Trials@uspto.gov
`571-272-7822
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` Paper 12
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` Entered: November 2, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00795
`Patent 7,104,347 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

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`IPR2015-00795
`Patent 7,104,347 B2
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`I.
`
`INTRODUCTION
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`Ford Motor Company (“Petitioner”) filed a Petition requesting an
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`inter partes review of claims 1–5, 14, 16, 19, 20, and 22 of
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`U.S. Patent No. 7,104,347 B2 (Ex. 1301, “the ’347 patent”). Paper 1
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`(“Pet.”). Paice LLC and The Abell Foundation, Inc. (collectively, “Patent
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`Owner”) filed a Preliminary Response in both unredacted and redacted
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`forms. Papers 9, 10 (“Prelim. Resp.”).1 Patent Owner also filed a Motion to
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`Seal. Paper 11 (“Motion to Seal”). We have jurisdiction under 35 U.S.C.
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`§ 314(a), which provides that an inter partes review may not be instituted
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`“unless . . . there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least 1 of the claims challenged in the petition.” After
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`considering the Petition, the Preliminary Response, and associated evidence,
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`we conclude that Petitioner has demonstrated a reasonable likelihood that it
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`would prevail in showing unpatentability of all the challenged claims, except
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`claim 2. Thus, we authorize institution of an inter partes review of claims 1,
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`3–5, 14, 16, 19, 20, and 22 of the ’347 patent and we do not institute review
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`of claim 2.
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`A. Related Proceedings
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`
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`Petitioner indicates that the ’347 patent is the subject of Paice, LLC
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`and The Abell Foundation, Inc. v. Ford Motor Company, Case No. 1-14-cv-
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`00492 and Paice LLC and The Abell Foundation, Inc. v. Hyundai Motor
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`America et. al., Case No. 1:2012-cv-00499. Pet. 1; Paper 5, 2. Petitioner
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`also indicates that the ʼ347 patent is the subject of IPR2014-00571,
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`IPR2014-00579, and IPR2014-00884. Id.; Paper 5, 3. Petitioner further
`
`
`1 Citations are to the redacted version of Patent Owner’s Preliminary
`Response (Paper 10, “Prelim. Resp.”).
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`2
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`IPR2015-00795
`Patent 7,104,347 B2
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`indicates that patents related to the ʼ347 patent are the subject matter of
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`IPR2014-00570, IPR2014-01415, IPR2014-00568, IPR2014-00852,
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`IPR2014-00875, IPR2014-00904, IPR2014-01416, IPR2015-00606,
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`IPR2015-00767, IPR2015-00722, IPR2015-00758, IPR2015-00784,
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`IPR2015-00785, IPR2015-00791, IPR2015-00787, IPR2015-00790,
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`IPR2015-00794, and IPR2015-00792. Id. at 1–2; Paper 5, 3.
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`B. The ʼ347 Patent (Ex. 1301)
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`
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`The ’347 patent describes a hybrid vehicle with an internal
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`combustion engine, two electric motors (a starter motor and a traction
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`motor), and a battery bank, all controlled by a microprocessor that directs
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`the transfer of torque from the engine and traction motor to the drive wheels
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`of the vehicle. Ex. 1301, 17:5–45, Fig. 4. The microprocessor features a
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`control strategy that runs the engine only under conditions of high
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`efficiency, typically when the vehicle’s instantaneous torque requirements
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`(i.e., the amount of torque required to propel the vehicle, or “road load”) is
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`at least equal to 30% of the engine’s maximum torque output (“MTO”)
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`capability. Id. at 20:52–60, 35:5–14; see also id. at 13:47–61 (“the engine is
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`never operated at less than 30% of MTO, and is thus never operated
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`inefficiently”).
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`
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`Running the engine only when it is efficient to do so leads to
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`improved fuel economy and reduced emissions. Id. at 13:47–52. To achieve
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`such efficiency, the hybrid vehicle includes various operating modes that
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`depend on the vehicle’s torque requirements, the battery’s state of charge,
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`and other operating parameters. Id. at 19:53–55. For example, the hybrid
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`vehicle may operate in: (1) an all-electric mode, where only the traction
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`motor provides the torque to propel the vehicle and operation of the engine
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`IPR2015-00795
`Patent 7,104,347 B2
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`would be inefficient (i.e., stop-and-go city driving); (2) an engine-only
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`mode, where only the engine provides the torque to propel the vehicle and
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`the engine would run at an efficient level (i.e., highway cruising); (3) a dual-
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`operation mode, where the traction motor provides additional torque to
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`propel the vehicle beyond that already provided by the engine and the torque
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`required to propel the vehicle exceeds the maximum torque output of the
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`engine (i.e., while accelerating, passing, and climbing hills); and (4) a
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`battery recharge mode where the engine operates a generator to recharge the
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`battery while the traction motor drives the vehicle. Id. at 35:66–36:58,
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`37:26–38:55.
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`C. Illustrative Claim
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`Petitioner challenges claims 1–5, 14, 16, 19, 20, and 22 of the ’347
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`patent. Pet. 4–60. Claim 1 is illustrative of the claims at issue and is
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`reproduced below:
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`1. A hybrid vehicle, comprising:
`an internal combustion engine controllably coupled to
`road wheels of said vehicle;
`a first electric motor connected to said engine nd [sic]
`operable to start the engine responsive to a control signal;
`a second electric motor connected to road wheels of said
`vehicle, and operable as a motor, to apply torque to said wheels
`to propel said vehicle, and as a generator, for accepting torque
`from at least said wheels for generating current;
`a battery, for providing current to said motors and
`accepting charging current from at least said second motor; and
`a controller for controlling the flow of electrical and
`mechanical power between said engine, first and second
`motors, and wheels, wherein said controller starts and operates
`said engine when torque require to be produced by said engine
`to propel the vehicle and/or to drive either one or both said
`electric motor(s) to charge said battery is at least equal to a
`setpoint (SP) above which said engine torque is efficiently
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`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.
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`Ex. 1301, 58:13–37.
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`D. The Alleged Grounds of Unpatentability
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`The information presented in the Petition sets forth proposed grounds
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`of unpatentability of claims 1–5, 14, 16, 19, 20, and 22 of the ’347 patent
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`under 35 U.S.C. § 103(a) as follows (see Pet. 7–60):2 3
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`References
`
`Ibaraki ʼ8824 and Koide5
`Ibaraki ʼ882, Koide, and
`Frank6
`Ibaraki ʼ882, Koide, and
`Kawakatsu7
`Ibaraki ʼ882, Koide, and
`Vittone8
`Ibaraki ʼ882, Koide, and
`Yamaguchi9
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`Claims
`Challenged
`
`1, 2, and 5
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`3 and 4
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`16
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`20
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`19
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`2 Petitioner supports its challenge with the Declaration of Dr. Gregory W.
`Davis. Ex. 1308.
`3 Although Petitioner adds the general knowledge of one with ordinary skill
`in the art to the express statement of each alleged ground of unpatentability
`(Pet. 3–4), that is not necessary. Obviousness is determined from the
`perspective of one with ordinary skill in the art. We leave out the express
`inclusion of the general knowledge of one with ordinary skill.
`4 U.S. Patent No. 5,789,882, issued Aug. 4, 1998 (Ex. 1303)(“Ibaraki ʼ882”).
`5 U.S. Patent No. 5,934,395, issued Aug. 10, 1999 (Ex. 1317)(“Koide”).
`6 U.S. Patent No. 6,116,363, issued Sept. 12, 2000 (Ex. 1318) (“Frank”).
`7 U.S. Patent No. 4,335,429, issued June 15, 1982 (Ex. 1305)
`(“Kawakatsu”).
`8 Oreste Vittone, Fiat Conceptual Approach to Hybrid Cars Design, 12TH
`INTERNATIONAL ELECTRIC VEHICLE SYMPOSIUM (1994) (Ex. 1320)
`(“Vittone”).
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`Patent 7,104,347 B2
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`References
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`Ibaraki ʼ882, Koide, and
`Ibaraki ʼ62610
`Ibaraki ʼ882, Koide, and
`Lateur11
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`Claims
`Challenged
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`22
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`14
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`II. ANALYSIS
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`A. Patent Owner’s Discretionary Dismissal Arguments
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`Patent Owner first argues that we should exercise our discretion under
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`35 U.S.C. § 325(d) and reject the Petition because “it relies on substantially
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`the same arguments that [Petitioner] Ford has already presented to the Board
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`in four separate proceedings.” Prelim. Resp. 17–26. We have considered
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`Patent Owner’s argument, but exercise our discretion and consider the
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`Petition and institute trial on the grounds summarized below, based in part
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`on Ibaraki ’882, a reference not previously relied on. We also have
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`considered Patent Owner’s arguments regarding multiple attacks on
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`independent claim 1. Id. at 21–23. Where a dependent claim is challenged,
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`we see no reason not to consider a challenge of the independent claim from
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`which it depends over the same prior art, even if the independent claim
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`already has been challenged elsewhere. Whatever renders obvious the
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`dependent claim necessarily renders obvious the independent claim.
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`We also have considered Patent Owner’s argument that multiple
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`challenges should not be allowed because, under 35 U.S.C. § 315(e)(1), once
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`a final written decision is issued in one proceeding with respect to a claim,
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`
`9 U.S. Patent No. 5,865,263, issued Feb. 2, 1999 (Ex. 1321) (“Yamaguchi”).
`10 U.S. Patent No. 6,003,626, issued Dec. 21, 1999 (Ex. 1322)
`(“Ibaraki ʼ626”).
`11 U.S. Patent No. 5,823,280, issued Oct. 20, 1998 (Ex. 1307) (“Lateur”).
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`Petitioner would be barred from requesting or maintaining a proceeding on
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`that claim on any ground that the Petitioner raised or could have raised in the
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`proceeding which yielded the final written decision. Prelim. Resp. 26–29.
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`The contention is misplaced, because that provision applies only to the
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`Petitioner, not the Board. See Progressive Cas. Ins. Co. v. Liberty Mut. Ins.
`
`Co., Nos. 2014-1586, 2014-1466, 2014-1639, 2014-1538, 2014-1636, 2014-
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`1656, 2014-1549, 2014-1637, 2015 WL 5004949, at *2 (Fed. Cir. Aug. 24,
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`2015). Even if it applies to the Board, it is not burdensome simply to
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`terminate the second proceeding with respect to certain claims.
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`B. Claim Construction
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`The Board interprets claims of an unexpired patent using the broadest
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`reasonable construction in light of the specification of the patent in which
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`they appear. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Under the broadest reasonable
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`construction standard, claim terms are given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007).
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`1. “Road Load”or “RL”
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`
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`The term “road load” or “RL” is recited in independent claim 1 and
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`dependent claims 2–5, 14, 16, 19, 20, and 22. The Specification of the ’347
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`patent defines “road load” as “the vehicle’s instantaneous torque demands,
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`i.e., that amount of torque required to propel the vehicle at a desired speed,”
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`and further notes that it “can be positive or negative, i.e., when decelerating
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`or descending a hill, in which case the negative road load . . . is usually
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`employed to charge the battery.” Ex. 1301, 12:38–58. Accordingly, we
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`construe “road load” and “RL” as “the amount of instantaneous torque
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`required to propel the vehicle, be it positive or negative.”12
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`2. “Set Point” or “SP”
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`The term “setpoint” or “SP” is recited in independent claim 1 and
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`dependent claims 2–5, 14, 16, 19, 20, and 22. Petitioner proposes that
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`“setpoint” or “SP” be construed, in the context of these claims, as
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`“predetermined torque value.” Pet. 6–7. In that regard, Petitioner correctly
`
`notes that the claims compare the setpoint either to an engine torque value or
`
`a torque based “road load” value. Id. Independent claim 1 recites a
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`condition “when [the] torque require[d] to be produced by said engine to
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`propel the vehicle and/or to drive either one or both said electric motor(s) to
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`charge said battery is at least equal to a setpoint (SP).” Ex. 1301, 58:29–31.
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`Independent claim 1 further recites a relationship between the setpoint and
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`the maximum torque output of the engine, by the language “the torque
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`produced by said engine when operated at said setpoint (SP) is substantially
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`less than the maximum torque output (MTO) of said engine.” Id. at 58:34–
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`37. Although Patent Owner correctly notes that the Specification outside of
`
`the claims refers to two items being measurable against respective setpoints,
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`i.e., the vehicle’s instantaneous torque requirement and the state of charge of
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`the battery bank (Prelim. Resp. 9–10), the setpoint in these claims relates to
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`torque and not battery charge.
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`
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`Patent Owner asserts that “setpoint” or “SP” is not simply a numerical
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`value divorced from the context of the rest of the vehicle’s control system,
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`and that a “setpoint” serves the crucial function of marking the transition
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`12 This construction is the same as that proposed by Petitioner. Pet. 5–6.
`Patent Owner does not propose a different construction.
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`from one claimed mode to another, and in particular, the transition from
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`propelling the vehicle with the motor to propelling the vehicle with the
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`engine. Prelim. Resp. 7–9. Citing the Specification, Patent Owner further
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`states that the Specification uses “setpoint” synonymously with “transition
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`point.” Id. at 9–10. Accordingly, Patent Owner urges that the construction
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`of “setpoint” or “SP” must include an indication that it is a point at which a
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`transition between different operating modes may occur. Id. at 9–12.
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`
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`Patent Owner’s arguments are misplaced. The Specification outside
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`of the claims sometimes uses “setpoint” interchangeably with “transition
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`point,” because the disclosure describes the particular transitions between
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`operative modes, at the setpoints. If the multiple transitions between modes
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`are not described, it would be without meaning to refer to a “setpoint” as a
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`transition point between modes. A transition does not spring solely from the
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`term “setpoint” or “SP.” It would be improper to read into a claim all of the
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`disclosed operational modes and all disclosed transitions between modes
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`simply because the claim recites the “setpoint” or “SP.”
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`
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`Patent Owner does not urge that “setpoint” or “SP” requires any
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`particular transition from mode to mode. Instead, Patent Owner merely
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`desires to add that a “setpoint” is where a transition between operating
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`modes “may occur.” Id. Nothing of significance is added by that proposed
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`construction. If a transition is specified by other limitations in the claim, at
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`the setpoint, then a transition is required at the setpoint. If no transition is
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`specified by other limitations in the claim, then no transition is required at a
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`setpoint. A transition may or may not occur at a setpoint, depending on
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`what else is recited in the claim. It is not necessary to include such “may
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`occur” language in the construction of “setpoint” and “SP.” A multitude of
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`events “may occur” at a setpoint, but they are not necessary for setting forth
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`the meaning of “setpoint” or “SP” in a claim. The rest of the claim sets forth
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`what is required to occur at a setpoint.
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`
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`Nevertheless, we do regard as meaningful to note that nothing in the
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`Specification precludes a setpoint from being reset, after it has been set. A
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`setpoint for however short a period of time still is a setpoint.
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`
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`We construe “setpoint” and “SP” as “predetermined torque value that
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`may or may not be reset.”
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`3. “monitor patterns of vehicle operation over time”
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`Dependent claim 2 recites that the controller “monitors patterns of
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`vehicle operation over time and varies said setpoint SP accordingly.” Ex.
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`1301, 58:38–40. Patent Owner argues that we should construe the italicized
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`phrase to mean “track and record the driver’s repeated driving operations
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`over time.” Prelim. Resp. 12. Petitioner does not provide an explicit
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`construction for the phrase.
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`Patent Owner argues that the Specification of the ’347 patent’s
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`description of monitoring patterns of vehicle operation over time refers to
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`how the operator actually drives the car over some period of time, as
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`opposed to monitoring an internal data point of the vehicle. Id. at 12–16. In
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`support of its construction, Patent Owner directs attention to the following
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`descriptions in the Specification:
`
`Examples of this practice—amounting in many circumstances
`to modifying certain specific values depending on other data
`items not discussed in detail, or by monitoring the vehicle’s
`actual usage patterns over time—are given below.
`
`Prelim. Resp. 13 (citing Ex. 1301, 35:47–58).
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`It is also within the scope of the invention for the
`microprocessor to monitor the vehicle’s operation over a period
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`of days or weeks and reset this important setpoint in response to
`a repetitive driving pattern. For example, suppose the operator
`drives the same route from a congested suburban development
`to a workplace about the same time every morning; typically
`the road load might remain under 20% of MTO for the first few
`minutes of each day, then vary between 0 and 50% of MTO for
`another few minutes as the operator passes through a few traffic
`lights, and then suddenly increase to 150% of MTO as the
`operator accelerates onto a highway. It is within the skill in the
`art to program a microprocessor to record and analyze such
`daily patterns, and to adapt the control strategy accordingly.
`For example, in response to recognition of a regular pattern as
`above, the transition point might be adjusted to 60% of MTO;
`this would prevent repetitive engine starts as the road load
`exceeded 30% of MTO for a few hundred yards at a time, as
`might often occur in suburban traffic. Similarly, the engine
`starting routine might be initiated after the same total distance
`had been covered each day.
`
`Ex. 1301, 40:56–41:9 (emphasis added).
`
`In addition, Patent Owner, directing attention to external evidence,
`
`argues that the word “pattern” means a regular and repeated course of
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`conduct or behavior. Prelim. Resp. 15–16; Ex. 1328; Ex. 2303.
`
`Although Petitioner does not provide an explicit construction for the
`
`phrase “monitoring patterns of vehicle operation over time,” Patent Owner
`
`argues that Petitioner implicitly construes the phrase to encompass
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`monitoring the battery state of charge or “regenerative charging amount”
`
`and adjusting the alleged “setpoint” based on the stored regenerative
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`charging amount, with respect to dependent claim 2. Id. at 13–14 (citing
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`Pet. 25–27).
`
`We agree with Patent Owner that Petitioner’s implicit construction is
`
`not in light of the written description of the Specification of the ’347 patent
`
`which describes changing a setpoint in response to monitored vehicle
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`operation patterns. In particular, the description in the Specification
`
`regarding patterns describes clearly that the patterns are in connection with
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`the driving patterns of the operator of the vehicle. Ex. 1301, 40:56–41:9.
`
`The Specification does not describe monitoring “patterns” of a battery state
`
`of charge, for example. Moreover, the plain words of the phrase require
`
`monitoring patterns over time. It is not enough to monitor a single value of
`
`a vehicle component, for instance. Rather the plain meaning of the words
`
`require monitoring patterns, where a pattern is defined as a regular or logical
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`form, order, etc. Ex. 2303. Thus, we agree with Patent Owner that a pattern
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`is a regular and repeated course of conduct or behavior and that the phrase
`
`“monitoring patterns of vehicle operation over time” requires monitoring a
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`driver’s repeated driving operations over time.
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`Accordingly, for purposes of this decision, we interpret “monitoring
`
`patterns of vehicle operation over time” to require monitoring a driver’s
`
`repeated driving operations over time.
`
`C. Claims 1, 2, and 5 – Obviousness over Ibaraki ʼ882 and Koide
`
`Petitioner contends that claims 1, 2, and 5 are unpatentable under 35
`
`U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and Koide. Pet. 8–29.
`
`1. Ibaraki ʼ882 (Ex. 1303)
`
`Ibaraki ʼ882 discloses a drive control apparatus for a “hybrid vehicle”
`
`equipped with an electric motor and an internal combustion engine.
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`Ex. 1303, 1:10–15. The electric motor provides electric energy and operates
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`as a first drive power source, and the internal combustion engine combusts
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`fuel to provide a second drive power source. Id. at 2:57–64. The drive
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`control apparatus includes (1) an engine drive mode where the vehicle is
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`driven by the engine, (2) a motor drive mode where the vehicle is driven by
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`the electric motor, and (3) an electricity generating mode where an electric
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`generator is operated by the engine to charge an electric energy storage
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`device. Id. at 2:64–3:2. Depending on the running condition of the vehicle,
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`the drive control apparatus selects the drive mode. Id. at 3:5–14.
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`2. Analysis
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`a. Claims 1 and 5
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`The evidence set forth by Petitioner indicates there is a reasonable
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`likelihood that Petitioner will prevail in showing that claims 1 and 5 are
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`unpatentable under 35 U.S.C. § 103(a) as obvious over Ibaraki ʼ882 and
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`Koide. Pet. 8–29. Petitioner provides a detailed analysis, supported by
`
`evidence, demonstrating that there is a reasonable likelihood that claims 1
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`and 5 are obvious over Ibaraki ʼ882 and Koide. Id.
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`For example, claim 1 recites “a hybrid vehicle,” the vehicle
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`comprising “an internal combustion engine controllably coupled to road
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`wheels of said vehicle.” Petitioner contends that Ibaraki ʼ882 discloses a
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`hybrid vehicle that is propelled by an internal combustion (IC) engine and an
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`electric motor. Pet. 8 (citing Ex. 1303, 1:9–14; Ex. 1308 ¶ 180). Petitioner
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`specifically argues that Ibaraki ʼ882 discloses that the engine is controllably
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`coupled to road wheels via a clutch. Id. at 11 (citing Ex. 1303, 19:50–54,
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`Fig. 8; Ex. 1308 ¶¶ 184–190).
`
`Claim 1 further recites “a first electric motor connected to said engine
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`[a]nd operable to start the engine responsive to a control signal” and “a
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`second electric motor connected to road wheels of said vehicle, and operable
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`as a motor, to apply torque to said wheels to propel said vehicle, and as a
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`generator, for accepting torque from at least said wheels for generating
`
`current.” Petitioner argues that Ibaraki ʼ882 discloses an electric motor that
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`when the vehicle is in the “drive” state, the electric motor transfers power to
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`the drive wheels. Pet. 16 (citing Ex. 1303, 19:24–28; Ex. 1308 ¶ 213).
`
`Petitioner argues that this electric motor meets the claimed “second electric
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`motor” and a person with ordinary skill in the art would have understood
`
`that the transferring of power to the drive wheels is the same as applying
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`torque to said wheels. Id. (citing Ex. 1308 ¶¶ 214–215). Petitioner contends
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`that Ibaraki ʼ882 discloses a “charge” state where the electric motor serves
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`as an electric generator using regenerative braking. Id. at 16–17 (citing Ex.
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`1303, 19:61–67, 22:19–30). Petitioner further argues that Ibaraki ʼ882
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`discloses an electric generator in addition to the electric motor and a person
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`with ordinary skill in the art would have understood that the terms
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`“generator” and “electric motor,” when discussing hybrid vehicles,
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`“indicate[s] whether the operation of the electric machines is motor or
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`generator-based.” Id. at 13 (quoting Ex. 1316, 21). Petitioner alternatively
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`argues that Koide discloses an electric generator that may be used as an
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`electric motor. Id. (citing Ex. 1317, 1:30–32). Petitioner further argues that
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`Koide discloses a dual electric motor hybrid vehicle, where the first motor is
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`used to start the engine and the second motor is used as a drive power
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`source. Id. at 13–15 (citing Ex. 1317, 7:45–64, 8:47–60, 9:9–65; Ex. 1308
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`¶¶ 205–206). Petitioner also argues that it would have been obvious to
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`combine the controls of Koide to the existing structure of Ibaraki ʼ882 for
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`starting the engine via Ibaraki’s electric generator, and allow the electric
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`motor to propel the vehicle in order to remove the need for an exclusive
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`engine starter, thereby reducing costs by reducing the number of
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`components. Id. at 15–16 (citing Ex. 1317, 1:60–64; Ex. 1308 ¶ 179).
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`Claim 1 also recites “a battery, for providing current to said motors
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`and accepting charging current from at least said second motor.” Petitioner
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`contends that Ibaraki ʼ882 discloses an electrical energy storage device in
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`the form of a battery, and the battery is used for providing current during the
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`“drive” state and a person with ordinary skill in the art would have
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`understood that a battery would have been operable to provide or accept
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`current from any connected electric motor-generator. Id. at 17–18 (citing
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`Ex. 1303, 11:31–33, 19:55–57; Ex. 1308 ¶¶ 223–228).
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`Claim 1 additionally recites “a controller for controlling the flow of
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`electrical and mechanical power between said engine, first and second
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`motors, and wheels.” Petitioner contends that Ibaraki ʼ882 discloses a
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`controller that includes four modes: (1) MOTOR DRIVE, where the electric
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`motor is selected as the drive power source, (2) ENGINE DRIVE, where the
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`engine is selected as the drive power source, (3) ENGINE-MOTOR DRIVE,
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`where both the engine and electric motor are selected as the drive power
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`sources, and (4) CHARGING, where electrical energy generated during
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`regenerative braking is transferred to the battery. Id. at 18–19 (citing Ex.
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`1303, 20:43–49, Fig. 8; Ex. 1308 ¶¶ 230, 232, 233).
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`Claim 1 further recites “wherein said controller starts and operates
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`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
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`said battery is at least equal to a setpoint (SP) above which said engine
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`torque is efficiently produced wherein the torque produced by said engine
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`when operated at said setpoint (SP) is substantially less than the maximum
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`torque output (MTO) of said engine.” Petitioner contends that this limitation
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`includes the language “and/or” and, therefore, this limitation is met because
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`Ibaraki ʼ882 discloses “said controller starts and operates said engine when
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`torque require to be produced by said engine to propel the vehicle . . . is at
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`least equal to a setpoint (SP) above which said engine torque is efficiently
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`produced.” Id. at 19 (emphasis omitted). Specifically, Petitioner contends
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`that Ibaraki ʼ882 discloses a setpoint of engine speed above which the
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`engine torque is efficiently produced, the 70% relative efficiency. Id. at 19–
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`24 (citing Ex. 1303, 25:36–26:8, Fig. 5; Ex. 1308 ¶¶ 237–238, 240).
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`Accordingly, the present record supports that Petitioner has
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`established a reasonable likelihood it will prevail in demonstrating that
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`claim 1 is obvious over Ibaraki ʼ882 and Koide. We are similarly persuaded
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`that Petitioner has established a reasonable likelihood it will prevail in
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`demonstrating claim 5 is obvious over Ibaraki ʼ882 and Koide. See Pet. 27–
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`28.
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`We have considered Patent Owner’s argument that the Petition
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`improperly incorporates arguments and evidence from the Declaration of
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`Dr. Davis into the Petition. Prelim. Resp. 29–34. We agree that, in general,
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`arguments must not be incorporated by reference from one document into
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`another document (37 C.F.R. § 42.6(a)(3)). Here, however, Patent Owner’s
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`arguments are unpersuasive. Petitioner relies on Ibaraki and Koide in
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`challenging claims 1 and 5. In doing so, Petitioner relies on Dr. Davis’
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`testimony as evidence of what a POSA would have known at the time of the
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`invention. We have reviewed those portions of Dr. Davis’ Declaration, to
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`which we are directed, with respect to the grounds upon which we institute,
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`and, have determined that there is nothing unusual about his declaration or
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`the way in which Petitioner relies on the declaration insofar as improper
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`incorporation is concerned, at least not to the extent that we would disregard
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`the Petition in its entirety. Moreover, we will not disregard the Petition
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`because of an alleged “voluminous record.” Id. at 33–34.
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`Patent Owner also argues that Petitioner has failed to identify “what
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`claim elements are missing from Ibaraki ʼ882” and, therefore, Patent Owner
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`argues that Petitioner fails to provide the requisite Graham v. John Deere
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`analysis. Prelim. Resp. 35–36. Patent Owner further argues that Petitioner
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`fails to demonstrate clearly how it is applying Ibaraki ʼ882 to the claims. Id.
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`at 36–37. We are not persuaded by Patent Owner’s argument. Whatever
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`disclosure from each prior art reference, listed in Petitioner’s claim charts in
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`a corresponding location opposite a reproduced claim limitation, is a
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`representation that that disclosure meets the associated claim limitation. We
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`have reviewed the proposed ground of obviousness over Ibaraki ʼ882 and
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`Koide against claims 1 and 5, and are persuaded, at this juncture of the
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`proceeding, that Petitioner has established a reasonable likelihood that
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`Petitioner would prevail in its challenge to claims 1 and 5.
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`Patent Owner also argues that Petitioner relies improperly on two
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`separate embodiments of Ibaraki ʼ882, namely, the disclosures of Figures 5
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`and 11, and fails to explain why a person of ordinary skill in the art would be
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`motivated to combine these embodiments. Id. at 36–37. We disagree with
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`Patent Owner. Petitioner explains that Figures 5 and 11 similarly set forth
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`thresholds based on engine torque and engine speed. See Pet. 20–21.
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`Petitioner further sets forth that the thresholds determine the point in which
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`the engine mode will transition. See id. Although Patent Owner argues that
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`Figure 5 discloses “thresholds are based on engine efficiency” and Figure 11
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`discloses “thresholds are based on drive power” (Prelim. Resp. 36–37), we
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`are not persuaded that these are two separate embodiments. Rather, both
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`Figures 5 and 11 disclose threshold points for transitioning between engine
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`modes. The mere fact that Figure 5 also discloses engine efficiency based
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`on speed and torque does not render it a separate embodiment. Accordingly,
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`we are not persuaded by Patent Owner that Petitioner has failed to provide
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`an articulated reasoning with a rational underpinning in supporting its
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`conclusion of obviousness.
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`We are not persuaded by Patent Owner’s argument that Petitioner’s
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`parallel citations to both embodiments fail to adequately identify the basis
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`for its claim challenges. Id. We are able to discern from Petitioner’s
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`citations what portions of Ibaraki ʼ882 Petitioner relies upon to disclose
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`which limitation. Furthermore, as discussed above, we are not persuaded
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`that Petitioner relies on two separate embodiments of Ibaraki ʼ882.
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`We also are not persuaded by Patent Owner’s argument that
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`Petitioner provides nothing more than a conclusory analysis between power
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`and torque and Petitioner fails to explain adequately why a person of
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`ordinary skill in the art would have known to modify Ibaraki ʼ882’s “fuel-
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`efficiency- and drive-power-based thresholds to instead transition between
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`operating modes based on the ‘torque require[d] to be produced by said
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`engine,’ instead providing conclusory statements.” Id. at 37–38. First, this
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`argument is misplaced