Trials@uspto.gov
`571-272-7822
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`
`
`Paper 11
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`Entered: November 9, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00799
`Patent 7,237,634 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`DECISION TO INSTITUTE
`37 C.F.R. § 42.108
`
`

`
`IPR2015-00799
`Patent 7,237,634 B2
`
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide the threshold question of
`
`whether inter partes review of U.S. Patent No. 7,237,634 B2 (“the ’634
`patent”) should be instituted under 35 U.S.C. § 314(a). Specifically, Ford
`Motor Company (“Ford”) filed a Petition (“Pet.”) seeking inter partes
`review of claims 81–90, 115–124, 162–171, and 216–225 of the ’634 patent,
`which is owned by Paice LLC & The Abell Foundation, Inc. (collectively,
`“Paice”). Paper 2. Paice filed a Preliminary Response (“Prelim. Resp.”),
`requesting that we deny institution of inter partes review. Paper 10. After
`considering the Petition and Preliminary Response, we conclude that Ford
`has demonstrated a reasonable likelihood of prevailing with respect to the
`challenged claims. Accordingly, we authorize institution of an inter partes
`review of claims 81–90, 115–124, 162–171, and 216–225.
`II. BACKGROUND
`
`A.
`
`The ’634 Patent 1
`The ’634 patent describes a hybrid vehicle with an internal
`combustion engine, at least one electric motor, and a battery bank, all
`controlled by a microprocessor that directs the transfer of torque from the
`engine and/or motor to the drive wheels of the vehicle. Ex. 1961, 17:17–56,
`Fig. 4. The microprocessor “monitors the rate at which the operator
`depresses pedals [for acceleration and braking] as well as the degree to
`which [the pedals] are depressed.” Id. at 27:36–38. These “operator input
`commands” are provided to the microprocessor “as an indication that an
`
`1 The ’634 patent is involved in several co-pending district court actions,
`including Paice LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md.), filed
`Feb. 19, 2014, and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
`(D. Md.), filed Feb. 16, 2012. Pet. 3.
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`IPR2015-00799
`Patent 7,237,634 B2
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`amount of torque” from the engine “will shortly be required” to drive the
`vehicle. Id. at 27:26–27:57. The microprocessor then compares the
`vehicle’s torque requirement against a predefined setpoint and uses the
`results of the comparison to control the vehicle’s mode of operation, e.g.,
`straight-electric, engine-only, or hybrid. Id. at 40:16–49. For instance, the
`microprocessor may utilize a control strategy that runs the engine only in a
`range of high fuel efficiency, such as when the torque required to drive the
`vehicle, or road load (RL), reaches a setpoint (SP) of approximately 30% of
`the engine’s maximum torque output (MTO). Id. at 20:61–67, 37:24–44; see
`also id. at 13:64–65 (“the engine is never operated at less than 30% of MTO,
`and is thus never operated inefficiently”). Operating the engine in this
`manner maximizes fuel efficiency and reduces pollutant emissions of the
`vehicle. Id. at 15:55–58.
`B.
`The Challenged Claims
`
`
`The challenged claims all depend, directly or indirectly, from one of
`independent claims 80, 114, 161, or 215. These independent claims are not
`challenged by the instant Petition, but are the subject of a petition in a
`related case in which inter partes review has been instituted, namely,
`IPR2014-01416.
`
`Common to the challenged claims is that they all relate to the
`electrical current and/or voltage supplied by the battery to the motor. For
`example, many of the challenged claims recite limitations along the lines of
`“a maximum DC voltage supplied from said battery is at least approximately
`500 volts,” “a maximum current supplied from said battery is less than
`approximately 150 amperes,” and “a ratio of maximum DC voltage to
`maximum current supplied is at least 2.5.” In our analysis of the claims, we
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`IPR2015-00799
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`adopt the parties’ short-hand reference to these voltage and current-related
`limitations as the “electrical limitations.”
`
`Claims 81 through 83 are illustrative of the claims being challenged:
`
`81. The method of claim 80,
`
`wherein said operating the at least one electric motor
`comprises supplying power from a battery;
`
`wherein a ratio of maximum DC voltage to maximum
`current supplied is at least 2.5.
`82. The method of claim 81, wherein the maximum DC
`voltage is at least approximately 500 volts.
`83. The method of claim 81, wherein the maximum
`current is less than approximately 150 amperes.
`Ex. 1961, 65:34–42.
`C.
`The Asserted Grounds of Unpatentability
`
`Ford asserts a single ground of unpatentability, namely, that the
`challenged claims are unpatentable under 35 U.S.C. § 103 as obvious over
`the combined teachings of the ’455 PCT publication2 and Severinsky.3
`Pet. 5.
`
`
`
`
`
`
`
`III. ANALYSIS
`In this preliminary proceeding, we decide whether Ford has made a
`
`threshold showing, supported by sufficient evidence, of a reasonable
`likelihood that the challenged claims are unpatentable. As our decision is
`preliminary, we construe the claims only to the extent necessary without
`making a final determination until the parties have had a full and fair
`opportunity to present all evidence and argument in support of their case.
`
`
`2 PCT International Publication No. WO 00/15455, pub. Mar. 23, 2000
`(Ex. 1963).
`3 U.S. Patent No. 5,343,970, iss. Sept. 6, 1994 (Ex. 1964).
`
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`IPR2015-00799
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`A.
`
`Claim Construction
`For purposes of this decision, we need only construe the term
`“maximum DC voltage,” which is recited throughout the challenged claims.
`Ford argues that “maximum DC voltage” refers to a voltage under load as
`opposed to a nominal, open-circuit voltage, and, in support, points to the
`Specification’s discussion of battery voltage and peak electrical loading.
`Pet. 5–6 (citing Ex. 1961, 50:44–51:26). After reviewing the Specification,
`we agree with Ford that it supports a construction of “maximum DC
`voltage” that means “a voltage under load,” and not simply a nominal
`voltage.4
`B.
`Claims 81–90, 115–124, 162–171, and 216–225—
`Obviousness Over the ’455 PCT Publication and Severinsky
`
`Ford relies on the combination of the ’455 PCT publication and
`Severinsky as together teaching the limitations of the challenged claims.
`Pet. 21–48. To begin, Ford points out that the ’455 PCT publication
`includes a specification and figures that are substantially the same as the
`’634 patent. Id. at 21. As such, Ford argues that the ’455 PCT publication
`discloses all of the limitations of the challenged claims, except for the
`electrical limitations. Id. at 2, 21. In support, Ford provides a detailed
`analysis of how the ’455 PCT publication satisfies the general hybrid
`configuration and torque control strategy limitations of the unchallenged
`
`
`
`
`4 Paice does not dispute this construction. Paice proposed the same
`construction of “maximum DC voltage” in an earlier related proceeding.
`See Ford Motor Co. v. Paice LLC, IPR2014–00568 (PTAB July 11, 2014),
`Paper 8, 16–17.
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`independent base claims.5 Id. at 22–34. Ford then discusses how
`Severinsky teaches the electrical voltage and current ranges recited by the
`challenged claims (id. at 34–48), and explains why a skilled artisan would
`have been led to combine the teachings of Severinsky with those of the ’455
`PCT publication to arrive at the claimed invention (id. at 48–50). Based on
`the current record, we find Ford’s evidence and arguments persuasive of a
`reasonable likelihood that the challenged claims would have been obvious
`over the ’455 PCT publication and Severinsky. See Ex. 1962 ¶¶ 168–420.
`
`At this stage, Paice does not dispute Ford’s contentions that the
`combination of the ’455 PCT publication and Severinsky satisfy the
`limitations of the challenged claims. See Prelim. Resp. 6 (raising “only a
`limited number of deficiencies” with the Petition). Rather, Paice attacks
`Ford’s Petition on two other bases: first, the Petition “runs afoul of 35
`U.S.C. 325(d)” and is “procedurally improper”; and, second, the Petition is
`deficient because the ’455 PCT publication is “not prior art,” at least with
`respect to the claim limitations of “500 volts” and “150 amperes.” Id. We
`address each argument in order.
`
`1.
`Paice’s Discretionary and Procedural arguments
`Paice argues at length that Ford’s Petition should be dismissed under
`35 U.S.C. § 325(d) because it amounts to an “eleventh shot at the ’634
`patent” and is “designed to drive up costs and overburden Paice with
`multiple proceedings.” Prelim. Resp. 7; see also id. at 10–11 (arguing
`harassment). We are not persuaded. Although this latest Petition may assert
`
`5 Ford’s declarant, Dr. Jeffrey L. Stein, confirms the teachings of both the
`’455 PCT publication and Severinsky with respect to the basic hybrid
`configuration and functions recited by the challenged claims, i.e., the engine,
`motor, battery, and controller limitations. Ex. 1962 ¶¶ 159–167.
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`the same prior art as some of Ford’s earlier petitions, it uniquely challenges
`different dependent claims from a patent that includes over 300 claims in
`total. Thus, notwithstanding Paice’s arguments, we decline to exercise our
`discretion under 35 U.S.C. § 325(d) to deny the Petition.6
`
`We also have considered Paice’s argument that the Petition
`“improperly incorporates by reference” various arguments from the
`declaration of Dr. Jeffrey L. Stein. Prelim. Resp. 19–21. In general,
`arguments must not be incorporated by reference from one document into
`another document. 37 C.F.R. § 42.6(a)(3). Here, in challenging certain
`claims, Ford relies on Dr. Stein’s testimony as evidence of what a skilled
`artisan would have understood from reading Severinsky’s disclosure at the
`time of the claimed invention. See, e.g., Pet. 37, 42, 43 (citing Ex. 1962).
`We have reviewed those portions of Dr. Stein’s declaration, to which Paice
`directs us, and determine that there is nothing unusual about Dr. Stein’s
`declaration or the way in which Ford relies on it insofar as incorporation by
`reference is concerned, at least not to the extent that we would disregard the
`Petition in its entirety.
`
`
`6 Paice also faults Ford for using prior decisions from related inter partes
`reviews as “a roadmap to concoct new prior art combinations and
`arguments.” Prelim. Resp. 11–12. This argument is not persuasive. As
`long as a petitioner is not time-barred or otherwise estopped (see, e.g., 35
`U.S.C. § 315), it is not per se unlawful or inequitable for a party to rely on a
`prior decision to its benefit in order to wage additional challenges on the
`same patent where sufficient justification exists for the subsequent challenge
`and it does not amount to an abuse of process. Here, Ford provides
`sufficient justification for its multiple challenges of the ’634 patent. See
`Pet. 1 (explaining that the ’634 patent has 306 claims, Paice refuses to limit
`the number of asserted claims against Ford, and “Ford is filing several IPRs
`. . . to group the claims according to claimed subject matter”).
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`In addition, Paice does not persuade us that we should disregard the
`Petition on the basis of a purported “voluminous record.” Prelim. Resp. 21–
`23. Voluminous records are not per se improper. Here, Ford is challenging
`40 claims from a patent that includes over 300 claims. It would not be
`unusual, therefore, for the evidence in support of the unpatentability of the
`challenged claims to be more voluminous than would accompany a petition
`where far fewer claims are challenged. Thus, we do not perceive anything
`out of the ordinary about the volume of Ford’s submissions.
`2.
`The Prior Art Status of the ’455 PCT Publication
`
`
`Paice argues that the ’455 PCT publication is not prior art because the
`application that issued as the ’634 patent claims the benefit of applications
`with earlier filing dates than the publication date of the ’455 PCT
`publication. Prelim. Resp. 36–44. The application that issued as the ’634
`patent has a filing date of January 13, 2006, but claims the benefit of
`applications with earlier filing dates, namely, application No. 09/392,743
`(“the ’743 application”) having a filing date of September 9, 1999, and
`application No. 09/264,817 (“the ’817 application”) having a filing date of
`March 9, 1999. Ex. 1961. According to Paice, those earlier filed
`applications reasonably convey to a skilled artisan that the applicant had
`possession of the claimed electrical limitations by September 9, 1999, which
`is prior to the March 23, 2000 publication of the ’455 PCT publication.
`Prelim. Resp. 36–37, 44. We disagree.
`
`While the filing dates of the ’743 and ’817 applications are prior to
`the publication date of the ʼ455 PCT publication, we agree with Ford that the
`benefit of the previously-filed ’743 and ’817 applications does not extend to
`the challenged claims because the ’743 and ’817 applications fail to provide
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`written description support for the claimed electrical limitations. See Pet. 8–
`12. Instead, disclosure of the claimed electrical limitations appears not to
`have occurred until April 2, 2001, with the filing of continuation-in-part
`application No. 09/822,866 (“the ’866 application”). Id. at 9–12.
`
`Specifically, at this stage, we credit the testimony of Ford’s declarant,
`Dr. Stein, that a skilled artisan would not have understood the ’743 and ’817
`applications as evincing that the applicant had possession of the claimed
`electrical limitations.7 Ex. 1962 ¶¶ 114–129 (regarding the “at least 2.5”
`ratio), ¶¶ 130–143 (regarding the “maximum DC voltage” limitation), ¶¶
`144–152 (regarding the “maximum current” limitation). The ’743 and ’817
`applications’ reference to “relatively high voltage and relatively low current”
`is too imprecise a description to lead a skilled artisan to the specific voltage
`and current ranges of the challenged claims. Also, on the current record, the
`’817 application’s disclosure that maximum current “should be limited to
`30-50 amperes” would appear to lead a skilled artisan to conclude that the
`applicant did not have possession of an upper limit of “approximately 150
`
`
`7 We also find persuasive Ford’s argument that, in effect, the patentee
`admitted that the electrical limitations were new matter disclosed for the first
`time in the ’866 continuation-in-part application. Pet. 8–9, 12. Specifically,
`during prosecution of the ’634 patent, the patentee asserted that new claims
`“have been added reciting specifics of the preferred ranges of voltage and
`current, and their ratio” and that support for these new claims is found at
`“pages 89-91 of the application text,” which is the “Further Improvements
`According to the Continuation-in-part” section of the ’866 application.
`Ex. 1974, 311. Based on our initial review, that section of the ‘866
`application appears to describe the electrical limitations in a manner not
`previously described in either of the ’817 or ’743 applications, including the
`requirements of “a ratio of at least 2.5:1 of the battery voltage to the peak
`current,” “500 V under load,” and “no more than about 150 A.” See
`Ex. 1962 ¶ 100.
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`amperes,” as claimed. Id. ¶¶ 144–149. Thus, at this juncture, we find
`persuasive Ford’s argument, with supporting evidence, that the claimed
`electrical limitations are only entitled to the benefit of the April 2, 2001
`priority date of the ’866 continuation-in-part application and not the priority
`dates of the earlier-filed ’734 and ’814 applications. As such, on the current
`record, we determine that the ’455 PCT publication qualifies as prior art
`over the priority dates of the ’634 patent.
`
`Paice also argues that the ’455 PCT publication is not prior art
`because the ’634 patent incorporates by reference various portions of the
`earlier-in-time Severinsky, which, according to Paice, provide written
`description support for the claimed electrical limitations. Prelim. Resp. 23–
`36. “Incorporation by reference provides a method for integrating material
`from various documents into a host document . . . by citing such material in
`a manner that makes clear that the material is effectively part of the host
`document as if it were explicitly contained therein.” Zenon Environmental,
`Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378–79 (Fed. Cir. 2007) (citations
`omitted). But, to incorporate material by reference properly, “the host
`document must identify with detailed particularity what specific material it
`incorporates and clearly indicate where that material is found in the various
`documents.” Id. (emphasis in original; citations omitted).
`
`Here, Paice relies on several passages in the ’634 patent as support for
`the incorporation by reference of Severinsky (Prelim. Resp. 24–25), for
`example,
`This application discloses a number of improvements over and
`enhancements to the hybrid vehicles disclosed in U.S. Pat. No.
`5,343,970 (“the ’970 Patent”), to one of the present inventors,
`which is incorporated herein by this reference. Where
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`differences are not mentioned, it is to be understood that the
`specifics of the vehicle design shown in the ’970 patent are
`applicable to the vehicles shown herein as well.
`* * *
`The hybrid drive train shown in the ’970 patent has many
`advantages with respect to the prior art which are retained by
`the present invention.
`
`
`
`
`
`* * *
`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.
`Ex. 1961, 10:40–47, 11:14–16, 33:35–38, respectively (emphases added).
`
`We are not persuaded by Paice’s assertions that these passages
`incorporate by reference the teachings of maximum voltage and maximum
`current found in Severinsky. Rather, in our view, each of these passages
`relied upon by Paice amounts to nothing more than the wholesale
`incorporation of Severinsky into the ’634 patent, without any specification
`of exactly which improvements, advantages, or functions from Severinsky
`apply to corresponding features of the ’634 patent. That type of
`incorporation by reference falls short of the Federal Circuit’s mandate that
`the host document identify the incorporated material “with detailed
`particularity.” Vague and sweeping assertions of incorporating material by
`reference neither comply with the written description requirement of 35
`U.S.C. § 112, nor reasonably inform a skilled artisan of what is being
`incorporated and where it may be found. Given the ’634 patent’s lack of a
`clear indication of exactly what teachings from Severinsky a skilled artisan
`would have understood as being incorporated into the’634 patent, we are not
`persuaded at this juncture that the ’634 patent’s general reference to the
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`“number of improvements,” “many advantages,” and “similar functions” of
`Severinsky, without more particularity, amounts to a proper incorporation by
`reference, nor does it demonstrate that the applicant was in possession of the
`specific material in the challenged claims, i.e. the claimed electrical
`limitations.8
`
`IV. CONCLUSION
`Based on our review of the evidence and arguments presented in the
`
`Petition and Preliminary Response, we determine that Ford has
`demonstrated a reasonable likelihood of succeeding in proving that the
`challenged claims are unpatentable for obviousness over the ’455 PCT
`publication and Severinsky. As such, we institute inter partes review of the
`challenged claims. This institution decision, however, should not be
`construed as a final determination.
`V. ORDER
`Accordingly, it is hereby:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 81–90, 115–124, 162–171, and 216–225 of the ’634 patent
`is instituted on the grounds of obviousness under 35 U.S.C. § 103; and
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4(b), inter partes review of the ’634 patent shall commence on
`the entry date of this Order, and notice is hereby given of the institution of a
`trial.
`
`
`8 Also, the one passage of the ’634 patent that points to a specific amperage
`discussed in Severinsky does not help Paice’s argument because it expressly
`provides that the maximum current “should be limited to 30-50 amperes,”
`whereas the claimed electrical limitations expand the range vastly higher,
`i.e., up to “approximately 150 amperes.” Ex. 1961, 34:14–18.
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`Patent 7,237,634 B2
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`
`FOR PETITIONER:
`Frank A. Angileri
`Sangeeta G. Shah
`Michael D. Cushion
`Todd W. Dishman
`BROOKS KUSHMAN P.C.
`FPGP0104IPR13@brookskushman.com
`fangileri@brookskushman.com
`sshah@brookskushman.com
`mcushion@brookskushman.com
`tdishman@brookskushman.com
`Lissi Mojica
`Kevin Greenleaf
`DENTONS US LLP
`iptdocketchi@dentons.com
`
`
`
`
`
`FOR PATENT OWNER:
`Timothy W. Riffe
`Kevin E. Greene
`Ruffin B. Cordell
`Linda L. Kordziel
`Brian J. Livedalen
`FISH & RICHARDSON P.C.
`IPR36351-0015IPA@fr.com
`riffe@fr.com
`
`13