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 and
`BMW OF NORTH AMERICA, LLC,
`Petitioners,
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`v.
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`PAICE LLC and THE ABELL FOUNDATION, INC.,
`Patent Owners.
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`Case IPR2020-01386
`Patent 7,237,634
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`PATENT OWNERS’ RESPONSE
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`Attorney Docket: 36351-0018IP1
`Case IPR2020-01386
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`TABLE OF CONTENTS
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`I.
`II.
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`B.
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`C.
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`Introduction ..................................................................................................................... 1
`Technology Overview ................................................................................................... 6
`A.
`The Technology of the ’634 Patent ............................................................... 6
`B.
`Overview of Severinsky’s Parallel Hybrid vs. Niis Series Hybrid ...... 13
`III. Claim Construction ...................................................................................................... 18
`IV. BMW’s Grounds Fail to Demonstrate Obviousness ........................................... 18
`A.
`Ground 1 — Severinsky in View of Nii Does Not Render Claim 33
`Obvious ............................................................................................................... 18
`1.
`Neither Severinsky nor Nii teaches or suggests “varying said
`setpoint accordingly ............................................................................. 18
`BMW’s Reasons to Combine are Flawed ...................................... 29
`2.
`Ground 2 — Severinsky in View of Quigley Does Not Render Claim
`33 Obvious ......................................................................................................... 44
`Ground 3 — Severinsky in View of Graf Does Not Render Claim 33
`Obvious ............................................................................................................... 49
`Grounds 4-9 ....................................................................................................... 56
`Grounds 7, 10, and 11 — Severinsky in View of Ma Does Not Render
`Claims 49, 105, or 188 Obvious ................................................................... 56
`Grounds 12-14 .................................................................................................. 71
`F.
`CONCLUSION ............................................................................................................ 71
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`D.
`E.
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`V.
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`i
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`Attorney Docket: 36351-0018IP1
`Case IPR2020-01386
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`EXHIBIT LIST
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`Exhibit No.
`PAICE 2001
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`PAICE 2002
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`PAICE 2003
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`PAICE 2004
`PAICE 2005
`PAICE 2006
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`PAICE 2007
`PAICE 2008
`PAICE 2009
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`PAICE 2010
`PAICE 2011
`PAICE 2012
`PAICE 2013
`PAICE 2014
`PAICE 2015
`PAICE 2016
`PAICE 2017
`PAICE 2018
`PAICE 2019
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`PAICE 2020
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`Description
`Patent Owners’ Preliminary Response to Petition for IPR in
`IPR2015-0722 Dated August 10, 2015
`Patent Owner’s Preliminary Response to Petition in IPR2015-
`00787 dated August 10, 2015
`Patent Owner’s Preliminary Response to Petition in IPR2015-
`00791 dated August 10, 2015
`Statutory Disclaimer
`Reserved
`Response to Interrogatory 27, BMW Responses to PAICE 1st
`Set of Interrogatories [1-28] dated May 6, 2020
`Paice/Toyota Complaint dated June 8, 2004
`Paice/Toyota Amended Complaint dated July 3, 2007
`Scheduling Order [Docket No. 36] from 1:19-cv-03348-SAG
`(USDC-DMD) dated February 25, 2020
`Docket Navigator Statistics – Top Patents by Number of IPRs
`Ex. J to BMW Invalidity Contentions dated June 8, 2020
`Reserved
`IPR2017-00232 Petition dated November 14, 2016
`UK Patent Application GB 2,318,105 Cover Page
`Printout of http://www.paicehybrid.com/licensing-agreements/
`Declaration of Mahdi Shahbakhti, Ph.D.
`Curriculum Vitae of Mahdi Shahbakhti, Ph.D.
`Bosch Gasoline-engine Management
`Selected Pages From John Heywood, Internal Combustion
`Engines Fundamentals
`Selected Pages From Merhdad Ehsani et al, Modern Electric,
`Hybrid Electric, and Fuel Cell Vehicles
`PAICE 2021 Matthew Cuddy et al., Analysis of the Fuel Economy Benefit
`of Drivetrain Hybridization
`Selected Pages From Draft Technical Assessment Report:
`Midterm Evaluation of Light-Duty Vehicle Greenhouse Gas
`Emission Standards and Corporate Average Fuel Economy
`Standards for Model Years 2022-2025
`Selected Pages From Assessment of Fuel Economy of Fuel
`Economy Technologies for Light Duty Vehicles
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`PAICE 2022
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`PAICE 2023
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`ii
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`PAICE 2024
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`PAICE 2025
`PAICE 2026
`PAICE 2027
`PAICE 2028
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`PAICE 2029
`PAICE 2030
`PAICE 2031
`PAICE 2032
`PAICE 2033
`PAICE 2034
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`Selected Pages From Richard Stone, Introduction to Internal
`Combustion Engines
`Reserved
`Reserved
`Reserved
`Guzzella et al., Introduction to Modeling Control of Internal
`Combustion Engine Systems
`Reserved
`Reserved
`Reserved
`Reserved
`Guzzella et al., Vehicle Propulsion Systems
`Bumby, J.R. et al., “Optimisation and control of a hybrid
`electric car,” IEE PROCEEDINGS, Vol. 134, Pt. D, No. 6
`(Nov. 1987), 373-87 (“Bumby II”)
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`iii
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`I.
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`Introduction
`The Board should find that all challenged claims of U.S. Patent No.
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`7,237,634 (“’634 patent”) are patentable. The ’634 patent describes and claims
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`novel control strategies and architectures for hybrid electric vehicles, which are
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`absent in the prior art.
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`Varying the setpoint based on monitoring patterns of vehicle operation
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`(claim 33): challenged independent claim 33 (and its dependent claims) monitors
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`patterns of vehicle operation in order to vary the setpoint, which is a parameter that
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`the hybrid controller uses as a point of demarcation for selecting operating modes,
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`e.g., choosing whether to operate the electric motor or the gas engine to propel the
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`vehicle. The Board has already carefully considered the validity of the ’634 patent
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`on multiple occasions and denied institution of three separate IPRs challenging
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`independent claim 33 and its dependent claims. (BMW1060, 6-8, 16-17;
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`BMW1061, 7-9, 14-15; BMW1062, 7-9, 15-16.)
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`BMW’s prior art fares no better than the art that the Board previously found
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`deficient. First, none of the prior art varies the claimed “setpoint” at all, let alone
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`doing so based on monitoring patterns of vehicle operation as claim 33 requires.
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`BMW’s Grounds 1-9 rely on Severinsky as the primary reference. But as
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`explained in detail below, Severinsky never varies the claimed “setpoint,” and
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`BMW’s unsupported assertion that Severinsky’s “speed-responsive hysteresis”
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`results in varying the claimed torque “setpoint” is wrong.1
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`Second, none of the secondary references come close to filling this
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`significant gap in the prior art. Nii (Ground 1) does not have a “setpoint” for
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`switching between electric motor and engine propulsion modes because Nii is
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`directed to a “series” hybrid vehicle where the engine is disconnected from the
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`wheels, and Nii endeavors to keep the engine always on and operating at a constant
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`output to charge the battery. A POSA reviewing Severinsky and Nii together
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`would not have any concept of varying the claimed “setpoint.” Moreover, a POSA
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`would not look to Nii’s “pattern information” as BMW suggests because Nii’s
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`“pattern information” has no relation to (or use for) varying a “setpoint” for
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`selecting operating modes in a “parallel” hybrid vehicle like Severinsky. And
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`BMW fails to explain how or why a POSA could make such a combination in the
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`first place.
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`Quigley (Ground 2) also fails to remedy the deficiencies of Severinksy.
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`Ground 2 is based on the false premise that Quigley varies the “SP,” i.e., the
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`setpoint, based on patterns of vehicle operation over time. Petition, 26 (“Quigley
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`therefore utilizes the monitored driving pattern information and ‘var[ies] the SP
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`1 Patent Owners rely on the declaration of Mahdi Shahbakhti, Ph.D. in support of
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`their Patent Owners’ Response. (PAICE2016, ¶¶1-176.)
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`2
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`accordingly.’”). Quigley, however, expressly discloses that its “intelligent
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`controller” is not used for deciding when to employ either the electric motor or the
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`engine. And as the Board recognized at institution, “Quigley and Dr. Davis’s
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`testimony does not reveal evidentiary support for Petitioner’s contention that
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`Quigley varies a setpoint that constitutes a ‘torque’ value.” Institution Decision
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`(ID), 40. Quigley’s “optimal operation” on which BMW relies (Petition, 26) has
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`nothing to do with adjusting the setpoint for determining whether to employ the
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`electric motor or engine. To confirm, the Board noted that BMW’s “proposed
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`combination appears to lack a rational underpinning.” Id.
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`Graf (Ground 3) also fails to remedy Severinsky’s shortcomings. BMW
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`only alleges that Graf varies “operating points” generally. And as the Board
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`recognized at institution, Graf’s disclosure about determining the driving style of
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`the driver does not disclose “monitoring patterns of vehicle operation over time.”
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`ID, 46.
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`Grounds 4-9 all rely on Grounds 1-3 to address claims that depend from
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`claim 33. Thus, Grounds 4-9 are deficient for at least the reasons set forth with
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`respect to Grounds 1-3.
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`“On-demand” turbocharger: challenged claims 49, 105, and 188 (and
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`dependent claims) are directed to a novel architecture that combines a gas engine
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`and electric motor with a controllably coupled, “on-demand” turbocharger. Instead
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`of using a turbocharger that operates mechanically as a function of engine output,
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`the ’634 patent provides a control system that controls the turbocharger to work
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`alongside the electric motor. The ’634 patent controls the electric motor and
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`turbocharger to complement one another, by applying the instant torque of the
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`electric motor to make up for the inherent lag of the turbocharger and using the
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`turbocharger over extended periods of time where use of the electric motor would
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`deplete the battery.
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`BMW’s Grounds 7, 10, and 11 fail because it is insufficient to demonstrate
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`that Severinsky and Ma could be combined, and BMW does not present a single
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`permissible reason why a POSA would modify Severinsky’s parallel hybrid with
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`Ma’s turbocharger. BMW’s first two reasons to combine are lacking because the
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`touted benefits of Ma’s turbocharger are at best redundant to Severinsky’s large
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`electric traction motor. And BMW’s third reason to combine comes straight from
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`the ’634 patent specification, not the prior art.
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`Grounds 12-14 rely on Ground 11 to address claims that depend from claim
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`188. Thus, Grounds 12-14 are deficient for at least the reasons set forth with
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`respect to Ground 11.2 3
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`2 In Arthrex, Inc. v. Smith & Nephew, Inc., Case No. 2018-2140 (Fed. Cir. Oct. 31,
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`2019), the Federal Circuit held that the statutory scheme for appointing APJs
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`violated the Appointments Clause of the U.S. Constitution. The Court proposed to
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`remedy the constitutional defect by severing the application of 35 U.S.C. § 3(c)—
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`which subjects USPTO employees to the removal provisions of 5 U.S.C.
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`§ 7513(a)—as to APJs. Arthrex, slip op. at 25. Patent Owner understands that in
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`other appeals still pending before the Federal Circuit and Supreme Court, parties
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`have challenged whether this remedy fails to cure the defect. Accordingly, for
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`purposes of preserving these issues, Patent Owner asserts that institution decisions,
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`preliminary guidance on amendments, and future final written decisions rendered
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`by the Board will be unconstitutional for violation of the Appointments Clause.
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`3 In an effort to narrow the issues and increase efficiency, without conceding the
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`propriety of BMW’s assertions or admitting unpatentability, Patent Owners have
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`disclaimed claims 242 and 268. (See PAICE2004.) Patent Owners’ maintain the
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`remaining claims, claims 33-44, 46, 49-50, 52-54, 55, 68, 105, 188-189, 199-206,
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`208, and 211-214 (“the Challenged Claims”) in this proceeding.
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`II. Technology Overview
`A. The Technology of the ’634 Patent
`The ’634 patent discloses embodiments of a hybrid electric vehicle, with an
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`internal combustion engine, two electric motors and a battery bank. A
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`microprocessor is employed to control the internal combustion engine, the two
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`electric motors, and the battery bank based on the hybrid vehicle’s instantaneous
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`torque requirements such that the internal combustion engine is only run under
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`high efficiency conditions. See, e.g., (BMW1001, Abstract).
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`An embodiment of the hybrid vehicle disclosed in the ’634 patent is shown
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`in Figure 3, reproduced below:
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`Id. at Fig. 3. Figure 3 of the ’634 patent shows a hybrid electric vehicle having an
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`internal combustion engine (40), a traction motor (25), a starter motor (21), and a
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`battery bank (22). (BMW1001, Fig. 3; 26:19-33.) The gas engine and electric
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`traction motor are both connected to the road wheels (34) through a differential
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`(32) and are operable to propel the vehicle. (Id.)
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`The challenged ’634 patent claims are directed to a number of inventions,
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`including an innovative control strategy that monitors patterns of vehicle operation
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`in order to refine how the hybrid controller selects operating modes, e.g., choosing
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`whether to operate the electric motor or the gas engine and a novel architecture
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`with a controllably coupled, “on-demand” turbocharger that works in harmony
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`with the electric motor.
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`Pattern-Based Mode Switching. The ’634 patent discloses a novel control
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`strategy that varies the transition between electric motor operation and engine
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`operation based on how the driver actually uses the car on a day-to-day basis. In
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`order to understand how the ’634 patent accomplishes this task, a brief overview of
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`the ’634 patent’s core control strategy is helpful.
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`The ’634 patent evaluates the instantaneous torque required to propel the
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`vehicle known as “road load” in relation to a setpoint to determine the operating
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`mode. The concept is that the setpoint is used to decide whether to use the electric
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`motor or gas engine to propel the vehicle. The ’634 patent shows the road
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`load/setpoint-based algorithm in Figure 9, where it operates in Mode I (electric
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`motor propulsion) if the road load (RL) is under a setpoint of 30% of maximum
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`torque output (MTO)4 (annotated below using green lines) and in Mode IV (gas
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`engine propulsion) if RL is between the setpoint of 30% and 100% of MTO
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`(annotated below using blue lines). (BMW1001, 41:59 – 42:56.) If the controller
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`determines that road load is greater than 100% MTO, it selects Mode V, where the
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`electric motor provides additional torque to propel the vehicle beyond that
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`provided by the engine. (Id., 42:62 – 43:8.)
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`4 MTO represents the maximum amount of torque that the engine can produce.
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`(BMW1001, 20:67 – 21:17.) The claims and specification use MTO as a
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`benchmark by describing the road load and setpoint as percentages of MTO. (Id.,
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`40:16-26.)
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`(BMW1001, Fig. 9 (annotated).)
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`The ’634 patent further discloses how to adjust the setpoint— for example,
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`the demarcation between electric motor and engine operation—by looking at how
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`the hybrid vehicle was previously used. The ’634 patent monitors how the driver
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`actually uses the car on a day-to-day basis to derive patterns of vehicle operation.
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`(BMW1001, 40:50 – 41:3.) For example, the ’634 patent monitors the driver’s
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`daily commute from home to work. (Id.; see also id., 41:46-47, 44:24-31.) The
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`’634 patent uses this information, for example, to adjust the setpoint that governs
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`the transition between Mode I (electric motor propulsion) to Mode IV (gas engine
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`propulsion). (Id.)
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`For example, the ’634 patent explains that the controller would increase the
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`setpoint from 30% MTO to 60% MTO in response to identifying a regular
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`commute where the “the road load might remain under 20% of MTO for the first
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`few minutes of each day, then vary between 0 and 50% of MTO for another few
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`minutes as the operator passes through a few traffic lights, and then suddenly
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`increase to 150% of MTO as the operator accelerates onto a highway.” (Id., 40:53-
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`63.) In doing so, the controller “would prevent repetitive engine starts,” e.g., when
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`the road load fluctuates above and below 30% MTO. (Id., 40:63 – 41:1.)
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`Critically, none of the Petition’s prior art (either alone or together) discloses
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`adjusting the setpoint by monitoring such patterns of vehicle operation.
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`Hybrid Architecture with Coordinated Electric Motor and Controllable
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`On-Demand-Turbocharger. Additionally, the ’634 patent discloses
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`incorporating a controllable turbocharger into a hybrid electric vehicle to work
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`alongside the electric motor. Conventional turbochargers (generally consisting of a
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`turbine and compressor) increase the air pressure to the engine, which allows the
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`engine to burn more fuel and consequently produce more torque. As recognized
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`by the ’634 patent, however, conventional turbochargers suffer from what is called
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`“turbo lag,” which the patent describes as a “slow response to sudden increase in
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`torque required.” (Id., 45:61 – 46:2.) This is because the exhaust from the engine
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`provides the rotational force to spin the turbine of the turbocharger. (PAICE2016,
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`¶¶44; PAICE2018, Fig. 1.) And the exhaust from the engine is often insufficient to
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`spin the turbine at low engine output. Moreover, supplying additional air to the
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`engine is just the first step. Conventional engines will experience delay as fuel is
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`then introduced to match the increased airflow. As a result, a conventional engine
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`will take a noticeable amount of time to supply additional torque even after the
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`turbocharger delivers additional air. In other words, while the turbocharger can
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`increase the air pressure to supply additional torque, it cannot do so quickly
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`enough to meet the driver’s sudden demands for more torque.
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`The ’634 patent recognized that the electric motor (which provides
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`instantaneous torque) in a hybrid architecture solves the “turbo lag” problem. (Id.,
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`48:61-65 (“because the traction motor provides additional torque when needed, the
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`‘turbo lag’ experienced in conventional turbocharged vehicles as the turbocharger
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`‘spools up’ when the operator calls for more power is eliminated.”).) In addition,
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`use of the turbocharger for “extended period[s] … of time” instead of the electric
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`motor can help “preserve the battery bank.” (Id., 45:2-6.) Thus, by combining a
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`combustion engine, turbocharger, and electric motor, in a control system designed
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`to eliminate turbo lag and maximize battery life, the ’634 patent optimizes use of
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`the turbocharger and overall system elements.
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`The ’634 patent shows the controllable turbocharger in the hybrid electrical
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`vehicle environment in Fig. 11 reproduced below. The turbocharger (100) is
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`controllably coupled to the gas engine (40) via an electronically controlled
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`wastegate (114) and valve (120) actuated by the microprocessor (µP). (Id., 45:7-
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`51.)
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`(BMW1001, Fig. 11 (annotated).)
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`Unlike conventional “dumb” turbochargers that simply follow the output of
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`the engine, the ’634 patent introduced an “on-demand-turbocharger,” using the
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`microprocessor to control a wastegate and valve to control the turbocharger. (Id.,
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`44:52-59.) In so doing, the ’634 patent selectively controls when the turbocharger
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`contributes torque and when the electric motor should contribute torque (e.g., when
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`turbocharger operation would result in a lag):
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`As also noted above, as conventionally employed, a turbocharger is
`used at all times. By comparison, according to the present invention,
`the turbocharger is controlled by the microprocessor 48 [µP] to be
`used only under specified driving conditions, allowing the engine to
`be operated efficiently in other modes.
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`(Id., 46:14-19.) As set forth below, none of the prior art (alone or together)
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`discloses a hybrid architecture with a controllably coupled turbocharger that works
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`alongside the electric motor in complementary fashion.
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`B. Overview of Severinsky’s Parallel Hybrid vs. Nii’s Series Hybrid
`For purposes of Grounds 1 and 4-7, understanding the hybrid architectures
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`of the prior art Severinsky and Nii references is critical. Severinsky’s parallel
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`hybrid and Nii’s series hybrid have fundamentally different architectures, which
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`affects the role of the engine and the control strategy for maximizing engine
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`efficiency. In a parallel hybrid like Severinsky (below left), both the engine and
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`electric motor can mechanically drive the wheels, either separately or together
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`(“engine-as-driver” approach). (PAICE2016, ¶¶79-82.) In a series hybrid like Nii
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`(below right), only the electric motor drives the wheels—the gas engine charges
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`the battery, but never propels the vehicle (“engine-as-charger” approach). (Id.)
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`This architectural difference is fundamental and renders the control systems
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`for series and parallel hybrids as different as night and day. In a series hybrid, the
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`electric motor is always used to drive the wheels and so control of the motor
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`reduces to simply monitoring the accelerator pedal position. (Id., ¶83) The engine
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`in a series hybrid is used only to charge the battery when the battery is depleted
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`and so control of the engine reduces to simply monitoring the state of charge of the
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`battery. (Id., ¶¶84-88) Indeed, BMW’s expert, Dr. Davis, admits that “[t]he
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`engine … is not mechanically connected to the wheels and the engine is therefore
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`controlled independently of driving conditions.” (BMW1008, ¶¶70-71 (emphasis
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`added).) The engine is a portable charging station for the battery, literally just an
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`on-board generator that is operated to charge the battery rather than to turn the
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`wheels of the car. (BMW1008, ¶73.)
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`The control system in a parallel hybrid, however, must decide which drive
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`element (motor or engine) to use at any particular time, how to switch between
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`drive elements, and how to combine torque from these elements in an efficient and
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`orderly manner. (PAICE2016, ¶¶81-83.) The fact that both systems use the word
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`“hybrid” makes them no more similar than a hand truck and a pickup truck or a
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`watercraft and an aircraft.
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`Severinsky’s Figure 3 shows the engine (40) on the left and electric motor
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`(20) on the right, both mechanically coupled to the wheels, in parallel with each
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`other, through a torque-transfer unit (28).
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`(BMW1013, Fig. 3.)
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`Because Severinsky’s parallel architecture can operate both the electric
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`motor and engine to propel the vehicle, Severinsky must decide when to i) turn the
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`engine on to propel the vehicle either alone or with the electric motor and ii) when
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`to use only the electric motor to propel the vehicle (in which case the engine would
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`be off). (PAICE2016, ¶¶140-44.) Severinsky operates in three operating modes:
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`(1) low speed mode (i.e., electric motor only mode), (2) highway cruising mode
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`(i.e., gas engine only mode); and (3) high speed acceleration/hill climbing mode
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`(i.e., gas engine + electric motor mode). (BMW1013, 10:52-57; 13:66 – 14:3,
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`14:22-25; PAICE2016, ¶¶89-92.)5 Additionally, when the engine is on and
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`providing torque to propel the vehicle in a parallel hybrid like Severinsky, it is
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`physically coupled to the road wheels and must react to the demand of the driver.
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`(BMW1013, 14:9-15 (“the output torque of internal combustion engine 40 may be
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`directly variable responsive to the operator's control inputs.”); PAICE2016, ¶90.)
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`In Nii’s series hybrid, on the other hand, the electric motor (10) is the sole
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`source of propulsive torque, and the engine (22) is decoupled from the wheels as
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`shown below in Figure 1. (BMW1022, 3:66 – 4:4; PAICE2016, ¶¶145-46.) The
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`engine (22) need only operate the generator (20) to charger the battery (16).
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`(BMW1022, 4:4 – 14; PAICE2016, ¶¶93-94.) Because the engine’s only job is to
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`keep the battery charged, it can operate at steady state (independent of the driver’s
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`demand) and remain on at all times. (BMW1022, 2:14-18; PAICE2016, ¶¶94.)
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`5 According to BMW, Severinsky selects operating modes based on road load, and
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`selects between electric motor only mode and engine only mode by comparing
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`road load to the setpoint. Petition, 18-19.
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`16
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`(BMW1022, Fig. 1.)
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`Because the electric motor always propels the vehicle and the engine always
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`charges the battery, Nii’s series hybrid does not have different modes of operation
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`related to propelling the vehicle. (PAICE2016, ¶94.) Nii is only interested in
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`controlling the output of the generator (supplied by the engine), which charges the
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`battery. (BMW1022, 2:1-3 (“The present invention is a generator output
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`controller….); PAICE2016, ¶94.) Indeed, Nii’s title is “Generator Output
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`Controller for Electric Vehicle with Mounted Generator.” Nii controls the
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`generator by choosing a single generator output in order to ensure that hybrid
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`operation changes as little as possible during vehicle operation. (BMW1022, 2:14-
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`18 (“the output of a generator is set to a generator output …. Therefore, it is
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`possible to generate optimum electrical power at a constant value by a generator).)
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`IV. Claim Construction
`Patent Owner agrees to the claim constructions adopted previously by the
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`Federal Circuit and/or the Board, which BMW applies in its Petition.
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`V. BMW’s Grounds Fail To Demonstrate Obviousness
`A. Ground 1 – Severinsky in View of Nii Does Not Render Claim 33
`Obvious
`Severinsky in view of Nii does not render obvious claim 33. Critically,
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`neither Severinsky nor Nii discloses “varying said setpoint,” much less varying the
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`setpoint based on “monitoring patterns of vehicle operation over time.” And
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`BMW’s gap filling cannot remedy the deficiencies of the prior art because BMW’s
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`reasons to combine are based on factually flawed ipse dixit expert testimony and
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`BMW fails to explain how and why the references can be combined.
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`1.
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`Neither Severinsky nor Nii teaches or suggests “varying
`said setpoint accordingly”
`Severinsky does not vary the claimed setpoint, and BMW’s reliance on
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`“speed-responsive hysteresis” to demonstrate this feature is misguided. Moreover,
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`Nii’s disclosure is related to using “pattern information” (as termed by BMW) for
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`setting the constant output of the engine for charging the battery in a “series”
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`hybrid vehicle. But Nii’s engine plays no role in propelling the vehicle and Nii
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`endeavors to keep the engine always on and operating in steady state. Thus, Nii
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`has nothing to do with the claimed “setpoint” which is a control parameter for
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`dictating between electric motor and engine propulsion modes (in relation to the
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`instantaneous torque requirement) in a vehicle where the electric engine and motor
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`operate in parallel.
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`a) Severinsky does not disclose “varying said setpoint
`accordingly”
`Severinsky does not disclose varying a setpoint of any kind, much less the
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`claimed “setpoint,” which is “a predefined torque value that may or may not be
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`reset.” And BMW’s assertion that “[u]se of the ‘speed-responsive hysteresis’
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`requires ‘var[ying] said setpoint accordingly’ (from the setpoint if the hysteresis is
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`not employed)” is wrong and unsupported by evidence. Petition, 22.6
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`6 BMW’s entire analysis regarding Severinsky’s alleged disclosure of varying the
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`setpoint is limited to this one sentence. See Petition, 22. Such conclusory analysis
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`falls far short of establishing inherency, i.e., that the missing claim limitation is
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`“require[d]” in Severinsky. See Akamai Techs. v. Cable & Wireless Internet
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`Servs., 344 F.3d 1186, 1192 (Fed. Cir. 2003).
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`First, Severinsky’s “speed-responsive hysteresis” does not result in varying a
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`speed- or torque-based setpoint. Severinsky’s hysteresis is simply a time-based
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`hysteresis that adds a time delay (“2-3 minutes”) to a speed threshold (“20-25
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`mph”) for turning the engine off. (PAICE2016, ¶¶57.)
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`The vehicle will operate in a highway mode with the engine running
`constantly after the vehicle reaches a speed of 30-35 mph. The engine
`will continue to run unless the engine speed is reduced to 20-25 mph
`for a period of time, typically 2-3 minutes. This speed-responsive
`hysteresis in mode switching will eliminate nuisance engine starts.
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`BMW1013, 18:34-43
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`(emphasis added).
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` Severinsky’s “speed-responsive
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`hysteresis” maintains a fixed speed threshold and requires that the vehicle speed
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`remain below the speed threshold for a predetermined amount of time. (PAICE2016,
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`¶¶59-60.)7 This delay merely alters how quickly the controller will respond to the
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`control variable (vehicle speed) dropping below the speed threshold. (Id.) A POSA,
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`however, would understand that the threshold would be written into source code and
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`not change throughout the lifetime of the vehicle. (Id.) Indeed, Severinsky does not
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`disclose varying any type of control parameters like a speed threshold, much less the
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`claimed “setpoint” during vehicle operation. (Id.)
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`7 Dr. Davis admits that “Severinsky’s hysteresis methodology utilizes a fixed
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`general-purpose speed range.” (BMW2008, ¶ 279 (emphasis added).)
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`In the Board’s ID, the Board points to the two speed ranges in Severinsky to
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`suggest that Severinsky discloses varying the setpoint. ID, 34-35. Severinsky’s
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`upper speed range (i.e., “30-35 mph”) and the lower speed range (i.e., “20-25
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`mph”) are merely two separate speed thresholds. Severinsky’s controller uses the
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`“30-35 mph” speed threshold to turn the engine on and the “20-25 mph” to turn the
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`engine off. (PAICE2016, ¶¶61-62.) There is nothing in Severinsky that discloses
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`or suggests to a POSA that either of these speed thresholds are changed during
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`vehicle operation. (Id.) And there is certainly no disclosure that either the upper
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`speed range or the lower speed range (or their attendant time delays) are changed
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`in view of any observed pattern of vehicle operation. (Id.) Instead, at best, and as
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`discussed above, each of the separate values for the upper speed range and the
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`lower speed range would be written into the source code and not changed in real-
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`time due to observed patterns of driving. (Id.)
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`Second, there is no record evidence that the speed-based time delay or the use
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`of different speed thresholds for turning the engine on vs. turning the engine off
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`would result in Severinsky “varying said setpoint,” which is a torque value. (Id.,
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`¶¶63-66.) BMW points to Severinsky’s 60% MTO value to satisfy the “setpoint”
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`limitations of claim 33. Petition at 18 (“The electric motor is operated to propel the
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`vehicle when the road load (RL) is below the disclosed setpoint (i.e. less than 60%
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`of the engine’s MTO).”) (citing BMW1013, 20:63-66); id., 19 (“The engine is
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`‘operated only under the most efficient conditions of output p