UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 7,237,634
`Issue Date: July 3, 2007
`Title: HYBRID VEHICLES
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,237,634
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`
`Case No. IPR2017-00231
`__________________________________________________________________
`
`
`
`
`
`

`
`
`
`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 ’634 Patent .................................................................................... 2 
`B. 
`Prosecution History of the ’634 Patent ................................................ 3 
`C. 
`Inter Partes Review of the ’634 Patent ................................................. 5 
`D. 
`Patents and Printed Publications Relied On ......................................... 7 
`E. 
`Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2)) ........ 8 
`F. 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................... 9 
`IV.  How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-
`(5)) ................................................................................................................ 10 
`A. 
`Claims 267, 278, 279, 281, 282, 285, 289, and 291 are Obvious
`in View of Paefgen, Gray, and Yamaguchi ........................................ 13 
`1. 
`Independent Claim 267 ............................................................ 15 
`2. 
`Dependent Claims 278, 279, 281, 282, 285, 289, and 291 ...... 24 
`3. 
`Obviousness in View of Paefgen, Gray, and Yamaguchi ........ 30 
`4. 
`Claim Charts ............................................................................ 34 
`Claim 283 is Obvious in View of Paefgen, Gray, Yamaguchi,
`and Lateur ........................................................................................... 45 
`1. 
`Claim 283 ................................................................................. 45 
`2. 
`Obviousness in View of Paefgen, Gray, Yamaguchi and
`Lateur ....................................................................................... 46 
`Claim Chart .............................................................................. 47 
`3. 
`Claim 290 is Obvious in View of Paefgen, Gray, Yamaguchi,
`and Severinsky ’970 ........................................................................... 48 
`1. 
`Claim 290 ................................................................................. 48 
`2. 
`Obviousness in View of Paefgen, Gray, Yamaguchi, and
`Severinsky ’970 ........................................................................ 49 
`Claim Chart .............................................................................. 50 
`
`B. 
`
`C. 
`
`3. 
`
`i
`
`

`
`
`
`V. 
`
`V.
`
`Conclusion .................................................................................................. ..51
`
`Conclusion .................................................................................................... 51 
`
` 
`
`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. 7,237,634 to Severinsky et al.
`
`Declaration of Scott Andrews
`
`Paefgen et al., Der Audi Duo – das erste serienmäßige
`Hybridfahrzeug, ATZ Automobiletechnische Zeitschrift
`99 (1997) 6, p. 316-32, including certified English-
`language translation
`
`U.S. Patent No. 5,495,912 to Gray, Jr. et al.
`
`U.S. Patent No. 5,865,263 to Yamaguchi 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)
`
`February 22, 2005 Amendment, U.S. Patent Application
`Serial No. 10/382,577, U.S. Patent No. 7,104,347
`
`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; IPR2014-00904,
`
`IPR2014-01416, IPR2015-00606, IPR2015-00722, IPR2015-00758, IPR2015-
`
`00784,
`
`IPR2015-00785,
`
`IPR2015-00787,
`
`IPR2015-00790,
`
`IPR2015-00791,
`
`IPR2015-00799, IPR2015-00800, IPR2015-00801, IPR2016-00246, IPR2016-
`
`00247, IPR2016-00248, IPR2016-00249, IPR2016-00251.
`
`Lead Counsel:
`
`Michael J. Lennon (Reg. No. 26,562)
`
`Backup Counsel:
`
`Clifford A. Ulrich (Reg. No. 42,194)
`1
`
`

`
`
`
`Service:
`
`VWGoA agrees to electronic service at the following email addresses:
`
`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. 7,237,634 (“the ’634 patent,” Ex. 1001)
`
`is available for inter partes review and that VWGoA is not barred or estopped
`
`from requesting an inter partes review challenging claims 267, 278, 279, 282, 283,
`
`285, 289, 290, and 291 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 267, 278, 279, 282, 283, 285, 289, 290, and 291 of the ’634 patent
`
`are invalid under 35 U.S.C. § 103.
`
`A. The ’634 Patent
`
`The ’634 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
`2
`
`

`
`
`
`(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.
`
`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. Ex. 1002, ¶ 3. 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.
`
`B. Prosecution History of the ’634 Patent
`
`The ’634 patent is a division of the application that lead to the issuance of
`
`U.S. Patent No. 7,104,347 (“the ’347 patent”) and was originally filed with 16
`
`claims, which were subsequently canceled in a preliminary amendment filed on
`
`May 8, 2006; the preliminary amended added application claims 17-75. In the first
`
`Office Action (dated August 10, 2006), the Examiner rejected independent
`
`3
`
`

`
`
`
`application claim 49, e.g., as obvious over U.S. Patent No. 5,495,912 (“Gray,” Ex.
`
`1004) and U.S. Patent No. 5,935,040 (“Tabata”). According to the Examiner, Gray
`
`describes nearly all of the limitations of application claim 49: determining
`
`instantaneous road load, operating an electric motor to propel a vehicle when the
`
`road load is below a setpoint, operating an engine to propel the vehicle when the
`
`road load is between a setpoint and a maximum torque output (MTO), wherein the
`
`engine is operable to efficiently produce torque above the setpoint, and wherein the
`
`setpoint is substantially less than the MTO, and operating the motor and engine
`
`when the road load is greater than the MTO. August 8, 2006 Office Action, 4-5.1 In
`
`the same Office Action, the Examiner indicated that dependent application claims
`
`71 for example, which added the limitation, “rotating the engine before starting the
`
`engine such that its cylinders are heated by compression of air therein,” included
`
`allowable subject matter. 2 Id., 5.
`
`
`1
`Although the Examiner indicated that Gray does not show an electric motor
`
`and battery, Gray states that “the power storage device could be, for example, the
`
`combination of a storage battery, generator/alternator and an electric motor.” Gray,
`
`3:36-39.
`
`2
`
`The Examiner further required a Terminal Disclaimer over the ’347 patent,
`
`which Applicants later submitted. According to the Examiner, the claims of the
`
`
`
`4
`
`

`
`
`
`Applicants did not dispute the Examiner’s findings regarding Gray. Instead,
`
`Applicants chose to add to application claim 287 the limitations of application
`
`claim 71. See November 22, 2006 Amendment. The claims were thereafter
`
`allowed, without comment from the Examiner.
`
`C. Inter Partes Review of the ’634 Patent
`
`As of the filing date of this petition, the ’634 patent is, or has been involved
`
`in eighteen other inter partes reviews 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. 1008, 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?
`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. 1008, 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
`
`
`’634 patent were not “patentably distinct” from the claims of the ’347 patent.
`
`5
`
`

`
`
`
`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. 1008, p. 127).
`
`
`As used in the ’634 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. 1008, p. 62, and the ’634
`
`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
`a generally-accepted definition of what road load is. (Ex. 1008, 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.
`
`6
`
`

`
`
`
`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. 1008, 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.
`1008, 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 ’634 patent, such that claims 267, 278, 279, 282, 283,
`
`285, 289, 290, and 291 are unpatentable.
`
`D. Patents and Printed Publications Relied On
`
`1.
`
`Paefgen et al., Der Audi Duo – das erste serienmäßige
`
`Hybridfahrzeug, ATZ Automobiletechnische Zeitschrift 99 (1997) 6, p. 316-32
`
`(“Paefgen,” Ex. 1003, including certified English-language translation), published
`
`in June 1997, which constitutes prior art against the ’634 patent under 35 U.S.C. §
`
`102(b).
`
`7
`
`

`
`
`
`
`
`2.
`
`U.S. Patent No. 5,495,912 (“Gray,” Ex. 1004), issued on March 5,
`
`1996, which constitutes prior art against the ’634 patent under 35 U.S.C. § 102(b).
`
`
`
`3.
`
`U.S. Patent No. 5,865,263 (“Yamaguchi,” Ex. 1005), filed on Filed
`
`February 23, 1996 and issued February 2, 1999, which constitutes prior art against
`
`the ’634 patent at least under 35 U.S.C. §§ 102(a), (e).
`
`
`
`4.
`
`U.S. Patent No. 5,823,280 (“Lateur,” Ex. 1006), filed on January 12,
`
`1995 and issued on October 20, 1998, which constitutes prior art against the ’634
`
`patent at least under 35 U.S.C. §§ 102(a) and (e).
`
`
`
`5.
`
`U.S. Patent No. 5,343,970 (“Severinsky ’970,” Ex. 1007), issued on
`
`September 6, 1994, which constitutes prior art against the ’347 patent under 35
`
`U.S.C. § 102(b).
`
`E. Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2))
`
`1. Claim 267, 278, 279, 281, 282, 285, 289, and 291 are obvious under 35
`
`U.S.C. § 103(a) in view Paefgen, Gray, and Yamaguchi.
`
`2. Claim 283 is obvious under 35 U.S.C. § 103(a) in view Paefgen, Gray,
`
`Yamaguchi, and Lateur.
`
`3. Claim 290 is obvious under 35 U.S.C. § 103(a) in view Paefgen, Gray,
`
`Yamaguchi, and Severinsky.
`
`8
`
`

`
`
`
`F. 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 ’634 patent does not present special definitions for any claim
`
`term, and the original prosecution history of the ’634 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
`
`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 ’634 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, 11:63-65).
`
` “[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., 12:42-46).
`
`9
`
`

`
`
`
` “[A]pplicants’ ‘road load’, i.e., the torque required to propel the
`
`vehicle.” (Id., 14:18-22).
`
` “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., 35:18-20).
`
` “[T]he vehicle’s instantaneous torque requirement, that is, the ‘road
`
`load.’” (Id., 38:37-38).
`
` “[T]he vehicle’s instantaneous torque requirement, i.e., the ‘road load’
`
`RL.” (Id., 40:20-21).
`
`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, Audi developed first (1989), second (1991), and third (1996)
`
`generation Audi Duo hybrid vehicles, as Audi “consider[ed] it useful to combine
`
`the combustion engine with an electric drive,” both to reduce emissions and
`
`provide sufficient mobility for longer distances. Paefgen, 317; Ex. 1002, ¶ 5. The
`
`third generation vehicle, described by Paefgen in June 1997, was a parallel hybrid
`
`drive using a turbo diesel direct injection engine (TDI), a lead battery, and a
`10
`
`

`
`
`
`polyphase synchronous drive (electromotor). Paefgen, 318-319; Ex. 1002, ¶ 5.
`
`Both the engine and electromotor applied torque to the front wheels. Paefgen, 317,
`
`Fig. 4 (below); Ex. 1002, ¶ 5.
`
`
`
`Paefgen explains that, in hybrid operation, switching between the engine and
`
`the electric motor “occurs automatically depending on the requirements of the
`
`driving operation.” Paefgen, 319; Ex. 1002, ¶ 6. The Control Drive for this system
`
`is illustrated in Figure 5 (below). Ex. 1002, ¶ 6.
`
`11
`
`

`
`
`
`
`
`Gray, for example, describes a hybrid vehicle, in which the control strategy
`
`is based on “road load” in the same manner claimed in the ’634 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
`
`12
`
`

`
`
`
`electric motor under conditions where demand is “greater than that deliverable at
`
`optimum efficiency by the engine.” Gray, 8:40-51; Ex. 1002, ¶ 7.
`
`Yamaguchi describes a hybrid vehicle that is driven by a motor and an
`
`internal-combustion engine. Yamaguchi, 1:6-8; Ex. 1002, ¶ 8. The hybrid vehicle
`
`includes an engine interruption system, in which the engine is operated only when
`
`the engine is needed and is turned off at other times in order to decrease exhaust
`
`gas amount and to improve fuel consumption. Yamaguchi, 1:30-35; Ex. 1002, ¶ 8.
`
`A. Claims 267, 278, 279, 281, 282, 285, 289, and 291 are Obvious in View
`of Paefgen, Gray, and Yamaguchi
`
`Paefgen is described above, and was not cited during the prosecution of the
`
`’634 patent, or during any review of the ’634 patent before the Board.
`
`As noted above, during the original prosecution of the ’634 patent the
`
`Examiner determined that Gray describes: determining instantaneous road load,
`
`operating an electric motor to propel a vehicle when the road load is below a
`
`setpoint, operating an engine to propel the vehicle when the road load is between a
`
`setpoint and a maximum torque output (MTO), wherein the engine is operable to
`
`efficiently produce torque above the setpoint, and wherein the setpoint is
`
`substantially less than the MTO, and operating the motor and engine when the road
`
`load is greater than the MTO. August 8, 2006 Office Action, 4-5. Gray has not
`
`been presented to the Board in any previous petition for inter partes review of the
`
`’634 patent.
`
`13
`
`

`
`
`
`Gray describes a parallel hybrid powertrain vehicle including a primary
`
`engine and a power storage device. Ex. 1002, ¶ 9. 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, ¶ 9. 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 hybrid 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, ¶ 9; see e.g. Aug. 3, 2015 IPR2014-00570,
`
`Paper 43, 40:12-14; Aug. 11, 2016, IPR2015-00787, Paper No. 34, 47:4-9; August
`
`11, 2016, IPR2015-00785, 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
`
`extremely high and extremely low load.” Gray, 1:31-34; Ex. 1002, ¶ 9. 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, ¶ 9. Depending
`
`upon the road load, Gray switches between operating modes in the same manner as
`
`claimed in the ’634 patent, as described in more detail below. Ex. 1002, ¶ 9.
`
`Yamaguchi was cited during the original prosecution of the ’634 patent, but
`
`was not the basis of any rejection. Yamaguchi was cited to the Board by the
`
`14
`
`

`
`
`
`Petitioner (Ford Motor Company) in IPR2015-00787 and IPR2015-00801. In
`
`IPR2015-00787, the Board found claims 267, 281, 282, and 285 obvious in view of
`
`U.S. Patent No. 5,789,882 (“Ibaraki ’882”) and Vittone et al., FIAT Research
`
`Centre, Fiat Conceptual Approach to Hybrid Cars Design, 12th International
`
`Electric Vehicle Symposium (1994). In IPR2015-00801, the Board found claims
`
`267, 278, 279, 282, 283, 285, and 289-291 obvious in view of Severinsky ’970,
`
`U.S. Patent No. 5,632,104 (“Suga”), Yamaguchi, and Lateur.
`
`The question of whether claims 267, 278, 279, 281, 282, 285, 289, and 291
`
`are obvious in view of Paefgen, Gray, and Yamaguchi has never been presented to
`
`the Board.
`
`
`
`1. Independent Claim 267
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`Paefgen describes the hybrid drive Audi Duo, having an engine, an electric
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`motor, a battery, and a controller for determining from which power source to draw
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`power for propelling the vehicle. Ex. 1002, ¶ 10. Paefgen describes controlling its
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`hybrid drive “depending on the requirements of the driving operation.” Paefgen,
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`319; Ex. 1002, ¶ 10.
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`Gray describes a hybrid control system that relies on the determined “road
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`load” for controlling the application of power from the engine and/or the electric
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`motor to drive the vehicle. Ex. 1002, ¶ 11.
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`Further, Yamaguchi describes the limitation that was the basis for allowance
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`of claim 267, “rotating the engine before starting the engine such that its cylinders
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`are heated by compression of air therein.”
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`i. Paefgen, Gray, and Yamaguchi describe a method for
`controlling a hybrid vehicle
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`Paefgen describes the Audi Duo parallel hybrid drive vehicle having an
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`internal combustion engine, e.g. a turbo diesel engine, a lead battery, wheels, and a
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`polyphase synchronous drive electromotor, and further describes automatic
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`switching between engine and electric motor, [d]epending on the requirements of
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`the driving operation.” Paefgen, 318-319; Ex. 1002, ¶ 12.
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`Gray also describes a parallel hybrid drive system, having an internal
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`combustion engine, a storage battery, and an electric motor. Gray, 3:13-39; Ex.
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`1002, ¶ 13. Gray describes operating the engine near peak efficiency by adding
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`load or adding power as needed, according to the road load as illustrated in Figures
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`2A-2D. Gray, 4:61-67, 8:35-9:16; Ex. 1002, ¶ 13.
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`Yamaguchi describes a hybrid vehicle in which a generator/motor rotates en
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`engine when the vehicle speed reaches an “engine starting speed V*.” Yamaguchi,
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`Abstract; Ex. 1002, ¶ 14.
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`ii. Paefgen, Gray, and Yamaguchi describe determining
`the instantaneous road load (RL) required to propel
`the hybrid vehicle responsive
`to an operator
`command
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`Paefgen’s Audi Duo controls
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`its hybrid drive “depending on
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`the
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`requirements of the driving operation.” Paefgen, 319, Fig. 4; Ex. 1002, ¶ 15.
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`Gray describes determining the instantaneous road load required to propel
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`the vehicle, responsive to operator command. Ex. 1002, ¶ 16. Gray describes that
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`engine load is directly determined by road load. Gray, 1:31-35 (“The load placed
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`on the engine at any given instant is directly determined by the total road load at
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`that instant, which varies between extremely high and extremely low load.”); Ex.
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`1002, ¶ 16. Figures 2A-2D illustrate different modes of applying power from the
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`engine and/or motor, according to road load. Ex. 1002, ¶ 16.
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`iii. Paefgen, Gray, and Yamaguchi describe operating at
`least one electric motor to propel the hybrid vehicle
`when the RL required to do so is less than a setpoint
`(SP)
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`Paefgen describes that switching between the engine and the electric motor
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`“occurs automatically, depending on the requirements of the driving operation.”
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`Paefgen, 319; Ex. 1002, ¶ 17. For example, “[i]n city driving, in particular in stop-
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`and-go driving, the advantages of the electric drive fully take effect, because
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`energy is then required only when the vehicle is actually in motion.” Paefgen, 319;
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`Ex. 1002, ¶ 17.
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`Gray describes “mode 4,” shown in Fig. 2D and corresponding to Paice’s
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`“low-load mode I,” in which “an unusually small road load is experienced.” Gray,
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`9:11-12; Ex. 1002, ¶ 18. Under these conditions, “the engine cannot deliver such a
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`small amount of power at acceptable efficiency,” and “the pump/motor 7 (acting as
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`a motor) provides power by itself.” Gray, 9:12-16, Fig. 2D; Ex. 1002, ¶ 18.
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`iv. Paefgen, Gray, and Yamaguchi describe operating an
`internal combustion engine of the hybrid vehicle to
`propel the hybrid vehicle when the RL required to do
`so is between the SP and a maximum torque output
`(MTO) of the engine, wherein the engine is operable
`to efficiently produce torque above the SP, and
`wherein the SP is substantially less than the MTO
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`Paefgen describes that switching between the engine and the electric motor
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`“occurs automatically depending on the requirements of the driving operation.”
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`Paefgen, 319; Ex. 1002, ¶ 19. For example, “[f]or longer distances, it is generally
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`the diesel engine that is used exclusively.” Paefgen, 319; Ex. 1002, ¶ 19.
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`Gray describes “mode 2,” shown in Fig. 2B and corresponding to Paice’s
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`“highway cruising mode IV,” in which a road load is within the range of optimal
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`efficiency of the engine (between levels A and B), and the engine drives the
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`vehicle alone. Gray, 8:52-63 (“[W]hen power demanded of engine 1 is within the
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`range of optimum efficiency ... all of the power is provided by the engine 1.”), Fig.
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`2B; Ex. 1002, ¶ 20.
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`Gray describes an efficient range of the engine between power levels A and
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`B of Figures 2A-2D. Ex. 1002, ¶ 21. Point A (corresponding to the claimed lower
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`level setpoint) is the low end of the range of optimum efficiency and substantially
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`less than point B (corresponding to the claimed maximum torque output). Gray,
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`8:35-39, Fig. 2B; Ex. 1002, ¶ 21.
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`Before the earliest filing date claimed on the face of the ’634 patent, a
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`person of ordinary skill in the art would have found it obvious for the torque output
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`at the setpoint (point A) to be substantially less than the MTO (point B) of the
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`engine. During prosecution of a similar limitation in the parent ’347 patent, the
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`Applicant conceded that this limitation is not “mathematically precise,” but argued
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`that the application describes examples minimum torque values of “typically at
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`least 30% of MTO” and “normally not in excess of 50% of MTO.” February 22,
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`2005 Amendment, at 15 (Ex. 1009). As described by the ’634 patent, Severinsky
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`’970 describes that an internal combustion engine is “substantially” more efficient
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`when operated at torque output levels of at least 35% of MTO. At this level, the
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`engine propels the vehicle, while below this level, the motor propels the vehicle.
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`Ex. 1001, 25:4-15. At least 35% of peak torque is within the range cited by the
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`Applicants as examples of torque values “substantially less” than MTO. Further,
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`referring to Severinsky ’970, it was also known that the efficient operational point
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`of an internal combustion engine “produces 60-90% of its maximum torque
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`whenever operated” Severinsky ’970, 20:63-67. As neither the claims, nor the
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`specification, of the ’634 patent identifies torque values that define “substantially
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`less” than MTO, these values, which include up to 40% less than the maximum
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`torque, would also be considered “substantially less” than MTO.
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`Additionally, as of the filing date of the ’634 patent, it was common for
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`automotive engines to have a broad band of torque output in which the engine
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`would operate efficiently. Ex. 1002, ¶ 22. For example, Severinsky ’970 describes
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`that the efficient operational point of an internal combustion engine “produces 60-
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`90% of its maximum torque whenever operated.” Severinsky ’970, 20:63-67; Ex.
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`1002, ¶ 22. The paper “Electric Hybrid Drive Systems for Passenger Cars and
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`Taxis” (“Kalberlah,” Ex. 1010), which was presented at the SAE (Society of
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`Automotive Engineers) International Congress and Exposition in Detroit, Michigan
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`between February 26-March 1, 1991 and published by the SAE in 1991, also
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`discloses in Figure 8 that the transition point for switching between the electric
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`motor and the internal combustion engine is substantially less than a maximum
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`torque output of the internal combustion engine. Ex. 1002, ¶ 22.
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`Accordingly, in view of Gray’s description of point A, the low end of the
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`efficient operating range of the engine, a torque setpoint value substantially less
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`than the MTO would have been obvious to a person of ordinary skill in the art at
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`the time of the alleged invention of the ’634 patent. Ex. 1002, ¶ 23.
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`v. Paefgen, Gray, and Yamaguchi describe operating
`both the at least one electric motor and the engine to
`propel the hybrid vehicle when the torque RL
`required to do so is more than MTO
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`Paefgen describes that switching between the engine and the electric motor
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`“occurs automatically, depending on the requirements of the driving operation.”
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`Paefgen, 319; Ex. 1002, ¶ 24.
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`Gray describes “mode 1,” shown in Fig. 2A, and corresponding to Paice’s
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`“acceleration mode V,” in which a road load is greater than the upper limit of the
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`efficient range (above power level B), and the engine and motor operate together to
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`drive the vehicle. Gray, 8:41-46 (“[W]hen the power demanded is greater than that
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`deliverable at optimum efficiency by the engine 1 …. that portion of load which
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`exceeds B is provided by the pump/motor 7 (acting as a motor), while the engine 1
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`provides the rest.”), Fig. 2A; Ex. 1002, ¶ 25.
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`vi. Paefgen, Gray, and Yamaguchi describe rotating the
`engine before starting the engine such that its
`cylinders are heated by compression of air therein
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`Yamaguchi describes a hybrid vehicle, in which a generator/motor rotates en
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`engine when the vehicle speed reaches an “engine starting speed V*.” Yamaguchi,
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`Abstract; Ex. 100