UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 7,104,347
`Issue Date: Sept. 12, 2006
`Title: HYBRID VEHICLES
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,104,347
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`
`Case No. IPR2017-00227
`__________________________________________________________________
`
`
`
`
`
`

`
`
`
`I. 
`II. 
`III. 
`
`TABLE OF CONTENTS
`Mandatory Notices (37 C.F.R. § 42.8) ........................................................... 1 
`Grounds for Standing (37 C.F.R. § 42.104(a)) ............................................... 2 
`Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and Relief
`Requested (37 C.F.R. § 42.22(a)(1)) .............................................................. 2 
`A. 
`The ’347 Patent .................................................................................... 2 
`B. 
`Patents and Printed Publications Relied On ......................................... 6 
`C. 
`Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2)) ........ 7 
`D. 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................... 7 
`IV.  How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-
`(5)) .................................................................................................................. 9 
`A. 
`Claims 23, 28, 30, and 32 are Obvious in View of Barske and
`Gray .................................................................................................... 12 
`1. 
`Independent Claim 23 .............................................................. 13 
`2. 
`Dependent Claims 28, 30, and 32 ............................................ 24 
`3. 
`Obviousness in View of Barske and Gray ............................... 27 
`4. 
`Claim Charts ............................................................................ 30 
`Claim 24 is Obvious in View of Barske, Gray, and Probst ............... 43 
`1. 
`Claim 24 ................................................................................... 43 
`2. 
`Obviousness in View of Barske, Gray, and Probst .................. 44 
`3. 
`Claim Chart .............................................................................. 45 
`Claim 25 is Obvious in View of Barske, Gray, and Moroto .............. 46 
`1. 
`Claim 25 ................................................................................... 47 
`2. 
`Obviousness in View of Barske, Gray, and Moroto ................ 49 
`3. 
`Claim Chart .............................................................................. 50 
`Claim 27 is Obvious in View of Barske, Gray, and Lateur ............... 51 
`1. 
`Claim 27 ................................................................................... 51 
`2. 
`Obviousness in View of Barske, Gray, and Lateur ................. 52 
`3. 
`Claim Chart .............................................................................. 53 
`
`B. 
`
`C. 
`
`D. 
`
`i
`
`

`
`
`
`V. 
`
`E. 
`
`Claim 41 is Obvious in View of Barske, Gray, and Severinsky
`’970 ..................................................................................................... 54 
`1. 
`Claim 41 ................................................................................... 54 
`2. 
`Obviousness in View of Barske, Gray, and Severinsky
`’970 .......................................................................................... 55 
`Claim Chart .............................................................................. 56 
`3. 
`Conclusion .................................................................................................... 57 
`
` 
`
`ii
`
`

`
`
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1003
`
`
`Exhibit 1004
`
`Exhibit 1005
`
`Exhibit 1006
`
`Exhibit 1007
`
`Exhibit 1008
`
`Exhibit 1009
`
`
`Exhibit 1010
`
`
`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 7,104,347 to Severinsky et al.
`
`Declaration of Scott Andrews
`
`German Published Patent Application No. 44 44 545,
`including certified English-language translation
`
`U.S. Patent No. 5,495,912 to Gray, Jr. et al.
`
`U.K. Patent Application Publication No. 2 318 105
`
`U.S. Patent No. 5,697,466 to Moroto et al.
`
`U.S. Patent No. 5,823,280 to Lateur et al.
`
`U.S. Patent No. 5,343,970 to Severinsky
`
`Record of Oral Hearing, Held July 1, 2015, IPR2014-
`00570 (Paper 44, August 3, 2015)
`
`Kalberlah, “Electric Hybrid Drive Systems for Passenger
`Cars and Taxis,” SAE (Society of Automotive Engineers)
`International Congress
`and Exposition, Detroit,
`Michigan, February 26-March 1, 1991 (1991)
`
`iii
`
`

`
`
`
`I. Mandatory Notices (37 C.F.R. § 42.8)
`
`
`
`Real-Party-in Interest:
`
`
`
`Volkswagen Group of America, Inc. (“VWGoA”), which is a subsidiary of
`
`Volkswagen AG.
`
`Related Matters:
`
`The following judicial matters may affect, or be affected by, a decision in
`
`this inter partes review: Paice LLC, et al. v. Ford Motor Co., 1:14-cv-00492 (D.
`
`Md.); Paice LLC, et al. v. Hyundai Motor Co., et al., 1:12-cv-00499 (D. Md.);
`
`Paice LLC v. Toyota Motor Corp., et al., 2:07-cv-00180 (E.D. Tex.).
`
`The following administrative matters may affect, or be affected by, a
`
`decision in this inter partes review: Hybrid Electric Vehicles and Components
`
`Thereof, ITC-337-TA-998, in which VWGoA is a respondent; IPR2014-00571,
`
`IPR2014-00579, IPR2014-00884, IPR2015-00794, IPR2015-00795, IPR2016-
`
`00272.
`
`Lead Counsel:
`
`Michael J. Lennon (Reg. No. 26,562)
`
`Backup Counsel:
`
`Clifford A. Ulrich (Reg. No. 42,194)
`
`Service:
`
`VWGoA agrees to electronic service at the following email addresses:
`1
`
`

`
`
`
`mlennon@kenyon.com
`culrich@kenyon.com
`
`Service may be made at the following address:
`
`Andrews Kurth Kenyon LLP
`One Broadway
`New York, NY 10004
`Telephone: 212-425-7200
`Facsimile: 212-425-5288
`
`II. Grounds for Standing (37 C.F.R. § 42.104(a))
`
`VWGoA certifies that U.S. Pat. No. 7,104,347 (“the ’347 patent,” Ex. 1001)
`
`is available for inter partes review and that VWGoA is not barred or estopped
`
`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this petition.
`
`III. Identification of Challenge (37 C.F.R. § 42.104(b)(1)-(3)) and
`Relief Requested (37 C.F.R. § 42.22(a)(1))
`
`Claims 23, 24, 25, 27, 28, 30, 32, and 41 of the ’347 patent are invalid under
`
`35 U.S.C. § 103.
`
`A. The ’347 Patent
`
`The ’347 patent describes a hybrid vehicle that includes an internal
`
`combustion engine, an electric motor, and a battery, all of which are controlled by
`
`a microprocessor in accordance with the vehicle’s instantaneous torque demands
`
`(i.e., road load). Ex. 1002, ¶ 3. The engine is capable of operating efficiently
`
`between a lower-level setpoint (“SP”) and a maximum torque output (“MTO”). Ex.
`2
`
`

`
`
`
`1002, ¶ 3. The vehicle can operate in a number of operating modes, including a
`
`“low-load mode” (also referred to as “Mode I”), in which the vehicle is propelled
`
`only by the electric motor, a “highway cruising mode” (also referred to as “Mode
`
`IV”), in which the vehicle is propelled only by the engine, and an “acceleration
`
`mode” (also referred to a “Mode V”), in which the vehicle is propelled by both the
`
`engine and the electric motor. Ex. 1002, ¶ 3. The microprocessor determines the
`
`mode of operation based on road load. If the road load is below the setpoint (SP),
`
`the vehicle operates in Mode I (motor only); if the road load is between the
`
`setpoint (SP) and the maximum torque output (MTO) of the engine, the vehicle
`
`operates in Mode IV (engine only); if the road load is above the maximum torque
`
`output (MTO) of the engine, the vehicle operates in Mode V (motor and engine).
`
`Ex. 1002, ¶ 3.
`
`As of the filing date of this petition, the ’347 patent is involved in six other
`
`inter partes review proceedings, identified above in Section I. Throughout those
`
`proceedings, the Patent Owner (“Paice”) acknowledged that “road load” is “a very
`
`well-known concept in automotive design” (Ex. 1009, p. 40) but characterized the
`
`use of road load as an input to a hybrid control strategy as a “completely new idea”
`
`and as the distinguishing limitation over the prior art. Id.:
`
`JUDGE MEDLEY: So that was well known at the time of the
`invention what road load was?
`
`3
`
`

`
`
`
`MR. CORDELL [Paice’s counsel]: The term “road load” was,
`yes. Yes. But it being used as a control input for a hybrid was never
`done. Completely new idea. (Ex. 1009, p. 40).
`* * *
`MR. CORDELL: … But road load has been around forever,
`and pedal position has been around forever, and it’s not as if the idea
`that you, you know, the pedal position can’t affect road load is
`something new. That’s not new. What’s new is using the road load as
`the control variable, the controlling variable, to pick the mode, or to
`start the engine, or to activate the various systems involved. So, the
`idea that there is an output of the engine that will change, that is true,
`but we don’t use the output of the engine as the control variable, the
`controlling variable, it’s the road load. So that’s the important
`distinction, although a little bit different. (Ex. 1009, p. 127).
`
`
`As used in the ’347 patent, the term “road load” does not carry a special
`
`definition and is not a coined term. Instead, according to Paice, “road load is a
`
`“textbook concept that’s very, very well known,” Ex. 1009, p. 62, and the ’347
`
`patent uses the term “road load” according to its “very standard definition:”
`
`MR. CORDELL: I think Mr. Angileri [Ford Motor Company’s
`counsel] suggested that we were advocating some special definition of
`road load that included vehicle acceleration in it, but that’s really not
`true. I mean, that vehicle acceleration is right there in the formula for
`road load. So, you’re using a very standard definition of road load.
`Could there be differences between different designs? Sure, but this is
`
`4
`
`

`
`
`
`a generally-accepted definition of what road load is. (Ex. 1009, pp.
`97-98).
`* * *
`JUDGE DeFRANCO: … we’re talking about the inventor’s use
`of the term “road load” in terms of the ’347 patent. So, let’s focus on
`the intrinsic record.
`MR. CORDELL: Okay. He uses it in a standard way, Your
`Honor, and the definition we have seen several times through the
`specification is what he uses. (Ex. 1009, p, 128).
`
`
`As described by Paice, the “standard definition” of “road load” is “the torque
`
`required to propel the vehicle:”
`
`MR. CORDELL: … the parties agree that the terms are the
`same, whether it’s recited in claim 1 as the torque required to propel
`the vehicle, or road load, that those really mean the same thing. (Ex.
`1009, p. 130).
`
`
`As more fully set forth below, the prior art cited herein discloses the use of
`
`“road load” as the controlling variable in a hybrid control strategy to switch
`
`between motor-only, engine-only, and engine-and-motor modes in the same
`
`manner as claimed in the ’347 patent, such that claims 23-25, 27, 28, 30, 32, and
`
`41 are unpatentable.
`
`5
`
`

`
`
`
`
`
`B. Patents and Printed Publications Relied On
`
`1.
`
`German Published Patent Application No. 44 44 545 (“Barske,” Ex.
`
`1003, including certified English-language translation), published on June 29,
`
`1995, which constitutes prior against the ’347 patent under 35 U.S.C. § 102(b).
`
`
`
`2.
`
`U.S. Patent No. 5,495,912 (“Gray,” Ex. 1004), issued on March 5,
`
`1996, which constitutes prior art against the ’347 patent under 35 U.S.C. § 102(b).
`
`
`
`3.
`
`U.K. Patent Application Publication No. 2 318 105 (“Probst,” Ex.
`
`1005), published on April 15, 1998, which constitutes prior art against the ’347
`
`patent at least under 35 U.S.C. § 102(a).
`
`
`
`4.
`
`U.S. Patent No. 5,697,466 (“Moroto,” Ex. 1006), filed on November
`
`10, 1993 and issued on December 16, 1997, which constitutes prior art against the
`
`’347 patent at least under 35 U.S.C. §§ 102(a) and (e).
`
`
`
`5.
`
`U.S. Patent No. 5,823,280 (“Lateur,” Ex. 1007), filed on January 12,
`
`1995 and issued on October 20, 1998, which constitutes prior art against the ’347
`
`patent at least under 35 U.S.C. §§ 102(a) and (e).
`
`
`
`6.
`
`U.S. Patent No. 5,343,970 (“Severinsky ’970,” Ex. 1008), issued on
`
`September 6, 1994, which constitutes prior art against the ’347 patent under 35
`
`U.S.C. § 102(b).
`
`
`
`6
`
`

`
`
`
`C. Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2))
`
`1. Claims 23, 28, 30, and 32 are obvious under 35 U.S.C. § 103(a) in view
`
`Barske and Gray.
`
`2. Claim 24 is obvious under 35 U.S.C. § 103(a) in view of Barske, Gray, and
`
`Probst.
`
`3. Claim 25 is obvious under 35 U.S.C. § 103(a) in view of Barske, Gray, and
`
`Moroto.
`
`4. Claim 27 is obvious under 35 U.S.C. § 103(a) in view of Barske, Gray, and
`
`Lateur.
`
`5. Claim 41 is obvious under 35 U.S.C. § 103(a) in view of Barske, Gray, and
`
`Severinsky ’970.
`
`D. Claim Construction (37 C.F.R. § 42.104(b)(3))
`
`The claim terms in an unexpired patent should be given their broadest
`
`reasonable construction in view of the specification. 37 C.F.R. § 42.100(b). The
`
`specification of the ’347 patent does not present special definitions for any claim
`
`term, and the original prosecution history of the ’347 patent does not include any
`
`claim construction arguments, so that all claim terms should be given their
`
`broadest reasonable construction.
`
`As described above, Paice has characterized “road load” as a “text book
`
`concept that’s very, very well known” and as meaning “torque required to propel
`
`7
`
`

`
`
`
`the vehicle.” Thus, for the purposes of this proceeding, the broadest reasonable
`
`construction of “road load” should be understood to mean “torque required to
`
`propel the vehicle,” as advocated by Paice in other inter partes review proceedings
`
`and as used in the specification of the ’347 patent, e.g.:
`
`The vehicle operating mode is determined by a microprocessor
`responsive to the ‘road load’, that is, the vehicle’s instantaneous
`torque demands. (Ex. 1001, 11:60-62).
`
`[T]he vehicle operating mode is determined by a microprocessor
`responsive to the ‘road load’, that is, the vehicle’s instantaneous
`torque demands, i.e., that amount of torque required to propel the
`vehicle at a desired speed. (Id., 12:38-42).
`
`[A]pplicants’ ‘road load’, i.e., the torque required to propel the
`vehicle. (Id., 14:13-17).
`
`Figure 6 illustrates the several modes of vehicle operation with respect
`to the relationship between the vehicle’s instantaneous torque
`requirements or ‘road load.’ (Id., 35:20-22).
`
`[T]he vehicle’s instantaneous torque requirement, that is, the ‘road
`load.’ (Id., 38:40-41).
`
`[T]he vehicle’s instantaneous torque requirement, i.e., the ‘road load’
`RL. (Id., 40:26-27).
`
`8
`
`

`
`
`
`
`
`IV. How Challenged Claims Are Unpatentable (37 C.F.R. §
`42.104(b)(4)-(5))
`
`Since the mid-1970s, Volkswagen and Audi have been developing hybrid
`
`vehicle technologies, including hybrid drive systems that control the application of
`
`torque from either an internal combustion engine, an electric motor, or both,
`
`depending on driving parameters. Ex. 1002, ¶ 4.
`
`For example, Volkswagen described its hybrid technology in Barske. Ex.
`
`1002, ¶ 5. Barske describes a parallel hybrid vehicle having an internal combustion
`
`engine and an electric motor, with a battery, for propelling the vehicle. Ex. 1002, ¶
`
`5. Barske describes using a crankshaft to couple or decouple modules of the engine
`
`and the motor from the drive train, depending on certain factors identified in Table
`
`II, reproduced below. Barske, 2:6-8, 3:31-4:5, Table II; Ex. 1002, ¶ 5. Specifically,
`
`Table II indicates that the determination of which power source will be used to
`
`propel the vehicle (the electric motor, the first engine module, the second engine
`
`module, or some combination thereof), is based on load: “small load,” “medium
`
`load,” or “full load.” Ex. 1002, ¶ 5.
`
`9
`
`

`
`
`
`
`
`
`
`Barske’s control strategy is based on load in the same manner claimed in the
`
`’347 patent. Ex. 1002, ¶ 6. For example, Barske describes mode “a),”
`
`corresponding to Paice’s “low load mode I,” in which the vehicle is propelled by
`
`only the electric motor under conditions of “small load.” Ex. 1002, ¶ 6. Barske also
`
`describes modes “b)” and “d),” corresponding to Paice’s “highway cruising mode,”
`
`in which the vehicle is propelled by only the internal combustion engine (either by
`
`10
`
`

`
`
`
`the first module of the internal combustion engine or both the first module and the
`
`second module of the internal combustion engine) under conditions of “medium
`
`load” or “full load.” Ex. 1002, ¶ 6. Barske describes mode “e),” corresponding to
`
`Paice’s “acceleration mode V,” in which the vehicle is propelled by the internal
`
`combustion engine (both the first module and the second module of the internal
`
`combustion engine) and the electric motor for “great acceleration.” Ex. 1002, ¶ 6.
`
`Gray, for example, describes a hybrid vehicle, in which the control strategy
`
`is based on “road load” in the same manner claimed in the ’347 patent. Ex. 1002, ¶
`
`7. For example, Gray describes an operating mode (“mode 4”), corresponding to
`
`Paice’s “low load mode I,” in which the vehicle is propelled by only the electric
`
`motor under conditions of “small road load.” Gray, 9:12-17; Ex. 1002, ¶ 7. Gray
`
`also describes an operating mode (“mode 2”), correspondence to Paice’s “highway
`
`cruising mode IV,” in which the vehicle is propelled by only the internal
`
`combustion engine under conditions where the engine is operated “within the range
`
`of optimal efficiency.” Gray, 8:52-63 Ex. 1002, ¶ 7. Gray further describes an
`
`operating mode (“mode 1”), corresponding to Paice’s “acceleration mode V,” in
`
`which the vehicle is propelled by both the internal combustion engine and the
`
`electric motor under conditions where demand is “greater than that deliverable at
`
`optimum efficiency by the engine.” Gray, 8:40-51; Ex. 1002, ¶ 7.
`
`11
`
`

`
`
`
`A. Claims 23, 28, 30, and 32 are Obvious in View of Barske and Gray
`
`Barske is described above, and was not cited during the prosecution of the
`
`’347 patent, or during any review of the ’347 patent before the Board.
`
`Gray was cited by the Applicants in an Information Disclosure Statement
`
`filed on March 7, 2003 during prosecution of the ’347 patent. However, Gray was
`
`never discussed by Paice or the Examiner and was never the basis for any claim
`
`rejection. Additionally, Gray has not been addressed by the Board during any of
`
`the other inter partes review proceedings involving the ’347 patent.
`
`Gray describes a parallel hybrid powertrain vehicle including a primary
`
`engine and a power storage device. Ex. 1002, ¶ 8. The engine may be an internal
`
`combustion engine, and the power storage device may be a combined storage
`
`battery and electric motor. Gray, 3:13-39; Ex. 1002, ¶ 8. As illustrated in Figures
`
`2A-2D, Gray describes a system for controlling which power source will drive the
`
`vehicle, based on “road load,” the very same operating strategy that Paice has
`
`described as a “[c]ompletely new idea” and absent from the prior art. Gray, 8:35-
`
`9:16, Figs. 2A-2D; Ex. 1002, ¶ 8; see e.g. Aug. 3, 2015 IPR2014-00570, Paper 43,
`
`40:12-14; Aug. 11, 2016, IPR2015-00794, Paper No. 30, 47:4-9; August 11, 2016,
`
`IPR2015-00758, Paper No. 30, 58:15-18.
`
`According to Gray, “[t]he load placed on the engine any at any given instant
`
`is directly determined by the total road load at that instant, which varies between
`
`12
`
`

`
`
`
`extremely high and extremely low load.” Gray, 1:31-34; Ex. 1002, ¶ 8. Gray
`
`discloses that control of the hybrid propulsion system is provided for by, for
`
`example, “a torque (or power) demand sensor for sensing torque (or power)
`
`demanded of the vehicle by the driver.” Gray, 3:43-49; Ex. 1002, ¶ 8. Depending
`
`upon the road load, Gray switches between operating modes in the same manner as
`
`claimed in the ’347 patent, as described in more detail below. Ex. 1002, ¶ 8.
`
`1. Independent Claim 23
`
`Barske describes a parallel hybrid vehicle, having an internal combustion
`
`engine, an electric motor, a battery, two modules of the internal combustion engine
`
`and a control procedure that makes it possible to “use the engine modules and the
`
`electric motor in an optimum manner.” Barske, 8, 10:5-13; Ex. 1002, ¶ 9.
`
`Gray describes a hybrid control system that relies on the determined “road
`
`load” for controlling the application of power from the engine and/or the electric
`
`motor to drive the vehicle. Ex. 1002, ¶ 9.
`
`13
`
`

`
`
`
`i. Barske and Gray describe a method of control of a
`hybrid vehicle, said vehicle comprising an internal
`combustion engine capable of efficiently producing
`torque at loads between a lower level SP and a
`maximum torque output MTO, a battery, and one or
`more electric motors being capable of providing
`output torque responsive to supplied current, and of
`generating electrical current responsive to applied
`torque, said engine being controllably connected to
`wheels of said vehicle for applying propulsive torque
`thereto and to said at least one motor for applying
`torque thereto
`
`Barske describes a parallel hybrid vehicle, having an internal combustion
`
`engine, an electric motor, a battery, two modules of the internal combustion engine
`
`and a control procedure that makes it possible to “use the engine modules and the
`
`electric motor in an optimum manner.” Barske, 8, 10:5-13; Ex. 1002, ¶ 11. A
`
`controller controls the electric motor and charges the battery, and a mixture
`
`controller is responsible for controlling the first and second modules of the internal
`
`combustion engine. Barske, 6:1-7, 6:19-10; Ex. 1002, ¶ 11.
`
`Gray also describes a parallel hybrid drive system, having an internal
`
`combustion engine, a storage battery, and an electric motor. Ex. 1002, ¶ 12. A first
`
`drive train connects the engine to the wheels, and a second drive train connects the
`
`engine to the motor. Gray, 3:13-39; Ex. 1002, ¶ 12. Gray describes an “optimum
`
`efficiency” range of speed and load for the engine, illustrated in Figures 2A-2D,
`
`between points A (constituting a lower level setpoint) and B (constituting a
`
`maximum torque output). Gray, 8:35-9:16; Ex. 1002, ¶ 12.
`14
`
`

`
`
`
`Point A disclosed by Gray corresponds to the claimed lower level setpoint
`
`SP, and point B disclosed by Gray corresponds to the claimed maximum torque
`
`output. Ex. 1002, ¶ 12. In this regard, claim 23 describes that the “internal
`
`combustion engine capable of efficiently producing torque at loads between a
`
`lower level SP and a maximum torque output MTO.” Correspondingly, Gray
`
`describes the “optimum efficiency” range for the engine 1, “at which the efficiency
`
`of the engine 1 is deemed reasonably near its optimum efficiency between points A
`
`and B.” Gray, 8:34-39.
`
`Further, in Figure 2C and its related description, Gray describes applying
`
`excess power from the engine to the power storage device (which may be a storage
`
`battery, generator/alternator, and electric motor). Gray, 3:36-39, 8:64-9:11, Fig.
`
`2C; Ex. 1002, ¶ 12.
`
`ii. Barske and Gray describe determining
`the
`instantaneous torque RL required to propel said
`vehicle responsive to an operator command
`
`According to Barske, the electric motor and the two modules of the internal
`
`combustion engine are managed “in an optimum manner.” Barske, 8; Ex. 1002, ¶
`
`13. For example, under “small load,” only the electric motor propels the vehicle;
`
`under “medium load,” only the first module of the engine propels the vehicle;
`
`under “full load,” both modules of the engine propel the vehicle; and during
`
`15
`
`

`
`
`
`“acceleration” or “great acceleration,” the electric motor and both modules of the
`
`engine propel the vehicle. Barske, 8; Ex. 1002, ¶ 13.
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`Gray describes determining the instantaneous road load required to propel
`
`the vehicle, responsive to operator command. Ex. 1002, ¶ 14. Gray describes that
`
`engine load is directly determined by the instantaneous road load. Gray, 1:31-35
`
`(“The load placed on the engine at any given instant is directly determined by the
`
`total road load at that instant, which varies between extremely high and extremely
`
`low load.”); Ex. 1002, ¶ 14. Figures 2A-2D illustrate different modes of applying
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`power from the engine and/or motor, according to road load. Ex. 1002, ¶ 14.
`
`
`
`16
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`
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`

`
`
`
`iii. Barske and Gray describe monitoring the state of
`charge of said battery
`
`Barske describes that a controller controls the electric motor and charges the
`
`battery. Barske, 6:5-7; Ex. 1002, ¶ 15.
`
`Gray describes its power storage device as a fluid pressure accumulator or a
`
`battery, and, in the context of the pressure accumulator, Gray describes monitoring
`
`the fluid pressure with a pressure sensor. Gray, 3:30-39, 7:28-42; Ex. 1002, ¶ 16.
`
`iv. Barske and Gray describe employing said at least one
`electric motor to propel said vehicle when the torque
`RL required to do so is less than said lower level SP
`
`According to Barske, an electric motor and two modules of an internal
`
`combustion engine are managed “in an optimum manner.” Barske, 8; Ex. 1002, ¶
`
`17. For example, under “small load,” the electric motor runs alone. Barske, 8; Ex.
`
`1002, ¶ 17.
`
`Gray describes “mode 4,” shown in Figure 2D and corresponding to Paice’s
`
`“low-load mode I,” in which “an unusually small road load is experienced.” Gray,
`
`9:11-12; Ex. 1002, ¶ 18. Under these conditions, “the engine cannot deliver such a
`
`small amount of power at acceptable efficiency,” and “the pump/motor 7 (acting as
`
`a motor) provides power by itself.” Gray, 9:12-16 (“[A]n unusually small road load
`
`is experienced … the pump/motor 7 (acting as a motor) provides power by itself.”),
`
`Fig. 2D; Ex. 1002, ¶ 18.
`
`17
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`

`
`
`
`
`
`
`
`v. Barske and Gray describe employing said engine to
`propel said vehicle when the torque RL required to do
`so is between said lower level SP and MTO
`
`According to Barske, an electric motor and two modules of an internal
`
`combustion engine are managed “in an optimum manner.” Barske, 8; Ex. 1002, ¶
`
`19. For example, under “medium load,” the first module of the engine propels the
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`vehicle. Barske, 8; Ex. 1002, ¶ 19. Further, under “full load,” both modules of the
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`engine propel the vehicle. Barske, 8; Ex. 1002, ¶ 19.
`
`Gray describes “mode 2,” shown in Fig. 2B and corresponding to Paice’s
`
`“highway cruising mode IV,” in which the road load is within the range of optimal
`
`efficiency of the engine (between levels A and B), and the engine drives the
`
`vehicle alone. Gray, 8:52-63 (“[W]hen power demanded of engine 1 is within the
`
`18
`
`

`
`
`
`range of optimum efficiency … all of the power is provided by the engine 1.”),
`
`Fig. 2B; Ex. 1002, ¶ 20.
`
`
`
`
`
`vi. Barske and Gray describe employing both said at
`least one electric motor and said engine to propel said
`vehicle when the torque RL required to do so is more
`than MTO
`
`According to Barske, an electric motor and two modules of an internal
`
`combustion engine are managed “in an optimum manner.” Barske, 8; Ex. 1002, ¶
`
`21. For example, during “acceleration” or “great acceleration,” the electric motor
`
`and the engine together propel the vehicle. Barske, 8; Ex. 1002, ¶ 21.
`
`Gray describes “mode 1,” shown in Fig. 2A, and corresponding to Paice’s
`
`“acceleration mode V,” in which the road load is greater than the upper limit of the
`
`efficient range for the engine (above power level B), and the engine and motor
`
`operate together to drive the vehicle. Gray, 8:41-46 (“[W]hen the power demanded
`
`19
`
`

`
`
`
`is greater than that deliverable at optimum efficiency by the engine 1 … that
`
`portion of load which exceeds B is provided by the pump/motor 7 (acting as a
`
`motor), while the engine 1 provides the rest.”), Fig. 2A; Ex. 1002, ¶ 22.
`
`
`
`
`
`vii. Barske and Gray describe employing said engine
`to propel said vehicle when the torque RL required to
`do so is less than said lower level SP and using the
`torque between RL and SP to drive said at least one
`electric motor to charge said battery when the state of
`charge of said battery indicates the desirability of
`doing so
`
`According to Barske, an electric motor and two modules of an internal
`
`combustion engine are managed “in an optimum manner.” Barske, 8; Ex. 1002, ¶
`
`23. For example, the second module of the internal combustion engine and the
`
`generator can function as an “emergency current generator.” Barske, 8; Ex. 1002, ¶
`
`20
`
`

`
`
`
`23. Further, the first module and electric motor can be operated together for
`
`charging the battery. Barske, 8; Ex. 1002, ¶ 23.
`
`Gray describes “mode 3,” shown in Fig. 2C, in which the road load is below
`
`the efficient range of the engine (i.e., below power level A), so that the engine
`
`operating in its efficient range provides power in excess of the road load. Ex. 1002,
`
`¶ 24. In such circumstances, if the power storage device is low, the power in excess
`
`of the road load is directed to the motor for storage. Gray, 8:64-9:11 (“While road
`
`load demanded is represented by either of the points (a) or (b) shown in FIG. 2C,
`
`the power output of the engine is increased along the optimum efficiency line to a
`
`point at which sufficient excess power is generated, illustrated here by the point
`
`(c). The excess power that does not go to road load is fed into the pump/motor 7
`
`(acting as a pump) which stores it in the accumulator 6 for future Mode 1 or Mode
`
`4 events.”), Fig. 2C; Ex. 1002, ¶ 24.
`
`
`
`21
`
`

`
`
`
`
`
`viii. Barske and Gray describe
`torque
`the
`that
`produced by said engine when operated at said
`setpoint (SP) is substantially less than the maximum
`torque output (MTO) of said engine
`
`Gray describes an efficient range of the engine between power levels A and
`
`B of Figures 2A-2D. Ex. 1002, ¶ 25. Point A (corresponding to the claimed lower
`
`level setpoint) is the low end of the range of optimum efficiency and substantially
`
`less than point B (corresponding to the claimed maximum torque output). Gray,
`
`8:35-39, Fig. 2B; Ex. 1002, ¶ 25.
`
`Before the earliest filing date claimed on the face of the ’347 patent, a
`
`person of ordinary skill in the art would have found it obvious for the torque output
`
`at the setpoint (point A) to be substantially less than the MTO (point B) of the
`
`engine. During prosecution of the ’347 patent, the Applicants characterized
`
`“substantially less than” as “not mathematically precise,” but argued that the
`
`specification describes examples of minimum torque values of “typically at least
`
`30% of MTO” and “normally not in excess of 50% of MTO.” February 22, 2005
`
`Amendment, at 15. As described by the ’347 patent, Severinsky ’970 describes that
`
`an internal combustion engine is “substantially” more efficient when operated at
`
`torque output levels of at least 35% of MTO. At this level, the engine propels the
`
`vehicle, while below this level, the motor propels the vehicle. Ex. 1001, 25:4-15.
`
`At least 35% of peak torque is within the range cited by the Applicants as
`22
`
`

`
`
`
`examples of torque values “substantially less” than MTO. Further, referring to
`
`Severinsky ’970, it was also known that the efficient operational point of an
`
`internal combustion engine “produces 60-90% of its maximum torque whenever
`
`operated.” Severinsky ’970, 20:63-67; Ex. 1002, ¶ 26. As neither claim 23, nor the
`
`’347 patent specification, identifies torque values that define “substantially less”
`
`than MTO, these values, which include up to 40% less than the maximum torque,
`
`would also be considered “substantially less” than MTO. Moreover, the paper
`
`“Electric Hybrid Drive Systems for Passenger Cars and Taxis” (“Kalberlah,” Ex.
`
`1010), which was presented at the SAE (Society of Automotive Engineers)
`
`International Congress and Exposition in Detroit, Michigan between February 26-
`
`March 1, 1991 and published by the SAE in 1991, also discloses in Figure 8 that
`
`the transition point for switching between the electric motor and the internal
`
`combustion engine is substantially less than a maximum torque output of the
`
`internal combustion engine. Ex. 1002, ¶ 26.
`
`Accordingly, in view of Gray’s description of point A, the low end of the
`
`efficient operating range of the engine, torque values substantially less than the
`
`engine MTO would have been obvious to a person of ordinary skill in the art at the
`
`time of the alleged invention of claim 23. Ex. 1002, ¶ 27.
`
`23
`
`

`
`
`
`
`
`2. Dependent Claims 28, 30, and 32
`
`i. Claim 28
`
`Claim 28 describes that the vehicle is operated in a plurality of operating
`
`modes responsive to the