throbber
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 IPR2015-00800
`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 IPR2015-00800
`Attorney Docket No: 36351-0015IPC
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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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`Background of the ’634 Patent .............................................................. 2 
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`Claim Construction ............................................................................... 5 
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`“setpoint (SP)” ............................................................................ 6 
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`The Challenged Claims Require a Comparison of Road Load to
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`Setpoint and MTO ............................................................................... 11 
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`III.  ARGUMENT ................................................................................................. 13 
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`A. 
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`B. 
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`C. 
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`Ford’s Conclusory Petition is Deficient Under 35 U.S.C. § 103(a) ... 13 
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`Ford Will Be Estopped from Maintaining its Challenges to Claims
`161 and 215 ......................................................................................... 15 
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`The Bumby References Fail to Disclose Using Road Load and a
`Setpoint to Determine When to Operate the Engine ........................... 15 
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`The Petition Fails to Establish that the Bumby References
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`Compare Road Load to a Setpoint ...................................................... 16 
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`Ford’s Discussion of Torque at the Drive Wheels is Misleading
`19 
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`Ford and Dr. Davis’s Description of the Sub-optimal Control
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`Algorithm of Bumby II and Bumby III is Inaccurate ......................... 23 
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`The Sub-optimal Control Algorithm of Bumby II and Bumby
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`III is Fundamentally Different from the Claimed Control Strategy ... 29 
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`D. 
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`Ford Fails to Establish a Motivation to Combine ............................... 32 
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` 
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`The Discussion in Ford’s Petition is Insufficient ..................... 33 
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`Bumby IV and Bumby V Teach Away from Bumby II and
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`Bumby III ............................................................................................ 39 
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`IV.  CONCLUSION .............................................................................................. 42 
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) .......................................................................... 10
`
`Braintree Laboratories, Inc. v. Novel Laboratories, Inc.,
`749 F.3d 1349 (Fed. Cir. 2014) .......................................................................... 35
`
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999) ...................................................................... 6, 10
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`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 5
`
`Fuji Photo Film Co. v. Int'l Trade Comm’n,
`386 F.3d 1095 (Fed. Cir. 2004) .......................................................................... 10
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 14
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`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 36
`
`KSR lnt’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 14
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .............................................................. 5, 6, 9, 13
`
`In re Nilssen,
`837 F.2d 1098 (Fed. Cir. 1987) .......................................................................... 33
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................ 6, 10, 13
`
`Pfizer, Inc. v. Apotex, Inc.,
`480 F.3d 1348 (Fed. Cir. 2007) .......................................................................... 35
`
`Smiths Indus. Med. Sys., Inc. v. Vital Signs, Inc.,
`183 F.3d 1347 (Fed. Cir. 1999) .......................................................................... 33
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`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ........................................................................ 5, 6
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`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997) .......................................................................... 11
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`In re Vaidyanathan,
`381 Fed. Appx. 985 (Fed. Cir. 2010) .................................................................. 10
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`Statutes
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`35 U.S.C. § 103 .............................................................................................. 1, 13, 14
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`35 U.S.C. § 311 .......................................................................................................... 1
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`35 U.S.C. § 315 ........................................................................................................ 15
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`35 U.S.C. § 322 ........................................................................................................ 13
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`Other Authorities
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`37 C.F.R. § 42.22 ..................................................................................................... 13
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`37 C.F.R. § 42.100 ........................................................................................... 1, 5, 15
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`37 C.F.R. § 42.120 ..................................................................................................... 1
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`EXHIBITS
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`Exhibit Name
`Table of Ford’s IPR Petitions
`Appendix A (Jan. 15, 2014)
`Declaration of Daniel A. Tishman in Support of
`Patent Owners’ Motion for Pro Hac Vice Admission
`Declaration of Neil Hannemann
`Neil Hannemann CV
`Gregory Davis Deposition Transcript (Jan. 13, 2015)
`(IPR2014-00579)
`Bosch Handbook, 4th Edition (excerpts)
`Gregory Davis Deposition Transcript (May 8, 2015)
`(IPR2014-00579)
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`v
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`Exhibit Number
`Ex. 2901
`Ex. 2902
`Ex. 2903
`Ex. 2904
`Ex. 2905
`Ex. 2906
`Ex. 2907
`Ex. 2908
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`Patent No. 7,237,634
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`Case IPR2015-00800
`Attorney Docket No: 36351-0015IPC
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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 80, 91, 92, 95, 96,
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`99, 100, 102, 106, 114, 125, 126, 129, 132, 133, 135, 161, 172, 215, 226, 230, 233,
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`and 234 (“the challenged claims”) as obvious under 35 U.S.C. § 103. Following
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`Paice’s preliminary response, filed on August 10, 2015, the Board instituted review
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`of claims 161, 172, 215, 226, 230, and 234 based on one ground of obviousness
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`over J.R. Bumby et al., Computer Modelling of the Automotive Energy
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`Requirements for Internal Combustion Engine and Battery Electric- Powered
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`Vehicles, IEE PROC., v. 132, pt. A, no. 5, 265-279 (“Bumby I”), J.R. Bumby and
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`I. Forster, Optimisation and Control of a Hybrid Electric Car, IEE PROC., v. 134,
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`pt. D, no. 6, 373-387 (“Bumby II”), J.R. Bumby and I. Forster, A Hybrid Internal
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`Combustion Engine/Battery Electric Passenger Car for Petroleum Displacement,
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`PROC. INST.MECH. ENGRS., v. 202, no. D1, 51-64 (“Bumby III”), J.R. Bumby
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`and P.W. Masding, A Test-Bed Facility for Hybrid ICEngine/ Battery-Electric
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`Road Vehicle Drive Trains, TRANS. INST.MEAS. & CONT., v. 10, no. 2, 87-97
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`(“Bumby IV”), J.R. Bumby and P.W. Masding, Integrated Microprocessor Control
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`of a Hybrid I.C. Engine/Battery- Electric Automotive Power Train, TRANS.
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`INST.MEAS. & CONT., v. 12, no. 3, 128-146 (“Bumby V”), and (although not
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`relying on its disclosure) Masding, Philip Wilson, Some Drive Train Control
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`Problems in Hybrid I.C. Engine/Battery Electric Vehicles, Durham theses, Durham
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`University (“Masding”), and rejected Ford’s Petition with respect to claims 80, 91,
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`92, 95, 96, 99, 100, 102, 106, 114, 125, 126, 129, 132, 133, 135, and 233. See Inst.
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`Dec. at 31-32. All challenged claims are patentable for the reasons set forth herein.
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`In particular, Ford’s Petition is defective because it fails to establish a
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`rationale to combine the five Bumby references, and because, even if combined,
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`the Bumby references do not teach a person of ordinary skill in the art all of the
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`claimed limitations, including the road load and setpoint limitations.
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`II. THE ’634 PATENT
`A. Background of the ’634 Patent
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`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. 1901 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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`B. Claim Construction
`In IPR proceedings, the Board applies the “broadest reasonable
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`interpretation” standard, which mandates that “[a] claim in an unexpired patent
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`shall be given its broadest reasonable construction in light of the specification of
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`the patent in which it appears.” 37 C.F.R. § 42.100(b); see also In re Cuozzo
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`Speed Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015). The Federal Circuit has
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`recognized, however, that that standard requires that the claims must be read in
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`light of the specification as it would be interpreted by one of ordinary skill in the
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`art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). In Microsoft
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`Corp. v. Proxyconn, Inc., the Federal Circuit explained that the broadest reasonable
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`interpretation does not mean that “the Board may construe the claims during IPR
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`so broadly that its constructions are unreasonable under general claim
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`constructions principles,” and that the construction must not be “divorced from the
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`specification and the record evidence” and inconsistent with “the one that those
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`skilled in the art would reach.” 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In
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`re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011); In re Cortright, 165 F.3d
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`1353, 1358 (Fed. Cir. 1999)). “A construction that is ‘unreasonably broad’ and
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`which does not ‘reasonably reflect the plain language and disclosure’ will not pass
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`muster.” Microsoft, 789 F.3d at 1298 (quoting Suitco, 603 F.3d at 1260).
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`“setpoint (SP)”
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`A “setpoint” is “a definite, but potentially variable value at which a
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`transition between operating modes may occur.” 1 In its Institution Decision, the
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`1 As the Board is aware, the U.S. District Court for the Eastern District of
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`Texas and the U.S. District Court for the District of Maryland both have construed
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`the term “setpoint (SP)” to mean “a definite, but potentially variable value at which
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`a transition between operating modes may occur.” See Paice LLC v. Toyota Motor
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`Board construed “setpoint” as a “predetermined torque value that may or may not
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`be reset.” Paice respectfully requests that the Board reconsider its construction as
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`it is unreasonably broad and does not reasonably reflect the disclosure of the ’634
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`patent. Instead, the Board should adopt Paice’s construction (“a definite, but
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`potentially variable value at which a transition between operating modes may
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`occur”).
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`The claims and the specification of the ’634 patent make clear that a “setpoint”
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`is not simply a numerical value divorced from the context of the rest of the control
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`system. Rather, “setpoint” serves the crucial function of marking the transition from
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`one claimed mode to another, and in particular, the transition from propelling the
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`vehicle with the motor to propelling the vehicle with the engine. See, e.g., Ex. 1901
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`at 40:41-49.
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`For example, in claim 161, the “setpoint” marks the transition between a mode
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`in which only the motor propels the vehicle, to modes in which the engine also can
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`Corp., Case No. 2:07-cv-180 (E.D. Tex. Dec. 5, 2008) (Ex. 1912 at 204); Paice
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`LLC v. Hyundai Motor Corp., Case No. 2:12-cv-499 (D. Md. Jul. 24, 2014) (Ex.
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`1913 at 104) (“The Plaintiffs’ proposed construction of ‘setpoint’ as ‘a definite, but
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`potentially variable value at which a transition between operating modes may
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`occur,’ is consistent with the language of the claims and the intrinsic evidence.”).
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`be used to propel the vehicle or charge the battery. See id. at claim 161.
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`Additionally, the specification unambiguously defines “setpoint” as synonymous
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`with a “transition point” between modes:
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`[I]n the example of the inventive control strategy discussed above, it is
`repeatedly stated that the transition from low-speed operation to
`highway cruising occurs when road load is equal to 30% of MTO. This
`setpoint, referred to in the appended claims as “SP”, and sometimes
`hereinafter as the transition point (i.e., between operation in modes I
`and IV) is obviously arbitrary and can vary substantially, e.g., between
`30-50% of MTO, within the scope of the invention.
`Id. at 40:41-49; see also id. at 40:16-26 (“the microprocessor tests sensed and
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`calculated values for system variables, such as the vehicle’s instantaneous torque
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`requirement, i.e., the ‘road load’ RL . . . against setpoints, and uses the results of the
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`comparisons to control the mode of vehicle operation.”); 40:63-65 (“For example,
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`in response to recognition of a regular pattern as above, the transition point might be
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`adjusted to 60% of MTO”); 41:4-8 (“It is also within the scope of the invention to
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`make the setpoint SP to which the road load is compared to control the transition
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`from mode I to mode IV somewhat ‘fuzzy’ [sic], so that SP may vary from one
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`comparison of road load to MTO to the next depending on other variables”); 41:59-
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`63 (“FIG. 9 thus shows the main decision points of the control program run by the
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`microprocessor, with the transition point between mode I, low-speed operation, and
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`mode IV highway cruising, set at a road load equal to 30% of MTO”); 44:24-31
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`(“Further, as noted above the transition points between modes I, IV, and V in
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`particular may vary in accordance with the operator's commands…”).
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`The “setpoint” marks the amount of “road load” at which the claimed control
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`system actively changes the vehicle from one mode to another (e.g. from motor
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`propulsion to engine propulsion). The challenged patent recognizes the significant
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`efficiencies to be gained by transitioning between motor propulsion to engine
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`propulsion in response to “road load.” See, e.g., id. at 13: 44-51 (“By comparison .
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`. . the vehicle’s operating mode—that is, the selection of the source of torque needed
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`to propel the vehicle—is determined based on the amount of torque actually
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`required. In this way the proper combination of engine, traction motor, and starting
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`motor is always available. This apparently simple point has evidently been missed
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`entirely by the art.”), 13:52-14:2 (noting that prior art references using vehicle speed
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`to transition between modes “inherently operate the engine under less efficient
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`conditions”).
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`The Board’s initial construction of “setpoint” as a “predetermined torque
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`value that may or may not be reset,” see Inst. Dec. at 9, is incorrect and unreasonably
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`broad because it fails to recognize that “setpoint” represents a point at which a
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`transition between different operating modes may occur. The broadening
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`construction is “divorced from the specification and the record evidence” and
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`inconsistent with “the one that those skilled in the art would reach.” See Microsoft,
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`789 F.3d at 1298 (quoting NTP, 654 F.3d at 1288; Cortright, 165 F.3d at 1358). In
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`essence, the construction covers hybrid vehicle systems where transitions between
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`modes never occur—a clear error that is fundamentally contrary to the specification
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`of the ’634 patent. See Fuji Photo Film Co. v. Int'l Trade Comm’n, 386 F.3d 1095,
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`1098 (Fed. Cir. 2004) (claim should not be given overly broad construction that is
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`inconsistent with how claim term is used in the specification). The Board’s
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`“broadest reasonable interpretation” must be reasonable, and must be in conformity
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`with the invention as described in the specification. In re Vaidyanathan, 381 Fed.
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`Appx. 985, 995-96 (Fed. Cir. 2010); see also In re Abbott Diabetes Care Inc., 696
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`F.3d 1142, 1149 (Fed. Cir. 2012) (holding that Board’s construction of
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`“electrochemical sensor” was “unreasonable and inconsistent with the language of
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`the claims and the specification”).
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`Additionally, as set forth in Paice’s preliminary response, “setpoint” should
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`not be limited to a torque value—the specification makes clear that a setpoint is not
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`limited to a torque value and in fact could also be a measure of the state of charge of
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`the battery.
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`[T]he microprocessor tests sensed and calculated values for system
`variables, such as the vehicle's instantaneous torque requirement, i.e.,
`the “road load” RL, the engine's instantaneous torque output ITO, both
`being expressed as a percentage of the engine's maximum torque output
`MTO, and the state of charge of the battery bank BSC, expressed as a
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`percentage of its full charge, against setpoints, and uses the results of
`the comparisons to control the mode of vehicle operation.
`Ex. 1901 at 40:16-26 (emphasis added). The Board is correct that claim language
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`may provide guidance as to the meaning of particular claim terms, see Inst. Dec. at
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`7; however, to the extent that the challenged claims make clear that setpoint relates
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`to a torque value, then it is unnecessary to graft this limitation onto the claims. See
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`U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim
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`construction . . . is not an obligatory exercise in redundancy.”).
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`Therefore, Paice respectfully requests that the Board reconsider its
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`construction and adopt Paice’s construction of “setpoint” to make clear that it is a
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`value “at which a transition between operating modes may occur.”
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` The Challenged Claims Require a Comparison of Road Load
`to Setpoint and MTO
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`Each of the challenged claims as properly construed requires a comparison of
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`road load to setpoint and MTO. See Ex. 1901 at claim 215 (“operating at least one
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`electric motor to propel the hybrid vehicle when the RL required to do so is less than
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`a setpoint (SP); operating an internal combustion engine of the hybrid vehicle to
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`propel the hybrid vehicle when the RL required to do so is between the SP and a
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`maximum torque output (MTO) of the engine, … operating both the at least one
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`electric motor and the engine to propel the hybrid vehicle when the torque RL
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`required to do so is more than the MTO”); see also claim 161. Because Ford appears
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`11
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`Patent No. 7,237,634
`Patent Owner’s Response
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`
`
`
`Case IPR2015-00800
`Attorney Docket No: 36351-0015IPC
`
`intent on interpreting these limitations in an unreasonably broad manner to remove
`
`the comparison requirement and essentially capture any system where a torque value
`
`is above/below a threshold either by coincidence or otherwise, the Board should
`
`construe these limitations to make clear that the claimed controller (or method)
`
`selects operating modes based on a comparison of RL to SP or MTO.
`
`Specifically, the Board should construe “operating at least one [first] electric
`
`motor to propel the hybrid vehicle when the RL required to do so is less than a [the]
`
`setpoint (SP)” as “operating at least one [first] electric motor to propel the hybrid
`
`vehicle when a comparison of the RL to a setpoint (SP) results in a determination
`
`that the RL required to do so is less than a [the] SP.” Second, the Board should
`
`construe “operating an internal combustion engine of the hybrid vehicle to propel
`
`the hybrid vehicle when the RL required to do so is between the SP and a MTO” as
`
`“operating an internal combustion engine of the hybrid vehicle to propel the hybrid
`
`vehicle when a comparison of the RL to a SP and a MTO results in a determination
`
`that the RL required to do so is between the SP and a MTO of the engine.” Third,
`
`the Board should construe “operating both the at least one [first] electric motor and
`
`the engine to propel the hybrid vehicle when the torque RL required to do so is more
`
`than the MTO” as “operating both the at least one [first] electric motor and the engine
`
`to propel the hybrid vehicle when a comparison of the RL to a SP and a MTO results
`
`in a determination that the torque RL required to do so is more than the MTO.” The
`
`12
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`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00800
`Attorney Docket No: 36351-0015IPC
`
`intrinsic evidence makes clear that the invention is directed to a control algorithm
`
`for selecting operating modes based on the comparison of road load to SP and MTO
`
`(see Section II.B.1.) such that any other construction would be “divorced from the
`
`specification and the record evidence” and inconsistent with “the one that those
`
`skilled in the art would reach.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
`
`1298 (Fed. Cir. 2015) (quoting NTP, 654 F.3d at 1288.
`
`III. ARGUMENT
`The instituted ground of unpatentability should be denied because the
`
`claimed invention is novel and nonobvious. In particular, Ford fails to provide an
`
`adequate obviousness analysis under 35 U.S.C. § 103(a). Moreover, the proposed
`
`combination of the Bumby references fails to disclose or render obvious the “road
`
`load,” and “setpoint” limitations.
`
`Ford’s Conclusory Petition is Deficient Under 35 U.S.C. § 103(a)
`
`A.
`As a preliminary matter, the instituted ground should be denied because
`
`Ford does not perform an adequate obviousness analysis in its Petition, thus falling
`
`short of the requirements of 35 U.S.C. § 103(a), 35 U.S.C. § 322, and 37 C.F.R. §
`
`42.22(a). With respect to instituted Ground 2, Ford fails to identify the differences
`
`between the Bumby references and independent claims 161 and 215. As a result,
`
`Ground 2 fails to establish that “the differences between the subject matter sought
`
`to be patented and the prior art are such that the subject matter as a whole would
`
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`Patent No. 7,237,634
`Patent Owner’s Response
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`
`
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`Case IPR2015-00800
`Attorney Docket No: 36351-0015IPC
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`have been obvious at the time the invention was made to a person of ordinary skill
`
`in the art to which the subject matter pertains.” 35 U.S.C. § 103(a); see also KSR
`
`lnt’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (explaining that “the scope and
`
`content of the prior art are to be determined; differences between the prior art and
`
`the claims at issue are to be ascertained; and the level of ordinary skill in the
`
`pertinent art resolved” (quoting Graham v. John Deere Co., 383 U.S. 1, 17-18
`
`(1966))).
`
`Specifically, although Ground 2 is the only instituted ground, Ford’s Petition
`
`merely refers back to Ground 1 to support Ground 2. With respect to Ground 1,
`
`Ford claims to be performing an obviousness analysis but never identifies what
`
`claim elements are missing in any particular Bumby reference or the Masding
`
`Thesis, and why such claim elements would have been obvious. Instead, Ford
`
`seems to argue that the “Durham Project” discloses each and every claim element
`
`but curiously makes multiple assertions that a person of ordinary skill in the art
`
`would have “understood” that those claim elements are present. See, e.g., Pet. at
`
`30 n. 3 (“A POSA would have understood the “engine full throttle torque” curve as
`
`being the maximum torque output (MTO) curve of the engine.” (citing Ex. 1903 at
`
`¶ 276.)); id. at 46 (“For example, as annotated below, a POSA would have
`
`understood that a rapid increase in required torque, at a given speed , and fixed
`
`gear, would cause a corresponding rapid transition in the torque required to propel
`
`14
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`Patent No. 7,237,634
`Patent Owner’s Response
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`
`
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`Case IPR2015-00800
`Attorney Docket No: 36351-0015IPC
`
`the vehicle (road load).”). Ford’s failure to perform a proper obviousness analysis
`
`is made worse by the incorrect assumption of the existence of an aggregate
`
`“Durham Project,” causing Ford to fail to explain which specific reference
`
`discloses each limitation and the difference between the specific reference and the
`
`claim elements.
`
`Ford’s conclusory Petition is insufficient to establish obviousness.
`
`B.
`
`Ford Will Be Estopped from Maintaining its Challenges to Claims
`161 and 215
`
`Ford will be estopped from maintaining its challenges to claims 161 and
`
`215, pursuant to 35 U.S.C. § 315(e)(1). Under section 315(e)(1), upon a “final
`
`written decision” Ford “may not request or maintain a proceeding before the Office
`
`with respect to that claim on any ground that the petitioner raised or reasonably
`
`could have raised during that inter partes review.” Specifically, the Board will
`
`enter a final written decision in IPR2014-01416 with respect to claims 161 and 215
`
`(and other, non-instituted claims) on or before March 12, 2016, approximately
`
`seven months before the deadline for a final written decision in this case. See 37
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`C.F.R. § 42.100(c). Thus, the Board should reject the Petition with respect to those
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`claims.
`
`C. The Bumby References Fail to Disclose Using Road Load and a
`Setpoint to Determine When to Operate the Engine
`
`The sole instituted ground should be denied because the Bumby references do
`
`15
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`Patent No. 7,237,634
`Patent Owner’s Response
`
`
`
`
`Case IPR2015-00800
`Attorney Docket No: 36351-0015IPC
`
`not disclose or render obvious using road load and a setpoint to determine when to
`
`select the claimed operating modes. For example, all of the challenged claims
`
`require using road load compared to a setpoint to determine when to operate the
`
`internal combustion engine to propel the hybrid vehicle and when to operate one or
`
`more electric motors. However, the Bumby references do not disclose this novel
`
`control strategy. Instead, the various Bumby references disclose a control system
`
`that uses demand power set by bare pedal position and a cumbersome gear ratio
`
`selection system to make mode changing decisions. This control strategy is entirely
`
`different from that claimed in the ’634 patent.
`
` The Petition Fails to Establish that the Bumby References
`Compare Road Load to a Setpoint
`
`The Bumby references do not disclose “operating an internal combustion
`
`engine of the hybrid vehicle to propel the hybrid vehicle when the RL required to do
`
`so is between the SP and a maximum torque output (MTO) of the engine,” or other
`
`limitations requiring road load and setpoint, as required by claims 161, 215, and all
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`claims depending therefrom (which includes all instituted claims). Ex. 2904 at §
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`IX.A. Instead, Bumby II and Bumby III (on which Ford principally relies) dis

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