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 Preliminary Response to
`Petition for Inter Partes Review of U.S.
`Patent No. 7,237,634
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`Patent No. 7,237,634
`Patent Owner’s Preliminary 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. 
`
`II. 
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`INTRODUCTION ........................................................................................... 1 
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`PROCEDURAL BACKGROUND ................................................................. 2 
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`III.  THE ’634 PATENT ......................................................................................... 3 
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`A. 
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`Background of the ’634 patent .............................................................. 3 
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`IV.  ARGUMENT ................................................................................................... 6 
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`A. 
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`The Board should exercise its discretion to reject Ford’s eleventh shot
`at the ’634 Patent ................................................................................... 7 
`
`1. 
`
`The Petition is Ford’s eleventh shot at the ’634 patent ............ 10 
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`Ford advances the exact same prior art and substantially the
`2. 
`same arguments ................................................................................... 14 
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`3. 
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`Estoppel considerations support rejecting Ford’s Petition ....... 16 
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`B. 
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`The Petition is procedurally improper ................................................. 19 
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`1. 
`
`2. 
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`The Petition improperly incorporates by reference .................. 19 
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`The Petition creates an overly voluminous record ................... 21 
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`C. 
`
`Ground 1 is deficient because the ‘455 PCT Application is not prior
`art to the “500 volts,” or “150 amperes” claims .................................. 23 
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`The ’634 patent properly incorporates the disclosure of the
`1. 
`Severinsky ’970 specification ............................................................. 23 
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`Severinsky ’970 contains sufficient disclose to support the
`2. 
`claim limitations .................................................................................. 28 
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`The ’634 patent alone provides support for the current and
`3. 
`voltage limitations ............................................................................... 36 
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`4. 
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`5. 
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`There is no “new matter” admission in the CIP Applications .. 44 
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`These issues have not been decided by the Board .................... 45 
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`The ’455 PCT Application is not prior art to the “maximum
`6. 
`current” or “maximum voltage” limitations ........................................ 46 
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`V. 
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`CONCLUSION .............................................................................................. 47 
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`Patent No. 7,237,634
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`Cases
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`TABLE OF AUTHORITIES
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` Page(s)
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`Apple, Inc., v. ContentGuard Holdings, Inc.,
`IPR2015-00356, Paper 9 (PTAB June 26, 2015) ............................................... 23
`
`Application of Wertheim, 541 F.2d 257, 265 (C.C.P.A. 1976) ................................ 38
`
`ASUSTeK Computer Inc. v. Exotablet, Ltd.,
`IPR2015-00041, Paper 6 (PTAB Apr. 23, 2015) ................................................. 9
`
`Bilstad v. Wakalopulos,
`386 F.3d 1116 (2004) .................................................................................... passim
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper 8 (PTAB Oct. 14, 2014) .................................................. 8
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 27
`
`Cisco v. C-Cation Technologies,
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014). ............................................ 20
`
`Conopco, Inc. dba Unilever v. Procter & Gamble Company,
`IPR2014-00628, Paper 23 (PTAB March 20, 2015). ..................................... 9, 10
`
`CustomPlay, LLC v. ClearPlay, Inc.,
`IPR2014-00783, Paper 9 (PTAB Nov. 7, 2014) ................................................. 17
`
`eBay Inc. v. MoneyCat Ltd.,
`CBM2015-00008, Paper 9 (PTAB May 1, 2015) ............................................... 17
`
`Fidelity National v. DataTreasury,
`IPR2014-00491, Paper 9 (PTAB Aug. 13, ......................................................... 20
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`Hollmer v. Harari,
`681 F.3d 1351 (Fed. Cir. 2012) .......................................................................... 27
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`MaxLinear, Inc. v. Cresta Technology Corp.,
`IPR2015-00591, Paper 9 (PTAB June 15, 2015) ............................................... 13
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`Micro Motion, Inc. v. Invensys Systems, Inc.,
`IPR2014-0393, Paper 16 (PTAB Aug. 4, 2014) ................................................. 20
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`Ralston Purina Co. v. Far-Mar-Co, Inc.,
`772 F.2d 1570 (1985) .................................................................................... 33, 34
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`Samsung Elecs. Co. v. Rembrandt Wireless Technologies, LP,
`IPR2015-00555, Paper 20 (PTAB June 19, 2015) ............................................... 9
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`Shaw Industries Group, Inc. v. Automated Creel Sys., Inc.,
`IPR2013-00584, Paper 16 (PTAB Dec. 21, 2013) ............................................. 20
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`Tempur Sealy Int’l Inc. v. Select Comfort Corp.,
`IPR2014-01419, Paper 7 (PTAB Feb. 17, 2015) ................................................ 20
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`Travelocity.com L.P. v. Cronos Techs., LLC,
`CBM2015-00047, Paper 7 (PTAB June 15, 2015) ............................................. 14
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`Unified Patents, Inc. v. PersonalWeb, LLC,
`IPR2014-00702, Paper 13 (PTAB Jul. 24, 2014) ............................................... 19
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`Unilever, Inc., v. The Proctor & Gamble Co.,
`IPR2014-00506, Paper 17 (PTAB July 7, 2014) ................................................ 17
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`Union Oil Co. of California v. Atl. Richfield Co.,
`208 F.3d 989 (Fed. Cir. 2000) ............................................................................ 38
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`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) .......................................................................... 45
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`Zenon Environmental, Inc. v. United States Filter Corp.,
`506 F.3rd 1370, 1380-82 (Fed. Cir. 2007) .......................................................... 27
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`Ex Parte Zooey C. Chu,
`APL 2001-0959, 2003 WL 22282257 (BPAI, 2003) ......................................... 44
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`Statutes
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`35 U.S.C. § 313 .......................................................................................................... 1
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`35 U.S.C. § 315 .................................................................................................. 10, 18
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`35 U.S.C. § 316 ........................................................................................................ 22
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`35 U.S.C. § 325 .................................................................................................. passim
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`Other Authorities
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`37 C.F.R. § 42.1 ................................................................................................... 9, 22
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`37 C.F.R. § 42.6 ....................................................................................................... 19
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`37 C.F.R. § 42.104 ................................................................................................... 21
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`157 Cong. Rec. S952 (2011) .................................................................................. 7, 8
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`77 Fed. Reg. 48756, 48763 (Aug. 4, 2012) ............................................................. 22
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`H.R. Rep. No. 112-98 .................................................................................... 8, 13, 22
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`EXHIBITS
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`Exhibit Number
`Ex. 2901
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`Ex. 2902
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`Exhibit Name
`Table of Ford’s IPR Petitions
`Bosch Automotive Handbook, 1996 ed.
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`Patent No. 7,237,634
`Patent Owner’s Preliminary Response
`I.
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`INTRODUCTION
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`Case IPR2015-00799
`Attorney Docket No: 36351-0015IPB
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`In accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Paice LLC and
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`the The Abell Foundation, Inc. (“Patent Owner” or collectively referred to as
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`“Paice”) respectfully submit this Preliminary Response to the Petition for Inter
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`Partes Review (“Petition” or “Pet.”) of U.S. Patent No. 7,237,634 (Ex. 1961) (“the
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`’634 patent”) filed by Ford Motor Company (“Ford” or “Petitioner”).
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`In its eleventh petition for inter partes review (IPR) of the ’634 patent, Ford
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`asserts that claims 81-90, 115-124, 162-171, and 216-225 (“the Challenged
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`Claims”) are obvious in view of U.S. Patent No. 5,343,970 (“Severinsky”)
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`combined with PCT application WO00/15455 (“the ’455 PCT Publication”). As
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`the Board is well aware, Severinsky is the subject of two IPR regarding the ’634
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`patent that the Board is already considering (IPR2014-00904 and IPR2014-01416).
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`Paice requests that the Board deny institution for at least the following
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`reasons: (1) the Petition is Ford’s eleventh shot at the ’634 patent and includes
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`serial claim challenges that are a part of an overall strategy designed to drive up
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`costs and overburden Paice with twenty-five petitions for IPR based on serial
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`grounds of obviousness; (2) the Petition is procedurally improper, containing
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`improper incorporation by reference, and creating an excessively voluminous
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`record; and (3) the Petition is defective because at least with respect to the “500
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`volts” and “150 amperes” claims, the ‘455 PCT Publication is not prior art to those
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`claims.
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`Because Ford’s Petition is duplicative of petitions already before the Board
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`and fails to establish a reasonable likelihood that at least one of the challenged
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`claims is unpatentable, the Board should reject the petition and decline to institute
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`another proceeding (out of a total thirteen requested ’634 patent IPRs) regarding
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`the ’634 patent.
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`II.
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`PROCEDURAL BACKGROUND
`The Petition is one of thirteen petitions for IPR that Ford has filed against
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`the ’634 patent. Ford states that it “is filing several IPRs to address the ’634 Patent
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`claims and is trying to group the claims in a logical fashion.” Pet. 1. However,
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`Ford has filed serial claim challenges against every single claim challenged in the
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`Petition. See Ex. 2901. For example, Ford has challenged independent claims 80,
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`114, and 215 in five1 other petitions and independent claim 161 in three2 other
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`1 See IPR2014-01416, IPR2015-00785, IPR2015-00791, IPR2015-00800,
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`IPR2015-00801.
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`2 See IPR2014-01416, IPR2015-00722, IPR2015-00800.
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`2
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`petitions.3 Moreover, every single claim challenged in the Petition is also
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`challenged in IPR2015-00758. See Pet. at 2 (“IPR2015-00758 is also directed to
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`the Challenged Claims”).
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`III. THE ’634 PATENT
`A. Background of the ’634 patent
`The ’634 patent (Ex. 1961), entitled “Hybrid Vehicles,” issued on July 3,
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`2007, from an application with a priority date of September 14, 1998. The ’634
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`patent discloses embodiments of a hybrid electric vehicle, with an internal
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`combustion engine, two electric motors and a battery bank. A microprocessor is
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`employed to control the internal combustion engine, the two electric motors, and
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`the battery bank based on the hybrid vehicle’s instantaneous torque requirements
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`such that the internal combustion engine is only run under high efficiency
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`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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`3 Ford’s instant Petition purports to challenge only the dependent claims of
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`claims 80, 114, and 215.
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`3
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`Ex. 1961 at Fig. 3. As shown, a traction motor 25 is connected to the road wheels
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`34 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 Ex. 1961 at
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`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., Ex. 1961 at 26:31-27:25. For example, control
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`of 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., Ex. 1961 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., Ex. 1961 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. Ex. 1961 at
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`37:24-32. As the vehicle continues to be propelled in electric only mode, the state
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`of charge of the battery may become depleted, and need to be recharged. In this
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`case, the hybrid vehicle may transition to mode II to recharge the battery, in which
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`the 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., Ex. 1961 at 37:32-36. When the internal
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`combustion engine can be operated in its fuel efficient range to propel the vehicle,
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`the hybrid vehicle operates in mode IV, with the engine providing torque to propel
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`the vehicle. Ex. 1961 at 37:42-44; 38:51-61. If the vehicle requires additional
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`torque, such as for acceleration or hill-climbing, the vehicle may enter mode V,
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`where the traction motor provides additional torque to propel the vehicle beyond
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`that provided by engine 40. Ex. 1961 at 38:1-8.
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`IV. ARGUMENT
`The Board should deny institution because the Petition runs afoul of 35
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`U.S.C. § 325(d) and is replete with procedural and substantive defects. First, the
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`Petition constitutes one of several bites at the apple with respect to the challenged
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`claims of the ’634 patent, and appears intended solely to burden Paice and the
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`Board with multiple proceedings. Additionally, the Petition is procedurally
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`improper, containing improper incorporation by reference, and creating an
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`excessively voluminous record.
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`Finally, the Petition is deficient at least with respect to the “500 volts” and
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`“150 amperes” claims, because the ‘455 PCT Publication is not prior art: (1) there
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`is sufficient support for those claim limitations via the incorporation by reference
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`of the Severinsky ’970 patent, and (2) there is sufficient support for those
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`limitations in the original application from which the ’634 patent takes priority.
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`Paice raises here only a limited number of deficiencies in the Petition’s
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`alleged grounds for unpatentability for purposes of demonstrating that this IPR
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`should not be instituted, but reserves its rights to raise additional issues, and to
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`more comprehensively address the issues raised herein, should the Board institute.
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`A. The Board should exercise its discretion to reject Ford’s eleventh
`shot at the ’634 Patent
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`The Board should exercise its discretion under 35 U.S.C. § 325(d) and reject
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`the Petition because it relies on exactly the same prior art and substantially the
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`same arguments that it has already presented to the Board in two separate
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`proceedings (the first of which it initiated nearly nine months prior to the Petition).
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`In addition, Ford has filed ten other IPR petitions in parallel with the Petition in an
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`attempt to further burden Paice and avoid the estoppel intended by Congress.
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`Ford’s abusive tactics—filing twenty five petitions for IPR on just five patents
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`targeting claims multiple times using the same prior art through serial grounds—
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`are designed to drive up costs and overburden Paice with multiple proceedings.
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`The overlapping petitions waste the resources of not only the parties but also the
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`Board. The Board should not reward such behavior.
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`Congress intended that the America Invents Act (AIA) provide “procedural
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`safeguards to prevent a challenger from using the process to harass patent owners.”
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`See 157 Cong. Rec. S952 (2011) (statement of Sen. Grassley). Congress further
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`intended “to prevent petitioners from raising in a subsequent challenge the same
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`patent issues that were raised or reasonably could have been raised in a prior
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`challenge” in order to “significantly reduce the ability to use post-grant procedures
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`for abusive serial challenges to patents.” Id.; see also 157 Cong. Rec. S952 (2011)
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`(“significantly improving the inter partes review procedure, which will provide a
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`lower-cost alternative to civil litigation to challenge a patent throughout its
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`lifetime, while significantly reducing the capacity to mount harassing serial
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`challenges”). Congress made clear that post-grant review proceedings are “not to
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`be used as tools for harassment . . . through repeated litigation and administrative
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`attacks on the validity of a patent.” H.R. Rep. No. 112-98 at 48 (2011). Indeed,
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`Congress recognized that “[d]oing so would frustrate the purpose of the section as
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`providing quick and cost effective alternatives to litigation.” Id.; see also Butamax
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`Advanced Biofuels LLC v. Gevo, Inc., IPR2014-00581, Paper 8 at 12-13 (PTAB
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`Oct. 14, 2014) (“Allowing similar, serial challenges to the same patent, by the
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`same petitioner, risks harassment of patent owners and frustration of Congress's
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`intent in enacting the Leahy-Smith America Invents Act.” (citing H.R. Rep. No.
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`112-98 at 48)).
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`Congress “intend[ed] for the USPTO to address the potential abuses and
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`current inefficiencies under its expanded procedural authority,” and provided an
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`array of tools to curb abusive behavior. One such tool is 35 U.S.C. § 325(d), under
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`which the Board has discretion to deny institution of petitions or grounds for IPR
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`when the same or substantially the same prior art or arguments were presented in
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`another proceeding:
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`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented
`to the Office.
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`35 U.S.C. § 325(d) (entitled “Multiple Proceedings”). In exercising that discretion,
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`the Board should be “mindful of the guidance provided in” 37 C.F.R. § 42.1(b),
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`which provides that the regulations regarding post-grant proceedings are to be
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`“construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.” Samsung Elecs. Co. v. Rembrandt Wireless Technologies, LP,
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`IPR2015-00555, Paper 20 at 7 (PTAB June 19, 2015) (quoting 37 C.F.R. §
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`42.1(b)); see also ASUSTeK Computer Inc. v. Exotablet, Ltd., IPR2015-00041,
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`Paper 6 (PTAB Apr. 23, 2015) (denying institution of a second proceeding “to
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`ensure timely completion of inter partes review” in previously instituted
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`proceeding).
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`Moreover, the Board may apply estoppel considerations to support its
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`decision to decline review by considering whether any new prior art or arguments
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`raised in the second petition were known or available to the petitioner at the time
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`of filing the first petition. See Conopco, Inc. dba Unilever v. Procter & Gamble
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`Company, IPR2014-00628, Paper 23 at 5 (PTAB March 20, 2015). The denial of
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`subsequent petitions based on estoppel considerations “removes an incentive for
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`petitioners to hold back prior art for successive attacks, and protects patent owners
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`from multifarious attacks on the same patent claims.” Id. Additionally, 35 U.S.C.
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`§ 315(e)(1) mandates that upon a “final written decision” the petitioner “may not
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`request or maintain a proceeding before the Office with respect to that claim on
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`any ground that the petitioner raised or reasonably could have raised during that
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`inter partes review.”
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`Here, where Ford advances the exact same prior art and substantially the
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`same arguments that it has previously presented against many of the same claims,
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`the Board should exercise its discretion to deny institution.
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`1. The Petition is Ford’s eleventh shot at the ’634 patent
`First, the Board should reject Ford’s Petition to prevent Ford from taking
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`now its eleventh out of thirteen shots at the ’634 patent, advancing serial
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`challenges to all Challenged Claims, including two serial attacks on all Challenged
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`Claims. See Butamax, IPR2014-00581, Paper 8 at 12-13 (denying institution under
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`§ 325(d) because the obviousness challenges were “second bites at the apple”).
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`“Allowing similar, serial challenges to the same patent, by the same petitioner,
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`risks harassment of patent owners and frustration of Congress’s intent in enacting
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`the Leahy-Smith America Invents Act.” Id. (citing H.R. Rep. No. 112-98 at 48).
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`Ford itself admits that “IPR2015-00758 is also directed to the Challenged Claims.”
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`See Pet. at 2.
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`Ford is aware of the requirements of section 325(d), and addressed them in
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`separate petitions. For example, in its third petition regarding Paice’s U.S. Patent
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`No. 7,455,134, Ford devoted several pages to arguing that there was “no
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`redundancy under 35 U.S.C. § 325(d),” citing a number of excuses. Ford Motor
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`Company v. Paice LLC & The Abell Foundation, Inc., IPR2015-00767, Petition at
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`2-4. Recognizing that such arguments are not available to it here because, for
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`example, the Petition relies on the exact same prior art references that were
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`addressed in prior proceedings and includes serial challenges to all of the
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`Challenged Claims, Petitioner conspicuously ignores section 325(d). Indeed, Ford
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`cannot escape the underlying fact that the Petition is Ford’s eleventh shot (out of
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`thirteen) at the ’634 patent, including forty serial claim challenges. Further, the
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`Petition improperly uses Paice’s prior arguments as a roadmap to revise its
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`arguments on the same prior art of which it indisputably was aware. Moreover,
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`Ford’s serial challenge here is part of an overall strategy designed to harass Paice
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`and drive up costs.
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`Ford has filed four waves of IPR petitions attacking claims using various
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`combinations of prior art. Each wave is sufficiently spaced out in order for Ford to
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`gain a tactical advantage by using the Board’s decisions and Paice’s responses as a
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`roadmap to concoct new prior art combinations and arguments. For example, Ford
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`filed fourteen of its twenty-five IPR petitions in February 2015 after Paice
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`submitted its first wave of patent owner responses one month earlier in January
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`2015. Ford’s argument that it is filing multiple IPRs due to page limitations, see
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`Pet. at 1, does not excuse its practice of filing multiple waves of petitions over the
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`course of several months in order to gain a tactical advantage.
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`Moreover, the Petition is replete with serial claim challenges that are
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`burdensome on Paice. Indeed, Ford filed another IPR petition (IPR2015-00758) in
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`parallel with the Petition that challenges every single claim that is being challenged
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`in the Petition. Paice should not bear the burden of repeatedly responding to
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`Ford’s substantially overlapping petitions because Ford is unable to prepare a well-
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`grounded petition in the first instance.
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`If the Board accepts these types of cumulative, repetitive grounds, it will
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`encourage petitioners to engage in a pattern of serial IPR filing. Parties will file
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`petition after petition, making similar arguments and reshuffling the prior art in an
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`attempt to navigate patent owners’ arguments and the Board’s decisions. Such a
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`practice will overburden the Board with repetitive petitions. It is also prejudicial to
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`patent owners, who would have to continually defend against repetitive IPR
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`challenges.
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`The prejudice to Paice is particularly acute here in view of the other twenty
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`four petitions for IPR that Ford has filed. In addition to the forty serial claims filed
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`in this Petition, Ford has filed an additional 86 serial claim challenges in related
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`proceedings. In other words, on 131 total occasions Ford has challenged the same
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`claim more than once using more than one IPR petition. A table demonstrating the
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`serial nature of the instant Petition as well as Ford’s other petitions is included as
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`Exhibit 2901. Ford’s serial petitions appear to be directed at harassing Paice and
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`exerting financial pressure. Such harassment is contrary to the purpose of the AIA.
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`See H.R. Rep. No. 112-98 (“While this amendment is intended to remove current
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`disincentives to current administrative processes, the changes made by it are not to
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`be used as tools for harassment or a means to prevent market entry through
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`repeated litigation and administrative attacks on the validity of a patent. Doing so
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`would frustrate the purpose of the section as providing quick and cost effective
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`alternatives to litigation.”); MaxLinear, Inc. v. Cresta Technology Corp., IPR2015-
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`00591, Paper 9 (PTAB June 15, 2015) (denying institution of multiple proceedings
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`and noting that institution “would risk encouraging parties to engage in a pattern of
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`duplicative filings that harass patent owners”). The number of claims asserted in
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`litigation does not justify such as abusive pattern of filing serial claim challenges.
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`Ford argues that this Petition is necessary to address the large number of
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`dependent claims. Pet. at 1. Ford makes no effort, however, to explain i) why
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`these claims could not be addressed in one of the earlier proceedings, which were
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`based on the same prior art or ii) why Ford attacked all of the same claims in
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`IPR2015-00758.4 See Travelocity.com L.P. v. Cronos Techs., LLC, CBM2015-
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`00047, Paper 7 at 11-12 (PTAB June 15, 2015) (“Although Petitioner challenges
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`additional claims in the present Petition, Petitioner does not argue that these
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`additional claims could not have been challenged in the earlier Petition or explain
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`why the claims were not challenged in the earlier Petition.”). The Board should
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`not give Ford an eleventh shot.
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`2. Ford advances the exact same prior art and substantially the
`same arguments
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`As discussed above, under 35 U.S.C. § 325(d), the Board may reject a
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`petition where “the same or substantially the same prior art or arguments
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`previously were presented to the Office.” Here, Petitioner indisputably relies on
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`the same Severinsky ’970 reference that it presented in its first and second petitions
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`on the ’634 Patent (IPR2014-00904 and 2014-01416), and the same ’455 PCT
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`4 At the very least, the Board should exercise its discretion under section
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`325(d) to i) deny institution of claims 80, 114, 161, and 215, which Ford has
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`challenged previously and ii) deny institution of all serial claim challenges in either
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`the Instant Petition or IPR2015-00758.
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`Application reference that it relied on IPR2014-00568 (directed to the ’134 Patent).
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`“On that basis alone, [the Board] may exercise [its] discretion and decline to
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`institute” an IPR proceeding. Travelocity.com, CBM2015-00047, Paper 7 at 10.
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`Petitioner also advances substantially the same arguments that it previously
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`presented. The Board should reject Ford’s Petition because Ford advances the
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`same prior art and substantially the same arguments.
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`Specifically, between this Petition and IPR2015-00758, it is clear that Ford
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`is simply mixing and matching references (using the ‘455 PCT Application here
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`instead of Severinsky ’970) in the hopes of finding something that sticks, rather
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`than putting its best arguments forward in a single petition.5 See Pet. at 2
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`(“IPR2015-00758 is also directed to the Challenged Claims, but relies on
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`Severinsky ’970 as the base reference.”). Ford’s arguments with respect to the “a
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`ratio of maximum DC voltage. . . to [maximum] current supplied. . . is at least
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`2.5”, “at least … 500 volts”, and “no more than 150 amperes” claims are virtually
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`identical to the arguments made in IPR2015-00758. In IPR2015-00758, Ford
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`5 While IPR2015-00758 involves additional independent claims, the
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`Challenged Claims in this Petition are all challenged in IPR2015-00758 as well.
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`See Pet. at 2.
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`relies on the disclosure of Severinsky ’970 instead of the ‘455 PCT Application for
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`the base independent claim limitations (which are the same as those at issue here).
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`Ford provides no explanation for why it could not address these claim limitations
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`in a single petition, rather than burdening Patent Owner and the Board with a
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`second petition. Instead, it’s clear that Ford is simply mixing and matching
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`references (using the ‘455 PCT Application here instead of Severinsky ’970) in the
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`hopes of finding something that sticks. Ford should not be rewarded fo