UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT & BMW
`OF NORTH AMERICA, LLC,
`Petitioners
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
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`Inter Partes Review No.: IPR2020-00994
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`U.S. Patent No. 7,104,347 K2
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`___________________
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,104,347 UNDER
`35 U.S.C. § 311 AND 37 C.F.R. § 42.100
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`
`Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`Table of Contents
`
`I. 
`II. 
`
`Page
`Introduction ...................................................................................................... 1 
`Overview of the ’347 Patent ............................................................................ 2 
`A. 
`The Specification and the Challenged Claims ...................................... 2 
`B. 
`Relevant Prior IPRs ............................................................................... 4 
`C. 
`Person of Ordinary Skill in the Art (“POSA”) ...................................... 5 
`III.  Legal Standards ............................................................................................... 6 
`A. 
`Claim Construction ............................................................................... 6 
`B. 
`Issue Preclusion ..................................................................................... 6 
`IV.  Terms Already Construed by the Board .......................................................... 6 
`V. 
`Statutory Grounds of Challenge ...................................................................... 9 
`VI.  Overview of the Cited Art ............................................................................... 9 
`A. 
`Background of the Art ........................................................................... 9 
`B. 
`Severinsky – U.S. Patent No. 5,343,970 ............................................. 11 
`C. 
`Bumby ................................................................................................. 12 
`D. 
`Ehsani – U.S. Patent No. 5,586,613 .................................................... 13 
`E. 
`Graf – U.S. Patent No. 6,188,945........................................................ 13 
`F.  Ma – International Application Publication No. WO 92/15778 ......... 14 
`G.  Nii – United States Patent No. 5,650,931 ........................................... 14 
`VII.  Detailed Explanation of the Challenge .......................................................... 15 
`A. 
`Issue Preclusion Applies to Previously Cancelled Claims.................. 15 
`B. 
`Ground 1a – Claim 24 Is Obvious Over Severinsky and Graf ........... 16 
`C. 
`Ground 1b – Claim 33 Is Obvious Over Severinsky in View of
`Ma ........................................................................................................ 26 
`D.  Ground 1c – Claim 38 Is Obvious Over Severinsky in View of
`Ehsani .................................................................................................. 33 
`Ground 2a – Claim 2 Is Obvious Over Severinsky in View of
`Ehsani and Graf ................................................................................... 37 
`
`E. 
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`F. 
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`Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
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`Ground 2b – Claim 11 Is Obvious Over Severinsky in View of
`Ehsani and Ma ..................................................................................... 39 
`G.  Ground 2c – Claim 17 Is Obvious Over Severinsky in View of
`Ehsani .................................................................................................. 40 
`H.  Ground 3a – Claim 24 Is Obvious Over Severinsky in View of
`Nii ........................................................................................................ 44 
`Ground 3b – Claim 2 Is Obvious Over Severinsky in View of
`Ehsani and Nii. .................................................................................... 48 
`Ground 4a – Claims 24 and 2 Are Obvious Over Bumby and
`Graf ...................................................................................................... 49 
`1. 
`Claim 24 .................................................................................... 49 
`2. 
`Claim 2 ...................................................................................... 57 
`K.  Ground 4b – Claims 33 and 11 Are Obvious Over Bumby in
`View of Ma .......................................................................................... 59 
`1. 
`Claim 33 .................................................................................... 59 
`2. 
`Claim 11 .................................................................................... 65 
`Ground 4c – Claims 38 and 17 Are Obvious Over Bumby in
`View of Ehsani .................................................................................... 66 
`1. 
`Claim 38 .................................................................................... 66 
`2. 
`Claim 17 .................................................................................... 70 
`VIII.  Mandatory Notices Under 37 C.F.R. §42.8 ................................................... 72 
`A. 
`Real Parties-in-Interest ........................................................................ 72 
`B. 
`Related Matters .................................................................................... 72 
`C. 
`Identification of Counsel and Service Information ............................. 73 
`IX.  Grounds for Standing and Procedural Statement (37 C.F.R.
`§42.104(a)) ..................................................................................................... 74 
`Payment of Fees (37 C.F.R. §§42.103 and 42.15(a)(1)) ............................... 74 
`X. 
`XI.  Conclusion ..................................................................................................... 74 
`Claim Appendix of Challenged Claims ................................................................... 76 
`Certification of Word Count .................................................................................... 85 
`Certificate of Service ............................................................................................... 86
`
`L. 
`
`I. 
`
`J. 
`
`ii
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`

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`
`Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`LIST OF EXHIBITS
`
`BMW1001
`
`
`Exhibit No. Description of Exhibit
`U.S. Patent No. 7,104,347, including Inter Partes Review
`Certificates issued as U.S. Patent No. 7,104,347 K1 and U.S. Patent
`No. 7,104,347 K2
`BMW1002 USPTO Assignments on the Web for U.S. Patent No. 7,104,347 K2
`BMW1003 Ford Motor Co. v. Paice LLC, IPR2014-00571, Paper 44, Final
`Written Decision (P.T.A.B. Sep. 28, 2015)
`BMW1004 Ford Motor Co. v. Paice LLC, IPR2014-00579, Paper 45, Final
`Written Decision (P.T.A.B. Sep. 28, 2015)
`BMW1005 Paice LLC v. Ford Motor Co., Appeal Nos. 2016-1412, -1415, -
`1745, Doc. 46-2, Opinion (Fed. Cir. Mar. 7, 2017)
`BMW1006 Ford Motor Co. v. Paice LLC, IPR2015-00794, Paper 31, Final
`Written Decision (P.T.A.B. Nov. 1, 2016)
`BMW1007 Paice LLC v. Ford Motor Co., Appeal Nos. 2017-1442, -1443, -
`1472, Doc. 59-2, Opinion (Fed. Cir. Feb. 1, 2018)
`BMW1008 Declaration of Dr. Gregory W. Davis in Support of Inter Partes
`Review of U.S. Patent No. 7,104,347 K2
`BMW1009 Curriculum Vitae of Dr. Gregory W. Davis
`BMW1010 Ford Motor Co. v. Paice LLC, IPR2014-00795, Paper 31, Final
`Written Decision (P.T.A.B. Nov. 1, 2016)
`BMW1011 Ford Motor Co. v. Paice LLC, IPR2014-00884, Paper 38, Final
`Written Decision (P.T.A.B. Dec. 10, 2015)
`
`BMW1012 File History for U.S. Patent No. 7,104,347 K2
`BMW1013 U.S. Patent No. 5,343,970 (“Severinsky” or “Severinsky ’970”)
`Bumby, J.R. et al., “Computer modelling of the automotive energy
`requirements for internal combustion engine and battery electric-
`powered vehicles,” IEE PROCEEDINGS, Vol. 132, Pt. A, No. 5
`
`BMW1014
`
`iii
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`

`

`Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`
`Exhibit No. Description of Exhibit
`(Sep. 1985), 265-79 (“Bumby-I” or “Bumby I”)
`Bumby, J.R. et al., “Optimisation and control of a hybrid electric
`car,” IEE PROCEEDINGS, Vol. 134, Pt. D, No. 6 (Nov. 1987), 373-
`87 (“Bumby-II” or “Bumby II”)
`
`BMW1015
`
`BMW1016
`
`BMW1017
`
`BMW1018
`
`Bumby, J.R. et al., “A hybrid internal combustion engine/battery
`electric passenger car for petroleum displacement,” Proceedings of
`the Institution of Mechanical Engineers, Part D: Journal of
`Automobile Engineering, Vol. 202, No. D1 (Jan. 1988), 51-65
`(“Bumby-III” or “Bumby III”)
`Bumby, J.R. et al., “A test-bed facility for hybrid i c-engine/battery-
`electric road vehicle drive trains,” Transactions of the Institute of
`Measurement and Control, Vol. 10, No. 2 (Apr.-June 1988), 87-97
`(“Bumby-IV” or “Bumby IV”)
`Bumby, J.R. et al., “Integrated microprocessor control of a hybrid
`i.c. engine/battery-electric automotive power train,” Transactions of
`the Institute of Measurement and Control, Vol. 12, No. 3 (Jan.
`1990), 128-46 (“Bumby-V” or “Bumby V”)
`BMW1019 U.S. Patent No. 5,586,613 (“Ehsani”)
`BMW1020 U.S. Patent No. 6,188,945 (“Graf”)
`International Application Publication No. WO 92/15778 (“Ma”)
`
`BMW1021
`BMW1022 U.S. Patent No. 5,650,931 (“Nii”)
`Innovations in Design: 1993 Ford Hybrid Electric Vehicle
`Challenge, Society of Automotive Engineers, SAE/SP-94/980,
`Davis, G.W. et al., “United States Naval Academy, AMPhibian”
`(Feb. 1994), 277-87
`1996 Future Car Challenge, Society of Automotive Engineers,
`SAE/SP-97/1234, Swan, J. et al., “Design and Development of
`Hyades, a Parallel Hybrid Vehicle for the 1996 FutureCar
`Challenge” (Feb. 1997), 23-30
`BMW1025 1997 Future Car Challenge, Society of Automotive Engineers,
`
`BMW1023
`
`BMW1024
`
`iv
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`Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`BMW1027
`
`BMW1029
`
`
`Exhibit No. Description of Exhibit
`SAE/SP-98/1359, Swan, J. et al., “Design and Development of
`Hyades, a Parallel Hybrid Electric Vehicle for the 1997 FutureCar
`Challenge” (Feb. 1998), 29-39
`BMW1026 U.S. Provisional Appl. No. 60/100,095 (Filed Sep. 11, 1998)
`Wakefield, E.H., Ph.D., History of the Electric Automobile – Hybrid
`Electric Vehicles, Society of Automotive Engineers, SAE/SP-
`98/3420 (1998), 17-34 (Chapter 2: The History of the Petro-Electric
`Vehicle)
`BMW1028 Unnewehr, L.E. et al., “Hybrid Vehicle for Fuel Economy,” Society
`of Automotive Engineers, SAE/SP-76/0121 (1976)
`Burke, A.F., “Hybrid/Electric Vehicle Design Options and
`Evaluations,” Society of Automotive Engineers, SAE/SP-92/0447,
`International Congress & Exposition, Detroit, Michigan (Feb. 24-28,
`1992)
`Duoba, M, “Challenges for the Vehicle Tester in Characterizing
`Hybrid Electric Vehicles,” 7th CRC On Road Vehicle Emissions
`Workshop, San Diego, California (Apr. 9-11, 1997)
`Electric and Hybrid Vehicles Program, 18th Annual Report to
`Congress for Fiscal Year 1994, U.S. Department of Energy (Apr.
`1995)
`BMW1032 Bates, B. et al., “Technology for Electric and Hybrid Vehicles,”
`Society of Automotive Engineers, SAE/SP-98/1331 (Feb. 1998)
`Stodolsky, F. et al., “Strategies in Electric and Hybrid Vehicle
`Design,” Society of Automotive Engineers, SAE/SP-96/1156, Kozo,
`Y. et al., “Development of New Hybrid System – Dual System,”
`SAE/SP-96/0231 (Feb. 1996), 25-33
`BMW1034 Leschly, K.O., Hybrid Vehicle Potential Assessment, Volume 7:
`Hybrid Vehicle Review, U.S. Department of Energy (Sep. 30, 1979)
`Final Report Hybrid Heat Engine / Electric Systems Study, Vol. 1:1-
`13, The Aerospace Corporation for the U.S. Environmental
`Protection Agency (June 1, 1971)
`
`BMW1033
`
`BMW1030
`
`BMW1031
`
`BMW1035
`
`v
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`

`Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`BMW1040
`
`BMW1041
`
`BMW1036
`
`
`Exhibit No. Description of Exhibit
`Masding, P.W., et al., “A microprocessor controlled gearbox for use
`in electric and hybrid-electric vehicles,” Transactions of the Institute
`of Measurement and Control, Vol. 10, No. 4 (July –Sep. 1988), 177-
`86
`BMW1037 Yamaguchi, J., “Toyota Prius,” Automotive Engineering
`International (Jan. 1998), 29-32
`BMW1038 U.S. Patent No. 6,209,672 (“Severinsky ’672”)
`BMW1039 Davis, G.W., Ph.D. et al., Introduction to Automotive Powertrains,
`Chapter 2: Road Loads (2000), 27-68
`Ehsani, M. et al., “Propulsion System Design of Electric Vehicles,”
`Texas A&M University, Department of Electrical Engineering
`(1996), 7-13
`Ehsani, M. et al., “Propulsion System Design of Electric and Hybrid
`Vehicles,” IEEE Transactions on Industrial Electronics, Vol. 44,
`No. 1 (Feb. 1997), 19-27
`BMW1042 Bauer, H., ed., Automotive Handbook, Robert Bosch Gmbh (4th Ed.
`Oct. 1996), Excerpts
`Design Innovations in Electric and Hybrid Electric Vehicles,
`Society of Automotive Engineers, SAE/SP-96/1089, Anderson, C.,
`et al, “The Effects of APU Characteristics on the Design of Hybrid
`Control Strategies for Hybrid Electric Vehicles,” SAE/SP-95/0493
`(Feb. 1995), 65-71
`BMW1044 U.S. Patent No. 5,656,921 (“Farrall”)
`BMW1045 Stone, R., Introduction to Internal Combustion Engines, Chapter 9:
`Turbocharging (2nd Ed. 1995), 324-53
`BMW1046 Bauer, H., ed., Automotive Handbook, Robert Bosch Gmbh (4th Ed.
`Oct. 1996), Excerpts
`BMW1047 Heisler, H., Advanced Engine Technology, Chapters 6.7-6.10
`(1995), 315-47
`
`BMW1043
`
`vi
`
`

`

`BMW1048
`
`
`Exhibit No. Description of Exhibit
`Masding, P.H., “Some drive train control problems in hybrid i.c
`engine/battery electric vehicles,” Durham theses, Durham
`University (1988) (“Masding Thesis”)
`Davis, G.W. et al., “The Development and Performance of the
`AMPhibian Hybrid Electric Vehicle,” Society of Automotive
`Engineers, SAE/SP-94/0337, International Congress and Exposition,
`Detroit, Michigan (Feb. 28-Mar. 3, 1994) (“AMPhibian Paper”)
`BMW1050 U.S. Patent No. 5,285,862 (“Furutani”)
`BMW1051 U.S. Patent No. 5,823,280 (“Lateur”)
`BMW1052 Reserved
`BMW1053 Reserved
`BMW1054 Reserved
`BMW1055 Reserved
`BMW1056 Reserved
`BMW1057 Reserved
`BMW1058 Reserved
`BMW1059 Declaration of Jacob Z. Zambrzycki in Support of Motion for Pro
`Hac Vice Admission Under 37 C.F.R. § 42.10
`
`
`BMW1049
`
`
`
`Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`vii
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`

`

` Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`Pursuant to 35 U.S.C. §311 and 37 C.F.R. §42.100, Petitioners Bayerische
`
`Motoren Werke Aktiengesellschaft and BMW of North America, LLC (“BMW”)
`
`request inter partes review (“IPR”) of Claims 2, 11, 17, 24, 33 and 38 (the
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`“Challenged Claims”) of U.S. Patent No. 7,104,347 (“’347 patent”) (BMW1001).
`
`The ’347 patent is assigned to Paice LLC and the Abell Foundation, Inc. (“Patent
`
`Owners”) per United States Patent and Trademark Office (“PTO”) assignment
`
`records. BMW1002.
`
`I.
`
`Introduction
`The ’347 patent has been before the Patent Trial and Appeal Board
`
`(“Board”) on eight previous occasions, with 30 of its 32 previously challenged
`
`claims having already been canceled—including the only two independent Claims
`
`1 and 23. Those independent claims are directed at a hybrid vehicle, and its method
`
`of operation, in which the engine is only operated at its most efficient torque output
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`levels. Claims 1 and 23 were found unpatentable based on the same primary prior
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`art references—Severinsky and Bumby—used here in challenging dependent
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`Claims 2, 11, 17, 24, 33 and 38.
`
`The challenged dependent claims add a disparate collection of features well
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`known in the art, such as monitoring patterns of driver operation over time
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`(Claims 2 and 24); using a turbocharger to increase the engine’s maximum torque
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`output in a hybrid vehicle (Claims 11 and 33); powering both sets of wheels, i.e.,
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`1
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`

`

` Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`four-wheel drive (Claim 17); and synchronizing engine and motor speeds before
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`engaging an engine’s and motor’s output shafts using a clutch (Claim 38).1 As set
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`forth below, each of the dependent claims would have been obvious over either
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`Severinsky or Bumby, combined with secondary art reflecting those well-known
`
`concepts.
`
`II. Overview of the ’347 Patent
`A. The Specification and the Challenged Claims
`The ’347 patent “describes a hybrid vehicle with an internal combustion
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`engine, two electric motors (a starter motor and a traction motor), and a battery
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`bank, all controlled by a microprocessor that directs the transfer of torque from the
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`engine and traction motor to the drive wheels of the vehicle.” BMW1003, 2;
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`BMW1001, 17:5-45, Fig. 4. The “microprocessor features an engine control
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`strategy that runs the engine only under conditions of high efficiency, typically
`
`when the vehicle’s instantaneous torque requirements…[are] at least equal to 30%
`
`of the engine’s maximum torque output (‘MTO’) capability.” BMW1003, 2-3;
`
`BMW1001, 20:52-60, 35:5-14, 13:47-61. Doing so “leads to improved fuel
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`economy and reduced emissions.” BMW1003, 3; BMW1001, 13:47-51.
`
`
`1 Only dependent Claims 2 and 24 had been previously challenged.
`
`2
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`

`

` Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`An electric motor is employed on its own when the vehicle’s torque
`
`requirements are below a setpoint, such as 30% of the engine’s MTO, and in
`
`combination with the engine when the torque requirements exceed the engine’s
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`MTO. BMW1003, 7; BMW1001, 37:25-47; 38:5-10. The engine can also be used
`
`to charge the battery under the appropriate circumstances. E.g., BMW1001, 29:57-
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`62; 36:47-52.
`
`Canceled independent Claims 1 and 23 are generally directed to these
`
`features. The two claims are substantially similar to one another, except that Claim
`
`23 recites a “method of control of a hybrid vehicle” whose architecture permits the
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`use of “one or more electric motors” whereas Claim 1 recites a “hybrid vehicle”
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`whose architecture requires two motors—a starter motor and a traction motor.
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`Challenged Claims 2 and 24 depend from cancelled Claims 1 and 23,
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`respectively, and further require that a controller “monitor[s] patterns of vehicle
`
`operation over time and vary[ies]” the predefined torque value at which the engine
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`is operated.
`
`Challenged Claims 11 and 33 depend directly from cancelled intermediate
`
`Claims 7 and 28, respectively, which depend from cancelled independent Claims
`
`1 and 23, respectively. Challenged Claims 11 and 33 add “a turbocharger” and a
`
`corresponding “sustained high-power turbocharged mode VI.”
`
`3
`
`

`

` Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`Challenged Claim 17 depends from canceled Claim 1 and requires that “the
`
`engine and first electric motor are controllably coupled to a first set of road
`
`wheels” and the “second electric motor is coupled to a second set.”
`
`Challenged Claim 38 depends from canceled Claim 23 and recites
`
`controlling “the speeds of [the] engine and/or first motor and of [the] second
`
`motor” “such that when [the] clutch is engaged the speeds” of their respective
`
`output shafts “are substantially equal, whereby [the] shafts may be connected by a
`
`non-slipping clutch.”
`
`B. Relevant Prior IPRs
`The ’347 patent has been the subject of eight previous IPRs. See §VIII.B.
`
`The grounds presented here are not duplicative of those in the previous IPRs,
`
`which did not involve any of the present real parties-in-interest and concerned
`
`challenges to mostly different claims using different reference combinations. Only
`
`Claims 2 and 24 were previously challenged and not found unpatentable. The
`
`Graf and Nii references used in the present challenge of Claims 2 and 24 have not
`
`been previously addressed.
`
`The Final Written Decisions (“FWDs”) in IPR2014-00571 and -00579
`
`determined that Claim 23 would have been obvious in view of Severinsky; Claims
`
`1 and 7 would have been obvious in view of Severinsky and Ehsani; and Claims 1,
`
`4
`
`

`

` Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`7 and 23 would have been obvious in view of Bumby. BMW1003; BMW1004.2
`
`The Federal Circuit affirmed those decisions. BMW1005. Each of the Challenged
`
`Claims here depends from at least one of those cancelled claims.3
`
`C.
`Person of Ordinary Skill in the Art (“POSA”)
`A POSA in the art of the ’347 patent would have either: (1) a graduate
`
`degree in mechanical, electrical or automotive engineering with at least some
`
`experience in the design and control of combustion engines, electric or hybrid
`
`electric vehicle propulsion systems, or design and control of automotive
`
`transmissions, or (2) a bachelor’s degree in mechanical, electrical or automotive
`
`engineering and at least five years of experience in the design of combustion
`
`engines, electric vehicle propulsion systems, or automotive transmissions.
`
`BMW1008, ¶¶43-46.
`
`
`2 Claim 28—from which challenged Claim 33 depends—contains the same
`
`features of cancelled Claim 7, and was cancelled based on yet another reference in
`
`IPR2015-00794. BMW1006. The Federal Circuit affirmed. BMW1007.
`
`3 The supporting declaration submitted here as BMW1008 is from the same expert
`
`supporting the Petitions in IPR2014-00571 and IPR2014-00579, and includes the
`
`content of his original (BMW1008, §§I.-XIX.) and responsive (BMW1008, §XX)
`
`declarations in those IPRs.
`
`5
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`

`

` Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`
`III. Legal Standards
`A. Claim Construction
`In an inter partes review, claim terms “shall be construed using the same
`
`claim construction standard that would be used to construe the claim in a civil
`
`action.” 37 C.F.R. §42.100(b); Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
`
`Cir. 2005).
`
`B.
`Issue Preclusion
`Issue preclusion prevents a party from re-litigating a position in an IPR
`
`previously decided against it in another IPR. Papst Licensing GMBH & Co. KG v.
`
`Samsung Elecs. Am., Inc., 924 F.3d 1243, 1250-51 (Fed. Cir. 2019). Issue
`
`preclusion applies where: there is an “(1) identity of the issues in a prior
`
`proceeding; (2) the issues were actually litigated; (3) the determination of the
`
`issues was necessary to the resulting judgment; and, (4) the party defending against
`
`preclusion had a full and fair opportunity to litigate the issues.” In re Trans Texas
`
`Holdings Corp., 498 F.3d 1290, 1297 (Fed. Cir. 2007).
`
`IV. Terms Already Construed by the Board
`The Board has already construed the following claim terms:
`
`Term
`
`“road load” or “RL”
`
`Construction
`
`amount of instantaneous torque required
`for propulsion of the vehicle
`
`“setpoint” or “SP”
`
`a predefined torque value that may or
`
`6
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`

` Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`may not be reset
`
`“monitoring patterns of vehicle
`operation over time”
`
`
`The first two terms were construed in the FWDs identified above, and
`
`monitoring a driver’s repeated driving
`operations over time
`
`expressly considered and affirmed by the Federal Circuit. BMW1003, 8, 11;
`
`BMW1004, 8, 11; BMW1005.4 The third term was also construed in a FWD
`
`affirmed by the Federal Circuit in IPR2014-00884. BMW1011, 13; BMW1005. In
`
`each instance, the Board considered the term’s “ordinary and customary
`
`meaning…as understood by [a POSA] reading the patent’s entire written
`
`disclosure.” BMW1003, 7; BMW1004, 5-6; BMW1011, 6.
`
`In reaching its construction of the term “SP” the Board considered and
`
`rejected a district court construction as being “neither supported by the claim
`
`language nor the specification.” BMW1003, 12; BMW1004, 13; BMW1006, 11;
`
`BMW1010, 11; BMW1011, 10-11. The Board went on to apply its constructions of
`
`“SP” and “RL” to cancel independent Claims 1 and 24, from which each of the
`
`4 In three other FWDs the Board similarly construed “road load” to mean “the
`amount of instantaneous torque required to propel the vehicle, be it positive or
`negative,” and “setpoint” to mean a “predetermined torque value that may or may
`not be reset.” BMW1006, 9, 12; BMW1010, 8- 9; BMW1011, 7, 10. These were
`also affirmed by the Federal Circuit. BMW1005; BMW1007. There is no
`substantive difference between the two sets of constructions.
`
`7
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`

`

` Corrected Petition, IPR2020-00994
`U.S. Patent No. 7,104,347
`challenged claims here depends and in which those terms must be used
`
`consistently.
`
`As for the “monitoring patterns of vehicle operation over time” limitation,
`
`the Board agreed with Patent Owners that the specification “supports a
`
`construction that [the limitation] refers to how the operator actually drives the
`
`vehicle over some period of time, as opposed to monitoring an internal data point
`
`of the vehicle…(such as battery state of charge).” BMW1011, 11-13. Based on
`
`their construction, Patent Owners succeeded in having the Board deny the
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`challenge to Claim 24’s patentability based on a reference (not used in the
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`challenge here) that the Board found to disclose only monitoring the battery state
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`of charge. BMW1011, 24-25.
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`Petitioners adopt the Board’s constructions of the terms above, and accord
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`the plain and ordinary meaning to the remaining terms.5
`
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`5 Patent Owners either agreed to or did not challenge the Board’s construction of
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`“RL” in subsequent IPRs. BMW1011, 7; BMW1006, 9; BMW1010, 9.
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`U.S. Patent No. 7,104,347
`
`V.
`Statutory Grounds of Challenge
`Ground Basis
`1a
`Claim 24: obvious over Severinsky in view of Graf
`1b
`Claims 33: obvious over Severinsky in view of Ma
`1c
`Claim 38: obvious over Severinsky in view of Ehsani
`2a
`Claim 2: obvious over Severinsky in view of Ehsani and Graf
`2b
`Claim 11: obvious over Severinsky in view of Ehsani and Ma
`2c
`Claim 17: obvious over Severinsky in view of Ehsani
`3a
`Claim 24: obvious over Severinsky in view of Nii
`3b
`Claim 2: obvious over Severinsky in view of Ehsani and Nii
`4a
`Claims 24 and 2: obvious over Bumby in view of Graf
`4b
`Claims 33 and 11: obvious over Bumby in view of Ma
`4c
`Claims 38 and 17: obvious over Bumby in view of Ehsani
`
`
`VI. Overview of the Cited Art
`A. Background of the Art
`For more than 100 years, numerous hybrid architectures have been explored
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`in an effort to improve engine efficiency, fuel economy, and emissions. By
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`September 1998, numerous architectures had been known, and successfully built
`
`and tested on public roads. BMW1008, ¶¶47-60. They typically employed electric
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`motors to ensure the internal combustion engine (“ICE”) only operates within its
`
`most efficient operating region, or “sweet spot.” BMW1008, ¶¶61-76. Some hybrid
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`U.S. Patent No. 7,104,347
`vehicles employed “one-motor” architectures while others employed two motors.
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`BMW1008, ¶¶77-111.
`
`It was known that engines operate inefficiently at low torque loads and
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`vehicle speeds. Hybrid vehicles overcame this inefficiency by including a traction
`
`motor with sufficient power to propel the vehicle at low speeds and low loads, thus
`
`restricting engine operation to regions of high efficiency, as the vehicle speed and
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`load increased sufficiently. BMW1008, ¶¶112-31.
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`It was further known that a hybrid vehicle’s engine operation could be
`
`restricted to its “sweet spot” using a control strategy that typically included: (1) an
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`all-electric mode at low loads or speeds at which engine operation would be
`
`inefficient; (2) an engine-only mode during highway cruising at higher speeds or
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`loads, at which engine operation would be efficient; (3) a recharge mode where the
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`vehicle operates a generator to recharge the battery; and (4) an acceleration mode
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`where both the engine and motor are used when the torque demand exceeds the
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`engine’s capabilities. BMW1008, ¶¶131-37. A turbocharger was known to be used
`
`in hybrid vehicles to further supplement the engine’s torque beyond its capabilities
`
`during sustained periods of combined engine and motor use. BMW1008, ¶¶143-54.
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`It was also known that the torque levels at which the various driving modes
`
`were selected could be adjusted depending on various vehicle variables as well as
`
`based on a driver’s operation of the vehicle. A driver’s driving patterns were
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`known to be monitored over time and used to further increase operating efficiency.
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`BMW1008, ¶¶138-42.
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`Furthermore, it was known that synchronizing the engine and motor speed
`
`before engaging the engine’s output shaft with the drivetrain when switching
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`modes was desirable to reduce wear and tear on the clutch and provide for
`
`smoother engagement. Doing so was also known to allow a non-slipping clutch to
`
`be used, which was known to increase the efficiency of power transmission.
`
`BMW1008, ¶¶492-94.
`
`B.
`Severinsky – U.S. Patent No. 5,343,970
`Severinsky, entitled “Hybrid Electric Vehicle,” issued on September 6, 1994
`
`to Alex J. Severinsky, one of the ’347 patent’s named inventors. BMW1013;
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`BMW1008, ¶¶195-98. Severinsky is prior art under 35 U.S.C. §102(b) (pre-AIA),
`
`and the ’347 patent recognizes it as such. BMW1001, 10:37-11:34. Severinsky was
`
`not applied during the ’347 patent’s prosecution. The Board has found that
`
`Severinsky rendered obvious independent Claim 23’s “method of control of a
`
`hybrid vehicle” that only requires a one-electric motor based architecture, and that
`
`Severinsky in combination with Ehsani rendered obvious the two-motor based
`
`“hybrid vehicle” architecture of independent Claim 1. BMW1003. Severinsky, and
`
`Severinsky/Ehsani, form base references used in challenging the dependent claims’
`
`additional features here.
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`
`C. Bumby
`Bumby-I through Bumby-V are a series of 1980s journal publications that
`
`pertain to a hybrid vehicle research and development project by Professor James
`
`Bumby and others at the University of Durham in the United Kingdom
`
`(collectively, “Bumby”). BMW1008, ¶¶199-218. Bumby-I was published on
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`September 1985 (BMW1014, 1; BMW1008, ¶¶219-30); Bumby-II on November
`
`1987 (BMW1015, 1; BMW1008, ¶¶231-44); Bumby-III on January 1988
`
`(BMW1016, 1; BMW1008, ¶¶245-48); Bumby-IV on April 1, 1988 (BMW1017,
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`1; BMW1008, ¶¶249-54); and Bumby-V on January 1, 1990 (BMW1018, 1;
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`BMW1008, ¶¶255-57). Each of Bumby-I through Bumby-V is prior art under 35
`
`U.S.C. §102(b) (pre-AIA) and was not cited during prosecution.
`
`The Board has already held that a POSA “would have viewed the five
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`Bumby references as describing various phases of the same development effort for
`
`implementing an operable control strategy for a hybrid vehicle, and, thus, would
`
`have been led to combine their respective teachings.” BMW1004, 19; BMW1008,
`
`¶¶199-205. That finding should have preclusive effect here: this issue was already
`
`litigated in IPR2014-00579 and the subsequent Federal Circuit appeal; it was
`
`necessary to the FWD (affirmed by the Federal Circuit); Patent Owners had a full
`
`and fair opportunity to litigate the issue; and the issue here is identical to the one
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`already decided. See In re Trans Texas, 498 F.3d at 1297.
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`Furthermore, the Board has found that Bumby rendered obvious both
`
`method Claim 23’s one electric motor based hybrid vehicle architecture and
`
`apparatus Claim 1’s two-motor based architecture. BMW1004. Bumby likewise
`
`forms a base reference used herein.
`
`D. Ehsani – U.S. Patent No. 5,586,613
`Ehsani, entitled “Electrically Peaking Hybrid System and Method,” issued
`
`on December 24, 1996. BMW1019. Ehsani is prior art under 35 U.S.C. §102(b).
`
`Ehsani was not applied during prosecution. In addition to being combined with
`
`Severinsky in rendering obvious independent Claim 1’s two-motor based “hybrid
`
`vehicle” architecture, Ehsani discloses that the two motors can be used such that
`
`one of the electric motors can be “placed on each of the individual drive trains to
`
`provide all wheel drive.” BMW1019, 3:30-33; 8:58-9:4. Indeed, the ’347 patent
`
`itself appreciated Ehsani’s teachings of using a first motor and engine to drive a
`
`first set of wheels and a second motor to independently drive a second set.
`
`Compare BMW1001, 10:21-30 with 29:24-39. Claim 17 of the ’347 patent added
`
`Ehsani’s two-motor, all-wheel drive architecture to the control scheme of Claim 1.
`
`BMW1008, ¶¶258-64.
`
`E. Graf – U.S. Patent No. 6,188,945
`Graf, entitled “Drive Train Control for a Motor Vehicle,” was filed on
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`September 12, 1997 (and issued on February 13, 2001). BMW1020. Graf is prior
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