Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No.10
`
` Entered: January 15, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT & BMW
`OF NORTH AMERICA, LLC,
`
`Petitioner,
`v.
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2020-01299
`Patent 8,630,761 B2
`____________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4(a)
`
`
`571-272-7822
`
`
`
` Paper No.10
`
` Entered: January 15, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT & BMW
`OF NORTH AMERICA, LLC,
`
`Petitioner,
`v.
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2020-01299
`Patent 8,630,761 B2
`____________
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4(a)
`
`
`
`IPR2020-01299
`Patent 8,630,761 B2
`
`I.
`
`INTRODUCTION
`
`Bayerische Motoren Werke Aktiengesellschaft and BMW of North
`America, LLC (collectively “Petitioner” or “BMW”) filed a Petition (Paper
`1, “Pet.”) requesting an inter partes review of claims 1–12 (the “challenged
`claims”) of U.S. Patent No. 8,630,761 B2 (Ex. 1001, “the ’761 Patent”).
`Patent Owner, Paice LLC and the Abell Foundation, Inc., timely filed a
`Preliminary Response (Paper 8, “Prelim. Resp.”).
`
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C.
`§ 314(a). See also 37 C.F.R § 42.4(a) (2018) (“The Board institutes the trial
`on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes
`review may not be instituted unless the information presented in the Petition
`shows “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Taking into
`account the Petition, the arguments presented in the Preliminary Response,
`as well as all supporting evidence, we conclude that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in its challenge of at least one claim of the
`’761 Patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby
`institute an inter partes review of all challenged claims of the ’761 Patent on
`all grounds stated in the Petition.
`Our factual findings, claim construction, and legal conclusions at this
`stage of the proceeding are based on the evidentiary record developed thus
`far. This decision to institute trial is not a final decision as to the
`unpatentability of the claims for which inter partes review is instituted. Our
`final decision will be based on the full record developed during trial.
`
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`
`Related Matters
`A.
`The parties state that the ’761 Patent is asserted in Paice LLC et al. v.
`Bayerische Motoren Werke Aktiengesellschaft, 1:19-cv-03348-SAG (D.
`Md.). Pet. 74; Paper 5, 2.
`
`Real Parties in Interest
`B.
`Petitioner and Patent Owner each identifies itself as the only real party
`in interest. Pet. 74; Paper 5, 2.
`The ’761 Patent (Ex. 1001)
`C.
`The ’761 Patent issued on January 14, 2014, and is entitled “Hybrid
`Vehicles.” Ex. 1001, codes (45), (54). The ’761 Patent issued from U.S.
`Patent Application 13/573,728, filed on October 5, 2012, and claims priority
`through a series of applications to U.S. Provisional Patent Applications
`60/100,095, filed on September 14, 1998, and 60/122,296, filed on March 1,
`1999. Id. at codes (21), (22), (60).
`The ’761 Patent generally relates to hybrid vehicles “in which both an
`internal combustion engine and one or more electric motors are provided to
`supply torque to the driving wheels of the vehicle . . . [for] achieving
`substantially improved fuel economy and reduced pollutant emissions.”
`Ex. 1001, 1:16–24. The ‘761 Patent describes various modes of operation of
`the hybrid vehicle powertrain that are “controlled by microprocessor 48 [as]
`a function of the state of charge of the battery bank, the instantaneous road
`load, and time.” Id. at 35:61–66. The ’761 Patent further describes that
`“microprocessor 48 controls the vehicle’s mode of operation at any given
`time in dependence on ‘recent history,’ as well as on the instantaneous road
`load and battery charge state.” Id. at 36:23–26.
`
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`Figure 6 of the ’761 Patent, reproduced below, schematically
`illustrates an embodiment of the claimed invention.
`
`
`
`Figure 6 illustrates differing modes of vehicle powertrain operation, plotted
`on a three dimensional chart, illustrating that the mode of vehicle operation
`is a function of the state of charge of the battery bank, the instantaneous road
`load, and time. Id. at 21:53–57.
`
`As shown in Figure 6, “during city driving (mode I), defined in this
`example as driving where the vehicle’s instantaneous torque requirements,
`or ‘road load’, is up to 30% of the engine’s maximum torque, the vehicle is
`operated as a ‘straight electric’ car.” Id. at 36:27–31. In mode I, “the clutch
`[is] disengaged and energy from the battery bank 22 [is] used to power
`traction motor 25 to propel the vehicle, as long as the battery remains
`
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`charged to between 50 and 70% of its full charge.” Id. at 36:31–34. “If the
`charge falls to below a given value . . . mode II is entered as indicated, the
`engine is started, and the starter motor 21 is operated as a generator to
`charge the battery to substantially full charge.” Id. at 36:34–39. Mode III
`permits operation of the vehicle as an electric car “when the battery falls to
`below 40% of full charge, for example, if there is a fault in the engine or
`charging system, but only on an emergency basis; such deep discharge is
`harmful to battery life.” Id. at 36:39–44. “During highway cruising, region
`IV, where the road load is between about 30% and 100% of the engine’s
`maximum torque output, the engine alone is used to propel the vehicle.” Id.
`at 36:45–47. “If the operator then calls for additional power, e.g. for
`acceleration or passing, region V is entered.” Id. at 37:3–4. There, “the
`microprocessor detects that the road load exceeds 100% of the engine’s
`maximum torque output, it controls inverter/charger 27 so that energy flows
`from battery bank 22 to traction motor 25, providing torque propelling the
`vehicle in addition to that provided by engine 40.” Id. at 37:3–9.
`
`The above embodiment includes a controlled transition from low-
`speed operation to highway cruising at a transition point or set point (i.e.,
`between operation in modes I and IV). Id. at 39:41–46. Using a constant set
`point, however, can sometimes lead to undesirable engine starting and shut-
`off, until extended highway cruising is attained. Id. at 39:63–66. To address
`this potential undesirable effect, the ’761 Patent uses the microprocessor to
`monitor the vehicle’s operation over a period of days or weeks and reset the
`set point in response to a repetitive driving pattern. Id. at 39:48–66. The
`’761 Patent explains that by the microprocessor “monitoring the road load
`over time, and comparing it to different setpoints accordingly, much of this
`
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`undesirable repetitive sequence of engine starting and shut-off can be
`eliminated.” Id. at 40:26–29.
`D. Challenged Claims
`Claims 1 and 7 are independent. Ex. 1001, 56:33–57:37. Claim 1 is
`reproduced below:
`1. A method of operation of a hybrid vehicle, comprising steps
`of:
`storing and supplying electrical power from a battery bank,
`applying torque to road wheels of said hybrid vehicle from one
`or both of an internal combustion engine and at least one
`traction motor, and
`controlling flow of torque between said internal combustion
`engine, said at least one traction motor, and said road
`wheels, and controlling flow of electrical power between
`said battery bank and said at least one traction motor
`employing a controller, and
`wherein said controller derives a predicted near-term pattern of
`operation of said hybrid vehicle by monitoring operation of
`said hybrid vehicle; and
`controls operation of said at least one traction motor and said
`internal combustion engine for propulsion of said hybrid
`vehicle responsive to said derived near-term predicted
`pattern of operation of said hybrid vehicle.
`Asserted Grounds of Unpatentability
`E.
`Petitioner challenges claims 1–12 of the ’761 Patent based on the
`asserted grounds of unpatentability set forth below (Pet. 19–74):
`
`
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`Reference(s)
`Severinsky1 and Quigley2
`Severinsky and Nii3
`Severinsky and Graf4
`
`
`
`Claim(s) Challenged
`Basis
`§ 103(a) 1–12
`§ 103(a) 1–12
`§ 103(a) 1, 2, 5–8, 11, and 12
`
`II. ANALYSIS
`
`A. Overview
`A petition must show how the construed claims are unpatentable
`under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
`Petitioner bears the burden of demonstrating a reasonable likelihood that it
`would prevail with respect to at least one challenged claim for a petition to
`be granted. 35 U.S.C. § 314(a).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`
`1 US 5,343,970, issued Sept. 6, 1994 (Ex. 1013, “Severinsky”).
`2 C. P. Quigley et al., Predicting the Use of a Hybrid Electric Vehicle, IFAC
`Intelligent Components for Autonomous & Semi-Autonomous Vehicles
`(1995) (Ex. 1054, “Quigley”).
`3 US 5,650,931, issued July 22, 1997 (Ex. 1022, “Nii”).
`4 US 6,188,945 B1, issued Feb. 13, 2001 (Ex. 1020, “Graf”).
`
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`the art; and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`We analyze the asserted obviousness grounds with these principles in
`
`mind.
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner contends that a person of ordinary skill in the art would
`have “a graduate degree in mechanical, electrical or automotive engineering
`with at least some experience in the design and control of combustion
`engines, electric or hybrid electric vehicle propulsion systems, or design and
`control of automotive transmissions” or, alternatively, “a bachelor’s degree
`in mechanical, electrical or automotive engineering and at least five years of
`experience in the design of combustion engines, electric vehicle propulsion
`systems, or automotive transmissions.” Pet. 10 (citing Ex. 1008 ¶¶ 43–46).
`Patent Owner does not offer an alternate level of skill. See generally Prelim.
`Resp.
`For the purposes of this Decision, we adopt Petitioner’s level of
`ordinary skill in the art because it appears consistent with the problems
`addressed in the ’761 Patent and the prior art of record. See, e.g., Ex. 1001,
`6:1–9.
`
`Claim Construction
`C.
`We apply the same claim construction standard used by Article III
`federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415
`F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R.
`§ 42.100(b) (2019). Accordingly, we construe each challenged claim of the
`’761 Patent to generally be “the ordinary and customary meaning of such
`
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`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” Id.
`Petitioner requests that we construe the claim terms “predicted near-
`term pattern of operation,” “controls operation … responsive to said derived
`near-term predicted pattern,” and “road load.” Pet. 10–15. Patent Owner
`takes issue with Petitioner’s construction of the term “predicted near-term
`pattern of operation,” and requests that we use the construction adopted by
`the District Court in the parallel proceeding or apply the plain and ordinary
`meaning. Prelim. Resp. 10–17. After reviewing the evidence and argument
`presented by Petitioner and Patent Owner, we determine that it is not
`necessary, at this stage of the proceeding, to construe the claim terms
`“controls operation … responsive to said derived near-term predicted
`pattern” and “road load.” See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we
`need only construe terms ‘that are in controversy, and only to the extent
`necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Nonetheless, we
`address the parties’ respective proposed constructions of the claim term
`“predicted near-term pattern of operation” in light of the District Court’s
`construction of this term.
`Petitioner contends that we should construe “predicted near-term
`pattern of operation” as “expected upcoming vehicle operation based on past
`repetitive driver behavior.” Pet. 10. Petitioner supports this construction
`with reference to the Specification of the ’761 Patent which, according to
`Petitioner, “refers to monitoring the vehicle’s operation over a period of
`days or weeks to determine repetitive driving patterns, such as when an
`
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`operator drives the same route to the workplace every morning.” Id. at 11
`(citing Ex. 1001, 39:49–61). Petitioner further contends that “[t]he ’761
`Patent Specification explains that ‘in response to recognition of a regular
`pattern,’ the transition point for the control strategy may be altered.” Id.
`(citing Ex. 1001, 39:58–67, 43:15–22). Petitioner further contends that the
`construction is consistent with the prosecution history which, according to
`Petitioner, “distinguished the identified prior art on the basis that this claim
`term requires the prediction of future operation based on monitored driver
`behavior.” Id. at 11. Petitioner further contends that its proposed
`construction is consistent with the understanding of a skilled artisan and with
`a construction of a similar term adopted by the Board in an inter partes
`review of U.S. Patent 7,104,347, which is the parent patent of the ’761
`Patent. Id. at 11 (citing Ex. 1008 ¶¶ 157–158; Ex. 1011, 11–13).
`Patent Owner requests that we adopt what Patent Owner contends is
`the ordinary and customary meaning of “predicted near-term pattern of
`operation.” Prelim. Resp. 10. In support of its contentions, Patent Owner
`asserts that “the Court in the District of Maryland construed this term as ‘an
`expected pattern of operation’ consistent with Patent Owners’ proposal.” Id.
`at 16 (citing Ex. 2007, 11.). Patent Owner does not offer an ordinary
`meaning of this claim term apart from what the District Court provided. See
`generally id. at 10–17.
`The District Court began its analysis by noting that Petitioner “seeks
`to limit how the controller derives this pattern, basing it solely on the
`driver’s repeated driving operations” while Patent Owner “suggests that the
`question of how the pattern is derived was left open-ended by the claim
`language and covers vehicle operation in general.” Ex. 2007, 9. Petitioner
`
`
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`made similar arguments in the District Court that it makes here. See id. at 9–
`11. The District Court rejected Petitioner’s arguments for a more limited
`construction that incorporates “monitoring a driver’s repeated driving
`operations over time” because the construction was not supported by the
`Specification or prosecution history. Id. at 11. In adopting the broader
`construction proposed by Patent Owner, the District Court provided the
`following pertinent observations:
`It is also worth noting that [Patent Owner], whether in the
`specification or at oral argument, has provided few examples of
`other factors that might play into the expected pattern of
`operation. It seems apparent that driving operations will be the
`most central factor in ascertaining the pattern of operation.
`Nevertheless, the plain language does not rule out other inputs.
`Thus, because [Patent Owner]’s construction hews most closely
`to the broad plain language of the claim, the Court will adopt it:
`“an expected pattern of operation.”
`
`Id.
`We agree with the District Court’s reasoning for not adopting
`
`Petitioner’s proposed construction but add the following observation. Claim
`2, which depends from claim 1, recites, inter alia, that the “derived predicted
`pattern of operation comprises at least one repetitive pattern of operation.”
`Adopting Petitioner’s proposed construction could potentially run afoul of
`the doctrine of claim differentiation. Petitioner proposes that we limit claim
`1 “to expected upcoming vehicle operation based on past repetitive driver
`behavior” (Pet. 10) but does not persuasively explain why this proposed
`limitation is materially different than “at least one repetitive pattern of
`operation,” as recited in claim 2. See Bancorp Servs., L.L.C. v. Sun Life
`Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1275 (Fed. Cir. 2012), citing
`Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)
`
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`(“The doctrine of claim differentiation, while not a hard and fast rule of
`construction, creates a presumption that . . . ‘the presence of a dependent
`claim that adds a particular limitation raises a presumption that the limitation
`in question is not found in the independent claim.’”). We agree with the
`remainder of the District Court’s claim construction analysis and
`preliminarily adopt its construction of “predicted near-term pattern of
`operation” as “an expected pattern of operation.”
`This preliminary determination does not preclude the parties from
`arguing proposed constructions of this or any other claim terms during trial.
`Claim construction, in general, is an issue to be addressed at trial. Our final
`claim construction, if any, will be determined at the close of all the evidence.
`
`D. Ground 1: Obviousness over Severinsky and Quigley
`Petitioner contends that claims 1–12 are obvious over Severinsky and
`Quigley. Pet. 19–50. In support thereof, Petitioner asserts that Severinsky
`discloses most of the limitations of claim 1, and relies on Quigley to disclose
`the last two limitations of claim 15, “wherein said controller derives a
`predicted near-term pattern of operation of said hybrid vehicle by
`monitoring operation of said hybrid vehicle,” and “controls operation of said
`at least one traction motor and said internal combustion engine for
`propulsion of said hybrid vehicle responsive to said derived near-term
`predicted pattern of operation of said hybrid vehicle.” Id. at 25–30.
`Petitioner identifies the disclosures in Quigley alleged to describe the subject
`matter in the challenged claims. Id. Additionally, Petitioner offers
`
`
`5 Independent claim 7 includes similar limitations, and Petitioner relies on its
`arguments in support of claim 1 for claim 7. See Pet. 49.
`
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`declaration testimony from Dr. Gregory W. Davis in support of its position.
`Ex. 1008 ¶¶ 161–280.
`In the Preliminary Response, Patent Owner contends that the portion
`of Quigley identified by Petitioner as the recited “predicted near-term
`pattern of operation” does not correspond to the recited pattern of operation
`because Petitioner “presents no evidence that [Quigley’s] ‘parameters’ are a
`pattern of any kind.” Prelim. Resp. 17–18. Specifically, Patent Owner
`contends that Quigley’s “parameters” include “[j]ourney duration, journey
`distance, time of departure, [and] journey destination,” and do not constitute
`a pattern. Id. at 18 (alterations in original) (citing Ex. 1054, 130).
`We begin our analysis with a brief overview of Severinsky and
`Quigley. We then address the parties’ respective contentions with respect to
`the challenged claims.
`
`1. Overview of Severinsky — Ex. 1013
`Severinsky is a United States Patent issued on September 6, 1994.
`Ex. 1013, code (45). Severinsky is entitled “Hybrid Electric Vehicle.” Id. at
`code (54). Severinsky describes a “parallel hybrid electric vehicle wherein
`an internal combustion engine and an electric motor can separately or
`simultaneously apply torque to the driving wheels of the vehicle, controlled
`to realize maximum fuel efficiency at no penalty in convenience,
`performance, or cost.” Id. at 5:31–36. Severinsky discloses that
`“microprocessor 48 is provided with all information relevant to the
`performance of the system, and appropriately controls torque transfer unit
`28, internal combustion engine 40, switching unit 28, and electric motor 20
`to ensure that appropriate torque is delivered to the wheels 34 of the
`vehicle.” Id. at 12:64–13:2. Severinsky further discloses that “at all times
`
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`the microprocessor 48 may determine the load (if any) to be provided to the
`engine by the motor, responsive to the load imposed by the vehicle’s
`propulsion requirements, so that the engine 40 can be operated in its most
`fuel efficient operating range.” Id. at 17:11–15. Severinsky uses several
`parameters relevant to the performance of a parallel hybrid vehicle,
`including maximum power available to drive the vehicle, the ratio of internal
`combustion engine maximum power versus that of the electric motor, and
`optimization of the control algorithm. Id. at 21:23–38. Severinsky discloses
`that “these parameters are optimized so as to ensure that the engine is
`operated at all times at its maximum point of efficiency, and such that the
`driver need not consider the power source being employed at any given time.
`Id.
`
`2. Overview of Quigley — Ex. 1054
`Quigley is an International Federation of Automatic Control (IFAC)
`paper entitled “Predicting the Use of a Hybrid Electric Vehicle.” Ex. 1054,
`129.6 Quigley describes an intelligent controller that “relies on the idea that
`many cars will have habitual usage characteristics for a high percentage of
`their journeys, and hence the ability to predict the occurrence of a journey
`and its associated characteristics will be quite high.” Id. at 130. Quigley’s
`controller uses signals already present in vehicles including: “a) Drivers
`Operational Inputs:- Throttle Brake etc. b) Time of day/year. c) Engine
`Management Data:- Engine speed etc. d) Road speed.” Id. Quigley
`
`
`6 Petitioner submits a Declaration of Sylvia Hall-Ellis, Ph.D. to establish
`“the authenticity and public availability” of Quigley. See Ex. 1055, 1.
`Patent Owner does not dispute the authenticity or public availability of
`Quigley. See generally Prelim. Resp.
`
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`discloses that a data logger records control parameters, which include:
`“Time of departure, Journey time elapsed, Speed over ground, derived from
`latitude and longitude.” Id. at 131. Using this data, different types of a
`driver’s journeys can be classified. Id. at 132. Then, the controller can
`determine, for example: “If it is a weekday, and the time is between 07.00-
`08.00 a.m. then there is a high expectation of a journey of 1000 to 1300
`seconds duration, with a distance around 14km.” Id. at 133 (emphasis
`omitted). GPS data can also be used to provide position data. Id. at 133–
`134.
`
`3. Claim 1 (A method of operating a hybrid vehicle)
`a. storing and supplying electrical power from a battery bank
`Petitioner contends that Severinsky’s method of operating a hybrid
`vehicle includes storing and supplying electrical power from battery pack
`22. Pet. 20. Petitioner asserts that Severinsky discloses battery pack 22 that
`“is charged by power generated by the motor 20 when operated as a
`generator,” and that electric motor 20 is “powered by energy stored in a
`relatively large, high voltage battery pack 22.” Id. (citing Ex. 1013, 9:65–
`10:14, 10:53–58). Patent Owner does not squarely address Petitioner’s
`contentions. See Prelim. Resp. 17–19.
`
`Based on the present record, Petitioner demonstrates sufficiently that
`Severinsky discloses this claim limitation.
`b. applying torque to road wheels of said hybrid vehicle from one
`or both of an internal combustion engine and at least one
`traction motor
`Petitioner contends that Severinsky discloses this limitation because
`“both the engine 40 . . . and the motor 20 . . . provide torque to the drive
`wheels 34 . . . by way of the controllable torque transfer unit 28.” Pet. 20–
`
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`21 (citing Ex. 1013, 10:24–26; Fig. 3). Patent Owner does not squarely
`address Petitioner’s contentions. See Prelim. Resp. 17–19.
`Based on the present record, Petitioner demonstrates sufficiently that
`Severinsky discloses this claim limitation.
`c. controlling flow of torque between said internal combustion
`engine, said at least one traction motor, and said road wheels
`Petitioner contends that Severinsky discloses this limitation because
`“microprocessor 48 . . . controls the flow of torque between the motor 20
`. . ., the engine 40 . . ., and the wheels 34 . . . responsive to the mode of
`operation of the vehicle.” Pet. 22 (citing Ex. 1013, 10:26–30, Fig. 3). Patent
`Owner does not squarely address Petitioner’s contentions. See Prelim.
`Resp. 17–19.
`Based on the present record, Petitioner demonstrates sufficiently that
`Severinsky discloses this claim limitation.
`
`d. controlling flow of electrical power between said battery bank
`and said at least one traction motor employing a controller
`Petitioner contends that Severinsky discloses this limitation because
`Severinsky’s microprocessor controller 48 controls “the bi-directional flow
`of power between the battery 22 . . . and the motor 20.” Pet. 23 (citing Ex.
`1013, 10:4–23, Fig. 3). Patent Owner does not squarely address Petitioner’s
`contentions. See Prelim. Resp. 17–19.
`Based on the present record, Petitioner demonstrates sufficiently that
`Severinsky discloses this claim limitation.
`e. said controller derives a predicted near-term pattern of
`operation of said hybrid vehicle by monitoring operation of
`said hybrid vehicle
`Petitioner contends that although “this claim language was added by
`Applicants specifically to avoid Severinsky . . . [this] functionality, however,
`
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`was well known in the prior art,” as evidenced by Quigley. Pet. 25.
`Specifically, Petitioner contends that Quigley discloses an “‘intelligent
`controller for hybrid electric vehicles’ that is ‘required to manage energy
`flow through the hybrid drive train and for optimum control.’” Id. (citing
`Ex. 1054, 129). According to Petitioner, “Quigley ‘predict[s]’ certain
`‘parameters at the start of the journey using intelligent classification
`techniques and a knowledge base of previous journey histories.’” Id.
`(alteration in original) (quoting Ex. 1054, 129). Petitioner contends that
`“Quigley discloses that ‘many cars will have habitual usage characteristics
`for a high percentage of their journeys, and hence the ability to predict the
`occurrence of a journey and its associated characteristics will be quite
`high.’” Id. (citing Ex. 1054, 130). Petitioner further contends that
`“Quigley’s method determines the expected upcoming vehicle operation
`based on past repetitive driver behavior (i.e., during commuting times).
`Quigley’s disclosure is consistent with the example provided in the ’761
`patent, which refers to detecting patterns based on an operator’s daily
`commute.” Id. at 27–28 (citing Ex. 1001, 39:51–61).
`Petitioner asserts that a skilled artisan “would have been motivated to
`incorporate Quigley’s teachings of using predictive travel patterns into
`Severinsky’s control scheme to further optimize parameters based on how a
`particular vehicle is being used in order to increase engine efficiency and
`reduce emissions.” Pet. 30 (citing Ex. 1008 ¶¶ 197–198). According to
`Petitioner, because Severinsky’s control scheme maximizes efficiency based
`on a mode of operation, a skilled artisan “incorporating Quigley’s teachings
`would have modified the controller to similarly employ a ‘control strategy’
`that determines the optimal mode of operation based on expected upcoming
`
`
`
`17
`
`
`
`IPR2020-01299
`Patent 8,630,761 B2
`journeys (e.g., near-term predicted pattern of operation).” Id. at 32 (citing
`Ex. 1008 ¶ 200). Petitioner contends that the modification would have been
`predictable and would have a reasonable expectation of success because
`enhancing the efficiency of a hybrid vehicle is a goal in both references and
`both do so “based on alterations to the control scheme.” Id. at 32–33.
`Petitioner further contends that a skilled artisan would have understood how
`to use Quigley’s teachings to alter Severinsky’s vehicle’s operating points,
`“as evidenced by the ’761 Patent’s admission that it was ‘within the skill of
`the art to program a microprocessor to record and analyze such daily
`patterns, and to adapt the control strategy accordingly.’” Id. at 34 (citing Ex.
`1001, 39:58–61).
`Patent Owner contends that Petitioner “presents no evidence that
`Quigley derives a ‘predicted near-term’ or ‘expected pattern of operation’ as
`the challenged claims require when the operative claim language is properly
`construed or given its plain meaning.” Prelim. Resp. 17. Patent Owner
`contends that Petitioner’s assertion that Quigley “predicts certain
`‘parameters…’” is unfounded because Petitioner “presents no evidence that
`these ‘parameters’ are a pattern of any kind.” Id. at 17–18. Patent Owner
`further contends that Petitioner’s suggestion that “Quigley derives or
`predicts the journey duration (in seconds) and distance (in km)” is
`insufficient because “claim 1 very clearly requires that the ‘controller
`derives a predicted near-term pattern of operation of said hybrid vehicle,’
`not any ‘expected upcoming vehicle operation.’” Id. at 18–19. For the
`following reasons, we are not persuaded by Patent Owner’s contentions.
`Quigley discloses that “means of intelligently estimating . . .
`parameters, based on the controller’s past experience is needed.” Ex. 1054,
`
`
`
`18
`
`
`
`IPR2020-01299
`Patent 8,630,761 B2
`130. Quigley provides this means by describing “an intelligent controller”
`that “will allow journey parameters to be reliably estimated upon journey
`departure, and therefore allow for optimal operation with respect to exhaust
`emissions and fuel consumption.” Id. According to Quigley, this type of
`control can be implemented because the “controller relies on the idea that
`many cars will have habitual usage characteristics for a high percentage of
`their journeys, and hence the ability to predict the occurrence of a journey
`and its associated characteristics will be quite high.” Id. Quigley discloses
`that the controller would use “technology already present in modern day
`vehicles (e.g. electronic tachometer, engine management system),” and
`would derive signal information including driver inputs such as throttle and
`brake usage, time of day and year, as well as engine speed data and road
`speed. Id. Based on the present record, it appears that Quigley discloses
`“monitoring operation of the vehicle” because it derives signal information
`about how the vehicle is operating using, for example, throttle and brake
`usage, and engine speed data.
`Quigley also discloses that this signal information is gathered to
`develop a pattern based on “habitual usage characteristics.” Id. Quigley
`further discloses that “[a] commuter journey is a particularly good example
`of a journey that exhibits habitual characteristics.” Id. at 130. A commuter
`journey starts on a weekday between 7 and 8 a.m. Id. at 133. Quigley
`further discloses that if its controller “decides a journey is expected it can
`make an estimation of the expected journey parameters, and an appropriate
`optimized control strategy can be referenced from the controller’s memory.”
`Id. at 131.
`
`
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`19
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`IPR2020-01299
`Patent 8,630,761 B2
`Quigley, thus, discloses predicting a near-term pattern of operation,
`i.e., a commuter journe
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