Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`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. 8,214,097
`
`PETITION FOR INTER PARTES REVIEW UNDER
`35 U.S.C. § 311 ET SEQ. AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1, 3, 4, 7, 9, 11, 13, 14, 17, 19, 21, 23, 24, 27, 28, 30, 32, 33, 37
`AND 38 OF U.S. PATENT NO. 8,214,097)
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST
`
`................................................................................................... iii
`
`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............................................3
`
`IV.
`
`V.
`
`A.
`B.
`C.
`D.
`
`Grounds for Standing – 37 C.F.R. § 42.104(a).....................................3
`Challenged Claims – 37 C.F.R. § 42.104(b)(1) ....................................3
`Prior Art Relied Upon ...........................................................................4
`Grounds of Challenge – 37 C.F.R. § 42.104(b)(2) ..............................5
`
`PERSON OF ORDINARY SKILL IN THE ART (POSA) ............................5
`
`OVERVIEW OF THE ‘097 PATENT ............................................................5
`
`A.
`B.
`C.
`D.
`
`The ‘097 Patent Family.........................................................................5
`Background and Purported Invention ...................................................6
`Technical Fundamentals of the Claimed Subject Matter......................7
`Prosecution History...............................................................................8
`
`VI.
`
`STATE OF THE ART RELATIVE TO THE ‘097 PATENT ......................10
`
`VII. CLAIM CONSTRUCTION – 37 C.F.R. § 42.104(b)(3) ..............................12
`
`A.
`B.
`C.
`
`“road load (RL)” and “RL” .................................................................13
`“setpoint (SP)” and “SP”.....................................................................13
`“abnormal and transient conditions”..................................................15
`
`VIII. UNPATENTABILITY GROUNDS..............................................................16
`
`A.
`
`GROUND 1: Claims 1, 7, 9, 11, 17, 19, 21, 27, 28, 30, 37 and 38 are
`Obvious Over Severinsky ‘970 and Takaoka......................................16
`
`1.
`
`Independent Claim 21...............................................................16
`
`i
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`

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`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`2.
`3.
`4.
`5.
`6.
`7.
`
`Independent Claim 1.................................................................38
`Independent Claim 11...............................................................40
`Independent Claim 30...............................................................43
`Dependent Claims 7, 17, 27 and 37..........................................48
`Dependent Claims 9, 19, 28 and 38..........................................50
`Rationale to Combine ...............................................................52
`
`B.
`
`Ground 2: Claims 3, 4, 13, 14, 23, 24, 32 and 33 are Obvious Over
`Severinsky ‘970, Takaoka and Yamaguchi.........................................55
`
`1.
`2.
`3.
`4.
`
`Dependent Claim 3....................................................................55
`Dependent Claims 13, 23 and 32..............................................56
`Claims 4, 14, 24 and 33 ............................................................57
`Rationale to Combine ...............................................................58
`
`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS......................................60
`
`X.
`
`CONCLUSION..............................................................................................60
`
`ii
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`EXHIBIT LIST
`
`Exhibit
`No.
`1201
`1202
`1203
`
`1204
`1205
`1206
`
`1207
`
`1208
`
`1209
`1210
`
`Description
`U.S. Patent No. 8,214,097
`Declaration of Dr. Jeffrey L. Stein
`Paice LLC v. Ford Motor Company, Case No. 1:14-
`cv- 00492, District of MD, Baltimore Div., Com-
`plaint (Feb. 19,
`2014)
`Ford’s letter to Paice dated September 22, 2014
`U.S. Patent No. 5,343,970
`Toshifumi Takaoka et al., A High-Expansion Ratio
`Gasoline Engine for the Toyota Hybrid System,
`Toyota Technical Review Vol. 47, No. 2 (April
`1998) (available at: https://www.worldcat.org/title/a-
`high-expansion- ratio-gasoline-engine-for-the-
`toyota-hybrid- sys-
`tem/oclc/205516653&referer=briefresults.)
`Ford Motor co. v. Paice LLC, Case IPR2014-01415,
`Paper 9, Patent Owner Preliminary Response
`(P.T.A.B. Dec. 16, 2014)
`Declaration of Walt Johnson, Librarian at Patent
`and Trademark Resource Center (PTRC), Minne-
`apolis Central Library
`U.S. Patent No. 5,865,263
`File History of U.S. Patent No. 8,214,097
`
`1211
`1212
`
`U.S. Patent No. 7,104,347
`File History of U.S. Patent No. 7,104,347
`
`1213
`
`1214
`
`1215
`
`Paice LLC v. Toyota Motor Corp. et al., Case No.
`2:04-cv- 211, E.D. Texas, Claim Construction Or-
`der (Dec. 5, 2008)
`Paice, LLC v. Hyundai Motor Corp. et a., Case No.
`2:12-cv- 0499, District of MD, Baltimore Div., Claim
`Construction Order (July 24, 2014)
`Ford Motor Co. v. Paice, LLC, Case IPR2014-00571,
`
`iii
`
`Identifier
`‘097 Patent
`Stein Decl.
`Paice
`Complaint
`
`Ford Letter
`Severinsky ‘970
`Takaoka
`
`IPR2014-01415
`PO Preliminary
`Response
`Librarian Decl.
`
`Yamaguchi
`‘097
`File
`History
`‘347 Patent
`‘347
`File
`History
`Toyota
`Litiga-
`tion
`Hyundai Litiga-
`tion
`
`IPR2014-00571
`
`

`
`Exhibit
`No.
`
`1216
`1217
`
`1218
`1219
`
`Description
`Paper 12, Decision (P.T.A.B. Sept. 30, 2014)
`U.S. Patent No. 7,237,634
`Ford Motor Co. v. Paice, LLC, Case IPR2014-00571,
`Paper 20, Patent Owner Response (P.T.A.B. Jan. 21,
`2015)
`U.S. Patent No. 4,335,429
`Catherine Anderson & Erin Pettit, The Effects of
`APU Characteristics on the Design of Hybrid Con-
`trol Strategies for Hybrid Electric Vehicles, SAE
`Technical Paper 950493 (February, 1995) (availa-
`ble at http://papers.sae.org/950493/.)
`Curriculum Vitae of Dr. Jeffery L. Stein
`John B. Heywood, Internal Combustion Engine Fun-
`damentals (McGraw-Hill 1988) (available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2
`0946&recCount=25&recPointer=4&bibId=2421798.)
`1222 Willard W. Pulkrabek, Engineering Fundamentals of
`the Internal Combustion Engine (Prentice Hall, 1997)
`(available
`at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=1
`0003&recCount=25&recPointer=1&bibId=2109503.)
`Hawley, G.G., The Condensed Chemical Dictionary,
`Van Nostrand Reinhold Co., 9th ed. (1977) (available
`at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2
`1541&recCount=25&recPointer=14&bibId=1289584.)
`U.S. Patent No. 913,846
`1224
`1225 Michael Duoba, Ctr. for Transp. Research, Argonne
`Nat’l Lab., Challenges for the Vehicle Tester in
`Characterizing Hybrid Electric Vehicles, 7th CRC
`on Road Vehicle Emissions Workshop (April 1997)
`(available at
`http://www.osti.gov/scitech/biblio/516019.)
`
`1220
`1221
`
`1223
`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`Identifier
`Decision
`‘634 Patent
`IPR2014-0571
`PO Response
`
`Kawakatsu
`Anderson
`
`Dr. Stein CV
`Heywood
`
`Pulkrabek
`
`Hawley
`
`Pieper
`Duoba
`
`iv
`
`

`
`Exhibit
`No.
`1226
`
`1227
`
`1228
`1229
`
`1230
`
`1231
`
`1232
`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`Description
`Society of Automotive Engineers Special Publica-
`tion, Technology for Electric and Hybrid Vehicles,
`SAE SP-1331
`(February
`1998)
`(available
`at
`http://www.worldcat.org/title/technology-for-
`electric-and-hybrid-vehicles/oclc/39802642.)
`Kozo Yamaguchi et al., Development of a New
`Hybrid System — Dual System, SAE Technical
`Paper 960231 (February 1996) (available at
`http://papers.sae.org/960231/.)
`U.S. Patent No. 3,888,325
`L. E. Unnewehr et al., Hybrid Vehicle for Fuel
`Economy, SAE Technical Paper 760121 (1976)
`(available at http://papers.sae.org/760121/.)
`
`Brown, T.L. et al., Chemistry, The Central Science,
`Third Edition (Prentice-Hall 1985) (available at
`http://catalog.loc.gov/vwebv/holdingsInfo?searchId=2
`1829&recCount=25&recPointer=13&bibId=4259071.
`)
`
`Identifier
`SAE SP-1331
`
`Yamagu-
`chi Paper
`
`Reinbeck
`Unnewehr
`
`Brown
`
`Grunde T. Engh & Stephen Wallman, Development
`of the Volvo Lambda-Sond System, SAE Technical
`Paper
`770295
`(1977)
`(available
`at
`http://papers.sae.org/770295/.)
`
`Engh
`
`Stefanopoulou
`
`A. G. Stefanopoulou et al., Engine Air-Fuel Ratio and
`Torque Control using Secondary Throttles, Proceed-
`ings of the 33rd IEEE Conference on Decision and
`Control (December 1994) (available at
`http://ieeexplore.ieee.org/xpl/articleDetails.jsp?tp=&a
`rnumber=411385&queryText%3DA.+G.+Stefanopou
`lou+et+al.%2C+Engine+Air-
`Fuel+Ratio+and+Torque+Control+using+Secondary+
`Throt-
`tles%2C+Proceedings+of+the+33rd+IEEE+Conferen
`ce+on+Decision+and+Control+.LB.December+1994.
`RB.)
`
`v
`
`

`
`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`Exhibit
`No.
`1233
`
`Description
`Oreste Vittone et al., FIAT Research Centre, Fiat
`Conceptual Approach to Hybrid Car Design, 12th
`International Electric Vehicle Symposium, Vol-
`ume 2 (1994), (available at
`https://www.worldcat.org/title/symposium-
`proceedings-12th-international-electric-vehicle-
`symposium-december-5-7-1994-disneyland-hotel-
`and-convention-center-anaheim-
`california/oclc/32209857&referer=briefresults.)
`
`Identifier
`Vittone
`
`1234
`
`General Electric Company, Corp. Research &
`Dev., Near-Term Hybrid Vehicle Program, Final
`Report - Phase 1 (October 1979) (available at
`http://ntrs.nasa.gov/search.jsp?R=19800017707.)
`
`1235
`
`U.S. Application No. 13/065,704
`
`1236
`
`U.S. Patent No. 5,479,898
`
`GE Final
`Report
`
`‘704 Applica-
`tion
`
`Cullen
`
`vi
`
`

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`Case To Be Assigned
`IPR of U.S. Patent No. 8,214,097
`
`I.
`
`INTRODUCTION
`
`Petitioner Hyundai Motor America, Inc., Hyundai Motor Company, Kia Mo-
`
`tors Corporation and Kia Motors America, Inc. (“Petitioner”) requests inter partes
`
`review of claims 1, 3, 4, 7, 9, 11, 13, 14, 17, 19, 21, 23, 24, 27, 28, 30, 32, 33, 37
`
`and 38 (“Challenged Claims”) of U.S. Patent No. 8,214,097 (“‘097 Patent”) based
`
`on the substantively identical grounds instituted for the pending IPR2015-00792
`
`proceedings. For the exact same reasons previously considered by the Board, Peti-
`
`tioner respectfully seeks to join IPR2015-00792. This Petition asserts substantively
`
`identical arguments in connection with the grounds already instituted in IPR2015-
`
`00792; it does not add to or alter any argument already considered by the Board,
`
`and does not seek to expand the instituted grounds. As explained below, there ex-
`
`ists a reasonable likelihood that Petitioner will prevail in demonstrating unpatenta-
`
`bility 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 Com-
`
`pany, Kia Motors Corporation and Kia Motors America, Inc. are the real parties-in-
`
`interest.
`
`1
`
`

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`
`Related Matters – 37 C.F.R. § 42.8(b)(2)
`B.
`The ‘097 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. Paice has also asserted U.S. Patent No. 7,237,634 (“‘634 Patent”) and
`
`7,104,347 (“‘347 Patent”) in the foregoing litigations. Ford has filed petitions con-
`
`cerning the ‘097 Patent in IPR2014-00570 and IPR2014-01415. Ford has also
`
`filed petitions concerning the ‘634 and ‘347 Patents 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,
`
`IPR2014-00904,
`
`IPR2015-00795,
`
`IPR2015-00794,
`
`IPR2014-00884, IPR2014-00579 and IPR2014-00571. Petitioner is separately fil-
`
`ing petitions seeking inter partes review and motions for joinder in the following
`
`IPR proceedings:
`
`IPR2015-00758,
`
`IPR2015-00722,
`
`IPR2015-00784, IPR2015-
`
`00785, IPR2015-00790, IPR2015-00791 and IPR2015-00800 and IPR2015-00794.
`
`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) also of Bryan
`
`Cave LLP as back-up counsel. An appropriate Power of Attorney is filed concur-
`
`rently herewith.
`
`2
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`IPR of U.S. Patent No. 8,214,097
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`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
`
`10104. 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 ‘097 Patent is available for IPR and that Petition-
`
`er 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
`
`IPR2015-00792 along with a Motion for Joinder. 35 USC 315(c); 37 CFR 42.122.
`
`B. Challenged Claims – 37 C.F.R. § 42.104(b)(1)
`
`Petitioner requests IPR of the Challenged Claims based on the substantively
`
`identical grounds as instituted for the IPR2015-00792 proceeding, and requests that
`
`the Patent Trial and Appeal Board (“PTAB”) cancel those claims as unpatentable.
`
`C.
`
`1.
`
`Prior Art Relied Upon
`
`U.S. Patent No. 5,343,970 to Severinsky (Severinsky ‘970, Ex. 1205),
`
`which issued on September 6, 1994, is prior art under 35 U.S.C. § 102(b).
`
`2.
`
`Toshifumi Takaoka et al., A High-Expansion Ratio Gasoline Engine
`
`for the Toyota Hybrid System, Toyota Technical Review Vol. 47, No. 2 (April
`
`3
`
`

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`Case To Be Assigned
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`
`1998) (“Takaoka,” Ex. 1206), which was published in April 1998, is prior art under
`
`35 U.S.C. § 102(a). Petitioner submits a declaration establishing that Takaoka was
`
`is publically accessible as of September 1998. (Ex. 1208.)
`
`3.
`
`U.S. Patent No. 5,865,263 to Yamaguchi (“Yamaguchi,” Ex. 1209),
`
`which was filed in the U.S. on February 23, 1996 and issued on February 2, 1999,
`
`is prior art under 35 U.S.C. §102(e).
`
`D.
`
`Grounds of Challenge – 37 C.F.R. § 42.104(b)(2)
`
`The grounds of unpatentability presented in this petition and on which the
`
`PTAB instituted review in IPR2015-00792, are as follows:
`
`References
`Ground Basis
`1
`§ 103 Severinsky ‘970 and Takaoka
`
`2
`
`§ 103 Severinsky ‘970, Takaoka and
`Yamaguchi
`
`Claims Challenged
`1, 7, 9, 11, 17, 19, 21, 27, 28,
`30, 37 and 38
`3, 4, 13, 14, 23, 24, 32 and 33
`
`IV. 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-
`
`4
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`sion systems, or automotive transmissions. (Stein Decl., Ex. 1202, ¶¶39-43.)
`
`V.
`
`OVERVIEW OF THE ‘097 PATENT
`A.
`The ‘097 Patent Family
`
`The ‘097 Patent is a divisional, filed March 29, 2011, in a patent family
`
`chain that ultimately claims priority back to two separate provisional applications –
`
`U.S. Provisional Application Nos. 60/100,095 and 60/122,296 filed respectively on
`
`September 14, 1998 and March 1, 1999. (See Stein Decl., Ex. 1202, ¶¶121-123.)
`
`The diagram above illustrates the ‘097 Patent and its ancestors.
`
`B.
`
`Background and Purported Invention
`
`The ‘097 Patent is broadly directed to a “hybrid vehicle” design that in-
`
`cludes an internal combustion engine (“engine”), electric motor, and battery, all
`
`controlled by a controller. (‘097 Patent, Ex. 1201, Abstract.) The controller con-
`
`trols the operational mode of the hybrid vehicle so that the engine operates only
`
`under conditions of high efficiency in order to improve fuel economy. (‘097 Pa-
`
`tent, Ex. 1201, 13:37-50, 15:5516-2.) The ‘097 Patent admits that “the prior art, in-
`
`cluding the [Severinsky] ‘970 Patent, clearly discloses the desirability of operating
`
`an internal combustion engine in its most efficient operating range.” (‘097 Patent,
`
`5
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`
`Ex. 1201, 11:13–16.) In the background section discussing the prior art, the ‘097
`
`Patent further admits that great attention has been given to reducing fuel consump-
`
`tion and reducing pollutants emitted by vehicles. (‘097 Patent, Ex. 1201, 1:36–40.)
`
`As set forth in the Challenged Claims, the purported invention of the ‘097
`
`Patent is merely directed toward a well-known hybrid vehicle configuration with
`
`engine control strategies to minimize the formation of undesired emissions by
`
`maintaining a “substantially stoichiometric ratio.” (‘097 Patent, Ex. 1201, claims
`
`1, 11, 21 and 30.) Some Challenged Claims are further directed to known HEV
`
`control strategies that operate the engine and motors “in accordance with the vehi-
`
`cle’s instantaneous torque demands so that the engine is run only under conditions
`
`of high efficiency.” (‘097 Patent, Ex. 1201, Abstract, see e.g., claims 1 and 11.)
`
`However, these concepts were old and well-known to POSAs before the earliest
`
`effective filing date of the ‘097 Patent. (Stein Decl., Ex. 1202, ¶¶96-99.)
`
`C.
`
`Technical Fundamentals of the Claimed Subject Matter
`
`The Challenged Claims of the ‘097 Patent are directed to the interplay be-
`
`tween engine control strategies, the combustion process and emissions. Fundamen-
`
`tally, an internal combustion engine produces mechanical power by releasing ener-
`
`gy in the fuel through a combustion reaction with air. (Stein Decl. Ex. 1202, ¶44.)
`
`To regulate the mechanical power (i.e., output torque times engine speed) pro-
`
`duced by the engine during combustion, the amount of air and fuel provided to the
`
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`
`engine must be controlled. (Id. at ¶45.) To minimize the formation of undesired
`
`emissions and improve fuel economy, engine control strategies also regulate the
`
`air/fuel mixture to strive towards a “stoichiometric” ratio — the ratio at which
`
`complete combustion is achieved. (Id. At ¶¶47, 69-83.) Such undesired emissions
`
`are further reduced in a secondary reaction using a catalyst in the exhaust stream.
`
`However, controlling emissions can be more difficult during rapid changes in out-
`
`put engine torque (i.e., transient conditions), because of the time delay in measur-
`
`ing and modifying the air-fuel mixture. (Id. At ¶48). In contrast to an engine, an
`
`electric motor does not create emissions when converting electric energy to me-
`
`chanical energy. Thus, rapid changes in output motor torque — to meet driver de-
`
`mand — are possible without emissions concerns. (Id. At ¶49).
`
`HEVs combine and utilize the features of both internal combustion engines
`
`and electric motors to satisfy the driver demanded torque requirements to propel
`
`the vehicle in a way that reduces undesired emissions and improves fuel economy.
`
`“Application of the electric motor during rapid changes in vehicle torque demand
`
`resolves the problem of additional emissions that would otherwise be created by
`
`the engine alone. This was well known prior to the earliest effective filing date of
`
`the challenged claims of the ‘097 Patent.” (Id. at ¶50.)
`
`D.
`
`Prosecution History
`
`As part of the amendments that led to issued claim 1, the prosecution history
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`explains the claimed relationship between controlling combustion and stoichiome-
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`try on emissions formation:
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`More specifically, the claims of this application are largely directed to
`control of the combustion of fuel in an ICE of a hybrid vehicle so that
`the fuel is combusted efficiently. Ideally, combustion would take
`place at precisely the stoichiometric ratio, whereby the fuel:air mix-
`ture that is provided to the ICE is neither “rich” (containing more fuel
`than can be combusted in the amount of air provided), nor “lean”
`(containing more air than is needed for the complete combustion of
`the amount of fuel provided). Rich mixtures lead to unburned fuel in
`the exhaust, which is wasteful of fuel and can contribute to undesira-
`ble emissions, while over-lean mixtures can lead to increased combus-
`tion temperatures and formation of different undesired emissions.
`(‘097 File History, Ex. 1210 at 231, emphasis added.)
`
`The remarks further state that it is difficult to maintain a precisely stoichio-
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`metric ratio due to the “delay in the response of the ICE controller to transients in
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`the amount of torque required.” (Id. at 232.)
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`By limiting the rate of increase of engine output torque, a substantially stoi-
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`chiometric ratio can be maintained to reduce emissions:
`
`As claimed herein, the controller imposes a further, noninherent limi-
`tation on the rate of increase of torque output by the engine. This is
`done so that the “super-rich” fuel:air mixtures mentioned above, and
`indeed substantially all rich mixtures, can be avoided in favor of sub-
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`stantially stoichiometric combustion at all times, yielding further im-
`provement in fuel usage efficiency and reduction of undesired exhaust
`emissions. (Id. at 235, emphasis added.)
`The limitation is defined in relation to an “inherent maximum”:
`It will be appreciated that what is being claimed here is that the con-
`troller limits the rate of increase of torque output by the engine. That
`is, all engines have an inherent limitation on the maximum rate of in-
`crease at which they can supply torque responsive to increase in fuel
`supplied. (Id. at 234, emphasis added.)
`More specifically, the advantage of limiting the “rate of increase of output
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`torque of the engine” to less than the engine’s “inherent maximum rate of increase
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`in output torque” is “that the engine can be controlled to combust fuel substantially
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`at the stoichiometric fuel:air ratio, as claimed. Thus, combustion can be main-
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`tained substantially stoichiometric regardless of rapid variation in the operator’s
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`demand for torque to be supplied to the vehicle wheels.” (Id. at 242.)
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`VI.
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`STATE OF THE ART RELATIVE TO THE ‘097 PATENT
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`Since their introduction in the early 20th century, HEVs used the power ca-
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`pabilities of electric motors and internal combustion engines to satisfy torque re-
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`quirements in a fuel efficient manner. (Stein Decl., Ex. 1202, ¶¶50-53.) Advances
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`in components and electronics resulted in well-established HEV architectures and
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`engine controls. (Id. at ¶¶53-68.) From at least the 1970s, a variety of parallel hy-
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`brid vehicle systems having “at least one electric motor” were designed – such as
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`the one described in the Challenged Claims. (Id. at ¶¶56-59.)
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`During this same period, environmental regulations resulted in the develop-
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`ment of catalysts to increase the rate of fuel combustion to reduce the formation of
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`undesired emissions. (Id. at ¶¶69-78.) Since at least 1988, “three-way” catalysts
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`have been widely used to control hydrocarbon (HC), carbon monoxide (CO) and
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`nitrogen oxide (NOx) emissions. (Id. at ¶79.) To efficiently convert all three gas-
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`es, the engine must operate at a substantially stoichiometric air/fuel ratio. (Id.) A
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`stoichiometric air/fuel ratio is the ideal quantity of air (oxygen) and fuel reactants
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`required to achieve a complete combustion reaction – wherein all of the hydrocar-
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`bon fuel reacts with oxygen to form carbon dioxide and water.
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`(Id. at ¶¶71-73.)
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`Outside of the stoichiometric air/fuel ratio, HC, CO and NOx conversion efficien-
`
`cies rapidly drop. (Id. at ¶79.) Because fuel is completely burned at the stoichio-
`
`metric ratio, fuel economy is also maximized. (Id. at ¶¶47, 71-73.)
`
`Since at least 1977, a closed-loop feedback system has used one or more ox-
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`ygen (lambda) sensors to monitor the oxygen content in the exhaust stream from
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`the engine to help maintain the stoichiometric ratio; this is used to determine
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`whether the air/fuel ratio is “rich” (i.e., excess fuel) or “lean” (i.e., excess air). (Id.
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`at ¶¶81-83.) For conventional vehicles, engines typically run rich during engine
`
`starting conditions and during transient conditions (i.e., when the vehicle is accel-
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`erating under load). (Id. at ¶¶84-89.) During “rich” operation, vehicles emit more
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`HC and CO pollutants than during normal operation. (Id. at ¶73-74, 84.)
`
`As of the earliest claimed priority date of the ‘097 Patent, limiting the rate of
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`change of engine torque/load during transient conditions, such that the combustion
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`of fuel within the engine occurs at a substantially stoichiometric ratio, was known.
`
`(Id. at ¶90-91.) The Patentee admitted as much in their characterization of Takaoka
`
`(Ex. 1206) during the prosecution of U.S. Patent No. 7,104,347 (“the ‘347 Patent,”
`
`Ex. 1211), which is the great-grandparent of the ‘097 Patent:
`
`Takaoka et al, in “A High-Expansion-Ratio Gasoline Engine for the
`Toyota Hybrid System”, discuss the details of an ICE designed for use
`in a hybrid vehicle. This paper states that “By using the supplemen-
`tary drive power of the electric motor, the system eliminates the light-
`load range, where concentrations of hydrocarbons in the emissions are
`high and the exhaust temperature is low.” (p. 57; a similar statement is
`made on p. 59) and “By allocating a portion of the load to the electric
`motor,
`the system is able to reduce engine load fluctuation under
`conditions such as rapid acceleration. This makes it possible to re-
`duce quick transients in engine load so that the air-fuel ratio can be
`stabilized easily.” (p. 58). The former statement simply emphasizes
`the fact that engines are operated more efficiently at higher loads, and
`the latter that stoichiometric combustion can be more nearly ob-
`tained if the engine’s speed and/or load is varied as slowly as pos-
`sible. (‘347 File History, Ex. 1212 at 23, emphasis added)
`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). Certain terms in the claims of the
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`‘097 Patent were argued by Paice with respect to the ‘097 Patent and other patents
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`in the ‘097 Patent family, and construed by the Eastern District of Texas court in
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`Paice LLC v. Toyota Motor Corp. et al., Case No. 2:04-cv-211 and Paice LLC v.
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`Toyota Motor Corp. et al., Case No. 2:07-cv-180 (“Toyota Litigation,” Ex. 1213).
`
`Certain terms recited in the claims of the ‘097 Patent were also argued by Paice
`
`and construed by a Maryland district court in Paice LLC v. Hyundai Motor Corp.
`
`et al., Case No. 2:12-cv-0499, on July 24, 2014 (“Hyundai Litigation,” Ex. 1214).
`
`A.
`
`“road load (RL)” and “RL”
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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.” (Toyota Litigation, Ex. 1213, 14-15; Hyundai Litigation, Ex. 1214, 15-19.)
`
`For this proceeding, Petitioner proposes that “road load” be construed as
`
`“the amount of instantaneous torque required to propel the vehicle, be it positive or
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`negative.” This is consistent with the PTAB’s construction in related proceedings.
`
`(See IPR2014-00571 Decision, Ex. 1215 at 7.)
`
`B.
`
`“setpoint (SP)” and “SP”
`
`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” (Toyota Litigation, Ex. 1213 at 12-13; Hyundai Litigation, Ex. 1214 at
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`19-23). Petitioner disagrees with this construction.
`
`The ‘097 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) a torque value (e.g., claims 1 and 11); or (2) a torque-based
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`“road load” value (e.g., claim 21). No claims recite a “setpoint” or “SP” in compar-
`
`ison to any other system variable. Likewise, the specification says “the micropro-
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`cessor tests sensed and calculated values for system variables, such as the vehicle’s
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`instantaneous torque requirement, i.e., the “road load” RL. . . against setpoints, and
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`uses the results of the comparisons to control the mode of vehicle operation.” (‘097
`
`Patent, Ex. 1201, 40:16-26.) To provide a meaningful comparison, the “setpoint”
`
`would have to be in the same measurement units as the “road load.”
`
`During prosecution of the ‘347 Patent – the great-grandparent of the ‘097
`
`Patent – Patentee added the following limitation to pending claims 82 and 104 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.” (‘347 File History, Ex. 1212 at 37-38 and 43-44.) Patentee
`
`then argued the engine was operated only “when it is loaded . . . in excess of SP
`
`[setpoint], which is now defined to be ‘substantially less than the maximum torque
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`output (MTO) of said engine.’” (Id. at 49.) This proposed construction is consistent
`
`with the PTAB’s construction in related proceedings. (See IPR2014-00571 Deci-
`
`sion, Ex. 1215, 7-9) Accordingly the broadest reasonable construction of “setpoint
`
`(SP)” and “SP” as used in the challenged claims is a “predetermined torque value.”
`
`C.
`
`“abnormal and transient conditions”
`
`Claims 7, 17, 27 and 37 require “operat[ing] the engine at torque output
`
`levels less than SP under abnormal and transient conditions.” The ‘097 Patent nei-
`
`ther defines “abnormal and transient conditions” nor describes its full scope with
`
`reasonable certainty. And, no “plain meaning” exists. However, during prosecution
`
`of the ‘097 Patent, the Patentee identified starting and stopping the engine as ex-
`
`amples of such conditions at which the engine is operated at outputs less than SP:
`
`The ‘abnormal and transient conditions’ referred to are such condi-
`tions as starting the engine, during which operation it must necessarily
`be operated at less than SP for a short time.
`(‘097 File History, Ex. 1210 at 238.)
`Patentee further defined “abnormal and transient conditions” in claim 22 of
`
`the ‘347 Patent, the great-grandparent of the ‘097 Patent. Claim 22 of the ‘347 Pa-
`
`tent defines abnormal and transient conditions as “comprising starting and stop-
`
`ping of the engine and provision of torque to satisfy drivability or safety considera-
`
`tions.” (‘347 Patent, Ex. 1211, claim 22.) Thus, although Petitioner does not admit
`
`that the term “abnormal and transient conditions” satisfies 35 U.S.C. § 112, the
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`limitation appears to include “starting and stopping of the engine and provision of
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`torque to satisfy drivability or safety considerations.” Accordingly, for purposes of
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`this proceeding only, Petitioner construes “abnormal and transient conditions” as
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`comprising “starting and stopping of the engine and provision of torque to satisfy
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`drivability or safety considerations.”
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`VIII. UNPATE