Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`Filed on behalf of Petitioners
`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 161, 172, 215, 226, 230 AND 234 OF U.S. PATENT NO. 7,237,634)
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...........................................................................................1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8...................................2
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1).....................................2
`
`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............................................4
`
`A.
`
`B.
`
`C.
`
`Grounds for Standing - 37 C.F.R. § 42.104(a)......................................4
`
`Challenged Claims - 37 C.F.R. § 42.104(b)(1).....................................4
`
`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
`
`Purported Improvement in the ’634 Patent ...........................................5
`
`V.
`
`VI.
`
`PERSON OF ORDINARY SKILL IN THE ART (POSA) ............................7
`
`STATE OF THE ART.....................................................................................8
`
`VII. CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3)...........................10
`
`A.
`
`B.
`
`C.
`
`road load (RL) and RL ........................................................................10
`
`setpoint (SP) and SP............................................................................11
`
`“mode I,” “low-load operation mode I,” “highway cruising
`operation mode IV,” “acceleration operation mode V”......................13
`
`VIII. UNPATENTABILITY GROUNDS..............................................................13
`
`A.
`
`Overview of the University of Durham Hybrid Project......................13
`
`i
`
`

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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`B.
`
`C.
`
`Reasons to Combine............................................................................21
`
`Discussion of Claims 80, 91, 92, 95, 96, 99, 100, 102, 106, 114,
`125, 126, 129, 132, 133 and 135 .........................................................25
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Independent Claim 80...............................................................26
`
`Dependent Claim 91 .................................................................39
`
`Dependent Claim 92 .................................................................40
`
`Dependent Claim 95 .................................................................41
`
`Dependent Claim 96 .................................................................41
`
`Dependent Claim 99 .................................................................42
`
`Dependent Claim 100 ...............................................................46
`
`Dependent Claim 102 ...............................................................46
`
`Dependent Claim 106 ...............................................................49
`
`10.
`
`Independent Claim 114.............................................................50
`
`11. Dependent Claim 125 ...............................................................51
`
`12. Dependent Claim 126 ...............................................................51
`
`13. Dependent Claim 129 ...............................................................51
`
`14. Dependent Claim 132 ...............................................................51
`
`15. Dependent Claim 133 ...............................................................52
`
`16. Dependent Claim 135 ...............................................................52
`
`D.
`
`Ground 1 – Claims 161, 172, 215, 226, 230, and 234 are Obvious
`over The Durham Project in View of the General Knowledge of a
`POSA...................................................................................................52
`
`1.
`
`2.
`
`Independent Claim 161.............................................................53
`
`Dependent Claim 172 ...............................................................54
`
`ii
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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`3.
`
`4.
`
`5.
`
`6.
`
`Independent Claim 215.............................................................54
`
`Dependent Claim 226 ...............................................................55
`
`Dependent Claim 230 ...............................................................56
`
`Dependent Claim 234 ...............................................................56
`
`IX. OBJECTIVE INDICIA OF NO OBVIOUSNESS........................................56
`
`X.
`
`CONCLUSION..............................................................................................57
`
`iii
`
`

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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`EXHIBIT LIST
`
`Exhibit
`No.
`1901
`1902
`
`1903
`1904
`1905
`
`1906
`
`1907
`
`1908
`
`1909
`
`1910
`
`1911
`1912
`1913
`
`Description
`U.S. Patent No. 7,237,634
`7,237,634 File History (certi-
`fied)
`Declaration of Gregory Davis
`Ford Letter to Paice
`“Computer modelling of the
`automotive energy require-
`ments for internal combustion
`engine and battery electric-
`powered vehicles,” IEE PRO-
`CEEDINGS, Vol. 132
`“Optimisation and control of a
`hybrid electric car,” IEE
`PROCEEDINGS, Vol. 134
`“A hybrid internal combustion
`engine/battery electric passen-
`ger car for petroleum dis-
`placement,” Proc Inst Mech
`Engrs Vol 202
`“A test-bed facility for hybrid i
`c-engine/battery-electric road
`vehicle drive trains,” Trans
`Inst MC Vol 10
`“Integrated microprocessor
`control of a hybrid i.c. en-
`gine/battery-electric automo-
`tive power train,” Trans Inst
`MC Vol 12
`Masding Thesis — “Some
`drive train control problems in
`hybrid i.c engine/battery elec-
`tric vehicles”
`US Patent 7,104,347
`Toyota Litigations
`Hyundai Litigation
`
`iv
`
`Date
`July 3, 2007
`n/a
`
`Sept. 2014
`Sept. 1985
`
`Identifier
`‘634 Patent
`‘634 Patent File
`History
`Davis Dec.
`Ford Letter
`Bumby I
`
`Nov. 1987
`
`Bumby II
`
`1988
`
`Bumby III
`
`Apr. June 1988
`
`Bumby IV
`
`1990
`
`Bumby V
`
`Nov. 1989
`
`Masding Thesis
`
`Sept. 12, 2006
`2005
`2013-2014
`
`‘347 Patent
`Toyota Litigation
`Hyundai Litigation
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`Exhibit
`No.
`1914
`
`1915
`
`1916
`
`1917
`
`1918
`
`1919
`
`1920
`
`1921
`
`1922
`1923
`
`1924
`
`1925
`1926
`1927
`
`1928
`
`1929
`
`1930
`1931
`
`1932
`1933
`
`Description
`PTAB Decisions & Prelimi-
`nary Response in 2014-00571
`Excerpt of USPN 7,104,347
`File History
`Innovations in Design: 1993
`Ford Hybrid Electric Vehicle
`Challenge
`1996 & 1997 Future Car Chal-
`lenge
`Introduction to Automotive
`Powertrain (Davis)
`US Application 60-100095
`
`Date
`Ford IPRs
`
`n/a
`
`Feb. 1994
`
`Feb. 1997 &
`Feb. 1998
`
`History of Hybrid Electric Ve-
`hicle (Wakefield-1998)
`SAE 760121 (Unnewehr-
`1976)
`SAE 920447 (Burke-1992)
`Vehicle Tester for HEV (Duo-
`ba- 1997)
`DOE Report to Congress
`(1994)
`SAE SP-1331 (1998)
`SAE SP-1156 (1996)
`Microprocessor Design for
`HEV (Bumby-1988)
`DOE HEV Assessment (1979) Sept. 30, 1979
`
`Filed Sept. 11,
`1998
`1998
`
`Feb. 1, 1976
`
`Feb. 1, 1992
`Aug. 1, 1997
`
`April 1995
`
`Feb. 1998
`Feb. 1996
`Sept. 1, 1988
`
`EPA HEV Final Study (1971)
`
`June 1, 1971
`
`WO 9323263A1 (Field)
`Toyota Prius (Yamaguchi-
`1998)
`US Patent 6,209,672
`Propulsion System for Design
`for EV (Ehsani-1996)
`
`Nov. 25, 1998
`Jan. 1998
`
`April 3, 2001
`June 5, 1996
`
`v
`
`Identifier
`‘347 File History
`
`Davis Textbook
`
`‘095 Provisional
`
`Wakefield
`
`Unnewehr
`
`Burke 1992
`Duoba 1997
`
`1994 Report to
`Congress
`SAE SP-1331
`SAE SP-1156
`Bumby/Masding
`1988
`HEV Assessment
`1979
`EPA HEV Final
`Study
`9323263
`Toyota Prius Ya-
`maguchi 1998
`‘672 Patent
`IEEE Ehsani 1996
`
`

`
`Exhibit
`No.
`1934
`
`1935
`
`1936
`
`1937
`
`1938
`1939
`1940
`1941
`1942
`1943
`
`Description
`Propulsion System Design for
`HEV (Ehsani-1997)
`Bosch Automotive Handbook
`(1996)
`SAE SP-1089 (Anderson-
`1995)
`Critical Issues in Quantifying
`HEV Emissions (An 1998)
`Gregory Davis Resume
`Gregory Davis Data
`US Patent 5,789,882
`US Patent 5,343,970
`Paice Complaint
`Exhibit not submitted
`
`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`Date
`Feb. 1997
`
`Oct. 1996
`
`Feb. 1995
`
`Identifier
`IEEE Ehsani 1997
`
`Bosch Handbook
`
`SAE SP-1089
`
`Aug. 11, 1998
`
`An 1998
`
`Aug. 4, 1998
`Sept. 6, 1994
`Feb. 25, 2014
`
`Ibaraki ‘882
`Severinsky ‘970
`
`vi
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`I.
`
`INTRODUCTION
`
`Petitioner Hyundai Motor America, Inc., Hyundai Motor Company, Kia Mo-
`
`tors Corporation and Kia Motors America, Inc. (“Petitioner”) request IPR of claims
`
`161, 172, 215, 226, 230, and 234 of U.S. Patent No. 7,237,634 (“the ’634 Patent”,
`
`Ex. 1901) based on the substantively identical grounds as instituted for the pending
`
`IPR Proceeding, IPR2015-00800. For the exact same reasons previously consid-
`
`ered by the Board, Petitioner respectfully seeks to join IPR2015-00800.
`
`In this Petition, Petitioner asserts substantively identical arguments in con-
`
`nection with the grounds that the Board has already instituted in IPR2015-00800.
`
`This Petition does not add to or alter any argument that has already been consid-
`
`ered by the Board, and this Petition does not seek to expand the grounds of un-
`
`patentability that the Board has already instituted. Accordingly, and as explained
`
`below, there exists a reasonable likelihood that Petitioner will prevail in demon-
`
`strating unpatentability of at least one challenged claim based on teachings set
`
`forth in the references presented in this Petition.
`
`Because this Petition is filed within one month of the institution of IPR2015-
`
`00800, and because this petition is accompanied by a Motion for Joinder, this peti-
`
`tion is timely and proper under 35 U.S.C. § 315(c) and 37 C.F.R. §42.122(b).
`
`1
`
`

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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`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 Com-
`
`pany, Kia Motors Corporation and Kia Motors America, Inc. are the real 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 (“the ‘347 Patent”) in the all of
`
`the foregoing litigations, and has asserted U.S. Patent No. 8,214,097 (“the ‘097 Pa-
`
`tent”) in the first two of the above-identified 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 Patent in IPR2015-
`
`00795, IPR2015-00794, IPR2014-00884, IPR2014-00579 and IPR2014-00571.
`
`Ford has filed petitions concerning the ‘097 Patent in IPR2014-00570, IPR2014-
`
`2
`
`

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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`01415 and IPR2015-00792. In addition to its petition and motion for joinder relat-
`
`ing to IPR2015-00800, Petitioner is separately filing petitions seeking inter partes
`
`review and motions for joinder based on the grounds for which trial has been insti-
`
`tuted in the following IPR proceedings concerning the ‘634 Patent: IPR2015-
`
`00758,
`
`IPR2015-00784, IPR2015-00785,
`
`IPR2015-00790,
`
`IPR2015-00791 and
`
`IPR2015-00722. Petitioner is also separately filing petitions seeking inter partes
`
`review and motions for joinder based on the grounds for which trial has been insti-
`
`tuted in IPR2015-00794 concerning the ‘347 Patent and IPR2015-00792 concern-
`
`ing the ‘097 Patent.
`
`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.
`
`3
`
`

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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`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. The present Pe-
`
`tition is being filed within one month of institution of IPR2015-00800 along with a
`
`Motion for Joinder. Accordingly, Petitioner is not barred or estopped from chal-
`
`lenging the patent claims on the grounds in this Petition.
`
`B.
`
`Challenged Claims - 37 C.F.R. § 42.104(b)(1)
`
`Petitioner requests IPR of the ’634 Patent claims 161, 172, 215, 226, 230,
`
`and 234 based on the substantively identical grounds as instituted for the pending
`
`IPR2015-00800 proceeding, and requests that the Patent Trial and Appeal Board
`
`(“PTAB”) cancel those claims as unpatentable.
`
`C.
`
`Grounds of Challenge - 37 C.F.R. § 42.104(b)(2)
`
`There is one ground of unpatentability presented in this petition and on
`
`which the PTAB instituted review in IPR2015-00800:1
`
`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 in-
`
`cluded 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.
`
`4
`
`

`
`Ground Basis Reference
`1
`§ 103 Bumby I-V, Masding,
`and Knowledge of a
`POSA
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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`Claims
`161, 172, 215, 226, 230, 234
`
`The unpatentability ground set forth in this Petition is confirmed and sup-
`
`ported by the declaration of Dr. Gregory W. Davis. (“Davis” at Ex. 1903.)
`
`IV. OVERVIEW OF THE ’634 PATENT
`
`The ’634 Patent is a divisional in a patent family chain that ultimately
`
`claims priority back to two separate Provisional Applications—Provisional Ap-
`
`plication No. 60/100,095, filed September 14, 1998, and 60/122,296, filed March
`
`1, 1999. The ’634 Patent is a direct divisional of U.S. Patent No. 7,104,347 (“the
`
`’347 Patent,” Ex. 1911).
`
`A.
`
`Prosecution History of the ’634 Patent
`
`The ’634 Patent was accorded a filing date of January 13, 2006. (’634 File
`
`History, Ex. 1902 at 159-160.) 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 344.
`
`On February 8, 2007, the Examiner issued a notice of allowance. Id. at 493.
`
`B.
`
`Purported Improvement in the ’634 Patent
`
`5
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`The ’634 Patent identifies a purportedly “new ‘topology’ for a hybrid vehi-
`
`cle” that requires “a first electric ‘starting’ motor” and “[a] second ‘traction’ motor
`
`[] directly connected to the road wheels to propel the vehicle.” (Ex. 1901 [’634 Pa-
`
`tent] at 11:50-62.)2 The purported “new ‘topology’” is disclosed as a two-motor
`
`“series-parallel” hybrid. Id. at 16:5-11. Two-motor “series-parallel” hybrids were
`
`well-known long before the patentee’s earliest priority date of September 1998.
`
`(Ex. 1903 [Davis Dec.] at ¶¶87-107.)
`
`The ’634 Patent also identifies a control strategy to operate the engine, trac-
`
`tion motor, and starter motor “in accordance with the vehicle’s instantaneous torque
`
`demands so that the engine is run only under conditions of high efficiency.” (Ex.
`
`1901 [’634 Patent] at Abstract.) The ’634 Patent states that the control strategy op-
`
`erates “the internal combustion engine only under circumstances providing a signif-
`
`icant load, thus ensuring efficient operation.” (Ex. 1901 [’634 Patent] at 35:10-12;
`
`see also 19:45-50 and 20:61-21:2.) Efficient engine operation is accomplished by
`
`using a set of operating modes that determine when to operate the engine or motors
`
`“depending on the torque required, the state of charge of the battery and other vari-
`
`ables.” (Id. at 35:39.) Specifically, the ’634 Patent discloses: (1) operating the trac-
`
`2 “Topology” is used in the ’634 Patent to describe a vehicle architecture or vehicle
`
`hardware configuration.
`
`6
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`
`tion motor to provide “the torque required to propel the vehicle” when engine
`
`torque would be inefficiently produced (i.e., “mode I”); (2) operating the engine to
`
`provide “the torque required to propel the vehicle” when engine torque is efficient-
`
`ly produced (i.e., “mode IV”); (3) operating both the engine and motor when the
`
`“torque required to propel the vehicle” is above the maximum operating torque of
`
`the engine (i.e., “mode V”). (Id. at 35:63-36:4; 36:20-43; Figs. 8(a), (c), (d).)
`
`The ’634 Patent control strategy was also known in the prior art. (Ex. 1903,
`
`[Davis Dec.] ¶¶108-133.) In fact, the ’634 Patent itself acknowledges that “the in-
`
`ventive control strategy according to which the hybrid vehicles of the [’634 Patent]
`
`invention are operated” is the same “as in the case of the hybrid vehicle system
`
`shown in [the prior art Severinsky] ’970 patent.” (Ex. 1901 [’634 Patent] at 35:3-9,
`
`see also 25:4-24.)
`
`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 experi-
`
`ence in the design and control of combustion engines, electric or hybrid electric
`
`propulsion systems, or automotive transmissions, or (2) a bachelor’s degree in me-
`
`chanical, electrical or automotive engineering with at least five years of experience
`
`in the design and control of combustion engines, electric or hybrid electric propul-
`
`7
`
`

`
`sion systems, or automotive transmissions.
`
`(Ex. 1903 [Davis Dec.] ¶¶41-42, see
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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`also ¶¶5-37.)
`
`VI.
`
`STATE OF THE ART
`
`Hybrid vehicles date back over 100 years to the infancy of the automobile.
`
`(Ex. 1903 [Davis Dec.] ¶¶43-47.) Over this time span, numerous hybrid architec-
`
`tures had been examined to achieve design “goals” that included efficient engine
`
`operation, improved fuel economy and reduced emissions. (Ex. 1903 [Davis Dec.]
`
`¶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. 1903
`
`[Davis Dec.] ¶¶49-60.) These hybrid vehicle architectures typically employed elec-
`
`tric motors to maintain operation of the internal combustion engine within the en-
`
`gine’s most efficient operating region, commonly referred as the engine’s “sweet
`
`spot.” (Ex. 1903 [Davis Dec.] ¶¶59, 108-133.) Some hybrid vehicles could accom-
`
`plish efficient engine operation by employing “one-motor” architectures while oth-
`
`er designs found operational benefits by employing “two-motor” architectures.
`
`(Ex. 1903 [Davis Dec.], see discussion regarding “series” hybrid vehicles at ¶¶61-
`
`69; “parallel” hybrid vehicles at ¶¶70-86; and “series-parallel” hybrid vehicles ¶¶
`
`87-107.)
`
`8
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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`It was known before September 1998 that engines in conventional vehicles
`
`operate inefficiently at low torque loads and vehicle speeds.
`
`(Ex. 1903 [Davis
`
`Dec.]¶¶108-123, 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. 1903 [Da-
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`vis Dec.] ¶¶108-123.) By using a powerful enough motor, hybrid vehicles could
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`restrict engine operation solely to areas of high efficiency. (Ex. 1903 [Davis Dec.]
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`¶¶59, 108123.) As the vehicle speed and load increased, operation of the engine
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`was permitted when the speed and load were determined to be in a region where
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`engine torque is most efficiently produced—i.e., the engine’s “sweet spot.” (Ex.
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`1903 [Davis Dec.] ¶¶59, 109-133.)
`
`For hybrid vehicles it was further known prior to September 1998 that en-
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`gine 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 vehi-
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`cle when engine operation is inefficient (i.e., at low loads or vehicle speeds); (2) an
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`engine-only mode where the engine propels the vehicle when engine operation is
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`efficient, such as highway cruising at higher loads and speeds; and (3) an accelera-
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`tion mode where the both the engine and motor are used to propel the vehicle when
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`the demand is beyond the maximum torque capabilities of the engine, such as dur-
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`ing acceleration, passing, hill-climbing. (Ex. 1903 [Davis Dec.] ¶¶84, 124-131.)
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`IPR of U.S. Patent No. 7,237,634
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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 rea-
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`sonable construction.” 37 C.F.R. § 42.100(b).
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`Certain terms in the claims of the ’634 Patent were argued by the patentee
`
`with respect to the ’634 Patent and other patents in the ’634 Patent family, and
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`construed by the Eastern District of Texas court in Paice LLC v. Toyota Motor
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`Corp. et al., Case No. 2:04-cv-211 and Paice LLC v. Toyota Motor Corp. et al.,
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`Case No. 2:07-cv-180, (“Toyota Litigation,” Ex. 1912.)
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`Certain terms recited in the claims of the ’634 Patent were also argued by the
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`patentee and construed by a Maryland district court in Paice LLC v. Hyundai Motor
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`Corp. et al., Case No. 2:12-cv-0499, on July 24, 2014. (“Hyundai Litigation,” Ex.
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`1913.)
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`Certain terms that are related to terms recited in the claims of the ’634 Patent
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`were also discussed in prior institution decisions. (“IPRs,” Ex. 1914.)
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`Petitioner proposes the following constructions for the purposes of this IPR
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`only. But for some of these terms, based on the specification, prosecution history,
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`and patentee admissions, Petitioner contends that the construction under the appli-
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`cable district court standards is narrower, and reserves the right to present a nar-
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`rower construction in district court litigation.
`
`A.
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`road load (RL) and RL
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`IPR of U.S. Patent No. 7,237,634
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`The Eastern District of Texas and the District of Maryland courts have con-
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`strued 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. 1912 [Toyota Litigation] at 205-206; Ex. 1913 [Hyundai Litigation] at
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`16, 96-97.)
`
`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 Ex. 1914 [Ford
`
`v. Paice IPR Decisions] at 20, 38, 51, 70, 84.) Petitioner contends the construction
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`is 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 defi-
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`nite, but potentially variable value at which a transition between operating modes
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`may occur” (Ex. 1912 [Toyota Litigation] at 204; Ex. 1913 [Hyundai Litigation] at
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`104), and Patent Owner maintains this as being the correct construction. (Ex. 1914
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`[Ford IPRs] at 20-22, 38-40, 70-72, 84-86, 110-113.) Petitioner disagrees that Pa-
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`tent Owner’s proposed construction is the broadest reasonable construction.
`
`The ’634 Patent claims, specification, and file history define “setpoint” as a
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`“predetermined torque value.” All claims recite a “setpoint” or “SP” value being
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`compared to either: (1) an engine torque value (e.g., claim 1); or (2) a torque-based
`
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`“road load” value (e.g., claim 80). No claims recite a “setpoint” or “SP” in com-
`
`parison to any other system variable. Likewise, the specification says “the micro-
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`processor tests sensed and calculated values for system variables, such as the vehi-
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`cle’s instantaneous torque requirement, i.e., the ‘road load’ RL . . . against set-
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`points, and uses the results of the comparisons to control the mode of vehicle oper-
`
`ation.” (Ex. 1901 [’634 Patent] at 40:16-26, emphasis added.) To do so (e.g.,
`
`whether “RL < SP”), the “setpoint” would have to be in the same measurement
`
`units as the “road load.”
`
`During prosecution of the ’347 Patent – the parent of the ’634 Patent (See
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`Ex. 1915) – patentee added the following limitation to pending claims 1 and 82 to
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`overcome a prior art rejection: “wherein the torque produced by said engine when
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`operated at said setpoint (SP) is substantially less than the maximum torque output
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`(MTO) of said engine.” (Ex. 1915 [’347 File History] at 8-20.) Patentee then ar-
`
`gued the engine was operated only “when it is loaded . . . in excess of SP [set-
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`point], which is now defined to be ‘substantially less than the maximum torque
`
`output (MTO) of said engine.’” (Ex. 1915 [’347 File History] at 21.)
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`This proposed construction is consistent with recent PTAB constructions.
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`(Ford IPRs, Ex. 1914 at 21, 40, 72, 86.) Accordingly the broadest reasonable con-
`
`struction of “setpoint (SP)” and “SP” as used in the challenged claims is a “prede-
`
`termined torque value.”
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`C.
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`“mode I,” “low-load operation mode I,” “highway cruising opera-
`tion 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
`
`from the battery bank flows to the traction motor and torque (rotary force) flows
`
`from the traction motor to the road wheels;” (2) highway cruising mode IV as “the
`
`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
`
`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.” (Toyota Litiga-
`
`tion, Ex. 1912 at 219.) Petitioner agrees with these constructions for this IPR but
`
`reserves the right to offer narrower constructions in litigation, for the reasons stated
`
`above.
`
`VIII. UNPATENTABILITY GROUNDS
`
`The references below render the claimed subject matter invalid under 35
`
`U.S.C. § 103 and the Petitioner therefore has a reasonable likelihood of prevail-
`
`ing as to each of the following grounds of unpatentability. 35 U.S.C. § 314(a);
`
`37 C.F.R. § 42.104(b)(4).
`
`A.
`
`Overview of the University of Durham Hybrid Project
`
`Bumby I-V and the Masding Thesis are a series of publications from the
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`13
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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
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`1980’s that pertain to a hybrid vehicle research and development project undertak-
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`en primarily by Professor James Bumby, Professor Forster, and Dr. Peter Masding
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`(a student pursuing his doctoral thesis under Professor Bumby). Collectively, the
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`series of publications are referred to as “the Durham Project.”
`
`Bumby I discloses the “Janus simulator,” a software tool that was developed
`
`for simulating the design of either a conventional vehicle or hybrid vehicle. (Ex.
`
`1905 [Bumby I] at 2; Ex. 1903 [Davis Dec.] at ¶¶148-149.) To start the evaluation
`
`of the vehicle design, the Janus simulator calculates the “vehicle dynamics,” which
`
`are described as follows:
`
`To provide the necessary propulsion power, any vehicle drive train
`
`must be able to provide sufficient tractive effort at the road wheels to
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`overcome aerodynamic drag, rolling resistance and hill gradient ef-
`
`fects, while still providing the necessary vehicle acceleration. Conse-
`
`quently, at any particular velocity and acceleration, the net tractive ef-
`
`fort required at the road wheels can be expressed as the algebraic sum
`
`of these components, i.e.
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`TE = Td+ Tr +Tg + TaN (eqn. 1)
`
`(Ex. 1905 [Bumby I] at 2.)
`
`The tractive effort—as noted by Bumby I above—is generally referred to by
`
`a person of ordinary skill in the art as the force (commonly expressed in terms of
`
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`torque) required for propelling the vehicle. (Ex. 1903 [Davis Dec.] at ¶¶148-157 &
`
`113-120.) Tractive effort is what the ’634 Patent refers to as “road load” or “instan-
`
`taneous torque required for propulsion of the vehicle.” It was known to a person of
`
`ordinary skill in the art prior to September 1998, that when the tractive effort over-
`
`comes the sum of external forces, the vehicle accelerates. (Ex. 1903 [Davis Dec.]
`
`at ¶¶116-119.) Conversely, it was known to a person of ordinary skill in the art that
`
`when the sum of the external forces exceeds the “tractive effort” forces, the vehicle
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`decelerates or remains stopped. (Id.)
`
`Bumby II is a November 1987 publication that uses the Janus simulator dis-
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`closed by Bumby I for optimizing the “power train control and component rating”
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`of a hybrid electric vehicle.
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`(Ex. 1906 [Bumby II] at 1-Abstract.) Specifically,
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`Bumby II uses the Janus simulator to define “a control algorithm that can be used in
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`a vehicle suitable for the European car market.” (Ex. 1906 [Bumby II] at 2; Ex.
`
`1903 [Davis Dec.] at ¶¶161-162.) The “main objective” of the control algorithm
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`was to “maximise the accelerative performance of the vehicle, minimise exhaust
`
`emissions or to minimise energy use.” (Ex. 1906 [Bumby II] at 3.) Bumby II rec-
`
`ognizes that a control optimization strategy was needed for hybrid vehicles where
`
`“two or more power sources are used” because “the way in which [the power
`
`sources] are controlled is fundamental to the performance of the vehicle.” (Ex.
`
`1906 [Bumby II] at 3; Ex. 1903 [Davis Dec.] at ¶163.)
`
`15
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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
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`This control optimization was performed on a “parallel” hybrid vehicle ar-
`
`chitecture (illustrated below) that Bumby II determined would “offer the most po-
`
`tential” for being a commercially viable hybrid vehicle solution. (Ex. 1906 [Bum-
`
`by II] at 1; Fig. 2; Ex. 1903 [Davis Dec.] at ¶164.)
`
`Ex. 1905 [Bumby I] at 1, Fig. 2
`
`In order to optimize the overall vehicle efficiency, Bumby II recognizes
`
`that the power usage of the individual power train components (i.e., motor and
`
`engine) needed to be optimized. (Ex. 1906 [Bumby II] at 4.) Bumby II therefore
`
`“calculates the torque and speed requirements at the road wheels, at each sec-
`
`ond of the driving cycle, and then reflects this demand back through the power
`
`train to the energy source(s) to compute the net input energy required over that one
`
`second interval.” (Ex. 1906 [Bumby II] at 4, emphasis added.) By calculating the
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`net energy required at each second (i.e., instantaneous), a control strategy could be
`
`developed for determining the power that should be supplied by each power train
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`16
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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
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`component (i.e., engine and motor) in order to improve the efficiency and overall
`
`energy consumption of the hybrid vehicle. (Ex. 1906 [Bumby II] at 4.)
`
`While an “optimal algorithm” was developed, Bumby II determined that this
`
`algorithm “req