`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`_______________________
`
`
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC
`Petitioners
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
`
`
`____________________
`
`Inter Partes Review No.: IPR2020-01299
`
`U.S. Patent No. 8,630,761
`____________________
`
`
`PETITIONERS’ REPLY TO PATENT OWNERS’ RESPONSE
`
`
`
`
`
`
`
`
`
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`
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`Table of Contents
`
`Introduction ...................................................................................................... 1
`I.
`Claim Construction .......................................................................................... 2
`II.
`III. Each of the Challenged Claims Is Unpatentable ............................................. 2
`A. Ground 1 – Severinsky in view of Quigley ........................................... 2
`1.
`Claims 1 and 7 ............................................................................. 2
`2.
`Quigley’s disclosure .................................................................... 5
`3.
`PO’s “implied” construction ....................................................... 9
`4.
`A POSA’s motivation ...............................................................11
`5.
`Claims 2 and 8 ...........................................................................16
`6.
`Claims 4 and 10.........................................................................16
`7.
`Claims 3, 5, 6, 9, 11, and 12 .....................................................18
`B. Ground 2 – Severinsky in view of Nii ................................................18
`1.
`Claims 1 and 7 ...........................................................................18
`2.
`Nii’s disclosure .........................................................................19
`3.
`A POSA’s motivation ...............................................................21
`4.
`Claims 2 and 8 ...........................................................................24
`5.
`Claims 4 and 10.........................................................................25
`6.
`Claims 3, 5, 6, 9, 11, and 12 .....................................................26
`C. Ground 3 – Severinsky in view of Graf ..............................................26
`IV. Conclusion .....................................................................................................28
`
`
`
`
`
`
`
`
`i
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`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`List of Exhibits
`
`Exhibit No. Description of Exhibit
`
`BMW1001
`
`U.S. Patent No. 8,630,761
`
`BMW1002
`
`USPTO Assignments on the Web for U.S. Patent No. 7,104,347
`K2
`
`BMW1003
`
`Ford Motor Co. v. Paice LLC, IPR2014-00571, Paper 44, Final
`Written Decision (P.T.A.B. Sep. 28, 2015)
`
`BMW1004
`
`Ford Motor Co. v. Paice LLC, IPR2014-00579, Paper 45, Final
`Written Decision (P.T.A.B. Sep. 28, 2015)
`
`BMW1005
`
`Paice LLC v. Ford Motor Co., Appeal Nos. 2016-1412, -1415, -
`1745, Doc. 46-2, Opinion (Fed. Cir. Mar. 7, 2017)
`
`BMW1006
`
`Ford Motor Co. v. Paice LLC, IPR2015-00794, Paper 31, Final
`Written Decision (P.T.A.B. Nov. 1, 2016)
`
`BMW1007
`
`Paice LLC v. Ford Motor Co., Appeal Nos. 2017-1442, -1443,
`Doc. 59-2, Opinion (Fed. Cir. Feb. 1, 2018)
`
`BMW1008
`
`Declaration of Dr. Gregory W. Davis in Support of Inter Partes
`Review of U.S. Patent No. 8,630,761
`
`BMW1009
`
`Curriculum Vitae of Dr. Gregory W. Davis, Ph.D., P.E.
`
`BMW1010
`
`Ford Motor Co. v. Paice LLC, IPR2015-00795, Paper 31, Final
`Written Decision (P.T.A.B. Nov. 1, 2016)
`
`BMW1011
`
`Ford Motor Co. v. Paice LLC, IPR2014-00884, Paper 38, Final
`Written Decision (P.T.A.B. Dec. 10, 2015)
`
`BMW1012
`
`RESERVED
`
`BMW1013
`
`U.S. Patent No. 5,343,970 (“Severinsky”)
`
`BMW1014-
`BMW1019
`
`RESERVED
`
`ii
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`BMW1020
`
`U.S. Patent No. 6,188,945 (“Graf”)
`
`BMW1021
`
`RESERVED
`
`BMW1022
`
`U.S. Patent No. 5,650,931 (“Nii”)
`
`BMW1023
`
`BMW1024
`
`BMW1025
`
`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
`
`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
`
`BMW1026
`
`RESERVED
`
`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)
`
`BMW1028
`
`Unnewehr, L.E. et al., “Hybrid Vehicle for Fuel Economy,”
`Society of Automotive Engineers, SAE/SP-76/0121 (1976)
`
`BMW1029
`
`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)
`
`BMW1030
`
`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)
`
`BMW1031
`
`Electric and Hybrid Vehicles Program, 18th Annual Report to
`Congress for Fiscal Year 1994, U.S. Department of Energy
`
`iii
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`(Apr. 1995)
`
`BMW1032
`
`Bates, B. et al., “Technology for Electric and Hybrid Vehicles,”
`Society of Automotive Engineers, SAE/SP-98/1331 (Feb. 1998)
`
`BMW1033
`
`Stodolsky, F. et al., “Strategies in Electric and Hybrid Vehicle
`Design,” Society of Automotive Engineers, SAE/SP-96/1156,
`Kozo, Y. et al., “Development of New Hybrid System – Dual
`System,” SAE/SP-96/0231 (Feb. 1996), 25-33
`
`BMW1034
`
`Leschly, K.O., Hybrid Vehicle Potential Assessment, Volume 7:
`Hybrid Vehicle Review, U.S. Department of Energy (Sep. 30,
`1979)
`
`BMW1035
`
`RESERVED
`
`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
`
`BMW1037-
`BMW1038
`
`BMW1039
`
`BMW1040
`
`BMW1041
`
`RESERVED
`
`Davis, G.W., Ph.D. et al., Introduction to Automotive
`Powertrains, Chapter 2: Road Loads (2000), 27-68
`
`Ehsani, M. et al., “Propulsion System Design of Electric
`Vehicles,” Texas A&M University, Department of Electrical
`Engineering (1996), 7-13
`
`Ehsani, M. et al., “Propulsion System Design of Electric and
`Hybrid Vehicles,” IEEE Transactions on Industrial Electronics,
`Vol. 44, No. 1 (Feb. 1997), 19-27
`
`BMW1042
`
`Bauer, H., ed., Automotive Handbook, Robert Bosch Gmbh (4th
`Ed. Oct. 1996), Excerpts
`
`BMW1043
`
`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,”
`
`iv
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`SAE/SP-95/0493 (Feb. 1995), 65-71
`
`BMW1044
`
`U.S. Patent No. 5,656,921 (“Farrall”)
`
`BMW1045-
`BMW1051
`
`RESERVED
`
`BMW1052
`
`File History for U.S. Patent No. 8,630,761
`
`BMW1053
`
`USPTO Assignments on the Web for U.S. Patent No. 8,630,761
`
`BMW1054
`
`“Predicting the Use of a Hybrid Electric Vehicle” Quigley, et al.
`(“Quigley”)
`
`BMW1055
`
`Declaration of Sylvia Hall-Ellis, Ph.D.
`
`BMW1056
`
`U.S. Patent No. 5,189,621 (“Onari”)
`
`BMW1057
`
`U.S. Patent No. 4,625,697 (“Hosaka”)
`
`BMW1058
`
`U.S. Patent No. 5,533,583 (“Adler”)
`
`BMW1059-
`BMW1085
`
`BMW1086
`
`RESERVED
`
`Paice LLC et al. v. BMW AG et al., No. 1:19-cv-003348-SAG,
`Order (D. Md. Nov. 25, 2020)
`
`BMW1087
`
`Declaration of Jacob Z. Zambrzycki in Support of Motion for
`Pro Hac Vice Admission Under 37 C.F.R. § 42.10
`
`BMW1088
`
`Reply Declaration of Dr. Gregory W. Davis in Support of Inter
`Partes Review of U.S. Patent No. 8,630,761
`
`BMW1089
`
`Deposition Transcript of Dr. Mahdi Shahbakhti (May 6, 2021) –
`for IPR2020-00994 (U.S. Patent No. 7,104,347)
`
`BMW1090
`
`European Patent No. EP 0,576,703 (“Graf ’703”)
`
`BMW1091
`
`RESERVED
`
`BMW1092
`
`Ehsani, M., et al., Modern Electric, Hybrid Electric, and Fuel
`
`v
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`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)
`
`RESERVED
`
`Declaration of Mahdi Shahbakhti, Ph.D. Regarding U.S. Patent
`No. 7,723,932 in Case IPR2019-00011
`
`BMW1093-
`1097
`
`BMW1098
`
`BMW1099
`
`U.S. Patent Application Publication No. 2004/0069548 (“Kira”)
`(Exhibit 1005 in Case IPR2019-00011)
`
`BMW1100
`
`U.S. Patent Application Publication No. 2003/0150352
`(“Kumar”)(Exhibit 1006 in Case IPR2019-00011)
`
`BMW1101
`
`RESERVED
`
`BMW1102
`
`Declaration of Mahdi Shahbakhti, Ph.D. for IPR2020-00994
`(U.S. Patent No. 7,104,347)
`
`BMW1103
`
`Deposition Transcript of Dr. Mahdi Shahbakhti (June 17, 2021)
`– for IPR2020-01299 (U.S. Patent No. 8,630,761)
`
`BMW1104
`
`Excerpts from “Handbook of Air Pollution From Internal
`Combustion Engines” (Additional excerpts from the reference
`attached as Patent Owner Exhibit 2032)
`
`vi
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`I.
`
`Introduction
`
`Patent Owners’ (“PO”) Response (“POR”) does not dispute Severinsky’s
`
`disclosure of all claim limitations of the Challenged Claims, except for the pattern-
`
`related limitations. Therefore, the only issue the Board needs to consider is
`
`whether it would have been obvious for a POSA to modify Severinsky’s hybrid
`
`controller so that control decisions would be “responsive to” an expected pattern of
`
`operation.
`
`As the Board initially determined, both Quigley and Nii describe monitoring
`
`vehicle operations to determine expected patterns of operation and adjusting the
`
`hybrid vehicle’s control responsive to those expected patterns. And, despite the
`
`Board’s initial determination to the contrary, Graf does as well. Given the many
`
`reasons to modify Severinsky’s controller, such as the optimization of the
`
`controller settings to be reflective of actual driving conditions and the increase in
`
`fuel efficiency, it should be clear that a POSA would have been motivated to
`
`optimize the control settings to also be “responsive to” expected patterns of
`
`operation. See BMW1103, 13:18-24 (Shahbakhti admitting that “improving the
`
`efficiency of the vehicles has been the goal in automotive industry, I would say,
`
`very much from the beginning”), 14:22-23 (Shahbakhti admitting that “the industry
`
`will always try to improve fuel economy”). Indeed, knowing precisely how a
`
`1
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`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`vehicle will actually be operated is the “holy grail” for fine-tuning hybrid vehicle
`
`efficiency. BMW1088, ¶¶13, 55. Thus, the Grounds of the Petition present a
`
`textbook case for the application of KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`
`417 (2007).
`
`PO’s arguments to the contrary are: (i) divorced from the actual invention
`
`broadly claimed, (ii) focused on legally irrelevant bodily incorporation theories,
`
`and (iii) based on a distorted view of what the prior art discloses.
`
`II. Claim Construction
`
`The Institution Decision adopted PO’s proposed construction of “predicted
`
`near-term pattern of operation” to merely substitute “expected” for “predicted near-
`
`term.” ID, 12. Dr. Davis has confirmed his analysis under that construction,
`
`which is arguably broader than Petitioners’ original proposal. PAICE2034, 46:14-
`
`47:19; BMW1088, ¶7.
`
`III. Each of the Challenged Claims Is Unpatentable
`
`A. Ground 1 – Severinsky in view of Quigley
`
`1.
`
`Claims 1 and 7
`
`For independent claims 1 and 7, PO only challenges the pattern-related
`
`limitations of claim elements 1[e] and 7[e], which are rendered obvious by
`
`Severinsky in view of Quigley. PO’s challenge, however, is not commensurate in
`
`scope with what was disclosed, argued for patentability, and claimed.
`
`2
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`In reality, the Challenged Claims were derived from a few isolated
`
`statements buried within a lengthy specification, where pattern recognition and
`
`related control was mentioned at a high level of generality, and as already being
`
`within the skill of the art. BMW1001, 39:48-67; 40:41-43; 43:15-22. To
`
`distinguish Severinsky during prosecution, Applicants argued that, in contrast to a
`
`vehicle that determines its mode of operation “strictly in real time” based on a
`
`“vehicle designer’s” anticipated mode of operation, the Challenged Claims require
`
`that the vehicle’s controller monitor operation of the particular vehicle and use that
`
`data to predict future operational patterns and alter vehicle operation accordingly.
`
`BMW1052, 58-59.1 To that end, the relevant claim language (amended in
`
`connection with that argument) only requires that the controller “derives a
`
`predicted pattern of operation … by monitoring operation” and “controls
`
`operation” of the motor or engine “responsive to” the pattern.
`
`That purportedly novel feature, however, was described precisely by
`
`Quigley, as depicted in Figure 2 (reproduced below):
`
`
`1 Shahbakhti admitted that he did not consider these arguments. BMW1103,
`26:11-28:12 (“Since I did not look at them into the details, no, I did not provide
`any opinion on the history.”).
`
`3
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`
`
`Quigley teaches predicting a journey (“Is a Journey Expected”) based on the
`
`analysis of “habitual usage characteristics” from “previous journey histories,” and
`
`then altering vehicle operation by selecting an “intelligent” controller strategy for
`
`the expected journey. BMW1054, 129-131. Since that technique had already been
`
`used in Quigley to improve controller strategy, a POSA would have been likewise
`
`motivated to modify and improve Severinsky’s controller so that its “controller
`
`strategy” would be responsive to an “expected journey.” See KSR, 550 U.S. at 417
`
`(“[I]f a technique has been used to improve one device, and a person of ordinary
`
`skill in the art would recognize that it would improve similar devices in the same
`
`way, using the technique is obvious unless its actual application is beyond his or
`
`her skill.”); BMW1088, ¶13. Claims 1 and 7 require nothing more.
`
`4
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`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`2. Quigley’s disclosure
`
`By improperly attacking Quigley’s teachings in isolation, PO is looking
`
`through the wrong end of the telescope. POR, 23-30; In re Merck & Co., Inc., 800
`
`F.2d 1091, 1097 (Fed. Cir. 1986)(“Non-obviousness cannot be established by
`
`attacking references individually where the rejection is based upon the teachings of
`
`a combination of references.”). Here, the proposed combination begins with
`
`Severinsky’s controller, whose control strategy a POSA would improve based on
`
`Quigley’s pattern recognition and control-related teachings. There is no dispute
`
`that Severinsky discloses the control of a hybrid vehicle, including controlling the
`
`flow of torque amongst an engine, motor, and road wheels, and controlling the
`
`flow of electrical power (per claim elements [1a]-[1d]; [7a]-[7d]). There should be
`
`no dispute that a POSA would have been motivated to modify that control strategy
`
`in view of Quigley, so that such control would be “responsive to” expected vehicle
`
`patterns of operation, as opposed to one-size-fits-all predefined settings. Quigley,
`
`in fact, provides the precise motivation why a POSA would want to do that: “for
`
`optimum control.” BMW1054, 129; see also, Section III.A.4, infra.
`
`PO’s attacks on Quigley are also factually wrong. PO’s primary argument is
`
`that Quigley “does not predict a ‘journey,’” (POR, 24), but that assertion is
`
`contradicted by Quigley’s express language, which states that “many cars will have
`
`5
`
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`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`habitual usage characteristics for a high percentage of their journeys, and hence
`
`the ability to predict the occurrence of a journey and its associated characteristics
`
`will be quite high.” BMW1054, 130 (emphasis added).
`
`PO also wrongly insists that Quigley only predicts “parameters,” which it
`
`asserts are “single data points such as duration (in seconds) and distance (in km).”
`
`POR, 23-24. That argument focuses on a narrow view of one aspect of the
`
`disclosure but ignores the rest. Indeed, Quigley expressly describes predicting the
`
`“occurrence of the journey and its associated characteristics.” BMW1054, 130
`
`(emphasis added). Those “associated characteristics” are determined from signals
`
`from driver operational inputs (throttle, brake, etc.), engine management data
`
`(engine speed, etc.), and road speed, which Quigley describes being used by the
`
`proposed 1st Generation controller to estimate journey parameters:
`
`
`
`6
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`
`BMW1054, 130; BMW1088, ¶16.2
`
`Quigley also discloses monitoring the driver’s operation over time,
`
`analyzing the data collected, and then determining whether there is a pattern
`
`(“habitual usage characteristics”) or whether there “is no obvious pattern.” Pet.,
`
`25-28; BMW1054, 130, 132-134. Quigley even describes an example that matches
`
`exactly with the example in the ’761 Patent. In Quigley, the control system
`
`determines whether there will be a high expectation of a journey “correspond[ing]
`
`with the subjects morning journey to work,” just like the ’761 Patent, which refers
`
`to detecting patterns based on an operator’s daily commute. See BMW1054, 132-
`
`133; BMW1001, 39:51-61; 43:15-22. In other words, for the five weekdays,
`
`Quigley will have predicted information about the expected journey and its
`
`associated characteristics. Quigley then uses that information to optimize a
`
`“controller strategy” in an “intelligent controller” for those journeys. BMW1054,
`
`129, 131; BMW1008, ¶¶194-195.
`
`PO also criticizes Quigley for analyzing patterns that include travel distances
`
`(POR 24-25), but again, the ’761 Patent discloses that as within the scope of the
`
`
`2 Although he asserts in his declaration that there is no information in Quigley
`concerning what to do with the First Generation Control information, Shahbakhti
`admitted in his deposition that a POSA would recognize the usefulness of the
`information. BMW1103, 122:3-123:19.
`
`7
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`Challenged Claims. BMW1001, 39:61-67 (“Similarly, the engine starting routine
`
`might be initiated after the same total distance had been covered each day.”)
`
`(emphasis added). Both the ’761 Patent and Quigley recognize/predict patterns of
`
`operation that include the distance traveled each day, and control operations
`
`“responsive to” the recognized patterns. PO’s argument also takes too narrow a
`
`view of the claims, which only require that the controller “derive a pattern of
`
`operation…” and “controls operation” of the motor or engine “responsive” to that
`
`pattern. In accordance with the Board’s construction (“expected pattern of
`
`operation”), the recognition of a vehicle’s daily travel distance, and the prediction
`
`that such distances will be similarly driven in the future (e.g., if it is a weekday, the
`
`driver will likely drive XX distance), is an expected pattern of operation. Dr.
`
`Davis confirms that understanding. PAICE2034, 32:9-19; BMW1088, ¶22. So
`
`does Shahbakhti. BMW1103, 74:14-75:12(“[I]f I’m looking at how this one is
`
`going up and down from that full-day trip, then you can say that this was the
`
`pattern of the vehicle usage that is being used from one day and then the next that
`
`was happening.”).
`
`PO also disputes whether a “pattern” can be represented by a singular value,
`
`POR, 24-25, which is irrelevant, since Quigley discloses more than that (as
`
`discussed above). Nevertheless, PO’s argument is contradicted by its own
`
`8
`
`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
`
`evidence, which explains that “[i]t is possible to represent a given drive cycle by a
`
`weighted average of a small number of carefully chosen steady state-points.”
`
`BMW1104, 338; BMW1088, ¶20. PO’s argument, once again, seeks to add a
`
`limitation to the claims that does not exist; there is no requirement in the claims,
`
`nor any disclosure in the ’761 Patent specification, concerning the details about the
`
`expected “pattern” that are actually stored and maintained. Rather, a POSA would
`
`understand that a pattern need only contain sufficient information to allow the
`
`system to recognize characteristics concerning operation that would allow it to
`
`operate more efficiently. Id.; BMW1088, ¶21.
`
`3.
`
`PO’s “implied” construction
`
`Despite effectively arguing that the word “pattern” simply means “pattern”
`
`(POR, 21), PO attempts to stealthily alter that construction by introducing select
`
`extrinsic evidence to argue that “pattern” actually means “an order or sequence of
`
`driving operations.” Id., 25-26, citing PAICE2029-2032. In other words, PO
`
`seeks to improperly introduce an implied construction that further narrows the
`
`broadly recited claim language to save those claims from the prior art. PO’s expert
`
`uses this “narrowed” construction throughout his declaration, but notably did not
`
`assert that such additional limitations were part of his understanding of the same
`
`term in the currently pending IPR on the related ’347 Patent. PAICE2016, ¶52;
`
`9
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`

`

`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
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`BMW1103, 47:7-48:8.3 PO’s implied “narrowed construction,” which adds
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`numerous limitations not found in the Board’s construction (or PO’s own proposed
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`construction), and Shahbakhti’s reliance on it, should be disregarded. See POR,
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`15-21. PO declined the opportunity during prosecution to narrow the term
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`“pattern,” but rather sought a broad claim for assertion purposes to which it must
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`be held now.
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`Even with its improperly narrowed construction, PO’s argument is still
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`misguided, since Quigley’s pattern analysis is based on “an order or sequence of
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`driving operations.” In particular, Quigley discloses an intelligent controller that
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`manages “energy flow through the hybrid drive train” based on parameters
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`normally available only upon journey completion. Pet., 25; BMW1054, Abstract.
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`Quigley’s intelligent controller “allow[s] for optimum operation with respect to
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`exhaust emissions and fuel consumption” for an expected journey. BMW1054,
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`130. A POSA would know that optimizing exhaust emissions and fuel
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`consumption during a journey requires knowing the order and sequence of such
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`information as throttle operation, braking operation, engine speed, road speed, etc.
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`3 In that IPR, Shahbakhti asserted that the “’347 patent discloses altering the
`control system based on patterns of vehicle operation, which refers to how the
`operator drives the car over some period of time, i.e., how the driver actually uses
`the car on a day-to-day basis.”). BMW1102, ¶42 (emphasis added).
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`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
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`as is obtained in Quigley’s 1st Generation Control. PAICE2034, 7:8-8:5; 12:5-
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`13:8; 26:7-27:25; BMW1088, ¶17. Similarly, a POSA would understand that
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`Quigley would also maintain pattern information on road load because such
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`information would be required to manage the energy flow through the hybrid drive
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`train for optimum control, which Quigley describes as the purpose of its project.
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`BMW1054, 129; PAICE2034, 18:21-21:2; BMW1088, ¶17.4
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`4.
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`A POSA’s motivation
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`The Petition explained in great detail why a POSA would modify Severinsky
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`in view of Quigley. Pet., 30-34; BMW1008, ¶¶197-200.
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`In response, PO argues that Quigley only uses the “intelligent controller” for
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`determining how to balance the engine and electric motor, and that the driver, not
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`the control system, decides when to use the electric motor or engine. POR, 31.
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`Based on that logic, PO wrongly posits that a POSA would not be motivated by
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`Quigley to adjust when to switch between operating modes. Id., 32. Even if true
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`(which it is not), PO mischaracterizes Petitioners’ arguments and the Challenged
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`Claims, because claims 1 and 7 only require that the controller “controls operation”
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`4 PO’s uses of Dr. Davis’s testimony are often blatant mischaracterizations and/or
`based on objected-to questions not tied to his direct testimony or the ’761 Patent
`claims. Petitioner simply requests the Board look at the actual question asked, the
`objections lodged, and his full responses, when considering any of PO’s citations.
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`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
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`of the engine or motor “responsive to” a derived near-term predicted pattern of
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`operation. Thus, the limitations would be satisfied even if Quigley’s teachings
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`were read as narrowly as requested by PO, since there is no dispute that Severinsky
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`discloses controlling the flow of torque and electrical power (per claim elements
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`[1c], [1d], [7c], [7d]).5
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`Moreover, PO’s arguments about Quigley are also wrong and divorced from
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`what Quigley discloses or suggests to a POSA. In particular, Quigley expressly
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`refers to “performance over the complete range of operation.” BMW1054, 130.
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`And, as shown in Figure 2, Quigley’s process initially asks, “is a journey
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`expected,” and then it selects a controller strategy for the “expected journey.” Id.,
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`131. It would defy logic for Quigley’s controller strategy to exclude the start of
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`the “journey” (when only the motor is propelling the vehicle) or the high speed
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`portions of the “journey” (when only the engine is propelling the vehicle), as PO
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`argues. BMW1088, ¶37; see also BMW1103, 107:15-21 (Shahbakhti testifying
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`that a journey includes “from departure to the arrival”). Moreover, considering
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`5 Further to the Petition’s example concerning mode selection for maximum
`efficiency, the Petition and Dr. Davis explained that Severinsky discloses a control
`algorithm for distributing power between the motor and engine to ensure the
`engine is operated at its maximum point of efficiency, and a POSA would be
`motivated to optimize control parameters based on Quigley. Pet, 30-32;
`BMW1008, ¶¶197-198.
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`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
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`that standard hybrid vehicles in 1998 (including Severinsky) utilized automatic
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`switching amongst motor and engine operations, it is not credible to believe that a
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`POSA would understand Quigley’s teachings to be limited only to hybrid vehicles
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`that depend on a driver to manually switch between such different modes.
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`BMW1088, ¶¶35-37. Indeed, allowing a human driver to switch between modes
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`would likely limit efficiency gains of hybrid vehicles.
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`PO also tries to undercut the clear motivation to combine by arguing that
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`Quigley discusses tracking different parameters and journeys than those utilized by
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`Severinsky. POR, 32. This is an irrelevant bodily incorporation argument that is
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`contrary to KSR. Rather, Severinsky’s control scheme optimizes parameters, such
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`as those of the control algorithm and the distribution of power between the motor
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`and engine, to “ensure that the engine is operated at all times at its maximum point
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`of efficiency.” BMW1013, 21:22-38. A POSA incorporating Quigley’s teachings
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`of an “intelligent controller” would have thus modified Severinsky’s controller to
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`similarly employ a more intelligent “control strategy” that determines the optimal
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`mode of operation for an upcoming journey, which is determined “based on the
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`controller’s past experiences.” Pet, 30-31; BMW 1054, 129; BMW1088, ¶38;
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`BMW1008, ¶¶52-64, 91-115, 199. Because the control scheme would be based on
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`the vehicle’s predicted upcoming use, the modification of Severinsky with Quigley
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`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
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`would better adapt Severinsky’s controller for a wider variety of vehicle operations
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`to increase the vehicle’s efficiency (exhaust emissions and fuel consumption).
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`BMW1008, ¶¶197-200; BMW1088, ¶¶32-33; see KSR, 550 U.S. at 418; Pet, 30-
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`34.
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`Moreover, by focusing solely on the specific “parameters” and journeys
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`disclosed in Quigley’s data logging “experiments,” PO repeats many of the same
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`falsehoods about Quigley’s disclosure discussed above. POR, 32-35. In particular,
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`Quigley’s disclosure is not limited to tracking duration, distance, time, etc. as
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`suggested by PO. Rather, for Quigley’s controller strategy to manage the energy
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`flow through the hybrid drive train, it would have tracked information such as
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`speed, engine speed, road speed and road load. BMW1054, 130; PAICE2034, 7:8-
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`8:5; 12:5-13:8; 26:7-27:25; BMW1088, ¶16. Since these are the same parameters
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`Severinsky relied on for optimizing control, modifying Severinsky in view of
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`Quigley would merely involve using the same signals that Severinsky is already
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`utilizing but with an “intelligent” control that employs a “controller strategy” for
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`an expected journey. BMW1088, ¶¶32-33.
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`PO’s argument about Quigley’s calculations of “average vehicle speed”
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`instead of “instantaneous torque” is another improper bodily incorporation-type
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`argument, which is also factually flawed. POR 33-35. Quigley’s disclosure is not
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`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
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`as limited as PO suggests. But even if it were, a POSA would know that “average
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`speed” would provide at least some information about which a controller could
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`control operations of either the motor or engine “responsive to” the recognized
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`pattern (again, which is all that the claims require). BMW1088, ¶39; BMW1103,
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`100:13-101:24 (Shahbakhti acknowledging that if the vehicle knows that the
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`average speed for a trip is 90 mph, “that means probably IC engine should have
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`been used”).
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`Finally, contrary to PO’s argument that there would be no reasonable
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`expectation of success in combining the references, the ’761 Patent admits that it
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`was “within the skill of the art to program a microprocessor to record and analyze
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`such daily patterns, and to adapt the control strategy accordingly.” BMW1001,
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`39:58-61. Shahbakhti echoed that point in his deposition. BMW1103, 79:10-80:3
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`(“So if you look at the definition of the person of the ordinary skill in the art, when
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`he learns from this pattern, he should be able to implement it.”), 56:10-23
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`(explaining that “there are many different ways” to perform pattern recognition,
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`and that “Pattern recognition is a whole field of in [sic] engineering.”). Dr. Davis
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`has likewise confirmed that the modification would be within the skill of a POSA.
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`BMW1008, ¶200; BMW1088, ¶34.
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`Petitioners’ Reply to Patent Owners’ Response
`Case IPR2020-01299
`U.S. Patent No. 8,630,761
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`5.
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`Claims 2 and 8
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`PO criticizes the Petition’s arguments on claims 2 and 8 that Quigley’s
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`expected pattern is “based on” a repetitive pattern. POR, 36-37. But