UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT and
`BMW OF NORTH AMERICA, LLC,
`Petitioners,
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`v.
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`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owners.
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`Case IPR2020-01299
`Patent 8,630,761
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`PATENT OWNERS’ RESPONSE
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................... 1
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` 
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`
`
`I.
`
`II.  TECHNOLOGY OVERVIEW ............................................................................ 5 
`A.  The ’761 Patent and File History...................................................................... 5 
`B.  Overview of Severinsky’s Parallel Hybrid vs. Nii’s Series Hybrid ............... 10 
`III. CLAIM CONSTRUCTION .............................................................................. 15 
`IV. BMW’S GROUNDS FAIL TO DEMONSTRATE OBVIOUSNESS ............. 22 
`A.  Ground 1 Based on Severinsky in View of Quigley Is Deficient (Claims
`1-12) ...................................................................................................................... 22 
`1.  Severinsky in view of Quigley fails to teach or suggest “deriv[ing] a
`predicted near-term pattern of operation of said hybrid vehicle” (Claim 1) 22 
`2.  No reason to combine Severinsky and Quigley ........................................... 30 
`3.  Severinsky in view of Quigley fails to teach or suggest “wherein said
`derived predicted pattern of operation comprises at least one repetitive
`pattern of operation of said hybrid vehicle.” (Claims 2 and 8) .................... 36 
`4.  Severinsky in view of Quigley fails to teach or suggest “wherein said
`controller monitors variation in road load experienced by said hybrid
`vehicle and compares patterns of variation in road load experienced from
`day to day in order to identify said repetitive patterns of operation of said
`hybrid vehicle.” (Claims 4 and 10) .............................................................. 37 
`B.  Ground 2 Based on Severinsky in View of Nii Is Deficient (Claims 1-12) ... 44 
`1.  Severinsky in view of Nii fails to teach or suggest “deriv[ing] a predicted
`near-term pattern of operation of said hybrid vehicle” ................................ 44 
`2.  No reason to combine Severinsky and Nii ................................................... 48 
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`Attorney Docket No: 36351-0017IP1
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`3.  Severinsky in view of Nii fails to teach or suggest “wherein said derived
`predicted pattern of operation comprises at least one repetitive pattern of
`operation of said hybrid vehicle.” (Claims 2 and 8) .................................... 59 
`4.  Severinsky in view of Nii fails to teach or suggest “wherein said controller
`monitors variation in road load experienced by said hybrid vehicle and
`compares patterns of variation in road load experienced from day to day in
`order to identify said repetitive patterns of operation of said hybrid vehicle.”
`(Claims 4 and 10) ......................................................................................... 59 
`C.  Ground 3 Based on Severinsky in View of Graf Is Deficient (Claims 1-2, 5-
`8, 11-12) ................................................................................................................ 62 
`1.  Severinsky in view of Graf fails to teach or suggest “deriv[ing] a predicted
`near-term pattern of operation of said hybrid vehicle” ................................ 62 
`V.  CONCLUSION .................................................................................................. 65 
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`EXHIBIT LIST
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`2001
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`2002
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`Exhibit Number Description
`BMW’s Opening Claim Construction Brief from Paice LLC
`and the Abell Foundation v. Bayerische Motoren Werke
`Aktiengesellschaft and BMW of North AmericA, LLC, Civil
`Action No. 19-CV-3348-SAG, filed August 7, 2020
`Docket Navigator Statistics – Top Patents by Number of
`IPRs
`Printout of http://www.paicehybrid.com/licensing-
`agreements/
`Scheduling Order [Docket No. 36] from Paice LLC and the
`Abell Foundation v. Bayerische Motoren Werke
`Aktiengesellschaft and BMW of North America, LLC, Civil
`Action No. 1:19-cv-03348-SAG (USDC-DMD) dated
`February 25, 2020
`Ex. P to BMW Invalidity Contentions dated June 8, 2020
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008-2015
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`2016
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`2017
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`BMW’s Responsive Claim Construction Statement from
`Paice LLC and the Abell Foundation v. Bayerische Motoren
`Werke Aktiengesellschaft and BMW of North America, LLC,
`Civil Action No. 19-CV-3348-SAG, served August 7, 2020
`Markman Order from Paice LLC and the Abell Foundation
`v. Bayerische Motoren Werke Aktiengesellschaft and BMW
`of North America, LLC, Civil Action No. 19-CV-3348-
`SAG, filed October 26, 2020
`Reserved
`
`Declaration of Mahdi Shahbakhti, Ph.D.
`
`Curriculum Vitae of Mahdi Shahbakhti, Ph.D.
`
`2018-2019
`
`Reserved
`
`2020
`
`2021
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`Selected Pages From Merhdad Ehsani et al, Modern
`Electric, Hybrid Electric, and Fuel Cell Vehicles
`Reserved
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`2022-2028
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`Reserved
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`2029
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`2030
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`2031
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`2032
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`2033
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`2034
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`2035
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`Oxford Dictionary
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`The Illustrated Dictionary of Electronics
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`Encarta World English Dictionary
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`Handbook of Air Pollution From Internal Combustion
`Engines
`Guzzella et al., Vehicle Propulsion Systems
`
`Deposition Transcript of Gregory Davis, Ph.D.
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`BMW’s Reply Claim Construction Brief from Paice LLC
`and the Abell Foundation v. Bayerische Motoren Werke
`Aktiengesellschaft and BMW of North AmericA, LLC, Civil
`Action No. 19-CV-3348-SAG, filed August 7, 2020
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`I.
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`Case IPR2020-01299
`Attorney Docket No: 36351-0017IP1
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.107(a), Patent Owners, Paice LLC and the Abell
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`Foundation (“Patent Owners” or “Paice”) submit this Response in response to the
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`Petition for Inter Partes Review (“IPR”) of U.S. Patent No. 8,630,761 (“the ‘761
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`patent”) filed by Bayerische Motoren Werke Aktiengesellschaft and BMW of
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`North America, LLC (“Petitioners” or “BMW”).
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`The ’761 patent describes and claims novel control strategies employed by a
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`hybrid controller used in hybrid electric vehicles. The ’761 patent describes the
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`use of the hybrid controller to monitor operation of the vehicle in order to predict
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`an upcoming pattern of vehicle operation to better control the components of the
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`hybrid system such as the electric motor and/or combustion engine. The ’761
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`patent claims—all of which BMW challenges—are directed to this key feature.
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`For example, claim 1 recites using the hybrid controller to “derive[] a predicted
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`near-term pattern of operation of said hybrid vehicle by monitoring operation of
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`said hybrid vehicle” and “control[] operation of [the] traction motor and …
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`combustion engine for propulsion of said hybrid vehicle responsive to said derived
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`near-term predicted pattern of operation ….” (Ex. 1001, claim 1 (emphasis
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`added).) As made clear by the Board preliminarily construing “a predicted near-
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`term pattern of operation” as an “expected pattern of operation” (Instition Decision
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`at 12), the Challenged Claims focus on deriving a pattern of operation that the
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`vehicle is going to follow in the future (as opposed to any patterns of vehicle
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`operation that may have taken place in the past).
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`The Petition fails on the merits because none of the prior art combinations
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`proposed by BMW teach or suggest deriving a “predicted near-term,” i.e., an
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`expected, pattern of operation. The prior art combinations—all based on
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`Severinsky—at best derive single data points, not a pattern of vehicle operation.
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`Moreover, BMW fails to explain how or why a POSA could modify Severinsky
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`with the teachings of each of the secondary references on which BMW relies to
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`show an “expected pattern of vehicle operation.” And for good reason -
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`Severinsky’s control system would have no use for these data points derived by the
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`other prior art references such that the proposed combinations achieve no technical
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`benefit. BMW’s fanciful interpretation of Severinsky and the secondary references
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`leads to no end because it is not based on record evidence.
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`As to Ground 1, Quigley predicts journey distance and duration, both of
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`which are merely parameters—not an “expected pattern of vehicle operation.”
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`Moreover, as explained in more detail below,1 a POSA would understand that
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`Severinsky’s control system cannot be improved by predicting journey distance
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`                                                            
`1 Patent Owner’s Response is supported by the declaration of Mahdi Shahbakhti,
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`Ph.D. See Ex. 2016.
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`2
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`and duration. These journey parameters are simply too general for Severinsky’s
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`controller to better adjust its control system according to the instantanoues torque
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`required to propel the vehicle as BMW alleges, and Severinsky simply does not
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`include any mechanism for doing so. And Quigley does not teach or suggest
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`predicting any other information that would be useful in Severinsky’s control
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`system.
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`As to Ground 2, Nii predicts the average power value at which to set the
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`generator for charging the battery in a “series” hybrid vehicle where the engine is
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`disconnected from the wheels. The average power is another example of a single
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`data point, which is not an “expected pattern of vehicle operation.” Moreover, a
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`POSA would not look to Nii’s control system for determining an average power
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`value because average power has no relation to (or use for) better aligning
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`Severinsky’s control system with the instantaneous torque required to propel the
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`vehicle as BMW asserts.
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`As to Ground 3, Graf fails to disclose any information related to a predicted
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`or “expected pattern of vehicle operation.” In its Institution Decision, the Board
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`correctly recognized that “Petitioner’s contention ‘that characterizing the driver
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`type or driving style of the driver [in Graf] would require ‘deriv[ing] a predicted
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`near-term pattern’’ … does not appear on this record to be supported by evidence
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`from Graf.” Institution Decision (“ID”), 36 (citations omitted).
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`For these and other reasons discussed below, the Board should uphold
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`patentability of all Challenged Claims. 2
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`                                                            
`2 In Arthrex, Inc. v. Smith & Nephew, Inc., Case No. 2018-2140 (Fed. Cir. Oct. 31,
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`2019), the Federal Circuit held that the statutory scheme for appointing APJs
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`violated the Appointments Clause of the U.S. Constitution. The Court proposed to
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`remedy the constitutional defect by severing the application of 35 U.S.C. § 3(c)—
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`which subjects USPTO employees to the removal provisions of 5 U.S.C. §
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`7513(a)—as to APJs. Arthrex, slip op. at 25. Patent Owner understands that in
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`other appeals still pending before the Federal Circuit and Supreme Court, parties
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`have challenged whether this remedy fails to cure the defect. Accordingly, for
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`purposes of preserving these issues, Patent Owner asserts that institution decisions,
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`preliminary guidance on amendments, and future final written decisions rendered
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`by the Board will be unconstitutional for violation of the Appointments Clause.
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`Attorney Docket No: 36351-0017IP1
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`II. TECHNOLOGY OVERVIEW
`A. The ’761 Patent and File History
`Figure 3 of the ’761 patent shows a hybrid electric vehicle having an internal
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`combustion engine (40), a traction motor (25), a starter motor (21), and a battery
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`bank (22). (Ex. 1001, Fig. 3; 25:36-47.) The gas engine and electric traction
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`motor are both connected to the road wheels (34) through a differential (32) and
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`are operable to propel the vehicle. (Id.; Ex. 2016, ¶ 30-32.)
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`(Ex. 1001, Fig. 3.)
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`The ’761 patent discloses a novel control strategy that varies the transition
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`between electric motor operation and engine operation based on how the driver
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`actually uses the car on a day-to-day basis. In order to understand how the ’761
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`patent accomplishes this task, a brief overview of the ’761 patent’s core control
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`strategy is helpful. The ’761 patent evaluates the instantaneous torque required to
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`propel the vehicle known as “road load” in relation to a setpoint to determine the
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`operating mode.3 The concept is that the controller uses a control scheme where a
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`setpoint is used to decide whether to use the electric motor or gas engine to propel
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`the vehicle. (Ex. 2016, ¶¶ 33-37.) The ’761 patent shows the road load/setpoint-
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`based algorithm in Figure 9, where it operates in Mode I (electric motor
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`propulsion) if the road load (RL) is under a setpoint of 30% of maximum torque
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`output (MTO)4 (annotated below using green lines) and in Mode IV (gas engine
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`propulsion) if RL is between the setpoint of 30% and 100% of MTO (annotated
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`                                                            
`3 Certain dependent claims of the ’761 patent recite “road load,” for example,
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`“monitor[ing] variation in road load.” (See, e.g., Ex. 1001, claim 6.) While the
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`claims do not use the word “setpoint,” certain dependent claims recite “a value of
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`said road load at which said transition between said first and second modes
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`occurs.” (See id.)
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`4 MTO represents the maximum amount of torque that the engine can produce.
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`(Ex. 1001, 20:64-21:7.) The claims and specification use MTO as a benchmark by
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`describing the road load and setpoint as percentages of MTO. (Id., 40:20-31.)
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`6
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`below using blue lines). (Ex. 1001, 40:55 – 41:64; Ex. 2016, ¶¶ 38-41.) If the
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`controller determines that road load is greater than 100% MTO, it selects Mode V,
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`where the electric motor provides additional torque to propel the vehicle beyond
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`that provided by the engine. (Ex. 1001, 40:55 – 41:64.)
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`(Ex. 1001, Fig. 9 (annotated).)
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`The ’761 patent further discloses adjusting the setpoint, for example, by
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`looking at how the hybrid vehicle was previously used and predicting upcoming
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`patterns of vehicle operation. The ’761 patent discloses monitoring how the driver
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`actually uses the car on a day-to-day basis to calculate expected or predicted
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`patterns of vehicle operation. (Ex. 1001, 39:47-67; see also id. at 43:15-22.) For
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`example, the ’761 patent predicts an expected pattern of vehicle operation by
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`monitoring the driver’s daily commute from home to work. (Id., 39:47-67; Ex.
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`2016, ¶ 42.) The ’761 patent uses this information, for example, to recalibrate the
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`system and adjust the setpoint that governs the transition between Mode I (electric
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`motor propulsion) to Mode IV (gas engine propulsion). For example, the ’761
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`patent monitors a daily commute to predict a pattern consistent with suburban
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`traffic where the road load will “vary between 0 and 50% of MTO” and adjusts the
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`transition point from 30% to 60% of MTO. (Ex. 1001, 39:47-67; Ex. 2016, ¶ 42.)
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`This would prevent repetitive engine starts as the road load exceeded 30% of MTO
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`for a few hundred yards at a time, as might often occur in suburban traffic. (Ex.
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`1001, 39:47-67; Ex. 2016, ¶ 42.)
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`As the Applicant explained during prosecution in overcoming Severinsky5—
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`referred to as “the ’970 patent”— the ’761 patent monitors vehicle operation in
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`order to derive a predicted near-term pattern of operation.
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`The fact that the ’970 patent acknowledges that a hybrid vehicle can
`be expected to be operated at both highway speeds and in traffic -as
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`                                                            
`5 BMW relies on Severinsky as the primary reference in each of Grounds 1-3.
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`would any vehicle, hybrid or not - hardly suggests the specific method
`steps recited in amended independent claims 17 and 23. The ’970
`patent discloses selection of the appropriate mode of vehicle operation
`- motor-only, engine-only, or both - in real time, responsive to the
`vehicle speed, not in response to any predicted near-term pattern of
`operation as presently claimed.
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`More particularly, 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. The
`’970 patent discloses only that the vehicle is operated in different
`modes responsive to vehicle speed, makes this mode determination
`strictly in real time, and says nothing about predicting a pattern of
`operation, and altering vehicle operation accordingly.6
`(Ex. 1052, 58 (emphasis in original).)
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`The ’761 patent claims capture this concept and recite deriving a predicted
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`near-term pattern of operation of the hybrid vehicle by monitoring the vehicle’s
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`operation and controlling operation of the traction motor and internal combustion
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`accordingly. For example, claim 1 states:
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`1. A method of operation of a hybrid vehicle, comprising steps of:
`storing and supplying electrical power from a battery bank, applying
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`                                                            
`6 Claim 17 issued as claim 1 and claim 23 issued as claim 7.
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`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.
`(Ex. 1001, claim 1 (emphasis added).)
`B. Overview of Severinsky’s Parallel Hybrid vs. Nii’s Series Hybrid
`For purposes of Ground 2, understanding the hybrid architectures of the
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`prior art Severinsky and Nii references is critical. Severinsky’s parallel hybrid and
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`Nii’s series hybrid have very different architectures, which in turn affects the role
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`of the engine and the control strategy for maximizing engine efficiency. In a
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`parallel hybrid (below left), both the engine and electric motor can mechanically
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`drive the wheels, either separately or together (“engine-as-driver” approach). (Ex.
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`2016, ¶¶ 108-110.) In a series hybrid (below right), only the electric motor drives
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`the wheels—the gas engine charges the battery, but never propels the vehicle
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`(“engine-as-charger” approach). (Ex. 2016, ¶ 111.)
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`This architectural difference is fundamental and renders the control systems
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`for series and parallel hybrids as different as night and day. (Ex. 2016, ¶¶ 112-17.)
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`In a series hybrid, the electric motor is always used to drive the wheels and so
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`control of the motor reduces to simply monitoring the accelerator pedal position.
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`(Id., ¶¶ 113-17.) The engine in a series hybrid is used only to charge the battery
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`when the battery is depleted and so control of the engine reduces to simply
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`monitoring the state of charge of the battery. (Id.) The control system in a parallel
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`hybrid, however, must decide which drive element (motor or engine) to use at any
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`particular time, how to switch between drive elements, and how to combine torque
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`from these elements in an efficient and orderly manner. (Id., ¶ 112) The fact that
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`both systems use the word “hybrid” makes them no more similar than a hand truck
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`and a pickup truck or a watercraft and an aircraft.
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`Severinsky’s Figure 3 below shows the engine (40) on the left and electric
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`motor (20) on the right, both mechanically coupled to the wheels, in parallel with
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`each other, through a torque-transfer unit (28). As such, Severinsky’s control
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`system must confront the very different challenges associated with a parallel
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`architecture. (Ex. 2016, ¶ 118.)
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`(Ex. 1013, Fig. 3.)
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`Because Severinsky’s parallel architecture can operate both the electric
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`motor and engine to propel the vehicle, Severinsky must decide when to i) turn the
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`engine on to propel the vehicle either alone or with the electric motor and ii) when
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`to use only the electric motor to propel the vehicle (in which case the engine would
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`be off). (Ex. 2016, ¶ 119.) Severinsky operates in three operating modes: (1) low
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`speed mode (i.e., electric motor only mode), (2) highway cruising mode (i.e., gas
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`engine only mode); and (3) high speed acceleration/hill climbing mode (i.e., gas
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`engine + electric motor mode). (Ex. 1013, 10:52-57; 13:66-14:3, 14:22-25; Ex.
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`2016, ¶ 119.) Additionally, when the engine is on and providing torque to propel
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`the vehicle in a parallel hybrid like Severinsky, it is physically coupled to the road
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`wheels and must react to the demand of the driver. (Ex. 1013, 14:9-15 (“the output
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`torque of internal combustion engine 40 may be directly variable responsive to the
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`operator's control inputs.”); Ex. 2016, ¶¶ 119-121.)
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`In Nii’s series hybrid, on the other hand, the electric motor (10) is the sole
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`source of propulsive torque, and the engine (22) is decoupled from the wheels as
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`shown below in Figure 1. (Ex. 1022, 3:66-4:4; Ex. 2016, ¶¶ 121-22.) The engine
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`(22) need only operate the generator (20) to charge the battery (16). (Ex. 1022,
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`4:4-14; Ex. 2016, ¶ 121.) Because the engine’s only job is to keep the battery
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`charged, it can operate at steady state (independent of the driver’s demand) and
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`remain on at all times. (Ex. 1022, 2:14-18; Ex. 2016, ¶¶ 121-22.)
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`
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`(Ex. 1022, Fig. 1.)
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`Because the electric motor always propels the vehicle and the engine always
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`charges the battery, Nii’s series hybrid does not have different modes of operation.
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`Nii is only interested in controlling the output of the generator, which charges the
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`battery. (Ex. 1022, 2:1-3 (“The present invention is a generator output
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`controller….); Ex. 2016, ¶ 122.) Indeed, the Title of Nii is “Generator Output
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`Controller for Electric Vehicle with Mounted Generator.” Nii controls the
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`generator by choosing a single generator output in order to ensure that hybrid
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`operation changes as little as possible during vehicle operation. (Ex. 1022, 2:14-18
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`(“the output of a generator is set to a generator output …. Therefore, it is possible
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`to generate optimum electrical power at a constant value by a generator”).) Nii
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`predicts the value of the output of the generator by instruction from the human
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`operator or the start time and sets the value of the output of the generator according
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`to the average generator output corresponding to previous trips. (Ex. 1022, 1:60 –
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`2:24, 2:43-47; Ex. 2016, ¶¶ 122, 126.)
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`III. CLAIM CONSTRUCTION
`The Board should reject BMW’s proposed construction of the term
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`“predicted near-term pattern of operation” and its variants found in claims 1 and 7
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`and confirm its preliminary construction of “an expected pattern of operation.” ID,
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`12. BMW’s construction—“expected upcoming vehicle operation based on past
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`repetitive driver behavior”—is incorrect because it changes what the claimed
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`controller derives and how it does the derivation.
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`As to what the controller derives, BMW’s proposed construction improperly
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`changes the plain meaning of the claim by replacing “pattern” with “vehicle
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`operation.” The plain language makes clear that the “controller derives a predicted
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`near-term pattern of operation,” not any “upcoming vehicle operation” as BMW
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`proposes. Indeed, the Court in the parallel district court proceeding in Maryland
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`recently construed this term as “an expected pattern of operation” as Patent
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`Owners propose here. (Ex. 2007, 11.)
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`Perhaps BMW is attempting to bake in the concept of a “pattern” in the
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`phrase “repetitive driver behavior” found in the second half of BMW’s proposed
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`construction: “expected upcoming vehicle operation based on past repetitive
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`driver behavior.” But in doing so, BMW changes what the controller derives and
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`improperly severs the words “predicted near-term” and “pattern” in the phrase
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`“said controller derives a predicted near-term pattern of operation.” There is no
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`ambiguity here. Under the plain meaning of the claims, what the controller derives
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`is a predicted near-term pattern of operation. Under BMW’s construction,
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`however, the controller no longer derives any type of pattern, but instead derives
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`only “expected upcoming vehicle operation.”
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`BMW’s broadening construction is clearly motivated by the fact that none of
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`the art it cites in the Petition derives a “predicted near-term pattern of operation.”
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`As set forth below in Section IV, the Petition merely alleges that Quigley derives a
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`destination, Nii derives a generator output value, and Graf derives a driver type.
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`The Petition, however, fails to explain how any of these are a “predicted near-term
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`pattern of operation.” Motivations notwithstanding, BMW’s construction is
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`inconsistent with the plain meaning of the words of the claim, which must govern.
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`See, e.g., Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
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`1111, 1116 (Fed. Cir. 2004) (“the claim construction analysis must begin and
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`remain centered on the claim language itself”) (quotations omitted).
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`Importantly, BMW’s construction is also inconsistent with its own proposed
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`claim construction in the district court proceeding and the intrinsic record. For
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`example, in the parallel district court proceeding, BMW did not read out the word
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`pattern as it does for IPR. It instead construed the exact same term as “a pattern of
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`operation of the vehicle expected based on monitoring the driver’s repeated
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`driving operations over time.” (Ex. 2001, 13.) Comparing BMW’s competing
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`constructions, it is clear that BMW’s IPR construction simply removes the word
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`“pattern” in the first half of its construction (in blue) while keeping the “based on”
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`language in the second half of its construction.7
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`BMW’s District Court Construction
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`BMW’s IPR Construction
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`a pattern of operation of the vehicle
`expected based on monitoring the
`driver’s repeated driving operations
`over time
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`expected upcoming vehicle operation
`based on past repetitive driver behavior
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`BMW’s district court construction correctly acknowledges that the thing that the
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`controller derives is an expected “pattern of operation,” not any form of “vehicle
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`operation.”
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`                                                            
`7 BMW has no basis for offering different claim constructions because claim terms
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`in IPRs “shall be construed using the same claim construction standard that would
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`be used to construe the claim in a civil action.” 37 C.F.R. §42.100(b).
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`Moreover, BMW is incorrect in suggesting that its construction is consistent
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`with the intrinsic record. BMW’s construction, for example, ignores the
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`prosecution history, which focuses on the prior art failing to disclose “predicting a
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`pattern of operation”:
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`The fact that the ’970 patent acknowledges that a hybrid vehicle can
`be expected to be operated at both highway speeds and in traffic -as
`would any vehicle, hybrid or not - hardly suggests the specific method
`steps recited in amended independent claims 17 and 23. The ’970
`patent discloses selection of the appropriate mode of vehicle operation
`- motor-only, engine-only, or both - in real time, responsive to the
`vehicle speed, not in response to any predicted near-term pattern of
`operation as presently claimed.
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`More particularly, 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. The
`'970 patent discloses only that the vehicle is operated in different
`modes responsive to vehicle speed, makes this mode determination
`strictly in real time, and says nothing about predicting a pattern of
`operation, and altering vehicle operation accordingly.8
`(Ex. 1052, 58 (emphasis in original).)
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`                                                            
`8 Claim 17 issued as claim 1 and claim 23 issued as claim 7.
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`BMW’s construction is also incorrect because it improperly inserts
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`additional criteria as to how the “controller derives a predicted near-term pattern of
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`operation.” BMW’s construction requires that the controller derives “expected
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`upcoming vehicle operation based on past repetitive driver behavior.” Petition, 10.
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`The context of independent claims 1 and 7, however, makes clear that the
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`controller derives or predicts the pattern “by monitoring operation of said hybrid
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`vehicle”—not limited to “based on past repetitive driver behavior.” For example,
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`claim 1 recites:
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`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.
`(Ex. 1001, claim 1; see also id., claim 7.)
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`
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`BMW’s construction is further belied by the ’761 patent’s dependent claims,
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`which supply further detail as to how the controller derives such expected patterns
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`of operation. For example, dependent claim 3 states “said controller stores a day-
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`to-day record of vehicle operation in order to detect repetitive patterns of operation
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`of said hybrid vehicle” and dependent claim 4 further elucidates that “said
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`controller monitors variation in road load experienced by said hybrid vehicle and
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`compares patterns of variation in road load experienced from day to day in order to
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`Attorney Docket No: 36351-0017IP1
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`identify said repetitive patterns of operation of said hybrid vehicle.” (Ex. 1001,
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`claims 3 and 4.)
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`BMW’s construction is also inconsistent with the Board’s previous
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`construction of a related term found in the ’347 and ’634 patents. BMW is correct
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`that the Board previously construed “monitoring patterns of vehicle operation over
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`time” to mean “monitoring a driver’s repeated driving operations over time.” (Ex.
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`1011, 11-13.) In that proceeding, the Petitioner (Ford) interpreted the term
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`inconsistent with the term’s plain meaning. As the Board stated, “Ford implicitly
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`construe[d] the phrase to encompass monitoring the battery state of charge and
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`adjusting the control strategy based on that state of charge.” (Id., 12.) As the
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`Board further stated, “patterns” are “not some internal data point of the vehicle.”
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`(Id., 13.) Notably, the ’347 and ’634 patent claims focus on monitoring patterns of
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`vehicle operation over time (i.e., looking at past vehicle operation) while the ’761
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`patent focuses on deriving a predicted, near-term pattern operation, which is
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`forward (not backward) looking. (See, e.g., Ex. 1011, 11-13.) On this basis
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`alone, the Board’s previous construction does n