Paper 45
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`Entered: September 28, 2015
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`Trials@uspto.gov
`571-272-7822
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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 IPR2014-00579
`Patent 7,104,347 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I. INTRODUCTION
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`Ford Motor Company (“Ford”) filed a Petition (“Pet.”) for inter partes
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`review of claims 1, 7, 8, 18, 21, 23, and 37 of U.S. Patent No. 7,104,347 B2
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`(“the ’347 patent”), which is owned by Paice LLC & The Abell Foundation,
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`Inc. (collectively, “Paice”). In a preliminary proceeding, we determined
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`there is a reasonable likelihood that the challenged claims are unpatentable
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`under 35 U.S.C. § 103, and instituted trial (“Dec. to Inst.”). In support of
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`patentability, Paice filed a Patent Owner Response (“PO Resp.”), and Ford
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`followed with a Reply (“Reply”). After hearing oral argument from both
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`parties,1 and pursuant to our jurisdiction under 35 U.S.C. § 6(c), we
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`conclude Ford has proven, by a preponderance of the evidence, that all of the
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`challenged claims are unpatentable.
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`II. BACKGROUND
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`The ’347 patent 2
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`The ’347 patent describes a hybrid vehicle with an internal
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`A.
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`
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`combustion engine, two electric motors (a starter motor and a traction
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`motor), and a battery bank, all controlled by a microprocessor that directs
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`the transfer of torque from the engine and traction motor to the drive wheels
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`of the vehicle. Ex. 1101, 17:5–45, Fig. 4. The microprocessor features an
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`engine control strategy that runs the engine only under conditions of high
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`efficiency, typically when the vehicle’s instantaneous torque requirements
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`(i.e., the amount of torque required to propel the vehicle, or “road load”) is
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`1 A transcript (“Tr.”) has been entered into the record. Paper 44.
`2 The ’347 patent is also the subject of several co-pending cases, including
`Paice LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md.), filed Feb. 19,
`2014 (Pet. 1), and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
`(D. Md.), filed Feb. 16, 2012 (PO Resp. 6).
`
`2
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`at least equal to 30% of the engine’s maximum torque output (“MTO”)
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`capability. Id. at 20:52–60, 35:5–14; see also id. at 13:47–61 (“the engine is
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`never operated at less than 30% of MTO, and is thus never operated
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`inefficiently”).
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`
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`Running the engine only when it is efficient to do so leads to
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`improved fuel economy and reduced emissions. Id. at 13:47–51. To achieve
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`such efficiency, the hybrid vehicle includes various operating modes that
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`depend on the vehicle’s torque requirements, the battery’s state of charge,
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`and other operating parameters. Id. at 19:53–55. For example, the hybrid
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`vehicle may operate in: (1) an all-electric mode, where only the traction
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`motor provides the torque to propel the vehicle and operation of the engine
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`would be inefficient (i.e., stop-and-go city driving); (2) an engine-only
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`mode, where only the engine provides the torque to propel the vehicle and
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`the engine would run at an efficient level (i.e., highway cruising); (3) a dual-
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`operation mode, where the traction motor provides additional torque to
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`propel the vehicle beyond that already provided by the engine and the torque
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`required to propel the vehicle exceeds the maximum torque output of the
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`engine (i.e., while accelerating, passing, and climbing hills); and (4) a
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`battery recharge mode where the engine operates a generator to recharge the
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`battery while the traction motor drives the vehicle. Id. at 35:66–36:58,
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`37:26–38:55.
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`B.
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`The challenged claims
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`
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`Ford challenges the patentability of claims 1, 7, 8, 18, 21, 23, and 37.
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`Pet. 3. Of the challenged claims, claims 1 and 23 are independent. Claim 1
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`is directed to a “hybrid vehicle” (Ex. 1101, 58:13), while claim 23 is
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`directed to a “method of control” of a hybrid vehicle (id. at 60:22). Each of
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`3
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`the independent claims recites that the engine is employed when it can
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`produce torque “efficiently,” which claim 1 describes as when the torque
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`required to propel the vehicle is “at least equal to a setpoint (SP) [but]
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`substantially less than the maximum torque output (MTO)” of the engine (id.
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`at 58:29–37), and claim 23 describes as when the torque required to propel
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`the vehicle is “between a lower level SP and a maximum torque output
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`MTO” (id. at 60:23–42).
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`
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`Claim 1 is illustrative of the challenged claims:
`
`1.
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`A hybrid vehicle, comprising:
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`an internal combustion engine controllably coupled to
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`road wheels of said vehicle;
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`
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`a first electric motor connected to said engine [a]nd
`operable to start the engine responsive to a control signal;
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`
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`a second electric motor connected to road wheels of said
`vehicle, and operable as a motor, to apply torque to said wheels
`to propel said vehicle, and as a generator, for accepting torque
`from at least said wheels for generating current;
`
`
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`a battery, for providing current to said motors and
`accepting charging current from at least said second motor; and
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`a controller for controlling the flow of electrical and
`mechanical power between said engine, first and second
`motors, and wheels,
`
`
`
`wherein said controller starts and operates said engine
`when torque require[d] to be produced by said engine to propel
`the vehicle and/or to drive either one or both said electric
`motor(s) to charge said battery is at least equal to a setpoint
`(SP) above which said engine torque is efficiently produced,
`and wherein the torque produced by said engine when operated
`at said setpoint (SP) is substantially less than the maximum
`torque output (MTO) of said engine.
`
`Ex. 1101, 58:13–37 (emphases added).
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`4
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`C.
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`The instituted grounds of unpatentability
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`
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`In a preliminary proceeding, we instituted trial because Ford made a
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`threshold showing of a “reasonable likelihood” that the challenged claims
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`were unpatentable as obvious over five publications that share a common
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`author, Professor James R. Bumby, which are referred to individually as
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`Bumby I,3 Bumby II,4 Bumby III,5 Bumby IV,6 and Bumby V,7 and
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`collectively as “the Bumby references” or “Bumby.” Dec. to Inst. 13. We
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`now decide whether Ford has proven the unpatentability of the challenged
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`claims by a “preponderance of the evidence.” 35 U.S.C. § 316(e).
`
`A.
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`Claim construction
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`III. ANALYSIS
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`
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b). This standard involves
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`determining the ordinary and customary meaning of the claim terms as
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`understood by one of ordinary skill in the art reading the patent’s entire
`
`
`3 J.R. Bumby, Computer modelling of the automotive energy requirements
`for internal combustion engine and battery electric-powered
`vehicles, IEE PROC., v. 132, pt. A, no. 5, 265–279 (Sep. 1985) (Ex. 1103).
`4 J.R. Bumby and I. Forster, Optimisation and control of a hybrid electric
`car, IEE PROC., v. 134, pt. D, no. 6, 373–387 Nov. 1987 (Ex. 1104).
`5 I. Forster and J.R. Bumby, A hybrid internal combustion engine/battery
`electric passenger car for petroleum displacement, PROC. INST. MECH.
`ENGRS., v. 202, no. D1, 51–64 Jan. 1988 (Ex. 1105).
`6 J.R. Bumby and P.W. Masding, A Test-Bed Facility for Hybrid IC Engine-
`Battery Electric Road Vehicle Drive Trains, TRANS. INST. MEAS. & CONT.,
`v. 10, no. 2, 87–97 Apr. 1988 (Ex. 1106).
`7 P.W. Masding and J.R. Bumby, Integrated microprocessor control of a
`hybrid i.c. engine/battery-electric automotive power train, TRANS. INST.
`MEAS. & CONT., v. 12, no. 3, 128-146 Jan. 1990 (Ex. 1107).
`
`5
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`written disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
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`Cir. 2007). Here, our review centers on the construction of two claim
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`terms—“road load (RL)” and “setpoint (SP).”8
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`
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`
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`1.
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`“Road load” or “RL”
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`The terms “road load” and “RL” appear throughout the claims of the
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`’347 patent. For example, claim 7, which depends from claim 1, recites that
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`the operating modes are “responsive to the value for the road load (RL) and
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`said setpoint (SP), both expressed as percentages of the maximum torque
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`output of the engine,” and claim 23 recites the step of “determining the
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`instantaneous torque RL required to propel said vehicle responsive to an
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`operator command.”
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`
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`The specification also describes “road load” as “the vehicle’s
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`instantaneous torque demands, i.e., that amount of torque required to propel
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`the vehicle at a desired speed.” Ex. 1101, 12:40–57 (emphasis added).
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`Elsewhere the specification similarly speaks of road load in terms of a
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`“torque” requirement:
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`The vehicle operating mode is determined by a microprocessor
`responsive to the “road load,” that is, the vehicle’s
`instantaneous torque demands.
`
`
`* * *
`While operating at low speeds, e.g., when the vehicle’s
`torque requirements (“road load,” or “RL”) are less than
`
`
`8 Ford also contends that the terms “low-load mode I,” “highway cruising
`mode IV,” and “acceleration mode V” are in need of construction. Pet. 13–
`17. Those terms are expressly defined by claim 7 (Ex. 1101, 58:64–59:8),
`and, thus, no further construction is necessary.
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`6
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`30% of the engine's maximum torque output (“MTO”),
`engine 40 is run only as needed to charge battery bank 22.
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`Id. at 11:60–63, 36:8–11 (emphases added). Also, in distinguishing the
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`claimed invention over the prior art, the specification explains that:
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`Numerous prior art references . . . indicate the vehicle operating
`mode should be controlled in response to vehicle speed . . . [but
`none] recognizes that the desired vehicle operational mode
`should preferably be controlled in response to the vehicle’s
`actual torque requirements, i.e., the road load. Doing so
`according to the invention provides superior performance, in
`terms of both vehicle response to operator commands and fuel
`efficiency. . . .
`
`Id. at 13:1–15 (emphasis added).
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`
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`These passages from the specification comport with a construction of
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`“road load” that is limited to an instantaneous torque value, and, more
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`specifically, a torque value which can be expressed in terms of a percentage
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`of the engine’s “maximum torque output” or “MTO.” For instance, the
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`specification states that:
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`road load is shown . . . as varying from 0 at the origin to 200%
`of maximum torque output.
`
`
`* * *
`During highway cruising . . . where the road load is between
`about 30% and 100% of the engine’s maximum torque output,
`the engine alone is used to propel the vehicle.
`
`
`* * *
`[W]hen the microprocessor detects that the road load exceeds
`100% of the engine’s maximum torque output, it controls
`inverter/charger 27 so that energy flows from battery bank 22 to
`traction motor 25, providing torque propelling the vehicle in
`addition to that provided by engine 40.
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`Id. at 37:13–15, 37:45–47, 38:5–10 (emphases added).
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`7
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`We see no reason to depart from these express definitions of “road
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`load” in terms of an amount of torque. Thus, consistent with the
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`specification’s many uses of the term, “road load” is properly construed to
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`be “the amount of instantaneous torque required for propulsion of the
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`vehicle.”
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`
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`Paice urges that our construction of “road load” should additionally
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`account for external forces acting on the vehicle, such as “aerodynamic
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`drag.” PO Resp. 19–20 n.8. Although aerodynamic forces may play a role
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`in the amount of torque required to propel the vehicle, we need not address
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`them in order to construe the term “road load.” That is because the claims
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`and specification of the ’347 patent consistently speak of “road load” in a
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`more general sense. In fact, the specification mentions aerodynamic forces
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`only in the context of a “heavy vehicle” having “high torque requirements”
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`and “poor aerodynamic characteristics.” Ex. 1101, 49:9–14. That singular
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`example, however, is not enough for us to overlook the countless
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`descriptions found elsewhere in the specification, where “road load” or “RL”
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`is defined simply as “the amount of torque required to propel the vehicle,”
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`divorced from other potential forces acting on the vehicle.
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`
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`
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`2.
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`“Setpoint” or “SP”
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`Each of independent claims 1 and 23 recites that the engine operates
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`“efficiently” when the torque required to propel the vehicle is between a
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`“setpoint (SP)” and a “maximum torque output (MTO).” Paice seeks to
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`construe the term “setpoint” as “a definite, but potentially variable value at
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`which a transition between operating modes may occur.” PO Resp. 7. Ford,
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`on the other hand, advocates that “setpoint” means a “predetermined torque
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`value.” Pet. 14. Paice protests any construction that limits the meaning of
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`“setpoint” to a “torque value” (PO Resp. 11), arguing that the specification
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`supports a broader definition that also could encompass a “state of charge of
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`the battery” (Prelim. Resp. 13–16) or a “transition between operating
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`modes” (PO Resp. 7–10).
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`
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`We agree with Paice that the specification speaks of “setpoint” in
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`terms of a “torque output,” a “state of charge of the battery,” or a “transition
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`point.” See Ex. 1101, 40:20–54. However, the claim language is not so
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`broad. Although we recognize that the specification is an important tool in
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`claim construction, it is the claim language—and the context in which the
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`disputed term is used—that is of primary importance. Phillips v. AWH
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`Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“the claims
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`themselves provide substantial guidance as to the meaning of particular
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`claim terms . . . the context in which a term is used in the asserted claim can
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`be highly instructive”) (citations omitted). Put another way, “the name of
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`the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
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`1998) (quoting Giles Sutherland Rich, Extent of Protection and
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`Interpretation of Claims—American Perspectives, 21 Int’l Rev. Indus. Prop.
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`& Copyright L. 497, 499 (1990)).
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`
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`Here, contrary to Paice’s assertion, the claim language consistently
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`refers to a “setpoint” in terms of a “torque” requirement. For instance,
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`claim 1 recites that the controller starts and operates the engine
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`when torque require[d] to be produced by said engine . . . is at
`least equal to a setpoint (SP) above which said engine torque is
`efficiently produced, and wherein the torque produced by said
`engine when operated at said setpoint (SP) is substantially less
`than the maximum torque output (MTO) of said engine.
`
`
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`Ex. 1101, 58:30–37 (emphases added). And, likewise, claim 23 speaks
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`consistently of “setpoint” or “SP” as being the “lower level,” or limit, at
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`which the engine can efficiently produce torque, reciting that: the engine is
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`capable of “efficiently producing torque at loads between a lower level SP
`
`and a maximum torque output”; the engine is employed to propel the vehicle
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`“when the torque RL required to do so is between said lower level SP and
`
`MTO”; and “wherein the torque produced by said engine when operated at
`
`said setpoint (SP) is substantially less than the maximum torque output.” Id.
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`at 60:22–54 (emphases added). These express limitations suggest that
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`“setpoint” is not just any value, but a value that—per the surrounding claim
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`language—equates to the level of the engine’s “torque.”
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`
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`Moreover, we note that claim 23 includes a limitation directed to “the
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`state of charge of said battery,” but it never correlates that limitation with a
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`“setpoint” or “SP,” even though those terms are used elsewhere throughout
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`the claim. Nor does Paice point us to anywhere in the claims that describe
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`the setpoint in the context of the battery’s state of charge. Indeed, when
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`speaking of “the state of charge of the battery,” dependent claims 9 and 31
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`refer to it in terms of falling below “a predetermined level,” not a “setpoint.”
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`Thus, given the claim language’s unequivocal use of “setpoint” or “SP” in
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`the context of a “torque” requirement, we construe the terms “setpoint” and
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`“SP” to mean “a torque value.” Our assessment does not end there,
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`however.
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`
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`The specification states that “the value of a setpoint (for example)
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`may vary somewhat in response to recent [driving] history, or in response to
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`monitored variables” or may be “reset . . . in response to a repetitive driving
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`pattern.” Ex. 1101, 40:37–59. But, just because a setpoint may vary under
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`certain circumstances, that potential variation does not foreclose it from
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`being “set,” or “fixed,” at some point in time.9 A setpoint for however short
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`a period of time still is a setpoint. Any other construction would defeat its
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`purpose of being set for comparison against another value. For example, the
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`specification states that “the microprocessor tests sensed and calculated
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`values for system variables [such as road load (RL)] . . . against setpoints,
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`and uses the results of the comparisons to control the mode of vehicle
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`operation.” Ex. 1101, 40:22–31 (emphasis added). That description makes
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`clear that the comparative setpoint is a pre-defined value. Indeed, the
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`specification refers to setpoint in terms of a “defined setpoint.” Id. at 19:64.
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`As such, we construe the term “setpoint” to mean at least “a predefined
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`torque value that may or may not be reset.”10
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`
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`Finally, we cannot disregard Paice’s argument that our construction is
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`“directly at odds” with the construction adopted by two district courts in
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`related actions.11 PO Resp. 6. According to Paice, each of the district courts
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`construed “setpoint,” as used in the ’347 patent, to mean “a definite, but
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`potentially variable value at which a transition between operating modes
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`may occur.” Id. Although, generally, we construe claim terms under a
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`different standard than that of a district court, and thus, are not bound by a
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`district court’s prior claim construction, we nonetheless feel compelled, by
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`the circumstances of this case, to evaluate the district courts’ construction in
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`
`9 The definition of “set” is “determined . . . premeditated . . . fixed by
`authority or appointment . . . prescribed, specified . . . built-in . . . settled,
`persistent.” Merriam-Webster’s Collegiate Dictionary (10th ed. 2000).
`Ex. 3001.
`10 Even Paice’s declarant agreed that, given the “comparison” being made in
`claims 1 and 23, the “most straightforward” construction is that “setpoint is a
`torque value.” Ex. 1143, 79:1–80:25.
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`11
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`light of our construction. See Power Integrations, Inc. v. Lee, 2015 WL
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`4757642, at *6 (Fed. Cir. Aug. 12, 2015) (“Given that [patent owner’s]
`
`principal argument to the board . . . was expressly tied to the district court’s
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`claim construction, we think that the board had an obligation, in these
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`circumstances, to evaluate that construction”).
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`
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`Here, the first half of the district courts’ construction—“a definite, but
`
`potentially variable value”—coincides squarely with our construction of
`
`“setpoint” as a “predefined” value “that may or may not be reset.” The
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`difference, however, lies in our construction of “setpoint” to be a “torque”
`
`value. On that point, the district court held:
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`there is nothing in the claims or specification that indicate a
`given setpoint value is actually represented in terms of torque.
`In fact, the specification clearly indicates that the state of
`charge of the battery bank, ‘expressed as a percentage of its full
`charge’ is compared against setpoints, the result of the
`comparison being used to control the mode of the vehicle.
`
`Ex. 1115, 10 (citing the ’347 patent, 40:28–31). But, as discussed above,
`
`although claims are read in light of the specification, it is the use of the term
`
`“setpoint” within the context of the claims themselves that provides a firm
`
`basis for our construction. See Phillips, 415 F.3d at 1314 (“the context in
`
`which a term is used in the asserted claim can be highly instructive”). Here,
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`the claims instruct us that “setpoint,” when read in the context of the
`
`surrounding language, is limited to a torque value. We decline to read the
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`term as also encompassing a state of charge of the battery, as the district
`
`
`11 Paice LLC v. Toyota Motor Corp., No. 2:07-cv-00180, Dkt. 63 (E.D. Tex.
`Dec. 5, 2008); Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499, 2014
`WL 3725652 (D. Md. July 24, 2014).
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`court did. Thus, we stand by our determination that claims 1 and 23
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`consistently refer to “setpoint” as a “torque” requirement.
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`
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`With regard to the second half of the district courts’ construction of
`
`“setpoint” as “a transition between operating modes,” we believe it imports
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`an extraneous limitation into the meaning of “setpoint” that is neither
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`supported by the claim language nor the specification. In particular,
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`claims 1 and 23 expressly describe “setpoint (SP)” as being the lower limit
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`at which the engine can “efficiently” produce torque. Those claims make no
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`mention of this lower limit as being a “transition” point for the “operating
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`modes,” although it potentially may be. Indeed, the specification
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`acknowledges that the mode of operation does not always transition, or
`
`switch, at the setpoint, but instead depends on a number of operating
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`parameters:
`
`the values of the sensed parameters in response to which the
`operating mode is selected may vary . . . , so that the operating
`mode is not repetitively switched simply because one of the
`sensed parameters fluctuates around a defined setpoint.”
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`Ex. 1101, 19:53–64 (emphasis added).
`
`
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`Moreover, that a “setpoint” is not a per se transition between
`
`operating modes is reinforced by the fact that only the dependent claims, for
`
`example claims 7 and 28, mention “setpoint” in terms of “operating modes.”
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`See id. at 58:58–60, 61:11–13. Where the meaning of a claim term is clear
`
`from the context of its use in an independent claim, we will not further limit
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`the meaning of the term by its use in a dependent claim, absent justification
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`for doing so. See Phillips, 415 F.3d at 1315 (“the presence of a dependent
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`claim that adds a particular limitation gives rise to a presumption that the
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`limitation in question is not present in the independent claim”). Thus,
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`although the district courts may have had justification for a narrower
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`construction of “setpoint,” we believe it is necessary here and may lead to
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`confusion given our standard of applying the “broadest reasonable
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`construction” to the terms of a claim. See 37 C.F.R. § 42.100(b). As such,
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`we maintain our construction of “setpoint,” as discussed above, which
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`arguably may differ from the construction arrived at in the related district
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`court actions.
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`B.
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`The sole asserted ground—obviousness over the Bumby references
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`Ford relies on the five Bumby references as teaching, collectively, the
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`limitations of the contested claims, and a reason why a skilled artisan would
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`have been combined them to arrive at the claimed invention. Pet. 28–59.
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`Specifically, like the contested claims, the Bumby references disclose the
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`essential components of a hybrid electric vehicle, including an internal
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`combustion engine, an electric motor, a battery, and a controller for
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`controlling the vehicle’s different modes of operation. Compare Ex. 1104,
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`Fig. 2 (Bumby II) with Ex. 1101, Fig. 4 (the ’347 patent). The “different
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`operating modes,” according to Bumby III, include an electric mode, a
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`hybrid mode, an engine mode, and a battery charge mode. Ex. 1105, 4–5
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`(Table 2), 11–12 (Fig. 15).
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`
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`In turn, Bumby IV teaches that the “microprocessor” controller is “the
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`heart of the drive-train control system” and “implement[s] the hybrid-vehicle
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`control strategy . . . in the most efficient way to meet driver demand.” Ex.
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`1106, 4 (emphasis added). Efficiency is achieved, Bumby IV explains, by
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`operating the engine only “when load demand is high,” rather than at “low
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`speed, low load situations [where] the ic engine is inefficient compared with
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`the electric traction system.” Ex. 1106 at 3–4; Ex. 1108 ¶¶ 254–255, 258.
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`And, notably, Bumby II and III define “maximum engine efficiency” in
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`terms of a “lower torque bound” and an “upper torque bound.” Ex. 1104 at
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`10–11 (Fig. 16); Ex. 1105 at 7–8 (Fig. 8). “Above the upper torque bound,”
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`according to Bumby II, “true hybrid operation is used with the electric motor
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`supplying the excess torque above the maximum available from the engine.”
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`Ex. 1104, 11. “Below the lower torque bound and the lower speed bound,
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`all-electric operation is favoured [which] eliminates inefficient use of the
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`engine.” Id. Thus, taken together, the five Bumby references teach a hybrid
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`vehicle in which the internal combustion engine and the electric motor are
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`capable of driving the road wheels, with the mix of power between the
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`engine and motor being controlled by a microprocessor to provide maximum
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`engine efficiency.12
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`
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`Paice, in turn, argues essentially five points in rebuttal of Ford’s
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`reliance on the Bumby references: first, a skilled artisan would not have
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`combined the Bumby references because they “teach away” from one
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`another; second, the Bumby references do not disclose or suggest the use of
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`“setpoints (SP),” as required by claims 1, 7, and 23; third, the Bumby
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`references do not disclose or suggest the use of “road load (RL),” as required
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`by claims 7 and 23; fourth, the Bumby references do not disclose or suggest
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`the “first electric motor” of claims 1 and 8; and fifth, the Bumby references
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`do not disclose or suggest the “battery charging” mode of claims 1 and 23.
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`PO Resp. 15, 21, 34, 37, 43, respectively. We are not persuaded by any of
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`Paice’s arguments.
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`12 Ford’s declarant, Dr. Davis, whose testimony we find persuasive,
`confirms the teachings of each of the Bumby references. Ex. 1108 ¶¶ 238–
`244, 251–255, 259–272.
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`1.
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`The reason to combine the Bumby references
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`
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`Despite the overlapping teachings of the Bumby references, Paice
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`argues that Ford’s “only reasons” for combining the Bumby references are
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`that they “share a common author and cite to each other.” PO Resp. 15. We
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`disagree. Aside from their citation to one another, the Bumby references
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`document, chronologically, the evolution of a hybrid vehicle project
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`undertaken by Professor James Bumby and his team at the University of
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`Durham in the 1980s. See Pet. 18–28; see also Ex. 1106, 2 and Ex. 1107, 2–
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`3 (referencing earlier Bumby references). Indeed, common to the five
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`Bumby references is the stated objective of the project—to develop an
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`optimal control strategy for maximizing efficient operation of a hybrid
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`vehicle. See, e.g., Ex. 1104, 6, Ex. 1105, 6, 15, Ex. 1106, 2; see also Ex.
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`1108 ¶¶ 206, 208, 220, 230.
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`
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`Also, evidence proffered by Paice itself, a doctorate thesis by Philip
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`Masding in 1988 (Ex. 2104, “the Masding Thesis”), further supports the
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`rationale to combine.13 The Masding Thesis brings together the five Bumby
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`references in a single compilation and summarizes the efforts undertaken by
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`Professor Bumby and his team. Ex. 1140 ¶¶ 5–16, 21–22 (citing Ex. 2104,
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`35–49). Even Paice’s own declarant, Mr. Hannemann, testified that the
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`“thesis written by Masding . . . encompasses a lot of the elements of all of
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`the other five [Bumby] papers.” Ex. 1141, 17:1–9.
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`13 Mr. Masding was part of Professor Bumby’s team at the University of
`Durham and a listed author on some of the Bumby references. See Exs.
`1106, 1107. Although the Masding Thesis is not a basis for the instituted
`ground, it is offered as relevant evidence to corroborate certain testimony of
`the declarants and to indicate the level of skill in the art.
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`Nonetheless, Paice contests that a skilled artisan would have
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`combined the Bumby references, arguing that Bumby IV and V “teach
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`away” from Bumby II and III. PO Resp. 15–21. According to Paice,
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`Bumby IV and V teach an “arbitrary speed-based mode controller” that
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`would be incompatible, or “impractical,” for use with the “sub-optimal
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`control strategy” taught by Bumby II and III. PO Resp 16–18. But the mere
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`disclosure of more than one design in a prior art reference does not
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`constitute a teaching away if “such disclosure does not criticize, discredit, or
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`otherwise discourage” one design over the other. In re Fulton, 391 F.3d
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`1195, 1201 (Fed. Cir. 2004).
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`
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`Here, although Bumby V describes the use of two control strategies, it
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`explains clearly that one is for purposes of initial testing while the other is
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`for actual use in the hybrid vehicle. More specifically, the “arbitrary [speed-
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`based] strategy,” Bumby V acknowledges, “is intended purely to
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`demonstrate” that the “more sophisticated [control] strategy” of Bumby II
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`and III is capable of being implemented on a hybrid vehicle. Ex. 1107, 19
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`(emphasis added). In other words, Bumby V is simply teaching how to test,
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`and prove, the feasibility of the sub-optimal control strategy taught earlier by
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`Bumby II and III, rather than criticizing or disparaging it. And, contrary to
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`Paice’s protest, we credit the testimony of Ford’s declarant, Dr. Davis, that
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`nowhere does Bumby V characterize the sub-optimal control algorithm as
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`inadequate or inoperable. Ex. 1140 ¶¶ 23–32.
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`
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`Paice continues to protest the combination, proffering the testimony of
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`its declarant, Mr. Hannemann, that “it was not technically feasible to
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`implement” the sub-optimal control strategy of the Bumby references due to
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`potential problems with “gear shifting.” PO Resp. 18–19 (citing Ex. 2102
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`¶¶ 66–68). But, upon further questioning, Mr. Hannemann clarified that the
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`“gear shifting” problem was merely “a challenge” that Professor Bumby and
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`his team were “trying to tackle.” Ex. 1141, 56:14–17. Simply because a
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`prior art reference recognizes a problem, and discusses the work to solve it,
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`does not necessarily teach away from what the reference otherwise discloses,
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`for it is still “prior art for all that it teaches.” Beckman Instruments v. LKB
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`Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).
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`
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`Moreover, rather than criticizing the sub-optimal control strategy
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`taught by the Bumby references, the Masding Thesis (proffered by Paice)
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`provides encouragement that corrections to the implementation software will
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`alleviate the gear-shifting problem:
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`Once correct action of the component controllers and
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`associated sequencing logic had been demonstrated with the
`speed based mode strategy, the logical extension is to introduce
`a mod