Case: 17-1442
`
`Document: 59-2 Page: 1 Filed: 02/01/2018
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`(2 of 26)
`
`NOTE: This disposition is nonprecedential.
`
`Wntteb ~tates ~ourt of ~peals
`for tbe jf eberal ~trcutt
`
`PAICE LLC, THE ABELL FOUNDATION, INC.,
`Appellants
`
`v.
`
`FORD MOTOR COMPANY,
`Appellee
`
`2017-1263, 2017-1264, 2017-1308, 2017-1309, 2017-1310,
`2017-1311
`
`Appeals from the United States Patent and. Trade(cid:173)
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2015-00722,
`IPR2015-00784,
`IPR2015-00787,
`IPR2015-00790, IPR2015-00791, IPR2015-00800.
`
`PAICE LLC, THE ABELL FOUNDATION, INC.,
`Appellants
`
`v.
`
`FORD MOTOR COMPANY,
`Appellee
`
`2017-1442, 2017-1443
`
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`Case: 17-1442 Document: 59-2 Page: 2 Filed: 02/01/2018
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`(3 of 26)
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`2
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`PAICE LLC v. FORD MOTOR COMPANY
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`Appeals from the United States Patent and Trade(cid:173)
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2015-00794, IPR2015-00795.
`
`Decided: February 1, 2018
`
`RUFFIN B. CORDELL, Fish & Richardson, PC, Washing(cid:173)
`ton, DC, argued for appellants. Also represented by
`TIMOTHY W. RIFFE, BRIAN JAMES LIVEDALEN, DANIEL
`TISHMAN.
`
`MATTHEW J. MOORE, Latham & Watkins LLP, Wash(cid:173)
`ington, DC, argued for appellee. Also represented by
`GABRIEL BELL; FRANK A. ANGILERI, JOHN P. RONDINI,
`ANDREW B. TURNER, Brooks Kushman PC, Southfield, ML
`
`Before LOURIE, O'MALLEY, and TARANTO, Circuit Judges.
`Opinion for the court filed by Circuit Judge TARANTO.
`Opinion dissenting in part filed by Circuit Judge
`O'MALLEY.
`TARANTO, Circuit Judge.
`U.S. Patent Nos. 7,237,634 and 7,104,347, which are
`owned by Paice LLC and The Abell Foundation (collec(cid:173)
`tively, Paice), describe and claim asserted improvements
`in a hybrid vehicle-a vehicle that has available for
`propulsion both a battery-powered electric motor and an
`internal combustion (gas) engine. At Ford's request, the
`Patent and Trademark Office instituted inter partes
`reviews of various claims of the two patents under 35
`U.S.C. §§ 311-19. The Patent Trial and Appeal Board
`
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`PAICE LLC v. FORD MOTOR COMPANY
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`3
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`ultimately held numerous claims of the two patents
`unpatentable. Paice appeals. We affirm.
`I
`The '634 and '34 7 patents describe a control strategy,
`based on the torque needed for propulsion, for switching
`between different modes of operating a hybrid vehicle(cid:173)
`use of (one or more) electric motors, a gas engine, or both.
`The subject matter has been discussed in previous deci(cid:173)
`sions of this court. See Paice LLC v. Ford Motor Co., 681
`F. App'x 885, 887-88 (Fed. Cir. 2017) (Paice 1) (involving
`Paice's related U.S. Patent No. 7,559,388); Paice LLC v.
`Ford Motor Co., 681 F. App'x 904, 908-09 (Fed. Cir. 2017)
`(Paice 11) (involving the '347 patent); Paice LLC v. Ford
`Motor Co., 685 F. App'x 940, 943 (Fed. Cir. 2017) (Paice
`III) (involving Paice's related U.S. Patent No. 8,214,097);
`see also Paice LLC v. Ford Motor Co., 685 F. App'x 950
`(Fed. Cir. 2017) (Paice IV) (summary affirmance of Board
`decisions involving the '634 patent). 1 We recite here only
`the background necessary to resolve the issues on appeal.
`
`The common specification explains that the control
`strategy bases selection decisions on instantaneous torque
`demand, or "road load." '634 patent, col. 13, lines 12-21,
`44-65. 2 Because the gas engine runs most efficiently
`when it produces torque near its maximum torque output,
`
`Related subject matter is also at issue in appeals
`17-1387, 17-1388, 17-1390, 17-1457, 17-1458, and 17-
`1406, which were argued in tandem with tho present
`appeals.
`2 The '634 patent issued from a divisional applica(cid:173)
`tion, under 35 U.S.C. § 121, of the application that issued
`as the '34 7 patent. Because the patent specifications are
`identical in all material respects, this opinion cites only to
`the '634 patent, and to the materials submitted in appeal
`17-1263, unless specifically noted otherwise.
`
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`PAICE LLC v. FORD MOTOR COMPANY
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`the control strategy is designed to operate the engine
`"only under circumstances where the engine will be
`loaded so as to require at least 30% of its maximum
`torque output ('MTO') (it being understood throughout
`this specification and the appended claims that this 30%
`figure [setpoint] is arbitrary and can be varied)." Id., col.
`13, lines 14-29, 44-65; see also id., col. 2, lines 58-60.
`Generally, the electric motor alone is used to run the
`vehicle below the 30% setpoint, the gas engine is used to
`run the vehicle in the "efficien[t]" range of 30% to 100% of
`the engine's maximum torque output, and both propulsion
`sources are used to run the engine when more than 100%
`of the gas engine's maximum torque output is required
`(the electric motor providing the additional torque re(cid:173)
`Id., col. 41, line 59 through col. 43, line 25 &
`quired).
`Fig. 9.
`
`The relevant claims of the Paice patents require two
`comparisons--of the vehicle's road load to a setpoint, and
`of the vehicle's road load to the gas engine's maximum
`torque output-for the decision whether to operate the
`electric motor, the gas engine, or both. Independent claim
`80 of the '634 patent is representative. 3 That claim reads:
`
`80. A method for controlling a hybrid vehicle,
`comprising:
`
`determining instantaneous road load (RL) re(cid:173)
`quired to propel the hybrid vehicle respon(cid:173)
`sive to an operator command;
`
`monitoring the RL over time;
`
`In appeals 17-1442 and 17-1443, the parties treat
`3
`claims 1 and 23 of the '34 7 patent as representative.
`Those claims are materially identical to claim 80 of the
`'634 patent. Compare '634 patent, col. 65, lines 11-33
`with '347 patent, col. 58, lines 13-37 and id., col. 60, lines
`22-54.
`.
`
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`operating the at least one electric motor to
`propel the hybrid vehicle when the RL re(cid:173)
`quired to do so is less than a setpoint (SP);
`operating the internal combustion engine of
`the hybrid vehicle to propel the hybrid ve(cid:173)
`hicle when the RL required to do so is be(cid:173)
`tween the SP and a maximum torque
`output (MTO) of the engine, wherein the
`engine is operable to efficiently produce
`torque above the SP, and wherein the SP
`is substantially less than the MTO; and
`
`wherein said operating the internal combus(cid:173)
`tion engine to propel the hybrid vehicle is
`performed when:
`
`the RL>the SP for at least a predeter(cid:173)
`mined time; or
`the RL>a second setpoint (SP2), wherein
`the SP2 is a larger percentage of the
`MTO than the SP; and
`operating both the at least one electric motor
`and the engine to propel the hybrid vehi(cid:173)
`cle when the torque RL required to do so is
`more than the MTO.
`'634 patent, col. 65, lines 11-33. 4
`
`In IPR2015-00791, the Board dismissed the chal(cid:173)
`4
`lenge to claim 80 from the inter partes review because
`that claim had been held unpatentable in an earlier
`Board decision, Ford Motor Co. v. Paice LLC, No.
`IPR2014-01416, 2016 WL 932948, at *1 (P.T.A.B. Mar. 10,
`2016), aff'd, Paice IV, 685 F. App'x 950. Though not at
`issue here, claim 80 contains the relevant limitations and
`is representative of the claims on appeal.
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`In the final written decisions in seven inter partes re(cid:173)
`views, the Board determined that the following claims(cid:173)
`claims 2-4, 6-13, 15, 17, 19, 23, 25, 27-30, 32, 66-67, 79,
`94, 96, 106-08, 113,128, 140-41, 146,173,229,231, 238-
`41, 252-56, 259, 261-62, 267, 281-82, 285, and 287-88 of
`the '634 patent; and claims 3-5, 14, 16, 19-20, 22, 25-30,
`32, and 39-41 of the '347 patent-are unpatentable for
`obviousness over U.S. Patent No. 5,789,882 (lbaraki),
`either alone or in combination with other references. 5
`The Board's decision in IPR2015-00722, on appeal here in
`17-1263, is representative. Ford Motor Co. v. Paice LLC,
`IPR2015-00722, 2016 WL 5636817 (P.T.A.B. Sept. 26,
`2016) (IPR 722 Final Written Decision).
`On appeal pursuant to 35 U.S.C. § 319, Paice chal(cid:173)
`lenges those Board decisions, under 5 U.S.C. § 706(2)(E),
`as not supported by substantial evidence. We have juris(cid:173)
`diction under 28 U.S.C. § 1295(a)(4)(A).
`II
`We review the Board's factual findings underlying its
`obviousness determinations for substantial evidence,
`which "means such relevant evidence as a reasonable
`mind might accept as adequate to support a conclusion."
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1061 (Fed.
`
`In the eighth Board decision on appeal (involving
`5
`IPR2015-00800), the Board determined that claims 172,
`226, 230, and 234 of the '634 patent are unpatentable for
`obviousness over a series of articles written by J.R. Bum(cid:173)
`by. We are unpersuaded by Paice's arguments on appeal
`challenging that determination. We affirm the decision
`without further discussion, except to note that in Paice II,
`681 F. App'x at 917-18, we affirmed the Board's determi(cid:173)
`nation of unpatentability of similar claims in Paice's '347
`patent based on obviousness over the Bumby references.
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`7
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`Cir. 2016) (quoting Consol. Edison Co. v. NLRB, 305 U.S.
`197, 229 (1938)).
`
`A
`Paice's main argument is that the Board's finding
`that lbaraki discloses torque-based comparisons is not
`supported by substantial evidence. We disagree.
`
`As the Board correctly found, IPR 722 Final Written
`Decision, 2016 WL 5636817, at *7, Ibaraki describes a
`hybrid vehicle with "a drive control apparatus" (control(cid:173)
`ler) that, like the microprocessor in the '634 and '347
`patents, "includes drive source selecting means" for
`selecting the engine, motor, or both. Ibaraki, col. 1, lines
`10-13; id., col. 20, lines 38-43. The controller makes the
`selection "according to a drive source selecting data map,''
`illustrated in Figure 11 (below), "which represents a
`predetermined relationship between the vehicle drive
`torque and running speed V and the ... three drive
`modes" of motor drive (electric motor only), engine drive
`(gas engine only), and engine-motor drive (both). Id., col.
`20, lines 38-53.
`
`FIG.11
`
`w ;
`
`w
`> a:
`0
`~
`!',,2
`::i: w
`>
`
`0
`
`- B= B2
`
`B=B1
`
`VEHICLE SPEED
`"[W]hen the vehicle running· condition as represented by
`the current vehicle drive torque and speed" falls in the
`area below curve B, the controller selects motor drive
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`mode. Id., col. 20, line 55-62; see also id., col. 21, lines 2-
`4 (B can be shifted from B1 to B2 to enlarge the motor
`drive range, if such a condition is desired). Similarly, the
`controller selects engine drive mode when the running
`condition falls in the area between curve B and curve C,
`and engine-motor drive mode in the area above curve C.
`Id., col. 20, line 55 through col. 21, line 1; id., col. 24, lines
`16-21 & Fig. 10.6
`
`Paice does not dispute the finding that lbaraki teach(cid:173)
`es comparisons to setpoints to select engine, motor, or
`engine-motor operation. In Figure 11, curve B and curve
`C each is a constant level of power, and the flowchart in
`Ibaraki's Figure 10 expressly refers to a power compari(cid:173)
`son ("PL> B?"; "PL> C?") for selecting the mode of opera(cid:173)
`tion. Precisely because that comparison employs power,
`however, Paice argues that Ibaraki's controller does not
`base mode selection on comparisons to torque, as required
`by the patent claims.
`
`The question before us is not whether the Board
`might properly have accepted Paice's contention about the
`teachings of Ibaraki. The question is whether the Board
`had an adequate evidentiary basis for its contrary finding.
`The Board found that lbaraki teaches reliance on both
`power and torque; it thus rejected Paice's contention that
`one teaching excludes the other. IPR 722 Final Written
`
`lbaraki at col. 20 line 66 through col. 21, line 1,
`6
`states that "[w]hen the vehicle running condition is in the
`range above the second boundary line C, the drive source
`selecting means D selects the ENGINE-DRIVE mode."
`Based on context and Figure 10, that appears to be a
`typographical error: the passage should say "ENGINE(cid:173)
`MOTOR DRIVE mode."
`Paice does not dispute that
`Ibaraki discloses that if the power level is greater than
`curve C, "the vehicle is driven in 'Engine-Motor Drive
`Mode."' Paice Br. 20.
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`9
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`Decision, 2016 WL 5636817, at *7-12. We conclude that
`the Board's finding is reasonable on this record.
`
`Ford's expert Dr. Gregory Davis pointed out that
`"lbaraki D states that the 'vehicle drive torque and speed'
`determine 'a point corresponding to the required drive
`power PL." J.A. 16133 (quoting Ibaraki, col. 23, line 66
`through col. 24, line 2 (explaining that in Figure lO's
`flowchart of controller decisionmaking, step Q8 is where
`the controller "determine[s] whether a point correspond(cid:173)
`ing to the required drive power PL (determined by the
`current vehicle drive torque and speed V) is located above
`It is undisputed that the
`the first boundary line B.")).
`relationship between the required drive power PL, torque,
`and speed is PL = torque x speed, which makes each of
`curve B and C in Figure 1 l's graph of torque x speed a
`constant power level. Dr. Davis explained that any par(cid:173)
`ticular point on one of the Figure 11 curves (e.g., on B or
`on C) relates to a "required drive power PL at a given
`vehicle drive torque and vehicle speed." J.A. 16133 (in(cid:173)
`ternal quotation marks omitted).
`
`To show how Ibaraki's controller makes operation de(cid:173)
`cisions based on torque comparisons at a given speed, Dr.
`Davis provided an annotated version of Figure 11, shown
`at IPR 722 Final Written Decision, 2016 WL 5636817, at
`*8:
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`FIG.11
`
`ENGINE-MOTOR DRIVE mode when Tu> C1
`
`MOTOR ORIVE mode when Tu <SP
`
`0
`
`V1
`VEHICLE SPEED
`
`p11
`That figure illustrates Dr. Davis's reading of Ibaraki as
`teaching selection decisions based on torque. At a given
`speed (V1), the selection decision is based on where on the
`torque axis the desired torque is: Ibaraki selects motor
`drive mode at TLI, engine drive mode at TL2, and engine(cid:173)
`motor drive mode at TL3. The comparisons of desired
`torque are to the torque levels on curves Band Cat speed
`V1, i.e., SP (set point) on curve Band C1 on curve C.
`The Board relied on Ibaraki and the know ledge of a
`person of skill in the art, as explained by Dr. Davis, to
`find that power is directly related to torque, that Ibaraki's
`controller determines the required drive power based on
`the current vehicle drive torque and speed, and that
`Ibaraki teaches selection decisions dependent on torque
`(though not only on torque)-specifically, on torque levels
`at a given speed. See IPR 722 Final Written Decision,
`2016 WL 5636817, at *8-9, *13-14.7 The Board had a
`
`Similarly, in the '634 patent, as the Board pointed
`7
`out, speed may also be "considered in determining the
`mode of operation of the vehicle": the patent "contem(cid:173)
`plates including not just the torque value in the [setpoint]
`IPR 722 Final Written
`comparison, but also speed."
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`11
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`sufficient basis for rejecting Paice's reading of Ibaraki as
`not teaching torque-based comparisons.
`
`The Board also had a sufficient basis for rejecting a
`related contention made by Paice-that, even if Ibaraki
`shows torque-based comparisons, it does not show com(cid:173)
`paring the vehicle's required torque to the engine's "max(cid:173)
`imum torque output" and using both propulsion sources
`when the required torque exceeds that level, as required
`by the patent claims. Dr. Davis explained that a person of
`skill in the art would know the following: curve C of
`Ibaraki's Figure 11 is less than or equal to the engine's
`maximum torque output (the engine, alone, is running
`just below that curve); the motor is turned on to provide
`additional torque above curve C; and "'a hybrid vehicle
`control strategy would at some point allow the [internal
`combustion] engine to provide output torque near and
`potentially
`including
`its
`[maximum
`torque output].
`Otherwise, the system would be artificially limiting the
`Id. at *11 (quoting Dr.
`performance of the vehicle."'
`Davis's declaration). The Board was persuaded. It found
`that Ibaraki, combined with the knowledge of a person of
`ordinary skill in the art, taught the Paice claim limitation
`
`Decision, 2016 WL 5636817, at *14 (citing '634 patent,
`Fig. 4 & col. 59, lines 3-5 (dependent claim 12 recites "the
`hybrid vehicle of claim 1, wherein the controller is opera(cid:173)
`ble to vary the SP as a function of speed of the engine");
`cf. '634 patent, col. 58, lines 19-27 (claim 1 requirement
`that the controller, among other things, "is operable to
`operate the engine when torque ... is at least equal to a
`setpoint (SP) above which the torque produced by the
`engine is efficiently produced"). See also id., col. 19, lines
`63-65 ("The vehicle is operated in different modes, de(cid:173)
`pending on its instantaneous torque requirements, and
`the state of charge of the battery, and other operating
`parameters.").
`
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`that both the engine and motor be used to propel the
`vehicle above the engine's maximum torque output. Id. at
`*11-12. Dr. Davis's testimony supplies an adequate basis
`for that finding.
`We note that, in the alternative, the Board found that
`"operating the engine and motor when the torque [road
`load] required to do so is more than the [maximum torque
`output] ... would have been an obvious modification to
`make to the lbaraki O control system." Id. at *14 (inter(cid:173)
`nal quotation marks omitted). We agree with that deter(cid:173)
`mination on the evidence-supported facts found by the
`Board.
`
`B
`Paice also challenges the Board's finding that Ibaraki
`discloses the claim requirement of a setpoint that is
`"substantially less" than the engine's maximum torque
`output-the engine alone operating when the required
`torque is between those figures. See IPR 722 Final Writ(cid:173)
`ten Decision, 2016 WL 5636817, at *IO. It is undisputed,
`based on claim 15 of the '634 patent, that approximately
`70% of the maximum torque output constitutes being
`"substantially less" than the maximum torque output. Id.
`The Board found that this limitation was shown in
`lbaraki, relying on the explanation of Dr. Davis that it
`would be "clear" to a person of skill, based upon a "simple
`visual inspection" of Figure 11, "that setpoint SP [along
`curve B1] is substantially less than point C1 [along curve
`C]," and therefore substantially less than the maximum
`torque output (which, for reasons already noted, is at or
`above curve C). J.A. 16157-58; see IPR 722 Final Written
`Decision, 2016 WL 5636817, at *IO, *15.
`
`Paice argues that Dr. Davis's reliance on visual in(cid:173)
`is improper under Hockerson(cid:173)
`spection of Figure 11
`Halberstadt, Inc. v. Avia Group International, Inc., in
`which this court explained "that patent drawings do not
`define the precise proportions of the elements and may
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`not be relied on to show particular sizes if the specifica(cid:173)
`tion is completely silent on the issue." 222 F.3d 951, 956
`(Fed. Cir. 2000); see also In re Olson, 212 F.2d 590, 592
`(C.C.P.A. 1954) ("Ordinarily drawings which accompany
`an application for a patent are merely illustrative of the
`principles embodied in the alleged invention claimed
`therein and do not define the precise proportions of ele(cid:173)
`ments relied upon to endow the claims with patentabil(cid:173)
`ity.").
`involved a
`The Hockerson-Halberstadt case
`rudimentary drawing that portrayed a central groove
`bisecting the heel on the sole of a shoe to create fins
`flanking the groove, 22 F.3d at 953, and there was no
`indication that the groove and fins were drawn to scale,
`id. at 956. That drawing, this court held, could not rebut
`statements in the prosecution history that clarified the
`relative measurements because "the inventor necessarily
`defined the central longitudinal groove as requiring a
`width that must be less than the combined width of the
`two fins." Id. at 956.
`This case is not controlled by Hockerson-Halberstadt.
`Unlike the drawing at issue there, Figure 11 of Ibaraki
`provides some scale information-which expert evidence
`reasonably found telling on the point at issue. It specifies
`0 at the intersection of the x- and y-axes, both of which
`run continuously, without indication of omission of por(cid:173)
`tions of the range, from O to higher levels; and consistent
`with the shape of each curve (a rectangular hyperbola),
`the parties' experts both treated the scale of the axes as
`linear-allowing Dr. Davis to make rough estimates
`based on relative comparisons between the torque values
`located on the B and C curves. s In any event, the visual
`
`s At oral argument, counsel for Paice suggested
`that it was unclear whether the curves were plotted along
`a linear or logarithmic scale. But Paice's own expert
`assumed that the scales of the x- and y-axes were linear
`
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`inspection of the curves is not the sole support for the
`Board's finding. The Board also found that, based on Dr.
`Davis's declaration, a person of skill would understand
`the B curve to be "substantially less" than the maximum
`torque output because, otherwise, the controller would
`rarely select the engine alone to propel the vehicle. IPR
`722 Final Written Decision, 2016 WL 5636817, at *15.
`According to Dr. Davis, it would not make sense to a
`person of skill for a hybrid vehicle to "hardly" operate the
`engine as the primary drive source.
`J.A. 16154-55.
`Ibaraki's Figure 11, in combination with the understand(cid:173)
`ing of a person of skill, thus provides substantial evidence
`for the Board's finding that Ibaraki teaches the "substan(cid:173)
`tially less" claim element at issue.
`C
`For those reasons, and having considered Paice's re(cid:173)
`maining arguments and found them insufficient to dis(cid:173)
`turb the Board's rulings, we affirm the final written
`decisions of the Board.
`AFFIRMED
`
`for the power curves in Figure 11. See J.A. 16492. That
`makes sense mathematically: as Dr. Davis explained, the
`curves "'representO a predetermined relationship between
`the vehicle drive torque and running speed V,"' J.A. 16131
`(quoting Ibaraki, col. 20, lines 49-53)-namely, "Power=
`Torque * Rotational Speed," J.A. 16133. A linear scale
`along both axes would produce the rectangular hyperbola
`curves-for constant power level P = x * y-as depicted in
`Figure 11.
`
`BMW1007
`Page 14 of 23
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`

`

`Case: 17-1442
`
`Document: 59-2 Page: 15 Filed: 02/01/2018
`
`(16 of 26)
`
`NOTE: This disposition is nonprecedential.
`
`ffiniteb $'>tate~ <!Court of ~peal~
`for tbe jf eberal <!Circuit
`
`PAICE LLC, THE ABELL FOUNDATION, INC.,
`Appella.nts
`
`v.
`
`FORD MOTOR COMPANY,
`Appellee
`
`2017-1263, 2017-1264, 2017-1308, 2017-1309, 2017-1310,
`2017-1311
`
`Appeals from the United States Patent and Trade(cid:173)
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2015-00722,
`IPR2015-00784,
`IPR2015-00787,
`IPR2015-00790, IPR2015-00791, IPR2015-00800.
`
`PAICE LLC, THE ABELL FOUNDATION, INC.,
`Appellants
`
`v.
`
`FORD MOTOR COMPANY,
`Appellee
`
`2017-1442, 2017-1443
`
`BMW1007
`Page 15 of 23
`
`

`

`Case: 17-1442 Document: 59-2 Page: 16 Filed: 02/01/2018
`
`(17 of 26)
`
`2
`
`PAICE LLC v. FORD MOTOR COMPANY
`
`Appeals from the United States Patent and Trade(cid:173)
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2015-00794, IPR2015-00795.
`
`O'MALLEY, Circuit Judge, dissenting in part.
`I agree with the majority that substantial evidence
`supports the Board's finding that the Bumby references
`render obvious certain claims of the '634 and '34 7 patents,
`and I therefore join the majority opinion as it relates to
`those references. See Maj. Op. at 6 n.5. I disagree, how(cid:173)
`ever, with the majority's conclusion that substantial
`evidence supports the Board's finding that Ibaraki dis(cid:173)
`closes a torque-based control algorithm, and I dissent
`from the portion of the majority opinion affirming the
`Board's obviousness determinations based on Ibaraki.
`See id. at 7-14.
`Ibaraki discloses a power-based control algorithm, not
`a torque-based one. Figure 10 of Ibaraki depicts that
`algorithm and shows, in steps Q8 and Q9, that the system
`compares the vehicle's instantaneous power, "PL," with
`power thresholds "B" and "C" to determine which operat(cid:173)
`ing mode to select:
`
`BMW1007
`Page 16 of 23
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`

`

`Case: 17-1442 Document: 59-2 Page: 17 Filed: 02/01/2018
`
`(18 of 26)
`
`PAICE LLC v. FORD MOTOR COMPANY
`
`3
`
`START
`
`FIG.10
`
`REGENERATIVE ORIW,G
`MOOE SUB·l;OlJTINE
`
`014
`
`STORING REGENERATIVE
`CHARGING AMOUNT SOCR 015
`
`MOTOl:i
`ORIVEMOOE
`SUB·ROUH'lE 012
`
`R:TURN
`
`Ibaraki, Fig. 10 (steps Q8, Q9); id. col. 23, line 66 through
`col. 24, line 38 (stating that the driving mode of the
`vehicle is selected "depending upon the required drive
`power PL"); see also No. 17-1263, J.A. 16,467-68 (Paice's
`expert describing Ibaraki's Figure 10). This is consistent
`with Ibaraki's Figure 11, which shows a series of power
`curves corresponding to the threshold values depicted in
`Figure 10, plotted against the vehicle drive torque (y-axis)
`and vehicle speed (x-axis), as shown below:
`
`I
`
`BMW1007
`Page 17 of 23
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`

`

`Case: 17-1442
`
`Document: 59-2 Page: 18 Filed: 02/01/2018
`
`(19 of 26)
`
`4
`
`PAICE LLC v. FORD MOTOR COMPANY
`
`FIG. 11
`
`LU
`
`:::) a
`~ w
`> a: Cl
`
`UJ
`....I
`(..,)
`
`:i: w
`>
`
`-8 = 82
`
`0
`
`B= Bt
`
`VEHIC~E SPEED
`
`Ibaraki, Fig. 11. Each curve has a non-zero slope and
`delineates operating modes. As Paice's expert testified(cid:173)
`and as the majority acknowledges, see Maj. Op. at 8-9-
`the curves represent constant levels of power, not set(cid:173)
`points of constant torque. See No. 17-1263, J.A. 16,471-
`72; Ibaraki, col. 20, line 38 through col. 21, line 4.
`
`As Paice's expert explained, the difference between
`Ibaraki's power-based system and the '634 and '347
`patents' torque-based system is significant. See No. 17-
`1263, J.A. 16,470-71. A single power value can be de(cid:173)
`rived from multiple combinations of torque and speed, as
`Ibaraki's Figure 11 plainly shows. Indeed, because power
`is the product of torque and speed, a large number of
`unique torque-speed pairs can be used to calculate the
`same power. For example, a vehicle requiring a large
`torque to maintain a low speed might have the same
`power requirement as a vehicle requiring a small torque
`to maintain a high speed. Because Ibaraki is concerned
`only with power, its algorithm would presumably select
`the same operating mode in both instances. This is in
`stark contrast to the '634 and '347 patents, which require
`
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`Page 18 of 23
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`

`

`Case: 17-1442 Document: 59-2 Page: 19 Filed: 02/01/2018
`
`(20 of 26)
`
`PAICE LLC v. FORD MOTOR COMPANY
`
`5
`
`the claimed vehicle to operate in different modes when the
`vehicle's torque requirements are different.
`See '634
`patent, col. 12, line 49 through col. 13, line 4; id. col. 17,
`lines 45-50; id. col. 18, lines 35-40; id. col. 19, lines 45-
`57; id. col. 35, lines 63 through col. 36, line 43; id. col. 38,
`lines 9-22, 51-54.
`In reaching a contrary conclusion, the Board placed
`significant weight on Ford's expert's testimony that, at a
`particular speed, Ibaraki determines which operating
`mode to select based solely on torque. See Ford Motor Co.
`v. Paice LLC, IPR2015-00722, 2016 WL 5636817, at *9
`(P.T.A.B. Sept. 26, 2016) (IPR 722 Final Written Deci(cid:173)
`sion). In his declaration, Ford's expert selected an arbi(cid:173)
`trary speed in Ibaraki's Figure 11, "V1," and determined
`the torque value, "SP," of Ibaraki's power curve B1 corre(cid:173)
`sponding to that speed:
`
`FIG. 11
`
`ENGINE-MOTOR ORIVE mode when Tu> C1
`
`ENGINE ORNE mode when SP< T"' i; C,.
`
`MOTOR DRIVE mode when Tu < SP
`
`Id.; see also No. 17-1263, J.A. 7255 (Ford's expert testify(cid:173)
`ing that B1 is "one particular setpoint ... at [a] particular
`vehicle speed"). Ford's expert then concluded that Ibaraki
`teaches which operating mode to select at the designated
`speed based on whether the torque is greater than or less
`than the corresponding "SP" torque value.
`In other
`words, Ford's expert's analysis-which the Board adopted
`as its own-was predicated on his evaluating Ibaraki's
`Figure 11 at a particular speed. This analysis is flawed
`
`BMW1007
`Page 19 of 23
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`

`

`Case; 17-1442
`
`Document: 59-2 Page: 20
`
`Filed: 02/01/2018
`
`(21 of 26)
`
`6
`
`PAICE LLC v. FORD MOTOR COMPANY
`
`for several reasons, and thus lends no support to the
`Board's findings with regard to Ibaraki.
`
`First, it is not grounded in-and, in fact, is incon(cid:173)
`sistent with-Ibaraki's disclosure. Nothing in Ibaraki
`suggests that its controller makes operating mode deci(cid:173)
`sions by considering the torque at a particular speed. To
`the contrary, as described above, Ibaraki discloses making
`such determinations by considering power. The Board's
`analysis, which attempts to separate out the torque and
`speed components from Ibaraki's power parameter, finds
`insufficient support in Ibaraki itself.
`
`Second, the Board's analysis is inconsistent with the
`'634 and '34 7 patent claims and specifications. Neither
`the claims nor the specifications justify comparing road
`load to the setpoint at a particular speed.
`In fact, the
`claims at issue are silent as to speed, which makes sense
`in view of the patents' statements that road load is "inde(cid:173)
`pendent of vehicle speed."
`'634 patent, col. 12, lines 55-
`61; see also id. col. 65, lines 16-30 (claim 80 referring to "a
`setpoint" and "the setpoint," not multiple setpoints to
`Further, the patents'
`account for different speeds). 1
`Figure 7(a) shows that the operating mode decisions are
`based
`only
`on
`
`1 Claim 12 of the '634 patent and claim 5 of the '34 7
`patent specify that the setpoint may be varied "as a
`function of speed of the engine," '634 patent, col. 59, lines
`3-5, but the claims at issue lack such a limitation, sug(cid:173)
`gesting that the setpoints in the claims are not varied as a
`function of speed.
`
`BMW1007
`Page 20 of 23
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`

`

`Case: 17-1442 Document: 59-2 Page: 21
`
`Filed: 02/01/2018
`
`(22 of 26)
`
`PAICE LLC v. FORD MOTOR COMPANY
`
`7
`
`the road load torque, and not on speed:
`
`1 . 1 s% 1 - - - - - - - - t - - 1 - - - - - - - ,= - - - - - r -
`100%1--------+---+---~.;i---;--;-
`
`I ------~~~,---_,ff,~
`100% 1-
`
`ht;. 7M
`!W~O LOflO f\C..'I.
`l)f t•Wi, Hl<,l~'e
`illRCl.\ll:: O\l"ll'U'T
`(•/, 1.\1(1\
`
`Id. at Fig. 7; id. col. 38, line 62 through col. 39, line 40; see
`also id. Fig. 9. This figure shows that the electric-motor(cid:173)
`only mode is selected when the road load is between O and
`30% of maximum torque output, the engine-only mode is
`selected when the road load is between 30% and 100% of
`maximum torque output, and the hybrid mode is selected
`when the road load is above 100% maximum torque
`output. Noticeably missing from the figure and accompa(cid:173)
`nying description in the specifications is any reference to
`speed's role in the f,llgorithm. Thus, Ford's expert's analy(cid:173)
`sis of whether Ibaraki renders the claims at issue obvious
`is inconsistent with the '634 and '34 7 patent claims and·
`specifications, and, as such, is not entitled to deference.
`See Homeland Housewares, LLC v. Whirlpool Corp., 865
`F.3d 1372, 1378 (Fed. Cir. 2017) (noting, in