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
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
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`Inter Partes Review No.: To Be Assigned
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`U.S. Patent No. 7,104,347 K2
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`___________________
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`DECLARATION OF DR. GREGORY W. DAVIS
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`Table of Contents
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`I.
`II.
`III.
`IV.
`
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ..............11
`RELEVANT LEGAL STANDARDS ....................................................18
`QUALIFICATIONS OF ONE OF ORDINARY SKILL IN THE ART .20
`STATE OF THE ART ...........................................................................21
`A.
`“Series” Hybrid Vehicle...............................................................25
`B.
`“Parallel” Hybrid Vehicle ............................................................28
`C.
`Hybrid Vehicle “Control Strategies” ............................................40
`D. Monitoring Driving Patterns ........................................................52
`E.
`Turbochargers ..............................................................................54
`V.
`THE ‘347 Patent ....................................................................................63
`A.
`Effective Filing Date of the ‘347 Patent .......................................63
`B.
`Prosecution History of the ‘347 Patent .........................................65
`VI.
`CLAIM CONSTRUCTIONS .................................................................70
`VII. OVERVIEW OF THE PRIOR ART ......................................................72
`A.
`U.S. Patent No. 5,343,970 to Severinsky......................................72
`B.
`Bumby .........................................................................................74
`C.
`U.S. Patent No. 5,586,613 to Ehsani ............................................96
`D.
`Graf – U.S. Patent No. 6,188,945 .................................................98
`E. Ma – International Application Publication No. WO 92/15778 ....99
`F.
`Nii – United States Patent No. 5,650,931 .....................................99
`VIII. GROUND 1A – CLAIM 24 IS OBVIOUS OVER SEVERINSKY ’970
`IN VIEW OF GRAF ............................................................................ 100
`IX.
`IN VIEW OF MA ................................................................................ 159
`
`GROUND 1B – CLAIM 33 IS OBVIOUS OVER SEVERINSKY ’970
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`CHALLENGED CLAIMS OF THE ‘347 PATENT AND PROPOSED
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`GROUND 1C – CLAIM 38 IS OBVIOUS OVER SEVERINSKY ’970
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`GROUND 2A – CLAIM 2 IS OBVIOUS OVER SEVERINSKY ’970 IN
`
`X.
`IN VIEW OF EHSANI ........................................................................ 185
`XI.
`VIEW OF EHSANI AND GRAF ........................................................ 190
`A. Motivation to Combine .............................................................. 190
`B.
`Claim 2 ...................................................................................... 194
`XII. GROUND 2B – CLAIM 11 IS OBVIOUS OVER SEVERINSKY ’970
`IN VIEW OF EHSANI AND MA........................................................ 220
`XIII. GROUND 2C – CLAIM 17 IS OBVIOUS OVER SEVERINSKY ’970
`IN VIEW OF EHSANI ........................................................................ 224
`XIV. GROUND 3A – CLAIM 24 IS OBVIOUS OVER SEVERINSKY IN
`VIEW OF NII ...................................................................................... 228
`XV. GROUND 3B – CLAIM 2 IS OBVIOUS OVER SEVERINSKY ’970 IN
`VIEW OF EHSANI IN AND NII ........................................................ 232
`XVI. GROUND 4A – CLAIMS 2 AND 24 ARE OBVIOUS OVER BUMBY
`IN VIEW OF GRAF ............................................................................ 233
`A.
`Claim 2 ...................................................................................... 233
`B.
`Claim 24 .................................................................................... 263
`XVII. GROUND 4B – CLAIMS 11 AND 33 ARE OBVIOUS OVER BUMBY
`IN VIEW OF MA ................................................................................ 294
`A.
`Claim 11 .................................................................................... 294
`B.
`Claim 33 .................................................................................... 324
`XVIII. GROUND 4C – CLAIMS 17 AND 38 ARE OBVIOUS OVER BUMBY
`IN VIEW OF EHSANI ........................................................................ 326
`A.
`Claim 17 .................................................................................... 326
`B.
`Claim 38 .................................................................................... 329
`XIX. OBJECTIVE EVIDENCE OF NONOBVIOUSNESS ......................... 334
`XX. OPINIONS FROM MY REPLY DECLARATIONS IN IPR2014-00571
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`AND IPR2014-00579 .......................................................................... 334
`A.
`ARGUMENTS REGARDING SEVERINSKY ’970 ........................... 334
`B.
`ARGUMENTS REGARDING BUMBY ............................................. 347
`XXI. CONCLUSION ................................................................................... 393
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`RESPONSE TO PATENT OWNERS’ PREVIOUS
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`RESPONSE TO PATENT OWNERS’ PREVIOUS
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`LIST OF EXHIBITS
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`
`Exhibit No. Description of Exhibit
`
`BMW1001
`
`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”)
`
`BMW1014
`
`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
`
`
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`BMW 1008
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`Exhibit No. Description of Exhibit
`(Sep. 1985), 265-79 (“Bumby-I” or “Bumby I”)
`
`BMW1015
`
`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”)
`
`BMW1016
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`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”)
`
`BMW1017
`
`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”)
`
`BMW1018
`
`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”)
`
`BMW1021
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`International Application Publication No. WO 92/15778 (“Ma”)
`
`BMW1022 U.S. Patent No. 5,650,931 (“Nii”)
`
`BMW1023
`
`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
`
`BMW1024
`
`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,
`SAE/SP-98/1359, Swan, J. et al., “Design and Development of
`
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`BMW 1008
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`Exhibit No. Description of Exhibit
`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)
`
`BMW1027
`
`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)
`
`BMW1029
`
`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)
`
`BMW1030
`
`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)
`
`BMW1031
`
`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)
`
`BMW1033
`
`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)
`
`BMW1035
`
`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)
`
`BMW1036 Masding, P.W., et al., “A microprocessor controlled gearbox for use
`in electric and hybrid-electric vehicles,” Transactions of the Institute
`
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`BMW 1008
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`Exhibit No. Description of Exhibit
`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
`
`BMW1040
`
`Ehsani, M. et al., “Propulsion System Design of Electric Vehicles,”
`Texas A&M University, Department of Electrical Engineering
`(1996), 7-13
`
`BMW1041
`
`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
`
`BMW1043
`
`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
`
`BMW1048
`
`Masding, P.H., “Some drive train control problems in hybrid i.c
`engine/battery electric vehicles,” Durham theses, Durham
`University (1988) (“Masding Thesis”)
`
`
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`Exhibit No. Description of Exhibit
`
`BMW1049
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`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”)
`
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`I, Gregory Davis, hereby declare as follows:
`
`1.
`
`I am making this declaration at the request of Bayerische Motoren
`
`Werke Aktiengesellschaft and BMW of North America, LLC in the matter of Inter
`
`Partes Review of U.S. Patent No. 7,104,347 (“the ‘347 Patent”) to Severinsky et
`
`al.
`
`2.
`
`I am being compensated for my work in this matter at a rate of
`
`$375/hour. My compensation in no way depends on the outcome of this
`
`proceeding.
`
`3.
`
`In preparation of this declaration and in forming the opinions
`
`expressed below, I have considered:
`
`(1) The documents listed in the Exhibit List above as well as
`
`additional patents and documents referenced herein;
`
`(2) The relevant legal standards, including the standard for
`
`obviousness provided in KSR International Co. v. Teleflex, Inc., 550 U.S.
`
`398 (2007), and any additional documents cited in the body of this
`
`declaration; and
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`(3) My knowledge and experience based upon my work and study
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`in this area as described below.
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`4.
`
`I have submitted opinions regarding the ‘347 Patent in previous IPRs,
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`including in IPR2014-00571 and IPR2014-00579. In those IPRs, I provided my
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`opinions regarding claims 1, 7 and 23 of the ‘347 Patent (among other claims).
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`Below, I repeat my opinions regarding those claims. I also provide additional
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`opinions regarding claims 2, 11, 17, 24, 33 and 38.
`
`I.
`
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
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`5.
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`I have provided my full background in the curriculum vitae that is
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`attached as BMW1009.
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`6.
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`I received my Bachelor of Science Degree in Mechanical Engineering
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`from the University of Michigan, Ann Arbor in 1982 and my Master of Science
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`Degree in Mechanical Engineering from Oakland University in 1986.
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`7.
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`I further am a licensed “Professional Engineer” in the state of
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`Michigan.
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`8.
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`As shown in my resume, most of my career has been in the field of
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`automotive engineering that includes numerous positions in both the academia and
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`industry settings.
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`9.
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`After receiving my Master’s degree, I began work at General Motors
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`where I had several assignments
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`involving automotive design, advanced
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`engineering and manufacturing. Over the course of my years at General Motors, I
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`was involved in all aspects of the vehicle design process, from advanced research
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`and development to manufacturing.
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`10. Specifically, my work at General Motors included aspects of engine
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`and fuel system design relating to the production of fuel sending units, and
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`modeling the effects of fuels and EGR on vehicle performance and emissions.
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`11. After leaving General Motors, I returned to the University of
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`Michigan where I was awarded a Ph.D. in Mechanical Engineering in 1991. My
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`thesis was directed
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`to automotive engineering
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`including
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`the design and
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`development of systems and models for understanding combustion in automotive
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`engines.
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`12. Upon completion of my Ph.D., I joined the faculty of the U.S. Naval
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`Academy where I led the automotive program in mechanical engineering. As part
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`of my responsibilities while at the Academy, I managed the laboratories for
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`Internal Combustion Engines and Power Systems.
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`13.
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`I further taught automotive and mechanical engineering courses while
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`at the U.S. Naval Academy. Some of the courses I taught were directed
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`specifically to design and operation of internal combustion engines in both
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`conventional and hybrid vehicles. I also taught courses pertaining to the design
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`and operation of hybrid vehicles.
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`14.
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`In addition to my work at the U.S. Naval Academy, I also served as
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`faculty advisor for the USNA Society of Automotive Engineers (SAE). During
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`this time I served as project director for the research and development of hybrid
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`electric vehicles.
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`15. My work with regards to hybrid electric vehicles included extensive
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`design and modifications of the powertrain, chassis, and body systems. This
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`development work included the design, modifications and implementation of
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`alternate fuel delivery and injection systems.
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`16. The hybrid electric vehicle work that I worked on at the U.S. Naval
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`Academy was published in a bound 1994 SAE special publication. (BMW1023 at
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`6-11).
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`17. While at the Naval Academy, I also taught classes in mechanical
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`engineering at Johns Hopkins University.
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`18.
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`In 1995, I joined the faculty of Lawrence Technological University
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`where I served as Director of the Master of Automotive Engineering Program and
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`Associate Professor in the Mechanical Engineering Department.
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`19. The master’s program in automotive engineering is a professionally
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`oriented program aimed at attracting and educating practicing engineers in the
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`automotive industry.
`
`20.
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`In addition
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`to
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`teaching and designing
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`the curriculum
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`for
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`undergraduate and graduate students, I also worked in the automotive industry
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`closely with Ford Motor Company on the development of a hybrid electric vehicle.
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`21. Specifically, I served as project director on a cooperative research
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`project to develop and design all aspects of a hybrid electric vehicle. While in
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`many instances we used standard Ford components, we custom designed many
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`automotive subsystems. As part of this project, we completely redesigned and
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`replaced the existing powertrain including the fuel storage, delivery and injection
`
`systems. We also did analytical and actual testing of the systems.
`
`22. While at Lawrence Technological University, I also served as the
`
`faculty advisor on several student based hybrid vehicle competitions that were
`
`sponsored primarily by Ford Motor Company, General Motor Company, and
`
`Chrysler Corporation.
`
`23. These competitions required the complete design of a hybrid vehicle,
`
`including the design of the power train. These competitions also required the
`
`complete design of the software and hardware required to control the hybrid
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`vehicle.
`
`24. Attached as Exhibits BMW1024 and BMW1025 are the competition
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`papers that were submitted for the 1996 and 1997 competitions for which I served
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`as the faculty advisor. (BMW1024; BMW1025).
`
`25. During my time at Lawrence Technological University, I further
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`served as advisor for 145 automotive graduate and undergraduate project students.
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`Many of the graduate students whom I advised were employed as full time
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`engineers in the automotive industry. This service required constant interaction
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`with the students and their automotive companies which included the major
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`automotive manufacturers (e.g., Ford, Chrysler, General Motors, Toyota, etc).
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`along with many automotive suppliers, including those that supply fuel delivery
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`systems (e.g., Denso, Delphi and Bosch).
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`26. Currently, I am employed as a Professor of Mechanical Engineering
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`& Director of the Advanced Engine Research Laboratory (AERL) at Kettering
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`University—formerly known as “General Motors Institute.”
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`27. At Kettering University I develop the curriculum and teach courses in
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`mechanical and automotive engineering to both undergraduate and graduate
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`students.
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`28. Since coming to Kettering, I have advised over 90 undergraduate and
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`graduate theses in automotive engineering. Further, I actively pursue research and
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`development activities within automotive engineering.
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`29. My work requires constant involvement with my students and their
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`sponsoring automotive companies which have included not only those mentioned
`
`above, but also Walbro, Nissan, Borg Warner, FEV, Inc., U.S. Army Automotive
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`Command, Denso, Honda, Dana, TRW, Tenneco, Navistar, and ArvinMeritor. For
`
`example, I routinely visit automotive manufacturing plants and Centers for
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`Research & Development, meeting and working with engineers. These interactions
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`include the Flint GM Engine plant, BorgWarner, Horiba, the Environmental
`
`Protection Agency Vehicle Testing Laboratory, etc.
`
`
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`30. As is further shown by my curriculum vitae, I have published over 80
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`peer reviewed technical articles and presentations involving topics in automotive
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`engineering.
`
`31. Automotive and mechanical engineering topics covered in these
`
`articles include development of hybrid vehicles, mechanical design and analysis of
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`components and systems, vehicle exterior design
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`including aerodynamics,
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`development of alternative fueled vehicles and fuel systems, thermal and fluid
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`system design and analysis, selection and design of components and sub-systems
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`for optimum system integration, and system calibration and control.
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`32.
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`I have also chaired or co-chaired sessions in automotive engineering
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`at many
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`technical conferences
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`including sessions
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`involving powertrain
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`development and control in automotive engineering.
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`33. For my work, I have received numerous awards. In 2002, for example,
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`I was awarded the SAE International Award for Excellence in Oral Presentation
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`and the Powertrain & Fluid Systems Conference. In 2006, I was awarded the SAE
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`International Outstanding Section Member Award, in Recognition of Extraordinary
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`Achievement by a Mid-Michigan Section Member.
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`34. Additionally, while acting as director of the AERL, I am responsible
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`for numerous laboratories and undergraduate and graduate research projects, which
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`include On-road and Off-road engine and chassis testing laboratories. Projects
`
`
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`
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`have included the design and development of fuel injection systems for off-road
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`vehicles, fuel compatibility studies of vehicle storage and delivery systems,
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`modification of fuel delivery systems to accommodate alternative fuels, and other
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`extensive modifications and development of vehicular powertrains. Testing
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`services include both laboratory and on-road data acquisition & control of vehicles
`
`and systems.
`
`35.
`
`I also serve as lead faculty advisor to the Society of Automotive
`
`Engineers’ (“SAE”) Student Branch where we annually design and compete in the
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`Formula, Baja, AeroDesign, and Clean snowmobile challenges (I directly advise
`
`the Clean Snowmobile and AeroDesign Challenge teams) where we design, and
`
`manufacture vehicles and systems, including Powertrain and Body/Chassis
`
`systems.
`
`36.
`
`I have also held numerous
`
`leadership positions within SAE
`
`International. In addition to serving and chairing many committees, I have served
`
`as an elected Director on the SAE International Board of Directors, as a member
`
`of, and the Chair of the SAE International Engineering Education Board, and as a
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`Director of the SAE International Publications Board.
`
`37.
`
`In addition to my academic work, I have consulted extensively in the
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`automotive industry. For example, since 2003 I have been an instructor in SAE’s
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`Continuing Professional Development Programs where I have worked to develop
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`and teach professional development courses directed to automotive powertrain
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`systems and controls, braking, handling, chassis, and exterior body systems for
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`SAE at its headquarters and at company locations. Engineers and managers from
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`all major original equipment manufacturers and suppliers, governmental regulatory
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`agencies, as well as other professionals involved in the automotive industry world-
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`wide have attended these courses. I also develop and teach continuing professional
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`development courses, working directly with the sponsoring companies.
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`38. Finally, I am a member of the Advisory Board of the National
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`Institute for Advanced Transportation Technology at the University of Idaho. In
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`addition to advising, I also review funding proposals and project reports of the
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`researchers funded by the center.
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`39.
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`I have also submitted expert declarations in several IPRs concerning
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`hybrid vehicle technologies, including in IPR2014-00571 and IPR2014-00579, in
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`which I understand the Board agreed with my opinions in decisions that were
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`subsequently affirmed on appeal.
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`II. RELEVANT LEGAL STANDARDS
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`40.
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`I have been asked to provide opinions on the claims of the ‘347 Patent
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`in light of the prior art.
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`41.
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`It is my understanding that a claimed invention is unpatentable under
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`35 U.S.C. § 102 if a prior art reference teaches every element of the claim.
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`Further, it is my understanding that a claimed invention is unpatentable under 35
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`U.S.C. § 103 if the differences between the invention and the prior art are such that
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`the subject matter as a whole would have been obvious at the time the alleged
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`invention was made to a person having ordinary skill in the art to which the subject
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`matter pertains. I also understand that an obviousness analysis takes into account
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`factual inquiries including the level of ordinary skill in the art, the scope and
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`content of the prior art, and the differences between the prior art and the claimed
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`subject matter.
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`42.
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`It is my understanding that the Supreme Court has recognized several
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`rationales for combining references or modifying a reference to show obviousness
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`of the claimed subject matter. Some of these rationales include the following:
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`combining prior art elements according to known methods to yield predictable
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`results; simple substitution of one known element for another to obtain predictable
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`results; a predictable use of prior art elements according to their established
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`functions; applying a known technique to a known device to yield predictable
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`results; choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success; and some teaching, suggestion, or motivation in
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`the prior art that would have led one of ordinary skill to modify the prior art
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`reference or to combine prior art reference teachings to arrive at the claimed
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`invention.
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`III. QUALIFICATIONS OF ONE OF ORDINARY SKILL IN THE ART
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`43.
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`I have reviewed the ‘347 Patent, those patents cited in the ‘347 Patent,
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`as well as the prior art documents. Based on this review and my knowledge of
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`hybrid electric vehicles, including my work on multiple hybrid vehicles during the
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`course of the 1990’s, it is my opinion that a person of ordinary skill in the art
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`would have either: (1) a graduate degree in mechanical, electrical or automotive
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`engineering with at least some experience in the design and control of combustion
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`engines, electric or hybrid electric vehicle propulsion systems, or design and
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`control of automotive transmissions, or (2) a bachelor’s degree in mechanical,
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`electrical or automotive engineering and at least five years of experience in the
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`design of combustion engines, electric vehicle propulsion systems, or automotive
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`transmissions.
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`44.
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`I understand that this determination is made at the time of the
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`invention, which I understand that Patent Owners purport as being no later than the
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`September 14, 1998 filing of U.S. Provisional Application No. 60/100,095 (“the
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`’095 Provisional,” BMW1026) for claims 17 and 38, no later than March 1, 1999
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`for claims 11 and 33, and no later than March 9, 1999 for claims 2 and 24. My
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`opinion on the qualifications would not change over this short period. As I also
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`discussed in my “Qualifications and Professional Experience” above, I am familiar
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`with the level of knowledge and the abilities of a person having ordinary skill in
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`the art at the time of the claimed invention based on my experience in the industry
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`(both as an employee and as a professor).
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`45.
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`I understand that Patent Owners proposed in previous IPRs that a
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`person of skill in the art would be a person who would have a combination of
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`experience and education in the design and development of mechanical systems or
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`control systems, typically a Bachelor of Science degree in mechanical engineering
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`or electrical engineering or similar field plus at least three years of experience in
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`designing, implementing, testing, teaching, or otherwise working with automotive
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`systems, control system logic, or a related field.
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`46.
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`I do not believe that the differences between this proposed level of
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`skill and the one I have proposed are significant, and they in any event do not
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`affect the opinions I have set forth below.
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`IV. STATE OF THE ART
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`47. Hybrid-Electric Vehicles (hybrid vehicle) were conceived over 100
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`years ago in an attempt to combine the power capabilities of electric motors and
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`internal combustion engines1 (ICE) to satisfy all the driver demand required to
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`propel a vehicle. (BMW1027 at 11).
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`48.
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`I am aware that one of the first functioning hybrid vehicles was
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`1 An engine could also be referred to as a “heat engine” and is commonly known
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`to be a part of the overall “Auxiliary Power Unit” of a hybrid vehicle (i.e., “APU”).
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`designed and built by Justus Entz in May 1897. (BMW1027 at 11-13).
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`49.
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`I am also aware that hybrid vehicle patents extend as far back as 1909
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`for U.S. Patent No. 913,846 to Pieper that was granted for a “Mixed Drive Auto
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`Vehicle.”
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`50.
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`I am aware that the hybrid vehicle disclosed by the Pieper patent was
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`likewise assembled as a functioning hybrid vehicle that was publically used.
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`(BMW1027 at 13-14).
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`51.
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`I am also aware of well-known hybrid vehicles that were built and
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`publically used by Baker and Woods in 1917. (BMW1027 at 21-23).
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`52. While these early hybrid vehicles did not include the complex
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`microprocessor based control strategies found in present-day hybrid vehicles, it has
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`always been known that one goal of hybrid vehicles is the possibility of operating
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`the engine at its “optimum efficiency.”
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`From almost
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`the beginning of
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`the Automotive Age, various
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`combinations of drive systems have been tried in order to achieve
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`vehicle performance characteristics superior to those that can be
`obtained using a single type of drive. These efforts have been made
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`in the name of many worthwhile goals such as increased vehicle
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`acceleration capability, audible noise reduction, operation of an
`engine or turbine at optimum efficiency, reduction of noxious
`emissions, and improved fuel economy.
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`(BMW1028 at 1, emphasis added).
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`53.
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`It was not until events in the 1970’s, however, that a renewed interest
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`in hybrid vehicles emerged as a means to combat the U.S. dependency on oil and
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`to meet increased air pollution reduction goals. (See e.g., BMW1029 at 3;
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`BMW1030 at 3).
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`54. For instance, in 1976 the U.S. government enacted Public Law 94-413
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`pertaining to the “Electric and Hybrid Vehicle Research, Development, and
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`Demonstration Act” that was to “encourage and support accelerated research into,
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`and development of electric and hybrid vehicle technologies.” (BMW1031 at 4).
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`55. As a result of this law, multiple fully functional hybrid and electric
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`vehicles were developed by automotive corporations. (BMW1031 at 4).
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`56.
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`I am specifically aware that Ford Motor Company and Toyota Motor
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`Company invested considerable time and money into developing both hybrid and
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`electric vehicles. (See e.g., BMW1028 at 1; BMW1032 at 4).
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`57. Further collegiate competitions intensified during the 1990’s starting
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`with the 1993-1995 Ford Hybrid Electric Vehicle Challenge. The 1993 Ford
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`Hybrid Electric Vehicle Challenge is attached as Exhibit BMW1023. By 1994
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`these c