Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No. 35
`
` Entered: January 3, 2022
`
`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.
`____________
`
`IPR2020-01299
`Patent 8,630,761 B2
`____________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`571-272-7822
`
`
`
` Paper No. 35
`
` Entered: January 3, 2022
`
`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.
`____________
`
`IPR2020-01299
`Patent 8,630,761 B2
`____________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`IPR2020-01299
`Patent 8,630,761 B2
`
`I.
`
`INTRODUCTION
`
`Bayerische Motoren Werke Aktiengesellschaft and BMW of North
`America, LLC, (collectively “Petitioner” or “BMW”) filed a Petition (Paper
`1, “Pet.”) requesting an inter partes review of claims 1–12 (the “challenged
`claims”) of U.S. Patent No. 8,630,761 B2 (Ex. 1001, “the ’761 patent”).
`Petitioner submitted the Declaration of Dr. Gregory W. Davis in support of
`the Petition. Ex. 1008. Patent Owner, Paice LLC and the Abell Foundation,
`Inc., timely filed a Preliminary Response (Paper 8, “Prelim. Resp.”). Taking
`into account the arguments presented in Patent Owner’s Preliminary
`Response, we determined there was a reasonable likelihood Petitioner would
`prevail in its contention that at least one of the challenged claims of the ’761
`patent is unpatentable under 35 U.S.C. § 103(a). On January 15, 2021, we
`instituted this inter partes review as to the challenged claims and all grounds
`presented in the Petition. Paper 10 (“Dec.”).
`
`During the course of trial, Patent Owner filed a Patent Owner
`Response. Paper 18 (“PO Resp.”). Patent Owner also filed a Declaration of
`Dr. Mahdi Shahbakhti in support of its response. Ex. 2016. Petitioner filed
`a Reply to Patent Owner’s Response. Paper 23 (“Pet. Reply”). Petitioner
`filed a Reply Declaration of Dr. Gregory W. Davis with its Reply. Ex. 1088.
`Patent Owner filed a Sur-reply. Paper 27 (“Sur-reply”). An oral hearing
`was held on October 19, 2021 and a transcript of the hearing has been
`entered into the record. Paper 33 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This is a Final Written
`Decision under 35 U.S.C. § 318(a) as to the patentability of the challenged
`claims of the ’761 patent. For the reasons discussed below, we determine
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`Petitioner establishes by a preponderance of the evidence that claims 1–12 of
`the ’761 patent are unpatentable.
`
`Related Matters
`A.
`The parties state the ’761 patent is asserted in Paice LLC et al. v.
`Bayerische Motoren Werke Aktiengesellschaft, 1:19-cv-03348-SAG (D.
`Md.). Pet. 74; Paper 5, 2.
`
`Real Parties in Interest
`B.
`Petitioner and Patent Owner each identifies itself as the only real party
`in interest. Pet. 74; Paper 5, 2.
`C.
`The ’761 Patent (Ex. 1001)
`The ’761 patent issued on January 14, 2014, and is titled “Hybrid
`Vehicles.” Ex. 1001, codes (45), (54). The ’761 patent issued from U.S.
`Patent Application 13/573,728 filed on October 5, 2012 and claims priority
`through a series of applications to U.S. Provisional Patent Applications
`60/100,095, filed on September 14, 1998 and 60/122,296, filed on March 1,
`1999. Id. at codes (21), (22), (60).
`The ’761 patent generally relates to hybrid vehicles “in which both an
`internal combustion engine and one or more electric motors are provided to
`supply torque to the driving wheels of the vehicle … [for] achieving
`substantially improved fuel economy and reduced pollutant emissions.”
`Ex. 1001, 1:16–24. The ’761 patent describes various modes of operation of
`the hybrid vehicle powertrain that are “controlled by microprocessor 48 [as]
`a function of the state of charge of the battery bank, the instantaneous road
`load, and time.” Id. at 35:61–66. The ’761 patent further describes that
`“microprocessor 48 controls the vehicle's mode of operation at any given
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`time in dependence on ‘recent history,’ as well as on the instantaneous road
`load and battery charge state.” Id. at 36:23–26.
`Figure 6 of the ’761 patent, reproduced below, schematically
`illustrates an embodiment of the claimed invention.
`
`
`
`
`Figure 6 is a three-axis schematic with time on one axis, road load on a
`second axis, and battery state of charge on the third axis, illustrating that the
`mode of vehicle operation is a function of the state of charge of the battery
`bank, the instantaneous road load, and time. Id. 21:53–57.
`
`As shown in Figure 6, “during city driving (mode I), defined in this
`example as driving where the vehicle’s instantaneous torque requirements,
`or ‘road load,’ is up to 30% of the engine's maximum torque, the vehicle is
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`operated as a ‘straight electric’ car.” Id. at 36:27–31. In mode I, “the clutch
`[is] disengaged and energy from the battery bank 22 [is] used to power
`traction motor 25 to propel the vehicle, as long as the battery remains
`charged to between 50 and 70% of its full charge.” Id. at 36:31–34. “If the
`charge falls to below a given value … mode II is entered as indicated, the
`engine is started, and the starter motor 21 is operated as a generator to
`charge the battery to substantially full charge.” Id. at 36:34–39. Mode III
`permits operation of the vehicle as an electric car “when the battery falls to
`below 40% of full charge, for example, if there is a fault in the engine or
`charging system, but only on an emergency basis; such deep discharge is
`harmful to battery life.” Id. at 36:39–44. “During highway cruising, region
`IV, where the road load is between about 30% and 100% of the engine’s
`maximum torque output, the engine alone is used to propel the vehicle.” Id.
`at 36:45–47. “If the operator then calls for additional power, e.g. for
`acceleration or passing, region V is entered.” Id. at 37:3–4. There, “the
`microprocessor detects that the road load exceeds 100% of the engine’s
`maximum torque output, it controls inverter/charger 27 so that energy flows
`from battery bank 22 to traction motor 25, providing torque propelling the
`vehicle in addition to that provided by engine 40.” Id. at 37:3–9.
`
`The above embodiment includes a controlled transition from low-
`speed operation to highway cruising at a transition point or set point (i.e.,
`between operation in modes I and IV). Id. at 39:41–46. Using a constant set
`point, however, can sometimes lead to undesirable engine starting and shut-
`off, until extended highway cruising is attained. Id. at 39:63–66. To address
`this potential undesirable effect, the ’761 patent uses the microprocessor to
`monitor the vehicle’s operation over a period of days or weeks and adjust the
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`set point in response to a repetitive driving pattern. Id. at 39:48–66. The
`’761 patent describes such a pattern as “the operator drives the same route
`from a congested suburban development to a workplace about the same time
`every morning.” Id. at 39:51–53. The ’761 patent explains that by the
`microprocessor “monitoring the road load over time, and comparing it to
`different set points accordingly, much of this undesirable repetitive sequence
`of engine starting and shut-off can be eliminated.” Id. at 40:26–29.
`D. Challenged Claims
`Claims 1 and 7 are independent. Ex. 1001, 56:33–57:37. Claim 1,
`reproduced below, illustrates the subject matter of the challenged claims.
`1. A method of operation of a hybrid vehicle, comprising steps of:
`storing and supplying electrical power from a battery bank,
`applying torque to road wheels of said hybrid vehicle from one or
`both of an internal combustion engine and at least one traction
`motor, and
`controlling flow of torque between said internal combustion engine,
`said at least one traction motor, and said road wheels, and
`controlling flow of electrical power between said battery bank and
`said at least one traction motor employing a controller, and
`wherein said controller derives a predicted near-term pattern of
`operation of said hybrid vehicle by monitoring operation of said
`hybrid vehicle; and
`controls operation of said at least one traction motor and said internal
`combustion engine for propulsion of said hybrid vehicle responsive
`to said derived near-term predicted pattern of operation of said
`hybrid vehicle.
`Asserted Grounds of Unpatentability
`E.
`Petitioner challenges claims 1–12 of the ’761 patent based on the
`asserted grounds of unpatentability set forth below (Pet. 14)1:
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’761
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`Claims(s) Challenged
`1–12
`1–12
`1, 2, 5–8, 11, and 12
`
`
`35 U.S.C. §
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Reference(s)/Basis
`Severinsky2, Quigley3
`Severinsky, Nii4
`Severinsky, Graf5
`
`II. ANALYSIS
`
`A. Overview
`Petitioner bears the burden of establishing the unpatentability of the
`challenged claims by a preponderance of the evidence. 35 U.S.C. § 316(e);
`37 C.F.R. § 42.1(d) (2020). This burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`
`
`patent was filed before the effective date of the relevant amendment, the pre-
`AIA version of § 103 applies.
`2 U.S. Pat. No. 5,343,970, issued Sept. 6, 1994 (Ex. 1013, “Severinsky”).
`3 C. P. Quigley et al., Predicting the Use of a Hybrid Electric Vehicle, IFAC
`Proceedings Volumes, 1996 (Ex. 1054, “Quigley”).
`4 U.S. Pat. No. 5,650,931, issued July 22, 1997 (Ex. 1022, “Nii”).
`5 U.S. Pat. No. 6,188,945 B1, issued Feb. 13, 2001 (Ex. 1020, “Graf”).
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`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations).6 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner contends a person of ordinary skill in the art would have “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 alternatively “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.” Pet. 10 (citing Ex. 1008 ¶¶ 43–46).
`Patent Owner does not address the level of ordinary skill in the art in the
`Patent Owner Response. See generally PO Resp.
`We agree with Petitioner’s level of ordinary skill in the art because it
`appears consistent with the problems addressed in the ’761 patent and the
`prior art of record.
`
`Claim Construction
`C.
`We apply the same claim construction standard used by Article III
`federal courts and the International Trade Commission, both of which follow
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its
`progeny. 37 C.F.R. § 42.100(b). Accordingly, we construe each challenged
`claim of the ’761 patent to generally be “the ordinary and customary
`
`
`6 The parties have not presented any evidence of objective indicia of non-
`obviousness.
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`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent.” Id.
`Petitioner requests we construe the claim terms “predicted near-term
`pattern of operation,” “controls operation … responsive to said derived near-
`term predicted pattern,” and “road load.” Pet. 10–15. Patent Owner takes
`issue with Petitioner’s construction of the term “predicted near-term pattern
`of operation,” and requests we use the construction adopted by the District
`Court in the parallel proceeding or apply the plain and ordinary meaning.
`PO Resp. 15–21. After reviewing the evidence and argument presented by
`Petitioner and Patent Owner, we determine it is not necessary to construe the
`claim terms “controls operation … responsive to said derived near-term
`predicted pattern” and “road load.” See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that
`“we need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Nonetheless, we
`address the construction of the claim term “predicted near-term pattern of
`operation.” In our Decision on Institution, we preliminarily adopted the
`District Court’s construction of this term, which is “an expected pattern of
`operation.” Dec. 12.
`Patent Owner contends we should maintain our preliminary
`construction. PO Resp. 21.7 In the Petitioner Reply, Petitioner does not
`
`
`7 Patent Owner makes additional arguments concerning the “plain meaning
`of the term ‘pattern’” in connection with its contentions concerning Quigley.
`PO Resp. 25. We address those arguments in our analysis of the ground
`based on Severinsky and Quigley.
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`dispute our preliminary construction and submits that “Dr. Davis has
`confirmed his analysis under that construction.” Pet. Reply 2 (citing Ex.
`1088 ¶ 7; Ex. 2034, 46:14–47:19).
`The District Court noted Petitioner “seeks to limit how the controller
`derives this pattern, basing it solely on the driver’s repeated driving
`operations,” while Patent Owner “suggests that the question of how the
`pattern is derived was left open-ended by the claim language and covers
`vehicle operation in general.” Ex. 2007, 9. The District Court rejected
`Petitioner’s arguments for a more limited construction that incorporates
`“monitoring the driver’s repeated driving operations over time” because the
`construction was not supported by the Specification or prosecution history.
`Id. at 11. In adopting the broader construction proposed by Patent Owner,
`the District Court provided the following pertinent observations:
`It is also worth noting that [Patent Owner], whether in the
`specification or at oral argument, has provided few examples of other
`factors that might play into the expected pattern of operation. It
`seems apparent that driving operations will be the most central factor
`in ascertaining the pattern of operation. Nevertheless, the plain
`language does not rule out other inputs. Thus, because [Patent
`Owner]’s construction hews most closely to the broad language of the
`claim, the Court will adopt it: “an expected pattern of operation.”
`
`Id.
`We agree with the District Court’s reasoning and adopt its
`
`construction of “predicted near-term pattern of operation” as “an expected
`pattern of operation.” We, thus, maintain our preliminary construction for
`purposes of this Decision.
`D. Ground 1: Obviousness over Severinsky and Quigley
`Petitioner contends claims 1–12 are obvious over Severinsky and
`Quigley. Pet. 19–50. In support, Petitioner asserts Severinsky discloses
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`most of the limitations of claim 1, and relies on Quigley to disclose, inter
`alia, the last two limitations of claim 18, “wherein said controller derives a
`predicted near-term pattern of operation of said hybrid vehicle by
`monitoring operation of said hybrid vehicle,” and “controls operation of said
`at least one traction motor and said internal combustion engine for
`propulsion of said hybrid vehicle responsive to said derived near-term
`predicted pattern of operation of said hybrid vehicle.” Id. at 25–30.
`Petitioner identifies the disclosures in Severinsky and Quigley alleged to
`describe the subject matter in these limitations. Id. Additionally, Petitioner
`offers declaration testimony from Dr. Gregory W. Davis in support of its
`position. Ex. 1008 ¶¶ 161–280.
`Patent Owner contends “[n]either Severinsky nor Quigley disclose a
`controller that derives a ‘predicted near-term pattern of operation of said
`hybrid vehicle’” when that phrase is properly construed. PO Resp. 22.
`Patent Owner further contends Petitioner “fails to explain how or why these
`references could be combined in the first place.” Id.
`We begin our analysis with a brief overview of Severinsky and
`Quigley. We then address the parties’ respective contentions with respect to
`the challenged claims.
`
`1. Overview of Severinsky — Ex. 1013
`Severinsky is a United States Patent issued on September 6, 1994.
`Ex. 1013, code (45). Severinsky is titled “Hybrid Electric Vehicle.” Id. at
`
`
`8 Independent claim 7 includes limitations similar to claim 1. Petitioner
`relies on its arguments in support of claim 1 for claim 7. See Pet. 49. Patent
`Owner does not provide separate arguments for claim 7. See generally PO
`Resp. 22–36.
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`code (54). Severinsky describes a “parallel hybrid electric vehicle wherein
`an internal combustion engine and an electric motor can separately or
`simultaneously apply torque to the driving wheels of the vehicle, controlled
`to realize maximum fuel efficiency at no penalty in convenience,
`performance, or cost.” Id. at 5:31–36. Severinsky discloses
`“microprocessor 48 is provided with all information relevant to the
`performance of the system, and appropriately controls torque transfer unit
`28, internal combustion engine 40, switching unit 28, and electric motor 20
`to ensure that appropriate torque is delivered to the wheels 34 of the
`vehicle.” Id. at 12:64–13:2. Severinsky further discloses “at all times the
`microprocessor 48 may determine the load (if any) to be provided to the
`engine by the motor, responsive to the load imposed by the vehicle’s
`propulsion requirements, so that the engine 40 can be operated in its most
`fuel efficient operating range.” Id. at 17:11–15. Severinsky uses several
`parameters relevant to the performance of a parallel hybrid vehicle,
`including maximum power available to drive the vehicle, the ratio of internal
`combustion engine maximum power versus that of the electric motor, and
`optimization of the control algorithm. Id. at 21:23–38. Severinsky discloses
`that “these parameters are optimized so as to ensure that the engine is
`operated at all times at its maximum point of efficiency, and such that the
`driver need not consider the power source being employed at any given
`time.” Id.
`
`2. Overview of Quigley — Ex. 1054
`Quigley is an International Federation of Automatic Control (IFAC)
`paper titled “Predicting the Use of a Hybrid Electric Vehicle.” Ex. 1054,
`
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`129.9 Quigley describes an intelligent controller that “relies on the idea that
`many cars will have habitual usage characteristics for a high percentage of
`their journeys, and hence the ability to predict the occurrence of a journey
`and its associated characteristics will be quite high.” Id. at 13010 (emphasis
`added). Quigley’s proposed controller uses signals already present in
`vehicles including: “a) Drivers Operational Inputs: Throttle Brake etc. b)
`Time of day/year c) Engine Management Data: Engine speed etc. d) Road
`speed” which are collectively referred to as “1st Generation Control.” Id.
`Quigley discloses that its “2nd Generation Control . . . would employ the use
`of 1st generation control information but also would have the additional
`advantage of vehicle location information relayed into the vehicle from
`external sources.” Id. (emphasis omitted). Quigley discloses a data logger
`records control parameters, which include “Time of departure, Journey time
`elapsed, Speed over ground, derived from latitude and longitude.” Id. at
`131. Using this data, different types of a driver’s journeys can be classified.
`Id. at 132. Then, the controller can determine, for example, “[i]f it is a
`weekday, and the time is between 07.00–08.00 a.m. then there is a high
`expectation of a journey of 1000 to 1300 seconds duration, with a distance
`around 14km.” Id. at 133 (emphasis omitted). GPS data can also be used to
`provide position data. Id. at 133–134.
`
`
`9 Petitioner submits a Declaration of Sylvia Hall-Ellis, Ph.D to establish “the
`authenticity and public availability” of Quigley. See Ex. 1055. Patent
`Owner does not dispute the authenticity or public availability of Quigley.
`See generally PO Resp.
`10 We refer to the original page numbers in Quigley in this Decision.
`
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`3. Claim 1 (A method of operating a hybrid vehicle)
`a. storing and supplying electrical power from a battery bank11
`Petitioner contends Severinsky’s method of operating a hybrid vehicle
`includes storing and supplying electrical power from battery pack 22. Pet.
`20. Petitioner asserts Severinsky discloses battery pack 22 “is charged by
`power generated by the motor 20 when operated as a generator,” and electric
`motor 20 is “powered by energy stored in a relatively large, high voltage
`battery pack 22.” Id. (citing Ex. 1013, 9:65–10:14, 10:53–58).
`Patent Owner does not directly address Petitioner’s contentions. See
`PO Resp. 22–36.
`Based on the evidence discussed above, we find Severinsky discloses
`this limitation.
`b. applying torque to road wheels of said hybrid vehicle from one
`or both of an internal combustion engine and at least one
`traction motor
`Petitioner contends Severinsky discloses this limitation because “both
`the engine 40 . . . and the motor 20 . . . provide torque to the drive wheels
`34 . . . by way of the controllable torque transfer unit 28.” Pet. 20–21
`(citing Ex. 1013, 10:24–26; Fig. 3). Petitioner provides the following
`annotated version of Severinsky’s Figure 3:
`
`
`11 Here and throughout we use Petitioner’s claim element annotations such
`as “a” for ease of reference.
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`
`Pet. 21. Figure 3 is a block diagram of Severinsky’s parallel hybrid drive
`system. Ex. 1013, 7:45–46. Petitioner adds red highlighting to engine 40,
`orange highlighting to torque transfer unit 28, blue highlighting to motor 20,
`and green highlighting to wheels 34. Pet. 21. Figure 3 also shows engine
`speed and motor speed are input to microprocessor 48 which controls torque
`transfer unit 28. Ex. 1013, Fig. 3.
`Patent Owner does not directly address Petitioner’s contentions. See
`PO Resp. 22–36.
`Based on the evidence discussed above, we find Severinsky discloses
`this limitation.
`c. controlling flow of torque between said internal combustion
`engine, said at least one traction motor, and said road wheels
`Petitioner contends Severinsky discloses this limitation because
`“microprocessor 48 . . . controls the flow of torque between the motor 20 . . .
`the engine 40 . . . and the wheels 34 . . . responsive to the mode of operation
`of the vehicle.” Pet. 22 (citing Ex. 1013, 10:26–30, Fig. 3).
`
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`Patent Owner does not directly address Petitioner’s contentions. See
`PO Resp. 22–36.
`Based on the evidence discussed above, we find Severinsky discloses
`this limitation.
`d. controlling flow of electrical power between said battery bank
`and said at least one traction motor employing a controller
`Petitioner contends Severinsky discloses this limitation because
`microprocessor controller 48 controls “the bi-directional flow of power
`between the battery 22 . . . and the motor 20.” Pet. 23 (citing Ex. 1013,
`10:4–23, Fig. 3).
`Patent Owner does not directly address Petitioner’s contentions. See
`PO Resp. 22–36.
`Based on the evidence discussed above, we find Severinsky discloses
`this limitation.
`e. said controller derives a predicted near-term pattern of
`operation of said hybrid vehicle by monitoring operation of
`said hybrid vehicle
`Petitioner contends that although “this claim language was added by
`Applicants specifically to avoid Severinsky … [this] functionality, however,
`was well known in the prior art,” as evidenced by Quigley. Pet. 25.
`Specifically, Petitioner contends Quigley discloses an “‘intelligent controller
`for hybrid electric vehicles’ that is ‘required to manage energy flow through
`the hybrid drive train and for optimum control.’” Id. (citing Ex. 1054, 129).
`According to Petitioner, “Quigley ‘predict[s]’ certain ‘parameters at the start
`of the journey using intelligent classification techniques and a knowledge
`base of previous journey histories.’” Id. (quoting Ex. 1054, 129) (alteration
`in original). Petitioner contends “Quigley discloses that ‘many cars will
`have habitual usage characteristics for a high percentage of their journeys,
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`and hence the ability to predict the occurrence of a journey and its
`associated characteristics will be quite high.” Id. (citing Ex. 1054, 130).
`Petitioner further contends “Quigley’s method determines the expected
`upcoming vehicle operation based on past repetitive driver behavior (i.e.,
`during commuting times).” Id. at 27–28. According to Petitioner,
`“Quigley’s disclosure is consistent with the example provided in the ’761
`patent, which refers to detecting patterns based on an operator’s daily
`commute.” Id. at 28 (citing Ex. 1001, 39:51–61).
`Patent Owner counters “Quigley does not derive a ‘predicted near-
`term’ or ‘expected pattern of operation.’” PO Resp. 22–23. Patent Owner
`contends Quigley predicts certain parameters but “Quigley’s ‘parameters’
`are not a pattern of any kind,” and do “not establish an ‘expected pattern of
`operation.’” Id. at 23 (citing Pet. 25; Ex. 1054,12 1; Ex. 2016 ¶¶ 47–50); see
`also Sur-reply, 3–4 (arguing the same). Patent Owner further contends
`“Quigley . . . does not predict a ‘journey’” but “only predicts parameters
`consisting of ‘[j]ourney duration, journey distance, time of departure, [and]
`journey destination.” Id. at 24 (citing Ex. 1054, 2; Ex. 2016 ¶ 50); see also
`Sur-reply 5 (arguing the same (citing Ex. 2016 ¶¶ 50–53)). According to
`Patent Owner, “[n]one of these ‘parameters’ –– whether together or in
`isolation –– constitutes a pattern of operation of the hybrid vehicle.” Id.
`(citing Ex. 2016 ¶ 50). Patent Owner further contends that “while Quigley
`states that the controller could monitor ‘Drivers Operation Inputs’ (including
`the throttle and brake), Quigley actually does not monitor these variables
`when conducting experiments or disclose any other use for this
`
`
`12 Patent Owner refers to the page numbers added by Petitioner to Quigley.
`
`
`
`17
`
`
`
`IPR2020-01299
`Patent 8,630,761 B2
`information.” Id. at 23 n. 11 (citing Ex. 1054, 2; Ex. 2016 ¶ 64) (emphasis
`omitted). Patent Owner further contends the plain meaning of “‘pattern’ is
`not so broad as to capture simple parameters such as isolated values
`representing distance or duration” and a skilled artisan “would understand a
`‘pattern of operation of said hybrid vehicle’ to require an order or sequence
`of driving operations.” Id. at 25 (citing Ex. 2016 ¶¶ 51–53).13 Patent Owner
`continues “[t]here is neither a sequence or order to a single measurement of
`time or distance” which Patent Owner contrasts with a disclosed
`embodiment in the ’761 patent which “describes a pattern consisting of road
`load remaining under 20% MTO14 followed by road load varying between 0
`and 50% MTO followed by road load increasing to 150% MTO.” Id. at 26–
`28 (citing Ex. 1001, 39:51–58; Ex. 2016, ¶¶ 52–53).
`Petitioner, in turn, contends Patent Owner distinguished Severinsky
`during prosecution of the ’761 patent by arguing “in contrast to a vehicle
`that determines its mode of operation ‘strictly in real time’ based on a
`‘vehicle designer’s’ anticipated mode of operation,” the claims of the ’761
`patent “require that the vehicle’s controller monitor operation of the
`particular vehicle and use that data to predict future operational patterns and
`alter the vehicle operation accordingly.” Pet. Reply 3 (citing Ex. 1052, 58–
`59). Petitioner provides an annotated version of Quigley’s Figure 2
`reproduced below, which according to Petitioner, shows that the purportedly
`
`
`13 Patent Owner cites to several dictionary definitions of “pattern” to support
`this construction of “pattern.” PO Resp. 25 (citing Ex. 2029, 3; Ex. 2030, 3;
`Ex. 2031, 3).
`14 “MTO” refers to maximum torque output.
`
`
`
`18
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`IPR2020-01299
`Patent 8,630,761 B2
`novel feature of the ’761 patent “was described precisely by Quigley.” Id. at
`3–4.
`
`
`
`Figure 2 of Quigley is a block diagram of a decision process including a
`block shaded in purple by Petitioner with the text “Is a Journey Expected?”
`and a block shaded in yellow by Petitioner with the text “Controller Strategy
`for Expected Journey.” Id. at 3–4 (citing Ex. 1054, 131, Fig. 2). The purple
`block indicates two possible steps for the controller. Id. If a journey is not
`expected, the vehicle will utilize a “General Purpose Control Algorithm,”
`but if the journey is expected then the vehicle will utilize a “Controller
`Strategy for Expected Journey.” Id.
`For the following reasons, Patent Owner’s contentions are unavailing.
`During prosecution of the ’761 patent, the Examiner rejected the
`pending claims under 35 U.S.C. § 102 based on the same Severinsky
`reference upon which Petitioner relies. Ex. 1052, 91 (June 12, 2013 Office
`
`
`
`19
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`IPR2020-01299
`Patent 8,630,761 B2
`Action). The applicant traversed the rejection over Severinsky with the
`following comments:
`Independent claims 17 and 23 have both been amended hereby to
`recite that the controller performs the separate steps of monitoring
`vehicle operation to derive a predicted pattern of operation and then
`controlling vehicle operation accordingly . . .
`
`Further, the ’970 patent [Severinsky] says nothing about the
`controller performing the step of monitoring vehicle operations in
`order to derive a predicted pattern of operation or anticipate a pattern
`of operation of the vehicle. . . .
`
`[In Severinsky] it is the vehicle designer who anticipates highway and
`low-speed driving, and incorporates the necessary components into
`the vehicle to permit the vehicle to perform both modes . . . This is
`very different from the vehicle’s controller monitoring operation of
`the particular vehicle and using the data to predict future operations
`patterns accordingly as claimed. . .
`
`For example, the ’970 patent fails to disclose that the controller
`monitors variation in road load experienced by the hybrid vehicle and
`compares patterns of variation in said road load experienced from day
`to day in order to identify said repetitive patterns of vehicle operation.
`Id. at 58–59.
`The applicant, thus, distinguished Severinsky because its controller
`does not monitor operation of the vehicle and use data derived from the
`monitoring to adjust the set point for mode switching. Essentially, applicant
`argued that Severinsky discloses operating only under an analog to the
`“General Purpose Control Algorithm” shown in Figure 2 of Quigley as
`opposed to optionally operating under “Controller Strategy for Expected
`Journey.”
`We agree with Petitioner that Quigley discloses “exactly what the
`Applicants believed was novel in the ’761 patent over Severinsky. In short,
`
`
`
`20
`
`
`
`IPR2020-01299
`Patent 8,63
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