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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
`
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
`
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`
`
`Inter Partes Review No.: To Be Assigned
`
`U.S. Patent No. 8,630,761 K2
`
`___________________
`
`
`DECLARATION OF DR. GREGORY W. DAVIS
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`BMW 1008
`Page 1 of 156
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`Table of Contents
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`I.
`II.
`III.
`IV.
`
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ............... 9
`RELEVANT LEGAL STANDARDS ....................................................17
`QUALIFICATIONS OF ONE OF ORDINARY SKILL IN THE ART .19
`STATE OF THE ART ...........................................................................20
`A.
`“Series” Hybrid Vehicle...............................................................24
`B.
`“Parallel” Hybrid Vehicle ............................................................27
`C.
`Hybrid Vehicle “Control Strategies” ............................................33
`D.
`Severinsky - U.S. Patent No. 5,343,970 .......................................45
`E.
`Utilizing Patterns in Motor Vehicle Control .................................47
`V.
`The ’761 Patent ......................................................................................54
`A.
`Effective Filing Date of the ‘761 Patent .......................................54
`B.
`Specification of the ’761 Patent ...................................................55
`C.
`Prosecution History of the ’761 Patent .........................................59
`VI.
`CLAIM CONSTRUCTIONS .................................................................62
`VII. GROUND 1 – CLAIMS 1-12 ARE OBVIOUS OVER SEVERINSKY
`IN VIEW OF QUIGLEY .......................................................................64
`A.
`Claim 1 ........................................................................................64
`B.
`Claim 2 ........................................................................................84
`C.
`Claim 3 ........................................................................................86
`D.
`Claim 4 ........................................................................................86
`E.
`Claim 5 ........................................................................................92
`F.
`Claim 6 ...................................................................................... 108
`G.
`Claim 7 ...................................................................................... 111
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`CHALLENGED CLAIMS OF THE ’761 PATENT AND PROPOSED
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`BMW 1008
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`Claim 8 ...................................................................................... 114
`H.
`Claim 9 ...................................................................................... 114
`I.
`Claim 10 .................................................................................... 114
`J.
`Claim 11 .................................................................................... 114
`K.
`Claim 12 .................................................................................... 114
`L.
`VIII. GROUND 2 – CLAIMS 1-12 ARE OBVIOUS OVER SEVERINSKY
`IN VIEW OF NII ................................................................................. 115
`A.
`Claim 1 ...................................................................................... 115
`B.
`Claim 2 ...................................................................................... 123
`C.
`Claim 3 ...................................................................................... 124
`D.
`Claim 4 ...................................................................................... 125
`E.
`Claim 5 ...................................................................................... 126
`F.
`Claim 6 ...................................................................................... 130
`G.
`Claim 7 ...................................................................................... 132
`H.
`Claim 8 ...................................................................................... 135
`I.
`Claim 9 ...................................................................................... 135
`J.
`Claim 10 .................................................................................... 135
`K.
`Claim 11 .................................................................................... 135
`L.
`Claim 12 .................................................................................... 135
`SEVERINSKY IN VIEW OF GRAF ................................................... 136
`A.
`Claim 1 ...................................................................................... 136
`B.
`Claim 2 ...................................................................................... 145
`C.
`Claim 5 ...................................................................................... 146
`D.
`Claim 6 ...................................................................................... 150
`E.
`Claim 7 ...................................................................................... 152
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`GROUND 3 – CLAIMS 1-2, 5-8, 11-12 ARE OBVIOUS OVER
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`IX.
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`BMW 1008
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`Claim 8 ...................................................................................... 154
`F.
`Claim 9 ...................................................................................... 154
`G.
`Claim 10 .................................................................................... 154
`H.
`Claim 11 .................................................................................... 155
`I.
`Claim 12 .................................................................................... 155
`J.
`OBJECTIVE EVIDENCE OF NONOBVIOUSNESS ......................... 155
`CONCLUSION ................................................................................... 156
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`X.
`XI.
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`BMW 1008
`Page 4 of 156
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`Exhibit No.
`BMW1001
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`BMW1002
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`BMW1003
`
`BMW1004
`
`BMW1005
`
`BMW1006
`
`BMW1007
`
`BMW1008
`
`BMW1009
`
`BMW1010
`
`BMW1011
`
`BMW1012
`
`BMW1013
`
`BMW1014-
`BMW1019
`
`BMW1020
`BMW1021
`
`BMW1022
`
`BMW1023
`
`
`
`LIST OF EXHIBITS
`Description of Exhibit
`U.S. Patent No. 8,630,761
`
`USPTO Assignments on the Web for U.S. Patent No.
`7,104,347 K2
`
`Ford Motor Co. v. Paice LLC, IPR2014-00571, Paper 44,
`Final Written Decision (P.T.A.B. Sep. 28, 2015)
`
`Ford Motor Co. v. Paice LLC, IPR2014-00579, Paper 45,
`Final Written Decision (P.T.A.B. Sep. 28, 2015)
`
`Paice LLC v. Ford Motor Co., Appeal Nos. 2016-1412, -
`1415, -1745, Doc. 46-2, Opinion (Fed. Cir. Mar. 7, 2017)
`
`Ford Motor Co. v. Paice LLC, IPR2015-00794, Paper 31,
`Final Written Decision (P.T.A.B. Nov. 1, 2016)
`
`Paice LLC v. Ford Motor Co., Appeal Nos. 2017-1442, -
`1443, Doc. 59-2, Opinion (Fed. Cir. Feb. 1, 2018)
`
`Declaration of Dr. Gregory W. Davis in Support of Inter
`Partes Review of U.S. Patent No. 8,630,761
`
`Curriculum Vitae of Dr. Gregory W. Davis, Ph.D., P.E.
`
`Ford Motor Co. v. Paice LLC, IPR2015-00795, Paper 31,
`Final Written Decision (P.T.A.B. Nov. 1, 2016)
`
`Ford Motor Co. v. Paice LLC, IPR2014-00884, Paper 38,
`Final Written Decision (P.T.A.B. Dec. 10, 2015)
`RESERVED
`
`U.S. Patent No. 5,343,970 (“Severinsky”)
`
` RESERVED
`
`U.S. Patent No. 6,188,945 (“Graf”)
`RESERVED
`
`U.S. Patent No. 5,650,931 (“Nii”)
`
`Innovations in Design: 1993 Ford Hybrid Electric Vehicle
`Challenge, Society of Automotive Engineers, SAE/SP-
`
`
`
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`BMW 1008
`Page 5 of 156
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`Exhibit No.
`
`BMW1024
`
`BMW1025
`
`Description of Exhibit
`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
`
`BMW1028
`
`BMW1029
`
`BMW1030
`
`BMW1031
`
`BMW1032
`
`BMW1033
`
`
`
`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)
`
`Unnewehr, L.E. et al., “Hybrid Vehicle for Fuel
`Economy,” Society of Automotive Engineers, SAE/SP-
`76/0121 (1976)
`
`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)
`
`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)
`
`Electric and Hybrid Vehicles Program, 18th Annual
`Report to Congress for Fiscal Year 1994, U.S. Department
`of Energy (Apr. 1995)
`
`Bates, B. et al., “Technology for Electric and Hybrid
`Vehicles,” Society of Automotive Engineers, SAE/SP-
`98/1331 (Feb. 1998)
`
`Stodolsky, F. et al., “Strategies in Electric and Hybrid
`Vehicle Design,” Society of Automotive Engineers,
`
`
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`BMW 1008
`Page 6 of 156
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`
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`Exhibit No.
`
`BMW1034
`
`Description of Exhibit
`SAE/SP-96/1156, Kozo, Y. et al., “Development of New
`Hybrid System – Dual System,” SAE/SP-96/0231 (Feb.
`1996), 25-33
`Leschly, K.O., Hybrid Vehicle Potential Assessment,
`Volume 7: Hybrid Vehicle Review, U.S. Department of
`Energy (Sep. 30, 1979)
`
`BMW1035
`
`RESERVED
`
`BMW1036
`
`BMW1037-
`BMW1038
`
`BMW1039
`
`BMW1040
`
`BMW1041
`
`BMW1042
`
`BMW1043
`
`BMW1044
`
`BMW1045-
`BMW1051
`
`BMW1052
`
`
`
`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
`
`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
`
`Bauer, H., ed., Automotive Handbook, Robert Bosch
`Gmbh (4th Ed. Oct. 1996), Excerpts
`
`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,” SAE/SP-95/0493 (Feb.
`1995), 65-71
`
`U.S. Patent No. 5,656,921 (“Farrall”)
`
`RESERVED
`
`File History for U.S. Patent No. 8,630,761
`
`
`
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`BMW 1008
`Page 7 of 156
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`Exhibit No.
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`BMW1053
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`BMW1054
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`BMW1055
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`BMW1056
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`BMW1057
`
`BMW1058
`
`Description of Exhibit
`USPTO Assignments on the Web for U.S. Patent No.
`8,630,761
`
`“Predicting the Use of a Hybrid Electric Vehicle” Quigley,
`et al. (“Quigley”)
`Declaration of Sylvia Hall-Ellis, Ph.D.
`
`U.S. Patent No. 5,189,621 (“Onari”)
`
`U.S. Patent No. 4,625,697 (“Hosaka”)
`
`U.S. Patent No. 5,533,583 (“Adler”)
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`BMW 1008
`Page 8 of 156
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`I, Gregory Davis, hereby declare as follows:
`
`
`
`1.
`
`I am making this declaration at the request of Bayerische Motoren
`
`Werke Aktiengesellschaft and BMW of North America, LLC in the matter of Inter
`
`Partes Review of U.S. Patent No. 8,630,761 (“the ’761 Patent”).
`
`2.
`
`I am being compensated for my work in this matter at a rate of
`
`$375/hour. My compensation in no way depends on the outcome of this
`
`proceeding.
`
`3.
`
`In preparation of this declaration and in forming the opinions
`
`expressed below, I have considered:
`
`(1) The patents and documents cited throughout my declaration;
`
`(2) My understanding of the relevant legal standards, including the
`
`standard for obviousness provided in KSR International Co. v. Teleflex, Inc.,
`
`550 U.S. 398 (2007), and any additional documents cited in the body of this
`
`declaration; and
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`(3) My knowledge and experience based upon my work and study
`
`in this area as described below.
`
`I.
`
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`4.
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`I have provided my full background in the curriculum vitae that is
`
`attached as BMW1009.
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`BMW 1008
`Page 9 of 156
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`5.
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`I received my Bachelor of Science Degree in Mechanical Engineering
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`from the University of Michigan, Ann Arbor in 1982 and my Master of Science
`
`Degree in Mechanical Engineering from Oakland University in 1986.
`
`6.
`
`I further am a licensed “Professional Engineer” in the state of
`
`Michigan.
`
`7.
`
`As shown in my resume, most of my career has been in the field of
`
`automotive engineering that includes numerous positions in both the academia and
`
`industry settings.
`
`8.
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`After receiving my Master’s degree, I began work at General Motors
`
`where I had several assignments
`
`involving automotive design, advanced
`
`engineering and manufacturing. Over the course of my years at General Motors, I
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`was involved in all aspects of the vehicle design process, from advanced research
`
`and development to manufacturing.
`
`9.
`
`Specifically, my work at General Motors included aspects of engine
`
`and fuel system design relating to the production of fuel sending units, and
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`modeling the effects of fuels and EGR on vehicle performance and emissions.
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`10. After leaving General Motors, I returned to the University of
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`Michigan where I was awarded a Ph.D. in Mechanical Engineering in 1991. My
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`thesis was directed
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`to automotive engineering
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`including
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`the design and
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`development of systems and models for understanding combustion in automotive
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`engines.
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`11. Upon completion of my Ph.D., I joined the faculty of the U.S. Naval
`
`Academy where I led the automotive program in mechanical engineering. As part
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`of my responsibilities while at the Academy, I managed the laboratories for
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`Internal Combustion Engines and Power Systems.
`
`12.
`
`I further taught automotive and mechanical engineering courses while
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`at the U.S. Naval Academy. Some of the courses I taught were directed
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`specifically to design and operation of internal combustion engines in both
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`conventional and hybrid vehicles. I also taught courses pertaining to the design
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`and operation of hybrid vehicles.
`
`13.
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`In addition to my work at the U.S. Naval Academy, I also served as
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`faculty advisor for the USNA Society of Automotive Engineers (SAE). During
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`this time I served as project director for the research and development of hybrid
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`electric vehicles.
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`14. My work with regards to hybrid electric vehicles included extensive
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`design and modifications of the powertrain, chassis, and body systems. This
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`development work included the design, modifications and implementation of a new
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`powertrain, and alternate fuel delivery and injection systems.
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`15. The hybrid electric vehicle work that I worked on at the U.S. Naval
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`Academy was published in a bound 1994 SAE special publication. (BMW1023 at
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`6-11).
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`16. While at the Naval Academy, I also taught classes in mechanical
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`engineering at Johns Hopkins University.
`
`17.
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`In 1995, I joined the faculty of Lawrence Technological University
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`where I served as Director of the Master of Automotive Engineering Program and
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`Associate Professor in the Mechanical Engineering Department.
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`18. The master’s program in automotive engineering is a professionally
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`oriented program aimed at attracting and educating practicing engineers in the
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`automotive industry.
`
`19.
`
`In addition
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`to
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`teaching and designing
`
`the curriculum
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`for
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`undergraduate and graduate students, I also worked in the automotive industry
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`closely with Ford Motor Company on the development of a hybrid electric vehicle.
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`20. Specifically, I served as project director on a cooperative research
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`project to develop and design all aspects of a hybrid electric vehicle. While in
`
`many instances we used standard Ford components, we custom designed many
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`automotive subsystems. As part of this project, we completely redesigned and
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`replaced the existing powertrain including the fuel storage, delivery and injection
`
`systems. We also did analytical and actual testing of the systems.
`
`21. While at Lawrence Technological University, I also served as the
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`faculty advisor on several student based hybrid vehicle competitions that were
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`sponsored primarily by Ford Motor Company, General Motor Company, and
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`Chrysler Corporation.
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`22. These competitions required the complete design of a hybrid vehicle,
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`including the design of the power train. These competitions also required the
`
`complete design of the software and hardware required to control the hybrid
`
`vehicle.
`
`23. Attached as Exhibits BMW1024 and BMW1025 are the competition
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`papers that were submitted for the 1996 and 1997 competitions for which I served
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`as the faculty advisor. (BMW1024; BMW1025).
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`24. During my time at Lawrence Technological University, I further
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`served as advisor for 145 automotive graduate and undergraduate project students.
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`Many of the graduate students whom I advised were employed as full time
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`engineers in the automotive industry. This service required constant interaction
`
`with the students and their automotive companies which included the major
`
`automotive manufacturers (e.g., Ford, Chrysler, General Motors, Toyota, etc.).
`
`along with many automotive suppliers (e.g., Denso, Delphi and Bosch).
`
`25. Currently, I am employed as a Professor of Mechanical Engineering
`
`& Director of the Advanced Engine Research Laboratory (AERL) at Kettering
`
`University—formerly known as “General Motors Institute.”
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`26. At Kettering University, I develop the curriculum and teach courses in
`
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`BMW 1008
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`mechanical and automotive engineering to both undergraduate and graduate
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`students.
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`27. Since coming to Kettering, I have advised over 90 undergraduate and
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`graduate theses in automotive engineering. Further, I actively pursue research and
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`development activities within automotive engineering.
`
`28. My work requires constant involvement with my students and their
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`sponsoring automotive companies which have included not only those mentioned
`
`above, but also Walbro, Nissan, Borg Warner, FEV, Inc., U.S. Army Automotive
`
`Command, Denso, Honda, Dana, TRW, Tenneco, Navistar, and ArvinMeritor. For
`
`example, I routinely visit automotive manufacturing plants and Centers for
`
`Research & Development, meeting and working with engineers. These interactions
`
`include the Flint GM Engine plant, BorgWarner, Horiba, the Environmental
`
`Protection Agency Vehicle Testing Laboratory, etc.
`
`29. As is further shown by my curriculum vitae, I have published over 80
`
`peer reviewed technical articles and presentations involving topics in automotive
`
`engineering.
`
`30. Automotive and mechanical engineering topics covered in these
`
`articles include development of hybrid vehicles, mechanical design and analysis of
`
`components and systems, vehicle exterior design
`
`including aerodynamics,
`
`development of alternative fueled vehicles and fuel systems, thermal and fluid
`
`
`
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`
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`BMW 1008
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`system design and analysis, selection and design of components and sub-systems
`
`for optimum system integration, and system calibration and control.
`
`31.
`
`I have also chaired or co-chaired sessions in automotive engineering
`
`at many
`
`technical conferences
`
`including sessions
`
`involving powertrain
`
`development and control in automotive engineering.
`
`32. For my work, I have received numerous awards. In 2002, for example,
`
`I was awarded the SAE International Award for Excellence in Oral Presentation
`
`and the Powertrain & Fluid Systems Conference. In 2006, I was awarded the SAE
`
`International Outstanding Section Member Award, in Recognition of Extraordinary
`
`Achievement by a Mid-Michigan Section Member.
`
`33. Additionally, while acting as director of the AERL, I am responsible
`
`for numerous laboratories and undergraduate and graduate research projects, which
`
`include On-road and Off-road engine and chassis testing laboratories. Projects
`
`have included the design and development of fuel injection systems for off-road
`
`vehicles, fuel compatibility studies of vehicle storage and delivery systems,
`
`modification of fuel delivery systems to accommodate alternative fuels, and other
`
`extensive modifications and development of vehicular powertrains. Testing
`
`services include both laboratory and on-road data acquisition & control of vehicles
`
`and systems.
`
`34.
`
`I also serve as lead faculty advisor to the Society of Automotive
`
`
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`BMW 1008
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`
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`Engineers’ (“SAE”) Student Branch where we annually design and compete in the
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`Formula, Baja, AeroDesign, and Clean snowmobile challenges (I directly advise
`
`the Clean Snowmobile and AeroDesign Challenge teams) where we design, and
`
`manufacture vehicles and systems, including Powertrain and Body/Chassis
`
`systems.
`
`35.
`
`I have also held numerous
`
`leadership positions within SAE
`
`International. In addition to serving and chairing many committees, I have served
`
`as an elected Director on the SAE International Board of Directors, as a member
`
`of, and the Chair of the SAE International Engineering Education Board, and as a
`
`Director of the SAE International Publications Board.
`
`36.
`
`In addition to my academic work, I have consulted extensively in the
`
`automotive industry. For example, since 2003 I have been an instructor in SAE’s
`
`Continuing Professional Development Programs where I have worked to develop
`
`and teach professional development courses directed to automotive powertrain
`
`systems and controls, braking, handling, chassis, and exterior body systems for
`
`SAE at its headquarters and at company locations. Engineers and managers from
`
`all major original equipment manufacturers and suppliers, governmental regulatory
`
`agencies, as well as other professionals involved in the automotive industry world-
`
`wide have attended these courses. I also develop and teach continuing professional
`
`development courses, working directly with the sponsoring companies.
`
`
`
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`
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`BMW 1008
`Page 16 of 156
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`
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`37.
`
`I am an inventor on four patents providing methods and systems for
`
`conserving energy used by energy-consuming devices, such as engines in
`
`automobiles or generators. In certain embodiments, an energy conservation system
`
`can be configured to deliver energy to the energy-consuming device for a period,
`
`followed by a period in which energy delivery is dampened and/or cut. By cycling
`
`the delivery of energy in this fashion, the energy conservation can achieve a pulsed
`
`efficiency.
`
`38. Finally, I am a member of the Advisory Board of the National
`
`Institute for Advanced Transportation Technology at the University of Idaho. In
`
`addition to advising, I also review funding proposals and project reports of the
`
`researchers funded by the center.
`
`39.
`
`I have also submitted expert declarations in several IPRs concerning
`
`hybrid vehicle technologies, including in IPR2014-00571 and IPR2014-00579, in
`
`which I understand the Board agreed with my opinions in decisions that were
`
`subsequently affirmed on appeal. I have also recently submitted an expert
`
`declaration in IPR2020-00994 on 7,104,347 (the “’347 Patent), which is currently
`
`pending.
`
`II. RELEVANT LEGAL STANDARDS
`
`40.
`
`I have been asked to provide opinions on the claims of the ’761 Patent
`
`in light of the prior art.
`
`
`
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`
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`BMW 1008
`Page 17 of 156
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`41.
`
`It is my understanding that a claimed invention is unpatentable under
`
`35 U.S.C. § 102 if a prior art reference teaches every element of the claim.
`
`Further, it is my understanding that a claimed invention is unpatentable under 35
`
`U.S.C. § 103 if the differences between the invention and the prior art are such that
`
`the subject matter as a whole would have been obvious at the time the alleged
`
`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. I also understand that an obviousness analysis takes into account
`
`factual inquiries including the level of ordinary skill in the art, the scope and
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`content of the prior art, and the differences between the prior art and the claimed
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`subject matter.
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`42.
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`It is my understanding that the Supreme Court has recognized several
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`rationales for combining references or modifying a reference to show obviousness
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`of the claimed subject matter. Some of these rationales include the following:
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`combining prior art elements according to known methods to yield predictable
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`results; simple substitution of one known element for another to obtain predictable
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`results; a predictable use of prior art elements according to their established
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`functions; applying a known technique to a known device to yield predictable
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`results; choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success; and some teaching, suggestion, or motivation in
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`the prior art that would have led one of ordinary skill to modify the prior art
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`reference or to combine prior art reference teachings to arrive at the claimed
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`invention.
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`III. QUALIFICATIONS OF ONE OF ORDINARY SKILL IN THE ART
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`43.
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`I have reviewed the ’761 Patent, those patents cited in the ’761 Patent,
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`as well as the prior art documents. I have also reviewed and submitted declarations
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`in IPR proceedings on related patents to the ’761 patent, including U.S. Patent Nos.
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`7,104,347 and 7,237,634. Based on this review and my knowledge of hybrid
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`electric vehicles, including my work on multiple hybrid vehicles during the course
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`of the 1990’s, it is my opinion that a person of ordinary skill in the art would have
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`either: (1) a graduate degree in mechanical, electrical or automotive engineering
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`with at least some experience in the design and control of combustion engines,
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`electric or hybrid electric vehicle propulsion systems, or design and control of
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`automotive transmissions, or (2) a bachelor’s degree in mechanical, electrical or
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`automotive engineering and at least five years of experience in the design of
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`combustion engines, electric vehicle propulsion systems, or automotive
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`transmissions.
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`44.
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`I understand that this determination is made at the time of the
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`invention, which I understand that Patent Owners may claim to be around the
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`September 14, 1998 filing of U.S. Provisional Application No. 60/100,095. As I
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`also discussed in my “Qualifications and Professional Experience” above, I am
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`familiar with the level of knowledge and the abilities of a person having ordinary
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`skill in the art at the time of the claimed invention based on my experience in the
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`industry (both as an employee and as a professor).
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`45.
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`I understand that Patent Owners have proposed in previous IPRs on
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`related patents to the ’761 patent, that a person of ordinary skill in the art would be
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`a person who would have a combination of experience and education in the design
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`and development of mechanical systems or control systems, typically a Bachelor of
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`Science degree in mechanical engineering or electrical engineering or similar field
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`plus at least three years of experience in designing, implementing, testing,
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`teaching, or otherwise working with automotive systems, control system logic, or a
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`related field.
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`46.
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`I do not believe that the differences between this proposed level of
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`skill and the one I have proposed are significant, and they in any event do not
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`affect the opinions I have set forth below.
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`IV. STATE OF THE ART
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`47. Hybrid-Electric Vehicles (hybrid vehicles) were conceived over 100
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`years ago in an attempt to combine the power capabilities of electric motors and
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`internal combustion engines1 (ICE) to satisfy all the driver demand required to
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`1 An engine could also be referred to as a “heat engine” and is commonly known
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`propel a vehicle. (BMW1027 at 11).
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`48.
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`I am aware that one of the first functioning hybrid vehicles was
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`designed and built by Justus Entz in May 1897. (BMW1027 at 11-13).
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`49.
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`I am also aware that hybrid vehicle patents extend as far back as 1909
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`for U.S. Patent No. 913,846 to Pieper that was granted for a “Mixed Drive Auto
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`Vehicle.”
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`50.
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`I am aware that the hybrid vehicle disclosed by the Pieper patent was
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`likewise assembled as a functioning hybrid vehicle that was publicly used.
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`(BMW1027 at 13-14).
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`51.
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`I am also aware of well-known hybrid vehicles that were built and
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`publicly used by Baker and Woods in 1917. (BMW1027 at 21-23).
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`52. While these early hybrid vehicles did not include the complex
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`microprocessor-based control strategies found in present-day hybrid vehicles, it
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`has always been known that one goal of hybrid vehicles is the possibility of
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`operating the engine at its “optimum efficiency.”
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`From almost
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`the beginning of
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`the Automotive Age, various
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`combinations of drive systems have been tried in order to achieve
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`vehicle performance characteristics superior to those that can be
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`obtained using a single type of drive. These efforts have been made in
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`to be a part of the overall “Auxiliary Power Unit” of a hybrid vehicle (i.e., “APU”).
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`the name of many worthwhile goals, such as increased vehicle
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`acceleration capability, audible noise reduction, operation of an
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`engine or turbine at optimum efficiency, reduction of noxious
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`emissions, and improved fuel economy.
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`(BMW1028 at 1).
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`53.
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`It was not until events in the 1970’s, however, that a renewed interest
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`in hybrid vehicles emerged as a means to combat the U.S. dependency on oil and
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`to meet increased air pollution reduction goals. (See e.g., BMW1029 at 3;
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`BMW1030 at 3).
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`54. For instance, in 1976 the U.S. government enacted Public Law 94-413
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`pertaining to the “Electric and Hybrid Vehicle Research, Development, and
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`Demonstration Act” that was to “encourage and support accelerated research into,
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`and development of electric and hybrid vehicle technologies.” (BMW1031 at 4).
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`55. As a result of this law, multiple fully functional hybrid and electric
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`vehicles were developed by automotive corporations. (BMW1031 at 4).
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`56.
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`I am specifically aware that Ford Motor Company and Toyota Motor
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`Company invested considerable time and money into developing both hybrid and
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`electric vehicles. (See e.g., BMW1028 at 1; BMW1032 at 4).
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`57. Further collegiate competitions intensified during the 1990’s starting
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`with the 1993-1995 Ford Hybrid Electric Vehicle Challenge. The 1993 Ford
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`Hybrid Electric Vehicle Challenge is attached as Exhibit BMW1023. By 1994
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`these competitions had grown to include teams from over 38 universities
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`representing more than 800 students. (BMW1031 at 10).
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`58. As I mentioned in my “Qualifications and Professional” section
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`above, I was personally involved with the U.S. Naval Academy’s hybrid vehicle
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`design that was entered in the 1993 “Ford Hybrid Vehicle” competition.
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`(BMW1023 at 6).
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`59.
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`I was also personally
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`involved with Lawrence Technological
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`University’s hybrid vehicle design that was entered in the 1996 and 1997 “Future
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`Car” hybrid vehicle competitions. (BMW1024 at 6; BMW1025 at 10).
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`60. Based upon the level of research and development prior to 1998,
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`numerous hybrid vehicle “architectures” were well-known. (See, e.g., BMW1033
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`at 4, 7-8). Hybrid vehicle “architectures” may also be generally referred to as
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`hybrid “topologies” or “configurations.” As I explain in detail below, known
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`hybrid vehicle “architectures” included what was commonly referred to as: (1)
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`“series” hybrid vehicles; and (2) “parallel” hybrid vehicles. As I further explain in
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`detail below, “parallel” hybrid vehicle architectures were further known to include:
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`(1) one motor “parallel” hybrid vehicle architectures; and (2) two motor “parallel”
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`hybrid vehicle architectures.
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`61. The