UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT and
`BMW OF NORTH AMERICA, LLC,
`Petitioners,
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`v.
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`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owners.
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`Case IPR2020-00994
`Patent 7,104,347
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`PATENT OWNERS’ SUR-REPLY
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`Attorney Docket: 3 6351-0004IP1
`Case IPR2020-00994
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`I
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`1—:
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`Introduction ................................................................................................... 1
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`TABLE OF CONTENTS
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`BMW’s Grounds Fail To Demonstrate Obviousness ................................ 1
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`A.
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`Grounds 3a and 3b — Severinsky in View of Nii Does Not Render
`Claims 2 and 24 Obvious ...................................................................... 1
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`l. The prior art does not teach or suggest “varying said setpoint
`accordingly” ............................................................................... 2
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`2. BMW’s reasons to combine are flawed ..................................... 9
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`B.
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`Grounds la and 2a — Severinsky in View of Graf Does Not Render
`Claims 2 and 24 Obvious .................................................................... 16
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`1. Severinsky in View of Graf does not teach or suggest “varying
`said setpoint accordingly” ........................................................ 16
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`2. Severinsky in view of Graf does not teach or suggest
`“rnonitor[ing] patterns of vehicle operation over time” ........... 17
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`Grounds 1b and 2b — Severinsky in View of Ma Does Not Render
`Claims 11 and 33 Obvious .................................................................. 19
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`Grounds 1c and 2c - Severinsky in View of Ehsani Does Not Render
`Claims 38 and 17 Obvious .................................................................. 22
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`l. Severinsky in View of Ehsani does not teach or suggest
`“control]] such that when said clutch is engaged the speeds of
`the first and second output shafts are substantially equal” (claim
`38) ............................................................................................. 22
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`2. Severinsky in View of Ehsani does not render claim 17 obvious
`.................................................................................................. 23
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`Ground 4a — The Bumby References in View of Graf Do Not Render
`Claims 2 and 24 Obvious .................................................................... 25
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`Ground 4b — The Bumby References in View of Ma Do Not Render
`Claims 11 and 33 Obvious .................................................................. 26
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`Ground 40 — The Bumby References in View of Ehsani Do Not
`Render Claims 38 and 17 Obvious ..................................................... 26
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`1. The Bumby References in View of Ehsani do not teach or
`suggest “control[] such that when said clutch is engaged the
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`C.
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`D.
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`E.
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`F.
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`G.
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`Attorney Docket: 36351-0004IP1
`Case IPR2020-00994
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`speeds of the first and second output shafts are substantially
`equal” (claim 3 8) ...................................................................... 26
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`2. The Bumby References in View of Ehsani do not render claim
`17 obvious ................................................................................ 27
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`IV. Conclusion .................................................................................................... 28
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`ii
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`Attorney Docket: 36351-0004IP1
`Case IPR2020-00994
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`EXHIBIT LIST
`
`Exhibit No.
`PAICE 2001
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`PAICE 2002
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`PAICE 2003
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`PAICE 2004
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`PAICE 2005
`PAICE 2006
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`PAICE 2007
`PAICE 2008
`PAICE 2009
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`PAICE 2010
`PAICE 2011
`PAICE 2012
`PAICE 2013
`PAICE 2014
`PAICE 2015
`PAICE 2016
`PAICE 2017
`PAICE 2018
`PAICE 2019
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`PAICE 2020
`
`Description
`Patent Owners’ Preliminary Response to Petition for IPR in
`IPR2014-00571 Dated July 11, 2014
`Patent Owner’s Response to Petition in IPR2014-00884 dated
`March 10, 2015
`Decision on Institution in IPR2015-00794 dated November 2,
`2015
`Decision on Institution in IPR2015-00795 dated November 2,
`2015
`Petition for IPR in IPR2014-00571 dated April 4, 2014
`Response to Interrogatory 27, BMW Responses to PAICE 1st
`Set of Interrogatories [1-28] dated May 6, 2020
`Paice/Toyota Complaint dated June 8, 2004
`Paice/Toyota Amended Complaint dated July 3, 2007
`Scheduling Order [Docket No. 36] from 1:19-cv-03348-SAG
`(USDC-DMD) dated February 25, 2020
`Docket Navigator Statistics – Top Patents by Number of IPRs
`Ex. E to BMW Invalidity Contentions dated June 8, 2020
`Ex. C to BMW Invalidity Contentions dated June 8, 2020
`IPR2017-00226 Petition dated November 14, 2016
`UK Patent Application GB 2,318,105 Cover Page
`Printout of http://www.paicehybrid.com/licensing-agreements/
`Declaration of Mahdi Shahbakhti, Ph.D.
`Curriculum Vitae of Mahdi Shahbakhti, Ph.D.
`Bosch Gasoline-engine Management
`Selected Pages From John Heywood, Internal Combustion
`Engines Fundamentals
`Selected Pages From Merhdad Ehsani et al, Modern Electric,
`Hybrid Electric, and Fuel Cell Vehicles
`PAICE 2021 Matthew Cuddy et al., Analysis of the Fuel Economy Benefit
`of Drivetrain Hybridization
`Selected Pages From Draft Technical Assessment Report:
`Midterm Evaluation of Light-Duty Vehicle Greenhouse Gas
`Emission Standards and Corporate Average Fuel Economy
`Standards for Model Years 2022-2025
`Selected Pages From Assessment of Fuel Economy of Fuel
`Economy Technologies for Light Duty Vehicles
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`PAICE 2022
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`PAICE 2023
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`iii
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`PAICE 2024
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`PAICE 2025
`PAICE 2026
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`PAICE 2027
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`PAICE 2028
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`PAICE 2029
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`Case IPR2020-00994
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`Selected Pages From Richard Stone, Introduction to Internal
`Combustion Engines
`Heinz Heisler, Advanced Vehicle Technology, SAE
`Hitoshi Inoue et al., A Performance Improvement in Idle-Speed
`Control System with Feedforward Compensation for the
`Alternator Load Current, SAE
`Satoru Watanabe, Development of Model-Following Idle
`Speed Control System Incorporating Engine Torque Models,
`SAE
`Guzzella et al., Introduction to Modeling Control of Internal
`Combustion Engine Systems
`June 16, 2021 Deposition Transcript of Dr. Gregory Davis
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`iv
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`Case IPR2020-00994
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`I.
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`Introduction
`BMW’s reply confirms that all challenged claims of the ’347 patent are
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`patentable. Rather than hold fast to its Petition, BMW improperly presents a host
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`of new and sundry arguments and evidence (consisting of new exhibits and 85
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`pages of new expert testimony) in an effort to patch over the errors and gaps in its
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`obviousness case. Despite BMW’s “kitchen sink” approach, BMW cannot
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`squarely address the salient issues in this proceeding. Significant gaps remain in
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`the prior art, and BMW’s incorrect, oversimplified, and unexplained reasons to
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`combine cannot demonstrate obviousness.1
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`II. BMW’s Grounds Fail To Demonstrate Obviousness
`A. Grounds 3a and 3b – Severinsky in View of Nii Does Not Render
`Claims 2 and 24 Obvious
`Claims 2 and 24 specifically require “varying said setpoint”—a parameter
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`the hybrid controller uses for selecting operating modes—based on “monitoring
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`patterns of vehicle operation over time.” BMW cannot show that either Severinky
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`or Nii vary anything resembling a “setpoint” or even contemplate how the
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`controller could vary such a parameter based on monitored vehicle patterns over
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`1 As explained below, BMW’s unsupported and inappropriate aspersions of Dr.
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`Shahbakhti are nothing more than empty rhetoric that should be set aside.
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`1
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`time. Severinsky does not vary any alleged “setpoint,” and Nii is concerned with
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`setting the engine at a constant output for battery charging.
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`In lieu of evidence, BMW offers sweeping statements about how pattern
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`information is good for enhancing vehicle efficiency. But the claims are not so
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`broad, and BMW cannot satisfy its burden by disregarding key claim elements.
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`1.
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`The prior art does not teach or suggest “varying said
`setpoint accordingly”
`Neither Severinsky nor Nii discloses a hybrid controller that varies the
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`“setpoint,” and BMW cannot fill this gap with unsupported expert testimony.
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`BMW does not dispute that Nii fails to disclose a “setpoint” and that Nii’s
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`teachings are unrelated to selecting between electric motor and engine propulsion
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`modes. Moreover, common sense and record evidence belie BMW’s assertion that
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`Seversinky discloses varying the claimed setpoint.
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`First, BMW again incorrectly argues that Severinsky varies the setpoint by
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`“operating its engine ‘outside its most fuel efficient operating range, on occasion.’”
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`BMW Reply, 8 (quoting BMW1013, 18:23-25.) BMW confuses the claimed
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`setpoint and the actual operating point of the engine. POR, 24-26; PAICE2016,
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`¶¶124-26. The “setpoint” is a parameter used by the controller to select the mode
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`for operating the engine or motor. (PAICE2029 (Davis Tr.), 36:17 – 37:2, 38:1-7.)
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`For example, as shown by Figure 9, the controller compares road load to the
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`setpoint to select motor propulsion mode or engine propulsion mode. POR, 26;
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`2
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`PAICE2029, 14:13 – 15:5. It does not compare road load to the actual operating
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`point of the engine as Dr. Davis admitted. (PAICE2029, 49:12-17.)
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`The operating point of the engine—which BMW confuses with the
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`“setpoint”—is the amount of torque the engine is actually producing at a given
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`time. POR, 24-26. BMW’s reply does not dispute this,2 making BMW’s
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`continued reliance on the engine’s output all the more surprising. Dr. Davis
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`admitted that the 30% MTO setpoint (in red below) in Figure 7 of the ’347 patent
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`stays fixed while the actual operating point of the engine, i.e., the “Engine Torque
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`Output” (shown in the dashed lines) fluctuates above and below the setpoint.
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`(PAICE2029, 17:14 – 18:6; see also id., 15:9 – 16:1, 16:10 – 17:13; PAICE2016,
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`¶126.)
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`2 Dr. Davis admitted that i) claim 23 compares road load to the “setpoint” and not
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`the actual operating point of the engine (PAICE2029, 48:5-15) and ii) the setpoint
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`is not the same as the engine’s torque output (id., 47:13-19, 42:12 – 43:15).
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`3
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`BMW1001 (’347 patent) at Fig. 7(a) (annotated).
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`Moreover, the claims distinguish between the operating point of the engine
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`(in blue) and the setpoint (in red).
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`41. The method of claim 23, wherein said engine can be operated at
`torque output levels less than SP under abnormal and transient
`conditions ….
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`BMW1001, 62:48-52 (emphasis added). Severinsky’s choice to operate the engine
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`below the 60% MTO setpoint does not mean that Severinsky varies the setpoint. It
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`simply means Severinsky operates the engine inefficiently in certain circumstances
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`(i.e., below 60% MTO). POR, 25. BMW cannot show otherwise.
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`Second, contrary to BMW’s assertion, Severinsky’s separate on/off speed
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`thresholds are not evidence of varying the setpoint. Severinsky’s upper speed
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`range (i.e., “30-35 mph”) and lower speed range (i.e., “20-25 mph”) are two
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`4
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`separate speed thresholds much like a thermostat may turn an air conditioner on at
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`75 degrees and turn the air conditioner off at 74 degrees. POR, 20; PAICE2016,
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`¶¶110-11. BMW admits these speed thresholds are “factory-set parameters”
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`(Reply, 3)—they are written into the source code and do not change. (PAICE2016,
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`¶¶108-11.)
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`BMW’s insinuation that Severinsky’s controller “switch[es] between two (or
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`more) values that represent the ‘setpoint’ at any given time” is wrong. Reply, 10.
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`Severinsky does not switch between setpoints. Severinsky’s controller always uses
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`the upper “30-35 mph” speed threshold to turn the engine on and always uses the
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`lower “20-25 mph” to turn the engine off.3 (PAICE2016, ¶¶110-11.)4 In other
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`words, Severinsky uses different thresholds for different purposes. There is no
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`variation or dynamic “switching” of the different thresholds to speak of.
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`3 BMW falsely states that Patent Owners concede that “Severinsky uses ‘two
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`separate speed thresholds’ for turning off the engine.” Reply, 10. But Patent
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`Owners stated that Severinsky discloses a speed threshold for turning the engine
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`on and a speed threshold for turning the engine off. POR, 19-20.
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`4 Dr. Davis admitted that the “30-35 mph” threshold is for turning the engine on
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`and the “20-25 mph” threshold is for turning the engine off. (PAICE2029, 7:2-7,
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`8:24 – 9:7.)
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`5
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`Moreover, claim 25 of the ’347 patent separately recites the use of two fixed
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`setpoints, SP and SP2:
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`The method of claim 23, … employing said controller to … control
`transition between propulsion of said vehicle by said motor(s) to
`propulsion by said engine such that said transition occurs only when
`RL>SP for at least a predetermined time, or when R>SP2, wherein
`SP2 is a larger percentage of MTO than SP.
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`BMW1001, 60:58-64 (emphasis added).5
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`BMW’s argument that Severinsky’s separate on/off thresholds are evidence
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`of varying the setpoint improperly reads the claim limitation in a vacuum. Claims
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`2 and 24 require a “controller [] monitor[s] patterns of vehicle operation over time
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`and vary said setpoint SP accordingly.” The word “accordingly” indicates that the
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`“controller” must vary the setpoint based on vehicle monitoring over time. BMW,
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`however, provides no evidence that Severinsky’s controller selects between the
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`5 BMW’s assertion that the ’347 patent uses “hysteresis” to “vary[] said setpoint”
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`is false. Consistent with claim 25, the ’347 patent uses different setpoints for
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`different purposes. (BMW1001, 41:10-54.) This is not evidence of varying the
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`setpoint. These two setpoints are written into source code during the vehicle
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`design phase and are not based on monitoring vehicle operation over time.
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`(PAICE2016, ¶¶108-11.)
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`6
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`engine on and engine off thresholds in real time, much less based on observed
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`vehicle operation.
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`Finally, lest the Board forget, BMW’s reply relies on speed thresholds in an
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`attempt to show varying a torque setpoint. POR, 20-23. BMW’s reply shies away
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`from the single 60% MTO value that the Board found is the “setpoint,” and its new
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`and baseless assertions that Severinsky’s “speed-responsive hysteresis” is a
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`“misnomer” and “‘speed thresholds’ are also torque thresholds by their very
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`nature” have no foundation in reality, much less Severinsky’s disclosure. Reply, 9-
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`10. BMW does not dispute that speed and torque are independent variables. Nor
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`does it dispute Dr. Shahbakhti’s example of how the instantaneous torque may
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`vary between -80 and 180 Nm for a single fixed speed. (PAICE, ¶¶ 119-21.)
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`7
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`(Id., ¶¶120-23.) It makes no sense to have a single torque/speed setpoint for two
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`independent variables that vary drastically. And BMW provides no cogent
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`explanation for why Severinsky would not use parallel control systems to
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`separately control for separate variables.
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`Severinsky’s speed thresholds are written in units of speed (miles per hour),
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`not units of torque. BMW cannot rewrite Severinsky to suit its needs, and Dr.
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`Davis’s identical statements are “[u]ntethered to any supporting evidence” and
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`cannot support an obviousness finding. TQ Delta, LLC v. CISCO Sys., Inc., 942
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`F.3d 1352, 1362 (Fed. Cir. 2019) (rejecting expert’s “ipse dixit declaration” that is
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`“[u]ntethered to any supporting evidence…”).6 The Board previously found
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`Severinsky’s 60% MTO value is the claimed “setpoint” (BMW1003, 17), and
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`6 BMW’s new argument that speed thresholds are torque thresholds goes beyond
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`the proper scope of the Reply as BMW should have made this argument in its
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`Petition to make out a prima facie case of unpatentability. BMW relied on “speed-
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`responsive hysteresis” for a claim about torque and should have presented
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`argument attempting to connect these different concepts in its Petition. TPG, 74
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`(Nov. 2019); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367
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`(Fed. Cir. 2015).
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`8
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`BMW has fundamentally failed to present any evidence that Severinsky’s “speed-
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`responsive hysteresis” would vary this value.7
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`2.
`BMW’s reasons to combine are flawed
`BMW’s defense of its reasons to combine—consisting of vacillations and
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`contradictions—solidify the weakness of its obviousness combination. BMW’s
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`mystifying discussion of its proposed combination appears to have left even BMW
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`confused as to how it intends to modify Severinsky based on Nii’s “pattern
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`information.” In the same breath, BMW argues that “Petitioners do not propose
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`that average power consumption be used to turn Severinsky’s engine on or off”
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`(Reply, 6) and that “Nii’s … average power requirement could be used to adjust
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`Severinsky’s threshold for turning off the engine.” Id. 7 (emphasis added).
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`Confusion and obfuscation does not amount to an “explanation as to how or why
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`7 In co-pending IPR2020-01386, BMW relies on a secondary reference (Frank) to
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`argue that it would be obvious for Severinsky to use two different setpoints rather
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`than a single 60% MTO setpoint, calling into question BMW’s new theory that
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`Severinsky’s separate on/off speed thresholds are really two torque setpoints in
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`disguise. IPR2020-01386, Paper 1 at 47-49, 51 (“It would have been a simple
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`design choice to apply Frank’s hysteresis strategies to Severinsky’s 60% of MTO
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`torque ‘setpoint’….”).
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`9
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`the references would be combined to produce the claimed invention.” TriVascular,
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`Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016).
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` BMW cannot rehabilitate its defective reason to combine. For all the
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`many things that BMW does say, BMW’s silence is more revealing. BMW does
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`not dispute that:
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` Nii does not disclose a “setpoint” or selecting between electric motor
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`propulsion and engine propulsion;
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` Nii’s engine is always decoupled from the road wheels and the instantaneous
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`torque demand;
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` Nii only uses “pattern information” to set the generator output for battery
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`charging;
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` Nii’s “pattern information” does not include instantaneous vehicle
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`requirement information; and
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` Nii does not teach any “pattern information” other than average power.
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`BMW’s claim that “knowing precisely how a vehicle will actually be operated is
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`the ‘holy grail’ for fine-tuning hybrid vehicle efficiency” fails to paper over these
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`cracks. Reply, 2-3. The claims do not broadly claim fine-tuning a hybrid vehicle,
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`and Nii does teach anything useful for “fine-tuning” Severinsky’s alleged setpoint.
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`BMW’s “bodily incorporation” criticism rings hollow. BMW does not
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`dispute that Nii solely uses its “pattern information” to set a generator output for
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`10
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`battery charging in a series hybrid, which has nothing to do with varying the
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`claimed “setpoint” for operating mode selection in a parallel hybrid. Nor does
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`BMW articulate what “pattern information” a POSA would use from Nii other than
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`average power. If BMW could have identified any relevant disclosures in Nii, it
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`would have. Yet, BMW still cannot cogently explain its combination.
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`First, BMW’s philosophical debate about whether it is possible to combine
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`series and parallel hybrid vehicles does not move the needle in BMW’s favor.
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`Patent Owners have not argued that series and parallel hybrid vehicles, or
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`components of such vehicles, can never be combined. And BMW’s assertion that
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`its combination is sound because series and parallel hybrid vehicles are both
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`“concerned with enhancing hybrid vehicle efficiency” is tantamount to saying a
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`POSA would add the rotor blades of a helicopter to a hot air balloon because both
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`are concerned with flying. Reply, 4. This oversimplified analysis cannot
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`demonstrate obviousness.
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`BMW’s discussion about operating modes in series and parallel is also
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`irrelevant and supported solely by Dr. Davis’s testimony that it is possible for
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`series and parallel vehicles to use a “Max. SOC-PPS control strategy” (Reply, 5
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`(citing BMW1088, ¶¶38-44)), which “emphasizes maintaining the SOC.”
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`(PAICE2020, 244.)8 Yet, BMW does not assert that “Max. SOC-PPS control
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`strategy” has any relevance to the claimed setpoint or that Severinsky or Nii use
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`any control strategy resembling “Max. SOC-PPS.” BMW’s detour into other
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`hypothetical combinations not before the Board is irrelevant.9
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`8 BMW’s repeated criticism of Dr. Shahbakhti’s use of the Ehsani textbook from
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`2005 is unwarranted. Dr. Shahbakhti uses the Ehsani textbook simply to illustrate
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`how series and parallel hybrid architectures are configured. Unlike Dr. Davis’s
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`reply declaration, Dr. Shahbakhti does not rely on this textbook to form opinions
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`about the state of the art in 1998. BMW also improperly relies on Sundance, Inc.
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`v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) to suggest that
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`Dr. Shahbakhti’s age makes his testimony less reliable. But Sundance is about
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`excluding a patent law expert (with no technical expertise) from opining on matters
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`of infringement and invalidity. Id. at 1365.
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`9 BMW’s misrepresents that Dr. Shahbakhti provided “counter-testimony.” (Reply,
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`6.) Dr. Shahbakhti previously opined that it would have been obvious to modify a
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`parallel hybrid by adding braking grids connected to the traction motor for
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`absorbing dynamic braking energy when the battery cannot receive all of the
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`energy. BMW1098, ¶ 75 (“a [POSA] would have been motivated to modify Kira’s
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`drive system to incorporate a dynamic braking grid as described by Kumar.”) This
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`Second, BMW is wrong in asserting that Nii’s engine output is based on the
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`instantaneous torque requirements. Reply, 6. As the POR explains, Nii uses
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`“travel patterns” to isolate the steady state engine operation from the driver
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`demand, which is possible in series vehicles where the engine is always decoupled
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`from the wheels. (PAICE2016, ¶152.) This solution is antithetical to Severinsky,
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`which switches operating modes based on the instantaneous demands of the driver.
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`POR, 31.
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`BMW’s lone citation to column 1:44-53 in the “Description of the Prior Art”
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`section does not show otherwise. It discloses that “the power consumption of an
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`electric vehicle depends on the travel conditions” and that the prior art addressed
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`this by varying the generator output in “accordance with the state of charge of a
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`battery.” Nii recognizes that varying the generator output to address “travel
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`conditions” causes harmful emissions whereas maintaining the generator output at
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`a constant value eliminates these emissions. (BMW1022, 1:40-57.) Nii, therefore,
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`takes the “travel conditions” out of the equation by using travel patterns to set a
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`constant generator value (eliminating the need to vary the generator output).
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`opinion has nothing to do with control strategies or Dr. Shahbakhti’s present
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`opinion that a POSA would not modify Severinsky’s “setpoint” based on Nii’s
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`alleged “pattern information.”
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`According to the present invention, the output of a generator is set to a
`generator output equal to the power consumption value corresponding
`to the travel pattern …. Therefore, it is possible to generate optimum
`electrical power at a constant value by a generator.
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`BMW1022, 2:13-18 (emphasis added). BMW’s claim that Nii’s engine changes
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`based on the instantaneous torque requirement (Reply, 6) is at odds with the
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`primary purpose of Nii’s invention. See PAICE2029, 22:5-7 (Dr. Davis admitting
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`that “an overall goal [of Nii] might be to try and just operate the engine as [sic]
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`single speed, single load operating point”).10
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`Third, BMW’s confusing explanation of how Severinsky could use Nii’s
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`“average power requirement” information reiterates the incompatibility of the
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`references. BMW again improperly conflates the claimed “setpoint” with the
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`actual operating point of the engine by asserting that a POSA would use “average
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`power consumption … to vary the ‘setpoint’ at which the engine is operated.”
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`POR, 6; see also id. at 7 (arguing Severinsky’s “engine would be turned on …
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`while adjusting its setpoints to improve engine efficiency” ). As discussed above
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`in Section II.A.1, the claimed “setpoint” is not the same as the actual operating
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`10 The fact that Nii can turn the engine off under high SOC does not make Nii’s
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`controller any more dependent on the instantaneous torque requirements.
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`14
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`point of the engine, and BMW’s reliance on this false premise underscores the
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`deficiency of its combination.
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`BMW’s alternative, inconsistent hypothetical—that Nii’s “average power
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`requirement could be used to adjust Severinsky’s threshold for turning off the
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`engine during hysteresis sooner” (Reply, 7)—is unsupported and unintelligible.
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`BMW does not explain whether this “average power requirement” is low, high, or
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`somewhere in between. Nor does BMW explain how this would increase fuel
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`economy.
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`BMW cannot make sense of its proposed combination because Nii’s
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`“average power requirement” is not useful in adjusting Severinsky’s setpoint.
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`BMW does not dispute that instantaneous torque cannot be derived from average
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`power or other averages. POR, 34-39. Instead, BMW explains how time averages
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`are calculated, which is a mathematical operation that is not in dispute. Reply, 7
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`(arguing high instantaneous torque values would result in a high average value).
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`As the POR explains, the instantaneous torque requirement could be very high
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`15
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`during periods of operation even if there is a low average power requirement (and
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`vice versa), and BMW has no rebuttal on this point. Reply, 7.11
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`Finally, BMW’s suggestion that the ’347 patent uses average values is false.
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`The ’347 patent identifies a pattern where the road load “var[ies] between 0 and
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`50% of MTO,” i.e., it moves above and below the setpoint, and adjusts the setpoint
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`to 60% MTO accordingly. (BMW1001, 40:62 – 41:5.)12
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`B. Grounds 1a and 2a – Severinsky in View of Graf Does Not Render
`Claims 2 and 24 Obvious
`1.
`Severinsky in view of Graf does not teach or suggest
`“varying said setpoint accordingly”
`As with Grounds 3a and 3b, none of the prior art “var[ies] said setpoint.”
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`Severinsky does not vary a “setpoint” (see section II.A.1), and BMW admits that
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`“Graf’s ‘operating points’ are ‘the points at which the engine or the motor (or both)
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`are operated.’” Reply, 14. Per BMW, the “operating points” represent the actual
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`11 Dr. Davis’s hypothetical that Severinsky would turn the engine off “using the
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`average power requirement” fails to address this critical problem. (BMW1088, ¶
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`53.)
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`12 BMW’s reliance on the ’347 patent’s separate discussion about “fluctuat[ions]”
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`of road load cannot credibly be considered an average as BMW claims. Reply, 7
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`(citing BMW1001, 41:20-35.)
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`16
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`output of the engine and motor, which is different from the claimed “setpoint” used
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`for determining when to turn the engine on.
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`2.
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`Severinsky in view of Graf does not teach or suggest
`“monitor[ing] patterns of vehicle operation over time”
`Grounds 1a and 2a also fail because neither Severinsky nor Graf “monitor
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`patterns of vehicle operation over time,” which has been construed as “monitoring
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`a driver’s repeated driving operations over time.”
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`Graf does not “monitor a driver’s repeated driving operations over time.”
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`The Board correctly found “Petitioner’s contention that characterizing the driver
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`style of the driver [in Graf] would require monitoring a driver’s repeated driving
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`operations over time” … does not appear on this record to be supported by
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`evidence from Graf.” ID, 28 (internal quotations and citations omitted).
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`Giving up on its failed quasi-inherency argument (POR, 44-47), BMW
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`strays outside of its Petition and Graf’s disclosure by relying on BMW1090, a
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`translation of EP 0,576,703, to argue that Graf monitors patterns. Reply, 13.
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`The rule is clear. “Petitioner may not submit new evidence or argument in
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`reply that it could have presented earlier, e.g. to make out a prima facie case of
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`unpatentability.” TPG, 73. Consistent with the Board’s ID, BMW failed to
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`present a prima facie case of obviousness, and it cannot rely on improper new
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`evidence and argument to fix its defective petition.
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`17
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`BMW could have identified BMW1090 in its Petition because it is
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`
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`referenced in Graf. Whether by mistake or design, BMW did not. Had BMW
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`identified BMW1090 in its Petition, Patent Owners could have presented expert
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`testimony in rebuttal but are now deprived of doing so. BMW should not be
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`permitted to gain a strategic advantage based on its error or intent. The Board
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`should ignore BMW’s improper evidence and argument in its entirety. Ariosa
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`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)
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`(finding “no error in the Board’s rejection of [the petitioner’s] reliance, in its Reply
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`submissions, on previously unidentified portions of a prior-art reference to make a
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`meaningfully distinct contention”); Nestle Purina Petcare Co. v. Oil-Dri Corp. of
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`Am., IPR2015-00737, 2016 WL 4375267 (P.T.A.B. June 20, 2016) (holding that
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`“Petitioner’s arguments do more than merely address Patent Owner’s argument”
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`and instead provide new arguments and evidence not found in the petition).13
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`13 BMW is wrong in suggesting that its reliance on BMW1090 is in response to
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`Patent Owners’ argument. The POR argued that BMW’s quasi-inherency
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`argument about Graf’s teaching fails to present a prima facie case of obviousness,
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`which is confirmed by BMW’s improper attempt to supplement the record. POR,
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`45-47.
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`18
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`In any event, there is no evidence that BMW1090’s reference to “high
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`accelerator speed and high longitudinal acceleration” is anything beyond single,
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`instantaneous values. (BMW1090, 13:14-15.) BMW1090 provides no explanation
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`for these concepts, and BMW’s Reply fails to show how this generic description is
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`evidence of “monitoring a driver’s repeated driving operations over time.” BMW
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`fails to identify any repetition, much less “repeated driving operations.” Nor has
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`BMW identified any “monitoring … over time” of such driving operations.
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`C. Grounds 1b and 2b – Severinsky in View of Ma Does Not Render
`Claims 11 and 33 Obvious
`There remains no reason to combine Severinsky’s hybrid architecture with
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`Ma’s turbocharger.
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`First, BMW’s Reply confirms that its first reason to modify Severinsky’s
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`hybrid vehicle with Ma’s turbocharger is redundant to the benefits already
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`achieved by Severinsky alone. BMW repeats the same alleged benefits of
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`turbochargers identified in its Petition (e.g., “better engine efficiency” and “smaller
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`engine”) but does not address how these “benefits” are not already achieved by
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`Severinsky’s powerful electric motor. POR, 48-51. As the POR explains,
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`Severinsky’s properly-sized electric motor alone supplements the engine with
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`additional torque for high-speed acceleration and permits the use of a smaller
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`engine that operates more efficiently. POR, 48-49 (citing BMW1013, 8:5