UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
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`Case IPR2015-00795
`Patent 7,104,347
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`PATENT OWNER’S
`RESPONSE TO PETITION
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`Patent No. 7,104,347
`Patent Owner’s Response
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`Case IPR2015-00795
`Attorney Docket No: 36351-0011IP5
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`TABLE OF CONTENTS
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`I. 
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`II. 
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`INTRODUCTION ........................................................................................... 1 
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`THE ’347 PATENT ......................................................................................... 3 
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`A. 
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`B. 
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`Background of the ’347 patent .............................................................. 3 
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`Claim Construction ............................................................................... 6 
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`1. 
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`“setpoint (SP)” ............................................................................ 7 
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`The Challenged Claims Require a Comparison of Required
`2. 
`Torque to Setpoint ............................................................................... 11 
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`III.  ARGUMENT ................................................................................................. 15 
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`A. 
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`B. 
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`Ford is Estopped from Maintaining its Challenges to Claim 1 ........... 16 
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`Grounds 1 Through 7 are Deficient—Ford Has Failed to Demonstrate
`that Ibaraki ’882 in view of Koide Discloses or Renders Obvious the
`Features Recited in the Challenged Claims ........................................ 16 
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`torque
`load” or
`Ibaraki ’882 does not compare “road
`1. 
`requirements to “setpoint” ................................................................... 16 
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`Ibaraki ’882 does not disclose a setpoint that is substantially less
`2. 
`than MTO ............................................................................................ 34 
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`C. 
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`Ground 2 is Deficient—the Prior Art of Record Fails to Disclose
`Torque-Load-Based Hysteresis ........................................................... 38 
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`D.  Ground 3 is Deficient—the Prior Art of Record Fails to Disclose
`Properly Sizing Powertrain Components ............................................ 40 
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`E. 
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`Ground 4 is Deficient—the Prior Art of Record Fails to Disclose
`Limiting a Rate of Change of Torque Output of the Engine to Achieve
`Stoichiometry ...................................................................................... 42 
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`Vittone Does Not Disclose Controlling the Engine by Limiting a
`1. 
`Rate of Change of Torque Output of the Engine ................................ 43 
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`Ford Fails to Establish a Motivation to Combine Vittone with
`2. 
`Ibaraki ’882 ......................................................................................... 46 
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`F. 
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`Ground 5 is Deficient—Ford Fails to Establish a Rationale to Combine
`Severinsky and Koide with Yamaguchi .............................................. 48 
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`G.  Ground 6 is Deficient—Ford Fails to Establish a Motivation to
`Combine Ibaraki ’882 and Koide with Ibaraki ’626 ........................... 49 
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`H.  Ground 7 is Deficient—Lateur’s Cruise Control Does not Disclose a
`Road-Load-Based Control Strategy .................................................... 51 
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`IV.  CONCLUSION .............................................................................................. 52 
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`Patent No. 7,104,347
`Patent Owner’s Response
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`Cases
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`Case IPR2015-00795
`Attorney Docket No: 36351-0011IP5
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`TABLE OF AUTHORITIES
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` Page(s)
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`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) .......................................................................... 10
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ............................................................................ 13
`
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999) ...................................................................... 6, 10
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`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ................................................................ 6, 47, 50
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`Fuji Photo Film Co. v. Int'l Trade Comm’n,
`386 F.3d 1095 (Fed. Cir. 2004) .......................................................................... 10
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`Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
`222 F.3d 951 (Fed. Cir. 2000) ...................................................................... 35, 37
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`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) ........................................................ 42, 46, 49, 52
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`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ................................................................ 32, 40, 42
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................... 32, 40, 42, 51
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`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 13
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ................................................................ 6, 10, 13
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`In re Nilssen,
`837 F.2d 1098 (Fed. Cir. 1987) .......................................................................... 51
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`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................ 6, 10, 13
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`Nystrom v. Trex Co.,
`424 F.3d 1136 ..................................................................................................... 35
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`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 6
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`In re Vaidyanathan,
`381 Fed. Appx. 985 (Fed. Cir. 2010) .................................................................. 10
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`In re Wright,
`569 F.2d 1124 (C.C.P.A. 1977) .......................................................................... 35
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`Statutes
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`35 U.S.C. § 103 .......................................................................................................... 1
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`35 U.S.C. § 311 et seq. ............................................................................................... 1
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`35 U.S.C. § 315(e)(1) ............................................................................................... 16
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`Other Authorities
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`37 C.F.R. § 42.100(b) ...................................................................................... 1, 6, 16
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`37 C.F.R. § 42.120 ..................................................................................................... 1
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`Exhibit Number
`Ex. 2301
`Ex. 2302
`Ex. 2303
`Ex. 2304
`Ex. 2305
`Ex. 2306
`Ex. 2307
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`Ex. 2308
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`Ex. 2309
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`Ex. 2310
`Ex. 2311
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`Ex. 2312
`Ex. 2313
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`EXHIBITS
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`Exhibit Name
`Table of Ford’s IPR Petitions
`Gregory Davis Deposition Transcript (Feb. 25, 2015)
`The Oxford Essential Dictionary, American Ed. (1998)
`(excerpt)
`Appendix A (Jan. 15, 2014)
`Declaration of Daniel A. Tishman in Support of Patent
`Owners’ Motion for Pro Hac Vice Admission
`Declaration of Neil Hannemann
`Neil Hannemann CV
`Gregory W. Davis, Deposition Tr. (IPR2015-00722,
`IPR2015-00784,
`IPR2015-00787,
`IPR2015-00790,
`IPR2015-00791,
`IPR2015-00794,
`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”)
`Ex. 1661 from IPR2015-00790
`Jeffery L. Stein, Deposition Tr. (IPR2014-00875)
`(Mar. 3, 2015)
`Gregory W. Davis, Deposition Tr. (IPR2014-00571,
`IPR2014-00579) (January 13, 2015)
`Gregory W. Davis Deposition Tr. (IPR2014-01416)
`(June 3, 2015)
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`Patent No. 7,104,347
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`Attorney Docket No: 36351-0011IP5
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`Pursuant to 37 C.F.R. § 42.120 and the Decision to Institute (“Institution
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`Decision” or “Inst. Dec.”), Patent Owners Paice LLC and the Abell Foundation, Inc.
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`(collectively, “Paice”) hereby submit this Response to the Petition for Inter Partes
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`Review of U.S. Patent. No. 7,104,347 under 35 U.S.C. § 311 et seq., and 37 C.F.R.
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`§ 42.100 et seq. (“Petition” or “Pet.”) filed by Ford Motor Company (“Ford”).
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`I.
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`INTRODUCTION
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`U.S. Patent. No. 7,104,347 (“the ’347 patent”), which is the subject of the
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`present Petition, claims an inventive and novel method of control for a hybrid
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`electric vehicle that uses road load, setpoint, and the maximum torque output of an
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`internal combustion engine to determine when to transition between various
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`operating modes in which the vehicle is propelled by an electric motor, an internal
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`combustion engine, or both. Ford’s Petition challenges claims 1-5, 14, 16, 19, 20,
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`and 22 (“the challenged claims”) as obvious under 35 U.S.C. § 103. Following
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`Paice’s preliminary response, filed on August 3, 2015, the Board instituted review
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`of each of the challenged claims, except for claim 2, as obvious over various
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`combinations of U.S. Patent No. 5,789,882 to Ibaraki et al. (Ex. 1303) (“Ibaraki
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`’882”), U.S. Patent 5,934,395 to Koide (Ex. 1317) (“Koide”), U.S. Patent 6,116,363
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`to Frank (Ex. 1318) (“Frank”), U.S. Patent No. 4,335,429 to Kawakatsu et al. (Ex.
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`1305) (“Kawakatsu”), Oreste Vittone et al., FIAT Research Centre, Fiat Conceptual
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`Approach to Hybrid Car Design (Ex. 1320) (“Vittone”), U.S. Patent No. 5,865,263
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`to Yamaguchi (Ex. 1321) (“Yamaguchi”), US Patent 6,003,626 et al. (“Ibaraki
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`’626”), and US Patent 5,823,280 to Lateur et al. (Ex. 1307) (“Lateur”). All
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`challenged claims are patentable over the cited grounds for the reasons set forth
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`herein.
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`Ford’s arguments with regards to the ’347 patent are fundamentally flawed.
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`The ’347 patent’s innovative control strategy, using road load or torque
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`requirements, setpoint, and the engine’s maximum torque output (MTO) to decide
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`which operating mode to select to maximize efficiency, is absent in the cited
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`references. Instead, Ibaraki ’882 discloses selecting operating modes based on
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`power, not road load or torque-based setpoints. The following illustration of each
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`control system reveals the manifest differences:
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`The control strategy claimed by the ’347 patent compares toque requirements
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`to setpoint and MTO, and, as a result, operates the engine at a wide range of
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`relatively high torque values across the engine’s entire speed range, as depicted
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`above on left. The power-based control strategy of Ibaraki ’882 compares the
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`instantaneous drive power to power thresholds (which are unrelated to the engine’s
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`MTO) and, therefore, operates the engine in a defined range of power values, as
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`depicted above on right. Consequently, Ibaraki ’882 operates the motor much more
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`frequently than the inventive, road load-based control strategy claimed in the ’347
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`patent. Ford has presented no logical rationale as to why the ’347 patent’s control
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`system would be rendered obvious by the power-based system of Ibaraki ’882.
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`II. THE ’347 PATENT
`A. Background of the ’347 patent
`The ’347 patent, entitled “Hybrid Vehicles,” issued on September 12, 2006,
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`from an application with a priority date of September 14, 1998. The ’347 patent
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`discloses embodiments of a hybrid electric vehicle, with an internal combustion
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`engine and two motors. One or both of the motors may be used to recharge the
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`battery. Additionally, a microprocessor is employed to select different operating
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`modes based on the vehicle’s instantaneous torque requirements, the state of charge
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`of the battery bank, and other variables. See, e.g., Ex. 1301 at Abstract.
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`An embodiment of the hybrid vehicle disclosed in the ’347 patent is shown in
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`Figure 3, reproduced below:
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`Id. at Fig. 3. As shown, a traction motor 25 is connected to the road wheels 34
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`through a differential 32. A starter motor 21 is connected to the internal combustion
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`engine 40. The motors 21 and 25 are functional as either motors or generators,
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`depending on the operation of the corresponding inverter/charger units 23 and 27,
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`which connect the motors to the battery bank 22. See id. at 26:13-24.
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`These components are controlled by a microprocessor 48 or any controller
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`capable of examining input parameters and signals and controlling the mode of
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`operation of the vehicle. See, e.g., id. at 26:25-27:20. For example, control of engine
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`40 is accomplished by way of control signals provided by the microprocessor to the
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`electronic fuel injection (EFI) unit 56 and electronic engine management (EEM) unit
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`55. Control of (1) starting of the engine 40; (2) use of motors 21 and 25 to provide
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`propulsive torque; or (3) use of motors as generators to provide regenerative
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`recharging of battery bank 22, is accomplished through control signals provided by
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`the microprocessor to the inverter/charger units 23 and 27. See, e.g., id. at 26:59-
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`27:20, 28:38-49.
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`The hybrid vehicle may be operated in a number of modes based on the
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`vehicle’s instantaneous torque requirements, the engine’s maximum torque output,
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`the state of charge of the battery, and other operating parameters. In an
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`implementation of the ’347 patent, the microprocessor causes the vehicle to operate
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`in various operating modes pursuant to its control strategy.
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`For example, in mode I, the hybrid vehicle is operated as an electric car, with
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`the traction motor providing all torque to propel the vehicle. Id. at 37:26-35. As the
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`vehicle continues to be propelled in electric only mode, the state of charge of the
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`battery may become depleted, and need to be recharged. In this case, the hybrid
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`vehicle may transition to mode II to recharge the battery, in which case the vehicle
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`operates as in mode I, with the addition of the engine running the starter/generator
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`motor to provide electrical energy to operate the traction motor and recharge the
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`battery. Id. at 37:35-39. When the internal combustion engine can operate in its fuel
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`efficient range, the hybrid vehicle operates in mode IV, with the engine providing
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`torque to propel the vehicle. Id. at 37:45-47, 38:55-65. If the vehicle requires
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`additional torque, such as for acceleration or hill-climbing, the vehicle may enter
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`mode V, where the traction motor provides additional torque to propel the vehicle
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`beyond that provided by engine 40. Id. at 38:4-11.
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`Patent No. 7,104,347
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`B. Claim Construction
`In IPR proceedings, the Board applies the “broadest reasonable interpretation”
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`standard, which mandates that “[a] claim in an unexpired patent shall be given its
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`broadest reasonable construction in light of the specification of the patent in which
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`it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793
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`F.3d 1268, 1278 (Fed. Cir. 2015). The Federal Circuit has recognized, however, that
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`that standard requires that the claims must be read in light of the specification as it
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`would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc.,
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`603 F.3d 1255, 1260 (Fed. Cir. 2010). In Microsoft Corp. v. Proxyconn, Inc., the
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`Federal Circuit explained that the broadest reasonable interpretation does not mean
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`that “the Board may construe the claims during IPR so broadly that its constructions
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`are unreasonable under general claim constructions principles,” and that the
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`construction must not be “divorced from the specification and the record evidence”
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`and inconsistent with “the one that those skilled in the art would reach.” 789 F.3d
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`1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
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`2011); In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). “A construction that
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`is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language
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`and disclosure’ will not pass muster.” Microsoft, 789 F.3d at 1298 (quoting Suitco,
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`603 F.3d at 1260).
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`Patent No. 7,104,347
`Patent Owner’s Response
`1.
`A “setpoint” is “a definite, but potentially variable value at which a transition
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`“setpoint (SP)”
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`between operating modes may occur.”1 In its Institution Decision, the Board
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`construed “setpoint” as a “predetermined torque value that may or may not be reset.”
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`Paice respectfully requests that the Board reconsider its construction as it is
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`unreasonably broad and does not reasonably reflect the disclosure of the ’347 patent.
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`Instead, the Board should adopt Paice’s construction (“a definite, but potentially
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`variable value at which a transition between operating modes may occur”).
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` The claims and the specification of the ’347 patent make clear that a
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`“setpoint” is not simply a numerical value divorced from the context of the control
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`1 As the Board is aware, the U.S. District Court for the Eastern District of
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`Texas and the U.S. District Court for the District of Maryland both have construed
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`the term “setpoint (SP)” to mean “a definite, but potentially variable value at which
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`a transition between operating modes may occur.” See Paice LLC v. Toyota Motor
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`Corp., Case No. 2:07-cv-180 (E.D. Tex. Dec. 5, 2008) (Ex. 1313 at 204); Paice LLC
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`v. Hyundai Motor Corp., Case No. 2:12-cv-499 (D. Md. Jul. 24, 2014) (Ex. 1314 at
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`103) (“The Plaintiffs’ proposed construction of ‘setpoint’ as ‘a definite, but
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`potentially variable value at which a transition between operating modes may occur,’
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`is consistent with the language of the claims and the intrinsic evidence.”).
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`system. Rather, “setpoint” serves the crucial function of marking the transition from
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`one claimed mode to another, and in particular, the transition from propelling the
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`vehicle with the motor to propelling the vehicle with the engine. See, e.g., Ex. 1301
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`at 40:50-55.
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`First, the claims are clear that a “setpoint” marks a point at which the vehicle
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`may transition between two modes. For example, in claims 1, 7, 23, and 28, the
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`“setpoint” marks the transition between a mode in which only the motor propels the
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`vehicle, to modes in which the engine also can be used to propel the vehicle or charge
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`the battery. See id. at claims 1, 7, 23, 28. Dependent claim 3 similarly requires that
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`the “controller monitors the road load (RL) on the vehicle over time, and controls
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`transition between propulsion of said vehicle by said motor(s) to propulsion by said
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`engine responsive to RL reaching SP.” Id. at claim 3 (emphasis added). Claim 25
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`recites similar language.
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`Additionally,
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`the specification unambiguously defines “setpoint” as
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`synonymous with a “transition point” between modes:
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`[I]n the example of the inventive control strategy discussed above, it is
`repeatedly stated that the transition from low-speed operation to
`highway cruising occurs when road load is equal to 30% of MTO. This
`setpoint, referred to in the appended claims as "SP", and sometimes
`hereinafter as the transition point (i.e., between operation in modes I
`and IV) is obviously arbitrary and can vary substantially, e.g., between
`30-50% of MTO, within the scope of the invention.
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`Id. at 40:47-55 (emphasis added); see also id. at 40:22-31 (“[T]he microprocessor
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`tests sensed and calculated values for system variables, such as the vehicle’s
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`instantaneous torque requirement, i.e., the ‘road load’ RL . . . against setpoints, and
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`uses the results of the comparisons to control the mode of vehicle operation.”),
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`41:2-4 (“For example, in response to recognition of a regular pattern as above, the
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`transition point might be adjusted to 60% of MTO; . . . .”), 41:10-14 (“It is also
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`within the scope of the invention to make the setpoint SP to which the road load is
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`compared to control the transition from mode I to mode IV somewhat ‘fuzzy’, [sic]
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`so that SP may vary from one comparison of road load to MTO to the next
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`depending on other variables.”), 41:66-42:2 (“FIG. 9 thus shows the main decision
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`points of the control program run by the microprocessor, with the transition point
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`between mode I, low-speed operation, and mode IV highway cruising, set at a road
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`load equal to 30% of MTO.”), 44:32-39 (“Further, as noted above the transition
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`points between modes I, IV, and V in particular may vary in accordance with the
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`operator’s commands, . . . .”).
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`The Board’s initial construction of “setpoint” as a “predetermined torque
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`value that may or may not be reset,” see Inst. Dec. at 10, is incorrect and
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`unreasonably broad because it fails to recognize that “setpoint” represents a point at
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`which a transition between different operating modes may occur. The broadening
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`construction is “divorced from the specification and the record evidence” and
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`inconsistent with “the one that those skilled in the art would reach.” See Microsoft,
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`789 F.3d at 1298 (quoting NTP, 654 F.3d at 1288; Cortright, 165 F.3d at 1358). In
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`essence, the construction covers hybrid vehicle systems where transitions between
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`modes never occur—a clear error that is fundamentally contrary to the specification
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`of the ’347 patent. See Fuji Photo Film Co. v. Int'l Trade Comm’n, 386 F.3d 1095,
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`1098 (Fed. Cir. 2004) (claim should not be given overly broad construction that is
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`inconsistent with how claim term is used in the specification). The Board’s
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`“broadest reasonable interpretation” must be reasonable, and must be in conformity
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`with the invention as described in the specification. In re Vaidyanathan, 381 Fed.
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`Appx. 985, 995-96 (Fed. Cir. 2010); see also In re Abbott Diabetes Care Inc., 696
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`F.3d 1142, 1149 (Fed. Cir. 2012) (holding that Board’s construction of
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`“electrochemical sensor” was “unreasonable and inconsistent with the language of
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`the claims and the specification”).
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`Additionally, as set forth in Paice’s preliminary response, “setpoint” should
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`not be limited to a torque value—the specification makes clear that a setpoint is not
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`limited to a torque value and in fact could also be a measure of the state of charge of
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`the battery.
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` [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
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`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.
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`Ex. 1301 at 40:22-31 (emphasis added). Therefore, Paice respectfully requests that
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`the Board reconsider its construction and adopt Paice’s construction of “setpoint” to
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`make clear that it is a value “at which a transition between operating modes may
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`occur.”
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`2.
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`The Challenged Claims Require a Comparison of Required
`Torque to Setpoint
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`Each of the challenged claims require that the required torque is compared to
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`setpoint and or MTO See Ex. 1301 at claim 1 (“wherein said controller starts and
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`operates said engine when torque require to be produced by said engine to propel the
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`vehicle and/or to drive either one or both said electric motor(s) to charge said battery
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`is at least equal to a setpoint (SP)”). Because Ford appears intent on interpreting this
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`limitation in an unreasonably broad manner to essentially capture any system where
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`a torque value is above/below a threshold either by coincidence or otherwise, the
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`Board should construe this limitation to make clear that the claimed controller (or
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`method of control) selects operating modes based on a comparison of the required
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`torque to setpoint.
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`Specifically, the Board should construe “wherein said controller starts and
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`operates said engine when torque require to be produced by said engine to propel the
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`Attorney Docket No: 36351-0011IP5
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`vehicle and/or to drive either one or both said electric motor(s) to charge said battery
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`is at least equal to a setpoint (SP)” as “wherein said controller starts and operates
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`said engine when a comparison of the torque required to be produced by said engine
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`to propel the vehicle and/or to drive either one or both said electric motor(s) to charge
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`said battery to a setpoint (SP) results in a determination that the torque require[d] to
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`be produced by said engine to propel the vehicle and/or to drive either one or both
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`said electric motor(s) to charge said battery is at least equal to a setpoint (SP).”
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`The broadest reasonable interpretation of this limitation requires that the
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`controller (or method of control) employ the motor and/or engine based on a
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`comparison of the required torque to setpoint. First, the intrinsic evidence of the
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`’347 patent, including the claims and the specification, makes clear that the invention
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`is directed to a control algorithm for selecting operating modes based on the
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`comparison of road load (the amount of instantaneous torque required to propel the
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`vehicle) to SP. The plain language of the claims makes clear that a comparison of
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`the required torque to SP is required. For example, the requirement in the challenged
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`claims that the “controller starts and operates said engine when torque require to be
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`produced by said engine to propel the vehicle and/or to drive either one or both said
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`electric motor(s) to charge said battery is at least equal to a setpoint (SP)” makes
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`clear to a person of ordinary skill in the art that the required torque must be compared
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`to SP—otherwise, the language following the word “when” would be rendered
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`superfluous. See Ex. 2306 at ¶ 36. It is axiomatic that “[c]laims should not be
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`construed so as to render terms redundant or superfluous.” Microsoft Corp. v.
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`Surfcast, Inc., IPR2013-00292, IPR2013-00293, IPR2013-00294, IPR2013-00295,
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`Paper No. 93 at 11-12 (PTAB Oct. 14, 2014) (citing Bicon, Inc. v. Straumann Co.,
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`441 F.3d 945, 950 (Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward
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`giving effect to all terms in the claim.”)); see also Merck & Co. v. Teva Pharm. USA,
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`Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives
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`meaning to all the terms of the claim is preferred over one that does not do so.”). In
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`other words, the term “when” must be understood to have causative effect. To
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`interpret the challenged claims to require mere coincidence would be a construction
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`“divorced from the specification and the record evidence” and inconsistent with “the
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`one that those skilled in the art would reach.” Microsoft Corp. v. Proxyconn, Inc.,
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`789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re NTP, Inc., 654 F.3d 1279, 1288
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`(Fed. Cir. 2011).
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`Next, the specification of the ’347 patent specifically describes a control
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`algorithm, depicted in Fig. 9, that selects operating modes by comparing road load
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`to SP. See Ex. 1301 at Fig. 9; col. 41:66-42:2 (“FIG. 9 thus shows the main decision
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`points of the control program run by the microprocessor, with the transition point
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`between mode I, low-speed operation, and mode IV highway cruising, set at a road
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`load equal to 30% of MTO”); see also id. at 40:47-50 (“For example, in the example
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`of the inventive control strategy discussed above, it is repeatedly stated that the
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`transition from low-speed operation to highway cruising occurs when road load is
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`equal to 30% of MTO.”); id. at 41:10-14; id. at 41:36-39.
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`This Board has previously recognized that the claims require a comparison of
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`road load to setpoint. See Inst. Dec. at 8 (“Petitioner correctly notes that the claims
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`compare the setpoint either to an engine torque value or a torque based ‘road load’
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`value.”). Even Ford appears to concede that the claims of the ’347 patent require a
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`comparison of road load to setpoint. For example, Ford explains:
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`All claims recite a “setpoint” or “SP” value being compared to either:
`(1) an engine torque value (e.g., claim 1); or (2) a torque-based “road
`load” value (e.g., claim 33). No claims recite a “setpoint” or “SP” in
`comparison to any other system variable. Likewise, the specification
`says “the microprocessor tests sensed and calculated values for system
`variables, such as the vehicle’s instantaneous torque requirement, i.e.,
`the ‘road load’ RL . . . against setpoints, and uses the results of the
`comparisons to control the mode of vehicle operation.” (‘347 Patent,
`Ex. 1301 at 40:22-32. To do so (e.g., whether “RL < SP”), the
`“setpoint” would have to be in the same measurement units as the “road
`load.”
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`Pet. at 6-7 (emphasis added). Yet despite these admissions, Ford’s Petition makes
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`clear that it chose to ignore the comparison and causation requirements. Ford first
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`ignores the comparison between the required torque and setpoint, stating only that
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`Ibaraki ’882’s power threshold has a torque component that may be above or below
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`that threshold. See, e.g., Pet. at 21. By ignoring the comparison and causation
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`requirements, Ford has essentially construed the claims to capture any control
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`system where a torque value happens to be above/below a threshold irrespective of
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`the criteria used by the control system. Such an interpretation of the claims is
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`unreasonably broad and should be rejected.
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`Therefore, for the reasons expressed above, for purposes of this IPR, the
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`Board should construe “wherein said controller starts and operates said engine when
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`torque require to be produced by said engine to propel the vehicle and/or to drive
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`either one or both said electric motor(s) to charge said battery is at least equal to a
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`setpoint (SP)” as “wherein said controller starts and operates said engine when a
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`comparison of the torque required to be produced by said engine to propel the vehicle
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`and/or to drive either one or both said electric motor(s) to charge said battery to a
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`setpoint (SP) results in a determination that the torque require[d] to be produced by
`
`said engine to propel the vehicle and/or to drive either one or both said electric
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`motor(s) to charge said battery is at least equal to a setpoint (SP).”
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`III. ARGUMENT
`Each of the three instituted grounds of unpatentability should be denied
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`because the claimed invention is novel and nonobvious. In particular, Ibaraki ’882
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`alone or in combination with any one of Koide, Frank, Kawakatsu, Vittone,
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`Yamaguchi, Ibaraki ’626, and/or Lateur does not render the challenged claims
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`obvious.
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`Ford is Estopped from Maintaining its Challenges to Claim 1
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`A.
`First, Ford is estopped from maintaining its challenges to claim 1, pursuant to
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`35 U.S.C. § 315(e)(1). Under section 315(e)(1), upon a “final written deci