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. IPR2017-00232
`__________________________________________________________________
`
`
`
`
`
`

`
`
`
`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 
`“
`10 
` 
`IV.  How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-
`(5)) ................................................................................................................ 10 
`A. 
`Claims 33-38, 43, 44, 46, 50, and 52 are Obvious in View of
`Barske, Gray, and Probst .................................................................... 14 
`1. 
`Independent Claim 33 .............................................................. 16 
`2. 
`Dependent Claims 34-38, 43, 44, 46, 50, and 52 ..................... 26 
`3. 
`Obviousness in View of Barske, Gray, and Probst .................. 32 
`4. 
`Claim Charts ............................................................................ 37 
`Claims 39 and 40 are Obvious in View of Barske, Gray, Probst,
`and Moroto ......................................................................................... 51 
`1. 
`Claim 39 ................................................................................... 51 
`2. 
`Claim 40 ................................................................................... 53 
`3. 
`Obviousness in View of Barske, Gray, Probst, and
`Moroto ...................................................................................... 54 
`Claim Chart .............................................................................. 55 
`4. 
`Claim 41 is Obvious in View of Barske, Gray, Probst, and
`Lateur .................................................................................................. 56 
`1. 
`Claim 41 ................................................................................... 57 
`2. 
`Obviousness in View of Barske, Gray, Probst, and Lateur ..... 57 
`i
`
`B. 
`
`C. 
`
`

`
`
`
`V. 
`
`D. 
`
`3. 
`Claim Chart .............................................................................. 58 
`Claims 42 and 55 are Obvious in View of Barske, Gray, Probst,
`and Severinsky ’970 ........................................................................... 59 
`1. 
`Claim 42 ................................................................................... 59 
`2. 
`Claim 55 ................................................................................... 60 
`3. 
`Obviousness in View of Barske, Gray, Probst, and
`Severinsky ’970 ........................................................................ 61 
`Claim Chart .............................................................................. 62 
`4. 
`Claim 53 is Obvious in View of Barske, Gray, Probst, and
`Vittone ................................................................................................ 63 
`1. 
`Claim 53 ................................................................................... 63 
`2. 
`Obviousness in View of Barske, Gray, Probst, and
`Vittone ...................................................................................... 64 
`Claim Chart .............................................................................. 65 
`3. 
`Claim 54 is Obvious in View of Barske, Gray, Probst, and
`Yamaguchi .......................................................................................... 66 
`1. 
`Claim 54 ................................................................................... 67 
`2. 
`Obviousness in View of Barske, Gray, Probst, and
`Yamaguchi ............................................................................... 67 
`Claim Chart .............................................................................. 69 
`3. 
`Conclusion .................................................................................................... 70 
`
` 
`
`E. 
`
`F. 
`
`ii
`
`

`
`
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1003
`
`
`Exhibit 1004
`
`Exhibit 1005
`
`Exhibit 1006
`
`Exhibit 1007
`
`Exhibit 1008
`
`Exhibit 1009
`
`
`Exhibit 1010
`
`Exhibit 1011
`
`
`Exhibit 1012
`
`
`Exhibit 1013
`
`
`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 7,237,634 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
`
`Vittone et al., FIAT Research Centre, Fiat Conceptual
`Approach to Hybrid Cars Design, 12th International
`Electric Vehicle Symposium (1994)
`
`U.S. Patent No. 5,865,263 to Yamaguchi et al.
`
`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 33-44, 46, 50, and 52-55
`
`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 33-44, 46, 50, and 52-55 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”).
`
`Id.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. Id. The microprocessor determines the mode of operation
`
`based on road load Id. 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). Id.
`
`B. Prosecution History of the ’634 Patent
`
`The ’634 patent is a division of U.S. Patent No. 7,104,347 (“the ’347
`
`patent”) and was originally filed with 16 claims, which were canceled in a
`
`preliminary amendment filed on May 8, 2006; the preliminary amended added
`
`claims 17-75. In the first Office Action (dated August 10, 2006), the Examiner
`
`rejected independent 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. According to the
`
`3
`
`

`
`
`
`Examiner, Gray describes nearly all of the limitations of 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 claim 55, for
`
`example, which added the limitation of “monitoring patterns of vehicle operation
`
`over time and varying the SP accordingly,” included allowable subject matter. Id.,
`
`5.
`
`Applicants did not dispute the Examiner’s findings regarding Gray. Instead,
`
`Applicants chose to add to application claim 49 the limitations of application claim
`
`55. See November 22, 2006 Amendment. The claims were thereafter allowed,
`
`without comment from the Examiner.
`
`
`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.
`
`4
`
`

`
`
`
`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. 1011, 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. 1011, 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. 1011, p. 127).
`
`
`5
`
`

`
`
`
`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. 1011, 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. 1011, 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. 1011. 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
`
`6
`
`

`
`
`
`the vehicle, or road load, that those really mean the same thing. (Ex.
`1011, 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 33-44, 46, 50, and 52-55 are
`
`unpatentable.
`
`D. Patents and Printed Publications Relied On
`
`1. German Published Patent Application No. 44 44 545 (“Barske,” Ex. 1003,
`
`including a certified English-language translation), published on June 29, 1995,
`
`which constitutes prior against the ’634 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 ’634 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 ’634 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 ’634
`
`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
`7
`
`

`
`
`
`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).
`
`
`
`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).
`
`
`
`7. Vittone et al., FIAT Research Centre, Fiat Conceptual Approach to Hybrid
`
`Cars Design, 12th International Electric Vehicle Symposium (1994) (“Vittone,”
`
`Ex. 1009) published December 5, 1994, which constitutes prior art against the ’634
`
`patent under 35 U.S.C. § 102(b).
`
`8. U.S. Patent No. 5,865,263 (“Yamaguchi,” Ex. 1010), 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).
`
`E. Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2))
`
`1. Claims 33-38, 43, 44, 46, 50, and 52 are obvious under 35 U.S.C. § 103(a)
`
`in view Barske, Gray, and Probst.
`
`2. Claims 39 and 40 are obvious under 35 U.S.C. § 103(a) in view Barske,
`
`Gray, Probst, and Moroto.
`
`3. Claim 41 is obvious under 35 U.S.C. § 103(a) in view Barske, Gray, Probst,
`
`and Lateur.
`
`8
`
`

`
`
`
`4. Claims 42 and 55 are obvious under 35 U.S.C. § 103(a) in view Barske,
`
`Gray, Probst, and Severinsky ’970.
`
`5. Claim 53 is obvious under 35 U.S.C. § 103(a) in view Barske, Gray, Probst,
`
`and Vittone.
`
`6. Claim 54 is obvious under 35 U.S.C. § 103(a) in view Barske, Gray, Probst,
`
`and Yamaguchi.
`
`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.:
`
`9
`
`

`
`
`
` “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).
`
` “[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
`
`10
`
`

`
`
`
`torque from either an internal combustion engine, an electric motor, or both,
`
`depending on driving parameters. Ex. 1002, ¶4.
`
`For example, Barske, filed
`
`in 1994, describes certain aspects of
`
`Volkswagen’s hybrid technology. 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.
`
`11
`
`

`
`
`
`
`
`
`
`Barske’s control strategy is based on load in the same manner claimed in the
`
`’634 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.” Id. 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 the first
`
`12
`
`

`
`
`
`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.” Id. 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.” Id.
`
`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
`
`electric motor under conditions where demand is “greater than that deliverable at
`
`optimum efficiency by the engine.” Gray, 8:40-51; Ex. 1002, ¶7.
`
`13
`
`

`
`
`
`Probst describes a drive train control for a motor vehicle using operating
`
`parameters of the vehicle, and accelerator pedal position, to determine engine
`
`output, to minimize the discharge of harmful substances. Probst, Abstract, 2:3-30;
`
`Ex. 1002, ¶8. To minimize vehicle emissions, Probst describes monitoring the
`
`driver’s operation of the vehicle to classify operating parameters of the vehicle,
`
`and using the operating parameters to control the drive sources and decelerating
`
`units of the drive train. Probst, 2:3-30; Ex. 1002, ¶8.
`
`A. Claims 33-38, 43, 44, 46, 50, and 52 are Obvious in View of Barske,
`Gray, and Probst
`
`Barske 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), that the engine is operable to
`
`efficiently produce torque above the setpoint, and that 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.
`
`14
`
`

`
`
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`Gray describes a parallel hybrid powertrain vehicle including a primary
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`engine and a power storage device. Ex. 1002, ¶9. The engine may be an internal
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`combustion engine, and the power storage device may be a combined storage
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`battery and electric motor. Gray, 3:13-39; Ex. 1002, ¶9. As illustrated in Figures
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`2A-2D, Gray describes a system for controlling which power source will drive the
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`vehicle, based on “road load”, the very same hybrid operating strategy that Paice
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`has described as a “[c]ompletely new idea” and absent from the prior art. Gray,
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`8:35-9:16, Figs. 2A-2D; Ex. 1002, ¶9; see e.g. Aug. 3, 2015 IPR2014-00570, Paper
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`43, 40:12-14; Aug. 11, 2016, IPR2015-00787, Paper No. 34, 47:4-9; August 11,
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`2016, IPR2015-00785, Paper No. 30, 58:15-18.
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`According to Gray, “[t]he load placed on the engine any at any given instant
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`is directly determined by the total road load at that instant, which varies between
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`extremely high and extremely low load.” Gray, 1:31-34; Ex. 1002, ¶9. Gray
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`discloses that control of the hybrid propulsion system is provided for by, for
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`example, “a torque (or power) demand sensor for sensing torque (or power)
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`demanded of the vehicle by the driver.” Gray, 3:43-49; Ex. 1002, ¶9. Depending
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`upon the road load, Gray switches between operating modes in the same manner as
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`claimed in the ’634 patent, as described in more detail below. Ex. 1002, ¶9.
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`Probst was not cited during the prosecution of the ’634 patent or in any
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`review of the ’634 patent before the Board. Probst describes a drive train control
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`15
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`for a motor vehicle using operating parameters of the vehicle, and accelerator pedal
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`position, to determine engine output, to minimize the discharge of harmful
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`substances. Probst, Abstract, 2:3-30; Ex. 1002, ¶10. To minimize vehicle
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`emissions, Probst describes monitoring the driver’s operation of the vehicle to
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`classify operating parameters of the vehicle, and using the operating parameters to
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`control the drive sources, decelerating units of the drive train and the “operating
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`points” of the hybrid drive. Probst, 2:3-30, 4:32:2; Ex. 1002, ¶10.
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`The question of whether the challenged claims are obvious in view of
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`Barske, Gray, and Probst has never been presented to the Board.
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`
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`1. Independent Claim 33
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`Barske describes a parallel hybrid vehicle, having an internal combustion
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`engine, an electric motor, a battery, two modules of the internal combustion engine
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`and a control procedure that makes it possible to “use the engine modules and the
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`electric motor in an optimum manner.” Barske, 8, 10:5-13; Ex. 1002, ¶11.
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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, ¶12.
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`Further, Probst describes the limitation that was the basis for allowance of
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`claim 33, “monitoring patterns of vehicle operation over time and varying the SP
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`accordingly.”
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`16
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`
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`i. Barske, Gray, and Probst describe a method for
`controlling a hybrid vehicle
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`Barske describes a parallel hybrid vehicle, having an internal combustion
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`engine, an electric motor, a battery, two modules of the internal combustion engine
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`and a control procedure that makes it possible to “use the engine modules and the
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`electric motor in an optimum manner.” Barske, 8, 10:5-13; Ex. 1002, ¶ 13.
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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, ¶14. Gray describes operating the engine near peak efficiency by adding load
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`or adding power as needed, according to the road load as illustrated in Figures 2A-
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`2D. Gray, 4:61-67, 8:35-9:16; Ex. 1002, ¶14.
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`Probst, titled “Drive train control for a motor vehicle,” describes central
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`control parameters for drive sources 9. Probst, Abstract; Ex. 1002, ¶15.
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`ii. Barske, Gray, and Probst describe determining the
`instantaneous road load (RL) required to propel the
`hybrid vehicle responsive to an operator command
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`According to Barske, the electric motor and the two modules of the internal
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`combustion engine are managed “in an optimum manner.” Barske, 8; Ex. 1002,
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`¶16. For example, under “small load,” the electric motor propels the vehicle; under
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`“medium load,” the first module of the engine propels the vehicle; under “full
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`load,” both modules of the engine propel the vehicle; and during “acceleration” or
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`17
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`“great acceleration,” the electric motor and the engine together propel the vehicle.
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`Barske, 8; Ex. 1002, ¶16.
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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, ¶17. 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.”); Ex. 1002, ¶17. 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, ¶17.
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`
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`iii. Barske, Gray, and Probst 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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`18
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`According to Barske, the electric motor and the two modules of the internal
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`combustion engine are managed “in an optimum manner.” Barske, 8; Ex. 1002,
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`¶18. For example, under “small load,” corresponding to Paice’s “low-load mode I”,
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`the electric motor propels the vehicle. Barske, 8; Ex. 1002, ¶18.
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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, ¶19. 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, ¶19.
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`19
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`iv. Barske, Gray, and Probst 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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`According to Barske, the electric motor and the two modules of the internal
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`combustion engine are managed “in an optimum manner.” Barske, 8; Ex. 1002,
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`¶20. For example, under “medium load,” the first module of the engine propels the
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`vehicle. Barske, 8; Ex. 1002, ¶20. Further, under “full load,” both modules of the
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`engine propel the vehicle. Barske, 8; Ex. 1002, ¶20. These “medium load” and
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`“full load” conditions, in which the engine propels the vehicle, correspond to
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`Paice’s “highway cruising mode IV.” Ex. 1002, ¶20.
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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, ¶21.
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`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, ¶22. 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, ¶22.
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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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`21
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`
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`2005 Amendment, at 15 (Ex. 1012). 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. 100