`571-272-7822
`
` Paper 10
`
`Entered: September 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2014-00570
`Patent 8,214,097 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`I. INTRODUCTION
`Ford Motor Company (“Ford”) filed a Petition requesting an inter
`partes review of claims 30–33, 35, 36, 38, and 39 of U.S. Patent No.
`8,214,097 B2 (“the ’097 patent”). Paper 1 (“Pet.”). The owner of the
`’097 patent, Paice LLC & The Abell Foundation, Inc. (“Paice”), filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.” ).1 We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” After considering the Petition and Preliminary Response, we
`conclude that Ford has demonstrated a reasonable likelihood that it would
`prevail in showing unpatentability of all but one of the challenged claims.
`Accordingly, we authorize institution of an inter partes review as to claims
`30–33, 35, 36, and 39 of the ’097 patent, but deny review as to claim 38.
`II. BACKGROUND
`
`The ’097 Patent 2
`A.
`The ’097 patent describes a hybrid vehicle with an internal
`
`combustion engine, an electric motor, and a battery bank, all controlled by a
`microprocessor that directs the transfer of electrical and mechanical power
`
`
`1 Paice filed both redacted and unredacted versions of the Preliminary
`
`Response. Papers 7, 8. Our decision cites to the redacted version, i.e., Paper
`8, which is marked “Public.”
`2 The ’097 patent is also the subject of a co-pending case, Paice, LLC
`
`et al. v. Ford Motor Company, No. 1-14-cv-00492, filed Feb. 19, 2014, in
`the U.S. District Court for the District of Maryland. Pet. 2.
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`between the engine, the motor, and the wheels of the vehicle. Ex. 1001,
`Abs., Fig. 4. The hybrid vehicle features a hybrid control strategy that limits
`the rate of increase of the engine’s output torque so that fuel combustion in
`the engine occurs at a mixture near the stoichiometric air-fuel ratio. Id. at
`37:2–42. By limiting the rate of increasing engine torque and maintaining a
`near stoichiometric air-fuel mixture, the hybrid control strategy of the ’097
`patent increases fuel efficiency and reduces undesirable emissions during
`start and operation of the vehicle. Id. at 38:62–39:14.
`B.
`Challenged Claims
`Ford challenges independent claim 30 and dependent claims 31–33,
`35, 36, 38, and 39 of the ’097 patent. Claim 30 is illustrative:
`30. A hybrid vehicle, comprising:
`one or more wheels;
`an internal combustion engine operable to propel the
`hybrid vehicle by providing torque to the one or more wheels,
`wherein said engine has an inherent maximum rate of increase
`of output torque;
`
`at least one electric motor operable to propel the hybrid
`vehicle by providing torque to the one or more wheels;
`
`a battery coupled to the at least one electric motor,
`operable to provide electrical power to the at least one electric
`motor; and
`
`a controller, operable to control the flow of electrical and
`mechanical power between the engine, the at least one electric
`motor, and the one or more wheels, responsive to an operator
`command;
`
`wherein said controller controls said at least one electric
`motor to provide additional torque when the amount of torque
`being provided by said engine is less than the amount of torque
`required to operate the vehicle; and
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`wherein said controller controls said engine such that a
`
`rate of increase of output torque of said engine is limited to less
`than said inherent maximum rate of increase of output torque,
`and wherein the controller is operable to limit the rate of change
`of torque produced by the engine such that combustion of fuel
`within the engine occurs at a substantially stoichiometric ratio.
`
`Ex. 1001, 60:4–29.
`C.
`Evidence of Record
`
`Ford relies upon the following prior art as its basis for challenging the
`claims of the ’097 patent. Ford also proffers the Declaration of Dr. Jeffrey
`L. Stein. Ex. 1002.
`
`Anderson
`
`References
`’455 PCT
`publication
`Caraceni
`
`Patents/Printed Publications
`PCT INTERNATIONAL PUBLICATION
`NO. WO 00/15455
`A. Caraceni et al., Hybrid Power
`Unit Development for Fiat
`Multipla Vehicle, SAE TECHNICAL
`PAPER 981124
`C. Anderson & E. Pettit, The
`Effects of APU Characteristics on
`the Design of Hybrid Control
`Strategies for Hybrid Electric
`Vehicles, SAE TECHNICAL PAPER
`950493
`Yamaguchi U.S. Patent No. 5,865,263
`Katsuno
`U.S. Patent No. 4,707,984
`Severinsky U.S. Patent No. 5,343,970
`Boberg
`U.S. Patent No. 5,959,420
`
`Exhibit
`Date
`Mar. 23, 2000 1004
`
`1998
`
`1005
`
`1995
`
`1006
`
`1007
`Feb. 2, 1999
`Nov. 24, 1987 1008
`Sep. 6, 1994
`1009
`Sep. 28, 1999
`1012
`
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`D.
`
`Asserted Grounds of Unpatentability
`Ford challenges the patentability of claims 30–33, 35, 36, 38, and 39
`of the ’097 patent based on the following specific grounds:
`
`Ground
`§ 102(b)
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Basis
`’455 PCT publication
`’455 PCT publication
`Caraceni
`Caraceni and Boberg
`Caraceni, Boberg, and Yamaguchi
`Caraceni, Boberg, Yamaguchi, and
`Katsuno
`Severinsky and Anderson
`
`Challenged Claims
`38
`38
`30, 31, 35, 36
`30, 31, 35, 36
`32
`33
`
`30, 31, 35, 36, 38, 39
`
`Severinsky, Anderson, and Yamaguchi
`Severinsky, Anderson, Yamaguchi, and
`Katsuno
`
`32
`
`33
`
`III. ANALYSIS
`
`Standing
`A.
`Paice contends that Ford is “barred or estopped” under 37 C.F.R.
`
`§ 42.104(a) from requesting inter partes review of the ’097 patent due to an
`alleged breach of an arbitration agreement between the parties. Prelim.
`Resp. 6–13. According to Paice, the arbitration agreement includes
`“unambiguous terms” that purportedly limit Ford’s ability to “challeng[e]
`the claims of the ’097 patent.” Id. at 7, 9–10. Postulating that Ford is in
`breach of those terms, Paice asserts that Ford has failed to demonstrate the
`requisite standing to file the instant Petition. Id. at 11.
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`The purported “standing” argument raised by Paice, however, relates
`
`to a disputed contractual matter that falls outside the purview of our
`authority under the Leahy-Smith America Invents Act, Pub. L. No. 112–29,
`125 Stat. 284 (2011). Indeed, the question of whether Ford has breached the
`arbitration agreement by requesting inter partes review of the ’097 patent is
`currently the subject of a preliminary injunction motion filed by Paice in the
`co-pending district court action, and yet to be decided. Prelim. Resp. 12 n.4.
`As such, we reject Paice’s attempt to frame this unresolved breach-of-
`contract issue as a standing issue ripe for our review. Based on the current
`record, Paice has not demonstrated that Ford is barred or estopped from
`challenging the ’097 patent.
`B.
`Claim Construction
`We have considered the terms of the challenged claims. For purposes
`of this decision, no particular claim term requires an express construction at
`this time.
`C.
`Asserted Grounds
`
`1.
`Claim 38 - Anticipation by the ’455 PCT Publication
`Claim 38, which depends directly from independent claim 30, requires
`that the battery supply power to the electric motor “at a peak of at least 500
`volts under peak load conditions.” Ford contends that claim 38 is
`unpatentable under 35 U.S.C. § 102(b) as anticipated by the ’455 PCT
`publication. Pet. 23–29.
`The ’455 PCT publication has a publication date of March 23, 2000.
`Ex. 1004. The application that issued as the ’097 patent has a filing date of
`
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`March 29, 2011, but claims the benefit under 35 U.S.C. § 120 of
`applications that have filing dates prior to the publication date of the ’455
`PCT publication, namely, application No. 09/392,743 (“the ’743
`application”) and application No. 09/264,817 (“the ’817 application”). Ex.
`1001. Nevertheless, Ford argues that the benefit of the previously-filed ’743
`and ’817 applications does not extend to claim 38, because the ’743 and
`’817 applications fail to provide written description support for the claimed
`range of “at least 500 volts.” Pet. 6–7. Instead, according to Ford,
`disclosure of the peak voltage, as recited in claim 38, did not occur until
`April 2, 2001, with the filing of continuation-in-part application No.
`09/822,866 (“the ’866 application”). Id. at 8–10.
`We credit the testimony of Ford’s declarant, Dr. Stein, that a skilled
`artisan would not have understood the ’743 and ’817 applications as
`evincing possession of the peak voltage limitation of claim 38. Pet. 7 (citing
`Ex. 1002 ¶¶127–133). Moreover, we find persuasive Ford’s argument, with
`supporting evidence, that claim 38 is only entitled to the benefit of the
`April 2, 2001 priority date of the ’866 CIP application.3 Id. at 8–10. Thus,
`based on the current record, Ford has shown that the ’455 PCT publication
`qualifies as prior art against claim 38.
`
`Having demonstrated the prior art status of the ’455 PCT publication,
`Ford proceeds to argue that it discloses, and thus, anticipates, the peak
`voltage range of claim 38. Pet. 23–29. But Ford’s argument bears an
`
`3 At this time, it appears Paice does not dispute this premise. See
`
`Prelim. Resp. 16.
`
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`element of inconsistency. Although Ford acknowledges that the ’455 PCT
`publication, which is a combination of the disclosures of the ’743 and ’817
`applications, is not a “claim supporting disclosure” of the full scope of claim
`38, Ford nevertheless contends that the ’455 PCT publication inherently
`describes an embodiment encompassed by claim 38. Id. at 29. In particular,
`Ford relies on a series of calculations by Dr. Stein purporting to show that a
`skilled artisan would have recognized that the nominal voltage (768 volts)
`described in the ’455 PCT publication “would drop” to a peak voltage (553
`volts) under peak load conditions within the scope of claim 38. Pet. 29
`(citing Ex. 1002 ¶ 198); see also id. at 24 (citing Ex. 1002 ¶¶ 193–208).
`
`Dr. Stein’s arrival at a peak voltage within the claimed range,
`however, is based on teachings taken not solely from the ’455 PCT
`publication, but also from the challenged ’097 patent. See Ex. 1002 ¶¶ 198–
`206. Notably, Dr. Stein explains that “[u]sing the ‘Further Improvements’
`section of the ’097 patent as a basis for my calculations, it is my
`determination that the approximate voltage drop of a 768 volt lead-acid
`battery bank . . . ‘under peak load conditions’ would be no less than
`approximately 553 volts when a maximum current of 200 amperes is being
`supplied.” Id. at ¶ 198. As part of his calculations, Dr. Stein admittedly
`imports the “stated parameters” of “two examples” from the ’097 patent into
`the disclosure of the ’455 PCT publication to arrive at the claimed invention.
`See id. at ¶¶ 198–199, 202. This is impermissible.
`
`The proposed ground is one of anticipation, not obviousness. There is
`no indication in Dr. Stein’s Declaration that the purportedly “inherent” peak
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`voltage of 553 volts could be arrived at from parameters expressed in the
`’455 PCT publication or otherwise within the knowledge of an ordinarily
`skilled artisan. Instead, Dr. Stein clearly utilizes, and combines, the
`teachings of two references in asserting anticipation of the claimed
`invention, which is not permissible under 35 U.S.C. § 102(b). Nor has Ford
`persuaded us that the parameters stated in the ’097 patent, as relied on by Dr.
`Stein, would have been known by a skilled artisan at the time of the claimed
`invention, as opposed to only the inventors of the ’097 patent. As such, we
`determine that the information presented by Ford fails to establish a
`reasonable likelihood of prevailing on the ground that claim 38 is
`unpatentable as anticipated by the ’455 PCT publication.
`2.
`Claim 38 – Obviousness Over the ’455 PCT Publication
`Ford also contends that claim 38 is unpatentable under 35 U.S.C.
`
`§ 103 as obvious over the ’455 PCT publication, or alternatively, over the
`combined teachings of Severinsky and Anderson. Pet. 29, 54. In arguing
`obviousness, however, Ford again relies on the legally-flawed conclusion of
`its declarant, Dr. Stein, who utilizes teachings from the challenged ’097
`patent to conclude that a skilled artisan would have understood the
`disclosures of either the ’455 PCT publication or Severinsky as teaching,
`and thereby rendering obvious, the “at least 500 volts” limitation of claim
`38. Id. at 30, 54 (citing Ex. 1002 ¶¶ 209, 391, respectively). As such, we
`are not persuaded that the evidence proffered by Ford demonstrates a
`reasonable likelihood that the subject matter of claim 38 would have been
`obvious over either the ’455 PCT publication or Severinsky and Anderson.
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`3.
`
`Claims 30–33, 35, 36, and 39 – Obviousness Over
` Severinsky and Anderson
`Ford challenges claims 30, 31, 35, 36, and 39 on the ground that the
`claimed invention would have been obvious over the combined teachings of
`Severinsky and Anderson. Pet. 4, 46–54. In support of this ground, Ford
`provides a detailed claim chart explaining how each claim limitation is met
`by Severinsky and Anderson and why a skilled artisan would have found it
`obvious to modify the hybrid powertrain taught by Severinsky with the
`hybrid control strategy taught by Anderson. Id. at 47–51. Acknowledging
`that Severinsky does not explicitly disclose limiting the rate of increase of
`engine output torque, as recited in independent claim 30, Ford relies on
`Anderson as teaching a hybrid control strategy that “only allows slow
`[engine] transients” for maintaining a stoichiometric ratio. Id. at 49–50
`(discussing Anderson’s teaching of claim elements labeled as 30.7 and 30.8).
`
`Paice, in turn, responds that a skilled artisan would not equate
`Anderson’s teaching of “slow transients” for the engine with claim 30’s
`“limiting . . . engine output torque,” and further contends that Ford’s
`arguments, which rely on the declaration of Dr. Stein, are “merely
`conclusory” and “entitled to little or no weight.” Prelim. Resp. 36–38. We
`disagree. Contrary to Paice’s argument, Anderson expressly describes the
`engine’s “transient capabilities” in terms of “power output” and
`“combinations of speed and torque” for enabling greater optimization of the
`hybrid vehicle’s powertrain. Ex. 1006 at 7 (emphasis added). Indeed,
`Anderson correlates slow engine transients with maintaining a
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`“stoichiometric air to fuel ratio” such that “emissions are minimized.” Id.
`As such, Ford has demonstrated a reasonable likelihood that the subject
`matter of independent claim 30 would have been obvious in view of the
`combined teachings of Severinsky and Anderson.
`
`Also, we have considered Ford’s challenge of dependent claims 31–
`33, 35, 36, and 39. Pet. 51–57. Paice does not argue these dependent claims
`separately from independent claim 30. See Prelim. Resp. 33–37. Based on
`our review of the detailed claim chart and reasoning presented in the
`Petition, we are persuaded that Ford has shown sufficiently that the
`dependent limitations are taught by Severinsky and Anderson (claims 31, 35,
`36, and 39), together with Yamaguchi (claim 32) and Katsuno (claim 33).
`4.
`Additional Grounds
`
`Ford further contends that claims 30–33, 35, and 36 are unpatentable
`as obvious over Caraceni, either alone or in combination with Boberg. Pet.
`30. Recognizing that neither Caraceni nor Boberg explicitly discloses
`operating the engine at a substantially stoichiometric ratio, Ford argues that
`they implicitly teach this limitation by their disclosure of a “three-way
`catalyst,” which Dr. Stein opines as “operat[ing] at or near a stoichiometric
`ratio.” Pet. 37 (citing Ex. 1002 ¶¶ 258–262); see also id. at 41. Ford,
`however, does not articulate reasonably how the implicit teaching of a
`stoichiometric ratio by Caraceni and Boberg is meaningfully distinctive from
`the express teaching of this same limitation by Severinsky and Anderson.
`As such, we exercise our discretion under 37 C.F.R. § 42.108 and decline to
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`institute on any ground relying on Caraceni, either alone or in combination
`with Boberg, Yamaguchi, or Katsuno.
`IV. CONCLUSION
`Based on the arguments and evidence presented in the Petition, we
`determine that Ford has demonstrated a reasonable likelihood that it would
`prevail in establishing that the subject matter of claims 30–33, 35, 36, and 39
`would have been obvious under 35 U.S.C. § 103, but that Ford has not
`demonstrated a reasonable likelihood that claim 38 is unpatentable under
`either 35 U.S.C. §§ 102 or 103.
`V. ORDER
`For the foregoing reasons, it is
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review
`of challenged claims 30, 31, 35, 36, and 39 of the ’097 patent is instituted on
`the asserted ground of obviousness over Severinsky and Anderson, review of
`challenged claim 32 is instituted on the asserted ground of obviousness over
`Severinsky, Anderson, and Yamaguchi, and review of challenged claim 33 is
`instituted on the asserted ground of obviousness over Severinsky, Anderson,
`Yamaguchi, and Katsuno;
`
`FURTHER ORDERED that Ford’s Petition is denied as to claim 38;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, inter partes review of the ’097 patent shall commence on the
`entry date of this Order, and notice is hereby given of the institution of a
`trial; and
`
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`FURTHER ORDERED that all other grounds presented in Ford’s
`Petition are denied, and no ground other than that specifically listed above is
`authorized for inter partes review of the ’097 patent.
`
`
`
`FOR PETITIONER:
`
`Sangeeta Shah
`Frank Angileri
`John Nemazi
`John Rondini
`BROOKS KUSHMAN P.C.
`FPGP0110IPR1@brookskushman.com
`FPGP010IPR2@brookskushman.com
`FPGP010IPR2@brookskushman.com
`jrondini@brookskushman.com
`
`Kevin Greenleaf
`Lissi Mojica
`DENTONS US LLP
`kevin.greenleaf@dentons.com
`lissi.mojica@dentons.com
`
`
`
`FOR PATENT OWNER:
`
`Timothy W. Riffe
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`riffe@fr.com
`IPR36351-0011IP1@fr.com
`
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` Paper 12
`
`Entered: September 30, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2014-00571
`Patent 7,104,347 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`I. INTRODUCTION
`Ford Motor Company (“Ford”) filed a Petition requesting an inter
`partes review of claims 1, 6, 7, 9, 15, 21, 23, and 36 of U.S. Patent No.
`7,104,347 B2 (“the ’347 patent”). Paper 1 (“Pet.”). The owner of the ’347
`patent, Paice LLC & The Abell Foundation, Inc. (“Paice”), filed a
`Preliminary Response. Paper 11 (“Prelim. Resp.” ).1 We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” After considering the Petition and the Preliminary Response,
`we conclude that Ford has demonstrated a reasonable likelihood that it
`would prevail in showing unpatentability of all the challenged claims. Thus,
`we authorize institution of an inter partes review of claims 1, 6, 7, 9, 15, 21,
`23, and 36 of the ’347 patent.
`II. BACKGROUND
`
`The ’347 Patent 2
`A.
`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
`
`
`1 Paice filed both redacted and unredacted versions of its Preliminary
`
`Response. Papers 7, 11. Our decision cites to the redacted version, i.e.,
`Paper 11, which is marked “Public.”
`2 The ’347 patent is also the subject of a co-pending case, Paice, LLC
`v. Ford Motor Company, No. 1-14-cv-00492, filed Feb. 19, 2014, in the U.S.
`District Court for the District of Maryland. Pet. 1.
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`torque transfer between the engine, the motors, and the drive wheels of the
`vehicle. Ex. 1001, 17:5–45, Fig. 4. The hybrid vehicle features a hybrid
`control strategy that runs the engine only under conditions of high
`efficiency, typically when the vehicle’s instantaneous torque demand (i.e.,
`the amount of torque required to propel the vehicle at a desired speed) is 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 under efficient operating conditions leads to
`improved fuel economy and reduced emissions. Id. at 13:47–51. To achieve
`such efficiency, the hybrid vehicle includes different operating modes that
`depend on the vehicle’s instantaneous torque demand, the battery’s state of
`charge, and other operating parameters. Id. at 19:53–55. For example, the
`hybrid vehicle operates in: (1) an all-electric mode, where only the traction
`motor provides the torque to propel the vehicle, whenever 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,
`whenever the engine can 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,
`whenever the instantaneous torque demand 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
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`recharge the battery while the traction motor drives the vehicle. Id. at
`35:66–36:58, 37:26–38:55.
`B.
`Challenged Claims
`Ford challenges independent claims 1 and 23. It also challenges
`dependent claims 6, 7, 9, 15, and 21, which depend directly or indirectly
`from claim 1, and dependent claim 36, which depends from claim 23.
`Claim 1 is illustrative:
`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 [a]nd
`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
`
`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[d] 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. 1001, 58:13–37.
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`Independent claim 23 is directed to a “method” of controlling a hybrid
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`vehicle. Id. at 60:22. Like claim 1, it requires an “internal combustion
`engine capable of efficiently producing torque at loads between a lower level
`[setpoint] SP and a maximum torque output MTO.” Id. at 60:23–25. Unlike
`claim 1, however, claim 23 does not require two motors. Claim 23 simply
`requires “one or more electric motors” for providing output torque and
`generating electrical current. Id. at 60:25–27 (emphasis added).
`C.
`Evidence of Record
`
`Ford relies upon the following prior art as its basis for challenging the
`claims of the ’347 patent, and it also proffers the Declaration of Dr. Gregory
`W. Davis (Ex. 1005).
`
`Patents/Printed Publications
`U.S. Patent No. 5,343,970
`U.S. Patent No. 5,586,613
`
`Exhibit
`Date
`1003
`Sept. 6, 1994
`Dec. 24, 1996 1004
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`References
`Severinsky
`Ehsani
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`D.
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`Asserted Grounds of Unpatentability
`Ford challenges the patentability of claims 1, 6, 7, 9, 15, 21, 23, and
`36 of the ’347 patent based on the following specific grounds:
`
`Ground
`
`§ 103
`
`§ 103
`
`Basis
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`Challenged Claims
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`Severinsky
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`23 and 36
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`Severinsky and Ehsani
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`1, 6, 7, 9, 15, and 21
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`III. ANALYSIS
`
`Standing
`A.
`Paice contends that Ford is “barred or estopped” under 37 C.F.R.
`
`§ 42.104(a) from requesting inter partes review of the ’347 patent due to an
`alleged breach of an arbitration agreement between the parties. Prelim.
`Resp. 5–12. According to Paice, the arbitration agreement includes
`“unambiguous terms” that purportedly limit Ford’s ability to “challeng[e]
`the patent claims of the ’347 patent.” Id. at 7, 9–10. Postulating that Ford is
`in breach of those terms, Paice asserts that Ford has failed to demonstrate the
`requisite standing to file the instant petition. Id. at 11.
`
`The purported “standing” argument raised by Paice, however, relates
`to a disputed contractual matter that falls outside the purview of our
`authority under the Leahy-Smith America Invents Act, Pub. L. No. 112–29,
`125 Stat. 284 (2011). Indeed, the question of whether Ford has breached the
`arbitration agreement by requesting inter partes review of the ’347 patent is
`currently the subject of a preliminary injunction motion filed by Paice in the
`co-pending district court action, and yet to be decided. Prelim. Resp. 11 n.4.
`As such, we reject Paice’s attempt to frame this unresolved breach-of-
`contract issue as a standing issue ripe for our review. Based on the current
`record, Paice has not demonstrated that Ford is barred or estopped from
`challenging the ’347 patent.
`B.
`Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in the context of the patent in which
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`they appear. 37 C.F.R. § 42.100(b). Ford contends that five claim
`limitations are in need of construction, namely, “road load (RL),” “setpoint
`(SP),” “low-load mode I,” “highway cruising mode IV,” and “acceleration
`mode V.” Pet. 13–17. We construe the relevant limitations as follows.
`1.
`“road load (RL)”
`The term “road load” or “RL” is found in independent claim 23 and
`dependent claims 7, 9, 15, and 36. The specification 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. 1001, 12:40–57. We see no reason to deviate from the
`specification’s express definition. Thus, consistent with the specification,
`we construe “road load” as “the amount of instantaneous torque required to
`propel the vehicle, be it positive or negative.”
`2.
`“setpoint (SP)”
`Independent claims 1 and 23 recite that the internal combustion
`
`engine efficiently produces torque at loads between a “setpoint (SP)” and a
`“maximum torque output (MTO).” Paice seeks to construe the term
`“setpoint” as “a definite, but potentially variable value at which a transition
`between operating modes may occur.” Prelim. Resp. 13. Ford, on the other
`hand, asserts that “setpoint” means a “predetermined torque value.” Pet. 16.
`
`The specification of the ’347 patent states that the value of a setpoint
`“may vary somewhat” or be “reset” in response to repetitive driving patterns
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`or other monitored variables. Ex. 1001, 40:37–59. But, just because a
`setpoint may change under certain circumstances does not foreclose it from
`being “set” or “determined” at a prior point in time. Any other construction
`would defeat the purpose of it being “set,” which the ’347 patent admits is
`for comparison sake. For instance, the specification states that “the
`microprocessor tests sensed and calculated values for system variables [such
`as road load (RL)] . . . against setpoints, and uses the results of the
`comparisons to control the mode of vehicle operation.” Ex. 1001, 40:22–31
`(emphasis added). That description makes clear that the microprocessor is
`comparing a just-derived value against a previously-defined value. As such,
`we construe the term “setpoint” to mean at least a “predetermined value that
`may or may not be reset.” The inquiry does not end there, however.
`
`Next, Paice takes issue with Ford’s construction of “setpoint” as being
`limited to a “torque value.” Prelim. Resp. 13–15. According to Paice, the
`specification describes setpoint as both a “torque value” and a “battery
`charge status.” Id. at 15 (citing Ex. 1115 at 10). We agree that the
`specification provides that either “torque output” or “state of charge of the
`battery bank” can be compared against setpoints. Ex. 1001, 40:28–31. The
`claim language, however, is not so broad. Although the specification is an
`important tool in claim construction, it is the claim language itself—and the
`manner in which a disputed term is used in the context of the claim—that
`controls the ultimate determination.
`Here, contrary to Paice’s assertion, the claim language consistently
`refers to a “setpoint” in terms of a “torque” value. For example, claim 1
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`recites that the “torque require[d] . . . 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.”
`Nowhere does the claim refer to “setpoint” or “SP” in the context of a
`battery’s “state of charge.” Likewise, although claim 23 includes the step of
`“monitoring the state of charge of said battery,” the claim never makes a
`comparison between the battery’s “state of charge” and a “setpoint.”
`Instead, claim 23 consistently references a “setpoint” or “SP” in terms of
`“torque,” e.g., “producing torque at loads between a lower level SP and a
`maximum torque output”; “when the torque RL required to do so is less than
`said lower level SP”; “using the torque betw