UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT and
`BMW OF NORTH AMERICA, LLC,
`Petitioners,
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`v.
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`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owners.
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`Case IPR2020-00994
`Patent 7,104,347
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`PATENT OWNERS’ RESPONSE
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`Attorney Docket: 36351-0004IP1
`Case IPR2020-00994
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`TABLE OF CONTENTS
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`A. 
`B. 
`
`The Technology of the ’347 Patent ....................................................... 5 
`Overview of Severinsky’s Parallel Hybrid vs. Nii’s Series Hybrid .... 12 
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`B. 
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`C. 
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`A.  Grounds 3a and 3b – Severinsky in View of Nii Does Not Render
`Claims 2 and 24 Obvious .................................................................... 17 
`1.  Neither Severinsky nor Nii teaches or suggests “varying said
`setpoint accordingly” ................................................................ 18 
`2.  BMW’s Reasons to Combine Are Flawed ................................ 28 
`Grounds 1a and 2a – Severinsky in View of Graf Does Not Render
`Claims 2 and 24 Obvious .................................................................... 41 
`Grounds 1b and 2b – Severinsky in View of Ma Does Not Render
`Claims 11 and 33 Obvious .................................................................. 48 
`D.  Grounds 1c and 2c – Severinsky in View of Ehsani Does Not Render
`Claims 38 and 17 Obvious .................................................................. 62 
`Ground 4a – The Bumby References in View of Graf Does Not
`Render Claims 2 and 24 Obvious ........................................................ 68 
`1.  The Bumby References/Graf combination does not teach or
`suggest “monitor[ing] patterns of vehicle operation over time”
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`2.  The Bumby References/Graf combination does not teach or
`suggest “varying said setpoint accordingly” ............................. 69 
`Ground 4b – The Bumby References in view of Ma do not render
`Claims 11 and 33 obvious ................................................................... 69 
`G.  Ground 4c – The Bumby References in View of Ehsani Does Not
`Render Claims 38 and 17 Obvious ...................................................... 71 
`1.  The Bumby References in view of Ehsani do not teach or
`suggest “wherein the speeds of said engine and/or first motor
`and of said second motor are controlled such that when said
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`E. 
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`F. 
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`i
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`Attorney Docket: 36351-0004IP1
`Case IPR2020-00994
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`clutch is engaged the speeds of the first and second output
`shafts are substantially equal” (claim 38) ................................. 71 
`2.  The Bumby References in view of Ehsani do not render claim
`17 obvious ................................................................................. 75 
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`ii
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`Attorney Docket: 36351-0004IP1
`Case IPR2020-00994
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`EXHIBIT LIST
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`Exhibit No.
`PAICE 2001
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`PAICE 2002
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`PAICE 2003
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`PAICE 2004
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`PAICE 2005
`PAICE 2006
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`PAICE 2007
`PAICE 2008
`PAICE 2009
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`PAICE 2010
`PAICE 2011
`PAICE 2012
`PAICE 2013
`PAICE 2014
`PAICE 2015
`PAICE 2016
`PAICE 2017
`PAICE 2018
`PAICE 2019
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`PAICE 2020
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`Description
`Patent Owners’ Preliminary Response to Petition for IPR in
`IPR2014-00571 Dated July 11, 2014
`Patent Owner’s Response to Petition in IPR2014-00884 dated
`March 10, 2015
`Decision on Institution in IPR2015-00794 dated November 2,
`2015
`Decision on Institution in IPR2015-00795 dated November 2,
`2015
`Petition for IPR in IPR2014-00571 dated April 4, 2014
`Response to Interrogatory 27, BMW Responses to PAICE 1st
`Set of Interrogatories [1-28] dated May 6, 2020
`Paice/Toyota Complaint dated June 8, 2004
`Paice/Toyota Amended Complaint dated July 3, 2007
`Scheduling Order [Docket No. 36] from 1:19-cv-03348-SAG
`(USDC-DMD) dated February 25, 2020
`Docket Navigator Statistics – Top Patents by Number of IPRs
`Ex. E to BMW Invalidity Contentions dated June 8, 2020
`Ex. C to BMW Invalidity Contentions dated June 8, 2020
`IPR2017-00226 Petition dated November 14, 2016
`UK Patent Application GB 2,318,105 Cover Page
`Printout of http://www.paicehybrid.com/licensing-agreements/
`Declaration of Mahdi Shahbakhti, Ph.D.
`Curriculum Vitae of Mahdi Shahbakhti, Ph.D.
`Bosch Gasoline-engine Management
`Selected Pages From John Heywood, Internal Combustion
`Engines Fundamentals
`Selected Pages From Merhdad Ehsani et al, Modern Electric,
`Hybrid Electric, and Fuel Cell Vehicles
`PAICE 2021 Matthew Cuddy et al., Analysis of the Fuel Economy Benefit
`of Drivetrain Hybridization
`Selected Pages From Draft Technical Assessment Report:
`Midterm Evaluation of Light-Duty Vehicle Greenhouse Gas
`Emission Standards and Corporate Average Fuel Economy
`Standards for Model Years 2022-2025
`Selected Pages From Assessment of Fuel Economy of Fuel
`Economy Technologies for Light Duty Vehicles
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`PAICE 2022
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`PAICE 2023
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`iii
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`PAICE 2024
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`PAICE 2025
`PAICE 2026
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`PAICE 2027
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`PAICE 2028
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`Attorney Docket: 36351-0004IP1
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`Selected Pages From Richard Stone, Introduction to Internal
`Combustion Engines
`Heinz Heisler, Advanced Vehicle Technology, SAE
`Hitoshi Inoue et al., A Performance Improvement in Idle-Speed
`Control System with Feedforward Compensation for the
`Alternator Load Current, SAE
`Satoru Watanabe, Development of Model-Following Idle
`Speed Control System Incorporating Engine Torque Models,
`SAE
`Guzzella et al., Introduction to Modeling Control of Internal
`Combustion Engine Systems
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`Attorney Docket: 36351-0004IP1
`Case IPR2020-00994
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`I.
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`Introduction
`The Board should find that all challenged claims of U.S. Patent No.
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`7,104,347 (“’347 patent”) are patentable. The ’347 patent describes and claims
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`novel control strategies and architectures for hybrid electric vehicles, which are
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`absent in the prior art.
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`Varying the setpoint based on monitoring patterns of vehicle operation
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`(claims 2 and 24): challenged claims 2 and 24 monitor patterns of vehicle
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`operation in order to vary the setpoint, which is a parameter that the hybrid
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`controller uses as a point of demarcation for selecting operating modes, e.g.,
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`choosing whether to operate the electric motor or the gas engine to propel the
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`vehicle. The Board has already carefully considered the validity of the ’347 patent
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`on multiple occasions and has issued a final written decision recognizing the
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`patentability of this feature, finding challenged claim 24 not unpatentable and
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`denying institution on claim 2. (BMW1011, 24-25; PAICE2004, 21-22.)
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`BMW’s prior art fares no better than the art that the Board previously found
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`deficient. First, none of the prior art varies the claimed “setpoint” at all, let alone
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`doing so based on monitoring patterns of vehicle operation as claims 2 and 24
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`require. BMW’s Grounds 1a, 2a, 3a, and 3b rely on the false assumption that the
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`primary reference, Severinsky, varies the claimed “setpoint” such that it would be
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`obvious for Severinsky to further refine this “setpoint” value based on monitoring
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`1
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`patterns of vehicle operation. But as explained in detail below, Severinsky never
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`varies the claimed “setpoint,” and Severinsky’s “speed-responsive hysteresis” (on
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`which BMW relies) has nothing to do with this claimed feature.1
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`Second, none of the secondary references come close to filling this
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`significant gap in the prior art. Nii (Grounds 3a and 3b) does not have a
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`“setpoint” for switching between electric motor and engine propulsion modes
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`because Nii is directed to a “series” hybrid vehicle where the engine is
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`disconnected from the wheels, and Nii endeavors to keep the engine always on and
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`operating at a constant output to charge the battery. A POSA reviewing
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`Severinsky and Nii together would not have any concept of varying the claimed
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`“setpoint.” Moreover, a POSA would not look to Nii’s “pattern information” as
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`BMW suggests because Nii’s “pattern information” has no relation to (or use for)
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`varying a “setpoint” for selecting operating modes in a “parallel” hybrid vehicle
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`like Severinsky. BMW fails to explain how or why a POSA could make such a
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`combination in the first place.
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`BMW’s Grounds 1a and 2a, relying on Graf, also fail to remedy
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`Severinsky’s shortcomings. BMW only alleges that Graf varies “operating points”
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`1 Patent Owners rely on the declaration of Mahdi Shahbakhti, Ph.D. in support of
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`their Patent Owners’ Response. (PAICE2016, ¶¶1-198.)
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`2
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`generally. And as the Board recognized at institution, Graf’s disclosure about
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`determining the driving style of the driver does not disclose “monitoring patterns
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`of vehicle operation over time.” Paper 19, 26-28. Finally, Ground 4a suffers from
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`the same problem because the “Bumby References” do not vary the claimed
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`“setpoint,” and BMW relies on the same deficient Graf reference.
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`“On-demand” turbocharger: challenged claims 11 and 33 are directed to
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`a novel architecture that combines a gas engine and electric motor with a
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`controllably coupled, “on-demand” turbocharger. Instead of using a turbocharger
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`that operates mechanically as a function of engine output, the ’347 patent provides
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`a control system that controls the turbocharger to work alongside the electric
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`motor. The ’347 patent controls the electric motor and turbocharger to
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`complement one another, by applying the instant torque of the electric motor to
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`make up for the inherent lag of the turbocharger and using the turbocharger over
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`extended periods of time where use of the electric motor would deplete the battery.
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`BMW’s Grounds 1b and 2b fail because it is insufficient to demonstrate
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`that Severinsky and Ma could be combined, and BMW does not present a single
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`permissible reason why a POSA would modify Severinsky’s parallel hybrid with
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`Ma’s turbocharger. BMW’s first two reasons to combine are lacking because the
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`touted benefits of Ma’s turbocharger are at best redundant to Severinsky’s large
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`electric traction motor. And BMW’s third reason to combine comes straight from
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`the ’347 patent specification, not the prior art.
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`Engine/motor output shaft speed alignment: BMW fails to identify any
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`prior art that teaches controlling the engine and motor such that their shaft speeds
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`are “substantially equal” as claim 38 requires. For Ground 1c, Severinsky uses a
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`unique torque transfer unit and controls these speeds to be different (not
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`substantially equal). And for Ground 4c, the Bumby References’ disclosure of a
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`45 rev/min difference between engine and motor shafts is far from “substantially
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`equal,” and BMW presented no evidence showing otherwise.
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`Electric motor placement on different axles: Challenged claim 17 recites
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`unique placement of two electric motors and the engine on different axles of the
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`vehicle. BMW’s Grounds 2c and 4c cannot establish obviousness because BMW
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`relies purely on “design choice” without technical incentive or motivation, and
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`fails to explain how or why a POSA would modify Severinsky and the Bumby
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`References to arrive at the claimed invention.2
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`2 In Arthrex, Inc. v. Smith & Nephew, Inc., Case No. 2018-2140 (Fed. Cir. Oct. 31,
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`2019), the Federal Circuit held that the statutory scheme for appointing APJs
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`violated the Appointments Clause of the U.S. Constitution. The Court proposed to
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`remedy the constitutional defect by severing the application of 35 U.S.C. § 3(c)—
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`Attorney Docket: 36351-0004IP1
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`II. Technology Overview
`A. The Technology of the ’347 Patent
`Figure 3 of the ’347 patent shows a hybrid electric vehicle having an internal
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`combustion engine (40), traction motor (25), starter motor (21), and battery bank
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`(22). (BMW1001, Fig. 3; 26:13-27.) The gas engine and electric traction motor
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`are both connected to the road wheels (34) through a differential (32) and are
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`operable to propel the vehicle. (Id.; PAICE2016, ¶¶30-36.)
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`which subjects USPTO employees to the removal provisions of 5 U.S.C. §
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`7513(a)—as to APJs. Arthrex, slip op. at 25. Patent Owner understands that in
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`other appeals still pending before the Federal Circuit and Supreme Court, parties
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`have challenged whether this remedy fails to cure the defect. Accordingly, for
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`purposes of preserving these issues, Patent Owner asserts that institution decisions,
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`preliminary guidance on amendments, and future final written decisions rendered
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`by the Board will be unconstitutional for violation of the Appointments Clause.
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`(BMW1001, ’347 patent at Fig. 3.)
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`The challenged ’347 patent claims are directed to a number of inventions
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`described below.
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`Pattern-Based Mode Switching. The ’347 patent discloses a novel control
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`strategy that varies the transition between electric motor operation and engine
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`operation based on how the driver actually uses the car on a day-to-day basis. In
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`order to understand how the ’347 patent accomplishes this task, a brief overview of
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`the ’347 patent’s core control strategy is helpful.
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`The ’347 patent evaluates the instantaneous torque required to propel the
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`vehicle known as “road load” in relation to a setpoint to determine the operating
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`mode. The setpoint is used to decide whether to use the electric motor or gas
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`engine to propel the vehicle. The ’347 patent shows the road load/setpoint-based
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`algorithm in Figure 9, where it operates in Mode I (electric motor propulsion) if the
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`road load (RL) is under a setpoint of 30% of maximum torque output (MTO)3
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`(annotated below using green lines) and in Mode IV (gas engine propulsion) if RL
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`is between the setpoint of 30% and 100% of MTO (annotated below using blue
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`lines). (BMW1001, 41:66-42; PAICE2016, ¶¶37-41.) If the controller determines
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`that road load is greater than 100% MTO, it selects Mode V, where the electric
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`motor provides additional torque to propel the vehicle beyond that provided by the
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`engine. (PAICE2016, ¶¶40-41.)
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`3 MTO represents the maximum amount of torque that the engine can produce.
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`(BMW1001, 20:64-21:7.) The claims and specification describe the road load and
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`setpoint as percentages of MTO. (Id., 40:20-31.)
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`(BMW1001, Fig. 9 (annotated).)
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`The ’347 patent further discloses how to adjust the setpoint—the
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`demarcation between electric motor and engine operation—by looking at how the
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`driver actually uses the hybrid vehicle on a day-to-day basis to derive patterns of
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`vehicle operation. (BMW1001, 40:56 – 41:9.) For example, the ’347 patent
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`monitors the driver’s daily commute from home to work. (Id.; see also id., 41:53-
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`54, 44:32-39.) The ’347 patent uses this information to adjust the setpoint that
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`governs the transition between Mode I (electric motor propulsion) to Mode IV (gas
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`engine propulsion). (Id.; PAICE2016, ¶¶37-41.)
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`The ’347 patent explains that the controller would increase the setpoint from
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`30% MTO to 60% MTO in response to identifying a regular commute where the
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`“the road load might remain under 20% of MTO for the first few minutes of each
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`day, then vary between 0 and 50% of MTO for another few minutes as the operator
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`passes through a few traffic lights, and then suddenly increase to 150% of MTO as
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`the operator accelerates onto a highway.” (BMW1001, 40:62-67.) In doing so, the
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`controller “would prevent repetitive engine starts,” e.g., when the road load
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`fluctuates above and below 30% MTO. (Id., 41:2-9; PAICE2016, ¶42.) None of
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`the prior art discloses adjusting the setpoint by monitoring such patterns of vehicle
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`operation to determine when to turn the engine on. (PAICE2016, ¶¶104-217.)
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`Hybrid Architecture with Coordinated Electric Motor and Controllable
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`On-Demand-Turbocharger. Additionally, the ’347 patent discloses
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`incorporating a controllable turbocharger into a hybrid electric vehicle to work
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`alongside the electric motor. Conventional turbochargers (generally consisting of a
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`turbine and compressor) increase the air pressure to the engine, which allows the
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`engine to burn more fuel and consequently produce more torque. As recognized
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`by the ’347 patent, however, turbochargers suffer from what is called “turbo lag,”
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`which the patent describes as a “slow response to sudden increase in torque
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`required.” (BMW1001, 46:5-11.) This is because the exhaust from the engine
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`provides the rotational force to spin the turbine of the turbocharger, which is often
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`insufficient to spin the turbine at low engine output. (PAICE2016, ¶¶43-46;
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`PAICE2018, Fig. 1.) Supplying additional air to the engine is just the first step.
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`Conventional engines will experience delay as fuel is then introduced to match the
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`increased airflow. As a result, a conventional engine will take a noticeable amount
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`of time to supply additional torque even after the turbocharger delivers additional
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`air. (PAICE2016, ¶¶43-46.) While the turbocharger can increase the air pressure
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`to supply additional torque, it cannot do so quickly enough to meet the driver’s
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`sudden demands for more torque. (Id.)
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`The ’347 patent recognized that the electric motor (which provides
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`instantaneous torque) in a hybrid architecture solves the “turbo lag” problem.
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`(BMW1001, 49:3-8 (“because the traction motor provides additional torque when
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`needed, the ‘turbo lag’ experienced in conventional turbocharged vehicles as the
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`turbocharger ‘spools up’ when the operator calls for more power is eliminated.”).)
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`In addition, use of the turbocharger for “extended period[s] … of time” instead of
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`the electric motor can help “preserve the battery bank.” (Id., 45:10-14.) Thus, by
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`combining a combustion engine, turbocharger, and electric motor, in a control
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`system designed to eliminate turbo lag and maximize battery life, the ’347 patent
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`optimizes use of the turbocharger and overall system elements in a way that is not
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`disclosed in the prior art. (PAICE2016, ¶¶47-49.)
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`As shown in Fig. 11 below, turbocharger (100) is controllably coupled to the
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`gas engine (40) via an electronically controlled wastegate (114) and valve (120)
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`actuated by the microprocessor (µP). BMW1001, 45:15-60; PAICE2016, ¶50.)
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`(BMW1001, Fig. 11 (annotated).)
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`Unlike conventional turbochargers that are reliant upon the output of the
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`engine and exhaust gas, the ’347 patent introduced an “on-demand-turbocharger,”
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`using the microprocessor to control the wastegate and valve to control the
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`turbocharger. (Id., 44:60-67; PAICE2016, ¶¶51-52.) In so doing, the ’347 patent
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`selectively controls when the turbocharger contributes torque and when the electric
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`motor should contribute torque (e.g., when turbocharger operation would result in
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`a lag):
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`as conventionally employed, a turbocharger is used at all times. By
`comparison, according to the present invention, the turbocharger is
`controlled by the microprocessor 48 to be used only under specified
`driving conditions, allowing the engine to be operated efficiently in
`other modes.
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`(BMW1001, 46:23-38.) As set forth below, none of the prior art (alone or
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`together) discloses a hybrid architecture with a controllably coupled turbocharger
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`that works alongside the electric motor in complementary fashion. (PAICE2016,
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`¶¶73-83.)
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`B. Overview of Severinsky’s Parallel Hybrid vs. Nii’s Series Hybrid
`For purposes of Grounds 3a and 3b, understanding the hybrid architectures
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`of the prior art Severinsky and Nii references is critical. Severinsky’s parallel
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`hybrid and Nii’s series hybrid have fundamentally different architectures, which
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`affects the role of the engine and the control strategy for maximizing engine
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`efficiency. In a parallel hybrid like Severinsky (below left), both the engine and
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`electric motor can mechanically drive the wheels, either separately or together
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`(“engine-as-driver” approach). (PAICE2016, ¶¶128-131.) In a series hybrid like
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`Nii (below right), only the electric motor drives the wheels—the gas engine
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`charges the battery, but never propels the vehicle (“engine-as-charger” approach).
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`(Id.)
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`
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`This architectural difference is fundamental and renders the control systems
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`for series and parallel hybrids as different as night and day. In a series hybrid, the
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`electric motor is always used to drive the wheels and so control of the motor
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`reduces to simply monitoring the accelerator pedal position. (Id., ¶132) The
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`engine in a series hybrid is used only to charge the battery when the battery is
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`depleted and so control of the engine reduces to simply monitoring the state of
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`charge of the battery. (Id., ¶¶133-37) Indeed, BMW’s expert, Dr. Davis, admits
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`that “[t]he engine … is not mechanically connected to the wheels and the engine
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`is therefore controlled independently of driving conditions.” (BMW1008, ¶¶69-
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`70 (emphasis added).) The engine is a portable charging station for the battery,
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`literally just an on-board generator that is operated to charge the battery rather than
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`to turn the wheels of the car. (BMW1008, ¶72.)
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`The control system in a parallel hybrid, however, must decide which drive
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`element (motor or engine) to use at any particular time, how to switch between
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`drive elements, and how to combine torque from these elements in an efficient and
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`orderly manner. (PAICE2016, ¶¶130-32.) The fact that both systems use the word
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`“hybrid” makes them no more similar than a hand truck and a pickup truck or a
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`watercraft and an aircraft.
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`Severinsky’s Figure 3 shows the engine (40) on the left and electric motor
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`(20) on the right, both mechanically coupled to the wheels, in parallel with each
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`other, through a torque-transfer unit (28).
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`(BMW1013, Fig. 3.)
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`Because Severinsky’s parallel architecture can operate both the electric
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`motor and engine to propel the vehicle, Severinsky must decide when to i) turn the
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`engine on to propel the vehicle either alone or with the electric motor and ii) when
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`to use only the electric motor to propel the vehicle (in which case the engine would
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`be off). (PAICE2016, ¶¶138-42.) Severinsky operates in three operating modes:
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`(1) low speed mode (i.e., electric motor only mode), (2) highway cruising mode
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`(i.e., gas engine only mode); and (3) high speed acceleration/hill climbing mode
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`(i.e., gas engine + electric motor mode). (BMW1013, 10:52-57; 13:66 – 14:3,
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`14:22-25; PAICE2016, ¶¶138-42.)4 Additionally, when the engine is on and
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`providing torque to propel the vehicle in a parallel hybrid like Severinsky, it is
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`physically coupled to the road wheels and must react to the demand of the driver.
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`(BMW1013, 14:9-15 (“the output torque of internal combustion engine 40 may be
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`directly variable responsive to the operator's control inputs.”); PAICE2016, ¶139.)
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`In Nii’s series hybrid, on the other hand, the electric motor (10) is the sole
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`source of propulsive torque, and the engine (22) is decoupled from the wheels as
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`shown below in Figure 1. (BMW1022, 3:66 – 4:4; PAICE2016, ¶¶143-44.) The
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`4 According to BMW, Severinsky selects operating modes based on road load, and
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`selects between electric motor only mode and engine only mode by comparing
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`road load to the setpoint. Petition, 18-19.
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`engine (22) need only operate the generator (20) to charger the battery (16).
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`(BMW1022, 4:4 – 14; PAICE2016, ¶¶143-44.) Because the engine’s only job is to
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`keep the battery charged, it can operate at steady state (independent of the driver’s
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`demand) and remain on at all times. (BMW1022, 2:14-18; PAICE2016, ¶¶144.)
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`(BMW1022, Fig. 1.)
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`Because the electric motor always propels the vehicle and the engine always
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`charges the battery, Nii’s series hybrid does not have different modes of operation
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`related to propelling the vehicle. (PAICE2016, ¶144.) Nii is only interested in
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`controlling the output of the generator (supplied by the engine), which charges the
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`battery. (BMW1022, 2:1-3 (“The present invention is a generator output
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`controller….); PAICE2016, ¶144.) Indeed, Nii’s title is “Generator Output
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`Controller for Electric Vehicle with Mounted Generator.” Nii controls the
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`generator by choosing a single generator output in order to ensure that hybrid
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`operation changes as little as possible during vehicle operation. (BMW1022, 2:14-
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`18 (“the output of a generator is set to a generator output …. Therefore, it is
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`possible to generate optimum electrical power at a constant value by a generator).)
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`IV. Claim Construction
`Patent Owner agrees to the claim constructions adopted previously by the
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`Federal Circuit and/or the Board, which BMW applies in its Petition.
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`V. BMW’s Grounds Fail To Demonstrate Obviousness
`A. Grounds 3a and 3b – Severinsky in View of Nii Does Not Render
`Claims 2 and 24 Obvious5
`Severinsky in view of Nii does not render obvious claims 2 and 24.
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`Critically, neither Severinky nor Nii discloses “varying said setpoint,” much less
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`varying the setpoint based on “monitoring patterns of vehicle operation over time.”
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`And BMW’s gap filling cannot remedy the deficiencies of the prior art because
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`5 Ground 3b adds Ehsani, but BMW does not contend that Ehsani satisfies any of
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`the limitations addressed herein.
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`BMW’s reasons to combine are based on factually flawed ipse dixit expert
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`testimony and BMW fails to explain how and why the references can be combined.
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`1.
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`Neither Severinsky nor Nii teaches or suggests “varying
`said setpoint accordingly”
`Severinsky does not vary the claimed setpoint, and BMW’s reliance on
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`“speed-responsive hysteresis” to demonstrate this feature is misguided. Moreover,
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`Nii’s disclosure is related to using “pattern information” (as termed by BMW) for
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`setting the constant output of the engine for charging the battery in a “series”
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`hybrid vehicle. But Nii’s engine plays no role in propelling the vehicle and Nii
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`endeavors to keep the engine always on and operating in steady state. Thus, Nii
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`has nothing to do with the claimed “setpoint” which is a control parameter for
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`dictating between electric motor and engine propulsion modes (in relation to the
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`instantaneous torque requirement) in a vehicle where the electric engine and motor
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`operate in parallel.
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`a) Severinsky does not disclose “varying said setpoint
`accordingly”
`Severinsky does not disclose varying a setpoint of any kind, much less the
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`claimed “setpoint,” which is “a predefined torque value that may or may not be
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`reset.”
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`First, Severinsky’s “speed-responsive hysteresis” does not result in varying a
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`speed- or torque-based setpoint as BMW contends. Petition, 20. Severinsky’s
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`hysteresis is simply a time-based hysteresis that adds a time delay (“2-3 minutes”)
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`to a speed threshold (“20-25 mph”) for turning the engine off. (PAICE2016,
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`¶¶105-06.)
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`The vehicle will operate in a highway mode with the engine running
`constantly after the vehicle reaches a speed of 30-35 mph. The engine
`will continue to run unless the engine speed is reduced to 20-25 mph
`for a period of time, typically 2-3 minutes. This speed-responsive
`hysteresis in mode switching will eliminate nuisance engine starts.
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`BMW1013, 18:34-43
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`(emphasis added).
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` Severinsky’s “speed-responsive
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`hysteresis” maintains a fixed speed threshold and requires that the vehicle speed
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`remain below the speed threshold for a predetermined amount of time. (PAICE2016,
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`¶¶108-09.) This delay merely alters how quickly the controller will respond to the
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`control variable (vehicle speed) dropping below the speed threshold. (Id.) A POSA,
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`however, would understand that the threshold would be written into source code and
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`not change throughout the lifetime of the vehicle. (Id.) Indeed, Severinsky does not
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`disclose varying any type of control parameters like a speed threshold, much less the
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`claimed “setpoint” during vehicle operation. (Id.)
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`In the Board’s ID, the Board points to the two speed ranges in Severinsky to
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`suggest that Severinsky discloses varying the setpoint. Paper No. 19, 32.
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`Severinsky’s upper speed range (i.e., “30-35 mph”) and the lower speed range (i.e.,
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`“20-25 mph”) are merely two separate speed thresholds. Severinsky’s controller
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`uses the “30-35 mph” speed threshold to turn the engine on and the “20-25 mph” to
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`turn the engine off. (PAICE2016, ¶¶110-11.) There is nothing in Severinsky that
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`discloses or suggests to a POSA that either of these speed thresholds are changed
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`during vehicle operation. And there is certainly no disclosure that either the upper
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`speed range or the lower speed range (or their attendant time delays) are changed
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`in view of any observed pattern of vehicle operation. (Id.) Instead, at best, and as
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`discussed above, each of the separate values for the upper speed range and the
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`lower speed range would be written into the source code and not changed in real-
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`time due to observed patterns of driving. (Id.)
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`Second, there is no record evidence that the speed-based time delay or the use
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`of different speed thresholds for turning the engine on vs. turning the engine off
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`would result in Severinsky “varying said setpoint,” which is a torque value. (Id.,
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`¶¶112-15.) BMW points to Severinsky’s 60% MTO value to satisfy the “setpoint”
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`limitations of claims 1 and 23. Petition at 18 (“When the microprocessor determines
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`that the torque required to propel the vehicle (‘the torque RL’) is less than 60% of
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`the engine’s maximum torque (“less than said lower SP”)…”) (citing BMW1013,
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`20:63-66); id., 19 (“The engine is only operated to propel the vehicle … when …
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`(‘RL’) is between ‘60-90% of [the engine’s] maximum torque’”) (quoting
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`20
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`BMW1013, 20:63-66).6 But applying a time delay to the speed threshold will not
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`have any effect on the alleged torque-based setpoint, the 60% MTO value.
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`(PAICE2016, ¶¶109, 112-15.)
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`
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`As a preliminary matter, there is no disclosure in Severinsky that the “speed-
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`responsive hysteresis” time delay has any impact on the separate torque-setpoint.
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`Severinsky does not disclose if or how Severinsky’s speed-based control algorithm
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`would interact with Severinsky’s disclosure at column 20:63-67 that the Board has
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`previously found constitutes a torque-based control algorithm. (Id., ¶¶113-15.) At
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`best, a POSA would understand that these separate control algorithms would operate
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`in parallel: the speed-based algorithm (in which vehicle speed is the control
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`variable) and the torque-based algorithm (in which road load is the control variable)
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`both send signals to the controller to turn the engine on/off. (Id., ¶¶113-15.) The
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`controller, in turn, must arbitrate between the two algorithms, especially when the
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`algorithms provide conflicting instructions to the controller. 7 (Id.) Thus,
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`6 The Petition incorporates by reference the analysis from Grounds 1a and 2a.
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`Petition, 44.
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`7 Severinsky discloses this type of arbitration between its battery state of charge
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`algorithm and its speed-based algorithm. For