the engine 112 is selected as the
`drive power mode source, and an ENGINE-MOTOR DRIVE mode in which
`both the engine 112 and the motor 114 are selected as the drive power
`sources. Id. at 20:43–49.
`Figure 11, reproduced below, depicts a graph which represents a
`predetermined relationship between the vehicle drive torque and running
`speed V and the three drive modes. Id. at 20:50–53.
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`Figure 11 shows a graph which represents a predetermined
`relationship between the vehicle drive torque and running speed.
`Drive source selecting means 160 (Fig. 9) selects the MOTOR
`DRIVE mode when the vehicle running condition as represented by the
`current vehicle drive torque and speed V is held within the range below the
`first boundary line B. When the vehicle running condition is held within the
`range between the first and second boundary lines B and C, the drive source
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`selecting means 160 selects the ENGINE DRIVE mode. When the vehicle
`running condition is in the range above the second boundary line C, the
`drive source selecting means 160 selects the ENGINE[-MOTOR] DRIVE
`mode. Id. at 20:59–21:1. Ibaraki ’882 describes that the boundary line B
`may be adjusted from B1 to B2 so as to enlarge the range in which the
`MOTOR DRIVE mode is selected. Id. at 21:2–4. Ibaraki ’882 further
`describes an ELECTRICITY GENERATING DRIVE mode where the
`engine provides surplus power that is greater than the vehicle drive torque.
`The surplus power from the engine is used to operate the electric motor as a
`generator to regeneratively charge the battery. Id. at 23:1–30.
`2. Koide (Ex. 1317)
`Koide discloses a hybrid drive system for driving a motor vehicle,
`which has an engine and a motor/generator as driving power sources.
`Ex. 1317, 1:8‒11. Figure 2, which is reproduced below, depicts the hybrid
`vehicle system that includes a first and second electric motors. Id. at 7:45‒
`64.
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`Figure 2 discloses hybrid drive system 10 for a motor vehicle. Id. at
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`7:45‒47. Hybrid drive system 10 includes internal combustion engine 12,
`first motor/generator 1, distribution mechanism 20, and second
`motor/generator 22. Id. at 7:48‒59. Engine 12, distributing mechanism 20,
`and first motor/generator 16 are disposed coaxially with each other, arranged
`in the axial direction, whereas second motor/generator 22 is disposed
`coaxially with and radially outward of distributing mechanism 20. Id. at 59‒
`64. First motor/generator 16 and second motor/generator 22 are electrically
`connected to electric energy storage device 40. Id. at 8:14‒19.
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`Electric energy storage device 40 is charged by first motor/generator
`16. Id. at 1:65‒2:2. Engine 12 is started by first electric motor/generator 16.
`Id. at 2:2‒4. First motor/generator is also used as a drive power source for
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`the vehicle. Id. at 2:4‒5. Second motor/generator 22 is used primarily as an
`electric motor or drive power source for driving the vehicle, either alone or
`in cooperation with engine 12. Id. at 2:6‒9. Second motor/generator 22 is
`also used as an electric generator for charging electric energy storage device
`40 by regenerative braking. Id. at 2:9‒12.
`3. Analysis
`Petitioner contends that claims 1 and 5 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and Koide. Pet. 8–28.
`Petitioner provides a detailed analysis, supported by evidence,
`demonstrating, by a preponderance of the evidence, that claims 1 and 5 are
`obvious over Ibaraki ʼ882 and Koide. Id.
`As discussed above, we dismiss the inter partes review with respect to
`claim 1. Claims 3–5, 14, 16, 19, 20, and 22, however, depend from claim 1
`and necessarily include all of the limitations of claim 1. Accordingly, we
`first address the contentions made by Petitioner as to how the combination
`of Ibaraki ’882 and Koide renders obvious claim 1.
`Claim 1 recites “[a] hybrid vehicle,” the vehicle comprising “an
`internal combustion engine controllably coupled to road wheels of said
`vehicle.” Petitioner contends that Ibaraki ʼ882 discloses a hybrid vehicle
`that is propelled by an internal combustion (IC) engine and an electric
`motor. Pet. 8 (citing Ex. 1303, 1:9–14; Ex. 1308 ¶ 180). Petitioner
`specifically argues that Ibaraki ʼ882 discloses that the engine is controllably
`coupled to road wheels via a clutch. Id. at 11 (citing Ex. 1303, 19:50–54,
`Fig. 8; Ex. 1308 ¶¶ 184–190).
`Claim 1 further recites “a first electric motor connected to said engine
`[a]nd operable to start the engine responsive to a control signal” and “a
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`second electric motor connected to road wheels of said vehicle, and operable
`as a motor, to apply torque to said wheels to propel said vehicle, and as a
`generator, for accepting torque from at least said wheels for generating
`current.” Petitioner argues that Ibaraki ʼ882 discloses an electric motor that
`when the vehicle is in the “drive” state, the electric motor transfers power to
`the drive wheels. Pet. 16 (citing Ex. 1303, 19:24–28; Ex. 1308 ¶ 213).
`Petitioner argues that this electric motor meets the claimed “second electric
`motor” and a person with ordinary skill in the art would have understood
`that the transferring of power to the drive wheels is the same as applying
`torque to said wheels. Id. (citing Ex. 1308 ¶¶ 214–215). Petitioner contends
`that Ibaraki ʼ882 discloses a “charge” state where the electric motor serves
`as an electric generator using regenerative braking. Id. at 16–17 (citing
`Ex. 1303, 19:61–67, 22:19–30). Petitioner further argues that Ibaraki ʼ882
`discloses an electric generator in addition to the electric motor and a person
`with ordinary skill in the art would have understood that the terms
`“generator” and “electric motor,” when discussing hybrid vehicles,
`“indicate[s] whether the operation of the electric machines is motor or
`generator-based.” Id. at 13 (quoting Ex. 1316, 21). Petitioner alternatively
`argues that Koide discloses an electric generator that may be used as an
`electric motor. Id. (citing Ex. 1317, 1:30–32). Petitioner further argues that
`Koide discloses a dual electric motor hybrid vehicle, where the first motor is
`used to start the engine and the second motor is used as a drive power
`source. Id. at 13–15 (citing Ex. 1317, 7:45–64, 8:47–60, 9:9–65; Ex. 1308
`¶¶ 205–206). Petitioner also argues that it would have been obvious to
`combine the controls of Koide to the existing structure of Ibaraki ʼ882 for
`starting the engine via Ibaraki’s electric generator, and allow the electric
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`motor to propel the vehicle in order to remove the need for an exclusive
`engine starter, thereby reducing costs by reducing the number of
`components. Id. at 15–16 (citing Ex. 1317, 1:60–64; Ex. 1308 ¶ 179).
`Claim 1 also recites “a battery, for providing current to said motors
`and accepting charging current from at least said second motor.” Petitioner
`contends that Ibaraki ʼ882 discloses an electrical energy storage device in
`the form of a battery, and the battery is used for providing current during the
`“drive” state and a person with ordinary skill in the art would have
`understood that a battery would have been operable to provide or accept
`current from any connected electric motor-generator. Id. at 17–18 (citing
`Ex. 1303, 11:31–33, 19:55–57; Ex. 1308 ¶¶ 223–228).
`Claim 1 additionally recites “a controller for controlling the flow of
`electrical and mechanical power between said engine, first and second
`motors, and wheels.” Petitioner contends that Ibaraki ʼ882 discloses a
`controller that
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