Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Entered: September 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00800
`Patent 7,237,634 B2
`____________
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`Paper 32
`Entered: September 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00800
`Patent 7,237,634 B2
`____________
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2015-00800
`Patent 7,237,634 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Ford Motor Company (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`for inter partes review of U.S. Patent No. 7,237,634 B2 (Ex. 1901, “the ’634
`patent”). The Petition challenges the patentability of claims 80, 91, 92, 95,
`96, 99, 100, 102, 106, 114, 125, 126, 129, 132, 133, 135, 161, 172, 215, 226,
`230, 233, and 234 of the ’634 patent. In an Initial Decision, we instituted
`inter partes review of six claims, i.e., claims 161, 172, 215, 226, 230, and
`234, but declined to institute review of the other sixteen challenged claims.
`Paper 12 (“Dec. Inst.”).
`Paice LLC and The Abell Foundation, Inc. (“Patent Owner”) filed a
`Patent Owner Response (Paper 15, “PO Response”), and Petitioner filed a
`Reply (Paper 19, “Reply”).1 Oral hearing was held on June 29, 2016. A
`transcript of the oral hearing is included in the record. Paper 31 (“Tr.”).
`Neither party filed a motion to exclude evidence.
`For reasons discussed below, we (1) dismiss the inter partes review
`
`with respect to claims 161 and 215, and (2) determine that Petitioner has
`shown by a preponderance of the evidence that each of claims 172, 226, 230,
`and 234 is unpatentable.
`
`
`
`
`
`
`1 In addition, Patent Owner filed a Motion for Observation on Cross-
`Examination (Paper 23) and Petitioner filed a Response to Motion for
`Observation on Cross-Examination (Paper 26), both of which have been
`considered.
`
`2
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`IPR2015-00800
`Patent 7,237,634 B2
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`Related Matters
`B.
`Petitioner and Patent Owner collectively identify the following civil
`
`actions in which the ’634 patent has been asserted: (1) Paice LLC et al. v.
`Ford Motor Company, Case No. 1-14-cv-00492 (D. Md.); (2) Paice LLC et
`al. v. Hyundai Motor America, et al., Case No. 1:2012-cv-00499 (D. Md.).
`Papers 1, 5. The ’634 patent also is the patent involved in the following
`inter partes review proceedings: IPR2014-00904, IPR2014-01416,
`IPR2015-00606, IPR2015-00722, IPR2015-00758, IPR2015-00784,
`IPR2015-00785, IPR2015-00787, IPR2015-00790, IPR2015-00791,
`IPR2015-00799, and IPR2015-00801.
`
`The ’634 Patent
`C.
`The ’634 patent describes a hybrid vehicle with an internal
`
`combustion engine, at least one electric motor, and a battery bank, all
`controlled by a microprocessor that directs torque transfer between the
`engine, the motor, and the drive wheels of the vehicle. Ex. 1901, 17:17–56,
`Fig. 4. The microprocessor compares the vehicle’s torque requirements and
`the engine’s torque output against a predefined setpoint and uses the results
`of the comparison to control the vehicle’s mode of operation, e.g., straight-
`electric, engine-only, or hybrid. Id. at 40:16–49. The microprocessor
`utilizes a hybrid control strategy that operates the engine only in a range of
`high fuel efficiency, which occurs when the instantaneous torque required to
`drive the vehicle, or road load (RL), reaches a setpoint (SP) of
`approximately 30% of the engine’s maximum torque output (MTO). Id. at
`20:61–67; see also id. at 13:64–65 (“the engine is never operated at less than
`
`3
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`IPR2015-00800
`Patent 7,237,634 B2
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`30% of MTO, and is thus never operated inefficiently”). Operating the
`engine in a range above the setpoint but substantially less than the maximum
`torque output maximizes fuel efficiency and reduces pollutant emissions of
`the vehicle. Id. at 15:55–58.
`Independent claims 161 and 215 are illustrative, and are reproduced
`below.
`
`
`161. A method for controlling a hybrid vehicle, comprising:
`
`determining instantaneous road load (RL) required to propel the
`hybrid vehicle responsive to an operator command;
`
`
`wherein the hybrid vehicle is operated in a plurality of
`operating modes corresponding to values for the RL and a
`setpoint (SP);
`
`
`operating at least one first electric motor to propel the hybrid
`vehicle when the RL required to do so is less than the SP;
`
`
`wherein said operating the at least one first electric motor to
`drive the hybrid vehicle composes a low-load operation
`mode I;
`
`
`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, wherein the engine is operable to efficiently produce
`torque above the SP, and wherein the SP is substantially less
`than the MTO;
`
`
`wherein said operating the internal combustion engine of the
`hybrid vehicle to propel the hybrid vehicle composes a high-
`way cruising operation mode IV;
`
`4
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`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;
`
`
`wherein said operating both the at least one first electric motor
`and the engine to propel the hybrid vehicle composes an
`acceleration operation mode V;
`
`
`receiving operator input specifying a change in required torque
`to be applied to wheels of the hybrid vehicle; and
`
`
`if the received operator input specifies a rapid increase in the
`req uired torque, changing operation from operating mode I
`directly to operating mode V.
`Id. at 73:42–74:9.
`
`215. A method for controlling a hybrid vehicle, comprising:
`
`determining instantaneous road load (RL) required to propel the
`hybrid vehicle responsive to an operator command;
`
`
`operating at least one electric motor to propel the hybrid vehicle
`when the RL required to do so is less than a setpoint (SP);
`
`
`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, wherein the engine is operable to efficiently produce
`torque above the SP, and wherein the SP is substantially less
`than the MTO; and
`
`
`operating both the at least one electric motor and the engine to
`propel the hybrid vehicle when the torque RL required to do
`so is more than the MTO; and
`
`
`
`5
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`regeneratively charging a battery of the hybrid vehicle when
`instantaneous torque output of the engine > the RL, when
`the RL is negative, and/or when braking is initiated by an
`operator of the hybrid vehicle.
`Id. at 79:10–31.
`
`Claim 172 depends from claim 161. Each of claims 226, 230,
`and 234 depends from claim 215.
`
`Date
`
`Exhibit
`
`Sept. 6, 1994 Ex. 1905
`
`Nov. 1987
`
`Ex. 1906
`
`Jan. 1988
`
`Ex. 1907
`
`Evidence Relied Upon
`
`D.
`
`
`Prior Art References
`
`J.R. Bumby et al., Computer
`Modelling of the Automotive
`Energy Requirements for
`Internal Combustion Engine
`and Battery Electric-
`Powered Vehicles, 132:5
`IEE PROC. 265–279 (1985)
`
`J.R. Bumby and I. Forster,
`Optimisation and Control of
`a Hybrid Electric Car,
`134:6 IEE PROC. 373–387
`(1987)
`
`J.R. Bumby and I. Forster,
`A Hybrid Internal
`Combustion Engine/Battery
`Electric Passenger Car for
`Petroleum Displacement,
`202:D1 PROC. INST. MECH.
`ENGRS. 51–64 (1988)
`
`
`
`6
`
`Bumby I
`
`Bumby II
`
`Bumby III
`
`
`
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`
`
`Prior Art References
`
`Bumby IV
`
`Bumby V
`
`Masding
`
`J.R. Bumby and P.W.
`Masding, A Test-Bed Facility
`for Hybrid IC-
`Engine/Battery-Electric
`Road Vehicle Drive Trains,
`10:2 TRANS. INST.
`MEASUREMENT & CONTROL
`87–97 (1988)
`
`J.R. Bumby and P.W.
`Masding, Integrated
`Microprocessor Control of a
`Hybrid I.C. Engine/Battery-
`Electric Automotive Power
`Train, 12:3 TRANS. INST.
`MEASUREMENT & CONTROL
`128–146 (1990)
`
`Philip Wilson Masding,
`Some Drive Train Control
`Problems in Hybrid I.C.
`Engine/Battery Electric
`Vehicles, Durham theses,
`Durham University (1988),
`available at Durham E-
`Theses Online:
`http://etheses.dur.ac.uk/6408/
`
`Date
`
`Exhibit
`
`Apr. 1988
`
`Ex. 1908
`
`Jan. 1990
`
`Ex. 1909
`
`Nov. 2, 19892 Ex. 1910
`
`
`2 Petitioner attached to Masding a declaration from the Chief Operating
`Officer of Durham University, Paulina Lubacz, who testified that Masding
`would have been indexed and searchable by the general public since around
`November 2, 1989, a date stamped on the cover of Masding. Ex. 1910, 1–2.
`7
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`Petitioner also relies on the declarations of Gregory W. Davis,
`
`Ph.D. Ex. 1903 (“first Declaration of Dr. Davis”), Ex. 1951 (“reply
`Declaration”).
`
`E.
`
`The Asserted Grounds of Unpatentability
`The only ground of unpatentability on the basis of which we instituted
`review of any claim in this proceeding is identified below:3
`
`References
`Bumby I, II, III, IV, V,
`and Masding
`
`Basis
`
`§ 103(a)
`
`Claims Challenged
`161, 172, 215, 226, 230,
`and 234
`
`
`II. ANALYSIS
`
`Claim Construction
`A.
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Under
`the rule of broadest reasonable interpretation, claim terms generally also are
`given their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms
`
`
`3 Although Petitioner adds the general knowledge of one with ordinary skill
`in the art to the express statement of each alleged ground of unpatentability
`(Pet. 22, 51), that is not necessary. Obviousness is determined from the
`perspective of one with ordinary skill in the art. We leave out the express
`inclusion of the general knowledge of one with ordinary skill.
`8
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`which are in controversy need to be construed, and only to the extent
`necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`If an inventor acts as his or her own lexicographer, the definition must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998). It is improper to add an extraneous limitation into a
`claim, i.e., one that is added wholly apart from any need for the addition to
`accord meaning to a claim term. See, e.g., Hoganas AB v. Dresser Indus.,
`Inc., 9 F.3d 948, 950 (Fed. Cir. 1993); E.I. du Pont de Nemours & Co. v.
`Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988).
`“road load (RL)”
`The term “road load” or “RL” is recited in each of independent claims
`
`161 and 215. The Specification 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,” and further notes that it “can be positive or
`negative, i.e., when decelerating or descending a hill, in which case the
`negative road load . . . is usually employed to charge the battery bank.” Ex.
`1901, 12:44–61. Accordingly, we construe “road load” and “RL” as “the
`amount of instantaneous torque required to propel the vehicle, be it positive
`or negative.” This construction is the same as that proposed by Petitioner.
`Pet. 9. Patent Owner does not propose a different construction.
`
`
`
`9
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`“setpoint (SP)”
`The term “setpoint” or “SP” is recited in each of independent claims
`
`161 and 215. Petitioner proposes that “setpoint” or “SP” be construed, in the
`context of these claims, as “predetermined torque value.” Pet. 11. In that
`regard, Petitioner correctly notes that the claims compare the setpoint either
`to an engine torque value or a torque based “road load” value. Id. at 10.
`Each of claims 161 and 215 recites a condition “when the RL required to do
`so is less than a setpoint (SP).” Ex. 1901, 73:51–52, 79:16–17. Each of
`claims 161 and 215 further defines a range established by the setpoint at one
`end, and the maximum torque output of the engine at the other end, by the
`language “when the RL required to do so is between the SP and a maximum
`torque output (MTO) of the engine.” Id. at 73:57–59, 79:19–21.
`
`Nothing in the Specification precludes a setpoint from being reset,
`after it has been set. A setpoint for however short a period of time still is a
`setpoint. Accordingly, we construe “setpoint” and “SP” as “predetermined
`torque value that may or may not be reset.”
`
`Patent Owner argues that the claims and the Specification of the ’634
`patent “make clear that a ‘setpoint’ is not simply a numerical value divorced
`from the context of the rest of the control system,” and that “‘setpoint’
`serves the crucial function of marking the transition from one claimed mode
`to another, and in particular, the transition from propelling the vehicle with
`the motor to propelling the vehicle with the engine.” PO Resp. 7. The
`argument is misplaced. Although such use of a setpoint is described by
`other language in the Specification, it is not an intrinsic property of a
`
`10
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`setpoint and is not a necessary and required use of all setpoints. In that
`regard, we further note the following passage in the Specification of the ’634
`patent, which supports not reading in a mode switching requirement into the
`term “setpoint”:
`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. 1901, 19:67–20:6 (emphasis added).
`It is improper to add an extraneous limitation into a claim, i.e., one
`that is added wholly apart from any need for the addition to accord meaning
`to a claim term. See, e.g., Hoganas AB, 9 F.3d at 950; E.I. du Pont de
`Nemours, 849 F.2d at 1433. It is important not to import into a claim
`limitations that are not a part of the claim. SuperGuide Corp. v. DirecTV
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). For example, a
`particular embodiment appearing in the written description may not be read
`into a claim when the claim language is broader than the embodiment. Id.;
`see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). That is no
`different even if the patent specification describes only a single embodiment.
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004).
`Patent Owner brings to our attention that the U.S. District Court for
`the Eastern District of Texas and the U.S. District Court for the District of
`Maryland both have construed “setpoint” to mean “a definite, but potentially
`variable value at which a transition between operating modes may occur.”
`PO Resp. 6 n.1. We note that that construction also does not require that an
`
`11
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`operating mode be changed at a setpoint, as Patent Owner urges. Instead,
`the construction of the district courts sets forth that a transition between
`operating modes “may occur” at a setpoint, which is consistent with our
`construction here.
`Patent Owner additionally argues that “setpoint” should not be limited
`to a torque value, because the Specification makes clear that it also can be
`the state of charge of a battery. PO. Resp. 10. Patent Owner cites to the
`following passage in the Specification:
`[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 percentage of its full
`charge, against setpoints, and uses the results of the comparisons
`to control the mode of vehicle operation.
`Ex. 1901, 40:16–26 (emphasis added). The argument also is
`misplaced. As we noted above, each independent claim 161 and 215
`requires a comparison of the setpoint either to an engine torque value
`or a torque based “road load” value. Thus, in the context of these
`claims, and claims dependent therefrom, a setpoint must be a torque
`value, and not some state of charge of a battery.
`
`For reasons discussed above, we construe “setpoint” and “SP”
`as “predetermined torque value that may or may not be reset.”
`
`
`
`12
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`
`“mode I,”
`“operating mode I”
`“low-load operation mode I,”
`“high-way cruising operation mode IV,”
`“operating mode V”
`“acceleration operation mode V”
`
`Independent claim 161 recites limitations referring to “low-load
`
`operation mode I,” “operating mode I,” “high-way cruising operation mode
`IV,” “acceleration operation mode V,” and “operating mode V.” Claim 234
`depends from claim 215 and recites a limitation referring to “mode I.” The
`Specification of the ’634 patent sets forth a definition for these modes.
`
`With regard to “mode I,” the Specification states:
`
`As noted, during low-speed operation, such as in city
`traffic, the vehicle is operated as a simple electric car, where all
`torque is provided to road wheels 34 by traction motor 25
`operating on electrical energy supplied from battery bank 22.
`This is referred to as “mode I” operation (see FIG. 6), and is
`illustrated in FIG. 8(a).
`
`Ex. 1901, 35:63–36:1 (emphasis added).
`
`Petitioner proposes a construction for “mode I” that disregards the “all
`torque” requirement quoted above. Pet. 11–12. Patent Owner does not
`propose a construction. We construe “mode I,” in accordance with the
`above-quoted description in the Specification, as “a mode of operation of the
`vehicle, in which all torque provided to the wheels are supplied by an
`electric motor.” We construe “low-load operation mode I” and “operating
`mode I,” the same as we do “mode I,” because it is evident that “low-load
`
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`operation mode I” and “operating mode I” are each just another name for
`“mode I.”
`
`With regard to “high-way cruising operation mode IV,” the
`Specification states:
`When the operator releases pressure on the accelerator pedal,
`indicating that a desired cruising speed has been reached, traction
`motor 25 is accordingly depowered. The highway cruising mode
`is referred to as “mode IV” operation, and the flow of energy and
`torque are as illustrated in FIG. 8(c).
`
`Ex. 1901, 36:31–36. Figure 8(c) shows that all power to the wheels are
`supplied from the internal combustion engine. Additionally, the
`Specification states: “[d]uring highway cruising, region IV, 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.” Id. at 37:42–44.
`Petitioner’s proposed construction disregards the exclusivity of the power
`source. Pet. 11–12. Patent Owner does not offer a construction. We
`construe “high-way cruising mode IV” as “a mode of operation in which all
`torque provided to the wheels are supplied by the internal combustion
`engine.”
`
`With regard to “acceleration operation mode V,” the Specification
`states:
`If extra torque is needed during highway cruising, e.g., for
`
`acceleration or hill-climbing, either or both of motors 21 and 25
`can be powered. This “mode V” operation is illustrated in FIG.
`8(d); energy flows from tank 38 to engine 40, and from battery
`bank 22 to traction motor 25, and possibly also to starting motor
`21; torque flows from either or both motors and engine to wheels
`34.
`
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`Ex. 1901, 36:37–43. The Specification further states:
`
`If the operator then calls for additional power, e.g., for
`
`acceleration or passing, region V is entered; that is, when 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. Starting motor 21 can similarly be
`controlled to provide propulsive torque.
`
`Id. at 38:1–8. Patent Owner does not offer a construction. We construe
`“acceleration operation mode V” as “a mode of operation in which torque
`provided to the wheels is supplied by the internal combustion engine and at
`least one electric motor.” Also, “operating mode V” means the same,
`because evidently it is merely an abbreviated name for “acceleration
`operation mode V.”
`That the Claims Require a Comparison
`of Road Load (RL) to Setpoint (SP) and to MTO
`Patent Owner asserts that the challenged claims require a comparison
`of road load (RL) to setpoint (SP) and also to maximum torque output
`(MTO). PO Resp. 11–13. The assertion is based on the requirements in
`claims 161 of (1) operating at least one first electric motor to propel the
`hybrid vehicle “when the RL required to do so is less than the SP,”
`(2) 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,” and (3) operating both the at
`least one first electric motor and the engine to propel the hybrid vehicle
`
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`“when the torque RL required to do so is more than the MTO,” and
`essentially the same recitations in claim 215.
`In the above discussion of the construction of setpoint, we already
`noted that claims 161 and 215 each require a comparison of road load to a
`setpoint because of the claim recitations “when the RL required to do so is
`less than the SP” and “when the RL required to do so is between the SP and
`a maximum torque output (MTO) of the engine.” For similar reason, claims
`161 and 215 each require a comparison of road load to a maximum torque
`output (MTO) because of the recitation “when the torque RL required to do
`so is more than the MTO.” Petitioner has not advanced any cogent
`reasoning why no such comparison is required by the claims. We determine
`that the claims require a comparison of road load (RL) to a setpoint (SP) and
`also to a maximum torque output (MTO). That, however, does not mean the
`claims exclude the comparison of other parameters.
`
`Combining Teachings of Prior Art References
`B.
`
`The Petition is atypical in that it refers to a collection of six prior art
`references, i.e., Bumby I, Bumby II, Bumby III, Bumby IV, Bumby V, and
`Masding, collectively as “the Durham Project.” Pet. 12. Petitioner
`proceeds, in pages 22–55 of the Petition, to apply “the Durham Project” as
`though it were a single publication. However, those portions of the Petition
`only discuss the prior art references generally, in the absence of the context
`provided by any claim limitation. The Petition does include a section titled
`“Overview of the University of Durham Hybrid Project” in pages 12–19,
`and a section titled “Reasons to Combine” in pages 19–22. Patent Owner,
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`however, contends that Petitioner’s approach is categorically improper. PO
`Resp. 13–14. According to Patent Owner, Petitioner “fails to identify the
`differences between the Bumby references and independent claims 161 and
`215,” contrary to the well-established analytical framework for determining
`obviousness, citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`PO Resp. 13–14. Patent Owner states: “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.” Id. at 15.
`Patent Owner further asserts:
`However, the only reasons Ford presents to justify the
`combination of five different references (written by varying
`combinations of four different authors over the course of five
`years, in three different journals), is that the articles share a
`common author and cite to each other. See Pet. at 19 (“Each
`subsequent Bumby publication expressly discusses and cites the
`preceding Bumby publications.”). The mere fact that a
`publication refers to other publications written by a similar group
`of authors, much less a common single author, provides no
`justification for combining the technology of the various
`references.
`Id. at 33.
`Patent Owner is correct in indicating that the mere fact that multiple
`prior art publications refer to each other does not mean everything disclosed
`in each is automatically combinable for use with everything else in the
`disclosure of the others. But the language quoted by Patent Owner above
`from page 19 of the Petition does not simply state that the references refer to
`17
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`each other. Rather, Petitioner notes that “each subsequent Bumby
`publication expressly discusses and cites the preceding Bumby
`publications.” Pet. 19. The Petition also indicates that the references
`“chronologically document[] the progression of a hybrid vehicle project
`from its inception as a software simulation tool, through the design of a
`control strategy for operating the hybrid vehicle, and finishing with the
`physical construction of a test-bed prototype of the hybrid vehicle,” citing
`the Declaration of Mr. Davis. Id.
`We cannot state, as a per se rule, that Petitioner’s atypical approach
`can never be acceptable in any circumstance. Each case depends on its own
`facts. Bumby I is titled: “Computer modelling of the automotive energy
`requirements for internal combustion engine and battery electric-powered
`vehicles.” Ex. 1905, 1. Petitioner explains that Bumby I discloses the
`workings of a software tool called the “Janus simulator.”4 Pet. 12. The
`Janus simulator was developed for simulating either a conventional vehicle
`or a hybrid vehicle. Ex. 1905, 2. Petitioner explains that the Janus simulator
`provides a formula for determining the “net tractive effort” required at the
`road wheels, and also that that tractive effort is what the ’634 patent regards
`as “road load” or “instantaneous torque required for propulsion of the
`vehicle.” Pet. 13.
`
`Petitioner explains that Bumby II describes using the Janus simulator
`disclosed by Bumby I for optimizing the power train control and component
`
`
`4 Bumby I states that its computer modelling program was given the name
`“Janus.” Ex. 1905, 2.
`
`18
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`rating of a hybrid electric vehicle. Id. Indeed, citing Bumby I, Bumby II
`states: “To implement the optimisation process, the hybrid vehicle is
`simulated over a defined driving cycle using the Janus road vehicle
`simulation program [15].” Ex. 1906, 4. In the Initial Decision, we
`determined that the evidence supports the view that all that is disclosed in
`Bumby I is adopted for use in Bumby II. Dec. Inst. 14. Here, we find by a
`preponderance of the evidence that all that is disclosed in Bumby I is
`adopted for use in Bumby II.
`
`Petitioner explains that “[b]ased on the prior hybrid vehicle work,
`Bumby V focused on the ‘additional component control problems relating to
`engine and motor torque control and smooth engine starting.’” Pet. 18.
`Bumby V specifically refers to the optimization results of Bumby II, which
`solved certain problems, and states: “In this paper the additional component
`control problems relating to engine and motor torque control and smooth
`engine starting are addressed.” Ex. 1909, 3. In the Initial Decision, we
`determined that the evidence supports the view that all that is disclosed in
`Bumby II is adopted for use in Bumby V. Dec. Inst. 14. Here, we find by a
`preponderance of the evidence that all that is disclosed in Bumby II is
`adopted for use in Bumby V.
`
`As noted by Petitioner (Pet. 20), referring specifically to Bumby III,
`titled “A hybrid internal combustion engine/battery electric passenger car for
`petroleum displacement,” Bumby V states that “[b]y correct design,” such a
`drive arrangement not only has the potential to reduce exhaust emissions in
`the urban environment substantially, but also of substituting up to 70% of
`
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`the petroleum fuel used by the average road user. Ex. 1909, 2. That
`language indicates agreement with the design disclosed in Bumby III. In the
`Initial Decision, we determined that the evidence supports the view that all
`that is disclosed in Bumby III is adopted for use in Bumby V. Dec. Inst. 14.
`Here, we find by a preponderance of the evidence that all that is disclosed in
`Bumby III is adopted for use in Bumby V.
`
`Bumby IV is titled: “A test-bed facility for hybrid ic-engine/battery-
`electric road vehicle drive trains.” Ex. 1908, 2. Bumby V describes that
`satisfactory performance of the completed controllers is confirmed by using
`an extensive laboratory test facility, and that a complete description of the
`test bed facility is given in Bumby IV. Ex. 1909, 3. In the Initial Decision,
`we determined that the evidence supports the view that all that is disclosed
`in Bumby IV is adopted for use in Bumby V. Dec. Inst. 15. Here, we find
`by a preponderance of the evidence that all that is disclosed in Bumby IV is
`adopted for use in Bumby V.
`
`Regardless of whether there was a common project, the disclosures of
`Bumby I, II, III, IV, and V represent incremental development of technology
`that builds from one to the next, and which one with ordinary skill in the art
`would have recognized as follow-on works adaptable for use collectively.
`They liken to successive pages in an instruction manual or chapters in a
`textbook. In that context, expressly specifically articulating a difference
`between the claimed invention and each Bumby reference is not essential, as
`the differences are implicit based on what Petitioner has cited to in each
`reference.
`
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`Based on the foregoing, the particular facts of this case are sufficient
`
`to support Petitioner’s position regarding Bumby I, II, III, IV, and V,
`collectively, as a combination, and treating Bumby I, II, III, and IV as
`though all their teachings are adopted for use in Bumby V, without need for
`expressing additional reasons to combine teachings, on a limitation by
`limitation basis. To the extent that Patent Owner has raised a “teach away”
`argument, Petitioner properly may address the issue in its Reply, and it has.
`We treat Patent Owner’s “teach away” argument in our substantive analysis
`below.
`
`The same is not true, however, with respect to Masding as an
`additional member of the collection. Petitioner does not identify any
`reference in Bumby V to Masding. According to Petitioner, Masding
`provides a full citation to Bumby V, but Bumby V is subsequent to Masding.
`It appears that Masding does identify in its bibliography an unpublished but
`“submitted” version of Bumby V. Ex. 1910, 253. But no copy of that pre-
`published version was included with the Petition, and Petitioner does not
`identify any substantive description in Masding about Bumby V. The record
`does not support that all the disclosures of Masding are implemented in the
`hybrid vehicle described in Bumby V, or that all the disclosures of Bumby V
`are adopted or incorporated for use in Masding.
`
`With regard to Bumby I, Bumby II, and Bumby III, and Masding,
`Petitioner states:
`Masding provides a section titled “The Context of the Present
`Work” that chronologically details the Durham Project. (Ex.
`1910 [Masding Thesis] at 38-47.) Within this section, Masding
`
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`discusses and expressly references the work published in
`Bumby I, Bumby II, and Bumby III. (Ex. 1910 [Masding Thesi
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