Paper 12
`Entered: October 26, 2015
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`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 IPR2015-00801
`Patent 7,237,634 B2
`____________
`
`
`
`Before JAMESON LEE, SALLEY C. MEDLEY, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Entered: October 26, 2015
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`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 IPR2015-00801
`Patent 7,237,634 B2
`____________
`
`
`
`Before JAMESON LEE, SALLEY C. MEDLEY, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-00801
`Patent 7,237,634 B2
`
`
`A.
`
`Background
`
`I.
`
`INTRODUCTION
`
`
`
`Petitioner filed a Petition (“Pet.”) for inter partes review of U.S.
`
`Patent No. 7,237,634 B2 (“the ’634 patent”). Paper 1. The Petition
`
`challenges the patentability of claims 80, 111, 114, 144, 241, 264, 266, 267,
`
`278–280, and 282–291. Patent Owner filed a Preliminary Response
`
`(“Prelim. Resp.”).1 After considering the Petition and Preliminary
`
`Response, we are persuaded, under 35 U.S.C. § 314(a), that Petitioner has
`
`demonstrated a reasonable likelihood that claims 111, 144, 241, 264, 266,
`
`267, 278–280, and 282–291 are unpatentable. Pursuant to our authority
`
`under 37 C.F.R. § 42.4(a), we institute an inter partes review of claims 111,
`
`144, 241, 264, 266, 267, 278–280, and 282–291.
`
`
`
`Claims 80 and 114, however, have been challenged by the Petitioner
`
`on the same ground of unpatentability in IPR2014-01416, in which trial
`
`already was instituted on March 12, 2015. We decline to consider claims 80
`
`and 114 in this proceeding.
`
`B.
`
`Related Matters
`
`
`
`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.).
`
`
`
`1 A confidential version was filed as Paper 9, subject to a Motion to Seal
`(Paper 11), and a public redacted version was filed as Paper 10.
`
`
`2
`
`
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`IPR2015-00801
`Patent 7,237,634 B2
`
`
`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 IPR2015-00800.
`
`C.
`
`The ’634 Patent
`
`
`
`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. 1851, 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
`
`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.
`
`3
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`
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`IPR2015-00801
`Patent 7,237,634 B2
`
`
`Of the challenged claims, independent claims 241 and 267 are
`
`illustrative, and are reproduced below.
`
`241. 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;
`controlling said engine such that combustion of fuel within the
`engine occurs substantially at a stoichiometric ratio, wherein
`said controlling the engine comprises limiting a rate of
`change of torque output of the engine; and
`if the engine is incapable of supplying instantaneous torque
`required to propel the hybrid vehicle, supplying additional
`torque from the at least one electric motor.
`
`Id. at 81:33–58.
`
`267. 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
`
`4
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`IPR2015-00801
`Patent 7,237,634 B2
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`torque above the SP, and wherein the SP is substantially less
`than the MTO;
`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
`rotating the engine before starting the engine such that its
`cylinders are heated by compression of air therein.
`
`Id. at 83:60–84:11.
`
`D.
`
`Evidence Relied Upon
`
`
`Prior Art References
`
`Date
`
`Exhibit
`
`Severinsky ’970 U.S. Pat. No. 5,343,970
`
`Sept. 6, 1994
`
`Ex. 1854
`
`Yamaguchi
`
`U.S. Pat. No. 5,865,263
`
`Feb. 2, 1999
`
`Ex. 1855
`
`Lateur
`
`U.S. Pat. No. 5,823,280
`
`Oct. 20, 1998
`
`Ex. 1856
`
`Suga
`
`U.S. Pat. No. 5,623,104
`
`Apr. 22, 1997
`
`Ex. 1857
`
`1994
`
`Ex. 1858
`
`Vittone
`
`Oreste Vittone et al., Fiat
`Conceptual Approach to
`Hybrid Car Design, The
`12th International Electric
`Vehicle Symposium (EVS-
`12), Vol. 2, pp. 458–469
`(1994)
`
`Frank
`
`U.S. Pat. No. 5,842,534
`
`Dec. 1, 1998
`
`Ex. 1859
`
`
`
`
`
`Petitioner also relies on the Declaration of Dr. Jeffrey L. Stein.
`
`Ex. 1852.
`
`
`
`
`
`5
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`IPR2015-00801
`Patent 7,237,634 B2
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`E.
`
`
`
`The Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`References
`
`Basis
`
`Claims Challenged
`
`Severinsky ’970 and
`Yamaguchi
`
`§ 103(a)
`
`267, 278–280, 282, 284,
`285, 289, and 290
`
`Severinsky ’970,
`Yamaguchi, and Lateur
`
`Severinsky ’970,
`Yamaguchi, and Suga
`
`Severinsky ’970 and
`Vittone
`
`Severinsky ’970, Vittone,
`and Yamaguchi
`
`Severinsky ’970, Vittone,
`and Suga
`
`Severinsky ’970 and
`Frank
`
`Severinsky ’970, Frank,
`and Yamaguchi
`
`§ 103(a)
`
`283, 286, 287, and 288
`
`§ 103(a)
`
`291
`
`§ 103(a)
`
`241
`
`§ 103(a)
`
`264
`
`§ 103(a)
`
`266
`
`§ 103(a)
`
`80 and 114
`
`§ 103(a)
`
`111 and 144
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`
`
`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); In
`
`re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).
`
`6
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`IPR2015-00801
`Patent 7,237,634 B2
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`Even 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 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). If a feature is not necessary to give meaning to what
`
`the inventor means by a claim term, it would be “extraneous” and should not
`
`be read into the claim. 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
`
`80, 114, 241, and 267. 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.”
`
`Ex. 1851, 12:42–61. Accordingly, we construe “road load” and “RL” as
`
`“the amount of instantaneous torque required to propel the vehicle, be it
`
`7
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`IPR2015-00801
`Patent 7,237,634 B2
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`positive or negative.” This construction is the same as that proposed by
`
`Petitioner. Pet. 7. Patent Owner does not propose a different construction.
`
`“setpoint (SP)”
`
`
`
`The term “setpoint” or “SP” is recited in each of independent claims
`
`80, 114, 241, and 267. Petitioner proposes that “setpoint” or “SP” be
`
`construed, in the context of these claims, as “predetermined torque value.”
`
`Pet. 8. 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.
`
`Pet. 7. Each of claims 80, 114, 241, and 267 recites a condition “when the
`
`RL required to do so is less than a setpoint (SP).” Ex. 1851, 65:17–18,
`
`68:41–42, 81:39–40; 83:66–67. Each of claims 80, 114, 241, and 267
`
`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 65:20–22, 68:47–49, 81:42–44; 84:2–4.
`
`Thus, although Patent Owner correctly notes that the Specification outside of
`
`the claims refers to two items being measurable against respective setpoints,
`
`i.e., the vehicle’s instantaneous torque requirement and the state of charge of
`
`the battery bank, Prelim. Resp. 12–13, the setpoint in these claims relates to
`
`torque and not battery charge.
`
`
`
`Patent Owner asserts that “setpoint” or “SP” is not simply a numerical
`
`value divorced from the context of the rest of the vehicle’s control system,
`
`and that a “setpoint” serves the crucial function of marking the transition
`
`from one claimed mode to another, and in particular, the transition from
`
`8
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`IPR2015-00801
`Patent 7,237,634 B2
`
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`propelling the vehicle with the motor to propelling the vehicle with the
`
`engine. Prelim. Resp. 8–9. Citing the Specification, Patent Owner further
`
`states that the Specification uses “setpoint” synonymously with “transition
`
`point.” Id. at 9. Accordingly, Patent Owner urges that the construction of
`
`“setpoint” or “SP” must include an indication that it is a point at which a
`
`transition between different operating modes may occur. Id. at 11.
`
`
`
`Patent Owner’s arguments are misplaced. The Specification outside
`
`of the claims sometimes uses “setpoint” interchangeably with “transition
`
`point,” because the disclosure describes the particular transitions between
`
`operative modes, at the setpoints. If the multiple transitions between modes
`
`are not described, it would be without meaning to refer to a “setpoint” as a
`
`transition point between modes. A transition does not spring solely from the
`
`term “setpoint” or “SP.” It would be improper to read into a claim all of the
`
`disclosed operational modes and all disclosed transitions between modes
`
`simply because the claim recites the “setpoint” or “SP.”
`
`
`
`Patent Owner does not urge that “setpoint” or “SP” requires any
`
`particular transition from mode to mode. Instead, Patent Owner merely
`
`desires to add that a “setpoint” is where a transition between operating
`
`modes “may occur.” Id. Nothing of significance is added by that proposed
`
`construction. If a transition is specified by other limitations in the claim, at
`
`the setpoint, then a transition is required at the setpoint. If no transition is
`
`specified by other limitations in the claim, then no transition is required at a
`
`setpoint. Thus, it already is the case that a transition may or may not occur
`
`at a setpoint, depending on what else is recited in the claim. It is not
`
`9
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`IPR2015-00801
`Patent 7,237,634 B2
`
`
`necessary to include such “may occur” language in the construction of
`
`“setpoint” and “SP.” A multitude of events “may occur” at a setpoint, but
`
`they are not necessary for setting forth the meaning of setpoint” or “SP” in a
`
`claim. The rest of the claim sets forth what is required to occur at a setpoint.
`
`
`
`Nevertheless, we do regard as meaningful to note that 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.
`
`
`
`We construe “setpoint” and “SP” as “predetermined torque value that
`
`may or may not be reset.”
`
`“mode I,”
`“low-load operation mode I,”
`“high-way cruising operation mode IV,”
`“acceleration operation mode V”
`
`
`
`Claim 285 depends from independent claim 267. Claim 285 recites
`
`limitations referring to “low-load operation mode I,” “high-way cruising
`
`operation mode IV,” and “acceleration operation mode V.” Claim 286
`
`depends from claim 285 and recites a limitation referring to “mode I.” The
`
`Specification of the ’634 patent does set 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. 1851, 35:63–36:1 (emphasis added).
`
`10
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`IPR2015-00801
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`Petitioner proposes a construction for “mode I” that disregards the “all
`
`torque” requirement quoted above. Pet. 9. 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” the same as we do “mode I,” because it is evident that “low-load operation
`
`mode I” is 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. 1851, 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. 9. We construe “high-way cruising mode” 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:
`
`11
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`IPR2015-00801
`Patent 7,237,634 B2
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`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.
`
`Ex. 1851, 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. We construe “acceleration operation mode V” as “a mode of
`
`operation in which torque provided to the wheels are supplied by the internal
`
`combustion engine and at least one electric motor.”
`
`“abnormal and transient conditions”
`
`
`
`Claim 290 depends from independent claim 267 and additionally
`
`requires: “operating the engine at torque output levels less than the SP under
`
`abnormal and transient conditions to satisfy drivability and/or safety
`
`considerations.” Id. at 86:5–7. The term “abnormal and transient
`
`conditions” is not defined or described in any particularity in the
`
`Specification.
`
`
`
` Petitioner asserts that the term “abnormal and transient conditions” is
`
`defined in the parent application of the ’634 patent, i.e., Application
`
`12
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`10/382,577, which issued as U.S. Patent No. 7,104,347 B2 (“the ’347
`
`patent”). Pet. 9. The source of the alleged definition is claim 22 of the ’347
`
`patent, which reads, in pertinent part: “said [abnormal and transient
`
`conditions] comprising starting and stopping of the engine and provision of
`
`torque to satisfy drivability or safety considerations.” Ex. 1866, 60:17–21.
`
`The quoted claim language from the ’347 patent does not present a
`
`definition but merely identifies open-ended examples of “abnormal and
`
`transient conditions,” i.e., (1) starting and stopping of the engine, and (2)
`
`provision of torque to satisfy drivability or safety considerations. Moreover,
`
`it is unclear what is abnormal or transient about “provision of torque to
`
`satisfy drivability or safety considerations.”
`
`
`
`Patent Owner asserts that Petitioner’s open-ended construction causes
`
`confusion, and urges that the Board make clear that “abnormal and transient
`
`conditions” does not include “city traffic and reverse operation.” Prelim.
`
`Resp. 13–15. Patent Owner notes that it had made that distinction in the
`
`prosecution history of a related patent, i.e., U.S. Patent No. 8,214,097 B2
`
`(Ex. 2801, 238). Prelim. Resp. 14. It appears, however, unsupported to
`
`exclude operation in city traffic and reverse operation in their entirety
`
`including any abnormal and transient conditions which may occur within
`
`them. It is also uncertain just precisely what constitutes city traffic.
`
`
`
`For the foregoing reasons, we are unpersuaded by either the
`
`contention of Petitioner or that of Patent Owner. Nevertheless, it is not
`
`necessary that we expressly construe “abnormal and transient conditions”
`
`beyond determining merely that examples of such conditions include starting
`
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`the engine and stopping the engine. In the context of the Specification of the
`
`’634 patent, we regard both starting the engine and stopping the engine as an
`
`abnormal and transient condition, as compared to the other disclosed
`
`conditions of operating the engine, as disclosed in the Specification.
`
`B.
`
`
`
`
`Claims 267, 278–280, 282, 284, 285, 289, and
`290 as Obvious over Severinsky ’970 and Yamaguchi
`
`Petitioner asserts that claims 267, 278–280, 282, 284, 285, 289, and
`
`290 are unpatentable, under 35 U.S.C. § 103, as obvious over Severinsky
`
`’970 and Yamaguchi. Pet. 10–33. Claim 267 is independent and the rest of
`
`these claims depend directly from claim 267. With respect to claim 267,
`
`Petitioner relies on Severinsky ’970 as describing all limitations except for
`
`what is labeled as limitation [267.5] in the Petition: “rotating the engine
`
`before starting the engine such that its cylinders are heated by compression
`
`of air therein.” For limitation [267.5], Petitioner relies on Yamaguchi. Pet.
`
`22–24.
`
`
`
`Severinsky’970 describes a hybrid vehicle that operates in a plurality
`
`of modes, including: (1) a low-speed, electric motor mode in which
`
`“inefficiency and pollution” of the engine is eliminated (e.g., city driving);
`
`(2) a high-speed, engine mode in which the engine operates “near maximum
`
`efficiency” (e.g., highway cruising); (3) a hybrid mode in which both the
`
`engine and the electric motor power the vehicle when road load exceeds
`
`maximum torque output of the engine (e.g., accelerating or hill climbing);
`
`and (4) a battery charging mode in which the engine operates a generator to
`
`recharge the battery (e.g., braking or coasting). Ex. 1854, 6:26–48, 7:8–26.
`
`14
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`Severinsky ’970 describes:
`
`A microprocessor receives control inputs from the driver
`
`of the vehicle and monitors the performance of the electric
`motor and the internal combustion engine, the state of charge of
`the battery, and other significant variables. The microprocessor
`determines whether the internal combustion engine or the
`electric motor or both should provide torque to the wheels
`under various monitored operating conditions.
`
`Id. at 6:19–26 (emphasis added). Severinsky ’970 further describes:
`
`More particularly, according to the invention, the internal
`
`combustion engine is operated only under the most efficient
`conditions of output power and speed. When the engine can be
`used efficiently to drive the vehicle forward, e.g., in highway
`cruising, it is so employed. Under other circumstances, e.g. in
`traffic, the electric motor alone drives the vehicle forward and
`the internal combustion engine is used only to charge the
`batteries as needed.
`
`Id. at 7:8–16 (emphasis added).
`
`
`
`Severinsky’970 discloses that to maximize efficiency, it uses a
`
`controller that operates the engine “only in the near vicinity of its most
`
`efficient operational point, that is, such that it produces 60-90% of its
`
`maximum torque whenever operated.” Id. at 20:63–67 (emphasis added).
`
`According to Severinsky ’970, that alone will yield improvement in fuel
`
`economy on the order of 200–300%. Id. at 20:67–68.
`
`
`
`Claim 267 recites: “determining instantaneous road load (RL)
`
`required to propel the hybrid vehicle responsive to an operator command.”
`
`We are sufficiently persuaded by Petitioner that that step takes place in
`
`
`
`
`
`15
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`IPR2015-00801
`Patent 7,237,634 B2
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`Severinsky ’970 even though Severinsky ’970 does not use identical
`
`language to describe the same.
`
`
`
`For instance, Severinsky ’970 describes that microprocessor 48 is
`
`provided with all information relevant to the performance of the system, and
`
`appropriately controls torque transfer unit 28, internal combustion engine 40,
`
`and electric motor 20 “to ensure that appropriate torque is delivered to the
`
`wheels 34 of the vehicle.” Id. at 12:64–13:2 (emphasis added). Severinsky
`
`’970 also describes that microprocessor 48 monitors the operator’s inputs
`
`and the vehicle’s performance, and activates electric motor 20 when torque
`
`in excess of the capabilities of engine 40 is required. Id. at 14:15–18.
`
`
`
`Throughout its disclosure, Severinsky ’970 describes having the
`
`vehicle in various modes of operation depending on the magnitude of the
`
`torque required to drive the vehicle. In one mode, electric motor 20 provides
`
`“all of the torque needed to move the vehicle.” Id. 10:66–68. In another
`
`mode, the internal combustion engine and electric motor together provide
`
`“all torque required to drive the vehicle.” Id. at 13:66–68. In still another
`
`mode, the microprocessor activates electric motor 20 when torque in access
`
`of the capability of engine 40 is required. Id. at 14:15–18.
`
`
`
`Petitioner’s technical witness, Dr. Stein, testifies that one with
`
`ordinary skill in the art would have understood Severinsky ’970 as
`
`disclosing that microprocessor 48 determines the torque required to propel
`
`the vehicle based on operator’s inputs and vehicle performance, and then
`
`compares the torque required to the engine’s capabilities before activating
`
`electric motor 20, if the required torque is beyond the maximum torque
`
`16
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`IPR2015-00801
`Patent 7,237,634 B2
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`output of the engine. Ex. 1852 ¶ 139. Dr. Stein also testifies that one with
`
`ordinary skill in the art would have understood Severinsky ’970 as
`
`disclosing that microprocessor 48 monitors the instantaneous torque required
`
`to propel the vehicle so that motor 20 can be controlled to supply additional
`
`torque. Id. ¶ 141.
`
`
`
`Claim 267 recites in what Petitioner identifies (Pet. 14) as limitation
`
`[267.2] the step of “operating at least one electric motor to propel the hybrid
`
`vehicle when the RL required to do so is less than a setpoint (SP),” and what
`
`Petitioner identifies (Pet. 14) as limitation [267.3] the step of “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.” We are sufficiently persuaded by Petitioner that those two steps
`
`takes place in Severinsky ’970 even though Severinsky ’970 does not use
`
`identical language to describe the same.
`
`
`
`Severinsky ’970 states: “[t]he internal combustion engine is run only
`
`in the near vicinity of its most efficient operational point, that is, such that it
`
`produces 60–90% of its maximum torque whenever operated.” Ex. 1854,
`
`20:63–67. Severinsky ’970 also states that when the engine can be used
`
`efficiently, it is so employed, and that under other circumstances, the electric
`
`motor alone drives the vehicle. Id. at 7:11–16.
`
`
`
`Dr. Stein explains that in Severinsky ’970, because the engine is not
`
`operated below 60% of MTO (maximum torque output of the engine), 60%
`
`17
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`IPR2015-00801
`Patent 7,237,634 B2
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`MTO is a “setpoint” at or above which the engine is operated to propel the
`
`vehicle, and that when road load is between this setpoint and the MTO, e.g.,
`
`75% MTO, the engine alone produces the required torque. Ex. 1852 ¶¶ 159–
`
`161. Dr. Stein also explains that the 60% MTO referred to in Severinsky
`
`’970 is a setpoint below which only the electric motor is operated to propel
`
`the vehicle. Id. In particular, Dr. Stein states that a person of ordinary skill
`
`in the art would have understood that Severinsky ’970 discloses “a
`
`predetermined torque value or setpoint” that is 60% of the engine’s
`
`maximum torque output. Id. ¶ 161. Dr. Stein further explains that the 60%
`
`of MTO setpoint is substantially less than the MTO, citing claim 15 of the
`
`’634 patent, which indicates that 70% MTO qualifies as substantially less
`
`than the MTO. Id. ¶¶ 190–192. Dr. Stein also explains that in the context of
`
`the ’634 patent, which regards a range of 30-50% of MTO as varying
`
`substantially, a difference of at least 20% MTO is substantial in the context
`
`of the ’634 patent. Id. ¶¶ 188–189.
`
`
`
`Claim 267 recites in what Petitioner identifies as limitation [267.4] the
`
`step of “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.” As is pointed out by Petitioner (Pet. 22), Severinsky ’970
`
`describes: “Microprocessor 48 monitors the operator’s inputs and the
`
`vehicle’s performance, and activates electric motor 20 when torque in excess
`
`of the capabilities of engine 40 is required.” Ex. 1854, 14:15–18. In that
`
`connection, the ’634 patent itself states: “Where the road load exceeds the
`
`engine’s maximum torque for a relatively short period less than T, the
`
`18
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`IPR2015-00801
`Patent 7,237,634 B2
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`traction motor (and possibly also the starting motor) are used to provide
`
`additional torque, as in the [Severinsky] ’970 patent and above.” Ex. 1851,
`
`44:65–45:2 (emphasis added). Dr. Stein testifies and explains why
`
`Severinsky ’970 discloses limitation [267.4]. Ex. 1852 ¶¶ 193–199.
`
`
`
`For what Petitioner identifies as limitation [267.5], Petitioner relies on
`
`the disclosure of Yamaguchi. Pet. 22–24. Petitioner’s positions are
`
`supported by the testimony of Dr. Stein. Ex. 1852 ¶¶ 200–208. Petitioner
`
`articulates reasoning for combining the teachings of Severinsky ’970 and
`
`Yamaguchi. Pet. 24–25. The articulated reasoning is supported by the
`
`testimony of Dr. Stein. Ex. 1852 ¶¶ 314–315.
`
`
`
`Patent Owner argues that Petitioner improperly incorporates
`
`arguments from Dr. Stein’s declaration into the Petition, i.e., by citing to
`
`excessive number of paragraphs of the declaration without corresponding
`
`explanation in the Petition. Prelim. Resp. 28–29. We do not find that to be
`
`the case with respect to claim 267 and the challenged claims depending from
`
`claim 267, at least not to the extent of dismissing a challenge or declining to
`
`consider certain testimony.
`
`
`
`There is not a per se rule that all explanations must be reproduced in
`
`the Petition. A rule of reason applies. Patent Owner has not shown that the
`
`circumstance here is so egregious that we should not consider the testimony
`
`relied on by Petitioner in support of the assertion of unpatentability of claim
`
`267 and challenged claims depending on claim 267. Patent Owner
`
`specifically identifies, for example, page 22 of the Petition which cites to
`
`Dr. Stein’s declaration paragraphs 153–192. But the majority of paragraphs
`
`19
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`IPR2015-00801
`Patent 7,237,634 B2
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`153–192 are specifically referenced within the discussion appearing on
`
`pages 14–17 of the Petition. We are not persuaded that Petitioner has not
`
`explained the relevance of the cited testimony. Similarly, with respect to
`
`claim 267 and challenged claims depending on claim 267, we reject Patent
`
`Owner’s contention that “[t]he Petition creates an overly voluminous record”
`
`to be considered. Prelim. Resp. 31.
`
`
`
`Patent Owner further contends that Petitioner improperly has
`
`incorporated by reference by, within the Petition, citing and applying other
`
`sections of the Petition. Prelim. Resp. 30. There is no per se rule against
`
`such internal cross-referencing. If carefully done, it avoids duplication and
`
`renders the Petition more readable. We have no lack of clarity issues with
`
`Petitioner’s use of internal cross-referencing in this case.
`
`
`
`Patent Owner asserts that Petitioner has not adequately identified
`
`differences between the claimed invention and the prior art, and that it is
`
`unclear from the Petition whether, for certain claim elements, Petitioner is
`
`saying that Severinsky ’970 discloses the claim element or simply renders
`
`obvious the claim element. Prelim. Resp. 33–36. We are unpersuaded by
`
`that assertion, with respect to claim 267 and the challenged claims
`
`depending from claim 267. Whatever disclosure from each prior art
`
`reference, listed in Petitioner’s claim charts in a corresponding location
`
`opposite a reproduced claim limitation, is a representation that that
`
`disclosure meets the associated claim limitation.
`
`
`
`Patent Owner takes issue with the meaning of Petitioner’s statements
`
`expressing that one with ordinary skill in the art “would have understood”
`
`20
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`IPR2015-00801
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`the prior art’s disclosure in a certain way. According to Paten
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