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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner
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`v.
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`MICHIGAN MOTOR TECHNOLOGIES LLC
`Patent Owner
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`Case IPR2020-00451
`Patent 6,588,260
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`DECLARATION OF GERALD J. MICKLOW, PH.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,588,260
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`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`
`
`VW EX1003
`U.S. Patent No. 6,588,260
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`

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`
`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`TABLE OF CONTENTS
`
`
`I. 
`Introduction ........................................................................................................ 1 
`Summary of Grounds ......................................................................................... 2 
`II. 
`III.  Qualifications ..................................................................................................... 3 
`IV.  Materials Considered ......................................................................................... 6 
`V. 
`Legal Standards ................................................................................................. 8 
`A.  My Understanding of Claim Construction .............................................. 9 
`B. 
`A Person of Ordinary Skill in the Art ................................................... 10 
`C.  My Understanding of Obviousness ....................................................... 10 
`VI.  Level of Ordinary Skill in the Art ................................................................... 15 
`VII.  Overview of the ’260 Patent ............................................................................ 17 
`A. 
`Technology Overview ........................................................................... 17 
`B. 
`Alleged Problem in the Prior Art .......................................................... 34 
`C. 
`Alleged Invention of the ’260 Patent .................................................... 35 
`D. 
`Prosecution History Summary .............................................................. 42 
`E. 
`Claim Construction ............................................................................... 44 
`VIII.  Summary of the Applied References ............................................................... 44 
`A.  McQueen ............................................................................................... 44 
`B. 
`Terazawa ............................................................................................... 46 
`C. 
`Husselbee ............................................................................................... 51 
`IX.  Ground 1: The combination of McQueen, Terazawa, and the
`knowledge of a POSA demonstrated by Husselbee renders obvious
`claims 1-10. ...................................................................................................... 52 
`A. 
`Rationale for Combining McQueen, Terazawa, and the
`Knowledge of a POSA Demonstrated by Husselbee ............................ 52 
`B.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious independent claim
`1. ............................................................................................................ 75 
`1.
`[1.P] “An electronic throttle control apparatus for testing integrity
` 
`of a motor drive electronics disable feature comprising” ............ 75 
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`2.
` 
`
`3.
` 
`
`4.
` 
`
`5.
` 
`6.
` 
`
`7.
` 
`
`[1.A] “a PCM having drive electronics for controlling a motor
`coupled to an electronic throttle plate” ........................................ 76 
`[1.B] “said PCM having control logic to disable said drive
`electronics and return said electronic throttle plate to a default
`position” ....................................................................................... 79 
`[1.C] “determine a default throttle position sensor (TPS) output
`voltage corresponding to said default position” .......................... 81 
`[1.D] “command a full closing motor voltage” ........................... 85 
`[1.E] “compare a full closing TPS output voltage to said default
`TPS output voltage” ..................................................................... 93 
`[1.F] “engage failure mode management when said full closing
`TPS output voltage and said default TPS output voltage are
`significantly different from each other” ....................................... 94 
`C.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 2. ............................ 97 
`D.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 3. ............................ 98 
`E.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 4. ..........................100 
`F.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 5. ..........................102 
`G.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 6. ..........................103 
`H.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 7. ..........................105 
`McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious independent claim
`8. ..........................................................................................................106 
`1.
`[8.P] “An electronic throttle control test system for an automobile
` 
`having and internal combustion engine, said system comprising”
` ....................................................................................................106 
`[8.A] “a motorized throttle located on the internal combustion
`engine, said motorized throttle having a throttle plate coupled to a
`
`I. 
`
`2.
` 
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`3.
` 
`
`4.
` 
`
`motor for controlling an amount of airflow entering the internal
`combustion engine” ....................................................................107 
`[8.B] “a PCM having drive electronics for controlling said motor
`coupled to said throttle plate” ....................................................108 
`[8.C] “said PCM having control, logic to disable said drive
`electronics such that said throttle plate returns to or remains at a
`default position” .........................................................................108 
`[8.D] “determine a default throttle position sensor (TPS) output
`voltage corresponding to said default position” ........................109 
`[8.E] “command a full closing motor voltage” ..........................109 
`[8.F] “compare said full closing TPS output voltage to said
`default TPS output voltage” .......................................................110 
`[8.G] “engage failure mode management when said full closing
`TPS output voltage and said predetermined default TPS output
`voltage are significantly different” ............................................111 
`J.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 9. ..........................111 
`K.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 10. ........................112 
`X.  Ground 2: The combination of McQueen and Terazawa renders
`obvious claims 11-13. .................................................................................... 112 
`A. 
`Rationale for Combining McQueen and Terazawa .............................112 
`B.  McQueen and Terazawa render obvious independent claim 11. ........133 
`1.
`[11.P] “A method for testing integrity of an electronic throttle
` 
`plate driver disable function controlled by a powertrain control
`module (PCM) comprising the steps of” ...................................133 
`[11.A] “disabling said driver” ....................................................133 
`[11.B] “determining a first throttle position value with said driver
`disabled” .....................................................................................134 
`[11.C] “commanding full closing voltage” ................................134 
`[11.D] “determining a second throttle position value at said full
`closing voltage” ..........................................................................134 
`[11.E] “comparing said first and second throttle position values”
` ....................................................................................................135 
`
`5.
` 
`
`6.
` 
`7.
` 
`
`8.
` 
`
`2.
` 
`3.
` 
`
`4.
` 
`5.
` 
`
`6.
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`7.
` 
`
`[11.F] “engaging failure mode management when said first and
`second throttle position values are significantly different” .......135 
`C.  McQueen and Terazawa render obvious claim 12. .............................136 
`D.  McQueen and Terazawa render obvious claim 13. .............................136 
`XI.  Ground 3: The combination of McQueen, Terazawa, and the
`knowledge of a POSA demonstrated by Husselbee renders obvious
`claims 14-17. .................................................................................................. 136 
`A. 
`Rationale for Combining McQueen, Terazawa, and the
`Knowledge of a POSA Demonstrated by Husselbee ..........................136 
`B.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 14. ........................159 
`C.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 15. ........................160 
`D.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 16. ........................160 
`E.  McQueen, Terazawa, and the knowledge of a POSA
`demonstrated by Husselbee render obvious claim 17. ........................161 
`XII.  Objective indicia do not support patentability. .............................................. 161 
`XIII.  Conclusion ..................................................................................................... 163 
`
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`I.
`
`INTRODUCTION
`
`I, Gerald J. Micklow, declare as follows:
`
`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`1.
`
`I have been retained on behalf of Volkswagen Group of America, Inc.
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`(“VWGoA”) for the above-captioned inter partes review proceeding to provide my
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`expert opinions and expert knowledge. I understand that this proceeding involves
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`U.S. Patent No. 6,588,260 (“the ’260 patent”) titled “Electronic Throttle Disable
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`Control Test System,” and that the ’260 patent is currently assigned to Michigan
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`Motor Technologies LLC (“MMT”). I understand that the Petition submitted by
`
`VWGoA challenges claims 1-17 of the ’260 patent.
`
`2.
`
`The ’260 patent describes a method for testing the integrity of an
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`electronic throttle disable function. I am familiar with the technology described in
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`the ’260 patent as of its earliest possible priority date, October 24, 2000.
`
`3.
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`I have been asked to provide my independent technical review,
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`analysis, insights, and opinions regarding the ’260 patent and the references that
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`form the basis for the grounds of unpatentability set forth in the Petition for inter
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`partes review of the ’260 patent filed by VWGoA.
`
`4.
`
`In preparing this Declaration, I have reviewed and am familiar with all
`
`the documents cited herein. I have reviewed and am familiar with the ’260 patent
`
`and its file history. I confirm that to the best of my knowledge that the
`
`accompanying exhibits are true and accurate copies of what they purport to be and
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`that an expert in the field would reasonably rely on them to formulate opinions
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`such as those set forth in this Declaration.
`
`5.
`
`I am being compensated at my customary rate of $450 per hour for
`
`my work on this case. My compensation is not dependent upon my opinions, my
`
`testimony, or the outcome of this case.
`
`II.
`
`SUMMARY OF GROUNDS
`6.
`
`In forming my opinions about the ’260 patent, I have considered the
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`following grounds of unpatentability. Based on my careful review of the references
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`that form the basis of the grounds, it is my opinion that claims 1-17 of the ’260
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`patent would have been obvious to a person of ordinary skill in the art as of the
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`filing date of the ’260 patent.
`
`Ground
`
`References
`
`McQueen,
`Terazawa,
`Husselbee
`
`McQueen,
`Terazawa
`
`McQueen,
`Terazawa,
`Husselbee
`
`1
`
`2
`
`3
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`
`
`Basis
`
`§103
`
`Claims Challenged
`
`1-10
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`§103
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`11-13
`
`§103
`
`14-17
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`III. QUALIFICATIONS
`7.
`In forming the opinions in this declaration, I have considered and
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`relied on my education, background, and experience. My experience and education
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`are detailed in my curriculum vitae (“CV”). See EX1004. My CV lists my
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`publications and identifies parties on behalf of whom I have provided expert
`
`testimony.
`
`8.
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`I am an expert in throttle control systems. This expertise is directly
`
`applicable to the technological area of the ’260 patent, which relates to an
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`electronic throttle disable control test system. See EX1001, ’260 patent, Title.
`
`9.
`
`I have over forty-five years of experience in the design and analysis of
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`automotive electromechanical systems, such as throttle control systems. I am
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`currently a full professor of Mechanical and Civil Engineering at Florida Institute
`
`of Technology, the head of Automotive Engineering, and the director of the
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`Florida Center for Automotive Research (FCAR). I have been involved in throttle
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`control fuel injection and combustion systems since 1988. For seven years, NASA
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`Lewis Research Center funded my research in advanced gas turbine engine fuel
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`injection and combustion systems. Since that time, I have also been involved in
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`optimizing throttle and fuel injection and combustion systems for automotive and
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`trucking applications along with racing applications. I have also dyno tested and
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`track tested complex throttle and fuel injection systems.
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`10.
`
`I have a Bachelor of Science degree in Aerospace Engineering and a
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`
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`Master of Science degree in Aerospace Engineering, both from Pennsylvania State
`
`University. In 1989, I received my Ph.D. in Mechanical Engineering from Virginia
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`Polytechnic Institute and State University.
`
`11. From 1988-1996, I was an assistant professor in the Mechanical
`
`Engineering department at the University of Florida. At the University of Florida, I
`
`taught classes in power production systems for automotive applications, including
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`internal combustion engines, fluid dynamics, combustion, jet and rocket
`
`propulsion, gas turbine engines, advanced fan and compressor design,
`
`compressible gas dynamics, turbomachinery, and others.
`
`12. From 1996-2001, I was an associate professor in the Mechanical
`
`Engineering department at the University of Alabama. While at the University of
`
`Alabama, I helped start the Center for Advanced Vehicle Technology (CAVT),
`
`which researches electric vehicle components like throttle control systems.
`
`13. From 2001-2005, I was an associate professor in the Mechanical
`
`Engineering and Engineering Science department at the University of North
`
`Carolina, Charlotte (UNCC). While at UNCC, I helped start the North Carolina
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`Motorsports and Automotive Research Center (NCMARC) and was a key
`
`contributor to the start of the Motorsports Engineering program within the
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`Mechanical Engineering department. With this program, I directly worked with
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`four of the most competitive NASCAR teams in the country.
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`14. From 2005-2012, I was a full professor and program director in the
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`Mechanical Engineering department at East Carolina University, Greenville. While
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`at East Carolina University, I chaired the Mechanical Engineering Concentration
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`Development Committee and the Promotion and Tenure Committee for
`
`engineering.
`
`15.
`
`In 2012, I joined as a full professor of Mechanical and Aerospace
`
`Engineering at Florida Institute of Technology (FIT). During my tenure at FIT, I
`
`have acted as the Head of Automotive Engineering and the Director of the Florida
`
`Center for Automotive Research. At FIT, I have also taught classes in automotive
`
`engineering, internal combustion engines, thermodynamics, fluid dynamics,
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`advanced fan and compressor design, compressible gas dynamics, jet and rocket
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`propulsion, turbomachinery, and others.
`
`16. Also during the last eight years, I have chaired forty-five technical
`
`sessions for the Society of Automotive Engineers (SAE) in throttle and intake
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`systems, exhaust and particulate emission systems, direct injection spark and
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`compression ignition engines, fuel injection and sprays, fuel economy, HCCI
`
`combustion, hybrid electric vehicle powertrains, high efficiency engine concepts,
`
`multidimensional engine modeling, on-board diagnostics, fuels and fuel additives,
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`cold start characteristics, engine boosting systems, dual fuel combustion, and spark
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`assisted compression ignition combustion. I am also an associate editor for the
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`SAE International Journal of Fuels and Lubricants.
`
`17.
`
`I have won numerous accolades throughout my professional career.
`
`To name a few, I was awarded the SAE Ralph Teetor Award for teaching
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`excellence in 1995. In 2000, I was inducted into the U.S. Space Foundation
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`Technology Hall of Fame. In 2002, I received the NASA Space Grant Act Award
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`for work related to the Space Shuttle. In 2009, I received the SAE Faculty Advisor
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`award. In 2016, I received the ASME Outstanding Professor of the Year award.
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`And in 2017, I received the ASME Outstanding Research Professor of the Year
`
`award.
`
`18. Based on my education and experience, I am an expert in the type of
`
`throttle control systems at issue in this case, and I have been an expert in this area
`
`since before the ’260 patent was filed with the United States Patent and Trademark
`
`Office. I am also intimately familiar with how a person of ordinary skill would
`
`have used and understood the terminology found in the ’260 patent at the time of
`
`its filing.
`
`IV. MATERIALS CONSIDERED
`19.
`In formulating my opinions, I have relied upon my training,
`
`knowledge, and experience that are relevant to the ’260 patent. Furthermore, I have
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`specifically considered the following documents, in addition to any other
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`documents cited in this Declaration:
`
`Exhibit #
`1001
`
`1002
`
`1004
`
`1005
`
`1006
`
`1007
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Description
`U.S. Patent No. 6,588,260 B1 to Pursifull (“the ’260 patent”)
`Prosecution File History of U.S. Patent No. 6,588,260 B1 (“’260
`history”)
`Curriculum Vitae of Gerald J. Micklow, Ph.D.
`U.S. Patent No. 5,303,581 A to McQueen, titled “Method of and
`an Apparatus for Detecting a Fault in Return System,” issued
`April 19, 1994 (“McQueen”)
`U.S. Patent No. 5,048,485 to Terazawa et al., titled “Throttle
`Control Method for Internal Combustion Engine,” issued
`September 17, 1991 (“Terazawa”)
`Hans Mauser, “Electronic Throttle Control – A Dependability
`Case Study” (1999)
`Hans-Martin Streib, “Electronic Throttle Control (ETC): A Cost
`Effective System for Improved Emissions, Fuel Economy, and
`Driveability,” SAE: Electronic Engine Controls (1996)
`U.S. Patent No. 5,332,965 A to Wolf et al., titled “Contactless
`Linear Angular Position Sensor Having an Adjustable Flux
`Concentrator for Sensitivity Adjustment and Temperature
`Compensation,” issued July 26, 1994 (“Wolf”)
`U.S. Patent No. 6,047,679 A to Matsumoto et al., titled “Control
`Apparatus for an Internal Combustion Engine,” issued April 11,
`2000 (“Matsumoto”)
`U.S. Patent No. 5,415,144 A to Hardin et al., titled “Throttle
`Position Validation Method and Apparatus,” issued May 16, 1995
`(“Hardin”)
`U.S. Patent No. 5,146,892 to Krampe et al., titled “Method and
`Arrangement for the Open-loop and/or Closed-loop Control of the
`Engine Power of an Internal Combustion Engine of a Motor
`Vehicle,” issued September 15, 1992 (“Krampe”)
`
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
`
`Description
`Ronald K. Jurgen, “Automotive Electronics Handbook,” McGraw-
`Hill, Inc., ISBN0-07-033189-8, c.1994
`(“Jurgen”)
`U.S. Patent No. 5,673,668 A to Pallett et al., titled “Method and
`Apparatus for Electronic Throttle Monitoring,” issued October 7,
`1997 (“Pallett”)
`U.K. Patent Application No. 2227076 to Berger et al. titled
`“Monitoring the Integrity of a Safety Shut-off Device,” published
`July 18, 1990 (“Berger”)
`Husselbee, William L. Automotive Computer Control Systems:
`Fundamentals and Service. Chapter 4, “Automotive
`Microcomputers” (pp. 55-84). San Diego, CA: Harcourt Brace
`Jovanovich, ©1989.
`
`
`Exhibit #
`
`1015
`
`1016
`
`1017
`
`1022
`
`
`
`V. LEGAL STANDARDS
`20.
`I have also relied upon various legal principles (as explained to me by
`
`Volkswagen’s counsel) in formulating my opinions. My understanding of these
`
`principles is summarized below.
`
`21.
`
`I have been told the following legal principles apply to analysis of
`
`patentability. I also have been told that, in an inter partes review proceeding, a
`
`patent claim may be deemed unpatentable if it is shown by a preponderance of the
`
`evidence that the claim is anticipated by one prior art reference under 35 U.S.C. §
`
`102 or rendered obvious by one or more prior art references under 35 U.S.C. § 103.
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`22.
`
`I understand that documents and materials such as printed
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
`
`
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`publications or patents that qualify as prior art can be used to render a patent claim
`
`as anticipated or as obvious.
`
`23.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation or obviousness of a patent
`
`claim requires a comparison of the properly construed claim language to the prior
`
`art on a limitation-by-limitation basis.
`
`A. My Understanding of Claim Construction
`24.
`I understand that during an inter partes review proceeding, claims are
`
`to be construed in light of the specification as would be read by a person of
`
`ordinary skill in the relevant art at the time of the purported priority date. I
`
`understand that claim terms are given their ordinary and customary meaning as
`
`would be understood by a person of ordinary skill in the relevant art in the context
`
`of the entire disclosure. A claim term, however, will not receive its ordinary
`
`meaning if the patentee acted as his own lexicographer and clearly set forth a
`
`definition of the claim term in the specification. In this case, the claim term will
`
`receive the definition set forth in the patent.
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`U.S. Patent No. 6,588,260
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`B. A Person of Ordinary Skill in the Art
`25.
`I understand that a person of ordinary skill in the relevant art (herein
`
`“POSA”) is presumed to be aware of all pertinent art, thinks along conventional
`
`wisdom in the art, and is a person of ordinary creativity—not an automaton.
`
`26.
`
`I have been asked to consider the level of ordinary skill in the field
`
`that someone would have had at the time the alleged invention was made. In
`
`deciding the level of ordinary skill, I considered the following:
`
` the levels of education and experience of persons working in the field;
`
` the types of problems encountered in the field; and
`
` the sophistication of the technology.
`
`27.
`
`I understand that the relevant time for considering whether a claim
`
`would have been obvious to a POSA is at the time of the alleged invention, which I
`
`have been told to assume for this case is October 24, 2000.
`
`28. Regardless if I use “I” or “POSA” during my technical analysis
`
`below, all of my statements and opinions are to be understood to be based on how
`
`a POSA would have understood or read a document at the time of the alleged
`
`invention.
`
`C. My Understanding of Obviousness
`29.
`I understand that a patent claim is unpatentable if the claimed
`
`invention would have been obvious to a person of ordinary skill in the art at the
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`time of the alleged invention. I understand that this means that even if all of the
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`Case IPR2020-00451
`U.S. Patent No. 6,588,260
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`elements of the claim cannot be found in a single prior art reference that would
`
`anticipate the claim, the claim can still be unpatentable.
`
`30.
`
`It is my understanding that, to obtain a patent, a claimed invention
`
`must have been, as of its earliest possible priority date, non-obvious in view of the
`
`prior art in the field. I understand that a patent claim is obvious when the
`
`differences between the subject matter sought to be patented and the prior art are
`
`such that the subject matter as a whole would have been obvious to a person of
`
`ordinary skill in the art at the time the alleged invention was made.
`
`31. When considering the issues of obviousness, I have been told that I
`
`am to do the following:
`
` Determine the scope and content of the prior art;
`
` Ascertain the differences between the prior art and the claims at issue;
`
` Resolve the level of ordinary skill in the pertinent art; and
`
` Consider evidence of secondary indicia of non-obviousness (if
`
`available).
`
`32. With respect to determining the proper scope of prior art to examine, I
`
`understand that in order for a prior art reference to be properly used in an
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`obviousness ground under 35 U.S.C. § 103, the prior art reference must be
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`analogous art to the claimed invention. I have been told that a reference is
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`analogous art to the claimed invention only if: (1) the reference is from the same
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`field of endeavor as the claimed invention; or (2) the reference is reasonably
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`pertinent to the particular problem solved by the inventor.
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`33.
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`I understand that factors relevant to determining the proper field of
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`endeavor include the inventor’s explanations of the subject matter (including the
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`patent specification), as well as the claimed invention’s structure and function. And
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`I further understand that to be reasonably pertinent to the particular problem solved
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`by the inventor, a prior art reference must logically commend itself to the
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`inventor’s attention in considering his or her problem.
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`34.
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`I have been told that an analogous reference may be modified or
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`combined with other analogous references or with the POSA’s own knowledge if
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`the person would have found the modification or combination obvious. I have also
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`been told that a POSA is presumed to know all relevant, analogous prior art, and
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`the obviousness analysis may take into account the inferences and creative steps
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`that a POSA would employ.
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`35.
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`In determining whether a prior art reference would have been
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`combined with another prior art reference or other information known to a POSA, I
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`have been told that the following principles may be considered:
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` A combination of familiar elements according to known methods is
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`likely to be obvious if it yields predictable results;
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` The simple substitution of one known element for another is likely to
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`be obvious if it yields predictable results;
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` The use of a known technique to improve similar devices, products, or
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`methods in the same way is likely to be obvious if it yields predictable
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`results;
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` The application of a known technique to a prior art reference that is
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`ready for improvement is likely obvious if it yields predictable results;
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` Any need or problem known in the field and addressed by the
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`reference can provide a reason for combining the elements in the
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`manner claimed;
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` A skilled artisan often will be able to fit the teachings of multiple
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`references together like a puzzle; and
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` The proper analysis of obviousness requires a determination of
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`whether a POSA would have a “reasonable expectation of success”—
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`not “absolute predictability” of success—in achieving the claimed
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`invention by combining prior art references.
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`36.
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`I understand that whether a prior art reference renders a claim
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`unpatentable as obvious is determined from the perspective of a POSA. I have also
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`been told that, while there is no requirement for the prior art to contain an express
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`suggestion to combine known elements to achieve the claimed invention, a
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`suggestion to combine known elements to achieve the claimed invention may come
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`from the prior art as a whole or individually, as filtered through the knowledge of
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`one skilled in the art. In addition, I have been told the inferences and creative steps
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`a person of ordinary skill in the art would employ are also relevant to the
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`determination of obviousness.
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`37.
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`I also understand that when a work is available in one field, design
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`alternatives and other market forces can prompt variations of it, either in the same
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`field or in another. I have also been told that if a POSA can implement a
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`predictable variation and would see the benefit of doing so, that variation is likely
`
`to be obvious. I have been told that in many fields, there may be little discussion of
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`obvious combinations, and in these fields market demand—not scientific
`
`literature—may drive design trends. I have been told that when there is a design
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`need or market pressure and there are a finite number of predictable solutions, a
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`POSA has good reason to pursue those known options.
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`38.
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`I have been told there is no rigid rule prescribing that a reference or
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`combination of references must contain a “teaching, suggestion, or motivation” to
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`combine references. But I also have been told that the “teaching, suggestion, or
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`motivation” test can be a useful guide in establishing a rationale for combining
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`elements of the prior art. I have been told that this test poses the question as to
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`whether there is an express or implied teaching, suggestion, or motivation to
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`combine prior art elements in a way that realizes the claimed invention and that
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`this test seeks to counter impermissible hindsight analysis.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`39.
`In my opinion, a person of ordinary skill in the art (“POSA”) in the
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`context of the ’260 patent as of October 24, 2000 (the earliest possible priority date
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`of the ’260 patent) would have had a B.S. degree in Mechanical Engineering or
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`Electrical Engineering (or equivalent), as well as at least 2-4 years of academic or
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`industry experience in the relevant field of throttle control systems.
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`40.
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`I am well qualified to determine the level of ordinary skill in the art.
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`First, I am very familiar with the technology of the ’260 patent as of the 2000
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`timeframe. For example, during this 2000 timeframe, I was an associate professor
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`in the Mechanical Engineering Department at the University of Alabama and had
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`been a key member in starting the Center for Advanced Vehicle Technology
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`(CAVT). CAVT was and is a University of Alabama Research Center dedicated to
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`the advancement of vehicle technology. Based on unique interdisciplinary research
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`and education programs, CAVT strives to provide the vehicular industry with
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`novel ideas, scientific consultation, and new generations of engineers and scientists
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`formed in the latest technologies in this field. This includes the experimental and
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`computational optimization of throttle control systems for current, new, and
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`advanced engine concepts. Further, I was advising the tenth Society of Automotive
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`Engineers (SAE) Formula Collegiate Design Series Competition vehicle. Here, a
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`formula style racecar is completely designed, fabricated, and built in-house every
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`year from the computer design to the finished vehicle. A key and crucial concept is
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`the design, fabrication, and testing of a custom intake manifold/fuel
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`injection/throttle control system. This was all done in-house under my advisement.
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`I also taught the design concepts of these systems at both the undergraduate and
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`graduate level in a class I personally developed titled “Internal Combustion