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.: IPR2020-01299
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`U.S. Patent No. 8,630,761
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`___________________
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`REPLY DECLARATION OF DR. GREGORY W. DAVIS
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`BMW v. Paice, IPR2020-01299
`BMW1088
`Page 1 of 62
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`Table of Contents
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`
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`I.
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`II.
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`QUALIFICATIONS OF ONE OF ORDINARY SKILL IN THE ART ... 9
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`Claim Construction ...................................................................................10
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`III.
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`Ground 1 – Severinsky in view of Quigley ..............................................10
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`A. Dr. Shahbakhti Misdescribes the Claimed Invention and
`Misinterprets Quigley’s Disclosure Concerning the “Pattern” Related
`Limitations ................................................................................................10
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`B.
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`C.
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`Claims 2 and 8 ................................................................................20
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`Claims 4 and 10 ..............................................................................21
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`D. A Skilled Artisan Would Have Been Motivated to Modify
`Severinsky’s Controller to be “Responsive to” Quigley’s Pattern
`Information and Would Have Had a Reasonable Expectation of Success
`in Doing So ...............................................................................................24
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`IV.
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`Ground 2 – Severinsky in view of Nii ......................................................32
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`A. Dr. Shahbakhti Misdescribes the Claimed Invention and
`Misinterprets Nii’s Disclosure Concerning the “Pattern” Related
`Limitations ................................................................................................32
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`B.
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`C.
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`Claims 2 and 8 ................................................................................36
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`Claims 4 and 10 ..............................................................................37
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`D. A Skilled Artisan Would Have Been Motivated to Modify
`Severinsky’s Controller to be “responsive to” Nii’s Pattern Information
`and Would Have Had a Reasonable Expectation of Success in Doing So
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`39
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`Ground 3 – Severinsky in view of Graf ...................................................58
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`CONCLUSION ........................................................................................61
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`V.
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`VI.
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`BMW v. Paice, IPR2020-01299
`BMW1088
`Page 2 of 62
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`LIST OF EXHIBITS
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`Exhibit No. Description of Exhibit
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`BMW1001
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`U.S. Patent No. 8,630,761
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`BMW1002
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`USPTO Assignments on the Web for U.S. Patent No. 7,104,347
`K2
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`BMW1003
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`Ford Motor Co. v. Paice LLC, IPR2014-00571, Paper 44, Final
`Written Decision (P.T.A.B. Sep. 28, 2015)
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`BMW1004
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`Ford Motor Co. v. Paice LLC, IPR2014-00579, Paper 45, Final
`Written Decision (P.T.A.B. Sep. 28, 2015)
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`BMW1005
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`Paice LLC v. Ford Motor Co., Appeal Nos. 2016-1412, -1415, -
`1745, Doc. 46-2, Opinion (Fed. Cir. Mar. 7, 2017)
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`BMW1006
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`Ford Motor Co. v. Paice LLC, IPR2015-00794, Paper 31, Final
`Written Decision (P.T.A.B. Nov. 1, 2016)
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`BMW1007
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`Paice LLC v. Ford Motor Co., Appeal Nos. 2017-1442, -1443,
`Doc. 59-2, Opinion (Fed. Cir. Feb. 1, 2018)
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`BMW1008
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`Declaration of Dr. Gregory W. Davis in Support of Inter Partes
`Review of U.S. Patent No. 8,630,761
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`BMW1009
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`Curriculum Vitae of Dr. Gregory W. Davis, Ph.D., P.E.
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`BMW1010
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`Ford Motor Co. v. Paice LLC, IPR2015-00795, Paper 31, Final
`Written Decision (P.T.A.B. Nov. 1, 2016)
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`BMW1011
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`Ford Motor Co. v. Paice LLC, IPR2014-00884, Paper 38, Final
`Written Decision (P.T.A.B. Dec. 10, 2015)
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`BMW1012
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`RESERVED
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`BMW1013
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`U.S. Patent No. 5,343,970 (“Severinsky”)
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`BMW1014-
`BMW1019
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`RESERVED
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`BMW v. Paice, IPR2020-01299
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`BMW1020
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`U.S. Patent No. 6,188,945 (“Graf”)
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`BMW1021
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`RESERVED
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`BMW1022
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`U.S. Patent No. 5,650,931 (“Nii”)
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`BMW1023
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`BMW1024
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`BMW1025
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`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
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`1997 Future Car Challenge, Society of Automotive Engineers,
`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
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`BMW1026
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`RESERVED
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`BMW1027 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)
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`BMW1028
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`Unnewehr, L.E. et al., “Hybrid Vehicle for Fuel Economy,”
`Society of Automotive Engineers, SAE/SP-76/0121 (1976)
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`BMW1029
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`BMW1030
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`BMW1031
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`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)
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`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)
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`Electric and Hybrid Vehicles Program, 18th Annual Report to
`Congress for Fiscal Year 1994, U.S. Department of Energy
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`(Apr. 1995)
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`BMW1032
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`Bates, B. et al., “Technology for Electric and Hybrid Vehicles,”
`Society of Automotive Engineers, SAE/SP-98/1331 (Feb. 1998)
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`BMW1033
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`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
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`BMW1034
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`Leschly, K.O., Hybrid Vehicle Potential Assessment, Volume 7:
`Hybrid Vehicle Review, U.S. Department of Energy (Sep. 30,
`1979)
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`BMW1035
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`RESERVED
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`BMW1036 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
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`BMW1037-
`BMW1038
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`BMW1039
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`BMW1040
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`BMW1041
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`RESERVED
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`Davis, G.W., Ph.D. et al., Introduction to Automotive
`Powertrains, Chapter 2: Road Loads (2000), 27-68
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`Ehsani, M. et al., “Propulsion System Design of Electric
`Vehicles,” Texas A&M University, Department of Electrical
`Engineering (1996), 7-13
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`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
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`BMW1042
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`Bauer, H., ed., Automotive Handbook, Robert Bosch Gmbh (4th
`Ed. Oct. 1996), Excerpts
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`BMW1043
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`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,”
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`SAE/SP-95/0493 (Feb. 1995), 65-71
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`BMW1044
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`U.S. Patent No. 5,656,921 (“Farrall”)
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`BMW1045-
`BMW1051
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`RESERVED
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`BMW1052
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`File History for U.S. Patent No. 8,630,761
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`BMW1053
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`USPTO Assignments on the Web for U.S. Patent No. 8,630,761
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`BMW1054
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`“Predicting the Use of a Hybrid Electric Vehicle” Quigley, et al.
`(“Quigley”)
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`BMW1055
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`Declaration of Sylvia Hall-Ellis, Ph.D.
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`BMW1056
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`U.S. Patent No. 5,189,621 (“Onari”)
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`BMW1057
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`U.S. Patent No. 4,625,697 (“Hosaka”)
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`BMW1058
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`U.S. Patent No. 5,533,583 (“Adler”)
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`BMW1059-
`BMW1085
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`BMW1086
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`RESERVED
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`Paice LLC et al. v. BMW AG et al., No. 1:19-cv-003348-SAG,
`Order (D. Md. Nov. 25, 2020)
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`BMW1087
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`Declaration of Jacob Z. Zambrzycki in Support of Motion for
`Pro Hac Vice Admission Under 37 C.F.R. § 42.10
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`BMW1088
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`Reply Declaration of Dr. Gregory W. Davis in Support of Inter
`Partes Review of U.S. Patent No. 8,630,761
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`BMW1089
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`Deposition Transcript of Dr. Mahdi Shahbakhti (May 6, 2021) –
`for IPR2020-00994 (U.S. Patent No. 7,104,347)
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`BMW1090
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`European Patent No. EP 0,576,703 (“Graf ’703”)
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`BMW1091
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`RESERVED
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`BMW1092
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`Ehsani, M., et al., Modern Electric, Hybrid Electric, and Fuel
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`Cell Vehicles: Fundamentals, Theory, and Design (CRC Press
`2005), Chapter 8 (“Parallel Hybrid Electric Drive Train Design”)
`(Additional excerpts from the reference attached as Patent
`Owner Exhibit 2020)
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`RESERVED
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`Declaration of Mahdi Shahbakhti, Ph.D. Regarding U.S. Patent
`No. 7,723,932 in Case IPR2019-00011
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`BMW1093-
`1097
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`BMW1098
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`BMW1099
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`U.S. Patent Application Publication No. 2004/0069548 (“Kira”)
`(Exhibit 1005 in Case IPR2019-00011)
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`BMW1100
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`U.S. Patent Application Publication No. 2003/0150352
`(“Kumar”)(Exhibit 1006 in Case IPR2019-00011)
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`BMW1101
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`RESERVED
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`BMW1102
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`Declaration of Mahdi Shahbakhti, Ph.D. for IPR2020-00994
`(U.S. Patent No. 7,104,347)
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`BMW1103
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`Deposition Transcript of Dr. Mahdi Shahbakhti (June 17, 2021)
`– for IPR2020-01299 (U.S. Patent No. 8,630,761)
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`BMW1104
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`Excerpts from “Handbook of Air Pollution From Internal
`Combustion Engines” (Additional excerpts from the reference
`attached as Patent Owner Exhibit 2032)
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`I, Gregory Davis, hereby declare as follows:
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`1.
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`I am making this declaration at the request of Bayerische Motoren
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`Werke Aktiengesellschaft and BMW of North America, LLC (“Petitioners”) in
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`order to respond to certain arguments raised by Patent Owners and/or their expert,
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`Mahdi Shahbakhti, Ph.D. (“Dr. Shahbakhti”), and certain issues identified by the
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`Board, in the matter of Inter Partes Review of U.S. Patent No. 8,630,761 (“the
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`’761 Patent”) to Severinsky et al., IPR2020-01299.
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`2.
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`I am being compensated for my work in this matter at a rate of
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`$375/hour. My compensation in no way depends on the outcome of this
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`proceeding.
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`3.
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`In preparation of this declaration and in forming the opinions
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`expressed below, I have considered:
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`(1) The Declaration of Mahdi Shahbakhti, Ph.D. in Support of the
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`Patent Owner’s Response (Exhibit 2016) and the exhibits cited therein
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`(Exhibits 2017, 2020, 2029-2033);
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`(2) The documents
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`referenced
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`in my original Declaration
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`(BMW1008) and the documents referenced herein, including the Institution
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`Decision (Paper 10);
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`(3) The relevant legal standards, including the standard for
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`obviousness provided in KSR International Co. v. Teleflex, Inc., 550 U.S.
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`398 (2007) as explained to me by counsel, and any additional documents
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`cited in the body of this declaration; and
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`(4) My knowledge and experience based upon my work and study
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`in this area as described below.
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`4.
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`I previously submitted a declaration in support of Petitioners’ Petition
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`for Inter Partes Review of the ’761 Patent, dated July 14, 2020 (BMW1008, “First
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`Declaration”), in which I provided my opinions regarding claims 1-12 of the ’761
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`Patent. I hereby incorporate my First Declaration by reference.
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`5.
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`I now submit this Reply declaration in support of Petitioners’ Petition
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`to address certain arguments raised by Patent Owners and/or their expert, Dr.
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`Shahbakhti, in connection with Patent Owners’ Response (Paper 18 “Patent
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`Owners’ Response”) to the Petition, and certain issues identified by the Board,
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`regarding claims 1-12.
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`I.
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`QUALIFICATIONS OF ONE OF ORDINARY SKILL IN THE ART
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`6.
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`I have set forth my opinion regarding the level of skill possessed by a
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`person of ordinary skill in the art of the ’761 Patent in my First Declaration.
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`(BMW1008, ¶¶ 43-44). I have also reviewed the level of ordinary skill proposed
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`by Dr. Shahbakhti. (“Shahbakhti Decl.”, Ex. 2016, ¶ 29). I do not believe that the
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`differences between Dr. Shahbakhti’s proposed level of skill and the one I have
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`proposed are significant, and they, in any event, do not affect the opinions I have
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`set forth below.
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`II. Claim Construction
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`7.
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`In my First Declaration, I had stated that I was using Petitioners’
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`proposed construction for a “predicted near-term pattern of operation” (or similar
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`variant) of an “expected upcoming vehicle operation based on past repetitive driver
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`behavior.” (BMW1008, ¶ 158). I understand that the Board has preliminarily
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`adopted a construction of: “an expected pattern of operation.” (Institution
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`Decision at 12). I do not believe that this difference in construction undermines
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`any of my analysis and I reaffirm that all of my opinions expressed in my First
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`Declaration and herein are equally applicable under the Board’s construction. In
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`fact, as I explained in my deposition, I believe that this construction is broader in
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`certain respects than the construction Petitioners originally proposed.
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`III. Ground 1 – Severinsky in view of Quigley
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`A. Dr. Shahbakhti Misdescribes the Claimed Invention and
`Misinterprets Quigley’s Disclosure Concerning the “Pattern”
`Related Limitations
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`8.
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`As I demonstrated in my First Declaration, Severinsky discloses all of
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`the limitations of claims 1 and 7, except for the “pattern” related limitations. It
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`does not appear that Dr. Shahbakhti disagrees with my opinion on this point.
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`Instead, Dr. Shahbakhti only disputes that it would have been obvious for a person
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`of ordinary skill to use Quigley’s teachings to “derive a predicted pattern of
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`operation” as required per claim elements [1e] and [7e], and which are used as a
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`basis for the system to control operations of the engine or motor “responsive to”
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`those patterns per claim elements [1f] and [7f].
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`9.
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`I have reviewed Dr. Shahbakhti’s analysis of Quigley’s pattern related
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`teachings (Shahbakhti Decl., ¶¶ 47-54) and believe that his analysis is not tied to
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`the claimed invention and also that he misinterprets the reference. Certainly, it
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`does not appear that he is discussing the reference from the perspective of a person
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`of ordinary skill in the art.
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`10. As an initial matter, it appears that Dr. Shahbakhti’s opinions are
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`divorced from the actual claim requirements and the related description of the
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`patented invention. I believe that flaw permeates his entire analysis. To illustrate
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`my point, Dr. Shahbakhti asserts that “the ’761 patent analyzes the pattern of
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`vehicle operation (e.g., road load versus time) during each trip and compare[s]
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`these patterns among trips in order to help the vehicle controller to make a wise
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`decision for adjusting switching points.” (Id., ¶ 51). But in making this statement,
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`I note that he does not refer to the actual claim language, which contains no such
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`requirements. Instead, it is my understanding that the claims only require that the
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`controller “derives a predicted near-term pattern of operation … by monitoring
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`operation” and “controls operation” of the motor or engine “responsive to” the
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`pattern. (BMW1001 at 56:44-50). That claim language is much broader than Dr.
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`Shahbakhti’s expressed understanding of the ’761 Patent.
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`11. Moreover, Dr. Shahbakhti does not cite to where he believes that the
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`’761 Patent contains such disclosure. Based on my review of the specification, and
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`relevant portions of the disclosure, it appears that he is overstating the purported
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`invention that was actually described by the inventors. In particular, I note that
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`this “invention” is only described in a very few isolated passages within the patent
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`disclosure and at a very high level of generality.
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`12. For example, while the ’761 Patent specification does refer to
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`examples of different road loads on a commute, it generally refers to the
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`adjustment of a transition point that may be used based on that “pattern” or that the
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`routine might be initiated after certain distances each day. (BMW1001 at 39:48-
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`67; 40:41-43; 43:15-22; BMW1008, ¶¶ 146-148). But instead of providing
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`information concerning how that would be done, the specification asserts pattern
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`recognition and related control were already within the skill of the art.
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`(BMW1001 at 39:58-61). So it appears that Dr. Shahbakhti is holding Quigley to
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`a higher standard than the ’761 Patent itself! Moreover, as I pointed out in my
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`First Declaration, the purported “novelty” of this invention over Severinsky, as
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`expressed to the U. S. Patent & Trademark Office (USPTO) during prosecution,
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`was that, in contrast to a vehicle that determines its mode of operation “strictly in
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`real time” based on a “vehicle designer’s” anticipated mode of operation, the
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`claims require that the vehicle’s controller monitor operation of the particular
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`vehicle and use this data to predict future operational patterns and alter vehicle
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`operation accordingly. (BMW1052 at 58-59; BMW1008, ¶¶ 151-152; 186).
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`13. Thus, it does not appear that Dr. Shahbakhti’s view of the “invention”
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`aligns with the claim language, the actual disclosure, and the arguments to the
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`USPTO. Again, as I explained in my First Declaration, the purportedly novel
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`features were described by Quigley, and depicted in Figure 2 (reproduced below):
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`(BMW1008, ¶ 194). A person of skill in the art would certainly understand that
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`Quigley teaches predicting a journey (“Is a Journey Expected”) based on the
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`analysis of “habitual usage characteristics” from “previous journey histories,” and
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`then altering vehicle operation by implementing an “intelligent” controller strategy
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`for [the] expected journey. (BMW1054 at 129-131). And as I explained in my
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`First Declaration, a person of skill in the art would have been likewise motivated to
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`modify and improve Severinsky’s controller so that its controller scheme would be
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`responsive to a vehicle’s predicted upcoming use (expected pattern of operation)
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`(BMW1008, ¶¶ 197-198). Indeed, knowing how a vehicle will actually be
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`operated is the holy grail for fine-tuning hybrid vehicle efficiency. I understand
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`that this is consistent with what the claims actually require, contrary to Dr.
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`Shahbakhti’s apparent understanding.
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`14. Dr. Shahbakhti’s main substantive argument is that Quigley does not
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`derive or predict an expected pattern of operation of the hybrid vehicle because it
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`only “simply calculates journey parameters such as duration and distance.”
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`(Shahbakhti Dec., ¶¶ 47-49). Based on that, he concludes that each of the
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`predicted parameters are “a single data point describing a property of the entire
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`trip. It is not a pattern.” (Id., ¶ 50). He follows that statement by concluding that
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`the parameters “do not relate to any particular aspect of the vehicle operation
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`during the trip, for example, whether the instantaneous torque required to propel
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`the vehicle was high or low during segments or whether the instantaneous torque
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`required to propel the vehicle remained generally the same or had significant
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`transients.” (Id.). I respectfully disagree with his analysis as I explain in the
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`following paragraphs.
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`15. First, while I agree that Quigley calculates journey parameters such as
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`duration and distance, I dispute that a person of skill in the art would understand
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`Quigley’s teachings to be so limited. In fact, I explained my reasons for that in
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`great detail during my deposition in response to questions about my opinions on
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`this issue, but Dr. Shahbakhti did not address any of my analysis articulated at my
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`deposition.
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`16.
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`In particular, Quigley states that “many cars will have habitual usage
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`characteristics for a high percentage of their journeys, and hence the ability to
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`predict the occurrence of a journey and its associated characteristics will be quite
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`high.” (BMW1054 at 130 (emphasis added); BMW1008, ¶ 188). A person of skill
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`in the art would understand that those “associated characteristics” are determined
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`from signals from driver operational inputs (throttle, brake, etc.), engine
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`management data (engine speed, etc.), and road speed, which Quigley describes
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`being used by the proposed 1st ( and 2nd) Generation Control to estimate journey
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`parameters. (BMW1054 at 130). In fact, Quigley states that journey parameters
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`are “reliably estimated” based upon signals from that controller. (Id.). Quigley
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`monitors the driver’s operation over time, analyzes all of the data collected, and
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`then determines whether there is a pattern (“habitual usage characteristics”) or
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`whether there “is no obvious pattern.” (Id. at 130, 132-133).
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`17. Moreover, Quigley discloses an intelligent controller that manages
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`“energy flow through the hybrid drive train” based on parameters normally
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`available only upon journey completion. (Id. at Abstract). Quigley also discloses
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`selecting a control strategy for “expected journey” and utilizing such control “over
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`the complete range of operation.” (Id. at 130-131). As I explained in my
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`deposition (and Dr. Shahbakhti failed to rebut), a person of ordinary skill in the art
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`would have known that the “controller strategy” would include the vehicle speed,
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`engine speed, and road load (part of the “1st Generation Control” in Quigley)
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`because that is the sort of information that must be used by a controller to
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`implement an optimized control strategy. Likewise, as I explained at my
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`deposition, a person of ordinary skill in the art would understand that the system
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`would maintain pattern information on road load because that would be required to
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`manage the energy flow (referred to in the Abstract) through the hybrid drive train
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`for optimum control. In fact, Quigley describes that as the purpose of the project,
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`in the Abstract, further supporting my understanding (and that of a person of
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`ordinary skill in the art) on this point. (Id. at Abstract). I’ll note that this would
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`especially be the case when modifying a controller such as that described in
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`Severinsky (which is the proposed combination of Ground 1), since Severinsky’s
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`controller undisputedly uses road load for its control decisions.
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`18. Based on the foregoing, I disagree that Quigley is limited to disclosing
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`only a “single data point” instead of a pattern of vehicle operation. Indeed,
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`Quigley clearly discloses analyzing and predicting patterns of expected operation
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`consisting of much more. And it expressly discloses a “controller strategy” –
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`implemented by an “intelligent controller” (BMW1054 at 129, 131) based on the
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`pattern it analyzes. Accordingly, I dispute Dr. Shahbakhti’s analysis of Quigley.
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`19.
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`I note that Dr. Shahbakhti includes an opinion concerning additional
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`language that is part of his understanding of a “pattern of operation of said hybrid
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`vehicle” to also “require an order or sequence of driving operations.” (Shahbakhti
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`Decl., ¶ 52). I do not see that additional language in the Board’s construction, nor
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`do I understand his reasons for modifying the Board’s construction. Rather, it is
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`my understanding that as technical experts we are supposed to be applying the
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`Board’s claim construction as a matter of law, which I have endeavored to do.
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`Nevertheless, I rebut some of his technical arguments below.
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`20. Even if Dr. Shahbakhti was correct that Quigley discloses only
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`predicting single value parameters, it is not true that singular values cannot be used
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`to represent a “pattern.” His similar assertion that parameters for an “entire trip”
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`are not “near term” or “expected” or cannot represent a “pattern of operation” are
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`also misguided. (Shahbakhti Decl., ¶¶ 51, 53-54). Indeed, Dr. Shahbakhti’s own
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`exhibit makes that point clear. For example, portions of the Handbook that he did
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`not include with the excerpt submitted as Ex. 2032 explains that the usage of
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`singular average values can represent a particular drive cycle for vehicle
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`optimization. (BMW11041 at 338 (“It is possible to represent a given drive cycle
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`by a weighted average of a small number of carefully chosen steady state-points.
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`Optimization of these points allows some confidence that the complete vehicle will
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`perform as required.”)). That text also goes on to describe the nature of various
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`drive cycles, characterizing these patterns in terms of single value parameters such
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`as average power, length of journey, time duration, etc. (Id. at 121, Figs. 11.1,
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`11.2, 409 (“The heavy-duty cycle, shown in Figure 11.1, imposes a high load
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`factor on the engine such that the average power can be as high as 50 percent of
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`1 Ex. 2032 included only a select number of pages from the “Handbook of Air
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`Pollution from Internal Combustion Engines.” I have included other portions of
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`that Handbook as a newly numbered Exhibit BMW1104.
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`engine rated power”)). This is also confirmed by Dr. Shahbakhti’s Ehsani
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`reference (Ex. 2020) as I explain below in ¶¶ 73-78. A person of skill would
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`recognize that these single value parameters are used to recognize a pattern of
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`operation and to provide information that can be used to modify the controller for
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`optimum operation.
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`21. Moreover, I note that the ’761 Patent specification contains no
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`information concerning what details about the expected “pattern” are actually
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`stored and maintained. Likewise, I see no requirement in claim 1 (or Claim 7)
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`requiring that a pattern must include all of the data over time. A person of
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`ordinary skill in the art would understand that a pattern can be characterized in
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`different ways depending on the needs of the system. Indeed, storing all of the data
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`over time would be inefficient as every journey exhibits some variability due to
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`traffic, weather, etc. The key point is to characterize the “pattern” in such a way
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`that the system would be able to utilize the data to operate more efficiently.
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`22.
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`I also note that Dr. Shahbakhti appears to acknowledge that Quigley
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`discloses patterns of distance, but he contends that time and distance are not part of
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`a pattern of operation. (Shahbakhti Decl., ¶ 51). I dispute that point. Certainly,
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`the distance a vehicle drives is part of its operation. In fact, the ’761 patent
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`specification even refers to analyzing patterns of operation including travel
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`distance within the analyzed/predicted patterns. (BMW1001 at 39:61-67)
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`(“Similarly, the engine starting routine might be initiated after the same total
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`distance had been covered each day.”) (emphasis added). And knowledge of how
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`far a vehicle is expected to drive can certainly be used to optimize a control
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`scheme. For example, if the control system knows that a vehicle will only be
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`driving 1 mile on an upcoming commute, it may optimize the vehicle to stay in
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`motor only mode for fuel efficiency reasons. I certainly do not see any basis for
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`narrowly reading the claims – based on the claim language and the Board’s
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`construction – to exclude such distance from being part of the “expected pattern of
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`operation” required by the claims.
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`B. Claims 2 and 8
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`23. Dr. Shahbakhti takes issue with my opinions relating to claims 2 and 8
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`because I stated that “Quigley discloses that its derived predicted pattern is based
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`on at least one repetitive pattern,” because he claims that the “claim is not about
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`how the predicted pattern is calculated and thus cannot be satisfied by asserting
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`that the derived predicted pattern is simply based on a repetitive pattern.”
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`(Shahbakhti Decl., ¶ 59, citing BMW1008, ¶204). But that opinion does not make
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`any sense. A person of ordinary skill in the art would clearly understand that the
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`way these systems worked was to use past patterns to predicted future patterns.
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`Thus, if a past pattern was “repetitive,” then it would increase the likelihood that it
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`will be repeated in the future. A person of ordinary skill in the art would certainly
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`understand that. In fact, his opinion ignores the prior paragraph in my
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`declaration, where I explained that very point, noting that a person of ordinary skill
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`in the art would understand that a commuter repeats a commute, which is a
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`repetitive pattern. (BMW1008, ¶ 203). In other words, a person of skill in the art
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`would expect future commuting to be in accordance with past (repetitive) daily
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`commuting. Thus, in such a case, the derived predicted pattern includes
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`(comprises) the repeated pattern.
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`24.
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`I’ll also add on this point, that again, the ’761 Patent itself cannot
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`even satisfy Dr. Shahbakhti’s standards. He asserts that the “predicted pattern
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`must include a repetitive pattern” and that it is not about how the predicted pattern
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`is calculated. (Shahbakhti Decl., ¶ 59). But the ’761 Patent specification contains
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`no further description. As I describe above in ¶ 21, a person of skill would not
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`expect that all of the data over time must be stored.
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`25. Thus, Dr. Shahbakhti again appears to hold Quigley to a higher
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`standard for a required disclosure than what the inventors actually contemplated.
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`C. Claims 4 and 10
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`26. Dr. Shahbakhti does not dispute that Severinsky’s engine control
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`strategy is responsive to road load, but disputes that it maintains historical records
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`regarding the road load. (Shahbakhti Dec., ¶ 61). But I never asserted as much.
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`Again, I had explained that a person of ordinary skill in the art would modify
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`Severinsky in view of Quigley. And, while Dr. Shahbakhti does not address this
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`point, if Severinsky’s controller were to be modified in view of Quigley’s pattern
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`related teachings, it would have to maintain such a history. That would be required
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`for the controller to analyze the patterns of the road load and to adjust the
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`“controller strategy” accordingly as taught by Quigley.
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`27. Dr. Shahbakhti argues that Quigley “does not monitor or track
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`variations in road load or ‘compare patterns of variations in road load experienced
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`from day to day.’” (Shahbakhti Decl., ¶¶ 62-64). He then provides several
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`paragraphs attempting to argue about differences between speed and road load.
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`(Id., ¶¶ 65-70). As a threshold matter, I understand that the relevant analysis
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`should look at how a person of ordinary skill in the art would have modified
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`Severinsky in view of Quigley, not just what Quigley teaches alone. Here, a
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`person of skill in the art would have modified Severinsky’s controller, which
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`undisputedly made control decisions responsive to road load, to make the system
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`more “intelligent” by analyzing the patterns of the variations of road load. Thus,
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`regardless of whether Quigley expressly disclosed monitoring road load, road load
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`would be among the parameters that a person or ordinary skill in the art would
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`have known to monitor in view of Quigley’s teachings. (BMW1008, ¶ 217).
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`Again, Dr. Shahbakhti appears to be looking at Quigley in isolation, rather than
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`how a person of skill in the art would modify Severinsky’s controller in view of
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`Quigley’s teachings.
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`28. Moreover, I disagree with his assertions about Quigley’s road load
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`related teachings. As I explained above and at my deposition, a person of ordinary
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`skill in the art would