Patent Owners’ Oral Hearing Demonstratives
`
`IPR2020-00994 – U.S. Patent No. 7,104,347
`
`Before Sally C. Medley, Kalyan K. Deshpande, and Arthur M. Peslak,
`Administrative Patent Judges
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`PAICE 2030
`BMV v. PAICE
`IPR2020-00994
`
`
`
`IPR2020-00994 – U.S. Patent No. 7,104,347
`
`Before Sally C. Medley, Kalyan K. Deshpande, and Arthur M. Peslak,
`Administrative Patent Judges
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`PAICE 2030
`BMV v. PAICE
`IPR2020-00994
`
`
`
`Agenda
`
`● Claims 2 and 24 Are Not Obvious
`
`–
`
`–
`
`–
`
`–
`
`Patented Technology Overview – Pattern-Based Mode Switching
`
`Severinsky/Nii (Grounds 3a and 3b)
`
`Severinsky/Graf (Grounds 1a and 2a)
`
`The Bumby References/Graf (Ground 4a)
`
`● Claims 11 and 13 Are Not Obvious
`
`–
`
`–
`
`–
`
`Patented Technology Overview – Coordinated Turbocharger and Traction Motor
`
`Severinsky/Ma (Grounds 1b and 2b)
`
`The Bumby References/Ma (Ground 4b)
`
`● Claim 17 Is Not obvious
`
`–
`
`–
`
`Severinsky/Ehsani (Ground 2c)
`
`The Bumby References/Ehsani (Ground 4c)
`
`● Claim 38 Is Not obvious
`
`–
`
`–
`
`Severinsky/Ehsani (Ground 1c)
`
`The Bumby References/Ehsani (Ground 4c)
`
`● BMW’s Motion To Exclude Should Be Denied
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`2
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`Claim 2 and 24 Are Not Obvious
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`3
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`
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`Technology Background A – Hybrid Architecture
`
`● The '347 patent is directed to hybrid electric vehicles and the control thereof
`
`Starter Motor
`
`Traction Motor
`
`Engine
`
`Wheels
`
`Battery
`
`Controller
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`BMW1001, Fig.3 (annotated)
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`
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`POR, 6
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`4
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`
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`Technology Background A – Operating Modes
`
`● The hybrid vehicle of the '347 patent can be operated in
`different “modes,” i.e. different combinations of motor,
`engine, or both, to propel the vehicle:
`
`– Mode I: motor only propulsion
`
`– Mode IV: engine propulsion
`
`– Mode V: motor and engine propulsion
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`POR, 7
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`5
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`
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`Technology Background A – Mode Selection
`
`● The ’347 patent selects modes by comparing
`“road load” (the instantaneous torque required
`to propel the vehicle) to the setpoint and MTO
`
`– RL < 30% MTO: Mode I
`
`– 30% MTO < RL < 100% MTO: Mode IV
`
`– RL > 100% MTO: Mode V
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`BMW1001, Fig. 9 (annotated)
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`POR, 8
`
`6
`
`
`
`Technology Background A – Mode Selection
`
`● The '347 patent compares road load to the setpoint to select operating modes
`
`Engine + motor
`propulsion
`
`Engine propulsion
`
`Motor only propulsion
`
`Setpoint
`
`
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`7
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`BMW1001, Fig. 7 (annotated)
`
`
`
`Technology Background A: Pattern-Based Mode Switching
`
`● The ’347 patent looks for patterns such
`as road load fluctuations above and
`below the setpoint
`
`Setpoint
`
`BMW1001, Fig. 7 (annotated)
`
`POR, 8-9
`
`BMW1001, 40:47-41:9 (annotated)
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`8
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`Technology Background A: Pattern-Based Mode Switching
`
`● The ’347 patent looks for patterns such
`as road load fluctuations above and
`below the setpoint
`
`20%
`MTO
`
`BMW1001, 40:47-41:9 (annotated)
`
`150%
`MTO
`
`0 to 50%
`MTO
`
`
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`POR, 8-9
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`9
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`
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`Technology Background A: Pattern-Based Mode Switching
`
`● To avoid RL fluctuations between 0 and
`50% MTO, the ’347 patent adjusts the
`setpoint to 60% MTO
`
`BMW1001, 40:47-41:9 (annotated)
`
`Setpoint
`
`Adjusted to
`60% MTO
`
`
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`BMW1001, Fig. 7 (annotated)
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`POR, 8-9
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`10
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`
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`Claims 2 and 24 Vary the Setpoint Based on Monitoring Patterns of Vehicle Operation
`
`…
`
`● The controller:
`
`– compares road load to the setpoint and
`
`– varies the setpoint based on monitored
`patterns of vehicle operation
`
`
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`11
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`BMW1001, Claim 24 (annotated)
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`
`
`Severinsky and Nii Do Not Render Claims 2 and 24 Obvious (Grounds 3a and 3b)
`
`● No prior art disclosure of varying the claimed “setpoint”:
`
`– Severinsky discloses only a fixed setpoint (60% MTO)
`
`– The 60% MTO value is never varied during vehicle operation (i.e., in real time)
`
`– Nii does not disclose the claimed “setpoint”
`
`– Nii is only concerned with setting the engine at a constant output for battery
`charging
`
`● No motivation to modify Severinsky with Nii’s “pattern information”
`
`– BMW cannot explain how or why a POSA would adjust Severinsky’s 60% MTO in
`view of Nii’s disclosure, which has nothing to do with mode switching
`
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`12
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`
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`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`● BMW (and the Board) have identified 60% MTO as the only claimed “setpoint” in
`Severinsky
`
`● There is no evidence that Severinsky varies the 60% setpoint to another value (e.g.,
`55% or 65% of MTO)
`
`BMW 1013, 20:63-68 (annotated)
`
`Petition, 18 (annotated)
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`13
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`
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`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`● BMW’s reliance on a separate disclosure about “speed-responsive hysteresis” is unrelated to
`varying the claimed (torque) “setpoint”
`
`1.
`
`“Speed-responsive hysteresis” does not result in variation of any kind
`
`2. No evidence linking “speed-responsive hysteresis” to the torque-based setpoint
`
`3. Even if “speed-responsive hysteresis” could result in running the engine inefficiently,
`that is not the same as varying the setpoint
`
`BMW 1013, 18:34-43 (annotated)
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`14
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`
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`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`1. “Speed-responsive hysteresis” does not result in variation of any kind
`
`– Uses one fixed threshold for turning engine on and one fixed threshold for turning engine off
`
`– Use of simple time delay does not vary either threshold
`
`Fixed threshold for
`turning engine on
`
`Fixed threshold for
`tuning engine off
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`BMW 1013, 18:34-43 (annotated)
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`15
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`PAICE2016, ¶¶ 110-11; POR, 18-20; Sur-reply, 4-6
`
`
`
`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`1. “Speed-responsive hysteresis” does not result in variation of any kind
`
`– Uses fixed threshold for turning engine on and fixed threshold for turning engine off
`
`– Similar to thermostat
`
`Thermostat
`
`Speed-responsive hysteresis
`
`AC off
`logic
`
`100
`
`Engine off
`logic
`
`20-25
`
`30-35
`
`Engine on
`logic
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`Speed (mph)
`
`0
`
`72°
`
`AC on
`logic
`
`71°
`
`
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`16
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`120
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`Temp
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`PAICE2016, ¶¶ 110-11; Sur-reply, 4-5
`
`0
`
`
`
`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`1. “Speed-responsive hysteresis” does not result in variation of any kind
`
`– The ’347 patent separately claims using different setpoints for turning the engine on/off
`
`– Using two different setpoints for two different purposes is not the same as varying the
`setpoint
`
`Claim 25 (not challenged)
`
`Claim 24 (challenged)
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`BMW1001, Claim 25 (annotated)
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`BMW1001, Claim 24 (annotated)
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`Sur-reply, 6
`
`17
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`
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`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`1. “Speed-responsive hysteresis” does not result in variation of any kind
`
`– Dr. Shahbakhti explained that these on/off thresholds are written into source code during
`vehicle development and do not change during vehicle operation
`
`– No variation in real time
`
`Dr. Mahdi Shahbakhti
`Patent Owners’ Expert
`
`
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`18
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`PAICE2016, ¶ 111 (annotated); POR, 20
`
`
`
`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`1. “Speed-responsive hysteresis” does not result in variation of any kind
`
`– BMW admits that each of these thresholds are factory-set values
`
`Reply, 3 (annotated)
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`Sur-reply, 5
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`19
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`
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`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`2. No evidence linking “speed-responsive hysteresis” to the torque-based setpoint
`
`– BMW has identified no evidence in Severinsky connecting these disparate disclosures
`
`Setpoint disclosure
`(column 20)
`
`“Speed-responsive hysteresis” disclosure
`(column 18)
`
`BMW1013, 20:63-68 (annotated)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`BMW1013, 18:34-43 (annotated)
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`POR, 20-22; Sur-reply, 7-8
`
`20
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`
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`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`2. No evidence linking “speed-responsive hysteresis” to the torque-based setpoint
`
`– What do the experts say?
`
`“While it is true the torque required to propel the vehicle and vehicle speed are not
`mutually exclusive of one another, they are both independent variables that under many
`conditions do not vary proportionately.” PAICE2016, ¶ 116.
`
`Dr. Mahdi Shahbakhti
`Patent Owners’ Expert
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`21
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`PAICE2016, ¶ 119; POR, 22-23
`
`
`
`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`2. No evidence linking “speed-responsive hysteresis” to the torque-based setpoint
`
`– What do the experts say?
`
`“Thus, a person of skill in the art would understand that Severinsky would need to
`arbitrate between the speed based algorithm and the torque-based algorithm and
`may often prioritize one over the other.” PAICE2016, ¶ 116.
`
`Driving conditions
`
`Speed-based algorithm Torque-based algorithm
`
`Vehicle traveling at low
`speed up a hill
`
`Vehicle coasting at high
`speed down a hill
`
`Vehicle accelerating on a
`flat surface at low speed
`
`Vehicle decelerating on a
`flat surface at high speed
`
`Low speed engine off
`
`High speed engine on
`
`Low speed engine off
`
`High required torque
`engine on
`
`Low required torque
`engine off
`
`High required torque
`engine on
`
`High speed engine on
`
`Low required torque
`engine off
`
`PAICE2016, ¶ 120; POR, 21
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`22
`
`Dr. Mahdi Shahbakhti
`Patent Owners’ Expert
`
`
`
`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`2. No evidence linking “speed-responsive hysteresis” to the torque-based setpoint
`
`– What do the experts say?
`
`– Unsupported testimony that “the speed-based thresholds in Severinsky
`correlate to torque-based thresholds, and vice versa.” BMW1088, ¶ 9.
`
`Dr. Gregory Davis
`Petitioners’ Expert
`
`“Untethered to any supporting evidence, much less any
`contemporaneous evidence, Dr. Tellado’s ipse dixit declaration
`‘fail[s] to provide any meaningful explanation for why one of
`ordinary skill in the art would be motivated to combine these
`references at the time of this invention.’… Indeed, the only support
`for Dr. Tellado’s assertions is found in the description of the
`invention of the patents-in-suit.”
`
`TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1362 (Fed. Cir. 2019) (emphasis added)
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Sur-reply, 8
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`23
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`
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`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`2. No evidence linking “speed-responsive hysteresis” to the torque-based setpoint
`
`– BMW cannot rewrite Severinsky by replacing the word “speed” with “torque”
`
`Severinsky’s actual disclosure
`
`BMW’s rewrite
`
`BMW 1013, 18:34-43 (annotated)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 9 (annotated)
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`Sur-reply, 8
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`24
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`
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`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`2. No evidence linking “speed-responsive hysteresis” to the torque-based setpoint
`
`– The Board never found in the Ford IPR that “speed” and “torque” are the same thing
`
`BMW1003 (IPR2014-00571 FRD), 18 (annotated); POR, 22; POPR, 30
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`25
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`
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`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`3. Even if “speed-responsive hysteresis” could result in running the engine inefficiently, that is
`not the same as varying the setpoint
`
`– BMW incorrectly asserts that the engine’s actual operating point is the claimed “setpoint”
`
`Petition, 46 (annotated)
`
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`26
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`Reply, 8 (annotated)
`
`
`
`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`3. Even if “speed-responsive hysteresis” could result in running the engine inefficiently, that is not the
`same as varying the setpoint
`
`– The operating point of the engine (blue dashed line) is not the same as the setpoint (red line)
`
`Setpoint
`
`BMW1001, Fig. 7(a) (annotated); Sur-reply, 3-4; ; PAICE2016, ¶ 126
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`27
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`
`
`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`3. Even if “speed-responsive hysteresis” could result in running the engine inefficiently, that is not the
`same as varying the setpoint
`
`– Dr. Davis admitted that the operating point of the engine is not the same as the setpoint
`
`PAICE2029 (Davis Tr.), 49:12-17 (annotated)
`
`BMW1001, Fig. 9 (annotated)
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Sur-reply, 2-3
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`28
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`
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`No Prior Art Disclosure of Varying the Setpoint:
`Severinsky Does Not Vary the Setpoint
`
`3. Even if “speed-responsive hysteresis” could result in running the engine inefficiently, that is not the
`same as varying the setpoint
`
`– The ’347 patent claims show the operating point of the engine is not the same as the setpoint
`
`BMW1001, Claim 41 (annotated); Sur-reply, 4
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`29
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`
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`No Motivation To Combine Severinsky and Nii
`
`● BMW’s reasons to combine are flawed
`
`1. BMW’s generic, unexplained assertion that Nii’s undefined “pattern
`information” will make Severinsky more efficient is deficient as a matter of law
`
`2. A POSA would not use Nii’s “average power” information to modify Severinsky
`as BMW suggests
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`30
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`
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`BMW’s Reasons To Combine Are Flawed
`
`1. BMW’s generic, unexplained assertion that Nii’s undefined “pattern information” will make
`Severinsky more efficient is deficient as a matter of law
`
`– BMW’s conclusory statements do not explain “how” or “why” a POSA would combine Severinsky
`and Nii
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Petition, 46 (annotated)
`
`POR, 28
`
`31
`
`
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`BMW’s Reasons To Combine Are Flawed
`
`1. BMW’s generic, unexplained assertion that Nii’s undefined “pattern information” will make
`Severinsky more efficient is deficient as a matter of law
`
`– BMW’s conclusory statements do not explain “how” or “why” a POSA would combine Severinsky
`and Nii
`
`“the Board ‘must still be careful not to allow
`hindsight reconstruction of references . . . without any
`explanation as to how or why the references would
`be combined to produce the claimed invention.’”
`
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)(emphasis in original)
`(quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012))
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`POR, 30
`
`32
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`
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`BMW’s Reasons To Combine Are Flawed
`
`1. BMW’s generic, unexplained assertion that Nii’s undefined “pattern information” will make
`Severinsky more efficient is deficient as a matter of law
`
`– Dr. Davis’s declaration does not explain what “pattern information from Nii” a POSA would
`use to improve Severinsky, or how such “pattern information” would more closely align
`Severinsky’s setpoint with the “vehicle’s actual torque requirements”
`
`“Untethered to any supporting evidence, much less
`any contemporaneous evidence, Dr. Tellado’s ipse
`dixit declaration ‘fail[s] to provide any meaningful
`explanation for why one of ordinary skill in the art
`would be motivated to combine these references at
`the time of this invention.’”
`
`TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1362 (Fed. Cir. 2019) (emphasis added)
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`POR, 38
`
`33
`
`
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`BMW’s Reasons To Combine Are Flawed
`
`● Nii does not disclose using “vehicle patterns” to:
`
`– select between electric motor propulsion and engine propulsion;
`
`– control engine or electric motor operation based on the instantaneous
`driving conditions;
`
`– determine whether engine operation or electric motor operation would be
`more efficient; or
`
`– determine any information about the instantaneous vehicle requirements.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`34
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`POR, 33-34; ; PAICE2016, ¶ 154
`
`
`
`BMW’s Reasons To Combine Are Flawed
`
`2. A POSA would not use Nii’s “average power” information to modify Severinsky as BMW suggests
`
`– BMW only identifies “average power” as the so-called “pattern information”
`
`– Patent Owners’ rebuttal on this point is not a “bodily incorporation” argument
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`35
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`Petition, 47 (annotated)
`
`
`
`BMW’s Reasons To Combine Are Flawed
`
`2. A POSA would not use Nii’s “average power” information to modify Severinsky as BMW suggests
`
`– Using average power in Nii makes sense because the engine just keeps the battery charged
`
`BMW1022, Title (annotated); PAICE2016, ¶ 147
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`POR, 31
`
`36
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`BMW1088 (Davis Dec.), ¶ 72 (annotated)
`
`
`
`BMW’s Reasons To Combine Are Flawed
`
`2. A POSA would not use Nii’s “average power” information to modify Severinsky as BMW suggests
`
`– Using average power in Nii makes sense because the engine just keeps the battery charged
`
`Generator
`
`Battery
`
`BMW1022, Abstract (annotated); PAICE2016, ¶ 147
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`BMW1022, Fig. 1 (annotated)
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`POR, 31
`
`37
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`
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`BMW’s Reasons To Combine Are Flawed
`
`2. A POSA would not use Nii’s “average power” information to modify Severinsky as BMW
`suggests
`
`– No dispute that Nii is a “series hybrid”
`
`– BMW’s expert admitted that the engine in a series hybrid is controlled independently of
`driving conditions
`
`Dr. Gregory Davis
`Petitioners’ Expert
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`BMW1008, ¶¶69-70 (annotated)
`
`POR, 13
`
`38
`
`
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`BMW’s Reasons To Combine Are Flawed
`
`2. A POSA would not use Nii’s “average power” information to modify Severinsky as BMW suggests
`
`– Because Nii’s engine is controlled independently of driving conditions, it can simply set the
`engine at a single constant value and use historical averages to set that value
`
`BMW1022, 1:40-57; 2:13-24 (annotated); PAICE2016, ¶¶ 147-52; Sur-reply, 13
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`
`
`BMW’s Reasons To Combine Are Flawed
`
`2. A POSA would not use Nii’s “average
`power” information to modify Severinsky as
`BMW suggests
`
`– Nii’s “average power” solution ignores
`instantaneous driving conditions
`
`– It has no use for adjusting setpoints for
`comparison to the instantaneous
`torque required to propel the vehicle
`
`…
`
`…
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`BMW1001, Claim 24 (annotated)
`POR, 31, 35
`
`
`
`BMW’s Reasons To Combine Are Flawed
`
`2. A POSA would not use Nii’s “average
`power” information to modify Severinsky as
`BMW suggests
`
`– Nii’s “average power” solution ignores
`instantaneous driving conditions
`
`– It has no use for determining when to
`connect the engine to the drive train
`for propelling the vehicle in a parallel
`hybrid based on instantaneous torque
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`BMW1013, Fig. 3 (annotated); PAICE2016, ¶¶ 145-52 POR, 35-36
`
`
`
`BMW’s Reasons To Combine Are Flawed
`
`Instantaneous
`power
`
`● A POSA will not use Nii’s average
`power requirement to adjust
`Severinsky’s thresholds for turning
`on/off the engine
`
`● The average power provides no
`information to the instantaneous
`torque requirement
`
`● Instantaneous torque can be high
`when the average power is low
`
`PAICE2020, 83 (pg. 250 in original) (annotated); PAICE2016, ¶¶ 160-62; POR, 36-37
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`
`
`BMW’s Reasons To Combine Are Flawed
`
`● Only the ’347 patent looks for patterns
`that assist in deriving a better setpoint
`
`20%
`MTO
`
`BMW1001, 40:47-41:9 (annotated)
`
`150%
`MTO
`
`0 to 50%
`MTO
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`POR, 32
`
`43
`
`
`
`Severinsky and Graf Do Not Render Claims 2 and 24 Obvious (Grounds 3a and 3b)
`
`●No prior art disclosure of varying the setpoint:
`
`– Severinsky discloses only a fixed setpoint (60% MTO)
`
`– Graf does not disclose any setpoints
`
`●Graf does not “monitor patterns of vehicle operation
`over time”
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`Graf Does Not Disclose Monitoring Patterns of Vehicle Operation
`
`● Graf merely shows a box
`labeled “Determining
`Driver Type and Desire”
`
`● BMW fails to show that
`Graf necessarily monitors a
`driver’s repeated driving
`operations over time to
`determine the driving style
`
`BMW1020, Fig. 2 (annotated)
`
`BMW1020, Fig. 2 (annotated); POR, 41-42
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`
`
`Graf Does Not Disclose Monitoring Patterns of Vehicle Operation
`
`● BMW fails to show that Graf necessarily monitors a driver’s repeated driving operations
`over time to determine the driving style
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`ID, 28 (annotated)
`
`
`
`Graf Does Not Disclose Monitoring Patterns of Vehicle Operation
`
`● BMW’s newly introduced evidence, BMW1090, is improper, because BMW could have
`identified the evidence in its petition as it is referenced in Graf
`
`“We see no error in the Board's rejection of Ariosa's
`reliance, in its Reply submissions, on previously unidentified
`portions of a prior-art reference to make a meaningfully
`distinct contention.”
`
`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)
`(emphasis added); see also Nestle Purina Petcare Co. v. Oil-Dri Corp. of Am., IPR2015-
`00737, 2016 WL 4375267 (P.T.A.B. June 20, 2016) (holding that “Petitioner’s arguments
`do more than merely address Patent Owner’s argument” and instead provide new
`arguments and evidence not found in the petition)
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Sur-reply, 17-18
`
`47
`
`
`
`Graf Does Not Disclose Monitoring Patterns of Vehicle Operation
`
`● In any event, BMW1090 does not disclose any evidence of “monitoring patterns of vehicle
`operation over time”
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`BMW1090, 13:18-20; Sur-reply, 19
`
`
`
`Claim 2 and 24 Are Not Obvious In View of Bumby and Graf (Ground 4a)
`
`● The Bumby References/Graf combination suffers from the same
`problems as the Severinsky/Graf combination
`
`– No prior art disclosure of varying the setpoint:
`
`– The Bumby References disclose only a fixed setpoint
`
`– Graf does not disclose any setpoints
`
`– Graf does not “monitor patterns of vehicle operation over time”
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`
`
`Claim 11 and 33 Are Not Obvious
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`
`
`Technology Background B: Controllable On-Demand-Turbocharger
`
`● The '347 patent discloses
`incorporating a controllable
`turbocharger into a hybrid vehicle to
`work alongside the electric motor to
`provide additional torque
`
`● The ‘347 patent’s arrangement
`overcomes the problem of “turbo lag”
`experienced by conventional
`turbochargers
`
`● “Turbo lag” is a “slow response to
`sudden increase in torque required”
`
`BMW1001, 44:60-44:67 (annotated)
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`BMW1001, 46:7-46:11 (annotated)
`
`POR, 9
`
`51
`
`
`
`Technology Background B: Controllable On-Demand Turbocharger
`
`● Turbochargers respond slowly to sudden increases in
`torque demand due to principle of operation
`
`● Exhaust from engine provides rotational force to spin
`the turbine of the turbocharger, which is often
`insufficient to spin the turbine at low engine output
`
`● Conventional engines experience delay as fuel is
`introduced to match increased airflow
`
`● Turbocharger cannot increase air pressure to supply
`additional torque quickly enough to meet driver’s
`demand for more torque
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`52
`
`POR, 9-10; PAICE2016, ¶¶26-33.
`
`
`
`Technology Background B: Controllable On-Demand-Turbocharger
`
`● Electric motor provides instantaneous, maximum torque at low rotational speeds, but
`cannot consistently provide high torque
`
`● Too much reliance on the electric motor tends to drain the battery such that use of the
`turbocharger instead of the electric motor can help preserve the battery bank
`
`Maximum Torque
`
`Speed
`
`PAICE2016, ¶¶48-49; BMW1001, Fig. 10 (annotated)
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`53
`
`
`
`Technology Background B: Controllable On-Demand-Turbocharger
`
`● “On-demand-turbocharger”
`
`– Electric motor provides additional torque
`when needed; turbocharger helps
`preserve battery bank
`
`– The microprocessor uses the wastegate
`and the valve to control the
`turbocharger, allowing the vehicle to
`select when the motor and the
`turbocharger will contribute torque
`
`– This arrangement enables the motor and
`the turbocharger to work in a
`complementary fashion
`
`POR, 10-12, PAICE2016, ¶¶49-52; BMW1001, Fig. 11 (annotated)
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`
`
`Technology Background B: Controllable On-Demand-Turbocharger
`
`● Thus, after the motor provides instantaneous torque, the turbocharger will continue to
`provide additional torque
`
`Motor
`
`Turbocharger
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`55
`
`BMW1001, Fig. 13a (annotated)
`
`
`
`Claim 11 and 33 Are Not Obvious In Light of Severinsky and Ma (Grounds 1b and 2b)
`
`● Claims 11 and 33 requires a
`“turbocharger operatively and
`controllably coupled” to the engine in a
`hybrid electric vehicle for use in a
`“sustained high-power turbocharged
`mode”
`
`BMW1001, Claim 11 (annotated)
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`56
`
`
`
`Claim 11 and 33 Are Not Obvious In Light of Severinsky and Ma (Grounds 1b and 2b)
`
`● Severinsky in view of Ma does not make claim 11 and 33 obvious, because
`
`1. The benefits of Ma’s turbocharger have been achieved by Severinsky alone;
`
`2. Ma’s disclosure does not provide a reason to combine a turbocharger and a
`motor; and
`
`3. The addition of a turbocharger to Severinsky comes at significant cost
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`57
`
`POR, 48-62, PO Sur-reply, 19-22, PAICE2016, ¶¶34-68.
`
`
`
`1. The Benefits of Ma Have Been Achieved by Severinsky Alone
`
`● Each of BMW’s alleged reasons for combining Ma with Severinsky fall short because the
`supposed benefits of Ma’s turbocharger are redundant to Severinsky’s benefits
`
`BMW’S ALLEGED BENEFITS TO COMBINE
`
`SEVERINSKY’S DISCLOSED BENEFITS
`
`Motor provides additional torque
`
`Allows for a smaller engine
`
`Allows engine to operates in most efficient
`range
`
`POR, 48-50, PAICE2016, ¶¶56-72; BMW1013, 8:52-8:56, 9:47-9:52, 9:52-9:57 (annotated).
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`58
`
`
`
`1. The Benefits of Ma Have Been Achieved by Severinsky Alone
`
`● Federal Circuit and PTAB precedent dictate there is no reason to combine Severinsky and Ma
`because Severinsky alone achieves the purported benefits of Ma’s turbocharger
`
`South-Tek Systems, LLC v. Engineered Corrosion Solutions, LLC, 2018 WL
`4520013, *3-*4 (Fed. Cir. 2018) (affirming Board’s non-obviousness finding
`where the primary reference had a vent such that adding a different vent
`taught by second reference would be redundant)
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed.
`Cir. 2012) (finding no reason to combine where the prior art references
`“independently accomplish similar functions” and “each device
`independently operates effectively”)
`
`Stryker Corp. v. Karl Storz Endoscopy America, Inc., IPR2015-00764, Paper
`13, 13 (PTAB September 2, 2015) (“[W]e fail to see … why it would be
`obvious to add a translator to redundantly perform the function that
`Petitioner maintains is performed by the interconnect devices ….”).
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`POR, 51
`
`59
`
`
`
`2. Ma’s Disclosure Does Not Provide a Reason To Combine
`a Turbocharger and a Motor To Perform the Same Task
`
`● While Ma’s Figure 1 shows that a motor and a turbocharger can be combined, it provides no
`reason as to why a POSA would use both sources of supplemental torque when just one is
`sufficient, especially when Severinsky’s motor alone is adequate to supplement the engine
`
`BMW1021, Fig. 1 (annotated)
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`POR, 52
`
`60
`
`
`
`2. Ma’s Disclosure Does Not Provide a Reason To Combine a Turbocharger and a Motor
`To Perform the Same Task
`
`● It is not sufficient to establish obviousness by merely demonstrating that a turbocharger and
`a motor can be combined in the same system, rather that a POSA would have been
`motivated to combine them in the same system
`
`“VGo's expert also succumbed to hindsight bias in her
`obviousness analysis. Dr. Yanco's testimony primarily consisted
`of conclusory references to her belief that one of ordinary skill
`in the art could combine these references, not that
`they would have been motivated to do so.”
`
`InTouch Techs., Inc. v. VGO Comm’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (emphasis added)
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`POR, 52
`
`61
`
`
`
`2. Ma’s Disclosure Does Not Provide a Reason To Combine a Turbocharger and a Motor
`To Perform the Same Task
`
`● Board’s rationale in the ID fundamentally does not address the redundant nature of BMW’s
`proposed combination
`
`● While a turbocharger can supplement an engine to provide torque above its MTO and
`permit engine downsizing, Severinksky’s electric motor already performs these exact same
`functions
`
`● The Board’s recognition that Ma “discloses using an electric motor operating in parallel with
`a turbocharged engine in the embodiment shown in Ma’s Figure 1” (Paper 19, 38) does not
`change the fact that BMW failed to show why a POSA would have combined Severinsky and
`Ma
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`62
`
`POR 50, PAICE2016, ¶¶58-63.
`
`
`
`2. Ma’s Disclosure Does Not Provide a Reason To Combine
`a Turbocharger and a Motor To Perform the Same Task
`
`● As background information,
`Severinsky’s motor can propel the
`vehicle on its own, while Ma’s
`motor is used only to supplement
`the engine
`
`– A “Limited Motor Assist” like Ma
`is a form of Mild HEV and vastly
`different than a Full HEV with
`“Full Power-Assist” and “Electric-
`Only Mode” like Severinsky
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`63
`
`PAICE2022, Fig. 5.226; PAICE2016, ¶75, POR, 53
`
`
`
`2. Ma’s Disclosure Does Not Provide a Reason To Combine
`a Turbocharger and a Motor To Perform the Same Task
`
`● Moreover, Ma discloses that the turbocharger and the motor are used interchangeably to
`perform the same function, so it is unclear why a POSA would use both the motor and the
`turbocharger in the same system as the '347 patent discloses
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCEDEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`64
`
`BMW1021, 5 (annotated); PAICE2016, ¶¶78-79, POR, 54
`
`
`
`2. Ma’s Disclosure Does Not Provide a Reason To Combine
`a Turbocharger and a Motor To Perform the Same Task
`
`● BMW’s additional reason to combine is based on hindsight r
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