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
`
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. §42.100 ET SEQ.
`(CLAIMS 1-5, 14, 16, 19, 20, and 22 OF U.S. PATENT NO. 7,104,347)
`
`
`
`
`

`
`
`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST ..................................................................................................................... iii
`
`I.
`
`INTRODUCTION .................................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ........................................ 1
`
`A.
`
`
`B.
`
`
`C.
`
`
`D.
`
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1) ............................................ 1
`Related Matters - 37 C.F.R. § 42.8(b)(2) ....................................................... 1
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3) .................................. 2
`Service Information - 37 C.F.R. § 42.8(b)(4) ............................................... 2
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104 .................................................. 2
`
` Grounds for Standing - 37 C.F.R. § 42.104(a) ............................................. 2
`A.
`Challenged Claims - 37 C.F.R. §42.104(b)(1) ............................................... 3
`B.
`
` Grounds of Challenge - 37 C.F.R. §42.104(b)(2) ........................................ 3
`C.
`
`IV.
`
`PERSON OF ORDINARY SKILL IN THE ART (POSA) ............................... 4
`
`V.
`
`CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3) ................................... 5
`
`A.
`
`
`B.
`
`
`road load (RL) and RL ...................................................................................... 5
`setpoint (SP) and SP ........................................................................................... 6
`
`VI. UNPATENTABILITY GROUNDS ...................................................................... 7
`
` Ground 1 Claims 1-2 and 5 are Obvious Over Ibaraki ’882 in
`A.
`View of Koide and the Knowledge of a POSA .......................................... 8
`1.
`Independent Claim 1 ........................................................................... 8
`2.
`Dependent Claim 2 ............................................................................ 25
`3.
`Dependent Claim 5 ............................................................................ 27
` Ground 2: Claims 3 and 4 are Obvious Over Ibaraki ’882 in View
`B.
`of Koide, Frank, and the Knowledge of a POSA ..................................... 29
`1.
`Reasons to Combine .......................................................................... 29
`2.
`Dependent Claim 3 ............................................................................ 31
`3.
`Dependent Claim 4 ............................................................................ 33
` Ground 3: Claim 16 is Obvious Over Ibaraki ’882 in View of
`C.
`Koide, Kawakatsu ’429, and the Knowledge Of A POSA ...................... 34
`1.
`Reasons to Combine .......................................................................... 34
`2.
`Dependent Claim 16 .......................................................................... 35
` Ground 4: Claim 20 is Obvious Over Ibaraki ’882 in View of
`D.
`Koide, Vittone, and the Knowledge of a POSA ....................................... 37
`1.
`Claims 20 ............................................................................................. 37
`
`i
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`F.
`
`
`Reasons to Combine .......................................................................... 42
`2.
` Ground 5: Claim 19 is Obvious Over Ibaraki ’882 in View of
`E.
`Koide, Yamaguchi, and the Knowledge of a POSA ................................. 43
`1.
`Reasons to Combine .......................................................................... 43
`2.
`Dependent Claim 19 .......................................................................... 45
`Ground 6: Claim 22 is Obvious Over Ibaraki ’882 in View of
`Koide, Ibaraki ’626, and the Knowledge of a POSA ................................ 47
`1.
`Reason to Combine ........................................................................... 47
`2.
`Dependent Claims 22 ........................................................................ 51
` Ground 7: Claim 14 is Obvious Over Ibaraki ’882 in View of
`G.
`Koide, Lateur, and the Knowledge of a POSA ......................................... 54
`1.
`Reasons to Combine .......................................................................... 54
`2.
`Claim 14 .............................................................................................. 55
`
`VII. OBJECTIVE INDICIA OF NONOBVIOUSNESS ......................................... 58
`
`VIII. CONCLUSION ........................................................................................................ 58
`
`CERTIFICATE OF SERVICE ......................................................................................... 59
`
`
`
`
`
`ii
`
`

`
`
`
`
`
`
`Exhibit
`No.
`1301
`1302
`1303
`1304
`1305
`1306
`
`1307
`1308
`1309
`
`1310
`
`1311
`1312
`
`1313
`1314
`1315
`
`1316
`
`1317
`1318
`1319
`
`1320
`
`1321
`1322
`1323
`
`1324
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`EXHIBIT LIST
`
`Description
`US Patent 7,104,347
`Ford Letter to Paice
`US Patent 5,789,882
`US Patent 5,623,104
`US Patent 4,335,429
`Automotive Electronics
`Handbook (Jurgen)
`US Patent 5,823,280
`Declaration of Gregory Davis
`US Application 60-100095
`
`Excerpt of USPN 7,104,347 File
`History
`U.S. Patent No. 7,237,634
`7,237,634 File History (certified)
`
`Toyota Litigations
`Hyundai Litigation
`PTAB Decisions & Preliminary
`Response in 2014-00571
`Bosch Automotive Handbook
`(1996)
`US Patent 5,934,395
`US Patent 6,116,363
`Engineering Fundamentals of the
`Internal Combustion Engine
`Fiat Conceptual Approach to
`Hybrid Cars Design (Vittone)
`US Patent 5,865,263
`US Patent 6,003,626
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`1996 & 1997 Future Car
`Challenge
`
`Date
`Sept. 12, 2006
`Sept. 2014
`Aug. 4, 1998
`Apr. 22, 1997
`Jun. 15, 1982
`
`
`Oct. 20, 1998
`
`Filed Sept. 11,
`1998
`n/a
`
`July 3, 2007
`n/a
`
`2005
`2013-2014
`
`
`Identifier
`’347 Patent
`
`Ibaraki ’882
`Suga ’104
`Kawakatsu ’429
`Jurgen
`
`Lateur ‘280
`Davis Dec.
`’095 Provisional
`
`’347 File History
`
`’634 Patent
`’634 Patent File
`History
`Toyota Litigation
`Hyundai Litigation
`
`
`Oct. 1996
`
`Bosch Handbook
`
`Aug. 10, 1999
`Sept. 12, 2000
`1997
`
`Koide
`Frank
`Pulkrabek
`
`Dec. 5-7, 1994
`
`Vittone
`
`Feb. 2, 1999
`Dec. 21, 1999
`Feb. 1994
`
`Yamaguchi
`Ibaraki ’626
`
`
`Feb. 1997 &
`Feb. 1998
`
`
`
`iii
`
`

`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`
`
`Exhibit
`No.
`1325
`
`1326
`
`1327
`1328
`1329
`
`1330
`
`1331
`1332
`1333
`
`1334
`
`Date
`
`
`1998
`
`Description
`Introduction to Automotive
`Powertrain (Davis)
`History of Hybrid Electric
`Vehicle (Wakefield-1998)
`SAE 760121 (Unnewehr-1976)
`SAE 920447 (Burke-1992)
`Vehicle Tester for HEV (Duoba-
`1997)
`DOE Report to Congress (1994) April 1995
`
`Feb. 1, 1976
`Feb. 1, 1992
`Aug. 1, 1997
`
`SAE SP-1331 (1998)
`SAE SP-1156 (1996)
`Microprocessor Design for HEV
`(Bumby-1988)
`DOE HEV Assessment (1979)
`
`Feb. 1998
`Feb. 1996
`Sept. 1, 1988
`
`Sept. 30, 1979
`
`Identifier
`Davis Textbook
`
`Wakefield
`
`Unnewehr
`Burke 1992
`Duoba 1997
`
`1994 Report to
`Congress
`SAE SP-1331
`SAE SP-1156
`Bumby/Masding
`1988
`HEV Assessment
`1979
`EPA HEV Final
`Study
`IEEE Ehsani 1996
`
`1335
`
`EPA HEV Final Study (1971)
`
`June 1, 1971
`
`June 18, 2005
`
`Feb. 1997
`
`IEEE Ehsani 1997
`
`Aug. 11, 1998
`
`An 1998
`
`Nov. 25, 1998
`Jan. 1998
`
`April 3, 2001
`Feb. 1995
`1973
`
`9323263
`Toyota Prius
`Yamaguchi 1998
`’672 Patent
`SAE SP-1089
`SAE 1973
`
`
`
`Oct. 4, 1983
`
`
`
`Kawakatsu ’132
`
`1336
`
`1337
`
`1338
`
`1339
`1340
`
`1341
`1342
`1343
`
`1344
`1345
`1346
`
`
`Propulsion System for Design for
`EV (Ehsani-1996)
`Propulsion System Design for
`HEV (Ehsani-1997)
`Critical Issues in Quantifying
`HEV Emissions (An 1998)
`WO 9323263A1 (Field)
`Toyota Prius (Yamaguchi-1998)
`
`US Patent 6,209,672
`SAE SP-1089 (Anderson-1995)
`1973 Development of the Federal
`Urban Driving Schedule (SAE
`730553)
`Gregory Davis Resume
`Gregory Davis Data
`US Patent 4,407,132
`
`iv
`
`

`
`
`
`I.
`
`INTRODUCTION
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`Petitioner Ford Motor Company (“Ford” or “Petitioner”) requests inter partes
`
`review of claims 1-5, 14, 16, 19, 20, and 22 of U.S. Patent No. 7,104,347 (“the ’347
`
`Patent,” Ex. 1301).
`
`The ’347 Patent has 41 claims and is one of five patents Paice has asserted
`
`against Ford in litigation. Ford has asked Paice several times to limit the asserted
`
`claims to a reasonable number. (Ford Letter, Ex. 1302.) Paice has refused. Due to
`
`Ford’s one-year statutory limit and page constraints on IPR petitions, Ford is filing
`
`several IPRs to address the ’347 Patent claims and is trying to group the claims in a
`
`logical fashion. This IPR focuses on claims 1-5, 14, 16, 19, 20, and 22.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
` Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`A.
`
`Petitioner certifies that Ford is the real party-in-interest.
`
` Related Matters - 37 C.F.R. § 42.8(b)(2)
`B.
`
`The ’347 Patent is being asserted in 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 America et. al., Case No. 1:2012-cv-00499. Ford has filed petitions
`
`concerning the ’347 Patent in IPR2014-00571, IPR2014-00579, IPR2014-00884, and
`
`has filed petitions concerning other asserted patents in the ’347 Patent’s family in
`
`IPR2014-00570, IPR2014-01415, IPR2014-00568, IPR2014-00852, IPR2014-00875,
`
`IPR2014-00904, IPR2014-01416, IPR2015-00606, IPR2015-00767, IPR2015-00722,
`
`1
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`IPR2015-00758, IPR2015-00784, IPR2015-00785, and IPR2015-00791. Petitioner is
`
`concurrently filing related petitions: IPR2015-00787, IPR2015-00790, IPR2015-00794,
`
`and IPR2015-00792. This Petition is not redundant to any previously or concurrently
`
`filed petitions.
`
`
`C.
`
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
`
`Petitioner appoints Frank A. Angileri (Reg. No. 36,733) of Brooks Kushman
`
`P.C. as lead counsel, and appoints John E. Nemazi (Reg. No. 30,876), John P.
`
`Rondini (Reg. No. 64,949) and Michael N. MacCallum (Reg. No. 63,108) of Brooks
`
`Kushman P.C., as well as Lissi Mojica (Reg. No. 63,421) and Kevin Greenleaf (Reg.
`
`No. 64,062) of Dentons US LLP, as back-up counsel. An appropriate Power of
`
`Attorney is filed concurrently herewith.
`
`
`D.
`
`Service Information - 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made via hand-
`
`delivery to Brooks Kushman P.C., 1000 Town Center, Twenty-Second Floor,
`
`Southfield, Michigan 48075 and Dentons US LLP, 233 South Wacker Drive, Suite
`
`7800, Chicago, IL 60606-6306. Petitioner consents to service by email at
`
`FPGP0101IPR5@brookskushman.com and iptdocketchi@dentons.com.
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
` Grounds for Standing - 37 C.F.R. § 42.104(a)
`A.
`
`Petitioner certifies that the ’347 Patent is available for IPR and that Petitioner is
`
`not barred or estopped from challenging the patent claims on the grounds in this
`
`2
`
`

`
`
`
`
`Petition.
`
`
`B.
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`Challenged Claims - 37 C.F.R. §42.104(b)(1)
`
`Petitioner requests IPR of the ’347 Patent claims 1-5, 14, 16, 19-20, and 22 and
`
`requests the Patent Trial and Appeal Board (“PTAB”) cancel those claims as
`
`unpatentable.
`
` Grounds of Challenge - 37 C.F.R. §42.104(b)(2)
`C.
`
`The grounds of unpatentability presented in this petition are as follows:
`
`References
`Ground Basis
`1
`§ 103 Ibaraki ’882 in View of Koide and the
`
`Claims
`Independent Claim 1 and
`
`Knowledge of a POSA
`
`dependent claims 2 and 5
`
`2
`
`§ 103 Obvious Over Ibaraki ’882 in View of
`
`Dependent claims 3-4
`
`Koide, Frank, and the Knowledge of a
`
`POSA
`
`3
`
`§ 103 Ibaraki
`
`’882
`
`in View of Koide,
`
`Dependent claim 16
`
`Kawakatsu ’429, and the Knowledge Of
`
`A POSA
`
`4
`
`§ 103 Ibaraki ’882 in View of Koide, Vittone,
`
`Dependent Claim 20
`
`and the Knowledge of a POSA
`
`3
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`Ground Basis
`5
`§ 103 Ibaraki
`
`References
`’882
`in View of Koide,
`
`Claims
`Dependent Claim 19
`
`Yamaguchi, and the Knowledge of a
`
`POSA
`
`6
`
`§ 103 Ibaraki ’882 in View of Koide, Ibaraki
`
`Dependent Claim 22
`
`’626, and the Knowledge of a POSA
`
`7
`
`§ 103 Ibaraki ’882 in View of Koide, Lateur,
`
`Claim 14
`
`and the Knowledge of a POSA
`
`The unpatentability grounds set forth in this Petition are confirmed and
`
`supported by the declaration of Dr. Gregory W. Davis. (“Davis Dec.” at Ex. 1308.)
`
`IV. PERSON OF ORDINARY SKILL IN THE ART (POSA)
`
`The level of ordinary skill in the art is evidenced by the references. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A POSA would have either: (1) a
`
`graduate degree in mechanical, electrical or automotive engineering with experience in
`
`the design and control of combustion engines, electric or hybrid electric propulsion
`
`systems, or automotive transmissions, or (2) a bachelor’s degree in mechanical,
`
`electrical or automotive engineering with at least five years of experience in the design
`
`and control of combustion engines, electric or hybrid electric propulsion systems, or
`
`automotive transmissions. (Ex. 1308, ¶¶41-42, see also ¶¶5-37.)
`
`4
`
`

`
`
`
`V.
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3)
`
`For purposes of this IPR, a claim is interpreted by applying its “broadest
`
`reasonable construction.” 37 C.F.R. § 42.100(b).
`
`Certain terms in the claims of the ’347 Patent were argued by the patentee with
`
`respect to the ’347 Patent and other patents in the ’347 Patent family, and construed
`
`by the Eastern District of Texas court in Paice LLC v. Toyota Motor Corp. et al., Case
`
`No. 2:04-cv-211 and Paice LLC v. Toyota Motor Corp. et al., Case No. 2:07-cv-180,
`
`(“Toyota Litigation,” Ex. 1313.)
`
`Certain terms recited in the claims of the ’347 Patent were also argued by the
`
`patentee and construed by a Maryland district court in Paice LLC v. Hyundai Motor
`
`Corp. et al., Case No. 2:12-cv-0499, on July 24, 2014. (“Hyundai Litigation,” Ex. 1314.)
`
`Certain terms that are related to terms recited in the claims of the ’347 Patent
`
`were also discussed in prior institution decisions. (“Ford IPRs,” Ex. 1315.)
`
`Petitioner proposes the following constructions for the purposes of this IPR
`
`only. But for some of these terms, based on the specification, prosecution history, and
`
`patentee admissions, Petitioner contends that the construction under the applicable
`
`district court standards is narrower, and reserves the right to present a narrower
`
`construction in district court litigation.
`
` road load (RL) and RL
`A.
`
`The Eastern District of Texas and the District of Maryland courts have
`
`construed the terms “road load,” “RL,” and “road load (RL)” as “the instantaneous
`
`5
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`torque required for propulsion of the vehicle, which may be positive or negative in
`
`value.” (Toyota Litigation, Ex. 1313 at 205-206; Hyundai Litigation, Ex. 1314 at 16,
`
`96-97.)
`
`For this proceeding, Petitioner proposes that “road load” be construed as “the
`
`amount of instantaneous torque required to propel the vehicle, be it positive or
`
`negative.” This is consistent with a prior PTAB construction. (See Ford v. Paice IPR
`
`Decisions, Ex. 1315 at 20, 38, 51, 70, 84.) Petitioner contends the construction may
`
`be narrower under district court standards.
`
` setpoint (SP) and SP
`B.
`
`The Texas and Maryland courts construed “setpoint (SP)” as being “a definite,
`
`but potentially variable value at which a transition between operating modes may
`
`occur” (Toyota Litigation, Ex. 1313 at 204, Hyundai Litigation, Ex. 1314 at 104), and
`
`Patent Owner maintains this as being the correct construction. (Ford IPRs, Ex. 1315
`
`at 20, 38, 70, 85.) Petitioner disagrees that Patent Owner’s proposed construction is
`
`the broadest reasonable construction.
`
`The ’347 Patent claims, specification, and file history define “setpoint” as a
`
`“predetermined torque value.” 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
`
`6
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`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.”
`
`During prosecution of the ’347 Patent, patentee added the following limitation
`
`to pending claims 1 and 82 to overcome a prior art rejection: “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.” (‘347 File History, Ex. 1310 at 8-
`
`20.) Patentee then argued the engine was operated only “when it is loaded . . . in
`
`excess of a setpoint SP, which is now defined to be ‘substantially less than the
`
`maximum torque output (MTO) of said engine.’” (‘347 File History, Ex. 1310 at 21.)
`
`This proposed construction is consistent with recent PTAB constructions.
`
`(Ford IPRs, Ex. 1315 at 21, 40, 72, 86.) Accordingly the broadest reasonable
`
`construction of “setpoint (SP)” and “SP” as used in the challenged claims is a
`
`“predetermined torque value.”
`
`VI. UNPATENTABILITY GROUNDS
`
`The references below render the claimed subject matter invalid under 35 U.S.C.
`
`§ 103 and the Petitioner therefore has a reasonable likelihood of prevailing as to each
`
`of the following grounds of unpatentability. 35 U.S.C. § 314(a); 37 C.F.R. §
`
`42.104(b)(4).
`
`7
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
` Ground 1 Claims 1-2 and 5 are Obvious Over Ibaraki ’882 in
`A.
`View of Koide and the Knowledge of a POSA
`
`1.
`
`Independent Claim 1
`
`… [1.0] A hybrid vehicle, comprising:
`
`Ibaraki ’882 states that the “present invention” pertains to a “drive control
`
`apparatus” for controlling a “hybrid vehicle” that may be propelled by an internal
`
`combustion (IC) engine and an electric motor. (Ex. 1303 [Ibaraki ’882] at 1:9-14; Ex.
`
`1308, ¶180.) As illustrated below, Ibaraki ’882 generally discloses a hybrid vehicle
`
`including a controller (128) that is used to control an internal combustion engine (112)
`
`and an electric motor (114) (Ex. 1303 [Ibaraki ’882] at 19:11-54.)
`
`
`
`Ex. 1303 [Ibaraki ’882] at Fig. 8
`
`
`
`As will be discussed with respect to the specific claim limitations, Ibaraki ’882
`
`discloses a control strategy that includes a “controller 128” having a “drive source
`
`selecting means 160 illustrated in the block diagram of FIG. 9.” (Ex. 1303 [Ibaraki
`
`’882] at 20:38-39.) This “drive source selecting means” is “adapted to select one or
`
`both of the engine 112 and the motor 114 as the drive power source or sources,
`
`8
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`according to a drive source selecting data map stored in memory means 162.”
`
`(Ex. 1303 [Ibaraki ’882] at 20:39-43, emphasis added.)
`
`This “data map” is exemplified in Fig. 11 and is used to select the MOTOR
`
`DRIVE mode, ENGINE DRIVE mode, or ENGINE-MOTOR DRIVE mode. As
`
`annotated below, the data map determines the three operating modes as a function of
`
`“VEHICLE DRIVE TORQUE,” and “VEHICLE SPEED.” (Ex. 1303 [Ibaraki ’882]
`
`at 20:38-21:2.)
`
`Ex. 1303 [Ibaraki ’882] at Fig. 11 (annotated)
`
`
`
`In order to determine which drive mode to operate in, Ibaraki ’882 states that a
`
`point corresponding to the current “vehicle running condition” is plotted onto the
`
`data map of Fig. 11. (Ex. 1303 [Ibaraki ’882] at 20:58-21:1.) This point “correspond[s]
`
`to the required drive power PL” for the vehicle and is “determined by the current
`
`vehicle drive torque and vehicle speed V.” (Ex. 1303 [Ibaraki ’882] at 23:66-24:21,
`
`20:39-43.)
`
`Figure 11 below highlights the mode selection when three points of “required
`
`9
`
`

`
`
`
`drive power” (annotated as PL1, PL2, PL3) are plotted, “as determined by the current
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`vehicle drive torque” (annotated as TL1, TL2, TL3) “and vehicle speed” (annotated as
`
`V1). The MOTOR DRIVE mode (shaded red) is selected when the “vehicle drive
`
`torque” (TL1) at vehicle speed (V1) (i.e., point PL1) is located below a first boundary line
`
`B. Likewise, the ENGINE DRIVE mode (shaded green) is selected when the “vehicle
`
`drive torque” (TL2) at the vehicle speed (V1) (i.e., point PL2) is above the first boundary
`
`line B but on or below a second boundary line C. Finally, the ENGINE-MOTOR
`
`DRIVE mode (shaded blue) is selected when the “vehicle drive torque” (TL3) at the
`
`vehicle speed (V1) (i.e., PL3) is above the second boundary line C. (Ex. 1303 [Ibaraki
`
`’882] at 23:66-24:30.)
`
`Ex. 1303 [Ibaraki ’882] at Fig. 11 (annotated)
`
`
`
`The “points” of “required drive power PL” (PL1, PL2, PL3) are disclosed as being
`
`the “instantaneous drive power required for running the vehicle, which power
`
`includes components for overcoming the air resistance experienced by the vehicle and
`
`10
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`the rolling resistance of each vehicle wheel.” (Ex. 1303 [Ibaraki ’882] at 12:50-54
`
`(emphasis added.) A POSA would have understood that the corresponding “vehicle
`
`drive torque” values (TL1, TL2, TL3) at the same vehicle speed (V1) are the instantaneous
`
`torque (RL) required to propel the hybrid vehicle.
`
`… [1.1] an internal combustion engine controllably coupled to
`
`road wheels of said vehicle;
`
`Figure 8 of Ibaraki ’882 illustrates an engine 112 (green) controllably coupled to
`
`road wheels 120 (red) via a “clutch 130” (yellow).
`
`Ex. 1303 [Ibaraki ’882] at Figure 8 (annotated)
`
`
`
`The clutch 130 is controlled by a “clutch control actuator 132” which is
`
`controlled by controller 128. The clutch is controlled to couple and decouple (i.e.,
`
`connect and disconnect) the engine to and from the transmission 116 which transfers
`
`torque to the drive wheels 120. (Ex. 1303 [Ibaraki ’882] at 19:50-54; Ex. 1308, ¶¶184-
`
`190.)
`
`11
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`… [1.2] a first electric motor connected to said engine nd [sic]
`
`operable to start the engine responsive to a control signal;
`
`Although the vehicle of Fig. 8 (above) of Ibaraki ’882 illustrates only one
`
`electric motor, Claim 1 of Ibaraki ’882 discloses that the vehicle includes a separate
`
`“electric generator” in addition to the electric motor 114: “A drive control apparatus
`
`for an automotive vehicle having an electric generator for generating an electric
`
`energy, . . . an electric motor operated as a first drive power source by said
`
`electric energy,. . .” (Ex. 1303 [Ibaraki ’882] at Claim 1, emphasis added.)
`
`Consistent with this claim, Ibaraki ’882 also teaches that the hybrid vehicle could be
`
`“provided” with an “electric generator” and an “electric motor” as “separate
`
`elements.” (Ex. 1303 [Ibaraki ’882] at 5:27-29, emphasis added; See also 26:34-38.)
`
`Based on these express disclosures, Figure 8 could be modified to illustrate the
`
`disclosed separate electric generator, which would function as the claimed “first
`
`electric motor connected to said engine.” A POSA would have understood that this separate
`
`electric generator (i.e., first electric motor) would need to be connected to the internal
`
`combustion engine so that the IC engine could operate the electric generator for
`
`“generating an electric energy” to charge the electricity energy storage device.
`
`Without connecting the separate electric generator to the IC engine, the IC engine
`
`would be unable to provide torque to the separate electric generator for generating
`
`electricity. (Ex. 1308, ¶¶192-198.)
`
`12
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`Ex. 1303 [Ibaraki ’882] at Figure 8 (annotated)
`
`
`
`Also, a POSA would understand that the term “generator” or “electric motor”
`
`when discussing hybrid vehicles simply “indicate[s] whether the operation of the
`
`electric machines is motor or generator-based.” (Ex. 1316 [Bosch Handbook] at 21.)
`
`Prior art teaches that “[g]enerally, an electric generator may be used as an electric
`
`motor, while an electric motor may be used as an electric generator.” (Ex. 1317
`
`[Koide] at 1:30-32.) A POSA would therefore understand that the “generator” of
`
`Ibaraki ’882 is in fact an electric motor (i.e., the claimed first electric motor). And when
`
`operated as an electric motor, it would be capable of cranking and starting the engine.
`
`(Ex. 1308, ¶¶201-202.)
`
`To the extent Ibaraki ’882 does not sufficiently teach that the first electric motor is
`
`operable to start the engine responsive to a control signal, Koide discloses a hybrid vehicle with
`
`13
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`many similar powertrain features as Ibaraki ’882 and exemplifies that it was well-
`
`known to start an engine using one of the two electric motors.
`
`Koide teaches a hybrid vehicle having a “first motor/generator 16” connected
`
`to an “engine 12” via a “distributing mechanism 20.” (Ex. 1317 [Koide] at 7:45-64;
`
`Ex. 1308, ¶¶204-206.) As in Ibaraki ’882 (as will be discussed in detail in [1.3]-[1.7]
`
`below), Koide discloses a MOTOR DRIVE mode
`
`in which “the second
`
`motor/generator 22 is operated as a drive power source to drive the vehicle,” and an
`
`ENGINE-MOTOR DRIVE mode in which “the engine 12 and the second
`
`motor/generator 22 are operated as drive power sources to drive the vehicle.” (Ex.
`
`1317 [Koide] at 8:47-60.)
`
`Ex. 1317 [Koide] at Fig. 2 (annotated)
`
`
`
`Koide teaches an “ENGINE START command” as part of a strategy to use
`
`14
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`the first electric motor to start the engine. (Ex. 1317 [Koide] at 9:9-65.) For example,
`
`“[a]n optimum value of the torque or electric current of the first motor/generator 16
`
`upon operation thereof to start the engine 12 is empirically determined by
`
`experimentation, so as to permit stable starting or firing of the engine 12, and is
`
`stored in a memory device 46 (FIG. 3), so that the first motor/generator 16 is suitably
`
`operated in step S3 to start the engine 12.” (Id. at 9:54-60.) Further, the control
`
`strategy includes “engine starting means for operating the first motor/generator to
`
`crank the engine. . . for thereby starting the engine.” (Id. at 1:44-56.) The first
`
`motor/generator starts the engine based on control signals from a “controller 42”: It
`
`will be understood that a portion of the controller 42 assigned to implement step S3
`
`of the routine of FIG. 4 constitutes engine starting means for starting the engine 12
`
`by operation of the first motor/generator 16 to crank the engine 12 through the
`
`distributing mechanism 20. (Id. at 9:60-65; Ex. 1308, ¶¶205-206.)
`
`(a) Reasons to Combine
`
`It would have been obvious to apply the controls of Koide to the existing
`
`structure of Ibaraki ’882 for starting the engine via the first electric motor (i.e.,
`
`“generator”). This combination would allow the first electric motor (i.e., “generator”) of
`
`Ibaraki ’882 to start the engine while the second electric motor (discussed below in [1.3])
`
`propels the vehicle. And, using the disclosed “generator” (first electric machine) of
`
`Ibaraki ’882 as a starter would provide a vehicle that would “not require an exclusive
`
`engine starter, and is accordingly available at a reduced cost owing to reduction in the
`
`15
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`number of required components.” (Ex. 1317 [Koide] at 1:60-64; Ex. 1308, ¶179.)
`
`… [1.3] 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;
`
`As described in claim [1.2] above, Ibaraki ’882 discloses a separate “electric
`
`motor” and “electric generator.” The “electric motor 114” of Fig. 8 discloses the
`
`claimed second electric motor. Ibaraki ’882 that that the “dynamo-electric motor” 114 is
`
`capable of being operated in a “DRIVE state,” “CHARGING state,” or “NON-
`
`LOAD state.” (Ex. 1303 [Ibaraki ’882] at 11:32-36 and 19:55-20:1.)
`
`“In the DRIVE state, the motor 114 is driven by an electric energy supplied
`
`from the electric energy storage device 136.” (Id. at 19:61-63.) Ibaraki ’882 expressly
`
`discloses that the “power of the electric motor . . . are simultaneously or selectively
`
`transferred to a transmission . . . and to right and left drive wheels.” (Id. at 19:24-28;
`
`Ex. 1308, ¶213.) A POSA would have understood that when power is transferred
`
`from the motor 114 to the transmission 116 and to the drive wheels 120, the power is
`
`transferred by the torque from the output shaft of the electric motor, which is applied
`
`to the drive shaft and ultimately the wheels. (Ex. 1308, ¶¶214-215.)
`
` “In the CHARGING state, the motor 114 functions as an electric generator or
`
`dynamo, with regenerative braking (braking torque electrically generated by the motor
`
`16
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`114 itself), for storing an electric energy in the electric energy storage device 136.”
`
`(Ex. 1303 [Ibaraki ’882] at 19:61-67.) And, during regenerative braking, “the motor
`
`114 is driven by the kinetic energy of the running vehicle to charge the electric energy
`
`storage device 136 while a brake is applied to the vehicle.” (Id. at 22:19-30.) The
`
`motor 114 therefore can operate as a generator, for accepting torque from at least said wheels
`
`for generating current.
`
`… [1.4] a battery, for providing current to said motors and
`
`accepting charging current from at least said second motor;
`
`Ibaraki ‘882 discloses “electric energy storage device (electric power supply
`
`device) 22 in the form of a battery.” Ibaraki ‘882 also discloses “electric energy
`
`storage device 136,” which can be “in the form of a battery or condenser.” (Id. at
`
`11:31-33 and 19:55-57, emphasis added.) Ibaraki ’882 teaches that the battery is used
`
`for providing current to the second electric motor as the motor 114 propels the vehicle in a
`
`DRIVE state: “In the DRIVE state, the motor 114 is driven by an electric energy
`
`supplied from the electric energy storage device 136.” (Id. at 19:61-63.) Ibaraki ’882
`
`also teaches that the battery accepts charging current from the motor 114 during
`
`regenerative braking as current is generated during regenerative braking and sent from
`
`the electric motor 114 to the battery, as described in claim [1.3]. A POSA would have
`
`understood that the electric energy storage devices (22, 136) (i.e., battery) would have
`
`been operable to provide or accept current from any connected electric motor-
`
`generator. (Ex. 1308, ¶¶223-228.)
`
`17
`
`

`
`
`
`
`
`
`Case No: IPR2015-00795
`Attorney Docket No. FPGP0101IPR5
`
`Ibaraki ’882 also teaches a separate “generator” (i.e., first electric motor) that, as
`
`described above in claim [1.2], would be connected to the engine. The battery would
`
`provide current to this separate “generator” when the “generator” is operating as a
`
`motor to start the engine. (Ex. 1308, ¶¶223-228.)
`
`… [1.5] and a controller for controlling the flow of electrical and
`
`mechanical power between said engine, first