Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`Filed on behalf of Petitioners
`By:
`Joseph J. Richetti
`Kevin 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 1-3, 6-12, 16, 17, 19, 23, 27, 30 AND 66 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................................................................................................................iii
`
`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)..............................................1
`
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3).........................2
`
`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) ...............................3
`
`(i)
`(ii)
`(iii)
`(iv)
`
`Ibaraki ’882.....................................................................................3
`Frank ’363.......................................................................................4
`Jurgen...............................................................................................4
`Lateur ’280......................................................................................4
`
`IV.
`
`V.
`
`STATE OF THE ART .........................................................................................5
`
`CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3) ..........................6
`
`A.
`
`B.
`
`C.
`
`road load (RL) and RL .............................................................................6
`
`setpoint (SP) and SP .................................................................................7
`“mode I,” “low-load operation mode I,” “highway cruising
`operation mode IV,” “acceleration operation mode V”.....................8
`
`VI. UNPATENTABILITY GROUNDS .................................................................9
`
`i
`
`

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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`A.
`
`Ground 1: Claims 1-3, 12, 16, 17, 19, 27, 30 And 66 Are Obvious
`Over Ibaraki ’882 In View Of The Knowledge Of A POSA............9
`
`Independent Claim 1............................................................9
`1.
`Dependent Claim 2.............................................................27
`2.
`Dependent Claim 3.............................................................29
`3.
`Dependent Claim 12 ..........................................................30
`4.
`Dependent Claim 16 ..........................................................32
`5.
`Dependent Claim 17 ..........................................................39
`6.
`Dependent Claim 19 ..........................................................41
`7.
`Dependent Claim 27 ..........................................................45
`8.
`Dependent Claim 30 ..........................................................46
`9.
`10. Dependent Claim 66 ..........................................................46
`Ground 2 : Claims 6-11 Are Obvious Over Ibaraki ‘882 In View
`Of Frank ‘363 And The Knowledge Of A POSA .............................47
`
`1.
`
`2.
`3.
`4.
`5.
`6.
`
`Dependent Claim 6.............................................................47
`(a)
`Reason To Combine.............................................50
`Dependent Claim 7.............................................................51
`Dependent Claim 8.............................................................52
`Dependent Claim 9.............................................................53
`Dependent Claim 10 ..........................................................54
`Dependent Claim 11 ..........................................................55
`Ground 3: Claim 23 Is Obvious Over Ibaraki ‘882 In View Of The
`Teachings Of Jurgen And Lateur ‘280 In Further View Of The
`Knowledge Of A POSA.........................................................................56
`
`B.
`
`C.
`
`(a)
`
`Reason To Combine.............................................57
`
`VII. OBJECTIVE INDICIA OF NONOBVIOUSNESS.....................................60
`
`VIII. CONCLUSION...................................................................................................60
`
`ii
`
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`EXHIBIT LIST
`
`Exhibit
`No.
`1550
`1551
`1552
`1553
`1554
`
`1555
`1556
`
`1557
`1558
`
`1559
`1560
`1561
`
`1562
`
`1563
`
`1564
`
`1565
`
`1566
`
`1567
`
`1568
`
`1569
`1570
`
`Description
`U.S. Patent No. 7,237,634
`Ford Letter to Paice
`US Patent 5,789,882
`US Patent 6,116,363
`Automotive Electronics
`Handbook (Jurgen)
`US Patent 5,823,280
`Declaration of Gregory Da-
`vis
`US Patent 7,104,3 47
`7,237,634 File History (cer-
`tified)
`Toyota Litigations
`Hyundai Litigation
`PTAB Decisions & Prelim-
`inary 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
`Challenge
`Introduction to Automotive
`Powertrain (Davis)
`US Application 60-100095
`
`History of Hybrid Electric
`Vehicle (Wakefield-1998)
`SAE 760121 (Unnewehr-
`1976)
`SAE 920447 (Burke-1992)
`Vehicle Tester for HEV
`(Duoba- 1997)
`
`Date
`July 3, 2007
`Sept. 2014
`Aug. 4, 1998
`Sept. 12, 2000
`
`Oct. 20, 1998
`
`Identifier
`’634 Patent
`
`Ibaraki ’882
`Frank ‘363
`Jurgen
`
`Lateur ‘280
`Davis Dec.
`
`Sept. 12, 2006
`n/a
`
`‘347 Patent
`’634 Patent File History
`
`2005
`2013-2014
`
`Toyota Litigation
`Hyundai Litigation
`
`n/a
`
`Feb. 1994
`
`Feb. 1997 &
`Feb. 1998
`
`Filed Sept. 11,
`1998
`1998
`
`‘347 File History
`
`Davis Textbook
`
`‘095 Provisional
`
`Wakefield
`
`Feb. 1, 1976
`
`Unnewehr
`
`Feb. 1, 1992
`Aug. 1, 1997
`
`Burke 1992
`Duoba 1997
`
`iii
`
`

`
`Exhibit
`No.
`1571
`
`1572
`1573
`1574
`
`1575
`
`1576
`
`1577
`1578
`
`1579
`1580
`
`1581
`
`1582
`
`1583
`
`1584
`
`1585
`1586
`1587
`
`1588
`1589
`1590
`
`Description
`DOE Report to Congress
`(1994)
`SAE SP-1331 (1998)
`SAE SP-1156 (1996)
`Microprocessor Design for
`HEV (Bumby-1988)
`DOE HEV Assessment
`(1979)
`EPA HEV Final Study
`(1971)
`WO 9323263A1 (Field)
`Toyota Prius (Yamaguchi-
`1998)
`US Patent 6,209,672
`Propulsion System for De-
`sign for EV (Ehsani-1996)
`Propulsion System Design
`for HEV (Ehsani-1997)
`Bosch Automotive Hand-
`book (1996)
`SAE SP-1089 (Anderson-
`1995)
`Critical Issues in Quantify-
`ing HEV Emissions (An
`1998)
`Gregory Davis Resume
`Gregory Davis Data
`Bumby, J.R. et al. “Optimi-
`sation and control of a hy-
`brid electric car” - IEE
`Proc. A 1987, 134(6)
`US Patent 5,343,970
`US Patent 5,327,992
`Paice Complaint
`
`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`Date
`Apr-95
`
`Identifier
`1994 Report to Congress
`
`Feb. 1998
`Feb. 1996
`Sept. 1, 1988
`
`SAE SP-1331
`SAE SP-1156
`Bumby/Masding 1988
`
`Sept. 30, 1979
`
`HEV Assessment 1979
`
`June 1, 1971
`
`EPA HEV Final Study
`
`Nov. 25, 1998
`Jan. 1998
`
`April 3, 2001
`June 5, 1996
`
`9323263
`Toyota Prius Yamaguchi
`1998
`‘672 Patent
`IEEE Ehsani 1996
`
`Feb. 1997
`
`Oct. 1996
`
`Feb. 1995
`
`IEEE Ehsani 1997
`
`Bosch Handbook
`
`SAE SP-1089
`
`Aug. 11, 1998
`
`An 1998
`
`Nov. 1987
`
`Bumby II
`
`Sept. 6, 1994
`July 12, 1994
`Feb. 25, 2014
`
`Severinsky ‘970
`Boll
`
`iv
`
`

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`
`I.
`
`INTRODUCTION
`
`Petitioner Hyundai Motor America, Inc., Hyundai Motor Company, Kia Mo-
`
`tors Corporation and Kia Motors America, Inc. (“Petitioner”) requests IPR of
`
`claims 1-3, 6-12, 16, 17, 19, 23, 27, 30 and 66 of U.S. Patent No. 7,237,634 (“’634
`
`Patent”) based on the substantively identical grounds instituted for the pending
`
`IPR2015-00784 proceeding. For the exact same reasons previously considered by
`
`the Board, Petitioner respectfully seeks to join IPR2015-00784. This Petition as-
`
`serts substantively identical arguments in connection with the grounds already in-
`
`stituted in IPR2015-00784;
`
`it does not add to or alter any argument already con-
`
`sidered by the Board, and does not seek to expand the instituted grounds. As ex-
`
`plained below, there exists a reasonable likelihood that Petitioner will prevail in
`
`demonstrating unpatentability of at least onechallengedclaim. Because this Peti-
`
`tion is filed along with a Motion for Joinder within one month of the institution of
`
`IPR2015-00784, it is timely and proper. 35 U.S.C. § 315(c); 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 Corpo-
`
`ration and Kia Motors America, Inc. are the real parties-in-interest.
`
`B.
`
`Related Matters - 37 C.F.R. § 42.8(b)(2)The ‘634 Patent is being as-
`
`serted in Paice, LLC and the Abell Foundation, Inc. v. Ford Motor Company, Case
`
`1
`
`

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`Case To Be Assigned
`IPR of U.S. Patent No. 7,237,634
`
`No. 1-14-cv-00492 and Paice LLC and The Abell Foundation, Inc. v. Hyundai Mo-
`
`tor America et. al. Case No. 1:2012-cv-00499. The ‘634 Patent was also previous-
`
`ly asserted in Paice, LLC and the Abell Foundation, Inc. v. Toyota Motor Corpora-
`
`tion, 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 mo-
`
`tions for joinder in the following IPR proceedings: IPR2015-00758, IPR2015-
`
`00722, IPR2015-00785,
`
`IPR2015-00790,
`
`IPR2015-00791,
`
`IPR2015-00800,
`
`IPR2015-00794 and IPR2015-00792.
`
`C.
`
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)Petitioner ap-
`
`points 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.
`
`2
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`IPR of U.S. Patent No. 7,237,634
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`D.
`
`Service Information - 37 C.F.R. § 42.8(b)(4)Service of any docu-
`
`ments 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
`
`kev-
`
`in.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 es-
`
`topped from challenging the patent claims on the grounds in this Petition because
`
`this Petition is filed within 1 month of institution of IPR2015-00784 along with a
`
`Motion for Joinder. 35 USC 315(c); 37 CFR. 42.122(b).
`
`B.
`
`Challenged Claims - 37 C.F.R. §42.104(b)(1)Petitioner requests IPR
`
`of the ’634 Patent claims 1-3, 6-12, 16, 17, 19, 23, 27, 30 and 66 based on the sub-
`
`stantively identical grounds as instituted for the pending IPR2015-00784 proceed-
`
`ing, 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)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,
`
`3
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`
`and qualifies as prior art under 35 U.S.C. § 102(a) & (e). (Ex. 1552 [Ibaraki ’882].)
`
`(ii)
`
`Frank ’363 – U.S. Patent No. 6,116,363 to Frank (hereinafter
`
`“Frank ’363”) was filed on April 21, 1998, issued on September 12, 2000, and
`
`qualifies as prior art under 35 U.S.C. § 102(e). (Ex. 1553 [Frank ’363].)
`
`(iii)
`
`Jurgen – “Automotive Electronics Handbook” by Ronald
`
`Jurgen (hereinafter “Jurgen”) was published in 1995, and qualifies as prior art un-
`
`der 35 U.S.C. § 102(b). (Ex. 1554 [Jurgen].)
`
`(iv) Lateur ’280 – U.S. Patent No. 5,823,280 to Lateur et al. (here-
`
`inafter “Lateur ’280”) 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. 1555 [Lateur ’280].)
`
`The grounds of unpatentability presented in this petition and on which the
`
`PTAB instituted review in IPR2015-00784, are as follows:
`
`Ground Basis
`1
`§ 103
`
`References
`Ibaraki ’882 and the general
`knowledge of a POSA
`
`2
`
`3
`
`§ 103
`
`§ 103
`
`Ibaraki ’882, Frank ’363 and
`the general knowledge of a
`POSA
`Ibaraki ’882, Jurgen, Lateur
`’280 and the general
`knowledge of a POSA
`
`Claims
`Independent claim 1 and
`dependent claims 2, 3, 12,
`16, 17, 19, 27, 30 and 66.
`Dependent claims 6, 7, 8, 9,
`10 and 11
`
`Dependent claim 23
`
`The unpatentability grounds set forth in this Petition are confirmed and sup-
`
`ported by the declaration of Dr. Gregory W. Davis. (“Davis Dec.” at Ex. 1556.)
`
`4
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`IV.
`
`STATE OF THE ART
`
`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. 1556
`
`[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. 1556 [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. 1556, see discussion regarding “series” hybrid vehicles at ¶¶61-69; “parallel”
`
`hybrid vehicles at ¶¶70-86; and “series-parallel” hybrid vehicles ¶¶87-107.)
`
`For hybrid vehicles it was further known prior to September 1998 that en-
`
`gine operation could be restricted to its “sweet spot” using a control strategy that
`
`typically included: (1) an all-electric mode where only the motor propels the vehi-
`
`cle when engine operation is inefficient (i.e., at low loads or vehicle speeds); (2) an
`
`engine-only mode where the engine propels the vehicle when engine operation is
`
`efficient, such as highway cruising at higher loads and speeds; and (3) an accelera-
`
`tion mode where both the engine and motor are used to propel the vehicle when the
`
`demand is beyond the maximum torque capabilities of the engine, such as during
`
`5
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`acceleration, passing, and hill-climbing. (Ex. 1556 [Davis Dec.] ¶¶84, 124-131.)
`
`V.
`
`CLAIM CONSTRUCTION — 37 C.F.R. § 42.104 (B)(3)
`
`For purposes of this IPR, a claim is interpreted by applying its “broadest rea-
`
`sonable construction.” 37 C.F.R. §42.100(b). 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 construed by the Eastern District of Texas
`
`court in Paice LLC v. Toyota Motor Corp. et al., Case No. 2:04-cv-211 and Paice
`
`LLC v. Toyota Motor Corp. et al., Case No. 2:07-cv-180, (“Toyota Litigation,” Ex.
`
`1559.) Certain terms recited in the claims of the ’634 Patent were also argued by
`
`the patentee 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 Litiga-
`
`tion,” Ex. 1560.) Certain terms that are related to terms recited in the claims of the
`
`’634 were also discussed in prior institution decisions. (“Ford IPRs,” Ex. 1561.)
`
`A.
`
`road load (RL) and RLThe Eastern District of Texas and the District
`
`of Maryland courts have construed the terms “road load,” “RL,” and “road load
`
`(RL)” as “the instantaneous torque required for propulsion of the vehicle, which
`
`may be positive or negative in value.” (Toyota Litigation, Ex. 1559 at 205-206;
`
`Hyundai Litigation, Ex. 1560 at 16, 96-97.)
`
`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
`
`6
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`negative.” This is consistent with a prior PTAB construction. (See Ford v. Paice
`
`IPR Decisions, Ex. 1561 at 20, 38, 51, 70, 84.) Petitioner contends the construction
`
`is narrower under district court standards.
`
`B.
`
`setpoint (SP) and SPThe Texas and Maryland courts construed “set-
`
`point (SP)” as being “a definite, but potentially variable value at which a transition
`
`between operating modes may occur” (Toyota Litigation, Ex. 1559, 204, Hyundai
`
`Litigation, Ex. 1560, 104.)
`
`The ’634 Patent claims, specification, and file history define “setpoint” as a
`
`“predetermined torque value.” All claims recite a “setpoint” or “SP” value being
`
`compared to either: (1) an engine torque value (e.g., claim 1); or (2) a torque-based
`
`“road load” value (e.g., claim 33). No claims recite a “setpoint” or “SP” in compar-
`
`ison to any other system variable. Likewise, the specification says “the micropro-
`
`cessor tests sensed and calculated values for system variables, such as the vehicle’s
`
`instantaneous torque requirement, i.e., the ‘road load’ RL . . . against setpoints, and
`
`uses the results of the comparisons to control the mode of vehicle operation.” (’634
`
`Patent, Ex. 1550, 40:16-26.) 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
`
`Ex. 1557) – patentee added the following limitation to pending claims 1 and 82 to
`
`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
`
`(MTO) of said engine.” (’347 File History, Ex. 1562 at 8-20.) Patentee then argued
`
`the engine was operated only “when it is loaded . . . in excess of a setpoint SP,
`
`which is now defined to be ‘substantially less than the maximum torque output
`
`(MTO) of said engine.’” (Id. at 21.)
`
`This proposed construction is consistent with recent PTAB constructions.
`
`(Ford IPRs, Ex. 1561 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.”
`
`C.
`
`“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 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 opera-
`
`tion in which energy flows from the fuel tank into the engine and 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 engine and from
`
`the battery bank to at least one motor and torque (rotary force) flows from the en-
`
`gine and at least one motor to the road wheels.” (Toyota Litigation, Ex. 1559 at
`
`8
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`
`219.) Petitioner agrees with these constructions for this IPR but reserves the right
`
`to offer narrower constructions in litigation.
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`VI. UNPATENTABILITY GROUNDS
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`For at least the following reasons, the references below render the claimed
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`subject matter unpatentable under 35 U.S.C. §103.
`
`A.
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`Ground 1: Claims 1-3, 12, 16, 17, 19, 27, 30 And 66 Are Obvious
`Over Ibaraki ’882 In View Of The Knowledge Of A POSA
`
`1.
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`Independent Claim 1...
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`… [1.0] 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. 1552 [Ibaraki ’882] at 1:9-14;
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`Ex. 1556 [Davis Dec.] at ¶¶181-184.) As illustrated below in Figure 8, Ibaraki ’882
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`generally discloses a hybrid vehicle including a controller (128), which is used to
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`control an internal combustion engine (112) and an electric motor (114) (Ex. 1552
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`[Ibaraki ’882] at 19:11-54.)
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`... [1.1] one or more wheels;
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`Ibaraki ’882 also discloses that power from the internal combustion engine
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`and motor are “simultaneously or selectively transferred to a transmission 16, and
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`to right and left drive wheels via an output device 18.” (Ex. 1552 [Ibaraki ‘882]
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`at 11:12-16, emphasis added; see also Id. at 19:18-28; Ex. 1556 [Davis Dec.] at ¶¶
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`185-187.) Further, Ibaraki ‘882 discloses “drive wheels 120” (highlighted in red in
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`Figure 8 below) as part of the described hybrid vehicle:
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`Ex. 1552 [Ibaraki ‘882] at Figure 8 (annotated).
`... [1.2] an internal combustion engine operable to propel the hybrid
`vehicle by providing torque to the one or more wheels;
`
`Ibaraki ’882 expressly discloses “power of the internal combustion engine . .
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`. simultaneously or selectively transferred to a transmission . . ., and to right and
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`left drive wheels.” (Ex. 1552 [Ibaraki ’882] at 11:12-15 and 19:24-28, emphasis
`
`added; Ex. 1556 [David Dec.] at ¶190.) A POSA would have understood that when
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`power is transferred from the internal combustion engine to the transmission, and
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`then to the wheels, the power is transferred by the torque from the engine crank-
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`shaft, which is applied to the drive shaft and ultimately the drive wheels. (Ex. 1556
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`[Davis Dec.] at ¶191.)
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`Further, as shown in Figure 8 below, Ibaraki ’882 discloses a hybrid vehicle
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`with an “internal combustion engine 112” (highlighted in green below), which
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`transfers power (highlighted in green) via “transmission 116” to “drive wheels
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`120” highlighted in red). (Ex. 1552 [Ibaraki ‘882] at 19:24-28.)
`
`Ex. 1552 [Ibaraki ‘882] at Figure 8 (annotated).
`... [1.3] a first electric motor coupled to the engine;
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`As shown above in limitation [1.0], Ibaraki ’882 discloses a hybrid vehicle,
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`which includes an engine and an electric motor. In addition to the electric motor
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`disclosed in Figure 8 above, Ibaraki ’882 further discloses adding a separate “elec-
`
`tric generator” for generating electricity.
`
`A drive control apparatus for an automotive vehicle having an
`1.
`electric generator for generating an electric energy, an electric en-
`ergy storage device for storing the electric energy generated by said
`electric generator, an electric motor operated as a first drive power
`source by said electric energy, and an engine operated as a second
`drive power source by combustion of a fuel, said apparatus having an
`engine drive mode in which the vehicle is driven by said engine, a
`motor drive mode in which the vehicle is driven by said electric mo-
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`tor, and an electricity generating mode in which said electric generator
`is operated by said engine to charge said electric energy storage de-
`vice. . .
`
`(Ex. 1552 [Ibaraki ‘882] at Claim 1, emphasis added; Ex. 1556 [Davis Dec.] at
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`¶196.)
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`Ibaraki ’882 further discloses that the hybrid vehicle could be implemented
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`with a “generator” and “electric motor” as separate elements.
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`The electric generator and the electric motor may be provided as
`separate elements. Alternatively, the electric motor may function as
`the electric generator.
`
`(Ex. 1552 [Ibaraki ’882] at 5:27-29, emphasis added.)
`
`While the electric motor 14, 114 functions also as the electric genera-
`tor or dynamo in the illustrated embodiments, a separate electric
`generator may be provided in addition to the electric motor which
`is operated for the sole purpose of driving the vehicle.
`
`(Ex. 1552 [Ibaraki ’882] at 26:34-38, emphasis added; Ex. 1556 [Davis Dec.] at
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`¶197.)
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`Based on these express disclosures, Figures 1 and 8 (as shown annotated be-
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`low) could be modified to include the disclosed separate electric generator, which
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`would function as the claimed “first electric motor coupled to the engine.” (Ex.
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`1556 [Davis Dec.] at ¶¶198 and 201.)
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`Ex. 1552 [Ibaraki ‘882] at Figures 1 and 8 (annotated).
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`A POSA would have understood that the separate “generator” described in
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`Ibaraki ’882, and depicted in annotated Figures 1 and 8 above, is an electric motor.
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`(Ex. 1556 [Davis Dec.] at ¶199.) Further, because Ibaraki ’882 discloses that the
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`engine operates the generator to generate electricity, a POSA would have under-
`
`stood that the internal combustion engine disclosed in Ibaraki ‘882 would neces-
`
`sarily need to be coupled to the electric motor-generator (i.e., first electric motor).1
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`1 Because Ibaraki ’882 does not expressly disclose the placement and configura-
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`tion of the “generator” (first electric motor) in the larger system, Petitioner submits
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`this ground as an obvious analysis under 35 U.S.C. § 103. The placement and con-
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`(Id. at ¶200.)
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`Alternatively, Ibaraki ’882 discloses an embodiment where two or more
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`electric motors may be provided for the drive wheels:
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`Two or more electric motors may be provided for the respective
`drive wheels of the vehicle, or a single electric motor may be provid-
`ed for all of the drive wheels. Where the vehicle is equipped with a
`transmission, however, the drive wheels are desirably driven by a sin-
`gle electric motor in the motor drive mode. (Ex. 1552 [Ibaraki ‘882] at
`10:20-26, emphasis added; Ex. 1556 [Davis Dec.] at ¶203.)
`
`Thus, in this embodiment, Ibaraki ‘882 discloses a hybrid vehicle with at
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`least first and second electric motors (i.e., “two or more electric motors”). Because
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`the disclosed “two or more electric motors” are “provided for the respective drive
`
`wheels of the vehicle,” a POSA would have understood that the “two or more elec-
`
`tric motors” are coupled to the drive wheels. (Ex. 1556 [Davis Dec.] at ¶204.) Fur-
`
`ther, because the “two or more electric motors” could function as electric genera-
`
`tors in an “ELECTRICITY GENERATING DRIVE mode,” a POSA would have
`
`understood that the “two or more electric motors” would necessarily have to be
`
`figuration of the described “generator” would have been an obvious design choice
`
`to a person having ordinary skill in the art. (Ex. 1556 [Davis Dec.] at ¶202.)
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`coupled to the IC engine in order for the IC engine to drive the motors for generat-
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`ing electricity. (Ex. 1552 [Ibaraki ‘882] at 12:22-25, 17:65-18:1, 27:1-3; Ex. 1556
`
`[Davis] at ¶205.)
`
`... [1.4] a second electric motor operable to propel the hybrid vehicle
`by providing torque to the one or more wheels;
`
`As discussed above for limitation [1.3], Ibaraki ’882 discloses a hybrid vehi-
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`cle with a first electric motor (i.e., “generator”) and second electric motor (i.e.,
`
`“electric motor”), where the second electric motor may be operable in a “motor
`
`drive mode” to drive the vehicle.
`
`A drive control apparatus for an automotive vehicle having an
`1.
`electric generator for generating an electric energy, an electric en-
`ergy storage device for storing the electric energy generated by said
`electric generator, an electric motor operated as a first drive power
`source by said electric energy, and an engine operated as a second
`drive power source by combustion of a fuel, said apparatus having an
`engine drive mode in which the vehicle is driven by said engine, a
`motor drive mode in which the vehicle is driven by said electric mo-
`tor, and an electricity generating mode in which said electric generator
`is operated by said engine to charge said electric energy storage de-
`vice. . . (Ex. 1552 [Ibaraki ‘882] at Claim 1, emphasis added; Ex.
`1556 [Davis Dec.] at ¶207.)
`
`The second electric motor is further depicted in the annotated versions of
`
`Figures 1 and 8 below.
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`Ex. 1552 [Ibaraki ‘882] at Figures 1 and 8 (annotated).
`
`Ibaraki ’882 expressly discloses that the “power of the motor . . . are simul-
`
`taneously or selectively transferred to a transmission . . . and to right and left drive
`
`wheels.” (Ex. 1552 [Ibaraki ’882] at 11:12-15 and 19:24-28; Ex. 1556 [Davis Dec.]
`
`at ¶210.) A POSA would have understood that when power is transferred from the
`
`motor (second electric motor) to the transmission, and then to the right and left
`
`drive wheels, the power is transferred by the torque from the output shaft of the
`
`second electric motor, which is applied to the drive shaft and ultimately the drive
`
`wheels. (Ex. 1556 [Davis Dec.] at ¶211.)
`
`As stated above, Ibaraki ’882 also discloses that “[t]wo or more electric mo-
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`tors may be provided for the respective drive wheels of the vehicle. . .” (Ex. 1552
`
`[Ibaraki ‘882] at 10:20-22.) Ibaraki ‘882 discloses the use of a “dynamo-electric
`
`motor,” which functions as both an electric motor and an electric generator. (Ex.
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`1552 [Ibaraki ‘882] at 11:11-12 and 19:21-24.) In view of this disclosure for the
`
`“motor” of Ibaraki ‘882, a POSA would have understood that one or more of the
`
`“two or more electric motors” could have been used as the second electric motor to
`
`provide torque to the drive wheels and propel the vehicle. (Ex. 1556 [Davis Dec.]
`
`at ¶212.)
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`... [1.5] a battery coupled to the first and second electric motors, op-
`erable to: provide current to the first and/or the second electric mo-
`tors; and accept current from the first and second electric motors;
`
`Ibaraki ‘882 discloses “electric energy storage device (electric power supply
`
`device) 22 in the form of a battery.” Ibaraki ‘882 also discloses “electric energy
`
`storage device 136,” which can be “in the form of a battery or condenser.” (Ex.
`
`1552 [Ibaraki ‘882] at 11:31-33 and 19:55-57, emphasis added.) Ibaraki ’882 fur-
`
`ther discloses coupling a battery (i.e., electric energy storage device 22, 136) to a
`
`motor (i.e., electric motor 14, 114) so that the battery can accept current from the
`
`motor for charging of the battery. (Ex. 1552 [Ibaraki ‘882] at 11:37-41 and 19:63-
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`67.) Therefore, the electric energy storage devices (22, 136) (i.e., batteries) dis-
`
`closed in Ibaraki ‘882 are both operable to accept current from the disclosed elec-
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`tric motors (14, 114). (Ex. 1556 [Davis] at ¶215.) A POSA would have understood
`
`that the electric energy storage devices (22, 136) (i.e., battery) would have been
`
`operable to accept current from any connected electric motor-generators. (Id. at
`
`¶216.)
`
`Further, as discussed above, Ibaraki ‘882 discloses a hybrid vehicle with a
`
`first electric motor, which functions as a generator, and provides electric energy
`
`(current) to the electric energy storage device (i.e., battery). The battery is there-
`
`fore operable to accept current from the first electric motor.
`
`Ibaraki ‘882 also discloses that the second electric motor uses electric ener-
`
`gy from the electric energy storage device (battery) to operate as a drive power
`
`source. The second electric motor is therefore coupled to the electric energy stor-
`
`age device such that the battery is operable to: (1) provide current for propelling
`
`the vehicle, and (2) receive current back when the electric motor is functioning as
`
`the generator. (Ex. 1556 [Davis Dec.] at ¶¶218-219, 221-223.) Ibaraki ’882 further
`
`discloses operating the disclosed “electric motor” as a “dynamo” electric motor,
`
`which is capable of func