Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`Filed on behalf of Hyundai Motor America
`& Hyundai Motor Company
`By:
`Joseph J. Richetti
`Kevin E. Paganini
`Bryan Cave LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (212) 541-2000
`Fax: (212) 541-4630
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HYUNDAI MOTOR AMERICA, INC., HYUNDAI MOTOR COMPANY,
`KIA MOTORS CORPORATION & KIA MOTORS AMERICA, INC.
`Petitioners
`
`v.
`
`PAICE LLC &
`ABELL FOUNDATION, INC.
`Patent Owners
`
`Case: To Be Assigned
`U.S. Patent No. 7,237,634
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. §42.100 ET SEQ.
`(CLAIMS 80, 93, 94, 96, 99, 106, 107, 108, 113, 114, 127, 128, 132, 139, 140,
`141, 146, 215, 229, AND 231 OF U.S. PATENT NO. 7,237,634)
`
`

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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`TABLE OF CONTENTS
`
`Page
`
`EXHIBIT LIST ........................................................................................................ iv
`
`I.
`
`INTRODUCTION ...........................................................................................1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8...................................1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1).....................................1
`
`Related Matters - 37 C.F.R. § 42.8(b)(2) ..............................................2
`
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3) ...........................3
`
`Service Information - 37 C.F.R. § 42.8(b)(4) .......................................3
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104............................................3
`
`A.
`
`B.
`
`C.
`
`Grounds for Standing - 37 C.F.R. § 42.104(a)......................................3
`
`Challenged Claims - 37 C.F.R. §42.104(b)(1)......................................3
`
`Grounds of Challenge - 37 C.F.R. §42.104(b)(2) .................................4
`
`IV. OVERVIEW OF THE ’634 PATENT ............................................................5
`
`A.
`
`B.
`
`Prosecution History of the ’634 Patent .................................................5
`
`Independent Claims 33, 161 and 215....................................................6
`
`V.
`
`VI.
`
`PERSON OF ORDINARY SKILL IN THE ART (POSA) ............................7
`
`STATE OF THE ART.....................................................................................7
`
`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3).............................9
`
`A.
`
`B.
`
`C.
`
`road load (RL) and RL ........................................................................10
`
`setpoint (SP) and SP............................................................................10
`
`“mode I,” “low-load operation mode I,” “highway cruising
`operation mode IV,” “acceleration operation mode V”............................12
`
`i
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`D.
`
`“abnormal and transient conditions” (Claims 55 and 239)...............12
`
`VIII. UNPATENTABILITY GROUNDS..............................................................13
`
`A.
`
`Ground 1 – Claims 215 and 229 are Obvious under 35 U.S.C. §
`103 Over Ibaraki ’882 and the General Knowledge of a POSA.........13
`
`1.
`
`2.
`
`3.
`
`4.
`
`Independent Claim 33...............................................................13
`
`Dependent Claim 37 .................................................................34
`
`Independent Claim 215.............................................................37
`
`Dependent Claim 229 ...............................................................38
`
`B.
`
`Ground 2 – Claims 80, 93, 94, 96, 99, 106, 107, 108, 114, 127,
`128, 132, 139, 140, and 141 are Obvious in view of Ibaraki ’882,
`Frank and the General Knowledge of a POSA ...................................39
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Reason to Combine...................................................................39
`
`Dependent Claims 39................................................................41
`
`Dependent Claim 40 .................................................................43
`
`Independent Claim 80...............................................................44
`
`Dependent Claim 93 .................................................................45
`
`Dependent Claim 94 .................................................................46
`
`Dependent Claim 96 .................................................................47
`
`Dependent Claim 99 .................................................................47
`
`Dependent Claim 106 ...............................................................49
`
`10. Dependent Claim 107 ...............................................................50
`
`11. Dependent Claim 108 ...............................................................50
`
`12.
`
`Independent Claim 114.............................................................51
`
`13. Dependent Claims 127..............................................................52
`
`ii
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`14. Dependent Claim 128 ...............................................................52
`
`15. Dependent Claim 132 ...............................................................53
`
`16. Dependent Claim 139 ...............................................................53
`
`17. Dependent Claim 140 ...............................................................53
`
`18. Dependent Claim 141 ...............................................................53
`
`C.
`
`Ground 3 – Claims 113 and 146 are obvious under 35 U.S.C. §103
`in view of Ibaraki ’882, Frank, Suga and the General Knowledge
`of a POSA............................................................................................54
`
`1.
`
`2.
`
`Motivation to Combine.............................................................54
`
`Dependent Claims 113 and 146 ................................................54
`
`D.
`
`Ground 4 – Claim 231 is obvious in view of Ibaraki ’882, Jurgen,
`Lateur and the General Knowledge of a POSA ..................................55
`
`1.
`
`2.
`
`Motivation to Combine.............................................................56
`
`Claim 231..................................................................................59
`
`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS......................................59
`
`X.
`
`CONCLUSION..............................................................................................60
`
`iii
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`Case To Be Assigned
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`EXHIBIT LIST
`
`Exhibit
`No.
`1450
`1451
`1452
`1453
`1454
`1455
`1456
`1457
`1458
`
`1459
`
`1460
`
`1461
`1462
`
`1463
`1464
`
`1465
`1466
`
`1467
`
`1468
`
`1469
`
`1470
`
`1471
`1472
`
`Description
`U.S. Patent No. 7,237,634
`Ford Letter to Paice
`US Patent 5,789,882
`US Patent 6,003,626
`US Patent 5,623,104
`Declaration of Gregory Davis
`Toyota Litigations
`Hyundai Litigation
`PTAB Decisions & Preliminary
`Response in 2014-00571
`7,237,634 File History (certified)
`
`Excerpt of USPN 7,104,347 File
`History
`US Patent 7,104,347
`Fundamentals of Vehicle
`Dynamics (Gillespie)
`SAE 760121 (Unnewehr-1976)
`Microprocessor Design for HEV
`(Bumby-1988)
`SAE SP-1331 (1998)
`Innovations in Design: 1993 Ford
`Hybrid Electric Vehicle Challenge
`1996 & 1997 Future Car
`Challenge
`Introduction to Automotive
`Powertrain (Davis)
`US Application 60-100095
`
`History of Hybrid Electric Vehicle
`(Wakefield-1998)
`SAE 920447 (Burke-1992)
`Vehicle Tester for HEV (Duoba-
`1997)
`
`iv
`
`Identifier
`‘634 Patent
`
`Date
`July 3, 2007
`Sept. 2014
`Ibaraki ‘882
`Aug. 4, 1998
`Dec. 21, 1999 Ibaraki ‘626
`Apr. 22, 1997 Suga
`Davis Dec.
`Toyota Litigation
`Hyundai Litigation
`Ford IPRs
`
`2005
`2013-2014
`
`n/a
`
`n/a
`
`‘634 Patent File
`History
`‘347 File History
`
`Sept. 12, 2006 ‘347 Patent
`1992
`Gillespie
`
`Unnewehr
`Feb. 1, 1976
`Sept. 1, 1988 Bumby/Masding
`1988
`SAE SP-1331
`
`Feb. 1998
`Feb. 1994
`
`Feb. 1997 &
`Feb. 1998
`
`Filed Sept. 11,
`1998
`1998
`
`Davis Textbook
`
`‘095 Provisional
`
`Wakefield
`
`Burke 1992
`Feb. 1, 1992
`Aug. 1, 1997 Duoba 1997
`
`

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`Date
`April 1995
`
`Identifier
`1994 Report to
`Congress
`SAE SP-1156
`Feb. 1996
`Sept. 30, 1979 HEV Assessment
`1979
`EPA HEV Final
`Study
`Nov. 25, 1998 9323263
`Jan. 1998
`Toyota Prius
`Yamaguchi 1998
`672 Patent
`IEEE Eshani 1996
`
`June 1, 1971
`
`April 3, 2001
`1996
`
`Feb. 1997
`
`IEEE Eshani 1997
`
`Oct. 1996
`
`Bosch Handbook
`
`SAE SP-1089
`Feb. 1995
`Aug. 11, 1998 An 1998
`
`May 14-18,
`1973
`
`Kawakatsu
`Oct. 4, 1983
`Sept. 12, 2000 Frank
`Oct. 20, 1998 Lateur
`1995
`Jurgen
`
`Nov. 1987
`
`Bumby II
`
`Sept. 6, 1994
`Feb. 25, 2014
`
`Severinsky ‘970
`
`Exhibit
`No.
`1473
`
`1474
`1475
`
`1476
`
`1477
`1478
`
`1479
`1480
`
`1481
`
`1482
`
`1483
`1484
`
`1485
`
`1486
`1487
`1488
`1489
`1490
`1491
`
`1492
`
`1493
`1494
`
`Description
`DOE Report to Congress (1994)
`
`SAE SP-1156 (1996)
`DOE HEV Assessment (1979)
`
`EPA HEV Final Study (1971)
`
`WO 9323263A1 (Field)
`Toyota Prius (Yamaguchi-1998)
`
`US Patent 6,209,672
`Propulsion System for Design for
`EV (Ehsani-1996)
`Propulsion System Design for
`HEV (Ehsani-1997)
`Bosch Automotive Handbook
`(1996)
`SAE SP-1089 (Anderson-1995)
`Critical Issues in Quantifying HEV
`Emissions (An 1998)
`1973 Development of the Federal
`Urban Driving Schedule (SAE
`730553)
`Gregory Davis Resume
`Gregory Davis Data
`US Patent 4,407,132
`US Patent 6,116,363
`US Patent 5,823,280
`Automotive Electronics
`Handbook (Jurgen)
`Bumby, J.R. et al. “Optimisation
`and control of a hybrid electric car”
`- IEE Proc. A 1987, 134(6)
`US Patent 5,343,970
`Paice Complaint
`
`v
`
`

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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`I.
`
`INTRODUCTION
`
`Petitioner Hyundai Motor America, Inc., Hyundai Motor Company, Kia
`
`Motors Corporation and Kia Motors America, Inc. (“Petitioner”) requests review
`
`of claims 80, 93, 94, 96, 99, 106, 107, 108, 113, 114, 127, 128, 132, 139, 140, 141,
`
`146, 215, 229 and 231 of U.S. Patent No. 7,237,634 (“’634 Patent”) based on the
`
`substantively identical grounds as instituted for the pending IPR2015-00791
`
`proceeding. For the exact same reasons previously considered by the Board,
`
`Petitioner
`
`respectfully seeks to join IPR2015-00791. This Petition asserts
`
`substantively identical arguments in connection with the grounds already instituted
`
`in IPR2015-00791; it does not add to or alter any argument that has already been
`
`considered by the Board, and this Petition does not seek to expand the grounds of
`
`unpatentability that the Board has already instituted. As explained below, there
`
`exists a reasonable likelihood that Petitioner will prevail
`
`in demonstrating
`
`unpatentability of at least one challenged claim. Because this Petition is filed
`
`along with a Motion for Joinder within one month of the institution of IPR2015-
`
`00792, it is timely and proper under 35 U.S.C. § 315(c) and 37 C.F.R. §42.122(b).
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A.
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`
`Petitioner certifies that Hyundai Motor America, Inc., Hyundai Motor
`
`Company, Kia Motors Corporation and Kia Motors America, Inc. are the real
`
`1
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`parties-in-interest.
`
`Related Matters - 37 C.F.R. § 42.8(b)(2)
`B.
`The ‘634 Patent is being asserted in Paice, LLC and the Abell Foundation,
`
`Inc. v. Ford Motor Company, Case No. 1-14-cv-00492 and Paice LLC and The
`
`Abell Foundation, Inc. v. Hyundai Motor America et. al. Case No. 1:2012-cv-
`
`00499. The ‘634 Patent was also previously asserted in Paice, LLC and the Abell
`
`Foundation, Inc. v. Toyota Motor Corporation, et al. Case No. 2-07-cv-00180.
`
`Paice has also asserted U.S. Patent No. 7,104,347 (“‘347 Patent”) in the all of the
`
`foregoing litigations, and has asserted U.S. Patent No. 8,214,097 (“‘097 Patent”) in
`
`the first two of the above litigations. Ford has filed petitions concerning the ‘634
`
`Patent
`
`in IPR2015-00800,
`
`IPR2015-00801,
`
`IPR2015-00799,
`
`IPR2015-00787,
`
`IPR2015-00790,
`
`IPR2015-00785,
`
`IPR2015-00722,
`
`IPR2015-00784,
`
`IPR2015-
`
`00758, IPR2015-00791, IPR2015-00606, IPR2014-01416, and IPR2014-00904.
`
`Ford has filed petitions concerning the ‘347 and ‘097 Patents in IPR2015-00795,
`
`IPR2015-00794,
`
`IPR2014-00884,
`
`IPR2014-00579,
`
`IPR2014-00571,
`
`IPR2014-
`
`00570,
`
`IPR2014-01415 and IPR2015-00792. Petitioner
`
`is separately filing
`
`petitions seeking inter partes review and motions for joinder in the following IPR
`
`proceedings: IPR2015-00758, IPR2015-00784, IPR2015-00785, IPR2015-00790,
`
`IPR2015-00722, IPR2015-00800, IPR2015-00794 and IPR2015-00792.
`
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`C.
`
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
`
`Petitioner appoints Joseph J. Richetti (Reg. No. 47,024) of Bryan Cave LLP
`
`as lead counsel, and appoints Kevin Paganini (Reg. No. 66,286) of Bryan Cave
`
`LLP, as back-up counsel. An appropriate Power of Attorney is filed concurrently
`
`herewith.
`
`D.
`
`Service Information - 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made via
`
`hand-delivery to Bryan Cave LLP, 1290 Avenue of the Americas, New York, NY
`
`10404. Petitioner consents to service by email at joe.richetti@bryancave.com and
`
`kevin.paganini@bryancave.com.
`
`III. REQUIREMENTS UNDER 37 C.F.R. § 42.104
`
`A.
`
`Grounds for Standing - 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that
`
`the ’634 Patent
`
`is available for IPR and that
`
`Petitioner is not barred or estopped from challenging the patent claims on the
`
`grounds in this Petition because this Petition is filed within one month of
`
`institution of IPR2015-00791 along with a Motion for Joinder. 35 U.S.C. § 315(c);
`
`37 C.F.R. §42.122(b).
`
`B.
`
`Challenged Claims - 37 C.F.R. §42.104(b)(1)
`
`Petitioner requests IPR of the ’634 Patent claims 80, 93, 94, 96, 99, 106,
`
`107, 108, 113, 114, 127, 128, 132, 139, 140, 141, 146, 215, 229, and 231 based on
`
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`the substantively identical grounds as instituted for the pending IPR2015-00791
`
`proceeding, and requests that the PTAB cancel those claims as unpatentable.
`
`Grounds of Challenge - 37 C.F.R. §42.104(b)(2)
`C.
`Petitioner relies on the following prior art: (i) Ibaraki ’882 – U.S. Patent
`
`No. 5,789,882 to Ibaraki et al. (hereinafter “Ibaraki ’882”) was filed on July 22,
`
`1996, issued on August 4, 1998, and qualifies as prior art under 35 U.S.C. § 102(a)
`
`& (e). (Ex. 1452 .); (ii) Suga – U.S. patent No. 5,623,104 to Hiroshi Suga
`
`(hereinafter “Suga”) was filed on Jan. 30, 1996, issued on April 22, 1997, and
`
`qualifies as prior art under U.S.C. § 102(b). (Ex. 1454 [Suga].); (iii) Frank – U.S.
`
`Patent No. 6,116,363 to Andrew Frank (hereinafter “Frank”) was filed on April 21,
`
`1998 and issued on September 12, 2000 and qualifies as prior art under 35 U.S.C. §
`
`102(e). (Ex. 1489 [Frank].); (iv) Lateur – U.S. Patent No. 5,823,280 to Lateur et
`
`al. (hereinafter “Lateur”) was filed on January 12, 1995 and issued on October 20,
`
`1998 and qualifies as prior art under 35 U.S.C. § 102(e). (Ex. 1490 [Lateur].); and
`
`(v) Jurgen – “Automotive Electronics Handbook” (hereinafter “Jurgen”) is a 1995
`
`textbook authored by Ronald Jurgen, and qualifies as prior art under 35 U.S.C. §
`
`102(b). (Ex. 1491 [Jurgen].)
`
`The grounds of unpatentability presented in this petition, and on which the
`
`4
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`PTAB instituted review in IPR2015-00791, are as follows:1
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`2
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`3
`
`References
`Ground Basis
`1
`§ 103 Ibaraki ’882 and the general
`knowledge of a POSA
`§ 103 Ibaraki ’882, Frank and the
`general knowledge of a
`POSA
`§ 103 Ibaraki ’882, Suga and the
`general knowledge of a
`POSA
`§ 103 Ibaraki ’882, Jurgen, Lateur
`and the general knowledge
`of a POSA
`
`4
`
`Claims
`Independent claim 215;
`Dependent claim 229
`Claims 80, 93, 94, 96, 99, 106,
`107, 108, 114, 127, 128, 132, 139,
`140, and 141
`Dependent claims 113 and 146
`
`Dependent claims 231
`
`The unpatentability grounds set forth in this Petition are confirmed and
`
`supported by the declaration of Dr. Gregory W. Davis (hereinafter “Davis Dec.”).
`
`(“Davis” at Ex. 1455.)
`
`IV. OVERVIEW OF THE ’634 PATENT
`
`A.
`
`Prosecution History of the ’634 Patent
`
`The ’634 Patent was accorded a filing date of January 13, 2006. (’634 File
`
`1 The challenges in Ford’s Petition that have not been instituted have been removed
`
`from this Petition. Although reference is made to certain claims that are not
`
`included in the instituted grounds, Petitioner is not seeking to challenge these
`
`claims. Instead, as explained below, Petitioner is merely reproducing these
`
`portions of Ford’s Petition because they are referenced in the analyses of the
`
`instituted grounds.
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`History, Ex. 1459 at 159.) As filed, the ’634 Patent included 16 claims. Id. at 126-
`
`131. On May 5, 2006, the Patentee filed a preliminary amendment cancelling
`
`originally filed claims 1-16 and adding new claims 17-75. Id. at 166-182. On
`
`October 24, 2006, the patentee responded to a non-final office action by cancelling
`
`some of the previously submitted claims and adding 261 new claims. Id. at 350.
`
`On February 8, 2007, the Examiner issued a notice of allowance. Id. at 493.
`
`B.
`
`Independent Claims 33, 161 and 215
`
`Independent claims 33, 80, 114 and 215 recite a “method for controlling a
`
`hybrid vehicle” using an engine and a single electric motor. These independent
`
`claims include significant overlap and generally recite: (1) “monitoring road load
`
`[RL] over time;” (2) operating “at least one electric motor” when RL < a “setpoint
`
`(SP)”; (3) operating the engine when SP < RL < engine’s maximum torque output
`
`(MTO); and (4) operating both the engine and electric motor when RL > MTO.
`
`Claim 33 further requires monitoring a pattern of vehicle operation over time and
`
`adjusting the setpoint accordingly. Claim 80 and 114 incorporate time delays
`
`between switching to propulsion by either the engine or motor. Claim 80 further
`
`requires that the engine is used to propel the vehicle only when: (1) RL> the SP for
`
`at least a predetermined time OR. (2) RL>a second setpoint (SP2), wherein the
`
`SP2 is a larger percentage of the MTO than the SP. Claim 114, on the other hand,
`
`requires that the motor is used to propel the vehicle only when: RL<the SP for at
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`least a predetermined amount of time. Claim 215 further requires regeneratively
`
`charging the battery using the engine or during braking.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART (POSA)
`
`The level of ordinary skill in the art is evidenced by the references. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A POSA would have either: (1) a
`
`graduate degree in mechanical, electrical or automotive engineering with
`
`experience in the design and control of combustion engines, electric or hybrid
`
`electric propulsion systems, or automotive transmissions, or (2) a bachelor’s
`
`degree in mechanical, electrical or automotive engineering with at least five years
`
`of experience in the design and control of combustion engines, electric or hybrid
`
`electric propulsion systems, or automotive transmissions. (Ex. 1455 ¶¶41-42, see
`
`also ¶¶5-37.)
`
`VI.
`
`STATE OF THE ART
`
`Hybrid vehicles date back over 100 years to the infancy of the automobile.
`
`(Ex. 1455 ¶¶43-47.) Over this time span, numerous hybrid architectures had been
`
`examined to achieve design “goals” that
`
`included efficient engine operation,
`
`improved fuel economy and reduced emissions. (Ex. 1455
`
`¶48.) By September
`
`1998, the development of the hybrid vehicle had advanced to a state where
`
`numerous different hybrid vehicle architectures were generally known and had
`
`even been successfully built and tested on public roads. (Ex. 1455 ¶¶4960.) These
`
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`hybrid vehicle architectures typically employed electric motors to maintain
`
`operation of the internal combustion engine within the engine’s most efficient
`
`operating region, commonly referred as the engine’s “sweet spot.” (Ex. 1455
`
`¶¶59, 108-133.) Some hybrid vehicles could accomplish efficient engine operation
`
`by employing “one-motor” architectures while other designs found operational
`
`benefits by employing “two-motor” architectures. (Ex. 1455
`
`, see discussion
`
`regarding “series” hybrid vehicles at ¶¶61-69; “parallel” hybrid vehicles at ¶¶70-
`
`86; and “series-parallel” hybrid vehicles ¶¶87-107.)
`
`It was known before September 1998 that engines in conventional vehicles
`
`operate inefficiently at low torque loads and vehicle speeds. (Ex. 1455 ¶¶108123,
`
`125-126.) Hybrid vehicles could overcome the inefficiency of conventional
`
`vehicles by including an electric motor (i.e., “traction motor”) with sufficient
`
`power to propel the vehicle at low speeds and low loads. (Ex. 1455 ¶¶108-123.)
`
`By using a powerful enough motor, hybrid vehicles could restrict engine operation
`
`solely to areas of high efficiency. (Ex. 1455 ¶¶59, 108-123.) As the vehicle speed
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`and load increased, operation of the engine was permitted when the speed and load
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`were determined to be in a region where engine torque is most efficiently
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`produced— i.e., the engine’s “sweet spot.” (Ex. 1455 ¶¶59, 109-133.)
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`For hybrid vehicles it was further known prior to September 1998 that
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`engine operation could be restricted to its “sweet spot” using a control strategy that
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`typically included: (1) an all-electric mode where only the motor propels the
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`vehicle when engine operation is inefficient (i.e., at low loads or vehicle speeds);
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`(2) an engine-only mode where the engine propels the vehicle when engine
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`operation is efficient, such as highway cruising at higher loads and speeds; and (3)
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`an acceleration mode where the both engine and motor are used to propel the
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`vehicle when the demand is beyond the maximum torque capabilities of the engine,
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`such as during acceleration, passing, hill-climbing. (Ex. 1455 ¶¶84, 124-131.)
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`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3)
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`For purposes of this IPR, a claim is interpreted by applying its “broadest
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`reasonable construction.” 37 C.F.R. § 42.100(b). Certain terms in the claims of the
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`’634 Patent were argued by the patentee with respect to the ’634 Patent and other
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`patents in the ’634 Patent family, and construed by the Eastern District of Texas
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`court in Paice LLC v. Toyota Motor Corp. et al., Case No. 2:04-cv-211 and Paice
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`LLC v. Toyota Motor Corp. et al., Case No. 2:07-cv-180, (“Toyota Litigation,” Ex.
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`1456.) Certain terms recited in the claims of the ’634 Patent were also argued by
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`the patentee and construed by a Maryland district court in Paice LLC v. Hyundai
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`Motor Corp. et al., Case No. 2:12-cv-0499, on July 24, 2014. (“Hyundai
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`Litigation,” Ex. 1457.) Certain terms that are related to terms recited in the claims
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`of the ’634 Patent were also discussed in prior institution decisions. (“Ford IPRs,”
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`Ex. 1458.)
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`A.
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`road load (RL) and RL
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`The Eastern District of Texas and the District of Maryland courts have
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`construed the terms “road load,” “RL,” and “road load (RL)” as “the instantaneous
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`torque required for propulsion of the vehicle, which may be positive or negative in
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`value.” (Ex. 1456 at 205-206; Ex. 1457 at 16, 96-97.)
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`For this proceeding, Petitioner proposes that “road load” be construed as
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`“the amount of instantaneous torque required to propel the vehicle, be it positive or
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`negative.” This is consistent with a prior PTAB construction. (See Ford v. Paice
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`IPR Decisions, Ex. 1458 at 20, 38, 51, 70, 84.) Petitioner contends the construction
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`may be narrower under district court standards.
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`setpoint (SP) and SP
`B.
`The Texas and Maryland courts construed “setpoint (SP)” as being “a
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`definite, but potentially variable value at which a transition between operating
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`modes may occur” (Ex. 1456 at 204, Ex. 1457 at 104), and Patent Owner maintains
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`this as being the correct construction. (Ford IPRs, Ex. 1458 at 109-113.) Petitioner
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`disagrees that Patent Owner’s proposed construction is the broadest reasonable
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`construction. The ’634 Patent claims, specification, and file history define
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`“setpoint” as a “predetermined torque value.” All claims recite a “setpoint” or “SP”
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`value being compared to either: (1) an engine torque value (e.g., claim 1); or (2) a
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`torque-based “road load” value (e.g., claim 33). No claims recite a “setpoint” or
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`“SP” in comparison to any other system variable. Likewise, the specification says
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`“the microprocessor tests sensed and calculated values for system variables, such
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`as the vehicle’s instantaneous torque requirement, i.e., the ‘road load’ RL . . .
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`against setpoints, and uses the results of the comparisons to control the mode of
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`vehicle operation.” (Ex. 1450, 40:16-26, emphasis added.) To do so (e.g., whether
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`“RL < SP”), the “setpoint” would have to be in the same measurement units as the
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`“road load.”
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`During prosecution of the ’347 Patent (see “’347 File History”, Ex. 1460) –
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`the parent of the ’634 Patent – patentee added the following limitation to pending
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`claims 1 and 82 to overcome a prior art rejection: “wherein the torque produced by
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`said engine when operated at said setpoint (SP) is substantially less than the
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`maximum torque output (MTO) of said engine.” (’347 File History, Ex. 1460 at 8-
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`20.) Patentee then argued the engine was operated only “when it is loaded . . . in
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`excess of SP [setpoint], which is now defined to be ‘substantially less than the
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`maximum torque output (MTO) of said engine.’” (Id. at 21.)
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`This proposed construction is consistent with recent PTAB constructions.
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`(Ford IPRs, Ex. 1458 at 21, 40, 72, 86.) Accordingly the broadest reasonable
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`construction of “setpoint (SP)” and “SP” as used in the challenged claims is a
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`“predetermined torque value.”
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`C.
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`“mode I,” “low-load operation mode I,” “highway cruising
`operation mode IV,” “acceleration operation mode V”
`During the Toyota Litigation, the court construed terms of the parent ’347
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`Patent as follows: (1) low-load mode I as “the mode of operation in which energy
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`from the battery bank flows to the traction motor and torque (rotary force) flows
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`from the traction motor to the road wheels;” (2) highway cruising mode IV as “the
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`mode of operation in which energy flows from the fuel tank into the engine and
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`torque (rotary force) flows from the engine to the road wheels;” (3) acceleration
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`mode V as “the mode of operation in which energy flows from the fuel tank to the
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`engine and from the battery bank to at least one motor and torque (rotary force)
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`flows from the engine and at least one motor to the road wheels.” (Ex. 1456 at
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`219.) Petitioner agrees with these constructions for this IPR but reserves right to
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`offer narrower constructions in litigation, for the reasons stated above.
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`“abnormal and transient conditions” (Claims 55 and 239)
`D.
`Claims 55 and 239 require “operating the engine at torque output levels less
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`than the SP under abnormal and transient conditions to satisfy driveability and/or
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`safety considerations.” The ’634 Patent does not describe “abnormal and transient
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`conditions,” nor otherwise “inform those skilled in the art about the scope of the
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`invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572
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`U.S. ____ (2014). Paice defined “abnormal and transient conditions” in claim 22
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`of the ’347 Patent, the parent of the ’634 Patent. Claim 22 of the ’347 Patent
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`defines abnormal and transient conditions as “comprising starting and stopping of
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`the engine and provision of torque to satisfy drivability or safety considerations.”
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`(Ex. 1461, Claim 22.) While the full scope of “abnormal and transient conditions”
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`is unclear, Petitioner proposes for purposes of this proceeding only that “abnormal
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`and transient conditions” includes this scope, and Petitioner does not admit that the
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`’634 Patent’s disclosure of “abnormal and transient conditions” satisfies 35 U.S.C.
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`§112.
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`VIII. UNPATENTABILITY GROUNDS
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`For at least the following reasons, the references below render the claimed
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`subject matter invalid under 35 U.S.C. § 103.
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`A.
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`Ground 1 – Claims 215 and 229 are Obvious under 35 U.S.C. §
`103 Over Ibaraki ’882 and the General Knowledge of a POSA
`Independent Claim 332
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`1.
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`2 Although reference is made to claims 33 and 37 on which review was not
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`instituted by the PTAB, Petitioner is not seeking to challenge these claims.
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`Petitioner is merely reproducing the portions relied on in Ford’s Petition in
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`IPR2015-00791 regarding these claims for simplicity and to avoid duplication.
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`More specifically, the limitations associated with these claims are also present in
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`other claims being challenged in this Petition and for which the Board instituted
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`...[33.0] A method for controlling a hybrid vehicle, comprising:
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`Ibaraki ’882 states that the “present invention” pertains to a “drive control
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`apparatus” for controlling a “hybrid vehicle” that may be propelled by an internal
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`combustion (IC) engine and an electric motor. (Ex. 1452 at 1:9-14; Ex. 1455 at
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`¶¶137-138.) As illustrated in Figure 8, Ibaraki ’882 discloses a hybrid vehicle
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`including a “controller 128” that is used to control an “internal combustion engine
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`112” and an “electric motor 114.” (Ex. 1452 at 19:55-20:9.) Ibaraki ’882 discloses
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`that the hybrid vehicle implements control strategies that operate the IC engine and
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`electric motor to “effective[ly] reduc[e]...the fuel consumption amount or exhaust
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`gas amount of the engine.” (Ex. 1452 at 2:52-56, 3:15-53, 6:14-23, 25:62-26:8; Ex.
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`review. For example, the tables below concerning claims 215 and 219 (for which
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`institution was granted) refer to the discussion pertaining to claims 33 and 37.
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`Accordingly, rather than removing this discussion and reintroducing/rewriting it in
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`the sections pertaining to the claims on which review was instituted, Petitioner
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`opted to copy these portions verbatim from Ford’s Petition, thereby minimizing
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`any changes to the sections that are relevant to the instituted grounds. No
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`arguments or grounds that have not been presented in Ford’s Petition were added
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`to this Petition. The challenges in Ford’s Petition based on grounds that have not
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`been instituted have been removed from this Petition.
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`1455 at ¶¶152-154, 158-159.) For instance, Fig. 10 illustrates a control routine that
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`is implemented by the controller to select: 1) a MOTOR DRIVE mode (step
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`“Q12”) where the electric motor propels the vehicle; (2) an ENGINE DRIVE mode
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`(step “Q11”) where the engine propels the vehicle; and (3) an ENGINE-MOTOR
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`DRIVE mode (step “Q10”) where both the electric motor and engine propel the
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`vehicle. (Ex. 1452 at 11:58-67, 20:43-49, 26:25-33; Ex. 1455 at ¶157-159.)
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`To select the MOTOR DRIVE mode, ENGINE DRIVE mode, or ENGINE-
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`MOTOR DRIVE mode, a data map (as exemplified by Fig. 11) is used. As
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`annotated below, the data map determines the three operating modes as a function
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`of “VEHICLE DRIVE TORQUE,” and “VEHICLE SPEED.” (Ex. 1452 at 20:38-
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`21:2; Ex. 1455 at ¶¶154-156, 160-163.)
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`Ex. 1452 at Fig. 11 (Annotated)
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`... [33.1] determining instantaneous road load (RL) required to
`propel the hybrid vehicle responsive to an operator command;
`The disclosed “controller 128” is stated as including a “drive source
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`selecting means 160 illustrated in FIG. 9.” (Ex. 1452 at 20:38-39.) This “drive
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`source selecting means” is “adapted to select one or both of the engine 112 and the
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`motor 114 as the drive power source or sources, according to a drive source
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`selecting data map stored in memory means 162.” (Id. at 20:39-43, emphasis
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`added.) Again, the “data map” (e.g., Id. Fig. 11 annotated above) is used to select
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`one of the three operating modes as a function of “VEHICLE DRIVE TORQUE,”
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`and “VEHICLE SPEED.” In order to determine which drive mode to operate in,
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`Ibaraki ’882 states that a point corresponding to the current “vehicle running
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`condition” is plotted onto the data map of Fig. 11. (Id. at 20:58-21:1; Ex. 1455 at
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`¶¶165-169.) This point “correspond[s] to the required drive power PL” for the
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`vehicle and is “determined by the current vehicle drive torque and vehicle speed
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`V.”3 (Ex. 1452 [’882]: 23:66-24:21, 20:39-43; Ex. 1455 at ¶¶170.)
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`Figure 11 below highlights the mode selection when three points of
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`“required drive power” (annotated as PL1, PL2, PL3) are plotted, “as determined by
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`the current vehicle drive torque” (annotated as TL1, TL2, TL3) “and vehicle speed”
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`(annotated as V1). The MOTOR DRIVE mode (shaded red) is selected when the
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`3 A POSA w