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 & BMW
`OF NORTH AMERICA, LLC,
`Petitioners
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
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`
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`Inter Partes Review No.: IPR2020-00994
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`U.S. Patent No. 7,104,347 K2
`
`___________________
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`
`PETITIONERS’ REPLY TO PATENT OWNERS’ RESPONSE
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`
`
`

`

`
`
`Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`Table of Contents
`
`I. 
`II. 
`
`Page
`Introduction ...................................................................................................... 1 
`The Nii-Based Grounds (3a, 3b) Render Claims 24 and 2 Obvious ............... 1 
`A.  Motivation to Combine ......................................................................... 2 
`1. 
`A POSA Would Have Varied Severinsky’s Setpoint
`Based on Nii’s Pattern Information ............................................ 2 
`PO’s Arguments Are Irrelevant .................................................. 4 
`2. 
`Severinsky Discloses “vary[ing] said setpoint” ................................... 8 
`B. 
`III.  The Graf-Based Grounds (1a, 2a, 4a) Render Claims 24 and 2
`Obvious .......................................................................................................... 12 
`A.  Monitoring a Driver’s Repeated Driving Operations Over Time ....... 12 
`B. 
`A POSA Would Have Been Motivated to Implement Graf’s
`“Monitoring” Function To Vary Either Severinsky’s or
`Bumby’s “Setpoint” Accordingly........................................................ 14 
`IV.  The Ma-Based Grounds (1b, 2b, 4b) Render Claims 33 and 11
`Obvious .......................................................................................................... 15 
`Claim 17 ......................................................................................................... 21 
`A. 
`Severinsky/Ehsani Renders Claim 17 Obvious (Ground 2c) .............. 21 
`B. 
`Bumby/Ehsani Renders Claim 17 Obvious (Ground 4c) .................... 26 
`VI.  Claim 38 ......................................................................................................... 27 
`A. 
`Bumby/Ehsani Renders Claim 38 Obvious (Ground 4c) .................... 27 
`B. 
`Severinsky/Ehsani Renders Claim 38 Obvious (Ground 1c) .............. 29 
`VII.  Conclusion ..................................................................................................... 30 
`Certification of Word Count .................................................................................... 32 
`Certificate of Service ............................................................................................... 33 
`
`
`
`V. 
`
`
`
`i
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`

`

`
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`Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`LIST OF EXHIBITS
`
`BMW1001
`
`
`Exhibit No. Description of Exhibit
`U.S. Patent No. 7,104,347, including Inter Partes Review
`Certificates issued as U.S. Patent No. 7,104,347 K1 and U.S. Patent
`No. 7,104,347 K2
`BMW1002 USPTO Assignments on the Web for U.S. Patent No. 7,104,347 K2
`BMW1003 Ford Motor Co. v. Paice LLC, IPR2014-00571, Paper 44, Final
`Written Decision (P.T.A.B. Sep. 28, 2015)
`BMW1004 Ford Motor Co. v. Paice LLC, IPR2014-00579, Paper 45, Final
`Written Decision (P.T.A.B. Sep. 28, 2015)
`BMW1005 Paice LLC v. Ford Motor Co., Appeal Nos. 2016-1412, -1415, -
`1745, Doc. 46-2, Opinion (Fed. Cir. Mar. 7, 2017)
`BMW1006 Ford Motor Co. v. Paice LLC, IPR2015-00794, Paper 31, Final
`Written Decision (P.T.A.B. Nov. 1, 2016)
`BMW1007 Paice LLC v. Ford Motor Co., Appeal Nos. 2017-1442, -1443, -
`1472, Doc. 59-2, Opinion (Fed. Cir. Feb. 1, 2018)
`BMW1008 Declaration of Dr. Gregory W. Davis in Support of Inter Partes
`Review of U.S. Patent No. 7,104,347 K2
`BMW1009 Curriculum Vitae of Dr. Gregory W. Davis
`BMW1010 Ford Motor Co. v. Paice LLC, IPR2014-00795, Paper 31, Final
`Written Decision (P.T.A.B. Nov. 1, 2016)
`BMW1011 Ford Motor Co. v. Paice LLC, IPR2014-00884, Paper 38, Final
`Written Decision (P.T.A.B. Dec. 10, 2015)
`
`BMW1012 File History for U.S. Patent No. 7,104,347 K2
`BMW1013 U.S. Patent No. 5,343,970 (“Severinsky” or “Severinsky ’970”)
`Bumby, J.R. et al., “Computer modelling of the automotive energy
`requirements for internal combustion engine and battery electric-
`powered vehicles,” IEE PROCEEDINGS, Vol. 132, Pt. A, No. 5
`
`BMW1014
`
`ii
`
`

`

`Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`
`Exhibit No. Description of Exhibit
`(Sep. 1985), 265-79 (“Bumby-I” or “Bumby I”)
`Bumby, J.R. et al., “Optimisation and control of a hybrid electric
`car,” IEE PROCEEDINGS, Vol. 134, Pt. D, No. 6 (Nov. 1987), 373-
`87 (“Bumby-II” or “Bumby II”)
`
`BMW1015
`
`BMW1016
`
`BMW1017
`
`BMW1018
`
`Bumby, J.R. et al., “A hybrid internal combustion engine/battery
`electric passenger car for petroleum displacement,” Proceedings of
`the Institution of Mechanical Engineers, Part D: Journal of
`Automobile Engineering, Vol. 202, No. D1 (Jan. 1988), 51-65
`(“Bumby-III” or “Bumby III”)
`Bumby, J.R. et al., “A test-bed facility for hybrid i c-engine/battery-
`electric road vehicle drive trains,” Transactions of the Institute of
`Measurement and Control, Vol. 10, No. 2 (Apr.-June 1988), 87-97
`(“Bumby-IV” or “Bumby IV”)
`Bumby, J.R. et al., “Integrated microprocessor control of a hybrid
`i.c. engine/battery-electric automotive power train,” Transactions of
`the Institute of Measurement and Control, Vol. 12, No. 3 (Jan.
`1990), 128-46 (“Bumby-V” or “Bumby V”)
`BMW1019 U.S. Patent No. 5,586,613 (“Ehsani”)
`BMW1020 U.S. Patent No. 6,188,945 (“Graf”)
`International Application Publication No. WO 92/15778 (“Ma”)
`
`BMW1021
`BMW1022 U.S. Patent No. 5,650,931 (“Nii”)
`Innovations in Design: 1993 Ford Hybrid Electric Vehicle
`Challenge, Society of Automotive Engineers, SAE/SP-94/980,
`Davis, G.W. et al., “United States Naval Academy, AMPhibian”
`(Feb. 1994), 277-87
`1996 Future Car Challenge, Society of Automotive Engineers,
`SAE/SP-97/1234, Swan, J. et al., “Design and Development of
`Hyades, a Parallel Hybrid Vehicle for the 1996 FutureCar
`Challenge” (Feb. 1997), 23-30
`BMW1025 1997 Future Car Challenge, Society of Automotive Engineers,
`
`BMW1023
`
`BMW1024
`
`iii
`
`

`

`Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`BMW1027
`
`BMW1029
`
`
`Exhibit No. Description of Exhibit
`SAE/SP-98/1359, Swan, J. et al., “Design and Development of
`Hyades, a Parallel Hybrid Electric Vehicle for the 1997 FutureCar
`Challenge” (Feb. 1998), 29-39
`BMW1026 U.S. Provisional Appl. No. 60/100,095 (Filed Sep. 11, 1998)
`Wakefield, E.H., Ph.D., History of the Electric Automobile – Hybrid
`Electric Vehicles, Society of Automotive Engineers, SAE/SP-
`98/3420 (1998), 17-34 (Chapter 2: The History of the Petro-Electric
`Vehicle)
`BMW1028 Unnewehr, L.E. et al., “Hybrid Vehicle for Fuel Economy,” Society
`of Automotive Engineers, SAE/SP-76/0121 (1976)
`Burke, A.F., “Hybrid/Electric Vehicle Design Options and
`Evaluations,” Society of Automotive Engineers, SAE/SP-92/0447,
`International Congress & Exposition, Detroit, Michigan (Feb. 24-28,
`1992)
`Duoba, M, “Challenges for the Vehicle Tester in Characterizing
`Hybrid Electric Vehicles,” 7th CRC On Road Vehicle Emissions
`Workshop, San Diego, California (Apr. 9-11, 1997)
`Electric and Hybrid Vehicles Program, 18th Annual Report to
`Congress for Fiscal Year 1994, U.S. Department of Energy (Apr.
`1995)
`BMW1032 Bates, B. et al., “Technology for Electric and Hybrid Vehicles,”
`Society of Automotive Engineers, SAE/SP-98/1331 (Feb. 1998)
`Stodolsky, F. et al., “Strategies in Electric and Hybrid Vehicle
`Design,” Society of Automotive Engineers, SAE/SP-96/1156, Kozo,
`Y. et al., “Development of New Hybrid System – Dual System,”
`SAE/SP-96/0231 (Feb. 1996), 25-33
`BMW1034 Leschly, K.O., Hybrid Vehicle Potential Assessment, Volume 7:
`Hybrid Vehicle Review, U.S. Department of Energy (Sep. 30, 1979)
`Final Report Hybrid Heat Engine / Electric Systems Study, Vol. 1:1-
`13, The Aerospace Corporation for the U.S. Environmental
`Protection Agency (June 1, 1971)
`
`BMW1033
`
`BMW1030
`
`BMW1031
`
`BMW1035
`
`iv
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`

`

`Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`BMW1040
`
`BMW1041
`
`BMW1036
`
`
`Exhibit No. Description of Exhibit
`Masding, P.W., et al., “A microprocessor controlled gearbox for use
`in electric and hybrid-electric vehicles,” Transactions of the Institute
`of Measurement and Control, Vol. 10, No. 4 (July –Sep. 1988), 177-
`86
`BMW1037 Yamaguchi, J., “Toyota Prius,” Automotive Engineering
`International (Jan. 1998), 29-32
`BMW1038 U.S. Patent No. 6,209,672 (“Severinsky ’672”)
`BMW1039 Davis, G.W., Ph.D. et al., Introduction to Automotive Powertrains,
`Chapter 2: Road Loads (2000), 27-68
`Ehsani, M. et al., “Propulsion System Design of Electric Vehicles,”
`Texas A&M University, Department of Electrical Engineering
`(1996), 7-13
`Ehsani, M. et al., “Propulsion System Design of Electric and Hybrid
`Vehicles,” IEEE Transactions on Industrial Electronics, Vol. 44,
`No. 1 (Feb. 1997), 19-27
`BMW1042 Bauer, H., ed., Automotive Handbook, Robert Bosch Gmbh (4th Ed.
`Oct. 1996), Excerpts
`Design Innovations in Electric and Hybrid Electric Vehicles,
`Society of Automotive Engineers, SAE/SP-96/1089, Anderson, C.,
`et al, “The Effects of APU Characteristics on the Design of Hybrid
`Control Strategies for Hybrid Electric Vehicles,” SAE/SP-95/0493
`(Feb. 1995), 65-71
`BMW1044 U.S. Patent No. 5,656,921 (“Farrall”)
`BMW1045 Stone, R., Introduction to Internal Combustion Engines, Chapter 9:
`Turbocharging (2nd Ed. 1995), 324-53
`BMW1046 Bauer, H., ed., Automotive Handbook, Robert Bosch Gmbh (4th Ed.
`Oct. 1996), Excerpts
`BMW1047 Heisler, H., Advanced Engine Technology, Chapters 6.7-6.10
`(1995), 315-47
`
`BMW1043
`
`v
`
`

`

`BMW1048
`
`BMW1049
`
`Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`
`Exhibit No. Description of Exhibit
`Masding, P.H., “Some drive train control problems in hybrid i.c
`engine/battery electric vehicles,” Durham theses, Durham
`University (1988) (“Masding Thesis”)
`Davis, G.W. et al., “The Development and Performance of the
`AMPhibian Hybrid Electric Vehicle,” Society of Automotive
`Engineers, SAE/SP-94/0337, International Congress and Exposition,
`Detroit, Michigan (Feb. 28-Mar. 3, 1994) (“AMPhibian Paper”)
`BMW1050 U.S. Patent No. 5,285,862 (“Furutani”)
`BMW1051 U.S. Patent No. 5,823,280 (“Lateur”)
`BMW1052 Reserved
`BMW1053 Reserved
`BMW1054 Reserved
`BMW1055 Reserved
`BMW1056 Reserved
`BMW1057 Reserved
`BMW1058 Reserved
`BMW1059 Declaration of Jacob Z. Zambrzycki in Support of Motion for Pro
`Hac Vice Admission Under 37 C.F.R. § 42.10
`
`BMW1060-
`BMW1087 Reserved
`BMW1088 Reply Declaration of Dr. Gregory W. Davis in Support of Inter
`Partes Review of U.S. Patent No. 7,104,347 K2
`BMW1089 Deposition Transcript of Dr. Mahdi Shahbakhti (May 6, 2021)
`BMW1090 European Patent No. EP 0,576,703 (“Graf ’703”)
`BMW1091 Kalberlah, A., “Electric Hybrid Drive Systems for Passenger Cars
`
`vi
`
`

`

`Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`
`Exhibit No. Description of Exhibit
`and Taxis,” Society of Automotive Engineers, SAE/SP-91/0247,
`International Congress and Exposition, Detroit, Michigan (Feb. 25-
`Mar. 1, 1991)
`BMW1092 Ehsani, M., et al., Modern Electric, Hybrid Electric, and Fuel Cell
`Vehicles: Fundamentals, Theory, and Design (CRC Press 2005),
`Chapter 8 (“Parallel Hybrid Electric Drive Train Design”)
`BMW1093 Bauer, H., ed., Automotive Handbook, Robert Bosch Gmbh (4th Ed.
`Oct. 1996), “Internal-combustion engines”
`BMW1094 Duffy, J.E., Modern Automotive Technology (1994), Chapters 4
`(“Power Tools and Equipment”), 25 (“Exhaust Systems,
`Turbocharging”), 52 (“Manual Transmission Fundamentals”), and
`54 (“Automatic Transmission Fundamentals”)
`BMW1095 Bauer, H., ed., Automotive Handbook, Robert Bosch Gmbh (4th Ed.
`Oct. 1996), “Drivetrain”
`BMW1096 Goodsell, D., Dictionary of Automotive Engineering (2nd Ed. 1995),
`238-40
`BMW1097 Nordgard, K. and Hoonhorst, H., “Developments in Automated
`Clutch Management Systems,” SAE/SP-95/0896, International
`Congress and Exposition, Detroit, Michigan (Feb. 27-Mar. 2, 1995)
`BMW1098 Declaration of Mahdi Shahbakhti, Ph.D. Regarding U.S. Patent No.
`7,723,932 in Case IPR2019-00011
`BMW1099 U.S. Patent Application Publication No. 2004/0069548 (“Kira”)
`(Exhibit 1005 in Case IPR2019-00011)
`BMW1100 U.S. Patent Application Publication No. 2003/0150352 (“Kumar”)
`(Exhibit 1006 in Case IPR2019-00011)
`BMW1101 Videotape of May 6, 2021 Deposition of Dr. Mahdi Shahbakhti,
`which is available from Petitioners upon request
`
`
`
`
`vii
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`

`

`I.
`
` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`Introduction
`Patent Owners’ Response and Dr. Shahbakhti’s (“Shahbakhti”) declaration
`
`underscore that the challenged claims are unpatentable. They both rely on
`
`irrelevant arguments about bodily incorporation (which is contrary to KSR) and
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`straw-men combinations that Petitioners never proposed.
`
`PO also attempts to relitigate issues concerning Severinsky’s “setpoint”
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`already decided by the Board and the Federal Circuit. Why? To lead the Board
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`away from the broadly claimed features of the challenged claims and to obscure
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`the well-known motivations—such as better hybrid vehicle efficiency and
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`improved battery life—leading a POSA to combine the prior art with Severinsky or
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`Bumby.
`
`Finally, Shahbakhti’s deposition revealed him not as an independent expert,
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`but as a parrot for what PO’s attorneys wrote for him in his declaration. (E.g.,
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`BMW1089, 49:14-23, 105:6-108:6, 141:5-148:7.) His testimony is essentially
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`lawyer argument and cannot save the challenged claims.
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`II. The Nii-Based Grounds (3a, 3b) Render Claims 24 and 2 Obvious
`PO does not dispute that Nii discloses “monitoring a driver’s repeated
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`driving operations over time.” (POR, 27-28.) Instead, PO essentially asks the
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`Board to believe that a POSA—having knowledge of a vehicle’s actual pattern of
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`operation from Nii—would not have been motivated to use such knowledge in
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`1
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`

`

` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`adjusting the setpoints at which a hybrid vehicle switches between its operating
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`modes. Common sense, and the long history of hybrid development demonstrating
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`a POSA’s continual desire to improve the efficiency of such vehicles, dictate
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`otherwise. (See BMW1089 (Shahbakhti), 74:13-75:5, 77:9-18, 130:11-131:21
`
`(“efficiency is always one of the variables that is very important”).)
`
`A. Motivation to Combine
`1.
`A POSA Would Have Varied Severinsky’s Setpoint Based
`on Nii’s Pattern Information
`Nii teaches the same monitoring of repeated driving operations over time as
`
`the ’347 Patent. Each identifies a daily commute as an example of a “regular travel
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`pattern” or “repetitive driving pattern.” (BMW1022, 2:21-24, 5:59-64; BMW1001,
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`40:56-41:9.) Regardless of PO’s irrelevant bodily incorporation arguments (Nii’s
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`series architecture or its use of time-averaged values, discussed in the next
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`section), a POSA would have been motivated to incorporate Nii’s use of detected
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`pattern-related information into Severinsky’s control scheme, and had a reasonable
`
`expectation of success in doing so, for several reasons. (Pet., 46-48; BMW1008,
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`¶¶610-14.)
`
`First, combining Nii and Severinsky would further enhance the efficiency of
`
`Severinsky’s vehicle during normal driving and during hysteresis. (ID, 29-30;
`
`BMW1013, 18:23-42; BMW1008, ¶¶610-14.). Indeed, knowing precisely how a
`
`2
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`

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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`vehicle will actually be operated is the “holy grail” for fine-tuning hybrid vehicle
`
`efficiency. (BMW1088, ¶36.)
`
`Second, a POSA would have known that Severinsky’s factory-defined
`
`parameters could be further refined to increase efficiency. (BMW1088, ¶¶34-36.)
`
`Severinsky discloses a preselected setpoint of 60% MTO, even though its engine
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`operates efficiently “between about 50 and about 90%” MTO. (BMW1013, 8:27-
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`30.) Severinsky’s hysteresis lowers that setpoint to be outside the engine’s most
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`efficient operating range for an arbitrary period of time. (BMW1008, ¶611.) A
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`POSA would have understood that these predefined parameters could be improved
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`based on the vehicle’s actual usage, such as by using Nii’s pattern information,
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`thereby enhancing the vehicle’s efficiency. (BMW1008, ¶¶612-13; BMW1088,
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`¶¶34-36; BMW1013, 8:30-33; BMW1089, 80:3-81:16 (Shahbakhti admitting that
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`“predictability” and knowledge that “a person [is] going from point A to point B”
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`can “provide useful
`
`information
`
`for,
`
`let’s say,
`
`improving
`
`the vehicle
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`performance”).)
`
`Third, a POSA would have understood how to implement Nii’s pattern-
`
`monitoring functionality into Severinsky’s controller to alter the vehicle’s
`
`setpoints, since it would only require modifying Severinsky’s logic to use the
`
`actual-usage pattern information to define the setpoints, rather than Severinsky’s
`
`factory-set parameters. (BMW1008, ¶614.) The ’347 Patent confirms that such a
`
`3
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`

`

` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`modification would have been “within the skill of the art” with respect to
`
`monitoring of a daily commute identical to that in Nii. (BMW1001, 40:56-41:9;
`
`BMW1088, ¶63.)
`
`2.
`PO’s Arguments Are Irrelevant
`PO’s remaining arguments are ill-premised upon bodily incorporation of
`
`references. But, Petitioners’ combination does not rely on a physical substitution
`
`of elements from Nii into Severinsky.
`
`Specifically, PO argues Severinsky and Nii “have fundamentally different
`
`architectures” and “Nii is focused on determining an average output value.” (POR,
`
`12-13, 31.) Ignored is that Petitioners rely on Nii for “monitoring a driver’s
`
`repeated driving operations over time” and that a POSA would utilize such pattern
`
`information to vary the “setpoint” in Severinsky’s control strategy. (Pet. 44-48; ID,
`
`32-33; BMW1008, ¶¶610-14; BMW1088, ¶¶34-37.) Despite PO’s arguments,
`
`obviousness “does not require an actual, physical substitution of elements” from
`
`one reference into another. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012);
`
`(ID, 33).
`
`Nevertheless, even PO’s bodily incorporation arguments are without merit.
`
`Both series and parallel hybrid architectures are concerned with enhancing
`
`hybrid vehicle efficiency based on alterations to the control scheme. (BMW1008,
`
`¶614; BMW1089, 130:11-131:21, 138:24-140:21 (Shahbakhti).) Both share
`
`4
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`

` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`primary considerations, such as controlling battery state of charge or determining
`
`when to employ the engine. (BMW1088, ¶¶38-44; BMW1089, 66:24-67:17
`
`(Shahbakhti admitting battery state of charge “is one of the important variables” in
`
`both architectures); 66:24-67:17, 68:7-69:15 (identifying other overlapping
`
`considerations).) And, both have different modes of operation in which engine load
`
`is adjusted based upon driver demand and battery state of charge, among other
`
`variables. (BMW1088, ¶¶38-44; BMW1089, 69:16-71:19 (Shahbakhti admitting
`
`parallel and series hybrids have some overlapping control strategies).) These
`
`similarities are demonstrated not only by Nii, but also by contemporaneous art to
`
`the ’347 Patent, and in portions of Ehsani 2005 (PAICE2020)1 that Shahbakhti
`
`omits. (BMW1088, ¶¶38-44.) Indeed, Shahbakhti has opined for other petitioners
`
`that a POSA would be motivated to combine a parallel hybrid drive system (Kira)
`
`
`1 Ehsani 2005 is one of several references cited by Shahbakhti dated several years
`
`after the ’347 Patent’s priority date (see Paper 24), which underscores
`
`Shahbakhti’s lack of relevant, contemporaneous, experience. (BMW1089, 13:6-19
`
`(admitting he had no industry experience in 1998, and only obtained a bachelor’s
`
`degree in 2000).) Shahbakhti’s opinions regarding the state of the art should be
`
`given little weight. Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
`
`1363 (Fed. Cir. 2008).
`
`5
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`with a series one (Kumar) for the simple reason that “both disclose propulsion
`
`systems for powering a hybrid vehicle,” and other similarly general reasons.
`
`(BMW1098, ¶74; see BMW1099; BMW1100.) His counter-testimony here is
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`merely opportunistic.
`
`PO is also incorrect that Nii’s engine output “remains unchanged no matter
`
`the fluctuation in the vehicle’s instantaneous torque demand.” (POR, 31.) Nii
`
`explains that the engine load (generator output) is dependent on the instantaneous
`
`load requirements, which influence power consumption. (BMW1088, ¶¶45-49; see
`
`BMW1022, 1:44-53.) Nii further teaches turning the engine off when the battery
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`reaches a high state of charge level and that the engine control can be varied based
`
`on other techniques. (BMW1088, ¶50.)
`
`PO next mischaracterizes Petitioners’ combination by arguing that Nii’s
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`calculation of average power consumption “does not provide any information
`
`about the instantaneous torque requirement” so it would “make[] no sense” for
`
`Severinsky to “turn the engine off based on a ‘pattern of vehicle operation
`
`requiring low average power.’” (POR, 34-38.) Petitioners do not propose that
`
`average power consumption be used to turn Severinsky’s engine on or off, but
`
`rather to vary the “setpoint” at which the engine is operated. (BMW1088, ¶¶51-
`
`52.) Thus, if the “instantaneous torque requirement” were “very high,” the
`
`controller would not “turn off the engine when it is needed the most.” (Contra
`
`6
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`

`

` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`POR, 37.) To the contrary, because that instantaneous torque would be above the
`
`setpoint, the engine would be turned on because it would continue to respond to
`
`driver demand all while adjusting its setpoints to improve engine efficiency.
`
`(BMW1088, ¶53.) In other words, Nii’s recognizing a pattern of vehicle travel and
`
`using the average power requirement could be used to adjust Severinsky’s
`
`threshold for turning off the engine during hysteresis sooner or at a slightly higher
`
`percentage of engine MTO and corresponding speed (e.g., 25-28 mph), thus
`
`increasing vehicle fuel economy. (Id.)
`
`Furthermore, “the average power requirement of a typical drive cycle”
`
`would provide “useful information” for modifying Severinsky’s setpoint. (Contra
`
`POR, 35; BMW1088, ¶¶55-62.) In fact, the ’347 Patent itself recognizes a pattern
`
`of operation based upon the average torque requirement “fluctuat[ing]” near 30%
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`MTO. (BMW1088, ¶¶54-55; BMW1001, 41:20-35.) A POSA would understand
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`that repeated, high instantaneous torque demand over time would necessarily yield
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`a high average torque demand, as demonstrated by PO’s own cited exhibits.
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`(BMW1088, ¶55; PAICE2020, Fig. 7.10.) A POSA would have therefore
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`understood that average power requirements can directly correlate with driving
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`patterns and be “useful” for modifying the setpoint. (BMW1008, ¶¶55-62.)
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`B.
`Severinsky Discloses “vary[ing] said setpoint”
`Severinsky teaches a POSA that its setpoint may be varied. Severinsky’s
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`engine will normally be operated above 60% MTO—i.e., the claimed “setpoint”
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`(ID, 23)—but Severinsky also teaches operating its engine “outside its most fuel
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`efficient operating range, on occasion,” as
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`the Board previously found.
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`(BMW1013, 18:23-25; ID, 23-24.) For example, when employing hysteresis in its
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`mode switching, Severinsky will “vary said setpoint” by lowering it below 60%
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`MTO (which corresponds to 30-35 mph speed in “highway mode”) to avoid
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`nuisance engine starts. (ID, 32; Pet. 20, 46-47; BMW1088, ¶¶9-10.) Severinsky
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`also discloses “varying said setpoint” in other non-hysteresis situations, such as to
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`avoid discharging the batteries excessively (BMW1013, 18:25-33)
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`PO responds that Severinsky’s hysteresis is only speed-based while the
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`“setpoint” claimed in the 347 Patent is “a torque value.” (Paper 22 (“POR”), 20-23
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`(PO’s emphasis).) This argument is wrong for several reasons.
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`First, it is a red herring. Severinsky’s control system does not take only
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`speed into account—the Board debunked that argument years ago (BMW1003, 15-
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`17)—but must also take torque into account. (BMW1088, ¶¶8-26.) A vehicle
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`control system, like Severinsky’s, must always respond to operator commands,
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`even during hysteresis, and an operator’s road load request and speed are its
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`primary inputs. (Id.; BMW1013, 6:19-26, 17:11-15 (“the load imposed” is
`
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`monitored “at all times”); BMW1089, 55:15-57:24, 61:4-63:18 (Shahbakhti
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`admitting controller would take driver commands into account).) For example, in
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`Severinsky’s hill-climbing mode, speed may be low—e.g., under the highway
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`mode’s 30-35 mph—but load may be above the corresponding 60% MTO setpoint,
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`requiring both engine and motor operation. (BMW1088, ¶¶12-17; BMW1013,
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`18:36-38.) Given the need to address operator demands at all times, a POSA would
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`understand that Severinsky’s control system could not employ hysteresis based on
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`speed alone; it must still consider a higher-requested road-load demand.
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`(BMW1088, ¶¶8-26; BMW1089, 30:21-36:19 (Shahbakhti admitting speed is not
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`enough on its own to estimate instantaneous torque).) PO’s argument would have
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`Severinsky ignore the user’s road-load demands during the 2-3 minutes of
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`highway-driving hysteresis, an absurd result.
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`Moreover, Severinsky’s speed-based thresholds correlate to torque-based
`
`thresholds, and vice versa, just as in the ’347 Patent. (BMW1088, ¶¶9-10;
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`BMW1003, 16-18; BMW1013, 7:8-16 (“engine is operated only under the most
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`efficient conditions of output power and speed”); Fig. 14 (illustrating engine’s
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`MTO in relation to speed); BMW1001, 17:34-37 (’347 Patent speaking of “speed”
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`when describing operating modes).) Severinsky’s so-called “speed-based”
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`hysteresis is somewhat of a misnomer; it may be based on speed, but is also based
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`on other considerations, including torque. (BMW1088, ¶¶8-26; e.g., BMW1089,
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`34:18-35:12, 36:20-37:20, 39:2-18 (Shahbakhti admitting it was within the skill in
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`the art to determine which parameters to use to vary a setpoint).) PO’s concession
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`that Severinsky uses “two separate speed thresholds” for turning off the engine
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`depending on whether hysteresis is employed is thus a fatal admission, (POR, 19,)
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`since those “speed thresholds” are also torque thresholds by their very nature.
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`Second, how the setpoint is varied in Severinsky is irrelevant. While PO
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`asserts that Severinsky’s normal 30-35 mph/60% MTO “threshold would be
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`written into source code and would not change” (POR, 18-20,) the challenged
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`claims are agnostic as to how “varying said setpoint” is accomplished.
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`(BMW1088, ¶¶27-29.) They do not preclude switching between two (or more)
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`values that represent the “setpoint” at any given time, as is done during
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`Severinsky’s hysteresis. (Id.) Indeed, this is precisely how the ’347 Patent
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`describes “varying said setpoint” during hysteresis. (Id.; BMW1001, 41:10-54
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`(describing varying the setpoint between a lower and a higher setpoint).) PO
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`cannot credibly argue a difference here because the ’347 Patent lacks the level of
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`detail that PO would require of the prior art. See Lockwood v. Am. Airlines, 107
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`F.3d 1565, 1570 (Fed. Cir. 1997).
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`Nor does Severinsky’s hysteresis simply “disregard” the “setpoint.” (POR,
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`22-24.) Severinsky’s “setpoint” is normally 60% MTO (corresponding to
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`approximately 30-35 mph), but during hysteresis, the engine is allowed to operate
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`at a lower percentage of the engine’s MTO (a lower setpoint), corresponding to
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`approximately 20-25 mph. (BMW1088, ¶30; BMW1013, 18:34-42.) Critically, if
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`the vehicle drops below the lower setpoint, the engine will be shut off. (BMW1088,
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`¶30.) The original setpoint is not disregarded but replaced—i.e., it is “varied”—by
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`a different (lower) setpoint corresponding to 20-25 mph during hysteresis, as is
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`confirmed in the ’347 Patent. (Id.; BMW1001, 41:10-54.)
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`Third, PO is precluded from relitigating issues the Board previously decided.
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`Papst Licensing GMBH v. Samsung Elecs. Am. Inc., 924 F.3d 1243, 1250-51 (Fed.
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`Cir. 2019); (ID, 31-32). Contrary to PO’s account (POR, 22,) the Board rejected
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`that Severinsky “uses speed as the one factor in determining whether to employ the
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`engine,” which is identical to PO’s arguments here. (BMW1003, 15 (emphasis in
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`original).) PO’s argument then, as now, “downplay[ed] [Severinsky’s] teaching as
`
`a whole,” and ignored that “Severinsky teaches elsewhere that efficient operation
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`of the engine is based on torque, not speed,” and that speed is not “the sole factor
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`used by Severinsky’s microprocessor in determining when to employ the engine.”
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`(BMW1003, 16-17.) PO cannot dispute these findings now.
`
`Finally, the Board’s prior findings also contradict Shahbakhti’s assertion that
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`Severinsky’s hysteresis would require “separate” “speed-based” and “torque-based
`
`algorithm[s]” that “operate in parallel” with, and have no impact on, one another.
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`(POR, 21.) The Board already found that both speed and torque play a role in
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`Severinsky’s (and the ’347 Patent’s) torque-based control strategy. (BMW1003,
`
`16-18.)
`
`III. The Graf-Based Grounds (1a, 2a, 4a) Render Claims 24 and 2 Obvious
`A. Monitoring a Driver’s Repeated Driving Operations Over Time
`Although Graf does not recognize the same type of driving pattern disclosed
`
`in both the ’347 Patent and Nii—i.e., a daily commute—it nevertheless teaches
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`“monitoring a driver’s repeated driving operations over time,” which is all that the
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`claims broadly require. (Pet., 21-23; BMW1008, ¶¶406-08.)
`
`Graf employs an appropriate “driving strategy” and “basic operating
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`parameters” based in part on determining “a driver type.” (Pet., 21 (emphasis
`
`added), BMW1008, ¶¶406-07.) Determining “driver type” entails distinguishing
`
`“between performance-oriented and economy modes,” and
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`thus
`
`teaches
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`“monitoring a driver’s repeated driving operations over time.” (Pet., 21-23;
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`BMW1008, ¶¶406-08.)
`
`Contrary to PO’s argument (POR, 45), and the Board’s preliminary finding,
`
`ample evidence, both in Graf and the art more generally, supports Dr. Davis’s
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`opinion as to “how the driving style of performance or economy modes is
`
`determined” in Graf. (ID, 28.) It was known that many drivers “have a fixed
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`pattern of vehicle usage” that could be monitored to bias the use of the electric
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`motor over the engine, or vice versa. (BMW1008, ¶141.) Monitoring “pedal
`
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` Petitioners’ Reply to Patent Owners’ Response, IPR2020-00994
`U.S. Patent No. 7,104,347
`movement value and engine speed” across a given interval was one known way of
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`monitoring such driving patterns (id.; BMW1044, 4:58-5:31), and the way in
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`which Dr. Davis opined Graf classifies the performance- or economy-oriented
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`“driver type.” (BMW1008, ¶¶405-08; BMW1088, ¶¶65-66.)
`
`Graf confirms Dr. Davis’s opinion, and nowhere suggests that the “driver
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`type” determination “simply assumes that the driver has expressed a choice.”
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`(Contra POR, 46.) Namely, Graf identifies EP 0,576,703 (“Graf ’703,”
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`BMW1090) as describing a known implementation example of how the “driver
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`type” classification is made. (BMW1020, 5:36-42.) Graf ’703 teaches that various
`
`parameters are considered when determining whether the driver’s behavior “is
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`sporty or consumption-oriented.” (BMW1090, 6:13-26, 8:32-9:10, 10:3-9.) A
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`“sporty driver is detected in the case of high accelerator speed and high
`
`longitudinal acceleration.” (BMW1090, 13:14-15.) Thus, both speed and
`
`acceleration are monitored over the course of a vehicle’s operation (1.4 km in