Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 47
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`BAYERISCHE MOTOREN WERKE, AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`
`____________
`
`IPR2020-00994
`Patent 7,104,347 B2
`____________
`
`Record of Oral Hearing
`Held: August 25, 2021
`
`____________
`
`
`
`
`Before KALYAN K. DESHPANDE, SALLY C. MEDLEY, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`

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`IPR2020-00994
`Patent 7,104,347 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF PETITIONER:
`
`
`JEFFREY D. SANOK, ESQUIRE
`VINCENT J. GALLUZZO, ESQUIRE
`SCOTT L. BITTMAN, ESQUIRE
`JACOB ZAMBRZYCKI, ESQUIRE
`Crowell & Moring, LLP
`1001 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`
`
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`RUFFIN B. CORDELL, ESQUIRE
`BRIAN J. LIVEDALEN, ESQUIRE
`TIMOTHY W. RIFFE, ESQUIRE
`Fish & Richardson, PC
`1000 Maine Avenue, S.W.
`Washington, D.C. 20024
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday, August
`25, 2021, at 1:00 p.m., by video/by telephone.
`
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`IPR2020-00994
`Patent 7,104,347 B2
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`
`P R O C E E D I N G S
`- - - - -
`JUDGE PESLAK: We are now on the record. This is the oral
`
`hearing for IPR2020-00994. We're conducting this oral video hearing as a
`result of the shutdown of the Patent Office due to COVID-19. I'm Judge
`Arthur Peslak. With me are Judge Sally Medley and Judge Kal Deshpande.
`
`Would counsel for Petitioner please state your name and firm
`affiliation for the record, please?
`
`MR. GALLUZZO: Hi, Your Honor. My name is Vince Galluzzo.
`I'm from Crowell & Moring, and I'm here on behalf of Petitioners BMW.
`
`JUDGE PESLAK: All right. Is there anyone else present with you at
`your location?
`
`MR. GALLUZZO: Yes, Your Honor. Also with me are Jeff Sanok,
`Scott Bittman, and Jacob Zambrzycki.
`
`JUDGE PESLAK: And presume you'll be presenting the argument,
`Mr. Galluzzo?
`
`MR. GALLUZZO: Yes, Your Honor.
`
`JUDGE PESLAK: All right. Counsel for Patent Owner, please state
`your name and firm affiliation for the record.
`
`MR. RIFFE: Good afternoon, Your Honor. Timothy Riffe with Fish
`and Richardson on behalf of Patent Owners, and with me, also, are Ruffin
`Cordell and Brian Livedalen, also from Fish & Richardson.
`
`JUDGE PESLAK: Okay. Petitioner, you have 60 minutes, in
`accordance with the hearing order. Do you wish to reserve any time for
`rebuttal?
`
`MR. GALLUZZO: Yes, Your Honor. May I reserve 10 minutes for
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`IPR2020-00994
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`rebuttal?
`
`JUDGE PESLAK: Okay. You have 50 minutes, then. You can begin
`when ready.
`
`MR. GALLUZZO: Thank you, Your Honors, and thank you for the
`opportunity to present here today.
`
`I'd like to start first with Petitioner's Demonstrative Exhibit Slide No.
`2. With all of us there, this slide shows the six dependent claims that are
`challenged in this case. They are shown in white here. Each of these
`challenged dependent claims tacks on a conventional feature of hybrid
`vehicles known at the relevant time. They tack these features on to
`independent claims that have been cancelled by the Board, shown in red, and
`that cancelation affirmed by the Federal Circuit.
`
`Turning now to Slide No. 3, we can see those two independent claims,
`Claims 1 and 23. If there was anything novel in a '347 patent, it was in these
`claims. These claims that recite a setpoint-based control strategy, but that
`setpoint-based control strategy was found obvious by this Board and
`affirmed by the Federal Circuit over Severinsky and Bumby, the same two
`base references that BMW uses in this IPR to streamline the Board's review.
`The Board, in that decision, also credited the credible testimony of Dr.
`Davis, the same expert witness who is supporting BMW's challenges here.
`
`If the challenged claims that we see here, the setpoint-based control
`strategy claims, had come before the Board with the dependent claims that
`are challenged here, the parties wouldn't even be arguing about the
`challenged dependent claims. The parties would simply recognize that the
`dependent claims were obvious over the art known at the time, and if the
`control strategy in the independent claims was obvious, so, too, were the
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`IPR2020-00994
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`tacked-on dependent claims. Unfortunately, the dependent claims came up
`separately, and that's what we're arguing about here today.
`
`I turn next to Slide 4. Since any novelty, if it existed, was in the
`independent claims, not in the challenged dependent claims here, Patent
`Owner tries to litigate and relitigate those issues from the prior cases relating
`to those independent claims and the limitations in those claims, such as
`whether their prior art Severinsky's control strategy is based on torque, or if
`it's based on speed alone.
`
`Now, Patent Owner lost that issue before and others they tried to
`relitigate here. In the case of Severinsky's control strategy, the Board found
`that it always takes torque into account. They found that rightly. Patent
`Owner is now estopped from raising that issue and relitigating that and the
`other issues from the prior decisions that it does again here.
`
`Next is Slide 5. We see another Federal Circuit decision, this one
`about the bodily incorporation of obviousness combinations. And Patent
`Owner also runs afoul of the law in this regard, too, by its repeated reliance
`on bodily incorporation arguments. Patent Owner does this because it wants
`to ignore the breadth of the dependent claims, which broadly claim known
`features in the art, again, tacked on to the independent claims and their
`control strategy. Patent Owner does this because they also want to ignore
`the motivations that were known in the art to add those broad features onto
`the independent claims in that control strategy.
`
`This case presents a textbook application of KSR. The features in
`these challenged dependent claims were well known, they were documented,
`and disclosed in interrelated teachings in other patents about hybrid vehicle
`control technology. The features provided a design incentive to one of skill
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`IPR2020-00994
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`in the art. They addressed a known problem in the field, and there were a
`number of other motivations why a person of skill in the art would have
`been motivated to add these into the control strategy.
`
`Patent Owner's bodily incorporation arguments are also irrelevant,
`because of this and because there are a number of ways where BMW is not
`proposing bodily incorporation of patents in accommodation. The Board
`correctly noted this in the institution decision.
`
`Next, go to Slide 7, please.
`
`I'd like to start here with the four-wheel drive claim, that's Claim 17,
`and that's the claim where Patent Owner claims to have invented hybrid
`four-wheel drive.
`
`Turning to Slide 8, we see why we're starting here. We're starting
`here because the Board did not find a likelihood of success on the merits at
`its institution decision stage. Now, we believe that was done because of a
`misrepresentation by Patent Owner about what our proposed combination
`was. Whether there was two motors, one that was dual purpose; whether
`one was just a starter motor -- and I'd like to clear up any remaining
`confusion today, if there is any.
`
`So if we go to Slide 9, we can see what the cancelled independent
`claim here was, and that's Claim 1. And as shown here, it recites a two-
`motor hybrid with a setpoint-based control strategy. Claim 17, shown in
`white, doesn't add much on top of that, it just requires that the two motors be
`independent and drive each set of drive wheels, in other words, a two motor,
`four-wheel drive hybrid.
`
`Claim 17 doesn't say anything about the control strategy recited in
`Claim 1. It doesn't tie the four-wheel drive system into the claim control
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`IPR2020-00994
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`strategy. There's nothing novel about adding four-wheel drive to that control
`strategy. And we'll see why if we turn to Slide 10.
`
`Slide 10 is an excerpt from the '347 Patent, the patent challenged here,
`where Patent Owner admits that there's nothing novel about adding four-
`wheel drive configuration to a control strategy. The Patent Owner explicitly
`notes that a reference called Ehsani was "of interest." Why was Ehsani of
`interest? Well, it was of interest because, as Patent Owners tell us in the
`'347 Patent, it had -- it showed two independent traction motors driving the
`two sets of drive wheels, as in Figure 7. Let's look at Ehsani's Figure 7, and
`that's in Slide 11.
`
`What we see here is the figure noted of interest in the '347 Patent. It
`has the exact same components required by Claim 17. On the left,
`highlighted in red, we see the engine and the first electric motor, which are
`controllably coupled to a first set of road wheels of the vehicle. And on the
`right, also highlighted in red, we see a second electric motor that's coupled
`to a second set of road wheels of the vehicle. That's all that Claim 17
`requires. So the '347 Patent tells us that it just simply adopted this
`architecture from Ehsani, claimed it in Claim 17.
`
`So if we take a step back and think about where we are, if -- since the
`independent claim, Claim 1, is already dead, if the Board were to confirm
`the patentability of Claim 17 in this case, the Board would basically be
`saying that Patent Owner invented the concept of an independent four-wheel
`drive hybrid, clearly -- even though Ehsani, clearly, did that earlier.
`
`If we turn to Slide 13, this is where I'd like to clear up any confusion
`about what BMW's proposal was.
`
`Here is BMW's proposed combination on this ground shown on the
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`IPR2020-00994
`Patent 7,104,347 B2
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`left. And the left shows Figure 3 of Severinsky that's annotated with red
`annotations. The addition to Severinsky, which is shown in red, comes
`directly from Ehsani, the portion highlighted in red on the right -- again,
`that's Figure 7 of Ehsani on the right. The addition of an independent motor
`to the other set of road wheels in Severinsky is an elegant solution.
`
`JUDGE PESLAK: Counsel, can I ask --
`
`MR. GALLUZZO: And I also provide --
`
`JUDGE PESLAK: Can I ask a question?
`
`MR. GALLUZZO: Of course, Your Honor.
`
`JUDGE PESLAK: Patent Owner's arguing that what you're showing
`here in this argument is beyond the scope of what you put in the Petition,
`and the Figure 3 that you show us here from Severinsky was not -- is not --
`you added the AC/DC converter on the right, which isn't in Figure 3 of
`Severinsky, and this drawing wasn't in the Petition, correct?
`
`MR. GALLUZZO: Your Honor, you're correct that the drawing
`depicted on Slide 13 is not in the Petition; however, I would like to direct
`you -- if we could skip ahead to Slide No. 15 of our demonstratives, you'll
`see exactly, with quotes from the Petition, what BMW's proposed
`combination was here. And BMW's proposal was, and continues to be
`today, to have one traction motor with the other set of wheels, and one dual-
`purpose motor with -- associated with the engine. What Patent Owner tried
`to argue, and confused the issues, was to say that our proposal was to only
`move the traction motor to the real set of wheels but still drive all four, and
`to only have a starter motor associated with the engine. Well, that's, based
`on these two quotations, at least, demonstrably untrue.
`
`Just to be clear, Severinsky and Ehsani were already found to be
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`IPR2020-00994
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`obvious to combine, in coming to Claim 1, in having two-motor hybrid
`systems. There is a starter motor and a traction motor that -- in the
`Severinsky/Ehsani combination that the Board found in Claim 1. Well, what
`BMW is saying is that a person of ordinary skill in the art would be further
`motivated to incorporate from Figure 7 of Ehsani, the fact that you can
`separate out drive control for the front and rear axles.
`
`Now, whichever axle has the engine associated with it, of course, you
`still need a starter motor capability. You have to start the engine somehow.
`So that motor would be a dual-purpose motor. It would act as a starter
`motor to start the engine. It would also act as a traction motor to provide
`torque to the road wheels. The other motor would be independent. It would
`drive the other set of wheels independently. That's exactly what Ehsani
`shows and exactly in line with Ehsani's teaching that a motor can be a dual-
`purpose starter and traction motor.
`
`Does that answer your question, Your Honor?
`
`JUDGE PESLAK: Yes.
`
`MR. GALLUZZO: Now, if we go back to Slide 13, and again, this is
`the modified figure of Severinsky on the left and the Figure 7 of Ehsani on
`the right, Ehsani's addition in Severinsky provides advantages beyond just
`the ability to drive all four wheels. It provides the advantage of being able
`to drive each set of wheels independently. You know, what that allows,
`beyond just four-wheel drive capability, is for the driver or the control
`system to choose whether they want to drive with two wheels or four wheels
`based on needs, circumstances, and efficiency purposes. And that's really
`important in a hybrid vehicle, because efficiency, as both experts tell us, is
`one of the principal concerns in designing, and modifying, and making more
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`IPR2020-00994
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`efficient a hybrid vehicle.
`
`This proposed modification also means mere addition of physical
`components, not reworking of existing components. So, for example, as we
`see in the figure on the left here, Severinsky has a torque transfer unit, No.
`28, Element No. 28. And this is something noted in the Board in its
`institution decision, so I want to really focus on this for a moment.
`
`Severinsky's torque transfer unit is untouched. It's irrelevant for
`purposes of driving the other set of wheels that are coupled to the second
`motor. Nothing needs to change about Severinsky's torque transfer unit, per
`BMW's proposed combination. In other words, the second motor, shown in
`red, and its components would be tacked on to Severinsky in the same way
`that Patent Owner tacked on Ehsani's Figure 7 as Claim 17.
`
`Now, Dr. Davis also opined that BMW's proposed combination would
`be a trivial addition to Severinsky for these reasons, because of the addition
`rather than the reworking of components. I also want to highlight that Dr.
`Davis is the only expert who's opined on this ground. Dr. Shahbakhti, who
`is the Patent Owner's expert, offers no testimony. So, what we essentially
`have is the testimony of Dr. Davis on one hand, and a bunch of attorney
`argument on the other. We all know, in cases like these, which is more
`credible.
`
`If we turn to Slide 14, we can see a discussion of why someone would
`be motivated to make that combination. We know how, but why. Well, as
`Dr. Davis testified, and again, unrebutted by Dr. Shahbakhti, a patent -- I'm
`sorry, a person of skill in the art would have a number of motivations.
`Again, a number of them relate to just four-wheel drives, in general, like the
`ability to have better use cases, better drivability and handling, but I'll
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`IPR2020-00994
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`highlight again Reason Number 3 on this list: "Driver would have a choice
`whether to select two-wheel or four-wheel drive." Again, this is only
`possible with the independent four-wheel drive arrangement of Ehsani, the
`ability to choose between two-wheel drive and four-wheel drive, as needed,
`to maintain the greatest efficiency.
`
`Now, the reason there are so many motivations to combine Severinsky
`and Ehsani in this way is the same reason that Patent Owner reviewed the
`literature, noted Ehsani with interest, and used that disclosure in Claim 17.
`
`If we can turn to Slide 20, we can now move to talking about BMW's
`second ground related to Claim 17. We first talked about the combination of
`Severinsky and Ehsani, now we can talk about the combination of Bumby
`and Ehsani.
`
`This ground differs from the Severinsky/Ehsani ground in a couple of
`ways, but first, Bumby already has two motors, and that's why the Board
`previously found Claim 1 obvious over Bumby alone. One motor is shown
`in the figure we see on Slide 20, the other motor is the starter motor, which
`is, based on the disclosure in the specification, as the Board found in the
`excerpt below the figure.
`
`The second difference, even though the Board's institution decision
`might have overlooked this fact, is that Bumby doesn't have a torque transfer
`unit like Severinsky does. So the torque transfer unit is irrelevant to the
`Claim 17 combination, as I've just discussed, but even if the Board were to
`find that the torque transfer unit is still an issue for the Severinsky/Ehsani
`ground, Bumby doesn't have one, so it doesn't have the same issue.
`
`So for the Board's two questions of how and why would someone of
`skill in the art combine Bumby and Ehsani, the "how" is very similar to
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`IPR2020-00994
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`Severinsky. You only need one dual-purpose motor associated with the
`engine so you can have a second traction motor on the second set of wheels.
`
`The "why" is in Slide -- is shown in Slide 21. Now, this list is going
`to look very familiar to the slide I just showed about the Severinsky/Ehsani
`combination, and that's because Dr. Davis tells us that the reasons that one
`with skill in the art would be motivated to combine are very similar to
`Severinsky. And that's because, again, the '347 Patent didn't invent four-
`wheel drive with two independent motors. So whether under Ehsani and
`Severinsky or whether under Ehsani and Bumby, Claim 17 is unpatentable.
`
`I'd now like to turn to Slide 34 and begin a new topic. This relates to
`Claims 2 and 24, and this is the monitoring patterns limitation. I'll begin
`with the Severinsky and Nii grounds, those are 3(a) and 3(b).
`
`If we turn to Slide 35, we can see those claims, 2 and 24, more tacked
`on claims, but these ones do add to the setpoint-based control strategy in the
`independent claims the requirement of monitoring the driver's repeated
`driving operations over time and varying the setpoint accordingly. For the
`Severinsky and Nii combination, which I'll talk about first, BMW argues
`that a POSA would read Nii, see that it monitors the driver's repeated driving
`operations over time, see that it alters the control strategy accordingly. In
`fact, in Nii, it specifically alters the operation of the engine, and a person of
`skill in the art would apply that teaching to the setpoint-based control
`strategy of Severinsky.
`
`Now, since Severinsky's control strategy is setpoint-based, and that's,
`of course, why the Board has previously found it to render obvious the
`independent claims of this patent, the way you would change the control
`strategy in Severinsky in accordance with Nii's teachings is the same way
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`IPR2020-00994
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`that you would change the engine operation, when it operates, and how soon
`the transfers between modes happen. You would do that by changing the
`setpoint. As a reminder, that is the transition point between when the engine
`is turned on or off, when the vehicle goes from motor only to engine only
`modes.
`
`If we go to Slide 37, we can dig into Nii a bit. Here on this slide, we
`see an excerpt from the '347 Patent on the left, an excerpt from Nii on the
`right. And what I want to highlight here is what's circled in red on both, that
`Nii discloses the same monitoring patterns of vehicle operation over time
`that the '347 Patent does. Repetitive driving pattern on the left is the same as
`Nii's regular driving travel pattern on the right.
`
`But there is a difference between the two. The main difference is that
`Nii actually provides a much more detailed disclosure about how to
`recognize a pattern, how to refine it, how to improve it. Nii tells us that
`accuracy increases as travel frequency increases. It's basically a learning
`algorithm. And so Nii discusses monitoring patterns of vehicle operation
`and what to do with that pattern information in far greater detail than the
`'347 Patent. As just a really baseline example, Nii uses the word "pattern"
`140 times, the '347 Patent, only 8.
`
`If we turn next to Slide 38, we can talk about the other part of the
`Claim, varying said setpoint. And here BMW relies on Severinsky. But let's
`talk about what Severinsky's control strategy is, because this is important to
`know in context.
`
`Severinsky's control strategy is setpoint based, and it says only to
`operate the engine when it is most efficient to do so. That's the purpose of
`setting a setpoint at a specific value so that the engine isn't turned on when
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`IPR2020-00994
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`the road load is too low that you would be using the engine inefficiently.
`But Severinsky also says there are some occasions where you can make an
`exception to that rule, where it's okay to go outside the most efficient zone
`of engine operation for certain reasons. Severinsky gives us two, nuisance
`engine starts, battery depletion, there may be others.
`
`The first one is the hysteresis mode, which the Board credited in the
`institution decision. And what Dr. Davis tells us is that in hysteresis mode,
`Severinsky's setpoint is varied to run the engine in an inefficient zone to
`avoid nuisance starts. The transition point is where the engine is turned on --
`I'm sorry, turn on or turn off is lowered. So in hysteresis, instead of turning
`the engine on and off at approximately 30 to 35 miles per hour under normal
`driving conditions, you would turn it on or off at approximately 20 to 25
`miles per hour, which is lower than typical.
`
`But still, we know that that's not a disregarding or an ignoring of the
`setpoint completely, because there still is a point when the engine becomes
`too inefficient and you have to turn it off, and that's the point where, if you
`are in a hysteresis mode and you pass below 20 miles an hour under normal
`driving conditions, that's the point in which Severinsky says it's just too
`inefficient, hysteresis is not an issue anymore, we need to not run the engine
`in that very inefficient zone. So there's still a comparison of road load to a
`point. There's still a comparison of road load to a transition point. There's
`now --
`
`JUDGE PESLAK: Counsel? Counsel?
`
`MR. GALLUZZO: Yes, sir. Yes, Your Honor.
`
`JUDGE PESLAK: Patent Owner argues that these setpoints are, sort
`of, baked into the source code for the controller and that those setpoints
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`IPR2020-00994
`Patent 7,104,347 B2
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`aren't varied, they're disregarded. What's your response to that?
`
`MR. GALLUZZO: So there's a few responses, Your Honor, and let
`me take them in order. The first is that Claims 2 and 24 are quite broad.
`They don't state how the varying must be done. They don't state how the
`setpoint must be varied. So whether or not it is written into source code and
`modified, whether or not it is a variable that is independent and changed, the
`claims don't specify. They don't care. It's a broad claim, it just says monitor
`patterns of driving operation, vary said setpoint accordingly.
`
`But if we turn to Petitioner's Slide 46, we can see that the argument
`that Severinsky disregards the setpoint during hysteresis is contradicted
`directly by Severinsky and also by the '347 Patent, which I'll address next.
`Severinsky's hysteresis allows the engine to be operated lower than normal,
`again, to a point lower than the normal transition point. But it still turns the
`engine off below 20 miles an hour. If the setpoint is being ignored, then
`there's no way to turn off the engine when the vehicle goes below 20 miles
`an hour, since there's no transition point whatsoever. If we're ignoring any
`transition point between the engine-on mode and the engine-off mode, then
`as soon as the control system enters into hysteresis, the driver could come to
`a stop. The driver could be at a stoplight for two to three minutes, and the
`engine would still be running, because, of course, we're disregarding the
`setpoint. Well, that's not what happens. After Severinsky goes into
`hysteresis, the engine will run until either a time period, but if you go below
`20 miles an hour, the engine will be turned off. So we know the set point is
`being varied, not ignored, based on that operation.
`
`The second thing -- and the '347 Patent also contradicts this, and the
`excerpt on Slide 46 demonstrates that. Just for the record, this is column 41,
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`IPR2020-00994
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`lines 10 to 54 of Exhibit 1001. The '347 Patent in this segment tells us that
`varying the setpoint includes the exact kind of hysteresis mode-switching
`determination to limit repetitive engine starts. So if the '347 Patent is telling
`us what Severinsky is doing is varying, then we know what Severinsky is
`doing is varying, not just by what Severinsky says, but also by what the '347
`Patent says about a very similar, if not identical, operation.
`
`JUDGE PESLAK: What's the specific language you're pointing in
`column 41?
`
`MR. GALLUZZO: Bear with me, Your Honor. I'm going to find it
`for you.
`
`JUDGE PESLAK: Sure.
`
`MR. GALLUZZO: Yes, Your Honor, it would be in the highlighted
`portions, talking about making the "transition from mode I to mode IV
`somewhat 'fuzzy' so that SP may vary from one comparison of road load to
`MTO to the next, depending on other variables." That "by monitoring the
`road load over time and comparing it to different setpoints accordingly,
`much of this undesirable, repetitive sequence of engine starting and shut off
`can be eliminated." And finally, the final highlight, "Thus providing
`'hysteresis' in the mode-switching determination" -- excuse me -- "would
`limit repetitive engine starts in certain types of driving."
`
`JUDGE PESLAK: Okay. Thank you.
`
`MR. GALLUZZO: Thank you, Your Honor.
`
`Now, we were talking about -- we were on Slide 38. Let's now turn to
`Slide 39, and we can talk about why a person of skill in the art would be
`motivated to make this combination of Severinsky and Nii.
`
`And the first is a general motivation, a motivation that a person of
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`IPR2020-00994
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`skill in the art would be motivated to use the pattern teachings -- I'm sorry,
`the pattern monitoring teachings of Nii to further vary the setpoint of
`Severinsky, because, generally, both experts agree that efficiency is always
`important in design and operation of a hybrid vehicle, including in
`Severinsky and Nii. Here, we see Dr. Shahbakhti testifying to the same, that
`efficiency is always one of the factors that should be considered.
`
`Next, on Slide 40, we see where the experts agree again. Dr. Davis
`and Dr. Shahbakhti both agree that predictability is important. In fact, Dr.
`Davis characterized it as "the holy grail" for fine-tuning hybrid vehicle
`control strategies. Now, why is that? As Dr. Shahbakhti says, it's because a
`person of skill in the art would utilize predicted information to improve
`vehicle performance. In other words, Severinsky's 60 percent MTO setpoint
`is not set in stone. Now, we know that from the hysteresis mode, but we
`also know that from the battery-charging mode, as well. We also know that
`from the fact that the general motivations of one of skill in the art would
`know that if you can have predictability, if you can learn about how
`someone is driving a vehicle, that you would be motivated to make the
`vehicle more efficient. So despite Dr. Shahbakhti's testimony in favor of
`BMW, shown here on Slide 40, Patent Owner would have the Board believe
`that a person of skill in the art would never think to change that setpoint.
`
`Let's talk about why the setpoint is set at 60 percent MTO in the first
`place. It's somewhat of an arbitrary setpoint, because Severinsky sets it at
`60 percent, but in the same breath tells us that its engine can operate
`efficiently, really, from 50 to 90 percent. So why did Severinsky choose 60
`instead of 50 percent? Well, it doesn't say, but if the developer who decided
`on 60 percent MTO for the setpoint had known how the car would be driven
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`IPR2020-00994
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`in actual operation, it's possible they might have changed the setpoint to 50
`percent, 65 percent, whatever the case may be. So, for example, if the car --
`if it was known that the car was going to be driven in Colorado, with higher
`altitudes, the developer might have picked a different setpoint to make more
`efficient driving at high altitudes in Colorado.
`
`Well, why this is important is because Nii tells us how the car is being
`driven on a day-to-day basis. It captures and analyzes this travel pattern
`information, and has a lot of disclosure about how to make that analysis
`more and more efficient over time. But since Nii tells you how the car is
`being driven, actually driven, not just predictably driven, not just, you know,
`a -- someone in a lab developing a car, thinking, oh, someone might drive it
`this way, this is actually how it's driven, the same result should apply. You
`would change the setpoint just like the developer in the lab would or on the
`factory line. But now, you can do it in real time. You can do it as the car is
`being driven or perhaps between trips, not just back at the factory.
`
`If we go to Slide 43, the third reason why a person of skill in the art
`would be motivated to make this combination is because it's within the skill
`in the art to adopt the teachings of Nii -- I'm sorry, the '347 Patent tells us
`that it's within the skill in the art to adopt the teachings of Nii into the
`setpoint-based control strategy of Severinsky. This is highlighted in green
`here on the left, and for the record, we're looking at column 40, lines 56 to
`column 41, line 9 of Exhibit 1001. And this is what it says, "It is within the
`skill of the art to program a microprocessor to record and analyze such daily
`patterns and to adapt the control strategy accordingly. "
`
`So if you have that daily patterns information from Nii, and you're
`already motivated to use it to make more efficient the vehicle and to vary the
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`IPR2020-00994
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`setpoint, as we've said, clearly a POSA would have been motivated to take
`that and add it to Severinsky's setpoint varying to make the varying even
`better, and would have known how to do it, too.
`
`I'd like to now move to Slide 49 where we can talk about BMW' s
`other ground on Claims 2 and 24, and this relates to Graf. And I'll briefly
`ad