UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`
`Petitioner
`
`
`Patent No. 8,214,097
`Issue Date: July 3, 2012
`Title: HYBRID VEHICLES
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,214,097
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42.104
`
`Case No. IPR2017-00237
`__________________________________________________________________
`
`
`
`
`
`

`
`
`
`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 ’097 Patent .................................................................................... 2 
`B. 
`Prosecution History of the ’097 Patent ................................................ 4 
`Inter Partes Review of the ’097 Patent ................................................ 5 
`C. 
`D. 
`Patents and Printed Publications Relied On ......................................... 9 
`E. 
`Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2)) ...... 10 
`F. 
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................. 11 
`IV.  How Challenged Claims Are Unpatentable (37 C.F.R. § 42.104(b)(4)-
`(5)) ................................................................................................................ 12 
`A. 
`Claim 21 is Obvious in View of Barske, Gray, and Vittone .............. 15 
`1. 
`Independent Claim 21 .............................................................. 17 
`2. 
`Obviousness in View of Barske, Gray, and Vittone ................ 29 
`3. 
`Claim Chart .............................................................................. 33 
`Claim 27 is Obvious in View of Barske, Gray, Vittone, and
`Severinsky ’970 .................................................................................. 42 
`1. 
`Claim 27 ................................................................................... 43 
`2. 
`Obviousness in View of Barske, Gray, Vittone, and
`Severinsky ’970 ........................................................................ 43 
`Claim Chart .............................................................................. 44 
`3. 
`Claim 30 is Obvious in View of Barske and Vittone ......................... 45 
`1. 
`Claim 30 ................................................................................... 45 
`2. 
`Obviousness in View of Barske and Vittone ........................... 47 
`3. 
`Claim Chart .............................................................................. 48 
`Claim 32 is Obvious in View of Barske, Vittone, and
`Yamaguchi .......................................................................................... 50 
`1. 
`Claim 32 ................................................................................... 51 
`
`B. 
`
`C. 
`
`D. 
`
`i
`
`

`
`
`
`V. 
`
`E. 
`
`2. 
`Obviousness in View of Barske, Vittone, and Yamaguchi ..... 51 
`Claim Chart .............................................................................. 53 
`3. 
`Claim 33 is Obvious in View of Barske, Vittone, Yamaguchi,
`and Katsuno ........................................................................................ 53 
`1. 
`Claim 33 ................................................................................... 54 
`2. 
`Obviousness in View of Barske, Vittone, Yamaguchi,
`and Katsuno .............................................................................. 54 
`Claim Chart .............................................................................. 55 
`3. 
`Claim 37 is Obvious in View of Barske, Vittone, and
`Severinsky ’970 .................................................................................. 56 
`1. 
`Claim 37 ................................................................................... 56 
`2. 
`Obviousness in View of Barske, Gray, and Severinsky
`’970 .......................................................................................... 57 
`Claim Chart .............................................................................. 58 
`3. 
`Conclusion .................................................................................................... 58 
`
` 
`
`F. 
`
`ii
`
`

`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 8,214,097 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.
`
`Vittone et al., FIAT Research Centre, Fiat Conceptual
`Approach to Hybrid Cars Design, 12th International
`Electric Vehicle Symposium (1994)
`
`U.S. Patent No. 5,343,970 to Severinsky
`
`U.S. Patent No. 5,865,263 to Yamaguchi et al.
`
`U.S. Patent No. 4,707,984 to Katsuno 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
`
`
`
`Exhibit 1001
`
`Exhibit 1002
`
`Exhibit 1003
`
`
`Exhibit 1004
`
`Exhibit 1005
`
`
`Exhibit 1006
`
`Exhibit 1007
`
`Exhibi 1008
`
`Exhibit 1009
`
`
`Exhihit 1010
`
`
`Exhibit 1011
`
`
`
`

`
`
`
`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; IPR2014-00570,
`
`IPR2014-01415, IPR2015-00792, IPR2016-00250.
`
`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:
`
`mlennon@kenyon.com
`
`1
`
`

`
`
`
`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. 8,214,097 (“the ’097 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 21, 27, 30, 32, 33, and 37 of the ’097 patent are invalid under 35
`
`U.S.C. § 103.
`
`A. The ’097 Patent
`
`The ’097 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), so that the engine is run only under conditions of high efficiency.
`
`Ex. 1001, Abstract. The engine is capable of operating efficiently between a lower-
`
`2
`
`

`
`
`
`level setpoint (“SP”) and a maximum torque output (“MTO”). 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 as “Mode V”), in which the vehicle is propelled by both the engine and the
`
`electric motor. 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). See Declaration of Scott Andrews,
`
`Ex. 1002, ¶ 3.
`
`The rate of change of the engine’s torque output is limited to limit
`
`undesirable emissions and to improve fuel economy. Ex. 1001, 38:62-39:1; Ex.
`
`1002, ¶ 3. More specifically, the rate of change of engine torque is limited to less
`
`than the engine’s inherent maximum rate of increase in output torque such that
`
`combustion of fuel within the engine occurs at a substantially stoichiometric ratio.
`
`Ex. 1002, ¶ 3.
`
`3
`
`

`
`
`
`B. Prosecution History of the ’097 Patent
`
`The ’097 patent was originally filed with 16 claims; the original claims were
`
`canceled and claims 17-61 were added by preliminary amendment on September
`
`30, 2011. In an Office Action dated December 1, 2011, the Examiner rejected
`
`independent application claims 40 and 51 (which correspond to patent claims 21
`
`and 30, respectively), for example, as anticipated by U.S. Patent No. 5,343,970
`
`(“Severinsky ’970,” Ex. 1006), and rejected various dependent claims reciting
`
`limitations involving the “stoichiometric ratio” of the supplied fuel and air supply
`
`to the engine as obvious in view of Severinsky ’970 and U.S. Patent No. 5,483,939
`
`(“Kamura”).
`
`In an amendment dated March, 5, 2012, the Applicants amended application
`
`claims 40 and 51 to recite inter alia controlling the engine such that a rate of
`
`increase of output torque of the engine is limited to less than the inherent
`
`maximum rate of increase of output torque, and “wherein said step of controlling
`
`the engine such that the rate of change of output torque of the engine is limited is
`
`performed such that combustion of fuel within the engine occurs at a substantially
`
`stoichiometric ratio.”
`
`In the Amendment, the Applicants commented that:
`
`[T]he claims of this application are largely directed to control of the
`combustion of fuel in an ICE of a hybrid vehicle so that the fuel is
`combusted efficiently. Ideally, combustion would take place at
`4
`
`

`
`
`
`
`
`precisely the stoichiometric ratio, whereby the fuel:air mixture that is
`provided to the ICE is neither “rich” (containing more fuel than can be
`combusted in the amount of air provided), nor “lean” (containing
`more air than is needed for the complete combustion of the amount of
`fuel provided). Rich mixtures lead to unburned fuel in the exhaust,
`which is wasteful of fuel and can contribute to undesirable emissions,
`while over-lean mixtures can
`lead
`to
`increased combustion
`temperatures and formation of different undesired emissions (March
`5, 2012, Amendment at 9);
`
`and that:
`
`As claimed herein, the controller imposes a further, non-inherent
`limitation on the rate of increase of torque output by the engine. This
`is done so that the “super rich” fuel:air mixtures mentioned above, and
`indeed substantially all rich mixtures, can be avoided in favor of
`substantially stoichiometric combustion at all times, yielding further
`improvement in fuel efficiency and reduction of undesired exhaust
`emissions (March 5, 2012, Amendment at 9).
`
`The claims were allowed on May 10, 2012, and the ’097 patent issued on
`
`
`
`July 3, 2012.
`
`C. Inter Partes Review of the ’097 Patent
`
`In previous IPR proceedings, the Board has considered the patentability of
`
`all of the claims challenged in this petition. In summary, the Board has issued final
`
`5
`
`

`
`
`
`written decisions, finding claims 21, 30, 32, and 33 invalid, and is currently
`
`conducting inter partes review of 21, 27, 30, 32, 33, and 37.
`
`More specifically, in IPR2014-00570, the Board issued a final written
`
`decision finding claim 30 invalid as obvious in view of Severinsky ’970 and
`
`Anderson et al., The Effects of APU Characteristics on the Design of Hybrid
`
`Control Strategies for Hybrid Electric Vehicles, SAE Technical Paper 950493
`
`(1995) (“Anderson”), claim 32 invalid as obvious in view of Severinsky ’970,
`
`Anderson, and U.S. Patent No. U.S. Patent No. 5,865,263 (“Yamaguchi,” Ex.
`
`1007), and claim 33 invalid as obvious in view of Severinsky ’970, Anderson,
`
`Yamaguchi, and U.S. Patent No. 4,707,984 (“Katsuno,” Ex. 1008).
`
`In IPR2014-01415, the Board issued a final written decision finding claim
`
`23 invalid as obvious in view of Severinsky ’970, Anderson, and Yamaguchi, and
`
`claim 30 invalid as obvious in view of Severinsky ’970 and Takaoka et al., A High-
`
`Expansion Ratio Gasoline Engine for the Toyota Hybrid System, Toyota Technical
`
`Review, vol. 47, no. 2 (Apr. 1998) (“Takaoka”).
`
`In IPR2015-00792 the Board issued a final written decision finding claims
`
`27 and 37 to be unpatentable in view of Severinsky ’970 and Takaoka.
`
`Throughout the inter partes review proceedings involving the ’097 patent,
`
`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
`
`6
`
`

`
`
`
`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. 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 ’097 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 ’097
`
`patent uses the term “road load” according to its “very standard definition:”
`
`7
`
`

`
`
`
`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. 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.1 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
`
`
`1 U.S. Patent No. 7,104,347 (“the ’347 patent”), which is identified on the face of
`
`the ’097 patent as a parent application and which shares the same specification as
`
`the ’097 patent.
`
`8
`
`

`
`
`
`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 ’097 patent.
`
`D. 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 ’097 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 ’097 patent under 35 U.S.C. § 102(b).
`
`
`
`3.
`
`Vittone et al., FIAT Research Centre, Fiat Conceptual Approach to
`
`Hybrid Cars Design, 12th International Electric Vehicle Symposium (1994)
`
`(“Vittone,” Ex. 1005), published on December 5, 1994, which constitutes prior art
`
`against the ’097 patent under 35 U.S.C. § 102(b).
`
`
`
`4.
`
`U.S. Patent No. 5,343,970 (“Severinsky ’970,” Ex. 1006), issued on
`
`September 6, 1994, which constitutes prior art against the ’097 patent under 35
`
`U.S.C. § 102(b).
`
`9
`
`

`
`
`
`
`
`5.
`
`U.S. Patent No. 5,865,263 (“Yamaguchi,” Ex. 1007), filed on
`
`February 23, 1996 and issued on February 2, 1999, which constitutes prior art
`
`against the ’097 patent at least under 35 U.S.C. §§ 102(a) and (e).
`
`
`
`6.
`
`U.S. Patent No. 4,707,984 (“Katsuno,” Ex. 1008), filed on April 11,
`
`1986 and issued on November 24, 1987, which constitutes prior art against the
`
`’097 patent under 35 U.S.C. § 102(b).
`
`E. Statutory Grounds for Challenge (37 C.F.R. § 42.104(b)(1)-(2))
`
`1. Claim 21 is obvious under 35 U.S.C. § 103(a) in view Barske, Gray, and
`
`Vittone.
`
`2. Claim 27 is obvious under 35 U.S.C. § 103(a) in view Barske, Gray,
`
`Vittone, and Severinsky ’970.
`
`3. Claim 30 is obvious under 35 U.S.C. § 103(a) in view Barske and Vittone
`
`4. Claim 32 is obvious under 35 U.S.C. § 103(a) in view Barske, Vittone, and
`
`Yamaguchi.
`
`5. Claim 33 is obvious under 35 U.S.C. § 103(a) in view Barske, Vittone,
`
`Yamaguchi, and Katsuno.
`
`6. Claim 37 is obvious under 35 U.S.C. § 103(a) in view Barske, Vittone, and
`
`Severinsky ’970.
`
`10
`
`

`
`
`
`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 ’097 patent does not present special definitions for any claim
`
`term, and the original prosecution history of the ’097 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 ’097 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, 11:30-32).
`
`[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).
`
`
`11
`
`

`
`
`
`
`
`[A]pplicants’ ‘road load’, i.e., the torque required to propel the vehicle.
`(Id., 14:3-4).
`
`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., 34:36-38).
`
`[T]he vehicle’s instantaneous torque requirement, that is, the ‘road load.’
`(Id., 37:51-52).
`
`[T]he vehicle’s instantaneous torque requirement, i.e., the ‘road load’ RL.
`(Id., 39:31-32).
`
`IV. How Challenged Claims Are Unpatentable (37 C.F.R. §
`42.104(b)(4)-(5))
`
`For example, Barske, filed
`
`in 1994, describes certain aspects of
`
`Volkswagen’s hybrid technology. Ex. 1002, ¶ 6. Barske describes a parallel hybrid
`
`vehicle having an internal combustion engine and an electric motor, with a battery,
`
`for propelling the vehicle. Ex. 1002, ¶ 6. 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, ¶ 6. 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
`12
`
`

`
`
`
`combination thereof), is based on load: “small load,” “medium load,” or “full
`
`load.” Ex. 1002, ¶ 6.
`
`
`
`
`
`Barske’s control strategy is based on load in the same manner claimed in the
`
`’097 patent. Ex. 1002, ¶ 7. 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, ¶ 7. Barske also
`
`13
`
`

`
`
`
`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 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, ¶ 7. 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, ¶ 7.
`
`Gray, for example, describes a hybrid vehicle, in which the control strategy
`
`is based on “road load” in the same manner claimed in the ’097 patent. Ex. 1002, ¶
`
`8. 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, ¶ 8. 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, ¶ 8. 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
`
`14
`
`

`
`
`
`electric motor under conditions where demand is “greater than that deliverable at
`
`optimum efficiency by the engine.” Gray, 8:40-51; Ex. 1002, ¶ 8.
`
`Vittone, for example, also describes a parallel hybrid vehicle featuring an
`
`electronic control unit which implements the “working strategies of the vehicle” by
`
`activating the two drive trains in hybrid drive: the electric motor and thermal
`
`engine. See Vittone, 463-465; Ex. 1002, ¶ 9. Vittone describes that one of the
`
`objectives of the hybrid drive is “to introduce only the electric traction in the
`
`phases in which the thermal engine would be requested to work in low efficiency
`
`conditions.” See Vittone, p. 464; Ex. 1002, ¶ 9.
`
`A. Claim 21 is Obvious in View of Barske, Gray, and Vittone
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`Barske is described above, was not cited during the prosecution of the ’097
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`patent, and has not been cited during any review of the ’097 patent before the
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`Board.
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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, ¶ 10. 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, ¶ 10. 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 operating strategy that Paice has
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`described as a “[c]ompletely new idea” and absent from the prior art. Gray, 8:35-
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`15
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`

`
`
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`9:16, Figs. 2A-2D; Ex. 1002, ¶ 10; see e.g. Aug. 3, 2015 IPR2014-00570, Paper
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`43, 40:12-14; Aug. 11, 2016, IPR2015-00794, Paper No. 30, 47:4-9; August 11,
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`2016, IPR2015-00758, 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, ¶ 10. 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, ¶ 10. 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 ’097 patent, as described in more detail below. Ex. 1002, ¶ 10.
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`Vittone was not cited during the original prosecution of the ’097 patent, or
`
`during any review of the ’097 patent before the Board. Vittone also describes a
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`parallel hybrid vehicle featuring an electronic control unit which implements the
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`“working strategies of the vehicle” by activating the two drive trains in hybrid
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`drive: the electric motor and thermal engine. Vittone, 463-465; Ex. 1002, ¶ 11.
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`Vittone describes that one of the objectives of the hybrid drive is “to introduce
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`only the electric traction in the phases in which the thermal engine would be
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`requested to work in low efficiency conditions.” Vittone, 464; Ex. 1002, ¶ 11.
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`16
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`
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`The question of whether the challenged claim is obvious in view of Barske,
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`Gray, and Vittone has never been presented to the Board.
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`
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`1. Independent Claim 21
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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.” Ex. 1002, ¶ 12.
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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, ¶ 13.
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`Further, Vittone describes the limitation that was added by amendment to
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`claim 21 (and claim 30) to obtain allowance: “employing said controller to control
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`the engine such that a rate of increase of output torque of the engine is limited to
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`less than said inherent maximum rate of output torque, and, if the engine is
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`incapable of supplying instantaneous torque required to propel the hybrid vehicle,
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`supplying additional torque from the at least one electric motor and wherein said
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`step of controlling the engine such that the rate of change of output torque of the
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`engine is limited is performed such that combustion of fuel within the engine
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`occurs at a substantially stoichiometric ratio; output torque, and, if the engine is
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`incapable of supply.”
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`17
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`

`
`
`
`i. Barske, Gray, and Vittone describe a method for
`controlling a hybrid vehicle, said vehicle comprising a
`battery, a controller, wheels, an internal combustion
`engine and at least one electric motor, wherein both
`the internal combustion engine and motor are capable
`of providing torque to the wheels of said vehicle
`wherein said engine has an inherent maximum rate of
`increase of output torque
`
`Barske describes a parallel hybrid vehicle, having an internal combustion
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`engine, an electric motor, a battery, wheels, 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;
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`Ex. 1002, ¶ 14. A controller controls the electric motor and charges the battery, a
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`mixture and engine controller are responsible for controlling the first and second
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`modules of the internal combustion engine. Barske, 6:1-7, 7:8-10; Ex. 1002, ¶ 14.
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`Gray also describes a parallel hybrid drive system, having an internal
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`combustion engine, a storage battery, a microprocessor, wheels, and an electric
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`motor. Gray, 3:13-39; Ex. 1002, ¶ 15. Gray describes operating the engine near
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`peak efficiency by adding load or adding power as needed, according to the road
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`load as illustrated in Figures 2A-2D. Gray, 4:61-67, 8:35-9:16; Ex. 1002, ¶ 15.
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`Vittone also describes a parallel hybrid vehicle featuring an electronic
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`control unit which implements the “working strategies of the vehicle” by activating
`
`the two drive trains in hybrid drive: the electric motor and thermal engine. Vittone,
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`463-465; Ex. 1002, ¶ 16.
`
`18
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`

`
`
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`As admitted by the Applicant during prosecution of the ’097 patent, “all
`
`engines have an inherent limitation on the maximum rate of increase at which they
`
`can supply torque responsive to increase in fuel supplied.” February 29, 2012
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`Amendment, p. 12; Ex. 1002, ¶ 17.
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`ii. Barske, Gray, and Vittone describe determining the
`instantaneous road load (RL) required to propel the
`hybrid vehicle
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`According to Barske, an electric motor and two modules of an internal
`
`combustion engine are managed “in an optimum manner.” Barske, 8; Ex. 1002, ¶
`
`18. 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
`
`load,” both modules of the engine propel the vehicle; and during “acceleration” or
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`“great acceleration,” the electric motor and the engine together propel the vehicle.
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`Barske, 8; Ex. 1002, ¶ 18.
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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, ¶ 19. Gray describes that
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`engine load is directly determined by the instantaneous road load. Gray, 1:31-35
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`(“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, ¶ 19. 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, ¶ 19.
`
`19
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`

`
`
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`
`
`
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`iii. Barske, Gray, and Vittone describe operating at least
`one electric motor to propel the hybrid vehicle when
`RL required to do so is less than a setpoint (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, ¶
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`20. For example, under “small load,” the electric motor propels the vehicle.
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`Barske, 8, Ex. 1002, ¶ 20.
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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, ¶ 21. Under these conditions, “the engine cannot deliver such a
`
`20
`
`

`
`
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`small amount of power at acceptable efficiency,” and “the pump/motor 7 (acting as
`
`a motor) provides power by itself.” Gray, 9:12-16, Fig. 2D; Ex. 1002, ¶ 21.
`
`
`
`
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`iv. Barske, Gray, and Vittone describe operating an
`internal combustion engine of the hybrid vehicle to
`propel the hybrid vehicle when the RL is between SP
`and a maximum torque output (MTO) of the engine,
`wherein the engine is operable to efficiently produce
`torque above SP, and wherein SP is substantially less
`than the 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, ¶
`
`22. For example, under “medium load,” the first module of the engine propels the
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`vehicle. Barske, 8; Ex. 1002, ¶ 22. Further, under “full load,” both modules of the
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`engine propel the vehicle. Barske, 8; Ex. 1002, ¶ 22.
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`21
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`

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`
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`Gray describes “mode 2,” shown in Fig. 2B and corresponding t