UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
`Petitioner
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owner
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`Case IPR2015-00799
`Patent 7,237,634
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`PATENT OWNER’S
`RESPONSE
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`Patent No. 7,237,634
`Patent Owner’s Response
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`Case IPR2015-00799
`Attorney Docket No: 36351-0015IPB
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`TABLE OF CONTENTS
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`I. 
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`II. 
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`INTRODUCTION ........................................................................................... 1 
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`THE ’634 PATENT ......................................................................................... 2 
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`A. 
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`B. 
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`C. 
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`The ’634 Patent’s Applications ............................................................. 2 
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`Background of the ’634 Patent .............................................................. 3 
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`The Challenged Claims ......................................................................... 5 
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`III.  ARGUMENT ................................................................................................... 6 
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`A. 
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`The Effective Filing Date of the Challenged Claims Pre-Dates the
`’455 PCT Application ........................................................................... 7 
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`Severinsky ’970 is Incorporated into Applications Pre-Dating
`1. 
`the ’455 PCT Application ..................................................................... 9 
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`B. 
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`There is Support for the High Voltage Claims in Applications Pre-
`Dating the ’455 PCT Application........................................................ 16 
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`1. 
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`The High Voltage Claims Are Supported in Severinsky ’970 . 16 
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`The High Voltage Claims Are Supported in Applications Pre-
`1. 
`Dating the ’455 PCT Application........................................................ 23 
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`C. 
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`There is Support for the Low Current Claims in Applications Pre-
`Dating the ’455 PCT Application........................................................ 27 
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`1. 
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`The Low Current Claims Are Supported in Severinsky ’970 .. 28 
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`The Low Current Claims Are Supported in Applications Pre-
`2. 
`Dating the ’455 PCT Application........................................................ 32 
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`D. 
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`There is Support for the 2.5 Ratio Claims in Applications Pre-Dating
`the ’455 PCT Application ................................................................... 35 
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`IV.  CONCLUSION .............................................................................................. 40 
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Apple, Inc. v. Samsung Elecs. Co.,
`C.A. No. 12-cv-00630-LHK, 2014 WL 252045 (N.D. Cal. Jan. 21,
`2014) ................................................................................................................... 10
`
`Application of Wertheim, 541 F.2d 257 (C.C.P.A. 1976) ............................ 19, 20, 38
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`Augustine Med., Inc. v. Gaymar Indus., Inc.,
`181 F.3d 1291 (Fed. Cir. 1999) .............................................................. 7, 8, 9, 17
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`Bilstad v. Wakalopulos,
`386 F.3d 1116 (Fed. Cir. 2004) .................................................................... passim
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`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .................................................................... 10, 11
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`Harari v. Lee,
`656 F.3d 1331 (Fed. Cir. 2011) .............................................................. 10, 11, 14
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`Hollmer v. Harari,
`681 F.3d 1351 (Fed. Cir. 2012) .......................................................................... 15
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`Ralston Purina Co. v. Far-Mar-Co, Inc.,
`772 F.2d 1570 (Fed. Cir. 1985) ........................................................ 18, 19, 21, 38
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`Union Oil Co. of California v. Atl. Richfield Co.,
`208 F.3d 989 (Fed. Cir. 2000) ...................................................................... 34, 38
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`Wang Labs., Inc. v. Toshiba Corp.,
`993 F.2d 858 (Fed. Cir. 1993) .............................................................................. 8
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`Zenon Envtl., Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) .............................................................. 10, 14, 15
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`Statutes
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`35 U.S.C. § 103 .......................................................................................................... 1
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`35 U.S.C. § 311 .......................................................................................................... 1
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`Other Authorities
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`37 C.F.R. § 42.100 ..................................................................................................... 1
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`37 C.F.R. § 42.120 ..................................................................................................... 1
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`EXHIBITS
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`Exhibit Number
`Ex. 2901
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`Ex. 2902
`Ex. 2903
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`Ex. 2904
`Ex. 2905
`Ex. 2906
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`Ex. 2907
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`Exhibit Name
`Table of Ford’s IPR Petitions
`Bosch Automotive Handbook, 1996 ed.
`Declaration of Daniel A. Tishman in Support of
`Patent Owners’ Motion for Pro Hac Vice Admission
`Declaration of Neil Hannemann
`Neil Hannemann CV
`ZVEI, Voltage Classes for Electric Mobility
`(December 2013)
`Gregory W. Davis Deposition Tr. (IPR2015-00758)
`(January 13, 2016)
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`Pursuant to 37 C.F.R. § 42.120 and the Decision to Institute (“Institution
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`Decision” or “Inst. Dec.”), Patent Owners Paice LLC and the The Abell
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`Foundation, Inc. (collectively, “Paice”) hereby submit this Response to the Petition
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`for Inter Partes Review of U.S. Patent. No. 7,237,634 Under 35 U.S.C. § 311 et
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`seq., and 37 C.F.R. § 42.100 et seq. (“Petition” or “Pet.”) filed by Ford Motor
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`Company (“Ford”).
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`I.
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`INTRODUCTION
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`U.S. Patent. No. 7,237,634 (“the ’634 patent”), which is the subject of the
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`present Petition, claims an inventive and novel method of control for a hybrid
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`electric vehicle that uses road load, setpoint, and the maximum torque output of an
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`internal combustion engine to determine when to transition between various
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`operating modes in which the vehicle is propelled by an electric motor, an internal
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`combustion engine, or both. Ford’s Petition challenges claims 81-90, 115-124,
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`162-171, and 216-225 (“the challenged claims”) as obvious under 35 U.S.C. § 103.
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`Following Paice’s preliminary response, filed on August 10, 2015, the Board
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`instituted review of each of the challenged claims based on Ford’s single ground of
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`obviousness over PCT application WO00/15455 (“the ’455 PCT application”) in
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`view of U.S. Patent No. 5,343,970 (“Severinsky ’970”). See Inst. Dec. at 12. All
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`challenged claims are patentable for the reasons set forth herein.
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`In particular, Ford’s Petition is defective because the ’455 PCT application
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`is not prior art to the challenged claims. There is support for the challenged claims
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`in related applications pre-dating the ’455 PCT application, including both
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`independent support and support provided by incorporating Severinsky ’970.
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`Therefore, the Board should affirm the patentability of claims 81-90, 115-124,
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`162-171, and 216-225 of the ’634 patent.
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`II. THE ’634 PATENT
`A. The ’634 Patent’s Applications
`The ’634 patent (Ex. 1961), entitled “Hybrid Vehicles,” issued on July 3,
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`2007, from a divisional application filed on January 13, 2006 (Ex. 1975, App. No.
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`11/229,762 (“the ’762 application”)), which claims priority to a number of earlier
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`applications, including (in chronological order):
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` a provisional application filed on September 14, 1998 (Ex. 1968, App.
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`No. 60/100,095 (“the ’095 application”));
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` a provisional application filed on March 1, 1999 (Ex. 1969, App. No.
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`60/122,296 (“the ’296 application”));
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` a continuation-in-part application filed on March 9, 1999 (Ex. 1972,
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`App. No. 09/264,817 (“the ’817 application”));
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` an application filed on September 9, 1999 (Ex. 1973, App. No.
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`09/392,743 (“the ’743 application”));
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` a continuation-in-part application filed on April 2, 2001 (Ex. 1971,
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`App. No. 09/822,866 (“the ’866 application”)); and
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` a divisional application filed on March 7, 2003 (Ex. 1994, App. No.
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`10/382,577 (“the ’577 application”)).
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`Several patents have issued from these applications, including the ’634 patent.
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`Background of the ’634 Patent
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`B.
`The ’634 patent discloses embodiments of a hybrid electric vehicle, with an
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`internal combustion engine, two electric motors and a battery bank. A
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`microprocessor is employed to control the internal combustion engine, the two
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`electric motors, and the battery bank based on the hybrid vehicle’s instantaneous
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`torque requirements such that the internal combustion engine is only run under
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`high efficiency conditions. See, e.g., Ex. 1961 at Abstract.
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`An embodiment of the hybrid vehicle disclosed in the ’634 patent is shown
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`in Figure 3, reproduced below:
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`Id. at Fig. 3. As shown, a traction motor 25 is connected to the road wheels 34
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`through a differential 32. A starter motor 21 is connected to the internal
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`combustion engine 40. The motors 21 and 25 are functional as either motors or
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`generators, depending on the operation of the corresponding inverter/charger units
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`23 and 27, which connect the motors to the battery bank 22. See id. at 26:19-30.
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`These components are controlled by a microprocessor 48 or any controller
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`capable of examining input parameters and signals and controlling the mode of
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`operation of the vehicle. See, e.g., id. at 26:31-27:25. For example, control of
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`engine 40 is accomplished by way of control signals provided by the
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`microprocessor to the electronic fuel injection (EFI) unit 56 and electronic engine
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`management (EEM) unit 55. Control of (1) starting of the engine 40; (2) use of
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`motors 21 and 25 to provide propulsive torque; or (3) use of motors as generators
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`to provide regenerative recharging of battery bank 22, is accomplished through
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`control signals provided by the microprocessor to the inverter/charger units 23 and
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`27. See, e.g., id. at 26:64-27:25; 28:42-52.
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`The hybrid vehicle may be operated in a number of modes based on the
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`vehicle’s instantaneous torque requirements, the engine’s maximum torque output,
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`the state of charge of the battery, and other operating parameters. In an
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`implementation of the ’634 patent, the microprocessor employs a hybrid system
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`control strategy based on sensed and calculated values for system variables that are
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`evaluated against setpoints and causes the vehicle to operate in various operating
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`modes pursuant to this control strategy. See, e.g., id. at 40:16-26.
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`For example, in mode I, the hybrid vehicle is operated as an electric car,
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`with the traction motor providing all torque to propel the vehicle. Id. at 37:24-32.
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`As the vehicle continues to be propelled in electric only mode, the state of charge
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`of the battery may become depleted, and need to be recharged. In this case, the
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`hybrid vehicle may transition to mode II to recharge the battery, in which the
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`vehicle operates as in mode I, with the addition of the engine running the
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`starter/generator motor to provide electrical energy to operate the traction motor
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`and recharge the battery. See, e.g., id. at 37:32-36. When the internal combustion
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`engine can be operated in its fuel efficient range to propel the vehicle, the hybrid
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`vehicle operates in mode IV, with the engine providing torque to propel the
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`vehicle. Id. at 37:42-44; 38:51-61. If the vehicle requires additional torque, such
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`as for acceleration or hill-climbing, the vehicle may enter mode V, where the
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`traction motor provides additional torque to propel the vehicle beyond that
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`provided by engine 40. Id. at 38:1-8.
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`C. The Challenged Claims
`The challenged claims (claims 81-90, 115-124, 162-171, and 216-225)
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`combine this innovative control strategy with certain limitations regarding the
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`voltage and current (or amperage) supplied from the battery. These claims relate
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`to supplying relatively high voltage and relatively low current from the battery
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`bank to the electric motor/generator.
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`Specifically, certain of the challenged claims (i.e., claims 82, 84, 87, 89,
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`116, 118, 121, 123, 163, 165, 168, 170, 217, 219, 222, and 224) relate to a high
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`voltage, requiring that “the maximum DC voltage [be] at least approximately 500
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`volts” (the “high voltage claims”). Other challenged claims (i.e., claims 83, 85, 88,
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`90, 117, 119, 122, 124, 164, 166, 169, 171, 218, 220, 223, and 225) relate to low
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`current, requiring that the maximum current be “less than approximately 150
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`amperes” (the “low current claims”). A third set of challenged claims (i.e., claims
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`81, 86, 115, 120, 162, 167, 216, 221, and all claims depending therefrom) relate to
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`the ratio between the maximum DC voltage to the maximum current supplied,
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`requiring that “a ratio of maximum DC voltage to maximum current supplied [be]
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`at least 2.5” (the “2.5 ratio claims”).
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`III. ARGUMENT
`The Petition is deficient because the ’455 PCT application is not prior art to
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`the challenged claims. Ford relies on the ’455 PCT application for “all of the
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`limitations of the Challenged Claims, except the electrical limitations.” See Pet. at
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`2. However, the effective filing date of the challenged claims pre-dates the ’455
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`PCT application because there is more than sufficient support for those claims in
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`earlier applications from which the ’634 patent claims priority, which pre-date the
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`’455 PCT application. The support for these claims comes from both the four
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`corners of the applications themselves and the incorporated disclosure of
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`Severinsky ’970.
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`A. The Effective Filing Date of the Challenged Claims Pre-Dates the
`’455 PCT Application
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`The ’634 patent claims priority back to a number of applications, dating
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`back to the earliest provisional application—the ’095 application from September
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`14, 1998. The challenged claims are supported by these early applications as
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`discussed in more detail below. See Ex. 2904 at § VI.A. Ford is wrong that the
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`effective filing date is the date of the continuation-in-part application filed on April
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`2, 2001, i.e., the ’866 application. See Pet. at 2. Therefore, the ’455 PCT
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`application—which published on March 23, 2000—is not prior art to the
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`challenged claims.
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`A continuation-in-part application “contains subject matter from a prior
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`application and may also contain additional matter not disclosed in the prior
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`application.” Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1302
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`(Fed. Cir. 1999). In such a situation, different claims within the same patent may
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`have different effective filing dates:
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`Subject matter that arises for the first time in the CIP application does
`not receive the benefit of the filing date of the parent application. Thus,
`the decision on the proper priority date – the parent application date or
`the CIP application date – for subject matter claimed in a CIP
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`application depends on when that subject matter first appeared in the
`patent disclosures. To decide this question, a court must examine
`whether the “disclosure of the application relied upon reasonably
`convey[s] to the artisan that the inventor had possession at that time of
`the later claimed subject matter.” This is a question of fact.
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`Id. at 1302-03 (internal citations omitted) (quoting Wang Labs., Inc. v. Toshiba
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`Corp., 993 F.2d 858, 865).
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`Here, the challenged claims are supported as early as September 14, 1998,
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`when the provisional ’095 application was filed. First, the ’095 application
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`incorporates by reference in its entirety Severinsky ’970 (which supports the
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`limitations of the challenged claims). See Ex. 1968 at 2 (“This application
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`discloses a number of improvements over and enhancements to the hybrid vehicles
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`disclosed in the inventor’s U.S. patent 5,343,970 . . . , which is incorporated herein
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`by this reference.”). As discussed in more detail below, the incorporated
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`Severinsky ’970 describes the low current (see § III.C.1) and high voltage (see §
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`III.D.1) limitations, as well as the 2.5 ratio limitations (see § III.E). Likewise, the
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`applications the pre-date the ’455 PCT Application support each of these
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`limitations. See §§ III.C.2, III.D.2, III.E.
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`Ford’s argument that the ’634 patent applicants made “admissions” by
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`referring to newly added portions of the ’866 continuation-in-part application as
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`support for the challenged claims, see Pet. at 8-9, is baseless. Indeed, Ford cites no
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`case law for the proposition that referring to a portion of an application acts as a
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`binding admission that other prior disclosures do not support the limitation. It is
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`illogical to think that a later, more explicit, disclosure can somehow alter an earlier
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`disclosure to strip it of its substance. The relevant inquiry is whether the
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`applications that pre-date the ’455 PCT application convey to a person of ordinary
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`skill in the art that the inventors had possession of the challenged claims at the time
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`of those applications. The answer to that inquiry is yes. Ex. 2904 at § VI.A.
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`As discussed below, the disclosures in the ’095 application, the ’817
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`application, and the ’743 application describe the challenged claims and convey
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`that the inventors (including Dr. Alex Severinsky, the sole inventor on Severinsky
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`’970) had possession of the claimed invention. Id. Therefore, the challenged
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`claims of the ’634 patent are entitled to a September 14, 1998 priority date (or, at
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`the very latest, a priority date of September 9, 1999, when the ’743 application was
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`filed). See Augustine, 181 F.3d at 1302.
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`1.
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`Severinsky ’970 is Incorporated into Applications Pre-Dating
`the ’455 PCT Application
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`Severinsky ’970 is incorporated by reference, in its entirety, into several
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`related applications that pre-date the ’455 PCT application, including the ’095
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`application (September 14, 1998), the ’817 application (March 9, 1999), and the
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`’743 application (September 9, 1999). And because Severinsky ’970 provides
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`support to convey to a person of ordinary skill in the art that the inventors had
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`possession of the challenged claims, see Ex. 2904 at § VI.A.1, the ’455 PCT
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`application is not prior art.
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`In order to determine whether and to what extent a patent application
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`incorporates material by reference, the standard is whether one reasonably skilled
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`in the art would understand the application as describing with sufficient
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`particularity the material to be incorporated and where it can be found. Zenon
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`Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378–79 (Fed. Cir. 2007). The
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`Federal Circuit in Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011), described as
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`“broad and unequivocal” the following incorporation by reference: “The
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`disclosures of the two applications are hereby incorporate[d] by reference.” Id. at
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`1335.
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`In Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir.
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`2009), the Federal Circuit found that a prior patent was sufficiently incorporated
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`where the general subject matter of a patent (i.e., “foamable polymeric
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`compositions suitable for golf ball cover layers”) was identified, and the location
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`where it could be found (i.e., “the Molitor patent”) was identified. Id. at 1346; see
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`also Apple, Inc. v. Samsung Elecs. Co., C.A. No. 12-cv-00630-LHK, 2014 WL
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`252045, at *22 (N.D. Cal. Jan. 21, 2014) (“The language ‘identifies with
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`specificity both what material is being incorporated by reference’ (a system for
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`synchronization of personal information) ‘and where it may be found’ (the Multer
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`Patent).” (quoting Callaway Golf, 576 F.3d at 1346)).
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`Ford and Dr. Stein attempt to downplay the broad and unequivocal
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`incorporation by reference of the entirety of Severinsky ’970 in the ’634 patent
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`(’634 patent at 10:40-47), which slightly modifies the incorporation by reference in
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`the provisional ’095 application: “This application discloses a number of
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`improvements over and enhancements to the hybrid vehicles disclosed in the
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`inventor’s U.S. patent 5,343,970 . . . , which is incorporated herein by this
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`reference.” Ex. 1968 at 2. Instead, Ford and Dr. Stein focus on the statement that
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`“it is to be understood that the specifics of the vehicle design shown in the ‘970
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`patent are, applicable to the vehicles shown herein as well” where “differences are
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`not mentioned” (’634 patent at 10:40-47), arguing that this sentence “fails to
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`describe with detailed particularity the scope of the incorporation.” See Pet. at 13;
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`Ex. 1962 at ¶¶ 153-54. The latter, narrower, sentence does not change the broader,
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`unequivocal incorporation of the former. “While it may seem redundant, nothing
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`prevents a patent drafter from later incorporating again certain ‘relevant portions’
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`of an application so as to direct the reader to the exact portion of the incorporated
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`document the drafter believes relevant.” Harari, 656 F.3d 1331, 1336.
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`Moreover, this unequivocal incorporation by reference in the ’634 patent and
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`earlier applications dating back to 1998 is further supported by the ’095
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`application’s unmistakable statement that the present invention has “power
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`circuitry [] operated at relatively high voltage and relatively low current” as is
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`shown in Severinsky ’970:
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`The hybrid drive train shown in the ’970 patent has many aspects and
`advantages with respect to the prior art which are retained by the
`present invention. For example, the electric drive motor is selected to
`be of relatively high power, specifically, equal to or greater than that of
`the internal combustion engine, and to have high torque output
`characteristics at low speeds; this allows the conventional multi-speed
`vehicle transmission to be eliminated. As compared to the prior art, the
`battery bank, motor/generator, and associated power circuitry are
`operated at relatively high voltage and relatively low current, reducing
`losses due to resistive heating and simplifying component selection and
`connection.
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`Ex.1968 at 3 (emphases added); see also Ex. 2904 at ¶ 47.
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`Additionally, the ’817 application not only incorporates Severinsky ’970 in
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`its entirety, but it also specifically incorporates the discussion of the AC/DC
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`converter in Severinsky ’970:
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`inverter/chargers 23 and 27 (separate
`the
`The functions of
`inverter/chargers being required to allow independent operation of
`motors 21 and 25) include control of motors 21 and 25 to operate as
`motors or as generators; operation of traction motor 25 in the opposite
`direction for reversing the vehicle; conversion of DC stored by the
`battery bank to AC for motor operation; and conversion of AC induced
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`in the motors when operated as generators to DC for battery charging.
`Essentially similar functions were provided by the solid-state switching
`AC/DC converter 44 in the '970 patent; where not specified to the
`contrary, the discussion thereof is applicable to the inverter design
`shown in FIG. 5 hereof.
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`Ex. 1972 at 49:1-12 (emphasis added); see also Ex. 2904 at ¶ 48.
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`The ’817 application also explicitly incorporates the discussion of low
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`current from Severinsky ’970:
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`The current drawn from the battery bank 22 during long-term operation
`of the traction and starting motor(s) to propel the vehicle should be
`limited to 30-50 amperes, to reduce the size of the conductors and other
`components required, as discussed in the '970 patent; these components
`are satisfactory to carry currents of up to 200 amperes, as may be
`encountered during full-power acceleration, as this condition will not
`persist for more than about 30 seconds.
`As indicated, the battery bank 22 comprises two substantially similar
`battery assemblies 84; in one embodiment, each battery assembly will
`comprise eight 48-volt batteries, such that 384 volts is provided by
`each. The battery assemblies 84 are connected in series, so that 768
`volts are provided across the circuit "rails" 86, 88. However, the vehicle
`chassis connection is taken from between the series connected battery
`assemblies, so that only 384 volts is present between any given circuit
`component and
`the vehicle chassis;
`this "center-point-chassis"
`connection significantly reduces various insulation and heat-sinking
`requirements. More specifically, the conductors, connectors, relays,
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`switches and like elements can be as approved by the National
`Electrical Manufacturers' Association (NEMA) for 600 volt service;
`such elements are widely available, and are much more easily employed
`and much less expensive than those needed for continuously carrying
`current at, for example, 300 volts and 300 amperes.
`
`Ex. 1972 at 50:22-51:12.
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`Neither Ford’s Petition, nor Dr. Stein’s declaration, cites to these discussions
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`nor attempts to explain why a person of ordinary skill in the art would ignore them.
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`Importantly, the unequivocal incorporation of the entirety of Severinsky ’970
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`clearly indicates to one of skill in the art “what specific material it incorporates”
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`(i.e., the entire disclosure of “U.S. patent 5,343,970”), and “clearly indicate where
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`that material is found in the various documents” (i.e., in Severinsky ’970). The
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`’095 application’s language (and the language that carried through to the ’634
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`patent) is nearly identical to the language approved by the Federal Circuit in
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`Harari, 656 F.3d at 1335. And the more specific disclosures incorporate the
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`discussion of the configuration of the inverter and hybrid battery in Severinsky
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`’970.
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`The case law cited by Ford and the Board is inapposite. First, Zenon
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`Environmental, 506 F.3d at 1380-82, did not involve an unequivocal incorporation
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`as in this case. Instead, the application referred only to “the relevant disclosures”
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`of another application related to a “preferred skein,” which was not effective to
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`incorporate the disclosure of a “separate and distinct” element of the invention;
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`namely, a “gas distribution system.” The Board refers to Zenon’s explanation that
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`the “host document must identify with detailed particularity what specific material
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`it incorporates and clearly indicate where that material is found in the various
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`documents,” see Inst. Dec. at 10, but ignores that the applications from which the
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`’634 patent claims priority do just that. Unlike in Zenon, the incorporation
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`language here unequivocally indicates that the entirety of Severinsky ’970,
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`including the inverter and battery elements thereof (the same elements that support
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`the challenged claims), are incorporated by reference.
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`Similarly, in Hollmer v. Harari, 681 F.3d 1351, 1358 (Fed. Cir. 2012), the
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`Federal Circuit found the incorporation by reference ambiguous where the disputed
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`incorporation language could have referred to at least “several potential documents
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`for incorporation.” Here, there is no dispute that the incorporation language is
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`unambiguously directed to a single reference: Severinsky ’970.
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`There is no prohibition against a “wholesale incorporation” of a reference, or
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`requirement of “specification of exactly which improvements, advantages, or
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`functions” from an incorporated document apply to corresponding features of the
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`host document, contrary to the Board’s suggestion. See Inst. Dec. at 11. Rather,
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`the “detailed particularity” required refers to specifically what is being
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`incorporated and where it can be found. As explained above, the “what” (“U.S.
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`patent 5,343,970”) and the “where” (Severinsky ’970) are detailed with
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`particularity in the ancestor applications of the ’634 patent.
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`Severinsky ’970 is broadly and unequivocally incorporated by reference into
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`the ’634 patent’s ancestor applications that pre-date the ’455 PCT application.
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`B.
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`There is Support for the High Voltage Claims in Applications Pre-
`Dating the ’455 PCT Application
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`The Petition is deficient as to the high voltage claims because there is support
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`for those claims in both the incorporated Severinsky ’970 patent, and in the
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`applications that preceded the ’455 PCT application, including the ’095 application,
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`the ’817 application, and the ’743 application, from which the ’634 patent claims
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`priority.
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`1. The High Voltage Claims Are Supported in Severinsky ’970
`First, with respect to the claims requiring that “the maximum DC voltage
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`[be] at least approximately 500 volts” (claims 82, 84, 87, 89, 116, 118, 121, 123,
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`163, 165, 168, 170, 217, 219, 222, and 224), Ford admits that Severinsky ’970
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`discloses a range of voltages with a minimum value of 500 and a maximum of
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`1500. See Pet. at 14. This disclosure in the incorporated Severinsky ’970 patent is
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`sufficient to convey to a person of ordinary skill in the art that the inventors were
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`in possession of the high voltage (at least 500 volts) limitations of the claims, Ex.
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`2904 at § VI.A.2.a, which is all that the law requires. See Bilstad v. Wakalopulos,
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`386 F.3d 1116, 1125 (Fed. Cir. 2004) (“However, the Board never truly discussed
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`the understandings of persons skilled in the art and whether Bilstad’s written
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`description would reasonably convey to a person skilled in the art that Bilstad had
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`possession of the claimed subject matter at the time of filing.”).
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`Yet, Ford inexplicably argues that Severinsky ’970’s disclosure of a 500-
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`1500 volt range “do[es] not support an unbounded range, as required by the”
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`challenged claims. See Pet at 14. Despite the fact that the law asks whether a
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`disclosure would convey to a person of ordinary skill in the art that the inventors
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`had possession of the invention, see Augustine Med., 181 F.3d at 1302-03, Ford
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`conspicuously does not cite to any support from Dr. Stein as to what a person of
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`ordinary skill in the art would have understood. Mr. Hannemann’s opinions
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`establish what Severinsky ’970 would have conveyed to a person of ordinary skill
`
`in the art. Specifically, Mr. Hannemann stated that the disclosure of a 500-1500
`
`volt range supports the claimed voltage range of at least 500 volts because a person
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`of ordinary skill in the art would have understood that there is a workable upper-
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`limit of available voltages in a hybrid vehicle, particularly at the time of the
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`invention of the ’634 patent. Ex. 2904 at ¶¶ 56-59. Mr. Hannemann further stated
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`that that upper-limit is approximately 1500 volts, a