Trials@uspto.gov
`571-272-7822
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` Paper 38
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`Entered: December 10, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00884
`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
`Ford Motor Company (“Ford”) filed a Petition (“Pet.”) for inter partes
`review of claims 1, 7, 10, 21, 23, and 24 of U.S. Patent No. 7,104, 347 B2
`(“the ’347 patent”), which is owned by Paice LLC & The Abell Foundation,
`Inc. (collectively, “Paice”). In a preliminary proceeding, we decided to
`institute trial (“Dec. Inst.”) because Ford demonstrated a reasonable
`likelihood that the challenged claims are unpatentable under 35 U.S.C.
`§ 103. In due course, Paice filed a Patent Owner Response (“PO Resp.”),
`and Ford followed with a Reply (“Reply”). Having heard oral argument on
`this matter,1 and pursuant to our jurisdiction under 35 U.S.C. § 6(c), we
`determine Ford has proven that claims 1, 7, and 10 are unpatentable by a
`preponderance of the evidence, but has not carried its burden with respect to
`claim 24. Also, pursuant to 35 U.S.C. § 315(e)(1), we determine that Ford is
`estopped from maintaining its challenge against claims 21 and 23.
`II. BACKGROUND
`A. Related Proceedings
`The instant Petition challenges several claims of the ’347 patent that
`
`have been adjudicated previously in IPR2014-00571 and IPR2014-00579,
`but on different grounds. Specifically, those prior proceedings led to final
`written decisions in which claims 1, 7, 21, and 23 at issue here were
`determined to be unpatentable, among other claims of the ’347 patent. See
`IPR2014-00571, Paper 44, 2015 WL 5782084 (PTAB Sept. 28, 2015);
`IPR2014-00579, Paper 45, 2015 WL 5782085 (PTAB Sep. 28, 2015).2 We
`
`
`1 A transcript (“Tr.”) has been entered into the record. Paper 36.
`2 Paice has filed notices of appeal from our final written decisions in the
`-571 and -579 proceedings.
`
`2
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`granted institution of trial in the instant proceeding back in December 2014,
`well before our final written decisions in the -571 and -579 proceedings.
`
`The ’347 patent is also the subject of co-pending district court actions,
`including Paice, LLC v. Ford Motor Co., No. 1:14-cv-00492 (D. Md., filed
`Feb. 19, 2014), and Paice LLC v. Hyundai Motor Co., No. 1:12-cv-00499
`(D. Md., filed Feb. 16, 2012). Pet. 1; see also PO Resp. 7–8 (referencing the
`district courts’ claim construction). We are informed that, in the latter
`action, a jury trial was recently completed on October 1, 2015, and the
`parties are currently engaged in post-trial briefing.
`B. The ’347 Patent
`The ’347 patent describes a hybrid vehicle with an internal
`
`combustion engine, at least one electric motor, and a battery bank, all
`controlled by a microprocessor that controls the direction of torque between
`the engine, motor, and drive wheels of the vehicle. Ex. 1201, 17:5–45,
`Fig. 4. The microprocessor monitors the vehicle’s instantaneous torque
`requirements, or road load, to determine the source of torque necessary to
`propel the vehicle, be it the engine, the motor, or both. Id. at 11:60–62.
`Aptly, the ’347 patent describes the vehicle’s various modes of operation as
`an engine-only mode, an all-electric mode, or a hybrid mode. Id. at 35:66–
`36:58, 37:26–38:11.
`
`In summarizing the invention, the ’347 patent states that the
`microprocessor selects the appropriate mode of operation “in response to
`evaluation of the road load, that is, the vehicle’s instantaneous torque
`demands and input commands provided by the operator of the vehicle.”3 Id.
`
`
`3 The ’347 patent contrasts the claimed invention to prior control strategies
`“based solely on speed,” which are “incapable of responding to the
`
`3
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`at 17:28–32. More specifically, “the microprocessor can effectively
`determine the road load by monitoring the response of the vehicle to the
`operator’s command for more power.” Id. at 37:44–51. “[T]he torque
`required to propel the vehicle [i.e., road load] varies as indicated by the
`operator’s commands.” Id. at 38:12–14. For example, the microprocessor
`“monitors the rate at which the operator depresses pedals [for acceleration
`and braking] as well as the degree to which [the pedals] are depressed.” Id.
`at 27:21–34. These operator input commands are provided to the
`microprocessor “as an indication that an amount of torque” from the engine
`“will shortly be required.” Id. at 27:36–53.
`
`The microprocessor then compares the vehicle’s torque requirements
`against a predefined “setpoint” and uses the results of the comparison to
`determine the vehicle’s mode of operation. Id. at 40:20–55. The
`microprocessor may utilize a control strategy that runs the engine only in a
`range of high fuel efficiency, such as when the torque required to drive the
`vehicle, or road load (RL), reaches a setpoint (SP) of approximately 30% of
`the engine’s maximum torque output (MTO). Id. at 20:52–60, 37:26–46; see
`also id. at 13:47–61 (“the engine is never operated at less than 30% of MTO,
`and is thus never operated inefficiently”). The microprocessor may also
`monitor other operating parameters to control the vehicle’s mode of
`operation, such as the battery’s state of charge and the operator’s driving
`history over time. Id. at 19:53–60; see also id. at 37:23–26 (“according to
`one aspect of the invention, the microprocessor 48 controls the vehicle’s
`mode of operation at any given time in dependence on ‘recent history,’ as
`
`
`operator’s commands, and will ultimately be unsatisfactory.” Ex. 1201,
`13:35–38.
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`well as on the instantaneous road load and battery charge state”). According
`to the ’347 patent, this microprocessor control strategy maximizes fuel
`efficiency and reduces pollutant emissions of the hybrid vehicle. Id. at
`15:48–50.
`
`B. The Challenged Claims
`Of the challenged claims, claims 1 and 23 are independent. Claim 1
`
`requires two electric motors, while claim 23 requires simply one or more
`electric motors. Claim 1 is illustrative and recites:
`1.
`A hybrid vehicle, comprising:
`an internal combustion engine controllably coupled to
`road wheels of said vehicle;
`
`a first electric motor connected to said engine [a]nd
`operable to start the engine responsive to a control signal;
`
`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;
`
`a battery, for providing current to said motors and
`accepting charging current from at least said second motor; and
`
`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. 1201, 58:13–37.
`
`
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`C. The Decision to Institute
`In the preliminary proceeding, we instituted inter partes review on
`
`two grounds, determining Ford had demonstrated a “reasonable likelihood”
`that (1) claims 1, 7, 10, and 21 are unpatentable as obvious over Caraceni,4
`and (2) claims 23 and 24 are unpatentable as obvious over Tabata ’2015 and
`Tabata ’541.6 Dec. Inst. 14–15. We now determine whether Ford has
`proven the unpatentability of these claims by a “preponderance of the
`evidence.” 35 U.S.C. § 316(e).
`III. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). This standard involves
`determining the ordinary and customary meaning of the claim terms as
`understood by one of ordinary skill in the art reading the patent’s entire
`written disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Here, our review centers on the construction of two claim
`terms—“road load (RL)” and “setpoint (SP).”7
`
`
`
`
`
`
`4 A. Caraceni et al., Hybrid Power Unit Development for Fiat Multipla
`Vehicle, SAE TECHNICAL PAPER 981124, pub. 1998 (Ex. 1203, “Caraceni”).
`5 U.S. Patent No. 5,841,201, iss. Nov. 24, 1998 (Ex. 1204, “Tabata ’201”).
`6 U.S. Patent No. 6,158,541, iss. Dec. 12, 2000 (Ex. 1205, “Tabata ’541”).
`7 Although Ford also proposes a construction for the terms “low-load mode
`I,” “highway cruising mode IV,” and “acceleration mode V” (Pet. 17), those
`terms are expressly defined by claim 7. Ex. 1201, 58:58–59:8. As such,
`they do not require further construction.
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`“Road load” or “RL”
`1.
`
`The term “road load” or “RL” does not appear in independent claim 1,
`but is found in independent claim 23, as well as dependent claims 7 and 21.
`Both Ford and Paice agree that “road load” means the instantaneous torque
`required to propel the vehicle. Pet. 14–15; PO Resp. 7, 17. That proposed
`construction comports with the specification, which defines “road load” as
`“the vehicle’s instantaneous torque demands, i.e., that amount of torque
`required to propel the vehicle at a desired speed.” Ex. 1201, 12:38–42.
`
`In further defining road load, the specification notes that “the
`operator’s depressing the accelerator pedal signifies an increase in desired
`speed, i.e., an increase in road load, while reducing the pressure on the
`accelerator or depressing the brake pedal signifies a desired reduction in
`vehicle speed, indicating that the torque being supplied is to be reduced or
`should be negative.” Id. at 12:42–51 (emphases added). As such, the
`specification states that road load “can be positive or negative.” Id. at
`12:51–54. Thus, consistent with the specification, we construe “road load”
`or “RL” as “the amount of instantaneous torque required to propel the
`vehicle, be it positive or negative.”
`“Setpoint” or “SP”
`2.
`
`The term “setpoint” or “SP” is found in independent claims 1 and 23,
`as well as dependent claim 7. Ford proposes that “setpoint” be construed, in
`the context of the claims, as a “predetermined torque value.” Pet. 15, 17. In
`that regard, Ford correctly notes that the claims compare the setpoint against
`a torque value. Id. at 16. For example, claim 1 speaks of the “setpoint” or
`“SP” as being the lower limit at which the engine can produce torque
`efficiently, i.e., “when torque require[d] to be produced by said engine to
`
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`propel the vehicle . . . is at least equal to a setpoint (SP) above which said
`engine torque is efficiently produced.”8 Ex. 1201, 58:29–34. Similarly,
`claim 23 recites “employing said engine to propel said vehicle when the
`torque RL required to do so is between said lower level SP and MTO,”
`where MTO stands for maximum torque output. Id. at 60:39–41. This
`express language suggests that “setpoint” is not just any value, but a value
`that—per the surrounding claim language—equates to “torque.” See
`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“the
`claims themselves provide substantial guidance as to the meaning of
`particular claim terms . . . the context in which a term is used in the asserted
`claim can be highly instructive”).
`
`Paice, on the other hand, argues that “setpoint” is synonymous with a
`“transition” point, not a torque value. PO Resp. 9–12. Citing the
`specification, Paice urges that “setpoint” must be construed to indicate a
`point “at which a transition between operating modes may occur.” Id. at 9.
`Paice’s argument is misplaced. While Paice is correct that sometimes the
`specification describes the setpoint in terms of a “transition point” (see id. at
`10), the claim language itself makes clear that setpoint relates simply to a
`torque value, without requiring that it be a transition point. Indeed, the
`specification acknowledges that the mode of operation does not always
`transition, or switch, at the setpoint, but instead depends on a number of
`parameters. For instance,
`
`
`8 Paice’s declarant, Mr. Neil Hannemann, agreed that, given the
`“comparison” being made by this claim language, the “most
`straightforward” construction is that “setpoint is a torque value.” Ex. 1246,
`79:16–80:25.
`
`8
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`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.
`
`Ex. 1201, 19:58–64 (emphasis added). That disclosure suggests that a
`transition does not spring simply from the recitation of “setpoint.” As such,
`we will not import into the meaning of “setpoint” an extraneous limitation
`that is supported by neither the claim language nor the specification.
`Moreover, that a “setpoint” does not mean a per se transition between
`
`operating modes is reinforced by the fact that only the dependent claims, for
`example, claims 3 and 10, describe the “setpoint” in terms of a “transition”
`between operating modes. See id. at 58:41–47, 59:25–29. Where the
`meaning of a claim term is clear from the context of its use in an
`independent claim, we will not further limit the meaning of the term by its
`use in a dependent claim, absent justification for doing so. See Phillips, 415
`F.3d at 1315 (“the presence of a dependent claim that adds a particular
`limitation gives rise to a presumption that the limitation in question is not
`present in the independent claim”). Thus, we reject Paice’s attempt to
`further limit the meaning of setpoint to a transition between operating
`modes.
`
`We also regard as meaningful that nothing in the specification
`precludes a setpoint from being reset, after it has been set. The specification
`states that the value of a setpoint may be “reset . . . in response to a repetitive
`driving pattern.” Ex. 1201, 40:55–58. But, just because a setpoint may be
`reset under certain circumstances does not foreclose it from being “set,” or
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`“fixed,” at some point in time.9 A setpoint for however short a period of
`time still is a setpoint. Thus, we construe “setpoint” as a “predetermined
`torque value that may or may not be reset.”
`
`Finally, Paice argues that any construction limiting the meaning of
`setpoint to a “torque value” would be “directly at odds with the construction
`adopted by two district courts” in related litigation.10 PO Resp. 7–8.
`Although, generally, we construe claim terms under a different standard than
`a district court, and thus, are not bound by a district court’s prior
`construction, Paice’s emphasis on the district court’s construction compels
`us to address it. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1327
`(Fed. Cir. 2015) (“Given that [patent owner’s] principal argument to the
`board . . . was expressly tied to the district court’s claim construction, we
`think that the board had an obligation, in these circumstances, to evaluate
`that construction”).
`
`In that regard, the district court held:
`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.
`
`
`
`9 The definition of “set” is “determined . . . premeditated . . . fixed . . .
`prescribed, specified . . . built-in . . . settled.” Merriam-Webster’s Collegiate
`Dictionary (10th ed. 2000). Ex. 3001.
`10 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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`Ex. 1211, 13 (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, supra. Here, the claims instruct us
`that “setpoint,” when read in the context of the surrounding language, is
`limited to a torque value. As for the district court’s statement that the
`battery’s state of the charge is compared to a setpoint, we note that the
`claims actually speak of comparing the “state of charge of the battery” to “a
`predetermined level,” not the “setpoint” or “SP” recited elsewhere in the
`claims. See, e.g., Ex. 1201, 59:13–16, 61:33–36 (dependent claims 9 and 31,
`respectively). Thus, in the context of the claims, we decline to read
`“setpoint” as also encompassing a state of charge of the battery, as the
`district court did. Instead, we construe “setpoint” as representing a torque-
`based value.
`3.
`“Monitor Patterns of Vehicle Operation Over Time”
`
`Claim 24 recites that the controller is operable to “monitor patterns of
`vehicle operation over time.” Ford does not explicitly propose a
`construction for this phrase, other than to argue it should be construed
`“according to its plain and ordinary meaning.” Reply 3. Paice, on the other
`hand, argues that this phrase should be construed to mean that the controller
`“tracks and records the driver’s repeated driving operations over time.” PO
`Resp. 13.
`
`According to Paice, the specification of the ’347 patent supports a
`construction that monitoring the patterns of vehicle operation over time
`refers to how the operator actually drives the vehicle over some period of
`time, as opposed to monitoring an internal data point of the vehicle. PO
`
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`Resp. 13–16. Specifically, Paice points to the following descriptions in the
`specification:
`Examples of this practice—amounting in many circumstances
`to modifying certain specific values depending on other data
`items not discussed in detail, or by monitoring the vehicle’s
`actual usage patterns over time—are given below.
`
`Ex. 1201, 35:47–58 (emphasis added).
`It is also within the scope of the invention for the
`microprocessor to monitor the vehicle’s operation over a period
`of days or weeks and reset this important setpoint in response to
`a repetitive driving pattern. For example, suppose the operator
`drives the same route from a congested suburban development
`to a workplace about the same time every morning; typically
`the road load might remain under 20% of MTO for the first few
`minutes of each day, then vary between 0 and 50% of MTO for
`another few minutes as the operator passes through a few traffic
`lights, and then suddenly increase to 150% of MTO as the
`operator accelerates onto a highway. It is within the skill [in]
`the art to program a microprocessor to record and analyze
`such daily patterns, and to adapt the control strategy
`accordingly. For example, in response to recognition of a
`regular pattern as above, the transition point might be adjusted
`to 60% of MTO; this would prevent repetitive engine starts as
`the road load exceeded 30% of MTO for a few hundred yards at
`a time, as might often occur in suburban traffic. Similarly, the
`engine starting routine might be initiated after the same total
`distance had been covered each day.
`Id. at 40:56–41:9 (emphasis added).
`
`Although Ford does not provide an explicit construction for the phrase
`“monitor patterns of vehicle operation over time,” Ford implicitly construes
`the phrase to encompass monitoring the battery state of charge and adjusting
`the control strategy based on that state of charge. Pet. 55–56 (citing Ex.
`1215 ¶¶ 468–471). As shown above, however, the specification makes clear
`
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`that the “patterns” recited by claim 24 are the repetitive and regular driving
`patterns of the vehicle’s operator, not some internal data point of the vehicle
`itself (such as battery state of charge). Ex. 1201, 40:56–41:9. Indeed, the
`specification draws a clear distinction between changing the control strategy
`in response to monitored battery state of charge (“BSC”) and changing it in
`in response to monitored driving patterns. See, e.g., Ex. 1201, 44:23–39 (“it
`may be desirable to vary the operation of the system insofar as responsive to
`BSC in accordance with monitored variables indicative of battery
`temperature, ambient temperature, and the like”). Notably, the specification
`makes no mention of monitoring “patterns” of a battery state of charge.
`
`Moreover, the plain words of claim 24 require monitoring patterns
`over time. It is not enough to monitor a single variable of a vehicle
`component, such as battery state of charge. Rather, the plain meaning of the
`words require monitoring patterns, particularly where the specification
`speaks of patterns in terms of regular and repetitive usage by the operator of
`the vehicle, not a component of the vehicle. Thus, we agree with Paice that
`the phrase “monitoring patterns of vehicle operation over time” means
`monitoring a driver’s repeated driving operations over time.
`B. The Instituted Grounds
`Estoppel—Claims 21 and 23
`1.
`Ford is estopped from maintaining its challenge against claims 21 and
`
`23 in the instant proceeding because the asserted grounds are based on prior
`art that Ford was aware of, and could have raised, in prior proceedings
`challenging the same claims. Specifically, claims 21 and 23 were the
`subject of the related -571 and -579 proceedings discussed above (see
`section II.A.), in which final written decisions were entered. In those prior
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`proceedings, claims 21 and 23 were adjudged to be unpatentable on grounds
`that differ from the Caraceni-based and Tabata-based grounds asserted
`against claims 21 and 23, respectively, in the instant proceeding.
`
`Under 35 U.S.C. § 315(e)(1), once a petitioner has obtained a final
`written decision on a patent claim in an inter partes review, that petitioner
`may not maintain a subsequent proceeding with respect to that same claim
`on a ground that it “reasonably could have raised” in the original proceeding.
`Specifically, section 315(e)(1) provides:
`(e) Estoppel.—
`
`(1) Proceedings before the office.—The petitioner in an
`inter partes review of a claim in a patent under this chapter that
`results in a final written decision under section 318(a) . . . 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.
`
`The prerequisites for applying estoppel are satisfied here because:
`
`(1) Ford is the petitioner in the instant proceeding and in the prior -571 and
`-579 proceedings; and (2) the -571 and -579 proceedings resulted in final
`written decisions. With those prerequisites in place, our determination of
`whether to apply estoppel turns on whether Ford could have raised the prior
`art asserted here—Caraceni against claim 21, and Tabata ’201 and Tabata
`’541 against claim 23—in the -571 and/or -579 proceedings.
`
`What a petitioner “reasonably could have raised” includes prior art
`that a skilled advocate would have been expected to discover and proffer in
`the course of conducting due diligence on the patent at issue. Here, we need
`not speculate about what reasonably could have been discovered and
`proffered, because the record demonstrates that Ford must have known of
`Caraceni, Tabata ’201, and Tabata ’541 at the time of the -571 and -579
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`Petitions, and if not, such knowledge should be imputed to it. More
`specifically, with respect to the Tabata references, they were cited during
`prosecution that led to the ’347 patent and are listed on the face of the
`patent. Ex. 1201, 3, 4. As such, Ford was on notice of the existence of the
`Tabata references as potential prior art to the ’347 patent before it filed the
`-571 and -579 Petitions.
`
`In addition, Ford could have raised the Caraceni reference against
`claim 21 in the -571 and -579 proceedings because it was asserted in a
`related petition, IPR2014-00570, that Ford filed on the very same day as the
`-571 and -579 Petitions. Thus, Ford must have known, or should have
`known, of Caraceni’s potential application to claim 21 before it filed the
`-571 and -579 Petitions. Under these circumstances, we determine that the
`Caraceni and Tabata references constitute grounds that Ford reasonably
`could have asserted against claims 21 and 23 in the original -571 and -579
`Petitions. Accordingly, Ford is estopped under 35 U.S.C. § 315(e)(1) from
`now maintaining those grounds against claims 21 and 23 in the instant
`proceeding.
`2.
`Claims 1, 7, and 10—Obviousness over Caraceni
`
`Ford challenges independent claim 1, and dependent claims 7 and 10,
`on the ground that the claimed invention would have been obvious over the
`teachings of Caraceni.11 Pet. 18–42. In support of this ground, Ford
`
`
`11 This is the first instance in which Ford challenges dependent claim 10.
`Thus, unlike claim 21, which Ford is estopped from pursuing (as discussed
`above), claim 10 was not the subject of the prior -571 and -579 proceedings
`that resulted in final written decisions. And, although claims 1 and 7 were
`the subject of final written decisions in the -571 and -579 Petitions, we
`exercise our discretion to maintain the instant proceeding against claims 1
`
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`provides a detailed analysis of how Caraceni meets each limitation of the
`challenged claims and why a skilled artisan would have found the claimed
`invention obvious over Caraceni and the general state of the art. Id. at 21–
`42.
`Claim 1
`a.
`
`At the outset, we find that Caraceni teaches the essential components
`
`of a hybrid vehicle, which like claim 1, include: (1) an internal combustion
`engine that provides propulsive torque to the wheels of the vehicle, (2) an
`electric motor that is also capable of providing propulsive torque to the
`wheels, (3) a battery that provides electrical current to the motor, and (4) a
`controller, or “Vehicle Management Unit” (VMU), that controls operation of
`the engine and motor in a “hybrid mode” and a “recharge mode.” Compare
`Figs. 2, 10 of Ex. 1003 (Caraceni) with Fig. 4 of Ex. 1201 (the ’347 patent);
`see also Ex. 1215 ¶ 201 (depicting Caraceni’s Figs. 2, 10 as annotated by
`Ford’s declarant, Dr. Davis). Also, with respect to a separate starter motor
`for the engine (i.e., the “first electric motor” of claim 1), Caraceni teaches an
`“engine starter.” Ex. 1203, Fig. 10. Although Caraceni does not disclose
`that the engine starter is an electric motor per se, we are persuaded that a
`
`
`and 7 because they are incorporated within the body of claim 10 as a matter
`of dependency. See 35 U.S.C. § 315(e)(1) (neither the plain terms of this
`provision, nor chapter 31 more generally, prohibits the Board from entering
`final decisions where it sees fit); see also 35 U.S.C. § 325(d) (conferring
`authority on the Board to decide how to deal with multiple proceedings). In
`any event, whatever renders obvious a dependent claim necessarily renders
`obvious the claims from which it depends.
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`skilled artisan would have understood Caraceni’s “engine starter” to be an
`electric motor.12 See Ex. 1215 ¶¶ 210–215.
`In an attempt to distinguish the claimed invention from the hybrid
`configuration taught by Caraceni, Paice raises a number of arguments
`directed to certain functional aspects of the controller of claim 1. PO Resp.
`18–43.
`
`“Engine . . . to Propel the Vehicle”
`First, Paice contends that Caraceni fails to teach or suggest starting
`and operating the engine to propel the vehicle in response to a “setpoint,” as
`required by claim 1. PO Resp. 19–32. In particular, Paice argues that,
`instead of a setpoint, Caraceni “relies on the driver to decide when to turn
`the engine on.” Id. at 19. According to Paice, Caraceni discloses that the
`driver manually selects when to operate the engine, whereas, in the claimed
`invention, the controller automatically determines when to operate the
`engine. Id. at 20 (citing Ex. 1203, 5–6); see also id. at 23 (“the user in
`Caraceni” selects when to operate the engine, “not the control system”).
`
`We are not persuaded that Caraceni controls operation of the engine
`on manual basis. Our review of Caraceni supports a contrary finding.
`Although Paice is correct that Caraceni permits the driver to manually select
`whether the vehicle will be operated as an all-electric vehicle, an engine-
`only vehicle, or a hybrid vehicle, it is only the vehicle’s operation in a
`hybrid mode that Ford relies on to satisfy the “controller” and “setpoint”
`limitations of claim 1. In that regard, Caraceni states that “a proper
`combination of thermal engine operation for cruising, and electric motor for
`
`
`12 Paice does not dispute that Caraceni meets the “first electric motor”
`limitation of claim 1.
`
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`acceleration can be used to minimize fuel consumption and emissions.” Ex.
`1203, 6. In other words, Caraceni splits the power between the engine (one
`drive train) and the electric motor (another drive train) in order to maximize
`fuel efficiency.
`
`Caraceni then makes clear that, while operating in the “hybrid mode,”
`activation of the engine is controlled automatically by a Vehicle
`Management Unit (VMU), not manually by the driver.
`The hybrid system is managed by a Vehicle Management Unit
`(VMU) which implements the working strategies of the vehicle
`and activates the two drive trains through the inverter for the
`electric motor and the engine electronic control unit
`respectively.
`
`
`Ex. 1203, 6 (emphasis added). Ford’s declarant, Dr. Davis, explains that the
`VMU is a controller that receives and transmits commands to an
`“electromagnetic clutch switch” connected to the engine’s transmission for
`controlling activation and operation of the engine. Ex. 1215 ¶¶ 205–209,
`251–252 (citing Ex. 1203, Fig. 10). Dr. Davis further explains that, in the
`hybrid mode, the VMU controls operation of the electric motor through an
`“inverter interface” to act as either a traction motor or a generator. Id.
`¶¶ 218–220, 230–237, 269. Based on Dr. Davis’s testimony of a skilled
`artisan’s understanding of Caraceni, we find that Caraceni teaches a
`controller that automatically starts and operates the engine in a