UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioners
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`v.
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`PAICE LLC & THE ABELL FOUNDATION, INC.
`Patent Owners
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`Inter Partes Review No.: To Be Assigned
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`U.S. Patent No. 8,630,761
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`___________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,630,761 UNDER
`35 U.S.C. § 311 AND 37 C.F.R. § 42.100
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`

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`
`
`Table of Contents
`
`Petition
`U.S. Patent No. 8,630,761
`
`Page
`
`“controls operation … responsive to said derived near-term
`predicted pattern” / “predictively controls operation …
`
`Introduction .................................................................................................. 1
`I.
`Overview of the ’761 Patent ......................................................................... 2
`II.
`A.
`The Specification and the Challenged Claims ..................................... 2
`B.
`File History ......................................................................................... 6
`C.
`Relevant Prior IPRs Invalidating Claims Based on Severinsky ........... 8
`D.
`Person of Ordinary Skill in the Art (“POSA”) ................................... 10
`III. Claim Construction ..................................................................................... 10
`A.
`“derives a predicted/predicts a near-term pattern of operation” ......... 10
`B.
`responsive to said predicted near-term pattern of operation” ............. 12
`C.
`“road load”........................................................................................ 13
`IV. Statutory Grounds of Challenge .................................................................. 15
`V. Overview of the Technology ....................................................................... 15
`Background of the Art ...................................................................... 15
`A.
`Severinsky – U.S. Patent No. 5,343,970............................................ 16
`B.
`C.
`Quigley, et al..................................................................................... 17
`D. Nii – U.S. Patent No. 5,650,931 ........................................................ 18
`E.
`Graf – U.S. Patent No. 6,188,945 ...................................................... 19
`VI. Detailed Explanation of the Challenge ........................................................ 19
`A. Ground 1 – Claims 1-12 are Obvious Over Severinsky in View
`of Quigley ......................................................................................... 19
`1.
`Claim 1 ...................................................................................19
`2.
`Claim 2 ...................................................................................35
`3.
`Claim 3 ...................................................................................36
`4.
`Claim 4 ...................................................................................36
`5.
`Claim 5 ...................................................................................39
`
`Quigley – “Predicting the Use of a Hybrid Electric Vehicle”
`
`i
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`

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`B.
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`C.
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`Petition
`U.S. Patent No. 8,630,761
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`Ground 2 – Claims 1-12 are Obvious Over Severinsky in View
`
`Claim 6 ...................................................................................47
`6.
`Claim 7 ...................................................................................49
`7.
`Claim 8 ...................................................................................49
`8.
`Claim 9 ...................................................................................50
`9.
`10. Claim 10 .................................................................................50
`11. Claim 11 .................................................................................50
`12. Claim 12 .................................................................................50
`of Nii ................................................................................................ 50
`1.
`Claim 1 ...................................................................................50
`2.
`Claim 2 ...................................................................................56
`3.
`Claim 3 ...................................................................................56
`4.
`Claim 4 ...................................................................................57
`5.
`Claim 5 ...................................................................................58
`6.
`Claim 6 ...................................................................................59
`7.
`Claim 7 ...................................................................................61
`8.
`Claim 8 ...................................................................................62
`9.
`Claim 9 ...................................................................................62
`10. Claim 10 .................................................................................62
`11. Claim 11 .................................................................................62
`12. Claim 12 .................................................................................62
`Severinsky in view of Graf ............................................................... 63
`1.
`Claim 1 ...................................................................................63
`2.
`Claim 2 ...................................................................................69
`3.
`Claim 5 ...................................................................................70
`4.
`Claim 6 ...................................................................................72
`5.
`Claim 7 ...................................................................................73
`6.
`Claim 8 ...................................................................................74
`
`Ground 3 – Claims 1-2, 5-8, 11-12 are Obvious Over
`
`ii
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`

`

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`
`Petition
`U.S. Patent No. 8,630,761
`
`Claim 11 .................................................................................74
`7.
`Claim 12 .................................................................................74
`8.
`VII. Mandatory Notices Under 37 C.F.R. §42.8 ................................................. 74
`Real Parties-in-Interest ...................................................................... 74
`A.
`Related Matters ................................................................................. 74
`B.
`Identification of Counsel and Service Information ............................ 75
`C.
`VIII. Grounds for Standing and Procedural Statement (37 C.F.R.
`§42.104(a)) ................................................................................................. 75
`IX. Payment of Fees (37 C.F.R. §§42.103 and 42.15(a)(1)) .............................. 76
`Conclusion .................................................................................................. 76
`X.
`Claim Appendix of Challenged Claims ................................................................. 77
`Certification of Word Count ................................................................................. 83
`Certificate of Service ............................................................................................ 84
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`
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`
`
`iii
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`

`

`
`
`
`Exhibit No.
`
`BMW1001
`
`BMW1002
`
`BMW1003
`
`BMW1004
`
`BMW1005
`
`BMW1006
`
`BMW1007
`
`BMW1008
`
`Petition
`U.S. Patent No. 8,630,761
`
`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
`
`BMW1009
`
`Curriculum Vitae of Dr. Gregory W. Davis, Ph.D., P.E.
`
`BMW1010
`
`BMW1011
`
`BMW1012
`
`BMW1013
`
`BMW1014-
`BMW1019
`
`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
`
`iv
`
`

`

`
`Exhibit No.
`
`BMW1020
`
`BMW1021
`
`BMW1022
`
`BMW1023
`
`BMW1024
`
`BMW1025
`
`Petition
`U.S. Patent No. 8,630,761
`
`Description of Exhibit
`
`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-
`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
`
`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
`
`v
`
`

`

`
`Exhibit No.
`
`BMW1031
`
`BMW1032
`
`BMW1033
`
`BMW1034
`
`Petition
`U.S. Patent No. 8,630,761
`
`Description of Exhibit
`(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,
`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
`
`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
`
`vi
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`

`

`
`Exhibit No.
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`BMW1042
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`BMW1043
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`BMW1044
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`BMW1045-
`BMW1051
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`BMW1052
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`BMW1053
`
`BMW1054
`
`BMW1055
`
`BMW1056
`
`BMW1057
`
`BMW1058
`
`
`
`Petition
`U.S. Patent No. 8,630,761
`
`Description of Exhibit
`
`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
`
`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”)
`
`
`vii
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`

`

`Petition
`U.S. Patent No. 8,630,761
`
`
`Pursuant to 35 U.S.C. §311 and 37 C.F.R. §42.100, Petitioners Bayerische
`
`Motoren Werke Aktiengesellschaft and BMW of North America, LLC (“BMW”)
`
`request inter partes review (“IPR”) of Claims 1-12 (the “Challenged Claims”) of
`
`U.S. Patent No. 8,630,761 (“’761 Patent”) (BMW1001). The ’761 Patent is
`
`assigned to Paice LLC and the Abell Foundation, Inc. (“Patent Owners”) per
`
`United States Patent and Trademark Office (“PTO”) assignment records.
`
`BMW1002; BMW1053.
`
`I.
`
`Introduction
`
`Despite containing a lengthy specification describing a hybrid vehicle
`
`topology and control scheme, the purportedly novel feature of the ’761 Patent
`
`claims is predicting a near-term pattern of operation of the hybrid vehicle and
`
`controlling the hybrid vehicle in response thereto. But that feature, which is
`
`disclosed only generally in a few passages in the specification, is not new.
`
`Numerous prior art references—not before the PTO during examination of the ’761
`
`Patent—expressly disclose analyzing a driver’s operation of the vehicle to predict
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`travel patterns in order to optimize the control strategy for hybrid vehicles. One
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`reference used in the challenge herein, Quigley, is actually titled “Predicting the
`
`Use of a Hybrid Electric Vehicle.” Applying such optimization techniques to
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`increase efficiency of hybrid vehicles, which is described as a goal across the prior
`
`art, would have been obvious to a person of skill in the art.
`
`1
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`

`

`II. Overview of the ’761 Patent
`
`Petition
`U.S. Patent No. 8,630,761
`
`
`A. The Specification and the Challenged Claims
`
`The ’761 Patent specification is directed to purported improvements in
`
`hybrid vehicles. BMW1001, 1:16-19. Some of those improvements were
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`allegedly made over U.S. Patent No. 5,343,970 (“Severinsky”), which is discussed
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`extensively throughout the specification and issued to one of the named inventors
`
`here. See, e.g., id., 10:16-11:12. Nevertheless, in six IPRs on related patents, the
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`Board and Federal Circuit found that Severinsky anticipates or renders obvious
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`numerous claims to the allegedly “improved” hybrid vehicle and control scheme.
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`The bulk of the ’761 Patent specification is directed to an alleged “new
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`‘topology’ for a hybrid vehicle” that required “two” motors and an engine. Id.,
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`11:25-45. For background information on the two-motor topology, Figure 3,
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`reproduced below, shows one such embodiment, with a starting motor 21 in green,
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`a traction motor 25 in blue, and an internal combustion engine 40 in red.
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`2
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`Petition
`U.S. Patent No. 8,630,761
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`
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`BMW1001, 25:29-50. This two-motor hybrid vehicle was said to be an
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`improvement over the “one-motor” hybrid vehicle already disclosed by
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`Severinsky. Id., 16:59-65; 25:4-6. The claims in the ’761 Patent, however, do not
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`claim a two-motor design. Each challenged claim requires only a single motor
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`configuration, which the ’761 Patent admits already existed in Severinsky.
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`The ’761 Patent specification describes a number of operating modes to best
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`control operation of the hybrid vehicle, including a “low-load mode” in which the
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`vehicle is propelled only by the electric motor, a “highway cruising mode” in
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`3
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`Petition
`U.S. Patent No. 8,630,761
`
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`which the vehicle is propelled only by the engine, and an “acceleration mode” in
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`which the vehicle is propelled by both the engine and the electric motor.
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`BMW1001, 35:1-48. A microprocessor determines the mode of operation based
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`on road load. Id. If the road load is below a setpoint (or “transition point”), the
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`vehicle operates in the motor only mode; if the road load is between the setpoint
`
`and the maximum torque output of the engine, the vehicle operates in the engine
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`only mode; if the road load is above the maximum torque output of the engine, the
`
`vehicle operates in the motor/engine mode. Id., 35:1-48, 39:42-47. But the ’761
`
`Patent admits that these features were also not new in view of Severinksy, which
`
`disclosed operating hybrid vehicles in different modes depending on the torque
`
`required, the state of charge of the batteries, and other variables. Id., 34:10-15.
`
`The only aspect of challenged claims 1-12 that the ’761 Patent specification
`
`does not admit to be disclosed in the prior-art Severinsky reference (as confirmed
`
`in the file history, which is discussed below), relates to using driving pattern data
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`to enhance control of a hybrid vehicle. The ’761 Patent specification references
`
`that feature in a few locations within the specification, and only at a high level of
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`generality. See BMW1001, 39:48-67; 40:41-43; 43:7-22. In particular, the
`
`specification explains that the microprocessor can monitor a vehicle’s operation
`
`over a period of time to alter the vehicle’s setpoint in response to a repetitive
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`driving pattern. Id., 39:48-51. As an example, the specification states that an
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`4
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`

`Petition
`U.S. Patent No. 8,630,761
`
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`operator may drive the same route from a congested suburban development to a
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`workplace at about the same time every morning, and it may be beneficial to adjust
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`the engine/motor transition point to prevent repetitive engine starts that would
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`otherwise occur in suburban traffic. Id. Notably, the specification also recognizes
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`that “how” to record and analyze patterns and adapt a control strategy would
`
`essentially be a simple task, because it states 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., 39:58-61.
`
`The challenged claims are recited fully in the Claims Appendix, including an
`
`identification of the subparts referenced throughout this petition. Independent
`
`claims 1 and 7 both relate to a method of operation of a hybrid vehicle including
`
`numerous steps, generally summarized as follows:
`
`[a] storing and supplying electrical power from a battery bank;
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`[b] applying torque to road wheels from an engine or a motor;
`
`[c] controlling flow of torque between the engine, motor, and wheels;
`
`[d] controlling flow of electrical power between the battery bank and motor
`
`employing a controller;
`
`[e] the controller derives/predicts a near-term pattern of operation of the
`
`hybrid vehicle by monitoring operation of the hybrid vehicle;
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`5
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`Petition
`U.S. Patent No. 8,630,761
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`[f] controlling the motor or engine for propulsion in response to the
`
`derived/predicted near-term pattern.
`
`Steps [a] to [d] refer to well-known features included in many single motor
`
`hybrid vehicle control systems in the prior art, such as Severinsky.
`
`Steps [e] and [f], which were distinguished by Applicants over Severinsky as
`
`discussed below, were, however, also well-known features taught in multiple prior
`
`art references, such as Quigley, Nii, and Graf used in the challenges here.
`
`The dependent claims add details concerning alterations to the known
`
`control schemes based on such pattern data.
`
`B.
`
`File History
`
`The ’761 Patent issued from U.S. Patent Application No. 13/573,728, which
`
`was filed on October 5, 2012. The ’761 Patent claims priority to a lengthy chain of
`
`parent non-provisional and provisional patent applications, dating back to
`
`September 14, 1998.
`
`In response to a rejection under 35 U.S.C. §102(b) over Severinsky,
`
`Applicants amended the claims and disputed the presence of what would become
`
`parts [e] and [f] of eventually issued claims 1 and 7 (pending claims 17 and 23,
`
`respectively). Specifically, Applicants argued that Severinsky did not disclose
`
`using predicted patterns to enhance its control scheme:
`
`6
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`

`

`Petition
`U.S. Patent No. 8,630,761
`
`
`[I]ndependent claims 17 and 23 [(issued claims 1 and 7)] have
`
`both been amended hereby to recite that the controller performs
`
`the separate steps of monitoring vehicle operation to derive a
`
`predicted pattern of operation, and then controlling vehicle
`
`operation accordingly. [Severinsky] discloses only that the
`
`vehicle is operated in different modes responsive to vehicle
`
`speed, makes this mode determination strictly in real time, and
`
`says nothing about predicting a pattern of operation, and
`
`altering vehicle operation accordingly.
`
`BMW1052, 58.1 Accordingly, Applicants limited the scope of the claims to
`
`require that the controller control the vehicle based on predicted pattern
`
`information instead of making determinations strictly in real time. Applicants
`
`further argued that Severinsky is different from the amended claims because the
`
`control scheme is not based on actual driver behavior but on predetermined
`
`settings:
`
`Further, [Severinsky] says nothing about the controller
`
`performing the step of monitoring vehicle operations in order to
`
`derive a predicted pattern or anticipate a pattern of operation of
`
`the vehicle. That is, as noted by the Examiner, highway
`
`operation and operation in traffic are predictable modes of
`
`operating any vehicle, and therefore any vehicle must be
`
`
`1 All emphasis added unless otherwise indicated.
`
`7
`
`

`

`Petition
`U.S. Patent No. 8,630,761
`
`
`designed to accomplish both properly. But in this case, it is the
`
`vehicle designer who anticipates highway and low-speed
`
`driving, and incorporates the necessary components into the
`
`vehicle to permit the vehicle to perform in both modes.… This
`
`is very different from the vehicle’s controller monitoring
`
`operation of the particular vehicle and using this data to predict
`
`future operational patterns accordingly, as claimed.
`
`Id. In other words, Patent Owner distinguished a general-purpose control strategy
`
`selected by the vehicle designer (manufacturer) to cover known modes of operation
`
`for any hybrid vehicle from an optimized intelligent control strategy for a
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`particular hybrid vehicle based on how a driver actually operates that particular
`
`vehicle.
`
`In response to the claim amendments and arguments, the Examiner issued a
`
`Notice of Allowance. Id., 24.
`
`C. Relevant Prior IPRs Invalidating Claims Based on Severinsky
`
`U.S. Patent No. 7,104,347 (“’347 Patent”), which is a parent of the ’761
`
`Patent containing the same disclosure, has been the subject of eight previous IPRs
`
`8
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`

`

`in which 30 of 322 challenged claims were found invalid based upon a variety of
`
`Petition
`U.S. Patent No. 8,630,761
`
`
`different references.3 The Final Written Decision (“FWD”) in IPR2014-00571
`
`specifically determined that numerous claims were invalid as obvious over
`
`Severinsky in view of secondary references. BMW1003. The Federal Circuit
`
`affirmed that decision. BMW1005.
`
`U.S. Patent No. 7,237,634, which also stems from the ’347 patent and
`
`contains the same disclosure, as well as over 300 claims, has been the subject of 26
`
`previous IPRs, many of which found numerous claims invalid based upon a variety
`
`of different references. The FWDs in IPR2014-00904; IPR2014-01416; IPR2015-
`
`00758; IPR2015-00785; IPR2015-00801 specifically determined Severinsky
`
`rendered obvious numerous claims in view of secondary references. The Federal
`
`Circuit affirmed each of those decisions.
`
`
`2 The two claims not found unpatentable recited “monitoring patterns of vehicle
`
`operation,” but those IPRs were not based on Severinsky or any of the secondary
`
`references used in this Petition. Instead, the challenger relied upon references that
`
`the Board found to only monitor the vehicle battery’s state of charge for patterns,
`
`rather than a driver’s operation. The Grounds presented herein have no such issue.
`
`3 Petitioners have also recently filed IPR2020-00994 on the ’347 Patent, which is
`
`currently pending.
`
`9
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`

`

`Person of Ordinary Skill in the Art (“POSA”)
`
`Petition
`U.S. Patent No. 8,630,761
`
`
`D.
`
`A POSA in the art of the ’761 Patent would have either: (1) 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 (2) 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.
`
`BMW1008, ¶¶43-46.
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`III. Claim Construction
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`In an inter partes review, claim terms “shall be construed using the same
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`claim construction standard that would be used to construe the claim in a civil
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`action.” 37 C.F.R. §42.100(b); Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
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`Cir. 2005). Except as discussed below, the terms in the Challenged Claims should
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`have their plain and ordinary meaning for purposes of this IPR proceeding.
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`A.
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`“derives a predicted/predicts a near-term pattern of operation”
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`Claims 1 and 7 both essentially recite a “predicted near-term pattern of
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`operation” (or very similar variant) in claim elements [1e], [1f] and [7e], [7f].
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`Petitioners propose that the phrase be construed to mean “expected
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`upcoming vehicle operation based on past repetitive driver behavior.” This
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`construction flows from the claim language itself, as well as the specification,
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`which refers to monitoring the vehicle’s operation over a period of days or weeks
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`to determine repetitive driving patterns, such as when an operator drives the same
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`route to the workplace every morning. BMW1001, 39:49-61. The ’761 Patent
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`specification explains that “in response to recognition of a regular pattern,” the
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`transition point for the control strategy may be altered. Id., 39:58-67; see also id.,
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`43:15-22. Petitioner’s construction is also consistent with the file history which
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`distinguished the identified prior art on the basis that this claim term requires the
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`prediction of future operation based on monitored driver behavior. See Section
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`II.B. It is also consistent with the ordinary understanding of a POSA. BMW1008,
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`¶¶157-58.
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`Notably, in a prior IPR on the parent ’347 Patent, Patent Owners argued for
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`a construction of the related phrase “monitoring patterns of vehicle operation over
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`time” to mean “monitoring a driver’s repeated driving operations over time.”
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`BMW1011, 11-13. The Board agreed with Patent Owners’ proposed construction.
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`Id. That construction is also consistent with the one proposed herein by
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`Petitioners.
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`Petitioners do note that claim 1 recites “deriv[ing] a predicted near-term
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`pattern of operation, whereas claims 7 recites “predict[ing] a near-term pattern of
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`operation.” However, there does not appear to be a substantive difference between
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`those requirements. Indeed, the ’761 Patent specification’s cursory discussion of
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`altering the control strategy based on pattern data does not describe any
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`differences. See BMW1001, 39:48-67; 40:41-43; 43:7-22. Nor does the file
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`history indicate any differences when these limitations were introduced by
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`amendment, but treats the claims the same when distinguishing over the prior art.
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`BMW1052, 57-59. Particularly, Applicants stated that pending claim 17 [issued
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`claim 1] and 23 [issued claim 1] have “both been amended hereby to recite that the
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`controller performs the separate steps of monitoring vehicle operation to derive a
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`predicted pattern of operation, and then controlling vehicle operation
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`accordingly.” Id., 58.
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`In view of the above, the slight difference in wording in claims 1 and 7 does
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`not lead to any different constructions across the claims.
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`B.
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`“controls operation … responsive to said derived near-term
`predicted pattern”
`/ “predictively controls operation …
`responsive to said predicted near-term pattern of operation”
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`Part [f] of claim 7 is the same as part [f] of claim 1 except for minor
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`variations. Claim 7 requires that the system “predictively controls operation,”
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`whereas claim 1 requires that the system “controls operation.” Since claim 1
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`requires that the system “controls operation” based upon the “predicted pattern of
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`operation,” there does not appear to be any difference in the control requirements
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`imposed by claim 7’s requirement of “predictive control.” Simply, both claims
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`require control based on near-term predicted patterns.
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`The ’761 Patent specification’s cursory discussion of altering the control
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`strategy based on pattern data does not describe any differences between predictive
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`control and control in view of predicted pattern data. See BMW1001, 39:48-67;
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`40:41-43; 43:7-22. Also, as noted previously, when amending the claims to
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`include these limitations, Applicants stated that pending claim 17 [issued claim 1]
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`and 23 [issued claim 1] have “both been amended hereby to recite that the
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`controller performs the separate steps of monitoring vehicle operation to derive a
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`predicted pattern of operation, and then controlling vehicle operation
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`accordingly.” BMW1052, 58. Applicants also presented identical arguments to
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`distinguish the prior art for both claims. Id., 57-59.
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`Accordingly, the “controls operation” language of claim 1 and “predictive
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`control” language of claim 7 should be construed consistently across both claims to
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`require that the control of the hybrid vehicle be reflective of the “predicted near-
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`term pattern of operation.”
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`C.
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`“road load”
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`The term “road load” appears in dependent claims 4-6 and 10-12. The
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`Board has previously construed that term in two slightly different ways when
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`construing the parent ’347 Patent, and those constructions should apply here. See
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`Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When
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`multiple patents derive from the same initial application, the prosecution history
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`regarding a claim limitation in any patent that has issued applies with equal force
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`to subsequently issued patents that contain the same claim limitation.”).
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`Specifically, the term “road load” was construed in several IPRs to mean the
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`“amount of instantaneous torque required for propulsion of the vehicle,” and that
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`construction was expressly considered and affirmed by the Federal Circuit.
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`BMW1003, 8, 11; BMW1004, 8, 11; BMW1005.4 The Board considered the
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`term’s “ordinary and customary meaning…as understood by [a POSA] reading the
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`patent’s entire written disclosure.” BMW1003, 5; BMW1004, 5-6; BMW1011, 6.
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`Petitioners adopt this construction of the Board for consistency with those prior
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`constructions in the parent ’347 Patent, and the concurrently pending IPR2020-
`
`
`4 In a few other FWDs on the ’347 Patent (as well as in certain FWDs on the
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`related ’634 Patent) the Board similarly construed “road load” to mean “the
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`amount of instantaneous torque required to propel the vehicle, be it positive or
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`negative.” BMW1006, 9, 12; BMW1010, 8- 9; BMW1011, 7, 10. Those
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`constructions were also affirmed by the Federal Circuit. BMW1005; BMW1007.
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`There is no substantive difference between the two sets of constructions, and either
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`would be acceptable. BMW1008, ¶159.
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`Petition
`U.S. Patent No. 8,630,761
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`00994 on the ’347 Patent.
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`IV. Statutory Grounds of Challenge
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`Ground Basis
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`1
`
`2
`
`3
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`Claims 1-12: obvious over Severinsky in view of Quigley
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`Claims 1-12: obvious over Severinsky in view of Nii
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`Claims 1-2, 5-8, 11-12: obvious over Severinsky in view of Graf
`
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`V. Overview of the Technology
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`A. Background of the Art
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`For more than 100 years, numerou